Patent Bar Exam Patent Application Preparation & Filing 3 — Questions and Answers
Question 1: An applicant files a nonprovisional utility application without an oath or declaration. The USPTO issues a Notice to File Missing Parts. Under 37 CFR 1.53(f), how long does the applicant have to file the oath or declaration without losing the filing date?
- 30 days from the mailing date of the notice, with no extensions available
- 2 months from the mailing date of the notice, extendable under 37 CFR 1.136(a) (Correct answer)
- 6 months from the mailing date of the notice without any extension fees
- The applicant must submit the oath or declaration on the same day as the filing or the application is abandoned
Correct answer: 2 months from the mailing date of the notice, extendable under 37 CFR 1.136(a)
The Notice to File Missing Parts sets a 2-month period for filing missing items such as the oath or declaration, and this period may be extended under 37 CFR 1.136(a) upon payment of extension fees.
Question 2: A continuation application is filed claiming benefit of a parent application. The continuation includes a new example not present in the parent. Under 35 U.S.C. § 112(a), which claims in the continuation can receive the parent's filing date?
- All claims in the continuation automatically receive the parent's filing date
- Only claims fully supported by the parent's original disclosure can receive the parent's filing date (Correct answer)
- No claims in the continuation can receive the parent's filing date if any new matter is added
- Claims receive the parent's filing date only if the new example is in a dependent claim
Correct answer: Only claims fully supported by the parent's original disclosure can receive the parent's filing date
Only claims that are fully supported by the parent application's disclosure as filed are entitled to the parent's filing date; claims requiring the new matter are limited to the continuation's filing date.
Question 3: Under 37 CFR 1.136(a), an applicant may extend a shortened statutory period for reply. What is the maximum extension period available as of right (without a petition showing cause)?
- 2 months
- 3 months
- 5 months (Correct answer)
- 6 months
Correct answer: 5 months
Under 37 CFR 1.136(a), extensions of up to 5 months are available as of right upon payment of the appropriate fee, making the total response period up to 6 months for a 1-month shortened statutory period.
Question 4: An applicant files a Request for Continued Examination (RCE) after a final rejection. Under 37 CFR 1.114, what must accompany the RCE?
- A notice of appeal and an appeal brief
- A submission (such as an amendment or reply) and the required fee (Correct answer)
- A continuation application claiming benefit of the pending application
- A petition to make the application special and expedite examination
Correct answer: A submission (such as an amendment or reply) and the required fee
An RCE under 37 CFR 1.114 requires a fee and a submission, which may be an amendment, new arguments, or new evidence; without both, the RCE is improper.
Question 5: A practitioner drafts a means-plus-function claim element reciting 'means for fastening.' Under 35 U.S.C. § 112(f), what must the specification disclose to satisfy the written description requirement for this element?
- A broad description of fastening in general terms is sufficient
- The specification must disclose the corresponding structure, material, or acts that perform the recited function (Correct answer)
- No structural disclosure is needed because means-plus-function claims are interpreted broadly
- The specification must list every possible fastening device known in the art
Correct answer: The specification must disclose the corresponding structure, material, or acts that perform the recited function
Under § 112(f), a means-plus-function claim element is construed to cover the structure described in the specification that performs the recited function, so the specification must disclose corresponding structure.
Question 6: An applicant files a design patent application. Which of the following is NOT a required component of a design patent application under 37 CFR 1.154?
- A preamble stating the name of the applicant and title of the design
- A single claim in the prescribed form
- Formal drawings showing the design
- An abstract describing the novel features of the design (Correct answer)
Correct answer: An abstract describing the novel features of the design
Design patent applications do not require an abstract; the required components include a preamble, description of the drawings, the drawings themselves, and a single claim.
Question 7: An inventor claims a method with five steps. The examiner argues one step is not enabled because undue experimentation would be required to practice it. Under the Wands factors, which consideration is LEAST relevant to the undue experimentation analysis?
- The quantity of experimentation necessary
- The amount of direction provided in the specification
- The commercial success of products practicing the claimed method (Correct answer)
- The skill level of ordinary practitioners in the art
Correct answer: The commercial success of products practicing the claimed method
The Wands factors focus on the difficulty of practicing the invention, not on its commercial success; commercial success is relevant to obviousness secondary considerations, not enablement.
Patent Bar Exam Patent Application Preparation & Filing 3
An applicant files a nonprovisional utility application without an oath or declaration.
The USPTO issues a Notice to File Missing Parts.
Under 37 CFR 1.53(f), how long does the applicant have to file the oath or declaration without losing the filing date?