Patent Bar - Missed Questions

Front 1

Which of the sections of 102 can be the basis for a provisional rejection?

Back 1

102(e)

Front 2

Two Questions from the following:

On June 25, 2007, in Brussels, Belgium, inventor Spourt RTP a vegiatable processor device. He instructed a Belgium patent attorney to obtain patent protection in Belgium. Attorney prepared the patent app on the invention and filed the app in the Belgian PO on Jan 4, 2008. The Belgium patent was granted on Feb 1, 2008, but the invention disclosure was not laid open for public inspection until May 3, 2008. The certified copy of the patent decree, along with a copy of the spec, was sent by the BPO to Sprout on June 10, 2008. The complete spec was not publicshed until Dec. 23, 2008.

On Jan 5, 2009, Sprout realized that it was no longer possible for this Belgian app to act as a priority doc bc the anniversary for filing a patent app in the US had past. Thus, he was not entitled for foreign priority. Sprout decided that he would obatin a US patent anyway. He hired you as a US agent. On Jan 14, 2009 you filed a US patent app, containing claims 1-10.

1. Which of the folling most correctly sets forth the section of Title 35 USC under which Sprout would not be entitled to a US patent: 119, 102(a), 102(b), 102(c), or 102(d)

2. Assume that Sprout did not file an app or obtain a patent in Belgium.

In the first office action, the examiner rejected claims 1-10 as being anticipated by the disclosure in a US patent Carrot. The Carrott patent discloses, but does not claim, a vegetable processor. The Carrot patent issued on Aug 16, 2008, and is based on a patent app filed on June 26, 2007. Under which of the following sections of Title 35 USC if any would Sprout not be entitled to a US patent? 102(c), b, e, or none of the above

Back 2

1. 102(d)
2. 102(e)

Front 3

ON March 5, 2002, Britebulb came to your office. On April 23, 2002 you filed the app.

In the first week of Feb 2001, in an effort to commercialize his invention, Britebulb mailed over 500 printed publications to potential manufacturers in Germany, in which descripbed in detail the invention.

Under which paragraph of 102 would Bitebulb not be entitled to a US patent

Back 3

102(b)

Front 4

While looking through the most recent Official Gazette, you noticed a patent directed to a device similar to that claimed in your client's pending application. You obtain a copy of the patent and discovered by the patent is a divisional application of a parent applicaiton. The patent only gave the serial number of the parent application. You want to know the status of the parent application. Can you obtain the status of the application from the PTO?

Back 4

a) No, unless the parent application has issued into a patent
b) no, bc all patent apps are preserved in confidence by the PTO.
c) yes, but only if a petition for access is filed
d) yes, but by filing a "Waiver of Secrecy Order" form to get access
e) yes, by submitting a written request for the status of the parent application which includes a copy of the patent

answer on side 3

Hint 4

E

Front 5

Scotty lives and works in a non-NAFTA country. He files an original U.S. patent
application for machinable transparent aluminum on January 4, 1995. On January
4, 1996, he files a first Continuation-in-Part patent application (CIP) for a
transparent aluminum widget. A preliminary amendment is filed with the CIP
that adds a claim to a nuclear transparent aluminum widget. Scotty's Oath
contains all of the necessar materials but includes a declaration that he has
revlewe and understands the con ten s of the s ecific'!tion JnG!uEl·iflg-auy-claffi1s,
as amended he relimina amendment: .'J"'fi€ first CIP claims benefit of the
original U.S. patent application. The original patent application had no
information regarding the manufacture and use of widgets. The specification for
the first CIP contained no information on the manufacture and use of nuclear
widgets. On March 27, 1996, Scotty files a second CIP with a specification that
describes both the nuclear transparent aluminum widgets found in the
preliminary amendment, and an improved version of that nuclear transparent
aluminum widget, the hyperwidget. Scotty's Oath follows 37 CFR § 1.63 to the
letter. The second Clr claims benefit of the first crr and original patent
applications. Widgets were "well known and a matter of common knowledge" to
every engineer of any skill in the widget art at least as early as 1995. Nuclear
widgets became "well know and a matter of common knowledge" at least as early
as January 1996. Moreover, any skilled engineer would be able to fabricate a
widget, nuclear or otherwise, out of any machinable composition. However,
hyperwidgets are a nonobvious variant of the nuclear widget.

Scotty asks you to draft new claims for his second CIP application. There is a
great deal of art in this area. You must determine the priority dates for each
invention in order to draft claims that avoid the prior art. Without filing any
affidavits, what are the priority dates for the first four claims of the CIP to; (1) a
transparent aluminum; (2) a transparent aluminum widget; (3) a nuclear
transparent aluminum widget; and (4) a hyperwidget?

(A)
(B)
(C)
The transparent aluminum has a priority date of January 4, 1995; the
transparent aluminum widget has a priority date of January 4, 1996;,the
nuclear transparent aluminum widget has a priority date of March 27, 1~96;
the hyperwidget has a priority date of March 27, 1996.
,/
The transparent aluminum has a priority date of January 4, 1995; the
transparent aluminum widget has a priority date of January 4, 1995;-the,....
nuclear transparent aluminum widget has a priority date of January 4, 1996;
the hyperwidget has a priority date of March 27, 1996.
The transparent aluminum has a priority date of January 4, 1995; the
transparent aluminum widget has a priority date of January 4, 1996; the
nuclear transparent aluminum widget has a priority date of January 4, 1996;
the hyperwidget has a priority date of March 27, 1996.
(D) The transparent aluminum has a priority date of March 27, 1996; the
transparent aluminum widget has a priority date of March 27, 1996; the
nuclear transparent aluminum widget has a priority date of March 27, 1996;
the hyperwidget has a priority date of March 27, 1996.
(E) The transparent aluminum has a priority date of January 4, 1995; the
transparent aluminum widget has a priority date of March 27, 1996; the
nuclear transparent aluminum widget has a priority date of March 27, 1996;
the hyperwidget has a priority date of March 27, 1996.

Back 5

C

Front 6

T or F - a party's duties under 37 CFR 11.18(b) extends to the public in general, other parties before the Patent Office, and the Office itself

Back 6

T

Front 7

Which of the following statements regarding continuations and CIPs are not true:
(A) A CIP can be filed under 37 CFR 1.53( d) with a preliminary amendment adding the new matter
to the original disclosure.
(B) A freshly executed oath must be filed in every continuation within sixty days of filing.
(C) A new assignment is required only if a continuation is filed under Rule 53(b).
(D) The examiner cannot make a first action in a continuation "Final" even if it is the same as the
last action in the parent.
(E) All of the above are untrue.

Back 7

E

Front 8

Which of the following, if any, is NOT an element of a prima facie case of
obviousness under 35 USC § 103?
(A) One or more references which are prior art within the meaning of 35 USC §
102.
(B) A suggestion or motivation in the prior art or in the knowledge generally
available to one of ordinary skill in the art, to modify or combine the prior
art references.
(C) A reasonable expectation, based on the applicant's disclosure, that the
claimed combination would be successful, supported, if necessary, by
secondary considerations.
(0) A teaching or suggestion in the referenced prior art of each claim limitation.
(E) All of the above are required elements of a prima facie case of obviousness.

Back 8

C

Front 9

A patent application was filed on April 1, 2004 on an invention which was
conceived on February 28, 2002 and reduced to practice with due diligence on
August 8, 2003. The examiner rejected all of the claims in the application under
35 USC 103 as being obvious over Hoppe in view of Goodman. The examiner
stated that it would be obvious to modify the structure disclosed and claimed by
Hoppe as suggested by Goodman. Hoppe is a Canadian patent which issued on
January 5, 2003, and is based on a Canadian application filed on March 18, 2002.
Goodman is a U.S. patent which issued September 20, 2004, and is based on a U.S.
application filed on February 5, 2002. Which of the following would be a proper
response to the rejection?
(A) Argue that because Goodman issued after the filing date of the application, it
is not prior art and therefore cannot be used in combination with Hoppe.
(B) File an antedating affidavit to swear behind Hoppe and request allowance of
the claims.
(C) Argue the patentability of the claims with regard to the teachings of Hoppe
and Goodman individually and in combination.
(0) Present only arguments as to why Hoppe does not teach the claimed
invention since the rejection of the claims will stand or fall with the outcome
of the argument presented as to the primary reference.
(E) Present an argument that one of ordinary skill in the art would not be able to
modify Hoppe with Goodman as suggested by the examiner because
Goodman issued after Hoppe, and thus would not have been available at the
time Hoppe became a patent.

