Question Bank 2013-2015 Flashcards
X files a nonprovisional patent application on March 1, 2013, and fails to submit the inventor’s oath or declaration with the application. When filing the application, X provided a correspondence address but did not provide the Office with a general authorization to charge any required fees to a deposit account. Subsequently, the Office mails a Notice to File Missing Parts requiring the surcharge under 37 C.F.R. 1.16(f) for not submitting the inventor’s oath or declaration. In accordance with the patent law and rules, when must Inventor Dennis pay the surcharge under 37 C.F.R. 1.16(f)?
(A). The surcharge must be paid within the period listed in the Notice to File Missing Parts, or within an extension period permitted therefrom.
(B). The surcharge must be paid prior to the Examiner issuing a first action on the merits.
(C). The surcharge can be postponed until a Notice of Allowability issues.
(D). The surcharge can be postponed until a Notice of Allowability issues but must be paid using a deposit account that covers fees under 37 C.F.R. 1.16(f).
(E). None of the above
A is the correct answer. See Federal Register / Vol. 77, No. 157, page 48787, which states in part: Section 1.53(f)(1) provides for a notice (if the applicant has provided a correspondence address) if the application does not contain the basic filing fee, the search fee, or the examination fee, or if the application under § 1.53(b) does not contain the inventor’s oath or declaration. Section 1.53(f)(1) provides that applicant must pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by § 1.16(f) within the time period set in the notice to avoid abandonment. Section 1.53(f)(3) (discussed subsequently) sets forth the time period for filing the inventor’s oath or declaration in an application under § 1.53(b) (an application under § 1.53(d) uses the inventor’s oath or declaration from the prior application) and provides the conditions under which an applicant may postpone
X was awarded a design patent stemming from a patent application filed March 18th, 2013, which was evaluated under the First to File provisions. It is now March 16th, 2014 and Y, a third party, wants to file a post grant review. Which, if any, is in accordance with the MPEP and regulations?
(A). Since the first-inventor-to-file provision of the AIA went into effect on March 16, 2013, and that patent was evaluated under Y is able to request a PGR.
(B). Since Y is requesting a PGR < 12 months from the issuance of the patent, the PGR will be granted.
(C). Since Y is requesting a PGR > 9 months from the issuance of the patent, the PGR will not be granted.
(D). Since Y is requesting a PGR on a design patent, the PGR will not be granted.
(E). none of the above are correct.
C is the correct answer. A post grant review may be requested on, or prior to the date that is 9 months after the grant of a patent or issuance of a reissue patent. 35 USC 321
X, a party in a PGR, wants an oral hearing. Which, if any, is in accordance with the rules and regulations set forth in the MPEP?
(A). The AIA permits members/party to a PGR to request an oral hearing within 2 weeks of the trial date.
(B). The AIA does not permit members/party to a PGR to request an oral hearing.
(C). The AIA permits members/party to a PGR to request an oral hearing by submitting an appeal to the board of directors
(D). The AIA permits members/party to a PGR to request an oral hearing.
(E). none of the above
D is correct answer. The AIA permits members/party to a PGR to request an oral hearing.
X files a nonprovisional application on March 17, 2013, claiming foreign priority to a different application filed before September 12, 2012. X then deletes the foreign priority claim during prosecution. What will happen to the application (in terms of being subject to the first-to-invent provisions vs the first-inventor-to-file provisions)?
(A). Since the application was filed prior to April 2nd, the app will still be considered subject to first-toinvent.
(B). When the foreign priority was deleted, the nonprovisional application switched from being subject to the first-to-invent provisions (as there were claims being referenced filed PRIOR to April 2nd, 2013) to the first-inventor-to-file provisions because the claims will have an effective filing date that is after April 2nd, 2013.
(C). When the foreign priority was deleted, the nonprovisional application switched from being subject to the first-to-invent provisions (as there were claims being referenced filed PRIOR to March 16th, 2013) to the first-inventor-to-file provisions because the claims will have an effective filing date that is after March 16, 2013.
(D). Deleting domestic benefit does not alter the effective filing date of the application
(E). None of the above.
C is the correct answer. Answer is C: When the foreign priority was deleted, the nonprovisional application switched from being subject to the first-to-invent provisions (as there were claims being referenced filed PRIOR to March 16th, 2013) to the first-inventor-to-file provisions because the claims will have an effective filing date that is after March 16, 2013.
X filed an application, which entered the national stage (35 U.S.C. 371) in the US April 3rd, 2013. However, the claims in the PCT application have an effective filing date of December 29th, 2012. Will the national stage application be subject to the first-inventor-to-file provisions?
(A). Yes. The first-to-file provisions will apply to the national stage application because the effective filing date of all claims is after March 16, 2013.
(B). No. The first-to-invent provisions will apply to the national stage application because the effective filing date of all claims is before March 16, 2013.
