Mini Exam USPTO Questions || very Flawless.
Your new client Mary Williams has come to you because she is dissatisfied with her previous
agent. She has provided you with a copy of her application as filed on June 4, 2011. She is
uncertain what, if anything, might have been done or received by her previous attorney. She said
that her previous attorney hasn't returned her phone calls for more than a year and his assistant
told her that he was on an extended trip to Tibet for religious reasons.It turns out that Mary's
application filed in June of 2011 was abandoned early in 2013, and a proper continuation filed
under Rule 1.53(b). Before the parent was abandoned a proper claim for foreign priority was
made based upon an application filed in Canada on June 11, 2010. A certified copy of the
Canadian application was filed on December 14, 2011. What is the minimum action you must
take to preserve the foreign priority in the continuation application?
A No action need correct answers A claim must be made in the continuation for the benefit of the
Canadian priority and the application containing the certified copy of the Canadian application
must be identified.
Your new client Mary Williams has come to you because she is dissatisfied with her previous
agent. She has provided you with a copy of her application as filed on June 4, 2011. She is
uncertain what, if anything, might have been done or received by her previous attorney. She said
that her previous attorney hasn't returned her phone calls for more than a year and his assistant
told her that he was on an extended trip to Tibet for religious reasons.Mary was, in fact, not the
only inventor listed on the parent application. Her ex-husband George was listed as a co-
inventor. He made a small contribution, which was set forth in one claim - claim 29. George is
now demanding that he receive half of all monies received. Mary wants George out of her life
and out of her patent application. Which of the following is true?
A George must remain as a co-inventor because inventorship can be changed only if a mistake
has been made. correct answers D A second continuation must be filed to delete George as an
inventor.
Remember - can't just delete inventors. a New ADS and fee must be provided
Mary wants to file a new application directed to an improvement and she wants this new
application to expire as far in the future as possible, while costing the least amount of money to
file. This improvement was fully described in a magazine, which was published almost a year
ago. The most appropriate action would be:
A Prepare a continuation-in-part application to replace the continuation now on file.
B Prepare and file a new non-provisional application.
C Advise Mary to delay filing the application on the improvement until there is infringement.
,D File a provisional application before the one year anniversary of the publication.
E Amend the continuation to include the improvement. correct answers D File a provisional
application before the one year anniversary of the publication.
A provisional U.S. patent application covering a unique chair was filed in the U.S. Patent Office
on March 14, 2010. The application claims priority from a U.K. application filed April 30, 2009.
The U.K. application was published on November 23, 2010. A Utility application claiming
priority from the provisional application was filed in the U.S. Patent Office on September 25,
2010. An official action in the U.S. application was sent to the applicant on November 3, 2011
setting a shortened statutory period of three months to respond. No response was filed. A proper
continuation of the utility application was filed on December 14, 2011, and issued as a U.S.
patent on July 5, 2013. When will the patent expire, assuming all maintenance fees are timely
paid? correct answers Sept 25 2030
Shawn Slippery was granted a design patent directed to a troll design on May 23, 2005. After
many unsuccessful attempts, he managed to convince a young woman he met in a bar that his
patent was valuable and she agreed to buy the patent for $20,000 in cash, which she had secreted
on her person. She gave Shawn the money, and Shawn wrote the following on a napkin in the
bar, which Mary stuffed in her purse."I, Shawn Slippery hereby assign all rights in my troll
design patent D 234,781 to Mary Wistful.Shawn Slippery June 3, 2005"Mary came to your
office today and told you she was jogging yesterday with a friend who told her that Shawn had
been trying to sell the same patent to others. While she has yet to use the patent in any way, she
believes that someday it may be valuable. You should advise her that:
A Every patent that successfully survives reexamination is strengthened by the experience and a
reexamination should correct answers The napkin should be copied onto regular paper and that
paper recorded.
-Assignment is already executed
Your client John K. Flier filed a provisional application on October 13, 2007 on an invention
relating to an improved cup holder. The application was properly replaced by a non-provisional
on September 23, 2008. While you were on vacation in Idaho, John called your office and
insisted that an application in Mexico be filed immediately and the Mexican application was
filed on September 30, 2008. John now asks you whether a Foreign Filing license should have
been obtained prior to the filing in Mexico, and, if so, what should be done now. Your advice
should be:
A A Foreign Filing License was granted by the passage of six months following the filing of the
provisional application.
B A Foreign Filing License is not required for cup holders.
,C While a Foreign Filing License is technically required, the law is not enforced and can be
ignored.
D A retroactive Foreign Filing License is required.
E The application s correct answers A Foreign Filing License was granted by the passage of six
months following the filing of the provisional application.
Herman and June Dulets are siblings and are listed as the co-inventors of a U.S. patent
application now on file in 2013. They have just told you that Herman solely conceived of what
was claimed and June reduced the invention to practice. You should advise them:
A The inventorship is correct.
B If anyone ever asks, tell them that both siblings are in fact co-inventors.
C You must file a petition under 37 CFR 1.48(a) to correct inventorship by deleting June and
satisfy the other requirements of the section.
D You must file a petition under 37 CFR 1.48(b) to correct inventorship and satisfy the other
requirements of the section.
E Delete June as co-inventor by filing an Application Data Sheet in accordance with 37 C.F.R.
1.76, together with the required fee. correct answers Delete June as co-inventor by filing an
Application Data Sheet in accordance with 37 C.F.R. 1.76, together with the required fee.
- think: june is just like a tech, or nay employee at a company. not actually an inventor
our client John filed a provisional application about six months ago on an improved Bunsen
burner. Now today your client tells you that he has an improvement to the invention that he
wants to protect. Which of the following would be in accordance with current PTO rules and
procedures?
A File a continuation application under Rule 1.53(b) of the provisional and add the second
improvement by preliminary amendment filed with the continuation.
B File a second provisional directed to the second improvement.
C File an application under Rule 1.53(d) with a specification including both the original and the
second improvement and making the required reference to the provisional.
D File a non-provisional application directed to both the original and the second improvement
and making the required reference to the provisional.
, E (B) and (D) correct answers E (B) and (D)
Which of the following statements about foreign priority is false?
A An inadvertent failure without deceptive intent to claim or perfect a claim for foreign priority
can be cured by seeking a reissue.
B The priority period for design applications is six months.
C A translation submitted to establish foreign priority rights of an application not in English need
not be sworn or in the form of a declaration.
D A translation must be submitted to perfect priority unless the certified copy is in English.
E Rather than submitting another certified copy of a priority document reference can be made to
a document previously filed in another U.S. application. correct answers A translation must be
submitted to perfect priority unless the certified copy is in English.
Which of the following results in abandonment of the invention?
A An express abandonment of a pending application.
B Failure to take appropriate action in a pending application.
C Failure to pay the issue fee.
D Passage of more than twelve months in the case of a provisional application.
E None of the above. correct answers E None of the above.
**all options will abandon the APPLICATION, but not the INVENTION
Lars, an inventor living in Iceland, conceives of a new method of growing lichen and discloses
the idea to his rich neighbor Eric. Eric tries the idea and, after it works, agrees with Lars to give
Lars all the fish he can eat for the rest of his life in return for a one-half, undivided interest in the
patent. Lars also agrees that Eric will pay for and handle filing applications in the U.S. and
Norway. Eric then retains the only Icelandic patent attorney, Leif, who files an application in
Iceland and who contacts you to file an application in the United States. Which of the following
is true?
A The inventor is Lars; Lars, Eric, and Leif each have a duty to disclose information to the
Patent Office material to the examiner's decision to issue a patent.
