Patent Prosecution Flashcards

An applicant wishes to claim priority to a previously filed provisional application. What is the deadline to file the non-provisional application claiming that priority?

Answer: 12 months from the provisional filing date

Under 35 U.S.C. § 119(e), a non-provisional application claiming the benefit of a provisional must be filed within 12 months of the provisional application's filing date.

Which of the following interview types is NOT generally permitted during ex parte prosecution before the USPTO?

Answer: Interview involving a third-party competitor to discuss claim scope

Ex parte prosecution is between the applicant and the USPTO only; third-party competitors have no right to participate in prosecution interviews.

Under 37 C.F.R. § 1.56, who owes the duty of candor to the USPTO during patent prosecution?

Answer: Each individual associated with the filing and prosecution of a patent application

37 C.F.R. § 1.56 imposes a duty of candor on each individual associated with the filing or prosecution of a patent application, including inventors, attorneys, and agents.

A patent applicant receives a Notice of Allowance. Within what time period must the issue fee be paid to prevent abandonment?

Answer: 3 months from mailing date

Under 37 C.F.R. § 1.311, the issue fee must be paid within 3 months from the date of the Notice of Allowance to prevent the application from going abandoned.

Which of the following claim formats is used to claim a computer-implemented invention as a combination of software and hardware, often associated with 35 U.S.C. § 112(f)?

Answer: Means-plus-function claim

Means-plus-function claims under 35 U.S.C. § 112(f) allow claiming a function performed by a 'means,' interpreted to cover the disclosed structure and equivalents.

During prosecution, an examiner makes a double patenting rejection. Which type of double patenting rejection CANNOT be overcome by filing a terminal disclaimer?

Answer: Statutory double patenting (same invention)

Statutory (same-invention) double patenting under 35 U.S.C. § 101 cannot be overcome by a terminal disclaimer because it is a true statutory bar; only obviousness-type double patenting is overcome with a terminal disclaimer.

An application is rejected under 35 U.S.C. § 112(a) for failing to satisfy the written description requirement. Which of the following would be the BEST response?

Answer: Amend the claims to be fully supported by the original disclosure and argue support in the specification

The proper response to a § 112(a) written description rejection is to amend the claims so they are supported by the as-filed specification and to point to that supporting disclosure in the remarks.