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Patent Bar
Patent Education Series
| Question | Answer |
|---|---|
| ___ replace an unexpired patent that is defective in one or more areas, (i.e. the ___ will attempt to correct the original patent). Only the patent owner may file a ___ application, and any prior are will be re-considered. | Reissues, reissue, reissue |
| ___ : the person or group of persons (even a corporation) that the assignment is made to is referred to as the ___. An assignment transfers all property rights to the ___. | Assignee, assignee, assignee |
| ___: only certain files are open to the public. The rest are kept under the lock and key of the PTO. Pending patents are never viewable to by the public. Neither are those under a secrecy order. | access |
| ___ ___ ___: these give the inventor of a U.S. application the right to immediately file for a patent in a foreign country. Without it, an inventor must wait 6 months before filing in any additional countries. | Foreign filing licenses |
| ___ involves whether the application is pending, abandoned, or issued, as well as whether or not it has been published. | status |
| If a patent application contains issues that are sensitive to national security it will be placed under a ___ ___ for one year after the date of its issuance. It may be renewed for one year as many times as needed. | secrecy order |
| The purpose of ___ ___ ___ is to give the applicant or patent owner a chance to decide if a petitioner seeking access to the owner's application should only be granted access to a portion of the file instead of gaining access to the entire file. | servicing the applicant |
| ___ applications are those that are no longer involved in the patent prosecution process. They will not go on to issue and the owner will not gain a patent. | Abandonment |
| An ___ application is one that has been examined and is deemed worthy of a patent. To become a patent, the issue fee must be paid. | allowed |
| An ___ nonprovisional application is one that has been acted upon by the applicant in response to an examiner's action. | amended |
| ___ ___: A second application for the same invention claimed in a previous nonprovisional application that is filed while the first application is still pending. Usually filed when the claims of the original application have been rejected. | Continuation application |
| ___ ___ ___ ___: these applications may be filed if an inventor makes improvements after he or she has filed the original application. The new material will have the filing date of the CIP application while the old material gets the original date. | Continuation-in-part application |
| ___ ___ ___: these applications have the same serial number as the parent application, but no reference to the parent is made in the specification. Replaced by a request for continuing examination application for utility and plant applications. | Continued prosecution application |
| ___ applications are those with enough overlap in their filing dates that they are both considered pending at the same time. | Copending |
| ___: a quick, clear, concise statement relating to the technical disclosure of a patent. The subject matter should pertain to the invention and provide a short overview to the reader. | Abstract |
| ___ ___ ___: Once an inventor admits to something related to their disclosed invention, the info may never be retracted. | Admissions by inventor |
| ___ ___ include the terms "or" and "optionally". Multiple dependent claims must refer back to preceding claims in the ___. They may never refer back in the cumulative "and". | Alternative expressions, alternative |
| ___ ___ ___: these documents should include all prior art references disclosing subject matter similar to the invention. It is not required for a provisional or nonprovisional application, although highly recommended. | Information Disclosure Statement |
| ___ ___ ___: (repealed by the America Invents Act, as of March 16, 2013) placed invention in public domain, published it, and became prior art reference. No one can ever gain a patent on that invention, but the owner cannot exclude others from it. | Statutory Invention Registration |
| ___ ___: A separate application filed to contain an invention that was cut out of the original patent application if an intended invention turns out to be two or more separate invention. | Divisional application |
| ___ ___: an entirely new application filed after the original was abandoned. Never copends, will not receive the original filing date. Usually has same disclosures as earlier application. | Substitute application |
| If you need to split material from one giant parent application into a few applications, you should file ___ applications for the extra material. | divisional |
| If you want the PTO to start from scratch with the examination process of your application, you may file a ___ or ___ application claiming the same subject matter. | continuing, CPA |
| If you want the PTO to restart the examination process, you may also file a ___ ___ ___ ___ (___) which is not an application type, but part of the examination process | request for continuing examination (RCE) |
| If you make improvements to your claimed invention after filing the original application and want to patent these as well, you may file a ___. | CIP |
| A ___ ___ will block an application from qualifying for a patent due to similar prior art, similar earlier inventions, previously abandoned application, public knowledge or use 1 year prior. | statutory bar |
| ___’s are no longer allowed for utility and plant applications. Instead of filing a ___ for these types of applications, you may file a ___ ___ ___ ___ application (___). This does not apply to ___applications. | CPA, CPA, request for continuing examination, RCE, design |
| ___ ___ ___is determined based on the size of the group that invented the subject matter. For-profit companies with less than 500 employees, nonprofit organizations or independent inventors qualify. Allows the payment of certain fees to be cut in half. | small entity status |
| ___ ___ may be used to overcome double patenting rejections. These are statements filed by an owner of a patent or application that will shorten a portion of the patent term for all claims. | Terminal disclaimers |
| T or F? A petition under 1.48 is not required for a provisional application filed after 12/1/97 that does not include the names of correct inventors, but also does not yet have a cover sheet. | T |
| A(n) ___ nonprovisional application is one that has been acted on by the applicant in response to an examiner's action. | amended |
| T or F? A substitute application will not get the original filing date, therefore, it will not have been protected during the time between filings. | T |
| An application's status as a "rejected" application will continue until the applicant replies satisfactorily to the examiner's action (within a given period of time) or until the application becomes ___. | abandoned |
| A request to convert a provisional application to a nonprovisional application must be filed prior to the earliest of: ___ of the provisional application or expiration of twelve months after the filing date of the provisional application. | abandonment |
| T or F? A provisional application must include an oath or declaration. | F |
| Status as an "allowed" application continues from the date of the ___ ___ ___ until it is withdrawn from issue or until it issues as a patent or becomes abandoned. | Notice of allowance |
| T or F? If an inventor makes improvements after he or she files the original application, he or she may file a continuation-in-part application to cover the improvements. | T |
| T or F? A petition under 37 C.F.R. 1.48 is required if there is a spelling error in the name of the inventor. | F |
| No new oath or declaration is required in rules 1.48(_), 1.48(_), 1.48(_). | b, d, e |
| A ___ application is a nonprovisional one that has not yet received an action by the examiner. | new |
| T or F? Provisional applications are a regular filing that starts the Paris Convention priority year. | T |
| Where a claim for priority has not been made in the parent application, the claim for priority may be made in the continuing application provided that the parent application has been filed within ___ months from the date of the earliest foreign filing. | 12 |
| T or F? New material presented in a a CIP application will have the filing date of the old application. | F |
| T or F? If the intention to broaden claims of a patent is not brought up until after 2 years from the grant date, the inventor may not file broader claims on that patent. | T |
| Once a continued prosecution application (CPA) is filed, the previously filed application will become ___. | abandoned |
| A ___ application is a nonprovisional one that has not yet received an action by the examiner. | new |
| T or F? A substitute application will not get the original filing date, therefore, it will not have been protected during the time between filings. | T |
| T or F? A petition under 1.48 is not required for a provisional application filed after 12/1/97 that does not include the names of correct inventors, but also does not yet have a cover sheet. | T |
| T or F? To gain foreign priority, the foreign application must disclose the same invention as the application filed in the U.S. | T |
| T or F? If the signed oath or declaration from the prior application included a power of attorney, then that power of attorney will not carry over to the divisional application. | F |
| T or F? Inventors may be deleted by filing a continuation or divisional application, using a copy of the executed oath or declaration from the parent application, with a request for deletion of the name of the inventor(s). | T |
| T or F? Restriction practice only applies to national stage applications, whereas unity of invention practice applies to the national stage. | F |
| T or F? A continuation must have all inventors in common with the original application. | F |
| A ___ application is an entirely new application, it is never considered a copending application. | substitute |
