The patent agent examination 2016 was held last month on November 27. The exam comprised two papers, one objective type (Paper-I) and other descriptive type (Paper-II). Mr. Muthu SenthilKumar has sent us a copy of the Paper-I wherein he has marked the correct answers and mentioned the relevant legal provisions. We have uploaded it on our website. Those interested, can view it here.
Thanks to Mr. Muthu SenthilKumar for sending this to us.
1) Regarding Q 44 of set ‘A’ (Application for examination)- If A is true and first inventor then, why A can’t file request for examination?
2) Regarding Q 45 of set ‘A'(Oppose the amendment)- If dates are not given, so amendment can be possible within one year, so post-grant opposition (opposition to any part of patent and never restrict even in case of amendment) option is open, Why X can’t file form-7?
Dear Prashant
Regarding Q 44 last option is the correct answer i.e. “Another interested person Z” .
Since X is one of the applicant and that also holds true for Y.
A has assigned his rights to X and Y and hence he is not an applicant.
Please have a look on section 11B (1) which focuses on the eligibility to request for examination.
11B. Request for examination.—(1) No application for a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within the prescribed period.
Hope this answers your question.
Regards
Shaklain
But section 6 defines applicant as – 1. true and first inventor, 2. Assignee 3. Legal representative of deceased.
So applying section 11B applicant here includes inventor, assignee, interested person, hence answer is a, b,c,d…unfortunately even I wrongly excluded inventor in my answer script, but later realised that inventor is also an applicant…but this question could be interpreted in multiple version and wonder what is patent office version…
For Q.44. Sec 11B(1) clearly says ‘No application shall be examined unless the applicant or any other interested person makes a RFE’.
Since A is an inventor for that patent application and he has assigned his rights to his applicants X and Y. Further he cannot be a interested person for that patent application.
@ Muthu Senthilkumar: Thanks for spending your precious time, taking all efforts to provide us Paper-I Answers
Regarding: For Q.44:
Sec 11B(1) clearly says ‘No application shall be examined unless the applicant or any other interested person makes a RFE’.
Definitions of an “Interested person”
Section 2(1)(t) “person interested” includes a person engaged in, or in promoting, research in the same field as that to which the invention relates;
You mean to say that “true and first inventor” who is obviously a person engaged in, or in promoting, research in the same field as that, to which the invention relates, can’t be interested person. Not convincing and plain legal language never restricts for such consideration, or further there is no supportive precedence, case law or guidance. There are some case laws bases on following situations where “interested person” filed post grant opposition.
Situation 1: A left the company where he working with X and Y and carrying further research in same field.
Situation 2: A transferred all rights regarding invention to X and Y and carrying further research in same field.
Dear Prashant
Form 7 is for post grant opposition and not for amendments in a patent. Hence option b is the correct answer.
Regards
Shaklain
@SHAKLAIN KHURSHID: Q.41- X decided to oppose the amendment after grant to the description of Patent obtained by his rival Y. So X decided to oppose the amendment, So kindly reread the Question 44 and my query again.
Section 25 (2)- Post-grant opposition never mention that you can’t oppose a amended patent.
Prashant: I would tend to agree with Shaklain. I think we need to make a distinction here. There is a difference between opposition to grant and opposition against “amendment to the description”. In opposition you can only raise the grounds that are mentioned in the act, but no other grounds. Since opposition to amendment after grant is not explicitly mentioned as one of the grounds of opposition, and form 14 has been specifically provided to take care of oppositions against amendment to the description, it looks more plausible to use form 14 than form 7.
Regarding Q 44 : Also–
Section 2(1)(t) “person interested” includes a person engaged in, or in promoting, research in the same field as that to which the invention relates;
So true and First inventor can’t be a “person interested”?
Do re-look Question 19 (in set A). I feel option A might be correct.
Do refer Sec 53(1), the term of every patent granted shall be twenty years from the date of filing. In case of international applications (PCT) shall be twenty years from the international filing date.
We have to calculate the term from the date of filing not from the priority date even though it is a conventional application.
1) For Convention Application which is not Divisional Application or application for Patent of Addition: Expiry is 20 years from the date of filing in India and not from the date of priority.
2) For Convention Divisional Application: Expiry is 20 years from the date of filing of parent Convention Application in India.
3) For Convention Patent of Addition: Expiry of Patent of Addition granted for Conventional Application is equal to term of Patent in respect of main invention.
4) For PCT Application which is not divisional application or Patent of Addition: Expiry is 20 years from the International filing date/PCT date and not from priority date or Indian filing date.
5) For PCT Divisional Application: Expiry is 20 years from the International filing date/ PCT date of Parent Application and not from priority date or Indian filing date.
6) For PCT Patent of Addition: Expiry of Patent of Addition granted for PCT Application is equal to term of Patent for main invention.
Only one scenario it can be calculated from priority date, when PCT filing done one same day that of priority application.
