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Flashcards in reissue, PCT, oath and D Deck (12):
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2. Two years after MegaGiant's patent application covering its new lamp was issued, a request for reexamination was filed and granted by the Patent Office. Four months ago you received a first Official dated April 3, 2008 and setting a two-month period for response. The examiner rejects all the claims. Your client has advised you that she will be unavailable to discuss this action with you until September 15, 2008. The most appropriate Action today, August 26, 2008 would be:
A Write to the Patent Office and advise them you will be responding as soon as possible after September 15.
B Include a request for any necessary extension of time under 37 CFR 1.136(b) when you do respond.
C Immediately file a Notice of Appeal.
D Advise your client that a response must be filed no later than September 3, 2008.
E None of the above is the most appropriate.

E) is correct. A) is wrong because a response was due on June 3 and writing to the PTO several months later is proof that the writer should not be prosecuting patent applications. B) is wrong because extensions cannot be obtained retroactively in a reexamination. C) It is both too late and too early to file a Notice of Appeal. D) is wrong

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3. On September 23, 2006 a U.S. patent application was filed directed to a screwdriver. On January 8, 2007 a claim for priority was made and a certified copy filed of a Canadian application filed October 21, 2005. A continuation was filed in June of 2007 under 37 CFR 1.53(b) and the parent abandoned shortly thereafter. No claim for priority was made in the continuation, which issued as a U.S. patent on January 13, 2008. Which of the following statements is true:
A The failure to claim priority in the continuation can only be corrected by filing a reissue application.
B The failure to claim priority in the continuation application can be corrected by obtaining a Certificate of Correction and also filing a Petition and fee for Late Assertion of Priority.
C The failure to claim priority cannot be corrected and the priority is lost.
D There is no need to claim priority in the Continuation since priority was claimed in the parent.
E None of the above is true.

(B) is correct.
216 Entitlement to Priority
MPEP 216.01.
Using Certificate of Correction to Perfect Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f)

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9. You have been asked by the senior partner of your firm various questions about reissue applications. You make several statements, these include the following. Which is true:
A The automatic surrender of the original patent grant occurs upon issue of the re-issue.
B The original patent grant must be turned in.
C The consent of all licensees is necessary.
D The necessary filing fee has to be paid at the time of filing.
E A copy of the file history of the patent must be turned in.

1460 Effect of Reissue

AC*

1410.02 Assignee Consent to the Reissue [R-11.2013]
I. WRITTEN CONSENT
A reissue application, whether filed before, on, or after September 16, 2012, must be accompanied by the written consent of all assignees, if any, currently owning an undivided interest in the patent. In addition, all assignees consenting to the reissue must establish their ownership in the patent by filing in the reissue application a submission

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5. An international application designating the United States and other countries was filed in London at the U.K. Receiving Office on September 3, 1994, claiming priority from a French application filed June 23, 1994. A demand for international preliminary examination was properly made on October 14, 1995. The basic national fee to enter the U.S. was submitted to the USPTO on December 12, 1996, one year after the International Application was published in English. On March 12, 1997, in response to a Notice of Missing Parts a translation of the international application and a declaration of the inventors were submitted. The declaration was objected to by the Examiner because it did not indicate the residence address of one of the three inventors in an Ex parte Quayle action dated April 14, 1997, setting a two month period for response. A new declaration was submitted together with a request for reconsideration on May 5, 1997. The application issued as a U.S. patent on July 23, 1998. What is the effective date of the patent under 35 USC 102(e):
A July 23, 1998.
B December 12, 1995.
C March 12, 1997.
D September 3, 1994.
E May 5, 1997.

C) Old 102(e) for pre 11-29-00 I.A. filings.

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6. Which of the following is not a requirement for filing an international application in the U.S. Receiving Office:
A At least one applicant must be a U.S. national or legal resident.
B The application must be in English.
C The application must designate at least one PCT contracting state.
D The filing fee must be submitted.
E A request for treatment as an international application must be included.

D

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7. On April 3, 2004 you filed an international (PCT) application in the U.S. receiving Office for one of your clients. At the time your client was short of funds and decided to designate only the "Asian Tiger" countries of Malaysia, Indonesia, China and Korea. However, last week a company located in New Zealand approached your client indicating they would license any patent rights, which existed in New Zealand. On April 1, 2005, your client calls, seeking protection in New Zealand. What would be your advice?
A Nothing. No additional countries need to be designated.
B A Request for Additional Designations can now be filed together with the surcharge for late designation.
C File another PCT application this time designating New Zealand.
D File a continuation of the PCT application together with a new designation including New Zealand.
E Abandon the PCT application and file a replacement with the expanded designation.

A

presume all designation

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On September 16, 2012, the patent agent files a nonprovisional patent application. This filing was rushed in order to get a filing date ahead of an impending statutory bar. No oath or declaration was filed, although an appropriate fee was submitted. The specification was sufficient to satisfy 112(a) with respect to the primary embodiment. Several poorly written claims were included. In response to a Notice of Missing Parts, what can the patent agent do on behalf of Grast to prevent the application from going abandoned?
A An oath or declaration signed by Grast must be submitted within two months from the mailing of the Notice of Missing Parts.
B An oath or declaration signed by Grast must be submitted within seven months from the mailing of the Notice of Missing Parts.
C The filing of an oath or declaration must occur prior to the patent examiner picking up the file to substantively work on the First Office Action on the Merits.
D The filing of an oath or declaration must occur before the earlier of the date of publication of the application or the date on which the patent examiner picks up the file to substantively work on the First Office Action on the Merits.
E None of the above.

E
Failure to include an inventor’s oath or declaration will result in the Patent Office issuing a Notice of Missing Parts. On or before September 15, 2012, an applicant was given a shortened statutory period of two months to respond, which was fully extendable for another five months. On or after September 16, 2012, the applicant has the option of not submitting the oath or declaration until the application is otherwise in condition for allowance. Postponement of the filing of the oath or declaration does require that the application contain an application data sheet that identifies each inventor, as well as the mailing address of each inventor where they customarily receive mail and the residential address of the inventor if different from the customary mailing address. Furthermore, when there is a postponement of the filing of the oath or declaration, the oath or declaration must still be filed within the time period set in the Notice of Allowance, which is not extendable. See 37 CFR 1.53(f)(3).

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6. Under which circumstances would it be inappropriate for a substitute statement to be filed in lieu of an oath or declaration?
A The inventor is in a coma.
B The inventor has suffered a head trauma and now exhibits signs of dementia.
C The inventor has assigned the rights to the invention.
D
The person filing the substitute statement has reviewed the contents of the application.
E
The person filing the substitute statement is the assignee and the inventor is unavailable.

604 Substitute Statements

for D: "1.64 (c) A person may not execute a substitute statement provided for in this section for an application unless that person has reviewed and understands the contents of the application,"

C

An “applicant” may execute a substitute statement in lieu of an oath or declaration under § 1.63 if the inventor is deceased, is under a legal incapacity, has refused to execute the oath or declaration, or cannot be found or reached after diligent effort. Pursuant to 37 CFR 1.42(a) and (b), “applicant” refers to the inventor, joint inventors, the assignee or the person to whom the inventor(s) is (are) under an obligation to assign to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.

(C) is not true because it is incomplete, making it the correct answer based on the call of the question.

Even though an assignee can file a substitute statement, the mere fact that an inventor has assigned the rights to the invention does not entitle an assignee to file a substitute statement. The inventor must also be unavailable, as discussed in § 1.63.

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9. Which of the following applicants may not file and prosecute the applicant’s own case without retaining the services of a patent practitioner?
A An inventor.
B A corporate assignee.
C All joint inventors.
D One joint inventor where hte other joiont inventors are unavailable.
E All of the above.

B

See 37 CFR 1.31. An applicant for patent may file and prosecute the applicant’s own case, or the applicant may give power of attorney so as to be represented by one or more patent practitioners or joint inventors, except that a juristic entity must be represented by a patent practitioner even if the juristic entity is the applicant. Further, pursuant to 1.33(b)(3), all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.

Juristic entities include corporations or other non-human entities created by law and given certain legal rights. Thus, (B) is the correct answer. A corporate assignee must be represented by a patent practitioner.

10

You are retained and asked to prepare and ultimately file a patent application on behalf of GFC. Unknown to Richard, Charles approaches you to tell you that she would greatly prefer if the patent were issued to GFC and not to Richard directly.

If you file an nonprovisional application in the name of GFC, which of the following is true?
A
You will receive a Notice of Omitted Items.
B
You will receive a Notice of Incomplete Application.
C
Both Richard and Charles must execute an oath or declaration before the patent can be issued.
D
Both Richard and Charles must execute either an oath or a declaration before payment of the Issue Fee.
E
None of the above.

E

Pursuant to 37 CFR 1.46(b), if an application is made by a person other than the inventor, the application must contain an application data sheet specifying the assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter.

(A) and (B) are incorrect because the America Invents Act and associated USPTO rules now allow for one other than the inventor to file a patent application. Specifically, an assignee is considered an “applicant” and may file.

With respect to (C) and (D), Section 1.495(c)(3)(ii) provides that the applicant must file an oath or declaration in compliance with § 1.63, or substitute statement in compliance with § 1.64, executed by or with respect to each actual inventor before the patent issues. However, both (C) and (D) are incorrect because Charles is not an inventor and would not be required to file an inventor’s oath or declaration.

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12. Which of the follow is not incorrect?
A
An oath made in the United States must be made before either a judicial official or a registered patent practitioner.
B
The oath or declaration does not always need to identify each inventor by his or her legal name; nor does the oath or declaration always need to identify a mailing address where the inventor customarily receives mail, and residence.
C
An oath or affirmation made in a foreign country must be administered by diplomatic or consular officer of the United States authorized to administer oaths.
D
Deficiencies in an oath or declaration cannot be fixed without filing either an RCE under Rule 1.114 or a Continuation under 37 CFR 1.53.
E
None of the above.

(B) is a true statement because, as Rule 1.63(b) explains, the oath or declaration must identify the inventor by legal name and provide a mailing address, unless that information is supplied in an Application Data Sheet (ADS) submitted in accordance with 1.76. Thus, it is not necessary for an oath or declaration to contain this information in all instances.

With respect to (A), 1.66 says: “An oath or affirmation may be made before any person within the United States authorized by law to administer oaths.” Therefore, the oath does not need to be made before only a judicial officer or registered patent practitioner.

With respect to (C), the answer is, likewise, too restrictive. While diplomatic or consular officers may administer the oath, so may others in the foreign country who have authority to administer such oaths. 1.66 says: “An oath made in a foreign country may be made before any diplomatic or consular officer of the United States authorized to administer oaths, or before any officer having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority shall be proved by a certificate of a diplomatic or consular officer of the United States, or by an apostille of an official designated by a foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States. ”

With respect to (D), Rule 1.67 explains that deficiencies in the oath or declaration may be corrected with a the filing of a supplemental oath or declaration. 1.67(a) says: “The applicant may submit an inventor’s oath or declaration meeting the requirements of § 1.63, § 1.64, or § 1.162 to correct any deficiencies or inaccuracies present in an earlier-filed inventor’s oath or declaration.”

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13.
Which of the following statements about an Application Data Sheet are correct?
A
The Office will review the inventor's oath or declaration to determine if the bibliographic information contained therein is consistent with the bibliographic information provided in an application data sheet.
B
An unsigned application data sheet will be treated only as a transmittal letter unless it has been filed by an patent practitioner who is “of record” in the application.
C
Information in a previously submitted application data sheet, inventor's oath or declaration may be corrected or updated until the Notice of Allowance has been transmitted.
D
An application data sheet must be titled “Application Data Sheet.”
E
All of the above.

With respect to (D), 37 CFR 1.76(a) specifically requires that an ADS be titled “Application Data Sheet.”

(A) is incorrect because 37 CFR 1.76(d)(3) explains that the USPTO will not ordinarily conduct a review to determine whether the information on the ADS matches the information submitted as part of an oath or declaration.

(B) is incorrect because 37 CFR 1.76(e) explains that an ADS must be signed in compliance with 37 CFR 1.33(b) and that an unsigned ADS will only be treated as a transmittal letter, not as a properly filed ADS. There is no exception for an ADS filed by a patent practitioner of record.

(C) is incorrect because 37 CFR 1.76(c) explains that information submitted in an ADS, oath or declaration can be corrected until the issue fee is paid. However, there are some exceptions. Inventorship changes must comply with the requirements of §1.48, foreign priority and domestic benefit information changes must comply with §§1.55 and 1.78, and correspondence address changes are governed by §1.33(a).