Access to a redacted copy of an application
From Patentbarquestions
- Oct '01 AM #8
8. Joan comes to you wanting to know the status of the applications of her competitor Pete.
During Joan’s previous relationship with Pete she believes she may have been a coinventor on
one of the applications filed by Pete. Pete owns Applications A, B, C and D. Application B is a
continuation of application A and a redacted copy of application A has been published under 35
U.S.C. § 122(b). Joan is listed as a coinventor on Application C. Pete has an issued patent that
claims priority to Application D. Assume only the last six digits of the numerical identifier are
available for Application D and Application D is abandoned. Which of the following is not true?
(A) Joan may obtain status information for Application B that is a continuation of an
application A since application A has been published under 35 U.S.C. § 122(b).
(B) Joan may be provided status information for Application D that includes the filing
date if the eight-digit numerical identifier is not available and the last six digits of
the numerical identifier are available.
(C) Joan may obtain status information for Application D since a U.S. patent includes
a specific reference under 35 U.S.C. §120 to Application D, an abandoned
application. Joan may obtain a copy of that application-as- filed by submitting a
written request including the fee set forth in 37 CFR 1.19(b)(1).
(D) Joan may obtain status information as to Application C since a coinventor in a
pending application may gain access to the application if his or her name appears
as an inventor in the application, even if she did not sign the §1.63 oath or
declaration.
(E) Joan may obtain access to the entire Application A by submitting a written
request, since, notwithstanding the fact that only a redacted copy of Application A
has been published, a member of the public is entitled to see the entire application
upon written request.
8. ANSWER: Statement (E) is false and is not a correct statement. Since a redacted copy of
the application was used for publication purposes, 37 CFR 1.14 (c)(2) provides that “(2)
If a redacted copy of the application was used for the patent application publication,
the copy of the specification, drawings, and papers may be limited to a redacted copy.”
For (A) and (B), see 37 CFR 1.14(b)(2). For (C) see 37 CFR 1.14(b)(2) and (c)(1)(i).
As to (D), a coinventor is entitled to access to the application independent of whether or
not he or she signed the declaration. Note that as stated in 37 CFR 1.41(a)(2), if a
declaration or oath is not filed, the inventorship is that inventorship set forth in the
application papers.
- April '03 PM #30
30. Joan goes to a registered practitioner wanting to know the status of the applications of her competitor Pete.
During Joan’s previous relationship with Pete she believes she may have been a coinventor on one of the applications
filed by Pete. Pete owns Applications A, B, C and D. Application B is a continuation of Application A and a redacted
copy of Application A has been published under 35 USC 122(b). Joan is listed as a coinventor on Application C. Pete
has an issued patent that claims priority to Application D. Assume only the last six digits of the numerical identifier
are available for Application D and Application D is abandoned. Which of the following, in accordance with the USPTO
rules and the procedures set forth in the MPEP, is not true?
(A) Joan may obtain status information for Application B that is a continuation of an Application A
since Application A has been published under 35 USC 122(b).
(B) Joan may be provided status information for Application D that includes the filing date if the eight-digit
numerical identifier is not available and the last six digits of the numerical identifier are available.
(C) Joan may obtain status information for Application D since a U.S. patent includes a specific reference
under 35 USC 120 to Application D, an abandoned application. Joan may obtain a copy of that application-as-filed
by submitting a written request including the fee set forth in 37 CFR 1.19(b)(1).
(D) Joan may obtain status information as to Application C since a coinventor in a pending application may gain
access to the application if his or her name appears as an inventor in the application, even if she did not sign
the § 1.63 oath or declaration.
(E) Joan may obtain access to the entire Application A by submitting a written request, since, notwithstanding
the fact that only a redacted copy of Application A has been published, a member of the public is entitled to see
the entire application upon written request.
30. ANSWER: Statement (E) is false, and is thus the most correct answer. Since a redacted copy of the
application was used for publication purposes, 37 CFR § 1.14 (c)(2) provides that “(2) If a redacted copy
of the application was used for the patent application publication, the copy of the specification, drawings,
and papers may be limited to a redacted copy.” For (A) and (B), see 37 CFR § 1.14(b)(2). For (C) see 37 CFR §§
1.14(b)(2) and (c)(1)(i). As to (D), a coinventor is entitled to access to the application independent of
whether or not he or she signed the declaration. Note that as stated in 37 CFR § 1.41(a)(2), if a declaration
or oath is not filed, the inventorship is that inventorship set forth in the application papers.
- April '01 PM #49
49. Which of the following is not in accordance with proper USPTO practice and procedure
regarding patent applications filed in March 2001?
