Patent Bar Exam Patent Prosecution 3 — Questions and Answers
Question 1: An applicant wishes to claim priority to a previously filed provisional application. What is the deadline to file the non-provisional application claiming that priority?
- 6 months from the provisional filing date
- 12 months from the provisional filing date (Correct answer)
- 18 months from the provisional filing date
- 24 months from the provisional filing date
Correct answer: 12 months from the provisional filing date
Under 35 U.S.C. § 119(e), a non-provisional application claiming the benefit of a provisional must be filed within 12 months of the provisional application's filing date.
Question 2: Which of the following interview types is NOT generally permitted during ex parte prosecution before the USPTO?
- In-person interview at the USPTO examiner's office
- Telephonic interview with the examiner
- Video conference interview with the examiner
- Interview involving a third-party competitor to discuss claim scope (Correct answer)
Correct answer: Interview involving a third-party competitor to discuss claim scope
Ex parte prosecution is between the applicant and the USPTO only; third-party competitors have no right to participate in prosecution interviews.
Question 3: Under 37 C.F.R. § 1.56, who owes the duty of candor to the USPTO during patent prosecution?
- Only the named inventors
- Only the registered patent attorney or agent of record
- Each individual associated with the filing and prosecution of a patent application (Correct answer)
- Only the applicant entity (assignee)
Correct answer: Each individual associated with the filing and prosecution of a patent application
37 C.F.R. § 1.56 imposes a duty of candor on each individual associated with the filing or prosecution of a patent application, including inventors, attorneys, and agents.
Question 4: A patent applicant receives a Notice of Allowance. Within what time period must the issue fee be paid to prevent abandonment?
- 1 month from mailing date
- 2 months from mailing date
- 3 months from mailing date (Correct answer)
- 6 months from mailing date
Correct answer: 3 months from mailing date
Under 37 C.F.R. § 1.311, the issue fee must be paid within 3 months from the date of the Notice of Allowance to prevent the application from going abandoned.
Question 5: Which of the following claim formats is used to claim a computer-implemented invention as a combination of software and hardware, often associated with 35 U.S.C. § 112(f)?
- Jepson claim
- Means-plus-function claim (Correct answer)
- Product-by-process claim
- Markush group claim
Correct answer: Means-plus-function claim
Means-plus-function claims under 35 U.S.C. § 112(f) allow claiming a function performed by a 'means,' interpreted to cover the disclosed structure and equivalents.
Question 6: During prosecution, an examiner makes a double patenting rejection. Which type of double patenting rejection CANNOT be overcome by filing a terminal disclaimer?
- Obviousness-type double patenting
- Statutory double patenting (same invention) (Correct answer)
- Non-statutory double patenting
- Extended double patenting based on claim differentiation
Correct answer: Statutory double patenting (same invention)
Statutory (same-invention) double patenting under 35 U.S.C. § 101 cannot be overcome by a terminal disclaimer because it is a true statutory bar; only obviousness-type double patenting is overcome with a terminal disclaimer.
Question 7: An application is rejected under 35 U.S.C. § 112(a) for failing to satisfy the written description requirement. Which of the following would be the BEST response?
- File a continuation-in-part adding new matter to the specification
- Amend the claims to be fully supported by the original disclosure and argue support in the specification (Correct answer)
- File a request for continued examination without amending the claims
- Submit a new oath or declaration from the inventor
Correct answer: Amend the claims to be fully supported by the original disclosure and argue support in the specification
The proper response to a § 112(a) written description rejection is to amend the claims so they are supported by the as-filed specification and to point to that supporting disclosure in the remarks.
Patent Bar Exam Patent Prosecution 3
An applicant wishes to claim priority to a previously filed provisional application.
What is the deadline to file the non-provisional application claiming that priority?