Q) Hair Gel (4.02.37p)

by patentbar on June 28, 2007 · 18 comments

in Exam Questions

Recent test takers report a question on their exams involving Hair Gel with Buzzy, Supercuts, and Razorcuts. This question is nearly identical in concepts tested to the Einstein / Weisman football pads question #37 from the April 2002 (pm) exam.

Original Question:

37. Applicant Einstein files a patent application on November 26, 1999, that claims a new type of football pads. Prosecution is conducted and the application issues as a patent to Einstein on April 3, 2001. A competitor, Weisman, who has been making and selling football pads since April of 1998, learns of Einstein’s patent when Einstein approaches him on May 3, 2001, with charges of infringement of the Einstein patent. Weisman makes an appointment to see you to find out what he can do about Einstein’s patent, since Weisman believes that he is the first inventor of the claimed subject matter. At your consultation on May 17, 2001, with Weisman, you discover that Weisman widely distributed printed publications containing a fully enabling disclosure of the invention and all claimed elements in the Einstein patent. Weisman used the printed publication for marketing his football pads in April of 1998. Weisman explains that he wishes to avoid litigation. Which of the following is a proper USTPO practice and procedure that is available to Weisman?

(A) Weisman should file a petition to correct inventorship under 37 CFR 1.324 in the patent, along with a statement by Weisman that such error arose without any deceptive intention on his part, requesting that a certificate of correction be issued for the patent under 35 U.S.C. § 256, naming the correct inventive entity, Weisman.

(B) Weisman should file a reissue application under 35 U.S.C. § 251, requesting correction of inventorship as an error in the patent that arose or occurred without deceptive intention, wherein such error is corrected by adding the inventor Weisman and deleting the inventor Einstein, as well as citing Joe Weisman’s April 1998 printed publication for the football pads as evidence that Weisman is the correct inventor.

(C) Weisman should file a prior art citation under 35 U.S.C. § 301, citing the sales in April 1998 of football pads, and explain the pertinency and manner of applying such sales to at least one claim of the Einstein patent.

(D) Weisman should file a request for ex parte reexamination of the Einstein patent under 35 U.S.C. § 302, citing the April 1998 printed publication of football pads in, and explain the pertinency and manner of applying such prior art to at least one claim of the Einstein patent.

(E) Weisman should file a request for inter partes reexamination of the Einstein patent under 35 U.S.C. § 311, citing public use of the football pads in April 1998, and explain the pertinency and manner of applying such prior use to at least one claim of the Einstein patent.

ANSWER: (D) is correct. It is the only answer that proposes to use a practice and procedure that is available to Einstein. 35 U.S.C. § 302. (A) This is incorrect because a statement by the currently named inventor as required by 37 C.F.R. § 1.324(b)(2) and the fee required by 37 C.F.R. § 1.20(b0 have not been filed. (B) This is incorrect, as in A.F. Stoddard & Co. v. Dann, 564 F.2d 556, 567 n.16, 195 USPQ 97, 106 n.16 (D.C. Cir. 1977) wherein correction of inventorship from sole inventor A to sole inventor B was permitted in a reissue application, does not apply here, as a reissue application can only be filed by the inventor(s) or assignee(s). See MPEP § 1412.04. (C) This answer is incorrect because it refers to sales, as opposed to patents or printed publications. (E) The option of requesting inter partes reexamination is not available in this scenario, as the patent in question issued from an original application which was filed prior to the critical date of November 29, 1999. Only patents which issued from original applications filed in the United States on or after November 29, 1999, are eligible for inter partes reexamination (37 C.F.R. § 1.913).

The Hair Gel variant: “someone gets a patent application in 99 and it issues as a patent in 01. A couple years later, a competitor realizes that it is the exact same hair gel he had advertised in 98. The question asks what the competitor can do to correct it, petition for a correction, ex parte re-exam, inter parte re-exam, reissue or certificate of correction.”

Reissue and certificates of correction have to be requested by the inventors or the assignee (consent of inventors needed for broadening reissue). A competitor can request re-exam (either inter partes or ex parte) only if there is a patent or printed publication raising a substantial new question of patentablility. Thus, unless the advertisement constitutes a printed publication (with sufficient disclosure to raise substantial new question of patenability), the competitor is out of luck. If the advertisement qualified, then ex parte re-exam would be available to the competitor, based on facts above. Inter partes re-exam would be available only if the application was filed on or after Nov 29, 1999 (MPEP 2609). It would probably be ex parte since it happened 98/99 and there was a printed ad.

The hair gel variant is a bit tougher than the original question as it does not spell out (to my recollection), like Q37, that the advertisements raise a substantial question of patentability.

{ 18 comments… read them below or add one }

1 patentbarNo Gravatar August 19, 2008 at 11:44 am

Another variant – “I also had a question stating that someone was trying to get a patent on compound xyz because it helped grow hair. However, xyz was patented 100years ago as a shoe polish. I picked that you could not get a patent on it. I figured that it was a different use. There is an old test question similar to this one. I think in 2002.”

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2 patentbarNo Gravatar August 19, 2008 at 6:37 pm

I had a question regarding whether someone could file a reexam, reissue, or protest in order to challenge someone else’s patent. The key to that answer was being able to find the date after which someone can file an inter partes reexam (issue date in the question was prior to this date, so the answer was file ex partes reexam).

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3 RickNo Gravatar May 18, 2010 at 12:09 am

Another key to the answer is that reexamination proceedings of both types are not permitted to introduce prior art merely to establish public use — only publications and patents.

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4 patentbarNo Gravatar August 19, 2008 at 8:36 pm

Hair gel: Similar to Einstein/Weismann question ( Apr 17, ’02, Q37), application filed before Nov, 29, 1999. Thus ex parte reexamination seems to be correct answer, even though inter partes is there as answer choice , it does not apply since application filed before Nov 29, 1999.

