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.
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.