| T or F? No new matter may be introduced into an application after its filing date. | T |
| T of F? A petition under 37 C.F.R. 1.48 is required if there is a spelling error in the name of the inventor. | F |
| T or F? Continuations may be filed during the pendency of the parent application. | T |
| 35 U.S.C. 120 deals with determining the priority of ___ applications. | domestic |
| Status as an "allowed" application continues from the date of the ___ ___ ___ until it is withdrawn from issue or until it issues as a patent or becomes abandoned. | notice of allowance |
| A ___ application filed within two years may be entitled to broader claims than those presented in the parent application. | reissue |
| A national application is a U.S. application for a patent filed under ___; or an international patent that became a national application once it entered the national stage. | 35 U.S.C. |
| T or F? If an inventor makes improvements after he or she files the original application, he or she may file a continuation-in-part application to cover the improvements. | T |
| T or F? To gain the benefit of the filing date of a prior application filed in a foreign country, the application must contain the patent identification number. | F |
| T or F? In the case of a successful conversion from a provisional to a nonprovisional application, there is only one application and that application has a single filing date, which is the filing date of the provisional application. | T |
| A nonprovisional application which contains an unanswered examiner's action is designated as a ___ application. | rejected |
| ___ applications include U.S. patent applications filed under 35 U.S.C. 111(a) or (b) or international applications that have entered the national stage. | National |
| An international application will be referred to as having entered the ___ ___ or ___ once that international application has entered into the U.S. system. The date this begins is treated as the filing date of the application. | national phase, stage |
| ___ ___: international applications that have entered the national phase | National stage |
| ___ ___ ___: the concept that an international application must only include one invention or a group of inventions so linked as to form a single general inventive concept. | Unity of invention |
| A ___ ___ ___ exists when there is a technical relationship among the claimed inventions involving one or more special technical features. | unity of inevnetion |
| The regular standards for restriction do not apply in ___ applications, however, the restriction procedures for international applications is related by the unity of invention requirements. | PCT |
| Can a continuation prosecution application be filed for provisional applications? | no |
| ___ describe the structure of an invention and specifically point out what the invention does. They encompass the scope of the patent. They consist of single sentence statements written in the appropriate language. | claims |
| The ___ describes the invention itself. It must include a brief summary of the invention, its background, a description of the related art, the advantages of the invention and the claims. | specification |
| The point of the ___ is to describe the invention in sufficient detail that another person may reduce it to practice without performing any further experimentation. | specification |
| T or F? Patents may be bought and sold like property? | T |
| T or F? For an assignment to be legal it must be in English. | F |
| Assignments may be in non-English if they are ___. | translated |
| T or F? Never more than one patent or application may be listed on a single assignment. | F |
| T of F? A cover sheet should include the date the document was executed and a description of the interest conveyed. | T |
| T or F? Ownership will not need to be established if there is an assignee for a continued prosecution application where ownership has not changed. | T |
| T or F? A new assignment is necessary if any new subject matter is introduced in a nonprovisional application claiming an provisional application. | T |
| Owners of patents can either be ___ or individuals. | corporations |
| T or F? Ownership will need to be established when signing a small entity statement. | F |
| T or F? Documents sent by fax machine do not need a cover sheet for each transaction as long as the identifying application or patent number is included. | F |
| T or F? Assignments recorded in the original application will transfer over to continuation and divisional applications. | T |
| A new assignment is necessary if a ___ application is filed since there will be new material presented. | CIP |
| T or F? Inventorship can be changed when an assignment is made. | F |
| Since the Office will not determine whether a condition has been fulfilled, the Office will treat the submission of such assignment for recordation as signifying that the act or event has occurred. | T |
| T or F? A cover sheet must go along with each and every document submitted to the Office for recording. | T |
