? Do not assume facts not in the questions.
? Analyze using current law U.S. law, unless specified otherwise.
? Unless told so otherwise, assume that all facts can be proved either before the
Patent Office or in a court of law (e.g., proof of facts can be shown and
testimony will be believed).
1. Professor and Mary Ann, who are not related, are shipwrecked on an
uninhabited and
undiscovered island in the middle of the Atlantic Ocean. In order to
signal for help,
Professor invents a signaling device using bamboo shoots. At
Professor?s request and
completely pursuant to Professor?s suggestions, Mary Ann reduced the invention to
practice by building the signaling device. The signaling device works
and a helicopter
comes and rescues Professor and Mary Ann. Grateful to Mary Ann for her efforts in
reducing the invention to practice, Professor promises to give Mary
Ann an interest in the
invention. However, being unable to afford a patent practitioner?s
fees to prepare, file,
and prosecute the application, Professor delays filing an application. Professor
eventually returns to the island and has not returned. Concerned, Mary
Ann retains a
registered patent practitioner to file an application for a patent on
the signaling device.
Which of the following is a true statement?
(A) Since Professor invented the signaling device, Mary Ann cannot properly file an
application for a patent in her name even though Professor is unavailable.
(B) Since Professor is not available and cannot be reached, Mary Ann may properly
retain a registered patent practitioner to file an application in
Professor?s name (and
sign a declaration on his behalf) since she reduced the invention to practice and
knows how to make and use it.
(C) Mary Ann should file an application in her name since she reduced
the invention to
practice and knows how to make and use it. Subsequently, when Professor becomes
available, the inventorship may be changed to the correct inventorship.
(D) Mary Ann can file an application in her name since Professor
promised to give her
an interest in any patent that issues.
2. Inventor files an application containing the following original Claim 1:
1. A device comprising element A, and element B.
Reference X explicitly discloses a widget having element A, Reference Y explicitly
discloses a widget having element B. References X and Y are proper
prior art references.
In an office action, the examiner states that the combination of references X and Y
discloses each and every element/limitation of claim 1 and is
therefore obvious under 35
USC §103 as being obvious over the combination of references X and Y. The Examiner
properly rejected claim 1.
(A) True
(B) False
3. A registered patent practitioner files a nonprovisional utility
application in 2000
(?Application 1?) containing five claims. All five claims are fully
supported by the
disclosure of Application 1. In 2002, the practitioner files a continuation-in-part
application (?Application 2?) to add new subject matter to the
disclosure. Application 2
as originally filed recites five claims (?claims 1-5?) that are
identical to the five claims in
Application 1. Application 2 claims priority to Application 1. In
2003, the practitioner
amends Application 2 to add ten additional claims (?claims 6-15?) that
were not present
in either the originally filed Application 1 or the originally filed
Application 2. The
USPTO properly concludes that claims 6-10 are fully supported by the disclosure of
Application 1; claims 11-15 are not supported by the original
disclosure of Application 1;
and claims 11-15 are fully supported by the added subject matter of Application 2.
Which of the following statements is true?
(A) The effective filing date of claims 1-5 is 2000; the effective
filing date of claims 6-10
is 2002; and the effective filling date of claims 11-15 is 2003.
(B) The effective filing date of claims 1-10 is 2000 and the effective
filing date for
claims 11-15 is 2002.
(C) The effective filing date of claims 1-10 is 2002 and the effective
filing date for
claims 11-15 is 2003.
(D) The effective filing date of claims 1-15 is 2003
(E) None of the above.
4. One test for determining whether a claim element is obvious over
the prior art is whether
that claim element performs substantially the same function, in
substantially the same
way, to achieve substantially the same result as that of the prior art element.
(A) True
(B) False
5. Which of the following is a pubic policy rationale behind the patent system?
(A) to encourage innovation by granting a limited monopoly for inventions
(B) to encourage innovation by publishing a full disclosure of inventions
(C) to guarantee the commercialization of an inventions by the inventors
(D) A and B
(A) All of the above
For questions 6-7, refer to the following passage:
Applicant filed a provisional patent application in the USPTO on
Tuesday, November 30,
1999. On Tuesday, November 28, 2000, applicant filed a nonprovisional
application in
the USPTO that properly claimed priority to the filing date of the
provisional application.
