Q) Incorporation by Reference (4.03.40p)

by admin on April 8, 2010 · 4 comments

in Uncategorized

Recent test takers report question #40 from the October 2003 (pm) exam is in the Patent Bar database of tested questions.


40. Which of the following is not a proper incorporation by reference in an application prior to allowance according to the USPTO rules and the procedures set forth in the MPEP?
(A) Incorporating material necessary to describe the best mode of the claimed invention by reference to a commonly owned, abandoned U.S. application that is less than 20 years old.
(B) Incorporating non-essential material by reference to a prior filed, commonly owned pending U.S. application.
(C) Incorporating material that is necessary to provide an enabling disclosure of the claimed invention by reference to a U.S. patent.


ANSWER: (D) is the correct answer. See MPEP § 608.01(p). (A) is incorrect because abandoned applications less than 20 years old can be incorporated by reference to the same extent as copending applications. (B) is incorrect because non-essential material may be incorporated by reference to patents or applications published by the United States. (C) is incorrect because material necessary to provide an enabling disclosure is essential material, which may be incorporated by reference to a U.S. patent. (E) is incorrect because non-essential material may be incorporated by reference to a U.S. patent which incorporates essential material.
(D) Incorporating non-essential material by reference to a hyperlink.
(E) Incorporating material indicating the background of the invention by reference to a U.S. patent which incorporates essential material.

{ 4 comments… read them below or add one }

1 PeterNo Gravatar April 10, 2010 at 2:49 pm

D & E are missing from the question. Here is the whole question:

40. Which of the following is not a proper incorporation by reference in an application prior to allowance according to the USPTO rules and the procedures set forth in the MPEP?

(A) Incorporating material necessary to describe the best mode of the claimed invention by reference to a commonly owned, abandoned U.S. application that is less than 20 years old.

(B) Incorporating non-essential material by reference to a prior filed, commonly owned pending U.S. application.

(C) Incorporating material that is necessary to provide an enabling disclosure of the claimed invention by reference to a U.S. patent.

(D) Incorporating non-essential material by reference to a hyperlink.

(E) Incorporating material indicating the background of the invention by reference to a U.S. patent which incorporates essential material.

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2 MirandaNo Gravatar March 31, 2012 at 1:36 pm

I agree that (D) is the most correct answer, but wouldn’t (A) also be improper since the fact pattern doesn’t state whether or not the patent application was published prior to being abandoned? CFR 1.57(c) states that essential material that can be ICR only via US patent or US patent application publication, correct? and best mode description would be essential

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3 SolNo Gravatar April 2, 2012 at 2:25 am

I share the same concern with (A), published or not?

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4 GDBNo Gravatar April 14, 2012 at 2:58 pm

See 608.01(p) under I. Incorporation by reference, 37 CFR 1.57 (d)

“(d) Other material (“Nonessential material”) may be incorporated by reference to U.S. patents, U.S. patent application publications, foreign patents, foreign published applications, prior and concurrently filed commonly owned U.S. applications, or non-patent publications. An incorporation by reference by hyperlink or other form of browser executable code is not permitted.”

Also, in the same section of the MPEP (Incorporation by reference)
“in In re Fouche, 439 F.2d 1237, 169 USPQ 429 (CCPA 1971) (Abandoned applications less than 20 years old can be incorporated by reference to the same extent as copending applications”

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