Back 9

C

Front 10

Which of the following constitutes patentable subject matter?
(A) A method of printing a business form.
(B) A method utilizing a new scientific principle.
(C) A process of purifying a naturally occurring element.
(D) A process useful solely in the production of atomic energy for radiation
treatment of tumors.
(E) All of the above.

Back 10

E

Hint 10

what is NOT patentable?:
method of doing business
a scientific principle
something naturally occuring
process directed at an atomic weapon

Front 11

Which one of the following statements is an incorrect reason for holding a patent
application abandoned?
(A) Failure to respond within the shortened statutory period of response set in
an Office action or any extension thereof.
(B) Failure to file a complete response to every ground of rejection after the
examiner has given applicant further time to file a complete response.
(C) Failure to appeal an adverse decision of the Board of Patent Appeals and
Interferences affirming the examiner even though the examiner's rejection of
some of the claims has been reversed.
(D) The patent agent or attorney of record files a letter of express abandonment.
(E) All of the above.

Back 11

c

Hint 11

2 situations where you do not have to respond to PTO:
1. Notice of Omitted Items (but must respond and say you are not responding)
2. Positive outcome - at least 1 claim is in condition for allowance. Examiner's amendment will cancel unallowed claims and set the other claims in position for allowance.

Front 12

An applicant filed a notice of appeal in a patent application in which claims 1 to 5
have been finally rejected, claim 6 has been objected to as being dependent upon
rejected claim 1 but is otherwise allowable, and independent claim 7 has been
allowed. The applicant decided not to appeal the rejection. The applicant will be
notified by the examiner that the appeal stands dismissed, and that
(A) the application is abandoned for failure to prosecute.
(B) claims 1 to 5 have been canceled by examiner's amendment and that claims 6
and 7 stand allowed.
(C) claims 1 to 6 have been canceled by examiner's amendment and that claim 7
stands allowed.
(D) the applicant has two months within which to file an amendment to cancel
claims 1 to 5 to place the application in condition for allowance.
(E) claims 1 to 5 have been canceled by examiner's amendment, that claim 7
stands allowed, and that applicant has two months within which to file an
amendment rewriting claim 6 in independent form.

Back 12

C

Front 13

A proper Final Rejection is issued on July 14, 2006. The application does not contain any general
authorization to charge extension fees to a Deposit Account. After an interview with the examiner, a response is filed
on September 9, 2006. The examiner transmits an advisory action on October 23, 2006 indicating that the response
will not be entered. A Proper Notice of Appeal, the fee for an appeal and second response are filed on October 25,
2006 together with a request for a one month extension of time and the extension fee. An appeal brief was filed
without any other papers or any fee on January 14,2007. What is the status ofthe application.
(A) The application is pending.
(B) The application is abandoned because the Appeal Briefwas not timely filed.
(C) The application is abandoned because no response was filed to the Patent Office notice that
the second response was non-responsive.
(D) The application is abandoned because the Notice of Appeal was filed at the same time that a
response was filed and was ineffective.
(E) None of the above.

Back 13

B

Front 14

Which of the following conditions are the basis for a Petition to Make Special:
(A) The invention will extend the lifetime of patients with AIDS.
(B) The applicant is a pauper.
(C) The applicant is on death row.
(D) The invention will increase exports from the United States to other countries.
(E) The applicant has located a company which will license the invention as soon as it issues.

Back 14

A

Front 15

Which of the following statements is true:
(A) The maximum time prosecution can be suspended is one year.
(B) Every application must include a section setting forth the utility of the invention described.
(C) An amendment to a claim can be made by underlining the material to be added and placing
parentheses around the material to be deleted.
(D) An interview is never permitted after a Final Rejection.
(E) An agent or attorney who files a response to a non-final action which is incomplete is given
one month, or until the end of the period for response whichever is greater, to complete the
response unless it appears that the failure to respond fully was intentional.

Back 15

E

Front 16

T/F? - A provisional rejection for double patenting and a provisional rejection under 102(e) cannot
be made in the same Office Action.

Back 16

False, they can

Front 17

T/F? - A non-provisional application filed with only one claim can be converted into a provisional
application.

Back 17

True

Hint 17

you can convert a non-provisional into a provisional and vise versa unless issue fee has been paid. must meet rquirements of each type of application.

Front 18

T/F? - An IDS is timely if filed within three months from the filing of a provisional application.

