Patent Bar Exam

Front 1

What is the priority date for a PCT application?

Back 1

earliest filing date (under article 8), if not the filing date of the international app

Front 2

How long after an app is filed must a PCT app be filed to claim priority?

Back 2

12 months

Front 3

What is the PCT time limit for search reports?

Back 3

Later of: 9 months after filing or 3 months after receipt of search copy

Front 4

When are PCT apps published?

Back 4

18 months after priority date

Front 5

When is the Demand deadline in a PCT app?

Back 5

Later of: 3 months after applicant receives search report or 22 months after priority date

Front 6

When are national stage requirements due?

Back 6

30 months from priority date if no demand has been filed

Front 7

When must amendments be made in a PCT app?

Back 7

Within 2 months from the date of transmitall of the international search report

Front 8

Deadline for filing RCE?

Back 8

Earliest of:
 Payment of issue fee (unless petition granted)
 Abandonment (if no issue fee is paid – 3 months)
 Filing an appeal with Court

Front 9

When and how can you correct inventorship?

Back 9

o Amendment through CFR 1.48:
 An oath or declaration by each inventor
 Written consent of assignees of original inventor
 Does not apply to reissues
 Not required for typos, small issues, the wrong inventor was not involved in allowable claims, cover sheet has correct names
o OR File a Continuing Application

Front 10

What is required for a complete provisional application?

Back 10

o Specification (filing date)
 Description
o Coversheet/ADS
o Drawings, when necessary (filing date)
o Filing Fee
o Not Needed: claims or oath

Front 11

What is required for a complete provisional application?

Back 11

o Specification (filing date)
 Description
o Coversheet/ADS
o Drawings, when necessary (filing date)
o Filing Fee
o Not Needed: claims or oath

Front 12

How is a continuation application filed?

Back 12

o Filed before original app is abandoned or issued
o A copy of oath/declaration (as long as no new inventors and no new matter added)
o New specification and new drawings (new oath/dec needed if new inventors)

Front 13

What are the requirements for claiming priority under 35 USC 119(e)?

Back 13

o CFR 1.78(a)(4)-(6)
o Prior app must be provisional
o App must be filed w/in 12 months of the filing date of the provisional app
o Design apps cant claim benefit
o Discloses same invention
o At least one common inventor
o Must contain a reference to prior filed application & its filing date
 must provide this reference w/in later of 4 months from filing date or 16 months from reference date (does not apply to apps prior to November 2000)
 not extendable and will lose benefit of priority; but can petition to accept with fee if late
o US apps must include reference in first sentence of spec or an ADS
o provisional must be translated to English

Front 14

What are the requirements for claiming priority under 35 USC 120?

Back 14

o CFR 1.78(a)(1)-(3)
o Prior app must be co-pending non-provisional, international, or CPA
o Discloses same invention
o At least one common inventor
o Must contain a reference to provisional application & its filing date
 must provide this reference w/in later of 4 months from filing date or 16 months from provisional filing date (does not apply to design)
 not extendable and will lose benefit of priority; but can petition to accept with fee if late
 US apps must include reference in first sentence of spec or an ADS

Front 15

What are the requirements for claiming priority under 35 USC 119(a)-(f)?

Back 15

o Foreign app filed in WTO country
o Same inventor or assigns
o App must be filed within 12 months of foreign app
o Priority must be claimed within later of 4 months or 16 months from filing of foreign filing date
 not extendable and will lose benefit of priority; but can petition to accept with fee if late
o Certified copy of foreign app must be provided prior to issue of app(except certain circumstances, e.g. interference)
o Must be for same invention
o translation usually not required

Front 16

Which documents are not permitted by fax?

Back 16

o New apps
o Papers requiring signatures
o Reexamination requests
o Color drawings
o Correspondence subject to secrecy

Front 17

What are requirements for complete nonprovisional app?

Back 17

o Specification, containing a description (filing date)
o One claim (filing date)
o Oath/declaration
o Drawings, if necessary (filing date)
o Filing fee

Front 18

When must a CPA be filed by?

Back 18

o Before:
 Issue fee
 Abandonment
 Termination of proceedings

Front 19

When there are inconsistencies between ADS and Oath/declaration which governs?

Back 19

Later filed. Except oath declaration rule for naming inventors or citizenship

Front 20

What is “essential material”?

Back 20

Material necessary to provide an enabling disclosure; describe claimed invention; or describe best mode

Front 21

What is “non-essential material?”

Back 21

Matter related to background of invention

Front 22

What can be used to incorporate by reference non-essential material?

Back 22

o Any patent or published patent application
o Unpublished US patent applications
o Non patent literatures
o Copies must be presented

Front 23

What can be used to incorporate by reference essential material?

