Company A gave their agent B, the competitor’s patent application number, and asked if the agent B could get the information on the competitor’s patent application; whether it has been published and publication date. By telephoning the office, how do you get such information?
- 101 General
- […]When handling an incoming telephone call or an in person request for information regarding an unpublished pending or abandoned patent application, no information should be disclosed until the identity of the requester can be adequately verified as set forth below. Particular care must be exercised when a request is made for the publication date or publication number, or issue date and patent number assigned to a pending patent application. If the publication or issue date is later than the current date (i.e., the date of the request), such information may be given only to the applicant, or the assignee of record, or the attorney or agent of record.
I got an new exam question yesterday on request for information under CFR 1.105. I only remember one of the selections. It said: Request for information under Rule 1.105 regardless of it being made with or separate from an office action is an Office Action for Patent Term Adjustment purposes.
I don’t even remember my answer. So, it may be helpful to briefly look at the facts on Rule 1.105 before you take the exam.
I also got the new question which is more relating to the subject of this section. The fact pattern of the question goes like this:
A practitioner (third party) has a numerical identifier of an application (he is not an attormey or agent of record for the application, so third party) and he wants to learn if the application is published and if published publication date. How can he achieve it by calling PTO by telephone, or going to PTO in person?
The selections included different combinations of phrases like, “calls FIU by phone”, “goes to FIU and in-person”, “FIU asks his identity, phone number, address, etc.”, “FIU asks if there’s an att/agent of record for the application, registration number of that person or name of that person” and so on… So you should read about in chapter 100 the section “TELEPHONE AND IN-PERSON REQUESTS FOR INFORMATION CONCERNING PENDING
OR ABANDONED APPLICATIONS”
I got the rule 1.105 question too. Know what the examiner can request re information during prosecution from the inventor/assignee.
Variant on September 12, 2010.
Options included using the PAIR system or contacting the FIU.
The answer was contact the FIU and they will tell you if the application has been published or issued as a patent. MPEP 102.
hmm, u cannot use the PAIR system?
It seems either PAIR or contacting FIU is appropriate, at least as to status information.
MPEP 102 (@ 100-6):
“A requester seeking status information regarding an application should check the Patent Application Information Retrieval (PAIR) system on the [USPTO] website … Alternatively, the requester may contact the File Information Unit (see MPEP 1730). The File Information Unit (FIU) will check the relevant Office records and will inform the requester whether the application has been published or has issued as a patent …”
The phone is the distinction between the new variant and question 22 from Oct.2003.A.M
Application Number A was published as U.S. Patent Application Publication Number B. A member of the public reviewed the listing of the file contents of the application on the Patent Application Information Retrieval system and determined that the application was still pending, that a final Office action was mailed, and that the application file is in the Technology Center where it is being examined. The member of the public does not have a power to inspect, but would like a copy of the final Office action as well as the other papers in the patent application. In accordance with the patent laws, rules and procedures as related in the MPEP, can a copy of these papers be obtained by the member of the public, and if so, how can the copy be obtained?
Answer is E.Yes, the member of the public can order a copy from the Office of Public Records, with a written request and payment of the appropriate fee
Got similar questions today- I don’t know if there is another repeat question more relavant, but I am just going to write it here. The one I saw today was about power to inspect, and answer choices had oral consent (not written, who can have oral consent and when, 101 verbatim)
Also another questions was about 1.105, that the examiner can request the necessary information before the first office action.
I might have gotten a different variant of the question. I know you should refer to MPEP 101. The answer should be telephone and the patent attorney is not associated with the pending patent application
Most recent variant involved answer choices of calling FIU and seeing if a CIP was filed, ask if it was published or patented, go on PAIR, etc. PAIR is not the correct answer.
Answer: Call FIU and see if application is published or patented.
various about providing information to FIU (atty name, phone number, addy, etc.) and whether or not u could get info as to whether app was published or patented
VARIANT on 4/27/2011 E8R8:
Which of the following documents are available for public inspection:
1. something
2. Assignment document that refers to both pending and issued patents/apps.
3. something
A. 1
B. 2
C. 3
D. Combo
E. All
2 based on MPEP 301.01 paragraphs 1,2 and 3
I got the variation of Question 22 from Oct. 2003 AM exam today. I got it right!