| Assignments which are made ___ are regarded as absolute assignments for Office purposes. | conditionally |
| ___ belongs to whomever has the controlling interest in a patent or a patent application. | Ownership |
| T or F? Even if the assignee did not help with prosecuting the application, if his or her name is on the Issue Fee Transmittal form, the patent will issue to the assignee. | T |
| T or F? Documents sent by fax machine do not need a cover sheet for each transaction as long as the identifying application or patent number is included. | F |
| T or F? A cover sheet should include the date the document was executed and a description of the interest conveyed. | T |
| The inventor will be considered the owner of the patent rights unless there is a recorded ___. | assignment |
| A new assignment is necessary if any new subject matter is introduced in a nonprovisional application claiming a provisional application. | T |
| T or F? Unless stated in a written agreement, joint owners of a patent may make, use, offer to sell or sell the patented invention within the U.S. or import the patented invention to the U.S. without consent of an without accounting to the other owners. | T |
| Ownership will need to be established when the application becomes ___. | abandoned |
| T or F? Patents may be bought and sold like property. | T |
| T or F? Ownership will not need to be established if there is an assignee for a continued prosecution application where ownership has not changed. | T |
| If the issue fee has been paid before the assignee is named, then the assignee will have to petition under ___. | 37 C.F.R. 3.81 |
| T or F? Never more than one patent or application may be listed on a single assignment. | F |
| T or F? Ownership is determined by the Patent Office while inventorship is determined by the courts. | F |
| T or F? Since the Office will not determine whether a condition has been fulfilled, the Office will treat the submission of such assignment for recordation as signifying that the act or event has occurred. | T |
| A new assignment is necessary if a ___ application is filed since there will be new material presented. | CIP |
| Owners of patents can either be ___ or individuals. | corporations |
| T or F? Assignments recorded in the original application will transfer over to continuation and divisional applications. | T |
| For an assignment to be legal it must be in English. | F |
| T or F? A cover sheet must go along with each and every document submitted to the Office for recording. | T |
| Assignments which are made ___ are regarded as absolute assignments for Office purposes. | conditionally |
| T or F? Ownership will need to be established when signing a small entity statement. | F |
| T or F? Inventorship can be changed when an assignment is made. | F |
| T or F? Double correspondence may be undertaken (for example, an applicant and an attorney or even with two attorneys) with the proper petition and fee. | F |
| T or F? An assignment will by itself operate as a revocation of a power of authorization previously given. | F |
| T or F? If the inventor is dead, insane or otherwise legally incapacitated, the application cannot be made on the original applicant's behalf. | F |
| T or F? If there is joint inventorship, one or more of the joint inventors may give power of attorney to the other joint inventor in the application only if he or she is a registered patent attorney or agent. | F |
| A patent attorney or agent must withdraw his or her power of attorney at least ___ days before the last possible date for any required response. | 30 |
| All notices and official letters for the patent owner in a ___ proceeding will be directed to the attorney or agent of record in the patent file at the address listed on the register of patent attorneys and agents. | reexamination |
| T or F? An assignee may exclude the inventor from access to the patent. | T |
| T or F? A correspondence address or change thereto may be filed with the Patent and Trademark Office during the enforceable life of the patent. | T |
| T or F? If there is more than one attorney or agent of record, only one needs to sign the notice of withdrawal for it to be authorized. | F |
| To or F? A facsimile can be used for addressing rule 1.53(d). | T |
| Rule 1.53(d) regards ___ ___ applications. | continued prosecution |
| A facsimile ___ be used for CPA applications. | may |
| T or F? Express Mail can always be used for filing papers with the PTO. | T |
| T or F? A supplemental declaration/supplemental amendment requires an immediate fee. | F |
| T or F? A facsimile may be used for applications under secrecy order. | F |
| T or F? No refund will be made once the fees for claims are properly paid even if claims are later canceled, unless a petition for express abandonment is granted. | T |
| A separate Certificate of Mailing is not required when ___ ___ is used | Express Mail |
| T or F? Black and white drawings may be transmitted by facsimile in appropriate circumstances. | T |
