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14nov08: First thing first -- many thanks for the tips from all the other test takers before me. I passed it this week, and in reflecting back, this was the best site for my preparation.

For preparation, I chewed through the old tests from 2003-2000. In retrospect, 2003-2002 like someone suggested here would have been fine. I overkilled it, but I guess extra info won't hurt. I had most of the new questions mentioned below from the Maryland person. I'm in total agreement with all of his/her (great) comments. I also vouch for the usefulness of the EasyBarPass software. It's nothing fancy, but it saves you a lot of time from having to print and dig through the pages the answers (save a few trees). It's worth every penny I paid. Easily the best tool that I had to grind through the old exams. I also ignored the timer for the first time through, as I took time and read the MPEP sections for the right answers, and equally important, understand why the other options were incorrect. The old questions helped me to know what's important to the USPTO. The subsequent tries, I keep up with the timer and allotting 3-5 minutes per question.

One final note on EasyBarPass, you have to ignore the sales pitch on the website that said you can recognize 60 questions. It seems the questions are pulled from a fairly large database where most of the old questions have been purged or altered (significantly in some cases). The version I bought a couple months ago didn't have any of the 2005-6-7 questions they advertised. Perhaps they have revised it recently by adding some questions discussed here. Regardless, it's a great tool.

EasyBar helps with the old questions, and this website helps with the new questions. It's also helpful because I get to see that the test is like nowadays -- the mixture of old and new questions. It is wise to study everything discussed here. Everything! Old and new questions!

I also got the Bullseye as recommended by someone here. I think it's a nice package, compiling some stuffs discussed here like the old questions that regularly popped up. A couple of sets of PTO slides that were great review materials for 102(e) dates and benefit claims under 35 USC 119, 120, 121. These are in the MPEP too (and you can download from PTO site), but I liked the clarity of the slides and the convenience. I didn't use it for anything else otherwise, but it could be ok for someone else.

Overall, with the above tools, I was well prepared. I've done several graduate tests before (GRE, GMAT, ...), but haven't run into anything that's strictly memorization and little else. Less challenging for those with photographic memory, but tougher for others. More importantly, everyone's experience is slightly different because of the computer testing. For example, I thought that I would get 10-15 questions per session of old questions. I counted maybe 5 per session, at best. On the new questions discussed at this website, based on the comments here, I thought I would have 10 things per session because of the frequency that they are being discussed. I get another 6-7 each session. That is, about 75% of my test was new. Not as lucky as the person below who reported 20 recognizable questions per session. Closer to the experience of the Maryland person of 10/session. However, because you study the old exams, you know what the issues are, and you know where to dig in the MPEP. That's the value of the old exams.

For the new questions, I recall a healthy concentration on PCT (15 or so), reissuances (maybe 10), appeals (maybe 10), 102(e) dates (maybe 5-6), RCE and reexamination. Several tough new questions on PCT bridging to US patent dates for 102(e) prior art, as well as a couple on PCT bypass (US continuation off of PCT that never entered National stage).

Questions discussed here that still appeared as of Nov. 2008: Titanium ball, divisional reissues, new grounds of rejection on appeal, investigating deceptions, Tribell, 52 tables, piecemeal examination, supplemental oath on reissue, toy plane and aluminum foil, death of inventor (practioner was partial assignee), court decision binding/not binding on PTO, multiplicity, lip gloss, and moondust.

Good luck to all those after me.


11-13-2008: I'm scheduled to take the exam. I had been doing old exams (like everyone says to do). Printing them takes a lot of ink/paper. Some people were talking about some other bar review courses. There's a web site at freesocrates.com. There are some USPTO questions available. The site says there's 40 questions "in rotation", but I think there's more. Still looks like it's under construction. But I noticed the Tribell and Moondust question repeats. Maybe someone will also find it useful. It'd be good if more questions were added too before I take the exam.

I took the exam yesterday in Maryland. Missed it by a handful.

The look of the exam is near perfect match to the Easybarpass software (MPEP is a bit different) and the minimizing of the window is odd- you can make it a bit smaller, move it around, but you cannot toggle between the MPEP and the exam window- you have to close the MPEP. It does open to the same chapter/location when you reopen it though, which was helpful.

8 questions on PCT

I saw quite a few repeats and a few variations (~25 total):

-52 tables -Potter -Smith (DRAM) -Japan 45 days -file as small entity and then find out the next day that your client licensed to big entity the day before (can’t remember the exam) -Laurel, Abbott, Hardy -What can be filed by fax -two questions on oaths (1.63) (one was which of the five is unacceptable, missing signatures, filing three oaths for three inventors (one signature per oath), missing dates) -Parking meter (10/15/03 PM #28) -10/15/03 AM #26 variation -question on what assignee not yet of record can do (four they can’t do, one they can..file an amendment, submit small entity status, something with a practicioner (hire/fire)) -one related to inventor that died (where he had assigned rights to company) who can keep prosecuting until someone intervenes -Piecemeal examination -Bloc -Smith laminate (variation) -Obviousness (IX on mypatentbar) -Board decisions (XXIII on mypatent bar) 4/15/03 AM #37 -Design patent in country X (variation) -Titanium baseball -Tribell -Moondust -Foil wing airplane -lip gloss

I need to know the old exams a bit better for the next try. There were a few that I recognized as repeats (or variations) that I later checked that I missed (picked the wrong of the last two choices)

Quite a few dealing with appeals (5-6).

