Patent Bar Exam Patent Application Preparation & Filing 5 — Questions and Answers
Question 1: Under 37 CFR 1.56, a patent practitioner has a duty of candor to the USPTO. Which of the following best describes the scope of this duty?
- The duty applies only to the named inventors and not to practitioners or assignees
- Each individual associated with the filing of an application has a duty to disclose information material to patentability (Correct answer)
- The duty is satisfied by disclosing all prior art known anywhere in the world, regardless of materiality
- The duty of candor applies only during examination and ends when a Notice of Allowance is issued
Correct answer: Each individual associated with the filing of an application has a duty to disclose information material to patentability
37 CFR 1.56 imposes a duty of candor on each individual associated with the prosecution of an application, including inventors, practitioners, and others who are substantively involved, to disclose information material to patentability.
Question 2: A practitioner files an information disclosure statement (IDS) with 52 references after the first Office Action but before the final action. Under 37 CFR 1.97 and 1.98, what is required for the IDS to be considered?
- No fee or statement is required because the IDS is filed before the final action
- A statement that each reference was first cited in a communication from a foreign patent office, or payment of a fee (Correct answer)
- A petition and demonstration of good cause for the late filing
- The IDS cannot be filed after the first Office Action under any circumstances
Correct answer: A statement that each reference was first cited in a communication from a foreign patent office, or payment of a fee
Under 37 CFR 1.97(c), an IDS filed after the first Office Action requires either a statement that each item was first cited in a communication from a foreign office or payment of the fee set forth in 37 CFR 1.17(p).
Question 3: An applicant's specification teaches a genus of chemical compounds but only exemplifies three species. The examiner rejects the claims to the full genus under 35 U.S.C. § 112(a) for lack of written description. Under the Ariad standard, what must the specification demonstrate?
- The specification need only teach how to make any one species to satisfy written description for the entire genus
- The specification must demonstrate that the inventor possessed the full scope of the claimed genus, not merely a subset (Correct answer)
- Written description is automatically satisfied whenever enablement is met for at least one embodiment
- A genus claim is always invalid under § 112(a) unless every species is individually exemplified
Correct answer: The specification must demonstrate that the inventor possessed the full scope of the claimed genus, not merely a subset
Under Ariad Pharmaceuticals v. Eli Lilly, the written description requirement is separate from enablement and requires the specification to convey that the inventor possessed the full scope of the claimed genus at the time of filing.
Question 4: A practitioner wants to file a plant patent application. Which type of plant is NOT eligible for a plant patent under 35 U.S.C. § 163?
- A new variety of rose reproduced asexually by cuttings
- A new variety of apple tree reproduced asexually by grafting
- A new variety of potato reproduced sexually by tubers (Correct answer)
- A new variety of chrysanthemum reproduced asexually by division
Correct answer: A new variety of potato reproduced sexually by tubers
35 U.S.C. § 163 excludes plants that are propagated sexually (by seed) or plants that are tuber-propagated (such as potatoes and Jerusalem artichokes); eligible plants must be asexually reproduced by means other than tubers.
Question 5: An applicant files a continuation-in-part (CIP) application that adds new matter to the parent's disclosure. A prior art reference published between the parent's filing date and the CIP's filing date anticipates only the new matter claims. How does this prior art affect the CIP?
- The prior art cannot be applied against any claim in the CIP because the CIP claims benefit of the parent's filing date
- The prior art may be applied against claims in the CIP that rely on the new matter but not against claims fully supported by the parent (Correct answer)
- The prior art may be applied against all claims in the CIP regardless of which disclosure supports them
- The prior art is disqualified under § 102(b)(1) because the applicant is the same entity that filed the parent
Correct answer: The prior art may be applied against claims in the CIP that rely on the new matter but not against claims fully supported by the parent
In a CIP, claims supported only by the parent's disclosure are entitled to the parent's filing date and thus unaffected by the intervening reference, while claims relying on new matter are entitled only to the CIP's filing date and are vulnerable to the reference.
Question 6: Under 37 CFR 1.821–1.825, a biotechnology patent application discloses a nucleotide sequence. What format must be used for the required sequence listing?
- A table of sequences in any standard spreadsheet format appended to the specification
- A sequence listing in ST.26 XML format (as required after July 1, 2022) submitted as a separate file (Correct answer)
- A narrative description of the sequence embedded within the specification paragraphs
- A sequence listing in plain text (.txt) format compliant with ST.25, acceptable for all applications filed after 2022
Correct answer: A sequence listing in ST.26 XML format (as required after July 1, 2022) submitted as a separate file
Effective July 1, 2022, the USPTO requires sequence listings in WIPO Standard ST.26 XML format for new applications; prior ST.25 plain-text format is no longer acceptable for new filings.
Question 7: A patent practitioner receives a Notice of Allowance and Issue Fee Due. The issue fee must be paid within what period under 37 CFR 1.311?
- 1 month from the mailing date of the Notice of Allowance
- 2 months from the mailing date of the Notice of Allowance
- 3 months from the mailing date of the Notice of Allowance (Correct answer)
- 6 months from the mailing date of the Notice of Allowance
Correct answer: 3 months from the mailing date of the Notice of Allowance
Under 37 CFR 1.311, the issue fee must be paid within 3 months from the mailing date of the Notice of Allowance; this period is not extendable.
Patent Bar Exam Patent Application Preparation & Filing 5
Under 37 CFR 1.56, a patent practitioner has a duty of candor to the USPTO.
Which of the following best describes the scope of this duty?