| T or F? No new matter may be introduced after the filing date of a nonprovisional application. | T |
| T or F? It is desirable that all parts of the complete application be deposited in the Office together; otherwise, a letter must accompany each part, accurately and clearly connecting it with the other parts of the application. | T |
| T or F? A Certificate of Mailing can be used for a request for a continued examination. | T |
| T or F? A facsimile may be used for requests for reexamination. | F |
| T or F? A facsimile can be used for addressing rule 1.53(b). | F |
| Rule 1.53(b) pertains to ___-___-___ applications. | continuation-in-part |
| A Certificate of Transmission (facsimile) ___ be used for papers sent from a foreign country. | may |
| A facsimile ___ be used for international applications. | may not |
| T or F? Absolutely no correspondence relating to an application should be filed prior to receipt of the application number from the Patent Trademark Office. | T |
| T or F? The following is not required with a nonprovisional application in order for it to receive a filing date: an oath or declaration, the fee, an English translation, Information Disclosure Statements | T |
| ___ correspondence will be stamped with the date the complete transmission is received in the PTO unless that is a Sat, Sun, or Federal Holdiay. | Facsimile |
| T or F? Fees may be due retroactively if the inventor's small entity status changes during the prosecution. | F |
| T or F? A color drawing may be sent in via facsimile. | F |
| T or F? A Certificate of Mailing can be used to file any of the 37 CFR 1.53 rules. | F |
| T or F? When using a Certificate of Mailing, the filing date is based on the date the correspondence is received. | F |
| ___ applications must contain at least one claim to receive a filing date. | Nonprovisional |
| The "date in" on the "Express Mail" mailing label must be completed by the ___. | USPS |
| T or F? A Certificate of correction for a PTO mistake does not require an immediate fee. | T |
| T or F? A paper copy of an email communication needs to be placed in an application file. | F |
| T of F? The mailing of an OPAP notice regarding a missing page(s) or specification in a nonprovisional application will permit the applicant to promptly establish prior receipt in the USPTO of the pages at issue. | T |
| T or F? The specification may not have tables and chemical formulas within it. | F |
| Any dependent claim which refers to more than one other claim ("multiple dependent claims") shall refer to such other claims in the ___ only. | alternative |
| T or F? A title should never have the articles a, an, and the as its first words. | T |
| T or F? The original numbering of the claims must be preserved throughout the prosecution. | T |
| T or F? A nonprovisional or provisional application may be in a language other than English. | T |
| 37 CFR 1.53(b) is directed toward ___ application requirements. | nonprovisional |
| Amendments to claims are limited to ___ word deletions or additions. | 5 |
| T or F? Statements under 37 CFR 1.97(e) (for the filing of an IDS) indicate that the IDS was filed within the 3 month period of either the first citation by a foreign patent office, or the first discovery of the information. | T |
| The abstract should be nor more than ___ words. | 150 |
| T or F? Filing a supplemental oath or declaration is not a matter of right, therefore, it can be filed after the application is allowed. | F |
| T or F? In an application filed by joint inventors, the inventors may execute a different oath or declaration. | T |
| T or F? Inventors can apply for a patent jointly even if they did not physically work together on the invention. | T |
| T or F? Multiple dependent claims may contain all the limitations of all the alternative claims to which they refer. | F |
| No graphs, diagrams, or flowcharts are allowed in the ___. | specification |
| T or F? A patent attorney or agent cannot sign an oath, even if a previously signed oath was obtained the same day. | T |
| T or F? The Office currently reviews drawings to determine wither the drawings are acceptable or not acceptable for publication purpose. | T |
| T or F? Preliminary amendments are typically filed to eliminate informal claims and reduce filing fees. | T |
| T or F? If the specification in a provisional application is filed in non-English, a translation and statement that it is accurate must be filed for the benefit of the provisional application to be claimed in a later-filed nonprovisinoal application. | T |
| There is no requirement that an applicant must make a patetability search or include a ___, doing so it entirely optional. | IDS |
| T or F? All provisional applications must be filed with a cover sheet or cover letter identifying the application as a provisional one or it will be examined as a nonprovisional application. | T |
| T or F? The oath or declaration must state that the person making the oath or declaration acknowledges the duty to disclose to the Office all information known to him or her to be material to patentability as defined in 37 CFR 1.56. | T |
