Patent Bar Exam

Front 1

What is the transition date for first to file?

Back 1

March 16, 2013

Front 2

What pre-AIA 102 sections relate to novelty?

Back 2

102(a), (f), (e), and (g)

Front 3

What preAIA 102 sections are statutory bars?

Back 3

102(b), and (g).

Front 4

What are the two requirements for an idea to become an invention

Back 4

(1) Conception - a POSA could implement

(2) Reduction to practice - either actually made, or described (patent application is constructive)

Front 5

Experimental use is an exception to what pre-AIA section?

Back 5

102(b)

Front 6

What is experimental use?

Back 6

Experimental use means perfecting or completing an invention to the point of determining that it will work for its intended purpose, it does not include market testing.

Front 7

What always ends experimental use?

Back 7

Actual reduction to practice.

Front 8

What MPEP section describes the 14 factors to determine experimental use?

Back 8

MPEP 2133.03(e)(4)

Front 9

What are the four requirements for a rejection under 102(d) pre-AIA?

Back 9

(1) The applicant on the foreign application must be the same as the US filing

(2) The invention in the foreign application must be the same as in the US filing

(3) For utility patents, the foreign application must be filed more than 12 months prior to the US filing

(4) the foreign patent application must mature to an issued patent prior to the US filing

Front 10

What is the difference between an International and Foreign patent?

Back 10

International Patents are filed under the rules of the PCT; Foreign are filed directly in the patent office of a foreign country

Front 11

What is the difference regarding international patent applications and foreign patent applications regarding 102(e) pre-AIA?

Back 11

International patent applications may be given 102(e) dates (pre- Nov. 29, 2000 (FoT), post- earliest foreign priority date) , but foreign patent applications are not.

Front 12

What is the magic date for determining foreign priority for international applications under pre-AIA 102(e)?

Back 12

November 29, 2000

Front 13

What requirements are necessary for an international application to receive a 102(e) (pre-AIA) date after the November 29, 2000 switch?

Back 13

(1) Designates the US; and

(2) Publish in English

Front 14

What requirements are necessary for an international application to receive a 102(e) (pre-AIA) date before the November 29, 2000 switch?

Back 14

The date when the fee, oath, and translation arrive at the U.S. patent office.

Front 15

What is 102(c)?

Back 15

No patent is invention has been abandoned

Front 16

How far back can you claim priority based on a foreign application? (utility and design)

Back 16

(1) 12 months for a utility patent

(2) 6 months for a design patent

See 35 USC § 119.

Front 17

Does publication date matter for 102(d) (pre-AIA)?

Back 17

No. Date of patent issue is the key, not date of publication

Front 18

What is the 102(e) (pre-AIA) date for a domestic patent?

Back 18

The filing date

Front 19

What is the 102(e) (pre-AIA) date for a foreign patent?

Back 19

There is NO 102(e) date for foreign applications.

Front 20

For International applications regarding 102(e)(pre-AIA), what is the default rule for country designations?

Back 20

All countries, including the US, are designated by default.

Front 21

What is the rule for publication language of international applications regarding 102(e)(pre-AIA)?

Back 21

By default, patents publish in the language of the application. But applications can request publication in English for 102(e).

Front 22

What is the default rule and exception under 102(g)(1) (pre-AIA)?

Back 22

The first to invent will prevail in the interference unless they abandoned, suppressed, or concealed the invention.

Front 23

What is the default rule and exception under 102(g)(2) (pre-AIA)?

Back 23

The first party to reduce an invention to practice will be the sole party to obtain a patent unless another was (1) the first to conceive and (2) later reduced to practice (3) with diligence.

Front 24

Who is the senior and junior party at an interference and why is it important?

Back 24

Senior is the first to file; junior is second to file. All inferences are resolved in favor of the senior party.

Front 25

How can you get an earlier date of invention?

Back 25

File a 1.131 Affidavit of prior invention

Front 26

What restrictions apply to 1.131 affidavits regarding location of work?

Back 26

Conception in NAFTA and WTO countries based on magic dates. Look for questions giving information about when a country entered the WTO -- in particular China or India.

Front 27

What is important about China and India?

Back 27

They became members of the WTO after the January 1, 1996 date so 1.131 affidavits are not applicable until these two countries became members of the WTO. One cannot swear conception back to dates earlier than when the countries became members.

Front 28

What should you consider when a day of the week is included in a question?

Back 28

That the statutory period for accomplishing a task is automatically extended to the next business day for weekends and federal holidays.

Front 29

Which law applies if some claims are from pre-AIA and some claims are post-AIA?

Back 29

AIA applies to ALL claims - even if the only post-AIA claims are cancelled.

Front 30

Under what circumstances is a 1.130 affidavit NOT necessary to prove the authorship of a potentially prior art disclosure under 102?

Back 30

When the author is unambiguously the same as the inventor on the application.

Front 31

Can a general disclosure exempt a specific disclosure under 102?

Back 31

No.

Front 32

Can a specific disclosure exempt a general disclosure under 102?

Back 32

Yes.

Front 33

What is necessary to overcome a pre-filing third party disclosure?

Back 33

An inventor's own pre-dating disclosure, within the grace period, demonstrated by the disclosures (papers or spec sheets...) submitted on a 1.130 affidavit.

Front 34

What references can be excepted from prior art regarding a patent application subject to a joint research agreement as those references relate to ownership?

Back 34

References owned by one or both (any) party to the joint research agreement are eligible for exceptions. It is not limited to only applications developed under the JRA.

Front 35

What law applies to a patent application which has a claim that bridges the gap from old law to AIA law?

Back 35

All claims are subject to AIA 102 and all claims are eligible for 102(g) (pre-AIA) law.

