Patent Resources Group is pleased to present another installment in the Patent Bar Review Question of the Week series. This week’s question was number 32 on the April 2000 afternoon exam session. Be sure to return at the end of the week for the USPTO’s Model Answer along with detailed commentary and further analysis by PRG’s Academic Director Paul Gardner.
If you’re new to our series please check out our previous installments here:
- Question of the Week #1 Roundup
- Question of the Week #2 Roundup
- Question of the Week #3 Roundup
- Question of the Week #4 Roundup
- Question of the Week #5 Roundup
Question of the Week No. 6 (Q and A No. 32 from April 2000 Exam, Afternoon Session):
Your client has asked you to determine whether his invention is patentable. The client developed a fishing lure made of a composition that is so effective that a fisherman need wait only a few minutes to lure fish to a hook or net. Your client purchased the material and cut it with a knife into a fishing lure. Your client does not know how to make the composition. Upon conducting a prior art search, you find that the client’s composition is a well known gel used in shoes that has been in public use for 5 years. The prior art does not disclose the use of the composition as a fishing lure. Which of the following is the most appropriate advice to give the client?
(A) Explain that it would be impossible for any claims to the process of using the composition as a fish lure to be allowed under the current PTO guidelines.
(B) File a U.S. patent application (and required fees) claiming the composition.
(C) File a U.S. patent application (and required fees) claiming a method of using the composition as a fishing lure.
(D) File a provisional patent application (and required fees) directed only to the composition to gain a competitive advantage for one year. Within one year of filing the provisional application, file a nonprovisional application claiming the composition.
(E) File a Disclosure Document (and required fee) to obtain a document from the PTO showing that the invention is registered with and protected by the PTO.
Don’t forget to visit us at the end of the week to read the USPTO’s Model Answer which has been modified to accommodate Rules and MPEP changes that have been made since the question was first released as well as Mr. Gardner’s detailed commentary and analysis.
For more information on preparing for the Patent Bar, please see our Patent Bar Review Course homepage, where you can get information on upcoming dates and locations for the course, including New York in September, San Francisco in November, and Dallas in December. If you aren’t able to attend in person, you can even take the review courses via extensive home study DVD course materials.
No matter how you take the course, you’ll receive thousands of dollars of study material and software, an exceptional value. The PRG Patent Bar Review Course is the authoritative Bar Review course designed to get you the best results.
This post was edited by Chris Jagalla.