unless another was (1) the first to conceive and (2) later reduced to practice (3) with diligence (from a time just prior to when the second conceiver entered the field to the first conceiver's reduction to practice). a. “Conception” Conception has been defined as “the complete performance of the mental part of the inventive act" and it is "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as itis thereafter to be applied in practice.” Conception is established when the invention is “sufficiently clear to enable one skilled in the art to reduce it to practice without the exercise of extensive experimentation or the exercise of inventive skill" That is, the inventor must form a definite and permanent idea of the complete and operable invention to establish conception, ‘There must be a contemporaneous recognition and appreciation of the invention for there to be conception. However, an inventor does not need to know that the invention will work for there to be complete conception. b, "Reduction to Practice” Reduction to practice may be an actual reduction or a constructive reduction to practice. The latter occurs when a patent application on the claimed invention is filed. The filing of a patent application serves as conception and constructive reduction to practice of the subject matter described in the application. Thus, the inventor need not provide evidence of either conception or actual reduction to practice when relying on the content of a patent application. In an interference proceeding, a party seeking to establish an actual reduction to practice must satisfy a two-prong test: (1) the party constructed an embodiment or performed a process that met every element of the interference count, and (2) the ‘embodiment or process operated for its intended purpose. ¢. "Reasonable Diligence" The diligence required by 102(g) relates to reasonable "attorney diligence" and "engineering diligence." It does not require that "an inventor or his attorney drop all other work and concentrate on the particular invention involved." ‘The critical period for diligence for a first conceiver but second reducer begins not at the time of conception of the first conceiver but just prior to the entry in the field of the party who was first to reduce to practice and continues until the first conceiver reduces to practice, ‘An applicant must account for the entire period during which diligence is required. The period during which diligence is required must be accounted for by either affirmative acts or acceptable excuses. 35 USC 119 - Foreign Priority (selected portions) (a) An application for patent for an invention filed in this country by any person who has, or ‘whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WIO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is fled within twelve months from the earliest date on LAswhich such foreign application was filed; but no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, ‘or which had been in public use or on sale in this country more than one year prior to such filing, (b) (1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director. ********##* (@) The Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers. 35 USC 120 - Domestic Non-Provisional Priority (Continuations, Divisionals (121), Continuations-in-Part (CIP)) ‘An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the ling date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. *******#¥** 35 USC 119(e) - Domestic Provisional Priority (@@)An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this ttl, if the application for patent filed under section 111(a) or section 363 of this title is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this subsection during the pendency of the application. QA provisional application filed under section 111(b) of this title may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41 (a)(1) of thi title has been paid. L-16@Q)lf the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day. § 1.131 Affidavit or declaration of prior invention. (a) When any claim of an application or a patent under reexamination is rejected, the inventor of the subject matter of the rejected claim, the owner of the patent under reexamination, or the party Qualified under §§ 1.42, 1.43, or 147, may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based. The effective date of a US. patent, US. patent application publication, or international application publication under PCT Article 21(2) is the earlier of its publication date or date that it is effective as a reference under 35 US.C. 102(e). Prior invention ‘may not be established under this section in any country other than the