On Wednesday, November 29, 2000, applicant filed an international application for
patent in the USPTO under the Patent Cooperation Treaty that designated Japan and
properly claimed priority to both the provisional and the
nonprovisional applications. On
Friday, July 28, 2001, applicant filed a national stage application in
the Japanese Patent
Office. The nonprovisional application issued as a patent on Thursday,
July 15, 2004.
The national stage application was published on Tuesday, January 30,
2002 and issued as
a patent on Tuesday, February 4, 2003.
6. Assuming no patent term extension or adjustment, the patent term of
a U.S. patent that
issues from the U.S. nonprovisional ends on the date that is 20 years
from which of the
following dates?
(A) Tuesday, November 30, 1999
(B) Tuesday, November 28, 2000
(C) Wednesday, November 29, 2000
(D) Friday, July 28, 2001
(E) Tuesday, January 30, 2002
(F) Tuesday, February 4, 2003
(G) Thursday, July 15, 2004
7. A competitor is making in the U.S. products covered by the patents.
When can the patent
owner sue the competitor in the U.S. for making products covered by the patents?
(A) after the U.S. provisional application is filed
(B) after the U.S. nonprovisional application is filed
(C) after the Japanese national stage application is published
(D) after the Japanese national stage application issues into a patent.
(E) after the U.S. nonprovisional application issues into a patent.
8. Tim Dingman and Nick Vanderpark are test engineers working in the
sandpaper division
of Minnesota Mining and Manufacturing Company (a.k.a., 3M). While working for 3M,
Dingman invents a new kind of compact kite that will require some
assembly. In order
for the invention to work, the kite needed to be glued together.
Dingman decides at the
time of the filing of his application that Super Glue, which is widely used by kite
engineers and has been readily available on the market, is the best
adhesive for the kite.
Vanderpark is a friend of Dingman that works in 3M?s adhesives department.
Vanderpark developed a glue for the company, but knowledge of it is a
secret. 3M will
not start selling the glue ? called ?insane glue? until the next year,
and thus no one except
those who work in 3M?s adhesives department know about the glue. One night Dingman
gets Vanderpark drunk, and Vanderpark starts to babble on and on about the ?insane
glue? and how it?s 300 times better than Super Glue. Dingman, knowing that ?insane
glue? would work best with his invention, decides not to supplement
his original patent
application by filing a continuation-in-part application to disclose
the use of ?insane
glue? as an adhesive for his kite invention. With respect to the
adhesive component of
his invention, did Dingman satisfy the ?best mode? requirement?
(A) Yes
(B) No
For question 9, refer to the following passage and Fig. 1 and Fig. 2 below:
A U.S. patent was issued on November 23, 1999 for a patent titled,
?Novelty Pencil.?
The patent describes the novelty pencil as follows:
Referring to the drawings, there is shown a novelty pencil
comprising a conventional pencil 10 and a plastics novelty device
11 attached to the upper end of the pencil 10.
The pencil comprises an elongate circular-section wooden body 12
which encloses a graphite core 13 or so-called lead. The lower end
of the pencil 10 is sharpened to a point thereby exposing the lead
13.
The outer portion of the wooden body 12 is removed over 50 mm
or so at the upper end of the pencil in order to form a region 20
having a reduced wall diameter.
The novelty device 11 comprises a plastics tube 14 having an
internal diameter which is slightly greater than the external
diameter of the region 20 at the top of the pencil 10. The external
diameter of the plastics tube 14 is substantially equal to the
external diameter of the normal portion of the pencil 10, the length
of the tube 14 being slightly greater than the length of the reduced
diameter region 20 at the top of the pencil 10.
The upper end of the tube 14 is closed and an oval extension 15
extends axially from the upper end of the tube 14. The extension
15 comprises opposite flat faces, which face in opposite directions
radially of the pencil 10, and a peripheral wall 16 which forms a
decorative border around each of the opposite flat faces of the
extension 15. Writing or other decorative material may be formed
on one or each face of the extension 15.
