Advanced Professional Practice Flashcards

During an ex parte reexamination, what is the standard for granting the reexamination request?

Answer: A substantial new question of patentability affecting at least one claim

Ex parte reexamination requires that the request raise a 'substantial new question of patentability,' which is a lower threshold than the IPR standard.

A U.S. patent paralegal is tracking foreign deadlines for a European Patent application that entered national phase in Germany and France. Which organization should be consulted for filing deadlines in those countries?

Answer: Foreign associates or agents in Germany and France, respectively

National phase deadlines and post-grant procedures in individual EPC member states are governed by national law, requiring consultation with qualified local associates in each country.

Which of the following best describes the difference between a patent agent and a patent attorney?

Answer: A patent agent may prosecute patent applications before the USPTO, while a patent attorney may also provide legal advice on non-patent matters and represent clients in litigation

Both patent agents and patent attorneys may prosecute patent applications before the USPTO, but only patent attorneys (licensed to practice law) may provide general legal counsel and represent clients in court proceedings.

What does the term 'continuation-in-part' (CIP) application mean in U.S. patent practice?

Answer: An application that adds new disclosure not present in the parent application while retaining some of the parent's disclosure

A CIP application includes new matter not disclosed in the parent, with the new matter receiving the CIP's own filing date while subject matter carried over from the parent retains the parent's filing date.

Under 35 U.S.C. § 102(b)(1), which disclosure made before the effective filing date would NOT be prior art to a patent application?

Answer: A disclosure made by the inventor within one year of the effective filing date

Under the AIA's grace period, disclosures made by the inventor (or joint inventor) within one year before the effective filing date are excluded from prior art under § 102(b)(1)(A).

A patent paralegal is preparing a design patent application. Which of the following is the most critical component of a design patent application?

Answer: Formal drawings that clearly illustrate the claimed ornamental design

In a design patent application, formal drawings are paramount because the single claim reads 'the ornamental design as shown and described,' making the drawings the primary definition of the protected design.

Under the USPTO's After Final Consideration Pilot (AFCP 2.0), what must an applicant submit along with a response after a final rejection?

Answer: A request under AFCP 2.0, an amendment that does not broaden claim scope, and authorization for the examiner to consider the response

AFCP 2.0 requires a written request, an amendment that does not broaden any independent claim, and an authorization for the examiner to conduct a limited interview or search as needed.