Key Things to Know for the Patent Bar Exam

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Shortcut to Questions reportedly asked in the Patent Bar Exam

Contents

[edit] MPEP 100 Secrecy, Access, National Security, and Foreign Filing

Some questions may deal with foreign filing licenses - and what to do when an application was filed in a foreign country

without notifying the USPTO. Often asked in combination with non-publication request (MPEP 1100)


140 Foreign Filing Licenses
[...]
There are two ways in which permission to file a patent application abroad may be obtained: either a petition for a foreign filing license
may be granted (37 CFR 5.12) or an applicant may wait 6 months after filing a patent application in the USPTO (35 U.S.C. 184) at which
time a license on that subject matter is no longer required as long as no Secrecy Order has been imposed. 37 CFR 5.11(e)(2).
35 U.S.C. 122.
(B)(i) If an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not
be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication
of applications 18 months after filing, the application shall not be published as provided in paragraph (1).
(ii) An applicant may rescind a request made under clause (i) at any time.
(iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral
international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent
and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign
or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application
being regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the notice was unintentional.

[edit] MPEP 200 Types, Cross-Noting, and Status of Application

  • This chapter will provide you with a foundation for many of the other sections in the MPEP.
  • Pay special attention to the section covering different application types.
  • Provisional vs. Nonprovisional
  • Reissue
  • Division
  • C-I-P

[edit] MPEP 300 Ownership and Assignment

Don't be surprised to find more than one question on assignment.

They seem to be mostly concerned about public accessibility of assignment documents.

MPEP 301.01 is a good chapter to read, specifically


MPEP 301.01 Accessibility of Assignment Records
[...]
The Office will not open only certain parts of an assignment document to public inspection.
If such a document contains two or more items, any one of which, if alone, would be open to
such inspection, then the entire document will be open.


Also read MPEP 324 VII. WHEN OWNERSHIP NEED NOT BE ESTABLISHED concerning

documents that can be signed with and without an assignment on record

[edit] MPEP 400 Representative of Inventor or Owner

"Death of Inventor" questions seem to be tested frequently. One should know what happens to the power of attorney and who can sign when the applicant dies. Know what the result is if inventor dies before filing, upon filing, or during prosecution. Know how this changes when the applicant assigned entire interest / partial interest away before dying. Know assignee's right if the inventor's estate wants to control prosecution. One poster on intelproplaw.com: "I can't stress enough the importance of having down pat the interplay between death/assignment/signing/power of attorney/type-of-application (original, continuing, reissue, reexamination (not really a application though))."

37 CFR 1.42. When the inventor is dead.
In case of the death of the inventor, the legal representative (executor, administrator, etc.) of the deceased inventor may make the necessary oath or declaration, and apply for and obtain the patent. Where the inventor dies during the time intervening between the filing of the application and the granting of a patent thereon, the letters patent may be issued to the legal representative upon proper intervention. What happens when two inventors sign a power of attorney and one dies.
409.01 Death of Inventor
Unless a power of attorney is coupled with an interest (i.e., an attorney is assignee or part-assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all powers of attorney in the application have been terminated (but see MPEP § 409.01(f)). See also 37 CFR 1.422.
In 409.01(f) Intervention of Executor Not Compulsory
When a joint inventor of a pro se application dies after filing the application, the living joint inventor(s) must submit proof that the other joint inventor is dead. Upon submission of such proof, only the signatures of the living joint inventors are required on the papers filed with the USPTO if the legal representative of the deceased inventor does not intervene. If the legal representative of the deceased inventor wishes to intervene, the legal representative must submit an oath or declaration in compliance with 37 CFR 1.63 and 1.64 e.g., stating that he or she is the legal representative of the deceased inventor and his or her residence, citizenship and post office address). Once the legal representative of the deceased inventor intervenes in the pro se application, the signatures of the living joint inventors and the legal representative are required on the papers filed with the USPTO.
402.07 Assignee Can Revoke Power of Attorney of Applicant
The assignee of record of the entire interest can revoke the power of attorney of the applicant unless an “irrevocable” right to prosecute the application had been given as in some government owned applications.

[edit] MPEP 500 Receipt and Handling of Mail and Papers

It seems one question asks about user passes, MPEP 510

- or at least is the correct answer in one of the "find the right one" questions.


510 U.S. Patent and Trademark Office Business Hours
[...]
(3) A valid User Pass must be prominently displayed when searching in the TC Facilities.
User Passes are nontransferable and must be surrendered upon request to authorized officials.