I made up my scratch paper the way someone else suggested and I thought it was helpful: 

       Answers                  Confidence (1-10)     Keywords, MPEP sections

1. A [s]B[/s] C [s]D[/s] E 2. 3.

I numbered 1-50 for each session (during the Prometric tutorial, where you get 15 minutes to review before the exam begins), then as I went through I would put down letters and mark them off as I ruled them out. I also put down my answer and circled it. That was helpful for a couple of questions where I forgot to indicate my answer on the computer screen so when I went to review and checked for the next unanswered, I could refer to my sheet and fill it in.

One thing that I did in the AM session, that I thought didn’t work that well (for me anyways) was I went through and read and answered all 50 questions. That took me about 1 hour 45 minutes. Then I went back and started looking at the questions I had marked…which was too numerous. I had about 30 of the 50 that I wanted to check something on, and I got bogged down trying to find some of them. I think the last 10 or 12 questions I had marked I didn’t get to look at again.

In the PM session, I changed it up and looked up things in the MPEP as I went, keeping a good eye on my time to make sure I wouldn’t end up with a big pile of unanswered questions at the end. After doing it this way, I marked only 3 questions and finished with about 7 minutes left. I had really looked at the 3 marked as much as I thought I could, but I did a bit more digging on them in the MPEP to confirm or reject the answer I had settled on.

I thought my PM section was much easier than my AM, but that could have been flavored by more beta questions. Hard to tell for sure.

I too first-try passed on September 11th.

Overall I thought that my version of the exam was harder than the 02/03 exams but it was still manageable, as in it wasn't ridiculous. Between the repeated questions that everyone knows about from the 02/03 exams and the "reported" questions from here, I had approximately 20 repeats PER SESSION! I marked each question on my scratch paper that I recognized and I had around 20 for both the AM and the PM session.

In case anyone out there studying is curious, here is what I did to prepare:

I bought the Bullseye study materials from eBay for I believe $25.00. I started by reading the outline they give you and then going over the old problems that they have grouped according to MPEP chapter. Once I started getting an I idea of what the test was about I started taking the 02 and 03 exams. Overall, I took the April 02 and October 02 tests two times and I took the April 03 and October 03 tests three times. A few days ago I got 90+% on both of the 03 exams. For the last couple of days I just drilled the repeated questions (there was a packet that came with Bullseye) and then I read - and re-read - the "reported" questions on here. For better or for worse, I'm not certain that I could have passed the exam without the help of people reporting the new questions that they have seen on the exam - it definitely helped my zero-in with my studying. In total, I studied 150 hours over the summer but it probably helped that I had a survey IP class that gave me a little headstart re: patents.

I won't go into unnecessary detail about what questions I got but I would definitely say that anyone who is planning on taking the test should look over the questions on this site at least 2 or 3 times the week before the test. I read through them before I went into the test and then I looked at my print-out of them again over lunch. I finished all 50 questions in each session with about 1.5 hours to spare - this gave me plenty of time to look up all the marked questions I had. I probably looked up around 20 questions in the MPEP per session. Overall, I thought the search function on the MPEP was pretty easy and even though you cannot minimize the MPEP while you have it open, you can close the MPEP and it will still be in the same place if you click the "MPEP" button again (as long as you don't navigate away from that question) or you can just drag the window off the screen if you need to look at the question again.

I guess one thing to add that I haven't really noticed on the boards is that I got a decent amount (maybe 4-5) of questions regarding "restrictions." Specifically, I remember 2 questions that dealt with "combination/subcombination" vis-a-vis restrictions (MPEP 806.05) that I definitely had to look up...who knows, they may have just been beta questions. I also only got 1-2 questions dealing with PCT and 102(e) priority date - had a lot more PCT questions dealing with improper/lacking claim to priority and what you have to do to perfect priority.

Overall, it was a tough test, obviously. But, at the same time, as I was going through the exam I felt pretty confident that I would pass. It was probably because I recognized so many questions that I knew and I had plenty of time to go back and look up the ones I was unsure about. One final tip: I know people have talked about this strategy before but I think it is worth reiterating - it helped me to take the 15 minutes at the beginning of the test (for the tutorial) and make 2 answer sheets (numbered 1-50 with ABCDE) and then to mark the correct answer for each question on it along with any additional notes (for example: I would write a number between 1 and 5 correlating with how confident I was about the answer I chose so with my extra time I could start with the 1's (basically a bad guess) and then work my way up to the 3s (educated guess))and look them up in the MPEP.

Hope this helps someone. Good luck on the exam. This site is awesome.

Sept 11, 2008: Just took (and passed) the exam on my first try. I have previously done the PLI take-home class and then spent 1 week (4 hours/day) studying in general, and 1 week (4 hours/day) grinding through the practice exams over and over - especially the April and October 2003 exams.

I thought that this exam was much harder than the practice exams. The morning session terrified me - I only had 3-4 repeat questions and tons of esoteric detail questions. The afternoon session was considerably better, as it had a lot more repeats. The non-repeat questions were still pretty tough, so you need to be able to look things up. During the practice exams, I usually finished the exams in about 1 hour 45 mins. During the real exam, I needed absolutely every minute, because there seemed to be a lot more nitpicky details questions that required you to look stuff up.

