Patent Prosecution Flashcards

Under 37 C.F.R. § 1.63, a patent application requires an oath or declaration from each inventor. Which statement about AIA-era declarations is correct?

Answer: An AIA-compliant declaration may be submitted after filing but before payment of the issue fee

Under AIA practice, an inventor's oath or declaration may be postponed and submitted any time before payment of the issue fee, provided a signed application data sheet is filed with the application.

What is the primary legal effect of filing a Request for Continued Examination (RCE) under 37 C.F.R. § 1.114?

Answer: It converts a final rejection into a new non-final Office Action and continues prosecution

An RCE continues prosecution in the same application after a final rejection by submitting a submission (e.g., an amendment) and a fee, prompting the examiner to issue a new non-final Office Action.

Which of the following actions constitutes inequitable conduct that may render a patent unenforceable?

Answer: Intentionally withholding material prior art from the USPTO during prosecution with deceptive intent

Inequitable conduct occurs when an applicant intentionally withholds material information (such as known prior art) from the USPTO with intent to deceive, rendering the patent unenforceable.

An applicant receives a rejection under 35 U.S.C. § 102(a)(1) based on a prior art patent. The examiner asserts the patent has an effective date before applicant's filing date. Under AIA, what must applicant show to disqualify this reference under § 102(b)(1)(B)?

Answer: That the reference's subject matter was publicly disclosed by the applicant before the reference's disclosure date

Under AIA § 102(b)(1)(B), a third-party prior disclosure is disqualified if the inventor had previously publicly disclosed the same subject matter before the third party's disclosure.

A Jepson-type claim is used in which of the following situations?

Answer: To distinguish improvements over a known prior art combination by placing the novel improvement in the characterizing clause

A Jepson claim format states the preamble as the prior art combination and then uses 'wherein the improvement comprises' to claim the novel element, acknowledging the prior art base.

Under 37 C.F.R. § 1.111, what must a proper response to a non-final Office Action include to avoid abandonment?

Answer: A reply that addresses every ground of rejection or objection raised by the examiner

37 C.F.R. § 1.111 requires a reply that distinctly and specifically points out the supposed errors in the examiner's action and addresses every ground of rejection and objection.

When an interference or derivation proceeding is declared by the USPTO, what does the derivation proceeding under AIA specifically determine?

Answer: Whether a named inventor derived the claimed invention from another inventor who filed first

AIA derivation proceedings (replacing interferences) determine whether a later-filed applicant derived the claimed invention from an earlier-filing inventor, rather than independently conceiving it.