(C). Yes. The first-to-file provisions will apply to the national stage application because the effective filing date of all claims is before March 16, 2013.
(D). No. The first-to-invent provisions will apply to the national stage application because the effective filing date of all claims is after March 16, 2013.
(E). No. The first-to-invent provisions will apply to the national stage application because the effective filing date of all claims is before April 2nd, 2013.
B is the correct answer. The first-to-invent provisions will apply to the national stage application because the effective filing date of all claims is before March 16, 2013.
X files a patent app on March 17, 2013. The examiner cites a technical document that was published on March 16, 2013. However, the technical document describes work that X performed prior to March 17th, 2013. Is the document prior art to X’s application?
(A). Yes, the document is considered prior art and will preclude X from obtaining a patent.
(B). Yes, the document is considered prior art, but X will be able to overcome the prior art if he can show that the document came from her own work (meaning, that the document was written about her own research).
(C). No, the document is not considered prior art as it was published < 1 year from X’s filing
(C). No, the foreign patent application is not considered prior art because it was not translated into english
(D). No, the foreign patent application is not considered prior art because it was filed without referring to a US patent application.
(E). No. ‘First to file’ only applies to applications that are filed in the U.S, even if the application started out life in another country.
A is the correct answer. The foreign patent is considered prior art (under first to file).
A PCT application was submitted, but 30 months lapses and the applicant does not provide the necessary requirements for the national stage due to unavoidable circumstances.
What result?
(A). The applicant can petition to revive
(B). The applicant should give up as the time period has lapsed
(C). File a notice of appeal requesting an extension of time.
(D). The applicant can petition to revive using Form PTO/SB/61PCT
(E). The applicant can request an interview to explain the circumstances of missing the 30 month deadline.
D is the correct answer. See MPEP 1893.02 and MPEP 711. If the requirements ** > for the submission of the basic national fee and a copy of the international application (if necessary) prior to the expiration of 30 months from the priority date are not satisfied, then the international application becomes abandoned as to the United States at thirty months from the priority date. 37 CFR 1.495 (h). If the requirements under 37 CFR 1.495 (b) are timely met, but the requirements under 37 CFR 1.495 (c) for an English translation of the international application, oath/declaration, search fee, examination fee and application size fee are not met within a time period set in a notice provided by the Office, then the application will become abandoned upon expiration of the time period set in the notice. See 37 CFR 1.495 (c)(2) and 1.495 (h) < . Examiners and applicants should be aware that sometimes papers filed for the national stage are deficient and abandonment results. For example, if the fee submitted does not include at least the amount of the basic national fee that is due, the application becomes abandoned. Applicant may file a petition to revive an abandoned application in accordance with the provisions of 37 CFR 1.137 . See MPEP § 711.03(c) . > For applicant’s convenience, applicant may use either Form PTO/SB/61PCT (unavoidably abandoned application) or Form PTO/SB/64PCT (unintentionally abandoned application), as appropriate, for this purpose. These forms are available online at http://www.uspto.gov/web/forms/index.html#patent. <
X, an employee of company A, assignes the rights of his invention to the company. Can company A, as the assignee, file a patent application for an invention on behalf of the company rather than on behalf of the inventor?
(A). No. The company must file on behalf of the inventor
(B). Yes, the assignee can be the applicant, and company X can file the application without an oath or declaration from Sam.
(C). Yes, the assignee can be the applicant, and company X can file the application, however, Sam must still execute an oath/declaration.
(D). No, the assignee can never be the applicant.
(E). none of the above are correct
C is the correct answer. The assignee can be the applicant. However, the Inventor Sam must still execute an oath/declaration. Furthermore, the assignee may only execute a substitute statement in lieu of an oath/declaration where the inventor refuses to execute an oath/ declaration, cannot be found or reached after diligent effort, is deceased, or is legally incapacitated.
According to the Post AIA section 35 U.S.C. 102(a)(1), what is the “effective filing date” of a claimed invention?
(A). It is the later of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the nonprovisional application claims domestic benefit or foreign priority of another application that describes the subject matter.
(B). It is the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the nonprovisional application claims foreign benefit or foreign priority of another application that does not describe the subject matter.
(C). It is the later of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the provisional application claims domestic benefit or foreign priority of another application that describes the subject matter.
(D). It is the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the provisional application claims domestic benefit or foreign priority of another application that describes the subject matter.
(E). It is the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the nonprovisional application claims domestic benefit or foreign priority of another application that describes the subject matter.
E is correct answer. The “effective filing date” of a claimed invention is the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the date to which the nonprovisional application claims domestic benefit or foreign priority of another application that describes the subject matter.
Inventor X receives notice that a PGR was instituted involving his patent and several claims contained in his patent. During the process of review, X decides he wants to amend the claims. Which, if any, is in accordance with the MPEP?
(A). A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during an PGR. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims.
(B). A patent owner may not file any amendments to the challenged patent claims during a PGR.
