Exam Questions and Concepts
Recent test takers indicate that the following “new” questions are in the USPTO’s database servicing the Prometric Patent Bar Exam. Please also note commonly repeated questions and old exams.
Q1) Red or Black Ink (Examiner’s Amendment)
Q2) Titanium Baseball (Pulic Use/Printed Publication)
Q3) Mirror (Inherent Function)
Q4) Submitting Tables on CD-ROM
Q5) Amending the Abstract – PCT
Q6) Obviousness
Q7) Claiming, Deleting and Reclaiming Benefit Claim
Q8) Missing Parts – PCT
Q9) Correcting PCT Applications
Q10) Suspended Practitioner
Q11) Digital Media for Gene Sequence – Biotechnology
Q12) 1.131 and 1.132 Affidavits
Q13) International Search Reports – PCT
Q14) Costa Rica and Sweeden – PCT
Q15) Spanish Phone – Design
Q16) Lip Gloss/Ship Bell (Experimental Use)
Q17) Velcro (Trademarks in Claims)
Q18) Small Entity Status
Q19) Mexican Nationals – PCT
Q20) Information requested from USPTO
Q21) Trade Secret Question
Q22) Germany – PCT / Patent Term
Q23) Broom
Q24) Japanese Patent
Q25) Electric Fan
Q26) Maintenance Fee Paid / Check Returned
Q27) Reissue (variant of Tommie and Jo)
Q28) Means plus Function variant of Door Handle (Determining Equivalence)
Q29) Death of inventor before application is filed
Q30) Canadian Patent Agent in the USA
Q31) Chemical Claim
Q32) User Pass
Q33) Indefinate Claim USing ‘High’
Q34) Investigating Deceptive Intent
Q35) 2 Month Rule for Final Office Action
Q36) Notice of Appeal
Q37) Terminal Disclaimer
Q38) Piecemeal
Q39) Advisory Action
Q40) Assignment
Q41) Documents Requiring Signatures
Q42) Missing parts in PCT Application (30 days)
Q49) Rejection after Allowance
Q50) Appeals
Q51) Best Mode
Q52) Multiplicity
Q53) Reissue/Filing Amendment
Q54) Australia (30 Month) – PCT
Q55) Basic filing fee
Q56) Restriction Requirement / Continuation Application
Q57) 102(a): Need to file foreign language translation
Q58) Exam Concept – Appeal
Q59) PTO-892
Q60) Anticipation
Q61) PCT Publication
Q62) 102 and 103 Rejections
Q63) TP Submissions
Q64) Restriction
Q65) CPA
Q66) Claims
Q67) Obviousness
Q68) Hydrocyclone
Hi all,
Thanks for putting this one together.
My test at Prometric here in Lowell, MA, will be Monday, Dec 17th. I mainly work with the PLI material and also took their class.
When did you start this web site? Have not seen it before.
Regards,
Rolf Seichter
978-852-5803
From the Forum: “Future test takers should be very deliberate in reading answers that appear to be quotes from the MPEP. I found at least 3 instances where the answer was a long word for word quote of a case holding, but differing by one or two words toward the end of the quote. Someone working quickly would likely fall into the trap of reading the first couple of lines and assuming that they had found the right answer. I’m a bit fuzzy on detail right now, but in one example it was a 3-4 line quote and the end of the answer used ‘anticipation’ whereas the holding in the MPEP used ‘obviousness.’”
Just thought you should know that the exam simulator from Soft Area 51 shows to be from Catprep when you attempt to download it.
Other than that, GREAT WEBSITE! Hopefully it will be of use to me in the last week I have before the exam.
I really benefited from using this website and passed yesterday! Thanks for your help!
Thanks for putting this together! I’ve been practicing law for many years, spent hundreds of hours studying, and reviewed hundreds upon hundreds of questions – but NOT old exams. The result? I failed the test (62%) and need to take it again — though I had noticed how many exam questions had been repeated after the fact!
The upshot? Review old exams ad nauseam — and remember that the USPTO’s goal is to trick test-takers — not to test them on basic, fundamentals. Indeed, the test is sadly not a measure of what you know at all; it’s an entry barrier in its purest form :-)
Warmest thanks again!
I passed the exam yesterday May 3, 2008 in Glastonbury CT.
First I would like to thank everyone for putting together this wonderful website and especially for the one who initiated it.
It was of tremendous help besides the PRG course.
Here are some of the repeat questions I had:
Oct 01 AM
5 14 24
Apr 02 AM
50
Oct 02 AM
1 version 21
Oct 02 PM
5 version 16 version
Apr 03 Am
2 8 22 30 31 37 44
Apr 03 PM
3 version 11 12 16 28 32
Oct 03 AM
4 6 version 7 8 9 22 23 36 44 50
Oct 03 PM
2 4 10 13 14 17 32 38 40 43
also
hairgel
mirror
4-5 PCT questions general stuff until when you can add the benefit of the priority date, 102e dates
Indefinite Claim using ‘high’
Maintenance Fee Paid
primary reference in 102
non-signing inventor (can file his own patent and then interfere something like that)
the lip gloss kissing
a version of Einstein ex prate vs. inter parts
Spanish phone design question variant 102d
2 month rule for final office action
Number of Rejections Required for Appeal purposes when count from parent to continuation
Claim of priority to Japanese national app to overcome prior art
How /when to claim benefit
Restriction Requirement / Continuation Application
Appeal: New ground of rejection
Reissue/Filing Amendment
best mode question
supplement oath in reissue
I think that you have to really know the exams from the past 2 years.