Back 23

o US Patents
o Published US patent applications
o Copies must be presented

Front 24

When can an IDS be filed?

Back 24

o No fee - within later of 3 months of filing or before first office action
o If not fee and statement required that just found out about information

Front 25

What is patentable?

Back 25

o Process
o Machine
o Manufacture
o Composition of matter
o Improvements thereof

Front 26

When is a final rejection on a first action proper?

Back 26

o Based on a continuing or substitute application
 Drawn to same invention and claims; and
 Would have been properly finally rejected in the previous application

Front 27

Is a final rejection is premature, what can you do?

Back 27

Petition to examiner

Front 28

Deadline for reply to final rejection?

Back 28

• Deadline for reply to final rejection?
3 moths from date of final rejection or within 6 months after extension

Front 29

What is the certificate of mailing rule number?

Back 29

CFR 1.8

Front 30

When can an RCE be filed?

Back 30

o After
 Notice of allowance
 Last office action
 Appeal (during)
 Prosecution must be closed
o Before
 Payment of issue fee
 Abandonment
 Or appeal to Court

Front 31

What must be filed with an RCE?

Back 31

o Submission:
 IDS
 Amendments
 New arguments
 New evidence of patentability
o Fee

Front 32

What is the prior art date for declassified material?

Back 32

o date of release following declassification
o 102(a) – printing date

Front 33

What is the maximum statutory period for reply to an office action?

Back 33

6 months

Front 34

When can an applicant file an extension and for how long?

Back 34

o When a time period is set to expire except:
 Where prohibited by statute, rule, or by office action.
o 5 month max

Front 35

When is amendment allowed after final rejection?

Back 35

o To cancel claim
o Adopt examiner suggestion
o Remove issue from appeal

Front 36

What can be appealed to Board of Patent Appeals and Interferences?

Back 36

o Rejections
o Not objections

Front 37

When is notice of appeal filed?

Back 37

o After two rejections
o Within 6 months

Front 38

When is appeal brief due?

Back 38

2 months after notice of appeal is filed

Front 39

What is the deadline to respond to an examiner’s answer?

Back 39

2 months

Front 40

When can amendments made after a final rejection, but before filing of notice of appeal be admitted?

Back 40

o To cancel claims
o To comply with any requirement set forth a previous action
o To present claims in a better for consideration
o Or to amend specification or claims based on a good reason not earlier presented

Front 41

When can amendments made after filing notice of appeal, but prior to filing a brief?

Back 41

To respond to a new ground of rejection and reopening prosecution for some reason

Front 42

When can amendments be made after filing of brief?

Back 42

o To cancel claims
o To rewrite claims in independent form

Front 43

When can amendments made after filing notice of appeal, but prior to filing a brief?

Back 43

To respond to a new ground of rejection and reopening prosecution for some reason

Front 44

When can affidavit after final rejection but before filing of notice of appeal be admitted?

Back 44

Upon showing of good reason why not presented earlier

Front 45

What is the deadline for filing a protest?

Back 45

Prior to publication or notice of allowance.

Front 46

When can amendments be made after filing of brief?

Back 46

o To cancel claims
o To rewrite claims in independent form

Front 47

What must protest be filed with?

Back 47

o Listing of patents/publications relied on
o Explanation of relevance
o Copy of patents/publications relied on
o And translation of any pertinent materials

Front 48

When can affidavit after final rejection but before filing of notice of appeal be admitted?

Back 48

Upon showing of good reason why not presented earlier

Front 49

When can a certificate of correction be used?

Back 49

 Where all parties are in agreement
 For failure to make reference to a copending application
 To correct a reference to a prior copending application
 To correct an inventor’s name omission from a patent

Front 50

What is the deadline for filing a protest?

Back 50

Prior to publication or notice of allowance.

Front 51

When must a petition to the Director be filed?

Back 51

2 months from date of maiing of action

Front 52

What must protest be filed with?

Back 52

o Listing of patents/publications relied on
o Explanation of relevance
o Copy of patents/publications relied on
o And translation of any pertinent materials

Front 53

When can a certificate of correction be used?

Back 53

 Where all parties are in agreement
 For failure to make reference to a copending application
 To correct a reference to a prior copending application
 To correct an inventor’s name omission from a patent

Front 54

When must a petition to the Director be filed?

Back 54

2 months from date of maiing of action

Front 55

When is a Certificate of Correction appropriate?

Back 55

- office mistake
- to correct assignee name
- to correct inventors name
- to perfect 119 (a) - (f) dates (claiming benefit to a foreign app)
- to perfet 120 dates (claiming benefit to a original app)