Two questions on oaths (1.63)
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Q) Able and Baker (10.01.24a)
24. Able and Baker conceived an improved gas grille for cookouts. Using elements A, B, C, D, E and F
found in their backyards, as well as elements G, H, I, J, K, L, M and N purchased at a local hardware
store, they successfully constructed and used a gas grille conforming to their concept. The grille
includes subcombination of elements K, L and M conceived by Able, and subcombination C, D, F, G and M
conceived by Baker. Able and Baker conceived their respective subcombinations separately and at
different times. Able and Baker retain you to prepare and file a patent application for them. You are
considering whether and what can be claimed in one patent application. Which of the following is true?
- (A) For Able and Baker to properly execute an oath or declaration under 37 CFR 1.63
- in a patent application claiming not only the grille, but also the two subcombinations,
- Able and Baker must be joint inventors of the grille, and each of the two subcombinations.
- (B) A characteristic of U.S. patent law that is generally shared by other countries is
- that the applicant for a patent must be the inventor.
- (C) If Able and Baker execute an oath or declaration under 37 CFR 1.63 as joint inventors
- and file an application claiming the grille (a combination of elements A, B, C, D, E, F,
- G, H, I, J, K, L, M and N), the existence of the claim to the grille is evidence of their
- joint inventorship of the individual elements.
- (D) Able and Baker may properly execute an oath or declaration under 37 CFR 1.63
- as joint inventors and file an application containing claims to the grille (a combination
- of elements A, B, C, D, E, F, G, H, I, J, K, L, M and N), claims to the subcombination
- conceived by Able, and claims to the subcombination conceived by Baker.
- (E) Able and Baker could not properly claim the combination unless they successfully
- and personally reduced the grille to practice.
24. ANSWER: The most correct answer is (D). 35 U.S.C. § 116, first paragraph; MPEP § 2137.01,
“Inventorship,” and see Kimberly-Clark Corp. v. Procter & Gamble Distributing, 23 USPQ2d 1921,
1925 - 26 (Fed. Cir. 1992); and Moler v. Purdy, 131 USPQ 276, 279 (Bd. Pat. Inter. 1960).
(A) is not correct. MPEP § 2137.01 (Requirements for Joint Inventorship) and see Kimberly-Clark
Corp. v. Procter & Gamble Distributing, 23 USPQ2d 1921, 1925 - 26 (Fed. Cir. 1992); and Moler v.
Purdy, 131 USPQ 276, 279 (Bd. Pat. Inter. 1960). (B) is not correct. 35 U.S.C. §§ 101, 115;
MPEP § 2137.01. (C) is not correct. MPEP § 2137.01. The inventor of an element, per se, and the
inventor of a combination using that element may differ. See In re DeBaun, 214 USPQ 933, 936
(CCPA 1982); and In re Facius, 161 USPQ 294, 301 (CCPA 1969). (E) is not correct. There is no
provision in the Patent Statute requiring the invention to be reduced to practice in order to
file a patent application claiming the invention. Further, see MPEP § 2137.01; and see In re DeBaun,
214 USPQ 933, 936 (CCPA 1982).
Q) Non-signing Inventor (10.02.1a)
1. In accordance with the MPEP and USPTO rules and procedure, an application for patent may be made on
behalf of a joint inventor in certain situations. Who, by petition, may make application on behalf of a joint
inventor who has refused to sign the application (“nonsigning inventor”), if the other joint inventor (“signing
inventor”) executes the application?
(A) A person other than the signing inventor, to whom the nonsigning inventor has assigned the invention.
(B) A person other than the signing inventor, with whom the nonsigning inventor has agreed in writing to assign the invention.
(C) The signing inventor.
(D) A person other than the signing inventor, who shows a strong proprietary interest in the invention.
(E) All of the above.
1. ANSWER: Choice (C) is the correct answer. MPEP § 409.03(a), and 37 C.F.R. § 1.47(a).
37 C.F.R. § 1.47(a) provides, “If a joint inventor refuses to join in an application for patent
or cannot be found or reached after diligent effort, the application may be made by the other
inventor on behalf of himself or herself and the nonsigning inventor. The oath or declaration in
such an application must be accompanied by a petition including proof of the pertinent facts, the
fee set forth in § 1.17(h), and the last known address of the nonsigning inventor. The nonsigning
inventor may subsequently join in the application by filing an oath or declaration complying with
§ 1.63.” Choices (A), (B), and (D) are each incorrect because they are not provided for by 37
C.F.R. § 1.47(a). MPEP § 409.03 (b), in pertinent part provides, “Where 37 C.F.R. § 1.47(a) is
available, application cannot be made under 37 C.F.R. § 1.47(b).” Choice (E) is incorrect
because choices (A), (B), and (D) are each incorrect.
Q) Smith and Jones (4.02.38p)
38. Which of the following can correct the inventorship of a patent application in
accordance with proper USPTO practice and procedure?
