Q) 35 USC 119(a) (10.02.1p)

by Lizzie on April 28, 2009 · 3 comments

in Exam Concepts, Exam Questions

1. Which of the following is not in accordance with the provisions of the MPEP?

(A) Where joint inventors are named, the examiner should not inquire of the patent applicant concerning the inventors and the invention dates for the subject matter of the various claims until it becomes necessary to do so in order to properly examine the application.

(B) Under 35 USC 119(a), the foreign priority benefit may be claimed to any foreign application that names a U.S. inventor as long as the U.S. named inventor was the inventor of the foreign application invention and 35 USC 119(a)-(d) requirements are met.

(C) Where two or more foreign applications are combined in a single U.S. application, to take advantage of the changes to 35 USC 103 or 35 USC 116, the U.S. application may claim benefit under 35 USC 119(a) to each of the foreign applications provided all the requirements of 35 USC 119(a)-(d) are met.

(D) One of the conditions for benefit under 35 USC 119(a) is that the foreign application must be for the same or a nonobvious improvement of the invention described in the United States application.

(E) If a foreign application for which priority is being claimed under 35 USC 119 is filed in a country which does not afford similar privileges in the case of applications filed in the United States or to citizens of the United States and the foreign country is not a WTO member country, any claim for the foreign priority thereto by a U.S. application will not be effective.

1. ANSWER: (D) is the best answer as the inventions must be the same in the foreign and U.S. applications. As to (A) through (C), see MPEP § 605.07 at p. 600-49, right column. As to (E), see 35 U.S.C. § 119 which provides that the previously filed application must have been filed in a country that affords similar privileges in the case of applications filed in the United States or to citizens of the United States or in a WTO member country.

{ 3 comments… read them below or add one }

1 triedandtestedNo Gravatar July 20, 2009 at 7:50 pm

Specifically for (A), MPEP 605.07 says:

If an application is filed with joint inventors, the examiner should assume that the subject matter of the various claims was commonly owned at the time the inventions covered therein were made, unless there is evidence to the contrary.

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2 HifidelityNo Gravatar March 27, 2012 at 2:09 pm

Option B threw me off a bit, as there is no requirement that the applicant’s be U.S. Citizens. However, after reading the options w/o the 3 min time constraints of the exam, I see that option B is basically requiring that the Inventors be the SAME for both the foreign and U.S. applications.

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3 SolNo Gravatar March 31, 2012 at 1:01 am

the U.S. named inventor means an inventor named in a US pat app

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