Q) MEGACORP (10.01.5a)

5. You have agreed to represent an independent inventor in connection with a patent
application that was filed in the USPTO by the inventor on a pro se basis. As filed, the
application included a detailed written description that, when viewed together with four
accompanying color photographs, enabled one of ordinary skill in the pertinent art to make and
use the invention. The application was filed with an inventor’s declaration in compliance with
37 CFR 1.63, a small entity statement (independent inventor) under 37 CFR 1.27, and all
necessary small entity filing fees. MEGACORP, a very large multi- national corporation,
licensed rights in the invention after the application was filed.
You have been asked to suggest steps to remove any formal objections that can be expected from
the patent examiner, without incurring unnecessary government fees. You determine that the
first color photograph is the only practical medium by which to disclose certain aspects of the
claimed invention, but that the substance of the remaining photographs could readily be
illustrated through ordinary ink drawings. You correctly recall that the Office announced in the
Official Gazette in May 2001 (1246 OG 106) that it is sua sponte waiving 37 CFR 1.84(a)(2)(iii),
and is no longer requiring a black and white photocopy of any color drawing or color
photograph. Which of the following represents the most reasonable advice to the independent
inventor?
(A) Submit a request for approval of drawing changes wherein the first photograph is
labeled “Figure 1” and the remaining photographs are cancelled in favor of
corresponding ink drawings labeled Figures 2 through 4; and immediately
withdraw the claim for small entity status because of the license to MEGACORP.
(B) Submit a request for approval of drawing changes wherein the first photograph is
labeled “Figure 1” and the remaining photographs are cancelled in favor of
corresponding ink drawings labeled Figures 2 through 4; and submit a petition for
acceptance of Figure 1 in the form of a color photograph along with three sets of
the color photograph, a proposed amendment to insert language concerning the
color photograph as the first paragraph of the specification and the required
petition fee. The photographs must be sufficient quality that all details in the
photographs are reproducible in a printed patent.
(C) Submit a request for approval of drawing changes wherein the first photograph is
labeled “Figure 1” and the remaining photographs are cancelled in favor of
corresponding ink drawings labeled Figures 2 through 4.
(D) Immediately withdraw the claim for small entity status because of the license to
MEGACORP and submit to the USPTO the difference between the small entity
filing fee and the large entity filing fee.
(E) File a rewritten application as a continuation application including a color
photograph as Figure 1, ink drawings as Figures 2-4, a new inventor’s declaration
and a small entity filing fee.

5. ANSWER: The most correct answer is (B). 37 CFR 1.84(a)(2), MPEP § 608.02; Notice
(Interim Waiver of Parts of 37 CFR 1.84 and 1.165, and Delay in the Enforcement of the Change
in 37 CFR 1.84(e) to No Longer Permit Mounting of Photographs) in Official Gazette May 22,
2001, 1246 OG 106 (“In summary, the USPTO has sua sponte waived 37 CFR 1.84(a)(2)(iii) and
1.165(b) and is no longer requiring a black and white photocopy of any color drawing or
photograph”). (A) is wrong because a petition under 37 CFR 1.84 is required to avoid an
objection to the color photographs. Also, since small entity status was properly established at the
time of filing, the inventor is entitled to maintain small entity status until any issue fee is due. 37
CFR 1.27(g)(1). (C) – (E) are also wrong because they do not provide for the required petition
under 37 CFR 1.84. In (D), the change in small entity status after the application was filed does
not require the inventor to retroactively pay a large entity filing fee. Additionally, (E) is wrong
because the inventor would be required to file a large entity filing fee and a continuation
application therefore does not achieve the stated goal of avoiding unnecessary government fees.