Back 18

False

Hint 18

no IDS needed in provisionals

Front 19

T/F? - An application which was filed on June 13, 1994 is replaced by a continuation filed June 10, 1995. The continuation issued.on April 14, 1997. The patent will expire on June 13,2014.

Back 19

True

Hint 19

deals with transitional period, transitional date of June 8, 1995 (double check). any CIP filed after that date these a term of 20 years after the effective filing date.

Front 20

The application of question I was eventually finally rejected by the examiner. A continuation
application was filed and the parent was abandoned. A proper claim for foreign priority was made in the parent
application. Which ofthe following statements is true:
(A) Priority has been lost and cannot be claimed in the continuation.
(B) Priority needs to be claimed in the continuation application.
(C) A claim for priority in the continuation must be accompanied by a translation of the Thai
application.
(D) A reissue application should be filed in order to claim the priority in the parent application.
(E) None of the above is true.

Back 20

B

Front 21

7. A Final Rejection was mailed on February 21, 2008 setting a three month period for response.
Your client asks you to arrange an interview with the examiner during July. Which of the following is true:
(A) An interview is not permitted.
(B) Your client can attend the interview.
(C) No demonstrations can be shown to the examiner during the interview.
(D) If agreement is reached during the interview, no written response to the Final Rejection need be filed.
(E) An extension of time must be obtained before the interview can be held.

Back 21

B

Hint 21

MPEP 713.09 - Interviews may be held after the expiration of the shortened statutory period and prior to the maximum permitted statutory period of 6 months without an extension of time. See MPEP § 706.07(f).

Front 22

The Board rendered its decision rejecting the claims on October 5, 2007 and set a
two (2) month shortened statutory period for response. Smith elects to proceed
before the examiner. What would be the very last date permitted by the PTO rules
on which Smith could file a timely response to the Board's rejection and avoid
abandonment of the application if the response does not include an extension of
time fee, but does include a petition for an extension of time which establishes
sufficient cause for which Smith could be granted an extension of time by the PTO
for the maximum period of time permitted by statute to prosecute the
application?
(A) Saturday, December 5, 2007
(B) Monday, December 7, 2007
(C) Monday, January 5, 2008
(D) Thursday, February 5, 2008
(E) Monday, April 5, 2008

Back 22

E

Front 23

In a decision rendered in an ex parte appeal by the Board of Patent Appeals and
Interferences, the Board reversed the examiner's final rejection of all of your
client's (appellant) claims and included a statement of a new rejection under 35
USC 103 of all of the claims. You responded to the decision by submitting an
amendment to all the claims and arguing that the claims, as so amended, are
unobvious under 35 USC 103. The examiner, recognizing that the statement of
the new rejection by the Board is binding on the examiner, mailed a Supplemental
Examiner's Answer to you stating the reasons why the claims as amended did not
overcome the Board's new rejection. Which of the following courses of action
would be the most appropriate action to take on behalf of the client?
(A) File, within one month, an appropriate Reply Brief directed to the new
points of argument raised in the Supplemental Examiner's Answer.
(B) File a new ex parte appeal for a review of the new rejection by the Board in
view of the amendment and arguments on behalf of your client.
(C) Petition the Commissioner requesting that the claims be either allowed or
rejected by the examiner.
(D) File a request for reconsideration of the Board's decision traversing the new
rejection.
(E) Request that the Board again assume jurisdiction of the application so that
the basis of the new rejection may again be reviewed in view of the
amendment and the examiner's reasons for not allowing the claims as
amended.

Back 23

C

Front 24

An Office action was mailed on Thursday, July 16, 2007 in which all of the claims
in a patent application were finally rejected over prior art. The Office action set a
three (3) month shortened statutory period for response. A complete response to
the final rejection was received in the PTO on Monday, October 19, 2007. The
response included a proper Notice of Appeal with the appropriate fee. The
Notice and response included proper certificates of mailing complying with the
requirements of 37 CFR 1.8 and stating that the date of deposit with the u.s.
Postal Service was Friday October 16, 2007. The Appeal Brief was prepared in
triplicate and mailed to the PTO. The Brief with the appropriate fee was received in the PTO on Monday December 21, 2007, but did not include a certificate of
mailing or a petition and fee for an extension of time. What is the status of the
patent application?
(A) Pending because the Appeal Brief was timely filed.
(B) Pending because the six month statutory period for response to the Office
action expires on Friday January 15, 2008.
(C) Abandoned because a petition for an extension of time with the appropriate
fee was not filed with the Appeal Brief.
(D) Abandoned because a surcharge for late filing of the Appeal Brief was not
submitted with the Brief.
(E) Abandoned because the Appeal Brief did not include a proper certificate of
mailing.