(A) Status information is available for Application B, that is a continuation of an
application A, when application A has been published under 35 U.S.C. § 122(b).
(B) A person requesting status information may be provided the filing date if the
eight-digit numerical identifier is not available and the last six digits of the
numerical identifier is available.
(C) If a U.S. patent application publication or patent incorporates by reference, or
includes a specific reference under 35 U.S.C.§§ 119(e) or 120 to, a pending or
abandoned application, a copy of that application-as-filed may be provided to any
person upon written request including the fee set forth in 37 CFR § 1.19(b)(1).
(D) A coinventor in a pending application may gain access to the application if his
name appears as an inventor in the application, even if he did not sign the oath or
declaration.
(E) Notwithstanding the fact that only a redacted copy of an application has been
published, a member of the public is entitled to see the entire application upon
written request.
49. ANSWER: (E) is the most correct answer. Since a redacted copy of the application was used for publication purposes, 37 C.F.R. § 1.14 (c)(2) provides that “(2) If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy.” As to (A), (A) contains the elements of 37 C.F.R. § 1.14(b)(2), which reads “When status information may be supplied. Status information of an application may be supplied by the Office to the public if any of the following apply: … (2) The application is referred to by its numerical identifier in a published patent document (e.g., a U.S. patent, a U.S. patent application publication, or an international application publication), or in a U.S. application open to public inspection (§ 1.11(b), or paragraph (e)(2)(i) or (e)(2)(ii) of this section).” As to (B), (B) is within the purview of 37 C.F.R. § 1.14(a)(1)(iii) which states: “(a)(1) Status information is: … (iii) The application “numerical identifier” which may be: (A) The eight-digit application number (the two-digit series code plus the six-digit serial number); or (B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage.” As to (C), (C) contains the elements of 37 C.F.R. § 1.14(c)(1)(i), which states “(c) When copies may be supplied. A copy of an application-as-filed or a file wrapper and contents may be supplied by the Office to the public, subject to paragraph (i) of this section (which addresses international applications), if any of the following apply: (1) Application-asfiled. (i) If a U.S. patent application publication or patent incorporates by reference, or includes a specific reference under 35 U.S.C. 119(e) or 120 to, a pending or abandoned application, a copy of that application-as-filed may be provided to any person upon written request including the fee set forth in § 1.19(b)(1).” As to (D), a coinventor is entitled to access to the application independent of whether or not he or she signed the declaration. Note that as stated in 37 C.F.R. § 1.41(a)(2), if a declaration or oath is not filed, the inventorship is that inventorship set forth in the application papers.
- April '02 PM #29
29. On June 1, 2001, a redacted copy of a pending patent application is filed by the
inventor, I. M. Abridged and is published pursuant to 35 U.S.C. § 122(b). J. Q.
Practitioner has reason to believe that the application is still pending. J. Q. Practitioner is
not an attorney or agent for I. M. Abridged. J. Q. Practitioner is entitled to see or obtain
copies of which, if any, portions of the Abridged application?
(A) J.Q. Practitioner may order only the redacted printed publication
document since pending patent applications are otherwise preserved in
confidence.
(B) J.Q. Practitioner may order a copy of the redacted printed publication
document, and inspect, but not copy, the file.
(C) J.Q. Practitioner may inspect the contents of the entire patent application
file and obtain copies thereof in addition to obtaining copies of the
redacted application publication.
(D) J.Q. Practitioner may inspect and obtain copies of only the redacted
application and no other documents unless applicant I. M. Abridged
supplied them in a redacted form.
(E) J.Q. Practitioner may obtain a copy of the entire application and the file
contents if applicant I. M. Abridged failed to submit redacted copies of
those documents forming the subsequent prosecution history; otherwise,
J.Q. Practitioner may obtain a copy of the redacted application including
the redacted contents of the file.
29. ANSWER: The model answer is choice (E). 37 C.F.R. §§ 1.217(d), 1.14(c)(2), and MPEP § 103, subsection “Published U.S. Patent Applications.” 37 C.F.R. § 1.14 provides that while a published application is still pending the file itself will not be available to the public but copies of the application may be ordered. If a redacted copy of the application was published, copies of the redacted application and redacted materials will be provided under 37 C.F.R. §1.217(d). Answer (A) is incorrect because at least the redacted portion of any subsequent prosecution history can be ordered. Answer (B) is incorrect. Access is not provided to inspect the application file of pending published applications, MPEP § 103. Only copies of the application file may be ordered. Answers (C) and (D) are incorrect because inspection of the application file of a pending published application is not permitted. MPEP § 103. A member of the public may request only copies of the application file.
