10 Worked Example Questions
✓ Grounded in MPEP Ninth Edition, Rev. 01.2024 (Nov 2024)
Patent Bar Exam Example Questions
The best way to understand how the USPTO Registration Examination tests the MPEP is to work through realistic example questions. Below, you can test yourself interactively on 10 representative example questions and review the complete written walkthroughs and clickable MPEP Ninth Edition, Rev. 01.2024 (Nov 2024) citations.
AI Practice✓ Based on MPEP Ninth Edition, Rev. 01.2024 (Nov 2024)
Under pre-AIA 35 U.S.C. 102(e), an international application filed under the Patent Cooperation Treaty (PCT) has the prior art effect of an application filed in the United States only if which of the following conditions are satisfied?
According to pre-AIA 35 U.S.C. 102(e), an international application filed under the treaty defined in section 351(a) has the effect for the purposes of subsection 102(e) of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
ℹ️ Opens the MPEP source so you can verify this answer. Grounded in MPEP Ninth Edition, Rev. 01.2024 (Nov 2024).
According to MPEP § 2120.02, a rejection under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) or (b) regarding knowledge by others, public use, or placement of the invention on sale may be established by which of the following?
MPEP § 2120.02 states that an applicant may make an admission, or submit evidence of sale of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was sold by applicant or known by others to establish or support a rejection under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) or (b).
ℹ️ Opens the MPEP source so you can verify this answer. Grounded in MPEP Ninth Edition, Rev. 01.2024 (Nov 2024).
According to USPTO guidelines regarding prior art searches conducted by Office personnel, what should the search cover when determining what to search for?
According to the MPEP text, under 'What To Search For', the search should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed. See MPEP § 904.02.
ℹ️ Opens the MPEP source so you can verify this answer. Grounded in MPEP Ninth Edition, Rev. 01.2024 (Nov 2024).
According to MPEP 2173.05(e), inherent components of elements recited have antecedent basis in the recitation of the elements themselves (e.g., "the outer surface of said sphere" does not require explicit prior recitation of an outer surface). Option C is incorrect because failure to provide explicit antecedent basis does not always render a claim indefinite if the scope is reasonably ascertainable. Option D is incorrect because an outer surface is an inherent component of a sphere. Option A is incorrect as Ex parte Porter held that "controlled stream of fluid" provided reasonable antecedent basis for "the controlled fluid."
ℹ️ Opens the MPEP source so you can verify this answer. Grounded in MPEP Ninth Edition, Rev. 01.2024 (Nov 2024).
According to USPTO guidance on claim interpretation regarding 35 U.S.C. 112(f), how are non-traditional terms such as 'code' and 'application' evaluated when determining if a claim limitation invokes 35 U.S.C. 112(f)?
Under USPTO claim interpretation guidelines (citing Dyfan, LLC v. Target Corp. and Zeroclick, LLC v. Apple Inc.), terms such as 'code' and 'application' are not generic placeholders where persons of ordinary skill in the art would understand the terms in combination with the function performed by the code or application as connoting structure.
ℹ️ Opens the MPEP source so you can verify this answer. Grounded in MPEP Ninth Edition, Rev. 01.2024 (Nov 2024).
According to MPEP § 2106.05(a), when an examiner evaluates whether a claim provides an improvement to the functioning of computers or to another technology, how should the examiner analyze the 'improvements' consideration during examination?
MPEP § 2106.05(a) states that during examination, the examiner should analyze the 'improvements' consideration by evaluating the specification and the claims to ensure that a technical explanation of the asserted improvement is present in the specification, and that the claim reflects the asserted improvement. Generally, examiners are not expected to make a qualitative judgment on the merits of the asserted improvement.
ℹ️ Opens the MPEP source so you can verify this answer. Grounded in MPEP Ninth Edition, Rev. 01.2024 (Nov 2024).
When a patent examiner issues a 35 U.S.C. 101 rejection under Step 2B of the subject matter eligibility analysis based on a 'tentative abstract idea' that does not fall within any of the abstract idea groupings discussed in MPEP § 2106.04(a)(2), which of the following is required?
According to MPEP text regarding Step 2B eligibility rejections, if the judicial exception to which a claim is directed is a 'tentative abstract idea' (an abstract idea that does not fall within any of the groupings of abstract ideas discussed in MPEP § 2106.04(a)(2)), the rejection must use form paragraph 7.05.017 in addition to form paragraphs 7.04.01, 7.05, and 7.05.016, and must include the TC Director's signature.
ℹ️ Opens the MPEP source so you can verify this answer. Grounded in MPEP Ninth Edition, Rev. 01.2024 (Nov 2024).
According to MPEP § 2133.03(c) and In re Kollar, selling 'know-how' or licensing knowledge of a process where the process has not been carried out or performed does not constitute a 'sale' of the invention under pre-AIA 35 U.S.C. 102(b). However, the sale of a product made by the claimed process by the patentee or a licensee does constitute a sale of the process within the meaning of pre-AIA 35 U.S.C. 102(b).
ℹ️ Opens the MPEP source so you can verify this answer. Grounded in MPEP Ninth Edition, Rev. 01.2024 (Nov 2024).
Under USPTO policy, how is matter treated that was canceled from a U.S. patent application prior to issuance or publication, and thus did NOT get published in the issued patent or patent application publication?
Canceled matter in the application file of a U.S. patent or application publication cannot be relied upon in a rejection under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e). Canceled matter only becomes available as prior art as of the date the application file history becomes available to the public (Ex Parte Stalego).
ℹ️ Opens the MPEP source so you can verify this answer. Grounded in MPEP Ninth Edition, Rev. 01.2024 (Nov 2024).
According to the USPTO guidelines citing Dynamic Drinkware, LLC v. National Graphics, Inc., under what condition is a reference (such as a U.S. patent or published U.S. patent application) entitled to the benefit of the filing date of a provisional application for prior art purposes?
The text explicitly states that a reference (e.g., a U.S. patent, published U.S. patent application, or WIPO publication) is entitled to the benefit of the filing date of a provisional application ONLY if at least one of the claims in the reference is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph or 35 U.S.C. 112(a), citing Dynamic Drinkware, LLC, v. National Graphics, Inc.
ℹ️ Opens the MPEP source so you can verify this answer. Grounded in MPEP Ninth Edition, Rev. 01.2024 (Nov 2024).
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Under pre-AIA 35 U.S.C. 102(e), an international application filed under the Patent Cooperation Treaty (PCT) has the prior art effect of an application filed in the United States only if which of the following conditions are satisfied?
A. The international application designated the United States, regardless of the language in which it was published.
B. The international application entered the U.S. national phase under 35 U.S.C. 371 and paid the national fee.
C. The international application designated the United States and was published under PCT Article 21(2) in the English language.
D. The international application was filed in the U.S. Receiving Office (RO/US), regardless of publication language.
Correct Answer: C (Pre-AIA 35 U.S.C. 102(e))
According to pre-AIA 35 U.S.C. 102(e), an international application filed under the treaty defined in section 351(a) has the effect for the purposes of subsection 102(e) of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
According to MPEP § 2120.02, a rejection under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) or (b) regarding knowledge by others, public use, or placement of the invention on sale may be established by which of the following?
A. Prior art patents and printed publications exclusively, as examiner personal knowledge cannot form the basis of a rejection.
B. Only testimony provided under oath in a formal interference or derivation proceeding.
C. Only documentary evidence submitted by third parties through a 37 CFR 1.291 protest.
D. An applicant admission, evidence submitted of sale or knowledge of the invention by others, or the examiner's personal knowledge that the invention was sold by applicant or known by others.
Correct Answer: D (MPEP § 2120.02)
MPEP § 2120.02 states that an applicant may make an admission, or submit evidence of sale of the invention or knowledge of the invention by others, or the examiner may have personal knowledge that the invention was sold by applicant or known by others to establish or support a rejection under 35 U.S.C. 102(a)(1) or pre-AIA 35 U.S.C. 102(a) or (b).
