Patent Bar Exam International Patents 5 — Questions and Answers
Question 1: Under the EPC, the 'Problem and Solution Approach' is used to assess:
- Novelty of the claimed invention
- Inventive step (non-obviousness) (Correct answer)
- Sufficiency of disclosure
- Priority validity
Correct answer: Inventive step (non-obviousness)
The EPO's Problem and Solution Approach is a structured method for evaluating inventive step by identifying the closest prior art, the objective technical problem, and whether the solution would have been obvious.
Question 2: A US patent practitioner representing a foreign client before the USPTO on a national phase application must comply with which set of rules?
- The rules of the foreign jurisdiction
- USPTO rules and 37 C.F.R. (Correct answer)
- PCT administrative instructions only
- EPC guidelines
Correct answer: USPTO rules and 37 C.F.R.
Once a PCT application enters the US national phase, it is subject to USPTO rules (37 C.F.R.) and US patent law regardless of the applicant's nationality.
Question 3: Which of the following correctly describes a 'regional phase' under the PCT?
- Filing a separate application in each country
- Entry into a regional patent office (e.g., EPO) that grants patents covering multiple member states (Correct answer)
- A special examination conducted by the ISA
- A petition filed with WIPO to extend the international phase
Correct answer: Entry into a regional patent office (e.g., EPO) that grants patents covering multiple member states
Regional phase entry means pursuing patent rights through a regional office such as the EPO, which can grant protection covering all designated EPC member states with a single grant.
Question 4: Under PCT Rule 66.1, during Chapter II international preliminary examination, the applicant has the right to:
- Demand a final rejection from the IPEA
- Amend the claims, description, and drawings before the written opinion becomes final (Correct answer)
- Withdraw all designations without penalty
- Request examination by the USPTO directly
Correct answer: Amend the claims, description, and drawings before the written opinion becomes final
PCT Rule 66.1 gives applicants the right to submit amendments and arguments in response to the examiner's written opinion during Chapter II proceedings.
Question 5: An international application filed under the PCT with the USPTO as receiving office must be filed in which language to be acceptable?
- Any official UN language
- English only (Correct answer)
- English, French, or Spanish
- The language of the first priority application
Correct answer: English only
Under PCT Rule 12.1, when the USPTO acts as receiving office, the international application must be in English.
Question 6: Under 35 U.S.C. § 102(d) (pre-AIA), a US patent could be barred if a foreign patent issued more than:
- 6 months before the US filing date
- 12 months before the US filing date (Correct answer)
- 18 months before the US filing date
- 24 months before the US filing date
Correct answer: 12 months before the US filing date
Under pre-AIA § 102(d), a US application was barred if a foreign patent granted on the same invention issued more than 12 months before the US filing date.
Question 7: The Patent Prosecution Highway (PPH) is a bilateral/multilateral agreement that allows an applicant to request accelerated examination based on:
- Payment of an additional government fee only
- A favorable work product (allowable claims) from a partner office's examination (Correct answer)
- Filing a continuation application
- Submission of a prior art search by a private firm
Correct answer: A favorable work product (allowable claims) from a partner office's examination
PPH lets applicants fast-track examination at a second office by sharing the positive results (allowable claims) from the first office's examination.
Patent Bar Exam International Patents 5
Under the EPC, the 'Problem and Solution Approach' is used to assess: