Advanced Professional Practice Flashcards

Which doctrine allows a court to hold that a patent claim is infringed even if an accused product or process does not literally meet every claim limitation?

Answer: Doctrine of equivalents

The doctrine of equivalents allows infringement to be found when an accused product performs substantially the same function in substantially the same way to achieve substantially the same result as the claimed invention.

Under USPTO rules, what is the purpose of a 'Supplemental Information Disclosure Statement' (SIDS) filed after the payment of the issue fee?

Answer: It allows applicants to disclose material prior art discovered after the issue fee is paid, satisfying the continuing duty of candor

A supplemental IDS filed after the issue fee ensures compliance with the duty of candor under 37 CFR 1.56 even if discovered late, though compliance with specific timing and fee requirements may apply.

What is the primary purpose of including 'means-plus-function' language under 35 U.S.C. § 112(f) in a patent claim?

Answer: To limit the claim to specific structures disclosed in the specification and their equivalents

Under § 112(f), means-plus-function claims are construed to cover only the specific structures, materials, or acts disclosed in the specification and their equivalents, which actually narrows claim scope.

A patent paralegal working on a foreign filing program notes that Germany requires a German-language translation. The English application has been filed at the EPO. Under the London Agreement, which of the following is correct?

Answer: Germany requires only the claims to be translated into German after EPO grant

Under the London Agreement, Germany (an opt-in country) requires only that the claims be translated into German when a European patent is granted in English, eliminating the need for a full specification translation.

When must an inventor's oath or declaration be filed in a U.S. utility patent application under the AIA rules?

Answer: No later than the payment of the issue fee

Under post-AIA rules (37 CFR 1.53 and 1.63), the inventor's oath or declaration may be deferred and must be filed no later than the payment of the issue fee.

A paralegal learns that a client's patent was issued with a claim that the examiner erroneously rejected in a sibling application. The client wants to pursue the rejected subject matter. Which post-issuance proceeding would be most appropriate?

Answer: Reissue application under 35 U.S.C. § 251

A reissue application allows a patent owner to correct errors in the original patent, including recapturing inadvertently surrendered subject matter, by surrendering the original patent and reissuing an amended one.

Which of the following actions by a patent paralegal would constitute the unauthorized practice of law (UPL)?

Answer: Advising a client whether a pending claim will be allowable based on the paralegal's independent legal analysis

Providing an independent legal opinion about the allowability or patentability of claims constitutes legal advice and is UPL when performed by a non-attorney without attorney supervision.