Patent Bar Exam Patent Law Fundamentals 5

Question 1

Under 35 U.S.C. § 135, what is an 'interference proceeding' in pre-AIA patent law?

Accepted Answer

A proceeding to determine priority of invention between two parties who claimed the same invention

Answer

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?

Accepted Answer

The specification must reasonably convey to a POSITA that the inventor possessed the claimed invention as of the filing date

Answer

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?

Accepted Answer

The company, as assignee and patent owner, can license the patent without the inventor's consent

Answer

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?

Accepted Answer

A reasonable royalty for the use made of the invention

Answer

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?

Accepted Answer

A rule that the first authorized sale of a patented item exhausts the patent owner's rights to control that particular item

Answer

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.

Patent Bar Exam Practice Test

Patent Bar Exam Practice Test

Patent Bar Exam Patent Law Fundamentals 5