Here is a list of questions that I think I remember seeing. Please note: many of these were presented a different variation than you see in the practic eexams. Be really careful, the variations are sometimes quite significant (changing the question call or a key fact so that the outcome is very different than past exams)

APR 2003 AM: 1, 2, 12 (definitely a variation), 22, 24 (definitely a variation), 25, 37

APR 2003 PM: 4, 12, 13, 22 (definitely a Variation), 32

OCT 2003 AM: 6, 7, 16, 17, 19 (definitely a variation), 26, 31, 41 (definitely a variation), 44

Oct 2003 PM: 2, 6, 13, 18 (definitely a variation), 28, 30, 32,

Moon Dust, Lip Gloss, Aluminium Foil Toy Airplane, Titanium Ball, CD-ROM

A LOT on appeal (including 2-3 questions on knowing what to do when the board affirms some claims and rejects some claims - both for examiner and for the applicant, 1 question on what the time period is to correct a deficient appeal brief)

a LOT of PCT (quite a few that talked about the role of the US as a receiving office, and what happens if you aren't a resident or don't submit your int'l application in english. surprisingly, no 102(e) date problems)

No RCE questions

A question on the effect of a District Court ruling on the validity/invalidity of a patent in a subsequent reexam

That's about all I can remember. Good luck to those studying!


I, too, passed the bar on my first try (7-11-08), but unfortunately I had maybe 4 repeat questions, at the most. I followed other poster's advice to take the old exams over and over, which is helpful because you familiarize yourself with the structure of the questions, etc. But my exam was very heavy on reissue, reexam, protest, and APPEAL. Lots on appeal, such as what the examiner can do and when, amendments during, and other topics that PLI sort of blew past. I would definitely take a close look at chapters 700, 1200, 1400, 1800, 1900, 2100.

6-11-2008: I passed yesterday on my first attempt. I prepared using the PLI home course, then I took each of the 2002 and 2003 exams three times each, and I read a little on this page to familiarize myself with some of the new questions.

The first time through the 2002 and 2003 exams, I averaged 74%. The second time through, my average was 88%. The third time through (during the past week), my average score was 94% and the lowest score for any one section (50 questions) was 92%. (Yes, I kept a spreadsheet of my practice scores.)

I expected the "real" exam to be a bit more difficult, because I figured the new questions would be tougher and there would be a lot more PCT stuff. There were probably about 25-30 repeat questions from 2002-2003 exams. There were about 7-8 PCT questions. Many of the questions that were not repeats (and not PCT) were similar to the 2002 and 2003 questions in form, substance, and difficulty. Overall, I felt the exam was the same level of difficulty as the 2002 and 2003 exams, or MAYBE slightly more difficult.

Some of the repeat questions: Canceled matter as PA (Apr 03 PM #48) Inert gas (Apr 03 AM #30) Copper substrate (Oct 03 AM #4, Apr 03 PM #16) Bloc - utility = alleviate pain (Oct 03 AM #7, Apr 03 PM #32) Slight variation on 102(d) question (Oct 03 AM #8) DRAM (Oct 03 AM #9) Step for crossing the road (Oct 03 AM #23) Supplemental oath as an amendment (Oct 03 AM #26) Late IDS when client knew about PA all along (Oct 03 AM #34) Allowance after abandonment after appeal (Variation on Oct 03 AM #38) Japan/nonpublication request/45 days (Oct 03 AM #44, Apr 03 AM #2) One hundred forty-seven claims (Oct 03 AM #50, Apr 03 PM #28) ABCD/ABCDE/BCDE (Oct 03 PM #2) 3rd Party Submission - Japanese publication (Oct 03 PM #10) Beck - Mixture Y with melting point of 150F (Oct 03 PM #11, Apr 03 AM #22) Polyethylene/polypropylene range (obviousness of ranges) (Apr 03 AM #44) Issue fee transmittal form - XYZ Company (Oct 03 PM #38, Apr 03 PM #11) App Data Sheet (Oct 03 PM #43) Mirror (parallel/perpindicular) Spanish phone Hair gel Lip gloss Assignment to practitioner, inventor dies (I said practitioner may continue because of the partial interest) Documents an Assignee Not of Record can sign (answer is small entity statement) Indefinite Claim using 'high' When is restriction requirement not appropriate (A: when made with the Final rejection)

Despite all the questions on old exams about when a 1.131 or 1.132 affidavit is appropriate or inappropriate, I did not have any questions on this. Also very little (maybe 1 question?) on design patents, and nothing on plant patents. NOTHING on PTE/PTA. Nothing on proper Markush or proper multiple dependent claims.

There were a few questions with a new format, and I wonder if these might be beta questions. These questions would give a statement of patent office policy before the question. Example: "In the course of [some event during patent prosecution], an examiner does X, then the [applicant/BPAI/etc] must do Y. If the examiner does Z, what may the applicant do next in accordance with MPEP?" There were about 4 questions like this, and I thought it was helpful because that introductory statement gets you pointed in the right direction -- you know what area they are asking about, and the question is typically on a narrow issue within that topic.


