Patent Bar Exam Patent Application Preparation & Filing 5

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?

Accepted Answer

Each individual associated with the filing of an application has a duty to disclose information material to patentability

Answer

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?

Accepted Answer

A statement that each reference was first cited in a communication from a foreign patent office, or payment of a fee

Answer

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?

Accepted Answer

The specification must demonstrate that the inventor possessed the full scope of the claimed genus, not merely a subset

Answer

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?

Accepted Answer

A new variety of potato reproduced sexually by tubers

Answer

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?

Accepted 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

Answer

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.

Patent Bar Exam Practice Test

Patent Bar Exam Practice Test

Patent Bar Exam Patent Application Preparation & Filing 5