Note - applicant must also file a statement so indicating. See 37 CFR 1.78(a)(6).

Front 36

Where are the exemplary KSR rationales in the MPEP?

Back 36

2141 Examination Guidelines forDetermining Obviousness Under 35 U.S.C.103 - III.

p. 2100-132

Front 37

What are the four Graham Factors?

Back 37

(1) Scope and content of the prior art,

(2) the differences between the prior art and the claims at issue, and

(3) the level of ordinary skill in the applicable art.

(4) Secondary conditions may be considered - (a) commercial success; (b) long felt needs, (c)failure of others

Front 38

What is the Teaching/Suggesting/Motivation test for obviousness?

Back 38

If (1) there was a likelihood of success for the invention based on prior art; and (2) everything you're claiming exists in the prior art, and (3) there was some suggestion that the various elements of the prior art could be combined

Front 39

What are the three elements of a claim?

Back 39

Preamble, transition, and Body.

Front 40

What conjunction will likely result in an indefiniteness rejection under 112(b)?

Back 40

Or - because it requires alternatives

Front 41

True of False - the a patent's claim or claims must begin on a separate sheet of paper?

Back 41

True

Front 42

What is the rule for capitalization and punctuation for a claim?

Back 42

Every claim must begin with a capital letter and end with a period.

Front 43

May sub-elements of a claim be offset by indentation?

Back 43

Yes - it is encouraged.

Front 44

What are the differences between a claim rejection and objection?

Back 44

A refusal to grant claims because the subject matter as claimed is considered unpatentable is called a rejection. If the form of a claim (not its substance) is improper, this is an objection.

Rejections are appealed to the PTAB

Objections are appealed to the USPTO director.

Front 45

In general, does a claim preamble limit the scope of a claim?

Back 45

No. (not for this exam) unless necessary to form an antecedent basis or in a Jepson claim.

Front 46

Describe the differences between "comprising", "consisting of", and "consisting essentially of".

Back 46

comprising - OPEN - invention includes, but is not limited too

consisting of - CLOSED - invention includes only what is listed

consisting essentially of - somewhat open and closed - can add things not changing the novel features

Front 47

Describe the Antecedent Basis rule

Back 47

This is the "a, an, and the" rule.

The first time you introduce a limitation you MUST introduce it with either "a" or "an". Subsequently, you refer to an already-introduced limitation by either saying "said" or "the".

Front 48

Can claims capture things that don't work?

Back 48

Yes - it can capture some things that don't work, but it can not contain too many (>50%ish)

Front 49

Can dependent claims broaden an independent claim?

Back 49

No - dependent claims which are broader than the independent claim is improper

Front 50

Can a dependent claim be listed before the claim upon which it depends?

Back 50

No - that is, dependent claim 5 cannot depend on claim 6.

Front 51

Is improper grouping of claims a rejection, objection, or no issue for the exam?

Back 51

It is an objection and should be considered improper for exam purposes, but not in real life.

Front 52

What is the language for a traditional Markush group?

Back 52

"wherein R is selected from the group consisting of A, B, C and D"

Must be CONSISTING OF

and must be "AND"

Front 53

What is the language for the acceptable alternative Markush group?

Back 53

"where R is A, B, C, or D"

Front 54

What is the proper form for the steps in a method or process claim?

Back 54

Must begin with a gerund that operates to direct the action - for example "stripping said board..."

Front 55

Can a method claim depend from an apparatus claim or vice versa?

Back 55

No - claim types must stick together (although one can modify a limitation of the other)

Front 56

Can a multiple dependent claim depend on another multiple dependent claim?

Back 56

No.

Front 57

Where must one check the MPEP for proper preambles for multiple dependent claims?

Back 57

MPEP 608.01(n)

Front 58

Regarding claim counting for the calculation of fees per claim, how many times does a proper multiple dependent claim count?

Back 58

A MDC is considered that number of dependent claims to which it refers. -- Any claims dependent (both directly and indirectly) on said MDC is also counted as many times a referred to in the MDC.

Front 59

Regarding claim counting for the calculation of fees per claim, how many times does an improper multiple dependent claim count?

Back 59

Just once - since only one objection to form is issued. -- this also is true for claims depending (both directly and indirectly) from this improper MDC.

Front 60

Does order matter for a method claim?

Back 60

No. Order us usually irrelevant unless specified by the claims. For example (first doing x ..., second getting y -- this order matters) otherwise (doing x, getting y -- this does not matter)

Front 61

How many claims can a design patent have?

Back 61

Only one claim for the ornamental design. Looks like - "The ornamental design for a ... "

Front 62

What's wrong with the following claim " pH range between 7 and 12, preferably between 9 and 10"

Back 62

It is indefinite. See MPEP 2173.05(C) - you are not supposed to specify a preferred range in the same claim as the limitation.

Front 63

Describe the limitation on the range in the following claim - "about 3 to 11"

Back 63

This means a little less than 3 and up to, but not exceeding, 11. The word about makes the first limit soft but not the second limit.

Front 64

What is the general rule regarding access to files at the USPTO?

Back 64

Both unpublished pending and abandoned applications are maintained in confidence. All issued patent files and published application are available to view and copy. Reissue and reexamination files involve an issued patents and are available to the public.

Front 65

What is the rule regrading access to an interference file?

Back 65

An interference file is available if the interference involves a patent or reissue, or an application which has issued as a patent if (1) the interference has been terminated, or (2) an award of priority has been made.

Front 66

Under what conditions will the USPTO provide the status of an application? (pending, abandoned, published, or issued)

Back 66

(1) When access can be obtained

(2) When the application is identified by serial number and filing date in a published patent document (foreign or US) or a U.S. application open to public inspection; or

(3) When the application is in the national phase of an international application in which the US has been indicated as a receiving state.

