Exam Questions and Concepts

2,001 comments

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

{ 2001 comments… read them below or add one }

1 Rolf SeichterNo Gravatar December 13, 2007 at 6:19 pm

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

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2 JeanMarie CalvilloNo Gravatar November 15, 2011 at 12:03 am

Dear Rolf – Much much luck to you on the exam!

I was hoping to purchase PLI materials at a discounted rate from someone on this site. But I need them now, so I guess after December 17th would be too late. How long did it take you to prepare for the exam on Dec. 17th?

JeanMarie

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3 JeanMarie CalvilloNo Gravatar November 15, 2011 at 12:07 am

Much luck to all of you on the exam!

I was hoping to purchase PLI materials at a discounted rate from someone on this site.
Was going to purchase OMNI prep due to their guarantee, but it looks like most posters here are recommending PLI. If you are ready to part with your PLI materails that cover the most recent MPEP version 8, KSR etc., please contact me at 971-533-0193. Thank you.
JeanMarie

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4 patentbarNo Gravatar December 16, 2007 at 9:06 pm

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.’”

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5 drkyeNo Gravatar January 30, 2008 at 1:46 am

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.

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6 JohnNo Gravatar February 18, 2008 at 4:19 am

I really benefited from using this website and passed yesterday! Thanks for your help!

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7 ScottNo Gravatar March 7, 2008 at 8:49 pm

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!

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8 deeNo Gravatar May 4, 2008 at 6:51 pm

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!

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9 lanceNo Gravatar August 9, 2010 at 4:41 pm

Thanks for your input…were there REALLY this many repeat questions?? Looks like you had about 60 repeats…

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10 patentbarNo Gravatar August 7, 2008 at 3:15 pm

“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.”

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11 jpmille1No Gravatar August 21, 2008 at 4:47 pm

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).

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12 infantejNo Gravatar August 21, 2008 at 8:02 pm

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.

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13 tttgasNo Gravatar August 22, 2008 at 7:31 pm

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.)

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14 sanmahanNo Gravatar September 3, 2008 at 3:48 pm

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

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15 samhNo Gravatar November 20, 2008 at 3:30 pm

Thank you very much for this website. Great resources!
where are the questions 43 to 48?
Sam

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16 EdNo Gravatar December 12, 2008 at 3:53 am

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!

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17 SlimNo Gravatar December 20, 2008 at 1:07 pm

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.

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18 patentbarNo Gravatar January 6, 2009 at 1:47 am

1
http://1 | 202.75.39.100

1…

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

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19 OttoNo Gravatar February 12, 2009 at 4:22 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!

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20 NoriNo Gravatar February 15, 2009 at 2:29 am

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.

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21 Matt B.No Gravatar March 11, 2009 at 11:26 am

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.

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22 TyNo Gravatar March 12, 2009 at 3:04 pm

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!

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23 Matt B.No Gravatar March 13, 2009 at 11:38 am

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.

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24 anonymous_rakgcainNo Gravatar March 19, 2009 at 7:28 pm

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.

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25 sinkingNo Gravatar March 20, 2009 at 12:13 am

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.

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26 aliNo Gravatar April 30, 2009 at 11:11 pm

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.

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27 GoJacketsNo Gravatar December 5, 2009 at 4:07 pm

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.

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28 aliNo Gravatar April 30, 2009 at 11:20 pm

Had a new counting claims question:

-How many dependent claims for fee calcu purposes. (I guessed 8)

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29 aliNo Gravatar April 30, 2009 at 11:31 pm

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 :D

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30 aliNo Gravatar April 30, 2009 at 11:36 pm

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)

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31 nypatbarNo Gravatar May 19, 2009 at 10:36 pm

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”

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32 nypatbarNo Gravatar May 19, 2009 at 10:40 pm

! 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

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33 AmyNo Gravatar May 19, 2009 at 11:32 pm

NYpatbar,

do you remember any of he appeal questions?
Also, what is the change of address question?

Thank you

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34 nypatbarNo Gravatar May 20, 2009 at 1:57 am

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)].

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35 nypatbarNo Gravatar May 20, 2009 at 1:58 am

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.

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36 cdvNo Gravatar December 30, 2009 at 10:53 am

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.

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37 cjNo Gravatar July 28, 2009 at 9:40 pm

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.

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38 b8liquid3No Gravatar January 27, 2013 at 7:24 pm

Abandonment of the application could occur r if Applicant fails to apply to the restriction requirement by the Examiner which would be proper after a 1 month statutory time period (If the applicant does not buy extensions of time)& Applicant can buy back as much as 1 month extension of time. In which case the time period could be extended to as much as 2 months. Hope this helps.

BEE

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39 Art WilliamsNo Gravatar August 3, 2009 at 10:00 am

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

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40 Art WilliamsNo Gravatar August 6, 2009 at 9:32 am

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

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41 scruffNo Gravatar August 10, 2009 at 6:26 pm

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….

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42 cindyNo Gravatar August 23, 2009 at 5:03 pm

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.

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43 cindoNo Gravatar September 5, 2009 at 8:11 pm

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.

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44 cindyNo Gravatar September 6, 2009 at 9:09 am

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.

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45 cindoNo Gravatar September 5, 2009 at 8:13 pm

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

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46 jloNo Gravatar November 9, 2009 at 11:07 am

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!

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47 skyNo Gravatar November 12, 2009 at 4:47 pm

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.

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48 Senior44No Gravatar November 21, 2009 at 10:47 pm

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!

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49 Happy in New MexicoNo Gravatar November 22, 2009 at 7:48 pm

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!

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50 Happy in New MexicoNo Gravatar November 22, 2009 at 7:51 pm

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!

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51 Min009No Gravatar December 2, 2009 at 11:00 pm

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!

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52 ChristinaNo Gravatar December 31, 2009 at 1:19 pm

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.

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53 Catch22No Gravatar December 4, 2009 at 4:27 pm

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…

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54 ADNo Gravatar December 11, 2009 at 11:44 am

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.

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55 cdvNo Gravatar December 31, 2009 at 11:03 pm

yeah i had this one
but i think i had a choice of filing ads so i picked that one

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56 ChristinaNo Gravatar December 31, 2009 at 1:16 pm

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.

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57 Emily M.No Gravatar February 13, 2010 at 10:03 pm

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.

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58 cdvNo Gravatar December 31, 2009 at 11:00 pm

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

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59 SNo Gravatar April 13, 2010 at 10:00 am

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.

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60 nikmakNo Gravatar January 7, 2010 at 1:03 am

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!

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61 Lucifer JohnsonvilleNo Gravatar January 20, 2010 at 11:40 am

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

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62 Franklin Y. LeeNo Gravatar January 21, 2010 at 9:48 pm

*** 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.

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63 Emily M.No Gravatar February 13, 2010 at 10:09 pm

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.)

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64 SNo Gravatar April 13, 2010 at 9:18 am

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.

65 Lucifer JohnsonvilleNo Gravatar January 20, 2010 at 11:47 am

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?

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66 Franklin Y. LeeNo Gravatar January 21, 2010 at 9:57 pm

*** I might say the answer is B)???

It seems to me the Question is incomplete (or should I say imperfect?).

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67 Emily M.No Gravatar February 13, 2010 at 10:13 pm

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.

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68 SNo Gravatar April 13, 2010 at 8:56 am

Can somebody explain this question to me Pl?

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69 SNo Gravatar April 13, 2010 at 8:57 am

or direct me to the related chapter, pl?

70 Lucifer JohnsonvilleNo Gravatar January 20, 2010 at 11:48 am

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

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71 Frank LNo Gravatar January 28, 2010 at 4:58 pm

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.”

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72 mdavis68No Gravatar January 31, 2010 at 2:55 am

※ 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.

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73 SNo Gravatar June 5, 2010 at 7:08 am

I got this. E is the answer. All of the A, B and C.

74 Emily M.No Gravatar February 13, 2010 at 10:14 pm

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).

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75 sgwNo Gravatar October 17, 2011 at 1:42 pm

I got this Q on 10/15/2011.

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76 Lucifer JohnsonvilleNo Gravatar January 20, 2010 at 6:07 pm

What do you all think?>

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77 mdavis68No Gravatar January 25, 2010 at 9:05 pm

*** 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???

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78 Frank LNo Gravatar January 28, 2010 at 4:51 pm

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.”

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79 PCTMasterNo Gravatar July 24, 2010 at 4:51 am

answer is (A). See Anticipated under 102(e) (10.03.17p)

80 mdavis68No Gravatar January 25, 2010 at 9:10 pm

*** 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???

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81 Dave SNo Gravatar January 27, 2010 at 4:40 pm

See last parqgraph of MPEP 409.03(i), rights o fthe nonsinging inventor. Looks like the correct answer is (b).

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82 slNo Gravatar February 13, 2010 at 6:13 pm

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?

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83 Emily M.No Gravatar February 13, 2010 at 10:18 pm

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.

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84 SNo Gravatar April 12, 2010 at 6:38 pm

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”?

85 mdavis68No Gravatar February 26, 2010 at 9:42 pm

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???

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86 Chris GNo Gravatar April 11, 2010 at 4:10 pm

D is the correct answer. Just practiced this question the other day.

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87 SNo Gravatar April 11, 2010 at 4:24 pm

I saw this question too…. But don’t think I understand this answer….

88 Chemist62No Gravatar April 11, 2010 at 7:41 pm

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.

89 mdavis68No Gravatar February 26, 2010 at 9:43 pm

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???

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90 PeterNo Gravatar March 29, 2010 at 7:11 pm

Answer (b) See section MPEP 513(e)(1)(2)(3)

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91 SNo Gravatar April 12, 2010 at 6:18 pm

See 37 CFR 1.10 (e)(3)

or

513 VII

92 supkanNo Gravatar February 27, 2010 at 7:08 pm

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

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93 supkanNo Gravatar March 2, 2010 at 5:34 pm

i had Q2 appear on my test yday

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94 patjdNo Gravatar March 25, 2010 at 3:34 pm

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.

Reply

95 PeterNo Gravatar March 29, 2010 at 6:59 pm

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.

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96 GTpatentNo Gravatar May 2, 2010 at 7:25 pm

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.

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97 adminNo Gravatar March 29, 2010 at 10:42 pm

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.

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98 PeterNo Gravatar March 29, 2010 at 10:48 pm

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!.

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99 BobNo Gravatar April 8, 2010 at 5:10 pm

Does anyone know when the duty of disclosure ends? Is it when the patent issues or when the patent has been filed?

Thanks.

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100 DrewNo Gravatar April 8, 2010 at 11:36 pm

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.

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101 didit!No Gravatar April 15, 2010 at 2:49 pm

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.

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102 BobNo Gravatar April 15, 2010 at 5:19 pm

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!

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103 didit!No Gravatar April 16, 2010 at 9:40 am

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!

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104 PeterNo Gravatar April 16, 2010 at 5:46 pm

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

Reply

105 patentbarNo Gravatar April 18, 2010 at 12:09 pm

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.

Reply

106 JSimhaNo Gravatar April 18, 2010 at 4:51 pm

Can someone help me understand the difference between RCE and a continuing application?

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107 SallyNo Gravatar April 19, 2010 at 9:54 am

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.

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108 ilibNo Gravatar April 23, 2010 at 9:18 pm

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.

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109 SNo Gravatar April 26, 2010 at 3:12 pm

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.

Reply

110 SNo Gravatar April 26, 2010 at 3:44 pm

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,

Reply

111 wilifeNo Gravatar April 26, 2010 at 4:09 pm

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.

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112 SNo Gravatar April 26, 2010 at 4:18 pm

Makes sense.

Thank you.

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113 wilifeNo Gravatar April 30, 2010 at 9:38 pm

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)

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114 MarianneNo Gravatar May 12, 2010 at 4:44 pm

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.

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115 ACNo Gravatar May 13, 2010 at 7:27 pm

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

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116 GSNo Gravatar May 17, 2010 at 11:01 pm

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)

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117 KWNo Gravatar May 20, 2010 at 5:11 pm

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!!!!

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118 BananaNo Gravatar June 2, 2010 at 10:26 am

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

Reply

119 SNo Gravatar June 2, 2010 at 10:52 am

Did you seriously get these many familiar questions?

I am praying that I get too….

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120 BananaNo Gravatar June 2, 2010 at 11:06 am

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…

121 BananaNo Gravatar June 2, 2010 at 11:05 am

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…

Reply

122 BananaNo Gravatar June 2, 2010 at 11:11 am

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.

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123 BananaNo Gravatar June 2, 2010 at 11:18 am

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?

124 SNo Gravatar June 2, 2010 at 1:46 pm

I guess I’ll give my “moral” in three days ;-) !

125 RofelNo Gravatar June 3, 2010 at 9:41 am

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 :)

126 newtopatentbarNo Gravatar June 2, 2010 at 1:50 pm

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.

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127 SNo Gravatar June 2, 2010 at 11:21 pm

Amen!

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128 newtopatentbarNo Gravatar June 2, 2010 at 1:56 pm

Oops, I meant you will pass for sure next time. Typo.

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129 SunitaNo Gravatar June 2, 2010 at 5:07 pm

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!

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130 alpatNo Gravatar June 3, 2010 at 3:49 pm

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?

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131 SNo Gravatar June 3, 2010 at 4:06 pm

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.

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132 SNo Gravatar June 3, 2010 at 6:12 pm

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.

133 alpatNo Gravatar June 6, 2010 at 1:49 pm

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

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134 SNo Gravatar June 5, 2010 at 8:15 am

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!

Reply

135 SNo Gravatar June 5, 2010 at 9:13 am

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

Reply

136 makanNo Gravatar June 6, 2010 at 6:51 pm

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???

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137 KBNo Gravatar July 15, 2010 at 6:47 pm

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.

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138 PCTMasterNo Gravatar July 18, 2010 at 11:02 pm

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.

139 SPNo Gravatar July 23, 2010 at 11:21 am

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.”

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140 NNo Gravatar June 29, 2010 at 4:44 pm

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)?

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141 mypatentbarNo Gravatar June 30, 2010 at 4:21 pm

I like the site too…job well done!

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142 AlexNo Gravatar July 8, 2010 at 5:55 pm

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

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143 PCTMasterNo Gravatar July 18, 2010 at 11:03 pm

only to define a term

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144 PCTMasterNo Gravatar July 18, 2010 at 11:04 pm

maybe OK for 1 or 2 other things too, but for sure OK if 2nd reference is only used to define a term

145 darthNo Gravatar July 21, 2010 at 3:16 pm

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

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146 darthNo Gravatar July 21, 2010 at 3:40 pm

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)

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147 darthNo Gravatar July 21, 2010 at 3:48 pm

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)

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148 darthNo Gravatar July 21, 2010 at 4:13 pm

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.

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149 darthNo Gravatar July 21, 2010 at 4:23 pm

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…

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150 darthNo Gravatar July 21, 2010 at 4:58 pm

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.

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151 darthNo Gravatar July 21, 2010 at 5:21 pm

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.

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152 darthNo Gravatar July 22, 2010 at 3:31 pm

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.

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153 kingkhanNo Gravatar July 22, 2010 at 1:27 am

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

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154 darthNo Gravatar July 22, 2010 at 4:17 pm

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.

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155 kingkhanNo Gravatar July 23, 2010 at 2:39 am

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…..

156 SPNo Gravatar July 23, 2010 at 12:42 am

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)

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157 darthNo Gravatar July 23, 2010 at 1:10 pm

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.

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158 SPNo Gravatar July 23, 2010 at 5:58 pm

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,

159 darthNo Gravatar July 23, 2010 at 11:19 pm

you’re right sp 41.33 (a) applies with that fact pattern not (b)

160 PCTMasterNo Gravatar July 24, 2010 at 1:35 am

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

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161 darthNo Gravatar July 24, 2010 at 1:42 pm

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.

162 PCTMasterNo Gravatar July 25, 2010 at 12:51 am

that would make sense then. much appreciate the clarification.

163 SPNo Gravatar July 23, 2010 at 10:58 am

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

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164 SPNo Gravatar July 23, 2010 at 11:01 am

e: the CEO of a company which bought the invention, the inventor can not be found

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165 DGNo Gravatar July 25, 2010 at 6:12 pm

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.).

166 PCTMasterNo Gravatar July 26, 2010 at 7:32 pm

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!!

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167 *Patent* Agent SmithNo Gravatar August 20, 2010 at 11:23 am

Took exam 8/19/2010 passed on first try.

REPEATS (or questions similar to these, didn’t think I had so many but these all seem very familiar)
Mario Lepieux (4.00.10a)
Smith Laminate(4.00.17a)
Mitch and Mac (4.01.23a)
Affidavits (10.01.46p)
35 USC 102(e) (4.02.11a)
37 CFR 1.131 – MPEP 715 (10.02.6a)
Broadening Reissue (10.02.12a)
Dead Inventors (10.02.30a)
Original disclosure (10.02.16p) variation on this
Protest (10.02.46p) variation (correct answer was related to remaining anonymous)
Reduction to Practice (4.02.1a)
nonpublication request/45 days (10.03.44a/4.03.2a)
Notice of Appeal (4.03.8a)
Certificate of Correction (4.03.11a)
Potter (4.03.12a)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
IDS after Notice of Allowance (4.03.26a)
Lancer Toothbrush (4.03.33a)
Rejection, 35 USC 102(e) (4.03.42a)
Polypropylene range (obviousness of ranges) (4.03.44a)
Final Rejection Period for Reply (4.03.4p)
Interference and Reexamination (4.03.12p)
Foreign Priority (4.03.22p) (same as Potter 4.03.12a)
Bloc; Synthetic Z (10.03.7a/4.03.32p)
Smith / DRAM (10.03.9a)
Reexam Extension of Time (10.03.6a)
Small Entity Fee (10.03.13)
Reply to a Second Action Final Rejection (10.03.15a)
Tribell (10.03.16a)
35 USC 102 (10.03.19a)
Public Access (10.03.22a)
Enablement (10.03.32)
Late IDS when client knew about PA all along (10.03.34a)
RCE During Appeal (10.03036a)
Restriction Appeal (10.03.42a)
Foreign Filing without Publication (10.03.44a)
Product-by-Process Claims (10.03.13p) (Same as Beck – Mixture Y melting 150F)
Correcting the Name of the Inventor (10.03.18p)
Prior Art Reference (10.03.19p)
102 Rejections (10.03.20p)
Reply to non-final rejection (10.03.21p)
Which, if any: Chapter 600 (10.03.22p)
Foreign Priority (10.03.24p)
Added Claims in CIP (10.03.25p)
Design Patent in Country X (10.03.27p)
Smith & Jones… (10.03.30p)
Issue fee transmittal form – XYZ Company (10.03.38p/4.03.11p)
Foreign prior art date (10.03.40p)

“New” Questions
Q3) Mirror (Inherent Function)
Q14) Costa Rica and Sweeden – PCT (three of these)
Q15) Spanish Phone – Design
Q19) Mexican Nationals – PCT
Q22) Germany – PCT / Patent Term
Q23) Broom
Q25) Electric Fan
Q26) Maintenance Fee Paid / Check Returned
Q28) Means plus Function variant of Door Handle (Determining Equivalence)
Q34) Investigating Deceptive Intent
Q35) 2 Month Rule for Final Office Action
Q38) Piecemeal
Q40) Assignment
Q50) Appeals (had several Qs on new grounds of rejection by board… procedure following that, etc.)
Q51) Best Mode
Q52) Multiplicity (this is same as Q23 Broom)
Q59) PTO-892 (Question on where/what citations to referenced/disclosed prior art by examiner: PTO-892, PTO-1449 with initials, etc.)
Q63) TP Submissions (Question was about 3rd party submitting Non-Patent Literature (NPL) )
Q64) Restriction (question asked when restriction b/w combination and subcombination was proper or improper, answers were verbatim from MPEP section about restriction practice … i.e. can they stand alone patentably, same field, etc.)

Overall what I remember most (probably b/c I was not prepared for it)
1. Several questions about Board of Appeals making rejection based on new grounds of rejection… some affirmed some overturned, rehearing requested and prosecution requested… what happens where when?

2. Question about practitioner making new argument after all of Reply Brief->Examiner’s Answer->Supplemental Brief, what is acceptable:
(a) new argument presented for first time at oral hearing, then written supplemental paper sent in later,
(b) answer in (a) but without written supplemental paper,
(c) prior to oral hearing, practicitioner submits new argument based on recent judicial decision
(d) practicitoner submits written document with arguments based upon priorly asserted arguments with references to documents containing them
(e) ??

3. Several questions on 102(e) dates for PCT/International applications that later came to USA. (Charts in MPEP 700 would cover these, but I didn’t see them until the PM session!)

4. Co-inventors A and B both gave power of attorney to practitioner X. Notice of Allowance mailed, before it arrives to practitioner, A dies. What is true:
(a) practitioner X sends in issue fee with only his signature
(b) ?? practitioner X must send in notice of A’s death, then can pay issue fee with only his signature.
(c) ??
(d) B must send in proof that inventor A is dead, and can send in issue fee with only his signature if the legal executors of A’s estate do not interfere.
(e) B must send in proof of A’s death. Issue fee thing must include B’s signature and signature of A’s legal estate if the estate wishes to interfere.
I thought that both (d) and (e) were both correct… although the MPEP section on this (think it’s titled something like “legal representative of dead inventors do not have to participate” referred to **pro se** co-inventors and these inventors were represented by an attorney… I think I put (e).

5. Several questions about the US/RO not being competent office to receive an application (1) not in english, or (2) filed by people who are all non-residents and non-citizens … then they ask what filing date will be given and what the US/RO will do (send it along to IB).

6. Question about what an assignee who has not previously or concomitantly provided evidence of assignment can do …. I picked (a) view status of application. Don’t remember what (b)-(e) were but they seemed to be things that required you to be applicant or someone with power of attorney.

Most things were fairly easy to look up if there were merely “what is the standard for blah” .. just search the index for strings of what look like key terminology and you can find the sections they are in… then the answer choices are verbatim and often in the same order they appear in the MPEP. Topics were enablement, obviousness, etc.

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168 *Patent* Agent SmithNo Gravatar August 20, 2010 at 11:29 am

Also had these Q’s:
1. Applicant files nonprovisional application for product to rejuvenate mineral-depleted soils. What is needed to get accelerated examination?
Answers were related to petition to make special. Best answer still has the required fee 1.17(q), even though I thought this application would fall under the category of environmental improvements (which does not require a fee)… other answers did not include all necessary items like prior art search report, written statements about why claims are good, etc.

2. PCT – you submit 3 corrections: (I) typo “CCAR”, (II) missing page of spec, (III) missing drawing – which corrections will be accepted?
I said only (I) because it must be an obvious error apparent to anyone.

3. What is necessary for 112, 6th paragraph? answer: “means for” or “step for” plus some functional language … other options were opposite verbatim of MPEP

4. 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.

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169 rhmNo Gravatar August 21, 2010 at 3:52 pm

Hi, I just took the patent bar and passed. I have two things to say 1) I ONLY used this site to prepare, so THANKS TO EVERYONE!!! and 2) I had more than several bar questions about the timeliness of perfecting priority for international applications under the PCT (specifically under 26 bis).

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170 PKSNo Gravatar August 28, 2010 at 1:33 am

Took the exam 8/26/10. Passed thanks to this site. Here are the repeats / new questions that I remember. Good luck to everyone taking the exam!

Bond 60%C or 60%D (4.00.27a)
Obviousness (4.00.32a)
Prior Art (4.00.42a)
Reexamination (4.00.47a)
102 (f) (4.00.44p)
Foreign Patents (4.02.50a)
Hair Gel (4.02.37p)
Reduction to Practice (4.02.1a)
nonpublication request/45 days (10.03.44a/4.03.2a)
Notice of Appeal (4.03.8a)
Board of Appeals Remanding case to the Examiner (4.03.25a)
Lancer Toothbrush (4.03.33a)
Board Decisions (4.03.37a)
Provisional Filing Requirements (4.03.40a)
Obvious (04.03.41a)
147 Claim Counting (10.03.50a/4.03.28p)
Bloc; Synthetic Z (10.03.7a/4.03.32p)
Amendment after Appeal (4.03.38p)
Prior Art after Notice of Allowance (4.03.45p)
Tribell (10.03.16a)
35 USC 102 (10.03.19a)
Five Steps to Cross a Road (10.03.23a)
Door Handle (10.03.24a)
Enablement (10.03.32)
RCE During Appeal (10.03036a)
Restriction Appeal (10.03.42a)
Moondust (10.03.6p)
3rd Party Submission – Japanese publication (10.03.10p)
Anticipated under 102(e) (10.03.17p)
Correcting the Name of the Inventor (10.03.18p)
Prior Art Reference (10.03.19p)
Reply to non-final rejection (10.03.21p)
Design Patent in Country X (10.03.27p)
Parking Meter (10.03.28p)
Smith & Jones… (10.03.30p)
Issue fee transmittal form – XYZ Company (10.03.38p/4.03.11p)

Q2) Titanium Baseball (July 4)
Q3) Mirror (Parallel/Perpendivular)
Q14) Costa Rica and Sweeden – PCT
Q17) Velcro (Trademarks in Claims)
Q19) Mexican Nationals – PCT
Q20) Information requested from USPTO
Q22) Germany – PCT / Patent Term
Q26) Maintenance Fee Paid / Check Returned
Q27) Reissue (variant of Tommie and Jo)
Q34) Investigating Deceptive Intent
Q38) Piecemeal
Q40) Assignment
Q41) Documents Requiring Signatures
Q50) Appeals
Q63) TP Submissions

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171 DDGNo Gravatar September 2, 2010 at 10:34 pm

I took the test a year ago, was not well prepared, had a few misunderstandings, and got a 68%. There were a good numbere of repeats.

When I took the test on Aug 20 of this year, I knew all the 2002 and 2003 questions, and I had all the concepts, like 102(e) stuff, for example, down pat. But I found the questions on this test to be much more obscure, and all depended on hunting down the minute details with a search. There could not have been more than 7 repeats. I got 64%. Does this happen to others? Does everybody get the same test on the same day? Is there a way of determining the pass rate?

And, most importantly, how does one search? There don’t seem to be good strategies or exercises presented by the various courses. And, having memorized the 2002-3 test, I don’t even have material to practice upon?

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172 tinaNo Gravatar September 8, 2010 at 4:43 pm

I took the patent bar on 8/30 and passed on the first try. I thoroughly reviewed this website which was extremely helpful. I took the advice of all the previous postings and studied 2002 and 2003 exams. I didn’t get very many repeats or variants from past exams but I got a TON of *NEW* questions.

Word of advice, compare the new questions from this website with the new questions from patentbarquestions.com. It really helped to piece together missing facts from a hypo and provided more complete answer choices.

With that said…I am selling my BarBri patent materials to anyone interested.

Good luck future test takers :)

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173 AdamANo Gravatar September 13, 2010 at 2:02 pm

Took the Exam on September 12, 2010. Passed first try. Now it’s time to give back.

Background: I may be one of the only few people that qualified to take the patent bar under Category C. My undergrad degree was a B.B.A. so I didn’t qualify under Category A. I didn’t have enough engineering hours to qualify under Category B. In order to qualify under Category C, you have to take and pass the Fundamentals of Engineering Exam (FE)(if you’re reading this site, you probably know what this is.) In 47 out of 50 states, in order to even sit for that exam, you have to have an engineering degree or substantial coursework towards one (which would just qualify you to take the Patent Bar anyway.) However, in the other 3 states, they either have no requirement or a requirement that I met through experience. So, I signed up for the exam in CA, self-studied, flew to San Francisco, and passed the test on my first try. After I received my results, I applied for this exam.

Study Method: I did the PLI study at home course. Watched all the videos with John White. I then took/re-took/re-re-took the Oct02-Oct03 exams. It was very important to go through the answer explanations. While some questions were not verbatim on the test, knowing which answers were wrong helped cut down on possible search time. I printed the exams out and carried them around with me. I also took the same exams using PLI’s Patware. I created some custom exams using Patware in order to get my pdf searching up to par. I then looked through all the “New Questions” and some of the older exam questions. After that, I re-listened to John White’s lectures on Chapters 700, 1200, 1400, and 1800 while jogging. They made much more sense after having worked through the old exams and I was able to pick up the intricacies that I missed before. Thank goodness that this site is here and people take the time to comment. Definitely read the comments after the question as they will talk about variations and more current answers.

The Test: Showed up a little early and quickly went through Oct03 exam to get my brain going. To enter the testing center, I had to leave everything in a locker except for my ID and some soft earplugs. They took my digital fingerprints, scanned my ID, took a picture, had me turn out all my pockets, and wanded with me with a metal detector before entering the room. During the initial 15 minute software demo, I made my answer sheets for both AM and PM (50 numbers with ABCDE beside them so that you can cross off wrong answers.) It definitely helped as I went back to flagged questions. I also underlined each 10th question number and put my target time there. The testing software only counts backward (unlike Patware) so make sure and put time remaining down. I planned for 30 minutes per 10 questions, which would leave me 30minutes to go back if needed. During the AM portion, I was running a little behind, then I would get a repeat or two and be back on schedule. Had about 30 minutes to go back. Lunch consisted of a PB&J, half a banana, a Mt. Dew, and quickly going through the Oct02-Oct03 exams. Ahead of schedule in the PM since more repeats and I finished with over an hour to go back. The pdf searching was a little different for me. If you wanted to start searching the same document from the beginning, you would have to “reload” it. For example, I’m searching chapter 2100 in the 103 area for something. If I then want to start searching from the table of contents at the beginning, I cant just scroll to page 1, click in page 1, and start searching from there. It will start searching from the end of your previous search. So I would click the “Open” button to reload the document, then start my search. Annoying.

Surprisingly (and fortuitously), I had quite a number of repeats and reported questions. I didn’t quite realize how many until I went to compile this list. In fact there were definitely some questions that I didn’t know were repeats till I just went through them. I wished I had studied the old test questions and “new questions” more. Although some of these questions were variants on the actual test, the subject matter was the same. If pressed for time, I would definitely go over the “starred” prior exam questions and all the new questions.

My test seemed eerily similar to Banana’s exam (post# 114).

Repeats:

Laurel, Abbot and Hardy (4.00.14a)
Smith Laminate(4.00.17a) (comprising/consisting variant)
Prior Art (4.00.42a)
Federal Court Decisions binding for Office (4.00.19p) (my variant used “not invalid” instead of valid, same as Banana, stupid double negatives)
Dead Inventors (10.02.30a) (variant)
Third Party Submissions (10.02.46a)(variant)
Reduction to Practice (4.02.1a)
Japan/nonpublication request/45 days (10.03.44a/4.03.2a)
Notice of Appeal (4.03.8a)
Potter (4.03.12a)
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)
Verification (4.03.31a)
Board Decisions (4.03.37a)
Final Rejection Period for Reply (4.03.4p)
Interference and Reexamination (4.03.12p)
Small Entity Status (4.03.13p)
Bloc; Synthetic Z (10.03.7a, 4.03.32p)
Reexam Extension of Time (10.03.6a)
Smith/DRAM (10.03.9a)
Tribell 10.03.16a
Supplemental Oath (10.03.26a)
Hydrocyclone (10.03.31a)
Dependent Claim (10.03.41a) (variant)
Restriction Appeal (10.03.42a)
ABCD/ABCDE/BCDE (10.03.2p)
Moondust (10.03.6p)
Correcting the Name(10.03.18p)(variant)
Reply to Non-Final Rejection (10.03.21p)
Parking Meter (10.03.28p)
Filing Date – Design (10.03.29p)
Toy Airplane with Foil Wings (10.03.46p)
Product-by-Process Claims (10.03.13p)

New Questions:

Q2) Titanium Baseball (Printed Publication variant – July 4)
Q4) Submitting Tables on CD-ROM (52 half-page, don’t submit on cd-rom)
Q6) Obviousness (generally)
Q14) Costa Rica and Sweden (date at USRO and send to IB, also the Japanese Publishing question talked about in the comments)
Q16) Lip Gloss (barred by public use)
Q18) Small Entity Status
Q19) Mexican Nationals – PCT (Company variant, forward to IB since in Spanish)
Q20) Information requested from USPTO(contact FIU, will tell if patented or published)
Q21) Trade Secret Question
Q23) Broom (phone call)
Q26) Maintenance Fee Paid / Check Returned
Q28) Means plus Function variant of Door Handle (Determining Equivalence)
Q31) Chemical Claim
Q35) 2 Month Rule for Final Office Action
Q36) Notice of Appeal
Q38) Piecemeal (all of the above)
Q40) Assignment (Q1)
Q50) Appeals (Q1, Q2, Q3, Q5, Q6)
Q51) Best Mode
Q53) Reissue/ Filing Amendment (no underline or bracketing)
Q61) PCT Publication
Q63) TP Submissions
Q64) Restriction (linking claim variant)
Q68) Hydrocyclone (method claim)

Well there you go. Good luck to all future test-takers!

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174 Reggae FeverNo Gravatar September 13, 2010 at 8:39 pm

Congrats Adam!

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175 SwingNo Gravatar September 23, 2010 at 4:50 pm

Thx!!!

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176 Kiren RNo Gravatar September 21, 2010 at 10:19 pm

I passed a few days ago and now the shock has worn off I thought it was about time to pay back!
This site is AMAZING!! I couldn’t have passed without the up-to-date info and helpful hits from the other exam hopefuls on here!! So here is my contribution…
PCT and APPEALS, that’s it. KNOW THESE CHAPTERS INSIDE OUT, BE ABLE TO RECITE THEM ‘FOR FUN” – I was amazed at how much of the exam was made up with questions from these two chapters (alongside the usual 102/103/112 stuff). Seriously though the exam went by in a blur (all 6 hours of it!) but PCT and APPEALS is my overwhelming memory and recommendation. I learnt all the ‘usual’ stuff from PLI and all the past papers 2000-2003 and I am glad I did, it made looking stuff up in the MPEP so much easier. My tip for MPEP searching would be pick a bit of the question that sounds like it may have come directly out of the MPEP – try more than one-word phrases but not too many more than 3 or 4.

Having passed I am now looking to pass along my PLI material (thank you John White but if I never hear you voice again it will be too soon!!!) – I have all the course material, DVDs and CDs, past papers, past paper answers and John White’s Analyses of the exams where available (All of this material presents the ‘usual’ stuff you NEED to know for the exam). I also have the Bullseye Material (good for presenting the information in a different way and checking your understanding) and TAPRE Premium Patent Bar Flash Cards (good for on-the-go revision if you travel alot). As you can tell I needed A LOT of help passing this exam but obviously it worked cos here I am! I am looking for ~$900 for everything. email me at krockenstein@cox.net if you are interested.

GOOD LUCK!!

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177 PASSbyMEMORIZINGoldQUESTIONSNo Gravatar September 30, 2010 at 6:23 am

to keep things up to date:

Concepts you can’t pass without:
(1) Core substantive law. Knowing the core substantive patent law. Know cold what each section of 102 stands for — e.g., 102(a) = by another, prior to invention, US knowledge or in use, Global patents or publications. Know the standards for enablement (enable PHOSITA to make and use w/o undue experimentation), best mode (inventor knew of a best mode at time of filing and disclosed it), written description (inventor shows possession), obviousness (3 Graham factors and (outdated) TSM test), etc. MPEP 2100.
(2) PCT Basics. Know when a PCT Receiving Office is competent (at least one inventor filing is resident/citizen and in that RO’s language). Know when PCT’s get 102(e) dates. MPEP 1800.
(3) Types. Know what is required for all application types (provisional, nonprovisional, PCT) to get a filing date.

Concepts you’ll look up:
(1) Examiner Follow up to Appeals. What should examiners do after an appeal? There are so many different paths from appeal; many are asked. It’s all there in MPEP 1200.
(2) IDS Disclosure Situations. Again, many scenarios. MPEP is good at explaining what’s required in each time interval. MPEP 600.
(3) Ex Parte Reexamination, Inter Partes Reexam, Reissue, etc. This material goes on forever. Just lookup what you need to know.
(4) Lists of examples. So often the question is just asking for what options the examiner has, and the MPEP just lists them out. For example, in what situations should an examiner not give reasons for allowance: the MPEP just lists them out. Search two unique words from each line in the right MPEP section and you’re golden.

And just to keep things as up to date as possible, here’s some questions I would recommend knowing:
Titanium Baseball (the pamphlet was first put in the library and shown to members, but then only later indexed. date when indexed? MPEP isn’t really clear here)
52 Tables on CDs (no table was greater than 100 pages, so CD was a bad choice. plus they didn’t submit in duplicate)
Lip Gloss (secret experiments before RTP, and then later gag gifts. 102(b) bars her bec of the gifts)
Small Entity Assertion (assignee need not be a record assignee to assert it)
Trade Secrets (keep it in the envelope unless its important to a reasonable examiner deciding whether to allow patent)
Broom Claims Multiplicity (984 ornamental claims, so examiner should ask to select a few, in a phone call)
Maintenance Fee Paid Without Identifying Patent (use the right petition and pay the right fee)
Means Plus Function Claim Language (which language raises means plus function interpretation)
Death of Inventor During Prosecution (executor can prosecute unless and until assignee intervenes)
Inequitable Conduct (prob judicial decision because it seemed like the answer with an admission was wishy-washy. MPEP says wishy-washy admission wasn’t good enough. not sure though)
Extension Fees After Advisory Action (if applicant files before 2 months, examiner files advisory action after 3 months SSP, fees start when advisory action comes in (although 6 month deadline still there))
Piecemeal Examination (MPEP 707.07(g) lists where acceptable. all of the above)
Faxing Allowed (what can and can’t be faxed)
IDS After Notice of Allowance Options (look up scenarios)
New Grounds for Rejection on Appeal (look up scenarios)
Certificate of Correction in Parent, of Now Reissue (don’t use brackets or underlining when filing the reissue, just file as corrected)
Also Publish in US if 18-Month PCT Publication (unclear of answer: if file PCT and only designate US, make no request to publish, then publishes PCT 18 months, will US also publish when enter national stage? no clear answer. MPEP 1800)
Oath as Amendment (only when filed in reissue after notice of allowance)
Date Format Mistake
What Can Be Corrected by Certificate of Correction (cross out all the substantive changes and only one left)
Supplemental Oaths versus Applicant Data Sheets (know that oaths govern citizenship; know that each oath must state all the inventors i.e. the inventive entity, but each inventor can have their own oath)
Third Party Submission (file within 2 months of publication or prior to mailing of Notice of Allowance, whichever is earlier (not later))
Japan 45 days
Beck’s 150F Melting Mixture Y (distinguish the product and not the process, and evidence by declaration is stronger than evidence by argument alone)
Attorney’s Factual Arguments Mean Little (question asking which reply is strong where you can cross off everything where attorney is the one making factual arguments that a PHOSITA or expert should make)
Verification Requirement (so easy–doesn’t exist anymore)
Smith/DRAM (reject 11-20 because it came more than 1 year after the reference; but 1-10 gets parent priority)
Tribell’s Aroma Therapy Kit (within 2 years reissue so can broaden, but can’t try to get back the claims that were subject to restriction and not traversed and filed in a divisional)
Hydrocyclone (after 2 year reissue so can’t broaden, so can’t add a method claim where only apparatus claims existed before)
Range Anticipation (claims where there were 2 ranges, and a reference had one embodiment within. only way to fix the claims here was to amend outside the reference’s embodiment)
ABCD/ABCDE/BCDE (can still reissue broaden even though said you weren’t going to broaden, if you say you are going to broaden later but still within the 2 years)
Smith’s Laminate (phrased different than listed on the site. mine asked what claim would not overcome)
Pain Alleviation but Cancer Treatment Not Proved (easy, don’t have to prove all operability for 101, just one and pain alleviation is enough)
Laurel, Abbott, and Hardy (all inventors are willing to sign the 131, so have them do it! assignee Burns shouldnt do it)
Federal Court Decision of Not Invalid is Not Binding on PTO (if court finds a patent to be not invalid, the PTO isn’t going to presume it’s valid later on)
PCT Incompetents (one question where filed in wrong language; one question where there was no resident/citizen, so send it to IB so long as fee is paid)

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178 BeaThePatentBarNo Gravatar October 7, 2010 at 6:58 pm

I took the exam today for the first time and PASSED!!!! I’ll write more about it another time, but briefly, there were 50 or so questions (w/o exaggerating) that I had seen from 2000-2003 exams plus the exam questions and concepts from this site!!! This site was invaluable. I didn’t use a review course, but merely wrote up my own notes based on the answers of the 2000-2003 exams and then read and memorized the 68 questions. If anyone is interested in my notes (26 pages plus 4 pages of index) please email me at BeatThePatentBar@gmail.com I am selling them for $34.99.

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179 DanielNo Gravatar October 11, 2010 at 12:25 pm

MODS: Delete this SPAMMER.

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180 KevinNo Gravatar October 12, 2010 at 12:07 am

Passed on first attempt. Exam Date 08/11/10.
Study = 2.5 weeks (~60 hrs), PLI + Mypatentbar.com [I am a law student, so add 1 year to study time]

By the way, at my Prometric they let you bring your own ear plugs and provide hard and extra-small ear cancelling headphones. You can bring in Test-center provided tissues. Two pencils + 4p blank scrap (I wonder if you can ask for the graph paper other people had, would make my columns prettier). Use the tutorial to draw 1st table. Use part of lunch to draw 2nd Table and jot down .
Tips for searching: If you know the material is near the bottom, scroll down the TOC on left, randomly click something halfway, then use find. Don’t bother clicking close, just click outside of MPEP window and it will disappear into background.

