Q) Mitch and Mac (10.00.23a/4.01.23a)

by patentbar on September 4, 2008 · 17 comments

in Exam Questions

23. Mitch and Mac are named inventors on an international application that is filed in the
USPTO Receiving Office, and designates the United States of America. Mac now indicates that
he will not sign the Request for the international application. Mitch wishes to proceed with the
Request and seeks the advice of their patent agent. Which of the following answers accords with
the provisions of the Patent Cooperation Treaty?
(A) Mitch’s agent should sign the Request and accompany it with a statement
indicating why it is believed that Mac refuses to proceed with the Request.
(B) Mitch should sign the request for himself and also sign on behalf of Mac.
(C) Mitch should sign the request and seek a court order to obtain Mac’s signature.
(D) Mitch should sign the Request and accompany it with a statement providing a
satisfactory explanation for the lack of Mac’s signature.
(E) Mitch should sign the Request and Mitch’s agent should sign on behalf of Mac,
since he continues to represent Mac.

23. ANSWER: (D) is the correct answer because the advice is consistent with 37 C.F.R. §
1.425. (A), (B), (C), and (E) are wrong because the advice provided is not consistent with 37
C.F.R. § 1.425. MPEP § 1820, p.1800-16.

{ 16 comments… read them below or add one }

1 patentbarNo Gravatar September 4, 2008 at 2:10 pm

Note that this is the same question as (4.01.23a) except the answers are in a different order.

April 2001 – 23. Mitch and Mac are named inventors on an international application that is filed in the
USPTO Receiving Office, and designates the United States of America. Mac now indicates that
he will not sign the Request for the international application. Mitch wishes to proceed with the
Request and seeks the advice of their patent agent. Which of the following answers accords with
the provisions of the Patent Cooperation Treaty?

(A) Mitch’s agent should sign the Request and accompany it with a statement
indicating why it is believed that Mac refuses to proceed with the Request.
(B) Mitch should sign the request for himself and also sign on behalf of Mac.
(C) Mitch should sign the request and seek a court order to obtain Mac’s signature.
(D) Mitch should sign the Request and Mitch’s agent should sign on behalf of Mac,
since he continues to represent Mac.
(E) Mitch should sign the Request and accompany it with a statement providing a
satisfactory explanation for the lack of Mac’s signature.

23. ANSWER: (E) is the most correct answer because the advice is consistent with PCT Rule
4/15(b) and 37 C.F.R. § 1.425. (A), (B), (C), and (D) are wrong because the advice provided is
not consistent with 37 C.F.R. § 1.425. MPEP § 1820, p.1800-16.

Reply

2 Big TexNo Gravatar November 18, 2009 at 6:39 pm

I would simply like to note here that these provisions have changed since this question was asked. It has been mentioned in the Exam Questions and Concepts section (see the reply to response 3 under Documents Requiring Signatures) that signatures on international applications might be an area that is tested in the current exam. Thus I will quote the relevant section from MPEP 1820 below:

“Pursuant to PCT Rule 4.15, the international application must be signed in Box No. X of the request by the applicant, or, where there are two or more applicants, by all of them. However, under PCT Rule 26.2bis, which is applicable to international applications having an international filing date on or after January 1, 2004, it is sufficient for purposes of PCT Article 14(1)(a)(i) that the application is signed by only one of the applicants. Thus, for international applications having an international filing date on or after January 1, 2004, the United States Receiving Office will not issue an invitation to applicants to furnish missing signatures where the request is signed by at least one of the applicants. Notwithstanding PCT Rule 26.2bis, any designated/elected office, in accordance with its national law, can still require confirmation of the international application by the signature of any applicant for such >designated51bis.1(a)(vi)<. Pursuant to 37 CFR 1.4(d), the request filed may be either an original, or a copy thereof.

The international application may be signed by an agent."

Thus Mitch can sign by himself or can have his agent sign. Neither have to submit a statement for Mac.

Reply

3 studierNo Gravatar December 8, 2010 at 6:28 pm

This repeat question is relevant to the point Tex has made.

2003 October (pm)

39. An international application is filed in the United States Receiving Office on
September 18, 2002. In accordance with the PCT and USPTO rules and the procedures set forth
in the MPEP, which of the following will result in the application not being accorded an
international filing date of September 18, 2002?
(A) The description and claims are in German.
(B) The Request is signed by a registered attorney rather than the applicant.
(C) The sole applicant is a Canadian resident and national.
(D) The application does not contain a claim.
(E) The application is not accompanied by any fees.

39. ANSWER: The correct answer is (D). PCT Article 11(1)(iii)(e); 35 U.S.C. § 363; 37
CFR § 1.431(a); MPEP § 1810. Under PCT Article 11(1)(iii)(e) to be accorded an international
filing date an application must have “a part which on the face of it appears to be a claim or
claims.” (A) and (C) are incorrect. Under PCT Rule 19.4 if an application is not filed in the
prescribed language or is filed by an applicant for which the Office to which the application is
submitted is not competent, such application will be forwarded to the International Bureau which
will act as receiving Office and accord a filing date as of the date of receipt in the USPTO. (B) is
not correct. The Request may be signed by an attorney or agent who is registered to practice
before the USPTO. In such a situation the application will be accorded an international filing
date of September 18, 2002, and under PCT Article 14 an invitation to correct the defect will be
mailed. See MPEP § 1805, paragraph 7; MPEP 1810, under the heading “The ‘International
Filing Date,” second paragraph. (E) is also incorrect. Under PCT Rules 14.1(c), 15.4(a), 16.1(f),
and 16bis.1 the fees may be paid at a date later than the original receipt date.

