Exam Questions and Concepts
Recent test takers indicate that the following “new” questions are in the USPTO’s database servicing the Prometric Patent Bar Exam. Please also note commonly repeated questions and old exams.
Q1) Red or Black Ink (Examiner’s Amendment)
Q2) Titanium Baseball (Pulic Use/Printed Publication)
Q3) Mirror (Inherent Function)
Q4) Submitting Tables on CD-ROM
Q5) Amending the Abstract – PCT
Q6) Obviousness
Q7) Claiming, Deleting and Reclaiming Benefit Claim
Q8) Missing Parts – PCT
Q9) Correcting PCT Applications
Q10) Suspended Practitioner
Q11) Digital Media for Gene Sequence – Biotechnology
Q12) 1.131 and 1.132 Affidavits
Q13) International Search Reports – PCT
Q14) Costa Rica and Sweeden – PCT
Q15) Spanish Phone – Design
Q16) Lip Gloss/Ship Bell (Experimental Use)
Q17) Velcro (Trademarks in Claims)
Q18) Small Entity Status
Q19) Mexican Nationals – PCT
Q20) Information requested from USPTO
Q21) Trade Secret Question
Q22) Germany – PCT / Patent Term
Q23) Broom
Q24) Japanese Patent
Q25) Electric Fan
Q26) Maintenance Fee Paid / Check Returned
Q27) Reissue (variant of Tommie and Jo)
Q28) Means plus Function variant of Door Handle (Determining Equivalence)
Q29) Death of inventor before application is filed
Q30) Canadian Patent Agent in the USA
Q31) Chemical Claim
Q32) User Pass
Q33) Indefinate Claim USing ‘High’
Q34) Investigating Deceptive Intent
Q35) 2 Month Rule for Final Office Action
Q36) Notice of Appeal
Q37) Terminal Disclaimer
Q38) Piecemeal
Q39) Advisory Action
Q40) Assignment
Q41) Documents Requiring Signatures
Q42) Missing parts in PCT Application (30 days)
Q49) Rejection after Allowance
Q50) Appeals
Q51) Best Mode
Q52) Multiplicity
Q53) Reissue/Filing Amendment
Q54) Australia (30 Month) – PCT
Q55) Basic filing fee
Q56) Restriction Requirement / Continuation Application
Q57) 102(a): Need to file foreign language translation
Q58) Exam Concept – Appeal
Q59) PTO-892
Q60) Anticipation
Q61) PCT Publication
Q62) 102 and 103 Rejections
Q63) TP Submissions
Q64) Restriction
Q65) CPA
Q66) Claims
Q67) Obviousness
Q68) Hydrocyclone
{ 161 comments… read them below or add one }
Hi all,
Thanks for putting this one together.
My test at Prometric here in Lowell, MA, will be Monday, Dec 17th. I mainly work with the PLI material and also took their class.
When did you start this web site? Have not seen it before.
Regards,
Rolf Seichter
978-852-5803
From the Forum: “Future test takers should be very deliberate in reading answers that appear to be quotes from the MPEP. I found at least 3 instances where the answer was a long word for word quote of a case holding, but differing by one or two words toward the end of the quote. Someone working quickly would likely fall into the trap of reading the first couple of lines and assuming that they had found the right answer. I’m a bit fuzzy on detail right now, but in one example it was a 3-4 line quote and the end of the answer used ‘anticipation’ whereas the holding in the MPEP used ‘obviousness.’”
Just thought you should know that the exam simulator from Soft Area 51 shows to be from Catprep when you attempt to download it.
Other than that, GREAT WEBSITE! Hopefully it will be of use to me in the last week I have before the exam.
I really benefited from using this website and passed yesterday! Thanks for your help!
Thanks for putting this together! I’ve been practicing law for many years, spent hundreds of hours studying, and reviewed hundreds upon hundreds of questions – but NOT old exams. The result? I failed the test (62%) and need to take it again — though I had noticed how many exam questions had been repeated after the fact!
The upshot? Review old exams ad nauseam — and remember that the USPTO’s goal is to trick test-takers — not to test them on basic, fundamentals. Indeed, the test is sadly not a measure of what you know at all; it’s an entry barrier in its purest form
Warmest thanks again!
I passed the exam yesterday May 3, 2008 in Glastonbury CT.
First I would like to thank everyone for putting together this wonderful website and especially for the one who initiated it.
It was of tremendous help besides the PRG course.
Here are some of the repeat questions I had:
Oct 01 AM
5 14 24
Apr 02 AM
50
Oct 02 AM
1 version 21
Oct 02 PM
5 version 16 version
Apr 03 Am
2 8 22 30 31 37 44
Apr 03 PM
3 version 11 12 16 28 32
Oct 03 AM
4 6 version 7 8 9 22 23 36 44 50
Oct 03 PM
2 4 10 13 14 17 32 38 40 43
also
hairgel
mirror
4-5 PCT questions general stuff until when you can add the benefit of the priority date, 102e dates
Indefinite Claim using ‘high’
Maintenance Fee Paid
primary reference in 102
non-signing inventor (can file his own patent and then interfere something like that)
the lip gloss kissing
a version of Einstein ex prate vs. inter parts
Spanish phone design question variant 102d
2 month rule for final office action
Number of Rejections Required for Appeal purposes when count from parent to continuation
Claim of priority to Japanese national app to overcome prior art
How /when to claim benefit
Restriction Requirement / Continuation Application
Appeal: New ground of rejection
Reissue/Filing Amendment
best mode question
supplement oath in reissue
I think that you have to really know the exams from the past 2 years.
You can search the MPEP by chapter (so you have to know where to find the answer) or you can search the index of all the chapters. You have the “find” and “find again” option. the MPEP text is pretty small which can be hard to read. You can move around the window.
For the questions I wasn’t sure such as: what is in accordance with the MPEP rules or what is not in accordance or questions type ….except
I knew in what chapter to look and I typed the main word in “find” and I got the answer they were looking for.
The first 50 questions I answered in 1 hour so I had 2 hours to review and correct.
The other 50 I did in 2 hours and had 1 hour to review and correct.
I had a 60 minutes break which starts immediately after the first 3 hours. I went in my car had a bite to eat and reviewed the 2003/2002 exams with answers. This really really helped.
Good Luck to everyone!
And thank you again for everyone’s advices and posts!
“Several questions were new, and a surprising number were ambiguously written. Disproportionately weighted subject matter was: actions during appeal (i.e. reply briefs, transfer from appeal back to prosecution, action by you and action by examiner after appeal); restriction requirements; broadening reissue (see below); PCT (several questions covered proper claims for benefit of priority of PCT application in fact patterns with complex foreign, international, and US priority situations, and the effect of such complicated applications as prior art under 102(e); questions (as usual) about filing date, especially when applications were filed with missing parts; and a surprising number of questions about appropriate actions to be taken in the event of deceased or incapacitated inventors. I’d suggest drilling on this last topic, covered in MPEP 400, but its so easy to find during the exam you shouldn’t bother memorizing it. Instead, memorize the Oct 2003 exam. You will be glad you did.”
I took it today and passed. As others have said, few repeats, lots of PCT (in the afternoon) and appeals. Two, almost identical, questions on what to do when the Board enters a new ground of rejection, as in what the examiner does after that.
Regarding the search function, if you enter in a string of words, it will search for that exact string, and you don’t need quotation marks. I found this especially helpful with the questions asked in the negative, where you have to find which phrase was untrue. If you could search for a block for 4 or so words in the appropriate MPEP section, you would likely find the paragraph that listed all the answers, absent the one that was ‘wrong.’
Regardless of the fact there were so few repeats, I found it very helpful to have done almost all the old exams, as it starts to make things pop out as right or wrong. Learn to spot the questions where you can just search the relevant section of the MPEP for the paragraph with a list of the answers (‘Which of the following is NOT a criterion for determining xxxx)
As mentioned above, some questions about correcting a request for priority in a PCT application, one where the patent # referenced as the priority app was correct, but the date wrong, and you needed to determine the latest date by which the priority could be corrected. I believe it is the correct priority date + 16 months, (the 4 month alternative didn’t come into play).
Not sure where to put this. I took the exam today and passed. I did a ton of old questions. However, I would say there were only about 15 repeats on the test. I know there were only 6 in the morning. Appeal, reissue, reexamination, and PCT were hit hard. There were also quite a few questions on missing drawings. I still recommend doing old questions as the best way to study. The repeats gave me plenty of time to look up the ones I did not know.
Just passed today. First of all, don’t do like me and get yourself all worked up over the posts (here and the intelproplaw forum) from the last week or two saying “few repeats”, etc. While there may not have been all that many word-for-word repeats, the test was still very manageable. So long as you have done those exams from the past couple of years and know why the answers are what they are, and looked at the new questions people have posted here/patentbarquestions/intelproplaw, you should be fine. The questions all came from those areas of the MPEP, nothing all that obscure (unless it was a question someone mentioned which was obscure, which we know where to go for that). While I didn’t have much time to screw around, there was plenty to look up what I didn’t know for certain.
By the end of each section there was maybe 5 questions I didn’t know for sure I had the right answer, but still had a pretty good feeling.
I’m going to try and remember what all was on mine and post it here soon, but off the top of my head it seems very similar to those which people posted about over the past month or so.
(Disclaimer: While my exam was similar to those discussed recently, I’m sure those that posted about having a much more difficult version were correct in their assessment. But still it didn’t do me any good to worry myself, and looking back I shouldn’t have, they can’t change the exam that rapidly. Just be prepared for the topics discussed and have a general idea of where to look in the MPEP for things, it’s not like we can memorize that whole thing.)
Hi everybody,
I took the exam day before yesterday and missed by three points. Although, I don’t remember many questions other than those that people are already aware of from discussions (but see below), there were certain areas that I found were tested far more heavily than I had expected.
This was particularly striking because some commercial aids courses emphasize that greater than 80% of the questions come from Chapters 600, 700 and 2100. Although this was fairly accurate description of old exams, this is not at all true now. The portions that were tested very heavily were:
1) Chapter 300 – ownership and assignment, specifically assignment;
2) Other somewhat unexpected material were, “Requirement for information”, “protest”
3) As expected RCE figured as part of many questions.
4) From chapter 2100, the only thing really tested was “Obviousness” – many questions with quite confusing choices.
5) Just to confirm, there were the following questions
(i) hairgel question (prior art); lip gloss question.
(ii) claim counting question whose answer is 147,
(iii) the question where one inventor refuses to file with the other and each inventor has independent set of claims; what should the assignee do? file divisional reissues? I thought that none of the choices were correct.
(iv)There were one or two alloy questions.
(v) There was a question that appeared to test what is required for a range to be anticipated. Is a data point in one region enough or does one need points across the entire range? MPEP has some discussion about a a trend being sufficient. I thought that is what was being tested, but a trend requires more than one specific region to be tested.
(vi) there were probably two questions on “means plus” – testing I believe the concept of “equivalence”.
(vii) There was that question which tests what the Board can or cannot remand the examiner to do.
(viii)There was the question which asked whether the decision of the CAFC that upheld the validity of a claim would be binding on the patent office or not.
(ix)There were two questions that tested what a final rejection was in the context of continuations.
(x) there was a question about missing pages in the specification
(xi)There was that question about the painkilling effect of the compound Z. The application was for an intermediate. Z posseses anti cancer properties, which somehow is considered to be “incredible utility” by the patent office
(xii) There was one question that asked what the appropriate course of action would be if the patent for which the maintenence fee was being paid was not properly identified.
(xiii) There was one question about requirements for recording
(xix) No Moondust question. No Lancer toothbrush question.
(XX) I think that question about 150 versus 300 F where the correct answer has to do with an affidavit was there.
(XXi) No question on patent term extension and adjustment.
(XXii) No question testing knowledge of CPA
(xxiii) I think they had the small entity question where the small entity was claimed in error, a good faith mistake, and hence what should the applicant do?
Anyway, this is all I remember. I greatly appreciate the contributions of everybody. Thanks.
Sanjeev
Thank you very much for this website. Great resources!
where are the questions 43 to 48?
Sam
12/11/08
Took the exam this morning at prometric and PASSED!. I was only scoring around 65-70% on the prior released exams-however i did guess quite often as lookup on my little laptop was a pain. I also only took/practiced the 2003 exams, however i did read through all the questions on this site as well as patentbarquestions, one time each. I also used the PLI audio course.
I estimate that i got about 10-15 verbatim repeat questions that in each section. There were also a couple of questions that were looking for what is NOT in accordance with the MPEP although in prior exams they were looking for the one answer in accordance with the MPEP. I also concur with other posters that there are quite a few PCT questions that i received in the afternoon section. Happily, the PCT questions were the same ones mentioned on this site.
Specifics that I can recall,
Tribell
mirror question
quite a few questions on what happens after board gives new ground of rejection
quite a few questions on death of inventor
two nearly identical questions about swedish inventors and costa ricans question
Japan 45 days
obviousness based on ranges-34.9 versus 35
also had the spanish phone design question. however, it was changed such that the right answer is no longer “give up”. this was NOT one of the answer choices.
There were plenty of repeats to make time management not an issue and i was able to look up every question rather effectively. This test is extremely manageable. Good Luck to all future test takers!
also, question on Suspended Practicioner, Piecemeal Examination, Australian application files a PCT within 30 months but claims priorty in oath and declaration and not in the specification (althou, this cite says expiratin of 30 months),combination /subcombination, 112 6th paragraph “means for” “step for”
this website is extremely helpful. keep up with it.