Know what correspondence can be transmitted by fax MPEP 502.01, CFR 1.6 and CFR 1.8

[edit] MPEP 600 Parts, Form, and Content of Application

Know that in case of conflicting information between Application Data Sheet and Oath/Declaration the Application Data Sheet wins, except for naming and citizenship of the inventors, in which case the Oath/Declaration wins. (6/5/2007 edit to add that this is true if ADS and oath filed at same time -- otherwise the later filed document controls whether ADS or oath, except for naming and citizenship of inventors -- in which case oath controls MPEP 601.05(d))

608.01(a)
If an application data sheet (37 CFR 1.76) is used, data supplied in the application data sheet need not be provided elsewhere in the application except that the citizenship of each inventor must be provided in the oath or declaration under 37 CFR 1.63 even if this information is provided in the application data sheet **. If there is a discrepancy between the information submitted in an application data sheet and the information submitted elsewhere in the application, the application data sheet will control except for the naming of the inventors and the citizenship of the inventors. See >37 CFR 1.76(d) and< MPEP § 601.05.


Know requirements for filing an Information Disclosure Statement after NOA. (Submit a submission, fee, and 1.97(e) statement)

609 Information Disclosure Statement
Time when IDS is filed 37 CFR 1.97 Requirements
(1)(a)for national applications (not including CPAs), within 3 months of filing or before first Office action on the merits, whichever is later;(b) for national stage applications, within 3 months of entry into national stage or before first Office action on the merits, whichever is later; (c) for RCEs and CPAs before the first Office action on the merits. None (IDS will be considered).
(2) After (1) but before final action, notice of allowance, or Quayle action 1.97(e) statement or 1.17(p) fee.
(3) After (2) and before (or with) payment of issue fee. 1.97(e) statement, and 1.17(p) fee.
(4) After payment of issue fee. IDS will not be considered (in absence of successful petition to withdraw from issue under 37 CFR 1.313).


Know the rules about the "background of the invention" section of the spec.

608.01(c) Background of the Invention
The Background of the Invention ordinarily comprises two parts:
(1) Field of the Invention: A statement of the field of art to which the invention pertains. This statement may include a paraphrasing of the applicable U.S. patent classification definitions. The statement should be directed to the subject matter of the claimed invention.
(2) Description of the related art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98: A paragraph(s) describing to the extent practical the state of the prior art or other information disclosed known to the applicant, including references to specific prior art or other information where appropriate. Where applicable, the problems involved in the prior art or other information disclosed which are solved by the applicant’s invention should be indicated. See also MPEP § 608.01(a), § 608.01(p) and § 707.05(b).

Know there is no minimum age to sign the oath or declaration (see 37 CFR 1.63)

what else

[edit] MPEP 700 Examination of Applications

There are several questions on prior art. One dealt with declassified material (prima facie case established

even if only under limited distribution).


707.05(f) Effective Dates of Declassified Printed Matter …
In the use of any of the above noted material as an anticipatory publication, the date of release following
declassification is the effective date of publication within the meaning of the statute. For the purpose of
anticipation predicated upon prior knowledge under 35 U.S.C. 102(a) the above noted declassified material may
be taken as prima facie evidence of such prior knowledge as of its printing date even though such material
was classified at that time. When so used the material does not constitute an absolute statutory bar and its
printing date may be antedated by an affidavit or declaration under 37 CFR 1.131.


Know when an RCE can be used and when not.


706.07(h) Request for Continued Examination (RCE) Practice
[...]
I. CONDITIONS FOR FILING AN RCE
The provisions of 37 CFR 1.114 apply to utility or plant applications filed under 35 U.S.C. 111(a) on or
after June 8, 1995, or international applications filed under 35 U.S.C. 363 on or after June 8, 1995.
The RCE provisions of 37 CFR 1.114 do not apply to:
(A) a provisional application;
(B) an application for a utility or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995;
(C) an international application filed under 35 U.S.C. 363 before June 8, 1995;
(D) an application for a design patent; or
(E) a patent under reexamination.


See 37 CFR 1.114(e).
An applicant may obtain continued examination of an application by filing a request for continued examination
(see form PTO/SB/30), a submission and the fee set forth in 37 CFR 1.17(e) prior to the earliest of:
(A) payment of the issue fee (unless a petition under 37 CFR 1.313 is granted);
(B) abandonment of the application; or
(C) the filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit
or the commencement of a civil action (unless the appeal or civil action is terminated).


Know that a 1.131 declaration cannot be used to overcome a statutory bar.

You can't antedate using 131 if the ref is a patent that claims the same invention.