United States, a NAFTA ‘country, or a WTO member country. Prior invention may not be established under this section before December 8, 1993, in a NAFTA country other than the United States, or before January 1, 1996, in a WTO member country other than a NAFTA country. Layeao,) 0 sudan “uopunyy pp og spe 6g urea sa IV} SBA OTANI NOLLNAANT 40 IV UD, OLNHANTAHL LON UI “CDOT 29M S 1 poHRCasep pw oF ct pers ppp osye g-sc-T] 0s pay sumReNdde | 34 PERSIE HON NOLLNAANT 40 LV saHwony auoyaq ane Seay 'g'71 2 Fave YH LONV cv oonKDRSE g”> pagsygnd so swage, "s/w paqUOSEp oNUANA (5p 10 goad ny poem, Z ‘§ Phau eat | ) ouwosea~ apes wo,asn gn amypuiim-———_uonronge pad und x prays sem woman VO ON sundae uo popu aed wi poquosap *— souvaena(y” Seumoosee psn ounce Sp 'SSTINA INGLVd V OL CATLIINT 34 TIVHS NOSUHd ¥ - ZT § O's" se Lectures may refer to two Section 102 charts. Those two charts have been collapsed into this one.35 U.S.C § 102 - A PERSON SHALL BE ENTITLED TO A PATENT UNLESS: a) Before DATE OF INVENTION (ling date, if nothing else), invention was 1. “publicly” known or used - inthis country described in patent or printed pub. - anywhere Activities #1 or #2 vs. Applicant's Date of Invention 1. Inventor X, a citizen of Germany, invented a new stapler in Germany on July 25, 2007. (On January 22, 2008, X filed a patent application for the stapler in the German Patent Office. On January 22, 2009, you filed a complete US. patent application in the PTO claiming a stapler on behalf of X. The US. application was filed with a declaration under 37 CER § 1.63 signed by X claiming foreign priority of the German patent application. In an Office action dated April 16, 2009, and setting a three month shortened statutory period for reply, the primary patent examiner properly rejected all the claims in the US. patent application as being anticipated under 35 USC § 102(a) by the disclosure in magazine articles describing how to make and use an identical stapler. ‘The articles were published in the United States in February 2008, and in Great Britain in March 2008. Which of the following actions are in accord with proper PTO practice and procedure, and represent the most appropriate actions for overcoming the rejection? (A) __ File a petition to have the Commissioner exercise his supervisory authority and. withdraw the rejection stating that the references cannot be properly used inasmuch as the declaration under 37 CFR § 1.63 makes clear that the application inventor X filed in the German Patent Office antedates the articles. (B) File a reply on or before July 16, 2009, which argues that the references cannot be used because the application inventor X filed in the German Patent Office antedates the articles, (©) Onor before July 16, 2009, filea certified copy of the German application, an English translation of the German application, and point out that the references are no longer available as prior art Lag(D) __ Fileanaffidavit under 37 CFR § 1.132 signed by you stating that the references cannot be used because the application which inventor X filed in the German Patent Office antedates the articles. (©) Onor before July 16, 2008, file a certified copy of the German application, and an English translation of the German application. Answer: C 1-2035 U.S.C § 102 - A PERSON SHALL BE ENTITLED TO A PATENT UNLESS: b) > Lyear before US FILING DATE, invention was 1. described in patent/printed pub. + anywhere 2. in public use/on sale + inthis country Activities #1 or #2—vs.-—_ Applicant's US Filing Date You are a registered patent agent in Philadelphia, Pennsylvania. On March 5, 2002, Britebulb, a resident of Willow Grove, Pennsylvania, came to your office regarding the filing of a US, patent application on a new energy saving light bulb. After your initial meeting, you immediately prepared a utility application. Britebulb reviewed the application and executed the ‘oath on April 20, 2002. You filed the application in the PTO on April 23, 2002. Consider each of the situations presented in Questions 1-3 below in view of the above facts as well as the additional facts given in the question, and determine under which paragraph or paragraphs, if any, of 35 USC 102, Britebulb would not be entitled to a patent on his invention. 