1
http://1 | 202.75.39.100
1…
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From Repeat Questions, 2008/11/11 at 8:26 AM
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upnorthguy
feb2008barexam@gmail.com | 65.207.2.2
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.
From Exam Questions and Concepts, 2008/11/05 at 10:55 AM
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Mars Caterpillar
fuduan_zju@hotmail.com | 24.148.77.248
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
From Exam Questions and Concepts, 2008/10/22 at 9:20 PM
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emerson
sganow@msn.com | 99.138.183.213
In the original post, why 30 days when 20.5 and 20.6 defer to 20.7 which states “two months from the date of the invitation.” (a (i) and a(ii)
From Q) Missing Parts (30 days) – PCT, 2008/10/21 at 2:39 PM
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hblyxnmk
http://www.google.com/search?q=ykfkuzqz | 211.75.183.109
hblyxnmk…
hblyxnmk…
From Repeat Questions, 2008/09/26 at 1:43 AM
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Testtaker
tnjones@iupui.edu | 38.115.157.133
How do you subscribe to this blog to get access to the old exams and answers? I signed up for Wordpress but that obviously wasn’t enough.
From Old Exams, 2008/09/23 at 10:37 AM
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Toxidyne
nwitchey@yahoo.com | 70.181.95.194
I took and passed this exam today (about 1 hour ago).
This site proved most helpful both due to listing repeat questions as well as listing new questions that have been encountered.
The repeat questions I had are already listed.
New questions included the following:
- Mirror question
- Piecemeal examination
- PTO-892
- Appeals (MANY ON APEALS ESPECIALLY ON NEW GROUNDS)
- Spanish Phone
- Sweden, Germany, and Costa Rican (Germany and Costa Rica were identical.
- There were three questions on death of inventor at various time.
A likely beta question included one with regards to Accelerated Examination as opposed to petition to make special (see 708.02 in new MPEP).
With respect to appeals, there were three questions specifically related to an appellant filing amendments to overcome a new ground of rejection give by the board.
From Study Guide, 2008/09/08 at 7:22 PM
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upnorthguy
feb2008barexam@gmail.com | 65.207.2.2
Eunzukim-
Yes, only 90 questions are graded. You only need 63 correct out of the 90 (still 70%, just like the old requirement of 70 correct out of 100).
See http://www.uspto.gov/web/offices/dcom/olia/oed/unofres19aug05.htm:
“As previously announced, as of June 9, 2005 the registration examination is using the Eighth Edition, Revision 2 of the Manual of Patent Examining Procedure (MPEP). The computer-delivered examinations include 100 multiple-choice questions, and only ninety of the questions will be scored. Accordingly, to pass the examination a candidate must correctly answer seventy percent (sixty-three) of the ninety scored questions. Each of the scored questions has been used on previous examinations forms and had been psychometrically analyzed to ensure the question provides a useful assessment of a candidate’s legal qualifications.”
The beta questions do not count towards your score, but it is difficult if not impossible to to tell which questions they are (like the beta questions on the MBE for those law students out there) so you just end up answering all 100 questions (hoping that 10 of your incorrect ones are the beta questions!).
From Prometric Patent Bar, 2008/09/05 at 8:44 AM
Thanks for this site guys! Looking at the old questions here definitely helped me. My test (Feb 2009) had surprisingly many questions about the following topics: Appeal details, e.g. Board enters new rejection, PCT (in combination with priority claim complications, e.g. including provisional applications), non-obviousness, assignment (esp. vs dead inventors), what you can’t fax, reissue or cert. of correction.
My recommendation for test takers: keep repeating the 2002 and 2003 exams until you get 95% on all of them because the majority of your questions will be repeats (or obvious variations).
Good luck!
Thanks to this site, I took the test 2/10 and passed the first try.
Some notes I noticed if I could help others are…..
1.like everyone else says, the 03′ 02 repeats are SUPER IMPORTANT. You should also study the 01, and 00 if you want to make your test successrate go up. Good 30% or more could have been a repeats or variations, but just don’t only depend on that to pass since you will definately not.
2.I took the course from Patentbar.com
3.I noticed that my first half was a disaster. But don’t get discouraged because I remember other person saying there were many wacky and never seen type problems in the first half too.
May be it is possible many of the 10 Beta questions are chunked together. The second half for me was WAAY easier and there were little tricky problems. Marked like 25 problems in the first half of the test, but only market 12-17 problems in the second half.
4.I did not rush through the exam. I studied enough so that when the subject matter I don’t know came up, I knew not to look too long in the MPEP until I skip. Didn’t even use the scratch note and paper at all.I spent good 2-7minutes a problems. If I was sure I can find the answer, I may even have spent little longer near end of a session since even 1 % could make diff between pass/fail. I noticed rechecking after finishing for me during practice didn’t make that much of a difference. Trusted first guts.
I took and passed the test about a week ago, and will post various comments under those sections to which I believe they likely relate.
There were TONS of questions on reexam, reissue, and appeal. Quite a bit on the PCT, though not unexpectedly so. Those first 3 were a very large portion of the test, and I am positive that a review of only the PLI materials would not have permitted me to pass.
There were also a ton of questions from the Oct 2003 exam — make sure you know those.
Here are the known questions that I am pretty sure were on my test:
- Mirror
- PCT app in wrong office (3 questions on this)
- Door handle
- 2 month rule
- PTO-892
- Multiplicity
- Signing small entity request by non-owner
- Death of inventor / who can proceed with prosecution
- Requesting refunds
- Divisional reissue
I’m pretty sure that there were a few others, but these are ones I’m nearly certain were on the test.
Thank you for the excellent website.
Just a quick question to Matt B., what other materials did you use to study reexam/reissue/appeal (other than PLI)? Thanks your help!
I did extra questions on with the PLI software on reexam/reissue/appeal/PCT, just because I knew they would be under-represented in the old tests. Beyond the PLI materials, I read the outlines on this website for each those topics, probably two or three times each. I also read through the “key things to know” from patentbarquestions.com.
I did not read the MPEP on these (or any other) topics; although I can’t say that I would advise against it, I just didn’t think I personally needed to. I did read various sections of the MPEP on the most important stuff, like 102 and obviousness, but it was probably less than 50 pages total. However, if I was taking the test again, I would definitely read more of the MPEP on those newly important topics.
I also went through ALL the reported questions on both this site and patentbarquestions.com. Many of these questions were on the exams, and I am confident I would not have passed had I not studied these questions. As a bonus to going through them, there will be a few that are automatic answers that will save you 3 minutes, giving you extra time to look up the answers on the ones you aren’t familiar with.
There was a question about a date format mistake for PCT applications.
Application was filed on 01/04/2002. The applicant received a notice from the Office that application number 10/123456 as provided by the applicant did not match the PCT filing date of 04/01/2002 and that the applicant must make amendments to parts of the application.
What is last date till which the applicant can make amendments to the PCT app.
My understanding was that the MM/DD was swapped with DD/MM.
TO the question of “MM/DD was swapped with DD/MM”, i believe that i had seen similar report somewhere in this website, but just couldn’t find it any more. Can anybody remind me please? thank you.
Had a Protest Question on my exam today:
-Guy wanted to file a protest basted on public use or on-sale (ok per protest) but the application alread published but the 1st office action had not yet been received.
Will office “consider” protest? I got caught up on the when the MPEP says (not verbatim) protests will be entertained by office when either app is not published or notice of allowance is given, whichever happens earlier.
My brain crashed on the word ‘earlier’ and all the anwers looked like the lawyers face in ‘fear and loathing’ after he took the adrenal gland but one of the answers that I chose had to do with them not accepting it (I think) but there being a potential for them to still consider it. Another answer said they would do nothing.
1901.04 WHEN SHOULD THE PROTEST BE SUMBITTED
Except where a protest is accompanied by the written consent of the applicant . . ., a protest . . . must be submitted prior to the date the application was published . . .or the mailing of a notice of allowance . . ., whichever occurs first, and the application must be pending when the protest and application file are brought before the examiner in order to be ensured of consideration.
A protest submitted after the mailing of the notice of allowance will not knowingly be ignored if the protest includes prior art documents which clearly anticipate or clearly render obvious one or more claims. However, the likelihood of consideration of a protest decreases as the patent date approaches.
1901.06(V) PROTEST FILED AFTER ALLOWANCE
OR THE PUBLICATION OF THE APPLICATION
A. Without the Written Consent of Applicant<
If the protest is submitted after the publication of the application . . . or the mailing of a notice of allowance . . ., whichever occurs first, and is not accompanied by the written consent of the applicant, it should not be entered in the application file.
MPEP seems ambiguous…on the one hand, 1901.04 seems to say your protest might be considered even if it is late if, e.g., your protest makes a strong case for a 102/103 rejection. But then 1901.06(V) seems to say if you're late and you don't have written consent, your protest doesn't even get entered, let alone "considered" by the examiner.
Had a new counting claims question:
-How many dependent claims for fee calcu purposes. (I guessed
Had a PCT question:
-Pre Nov 29, 2000 (date was like Oct. 15, 2000 and it shook me cause its b/4 11/29)) International filing date so 102e prior art date will be when you enter the National stage and that wont happen until office receives Fee, Oath, Trans and the last thing recieved by office was oath and that was the 102e prior art date.
Had another PCT question:
Same facts as above but the oath came in unsigned and the 30 months had passed and I put that they could not enter the national stage because although the fee was there (no translation needed cause it was an austrailian app i think), the oath was unsigned and the 30 months MAY have passed so be on the look out cause im burt right now n trying
Had another PCT today:
Something about Article 19 amendments and the answers were something like:
a) can only amend claims and must send to Int Bureau or R/O
b)
c) can only amend the claims and must be sent to Internations Bureau (I think I put this one)
Had the exam today. Many, many, many questions on appeal! There were only about 4 questions on PCT.
Other tested topics were: amendments, change of inventorship, change of addresses, Certificate of Mailing, and lots of obviousness questions.
Repeated questions: titanium baseball, lipstick, tribell, broom handle, submitting tables on cd-rom, mexcian national, chemical claim, piecemeal, small entity, best mode, and hydrocyclone. I recall that the discussion for all these questions above was pretty good. But for the CD question I am sure that the correct answer today was: “submission is improper because none of the tables exceeds X pages in length and each CD must be submitted in duplicate”
! Also had moondust, Laurel, Abbot and Hardy, Smith Laminate, Bloc, Smith DRAM, Mr. Brick, and melting point.
Also, there were at least 4 questions on reissue and 3 on reexamination!
….and I passed
Good luck to everyone
NYpatbar,
do you remember any of he appeal questions?
Also, what is the change of address question?
Thank you
Amy:
This is what I can remember on Appeal:
1) Board affirms examiner’s rejection and also enters a new ground of rejection. What is the process from there? Answer: From MPEP 1214 (I) verbatim: “Prosecution before the examiner of the 37 CFR *>41.50(b)41.50(b)< rejection. If the application becomes allowed, the application should not be returned to the Board"
2) There was a question directly from 1214.06 (II)
3) Question on the time period in which appellant can correct a noncompliant appeal brief. All the answers centered around the language in 1205.03. I chose (E) as the correct answer: "1 month or 30 days from the mailing of the notification of non-compliance, whichever is longer, or 2 months from the filing of the notice of appeal, all within the period for response to the office action [which would be 6 months (or 2 + 5 = 7 months)].
4) Question directly from 1211. It asked “Under what situations does the Board have authority to remand to the examiner?” And it listed a couple of choices which are verbatim found in 1211. I chose the answer with ‘all of the above’.
Reexam & Reissue:
1) There was a question that required you to know that a reexam and reissue can be coupled together.
Change of Address:
1) If the inventor’s address is listed incorrectly what can/should be submitted to correct this? Answer choices I narrowed it down to were: supplemental oath and ADS.
Certificate of Mailing:
“What cannot be given a date if sent with a Certificate of Mailing?” — Just go through the list in MPEP 500.
Protest:
There was a question directly from MPEP 1900 Protest. Question stated that the protest was filed after publication and asked what the examiner should do. I answered that “it should not be entered in the application file” from MPEP 1901.06 (V)(A).
1 question asking, “In which of the following circumstances should an examiner NOT use a ‘Reasons for Allowance’? It was one of those questions with I, II, III and you had to choose. The answer is directly in the MPEP if you search for ‘Reasons for Allowance’ in MPEP 700 i think.
2 questions on Certificate of Correction. One of them asked what you should do if you file a reissue after obtaining a certificate of correction in the original patent. I answered that you should include the changes made by the Certificate WITHOUT underlining, etc. when you file the reissue. The other question asked about how to correct an inventor’s name in an issued patent.
I don’t know if this helps because I can’t remember the questions and answer choices, but I am very confident the sections I have listed are the correct references. So, if you just look up those sections, you should be able to recognize the answer quickly.
re: examiner’s reasons for allowance
1302.14
In most cases, the examiner’s actions and the appli-cant’s replies make evident the reasons for allowance, satisfying the “record as a whole” proviso of the rule. This is particularly true when applicant fully complies with 37 CFR 1.111 (b) and (c) and 37 CFR 1.133(b). Thus, where the examiner’s actions clearly point out the reasons for rejection and the applicant’s reply explicitly presents reasons why claims are patentable over the reference, the reasons for allowance are in all probability evident from the record and no statement should be necessary.
When an examiner issues a restriction and the applicant fails to make any election, what is the consequence?
I just do not know the answer.
