PPC Legal Research & Documentation Management 2 — Questions and Answers
Question 1: Which USPTO database allows a paralegal to search for prior art in expired U.S. patents published before 1976?
- Patent Full-Text Database (PatFT) (Correct answer)
- Patent Application Information Retrieval (PAIR)
- Global Dossier
- Patent Trial and Appeal Board (PTAB) e-System
Correct answer: Patent Full-Text Database (PatFT)
PatFT contains full-text U.S. patents issued from 1976 to the present, plus images back to 1790, making it the primary tool for pre-1976 patent searches.
Question 2: A paralegal needs to determine whether a PCT application has entered the national phase in Germany. Which resource is most appropriate?
- WIPO PATENTSCOPE
- USPTO Global Dossier
- European Patent Register
- DPMA register (German Patent Office) (Correct answer)
Correct answer: DPMA register (German Patent Office)
The DPMA (Deutsches Patent- und Markenamt) register tracks national phase entries in Germany, the relevant national authority.
Question 3: What is the primary purpose of a patent family search in legal research?
- Identifying all international counterparts of a base patent application (Correct answer)
- Locating prior litigation involving a patent holder
- Verifying maintenance fee payment history
- Checking USPTO examiner assignment records
Correct answer: Identifying all international counterparts of a base patent application
A patent family search identifies all related filings (continuations, divisionals, national phase entries) that share a common priority claim.
Question 4: Under 37 C.F.R. § 1.56, to whom does the duty of disclosure extend in a patent application?
- Only the named inventors
- Every individual substantially involved in the preparation or prosecution of the application (Correct answer)
- Only the prosecuting attorney of record
- Only the assignee of the application
Correct answer: Every individual substantially involved in the preparation or prosecution of the application
The duty of candor under Rule 56 applies to each individual substantially involved in the preparation or prosecution, including paralegals and inventors.
Question 5: When docketing a U.S. non-provisional application filing date, which event triggers the start of the 20-year patent term?
- The date the patent is granted
- The earliest effective U.S. filing date of the application (Correct answer)
- The date the issue fee is paid
- The date the notice of allowance is mailed
Correct answer: The earliest effective U.S. filing date of the application
Under 35 U.S.C. § 154, a utility patent term is 20 years from the earliest effective U.S. filing date of the application.
Question 6: Which document type in a patent file history contains the applicant's formal response to an examiner's rejection?
- Office Action
- Amendment / Response (Correct answer)
- Notice of Allowance
- Request for Continued Examination
Correct answer: Amendment / Response
An Amendment or Response is the document filed by the applicant to traverse rejections and/or amend claims in reply to an Office Action.
Question 7: A paralegal discovers that a key prior art reference was not cited during prosecution. What is the recommended immediate action?
- Destroy any record of the discovery to protect the client
- File an Information Disclosure Statement (IDS) promptly to fulfill the duty of disclosure (Correct answer)
- Wait until after the patent issues to evaluate materiality
- Notify only the client and take no further action
Correct answer: File an Information Disclosure Statement (IDS) promptly to fulfill the duty of disclosure
Filing an IDS promptly is required to satisfy the duty of candor and avoid inequitable conduct that could render the patent unenforceable.
PPC Legal Research & Documentation Management 2
Which USPTO database allows a paralegal to search for prior art in expired U.S. patents published before 1976?