Back 24

A

Front 25

A Notice of Allowance dated April 4, 2005 was mailed to the patent applicant. In
which of the following situations would the issue fee not be considered timely?
(A) The issue fee is filed in the PTO three months and one day after the Notice of
Allowance.
(B) The issue fee is filed in the PTO two months after the Notice of Allowance.
(C) The issue fee is filed in the PTO six months after the Notice of Allowance
and is accompanied by a petition to the Commissioner for a three month
extension of time and late payment fee.
(D) The issue fee is received in the PTO three months and three days after the
Notice of Allowance and is accompanied with a certificate of mailing dated
July 5,2005.
(E) A and D.
1200

Back 25

C

Front 26

An Office action was mailed on Thursday, July 16, 2007 in which all of the claims
in a patent application were finally rejected over prior art. The Office action set a
three (3) month shortened statutory period for response. A complete response to
the final rejection was received in the PTO on Monday, October 19, 2007. The
response included a proper Notice of Appeal with the appropriate fee. The
Notice and response included proper certificates of mailing complying with the
requirements of 37 CFR 1.8 and stating that the date of deposit with the u.s.
Postal Service was Friday October 16, 2007. The Appeal Brief was prepared in
triplicate and mailed to the PTO. The Brief with the appropriate fee was received in the PTO on Monday December 21, 2007, but did not include a certificate of
mailing or a petition and fee for an extension of time. What is the status of the
patent application?
(A) Pending because the Appeal Brief was timely filed.
(B) Pending because the six month statutory period for response to the Office
action expires on Friday January 15, 2008.
(C) Abandoned because a petition for an extension of time with the appropriate
fee was not filed with the Appeal Brief.
(D) Abandoned because a surcharge for late filing of the Appeal Brief was not
submitted with the Brief.
(E) Abandoned because the Appeal Brief did not include a proper certificate of
mailing.

Back 26

A

Front 27

3. Wilbur told you that he agreed with your advice regarding the controversy with Megacorp and would be
back to your office as soon as he could raise the Patent Office fee. Before that happened Megacorp filed a
reexamination request which was in due course granted by the examiner. You receive a first action in the
reexamination shortly thereafter setting a two month period for response. Which one of the following statements is
true:
A) You may respond to the reexamination even after the two months have passed by filing a proper
request for an extension of time for cause with your response.
B) The examiner may also reject the claims based upon other prior art such as public use so long as
the request was granted based upon a prior patent or publication.
C) Megacorp may withdraw the request for reexamination, but no refund of any portion ofthe
reexamination fee will be made.
D) Ifthe Request for Reexamination had been denied because the Patent Office did not agree that a
substantial new question of patentability was raised, then Megacorp would have been refunded a
major portion of the fee.
E) If the Request for Reexamination had been denied because the Patent Office did not agree that a
substantial new question of patentability was raised, then Megacorp could have appealed that
decision to the Board of Patent Appeals and Interferences.

Back 27

D

Front 28

Wilbur's son Wilbur, called Junior by everyone, took the Patent Office Exam in 2007 and achieved
the lowest score in the history of the exam. Undeterred he decided that ifhe couldn't prosecute other people's
applications at least he could prosecute his own. He prepared and filed a design application on a new hog pen design.
The preamble of the application reads as follows:
"This is my design for a hog pen."
He included a claim as follows:
"I claim all designs of pens which are similar to my design. It
Within a year after filing his design patent he filed a PCT application claiming priority from the design
patent and designated Canada and the EPO.
He included a proper copyright notice in the application placed adjacent and immediately below the
drawing of the pen, and included the required waiver.
What if anything did Junior do right:
A) The preamble.
B) The claim.
C) The copyright notice.
D) The PCT application.
E) None of the above.

