USPTO Patent Bar Practice Exam

These questions are part of the practice quiz. Start practicing

• Under what condition can the issue fee be paid late intentionally?
• When can an applicant opt out of publication?
• What are maintenance fees for design patents?
• Is the statement true or false: Just because the public has the invention means the invention was enabling?
• Under what circumstances can a rejection under 35 USC 102/103 be made?
• If Bob wants to add new matter before filing after executing the oath, what should he do?
• What must be submitted to enter the national phase in the U.S. from a PCT application?
• Under AIA, how can prior art made by a third party affect patent claims?
• What qualifies an applicant for small entity status?
• If an inventor sells an invention one day after a provisional application is filed but misses the nonprovisional filing date by 1.5 months, can they still obtain a patent?
• What is required to claim foreign priority under 35 USC 119(a)?
• Can provisions for unintentional abandonment under PLTIA be used to restore priority and regain pre-AIA status?
• Which two distinct requirements must claims meet according to 112(b)?
• What happens when you file an RCE during an appeal before the Board makes a decision?
• Can preliminary amendments add new matter?
• What guideline should be followed when faxing applications to the USPTO?
• In an interference proceeding, who wins if Mia conceives before Bruno but reduces to practice later?
• What action should be taken if prior art constitutes an anticipation under pre-AIA 102(e)?
• Which of the following procedures focuses exclusively on patents and printed publications?
• What is a limitation on an applicant's right to amend claims after a final rejection?
• Obviousness is determined based on the skill level of which of the following?
• In amended cases, what is required for claims to be allowed?
• If prior art discloses a category that comprises X but does not disclose X itself, can you claim X?
• Is a derivation proceeding conducted ex parte?
• What is the timeframe for entry into the national stage from a PCT application?
• Does the identification of a lead compound begin the prima facie case of obviousness for a chemical compound?
• Which of the following is considered a judicial exception to patent eligibility?
• What application-related items cannot be daisy chained?
• In the case where Inventor A and Inventor B are from different companies, what action can Company A take to address a 102(a)(2) rejection?
• How long must the applications be filed apart to avoid an interference trial under pre-AIA regulations?
• If a parent application with foreign priority is abandoned, does a continuation application also need to claim that priority?
• In what scenario would an applicant file a petition to request a date of submission as the filing date?
• What components are included in an appeal brief?
• What can a rejection under 35 USC 102(e) or post AIA 102(a)(2) not rely on?
• Which statute governs provisional application claims under priority?
• What does electing with traverse entail?
• If the issue fee is paid late unintentionally, what is the outcome?
• In terms of genus and species, what will always anticipate claims to a species?
• Which of the following is NOT true about arguments made by registered attorneys before the USPTO?
• In a derivation proceeding settlement, what status does the Board hold?
• When determining differences under 35 U.S.C. 103, what should be considered?
• How does the manner in which an invention was made impact its patentability under the AIA?
• Which principle is true regarding prior art and claims?
• Is a general concept illustrated with examples considered patentable subject matter?
• What happens if new matter is added after an oath is executed?
• Does an oath or declaration always require identifying each inventor by legal name?
• What is the first step to qualify for a reference filing?
• What is true about double patenting rejections?
• Can an antedating affidavit be filed in pre-AIA practice without receiving a 102 rejection?
• According to the provisions of 35 USC 112, which statement about the relationship between claims and specifications is true?
• How long do you have to file an oath or declaration after receiving a Notice to File Missing Parts?
• If an application is unintentionally abandoned for over one year, can it be revived?
• What do you need to file a Request for Continued Examination (RCE)?
• Which statement about the filing of a terminal disclaimer is true?
• Which of the following factors cuts into your patent term that will not be adjusted for via PTA?
• Once the issue fee has been paid for an application, what is true about submitting an IDS?
• In a derivation proceeding, what happens once the petitioner provides prima facie evidence supporting their claims?
• In a reference filing, what documents must be submitted within three months?
• To correct inventorship in a patent application, what document is not needed as per the AIA?
• Do small entities receive a discount on maintenance fees?
• Does claiming priority to a previous application affect your patent term?
• True or False: There is no anticipation of a claimed product unless all process steps are disclosed in the reference.
• What must a 1.130(a) affidavit demonstrate regarding disclosures?
• What weight should be accorded to evidence supporting the validity of a patent claim?
• Under what condition can post-grant review proceedings be requested?
• Can an applicant appeal to the Federal Circuit under §141 without submitting new evidence?
• What is true regarding the completion of a derivation proceeding?
