Risk Assessment & Mitigation Flashcards

A client wishes to file patent applications in the U.S., Europe, Japan, and Canada for a new invention. What risk arises if the U.S. application is filed first and the foreign filings are delayed beyond six months from the U.S. filing date?

Answer: The Paris Convention priority claim for design patents requires filing within six months, while utility patents have 12 months; missing either deadline forfeits foreign priority

Under the Paris Convention, utility patent foreign filings must occur within 12 months and design patent filings within 6 months of the first filing to preserve priority rights.

A paralegal identifies that a claim in a pending application is nearly identical to a claim in an already-issued patent owned by the same applicant. What risk does this dual-pending situation present?

Answer: The pending application faces a potential obviousness-type double patenting rejection requiring a terminal disclaimer

Obviousness-type double patenting prevents unjustified extension of patent term; a terminal disclaimer tying the patent's expiration to the earlier patent is the standard remedy.

When monitoring a competitor's patent activity for a client, a paralegal discovers a published patent application that may cover the client's core product. What is the most appropriate risk-mitigation action?

Answer: Promptly report the published application to the supervising attorney so the firm can assess design-arounds, licensing options, or prior art to submit under pre-issuance submissions

Early identification of a threatening published application allows the attorney to explore strategic options such as third-party pre-issuance submissions under 35 U.S.C. § 122(e) before the patent issues.

A U.S. patent is set to expire due to non-payment of the 11.5-year maintenance fee. The client contacts the firm six months after the expiration notice was sent. What options, if any, are available to revive the patent?

Answer: The patent may be revived by petition showing the delay was unintentional, along with the maintenance fee and surcharge, within 24 months of the fee deadline

Under 37 C.F.R. § 1.378, a patent that expired for failure to pay a maintenance fee may be revived within 24 months by petition and payment with surcharge upon a showing of unintentional delay.

An inventor conceives an invention while employed at Company A, then leaves to join Company B, where she refines and reduces the invention to practice. Which risk scenario is most relevant to assess?

Answer: Company A may claim ownership under an employment agreement or shop rights doctrine, creating a disputed inventorship and ownership risk

Employment agreements often assign inventions conceived during employment to the employer, and shop rights may vest in Company A even absent a formal agreement, creating a complex ownership dispute.

A patent paralegal is reviewing a licensing agreement and notices that the agreement grants 'all rights' to the licensee but is labeled as a 'non-exclusive license.' What risk does this inconsistency create?

Answer: The conflicting terms may be construed as an assignment rather than a license, which could affect the patent owner's ability to enforce the patent and trigger recording requirements

Courts may interpret a grant of 'all rights' as an assignment rather than a license, which changes enforcement rights, standing to sue, and triggers § 261 recording requirements.

A patent paralegal is asked to prepare a supplemental information disclosure statement (IDS) after the patent application enters the national stage from a PCT application. What risk arises if the IDS is filed without the required fee for late submission?

Answer: The USPTO will not consider the disclosed references, potentially leaving the applicant exposed to an inequitable conduct finding for failure to disclose material information

An IDS filed without the required fee after certain prosecution milestones will not be considered by the examiner, leaving the applicant at risk of inequitable conduct if the undisclosed art is later deemed material.