PPC Case Analysis & Practical Application 2

Question 1

A patent applicant's 12-month statutory bar date falls on a Sunday. When is the actual deadline to file?

Accepted Answer

The following Monday

Answer

When a USPTO deadline falls on a Saturday, Sunday, or federal holiday, it is extended to the next business day.

Question 2

During prosecution, an examiner issues a final rejection. The applicant wants more time to respond without filing a Notice of Appeal. Which option is most appropriate?

Accepted Answer

File a Request for Continued Examination (RCE)

Answer

An RCE allows prosecution to continue after a final rejection by paying the required fee and submitting a response.

Question 3

A client invented a medical device while employed under an IP assignment agreement. The company claims ownership, but the device was created entirely on personal time with personal equipment. What is the first step a patent paralegal should take?

Accepted Answer

Review the exact language of the employment agreement

Answer

The scope of an employment IP assignment agreement determines ownership, so its language must be reviewed carefully before any filing decision.

Question 4

An examiner rejects claims 1–5 under 35 U.S.C. § 103 citing references A and B in combination. The applicant argues reference B teaches away from combining with A. This is an argument based on:

Accepted Answer

Whether a PHOSITA would have been motivated to combine the references

Answer

A 'teaching away' argument challenges whether a person of ordinary skill would have been motivated to combine the references, a required element of an obviousness rejection.

Question 5

A paralegal notices that an issued patent lists only two inventors, but lab notebooks show a third person contributed to at least one claim. What should be done?

Accepted Answer

File a Certificate of Correction to add the omitted inventor

Answer

Inventorship errors on issued patents can be corrected by filing a Certificate of Correction under 37 C.F.R. § 1.324.

(PPC) Patent Paralegal Certification Practice Test

(PPC) Patent Paralegal Certification Practice Test

PPC Case Analysis & Practical Application 2