A plastics figurine 17 is adhered to the plastics tube 14. The
figurine 17 is preferably in a pose which appears as if the figurine
is clutching the tube 14, although this is not essential.
The plastics tube 14 is adhered to the reduced diameter region 20
at the top of the pencil 10, in order to permanently secure the
novelty device 11 to the pencil 10.
The plastics figurine 17 will not become detached because it is
adhered to the plastics tube 14 and it will be appreciated that a
strong bond can be formed between two plastics pieces. The
novelty device 11 is both mechanically engaged with and adhered
to the pencil 10 and thus will not become detached therefrom. The
pencil may be coated with paint, although its reduced diameter
region is preferably free from paint so that a strong bond is formed
between the wood of the body 12 and the plastics tube 14.
9.
http://img471.imageshack.us/my.php?image=pencil1ib.png
Assume that Adam and Eve invented this novelty pencil. Accordingly,
there are no prior
art, novelty, and obviousness concerns. Which claim will provide the
broadest protection
for the pencil?
(A) A novelty pencil comprising a novelty device and an elongate wooden body which
encloses a writing-core, the body being inserted into a tubular
plastics portion of the
novelty device, the novelty device further comprising a plastics
figurine adhered to
an external surface of the tubular plastics portion.
(B) A novelty pencil consisting of a novelty device and an elongate
wooden body which
encloses a writing-core, the body being inserted into a tubular
plastics portion of the
novelty device, the novelty device further comprising a plastics
figurine adhered to
an external surface of the tubular plastics portion.
(C) A novelty pencil comprising a novelty device and an elongate wooden body, the
body being inserted into a tubular portion of the novelty device, the
novelty device
further comprising a figurine adhered to an external surface of the
tubular portion.
(D) A novelty pencil comprising a novelty device and an elongate body,
the body being
inserted into a portion of the novelty device, the novelty device
further comprising a
figurine.
10. If a person contributes to the conception of any matter disclosed
in the specification, that
person must be named as an inventor in the U.S. nonprovisional patent application.
(A) True
(B) False
11. The U.S. Patent and Trademark Office (USPTO) requires that a patent search be
conducted prior to the filing of a U.S. patent application so that the
applicant can submit
information that is ?material to the examination of the patent? to the USPTO.
(A) True
(B) False
12. Which of the following is not within the scope of the term ?on
sale? as it is used in 35
USC 102(b)?
(A) A sale that did not result in a profit
(B) A single sale of the claimed subject matter
(C) A sale of the product before it was ready for patenting
(D) All of the above
13. A Markman hearing is a court hearing in which a jury determines
the scope and meaning
of the claims of a patent.
(A) True
(B) False
14. Which of the following statements regarding claims is correct?
(A) A dependent claim is broader than an independent claim
(B) If a dependent claim is patentable, the independent claims also are patentable
(C) If an independent claim is infringed, then the dependent claims
also are infringed
(D) All of the above
(E) None of the above
15. Joey, Chandler, Ross, Rachel, Phoebe, and Monica, all friends
invented a new device for
detecting spare change in couches and sofas and then formed a New York company
called Vandelay Industries to market the device. They apply for a U.S.
nonprovisional
patent application covering the device. Joey left the company under
?bad circumstances?
and decided to go work for another company in Los Angeles. On the day of his
departure, Joey told the other inventors that he would refuse to sign any documents
related to any patent application for the device. Believing that it
would be too much
trouble to add Joey as an inventor on a U.S. nonprovisional patent
application, the other
friends made the decision not to tell their patent attorney about
Joey?s role. A U.S. patent
is subsequently applied for without naming Ross as an inventor. The
company?s patent
attorney, after talking more with Ross, Chandler, Rachel, Phoebe, and
Monica, learned
that Joey definitely had a role as an inventor and should have been
listed. The patent
attorney filed a petition to correct the inventorship defect by adding
on Joey?s name and
actually even convinced Joey to sign all the proper documentation. If a U.S. patent
issues, will the patent be valid?
