Comments on: Q) Smith and Jones (4.02.38p) http://mypatentbar.com/2008/08/22/q-smith-and-jones-40238p/ Patent Bar Review and Study Guide Tue, 22 May 2012 00:33:43 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: fengyuwuzu http://mypatentbar.com/2008/08/22/q-smith-and-jones-40238p/#comment-17353 fengyuwuzu Tue, 11 Oct 2011 17:57:46 +0000 http://patentbar.wordpress.com/?p=689#comment-17353 it is 201.03 not 209.03 it is 201.03 not 209.03

]]> By: S http://mypatentbar.com/2008/08/22/q-smith-and-jones-40238p/#comment-2471 S Sun, 30 May 2010 11:45:14 +0000 http://patentbar.wordpress.com/?p=689#comment-2471 Yep! My apologizes. The answer is E. As for D, like I said earlier, there is no mention of the fee. But instead the relevant portion of the MPEP (apart from 1.53/1.63) 291.03: Correction of inventorship may also be obtained by the filing of a continuing application under 37 CFR 1.53 without the need for filing a request under 37 CFR 1.48, either in the application containing the inventorship error (to be abandoned) or in the continuing application. The continuing application must be filed with the correct inventorship named therein. The filing of a continuing application to correct the inventorship is appropriate if at least one of the correct inventors has been named in the prior application (35 U.S.C. 120 and 37 CFR 1.78(a)(1)). That is, at least one of the correct inventors must be named in the executed oath or declaration filed in the prior application, or where no executed oath or declaration has been submitted in the prior application, the name of at least one correct inventor must be set forth in the application papers pursuant to 37 CFR 1.41(a)(1). Where the name of at least one inventor is to be added, correction of inventorship can be accomplished by filing a continuing application under 37 CFR 1.53(b) with a newly executed oath or declaration under 37 CFR 1.63(a). Where the name of an inventor(s) is to be deleted, applicant can file a continuing application with a request for deletion of the name of the inventor(s). The continuing application may be filed under 37 CFR 1.53(b) or, if the application is for a design patent, under 37 CFR 1.53(d). Yep! My apologizes. The answer is E.

As for D, like I said earlier, there is no mention of the fee. But instead the relevant portion of the MPEP (apart from 1.53/1.63)

291.03:

Correction of inventorship may also be obtained by the filing of a continuing application under 37 CFR
1.53 without the need for filing a request under 37 CFR 1.48, either in the application containing the inventorship error (to be abandoned) or in the continuing application. The continuing application must be filed with the correct inventorship named therein. The filing of a continuing application to correct the inventorship is appropriate if at least one of the correct inventors has been named in the prior application (35 U.S.C. 120 and 37 CFR 1.78(a)(1)). That is, at least one of the correct inventors must be named in the executed oath or declaration filed in the prior application, or where no executed oath or declaration has been submitted in the prior application, the name of at least one correct inventor must be set forth in the application papers pursuant to 37 CFR 1.41(a)(1). Where the name of at least one inventor is to be added, correction of inventorship can be accomplished by filing a continuing application under 37 CFR 1.53(b) with a newly executed oath or declaration under 37 CFR 1.63(a). Where the name of an inventor(s) is to be deleted, applicant can file a continuing application with a request for deletion of the name of the inventor(s). The continuing application may be filed under 37 CFR 1.53(b) or, if the application is for a design patent, under 37 CFR 1.53(d).

]]> By: newtopatentbar http://mypatentbar.com/2008/08/22/q-smith-and-jones-40238p/#comment-2463 newtopatentbar Sun, 30 May 2010 02:49:51 +0000 http://patentbar.wordpress.com/?p=689#comment-2463 Well, the USPTO answer is E. The fee requirement is from 1.48 (b). Well, the USPTO answer is E. The fee requirement is from 1.48 (b).

]]> By: S http://mypatentbar.com/2008/08/22/q-smith-and-jones-40238p/#comment-2461 S Sun, 30 May 2010 00:46:52 +0000 http://patentbar.wordpress.com/?p=689#comment-2461 I would go with A, just because it fulfills the requirement of 1.48(f) without ant hitches. However, I don't see any fee requirements for D. I would go with A, just because it fulfills the requirement of 1.48(f) without ant hitches. However, I don’t see any fee requirements for D.

]]> By: newtopatentbar http://mypatentbar.com/2008/08/22/q-smith-and-jones-40238p/#comment-2460 newtopatentbar Sun, 30 May 2010 00:21:14 +0000 http://patentbar.wordpress.com/?p=689#comment-2460 For answer D, wasn't the practitioner supposed to pay a fee set forth in § 1.17(i)? I chose A because I thought D should have included a fee to be perfectly correct. Can somebody help me out here? Thanks For answer D, wasn’t the practitioner supposed to pay a fee set forth in § 1.17(i)? I chose A because I thought D should have included a fee to be perfectly correct. Can somebody help me out here? Thanks

