Ch9. Patent Bar Exam — High-Frequency Error Analysis

Patent Law — Common Error Points

① Novelty (35 USC § 102) vs. Non-Obviousness (35 USC § 103)
   → Novelty: Was it known or used before? (absolute standard)
   → Non-obviousness: Would a PHOSITA (person of ordinary skill in the art)
     have found it obvious to combine prior art?

② Grace Period (AIA) = 12 Months Before Filing
   → Inventor's own disclosures within 12 months of filing do NOT invalidate
   → Third-party disclosures after inventor's own disclosure also excluded
   (35 USC § 102(b)(1))

③ Request for Examination — implicit in US; no separate 3-year deadline
   (Korean system requires examination request within 3 years;
   US non-provisional goes to examination automatically)

④ Patent Term = 20 Years from Earliest Effective US Filing Date
   → Count from filing date, NOT from grant date
   (35 USC § 154(a)(2))

⑤ Patent Invalidity = Retroactive Effect
   → A patent found invalid is treated as never having existed

Trademark & Design — Common Error Points

⑥ Trademark Term = 10 Years (Renewable Indefinitely)
   → Distinguish from utility/design patent terms

⑦ Non-Use Abandonment = 3 Consecutive Years
   → Creates rebuttable presumption of abandonment (15 USC § 1127)

⑧ Design Patent Term = 15 Years from Grant
   → NOT 20 years (utility); NOT renewable like a trademark
   (AIA; applications filed after May 13, 2015)

⑨ First-to-File (AIA, Since March 16, 2013)
   → Prior use without filing does NOT confer patent rights
   → (US switched from first-to-invent to first-inventor-to-file under AIA)

⑩ Design Application — No Pre-Grant Publication
   → Design applications are kept secret until grant
   → (Korea's secret design system is the counterpart)

Utility Model & PCT — Common Error Points

⑪ Utility Patent Covers Methods; Utility Model Does Not
   → US utility patent: methods, compositions, machines, manufactures
   → Foreign utility models typically limited to articles/structures

⑫ Utility Model Term = 10 Years (vs. Utility Patent = 20 Years)

⑬ PCT National Phase Entry = 30 Months from Priority Date
   → Do NOT confuse with Paris Convention priority period (12 months)

⑭ Paris Convention Priority = 12 Months from First Filing
   → Trademark/design priority: 6 months (shorter period)

⑮ Copyright = No Registration Required (Arises at Creation)
   → Patents, trademarks, design patents all require registration/grant
   → Copyright registration is required only to sue for infringement in US

Confusion Points Summary

Utility Patent vs. Design Patent:
Utility = 20 yrs from filing; covers function/method
Design = 15 yrs from grant; covers ornamental appearance

Trademark vs. Design Patent:
Trademark = 10 yrs + unlimited renewal
Design Patent = 15 yrs from grant; no renewal

PCT vs. Paris Convention:
PCT = single filing → covers all PCT member states via national phase (30 mo)
Paris = direct filing in each country within 12 months (6 mo for TM/design)

Copyright vs. Industrial Property:
Copyright = automatic; no registration required for protection
Patents, Trademarks, Designs = registration/grant required

Key Concept Cards

Four Categories of Industrial IP ★★★★★ : Utility Patent · Utility Model · Trademark · Design Patent. Memory hook: invent-model-brand-look

Patent = 20 Yrs from Filing; Trademark = 10 Yrs + Renewal ★★★★★ : The most-missed term distinction. Memory hook: Patent=20filing, Trademark=10×∞

Grace Period = 12 Months ★★★★☆ : An inventor’s own disclosure triggers a 12-month window to file (AIA). Memory hook: grace period = 12 months from YOUR disclosure

Practice Questions

Q. Patent vs. trade secret — which provides stronger protection?

Patent: public disclosure → 20-year exclusive right → public domain after expiration. Trade Secret: no disclosure required → potentially permanent (e.g., Coca-Cola formula). If a competitor can reverse-engineer a technology, trade secret protection breaks down — a patent is better. If reverse engineering is difficult and secrecy is maintainable, trade secret may be preferable. After a patent expires, competitors can freely practice the invention. Strategy: file a patent when publication is inevitable or exclusivity is the goal; rely on trade secret when secrecy is feasible and indefinite protection is desired.

Q. Why is claims drafting central to a patent attorney’s role?

The claims define the legal scope of a patent — too broad and they read on prior art (and get rejected or invalidated); too narrow and competitors design around them. A skilled patent practitioner (USPTO-registered attorney or agent) must understand both the technology and prosecution strategy. During examination, responses to Office Actions and claim amendments are highly strategic. In litigation, claim construction (under Phillips v. AWH) determines infringement — making claim drafting arguably the single most consequential skill in patent practice.