Can anyone help me to understand the difference between priority and prior art. I believe that this the nub of question #40 of the 10/03-pm exam. What is the 102(e) date of a single patent application filed first in another country, then as a PCT international after 11/29/00 (properly in English and designating the US), and finally in the US, with each application claiming priority from its predecessor? I read the answer to Q40-10/03-pm to say that the effective filing date of this application is that of the foreign filing, and its 102(e) date to be that of the international filing. Is this right?
Thanks, Art Williams
Can anyone help me to understand question #7 on the 10/02-am exam? I read the fact pattern to say that the applicant combined a known material with a known process to obtain a new material with new and useful properties. I read the PTO answer to be inconsistent with the question in saying that the material and its properties cannot be affected by the process, when the question says that they are, in fact, affected.
Thanks, Art Williams
In regards to post #33:
The “prior art” generally refers to the collection of references comprising of patents, patent applications, publications, etc. that deal with the same subject matter of the patent application under examination. The examiner will always compare the patent application under examination with the prior art to see if the invention was already anticipated or rendered obvious.
“Priority” refers to the fact that a later filed patent application may enjoy the benefit of the filing date of a prior filed application if the prior application provides an enabling disclosure for the claims in the second app. What this means is that all the prior art having publication (or sometimes filing) dates before the second app but AFTER the first app are disqualified because they are no longer “prior”. Thus, you always want to shoot for the earliest possible effective filing date by claiming priority so as to decrease the number of references that constitute “prior art” (even if it means shortening the life of your patent).
Remember that eventually the current patent application under examination will ITSELF BECOME PRIOR ART under 102(e) against future patent applications. The date that a patent application becomes prior art is referred to its 102(e) date and MAY BE DIFFERENT FROM THE EFFECTIVE FILING DATE, as is the case for this question.
In this particular question, the fact pattern closely resembles Example 4 in MPEP 706.02(f)I. Since the PCT app was filed after 11/29/00, designated the US, and published in English, the IA filing date is the 102(e) date. However, as you correctly noted, the effective filing date of the application is that of the foreign filing.
Thus, there are 3 dates for every application:
1) The date on which the patent term begins
2) The “antedating” date, i.e. effective filing date
3) The 102(e) date
Sometimes they are same, but most of the time they are not.
As for #7 on the 10/02-am exam, I think the issue is this:
The publication discloses the SAME composition as the patent application (the aluminum and titanium alloy). If the composition is the same, it must be that each product contains the same inherent characteristics. It doesn’t matter whether or not this characteristic is poor ductility or great ductility because the alloy itself is what’s being claimed. Thus, since the material is the same, it doesn’t matter how it was made….it was already anticipated.
Now, the applicant may be able to file a patent for the PROCESS of microstructure refinement (although probably not because it was already well-known), but certainly not for the alloy itself. Incidentally, it is true that “unexpected results” may overcome obvious type rejections, but only if there is ample evidence (not just arguments). However, I think this is an anticipatory type rejection.
Hope this helps….
Duty of disclosure.
Does anyone know whether the following two statements are true?
1, Statements made in information disclosure statements are not binding on an applicant once the patent has issued since the sole purpose of the statement is to satisfy the duty of disclosure before the Office.
2, Since the issue fee has been paid, Al no longer has a duty to disclose to the Office material prior art. He is under no obligation to submit the prior art reference to the Office.
Passed the exam today and wanted to contribute some questions that haven’t made it to this forum. In addition to the usual ones listed above, I encountered the following:
An appeals questions related to filing a second appeal after the first appeal was rejected, and the applicant got rejected after reopening prosecution. Which of the following is correct? (from MPEP 1200 ver batim)
1) If the rejection under 37 CFR *>41.50(b)41.50(b)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.
Answer = 1, 2, and 3 are correct
Another question on who can sign a disclaimer, all of the following are correct except:
A) inventor only where inventor has not assigned
B) inventor + assignee of part interest
C) assignee of part interest
D) assignee of entire interest
E) cannot remember this one
I choose D.
Thanks again to everyone for contributing. You're awesome.
Cindo,
congratulations on your pass. Would you mind eleborate on the appeal question? What are the other answer choices (i.e. 2 and 3)?
Also, why assignee of the entire interest (D) cannot sign terminal disclaimer? Did you mean (C) assignee of part interest?
Thanks.
Sorry, the above question should have read:
An appeals questions related to filing a second appeal after the first appeal was rejected, and the applicant got rejected after reopening prosecution. Which of the following is correct? (from MPEP 1200 ver batim)
1) If the rejection under 37 CFR *>41.50(b)41.50(b)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.
Answer = 1, 2, and 3 are correct
Passed the exam. I had the following questions:
MANY on appeal – 37 CFR 41.50 (b)
Potter (altered, not as in old exams)
Mario Lepieux (also different)
Mirror question
Death of Inventor
Some bizarre question on PTOL 892 (possibly one of the 10 test questions?)
Melting point
MANY on reissue
A few on PCT
Many on obviousness (had to scour chapter 2100 and they were all word-for-word)
Japanese 45 days no FFL
I did not have many repeats, but when I got them, I just answered them without thoroughly reading them – I had no time!
I passed the Exam on the first try the other day. My strategy was:
1) Watched John White’s PLI videos
2) Take and commit 2003/2002 Exams to memory.
3) Reviewing the new questions submitted on this site.
Some of the questions I remember were:
Mirror question (chose parallel answer)
Japanese 45 day
147 multiple dep claims question (slight variation)
Melting point
Red ink
“Unexamined German” applications not 102(d) art
CIP to french phone design patent (can’t do it; makes it 102(d)
fruity lip gloss – using it as a gag is public use (no experimental)
Laurel, Abbott Hardy
Hair Gel – ex parte reexam
Reexam certificate open to public
Assignee without full interest can still sign small entity
filing petition for unpaid maintenance fee
Compound Y
DRAM
5 steps to crossing road
Piecemeal examination (just search section 2100 for “piecemeal”)
PCT questions – 16 months from priority date to correct
I had lots of repeats which I read briefly to make sure they weren’t altered at all and then I moved on quickly.
I passed the exam (second try) few days ago. I want to thank everyone on this web site for their valuable input. The test was a challenge for me because (a) I am not a lawyer or a law student and (b) The last time I took 6 hr, exam was few decades ago when I was in college. (Just turned 65!).
Here is how I prepared for it.
(1) I purchased 2009 PLI material and used it extensively. Their Study Guide is condensed version of MPEP and it includes only the material that is on the test. Read the guide book 2-3 times. PLI gives you 38 audio tapes of which I copied key chapter’s tapes on my ipod and listened to them repeatedly during gym workout and during driving to & back from work. The most useful PLI item is their Patware software (9.0)CD. It has 2002/2003 tests and additional practice tests including custom exams. Did all 2002/2003 tests over & over again until I got over 90%. Same for all other tests on the CD.
(2) Went over 68 or so repeat questions listed on this web site until I understood the concept. Also did few 2001/2000 tests to make sure I can handle unknown questions.
(3) Practiced “Look up” items in MPEP with key words and timed it to make sure I can find ans. in less than 3 min. or better
During the 6 hr. exam………….
(1) I made three passes. During the first pass, I handled all repeat, familiar and date related questions(102 , PCT). If quesion was long or unfamiliar or weird looking, I skipped to the next. I had 45-50 min. leftover. During second pass, I tackled “look up” questions and covered most of the loeftover test. I had 10 min. left at the end to cover questiones that were marked for reviews. Some questions related to 103, 112 & appeal were in the “look up” category.
(2) No panic. (If you practiced timing your tests, there is no reason to panic)
(3) Always looked at the call of the question to make sure. (even in repeat questions they may change the call of the question to trip you up) Know the concept.
(4) Look for the best complete ans. and not the correct ans.
(5) There were 30-35 repeat or variation of repeat questions. I answered each of those in less than 2 min. or better. (Thanks to 02 & 03 tests and this web site)
If anyone has any questions or need more information feel free to ask on this web site or send me an email. (ih8market @yahoo.com)
Good luck!
I took the exam Nov. 2 and passed (2nd try). Used the PLI home study course; the written material was useful to help focus on what to study. I used their test simulator CD to practice answering questions using the ‘find’ .But I also printed tests out and studied that way. I flunked 1st time using only PLI and not really using the tips on this site.
This site really helped me to pass this time! I wish I had used it the 1st time. Thanks everyone – I want to pay it forward by posting what I saw on the test. My test center in Albuquerque was comfortable and quiet with headphones and a fast computer.
My advice – like everyone else’s – is to study the 2002 and 2003 exams and study the repeated questions. I did not much study the earlier ones.
I used the scoring grid idea to keep track of my answers. It helped me stay calm. I circled the answer numbers that I thought I had 95% right. When it came down to 2 answers, those were the ones I searched first after going all the way through. I had 30 minutes left to search about 10 answers both in the evening and morning.
Used the 102e flow chart in chapter 700 because I got nervous and it helped clear my mind to use it! Also used the table regarding IDS at 609.01Examiner Checklist for Information Disclosure Statements several times!
There must be other Examiner checklists that can be used for easy reference…maybe others can post what they have found….it is important to know fees/ deadlines for Advisory Actions and IDS.
I saw the following repeat questions:
7. Compound Y/cancer cure
13. Fee not reduced for small entity/recording a document affecting title
16. Tribell
24. Means for pulling open the door/replace with structure in claim
34. IDS after notice of allowance (oops, I gave the wrong answer!)
38. Board rejects claim 1 /Claim 2 depends on claim 1/Claim 3 allowed
44. Japan/45 days
October 2003 pm repeats:
6. Moon dust pencil/no duty to disclose
50. 102(g) ex parte rejection
28. Parking Meter
45. Smith over Jones, Appeal
April 2003 AM repeats:
2. Japan/45 days
4. Markush- but variation: question asked about wording in 35 USC 112 para 6
8. Twice rejected concept (variation)
26. IDS after notice of allowance (variation)
37. Appeal affirms rejection/results in abandonment
41. Barry in view of Foreman
other topics:
40% ownership XYZ/60% ownership PQ/two inventors/double patenting: who must sign terminal disclaimer?
Claiming priority from foreign filing of design patent/6 month rule
Combination lacks specificity as way to overcome rejection
Failure of examiner to establish prima facie case of obviousness
There were lots of questions – 5 to 10 – on reissues and reexaminations
And questions on fees and Advisory Actions
One question asked about Construing claims: answer:bgive claims their broadest reasonable interpretation
There were questions on 102 a, b, d, e, and g
Provisional applications – 5 questions;
I also had the question regarding the traveling patent attorney in Germany needing to file something just before the expiration of six months. I also think the fax is the only way to go.
A question about Maintenance fees that was easy to look up
There were 3 questions about protests – just know where to look and search
Question about a PCT with no US filing – use the flow chart in chapter 700.
1 multiple dependent claim question.
I never have to do this again! yippee!
I agree with Senior44 – PLI Patware custom exams were great – I created a PCT only exam – and did all of the 85 questions several times. I also did a custom exam on Appeals and 102e. These customized exams helped a lot – there are new questions that are not on old exams and they really help you understand a topic that is sure to be tested!
I had asked this before, but my comments have been deleted.
Does anyone know where to find a list of countries that publish patent applications? This is in relation to the Japan/45 days question.
Thanks!
Chapter 1800, search”member” and it will lead you to a list for WTO members.
Japan would meet all typical standards in any question – PCT, 45 days, 18 month publications, etc.
I just wanted to thank you for putting this site together. I took the exam yesterday and passed! My success was due in large part to taking your suggestions. Many of the questions from the 2003 exam were repeated. I specifically recall the Laurel/Abbot, Jack & Jill in Vietnam, Spot Remover and Moondust.
If I had to study for this again I would pay far more attention to the PCT and to correction of inventorship issues. I had 5 questions dealing with inventorship, 3 on Board/examiner review and another 5-6 PCT questions. Definitely study all of the Japan PCT questions.
Best of luck to you all…
I had a question about the Least Expensive way for a correction to be made with the inventor’s name is wrong/something immaterial. (Dec. 2009 test)
It is similar to an older test question (can’t recall which one), BUT there was no “send a letter and bring to attention” answer.
Instead there was an answer (D) or (E) which stated: call the examiner and have the examiner take care of it. (I selected this one)
All other selections dealt with filing a petition to correct.
yeah i had this one
but i think i had a choice of filing ads so i picked that one
All correspondence with the PTO must be in writing, so “call the Examiner” is not correct. Intuitively it’s not correct either. Inventorship = ownership. You cannot call the PTO and just request a change in inventorship anymore than I can call your bank and have my name added to your bank account.
I disagree. You’re right that it’s not intuitive, but if it’s just a typo, you’re not really changing inventorship. According to MPEP 201.03, situations where 1.48 petition isn’t required:
“(B) Where a typographical or transliteration error in the spelling of an inventor’s name is discovered, the Office should simply be notified of the error. A new oath or declaration is not required. See MPEP § 605.04(g). Reference to the notification will be made on the previously filed oath or declaration”
Also, ADS wouldn’t work because in the case of inconsistencies between oath/declaration and an ADS, the oath/declaration governs inventors’ names and citizenship.
passed today 12/31 !!!