Exam: My feel for breakdown = ~35% repeats, ~35% variant, ~5% detailed which is/is not true, ~8% general which is/is not true type in MPEP, ~17% unlisted new
[By detailed, I mean all five answers are found within one or two pages of the MPEP. By general, I mean the five possible answers are on a general topic but answers in different chapters.]
First-half was 1200 Appeal, 300 Ownership/Assignment, 400 Representation, 100 Secrecy
Second-half mostly 2100 Patentability, 700 Examination, 1800 PCT

***Future takers – BE VERY CAREFUL WITH QUOTES, especially in “what is true type Q,” I had more than one instance where only one word was different, or they added one extra word. This type of “catch the error” is stupid, but shrink the MPEP window and compare word for word.***
***Having seen NO PCT questions in the first-half and few patentability, guess what I studied over the lunch break***

Exact Repeats:
Q: Tables on CD-ROM
Q: Hydrocyclone
Q: Chemical Claim – no disclosure, but high POSITA
Q: Piecemeal
Q: Multiplicity – answer is telephone and ask to limit claims
Q: Reissue
Q: Nonrecorded Assignee signature – small entity
Q: 2x Japanese Q’s
Q: 2-3x Old Exam Q’s on access
Q: 1x Old Exam Q on Two-month Rule
Q: 1x Old Exam Q on Best Mode – what is test for best mode
Q: 1x Old Exam Q on changing inventorship
Q: 2x Old Exam Q on right to Appeal (both answers after 2 rejections)
Qs: Variety old/variant questions on what would defeat claims of 102(a), 103
Qs: 2-3x Old/variant questions on Abstracts – what is appropriate inside, binding nature, amendment

Variants:
Q: Titanium Baseball – a new variant, indexing after grand opening
Q: FIU telephone
Qs: 6-8x PCT – priority, missing priority claim, filed in another languagex2, missing parts, missing
Q: Mexican nationals – plus US corp, answer is just forward to IB, not in English
Q: Germany PCT
Qs: 2x Japanese Q’s [I think trial question, one problem had >4 red herrings]
Qs: 2-4x Appeal – 2x board does not hear objections, after decision examiner amends dependent claims or offer app to amend (1 mnth)
Qs: 2x Board New Grounds Rejection – limited prosecution can overturn affirmed rejections, and right to partial prosecution/partial rehearing (no overlap of subject matter)
Qs: 2x Restriction
Q: Mislabelled Maintenance Fee
Q: Spanish phone variant – no mention of phone, but same idea
Qs: 2-3x Old Exam Q’s on Cert of Mailing/Transmission
Qs: IDS – new prior art, before issue fee after allowance, after issue fee, after issued
Q: Investigating deceptive intent – answer is “independent knowledge”
Q: Power of examiner to minor corrections
Q: 2-3x on Provisional: missing figure page (answer was submit new provisional, because everything else was RCEs, continuations), priority claim (cannot claim priority to other apps)

Which is/is not true type questions
Qs: 3-5x dead inventor type – power of attorney, rights of estate, rights of assignee
Qs: 2-3x Remand by board [One of these had all answers that were 'correct' so either test Q or a freebie]
Q: Documents requiring signatures
Q: Specifically asking what is proper text for statement in IDS (did not know before 3 months)

Unlisted “New” questions:
Q: Claims Drafting 1 – proper multiple dependency, answer was “either Claim 1 or Claim 2″ rest were “1 and 2,” “any preceding,” and “1,2or3, with 3,4or6″
Q: Claims Drafting 2 – Invention of two-layer laminate. Prior art is two-layer laminate PLUS adhesive in between. Answer with claim “comprising layer A and layer B” would be anticipated.
Q: Time to Correct Incomplete Appeal Brief – Actually, I think this was mentioned somewhere on this site. Basically, what is latest date to submit an Incomplete Appeal Brief if you filed notice of appeal, immediately submit a bona-fide but incomplete appeal brief, and receive notice of incomplete brief with 30 days to fix?
a) something like 6 month statutory bar
b) 30 days after notice of incomplete.
c) something stupid
d) Depending on date of final rejection, later of 30 days after notice of incomplete brief or 6 month statutory period.
e) Depending on date of final rejection, later of 30 days after notice of incomplete brief, 6 month statutory period, or 2 months after notice of appeal.
First, prosecution and statutory time “tolls” upon “timidly filing notice of appeal” hence why someone on this site said you can use Notice of Appeal + the 2month and extensions to delay beyond 6months. Therefore, 6 month statutory bar should not matter after filing notice of appeal. Nonetheless you have to pay the auto-extension fee when you submit the brief.
So, my first instinct is that you get the LATER OF 30days to fix from Notice of Incomplete OR 2months from original Notice of Appeal, both subject to auto extension 5mnths. This combination was NOT an answer choice. “Tolling of time” happens after filing the notice of appeal, not upon submission of the appeal brief, or does submitting an incomplete appeal brief “restart time” so the original 6 months applies. I answered (e) under this logic.

Whew, I will add more as I remember and comment in the individual Q’s.

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181 lanceNo Gravatar October 12, 2010 at 11:10 am

Hi Everyone,

Took the exam on 10/8/10 in Columbia, MD and passed on first try!! I owe it all to this site and my own motivation to study. I used no other review materials and have no background in law or patents. I gave myself plenty of time (3 months) to study. I read through all the study guides on this site and paid special attention to sections 500, 700, 1200, 1800, and 2100…I read those study guides at least 3 times. Additionally, I learned all the 2000-2003 exams and would highly encourage everyone to literally memorize ALL 800 of those questions, as there were 90% of the exact same fact patterns recycled on the exam I took. Verbatim, there were probably only about 10 repeats, which makes me think I got one of the harder exams, but again, all the themes, concepts, etc, are recycled over and over again throughout the old exams. I found the morning session fairly difficult and the afternoon session somewhat easier. Overall it was a tough exam but I believe my studying paid off and I would not have passed without the study guides, discussion, and new exam questions posed on this site.

You will definitely want to do several practice tests to practice the most efficient way to look up answers in the MPEP. In fact, you will want to memorize sections of the mpep that are a gold mine for answers on the practice exam. I essentially memorized, not the exact rules, but WHERE in the MPEP the rules were…so if the question asked about multiple dependent claim wording, I didn’t memorize the wording, I’d just memorize: 608.01(n) and flip to it. If I needed to know how to overcome 102(a) rejections, I’d know the answer is in 706.02, but I wouldn’t memorize all the specific rules…same with when to use avidavits, 715, or filing dates of applications, 600, search filing date, what can get benefit of COM or COT (section 512) no point in memorizing…the answer is there in the manual…just memorize where to look. This method is somewhat counter to what others say, but I did look up about 70% of the answers in the MPEP, and still had 20 minutes left over on each section. You will absolutely want to do all 800 old exam questions to: build intuition of how test writers think, and gain practice on the best way to look up the answer in the MPEP.

Now on to the good stuff…the repeats (some verbatum, some variation)

Bloc/Compound Y
Beck 150 F
Laurel Abbot Hardy
Overcoming 102 rejections
Multiple dependent claim wording
When 1.131 and 1.132 affidavit is not appropriate
Hydrocyclone improper broadening
Intl app recieved in spanish not english (forward to IB)
3 different questions relating to anticipation
Couple of questions on facsimile (when you can use and when you can’t)
Reduced to practice when actually performed
Lip gloss (question specifically stated experimentation ended, then used in public for over a year so it is a public use bar)
Titanium baseball (didn’t agree with the answer but selected july 4th since everybody who passed selected that answer)
Couple dead inventor questions, just know that when inventor dies, so does power of attorney…estate takes over.
Broom
IDS – new prior art, before issue fee after allowance, after issue fee, after issued
Remand by board from past exam…answer for some reason is that they CAN’T remand to have affidavit considered…even tho this is OK in MPEP, just select it as the correct answer.
New ground of rejection by board
Piecemail – all of the above
Chg of inventorship when not all inventors are on board
Inventor thinks he’s the sole inventor…file his own app and provoke interference
Trade Secrets (keep it in the envelope unless its important to a reasonable examiner deciding whether to allow patent)
CDs (inappropriate because duplicate not made and total didn’t exceed 50 pages)
Verification statement none of the above
Moondust – no duty to disclose
Supplemental Oath (10.03.26a)
Parking meter
Means plus function
Germany PCT
Obscure question about maintainence fee..remembered the answer was verbatium in MPEP so just look it up.

One question REALLY confused me and was on there twice actually…it asked which of the following is true: a.) Assignment records are open to the public. b.) If part of an application is open to the public and another part is not open, then the part open to the public will be available and the part that’s not open will not be available. c.) Assignments regarding divisional/continuation apps are available to the public if the parent is available.

Problem I had was that A and C were correct, but B was not (mpep states that if part of the application is open to public, the whole thing will be) Answer choices only said: A, B, C, or A+B and All of the above. And yes, again this exact question was on there twice. To hedge my bets, for one of them I put All of the above, and the other I put just A, since it’s in big letters in the CFR that assignment records are open to the public.

I’m sure I’m missing a few, but again, just read the study guides, old exam questions and new exams and you’ll be good to go. Practice the motions of looking stuff up in MPEP, and learn the sections and where certain rules are in which sections.

Get a very good nights sleep the night before. I ran on the treadmill until I was ready to pass out and then rested my mind with a game of FIFA before giving myself a full 9 hours to sleep. Dress comfortably…i literally looked like a hobo because I went in with PJs and a hoodie, but looks were secondary on test day. Get a very good, high protein breakfast, and pack a simple, light lunch, also with high protein (I took a PBJ sandwhich, a hard-boiled egg, and an apple. Luckily, there was a bench outside for me to eat alone under a tree and it was a pretty nice day out). Use the entire lunch break to rest your mind. I spent first 40 minutes eating, watching simp sons on my phone, and playing Mario. Took 15 minutes to spot-check myself with a few old exam questions/answers to get my mind going again. The afternoon session started a little difficult, and I was running behind on time, but 3 repeats in a row got me back up to speed and I had 20 minutes at the end to check over everything. One big annoyance was when I was done the exam, I just wanted to know if I passed or not. After the computer worked for 10 seconds of what felt like an eternity, it then forwarded me to some dumb survey…then after it processed my survey answers, I got my result!

Give yourself plenty of time…120 hours over 3 months.
Read the study guides.
Do old exam questions under simulated environments
Build intuition and practice the motions of looking up the answers in MPEP
Review, review review old exam questions, current questions, and study guide material ( should be scoring 95% on old exams)
Go in to the exam rested and focused.

That’s all you need…don’t spend a dime on test prep material. I am proof that this site is the ONLY prep guide you need.

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182 KevinNo Gravatar October 12, 2010 at 1:08 pm

Actually, also had that question on Access twice, variants. Answer was (A) both times. Wording was very tricky.
In my first version, same as yours, but III is wrong, assignment records for parent is available if continuation is public. The reverse is not true, assignment records for continuations are not available if the parent is public. (you cannot guarantee the assignment on the continuation is the same as the parent)
In my first version, III said Assignment records are available to public, if the parent of a divisional or continuation is published.
In my second version, III said Assignment records are available to public, if a divisional, continuation, CIP, OR SUBSTITUTE of the parent was published! (they snuck the last part in, sneaky, sneaky. For that matter, does a Substitute really have a “parent” since it does not claim priority…)

For clarity: Documents on applications are available only if their ENTIRETY is incorporated by reference into another app/continuation/etc that is published. If only a PART is incorporated, then it is generally not accessible (albeit available by special petition MPEP 103(IV), failure by applicant to deny petition makes the entirety available).

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183 DanNo Gravatar October 14, 2010 at 4:34 pm

Just got out of the Patent Bar, it was extremely similar to what everyone else said. Unfortunately I missed a few of the gimme repeats, and a few of the repeats were changed enough to where I still had to work the entire problem.

Not really much to had, a lot of 2100, 1800, 1200, 700; a lot on re-examination, and heavy on the procedural elements, not quite so much substantive questions. And a ton of 102/103.

All my repeats came from 2003 exams, except for two from the October 2002. And those were simple ones, I think the provisional requirements or something.

- Mirror
- Titanium ball
- Costa Rica
- Sweden
- PCT filing dates

One question, did everyone else who passed get their provisional pass after they took the exam? Because Prometric people told me that it takes 2-4 weeks, I was surprised because I thought I got the score immediately.

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184 ChrisBNo Gravatar October 14, 2010 at 7:20 pm

JUST PASSED….

got home….this is my report…(ll make a longer one later).

The exam was easy going. About 30 minute in..i knew i was going to pass. Why?

Because THIS SITE. No kidding.

got the guarenteed formula for passing.

1. Know 2000-2003 tests in and out. Know the right answers..but also know why the wrong answers are wrong.
2. Memorize everything on this site.
a. Go though “Exam Questions & Concepts”..and create an outline for all the probs you only sorta understand.
b. Then go through this sites Forums and get all the reported problems that commenters leave under “Prometric Patent Bar” (there were like 6 problems from the forums i saw on their today). and also, if you have time go through the forum comments of “Exam Questions & Concepts”…
i. Be creating Rules of Law for all the ones you dont get…like “Rule: you can’t do this before you do so and so”…simple sentences.
Thaaaaats it.

As for general info..I saw about 10-15 repeats..not too many. But i was blown away how many answres I already knew from this site. . .

I got done with each section in about two hours, and had ample time to go back and double check and change ones i missed the first time.

USE Process of Elimination…write down A, B, C, D, E vertically and cross them off or put a question mark by the ones your not sure. .. I didnt do it for all the questions…about 20 per test…..you start getting fuzzy from exhaustion about halfway through each section. …this will keep you on track.

anyways….ill coment more on stuff later…but yeah..everything here is ON THERE.

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185 RickyNo Gravatar October 26, 2010 at 4:34 pm

Just passed yesterday….in addition to all the helpful information found on this website (which you should use)…

My two cents:

Know Appeals, Reexam, PCT COLD!!!!
Also, do every single question from 2003 (April and October) and memorize them cold. Lastly, know all the rules/caveats about what happens when an inventor dies/who can sign assignments/what can and assignee do and when/ etc. All the little things found in Chapters 300 and 400.

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186 GiniNo Gravatar November 1, 2010 at 7:12 pm

Ricky,

I’m taking the exam on Wed, and I know 2003 cold. But what about 2000-2002? I’ve only memorized the ones that were noted as repeats…did you see the 2000-2002 questions?

Thanks!

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187 PunitaNo Gravatar November 1, 2010 at 7:50 pm

HI Gini

I am also taking the exam on wed wht hv been ur main focus for prep.

Thanks and Good Luck

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188 toomuch23No Gravatar November 1, 2010 at 8:52 pm

Punita and Gini,
Could the two of you be so kind and re-visit this site after you take the exam on Wed, I take the exam on Thursday, any suggestions after your test would be greatly appreciated!

Thanks

Joe

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189 GiniNo Gravatar November 2, 2010 at 2:34 pm

Hi Punita,

I took the PLI course and supplemented my studying with this website. I took about a month (4-5 hrs) a day, for one month. I’ve honestly worked on my “searching” skills – being able to ctrl+F the right word in the right chapter! A lot of the answer choices are verbatim from the MPEP! Good luck tomorrow!

Hi Joe,

I’ll be sure to come back and report what was on my exam!

190 PunitaNo Gravatar November 2, 2010 at 9:05 pm

Hi Gini,
Thank you for the reply. I have done exams from 2001-2003 three times and have gone through all the questions posted on various sites. have studies through PLI home kit. Let’s hope for the best. I hope I also see some repeats tommorow.

Will post the questions after the test. Wish me luck friends…

Thanks Punita

191 toomuch23No Gravatar November 2, 2010 at 9:41 pm

Good Luck to both of you!

192 oosula1No Gravatar November 2, 2010 at 4:43 pm

Just passed the patent bar today!
I took the PLI homestudy course, but in addition to that, I took practice exams every weekend starting from the very first week of studying without knowing any concepts, until the weekend before test day. (I studied 31/2 months since I’m a full-time student). I took the 2002-2003 exams at least 3 times, and I took the 2000-2001 exams twice. I also took a 1999 exam just to make sure I was on top of things, but I didn’t see any questions from that exam on my exam today. After each exam I spent about a total of 8hrs for each full exam going over explanations to make sure that I knew and understood the answers and concepts to every question. I read chapters 1800 and 2100 twice and Chapters 600 and 700 once all the way through and listened to the PLI lectures multiple times on my ipod. I also took some of the subject-matter-directed exams on the PLI CD that comes with the course, but the actual old exams are invaluable.
My major advice, in addition to knowledge accumulation, would be to get to the point where you are passing old exams on the first try (without having seen them before) and getting scores of at least 70/100. I think if you can do that consistently, you’ll be ready. Taking these old exams not only helps you to remember possible repeats, but taking them over and over gives you an inherent ability to time yourself efficiently.

My time strategy was to be liberal in skipping questions. I would skip questions that 1) I knew I could answer but would take me more than 3 minutes to figure out 2) were ridiculously long 3) I knew I would have to look up. This would get me through the exam on first pass in about an hour with probably just under half the questions unanswered (20 or so). I would then use the last two hours working on the skipped questions which I would now have a more than the 3 minute time limit that is recommended to answer harder questions and questions that I would have to look up. That seemed to work consistently for me.

There were quite a few repeats, I would say between 10 and 15 on my exam:

Filing of an improper RCE after notice of appeal but before appeal brief
Cell phone question about joint inventors whos cell phone invention has been rejected due to lack of enabling disclosure
Actual and Constructive reduction to practice comparisons
Compound Y/cure for cancer/operability question
102 (d) conditions
Aroma therapy kit
“means for pulling open a door” question
Japanese patent/request for nonpublication
Claim counting (April 2003 am #50)
Moon dust
Protest (Rule 1.99)
102(e) anticipation (October 2003 pm #17)
design/foreign priority (6 months instead of 1 year)
expired parking meters/ecu/defective drawing

There are probably more, but that’s all I can think of right now.

There were a TON of appeal questions and a lot of PCT and 103 obviousness concept questions (most the obviousness questions were moderately easy to look up in the MPEP), so definitely be on top of those.

I also really benefited from studying the new questions that have been reported. The PCT questions really helped On my exam they had:
Titanium baseball
Mirror
PCT missing parts
PCT abstract (ISA submission and inventor comments)
Velcro
Piecemeal
Variants on the subject matter of non-US residents/citizens filing in the US/RO and what filing dates they get

DEFINITELY go over all of these newly reported questions before taking the exam. I was surprised at how many of them were on there.

Thanks, first of all for the website and thanks to everyone who gave useful and beneficial comments. Hope I can do the same

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193 toomuch23No Gravatar November 2, 2010 at 5:51 pm

Thanks a lot!

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194 PunitaNo Gravatar November 2, 2010 at 9:02 pm

Thanks a lot

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195 GiniNo Gravatar November 4, 2010 at 12:43 am

Hi Everyone,

I just took the patent bar today. Here are the repeats I can remember:

Moondust
Tribell
Means for pulling door
Aromatherapy kit question
Japanese patent failed to notify of publication within 45 days
Compound Y/cure for cancer – other pain relief utility
Some Smith reference obvious in view of Jones?

Other stuff I remember:
-Question about when piecemeal is ok
- When is a second rejection NOT considered final (when there’s new material in the rejection & the applicant’s response didn’t have anything new)
- PCT amendments filed under Ch.II are filed to the IB (not the IA)
- Remember the 102(e) dates for international applications filed before & after11/29/2000
-Some question about when the rapidity of the invention is ever taken into consideration? I think i said when looking at the level of skill in the art? Just look up “rapidtiy” under MPEP 2100.
- Remember what you need for entering the US stage. What happens when you pay the fee (but your IA was filed in a foreign language) and you haven’t submitted it in English? Do you still get the filing date? I think I said yes, b/c you have 2 months after the 30 month limit to translate.
- A bunch of reexam and reissue questions.
- Remember when you can and cannot file amendments after you’ve filed a notice of appeal.
- Know when the examiner can have more than one reference for a 103 rejection.
- I got one claim counting question.
- Know that issues of fraud can’t be brought up in reexams, but can be brought up reissues.
- Know if prior use/sale (102 (b)) evidence can be brought up in reexaminations or reissues.
- Small entity fees question (what gets discounted).

Hope this helps!

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196 PunitaNo Gravatar November 4, 2010 at 1:03 pm

Hi Gini..

Congrats……….so now we have become professionalmates……

Punita

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197 GiniNo Gravatar November 7, 2010 at 2:31 am

Thank you Punita, congratulations to you too!

198 LMNo Gravatar November 4, 2010 at 11:05 am

Dear friends,

I am writing exam on 11/10 and happy for finding this website. I am sure it will help me. Please keep posting it regularly.

Thanks,
LM

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199 PunitaNo Gravatar November 4, 2010 at 1:00 pm

Hi Friends…

I appeared for the exam today and passed at my first attempt……….it’s really amazing to pass at first attempt…….I got 20-30 repeats and lot of appeal questions…some are fresh in my mind…..

Potter question
ABCD/ABCDE/BCDE
Aroma therapy kit
Moon dust
Piecemeal
Titanium baseball
Actual reduction to practise
102 conditions (from 2003)
Compound Y/cure for cancer/operability question
Trieball
Broom with some 900 claims (but in this the answers were little changed)
US/RO Japenese application

one question in which applicant filed PCT and designate only US I picked the answer in which IB will publish after 18 months but US will not

some files a design application in their country and got a patent what is the last day he can file in US (6 months from the application date)

Some files application in US but did not submit drawings and later the examiner asked for drawings with an argument tht drawings are important for understanding the invention and the applicant did not comment on this and submitted the drawing so what will the filing date of the application (the date on which he submitted the drawings which makes the application complete for the filing date purposes)

one question asked the applicant submitted the response to final OA within two months and advisory came after 3 months so from when the date of extension will be calculated (from the date of advisory action)

new objection raised by the borad what options applicant has

One question on what if inventor dies after filing the application (his legal represtative)

application filed in US with non-publication request and then in Japan without notifying US (application abandoned because of 45 days window and now he has to petition for revival)

One question asked about the time limit for claiming the priority in IA (16 months from priority or 4 months from filing)

One question on filed a reexam got first office action with 2months window but he applicant responded after 4 months and without any extension request (answer was reexam procedings terminated and now he has to file for revival)

Who the owner not of record can sign (small entity status)

One question on someone files for non entity and later discovered it no longer can claim small entity status (how can he correct that)

one question on inventors got a patent and assigned the entire interest to their employer who then gave an exclusive license to onebig company now they have discovered that 2 moreinventors need to be added –who can file (2 or more answers were the exclusive licensee can file but the assignee or the inventors can file for correction of inventorship)

what all can be corrected in a certificate of correction all choices were very confusing with just one word changed

what record of assignment are open to public

what are the conditions for 102 (g)

6-7 PCT questions (one question on what is the time limit to submit drawings)

What all be send through fax in PCT

certificate of mailing can be used for…..I dnt remember the choices but it was confusing

At present i can recall all these question but will post later some more…..Everyone who is preparing for the exam must go through 2002-2003 questions and also appeal, correction, reexam and PCT chapters…..

I am also ready to answer any other questions about preparation…..

Good luck friends….

Punita

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200 toomuch23No Gravatar November 4, 2010 at 11:09 pm

Took and passed the exam today (first time)…

My 3-piece recipe for success:
1.) Know all the questions from 2002 to 2003 exams, be able to take all 300 questions without missing more than 2. It wouldn’t hurt to understand the older ones, I saw one question from them. Know all the new ones posted here too. Reading through all the posts and hearing the arguments for and against the answers really helps give you a better understanding. Be able to answer these questions in less than 10 seconds, its the only way to give yourself enough time to search for the things you don’t know, and if you get a difficult version of the test, you won’t know a lot of it!

2.) Understand all the basic rules and how they are used. Just so ya know, there is an outline of the PLI course on outlinedepot (at least there used to be), if not let me know and I will put it up there. The outline is pretty much verbatim (I know because I have both) of the book that everyone else pays $1,000 for.

3.) Be really really good at searching for answers in the MPEP!!

lacking in any of the three above may result in failing, if i had to choose one that you can’t do with out, it would be searching for answers.

I personally did not feel that my test had a lot of repeats, 20 max (10 in the am and 10 in the pm), I was really hoping for 40, but didn’t get it.

On each section I Marked almost half and ended up changing half of those after searching. Translation…I would have failed without learning how to search.

The am was 10 times harder than the pm (perhaps because I didn’t really have the searching thing down), I would be willing to bet that I missed greater than half of the questions in the am. My general knowledge was not helping me as much as I thought it would and the lack of repeats was discouraging.

However, about half way through the PM, I became very efficient at searching, and I would be willing to bet that I missed 2 or 3 at the most (due to stupid mistakes). I would be very surprised if i passed the exam by more than 2-3 questions. I was comfortable at searching before the exam, but (looking back) my experience at that point was far deficient. Do yourself a favor, don’t wait to learn how to do this during the exam, as it may be too late!!

I agree with some of the above posts, there is no set standard as to what questions you will be will be getting. I saw some questions never mentioned on here (I fail to remember them) or anywhere else (at least 30).

I also read some post on here that talked about searching, and figured it would be no problem and disregarded the posts, I was wrong. It sucked to read question after question, realizing that I had no idea what they were asking. The only way around that is to SEARCH SEARCH SEARCH. If I could do it over (the studying part), I would save at least 100-200 questions (perhaps from the 2000 or 99 exams) and only answer the questions once I found them in the MPEP by searching and only disqualifying answers after I found their wrong version in the MPEP.

I have nothing to add as far as the questions, don’t remember anything different than what has already been posted. I do recall not having some of the questions listed by those who took the test less than 24 hours before me, which just goes to show you, be prepared for anything. I will check back on here occasionally to see if anyone has any questions.

Good Luck!!!!

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201 LMNo Gravatar November 5, 2010 at 12:04 pm

Could you please tell how did you search?
LM

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202 oosula1No Gravatar November 5, 2010 at 4:17 pm

In response to LM, I know the question was for someone else, but it’s good to get advice from as many sources as possible and see which one works for you. After taking practice test after practice test, my searching automatically got better over time. As you see and search more and more questions, you start to remember what chapters they come from without much thought. The PLI course I took also helped me with that. Once I went to the chapter, I would try to find a key word in the fact pattern and/or answer choices of the exam question that probably would not come up a million times in my search and search it in the “find” option of the PDF, which is the version that the MPEP will provide for the exam. Chapter 2100 questions are popular for stating things verbatim, so that can be helpful, but of course not always guaranteed. Other than that, it’s good to read the chapters that most of the questions come from (600, 700, 1200, 1800, 2100), not to try to remember everything, but to give you an idea of where certain subject matter is. For instance, you would want to know that the subject matter on multiple dependent claims is in chapter 600, specifically in section 608.01(n). It’ll save you a lot of time. But my best advice is to just take as many exams as you can and you’ll eventually get a feel for the searching process. Hope this helps.

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203 LMNo Gravatar November 5, 2010 at 6:27 pm

thanks. I am getting ready for 11/10 – LM

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204 GladItsOverNo Gravatar November 5, 2010 at 10:58 pm

It still hasn’t sunk in that I just passed that test on the first try. I’ll pass on some long winded advice for other people.

If you are like me and don’t get much out of lectures I’d say you might want to skip getting something like PLI. I got the PLI course and went through the lectures but it really didn’t help much in hindsight. I think many people will be fine just using this site and taking the old exams.

I find that I memorize best with flashcards and I thought the TAPRE ones I bought were ok. There are about 300 cards. It helps however you still need to connect the dots with other material like the study guide here. They are a good way to start to master the info early in your prep though. I also printed up flashcards that were posted on intelproplaw.com that had a lot of questions (~400) from previous exams. It would be nice if someone made a flashcard file that had just the repeat questions, but printing up the old exams still does the job though.

On studying the old exams, take them under timed circumstances of course, and look up in the MPEP. I actually only did a continuous 3 hour block once. Usually I did 17 questions at a time for one hour. I never got to do two 3 hour blocks to simulate the full test like I wanted to. Adrenaline took care of me though. I don’t think you can count on getting enough repeats to help you a lot. Basically it comes down to efficient MPEP searching. I got to the point where I felt repeats were primarily good for giving me more time to search. You can feel safe knowing the repeats are not beta questions though and will count. When taking the old exams, the first time you take a particular exam that first score is what you need to be aware of. Anyone can get 80%+ a second time by memorizing the answers. The first time taking it will be a better predictor for the real exam when you are getting questions that you haven’t seen before. Spend a lot of time finding things in the MPEP. Like others have said, right answers, wrong answers, anything, be able to find it fast in the MPEP. When you practice searching you will need to not get too dependent on searching long strings. Others have mentioned it, and I found out for myself tonight, the answers are deliberately written with different words and order so you can’t find anything by typing in a string of words from the answer.

The Exam:
One new question (well new to me) that I remember dealt with an application for acne treatment. The examiner rejected it using a prior art patent for acne treatment in view of an article about acne. It was a 103 rejection. The article was written by the applicant. The call of the question was along the lines of which is correct. I only remember two of the answer choices. One was that you can’t use the article in the rejection since it was written by the applicant. The other answer was that you can’t use 102(a) references in a 103 rejection. I don’t remember what I chose or if it was even one of those two.

Had the mirror question but it was the variation not dealing with inherent function. The answer was parallel/perpendicular were both mentioned in the spec and a PHOSITA wouldn’t know which one.

I had that infernal PTO-892 question too. I should have looked at the info here on that more. I spent a lot of time looking for the answer only to guess at the end. That was a waste.

I counted about 14 repeats in the AM and only about 5 in the PM. PM was brutal. I had seen a few PCT and appeal questions in AM and hoped I might get off easy…not so.

A sample of the repeats:
Mario Lepieux (4.00.10a)
Smith Laminate(4.00.17a)
Potter (4.03.12a)
Polypropylene range (obviousness of ranges) (4.03.44a)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
Lancer Toothbrush (4.03.33a)
Smith / DRAM (10.03.9a)
Tribell (10.03.16a)

Some of the new questions I saw:
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
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

In hindsight there are two areas that I wish I had studied VERY thoroughly before the test: dead inventors and anything to do with the board issuing new grounds for rejection.

I had 4-5 questions dealing with the board making new rejections. I wanted to punch my monitor. Trying to read and understand that stuff on the fly at the end of the PM session was futile. My brain refused. I recommend knowing this section very well. They might have been beta questions for all I know (and probably were since I doubt I got any of them right), but it will save you from getting very frustrated like me.

I also had 3-4 questions on dead inventors. One dealt with an inventor who died after filling the application but before notice of allowance. Some of the answers dealt with intervention and by whom. I didn’t try memorizing much in this section but it would have saved me some time obviously if I could have answered without looking it up and I recommend others memorize that stuff.

Probably 3-4 questions regarding US/RO. So know that all well too. When is the US/RO competent, etc.

One thing that worked for me was to go through the whole 50 questions first trying to answer the ones I knew and marking the ones I didn’t on my cheat sheet and the ones I didn’t know I also wrote a short note to the side about what it dealt with like my favorite: “board new rej”. That way, when I transferred to searching the MPEP I could stay in one section of the MPEP and answer all the questions dealing with that topic before moving on. It seemed to be more efficient since I wouldn’t need to reopen the section and my brain was thinking about the subject so I could stay focused on it.

Time to pass out.

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205 rschnallNo Gravatar November 11, 2010 at 10:59 pm

So I took the patent bar yesterday, and.. all good!!
Though I only spent about 3 hours on this site before the test, I do think the site is awesome, so here’s my two cent donation to the cause (sorry it ended up being pretty long..):

Realize, that video lectures (I did PLI) really just give you the basics. Don’t get me wrong, it’s important to be really comfortable with the terminology – provisionals, divisionals, IDS’s, RCE’s, CPA’s, PCT’s, reissues, missing parts, omitted items, etc. etc., but that’s only a start.

My number one study recommendation: do TONS of questions (with answers) (including the ones on this site. They’re on there!!). Aside from the repeats you’ll get, which are basically free points, the explanations to the wrong answers walk you through many of the intricacies that are asked, in various shapes and forms, over and over again.

I’d also recommend actually jotting down lists of things you can/can’t do, elements of things, etc. For example, what can/can’t you do between allowance and issue (IDS? RCE? Continuations?)? In what submissions can you benefit from an express mail date? Which 102 subsections require actions by another? Know the differences between reissue and reexam; intricate differences between anticipation (102) and obviousness (103) including unique ways to beat each type of rejection; what you can and cannot get time extensions for; stuff like that.. You’d be surprised how many questions you’d be able to answer if you have that stuff mapped out clearly in your head (some direct questions, like “all of the following can be filed by fax, except..” and some less direct, like a fact pattern that leaves you thinking about whether you can still file an IDS, RCE, reissue, or continuation at a specific stage of prosecution).

I didn’t have time to skim through the recommended MPEP sections while studying (PLI recommends: 600 and 700, skim; 1800, read twice; 2100, read three times). I assume it’s unrealistic for most people to actually read those long chapters, but if you can familiarize yourself with the chapters (those and 1200), it’ll make searching during the test that much easier. TONS of questions and answer options on the test are lifted right out of the MPEP. It’s worth being familiar so you can search for key words/phrases.

My test…
AM I was dying. Was sitting there pulling my hair out trying to analyze all the various answer options. Was left with little time at the end to correct stuff.
PM was awesome, though!! That’s when the repeats started coming at me, and for the non-repeats, I was looking up MPEP stuff as I was going. Apparently it more than compensated for the sucky morning..

I was surprised (and disappointed) that there were not many claim form analysis questions. Not many “which of the following are not proper multiple dependent claims” kind of thing. Not much of the whole markush, Jepson, consisting vs. comprising, etc. nonsense.

What there was: PCT’s and appeals!! I’d really try to get those procedures down cold, e.g. what can/can’t the appellate board remand for? What’s the procedure once the board decides one way or the other? What will give you an earlier PCT effective filing date? Who publishes PCT’s or national phases?

Actual questions/issues I had on my test:
Tons of Japanese folks filing PCT’s. Every variant.
Titanium baseball (the publication variant)
Tables on a CD (50+ tables, but each under a page long; whether you can hand it in on a CD, need duplicates, etc)
Lip gloss (experimental use (cannot 102(b) bar you) + use as a gag gift (can 102(b) bar you)
A lot of obviousness stuff (e.g. what is not a stage in showing a prima facie case of obviousness; differences from 102 anticipation; how to get around various obviousness rejections)
How to fix having paid as a small entity by mistake (there was an assignment to a large company without the practitioner’s knowledge)
The Mexican nationals (mixed nationality inventors filing a PCT in the US; extra twist: filing in Spanish, I think, and client needed it filed immediately with no time to translate..)
Info requests from the examiner (“examiner can require applicant to disclose all of the following except:…” (and I had no clue..))
Whether/when trade secrets in a reexam become public (requests to expunge coming from both sides – again, I had no clue)
Broom (a few hundred specimen to check – I think the answer: examiner can ask you to reduce to a reasonable number)
Something on what you can/can’t file by express mail (I know there was a maintenance fee as one of the multiple choices – was surprised to find in the MPEP that you can..)
How to identify 112 6th paragraph means + function elements
A bunch of “what do you do if you find out you screwed up X after allowance/issue/final rejection” – know your reissue/reexam/RCE/appeal/IDS cold!!
A few inventors died on me – know who can continue prosecution/exclude others
I had one on the two month rule (advisory action after final rejection where you’d replied within two months)
I had a “piecemeal” question (“examiner should avoid piecemeal examination, but it’s still appropriate where:..” I think some options were, where there were a crazy number of specimen in an application, other formal objectionable stuff, etc.)
What you need in order to record an assignment (whether you need the original assignment document, in English, the original application vs. copy, etc.)
A few on restrictions – combined with rejections, mixed with appeals, etc.
What the story is with the US publishing/not publishing PCT’s filed here, later going into the US national stage (is there an international publication? By US? By US in the national phase? Twice?)
Finding obviousness for a product by process (know that you’re claiming a product; not the process! It was mixed with some other quirk about obviousness)
Laurel and Hardy, or whatever they called ‘em..
Obviousness/anticipation where percentages of ingredients are not identical in the prior art. I think I also had a similar question where the claim had a percentage range, and the prior art had one specimen with an exact amount, that fell within that range – I think the claim needed amendment so it does not include that specimen)
Federal courts’ opinions (on appeal) and how binding they are on the PTO (e.g. if the PTO later finds new ground for things, etc. (couldn’t figure it out for the life of me..))
The fact that you don’t have to write stuff in your spec that’s obvious to average skilled people in the field, and whether you can rely on material published after filing to determine that (I think another option in that question: whether examiner can use post filing publications to show obviousness, combined with prior art – I seem to remember that applicant can use it; examiner can only if was obvious even without the new publication (so basically he can’t rely on it..))
Filing a reissue saying it’ll be a narrowing one, then later broadening it, all within 2 years (the ABCD vs. BCDE question – I think I concluded you can do it..)
Something about an uncooperative inventor not willing to add a missing inventor to an issued patent, where owner and other co-inventor think it’s right to do so (I think the answer was some sort of reissue – think I found s something like it in the MPEP..)
A question on the difference between enablement and the writing requirement in 112 1st paragraph
Duty to disclose questions – when you find out you made mistakes at various stages of the prosecution/patent life. Know when your duty ends; how you can fix at each stage; etc.
There was a question on whether/how you refile info from a certificate of correction into a continuation (or maybe it was into a reissue?)
Potter was in there..
There was a question on protests (I think it asked at what stage you can bring one)
Beck (the 150 boiling point vs. the 300 boiling point and how you get around the 102/103 rejection)
Under what circumstances can the board of appeals remand to examiner? (It was one of those “they can remand in all of the following, except:..”)
I had the separate verification question (don’t need them much anymore, due to 10.18 ethics..)
Something about an appeal brief being insufficient and what happens to the appeal (and how long you have to fix it)
I had Bloc and the synthetic Z (Y that could cure cancer (untested) but can also relieve pain – relief of pain – being enough utility for the claim to go through, I think..)
What happens when you miss a deadline in a reexam (revival, retroactive for cause extensions, etc)
A weird question on what an unrecorded assignee can do (I went with “sign off on a correction of inventorship” as that was the least intrusive option and sounded right..)
Actually had the moon dust pencil eraser.. (I think there was no need to notify the PTO that it was only a speculative idea, under the facts of the question, though I gotta admit, it didn’t sound right to me..)
Had a question on knowing that 102(d) is shortened to half a year for design patents
Had the toy plane with wings covered with aluminum foil (and whether a toy plane with gum wrappers, which include aluminum foil, but on the entire plane, makes this obvious – I thought the wording of the claim was broad enough to include the prior art (even though the spec narrowed it to aluminum on the wings only..)

A word on the test center: I do appreciate that this is a lot more technologically with-it than other standardized tests, but still.. Searching the MPEP is ANNOYING.. Ctrl+F for search doesn’t work, nor does Enter to see the next find. You have to mouse click the corner of the window (which becomes hidden whenever you go back to the questions..). Not to mention that you have to open your particular chapter of the MPEP in the annoying drop-down window every time you need to switch chapters. May sound petty, but it gets to be annoying..

That’s about all from me..
Good luck to all, and hope this post wasn’t a complete waste of everyone’s time..
R

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206 LMNo Gravatar November 13, 2010 at 2:39 am

answered on 11/10 at Atlanta, GA – did not do well – missed by 2 points. Had following questions as per my recollections- did not have much repeats

moon dust
markusch group
design patent for priority – 6 months
cancer treating

Lots of appeal and pct questions

=Appeal – extension to file runs from date of notice / date of advisory action
=IDS – in pct – if filed details in foreign applicaiton then do need to pay fees at national stage
=IDS – in pct – if not provided details then do need to pay fees at national stage
=Protest – grounds for protest
=japan filing
=claim cont – dependant claim count – repeat
=improper dependant claim – was from repeat – i guess
=pct priority dates – foreign filing claiming benefit of provisional applicaiton
=foreign filing prior to cutting date – with english publicaiton etc – priority date
=USPTO not receivng docs – how to prove
=third party submissions – details of submissions – what can be submitted
=reisue – when improper
=reexamination – non filing answer in time frame – termination- how to revive
=102 (b) – how to get around by affidavit
=enablement and specification – what is requried
=enablement when satisfied and written description when satisfied – no previous art of how to make – POSITA would know – explained with chemical formula – enablement satisfied? written description satisfied?
=missing parts in pct applicaiton
=missing english translation – paid basic fee and other documents – okay?
=pct – amendment to claim and specification after search ? okay and how

do not remember much – will post if remember again
LM

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207 test-takerNo Gravatar November 16, 2010 at 10:30 pm

Hello All.

Many thanks for this website and this community.

Some repeats I had last week:

– DRAM
– Japanese application, 45 days to notify USPTO due to previous nonpub request.
– 3 PCT questions involving Costa Rica; Sweden; German inventors as described in earlier posts
– two dead inventor questions as described in earlier posts
– Perpendicular / Parallel mirror
– Beck
– Bloc
– laminate
– Potter
– Maint. fee question as described in earlier posts; I picked the the only answer that did not list 1.377; it was choice (e).
– Several others seemed familiar

————–
Other comments:

– I used the Subject Matter Index heavily during the test and I would recommend using it.

– The figures and especially flowcharts under 706.02(f)(1) were helpful for learning about 102(e).

– plenty of practice with 2003 and 2002 tests; so many of the non-repeat questions seem to be variants of these questions.

Good luck to all! And thank you, again.

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208 toomuchNo Gravatar November 29, 2010 at 1:38 pm

I know its probably too late, but here is my suggestion. Take a 2-3 word strand from an answer choice and search for it in the relevant chapter.

Degression: sometimes searching for 4-5 word strands will get the answer more quickly, sometimes it will give no answers. Picking the rights words, and the right number of words to search, its the key to mastering the search function. Too little (i.e. 1-2 word strands) = 1000’s of “hits.” Too much (i.e. 5-6 word strands) = no hits. You must find the happy medium. End degression

Searching stuff from the answer choices, more often than not, will get you to the answer faster. However, if that is not working, take a word strand from the fact pattern, and search that.

If you have no idea what chapter to search, search the index first, and it will direct you were to go.

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209 toomuchNo Gravatar November 29, 2010 at 1:39 pm

Addressing LM’s question about searching

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210 YWNo Gravatar December 6, 2010 at 7:19 pm

Passed today (12-6-10) in San Diego. Thanks to this wonderful site. Lots of repeats (40%-50%). Easy with 1.5 h to go for checking. Just do old exams and brows this site. The above Kelvin’s comments is helpful. Good luck.

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211 studierNo Gravatar December 7, 2010 at 7:15 pm

YW, that’s great! That is a ton of repeats too!

Remember any unusual new questions?

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212 JM70No Gravatar December 9, 2010 at 9:25 pm

Passed today, in San Diego.

Lots of lots of thanks to everyone from the host to the contributors!! Have a great holiday season!

15 to 20 Questions from the above list of 68 questions. Do read this, but take it with a grain of salt, and read carefully on the exam

15 to 20 Questions from 03 and 02 exam. I would say more from 03 than 02. Most of them are verbatim. Read the next page of “Repeat Questions” for sure.

Practice searching a lot. Even for questions that you already know the answers, try to see if you can retrieve the relevant section or text in 1 or 2 hits. Really speed things up a lot. There are a few (~5) pure rule based questions without any fact pattern, so search fast and read fast, but carefully. They often miss one word or use the negative version of a word to trip you up.

Sections heavily tested: 700, 1200, 1400, 2100

Know 1200 well, I guess if one will spend a lot of time dealing with PTO rejections, good to know anyway.

102(e) dates are tested 3 or 4 times

obviousness ~3 times. There are 2 questions side by side, asking almost identical thing, but one was written in a negative way. I bet one is a beta question.

stuff from 2100 seems very searchable, try a few string and gets you to the right section with identical wordings.

who can sign what appeared quite a few times

what’s the minimum requirement for getting a filing date, wether its a regular, provisional, PCT, or reissue (reissue filing date requirement is the same as for the regular nonprovisional apps)

PLI helps

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213 AVNo Gravatar December 11, 2010 at 2:16 pm

I passed yesterday on my first try, in Alameda, CA.

I used this site extensively, after doing the PLI home study course, so I thought I’d pass along my report. FYI lots and lots of Appeal questions, several on dead inventors, and fewer PCT questions that I was expecting.

AM session was much tougher than PM (maybe more beta questions?), with about 10 repeats. I had to look up lots of material and even ended up with a few that I wasn’t entirely sure on. I used every second of the 3 hours.

PM was much easier, with about 20+ repeats. Still had to look up plenty of stuff, but the rest was so easy or automatic that I finished 20 minutes early even after reviewing everything. Lots of questions on appeals, especially when the Board issues new grounds of rejection. After my first pass through, I realized that the majority of questions I had marked were all in the Appeals chapter.