6-05-2008: Sad to say that I scored a 68 when I took it today. I took it before in January and scored only 51 though this one seemed much harder. Lots of PCT, ex-Parte Rexam, and interference questions. I was much more adept at looking stuff up this time using the PDF viewer. However, there were still questions for which I could not find answers to in the MPEP.

Several that puzzled me included the following: 1. Notice of Allowance received but have not paid issue fee. Foreign associate sends a reference that is relevant but not previously considered. Your client does not want to pay for an RCE but will pay to have reference considered. Choices were: - PTO will consider reference w/o having to pay a fee. (I chose this one) - PTO will consider reference only if you pay a fee. - PTO will automatically file an RCE and charge you for it.

Another one had to do with re-exam, choose what does not comport with PTO practice. I narrowed it down to: - Cannot get an extension of time to respond to a 2 month period for a response. (I chose this because you can get an extension under 1.55) - Can extend time up to 6 months to respond to Final office action. ( extensions were possible but I wasn't sure about extending to 6 months).

Multiple-Dependent claims: - 1 is indep, 2 depends from 1, 3 depends from 2, 4 depends from 2 and 3, 5 depends from 3, 6 depends from 2, 3, and 5. I counted 8 dependent claims.

Saw some repeaters, including Tribell, moon dust eraser, etc. Very few questions on claims and more questions on useless crap that nobody uses during actual patent prosecution.

5-09-2008: I took the exam today and passed. The message at the end of the test said "Preliminary test results show that you passed…….You will receive your official exam results in due course".

It really helps to review the past exam questions, particularly all of the sessions in 2003. It frees up time at the end of the exam so you can consult the MPEP on questions where you are unsure. I had about 30 minutes to do so before the end of each session.

Here are previous exams questions I got:

Apr 15, '03 AM: 26 and 29; Oct 15 '03 AM: 6,13,22,26,44 Oct 15 '03 PM: 4,30,40,42

Other questions if not mentioned already:

Aroma Therapy, DRAM, Piecemeal, Crossing the Road, Compound Y utility question, ABCD>BCDE>ABCDE reissue , Supplemental Oath as amendment, Indefinite claim using "high", Mirror question

Spanish Phone, but with a twist: Wants to modify in US utility CIP with new dialing pad. Definitely after 6 months design application, 102(d); but wants it in utility CIP application.

Trade Secret Question: Examiner opens up sealed trade secret packets but does not use . Is it necessary to file petition to expunge before mailing of NIRC? Will they be available to the public? MPEP 724

Hair gel: Similar to Einstein/Weismann question ( Apr 17, '02, Q37), application filed before Nov, 29, 1999. Thus ex parte reexamination seems to be correct answer, even though inter partes is there as answer choice , it does not apply since application filed before Nov 29, 1999.

Correcting errors in Provisional Application, where 3 figures are mentioned in the cover sheet , but receive a NOMP from OIPE where only 2 figures in application. What can you do? File amendment, petition, or file whole new application among the answers.

What can assignee not of record do ( sign small entity form was the answer), but all options listed in MPEP 324.

Lip Gloss (102(b)) question, where she files application more than 1 year after experimental testing began, but used lip gloss as party gag after experimenting was over for about 2 months before filing application. Is it a 102(b) disqualification?

Combinations and sub combinations, scenarios where examiner would restrict. 4 choices and "all of the above" as choice.

Maintenance fee paid timely by attorney of record, but forgot to include any info about patent or application number. Under what conditions would he use Form 1.377

Certificate of Correction after patent issues. What can it be used for. only logical answer listed is to add inventor's name that was accidentally left out.

Inventor dies before filing patent application but had already given part interest in invention to lawyer of record (who has power of attorney) to pay for his services. I interpreted this to mean lawyer is assignee. What will happen? Is Power of Attorney still intact or must a new Power of Attorney be granted by legal representative, heirs, etc.

Very tricky question where PCT filed after Nov 29, 2000 in German language in Germany and designates US. Applicant claims priority to a US application or provisional application (I do not remember which). WIPO publishes it in German language. Then it enter national stage in US, and Office sends invitation to correct, for missing oath ( but does not mention translation) and applicant completes this task on a particular date. It does NOT say application ultimately publishes in English. Each of the other events has dates associated with it. What is the 102(e) date.? I did not know answer, was it US provisional application ? or FOT scenario? I felt that the application would not be eligible for 102(e) date as question was presented. The fifth choice of potential answers was that none of dates listed was correct, which is the one I selected. It was not quite the same as saying "it would be ineligible for 102(e) and would only get a 102a and 102b date since this is after Nov 29, 2000.


