Patent Bar Exam Patent Prosecution 3

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?

Accepted Answer

12 months from the provisional filing date

Answer

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?

Accepted Answer

Interview involving a third-party competitor to discuss claim scope

Answer

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?

Accepted Answer

Each individual associated with the filing and prosecution of a patent application

Answer

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?

Accepted Answer

3 months from mailing date

Answer

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)?

Accepted Answer

Means-plus-function claim

Answer

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.

Patent Bar Exam Practice Test

Patent Bar Exam Practice Test

Patent Bar Exam Patent Prosecution 3