The repeats I remember (previous exams and reported here) included:

Mario Lepieux
Jon/John typo correction
Smith laminate
Smith DRAM
Compound Z cancer cure
Japan 45 days
PCT Swedes, Costa Ricans, and Germans (all 3)
Third party submissions (what is required, not when)
Spanish phone
Lancer toothbrush
Electric fan
Potter (103 rejection only)
Deceptive intent
Non-signing joint inventor
PP/PE claimed ranges obviousness
Divisional reissue
Chemical claim
Broom handle multiplicity
Form 892
Certificate of Correction (can be used to perfect foreign priority)
Issue Fee Transmittal Form
Piecemeal examination
Beck mixture Y melting point 150/300
Best mode (need not specifically call out)
What fees are NOT reduced for small entities (recording doc affecting title)
Tribell
102b “on sale”
ADS (oath governs citizenship inconsistencies)
Restriction (must elect and set forth reasons if traversing)
CIP claims effective filing date
Mirror (parallel/perpendicular)
PCT 102e date Japan
Appeal, 1-3 rejected, 4-5 objected, 6-10 allowed => Issue w/6-10

Missing drawing in Continuation variation – there was no option for “if Continuation includes incorporation by reference to parent, need not respond to Notice of Omitted Items.” The answer was, “if drawing was submitted with all papers and filed by Express Mail w/mailing # on each page and applicant can submit proof showing application as filed …”

112 6th compliance – question gave as one option that the claim must include “means for” and another option that the claim must include “means for” and be modified by functional language => the latter is correct

PCT correction/amendment – tried to fix 3 things, which will be allowed: 1) change ccar to car, 2) add content to spec that is not new matter and has support elsewhere, 3) add drawing that was included in priority doc incorporated by reference, options were A) 1, B) 2, C) 3, D) 1 and 2, E) 1, 2, and 3 => answer is A.

New questions:

New obviousness question where all answers were taken from 2100.

Certificate of mailing, what can be filed – options included amendments, petitions, fees, one crazy, long-winded answer, and CIP filing => answer is CIP)

PCT 102e date for IA pre-11/29/00, which claimed priority to foreign app, then moved into national stage in 2001 and published in English => no 102e date!

Utility app filed w/o claims, how can filing date be preserved? There was no option that said this was irreparable, 4 options related to submitting something late, E) Convert to provisional, which does not require claims, and file utility w/in one year from filing date => answer was E

New matter is added to spec, which changes the scope of Claim 1, new matter also added directly to Claim 2, what should examiner do? The two plausible answers were A) Object to new matter in spec and reject Claim 2. Claim 1 need not be rejected, and B) Object to new matter in spec and reject Claims 1 and 2 => I chose A.

On appeal, Board confirms rejection of Claims 1-10 and issues new grounds of rejection on Claims 11-20. Upon reopened prosecution, practitioner enters new arguments relating to new grounds of rejection and amends claims such that all claims are now allowable. What should examiner do? Plausible options included (can’t remember exact wording) A) Examiner should allow only Claims 11-20, since rejection of Claims 1-10 was affirmed by Board, B) Examiner should not consider any new arguments by practitioner, C) Examiner should allow all claims and pass to issue, D) Examiner should pass app back to Board for consideration, Board will only consider arguments as to Claims 11-20, E) don’t remember => answer was C.

Examiner has submitted appeal brief and reply brief after Examiner’s Answer, what additional evidence can now be submitted? Given I and II (don’t remember), III) arguments that were previously presented during prosecution, and IV) arguments relating to court decision that occurred after date reply brief was sent, options were A) I, B) II, C) III, D) IV, and E) III and IV => I was torn between D and E but couldn’t find support for III in MPEP so went with D.

Who can NOT view assignment records of non-published app? The answer was obvious once I looked up that someone who is a bona fide potential purchaser of app may view

What is true regarding power to inspect? A-C related to people having oral authority; authority must be written. Plausible options were D) A power to inspect may list multiple apps, E) Power to inspect must identify app by app # => I chose D, since apps can alternatively be identified by serial #/filing date

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214 studierNo Gravatar December 11, 2010 at 5:38 pm

regarding re-opening of prosecution (4 paragraphs up):

1214 Procedure Following Decision by
Board

I. SUBMISSION OF AMENDMENT OR
**>NEW EVIDENCE41.50(b)(1)new evidence< relating to the claims so rejected,
or both.”

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215 studierNo Gravatar December 11, 2010 at 5:41 pm

I. SUBMISSION OF AMENDMENT OR NEW EVIDENCE<
37 CFR 41.50(b)(1) provides that the application
will be remanded to the examiner for reconsideration
if the appellant submits “an appropriate
amendment” of the claims rejected by the Board, “or
new evidence relating to the claims so rejected,
or both.”

216 LMNo Gravatar March 26, 2011 at 10:52 am

Some correction in my opinion for answer given for new questions:

1. PCT 102(e) date –
ifiled pre- 11/29/2000 + national stage after 11/29/2000 + voluntarily publishied in English = date is IA for 102(e) for patent BUT there is no date for publication

2. New matter added in spec which affects claim + amdt to claim
= if new matter is entered into the claims or affects the scope of the claim, the claim affected should be rejected u/112 para 1
= when amdt to spec/claims involving new matters are ordinarily entered, such matter is requried to be canceled from the descriptive portion of spec & claim affected are rejected u/112 1st para

In view of the aforesaid reading = answer would be (B) new matter to object in specs and claim 1 & 2 reject.

3. WHo can can not view asgmt docs = you answered bonafide purchaser => actually Bonafide puchaser can view asgmt docs

4. Power to inspect – what is true
choices were – may list mutliple apps / must identify app by appln #
answer were given by AV is multiple apps HOWEVER as per 100 –
= power to inspect must specifically identify the appln by number and be limited to a SINGLE application.

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217 AVNo Gravatar December 11, 2010 at 5:28 pm

just a note on my post above, the Certificate of Mailing question was stated “what can NOT be filed using a CoM” — sorry for any confusion

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218 wymountNo Gravatar December 17, 2010 at 12:46 pm

Took exam yesterday, not very luck, only 68%, have to retake. Not too many repeat questions (only about 10 questions I met for both Morning and afternoon sections). Looks more and more new questions have added into Patent Bar Exam database.
The repeats I remember (previous exams and reported here) included:
Compound Z cancer cure
Japan 45 days
Piecemeal examination
Declassified Reference
Moon dust
Markusch group
design patent for priority – 6 months
cancer treating
Maintenance Fee (not repeat question, new question and cannot remember)
Combination and Subcombination
Means plus Function variant of Door Handle

New questions I can remember (maybe a little inaccurate, please help to perfect):
1. PCT question
A US application filed on 05/06/2001, which is a continuation application of International application. International application was filed on pre-11/29/00 (don’t remember the date), and no any priority was claimed. So what’s the 102(e) date?
Answer (a) 05/06/2001; (b) IA filing date; (C,D,E) don’t remember

2. International application was filed before 11/29/00, and then enter national phase within 30 months with only description and fees on 02/08/2002. The other items were timely filed on 03/08/2002 after receiving the notice of missing items. What’s the 102(e) date?
Choice (a) IA filing date; (b) 02/08/2002; (c) 03/08/2002 (D,E) Don’t remember
I chose b

3. Question asked the concept if the statement from examiner is not necessary after the appeal brief was sent or allowance was sent (don’t remember exactly )

4. Board confirmed the rejection of claim 1-20, in addition, board also issued a new ground of rejection. Applicant amended the claims to allowable under the new ground. So what examiner can do?
(a) Allowable the application; (b) reject the application and make it final since board still affirm the old rejection; (c, d, e) don’t remember

5. John, a registered practitioner, is now in German. Today is the last day to send a response to PTO. If he send the response by facsimile, PTO receive it will over midnight of German, but still have several hours before US eastern midnight. So the practitioner could:
(a) Fax it to the PTO before midnight which is several hours before midnight of US Eastern Midnight ; (b) Use German express mail; (c) By certificated mail; (D,E) Other choices.
Chose a.

Trying to remember more, and will post it later.

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219 VLNo Gravatar December 18, 2010 at 12:39 pm

I took the exam yesterday and passed. The comments on the webiste were very helpful.I did the PLI course but would highly recommend reading through this website as well. My exam was very similar to what AV above has described, most of the questions were in my exam. The morning session was tough and I was still looking up answers when the session ended. The second session was easier and I had lots of time to review. There were not many identical repeat questions. The Potter, John/Jon, Smith laminate, spanish phone questions were all slight variations of the question so read through carefully before answering.. There were several questionss on appeal. I read through 1800 in the MPEP after reading the comments on the website and I still had to look up the answers!

I did not have as many PCT questions as I expected but one new one that I do remember is what will happen if an Japanese citizen who is a US resident submits an international publication to the US recieving office in Japaense. I think the answer is that it is forwarded to the IB as the US/RO is not competent.

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220 JustinNo Gravatar January 6, 2011 at 6:52 pm

Had a question today about an inventor hiring a patent attorney to file application and gives power of attorney. The inventor also assigns part interest to the attorney to cover his attorney fees. The inventor dies. Question wanted know what the MPEP allowed. Not sure about the answers but 2 of them mentioned the attorney could continue to prosecute the app or a new power of attorney signed by the legal rep’s would be needed to continue pros.

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221 TomNo Gravatar January 11, 2011 at 4:45 pm

I had this question today. I thought the answer was that the agent/attorney could continue without a new power of attorney because they were a partial assignee of the application.

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222 patent agentNo Gravatar January 7, 2011 at 12:10 am

Looking for patent agent job. Do you know any one is hiring ?

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223 BarnNo Gravatar January 21, 2011 at 3:24 pm

Same here, I’ve done searches online and it seems like a lot of places requires at least 2 years of experience as a patent agent.

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224 AnneNo Gravatar January 19, 2011 at 10:33 pm

I’d like to thank everyone who contributed this site.
For the questions I saw/remembered today, I posted under the individual repeat questions. The questions I haven’t really seen before were appeal questions about procedures involving new ground rejections by the Board, and (a bit to my surprize, and they might have been related ones in the old exams before 2002 which I didn’t have time to review..), assignments, and ADS/supplemental oath/declaration (supplemental oath/declaration should name the entire inventive entity even though less than all inventors’ information is corrected). I saw correction of inventorship questions (for applications and patents) more than I expected, and quite a few inventors died on me, too, before and after filing.
Good luck!

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225 BenNo Gravatar February 2, 2011 at 7:35 pm

I took the exam today and passed and wanted to help people out before I forget everything.
I am not sure how often they mix up/add new questions but read Anne’s post carefully if you are taking the exam soon- I had a very similar exam, and some of the same questions jumped out on me..
3 questions regarding an ADS/supplemental oath/declaration- (it was important to note that the more recent document controls except when it comes to inventor names/address where the oath controls).
2 PCT questions regarding filing date if the the applicants are not residents/citizens of the US.
Around 3 questions regarding death of an inventor.
Around 4-5 questions about an appeal. Made me wish I had actually read that section ahead of time. 2-3 questions where the board added new grounds of appeal.
Generally speaking it really helped spending time reviewing past questions.

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226 RodneyNo Gravatar January 20, 2011 at 9:46 am

regarding Justin and Tom’s Post:
…inventor hiring a patent attorney to file application and gives power of attorney. The inventor also assigns part interest to the attorney to cover his attorney fees. The inventor dies. Question wanted know what the MPEP allowed…

See MPEP 409.01, the POA does not end b/c the atorney has a part interest

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227 SandSKNo Gravatar January 20, 2011 at 5:39 pm

Hi Folks: Thanks for the great website and all the comments. They are very helpful especially to a newbie like me. I am planning to give the exam in June of this year and was wondering if someone can provide me any insight for what worked best for them.
I do not have any background in law.
My initial thought was to read by myself (Ultimate Patent Bar By John Watts), and do the practice questions as a lot tend to be repeated, but I want some opinions from the folks who gave the exam recently.
If you can suggest taking an online course (courses like PLI are very expensive) – self paced or any other book or studyguide, I would certainly appreciate that. Thanks.

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228 RodneyNo Gravatar January 21, 2011 at 10:18 am

SandSK,
I also do not have a law ackground and started from scratch. Here’s my approach which I believe will be successful. I bought PLI course audio CD material off ebay. I used the PLI explainations and the MPEP as a foundation. I memorized the basis of the 15 important MPEP chapters. Next I took all the old exams several times to gain speed and learned to understand terrms / fact recognization. Lastly memorize any of the Repeat questions that you may miss and the answers to the New Questions (both listed on this site). Once you get to this point you should be well on your way. Good Luck.

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229 SandSKNo Gravatar January 24, 2011 at 9:22 pm

Thanks Rodney.

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230 InterenNo Gravatar January 23, 2011 at 12:24 pm

Anybody has idea whether the ‘Claim drafting’ exercise from the PLI course is helpful for the exam? My understanding is they are for the old format of writing test and no longer required.

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231 RodneyNo Gravatar January 23, 2011 at 2:45 pm

The current Bar exam doesn’t require actually drafting a claim. I completed the claim drafting part of the PLI home study course and found it helpful in understanding some of the MPEP concepts about claims. The exercise was more useful when I started actually drafting claims in my law firm. It gave a good foundation to start drafting real life claims.

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232 InterenNo Gravatar January 23, 2011 at 5:57 pm

THANKS FOR THE REPLY. MAKE SENSE. IN THE INTEREST OF TIME, I WILL SKIP IT FOR NOW.

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233 VIVIANANo Gravatar January 24, 2011 at 6:07 pm

I passed yesterday on my first try, in Miami, FL and I wanted to say thanks to everyone on this website… it’s a great community.

I know two other people down here in South Florida that have passed this exam and I studied for this exam the same way they did & just like they told me! I also know a few people that have taken this test multiple times and failed! I was really concerned about this exam and I didn’t want to fail and look dumb in front of my Boss.

How I studied:

1. Primarily I used the PLI course- which to me was a MUST HAVE. I don’t have an IP background and a lot of the terms at first were like CHINESE to me. The PLI really streamlines and makes sense of everything; it was a great base for the knowledge you will need.
2. Know and Memorize the 2002-2003 Exams. This is a Must. There are NOT an excessive number of repeats on this exam – not enough to get you through at least – but when one comes, you must have it down so you can ANSWER and move on cause you will need the time to look up other stuff later!! Basically, aside from the 102/103/112 questions, the rest comes down to efficient MPEP searching.
3. I also had the LONGACRE Simulated Exams book that I won from Jim’s Blog: http://longacrepatentbarreview.wordpress.com. Jim’s stuff is really good for getting down the details and showing you where your knowledge is lacking.

The Exam:

REPEATS:
Smith Laminate
Potter
Polypropylene range (obviousness of ranges)
Beck – Mixture Y with melting point of 150F
Smith / DRAM
Tribell
Moon Dust
Bloc and the synthetic Z (Y that could cure cancer but can also relieve pain)
Japan 45 days

OTHER QUESTIONS I REMEMBER
Q19) Mexican Nationals – PCT filed in US/RO not in English
Q26) Maintenance Fee Paid / Check Returned
Q29) Death of inventor before application is filed
Q34) Investigating Deceptive Intent
Q61) PCT Publication in US/RO
Third party submission & a separate Protest Question
Tables on a CD (50+ tables, but each under a page long; on a CD, need duplicates)
Whether/when trade secrets in a Reexam become public (requests to expunge)
How to identify 112 6th paragraph means + Function elements
A bunch of “what do you do if you find out you screwed up X after allowance/issue/final rejection” – know your reissue/Reexam/RCE/appeal/IDS cold!!
A “piecemeal” question (“examiner should avoid piecemeal examination, but it’s still ok when:..”

I had about 5 questions dealing with Appeals / the Board making new rejections.
I also had 3 questions on dead inventors. I knew this stuff because of JIM LONGACRE’s Review tests. They were good at hammering the details in a way that was Clear and straightforward.
I also probably got 3 questions regarding US/RO & lots of Japanese folks filing PCT’s.

Having passed I am now looking to pass along my PLI material (thank you John and JIM! lol)
I have all the course material, DVDs, CDs, PatWare, and written materials. I also have John White’s Analysis of every exam that I HUNTED down on the internet through different people on different forums.
Additionally, have the “Simulated Exams” Manual From Jim Longacre which is really 8 Exams with Answers that are really Mini-Tutorials on the subjects. This was very helpful towards the end of my study. NO MARKS ON ANYTHING.
I have outlines from both Patent Bar Review Courses that were made by friends of mine that have passed years before me. I added to them as I saw Necessary. I will mail you MY HARD copies and Email you the Word Document so that you can make your own.

Basically I will send everything I have, including two big binders with the exams and answers printed going back to 1999 – Although I didn’t go further back than the year 2000 cause much has changed since then.

I have the Freepatentbar.com outline (FOR anyone that wants it….email me) but I will include the Hard copy here for your use- VERY comprehensive.

$800 for everything…. Including shipping to anywhere in Continental USA….

Email me at Viviana926@aol.com if you are interested- or email me if you are broke and just want some Free outlines!! Or advice or anything!! Happy to help!!

THIS EXAM IS A MONSTER!! GOOD LUCK to ALL!!!

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234 DanNo Gravatar February 7, 2011 at 4:24 pm

I got an email from PLI saying that the test will change in April. Any information on this change and the possible ramifications?

I hear there’s going to be update questions on Bilski, etc.

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235 mahjongNo Gravatar February 9, 2011 at 9:24 pm

You made some decent points there. I seemed on the internet for the problem and located most individuals will go together with together with your website.

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236 SoonrealsoonNo Gravatar February 10, 2011 at 12:07 am

took it today passed

Here is one new one i saw.. i’ll keep updating whenever i remember new concepts i saw in there

- there were question about remand by the board on appeal
“says which was is not in accordance with MPEP”
then lists remnad by the board other than further consideration of rejection..

there were 2-3 problems regarding ‘protest’
: who can sign, when, petition

saw repeat of museum ball question

emphasis was on 1200 and 600

another new one was,
a firm in mexico is 100% assignee of foreign app
ABCD are employees. A,B is not us resident. C is a resident in mexico but us citizen, D is a resident of US but not citizen. ABCD files a PCT app based on foreign app in spanish. at NS/DO/US at 30 month. they file all for priority date but did not translate. Does PTO request translation?

… ill keep update whenever it hits me back.

p.s. For first timer, you do not need to spend money on PLI .. this website is good enough.

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237 testtakerNo Gravatar February 14, 2011 at 11:13 am

Hello,
Has anyone taken the patent bar exam this month? I would love if you could write down which questions were asked to you. If you had lot of repeats or not. What chapters did they focus on? Thank you in advance and look forward to hearing from you guys.

Happy Valentine’s Day!

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238 DrMambaNo Gravatar February 18, 2011 at 12:32 pm

I took the test yesterday and passed on the first try.

Here are my two cents:
1. The key to passing (IMHO) is having an efficient search method for the MPEP. This DOES NOT mean using the search/find feature in Adobe. It means being familiar with the Index (Which is provided in the test) and the table of contents at the beginning of each chapter. There were a number of questions where I went to the index and found the spot I needed right away. For example, multiplicity, piecemeal, correction of inventors. With Adobe you can click on the letter of the index you want to find and then look it up from there. With the table of contents in each section, you pick off the relevant subsections and go there directly. For example, in my test, there were a number of 2100 questions where the only thing I had to do is to find the sub-section in the table of contents for 102(a)-(g) factors, obviousness considerations, 112, para 6 and para 1 & 2. (There were several twists in the questions that made me second guess my initial reactions, with good reason!!) One of the questions asked for equivalence factors in 112, para 6 and that is at the end of the 200+ page section. The find feature is too much of a brute force mechanism to be used as a sole method. You will run out of time and/or not have enough time to fully dedicate to other questions. I did exactly one (1) search in the entire test, the remainder queries were done through the index and the table of contents.

2. Read this website inside and out. The repeats and the new questions along with the posts from the community are key.

3. Here are some of the questions that I got:
a. Inventors dying all of the place, joint and individual applicants
b. Spanish Phone Design
c. Japanese foreign priority and PCT filing
d. Costa Rica, Sweden and Germans
e. Tribell
f. Mario the hockey player
g. Multiplicity
h. Piecemeal
i. PCT questions including the correction of the application (typo, missing pages, missing drawing)
j. Divisional re-issues where there was an error of inventorship after the patent was issued and the corp wanted one thing and the inventor wanted another. There are a couple of threads on similar questions that the community found with inconclusive resolution, so I just guessed.
k. Use of certificate of mail and transmission for CPA applications. Square it away before the test, because during the test it is very hard. (HINT: It differs and it is non-intuitive)

4. New stuff
a1. There were about 4-5 questions on the procedure after the Board adds a new ground for rejection on some and all of the claims. You had inventors appealing some or all of the rejections, doing a reconsideration in some and appealing others (which one is handled first). It was quite a mess.
a2. Lots of appeals and re-examination questions
b. A number of obviousness questions and the various factors for PHOSITA/obviousness. The answers were clustered around one sub-section in the 2100 MPEP so it was easy to pick them off. (Identified through the table of contents)
c. Factors to consider equivalence in section 112, para 6. again, use of the table of contents led me to the correct subsection and picked off the factors very quickly
d. A couple of questions regarding the recording of assignments and the required components.
e. There was a very screwed up question testing “on-sale” where all the answers seemed wrong and there was no NONE OF THE ABOVE. Spent too much time confirming my suspicious, but I found support for all 5 questions.

5. Preparation
a. 4.5 Months of preparation with 3 one week gaps, studying 3-5 hours every day with no weekend study.
b. PatBar.com materials purchased used from Craigslist. ($150) I read all the study material and did all the questions in the books. I did not listen to the tapes This provided me with a solid background of the big picture and an intro to the test
c. Came to this site and went through the repeats and the new questions. Started to do an outline on the concepts that I MISSED. Given the magnitude of the MPEP, you can not do an outline of everything.
d. Went through and did all the tests from 2000 through 2003. I scored around 84% cold turkey. (No MPEP look up) Again, l added the concepts that I missed in an outline. HINT; Organize the outline according to the MPEP. That will start the mental layout of the MPEP in your queries during the test
e. Last week: Went through the questions that I missed from the previous test, did the repeats and the new questions from this site. Checked and re-checked the outline. Light bulb came on and I started to look at the index and the table of contents of each section and realized that this is a very efficient manner to search for info. One of the community members had mentioned it in her posts and thank the higher being of your choice that it clicked in my mind
f. Last Night: Get a good night sleep
g. Last thoughts: 101, 102(a)-(g), 103, 112 have to be understood cold, if you have to look it up, you are in trouble. Dates when 102(e) and the new PCT 102(e) dates kick in have to be understood. Those charts with the 102(e) PCT examples will have to be fully mastered, if you have to look it up, you are in trouble

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239 YesUCanNo Gravatar February 19, 2011 at 12:22 am

Time to give back.
Just took the test today and passed. Thanks largely to this site.

questions that were on my test that I remember for now

Compound Z cancer cure
Japan 45 days
Piecemeal examination
Moon dust
design patent for priority – 6 months
cancer treating
Maintenance Fee
Linking Claim restrictions
Means plus Function variant of Door Handle
Titanium Baseball (Pulic Use/Printed Publication)
Mirror (Inherent Function)\. Moon dust pencil/no duty to disclose
102(g) ex parte rejection
Parking Meter
Smith over Jones, Appeal

some new ones -
102 (f) and 103 obviousness questions. I will go thru the above question list and update them later.

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240 BryanNo Gravatar March 6, 2011 at 3:04 pm

So, I was just approved to take the test. I’ve been studying since December and have logged about 170-180 hours.

I wasn’t planning on taking the test until late April or early May, but the USPTO is stopping administration of the current test as of April 5th, 2011, in order to start testing a newer revision of the MPEP.

Thus, I have ~ 3 weeks to study (I’m taking the test 3/29/11). I’ve done all the 2002/2003 tests once (averaging ~76-78%).

Should I actually do the older tests (2000/2001), or just look over the repeat answers and the new questions listed on this website, while continuing to go over the 2002/2003 tests?

I’m a bit anxious about this, so any advice is appreciated.
Thanks!

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241 blahzikNo Gravatar March 6, 2011 at 8:32 pm

Hi Bryan,

Just my two cents: I think you have enough time. With about 2 weeks before my exam, I focused on: 1) the repeats; 2) retaking the 2002 and 2003 tests and understanding *all* the answer options and knowing why the right ones are right and the wrong ones are wrong; and 3) practiced using the Index.

Good luck!

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242 BryanNo Gravatar March 6, 2011 at 11:59 pm

Thanks for the help, I didn’t think about practicing using the index – it’s a very good idea since the few times I’ve actually tried using the index I got confused.

243 EpepNo Gravatar March 6, 2011 at 11:29 pm

I took it yesterday and passed. Aside from what everyone suggests (old exams, new qs), I’d recommend that you practice running through the MPEP table of contents dozens of times. I probably used it in at least 75 questions. In most of those, I was able to find pieces of the question/answers verbatim. Good Luck!

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244 BryanNo Gravatar March 7, 2011 at 12:01 am

Your right, what I’ve been doing is using the “search” function to find key terms in the table of contents, and then using the pdf bookmarks to find the correct section. Knowing the table of contents better will definitely be helpful and save time. I’ll put it on my todo list

245 ELSNo Gravatar March 7, 2011 at 10:30 am

Passed the exam yesterday, this site was a huge help. I’ll be posting comments on questions as a I remember things.

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246 ELSNo Gravatar March 7, 2011 at 11:00 am

For what it’s worth, I saw fewer PCT questions than I expected, probably 4-5. The ones I remember had to do with:
-US/RO not competent to process application because it was in Spanish
-If only US designated, had to know about the reservations the US has taken as far as publication (something like it won’t publish at 18 months but will at the national phase, it’s somewhere in 1800)
-had at least 2 questions dealing with the last date that you could add a priority claim in a PCT app (I think it’s 16 months from the priority date).

Saw several appeals questions. Had variations of reasons to remand to examiner/what to do after Board decision.

Couple of questions I hadn’t seen anywhere:
-Question about restriction and linking claims – had to find “The linking claims must be examined with>, and thus are considered part of,.”
-Question about decisions of a district court and reexamination. I can’t remember the question, but you had to find this part in 2200 “A non-final Federal Court decision concerning a patent under reexamination shall have no binding effect on a reexamination proceeding.
The issuance of a final Federal Court decision upholding validity during an ex parte reexamination also will have no binding effect on the examination of the reexamination.”

Inventors are still dropping like flies.

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247 epepNo Gravatar March 7, 2011 at 11:19 am

Yea, sounds similar to mine. I only got a few PCTs. Most seemed to be 102/103. Flow charts in 103e helped me on 3 problems. I had a few crazy questions, but my recollection is fuzzy. The main one that irked me was a problem where a sole inventor died after notice of allowance was mailed but before it was received.

Also, I had maybe 5-7 new grounds for rejections questions.

Another thing. I got alternate versions of AT LEAST four questions.

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248 IP GuyNo Gravatar March 16, 2011 at 10:03 am

In addition to my post on the Repeat Questions section, the additional questions below were also on my exam on March 14, 2011.

Exam Questions & Concepts
Q2 Ti Baseball – question made it clear that the shelved & indexed date was the key
Q3 Mirror
Q5 Amending Abstract
Q7 Deleting Benefit Claim
Q8 Missing Parts
Q14 Costa Rica and Sweden
Q17 VELCRO
Q26 Maintenance Fee Paid / Check Returned
Q29 Death of Inventor before application is filed – variant where assigned part of application to attorney
Q34 Investigating Deceptive Intent
Q37 Terminal Disclaimer
Q38 Piecemeal
Q40 Assignment
Q64 Restriction
Q66 Claims

Other questions / subjects
- When does an IDS suffice as a submission
- New ground of rejection by board, and then applicant files response AND requests rehearing on claims not subject to the new rejection, how does PTO respond (what is addressed first)
- Restriction requirement with a linking claim
- What type of prior art can support a 102(f) rejection
- When can an Examiner take official notice
- Perfecting foreign priority in a reissue application

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249 patenttipsNo Gravatar March 17, 2011 at 12:42 pm

Questions that I encountered:

1) Death of inventor of application with power of atty and assignee. Note: power of atty is no longer valid upon death of inventor, therefore, applicant representative has no right to act on the app. The estate may continue prosecution on behalf of inventor UNLESS the assignee intervenes.

2) Compound Z…has other utility in that it alleviates pain!

3) Oath is considered an amendment after notice of allowance in reissue?

4) Lip gloss is barred, >1 yr after invention “complete”

5) Japanese application, since certified copy is already on file, ONLY require english translation.

6) CPA can NOT use certificate of mailing!

7) Non-publication request, file in another country (i.e. Japan). MUST notify US within 45 days AND rescind non-publication request. If not, must pay fees and petitions.

8) How to check status of competitor app. Call FIU and see if the application was published or patented

9) Multiple dependent claims, answer ….in any preceding claim…

10) Original app filed, then inventor publishes an article, CIP filed, claims 1-10 on previous invention, claims 11-20 newly added in CIP with no prior support, examiner rejects claims 11-20, claims 1-10 get priority date of original app.

11) Maintenance fee question – answer, none of the above?

12) Titanium baseball, july 4th! as of date indexed and cataloged

13) missing drawing in provisional, what can you do? MUST file new provisional app. CAN NOT petition on provisional app.

14) Question involving answer: examiner has knowledge of judicial decision of fraud.

15) Ex parte exam, no fee/extension filed, must respond in 2 months.

16) affidavit to overcome

17) complete failure maintenance fee, can not petition

18) 102(d) french app. must file within 12 months. 102(a) can’t be used since same entity.

19) defective Terminal disclaimer, what should office do? allow app, then applicant files reissue to correct terminal disclaimer

20) new art found to reject claim 5 after NOA, application should file RCE with IDS and amendment PRIOR to payment of issue fee

21) obvious arguments need to be substantiated

22) reissue question, answer is file one reissue (NOT two of them). basically if you don’t act to get the non-elected claims during open prosecution then you are SOL

23) member of public wants to submit prior art for pending app. choose all 4 options, including the fee! (of course) :)

**NOTE exam questions are changing on April 12th! No exams given week of April 5th

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250 Big Bad Voodoo DaddyNo Gravatar March 20, 2011 at 9:45 pm

Hi – Does anyone have the new PLI supplements yet. I am looking at the 5 new supplements listed at the USPTO website and the current rev of the MPEP (8er8) for my study. Planning to take the test in July – overalap the 4th weekend and take a week off from work to do my final week of prep. In view of the new exam, I would appreciate it if anyone on this website can sell me their new PLI material- I have an older one from 2009. Thanks

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251 mleNo Gravatar March 22, 2011 at 10:07 pm

I took the exam today, and passed. The morning section was much tougher, only about 5 repeats, many questions I had not seen before (I studied the old 2002-2003 exams and all questions from this site). The afternoon had about 10 repeats, and several of the new questions listed on this site.
Each section took me about 2 hours, and I used the third hour to review and look up some questions more extensively. In October I took the PLI live course, but to be honest I got more out of using the materials they provided, this website, and taking and re-taking the old exams.
I will rest my brain now, but will be sure to mark those questions that are repeated from this site in the next couple days, and try and remember some that are not listed – there were quite a few. I would say a good quarter of my exam was on appeals – no joke, and only a handful of PCT. I appreciate all that everyone has shared here, and want to make sure I hive back – especially to those of you trying to make the April deadline, like I did.

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252 LostNo Gravatar March 23, 2011 at 12:38 am

Does anyone here happen to have a list of the “important dates” in which regulation changed? and a brief summary of what changed? I couldn’t find it in here..
e.g. (this list is not comprehensive, just to give you an idea what I was talking about)

29 Nov 1999 103(c) prior art exclusions changes (from f/g to e/f/g); inter-parte examinations
29 May 2000 CPA practice changes to RCE (stays for design patents)
29 Nov 2000 PCT impact on 102(e)
1 Jan 2004 Changes to PCT -> all countries automatically designated

Thanks!

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253 LMNo Gravatar March 28, 2011 at 4:00 am

PTA applies to utilities and plant filed on or after May 29, 2000

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254 maggieNo Gravatar October 24, 2011 at 12:50 pm

MAY 29, 2000
(1) PTA
(2) RCE for Utility patents only

Post-Aug 25, 2006
(1) Accelerated Examination
(2) Petition to make Special PRE- 08/25/2006

Reissue -Broadening
(1) 2 years from issue date

11/29/2000
(1) PCT/USA/English = 102(e) date
(2) 18 month Publishing rule

Post-11/29/1999
(1) Prior Art exclusion for 103(a) Rejections
(2) Exparte Rexam (final or 2nd Rejection)
(3) InterParty Reexam Eligibility Post-11/29/99

Post- June 8, 1995
(1) Patent Term
(2) RCE= Utility and Plant filing date Post- June 8, 1995 OR Filing the RCE Post-May 29, 000
(3) Wrong CPA Post- June 8, 1995 –> treated as RCE

July 14, 2003
(1) End of CPA for utility and plants

Proof of Invention Barr Dates
NAFTA Dec 8, 1993
WTO Jan 1, 1996

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255 patenttipsNo Gravatar March 23, 2011 at 12:20 pm

Question: Can you file CON of CIP?

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256 PatentGalNo Gravatar March 23, 2011 at 7:40 pm

Took the exam today (March 23) and passed. Many thanks to this website and everybody who has contributed.

I had almost all of the questions reported above by the “IP Guy” (both New and Repeats), so I don’t want to duplicate.

Good luck, everyone!

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257 DerrekNo Gravatar March 24, 2011 at 2:23 pm

Just passed on my second try, and all I can say is LEARN THE CONCEPTS FROM THE PRACTICE EXAMS (esp. 2002/2003).But I don’t know how the new exam will be.

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258 ellenNo Gravatar March 24, 2011 at 7:26 pm

Just passed on my first try! I was delighted to see lots of old questions. Mine were moondust, hydrocyclone (method claim is wrong), indicia of obviousness, Abbott, Costello, & Hardy one, then the one where we have inventor who has used some concepts from literature, his technician and the person who funded–who is the inventor?–lots more, I am just too burned out to remember. Common other ones – titanium baseball asking what date the brochure was prior art – answer was July 4. Lip gloss, concept of experimentation and then public use, I put it was a 102b bar because she started wearing it at parties in January and her filing was February the next year.

Lots of PCT. There was one filed by 1 US national and the rest Mexican in Spanish, I think the right answer was that it was sent to IB for processing. PCT claim of foreign priority having to be claimed in 16 months BUT PCT was already filed > 1 year later. Latest date priority could be claimed was 4 months after PCT filing, not 16 months after original foreign filing. Another one about how usually the USPTO doesn’t get involved in fraud & inequitable conduct, but in which of the following situations might they? I think the answer was that the examiner learned of it outside the record where a patent was held invalid in a court proceeding. Another one about whether a court invalidating or upholding a patent would stand at the USPTO, and I think the answer was that even if the court validated a patent, USPTO could still overturn based on new references appearing.

There were 4 inventors and 1 assignee, and after issuance a fifth needed to be added, but one of the inventors objected to adding him, so how to proceed? Answer was probably reissue with assignee signing (ok because not a broadening reissue so assignee could sign). Chemical case where structure & use in treatment in spec but not how to make it. Rejected for non-enabling and lack of description, applicant found art which showed that PHOSITA would know how to make it, so responded to rejection with that, and description because his structure & method of use showed he clearly had possession,–choices were everything from affirming rejection to applicant’s arguments being persuasive.
Another one about French filing followed by US >a year later, but wording was confusing and it was asked which sections of 102 were statutory bar. Originally it read like it could be 102(b), (a) and (d) but in the end I realized it was just 102d.

Another one – applicant appeals to Board who issues new ground of rejection. Applicant asks for rehearing on SOME but not all claims rejected, what is next course of action? I found in MPEP remand to examiner everything not requested for rehearing, after examiner rules then remainder gets rehearing.

Another one – during prosecution, restriction requirement. Applicant elects but doesn’t file divisional. After issuance wants to broaden. Most answers involved some variation of including non-elected claims; I think just one was to do a normal broadening reissue, which should have been right.

Inventor group 1 assigns to Assignee 1 and licenses to company 2. Inventor group 2 assigns to company2. 103a rejection of the two patents vs each other. Most of the choices wanted you to think they had common owner/assignee, I picked the one which said to amend the claims to get around the issue.

Provisional 1 filed, then provisional 2 filed a bit later. Application 1 filed claiming priority to both, same with Application 2. Prior art shows up, can you use priority claim of App 2, filed more than a year after each of the provisionals? i said no.

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259 ellenNo Gravatar March 24, 2011 at 7:30 pm

Best advice to anyone studying – do ALL the old exams and make yourself look everything up in MPEP even when you know the answers. As muck as possible know the old Q&A, but understand why the answer is right. If you see an old Q on an exam, still read it very carefully to make sure there are no tricks. Read q’s on exam very carefully.

For today’s am exam, I got pretty hung up on the first few Q’s, getting frustrated looking them up, then realized I was wasting too much time so did the rest of the exam answering the Q’s I reasonably could, and markingthe ones I wasn’t sure about. Went back and did all unanswered (there is a button for that), then all “marked” (button for that also). Did same for pm test. I used the index a LOT for lookups, even if I had a decent idea where to find the item, because their MPEP was so hard to work with. I would look up the term/concept in the index, write down MPEP sections on scratch paper, then go to each section. if not right there, I’d use search function for phrases, or even for terms that seemed relatively unique.

I also used the PLI course and can’t recommend it highly enough. I listened to John White on my long commute to and from work since last summer, and put it on my IPOD to listen to over vacation as well. Spent all of this week studying by taking the tests over and over and looking everything up, interspersed with treadmill time reading the PLI notes.

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260 BGNo Gravatar March 29, 2011 at 5:44 pm

Just passed. I know the exam is changing soon so I don’t know if these recommendations will be of any use, but here we go.

1) The exam was PCT and Appeal heavy. I didn’t get any crazy questions out of left field. They all tested issues described thoroughly on this website.

2) Interestingly, although I had many of the questions described on this forum, the answers were often differently worded enough (compared to practice tests) to make me second guess myself. The concepts are the same, but the answers are different. So, as long as you really understand the concepts, and aren’t just memorizing answers, you should be fine.

3) In terms of the MPEP viewing. It was different than I expected, but in a good way. First, the pdf viewer seemed to work more quickly and search more accurately than in Adobe 5.x. Also, although when you first press “find” a box pops up asking you to input your search request, after you do so the box disappears – you then press “find again” in the toolbar in order to view the next result. There is no “find box” in your way of viewing the MPEP text, which is nice.

4) Finally (for now), I was expecting the MPEP to close and restart itself after every time it was minimized or after I moved to the next question. Neither of these occurred. The MPEP always stayed open to what I was viewing last, which was nice.

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261 dcNo Gravatar March 29, 2011 at 6:52 pm

BG,
How many repeats do you think you got? It really seems like its hit or miss.

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262 LMNo Gravatar March 29, 2011 at 8:08 pm

Took exam today at Atlanta, GA. Passed.

All questions were repeated or recycled. I felt, I knew all of it. Some I had to look up just to confirm. Most, I was comfortable with it. Either it were from this website or from pantentbarquestions.com or itelproplaw forum. I had reviewed all three website.

It was comparatively easy pass.

Great feelings of passing. Relieved.

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263 LostNo Gravatar March 29, 2011 at 9:29 pm

Nailed it the first time! Took the exam today in Los Angeles, CA. Studies for a couple of months – mainly tried to read the MPEP and used this website, which was rather helpful. It was actually much tougher than I expected – almost no repeats of old questions (but boy, was I happy to see Tribell and her aromatherapy kit!) Tons of questions on PCT (US/RO and the likes, 102(e) dates, etc), dead inventors, obviousness and appeals. I am so glad I stuck to my strategy of answering ALL the questions in 2 hours and leaving 1 hour for checking the MPEP. The navigation of the PDF was easier than I though (search was better than that of Acrobate 5.0). When you click back on the question notice that sometimes the system de-selects your answer or selects another one, depending on where you click! So be careful. Better close the MPEP window by using the “x”. There were quite a few tricky questions that needed another look at the guide. On the second session the computer was taken over remotely by a Prometric technicial who wasn’t aware of the fact I was taking the test. Freaked me out, but good thing I was sprinting up until that point. Lost about 10-15 minutes and eventually was put on another workstation (never got that time back, the clock kept ticking). I was glad I wrote down the answers on paper (didn’t need it eventually, they were saved on their system).

Good luck and thank you all!

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264 BGNo Gravatar March 30, 2011 at 10:57 am

Lets see, here are the exact repeats I remember:

Hair Gel (not exactly a “repeat” – but same as the football pad ex parte question)
Smith over Jones, Appeal
Issue Fee transmittal form
Similar 131 affidavit questions
Smith and Jones Cell Phone
Design Filing Date
Parking Meter
Correcting Name of Inventor – but the answers were different. The correct answer from past exams (C – practitioner should file request) was not listed.
National Stage by Fax
Moondust
Broadening Reissue
Nonpublication – 45 days to correct
3rd Party submission – Japanese publication
Claim Counting (147!)
Hydrosyclone
Door Handle
Five Steps to Cross A Road
Bloc, Synthetic Z
Copper Substrate
Tribell
35 USC 102(d)
Lancer Toothbrush (same 2 “correct” answers – I chose the “location of the button” answer instead of the “power supply” answer)
New Grounds of Rejection by the board
A couple of identical obviousness questions regarding “limitations” in the prior art
102(f) question similar, but different to the one listed
Restriction of claims in first office action, applicant wants to appeal (claims were rejected in parent, but claims were only under restriction in the divisional – petition, don’t appeal)
Bond 60%C or 60%D

One question that I now remember that I don’t remember reading on this website was as follows:

2 inventors submit an application. 1 inventor believes he is the sole inventor and refuses to sign the oath. What should he do.
A) Submit a new application and file an interference (I found this answer eventually in the MPEP)
B-E) – All about his actions regarding Rule 47.

Another possibly new question:

Which uses 103(c) information in the rejection:
A) 102(e) rejection
B) Obviousness Double Patenting Rejection, where the other app/patent is 102(e) art,
C) 103(a) rejection, where the other app/patent is 102(e) art
D) A and B
E) B and C

This was a tough one. C was an obvious answer, but if you read MPEP 800 and 103(c), it seems that obviousness double patenting uses the definitions given in 103(c) for “assignee” and “joint ownership agreements” etc. Thus, I chose E.

Another possibly new question:
Involved enforcement of reexamination. I believe it was a “which is not” question. Answers included “enforcing rights within 6 years after reexam expires” and “valid/invalid” Federal Court decisions.

Another:
I guy finds prior art to add to the IDS after pays issue fee. He refuses to pay any more money to the USPTO. Thus, he sends in RCE with IDS, no RCE fee, No withdrawal fee/petition. What will the USPTO do? I believe the answer was something along the lines of put the IDS in the application file and not look at it. I looked it up.

Yet Another:
All of the following are appropriate statements made in an “Examiner’s Statement” in the “Notice of Allowability,” EXCEPT.
This was a hard one. Similar, not exact answers were found in the MPEP 700 (I believe). I think I chose an answer choice regarding “clarifying multiple rebutles presented in the appeal brief”.

