Patent & Trademark Filing Flashcards

In a patent infringement lawsuit, which defense asserts that the patentee surrendered certain claim scope during prosecution that cannot now be recaptured?

Answer: Prosecution history estoppel

Prosecution history estoppel prevents a patent owner from using the doctrine of equivalents to recapture subject matter relinquished through claim amendments or arguments made to the USPTO.

A trademark owner who allows widespread unlicensed use of its mark by third parties risks losing the mark through a doctrine called:

Answer: Abandonment

Under 15 U.S.C. § 1127, a mark is deemed abandoned when the owner fails to police it and it loses its significance as a source identifier through uncontrolled licensing or prolonged non-use.

The U.S. statutory term for a utility patent filed on or after June 8, 1995 is:

Answer: 20 years from the earliest effective filing date

Under 35 U.S.C. § 154, utility patents now have a term of 20 years from the earliest claimed U.S. non-provisional filing date, subject to terminal disclaimers and patent term adjustments.

Which ground for trademark cancellation has NO time limitation and can be raised at any point?

Answer: The mark has become generic

Genericness petitions for cancellation can be filed at any time under 15 U.S.C. § 1064 because a generic mark never functions as a source identifier and cannot be validly registered.

A provisional patent application must be converted into a non-provisional application within:

Answer: 12 months

Under 35 U.S.C. § 111(b), a provisional application automatically becomes abandoned 12 months after its filing date unless a corresponding non-provisional application is filed claiming its priority.

The USPTO's Trademark Electronic Search System (TESS) is primarily used by paralegals to:

Answer: Search existing registered marks and pending applications to assess conflicts before filing

TESS allows users to search the USPTO's trademark database for registered marks and pending applications to identify potential conflicts prior to filing a new application.

Which doctrine prevents a patent owner from asserting infringement against a buyer of a patented article that was first sold by or with the authority of the patent owner?

Answer: First sale doctrine / patent exhaustion

Under the patent exhaustion doctrine (Impression Products v. Lexmark, 2017), the patent owner's rights are exhausted upon the first authorized sale of a patented item, and the purchaser may use or resell it freely.