) )
great thanks to everybody who took time to post here & on the “patentbarquestions”
a separate thank you to the host “patentbar” (aka “sanmahan”?
as “cindy” put it “nothing really surprised me”
the exam was pretty predictable. i recognized most of either questions or concepts which i got from this site patentbarQ, old exams & probably my learning soft.
i d/n read all the posts here or on the wiki site but i did all the exams starting oct 2001 with j white’s comments.
can’t advise anybody to buy any expensive stuff. there’re sooooooooooo many free free resources.
i posted some comments on the patentbarquestions.
repeats and old exams helped a ton.
whatever i d/n know i looked in the index and also in THE CHAPTERS like 700 2100 1200 1800.
a lot of what i saw on the exam is discussed in one form or the another here and on the wiki site.
things that really surprised me (though verbatim from the mpep) were something like “can an examiner request drawing if they are not required for the understanding of the invention?” YES he can.
or something like “if one of the combinations (? d/n remember exact wording) is old is the invention anticipated?” yes it is.
a Q about xyz that was patented in 1906 can you patent it? yes as a method of growing hair if it was patented as a shoe polish
all of our old friends were there (d/n recollect spanish phone though)
hairgel
tribell
titanium ball
j j smith
bloc
costa ricka
sweden
mirror
2 inventors assigned 40 % to the company a & 40 % to the company b. who needs to sign a reissue oath?
i d/n read “things to know” on the wiki site (d/n have time) just the questions section.
a Q what do you need to get a reissue application filing date?
i answered only specification and drawings i think. everything else may be filed later.
also had velcro
cell phone invention (d/n show antenna and the strap in the article)
cell phone from idaho. when a guy sold it to test market penetration a year before filing. one of the answers was “try to prove it was for testing the invention”. i d/n pick this one.
one Q asked what can you do if you file an application on the year anniversary of the sale but w/o a claim?
i picked “you have time to convert to provisional up until a year after filing”.
a Q what happens if an applicant d/n file an appeal brief?
appeal is dismissed and examiner acts on the application.
a Q which application can’t become cont.
obviously provisional
a Q that i d/n if i picked the right answer was asking when an examiner d/n have to give reasons for allowance. but it was asking in the negative like “all except”
good luck to everybody
something like “if one of the combinations (? d/n remember exact wording) is old is the invention anticipated?” yes it is.
CDV,
Was this question regarding “Anticipation” or “rejection”?
Because, if it is of “rejection”:
2173.05(j): Old Combination
A claim should not be rejected on the ground of Old Combination
With the passage of the 1952 Patent Act, the courts and the Board have taken the view that a rejection based on the principle of old combination is NO LONGER VALID. Claims should be considered proper so long as they comply with the provisions of 35 USC 112, second paragraph.
I passed. Many thanks to everyone at this site. It was a big help. Review it IN DETAIL putting a lot of time into reconstructing both what the Q is SAID to be & (based on your knowledge & the MPEP & old exams) what the Q *is.* Some things get lost in translation, but if your’re smart & supplement this site with good, hard studying of the MPEP & the 2002-2003 exams, you will get a lot of freebies.
Observations:
1. Overall: Many people report a marked difference between the AM & PM sessions. I didn’t see that. There seemed to be roughly 10-12 repeats in both sessions –> enough to give you a boost but not enuf to make up for not knowing the material or being able to search the MPEP quickly & effectively.
2. Repeats:
i) Laurel Abbott & Hardy
ii) Japan 45 days
iii) Issue fee Transmittal form (1003 PM Q#38)
iv) Copper substrate (1003 AM Q#4)
v) 3rd Party submissions (1003 PM Q#10)
vi) Beck – Mixture Y made by Process Q1
vii) Verification stmt (1003 PM Q#32)
viii) Cancer/Bloc/incredible utility
ix) ABCD/ABCDE/BCDE
x) DRAM
xi) 5 steps for x-ing the road
xii) 147 claim counting (no variation – it’s 147)
xiii) IDS/RCE (1003 AM Q#34)
xiv) New ground of rejection (at least 4-5 Ques’s on this topic) (1003 AM Q#37)
xv) Twice rejected (0403 AM Q#8)
xvi) Inert gas (0403 AM Q#30)
xvii) 34.9% polyethylene (0403 AM Q#44)
xviii) Cancelled matter (0403 PM Q#48)
xix) Protest (1002 PM Q#46)
3. “New” questions reported on the site(s):
i) Trade secret (varied a little from what I read on the site – so be careful)
ii) Assignee not of record CAN sign an assertion of small entity status but CANNOT file a terminal dislcaimer
iii) Red or black ink (Red ink *CAN* be used to correct file wrappers, indicate amend’s accepted/denied etc.)
iv) Piecemeal – reject but call atty 1st
v) Hairgel (Patent app filed <11/29/99 so do NOT answer Inter partes reexam – it's ex partes!)
vi) Lipgloss (gag gift version)
vii) Spanish phone — the comments on the site are all over the map as to whether inventors should "give up" or whether the diff's in designs take it out of the realm of anticipation. I went with the only ans choice that held the 2nd design mod rejected under 102d but do not know if it was correct or not.
viii) Information requested from PTO (i.e. client wants you to find out about competitor's patent
ix) Maintenance fee missing number
x) Japanese patent 16 month priority (I got a TON of priority Q's. At least 3-4 questions on the 4/16 month rule, & another 3-4 on 119/120/365c).
xii) Best mode
xiii) Advisory action
xiv) The "much debated divisional-reissue question"
xv) Revival of abandoned reexamtn
xvi) Contesting inventorship via interference
xvii) What amend's can be submitted i) after filing NOA & ii) after brief
Strategies: I took a synergistic approach: get a few points from the site(s), a few points from good MPEP searching & some more from repeats & together the whole is greater than the sum of its parts. I definitely hit the books hard starting about roughly 12/15 but started to take the foot off the gas a day or two before the Exam. I've taken enuf of these things before to know that freshness & being mentally sharp on exam day will do much more for you than the 1 or 2 or things you *might *pick up in the hours before the exam.
Good luck to everyone!
NEW QUESTION
What do you all think and why?
1. A question related to 3 inventors A, B, and C on a pending application. Applicant discovers the ADDRESS is incorrect for Inventor B. How do you make an address change on the application? (one inventor may be unavailable, and these answers are just surmises)
A) Assignee of entire interest sends in an Application Data Sheet correcting
B) 3 inventors declare oath with correct addresses
C) Send in notification of Inventor B’s address
D) Assignee declares oath with all the correct Inventive Entity info
E) Assignee signs a petition under some number naming all inventors A, B, C declaring all inventors and identifies Inventive Entity
*** I answered A).
603 Supplemental Oath or Declaration
37 CFR 1.67 Supplemental oath or declaration.
(a) The Office may require, or inventors and applicants may submit, a supplemental oath or declaration meeting the requirements of § 1.63 or § 1.162 to correct any deficiencies or inaccuracies present in the earlier filed oath or declaration.
(1) Deficiencies or inaccuracies relating to all the inventors or applicants (§§ 1.42, 1.43, or § 1.47) may be corrected with a supplemental oath or declaration signed by all the inventors or applicants.
(2) Deficiencies or inaccuracies relating to fewer than all of the inventor(s) or applicant(s) (§§ 1.42, 1.43 or § 1.47) may be corrected with a supplemental oath or declaration identifying the entire inventive entity but signed only by the inventor(s) or applicant(s) to whom the error or deficiency relates.
(3) Deficiencies or inaccuracies due to the failure to meet the requirements of § 1.63(c) (e.g., to correct the omission of a mailing address of an inventor) in an oath or declaration may be corrected with an application data sheet in accordance with § 1.76.
(4) Submission of a supplemental oath or declaration or an application data sheet (§ 1.76), as opposed to who must sign the supplemental oath or declaration or an application data sheet, is governed by § 1.33(a)(2) and paragraph (b) of this section.
I got a similar question, but it was in the form of “which is incorrect.” The incorrect choice said that the supplemental oath only identified inventor B. A supplemental oath has to identify the entire inventive entity, and be signed by at least the inventor involved in the change. (Some of the questions had all the inventors signing where only one was required, but I’m sure that’s ok.)
603 Supplemental Oath or Declaration:
Example 4: An application was filed with a declaration under 37 CFR 1.63 executed by inventors A and B. If it is later determined that an error exists in the mailing address of inventor B, the mailing address of inventor B may be corrected by a supplemental declaration identifying the entire inventive entity and signed by inventor B alone, or an ADS under 37 CFR 1.76 containing only a change in inventor B’s mailing address.
NEW QUESTION- verified twice
5. Inequitable Conduct: Typically examiner does not look into inequitable conduct based on admission by applicant, but in which case may it be taken into account
A) Applicant says “not intentional” even though Examiner knows there is inequitable conduct
B) Applicant says “unintentional” about knowing some art or court case
C) ?
D) Third Party files a protest of fraud saying he invented the invention first
E) a variant of D
What do you think and why?
*** I might say the answer is B)???
It seems to me the Question is incomplete (or should I say imperfect?).
I got this. The choices were all in the basic form of that the applicant made some statement of no deceptive intent, etc., then the various circumstances. One had something to do with the applicant admitting that in related litigation, the other party raised questions of fraud/inequitable conduct. Two answer choices involved protest. The correct answer is that the examiner has knowledge of a judicial determination of fraud/inequitable conduct.
Can somebody explain this question to me Pl?
or direct me to the related chapter, pl?
New Question Verified twice
6. Which one does not work to invoke 112 6th paragraph?
(A) the claim limitations uses the phrase “means for” or “step for;”
(B) the “means for” or “step for” must be modified by functional language; and
(C) the phrase “means for” or “step for” must not be modified by sufficient structure, material or acts for achieving the specified function.
D) the claim limitation recites “step for”
E) None of them invoke 112 6th paragraph
MPEP 2181
Under Roman Numeral I:
A claim limitation will be interpreted to invoke 35 U.S.C. 112, sixth paragraph, if it meets the following 3-prong analysis:
(A)
the claim limitations must use the phrase “means for” or “step for;”
(B)
the “means for” or “step for” must be modified by functional language; and
(C) the phrase “means for” or “step for” must not be modified by sufficient structure, material or acts for achieving the specified function.
There are three elements (notice they are conjunctive using “and”) to invoke 112 (6). All the elements A, B, and C must be in the claim to invoke 112 (6). The above question, if it’s reproduced correctly, only lists one element per answer choice. Therefore, I would choose (E) as none of them invoke 112 (6).
But if the question was more like: “Which of the following are factors or elements in determining whether 112(6) is properly invoked?”
I would choose an answer choice of “All of the Above.”
※ The examination process under 35 U.S.C. 112, 6th paragraph: begin by applying the 3-prong analysis
* If the phrase “means for” or “step for” is absent, paragraph 6 is not invoked
* If the phrase “means for” or “step for” is used but either the second or third prong of the test is not satisfied, paragraph 6 is not invoked
I think E is the answer.
I got this. E is the answer. All of the A, B and C.
My question was: which DOES work, and the answer choices were (A), (B), (C) as you wrote them, (D) was the claim limitation recites “step of” and (E) was choices (A), (B), and (C). I chose (E).
What do you all think?>
*** Proper 102(e) Date ***
J.J. Smith filed a nonprovisional application on date1.
Which of the following can have a proper 102(e) date?
a) Pending nonprovisional application by another that claims
the same invention, filed before date1
b) A prior patent by J.J. Smith
c) A PCT application published under 21(2) in English
d) A published article, filed before date1
e) All of the above
So what is the correct answer???
I don’t think any of choices A-E are correct.
A). Not correct because 102(e) art is only for U.S. Patents or US Patent Publications by another. Since the application in a) is not a U.S. Patent or U.S. Patent Publication, it can’t be 102(e) art.
B) Not correct because 102(e) art requires the reference to be by another. Since J.J. Smith is the inventor his own prior patent can’t be a 102(e) reference.
C) For a PCT application to be 102(e) art, it must publish in English AND designate the U.S. Since there is no designation of the U.S., it can’t be 102(e) art.
D) Not correct because mere published articles can’t be 102(e) art–102(e) art requires U.S. Patent or U.S. Patent Publication.
E) All of the above can’t be correct. If it was available as an answer choice, I would pick “None of the above.”
answer is (A). See Anticipated under 102(e) (10.03.17p)
*** Contesting Inventors ***
J and K work for company XYZ and have no obligation to sign inventions to XYZ.
J and K invent something. XYZ fires K. K refuses to cooperate.
XYZ and J ask practitioner E to file an application naming J and K as joint inventors.
E files the application, but K refuses to sign. K thinks that he conceived of
the invention alone and that J did nothing. K has hired F as his attorney.
How can K and F contest inventorship?
a) Fire E as the attorney of record, and grant F a power of attorney
b) Provoke an interference by filing a new application to the same invention
naming K as sole inventor
c) File a petition under Rule 48, signed only by K under Rule 47.
d) Wait til the patent issues, then file for a reissue
and amend inventorship to remove J.
e) Wait til the patent issues, then file for a reexam,
presenting evidence that shows J was not an inventor.
So what is the correct answer???
See last parqgraph of MPEP 409.03(i), rights o fthe nonsinging inventor. Looks like the correct answer is (b).
12/31/2009 had a q about a pct filed w/o claims but everything else present, what can you do to keep certain filing date? choices were 1 fax w/cert. 2.mail w/cert. 3 express mail. 4.wait for us/ro send invitation to correct & correct within given time. 5.all of the above.
=== i saw this question. what is answer?
I don’t think you can fax or use certificate of mailing since it’s for the purpose of getting a filing date. Not sure about the express mail choice because it would depend on what day you send it. Responding to the invitation to correct would get you a filing date of whenever you correct, so you don’t get to keep the original filing date there either.