No sure if this is new or not:
RCE and suspension of action filed. The applicant doesn’t file anything else. What happens. I believe I chose an answer regarding the USPTO waits 3 months, if it does not receive anything, then holds application abandoned.

No sure if this is new or not:
Appeal Brief is never filed. What happens to the application (dismissal or withdrawal) and what happens to allowed claims. I chose gets dismissed allowed claims go to issue, objected/rejected claims cancelled.

No sure if this is new or not:
I had 2 almost identical PCT questions regarding when the 102(e) date was. I chose National Stage (well, actually filing of oath after National Stage) for both. The difference was one the IA was actually filed before 11/29/00 (and the later IA publication was in German), the other question was the IA had priority of a US application prior to 11/29/00.

No sure if this is new or not:
Express mail was used. USPTO didn’t receive Figure 5. The best answer required you showing a return receipt that clearly listed the number of pages filed, including Figure 5.

No sure if this is new or not:
Foreign priority was forgotten in the original application (never in a parent). Answer lists everything you need to add foreign priority. My choice was needed Reissue w/ amendment to spec, certified copy, etc. All the answers were not Reissue, except for one that required a translation, which I believe you don’t need.

New questions listed on the website:
Dead inventor, agent had partial ownership already
titanium baseball
mirror
amending abstract (PCT)
Costa Rica AND Sweden
Velcro
Maintenance Fee Paid / Check Returned
Terminal Disclaimer
Piecemeal

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265 BGNo Gravatar March 30, 2011 at 11:38 am

I should add to my review of the exam MPEP above:

Although it worked incredibly well for me, before I sat down for the test the Prometric staff actually warned me that the pdf MPEP is often slow and can take a long time to open/respond, and that I should just be patient with it.

Also, I agree with Lost above, be careful where you click. Inadvertent clicks away from a question may change your answer.

Finally, as sort of a nice gesture, the Prometric staff gives you an embossed/stamped letter stating that you have preliminarily passed after you are finished.

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266 patentohpatentNo Gravatar March 30, 2011 at 5:12 pm

I took exam on 3/28/2011 and passed. Huge thanks to this community because this is the right place to repare for exam. All the guide line and exam dicussion and specially 68 questions were really helpful for me. So, I want to share my experience here as well.
What I prepared was reading summary here and work with 2002-2003 and 2000-2001(only listed in repeat questions) and 68 questions. That was all I did. And stil passed. So, how valuable this site is!!!
Also, as people said, searching MPEP is very important. I corrected my wrong guess answers at least about 10 questions total.

Mirror (Inherent Function)
Obviousness
Spanish Phone ? Design
Small Entity Status
Mexican Nationals ? PCT
Broom
Japanese Patent
Means plus Function variant of Door Handle (Determining Equivalence)
Death of inventor before application is filed
Investigating Deceptive Intent
2 Month Rule for Final Office Action
Piecemeal
Advisory Action
Assignment
Best Mode
Multiplicity
PTO-892

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267 toffeeNo Gravatar April 1, 2011 at 12:46 pm

This website was a tremendous resource, so thought I’d give some feedback since I just passed yesterday. I’m not sure how much the exam is going to change, but keep in mind, the KSR and Bilski stuff is only going to change certain sections of the exam (obviousness, 101 issues). That’s really only a small portion of the exam. I don’t know how significant the changes are between revision 4 and 8, but a lot of the basic concepts stay the same.

I put in about 2 weeks studying, but I really crammed (putting in 12-15 days) the 4 days before. Probably put in 60 hours total (give or take). These concepts tested under Exam Questions and Concepts are very helpful. I’d say, I got at least 50% of the questions listed here on my exam. Some I knew right away, and some I didn’t exactly remember, but they were very familiar.

A decent amount of PCT questions, lots of appeal question, with the majority of appeal questions asking when can something be remanded back from the board to the Examiner. A lot of old questions popped up to, most of them being from the October 2003 exam.

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268 yingNo Gravatar April 1, 2011 at 7:35 pm

Congrats to those have passed. From today till 4/12/11, there will be no exams held in the testing center for pat bar. I am curious to know how the new exam questions will be, please post your comments and feedbacks in regards to new exam questions.

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269 HNo Gravatar April 2, 2011 at 10:42 am

The blackout period is from 4/5 to 4/12. I’m taking the old version of the test on the 4th.

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270 yingNo Gravatar April 1, 2011 at 7:50 pm

I am thinking about the best way to study/prepare for the new revision of this exam:
1. When the versions are updated from Rev.4 to Rev. 8, there are several changes made in the MPEP – Therefore, some of the answers to the past exam questions need to be changed and updated accordingly- we can:
1.1 Ask USPTO to give us updated answers for past exam questions: will they accomodate us?
1.2 Read the Rev.8 MPEP, post the new answers for past questions by ourselves – if each one volunteers to look at 10 question in each exam, it is doable.
2. The changes that they made from each Rev to a newer Rev, usually the changes are in the Blue Pages – I have printed out all the updates from Rev.4 to Rev. 8, if anyone wants a copy, you can either look at each Revision for the Blue Prints, or I can email you a pdf file with the changes for each revision.

Please let me know what you think and email me at:
ying_yingjj@yahoo.com

Let’s work it out together!

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271 LinzabeeNo Gravatar April 1, 2011 at 9:31 pm

Actually, I think some people will be able to take it on the 4th… my testing center had that date open when I went to register for my exam.

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272 HNo Gravatar April 2, 2011 at 10:41 am

Yeah, I’m taking it on the 4th.

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273 misspatentNo Gravatar April 2, 2011 at 11:05 am

Me too

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274 YingNo Gravatar April 2, 2011 at 5:24 pm

this link is for the people whoever takes the exam on or about April 12, 2011
http://www.uspto.gov/ip/boards/oed/exam/exam_reg_prac_update.jsp

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275 jellybeanNo Gravatar April 1, 2011 at 9:38 pm

I just took the test today and passed. I was pleasantly surprised by how many repeat questions there were. Everything under this section should be studied. I’ll post specifics later, but on my test, there surprisingly wasn’t much on 102e or anything about the 11/29/00 date. Appeals were heavily weighted. I think i had 10-12 appeals questions within the first 20 questions on the second section. In particular, you should know what happens after new grounds of rejection are presented from the Board beyond just a rehearing or reopen proseuction. What happens if the applicant reopens prosecution and the examiner accepts, rejects, abandons? What happens if the applicant reopens prosecution and has a rehearing? Scenarios of the Board remanding to the Examiner. There were also quite a few PCT questions. In particular, they weren’t so much about the timeline of when to file or what is needed to get a filing date, but look up questions. The first section had maybe 10 new questions I hadn’t seen before from a previous exam or from this section. The second part there was only a handful that were new, so definitely study the concepts here because knowing them well will pay off during the test.

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276 LinzabeeNo Gravatar April 3, 2011 at 2:06 am

I took it on April 1st too, and I concur with (1) the ridiculous amount of repeat questions and (2) the high amount of appeals and PCT questions. Fortunately the PCT questions mostly all involved calculating the international filing date or the earliest effective US date, so you could follow those 8 examples in the MPEP section. As for the appeals, they were slamming hard what happens when the Board finds new grounds of rejection… despite how infrequently I thought this was supposed to happen in real life. Oh, and I guess a third thing was that there were a lot of questions concerning assignment, but in different areas. If you’re an attorney taking this exam, the assignment issues are generally pretty easy to see through.

As for repeat questions, off the top of my head were the 45 days/Japan question and the Lancer toothbrush. My memory is fading about other specific questions, but there were a lot that I recognized off the bat.

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277 jellybeanNo Gravatar April 3, 2011 at 3:16 am

Here’s what i recall from the test from April 1. I highly highly recommend reading though all of the discussion for all 68 of the questions listed above, but specifically, there’s are the ones I got:

Q2 Titanium Baseball
Q4 Submitting tables on CD-ROM
Q6 Obviousness
Q8 Missing Parts – variant
Q9 Correcting PCT – variant
Q16 Lip Gloss
Q18 Small Entity Status
Q19 Mexican Nationals
Q23 Broom
Q24 Japanese Patent
Q25 Electric Fan
Q26 Maintenance Fee Paid / Check Returned
Q27 Means plus Function variant of Door Handle
Q29 Death of inventor – there were 2-3 questions on different situations, so know them all.
Q31 Chemical Claim
Q34 Investigating deceptive intent
Q35 2 month rule for final office action
Q37 Terminal Disclaimer
Q38 Piecemeal
Q39 Advisory Action
Q40 Assignment
Q42 Missing parts in PCT
Q49 Rejection after allowance
Q50 Appeals – REALLY REALLY REALLY KNOW THIS and also Q58! I had no problem answering all of the appeals question because i knew this section really really well. Specifically Q2 under this section was verbatim. Also read the corresponding sections mentioned in the comments under this section. If you fully understand this section, you’ll have no problem with appeals on the test!
Q51 Best Mode
!52 Multiplicity
Q53 Reissue / filing amendment
Q56 Restriction requirement
Q58 Appeal – REALLY REALLY KNOW THIS. Together with Q50, I think it covers around 5-6 of the appeals questions i saw. If you read the relevant sections under 1200 specified in the discussion, you’ll nail any appeals questions w/o having to look up anything during the test!!
Q60 Anticipation
Q61 PCT Publication
Q63 TP Submissions
Q64 Restrictions
Q65 CPA – Facsimile
Q66 Claims
Q67 Obviousness
Q68 Hydrocyclone

Hair gel, foil wings, reissue, patent term, maintenance fees, a handful of assignment questions, some PCT questions regarding submitting priority info later, know when is the deadline to submit incomplete IA information and when the deadline is to claim priority and what is needed in a delayed priority claim. I’ll also post repeat exam questions under the other section. Together with the massive number of repeat questions i saw from old tests, this covered over 50% of the test! :)

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278 yingNo Gravatar April 4, 2011 at 1:43 pm

I contacted USPTO OED today, asking about the expansion of the exam effective from April 12, 2011.
1. THe core will be MPEP Rev. 8.
2. Some questions will be added due to the expansion.
3. I asked them due to the upgrade of the Rev.4 to Rev.8, some of the past exam questions’ answers might change accordingly – will USPTO update the answers for those questions based on Rev.8?
They said they don’t know at this point and told me to check back in 1 or 2 weeks. But they will pass on my request and suggestion. My standing is that USPTO is an official government link, the answers for past questions SHOULD be updated as the revision of MPEP has been upgraded. Otherwise it won’t be fair for the exam takers who are taking the exam after April 12th. I will keep everyone posted on this.

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279 JenNo Gravatar April 4, 2011 at 5:38 pm

Ying – thanks for doing the legwork on contacting the PTO. What materials/study method are you using in the meanwhile? I’d like to begin studying now and would love to hear from anyone taking the new examination about what materials (if any) you are using, what your approach will be to try to incorporate the new material into your studies, etc. Thanks for any input and thanks to the administrator for the awesome website

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280 yingNo Gravatar April 4, 2011 at 7:44 pm

Jen,
Studying this website is very important, I regret that I didn’t find this website for my last exam, which I wish I could have studied this site earlier.
I only have the old PLI prep material. Althouth those prep schools will persuade you to buy their new material, but from what I am looking at the changes/updates in MPEP, there are no major major changes (102 abcde remain the same, and some updates are rediculous such as, they changed “Web” to “web”…). Some changes/updates can affect the answers, that’s what I am trying to have PTO to update on their official web link. Again, I appreciate this site so much.

Ying

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281 InterenNo Gravatar April 4, 2011 at 8:57 pm

April 4, 2011

Well, I passed, after first try, with tremendous help from this website. Salute to the founder and administer of this web, Patentbar. Too bad that the exam will be updated in a few days. I am not sure how meaningful my questions will be for later test takers. Anyway, I am obliged to give back and contribute to this great community.

I probably overstudied for the exam especially given the fact that I recognized about over 65 repeat questions. I kind of suspect my final score is between 90-95, or even higher. Oh well, I guess I have to ponder on this question for the rest of my life. It’s a big waste since there is no prize for scoring high. But, hey, who knows how many repeats I will get had I not studied feverishly for 3 month? Of course, I do have a day-time job which has been affected by the divergence of my time and energy. I have to think about how to face my boss on progress report in two days. But I guess now it should be celebration time. I will save all that thinking for tomorrow.

Without further ado, here are some of the questions I have seen:
Q2) Titanium Baseball (Pulic Use/Printed Publication)—It was asked about the prior art date for a tech brochure. Kind of like classified material. I chose the July 4, 2002 date for indexing and cataloging.
Q3) Mirror (Inherent Function)—Parralel/perpendicular
Q5) Amending the Abstract – PCT—I didn’t know that ISA may or may not enter the applicant’s amendment. It was not stated in the MPEP, but it should be true since the MPEP says ISA will inform IB in case of amending according to the applicant’s comments.
Q7) Claiming, Deleting and Reclaiming Benefit Claim—Mine was how to delete after allowance. You have to file RCE before paying the issue fee. See Chapter 1300.
Q14) Costa Rica and Sweeden – PCT—Had both; Both will be forwarded to the IB and accorded the filing date.
Q17) Velcro (Trademarks in Claims)—112, 2nd paragraph rejection.
Q18) Small Entity Status
Q20) Information requested from USPTO
Q21) Trade Secret Question—I was asked what’s wrong. Answer E says even the examiner relies on it, it will remain in the envelope and kept secret. Of course that’s wrong.
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—part interest assigned to the practitioner
Q34) Investigating Deceptive Intent—This is the last marked question that I reviewed in the afternoon. I chose the answer B that examiner during reissue learned some judicial case about fraud. The case was NOT in record. The answer C says the patentee admitted in a brief during reexam about the breach on the duty of disclosure. I wasn’t able to focus anymore after staring at the screen for over 5 and a half hours. So I decided what the heck I will end the session and get out of there. Q38) Piecemeal
Q40) Assignment—A ton of assignment questions. One was asking what ‘s NOT needed for recording. I picked ‘an original and true copy of the assignment’.
Q41) Documents Requiring Signatures—Assignee not in record can sign the assertion for small entity.
Q50) Appeals—About three questions on board issues new ground of rejection. Several questions on what will happen if some claims were objected only for their dependence on rejected claims.
Q51) Best Mode—You don’t need to specify it.
Q53) Reissue/Filing Amendment
Q60) Anticipation
Q63) TP Submissions
Q64) Restriction

Also repeats from the old exam:
Moondust
Electric brush with switch on different sides
No reply will stop the application from abandonment: the RCE without fee question.
…………

Wait a second, I think I am not contributing that much if I don’t come up with new questions or answers at least. Here is an old question with a new right answer:

Jon/John typo correction with least fee: The old right answer is gone. Now the answer C becomes filling a supplemental ADS. It’s funny that I came up with this answer when I took the old exam, but it was not there. So when I saw this one on today’s exam, I was a bit frozen and had to resort to the MPEP to confirm it as the right answer.

For this coming update, my prediction is that there won’t be that much change. I can imagine twenty to thirty new questions directing to the KSR guideline stuff will be thrown into the database. But how many of them will appear in your particular exam? Only a few at most. So if you focus on the old tests and this website, you won’t have problem passing.

This is purely an endurance test! The biggest reason why the passing rate has been so low historically has to do with the low exam cost. Also many test takers simply try it for a potential career switch, hence there is not much adverse consequence if one fails or has to take it multiple times. Since there appears to be a lot of agents or attorneys nowadays, I wonder if one day USPTO will ever raise the bar for passing.

I had NO idea what’s so ever about patents three month ago. Now I feel I can crack any questions they throw my may. So you can do it!

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282 67%No Gravatar April 7, 2011 at 11:11 am

Costa Rica and Sweeden – PCT—Had both; Both will be forwarded to the IB and accorded the filing date.

Which filing date?????????????????

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283 yepNo Gravatar April 4, 2011 at 9:37 pm

Passed on my first try today, after studying for a month and a half on nights and weekends. I primarily used this site as well as the $30 study guide at http://www.patentbarstudyguide.com, both of which were very helpful. I have some old PLI materials, but oddly enough I didn’t find them that useful compared to everything else – they mostly just made me panic about the huge amounts of minutiae I’d have to memorize, and the video lectures were a bit of a snore. What I really needed was streamlined outlines and guides that would give me the gist and important points of each section. After that, it was all about taking the old practice tests (where you learn the minutiae whether you want to or not, just by finding out what you did wrong.)

My test had a whopping 35 repeats (most from 2003 tests), and I spotted at least 8 more from the listed new questions. I’d like to pretend that I’m a real scholar at this stuff, but knowing the repeats cold was what really made me pass.

Best of luck to those of you that are on to the new KSR/Bilski material. If it’s any consolation, every practitioner needs to be familiar with that stuff anyway.

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284 Done and DoneNo Gravatar April 4, 2011 at 10:57 pm

Passed today on the first try. To all of you worried about not getting the luxury of repeats with the new exam, let me say that at most, I saw 12 repeats or new concepts questions, all of which were of the easier questions. I studied for a month for around a total of 100 hours. Did the PLI course end to end, reviewed 2001 through 2003 exams 3 times each, then simply reviewed stuff that I thought might be relevant. The exam was overflowing with appeals and board new rejection questions, none of which I have seen before. I was in the MPEP the majority of the test, but was able to get through each section in about two hours with an hour to go back through the problem items. I never really ran out of time. The test is doable if you can put in 25 hours a week for a month, repeats or not, but anything less and you are pushing your luck. With respect to the repeats, just keep in mind that for may of those passing, they are getting around 20 repeats, which means they are getting another 50 questions right based on their knowledge and ability to manage the MPEP under pressure. I was really sweating getting the test done before the transition, but having now taken it, I suspect I would have been just fine without the repeat questions. I still read each one, and I still understand each answer, so it is not as if it really saves you time as much as they give you a sense of confidence and familiarity. I sincerely hope that this site proves useful to the new format of purported regular updates — we’ll see if they really update the exam regularly given the backlog a the PTO. Oh, and I ate at El Pollo Loco during the lunch break. I would strongly advise not doing that.

Done and Done

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285 LiNo Gravatar April 5, 2011 at 12:12 am

Just passed the exam today. Maybe I’m the last one to pass this exam before update of the examination. I learned so much from this website. So hope I can share something useful to whose still fighting.

I met almost 10 questions about restriction and 8 questions about PCT.

I had two very interesting trap question in the afternoon. I believe my memory is 80%+ exact because I spent more than 5 minutes to compare the difference between them. Hope it is useful.

John filed a PCT Chapter II Request in EPO Receiving office on Nov.20, 2000, which properly claimed the priority of a Germany patent application which filed on Jan. 3, 2000. John designated US in the PCT application and requested Preliminary Examination The application was published on July 3, 2001 in Germany. This PCT application entered the US national phase together with english translation and other required documents on July 3, 2002. On Dec.3, 2002, USPTO informed that John failed to submit oath&declaration. John’s practitioner promptly submitted oath&declaraton by facsimile. Which of the following date is the prior art date under 102(e).

A. Jan. 3, 2000
B. Nov.20, 2000
C. July 3, 2001
D. Dec.3, 2002
E. Jan. 3, 2003

This question number was 18 in the afternoon. I was afraid this was a test question coz I could understand what the PTO wanted to do. But the most interesting thing was the question 26 which was very similare to this question. I thought I met two same questions at the begining. But that’s totally wrong.

John filed a PCT Chapter II Request in EPO Receiving office on Dec.20, 2000, which properly claimed the priority of a Germany patent application which filed on Jan. 3, 2000. John designated US in the PCT application and requested Preliminary Examination The application was published on July 3, 2001 in English. This PCT application entered the US national phase together with all required documents on July 3, 2002. On Dec.3, 2002, USPTO informed that John failed to submit oath&declaration. John’s practitioner promptly submitted oath&declaraton by facsimile. Which of the following date is the prior art date under 102(e).

A. Jan. 3, 2000
B. Dec.20, 2000
C. July 3, 2001
D. Dec.3, 2002
E. All of the above answers are wrong.

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286 67%No Gravatar April 5, 2011 at 12:45 pm

So what were the answers Li?

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287 LiNo Gravatar April 7, 2011 at 4:18 pm

I selected E on 1st question, but I promise it’s wrong. I believe it’s a test question. The 2nd answer is B.

288 tappylilyiNo Gravatar September 24, 2012 at 12:40 pm

I believe the answer to Li’s first PCT 102(e) question is D, because PCT apps filed before 11/29/00 get a 102(e) when FOT (John White) is completed, i.e., fee, oath, translation. The oath was not filed until 12/3/02.
Just remember FOT 11/29/00 DUE. Before 11/29/00, FOT, 11/29/00 and after, DUE (Designate US English) gets the 102(e) date of the PCT app or the earliest national (not foreign) priority document

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289 67%No Gravatar April 5, 2011 at 12:18 pm

I got a 67 on the bar yesterday. I am completely distraught. I studied so much for it easily 200+ hours. I did everything everyone said to do on this website. I got a bunch of PCT 102(e) questions. I said forward to IB and give filing date when it gets to the IB. I think those were wrong, because now I realize it’s filing date of IA. They were very poorly written answers. I am in physical pain over this loss. Any consolation would be greatly appreciated.

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290 yingNo Gravatar April 5, 2011 at 12:28 pm

I think approximately 50% of the people pass at the first time, and the other 50% don’t. You are VERY close to the pass line. Rest well which I am sure you are mentally and physically exhausted. There is a Japanese idiom saying if you fall 7 times, get up at the 8th time. Don’t give up – take it again you will pass! – FYI I did not pass the first time, now I am preparing for the next exam.

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291 67%No Gravatar April 5, 2011 at 12:47 pm

Thanks Ying. I am trying to rest, but I keep beating myself up over it. I keep replaying the test in my head over and over again. I thought I passed. I was shocked when the results popped up. I keep hoping they made a mistake and in the official results I will pass. What are the chances of that happening?

I need help with PCT 102(e) questions. What’s the answer to Sweden and Costa Rica questions? Nobody gives an exact answer. What about None of the Above? I think I got a few of those.

292 LinzabeeNo Gravatar April 6, 2011 at 10:36 pm

Don’t be too hard on yourself. I got a 67% the first time I took it, and a 69% (YES A 69%) the second time. I studied my brains out all those times too. Sometimes it’s the luck of the draw on the questions you get, I think.

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293 67%No Gravatar April 7, 2011 at 11:09 am

Thanks Linzabee, How did you finally pass it? What’s a good prep without breaking the bank? Any help would be greatly appreciated. What should I do now that they are adding new stuff to the test?

294 LiNo Gravatar April 7, 2011 at 4:24 pm

Maybe you should go to PTO to review your exam before next try. My friend told me that’s really helpful. I also met many PTO questions and I selected same as you. I believe those are correct answers.

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295 67%No Gravatar April 7, 2011 at 5:37 pm

Thanks Li, I just might go to the PTO to check. I really hate this test. If those answers are correct then I really don’t know why I got a 67. Are you sure the filing date wasn’t when it was filed as an international application? I also think for the Electric Fan question I got it wrong. Everyone is saying it was the dimensions aren’t important or something like that and to reject it. Is that right? I think people need to give exact answers for the new questions on here because it is utterly confusing.

296 LinzabeeNo Gravatar April 10, 2011 at 2:04 am

I really just studied the heck out of the concepts on this website. Also, if you have an iPhone, there’s also a good app called “Patent Bar.” It has all of the questions from the 2002 exams for free, and for $4.99 you can get all of the released tests. I downloaded this, and whenever I had downtime, I’d run through some questions on the app. It was helpful because you could pick random questions or specific questions, and you can create tests from 10 questions to 100 questions.

297 BenNo Gravatar April 10, 2011 at 7:18 pm

Yea, I have that app for the iPhone but i didn’t spend the $4.99 for the rest of the tests. Maybe I should have done that. I think I know all the questions, those weren’t my problem. It was the new questions. I’m going to Alexandria in June to figure this out. I will prevail.

298 SophieNo Gravatar April 14, 2011 at 12:49 pm

Ben:
I recommend reviewing your old exam at the PTO. You are provided with detailed explanations of your wrong answers. You will also know which ones you answered incorrectly. This made the difference for me (I passed April 1). I saw repeats of new questions not mentioned on this website in addition to better explanations for all the repeat questions. I had a very similar test to “jellybean’s” exam also on April 1st. There were many repeat questions but there were also many new ones that appeared on my old exam and I could answer correctly after my failed test review. Review your test just before you sit for it again so the information is fresh in your mind. It will be very helpful and worth the travel.

299 3rd times a charm!No Gravatar April 5, 2011 at 2:08 pm

I passed yesterday!

I wanted to say thank you to all the people here, I couldn’t have done it without all the help. The questions I saw:

Mirror
Costa Rica — (I chose does NOT get a filing date because not a PCT country)
Sweden — (I chose does get a filing date and transferred to IB, although it states in the MPEP that they only transfer if fee received but no other answer said that)
petition to make special — (the question talked about an application for soil but the answer included the fee (and all other choices except ADS) which i think is a mistake on the USPTO part because environmental patents don’t need fees)
broom one
Canadian practitioner one
Hydrocyclone
PTO-892 — (this question’s answer was all pertinent prior art, but from what I remember the examiner sometimes submits art not relied upon but whatever)
Advisory Action question — (submitted response within 2 months, get advisory action before 3 months, the trick to this question is they DO NOT calculate extension from end of statutory time but from mailing of the FOA)
Third Party Submissions — (Only patents/publications)
Appeal questions — (Know when to submit amendments at ALL times during appeal process, know what happens if board has new ground of rejection, and know when goes back to examiner)
Multiplicity question
Obviousness question — (know regarding combining references)
Best Mode
Reissue — (2 month rule, combine with reexam)
Corrective Inventorship question regarding inventor B didn’t want to sign to add inventor C and D — (answer was to submit without his signature with a letter explaining)
Dead inventor question regarding son wanting to do stuff but the guy had executor — (answer was guy didn’t have a shot, was Mary)
Restriction question
Access question
Maintenance fee question had to do with who can submit paperwork — (NOTE its NOT the answer with the guy whos job is to only pay maintenance fee)

The thing that people don’t really talk about is how great the USPTO does of making a “well rounded” test. This was my third time and I can say for a fact that they don’t try to focus on one area, they try to hit every chapter. I recommend you guys out there to keep trying because it will happen.

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300 toffeeNo Gravatar April 5, 2011 at 4:14 pm

No offense, but some of your answers are wrong. Costa Rica is a PCT country, and it actually states that in the asked question. If you look in Chapter 18 of the MPEP Costa Rica is listed as a PCT country.

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301 3rd times a charm!No Gravatar April 6, 2011 at 1:49 pm

well, it looks like one answer was wrong not some.

302 Woot!No Gravatar April 5, 2011 at 7:21 pm

took and passed the patent bar this past weekend on my 2nd try. this site is great, and the advice to drill the past exams like crazy is definitely accurate. i was able to immediately answer repeats that i encountered. one new one had to do with when copies of signatures are proper. there were three options:

i. declarations
ii. credit card payments
iii. can’t remember

i couldn’t find information regarding the use of copies of signatures, so i selected the answer that was “ii only.” i’m not sure if that’s correct or not.

some other repeats i had:
- lipgloss public use question
- spanish phone
- best mode (must disclose, but need not delineate which embodiment)

can’t really remember others, though there were definitely more. it seemed like the majority of my repeats were covered in the 2003 exams. good luck!!!

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303 GeordiLaForgeNo Gravatar April 6, 2011 at 3:14 pm

Hey all,

I passed on Monday, first try, thanks to this site and everyone in this community that posted. I want to pay it forward.

For new people, I passed by doing the following (which is the same general advice given by everyone):
-reviewed outlines (in my case very old PLI notes) for 700 and 2100
-went through the 2002-2003 exams, all questions (not just repeats) more than once.
-went through the repeat questions only for 2000-2001 exams.
-went through the new 68 questions.
-read sections about new grounds of rejection in MPEP 1200, sections about dead, unavailable, etc. inventors in 409.

After doing this, I felt my big problem areas were 102(e) (i.e. knowing all the complex nuances of the examples in 706.02(f)(1) regarding dates before/after 11/29/2000), PCTs and appeals. I would def have liked to study these sections if I had time. But luckily most of the questions I got in those areas were pretty simple (e.g. the costa rice/Sweden pct question).

I would say that in each section, about 30-35 questions were either literal repeats from olds exams/ the new 68 questions, or slight variations thereof, or ones that were fairly easy to look-up and get verbatim answers from MPEP (given that you already know what MPEP section or CFR rule it will probably be in).

Some new questions I remember:
One new question about ‘Power-to-inspect’. I found the CFR section for it (1.33 I think ), but couldn’t find any other MPEP section discussing it in more detail.
I had two three appeals questions asking stuff straight out of MPEP 1214.01, in particular the paragraphs starting with “If an appellant files an appropriate amendment…” and “The new ground of rejection raised by the Board….”. Know this.
Also had an appeal question asking when can an amendment can introduce new arguments that were not present in either the appeal brief or reply brief and still be considered by the board (not including situations where Board makes new grounds of rejection and you submit amendment to respond to new rejection). I recall determining that the only time new arguments not in an appeal brief/reply brief will be considered is if it relates to a new Federal Circuit case that is on point.

As to new exam –biggest changes will obviously be section 214x (obviousness), but otherwise I think you would be silly not to go through the old exams like always, cause I guarantee most of the question will be the same.
Thanks again and best of luck to everyone!

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304 PBarKillNo Gravatar April 8, 2011 at 1:06 am

When looking at the MPEP, do you look at just the large font text, the small text, both? Also, what’s the deal with the weird * of writing? do you pay attention to that? How does one navigate the catacombs of the MPEP?

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305 SCLNo Gravatar April 8, 2011 at 12:31 pm

I have seen some answers in the large font; and most answers in the small font. But, I didn’t pay attention to the font size or * markings. During the exam, I found my answers by opening up the correct chapter and PDF searching for phrases. It’s not hard at all, but practicing this during practice exams is important because you want to be fast at it. For me, 25% or so of the exam were 02/03 repeats or new questions reported here, and the remaining 75% were look-up. I took it in March and passed.

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306 SCLNo Gravatar April 8, 2011 at 1:30 pm

Good luck to everyone taking the exam! I took it in mid March, first try and passed, and I’d like to share my experience if anyone is interested.

I sat in the PLI review course last year but didn’t get much out of it (except some excellent prep materials to use later on) because I was new to patents and pretty lost. Finally this February I cracked open the prep materials by reviewing the chapter summaries and doing practice problems on the PatWare CD. I was scoring pretty low (63% first try), but learned the concepts quickly by doing the Patware CD, finally bringing up my score to 76% by the end of Feb.

I was scheduled to take the exam mid-March, and with only two weeks left, I was running out of time and skipped the rest of the PLI prep materials. I went straight to this site to study the 2002-2003 exams fully, the newly reported questions, and the list of commonly repeated questions in 2001 and previous exams. I did timed practice exams on the Patware CD, and at least one where I practiced searching MPEP as well. This site is AMAZING, I brought my score up from 76% to 90% the week before my test.

Of course, I was still extremely nervous the weekend before my exam which was a Wednesday. Advice – don’t cram for this test (or any test…), it will just make you unnecessarily nervous. I felt like I wasn’t familiar enough with the material, even though I’d been scoring well – weird.

The day before my test which started at 9am, I checked into a hotel that was 5 minutes down the street from Prometric (which is 2 hrs from my place). I must have spent all of my nervousness over the weekend, because I felt very calm (after all, there’s not much you can cram on the day before this test anyway). I reviewed some outlines from the PLI study material and went to bed by 10pm.

Next morning I got to Prometric by 815am and started the test well before 9am. The morning questions had a lot of repeats and familiar topics. I felt very confident and still looked up around 70% of the questions just to make sure my memory wasn’t playing games on me. The hour break for lunch was probably the fastest hour of my life! The afternoon session was much harder compared to the morning – I marked 20 or so questions to return to, and felt like I had to search for every single question. Hardly any repeats or familiar topics. Didn’t give up though, and fought through the very end and turned in the exam with 5 minutes remaining. Then there was a short questionnaire on the test facility, and then a short note saying I passed. So glad that is over.

My advice on how to use this amazing website: Know the 2002-2003 exams fully, look at commonly reported 2001 and previous exam questions (you don’t have to actually do the whole exams), know the list of new questions reported. Then, make sure to practice looking up questions in the MPEP (I started doing this the week before my exam). Do what ever relaxes you the day before the exam (for me, it was reviewing my outlines lol) and fight through the very end! You will do great.

If anyone wants my PLI/patware materials, give me a shout – theserendipcl@gmail.com
Good luck!!!

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307 BenNo Gravatar April 8, 2011 at 5:46 pm

Hi SCL,

I’m interested in your PLI materials. I tried emailing you but it didn’t go through.

What’s your email again?

Thanks,

Ben

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308 SCLNo Gravatar April 8, 2011 at 8:05 pm

Hi Ben, OK try serendipcl@gmail.com. Sorry for the confusion!

309 JohnNo Gravatar April 11, 2011 at 6:53 pm

I took and passed the patent bar a couple of weeks ago and just wanted to share my advice for those of you still studying.

I used the PLI patent bar review materials and found them very helpful. The DVDs and written materials are a great way to get a good foundation. I also did a lot of the assigned practice questions as I went along, which helped to ensure that I was actually understanding what I was hearing/reading.

I didn’t do a lot of the old practice tests included with the PLI materials though. When it came time to do that, I concentrated my efforts on this site. The “Exam Questions and Concepts” and “Repeat Questions” were invaluable. I knew the answers to a large portion (50%?) of my test questions just because I’d seen them before.

While I’d recommend looking at all the old repeat questions, if you’re crunched for time like I was, just concentrate on the questions that have a * or a link. If you have the time, look at them all. Ideally, do so shortly before the test so that the answers will be fresh in your mind.

Good luck!

And if anyone is still looking for PLI review materials (preferably in the DC metro area), I have them for sale. I purchased them from my friend who purchased them new not too long ago. Everything is included and in good condition.

john . derusso AT gmail . com

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310 ElwynNo Gravatar April 20, 2011 at 8:18 pm

Hi, John. Congratulations on passing the patent bar. I’m planning on taking it in the next few months. Could you please tell me how much time you put into studying beyond the PLI tapes? I’m currently using them and think they’re very good but am wondering how much extra studying I’ll need to pass. I think the course advises an additional 150-200 hours after you finish the DVDs.

Thanks!

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311 JohnNo Gravatar May 4, 2011 at 7:43 pm

Sorry for the delayed response. I haven’t checked this site in a while.

I probably only spent 60-80 total studying. I really didn’t do much after finishing off the PLI course schedule. Roughly 3-4 days spent studying this site and that was it.

Good luck!

312 jack smithNo Gravatar April 13, 2011 at 11:46 pm

has anyone taken the new exam with changes made on April 12?

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313 yingNo Gravatar April 14, 2011 at 5:37 pm
314 HTMNo Gravatar April 14, 2011 at 8:11 pm

I just took and passed it today. There were about 7 or so questions total on the new stuff: KSR, Bilski, new 112 guidelines. . . In addition to being able to search the MPEP you also get to search through the new guideline documents, so that was helpful. Still lots of appeals and PCT questions and a good number of repeats from old exams. This site helped me study a good amount in the last week or so, thanks!

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315 mmmNo Gravatar April 15, 2011 at 1:24 pm

were there a bunch of repeats from the older tests on the recent exam you took? im a little nervous that they have changed the questions that they use from their “bank”

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316 AlexiaNo Gravatar April 14, 2011 at 8:29 pm

Thank you for the info htm! I am taking the exam in a few weeks. Would you say the questions related to the new material are straight forward or should I really spend a lot of time studying it well. Thanks!

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317 HTMNo Gravatar April 14, 2011 at 8:42 pm

they were pretty straight forward. I’d suggest knowing the flowcharts in the Bilski slides and knowing he KSR and 112 changes, but during the test the questions were phrased well enough that I could do quick text searches to check the answers. Good luck!

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318 YingNo Gravatar April 15, 2011 at 2:22 am

HTM, Congratulations! Do you recall what question was asked about Bilski? What are the flowcharts in the Bilski slides? I did not find the Bilski flowcharts though…

319 YingNo Gravatar April 15, 2011 at 2:23 am

HTM, Congratulations! Do you recall what question was asked about Bilski? What are the Bilski flowcharts?

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320 HTMNo Gravatar April 15, 2011 at 8:07 am

http://www.uspto.gov/ip/boards/oed/exam/reg_exam_source_material.jsp
That link has a list of the new materials. Document number 3 of the list has the flowcharts for 101. Can’t recall the wording of the questions, but there were 2 or 3 on general concepts: abstract ideas/mathematical algorithms (can’t patent), specific practical applications of mathematical algorithms (OK if it doesn’t cover substantially all practical applications), and applying the Machine or Transformation test I believe.

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321 dNo Gravatar April 20, 2011 at 3:32 pm

I took it yesterday. passed. There was one accelerated examination question that I remember. It involved knowing all the requirements. There was a lot of 112 stuff, so know that. One bilski question, but it was just about literally knowing which factors “tended to prove.” There was also a PCT question, that I think involved knowing the new 2 month rule.

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322 YingNo Gravatar April 21, 2011 at 12:47 am

what is the PCT new 2 months rule?

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323 zaoNo Gravatar April 21, 2011 at 2:09 am

i am taking the exam this tuesday the 26th and you got me worried. what is the new 2 month rule for the pct question? thank you for all you guys advices.

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324 YingNo Gravatar April 21, 2011 at 10:52 pm

MPEP Rev.8, 1805 (page 1800-9) “An applicant may wish to consider filing directly with the IB i/o US where applicant is filing their international application after the expiration of the 12 month priority period but within two months of the expiration of the priority period, and where applicant desires to request restoration of the right of priority under the in spite of due care standard.”

325 dNo Gravatar April 24, 2011 at 1:14 pm

No it has to do with that within 2 months of filing you can correct defects under certain circumstances. PCT rule 20.6 and MPEP 1810. I would search through 1800 with “April 1, 2007″ and see what has changed. It’s not that big of a deal though, it was only one question. Also if you took PLI, check out their new online thing. They literally released it the day before I took the exam, I did those questions, and I thought they were helpful.

326 zaoNo Gravatar April 22, 2011 at 1:11 am

thank you. do you guys have any suggestions on how to search the mpep and find the information fast? i waste too much time on a single questions and i cant rely on just my memory. thank you guys. good luck to all. i will try to post questions that i remember after my exam on tuesday

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327 blahzikNo Gravatar April 22, 2011 at 3:46 am

What works for me is searching against the index; reading through the index. Good luck!

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328 JamesNo Gravatar April 23, 2011 at 1:15 pm

Could someone who has taken the exam recently tell me what the MPEP search function is like? For example, can you search the entire MPEP for a phrase, or is it by chapter and only allows few key words?

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329 dNo Gravatar April 24, 2011 at 1:16 pm

only by chapter. Essentially its like searching the individual chapter PDFs. There are also a few searching options like “Match Case” and “whole word.” For me at least the search function was little screwed up too and it didn’t always highlight the word in the text when you searched. You could also open up the index and search that too.

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330 patentworldNo Gravatar April 24, 2011 at 2:06 pm

James: when you click on the drop down, you will see each individual chapter, with the number and title [1200 Appeal] for example. So basically when you click on that, you are now in 1200, and can search only withiin 1200 (by word or phrase). What I found incredibly helpful was, searching in the index for somethiing quickly, which you may find the answer in, or if not, it will point you to directly the numbered chapter to search in. EX: forgot the rules for IDS, then go to App R, type it in, it tells you it’s 1.97, then you can quickly go to it, and read the rules. Also, searching within the SUBJECT MATTER INDEX is very helpful as well.

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331 ElleNo Gravatar April 24, 2011 at 9:16 pm

Passed the exam this weekend. This website helped tremendously, so I figure I should pay it forward and contribute what I can.

There were about 10 KSR- or Bilski-related questions. Two were of the format, “Each of the following is a correct statement about patent law except,” and the answers were that the TSM test and the machine-or-transformation test were the exclusive tests for obviousness and patentable subject matter, respectively. One question involved a claim for signal encoded to make it travel faster, and the question asked whether it was patentable subject matter (the answers were A) no, B) yes because it is a process, C) yes because it is a composition of matter, D) yes because it is a manufacture, E) yes because it is a machine). There were two questions involving secondary considerations of nonobviousness. My strategy was not to spend much time on these, because I figured that most of them had to be Beta questions. The Bilski and KSR materials were searchable and accessible through a “reference materials” button right next to the MPEP button.

Heavily tested concepts: PCT, appeal, 102 rejections, 103 rejections (and art under 103c), reissue, amendments

More than one question on each of these topics: assignment (assignment of parent application applies to divisional applications), RCE, reexam, restriction, double patenting, new matter

Concepts noticeably missing: claiming small entity status, inventorship, interviews. petition to make special, CIP applications.

I also had a few questions about determining filing dates and due dates, whether various methods of transmission met the due dates, and calculating fees. I also had to calculate a Patent Term Extension. A few questions about 102(e) art and when it can qualify as prior art.

One random question that I still don’t know the answer to: “Which of the following is not considered to be a new application?” (answers: A) CPA, B) RCE, C) IA entering national stage, D) reissue, E) provisional).

Repeat questions: Affidavits (10.01.46p), Foreign Patents (4.02.50a), Omitted Items (10.02.34a), Japan/nonpublication request/45 days (10.03.44a/4.03.2a), Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a), Board Decisions (4.03.37a), Interference and Reexamination (4.03.12p), Practice (4.03.44p), Prior Art after Notice of Allowance (4.03.45p), 35 USC 102(d) (10.03.8a), Prior Art Exclusion of 35 USC 103(c) (10.03.11a), Moondust (10.03.6p), Foreign Priority (10.03.24p), Design Patent in Country X (10.03.27p), Issue fee transmittal form – XYZ Company (10.03.38p/4.03.11p), Foreign prior art date (10.03.40p), Toy Airplane with Foil Wings (10.03.46p)

Questions from “Exam Questions and Concepts” tab: Q33) Indefinate Claim USing ‘High’, Q35) 2 Month Rule for Final Office Action, Q38) Piecemeal, Q39) Advisory Action, Q42) Missing parts in PCT Application (30 days), Q50) Appeals (variants of 1, 3, 4, 6), Q51) Best Mode, Q52) Multiplicity, Q55) Basic filing fee, Q57) 102(a): Need to file foreign language translation, Q64) Restriction , Q66) Claims

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332 BeckerNo Gravatar April 25, 2011 at 11:48 am

Thanks so much for the info, Elle!!! I take the test in a few weeks, so I’m very interested to hear what recent test takers are saying about the new test.

I agree with your comment about the KSR and Bilski questions likely being beta questions too.

Thanks again!

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333 OverworkkedNo Gravatar April 25, 2011 at 11:07 pm

One possible answer is that the Provisional Application is not a new application for some purposes. See MPEP 908.03(b) – [found by a search of "new appl" in global index]

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334 AustinNo Gravatar April 26, 2011 at 5:00 pm

“A “new” application is a nonprovisional *>applica-
tion< that has not yet received an action by the exam-
iner. An amendment filed prior to the first Office
Action does not alter the status of a “new” applica-
tion." MPEP 203.01

I think you're on to something Overworked.

