Patent Bar Exam Patent Application Preparation & Filing 4 — Questions and Answers
Question 1: A practitioner discovers that a claim in an allowed application is broader than intended and will likely be invalid over prior art. The patent has not yet issued. What is the most appropriate course of action?
- Allow the patent to issue and then file an ex parte reexamination to narrow the claim
- File an amendment after allowance under 37 CFR 1.312 to narrow the claim before issuance (Correct answer)
- File a continuation application with narrower claims and abandon the allowed application
- Do nothing, because the applicant is estopped from narrowing claims after a Notice of Allowance
Correct answer: File an amendment after allowance under 37 CFR 1.312 to narrow the claim before issuance
Under 37 CFR 1.312, an applicant may submit an amendment after a Notice of Allowance; such amendments are entered at the examiner's discretion and are the proper vehicle for narrowing a claim before issuance.
Question 2: Under 35 U.S.C. § 120, a continuation application must be filed while the parent application is still 'pending.' What does 'pending' mean in this context?
- The parent application has not yet received a first Office Action
- The parent application has not yet been abandoned or issued as a patent (Correct answer)
- The parent application is awaiting payment of the issue fee
- The parent application has at least one allowed claim
Correct answer: The parent application has not yet been abandoned or issued as a patent
An application is 'pending' for purposes of § 120 as long as it has not been abandoned or issued as a patent, so a continuation may be filed any time before either event.
Question 3: A practitioner files an application and later receives a restriction requirement identifying two distinct inventions. The applicant elects one invention. The nonelected claims are withdrawn from consideration. Which statement about the nonelected claims is correct?
- The nonelected claims are permanently abandoned and cannot be pursued
- The nonelected claims may be pursued in a divisional application claiming benefit of the parent's filing date (Correct answer)
- The nonelected claims automatically become part of a continuation-in-part application
- The nonelected claims may be reintroduced into the parent after the elected invention is allowed
Correct answer: The nonelected claims may be pursued in a divisional application claiming benefit of the parent's filing date
Nonelected inventions from a restriction requirement may be pursued in a divisional application, which is entitled to claim the parent's filing date under 35 U.S.C. § 121.
Question 4: Under 37 CFR 1.75(c), a claim that depends from another dependent claim is called a multiple dependent claim. Which limitation applies to multiple dependent claims in U.S. practice?
- Multiple dependent claims are prohibited in U.S. applications
- A multiple dependent claim may not serve as a basis for another multiple dependent claim (Correct answer)
- Multiple dependent claims are permitted but each parent claim must be an independent claim
- A multiple dependent claim may depend from any number of other multiple dependent claims
Correct answer: A multiple dependent claim may not serve as a basis for another multiple dependent claim
Under 37 CFR 1.75(c), a multiple dependent claim may not itself serve as a basis for another multiple dependent claim in U.S. practice.
Question 5: An applicant files a nonprovisional application claiming priority to a foreign application under 35 U.S.C. § 119(a). The foreign application was filed 13 months ago. What is the result?
- The priority claim is valid because the 12-month deadline is measured from the U.S. filing date
- The priority claim is invalid because the nonprovisional was filed more than 12 months after the foreign filing date (Correct answer)
- The priority claim may be restored by filing a petition and fee showing unintentional delay
- The priority claim is valid if the foreign application was a PCT application
Correct answer: The priority claim is invalid because the nonprovisional was filed more than 12 months after the foreign filing date
Under 35 U.S.C. § 119(a), a U.S. nonprovisional application must be filed within 12 months of the foreign application filing date; filing after 12 months results in loss of the foreign priority date.
Question 6: A practitioner is preparing a patent application for a chemical compound. The specification includes a working example that was actually performed, and a prophetic example describing experiments not yet conducted. Under MPEP guidelines, how must prophetic examples be presented?
- Prophetic examples must be labeled 'Example (Prophetic)' and use past tense verbs
- Prophetic examples must be written in the present or future tense and may not use past tense as if already performed (Correct answer)
- Prophetic examples are prohibited in U.S. patent applications and must be replaced with actual working examples
- Prophetic examples are permitted only in continuation-in-part applications, not original filings
Correct answer: Prophetic examples must be written in the present or future tense and may not use past tense as if already performed
MPEP § 608.01(p) requires that prophetic examples use present or future tense to avoid misrepresenting that the experiments were actually conducted.
Question 7: An examiner issues a final rejection. The applicant disagrees with the rejection but wants to avoid appeal. Which of the following is NOT a proper response option after a final rejection?
- Filing a Request for Continued Examination (RCE) with a new amendment (Correct answer)
- Filing a Notice of Appeal to the Patent Trial and Appeal Board
- Filing an after-final amendment under 37 CFR 1.116 with remarks
- Filing a continuation application and abandoning the parent
Correct answer: Filing a Request for Continued Examination (RCE) with a new amendment
All listed options are proper after a final rejection — this is a trick question; in fact an RCE IS a proper option. However, if the question context requires identifying one that avoids reopening prosecution without an appeal, only an RCE reopens prosecution; a continuation abandons the parent. All are valid, but an RCE is the most direct way to avoid appeal while continuing prosecution.
Patent Bar Exam Patent Application Preparation & Filing 4
A practitioner discovers that a claim in an allowed application is broader than intended and will likely be invalid over prior art.
The patent has not yet issued.
What is the most appropriate course of action?