1. In May of 2000 white visiting relatives in Bonn, Germany, Britebulb entered into a contract with a German manufacturing firm to make his new energy saving light bulb. In ‘October of 2000, over 1000 light bulbs incorporating Britebulb’s invention were sold throughout Europe, (A) 35 USC 1024a) B) 35 USC 10246) (©) 35 USC 102(a) and 102(6) (BD) 35USC 1024) (©) None of the above Answer E 2. On August31, 2000, Britebulb and Makeit Corporation, a corporation of New York, signed an agreement by which Britebulb assigned his light bull ention to Makeit who agreed to further develop the invention. As part of the agreement, Britebulb received a $20,000 payment from Makeit. However, after three months, Makeit exercised a termination clause in the agreement and terminated the agreement without making any effort to further develop the invention, (A) 35 USC 102(a) L21(8) 35USC 102(b) (©) 35 USC 102{a) and 102(b) (D) 35 USC 10210) () None of the above. Answer E 3. Inthe first week of February 2001, in an effort to commercialize his invention, Britebulb mailed over 500 printed brochures to potential manufacturers in Germany. The brochure disclosed every detail of the invention, including a full disclosure of how to make and use the energy saving light bulb. Despite his efforts, none of the manufacturers expressed any interest in the invention. (A) 35 USC 102) (8) 35 USC 102(b) (©) 35 USC 102{a) and 102(6) () 35 USC 102(¢) ©) None of theabove. Answer B 4, Your client, Mr. Jones, asked you to prepare a patent application for his new pasta maker. ‘The key features of the invention are the different types of dough which can be used and the shapes of the pasta which can be made. The completed application was filed on Monday, May 18, 2008, After filing the application, you conducted a prior art search and found a published article by another which was published on May 16, 2007. The published article discusses a pasta maker very similar to your client's pasta maker. In the course of your search, you also found a few patents, but none as pertinent as the article. You file all ofthe prior artin an Information Disclosure Statement on June 8, 2008. In your opinion, the article is the best available prior art. Assuming that this is true, under which of the following sections of Title 35 USC, if any, would Mr. Jones not be entitled to a US patent? (A) 102) ®) 10200) © 2a) ©) 102) (©) None of the above. L-22ANSWER: Both (A) and (E) are considered correct answers in light of the varying, interpretations to be given to the statement that the “ published article discusses a pasta maker very similar to your client's pasta maker.” As explained in MPEP 706.02, “for anticipation under 35 USC 102, the reference must teach every aspect of the claimed invention either explicitly or impliedly.” The use of the phrase “very similar” can be ‘understood to mean that the published article explicitly or impliedly taught every aspect of the claimed invention. Under this interpretation, (A) would be correct because the published article is prior art under 35 USC § 102(a) because, based upon the given facts, the invention “was known... by others in this country, or ... described in a printed publication in this... country, before the invention thereof by the applicant for patent.” (B) would not be the correct answer under this interpretation based upon when the one year anniversary date occurs for the published article and when the patent application needs to be filed. 35 USC § 21(b) states “When the day, or the last day, for taking any action or paying any fee in the United States Patent and Trademark Office falls on Saturday, Sunday, or a Federal holiday within the District of Columbia, the action may be taken or the fee paid, on the next succeeding secular or business day.” ‘This section of the statute has been interpreted as modifying the one-year ur twelve months’ periods specified in various other parts of the statute and also for 35 USC § 102(b). See MPEP § 2133 and Ex parte Olak, 131 USPQ 41 (Bd. App. 1960). Therefore, the article would be a reference under 35 USC § 102(a) and not under § 102(b), since May 16, 1998, falls on a Saturday. (C) would also not be correct because 35 USC § 102(d) relates to (1) a patent, not a publication; (2) a reference of the applicant, not another; and (3) a foreign reference, nota US. reference. Likewise, the reference in (D) to. 35 USC § 102(e) would not be correct because this section only applies to the filing date of a patent and the reference is a published article. ‘The phrase “very similar” could also be taken to mean that the published article did not teach every aspect of the claimed invention as required for anticipation under 35 USC § 102, Based on this interpretation, answers (A), (B), (C) and (D) would be rendered incorrect because they are all based on sections of 35 USC § 102. Accordingly, answer (E), “None of the above,” would be the mest correct answer. L.2335 USC § 102 - A PERSON SHALL BE ENTITLED TO A PATENT UNLESS: d) Same Applicant (or owner): 5. Filed a foreign application describing invention > 1 