PPC Case Analysis & Practical Application 2 — Questions and Answers
Question 1: A patent applicant's 12-month statutory bar date falls on a Sunday. When is the actual deadline to file?
- The preceding Friday
- The following Monday (Correct answer)
- The preceding Saturday
- The same Sunday — no extension applies
Correct answer: The following Monday
When a USPTO deadline falls on a Saturday, Sunday, or federal holiday, it is extended to the next business day.
Question 2: During prosecution, an examiner issues a final rejection. The applicant wants more time to respond without filing a Notice of Appeal. Which option is most appropriate?
- File a continuation application immediately
- File a Request for Continued Examination (RCE) (Correct answer)
- Submit an Information Disclosure Statement
- File a petition to make special
Correct answer: File a Request for Continued Examination (RCE)
An RCE allows prosecution to continue after a final rejection by paying the required fee and submitting a response.
Question 3: A client invented a medical device while employed under an IP assignment agreement. The company claims ownership, but the device was created entirely on personal time with personal equipment. What is the first step a patent paralegal should take?
- File the patent in the client's name immediately
- Review the exact language of the employment agreement (Correct answer)
- File in the company's name to avoid conflict
- Request an inter partes review
Correct answer: Review the exact language of the employment agreement
The scope of an employment IP assignment agreement determines ownership, so its language must be reviewed carefully before any filing decision.
Question 4: An examiner rejects claims 1–5 under 35 U.S.C. § 103 citing references A and B in combination. The applicant argues reference B teaches away from combining with A. This is an argument based on:
- Anticipation by a single prior art reference
- Lack of enablement in the specification
- Objective indicia of non-obviousness (secondary considerations)
- Whether a PHOSITA would have been motivated to combine the references (Correct answer)
Correct answer: Whether a PHOSITA would have been motivated to combine the references
A 'teaching away' argument challenges whether a person of ordinary skill would have been motivated to combine the references, a required element of an obviousness rejection.
Question 5: A paralegal notices that an issued patent lists only two inventors, but lab notebooks show a third person contributed to at least one claim. What should be done?
- File a reissue application to correct all claims
- File a Certificate of Correction to add the omitted inventor (Correct answer)
- File a continuation listing all three inventors
- Take no action because the patent has already issued
Correct answer: File a Certificate of Correction to add the omitted inventor
Inventorship errors on issued patents can be corrected by filing a Certificate of Correction under 37 C.F.R. § 1.324.
Question 6: A client received a cease-and-desist letter alleging infringement of a competitor's patent that issued 10 years ago. Which validity challenge option allows third parties to request USPTO review based on prior art patents and printed publications?
- Ex parte reexamination requested by the patent owner
- Inter partes review (IPR) petition (Correct answer)
- Supplemental examination
- Certificate of Correction
Correct answer: Inter partes review (IPR) petition
Inter partes review allows third parties to challenge patent validity at the PTAB based on prior art patents or printed publications.
Question 7: A PCT international application designating the US enters the national phase. The paralegal must ensure the national stage entry is completed within:
- 12 months from the PCT filing date
- 18 months from the priority date
- 20 months from the earliest priority date
- 30 months from the earliest priority date (Correct answer)
Correct answer: 30 months from the earliest priority date
Under 35 U.S.C. § 371, PCT applications must enter the US national phase within 30 months from the earliest priority date.
PPC Case Analysis & Practical Application 2
A patent applicant's 12-month statutory bar date falls on a Sunday.
When is the actual deadline to file?