Question #11 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.
11. In accordance with the USPTO rules and procedures set forth in the MPEP, a Certificate of Correction effectuates correction of an issued patent where:
(A) Through error and without deceptive intent, there is a failure to make reference to a prior copending application according to 37 CFR 1.78, and the failure does not otherwise affect what is claimed, but the prior copending application is referenced in the record of the application, and a petition under 37 CFR 1.324 and appropriate fees were filed.
(B) Through error and without deceptive intent, a preferred embodiment that materially affects the scope of the patent was omitted in the original disclosure in the filed application, and a petition under 37 CFR 1.324 and appropriate fees were filed.
(C) Through error and without deceptive intent, a prior copending application is incorrectly referenced in the application, the incorrect reference does not otherwise affect the claimed subject matter, and the prior copending application is correctly identified elsewhere in the application file, and a petition under 37 CFR 1.324 and appropriate fees were filed.
(D) Through error and without deceptive intent, an inventor’s name is omitted from an issued patent, a petition under 37 CFR 1.324 and appropriate fees were filed, and the petition was granted.
(E) (A), (C) and (D).
ANSWER: (E) is the most correct answer. (A) and (C) can be corrected by a certificate of Correction. MPEP § 1481. (D) can be corrected by a Certificate of Correction. 37 CFR § 1.324; MPEP § 1481. (B) is incorrect. Such a mistake, which affects the scope and meaning of the claims in a patent, is not considered to be of the “minor” character required for issuance of a Certificate of Correction. MPEP § 1481.
Maybe I am overstudying, but the Question quotes CFR1.324 in Answers A-E. This is must be a typo in the Question, since 1.324 is Correction of Inventorship.
That’s what I thought.. hence I picked D.. (which was also the only answer in which the petition was granted, unlike A and C). Go figure.
That is correct. Question refers to ‘issued patent’ and only D refers to issued patent.
However, 1482.02 – page # 1400-90 second and third paragraph states:
“While a request under 37 CFR 1.48 is appropriate to correct inventorship in a nonprovisional application, a petition under 37 CFR 1.324 is the appropriate vehicle to correct inventorship in a patent. If a request under 37 CFR 1.48(a), (b), or (c) is inadvertently filed in a patent, the request may be treated as a petition under 37 CFR 1.324, and if it is grantable, form paragraph 10.14 set forth below should be used.
Similarly, if a request under 37 CFR 1.48(a), (b), or
(c) is filed in a pending application but not acted upon until after the application becomes a patent, the request may be treated as a petition under 37 CFR 1.324, and if it is grantable, form paragraph 10.14 set forth below should be used.”
So I assume, answer A and C refers to the situation where it was filed in a pendidng applicaiton but not acted upon until application becomes a patent, as stated above.
I hope this helps.
LM
I’m still unclear. The 1.324 petition is only for inventorship rather than for failure to make reference to a prior copending patent. I agree that the answer should be D or there is a mistake in the question.
Has anyone recently got this question in the exam?
You can use 1.324 petition to correct other things than just inventorship of issued patents such as (A)the failure to make reference to a prior copending application pursuant to 37 CFR 1.78(a)(2) and (a)(4); or
(B)an incorrect reference to a prior copending application pursuant to 37 CFR 1.78(a)(2) and (a)(4). These are the choices for (A) and (C) and I think most people studying for this is aware of the inventorship fix under 1.324
MPEP 1481.03
Read the possibilities underneath the line, “Under certain conditions specified below, a Certificate of Correction can be used, with respect to 35 U.S.C. 120 and 119(e) priority, to correct:”
The page number is 1400-97.
Sorry, I left this off. The most correct answer is (E) based off of what I wrote.