Patentability Requirements & Procedures Flashcards

Under the AIA, which of the following correctly describes the 'prior commercial use' defense under 35 U.S.C. § 273?

Answer: It is available to any entity that commercially used the process or machine at least 1 year before the effective filing date

The prior commercial use defense under § 273 protects anyone who commercially used the subject matter at least 1 year before the effective filing date, but it is a personal defense, not a patent invalidation.

Which statutory category under 35 U.S.C. § 101 does NOT explicitly appear in the statute?

Answer: Software

§ 101 recites process, machine, manufacture, and composition of matter — software is not explicitly listed and its eligibility depends on whether it falls within these categories.

Under MPEP § 2131, a prior art reference anticipates a claim only if it discloses every element of the claim:

Answer: Either explicitly or inherently in one reference

Anticipation requires that every claim limitation be disclosed, either explicitly or inherently, in a single prior art reference.

A patent claim recites 'a widget comprising element A, element B, and element C.' An accused product has elements A, B, C, and D. Under literal infringement analysis, the accused product:

Answer: Infringes because 'comprising' is an open-ended transition

The open-ended term 'comprising' means the claim covers the listed elements plus additional elements, so having element D does not avoid infringement.

Under 35 U.S.C. § 119(e), a nonprovisional application claiming priority to a provisional application must be filed within how many months of the provisional filing date?

Answer: 12 months

A nonprovisional claiming § 119(e) priority must be filed within 12 months of the provisional's filing date.

Under MPEP § 2164, the enablement requirement is violated when:

Answer: Undue experimentation would be required to make and use the full scope of the claimed invention

Enablement fails when practicing the full scope of the claims would require undue experimentation, assessed by the Wands factors.

An inventor files a U.S. patent application. A patent examiner applies a reference under § 102(a)(2). Which of the following could be that reference?

Answer: A U.S. patent application by a different inventive entity with an earlier effective filing date that was later published

§ 102(a)(2) covers U.S. patents, U.S. patent application publications, and PCT publications that were effectively filed before the applicant's effective filing date.