Patent: bar Exam Random Questions
All Answered Correctly 2026-2027
Updated.
What must an applicant do when there is substantial variation within a genus? - Answer They
must describe a sufficient variety of species to reflect the variation within the genus. (MPEP §
2163)
Is a general allegation of unpredictability in the art‚ enough to support a written description
rejection? - Answer No. A general allegation of unpredictability is not sufficient to support a
lack of written description rejection. (MPEP 2163)
For claim amendments, can you submit just the corrected portion of the claim? - Answer No,
All claim amendments must be accomplished by submitting a replacement version of the entire
claim set along with the appropriate status identifier(s) for each claim.
In a reexamination proceeding, where are all notices and official letters for the patent owner
sent? - Answer They are sent to the attorney or agent of record in the patent file, at the
address listed on the register of patent attorneys and agents.
foreign priority statute and mpep - Answer 35 usc 119; mpep 213
What statute deals with appeal procedure? - Answer 35 USC 134
What do appeal matters concern and who deals with them? - Answer Appeals deal with
substantive issues (rejections) and the appeals are made to the PTAB
What do petition matters concern and who deals with them? - Answer Petitions deal with
objections to formal/procedural matters and are made to the Commissioner
Amendments after filing notice - Answer "1) Must be made before jurisdiction passes to the
Board
2) Allowed if amendment adopts a suggestion made, or if it removes an issue - Answer
3) Not allowed if raises new issues or increases total number of claims - Answer
,4) Examiner may reopen prosecution to issue a new rejection (from the amendment or based
on an IDS filed by applicant)" - Answer
"Timing of appeal brief - Answer
1. due the later of __ ______ from the PTO's Notice of Appeal acknowledgement or the time
remaining to respond to the _____ ______. - Answer
2. Remaining time rule: - Answer
3. Extensions: Up to __ ________ of extension of time are available. - Answer
4. Failure to file: If the Appeal Brief is not filed......" - Answer "1. due the later of 2 months
from the PTO's Notice of Appeal acknowledgement or the time remaining to respond to the
Office Action.
2. Remaining time rule: You never have to file a brief sooner than the time left to reply to the
Office Action when the Notice of Appeal was filed. - Answer
3. Extensions: Up to 5 months of extension of time are available. - Answer
4. Failure to file: If the Appeal Brief is not filed, the appeal is dismissed and the application is
abandoned (unless an allowed claim remains)." - Answer
Where are content requirements for appeal brief spelled out? - Answer MPEP 1206
When is an appeal available? - Answer "You can only appeal after a claim has been rejected
twice.
The two rejections can be: - Answer
* Final rejection, or - Answer
* One rejection in the original application + one rejection in a CIP/CPA/RCE continuation" -
Answer
What are the two steps to appeal? - Answer "1. File a Notice of Appeal: Tells the USPTO you
plan to appeal.
,- Answer - Must include the fee.
- Answer - The “received” date at the Post Office counts as the filing date (must use in-
person or Express Mail — no certificate of mailing).
2. File the Appeal Brief - Answer
- Answer - Due 2 months from the USPTO’s receipt of the Notice of Appeal.
- Answer - Filing an appeal pauses any other deadlines (acts like a pause button)."
"You get a Final Office Action with a 3-month Shortened Statutory Period. You file an RCE after
2+ months but still before the 3-month Shortened Statutory Period expires. - Answer
Do you need an extension?" - Answer Yes — you need a 1-month extension, because the RCE
was filed after the 2-month deadline, even though it was still within the 3-month SSP.
"You get a Final Office Action with a 3-month SSP. - Answer
You file a Notice of Appeal after 1 month. - Answer
You file the Appeal Brief more than 2 months after the Notice, but before the original 3-month
SSP ends. - Answer
Do you still need an extension?" - Answer Yes — you must file a petition for a time extension,
because the Appeal Brief was late relative to the 2-month appeal deadline, even though it was
within the 3-month SSP.
What happens if you don’t file the Appeal Brief? - Answer The appeal is dismissed.
Does the app automatically get abandoned if no appeal brief is filed? - Answer "If no claims
were allowed: Yes — the application becomes abandoned.
If some claims were allowed: No — the allowed claims return to the examiner; the app stays
alive." - Answer
, What if the app becomes abandoned because you missed the Appeal Brief deadline? - Answer
You can petition for revival under 37 CFR 1.137 (unintentional!) — and a successful revival acts
like an RCE.
Where does the first appeal go to from an examiner’s rejection? - Answer The first appeal
is always to the PTAB.
If you lose your appeal (first appeal) at the PTAB, what are your two options? - Answer
"Appeal to the Federal Circuit (normal).
File a civil action in the Eastern District of Virginia under 35 U.S.C. §145 (rare)." - Answer
What decisions can the PTAB make? (appeal) - Answer "Reverse, affirm (all or part), or
remand the examiner’s rejection.
Remand decisions cannot be appealed to court." - Answer
How is a determination of anticipation most often overcome? - Answer Adding non-trivial
limitation, step or element. (More narrowly define the claim.)
How does one challenge the determination that a claim is anticipated? - Answer "1. Negating
alleged prior art by showing the claim is entitled to an earlier date than the prior art.
2. Show that the prior art does not teach each and every element (feature, function, element,
step) and limitation of the invention." - Answer
Define "claim is anticipated" and its effect? - Answer "A reference or a set of facts which
teaches every aspect of the claimed invention either directly or indirectly.
If a claim is determined to be anticipated it may not be patented." - Answer
What is the prior art date of a US patent application under pre-AIA 35 USC 102(e)? - Answer
"The FILING (not issue) date of the U.S. patent application, US patent, or PCT application(or the
earliest effective priority date it claims).
and - Answer
All Answered Correctly 2026-2027
Updated.
