50q Exam | FITF | Wysebridge Patent Bar Review

Question 1 of 48

1. Question

Who decides whether a disclosure was obtained “indirectly from the inventor” for the exceptions in AIA 35 U.S.C. 102(b)(1) and (b)(2), and what is the measure for “indirectly from the inventor?”

A) The examiner would evaluate the inventor’s evidence submitted in an affidavit or declaration under 37 CFR 1.130 to determine whether a disclosure of subject matter was “by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.”
B) The examiner will determine whether the third party obtained the subject matter disclosed directly from the inventor or a joint inventor or whether the third party obtained the subject matter disclosed indirectly from the inventor or a joint inventor
C) (A) and (B)
D) A statement by applicant’s registered representative is sufficient to establish whether a disclosure was obtained “indirectly from the inventor” for the exceptions in AIA 35 U.S.C. 102(b)(1) and (b)(2) to apply.
E) (A), (B) and (D)

Question 2 of 48

2. Question

Inventor Y’s public disclosure covers X (e.g. methyls). A third party’s later disclosure covers a more general category of X (e.g., alkyls). If Y files a patent application on X after the third party disclosure, does Y’s disclosure shield the claimed invention from the third party’s intervening disclosure under 102(b)(1)(B)?

A) Yes, a rejection can be based on a third party's disclosure of a general category that includes X.
B) Yes, a rejection cannot be based on third party's disclosure of a general category that includes X.
C) No, a rejection cannot be based on a third party's disclosure of a general category that includes X
D) No, a rejection can be based on a third party's disclosure of a general category that includes X
E) Depends, a rejection may or may not be based on a third party's disclosure of a general category that includes X.

Question 3 of 48

3. Question

For AIA (FITF) applications, how does the addition of new matter into the application impact the effective filing date?
(i) Introduction of new matter is prohibited by 35 U.S.C. 132(a).

(ii) For an application filed on or after March 16, 2013 that discloses and claims only subject matter also disclosed in a previously filed pre-AIA (FTI) application to which the application is entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365, an amendment (other than a preliminary amendment filed on the same day as such application) seeking to add a claim that is directed to new matter would not convert the application into an AIA (FITF) application.

(iii) The AIA does not change the existing rules for introducing new matter in an application under examination.

(iv) A new drawing should not be entered if the examiner discovers that the drawing contains new matter (MPEP § 608.02); and amendments to the written description or claims involving new matter are ordinarily entered, but the new matter is required to be cancelled from the written description and the claims directed to the new matter are rejected under 35 U.S.C. 112(a).

(v) For an application filed on or after March 16, 2013 that discloses and claims subject matter not disclosed in a previously filed pre-AIA (FTI) application to which the application is entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365, an amendment (other than a preliminary amendment filed on the same day as such application) seeking to add a claim that is directed to new matter would convert the application into an AIA (FITF) application.

A) (i), (ii), (iii), (iv) and (v)
B) (i) and (iii)
C) (i), (ii) and (iii)
D) (v)
E) (iii) and (v)

Question 4 of 48

4. Question

Under the first-inventor-to-file provisions, does a public use or sale activity have to occur “in this country” to qualify as prior art?

A) No. Under the first-inventor-to-file provisions, a prior use or sale activity may occur anywhere in the world and qualify as prior art under AIA 35 U.S.C. 102(a)(1).
B) Yes. Under the first-inventor-to-file provisions, a prior use or sale activity must occur anywhere “in this country” to qualify as prior art under AIA 35 U.S.C. 102(a)(1).
C) No. Under the first-inventor-to-file provisions, an offer to sell may occur anywhere in the world and qualify as prior art under AIA 35 U.S.C. 102(a)(1).
D) Yes. Under the first-inventor-to-file provisions, an offer to sell must occur “in this country” to quailify as prior art under AIA 35 U.S.C. 102(a)(1).
E) all the above

Question 5 of 48

5. Question

If an applicant files a 37 CFR 1.55 or 1.78 statement, how will the USPTO acknowledge the statement?

A) The OPAP will indicate this on the filing receipt if an applicant used the updated Application Data Sheet (ADS, Form PTO/AIA/14).
B) The OPAP will indicate this on the filing receipt if an applicant uses the updated 371 Transmittal Letter (Form PTO-1390)
C) (A) or (B)
D) All the above.
E) None of the above.

Question 6 of 48

6. Question

Are affidavits under 37 CFR 1.131 and 37 CFR 1.132 still allowed after March 16, 2013 in applications filed before March 16, 2013?