Front 67

How does one request the statuts of an application when based upon a patent document?

Back 67

(1) in writing; (2) with a copy of the document; (3) but NO fee required

Front 68

Who can normally access any pending or abandoned application?

Back 68

(1) Each of the inventors (even if assigned their interest unless asked not to by assignee)

(2) Any inventor who is named in an application which is filed with that inventor's signature under rule 1.45 or 1.46.

(3) An assignee of the entire interest or the assignee of a partial interest or an exclusive licensee (but not a non-exclusive licensee); and

(4) The attorney or agent of record and any person given written authorization from the attorney or agent of record, or one of the above.

Front 69

What unpublished abandoned applications can be accessed with only a written request?

Back 69

(1) Those referred to in a US patent or published application

(2) Those referred to in a US application open to public inspection

(3) Those referred to in a PCT published application which designates the US

Front 70

What procedure is required to access an unpublished pending application?

Back 70

(1) Filing a petition for access

(2) Paying the petition fee

(3) Service (on the applicant/owner, or PTO to serve)

(4) Petition must establish "special circumstances"

Front 71

What are the "Special Circumstances" a petition to access an unpublished pending application must disclose?

Back 71

(1) When the owner is using the patent application to interfere with a competitors business

(2) When a patent relies upon the application for priority

(3) When the application is incorporated in its entirety by reference into a patent or published application

Front 72

What rules apply to access of assignment records?

Back 72

The same rules as to access of patents and applications generally.

Front 73

Can the patent office keep a patent or application secret?

Back 73

Yup- for national security reasons.

Front 74

What is required for any invention made in the US before an application can be filed for that invention in another country?

Back 74

A foreign filing license -- Note: every US application includes an implicit request for a foreign filing license

Front 75

In what three ways can a foreign filing license be acquired?

Back 75

(1) Passage of 6 months following the filing of any US application, including provisional

(2) Being granted specifically on the filing receipt, which also indicated date the license is effective

(3) By granting of a petition asking for one

Front 76

Is a foreign filing license required for an invention made outside the US?

Back 76

No - even if by Americans

Front 77

May a foreign filing license be grated retroactively?

Back 77

Yes - provided the illegal foreign filing occurred through error

Front 78

How may one prevent publication of an application?

Back 78

Express abandonment - usually required four weeks notice. 37 CFR 1.138(c)

Front 79

What is important about DOE and NASA requests for information?

Back 79

You have a 60-day non-extendable window in which to respond

Front 80

What is necessary to correct inventorship for a non-provisional application?

Back 80

A signed Application Data Sheet in accordance with § 1.76 that identifies each inventor by legal name, address information; and the required fee.

Front 81

What is necessary to correct inventorship for a provisional application?

Back 81

A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies each inventor by legal name; and fee.

Front 82

What are the three special circumstances for changing inventorship?

Back 82

(1) Reissue - see § 1.171 and § 1.175

(2) Issued Patent - see § 1.324

(3) Case before the PTAB - motion under section § 41.121(a)(2) or § 42.22

Front 83

Are IDSs permitted for provisional applications?

Back 83

No

Front 84

For how long can a nonprovisional application be converted into a provisional application?

Back 84

One year (but 14 months for priority under PLTIA)

Front 85

Can a provisional application be converted to a regular application?

Back 85

Yes

Front 86

Why would one file a provisional application?

Back 86

A place holder to preserve priority

Front 87

What are the elements of a provisional application?

Back 87

(1) A cover sheet or signed ADS

(2) a specification as required by § 112

(3) drawings (if necessary to understand)

(4) filing fee

Front 88

What must the coversheet of a provisional application contain?

Back 88

(1) The the application is provisional

(2) the names of the inventor

(3) the residence of each inventor

(4) the title of the invention

(5) the name and registration number of the agent or attorney

(6) the docket number of the filer, if any

(7) the corresponding address

Front 89

What are the essential element of a provisional application, and what happens to the omitted elements?

Back 89

(1) Essential - specification and necessary drawings

(2)For an omitted coversheet and filing fee, a notice of missing parts is sent

Front 90

Can a provisional application claim priority to an earlier provisional?

Back 90

No. but a utility patent can claim priority to a provisional

Front 91

Can a non-provisional application claim priority to a provisional application filed more than 12 months prior?

Back 91

Yes - you can get an extra two months (so 14 after filing provisional) by paying $1,700.

Front 92

May a design patent claim priority to a provisional application?

Back 92

No, just utility patent.

Front 93

What are the seven no's for a provisional application?

Back 93

(1) No claims

(2) No oath or declaration

(3) No examination or amendment

(4) No design applications

(5) No possible claim for priority from other applications

(6) No information disclosure statements

(7) No basis for priority for a design application

Front 94

What is a characteristic of a substitute application that separates it from divisions, continuations, and CIPs?

Back 94

Substitute applications are NOT copending with the earlier application

Front 95

Define Continuation application?

Back 95

A second, third, ...., application by the same applicant for the same invention claimed in a prior, non-provisional application, and filed before the original (parent) application becomes abandoned or issued.

Front 96

Define a CIP.

Back 96

A continuation-in-part application is the second application by the same applicant for the same invention claimed in a prior non-provisional application, and filed before the original (parent) application becomes abandoned or issued.

The CIP repeats some substantial portion of the earlier application, but adds NEW MATTER.

Front 97

Define Divisional application.

Back 97

A divisional application is a later application for a distinct and independent invention carved out of a pending application, and claiming subject matter only in the earlier application.

Front 98

Define a CPA.

Back 98

Continued Prosecution Application - for design patents only - requires the abandonment of the parent .