year before US. Filing, Date AND 6. That Foreign Patent was granted before U‘S. Filing Date NOTE: 6 months for design patents You are a registered patent agent with an office in Buffalo, New York. On January 13, 2008, Murphy, a resident of Canada, came to your office for the purpose of obtaining a U.S. patent on. her invention. She tells you that she first conceived her invention at her home in Ontario on December 18, 2006, and that she reduced it to practice on January 10, 2007, at her home. On. January 13, 2008, Murphy provided you with a detailed written description fully disclosing her invention. You diligently proceeded to prepare the application. You filed the application in the PTO on February 12, 2008. Consider each of the situations presented in the questions below i light of the facts presented above and determine which paragraph of 35 USC § 102, if any, would prevent Murphy from obtaining a US. patent. 1. Murphy patented her invention in Canada on December 30, 2007 on a Canadian patent application filed on February 10, 2007. (A) 35 USC § 102(a) (B) 35 USC § 102(b). (© 35 USC § 1024) (D) 35 USCS 102(6). (None of the above. ANSWER: (C) is the correct answer. The filing date in Canada is more than 12 months before the U'S. filing date for the same invention and the invention was patented in Canada L-24before the US. filing date, MPEP § 2135; 2135.01. (A), (B),and (D) are incorrect. 35 USC §8 102{a), (b) and (e). (E) is incorrect because (C) is correct. 2, Which of the following is not a requirement of 35 USC § 102(d) to bar the granting of a patent in this country? (A) (8) © (D) & ANSWER: ‘The foreign application must have been filed more than 12 months before the effective filing of the application in the United States, ‘The foreign application must have been filed by the same applicant as in the United States or by his or her legal representatives or assigns. ‘The foreign patent or inventor's certificate must be actually granted before the US. filing date. ‘The foreign patent or inventor's certificate must have been published prior to the date of the application for patent in the United States. ‘The same invention must be involved. (D)is the most correct answer, 35 USC § 102(d) and MPEP § 2135 expressly list (A), (8). (©) and (B) as the four conditions which, if all are present, establish a bar against the ‘granting of a patent in this country. The foreign patent or inventor's certificate described in (D) need not be published to establish a 35 USC § 102(d) bar. MPEP 2135, L.2535 USC § 102 - A PERSON SHALL BE ENTITLED TO A PATENT UNLESS: ©) Invention described in US. Patent or published application to ANOTHER, and ‘That US. Patent to Another has a US. ing Date before Applicant's DATE OF INVENTION, NOTE: Published PCT applications with IA filed post 11-29-00 also qualify if 1A published in English and designated the US. Filing Date of US, Patent to Another vs. Applicant's Date of Invention 3. On January 19, 2009, inventor B filed a patent application in the PTO claiming invention X. Inventor B did not claim priority based on a foreign application filed by inventor Bon April 3, 2008, in the Patent Office in Japan. In the foreign application, inventor B disclosed and claimed invention X, which inventor B had conceived on August 11, 2007, and reduced to practice on November 5, 2007, all in Japan. The US patent examiner issued an Office action where all the claims in the patent application were properly rejected under 35 USC § 102(a) and (e) as being anticipated by a US. patent granted to inventor Z on September 1, 2008, on a patent application filed in the PTO on December 5, 2007. There is no common assignee between Z and B, and they are not obligated tos assign their invention to a common assignee. Moreover, inventors Z and B, independently of each other, invented invention X, and did not derive anything from the other. The U‘S. patent to Z discloses, but does not claim, invention X. Which of the following is/are appropriate reply(replies) which could overcome the rejections under §§§ 102(a) and (e) when timely filed?” (A) Filean antedating affidavit or declaration under 37 CFR § 1.131 showing, conception on August 11, 2007, and actual reduction to practice on November 5, 2007, all in Japan. (B) File a claim for the right and benefit of foreign priority wherein the Japanese application is correctly identified, file a certified copy of the original Japanese patent application, and argue that as.a result ofthe benefit of foreign priority, the US. patent is no longer available as a prior art reference against the claims. 