Patent Bar Exam Patent Prosecution 4 — Questions and Answers
Question 1: Under 37 C.F.R. § 1.63, a patent application requires an oath or declaration from each inventor. Which statement about AIA-era declarations is correct?
- The oath must be notarized by a commissioned notary public
- An AIA-compliant declaration may be submitted after filing but before payment of the issue fee (Correct answer)
- A declaration must identify each prior art reference known to the inventor
- The declaration must be filed at the same time as the patent application
Correct answer: An AIA-compliant declaration may be submitted after filing but before payment of the issue fee
Under AIA practice, an inventor's oath or declaration may be postponed and submitted any time before payment of the issue fee, provided a signed application data sheet is filed with the application.
Question 2: What is the primary legal effect of filing a Request for Continued Examination (RCE) under 37 C.F.R. § 1.114?
- It resets the 20-year patent term to give the applicant more prosecution time
- It converts a final rejection into a new non-final Office Action and continues prosecution (Correct answer)
- It removes any prior art rejections made in the application
- It transfers jurisdiction to the Patent Trial and Appeal Board
Correct answer: It converts a final rejection into a new non-final Office Action and continues prosecution
An RCE continues prosecution in the same application after a final rejection by submitting a submission (e.g., an amendment) and a fee, prompting the examiner to issue a new non-final Office Action.
Question 3: Which of the following actions constitutes inequitable conduct that may render a patent unenforceable?
- Filing a continuation application after a final rejection
- Intentionally withholding material prior art from the USPTO during prosecution with deceptive intent (Correct answer)
- Submitting a declaration under 37 C.F.R. § 1.131 to antedate a reference
- Filing a terminal disclaimer to overcome a double patenting rejection
Correct answer: Intentionally withholding material prior art from the USPTO during prosecution with deceptive intent
Inequitable conduct occurs when an applicant intentionally withholds material information (such as known prior art) from the USPTO with intent to deceive, rendering the patent unenforceable.
Question 4: An applicant receives a rejection under 35 U.S.C. § 102(a)(1) based on a prior art patent. The examiner asserts the patent has an effective date before applicant's filing date. Under AIA, what must applicant show to disqualify this reference under § 102(b)(1)(B)?
- That the applicant independently conceived the invention without knowledge of the reference
- That the reference's subject matter was publicly disclosed by the applicant before the reference's disclosure date (Correct answer)
- That the reference is not enabling under 35 U.S.C. § 112
- That the applicant filed a provisional application before the reference's publication date
Correct answer: That the reference's subject matter was publicly disclosed by the applicant before the reference's disclosure date
Under AIA § 102(b)(1)(B), a third-party prior disclosure is disqualified if the inventor had previously publicly disclosed the same subject matter before the third party's disclosure.
Question 5: A Jepson-type claim is used in which of the following situations?
- To claim an entirely novel composition of matter with no prior art components
- To distinguish improvements over a known prior art combination by placing the novel improvement in the characterizing clause (Correct answer)
- To claim a product by the process used to make it
- To define a range of alternatives using a Markush group structure
Correct answer: To distinguish improvements over a known prior art combination by placing the novel improvement in the characterizing clause
A Jepson claim format states the preamble as the prior art combination and then uses 'wherein the improvement comprises' to claim the novel element, acknowledging the prior art base.
Question 6: Under 37 C.F.R. § 1.111, what must a proper response to a non-final Office Action include to avoid abandonment?
- Only a payment of the examination fee
- A reply that addresses every ground of rejection or objection raised by the examiner (Correct answer)
- A new set of drawings regardless of whether drawings were objected to
- A terminal disclaimer signed by the assignee
Correct answer: A reply that addresses every ground of rejection or objection raised by the examiner
37 C.F.R. § 1.111 requires a reply that distinctly and specifically points out the supposed errors in the examiner's action and addresses every ground of rejection and objection.
Question 7: When an interference or derivation proceeding is declared by the USPTO, what does the derivation proceeding under AIA specifically determine?
- Which applicant was first to conceive and reduce to practice the invention
- Whether a named inventor derived the claimed invention from another inventor who filed first (Correct answer)
- Whether prior art anticipates both applicants' claims
- Whether the two applications claim independent and distinct inventions
Correct answer: Whether a named inventor derived the claimed invention from another inventor who filed first
AIA derivation proceedings (replacing interferences) determine whether a later-filed applicant derived the claimed invention from an earlier-filing inventor, rather than independently conceiving it.
Patent Bar Exam Patent Prosecution 4
Under 37 C.F.R. § 1.63, a patent application requires an oath or declaration from each inventor.
Which statement about AIA-era declarations is correct?