As much as I agree with Emily’s reasons and think that D should be the answer, 37 CFR 1.431(b) clearly says that “a part which on the face of it appears to be a claim” is one of the requirements to get a filing date of an IA.
So, can you even get a filing date in “real life”?
1. Which of the following does not constitute probative evidence of commercial success to support a contention of non-obviousness?
a) In a utility case, gross sales figures accompanied by evidence as to market share.
b) In a utility case, gross sales figures accompanied by evidence as to the time period during which the product was sold.
c) In a utility case, gross sales figures accompanied by evidence as to what sales would normally be expected in the market.
d) In a utility case, gross sales figures accompanied by evidence of brand name recognition.
e) In a design case, evidence of commercial success clearly attributable to the design, and not to improve performance of the device.
So which one is the correct answer???
D is the correct answer. Just practiced this question the other day.
I saw this question too…. But don’t think I understand this answer….
Think about what shows value with respect to the invention: Brandname is not related to the iprovement you want to sell/patent. The others are evidence of commercial success due to that new product.
So it is not total sales of a company either, just the sale of the product/feature protection is sought for.
2) A practitioner submitted a new patent application to the PTO using the Express Mail service of the U.S. Postal Service. The PTO never received the new application. Which of the following is not necessary to comply with the requirements for receiving the date of deposit with the U.S. Postal Service as the filing date?
a) A petition showing that the number of the Express Mail mailing label was placed on the application before the application was sent.
b) A true copy of the new application showing certificate of mailing thereon signed by the practitioner’s secretary stating when the correspondence was deposited with the U.S. Postal Service as first class mail with sufficient postage in an envelope addressed to the Commissioner of Patent and Trademarks.
c) A true copy of the Express Mail mailing label showing the “date-in” or other official notation entered by the U.S. Postal Service.
d) A true copy of the new application showing the number of the Express Mail mailing label thereon.
e) A true copy of any returned postcard receipt.
So which one is the correct answer???
Answer (b) See section MPEP 513(e)(1)(2)(3)
See 37 CFR 1.10 (e)(3)
or
513 VII
Re Q1, its (d)..brand name recognition is NOT considered.
Re Q2, its (b)..you do not need a COM when mailing stuff using express mail
i had Q2 appear on my test yday
I passed last week, thanks for the great site.
I am selling my almost entirely unused PRG study materials. This includes: 1) All 4 volumes of volumes of “Patent Practice” textbook,
2) Printed practice questions corresponding to each volume of “Patent Practice,”
3) CD-ROM with over 2,000 practice questions (really helpful),
4) Printed version of MPEP (4 large binders),
5) PRG’s “Latest Tips and Tricks for Success” for passing the patent bar on your first try, and
6) Binder with all handouts from class and my notes.
Price is 750 (paid almost 3,000).
Please respond to this thread if interested.
I am struggling with one question from the old exams:
April 2002 a.m. question 8: WHY IS THE JONES PATENT NOT 102(e)–SINCE IT ISSUED AS A U.S. PATENT BEFORE THE FILING OF CLARK’S PATENT?????? THE ANSWER SECTION CLAIMS THE JONES PATENT IS 102(a).
8. On March 20, 2000, Patsy Practitioner filed a patent application on widget Y for the ABC Company based on a patent application filed in Germany for which benefit of priority was claimed. The sole inventor of widget Y is Clark. On September 13, 2000, Patsy received a first Office action on the merits rejecting all the claims of widget Y under 35 U.S.C. § 103(a) as being obvious over Jones in view of Smith. When reviewing the Jones reference, Patsy notices that the assignee is the ABC Company, that the Jones patent application was filed on April 3, 1999, and that the Jones patent was granted on January 24, 2000. Jones does not claim the same patentable invention as Clark’s patent application on widget Y. Patsy wants to overcome the rejection without amending the claims. Which of the following replies independently of the other replies would not be in accordance with proper USPTO practice and procedures?
(A) A reply traversing the rejection by correctly arguing that Jones in view of Smith fails to teach widget Y as claimed, and specifically and correctly pointing out claimed elements that the combination lacks.
(B) A reply traversing the rejection by relying on an affidavit or declaration under 37 CFR 1.131 that antedates the Jones reference.
(C) A reply traversing the rejection by relying on an affidavit or declaration under 37 CFR 1.132 containing evidence of criticality or unexpected results.
(D) A reply traversing the rejection by stating that the invention of widget Y and the Jones patent were commonly owned by ABC Company at the time of the invention of widget Y, and therefore, Jones is disqualified as a reference via 35 U.S.C. § 103(c).
(E) A reply traversing the rejection by perfecting a claim of priority to Clark’s German application, filed March 21, 1999, disclosing widget Y under 35 U.S.C. § 119(a)-(d).
ANSWER:
8. ANSWER: The correct answer is (D). The prior art exception in 35 U.S.C. § 103(c) only applies to references that are only prior art under 35 U.S.C. § 102(e), (f), or (g). In this situation, the Jones patent qualifies as prior art under § 102(a) because it was issued prior to the filing of the Clark application. See MPEP § 706.02(l)(3). Also, evidence or common ownership must be, but has not been, presented. Mere argument or a statement alleging common ownership does not suffice to establish common ownership. Answer (A) is a proper reply in that it addresses the examiner’s rejection by specifically pointing out why the examiner failed to make a prima facie showing of obviousness. See 37 C.F.R. § 1.111. Answer (B) is a proper reply. See MPEP § 715. Answer (C) is a proper reply. See MPEP § 716. Answer (E) is a proper reply because perfecting a claim of priority to an earlier filed German application disqualifies the Jones reference as prior art.
You are right. The reference does qualify as 102(e) art, and therefore could be properly excepted under 103(c). However, the prior art patent also issued before the application filing date, which also makes it a reference under 102(a). Because 103(c) doesn’t help you out when it comes to 102(a) references, answer choice D won’t work (and is therefore the correct choice).
In practice, an Examiner will only rely on 102(e), when he can’t “get” you with 102(b), or 102(a), in that order of preference.
Peter, This may not help, but, check this explanation from the USPTO:
http://www.uspto.gov/web/offices/com/sol/foia/oed/regrades/R2003-108.pdf
The question starts on page 5.
WOW!!!! Fantastic reference. Thanks. I am still not certain why this is “clearly a reference under 102(a)”, but I will study this further.
THANKS VERY MUCH FOR THIS REFERENCE!.
Does anyone know when the duty of disclosure ends? Is it when the patent issues or when the patent has been filed?
Thanks.
I have a question about the interaction of a 102(d) and a Continuation-in-part.
Off the top of my head, I file an app in Germany 3/1/95, next I file in the US on 2/1/96 (within one year of my German filing before a Germany patent issues). The German patent issues 5/1/96. Next I file a continuation-in-part to the US file adding new matter and a new inventor, on 6/2/96. I thought under section MPEP 201.08 the CIP took the benefit of the parents filing date.
My question is whether this continuation-in-part is 102(d) barred since the German filing is >1 year before the CIP was filed and the German patent has issued before the CIP filing?
I’m confused about the new-matter added to the CIP.
(1) If all the matter including the new matter was disclosed in the German app then the CIP is 102(d) barred?
(2) if the new matter added in the CIP is not disclosed in the German app but the original matter was disclosed then….?
If someone could direct me to the correct location of the MPEP or assist me with the question I’d be grateful.
Thanks.
I passed the exam this week and there were few repeats. I saw the same repeats reported above.
The exam was a more time consuming morning sessoin and an faster pm session. Most of the answers I found in the MPEP.
Unlike the older questions, the newer questions are harder to search through the CFR. It seems the older exams (2001/2/3) are almost doable just with the CFR. The new ones are not.
Exam concepts:
- Filing requirements for PCT applications at the US-PTO (minimum requirements to get filing date, nationality, etc). The questions were perfectly searchable in the PCT chapter.
-Tricky questions about when the examier should not have to write a statement of allowability, extensions of time during reexaminations.
-102(e) questions regarding prior art dates.
- questions regarding the difference between 102 and 112 rejections.
- 102(d) requirements
-102 rejections using more than one reference
- Appeals were straight forward, the hard one was which new argument can be presented without any previous mention in briefs/answers/replies even during oral hearing.
- Faxing from overseas
-Attorney not of record
-Public access
-reissue to fix inventorship: what has to be submitted.
-the time windows, especially with the examiners answer, reply etc. Know were to find the variable windows, the mail date which closes and ends it all.
-missing figure question, how to fix without loosing filing date.
I noticed that two questions were repeated within the exam.
How did I prepare?
- Read the freepatentbar.com summary.
- Worked the practice questions over and over again. Do not just learn them, work them. Find the answers in the MPEP every single time. Even investigate the “wrong” answers. That is, research all: A, B, C, D, E.
- You got to get to the level that you can read a question and know which MPEP chapter you need to search in just looking at the question.
-And spent time reading and studying this mypatentbar site. Work it back and forth, ask questions, post. Work the discussions, search for the discussion points, do not just look up the quoted MPEP material. Try to find it yourself.
-Read Chapters, 200, 1200, 700, 2100 at least twice. Once halfway through the studying, then again toward the end. The PCT summary on this webpage is great. Then go and read 1800.
-The dump area of patentbarquestions.com helped a lot as well.
-Look at the intelproplaw webpage as well.
-Study what exam takers report from previous exams.
The folks here sent me a free one-day trial for the usptoexam.com webpage. It is nicely done. Didn’t agree with all the sample answers, but this was great since I learned a lot from working the answers given. I redeemed that voucher two days before the exam and it helped a lot. Especially working the diffcult questions, looking at their explanations and then working those answers.
I have no law background and studied from scratch. Didn’t take a course either. Studied over the course of five months, two of them solid.
I passed! First try. A huge thanks to everyone on this site and patentbarquestions.com.
Here are some of the things that I used to study.
http://www.mypatentbar.com
- Looked up the answers to the repeat questions about 3 times. (make sure that you look up the specific part of the MPEP that contains the answers. If you do this, you will be ready for the variations on the actual test.)
- Took the 2003 tests 2 times (Looked up answers that I missed)
- Looked up the answers to the “new questions” 3 times (these are found in “Exam Questions and Concepts”)
- Read most of the Study Guide
- Read and looked up answers to question in people’s posts (one of the posts had a pdf letter from the USPTO with questions and answers.)
http://www.patentbarquestions.com (this site isn’t working now, but hopefully it will be fixed in a while)
- Looked up the “Key Things to Know”
- Looked up the answers to the “new questions”
http://www.freepatentbar.com (I didn’t use this very much, but it is available)
Use the MPEP 8th edition 4th revision to study. Acrobat Reader 5.0 is pretty close to the software you can use during the test. One of the things that I learned on the test is that you can click on the PDF and then start you search from where you clicked. This is helpful to refine your search.
I probably spent about 120-150 hours studying for the exam.
Some of the repeats that I saw were:
Product by Process (4.00.6a)
Restriction (4.00.9a)
Mario Lepieux (4.00.10a)
Laurel, Abbot and Hardy (4.00.14a)
Federal Court Decisions binding for Office (4.00.19p)
Claims stand or fall (4.00.28p)
102(b) dates (4.00.41p)
XYZ/ABC Appeal (10.00.02a)
Sally, Ted and Spot Remover (4.01.10p)
Smith’s Drawings (10.01.3p)
Signing Inventors (4.02.44a)
Henrietta’s Camera (4.02.11p)
Non-Signing Inventor (10.02.1a)
Broadening Reissue (10.02.12a)
Dead Inventors (10.02.30a)
Facsimile Transmissions (10.02.49a)
Certificate of Correction (4.03.11a)
Potter (4.03.12a)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
Time for Filing an Appeal Brief (4.03.39a)
Small Entity Status (4.03.13p)
Copper substrate (10.03.4a/4.03.16p)
Smith / DRAM (10.03.9a)
Inventor Refused to Sign (10.03.12a)
Tribell (10.03.16a)
Hydrocyclone (10.03.31a)
ABCD/ABCDE/BCDE (10.03.2p)
Moondust (10.03.6p)
Parking Meter (10.03.28p)
Issue fee transmittal form – XYZ Company (10.03.38p/4.03.11p)
App Data Sheet (10.03.43p)
Toy plane with Foil Wings (10.03.46p)
As you can see, I saw a lot of repeats, SO DO THE OLD TESTS!
Good Luck to Everyone!
This is interesting. I do not recall seeing many of those questions cited above. Even considering the exam haze, some of them are so characteristic that I would recall them. This confirms the feeling I had going into it, that you need to know the old questions, but be ready to do some serious searching on the questions you do not recognize. And that everyone who takes it may get a randomly generated exam. In other words, each exam may be more or less unique. Know your stuff!
Just passed. My first thought was that I am glad I don’t have to sit through that again.
Thanks to everyone who has made this site an excellent resource.
I also used the patbar.com program (in addition to this site)—and it was worth every cent. Overall, probably 300-400 hours.
Here are a couple of new questions I had not seen:
1) Inventor A refuses to sign. Inventor B signs. Inventor A thinks he is the only inventor and thinks B should not be applying for a patent. What can A do?
Answers ranged from
a) File own patent with same claims and call interference (this is the choice I reluctantly picked).
b) Wait for B’s patent to issue file protest (wrong because protest cannot be for issued patents).
c) Wait for B’s patent to issue–call for re-exam
d) Correct under 1.48–and sign by “A” stating elimination of B was without deceptive intent (No way)
I forget the other response—maybe wait for B patent to issue an then correct through re-issue (wrong). Basically, I went through the process of elimination. In the end it seemed that only (a) was right.