Front 99

Must named inventors be included on an application to get a filing date?

Back 99

No

Front 100

What documents can supply the inventors on an application filed without inventors listed?

Back 100

(1) Oath

(2) Declaration

(3) Compliant ADS

Front 101

What is the time limit for an application to claim foreign priority?

Back 101

12 months - as long as the foreign application satisfies the disclosure requirements of § 112.

Front 102

Must an assignment of patent rights be in writing?

Back 102

Yes

Front 103

What are the requirements for a recording of an assignment?

Back 103

(1) English or translated to English

(2) Specifically identify all patents and applications

(3) Have the correct Fee

(4) Be legible and on only one side of paper

(5) Be original or certified copy

(6) Be accompanied by a cover sheet

Front 104

What must the cover sheet of a recorded assignment contain?

Back 104

(1) the name of the party conveying the interest

(2) name and address of party receiving the interest

(3) a description of the interest conveyed

(4) each patent and application number

(5) name and address of coorespondance

(6) number of patents and applications and fee amount

(7) date of execution

(8) statement that the cover sheet is accurate

(9) signature of submitting party

Front 105

Which continuing applications automatically transfer the assignment?

Back 105

Continuations, provisionals, divisions, replacements

Not CIPs

Front 106

What three requirements are necessary for a second buyer to take title to a patent over a first buyer?

Back 106

(1) First buyer failed to record before second (but three month grace period)

(2) Second buyer took for consideration

(3) Second buyer did not know of the first sale

Front 107

May a registered patent agent sign a disclaimer or terminal disclaimer?

Back 107

Yes

Front 108

Does recording an assignment revoke the power of attorney?

Back 108

No, not automatically

Front 109

When is revocation of power of attorney effective?

Back 109

On the date the PTO receives the revocation.

Front 110

What are the requirements for a representative to withdraw representation?

Back 110

Submit a petition to the director showing (1) reasonable notice to the client prior to the expiration of a reply period; (2) delivery to the client of all papers and property; and (3) notification of any pending deadlines

Front 111

What happens to a power of attorney upon the death of an inventor?

Back 111

The POA expires; a new one must be submitted by a co-inventor; or the decadent's heirs

Front 112

Who can sign for a hostile inventor?

Back 112

(1) The oath and dec can be signed by another inventor on his behalf

(2) A entity with a sufficient propriety interest

(3) A written assignee

Front 113

May an assignee prevent the original inventor's access to the application?

Back 113

Yes.

Front 114

May an assignee revoke the inventor's power of attorney

Back 114

Yup.

Front 115

What is the maximum number of attorneys and agents a single power of attorney may include?

Back 115

ten - any more, and you have to file an additional paper

Front 116

When is withdraw of representation effective?

Back 116

Upon approval by the director; note revocation is effective upon receipt by the mailroom.

Front 117

When does the patent office assume that somebody has power of attorney?

Back 117

When a registered agent signs a document with a registration number. The PTO assumes that a valid POA exists, and will be submitted.

Front 118

What is the requirement for filing a copy of an assignment?

Back 118

It must be on the right size paper - A4 - 8.5 x 11.

Front 119

Do provisional applications get a foreign filing licenses?

Back 119

Yes - w/i 6 moths of the granting of the provisional

Front 120

How do you fix inventorship in a pending application?

Back 120

Through the Application Data Sheet - and pay the fee.

Front 121

What MUST a person due to be listed as an inventor?

Back 121

Contribute to the CONCEPTION of the invention described in a claim. Reducing to practice is not enough.

Front 122

Does abandoning an application result in abandoning the invention under 102(c)?

Back 122

No - one may abandon an application, but not the invention. To abandon an invention, the inventor must disparage the invention.

Front 123

Who has a duty to disclose?

Back 123

Inventors and attorneys who have a substantive role in the prosecution of the invention. (possibly including foreign patent lawyers)

Front 124

What are the necessary minimum components to get a filing date on a non-provisional application?

Back 124

(1) a specification

(2) at least one claim (for regular non-provisional applications)

(3) any required drawings

The oath or declaration or substitute statement or ADS can be filed later with the fee.

The application need not be in English, a translation may be filed later

Front 125

What is the general rule regarding whether a fee is owed, and what is the citation for the list of fee-free events regarding correction of patents?

Back 125

In general a fee is requires unless the paper is necessary to correct a mistake of the Patent Office.

MPEP 509

Front 126

For how long may one request a refund for overpayment?

Back 126

Two years

Front 127

What does the certificate of mailing establish?

Back 127

The filing date of the paper on the day deposited in the mail box, otherwise the filing date is the date of receipt by the patent office.

Front 128

What four things can a certificate of mailing not establish a filing date for?

Back 128

(1) New patent applications (either 1.53(b) or 1.53(d) including CIPs, Continuations, and Divisions)

(2) Papers filed in an interference which are directed to be filed by hand

(3) Agreements settling an interference; and

(4) Any PCT papers

Front 129

What is the only form that requires a wet signature when filing by paper?

Back 129

Credit Card Authorization Charge form -- Note: You can file this electronically without the the wet signature - it's only when filing paper

Front 130

Can you get a filing date for a paper via EFT after 9:00pm on the west coast?

Back 130

No - EFS is tied to eastern standard time. So drop it in express mail.

Front 131

Who qualifies as a small entity?

Back 131

(1) independent inventor who is not under an obligation to assign to any other non-small entity

(2) non-profits

(3) Small businesses - (< 500 employees - including part time and temporary)

Front 132

Who qualifies as a micro entity?

Back 132

(0) all requirements of small entity status plus:

(1) not more than 4 personal application

(2) household income not more than 3x median income in last calendar year (about $150,000); or

(3) employees of institutions of higher education (or assigned to a higher education)

Front 133

What fees are not reduced by small or micro entity status?

