Flashcards in Mini-Exam and Exercise Points Deck (76)
Do you have to record an assignment?
No but it is helpful in keeping your interest safe from subsequent assignments.
Can you get the ENTIRE CONTENTS of a pending unpublished application incorporated by reference into an issued patent without notice?
No, if you wanted a copy then yes but not the entire thing.
A person may not execute a substitute statement unless they have reviewed and understood the contents of the application.
Yes, you have to review it.
What if you forget an inventor in a provisional?
Fix it. 1.48
Failure to record an assignment will result in that assignment being null and void.
The recording of a document is not a determination by the Office of the validity of the document or the effect that document has on the title to an application.
Errors in recording assignments can be corrected, and no new recording fee is required.
An abandoned provisional patent application relied upon for priority in a non-provisional U.S. patent application is available to the public upon written request and payment of a fee.
A petition to withdraw from representing a client in an application is effective upon filing.
Every U.S. - origin application filed in the USPTO is considered to include an implicit petition for a foreign filing license.
An inventor can be added to a provisional application under 37 CRF 1.48(d)
Requires a fee
While only the assignee of record of the entire interest can intervene in the prosecution of an application, an assignee of a part interest or a licensee of an exclusive right is entitled to inspect the application.
True. Only the assignee of record of the entire interest can intervene in the prosecution of an application or interference to the exclusion of the applicant.
An assignee of a part interest or a licensee of an exclusive right is entitled only to inspect the application.
A foreign filing license is not required to file a design application overseas, even if the design was invented in the US.
A substitute statement does not need to identify the circumstances leading to the unavailability of the inventor, but rather may merely state the applicant is the assignee and owns 100% of the right, title and interest in the claimed invention.
False, must include reason.
An inventor who protests his or her designation as an inventor is not entitled to inspect the file or to participate in subsequent prosecution.
Your client MageCorp has merged with its large competitor MegaGiant. The certificate of merger is not recordable in the USPTO because it does not affect title.
A non-exclusive licensee may not record the license agreement.
A resident alien may be given limited recognition to prosecute a specific application or applications upon a showing of circumstance that it is necessary or justifiable.
Loses if they leave the country.
Registered attorneys or agents who are not of record in the file may not file papers in a patent application.
What do you do if a client comes in unhappy with their attorney?
File a Power to Inspect and obtain a copy of the Official Patent Office file as soon as possible.
**Need to see file first and foremost.
When can you get a suspension?
IF and ONLY IF the examiner is on the clock.
You file a petition.
What do you do if you have two foreign filings?
Go with the earlier one.
How does an inventor avoid a first filing in a foreign county?
The first filed application needs to be withdrawn, abandoned or otherwise disposed of.
**Must be in the EXACT COUNTRY of first filing.
Can you claim priority through a provisional?
No a provisional starts the process.
What matters for the start of a Patent Term?
20 years from a non-provisional application filed in the U.S.
How to correct inventorship pursuant to 1.48 (a)?
Requires an Application Data Sheet
- identifies each inventor by legal name
- pay a fee
When is a provisional most appropriate?
When an inventor comes to you and are not ready but have something that could be patented as is.
You want to file as early as possible.
Facts about Foreign Priority
1. An inadvertent failure without deceptive intent to claim or perfect a claim for foreign priority can be cured by seeking a reissue.
2. The priority period for design applications is six months.
3. A translation submitted to establish foreign priority rights of an application not in English need not be sworn or in the form of a declaration.
4. Rather than submitting another certified copy of a priority document reference can be made to a document previously filed in another U.S. application.