335 AustinNo Gravatar April 27, 2011 at 11:09 am

“Since a request for continued examination (RCE) is
not a new application, an amendment filed before the
first Office action after the filing of the RCE is not a
preliminary amendment.” MPEP 714.01(e)

I think the USPTO needs to try harder not make stuff up. Title 35 U.S.C. doesn’t even mention the words “new application”. shenanigans

336 AlexiaNo Gravatar April 26, 2011 at 3:39 pm

The answer is RCE is not a new application. I looked through the PLI materials and it specifically says that an RCE is not a new application vs. continuation, CPA,divisional etc…
What do you think is the answer to the claim for singal encoded to make it travel faster is? Not parentable bc would cause a monopoly?

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337 AustinNo Gravatar April 26, 2011 at 4:47 pm

An invention IS patentable even if it “causes a monopoly”. There are tensions between the Sherman anti trust act and the Patent act (35 U.S.C.) but those tensions are not resolved by the USPTO. The whole point of the patent system is to enforce section 8 clause 8 of the U.S. constitution, “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right [read monopoly] to their respective writings and discoveries;”. Please disregard Alexia’s comment I think she meant something different than what she said.

wrt signal encoding, this is probably a bilski v. Kappos question. It depends on the wording of the question but abstract ideas are not patentable. Apply the machine or transformation test:

“something is certainly patentable if it is tied to a machine or apparatus or if it transforms a particular article into a different state or thing”

But, as the US sup ct said in the bilski decision, this is not the only test. And they added, “an abstract idea is not patentable subject matter just because it has been limited to a particular technological environment.” That might be what the encoding question is asking.

To give some context, the patent at issue in bilski was a process of hedging risk in a market (trading and selling risks) and one of it’s claims was a dependent claim that limited the process to the energy commodities market. The court said that this was an abstract idea.

338 AlexiaNo Gravatar April 26, 2011 at 5:53 pm

Sorry if my last comment caused confusion. I was reading the Interim Bilski guidance and there is part where they talk about a claim monopolizing a natural force , such as claiming the use of electromagnetism for trasmitting signals, which weighed against eligibility.

339 BeckerNo Gravatar April 26, 2011 at 10:24 pm

I concur. An RCE is not a new application. 714.01(e) last paragraph.

340 AustinNo Gravatar April 27, 2011 at 6:55 am

Alexia, absolutely no need to say sorry. The law itself causes confusion.

341 BenNo Gravatar April 28, 2011 at 10:30 am

So just to confirm, the signal encoded to make travel faster is not patentable? It’s certainly not a machine, but is it a tranformation?

342 OverworkkedNo Gravatar April 28, 2011 at 12:43 pm

I also got this question too on 4/27/2011. RCE is probably the best answer because it’s all over the 700’s that it’s not a new application. However, if you were to contest this question, provisional app. also has direct wording that it is not a new application either.

343 DonNo Gravatar May 18, 2011 at 11:47 pm

wrt the signal, if the claim is just directed to a signal, then it is not a process claim and M-T test wouldn’t apply. I think the answer would be that the signal is a manufacture but because it is not tangible then it is not patentable.

344 OverworkkedNo Gravatar April 25, 2011 at 12:44 pm

I talked with some PLI sales-rep who had written actual PTO Exam questions in the past. His _opinion_ was that the KSR/Bilski questions would _NOT_ be Beta questions.

I tend to agree since the questions are not particularly complex/difficult. (Or maybe that’s just my hope).

However, if they are beta questions, again that’s good because they won’t take up too much time.

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345 mmmNo Gravatar April 25, 2011 at 2:55 pm

Thank you very much for this insight!

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346 ElleNo Gravatar April 25, 2011 at 9:21 pm

I think the relatively large number (~10 total) KSR/Bilski questions that I got suggests at least a few were beta questions. A few of them were very easy, and a few were very hard. Perhaps the scored/Beta questions divided down that line? Who knows.

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347 OverworkkedNo Gravatar April 25, 2011 at 11:00 pm

What made the hard ones hard? The guidelines looked fairly straight forward.

Any examples of wording?

TIA!!!

348 zaoNo Gravatar April 27, 2011 at 2:03 pm

i took the exam yesterday and didnt pass by 2% :( hard to accept it grrr. well i only had 2 questions on the new material. one was easy but i couldnt find the answer to the other one as all of them was in the KSR and the question wording was very confusing. i found it hard to find answers on mpep, i could only find answers for 3 questions even though i had 1.5 hrs left after each session to check. does anybody have suggestions on how to better use it besides the index? also there were so many questions not on the PLI material, very detailed information abt irrelevant stuff i thought. what material do you guys study from besides old questions and PLI? i had a lot of repeats and a lot of questions from this blog, so make sure you really know ALL questions. I will be going to DC to check what i got wrong and I will try to remember and post here. this site really helps out a lot really !!!! i wish i had spent more time memorizing the answers from this blog. hopefully next time i will pass :) good luck all. the exam was much harder than any practice exam i took, i studied all from 2000-2003. as soon as i go to check my answers i will post them. GOOD LUCK

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349 isNo Gravatar April 27, 2011 at 3:28 pm

what where the questions? Can you rephrase/describe them and post here, please,

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350 DanNo Gravatar April 27, 2011 at 7:46 pm

Does anyone recommend actually reading entire chapters( 700,1800,2100,600) of the MPEP, as PLI says to? If so reading them multiple times as PLI says to?

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351 OverworkkedNo Gravatar April 28, 2011 at 12:46 pm

I took the Exam on 4/27/2011 and passed. This was the new E8R8 including KSR/Bilski/112 guidelines.

PREPARATION:

I am a Third Year Law Student. I took several patent-bar useful patent courses at law school (IP survey, patent law, patent remedy/defenses but oddly enough, not patent prosecution). I also spent 3 months at a law firm reviewing file histories, re-examinations, infringement allegations, and other related things in litigation (not prosecution though).

I studied for about 55 hours over about 10 days straight. No PLI, no Barbri, just my laptop and MyPatentBar.com. I started with the old tests, cracked open the MPEP for the first time, and just did all (and ONLY did) the repeat problems from 2000-2003. I did my best to make sure I knew for each question what the right answer was, and generally, why the wrong answers were wrong. It took me a long time to answer the questions at first, but I got faster and faster.

I RETOOK each test again at least once every 36 hours. I went through each 2000-2003 test about 3 times each. I had some gaps to fill in my framework, especially 102(e) which I spent a lot of time just nailing down, especially the interplay between 102(e), double patenting, 1.131 and 1.132 oaths, as well as prior art dates for 102(e) [I liked the simple 3 level flow chart on MPEP E8R8 700-41, but note that it has some incompatibilities with older tests.]

For all the test questions I learned quickly to do two things: 1. I read the question SLOWLY and CAREFULLY along with the answers and ESPECIALLY the CALL (e.g. all are proper, except). I noticed that as I repeated questions, call mis-reads caused serious problems. 2. I developed a systematic way of knocking out answers-especially look for E = A & C type answers and knock out A then C then others. Even on the test itself I very carefully read the question/answers EVEN IF I knew that it was a repeat. [This is important as some repeats on the actual test are rather minor variants! Most importantly, you need EVERY possible point from the repeating questions, even if you may sacrifice 30 seconds to secure it.]

For the NEW questions (repeaters described by posters, e.g. Spanish Telephone) I copied and pasted each question and its variants into a word document and did my best to understand the basic principles and understand WHERE TO SEARCH for those answers. Some notable fact patterns lend themselves to memorization.

For the PCT questions, I also made a separate section of these, and did my best to understand them. I was VERY WEAK on PCT going into the exam, but … it’s hard to really get a good grasp of these. MPEP 1800 and Appx-T seem less developed compared to other sections. My plan was to throw these questions under the bus with my best memorized guess and come back to them at the end.

For the New Bilski/KSR/112 materials I read the packets the USPTO posted and just made some mental notes.

Note that my background in patent law was priceless. I would NOT EVER recommend this course of study to a non-patent law student or anyone w/o patent experience/context! The 102/103/112 issues are tested excessively and my past hundreds of hours of related study in my law courses made those a breeze. Even so, 55 hours was probably the BARE MINIMUM that I needed to pass. I definitely do NOT feel like I over studied, and I took a substantial risk in retrospect. Another 25 hours of preparation that worked out Appeals (and how you can amend during appeals) and PCT (how you can fix/update/amend your patent during the process) would have been much better and less risky.

THE TEST:

I scheduled my test to start at 12pm because I do better in the afternoons. The test center I went to was the Houston – 7111 Harwin. The center was decent. The room was on the cooler side but a long sleeve dress shirt (rolled up sleeves) and jeans and normal shoes was sufficient to keep me warm. The computers and monitors at this location were excellent considering the horror stories I’ve read. The monitor is about an 18″ SQUARE LCD which gives you a good view of the MPEP. The PC’s are fast, and you have laser mice.

The test software is just like the demo. Be careful though, you can click OFF an answer really easy, and not realize it!! Spend the first minute of your actual test time getting used to the MPEP and TEST software functionality.

The MPEP adobe software was reasonable. I simulated the software fairly well by just using Adobe 9.x and be sure to only have 1 window open at a time. [When learning early, feel free to use multiple windows, but train yourself off of this as you get better]. While others may argue otherwise, I feel like the SEARCH functionality allowed mid-PDF forward searches. One caveat, you have to be careful to SELECT and then OPEN the actual title (e.g. 700, 1200) that you want. I blew several minutes on fruitless searches because I selected a title without actually opening the title and thus searched the same title over and over.

The MPEP software also failed to highlight consistently. It would “BLINK” the highlighting once really fast and then just leave you on the destination page. Unclear why this happens, it may have something to do with using the X button on the top right to close instead of clicking back on the test to swap windows. The problem came and went. Cycling through the windows and clicking back and forth seemed to help. The PDF text size is adjustable. I did not test copy/paste functionality, though it seemed that you could highlight in the test. The mice roller wheels sometimes reduced the text to 17% Zoom. Need to be careful if you have custom mice habits.

As for the test itself, the first half was relatively easy. Lots of repeats. I have made notes on the specific problems that I found on their respective pages, which I think is more helpful than posting them here.

I only spent about 20 minutes at the break reviewing briefly the PCT questions and the User-Submitted questions. My mind was in gear and I didn’t want to waste enthusiasm relaxing. As for food choice, I drank about 4 ounces of some pure soy protein in water with a few apricots and cranberries.

The second half was brutal—very few repeats, lots of new material. It was harder to focus as time went on, but one important help was 1. read the call and answers SLOWLY. 2. systematically answer each question. This is important when mentally drained because your efficiency just goes south fast if you’re not methodical under exhaustion.

I passed.

I’ll also put in a word for divine aid here. I’m LDS/Mormon, see Mormon.org. I guess a fair number here are as well, but the principles apply to all Christianity. I was sure to keep the Sabbath set apart for the Lord’s work (and not my own). Also, the prayers and support of my family, and my own were also clearly helpful in many regards. I would strongly recommend to pray for the things you need – help in focusing, preparing effectively, reading correctly, staying cheerful, not getting exhausted in hour 5/6, etc. Heavenly Father hears, cares, and answers His children’s prayers.

NEW MATERIALS:

As per new material, only 1 question was from USC 101 (Bilski) issues and was really easy (below). One or two questions seemed to be new 112 material (below). Several (like 10) questions directed to the KSR/Obviousness guidelines. As noted above, these can be really hard!!! You just have to methodically dispose of each possible answer one by one as you search the KSR guidelines.

Overall, the mix of questions was well distributed. Not overly heavy in any given area and mostly in line with what others have mentioned above. I only had 3 or so strictly PCT questions (gratefully). But as noted above, the KSR/Obviousness questions were heavily tested and generally difficult.

Because there is nowhere else to post them, I provide samplings below:

BILSKI QUESTION:

The question is rather easy from my perspective. It describes a method of advertising and lays out the claim in detail something like:

A method comprising the steps of:
doing research;
collecting results;
analyzing results;
and making a recommendation.

Examiner says rejected per 101. Which of the following is most appropriate to overcome the 101 rejection?

A. something false
B. Argue that Bilski said business methods were cool
C. something else
D. Incorporate a machine such that it does some meaningful transformation [complies with 101 factors] (My Answer)
E. something interesting but not quite there

KSR QUESTION:

(Gross approximation) Application A before pto concerning drug-QP dispensal machine with touch screen. Examiner thinks obvious via 103 per X and Y. X teaches drug-BV dispensal machine, Y teaches touch screen and suggests that drug dispensal machines could benefit from touch screen.

How should the examiner properly reject application A via 103?

A. Something tricky and false
B. Disregard the Graham factors and do something true per KSR
C. Something CORRECT – (use the teaching as a rationale to support obviousness) (My answer)
D. Something tricky and false
E. B & C (where C is the answer I ended up going with)

Random KSR stuff:

These are facts that I had to learn on the fly from the KSR questions to knock out answers or validate others. These are not necessarily true answers, just principles that were helpful in systematically evaluating the answers:

1. Per KSR bulletin, patents can be found obvious despite the inconsistency of the teachings in prior art (or inconsistency doesn’t necessarily overcome Prima Facie case).

2. Inoperability (inoperable was a word that kept popping up) affects things in some way when you change the prior art with a TSM.

112 And Computer Program:

Means For and Computer Programs that has some relationship to 112p6.

Which of the following is TRUE:

A. Something
B. Something else
C. make the general computer do stuff (almost but not quite? unclear if true)
D. Algorithm disclosed via PROSE, flowchart, etc. (straight from 112 Bulletin – my answer)
E. C & D (carefully consider C, at least D is true)

112 and Enablement/Written Description:

Application for compound Z to treat cancer? No disclosure of how to make Z. Prior art discloses Z but also does not disclose how to make Z.

Examiner wants to make a 112, first paragraph rejection for enablement, done how?

A. 112 enablement only b/c no enabling of phosita
B. 112 enablement + 112 written descripton b/c spec + prior art doesn’t enable phosita (my answer)
C. likely wrong
D. likely wrong
E. likely wrong

That’s it. Enjoy. I’ve noted the repeat questions I got across their appropriate pages on this site. MSCJ

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352 AustinNo Gravatar April 28, 2011 at 2:29 pm

passed today, just have to wait for official results. Overworked mentioned the questions that I was going to put up. Good luck to everyone else

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353 OverworkkedNo Gravatar April 29, 2011 at 5:13 pm

One other repeat question not really “file-able” anywhere else:

Which one is (or is not) in accord with the MPEP, laws, and regulations in regards to EPAS?

A. something
B. something
C. something
D. something
E. Inserting an electronic signature is an act that affirms/certifies that such act of insertion was performed by the person whose signature is represented. [approximately] (This is a true statement)

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354 BeckerNo Gravatar May 1, 2011 at 5:09 pm

Thank you so much, Overworkked for taking the time to post this! Invaluable information.

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355 JLilCNo Gravatar April 29, 2011 at 1:47 pm

Hi all,
I am new to this site. I am taking the exam in June. I am a 3rd year law student and have taken some patent and IP courses during school (my background is not as strong as Overworked’s background). I also have patent bar review materials from before the April 2011 test update. Since there still are not too many posts on the updated exam (but many thanks to those who have), I am worried about my exam prep. Should I invest in the new PLI materials? Is it worth it? I would appreciate your thoughts.

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356 Sarah W.No Gravatar April 29, 2011 at 4:19 pm

I really wouldn’t. I bought a new PatBar prep course instead of a used one because I had the same concerns and all the new material contains are a list of the edition changes and copies of the notices that can be found on the USPTO website. I don’t know if PLI offers anything better, but really all you need to do are read each of the notices on your own and figure out what the major changes are in revision 8 vs 4. Most of them are nitpicky things or things that implement electronic submission/website things. I would get a second opinion from someone who has purchased the PLI updates, but I find the most useful info to be in the 5 notices.

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357 Sarah W.No Gravatar April 29, 2011 at 4:20 pm

I have NOT taken the exam yet, just FYI. I plan to in about 3-5 weeks.

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358 wenabbyNo Gravatar May 1, 2011 at 8:15 am

Can anyone comment on the PLI’s “Claim Drafting” part? PLI has quite a lot materials and CDs related to the Claim Drafting. Is this going to be tested in the exam? If so, how many questions usually are there? Thanks a lot!

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359 majmunNo Gravatar May 1, 2011 at 9:26 am

I have the new supplemental materials from PLI and they are not worth purchasing a new set over. It’s just a summary (and I use that term loosely) of the new materials that was basically cut and pasted from the PTO published notices.

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360 mansi parikhNo Gravatar May 5, 2011 at 2:07 pm

I am planning to give the exam withing few months, and I need the new material for preparation. I do not want to spend a lot of money buying it, so if any of you can give your used material at low cost, I would love to know the details.

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361 CKNo Gravatar May 6, 2011 at 12:02 pm

This website really helped a lot for my prep, thanks for all who posted previously. Here are what I can remember from my exam:

1. where can claim foreign priority: [I chose a), not sure]
a) either specification first sentence or ADS
b) any of specification first sentence, ADS or oath/declaration

2. rapidity of producing a stuff can be used to ? (can find it in MPEP 2100)
a) it can be used to determine the skill level of people of ordinary skill in the art

3. Drug dispense and touch screen, what to use to properly reject thru obviousness [I chose b), not sure]
a) not resolving by Gradham rule, just depend on KSR~
b) some thing right in KSR
c) both a) and b)

4. some thing about the electric signature
a) something tricky about copy of oath/declaration’s signature is not recognized in PTO, [could not understand the questions at all, so did not pick it]
b) Inserting an electronic signature is an act that affirms/certifies that such act of insertion was performed by the person whose signature is represented. [ I think this is true]

5. assignment document, choose the one Office does not require
a) original assignment or true copy – is not required

6. something about in which situation, the choice alone can not stand for prima facie rejection rebuttal (a, b, d definitely can stand alone)
c) situation when teachings are not all in agreement. [I think one can not purely depends on this to rebuttal obviousness]
e) none of the above

7. two-three questions about ADS and oath/declaration and supplemental oath/declaration, so definitely need to memorize which rules in what situation, on residence, citizenship, etc.

1) a question about if ADS has all the information, the actual application does not need to include any of the information shown on ADS, except citizenship (true or false? Not sure)

2) another question about name and residence of A, B, C on executed oath, B’s wrong, how to correct. [I think the test point is the oath still needs to list all the inventors, and then the correct residence of B, need only sign by B?]

8. situations where CFR 1.131 affidavit can be used, and can not be used. [102(g) can not be overcome by it]

9. two-three questions about PCT filing.

1) fax the reply from German, which is several hour ahead of USPTO to meet the deadline [as the others said this should be the right answer]

2) Mexico company, what to do the following on I.A. to US/RO: “Sole Applicant” the company head, resident of US and national of Mexico, “Sole Inventors” two Mexican, last day to enter national phase, the copy of I.A. is transferred from I.B., translation not available, filed national fee by “Express mail office to address”, can have a filing date or not?
a) not for some reason~~
b) yes because the translation can be submitted later than 30 month from priority
c) yes because national fee is submitted within 30 month from priority [ very confusing, because I actually think both b) and c) are right, but went with c), not sure is right or not]
d-e) can not remember, but definitely wrong

3) something about if prior application is filed in US/RO, then when file I.A. in US/RO claiming priority, can only file the national fee to get filing date, or still need to provide the copy of I.A.

4) forgot to designate states in I.A. filing 1/2003. Then fax the designation of last day. – I chose can not get the filing date because can not use fax to get designation for filing date

10. third party submission, all in compliance except (I think this is from an old exam, can not remember)
a) can not over ten publications/patent
b) do not need to serve on the applicants

11. where equivalence prior art can be used for obviousness (definitely an old exam question, but wasted for ages to find the answer) – need to remember equivalence from applicant’s own disclose can not be used.

12. appeal, board affirm the rejection, what happens to the objected claims based on their dependency on the rejected independent claims, which otherwise is allowable.

13. all kinds of obviousness questions (about 10-15), it might be necessary to read MPEP2100 about the situations on obviousness

14. in what situation 102(f) can stand
b) if reference effective date is subsequent to claimed invention
c) clear knowledge of deviation of the invention from public knowledge
e) b) and c)

15. which does not count new application – I chose RCE

16. inventors ABC assigned patent to company Y, after three year need to add inventor D, C does not cooperate, what should practitioner do
d) on behalf of company file reissue, CFR 1.175 and CFR 1.172 [I chose d), but can not tell from d) and e)]
e) reissue, list all four inventions, executed by ABD, and petition of CFR1.47

17. inventors AB filed utility app M on methods I/II/III/IV, assigned to company X, X exclusively licensed to company Y. inventors CD from company Y filed new application N containing methods of I/II/III/IV/V, which is rejected over M in view of a publication, what should do
a) company Y add inventors AB to their new app, because they are inventors of steps I-IV, then M does not count prior art anymore [I don’t think one can do this?]
b) terminal disclaimer~
c-e) can not remember, [ but I did not choose a), though not sure]

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362 mmmNo Gravatar May 6, 2011 at 3:18 pm

how much material regarding the new stuff was on your recent exam? (i.e. KSR, Bilski, etc)

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363 CKNo Gravatar May 6, 2011 at 10:11 pm

Not much, about five to six total. The new material may appear as one of the choices some time.

364 maggieNo Gravatar October 24, 2011 at 2:17 pm

I have a Q? about our answer for #4) forgot to designate states in I.A. filing 1/2003. Then fax the designation of last day. – I chose can not get the filing date because can not use fax to get designation for filing date

Where do you find this in MPEP?

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365 ChloeNo Gravatar May 7, 2011 at 12:44 pm

This is a random question..but can you file a continuation application instead of a response to an official action ? Thank you.

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366 JakeNo Gravatar May 11, 2011 at 1:48 am

I wouldn’t think of it as “instead of” but rather you can file a continuation application while the parent is pending. So, you can file the continuation and not respond to the office action — resulting in abandonment of the parent after the statutory period of 6 months to respond expires.

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367 BigbadvoododaddyNo Gravatar May 12, 2011 at 9:07 pm

The Apr 2003 question of not getting a filing date by faxing the designation over in a PCT application (fax is not permitted). This question in view of E8R8 should be answered as – the filing date is granted, because the designation of a state is not needed – the PCT application automatically designates all member states.
Am I mistaken or is the fiing date denied still the right answer. Appreciate your comments

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368 wenabbyNo Gravatar May 12, 2011 at 10:50 pm

At least one contracted country must be designated to obtain the filing date during the initial filing of PCT application, which cann’t be filed using fax.

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369 Big Bad Voodoo DaddyNo Gravatar May 13, 2011 at 3:59 pm

You are correct Wenabby – my oversight (in hindsight) :)

Here is a PLI question which I have difficulty with:

The single claim reads as follows:
1. Means for lifting a horse onto a trailer, comprising: a sling for attachment to a suspended winch, for placing beneath the horse and winching said horse upward, and bearing means adapted to enable the winch to swing while loaded with said horse onto said truck.
A. This claim will be rejected as an improper 35 USC 112, 6th paragraph claim.
B. This claim will be rejected under 35 USC 112, 1st paragraph, for being inoperative
C. This claim will be rejected under 35 USC 112, 2nd paragraph, as being indefinite
D. This claim will be rejected under 35 USC 102/103, as being an accumulation of parts.
E. This claim will not be rejected.

The correct answer is C. However which are the exact points that are indefinite. Also is the fact that both a bearing to move the winch and a means for lifting with a sling attached to a winch are claimed in the same claim. Also how is it not an improper 112 6th para claim – as in there is a means recitation with structure (albeit means is in the preamble) and a means with implied function. Does the “adapted” functional modifier affect any of the reasonings. Your thoughts as always are appreciated.
thank you.

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370 SleeplessNo Gravatar May 14, 2011 at 4:08 am

The claim is indefinite because of “onto said truck”. It is mentioned at the end of the claim, however, the claim contains no earlier recitation or limitation of a truck.

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371 Big Bad Voodoo DaddyNo Gravatar May 14, 2011 at 7:47 pm

Thanks sleepless.
Here is another one I’m having difficulty with
An application was filed in the United States on June 13, 1999 properly claiming priority from an
application filed in the U.K. on June 24, 1998. The invention was fully described in a published article
in Russian that was dated in April of 1998. The article describes the work as being that of the inventor
of the U.S. application. Under which of the following sections of 35 USC 102 is the applicant barred
from obtaining a U.S. patent?
A. 102(a)
B. 102(b)
C. 102(d)
D. 102(e)
E. None of the above.

The answer is B.
The US application is no doubt beyond the 1 year of the foreign application see 706.02 VI C. That paragraph also states that certain references may be over come. Look at 2136.05 regarding 102 e rejections where it is applicants own work.. Here the applicants own work is described by others. In this case does it not defeat the purpose of claiming foreign priority via 119.
Thank you

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372 SleeplessNo Gravatar May 14, 2011 at 10:13 pm

I think you answered your own question. “The US application is no doubt beyond the 1 year of the foreign [publication] see 706.02 VI “, because of this the app is barred under 102(b) and not 102(e).

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373 Sarah W.No Gravatar May 16, 2011 at 3:22 pm

I have a ton of handwritten notes and memorization lists from my time studying.

Does anyone have a website I could upload them to, or send them to you so you can upload and share? I have a scanner. Lists include:

Partial 17 page key points outline chapters 100-700
Key points to memorize lists: Chapters 100-400 and 1800
Exam concepts and questions memorization list

Can you tell I started strong in studying and tapered off? All my materials are for the beginning of the MPEP. If someone else wants to start where I left off, I’m sure everyone would appreciate it.

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374 ZephNo Gravatar May 16, 2011 at 5:55 pm

To the cloud! You could start an account on websites such as box.net or dropbox.com. Then share the login info so everyone can access it or give it out to whoever want’s it. Google Docs lets yo do that as well.

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375 Dan S.No Gravatar May 16, 2011 at 6:07 pm

I would be very interested in that. I have the test scheduled for Jun 2 and I am freaking out. Any note relating to the new material would be very beneficial as well

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376 Sarah W.No Gravatar May 17, 2011 at 12:19 pm

I’m taking my test tomorrow, so I will try to make an account and put my materials up as soon as possible after that, hopefully Thursday. I’ll let you know how much new stuff is covered. Right now, I’m just reviewing notices 3, 4, and 5. As far as I can tell, notice 1 and 2 are all summarized in notice 4 (the bilski outline), so I’m just going to use that for any questions I see.

377 BenNo Gravatar May 16, 2011 at 9:55 pm

I also have a test scheduled for Jun 2 Dan. I’m going to DC next Monday to see my old test. I really hope that helps me pass this next time. I haven’t been studying so much lately. If anyone has any good outlines or review questions, please post!

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378 zaoNo Gravatar May 19, 2011 at 9:49 pm

Ben can you please post the questions and answers after you go to DC please? thank you

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379 BeckerNo Gravatar May 17, 2011 at 3:06 pm

I am SO happy to report that I took the test yesterday and PASSED!!!

It was all a blur, so I can’t recall exactly which questions were asked, but I will browse through here an note which ones I do recall. Here are a few thoughts…

For my test, the morning session was totally do-able. I went to lunch feeling darn confident. The afternoon session kicked my butt though!! I was very fearful during it that I wouldn’t get all of the questions answered, and that I wouldn’t get enough questions right to pass.

Heavily tested:
Appeal -lots of appeal questions; when you can file what, what your options are before and after each of the milestones, that an RCE effectively withdraws the appeal, what happens to the allowed/objected/rejected claims upon withdrawal/abandonment
Reisse – various aspects of whether you can or cannot broaden, can an assignee file, …oh, I can’t remember any more, but there were quite a few
112 – lots of 112 questions, enablement, written description, is there support in the spec, etc.
Obviousness – lots of these, when can you use 1.131, what are the obviousness rules, how can you get around a rejection
101 – several patentable subject matter questions
Double patenting – know how you can get around for both statutory and nonstatutory

I did get a few maybe 4 or 5 questions related to the new material. I really only used the “Reference Material” dropdown a few times. I don’t recall the exact questions though. Sorry. I don’t recall any of them being insurmountable though. Who knows if I got them right though….

What else?

Oh. Know what documents you can use a copy of a signature to sumbit – I think the choices were oath/dec., charge to a credit card, and an amendment.

Shoot, I can’t think of anything more. If I think of any more, I’ll post here again.

Good luck to you all!!! BTW, I would say that the test is not significantly different than what the test was before they added the new material and version. I was a little freaked that studying old tests, etc wouldn’t be helpful. But, it definitely was.

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380 SarahNo Gravatar May 18, 2011 at 3:33 pm

Ok. Got a prelim pass after taking the test TODAY. Here’s a few things I noticed:

- Morning session was easier, questions weren’t ambiguous and almost all easily searchable.
- LOTS of appeal, examiner new grounds, board new grounds
- Most PCT was on what is needed to get a filing date, when the US is an competent receiving office, or not being able to fax to get a filing date or national stage entry.
- I had about 5 KSR obviousness questions. These are difficult! None of the answers can be found word for word in the Reference Material, you NEED to know the concepts. Read the Notice 2 or 3 times, or MORE if you can. If you know the basic concepts, you’ll be okay. (Things like references related to the problem instead of the field, PHOSITA would recognize, etc) Read the case teaching points over and over.
- Only 2 or 3 questions on 101 eligibility. I was unsure about one of my answers, but generally these weren’t hard. The one I was unsure of went like this:
Which is eligible matter?
a) A mathematical algorithm with a “useful, concrete, and tangible result”. (I couldn’t eliminate)
b-d) Eliminated
e) A long, drawn out answer involving a computer formula for improving floor molding specifically. (I liked this answer better because it gave me a specific utility and made it obvious this was a practical application of a formula.)

- Know that you have 2 months to supply missing parts in PCT now.
- One question involving a French patent and whether it was prior art under 102 (a,b,d,e).

French patent filing date April 28, 2001. French patent issue date April 29, 2002. US patent filing date April 30 2002. What is reference available under?
a) 102 a only
b) 102 b only
c) 102 d only
d) 102 a and d <— I chose this
e) 102 d and e
I chose both because it didn't state it was a secret patent. It could be argued that the patent wasn't explicitly stated as published, but I assumed issued meant 102 a was OK.

- One question I couldn't find the answer to when I search but I thought I knew the answer to:
Which of the following is APPEALABLE?
I) 2nd rejection of claims (appealable)
II) Refusal to enter amendment after final rejection (couldn't find anywhere)'
III) Restriction requirement (not appealable)
a) I only (I chose)
b) II only
c) III only
d) I and II
e) I and III

Hope this helps!

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381 SarahNo Gravatar May 18, 2011 at 3:34 pm

Also, I would say anywhere between 30-40% of my test was old questions. I studied all the repeated questions on this website and all the exam question and concept links. They were a GREAT help.

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382 SarahNo Gravatar May 18, 2011 at 3:36 pm

Also I had 3 or 4 questions covering when you can use 103(c) to remove a rejection.

Remember:
1) NO ANTICIPATION, obviousness rejections only
2) No double patenting
3) Must be commonly owned at time of invention!

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383 SarahNo Gravatar May 18, 2011 at 3:44 pm

Question on whether not demanding examination changes deadline to file a National stage in the US (it doesn’t)

And if you miss the 30 month deadline, can you find extension or petition to revive to get into national stage or file other places with a 31 month or more deadline (no. no. no.)

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384 SarahNo Gravatar May 18, 2011 at 4:05 pm

I am selling my study materials that I purchased NEW in March from Patbar.com. Includes:
- Old patware CD
- New patware CD with searchable reference materials/notices – A LIFE-SAVER. I took EVERY exam on this and learned how to navigate both the MPEP and new material.
- 3 textbooks LIKE NEW NO HI-LITING
- 1 Notice of new revisions with the first 3 issued notices and all of the changes in all of the chapters of the MPEP explicitly listed. LIKE NEW NO HI-LITING
- 2 sets of flashcard (1 for MPEP chapters, 1 for Rules and Laws)
- 1 Book with 3 patent files copied in it.
- Notices 4 and 5 – paper copy with hi-liting

I took good care of it because I’m unemployed and broke and planned on selling it to recover some of the cost. Paid 600, asking 400 (firm). Will ship at your cost. Email me at mewpal@gmail.com

Also I will be posting account information when I have uploaded my handwritten outlines and memorization lists. I don’t know how helpful they will be to you guys, but feel free to also contribute. Everyone will appreciate it.

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385 SarahNo Gravatar May 18, 2011 at 5:16 pm

Posted links to uploaded documents, but it says my comment is awaiting moderation. If it doesn’t show up in a few days, email me at the link in this comment and I will email them to you when I get a chance.

Good luck all!

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386 SarahNo Gravatar May 18, 2011 at 5:15 pm

Paying it forward!

Here’s a scanned version of a partial MPEP outline I made (chapters 100-700), as well as some lists I used as memorization tools. I hope my handwriting isn’t terrible! It’s a mediafire link that will take to you a page you can download them from.

Outline: http://www.mediafire.com/?80tewrtm94g49e9
Memorization Lists: http://www.mediafire.com/?84yfdentj5345lz

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387 gkjNo Gravatar May 19, 2011 at 4:42 pm

I passed the exam today. I owe this site a debt of gratitude; it has been invaluable. Some things that I remember:

I was surprised by how few KSR questions there were — I can remember 2 at most. With regards to the other new material, I had something like 3 subject matter eligibility questions (one about process claims) and nothing on 112 that couldn’t be answered without the new guidance.

I had at at least 3 questions aimed at distinguishing the difference between a 112 rejection for lack of written description and a 112 rejection for lack of enablement. The test really beat this horse to death. They were almost the same questions, just varied slightly from each other. So know the difference!

I noticed 2 questions that were subtly varied from old questions, and both had to do with the dates (meaning the only things that were changed from the old questions were the dates, which resulted in a change in the answer). I wish I could remember which question they were, but I know that one of them had the line “nothing is done until Midnight on …” and the date given was the day after the Office Action! I thought it was a typo at first. So if you think you recognize a question, pay close attention to the dates before you settle on an answer!

The repeat questions that I remember getting were Tommy and Jo, Moondust, XYZ Corp. (issue fee transmittal), French Patent, and Potter. Can’t remember specifically beyond that right now.

I was expecting more PCT questions than I got, or at least some harder ones than the ones I got. I had 2 questions that asked whether the RO/US is competent, and I had a third PCT question that asked both where you send amendments after the ISR (the answer is the IB), and what you can amend (only the claims after the ISR).

As stated above, there were a fair amount of appeal questions, including one about which kinds of amendments will ordinarily be considered by the examiner once an appeal has been filed. I found the section in the MPEP that says which kinds will be entered and when, but all of the answer choices were about amendments submitted after an appeal brief had been filed, so I chose none of the above.

I saw more reexamination questions than I anticipated, probably 5 or 6, but for the most part they were not too difficult to look up. Sorry I can’t remember the specifics of them right now.

I also second what was said above about the morning session being easier; there were maybe only 5 questions in the first session that I thought were difficult. But in the afternoon session, I had to dig for answers in the MPEP quite frequently.

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388 zaoNo Gravatar May 19, 2011 at 10:38 pm

Exams questions from april 2011

Q: Applicant files an amendment regarding less than all the rejected claims and request for a rehearing, what would the examiner do? — Ans: examiner will not consider rehearing (there was another part to the answer but cant remember, there was only one answer choice starting with examiner will not consider rehearing, read 1214.01 in MPEP)

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

Q: All of the following is true to make a second office action final except: Answer: a new ground of rejection is introduced by the examiner …. (read below)

706.07(a): Under present practice, second or any subsequent
actions on the merits shall be final, except where the
examiner introduces a new ground of rejection that is
neither necessitated by applicant’s amendment of the
claims, nor based on information submitted in an
information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).

Q: All of the following is in accordance with MPEP except: Answer: A minor (under 18) inventor who understands the document needs a representative to execute an oath or declaration on his/her behalf

409: A minor (under age 18) inventor may execute an
oath or declaration under 37 CFR 1.63 as long as the
*>minormaterial to patentability<. Prior to publication, an original application is not available to the public under 35 U.S.C.
122(a). After publication of the application under 35
U.S.C. 122(b)(1), where the application file and contents are available to the public pursuant to 37 CFR 1.11 or 1.14, any materials submitted under MPEP §
724.02 will only be released to the public with any
other application papers if no petition to expunge (37
CFR 1.59) was filed prior to the mailing of a notice of
allowability or notice of abandonment, or if a petition
to expunge was filed and the petition was denied.

Q: 102(f) what is true?: 102(f) can use a reference where reference date is subsequent to effective application date.

Q: applicant wants to add impermissible new matter. Claim1 was not supported in the description. Claim 2 is new matter. (something like that). What happens? Correct answer: reject under 312 as new matter. As to claims, reject claim 1 and 2 for lack of description (can’t remember all but something like that)

Q: what agrees with MPEP. Only the statement containing something like ordinary skill in the art can take into account what is expected in the future. (one statement involved 103 and the other was also about ordinary skill but clearly not true)

Q: restriction requirement, subcombination/combination, what agrees with MPEP. Correct answer involved something like requirement is proper where inventions are distinct (this answer choice also had something about double patenting). Double patenting only showed up in this answer choice so pick that. The answers were quite confusing to understand I thought.

806.05(c) inventions are distinct and restriction is proper

will post more soon.

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389 zaoNo Gravatar May 19, 2011 at 10:51 pm

Q: what is correct in regard to an international application?: the correct Answer was E : E) none of the above. (A was in order to file an international application in the USA applicant needs to be both a resident and citizen of USA. B was where there are multiple inventors, need only a signature of 1 inventor to withdraw application. C was something about if you don’t submit a drawing, you will be notified and you can submit in 30 days and filing date is not affected for PCT. Can’t remember D)

Q: Jo and Tommie. Jo is responsible for claims 1-19 and Tommie for 20-?. Application was filed in Jo’s name only, then changed inventor to include Tommie as well. Claim priority from previous application. Examiner rejects 1-19. They abandon application. Inventor file a division from parent with claims 20-? But delete priority. Examiner then rejects as anticipated under 102(b) (prior art is a date after priority but before application). Tommie then wants to regain priority to overcome 102(b). what happens? (can’t remember all the details sorry)
a) Something like… can’t regain priority in a division b/c claim 20 was not from parent (Not true since you can incorporate by reference from parent)
b) Tommie should not have been the inventor in previous application (not true of course)
c) Something about RCE to regain priority
d) Something about regaining priority
e) None of the above
Answer is E, based on the facts of the question which I can’t remember it all but u couldn’t regain priority since the period to claim priority had passed. 16 months/4months rule.

201.11 (E) If the later-filed application is a utility or
plant application filed on or after November 29, 2000,
the reference to the prior-filed application must be
submitted within the time period set forth in 37 CFR
1.78(a) (e.g., during the pendency of the later-filed
application and within the later of 4 months from the
actual filing date of the later-filed application or 16
months from the filing date of the prior-filed application) for a benefit claim under 35 U.S.C. 120, 121, or 365(c), a

Q: Submit 52 tables in two CD-ROMs (1-26 and 27-52). Each table is half a page. The correct answer is submission is improper, tables were no more than 51 pages and you also need duplicate of compact disk.

608.05(b): A single table contained on 51 pages or more, or if
there are multiple tables in an application and the total
number of pages of the tables exceeds one hundred
pages, the tables may be submitted on a CD-ROM or
CD-R (in compliance with 37 CFR 1.52(e) and 37
CFR 1.58).

Q: what do you need to receive a filing date for reissue?—Answer: copy of specification including drawing and claims.

Q: which statements are correct regarding receiving an application at a certain date (suppose jan 8th, can’t remember the date)? Answer: statements I and II were right. Statement III was wrong. Make sure you remember that don’t need mailing label number to be placed on the correspondence and don’t need the certificate of mailing. Statements I and II included Express mail. Statement III did not include express mail only certificate of mailing.

513: III. “EXPRESS MAIL” MAILING LABEL
NUMBER
Effective December 2, 1996, 37 CFR 1.10(b) no
longer requires a certificate of mailing by “Express Mail” or that the “Express Mail” mailing label number be placed on the correspondence prior to mailing.
Correspondence deposited with the USPS on or after
December 2, 1996, and which is actually received by
the Office will not be denied a filing date as of the
“date-in” appearing on the “Express Mail” mailing
label because the number of the “Express Mail” mailing label was not placed on the correspondence prior to the original mailing

Q: Artries was a sole inventor. In order to pay some fees he assigned some interests to his practitioner. Artries dies. What happens? Answer: practitioner will continue to represent (this is because practitioner has now part interest of invention so doesn’t lose representative rights) (one answer choice included that his heirs would have to assign a new practitioner)

Q: PCT application. Japanese application Jan 5, 2000. File international application claiming priority of Japanese and designating USA on Jan 5, 2001. Application publishes and issues. (The question involves more dates and details including publication in English and stuff). When does it become 102(e)? Correct Answer: Jam 5,2001 (102(e) from international application date since after Nov, 29, 2000)

Q: PCT application. German application nov 29,1999. International application claiming priority from german application and designating USA on nov 29,2000. (more details followed). The patent expires 20 years from what date? Answer: nov 29,2000 ( the international application date).

Q: all of the following regarding reissue is true except: answer: if the assignee is not mentioned, it will be assumed there is no assignee (look at mpep 1410.01 If the file record is silent as to the existence of an assignee, it will be presumed that an assignee does exist.

Q: Related to making special. I think the answer was all of the above. They included things listed under 708.02 under VIII. SPECIAL EXAMINING PROCEDURE FOR
CERTAIN NEW APPLICATIONS — ACCELERATED EXAMINATION. (some choices included fee set forth in 37 CFR 1.17(h), Submit a statement(s) that a pre-examination search was made, listing the field of search by class and subclass, publication, Chemical Abstracts, foreign patents. Submit one copy each of the references
deemed most closely related to the subject matter encompassed by the claims if said references are not already of record.

Q: reexamination, all agrees with MPEP except: correct answer included something about sealed envelope will not be open and public will not have access. Two of the answer choices included NIRC. Read 724.04(a) and (c)
724.04(a) (A) The submitted material will be maintained in
the original envelope or container (clearly marked
“Not Open To The Public”) and will not be publicly
available until a determination has been made as to
whether or not the information is **>material to patentability<. Prior to publication, an original application is not available to the public under 35 U.S.C.
122(a). After publication of the application under 35
U.S.C. 122(b)(1), where the application file and contents are available to the public pursuant to 37 CFR 1.11 or 1.14, any materials submitted under MPEP §
724.02 will only be released to the public with any
other application papers if no petition to expunge (37
CFR 1.59) was filed prior to the mailing of a notice of
allowability or notice of abandonment, or if a petition
to expunge was filed and the petition was denied.

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390 CuriousNo Gravatar May 20, 2011 at 1:46 am

Has anyone come across a summarized list of the new material that may be potentially tested on the new version of the test?