A) Yes, any application filed before March 16, 2013 is governed by pre-AIA law, and applicants can continue to use affidavits/declarations to disqualify prior art pursuant to 37 CFR 1.131 and 1.132 in applications filed before March 16, 2013.
B) Yes, any application filed before March 16, 2013 is governed by pre-AIA law, however applicants can not continue to use affidavits/declarations to disqualify prior art pursuant to 37 CFR 1.131 and 1.132 on or after March 16, 2013.
C) No, any application filed before March 16, 2013 is governed by pre-AIA law, however applicants can not continue to use affidavits/declarations to disqualify prior art pursuant to 37 CFR 1.131 and 1.132 on or after March 16, 2013
D) The AIA has eliminated the use of both affidavits under 37 CFR 1.131 and 37 CFR 1.132.
E) All the above

Question 7 of 48

7. Question

Does the inventor need to show that he or she independently invented the subject matter to invoke the exceptions in AIA 35 U.S.C. 102(b)(1) and (b)(2)?

A) If the applicant is the employer of the inventor to whom the employee has a requirement to assign then the employer must establish that the subject matter disclosed originated with the inventor or a joint inventor
B) If the applicant is the employer of the inventor to whom the employee has a requirement to assign then the employer does not need to establish that the subject matter disclosed originated with the inventor or a joint inventor
C) The applicant does not need to establish that the subject matter disclosed originated with the inventor or a joint inventor
D) The applicant must establish that the subject matter disclosed originated with the inventor or a joint inventor.
E) (A) and (D)

Question 8 of 48

8. Question

An application, including claims 1-10, was filed on March 12, 2012 and abandoned on March 15, 2013. The application was then revived on March 16, 2013. Claims 1-10 of the revived application will be examined under?

A) pre AIA – 35 USC 102 and 103
B) AIA – 35 USC 102 and 103
C) either of pre AIA- 35 USC 102 and 103 or AIA – 35 USC 102 and 103
D) All of the above
E) None of the above

Question 9 of 48

9. Question

How is double patenting affected by AIA?

A) An applicant can now file a terminal disclaimer under Post-AIA 37 CFR 1.321(b).
B) Under 35 U.S.C. 102(b)(2)(C), an applicant’s prior disclosures can be used as prior art under 102(a)(2) to support a rejection.
C) The provisions of the 35 U.S.C. 102(a)(2) have eliminated double patenting.
D) (B) and (C)
E) The AIA does not change double patenting.

Question 10 of 48

10. Question

How can an inventor prove that an intervening third party disclosure under 35 U.S.C. 102(a)(1) is subject to the exception of 35 U.S.C. 102(b)(1)(B) because it was obtained from the inventor and was not independently invented by the third party?

A) An inventor seeking to disqualify an earlier publication disclosed during the inventor’s grace period under the exception outlined in 35 U.S.C. 102(b)(1)(B) could submit an affidavit or declaration under 37 CFR 1.130(b).
B) An inventor seeking to disqualify an earlier publication disclosed during the inventor’s grace period under the exception outlined in 35 U.S.C. 102(b)(1)(B) could submit an affidavit or declaration under 37 CFR 1.130(a).
C) An inventor seeking to disqualify an earlier publication disclosed during the inventor’s grace period under the exception outlined in 35 U.S.C. 102(b)(1)(B) could submit an affidavit or declaration under 37 CFR 1.130(b) or 37 CFR 1.130(a).
D) A statement by applicant’s registered representative is sufficient to establish that an intervening third party disclosure under 35 U.S.C. 102(a)(1) is subject to the exception of 35 U.S.C. 102(b)(1)(B) because it was obtained from the inventor and was not independently invented by the third party
E) (C) and (D)

Question 11 of 48

11. Question

Does the AIA define a “third party” disclosure?

A) A “third party” disclosure means a disclosure that names a person or persons not named as the inventor or a joint inventor that does not include an owner-assignee.
B) The AIA does not use or define the term “third party” with respect to the first-inventor-to-file provisions of 35 U.S.C. 102 and 103.
C) A “third party” disclosure means a disclosure that names a person or persons not named as the inventor or a joint inventor in an application where the subject matter was obtain indirectly.
D) All the above.
E) None of the above.

Question 12 of 48

12. Question

Must a public use or sale be enabled to qualify as prior art under AIA 35 U.S.C. 102(a)(1)?

A) No, the enablement inquiry is applicable to the question of whether a claimed invention is described in a patent, published patent application, or printed publication, and is applicable to the question of whether a claimed invention is “in public use” or “on sale.”
B) Yes, the enablement inquiry is applicable to the question of whether a claimed invention is described in a patent, published patent application, or printed publication, but is not applicable to the question of whether a claimed invention is “in public use” or “on sale.”
C) No, the enablement inquiry is applicable to the question of whether a claimed invention is described in a patent, published patent application, or printed publication, but is not applicable to the question of whether a claimed invention is “in public use” or “on sale.”
D) Yes, the enablement inquiry is applicable to the question of whether a claimed invention is described in a patent, published patent application, or printed publication, and is applicable to the question of whether a claimed invention is “in public use” or “on sale.”
E) (B) and (D)

Question 13 of 48

13. Question

A new examiner who recently started working for the USPTO is concerned with whether to apply pre-AIA 35 U.S.C. 102(b) and 102(e) or newly revised 35 U.S.C. 102(a). Since the examiner started with the USPTO shortly after Mar 16, 2013 and was given just a crash course in examination, upon returning from training, the examiner is confronted with a mountain of application in the in-bin. In the examiner’s pile are applications: A filed on Mar 15, 2013 and application B filed on Mar 16, 2013. How should the examiner address application A and application B?

