PPC Patent Application Drafting & Filing 3 — Questions and Answers
Question 1: Under 37 C.F.R. § 1.63, who may sign the inventor's oath or declaration for a patent application?
- Only the registered patent attorney
- The inventor(s) or a person authorized under 37 C.F.R. § 1.64 (Correct answer)
- Any corporate officer of the assignee
- The paralegal who prepared the application
Correct answer: The inventor(s) or a person authorized under 37 C.F.R. § 1.64
The declaration must be signed by the inventor(s) or, where an inventor is deceased or legally incapacitated, by a person authorized under § 1.64.
Question 2: What is a 'continuation-in-part' (CIP) application?
- An application that adds new matter not disclosed in the parent application (Correct answer)
- An application filed to divide a restriction requirement
- An application that claims the same invention with narrower claims
- An application filed after patent grant to correct errors
Correct answer: An application that adds new matter not disclosed in the parent application
A CIP application repeats a substantial portion of the parent's disclosure and adds new matter, with new matter only receiving the CIP's actual filing date.
Question 3: Which type of patent application is typically filed when an examiner issues a restriction requirement?
- Continuation application
- Divisional application (Correct answer)
- Reissue application
- Reexamination request
Correct answer: Divisional application
A divisional application is filed to pursue the non-elected invention(s) after a restriction requirement forces the applicant to elect one invention.
Question 4: When must a patent applicant submit an Information Disclosure Statement (IDS)?
- Only after receiving a first Office Action
- At any time during prosecution, subject to timing rules and fees (Correct answer)
- Only before claims are allowed
- Within 30 days of filing the application
Correct answer: At any time during prosecution, subject to timing rules and fees
An IDS may be filed at various stages of prosecution, but fees and certifications may be required depending on when it is submitted relative to examination actions.
Question 5: In a utility patent application, what is the correct order of sections?
- Claims, Abstract, Brief Description, Detailed Description
- Abstract, Background, Summary, Brief Description, Detailed Description, Claims (Correct answer)
- Title, Claims, Abstract, Background, Detailed Description
- Background, Claims, Summary, Abstract, Detailed Description
Correct answer: Abstract, Background, Summary, Brief Description, Detailed Description, Claims
USPTO rules require sections in this order: title, cross-references, federally sponsored research statement, background, summary, brief description of drawings, detailed description, claims, and abstract.
Question 6: What is the significance of the 'critical date' in U.S. patent law under the AIA?
- The date the patent issues
- The date one year before the effective filing date, after which certain prior art bars patentability (Correct answer)
- The date the examiner issues the first Office Action
- The date the maintenance fee is due
Correct answer: The date one year before the effective filing date, after which certain prior art bars patentability
Under AIA § 102, prior art disclosures made more than one year before the effective filing date create an absolute bar to patentability.
Question 7: A patent paralegal drafting claims notices the specification describes three embodiments but the claims only cover one. What issue does this raise?
- The application will be rejected for lack of novelty
- The claims may not be entitled to the full scope of the disclosure, potentially leaving protection gaps (Correct answer)
- The USPTO requires claims to cover all described embodiments
- This automatically triggers a restriction requirement
Correct answer: The claims may not be entitled to the full scope of the disclosure, potentially leaving protection gaps
Claims that cover only one embodiment when the specification discloses multiple may result in competitors designing around the patent using unclaimed embodiments.
PPC Patent Application Drafting & Filing 3
Under 37 C.F.R. § 1.63, who may sign the inventor's oath or declaration for a patent application?