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Flashcards in mock final AIA Deck (32):

John Q. Public filed an application on June 4, 2005 directed to his new lawn sprinkler. After all the claims of his application were rejected by the examiner for the second time, he retains you to represent him and executes a proper power of attorney which you file. The final rejection setting a three month period for response was mailed from the Patent Office on April 5, 2006 and received by Mr. Public one week later. The examiner agreed to an interview which took place in late April. After consulting your client you decide both to file a Notice of Appeal and a response. The Notice of Appeal is filed on May 1, 2006, and a response is filed on July 13, 2006. You file an Appeal Brief on Monday, September 1, 2006 together with a two month extension and payment of the required fee. Today, August 26, 2008, your client and you decide that the claims now on appeal are too broad and unpatentable. Instead you want the examiner to consider narrower claims with details which are fully disclosed in the application as initially filed, but not claimed before. You should:
File an amendment and request that the Patent Trial and Appeal Board consider the new claims.
B File an amendment and a petition to have the application returned to the examiner to consider the new claims.
C File an amendment and a petition to have the application returned to the examiner to consider the new claims, and pay the required fee.
D File a petition to revive the application because the Appeal Brief was not filed timely and the application was abandoned.
File a continuation with the new claims and then subsequently abandon the parent application.

(E) is correct. The question explains that you are now on the appeal track, but that you also want the examiner to consider more narrow claims that, while supported in the initial filing, have not previously been claimed. At this point, you will not be able to amend the claims to have new claims considered. Thus, to get these new, narrower claims considered, you will need to file a continuation. Because you have determined that the claims on appeal are unpatentable, you cannot ethically continue to pursue those claims and would need to abandon the appeal. Although not a choice, you could also file a Request for Continued Examination (RCE) under Rule 114, because prosecution is now closed and you are on the appeal track. Notice also that the answer says ‘file a continuation and then abandon.’ The rule requires the continuation and the parent to be co-pending for at least one day.

(A) is incorrect because the Board will not consider new claims.

(B) and (C) are incorrect because you have insufficient grounds to reopen prosecution.

(D) is incorrect because the Appeal Brief was timely filed with a proper two-month extension request. Furthermore, (D) does not address the unpatentability of the claims on appeal or the desire to have narrower claims considered.


2. Which of the following statements is not true?
A A proper showing of secondary considerations rebuts a prima facie obviousness rejection.
B An inventor may be excluded from participating in the prosecution of his or her own application if the assignee so wishes.
C Unless instructed otherwise, the Patent Office will send all further correspondence to the appointed attorney or agent of record.
D An Information Disclosure Statement (IDS) should be filed within two months from the filing of a provisional application.
E A reexamination can be filed up to six years after the patent expires.

D vs. E
(D) is correct because it is the only choice that is false. You do not file an Information Disclosure Statement (IDS) in a provisional patent application. There is no prosecution of a provisional patent application and, therefore, no duty to disclose prior art.

(A) is incorrect because it properly states that secondary considerations must be considered, if present, when making an obviousness rejection.

(B) is incorrect because it is a true statement: One or more assignees may conduct prosecution of a patent application as the applicant, or conduct prosecution of a supplemental examination or reexamination proceeding, to the exclusion of the inventor or previous applicant or patent owner.

(C) is incorrect because it is a true statement: In the absence of a correspondence address being provided that is different from that of the attorney/agent of record, the USPTO will communicate with the attorney/agent of record.

(E) is incorrect because the enforceability period of a patent lasts until 6 years after the patent has expired because the Statute of Limitations to bring a patent infringement action is 6 years. Thus, a reexamination can be filed at any time during the enforceability period of the patent.


You are prosecuting an application in which the Patent Examiner rejected all of the claims as anticipated and set a three-month shortened period for response. The non-final action was dated June 3, 2012 and you received the action on June 12, 2012. On Monday September 5, 2012 you filed a proper response to the action using the Certificate of Mailing Procedure. On January 5, 2013 you receive a Notice of Abandonment from the Patent Office for failure to prosecute. Which of the following would be the most appropriate response to the notice:

A Promptly advise the Patent Office in writing that a response was mailed, and include a copy of your response and establish that the response was properly and timely mailed.

Advise your client of the misfortune and explain that nothing can be done.
C File a petition to revive the application, include a copy of the response, and a petition to revive the application as unavoidably abandoned.
D Send the Patent Office another copy of the response.
E File an original copy of your response together with a four-month extension of time.

(A) is correct. The Office Action was dated June 3, 2012, which means the shortened statutory period expired on September 3, 2012. However, we know from the question that Monday was September 5, 2012, which means that September 3 was a Saturday. When a filing is due on a Saturday, Sunday or Federal holiday in the District of Columbia, the applicant has until the next day that the USPTO is open within which to timely file. Therefore, filing on Monday, September 5, 2012, was timely and the application was not abandoned. The USPTO made an error issuing a Notice of Abandonment. Also notice that this particular response could have been timely filed even on Tuesday, September 6, 2012, because the first Monday in September is a Federal Holiday (i.e., Labor Day).


You are prosecuting an appeal to the Patent Trial and Appeal Board. After reading the Examiner's Answer you are convinced the Examiner has misunderstood your arguments, and, that if he understood them properly, the application would be allowed. The answer merely repeated the rejections and arguments set forth in the Final Rejection. The most appropriate course of action would be to:
A File a Reply Brief and point out succinctly where the examiner has gone astray.
B File a Request for Reconsideration of the Final Rejection pointing out the examiner's mistake together with a petition asking that the application be returned to the examiner for further reconsideration, and the required fee.
C File a CIP application with a preliminary amendment adding to the application the reasons setting forth why the examiner is wrong, and abandon the parent application.
D File a petition asking the Board to disregard the Examiner's Answer as based upon incorrect information.
E Write to the Commissioner and ask that the examiner's fitness be investigated.

(A) is correct. Applicants have a right to file a timely Reply Brief in response to an Examiner’s Answer. The Reply Brief must be filed within 2 months and can that time period only be extended for cause.

(B) is incorrect because you have insufficient grounds (1207.04, need to enter a new ground of rejection) to seek to reopen prosecution, and you cannot otherwise have the Board disregard the Examiner’s Answer.

(C) is incorrect because, to file a CIP, you would have to include new matter not previously disclosed and the question does not suggest that the applicant has any new matter to add. Furthermore, filing a CIP, or a continuation or RCE for that matter, would not address the issues on appeal. Because you can file a Reply Brief, you might as well and see if you can convince the Board that you are correct. There will be time later to file to keep the application from going abandoned.


You prepare and file a patent application on January 24, 2012, one day before the first anniversary of a publication fully describing the invention. Unfortunately in the rush to file the application page 24 was omitted from the application. That page describes certain details which are set forth in dependent claims 4 and 5, but are not otherwise necessary to satisfy the requirements of 35 USC 112. A Notice of Omitted Items was mailed from the Patent Office on April 14, 2012. You advise the client of your error and, after expressing his view of your competence, the client instructs you to take the immediate action, which will best preserve her rights at the least expense. That action is:
A Immediately file a preliminary amendment with the missing page and ask that the application be given a filing date as of the date the preliminary amendment is filed.
B Telephone the examiner to explain your situation and ask him to insert page 24 into the Patent Office copy of the application.
C Do nothing, but tell the Patent Office that will be your course of action.
D Abandon the application and file a substitute.
E File a complete application with all pages today.

601.01(d) Application Filed Without All Pages of Specification

(C) is correct. You do not have to substantively respond to a Notice of Omitted Items, but if you are not going to substantively respond, you must at least notify the Patent Office that you will not be substantively responding. Failure to either substantively respond or notify the Patent Office that you will do nothing substantively will result in the application going abandoned.

(A) is incorrect. While you can file a preliminary amendment at any time prior to the patent examiner working on the First Office Action, you cannot add new matter in a preliminary amendment, which is what you would be trying to do by adding the missing page.


Mary filed an application on May 6, 2010, which issued as a U.S. patent on March 6, 2012. After attempting to license her patent Mary concluded that the claims were invalid because of prior patents cited by the prospective licensee. The prospective licensee also pointed out that all the claims contained an unnecessary limitation. When is the last date that Mary can file a reexamination to submit claims, which will define over the prior art, and delete the unnecessary limitation:
A May 6, 2012.
B March 6, 2014.
C The reexamination can be submitted at any time prior to six years after expiration.
D March 6, 2013.
E None of the above.

(E) is correct. You cannot broaden claims in reexamination; therefore, the answer to the question is that Mary will never be able to do what she wants to do through reexamination. Had the question asked when is the last date that Mary could file a broadening reissue, the answer would be March 6, 2014, which is 2 years after the date the patent issued.


