Patent Bar Exam Patentability Requirements & Procedures 4 — Questions and Answers
Question 1: Under the USPTO's broadest reasonable interpretation (BRI) standard used during examination, a claim term is given:
- Its narrowest possible meaning consistent with the specification
- Its ordinary and customary meaning as understood by a PHOSITA in light of the specification (Correct answer)
- The meaning that provides the broadest possible claim scope
- The meaning that the examiner believes is most commercially relevant
Correct answer: Its ordinary and customary meaning as understood by a PHOSITA in light of the specification
BRI means the broadest reasonable interpretation consistent with the specification as understood by a PHOSITA — not the absolute broadest meaning.
Question 2: Under 35 U.S.C. § 102(b)(1)(B), a third party's disclosure does NOT count as prior art if:
- The third party filed their own patent application first
- The inventor had previously publicly disclosed the subject matter before the third party's disclosure (Correct answer)
- The third party's disclosure was made more than 12 months before the filing date
- The third party assigned their rights to the applicant
Correct answer: The inventor had previously publicly disclosed the subject matter before the third party's disclosure
Under the grace period exception in § 102(b)(1)(B), a third party's disclosure is not prior art if it came after the inventor's own prior public disclosure of the subject matter.
Question 3: What is the purpose of a 'terminal disclaimer' filed during patent prosecution?
- To disclaim specific claim terms
- To overcome a double patenting rejection by tying the patent's term to a related patent (Correct answer)
- To abandon the application voluntarily
- To disclaim any rights to previously filed provisional applications
Correct answer: To overcome a double patenting rejection by tying the patent's term to a related patent
A terminal disclaimer overcomes a nonstatutory (obviousness-type) double patenting rejection by disclaiming any patent term beyond the expiration of a co-owned patent.
Question 4: Under MPEP § 2173, which of the following renders a claim indefinite under 35 U.S.C. § 112(b)?
- Use of the term 'about' to modify a numerical value
- Use of relative terms like 'substantially' without any standard in the specification (Correct answer)
- Claiming in both method and apparatus form
- Use of 'comprising' as a transition phrase
Correct answer: Use of relative terms like 'substantially' without any standard in the specification
Relative terms like 'substantially' may render a claim indefinite if the specification provides no standard by which to measure them.
Question 5: In an inter partes review (IPR) proceeding, which grounds may be raised to challenge patent validity?
- § 101, § 102, § 103, and § 112
- Only § 102 and § 103 based on patents or printed publications (Correct answer)
- § 102, § 103, and prior public use or sale
- Any ground available in a district court invalidity challenge
Correct answer: Only § 102 and § 103 based on patents or printed publications
IPR is limited to challenges under § 102 or § 103 based only on prior art consisting of patents or printed publications.
Question 6: Under 37 C.F.R. § 1.136(a), a patent applicant may obtain an automatic extension of time to respond to an Office action for up to how many months?
- 1 month
- 3 months
- 5 months (Correct answer)
- 6 months
Correct answer: 5 months
An applicant may obtain up to 5 months of automatic extensions of time under § 1.136(a) upon payment of the extension fee, giving a total response period of up to 6 months.
Question 7: A patent application contains claims 1–5, where claims 2–5 each depend from independent claim 1. If claim 1 is cancelled, what happens to dependent claims 2–5?
- They are automatically cancelled as well
- They remain valid but must be converted to independent form or they will be rejected (Correct answer)
- They are treated as if they depend from the prior art
- They are automatically re-examined without the cancelled limitations
Correct answer: They remain valid but must be converted to independent form or they will be rejected
Dependent claims 2–5 cannot depend from a cancelled claim; the applicant must rewrite them in independent form to preserve them.
Patent Bar Exam Patentability Requirements & Procedures 4
Under the USPTO's broadest reasonable interpretation (BRI) standard used during examination, a claim term is given: