Patent Bar Exam Patent USPTO Rules & Regulations 3 — Questions and Answers
Question 1: Under the America Invents Act (AIA), what is the first inventor to file rule, and how does it differ from the pre-AIA first to invent system?
- AIA awards priority to the inventor who files first, eliminating most swearing-behind of prior art based on earlier conception (Correct answer)
- AIA awards priority to the inventor who first conceived of the invention, regardless of filing date
- AIA maintains the interference proceeding system but renames it derivation proceeding
- AIA allows an inventor to antedate prior art by showing reduction to practice before the reference date
Correct answer: AIA awards priority to the inventor who files first, eliminating most swearing-behind of prior art based on earlier conception
Under AIA's first-inventor-to-file system, priority generally goes to the first inventor who files, and swearing behind prior art based on earlier conception is largely eliminated.
Question 2: Under 35 U.S.C. § 102(b)(1), which of the following disclosures is an exception to the novelty-defeating prior art rule?
- Any public disclosure by a third party made more than 1 year before the effective filing date
- A disclosure made by the inventor or joint inventor within 1 year before the effective filing date (Correct answer)
- A disclosure published in a foreign patent application before the U.S. filing date
- A disclosure by the inventor made more than 2 years before filing
Correct answer: A disclosure made by the inventor or joint inventor within 1 year before the effective filing date
Under AIA § 102(b)(1), disclosures made by the inventor or joint inventor within 1 year before the effective filing date are excepted from prior art.
Question 3: A patent application contains a method claim and a product claim. The method claim is found allowable, but the product claim is rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. The applicant wants to protect the product. Which is the most appropriate course of action?
- File a divisional application directed solely to the product claim
- Cancel the product claim and refile it in a separate provisional application
- Amend the product claim to include the method steps as structural limitations (Correct answer)
- File a protest against the examiner's rejection with the Director
Correct answer: Amend the product claim to include the method steps as structural limitations
Amending the product claim to recite structural limitations that distinguish it from the abstract idea or natural phenomenon can overcome a § 101 rejection without splitting the application.
Question 4: Under 37 CFR 1.136(a), what is the latest deadline by which an applicant can respond to an Office Action if no extensions of time are filed?
- 1 month from the mailing date
- 2 months from the mailing date
- 3 months from the mailing date (Correct answer)
- 6 months from the mailing date
Correct answer: 3 months from the mailing date
The standard shortened statutory period for responding to most Office Actions is 3 months from the mailing date, after which extension fees accrue up to the 6-month statutory maximum.
Question 5: Under 37 CFR 1.121, when an applicant amends claims during prosecution, how must the amendments be presented?
- Only by rewriting the entire claim set from scratch
- In marked-up form showing deletions in strikethrough and additions underlined, plus a clean version (Correct answer)
- By submitting an affidavit describing each change made to the claims
- Through an examiner interview, with no written submission required
Correct answer: In marked-up form showing deletions in strikethrough and additions underlined, plus a clean version
37 CFR 1.121 requires claim amendments to be presented in marked-up form (showing deletions with strikethrough and additions underlined) along with a clean version of each amended claim.
Question 6: A dependent claim that references a canceled independent claim is considered what under USPTO examination procedure?
- Allowable if the dependent claim itself has patentable merit
- Objected to as incomplete in form because it depends on a canceled claim (Correct answer)
- Automatically converted to an independent claim by the examiner
- Withdrawn from consideration without any examiner action needed
Correct answer: Objected to as incomplete in form because it depends on a canceled claim
A dependent claim referencing a canceled claim is objected to as being in improper form because it fails to properly incorporate a base claim.
Question 7: Under 37 CFR 41.31, an applicant who disagrees with a final rejection may appeal to which body?
- The Patent Trial and Appeal Board (PTAB) (Correct answer)
- The United States Court of International Trade
- The Commissioner for Patents directly
- The Federal Circuit Court of Appeals as a first step
Correct answer: The Patent Trial and Appeal Board (PTAB)
An applicant may appeal a final rejection to the Patent Trial and Appeal Board (PTAB) by filing a Notice of Appeal under 37 CFR 41.31.
Patent Bar Exam Patent USPTO Rules & Regulations 3
Under the America Invents Act (AIA), what is the first inventor to file rule, and how does it differ from the pre-AIA first to invent system?