A) The examiner should examine both applications under pre-AIA law.
B) The examiner should examine application A under pre-AIA law and application B under AIA FITF law.
C) The examiner should examine application B under pre-AIA FTI law and application A under AIA law.
D) The examiner should examine both applications under AIA FITF law.
E) The examiner should file both applications in the rotary file and leave.

Question 14 of 48

14. Question

If a provisional application is filed on January 1, 2013, and a nonprovisional application claiming the benefit of the provisional application is filed on April 1, 2013 with two claims, claim 1 being supported by the provisional application and claim 2 not being supported by the provisional application, how should the examiner treat the application?

A) The examiner should apply the first-to-invent provisions in this application.
B) The examiner should apply the first-to-invent provisions when examining claim 2 and first-inventor-to-file provisions when examining claim 1.
C) The examiner should apply the first-to-invent provisions when examining claim 1 and first-inventor-to-file provisions when examining claim 2.
D) The examiner should see if Joe Practioner is the applicant in this case.
E) The examiner should apply the first-inventor-to-file provisions in this application.

Question 15 of 48

15. Question

Please consider how the following claims(s) should be best addressed by the examiner and / or the registered practitioner:

Claim: An ion powered platform, comprising a vehicle body, an electric load; and an electrically conductive probe on said vehicle body for generating electrical energy from an ambient electrostatic field gradient.

Reference A teaches a generator using Earths electrostatic field and meeting all the claimed elements, except for a vehicle body.

Reference B teaches a generator using Earths magnetic field having a long wire 307 on a vehicle body 301.

The prior art references teach all of the claimed elements.

The difference between the prior art and the claimed invention is that the conductive probe for generating electrostatic energy is not on a vehicle body, but it is fixed to the ground.

As would be recognized by one of ordinary skill in the art, the length of the electrostatic probe fixed to the ground would be limited in achievable length; whereas a probe extended from a vehicle body is not constrained by gravitation/physical limits. Therefore, the probe can be made in greater lengths and thereby generate more energy.

A) The examiner should reject the claim per KSR exemplary rational (G)
B) The examiner should reject the claim per KSR exemplary rational (B)
C) The examiner should reject the claim per KSR exemplary rational (C)
D) The examiner should reject the claim per KSR exemplary rational (D)
E) The examiner should reject the claim per KSR exemplary rational (A)

Question 16 of 48

16. Question

If an applicant files a nonprovisional application on April 1, 2013, properly claiming domestic benefit for some of the claims to a provisional application filed on April 1, 2012, and also adds new claims not supported by the provisional application, will the application be subject to the first-inventor-to-file provisions?

A) The AIA no longer permits an applicant to claim domestic benefit to a provisional application.
B) Yes. The nonprovisional application will be examined under the first-to-invent provisions.
C) No. The nonprovisional application will be examined under the first-to-invent provisions.
D) No. The nonprovisional application will be examined under the first-to-invent provisions because the application contains claims newly added after the first-inventor-to-file provisions became effective on March 16, 2013.
E) Yes. The nonprovisional application will be examined under the first-inventor-to-file provisions because the application contains claims newly added after the first-inventor-to-file provisions became effective on March 16, 2013.

Question 17 of 48

17. Question

With respect to the exception under AIA 35 U.S.C. 102(b)(2)(C), does common ownership have to continue after the filing date of the claimed invention to disqualify prior art under the exception in AIA 35 U.S.C. 102(b)(2)(C)?

A) Yes, the exception under AIA 35 U.S.C. 102(b)(2)(C) applies only so long as its condition of common ownership continues.
B) No, the exception under AIA 35 U.S.C. 102(b)(2)(C) does not apply.
C) Continuation of ownership has no bearing on the exception under AIA 35 U.S.C. 102(b)(2)(C).
D) Continuation of ownership can not be used to establish the exception under AIA 35 U.S.C. 102(b)(2)(C).
E) If the patent were owned by the same person or subject to an obligation of assignment to the same person, the eexception under AIA 35 U.S.C. 102(b)(2)(C) does not apply

Question 18 of 48

18. Question

Is examination under AIA (FITF) or pre-AIA (FTI) law determined by the actual or the effective filing date of the application?

