Patent Bar Exam Patent Application Preparation & Filing 2 — Questions and Answers
Question 1: An inventor files a nonprovisional utility application but forgets to include a sequence listing required for a claimed biotechnology invention. The USPTO sends a Notice to File Missing Parts. What is the consequence if the sequence listing was not in the application as filed?
- The sequence listing may be added as a new matter via an amendment
- The application is abandoned immediately without opportunity to correct
- The sequence listing must be submitted but any claims relying on it will not receive the original filing date (Correct answer)
- The applicant must file a continuation application to include the sequence listing
Correct answer: The sequence listing must be submitted but any claims relying on it will not receive the original filing date
A sequence listing submitted after the original filing date cannot be given the benefit of the original filing date for claims that rely on the listing's content, because it constitutes new matter.
Question 2: Under 37 CFR 1.57(b), an applicant may incorporate by reference a prior-filed U.S. patent application. Which statement correctly describes a limitation of this incorporation by reference?
- Incorporation by reference may replace the written description requirement entirely
- Material incorporated by reference cannot be used to add new matter to the specification after filing (Correct answer)
- The incorporated material is treated as part of the specification for all purposes including claims
- Incorporation by reference is only permitted for foreign patent documents
Correct answer: Material incorporated by reference cannot be used to add new matter to the specification after filing
Under 37 CFR 1.57, incorporated material is considered part of the disclosure, but an applicant cannot later amend claims to add new matter that was only in the incorporated document and not in the application as filed.
Question 3: An applicant submits a nonprovisional application with drawings showing a critical feature but the written description never mentions that feature. Under 35 U.S.C. § 112(a), what problem arises?
- No problem arises because drawings are part of the disclosure and fully satisfy written description
- The drawings are excluded from the application and the application is incomplete
- Claims covering that feature may lack written description support because drawings alone may be insufficient (Correct answer)
- The applicant must refile with a new set of drawings that omits the feature
Correct answer: Claims covering that feature may lack written description support because drawings alone may be insufficient
While drawings are part of the disclosure, written description support generally requires that the specification text convey to a PHOSITA that the inventor possessed the claimed invention; drawings alone may be insufficient.
Question 4: A practitioner is drafting claims for a mechanical device. The independent claim recites 'a widget comprising a frame, a lever, and a spring.' A dependent claim adds 'wherein the spring is a coil spring.' Under MPEP guidelines, what must be true of the dependent claim?
- The dependent claim must repeat all limitations of the independent claim in full
- The dependent claim must incorporate by reference all limitations of the claim from which it depends (Correct answer)
- The dependent claim may omit limitations of the independent claim if those limitations are clearly implied
- The dependent claim must be broader in scope than the independent claim
Correct answer: The dependent claim must incorporate by reference all limitations of the claim from which it depends
Under 35 U.S.C. § 112(d), a dependent claim incorporates by reference all limitations of the claim to which it refers, so it need not repeat them explicitly.
Question 5: An applicant wishes to claim priority to a provisional application filed 11 months ago. The applicant files the nonprovisional today. Which statement about the priority claim is correct?
- The priority claim is valid because the nonprovisional was filed within 12 months of the provisional (Correct answer)
- The priority claim is invalid because the provisional expired after 6 months
- The priority claim is valid only if the provisional included at least one claim
- The priority claim requires a petition and fee because it was not filed within 8 months
Correct answer: The priority claim is valid because the nonprovisional was filed within 12 months of the provisional
Under 35 U.S.C. § 119(e), a nonprovisional application may claim the benefit of a provisional application if filed within 12 months of the provisional's filing date.
Question 6: During prosecution, an examiner objects to a claim as containing 'relative terminology' (e.g., 'substantially rigid'). Under 35 U.S.C. § 112(b), when is such terminology acceptable?
- Relative terms are never acceptable in patent claims and must always be replaced with precise measurements
- Relative terms are acceptable when the specification or prosecution history provides a standard for determining the scope of the term (Correct answer)
- Relative terms are only acceptable in method claims, not apparatus claims
- Relative terms automatically result in a final rejection that cannot be overcome
Correct answer: Relative terms are acceptable when the specification or prosecution history provides a standard for determining the scope of the term
Relative terms satisfy the definiteness requirement of § 112(b) when the specification, drawings, or prosecution history provide a clear standard by which the term's scope can be determined.
Question 7: A practitioner files a nonprovisional application and realizes the filing receipt shows the wrong inventor listed. Under 37 CFR 1.48, how may this error be corrected?
- A correction of inventorship requires filing a continuation application naming the correct inventors
- The practitioner must abandon the application and refile with correct inventors to preserve the filing date
- A request to correct inventorship may be filed with a statement and the required fee before the patent issues (Correct answer)
- Inventorship errors can only be corrected after the patent issues via a certificate of correction
Correct answer: A request to correct inventorship may be filed with a statement and the required fee before the patent issues
Under 37 CFR 1.48, inventorship may be corrected before the patent issues by filing a request identifying the correct inventors, a statement, and paying the required fee.
Patent Bar Exam Patent Application Preparation & Filing 2
An inventor files a nonprovisional utility application but forgets to include a sequence listing required for a claimed biotechnology invention.
The USPTO sends a Notice to File Missing Parts.
What is the consequence if the sequence listing was not in the application as filed?