Patent Bar Exam Patent Prosecution 5 — Questions and Answers
Question 1: What does the term 'prosecution laches' mean in patent law?
- The examiner's failure to timely act on a patent application
- Unreasonable and unexplained delay by an applicant in prosecution that prejudices accused infringers (Correct answer)
- The doctrine preventing applicants from filing continuation applications
- A defense to inequitable conduct based on the passage of time
Correct answer: Unreasonable and unexplained delay by an applicant in prosecution that prejudices accused infringers
Prosecution laches is an equitable defense that can render a patent unenforceable if the applicant unreasonably delayed prosecution in a way that prejudices accused infringers.
Question 2: Which of the following correctly describes the 'broadest reasonable interpretation' (BRI) standard used by the USPTO during patent examination?
- Claims are interpreted as narrowly as possible to avoid prior art rejections
- Claims are given their broadest reasonable interpretation consistent with the specification as understood by a person of ordinary skill in the art (Correct answer)
- Claims are interpreted the same way courts would interpret them in litigation
- Claims must be interpreted based solely on the plain and ordinary meaning of the words
Correct answer: Claims are given their broadest reasonable interpretation consistent with the specification as understood by a person of ordinary skill in the art
Under BRI, the USPTO gives claims their broadest reasonable interpretation consistent with the specification, which is broader than the claim construction applied in litigation.
Question 3: Under 37 C.F.R. § 1.75(c), the USPTO requires that claims be presented in a specific order. What is this order?
- Method claims first, then apparatus claims, then composition claims
- Independent claims first, followed by dependent claims in order of dependency (Correct answer)
- Narrowest claims first, broadest claims last
- All independent claims, then all dependent claims in no particular order
Correct answer: Independent claims first, followed by dependent claims in order of dependency
37 C.F.R. § 1.75(c) requires that claims be presented with each dependent claim referencing and further limiting a prior claim, grouped together to facilitate examination.
Question 4: A patent application's claims are rejected under 35 U.S.C. § 101 as directed to an abstract idea. Under the Alice/Mayo framework, what must the applicant demonstrate to overcome this rejection?
- That the claims are supported by an enabling disclosure under § 112(a)
- That the claims include an additional element or combination of elements that amounts to significantly more than the abstract idea itself (Correct answer)
- That the abstract idea was first conceived by the named inventor
- That no prior art exists for the claimed invention
Correct answer: That the claims include an additional element or combination of elements that amounts to significantly more than the abstract idea itself
Under the Alice/Mayo two-step framework, to overcome a § 101 rejection the claims must include additional elements that amount to significantly more than the abstract idea, providing an inventive concept.
Question 5: What is the significance of a 'continuation-in-part' (CIP) application in patent prosecution?
- It claims priority to the parent for all claims including those supported only by the new matter
- It introduces new matter not disclosed in the parent application, with new claims supported by the new matter receiving only the CIP filing date as their priority date (Correct answer)
- It restarts the 20-year patent term from the CIP's filing date for all claims
- It allows the applicant to remove claims from the parent application and refile them
Correct answer: It introduces new matter not disclosed in the parent application, with new claims supported by the new matter receiving only the CIP filing date as their priority date
A CIP adds new matter not in the parent; claims supported only by the new matter get the CIP filing date as their effective filing date, while claims fully supported by the parent get the parent's filing date.
Question 6: During prosecution, an examiner issues an objection to the drawings under 37 C.F.R. § 1.83 because a feature recited in the claims is not shown in the drawings. How should the applicant respond?
- Cancel the claim feature that is not shown in the drawings
- Submit corrected or new drawings that show the claimed feature and comply with formal requirements (Correct answer)
- File a petition to waive the drawing requirement under 37 C.F.R. § 1.183
- Argue that the written description in the specification is sufficient to substitute for the drawing
Correct answer: Submit corrected or new drawings that show the claimed feature and comply with formal requirements
37 C.F.R. § 1.83 requires that drawings show every feature specified in the claims; the correct response is to file corrected drawings depicting the claimed feature.
Question 7: Under 37 C.F.R. § 1.321, a terminal disclaimer in response to an obviousness-type double patenting rejection must include which of the following provisions?
- A statement that the patentee will not enforce the patent against prior users of the invention
- A provision that the patent shall be enforceable only for the period the patent is commonly owned with the conflicting application or patent (Correct answer)
- A disclaimer of all claims except the independent claims
- A statement abandoning any right to a patent term extension under 35 U.S.C. § 154(b)
Correct answer: A provision that the patent shall be enforceable only for the period the patent is commonly owned with the conflicting application or patent
A terminal disclaimer must include a provision that the patent will be enforceable only during the period it is commonly owned with the reference patent or application, ensuring the patents do not issue to different owners.
Patent Bar Exam Patent Prosecution 5
What does the term 'prosecution laches' mean in patent law?