]]> By: mdavis68 http://mypatentbar.com/2008/08/22/q-smith-and-jones-40238p/#comment-1417 mdavis68 Thu, 04 Feb 2010 01:05:43 +0000 http://patentbar.wordpress.com/?p=689#comment-1417 Q) Smith and Jones (4.02.38p) *Explanation: (E), which includes answers (A) and (D), is the correct answer. Answer (A) is correct. Where an application is filed identifying the inventorship but an executed declaration under 37 C.F.R. § 1.63 has not been filed, the first submission of an executed declaration under 37 C.F.R. § 1.63 will automatically act to correct the earlier identification of the inventorship. 37 C.F.R. § 1.48(f)(1). Answer (D) is correct. A continuation using a copy of a declaration under 37 C.F.R. § 1.63 from a prior application may be filed naming fewer than all the named inventors in the prior application provided a request for deletion of an inventor accompanies the declaration copy. 37 C.F.R. § 1.53(b)(1), 37 C.F.R. § 1.63(d)(1)(iv), and 1.63(d)(2). Answer (B) is incorrect. Where a declaration under 37 C.F.R. § 1.63, signed by at least one of the inventors, has been submitted to the Office, submission of a second executed declaration under 37 C.F.R. § 1.63 setting forth a different inventive entity will not act to correct the inventorship absent a petition under 37 C.F.R. § 1.48(a). 37 C.F.R. § 1.48(f)(1). Answer (C) is incorrect. Inventorship cannot by corrected by adding an inventor through the filing of a continued prosecution application, rather a petition under 37 C.F.R. § 1.48 is required. 37 C.F.R. § 1.53(d)(4). Q) Smith and Jones (4.02.38p)

*Explanation:

(E), which includes answers (A) and (D), is the correct answer. Answer (A) is correct. Where an application is filed identifying the inventorship but an executed declaration under 37 C.F.R. § 1.63 has not been filed, the first submission of an executed declaration under 37 C.F.R. § 1.63 will automatically act to correct the earlier identification of the inventorship. 37 C.F.R. § 1.48(f)(1). Answer (D) is correct. A continuation using a copy of a declaration under 37 C.F.R. § 1.63 from a prior application may be filed naming fewer than all the named inventors in the prior application provided a request for deletion of an inventor accompanies the declaration copy. 37 C.F.R. § 1.53(b)(1), 37 C.F.R. § 1.63(d)(1)(iv), and 1.63(d)(2). Answer (B) is incorrect. Where a declaration under 37 C.F.R. § 1.63, signed by at least one of the inventors, has been submitted to the Office, submission of a second executed declaration under 37 C.F.R. § 1.63 setting forth a different inventive entity will not act to correct the inventorship absent a petition under 37 C.F.R. § 1.48(a). 37 C.F.R. § 1.48(f)(1). Answer (C) is incorrect. Inventorship cannot by corrected by adding an inventor through the filing of a continued prosecution application, rather a petition under 37 C.F.R. § 1.48 is required. 37 C.F.R. § 1.53(d)(4).

]]> By: sethz http://mypatentbar.com/2008/08/22/q-smith-and-jones-40238p/#comment-1416 sethz Wed, 03 Feb 2010 18:24:36 +0000 http://patentbar.wordpress.com/?p=689#comment-1416 201.03 (E8R4) In filing the continuing application under 37 CFR 1.53(b), a copy of an oath or declaration from the prior application can only be used where inventors are to be deleted (37 CFR 1.53(b)(1) and 37 CFR 1.63(d)(1)(ii)), but not where inventors are to be added. Where inventors are to be added, a newly executed oath or declaration must be submitted. See 37 CFR 1.63(d)(5). 201.03 (E8R4)
In filing the continuing application under 37 CFR 1.53(b), a copy of an oath or declaration from the prior application can only be used where inventors are to be deleted (37 CFR 1.53(b)(1) and 37 CFR 1.63(d)(1)(ii)), but not where inventors are to be added. Where inventors are to be added, a newly executed oath or declaration must be submitted. See 37 CFR 1.63(d)(5).

]]> By: Aparna http://mypatentbar.com/2008/08/22/q-smith-and-jones-40238p/#comment-1415 Aparna Tue, 29 Sep 2009 13:33:54 +0000 http://patentbar.wordpress.com/?p=689#comment-1415 After you file a continuing application, you can request that an inventor be deleted. See MPEP 201.03: Where the name of an inventor(s) is to be deleted, applicant can file a *>continuation or divisional(using a copy of the executed oath or declaration from the parent application)See 37 CFR 1.63(d)(2). If a continuing application is filed with a new executed oath or declaration properly naming the correct inventors, a request for deletion of the name(s) of the person(s) who are not inventors in the continuing application is not necessary.< Hope this helps! After you file a continuing application, you can request that an inventor be deleted. See MPEP 201.03:
Where the name of an inventor(s) is to be deleted, applicant can file a *>continuation or divisional(using a copy of the executed oath or declaration from the parent application)See 37 CFR 1.63(d)(2). If a continuing application is filed with a new executed oath or declaration properly naming the correct inventors, a request for deletion of the name(s) of the person(s) who are not inventors in the continuing application is not necessary.<
Hope this helps!

]]> By: Art Williams http://mypatentbar.com/2008/08/22/q-smith-and-jones-40238p/#comment-1414 Art Williams Wed, 23 Sep 2009 18:36:17 +0000 http://patentbar.wordpress.com/?p=689#comment-1414 That answer "D" is acceptable is counter intuitive for me, as I understand it to imply that an an inventor can be removed without his knowledge and signature. Is this right? Thanks very much, Art Williams That answer “D” is acceptable is counter intuitive for me, as I understand it to imply that an an inventor can be removed without his knowledge and signature. Is this right?

Thanks very much, Art Williams

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