Reply

4 GoJacketsNo Gravatar December 11, 2009 at 3:05 pm

So let me see if I’m understanding this right…

If the app has filing date pre-1/1/2004, the rule is the inventor (NOT his agent) must sign and for each non-signing inventor, he has to have a statement explaining the absence of their signature. Thus, because the above Q was from a pre-1/1/2004 test, this was the answer,

BUT…..

If the app has a filing date of 1/1/2004 or after, the rule is the inventor (OR his agent) can sign and there is no need for a statement regarding the absent inventors, but any RO can require confirmation in the form of the non-signing inventor’s signature?

is this right?

Reply

5 SolNo Gravatar March 28, 2012 at 12:37 am

I think,

before 1/1/2004, signed by
all applicants
or some applicants and a statement
or agent (together with a separate POW or submit the POW later)
or no signature at all and submit signature later

on or after 1/1/2004, signed by
all applicants
or at least one applicant
or agent (no need of a separate POW)
or no signature at all and submit siganture later

In one word, the rules are non-sense. Require something for the filing date but you can submit it later.

Based on 1820-1821 under the heading “SIGNATURE OF APPLICANT OR AGENT”

Reply

6 testing testing 1...2...3..No Gravatar June 6, 2010 at 8:05 pm

I understand that the rules may have changed but the exam is still testing the rules as of MPEP 8r4 correct? so our answers should fit with the rules laid out there rather than the current updated rules? or not? any ideas?

Reply

7 dotNo Gravatar August 1, 2010 at 3:42 pm

As to comment #4 above,

The language quoted by Big Tex is from MPEP ed. 8 rev 4.

Reply

8 StephenNo Gravatar August 13, 2010 at 5:07 pm

I can’t find a revision 4 of section 1800 anywhere. Even the USPTO only lists revision 3 of 1800 as part of the “4th edition” MPEP. I’m just going to assume the official answer above is still correct because according to the 4th Edition MPEP I have a signature + satisfactory explanation is still required.

Reply

9 maggieNo Gravatar October 31, 2011 at 8:52 pm

Official answer is still correct under 1820 PCT Rule 4 Signature, Request Content

4.15(b)
(b)Where two or more applicants file an international
application which designates a State whose national law requires
that national applications be filed by the inventor and where an
applicant for that designated State who is an inventor refused to
sign the request or could not be found or reached after diligent
effort, the request need not be signed by that applicant if it is
signed by at least one applicant and a statement is furnished
explaining, to the satisfaction of the receiving Office, the lack of
the signature concerned.

Reply

10 HCNo Gravatar August 31, 2010 at 8:49 pm

Stephen is right.

Reply

11 PatentGrrlNo Gravatar July 2, 2012 at 7:43 pm

I doubt this is still being tested; however, for clarity, 1821:

“APPLICANT INVENTOR UNAVAILABLE OR UNWILLING TO SIGN THE INTERNATIONAL APPLICATION
PCT Rule 4.15(b) provides that, where an applicant inventor for the designation of a State whose national law requires that national applications be filed by the inventor (the United States of America is the only Contracting State to have such a requirement in its national law) refused to sign the request or could not be found or reached after diligent effort, the request need not be signed by that applicant inventor if it is signed by at least one applicant and a statement is furnished explaining, to the satisfaction of the receiving Office, the lack of the signature concerned. The significance of PCT Rule 4.15(b) has been greatly diminished with respect to international applications having an international filing date on or after January 1, 2004, in light of * PCT Rule 26.2bis(a), which provides that where there is more than one applicant, the signature requirements for purposes of PCT Article 14(1)(a)(i) will be considered to have been satisfied if the request is signed by one of the applicants.”

Reply

12 chemEgirlNo Gravatar August 18, 2012 at 2:48 pm

so is the “statement from 4.15(b) no longer required as of 1/1/04 if filed by (1) applicant or agent?

Reply

13 ENo Gravatar June 10, 2013 at 12:25 pm

Regarding PatentGrrl’s reference: In MPEP E8R9, it’s under 1820 (not 1821) under the same heading PatentGrrl states above.

Reply

14 KSRBilskiNo Gravatar January 26, 2014 at 4:53 pm

That one of the joint inventors refuses to sign a Request is totally different from that all inventors agree to file the Request.

Reply

15 geoffNo Gravatar March 25, 2014 at 6:58 pm

Yes it is

Reply

16 mmmaryNo Gravatar June 22, 2015 at 9:08 am

practitioner can sign, without requirements to the contrary in the Statute(or Rules as well?), see below

37 C.F.R. 11.18 Signature and certificate for correspondence filed in the Office.

(a) For all documents filed in the Office in patent, trademark, and other non-patent matters, and all documents filed with a hearing officer in a disciplinary proceeding, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Office must bear a signature, personally signed by such practitioner, in compliance with § 1.4(d)(1) of this subchapter.

Reply

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