Back 133

(1) Petition and processing fees

(2) Document supply fees

(3) Certificate of correction fees

(4) Requests for reexamination

(5) International Fees (PCT)

Front 134

What is the filing date for express mail?

Back 134

The "date-in" -- note -- use express mail for any new applications and when a certificate of mailing is not permitted

Front 135

When is it okay to change an application but not submit an updated inventor oath?

Back 135

Only when making "minor changes"

Front 136

What must an original oath or declaration contain?

Back 136

The inventor(s) believe:

(1) they are the true original and first inventors

(2) they have reviewed and understand that contents of the application

(3) they acknowledge their duty to disclose all material information

Front 137

What defines the limit of a means plus function claim?

Back 137

The specification - so those elements which are described in the specification and their equivalents are included.

Front 138

What is a Jepson claim?

Back 138

A claim which includes a preamble describing what is old, a transition such as "the improvement comprising" and the body describing the improvement.

Front 139

What must be filed with an IDS filed within three months of the application filing date or before first action?

Back 139

Only the IDS need filing, no fee

Front 140

What must be filed with an IDS filed after the first action but before final action or allowance?

Back 140

Either the "no prior knowledge" statement or fee must be paid

Front 141

What must be filed with an IDS filed after final action, close of prosecution, or allowance?

Back 141

"no knowledge" Statement and Fee required

Front 142

What must the "no knowledge" statement possibly filed with an IDS contain?

Back 142

Either (1) the item disclosed was cited for the first time in a communication from a foreign patent office less than three months before the date of the IDS; or (2) No item was citied in a communication from a foreign office and no item was known by anybody having a duty to disclose more than three months before the IDS.

Front 143

What three things must the IDS contain?

Back 143

(1) List of references (with patent number...)

(2) Copy of the references

(3) Explanation

(list, copy, explain not translate)

Front 144

May a expert retained to help respond to an office action have a duty to disclose?

Back 144

Yes - everyone associated with the prosecution has a duty to disclose

Front 145

What must one do when material prior art is discovered after the application has been allowed and the issue fee paid?

Back 145

Seek withdraw of the application from issue so the art may be considered in a continuation application.

Front 146

What are the six situations when an automatic extension cannot be granted?

Back 146

(1) Where the Office Action says so

(2) A reply brief (responsive to an Examiner's Answer in an Appeal to the Board of Patent Appeals and Inferences)

(3) A request for an oral hearing in an Appeal

(4) Responding to a decision of the Board

(5) Anything in an interference

(6) Due dates in reexaminations cannot be automatically extended and any extension for cause request in a reexamination must be filed before that date due.

Front 147

What due dates for the following cannot be extended even for cause?

Back 147

(1) IDSs

(2) Any due date set by statute (such as the six-month absolute deadline for replying to Official Actions)

(3) The issue fee can now, by statute, be paid late upon a proper showing, but it cannot be extended

(4) The three-month deadline to obtain a refund for a fee paid as a large entity

(5) Fiilng formal drawings at time Issue fee is paid

Front 148

May automatic extensions of time apply retroactively?

Back 148

Yes.

Front 149

May an extension of time for cause apply retroactively?

Back 149

No - they must be asked for in advance, and are not available if an automatic extension of time is also available.

Front 150

May a design patent be prior art to a utility patent?

Back 150

Yes.

Front 151

What are the three types of restriction requirements?

Back 151

(1) Independent - cup and book

(2) Distinct - device and method for use

(3) Too many claims - genus - then representative / "reasonable number" of species

Front 152

What does it mean to traverse a restriction?

Back 152

You are challenging the propriety of the restriction requirement.

Front 153

(1) What triggers the deadline for submitting the appeal brief?

(2) When is the Appeal Brief due after final rejection?

(3) How long is the deadline extendable?

Back 153

See 37 C.F.R. 41.37(a). The Appeal Brief is due two months after the Office receives the Notice of Appeal, (unless express mail, then date sent).

The filing of the Appeal Brief is fully extendable. This means you have two months plus the 5 months of automatic extension available.

Front 154

what is the magic date for 20 year term from filing date instead of 17 years from issue?

Back 154

June 8, 1995.

Front 155

What MUST be true regarding the status of the potential parent application to file a RCE?

Back 155

Prosecution has to be closed - i.e. after a final rejection.

Front 156

Is a new oath required when filing a continuation application with no new matter?

Back 156

No.

Front 157

Does a statutory invention registration have a 102(e) date?

Back 157

Yes.

Front 158

Are SIRs possible after AIA?

Back 158

No.

Front 159

Do design applications publish?

Back 159

No

Front 160

What are the requirements to request an application not publish?

Back 160

(1) The application has not been, and will not be filed in another country that requires publication after 18 months

(2) The request to not publish is made at filing

(3) The request must included a certification and be conspicuous

Front 161

How do you rescind a non-publication request?

Back 161

Within 45 days, you must notify the PTO and say which country you are filing in, or the application is abandoned.

Front 162

What periods are automatically extendable in the context of appeals?

Back 162

Only the time for filing an appeal brief after giving notice of the appeal. All the remaining time limits may only be extended "for cause".

Front 163

What are your basic two options when the PTAB rejects a claim on appeal with a new rejection?

Back 163

(1) Reopen prosecution

(2) Request reconsideration

Front 164

What are an examiner's only options after reopening examination following a PTAB's rejection based on a "new rejection" once the applicant has filed an amendment?

Back 164

Allow or reject the claims. The examiner cannot file supplemental briefings or whatever...