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5 DNo Gravatar January 17, 2011 at 10:02 pm

Answer (E) is also incorrect because the reexam is “citing public use,” in addition to the filing date. MPEP E8R4 § 2616 (“Questions relating to grounds of rejection other than those based on prior art patents or printed publications should not be included in the request and will not be considered by the examiner if included. Examples of such questions that will not be considered are questions as to public use . . .”).

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6 jpmille1No Gravatar August 20, 2008 at 6:58 am

As an adder to #1, note that the new Use is patentable, but a new use for a known compound does not make the compound itself re-patentable.

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7 StephenNo Gravatar August 13, 2010 at 5:56 pm

I agree. You would have to claim “A method for improving hair growth using compound XYZ.” Claiming the same compound, although the use is different, would not be repatentable.

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8 Thank youNo Gravatar May 19, 2009 at 9:14 pm

I had a question regarding whether someone could file a reexam, reissue, or protest in order to challenge someone else’s patent. The key to that answer was being able to find the date after which someone can file an inter partes reexam (issue date in the question was prior to this date, so the answer was file ex partes reexam).

i checked this question at the PTO and IT IS PATENTABLE! SHOE POLISH AND HAIR GEL

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9 lanceNo Gravatar August 9, 2010 at 4:21 pm

So let’s say all the dates shifted to the right 1 year, meaning the application was filed in nov 2000. Then would the answer be inters parte vs ex? What’s the difference besides eligibility date??

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10 StephenNo Gravatar August 13, 2010 at 5:59 pm

In inter parte examination the person challenging the patent actually participates in the proceedings. In ex parte they aren’t allowed to participate. For example, I believe in inter parte you are allowed to attend the interview as the third party, whereas in ex partes you aren’t. I was thinking it was D because it says that Weisman wants to “avoid litigation” so that made me think ex partes, but then again I don’t think inter partes reexamination is considered litigation, so that was probably the wrong way to think about it. If the date had been after November 29, 2000 both D and E would have been correct in my opinion.

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11 toomuch23No Gravatar October 31, 2010 at 5:50 pm

I think your thinking is correct in regards to wanting to participate or not. All the old question that deal with this issue, also give a suggestion as to the desires of the person wanting to get a Re-exam. Also, the re-exam would turn into litigation if not resolved at the PTO.

12 DNo Gravatar January 17, 2011 at 10:00 pm

Answer (E) is incorrect because the reexam is “citing public use,” not because it is inter partes versus ex parte. MPEP E8R4 § 2616 (“Questions relating to grounds of rejection other than those based on prior art patents or printed publications should not be included in the request and will not be considered by the examiner if included. Examples of such questions that will not be considered are questions as to public use . . .”).

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13 Boating BobNo Gravatar December 30, 2010 at 5:16 pm

Had this question today. Person A sold the hair gel since 98 and used a printed ad in 98 describing the hair gel. In 2002 Person B obtained a patent, applied for in 99 (on a date more than a year after sales started for person A), and sued Person A for infringement. Person A goes to a patent attorney to determine what they can do. Ex Parte, Interpartes, have the patent reissued in A’s name, etc.

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14 PatfieldNo Gravatar July 13, 2011 at 5:56 pm

Just did my home work and to me the only diff between ex parte and inter parte is cost and level of involvement

Inter parte costs $8800 and allows the third party requester of the reexamination to remain active in the reexam process

Ex parte costs $2520 and does not allow the third party to remain active after their submission of either Patents or publications questioning the validity of the patent in question

Hope this helps others.

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15 carolynNo Gravatar October 4, 2011 at 10:42 pm

I answered D because submitting the citation of prior art doesn’t really do anything, and the other choices would involve Weisman in some form of litigation. In the fact pattern, it states he wishes to avoid litigation.

With Ex-Parte Re-exam, it would involve just the patent owner and the USPTO.

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16 MaggieNo Gravatar October 31, 2011 at 12:51 pm

Hair Gel Q Posted:

Person A sold the hair gel since 1998 and used a printed ad in 1998 describing the hair gel. In 2002 Person B obtained a patent, filed for in 1999 (on a date more than a year after sales started for person A), and sued Person A for infringement. Person A goes to a patent attorney to determine what they can do?

(A) Ex Parte Reexam
(B) Interpartes Reexam
(C) Reissue
(D) Certificate of correction
(E) Petition

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17 Mambo5No Gravatar January 25, 2012 at 10:29 am

Reissue and Certificate of correction are out, because only the inventor or his assignees can request them.

Reexamination, submitting the printed ad as prior art, published > 1 year before B filed his application, would prove a 102(b) statutory bar against B’s patent.

Now the question is narrowed down to ex parte or inter partes reexamination.

Inter partes reexamination is only allowed on apps filed after Nov 29, 1999.

The wording on this problem says only that B’s app was filed during 1999, without specifying whether it was before or after Nov 29.

In this case, I’d answer (A) ex parte reexamination, because that will work whenever B’s app was filed.

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18 RockyviiNo Gravatar January 25, 2012 at 9:15 am

Guys, please note that for apps filed on/after Sept. 16, 2011 but before Sept. 16, 2012, the standard for inter parte re-examination has changed from the requestor having to establish a Substantial New Question (SNQ) of patentability to now having to establish a likelihood that the requestor will win the re-exam proceeding for at least one claim. The SNQ standard still applies for ex parte requests for apps filed within this period.

The USPTO OED website says these materials may be tested on the exam on/around Jan. 31!

Note: For apps filed after Sept. 16, 2012, all requests for inter parte re-exams will not be honored. But I don’t think this bit of info will be on the exam until after that date anyway.

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