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Earlier this week we posted our sixth Patent Bar Review Question of the Week. Do you know the answer? As you may recall, this week’s question was question number 32 on the April 2000 afternoon exam session. In this post, we’ll give you the original question, the USPTO’s Model Answer, and detailed commentary and analysis from Patent Resources Group’s Academic Director Paul Gardner. This added information will help you further understand and prepare for questions that may be asked on a future Patent Bar exam.
Question of the Week No. 6 (Q and A No. 32 from April 2000 Exam, Afternoon Session):
QUESTION: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.
Patent Office’s “Model Answer”
ANSWER: (C) is the most correct answer. The method of use is neither disclosed nor suggested by the prior art. 35 USC §§102(b) and 103.
(A) is incorrect because the process of using the composition as a fishing lure is not disclosed in the prior art, and the PTO guidelines support such a claim in these circumstances. MPEP §2112.02.
(B) is incorrect because the claim is anticipated. 35 USC §102(b).
(D) is incorrect because the composition is anticipated. 35 USC §102(b).
(E) is incorrect because filing a Disclosure Document does not provide the invention with protection afforded by the PTO. The Disclosure Document may be relied on only as evidence of its content, and is not a patent application. MPEP §1706.
Paul Gardner’s Commentary
This question, and it’s most correct answer, (C), exemplifies the case law holding that a new use of an old composition may be patentable in if presented in the form of a method claim reciting the new method of using the old composition. The dispositive patentability issue is whether the claimed method meets the non-obviousness requirement of 35 U.S.C. Section 103(a). While the factual scenario does not present enough information to determine whether the method of using the composition as a fishing lure is or is not obvious, (C) is the “most correct” answer because the other four options are clearly incorrect.
(A) is clearly incorrect as MPEP Section 2112.02 sets forth in a section headed “PROCESS OF USE CLAIMS – NEW AND UNOBVIOUS USES OF OLD STRUCTURES AND COMPOSITIONS MAY BE PATENTABLE.”
(B) and (D) are also clearly incorrect because, as the facts set forth, “the client’s composition is a well known gel … that has been in public use for 5 years,” albeit for a different purpose.
(E) is incorrect because, as explained in the Patent Office’s Model Answer, a Disclosure Document is only useful for corroborating conception of a later claimed invention; it does not provide any protection.
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This post was edited by Chris Jagalla.