International Patents Flashcards

Under the EPC, the 'Problem and Solution Approach' is used to assess:

Answer: Inventive step (non-obviousness)

The EPO's Problem and Solution Approach is a structured method for evaluating inventive step by identifying the closest prior art, the objective technical problem, and whether the solution would have been obvious.

A US patent practitioner representing a foreign client before the USPTO on a national phase application must comply with which set of rules?

Answer: USPTO rules and 37 C.F.R.

Once a PCT application enters the US national phase, it is subject to USPTO rules (37 C.F.R.) and US patent law regardless of the applicant's nationality.

Which of the following correctly describes a 'regional phase' under the PCT?

Answer: Entry into a regional patent office (e.g., EPO) that grants patents covering multiple member states

Regional phase entry means pursuing patent rights through a regional office such as the EPO, which can grant protection covering all designated EPC member states with a single grant.

Under PCT Rule 66.1, during Chapter II international preliminary examination, the applicant has the right to:

Answer: Amend the claims, description, and drawings before the written opinion becomes final

PCT Rule 66.1 gives applicants the right to submit amendments and arguments in response to the examiner's written opinion during Chapter II proceedings.

An international application filed under the PCT with the USPTO as receiving office must be filed in which language to be acceptable?

Answer: English only

Under PCT Rule 12.1, when the USPTO acts as receiving office, the international application must be in English.

Under 35 U.S.C. § 102(d) (pre-AIA), a US patent could be barred if a foreign patent issued more than:

Answer: 12 months before the US filing date

Under pre-AIA § 102(d), a US application was barred if a foreign patent granted on the same invention issued more than 12 months before the US filing date.

The Patent Prosecution Highway (PPH) is a bilateral/multilateral agreement that allows an applicant to request accelerated examination based on:

Answer: A favorable work product (allowable claims) from a partner office's examination

PPH lets applicants fast-track examination at a second office by sharing the positive results (allowable claims) from the first office's examination.