Recent test takers report question #36 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.
36. Which of the following is not a policy underlying the public use bar of 35 USC 102(b)?
(A) Discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available.
(B) Favoring the prompt and widespread disclosure of inventions.
(C) Allowing the inventor(s) a reasonable amount of time following sales activity to determine the potential economic value of a patent.
(D) Increasing the economic value of a patent by extending the effective term of the patent up to one year.
(E) Prohibiting the inventor(s) from commercially exploiting the invention for a period greater than the statutorily prescribed time.
ANSWER: (D) is the most correct answer. Extending patent term is not a policy underlying any section of 35 U.S.C. ยง 102. Answers (A), (B), (C) and (E) do state policies underlying the public use bar. Lough v. Brunswick Corp., 86 F.3d 1113, 39 USPQ2d 1100 (Fed. Cir. 1996).
I can’t find the answer choice C reference anywhere in the MPEP. If anyone ends up finding it please post where. It explicitly states A, B, and E.
The following excerpts are from Tone Bros. v. Sysco Corp., 28 F.3d 1192 (Fed.Cir.1994); which is cited in Lough v. Brunswick Corp., 86 F.3d 1113 (Fed. Cir. 1996).
Here is the support (almost verbatim) for the four “correct” policies:
“We have enumerated the policies underlying section 102(b), … as follows: (1) discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available; (2) favoring the prompt and widespread disclosure of inventions; (3) allowing the inventor a reasonable amount of time following sales activity to determine the potential economic value of a patent; and (4) prohibiting the inventor from commercially exploiting the invention for a period greater than the statutorily prescribed time.”
Here is the support against the “non – policy”
“For example, the display … appears to have been for a purpose directly contrary to the public use bar policy of preventing an extension of the patent term. ”
Hope this helps.
I cannot find it either, however, knowing that the applicant’s own invention on the market for over 1 year can be referenced as prior art, it’s safe to say that the policy allows sufficient time to determine economic success, ie, you can put a widget for sale, evaluate it’s success over a 1 year period, and then decide whether a patent is worth pursuing.
The PTO is never concerned about increasing the economic viability of an invention. To be so concerned would be a major conflict of interest.
Just some words for the wise… don’t expect to be able to look everything up in the MPEP. A lot of the exam is knowing the basics of the law and applying the logic to given fact patterns. Just go with common sense on this question and trust your gut. There’s no way a 102(b) statutory bar would extend a patent term by 1 year… just doesn’t make sense. Good luck to all.