Back 28

C

Front 29

13. Mary decides that she is not entirely happy with her appeal because she feels some of the claims should ~
be amended to define more particularly over the prior art. In particular she instructs you to file a continuation (
application with claims I through 4 and to amend those claims by preliminary amendment. She further instructs you
to withdraw the appeal as to claims I through 4, but continue the appeal as to the remainder of the claims 5 through
23. You do as she requests. What will be the result?
A) The appeal in its entirety will be withdrawn because a partial withdrawal is not possible.
B) Your attempt to withdraw will be ignored and the appeal will be decided as to claims I through 23.
C) You will receive a Notice oflmproper Appeal and be given a month to correct the appeal.
D) Your withdrawal operates as cancellation of claims I through 4 from the application on appeal.
The appeal continues as to the remaining claims.

Back 29

D

Front 30

Which of the following is true:
A) To be an inventor a person must participate in the reduction to practice.
B) In order for an inventor to establish a date of invention to swear back of a reference using a
reduction to practice there must be diligence between the date of the reduction to practice and the
filing date.
C)
D)
An inventor must make a contribution, no matter how small, to each claim of the application.
A C1P and its parent will always have the same inventive identity.
E) A provisional double patenting rejection can be made even when there are no common inventors in
the two applications.

Back 30

E

Hint 30

Can be made if no common inventors bc can be made wihere there is a common owner

Front 31

Last week you received a notice of eviction from your office for non-payment of rent. While
packing to move today, August 28, 2008 you find a communication from the Patent Office which had fallen behind a
desk. Happily, it is a Notice of Allowance for a patent application filed by Wilbur's Aunt Sarah covering a unique
chair design. Sadly, it was mailed on January 12,2008. What would be the best course of action:
A) Mail the Notice to Sarah and tell her to pay the issue fee.
B) Advise Sarah that the application is abandoned because the issue fee was not timely paid, but that
it can be revived because the abandonment was unintentional, and you will pay the cost of revival
since it was your fault.
C) Pay the issue fee and file an appropriate extension of time and fee.
D) File a petition asking that a new Notice of Allowance be sent.
E) File a continuation.

Back 31

B

Front 32

Which of the following regarding reexamination is not true:
A) Every reexamination must have Reasons for Confirmation/Patentability.
B) An amended claim or a new claim may not enlarge the scope of thc original claims.
C) Reexaminations of patents in litigation are automatically suspended until the litigation is
concluded.
D) Multiple reexaminations of the same patent may be merged.
E) There is no issue fee for a reexamination.

Back 32

C

Front 33

Wilbur's grandson Merle also has a patent application pending directed to his" Apparatus for
rapidly removing the skin from a dead rabbit". The application claims the invention both as a method and as an
apparatus. The application discloses two embodiments of the apparatus, one with a knife and one with a shredder.
The examiner issues a restriction requirement on May 3, 2006 setting a one month period for response. Merle must
elect between the method and apparatus and also elect one ofthe two species of apparatus disclosed. Which of the
following is true:
A) Merle can elect between the apparatus and method and have the election of the species deferred
until patentable subject mater is indicated.
B) If Merle does not respond, the examiner will make the election and cancel the non-elected claims.
C) If Merle disagrees with the requirement, he must elect, ask the examiner for reconsideration and
then appeal the restriction requirement to the Board of Patent Appeals and Interferences.
D)
E)
The non-elected claims do not have to be cancelled.
The restriction requirement is improper because an applicant is entitled to consideration of up to
five species where a generic claim is allowable.

Back 33

D

Front 34

On November 14, 2004, applicant filed an international patent application under
the Patent Cooperation Treaty in the Swedish Receiving Office. The United States
was specifically designated in the application. The application claimed priority of
an earlier Swedish national application filed on November 15, 2003. A copy of the
international application was communicated to the United States Patent and
Trademark Office under Article 20 of the PCT on May 25, 2005. A demand for
international preliminary examination, in which the United States was elected,
was properly filed on June 12, 2005. In order to prevent abandonment of the
international application as to the United States, what was the last day on which
the applicant may pay the basic national fee?
(A) July 15, 2005.
(B) September 15, 2005.
(C) November 14, 2005.
(D) May 15, 2006.
(E) July 15, 2006.