(C). A patent owner may file motions to amend the challenged patent claims during a PGR. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims, and add additional matter not contained in the original patent.
(D). A patent owner may file one motion to amend any of the patent claims, subject to the standards and procedures set by the Office, during a PGR. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims.
(E). None of the above is correct.
A is the correct answer. A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during a post grant review. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims.
X is part of a PGR. However, he would like certain information disclosed during the review to remain confidential. Which, if any, of the following is in accordance with the MPEP?
(A). X may seek to have a document sealed and protected by filing a motion to seal.
(B). Since the file of an PGR is open to the public under the AIA, any information disclosed during the review is available to the public.
(C). X may obtain a protective order, which will act to govern the exchange and submission of confidential information
(D). Both A and C
(E). None of the above
D is the correct answer. The rules of the AIA state that the file of a post grant review is open to the public. However, a party may seek to have a document sealed by filing a motion to seal. The rules and regulations of the AIA also allow for protective orders to govern the exchange and submission of confidential information.
X filed a petition for a PGR. The Post Grant Review was instituted on May 3rd, 2013. X wants to file additional information? Which, if any, is in accordance with the MPEP?
(A). X cannot file additional information once PGR is instituted.
(B). X has until June 2nd, 2013 to file additional information.
(C). X has until August 2nd, 2013 to file additional information.
(D). X has until October 2nd, 2013 to file additional information.
(E). X has until August 3rd, 2013 to file additional information.
B is the correct answer. A petitioner may supplement information in the petition for PGR by filing motion within one month of the date trial is instituted, thus X has until June 2nd, 2013 to file additional information.
X filed a petition for PGR. The PGR was instituted on May 2nd, 2013. On May 3rd, 2013, X uncovers new material that is essential to the PGR, and wants to file additional information? Which, if any, is in accordance with the MPEP?
(A). X may not file a motion to submit submit supplemental information belatedly after the one month mark post institution of the PGR.
(B). X may file a motion to submit submit supplemental information belatedly, by showing that the information could not have been earlier presented and that it is in the interests of justice for the Board to consider the information.
(C). X may file a motion to submit submit supplemental information as it is within the 3 month time frame post PGR institution to submit information.
(D). X may not file a motion to submit submit supplemental information belatedly, as the information is considered a new submission
(E). None of the above is correct.
B is the correct answer. A party may be authorized to file a motion to submit supplemental information belatedly. A party will not be permitted to submit supplemental information belatedly except upon a showing that the information could not have been earlier presented and that it is in the interests of justice for the Board to consider the information.
X, a party in a PGR, wants an oral hearing. Which, if any, is in accordance with the rules and regulations set forth in the MPEP?
(A). The AIA permits a party to a PGR to request an oral hearing within 2 weeks of the trial date.
(B). The AIA does not permits a party to a PGR to request an oral hearing.
(C). The AIA permits a party to a PGR to request an oral hearing by submitting an appeal to the board of directors
(D). The AIA permits a party to a PGR to request an oral hearing.
(E). none of the above
D is the correct answer. The AIA permits members/party to a PGR to request an oral hearing.
X petitions a PGR over a patent issued to Y, and a PGR is instituted. However, during the proceedings of the PGR, X and Y come to a mutual agreement, and want to stop the PGR. Which, if any, is in accordance with the rules and regulations of the MPEP?
(A). The rules and regulations of the AIA allow the parties to a PGR to settle.
(B). The rules and regulations of the AIA do not allow the parties to a PGR to settle.
(C). The rules and regulations of the AIA allow the parties to a PGR to settle, but only if the both file a petition to terminate the PGR
(D). The rules and regulations of the AIA allow the parties to a PGR to settle, and the Board must terminate the proceeding
(E). None of the above are correct.
A is the correct answer. The rules and regulations of the AIA allow the parties to a PGR to settle. Any settlement will terminate the proceeding and the Board may terminate the proceeding or issue a final written decision. 35 USC 327
Which, if any, is true about the submission of an application data sheet (ADS)?
(A). Is required where submission of the inventor’s oath or declaration is to be delayed.
(B). Is required where each inventor’s oath or declaration identifies only the inventor (or person) executing that particular oath or declaration and not all of the inventors.
(C). Is required where there is a claim for domestic benefit (37 CFR 1.78), or foreign priority claim (37 CFR 1.55)(except foreign priority for national stage applications).
(D). Is required where there is an identification of applicants other than the inventors under 37 CFR 1.46 (except for national stage applications, where the applicant is the person identified in the international stage).
(E). Submission of an application data sheet is required in all of the above
E is correct answer. MPEP 601 - Submission of an application data sheet (ADS) should be routine for all applications but is required where: (i) submission of the inventor’s oath or declaration is to be delayed; (ii) each inventor’s oath or declaration identifies only the inventor (or person) executing that particular oath or declaration and not all of the inventors; (iii) there is a claim for domestic benefit (37 CFR 1.78), or foreign priority claim (37 CFR 1.55)(except foreign priority for national stage applications); or (iv) there is an identification of applicants other than the inventors under 37 CFR 1.46 (except for national stage applications, where the applicant is the person identified in the international stage).
