As of November 2, 2007, there is only one claim counting question in the Prometric database, and it was the exact same question from a prior exam (October 2003 AM #50). Please comment if anyone else had a different experience. (e.g., There may be a similar question on the computerized test requiring you to calculate total claim fees based on total number of claims. There was a question like that on one of the old exams but I can’t find it now.)
50. Ben hires a registered practitioner to prosecute his patent application. The practitioner drafted an application having fifteen claims. Claim 1 is independent, and each of claims 2-15 are singularly dependent upon claim 1. A proper non-final Office action is mailed to the practitioner. Following consultation with Ben, the practitioner timely prepared, signed, and filed a reply to the Office action containing an amendment that does not add new matter, but does add claims 16-27. Each of claims 16-27 is directed to the same invention sought to be patented through claims 1-15. The dependency of each of claims 16-27 reads â€śany of claims 5-15.â€ť For purposes of fee calculation in accordance with the patent laws, rules and procedures as related in the MPEP, how many total claims are contained in the application after the amendment is entered?
(A) One hundred thirty-six.
(B) One hundred thirty-five.
(D) One hundred forty-seven.
Ben has a patent application with one independent claim, 14 singularly dependent claims (claims 2-15), and 12 multiple dependent claims (claims 16-27). How many total claims does Ben’s application have? ANSWER: (D) is the most correct answer. 37 CFR Â§ 1.75; MPEP Â§ 608.01(n). As explained in MPEP Â§ 608.01(n), under the heading â€śMultiple Dependent Claims,â€ť subheading â€śAcceptable Multiple Dependent Claim Wordingâ€ť the multiple dependent claim wording of new claims 16-27 is proper. See, for example, â€śany one of the preceding claims,â€ť and â€śin any of claims 1-3 or 7-9.â€ť 37 CFR Â§ 1.75(c) states â€śFor fee calculation purposes under Â§ 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein.â€ť Therefore, claims 16-27 would each have a claim value of eleven and the total number of claims for fee calculation is one hundred forty-seven (12 x 11 = 132 + 15 = 147). Answers (A) and (B) are incorrect because they are not the correct total. Answer (C) is incorrect because the multiple dependent claims have not been calculated in accordance with 37 CFR Â§ 1.75. Answer (E) is incorrect because the question asks for the total after the amendment adding claims 16-27 has been entered.