(A) Yes
(B) No
16. Riding on the ferry ?DS9? in Madagascar, Nana Visitor, a
mechanical engineer, realized
that the chairs in the ferry had pivoting backs that enabled the
passengers to always sit on
the ferry facing the direction in which the ferry was going. Although
the pivoting chairs
were in use for many years, no published documents describe the
pivoting chairs, and no
patents have been filed disclosing the pivoting chairs. Thinking the
pivoting chairs were
a neat idea, Nana, after coming back to the United States, immediately
files a U.S. patent
application based on what she saw. Knowing these facts, will Nana be
able to get her
patent, or if a patent issues will she be able to keep it?
(A) Yes
(B) No
17. The owner of a U.S. patent has the right to:
(A) make the patented invention
(B) use the patented invention
(C) sell the patented invention
(D) import the patent invention
(E) all of the above
(F) none of the above
For questions 18-22, refer to the following passage:
Locauna Incorporated (Locuna) hired Dr. Howard Mierzwiak to invent a
surgical device
that would allow for a patient to have unwanted and painful memories erased. This
targeted memory erasure device included both hardware and software. Mierzwiak?s
duties and responsibilities to Locuna included both hardware and
software development
for the device.
Mierzwiak, who has been employed by Locuna for the last 20 years, works in a plush
office at Locuna?s corporate complex in New York City. Locuna pays him an annual
salary of $250,000 (bimonthly by direct deposit), pays for his medical and dental
insurance, and provides the labs and equipment that he needs to work
on the device. His
activities are strictly overseen by the president of Locuna, who
reviews his designs and
revisions every single day.
Stan was hired by Lacuna to invent the computer software that would make the device
operational. Stan was hired based on a flat fee, and was paid a lump
sum of $150,000
upon completion of the software. He gave progress updates to Mierzwiak when he felt
like it and received no suggestions or direction from Mierzwiak. He paid his own
medical and dental benefits, and works out of his own basement. He works on his own
Pentium 4 desktop computer and pays for his own Internet access.
Locuna also hired Patrick. He signs an employment contract with Locuna
and is paid a
signing bonus of $50,000. The contract specified that if Patrick quit
in less than three
years, he would have to give back the $50,000. Patrick one day uses
Locana?s computer
at work to write a computer program module that has patentable
features. These features
were incorporated into Stan?s software.
A proper U.S. provisional patent application for the targeted memory
erasure invention
was filed with the U.S. Patent and Trademark Office on January 15,
2006. On April 15,
2006, Dr. Mierzwiak and the company?s president went to a ?venture
capital? conference
in Washington D.C. and gave a presentation on the targeted memory erasure invention
and provided a detailed article (i.e., a printed publication) to a
crowd that included
business people and engineers of every kind. The presentation and
handouts provided a
description that enabled one of ordinary skill in the art to make the
targeted memory
erasure device without undue experimentation. A U.S. nonprovisional application was
then filed with the USPTO on February 15, 2007. A (one) U.S. patent
eventually issues
having claims covering the targeted memory erasure device with the
software, and Dr.
Mierzwiak, Stan, and Patrick are properly named as co-inventors.
18. Assuming that the patent is valid, what fact(s) would make it
conclusive that the
ownership of a patent covering the patentable features of the computer
program would
belong to Locuna?
(A) No intellectual property agreement (or intellectual property provisions in an
agreement) existed, and Patrick was hired to invent the features of the program.
(B) Patrick?s employment contract specified that in exchange for the
$50,000, Patrick
hereby assigns anything he invents within the scope of his employment to Locuna.
(C) No other facts needed ? Locuna does not own the rights to the
patent because Stan
was an independent contractor.
(D) No other facts are needed - Locuna owns the rights to the patent
since Patrick used
Locuna?s computer to invent.
(E) A & B
(F) All of the above
(G) None of the above
19. Based on the above facts, should the inventors been barred from
obtaining the U.S.
patent?
(A) Yes
(B) No
20. In a country that requires absolute novelty, would the inventors
have been barred from
obtaining a patent in that country?
(A) Yes
(B) No
21. Given instead that the U.S. nonprovisional application on the
targeted memory erasure
invention was filed on May 15, 2007 should the inventors have been barred from
obtaining the U.S. patent?
