Jack's knife from Vietnam (not inventor)

Q) Jack and Jill in Vietnam (4.01.40a)

40. In June 1998, Jack and Jill, a married couple, are vacationing in Vietnam (not a WTO

country) when they encounter a man selling bamboo knives for cleaning fish. The particular

curvature of the bamboo both lends support to the knife to prevent it from bending and breaking

and facilitates cleaning inside the fish. Jill takes a picture of Jack with the knife cleaning the

fish. Subsequently, in November 1998, when Jack returns to the United States he begins to make

and sell an identical knife to the one seen in Vietnam. In July 1999, he files a patent application

claiming the nearly identical knife. Jack discloses no prior art during the prosecution of his

application and fails to mention the knife he saw in Vietnam. The examiner finds no prior art

similar to the claimed knife, and Jack is awarded a patent in December 2000. Meanwhile, Jill

divorces Jack, and associates with Sam. Unfortunately, Sam is penniless. To raise cash, Sam

and Jill begin selling a knife identical to the one Jack produces, only Sam and Jill make their

knife out of plastic. The knives of Sam and Jill sell like hotcakes. Jack sues for infringement.

Jill and Sam come to you for advice. Which of the following is not true?

(A) Jack is entitled to patent protection since Vietnam is not a WTO country and

evidence of the Vietnamese knife cannot be used against him to reject his patent

claims.

(B) Jack had a duty under 37 C.F.R. §1.56 to disclose his discovery of the bamboo

knife in Vietnam to the examiner during the original patent prosecution.

(C) Since the use in Vietnam was not in this country, it does not constitute a public

use bar under 35 U.S.C. § 102(b).

(D) If Jill’s attorney files a request for reexamination, it will be denied because the

picture is not a patent or printed publication.

(E) Although Jack marketed the invention before obtaining a patent, the patent claims

cannot be invalidated under 35 U.S.C. § 102(a) since Jack’s making and selling of

the knife cannot be used against him under 35 U.S.C. § 102(a).

40. ANSWER: (A) is the most correct answer. Answer (A) is not true since Jack did not invent

the knife, therefore he is not entitled to a patent. Jack derived the invention from another, and

the picture of Jack with the Vietnamese knife is evidence of derivation. 35 U.S.C. § 102(f);

MPEP § 2137. Answer (B) is correct in that Jack should have disclosed “all information

material to patentability,” including the existence of the Vietnamese knife, during the original

patent prosecution. (C) is correct in that to qualify as prior under 35 U.S.C. § 102(b), the use

must be in this country. (D) is correct in that a request for reexamination must be based upon

patents and printed publications. (E) is correct in that public use derived from the inventor’s

own work cannot be used against the inventor under 35 U.S.C. § 102(a). MPEP § 2132.