Q) Public Access (10.03.22a)

by admin on April 9, 2010 · 5 comments

in Exam Questions

Test takers report a #22 from the October 2003 (AM) patent bar exam is in the current question pool.

22. Application Number A was published as U.S. Patent Application Publication Number B. A member of the public reviewed the listing of the file contents of the application on the Patent Application Information Retrieval system and determined that the application was still pending, that a final Office action was mailed, and that the application file is in the Technology Center where it is being examined. The member of the public does not have a power to inspect, but would like a copy of the final Office action as well as the other papers in the patent application. In accordance with the patent laws, rules and procedures as related in the MPEP, can a copy of these papers be obtained by the member of the public, and if so, how can the copy be obtained?
(A) No, a copy cannot be obtained because patent applications are maintained in confidence pursuant to 35 USC 122(a).
(B) No, a copy cannot be obtained because the patent application is still pending.
(C) Yes, a member of the public can go to the Technology Center and ask for the file for copying at a public photocopier.
(D) Yes, the member of the public can complete a “Request for Access to an Application Under 37 CFR 1.14(e)” and, without payment of a fee, order the file from the File Information Unit. Upon the Unit’s receipt of the application, the member of the public can use a public photocopier to make a copy.
(E) Yes, the member of the public can order a copy from the Office of Public Records, with a written request and payment of the appropriate fee.

ANSWER: (E) is the most correct answer. MPEP § 103, under the heading “Published U.S. Patent Applications” states that “If a patent application has been published pursuant to 35 U.S.C. 122(b), then a copy of the specification, drawings, and all papers relating to the file of that published application (whether abandoned or pending) may be provided to any person upon written request and payment of the fee.” (A), and (B) are not correct. 37 CFR § 1.14(c)(2). Once an application has been published, a copy is available to the public upon written request and payment of a fee. (C) and (D) are not correct. As stated in MPEP § 103, under the heading “Published U.S. Patent Applications,” if the published patent application is pending, the application file itself will not be available to the public for inspection.”

1 KforsytheNo Gravatar October 18, 2011 at 9:13 pm

So in this situation the patent is published AND pending, according to the facts, so how does the last sentence of the explanation reconcile with the answer? Wouldn’t all of the documents requested be part of the application file itself, and if it is pending as per the fact pattern, not be available for public inspection? These Qs about access always throw me off. What am I missing? Suddenly I don’t understand how a published patent application can be pending…..

2 JeremyNo Gravatar October 18, 2011 at 11:29 pm

Pending doesn’t mean not accessible to the public: an application is normally published in the U.S. at 18 months, so it can be both PENDING and PUBLISHED at the same time.

Just remember: if it is not published, then it is not available to the public. Published, then available. Something can be both pending and published, as most applications normally are, since their pendancy currently takes years in the U.S.

3 SolNo Gravatar April 2, 2012 at 7:52 pm

Also, for published pending applications, you can get a copy but not a chance to check the paper file itself. for published abandoned applications, you can get a copy and/or check the paper file itself.

4 GDBNo Gravatar April 13, 2012 at 4:25 pm

As Sol said, there is a distinction between being able to obtain a copy of the file through request and payment of fee versus actually getting physical access to the paper file, going through it and making photocopies. You can get a copy of the file as long as it is published but if it is still pending i.e. hasn’t issued yet, then you can’t get personal access in order to make a copy.

5 MLNo Gravatar May 5, 2014 at 10:02 am

An application can be published and pending, no doubt. For example, as an alternate to requesting a paper copy, one could simply look up the published application on PAIR and download the relative portion of the file, such as an Office Action or what-not.

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