Quiz Answers

Here are the answers to the questions from the last blog.

1. Which of the following is true of a proper request for ex parte reexamination?

(A) The request must identify which claims are invalid and why

(B) The request must identify the real party in interest

(C) The request must be based on the patent’s claims being invalid under 35 USC 102 as anticipated in light of the prior art

(D) The patent must be unexpired.

(E) The request can be filed anonymously

(E) is correct. The request need not establish invalidity, but rather a substantial new question of patentability. A reexamination can be filed of an expired patent and an ex parte reexamination can be filed anonymously. MPEP 2210

2. A request for reexamination was filed on June 3, 2010. By mistake, the check for the fee was omitted from the papers filed. After notification by the Office, the fee was paid on September 4, 2010. Which of the following is true?

(A) The date of filing of the reexamination is June 3, 2010

(B) The date of filing of the reexamination is September 4, 2010

(C) The applicant may file a written request that the date of filing be set for June 3, 2010, accompanied by a surcharge

(D) The filing date will be set at June 3, 2010, if the payment is accompanied by a statement that the late payment was inadvertent and without deceptive intent.

(E) The filing date will be set at June 3, 2010, if the payment is accompanied by a showing that the late payment was inadvertent and without deceptive intent

 (B) is correct. In reexamination, the date the fee is paid is the filing date. MPEP 2210

3. Which of the following may be the proper basis for a request for ex parte reexamination?

(A) Evidence of a sale in The United States

(B) Public use in Arkansas

(C) A prior invention in Maine

(D) A publication in Russian

(E) Knowledge in New York

 (D) is correct. Only patents and publications can be the basis of a reexamination, but they may be in any language. MPEP 2205

4. Which of the following is NOT a requirement for a request for reexamination?

(A) A statement pointing out each substantial new question of patentability

(B) A certification that a copy of the request has been served upon the patent owner, if the request is filed by someone other than the patent owner.

(C) An identification of each claim for which reexamination is requested and a detailed explanation of the pertinence and matter of applying the cited art to every claim for which reexamination is requested

(D) A copy of each patent and publication relied upon.

(E) A copy of every US patent related to the patent for which reexamination is sought

(E) is correct. MPEP 2210

5. A request for reexamination of a design patent must be accompanied by which one of the following?

(A) The request must set forth the pertinence and manner of applying the cited art to the formal claim for which reexamination is requested.

(B) The request must be signed by the owner of the patent, unless filed by a third party

(C) The request must be accompanied by the written consent of the assignee, unless filed by a third party

(D) The request may be in any language, provided a translation is filed later together with a surcharge

(E) Design patents cannot be reexamined

(A) is correct. Design patents and utility patents have the same reexamination rules. While the explanation is directed at the formal claim in a design patent, it must discuss the drawings, because that is where the design really resides. MPEP 2210

6. Which of the following is true under USPTO rules and procedures?

 (A) A request for ex parte reexamination must be filed before the expiration of the patent being reexamined

(B) If the patent expires after a request for ex parte reexamination has been filed, and before a certificate of reexamination has been issued, the reexamination is automatically terminated by the USPTO.

(C) If the patent expires after a request for ex parte reexamination has been filed, and before a certificate of reexamination has been issued, the reexamination is automatically suspended by the USPTO, until a showing is made that an actual controversy involving the patent exists.

(D) Claims in a patent under ex parte reexamination cannot be amended, if the patent has expired.

(E) Claims in a patent under ex parte reexamination can be broadened, even if the patent has expired.

D) is correct. MPEP 2250.

7. An ex parte reexamination is filed by a third party relying upon a Swedish patent. Which of the following is true?

(A) The request must be accompanied by a translation of the Swedish patent.

(B) The request must be accompanied by a translation of the necessary and pertinent parts of the Swedish patent.

(C) The request must be accompanied by a translation of the necessary and pertinent parts of the Swedish patent, if they are readily available to the requester

(D) The request must be accompanied by a translation of the necessary and pertinent parts of the Swedish patent, if necessary to understand the Swedish patent

(E) The request must be accompanied by a translation of the necessary and pertinent parts of the Swedish patent, only if no English language equivalent is available

 (B) is correct. MPEP 2210

8. Under which of the following circumstances may a request for ex parte reexamination be brought, even though the patent has expired and the six year statute of limitations has run?

(A) The patent is of particular interest to the security of the United States

(B) The patent is still enforceable against someone

(C) The patentee has filed suit against the Federal government in the Court of Claims

(D) A reissue application is pending

(E) The patent is certified by the Director of the Office

(B) is correct. This could only occur if a suit for infringement was filed before the six year period had run. MPEP 2211.

9. Under which circumstances will a request for reexamination normally be conducted by the original examiner who issued the patent?

(A) Upon the written request of the applicant or his or her attorney

(B) When a petition reviewing the decision to deny reexamination was filed under 37 CFR 1.515(c), and was granted.

(C) Where the examiner has been extensively reversed by the Board of Patent Appeals and Interferences in the past

(D) When the original examiner is the only examiner with adequate knowledge of the relevant technology to examine the application

(E) Upon a showing that the original examiner rejects an abnormally low number of applications

(D) is correct. MPEP 2236, 2255

10. In which of the following situations can there be NO substantial new question of patentability?

(A) A Federal court has issued a final decision holding the patent to be valid based upon the same prior art cited by the requester.

(B) A Federal court has issued a final decision holding the patent to be invalid based upon the same prior art cited by the requester.

(C) A Federal court has issued a non-final decision holding the patent to be valid based upon the same prior art cited by the requester.

(D) A Federal court has issued a non-final decision holding the patent to be invalid based upon the same prior art cited by the requester.

(E) There is a prior decision of the USPTO as to the claims being examined and based upon the same prior art cited by the requester.

 (B) is correct. A final decision by a Federal court of invalidity removes jurisdiction for a reexamination from the Office. MPEP 2242