Patent Bar Exam Patent Application Preparation & Filing 2

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?

Accepted Answer

The sequence listing must be submitted but any claims relying on it will not receive the original filing date

Answer

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?

Accepted Answer

Material incorporated by reference cannot be used to add new matter to the specification after filing

Answer

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?

Accepted Answer

Claims covering that feature may lack written description support because drawings alone may be insufficient

Answer

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?

Accepted Answer

The dependent claim must incorporate by reference all limitations of the claim from which it depends

Answer

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?

Accepted Answer

The priority claim is valid because the nonprovisional was filed within 12 months of the provisional

Answer

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.

Patent Bar Exam Practice Test

Patent Bar Exam Practice Test

Patent Bar Exam Patent Application Preparation & Filing 2