Z, an employee of company X, assigns the rights of his invention to the company. Can company X, as the assignee; file a patent application for an invention on behalf of the company rather than on behalf of the inventor?
(A). No. The company must file on behalf of the inventor
(B). Yes, the assignee can be the applicant, and company X can file the application without an oath or declaration from Z.
(C). Yes, the assignee can be the applicant, and company X can file the application, however, Z must still execute an oath/declaration.
(D). No, the assignee can never be the applicant.
(E). none of the above are correct
C is the correct answer. Yes, the assignee (company X) can be the applicant. However, the Inventor Sam must still execute an oath/declaration. Furthermore, the assignee (Company X) may only execute a substitute statement in lieu of an oath/declaration where the inventor refuses to execute an oath/ declaration, cannot be found or reached after diligent effort, is deceased, or is legally incapacitated.
X, Y, and Z are all inventors that worked on the same invention. They filed for a patent application, and mistakenly listed W on the application as an inventor.
What is the applicant required to submit to change inventorship?
(A). They must file a request under 37 CFR 1.48(a).
(B). They must submit an application data sheet listing the correct inventors.
(C). They must pay a $130
(D). A and C
(E). A, B, and C
E is correct answer. MPEP 201 - In Order to change inventorship, applicants are required to: 1) file request under 37 CFR 1.48(a), 2) Submit an application data sheet listing the correct inventors, 3) Pay a $130 fee. Additionally, the applicant must submit an inventor’s oath or declaration for each added inventor.
What information must an inventor supply in his/her oath/declaration to be filed in the Office for a patent application?
(A). That he/she is an original inventor of the claimed invention
(B). That he/she authorized the filing of the patent application for the claimed invention.
(C). That the application filing is made without deceptive intent
(D). A and B
(E). A and C
D is the correct answer. MPEP 602 - An inventor must state in his/her oath/declaration that (i) he/she is an original inventor of the claimed invention; and (ii) he/she authorized the filing of the patent application for the claimed invention. An inventor is no longer required to (i) state that he/she is the first inventor of the claimed invention; (ii) state that the application filing is made without deceptive intent; or (iii) provide his/her country of citizenship.
X filed an application on October 16, 2012. However, in a rush to file, he forgot to state that he was the “first” inventor in the declaration. Which, if any, is in accordance with the rules and regulations set forth in the MPEP?
(A). An inventor’s oath or declaration for an application filed on or after September 16, 2012, is subject to the requirements of 35 U.S.C. 115 as amended by the AIA and needs to state that the inventor is the “first” inventor, even though the application may be subject to the first-to-invent provisions of 35 U.S.C. 102 that the inventor be the “first” inventor.
(B). An inventor’s oath or declaration for an application filed on or after September 16, 2012, is subject to the requirements of 35 U.S.C. 115 as amended by the AIA and does not need to state that the inventor is the “first” inventor, even though the application may be subject to the first-to-invent provisions of 35 U.S.C. 102 that the inventor be the “first” inventor.
(C). An inventor’s oath or declaration for an application filed before April 2nd, 2013, is subject to the requirements of 35 U.S.C. 115 as amended by the AIA and does not need to state that the inventor is the “first” inventor.
(D). Only an inventor’s oath or declaration for an application filed after April 2nd is subject to the requirements of 35 U.S.C. 115 as amended by the AIA and does not need to state that the inventor is the “first” inventor.
(E). none of the above
B is the correct answer. MPEP 602 - An inventor’s oath or declaration for an application filed on or after September 16, 2012, is subject to the requirements of 35 U.S.C. 115 as amended by the AIA and does not need to state that the inventor is the “first” inventor. This might be confusing, because the application may be subject to the first-to-invent provisions of 35 U.S.C. 102 that the inventor be the “first” inventor, however, post September 16th, 2012, 35 USC 115 was amended and the requirement to name the “first” inventor was removed.
What is the effective date for the provisions reflected in the AIA concerning inventor’s oaths and declarations?
(A). September 15th, 2012
(B). September 16th, 2012
(C). September 16th, 2013
(D). April 2nd, 2012
(E). April 2nd, 2013
B is the correct answer. The effective date for the inventor’s oath/declaration provision in the AIA is September 16, 2012.
X, an inventor, filed an application for his utility patent on September 15th, 2012. On September 17th, X wants to submit national stage application under 35 U.S.C. 371. Which, if any, is in accordance with the rules and regulations set forth in the MPEP?
(A). X’s declaration (the inventors declaration) for the national stage application must comply with the AIA rule changes to the inventor’s declaration.
(B). X’s declaration (the inventors declaration) is not subject to the AIA rule changes, as submission of a national stage application is not the filing of an application. Submission of a national stage application relates to entry of the international application into the national stage. The filing date of a national stage application is the filing date of the international application.
(C). X’s declaration (the inventors declaration) is subject to the AIA rule changes, as submission of a national stage application is considered the filing of an application. The filing date of a national stage application is the filing date in the national stage.
(D). X’s declaration (the inventors declaration) is not subject to the AIA changes to inventor’s declarations because it was filed prior to April 2nd, 2013.
(E). None of the above are correct.
B is the correct answer. X’s declaration (the inventors declaration) is not subject to the AIA rule changes, as submission of a national stage application is not the filing of an application. Submission of a national stage application relates to entry of the international application into the national stage. The filing date of a national stage application is the filing date of the international application. Also, see MPEP § 1893.03(b).
X is part of an inter partes review. However, he would like certain information disclosed during the review to remain confidential. Which, if any, of the following is in accordance with the MPEP?
(A). Since the file of an inter partes review is open to the public under the AIA, any information disclosed during the review is available to the public.
(B). X may seek to have a document sealed and protected by filing a motion to seal.
(C). X may obtain a protective order, which will act to govern the exchange and submission of confidential information.
(D). Both B and C
(E). None of the above
D is the correct answer. While it is true that under the AIA the file of an inter partes review is open to the public, a party may seek to have a document sealed by filing a motion to seal. Furthermore, the AIA also provides for protective orders to govern the exchange and submission of confidential information.
X, a party in an inter partes review, wants an oral hearing. Which, if any, is in accordance with the MPEP?
(A). The AIA permits members/party to a inter partes review to request an oral hearing.
(B). The AIA does not permit members/party to a inter partes review to request an oral hearing.
(C). The AIA only permits the named inventor(s) party to a inter partes review to request an oral hearing.
(D). The AIA permits members/party to a inter partes review to request an oral hearing by submitting an appeal to the board of directors
(E). The AIA permits members/party to a inter partes review to request an oral hearing within 2 weeks of the trial date.
A is the correct answer. The AIA permits members/party to a inter partes review to request an oral hearing.
X, a party to an inter partes review, disagrees with the final decision of the review. Which, if any, is in accordance with the MPEP?
(A). X may appeal the Board’s final decision.
(B). X may submit a petition to the Board.
(C). X may appeal the Boards final decision by appealing to the Federal Circuit.
(D). X may request an oral hearing to appeal the Board’s decision.
(E). None of the above is correct
C is the correct answer. A party dissatisfied with the final written decision in an inter partes review may appeal to the Federal Circuit. Therefore, X may submit an appeal to the Federal Circuit.
What is the effective date for the post grant review (PGR) implementation?
(A). September 15th, 2012
(B). September 16th, 2012
(C). April 2nd, 2013
(D). April 1st, 2013
(E). March 16th, 2013
B is the correct answer. The effective date for the post grant review (PGR) in the AIA is September 16, 2012. 35 USC 6
Inventor Y receives notice that an inter partes review was instituted involving his patent and several claims contained in his patent. During the process of review, Y decides he wants to amend the claims. Which, if any, is in accordance with the MPEP?
(A). A patent owner may not file any amendments to the challenged patent claims during an inter partes review.
(B). A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during an inter partes review. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims.
(C). A patent owner may file motions to amend the challenged patent claims during an inter partes review. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims, and add additional matter not contained in the original patent.
(D). A patent owner may file one motion to amend any of the patent claims, subject to the standards and procedures set by the Office, during an inter partes review. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims.
(E). None of the above is correct.
B is the correct answer. A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during an inter partes review. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims.
What are the specific statutory and regulatory requirements a petitioner must meet in order to petition for a post grant review according the rules and regulations set forth in the MPEP? The petitioner must:
(A). Identify all real parties in interest.
(B). Identify all claims challenged and all grounds on which the challenge to each claim is based.
(C). Provide copies of evidence relied upon and submit the required fee.
(D). Identify the grounds for standing; provide a claim construction for each challenged claim; specifically explain the grounds for unpatentability; and specifically explain the relevance of evidence relied upon.
(E). All of the above are required to petition for a PGR
E is correct answer. In a petition for a post grant review, the petitioner must by statute (i) identify all real parties in interest; (ii) identify all claims challenged and all grounds on which the challenge to each claim is based; and (iii) provide copies of evidence relied upon. The petition must be accompanied by a fee. In addition, the petitioner must by rule (i) identify the grounds for standing; (ii) provide a claim construction for each challenged claim; (iii) specifically explain the grounds for unpatentability; and (iv) specifically explain the relevance of evidence relied upon.
X, a party in an inter partes review, wants an oral hearing. Which, if any, is in accordance with the MPEP?
(A). The AIA permits members/party to a inter partes review to request an oral hearing.
(B). The AIA does not permit members/party to a inter partes review to request an oral hearing.
(C). The AIA only permits the named inventor(s) party to a inter partes review to request an oral hearing.
(D). The AIA permits members/party to a inter partes review to request an oral hearing by submitting an appeal to the board of directors
(E). The AIA permits members/party to a inter partes review to request an oral hearing within 2 weeks of the trial date.
A is the correct answer. The AIA permits members/party to a inter partes review to request an oral hearing.
X, a party to an inter partes review, disagrees with the final decision of the review. Which, if any, is in accordance with the MPEP?
(A). X may appeal the Board’s final decision.
(B). X may submit a petition to the Board.
(C). X may appeal the Boards final decision by appealing to the Federal Circuit.
(D). X may request an oral hearing to appeal the Board’s decision.
(E). None of the above is correct
C is the correct answer. A party dissatisfied with the final written decision in an inter partes review may appeal to the Federal Circuit. Therefore, Biff may submit an appeal to the Federal Circuit.
What is the effective date for the post grant review (PGR) implementation?
(A). September 15th, 2012
(B). September 16th, 2012
(C). April 2nd, 2013
(D). April 1st, 2013
(E). March 16th, 2013
B is the correct answer. The effective date for the post grant review (PGR) in the AIA is September 16, 2012. 35 USC 6
X was awarded a design patent stemming from a patent application filed September 18th, 2012. It is now March 16th, 2013 and Y, a third party, wants to file a post grant review. Which, if any, is in accordance with the MPEP and regulations?
(A). Since the first-inventor-to-file provision of the AIA went into effect on March 16, 2013, Y is able to request a PGR.
(B). Since Y is requesting a PGR < 9 months from the issuance of the patent, the PGR will be granted.
(C). Only those patents issuing from applications subject to first-inventor-to-file provisions of the AIA is eligible for PGR, thus, X’s patent is not eligible for PGR.
(D). Design patents are not eligible for PGR.
(E). None of the above.
C is the correct answer. Only those patents issuing from applications subject to first-inventor-to-file provisions of the AIA are eligible for PGR, thus, X’s patent is not eligible for PGR. Since X’s patent was issued prior to March 16th, 2013, it is not eligible for PGR. 35 USC 321
Sam was awarded a design patent stemming from a patent application filed March 18th, 2013, which was evaluated under the First to File provisions. It is now March 16th, 2014 and Bill, a third party, wants to file a post grant review. Which, if any, is in accordance with the MPEP and regulations?
(A). Since the first-inventor-to-file provision of the AIA went into effect on March 16, 2013, and that patent was evaluated underBill is able to request a PGR.
(B). Since Bill is requesting a PGR < 12 months from the issuance of the patent, the PGR will be granted.
(C). Since Bill is requesting a PGR > 9 months from the issuance of the patent, the PGR will not be granted.
(D). Since Bill is requesting a PGR on a design patent, the PGR will not be granted.
(E). none of the above are correct.
C is the correct answer. A post grant review may be requested on, or prior to the date that is 9 months after the grant of a patent or issuance of a reissue patent. 35 USC 321
What are the specific statutory and regulatory requirements a petitioner must meet in order to petition for a post grant review according the rules and regulations set forth in the MPEP? The petitioner must:
(A). Identify all real parties in interest.
(B). Identify all claims challenged and all grounds on which the challenge to each claim is based.
(C). Provide copies of evidence relied upon and submit the required fee.
(D). Identify the grounds for standing; provide a claim construction for each challenged claim; specifically explain the grounds for unpatentability; and specifically explain the relevance of evidence relied upon.
(E). All of the above are required to petition for a PGR
E is correct answer. In a petition for a post grant review, the petitioner must by statute (i) identify all real parties in interest; (ii) identify all claims challenged and all grounds on which the challenge to each claim is based; and (iii) provide copies of evidence relied upon. The petition must be accompanied by a fee. In addition, the petitioner must by rule (i) identify the grounds for standing; (ii) provide a claim construction for each challenged claim; (iii) specifically explain the grounds for unpatentability; and (iv) specifically explain the relevance of evidence relied upon.
Inventor X receives notice that a PGR was instituted involving his patent and several claims contained in his patent. During the process of review, he decides he wants to amend the claims. Which, if any, is in accordance with the MPEP?
(A). A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during an PGR. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims.
(B). A patent owner may not file any amendments to the challenged patent claims during a PGR.
(C). A patent owner may file motions to amend the challenged patent claims during a PGR. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims, and add additional matter not contained in the original patent.
(D). A patent owner may file one motion to amend any of the patent claims, subject to the standards and procedures set by the Office, during a PGR. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims.
(E). None of the above is correct.
A is the correct answer. A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during a post grant review. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims.
X is part of an PGR. However, he would like certain information disclosed during the review to remain confidential. Which, if any, of the following is in accordance with the MPEP?
(A). X may seek to have a document sealed and protected by filing a motion to seal.
