Risk Assessment & Mitigation Flashcards

A patent paralegal realizes she accidentally sent privileged prosecution documents to opposing counsel in a litigation matter. What is the correct immediate risk-mitigation action?

Answer: Notify the supervising attorney immediately so counsel can assess whether to request return of the documents and take protective action

Inadvertent disclosure of privileged materials requires immediate escalation to the supervising attorney, who must evaluate clawback rights and notify opposing counsel under applicable ethics rules.

An examiner issues a final rejection. The attorney instructs the paralegal to calendar all available after-final options. Which of the following is NOT a recognized post-final practice option?

Answer: Filing a petition to make special based on applicant's age

A petition to make special based on applicant's age is a pre-examination prioritization tool, not a post-final prosecution option; the other three are legitimate responses to a final rejection.

During prosecution, the applicant amends a claim to avoid prior art by narrowing its scope. What doctrine limits the applicant's ability to later argue that an equivalent element infringes?

Answer: Prosecution history estoppel

Prosecution history estoppel prevents patent owners from using the doctrine of equivalents to recapture claim scope surrendered through amendments made to overcome prior art.

A paralegal dockets a Notice of Allowance with a three-month deadline for paying the issue fee. What risk must be flagged if the client is a large entity that qualifies as a micro entity?

Answer: Paying the large entity fee instead of the reduced micro entity fee results in overpayment, but the USPTO requires a verified statement of micro entity status before accepting the reduced fee

Micro entity status requires a properly filed certification under 37 C.F.R. § 1.29; without the certification, the full large entity fee must be paid to avoid jeopardizing the application.

A patent paralegal is asked to prepare a patent assignment for a recently issued patent. The assignment is not recorded with the USPTO. What risk does the assignee face?

Answer: A subsequent bona fide purchaser who records first may take priority over the unrecorded assignee

Under 35 U.S.C. § 261, failure to record an assignment means a subsequent purchaser without notice who records first may take priority over the earlier, unrecorded assignment.

Which risk is most commonly associated with relying solely on a prior art search conducted by a paralegal without attorney review for a freedom-to-operate opinion?

Answer: The search may be used in litigation to show the client had actual notice of the identified patents, increasing willful infringement exposure

A paralegal-only FTO search can establish actual knowledge of potentially blocking patents, which plaintiffs use to support willful infringement claims carrying enhanced damages.

An issued patent's broadest independent claim is found to be invalid during IPR proceedings. What is the immediate impact on the patent owner's enforcement strategy?

Answer: The patent owner can no longer assert the invalidated claim but may still assert any remaining dependent claims that survived IPR

IPR decisions cancelling individual claims are binding, but dependent claims that were not cancelled may survive and remain enforceable if they independently support infringement allegations.