3-1-08 - I passed the exam today. This sight was a great help. I did the BarBri patent bar DVD course. I would say that I had at least 6 PCT questions. Most of them were pre-11/29/00 questions. I have a tough time memorizing that stuff, so my plan was to go to the MPEP, 708, and go look at the examples that have in diagram. Then I would would match up the question to one of the sample diagrams that fit. I KNOW EVERYONE SAYS THIS, BUT MEMORIZE ALL THE ANSWERS TO THE QUESTIONS THAT PEOPLE SAY ARE CURRENTLY ASKED ON THE COMPUTER EXAM!!! Get the list of about 150 questions on here from the old exams that have been asked, do them all. Of the ones you miss, do them them again, and then if you miss them again, do them again until you get every single one right. You're throwing away easy points if you don't do that. Here are the ones I remember. April 2000 AM: 17, 42, 47. April 2003 AM: 2, 17, 37, 41. April 2003 PM: 12, 32, 38, 44, October 2003 AM: 7, 13, 16, 24, 38, 44, October 2003 PM: 6, 29, 50. I can't find it, but I also had the previously asked question about the number of dependant claims being 8. So that's 21 questions that I can think of, maybe there were a few others. If the Aroma Therapy question isn't in the numbers I put up, that one was on my exam too. I had Tribbel, the question about an inventor giving a 40% assignment to one company and 40% to another company, and who has to sign the terminal disclaimer (I'm not sure, but I think only the inventor. The MPEP seems to say that the assignee would only sign if they had 100% of the interest, but I could be wrong). The electric fan questions (I think the examiner maintains the rejection. I had a pretty easy one on who can sign an oath (yes, minors can sign the oath, but I forget what the right answer is now). The door handle question. I had a few questions on 103(e) dates. A means plus function question. I took about 10 weeks of hardcore studying. I'm glad that hell is over. I actually don't know what to do with the time on my hands now!

2-25-08 - I passed the exam earlier today. I looked at a lot of review material before the test, and this is the best site besides the pay courses (I also took PRG dvd) - so I feel like I should give some advice while I wait for my ride home. I had at least 20 of the questions mentioned on this site verbatim. They did not switch the answers or try any tricks. You are missing out if you don't at least go through the April 2002 - October 2003 exams. If you know them well, those questions free up time for other questions where going to the MPEP is key. I hadn't used the MPEP a whole lot with the Examware questions, but on the exam you will fail if you don't dig around in it. Previous takers had warned me about answers coming from the MPEP, and they were right. Many questions with 3 of the 4 answers were correct, and the list added an extra element not in the MPEP. Know how to search 600, 700, 1200, 1800, 2100, or at least read the t.o.c. beforehand. You will be spending time in them and others. I had lots of strange protest and restriction questions from the MPEP. You absolutely need to know the following to pass: what to do in an appeal, know the 11-29-00 PCT filing date questions, know the 102e/103 co-ownership scenario, know what to do when the inventor dies, probably 3 on this alone, reissue, re-exam, know what an asignee has to sign, know the oath/ADS battle, who can have access to what in the file - especially with partial asignees trying to block, a lot of stuff about non-citizens sending things to the US/RO - in both languages, you have to search the MPEP for the answers. Tribell was on there, Potter too, 150 degree and 300 degree argument, I had one design - 6 month priority, no plant, and one patent term from nonprov, not prov. I was dubious about a testing center with other people taking different tests in a controlled environment, but my Prometric site was great. No problems with the MPEP.