Matt Johnson conceives of and reduces to practice an invention relating to an improved rugby ball in Germany on September 25, 2007. He files a patent application in Estonia on September 26, 2007, which is granted on September 3, 2009, but the patent file was not available to the public and published until December 23, 2010. During 2008, Johnson sold a few of the balls to various of his friends in Europe and on October 12, 2008 sold all rights in the invention to your client JHY Corporation, the leading manufacturer of rugby balls in the world. Your client today, August 28, 2012, wants to file a U.S. patent application directed to the Johnson invention, which tests have shown to be a possible winner in the marketplace.

Which of the following sections of 35 USC 102 bar patentability of the Johnson invention?
A 102(a).
B 102(b).
C 102(d).
D 102(b) and 102(d).
E None of the above.

(D) is correct. The first thing to notice is that this question requires application of pre-AIA 102. Under pre-AIA 102, this is a classic example of a 102(d) rejection. All four criteria have been met to satisfy 102(d) – we have the same inventor, the same invention, a foreign patent has already issued, and it is too late to claim priority back to the foreign filing. Notice also, however, that we have a 102(b) problem as well.


10. McCoy conceives of and reduces to practice an invention relating to an improved masonry tool in Canada on September 25, 2008. He files a patent application in China on September 26, 2008, which is granted on September 3, 2010, but the patent file was not available to the public and published until December 23, 2010. During 2009, McCoy sold a few of the tools to various of his friends in Asia and on October 12, 2009 sold all rights in the invention to Federation Planet Enterprises (FPE), a leading manufacturer of masonry tools. Today is August 28, 2013, and FPE wants to file a U.S. patent application directed to the McCoy invention.

Which of the following sections of 35 USC 102 bar patentability of the McCoy invention?
A 102(a).
B 102(b).
C 102(d).
D 102(b) and 102(d).
E None of the above.

first identify whether its AIA or pre-AIA

(A) is correct. You probably notice that this question is nearly identical to the previous question. Notice, however, that based on the date (i.e., “Today is August 28, 2013”) you will need to apply AIA 102. Under AIA 102, the only section that can be used to reject an application is 102(a). Under these facts, the rejection would be under AIA 102(a)(1), which prohibits a patent when the “claimed invention was patented… before the effective filing date of the claimed invention….”


Hubert Davis is the inventor of a set of ear plugs that actually, and truly, blocks out even the most annoying noises. Davis filed a non-provisional patent application on October 1, 2011, and was ultimately awarded his first patent on April 10, 2013. Prior to the issuance of the patent, Davis filed a continuation pursuant to Rule 1.53, which was accomplished on March 17, 2013. A First Action in the continuation was mailed on July 27, 2013. Davis quickly responded and achieved a Notice of Allowance on September 15, 2013, with this second patent issuing on November 28, 2013.

Mike Johnson would like to challenge these patents owned by Davis, but would prefer to avoid all out litigation in the district courts. Johnson walks into your office on December 19, 2013. What recommendation do you make?

A Post-grant review can be requested against both the first and the second patent because both were issued after March 16, 2013.
Post-grant review can be requested against both the first patent and the second patent because both were issued after September 16, 2012.
C Inter partes review cannot be requested against the first patent, because inter partes review is only applicable to patents issued on applications filed on or after March 16, 2013.
D Inter partes reexamination can be requested.
E None of the above.

(E) is correct.

(A) and (B) are incorrect because post-grant review is not available for either patent. A petition for a post-grant review of a patent must be filed no later than the date that is nine months after the date of the grant of a patent or of the issuance of a reissue patent. Among other things, the petitioner must certify that the patent for which review is sought is available for post-grant review. The post-grant review provisions, however, only apply to patents issued from applications that have an effective filing date on or after March 16, 2013. Thus, in this situation, post-grant review is not an option. Davis’s original filing date is October 1, 2011, which applies to both the first patent issued and to the patent issued as the result of the filing of a continuation. Since the application filed on March 17, 2013 is a continuation, the effective filing date will be October 1, 2011.

(C) is incorrect because inter partes review is available to challenge any patent regardless of whether granted under first-to-file or first-to-invent rules.

(D) is incorrect because inter partes reexamination is no longer available. (Any third party requester, prior to September 16, 2012, can request inter partes reexamination at any time during the period of enforceability of the patent (for a patent issued from an original application filed on or after November 29, 1999);)


There is no fee for filing a Petition to Make Special for an application relating to the treatment of cancer.?

