Patent Agent Exam flashcards

32 cards. Read the term and the definition here. The deck at the top of this page is optional.

102(a)(1) prior art

A disclosure is prior art if it was patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the effective filing date.

102(b)(1) grace period

A disclosure made one year or less before the effective filing date is excepted from prior art if made by the inventor or by another who obtained the subject matter from the inventor.

Obviousness standard

Under 35 U.S.C. 103, a claim is obvious if the differences from prior art would have been obvious to a person of ordinary skill at the effective filing date.

KSR rational underpinning

Combining references requires an articulated reason with a rational underpinning; mere obviousness to try needs an identified need or design incentive in the art.

Alice/Mayo two-step

First ask whether the claim is directed to a judicial exception; then ask whether additional elements integrate it into a practical application or amount to significantly more.

112(a) requirements

The specification must provide written description, enablement, and best mode; the first two are litigated most often, and best mode is not a defense in court.

Inventorship conception rule

Each claim must name every person who contributed to its conception; a person who merely assists with reduction to practice is not an inventor.

Provisional application limits

A provisional needs a specification and drawings but no claims or oath; it lasts 12 months and requires a later nonprovisional claiming benefit within that period.

IDS timing rule

An information disclosure statement must be filed before the first action on the merits or within three months of filing, with copies of non-U.S. documents unless accessible.

Shortened statutory period

Office action responses get a 3-month shortened statutory period, extendable to 6 months total on a fee basis before abandonment.

RCE requirements

A request for continued examination under 37 CFR 1.114 requires a fee and a submission, and buys another full prosecution cycle without a new oath.

Appeal brief timing

After a notice of appeal, the appeal brief is due within 2 months; the examiner then files an answer and the appellant may file a reply brief.

Issue fee deadline

The issue fee is due within 3 months of the notice of allowance; the patent issues on a Tuesday after payment and any required publication fee.

Maintenance fee schedule

Maintenance fees are due at 3.5, 7.5, and 11.5 years after grant; a six-month grace period applies with a surcharge.

Certificate of correction

Under 35 U.S.C. 255, a certificate of correction fixes clerical or typographical errors in the patent; substantive errors require reissue under 35 U.S.C. 251.

Comprising transitional phrase

Comprising is open-ended, allowing additional unrecited elements; consisting of is closed, and consisting essentially of excludes only material affecting basic and novel characteristics.

Means-plus-function claiming

Under 112(f), a means-for limitation covers the corresponding structure disclosed in the specification and its equivalents, not every structure performing the function.

Antecedent basis defect

A claim term first appearing with the or said lacks antecedent basis and may be rejected under 112(b) for failing to distinctly point out the claimed subject matter.

Claim differentiation doctrine

A dependent claim is presumed narrower than its parent, so a limitation in a dependent claim is generally not read into the independent claim.

Phillips claim construction

Claim construction relies on intrinsic evidence: claim language, specification, and prosecution history; extrinsic evidence is secondary and cannot contradict intrinsic evidence.

Nautilus indefiniteness test

A claim is indefinite only if, read in light of the specification and prosecution history, it fails to inform with reasonable certainty those skilled in the art about its scope.

Preamble limiting effect

A preamble is limiting when it recites essential structure or is relied on to define the invention, but not when it merely states an intended use.

Product-by-process claim scope

A product-by-process claim is limited by the recited process when the product cannot otherwise be distinguished from prior art products.

Claim sentence rule

Each claim must be a single sentence; dependent claims add limitations and must refer to a preceding claim, and consistent terminology avoids ambiguity.

Registered practitioner requirement

Practice before the USPTO requires registration; pro se inventors may file without registration but cannot represent others before the Office.

37 CFR 11.18 certification

A signature certifies reasonable inquiry that the paper is not for an improper purpose, legal contentions are warranted, and factual contentions have evidentiary support.

Duty of candor

Under 37 CFR 1.56, each person associated with prosecution must disclose material information; inequitable conduct can render the entire patent unenforceable.

Conflict of interest rule

Under 37 CFR 11.107, a practitioner may not represent a client if directly adverse to another client or materially limited, absent informed consent.

Client confidentiality duty

Under 37 CFR 11.106, client information cannot be revealed without informed consent, except to prevent reasonably certain death or substantial bodily harm or as required by law.

Small and micro entity

Small entity status under 37 CFR 1.27 and micro entity status under 37 CFR 1.29 reduce many USPTO fees; not all fees are discounted.

Inter partes review window

An IPR petition must be filed after 9 months from grant or after termination of a post-grant review, and is limited to patents and printed publications.

Inequitable conduct standard

Withholding a known material reference with specific intent to deceive can make a patent unenforceable; the standard requires but-for materiality plus intent.