(A) An unexecuted nonprovisional application was filed January 3, 2001 naming Jones and Smith
as inventors. Smith was named an inventor in error. A Notice to File Missing Parts of Application
was mailed by the Office, that requested a surcharge and an executed oath or declaration under
37 CFR 1.63 by Jones and Smith. A registered practitioner in timely response to the Notice submitted
the requested surcharge and a declaration under 37 CFR 1.63 that named only Jones as the inventor,
which declaration was only executed by Jones. The registered practitioner had determined that a
request to correct inventorship under 37 CFR 1.48(a) was unnecessary. No papers were submitted,
by Smith, clarifying that she is not an inventor.
(B) A nonprovisional application was filed January 3, 2001 with a declaration under 37 CFR 1.63
naming Jones and Smith as inventors, which declaration was signed only by Jones. Smith was named
an inventor in error. A Notice to File Missing Parts of Application was mailed by the Office that
requested a surcharge and an executed oath or declaration by Smith. A registered practitioner
timely responded to the Notice by submitting the requested surcharge and a new declaration under
37 CFR 1.63 that identified Jones as the sole inventor, which declaration was executed only by Jones.
(C) A nonprovisional application was filed February 28, 2000 that improperly named Jones as the
sole inventor in a declaration under 37 CFR 1.63. Only Jones executed the declaration. Applicant
need only re- file the application as a continued prosecution application naming the correct
inventorship of Jones and Smith in the new application’s transmittal letter.
(D) A continuation application was filed under 37 CFR 1.53(b) using a copy of an executed declaration
from the prior application for which a continuation was filed to correct the inventorship.
The continuation application papers were accompanied by a request by a registered practitioner,
in the continuation application transmittal paper, that Smith, named as an inventor in the prior
application, be deleted as an inventor in the continuation application.
(E) (A) and (D).
38. C is obviously wrong since it is a CPA and not a 53(b) filing. B is wrong since
the PTO will presume Jones signed on behalf of Smith, even though Smith’s signature is missing.
A and D are okay.
38. ANSWER: (E), which includes answers (A) and (D), is the correct answer. Answer (A) is
correct. Where an application is filed identifying the inventorship but an executed declaration
under 37 C.F.R. § 1.63 has not been filed, the first submission of an executed declaration under
37 C.F.R. § 1.63 will automatically act to correct the earlier identification of the inventorship.
37 C.F.R. § 1.48(f)(1). Answer (D) is correct. A continuation using a copy of a declaration
under 37 C.F.R. § 1.63 from a prior application may be filed naming fewer than all the named
inventors in the prior application provided a request for deletion of an inventor accompanies the
declaration copy. 37 C.F.R. § 1.53(b)(1), 37 C.F.R. § 1.63(d)(1)(iv), and 1.63(d)(2). Answer (B)
is incorrect. Where a declaration under 37 C.F.R. § 1.63, signed by at least one of the inventors,
has been submitted to the Office, submission of a second executed declaration under 37 C.F.R.
§ 1.63 setting forth a different inventive entity will not act to correct the inventorship absent a
petition under 37 C.F.R. § 1.48(a). 37 C.F.R. § 1.48(f)(1). Answer (C) is incorrect.
Inventorship cannot by corrected by adding an inventor through the filing of a continued
prosecution application, rather a petition under 37 C.F.R. § 1.48 is required. 37 C.F.R. § 1.53(d)(4).
Q) Claims stand or fall together (4.00.28p)
28. Which of the following is true?
(A) On appeal of a rejection of ten claims to the Board of Patent Appeals and
Interferences, each appealed claim stands or falls separately as a result of
appellant pointing out differences in what the claims cover.
(B) The 2-month period for filing a petition mentioned in 37 CFR 1.181(f) is
extendable under 37 CFR 1.136(a).
(C) An examiner may enter a new ground of rejection in the examiner’s answer to an
applicant’s appeal brief.
(D) After filing a notice of appeal, an applicant is estopped from further prosecuting
the same claims in a continuation application.
(E) When desiring to claim foreign priority, the oath or declaration in a reissue
application must claim foreign priority even though the priority claim was made
in the original patent.
28. ANSWER: (E). See MPEP 1414 Content of Reissue Oath/Declaration and 37 CFR 1.175(a)
which states that reissue oaths/declarations must meet the requirements of 37 CFR 1.63,
including 1.63(c) relating to a claim for foreign priority. As to (A), 37 CFR 1.192(c)(7)
requires appellant to state that the claims do not stand or fall together. Appellant must
present appropriate argument under 37 CFR 1.192(c)(8) why each claim is separately patentable.
Merely pointing out differences in what the claims cover is not argument why the claims are
separately patentable. MPEP 1206, pages 1200-8 and 9. As to (B), see MPEP 1002 and the
sentence bridging pages 1000-2 and 1000-3. As to (C), 37 CFR 1.193(a)(2) prohibits the entry
of a new ground of rejection in an examiner’s answer. As to (D), continuation may be filed
during pendency of parent.
