Question #36 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.
36. Mike and Alice, who are not related, are shipwrecked on a heretofore uninhabited and undiscovered island in the middle of the Atlantic Ocean. In order to signal for help, Mike invents a signaling device using bamboo shoots. Alice witnesses but does not assist in any way in the development of the invention. The signaling device works and a helicopter comes and rescues Alice. However, Mike remains on the island due to overcrowding on the helicopter. Unfavorable weather conditions have prevented Mike’s rescue to date. Alice comes to you, a registered patent practitioner, to file an application for a patent and offers to pay you in advance. Which of the following, in accordance with the USPTO rules and the procedures set forth in the MPEP, is true?
(A) Since Mike invented the invention, Alice cannot properly file an application for a patent in her name even though Mike is unavailable.
(B) Since Mike is unavailable, you may properly file an application for a patent without his consent. You can accept the money from Alice as payment for the application.
(C) Since Mike is not available and cannot be reached, Alice may properly sign the declaration on his behalf since she has witnessed the invention and knows how to make and use it.
(D) Alice should file an application in her name since she has witnessed the invention and knows how to make and use it. Subsequently, when Mike becomes available, the inventorship may be changed to the correct inventorship.
(E) Even though Mike and Alice are not related, Alice may properly file an application on Mike’s behalf.
ANSWER: (A) is the most correct answer. (A) is true since only the inventor may file for a patent. 35 U.S.C. § 101. As to answers (C) and (E), since Alice is not a joint inventor and she does not have sufficient proprietary interest in the invention, she may not file a patent application on Mike’s behalf. 35 U.S.C. § 116; 37 CFR § 1.47(b). As to (B), you ordinarily may not accept payment from someone other than your client. 37 CFR § 10.68(a)(1). As to (D), inventorship cannot be changed when there is deceptive intent.
Got this right when doing the practice exam but I don’t agree with the explanation given…totally disagree with ” only the inventor may file for a patent. 35 U.S.C. § 101.” because 409.03b says: “Filing under 37 CFR 1.47(b) and 35 U.S.C. 118 is permitted only when no inventor is available to make application. These provisions allow a “person” with a demonstrated proprietary interest to make application “on behalf of and as agent for” an inventor who “cannot be found or reached after diligent effort…”
I’d say the answer is A simply because none of the provisions laid out in 409.03b are fulfilled in the scenario given. However, to say that ONLY the inventor may file for a patent simply is not true…any thoughts?
Alice doesn’t truly have a “proprietary interest.” According to 409.03(f) – A proprietary interest obtained OTHER than by assignment or agreement to assign may be demonstrated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in that jurisdiction award title of the invention to the 37 CFR 1.47(b) applicant.
The MPEP appears to imply the only way to really establish a proprietary interest outside of an assignment, is if you have some sort of legal documentation. Even if that’s not the case, the fact pattern never really gave a reason for Alice’s interest in obtaining a patent so I guess you could just assume she doesn’t have a proprietary interest. I see your point though, just throwing my thoughts out there.
Got this. 06.30.2012
I share Lance’s opinion, and frustration with this question. On the exam, I’ll just have to cut answer A) some grace and choose it.