It has been reported that an exam question involves five inventors where two of the inven-
tors 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 appli-
cation. Company Y cannot locate the two inventors from company X because they no longer
work for X. Is filing proper without the X inventors?
ANSWER
The answer is "yes" because a newly executed oath or declaration is not required in a contin-
uation application. See 37 CFR 1.63(d).
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.
ANSWER
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).
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, na-
tional stage, CPA, provisional, etc.
ANSWER
The correct answer is a CPA.
1
,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?
ANSWER
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 ap-
plicant removed the claim himself he cannot avail himself of adding the claim back as unin-
tentionally delayed under 37 CFR 1.78(a)(3).
ANSWER
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 aban-
doned patent application not published under 35 USC 122(b).
2
, (E) Assignment document relating to both an abandoned patent application not published
under 35 USC 122(b) and a pending reissue application.
ANSWER
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
ANSWER
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 state-
ment 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 in-
3
tors 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 appli-
cation. Company Y cannot locate the two inventors from company X because they no longer
work for X. Is filing proper without the X inventors?
ANSWER
The answer is "yes" because a newly executed oath or declaration is not required in a contin-
uation application. See 37 CFR 1.63(d).
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.
ANSWER
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).
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, na-
tional stage, CPA, provisional, etc.
ANSWER
The correct answer is a CPA.
1
,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?
ANSWER
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 ap-
plicant removed the claim himself he cannot avail himself of adding the claim back as unin-
tentionally delayed under 37 CFR 1.78(a)(3).
ANSWER
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 aban-
doned patent application not published under 35 USC 122(b).
2
, (E) Assignment document relating to both an abandoned patent application not published
under 35 USC 122(b) and a pending reissue application.
ANSWER
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
ANSWER
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 state-
ment 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 in-
3
