Patent Bar Exam Patent Law Fundamentals 5 — Questions and Answers
Question 1: Under 35 U.S.C. § 135, what is an 'interference proceeding' in pre-AIA patent law?
- A proceeding to resolve disputes between co-inventors about inventorship
- A proceeding to determine priority of invention between two parties who claimed the same invention (Correct answer)
- A post-grant review challenging validity based on prior art
- An ex parte proceeding to correct errors in an issued patent
Correct answer: A proceeding to determine priority of invention between two parties who claimed the same invention
Under pre-AIA law, interference proceedings before the PTAB determined which of two or more applicants (or patentees) was the first to invent the same subject matter.
Question 2: What does the 'written description' requirement of 35 U.S.C. § 112(a) require?
- A complete working example with experimental data for every claimed embodiment
- The specification must reasonably convey to a POSITA that the inventor possessed the claimed invention as of the filing date (Correct answer)
- The claims must be literally supported by exact language in the specification
- The inventor must describe the best mode known at the time of filing in all cases
Correct answer: The specification must reasonably convey to a POSITA that the inventor possessed the claimed invention as of the filing date
The written description requirement is satisfied when the specification reasonably conveys to a person of ordinary skill that the inventor had possession of the claimed invention at the time of filing.
Question 3: An inventor assigns her patent application to a company. Later, the company wants to license the patent to a third party. Which statement is correct?
- The inventor must consent to any license granted by the company
- The company, as assignee and patent owner, can license the patent without the inventor's consent (Correct answer)
- The inventor retains an automatic license to practice the invention
- The assignment must be re-recorded at the USPTO before any license can be granted
Correct answer: The company, as assignee and patent owner, can license the patent without the inventor's consent
An assignment transfers all rights to the assignee, including the right to license; the inventor has no further rights in the patent unless expressly retained in the assignment agreement.
Question 4: Under 35 U.S.C. § 284, what is the minimum damages award for patent infringement?
- Lost profits from the infringement
- A reasonable royalty for the use made of the invention (Correct answer)
- The infringer's total profits from the infringing product
- Three times the patentee's actual damages
Correct answer: A reasonable royalty for the use made of the invention
Section 284 requires the court to award damages adequate to compensate for the infringement, but no less than a reasonable royalty for the use made of the invention by the infringer.
Question 5: What is the 'doctrine of exhaustion' (patent exhaustion) in U.S. patent law?
- A doctrine that patents expire early if the owner fails to enforce them
- A rule that the first authorized sale of a patented item exhausts the patent owner's rights to control that particular item (Correct answer)
- A principle that excessively broad patents are unenforceable
- A doctrine that patent rights are exhausted after the patent term expires
Correct answer: A rule that the first authorized sale of a patented item exhausts the patent owner's rights to control that particular item
Under the patent exhaustion doctrine (reaffirmed in Impression Products v. Lexmark), an authorized sale of a patented item terminates all patent rights in that particular item, allowing the buyer to use and resell it freely.
Question 6: What is required for a patent application to satisfy the 'enablement' requirement of 35 U.S.C. § 112(a)?
- The specification must describe the invention in claim language
- The specification must teach a POSITA how to make and use the full scope of the claimed invention without undue experimentation (Correct answer)
- The applicant must provide working examples for every claim
- The specification must include at least one independent claim covering the full scope
Correct answer: The specification must teach a POSITA how to make and use the full scope of the claimed invention without undue experimentation
The enablement requirement mandates that the specification teach a person of ordinary skill in the art how to make and use the claimed invention across its full scope without requiring undue experimentation.
Question 7: Under the AIA's 'first-inventor-to-file' system, which event determines patent priority between two independent inventors of the same invention?
- The date on which the invention was first conceived
- The effective filing date of the patent application (Correct answer)
- The date on which the invention was first reduced to practice
- The date on which the inventor first publicly disclosed the invention
Correct answer: The effective filing date of the patent application
Under the AIA first-inventor-to-file system, priority goes to the inventor with the earliest effective filing date, not the earliest date of conception or reduction to practice.
Patent Bar Exam Patent Law Fundamentals 5
Under 35 U.S.C. § 135, what is an 'interference proceeding' in pre-AIA patent law?