A) Examination under AIA (FITF) law is conducted in accordance with the effective filing date of the application.
B) Whether an application filed on or after March 16, 2013 is an AIA (FITF) or a pre-AIA (FTI) application is determined by the effective filing date (as defined in 35 U.S.C. 100(i)) of the claimed invention.
C) Examination under pre-AIA (FTI) law is conducted in accordance with the actual filing date of the application.
D) Whether an application filed on or after March 16, 2013 is an AIA (FITF) or a pre-AIA (FTI) application is determined by the actual filing date (as defined in 35 U.S.C. 100(i)) of the claimed invention
E) A and C

Question 19 of 48

19. Question

Does an application need to be published to be prior art under AIA 35 U.S.C. 102(a)(2)? Can a nonprovisional application that contains a nonpublication request be prior art under AIA 35 U.S.C. 102(a)(2)?

A) All unpublished applications per se are considered as prior art under AIA 35 U.S.C. 102(a)(2). An application must be issued as a U.S. patent or published as a U.S. patent application publication or WIPO published PCT application to be prior art under AIA 35 U.S.C. 102(a)(2).
B) Unpublished applications are not per se prior art under AIA 35 U.S.C. 102(a)(2). An application does not be issued as a U.S. patent or published as a U.S. patent application publication or WIPO published PCT application to be prior art under AIA 35 U.S.C. 102(a)(2).
C) Unpublished applications are not per se prior art under AIA 35 U.S.C. 102(a)(2). An application must be issued as a U.S. patent or published as a U.S. patent application publication or WIPO published PCT application or otherwise deemed to be published under 122(b) to be prior art under AIA 35 U.S.C. 102(a)(2).
D) Uunpublished applications per se will be considered as prior art under AIA 35 U.S.C. 102(a)(2), if an application must has been issued as a U.S. patent or published as a U.S. patent application publication or WIPO published PCT application to be prior art under AIA 35 U.S.C. 102(a)(2).
E) Uunpublished applications per se will be considered as prior art under AIA 35 U.S.C. 102(a)(2), if an application must has been previously issued as a U.S. patent or published as a U.S. patent application publication or WIPO published PCT application to be prior art under AIA 35 U.S.C. 102(a)(2).

Question 20 of 48

20. Question

If the claims are amended after March 16, 2103 in an application in which all claims have an effective filing date prior to March 16, 2013, will the application remain a pre-AIA (FTI) application?

A) Yes, if all the claims contain support in the original filing.
B) Yes, if all the claims are supported in the provisional application to which the application claims benefit.
C) No, if the amended claims are not verbatim or very close to the originally presented claims.
D) No
E) None of the above.

Question 21 of 48

21. Question

For transition applications, if the claims are amended, but the amended claims are fully supported by a foreign priority or domestic benefit application filed before March 16, 2013, is a 37 CFR 1.55 or1.78 statement required? If an amended claim has slightly different wording than the claims of the priority application, but it is not considered new matter, is a statement required?

A) Yes, if the amended claim language has slightly different wording that would be understood by on highly skilled in the art.
B) Yes, if the amended claim language is not verbatim as would be understood by one ordinarily skilled in the art.
C) A and B
D) No.
E) None of the above.

Question 22 of 48

22. Question

Must priority have been perfected in order for a U.S. patent or U.S. patent application publication that claims priority to a foreign application published in a language other than English to be used as prior art under 35 U.S.C. 102(a)(2)?

A) Yes, if the relevant subject matter is described in the priority document, a U.S. patent, U.S. patent application publication, or WIPO published PCT application is prior art as of its earliest priority date, regardless of whether the applicant perfected the right to priority in that patent or application.
B) Yes, if the relevant subject matter is described in the priority document, a U.S. patent, U.S. patent application publication, or WIPO published PCT application is prior art as of its earliest priority date, the applicant must perfect the right to priority in that patent or application.
C) No, if the relevant subject matter is somewhat described in the priority document, a U.S. patent, U.S. patent application publication, or WIPO published PCT application is prior art as of its earliest priority date, the applicant does not have perfected the right to priority in that patent or application to preserve the right to benefit.
D) No, provided that the relevant subject matter does not raise substantive questions of patentability in the priority document, a U.S. patent, U.S. patent application publication, or WIPO published PCT application is prior art as of its earliest priority date, regardless of whether the applicant perfected the right to priority in that patent or application.
E) No, provided that the relevant subject matter is described in the priority document, a U.S. patent, U.S. patent application publication, or WIPO published PCT application is prior art as of its earliest priority date, regardless of whether the applicant perfected the right to priority in that patent or application.

Question 23 of 48

23. Question

Is an application filed on or after March 16, 2013 that is a continuation, divisional, or continuation-in-part of a pre-AIA (FTI) application examined under the first-inventor-to-file provisions of the AIA or the first-to-invent provisions of pre-AIA law?

