Recent test takers report question #45 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.
45. Al files an application for a patent. After the Notice of Allowance is mailed and the issue fee has been paid Al discovers a prior art reference which is material to patentability. What should Al do in accordance with the USPTO rules and the procedures set forth in the MPEP?
(A) Al should file a prior art statement under 37 CFR 1.501 that will be placed in the patent file upon issuance of the application as a patent.
(B) Since the issue fee has been paid, Al no longer has a duty to disclose to the Office material prior art. He is under no obligation to submit the prior art reference to the Office.
(C) Since the issue fee has been paid, it is too late to have the examiner consider the reference in this application. Al should file a continuation application to have the reference considered and allow the original patent application to issue as a patent.
(D) Al should file a petition to have the application withdrawn from issuance, citing the finding of additional material prior art as the reason for withdrawal. A continuation application should also be filed with an information disclosure statement containing the reference in order to have the reference considered.
(E) Al should file an amendment under 37 CFR. 1.312 deleting all of the claims which are unpatentable over the reference since an amendment deleting claims is entitled to entry as a matter of right.
ANSWER: (D) is the most correct answer. See 37 CFR § 1.313(b); MPEP §§ 609, subpart (B)(4) and 1308. After payment of the issue fee it is impractical for the Office to consider any information disclosures. As to (A), a prior art statement is applicable only to patent, not application, files. 37 CFR § 1.501. As to (B), duty of disclosure continues until the patent is issued. As to (C), the patent should not be allowed to issue since it may contain invalid claims. As to (E) no amendment is entitled to entry after payment of the issue fee. 37 CFR. § 1.312(b).
609.04(b) IV:
IDS filed after the payment of the issue fee in an application will not be considered but will be merely placed in the application file. The application may be withdrawn from issue at this point, pursuant to 37 CFR 1.313 (c)(2) or 1.313(c)(3) so that the info can be considered in the application upon the filing of a RCE under 37 CFR 1.114 or in a continuing application filed under 37 CFR 1.53(b).