It is my pleasure to introduce the new and improved Patent Resources Group Patent Bar Review Question of the Week series (boy isn’t that a mouthful!).
Each week we’ll be featuring a Patent Bar question straight from actual past tests, asking you to comment and try to guess the answer, and then posting the official answer at the end of the week. In addition we’ll post a detailed analysis from Patent Resources Group’s Academic Director Paul Gardner.
In addition to teaching several popular PRG courses, Mr. Gardner has an extensive background in patent practice:
Prior to joining Patent Resources, he was a partner in law firms in Los Angeles and Seattle. His practice included all phases of patent and trademark law, including prosecution and litigation, and serving as an expert witness in a number of patent and trade secret cases. While practicing in Los Angeles, he taught courses in patent and trademark law as an adjunct at the UCLA Law School and, while in Seattle, at the University of Washington and Seattle University law schools.
Without further ado, here’s this week’s question (stay tuned for the answer and in-depth analysis later this week):
Question of the Week 1 (Q and A 14 from October 2001 Exam, Morning Session):
Which of the following is not in accord with proper USPTO practice and procedure?
(A) A written description as filed in a nonprovisional patent application is presumed adequate under 35 U.S.C. § 112 in the absence of evidence or reasoning to the contrary.
(B) An examiner may show that a written description as filed in a nonprovisional patent application is not adequate by presenting a preponderance of evidence why a person of ordinary skill in the art would not recognize in the applicant’s disclosure a description of the invention defined by the claims.
(C) A general allegation of “unpredictability in the art” is sufficient to support a rejection of a claim for lack of an adequate written description.
(D) When filing an amendment, a practitioner should show support in the original disclosure for new or amended claims.
(E) When there is substantial variation within a genus, an applicant must describe a sufficient variety of species to reflect the variation within the genus.
For more information on how you can prepare yourself for the Patent Bar, please check out Patent Resources Group’s Patent Bar Review Course homepage where you can get information on upcoming dates and locations for the course, including Boston in June, New York in July, San Francisco in November, and Dallas in December. Those unable to attend can even take the review courses via extensive home study DVD course materials! No matter how you take the course, you’ll receive thousands of dollars of study material and software, an exceptional value.