Back 34

D

Front 35

An international application under the Patent Cooperation Treaty (PCT), which
designated the United States, was filed on January 3, 1992. The application
claimed priority of a prior French national application filed on February 6, 1991.
A copy of the international application was communicated to the United States as
a designated office on August 20, 1992. A demand for international preliminary
examination, in which the United States was elected, was filed on September 1,
1992. Accordingly, the thirty month period of PCT Article 39(1)(a) expired at
midnight on August 6, 1993. The applicant submitted the basic national fee to
enter the United States national stage on August 2, 1993. On October 1, 1993, the
applicant timely submitted a translation of the international application and a
declaration of the inventors in compliance with PCT regulations in response to a
Notice of Missing Requirements. Also, on October 8, 1993, the applicant timely
submitted a translation of amendments under Article 19 of the PCT in response to
the Notice of Missing Requirements. On October 29, 1993, a Notice of Acceptance
was mailed to the applicant. The national stage application issued as a U.s.
patent on December 13, 1994. What is the effective date of the U.S. patent as a
reference under 35 USC 102(e) against a U.S. application filed November 20, 2000?
(A) January 3, 1992.
(B) August 2,1993.
(C) October 1, 1993.
(D) October 8, 1993.
(E) December 13, 1994.

Back 35

C

Front 36

On January 4, 2008, you filed a U.S. national patent application under 35 USC 111
for your client. The application issued as a U.S. patent on September 20, 2008.
Today, November 2, 2008, your client carne to you and indicated that he was
interested in obtaining patent protection in several foreign countries. Given the
options below, which one is the best way to proceed?
(A) File a PCT application before the expiration of 12 months from the U.S. filing
date and claim foreign priority based upon the U.S. application.
(B) Advise your client that the U.s. patent is a bar to foreign filings.
(C) Petition for an extension of time for filing a new PCT application.
(0) File a PCT application and submit a statutory disclaimer of the claims in the
U.S. patent indicating that it is being replaced by a PCT application.
(E) File directly in each desired foreign country and do not claim foreign
priority.

Back 36

A

Hint 36

12 months before US filing date

Front 37

An international application is received in the U.s. Receiving Office for filing
under the Patent Cooperation Treaty (PCT). Assuming that at the time of filing
the application, the applicant is a U.S. citizen, the applicant has the right to file an
international application with the U.S. Receiving Office, and the international
application filed is in the English language, which one of the following is nat
required for the application to obtain an international filing date?
(A) The payment of fees.
(B) The deSignation of a PCT contracting state.
(C) An indication that the application is intended as an international application.
(0) A part of the application which appears to be a claim.
(E) The name of the applicant.

Back 37

A

Front 38

T/F? A Petition to Make Special can be filed on the grounds that the invention is vital to national
security.

Back 38

F

Front 39

T/F? Acts proving inventorship within Canada can be used to establish an expaIte 102(g) rejection
of a pending application provided those acts took place after December 8, 1993.

Back 39

F

Hint 39

NAFTA doe snot allow acts outside the US to become prior art. Instead allows the inventor to use inventive acts in Canada or Mx to swear behind prior art

Front 40

T/F? An Examiner's Answer cannot contain a new ground of rejection.

Back 40

F

Hint 40

It should not but it can and there's steps to elect if he or she does (e.g. reopen prosecution)

Front 41

T/F? While information in the specification, claims, drawings, and any preliminary amendment
specifically incorporated into an executed oath or declaration will not be expunged, a petition
may be filed and a fee paid requesting expunging other material and returning it to the
applicant.

Back 41

T

Front 42

T/F? An application can be filed under Rule I.S3(b) in French provided that a translation is
thereafter filed in response to a Notice of Missing Parts, accompanied by a verification by the
translator that the translation is correct.

Back 42

F

Hint 42

Do not need a verification, only a statement that the translation is correct

Front 43

While browsing through a copy of the Official Gazette issued yesterday, April 12,
2008, a practitioner noticed a drawing figure in patent A which looked very
similar to a drawing figure he saw in patent B issued in 1990 which he recently
found while doing a prior art search. After the practitioner checked his files, he
found that indeed the drawing figure in patent B would anticipate the claim
printed in the Official Gazette for patent A. Can the practitioner make patent B of
record in the patented file of patent A?
(A) No, because there is no further duty to cite material prior art since the
prosecution of patent A is closed.
(B) No, because more than two years has lapsed since patent B was granted.
(C) Yes, however, the practitioner must file a request for reexamination and pay
the appropriate fee.
(D) Yes, if the citation is made in writing with a statement of the pertinency and
applicability of patent B with respect to the patentability of a claim in patent
A.
(E) Yes, only if the citation is made of record by the owner of patent A.

Back 43

D