Patent Bar Past Exam Questions || with 100% Errorless Solutions.
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Patent Bar Past
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Patent Bar Past
It has been reported that an exam question involves five inventors where two of the inventors that have assigned the invention to company X and three of the inventors have assigned the invention to company Y. A patent application is filed naming all five inventors. Later, the three inventors from Y...
Patent Bar Past Exam Questions || with 100% Errorless
Solutions.
It has been reported that an exam question involves five inventors where two of the inventors
that have assigned the invention to company X and three of the inventors have assigned the
invention to company Y. A patent application is filed naming all five inventors. Later, the three
inventors from Y file a continuing application claiming the filing date of the first application.
Company Y cannot locate the two inventors from company X because they no longer work for
X. Is filing proper without the X inventors? correct answers The answer is "yes" because a newly
executed oath or declaration is not required in a continuation application. See 37 CFR 1.63(d).
It has been reported that an exam question involves a patent application that properly claims the
benefit of a prior application EXCEPT when the prior application is a design, national stage,
CPA, provisional, etc. correct answers The correct answer is a CPA.
An exam question recites that the applicant files a first patent application disclosing and claiming
an invention A. The applicant makes improvements on the invention (invention B) and files a
CIP disclosing and claiming inventions A and B and a method of making B. The second
application properly claims the benefit of the first application. The examiner found prior art
published at a time between the dates when the first and second applications were filed which
discloses both inventions. correct answers The correct answer is that the examiner can only reject
the claims to invention B since the claims to invention A benefit from a date earlier than the
reference (i.e., the filing date of the first application).
A question has been reported to involve "Joe Blockhead," where your client Joe Blockhead files
a nonprovisional application which claims the benefit of a nonprovisional application. You
receive a Notice of Allowance and Blockhead decides that he wants to extend the term of his
patent and remove the benefit. How do you enter an amendment to do this? correct answers
ANSWER: Do not pay the issue fee and file an RCE with an amendment or ADS.
After the notice of allowance, entry of an amendment or ADS is not a matter of right, so in order
to have the amendment entered you must file an RCE.
It was reported that a number of questions involve deleting a benefit claim. In one question you
had to realize that it was proper to file an RCE for this purpose. In another question, you had to
realize the 4 months/16 months deadlines were exceeded, and that because the applicant removed
the claim himself he cannot avail himself of adding the claim back as unintentionally delayed
under 37 CFR 1.78(a)(3). correct answers
Which of the following documents is NOT open to public inspection?
(A) The abandoned parent application of a divisional application. A patent was granted on the
divisional application, which refers to the abandoned parent application.
, (B) Assignment document relating to both an issued patent and a patent application not published
under 35 USC 122(b).
(C) Assignment document relating to a pending reissue application.
(D) Copy of assignment record relating to both a pending patent application and an abandoned
patent application not published under 35 USC 122(b).
(E) Assignment document relating to both an abandoned patent application not published under
35 USC 122(b) and a pending reissue application. correct answers The Office will not open only
certain parts of an assignment document to public inspection. If such a document contains two or
more items, any one of which, if alone, would be open to such inspection (for example, a patent),
then the entire document will be open.
(D) is correct. (A) is wrong. 37 C.F.R. § 1.14(a)(1)(iv); MPEP 103, application files are available
upon request because the divisional application refers to the abandoned parent application, and
the division issued as a patent, causing the application to be open to inspection. (B), (C) and (E)
are wrong and (D) is correct. MPEP § 301.01.
The question states: A registered practitioner properly recorded an assignment document for
application A identifying XYZ Company as the assignee. The document assigns to XYZ
Company the "subject matter claimed in Application A." A proper restriction requirement was
made by a primary examiner in application A between two distinct inventions, and the
practitioner elected to prosecute one of the inventions. Application A was prosecuted, and later
became abandoned. Before the abandonment date of application A, the practitioner filed a
complete application B as a proper divisional application of application A. Application B
claimed the nonelected invention of Application A, and was published as a U.S. application
publication. XYZ Company remains the assignee of application A. What must the practitioner do
to ensure that XYZ Company is listed as the assignee on the face of any patent issuing from
application B?
(A) File correct answers The correct answer is (E). See MPEP 306 and 307.
Examples of situations where ownership need not be established under pre-AIA 37 CFR 3.73(b)
are when the assignee: signs a small entity statement (MPEP § 509.03); signs a statement of
common ownership of two inventions (MPEP § 706.02(l)(2)); signs a NASA or DOE property
rights statement (MPEP § 151); signs an affidavit under 37 CFR 1.131 where the inventor is
unavailable (MPEP § 715.04); signs a certificate under 37 CFR 1.8 (MPEP § 512); or files a
request for reexamination of a patent under 37 CFR 1.510 (MPEP § 2210). correct answers It has
been reported that the above paragraph has been tested on the exam. The correct answer was
"signs a small entity statement".
It has been reported that a question involves what may be faxed and what may not be faxed to
the USPTO (including a divisional application as one of the selections). See 37 CFR 1.6(d) and
(f). Patent applications, including a divisional application cannot be faxed, except for a CPA.
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