Front 165

What is the window for allowing up to 5 years of added patent term for applications delayed due to interferences, secrecy orders, successful PTAB appeals, and appeals to Federal Courts?

Back 165

June 8, 1995 - May 29, 2000.

Front 166

What is the magic date for patents to qualify for the patent term adjustment act?

Back 166

May 29, 2000. - Applications filed on or after this day may qualify for extended terms.

Front 167

What are the three categories for which a patent term may be extended?

Back 167

(1) Administrative delays

(2) Total pendency greater than 3 years

(3) Delays due to Interferences, Secrecy Orders, and successful appeals

Front 168

What are the administrative delays for which a patent term may be extended?

Back 168

More than 14 monthts from inital filng to: (a) Notice of allowance, (b) first office action, (c) written restriction requirement, or (d) examiner's request for information

more than 4 months to reply to an amendment or appeal

> 4 months to act on decision by CAFC or PTAB

>4 months to print patent after issue fee paid and all outstanding issues resolved

14/4/4/4 rule

Front 169

What qualifies as a successful appeal to qualify under the patent term extension act?

Back 169

There must be a reversal of ALL rejections of at least one claim.

Front 170

What are the five necessary elements of a reissue application

Back 170

(1) An offer to surrender the original

(2) Written consent of assignee if inventors signed the oath, (not required is substitute)

(3) Edited copy of original patent

(4) fee

(5) reissue oath

Front 171

For how long may a broadening reissue be filed?

Back 171

Two years starting on the original patent issue date.

Front 172

Whats the term of a design patent?

Back 172

14 years

Front 173

May offensive designs be patented as design patents?

Back 173

No - they are not ornamental

Front 174

May you submit photographs for a design patent?

Back 174

Yes

Front 175

What are the requirements to submit drawings in color for design patents?

Back 175

(1) Petition explaining why the colors are necessary

(2) fee

(3) Three sets of color drawings or photographs

(4) The statement that the application contains color drawings in the specification

Front 176

What two "plants" are not included in plant patents?

Back 176

(1) Bacteria

(2) tuber propagated - potatoes

Front 177

What two requirements are necessary to get a plant patent?

Back 177

(1) the plant must be either invented or discovered in a cultivated state; and

(2) you must have asexually reproduced

Front 178

How can an examiner reject a design patent for obviousness?

Back 178

With an in re Rosen reference. Essentially a reference showing the design plus some minor changes.

Front 179

Can you patent a Jerusalem artichoke?

Back 179

No. No tubers. (turnip, potato)

Front 180

Must you submit color drawings for a plant patent?

Back 180

No, unless color is a part of the distinguishing characteristics. So essentially yes - and you must submit two copied.

Front 181

Who may file an international application at the U.S. receiving office?

Back 181

Any national or resident

Front 182

What must one do to request the optional preliminary examination stage of an International application?

Back 182

Make a demand for examination by the later of three months from issuance of the international search report and the written opinion of the ISA, or 22 months from the priority date

Front 183

What must an applicant do to enter the national stage in the U.S.?

Back 183

FOoT Rule- Fee, Oath, Translation

(1) Pay the required national fees

(2) Furnish a translation of the international application

(3) Submit the required oath or declaration

Front 184

What is the deadline to enter the national state in the US, and may the deadline be extended?

Back 184

30-months from the priority date; the deadline is not extendable. Even if a proper demand for optional examination is made.

Front 185

What are the six elements of an international application?

Back 185

(1) A request (to treat as an International App)

(2) Designation of at least one member

(3) Name of the applicant

(4) Specification, claim, and drawing (if necessary)

(5) an Abstract

(6) Fee $$

NB: Abstract and Fee may be provided later, only the first four are required to get a filing date

Front 186

Are international applications subject to restriction requirements?

Back 186

No. But the applications must adhere to a "unity of invention" requirement which requires a technical relationship between elements

Front 187

Are amendments permitted in International Applications?

Back 187

Yes - once, to CLAIMS only after receiving the international search reports and written opinion. Again, after the optional preliminary search to Claims, spec, and drawings

Front 188

How does one enter the U.S. national stage from an international application?

Back 188

(1) Submit a copy of the International Application (or merely a reference - reference filing) and

(2) Fee

(*) All w/i 30 days

Oath and translation may be filed later with additional fee

Front 189

When is a fee NOT due for third party submissions?

Back 189

When the submission contains three or fewer references and is the first filed by the party.

Front 190

What is the main difference between protest and third party submissions?

Back 190

Publication - protests happen before, and third party submissions happen after

Front 191

What determines whether an applicant can file a 1.130 affidavit instead of filing for derivation proceeding to overcome an earlier application of a deriver?

Back 191

The critical question turns to whether the claims submitted are the “same or substantially the same” as a claim of an earlier application.

If the claims submitted are the same or substantially the same then the applicant is required to pursue a derivation proceeding. Otherwise a 1.130 affidavit is sufficient.

Front 192

Under the AIA, an application may be rejected as obvious based on what time?

Back 192

The effective filing date of the application.

Note: pre-AIA the Office used the effective filing date as a proxy for the invention date

Front 193

What must a nonprovisional application contain to get a filing date?

Back 193

Specification only. Under PLTIA -- claims not necessary, but application will be deemed abandoned if a claim is not filed timely after the director's request.

NB: Only filed after December 18, 2013

Front 194

What is the AIA 102(e) rule.

Back 194

AIA 35 U.S.C. 102(d) provides that if the U.S. patent, U.S. patent application publication, or WIPO-published application claims priority to one or more prior-filed foreign or international applications under 35 U.S.C. 119 or 365, the patent or published application was effectively filed on the filing date of the earliest such application that describes the subject matter.

Front 195

May a non-provisional claim priority to a provisional application filed more than 12 months earlier?