What must an applicant do when there is substantial variation within a genus? - Answer They
must describe a sufficient variety of species to reflect the variation within the genus. (MPEP §
2163)
Is a general allegation of unpredictability in the art‚ enough to support a written description
rejection? - Answer No. A general allegation of unpredictability is not sufficient to support a
lack of written description rejection. (MPEP 2163)
For claim amendments, can you submit just the corrected portion of the claim? - Answer No,
All claim amendments must be accomplished by submitting a replacement version of the entire
claim set along with the appropriate status identifier(s) for each claim.
In a reexamination proceeding, where are all notices and official letters for the patent owner
sent? - Answer They are sent to the attorney or agent of record in the patent file, at the
address listed on the register of patent attorneys and agents.
foreign priority statute and mpep - Answer 35 usc 119; mpep 213
What statute deals with appeal procedure? - Answer 35 USC 134
What do appeal matters concern and who deals with them? - Answer Appeals deal with
substantive issues (rejections) and the appeals are made to the PTAB
What do petition matters concern and who deals with them? - Answer Petitions deal with
objections to formal/procedural matters and are made to the Commissioner
Amendments after filing notice - Answer "1) Must be made before jurisdiction passes to the
Board
2) Allowed if amendment adopts a suggestion made, or if it removes an issue - Answer
3) Not allowed if raises new issues or increases total number of claims - Answer
,4) Examiner may reopen prosecution to issue a new rejection (from the amendment or based
on an IDS filed by applicant)" - Answer
"Timing of appeal brief - Answer
1. due the later of __ ______ from the PTO's Notice of Appeal acknowledgement or the time
remaining to respond to the _____ ______. - Answer
2. Remaining time rule: - Answer
3. Extensions: Up to __ ________ of extension of time are available. - Answer
4. Failure to file: If the Appeal Brief is not filed......" - Answer "1. due the later of 2 months
from the PTO's Notice of Appeal acknowledgement or the time remaining to respond to the
Office Action.
2. Remaining time rule: You never have to file a brief sooner than the time left to reply to the
Office Action when the Notice of Appeal was filed. - Answer
3. Extensions: Up to 5 months of extension of time are available. - Answer
4. Failure to file: If the Appeal Brief is not filed, the appeal is dismissed and the application is
abandoned (unless an allowed claim remains)." - Answer
Where are content requirements for appeal brief spelled out? - Answer MPEP 1206
When is an appeal available? - Answer "You can only appeal after a claim has been rejected
twice.
The two rejections can be: - Answer
* Final rejection, or - Answer
* One rejection in the original application + one rejection in a CIP/CPA/RCE continuation" -
Answer
What are the two steps to appeal? - Answer "1. File a Notice of Appeal: Tells the USPTO you
plan to appeal.
,- Answer - Must include the fee.
- Answer - The “received” date at the Post Office counts as the filing date (must use in-
person or Express Mail — no certificate of mailing).
2. File the Appeal Brief - Answer
- Answer - Due 2 months from the USPTO’s receipt of the Notice of Appeal.
- Answer - Filing an appeal pauses any other deadlines (acts like a pause button)."
"You get a Final Office Action with a 3-month Shortened Statutory Period. You file an RCE after
2+ months but still before the 3-month Shortened Statutory Period expires. - Answer
Do you need an extension?" - Answer Yes — you need a 1-month extension, because the RCE
was filed after the 2-month deadline, even though it was still within the 3-month SSP.
"You get a Final Office Action with a 3-month SSP. - Answer
You file a Notice of Appeal after 1 month. - Answer
You file the Appeal Brief more than 2 months after the Notice, but before the original 3-month
SSP ends. - Answer
Do you still need an extension?" - Answer Yes — you must file a petition for a time extension,
because the Appeal Brief was late relative to the 2-month appeal deadline, even though it was
within the 3-month SSP.
What happens if you don’t file the Appeal Brief? - Answer The appeal is dismissed.
Does the app automatically get abandoned if no appeal brief is filed? - Answer "If no claims
were allowed: Yes — the application becomes abandoned.
If some claims were allowed: No — the allowed claims return to the examiner; the app stays
alive." - Answer
, What if the app becomes abandoned because you missed the Appeal Brief deadline? - Answer
You can petition for revival under 37 CFR 1.137 (unintentional!) — and a successful revival acts
like an RCE.
Where does the first appeal go to from an examiner’s rejection? - Answer The first appeal
is always to the PTAB.
If you lose your appeal (first appeal) at the PTAB, what are your two options? - Answer
"Appeal to the Federal Circuit (normal).
File a civil action in the Eastern District of Virginia under 35 U.S.C. §145 (rare)." - Answer
What decisions can the PTAB make? (appeal) - Answer "Reverse, affirm (all or part), or
remand the examiner’s rejection.
Remand decisions cannot be appealed to court." - Answer
How is a determination of anticipation most often overcome? - Answer Adding non-trivial
limitation, step or element. (More narrowly define the claim.)
How does one challenge the determination that a claim is anticipated? - Answer "1. Negating
alleged prior art by showing the claim is entitled to an earlier date than the prior art.
2. Show that the prior art does not teach each and every element (feature, function, element,
step) and limitation of the invention." - Answer
Define "claim is anticipated" and its effect? - Answer "A reference or a set of facts which
teaches every aspect of the claimed invention either directly or indirectly.
If a claim is determined to be anticipated it may not be patented." - Answer
What is the prior art date of a US patent application under pre-AIA 35 USC 102(e)? - Answer
"The FILING (not issue) date of the U.S. patent application, US patent, or PCT application(or the
earliest effective priority date it claims).
and - Answer
