Patent Law Fundamentals Flashcards

Under 35 U.S.C. § 102, which event would trigger a one-year grace period for the inventor to file a patent application?

Answer: The inventor publicly discloses the invention at a trade show

Under the AIA, an inventor's own disclosure triggers a one-year grace period under 35 U.S.C. § 102(b)(1)(A), allowing the inventor to file within one year of that disclosure.

What is the statutory time limit for filing a reply to a non-final Office Action from the USPTO?

Answer: Three months (extendable to six months with fees)

Under 37 C.F.R. § 1.134, applicants have three months to reply to a non-final Office Action, extendable up to six months upon payment of extension fees.

Which doctrine allows a patent owner to recover damages from a party who sells a component specifically designed for use in a patented combination?

Answer: Contributory infringement

Contributory infringement under 35 U.S.C. § 271(c) imposes liability on one who sells a component with no substantial non-infringing use, knowing it is especially made for a patented combination.

Under the America Invents Act (AIA), what type of proceeding allows a third party to challenge the validity of an issued patent based solely on prior art patents and printed publications?

Answer: Inter partes review (IPR)

Inter partes review (IPR) under 35 U.S.C. §§ 311-319 allows third parties to challenge patent validity based only on prior art patents and printed publications after nine months from issuance.

What is the purpose of a restriction requirement issued by a USPTO examiner?

Answer: To require the applicant to elect one of several distinct inventions for examination

A restriction requirement under 35 U.S.C. § 121 requires the applicant to elect one distinct invention for examination when the application contains claims to two or more independent and distinct inventions.

Under 35 U.S.C. § 119(e), what is the deadline for filing a nonprovisional application claiming priority to a provisional application?

Answer: One year from the provisional filing date

A nonprovisional application must be filed within 12 months of the provisional application's filing date to claim the benefit of that earlier filing date under 35 U.S.C. § 119(e).

Which of the following best describes 'prosecution history estoppel' in patent law?

Answer: A limitation on the doctrine of equivalents based on arguments or amendments made during prosecution

Prosecution history estoppel prevents a patent owner from using the doctrine of equivalents to recapture subject matter that was surrendered through claim amendments or arguments during prosecution.