715 Swearing Back of Reference - Affidavit or Declaration Under 37 CFR 1.131 [R-3]
[...]
II. SITUATIONS WHERE 37 CFR 1.131 AFFIDAVITS OR DECLARATIONS ARE INAPPROPRIATE
An affidavit or declaration under 37 CFR 1.131 is not appropriate in the following situations:
(A) Where the reference publication date is more than 1 year prior to applicant’s or patent owner’s
effective filing date. Such a reference is a “statutory bar” under 35 U.S.C. 102(b) as referenced in
37 CFR 1.131(a)(2). A reference that only qualifies as prior art under 35 U.S.C. 102(a) or (e) is
not a “statutory bar.”
(B) Where the reference U.S. patent or U.S. patent application publication claims the same patentable
invention. See MPEP § 715.05 for a discussion of “same patentable invention” and MPEP *>Chapter 2300<.
Where the reference patent and the application or patent under reexamination are commonly owned, and
the inventions defined by the claims in the application or patent under reexamination and by the claims
in the patent are not identical but are not patentably distinct, a terminal disclaimer and an affidavit
or declaration under 37 CFR 1.130 may be used to overcome a rejection under 35 U.S.C. 103. See MPEP § 718.


You can't use 103(c) exception if the 102(e) ref can be used under other 102s.

706.02(l)(1) Rejections Under 35 U.S.C. 102(e)/103; 35 U.S.C. 103(c)
35 U.S.C. 103(c) applies only to prior art usable in an obviousness rejection under 35 U.S.C. 103.
Subject matter that qualifies as anticipatory prior art under 35 U.S.C. 102 ** is not affected, and
may still be used to reject claims as being anticipated. >In addition, double patenting rejections,
based on subject matter now disqualified as prior art in amended 35 U.S.C. 103(c), should still be
made as appropriate. See 37 CFR 1.78(c) and MPEP § 804.<


Know how to overcome a 102 rejection - and know that nonanalogous art or teaching away are irrelevant

for a 102 rejection (they matter for a 103 rejection only).

706.02(b) Overcoming a 35 U.S.C. 102 Rejection Based on a Printed Publication or Patent [R-2]
A rejection based on 35 U.S.C. 102(b) can be overcome by:
(A) Persuasively arguing that the claims are patentably distinguishable from the prior art;
(B) Amending the claims to patentably distinguish over the prior art; *
(C) Perfecting priority under 35 U.S.C. 120 [...]
(D) Perfecting priority claim under 35 U.S.C. 119(e) [...]


Know that there is a little wiggle room with the 1 year statutory period for 102(b) if publication is

published on Sat Sun or holiday -- application must be filed on the Monday, or day after the holiday:


MPEP 706.02(a)
Where the last day of the year dated from the date of publication falls on a Saturday, Sunday or
Federal holiday, the publication is not a statutory bar under 35 U.S.C. 102(b) if the application was
filed on the next succeeding business day.


One question refers to the examiner's ability to require information from the applicant,

MPEP 704.10 Requirements for Information. (If practicioner or applicant has no knowledge regarding

requested information, it is a sufficient reply to say so).

[edit] MPEP 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting

Restriction Requirement - Linking claim questions.


809.03 Linking Claims
There are a number of situations which arise in which an application has claims to two or more properly divisible inventions,
so that a requirement to restrict the claims of the application to one would be proper, but presented in the same case are
one or more claims (generally called “linking” claims) inseparable therefrom and thus linking together the otherwise divisible inventions.

[edit] MPEP 900 Prior Art, Classification, Search

  • 901.01 Canceled Matter in U.S. Patent Files
  • 901.02 Abandoned Applications
  • 901.03 Pending Applications
  • 901.04 U.S. Patents
  • 901.05 Foreign Patent Documents
  • 901.06 Nonpatent Publications
  • Most of the information regarding prior art (i.e., 102) is contained in MPEP 2100.

[edit] MPEP 1000 Matters Decided by Various U.S. Patent and Trademark Office Officials

37 CFR 1.181 Petition to the Commissioner.

(a) Petition may be taken to the Commissioner:

(1) From any action or requirement of any examiner in the ex parte prosecution of an application, or in ex parte or inter partes prosecution of a reexamination proceeding which is not subject to appeal to the Board of Patent Appeals and Interferences or to the court;

(2) In cases in which a statute or the rules specify that the matter is to be determined directly by or reviewed by the Commissioner; and

(3) To invoke the supervisory authority of the Commissioner in appropriate circumstances. For petitions in interferences, see § 1.644.

[edit] MPEP 1100 Statutory Invention Registration (SIR)

Not sure what the question was, but it appears you should know about third party submissions:

1134.01 Third Party Submissions Under 37 CFR 1.99
[...] To balance the mandate of 35 U.S.C. 122(c) and the Office’s authority and responsibility under 35 U.S.C. 131 and 151 to issue a patent only if “it appears that the applicant is entitled to a patent under the law,” the Office permits third parties to submit patents and publications (i.e., prior art documents that are public information and which the Office would discover on its own with an ideal prior art search) during a limited (2 month) period after publication of an application in compliance with 37 CFR 1.99. However, 37 CFR 1.99 prohibits third parties from submitting any explanation of the patents or publications, or submitting any other information.