The claims can be amended to add disclosure that was in the Abstract of the application as initially filed, without adding new matter.

false 708:
A petition to make an application special may be filed without a fee if the basis for the petition is:
(1) The applicant’s age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy resources; or
(iii) Contribute to countering terrorism.



whether an obviousness rejection is appropriate or not

2143 Examples of Basic Requirements of a Prima Facie Case of Obviousness

KSR 7 Exemplary rationales that may support a conclusion of obviousness include:


19. Linus is the inventor of an individualized security device, which he says has a code name of blanket. He confidentially discloses this to his lifelong friend and eternal pessimist Charles Brown on November 21, 2012. Unknown to Linus, Brown publicly uses the invention all over town, finding that it does actually make him feel better and provides enhanced confidence. Lucy notices Brown's increased confidence and correlates that to the blanket. Believing that Brown is a complete and total loser who will just make any situation bad, she decides to take the blanket for herself and files a patent application on March 15, 2013. Linus subsequently files a patent application on March 17, 2013.

Which section of 102 bars patentability with respect to the Linus patent application?
A 102(a)
B 102(b)
C 102(c)
D 102(f)
E None of the above

(E) is correct. AIA 102 will apply because Linus filed his patent application on March 17, 2013. Since Linus is the inventor who has filed an application within 12 months of public use, he will be able to eliminate the Brown use of his own invention by resorting to a Rule 130 affidavit. Linus may also be able to overcome any rejection based on the Lucy application by filing a Rule 130 affidavit. The question is not clear on that point because it goes beyond the scope of this question and is irrelevant to getting the correct answer. Nevertheless, a Rule 130 affidavit to remove Lucy would be applicable as long as Lucy is not claiming the same or substantially the same invention as Linus. If the claims in Lucy’s application are the same or substantially similar to what Linus files, an interference proceeding would be instituted. Notice that a derivation proceeding would not be appropriate because Lucy’s application is entitled to pre-AIA treatment. Where one application is entitled to pre-AIA, an interference proceeding will be conducted rather than a derivation proceeding. In any event, based on these facts, Linus will be able to overcome the Lucy application and the Brown public use. Therefore, no rejections will ultimately be proper.


20. A design patent mus be filed____________
A With no more than one independent claim and one dependent claim directed to each embodiment.
B Only in English.
C Without a drawing if a drawing is unnecessary to understanding the invention.
D Within eight months of the first filing in a foreign country if the benefit of priority is to be preserved.
E By transmitting a copy to the International Association of Design Architects and Engineers (IADAE) at 603 Water Street, S.W. Washington D.C. 20002, which will then send a copy to the Patent Office.

(D) is correct. The general rule with respect to preserving priority in a design patent case is that the design patent application must be filed within six months of the filing of the previously filed priority application. However, the Patent Law Treaties Implementation Act (effective on December 18, 2013.) provides an additional two months within which to claim priority. In order to avail yourself of this additional two months to claim priority, the right to claim priority must be restored. The right to claim priority can be restored only if the delay in filing the subsequent application was unintentional. Thus, in the situation where the subsequent application was unintentionally filed outside of the six-month priority window, priority can still be established provided it is filed within the additional two months provided, but if and only if the delay was unintentional. Thus, it can be said that, to preserve priority in the case of a design application, the subsequent application must be filed within eight months of the first filing in a foreign country.

(A) is incorrect because design patent applications (and patents) have only one claim, which is an independent claim.

(B) is not the best choice. It is true that applications need to be filed in English, but if they are filed in a different language, the applicant will be given an opportunity to present an English translation without losing the filing date; therefore, it is incorrect to say in an absolute way that a design patent must be filed only in English.

(C) is incorrect because design patents cannot be filed without a drawing. The essence of a design patent application is the drawings provided to show the ornamental design; the drawings are the disclosure of the invention.

(E) is incorrect because you file a design patent application with the U.S. Patent and Trademark Office.


A Notice of Allowance was transmitted by the Patent Office to your office on November 24, 2012. Your staff docketed the issue fee for payment on or before May 24, 2013, and your client was advised that unless you received payment in full before that date you would not pay the fee. On May 23, 2013, you receive a call from your client saying that he has mailed a check, but the check does not arrive by May 24. The best course of action would be:
A Pay the issue fee for your client.
B Advise your client that, because of your error, the application is now abandoned, but can be revived because the abandonment was unintentional.
C Pay the issue fee together with a three-month automatic extension of time.
D Advise your client that you did not pay the issue fee because the funds were not received in time.
E File a petition to withdraw from representation.