• In what instance can you petition to withdraw the finality of a rejection?
• What characterizes a transitional application?
• A [2+5] deadline allows how much time to reply before extension fees apply?
• What is a requirement for recording an assignment at the PTO?
• What is the only section of AIA 102 that can be used to reject an application?
• What can occur if new matter is added to the disclosure of a patent application?
• When does the fee for submitting an international application typically become due?
• What is the patent term for utility and plant patents?
• Are "instructions on how business should be conducted" regarded as patentable subject matter?
• What is a key factor in determining if an invention in a claim is an obvious variation over prior art?
• Under what condition can you inspect an application where former coworkers are listed as inventors?
• What date must be overcome under 37 CFR 1.131?
• If a divisional application is not filed after a restriction requirement, what happens to the claims?
• What two responses can you give to a rejection issued by the PTO?
• What happens if a petition to initiate a derivation proceeding does not include the required fee?
• A broadening reissue application can be filed by whom?
• What does the "two month rule" refer to in patent law?
• What is a consequence of opting out of publication?
• What is required for claiming priority to a foreign application?
• In which situation can a patent be filed in the name of a juristic entity?
• Which filings are NOT eligible for the accelerated examination program?
• Under the AIA, what two conditions must be met for on sale activity to bar patentability?
• What is an estoppel provision in patent law?
• What is the recommended action if additional evidence is needed for an RCE?
• Which statement is correct about the rejection of claims?
• When are maintenance fee deadlines for utility patents calculated from?
• How can a Markush group be presented according to patent law?
• Can a party in a derivation proceeding request their settlement to be treated as confidential?
• Which type of applications is eligible for a request for continued examination (RCE)?
• Which application type is allowed to be faxed to the USPTO?
• What is the requirement for filing an Information Disclosure Statement (IDS) within three months of filing?
• True or False: The patentability of a product-by-process claim is determined based on the process used to make it.
• Can an abandoned U.S. patent application count as prior art under 102(a)?
• What does it mean if a claim is "anticipated"?
• What should be included in the statement provided by Company A to overcome a 102(a)(2) rejection?
• What action can you take if the application has not issued and you feel obligated to disclose more information?
• What is the outcome when a petitioner files an incomplete petition for derivation?
• What must an applicant do if the second-filed application discloses but does not claim the same subject matter as a prior application?
• When new matter is added to the claims of a patent application, what is the likely consequence?
• When can preliminary amendments be filed?
• What conditions must be satisfied for amendments during an appeal?
• When is the latest a patent application amendment can be made?
• When does the Board take jurisdiction during an appeal?
• What kind of response is needed if an application in the USPTO has inadvertently missing pages?
• Regarding common ownership exceptions, which statement is correct about the necessity of entire disclosure?
• To rely on equivalence for an obviousness rejection, what must be recognized in the prior art?
• What are the two possible outcomes if joint inventors disagree about revoking a practitioner's power of attorney?
• Is it possible to institute a derivation proceeding when none of a petitioner's claims are in condition for allowance?
• What must be true if you want to retract a Notice of Appeal?
• What does Pre-AIA 102(d) relate to in terms of patentability?
• What is the requirement for submitting an IDS after the final Office action?
• For a reexamination request, what constitutes a "substantial new question" of patentability?
• Can PCT applications that have entered the national stage in the U.S. be used for the PPH program?
• What is the response time for a patent owner to file a statement in a reexamination?
• What determination made by the Director is considered final and nonappealable?
• What is one permissible action you can take if you have evidence that claims in a pending application are invalid due to public prior use?
• In response to a restriction requirement, which action can NOT be taken?
• What do provisional rights allow a patent owner to do?
• Which of the following describes a key difference between a national application and a national stage application?
• When an English translation is required for foreign priority, what form must it take?
• What is the outcome for patentability under 35 U.S.C. 102(f) if the inventor did not conceive of the invention?
• Can the common ownership provisions of 35 U.S.C. 102(b)(2)(C) be applied to overcome a double patenting rejection?
• What must be submitted along with amended claims in a PPH application?
• Under what condition can a terminal disclaimer be filed?
• What is a substitute specification?
• What actions are NOT permitted in a reply brief?
• When can a derivation proceeding be filed?
• What must be considered when determining if a prior art reference is enabling?
• Who can be considered an assignee for the purpose of granting inspection permissions?
• What does "undue experimentation" relate to in relation to patentability?
• What types of amendments can be made in a PCT application?
• What is a consequence of the 2+5 month rule prior to the AIA in relation to filing oaths?