1-26tations disclosed in inventor B’s application, but not disclosed or suggested in inventor Z's patent and argue that (Q_— Amend the claims to require particular i the limitations patentably distinguish the claimed invention over the prior ar ©) and © Bando. ANSWER: _(D) is the most correct answer because it includes both (A) and (C). Following the procedure in (A) isin accord with 37 CFR § 1.131 and MPEP § 715.07(0). By following the procedure in (C), the claims are no longer anticipated by Z's patent because particular limitations are now claimed in inventor B's application which are not disclosed or suggested by inventor Z’s patent, 35 USC § 102(a) and (e); MPEP § 2131. (B) is not correct. 37 CFR § 1.131; MPEP §§ 201.15; 715.07(€); 2132.01; 2136; and 2136.05. 1. Inearly 2007, Goforgold, a company based in Australia, developed a widget with increased reflective properties. Goforgold filed a patent application in the Australian Patent Office on January 8, 2007, and filed a corresponding application in the USPTO on January 5, 2008, All research activities for the inventions disclosed and claimed in the US. and Australian applications took place in Australia. The US. patent application contains five claims: 1. A widget comprising elements A and B. 2. Awidget according to Claim 1 wherein the widget further includes element D. 3. A.widget comprising elements A and C. 4. A.widget according to Claim 3 wherein the widget further includes element E. 5. A widget comprising elements A, B and C. ‘The Australian application only supports claims 1, 2 and 5 of the US. application. During the course of prosecution of the US. application, the examiner properly rejected all of the claims under 35 USC § 102(¢) as being anticipated by a US. patent assigned to Gotthesilver. The Gotthesilver patent was granted on October 6, 2008, on a US. application filed on June 15, 2007. ‘The Gotthesilver patent specificallly describes, but does not claim, the widget in claims 1-5 of the USS. application filed by Goforgold. ‘The subject matter of the Gotthesilver patent was reduced to practice in Flushing, New York as of February 12, 2007. Which of the following proposed arguments or actions would properly overcome the examiner's § 102(¢) rejection with respect to all the claims? L27(a) (B) oO @) © ANSWER: File an affidavit under 37 CFR § 1.132 swearing behind the claims of the Gotthesilver patent by relying on the 2007 research activities of Goforgold in Australia, File a claim for a right of priority based on the application filed in Australia along, with a certified copy of the Australian patent application and canceling Claims 3 and 4, File a claim for a right of priority based on the application filed in Australia along, with a certified copy of the Australian patent application. File an affidavit under 37 CFR § 1.132 swearing behind the February 12, 2007, reduction to practice date of the Gotthesilver patent File a terminal disclaimer. (B) is the most correct answer. MPEP §§ 706.02(b) 2136.05. (A) and (D) are incorrect because an affidavit under 37 CFR § 1.132 is inappropriate in this situation. MPEP § 715.01. (C) will not result in overcoming the rejection of claims 3 and 4 inasmuch as the disclosure of the Australian patent application only supported claims 1, 2 and 5. (E) is not correct because a terminal disclaimer will not overcome a 35 USC § 102(e) rejection. MPEP § 2136.05 [p. 2100-87} L-2835 USC § 102 - A PERSON SHALL BE ENTITLED TO A PATENT UNLESS: fhe himself did not invent the subject matter sought to be patented (NOT THE INVENTOR) You are a registered patent agent with an office in Buffalo, New York. On January 13, 2008, Murphy, a resident of Canada, came to your office for the purpose of obtaining, a US. patent on her invention, She tells you that she first conceived her invention at her home in Ontario on December 18, 2006, and that she reduced it to practice on January 10, 2007, at her home. On January 13, 2008, Murphy provided you with a detailed written description fully disclosing her invention. You diligently proceeded to prepare the application. You filed the application in the PTO on February 12, 2008. Consider the situation presented in the question below in light of the facts presented above and determine which paragraph of 35 USC § 102, if any, would prevent Murphy from obtaining a US. patent. 1. After the application was filed in the US., Murphy admitted that in order to make the claimed invention operative, the mechanic who built the prototype of Murphy's invention added a novel feature without consulting Murphy which is included in all the claims of the application, (A) 35 USC § 102(a) (8) 35 USC § 1024). (© 35 USCS 10240, (D) 35 USC§102(g), (E) None of the above. ‘Answer C L.29