PPC Advanced Professional Practice 3 — Questions and Answers
Question 1: A patent paralegal dockets a U.S. national phase entry from a PCT application. The PCT application was filed on March 15, 2024. What is the standard U.S. national phase entry deadline?
- 20 months from the PCT filing date
- 30 months from the earliest claimed priority date (Correct answer)
- 12 months from the PCT filing date
- 36 months from the PCT filing date
Correct answer: 30 months from the earliest claimed priority date
Under 35 U.S.C. § 371, the U.S. national phase entry deadline is 30 months from the earliest claimed priority date (or PCT filing date if no priority is claimed).
Question 2: Which of the following correctly describes the role of an Information Disclosure Statement (IDS) in U.S. patent prosecution?
- It is a formal request to the examiner to search specific prior art databases
- It is a document submitted by the applicant to disclose known prior art to the examiner to satisfy the duty of candor (Correct answer)
- It is filed by the USPTO examiner to notify applicants of prior art found during examination
- It is required only when the applicant has searched for prior art themselves
Correct answer: It is a document submitted by the applicant to disclose known prior art to the examiner to satisfy the duty of candor
An IDS is filed by the applicant or their representative to disclose material prior art and other information to the examiner, fulfilling the duty of candor under 37 CFR 1.56.
Question 3: In patent prosecution, what is 'prosecution history estoppel' and when does it typically arise?
- A bar preventing the USPTO from raising previously withdrawn rejections
- A limitation on the doctrine of equivalents arising when a patent applicant narrows claims or surrenders claim scope during prosecution (Correct answer)
- A procedural rule preventing re-examination after patent issuance
- A doctrine that prevents assignees from modifying patent claims post-grant
Correct answer: A limitation on the doctrine of equivalents arising when a patent applicant narrows claims or surrenders claim scope during prosecution
Prosecution history estoppel prevents a patent owner from using the doctrine of equivalents to recapture subject matter surrendered during prosecution through claim amendments or arguments.
Question 4: A patent application claims priority to a provisional application filed on January 10, 2023. The corresponding non-provisional application must be filed by:
- January 10, 2024 (Correct answer)
- July 10, 2023
- January 10, 2025
- March 10, 2024
Correct answer: January 10, 2024
A non-provisional application claiming priority to a provisional must be filed within 12 months of the provisional filing date under 35 U.S.C. § 119(e).
Question 5: Under the USPTO rules, who may sign a patent application oath or declaration for a juristic entity (e.g., corporation) that is the applicant?
- Any employee of the corporation
- An officer of the corporation who is authorized to act on behalf of the corporation (Correct answer)
- Only the CEO or President of the corporation
- The corporation's registered patent agent
Correct answer: An officer of the corporation who is authorized to act on behalf of the corporation
For a juristic entity applicant, the oath or declaration must be signed by an officer of the entity who is authorized to act on behalf of the entity under 37 CFR 1.64.
Question 6: What is the primary function of the Patent Cooperation Treaty (PCT) international search report (ISR)?
- To grant international patent protection in all PCT member states
- To provide a non-binding opinion on patentability based on prior art identified by an international searching authority (Correct answer)
- To replace the national examination process in designated countries
- To establish the international filing date for national phase entries
Correct answer: To provide a non-binding opinion on patentability based on prior art identified by an international searching authority
The ISR identifies prior art relevant to the claimed invention and is accompanied by a written opinion on novelty, inventive step, and industrial applicability, but is non-binding on national offices.
Question 7: An inventor assignment agreement was signed but never recorded with the USPTO. A subsequent bona fide purchaser for value records an assignment from the same inventor. Under 35 U.S.C. § 261, which party generally prevails?
- The first assignee, because 'first in time, first in right' always applies
- The subsequent bona fide purchaser who recorded first, provided they had no actual notice of the prior assignment (Correct answer)
- The inventor retains rights because both assignments are invalid
- The USPTO determines ownership through an interference proceeding
Correct answer: The subsequent bona fide purchaser who recorded first, provided they had no actual notice of the prior assignment
Under 35 U.S.C. § 261, a subsequent purchaser for valuable consideration without notice of a prior unrecorded assignment who records first prevails over the earlier unrecorded assignment.
PPC Advanced Professional Practice 3
A patent paralegal dockets a U.S. national phase entry from a PCT application.
The PCT application was filed on March 15, 2024.
What is the standard U.S. national phase entry deadline?