Patent Application Preparation & Filing Flashcards

An inventor files a nonprovisional utility application but forgets to include a sequence listing required for a claimed biotechnology invention. The USPTO sends a Notice to File Missing Parts. What is the consequence if the sequence listing was not in the application as filed?

Answer: The sequence listing must be submitted but any claims relying on it will not receive the original filing date

A sequence listing submitted after the original filing date cannot be given the benefit of the original filing date for claims that rely on the listing's content, because it constitutes new matter.

Under 37 CFR 1.57(b), an applicant may incorporate by reference a prior-filed U.S. patent application. Which statement correctly describes a limitation of this incorporation by reference?

Answer: Material incorporated by reference cannot be used to add new matter to the specification after filing

Under 37 CFR 1.57, incorporated material is considered part of the disclosure, but an applicant cannot later amend claims to add new matter that was only in the incorporated document and not in the application as filed.

An applicant submits a nonprovisional application with drawings showing a critical feature but the written description never mentions that feature. Under 35 U.S.C. § 112(a), what problem arises?

Answer: Claims covering that feature may lack written description support because drawings alone may be insufficient

While drawings are part of the disclosure, written description support generally requires that the specification text convey to a PHOSITA that the inventor possessed the claimed invention; drawings alone may be insufficient.

A practitioner is drafting claims for a mechanical device. The independent claim recites 'a widget comprising a frame, a lever, and a spring.' A dependent claim adds 'wherein the spring is a coil spring.' Under MPEP guidelines, what must be true of the dependent claim?

Answer: The dependent claim must incorporate by reference all limitations of the claim from which it depends

Under 35 U.S.C. § 112(d), a dependent claim incorporates by reference all limitations of the claim to which it refers, so it need not repeat them explicitly.

An applicant wishes to claim priority to a provisional application filed 11 months ago. The applicant files the nonprovisional today. Which statement about the priority claim is correct?

Answer: The priority claim is valid because the nonprovisional was filed within 12 months of the provisional

Under 35 U.S.C. § 119(e), a nonprovisional application may claim the benefit of a provisional application if filed within 12 months of the provisional's filing date.

During prosecution, an examiner objects to a claim as containing 'relative terminology' (e.g., 'substantially rigid'). Under 35 U.S.C. § 112(b), when is such terminology acceptable?

Answer: Relative terms are acceptable when the specification or prosecution history provides a standard for determining the scope of the term

Relative terms satisfy the definiteness requirement of § 112(b) when the specification, drawings, or prosecution history provide a clear standard by which the term's scope can be determined.

A practitioner files a nonprovisional application and realizes the filing receipt shows the wrong inventor listed. Under 37 CFR 1.48, how may this error be corrected?

Answer: A request to correct inventorship may be filed with a statement and the required fee before the patent issues

Under 37 CFR 1.48, inventorship may be corrected before the patent issues by filing a request identifying the correct inventors, a statement, and paying the required fee.