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391 zaoNo Gravatar May 20, 2011 at 2:27 am

Q: DNA. Examiner reject due to patent A. Practitioner then states a new function of his DNA oligonucleotide not stated in patent A. what would the examiner do? Answer: the examiner is not persuaded (look at mpep 2111.04 I: Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable)

Q: clock-fan-lamp. Practitioner gives a bunch of dimensions and where the clock fan and lamp are located in regard with one another. Examiner rejects as anticipated over another patent containing the clock fan and lamp. Practitioner argues that his model is different due to measurements and drawing to scale and the other patent doesn’t specify. What would the examiner do? Answer: examiner is not persuaded ( look at 2125 When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value)

Q: specification states object is composed of 25-60% “polymer”. One example in the claims is 36-60. examiner rejects over reference 102b (reference states 36-60%). then practitioner changes it to contain at least 35%. Examiner rejects over 112 first paragraph for lack of description. Practitioner changes it to 37-60%. what would the examiner do? Correct answer: withdraw rejection under 112 first paragraph and withdraw under 102(b).

Q: practitioner receives notice of allowance Jan 2. Before paying the issue fee he wants to test it commercially to see if it is successful. Which of the following is true. Answer: (can’t remember but it had the date april 2nd with certificate of mailing which is 3 months from notice of allowance to act on it otherwise it is abandoned for lack of paying issue fee. Be careful cause there is an answer choice that states may 2nd w fee saying it was unintentional (this choice is tempting but in this case it is not unintentional so can’t do that)

Q: practitioner sends appeal brief and reply brief. Then sends an argument which was not submitted before. Which of the following would give him the best chance of having his argument considered? Answer: argument was published after court decision (something like that)

Q: examiner rejects claims 1-9. board affirms rejection and add new ground of rejection. Practitioner answer covers examiner rejections and addresses the boards new ground of rejection. What happens? Answer: examiner continues (can’t remember all but it causes reopening prosecution)

Q: regarding 37 CFR 41.50 which of the following is true? Answer was all of the above (can’t remember the choices)

Q: there was one on foreign application then file in the USA. The answer is rejected under 102(d). this question is stated by Sarah above. Be careful the answer is 102 (d) only NOT 102(a)and (d). the way the question is worded makes you think it is both 102(d) and (a) but it is NOT by another so NOOOOOO 102(a)

Q: there is one I can’t remember at all but there are 5 statements, what is true? Statements (1) (2)(3)and (4) are true. (statement 5 had something about ADS which is false)

Q: I also had a question as stated by another on this blog about for which document can you submit a copy of signature. PLEASE HELP with this one!!!

If I remember anymore I will post here. Chapters heavily tested, 700, 1200, and 2100
The wording of the questions are very confusing sometimes, something that should be straight forward is not and you end up not paying attention or getting confused and choosing the wrong answer.

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392 zaoNo Gravatar May 20, 2011 at 3:02 am

BEN please post what you remember after you go to DC to check your exam

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393 BenNo Gravatar May 23, 2011 at 7:12 pm

Zeo, as per your request here is what I remember from my review session today in Alexandria, VA.

I took the test on 04/04/11 and got a 67%. I missed 17 questions in the AM section and 12 questions in the PM section (not including the 10 beta questions which I have no idea about). So that’s 61/90. The funny thing is that it really is a 67.78% meaning they round down, not up. The key lesson in all of this is that the USPTO is a hardened institution that requires extensive process and procedure. They do not bend to you, you must bend to them. If you see on your test a question that says the USPTO throws out the paper, it is probably correct.

Here are the questions that I can remember:

1) Who has access to a patent application – oral request to those who can prove their identity

2) New ground of rejection – not all new claims addressed (less than all addressed) – Examiner will not address the claims. Board will address the amendment … terminated.

3) Costa Rica + Sweden – will be forwarded to IB/RO and given date which it was received at US/RO.

4) Fan apparatus (fan-thingy) – Dimensions are of little value when not mentioned in disclosure, therefore the guy’s argument is not valid.

5) A LOT of EXCEPT questions

6) Non-final Office Action – Response must distinctly and specifically point out why it is right.

7) After-final amendment – must add new numbers claims 25 – 30. Old claims do not die, just build on them.

8) Judicial things override everything – if the examiner has independent knowledge from judicial review that something is fishy, it is grounds for fraud or indecent conduct.

9) If after a new ground of rejection the examiner says 1 – 5 are OK, 5 – 10 are not and says “this is not for judicial review” it is wrong (meaning right because it is EXCEPT).

10) Assignee of part interest cannot sign the reissue (or something)

11) “ccar” misspelling in the International Application à just one correction to car. Can’t include other sheets like ADS or anything else.

12) Jon misspelled à needs to be John. Just submit an ADS, it’s the cheapest way.

13) Alvin and Bert – Alvin dies. The key here is the application was made by a registered practitioner. Therefore, power of attorney does not leave Bert and there’s no problem. Nothing needs to be done.

14) Both inventors die, after notice of allowance, but before it reaches the registered practitioner. Answer – Board cannot withdraw the application unless the heirs intervene. (The wording was much more confusing than that).

15) All is in accordance EXCEPT – a petition to the Technology Center Director is a reply and will “toll” the time for a notice of allowance or final OA or something. (It is correct b/c it is incorrect, meaning a petition to the TCD is NOT a reply and will NOT stop (i.e. toll) the clock for office actions.

16) If new material is introduced which is not acceptable, and it goes on claim 2, but if AFFECTS the scope of claim 1 – you have to reject claims 1 and 2, NOT just claim 2.

17) Need components A, B, C, and D for an international application. A – filing fee, B – publications relevant C – copies of pubs, D – petition (I think) The USPTO will throw out explanations given with publications and copies of publications.

18) A, B, C are correct – E on a question about an abandoned application. A – it counts as prior art for 102(a) and (b). B – it counts as a publication. C – it has a filing date for 102 (e) as of it’s US filing date. D was WRONG – it is NOT open to the public (I thought it was, it is not!).

19) Another EXCEPT question – if part of the application is revealed to the public then ALL of it is revealed to the public, NOT just the part that is relevant to the public.

20) ACME has a case where patent A was published before something they want to publish now – ACME needs to show they owned the patent A, or were assigned to it, or coowned it or something. (choice C).

21) Inventors A, B, C, D problems with inventorship. A + B were on the patent first, but C and D belong on it too. The Company E was assigned all rights. What to do? – Answer – Only the assignee (i.e. the company) needs to sign ANYTHING. The inventors don’t get to decide anything, it’s all on the assignee to sign (CFR 1.175 or something. Maybe 1.172).

22) If an inventor is being deleted from an application because there was an error, he DOES NOT need to sign the reissue. The guy being deleted does NOT need to sign the reissue, I repeat.

23) What is NOT accorded with the date when sent by certified mail (1.81? or something) – Answer – Filing a CPA under 1.1xx (forgot) (d)! Key point is that it is FILING a CPA does not get the date when sent by certified mail! It gets the date when it is received. Other options included RCE, amendment.

That’s all I can remember for now. Please let me know if you have any questions.

I’m taking it again June 2nd. Hope the KSR questions aren’t too bad. Please post KSR questions if you can!

Thanks!

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394 zaoNo Gravatar May 24, 2011 at 5:59 pm

thanks Ben, it seems like we had a few questions in common. i took mine on april 26th and will retake it mid june. if you could reword questions 9, 11 and 17 would be great. i don’t think I understood the answers. i only had 2 questions on the new material, so I wonder if the new material involves mostly beta questions. anyways, good luck to you!

395 TommyBoyNo Gravatar May 20, 2011 at 3:39 pm

Has anybody had experience with the new test that was supposed to take effect on April 5th?

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396 BrettNo Gravatar May 24, 2011 at 2:37 pm

Thank you for putting together this website. I passed the exam yesterday. I never would have passed without this site. Much better than the commercial site for which I paid $400.

It is all kind of blur, but here are some questions.

1. Pick the proper multiple dependent claim. Right out of Chapeter 600, exact example given. One wrong choice was close but used the word “claims” instead of “claim” … or vice versa.
2. Foil wing question.
3. Pick the improper way to have an IDS considered after final rejection, answer “a”, all of the rest (correct responses) were longer and involved paying the issue fee and filing a continuation etc.
4. Section 112, para 1 question that says an applicant decribed the invention to show possesion (written desription satisfied), but showed how to use but not how to make. Answer I think was it was not enabled (goes to separate enablement and written description requirements).
5. inconsitant results does not mean necessarily that an invention is not obvious.
6. A publication after the date of invention can be used to support a sec. 102(f) rejection.
7. Copies of signatures are ok (I think) for all choices given (declarations, applications, credit card payments).
8. Pre- November 29, 2001, international filing 102(e) priority question.
9. In a PCT, a drawing was omitted, claimed priority (but did not say incorported by refrence) a provisional. Question of whether could submit the drawing. I do not think so unless incorporated by refrence (unless PCT is different than domestic applications).
10. A general purpose computer does not satisfy the means plus function, sec 112, para. 6 requirement.
11. Previous PCT question about no contracting state designated with filing. Many issues in this question; can the contracting state be faxed within 30 days, if so, when is the filing date, if so, when the 30 day deadline is on a weekend is it timely if the following Monday? I think I picked timely filed by fax on February 10, but I have not gone back and looked at the question (I’m pretty sure it is on here somewhere).
12. Rapidity of “inventions” can be evidence of ordinary skill in the art. The KSR supplement says “innovations” rather than “inventions” but I picked that answer.
13. PCT filed in Spanish, U.S. is not proper recieving office because not in English (one of the inventors was a U.S. National, so that part was ok.)
14. Something on sec 101 subject matter. I think the answer was to amend the claim so that there is a change or transformation.
15. Something on restriction, it is not proper if it would normally result in a double patenting rejection and would not require a search in different fields of art.
16. Something about it being possible for different claims in a patent to have different priority dates.
17. Repeat question, cancelled matter in an application is sec. 102(a) (not 102(e)) prior art as of the issue date of the patent.
18. An ex parte sec 102(g) rejection only requires actual reduction to practice and no abandonment, supression, or concealment (no patent filing or issuance is required).
19. A sec 131 Affidavit is proper to antedate a prior art patent that discloses but does not claim the subject matter (I think).

Overall, a lot of Chapters 600, 700, 1200, 1800, 2100, and 2200 (like everyone else has said).

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397 sgwNo Gravatar October 17, 2011 at 1:56 pm

I get #10 on 10/15/2010.
I could not found support for the question in MPEP. But I believe the question is at least partially related to the following case.
http://blog.eiplaw.com/2010/01/ex-parte-rodiguez-precedential-bpai.html

A mere statement software on the general computer is not sufficient. Algorism is needed for “corresponding structure” for 112P6.

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398 ohsoobviousNo Gravatar May 25, 2011 at 7:24 pm

On 5/18/11, I took the patent bar and I passed. Yay!!

I always promise myself that I’m going to post my thoughts (tripadvisor, yelp, etc) on my experience and then I get lazy and it never happens. But I have to stick to it in this case – I used this website extensively (thanks to creator and everyone). It’s longwinded, but hopefully helpful.

Background — Practicing patent litigation attorney w/ 5 years experience. Lots of pat law experience but no real familiarity with the nuts and bolts of prosecution/examination. Basically, I wasn’t a newbie, but I had plenty of work to do.

Facility — Took the test at the Prometric Center in San Diego, CA on Shoreham Place. Friendly, clean, prompt seating, helpful, computer speed good, noise-canceling earphones. Recommended.

Test Experience –was a little nervous about details so maybe this will clear a few things up for you:
-lockers were big enough to fit my small backpack and my lunch
-computer search speed was just fine
-search by chapter and it looks really similar to the PTO website downloadable version
-there is a clickable index of subheadings on the side (helpful) like PTO website download version
- can search by word or entire phrase with “match case” – time saver, but read surrounding context
-you’ll have plenty of time to understand how the system works (don’t do $35 test drive); the 15 minute test-specific tutorial is enough time to begin twiddling your thumbs or use as prep time
-my personal style: look up answers as I went along to avoid coming back to the universe of that fact pattern. works if you just stay mindful of your time. Had 10-15 to reconsider marked questions
-suggest just writing down “ABCDE” before you read the question cross out as you consider them
-have confidence that you will work out your own personal style

How I Studied/How I Wish I’d Studied
Materials were: online version of the MPEP Ed. 8 Rev. 8 & Bilski/112/KSR supps (downloaded from PTO website); A complete set of the old PLI materials (copyright 2006) with Patware 9.0 (MPEP Ed. 8 Rev. 4) purchased on the cheap on ebay; this website [ALL OF IT]; The Ultimate Patent Bar Study Guide by John Watts.

**Particular for the new test** Don’t stress about using slightly old materials (I did) if money is an issue for you. They still give you the same foundation and familiarity with repeats. Especially supplementing with this site and reading the new supp materials, it can be done. I took the tests on old software and just searched through Rev 8 MPEP downloaded onto my computer. Works like a charm and gets you ready for chapter by chapter searching on the exam anyway.

I went through the PLI course slowly, read the MPEP 1800, 2100 and Bilski/112/KSR supp materials. (I also read MPEP 100 entirely in my nervousness at the beginning – please don’t do this). =) Worked fine but I lingered thinking I would understand outside the context of exam questions, and lost time to adequately cover the old exams — doing only 2002/2003 once with a quick review later, reviewing the “new” questions once, and looking at a handful of April 2000 questions. I wish I had listened to the other 60,000plus people on this site that said: SPEND YOUR TIME DOING THE OLD EXAMS. Can’t comment on Ultimate Patent Bar Guide – didn’t have time to use.

Study Recommendation – you’ve read enough about this above. Aside from exams and other study materials, IMHO, there are some “must-read” materials in the MPEP — all of 2100, 1800, 1200 and just the table of contents for 100-800, 1300-1400, 2400. You won’t memorize them but you’ll know the answer is out there and where to find it. Note subheadings throughout each chapter are actually precise and helpful (especially in 700) — you’ll realize they are a realistic roadmap to find answers. There are some good flowcharts too (e.g., 102(e) flowcharts in 700, the Bilski flowchart in the supp materials). Do read the banter back and forth about the old/new exam questions. You’ll be happy you did cause some of those will be like old friends on your exam day.

Super-Heavily Tested on My Exam — Appeals (new grounds esp), PCT, and Obviousness. I had maybe one or two each of the new Bilski/112. When they came up, it was pretty obvious. 5-6 KSR obviousness questions – identifiable, a little harder. Morning was easier than the afternoon when I had to look up almost everything that wasn’t a repeat. About 15 repeats on each half.

Repeats (many!) I remember seeing:
“New” Question Repeats
Q12) 1.131 and 1.132 Affidavits
Q15) Spanish Phone – Design
Q16) Lip Gloss/Ship Bell (some kind of experimental use variant, same basic principle)
Q19) Mexican Nationals – PCT
Q25) Electric Fan (not w/ electric fan, but same basic principle – scale difference not an argument)
Q26) Maintenance Fee Paid / Check Returned
Q31) Chemical Claim (variant, I chose the answer with just the enablement rejection)
Q33) Indefinate Claim USing ‘High’
Q38) Piecemeal
Q50) Appeals (results of board decision on rejected vs. objected dependent claims)
Q51) Best Mode
Q62) 102 and 103 Rejections (variant)
Q64) Restriction
Q66) Claims
Q67) Obviousness (close variant)
Q68) Hydrocyclone
Old Exam Repeats
Q) Laurel, Abbot and Hardy (4.00.14a)
Q) Reexamination (4.00.47a)
Q) Federal Court Decisions binding for Office (4.00.19p)
Q) Prior Art (10.00.16a)
Q) 35 USC 112 p1 (10.02.8p) (a variant)
Q) Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
Q) Inert gas (4.03.30a)
Q) Board Decisions (4.03.37a)
Q) Bloc; Synthetic Z (10.03.7a)
Q) Five Steps to Cross a Road (10.03.23a)
Q) Late IDS when client knew about PA all along (10.03.34a)
Q) Moondust (10.03.6p)
Q) Foreign prior art date (10.03.40p)
Q) Toy Airplane with Foil Wings (10.03.46p)

New Questions – All a blur but I do remember a question about when can an appellant submit an additional brief during an appeal after examiner’s answer and reply.

Faith — My final comment is similar to Overworrked’s above. I realize that not everyone is spiritual. But I am so I want to give a shout out to my main support through this process: God. Remember that God really lives and can work in our lives. Put your faith in Him. Accept not only the love and support of your friends and family, but their prayers for you. You can pray for the things you need which God says He will provide in abundance, even if they seem trivial to you. You can pray for clarity and peace of mind. You can pray for focus, effective preparation, staying confident and grounded, and for stamina. God does hear all of us and has a relationship with each of us.

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399 mmmNo Gravatar May 31, 2011 at 2:06 pm

Thank you very much for your insight…i was wondering if you knew if the answers for the beta questions (meaning “all answers accepted”) are already worked into your preliminary score?

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400 RobbieNo Gravatar May 31, 2011 at 5:58 pm

mmm – I have the same question as you. Anybody know if a preliminary score includes beta questions?

401 ElwynNo Gravatar June 1, 2011 at 9:48 pm

Congratulations on passing!

About how many hours did you spend going over old exams?

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402 zaoNo Gravatar May 31, 2011 at 6:32 pm

beta questions are not counted at all so it doesn’t matter if you get them right. your score percentage is your real score not including beta questions

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403 JamesNo Gravatar June 1, 2011 at 4:00 pm

Could someone please tell me what you have to do if you don’t pass the first time? Do you wait 30 days or 60 days? Do you have to go through the PTO again or just sign up on Prometric and pay the $150?

I’m trying to time my exam so I can take it a second time if necessary before my 95 days runs out.

Thanks to everyone on this site for all the helpful information.

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404 GeoNo Gravatar June 1, 2011 at 9:27 pm

You get a crack every 30 days. Yes you’ll need to re-submit paperwork to the USPTO using the same previous application (but you check different boxes since your paperwork should already be on-file) and pay the $150 to Prometric again. Then you gift the USPTO another couple hundred once you pass.

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405 SaskiaNo Gravatar June 4, 2011 at 12:24 pm

I have a question about jobs rather than about the patent bar.

I’ve been thinking about taking the patent bar but have noticed that there don’t seem to be any entry-level jobs for patent attorneys or agents. Looks like all the jobs want at least a year and mostly 2 or more years of experience, even if you also have an advanced degree.

Have any of you found a way to get a job without experience or get experience without a job? Or is this a field that is saturated now?

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406 JJ64N7No Gravatar June 5, 2011 at 8:36 pm

A bachelors degree is just not enough when you are competing with those who have a advanced degrees with solid technical backgrounds.

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407 SaskiaNo Gravatar June 7, 2011 at 8:11 pm

Right — that’s why I said you have to have at least a year of experience . . . even if you also have an ADVANCED degree.

But I’m not talking about competing — I’m talking about are there ANY entry level jobs to compete for?

408 BenNo Gravatar June 4, 2011 at 10:25 pm

Hey Zao,

I passed on 06/02/11!!! (prelim of course)

Questions I remember:
Broom
Bloc – Cancer
Tommie and Jo (both)

A few KSR-type/obviousness questions. A few 101 questions – I chose E) for one of them which said something like use a computer for a very specific process.

A few 102 (a), (b) (d) (e) questions.

Sorry I can’t remember more, it’s all a blur.

Good luck to all!

P.S. I went to DC and it was immensely helpful. There were probably 20 repeats from the questions I got wrong from my first try, which probably took me over the 70% pass level.

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409 DougNo Gravatar June 4, 2011 at 11:52 pm

Ben, I am taking the test in a couple of days! do you remember any of the PCT questions??? That is one section I am most worried about.

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410 BenNo Gravatar June 6, 2011 at 9:56 pm

I think I remember one of them the answer being April 11, 2005 or something. The other option was April 10th, but you don’t get the date until all the correct info (name, documents) are sent in.

There were the typical January 5th 2001 type questions also.

411 zaoNo Gravatar June 6, 2011 at 12:35 pm

Congratulations Ben, I am happy for you, I hope I pass on my second try as well and that I see some of the same questions I had previously. I also went to DC to check what I got wrong. People can find those questions above under my name. I am really worried abt the new material since I only had 2 questions on that on my first try. Please if you remember what kind of questions you had on that let me know. I am taking the exam in a few days and I am really worried abt it. I haven’t studied as much for this time around due to some personal matters and I feel like I am not prepared. Anyways, good luck to all.

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412 JimmyNo Gravatar June 5, 2011 at 12:52 am

Hello – just wanted to give some general advice after failing by a few questions today (6/4/11).

For those of you who have been using the new PLI course, don’t go too crazy on the Bilski and KSR supplemental materials and prep questions. I literally had ZERO Bilski questions, and maybe 1 KSR obviousness-type question that just required you to know that the TSM test is not required anymore for a finding of obviousness. Take the time to focus on past questions — that’s what will get you a passing grade.

It’s hard to remember specifics, but I must have seen at least 5 obscure fax questions (when accepted, when considered filed, etc.), a question about when a photocopy signature can be accepted, when can a supplemental oath or declaration be considered an amendment (anyone know what that is?), some different scenarios about filing an IDS after or before a filing fee is paid, a question about what an examiner will do after the BPAI affirms rejection of all claims and issues a new ground for rejection at the same time, assuming the patentee amends the claims in view of the new ground of rejection and it overcomes both the new ground and the original affirmed ground of rejection (who does this), many PCT questions about U.S. filings and what date is considered the international filing date if certain app items are initially omitted, what rights does a non-signing inventor have, a series of reissue/reexam, etc.

Of course, every test is different. But, for me, the PLI emphasis on new mateirals really misses the mark. Nothing similar at all on their sample KSR/Bilski/112 materials.

Good luck.

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413 JakeNo Gravatar June 5, 2011 at 11:25 am

Just to follow-up, it looks like the poster “zao” and I got the same (or very similar) crappy exam. I agree with him — PLI was a big fail for this one. He has a much better memory than I do.

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414 zaoNo Gravatar June 6, 2011 at 12:58 pm

BTW I am a female :) not a him :) good luck to all

415 zaoNo Gravatar June 6, 2011 at 12:52 pm

a supplemental oath or declaration is considered an amendment in a reissue

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416 JimmyNo Gravatar June 7, 2011 at 5:31 pm

Cool – thanks for your response!

417 ThatGuyNo Gravatar June 5, 2011 at 2:12 pm

Fellow brothers and sisters of my future Pat Bar club

Preliminary Passed on the first try last week.

Repeats – lots. I am not going to reiterate what they were b/c first I don’t remember and second you are probably best served to go over all the old questions since 2000. The fact that PTO still recycle them on the current test should make it abundantly clear it reward people that spend labor on these tests. So Do them all,and go through them painstakingly. But I will say repeats probably were 30-40% of my exam, at most. So only know repeats is not enough, and you still need to learn the MPEP for the order 30-40 questions in order to pass. Here is how I did it

My road to pass -
Background: Know patent law from law school, had some exposure to prosecution but just limited to simple concepts.

Time spent to study – around 100 hours. I had a two week vacation, well not much a vacation since I spent 8 hours a day for good 10 days studying for the patbar. Then spent next 10 days 3 hours a day taking old exams and come here.

Material used – Since my time is limited so I didn’t follow any prescribed commercial pat bar routines. As a result, I didn’t spend whole a lot money and it worked out. But keep in mind I did know the case law pretty well. Anyways, if you are in the same boat as I was, here is what I recommend
1) The bullseye package outline – $30. Nicely done. Condensed MPEP esstentially, but critical stuff are picked out, I think, based on the contents of past exams. I read the MPEP in details for the stuff in that outline. I didn’t waste time doing my own condensed outline, do not recommend either. The bullseye is pretty good and I think the author is a practitioner and clearly knows what he was writing about.
2) The MPEP – Free. I spend a good chunk of time reading MPEP. I think this was critical to my pass. For obvious reasons, familiarity to MPEP is crucial, but you also have to realize it’s impossible to know it all w/i limited amount time. Again, get a commercial outline like bullseye or barbri, read them in conjunction w/ MPEP

3) A good PDF annotator. Now I think this was actually critical. I don’t think it’s economical or practical to print out the entire MPEP for study. Instead I used a good pdf annotator, noting and highlighting along the way while I read MPEP. I think you do need to put the MPEP language into your own words after you read it b/c its rule likeness is not intended for people to learn. Get a good pdf annotator. Adobe Reader X has rudimentary note taking and highlighting functions but very limited. PDF annotator is a good, cost effective tool for this purpose. If you have a little bit money to shell out since you are skipping PLI or Barbri, I highly recommend bluebeam revu pdf creator, just perfect for this purpose. Acrobat Pro is another choice but it does cost $400 or more.

4) Ira Donner’s treatise on Patent Prosecution – This was very useful. Again, since the MPEP has a lot of fluff for completeness sake, it’s not the best tool for learning. I kept Donner’s treatise handy while reading MPEP. I looked it up whenever I get lost by MPEP. The beauty of Donner’s book is it describes nuts and bolts of patent prosecution in a very concise and easy to understand way, unlike the MPEP. I even recommend this book to anyone w/o any experience in patent law and getting exposed to it first time right now. Read Donner’s book on major topics like reexamination, appeal, reissue etc first, very easy to understand and gives you a good overview for what’s going on there. Now the latest volume of Donner’s book is the 2011 edition which cost around $500, which is a bit steep. But you can easily find older editions are being sold for discounted rate online b/c of the latest version. I picked up a brand new 2007 edition (2 volume sets w/ 3000 pages and CD) for only $65. Although it is dated, it has pretty much the essentials current to the Patent bar except KSR, Bilski, etc. You can live w/ that. This book definitely has reference value after you become a practitioner, so I think you should get it.

4) Chisum on patent law – This is the leading treatise on patent law and has nice chapters on PTO procedures, reissue, reexam, protest, etc. Donald Chisum gives a nice historical perspectives on these issues and thus provide you a more complete picture about how and why things are what they are than the MPEP. Again, this is a nice supplement to MPEP. If you have access to a law library, read those chapter for one afternoon, It’s available on lexis as well.

So I didn’t spend less than $100 for the study, but I think my understanding of MPEP should be solid nonetheless. My goal wasn’t only to pass the MPEP, but also try to mater it for the career.

A few tips -
Just like the real bar exam, it is impossible to know everything. You will encounter questions real time that you never read in the MPEP. The best you can do is to make educated and principled choices when you see them and here some few tips

1) KSR obviousness standard – I have had the S.Ct opinion in my patent law class, wrote a paper about it, and I still don’t know what exactly the guidance is. The point is that don’t worry if you have trouble with the KSR update document. I read it once and I forgot them all on the day of exam. This is what you need to know about KSR
Combining Known elements using known method producing predictable result is obvious. The perspective is from PHOSITA at the time time of invention. This is what is called the common-sense obviousness standard

102 stuff
102a v. 102b – the critical date for 102a is the invention date and for 102b is one year prior to the effective filing. Therefore 131 swearing behind only applies to 102a not 102b, b/c what’s swearing back is the invention date, which has not effect to 102b. 102b includes inventor’s activity while 102a doesn’t. This is all. If you ever see 131 being used to overcome 102b in an answer choice, cross it out. Think it as a gift from PTO.

102d v. 102e – 102d is inventor’s own patents in a foreign country and 102e is other’s patent and patent application. 102d has 4 requirements. 102e covers secret patent application filed before the application in question via case law. These should be easy stuff and yet seems PTO test the distinction over and over again in multiple questions on the exam. Get it right, and these are gifts from the PTO as well.

Reissue – Remember after the patent is issued, public is relying on what’s not claimed so the attempt to broaden issued patent is restricted. OTOH, narrowing reissuing is not restricted.

Reexam, TP submission – The US patent prosecution system is ex parte, meaning no third party adverisary is presented in the process, it’s only between the examiner and the applicant. Therefore, if third party request reexam or submit information, there are a number of restraints, like serving the patentee, time limit in TP submission, and PTO is not required to act etc.

This is a winded post. I hope this helps. Lastly for those litigators out there, a caveat — the MPEP law is not real patent law, so don’t rely on your understanding of enablement, obviousessness, 101 patentbility, novelty. Read the 2100 on these, you might find some points are inconsistent or incomplete with current case law, like I did, but hey you will be tested on the MPEP law, so you’d better know what they are even if they are wrong.

Wish you a good luck!

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418 Recent JDNo Gravatar June 6, 2011 at 6:25 pm

T-Guy,

Thanks for sharing your insight. Your explanations of differences between 102(a)/(b) and (d)/(e) were about the best I’ve ever seen!

I’m retaking on Thurs, so doubt I’ll have time to get Donner, but have been focused on previous tests and especially the other questions on this site. Had I known them better last year, I would only be studying for the bar instead of planning to take this before hitting bar prep.

8-)

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419 ThatGuyNo Gravatar June 6, 2011 at 9:24 pm

Focus on old exams. The 2003 Oct one is the most important one.
Bring the old exams to the test, read them before the test and during one hour break. Mark down the repeats mentioned on this site on a paper. Bring it. You won’t have internet access then. ;)

420 Sarah W.No Gravatar June 6, 2011 at 3:15 pm

FOR SALE:

The PatBar home study kit, version 8.8, with PatWare software! Everything like new, no hi-lighting! The software was a HUGE help in studying, and the textbooks summarized the MPEP in a way that was easy to understand, as well as put emphasis on the right chapters.

I bought this NEW for 600, asking 400 OBO. You will have a hard time finding a used set that covers the new material, which is the reason I bought it new.

I’m completely broke right now, as I’m having a hard time finding work with my recent certification in Houston, so please reasonable offers only.

Email me at mewpal@gmail.com

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421 DougNo Gravatar June 6, 2011 at 4:37 pm

Just got back from the test…. Preliminary PASS!!! (6/6/11)
First try, thanks to this website.

I am having trouble remembering what questions were on the test…. I know there were a lot of repeats.

Here is how I studied… First of all, I just took my Patent Law class this past semester, that helped out a lot. However, this site was the most helpful. The most important thing to do is take the 2003 tests. That is where the majority of the questions come from. Second, I did the 2002, but not as in depth as the 2003. The past 2 days I spent about 10-12 hrs a day going over the tests and reviewing the repeat questions.

The most important part about the repeat questions is to know them front and back, if you do them 3-4 times you wont even have to think about the answer when you see it on the test. Also, this will allow you to manage your time better.

I looked at the test this way, if the repeat questions were 30 of the questions (which they easily are) then you only have to get 35/70… that reduces your percentage that you have to get correct to only 50%. In addition, if you can spot the repeats easily, you will only take at most 30 seconds for each question. Thus, you can spend the time gained on each repeat looking up other questions. Thus, know all of the repeats since it is random which ones come up in the tests.

PCT/Appeal were tested about as expected (probably 20-30 questions between both subjects)

Good luck to you all!

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422 GregoryNo Gravatar June 8, 2011 at 1:35 pm

took the patent bar on 6/3/2011 and got a 65%. I studied pretty hard (could have done a few more questions and read the MPEP in more detail). I got the

1) combination/subcomination question
2) a few PCT questions regarding dates and filing dates,
3) a tricky question about converting a non-provisional patent to a provisional patent when the owner finds out they don’t have a claim
4) A LOT OF obvious questions, KSR related
5) some repeats, but NOT a lot! I wish there was more!

If you fail, you find out at the end of the test. They tell you your percent (below 70% is not passing).

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423 GregoryNo Gravatar June 8, 2011 at 1:37 pm

one more thing to add, on 6/3/2011 THERE WERE A LOT OF APPEAL questions. It seemed they asked the same question in varying ways, basically what happens when the board holds a rejection and doesn’t hold a rejection. How can the practioner reply? What claims can they amend? Change to indepent claims.

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424 Recent JDNo Gravatar June 8, 2011 at 1:46 pm

Gregory,
Sorry to hear about your near pass. Same thing happened to me (and many others). I’m retaking tomorrow–trying to get in as many questions as possible.

It’s interesting how some folks get lots of appeal/PCT questions and others don’t. I recall getting lots of Qs similar to your description.

I’ve always wondered if the system that assigns the test recognizes when someone is retaking it and factors that into the choice of test you’ll get. Will it consciously try to avoid giving you the same questions?

Hopefully my memory will be intact and I’ll be able to report in my results.

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425 SuradianiNo Gravatar June 8, 2011 at 11:06 pm

I am planing to take the exam in the second week of July. Thanks for putting together this website, a REAL PREP STUFF is in here. Would like to bring to your notice that Q43 – Q48 are missing in the Exam questions and concept section. Is it just a missed numbering ?

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426 Recent JDNo Gravatar June 9, 2011 at 9:49 am

For those of you looking for other lists of recently asked questions, check out Zebrafish’s posts from 1 Apr 11 under Q27) Reissue (variant of Tommie and Jo).
He or she had great recall of the test.

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427 New P AttorneyNo Gravatar June 10, 2011 at 7:08 pm

Took and passed the patent exam yesterday. Thank you all for your helpful comments and discussions. I will post anything about the exam that comes to mind.

I noticed only a handful of new question pertaining to the changes to the obviousness standard and section 101. My advice would be to find a summary of the rule changes online and just be familiar with the broad concepts. In other words, teaching, suggestion, motivation, are no longer the only consideration for an obviousness considerations. There are additional factual considerations that are taken into account. Also, if an invention has some useful feature aside from it being just an abstract idea, it does not have to be tide to a machine for it to satisfy the section 101 utility requirement.

One particular problem that I recall was about a Signal which is encoded and is processed and encrypted. I skimmed through the supplemental material and did a search from which I concluded that a Signal is not patentable material whether it is encoded or encrypted. I chose that answer which rendered it nonuseful.

On my particular exam there were a lot of new questions, however they were testing the same concepts tested on the old exams of 2001,2002, 2003.

previously mentioned problem on my exam included:

Moon Dust
Jo and Tommie
Graham factors
Reissue after payment of issue fee

I will try to post more later as I remember more. I am sure question on here will trigger my memory further.

Good luck to all!

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428 zaoNo Gravatar June 12, 2011 at 10:49 pm

I am confused as to where one can claim priority. I found that domestic priority can be claimed in the first sentence of spec and ADS. Foreign priority can be claimed in ADS or oath/declaration.
Does anybody know if you can claim domestic priority in oath/declaration? Also can you claim foreign priority in first sentence of spec?
Please correct me if i am wrong. thanks

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429 samNo Gravatar June 13, 2011 at 3:05 pm

Does anyone know where I can find a summary of the new material? Thanks.

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430 pk335No Gravatar June 14, 2011 at 11:15 am

Hi!
I’m taking the exam tomorrow. I’m a little confused about the new material involving KSR. What are the main points of the new material?
Will the questions still be beta questions regarding these new material?

Your help would be greatly appreciated!

Thanks!

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431 Vickie CNo Gravatar June 14, 2011 at 9:26 pm

I took the test yesterday and passed! Thank you everyone who has put information up on this site, it was very helpful! And now I will do my part…

I spent a lot of my time looking through 2100 when answering questions. Also, there were quite a few questions on appeals. For example, one question stated that an application included claims 1-10, of those claims 1-6 were rejected and 7-10 were objected to as having allowable subject matter, but depending on a rejected claim. The applicant appealed and the board affirmed the examiner’s rejection. The applicant did nothing further in the 2-month window of time allowed. What happens to the application? The answer options were along the lines of the app goes abandoned, the rejected claims are cancelled and the objected claims are rewritten as independent and issued, and some others. I believe the correct answer is that the app goes abandoned. The very next question had the same scenario, but also included claims 11-15 which were allowed in the office action. What happens after the board affirms the examiner’s rejection? The Examiner cancels claims 1-10 and issues claims 11-15. Small difference, but the situations cause different courses of action. I think I also remember a question that invovled the board issuing a new ground of rejection and what to do then.

I only got a few questions regarding the new KSR material. For example, an examiner gave a 103 rejection stating the claims were prima facie obvious. What was a proper arguement to the examiner to overcome the rejection (i think it might’ve also said “without amending the claims” and “in light of KSR”). The answer was to argue that the Examiner did not provide a proper rationale for his case. Another question involved prior art used in 103 – nonanalogous prior art cannot be used because, to rely on a reference under 103, it must be analogous. However, if prior art in a different field of applican’s endeavor would’ve logically commended itself to the inventor’s attention, it may be reasonably pertinent (and thus usable under 103). I think I searched in the new reference materials once for an answer.

It seems they really want to trick you on using 103 arguments for a 102 rejection – make sure to take note of which is used in the question, because you can usually quickly eliminate answer choices if it’s 102 (no antedating 131 affidavits, doesn’t matter if it’s nonanalogous art or made any kind of teaching away suggestions).

Some other questions involved 131 and 132 affidavits, who can sign what if an inventor is dead or refuses (which may be different if it’s a sole inventor or joint inventors, so take note), what needs a real signature (as opposed to just a copy or no signature at all, like a notice of appeal), the Tommy and Jo one listed on this site, the moon dust one listed on this site, lots on certificate of mailing and, in particular, if the application/appeal/PCT was filed on time based on what method was used to file it and when (remember no faxing an application or fees for national stage entry), filing date requirements (what’s the filing date when this piece of the app is filed on this day and this piece of the app is filed on this day etc.).

Also, someone posted on one of these boards a nice little summary about 102(e) dates for apps based off of PCT applications. Know that! Basically, if it’s after Nov. 29, 2000, it’s the earliest effective US filing date, which can be the PCT filing date if the PCT was published in english, or the national stage entry date if the PCT was not published in english.

One more tip – practice figuring out key words in the questions/answers to use as your “find” words when you search through the MPEP. Sometimes examples are stated verbatim from the MPEP, so searching a word from the example will bring you right to the spot you need. They also are sneaky about supplying answer choices that are ALMOST verbatim, like the entire sentence is the same except the word “earlier” is switched to “later”, so be careful on those.

Sorry for the novel. Good luck to everyone taking the exam and thanks again to all those who helped make this website!

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432 ElwynNo Gravatar June 16, 2011 at 1:56 pm

I’ve been planning to take the patent bar but after seeing Saskia’s post I did some research and he’s right: there are NO entry level jobs listed even if you have an advanced degree! Is there any point in spending the time and money to take the patent bar now?

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433 xrayNo Gravatar June 22, 2011 at 5:21 am

Here is one question I remembered from the exam (June 2011):

An application has a first rejection on claim 1 , but no response is filed and a CIP is created which includes the the rejected claim. The claim is again rejected, is this a final or first rejection?

There might have been a variant on this as well which I chose abandoned, for intentional delay.

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434 BigBadVoodoDaddyNo Gravatar June 22, 2011 at 11:00 am

Conceptual question regarding publication of CPA.

If I understand it correctly, CPAs are only applicable for design apps since July 2003. Hence when I see publications based on the 18th month rule specifying CPAs – they necessarily mean CPAs of utility and plants which were filed before May 2000 – since if it is a CPA of a design application, it will not be published. This is based on the fact that design applications are not published. Could anyone clarify.
thank you

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435 ElizabethNo Gravatar June 23, 2011 at 12:27 pm

For those of you looking for jobs – I’m at a small firm where new patent attorneys have been hired. The most recent has a Ph.D. in a life sciences area, and graduated top of his class from a good law school. He interned with us for a very small hourly wage while in law school. He also speaks a foreign language. His hiring salary wasn’t what people used to be able to get. The competition is TOUGH.
That said, have you thought about applying at the patent office to be an examiner? That kind of experience is invaluable and may help you land your dream job after a few years. Good luck!
Elizabeth

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436 ElwynNo Gravatar June 27, 2011 at 1:40 pm

There is and has been for some time a hiring freeze at the PTO. The planned satellite office in Detroit has been put on hold indefinitely. IF Congress releases any funds, the PTO may start hiring again, but there is no certainty that this will occur.

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437 AnnikaNo Gravatar June 27, 2011 at 2:41 pm

Thanks for the post, Elizabeth, but you may have been out of the job search group for awhile and haven’t been watching the PTO employment listings. Unfortunately, Elwyn is correct — there haven’t been any examiner job listings on either the PTO web site or USAjobs for a long time. PTO examiners used to stay for a year or so then leave for private practice, making way for a new wave of attorneys to become examiners, get experience, and move on. Now that private firms aren’t hiring, examiners are staying put. Thus, no jobs at the PTO!

438 ElizabethNo Gravatar July 16, 2011 at 6:37 pm

I just passed the exam on June 30th, my name isn’t even posted in the Official Gazette yet for the comment period, and I got a letter from a headhunter with a listing of jobs for patent professionals. I don’t even know how they know I passed the bar. I’m in New Jersey and have a Ph.D. in Chemistry, but I don’t know if that made a difference to them or not.
Have the people posting here looking for work tried using headhunters?

439 ElwynNo Gravatar June 27, 2011 at 1:43 pm

By the way, what firm are you at?

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440 ElizabethNo Gravatar June 27, 2011 at 2:32 pm

Hopefully the patent reform that just passed both the senate and house will alleviate that situation. Supposedly the PTO gets to keep the funds it generates and use them for patent work instead of having them go into the general fund.
I’m at GL Law in New Jersey, a very small firm.
Good luck to you in your job search,
Elizabeth

441 BigBadVoodoDaddyNo Gravatar June 29, 2011 at 12:03 pm

2002 April – PM: Q 3When filing a reissue application in November 2001 for the purpose of expanding
the scope of the original patent claims, which of the following would not be in
accordance with the USPTO rules of practice and procedure?
(A) The specification, including the claims, of the patent for which reissue is
requested, must be furnished in the form of a copy of the printed patent, in
double column format, each page on only one side of a single sheet of
paper.
(B) Applicant’s intent to broaden the scope of the claims can be made known
in a reissue application filed within 2 years of the patent grant date by
presenting in the application when filed new or amended claims.
(C) Any amendments made to the original patent by physically incorporating
the changes within the specification or by way of a preliminary
amendment must comply with the revised amendment practice of 37 CFR
1.121(b) and (c) and include appropriate “clean” and “marked-up”
versions of the paragraphs or claims being amended.
(D) Applicant’s intent to broaden the scope of the claims can be made in a
reissue application filed within 2 years of the patent grant date by
specifying in the reissue declaration as one of the errors on which the
reissue is based is that applicant claimed less than he had a right to claim.
(E) None of the above.

The model answer says that C is the right answer – I agree with that one.

But choice D – as stated in 1412.03 IV is definitely incorrect too.
As to choice B – it is ambiguous in my mind when they say “application” I assume they mean reissue application, but this is minor.

Any comments on choice D and/or remarks.
thx

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442 wenabbyNo Gravatar June 29, 2011 at 11:18 pm

1412.03 IV: A statement that “the patent is wholly or partly inoperative by reason of claiming more or less than applicant had a right to claim” is NOT an unequivocal statement of an intent to broaden. Thus “claiming less than applicant had a right to claim” (answer D) FALLS INTO the “intent to broaden”. Therefore, D would be a correct statement.

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443 BigBadVoodoDaddyNo Gravatar June 29, 2011 at 11:58 pm

Got it – the word LESS being the operative word here.
thx

444 AshwinNo Gravatar July 8, 2011 at 5:05 pm

I took the test yesterday – 7/7/2011 and passed! It was my second try (got a 69% my first time) so needless to say I am very happy.

A few questions on KSR/Bilski. Tons of PCT questions and a lot of new repeats and 5-6 questions from the 2003 exams.

