Patent Law Fundamentals Flashcards

Under 35 U.S.C. § 112(f), what is the requirement for a means-plus-function claim element to be valid and infringed?

Answer: The accused device must use the same structure or its equivalent as disclosed in the specification

Under § 112(f), a means-plus-function claim covers the structure disclosed in the specification for performing the recited function, plus its structural equivalents.

What is the 'on-sale bar' under 35 U.S.C. § 102(a)(1) of the AIA?

Answer: Prior art created when an invention is offered for sale more than one year before the effective filing date

The on-sale bar renders a patent invalid if the claimed invention was on sale in the United States before the effective filing date (with a one-year grace period for the inventor's own sales under the AIA).

Which of the following claim types is used to protect the ornamental appearance of a functional article?

Answer: Design patent claim

Design patents under 35 U.S.C. § 171 protect the ornamental or aesthetic appearance of a functional article, as distinguished from utility patents which protect functional aspects.

Under MPEP § 2111, what is the 'broadest reasonable interpretation' (BRI) standard?

Answer: The widest interpretation consistent with the specification that a person of ordinary skill in the art would give to the claim language

The BRI standard requires examiners to give claim terms their broadest reasonable interpretation consistent with the specification, as understood by a person of ordinary skill in the art.

A patent application claims a pharmaceutical compound. The specification describes the compound's structure but contains no data showing it works. What type of rejection is most likely?

Answer: Lack of utility rejection under § 101

A claim to a pharmaceutical compound without any data or reasoning showing it works fails the utility requirement of § 101, particularly the 'specific and substantial' utility standard for chemical compounds.

Under 35 U.S.C. § 120, what is required for a continuation application to benefit from the filing date of a parent application?

Answer: The continuation must be filed while the parent application is pending and must disclose the claimed invention

Under § 120, a continuation application must be filed while the parent is pending and must have at least one common inventor, with the claimed invention fully disclosed in the parent application.

What is the legal significance of 'inequitable conduct' in patent prosecution?

Answer: It renders the entire patent unenforceable if intentional material misrepresentation or omission before the USPTO is proven

Inequitable conduct, if proven by clear and convincing evidence showing both materiality and deceptive intent, renders the entire patent unenforceable under the doctrine established in Therasense, Inc. v. Becton, Dickinson & Co.