| The fact that a dependent claim which is proper might relate to a separate invention requiring a separate search or be separately classified from the claim on which it depends would not render it improper, although it might result in a ___ for ___. | requirement, restriction |
| T or F? The specification is not allowed to contain reservations for future applications of the subject matter that is disclosed, but not claimed in the pending application. | T |
| T or F? A deficiency in the oath or declaration may be corrected by a application data sheet. | T |
| T or F? "A gadget according to claim 3 and 4, further comprising..." is an example of a bad multiple dependent claim. | T |
| The phrase, "chosen from the group consisting of" defines a ___ ___. | Markush group |
| T or F? Claims of like species should be grouped together. | T |
| A claims to a device, apparatus, machine, or composition of matter may contain a reference to the process in which it is intended to be used, so long as it is clear that the claim is directed to the ___ and not the ___. | product, process |
| T or F? After the payment of the issue fee, it is impractical for the Office to consider any information disclosure statements. | T |
| Any request for a refund must be filed within ___ years from the date the fee was paid, except as otherwise provided in this paragraph or in 1.28(a). | 2 |
| One or more claims may be presented in ___ form, referring back to and further limiting another claim or claims in the same application. | dependent |
| The filing fee for a nonprovisional application is calculated by the total number of ___. | claims |
| T or F? Multiple dependent claims must be considered in the same manner as a plurality of single dependent claims. | T |
| T or F? Where individual declarations are executed, they can be combined into one declaration by combining the signature pages. | F |
| Information disclosure statements are not allowed in ___ applications. | provisional |
| T or F? Product and process claims should be grouped together. | F |
| T or F? The acceptance of a petition for the conversion of a nonprovisional to a provisional application entitles an applicant to a refund of the fees he or she paid for the original application. | F |
| T or F? If a practitioner "by mistake" files an application and a basic filing fee, the submission of the filing fee with the application is never treated by the Office as a fee paid by mistake and the fee will not be refunded. | T |
| If an examiner determines that a ___ ___ present on the filing date includes subject matter not supported by the originally filed specification, and the oath does not refer to it, they may require the applicant to file a supplemental oath. | preliminary amendment |
| T or F? A restriction will never be required between the embodiments of a multiple dependent claim. | F |
| T or F? For a continuing application, the petition for color photographs or drawings does not need to be renewed. | F |
| T or F? Claims should be placed at the beginning of the specification. | F |
| T or F? A brand new oath is required for a continuation filing under 37 CFR 1.53(b). | F |
| T or F? If a request for prioritized examination is dismissed, the prioritized examination fee will not be refunded. | F |
| The revival of an abandoned application may require a ___ ___. | terminal disclaimer |
| ___ of a claimed invention may be demonstrated by producing evidence of the absence of a property the claimed invention would be expected to possess based on the teachings of the prior art. | Nonobviousness |
| T or F? Reissue applications are eligible for the accelerated examination program. | F |
| A request for the reconsideration of an application must be filed withing ___ months of the decision to refuse to revive the application. | two |
| Due dates ___ be extended for the submission of an IDS. | cannot |
| T or F? Human embryos may be found to be patentable subject matter. | F |
| After being given a final rejections, the applicant may file a Notice of ___. | Appeal |
| To establish common ownership, it is required that the ownership is ___%. | 100 |
| If any fee is unpaid at the time of filing of the application, a request for prioritized examination will be ___. | dismissed |
| Extension fees can be reduced by 50% for ___ ___ if the proper documentation is filed. | small entities |
| T or F? A failure to meet the 12 month goal in the accelerated examination program is a petitionable matter. | F |
| Interviews are not granted to people who do not have a ___ of the application. | copy |
| ___ extensions are not allowed for reexamination proceedings. | Automatic |
| If a ___ ___ showing of no utility is established, the applicant may provide evidence in the form of a declaration under 37 CFR 1.132. | prima facie |
| For applications filed on or after ___ ___, ___, a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application. | September 21, 2004 |
| Swearing back must be done on a claim by claim basis as different claims may also have different ___ ___. | filing dates |