[edit] MPEP 1200 Appeal

Generally "Appeals" seem to be one of the areas tested more heavily in the exam, so it may be worth familiarizing oneself with MPEP 1200.

In particular it's recommended to know MPEP 1213.02, since answers to some questions can be found word for word in this section

1213.02 New Grounds of Rejection by Board [R-3]
37 CFR 41.50. Decisions and other actions by the Board.
(b) Should the Board have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement constitutes a new ground of rejection of the claim. A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. When the Board makes a new ground of rejection, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new evidence not previously of record is made which, in the opinion of the examiner, overcomes the new ground of rejection stated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought.
(f) Extensions of time under § 1.136(a) of this title for patent applications are not applicable to the time periods set forth in this section. See § 1.136(b) of this title for extensions of time to reply for patent applications and § 1.550(c) of this title for extensions of time to reply for ex parte reexamination proceedings.< Under 37 CFR *>41.50(b)<, the Board may, in its decision, make a new rejection of one or more of any of the claims pending in the case, including claims which have been allowed by the examiner. While ** the Board >is authorized< to reject allowed claims, this authorization is not intended as an instruction to the Board to examine every allowed claim in every appealed application. It is, rather, intended to give the Board express authority to act when it becomes apparent, during the consideration of rejected claims, that one or more allowed claims may be subject to rejection on either the same or on different grounds from those applied against the rejected claims. Since the exercise of authority under 37 CFR *>41.50(b)< is discretionary, no inference should be drawn from a failure to exercise that discretion. See MPEP § 1214.01 for the procedure following a new ground of rejection under 37 CFR *>41.50(b)<.


Know that in an appeal if applicant argues claims 1,4,6 in brief the examiner must consider 1,4,6 separately on its merits.


Section 1205 June 19 2007 - As of E8R3, 1205 was changed, and the CFR was modified (similar, but not exactly the same) to the following text (note that there is an initial section I have [...]ed out):

(vii) Argument. [...] For each ground of rejection applying to two or more claims, the claims may be argued separately or as a group. When multiple claims subject to the same ground of rejection are argued as a group by appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone. Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately. Any claim argued separately should be placed under a subheading identifying the claim by number. Claims argued as a group should be placed under a subheading identifying the claims by number. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.

It is not clear to me that the claims must be considered separately on their merits if they are argued as a group (in fact, this reads as if they won't be). I'd appreciate it if someone who understands this section better than I do (not difficult :-) would edit all this down into an explanation of the intent under E8R3/R4.


8/10/2007 Most of the questions I got on appeals required an understanding of what options the Applicant has if a new ground of rejection is brought up. My understanding is that the Applicant has the option to reopen prosecution on just the claims that have been rejected on new grounds, and can submit a second appeal based on this rejection if twice rejected in reopened prosecution. Know under what circumstances the application is returned to the board. See particularly, MPEP 1214.01. Some pertinent sections are reproduced here:

1214.01 Procedure Following New Ground of Rejection by Board [R-3]
When the Board makes a new rejection under 37 CFR *>41.50(b)<, the appellant, as to each claim so rejected, has the option of:
(A)>reopening prosecution before the examiner by< submitting an appropriate amendment and/or **>new evidence (37 CFR 41.50(b)(1))<; or
(B)requesting rehearing **>before the Board (37 CFR 41.50(b)(2))<.

...

I. SUBMISSION OF AMENDMENT OR **>NEW EVIDENCE<
The new ground of rejection raised by the Board does not reopen * prosecution except as to that subject matter to which the new rejection was applied. If the Board’s decision in which the rejection under 37 CFR *>41.50(b)< was made includes an affirmance of the examiner’s rejection, the basis of the affirmed rejection is not open to further prosecution. If the appellant elects to proceed before the examiner with regard to the new rejection, the Board’s affirmance of the examiner’s rejection will be treated as nonfinal for purposes of seeking judicial review, and no request for reconsideration of the affirmance need be filed at that time. Prosecution before the examiner of the 37 CFR *>41.50(b)< rejection can incidentally result in overcoming the affirmed rejection even though the affirmed rejection is not open to further prosecution. Therefore, it is possible for the application to be allowed as a result of the limited prosecution before the examiner of the 37 CFR *>41.50(b)< rejection. If the application becomes allowed, the application should not be returned to the Board. Likewise, if the application is abandoned for any reason, the application should not be returned to the Board. If the rejection under 37 CFR *>41.50(b)< is not overcome, the applicant can file a second appeal (as discussed below). Such appeal must be limited to the 37 CFR *>41.50(b)< rejection and may not include the affirmed rejection.If the application does not become allowed or abandoned as discussed above, once prosecution of the claims which were rejected under 37 CFR *>41.50(b)< is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered.