Here is a new question – OUTSOURCING TO INDIA. All except one answer choice talks about foreign filing licenses. Statement 4 says – FFL does not apply to technology transfer to other country for preparing a patent application and may be a violation of US export laws. So I think that is the right answer and the one I picked.

Good luck to everybody and thanks for this wonderful website.

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445 BoNo Gravatar July 10, 2011 at 3:39 pm

Thanks for the info. I’ve found reference to FFLs and export controls online, just as you mentioned (think you answered correctly too). I can’t find it in the MPEP though.

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446 pratikNo Gravatar March 8, 2012 at 8:13 pm

MPEP 140:
Note that the export of subject matter abroad
for purposes not related to foreign filing of a patent
application, such as preparing an application in a foreign country for subsequent filing in the USPTO is not
covered by any license from the USPTO. Applicants
are directed to the Bureau of Industry of Security at
the Department of Commerce for the appropriate
clearances.<

447 PatentGrrlNo Gravatar July 3, 2012 at 6:19 pm

However:

“The license from the Commissioner for Patents referred to in paragraph (a) would also authorize the export of technical data abroad for purposes relating to the preparation, filing or possible filing and prosecution of a foreign patent application without separately complying with the regulations contained in 22 CFR parts 121 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts 730-774 (Regulations of the Bureau of Industry and Security, Department of Commerce) and 10 CFR part 810 (Foreign Atomic Energy Programs of the Department of Energy).”

448 PBNo Gravatar July 10, 2011 at 5:11 pm

Preliminary Pass today.
I was surprised by how few questions appear in regard to the new reference documents (Bilski, KSR etc.), around 3-4. Maybe this is because how terrible my memory is. Anyway, remember the “common-sense” obviousness is the blackletter rule for KSR and M-T test includes 1) embodiment and 2) transform to another state. The teaching points in KSR and flowchart in Bilski are important to understand these two concepts.

the repeats I can remember are
moondust
foil wing
equivalence
examiner’s statement
new ground of rejection
rule 41.7

new questions
1, India outsource (see below)
2. requirement for disclosure (except question): wrong choices includes chemical formula is required for a compound claim, “any” person with ordinary skill, and else. I choose another with “ordinary skill”

I will supplement my post if any of them come back.

I did have the outsource question, with which I did come out with a different answer after searching 100. The question is about outsourcing patent preparation in India, to which FFL is relevant, so my answer varies from the previous post.
I could be wrong on this, but search keyword ” preparation,” then you may find a paragraph about the preparation of patent outside U.S.

Read Zao and Ben’s question summaries in the morning , which are priceless. A big” thank you’ to both of you, and all the others who have contributed to this website.

Good luck!

P.S. Let me know if you need PLI study package.

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449 wenabbyNo Gravatar July 11, 2011 at 7:34 pm

PB, Congrats!
Could you post the answer you think is correct for the ‘Inida Outsource’ question?
How many repeats approximately (20s, 30s?) did you get? Thanks!

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450 xrayNo Gravatar July 11, 2011 at 9:10 pm

I disagree with the India statement here. A foreign license is just as it says: for foreign use and to protect national interests. I believe there is even an entire dictum on the USPTO website frowning on external patent preparation.

451 BoNo Gravatar July 12, 2011 at 11:27 am

There’s this part in 140:
(c)Where technical data in the form of a patent application, or in any form, are being exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, without the license from the Commissioner for Patents referred to in paragraphs (a) or (b) of this section, or on an invention not made in the United States, the export regulations contained in 22 CFR parts 120 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts 730-774 (Bureau of Industry and Security Regulations, Department of Commerce) and 10 CFR part 810 (Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy) must be complied with unless a license is not required because a United States application was on file at the time of export for at least six months without a secrecy order under § 5.2 being placed thereon. The term “exported” means export as it is defined in 22 CFR part 120, 15 CFR part 734 and activities covered by 10 CFR part 810.<
I guess the thing is preparation of a foreign application vs preparation of a US application. There's this notice from the PTO:
In a recent notice, the PTO has indicated that it may be illegal to outsource invention information to a foreign county for the purposes preparing a US patent application.
1.A foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.
2.Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.

The exact wording of the India question might help.

452 PBNo Gravatar July 12, 2011 at 4:57 pm

Recall more detail about the outsourcing question.

One Delaware corp. intends to have an India law firm to prepare the patent application in USPTO for a competitive price. The question is what is the relevant provision to such outsourcing.

As Bo pointed out, FFL is relevant, so I chose a combination of answers which are right about FFL.

Btw, Bo, are you JB from G?

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453 BobNo Gravatar August 3, 2011 at 2:23 am

I also had the outsourcing question on 8/2/11. I choose the same answer as PB.

454 RBNo Gravatar July 13, 2011 at 4:58 pm

do you still have the PLI study package?

Thanks

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455 PBNo Gravatar July 13, 2011 at 10:19 pm

Yes, shoot me a email at patentagent2011@gmail.com. Thanks

456 zanNo Gravatar July 10, 2011 at 9:51 pm

where are zao and ben’s question summaries? I’m new to this site…

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457 BigBadVoodoDaddyNo Gravatar July 18, 2011 at 4:26 pm

Took the test and passed on the first try last week. Thank you to all the people on this website that have posted. I’ll be posting some other new questions/repeats that I encountered in a separate blurb. I was starting fresh to prepare for the patent bar – about 5 months ago. Everybody is different. So briefly about me – since it may help people similar to me prepare. I have an advanced degree- but no background in law, a very pregnant wife and a house. I also work full-time at a very challenging job with a startup and commute 3 hours roundtrip everyday for work. In the meantime I also have a few issued patents as an inventor – which really sparked me into taking this exam. So it was very challenging to say the least. Total time to prepare: 5 months. I started by taking a few sample questions. But I quickly found out that I was not ready. In general – I like to understand what I am doing. So I changed my strategy to suit. The study materials I used were the MPEP (I actually used it – very religiously), the PLI home study course (bought used), and this blog (I spent the last few weeks actually understanding all the discussions of all the new questions, and some of the repeats) I followed a general plan as follows: I spent 2 months reading the actual MPEP – chapters 2100, 700 first – quite intensly. I followed this by reading through (very lightly) chapters 600,800 and 1800 – these are quite dense, and don’t worry about keeping all the details in mind. What I found was that if you read the first few pages of each chapter, you have a really good feel for whats in it and it feels familiar the next time you visit it. In the meantime I would take 10-20 questions from the patware CD on the same chapters every day, creating some customized tests. On my drive to work every day I would listen to the John white lectures for about 2 hours – never more, since you can get saturated really quickly. After about 2 months of this – I was pretty familiar with the entire process and the kind of questions and felt good about atleast understanding what the whole process and logic was all about. After this I kept reading up on the MPEP, but I switched gears to focus more on the test questions. Every weekend I would take a 3 hour test on a Saturday and follow it up with the answers and the explanations on Sunday. After work during the week I would spend 2 days doing the same, and reading up on the rest of the days. I started with the 2003 tests and went all the way to 1999. It started slowly, I did not do well initially but by the time I got around to the 2000 tests, I was passing. I spent 2 months taking all the tests. In the meantime I would squeeze in other PLI tests and really research topics I was weak on. In the last month I really started reading this blog very intensely. Reading all the questions (new ones) makes your test really familiar. Once again – I can’t emphasize it enough and can’t thank all the contributors enough. John white’s lectures on PLI are very good, however those tests and materials will not help you pass by themselves. Read all the new questions on this blog – it bears repeating. I started posting too – quite fearlessly, just writing it up gets your thoughts cleared up. For the last month – and in my mind the most critical month – it was very important not to let up. So I revised – as in re-took all the old tests, at the rate of one a day. I also addressed all the wrong questions of other tests I had taken in the past. In the last 5 days – I revised the 2003 tests, and revised the entire mypatentbar blog of new questions. This really really helps. Also regarding notes: I started by noting everything I thought was important, but what I ended up doing was writing down the learning points of the questions as and when I went along – that way I could read my own notes, even if the topics were not contiguous and organized, all the valuable nuggets would stick as I went along. I also kept a paper copy grid of my answers so I made notes on it as I went along and could revise it. Took 4 days off work in the last week to prepare full time. But hang in and persevere – even with crazy schedules and things, if you put in your hours and be smart about it, you can definitely pass it. I hope my long essay works for others here. Good luck.

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458 melanieNo Gravatar July 19, 2011 at 11:28 am

Looking at April 12, 2000PM question 15, option D is not an acceptable multiple dependent claim form (Claim 4. A machine according to claim 3 or 4, also comprising….). A claim cannot depend upon itself. Options A, B, and C are correct. So E cannot be correct because D is not correct. The answer key lists E. Agree?

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459 zanNo Gravatar July 19, 2011 at 8:13 pm

BigBadVoodoDaddy, do you recommend reviewing all of the questions on past exams or would knowing and understanding the repeats be sufficient?

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460 BigBadVoodoDaddyNo Gravatar July 20, 2011 at 3:50 pm

Zan – do all the questions. More because a lot of the new questions still test the same topics, except in a different form. Also – in addition to the answer key published, look up all the referenced MPEP sections in the most recent version – that way you can figure out some of the rules that have changed (keep an eye for the changes in the appeal rules) and this also helps you in looking up the answers in the right sections. For older tests, such as 2000 or 1999 (even some 2001 or 2003 qs), dont worry too much about questions that are dated, as long as you understand. Short answer – yes yes yes, do the questions and repeat them. I would go through the second phase, and learn things i had missed in the first go around. It is very tough to redo questions, but do it until you cant. On test day you’ll be glad you did.
Good luck.

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461 BigBadVoodoDaddyNo Gravatar July 23, 2011 at 11:39 pm

There were a bunch of the new questions listed on this site. Apart from that I ran into a few new ones, which I’ve listed here (others have also listed variants of some of them elsewhere on this site)

A question about obviousness, where the call of the question was , which was incorrect. The answer was – where the rejection was based on KSR and neglecting TSM.

102 (f) question – looked this one up in the MPEP. The answer is the one where it states: 35 U.S.C. 102(f) does not require an inquiry into the relative dates of a reference and the application, and therefore may be applicable where subsections (a) and (e) are not available for references having an effective date subsequent to the effective date of the application being examined. Beware of this question, one other choice stating something out of the MPEP but with a minor change which can be misleading.

Marionette – this was an obviousness question. The question read something like there were 6 strings on a handle for purpose X. The examiner found prior art ( a French patent) from many years ago showing the same structure but no purpose was stated. The practitioner responds by saying that there was no purpose, and hence no utility etc. The call of the question was whether the examiner should maintain the rejection. 4 choices said no and 1 choice said yes (the answer). This one is similar to many older test questions, where the prior art does not have to state the same purpose, as long as it shows the exact structure.

Notice of allowance/allowability – when examiner statement is not required. The answer is something like – when the examiner has made it clear in the file record and there is no ambiguity. Look up the section on examiners statement and allowability in 1300.

Restriction practice – there were 2 real tough ones. One that I can remember is where restriction practice is not useful and the answer was when the divisional patent which results from the election could have been a double patenting rejection if it was another separate application. The wording was very confusing, I ‘m pretty sure I got this one right.
The second question from 800 dealt with combination and subcombinations – extremely convoluted. The call of the question was again – when is restriction not proper. The correct answer (I’m quite sure of it) is when the combination requires the subcombination. Read the section about AB(br)/B(sp) etc for this answer in 800. The other choices dealt with subcombination being able to stand on its own, while the combination required the subcombination and various permutations of the same. Bottom line to this one is that if both (comb/subcomb) don’t absolutely require each other and can be shown to have separate utility and patentability – restriction is absolutely required.

There was one good PCT question where they tested the 30 month rule. The key to this is to remember that if the US acted as the RO for the PCT – then only the fee is due by 30 months, there is no need to resubmit the application to meet the entry requirements to the national stage. The choices were tricky, but confirm it yourself in 1800.

Goodluck to everyone that is preparing, keep it together – I did, see my posts elsewhere on this site. I tried to help out people with the new questions as best as I could remember. A great big thank you to all those who have posted and helped me. Pass on the goodwill folks.

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462 littleyellowduckNo Gravatar July 25, 2011 at 3:05 pm

Congrates and thank you for posting. Do you remember how many PCT questions? There are no much practicing questions on PCT. I am freaking out.

A question about PCT: When is the last day a person file a PCT if he wants to claim the same invention of his provisional US application? Foe example, if a person file a provisional application on Aug 26, 2006, either file a utility application claiming the priority of his provisional application or not, which date is the latest date he can file PCT claiming the same subject matter as his provisional application?
Thank you so much!

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463 BigBadVoodoDaddyNo Gravatar July 25, 2011 at 3:52 pm

There are a bunch of PCT questions as noted by others. Read all the repeats on this site – that should be really sufficient. Do all the old PCT questions on older tests.
I prepared by making notes on articles 20.XX – for due dates (I categorized by all the items due within 2 months, 1 month etc) making timelines for deadlines and understanding all the nuances of entry into the national stage (from the original priority date – and the dates for IPEA, Art 19 and 34 amendments, 19/22 month rules etc). Also know the exceptions that the US makes to the PCT. Since this is the US PTO – make sure you know what the prior art dates and references under 102 e – are for the PCT applications which claim priority under 365, 120 etc. If I’m not mistaken – for a provisional , priority must be claimed by the 12th month post filing of the provisional – for both PCT and national stage.

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464 little yellow duckNo Gravatar July 26, 2011 at 7:46 am

Thank you so much. But I did not make myself understood about the PCT question. My question is how long it takes from the filing of provisional application to national stage if the owner of the invention wants it takes as long as possible.

One scientist has good invention, but he needs more time to work on it. He was suggested to apply a provisional application, then PCT within 12 month. He was told he has 30 months from the filing of provisional application to national stage. But I think it can be longer, if he apply utility application at the end of 12 months of provisional application, then file PCT at the end of 12 months of the filing of utility application.
I don’t know I am correct or not.

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465 wenabbyNo Gravatar July 26, 2011 at 11:22 pm

Once you file the non-provisional utility application after the provisional, your patent term start ticking (20 y from filing non-provisional). There will be no benefit to file utility following by PCT merely ‘buying’ you more time for filing.
Correct me if I am wrong…

466 AnnikaNo Gravatar July 25, 2011 at 6:17 pm

“For international applications filed on or after January 1, 2004, the filing of an international application will automatically constitute the designation of all contracting countries to the PCT on that filing date.”

Does this mean that you no longer have to designate at least one state to get a filing date?

There’s also a question from 2003(?) where not having designated a state led to abandonment of the application because the requisite state could not be designated after filing. Has this answer been changed?

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467 giaps2No Gravatar July 26, 2011 at 8:03 pm

I just passed the patent bar yesterday and wanted to say thanks to all those who post and discuss on this website. Definitely look at the question under “Exam Questions and Concepts” and know the rules behind them as I saw quite a few of these, especially in the afternoon portion. The software they use for searching the MPEP takes a second to get used to at first, but it has all the names of the chapters listed on the drop down menu; you don’t have to memorize the chapter names, but it couldn’t hurt. Good luck everyone!

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468 Sarah W.No Gravatar August 2, 2011 at 12:27 pm

I am selling my study materials for MPEP 8th Edition, Revision 8 that I purchased NEW in March from Patbar.com. Includes:
- New patware CD with searchable MPEP AND the new notices – A LIFE-SAVER. I took EVERY exam on this and learned how to navigate both the MPEP and new material.
- 3 textbooks LIKE NEW NO HI-LITING
- 1 Notice of new revisions with the first 3 issued notices and all of the changes in all of the chapters of the MPEP explicitly listed. LIKE NEW NO HI-LITING
- 2 sets of flashcard (1 for MPEP chapters, 1 for Rules and Laws)
- 1 textbook with 3 example file histories.
- Notices 4 and 5 – paper copy with hi-liting

Price REDUCED to $300. I paid 600. Will ship at your cost. Email me at mewpal@gmail.com

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469 wenabbyNo Gravatar August 6, 2011 at 9:49 pm

Passed on first try today – greatly released!
Really thank this site for providing TONs of info helping me pass. To pay it forward, I would like to share some info:
1) Preparation – Science background, took around 4 months part time preparation. Used PLI material and MyPatentBar.COM; Finished reading PLI study guide and all prime questions in the first two month, then start practising old exams in the order of 2003 (2x), 2002 (2x), 2001 (1x) and 2000 (1x). Make sure to UNDERSTAND each of questions/answers; Read Chapters 700, 1200 (2x), 1800 (2x) and 2100, quickly scan 600; Practice on the Postcourse questions on Patware of PLI including KSR/Bilski/112 is ENOUGH to prepare for these new materials. Lastly, MyPatentBar – this website had been my DAILY work for about two weeks prior to the test. Make sure to UNDERSTAND all the Q1-Q68 questions.

2) Exam – Once sat down, I wrote down these info on the scratch paper (these are special MPEP pages and dates to me, hope you can recognize them). As other folks mentioned before, Appeal and PCT were heavily tested in my exam as well. So reading these two chapters twice would be very helpful. Got about 18~20 repeats from the Q1~Q68 questions. Some repeats from old exams.
Keep practicing, you can do it! Good luck to all!

I have all the PLI NEW materials including CD. If you need them, please let me know (yni_ben@yahoo.com). Thanks.

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470 bulumbNo Gravatar August 9, 2011 at 9:35 pm

Prelim pass today. Used past PLI material ( 8r4)+this site+glanced over the new material. I also did all the exams from 2000-2003 and I think everybody should too before taking the exam (you memorize repeat questions and get familiar with searching the MPEP). I Didn’t read the MPEP but after taking the exam, think it might be a good idea to get familiar with chapters 1800 and 2100 (maybe just glance over the subtitles). My exam was not that heavy on appeals (or compared to 2000-2003 exams, it seemed normal). I think I had 2 questions from the new material so don’t be too worried about the exam changing after April if anybody is using old material.

some questions I might’ve encountered:

PCT: missing drawing submitted within 30 days will become a part of app only if there is no new matter. true?

Guy has foreign priority claimed, got rid of it in a RCE for some reason on purpose, and wants it back. How does he get it? (I think options were claiming it in a RCE or none of the above)

What can be submitted with a copy of a signature? a photocopy or facsimile transmission of an original of an amendment, declaration, petition, issue fee transmittal form, authorization to charge a deposit account or credit card may be submitted in a patent application.

withdrawing international app without signature of all inventors-is it good enough if just one signed?

correcting address: can be done by ADS or supplemental oath. If supplemental oath, must list ALL inventive entities (answer had a supplemental oath listing only 1 inventive entity)

can’t remember too much more. Anyways, you guys were a great help to me. Good luck!

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471 littleyellowduckNo Gravatar August 10, 2011 at 3:13 pm

I want to say “thank you” to this site and people positng here. I passed at first try yesterday. Sorry that I cannot remember the exactly questions, but pretty much preat questions like, the airplane toy with foil cover, the moon dust, the clock-fan-lamp. I think I got one question from the new material. Heavy appeal questions. There are 3 questions asked about new ground of rejection, which I had no idea at all.

I used PLI+this site.

Good luck to everyone who visits this site.

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472 AnnikaNo Gravatar August 11, 2011 at 12:40 pm

Passed on 9 August. Does anyone know how long it takes for your name to show up on the PTO list of people seeking registration to practice and then get your registration number?

I had a lot of the same questions as bulumb and littleyellowduck. I also had questions about outsourcing to India, Tommie and Jo, Potter. Lots of appeal questions, particularly about the Board finding a new ground of rejection.

I had 3 questions on the new obviousness standard and also had 3 on the new 101 criteria, but they were very easy. The new reference documents are available in a pull-down menu, but if you just skim them the day before the exam you shouldn’t need to go to them.

I used a 2006 version of PLI but checked it against a friend’s new version and they were word-for-word identical. The exam software worked perfectly on my Mac in PC mode and was great for studying, particularly in the last week to get fast at reading, answering, and using the MPEP. The only thing I had to supplement was the new material that is available on the PTO web site. I will be listing this course on eBay in a few days at a very low price.

I went through the 2003 exams 4 times and the 2002 exams 3 times. I also read Chapters 700, 1200, 1800, and 2100, highlighting them on my computer the first time through and then skimming the highlighted portions 2 weeks before the test.

I finished the morning questions in 1.5 hours, and then spent the rest of the time looking up questions. The afternoon session was definitely harder, but I still finished in 2 hours and then went to the MPEP. When the time ran out, I expected to see a screen stating whether I passed or not, but first you have to take a little survey about your test experience and the Prometric facility. My facility was super: the staff was sympa and efficient, and the testing room was very quiet even with every station occupied.

Thanks to everyone who has posted and good luck to all who haven’t yet taken the exam.

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473 AndrewNo Gravatar August 11, 2011 at 1:28 pm

This is really a great site.

I passed the exam yesterday, and this site was probably the biggest factor in my success. I used OmniPrep (bad idea). The majority of information in their program is word-for-word on this site. I don’t know who copied whom, but I felt like an idiot paying for study materials that were available online. Their test simulation wasn’t too bad, but it’s not customizable (I’ve heard that others are), and only consists of the 2000-2003 exams. My background in patent law is only that I’m a law student, and took a patent law class last semester (not as helpful as you’d think, because this test is so focused on procedural issues).

I had a pretty good amount of repeat questions (not a huge amount), and also had a good amount of questions that are reported as new on this website. Some questions are only listed in comments on the question threads, so make sure that you read through everything. I was able to finish each section in around two hours, including looking around in the MPEP to confirm a lot of my answers. I used all of my remaining time to check my answers (make sure you do this, because I caught a few mistakes and found a few answers that I couldn’t find earlier).

My experience with Prometric was terrible. They couldn’t get the test working for over an hour in the morning (I started sometime after 9:30 AM, I think). During my PM session, the person sitting behind me was taking an exam which required a lot of typing, and I found it very distracting (he was also making weird noises). The software worked fine after they got things working.

Eventually, I will go through the site and try to mark the repeat and new questions that I got. One thing that I remember is that I got a variant of the tinfoil plane question which dealt with obviousness. Someone had mentioned this question before on the site, but I think that they had the incorrect answer (my answer was that the rejection should be upheld).

Anyway, thanks to everyone who posts on this site. I would appreciate if someone could comment on the length of time that it took to receive the letter from the USPTO.

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474 JamesNo Gravatar August 12, 2011 at 1:58 pm

Congrats. I got my official letter within a week–took it on a Thursday and got it on a Tuesday.

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475 AnnikaNo Gravatar August 13, 2011 at 8:36 pm

Took my exam on 9 August, PTO mailed my letter on 11 Aug, I got it on 13 Aug.

For those of you who are attorneys, the PTO requires a certificate from your state’s highest court, NOT your State bar, saying that you are in good standing. If this isn’t sent in with your registration fee and data sheet, you are initially listed as a patent agent.

I wasn’t aware this was necessary, so I’m hoping that the Supreme Court gets these out quickly. To those attorneys who want to be listed as such, it might not be a bad idea to get the certificate before you take the patent bar.

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476 New AgentNo Gravatar August 12, 2011 at 12:41 am

I preliminarily passed the exam on 8/11. I am paying it forward to all the past commenters that helped me to pass. Thank you to all who have contributed to this great website (especially bigbadvoododaddy, overworrked, and boating bob who always provided accurate and cited comments).

Background, I graduated with my engineering degree in the spring and am attending law school this fall. Some patent experience before but nothing focusing on MPEP. I did not read any chapters of the MPEP but would advise to do so considering Appeals and PCT as they are HEAVILY focused on the exam along with 2100.

Testing Center
Professional staff went straight by the book! Small computer screen unfortunately. Allowed me to bring in ear plugs. As others suggested made a chart for each morning and afternoon sessions with column headers of Question#, A, B, C, D, E, and comments to help in my analysis. I also marked questions on the screen.

Study Materials

1) Purchased used PLI course- please note that due to the very few questions focusing on new material it is not necessary to purchase the new PLI materials (costs outweigh the benefits). Overall, the PLI course provided a great outline to aid in MPEP understanding. Best part was the PATWARE software which allowed me to take a pretty decent simulation of the test. Additionally, I could review my exams and look at which chapters in particular I struggled with and make tests solely on those chapters. I would not focus on claim drafting to the extent that John White emphasized in his lectures.

2) Old tests downloaded from this site. Pay special attention to the “Exam Concepts” section. I, like one of the prior posters, found it most beneficial to read the description provided by the forum author then scroll to the bottom and scroll upwards instead of downwards as the best advice is normally at the end of the comment string. Beware on the website about misinformation.

3) New April material PDF’s from USPTO site, go for big picture on these documents as the details are not tested or are easily searchable.

Questions Tested
~Foil airplane (didn’t see this one really highlighted so I want to fill in some details) You file an application for a paper airplane covered with foil only on the wings that yield some described benefit. Prior art considers a paper airplane covered by bubblegum wrappers that consists of outer layer and aluminum inner layer. Can the application receive a patent or will the prior art obviate it.
Piecemeal examination (answer all the above)
~PCT- Missing parts
~PCT- non-english language version submitted to US residents that are foreign citizens
~PCT-Sweden question
~PCT-mexican nationals, app in English question
~PCT- only designate US…where does it publish (IB and/or/nor US national stage…)
~Question discussing how original claimed range was 25-60% X prior art said was X was 25%, applicant limits range to 35-60% (numbers might be slightly off, but difference of 10%) is the rejection overcome
~Rights of non-signing inventor
~Linking claim when restriction between claim 1 and 3
~Application filed with no claims will get no filing date
~Necessary parts on declaration/oath needed for filnig date (2 questions!)
~Equivalence
~Reissue variant of (Tommie and Jo)
~Broom- multiplicity of claims (examiner should call)
~Electric, clock fan – scale doesn’t matter
~Information requested by PTO—not readily on hand
~Use of 131 affidavit
~Why use a combination 131 and 132
~Fact patterns in which a 102e rejection can be overcome
~2 month rule –question had examiner responding within three months so the fee calculation starts at the end of the shortened 3 month period
~Appeal- whether filing fee needed to file
~Indefinite use of high (2 answers are close—wen with the one saying use of high was ok, other close answer didn’t say whether ok or not)
~Chemical Claim
~Basic filing fee covers 20 total claims and 3 independent
~Best mode- designation of best mode not required
~IDS after filing issue fee—what can you do— gets put in patent file not considered
~Inventor dies after notice of allowance—what happens to application

Old Questions
10.03.4a Elemental copper
10.03.17a obvious widget
10.03.22a public access
10.03.25a PTA
10.03.32a enablement rejection
10.03.35a
10.03.37a
10.03.44a PCT Japan- 45 day FFL question
10.03.47a
10.03.06p moon dust
10.03.13p Inventor beck
10.03.08p “reasonable diligence”
10.03.28p parking tickets
10.03.38p XYZ company
10.03.43p ADS
10.03.50p 102 (g)
10.02.01p
10.02.34p express mail

Thanks again to all! I will check back to the site in a few days if anyone has any questions.

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477 MSENo Gravatar August 13, 2011 at 3:10 pm

Could somebody please tell me where I can find New April material PDF’s from USPTO site, as mentioned by New Agent? I have been navigating PTO site, but cannot find them…. Thanks.

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478 KUXNo Gravatar August 13, 2011 at 6:21 pm

Under the “IP law and Policy” tab on the top of the page and then on the left hand side go to “Boards and Counsel” then to “Office of Enrollment and Discipline” then exam resources. There is a link on that page that says “source material for….” click on that and you should be good to go. Not complicated at all…..

I attached a link as well but in case it does not work see above

http://www.uspto.gov/ip/boards/oed/exam/reg_exam_source_material.jsp

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479 MichaelNo Gravatar August 21, 2011 at 2:13 pm

Passed Yesterday 8/20/2011:

Background:
I graduated this spring with a B.S. in Electrical Engineering and will start law school in a few weeks. I decided to spend the summer tackling the patent bar. I figure it might get me edge in the 1L summer job hunt, although in this job market it might be in vain.

How I prepared:
-I purchased used 2010 PLI materials from the Amazon Marketplace.
-First I spent 5 weeks working through the main course, reading the respective outlines, watching the lectures and taking mini exams when John White tells me to. (Like 90hrs, even to PLI claims that it is 50 hrs)
-Next I spent a week and I chain watched all the lectures again, skipping the claims/amendment response ones. (Like 22 hrs.)
-Next I retook the mini-exams, then took all the post-course exams.
-Spent the next week taking the full exams. Each once.
-Spent a weekend reading the updated reference materials.
-Spent the last week reviewing this website. Memorized the new questions on this page and went over each of the repeats, in the other tab.

Over all, it took 9 weeks at about 20-25 hrs a week or so. About 200 hours total.

The Exam:
I feel like the keys to success are this:
1) A strong foundation of generalized knowledge (PLI Materials)
2) Being very familiar with the past exam repeats, and new questions (MyPatentBar)

You can do fairly well, with just having one of these things. Maybe even pass. But you will be at a high risk of failing. John White reports that general when people fail, they barely fail and when people pass, they barely pass. Having both sets of knowledge really helps ensure the latter.

My Test:
My exam had about 20-30 word for word repeats. The majority of the others were really just variants of issues that come up often on past exams. Of course there were probably 10-15 questions that were obscure facts that just require some intensive searching.

I only encountered maybe 5 questions that obviously directed at the new materials. The questions often use words/phrases directly from the materials. So keep that in mind when you are searching that materials.

Other thoughts:
-I honestly think that you could probably just study the old exams, spending only 50 hours or so, and have a good chance of pulling a score in the high 60s or even passing. You really have a lot of time to look things up as you go.
-However, if you want to be sure you will pass first try, you really have to put in the time. If you really come prepared you can answer most questions cold, or with only brief searching. I finished each section in under 2 hours, leaving me ample time to look up the inevitable 5-8 questions per section that are just stupid/unfair. If you get those points though, that’s what really ensures that you pass.
-As far as the new material is concerned. I would suggest reading the materials, but don’t stress it much. The materials are basically all very subtle discussions of 101, 103, and 112 requirements. They are pretty interesting reads actually. Mostly though, its reasonable, common sense interpretation of the statute in special cases. KSR is the best question fodder, I think just about all of my questions were directed to KSR and 103 issues.

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480 AgentBNo Gravatar August 21, 2011 at 10:02 pm

Just passed last week and I want to reiterate how much this site helped prepare for the test. I probably had around 15 old exam questions and 15-20 questions from the “current questions” section. The current questions I can remember are:
6) Obviousness
12) 1.131 and 1.132 Affidavits
13) International Search Reports – PCT
14) Costa Rica and Sweeden – PCT
15) Spanish Phone – Design
19) Mexican Nationals – PCT
21) Trade Secret Question
22) Germany – PCT / Patent Term
23) Broom
25) Electric Fan
31) Chemical Claim
33) Indefinite Claim Using ‘High’
37) Terminal Disclaimer
38) Piecemeal
39) Advisory Action
51) Best Mode
63) TP Submissions

Of the old exam questions, I definitely remember:
Tommy and Jo
10.03.17a obvious widget
10.03.06p moon dust
10.03.08p “reasonable diligence”
10.03.38p XYZ company

There were more repeat questions, but I just can’t remember. Also, there were questions about rapidity and whether a minor can sign.

I would definitely recommend knowing all the repeat questions and all the current questions on this site. Read all the posts in the current questions section, as it helps you get a better grasp on the questions. But like people have said before, the best answers tend to be towards the end of the posts.

As far as other studying, I would know as many of the 2000-03 test questions that you can. I also listened to an old PLI course and took notes, which helped fill in all the gaps. My test was heavy on appeals, PCT, and obviousness. I wouldn’t focus too much on the new material, I only had 2 or 3 questions about that. And definitely practice searching the MPEP by individual chapter when you take practice tests, because it will help on the actual test.

Many thanks to everyone who posted the answers to questions that they looked up at the USPTO office. That really helped as well. Overall, this site was a tremendous help in passing.

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481 Jamey LueningNo Gravatar August 24, 2011 at 7:37 am

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482 SevalleyNo Gravatar August 24, 2011 at 4:52 pm

Just passed on Monday 8/22/11. I utilized the barbri patent bar materials from 2 years ago, a 2004 PLI outline, the old practice exams available online and this website (I’m selling all my materials. Email me at info@ancpn.com if interested). Spent about 1-2 months studying on nights and weekends. After building a strong foundation of all the basic facts, I felt like the most helpful was memorizing the past practice exam questions and the new ones on this website. I had about 20 questions from this website which I recognized and answered quickly and it made all the difference. Here are the question I remember getting on the exam from this site:
4) Submitting Tables on CD-ROM
6) Obviousness
7) Claiming, Deleting and Reclaiming Benefit Claim
10) Suspended Practitioner
12) 1.131 and 1.132 Affidavits
13) International Search Reports – PCT
14) Costa Rica and Sweeden – PCT
15) Spanish Phone – Design (keypad variant)
16) Lip Gloss/Ship Bell (Experimental Use)
21) Trade Secret Question
22) Germany – PCT / Patent Term
23) Broom
28) Means plus Function variant of Door Handle (Determining Equivalence)
33) Indefinite Claim Using ‘High’
51) Best Mode
52) Multiplicity (Prolix answer choice given too)
56) Restriction Requirement / Continuation Application
68) Hydrocyclone

(4.00.23a/4.00.24a) Tommy and Jo
10.03.17a obvious widget
10.03.06p moon dust
10.03.08p “reasonable diligence”
10.03.38p XYZ company

Got a heavy load of PCT questions.
Others I recall vaguely and don’t see on here:
3 questions on Chapter II demands which I didn’t know much about;
Another “for which of the following is a copy of a signature not acceptable?”; another fixing inventor B’s address and whether the signature of A, B, C was required with which forms correcting the address;
Several questions on restriction requirements.

Good luck!

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483 SevalleyNo Gravatar August 24, 2011 at 5:03 pm

Oh, the only question I recognized from the new materials was 2 questions on KSR. The answers were fairly simple and you will be fine just reviewing material on this website, no need to go out of your way studying the new stuff.

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484 KUXNo Gravatar August 24, 2011 at 5:57 pm

Just got a Prelim Pass last week! I can’t begin to tell you how good it feels after putting so much time into studying.

Background: Just graduated from undergrad this last spring with a mechanical engineering degree. Spent the past two summers working in a legal department for a large machinery manufacturing company. I dealt specifically with the patents of the company and a little bit of prosecution type stuff. A lot of my work involved prior art searches. So, in all, I didn’t have to much experience with the paper pushing of the USPTO however I was familiar with it.

Studying: I started back in May with the PLI course . I bought it on Ebay-2010 version. Spent 2-3 hours a night going through the lectures and prime questions at first. At the end of all of the lectures I scored an 80% on the PLI mock final so I was feeling pretty decent. I slacked for about 3 weeks then with 4 weeks left I started hitting the repeat exams hard. I took the tests in exam simulation mode and then reviewed each question while looking at the comments on the repeat questions here on this site. This was EXTREMELY helpful because it really made the answers stick in my brain. So for about 3 weeks I continued taking exams and reading comments on the repeat questions along with other comments on this site (New questions, and other experience posts). During the last week before the test I buckled down and studied full time for about 10 hours a day. I did each of the 2002-2003 exams until I was just missing one or two each time. I knew each answer and WHY it was correct and the chapter it was found in.

I also spent a lot of time on other place on this site. I went back to the start of 2010 and read every single comment on both the Exam Concepts Tab and Repeats Tab. I will say some aren’t very helpful and can be a tad confusing, but the majority of comments are extremely helpful. When I started reading at first I became obsessed what people were listing as repeats but it soon occurred to me that it really didn’t matter much on which questions were repeated on someone’s test and it is luck of the draw. As long as you study every repeat and new question on the site you will put yourself in a good position. People will also note what new questions they encountered and often the fact pattern and the call of the question are broken. However after compiling a few posts of the same new question you begin to see the big picture. READ ALL OF THE POSTS. As I read I put any new information that I saw into a new document to keep track of it. I sectioned it out into, PCT, Appeals, Notes, and Bilski/ksr new material. I drilled these notes over and over.

New material: Barely touched it. I read through it once, sort of, and got a feel for what it was talking about. Mostly just looked at the posts from when the test was updated and studied what everyone else was saying.

My Test: My morning section was heavy with repeats from the old exams and probably around 5 new repeat questions. I finished the questions and review with about 30 minutes still left I was feeling quite confident at the lunch break. Ate a sandwich, fruit cup, and drank half a bottle of green tee and breezed through my notes. The second half however was pretty rough but not impossible. Probably only had around 5 repeats and 3 new repeat questions. However I did have about 10 KSR/Bilski questions. REMEMBER I barely spent any time on the new material. These questions were very straightforward and were either just found in 2100 or the new materials, very searchable( I saw the repeat mentioned above, vending machine). I used all of the time for the second half and the palms were sweating when I pushed end. Now I would love to provide you with some new material but it went sprinting out of my mind when I left the test and I can’t seem to find it. All my PCT questions were repeats and my Appeals were very close variants of all the questions listed on this site. I did not feel that any certain category or chapter was over represented and there was a pretty decent balance of questions.

Final Tip: Study Smart. PLI is a great course but I don’t think it by itself will help you to pass. Use this website and utilize the knowledge of others. Good Luck!

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485 maggieNo Gravatar August 27, 2011 at 11:55 am

Q: Steps Involved in Accelerated Examination Procedure 8/24/11

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486 maggieNo Gravatar August 27, 2011 at 12:48 pm

@ Kux I agree with you 100%. PLI is a great course. It really helped me understanding the big picture of things, bright line points and 102a-f and the 101, 112 laws but I don’t think by itself it will allow you to pass the exam. It is merely a foundation that speeds up the learning process. The analysis of weak point chapters in the Patware software is also extremely helpful. I only wish they had incorporated more older exam Qs.

The bulk of the test Qs are more on the nuances in the MPEP rather than just the bright line points (which are tested at a minimum). This website would have definitely helped me pass on test day (wish I would have found it earlier). On this site, there is more older Qs (than PLI), What is currently being tested, great tips on how to search the pdf-MPEP during the test. The idea to take time before you start the exam to make a A-E grid for each 50 Qs is a fantastic idea (so you don’t take extra time to eliminate marked Qs when you go back).

I think to a pass, reading the MPEP 2100 2X, 1800 2X and 1200 2X along with understanding of all the old questions and answers from 2000-2003 (and keeping in mind on test day that you are likely to get a variant forms of the older Qs) is an essential part of passing the exam.

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487 biggieNo Gravatar August 27, 2011 at 5:09 pm

I got the provisional pass on 8/25/2011. first attempt . I have not background in USPTO procedure at all. So I have to give a lot of credit to this website. I’ll give some general comments about how I studied and then more specific things that showed up on the exam.

I used David Meeks Patbar study course. I made a 200 page outline from the three books and read over my outline about 3 times. I highly recommend this course.

A week before the exam i did the 02 and 03 exams. Then I read through all the answers. even if you get a question right you should still read the answers I did the 03 tests twice each. Went over the repeat questions and the exam concepts on this website.

As for the exam I had a lot of repeats. The PM section was significantly harder than the AM. Very specific questions, I think I had to search like 35 of the 50 questions. So it is imperative that you guys get comfortable searching the MPEP and know where things are.
- i think I had 10 pct questions mostly focused on 102(e) dates.
- a bunch of appeals questions. especially on what happens after a new ground of rejection by the board.
- really unexpected but I had about 6 questions on assignments. very specific too.
- a lot of obviousness questions. I would say about 15. Really pay attention to when you can traverse the rejection by submitting affidavit/statement of common ownership or joint research agreement. Remember it must have been in effect at the time of the second invention. also it ONLY applies for 103 rejections based on 102(e), (f) ad (g) rejections.
- a handful of questions from the notices. not particularly difficult if you skim the notices once before the exam.

- a question about electronic signature. Which one of the following is true type of question. I don’t remember the answer choices but I picked the choice that said by submitting an e signature you are stating it is you who is r

- one pct question kinda through me off it was filed in the US RO and the applicants ARE us residents but the application is in japanese.
(a) invite applicants to submit english translation
(b) and (c don’t remember
(d) forward it to japanese RO
(e) forward to the IB

I picked (e) but I’m not sure.

- new ground of rejection by the board. applicant submits amendments and/or arguments. Examiner believes they overcome all rejections. What happens next.

i don’t remember the exact answer choices but something along the lines of sending it back to the board or allowing the application

- A reasons for allowance question. When should an examiner add a statement to the record. You had to select in which case it would be improper. all the incorrect answer choices were verbatim from mpep 1302.14.

- a bilski question. there were 3 statements and the question asked which were correct.

1. m/t is the sole test for patentability of a process (false)
2. abstract ideas are not patentable. (true)
3. something true

-repeats. there were more but these were the ones i remember. definitely have the 03 exam questions don cold.
tommie and jo
trade secret
japanese patent
broom
piecemeal
moondust
multiplicity
signal
outsourcing
the question with a telephone/lamp setup and the practitioner claims its not obvious because size is different

hope that helps. good luck to all!!

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488 maggieNo Gravatar August 29, 2011 at 11:51 am

What kind of Qs on Assignments did you see?

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489 maggieNo Gravatar August 29, 2011 at 11:48 am

I think I got this one too.

Q. 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 think I chose C

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490 CharityNo Gravatar August 31, 2011 at 8:11 am

Hi,

I am studying for the exam and plan to take it this year. Not sure how that will work out considering my work schedule but I’ll do my best. I just thought I’d reach out and introduce myself. I’m studying for the exam by myself so it can get difficult without anyone to talk to! I’m an electrical engineer (20 yrs experience) and am ready to do something more interesting with my career.

Any advice about studying or encouragement would be greatly appreciated! Thanks.

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491 maggieNo Gravatar August 31, 2011 at 2:02 pm

Hii C

Let’s keep in touch. I am studying too. It would be great to chat about it. I am a life scientist phd.

M.

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492 CharityNo Gravatar September 1, 2011 at 6:11 pm

That sounds good. It would be great to have someone to talk to about the exam.

493 roger987No Gravatar September 2, 2011 at 12:29 pm

Hi:
I am preparing to take the exam in next three months.

Have physics background (Ph.D)

Will appreciate exchange of ideas.

Thanks.

494 roger987No Gravatar September 2, 2011 at 12:33 pm

Preparing to take exam , next months.

Physics background. (Ph.D.)

Exchange of information, ideas will be appreciated.