(B) is correct. The application has already gone abandoned because you have only three months to pay the issue fee. Thus, you had until February 24, 2013, within which to pay the issue fee. The application went abandoned as of February 25, 2013.

(A) is incorrect because it is too late to pay the issue fee.

(C) is incorrect because you cannot receive an extension of time to pay the issue fee.



periods for reply



Automatic extensions cant be obtained

Automatic extensions cant be obtained (memorize)
• Where the OA so states
• A reply brief (response to examiner’s answer in appeal)
• A request for an oral hearing in appeal
• Responding to a decision of the board
• Anything in an interference, and
• Due dates in reexaminations cant be auto extended and any extension for cause request in a reexamination must be filed before that date due

Due dates cant be extended even for cause:
• IDSs
• Any due date set by statute (6-month for reply OA)
• Issue fee (can be paid late upon a proper showing, extendable 2 months)
• 3-month deadline to obtain a refund for a fee paid as a large entity
• Filing formal drawings at time issue fee is paid


The 102(e) date for a PCT application filed on April 22, 2012 and published by the International Bureau is the international filing date if U.S. is designated and the publication is in English.

An offer for sale of the rights to the invention more than a year before the U.S. filing date will bar the application under 102(b).

incorrect because it is a true statement. On or after November 29, 2000, and before March 16, 2013, a PCT application would be considered 102(e) prior art as of the international filing date if the application published in English and designated the U.S.

(B) is false because an offer for sale of the rights to an invention is not a prior art event under pre-AIA 102. Although not implicated in this question, an offer for sale of rights is also not a prior art trigger under AIA 102.


25. You prepared and have been prosecuting an application relating to a new child's swing for your client GM. A first action is mailed to you on June 3, 2005 and, much to your surprise, a provisional rejection is made under 102(e) and for double patenting based upon another application you have never heard of and which was filed directly by someone in GM's patent department a year before your application. The disclosures of the two applications are virtually identical and you can see nothing unobvious in one over the other. GM's president tells you that obtaining patent protection on this swing is vital to the future of GM. The most appropriate response would be
A Abandon both of the applications.
B If the inventors of the two applications are coinventors, file a CIP and abandon both applications.
C Argue in response that the two inventions are distinct and are not obvious one to the other.
D Identify which was invented first, and argue that the other one is both a distinct invention and that it is not obvious in view of the first to be invented.
E All of the above.

(B) is correct. You are receiving this provisional 102(e) rejection as a courtesy. The 102(e) date does not exist until the application has published or the patent has issued; thus, the examiner as of this moment does not have an application or patent with a 102(e) date. The examiner is essentially telling you he/she will use the first application against the second under 102(e) once the first application publishes or patents. The question explains that the disclosures are virtually identical. This gives us several choices. Perhaps the easiest choice is not present. If the applications are virtually identical, you may just choose to abandon the second filed application, but this is not a choice. The best choice is present though, which is to attempt to combine the applications into one application. If you combine the applications together, then the offending application that would seek an extension of rights is no longer an obstacle. This can only be accomplished, however, if the inventors of the respective applications can be properly characterized as co-inventors. By filing a CIP and abandoning both applications, the rejection will be overcome.


On May 23, 2013 your older sister who has been practicing patent law for many years filed a new application directed to a portable fog horn. Your sister has been slipping badly in recent days and all the family is very concerned. Unfortunately, all of the drawings except Figure 1 were not filed because, as happens every time, the courier stopped in a bar on the way to the Patent Office where the drawings slipped out of the envelope as it lay on the bar for hours and hours. Fortunately, the specification was enough to enable all of the claims initially filed except claim 12. An oath was included, but it was defective because none of the addresses of the inventors was included. Your sister's check for the filing fee bounced higher than the Washington Monument. Given only these facts the Patent Office will:
A Transmit a letter indicating that the application is incomplete and no filing date has been awarded.
B Transmit in due course a Notice of Omitted Items and a Notice of Missing Parts.
C Cancel claim 12 and examine the remainder of the claims.
D Return the application papers because no fee was paid.
E Take disciplinary action against your sister because she bounced a check on the Patent Office.