A) A continuation-in-part filed on or after Mar 16, 2013 is a AIA (FITF) application since the subsequent application may add subject matter not present in the prior application.
B) A continuation filed on or after Mar 16, 2013 is a AIA (FITF) application since the subsequent application may add subject matter not present in the prior application.
C) A divisional filed on or after Mar 16, 2013 is a AIA (FITF) application since the subsequent application may add subject matter not present in the prior application.
D) (A), (B) and (C)
E) A continuation or divisional application of a pre-AIA (FTI) application is also a pre-AIA (FTI) application since the application does not add subject matter not present in the prior application

Question 24 of 48

24. Question

Does the date that subject matter is “effectively filed” under 35 U.S.C. 102(a)(2) include the filing date of any provisional application or foreign application for which priority or benefit is claimed in a U.S. patent, U.S. patent application publication, or WIPO published PCT application that designated the United States being used as prior art?

A) No, provisional applications and foreign applications can no longer be cited as prior art under AIA (FITF) USC 102.
B) No, the provisional application or foreign application for which priority or a benefit is claimed does not count in the effective filing date unless it was filed before March 16, 2013.
C) Yes, provided that the subject matter being relied upon is sufficiently described in the provisional application or foreign application for which priority or a benefit is claimed.
D) Yes, provided that the subject matter being relied upon is likely in the provisional application or foreign application for which priority or a benefit is claimed.
E) Yes, provided that the subject matter being relied upon is described in the provisional application or foreign application for which priority or a benefit is claimed and the priority document was filed before March 16, 2013.

Question 25 of 48

25. Question

What is the effective date of the first-inventor-to-file provisions?

A) March 15th, 2013
B) March 15th, 2012
C) March 16th, 2012
D) March 16th, 2013
E) None of the Above

Question 26 of 48

26. Question

What is the “effectively filed” date for a non-English PCT application publication being applied as prior art under 35 U.S.C. 102(a)(2)? Are there language requirements for applying a published PCT application as prior art under 35 U.S.C. 102(a)(2)?

A) As long as the PCT application designates the United States, if the examiner requires a translation to support a rejection, it is the responsibility of the applicant to supply a translation in English.
B) As long as the PCT application designates the United States, there is no requirement under the AIA that the PCT application be published in English in order for the published PCT application to be applied as of its effectively filed date under 35 U.S.C. 102(a)(2).
C) The effectively filed date of any subject matter disclosed in a published PCT application that designates the United States is the earlier of: March 13th, 2013.
D) B and C
E) A and C

Question 27 of 48

27. Question

If a continuation-in-part application adds subject matter after March 16, 2013, but has support for some claims prior to March 16, 2013, is the continuation-in-part application treated as an AIA or pre-AIA (FTI) application? Are some claims AIA and some claims pre-AIA? Is the application examined under both the AIA and pre-AIA law?

A) If an AIA (FITF) application also contains, or contained at any time, any claimed invention having an effective filing date that occurs on or after March 16, 2013, each claim is not subject to pre-AIA 35 U.S.C. 102(g), since U.S.C. 102(g) has been eliminated under the AIA.
B) The continuation-in-part application is an AIA (FITF) application. If any claim of the application does not have support in an application filed prior to March 16, 2013, then the application is an AIA (FITF) application, and each claim in the application is subject to the AIA.
C) If an application contains, or contained at any time, any claimed invention having an effective filing date that occurs before March 16, 2013, and also contains, or contained at any time, any claimed invention having an effective filing date that is before March 16, 2013, each claim must be patentable under pre-AIA 35 U.S.C. 102 and 103, for the applicant to be entitled to a patent.
D) (A) and (B)
E) None of the above.

Question 28 of 48

28. Question

Joe Practioner filed numerous nonprovisional patent applications before March 16, 2013, but examination on all of his cases begins long after March 16, 2013, will Joe’s application be subject to the first-inventor-to-file or first-to-invent provisions

A) The applications will be subject to the first-to-invent provisions.
B) The applications will be subject to the first-inventor-to-file provisions.
C) The applications will be subject to transitional application provisions.
D) Joe Practitioner will be sanctioned.
E) Joe Practitioner may be disbarred.

Question 29 of 48

29. Question

Is an applicant required to submit his or her prior public disclosure made during the grace period before a first action on the merits to get the benefit of the grace period?

A) Yes, an applicant must show a prior public disclosure in an affidavit or declaration under 37 CFR 1.130 prior to the first office action.
B) No, an applicant does not need to show a prior public disclosure in an affidavit or declaration under 37 CFR 1.130 before the first office action. However, to facilitate compact prosecution, the applicant may identify a prior grace period public disclosure in the application upon filing under 37 CFR 1.77.
C) No, an applicant is not required to show a prior public disclosure in an affidavit or declaration under 37 CFR 1.130 in response to a rejection, but lacking a 37 CFR 1.130 statement, the application may be removed from expedited examination.
D) Yes, an applicant must show a prior public disclosure in an affidavit or declaration under 37 CFR 1.130 in response to a rejection. This is considered to be part of the compact reached with The Office in offering patent protection.
E) None of the above.

