IMPORTANT NOTICE: This article is provided solely for research and archival purposes. MCLE self-study credit is no longer available. Even if you follow the instructions and submit payment you will not be granted MCLE self-study credit. Please note that low-cost MCLE is provided by the California Lawyers Association, pursuant to Business and Professions Code section 6056.

Answer the following questions after reading the article on "Protecting your client's patents." Use the answer form provided to send the test, along with a $20 processing fee, to the State Bar. Please allow at least eight weeks for MCLE certificates to reach you in the mail.

1. To practice patent litigation, an attorney must be registered to practice before the U.S. Patent and Trademark Office.

2. A utility patent is enforceable for 20 years from the date of issuance of the patent.

3. Information that is not included in the original patent application when it is first filed cannot be added to a patent application after filing.

4. The PTO will not perform a patent search if the applicant also performs a search.

5. An applicant must disclose all information material to the patentability of the application to the PTO.

6. The United States will grant a patent to the first inventor to file an application relating to the invention.

7. A potential infringer is required to obtain a written opinion of counsel as to validity and infringement as soon as the potentially infringed patent is discovered.

8. The opinion as to validity and infringement must be that of an outside patent counsel.

9. Upon a finding of infringement, the infringer will be assessed treble damages, unless a competent opinion of counsel is obtained.

10. A potential infringer has an affirmative duty to exercise due care to determine whether or not he is actually infringing.

11. A U.S. patent application must be filed within one year of the date of public disclosure of the invention by the inventor.

12. One important purpose of a patent search is to locate any “prior art” references indicating that an invention is not novel, or is obvious.

13. A patent cannot be rendered unenforceable when prior art references not considered by the PTO examiner are discovered after issuance, if the patentee relied in good faith on the PTO patent examiner’s search.

14. An inventor is entitled to a patent for any invention that is novel and useful.

15. A patent secures an inventor the exclusive right to make, sell or use his or her invention for an express term of years.

16. A patent search can locate foreign patents that are relevant to a client’s application.

17. An early application filing date can protect a client’s patent rights.

18. To preserve the right to file a patent application in many foreign countries, the U.S. application should be filed before the invention is publicly disclosed or offered for sale.

19. A regular patent portfolio review is important to identify infringers early and to locate patents which have recently become commercially viable.

20. The United States will not issue a patent unless the invention was absolutely novel at the date of filing of the application.

This activity has been approved for Minimum Continuing Legal Education credit by the State Bar of California in the amount of 1 hour.

The State Bar of California certifies that this activity conforms to the standards for approved education activities prescribed by the rules and regulations of the State Bar of California governing minimum continuing legal education.