(B). Since the file of an PGR is open to the public under the AIA, any information disclosed during the review is available to the public.
(C). X may obtain a protective order, which will act to govern the exchange and submission of confidential information
(D). Both A and C
(E). None of the above
D is the correct answer. The rules of the AIA state that the file of a post grant review is open to the public. However, a party may seek to have a document sealed by filing a motion to seal. The rules and regulations of the AIA also allow for protective orders to govern the exchange and submission of confidential information.
X filed a petition for a PGR. The Post Grant Review was instituted on May 3rd, 2013. X wants to file additional information? Which, if any, is in accordance with the MPEP?
(A). X cannot file additional information once PGR is instituted.
(B). X has until June 2nd, 2013 to file additional information.
(C). X has until August 2nd, 2013 to file additional information.
(D). X has until October 2nd, 2013 to file additional information.
(E). X has until August 3rd, 2013 to file additional information.
B is the correct answer. A petitioner may supplement information in the petition for PGR by filing motion within one month of the date trial is instituted, thus X has until June 2nd, 2013 to file additional information.
X filed a petition for PGR. The PGR was instituted on May 2nd, 2013. On May 3rd, 2013, X uncovers new material that is essential to the PGR, and wants to file additional information? Which, if any, is in accordance with the MPEP?
(A). X may not file a motion to submit supplemental information belatedly after the one month mark post institution of the PGR.
(B). X may file a motion to submit supplemental information belatedly, by showing that the information could not have been earlier presented and that it is in the interests of justice for the Board to consider the information.
(C). X may file a motion to submit supplemental information as it is within the 3 month time frame post PGR institution to submit information.
(D). X may not file a motion to submit supplemental information belatedly, as the information is considered a new submission
(E). None of the above is correct.
B is the correct answer. A party may be authorized to file a motion to submit supplemental information belatedly. A party will not be permitted to submit supplemental information belatedly except upon a showing that the information could not have been earlier presented and that it is in the interests of justice for the Board to consider the information.
X, a party in a PGR, wants an oral hearing. Which, if any, is in accordance with the rules and regulations set forth in the MPEP?
(A). The AIA permits members/party to a PGR to request an oral hearing within 2 weeks of the trial date.
(B). The AIA does not permit members/party to a PGR to request an oral hearing.
(C). The AIA permits members/party to a PGR to request an oral hearing by submitting an appeal to the board of directors
(D). The AIA permits members/party to a PGR to request an oral hearing.
(E). none of the above
D is the correct answer. The AIA permits members/party to a PGR to request an oral hearing.
X petitions a PGR over a patent issued to Y, and a PGR is instituted. However, during the proceedings of the PGR, X and Y come to a mutual agreement, and want to stop the PGR. Which, if any, is in accordance with the rules and regulations of the MPEP?
(A). The rules and regulations of the AIA allow the parties to a PGR to settle.
(B). The rules and regulations of the AIA do not allow the parties to a PGR to settle.
(C). The rules and regulations of the AIA allow the parties to a PGR to settle, but only if the both file a petition to terminate the PGR
(D). The rules and regulations of the AIA allow the parties to a PGR to settle, and the Board must terminate the proceeding
(E). None of the above are correct.
A is the correct answer. The rules and regulations of the AIA allow the parties to a PGR to settle. Any settlement will terminate the proceeding and the Board may terminate the proceeding or issue a final written decision. 35 USC 327
Which, if any, is true about the submission of an application data sheet (ADS)?
(A). Is required where submission of the inventor’s oath or declaration is to be delayed.
(B). Is required where each inventor’s oath or declaration identifies only the inventor (or person) executing that particular oath or declaration and not all of the inventors.
(C). Is required where there is a claim for domestic benefit (37 CFR 1.78), or foreign priority claim (37 CFR 1.55)(except foreign priority for national stage applications).
(D). Is required where there is an identification of applicants other than the inventors under 37 CFR 1.46 (except for national stage applications, where the applicant is the person identified in the international stage).
(E). Submission of an application data sheet is required in all of the above
E is correct answer. MPEP 601 - Submission of an application data sheet (ADS) should be routine for all applications but is required where: (i) submission of the inventor’s oath or declaration is to be delayed; (ii) each inventor’s oath or declaration identifies only the inventor (or person) executing that particular oath or declaration and not all of the inventors; (iii) there is a claim for domestic benefit (37 CFR 1.78), or foreign priority claim (37 CFR 1.55)(except foreign priority for national stage applications); or (iv) there is an identification of applicants other than the inventors under 37 CFR 1.46 (except for national stage applications, where the applicant is the person identified in the international stage).
Y, an employee of company X, assignees the rights of his invention to the company. Can company X, as the assignee, file a patent application for an invention on behalf of the company rather than on behalf of the inventor?
(A). No. The company must file on behalf of the inventor
(B). Yes, the assignee can be the applicant, and company X can file the application without an oath or declaration from Sam.
