Intellectual Property Law
Chapter 18 Discussion Questions
1. Sam filed a provisional patent application on May 1, 2016. What dates should be
docketed in connection with this application? Why?
2. What is the purpose of an Information Disclosure Statement?
3. Ben desires to obtain a patent for his invention at the earliest possible time
because he hopes to sell the invention within the next year. What might Ben do?
4. Caroline’s application for her Invention B was refused by the patent examiner on
the basis that it is a trivial and obvious variation of Caroline’s prior patented
Invention A. What might Caroline do to obtain a patent for Invention B and yet
satisfy the USPTO?
5. Will invented his invention called the Widget. He then discovered that his former
employee, Zach, has filed a patent application for the Widget. Is Will barred from
filing a patent application because Zach was the fist to file for the patent? Discuss.
6. Marissa filed an application for a utility patent on July 1, 2014. The patent was
granted on February 1, 2015, and a reissue patent for the invention was granted
November 1, 2015. When does the patent expire? Discuss.
7. Peter’s patent was issued on January 20, 2014. On May 20, 2014, Tom began
offering a product similar to Peter’s patented item (although it did not infringe
Peter’s patent). On January 10, 2016, a reissue patent was granted to Peter. The
reissue patent broadened claim 2 of Peter’s patent. Tom’s product now infringes
the reissue patent. May Tom continue to sell his product? Discuss.
8. Bridget filed her utility patent application on July 1, 2012. Due to illness of the
patent examiner, the USPTO did not respond to some of Bridget’s arguments in a
timely fashion during prosecution, and the patent was not granted until July 1,
2016, and the patent will expire on July 1, 2032. Is there anything Bridget can do
to achieve a longer patent term?
9. Phil wishes to challenge Michelle’s issued patent but does not want her to know
he is doing so. What type of patent challenge should Phil initiate?