  • I passed the exam yesterday (2/20/2008) here is a listing what I remember seeing. Some of these are doubled up (they appear on both the April '03 and the October '03 exams). October '03 PM: 2, 4, 6, 8, 10, 13, 14, 15, 25, 28, 32, 38, 40, 42, 50. October '03 AM: 4, 6, 7, 9, 12, 22, 23, 24, 26, 34, 36, 44, 50. April '03 PM: 4, 13, 21, 32. April '03 AM: 8, 22, 29, 30, 31, 37, 44. April '00 AM: 5, 17, 32, 36, 42. The "red ink" question, though the direct quote deals with a discrepancy regarding "clear black ink" v. "clear red ink." The mirror question. A question where the inventor assigns part of the invention to the practicioner and promptly dies - what should the practitioner do - I said get a new power of atty. The "what if inventor doesn't expressly identify the best mode" question. The lip gloss question (I said her use as a gag was a public use and thus a bar). The spanish phone question. Question about Assignee not of record. New ground for rejection by the Board after appeal. Maintenance fee where the patent was not correctly identified. Indefinite question using "high." The divisional reissue. The hairgel question.
  • Examiner’s search procedures: one
  • Restriction: at least three, maybe four.
  • Oddly enough, there was nothing specifically about double patenting that I can recall.
  • Reexamination: one or two, only on ex parte.
  • Death of the inventor: at least three on this, and possibly four. And in some, the answer choices were convoluted (“executor” vs “legal representative”).
  • Protest: at least one, possibly two.
  • Interference: nothing
  • SIR: nothing
  • Access to applications: very little, maybe one, I think, about getting at the status of an application. Also there was one, which I recognized from an old exam question, about whether an applicant could be excluded from access to the application.
  • Design patents: one. I think it specifically told you that there was no patentable novelty other than the design, so you knew that the answer choice about filing a utility patent was out. Know that design patent applications must be filed within SIX MONTHS of a foreign application to which priority is claimed, and that a foreign design application filed more than SIX MONTHS before a US design application (as compared to 12 months for a Utility or Plant Application) will bar US patent for that design under 102(d).
  • 103 rejections: at least two, one about commercial success, one about experimental usage. One of the questions asked if the examiner could make an unsupported
  • 103 ( c ): one or two
  • 102(f): there was a question I recognized from the old exams, about someone who’s visiting in another country and sees a great invention, and brings it back to the US. (The old question was Mexico and an agave machine – this one was France and a grape-crusher!)
  • Oath/ADS conflicts: one
  • New matter: very little, or nothing
  • Reply to Office actions, SSP, etc: there was at least one, and it had to do with the 2 month / 3 month thing for reply to a Final rejection and Advisory action thereto.
  • Interviews with examiners: at least one, where you had to know if an interview is a matter of right.
  • 1.131 affidavits: hardly anything, maybe nothing.
  • Request for information by the Examiner: one
  • Maintenance fees: I think one of the answer choices asked whether the patent owner had to authorize someone else to pay the maintenance fees or not; can’t recall if the entire question was about maintenance.
  • First question - long, long fact pattern, but the inventorship was filed incorrectly - there was an answer choice that said that the application would not issue as a patent until the inventorship was corrected.
  • Final Rejection - all claims rejected, except there remain dependent claims - the examiner should abandon the application.
  • i think the deal on the lip balm was that she publicly used it by kissing people at parties for over a yr. I think there may have been some other fact about the nature of the parties to indicate how public they are, with a red herring about her not telling people how the lip balm worked. I answered that it was a 102(b) bar because public use doesn't require that the claimed invention be enabled as opposed to a publication. There was also nothing to indicate that the kissing was for experimental reasons (at least not for perfecting the invention).
  • LOTS on reexam and reissue, also know citation of prior art and protest. One where a hairdresser find his competitor gets a patent but has an advertisement that he was selling the patented product one year before the competitor got his patent to that product.
  • necessary reqt's of provisional & non-provisional
  • re-exam on claim1 -4, claim 5 deals with a separator. the one that enlarges the scope deal w/ a method instead of an apparatus
  • Plenty of PCT QS w/ the US as a RO dealing w/ non-nationals who file, translations, filing dates.
  • if AA is received b4 SSP ends, you calculate your extension period from SSP
  • Pre-AIPA QS - US patent can obtain prior art date wen NSA fulfills 371(c) reqt's. Remember, for Pre-AIPA, US Patent publications do NOT have a prior art date.
  • 102(g) req't.s for ex-parte rejection.
  • Claim w/ elements ABCD. add ABCDE , then remove A leaving only BCDE: perfectly fine if supported by original disclosure
  • QS of 103 elements.
  • No patent term extension
  • No jurisdiction - invalidity/validity question
  • correspondence received by FAX, Express Mail, Cert of Mailing: know which documents can be filed with what mailing method
  • Know how to overcome all types of double patenting rejections
  • I got the 147 claims question
  • PCT: three or four. One threw in something about the Demand for Preliminary Examination, although it’s not clear to me that it was at all relevant to the question asked.
  • I think every single one had to do with a PCT app being filed before 11/29/2000! And most of them threw in facts about the PCT app claiming priority to a foreign app.
  • PCT: The examiner or applicant may, after the filing of a demand and during the time limit for reply to the written opinion, request a telephone or personal interview. Only one interview is a matter of right, whether by telephone or in person. Additional interviews may be authorized by the examiner in a particular international application where such additional interview may be helpful to advance the international preliminary examination procedure.
  • I had two PCT questions which are not mentioned here: 1) One question asked when is the last time you can amend and what can you amend(article 34 versus article 19) 2) a Signature requirement question under PCT - who can sign assignee or attorney of record (Box No. IA)
  • A variation of the PCT Box No. IX question. The fact pattern is about a PCT application having 4 applicants, inventor A, B, C, and the owner (a company) X. The power of attorney is given to a registered practitioner. The question is whether if the attorney can sign under Box No. IX. The answer I chose was that the attorney at record can sign, and a separate power of attorney is not necessary. See MPEP 1820: SIGNATURE OF APPLICANT OR AGENT: The international application may be signed by an agent**>. For international applications having an international filing date on or after January 1, 2004, the requirement for the submission of a separate power of attorney may be waived by the receiving Office. The United States Receiving Office will, in most cases, waive the requirement for a separate power of attorney. Not sure if it is correct though. 
  * I got this question also on 11/3/06 - I don't know what the answer is because the MPEP infers that the power of atty must still be granted by at least one inventor, if the inventor speaks for the others.  Tricky stuff.
  • Lots and Lots of reissue/reexamination question. Not so many PCT stuff. Several 2100 questions required look up word for word. A variation of the lip balm question regarding some kind of protective paint under a boat, any way, very similar.
