Patent Bar Exam Patent Law Fundamentals 2 — Questions and Answers
Question 1: Under 35 U.S.C. § 102, which event would trigger a one-year grace period for the inventor to file a patent application?
- A third party independently publishes the same invention
- The inventor publicly discloses the invention at a trade show (Correct answer)
- A prior patent issues on a different but related invention
- A competitor files a patent application on the same invention
Correct answer: The inventor publicly discloses the invention at a trade show
Under the AIA, an inventor's own disclosure triggers a one-year grace period under 35 U.S.C. § 102(b)(1)(A), allowing the inventor to file within one year of that disclosure.
Question 2: What is the statutory time limit for filing a reply to a non-final Office Action from the USPTO?
- One month (extendable to six months with fees)
- Three months (extendable to six months with fees) (Correct answer)
- Six months (non-extendable)
- Two months (extendable to four months with fees)
Correct answer: Three months (extendable to six months with fees)
Under 37 C.F.R. § 1.134, applicants have three months to reply to a non-final Office Action, extendable up to six months upon payment of extension fees.
Question 3: Which doctrine allows a patent owner to recover damages from a party who sells a component specifically designed for use in a patented combination?
- Doctrine of equivalents
- Contributory infringement (Correct answer)
- Induced infringement
- Willful infringement
Correct answer: Contributory infringement
Contributory infringement under 35 U.S.C. § 271(c) imposes liability on one who sells a component with no substantial non-infringing use, knowing it is especially made for a patented combination.
Question 4: Under the America Invents Act (AIA), what type of proceeding allows a third party to challenge the validity of an issued patent based solely on prior art patents and printed publications?
- Ex parte reexamination
- Inter partes review (IPR) (Correct answer)
- Post-grant review (PGR)
- Supplemental examination
Correct answer: Inter partes review (IPR)
Inter partes review (IPR) under 35 U.S.C. §§ 311-319 allows third parties to challenge patent validity based only on prior art patents and printed publications after nine months from issuance.
Question 5: What is the purpose of a restriction requirement issued by a USPTO examiner?
- To limit the number of claims to 20 per application
- To require the applicant to elect one of several distinct inventions for examination (Correct answer)
- To reject claims that are not novel
- To require the applicant to narrow overly broad claims
Correct answer: To require the applicant to elect one of several distinct inventions for examination
A restriction requirement under 35 U.S.C. § 121 requires the applicant to elect one distinct invention for examination when the application contains claims to two or more independent and distinct inventions.
Question 6: Under 35 U.S.C. § 119(e), what is the deadline for filing a nonprovisional application claiming priority to a provisional application?
- Six months from the provisional filing date
- One year from the provisional filing date (Correct answer)
- Two years from the provisional filing date
- 18 months from the provisional filing date
Correct answer: One year from the provisional filing date
A nonprovisional application must be filed within 12 months of the provisional application's filing date to claim the benefit of that earlier filing date under 35 U.S.C. § 119(e).
Question 7: Which of the following best describes 'prosecution history estoppel' in patent law?
- A bar preventing a patent owner from asserting claims that were never included in the application
- A limitation on the doctrine of equivalents based on arguments or amendments made during prosecution (Correct answer)
- A prohibition on filing continuation applications after a patent issues
- A rule preventing an examiner from rejecting claims that were previously allowed
Correct answer: A limitation on the doctrine of equivalents based on arguments or amendments made during prosecution
Prosecution history estoppel prevents a patent owner from using the doctrine of equivalents to recapture subject matter that was surrendered through claim amendments or arguments during prosecution.
Patent Bar Exam Patent Law Fundamentals 2
Under 35 U.S.C. § 102, which event would trigger a one-year grace period for the inventor to file a patent application?