Question 30 of 48

30. Question

Joe Airhead filed what he thought was a complete patent application on Apr 1, 2015 but forgot to include a translation of a previous foreign publication he wanted the examiner to be considered available as prior art under 35 U.S.C. 102(a) until Apr 1, 2016. Joe then further amended his application with another one of his foreign publications from Apr 1, 2016 on Apr 1, 2017. The examiner’s first reply was a rejection based on 102(a)(2) on July 1, 2015, which Joe overcame on Sep 1, 2015. What will be the effective filing date of Joe’s Application?

A) 4/1/2015
B) 4/1/2016
C) 4/1/2017
D) 9/1/2015
E) none of the above

Question 31 of 48

31. Question

Can a provisional application qualify as prior art under 35 U.S.C. 102(a)(2)?

A) No, provisional applications cannot qualify as prior art under 35 U.S.C. 102(a)(2) because they are not publicly available.
B) Yes, provisional applications will always be available as prior art under 35 USC 102(a)(2).
C) A provisional application may be prior art under 35 USC 102(a)(2) only if it is relied upon by a non-provisional application that issues as a patent.
D) No, provisional applications are always prohibited from being used as prior art under AIA 102(a)(2) because they are not published
E) (A) and (D)

Question 32 of 48

32. Question

Does AIA 35 U.S.C. 102(b)(2)(C) include a joint research agreement exception similar to the provisions of pre-AIA 35 U.S.C. 103(c)?

A) No, AIA 35 U.S.C. 102(c) specifically provides that subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person the provisions of AIA 35 U.S.C. 102(b)(2)(C) do not apply.
B) Yes, AIA 35 U.S.C. 102(c) specifically provides that subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of AIA 35 U.S.C. 102(b)(2)(C).
C) No, if the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement the provisions of AIA 35 U.S.C. 102(b)(2)(C) do not apply.
D) No, if the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement the provisions of AIA 35 U.S.C. 102(b)(2)(C) do not apply.
E) (A), (B) and (D)

Question 33 of 48

33. Question

How should applicant’s admitted prior art be treated under the AIA?

A) The AIA no longer accords any standing to applicant’s admitted prior art under the AIA.
B) The AIA allows for the patent owner to make preissuance submissions that do not affect prior art admissions.
C) The AIA allows for the patent owner to make patent owner statements that do not affect prior art admissions
D) (B) and (C)
E) The AIA does not change the current policy discussed in MPEP § 2129 with respect to the use of applicant’s admissions as prior art.

Question 34 of 48

34. Question

Do foreign patent documents or publications need to be in English to be available as prior art under AIA 35 U.S.C. 102(a)(1)?

A) No, a foreign patent document or publication is prior art under AIA 35 U.S.C. 102(a)(1) as of its publication date, regardless of the language of publication
B) Yes, a foreign patent document or publication is prior art under AIA 35 U.S.C. 102(a)(1) as of its publication date, regardless of the language of publication
C) No, a foreign patent document or publication is prior art under AIA 35 U.S.C. 102(a)(1) when a translation if made available to the examiner.
D) Yes, an applicant must provide a translation of a cited foreign patent document.
E) Yes, an applicant must provide a translation of a cited foreign patent document. A machine translation may be deemed acceptable.

Question 35 of 48

35. Question

Is there a special or preferred form for an applicant to use in providing evidence in support of an exception under AIA 35 U.S.C. 102(b)?

A) Yes, the applicant must complete form PTO Form 1583.
B) No, due to the fact-specific nature of affidavits and declarations, it is impractical for the Office to suggest a “template” acceptable affidavit or declaration under 37 CFR 1.130.
C) Yes, the applicant must use either the PTO form 1583 or PTO/AIA/01 Declaration sheet.
D) Yes, the applicant must complete form PTO/AIA/01 Declaration (37 CFR 1.63) for utility of design application using an application data sheet (37 CFR 1.76)
E) None of the above is correct.

Question 36 of 48

36. Question

On January 5, 2013 Linda files a U.S. application disclosing but not claiming X. A year beforehand Pat told Linda about X privately. On March 16, 2014 Acme Corp. files a U.S. application with claim 1 directed to X; Pat is named as inventor in the signed ADS. On the August 3, 2014 the PGPub of Linda’s application is issued. On Apr 23, 2015 the examiner rejects claim 1 as anticipated under 102(a)(2) by disclosure of X in Linda’s PGPub. There is no 37 CFR 1.63 inventor’s oath or declaration on record. The practitioner for Acme Corp. files a 130(a) declaration that was signed by Pat in which Pat explains the circumstance under which Pat privately told Linda about X (i.e., not a public disclosure) before Linda’s filing date. The declaration does not state that Pat invented X. Is the declaration sufficient to disqualify the disclosure of X in Linda’s PGPub as prior art? If not sufficient, what else must the practitioner present to the Office to ensure a timely response?