Also know how to withdraw an appeal and what happens to allowed and rejected claims after withdrawal. See MPEP 1215. Note that an RCE filed without a fee may be sufficient to withdraw (1215.01) as is filing a continuation, but the Board should be informed if the Applicant is awaiting a decision. Also, see MPEP 1214.05 for Examiner's treatment of allowed claims.

1215.01 Withdrawal of Appeal
Prior to a decision by the Board, if an applicant wishes to withdraw an application from appeal and to reopen * prosecution of the application, applicant can file a request for continued examination (RCE) under 37 CFR 1.114, accompanied by a submission

...

To avoid the rendering of decisions by the Board in applications which have already been refiled as continuations,applicants should promptly inform the *>Chief Clerk< of the Board in writing as soon as they have positively decided to refile or to abandon an application containing an appeal awaiting a decision. Applicants also should advise the Board when an RCE is filed in an application containing an appeal awaiting decision. Failure to exercise appropriate diligence in this matter may result in the Board refusing an otherwise proper request to vacate its decision. Upon the withdrawal of an appeal, an application< having no allowed claims will be abandoned. Claims which are allowable except for their dependency from rejected claims will be treated as if they were rejected.
The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
(A)Claim 1 is allowed; claims 2 and 3 are rejected. The examiner should cancel claims 2 and 3 and issue the application with claim 1 only.
(B) Claims 1 - 3 are rejected. The examiner should hold the application abandoned.
(C)Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1. The examiner should hold the application abandoned.
(D)Claim 1 is rejected and claim 2 is objected to as being allowable except for its dependency from claim 1; independent claim 3 is allowed. The examiner should cancel claims 1 and 2 and issue the application with claim 3 only.

Know situations when the board will Remand to the examiner:

1211 REMAND BY BOARD [R-3]
The Board has authority to remand a case to the examiner when it deems it necessary. For example, the Board may remand **>a case for further consideration of a rejection pursuant to 37 CFR 41.50(a)(1) such as< where the pertinence of the references is not clear, the Board may call upon the examiner for a further explanation. >See MPEP § 1211.01.< In the case of multiple rejections of a cumulative nature, the Board may also remand for selection of the preferred or best ground. The Board may also remand a case to the examiner for further search where it feels that the most pertinent art has not been cited, or to consider an amendment**. See MPEP * § 1211.02, * § 1211.03 >and § 1211.04<. Furthermore, the Board may remand an application to the examiner to prepare a supplemental examiner’s answer in response to a reply brief **>which the examiner only acknowledged receipt and entry thereof (e.g., by using form paragraph 12.181 on form PTOL-90). See MPEP § 1207.05 for more information on supplemental examiner’s answer<.

[edit] MPEP 1300 Allowance and Issue

[edit] MPEP 1400 Correction of Patents

Many questions in this area of correcting patents. In some, it was correction of inventorship of issued patents where they gave you C.F.R. 1.48 (applying to applications) and wanted to see if you recognized the difference. One on when you can file a reissue to correct inventorship (straightforward from MPEP). Know all the options well for both review of the scope and validity of issued patents, as well as correcting mistakes on issued patents.

MPEP 1412.04
While reissue is a vehicle for correcting inventorship in a patent, correction of inventorship should be effected under the provisions of 35 U.S.C. 256 and 37 CFR 1.324 by filing a request for a Certificate of Correction if:
(A) the only change being made in the patent is to correct the inventorship; and
(B) all parties are in agreement and the inventorship issue is not contested.
See MPEP § 1481 for the procedure to be followed to obtain a Certificate of Correction for correction of inventorship.
35 U.S.C. 256. Correction of named inventor.
Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error. The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.


Know that you can't use 1.48 to fix inventorship in a patent and that you can't use Certificate of Correction if one of the inventors refuses. Know who has to sign a reissue that adds inventors when one of the inventors to be added refuses to participate.