Back 195

Yes - under the PLTIA a non-provisional application can get the benefit of an extra 2 months for unintentional deal. -- Note 2012+

Front 196

What is the latest date an inventor can file for a derivation proceeding?

Back 196

One year after publication of a claim that is the same or substantially the same.

Front 197

What date does the PLITA become effective?

Back 197

December 18, 2013

Front 198

What is the standard of evidence for filing a derivation proceeding?

Back 198

Petitioner must have Substantial Evidence

Front 199

What must a petitioner prove to demonstrate derivation?

Back 199

(1) An inventor's earlier conception, and (2) communication to the deriver

Front 200

To be awarded a filing date for a derivation must the fee be included?

Back 200

Yes - the fee MUST be included to get a filing date

Front 201

When is an application for withdraw of representation effective?

Back 201

Upon approval of the director.

Front 202

May an application filed in a foreign language get a priority date in the U.S.?

Back 202

Yes - think last section Japanese application - just submit and put translation in later

Front 203

Can you use first class mail with sufficient postage to timely file a continuation?

Back 203

No. It's an application, so it requires express mail.

Front 204

What rule describes the contents of the inventor's oath?

Back 204

1.63 - note there is a AIA and pre-AIA requirement.

Front 205

When calculating the number of claims for fee purposes, how many times is a claim that properly depends from a multiple dependent claim counted?

Back 205

Equal to the number of times the multiple dependent claim is counted.

Front 206

What is the rule number for duty of disclosure?

Back 206

1.56

Front 207

How may individuals other than the inventor and patent agent/attorney that have a duty to disclose discharge that duty?

Back 207

They may disclose the information to the inventor, agent, or attorney. 1.56(d)

Front 208

Must a claim for priority to an earlier filing date in a foreign country under 35 U.S.C. 119(a)-(d) be made in a reissue, even though such a claim was previously made in the application for the original patent to be reissued?

Back 208

Yes. MPEP 1417.

Front 209

What may broken lines on a design patent drawing indicate?

Back 209

Structure that is not part of the claimed design, but is considered necessary to show the environment in which the article of manufacture is used.

Front 210

May priority for an PCT application be based on an issued patent?

Back 210

Yes - Priority claims in PCT applications are governed by Article 4 ¶ C(1) of the Stockholm Act of the Paris Convention for Protection of Industrial Property. See PCT Article 8(2)(a). Priority may be claimed based upon the prior U.S. application even though it has issued as a patent.

Front 211

Recite pre-AIA 102(a).

Back 211

The invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,

Front 212

Recite pre-AIA 102(b).

Back 212

The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

Front 213

Can an application claim priority to a second filed application in a foreign country?

Back 213

Yes - if the second application is in the same country as the first, and the first application is abandoned, withdraw...

35 USC 119(c)

Front 214

What rule states the requirement of an application data sheet?

Back 214

37 C.F.R 1.76.

Front 215

What is the time requirement for filing a transition statement when a non-provisional application has some claims seeking priority back to the non-AIA application?

Back 215

4 months after filing the non-provisional application, or 16 months after the filing date which the application claims priority.

Front 216

When may one submit a substitute specification?

Back 216

A substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by a statement that the substitute specification includes no new matter.

Front 217

Does one have a right to an interview after a final rejection?

Back 217

No.

Front 218

When is the appeal brief due?

Back 218

The Appeal Brief is due two months after the Office receives the Notice of Appeal, and the filing of the Appeal Brief is fully extendable. This means you have two months plus the 5 months of automatic extension available.

Front 219

Who may sign a written declaration of abandonment?

Back 219

Inventor or agent. 37 CFR 1.138 and 1.33(b)

Front 220

Must a foreign patent issue for a U.S. application to be eligible for the patent prosecution highway?

Back 220

No - the applicant must have already received an indication of allowable subject matter in a related patent application from a partnering PPH office.

Front 221

What it the relevance of the priority date for eligibility in the PPH?

Back 221

The application with allowable subject matter from a partnering PPH office must share the common earliest date of priority

Front 222

May an application be moved into the PPH after examination has started?

Back 222

Not really - examination cannot have started in the U.S. application prior to entry into the PPH. This requirement, however, relates to substantive examination.

Front 223

Is a notice to file missing parts considered substantive examination for eligibility for the PPH?

Back 223

No. If you have only received a notice to file missing parts, this would not be considered as substantive examination

Front 224

What are the requirement for an application to become eligible to participate in the PPH?

Back 224

(1) A partnering PPH office indicates of allowability.

(2) The U.S. and foreign application share the priority date; and

(3) Substantive examination has not yet begun. (no action on the merits)

Front 225

Is a continuation application eligible for the PPH?

Back 225

Yes - assuming all the requirements for the PPH are met. Continuations are not barred.

Front 226

Can the notice of allowable subject matter necessary to qualify for the PPH come from the International Preliminary Examination report?

Back 226

Yes - The notice of allowability that can support entry into the PPH can come from “PCT work product” or “international work product.” This includes a written opinion of the International Search Authority, a written opinion of the International Preliminary Examination Authority, or an International Preliminary Examination Report that indicates at least one claim is allowable.

Front 227

What happens when an applicant for PPH fails to meet all the requirements?

Back 227

The applicant will be notified and the defects in the request will be identified. The applicant will be given one opportunity to perfect the request in a renewed request for participation.

Action on the application by the USPTO will NOT be suspended (37 CFR 1.103) awaiting a renewed request for participation.

Front 228

What happens if an application for entry into the PPH is denied and while the applicant is attempting to perfect the application, substantive examination of the patent begins?

Back 228

If the application is picked up for examination after the applicant has been notified of the defects in the request, any renewed request will be dismissed.

