Q) Apex and Pinnacle Mfg. Corps. (10.02.47p)

by Lizzie on April 28, 2009 · 4 comments

in Exam Concepts, Exam Questions

47. A registered practitioner’s client, Apex Mfg. Corporation, bought the entire assets of Pinnacle Mfg. Corporation. Pinnacle gave Apex a list of its patent applications but did not maintain records of the patent assignments. Apex wishes to know which of the assignment documents, if any, of the pending patent applications in Pinnacle’s patent portfolio were never recorded. In accordance with the MPEP, which of the following actions could the practitioner rely upon to most expeditiously answer this question?

(A) Request certified copies of the patent applications as filed.

(B) Request certified copies of the assignment documents of record of the patent applications.

(C) Request certified copies of the patent applications as filed accompanied by the fees set forth in 37 CFR 1.19(b)(1)(i).

(D) Request certified copies of the patent applications as filed accompanied by the fees set forth in 37 CFR 1.19(b)(1)(ii).

(E) Request certified copies of the assignment documents of record of the patent applications accompanied by the fees set forth in 37 CFR 1.19(b)(5).

 

47. ANSWER: (E) is correct and (A), (B), (C) and (D) are incorrect. As MPEP § 303 states: “Certified copies of patent applications as filed do not include an indication of assignment documents. Applicants desiring an indication of assignment documents of record should request separately certified copies of assignment documents and submit the fees required by 37 C.F.R. § 1.19.” (B) is incorrect because the fee required by 37 C.F.R. § 1.19(b)(5) has not been paid for the requested certified copy of assignment records.

{ 4 comments… read them below or add one }

1 C@tD@VincyNo Gravatar June 19, 2009 at 10:11 am

there’s no par 37 CFR 1.19(b)(5) in mpep
???

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2 CWNo Gravatar June 19, 2009 at 10:34 am

There was in E8R0. The law and the MPEP are not static. If you can’t find the support in Rev 4, you should look to the edition that was used during the test. you can get them through the archives here.

http://www.uspto.gov/web/offices/pac/mpep/old/index.htm

It is now 37 CFR 1.19(b)(4). Regardless, E would be the only correct choice, because it is the only one that includes fees, and a request for the assignment documents. You need to know that a fee is required, and that the assignment documents are separate from the patent application.

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3 Number_27No Gravatar December 20, 2010 at 4:20 pm

Why doesn;t MPEP 301.01(b) apply making B the correct choice?:

(b) Assignment records, digests, and indexes relating to any pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14, are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of the applicant or applicant’s assignee or patent attorney or patent agent or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper conduct of business before the Office or as provided in this part.

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4 Recent JDNo Gravatar June 8, 2011 at 5:47 pm

Number27: your quote is actually from 37 CFR 1.12. At any rate, 1.11 as well as 1.14 both mention the payment of fees to access the records (and refer you to 1.19)

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