Patent Bar Exam Patentability Requirements & Procedures 3 — Questions and Answers
Question 1: Under the AIA, which of the following correctly describes the 'prior commercial use' defense under 35 U.S.C. § 273?
- It is available to any entity that commercially used the process or machine at least 1 year before the effective filing date (Correct answer)
- It is only available to small entities and universities
- It is available only for methods of doing business
- It nullifies the patent entirely if proven
Correct answer: It is available to any entity that commercially used the process or machine at least 1 year before the effective filing date
The prior commercial use defense under § 273 protects anyone who commercially used the subject matter at least 1 year before the effective filing date, but it is a personal defense, not a patent invalidation.
Question 2: Which statutory category under 35 U.S.C. § 101 does NOT explicitly appear in the statute?
- Process
- Machine
- Manufacture
- Software (Correct answer)
Correct answer: Software
§ 101 recites process, machine, manufacture, and composition of matter — software is not explicitly listed and its eligibility depends on whether it falls within these categories.
Question 3: Under MPEP § 2131, a prior art reference anticipates a claim only if it discloses every element of the claim:
- In multiple documents combined by the examiner
- In a single reference, arranged as in the claim
- Either explicitly or inherently in one reference (Correct answer)
- In at least two related references
Correct answer: Either explicitly or inherently in one reference
Anticipation requires that every claim limitation be disclosed, either explicitly or inherently, in a single prior art reference.
Question 4: A patent claim recites 'a widget comprising element A, element B, and element C.' An accused product has elements A, B, C, and D. Under literal infringement analysis, the accused product:
- Does not infringe because it has an extra element
- Infringes because 'comprising' is an open-ended transition (Correct answer)
- Does not infringe because it exceeds the claim scope
- Infringes only under the doctrine of equivalents
Correct answer: Infringes because 'comprising' is an open-ended transition
The open-ended term 'comprising' means the claim covers the listed elements plus additional elements, so having element D does not avoid infringement.
Question 5: Under 35 U.S.C. § 119(e), a nonprovisional application claiming priority to a provisional application must be filed within how many months of the provisional filing date?
- 6 months
- 12 months (Correct answer)
- 18 months
- 24 months
Correct answer: 12 months
A nonprovisional claiming § 119(e) priority must be filed within 12 months of the provisional's filing date.
Question 6: Under MPEP § 2164, the enablement requirement is violated when:
- The claims are broader than the specific examples given
- Undue experimentation would be required to make and use the full scope of the claimed invention (Correct answer)
- The specification lacks a preferred embodiment
- The drawings do not show all claimed elements
Correct answer: Undue experimentation would be required to make and use the full scope of the claimed invention
Enablement fails when practicing the full scope of the claims would require undue experimentation, assessed by the Wands factors.
Question 7: An inventor files a U.S. patent application. A patent examiner applies a reference under § 102(a)(2). Which of the following could be that reference?
- A journal article published 2 years before the filing date
- A U.S. patent application by a different inventive entity with an earlier effective filing date that was later published (Correct answer)
- A public demonstration at a trade show 3 years before filing
- A product sold commercially 18 months before filing
Correct answer: A U.S. patent application by a different inventive entity with an earlier effective filing date that was later published
§ 102(a)(2) covers U.S. patents, U.S. patent application publications, and PCT publications that were effectively filed before the applicant's effective filing date.
Patent Bar Exam Patentability Requirements & Procedures 3
Under the AIA, which of the following correctly describes the 'prior commercial use' defense under 35 U.S.C. § 273?