(C). Yes, the assignee can be the applicant, and company X can file the application, however, Sam must still execute an oath/declaration.
(D). No, the assignee can never be the applicant.
(E). none of the above are correct
C is the correct answer. Yes, the assignee (company X) can be the applicant. However, the Inventor Y must still execute an oath/declaration. Furthermore, the assignee (Company X) may only execute a substitute statement in lieu of an oath/declaration where the inventor refuses to execute an oath/ declaration, cannot be found or reached after diligent effort, is deceased, or is legally incapacitated.
X, an inventor, assigned the entire interest of his patent to Y on September 15th, 2013. Y files an application on September 16, 2012.
Who should sign a power of attorney?
(A). X
(B). Y
(C). Both X and Y must sign
(D). Z, the patent attorney enlisted to file
(E). None of the above are correct.
B is the correct answer. If the assignee is named as the applicant, then the assignee-applicant must give the power of attorney. See 37 CFR 1.32. A power of attorney from an assignee may be executed by a person having apparent authority to do so, such as the President of the assignee, or by including a statement of authorization. See MPEP § 324.
S and M, co-inventors, meant to name B as the assignee in their patent application, which was filed September 20th, 2013. However, S and M mistakenly named B as the application in the section of the ADS requesting applicant information. Which, if any, is in accordance with the rules and regulations of the MPEP to correct the error in order to identify the inventors as the applicant?
(A). S and M can do nothing to correct the information. Since B was named as the assignee, only he can request to correct or update the name(s) of the applicant.
(B). Once the assignee is misidentified as the applicant, a request to correct or update the name of the applicant would need to be accompanied by a new ADS and a statement under 37 C.F.R 3.73 that shows ownership by the inventors.
(C). Once the assignee is misidentified as the applicant, a request to correct or update the name of the applicant would need to be accompanied by a new oath or declaration, and a statement under 37 C.F.R 3.73 that shows ownership by the inventors.
(D). Once the assignee is misidentified as the applicant, a request to correct or update the name of the applicant would need to be accompanied by a petition and a statement under 37 C.F.R 3.73 that shows ownership by the inventors, and lists the inventors by name and nationality,
(E). None of the above are in accordance with the MPEP.
B is the correct answer. Once the assignee is misidentified as the applicant, a request to correct or update the name of the applicant would need to be accompanied by a new ADS and a statement under 37 C.F.R 3.73 that shows ownership by the inventors.
M, an inventor, filed a non-provisional application on August 30th, 2012, with a declaration executed in her maiden name (F). M was married on September 16th, 2012, and subsequently filed to have her last name changed. Mary also wants to have the application record reflect her new last name, D. Which, if any, is in accordance with the rules and regulations set forth in the MPEP?
(A). M is unable to change her name on the application due to marriage, as this is not a valid reason for altering a patent application.
(B). M should request a change in inventor name by submitting a petition under 37 C.F.R 1.182 with a $400 fee.
(C). M should amend the application by submitting a signed request to correct the name submitted with an application data sheet and a $130 processing fee?
(D). B or C is correct
(E). None of the above is correct
C is the correct answer. MPEP 201.03. Mary should file a request to change her name under amended 37 C.F.R. 1.48(f), since she is seeking to correct her name after September 16, 2012.
X files for a patent on March 17th, 2013. The patent issues on January 4th, 2014. X comes across some work done by Z, and believes this work infringes on his patent. X sues Z for infringement. Z then files a counterclaim for invalidity based on a prior sales of X. Z wants to initiate PGR in the PTO. Z requests PGR on October 17, 2014, and states in the request: “prior sales by X means that there is a reasonable likelihood that Z will prevail in invalidating at least one claim in the patent.” However, the PTO rejects the request for PGR. Under what conditions would the PTO deny the request?
(A). The request for PGR used the wrong standard, as “reasonable likelihood” only applies for IPR
(B). The request for PGR cannot be based on prior sales
(C). The request was untimely
(D). A and B
(E). A and C
E is correct answer. Both A and C are correct. A PGR must be initiated within 9 months of the patent issue date. Be careful of not reading into questions, because the answer didn’t specify why the request was untimely. Be aware of the “counterclaim” rule. Once a declaratory judgment action for invalidity is filed, the person(s) is precluded from requesting PGR, but filing a declaratory judgment counterclaim is allowable.
X, an inventor, assigned the entire interest of his patent to Y on September 15th, 2013. Y files an application on September 16, 2012.
Who should sign a power of attorney?
(A). X
(B). Y
(C). Both X and Y must sign
(D). Z, the patent attorney enlisted to file
(E). None of the above are correct.
B is the correct answer. If the assignee is named as the applicant, then the assignee-applicant must give the power of attorney. See 37 CFR 1.32. A power of attorney from an assignee may be executed by a person having apparent authority to do so, such as the President of the assignee, or by including a statement of authorization. See MPEP § 324.
