Q) ABC and XYZ Corps. – Appeal (10.00.2a)

by patentbar on September 4, 2008 · 11 comments

in Exam Questions

2. On December 31, 1998, Sam Practitioner files a notice of appeal in a patent application
assigned to ABC Corp. after the examiner has rejected all of the claims on prior art. Within two
months he sends in his appeal brief and three months after the examiner’s answer is filed the case
is sent to the Board of Patent Appeals and Interferences (Board). Subsequently, while reading
the Official Gazette Sam notices that a patent issued to XYZ Corp. on October 26, 1999,
contains claims which read on an unclaimed embodiment in the ABC application, which is an
invention that is not within the scope of the invention claimed in the ABC application. The ABC
application was filed one month after the issuance of the XYZ patent. Upon learning of the XYZ
patent, ABC Corp. wants to provoke an interference by adding additional claims to its
application relating to the previously unclaimed embodiment. It is October 18, 2000 and Sam
comes to you for advice. Which of the following is the best and correct course of action?
(A) Since the ABC application is at the Board of Patent Appeals and Interferences
already, Sam need only request that the case be transferred to the Interference part
of the Board where an interference can be declared between the ABC application
and the XYZ patent.
(B) Sam should file an amendment adding the claims copied from the XYZ patent and
the Board is required to enter the amendment.
(C) Sam should promptly file an amendment containing the claims copied from the
XYZ patent and request entry. If the Board declines to enter the amendment, Sam
should file a separate, continuation application no later than October 26, 2000,
containing the claims copied from the XYZ patent as well as claims previously
appealed, and then, to avoid the rendering of a decision of the Board, he should
promptly inform the clerk of the Board in writing that they have decided to refile
and abandon the application containing an appeal waiting a decision.
(D) Sam should file an amendment containing the claims copied from the XYZ patent
and ask that the interference between the ABC application and the XYZ patent be
considered while the case is at the Board.
(E) Sam should wait until the appeal is decided before filing an amendment to
incorporate claims copied from the XYZ patent and to provoke an interference.
There is no benefit to filing new claims since only allowable claims will be
considered during an interference.

2. ANSWER: (C). 35 U.S.C. § 135(b) requires that the claim be made in the ABC patent
within one year of the issuance of the XYZ patent. MPEP § 1211.01 states that there is no
obligation resting on the Board to consider new or amended claims submitted while the case is
on appeal. MPEP § 1210 states that when an application is refiled, the Board should be promptly
notified. Failure to notify the Board may result in the Board’s refusing an otherwise proper
request to vacate its decision. See also MPEP § 2307.03. (E) is incorrect as 35 U.S.C. § 135(b)
requires the claim to be made within one year. (D) is incorrect because the Board may refuse the
amendment and because the claims have not yet been determined to be allowable. Note that the
XYZ patent was filed before the ABC application and is therefore prior art under 35 U.S.C. §
102(e). See MPEP § 2306 and 2307.02. (A) is incorrect because the claims are not in the
application, no interference could be declared and such a “transfer” is not feasible. (B) is
incorrect because the Board is not required to enter the amendment and Sam may forfeit his
opportunity to present the claims within one year if he does not act promptly (as in answer (C)).

{ 11 comments… read them below or add one }

1 LostNo Gravatar March 13, 2011 at 8:46 pm

Something with the timeline of the question here seems a bit off. If ABC files a notice of appeal on Dec-21-1998 that means they originally applied before that date. Now if XYZ patent was issued on Oct-22-1999 how come “The ABC application was filed one month after the issuance of the XYZ patent.” ?

Reply

2 SominaintrightNo Gravatar May 26, 2011 at 7:29 pm

I agree Lost. Something isn’t right about this timeline. I checked the actual exam and it reads the same way. I hope I don’t see one like this on the real thing or my head is going to explode :) Even stil choice C looks pretty appealing…get it…appealing hah my first patent joke

Reply

3 KFNo Gravatar March 17, 2012 at 11:51 am

I love a good patent joke! Nice one!

Reply

4 SominaintrightNo Gravatar May 26, 2011 at 7:45 pm

Read III in the following link for a quick explanation of answer C.

http://www.bakerbotts.com/file_upload/HeymanArticle.htm

Reply

5 FredNo Gravatar January 19, 2012 at 8:11 pm

Thanks for the nice summary link! Very helpful.

Reply

6 mimiNo Gravatar September 9, 2012 at 2:50 am

I’m confusing regarding answer (C). Why the continuation application is filed no later than October 26, 2000? I think CA may be filed during conpendcy. Thus, CA in this case may be filed before a decision of BPAI.
Am I wrong? please correct me..;-)

Thank you for your help.

Reply

7 mimiNo Gravatar September 9, 2012 at 3:30 am

I got the answer of my question in the above nice link of Sominaintright.

The patent application(subject matter added) used to provoke the interference must be filed within one year of the issue date for the patent, or within one year of the publication date for the published patent application, with a petition.
In addition, if the filing date of the patent application being used to provoke the interference is more than three months after the effective filing date of the issued patent, the petition must also include a detailed explanation of why the patent application is entitled to priority.

Nontheless, Im confusing WHY (within one year?)……..

Reply

8 zNo Gravatar March 11, 2013 at 4:54 pm

mimi, answer C is confusing because it suggests the “one year” is a time limit on continuations. The “one year” has nothing to do with continuations, it is a time limit on when you can attempt to claim the same thing as what is already in a patent or published application. (35 USC 135(b)).

Reply

9 AkumaNo Gravatar March 11, 2013 at 8:13 pm

Sorry for the lame and unrelated post. I just took the exam recently and want to share the new questions that are related to the new AIPA stuff… but I have no idea how to register for the forum and how to post thread @@… can someone tell me?

Reply

10 AkumaNo Gravatar March 11, 2013 at 8:35 pm

No registration needed. Just leave a comment and post the questions you saw in the exam.

Reply

11 ZNo Gravatar March 31, 2013 at 1:09 pm

Got this 3/30/13.

Reply

Leave a Comment

Previous post:

Next post: