Patent Bar Questions with Correct Answers
T or F: You can respond to some objections or objections and defer
others until a some future time Correct Answer-False, must respond to
each and every rejection
MPEP 706
rejection Correct Answer-written refusal because subject matter not
patentable
MPEP 700
objection Correct Answer-form of claim, specification, or drawing is
improper
MPEP 700
anticipation Correct Answer-rejection because of prior art
MPEP 700
How do you overcome an anticipation rejection? Correct Answer-1.
alleged prior art is not in fact prior art because the claim is entitled to an
earlier date than the reference.
2. the examiner is wrong in that the prior art does not teach each and
every element and limitation of the invention.
Can also amend claims to distinguish between claimed invention and
prior art in non-trivial way
,MPEP 700
Old 35 USC 102 (a)-(g). 7 circumstances under which patent cannot be
obtained Correct Answer-1. prior publication
2. prior patent
3. abandonment of invention
4. prior sale or offer for sale
5. prior use
6. prior public use and general knowledge
7. prior invention
MPEP 700
Old 102(a)-Prior Publication. Where would prior art count?
A. Public knowledge
B. Use by others
C. Publication
D. Patent Obtained Correct Answer-Public knowledge and use by others
would count only in the U.S. Publication and patents however would
count anywhere under old 102(a) and would disqualify you.
MPEP 700
,Does prior foreign filing date count as 102(a) prior art under the old
law? Correct Answer-No. Only if it publishes and is enforceable
MPEP 700
Old 102(b) Correct Answer-Grace period for prior art under old law is
one year.
MPEP 700
Old 102(c) Correct Answer-Can't get a patent on something that you
abandoned
MPEP 700
Old 102(d) Correct Answer-Can't get a patent if ALL of the following
has happened:
1. the same applicant or his or her legal representative or assignee filed
an application in a foreign country
2. The application in that foreign country was filed more than 12 months
before the US application was filed.
3. The foreign patent ISSUED before the US application was filed. The
patent need not have been published, but the granted patent rights must
have been enforceable
, MPEP 700
Old 102(e) Correct Answer-1. U.S. patents or published applications and
PCT applications designating the US which are published in English all
have 102(e) dates once they publish2
2. The prior art date is the earliest effective U.S. filing date or
International filing date once the U.S. application or International
application has published
MPEP 700
Under old 102(e), if the international publication did not publish in
english, does it have a filing date? Correct Answer-No
MPEP 700
Can the patent office make a provisional rejection of one application
citing another would be prior art? Correct Answer-Yes but only if there
is common inventorship or a common assignee
MPEP 700
Old 102(F) Correct Answer-Can't patent what you did not invent
MPEP 700
T or F: You can respond to some objections or objections and defer
others until a some future time Correct Answer-False, must respond to
each and every rejection
MPEP 706
rejection Correct Answer-written refusal because subject matter not
patentable
MPEP 700
objection Correct Answer-form of claim, specification, or drawing is
improper
MPEP 700
anticipation Correct Answer-rejection because of prior art
MPEP 700
How do you overcome an anticipation rejection? Correct Answer-1.
alleged prior art is not in fact prior art because the claim is entitled to an
earlier date than the reference.
2. the examiner is wrong in that the prior art does not teach each and
every element and limitation of the invention.
Can also amend claims to distinguish between claimed invention and
prior art in non-trivial way
,MPEP 700
Old 35 USC 102 (a)-(g). 7 circumstances under which patent cannot be
obtained Correct Answer-1. prior publication
2. prior patent
3. abandonment of invention
4. prior sale or offer for sale
5. prior use
6. prior public use and general knowledge
7. prior invention
MPEP 700
Old 102(a)-Prior Publication. Where would prior art count?
A. Public knowledge
B. Use by others
C. Publication
D. Patent Obtained Correct Answer-Public knowledge and use by others
would count only in the U.S. Publication and patents however would
count anywhere under old 102(a) and would disqualify you.
MPEP 700
,Does prior foreign filing date count as 102(a) prior art under the old
law? Correct Answer-No. Only if it publishes and is enforceable
MPEP 700
Old 102(b) Correct Answer-Grace period for prior art under old law is
one year.
MPEP 700
Old 102(c) Correct Answer-Can't get a patent on something that you
abandoned
MPEP 700
Old 102(d) Correct Answer-Can't get a patent if ALL of the following
has happened:
1. the same applicant or his or her legal representative or assignee filed
an application in a foreign country
2. The application in that foreign country was filed more than 12 months
before the US application was filed.
3. The foreign patent ISSUED before the US application was filed. The
patent need not have been published, but the granted patent rights must
have been enforceable
, MPEP 700
Old 102(e) Correct Answer-1. U.S. patents or published applications and
PCT applications designating the US which are published in English all
have 102(e) dates once they publish2
2. The prior art date is the earliest effective U.S. filing date or
International filing date once the U.S. application or International
application has published
MPEP 700
Under old 102(e), if the international publication did not publish in
english, does it have a filing date? Correct Answer-No
MPEP 700
Can the patent office make a provisional rejection of one application
citing another would be prior art? Correct Answer-Yes but only if there
is common inventorship or a common assignee
MPEP 700
Old 102(F) Correct Answer-Can't patent what you did not invent
MPEP 700
