Patent Prosecution Flashcards

What does the term 'prosecution laches' mean in patent law?

Answer: Unreasonable and unexplained delay by an applicant in prosecution that prejudices accused infringers

Prosecution laches is an equitable defense that can render a patent unenforceable if the applicant unreasonably delayed prosecution in a way that prejudices accused infringers.

Which of the following correctly describes the 'broadest reasonable interpretation' (BRI) standard used by the USPTO during patent examination?

Answer: Claims are given their broadest reasonable interpretation consistent with the specification as understood by a person of ordinary skill in the art

Under BRI, the USPTO gives claims their broadest reasonable interpretation consistent with the specification, which is broader than the claim construction applied in litigation.

Under 37 C.F.R. § 1.75(c), the USPTO requires that claims be presented in a specific order. What is this order?

Answer: Independent claims first, followed by dependent claims in order of dependency

37 C.F.R. § 1.75(c) requires that claims be presented with each dependent claim referencing and further limiting a prior claim, grouped together to facilitate examination.

A patent application's claims are rejected under 35 U.S.C. § 101 as directed to an abstract idea. Under the Alice/Mayo framework, what must the applicant demonstrate to overcome this rejection?

Answer: That the claims include an additional element or combination of elements that amounts to significantly more than the abstract idea itself

Under the Alice/Mayo two-step framework, to overcome a § 101 rejection the claims must include additional elements that amount to significantly more than the abstract idea, providing an inventive concept.

What is the significance of a 'continuation-in-part' (CIP) application in patent prosecution?

Answer: It introduces new matter not disclosed in the parent application, with new claims supported by the new matter receiving only the CIP filing date as their priority date

A CIP adds new matter not in the parent; claims supported only by the new matter get the CIP filing date as their effective filing date, while claims fully supported by the parent get the parent's filing date.

During prosecution, an examiner issues an objection to the drawings under 37 C.F.R. § 1.83 because a feature recited in the claims is not shown in the drawings. How should the applicant respond?

Answer: Submit corrected or new drawings that show the claimed feature and comply with formal requirements

37 C.F.R. § 1.83 requires that drawings show every feature specified in the claims; the correct response is to file corrected drawings depicting the claimed feature.

Under 37 C.F.R. § 1.321, a terminal disclaimer in response to an obviousness-type double patenting rejection must include which of the following provisions?

Answer: A provision that the patent shall be enforceable only for the period the patent is commonly owned with the conflicting application or patent

A terminal disclaimer must include a provision that the patent will be enforceable only during the period it is commonly owned with the reference patent or application, ensuring the patents do not issue to different owners.