30. In accordance with the MPEP, and USPTO rules and procedure, a patent application may be made by someone other than the inventor in certain situations. In which of the following situations would an application not be properly made by someone other than the inventor?
(A) The inventor is deceased, and the application is made by the legal representative of the deceased inventor.
(B) The inventor is deceased, and the application is made by one who has reason to believe that he or she will be appointed legal representative of the deceased inventor.
(C) The inventor is a minor (under age 18) who understands and is willing to execute the declaration, but the application is made by the minor’s legal representative.
(D) The inventor is insane, and the application is made by the legal representative of the insane inventor.
(E) The inventor is legally incapacitated, and the application is made by the legal representative of the legally incapacitated inventor.
30. All answers accepted.
from the “exam analysis by john white of pli”:
“Rule 47! But a gift instead. Good thing since the answers are too funny to even get through. A talks about a dead person with a legal representative! Gee, I wonder how the client would communicate with their representative? B is really funny too. What would give you “reason to believe you’d be appointed”? Another communication from the “great beyond”? C is wrong but you can’t be sure. A child can obtain a patent, but I suppose the legal rep could too. D is a Rule 47 situation, but that is not what the question seeks. How can some who is “legally incapacitated” have a legal rep? I thought they were legally “incapacitated”. Whatever that means?”
i d/n understand what’s so funny. if u look in the mpep 409.01(a) it explicitly gives some of the choices as correct ones?
Anyone deceased leaving an estate will have a legal representative handling the estate.
Not necessarily.
This is classic John White dismissing possible answers with improper or inadequate explanation. While he’s so busy laughing about the “great beyond,” 409.01(a) is saying “One who has reason to believe that he or she will be appointed legal representative of a deceased inventor may apply for a patent as legal representative in accordance with 37 CFR 1.42. ” And how can a dead person have a legal representative? Hm, let’s ask 35 USC 117, “Legal representatives of deceased inventors . . . may make application for patent upon compliance with the requirements and on the same terms and conditions applicable to the inventor.” D and E are also correct, see MPEP 409.02.
The only one that is arguably incorrect is C, but even then MPEP 409 says ” A minor (under age 18) inventor ***MAY*** execute an oath or declaration under 37 CFR 1.63 as long as the *>minor< is competent to sign (i.e., understands the document that he or she is signing); a legal representative is not required to execute an oath or declaration on the minor’s behalf." The MPEP doesn't indicate a minor must execute if he or she understands the document.
It's a flawed question, but White's "analysis" is equally flawed.
I think the answer should be (B) because it is speculative. Dead inventors can be represented by legal representatives, and so can insane or incapacitated inventors.
under 409.01(a)–“one who has reason to believe that he or she will be appointed legal representative of a deceased inventor may apply for a patent as legal representative in accordance with 37 CFR 1.42”
So B is not the answer.
It seems to me that the model answer states “all answers accepted” because there is no correct answer.
Please correct me if I am wrong. BTW, I didn’t get John White’s explanation either
Note also that 37 CFR 1.42 explains what a “legal representative” of a dead person is, namely, just what you’d expect: the executor or administrator of the deceased person’s estate. Similarly, the “legal representative” of someone who is legally incapacitated is the guardian or conservator of the legally incapacitated person’s interests (MPEP 409.02). I think that whoever wrote the question wanted the answer to be (C), but forgot that while a minor who understands the declaration is *allowed* to sign it, he is not *required* to do so (37 CFR 1.63 (a)(1)), which means that there is nothing to prevent his legal representative from doing so on his behalf.
What I don’t understand is how a question with no right answer could be a “repeat” question. Have they fixed it so that it now has a right answer?
I think the answer would be “C”.
MPEP 409 states:
A minor (under age 18) inventor may execute an oath or declaration under 37 CFR 1.63 as long as the *>minor< is competent to sign (i.e., understands the document that he or she is signing); a legal representative is not required to execute an oath or declaration on the minor’s behalf. See 37 CFR 1.63(a)(1).
I think C as well, not sure there is an age requirement….
I thought C was intended to be the right answer
An application by the legal representative for a minor may not be necessary, but I don’t see anything in 37 CFR 1.63(a)(1) that suggests that such an application would be actually improper.
Had a similar question today, but before the inventor dies they assigned some of the patent rights to the patent attorney. When the inventor dies, can the attorney still prosecute the patent? Or does he need a new power of attorney signed by the heirs, wife, executor, etc. (I found something in the MPEP that did not revoke the agency to prosecute the patent upon the death of the inventor if they owned part of the patent, but I hope others will clarify this for future takers.)
Bob,
I had this question with attorney being assigned some of the patent rights and reviewed the answer at the PTO. The attorney has a “partial interest” in the invention so even though the power of attorney is revoked at the death of the inventor, the attorney may still prosecute the application due o the partial interest. He would not have to wait for the legal representatives of the dead inventor to sign another power of attorney.
PTO likes questions about dead people, drunk inventors, people leaving their wife to strand themselves on an island. They haven’t really talked about people who were detained though.
….and it seems like a lot of inventors have sudden deaths during prosecution and the families are always up in arms about prosecuting that patent application.
I think the question is wrong, the question should read In which of the following
situations would an application be properly made by someone other than the inventor (removing not), then all answers are correct.
I got the variant on this 6/26/2012. Inventor assigned the practitioner his invention in order to cover practitioner’s fee in part before he died. After he died, who will prosecute the application? I chose the answer that legal representative prosecutes unless the practioner intervene.
For the variant, is this the section that applies? MPEP 409.1: “Unless a power of attorney is coupled with an interest (i.e., **>a patent practitioner< is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all powers of attorney in the application have been terminated (but see MPEP § 409.01(f)). See also 37 CFR 1.422."
Because the inventor gave the practitioner power of attorney coupled with an interest, the power of attorney is not terminated?
It seems to me this is the right section.
The way I see it…
The call of the question is tricky, In which of the following
situations would an application not be properly made by someone other than the inventor? That is to say in which situation it is proper for the inventor to execute application and not someone else.
If the inventor is dead then certainly he cannot partake in the application, same for legally incapacitated and insane. The right choice is (c).
The correct answer here is clearly C, as noted above
by bcr_ct .
MPEP 409 states:
A minor (under age 18) inventor may execute an oath or declaration under 37 CFR 1.63 as long as the *>minor< is competent to sign (i.e., understands the document that he or she is signing); a legal representative is not required to execute an oath or declaration on the minor’s behalf. See 37 CFR 1.63(a)(1).
In this case since the minor is available and competent, the representative should not sign.
Any model answer that states 2 or more anwers are accepted is necessarily incorrect, as the Prometrics system does not admit this option. In some cases on this site there is an error in the actual question, in other cases, as seen here, the model answer is incorrect.