Very annoying question about maintenance fees–and what happens when a fee is returned. All the answers centered around 1.377.
Probably received over 25 repeat questions (very lucky)..
If you have the answers to 2002-2003–and can answer within 30 sec–then you will be fine. (Also–you must know why the wrong answers are ‘wrong’)
Best of luck everyone—and thanks again.
Peter
Peter,
Congratulations on passing the patent bar exam!
Thanks so much for posting and adding a new question. It’s contributions like yours that help make this site so helpful to everyone preparing for the patent exam.
Best of luck in your new career.
Can someone help me understand the difference between RCE and a continuing application?
JSimha,
RCE & continuing applications are similar. Both are filed after final action while the application is still pending. For a continuation, you would file a new application (see MPEP 201.07) For an RCE, you pay for one more round with the examiner on the same application.
But, you probably want a much more complete explaination than that. Chapter 14 of the book “Patent It Yourself” written by Pressman and published by NOLO has a very good explanation and chart which explains Continuation, RCE, Reissue, CIP, Substitute, Divisional, etc. You can buy it at http://www.usptoexam.com/Books.htm or get it at a library. It also has a very clear explanation of the PCT process. I found it very useful to learn the basics.
Took exam on April 22 and passed.
I took a PLI course, went through the old exams from 2000-20003, and repeat questions from this site.
The first half was brutal with may be 10 repeats at best and many tricky questions that requried checking the MPEP. I had five minutes left till the end of the first half of the exam and still was going over some of the marked up questions.
In contrast, the second half was very easy and loaded with repeats from the old exams and this site; I would say about 35 questions total if not more. I finished it in two hours and double checked about 10 questions that were somewhat tricky during remaing time.
The questions were pretty much in line with Bob’s April 15 post.
This is a question I saw earlier.
On Feb 15, 2000, Debbie conceived a new, useful and nonobvious improvement in saddles for horses. Debbie spent the next four months working regularly on the idea and she built a prototype that implemented the concept on JUne 17, 2000. Debbie basically visits a patent atty on Dec 1, 2000 and an application was filed on Dec 11, 2000.
On May 15, 2000, Billie conceived an idea substantively identical to Debbie’s. Billie immediately files an application on June 14, 2000. Later on JUly 9, 2000, Billie built a prototype that implemented the concept and tested it on Aug 11,2000.
With regard to Priority contest, which is correct?
a) debbie will be awarded priority only if she can establish diligence for the entire time between May 14, 2000 and her actual RTP in June,2000 and can establish that she did not ASC the invention.
b) debbie will be awarded priority only if she can establish diligence for the entire time between Feb 14, 2000 and her actual RTP in June,2000 and can establish that she did not ASC the invention.
c) debbie will be awarded priority if she can establish diligence for the entire time between May 14, 2000 and Dec, 2000 and can establish that she did not ASC the invention.
The rest are clearly wrong answers.
Can somebody pl tell me how A can be the most correct answer and not B?
Clearly,
2138: To qualify as prior art under 35 U.S.C. 102(g), however, there must be evidence that the subject matter was actually reduced to practice, in that conception alone is not sufficient.
Thank you.
This is a question I saw earlier.
On Feb. 15, 2000, Debbie conceived a new, useful and nonobvious improvement
in saddles for horses. Debbie spent the next four months working regularly on
the idea and she built a prototype that implemented the concept on June 17,
2000. The prototype worked perfectly for its intended purpose. The next day,
Debbie visited a patent attorney, Ginny, and asked her to prepare a patent
application on Debbie’s behalf. Ginny explained that her workload would prevent
her from working on the application for at least four months. Ginny therefore
declined representation of Debbie and gave her the names of a number of other
qualified patent practitioners. Debbie, however, did not contact any of the
individuals recommended by Ginny. Debbie visited Ginny again on Dec. 1, 2000.
At that time Ginny agreed to represent Debbie. A patent application was filed in
the Patent Office on Dec. 11, 2000.
On May 15, 2000, Billie conceived an idea substantively identical to Debbie’s.
Billie immediately prepared a detailed technical description including drawings
and visited a patent attorney. Billie filed a patent application on June 14, 2000.
Later, on July 9, 2000, Billie built a prototype that implemented the concept and
had fully and successfully tested it by Aug. 11, 2000.
With regard to a priority contest between Debbie and Billie, which of the following
statements is most correct?
(A) Debbie will be awarded priority only if she can establish diligence for the
entire time between May 14, 2000 and her actual reduction to practice in June
2000, and can establish that she did not suppress, abandon or conceal the
invention.
(B) Debbie will be awarded priority only if she can establish diligence for the
entire time between her conception in Feb. 2000 and actual reduction to practice
in June 2000, and can establish that she did not suppress, abandon or conceal
the invention.
(C) Debbie will be awarded priority if she can establish diligence for the entire
time between May 14, 2000 and her patent filing in Dec. 2000, and can establish
that she did not suppress, abandon or conceal the invention.
(D) To encourage prompt disclosure of inventions to the public, priority is always
awarded to the first to file an application, in this case Billie.
(E) Billie must be awarded priority because his patent application established a
constructive reduction to practice prior to Debbie’s actual reduction to practice
Answer:
ANSWER: The most correct response is (A). 35 U.S.C. § 102(g); Mahurkar v.
C.R. Bard, Inc., 38 USPQ2d 1288 (Fed. Cir. 1996). If statement (D) were correct,
there would be no need for interference proceedings. Statement (B) is incorrect
because Debbie need not establish diligence for the period from February 2000
until just before Billie’s conception on May 15, 2000. Statement (C) is incorrect
because, so long as there has not been an abandonment, suppression or
concealment of the invention, Debbie need not show diligence between the
actual reduction to practice and the patent filing. Statement (E) is inconsistent
with 35 U.S.C. § 102(g).
Can somebody pl explain how A can be the most correct answer and not B?
Clearly,
2138: To qualify as prior art under 35 U.S.C. 102(g), however, there must be evidence that the subject matter was actually reduced to practice, in that conception alone is not sufficient.
Also, according to
715.07(a):
Where conception occurs prior to the date of the reference, but reduction to practice is afterward, it is not enough merely to allege that applicant or patent owner had been diligent. Ex parte Hunter, 1889 C.D. 218, 49 O.G. 733 (Comm’r Pat. 1889). Rather, applicant must show evidence of facts establishing diligence.
Thank you,
2138.01
The first of many to reduce an invention to practice around the same time will be the sole party to obtain a patent, unless another was the first to conceive and couple a later-in-time reduction to practice with diligence from a time just prior to when the second conceiver entered the field to the first conceiver’s reduction to practice.
So, Debbi only need to establish diligence from just prior to Billie’s conception to reduce to production.
Makes sense.
Thank you.
Had combination/subcombination today.
It is proper to require restriction when a combination does not require the particulars of the subcombination as claimed for patentability, the subcombination can be shown to have other utility, and there would be a serious search burden as evidenced by separate classification, status, or filed of search. 806.05(c)
I took the exam last month, and had at least three questions about dead inventors. I think one was re changing inventorship, one was about inheritance of the patent rights and who could make decisions, and one was something about assigning rights. Either way, lots of dead inventors on one test.
Just passed today on my first try.
I have noticed the following questions:
Titanium Baseball (Public Use/Printed Publication)
Mirror (Inherent Function)
Amending the Abstract – PCT
Deleting Priority Benefit Claim
Missing Parts – PCT
Costa Rica (all applicants are Costa Rican)
Velcro
Trade Secret Question
Germany – PCT/Patent Term
Maintenance Fee Paid / Check Returned
Death of inventor before application is filed
Terminal Disclaimer – who can sign
Piecemeal
Documents Requiring Signatures
Assignee – what can be filed without establishing assignment of record
Best Mode – part of 35 USC 112 first paragraph
I also passed the exam on May 13, 2010. This site provided very useful info and I really appreciate all those who have contributed to it. Here are the questions that I recall:
– Titanium Baseball (Pulic Use/Printed Publication)
– Mirror (Inherent Function)
– Costa Rica and Sweeden – PCT
– Velcro (Trademarks in Claims)
– Information requested from USPTO
– Trade Secret Question
– Means plus Function variant of Door Handle (Determining Equivalence)
– Piecemeal
– Missing parts in PCT Application (30 days)
– Shoe Polish and hair gel
Overall, I think there were about a total of 25~30 questions from “Repeat Questions” (in both sessions), I remember the following:
– Tommie and Jo(4.00.23a/4.00.24a)
– Bond 60%C or 60%D (4.00.27a)
– 147 Claim Counting (10.03.50a/4.03.28p)
– Lancer Toothbrush (4.03.33a)
– Bloc; Synthetic Z (10.03.7a/4.03.32p)
– RCE During Appeal (10.03.36a)
– Moondust (10.03.6p)
– Correcting the Name of the Inventor (10.03.18p)
– Design Patent in Country X (10.03.27p)
– Smith & Jones… (10.03.30p)
I passed today! I crammed for 6 days…about 10-12 hours a day…mostly just did old exams from April and October 03. Reading through full passages of the the MPEP was actually very useful as well. I only did that for some portions of 700, 1200, and 1400 and found that it helped me understand the intricacies of the rules a lot better. If I had more time, I would have read through more sections. One thing I found that was AWESOME was the charts for 102(e) prior art dates in chapter 700. There were probably three questions on that…and if you learn to read the charts, it’ll take just a minute.
I got ALL the same questions that GS got above. Lots of repeats, especially in the morning half, for some reason. I can’t remember any new questions. I feel like I saw at least 90% of the questions between this site and the April and Oct 2003 exams. Definitely recommend memorizing those…including reading the explanations with the answers.
Anyways…with 6 full days of prep…I felt like I did pretty well…probably scored at least 80…felt pretty confident about most of the questions, and only had to go back to two or three. Overall, I felt like there was more than enough time to look up questions that I hadn’t memorized from past exams (but if i hadn’t memorized past exams…I probably would have been short on time)….and I basically looked up every question in the MPEP just to be safe. Still finished each section with at least 40 minutes to spare and check answers.
The check-in/out process for Prometric is a bit of a pain in the butt. We had to do biometric (finger print) verification for signing in and out of the test room. You don’t get extra time outside of the one hour lunch break. While you’re taking the exam, you can leave to go to the bathroom…but you have to sign in and out and the time just keeps ticking. Don’t wear pants with lots of pockets!! They made everyone flip every pocket inside out and one guy had cargo pants on!!!!
I failed the exam yesterday – got a 65% – was pretty upset, but I guess I should’ve put more work into it. Any advice on what to do or not do the second time around is greatly appreciated!
I feel like if I had an extra 40 hours to study, I’d definitely pass. I am a law student so I thought I could probably figure things out since I was somewhat familiar with this stuff but that is not the case for all the topics. Sure, my background helped me understand 101, 102, 103 and 112 but that is not where most of the questions came from.
I couldn’t do much full time study because of school, work and final exams and some other commitments, but I did study full time and overtime the last three days before the exam. Things really started to come together in those days. Before that I tried to study at least every other day for about 4 hours but definitely took some breaks from it here and there because of the other things I had to get done.
I started studying by watching John White’s PLI DVDs to get familiar with the concepts a couple of months ago. I don’t think very much sunk in at that point but at least the MPEP verbiage wasn’t overwhelming. I didn’t watch all of them, just 100 – 700 and attempted the PCT but it made no sense to me so I moved on. Then then I started looking over old practice exams to see if I knew the answers to the questions without looking things up.
I started doing half exams every other day about 3 weeks ago. I did a total of 3 practice exams, I did the 03 exams twice each, and read this site two days before the exam. Next time I will definitely make sure I have all the repeats down cold, and understand reported new questions as well, because I had a fair amount of both on my exam yesterday.
I could tell it was going to be a close call from the first half. I had more than expected on Access, Assignment, PCT and Appeal questions, the four topics I was only generally familiar with. Sorry John White, the meat and bones is not 700 + 2100. Don’t get me wrong, I had a good amount of questions from those, but not as many as I thought I would. I wouldn’t say any one chapter dominated, except maybe the PCT, but I think it was just my bad luck.
In the first half I had maybe one PCT question and a lot of Access (100), Assignment (300), Owner/Inventor (400) questions that I had no idea about. Also there were a bunch of protest (1900) and third party submission questions. I wasn’t even aware the protest chapter existed/was tested until a day before the exam!
I felt like on the second half, almost every other question was on the PCT which was my weakest chapter. And the fact patterns were lengthy and date laden. There were also a lot of reexam and appeal questions in the second half. Both halves had 700 + 2100 questions but the majority of the questions didn’t really come from those chapters.
I can’t start studying for the exam again until August which really bums me out because I feel like I learned so much and I might forget a lot of it and will have to start from scratch. Next time I plan to actually read 700 and 1800 and skim 600 and 1200 and maybe 1400 and 2100. I will definitely practice with Appendix R a lot more too. I wasted a lot of time trying to find things on the weird obscure questions that I got as well as on 100-600 which I was just generally familiar with. I knew a bunch of rules from them, but I wasn’t sure of myself on any of them, so I’d try to find them before answering the question, and I didn’t even know where I learned them from to begin with.
I had about 40 repeats of which I remembered the answers to about half, and the rest I was mostly sure or couldn’t remember. Reading the new reported questions from this site helped a good amount, except for the debated questions. If I had more time, I’d try to find the answers in the MPEP myself, but I didn’t. Even so, reading the discussions helped on the exam for at least a quarter of those questions.
