Patent Bar Exam Patent Law Fundamentals 3 — Questions and Answers
Question 1: Under 35 U.S.C. § 112(f), what is the requirement for a means-plus-function claim element to be valid and infringed?
- The accused device must use the identical structure recited in the specification
- The accused device must use the same structure or its equivalent as disclosed in the specification (Correct answer)
- The claim must recite the specific structure rather than the function performed
- The specification must include at least three embodiments of the means
Correct answer: The accused device must use the same structure or its equivalent as disclosed in the specification
Under § 112(f), a means-plus-function claim covers the structure disclosed in the specification for performing the recited function, plus its structural equivalents.
Question 2: What is the 'on-sale bar' under 35 U.S.C. § 102(a)(1) of the AIA?
- A prohibition on patenting inventions sold only in foreign markets
- Prior art created when an invention is offered for sale more than one year before the effective filing date (Correct answer)
- A bar preventing patent owners from licensing their patents through public sales
- A rule that invalidates patents on products that are commercially available
Correct answer: Prior art created when an invention is offered for sale more than one year before the effective filing date
The on-sale bar renders a patent invalid if the claimed invention was on sale in the United States before the effective filing date (with a one-year grace period for the inventor's own sales under the AIA).
Question 3: Which of the following claim types is used to protect the ornamental appearance of a functional article?
- Utility patent claim
- Design patent claim (Correct answer)
- Plant patent claim
- Continuation claim
Correct answer: Design patent claim
Design patents under 35 U.S.C. § 171 protect the ornamental or aesthetic appearance of a functional article, as distinguished from utility patents which protect functional aspects.
Question 4: Under MPEP § 2111, what is the 'broadest reasonable interpretation' (BRI) standard?
- The interpretation that covers the most prior art to facilitate rejections
- The widest interpretation consistent with the specification that a person of ordinary skill in the art would give to the claim language (Correct answer)
- The interpretation most favorable to the patent applicant
- The interpretation used only during post-issuance proceedings
Correct answer: The widest interpretation consistent with the specification that a person of ordinary skill in the art would give to the claim language
The BRI standard requires examiners to give claim terms their broadest reasonable interpretation consistent with the specification, as understood by a person of ordinary skill in the art.
Question 5: A patent application claims a pharmaceutical compound. The specification describes the compound's structure but contains no data showing it works. What type of rejection is most likely?
- Obviousness rejection under § 103
- Lack of utility rejection under § 101 (Correct answer)
- Lack of written description under § 112
- Prior art rejection under § 102
Correct answer: Lack of utility rejection under § 101
A claim to a pharmaceutical compound without any data or reasoning showing it works fails the utility requirement of § 101, particularly the 'specific and substantial' utility standard for chemical compounds.
Question 6: Under 35 U.S.C. § 120, what is required for a continuation application to benefit from the filing date of a parent application?
- The continuation must be filed within one year of the parent's filing date
- The continuation must be filed while the parent application is pending and must disclose the claimed invention (Correct answer)
- The continuation must include at least one claim identical to a claim in the parent
- The continuation must be assigned to the same assignee as the parent
Correct answer: The continuation must be filed while the parent application is pending and must disclose the claimed invention
Under § 120, a continuation application must be filed while the parent is pending and must have at least one common inventor, with the claimed invention fully disclosed in the parent application.
Question 7: What is the legal significance of 'inequitable conduct' in patent prosecution?
- It results in the rejection of the offending claims only
- It renders the entire patent unenforceable if intentional material misrepresentation or omission before the USPTO is proven (Correct answer)
- It triggers an automatic reexamination of the patent
- It results in a fine but does not affect enforceability
Correct answer: It renders the entire patent unenforceable if intentional material misrepresentation or omission before the USPTO is proven
Inequitable conduct, if proven by clear and convincing evidence showing both materiality and deceptive intent, renders the entire patent unenforceable under the doctrine established in Therasense, Inc. v. Becton, Dickinson & Co.
Patent Bar Exam Patent Law Fundamentals 3
Under 35 U.S.C. § 112(f), what is the requirement for a means-plus-function claim element to be valid and infringed?