(B) is correct. First, notice that the filing date of May 23, 2013, means that the Patent Law Treaties Implementation Act does not apply. The PLTIA did not become effective until December 18, 2013. Thus, in order to achieve a filing date, the application would need a specification, at least one claim, and at least one drawing (if necessary). This application would be awarded a filing date. However, the filing is not perfect by a long shot. The Patent Office will notice that the proper number of drawings did not arrive, which will provoke a Notice of Omitted Items. The Office will also issue a Notice of Missing Parts with respect to the defective oath and the missing fee.


preliminary amendment

714 Amendments, Applicant’s Action


28. Which of the following is not patentable subject matter:
A A new spy satellite developed in a super-secret classified CIA program.
B A computer-implemented process for continuously and automatically updating the value of mutual fund shares through the trading day.
C A process for hedging risk in an investment portfolio, which may be carried out without the assistance of a machine.
D Genetically engineered living organisms.
E A new use for an old drug.

(C) is correct. The only thing on this list that is not patent-eligible subject matter under 35 U.S.C. 101 is a process for hedging risk that is not associated with a machine. This was the invention in Bilski. Such an invention, in order to be patent eligible, must be tied to some kind of machine.

(A) is incorrect because a spy satellite would be patent eligible.

(B) is incorrect because a computer-implemented process for updating the value of mutual fund shares is patent eligible. This is the invention that was in question in State Street, where business methods were first held to be patentable. Although the test announced by Judge Rich in State Street relative to the patent eligibility of business methods is now defunct, everyone, including the Supreme Court, has recognized that the invention in question was indeed patent-eligible.

(D) is incorrect because a genetically engineered living organism is specifically patent eligible. This was the holding of the Supreme Court in Chakrabarty.

(E) is incorrect because a new use for an old drug is patent-eligible. This is how aspirin is inappropriately believed by the media to be constantly re-patented. Aspirin is old and the compound is not re-patented. What is patented are the new uses for aspirin, which continues to prove itself to be a tremendous wonder drug time and time again.


30. Which of the following can be extended by filing a request for an automatic extension of time and paying the required extension fee?
A Issue fee.
B Reply Brief.
C Response to a Notice of Missing Parts.
D Official Action in a Reexamination.

(C) is correct. A response to a Notice of Missing Parts can be automatically extended.

(A) is incorrect because no extension is available to pay the Issue Fee. You have only three months to pay the issue fee and failure to pay it timely would result in the application going abandoned.

(B) and (D) are incorrect because extensions for a Reply Brief and Office Action response in Reexamination can be extended only for cause, which requires the applicant to request an extension in advance of being late and providing sufficient reason why an extension should be granted.

(E) is incorrect because you cannot get an extension to file an Information Disclosure Statement (IDS). You can file an IDS for free without any statement up until the time the examiner beings work on the First Office Action. Between First Office Action and Final Rejection, you must either pay a fee or make a statement. After Final Rejection, you must both pay the fee and make a statement. The statement mentioned previously is one that explains that the prior art being submitted has been known for not more than 3 months by everyone substantively involved in the prosecution of the patent application (i.e., everyone who had a duty to disclose).


31. On May 3, 2013 you converted from a utility to a provisional application a pending application, which was filed on July 14, 2012. On Tuesday, July 15, 2013 you filed a utility application claiming priority from the provisional application. On June 3, 2012 the invention was fully described in an article, which appeared in the New York Times that day. The most appropriate action would be:
A Abandon the application filed July 15, 2013, and explain to your client the reason why the application must be abandoned.
B File a preliminary amendment pointing out to the examiner that the provisional application was converted from a utility application.
Point out to the examiner that the provisional patent application was filed on May 3, 2013, which means that the non-provisional patent application was timely filed within 12 months on July 15, 2013..
D File a petition to convert the utility application filed July 15, 2013 into a provisional application.
E File a new PCT application.

(A) is correct. You can convert a nonprovisional patent application into a provisional patent application, although the grant of such a request for conversion does not entitle the applicant to a refund of the fees that were previously paid. Further, the request must be filed prior to the earliest of: (1) abandonment of the originally filed application; (2) payment of the issue fee; or (3) expiration of 12 months after the filing date of the originally file application. The key to this question, however, is noticing that with the conversion, you are asking for the previously filed application to be treated as a provisional patent application. Therefore, after conversion, you will have a provisional patent application that was filed on July 14, 2012. Thus, you have only until July 14, 2013, within which to file a nonprovisional patent application that claims priority to the previously filed provisional patent application. Because you filed the nonprovisional patent application on July 15, 2013, you were one day too late. Because the invention was fully described in an article published June 3, 2012, you must abandon the application because the application filed on July 15, 2013, which cannot take priority to the provisional filing, is barred. Even under the AIA, the 12-month grace period under 102(b) still applies. Disclosures more than 12 months prior to filing under the AIA (or pre-AIA) result in a bar event.


