Common sense can be the difference between success and failure on your exam.
I had a lengthy discussion recently on what affect the recent economic woes will have on the patent profession. He is a respected litigator and has the view that litigation will be reduced as clients hoard cash, but that prosecution will boom, both from US and foreign clients. I am not so sure. Traditionally Patent business has been counter cyclical. People tend to litigate more and worry more about protecting their property in hard times. But we may be in some something way beyond hard times in which businesses toss overboard everything not necessary to survive, and a time when cask, not patents, is king. Hang on for the ride. But we are worried about the exam, and focused and passing it. Let’s talk common sense and the exam. Common sense can be the difference between success and failure on your exam. Don’t check your common sense at the exam door. Chances are you will have to guess on a few questions on your exam. Common sense will often get you a point or two. Try this one using common sense only.
9. Which of the following actions may be taken without payment of a fee?
(A) File a petition to make special based upon the age of the applicant.
(B) File a notice of appeal.
(C) Submit an executed oath or declaration after filing an application without an executed oath or declaration.
(D) File an appeal brief.
(E) Revive an application that was unavoidably abandoned.
ANSWER: (A) is correct. MPEP 708.02. Very few things are free in your Office. If you have to guess, always guess that a fee is required. Usually, you will be right.
Let’s see how it works here. The last choice (E) is reviving an application. That is a lot of trouble on the office part to fix a problem you created. They always zap you with a fee in those circumstances. (B) and (D) have to do with appeal. Sounds to me like they would carry a fee. That leaves us (C) and (A). I would pick (A) because it is so common to give people over a certain age a break on fees.
Posted by Suzanne Maheu on January 6th, 2009 | Permalink
Patent attorneys are strange beings. I know; I am one.
Patent attorneys are strange beings. I know; I am one. One of the standard jokes I use in courses is this: What is the classic definition of a patent attorney? Answer: Someone who lacks sufficient personality to do tax work. It always gets a laugh. So today, we talk about patent attorneys and appeals. People taking exams report uniformly that there are a pile of appeal questions on the exam, lots and lots While there are a host of details, none of it is conceptually very difficult, and you just need to memorize al the gory details. Here is a pair of questions that talk both about patent attorneys and appeals. You are likely going to need help for these questions from the on line MPEP at the WWW.USPTO.gov site, or from a hard copy you already have. After you do the first question, you are going to say: “Come On! Even the Office wouldn’t ask such a nerdy detailed question/” Oh, yes they will, yes they will! Enjoy! 1. Patent attorney Able Adams was in love - passionate, eternal, obsessive, mad, irrational love. He thought nothing morning to night except of his beloved. Meanwhile, his work went straight to Hell. Among other mistakes, he filed an appeal brief without the required summary of the claimed subject matter. What action will the Office now take? (A) The appeal is withdrawn because the brief was non-compliant, and Able will now be so advised by telephone. (B) The appeal is withdrawn because the brief was non-compliant, and Able will now be advised in writing. (C) Able will be apprised in writing that the brief is non-compliant. Able may make the brief compliant by filing a paper providing the required summary (D) Able will be apprised in writing that the brief is non-compliant. Able may make the brief compliant by asking for a waiver of the requirement. (E) The examiner will prepare and file a summary of the claimed invention for the file. 2. On May 12, 2009, the Board of Appeals reversed the rejection of all of the claims of an application filed by Miles Moore, a prolific inventor. The examiner, who was in fact Miles’ ex-girl friend, was incensed. She knew Miles well and there was no doubt in her mind that Miles was entitled to a whipping and nothing more. In fact, Miles enjoyed whippings. Which of the following is true? (A) The examiner may file a notice of appeal to the CAFC on behalf of the Office. (B) The examiner may request rehearing, if that request is first approved by the TC Director. (C) The examiner can neither appeal, nor ask for a rehearing (D) The examiner may appeal, but not ask for a rehearing. (E) The examiner may ask the Director to review and reverse the decision of the Board **************************************************************** ANSWERS: 1. (C) is correct. The Office sometimes does the rational thing. Why need any more trees die than necessary? A paper will suffice. MPEP 1205.03.