(A) Yes
(B) No
22. Given that a PCT (International) application on the targeted
memory erasure invention
was filed on May 15, 2007 instead of a U.S. nonprovisional
application, in which all
countries are designated, would the inventors be barred from obtaining
a patent in a
designated country that requires absolute novelty?
(A) Yes
(B) No
23. One who infringes another?s patent willfully can be subjected to
treble damages.
(A) True
(B) False
24. Claims in your patent application have been properly rejected
under 35 USC 102(b) as
unpatentable over a U.S. patent issued five years before the effective date of your
application. Which, if any, of the following statements is true?
(A) The rejection may be overcome by introducing evidence of secondary
considerations, such as commercial success.
(B) The rejection may be overcome by arguing that the U.S. patent teaches away from
the invention.
(C) Both of the above.
(D) None of the above.
25. Frasier, a radio therapist, invents a new device that will cause
the inflection of his voice
to sound an octave lower to his listeners, providing him with the
ability to sound more
pompous than he already does. He decides that he will not file for any
foreign patents.
Roz (co-worker) and Niles (Frasier?s brother) tell Frasier that he can
elect to keep his
U.S. patent application from being published at the 18 month date. Are
Roz and Niles
right?
(A) Yes
(B) No
26. Even if a person files a provisional application, the invention
cannot be marked as ?patent
pending? until the patent has been examined by the Patent and
Trademark Office at least
once.
(A) True
(B) False
27. You are not required to build a prototype of your invention in
order to get a U.S. patent.
(A) True
(B) False
28. Madden invented a visor with a binocular attached to it, and built
a prototype of it on
June 1, 1998, and properly documented sufficient evidence regarding the prototype.
Madden showed this visor+binocular to Spurrier on July 1, 1998. Unbeknownst to
Madden, Spurrier on the same day told a local reporter about the
visor+binocular and
how it worked. Feeling that it would revolutionize the viewing of live
sports, that local
reporter wrote a story in a newspaper about the visor+binocular. The
newspaper article
described the invention in such complete detail such that any person
of ordinary skill in
the art could make the visor+binocular without undue experimentation.
The article was
published on August 1, 1998. Madden filed for a U.S. patent
application on June 1, 1999.
The patent office rejected the application and all claims alleging
that the article was
printed before Madden?s date of invention. Can the examiner?s
rejection be overcome?
(A) Yes
(B) No
29. Which one of the following is a discovery tool in which questions
are asked by the party
seeking discovery?
(A) Interrogatories
(B) Requests for Admission
(C) Depositions
(D) Request for documents
(E) A and C
(F) All of the above
30. An international patent can be enforced in all countries
designated pursuant to an
international application filed under the international Patent
Cooperation Treaty (PCT).
(A) True
(B) False
31. Zacharias invented a new kind of camera lens and made a working
prototype of the lens
in January 1990. At that time, Zacharias?s lens was novel and
non-obvious, within the
meanings of sections 102 and 103 of the patent act. In August, 1990,
Hubble filed an
application for an invention made an invention that was not the same
as Zacharias?s, but
when combined with other publicly available printed publications
rendered Zacharias?s
invention obvious. Hubble licensed his patent application to
Lenscrafters in September
of 1990. In October of 1991, Zacharias, who also had properly
documented his invention
efforts and exercised reasonable diligence from conception to
reduction to practice, filed
for a patent. Should Zacharias be barred from obtaining a patent?
(A) Yes
(B) No
32. X conceived of an invention in January of 2010. X, working
diligently on the invention,
filed a proper U.S. patent application in December of 2010. X
subsequently in May of
2011 built a prototype as described in X?s application. Y conceived of the same
invention in March of 2010 and, working diligently on the invention,
built a prototype in
April of 2010, and filed a proper U.S. patent application in November of 2010. Who
would get the patent if the Patent Reform Act of 2005 was passed and
entered into law?
(A) X
(B) Y
33. Which of the following is patentable subject matter under 35 USC 101?
(C) A claim to a new mineral discovered in the earth or a new plant
found in the wild
(D) A billing process containing mathematical algorithms producing a
written invoice
(E) A claim to a method of controlling a mechanical robot which relies
upon storing data
in a computer that represents various types of mechanical movements of the robot
(F) B and C
(G) All of the above |