| An interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a ___ or ___ application. | continuing, substitute |
| Any amendment made to an application in the accelerated examination program must not add claims which result in more than ___ independent claims or more than ___ total claims. | 3, 20 |
| An intentionally abandoned application ___ be revived. | cannot |
| ___ amendments may be filed along with the filing of an application, but are limited to a cancellation of the claims. | Preliminary |
| All responses to Official actions must be filed within ___ months of the mailing date. | six |
| ___ ___ may not be used to overcome a statutory double patenting rejection. | Swearing back |
| ___ ___ occur when part of the patent term must be dedicated to the public. | Terminal disclaimers |
| Due dates ___ be extended for the payment of the issue fee. | cannot |
| By making an application ___, the examination process will be considerable sped up. | special |
| A ___ involves the merits of the claim and is subject to review by the Board, while an ___, if persisted, may be reviewed only by way of a petition to the Commissioner. | rejection, objection |
| The goal of the accelerated examination program is to complete the examination of the application within ___ ___ from the filing date of the application. | 12 months |
| If the examiner is taking an unduly long period of time to get back to the applicant, the applicant can file a ___ of ___ to gain back the time he or she lost on the patent term while waiting for the examiner to make the next move | suspension, action |
| An ___ is defined as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." | algorithm |
| When a term of degree is used in the claim, the examiner should determine whether the specification provides some ___ for measuring that degree. | standard |
| The fact that claim language, including terms of degree, may not be precise, does not automatically render the claim indefinite under 35 USC 112 ___ paragraph. | second |
| In patent examining parlance, the claim language must be ___ to comply with 35 USC 112, second paragraph. | definite |
| ___ USC ___ states: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements. | 35, 101 |
| T or F? A legal contractual agreement between two parties may be patentable. | F |
| T or F? During a claim analysis, for a product, the claim limitations will define steps or acts to be performed. | F |
| ___ of an article means that the article has changed to a different state or thing. | Transformation |
| Under 35 USC 101, whoever invents or discovers an eligible invention may obtain only ___ patent. | one |
| T or F? The presence of limitations relating to a tax strategy would not cause a claim that is otherwise within the prior art to become novel or non-obvious over the prior art. | T |
| T or F? A claim which makes reference to a preceding claim to define a limitation is an acceptable claim construction which should not necessarily be rejected as improper or confusing under 35 USC 112, second paragraph. | T |
| T or F? An applicant may not assert more than one utility and practical application for the claimed invention. | F |
| 35 USC 112, ___ paragraph requires that a patent application specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his or her invention. | second |
| A limitation will not invoke 35 USC 112, sixth paragraph if there is a ___ ___ that further describes the non-structural term. | structural modifier |
| T or F? The USPTO issues patents on genes, stem cells, animals with human genes, and a host of non-biologic products used by humans. | T |
| T or F? Methods and products employing abstract ideas, physical phenomena, and laws of nature to perform a real-world function are not patentable. | F |
| A ___ claim recites a list of alternatively useable species. | Markush |
| Determining compliance with the ___ ___ requirement requires a two-prong inquiry. | best mode |
| The first paragraph of 35 USC 112 contains three separate and distinct requirements: adequate ___ ___, enablement, and best mode. | written description |
| The ___ ___ will provide the clearest explanation of the applicant's invention, by exemplifying the invention, explaining how it relates to the prior art and explaining the relative significance of various features of the invention. | written description |
| The subject matter which courts have found to be outside of, or exceptions to, the four statutory categories of invention is limited to ___ ___, laws of nature, and physical phenomena. | abstract idea |
| The term ___ ___ is defined for purposes of this provision as referring to any liability for a tax under any Federal, State, or local law, or the law of any foreign jurisdiction. | tax liability |
| T or F? Generally, the recitation of specific numerical ranges in a claim raises an issues of whether a claim is definite. | F |
| T or F? Claims under examination are not evaluated with a different standard than patented claims to determine whether the language is definite. | F |