Posted by Suzanne Maheu on January 2nd, 2009 | Permalink
Deadlines
Longacre is not a very common name, but did you know that there is a little bit of Longacre at the highest point of every state? Decade or so ago an enterprising Longacre – Jakk Longacre to be precise – started a club in which the object was to stand on the highest point of each state. Some such places could be reached by car and some, like Mt McKinley were a true climb. Jakk sadly died a couple years ago, and club members placed a bit of his ashes at the top of every high point. And so there is a little bit of Longacre at the top of every state. Let’s talk about due dates. There are hundreds of such dates and you will get a few due date questions on your exam. And when you are out there in practice if you don’t get these dates right, you will go broke paying revival fees. A couple of things to remember. Second, all deadlines on appeal are two months. Neat, huh? Third, memorize those few deadlines that can’t be extended and those that can be extended only for cause. Ciao Jim
Posted by Suzanne Maheu on December 30th, 2008 | Permalink
Exam question sometimes include references to specific statute or rules.
Exam question sometimes include references to specific statute or rules, e.g. db=cfr
section=1.136
subpart=&id=nsession>37 CFR 1.136, db=usc
section=102.
subpart=&id=nsession>35 USC 102. You could look them up in your on line MPEP but in general that is a bad idea. This is an exam where hoarding your look up opportunities is one of the keys to success; you will NOT have time to look up everything. Very rarely will the question cite a wrong rule or statute and make that the key to getting the right answer. The Office doesn’t refer todb=cfr
section=1.133
subpart=&id=nsession>37 CFR 1.133, and that is wrong because the cite should have been to db=cfr
section=1.134.
subpart=&id=nsession>37 CFR 1.134. There are two exceptions. You are expected to know the circumstances that fit a declaration under 37 CFR1.131 and those that require use of db=cfr
section=1.132.
subpart=&id=nsession>37 CFR 1.132. Similarly you have to be able to instantly distinguish between db=usc
section=102
subpart=&id=nsession>35 USC 102 and 103. What statutes should you then know by heart? db=usc
section=101
subpart=&id=nsession>35 USC 101 db=usc
section=102
subpart=&id=nsession>35 USC 102 db=usc
section=103
subpart=&id=nsession>35 USC 103 db=usc
section=112
subpart=&id=nsession>35 USC 112, 1st, 2nd and 6th paragraphs 35 SAC 119(a-d) db=usc
section=119
subpart=(e)&id=nsession>35 USC 119(e) db=usc
section=120
subpart=&id=nsession>35 USC 120
Posted by Suzanne Maheu on December 26th, 2008 | Permalink
35 USC112 has three requirements ....
The first paragraph of 35 USC112 has three requirements – Written description, enablement and best mode. A hundred years from now when you are rocking away on the porch at the Patent Attorneys Retirement Home and 99% of your brain has departed, you should still be able to rattle off these three requirements. They are just that basic. Today let’s focus on Best Mode. The applicant has to disclose in the application the best mode known to the inventor. Thus, it is subjective; if the inventor is wrong and what he or she thinks is the best mode just isn’t, then it’s the inventor’s wrong idea that must be disclosed. But obviously what the inventor thinks is the best mode could change. At what in time can we find the one that must be disclosed? Answer: At the time of filing. Thus, if the patent attorney prepares the application, and it is signed and on the way to the Office to be filed, and at the moment that inventor sees the bet mode, STOP! That application if filed will be invalid; it has to be rewritten to include that last minute change. An applicant filed an EPO application and then conceives a best mode before filing the application in the US claiming priority. Does the US have to include that new best mode? No, says your MPEP. Here’s a practice question on point. 1. Inventor Big Brain filed a patent application directed to a method of constructing silos in the USPTO on March 12, 2009. At the time he made his invention in 2008, he honestly believed that the silo would be best constructed of wood, to minimize weight. The application so states. Three days before he filed his patent application, he became convinced that concrete blocks would be far better. This conclusion was based on a series of computer simulations that he did at the local community college. No mention was made of cement blocks in the application. At the time of filing, he honestly believed that he had disclosed everything to the Office that he was legally obligated to disclose. Which of the following is true? (A) The claims of the application, if issued, are invalid because the application fails to disclose the best mode known to the inventor at the time of filing. (B) The claims of the application, if issued, satisfy the best mode requirement of db=usc
section=112
subpart=&id=nsession>35 USC 112, because the application disclosed the best mode known to the inventor at the time of conception of the invention. (C) The claims of the application, if issued, are not invalid, even though the application fails to disclose the best mode known to the inventor at the time of filing, because there was no intent to withhold or deceive. (D) The examiner will require the inventor to identify the best mode disclosed in the application. (E) The claims of the application, if issued, are not invalid, provided that the inventor executed the oath or declaration prior to discovering a better mode. 1. (A) is correct. The best mode known to the inventor at the time of filing must be disclosed. Failure to do so will make any claims that may issue invalid. Intent or the timing of execution of the oath is not relevant. MPEP 706.03(c), MPEP 2165.
Posted by Suzanne Maheu on December 23rd, 2008 | Permalink
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