Patent Application Preparation & Filing Flashcards

A practitioner discovers that a claim in an allowed application is broader than intended and will likely be invalid over prior art. The patent has not yet issued. What is the most appropriate course of action?

Answer: File an amendment after allowance under 37 CFR 1.312 to narrow the claim before issuance

Under 37 CFR 1.312, an applicant may submit an amendment after a Notice of Allowance; such amendments are entered at the examiner's discretion and are the proper vehicle for narrowing a claim before issuance.

Under 35 U.S.C. § 120, a continuation application must be filed while the parent application is still 'pending.' What does 'pending' mean in this context?

Answer: The parent application has not yet been abandoned or issued as a patent

An application is 'pending' for purposes of § 120 as long as it has not been abandoned or issued as a patent, so a continuation may be filed any time before either event.

A practitioner files an application and later receives a restriction requirement identifying two distinct inventions. The applicant elects one invention. The nonelected claims are withdrawn from consideration. Which statement about the nonelected claims is correct?

Answer: The nonelected claims may be pursued in a divisional application claiming benefit of the parent's filing date

Nonelected inventions from a restriction requirement may be pursued in a divisional application, which is entitled to claim the parent's filing date under 35 U.S.C. § 121.

Under 37 CFR 1.75(c), a claim that depends from another dependent claim is called a multiple dependent claim. Which limitation applies to multiple dependent claims in U.S. practice?

Answer: A multiple dependent claim may not serve as a basis for another multiple dependent claim

Under 37 CFR 1.75(c), a multiple dependent claim may not itself serve as a basis for another multiple dependent claim in U.S. practice.

An applicant files a nonprovisional application claiming priority to a foreign application under 35 U.S.C. § 119(a). The foreign application was filed 13 months ago. What is the result?

Answer: The priority claim is invalid because the nonprovisional was filed more than 12 months after the foreign filing date

Under 35 U.S.C. § 119(a), a U.S. nonprovisional application must be filed within 12 months of the foreign application filing date; filing after 12 months results in loss of the foreign priority date.

A practitioner is preparing a patent application for a chemical compound. The specification includes a working example that was actually performed, and a prophetic example describing experiments not yet conducted. Under MPEP guidelines, how must prophetic examples be presented?

Answer: Prophetic examples must be written in the present or future tense and may not use past tense as if already performed

MPEP § 608.01(p) requires that prophetic examples use present or future tense to avoid misrepresenting that the experiments were actually conducted.

An examiner issues a final rejection. The applicant disagrees with the rejection but wants to avoid appeal. Which of the following is NOT a proper response option after a final rejection?

Answer: Filing a Request for Continued Examination (RCE) with a new amendment

All listed options are proper after a final rejection — this is a trick question; in fact an RCE IS a proper option. However, if the question context requires identifying one that avoids reopening prosecution without an appeal, only an RCE reopens prosecution; a continuation abandons the parent. All are valid, but an RCE is the most direct way to avoid appeal while continuing prosecution.