Patent Bar Exam Patent Law Fundamentals 4 — Questions and Answers
Question 1: Under the Patent Cooperation Treaty (PCT), what is the deadline for entering the US national phase from the international filing date?
- 12 months from the priority date
- 20 months from the priority date
- 30 months from the priority date (Correct answer)
- 36 months from the priority date
Correct answer: 30 months from the priority date
Under 35 U.S.C. § 371 and PCT Article 22, the deadline for entering the US national phase is 30 months from the earliest priority date claimed in the international application.
Question 2: What is a 'Jepson claim' format in patent prosecution?
- A claim reciting a product defined entirely by its method of manufacture
- A claim with a preamble stating prior art elements and a body claiming the improvement thereto (Correct answer)
- A claim reciting a range of numerical values for a key parameter
- A claim that incorporates by reference the claims of a related application
Correct answer: A claim with a preamble stating prior art elements and a body claiming the improvement thereto
A Jepson claim includes a preamble acknowledging prior art elements followed by 'the improvement comprising' language, which limits the claim to the improvement over the admitted prior art.
Question 3: Under 35 U.S.C. § 103, when is an invention considered obvious?
- When it is not described in a single prior art reference
- When the differences between the claimed invention and the prior art would have been obvious to a person of ordinary skill at the time of the invention (Correct answer)
- When the invention was conceived by more than one person independently
- When the invention was reduced to practice more than one year before filing
Correct answer: When the differences between the claimed invention and the prior art would have been obvious to a person of ordinary skill at the time of the invention
Under § 103, an invention is obvious—and thus unpatentable—if the differences between the claimed invention and the prior art would have been obvious to a POSITA at the time the claimed invention was made.
Question 4: What is the term of a utility patent filed after June 8, 1995?
- 17 years from the date of grant
- 20 years from the earliest effective U.S. filing date (Correct answer)
- 20 years from the date of grant
- 17 years from the earliest effective U.S. filing date
Correct answer: 20 years from the earliest effective U.S. filing date
Under 35 U.S.C. § 154(a)(2), utility patents filed after June 8, 1995 have a term of 20 years from the earliest effective U.S. filing date of the application.
Question 5: Which of the following is an example of subject matter eligible for patent protection under 35 U.S.C. § 101?
- A mathematical formula in the abstract
- A new method of organizing human activity without technological implementation
- A novel machine that uses a natural phenomenon to produce a useful result (Correct answer)
- A product of nature in its naturally occurring form
Correct answer: A novel machine that uses a natural phenomenon to produce a useful result
Under Alice/Mayo framework, a machine that applies a natural phenomenon in a meaningful way to produce a useful, concrete, and tangible result passes § 101 eligibility.
Question 6: What is the effect of a 'terminal disclaimer' filed during prosecution?
- It terminates the application and converts it to an abandoned status
- It disclaims the remaining term of the patent beyond a specified date, often to overcome an obviousness-type double patenting rejection (Correct answer)
- It cancels all pending claims and requires the applicant to start over
- It limits the claims to a single independent claim
Correct answer: It disclaims the remaining term of the patent beyond a specified date, often to overcome an obviousness-type double patenting rejection
A terminal disclaimer is filed to overcome obviousness-type double patenting rejections; it ties the patent's term to that of the reference patent and requires common ownership.
Question 7: Under 37 C.F.R. § 1.56, what is the 'duty of candor' owed to the USPTO?
- The duty to disclose all information that makes the invention obvious
- The duty of each individual associated with the filing to disclose information material to patentability (Correct answer)
- The duty to provide the USPTO with copies of all prior art cited in foreign applications
- The duty to respond to all Office Actions within the statutory deadline
Correct answer: The duty of each individual associated with the filing to disclose information material to patentability
Rule 56 imposes a duty on inventors, attorneys, and others associated with the filing to disclose information material to patentability; breach of this duty with deceptive intent constitutes inequitable conduct.
Patent Bar Exam Patent Law Fundamentals 4
Under the Patent Cooperation Treaty (PCT), what is the deadline for entering the US national phase from the international filing date?