• In the context of patent applications, what must be addressed if a limitation was added after a rejection due to obviousness?
• When submitting a 1.130(b) affidavit, what must accompany it if the prior disclosure was a printed publication?
• Which method is suggested for damage control if a patent issues without the proper claim for priority?
• When can an interference proceeding occur between two applications?
• What is the key difference between provisional and foreign applications concerning priority claims?
• Which type of preissuance submission has the most stringent information requirements?
• Do the 102 and 103 provisions apply to plant applications and patents?
• What should you submit to correct inventorship besides a request?
• Which of these factors is not considered when assessing the obviousness of a claimed invention?
• Are preliminary amendments limited to correcting formal errors?
• When is the reply brief due in an appeal?
• What is needed to obtain a filing date for a nonprovisional patent application at the USPTO?
• Which of the following is NOT a Graham factor used to analyze obviousness?
• What is the time window to pay the issue fee after receiving a notice of allowance?
• Which pieces of evidence can contribute to secondary considerations of obviousness?
• Which application types require a 4+16 month time frame for claiming priority?
• In a derivation proceeding, what method may the parties use to resolve issues?
• What happens to non-admitted amendments during an appeal?
• What does "obvious to try" refer to in the context of KSR rationales?
• What is the pre-AIA 102(e) date for a US application or patent?
• True or False: You can submit a claim for priority to overcome certain prior art rejections even if it was not previously made in the application.
• When does a practitioner's request for withdrawal become effective?
• Which of the following can lead to a later buyer obtaining good title to a patent?
• What is the purpose of a transition application in the context of patent filing?
• Which of the following methods can be used to correct inventorship in an issued patent?
• Under what condition can a substitute specification be filed as a matter of right?
• In what context should post-PLTIA law be used according to PLTIA?
• What is the purpose of a provisional rejection?
• Which of the following is true about micro entity status?
• Which statement is accurate regarding filing an affidavit in a derivation?
• If an application has received a Notice of Allowance, how can you still submit an Information Disclosure Statement (IDS)?
• How many claims can be filed for free with your filing fee?
• What is one of the limitations of provisional applications?
• When is a supplemental oath or declaration treated as an amendment according to USPTO regulations?
• What is the role of anonymity in preissuance submissions?
• What is indicated by "a finite number" of options in the context of determining obviousness?
• What is the purpose of the 102(b)(2)(C) exception regarding common ownership?
• If a prior art device performs all functions of an apparatus claim, what is true about the prior art?
• Do public use disclosures qualify for removal as prior art under the 102(b) grace period?
• What is the primary difference between appealing under 35 U.S.C. §141 and §145?
• A prima facie case of obviousness requires which of the following?
• What is the time frame for filing a preissuance submission after the application publication?
• What is the requirement for filing an inter partes review?
• What must a fully responsive reply to a non-final Office action address?
• What is the rejection type used if two applications claim the same invention but are filed more than six months apart?
• What is required for an interference proceeding between an application and a patent?
• Is corroboration of evidence necessary when the testimony regarding lack of authorization is provided by the inventor?
• What must a patent practitioner ensure when withdrawing from a case to avoid late fees?
• Under what condition can a declaration be used instead of an affidavit?
• Can a lack of best mode be used to invalidate a patent claim under current law?
• Can a person being sued for infringement file a request for an ex parte reexamination without permission from the court?
• What happens if the best mode is not disclosed before the filing of a patent application?
• What are the due years for maintenance fees for utility patents?
• For a joint research agreement to qualify under 102(c), what must have occurred before the effective filing date?
• Can joint inventors execute separate oaths or declarations?
• In patent claims, how must apparatus claims be distinguished from prior art?
• A 1.130(a) affidavit must demonstrate which of the following?
• Who can file a protest in a patent application?
• What does the acronym CPA stand for in relation to the application process?
• What must be included in a document to record an assignment at the PTO?
• What is the significance of the best mode requirement in the context of prior art rejection?
• Which of the following can serve as a 102(e) date for an international application?
• Once a derivation proceeding is initiated, what can happen?
• In an appeal, which claims are presumed to be appealed?
• For an international application to use its international filing date as a 102(e) date, which condition must be met?
• Do assignments for a parent or provisional application carry over to continuations?
• What must happen if an examiner objects to the introduction of new matter in the disclosure?
• What initial documents are needed to enter the Patent Prosecution Highway (PPH)?
• Do transition applications need to be filed differently than pre/post AIA applications?
• What could justify a rejection under 35 U.S.C. 102(f)?
• What is the significance of the NAFTA and WTO dates in the context of patent law?
