Q) Jack and Jill in Vietnam (4.01.40a)

40. In June 1998, Jack and Jill, a married couple, are vacationing in Vietnam (not a WTO
country) when they encounter a man selling bamboo knives for cleaning fish. The particular
curvature of the bamboo both lends support to the knife to prevent it from bending and breaking
and facilitates cleaning inside the fish. Jill takes a picture of Jack with the knife cleaning the
fish. Subsequently, in November 1998, when Jack returns to the United States he begins to make
and sell an identical knife to the one seen in Vietnam. In July 1999, he files a patent application
claiming the nearly identical knife. Jack discloses no prior art during the prosecution of his
application and fails to mention the knife he saw in Vietnam. The examiner finds no prior art
similar to the claimed knife, and Jack is awarded a patent in December 2000. Meanwhile, Jill
divorces Jack, and associates with Sam. Unfortunately, Sam is penniless. To raise cash, Sam
and Jill begin selling a knife identical to the one Jack produces, only Sam and Jill make their
knife out of plastic. The knives of Sam and Jill sell like hotcakes. Jack sues for infringement.
Jill and Sam come to you for advice. Which of the following is not true?
(A) Jack is entitled to patent protection since Vietnam is not a WTO country and
evidence of the Vietnamese knife cannot be used against him to reject his patent
claims.
(B) Jack had a duty under 37 C.F.R. §1.56 to disclose his discovery of the bamboo
knife in Vietnam to the examiner during the original patent prosecution.
(C) Since the use in Vietnam was not in this country, it does not constitute a public
use bar under 35 U.S.C. § 102(b).
(D) If Jill’s attorney files a request for reexamination, it will be denied because the
picture is not a patent or printed publication.
(E) Although Jack marketed the invention before obtaining a patent, the patent claims
cannot be invalidated under 35 U.S.C. § 102(a) since Jack’s making and selling of
the knife cannot be used against him under 35 U.S.C. § 102(a).

40. ANSWER: (A) is the most correct answer. Answer (A) is not true since Jack did not invent
the knife, therefore he is not entitled to a patent. Jack derived the invention from another, and
the picture of Jack with the Vietnamese knife is evidence of derivation. 35 U.S.C. § 102(f);
MPEP § 2137. Answer (B) is correct in that Jack should have disclosed “all information
material to patentability,” including the existence of the Vietnamese knife, during the original
patent prosecution. (C) is correct in that to qualify as prior under 35 U.S.C. § 102(b), the use
must be in this country. (D) is correct in that a request for reexamination must be based upon
patents and printed publications. (E) is correct in that public use derived from the inventor’s
own work cannot be used against the inventor under 35 U.S.C. § 102(a). MPEP § 2132.