PPC Regulatory Compliance & Legal Framework 2 — Questions and Answers
Question 1: Under 37 CFR 1.56, which of the following parties has a duty of candor and good faith toward the USPTO?
- Only the named inventors
- Only the lead attorney of record
- Each individual associated with filing or prosecution of the application (Correct answer)
- Only individuals who sign the oath or declaration
Correct answer: Each individual associated with filing or prosecution of the application
37 CFR 1.56 imposes the duty of candor on each individual associated with the filing or prosecution of a patent application, including inventors, attorneys, and patent paralegals.
Question 2: A patent paralegal discovers a prior art reference that may be material to patentability after filing. What is the proper course of action?
- Discard the reference if it was found after filing
- Immediately notify the supervising attorney so an IDS can be filed (Correct answer)
- File the IDS directly without attorney involvement
- Wait until prosecution is complete before disclosing
Correct answer: Immediately notify the supervising attorney so an IDS can be filed
Newly discovered material prior art must be disclosed via an Information Disclosure Statement (IDS), and the paralegal must notify the supervising attorney to initiate that process.
Question 3: Which USPTO regulation governs the requirements for small entity status, allowing reduced patent fees?
- 37 CFR 1.27 (Correct answer)
- 37 CFR 1.56
- 37 CFR 1.131
- 35 U.S.C. 122
Correct answer: 37 CFR 1.27
37 CFR 1.27 defines the criteria and procedures for establishing small entity status to qualify for reduced USPTO fees.
Question 4: What is the consequence of an applicant incorrectly claiming small entity status when paying USPTO fees?
- The patent is automatically invalidated
- The applicant must pay the difference plus a surcharge and any applicable interest (Correct answer)
- No consequence unless the USPTO discovers it within two years
- The application is abandoned without possibility of revival
Correct answer: The applicant must pay the difference plus a surcharge and any applicable interest
Incorrectly claiming small entity status requires payment of the fee deficiency plus any applicable surcharge to avoid inequitable conduct issues.
Question 5: Under the America Invents Act (AIA), which proceeding replaced inter partes reexamination?
- Ex parte reexamination
- Inter partes review (IPR) (Correct answer)
- Supplemental examination
- Covered business method review
Correct answer: Inter partes review (IPR)
The AIA replaced inter partes reexamination with inter partes review (IPR), a trial proceeding before the Patent Trial and Appeal Board.
Question 6: A patent application claiming a pharmaceutical compound must include which type of disclosure to satisfy 35 U.S.C. 112?
- A declaration of commercial intent
- A written description, enablement, and best mode (Correct answer)
- Only the chemical formula without synthesis steps
- A market exclusivity analysis
Correct answer: A written description, enablement, and best mode
35 U.S.C. 112 requires a written description of the invention, enablement of how to make and use it, and disclosure of the best mode contemplated by the inventor.
Question 7: Which document establishes the international framework under which PCT applications are filed?
- The Paris Convention for the Protection of Industrial Property
- The Patent Cooperation Treaty (Correct answer)
- The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement
- The Budapest Treaty
Correct answer: The Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT) is the international treaty that provides a unified procedure for filing patent applications in multiple member countries.
PPC Regulatory Compliance & Legal Framework 2
Under 37 CFR 1.56, which of the following parties has a duty of candor and good faith toward the USPTO?