PPC Legal Research & Documentation Management 3

Question 1

What does the term 'prosecution history estoppel' mean in patent law, and why is it relevant when reviewing file histories?

Accepted Answer

Limitations on claim scope arising from amendments or arguments made during prosecution

Answer

Prosecution history estoppel prevents a patent holder from using the doctrine of equivalents to recapture claim scope surrendered during prosecution.

Question 2

Which section of the Manual of Patent Examining Procedure (MPEP) addresses the requirements for claim drafting?

Accepted Answer

Chapter 2100

Answer

MPEP Chapter 2100 covers patentability and includes detailed guidance on claim requirements under 35 U.S.C. §§ 101, 102, 103, and 112.

Question 3

A paralegal is organizing prior art documents for an inter partes review (IPR). Which standard applies to the burden of proof for unpatentability?

Accepted Answer

Preponderance of the evidence

Answer

In IPR proceedings before the PTAB, unpatentability must be proven by a preponderance of the evidence, a lower standard than in district court litigation.

Question 4

When a U.S. patent application claims priority to a foreign application under 35 U.S.C. § 119(a), within what time period must the U.S. application be filed?

Accepted Answer

12 months from the foreign filing date

Answer

Under 35 U.S.C. § 119(a), a U.S. application must be filed within 12 months of the foreign priority application's filing date to claim Paris Convention priority.

Question 5

Which type of patent application allows an inventor to establish an early filing date without formal claims, then convert within 12 months?

Accepted Answer

Provisional application

Answer

A provisional application establishes a priority date and gives the inventor 12 months to file a corresponding non-provisional application claiming that date.

(PPC) Patent Paralegal Certification Practice Test

(PPC) Patent Paralegal Certification Practice Test

PPC Legal Research & Documentation Management 3