PPC Risk Assessment & Mitigation 2 — Questions and Answers
Question 1: A patent application claims a method that was publicly demonstrated at a trade show 13 months before the U.S. filing date. What is the most critical risk to assess?
- The application may be barred under 35 U.S.C. § 102(b)(1) as the grace period has expired (Correct answer)
- The application requires an accelerated examination request
- The prior public demonstration triggers a mandatory PCT filing
- The inventor must file a supplemental oath disclosing the demonstration
Correct answer: The application may be barred under 35 U.S.C. § 102(b)(1) as the grace period has expired
Under AIA, the one-year grace period for inventor disclosures runs from the effective filing date, so a disclosure 13 months prior falls outside the grace period and creates an absolute bar.
Question 2: During docketing review, a paralegal discovers that an office action response deadline falls on a Sunday. What is the correct risk-mitigation step?
- File the response by Friday to avoid any risk
- The deadline automatically extends to the next business day (Monday) under USPTO rules (Correct answer)
- Request a one-month extension of time immediately
- File a petition for revival in case the deadline is missed
Correct answer: The deadline automatically extends to the next business day (Monday) under USPTO rules
Under 37 C.F.R. § 1.7, when a USPTO deadline falls on a Saturday, Sunday, or federal holiday, it is automatically extended to the next business day.
Question 3: An inventor discloses new subject matter during an interview with the examiner that was not included in the original specification. What risk does this create?
- The examiner may reject all claims under § 112 for lack of written description
- A new matter rejection under § 132 may be issued if the specification is amended to add the new subject matter (Correct answer)
- The application will be automatically abandoned for prosecution misconduct
- The inventor must file a continuation application within 30 days
Correct answer: A new matter rejection under § 132 may be issued if the specification is amended to add the new subject matter
Adding new matter to a patent application after filing violates 35 U.S.C. § 132, which prohibits amendments that introduce subject matter not present in the original disclosure.
Question 4: A company's issued patent lists only two of three actual inventors. What is the primary legal risk if the omission is not corrected?
- The patent may be unenforceable due to inequitable conduct or invalid for improper inventorship (Correct answer)
- The patent will be automatically reissued to add the missing inventor
- The missing inventor must file a separate application for the same invention
- The assignee automatically loses all licensing rights until correction is made
Correct answer: The patent may be unenforceable due to inequitable conduct or invalid for improper inventorship
Incorrect inventorship can render a patent invalid or unenforceable; correction is possible under 35 U.S.C. § 256, but failure to correct creates significant litigation risk.
Question 5: What risk arises when a patent paralegal calendars a PCT national phase entry deadline without accounting for the applicant's chosen national stage country's local rules?
- The application may miss country-specific translation and fee deadlines that differ from the 30-month PCT deadline (Correct answer)
- The PCT application will be automatically converted to a provisional application
- The national phase entry will be void if filed more than 28 months from priority
- WIPO will issue a deficiency notice extending the deadline by 60 days
Correct answer: The application may miss country-specific translation and fee deadlines that differ from the 30-month PCT deadline
While the PCT provides a 30-month national phase deadline, individual countries may impose earlier or additional requirements such as translations, local agent appointments, and national fees.
Question 6: A paralegal notices that a pending claim uses the phrase 'a means for detecting temperature.' What patent law risk should be flagged for the attorney?
- The claim may invoke § 112(f) means-plus-function interpretation, limiting its scope to the disclosed structure (Correct answer)
- The claim will be rejected under § 101 as directed to an abstract idea
- The use of 'means' automatically triggers a double patenting rejection
- The claim must be rewritten in Jepson format to be allowable
Correct answer: The claim may invoke § 112(f) means-plus-function interpretation, limiting its scope to the disclosed structure
Claims using 'means for' language are presumed to invoke 35 U.S.C. § 112(f), restricting their scope to the specific structure disclosed in the specification and its equivalents.
Question 7: A foreign priority application was filed in Germany on March 1, 2025. What is the last date to file a corresponding U.S. utility application claiming priority to that German application?
- March 1, 2026 (Correct answer)
- September 1, 2025
- March 1, 2027
- December 1, 2025
Correct answer: March 1, 2026
Under 35 U.S.C. § 119(a), a U.S. utility application must be filed within 12 months of the foreign priority application's filing date to claim priority.
PPC Risk Assessment & Mitigation 2
A patent application claims a method that was publicly demonstrated at a trade show 13 months before the U.S. filing date.
What is the most critical risk to assess?