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495 neitzNo Gravatar August 31, 2011 at 9:42 pm

Hello all,

Thanks for all the posts and comments. I passed (provisionally) today. As others have commented, the AM session was easier, with more repeats, than the PM session. I found that having a good ability to find the right search terms to be valuable. Patience and watching the time, so I knew when to cut and run on any particular question seemed to be helpful, too. The testing center I used is in a small town, only 4 seats available, so it was quiet. Staff were helpful and friendly, ear plugs available, chairs and monitor height adjustable. No problems with Prometric. The questions and concepts I remember are :

Issue fee transmittal form – XYZ Company (10.03.38p/4.03.11p)
Toy plane with Foil Wings (10.03.46p)
Ex Parte Rejection (10.03.50p)
Affidavit 1.131 (10.03.36p) something similar to this
copy of signature: amendment, authorization to charge cc, declaration
Invitation to Correct PCT Application (10.03.4p)
Moondust (10.03.6p)
2month rule with USPTO responding before end of ssp
Restriction Appeal (10.03.42a)
Supplemental oath as an amendment (10.03.26a)
Late IDS when client knew about PA all along (10.03.34a)
Public Access (10.03.22a)
Bloc; Synthetic Z (10.03.7a)
Canceled matter as PA (4.03.48p
Laurel, Abbot and Hardy (4.00.14a)
Smith Laminate(4.00.17a)
Tommie and Jo(4.00.23a/4.00.24a)
Reexamination (4.00.47a)
Federal Court Decisions binding for Office (4.00.19p)
102 (f) (4.00.44p)
Sally, Ted and Spot Remover (4.01.10p)
only people who can’t file a patent are employees of uspto minors ok
correction of inventorship applications and issued patents, with or without assigneees, witho or without agreement of all inventors
several third party submission questions
lots of reexam, reissue
no claims in a provisional
what happens to trade secret info when material to patentability
pct corrections
pct missing parts
spanish phone
mexican nationals
Q25) Electric Fan or fan clock lamp
Q33) Indefinate Claim USing ‘High’
Q38) Piecemeal
lots on assignments

If anything else comes to mind, I’ll repost. Meanwhile, I’m enjoying an adult beverage…

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496 maggieNo Gravatar September 12, 2011 at 12:47 pm

Thx looks like 2000 exams is really important !!

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497 gregoryNo Gravatar September 2, 2011 at 11:56 pm

Taking the patent bar tomorrow and I hope someone online knows this answer:

Is this a 102(d) rejection only? Is it possible to have both a 102(b) and (e) rejection? Why does 102(a) not apply? I saw this question on my exam in APril and failed.

Another variant of 102(b)question:

French App 1-4-03 turns to French patent 12-5-03 then US app in 4-1-04. which 102 may examiner use to reject prior art?
a.102a
b.102b
c.102d
d.102a & 102d
e.102b & 102d

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498 paulNo Gravatar September 3, 2011 at 4:32 am

From MPEP 706.02(a).II.C:

“For 35 U.S.C. 102(a) to apply, the reference must have a publication date earlier in time than the effective filing date of the application, and must not be applicant’s own work.”

From MPEP 706.02(b):

“A rejection based on 35 U.S.C. 102(a) can be overcome by:

(D)Filing an affidavit or declaration under 37 CFR 1.132 showing that the reference invention is not by “another.” See MPEP § 715.01(a), § 715.01(c), and § 716.10;”

I assume that the US app has the same applicant as the French app. In that case, it would seem that only 102(d) would be available.

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499 JayNo Gravatar September 3, 2011 at 5:58 pm

Hello – preliminary pass today (phew!). Wanted to share some questions while some are somewhat fresh in my mind.

1. Appeal is filed and before decision you file an RCE but without the required fee. I answered the application is abandoned. NOTE: If proper fee, the RCE effectively withdraws the appeal.
2. Patent prosecuting attorney assigned part interest in invention as payment. Sole inventor dies. I answered the prosecuting attorney can continue to prosecute the application.
3. Mexican nationals/corporation question re PCT filing in US receiving office. I answered won’t accept because application in Spanish (no option about forwarding).
4. A lot of fact patterns with some claims rejected, others rejected but would be allowable if rewritten in independent format, and others allowed. Applicant appeals, and question wants to know what Examiner does next after the Appeals Board affirms, issues new ground of rejection, etc.. See MPEP1214 Procedure Following Decision by Board. make sure you are familiar with the fact patterns provided, because the questions are taken straight from here. I looked up all the answers fairly quickly (had approximately 5-6 of these). The hardest for me was a question where the Board affirms the rejection, but also issues a new ground for rejection. This fact pattern is in MPEP 1214 et seq. (had a hard time finding it), and I believe the applicant can respond to the new ground for rejection, and since it can also overcome the prior affirmed rejection, the application could be allowed.
5. Question about when a copy of a signature is allowed. I don’t think original signatures are required anymore for anything, so I chose that answer (i.e., E. none of the above)
6. A few questions about requirements for a PCT filing date — what do you need, and what can be filed later.
7. A lot of 1.131 declaration questions — when can this be used to establish prior invention to overcome prior art.
8. A decent number of obviousness questions — main thing is to know the TSM test is still relevant, but not the only test.
9. Question about which claim will likely be interpreted under 112 6 (means plus function). I think the answer was “A device for …” because the only other choice with “means for ____” included a long “wherein the means for ____ includes A, B, C, D, E, F, etc.” I think the presumption in favor of 112 6 M+F treatment is overcome here because there is a lot of structure in the “means for” claim itself.
10. Repeat question about disclosing materiality to examiner where the answer is there is no duty to disclose (something about concerned how something was invented).
11. Question about a deadline falling on July 3, but it was mailed Wednesday, July 5. I’m pretty sure this is late even though most everyone has Monday, July 3, off since July 3 is not a federal holiday.
12. A fair number of 103(d) questions, but I just looked them up in MPEP 2135.
13. Assign invention, then file divisional. What do you have to do to make sure the assignment appears on face of divisional patent? I believe you only have to fill out a form when paying issue fee (don’t have to submit new assignment, check PAIR, etc.).

I’ll try to remember some more later and follow-up.

Good luck to everyone!
Jay

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500 gregoryNo Gravatar September 3, 2011 at 9:11 pm

Took the patent bar for the second time today, failed again. I got a 52%. My grandfather passed away the night before and I had to catch a flight to return home, but I still thought I could do it all.

Background: Chemical engineer, worked in industry for two years and now going to law school.

Prep: studied for 3 weeks the first time and got a 65% (missed it by two questions). This time (9/3), I studied again for a few days and thought I could get 2 more questions right (bad idea especially with law school and my grandpa). I used Omniprep and I do not recommend it to anyone. Mypatentbar has everything you need to know.

General trends: a lot of questions on appeals (new ground of rejection, what happens if board overturns some rejections and keeps others, what about an affidavit that is sent between appeal to the board and decision by the board how will it be used). A few PCT questions. A lot of obvious questions (103(a) and 103(c), what does rapid sales tell you, what does a long held need tell you, when do you need to determine when one has ordinary skill in the art, should an examiner find out ordinary skill in the art every time they make a rejection).

There were a FEW sections in the MPEP that I KEPT going to for every answer. I was definitely in the right section, but I didn’t understand what the MPEP said or felt like it was contradicting the answer. These sections: MPEP 706, 1213 to 1216 (appeal stuff), 716 (1.131)

Exam: first half was easier than the second half. Not many repeats (maybe 20 total).

Questions I saw today
1) Moondust
2) Tommie and Joe
3) 45 days, Japan application nonpublication request/45 days (10.03.44a/4.03.2a)
4) 2 months to reply to an appeal notice, advisory action
5) Beck – Mixture with melthing point of 150F (10.03.11p/4.03.22a)
6) Board decisions (4.03.37a)
7) 2 month rule for final office action reply
8) Ex parte rejection (10.03.50p)

New questions:
1) Japanese PCT application is filed properly in the US, but in Japanese. The person filing is a resident of the US. Does the US forward it to the IB? (I thought they should sent it to the IB because it is not in English, although it does get a date, yet date was not important or mentioned in this question)
a. Sent it to the correct place (forward to IB)
b. Sent it back to applicant
c. Ask for a translation
d. Something
e. Something

2) French App April 28th 2002 turns to French patent April 29th 2003 then US app in april 30th 2003. Which 102 rejection may examiner use to reject prior art? (same this TWICE)
a.102a
b.102b
c.102d
d.102a & 102d
e.102b & 102d

3) Certificate of mailing question with options of I, II, or III meeting the requirements of 37 CFR 1.8. Filed July 2, 2003 at the USPS meeting CFR 1.8 and then received at the USPTO July 7th, 2003. Ways that it will get the date-in and not the date received at USPTO? I. missing label II. Missing certificate of mailing III. Something
a. I
b. II
c. III
d. II and III
e. I, II, III

4) Linked claim question with claim 1 and claim 2, and claim 3, how can you overcome the rejection? (I was looking in MPEP section 809.03)

5) Q. 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

6) Which of the following is not a new application?
a. RCE (my answer)
b. CPA
c. Something
d. Something

7) Which of the following applies with a 103(c) rejection?
a. Something about 102(e)
b. Something not about 102(E)
c. Something about 102(e)
d. A and C
e. All of the above

8) Electric fan or fan clock lamp,
a. Something about measuring it and that information as grounds to overcome a rejection?
b. Keep rejection
c. Something
d. Something

9) Toy foil airplane wings regarding 103(a) rejection
a. The patent says it is different than prior art because only the wings are covered with tin foil and thus flies smoother and better without the addition foil around the body. The prior art says the WHOLE plain is covered in gum wrapper. There seems to be some facts about using actual gum wrapper versus just foil.

10) Rejecting a under 112 first paragraph or rejecting under BOTH enablement and first paragraph

11) Who can sign a disclaimer?

12) Variation of Potter

13) Chemical compound
a. Not defined in the claims how to make it

14) Definition of the use of high
a. Tricky answering again, one specifically says definite to one with person of ordinary understanding the art.

15) Question questions MPEP 724 and asks you to do something with it (answer the following question)

16) Inventor a, b, c and you didn’t submit an address for inventor B, how can you correct this? Something about submitting the ADS.
a. Only send in the address
b. Need to have all inventors sign it and send it in

17) Something about 112th four paragraph, meeting the requirements (same as writing a claim correctly in dependant forum)
a. Claim 5, in which something OR something
b. Claim 5, in which something
c. Claim 4 in which something
d. Claim 3 in which something
e. Claim 2 in which something

18) Prosecuting a patent, then before allowance (it is going to be allowed), the inventors die
a. Lawyer owns it? Law can continue prosecution?
b. Something , c. something, d. something
19) 2 month rule for final office action

20) Broom question

21) DNA question with A-C-C- __ some other letter (base)

22) Question about publishing an application that was filed by a resident of
the US, designating the US.
a. Published at 18 months by IB
b. Published at 18 months by the US AND the IB
c. Published only by the US
d. Another office publishes the application
e. (forgot)

23) Question about interviews (contacting examiner) Except:
a. Attorney should call whenever he wants
b. Something
c. Something
d. Something
e. Something

24) Correcting a design patent application
a. Can you appeal?
b. What is allowed?

25) An application that has claim for a composition between 25-60% of some substance. Prior art discussing using a composition near 25%. The examiner makes a rejection on this basis. The practitioner replies with a new claim saying at least 35%.
a. Keep rejection under 103(a)
b. Maybe something about 112
c. Maybe something about 102(a)
d. Don’t remember
e. Don’t remember

26) What happens when Board enters new ground of rejection
a. Goes back to board first?
b. Examiner keeps rejection on old stuff and just looks at new ground?
c. Something
d. Something

27) 1.131 and 1.132, when can you not use them?

28) What is required for a reissue application
a. Just a copy of the patent stuff
b. The fee
c. The signature
d. Something

29) Question about assignment

30) PTA getting extra time with an RCE. Are you allowed to get a patent term extension with an RCE.

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501 gregoryNo Gravatar September 5, 2011 at 7:16 pm

There was also an outsourcing questions:

Facts: A patent firm gets very busy and decides to send a patent outside of its firm to India. They patent firm in India does all the work and then sends it back to the American firms. In accordance with the USPTO which of following is correct
a. fill some form after the you send in the application
b. fill the form before you send in the application and then apply for the patent.
c. fill the form after the application has been filed
d. something
e. something

(basically, there was some 37 CFR X.XXX form you need to use, I think when outsourcing patent work)

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502 dkNo Gravatar September 11, 2011 at 12:19 am

See 37 CFR 5.11(c). A foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.

Basically a test question if you ask me. USPTO issued a notification on outsourcing a couple of years ago (2008) where they basically said outsourcing is contrary to patent policy which requires foreign filing licenses. So you cannot export drafting of patents to other countries as this constitutes unauthorized export of technology. A ball of crap as you can do that if you do not patent it unless restricted by the ECR and other sensitive technology limitations.

Well the USPTO acted to keep the jobs in US. So there is the long and short of this question. A reference to 37 CFR on a foreign filing license will be the answer but one which is not on the test material and hence a test question.

503 Juris PrudenceNo Gravatar November 21, 2011 at 10:40 pm

Just wanted to thank you Gregory on all the info you provided and wish you luck on the third time (the proverbial charm)!

(condolences offered on your grandfather’s passing).

JP

504 FlygirlNo Gravatar September 14, 2011 at 4:07 pm

This is a very helpful rundown of exam questions, Gregory. Thanks! I’m sure you’ll pass the next time.

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505 wenabbyNo Gravatar September 5, 2011 at 4:02 pm

Recently passed the patent bar exam on my first try with this new PLI package. I have no patent/law background at all and believe the PLI package really helps those who want to pass the test on the first try. This new PLI complete set (post April 12, 2011, very well kept and no highlight) includes: Precourse Book, Complete Study Guide, Practical Prime Questions Book, Postcourse Book, 36 lecture CDs, Patware CD, The new KSR/Bilski materials etc.
I am offering this package for $550 plus shipping. If interested, please email me at: yni_ben@yaho.com

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506 gregoryNo Gravatar September 5, 2011 at 7:17 pm

I sent you an email. I am very interested

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507 gregoryNo Gravatar September 6, 2011 at 4:16 pm

There was an appeal question (several people have mentioned it as being very confusing) referring to MPEP 1214 Procedure following Decision by Board. The question asks what to do if there is a new ground of rejection and the answer is in the paragraph:

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

THe answer choices have varying interpretations of this answer. What does this paragraph mean?

508 wenabbyNo Gravatar September 7, 2011 at 8:14 pm

Sorry the email should be:
yni_ben@yahoo.com;
Can you send again, I did not get your email.

509 wenabbyNo Gravatar September 7, 2011 at 8:17 pm

The correct email is: yni_ben@yahoo.com
PS: the underscore may not show due to the hyperlink formate

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510 CharityNo Gravatar September 6, 2011 at 9:30 am

I have a question for anyone who took the exam recently (after use of Rev 8 MPEP), I was wondering to what extent those changes have impacted the exam. Do you think that it is still okay to study from older materials (Rev 4 rather than Rev 8) and if the Rev 8 changes have dramatically altered the exam?

Thanks!

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511 MichaelNo Gravatar September 10, 2011 at 6:34 pm

All things the same, use the rev 8. But DO NOT pay a bunch of extra money just to get rev 8 materials. The changes are laughable. There are basically no substantive changes from rev4 to rev8. Just little things like random footnotes and changing “web” to “Web”.

The blue pages at the front of MPEP rev 8 describe the changes (see the link.)
http://www.uspto.gov/web/offices/pac/mpep/documents/bluepages.htm

Don’t forget the supplemental materials though, they have definitely changed the exam. They are quick to read though, so you can easily study them on your own, without any extra study materials.

I used 2010 PLI materials, and i did just fine. From what I understand, the new PLI materials just have like a few extra pages discussing the supplemental materials. I’m not sure if they have changed Patware at all yet.

Anyways, i doubt rev8 has changed a even a single question in the question bank. The supplemental materials are definitely tested. (Although, they were generally easy on my exam.)

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512 sky7No Gravatar September 8, 2011 at 9:22 am

Hey all – just took the test yesterday (09/07/2011) and passed. I READ all the PLI chapters (I had no desire to listen to John White talk, as cool as he is), and payed special attention to 2100, 700, 1800, and 1200. In the week before the test, all I did was manually do the 2002/2003 exams, then try to go over all of the ones reported to be repeats once a day. The day before the exams, I looked over the questions on this site. I think my test was very close to Gregory’s test – super difficult with few repeats. I was very lucky to pass.

Here are a few observations:

1. My test was relatively light on PCT and Appeals, which was surprising, as most of the common wisdom out there indicate that these are heavily tested areas. It was also very light on repeats. I’d say no more than 6-7 from the 2002/2003 exams, and perhaps another 5 that I picked up from the various sites (patentbarquestions.com/mypatentbar.com). Every repeat I had was verbatim, down to the order of the answer selection. Once I realized that the test was going to be super light on repeats, I started to think I was going to be SoL. However, see #2.

2. NOTHING makes up for knowing generally where stuff is in the MPEP. Because of the lack of repeats, I was scrambling for the entire test period, but I was apparently able to effectively suss out correct answers. I found the index to be very unresponsive to searching because searches look at the whole index, not a chapter identified by letter.

3. The PDF software. I have no complaints with how easy it was to open and get to various parts of the MPEP, or with the scaling of the window. However, the search function was definitely flawed. There were a couple of occasions where I KNEW something was in a chapter, but the search wouldn’t find it. On three occasions, I had to close the MPEP, reopen it, then re-search – which then found the reference I was looking for. Moral of the story – if you KNOW that something is there, don’t blindly follow the search function.

4. My test was absurdly heavy on 103 rejections. Before the test yesterday, if I had read that statement, my initial though would have been “money in the bank”. However, these questions were very nuanced and especially difficult. Due to the high question amount (at least ten 103 questions), I’m thinking that some of them must have been experimental questions. However, I’d make sure that you spend a good chunk of time going over the subject matter.

5. New matter – KSR and recent court cases WERE tested. I hadn’t looked at any of it, because I was too concerned with learning everything else! However, it was super obvious when they were testing it (they actually say… reject under KSR because of X as an answer choice), and a quick read of the supplemental documents allowed me to get those questions correct.

Good luck to all those still studying!

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513 sky7No Gravatar September 8, 2011 at 9:26 am

My test also seems identical to Neitz’s above. If you notice, there WERE more repeats than I thought – it’s just that they came from the 2000 exams, instead of the 2002/3. I didn’t study the 2000 exams!

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514 PatentBoundNo Gravatar September 22, 2011 at 7:43 pm

Hi Sky7:
Congrats on passing the patent bar! I’m not certain when the new reform materials would be tested. I plan to take the exam within 6 or so months…You mentioned you reviewed the PLI materials. I don’t know if you’d be willing to sell your PLI homestudy kit with CDs?

Thanks!

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515 PatentBoundNo Gravatar September 22, 2011 at 7:44 pm

and also if your PLI materials are v2011?

516 patentgeekchickNo Gravatar September 15, 2011 at 2:58 am

Hello!

First of all, thank you for an awesome site!

I took the exam on July and failed (66% – though I only had 25 incorrect answers =/ ). I only studied for 6 days (wishful thinking). I went to DC to review my exam, and I’ve been trying to reconstruct those questions, matching them with the ones I’ve seen here.

It’s super frustrating that about 5-6 questions I missed were Repeat questions from old exams, and I’d never even seen them. This time around I’m making sure I’m mastering those.

Anyways, please help me out here.

I am trying to remember a question. It went something like in which situation would the “inclusion or omission of an ink signature” make the document invalid. Or something.

The choices were
1. Amendment (?) by atty not of record – (which is fine, in accordance with 37 CFR 1.34, a paper filed by a registered patent attorney or agent in an application in which he or she is not of record must include his or her name and registration number with his or her signature.)

2. Something about one inventor without a Power of Attorney. I think I remember this is the right choice. If inventor is given POA by the rest, he can.

Has anyone seen this question? Do you remember the rest of it? I’m retaking soon!

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517 MaggieNo Gravatar September 28, 2011 at 7:18 pm

Can you report back about your exam review at the PTO?

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518 patentgeekchickNo Gravatar September 28, 2011 at 9:57 pm

As I told you, most of the questions I missed were repeats, or variants.

I checked the “New Questions” section to see if found any of the questions I failed there, but I only found one related to documents that accept copies of signature.

And another weird question about “where does the inclusion or omission of an ink signature make the document invalid (or something)…”, and the answer was about an inventor that had not been given a POA by the rest of the inventors, signing i don’t know which document.
The other one was a registered practitioner not of record but who provided registration number… But that was ok.

I’m sorry =/

519 HalfbelgianNo Gravatar September 19, 2011 at 5:32 pm

Greetings from the other side.

Preliminary pass on Saturday, 9/17. Nothing much new except to echo past statements on getting a prep course under your belt before starting (I used PRG and Examware both online – much better than DVDs and installed programs – if you have an Android you can watch the videos on your phone which is perfect), knowing the 2001-2003 exams backwards and forwards as to why right answers are right and wrong answers are wrong, and to understand the nature and subtleties of the discussions on this website. Other tools i used were a mnemonic device to memorize all the chapters and a flash card app for the iPhone called Study Flash. Worked great, especially for repeat questions and critical dates.

Im a working dad with advanced degrees in Chemistry and had to take more time than most to get through all this stuff. After I got thru the videos from the PRG course I only was able to scrape up about 10-12 hours per week over about 4-5 months and did about 40-50 hours in the final week as I took off work to finish studying.

With first-to-file now law, please think carefully about when you want to take the registration exam and if you want your studying to be dedicated to something that will be obsolete within several months of your getting registered (Which is exactly what will happen to me). First-to-file means DRASTIC changes in a great deal of the fundamentals that are taught in every old exam and every prep course.

Thanks to everyone on the site for the enlightening discussions. And good luck to everyone.

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520 odineroNo Gravatar September 20, 2011 at 10:20 am

Hello everyone,

I’m wondering if I should prepare for and take the patent bar within the next 3-5 months given that the patent reform act was just passed. Will the USPTO implement these changes into the patent bar anytime soon? Are my current PLI materials still valid as a study guide??

Thanks,

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521 CharityNo Gravatar September 21, 2011 at 11:03 am

I took the PLI course in NYC from Sept 14 -18. They said that it is better to take the exam before the changes in the new law are substantially implemented. The reason they gave is that when the exam is changed to include the new law, it will be required to know both the new stuff and the material prior to the new law ( the material curently being tested). So they think that the exam will end up being more difficult. The patent office also gives 3 months notice before they change the exam content. So the currently tested material will be tested at least through the end of this year.

Maybe it is best to take the exam before the new law takes effect and then later learn the new stuff on the job. PLI also said that the changes required by the new law will take approximately 18 months from now to fully or almost fully be implemented.

When I took the course last week, I think that the only stuff they added for the Rev 8 of the MPEP was the KSR/ Bilski materials so we could deal with exam questions that deal with that stuff. Otherwise I think the materials are pretty much the same as the MPEP Rev 4 study materials. MPEP Rev 4 was the previous version that was tested before the PTO started using Rev 8. PLI told us that they would send us emai updates if any new material is tested related to the new law; I’m not sure for how long they will do this though.

I hope this helps!

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522 CharityNo Gravatar September 21, 2011 at 11:08 am

P. S. The guys at PLI were very clear about recommending taking the new exam before the new law is implemented since they think the exam will become harder.

523 dktenonNo Gravatar October 7, 2011 at 5:03 pm

Hi everyone, prelim pass, first try. This is a great site and it’s been great and all but I’ll keep it short and to the point. I want to re-sell my PLI course package, includes everything, and purchased this year. It includes everything you need to know to pass the exam, if supplemented with info from this site. If you’re in the NYC area, I can meet you in person. No writings, highlighting, or anything like that. Everything in used but great condition. Like the person above, $550 plus shipping. Email me at TAKETENS@gmail.com. Thanks!

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524 GregNo Gravatar October 11, 2011 at 11:46 am

Hey guys, I have a question about claiming priority of an earlier filed application. What are the time limits for claiming priority of an earlier filed application? Do you follow the 4 month/16month rule only or is that just for claiming the benefit of an earlier filed foreign application? Also, are the guidelines the same for an applicant attempting to claim the priority/ benefit of an earlier filed US app when filing a domestic app? Thanks!

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525 maggieNo Gravatar October 11, 2011 at 12:03 pm

I think it goes something like this; There are two thresholds:

You have 12 months for new Utility App or 6 months for a new Design App to get on file as USA or PCT app.

Once on file, you must make the claim n USA or PCT app (to the earliest app only) (if you forgot to make in the beginning or need to overcome prior art rejection later) … you have 4 months from actual USPTO filing or 16 months from the priority date (domestic or PCT) which ever is later.

Finally if it is really really late you can do a reissue (if there is no claim at all in app) or Certificate of Correction (noted somewhere in other related app) depending on the circumstances to correct you failure to claim priority.

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526 maggieNo Gravatar October 11, 2011 at 8:12 pm

So, NOT EARLIEST ONLY
1.55(a) states that an applicant “may claim the benefit of the filing date of one or more prior foreign applications” and an applicant may want to claim priority to several applications and not just the earliest, since different priority applications may relate to different embodiments.

527 maggieNo Gravatar October 11, 2011 at 12:27 pm
528 GregNo Gravatar October 11, 2011 at 10:21 pm

Okay Maggie, I’m trying to put the pieces of the puzzle together. This is what I have thus far….A non provision app can claiming priority of a previous non provisional app or an foreign app designating the US can be done at any time during the pendency of the parent application. When claiming the benefit of a provisional app, you must do so within 12 months of the filing date of the provisional app. When claiming the benefit of a foreign application, not designating the US, the benefit must be claimed for application filed on or after 5/29/00 the later of 4 months from filing of app seeking benefit or 16 months from the date of the parent app.

I tried to put it in my own words, but this is the track that I am on right now. Thanks for all your help!

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529 maggieNo Gravatar October 12, 2011 at 1:26 am

(1) Foreign –> Non-provisional OR PCT/USA
(6 months design or 12 months Utility to get on file in USA) or there is a 102(d) bar (In addition, the required claim must be made within the time period set forth in 37 CFR 1.55(a)(1) later of 4 months USA file date /or 16 months foreign priority date while pending)

§ 1.55 Claim for foreign priority.
(a) An applicant in a nonprovisional application may claim the benefit of the filing date of one or more prior foreign applications (i) In an original application FILED under 35 U.S.C. 111(a), the claim for priority MUST BE presented during the PENDENCY of the application, and WITHIN the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.

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530 GregNo Gravatar October 12, 2011 at 10:42 am

Okay! I guess my problem was that I skipped over the “AND” where, “the claim for priority must be presented during the pendency of the application , AND within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.

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531 maggieNo Gravatar October 12, 2011 at 12:11 pm

I think one strategy for a Q when you have no idea where to go for answer and you need to look-up…. Go to the Rules Appendix and query word in question call for example ” international foreign priority” Good luck. I wish you many repeats.

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532 GregNo Gravatar October 12, 2011 at 4:10 pm

Thanks a lot! About how many repeats did you get from this website and other exams?

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533 maggieNo Gravatar October 13, 2011 at 4:41 pm

Not that many maybe ~4-6 on each sections AM and PM. To guarantee a pass, you need to know how to look up efficiency (just in case you get a hard exam) with many look-up. It is crap shoot if you get many repeats or not. I hope you have been practicing look-up with older exams. Good luck :)

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534 maggieNo Gravatar October 13, 2011 at 4:42 pm

I am re-taking on Nov 16th. One month after yours !

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535 Lisa O.No Gravatar November 11, 2011 at 4:04 pm

I’m scheduled for Nov. 16th, too. Good luck!

536 maggieNo Gravatar October 13, 2011 at 4:49 pm

I agree that even if the Qs are not word of word the same concepts are tested. So, if you did old exams and looked up your should be fine :)

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537 GregNo Gravatar October 15, 2011 at 5:35 pm

So I regret to inform my peers that I did not pass the exam today. I got a 69% and had a horrible experience with Prometric today. Upon starting my exam today, I went through a couple of questions and then went to use the MPEP and the computer’s software was not compatible for displaying the MPEP. Then, the Prometric staff tried to figure out was was going on on my computer screen as the time was running, telling me that I would get the time back, but never did. Then, I had to wait three hours until the software was downloaded onto the computer…REALLY??? I started the exam again and then was unable to finish the first 50 MC and was unable to answer about 4 questions primarily because I was not given the time back that Prometric wasted while trying to figure out what was wrong with the software…….Not a happy Camper.

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538 maggieNo Gravatar October 15, 2011 at 11:58 pm

Wow, that is a real bummer. I would contact them by phone on Monday, tell them what happened and ask them for a redo test immediately and for free.

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539 DannyNo Gravatar October 16, 2011 at 7:14 pm

Real sorry bout that bro

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540 GregNo Gravatar October 17, 2011 at 9:27 am

Yeah, I plan on doing that today. They will probably only give me my money back at the best case scenario. I figured that the USPTO would have the final say on administering another test.

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541 cordovaNo Gravatar October 17, 2011 at 10:36 am

I thought you need 63% to pass the exam?

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542 maggieNo Gravatar October 17, 2011 at 12:39 pm

You need 70% to pass

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543 JeremyNo Gravatar October 18, 2011 at 4:34 pm

I passed about 2 hours ago. This was my 2nd time- I definitely over-studied. I took it for the first time about 5 weeks ago. If you find yourself in a similar situation, you can feel confident if you know all of the previous exam questions cold (& why the wrong answers are wrong), and know each of the above Exam Questions & Concepts (nearly) cold. I will list the pertinent material that was on today’s exam.

About the questions below: either exact repeats or variations that you will definitely get if you know the questions thoroughly. This test is definitely do-able, so don’t fret if you mess it up the first time. Better yet, nail it the first time by doing what is suggested.

My first exam had no more than 10 repeats, and I didn’t even review the above “Exam Questions & Concepts” before I took the exam. BIG MISTAKE! As before, the majority of the questions today came from the new questions and concepts.

Exam Questions & Concepts:

Submitting Tables on CD-ROM
Claiming, Deleting & Reclaiming Benefit
Missing Parts-PCT
Correcting PCT Applications
Suspended Practitioner
3-4 Q’s on 1.131 practice (believe it or not!)
Lip Gloss
Spanish Phone- Design
Small Entity Status
Mexican Nationals- PCT
Trade Secret Question
Germany-PCT / Patent Term
Broom
Japanese Patent (I’ll point out which one under the topic)
Electric Fan
Indefinite Claim Using “High”
Investigating Deceptive Intent
Documents Requiring Signatures
Missing Parts in PCT Applications (30 day rule)
About 2 tons of Appeals questions
Restriction Requirement / Continuation
PTO-892

Repeats (Old Test Questions):

Tommie & Jo (only one of the 2 questions though)
Federal Court Decisions Binding for Office
102(f)
ABC/XYZ Appeal
Non-signing Inventor (10.02.1a)
Double Patenting
Broadening Reissue (variant)
Third Party Submissions
Provisional Patents
Express Mail
Potter
Beck
Enabling Disclosure
Small Entity Status
Bloc, Synthetic Z
Public Use
Obvious Widget
Moondust
Correcting the Name of the Inventor
Smith & Jones
Ex Parte Rejection

Best of luck!

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544 MaggieNo Gravatar October 18, 2011 at 5:03 pm

Thanks and Congrats

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545 JeremyNo Gravatar October 18, 2011 at 6:33 pm

Cheers!

546 maggieNo Gravatar October 18, 2011 at 6:37 pm

Can you explain further which Trade Secret Q type you got their are a couple variants posted.

547 ElleNo Gravatar October 18, 2011 at 5:25 pm

Just took the test, didn’t pass but I will be posting soon as to content

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548 JeremyNo Gravatar October 18, 2011 at 11:18 pm

Maggie, just remember this:

If the information is material to the patentability, then it CANNOT be expunged, since it must be reviewed by Examiner, and thus remains in the file wrapper. NOT relevant: the information can remain sealed.

This makes the question easy to navigate for different variants.

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549 maggieNo Gravatar October 19, 2011 at 1:38 am

Thank you so much.

One more Q: But what if it remains in file in sealed envelope? Does that mean it is “published” just because it is located in file (but inside an envelope)?

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550 JeremyNo Gravatar October 19, 2011 at 9:07 am

My understanding is that “sealed” means not accessible to the public (not published).

551 MaggieNo Gravatar October 31, 2011 at 12:09 pm

Checked at VA Zao/Ben posting. Stays in envelope not open to public.

552 MattNo Gravatar October 26, 2011 at 12:34 am

Can someone elaborate why:
1.55 says “In an original application filed under 35 U.S.C. 111(a), the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.”
yet,
35 U.S.C. 119 Benefit of earlier filing date; right of priority.
(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed; but no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country more than one year prior to such filing.

One says 12 months, the other says 4 or 16. What’s the difference?

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553 CamNo Gravatar November 21, 2011 at 2:56 pm

Matt,

I think the difference refers to the fact that, in order to claim priority from a foreign filing, you must file in the US within 12 months of your foreign filing date. In the event that you did not claim foreign priority at the time of US filing but filed in the US within the 12 month window, you can still claim priority to that foreign filing date within 4 months after filing in the US OR within 16 months from the date of your foreign filing (whichever comes later). If, however, you did not file in the US within 12 months of your foreign filing, then you cannot claim priority to your foreign application, and the 4/16 rule will not apply.
I hope this helps clarify!

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554 MattNo Gravatar October 27, 2011 at 12:13 am

35 u.S.c. 373 states that an international app designating the US if filed by an improper applicant shall not serve as the basis for the benefit of an earlier filing date in a subsequently filed app, but may serve as the basis of a claim to the right of priority under 119a-d

Whats the difference between serving as the basis of an earlier filing date vs. serving as a basis of a claim to the right of priority.

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555 maggieNo Gravatar November 10, 2011 at 11:46 pm

Matt I just read this in chapter 1800. Basically if there is an earlier national app that you want to claim priority for you can do it properly under the 16/4 rule. However, when you go national in the USA if it was beyond the 12 months filing you cannot get the benefit in your PCT–>USA national app.

To confuse you more. there is an additional “oops” 2 month window after the deadline to claim priority as well for international PCT apps. But again once you go into national USA you can not be benefit b./ca the USA rules, well rule, USA national apps.

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556 TSBNo Gravatar November 3, 2011 at 6:01 pm

Does anybody know how to get Adobe Acrobat 5 for Windows Vista? Can somebody please post a link…

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557 cordovaNo Gravatar November 7, 2011 at 3:27 pm

What’s KSR v. Teleflex and Bilski v. Kappos?

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558 Juris PrudenceNo Gravatar November 21, 2011 at 10:31 pm

New materials that we will be tested on, as of April 2011 due to changes in the law prior to that date.

Developments in the Obviousness Inquiry After KSR v. Teleflex
http://edocket.access.gpo.gov/2010/pdf/2010-21646.pdf

Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos
http://edocket.access.gpo.gov/2010/pdf/2010-18424.pdf

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559 Juris PrudenceNo Gravatar November 28, 2011 at 6:33 pm

Hello Cordova!
I did respond to this with some links but they were not posted (not sure why).

Here are the links from the USPTO site on KSR and Bilski to respond again.
http://www.uspto.gov/patents/law/exam/ksr_training_materials.jsp

Hope these get through. And good luck!

JP

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560 NGNo Gravatar November 7, 2011 at 10:37 pm

I took it a month ago and passed the first time. So most of the stuff posted before me will give hints on questions. But I will just give a bit of advice, since this website helped me a lot and I am not a good test taker.

I think one of the big things to remember is to have a strategy. I didn’t know all the questions on the exam, and studied a lot, but it all came down to strategy.

One strategy I used, which a friend taught me, was to go through each question and give yourself a minute, and if you don’t get it mark it, it should leave you about 1.5 hours and then go back and look the others up. Chances are after studying all of the questions in your study materials, previous exam and here you will be able to answer half in each part of the test on your own. Take this advice, it really helps, and I am not a good test taker and it was full proof. I did not know everything on the test but figured it out during the exam.

Really remember the pdf on the exam of the MPEP and the find buttons, and remember it is a really old version. That took me by surprise on the exam and messed me up a bit in the beginning. You cannot use the enter key to move to the next work, and there is no previous, and it must be the complete word.

Lastly, remember that there will be things you do not know. So don’t let it drag you down. I still remember reading about combinations and subcombintations.

But I think after doing the exam, and reading the previous questions posted above others, it comes to time management on the exam.

Hopefully that helps…

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561 futureJDNo Gravatar November 9, 2011 at 10:25 pm

Thank you all for your posts, I found this site three days prior to my exam. In such a short time I learned a lot. Unfortunately did not pass 11/9 I plan to retake it late January 2012. My exam had multiple repeats from 2003 and few from this site I will list them soon.
My next strategy is to practice taking old exams. Unfortunately I only spent 2-3 weeks understanding the basics and foundation of the subject and 2 weeks of practicing old exams. I will list the questions soon, from what I remember the exam focused heavily on appeal and obviousness.

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562 Juris PrudenceNo Gravatar November 21, 2011 at 10:29 pm

Hi JD – I’m taking the exam in Jan. 2012 also. Have you had a chance to recover enough to list those questions?

Thank you for doing this for the rest of us.

I wish you luck second time around ;-) !

JP

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563 futureJDNo Gravatar December 17, 2011 at 12:08 am

Hi JP
I went away to study for finals, sorry for the late response…
This is from what I remember from my exam in Nov.
Q12) 1.131 and 1.132 Affidavits
Q23) Broom
Q38) Piecemeal
Q50) Appeals
Q68) Hydrocyclone
However there were so many questions from previous ones…practice practice is my advice which i did not do as much.
I had many questions about appeal nothing on KSR or Bilski.

564 chemEEENo Gravatar November 10, 2011 at 11:41 pm

Warning; this is a long post
Passed 11/7/11, 1st try

Preparation material
I used PLI’s home course 2006 edition but did not look at or open the binders/books that came with it. I listened to John White’s subject lectures numerous times and used the Patware 9.0 software to get familiar with taking the exam.

Questions from old tests [no point listing them - YOU should study them ALL!]
Instead of just looking at just the old repeat questions, I did all the 2000-2003 exams completely until I knew them by heart (you need to know why the wrong answers are wrong, not just memorizing the right answer). This is critical b/c you are gambling on a getting a test with a lot of repeats. I did not get many old repeats at all, but I was able to recognize question variants which had the same concepts.

The new exam questions I saw from this site
-Mirror
-Spanish phone
-Velcro
-Mexican nationals
-Japanese patent
-Trade secret
-Electric Fan and Lamp
-Maintenance Fee Paid / Check Returned
-Death of inventor before application is filed
-Indefinite Claim using ‘high’
-Piecemeal
-Best mode

Brand new questions/concepts I remember from my test:

1.) you submit executed oath by inventors ABCD and realize B’s address is wrong – Which of the following is in accord with proper procedures to correct this?

I. new oath listing entire inventive entity and signed by all
II. new oath listing entire inventive entity and signed by B only
III. where A’s address is also found to be wrong, new oath listing entire inventive entity and signed by A and B only
IV. submit an ADS
V. new oath listing B and signed by B only

answer: you can do all of them except V; see 1.67(a)(2) and (a)(3)

2.) In accordance with the USPTO rules and the procedures set forth in the MPEP, all of the following is true, EXCEPT:

answer: A minor (under age 18) inventor may NOT execute an oath or declaration when he is competent to sign and understands the document that he is signing — see MPEP 409 (a minor can sign under these circumstances)

3.) A third party submits a publication which raises a question of patentability and initiates exparte reexam. Which of the following is in accord with the USPTO rules and the procedures?

I. a fourth party submits anotherpublication which raises a different question of patentability and initiates exparte reexam
II. the same 3rd party submits another publication which raises a different question of patentability and initiates exparte reexam
III. the 3rd party can submit response within 1 month of patent owner’s statement

answer: I answered all are true (I and II will be merged together under ; III – third party has 2months from service to respond un MPEP 2251)

4.) Which of the following applications cannot serve as the basis for a continuation?
answer: I chose ‘provisional’

5.) which of the following does not need to be submitted for recording of assignment?

a. the patent/application or copy thereof
b. the assignment doc or copy thereof
c. english translation of assignment doc
d. fee for recording
e. cover sheet

answer: A – patent/application does not need to be submitted (only identified)

5.) Question to identify which is false concerning a provisional

answer: know that you cannot file IDS with provisional

6.) Which of the following is most correct for properly claiming domestic priority?

a. 1st sentence of spec only
b. ADS only
c. ADS or Oath
d.1st sentence of spec and ADS
e. 1st sentence of spec or ADS

answer: I chose E

7.) Question about what you can do if Board submits new ground of rejection during appeal – don’t remember answer choices

8.) When can an IDS be considered an appropriate submission with a RCE?

a. after appeal
b. after allowance
c. after ex parte quayle
d. ?
e. ?

answer: I chose B based off the table in MPEP 706.07(h)

9.) Question about when restriction for combination/subcombination is appropriate – answer can easily be found in MPEP 806.05

10.) What document(s) is a copy of a signature acceptable? -not sure of answer

11.) Examiner sends requirement for information
-answer involved knowing that a petition to withdraw the requirement is possible but is not an appropriate response to stay the response period

12.) variant of April 2003 AM #48
In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following statements regarding a proper prior art reference is true?
a. Canceled matter in the application file of a U.S. patent may serve as prior art under 35 USC 102(e).
b. Canceled matter in the application file of a U.S. patent may not serve as prior art reference as of the filing date under 35 USC 102(a).
c. Canceled matter in the application file of a U.S. patent may serve as prior art reference as of the filing date under 35 USC 102(a).
d.?
e.?

answer – C

13.) Question about computer related subject matter -
-the answer had to do with the invention not being patentable when the sole practical application of the algorithm was in connection with the programming of a general purpose computer; from MPEP 2106

14.) these was a difficult question involving adding new matter to the specification. The addition is not made to Claim 1, but affects it indirectly. New matter is made into Claim 2 and directly affects. What should the examiner do?

I. ?
II. object to new matter addition in spec; Have practitioner cancel the new matter, Reject claim 1 under 35 U.S.C. 112, first paragraph
III. object to new matter addition in spec; Have practitioner cancel the new matter, Reject claim 2 under 35 U.S.C. 112, first paragraph
IV.?

answer: I chose II+III

15.) Question about when an examiner does not need to give a reason for allowance
answer – was choice saying MPEP 1302.14, when the examiner believes that the record of the prosecution as a whole does NOT make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning (without the ‘NOT’ in it)

16.) Question asking how to determine the distinctness of claimed inventions
answer – straight out of MPEP 806

17.) Question involving a prior assignment document recorded against an original application.

answer – involved knowing that the assignment document is applied to a divisional or continuation, but not applied to substitute or CIP (MPEP 306)

I’ve noticed that there has been many recent reported questions, so I hope others who have seen these can further elaborate on them.
-Pay it forward

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565 maggieNo Gravatar November 11, 2011 at 11:16 am

Thx! And Congrats :)

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566 Matt DNo Gravatar November 27, 2011 at 1:58 pm

Thanks for your post. You’re 1-17 may have been the difference in my passing. I copied some a yours in my post.

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567 ENo Gravatar November 13, 2011 at 1:26 pm

Thanks ChemEEE. MPEP 2283 states a second request for reexam will not be merged with the first request if it creates an undue delay of the first reexam proceeding. Could you please clarify whether your listed question 3- when reexamination requests are merged- had something about “and the later request did not delay the first reexam”? Thank you in advance.

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568 JurisprudenceNo Gravatar November 21, 2011 at 9:08 pm

Congrats on those of you who have just passed the exam. Your comments have been very helpful as I prepare. I plan to take the exam Jan. 2012, like Future JD. Just wondering if those of you who have taken it can tell me this: What other materials besides access to MPEP are provided? What are the supplemental documents? KSR cases? 112? Bilski?
Also, are they providing access through Acrobat 9 now or is it still 5?

Thank you all and much luck to those who are pre-exam!

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