Patent Bar Exam Prep Course Questions with Correct
Answers
What is the earliest effective filing date of a divisional application? (102
date) Correct Answer-Earliest effective filing date for determining prior
art (102) of a divisional (or any continuation) is the earliest filed priority
application (i.e. provisional, foreign app, or US nonprov parent)
What date is used to determine patent term? Correct Answer-The earliest
filed US nonprov app or PCT date for national phase applications;
provisionals and foreign priority dates do not affect patent term
When is a translation of a priority application required? Correct Answer-
To overcome a prior art rejection by perfecting priority claim; A
translation is required to prove to the Examiner that a foreign app in a
language other than English actually supports the priority that it's being
purported to provide
What is the main difference between a continuation app and a
continuation-in-part? Correct Answer-CIPs must contain new matter;
continuations must have an identical disclosure to the parent application
What is the earliest effective filing date in a CIP? Correct Answer-
Depends on when the matter was introduced; matter introduced in parent
app has effective filing date of parent, and new matter has effective date
of CIP filing date
,When is a substitute app filed? Correct Answer-When the copendency
period of the parent app has been allowed to expire, either accidentally
or intentionally; chain of priority is broken when a substitute app is filed
instead of a continuation
37 CFR 1.53(d) Correct Answer-rule for filing design applications and
CPAs of designs; CPAs result in the death of the parent (can't be
copending like utility app continuations)
Power to Inspect Correct Answer-allows patent practitioner to view the
whole file history of an app; not the same as POA
suspending prosecution Correct Answer-can only be done when it is the
Examiner's turn for action; must be done via a Petition to Suspend, not a
letter to the USPTO
When is filing a substitute app preferable? Correct Answer-Never;
means you've messed up and missed the period of copendency and
broken the chain of priority, which is never good
PASSING TIP: fee vs no fee Correct Answer-If you see two answers
that look correct and one involves paying a fee, the one with the fee will
likely be the more correct answer
How do you retain foreign priority in a continuation? Correct Answer-
Must claim the benefit of foreign priority and must identify the app
, containing the certified copy of the foreign app; do not need to keep re-
filing the certified copy
37 CFR 1.48(a) Correct Answer-rule that inventorship is corrected under
If the contribution of an inventor is no longer being claimed, how is
inventorship affected? Correct Answer-Claimed subject matter
determines inventorship, so if someone's contribution is no longer being
claimed, person must be removed as an inventor under 1.48(a), even if
their contribution is still in the disclosure
Can provisional apps claim priority to an earlier filing? Correct Answer-
No
PASSING TIP: rule 48 vs rule 76 Correct Answer-Sometimes correcting
inventorship will be talked about under rule 48 and sometimes under
rule 76, depending on what is being asked. Rule 48 is the rule that talks
about the ability and responsibility to change inventorship; rule 76 is the
mechanical rule about how you actually go about getting the
inventorship changed
What size paper must assignments be recorded on? Correct Answer-A4
or letter (8.5x11)
Can a nonprov that claims priority to a provisional add new subject
matter? Correct Answer-Yes, but will be subject to different 102 dates
coinciding with when the matter was introduced into the app
Answers
What is the earliest effective filing date of a divisional application? (102
date) Correct Answer-Earliest effective filing date for determining prior
art (102) of a divisional (or any continuation) is the earliest filed priority
application (i.e. provisional, foreign app, or US nonprov parent)
What date is used to determine patent term? Correct Answer-The earliest
filed US nonprov app or PCT date for national phase applications;
provisionals and foreign priority dates do not affect patent term
When is a translation of a priority application required? Correct Answer-
To overcome a prior art rejection by perfecting priority claim; A
translation is required to prove to the Examiner that a foreign app in a
language other than English actually supports the priority that it's being
purported to provide
What is the main difference between a continuation app and a
continuation-in-part? Correct Answer-CIPs must contain new matter;
continuations must have an identical disclosure to the parent application
What is the earliest effective filing date in a CIP? Correct Answer-
Depends on when the matter was introduced; matter introduced in parent
app has effective filing date of parent, and new matter has effective date
of CIP filing date
,When is a substitute app filed? Correct Answer-When the copendency
period of the parent app has been allowed to expire, either accidentally
or intentionally; chain of priority is broken when a substitute app is filed
instead of a continuation
37 CFR 1.53(d) Correct Answer-rule for filing design applications and
CPAs of designs; CPAs result in the death of the parent (can't be
copending like utility app continuations)
Power to Inspect Correct Answer-allows patent practitioner to view the
whole file history of an app; not the same as POA
suspending prosecution Correct Answer-can only be done when it is the
Examiner's turn for action; must be done via a Petition to Suspend, not a
letter to the USPTO
When is filing a substitute app preferable? Correct Answer-Never;
means you've messed up and missed the period of copendency and
broken the chain of priority, which is never good
PASSING TIP: fee vs no fee Correct Answer-If you see two answers
that look correct and one involves paying a fee, the one with the fee will
likely be the more correct answer
How do you retain foreign priority in a continuation? Correct Answer-
Must claim the benefit of foreign priority and must identify the app
, containing the certified copy of the foreign app; do not need to keep re-
filing the certified copy
37 CFR 1.48(a) Correct Answer-rule that inventorship is corrected under
If the contribution of an inventor is no longer being claimed, how is
inventorship affected? Correct Answer-Claimed subject matter
determines inventorship, so if someone's contribution is no longer being
claimed, person must be removed as an inventor under 1.48(a), even if
their contribution is still in the disclosure
Can provisional apps claim priority to an earlier filing? Correct Answer-
No
PASSING TIP: rule 48 vs rule 76 Correct Answer-Sometimes correcting
inventorship will be talked about under rule 48 and sometimes under
rule 76, depending on what is being asked. Rule 48 is the rule that talks
about the ability and responsibility to change inventorship; rule 76 is the
mechanical rule about how you actually go about getting the
inventorship changed
What size paper must assignments be recorded on? Correct Answer-A4
or letter (8.5x11)
Can a nonprov that claims priority to a provisional add new subject
matter? Correct Answer-Yes, but will be subject to different 102 dates
coinciding with when the matter was introduced into the app
