ACP Patent & Trademark Filing 2 — Questions and Answers
Question 1: What is the purpose of a Patent Cooperation Treaty (PCT) application?
- To grant an international patent valid in all member countries
- To allow an applicant to seek patent protection simultaneously in multiple countries with a single filing (Correct answer)
- To permanently assign patent rights to a foreign government
- To register a trademark in multiple jurisdictions at once
Correct answer: To allow an applicant to seek patent protection simultaneously in multiple countries with a single filing
A PCT application lets an inventor file one international application that preserves the right to pursue national-phase patents in PCT member states.
Question 2: During USPTO examination, an Office Action that finally rejects claims is called a:
- Non-final Office Action
- Final Office Action (Correct answer)
- Advisory Action
- Notice of Allowance
Correct answer: Final Office Action
A Final Office Action closes prosecution on the merits and limits the applicant's responses to specific options such as an RCE or appeal.
Question 3: A trademark that consists solely of a surname is considered:
- Inherently distinctive and immediately registrable
- Primarily merely a surname and requires acquired distinctiveness for registration (Correct answer)
- Ineligible for registration under any circumstances
- Generic and therefore unprotectable
Correct answer: Primarily merely a surname and requires acquired distinctiveness for registration
Under 15 U.S.C. § 1052(e)(4), a mark that is primarily merely a surname is refused registration on the Principal Register absent proof of secondary meaning.
Question 4: Which post-grant USPTO proceeding allows a third party to challenge patent validity based solely on prior art patents and printed publications?
- Ex parte reexamination
- Inter partes review (IPR) (Correct answer)
- Post-grant review (PGR)
- Supplemental examination
Correct answer: Inter partes review (IPR)
Inter partes review (IPR) is a trial proceeding before the PTAB that permits challenges only on grounds of anticipation or obviousness using patents or printed publications.
Question 5: What does 'patent prosecution' refer to in U.S. patent practice?
- Criminal enforcement of patent infringement
- The process of negotiating and amending claims with the USPTO during examination (Correct answer)
- Filing a lawsuit for patent infringement in federal court
- Licensing a patent to third parties
Correct answer: The process of negotiating and amending claims with the USPTO during examination
Patent prosecution encompasses all proceedings before the USPTO from initial filing through allowance or abandonment, including responding to Office Actions.
Question 6: The Madrid Protocol allows trademark applicants to:
- File a single international trademark application based on a home-country application or registration (Correct answer)
- Obtain an automatically valid trademark in all 197 WIPO member states
- Convert a U.S. registration into a global patent
- Skip the examination process in designated countries
Correct answer: File a single international trademark application based on a home-country application or registration
Through the Madrid System, a U.S.-based applicant can file one international application with WIPO, designating member countries where protection is sought.
Question 7: A design patent protects:
- The functional aspects of a manufactured article
- The ornamental or aesthetic appearance of a manufactured article (Correct answer)
- The process used to manufacture an article
- The composition of matter used in an article
Correct answer: The ornamental or aesthetic appearance of a manufactured article
Design patents under 35 U.S.C. § 171 cover the new, original, and ornamental design for an article of manufacture, not its functional features.
ACP Patent & Trademark Filing 2
What is the purpose of a Patent Cooperation Treaty (PCT) application?