A) Pat has sufficiently established that Pat invented X.
B) Even if Pat avers that invention X originated from him, an inventor's oath/declaration under 37 CFR 1.63 is necessary to overcome the rejection
C) The 130(a) declaration is sufficient to disqualify the disclosure of X in the PGPub as prior art.
D) The 130(a) declaration is not sufficient to disqualify the disclosure of X in the PGPub as prior art.
E) B and C

Question 37 of 48

37. Question

If an applicant is required to submit a statement under 37 CFR 1.55 or 1.78 to indicate that an application filed on or after March 16, 2013 with a domestic benefit or foreign priority claim before March 16, 2013, contains claim(s) lacking support in the application filed before March 16, 2013 (i.e., should be examined under the first-inventor-to-file provision), what is an example of a compliant statement?

A) “This application filed on or after March 16, 2013 which claims priority to an application filed before March 16, 2013, contains one or more claims NOT entitled to a filing date before March 16, 2013”
B) “This application claims priority to an application filed before March 16, 2013, and contains one or more claims NOT entitled to a filing date before March 16, 2013”
C) “This application contains one or more claims NOT entitled to a filing date before March 16, 2013”
D) “This application contains a claim having an effective filing date on or after March 16, 2013”
E) All the above.

Question 38 of 48

38. Question

Can an inventor’s grace period disclosure be used to get rid of a rejection based on intervening prior art?

A) No. An applicant cannot use a prior disclosure to avoid a rejection under 35 U.S.C. 102(a).
B) An applicant can show that a disclosure falls under the exception in 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) because the subject matter of the disclosure had been publicly disclosed previously by the inventor or a joint inventor.
C) Yes, An applicant can show prior disclosure of the invention to avoid a rejection under 35 U.S.C. 102(a) by filing a AIA 37 CFR 1.130 affidavit.
D) (B) and (C)
E) All the above

Question 39 of 48

39. Question

Does the AIA change the way PCT applications are reviewed by the USPTO as an International Search Receiving Office?

A) An applicant can receive a preliminary International Search Report of the application is filed using the Patent Prosecution Highway.
B) The USPTO will only use the date of entry onto the national stage as the effective filing date of a PCT application.
C) The USPTO will no longer follow PCT Rule 33.1 concerning search of the prior art, when acting as an International Search Receiving Office.
D) The USPTO will continue to follow PCT Rule 33.1 concerning search of the prior art, when acting as an International Search Receiving Office.
E) If the applicant did not timely file a demand for international preliminary examination with the IPEA, then an “International Preliminary Report on Patentability (chapter I of the Patent Cooperation Treaty)” reflecting the International Searching Authority’s (ISA’s) non-binding opinion regarding novelty, inventive step and industrial applicability will no longer be sent to the designated Offices.

Question 40 of 48

40. Question

Is an applicant entitled to receive the benefit of a previously filed foreign priority application if the foreign priority document is not in the English language?

A) An applicant may be entitled to the benefit of a previously-filed, non-English foreign priority application, if the applicant provides an English-language translation of the foreign application.
B) An applicant is entitled to the benefit of a previously-filed, non-English foreign priority application if the foreign priority document is not in the English language
C) An applicant may be required to provide an English-language translation of the foreign application if the filing date of the foreign application is necessary to overcome a rejection.
D) B and C
E) An applicant is entitled to the benefit of a previously-filed, non-English foreign priority application, but the applicant will be required to provide an English-language translation of the foreign application if the filing date of the foreign application is necessary to overcome a rejection.

Question 41 of 48

41. Question

If an application has a filing date on or after March 16, 2013 but includes a foreign priority claim to an application filed before March 16, 2013. Which of the following is true regarding the effective filing date of the claimed invention?

A) If any claims in the application have support in a domestic benefit application, the effective filing date is prior to March 16, 2013 and the application will be examined under pre-AIA (FTI) law.
B) If any claims in the application have support in the foreign priority application, the effective filing date is prior to March 16, 2013 and the application will be examined under pre-AIA (FTI) law.
C) If all claims in the application have support in the foreign priority application, the effective filing date is prior to March 16, 2013 and the application will be examined under pre-AIA (FTI) law
D) (A) and (B)
E) None of the above.

Question 42 of 48

42. Question

Is an affidavit by the inventor sufficient to prove that the disclosure was “by another who obtained the subject matter directly or indirectly from the inventor or joint inventor” under the exception of AIA 35 U.S.C. 102(b)(2)(A)?

A) An affidavit or declaration under 37 CFR 1.130(a) or (b) is the correct mechanism for an applicant to show that a third party (another) obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
B) An affidavit or declaration under 37 CFR 1.130(a) is the correct mechanism for an applicant to show that a third party (another) obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
C) An affidavit or declaration under 37 CFR 1.130(b) is the correct mechanism for an applicant to show that a third party (another) obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
D) An affidavit or declaration under 37 CFR 1.130(b) is not necessary if the applicant is was an employer of the inventor at the time to show that a third party (another) obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
E) An affidavit or declaration under 37 CFR 1.130(b) is not necessary if the applicant is the spouse of the inventor at the time to show that former spouses obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

Question 43 of 48

43. Question

Does an applicant need to claim priority to a prior-filed foreign application to get the benefit of the filing date of the foreign application?

