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[superman10]

Hi, I'm studying for the patent bar and this is a question from PLI's PatWare CD:

W and Y are both employees of Megagiant corporation, and each have assigned the standard
Megagiant employment agreement requiring them to assign any invention they make to their
employer.  On March 23, 1995 W conceived of a new golf ball which is reduced to practice at
Megagiant's test golf course near Tucson, AZ. The attorneys for Megagiant prepared a patent
application properly claiming W's invention and the application was filed in the Patent Office
on January 14, 1996 together with an executed assignment of the application to Megagiant. The
W patent issued on December 16, 1997.  Independently and unknown to W, Y conceived in June
of 1996 of a golf ball which is similar but slightly different from W's invention. In violation of
her agreement, on February 23, 1998 Y filed an application pro se on her invention before
reducing it to practice, and without telling Megagiant. The Examiner properly rejects the
application as obvious under 102(e)/103 citing the W patent. Which of the following is true:

A.   The rejection can be overcome by establishing that W and Y were each under an obligation to
assign their respective inventions to Megagiant at the time the invention was made.

B.   The rejection cannot be overcome and Y must abandon her application.

I chose A, but the correct answer is B. However, in the explanation of the answer, it says, "B) is correct. The W patent has a 102(e) date prior to the earliest date of invention that Y can
establish, and thus the rejection cannot be overcome unless common ownership can be shown.
The 102(f) and 102(g) exception embodied in 35 USC 103 now applies to 102(
e) rejections.
The exception still attaches to the respective inventions of W and Y despite Y's dishonesty and
independent filing but only if the Patent Office is made aware of the facts. "

Doesn't that just make it seem like A in fact *is* the correct answer??

[DogDayPM 9er9er9er]

The AIPA changes only applied to apps filed after 29 Nov. 1999 when it took effect.  I do agree with you that PLI's explanation seems gorked.  Or I just fail to understand it, as sometimes happens.

Not sure why PLI is giving you current questions about patent apps filed in `96 and granted in `97 which fall under the old law, unless it's intended to indicate that a current practitioner might still run into the situation in a long pending second app.  And of course it's useful to know the older law when reviewing file histories for right to practice product reviews.

Brings up another question I've wondered about but never run into.  Let's bring the dates forward such that all filings are after 29 Nov 1999 and so app#2 falls under the AIPA 103(c) exception at least with respect to date.

Under the fact pattern, it seems the thieving inventor Y can argue around the 103 via 102(e) rejection on the basis of her obligation which she apparently has no intention of honoring.

Is this a good result?