Questions Reportedly Asked on Patent Bar Exam

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Questions reportedly asked in the Patent Bar Exam - Patentbarquestions http://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent... Questions reportedly asked in the Patent Bar Exam From Patentbarquestions Shortcut to Key Things to Know for the Patent Bar Exam Contents 1 New Questions that have been reported 1.1 Black ink or Red ink? 1.2 Museum Titanium Baseball Question 1.3 Mirror Question 1.4 Tribell Question 1.5 Amending Abstract 1.6 Obviousness 1.7 Deleting Benefit Claim 1.8
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  Questions reportedly asked in the Patent Bar Exam From Patentbarquestions Shortcut to Key Things to Know for the Patent Bar Exam Contents 1 New Questions that have been reported1.1 Black ink or Red ink?1.2 Museum Titanium Baseball Question1.3 Mirror Question1.4 Tribell Question1.5 Amending Abstract1.6 Obviousness1.7 Deleting Benefit Claim1.8 PCT / National Stage1.9 102(e) / PCT applications1.10 Suspended Practitioner 1.11 Digital Media for Gene Sequence1.12 Signature on 1.132 petition1.13 Faxing National Stage Application1.14 Submitting Tables on CD-ROM1.15 Trade Secret Question1.16 Supplemental Oath1.17 Best Mode1.18 PCT Bypass Method1.19 PCT / Patent Term1.20 Toy plane with aluminum foil wing:1.21 Information requested from USPTO1.22 Reissue/Filing Amendment1.23 Who to contact question1.24 Missing parts in PCT Application1.25 Velcro Trademark Question1.26 Lip Gloss Question1.27 Spanish Phone Question1.28 Broadening Reissue1.29 Claims stand or fall together in appeal1.30 RCE during Appeal1.31 Federal Court Decisions binding for Office1.32 Appeal: New ground of rejection1.33 Restriction Requirement / Continuation Application1.34 Small Entity Status1.35 Documents an Assignee Not of Record can sign1.36 Means-Function Claim language question1.37 102(a): Need to file foreign language translation1.38 Death of inventor before application is filed1.39 Correcting PCT application / No address1.40 PCT-going right to national stage1.41 Appeal: New grounds for rejection by the Board1.42 Canadian Patent Agent in the USA1.43 IDS / Not exact wording1.44 How to claim benefit1.45 Basic filing fee Questions reportedly asked in the Patent Bar Exam - Patentbarquestionshttp://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...1 von 313/17/2009 10:31 PM  1.46 Correcting Errors in PCT Application1.47 Small Entity's Filing Fee - Refund1.48 Multiplicity1.49 Rejection after Allowance1.50 103(c) / Effective Date Nov. 29, 19991.51 Maintenance Fee Paid / Check Returned1.52 Indefinite Claim using 'high'1.53 What can an assignee do before taking ownership1.54 Anticipation1.55 Claim of priority to Japanese national app to overcome prior art1.56 Number of Rejections Required for Appeal purposes when count from parent to continuation1.57 Divisional Reissue1.58 Hairgel Question1.59 Means plus function, determining equivalence1.60 Investigating deceptive intent1.61 2 month rule for final office action1.62 Chemical Claim2 Questions from Previous Exams New Questions that have been reported August 23 2008Procedure Following New Ground of Rejection by BoardQ. After the Board makes a new rejection under 37 CFR 41.50(b), If an appellant files an new evidence as to less than all of theclaims rejected by the Board under 37 CFR 41.50(b), and a request for rehearing as to the remainder of the claims so rejected,which one is correct?(A) The examiner will not consider the claims for which rehearing was requested before rehearing.(B) The request for rehearing and examiner's prosecution will be considered at the same time.(C) The request for rehearing will be considered by the Board after prosecution before the examiner.(D) The request for rehearing will not be considered by the Board after prosecution before the examiner.(E) None of the above answers are correct.A. The correct answer is (C). See MPEP § 1214.01.Please note that the question and answers are not the same as shown at the actual exam. The actual exam asked about theknowledge of answer (C).April 12 2008CLAIM FOR PRIORITY VIA REISSUEPerson files a German application (it might even be an international application designating Germany). Person later files a USapplication and forgets to claim priority from the earlier filed foreign application to get the benefit of the earlier filing date. The US patent issues and then person realizes that he/she did not make a claim for priority from the earlier German application or submitthe certified copy. Assuming that all the timing requirements were met in order for the US patent to get the benefit of the Germanapplication how can the person perfect priority based on the German application? Questions reportedly asked in the Patent Bar Exam - Patentbarquestionshttp://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...2 von 313/17/2009 10:31 PM  There were a bunch of certificate of correction answers and reissue answers. I narrowed the choice down to the two choices below:C) file a reissue application along with the necessary fees, certified copy of the priority document (German Application) and aclaim for priority.E) (Same as C) file a reissue application along with the necessary fees, certified copy of the priority document (GermanApplication), and English translation and a claim for priority.I put C, but I think the answer might be E. While  Brenner  (MPEP 1402) clearly spells out that a claim for priority can be perfectedvia reissue by a submission of certified copy of the priority document and the claim for priority it does not state whether thedocument had to be in English in order to get the benefit of the earlier filed application.Please let me know if the certified copy has to be in English in order to get the filing date. I do not believe there were any dates inthe question.4/16/08 GS - I believe (c) is correct because according to MPEP 201.13, when claiming priority to a foreignapplication, a translation is not necessary unless needed for interference, needed to overcome a specific reference in arejection, or asked for by the examiner.Other resource available: 37 CFR 1.55 a.4.i Claim of Foreign Priority January 24th, 2008 - Question regarding applications having many claims and when it would appropriate to limit the number or nature of the initial inquiry. Some situations exist where examination of an application appears best accomplished by limitingaction on the claim thereof to a particular issue. These situations include the following:(A)Where an application is too informal for a complete action on the merits.