ACP Patent & Trademark Filing 3 — Questions and Answers
Question 1: Under the America Invents Act (AIA), the U.S. patent system changed to a:
- First-to-invent system
- First-inventor-to-file system (Correct answer)
- Best-mode-only system
- First-to-use system
Correct answer: First-inventor-to-file system
The AIA, effective March 16, 2013, converted the U.S. from a first-to-invent system to a first-inventor-to-file system to harmonize with most foreign patent systems.
Question 2: What is a continuation-in-part (CIP) patent application?
- An application that repeats all claims of a parent application verbatim
- An application that adds new subject matter to a prior pending application while retaining some of the original disclosure (Correct answer)
- A divisional application filed after a restriction requirement
- An appeal of a final rejection to the PTAB
Correct answer: An application that adds new subject matter to a prior pending application while retaining some of the original disclosure
A CIP adds new matter not disclosed in the parent; claims directed to new matter receive the CIP's filing date, while claims supported by the original disclosure retain the parent's priority date.
Question 3: Which trademark filing basis requires that the mark is already in use in interstate commerce at the time of filing?
- Section 1(b) — Intent-to-use basis
- Section 1(a) — Use in commerce basis (Correct answer)
- Section 44(e) — Foreign registration basis
- Section 66(a) — Madrid Protocol basis
Correct answer: Section 1(a) — Use in commerce basis
A Section 1(a) application requires the applicant to have already used the mark in commerce on or in connection with all listed goods or services.
Question 4: A patent claim that reads directly on a prior art reference is said to be:
- Obvious
- Anticipated (Correct answer)
- Indefinite
- Enabled
Correct answer: Anticipated
Anticipation under 35 U.S.C. § 102 occurs when every element of a patent claim is found in a single prior art reference.
Question 5: A trademark becomes 'incontestable' under the Lanham Act after being on the Principal Register for:
- 1 year with continuous use
- 5 years with continuous use and a Section 15 declaration filed (Correct answer)
- 10 years with continuous use
- At the time of initial registration
Correct answer: 5 years with continuous use and a Section 15 declaration filed
Under 15 U.S.C. § 1065, a registered mark may become incontestable after five years of continuous use following registration if a Section 15 declaration is filed.
Question 6: What is the statutory bar under 35 U.S.C. § 102(b) (pre-AIA) that prevents patenting if the invention was publicly disclosed more than one year before the U.S. filing date?
- Best-mode requirement
- On-sale bar and public use bar (Correct answer)
- Written description requirement
- Enablement requirement
Correct answer: On-sale bar and public use bar
Pre-AIA § 102(b) bars a patent if the invention was on sale or in public use in the U.S. more than one year before the patent application filing date.
Question 7: Which document is filed to formally record an assignment of a patent or patent application with the USPTO?
- Petition to Make Special
- Recordation Cover Sheet with the assignment agreement (Correct answer)
- Information Disclosure Statement
- Declaration of Priority
Correct answer: Recordation Cover Sheet with the assignment agreement
An assignment is recorded at the USPTO by submitting a Recordation Cover Sheet along with the executed assignment document, creating constructive notice of the transfer.
ACP Patent & Trademark Filing 3
Under the America Invents Act (AIA), the U.S. patent system changed to a: