Q) Bird Watching (10.02.18a)

by patentbar on August 22, 2008 · 14 comments

in Exam Questions

18. While traveling through Germany (a WTO member country) in December 1999, Thomas (a Canadian citizen) conceived of binoculars for use in bird watching. The binoculars included a pattern recognition device that recognized birds and would display pertinent information on a display. Upon Thomas’ return to Canada (a NAFTA country) in January 2000, he enlisted his brothers Joseph and Roland to help him market the product under the tradename “Birdoculars.” On February 1, 2000, without Thomas’ knowledge or permission, Joseph anonymously published a promotional article written by Thomas and fully disclosing how the Birdoculars were made and used. The promotional article was published in the Saskatoon Times, a regional Canadian magazine that is also widely distributed in the United States. Thomas first reduced the Birdoculars to practice on March 17, 2000 in Canada. A United States patent application properly naming Thomas as the sole inventor was filed September 17, 2000. That application has now been rejected as being anticipated by the Saskatoon Times article. Which of the following statements is most correct?

(A) Thomas can rely on his activities in Canada in establishing a date of invention prior to publication of the Saskatoon Times article. (B) In a priority contest against another inventor, Thomas can rely on his activities in Canada in establishing a date of invention. (C) In a priority contest against another inventor, Thomas can rely on his activities in Germany in establishing a date of invention. (D) Statements (A) and (B) are correct, but statement (C) is incorrect. (E) Statements (A), (B), and (C) are each correct.

18. ANSWER: (E) is the most correct answer. Thomas may rely on activities in both Germany
(a WTO member country) and Canada (a NAFTA country) in establishing a date of invention
prior to publication of the Saskatoon Times article or in establishing priority. 35 U.S.C. § 104;
see also MPEP 715.01(c).

{ 14 comments… read them below or add one }

1 KFNo Gravatar November 2, 2011 at 10:37 am

So if a publication is written by the inventor but published by another without his/her consent, it still counts under prior art 102(a) or 102(b) (timeline dependent). Thus, the publication does NOT have to be written by “another” to qualify as a reference. Yes? I think I’ve studied too much the basic concepts are disappearing from my brain…


2 FredNo Gravatar January 24, 2012 at 10:16 pm

I don’t know if this will help but…
Because an event must have occurred before the applicant’s date of invention in order to be a 102(a) event, an event stemming from an applicant’s own work cannot constitute 102(a) prior art against the inventor’s application, because the event could not have occurred before the applicant’s invention. MPEP 2132.01.


3 MirandaNo Gravatar January 25, 2012 at 6:51 pm

So Thomas’ only real threat is 102(e) correct?

4 MirandaNo Gravatar January 27, 2012 at 11:18 am

nevermind. 102a is the real threat. so does Thomas have an alternative defense by stating that the publication is his own work?

5 KFNo Gravatar March 17, 2012 at 3:25 pm

Fred thank you-that is helpful.

6 MirandaNo Gravatar January 25, 2012 at 6:56 pm

Ok this question is very confusing. Can someone explain what it is asking and what the answer is and why?


7 justpassedNo Gravatar January 27, 2012 at 2:59 pm

The reference has a 102(a) date b/c it is a publication (see 102 statute), not 102(e) since there was no filing of a patent application. Thomas may use a 1.131 affidavit to antedate the date of the prior art reference by relying on activities (date of conception, due diligence, reduction to practice) in Canada and Germany. Use this explanation along with the explanation provided by answer (E) above.

hope this helps.


8 MirandaNo Gravatar January 27, 2012 at 4:04 pm

Alternatively, Thomas can submit an affidavit stating that the reference was derived from his own work, correct?


9 SolNo Gravatar March 30, 2012 at 8:33 pm

YES, either 131 or 132 would work.

10 justpassedNo Gravatar January 27, 2012 at 4:52 pm

Using a 1.132 affidavit… I think you can, however you need to check if it works when relying on applicant’s own work that was carried out outside of the US.


11 mimiNo Gravatar September 11, 2012 at 11:52 pm

My thought is ;
The rejection must be under 102(a), because the article is published within one year of the date of Tomas’s invention.
The examiner didn’t recognize that the applicant and an arthor of the article are identical.

Therefore, Tomas can file an affidavit 131(invention’s date) or 132(his own work) to overcome the rejection.

But, if the article was published prior to one year of Tomas’s invention, the rejection would be a 102(b), he cannot overcome the rejection 102(b).

Any thought? am i wrong?

Thank you


12 Jaycee11No Gravatar July 19, 2013 at 3:42 pm

My problem is with (A). Thomas can reply on activities in Canada, but his activities in Canada cannot help establish a date of invention prior to the publication. He has to rely on the activities in Germany. I still don’t get it why E is the correct answer.


13 RLNo Gravatar September 16, 2013 at 12:07 am

Jaycee, you have a point. Thomas didn’t do any inventing in Canada.


14 MLNo Gravatar May 4, 2014 at 7:01 am

@Jaycee — At a minimum, his activities in Canada demonstrate that (a) he had conceived of the invention at some point prior to the publication, and (b) his due diligence from that point forward until an application was filed. Whether he was actually diligent is another question as the facts only discuss his commercial efforts. Nonetheless, he can submit the evidence and argue accordingly.

@mimil — Your statement re: pre-AIA 102a is flawed because the 1 year limitations only apply to 102b prior art, which is why there is no reference to such in the statute. Compare 35 U.S.C. § 102(a) (“A personal shall be entitled to patent unless (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent”), and § 102(b) (“(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, MORE THAN ONE YEAR prior to the date of application for patent in the United States”)


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