Patent Bar Exam Patentability Requirements & Procedures 2

Question 1

Under 35 U.S.C. § 102(a)(1), a disclosure does NOT qualify as prior art if it was made by the inventor and publicly disclosed within how many months before the effective filing date?

Accepted Answer

12 months

Answer

Under the AIA, an inventor's own disclosure made within 12 months before the effective filing date is exempt from being prior art under § 102(a)(1).

Question 2

Which doctrine prevents a patent applicant from recapturing claim scope that was surrendered during prosecution through claim amendments?

Accepted Answer

Both A and C

Answer

Prosecution history estoppel and file wrapper estoppel are two names for the same doctrine preventing recapture of surrendered claim scope.

Question 3

A claimed invention is considered obvious under § 103 when the differences between the claimed invention and the prior art would have been obvious to a person having ordinary skill in the art (PHOSITA) at the time of:

Accepted Answer

The effective filing date of the claimed invention

Answer

Obviousness under § 103 is evaluated from the perspective of a PHOSITA at the time of the effective filing date of the claimed invention.

Question 4

Under MPEP guidelines, which of the following is NOT one of the Graham v. John Deere factors used to assess obviousness?

Accepted Answer

The date of the inventor's conception

Answer

The Graham factors are: scope of prior art, differences from prior art, level of ordinary skill, and secondary considerations (like commercial success); conception date is not a Graham factor.

Question 5

A patent application claims a chemical compound. The specification discloses how to make it but provides no data on utility. Under § 101, what type of utility must be demonstrated?

Accepted Answer

Specific, substantial, and credible utility

Answer

Under § 101, an invention must have specific, substantial, and credible utility — a vague or speculative utility is insufficient.

Patent Bar Exam Practice Test

Patent Bar Exam Practice Test

Patent Bar Exam Patentability Requirements & Procedures 2