(B)Where there is an undue multiplicity of claims, and there has been no successful telephone request for election of a limitednumber of claims for full examination.(C)Where there is a misjoinder of inventions and there has been no successful telephone request for election.(D)Where disclosure is directed to perpetual motion.(E)All of the above.The correct answer is (E), see MPEP 707.07(g).January 24th, 2008 - Question regarding claim number 4 that was canceled via a pre-examination amendment in a set of 6 claims, but the registered practitioner wanted to later reinstate the exact same claim; answers were (approximately);(A) Submit an amendment uncanceling claim number 4.(B) Submit an amendment adding claim number 7 with the exact words of the srcinal claim number 4.(C) It is not possible to reinstate claim number 4 because once it is canceled the matter cannot be reclaimed.(D) [Another answer changing the claim number inappropriately](E) [Another answer changing the claim number inappropriately]The correct answer is (B), see MPEP 714 Reinstatement of previously canceled claim. Black ink or Red ink? A question that was looking for the wrong response. It had one of the possible answers of red ink being allowed on applications? Idon't know if my memory is good on this one, but everywhere I looked, I only found black ink pen requirements in the MPEP. Ianswered that red ink was the wrong response. Does anyone know about this? Questions reportedly asked in the Patent Bar Exam - Patentbarquestionshttp://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...3 von 313/17/2009 10:31 PM  Red Ink is generally not allowed, but only used for IFW (Image File Wrapper) purposes (see 714.17).The following section provides a better answer than the 714.17 reference above --->1302.04 Examiner's Amendments and Changes [R-3] - 1300 Allowance and Issue37CFR 1.530(d)(3) showing the proposed changes in RED for approval by the examiner MPEP 605.04(g): When the **>request is granted to add or delete inventors< under 37 CFR 1.48, the change should be noted inred ink in the left margin of the srcinal oath or declaration >Best example I've seen is MPEP 608.01 Specification A quick search for ink turned up 37 CFR 1.52 Language, paper, writing, margins, compact disc specifications that states thefollowing requirement:(iv) Plainly and legibly written either by a typewriter or machine printer in permanent dark ink or its equivalentIf mistakes are in the drawings or if the drawings need to be amended, the changes MUST BE in red ink (although examiners willnever know if it is or not b/c eDan scanning is only black and white. It is OIPE job to check) Somewhere in MPEP 700.The above is incorrect at least as of the 8th ed. rev. 3. MPEP 714 at the bottom of page 700-219: The proposed drawingcorrection practice has been eliminated. ... No proposed changes in red ink should be submitted. Museum Titanium Baseball Question A question involving an article about a special titanium baseball put on public display in a museum. The main question is: is it public use if only wealthy museum patrons who have no interest or skill to make baseballs see it? Or is it public use when thegeneral public see it, or people who have the interest/skill to make baseballs can see it? In other words, the main question is: issomething public use if ONLY the people having skill in the art can see it? 8/10/2007 The fact pattern for this question, when I hadit, was as follows: Article is published on Date 1 though not distributed. Article is put on display at museum on Date 2, museum isonly accessed at this time by wealthy museum patrons who don't have the skills to make baseballs (but the museum is a baseballmuseum). On Date 3, museum has a big PR event with news media etc. On Date 4, articles in museum are indexed and sorted.which date is the prior art date of the publication?See MPEP 2133.03(a)A.(2.), In Re Blaisdell, Ex Parte Kuklo. The person to whom the invention is publicly disclosed need notunderstand the significance and technical complexities of the invention. A key to this question is also understanding that if a publication is only viewed by a few select members of the musuem club, thenit is not PUBLIC and therefore does NOT qualify as a 102(a) or 102(b) publication. It doesn't matter if it is properly shelved andcatalogued.  I disagree; the inventor does not have control over the baseball once it is shown to the museum patrons. This is distinguished rom the _Moleculon Research_ case b/c the inventor retained control over what happened to it in that instance. Anyway, thequestion is not really about public use; it has to do with availability of the article, not the invention itself. If a member of theublic has access to something on the shelf of a library and is not under obligation or expected to keep it confidential, it hasbeen published as far as 35 U.S.C. 102 is concerned. The closest example I can think of is the single copy of a graduate thesison the shelf in an obscure university. Practically speaking, the public does not have access to it, but it is still prior art under  §102. Edit: Took the exam yesterday (passed) and got this question; I chose Date 2 aboveResponse to above comment: The text above regarding it is not PUBLIC and does not qualify as a 102(a) or (b) publication wastaken straight out of the answer key for a past exam question. When I answered this question on a practice exam, I (like you) believed it was a 102 disclosure and got it wrong. Hopefully someone else can settle this. Yes, but *which* past exam question It was a PRG ExamWare question, so I don't know. Sorry. But I still contend that something which is available only to members of a museum is not public. Unless the question specifically states that it is available to the public I would presume otherwise.Museum patrons are the public. It doesn't say that this is a private museum, only that the people that view the baseball are wealthy Questions reportedly asked in the Patent Bar Exam - Patentbarquestionshttp://patentbarquestions.com/Questions_reportedly_asked_in_the_Patent...4 von 313/17/2009 10:31 PM
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