• What is an advisory action?
• Is a partnership between patent attorneys A and B, which restricts them from accepting each other's clients, valid?
• When do requests for extension of time need to be filed for reexamination?
• What is usually required by the examiner to overcome the date of a reference relied upon?
• What can an applicant do if they miss the EFS deadline?
• What is required for a U.S. application to be eligible for the PPH of another U.S. application?
• Which of the following is a guideline for filing appeals?
• Which is NOT a provision of 37 CFR 1.131?
• What is NOT a valid reason for requesting an acceleration of patent examination for free?
• What condition is stated in Pre-AIA 102(b) regarding patentability?
• Which document can be petitioned for reconsideration with additional fees in a PCT application?
• Which statute emphasizes the relationship between prior art and the claimed invention's obviousness?
• Is a sale conducted in secret considered prior art under AIA regulations?
• What does a 102(e) date signify and why is it important?
• Can an examiner use non-analogous references when evaluating a claimed invention?
• Which of the following statements is true regarding overcoming a third-party disclosure not derived from the inventor within one year of filing?
• What happens if the original 6-month limit from a Final Rejection is not met?
• When can canceled matter in a patent application be considered prior art?
• Which of the following can anticipate claims in a patent?
• How many colored drawings are required for utility patents?
• What does a claim to "at least one inventor" imply about inventions?
• How is a declaration different from an affidavit according to USPTO guidelines?
• What does PLTIA stand for?
• What are intervening rights?
• What is required for an applicant to file a derivation proceeding?
• In which scenario can an affidavit be used instead of a declaration?
• Under what circumstance does a reissue application lead to the automatic surrender of the original patent?
• When did the Patent Law Treaties and Implementation Act become effective?
• What must be done to claim priority based on a foreign application?
• Under what circumstances can the national stage application completion date serve as a 102(e) date?
• What happens to the filing date of an international application submitted to a non-competent receiving Office?
• If an application is filed in the US claiming priority from a foreign application, what date determines the AIA 102(b) one-year grace period?
• To avoid an obviousness-type double patenting rejection, what option can be utilized?
• What occurs if the issue fee is not paid by the deadline?
• What is the required action if the petitioner is notified of an incomplete petition?
• What is a requirement for a claim to be eligible for the Patent Prosecution Highway (PPH)?
• What is the maximum term extension that can be obtained to compensate for a successful appeal?
• What constitutes a proper reply to a final rejection to avoid abandonment of the application?
• Are claims cancelled by a Preliminary Amendment considered in determining additional claim fees?
• What is the main reason an anticipation rejection cannot be overcome by evidence of unexpected results?
• What is a requisite condition for prior art to count against a patent application?
• Which of the following is one of the changes imposed by PLTIA?
• What is the time limit for converting from a nonprovisional application to a provisional one?
• What is the maximum number of items that can be included in a request for supplemental examination?
• What is the limit for independent claims allowed in accelerated examination?
• When counting claims, how is a dependent claim treated?
• In the context of Information Disclosure Statements, which statement is true?
• In what section of the MPEP can one find the details about entity status classifications?
• What type of evidence does the USPTO suggest when determining the obviousness of a patent claim?
• Can foreign filing dates be relied on in an AIA 102(a)(2) rejection?
• How is the concept of "obvious to try" often misinterpreted?
• Is it necessary to provide an English translation when claiming foreign priority?
• What common ownership condition is required under 102(b)(2)(C) for applications to be eligible for the common ownership exception?
• Are plant applications eligible for special treatment via accelerated examination?
• What happens to a practitioner's power of attorney if one of the inventors dies?
• What is the first step in the three-step procedure to overcome a pre-AIA prior art rejection?
• What is the consequence if a respondent fails to establish non-derivation in a proceeding?
• What is the effective date for establishing common ownership under AIA 35 U.S.C. 102(b)(2)(C)?
• Which statement about the inter partes review process is correct?
• Can foreign filing dates ever be used in a 102(e) rejection?
• Which of the following methods can overcome a 102(a)(2) rejection?
• What conditions must be met for a later buyer to have good title of a patent?
• When must a broadening reissue be filed?
• How can amendments filed in appeal be submitted to reopen prosecution?
• What is required to qualify as an international (PCT) application?
• Is it true that a continuation-in-part application must be filed before a notice of allowance is mailed?
• What is considered impermissible recapture in a reissue application?
• According to AIA law, what type of prior art cannot be disqualified?
• What does the transitional phrase "consisting essentially of" do in a patent claim?
