Patentability Requirements & Procedures Flashcards

Under 35 U.S.C. § 120, a continuation application receives the benefit of the parent's filing date only if it:

Answer: Was filed before the parent patent issued or abandoned, discloses the same invention, and is filed by at least one common inventor with a co-pending claim of priority

§ 120 benefit requires co-pendency with the parent, disclosure of the same invention, at least one common inventor, and a specific reference claiming priority.

Which of the following best describes 'inherent anticipation' under § 102?

Answer: A prior art reference necessarily discloses a claim element even if it is not expressly mentioned

Inherent anticipation means the prior art necessarily produces the claimed element or result, even if not explicitly stated, and that result must be inevitable.

Under KSR International Co. v. Teleflex Inc., the Supreme Court held that which rigid test for obviousness was improper?

Answer: The teaching-suggestion-motivation (TSM) test applied as a rigid requirement

KSR rejected a rigid application of the TSM test, holding that courts and the USPTO should use a flexible, expansive approach to the obviousness inquiry.

Under § 101 after Alice Corp. v. CLS Bank, the two-step Mayo/Alice framework first asks whether the claim is directed to:

Answer: An abstract idea, law of nature, or natural phenomenon

Step 1 of the Alice/Mayo framework asks whether the claim is directed to a judicial exception: an abstract idea, law of nature, or natural phenomenon.

A design patent protects the ornamental appearance of an article of manufacture for a term of:

Answer: 15 years from issuance

Under current law (post-2015 amendments), design patents have a term of 15 years from the date of grant.

Under 35 U.S.C. § 116, which of the following is true regarding joint inventorship?

Answer: Each joint inventor must have contributed to the conception of at least one claim

Joint inventorship requires that each inventor contributed to the conception of at least one claim; they need not have contributed to every claim or worked together simultaneously.

During prosecution, an examiner makes a restriction requirement between two distinct inventions in a single application. The applicant elects one invention to prosecute. What happens to the claims directed to the non-elected invention?

Answer: They are withdrawn from consideration but may be pursued in a divisional application

Non-elected claims are withdrawn from consideration in the current application but can be pursued in a divisional application, which preserves the parent's filing date.