Patent Bar Exam Patentability Requirements & Procedures 5 — Questions and Answers
Question 1: Under 35 U.S.C. § 120, a continuation application receives the benefit of the parent's filing date only if it:
- Was filed before the parent issued and contains at least one common inventor
- Was filed before the parent patent issued or abandoned, discloses the same invention, and is filed by at least one common inventor with a co-pending claim of priority (Correct answer)
- Was filed within 12 months of the parent's filing date by the same assignee
- Contains all of the parent's original claims
Correct answer: Was filed before the parent patent issued or abandoned, discloses the same invention, and is filed by at least one common inventor with a co-pending claim of priority
§ 120 benefit requires co-pendency with the parent, disclosure of the same invention, at least one common inventor, and a specific reference claiming priority.
Question 2: Which of the following best describes 'inherent anticipation' under § 102?
- A prior art reference explicitly lists every element of the claim
- A prior art reference necessarily discloses a claim element even if it is not expressly mentioned (Correct answer)
- An anticipation argument based on combining two prior art references
- A situation where a claimed compound was inherently sold before the filing date
Correct answer: A prior art reference necessarily discloses a claim element even if it is not expressly mentioned
Inherent anticipation means the prior art necessarily produces the claimed element or result, even if not explicitly stated, and that result must be inevitable.
Question 3: Under KSR International Co. v. Teleflex Inc., the Supreme Court held that which rigid test for obviousness was improper?
- The Graham v. John Deere four-factor analysis
- The teaching-suggestion-motivation (TSM) test applied as a rigid requirement (Correct answer)
- The prima facie obviousness standard
- The person of ordinary skill standard
Correct answer: The teaching-suggestion-motivation (TSM) test applied as a rigid requirement
KSR rejected a rigid application of the TSM test, holding that courts and the USPTO should use a flexible, expansive approach to the obviousness inquiry.
Question 4: Under § 101 after Alice Corp. v. CLS Bank, the two-step Mayo/Alice framework first asks whether the claim is directed to:
- A novel and nonobvious concept
- An abstract idea, law of nature, or natural phenomenon (Correct answer)
- Subject matter that has utility
- A machine or manufacture
Correct answer: An abstract idea, law of nature, or natural phenomenon
Step 1 of the Alice/Mayo framework asks whether the claim is directed to a judicial exception: an abstract idea, law of nature, or natural phenomenon.
Question 5: A design patent protects the ornamental appearance of an article of manufacture for a term of:
- 14 years from issuance
- 15 years from issuance (Correct answer)
- 17 years from issuance
- 20 years from the filing date
Correct answer: 15 years from issuance
Under current law (post-2015 amendments), design patents have a term of 15 years from the date of grant.
Question 6: Under 35 U.S.C. § 116, which of the following is true regarding joint inventorship?
- All joint inventors must have contributed to every claim
- Each joint inventor must have contributed to the conception of at least one claim (Correct answer)
- Joint inventors must have worked together at the same time and place
- Joint inventors share ownership equally regardless of contribution
Correct answer: Each joint inventor must have contributed to the conception of at least one claim
Joint inventorship requires that each inventor contributed to the conception of at least one claim; they need not have contributed to every claim or worked together simultaneously.
Question 7: During prosecution, an examiner makes a restriction requirement between two distinct inventions in a single application. The applicant elects one invention to prosecute. What happens to the claims directed to the non-elected invention?
- They are permanently abandoned and cannot be pursued
- They are withdrawn from consideration but may be pursued in a divisional application (Correct answer)
- They are automatically cancelled by the USPTO
- They remain pending but are not examined until the elected claims are resolved
Correct answer: They are withdrawn from consideration but may be pursued in a divisional application
Non-elected claims are withdrawn from consideration in the current application but can be pursued in a divisional application, which preserves the parent's filing date.
Patent Bar Exam Patentability Requirements & Procedures 5
Under 35 U.S.C. § 120, a continuation application receives the benefit of the parent's filing date only if it: