Q) Reduction to Practice (4.02.1a)

by admin on April 9, 2010 · 4 comments

in Exam Questions

Question #1 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.

1. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following statements is most correct?
(A) The same evidence sufficient to establish a constructive reduction to practice is necessarily also sufficient to establish actual reduction to practice.
(B) Proof of constructive reduction to practice does not require sufficient disclosure to satisfy the “how to use” and “how to make” requirements of 35 USC 112, first paragraph.
(C) A process is reduced to actual practice when it is successfully performed.
(D) The diligence of 35 USC 102(g) requires an inventor to drop all other work and concentrate on the particular invention.
(E) The diligence of 35 USC 102(g) does not impose on a registered practitioner any need for diligence in preparing and filing a patent application inasmuch as such the practitioner’s acts do not inure to the benefit of the inventor.


ANSWER: (C) is the most correct. Corona v. Dovan 273 U.S. 692, 1928 CD 252 (1928); MPEP § 2138.05 under the heading “Requirements To Establish Actual Reduction To Practice.” (A) is incorrect. MPEP § 2138.05, under the heading “Requirements To Establish Actual Reduction To Practice.” The same evidence sufficient to establish a constructive reduction to practice is not necessarily sufficient to establish actual reduction to practice, which requires a showing of the invention in a physical or tangible form containing every element of the count. Wetmore v. Quick, 536 F.2d 937, 942 190 USPQ 223 227 (CCPA 1976). (B) is incorrect. MPEP § 2138.05, under the heading “Constructive Reduction To Practice Requires Compliance With 35 U.S.C. 112, First Paragraph.” Kawai v. Metlesics, 489 F.2d 880, 886, 178 USPQ 158, 163 (CCPA 1973). (D) is incorrect. Keizer v. Bradley, 270 F.2d 396, 397, 123 USPQ 215, 216 (CCPA 1959) (the diligence of 35 U.S.C. § 102(g) does not require “an inventor or his attorney to drop all other work and concentrate on the particular invention involved”); MPEP § 2138.06. (E) is incorrect. The diligence of a practitioner in preparing and filing an application inures to the benefit of the inventor. See MPEP § 2138.06, under the heading “Diligence Required In Preparing And Filing Patent Application.” Haskell v. Coleburne, 671 F.2d 1362, 213 USPQ 192,195 (CCPA 1982) (six days to execute and file application was acceptable).

{ 4 comments… read them below or add one }

1 AustinNo Gravatar April 7, 2011 at 11:38 am

Corona no longer exists in MPEP 2138.05. This is the new precedent, same answer though.

““In an interference proceeding, a party seeking to
establish an actual reduction to practice must satisfy a
two-prong test: (1) the party constructed an embodi-
ment or performed a process that met every element
of the interference count, and (2) the embodiment or
process operated for its intended purpose.” Eaton v.
Evans” MPEP 2138.05 (II)

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2 BrianNo Gravatar August 22, 2011 at 1:37 pm

While Corona no longer exists, the 3rd paragraph of 2138.05 II says:

Birmingham v. Randall, 171 F.2d 957, 80 USPQ 371, 372 (CCPA 1948) (To establish an actual reduction to practice of an invention directed to a method of making a product, it is not enough to show that the method was performed. “[S]uch an invention is not reduced to practice until it is established that the product made by the process is satisfactory, and [ ] this may require successful testing of the product.”)

Doesn’t this contradict answer (C)?

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3 RobbieNo Gravatar September 3, 2011 at 6:28 pm

Brian, I don’t believe it contradicts (C) because in (C) it specifically says “A process is reduced to actual practice when it is successfully performed.” – I think the key word in answer choice (C) is “successfully.”

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4 mayteaNo Gravatar September 1, 2015 at 4:40 am

Test

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