PPC Patent Law Fundamentals & USPTO Procedures 2 — Questions and Answers
Question 1: What is the purpose of a Request for Continued Examination (RCE) filed with the USPTO?
- To appeal a final rejection to the PTAB
- To continue prosecution after a final rejection without filing a new application (Correct answer)
- To request a reexamination of a granted patent by a third party
- To extend the statutory bar date for filing a patent application
Correct answer: To continue prosecution after a final rejection without filing a new application
An RCE allows an applicant to continue prosecution of an application after a final rejection by paying a fee and submitting a submission (e.g., an amendment or remarks).
Question 2: Under 35 U.S.C. § 102(b)(1)(A), a disclosure made by the inventor does NOT bar patentability if it occurred within how many years before the effective filing date?
- 6 months
- 1 year (Correct answer)
- 2 years
- 18 months
Correct answer: 1 year
The AIA created a one-year grace period under § 102(b)(1)(A) for disclosures made by the inventor before the effective filing date.
Question 3: Which type of patent claim most broadly protects a method of performing a sequence of steps?
- Apparatus claim
- Composition of matter claim
- Method claim (Correct answer)
- Means-plus-function claim
Correct answer: Method claim
Method (process) claims protect a series of steps performed to achieve a result, rather than a physical device or composition.
Question 4: What document establishes a filing date for a provisional patent application in the USPTO?
- Notice of Allowance
- Filing receipt acknowledging the provisional application (Correct answer)
- Issue notification
- Declaration of inventorship
Correct answer: Filing receipt acknowledging the provisional application
The USPTO issues a filing receipt confirming the provisional application's receipt and establishing its filing date.
Question 5: Which section of Title 35 U.S.C. governs the requirement that an invention be non-obvious?
- § 101
- § 102
- § 103 (Correct answer)
- § 112
Correct answer: § 103
35 U.S.C. § 103 establishes the non-obviousness requirement, evaluated against the knowledge of a person having ordinary skill in the art.
Question 6: What is the standard used to evaluate non-obviousness under 35 U.S.C. § 103?
- A layperson with general knowledge
- A person having ordinary skill in the art (PHOSITA) (Correct answer)
- A leading expert in the field
- A patent examiner with five years of experience
Correct answer: A person having ordinary skill in the art (PHOSITA)
Non-obviousness is assessed from the perspective of a person having ordinary skill in the pertinent art (PHOSITA) at the time of the invention.
Question 7: What happens to a U.S. patent application if the applicant fails to respond to an Office Action within the set statutory period?
- The application is automatically granted
- The application is deemed abandoned (Correct answer)
- The USPTO issues a final rejection immediately
- The application is transferred to a continuation proceeding
Correct answer: The application is deemed abandoned
Failure to timely respond to an Office Action results in abandonment of the application under 37 C.F.R. § 1.135.
PPC Patent Law Fundamentals & USPTO Procedures 2
What is the purpose of a Request for Continued Examination (RCE) filed with the USPTO?