PPC Patent Law Fundamentals & USPTO Procedures 3 — Questions and Answers
Question 1: In a patent application, which section must contain at least one independent claim?
- Abstract
- Summary of the Invention
- Claims (Correct answer)
- Brief Description of the Drawings
Correct answer: Claims
The Claims section defines the legal scope of protection and must include at least one independent claim under 35 U.S.C. § 112.
Question 2: What is the difference between an independent claim and a dependent claim?
- An independent claim must recite a method; a dependent claim must recite a device
- An independent claim stands alone; a dependent claim refers back to and incorporates another claim (Correct answer)
- An independent claim is filed first; a dependent claim is filed later in prosecution
- An independent claim covers the broadest embodiment; a dependent claim must be filed separately
Correct answer: An independent claim stands alone; a dependent claim refers back to and incorporates another claim
A dependent claim references a prior claim and adds additional limitations, thereby incorporating all elements of the referenced claim.
Question 3: Under the USPTO's Track One Prioritized Examination program, what is the approximate target for a final disposition?
- 6 months
- 12 months (Correct answer)
- 18 months
- 24 months
Correct answer: 12 months
The Track One program aims to provide a final disposition within approximately 12 months from prioritized status being granted.
Question 4: Which form is used by an inventor to declare that they are the original inventor when submitting a U.S. patent application?
- PTO/SB/08 (Information Disclosure Statement)
- PTO/AIA/01 (Declaration for Utility or Design Patent Application) (Correct answer)
- PTO/SB/16 (Small Entity Status)
- PTO/AIA/14 (Transmittal Form)
Correct answer: PTO/AIA/01 (Declaration for Utility or Design Patent Application)
Form PTO/AIA/01 is the inventor's declaration for utility or design patent applications filed under the AIA.
Question 5: What is a continuation-in-part (CIP) application?
- An application that repeats all claims from a parent application without any new subject matter
- An application that adds new disclosure not present in the parent while retaining some of the parent's disclosure (Correct answer)
- A divisional application filed in response to a restriction requirement
- An RCE filed after a final rejection to continue prosecution
Correct answer: An application that adds new disclosure not present in the parent while retaining some of the parent's disclosure
A CIP application adds new subject matter not originally disclosed in the parent application while retaining some or all of the parent's original disclosure.
Question 6: Which USPTO fee reduction applies to qualifying small businesses and independent inventors with fewer than 500 employees?
- Micro entity discount (80%)
- Small entity discount (60%)
- Small entity discount (50%) (Correct answer)
- Micro entity discount (60%)
Correct answer: Small entity discount (50%)
Qualifying small entities receive a 50% reduction on most USPTO fees under 37 C.F.R. § 1.27.
Question 7: What is the primary purpose of an Information Disclosure Statement (IDS) filed with the USPTO?
- To extend the prosecution period for responding to Office Actions
- To disclose all known prior art material to the patentability of the claimed invention (Correct answer)
- To notify the USPTO of a change of attorney of record
- To request prioritized examination under Track One
Correct answer: To disclose all known prior art material to the patentability of the claimed invention
An IDS fulfills the applicant's duty of candor by disclosing prior art and other information material to patentability under 37 C.F.R. § 1.56.
PPC Patent Law Fundamentals & USPTO Procedures 3
In a patent application, which section must contain at least one independent claim?