On June 23, 2013 you receive a Final Rejection in an application that your client expected would be allowed. The examiner clearly did not understand the arguments you made and ignored the amendments to the claims. Your client instructed you to arrange an interview with the examiner so the client could explain why the rejection was defective. You called the examiner and the examiner told you that he understood fully your client’s position and would not grant an interview. The most appropriate action would be to:
A File a petition setting forth the reasons why an interview is necessary.
B Threaten the examiner with a reversal by the Board if he does not permit an interview.
C Appeal the rejection and argue that because the Examiner would not permit an interview, the rejection must be overturned.
D Advise your client that you have no right to an interview after a Final Rejection, and you have insufficient reasons to petition the Commissioner to request one.
E None of the above.

(D) is correct. After a final rejection, you no longer have a right to an interview with the examiner, and examiners can and do refuse interviews after final rejection. If that happens, you do not have a right to appeal to the PTAB or petition the Commissioner to force the examiner to conduct an interview. At this point procedurally, you would either need to file an RCE, a continuation or a Notice of Appeal, but what happens next goes beyond the scope of this question.


He secretly sold a version of the Mars Rover to a Korean spy that was dating his close friend Leonard in July 2012; the transaction taking place in a remote coffee shop in the Ukraine. Subsequently, A U.S. application was filed on December 1, 2014. would The sale to the Korean spy bar the app

Under AIA 102, the secret sale to the Korean spy will not be considered prior art. The Patent Office views the “or otherwise available to the public” residual clause of AIA 102(a)(1) as indicating that secret sale or use activity does not qualify as prior art.


The following fact pattern is for questions 39 and 40

Joan Blondel is an employee of the Department of Agriculture in the Topeka office. Her specialty is corn and she has an idea for a new technique for plowing which she wishes to patent. Her underling Helmut Schmidt, at her direction, used the technique during the 2010 plowing season and carefully compared results with similar fields this year and in other years. The results were ready on June 23, 2010 and were a stunning and surprising proof that the invention works. When she mentioned the invention to her father one night at dinner in September 2011, he suggested that she might get even better results if she plowed against the grain on slopes. There was not sufficient interest to test whether her father's idea worked, but she decided to include it in the patent application which was filed in January 2012. Claim 14 specifically sets forth this concept.

Can an application be filed and who are the inventors?
A An application cannot be filed because Joan works for the Federal government, and she is the sole inventor.
B An application can be filed, and Joan and her father are co-inventors.
C An application can be filed, and Joan, Helmut and her father are co-inventors.
D An application cannot be filed, and Joan and her father are co-inventors.
E An application cannot be filed, and Joan is the sole inventor.

(B) is correct. Based on these facts, the only people who contributed conception are Joan and her father, which means that they are the inventors. Helmut proved Joan’s brilliance, but there is nothing to suggest that he made a conceptive contribution to any claims; thus, he is merely a reducer to practice.


machine-or-transformation test
with respect to determining whether a process is patentable


2106 Patent Subject Matter Eligibility
B. Practical Application of Processes (Methods)
1. Factors To Be Considered in an Abstract Idea Determination of a Method Claim
(a) Whether the method involves or is executed by a particular machine or apparatus

This Court's precedents establish that the machine- or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process.


43. On or after September 16, 2012, which of the following may file a patent application in the United States?
A Legal Guardian of the inventor
B A joint inventor
C The assignee
D The inventor
E All of the above

(E) is correct because each may apply for a patent in the U.S. Phase II of the America Invents Act (AIA) went into effect on September 16, 2012. Prior to that date, only an inventor could apply for an application in the United States. Beginning on September 16, 2012, the assignee may also now apply for a patent in the U.S. Note that (A) is specifically correct. In the situation where the inventor is legally incapacitated, for whatever reason, the legal guardian of the inventor my apply on behalf of the inventor.


46. Regarding obviousness, which of the following are not false?
A "Teaching away" is a valid rebuttal to an obviousness rejection only when a person of ordinary skill would be explicitly discouraged.
B Rejections under 35 U.S.C. 103 must explain the reasoning associated with a rejection of a particular claim as being obvious.
C A reasonable expectation of success is not a mandatory requirement for a proper obviousness rejection.
D Cursory obviousness rejections can be sustained when it is readily apparent that the combination of references would be within the common-sense understanding of one of skill in the art.
E None of the above.