Front 229

May one modify claims after an application has entered the PPH?

Back 229

Yes - The applicant is required to submit, along with any amendment, a statement certifying that the amended or newly added claims sufficiently correspond to the allowable claims in the OEE.

Front 230

When do PCT appilcations publish?

Back 230

18-months from earliest priority date

Front 231

What are the two ways to correct foreign priority for a continuation application, where the request for priority was not made, but the parent application correctly established foreign priority?

Back 231

(1) File a reissue

(2) Certificate of Correction with a Petition and fee for Late Assertion of Priority.

Front 232

What is the scope of prior art for ex parte reexams?

Back 232

Patents and printed publications

Front 233

How can one submit references in an issued patent without going all the way to an ex parte reexam? (i.e. have prior art on standby if somebody else wants to pay for the reexam)

Back 233

File a Citation of Prior Art in the file of the patent and serve a copy on the patent owner.

Front 234

What is the maximum number of months a design application may be filed and claim priority to a foreign application?

Back 234

Eight months - usually six, but PITLA adds two months for unintentional delay.

Front 235

Can you petition the commissioner or file an appeal to the PTAB if the examiner denies an interview after final rejection?

Back 235

Nope. File a continuation or RCE.

Front 236

What happens if you don't file your reply brief within two months?

Back 236

The PTAB hears the appeal without the brief... duh.

Front 237

May one request prioritized examination in an RCE?

Back 237

Yes.

Front 238

What is the threshold number of claims for prioritized examination?

Back 238

30 (4 independent)

Front 239

What happens if an amendment is filed adding claims which exceed the total number of claims permitted in prioritized examination?

Back 239

The examination is moved to the regular docket.

Front 240

May one ask for an extension of time for a response to an application in prioritized examination?

Back 240

No. Missing a shortened statutory period results in the application being moved to the regular docket.

Front 241

May one request prioritized examination for a design application?

Back 241

No.

Front 242

What is the primary purpose of filing a petition under 1.181 in response to a new ground of rejection in an examiner's answer?

Back 242

To enable one to reopen prosecution - so if one merely wants to argue against the new grounds, then one may simply file a reply brief w/i 2 months.

Front 243

When the the PTAB take jurisdiction of an appeal?

Back 243

Upon the filing of a Reply Brief or the expiration of the time period for such a filing.

Front 244

What rule covers third party submissions of prior art?

Back 244

37 CFR 1.290

Front 245

Does the PTO extend the deadline to file a compliant third party submission of prior art, if a timely submission of prior are was non-compliant?

Back 245

No. The office will say it's not compliant, but will not extend the deadline beyond the rule.

Front 246

May one submit trade-secret information as a third-party submission?

Back 246

No. Documents that are subject to a court-imposed protective or secrecy order, documents that include trade secret information, unpublished internal documents, or other non-patent documents that do not qualify as publications should not be submitted for consideration and entry under § 1.290(a)."

Front 247

Must a third party submission be filed "on or prior to" the statutory period, or "prior to" the expiration of the statutory period?

Back 247

Prior to -- so the strange earlier of the date of notice of the allowance, or [ later of publication + 6 months or first office action] is the deadline, and you must go earlier than that.

Front 248

Must a registered patent attorney files a third party submission of prior art?

Back 248

Nope, anybody can.

Front 249

Will third-party submissions of prior art be considered when determining whether to start a reexamination?

Back 249

No. 37 CFR 1.515(a)

Front 250

What must an application (both non-provisional and provisional) made by a person other than the inventor contain?

Back 250

An application data sheet specifying the assignee, the person to whom the inventor is under an obligation to assign the invention, or a person who otherwise shows sufficient proprietary interest in the matter

Front 251

Who may request a supplemental examination?

Back 251

The patent owner (not just an exclusive licensee)

Front 252

What two AIA procedures use the same institution standard?

Back 252

Post-grant review and CBM.

Front 253

How is the estoppel of an IPR or PGR applied, on a per patent or per claim basis?

Back 253

Per claim

Front 254

What is the standard to institute a PGR?

Back 254

The Director may not authorize a post-grant review to be instituted unless the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.

Front 255

What is the standard to institute a IPR?

Back 255

reasonable likelihood that the petitioner would prevail

Front 256

What is the standard to institute a CBM?

Back 256

Same as PGR - more likely than not that at least 1 of the claims challenged in the petition is unpatentable.

Front 257

When does a foreign application become prior art under AIA 102 when a U.S. application asserts priority to the application?

Back 257

When a US patent, a published US patent application, or WIPO publication of a PCT application claims priority to a foreign filing, the date the reference will be prior art is as of the foreign filing date.

Front 258

Does an interference or derivation proceeding occur between two applications of identical claims where the earlier was filed under pre-AIA and the later was AIA?

Back 258

Interference - so conception and diligence matter

Front 259

What two articles in the PCT permit amendments?

Back 259

Art. 19 and 34.

Front 260

Can claims form the basis of a new matter rejection?

Back 260

No. unsupported claims "should not be rejected or objected to on the ground of new matter. As framed by the court in In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981), the concept of new matter is properly employed as a basis for objection to amendments to the abstract, specification or drawings attempting to add new disclosure to that originally presented."

Front 261

Do the Certificate of Mailing procedure applyto papers mailed in a foreign country?

Back 261

No.

Front 262

May you use a certification of correction to request and perfect a claim of foreign priority prior to issuance of a patent in a continuation?

Back 262

No, you can't both request and perfect the claim to foreign priority. MPEP § 201.16.

Front 263

Can you fax a CPA?

Back 263

Yes

Front 264

What is the MPEP section regrading adding computer code, sequence listings, and large table on CD?

Back 264

608.05