PPC Risk Assessment & Mitigation 3 — Questions and Answers
Question 1: A client asks a patent paralegal to evaluate whether a competitor's product infringes their patent. What is the primary risk-management concern in this scenario?
- Providing infringement opinions constitutes the unauthorized practice of law and must be escalated to a supervising attorney (Correct answer)
- The paralegal should prepare a claim chart and send it directly to the client
- Infringement analysis is within the standard scope of paralegal duties without attorney supervision
- The paralegal must first obtain a freedom-to-operate search before any analysis
Correct answer: Providing infringement opinions constitutes the unauthorized practice of law and must be escalated to a supervising attorney
Rendering legal opinions on patent infringement constitutes the practice of law, which paralegals are prohibited from performing independently under professional responsibility rules.
Question 2: A client's patent portfolio includes a patent that has been in litigation for three years. During annual maintenance fee review, the paralegal notes the 7.5-year fee is due in 45 days. What action minimizes risk?
- Alert the supervising attorney immediately and confirm whether the patent should be maintained given litigation strategy (Correct answer)
- Pay the maintenance fee without further consultation to avoid abandonment
- Request a six-month extension to give the litigation team time to decide
- File a petition to suspend prosecution pending the litigation outcome
Correct answer: Alert the supervising attorney immediately and confirm whether the patent should be maintained given litigation strategy
Maintenance fee decisions for patents under litigation require attorney input because abandonment or maintenance may affect litigation strategy and settlement leverage.
Question 3: Which of the following scenarios most clearly represents a conflict of interest risk that a patent paralegal must flag?
- Being asked to work on a matter for Company B whose patent claims are being asserted against current client Company A (Correct answer)
- Drafting claims for a new application in a technology field the paralegal has not worked in before
- Calendaring a response deadline for a matter assigned to a different paralegal in the firm
- Preparing a patent application for an inventor who has previously worked with the firm on unrelated matters
Correct answer: Being asked to work on a matter for Company B whose patent claims are being asserted against current client Company A
Representing adverse parties in the same or substantially related matters constitutes a conflict of interest that must be flagged under professional responsibility rules.
Question 4: A company files a patent application but fails to disclose a highly relevant prior art reference known to its chief technology officer. What doctrine could later render the patent unenforceable?
- Inequitable conduct (Correct answer)
- Prosecution history estoppel
- Inter partes review
- Obviousness-type double patenting
Correct answer: Inequitable conduct
Inequitable conduct occurs when an applicant knowingly withholds material prior art with intent to deceive the USPTO, potentially rendering the patent permanently unenforceable.
Question 5: A paralegal is assisting with an inter partes review (IPR) petition. The petition must be filed within what timeframe after service of a complaint alleging infringement of the challenged patent?
- One year (Correct answer)
- Six months
- Two years
- Eighteen months
Correct answer: One year
Under 35 U.S.C. § 315(b), an IPR petition is time-barred if filed more than one year after the petitioner was served with a complaint alleging infringement of the patent.
Question 6: When conducting a freedom-to-operate (FTO) search, which risk category is most critical to identify?
- Issued, in-force patents with claims that read on the client's planned product or process (Correct answer)
- Expired patents that were once asserted in litigation
- Published patent applications that have not yet been examined
- Foreign patents in countries where the client does not plan to sell
Correct answer: Issued, in-force patents with claims that read on the client's planned product or process
An FTO analysis focuses on identifying active, in-force patents with claims broad enough to cover the client's commercial activities, since only such patents pose immediate infringement risk.
Question 7: A provisional patent application is filed on July 1, 2024. What is the latest date to file a nonprovisional application claiming priority to it, and what happens if that date is missed?
- July 1, 2025; the priority benefit is lost and any public disclosures may now serve as prior art (Correct answer)
- July 1, 2026; the provisional automatically converts to a nonprovisional
- January 1, 2025; the provisional expires without any cure period
- July 1, 2025; a petition can revive the provisional for an additional 12 months
Correct answer: July 1, 2025; the priority benefit is lost and any public disclosures may now serve as prior art
A provisional application expires 12 months after filing under 35 U.S.C. § 111(b)(5), and missing the nonprovisional filing deadline results in permanent loss of the provisional's priority date.
PPC Risk Assessment & Mitigation 3
A client asks a patent paralegal to evaluate whether a competitor's product infringes their patent.
What is the primary risk-management concern in this scenario?