Patent Application Drafting & Filing Flashcards

Which section of a patent application defines the legal scope of protection sought by the inventor?

Answer: Claims

The claims section defines the metes and bounds of the patent protection and is the legally operative part of the application.

A provisional patent application must be converted to a non-provisional application within how many months?

Answer: 12 months

A provisional application has a 12-month pendency period, after which it expires if not converted to a non-provisional application.

What is the purpose of the 'Background of the Invention' section in a patent application?

Answer: To describe the prior art and problem the invention solves

The background section describes the state of the prior art and identifies the problem or need that the invention addresses.

When filing a patent application, what form is used to submit the oath or declaration by the inventors?

Answer: PTO/AIA/01

Form PTO/AIA/01 is the declaration for utility or design patent application under the AIA rules.

In patent claim drafting, an 'independent claim' differs from a 'dependent claim' in that it:

Answer: Does not incorporate limitations from any other claim

An independent claim stands alone and does not reference or incorporate limitations from any other claim in the application.

Which filing strategy allows an applicant to claim the benefit of an earlier domestic filing date?

Answer: Continuation application

A continuation application claims priority to an earlier parent application and must share at least one common inventor and substantially the same disclosure.

What is required for a patent application to satisfy the 'enablement' requirement under 35 U.S.C. § 112?

Answer: The specification must enable a person skilled in the art to make and use the invention

Enablement requires that the specification teach a person having ordinary skill in the art (PHOSITA) how to make and use the full scope of the claimed invention.