1412.04 Correction of Inventorship
[...]Thus, the signatures of the inventors are not needed on the reissue oath or declaration where the assignee of the entire interest signs the reissue oath/declaration.
Where the name of an inventor X is to be deleted in a reissue application to correct inventorship in a patent, and inventor X has not assigned his/her rights to the patent, inventor X has an ownership interest in the patent. Inventor X must consent to the reissue (37 CFR 1.172(a)), even though inventor X’s name is being deleted as an inventor and need not sign the reissue oath or declaration.
Where an inventor is being added in a reissue application to correct inventorship in a patent, the inventor being added must sign the reissue oath or declaration together with the inventors previously designated on the patent.
In the situation where a patent to inventors X and Y has no assignee and a reissue application is filed by inventor Y to delete the name of inventor X as an inventor and to broaden the patent. Inventor X refuses to sign the reissue oath or declaration and refuses to provide the consent as required by 37 CFR 1.172(a). In this instance, a 37 CFR 1.47 petition would not be appropriate to permit the filing of the reissue application since the consent requirement of 37 CFR 1.172(a) for each owner/assignee is not met. Resort to the courts would be required to delete the name of inventor X as an inventor where X will not consent to the filing of a reissue application.
Know that Establishment of Ownership by Assignee is the Prerequisite to Authority to Take Action under this section.

3.73 Establishing right of assignee to take action.

(a) The inventor is presumed to be the owner of a patent application, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.

(b)(1) In order to request or take action in a patent or trademark matter, the assignee must establish
its ownership of the patent or trademark property of paragraph (a) of this [...] The establishment of ownership by the assignee may be combined with the paper that requests or takes the action.

Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:

(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment).

(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).

(2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:

(i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or

(ii) Being signed by a person having apparent authority to sign on behalf of the assignee, e.g., an officer of the assignee.

[edit] MPEP 1500 Design Patents

Know that foreign priority for a design patent is only 6 months not 12 like utility patent.

1502.01 Distinction Between Design and Utility Patents
(F) Foreign priority under 35 U.S.C. 119(a)-(d) can be obtained for the filing of utility patent applications up to 1 year after the first filing in any country subscribing to the Paris Convention, while this period is only 6 months for design patent applications (see 35 U.S.C. 172).

[edit] MPEP 1600 Plant Patents

[edit] MPEP 1700 Miscellaneous

[edit] MPEP 1800 Patent Cooperation Treaty

This chapter is stressed in the exam.

PCT System

You should know that the US went to 30 month national stage on April 1, 2002 and that any application entering the national stage after that date regardless of filing date may enter no later than 30 months. PCT Article 22(1) changed effective 4/1/02: 30 month from priority to national stage.

Know what has to be submitted when filing the international application and what when entering the national stage.

Know what happens when a US resident files an IA with the USPTO as the receiving office, but the application is filed in Japanese.

The PTO is not competent to be a receiving office for any apps in a language other than English, and if the app was in a language accepted by the International Bureau, it would be given a filing date and forwarded to the IB upon payment of a fee.
PCT Rule 19.4 provides for transmittal of an international application to the International Bureau as Receiving Office in certain instances. For example, when the international application is filed with the United States Receiving Office and the language in which the international application is filed is not accepted by the United States Receiving Office, or if the applicant does not have the requisite residence or nationality, the application may be forwarded to the International Bureau for processing in its capacity as a Receiving Office. See 37 CFR 1.412(c)(6). The Receiving Office of the International Bureau will consider the international application to be received as of the date accorded by the United States Receiving Office. This practice will avoid the loss of a filing date in those instances where the United States Receiving Office is not competent to act, but where the international application indicates an applicant to be a national or resident of a PCT Contracting state or is in a language accepted under PCT Rule 12.1(a) by the International Bureau as a Receiving Office. Of course, where questions arise regarding residence or nationality, i.e., the U.S. is not clearly competent, the application will be forwarded to the International Bureau as Receiving Office. Note, where no residence or nationality is indicated, the U.S. is not competent, and the application will be forwarded to the International Bureau as Receiving Office so long as the necessary fee is paid. The fee is an amount equal to the transmittal fee.


PCT - 1803: If the US is the only contracting state in an international application, the international application will not be published at 18 months. Know this!

1803 Reservations Under the PCT Taken by the United States of America
[...]It has also declared that, as far as the United States of America is concerned, international publication is not required (PCT Article 64 (3)). Accordingly, under PCT Article 64(3)(b), if the United States is the only PCT Contracting State designated in an international application, the international application will not be published by the International Bureau (IB) at 18 months. Even though the United States Patent and Trademark Office has begun pre-grant publication under 35 U.S.C. 122(b), the United States has not removed its reservation under PCT Article 64(3) because not all United States patent applications are published. See 35 U.S.C. 122(b)(2). The application will, however, be published under 35 U.S.C. 122(b) if it enters the national stage in the United States. It will be published again if it is allowed to issue as a United States patent.