Any tips or suggestions on how to proceed in August are welcomed and appreciated!
Repeats
(not sure about some of the Oct 03 ones because I did them that morning, and I’m not sure if I remember them from practice or the actual exam)
Laurel, Abbot and Hardy (4.00.14a)
Smith Laminate(4.00.17a) (i think my variant was about which would be proper for a 102 rejection)
Prior Art (4.00.42a)
Reexamination (4.00.47a)
Federal Court Decisions binding for Office (4.00.19p) (my variant used “not invalid” instead of valid)
Prior Art (10.00.16a)
Mitch and Mac (10.00.23a)
Affidavits (10.01.46p)
Hair Gel (4.02.37p) (my variant was neither hairgel nor football pads, don’t remember what though)
37 CFR 1.131 (10.02.6a)
Public Inspection (10.02.21a)
Dead Inventors (10.02.30a) (variant)
Third Party Submissions (10.02.46a)
35 USC 119(a) (10.02.1p)
Protest (10.02.46p) (variant)
Reduction to Practice (4.02.1a)
Japan/nonpublication request/45 days (10.03.44a/4.03.2a)
Certificate of Correction (4.03.11a)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
Board of Appeals Remanding case to the Examiner (4.03.25a)
Certificate of Mailing (4.03.29a)
Verification (4.03.31a)
Small Entity Status (4.03.13p)
Bloc; Synthetic Z (10.03.7a)
Smith (10.03.9a)
Tribell 10.03.16a
Supplemental Oath (10.03.26a)
Hydrocyclone (10.03.31a)
Dependent Claim (10.03.41a) (variant having a valid choice)
Restriction Appeal (10.03.42a) (variant but asks about the same thing)
ABCD/ABCDE/BCDE (10.03.2p)
Moondust (10.03.6p)
Diligence (10.03.8p)
Verification Statement (10.03.32p)
Certificate of Mailing (10.03.34p)
ABCD/ABCDE/BCDE (10.03.2p)
Toy Airplane with Foil Wings (10.03.46p)
Product-by-Process Claims (10.03.13p)
Correcting the Name of the Inventor (10.03.18p) (variant where the correct answer of the old exam wasn’t listed)
Which, if any: Chapter 600 (10.03.22p) (variant)
Design Patent in Country X (10.03.27p)
Parking Meter (10.03.28p)
New Questions
Q2) Titanium Baseball (Pulic Use/Printed Publication)
Q4) Submitting Tables on CD-ROM
Q8) Missing Parts – PCT
Q9) Correcting PCT Applications
Q12) 1.131 and 1.132 Affidavits
Q16) Lip Gloss/Ship Bell (Experimental Use)
Q18) Small Entity Status
Q19) Mexican Nationals – PCT
Q20) Information requested from USPTO
Q21) Trade Secret Question
Q22) Germany – PCT / Patent Term
Q23) Broom
Q24) Japanese Patent
Q26) Maintenance Fee Paid / Check Returned
Q27) Reissue (variant of Tommie and Jo)
Q28) Means plus Function variant of Door Handle (Determining Equivalence)
Q29) Death of inventor before application is filed
Q31) Chemical Claim
Q34) Investigating Deceptive Intent
Q35) 2 Month Rule for Final Office Action
Q36) Notice of Appeal
Q37) Terminal Disclaimer
Q38) Piecemeal
Q39) Advisory Action
Q40) Assignment
Q42) Missing parts in PCT Application (30 days)
Q51) Best Mode
Q52) Multiplicity
Q56) Restriction Requirement / Continuation Application
Q57) 102(a): Need to file foreign language translation
Q60) Anticipation
Q61) PCT Publication
Q62) 102 and 103 Rejections
Q63) TP Submissions
Q64) Restriction
Q66) Claims
Q67) Obviousness
Q68) Hydrocyclone
Did you seriously get these many familiar questions?
I am praying that I get too….
when I started looking over them today I wondered the same thing… I’d say at least half of the ones I posted (from both repeated and new questions) were the exact ones I looked at before. About a quarter are either variants or test the same concept. I guess about 15% I probably erred on, and actually remember them from practicing the day of…
Haha when I started looking over them today I wondered the same thing… I’d say at least half of the ones I posted (from both repeated and new questions) were the exact ones I looked at before. About a quarter are either variants or test the same concept. I guess about 15% I probably erred on, and actually remember them from practicing the day of…
so yeah – moral of the story – know ALL the repeats cold. I only knew most of 03’s. Should’ve worked on the older ones too! About half of my repeats came from 00, 01 and 02.
I’m really good at recalling what I’ve looked at before so I recognized many questions. (But just because I’ve recognized them doesn’t mean I always remembered the answer, especially if I made no effort to memorize)
My friend who took and passed a few months ago said he only had 10 repeats but he also doesn’t believe in photographic memory which leads me to believe that he doesn’t have one. He passed by remembering a bunch of rules and being very familiar with the MPEP and where and how to search best.
So, I suspect that those who say they only got 10 repeats or so, don’t actually remember the others as repeats. Thoughts?
I guess I’ll give my “moral” in three days
!
this is easier said than done; however, i think you should re-exam asap and shake off the anxiety of your last exam.. as Gen. Patton declared, “success is not measured at how high you have climb, but at how high you bounce back when you hit the bottom.”
good luck S.. we will be seeing your post in this site within the week
any suggestions where to buy cheap materials for Alabama State Bar? bar materials are cheap back home in my native country
Sorry to hear that, Banana. You will pass next time for sue. S, I am taking the exam the same day as you. Good Luck to both of us. Thank you for answering some of my questions.
Amen!
Oops, I meant you will pass for sure next time. Typo.
Banana, I feel your pain. I didn’t have more than 20 repeats, at best and Lima’s exam description feels familiar. I too wish I had more time to study – but as you rightly pointed out, knowing the old exams COLD will definitely help!
In my exam, there were a good number of 700, 2100, PCT, appeal, protest and reissue in my second half. I had barely any questions from chap. 600 throughout.
I plan to go to the USPTO and review my exam soon – will try and post newer questions again after that.
Good luck S and newtopatentbar!
In an April exam, there was a question on adding an inventor with a refusing other inventor that went something like:
An application is filed for inventors A and B both assigned to X. During the prosecution, X decides inventor C should be added. In the meantime, B has been fired and refuses to cooperate. What can be done? Don’t remember their choices. I have been trying to figure this one out:
Can’t do 1.47 – too late, already filed with original oaths
Can’t do 1.48a – It requires an oath or declaration by actual inventors that (1.63a4) believes named inventors original inventors, which B won’t sign
Can’t do RCE – prosecution is not closed
Can petition 1.183 for suspension of rules + 1.48, needs consent of X (201.03). No guarantee petition will be approved
Can do Continuation with correct inventorship under 1.53, then abandon parent
Agree on analysis?
This is definitely an option.
MPEP 201.07 Continuation with the correct inventorship under 1.53 and a subsequent abandoning of the parent.
MPEP 1481.02 If the patent has already issued, assignee can also file for a reissue.
See MPEP § 1412.04. Reissue is a proper vehicle for correcting inventorship in a patent. Because correction of inventorship does not enlarge the scope of the patent claims, the reissue application may be filed more than two years after the patent issued.
Another possibility:
Can convert the application to provisional by 1.53c2. Then file a non-provisional claiming priority 119e and oath or declaration using 1.47 for refusing inventor
Passed on the First try, yesterday!
My moral of the story – Know the old tests and exam questions and concepts WELL.
I went in 45 mins ahead and started the exam right away. I think I had atleast 30-40 repeats and for the ones that were new, I guess I didn’t have to refer to the MPEP that much.
I owe a lot to this site and freepatentbar.com and patentbarquestions.com. I am returning the favor.
Exam Questions and concepts:
Q3) Mirror
Q) Correcting PCT Applications – PCT (MPEP 1800)
Q14) Costa Rica and Sweeden – PCT
Q15) Spanish Phone – Design
Q18) Small Entity Status
Q23) Broom
Q24) Japanese Patent
Q25) Electric Fan
Q26) Maintenance Fee Paid / Check Returned
Q34) Investigating Deceptive Intent
Q35) 2 Month Rule for Final Office Action
Q36) Notice of Appeal
Q37) Terminal Disclaimer
Q38) Piecemeal
Q40) Assignment
Q51) Best Mode
Q59) PTO-892
Q63) TP Submissions
Q64) Restriction
Q67) Obviousness
Repeat Questions:
Mario Lepieux (4.00.10a)
Smith Laminate(4.00.17a)
Affidavits (10.01.46p)- different version
Facsimile Transmissions (10.02.49a)
Potter (4.03.12a)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
Lancer Toothbrush (4.03.33a)
Polypropylene range (obviousness of ranges) (4.03.44a)
Bloc; Synthetic Z (10.03.7a/4.03.32p)
Amendment after Appeal (4.03.38p)- variation
Reexam Extension of Time (10.03.6a)
35 USC 102(d) (10.03.8a) variation
Smith / DRAM (10.03.9a)
Tribell (10.03.16a)
RCE During Appeal (10.03036a)
Restriction Appeal (10.03.42a)
Correcting the Name of the Inventor (10.03.18p)- with an ADS variation
Q) Affidavit 1.131 (10.03.36p)- a couple of variations
Besides these, I got:
1) Correction of inventorship:
a) through 1.48
b) through continuation applications
and c) reissue and the inventors don’t have to sign where there is a broadening claim
2) what is needed for recording an assignment except cover sheet
3) joint inventors- one inventor dies during prosecution
4) what is needed for oral hearing EXCEPT date and time
5) got a couple of combination/subcombination questions
6) two patents- one issued. No common inventor and no common assignment, how can they be rejected:
a) statutory double patenting
b) nonstatutory double patenting
c) provisional double patenting
d) 102(e) rejection (I chose)
e) None of the above
Thanks a lot. keep up the good work, guys!!!
Good luck everybody, else!
Sorry a correction!
6) two patents- one issued. No common inventor and no common assignment, how can the patent be rejected:
a) statutory double patenting
b) nonstatutory double patenting
c) provisional double patenting
d) 102(e) rejection (I chose)
e) None of the above
Got a real messy appeal question on 6/02/2010 that I in all likelihood missed. Involved a continuation filed after notice of appeal. Asking for copendency so can ask for extension of time? I went with C. Here is the question and answers as best a I remember:
Appeal is filed in parent application A following final rejection but no brief is filed, and a continuation B is filed one day before the seven months to file brief in parent A expires. Nothing filed in A (extension of time etc) but cover letter for B says “Commissioner is authorized to deduct any fees etc including necessary to make parent application A co pending.”
Question was what is status of B?
(A) Co pending because filed before notice of abandonment mailed in application A
(B) Abandoned because it should have been addressed to “Director” and not “Commissioner”
(C) Abandoned because separate applications require separate papers, and therefore request for extension in B cover letter didn’t extend A to make co pending
(D) Co pending if an automatic extension is filed in A before seven months expires
(E) Abandoned for some other reason I can’t remember
Any thought on the answer???
I found the following, not directly on point with appeal briefs, but still looks relevant. Based on this, I would think (c) is the correct answer. From 710.02(e):
Applicants are cautioned that an extension of time will not be effected in the prior application by filing a petition for an extension of time, extension fee, or fee authorization, in the continuing application. This is because the petition for an extension of time (or constructive
petition under 37 CFR 1.136(a)(3)) must be directed toward and filed in the application to which it pertains in accordance with 37 CFR 1.4 and 1.5.
but u still can’t make auto extensions after notice of appeal is filed. only 1.136(b) petitions for cause and only before the ssp is up.
I got this Q yesterday.
The the additional facts are notice of appeal was filed on Oct 27, the continuing application was filed with brief on April 26 the following year with authorization to charge necessary fees. The question is “as on May 1, what is the status of the application?” One of the choices is “copending, because it is still within 5 months extension limit and can make another extension.”
I passed the patent bar June 4th. It was my second try. I wasn’t even aware of this website the first time. Make sure you take advantage of all the information this website offers you. I had a ton of repeats. Definitely more repeats in the afternoon. Make sure you know the repeat Qs backwards and forwards. You’re doing yourself a disservice if you don’t know these questions. How disappointing would it be to fail and realize you could have passed had you memorized the answers the the freebies (repeats Qs)?
I like the site too…job well done!
I took the test last Wednesday and I did not pass, unfortunately. I missed passing by 1 question got 68%. I did not have that many repeats maybe 15%. The concepts that were most tested were PCT, Restriction/Double Patenting and provisional patents.
The repeats I remember were:
Japan 45 days
Japan PCT
Mario Lepieux
Mitch and Mac
Best Mode (4.03.17a)
Inert gas
Provisional Filing Requirements (4.03.40a)
Board Decisions (4.03.37a)
Bond 60%C or 60%D
Moondust
Bloc; Synthetic Z (10.03.7a)
Tribell 10.03.16a
Door Handle (10.03.24a)
Reexam Extension of Time (10.03.6a)
I got a question regarding when is a combination of reference in a 102 rejection proper, does any one know? Never or only to define a term in the other reference?
Also got a question about Faxing an oath and an affidavit from Germany just before midnight, but the transmission will not be completed until after midnight.