• Which scenarios would require filing a new application data sheet for updates?
• When can information in a previously submitted application data sheet be corrected?
• What is the purpose of the machine-or-transformation test?
• What statement must a 1.130(a) affidavit include?
• What is an acceptable source for case law citations in an Appeal Brief at the USPTO?
• Can the inventorship of an earlier-filed application be corrected by adding an inventor of a later application?
• When must a "demand" for preliminary examination in a PCT application be made?
• What is the minimum notice period a patent practitioner must give to withdraw from a case?
• What happens when a species anticipates a claim to a genus?
• What date is used to calculate the patent term for a PCT application that entered the national stage in the U.S.?
• What does the term "reasonable likelihood" signify in the context of initiating an inter partes review?
• What characterizes a derivation proceeding?
• Which of the following is one of the KSR rationales for obviousness?
• What type of double patenting rejection can be resolved by filing a terminal disclaimer?
• What is the purpose of a Certificate of Mailing?
• What principle is required for petitioners in a derivation proceeding regarding the claim terms?
• In the context of patent law, what is true about inherent characteristics in prior art?
• What are the four statutory categories of invention recognized by the USPTO?
• What is the maximum total number of claims allowed in prioritized examination?
• Can a provisional application claim priority to a foreign filed application?
• How can a foreign filing license be obtained?
• What results may arise from failing to meet the requirements for common ownership in a patent application?
• How can design need or market force influence the determination of obviousness?
• When can you definitely not receive a double patenting rejection?
• An assertion of priority can operate as an incorporation by reference when:
• Who has the authority to grant others the Power to Inspect an application?
• When can you deliberately slow down proceedings at the PTO?
• What can be filed to correct inventorship in a patent application?
• What can you do if someone stole your invention and applied for a patent without naming you as an inventor?
• What is a prerequisite for a practitioner to withdraw from representing a pending application?
• What can a party do if they cannot agree on obtaining an inventor's testimony?
• What is the maximum time you can request for suspension of action at the PTO?
• When does a drawing alone anticipate claims in a patent application?
• What situation does Pre-AIA 102(a) address regarding patentability?
• What is a requirement for a 1.130(b) affidavit in terms of disclosure similarity?
• What is the focus of the summary of the invention?
• Which of the following is true regarding the initiation of derivation proceedings?
• If you file an application in Estonia and then file the same invention in the U.S., what rejection will you incur?
• Which document is necessary when submitting a translation of a foreign application?
• What happens if an applicant fails to make an election of species when required?
• What should you do if a page of the specification is inadvertently missing from a filed application?
• In a derivation proceeding, what is required if the affiant is not the inventor?
• What is the patent term for design patents?
• What happens to claims linked in a restriction requirement?
• Which types of patent applications are not published?
• What fees do small entities NOT receive discounts on?
• Which of the following indicates that a method involving an abstract idea is patent eligible?
• Which of the following is a requirement for claiming priority under foreign law?
• What defines the limitations of who can file a transitional program for covered business method patents?
• What are the three main requirements under 112(a) for patent applications?
• If the examiner's answer raises a new ground of rejection, what happens to the appeal if the reply brief is not timely?
• Is it necessary to submit an affidavit with a derivation proceeding petition that addresses communication and lack of authorization?
• What is one of the specific conditions under which joint research agreements can allow for non-commonly owned applications to be treated as commonly owned under 102(c)?
• Can a patent examiner retrace the steps of an inventor to demonstrate the obviousness of an invention?
• What type of claims does 112(e) refer to?
• What is the time frame for filing a derivation proceeding petition after the publication of the respondent's claim?
• Which requirement is true regarding a 1.130(b) affidavit?
• What type of rejections can be presented upon appeal according to the Board?
• What is the effect of not pointing out patentable novelty in amended claims?
• What standard of proof is needed for a party to effectively argue that they did not derive from the petitioner?
• What is the main implication of introducing new matter in patent claims under 35 U.S.C. 112(a)?
• What is the consequence of an International Searching Authority (ISA) reviewing the unity of invention?
• What is the condition for entering the Patent Prosecution Highway (PPH)?
• Means plus function language in claims defines the characteristics of a machine or manufacture by including:
• If dependent claims are objected to for depending on rejected claims during an appeal, how are these claims treated?
• What must be proven to demonstrate derivation in a proceeding?
• Can any parts of the application be deferred when requesting Prioritized Examination?
• After a Board decision in an appeal, what can an applicant do?
• For a PCT application to count as prior publication under 102(a)(2), what must it entail?
• Can one assume the operability of prior art?