PCT filing requirement, National stage filing requirement: Know that Translation and Oath can be filed later

1893.01(e) Oath/Declaration
If the basic national fee has been paid and the copy of the international application (if required) has been received by expiration of 30 months from the priority date, but the required oath or declaration>,<translation>, search fee (37 CFR 1.492(b)), examination fee (37 CFR 1.492(c)), or application size fee (37 CFR 1.492(j))< has not been filed **>prior to commencement of the national stage (see MPEP § 1893.01)<, the Office will send applicant a **>notice< identifying any deficiency and provide a period of time to correct the deficiency as set forth in 37 CFR 1.495(c). The time period usually set is 2 months from the date of the notification by the Office or 32 months from the priority date, whichever is later. This period may be



Know the details around claiming priority to a foreign patent for a PCT and what is required for claiming priority when entering the US National Stage. Specifically, know the timing for filing a claim and whether certified copies and translations are required.

[edit] MPEP 1900 Protest

37 CFR 1.291 Protests by the public against pending applications.

(a) Protests by a member of the public against pending applications will be referred to the examiner having charge of the subject matter involved. A protest specifically identifying the application to which the protest is directed will be entered in the application file if:
(1) The protest is submitted prior to the date the application was published or the mailing of a notice of allowance under §  1.311, whichever occurs first; and
(2) The protest is either served upon the applicant in accordance with § 1.248, or filed with the Office in duplicate in the event service is not possible.
(b) Protests raising fraud or other inequitable conduct issues will be entered in the application file, generally without comment on those issues. Protests which do not adequately identify a pending patent application will be returned to the protestor and will not be further considered by the Office. A protest submitted in accordance with the second sentence of paragraph (a) of this section will be considered by the Office if the application is still pending when the protest and application file are brought before the examiner and it includes:
(1) A listing of the patents, publications, or other information relied upon;
(2) A concise explanation of the relevance of each listed item;
(3) A copy of each listed patent or publication or other item of information in written form or at least the pertinent portions thereof; and
(4) An English language translation of all the necessary and pertinent parts of any non-English language patent, publication, or other item of information in written form relied upon.
(c) A member of the public filing a protest in an application under paragraph (a) of this section will not receive any communications from the Office relating to the protest, other than the return of a self-addressed postcard which the member of the public may include with the protest in order to receive an acknowledgment by the Office that the protest has been received. In the absence of a request by the Office, an applicant has no duty to, and need not, reply to a protest. The limited involvement of the member of the public filing a protest pursuant to paragraph (a) of this section ends with the filing of the protest, and no further submission on behalf of the protestor will be considered, except for additional prior art, or unless such submission raises new issues which could not have been earlier presented.

[edit] MPEP 2000 Duty of Disclosure

This chapter is not tested too intensively. You should know who has a duty to disclose:

2001.01 Who Has Duty To Disclose
Individuals having a duty of disclosure are limited to those who are “substantively involved
in the preparation or prosecution of the application.” This is intended to make clear that
the duty does not extend to typists, clerks, and similar personnel who assist with an application.

[edit] MPEP 2100 Patentability

GENERAL REQUIREMENTS OF 35 U.S.C. 102(d)

35 U.S.C. 102(d) establishes four conditions which, if all are present, establish a bar against

the granting of a patent in this country:

(A) The foreign application must be filed more than 12 months before the effective U.S. filing date
(See MPEP § 706.02 regarding effective U.S. filing date of an application);
(B) The foreign application must have been filed by the same applicant as in the United States
or by his or her legal representatives or assigns.
(C) The foreign patent or inventor's certificate must be actually granted
(e.g., by sealing of the papers in Great Britain) before the U.S. filing date. It need not be published.
(D) The same invention must be involved.


Know the 102(e) date for international applications (MPEP2136 & MPEP706.02(f)(1)).


Know the four Graham Factual Inquires verbatim.

2141 35 U.S.C. 103; the Graham Factual Inquiries
Office policy is to follow Graham v. John Deere Co. in the consideration and determination of
obviousness under 35 U.S.C. 103. As quoted above, the four factual inquires enunciated therein
as a background for determining obviousness are as follows:
(A) Determining the scope and contents of the prior art;
(B) Ascertaining the differences between the prior art and the claims in issue;
(C) Resolving the level of ordinary skill in the pertinent art; and
(D) Evaluating evidence of secondary considerations.


Also know these:

When applying 35 U.S.C. 103, the following tenets of patent law must be adhered to:
(A) The claimed invention must be considered as a whole;
(B) The references must be considered as a whole and must suggest the desirability
and thus the obviousness of making the combination;
(C) The references must be viewed without the benefit of impermissible hindsight vision
afforded by the claimed invention; and
(D) Reasonable expectation of success is the standard with which obviousness is determined.


Don't get fooled by a non-103 102(e) rejection that was commonly owned at the time of the second invention.