Only (B) is true. An examiner must explain the reason why a claim is being rejected as obvious. Unsubstantiated conclusions that a claim is obvious are not acceptable and do not satisfy the examiner’s burden to establish a prima facie rejection. NOTE: The examiner’s initial burden is sometimes discussed as the need for an examiner to make a prima facie case.


48. A prospective new client Mary Wilson brings to your office a patent application which has been finally rejected. Before she makes a decision on whether to retain you she says there is something she wants to discuss. Before you can say anything, she blurts out that she is very upset with her previous attorney because he could not get the application allowed. She also tells you that her licensee had been dealing with her previous attorney directly, and had disclosed to that attorney material prior art. She asked her previous attorney what he had done with that material prior art. He just winked at her and said "What prior art?" You confirm that no such material art was filed. You also conclude that the material art fully anticipates all that has been or could be claimed. The most appropriate action on your part would be:
A Decline to represent Ms. Wilson because there is nothing patentable, and advise the Patent Office of the unethical conduct on the part of the previous attorney.
B Accept a retainer from Ms. Wilson, and then advise her that she cannot get a patent.
C Advise Ms. Wilson never to repeat what she has just told you.
D Accept representation of Ms. Wilson, and do not disclose the material prior art, because otherwise no patent will issue.
E Refer Ms. Wilson to another attorney, and advise her to be quiet about the prior art.

(A) is correct. First, you come to the determination that there is nothing that can be patented; therefore, you must decline to represent the client. Second, a practitioner who knows that another practitioner has committed a violation of the USPTO Rules of Professional Conduct that raises a substantial question as to that practitioner’s honesty, trustworthiness or fitness as a practitioner must inform the Director of the Office of Enrollment and Discipline and any other appropriate professional authority.


A design patent issued on August 8, 2011 from an application filed June 7, 2009. The next day a reissue of the design patent was filed and that reissue was granted August 28, 2013. When is the first maintenance fee due?
A August 8, 2014
B February 8, 2015
C August 28, 2016
D February 28, 2017
E None of the above.

(E) is correct. 35 U.S.C. 41(b) prohibits maintenance fees for design patents and plant patents, saying: “No fee may be established for maintaining a design or plant patent in force.”


50. Which of the following is correct with respect to a derivation proceeding initiated at the USPTO?
A In a derivation proceeding, the applicant must detail how the invention was arrived at (or derived) so that the examiner can determine sufficiency of disclosure for purposes of 35 USC 112.
B No corroborating evidence is required where the affidavit is submitted by the inventor because the inventor is considered to be in the best place to offer accurate, reliable, first-hand information about what actually happened.
C Parties to a derivation proceeding may resort to binding arbitration. However, the Board will not consider the arbitration award unless it is filed within 20 days of the date of the award.
D A petition for derivation and supporting evidence must be served by a process server or other official designated by state law to serve court filings on the respondent at the correspondence address of record for the earlier application or subject patent.
E The petition in a derivation proceeding must explain why the claimed invention is the same or substantially the same as the invention disclosed to the respondent, but need not offer a claim construction.

(C) is correct, at least insofar as it goes. Parties may resort to binding arbitration. Notwithstanding, the Board is not bound by, and may independently determine, any question of patentability. Furthermore, the Board will not consider the arbitration award unless it: (1) is binding on the parties; (2) is in writing; (3) states in a clear and definite manner each issue arbitrated and the disposition of each issue; and (4) is filed within 20 days of the date of the award.

(A) is incorrect because this is not something that is required in the petition. The petitioner must show that at least one claim in the petitioner’s patent application is: (1) the same or substantially the same as the respondent’s claimed invention; and (2) the same or substantially the same as the invention disclosed to the respondent. Furthermore, the petition must: (1) provide sufficient information to identify the application or patent for which the petitioner seeks a derivation proceeding; (2) demonstrate that a claimed invention was derived from an inventor named in the petitioner’s application, and that the inventor from whom the invention was derived did not authorize the filing of the earliest application claiming such invention; and (3) for each of the respondent’s claims to the derived invention, (a) show why the claimed invention is the same or substantially the same as the invention disclosed to the respondent, and (b) identify how the claim is to be construed.

(B) is incorrect because inventor testimony must be corroborated by independent evidence.

(D) is incorrect because the parties may agree to service being made electronically. Otherwise, service may be by EXPRESS MAIL or by means at least as fast and reliable as EXPRESS MAIL. Personal service is not required.

(E) is incorrect because the petitioner is specifically required to offer a claim construction in the petition.