PPC Advanced Professional Practice 2 — Questions and Answers
Question 1: A patent paralegal discovers that a terminal disclaimer filed in a parent application was not recorded against a continuation application claiming the same invention. What is the most appropriate immediate action?
- File a new terminal disclaimer in the continuation application immediately
- Notify the supervising attorney so a terminal disclaimer can be filed before any office action issues (Correct answer)
- Contact the USPTO directly to request correction without attorney involvement
- Do nothing, as terminal disclaimers automatically carry over to continuation applications
Correct answer: Notify the supervising attorney so a terminal disclaimer can be filed before any office action issues
The paralegal must promptly notify the supervising attorney so corrective action can be taken before the USPTO raises an obviousness-type double patenting rejection.
Question 2: Under USPTO rules, what is the maximum period of pendency for an inter partes review (IPR) proceeding from institution to final written decision?
- 6 months
- 12 months (Correct answer)
- 18 months
- 24 months
Correct answer: 12 months
The USPTO must issue a final written decision in an IPR within one year (12 months) of institution, though this can be extended by up to six months for good cause.
Question 3: A client asks a patent paralegal whether their product is covered by a competitor's patent claim. The paralegal should:
- Perform a claim chart analysis and provide a written infringement opinion
- Decline to answer and explain that infringement analysis constitutes legal advice reserved for a licensed attorney (Correct answer)
- Provide a preliminary opinion but note it is not legal advice
- Search for prior art that might invalidate the competitor's patent
Correct answer: Decline to answer and explain that infringement analysis constitutes legal advice reserved for a licensed attorney
Infringement analysis is the unauthorized practice of law; a paralegal must decline and refer the client to a licensed patent attorney.
Question 4: Which USPTO fee reduction applies to an independent inventor who qualifies as a micro entity?
- 20% reduction
- 40% reduction
- 60% reduction
- 80% reduction (Correct answer)
Correct answer: 80% reduction
Micro entities receive an 80% reduction on most USPTO fees under 35 U.S.C. § 123, compared to the 60% reduction available to small entities.
Question 5: In a patent prosecution scenario, an applicant receives a final rejection. Which of the following is NOT a proper response option available after a final rejection?
- Filing a Request for Continued Examination (RCE)
- Filing a continuation application
- Filing an appeal to the Patent Trial and Appeal Board (PTAB)
- Filing a Request for Reconsideration with new independent claims that broaden claim scope beyond the original disclosure (Correct answer)
Correct answer: Filing a Request for Reconsideration with new independent claims that broaden claim scope beyond the original disclosure
After final rejection, new or amended claims must comply with all statutory requirements and cannot introduce new matter or improperly broaden claims beyond what was originally disclosed.
Question 6: What is the purpose of a Certificate of Correction in patent practice?
- To correct errors in a patent application before examination
- To correct mistakes in an issued patent caused by USPTO error or applicant error (Correct answer)
- To request reconsideration of a final office action
- To correct inventorship before the patent application is examined
Correct answer: To correct mistakes in an issued patent caused by USPTO error or applicant error
A Certificate of Correction under 35 U.S.C. §§ 254–255 is used to correct certain errors in an issued patent, with separate procedures depending on whether the error was the USPTO's or the applicant's.
Question 7: Under 37 CFR 1.56, the duty of candor requires disclosure of information that is material to patentability. Which standard currently defines 'material to patentability'?
- The 'but-for' materiality standard under Therasense (Correct answer)
- The 'reasonable examiner' standard from the 1992 rules
- The 'cumulative' information standard
- The 'likely to be cited' standard from pre-1992 practice
Correct answer: The 'but-for' materiality standard under Therasense
Following Therasense, Inc. v. Becton, Dickinson & Co. (Fed. Cir. 2011), the but-for materiality standard applies to inequitable conduct, meaning undisclosed information is material if the USPTO would not have granted the patent had it been disclosed.
PPC Advanced Professional Practice 2
A patent paralegal discovers that a terminal disclaimer filed in a parent application was not recorded against a continuation application claiming the same invention.
What is the most appropriate immediate action?