Patent Bar Exam Patent USPTO Rules & Regulations 4 — Questions and Answers
Question 1: Under 35 U.S.C. § 154, what is the standard term of a utility patent granted on an application filed after June 8, 1995?
- 17 years from the date of grant
- 20 years from the earliest effective U.S. filing date (Correct answer)
- 20 years from the date the patent is issued
- 17 years from the earliest effective U.S. filing date
Correct answer: 20 years from the earliest effective U.S. filing date
Under 35 U.S.C. § 154(a)(2), utility patents have a term of 20 years from the earliest effective U.S. filing date of the application.
Question 2: Under 37 CFR 1.362, what is the consequence of failing to pay a maintenance fee for a utility patent?
- The patent term is reduced by 2 years
- The patent expires at the end of the grace period if the fee is not paid (Correct answer)
- The USPTO automatically extends the grace period by 6 months
- The patent is placed in a suspended status but can be reinstated at any time
Correct answer: The patent expires at the end of the grace period if the fee is not paid
Failure to pay a maintenance fee causes the patent to expire; it may be reinstated within a 6-month grace period upon payment of the maintenance fee plus a surcharge.
Question 3: Under 35 U.S.C. § 251, what is the purpose of a reissue application, and what is the key limitation on broadening reissue claims?
- To correct drawing errors; broadening is allowed at any time during the patent term
- To correct errors that cause the patent to be inoperative or invalid; broadening reissue must be filed within 2 years of grant (Correct answer)
- To add new matter not disclosed in the original specification; no time limit applies
- To challenge a competitor's patent; the claim scope cannot be changed
Correct answer: To correct errors that cause the patent to be inoperative or invalid; broadening reissue must be filed within 2 years of grant
A reissue application corrects errors that render the patent wholly or partly inoperative, and broadening reissue claims must be filed within 2 years of the original patent grant.
Question 4: Under 35 U.S.C. § 305, what restrictions apply to claim amendments during an ex parte reexamination proceeding?
- Claims may be broadened beyond the scope of the original patent claims
- New matter may be added if supported by a supplemental declaration
- Claims may only be amended or added to narrow the scope; no broadening is permitted (Correct answer)
- Any amendment allowed during original prosecution is also allowed during reexamination
Correct answer: Claims may only be amended or added to narrow the scope; no broadening is permitted
During ex parte reexamination, claims may only be narrowed or new narrower claims added; broadening the scope beyond the original claims is prohibited by 35 U.S.C. § 305.
Question 5: Under 37 CFR 1.291, what is the effect of a third-party submission of prior art in a published application?
- It automatically triggers an inter partes review proceeding
- It places the submitted prior art in the application file for the examiner to consider (Correct answer)
- It causes the application to be rejected under 35 U.S.C. § 102 without further analysis
- It has no legal effect unless the applicant acknowledges the submission
Correct answer: It places the submitted prior art in the application file for the examiner to consider
A third-party submission under 37 CFR 1.291 places cited prior art in the application file for the examiner's consideration during prosecution.
Question 6: Under 35 U.S.C. § 120, what must a continuation application do to receive the benefit of its parent application's filing date?
- Disclose new matter not contained in the parent and claim priority within 12 months
- Be copending with the parent and include a specific reference to the parent in the application (Correct answer)
- Be filed by the same attorney of record as the parent application
- Include at least one claim that is identical to a claim in the parent application
Correct answer: Be copending with the parent and include a specific reference to the parent in the application
Under § 120, a continuation must be copending with the parent and contain a specific reference to the parent application to receive the benefit of the parent's filing date.
Question 7: Under 37 CFR 1.97 and 1.98, what is the primary obligation when filing an Information Disclosure Statement (IDS)?
- To argue why each cited reference does not anticipate or render the claims obvious
- To provide a copy of each cited document and a concise explanation of each reference's relevance (Correct answer)
- To pay a fee for each reference cited in the IDS
- To obtain a sworn declaration from the inventor confirming each reference was reviewed
Correct answer: To provide a copy of each cited document and a concise explanation of each reference's relevance
An IDS must include a copy of each cited document (or a statement that it is cited in a prior application) and may include a concise explanation of relevance, satisfying the applicant's duty of disclosure.
Patent Bar Exam Patent USPTO Rules & Regulations 4
Under 35 U.S.C. § 154, what is the standard term of a utility patent granted on an application filed after June 8, 1995?