Prashant: I share the same concern as you wrt to term of patent. If we try to interpret relevant sections in the patent act one may tend to understand that provisional filing date (priority date) is also date of filing. So, the impact of that would be an Indian applicant filing a provisional and then CS will have 20 years running from provisional filing date where as a PCT/convention applicant or an Indian applicant entering via PCT in India will have 20 year term running from international filing date/non provisional filing date.
I always calculate 20 year patent term from the date of filing and not the provisional filing date (err on the side of caution). I have seen on Indian patent register for Indian applicants which have filed provisional and then CS, their 20 year patent term is calculated from date of filing of provisional application. This at least seems to be the understanding of Indian patent office. I think this is subject to challenge as an Indian applicant loses one year term compared to others.
The government should do away with the format of certain questions which emphasize on mere ‘by hearting’ and rot learning- sample the questions where the sections are to be remembered juts as a number! They should go to comprehension and understanding more.
Q. 34 of Set A. is confusing:
because a patent of addition can be filed ever after grant of the main invention’s patent. Accordingly, the statement is false.
Q. 34 of Set A. is confusing:
because a patent of addition can be filed even after grant of the main invention’s patent.
Accordingly, the statement is false.
Srinivas D: For Q 34 both statements are false.
There is no such condition that patent of addition should be filed before grant of main invention as you pointed out. Secondly, main invention is granted before the grant of POA, not after. So, answer should be C.
For your kind clarification, please read the following statements.
1. Application for patent of addition shall be made before the grant of patent of main invention – True
2. Application for patent of addition shall be made only before the grant of patent of main invention – False
Muthu: I tend to disagree with you for the first statement. As I mentioned there is no specific condition that POA “shall” be made before the grant of patent of main invention. It can be made, not necessary that it “shall” be made. At the same time it can also be made after the grant of main invention. Because statement 1 uses “shall” i would mark it is false since it does not contemplate another situation.
Yes both are false in Q.34. Answer should be C.
Patent of addition can be filed anytime. The only condition is date of filing of the application was the same or later than the date of filing of the application in respect of the main invention.
Please amend the answer as “C” for Q.34.
A patent of addition cannot be filed at “anytime”. it can be filed either when the parent application is pending for being granted or when the term of 20 years is not expired after the patent is granted.
Prashant: I see the point you are driving wrt Q44 whether A, who is a true and first inventor can be a person interested. There is no statutory limitation why he cannot be as you have also pointed out. But let us just take statement in question as prima facie correct (A is mentioned in the question as true and first inventor – that is the hat he is wearing in the question). So can a true and first inventor file RFE. The answer is no. So X, Y, & Z should be correct. The ambiguity arises when we try to read something more in the question – interpret. If we take the statements as true we have clear answer.
I do not know what is the thinking of patent office. I do not think they have released the official key to answers. that will clarify these doubts.
1) As act never restrict true and inventor from filing RFE and there is no ambiguity interpretation, and I don’t think patent office ever object any true and first inventor from filing RFE.
2) Patent office states that, Part C- questions with more than one option correct and itself motivates to think for all possible correct answer fit into statue. Same is applicable for amendment related question of Section ‘C’. If question is from Section ‘A’ than I can understand, but it from ‘C’ and all justifications are without legal support and are not convincing.
As you suggests, there is nothing that stops one from looking at all possible scenarios. Let us extend the logic of “true and first inventor” as also “person interested”. If that were the case, then he becomes entitled to file PG opposition as well as revocation against his own invention. This will be plain mischief (on one hand you claim to have invented something and on the other hand you claim that it is not an invention!). If this mischief were to continue an inventor/applicant can file PG opposition or revocation against his own invention. That should not be the case, though the statute is silent, but that certainly can’t be the intent of the statute. At this stage, I would still hold on to my view upon my overall interpretation as I find it more logical to understand “true and first inventor” under a plain meaning rather than trying to offer an interpretation which will lead to other complexities as contemplated above.
I would be happy to be referred to the case laws, as you seem to suggest in an earlier post, which entitles an inventor/proprietor to oppose/revoke his own patent by virtue of being a person interested.
That apart, there are few ambiguous questions, for example Q 39, the answer being suggested is “a” (First statement as “true” and second statement as “false”, which apparently looks correct). But under certain circumstances the second statement can also be true. Similarly Q12 also has some ambiguity how you look at it (as is being pointed out in some messages).
Let us wait for patent office to release key then we will know what their position is!
Please see Q12, I feel answer is D
Yes, I too feel answer is D, for Q.12
because there is no clarity on “special circumstances” w.r.t. Form 25. So, how the option B is right ?
I feel option C is correct for Q.25 of Set A.
Q. 38
1. is false (request can be made only before grant of patent; but not during the life of patent)
2. is true
therefore, Answer is B.
Please provide the answers for Patent Agent Examination 2016 Paper-II
Dear All kindly check the answer for Q 44 from Indian patent office site, regarding X and Y make a patent application…..The application should be examined when (a) X files RFE, (b) Y files..(c) A files and (d) Z files.
All are correct as per patent office.