According to USPTO guidelines regarding prior art searches conducted by Office personnel, what should the search cover when determining what to search for?
A. The search should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed.
B. The search should cover only the subject matter explicitly recited in the independent claims.
C. The search must only cover prior art references that explicitly contain a teaching or suggestion to combine elements.
D. The search should be limited strictly to prior art references submitted by the applicant in an Information Disclosure Statement.
Correct Answer: A (MPEP § 904.02)
According to the MPEP text, under 'What To Search For', the search should cover the claimed subject matter and should also cover the disclosed features which might reasonably be expected to be claimed. See MPEP § 904.02.
Under USPTO practice regarding claim clarity and antecedent basis, which of the following statements is CORRECT?
A. A claim reciting "the controlled fluid" is indefinite even if the claim previously recited a "controlled stream of fluid."
B. Inherent components of elements recited in a claim have antecedent basis in the recitation of the elements themselves.
C. Failure to provide explicit antecedent basis for a claim term always renders the claim indefinite under 35 U.S.C. 112(b).
D. A claim reciting the limitation "the outer surface of said sphere" is indefinite unless the claim previously explicitly recited that the sphere has an outer surface.
Correct Answer: B (MPEP 2173.05(e))
According to MPEP 2173.05(e), inherent components of elements recited have antecedent basis in the recitation of the elements themselves (e.g., "the outer surface of said sphere" does not require explicit prior recitation of an outer surface). Option C is incorrect because failure to provide explicit antecedent basis does not always render a claim indefinite if the scope is reasonably ascertainable. Option D is incorrect because an outer surface is an inherent component of a sphere. Option A is incorrect as Ex parte Porter held that "controlled stream of fluid" provided reasonable antecedent basis for "the controlled fluid."
According to USPTO guidance on claim interpretation regarding 35 U.S.C. 112(f), how are non-traditional terms such as 'code' and 'application' evaluated when determining if a claim limitation invokes 35 U.S.C. 112(f)?
A. They can only connote sufficient structure if explicitly paired with physical structural terms such as 'circuit' or 'transistor' in the claim.
B. They are automatically treated as generic functional placeholders that invoke 35 U.S.C. 112(f) in all software claims.
C. They have been found not to be generic placeholders where a person of ordinary skill in the art would understand the terms, in combination with the function performed, as connoting structure.
D. They trigger a non-rebuttable presumption that 35 U.S.C. 112(f) applies unless the claim recites a specific algorithm.
Correct Answer: C (MPEP 2181)
Under USPTO claim interpretation guidelines (citing Dyfan, LLC v. Target Corp. and Zeroclick, LLC v. Apple Inc.), terms such as 'code' and 'application' are not generic placeholders where persons of ordinary skill in the art would understand the terms in combination with the function performed by the code or application as connoting structure.
Example Questions FAQ
What do Patent Bar Exam questions look like?
Patent Bar Exam questions are fact-pattern or rule-based multiple-choice questions with four or five options. They test exact procedural rules and statutory exceptions from 35 U.S.C., 37 CFR, and the MPEP—such as whether an intervening disclosure disqualifies prior art under AIA 35 U.S.C. 102(b)(1)(B) or when an RCE is prohibited under 37 CFR 1.114(e).
Why do so many Patent Bar questions include dates in the prompt?
Dates determine two critical thresholds: (1) whether the application is governed by AIA (effective filing date on or after March 16, 2013) or Pre-AIA law, and (2) whether a statutory deadline (like the 1-year grace period, 4/16-month priority claim window, or 6-month maximum reply period) has expired.
How should I study these example questions?
First attempt each question in the interactive widget below, then read the step-by-step walkthrough and click the MPEP citation link to inspect the exact paragraph in MPEP Ninth Edition, Rev. 01.2024.