10. Sally, an employee of Ted, conceived of and reduced to practice a spot remover for Ted
on May 1, 1998. Sally’s spot remover was made from water, chlorine, and lemon juice. On June
2, 1998, Sally filed a nonprovisional U.S. patent application for the spot remover, and assigned
the entire rights in the application to Ted. Sally’s assignment was not recorded in the USPTO,
but was referenced in her application. On June 12, 1999, Jane, also an employee of Ted, having
no knowledge of Sally’s spot remover, conceived of and reduced to practice a spot remover for
Ted. Jane’s spot remover was made from carbonated water, chlorine, and lemon juice. On May
25, 1999, the USPTO granted Sally a patent. On November 5, 1998, Jane filed a nonprovisional
U.S. patent application for the spot remover. As noted in Jane’s application, Jane assigned the
entire rights in her application to Ted. Jane’s assignment was duly recorded in the USPTO. The
examiner mailed a non-final Office action rejection under 35 U.S.C. § 103 to Jane in March
2001, citing the patent to Sally as prior art. Which of the following, if timely filed by Jane,
would be effective in disqualifying Sally’s patent?
I. An affidavit by Jane stating that the application files of Sally and Jane both refer to
assignments to Ted.
II. A copy of Sally’s assignment to Ted, clearly indicating that common ownership of Jane’s
and Sally’s inventions existed at the time Jane’s invention was made.
III. An affidavit by Ted stating sufficient facts to show that there is common ownership of
the Sally and Jane inventions and that common ownership existed at the time the Jane
invention was made.
(D) II and III.
(E) None of the above.
10. ANSWER: All answers accepted.