Bottom line know all the repeats, PCT, appeals, RCE, 102(e) and 119 well
Alex
only to define a term
maybe OK for 1 or 2 other things too, but for sure OK if 2nd reference is only used to define a term
Here’s a list a question I remember from the test yesterday
Q18) Small Entity Status
Q24) Japanese Patent
Q25) Electric Fan
Q31) Chemical Claim
Q36) Notice of Appeal *
Q37) Terminal Disclaimer
Q38) Piecemeal
Q41) Documents Requiring Signatures
Q50) Appeals #6
Q51) Best Mode
Q53) Reissue/Filing Amendment
Q54) Australia (30 Month) – PCT
A new question I encountered:
102(d)
Which of the following is in accordance with the MPEP102(d)?
A. 102(d) establishes NASA
B. 102(d) stopped the oil leak in the gulf
C. Foreign patent can be combined with other prior art to bar a U.S. patent in an obviousness rejection based on 35 U.S.C. 102(d)/103
D. An application must always be filed on or before the 1 year anniversary of a foreign application for the same invention by the same applicant to prevent a 102(d) bar
E. A&D
Obviously I don’t recall what A&B were but I was able to eliminate them fairly quickly.
C is what I chose since it is the last sentence in section 2135.01 (I)(B)
D wasn’t correct b/c if no patent has issued there is no bar under 102(d)
New question I encountered:
102(d)
Which of the following is in accordance with the MPEP102(d)?
A. 102(d) establishes NASA
B. 102(d) stopped the oil leak in the gulf
C. Foreign patent can be combined with other prior art to bar a U.S. patent in an obviousness rejection based on 35 U.S.C. 102(d)/103
D. An application must always be filed on or before the 1 year anniversary of a foreign application for the same invention by the same applicant to prevent a 102(d) bar
E. A&D
Obviously I don’t recall what A&B were but I was able to eliminate them fairly quickly.
C is what I chose since it is the last sentence in section 2135.01 (I)(B)
D wasn’t correct b/c if no patent has issued there is no bar under 102(d)
Another question I hadn’t seen had to do with exparte reexamination and extension of time under 37 CFR 1.550(c). It was a which one of these is not correct type questions.
I chose A and it’s the only answer I remember. It said something like “There is statutory no time limit for for a 1.530(b) statement to a be filed under the provisions of 37 CFR 1.550(c).” All the other answers except E had something about 1.550(c), i was able to look up b,c,d and find what I thought supported them. I believe the relevant MPEP section is 2265 Extension of Time.
Question I had not seen b/f had to do with what to file with a request for an accelerated examination. The answers mapped directly to 708.02(a)Accelerated Examination (I.)(I)(1-5) and was E all of the above.
708.02(a)Accelerated Examination (I)
(I)At the time of filing, applicant must provide in support of the petition an accelerated examination support document.
(1)An accelerated examination…
(2)For each reference cited…
(3)The accelerated examination…
(4)The accelerated examination…
(5)The accelerated examination…
Protest question I had not seen b/f:
Corporation XYZ has you a practicing patent attorney file a protest on patent application A that has already been published but has not received a first office action.
A. The protest will not be considered b/c Corporations cannot file protest.
B The protest will not be considered for some odd reason
C. The protest will be considered even though the application was published because a final action has not been sent yet
D. The protest will not be considered for some odd reason
E. The protest will not be accepted or considered
I picked C based on the information from the cited passage below.
1901.04 When Should the Protest Be Submitted
… a protest under 37 CFR 1.291(a)must be submitted prior to the date the application was published … or the mailing of a notice of allowance … whichever occurs first, and the application must be pending…in order to be ensured of consideration… A protest submitted after the mailing of the notice of allowance will not knowingly be ignored if the protest includes prior art documents which clearly anticipate or clearly render obvious one or more claims. However, the likelihood of consideration of a protest decreases as the patent date approaches.
PCT question:
PCT app filed on 11/20/00 (before the 11/29/00 date) claims US and published in English
IB sends copy to USPTO
Applicant files national stage fee date X
USPTO sends a Notification of Missing Requirements
Files declaration in accordance with 37 CFR 1.497 on date Y (within 2 months from notice)
What is the 102(e) date?
I picked date Y.
Continuation App Question:
File an app
Get a final office action
On the last date of the 6 month period for extension file a continuation
The continuation app requests that the original app be extended under 136(a)
It is now two days after the 6 month period has expired. What is the status of the apps?
I chose the answer that said something about the original app being abandoned and the continuation not being filed since the app was abandoned at the time the continuation was filed and not properly extended.
I believe relevant passage is 710.02(e) Extension of Time:
Applicants are cautioned that an extension of time will not be effected in the prior application by filing a petition for an extension of time, extension fee, or fee authorization, in the continuing application. This is because the petition for an extension of time (or constructive petition under 37 CFR 1.136(a)(3)) must be directed toward and filed in the application to which it pertains in accordance with 37 CFR 1.4 and 1.5.
There may have been an appeal brief filed after the final office action. In either case the date the continuation app was filed was the final day a response was due along with an extension of time under 136(a) in the original application. Either at the end of the 6 (in the case of final) or 7 (in the case of the NoA) month period.
Darth,
Thanks for your helpful posts. I had a similar exam last month that I did not pass by 2 points. Any other recollections? What side did you come down on for the chemical claim? answers are all over the place on that one…might as well flip a coin if they let you take a coin in…Did you have teh same Aussie question I did? Mine went something like this:
Aussie PCT; US national stage; submits, specification, oath authorization to charge fees. The national stage application is:
A. Allowed
B. Disallowed
C. Allowed but need substitute specification
D. 371 treated as a 111
E. Abandoned
Amny thoughts?
Thanks
Man that’s tough one question. Have or are you going to go to the USPTO to review your test? Have you scheduled your next test? From what I’ve read the second time usually goes more smoothly. Good luck on the next one.
For the Chemical Claim question I made the decision before going into the test to go with “Examiner should withdraw enablement rejection, but keep written description as the application does not show how to make said chemical.” which was B on my test. I read up on what everyone posted here and on patentbarquestions and tried to verify with the MPEP but I could not find anything I thought was definitive. Nothing that I thought was significantly different than what has been posted jumped out in the actual question during the test. So I was at least able to spend very little time on the question because I had predetermined my answer even if I missed it.
I did not have the Aussie question.
I agree, the chemical question should be settled in your mind before the exam. Decided against the trip to VA after some cost-benefit analysis. I am scheduled for more abuse in two weeks. I wonder what are the chances I will get a similar exam…I may be wasting my time figuring out what questions I had, what I got wrong, and what the correct answers are…..
I passed the Bar today. Some questions remembered
Q1: multiple reference 35 USC 102 rejection:
(A) Examiner must only rely on a single referenct to make 102 rejection
(B) Multiple references may be used by the examiner to prove that the primary reference contains an “enabled disclosure;”
(C)Examiner may use other references to expand the meaning of a term used in the primary reference;
(D) Multiple references may be used but only to show that a characteristic not disclosed in the primary reference is inherent
(E) Multiple references may be used to prove that the primary reference contains an “enabled disclosure” and to expand the meaning of a term used in the primary reference;
Answer: B
Q2: A design patent was filed in France in June 7, 2003, applicant wanted to file a US design patent application and claim the priority of French filing. How can the applicant make such claim?
a: file US application within 6 months
b: file US application with 12 months
c: file application within 12 months and claim the priority within 16 months
d:….
e: None of the above
Answer: e. (because 119(a)-(d) is not available to design patent. see MPEP 201.13)
Q3: Practitioner paid full application fee, later found that the application may assert small entity status, how can he get refund?
Answer: assert small entity status and make a refund request within 3 months from the payment of the filing fee.
Q4: what amendment made on or after notice of appeal but before appeal brief will be accepted
a: request an unoffice review by the examiner
b: convert dependent claim into independent claim
c: rewrite the claim to make it more persuasive without accepting examiner’s advice
d: add new matter …
e: …..
Answer: not sure, I selected c.
Q5: calculate the number of dependent claims for fee: Claim 1 is independent claim; Claim 2 depends on Claim 1; Claim 3 depends on Claim 2, Claim 4 depends on Claims 2 and 3; Claim 5 depends on Claim 3; Claim 6 depends on claims 2, 3 and 5
a: 5
b: 7
c: 8
d: 9
e: none of above
Answer: I selected c
Q6: US provisional design patent application filed on D1, applicant filed a non-provisional design patent D2, applicant wanted to file a continuing application to claim priority of both applications,
a: filed on D3
b: filed no later than D4
c: …
d:…
e: can’t claim priority of provisional application
Answer: e (119(e) is not available to design patent)
I had Q1-Q6 on my exam as well. SP’s post jogged my memory.
I believe the answer to Q2 is A though SP based on:
35 U.S.C. 172 Right of priority.
The right of priority provided for by subsections (a) through (d) of section 119 of this title and the time specified in section 102(d) shall be six months in the case of designs. The right of priority provided for by section 119(e) of this title shall not apply to designs.
I think priority from foreign apps are ok for design apps just not provisionals or PCT’s.
Also think B is the correct answer on Q4 based on:
37 CFR 41.33. Amendments and affidavits or other evidence after appeal.
(b)Amendments filed on or after the date of filing a brief pursuant to § 41.37 may be admitted:
(1)To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or
(2)To rewrite dependent claims into independent form.
The fact is “before appeal brief”, so “rewrite dependent claims into independent claim” is not the answer. According to MPEP, the applicant can “present rejected claims in better form for consideration
on appeal”, answer c is close to this one,
you’re right sp 41.33 (a) applies with that fact pattern not (b)
Q5: why not 5 (answer a)?
claim 1: ind, so ignore
claim 2: counts as 1 dep on
claim 3: counts as 1 dep
claim 4: counts as 1 dep b/c it is improper multiple dep claim
claim 5: counts as 1 dep
claim 6: counts as 1 dep b/c it is improper multiple dep claim
thanks
I think the correct wording on the question should be “Claim 4 depends on Claims 2 or 3 …Claim 6 depends on claims 2, 3 or 5″ which would make 8 the correct answer. That’s the way it was on my test anyway.
that would make sense then. much appreciate the clarification.
I saw this Q yesterday.
Who cannot sign the oath/declaration:
a: practitioner retained by inventor, then inventor cannot be found
b: inventor died, his legal representitive
c: inventor died or cannot be found, the court appointed a legal representitive
d: joint inventor when the other inventor can not be found
e: the CEO of a company which bought the invention
e: the CEO of a company which bought the invention, the inventor can not be found
The oath or declaration may not be signed by an attorney on behalf of the inventor, even if the attorney has been given a power of attorney to do so. Opinion of Hon. Edward Bates,10 Op. Atty. Gen. 137 (1861). See also Staeger v. Commissioner of Patents and Trademarks, 189 USPQ 272 (D.D.C. 1976) and In re Striker, 182 USPQ 507 (PTO Solicitor 1973) (In each case, an oath or declaration signed by the attorney on behalf of the inventor was defective because the attorney did not have a proprietary interest in the invention.).
Passed test today. Prepared using PLI home course, followed by extensive study of old tests 2002-2003, as well as the “new questions” on this website. Guess it’s my turn to give back to the community.
Overall it was easy. I finished the morning session with about 1 hour to spare and the afternoon session with 45 min extra. Memorizing repeat questions is the key.
REPEATS (OLD):
Mario Lepieux (4.00.10a)
Smith Laminate(4.00.17a)
Foreign Patents (4.02.50a)
Notice of Appeal (4.03.8a)
Potter (4.03.12a)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
Lancer Toothbrush (4.03.33a)
Board Decisions (4.03.37a)
Polypropylene range (obviousness of ranges) (4.03.44a)
New Grounds of Rejection (4.03.45a)
Interference and Reexamination (4.03.12p)
Foreign Priority (4.03.22p) POTTER – 2 VERSIONS
Bloc; Synthetic Z (10.03.7a/4.03.32p)
Bloc; Synthetic Z (10.03.7a)
Smith / DRAM (10.03.9a)
Tribell (10.03.16a)
Correcting the Name of the Inventor (10.03.18p)
Smith & Jones… (10.03.30p)
Foreign prior art date (10.03.40p)
Smith, Jones & Brown (10.03.42p)
NEW QUESTIONS
Q3) Mirror (112 enabling or 112 indefinite)
Q12) 1.131 and 1.132 Affidavits
Q14) Costa Rica and Sweden – PCT
Q15) Spanish Phone – Design
Q19) Mexican Nationals – PCT filed in US/RO not in English
Q22) Germany – PCT / Patent Term
Q23) Broom
Q24) Japanese Patent Qs
Q25) Electric Fan
Q26) Maintenance Fee Paid / Check Returned
Q29) Death of inventor before application is filed
Q34) Investigating Deceptive Intent
Q59) PTO-892
Q61) PCT Publication in US/RO
Q64) Restriction of Combinations/Sub-Combinations
OTHER QUESTIONS:
1) What is needed for accelerated examination?
2) Which statements invoke 112 6th paragraph?
3) PCT – if you file at US/RO you do not need to submit the IA or wait for it to be transferred from IB to enter national stage, just pay the fee. BUT, the facts also indicated there was a correction in the inventorship of the IA that was sent DIRECTLY to the IB – so now do you need to update your IA app at the US/RO? I chose no, just pay the fee – I think somewhere in 1800 I saw that correction of inventorship on PCT should be done
4) PCT – you submit 3 corrections: (I) typo in name, (II) missing page of spec, (III) missing drawing – which corrections will be accepted? (I) will be and (II) will not; but not sure about (III)…
MISC:
I took the 15 minutes to write down 50 numbers as others have suggested. People haven’t mentioned this – but the 1 hour break is optional. I only took a 20 minute break b/c I just wanted to get it over with.
GOOD LUCK!!