| T or F? The presence of a trademark or trade name in a claim is improper under 35 USC 112, second paragraph. | F |
| T or F? Reviewing a claimed invention for compliance with 35 USC 102 and 103 begins with comparison of the claimed subject matter to what is known in prior art. | T |
| T or F? Wherein clauses is an example of language that may raise a question as to the limiting effect of the language in a claim. | T |
| T or F? An arrangement of printed matter may be found to be patentable. | F |
| The ___-___-___ ___ is a useful and important clue, and investigative tool, for determining whether some claimed inventions are processes under 101. | machine-or-transformation test |
| A thorough search of prior art generally involves reviewing both US and ___ ___ and nonpatent literature. | foreign patents |
| The four categories of inventions that Congress deemed to be the appropriate subject matter of a patent under 35 USC 101 include: processes, machines, ___, and compositions of matter. | manufactures |
| T or F? The phrase "at least one piece" is in violation of USC 112, second paragraph. | T |
| The claim limitation is presumed to invoke 35 USC 112, sixth paragraph when it explicitly uses the phrase ___ ___ or step for and includes functional language. | means for |
| T or F? Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. | T |
| T or F? A single claim which claims both an apparatus and the method steps of using the apparatus is definite under 35 USC 112, second paragraph. | F |
| T or F? Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. | T |
| T or F? Applicants may rely on the novelty or non-obviousness of a tax strategy embodied in their claims to distinguish them from the prior art. | F |
| T or F? As of September 16, 2011, the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. | T |
| A process claim, to be statutory under 35 USC 101, must be limited to a particular practical application. | T |
| T or F? An enabling drawing or picture may not be used to reject claims. | F |
| Under 35 USC 102(_), a person will be entitled to a patent unless he or she has abandoned the invention. | c |
| 35 USC 102(_) asks if the invention was public or patented anywhere else in the world. | b |
| If the inventor ___ his or her own work more than 1 year before the filing of the patent application, the inventor is barred from obtaining a patent on that work. | disloses |
| T or F? Public knowledge is public use. | F |
| USC 102(_) applies when the reference has a publication date earlier than the effective filing date of the application and it is not the applicant's own work. | a |
| T or F? When a claim reciting ranges covers several compositions, the claim is only anticipated if all of them is in the prior art. | F |
| T or F? Aesthetic design changes are not a factor supporting obviousness. | F |
| The 35 USC(e) reference date is the ___ date, not the date of the inventor's conception or reduction to practice. | filing |
| ___ can be shown even when a prior art reference merely discloses the structure of the claimed compound and evidence shows that attempts to prepare that compound were unsuccessful before the date of invention. | Inoperability |
| T or F? The level of disclosure required within a reference to make it an enabling disclosure is the same no matter what type of prior art is at issue. | T |
| For anticipation under 35 USC ___, the reference must teach every aspect of the claimed invention, either explicitly or impliedly. | 102 |
| T or F? To establish prima facie, all the claim limitations must be taught or suggested by the prior art. | T |
| T or F? Proof of efficacy is a requirement for a prior art reference to be enabling/operable for the purposes of anticipation. | F |
| T or F? The determination of patentability is not based upon the product itself. | F |
| Where it can be shown that an application has "derived" an invention from another, a rejection under 35 USC(_) is proper. | f |
| The ___ ___ ___ does not generally apply where both manufacture and delivery occurred in a foreign country. | on sale bar |
| ___ ___ may be signaled by a demonstration of models or prototypes. | Commercial exploitation |
| 35 USC ___ is based on the obviousness of the subject matter. If the subject matter is found to be obvious, the application will be rejected. | 103 |
| A non-enabling reference may/may not qualify as prior art for the purposes for determining obviousness under 35 USC 103. | may |
| A bar under 102(_) arises where the invention is in public use and ready for patenting. | b |
| ___ ___ occurs when the inventor allows another person to use the invention without limitation, restriction or obligation of secrecy to the inventor. | Public use |
| A rejection under 35 USC 102(_) is proper if the invention was first patented more than 12 months before the filing of the application in the U.S. | d |
| T or F? An on-sale bar does not require an actual sale. | T |
| 35 USC 102(_) bars the issuance of a patent where another made the invention in the US and did not abandon suppress or conceal it. | g |
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