2136.01 Status of U.S. Application as a Reference
WHEN THERE IS NO COMMON ASSIGNEE OR INVENTOR, A U.S. APPLICATION MUST ISSUE AS A PATENT
OR BE PUBLISHED AS A SIR OR AS AN APPLICATION PUBLICATION BEFORE IT IS AVAILABLE
AS PRIOR ART UNDER 35 U.S.C. 102(e)
WHEN THERE IS A COMMON ASSIGNEE OR INVENTOR, A PROVISIONAL 35 U.S.C. 102(e) REJECTION
OVER AN EARLIER FILED UNPUBLISHED APPLICATION CAN BE MADE


Questions may cover 35 U.S.C. 112 1st and 2nd paragraph, so you should know what those say -

reportedly one questions also asks how the examiner approaches the underlying patentability.


2161 Three Separate Requirements for Specification Under 35 U.S.C. 112, First Paragraph
[...]This section of the statute requires that the specification include the following:
(A) A written description of the invention;
(B) The manner and process of making and using the invention (the enablement requirement); and
(C) The best mode contemplated by the inventor of carrying out his invention.


2171 Two Separate Requirements for Claims Under 35 U.S.C. 112, Second Paragraph
There are two separate requirements set forth in this paragraph:
(A) the claims must set forth the subject matter that applicants regard as their invention; and
(B) the claims must particularly point out and distinctly define the metes and bounds
of the subject matter that will be protected by the patent grant.

[edit] MPEP 2200 Citation of Prior Art and Ex Parte Reexamination of Patents

For a re-exam, remember that only patents and printed publications can be used.

2205 Content of Prior Art Citation
[...]
A prior art citation is limited to the citation of patents and printed publications
and an explanation of the pertinency and applicability of the patents and printed publications.

[edit] MPEP 2300 Interference Proceedings

35 U.S.C. 135 Interferences.

(a) Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared and the Director shall give notice of such declaration to the applicants, or applicant and patentee, as the case may be. The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability. Any final decision, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent and Trademark Office of the claims involved, and the Director may issue a patent to the applicant who is adjudged the prior inventor. A final judgment adverse to a patentee from which no appeal or other review has been or can be taken or had shall constitute cancellation of the claims involved in the patent, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by the Patent and Trademark Office.

[edit] MPEP 2400 Biotechnology

[edit] MPEP 2500 Maintenance Fees

  • Fees on patents to raise more money…
  • Maintenance fees are due on (1) 3 years and 6 months after grant, (2) 7 years and 6 months after grant, (3) 11 years and 6 months after grant,

with a 6 month grace period. Failure to pay renders the patent expired.

  • Extensions:

- unintentional: twenty-four months after the six-month grace period

- unavoidable: any time

[edit] MPEP 2700 Patent Terms and Extensions

The exam may include a question or two on patent term adjustment / patent term extension. One question is said to refer to an app filed before 5/29/2000.

2710 Term Extensions or Adjustments for Delays Within the USPTO Under 35 U.S.C. 154
Utility and plant patents issuing on applications filed on or after June 8, 1995, but before May 29, 2000, are eligible for the patent term ** extension * provisions of former 35 U.S.C. 154(b) and 37 CFR 1.701. See MPEP § 2720. Utility and plant patents issuing on applications filed on or after May 29, 2000 are eligible for the patent term adjustment provisions of 35 U.S.C. 154(b)(amended, effective May 29, 2000) and 37 CFR 1.702-1.705. See MPEP § 2730.


2720 Applications Filed Between June 8, 1995, and May 28, 2000
[...]
The twenty-year term of a patent issuing from an application filed on or after June 8, 1995, and before May 29, 2000, may be extended for a maximum of five years for delays in the issuance of the patent due to interferences, secrecy orders and/or successful appeals to the Board of Patent Appeals and Interferences >(Board)< or the Federal courts in accordance with 37 CFR 1.701.
2730 Applications Filed on or After May 29, 2000; Grounds for Adjustment
[...]
Basically, for applications after May 29, 2000 it appears that the 5 year maximum has been replaced with "the period of adjustment will not exceed the actual number of days the issuance of the patent was delayed (35 U.S.C. 154(b)(2)(A))" and there is a GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION PENDENCY.- Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the United States Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application in the United States, not including-

(i) any time consumed by continued examination of the application requested by the applicant under section 132(b);

(ii) any time consumed by a proceeding under section 135(a), any time consumed by the imposition of an order under section 181, or any time consumed by appellate review by the Board of Patent Appeals and Interferences or by a Federal court; or

(iii) any delay in the processing of the application by the United States Patent and Trademark Office requested by the applicant except as permitted by paragraph (3)(C), the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.

NOTE: With regards to (ii) above, According to 37 CFR 1.702(e)for applications filed post- 5/29/00, you still get credit for SUCCESSFUL appellate review.

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