A) Yes
B) Yes. An applicant must file a claim for foreign priority within four months of the actual filing date of the application or within sixteen months from the filing date of the prior foreign application.
C) Yes. An applicant may file an unintentionally delayed claim for foreign priority within five months of the actual filing date of the application or within sixteen months from the filing date of the prior foreign application
D) Yes. An applicant may file an unintentionally delayed claim for foreign priority within five months of the actual filing date of the application or within eighteen months from the filing date of the prior foreign application
E) No. An applicant does not need to clam priority to a prior-filed application if the application is filed through the Patent Prosecution Highway.

Question 44 of 48

44. Question

If an applicant submits an interim copy of a foreign priority application, will the applicant still need to provide a certified copy of the foreign priority document? How will an interim copy submission be reflected in the USPTO’s records?

A) The AIA has eliminated the need for an applicant who submits an interim copy of a foreign priority application for the applicant to provide a certified copy of the foreign priority document
B) If an applicant files an interim copy of a foreign priority application, the applicant must provide a certified translation of the foreign priority document before patent grant in order to perfect the priority claim.
C) If an applicant files an interim copy due an unintentionally delayed foreign priority application, the applicant must provide a certified copy of the foreign priority document before patent grant in order to perfect the priority claim.
D) If an applicant files an interim copy of a foreign priority application, the applicant must provide a certified copy of the foreign priority document before patent grant in order to perfect the priority claim.
E) Under the AIA belated perfection of priority is no longer permitted.

Question 45 of 48

45. Question

Does an applicant need to provide a translation of a foreign priority application to: (1) claim priority to the foreign application; (2) determine the effective filing date of the claims for purposes of determining whether the application is an AIA (FITF) application or a pre-AIA (FTI) application; (3) ensure that the subject matter of the U.S. nonprovisional application is supported by the foreign priority application; or (4) disqualify a reference with a prior effective date?

A) The applicant does not need to provide a translation of a foreign priority application to claim priority to the foreign application claim priority to the foreign application.
B) The applicant will be required to provide a certified copy of the foreign priority application and an English-language translation (if in a language other than English) if the filing date of the foreign priority application is necessary to overcome a rejection.
C) The applicant may need to provide an English-language translation of a foreign application to determine the effective filing date of the claims for purposes of determining whether the application is an AIA (FITF) application or a pre-AIA (FTI) application.
D) (A) and (B)
E) (A), (B) and (C)

Question 46 of 48

46. Question

What constitutes a sufficient publication under AIA 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B) for an inventor to remove an intervening reference? Would an email from an employee to a boss containing a description of the invention qualify as a “publication” to remove a reference in the grace period?

A) A publication per se is not required to trigger the exception in either AIA 35 U.S.C. 102(b)(1)(B) or 102(b)(2)(B).
B) An email from an employee to a boss is not likely to be considered a public disclosure of the subject matter contained in the email in the absence of evidence that the email was released to the public
C) (A) and (B)
D) An email from an employee to a boss may be considered a public disclosure of the subject matter contained if the email contained classified information.
E) (C) and (D)

Question 47 of 48

47. Question

When the exception in AIA 35 U.S.C. 102(b)(2)(C) is applicable, does it present a double patenting situation?

A) No, if the two applications are claiming patentably different inventions, a double patenting situation may not exist. The AIA did not change double patenting practice
B) No, the AIA has eliminated pre-AIA double patenting practice since the first-inventor-to-file eliminates double patenting contention.
C) Yes, if the two applications are claiming patentably indistinct inventions, a possible double patenting situation may exist. The AIA did not change double patenting practice.
D) No, the AIA has eliminated pre-AIA double patenting practice.
E) No, the AIA has eliminated pre-AIA double patenting practice since 35 U.S.C. 102(g) has been eliminated.

Question 48 of 48

48. Question

On Apr 1, 2016 Trish posts inventive subject matter on a public Web site. Trish did not obtain it from Amy, Rita, and/or Yolona. On Aug 1, 2016 the Office issues an effective filing date for Amy, Rita and Yolana’s claimed invention describing the subject matter contained in Trish’s posting. Is Trish’s posting properly considered to be prior art under 102(a)? Can Amy, Rita, and/or Yolona apply any AIA 102 exceptions to save their application?

A) The posting by Trish meets the requirements of 102(a)(1) and is considered prior art and the 102(b)(1)(A) exception does not apply
B) Since Trish did not obtain the subject matter from Amy, Rita, and/or Yolona the examiner should realize that Trish may have misappropriated the subject matter. Trish’s posting is thus not prior art and Amy, Rita, and Yolona can apply a 102(b)(2)(A) exception.
C) The posting by Trish meets the requirements of 102(a)(1) and is considered prior art, but the 102(b)(1)(A) exception applies.
D) B and C
E) None of the above.

50q Exam | FITF