  • One question have a fact pattern like if a examiner non-finally rejected an application 4 times based on the same ground and just incorporated by reference the previous rejection, which statement is proper. I chose only the first one is proper because you can not incorporate by reference a document that in turn incorporate the same material.
  • One question regarding how trade secrete and other protective material can be submitted. See 724.02. must be clearly labeled as such and be filed in a sealed, clearly labeled, envelope or container. the envelope or container, as well as each of the documents or items, must be labeled with complete identifying information for the file to which it is directed, including the Office or area to which the envelope or container is directed. The envelope or container must be accompanied by a transmittal letter which also contains the same identifying information as the envelope or container.
  • A question similar to 2003 October AM Exam's Q13 re small entity fees.
  • A question similar to 2003 October AM Exam's Q12 re assignment and access.
  • A question similar to 2003 October AM Exam's Q19 re overcoming a Section 102 rejection.
  • A question similar to 2003 October PM Exam's Q21 re what a fully responsive reply to a non-final OA rejecting the claims under Sections 102/103 is.
  • A question re common ownership and prior art exclusion.
  • A question re how an examiner can make a rejection for fraud during prosecution.
  • A question re a Section 103 rejection in which one of the two references was authored by the applicant.
  • A question re actual measurement of a prior art drawing to overcome the prior art that does not specify any size being of little value.
  • A question re what information and when the examiner can request from the applicant to find the right prior art.
  • A question re what can be faxed and what not (including a divisional application in the choices).
  • A question re from which date the extension period is counted when a reply is submitted within 2 months from the final OA and an AA is mailed within the 3 month period.
  • A question re Section 102(b): offer to sale can be a statutory bar even if the offer was rejected.
  • A question re Section 103 rejections: the equivalency must be recognized in the prior art, and cannot be based on applicant's disclosure.
  • A few questions on protests by third parties.
  • Three PCT questions where US is the receiving office and the PCT application is filed by a non-US citizen and/or in a non-English language by those from (1) Costa Rica, (2) Sweden, or (3) Germany, respectively.
  • A question re Spanish Phone with a twist (what the effect of filing a CIP after one year from the first filing date is, or something... although I may have missed the issue here ...).
  • A question re submission of information by a third party: must not include any explanation.
  • A question re PCT applications and the 30 month deadline.
  • A question re access to a redacted copy of an application.
  • A question re examiner's official notice outside the record in a 103 rejection where the facts asserted to be well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known.
  • A question re appeal: new ground of rejection where an applicant chooses to both (a) reopen prosecution for some claims, and (b) request rehearing for the rest, and what would the examiner and the board do? ---> I think according to the MPEP, the examiner first examines (a) only and the board later decides on (b).
  • A question re MPEP 2143.01: "There are three possible sources for a motivation to combine references: the nature of the problem to be solved, the teachings of the prior art, and the knowledge of persons of ordinary skill in the art." In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457-58 (Fed. Cir. 1998). The question asks you to select these sources for a motivation to combine references and the choices include a wrong source, "level of skill in the art".
  • A question re that reexaminations terminated can be revived if unavoidable or unintentional.
  • A question re the written description requirement being separate and distinct from the enablement requirement.
  • A question re filing of an RCE after filing of a notice of appeal being treated as a request to withdraw the appeal and reopen prosecution regardless of whether the RCE is proper or not.
  • A question re correction of a typo error in the inventor's name: should you submit an application data sheet or call the examiner or what?
  • A question re appeal: new ground of rejection--->reopen prosecution--->if amended and allowed to overcome both the new ground of rejection and the previously board-affirmed rejection, will the board reconsider the examiner's decision made in the reopened prosecution?
  • A question re a multiplicity rejection when there are too many claims.
  • Two questions requiring the Section 102(e) chart to figure out the 102(e) dates for applications involving PCT.
  • Some IDS questions I haven't seen before. One was related to the PTO forms used for IDS.
  • A question re correction of errors in a PCT application: (a) an "obvious" spelling mistake, (b) missing drawing supported by a priority claimed application or something, (c) missing page of the description supported by a priority claimed application or something... Can you correct any of these?
  • A question re a claim reciting compositions: if one of the compositions is disclosed by prior art, the prior art anticipates the claim.
  • A question re whether a chemical formula must be disclosed to claim a new compound, or something like that... .
  • Quite a few questions re means-plus-function claims: one was on the function-way-result test, another was on when a claim is presumed to be a means-plus-function (or step-plus-function) claim (e.g. how about means for ... ing, means which ... (without reciting a structure), step for ... ing, step of ...).
  • A question similar to the “transparent layer and adhesive layer being in continuous contact with each other ...” past exam question, with modified facts and answer choices.
  • A question re patent term of an international application (MPEP 2701).
  • A question re MPEP 2286 (Ex Parte Reexamination and Litigation Proceedings) with a twist.
  • A question re correction of inventorship where not all parties are in agreement.
  • A question re amendments to the reissue dependent claims not broadening the scope of the invention.
  • A question re the oath or declaration in a reissue application: must claim foreign priority even if the priority claim was made in the original patent.
  • A few questions re death of inventor with more twist (MPEP 409.01): one question where there are joint inventors 409.03(a).
  • A question re accessibility of assignment records (MPEP 301.01): if an assignment document contains two of more items, any one of which, if alone, would be open to public inspection, then the entire document will be open.
  • A question re a reply to a new ground of rejection by the Board: the two-month period cannot be extended and the new ground of rejection shall not be considered final for judicial review.
  • A question re new matter: 132 objection and 112 rejection.
  • Just took the exam 11/3/06 - Quite a few questions on PCT and international applications, covering priority dates (both establishing and whether you can refer back to the original foreign filing). A number of questions on reissue and reexamination - study that stuff hard a lot! I was thrown off on a question about fraud, inequitable conduct - the question asked which of the fact patterns was in agreement with MPEP policies. Two of the answers had to do with reissues, two with protests and one with reexamination - they all looked legitimate to me.
  • A question about a titanium baseball and what constitutes publication. I think it was when the publication was finally indexed and made available to the public in the museum library (the last date).the date of July 4th, the date when the publication was available in the catalog and on the shelf (July 4th).

