Deck 18: Patent Searches and Applications

Question 1

Patent applications can be filed by patent attorneys, patent agents, or the inventor himself or herself.

Answer 1

True

Question 2

As soon as one files a patent application, one may use the term "U.S. Patent" on the invention.

Answer 2

False

Question 3

Why, even after a search is conducted, is it impossible to predict with certainty that a patent application will be successful ?

Answer 3

There are innumerable resources to be reviewed, including both U.S. and foreign materials, which comprise millions of documents. Moreover, during the first 18 months after a patent application is filed, the application is maintained in secrecy, so one has no way of searching for those pending applications until they are published.

Question 4

During the patent prosecution process, a member of the public may file a protest to the application (assuming it is filed within specified time limits).

Question 5

Nearly all patent applications are filed electronically rather than being filed in paper form.

Question 6

Federal law requires that patent applicants perform a patent search before applying for a patent.

Question 7

After conducting a patent search, attorneys can guarantee their clients that their patent applications will be successful.

Question 8

Claims may be set forth and drafted in any manner an applicant desires.

Question 9

Relatively few patent applications are allowed as filed; most require some clarification or amendment.

Question 10

​ A standard utility application includes only one claim.

Question 11

It takes longer to obtain a patent than it does to obtain a trademark or copyright registration.

Question 12

All applications for patent are published about 18 months after the application is filed.

Question 13

A patent applicant may submit new matter during the course of the examination of his or her application.

Question 14

A patent applicant may not obtain two patents for the same invention.

Question 15

Post-grant review, inter partes review, and covered business method reviews are all trial proceedings conducted at the PTAB.

Question 16

Breach of the duty to disclose all material information to the USPTO might result in refusal to issue a patent or invalidity of a patent.

Question 17

For any patent to remain in force, maintenance fees must be paid at stated intervals after the patent is issued.

Question 18

Patents are published in the Official Gazette so that anyone who feels he or she may be damaged by issuance of the patent can oppose it.

Question 19

The only person who may file a patent application for an invention is the inventor himself or herself.

Question 20

All patent applicants retain the services of professional search firms.

Question 21

After a patent application is filed, the examiner may determine that the application covers more than one invention. In such a case a ______ application will be created as a new application for the additional invention.

Question 22

Why does a patent application fully disclose and describe the manner of making and using the invention?

Question 23

The process of moving a patent application through the USPTO, from its filing to its conclusion, is called ______ , which is the same term used for the process for trademark applications.

Question 24

Why did the United States move to the Cooperative Patent Classification system and abandon its prior U.S. Classification System for classifying patents?

Question 25

If one wishes to file a patent application in the United States and obtain protection for the invention in numerous foreign countries, one relies on the ______ Treaty.

Question 26

The part of a patent application that describes the invention and manner and process of making and using it and which includes the claims is called ______.

Question 27

An applicant desires to obtain a patent as quickly as possible. What might the applicant do to expedite the handling of an application?

Question 28

In what way does the USPTO encourage invention by small companies and by individuals who might not have significant financial resources?

Question 29

If a patent application is not sufficient to teach or enable another how to make or use the invention, it is often rejected on the basis that it is ______ .

Question 30

After a provisional application is filed, a nonprovisional application must be filed within ______ or the provisional application will be deemed abandoned.

Question 31

Jill would like to file a patent application on behalf of her father who is recently deceased. Jill is his sole heir. What kind of oath or declaration will Jill provide to the USPTO?

Question 32

What is the difference between a patent attorney and a patent agent?

Question 33

Kyle filed his patent application with the USPTO on February 1, 2016. He would like to file an application for the invention in Belgium. What should Kyle do, and when should or must he take action? Fully discuss.

Question 34

If an applicant fails to take action with the USPTO within the required time limits, the application will be deemed abandoned unless the delay is shown to be ______ .

Question 35

What effect, if any, does filing a provisional application before filing an actual patent application have on the term of a patent?

Question 36

Assume Justin is in a race with a competitor to file a patent application. What might be a good approach for Justin to follow to ensure he is the first to file his application, even though he is not ready to prepare claims for the patent application?

Question 37

Identify the two most basic types or formats of claims.

Question 38

If an examining attorney finds defects in a patent application, he or she will usually issue a[n] ______ to the applicant who will then respond to the USPTO comments and objections.

Question 39

Do patent applicants have the ability to access USPTO files and databases to view the status of their recently filed patent applications? Discuss.

Question 40

Applicants owe the USPTO a duty of ______ and must disclose to the USPTO any information that is material to the patentability of their claimed invention.

Question 41

After Michael's patent was issued, he discovered that he could have stated his claims more broadly. What should Michael do? Discuss and indicate if there are any time limits involved.

Question 42

Why should one use a patent notice?

Question 43

Amy filed her patent application on March 1. On the next February 1, Zoe filed an application for the same invention. Zoe is convinced that Amy "took" her invention and that Zoe herself is the "true inventor." What should Zoe do? Discuss and indicate whether there are any time limits within which Zoe must act.

Question 44

What does it mean to say that the new challenges to issued patents under the America Invents Act have "estoppel" effect?

Question 45

Beth, an inventor, has claimed two separate and distinct inventions in her patent application. In such a case, the examiner will issue a[n] ______ , requiring Beth to limit her application to one invention (and the other may then be pursued in a separate application).

Question 46

Why does the USPTO allow third parties to provide the USPTO with documents and written submissions about a pending patent application?

Question 47

In examining patent applications, examiners rely on a certain guide (which is online and also accessible to the public), called the _____ .

Question 48

The USPTO caused certain delays in the handling of Nick's patent application. What effect might this have on the term of Nick's patent?

Question 49

The America Invents Act provides for three new challenges to issued patents. Identify two of them.

Question 50

As a result of a USPTO error, a patent states it was issued to Amanda Dixon rather than Miranda Dixon. What should Miranda do? Discuss and indicate if any fees are involved.

Question 51

What is the point of or rationale for a supplemental proceeding initiated by a patentee?

Question 52

What is the difference between a statutory disclaimer and a terminal disclaimer?

Question 53

An applicant whose patent application is rejected may file an appeal with a division of the USPTO called ______ .

Question 54

David filed applications for a utility, design, and plant patent on June 1, 2016. All were granted on July 1, 2017.Give the date of expiration of each patent and indicate what obligations are imposed on David to keep the patents in force.