Patentability Requirements & Procedures Flashcards

Under the USPTO's broadest reasonable interpretation (BRI) standard used during examination, a claim term is given:

Answer: Its ordinary and customary meaning as understood by a PHOSITA in light of the specification

BRI means the broadest reasonable interpretation consistent with the specification as understood by a PHOSITA — not the absolute broadest meaning.

Under 35 U.S.C. § 102(b)(1)(B), a third party's disclosure does NOT count as prior art if:

Answer: The inventor had previously publicly disclosed the subject matter before the third party's disclosure

Under the grace period exception in § 102(b)(1)(B), a third party's disclosure is not prior art if it came after the inventor's own prior public disclosure of the subject matter.

What is the purpose of a 'terminal disclaimer' filed during patent prosecution?

Answer: To overcome a double patenting rejection by tying the patent's term to a related patent

A terminal disclaimer overcomes a nonstatutory (obviousness-type) double patenting rejection by disclaiming any patent term beyond the expiration of a co-owned patent.

Under MPEP § 2173, which of the following renders a claim indefinite under 35 U.S.C. § 112(b)?

Answer: Use of relative terms like 'substantially' without any standard in the specification

Relative terms like 'substantially' may render a claim indefinite if the specification provides no standard by which to measure them.

In an inter partes review (IPR) proceeding, which grounds may be raised to challenge patent validity?

Answer: Only § 102 and § 103 based on patents or printed publications

IPR is limited to challenges under § 102 or § 103 based only on prior art consisting of patents or printed publications.

Under 37 C.F.R. § 1.136(a), a patent applicant may obtain an automatic extension of time to respond to an Office action for up to how many months?

Answer: 5 months

An applicant may obtain up to 5 months of automatic extensions of time under § 1.136(a) upon payment of the extension fee, giving a total response period of up to 6 months.

A patent application contains claims 1–5, where claims 2–5 each depend from independent claim 1. If claim 1 is cancelled, what happens to dependent claims 2–5?

Answer: They remain valid but must be converted to independent form or they will be rejected

Dependent claims 2–5 cannot depend from a cancelled claim; the applicant must rewrite them in independent form to preserve them.