I disagree; the inventor does not have control over the baseball once it is shown to the museum patrons. This is distinguished from the Moleculon Research case b/c the inventor retained control over what happened to it in that instance.

  • I had a question about a reexamination certificate that is answered in 37 CFR 1.570(d), so remember to look in the CFR.
  • 8/23/07 - I had a question regarding priority. A patent application properly claims the benefit of a prior application EXCEPT when the prior application is: design, national stage, CPA, provisional, (don't remember other).
  • Had a question regarding what sheet an assignee could sign BEFORE submitting proof it is the assignee in the application. Answer: Small Entity Status Claim (509.03)
  • Had a question on PCT file submission. Part of the spec is missing, and applicant gets an invitation to correct giving 1 month to reply. However, only two weeks remain until the 1-year-mark from the app he's claiming priority to. He must file the spec within two weeks, as no filing date is granted until he cures the error. PCT Rule 26.2; MPEP 1810
  • Fraud and inequitable conduct - when is it properly raised? Normally, only a clear admission of the applicant can be used as evidence of fraud. However, an examiner's personal knowledge of a judicial decision finding fraud on the part of the applicant in prosecuting the patent application CAN be taken as evidence of such. MPEP chapter 2000. A third party cannot raise fraud issues in a reexam, nor in a reissue (particularly since a third party cannot file a reissue).
  • 10/16/07 (took and passed, many thanks to everyone who has posted before) - I had a question on what "Rapidity with which inventions are made" can be used for, and the answer was state of the art. 2141.03 Level of Ordinary Skill in the Art.

I had many appeal, reexam, reissue questions, even more than PCT questions. The appeal questions were often when the Board states a new ground. One question was about if/when it is returned to the board. See:

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. 1214.01 Procedure Following New Ground of Rejection by Board.

One question was regarding when an applicant requests rehearing and re-open prosecution.

If an appellant files an appropriate amendment or **>new evidence< (see paragraph I below) as to less than all of the claims rejected by the Board under 37 CFR *>41.50(b)<, and a request for rehearing (see paragraph II below) as to the remainder of the claims so rejected, the examiner will not consider the claims for which rehearing was requested. The request for rehearing will be considered by the Board after prosecution before the examiner with respect to the first group of claims is terminated. Argument as to any of the claims rejected by the Board which is not accompanied by an appropriate amendment or **>new evidence< as to those claims will be treated as a request for rehearing as to those claims. 1214.01 Procedure Following New Ground of Rejection by Board.

One question was regarding requesting an extension after an examiner's answer - I could not find this one.

Regarding Titanium Baseball - I went with the day the inventor turned it over to the museum. The question made it sound like the museum requested it, and the inventor handed it over without conditions/or concern.

Lastly, from what I can remember, there was a Tommie and Jo question that is on one of the old exams - I think it tangentially relates to correcting inventorship.

One question about 1 independent claim and 984(?) dependent claims that were repetitious. What should examiner do? One answer choice was whether examiner will ask applicant to resubmit claims or something like that. Another was for examiner to reject as being prolix. yet another choice was that examiner will select the 1st 20 since the fees cover that. (1/11/08)

I just took the patent bar and passed on my first try. This website has been really helpful to me, so I guess it is time for me to make my contribution.

I went in there expecting to see no more than 5 repeats, but it turns out that I saw around 20 or even more repeats on the exam. So make sure you know the answers to the 02 and 03 exams!!! I did the 02 and 01 exams too. But what really helped was going through this website and the post on interpolaw. I also spent the day before the exam going through all 200 questions in the April and October 03 exams and memorize the questions that I was not able to find answers for.

Spanish phone - variation

Aroma Kit

What an assignee not of record can sign - small entity status statement.

a question with the answer "document affecting title" (this one and the assignee question above are just questions that I still have no idea where to look up, but I just memorized the answers)


PCT priority date questions

electric lamp with switches on different places, but I vaguely remember seeing John White's comment that they give credit to answer A, which is the making the argument that the prior art does not disclose an electric power outlet or something like that

Make sure you know how to calculate the PCT priority dates and correction of inventorship!

many appeal questions - mostly new ground in board's rejection

Two joint inventors jointly appoints a practitioner to file their patent application. Then one dies, whether the practitioner needs to obtain new power of attorney from heir of the deceased inventor

Potter question

priority dates in CIP application - claims 1-10 supported by original parent application but claims 11-20 are not. There is a prior art reference after the filing date of the parent application but before the CIP application. So the examiner can only reject claims 11-20 but not claim 1-10.

Mirror question

I had two 102(e) question as well as questions disqualifying prior art for common ownership under 103

Also whether you can use fax to submit CPA/RCE

request/requirement for information - examiner can request for information reasonably necessary for examination

A new question - in a reissue application, you want to 1) broaden the claims, and 2) delete an inventor. The question is whether the inventor being deleted needs to sign the oath for reissue application. The right answer is no.

Costa Rico question - the USPTO will accord an International filing date for the application and forward the application to IB. Actually I had two questions, the other question is identical except that the applicants are all German nationals.

150 v. 300 F question

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