You can search the MPEP by chapter (so you have to know where to find the answer) or you can search the index of all the chapters. You have the “find” and “find again” option. the MPEP text is pretty small which can be hard to read. You can move around the window.
For the questions I wasn’t sure such as: what is in accordance with the MPEP rules or what is not in accordance or questions type ….except
I knew in what chapter to look and I typed the main word in “find” and I got the answer they were looking for.
The first 50 questions I answered in 1 hour so I had 2 hours to review and correct.
The other 50 I did in 2 hours and had 1 hour to review and correct.
I had a 60 minutes break which starts immediately after the first 3 hours. I went in my car had a bite to eat and reviewed the 2003/2002 exams with answers. This really really helped.
Good Luck to everyone!
And thank you again for everyone’s advices and posts!
“Several questions were new, and a surprising number were ambiguously written. Disproportionately weighted subject matter was: actions during appeal (i.e. reply briefs, transfer from appeal back to prosecution, action by you and action by examiner after appeal); restriction requirements; broadening reissue (see below); PCT (several questions covered proper claims for benefit of priority of PCT application in fact patterns with complex foreign, international, and US priority situations, and the effect of such complicated applications as prior art under 102(e); questions (as usual) about filing date, especially when applications were filed with missing parts; and a surprising number of questions about appropriate actions to be taken in the event of deceased or incapacitated inventors. I’d suggest drilling on this last topic, covered in MPEP 400, but its so easy to find during the exam you shouldn’t bother memorizing it. Instead, memorize the Oct 2003 exam. You will be glad you did.”
I took it today and passed. As others have said, few repeats, lots of PCT (in the afternoon) and appeals. Two, almost identical, questions on what to do when the Board enters a new ground of rejection, as in what the examiner does after that.
Regarding the search function, if you enter in a string of words, it will search for that exact string, and you don’t need quotation marks. I found this especially helpful with the questions asked in the negative, where you have to find which phrase was untrue. If you could search for a block for 4 or so words in the appropriate MPEP section, you would likely find the paragraph that listed all the answers, absent the one that was ‘wrong.’
Regardless of the fact there were so few repeats, I found it very helpful to have done almost all the old exams, as it starts to make things pop out as right or wrong. Learn to spot the questions where you can just search the relevant section of the MPEP for the paragraph with a list of the answers (‘Which of the following is NOT a criterion for determining xxxx)
As mentioned above, some questions about correcting a request for priority in a PCT application, one where the patent # referenced as the priority app was correct, but the date wrong, and you needed to determine the latest date by which the priority could be corrected. I believe it is the correct priority date + 16 months, (the 4 month alternative didn’t come into play).
Not sure where to put this. I took the exam today and passed. I did a ton of old questions. However, I would say there were only about 15 repeats on the test. I know there were only 6 in the morning. Appeal, reissue, reexamination, and PCT were hit hard. There were also quite a few questions on missing drawings. I still recommend doing old questions as the best way to study. The repeats gave me plenty of time to look up the ones I did not know.
Just passed today. First of all, don’t do like me and get yourself all worked up over the posts (here and the intelproplaw forum) from the last week or two saying “few repeats”, etc. While there may not have been all that many word-for-word repeats, the test was still very manageable. So long as you have done those exams from the past couple of years and know why the answers are what they are, and looked at the new questions people have posted here/patentbarquestions/intelproplaw, you should be fine. The questions all came from those areas of the MPEP, nothing all that obscure (unless it was a question someone mentioned which was obscure, which we know where to go for that). While I didn’t have much time to screw around, there was plenty to look up what I didn’t know for certain.
By the end of each section there was maybe 5 questions I didn’t know for sure I had the right answer, but still had a pretty good feeling.
I’m going to try and remember what all was on mine and post it here soon, but off the top of my head it seems very similar to those which people posted about over the past month or so.
(Disclaimer: While my exam was similar to those discussed recently, I’m sure those that posted about having a much more difficult version were correct in their assessment. But still it didn’t do me any good to worry myself, and looking back I shouldn’t have, they can’t change the exam that rapidly. Just be prepared for the topics discussed and have a general idea of where to look in the MPEP for things, it’s not like we can memorize that whole thing.)
Hi everybody,
I took the exam day before yesterday and missed by three points. Although, I don’t remember many questions other than those that people are already aware of from discussions (but see below), there were certain areas that I found were tested far more heavily than I had expected.
This was particularly striking because some commercial aids courses emphasize that greater than 80% of the questions come from Chapters 600, 700 and 2100. Although this was fairly accurate description of old exams, this is not at all true now. The portions that were tested very heavily were:
1) Chapter 300 – ownership and assignment, specifically assignment;
2) Other somewhat unexpected material were, “Requirement for information”, “protest”
3) As expected RCE figured as part of many questions.
4) From chapter 2100, the only thing really tested was “Obviousness” – many questions with quite confusing choices.
5) Just to confirm, there were the following questions
(i) hairgel question (prior art); lip gloss question.
(ii) claim counting question whose answer is 147,
(iii) the question where one inventor refuses to file with the other and each inventor has independent set of claims; what should the assignee do? file divisional reissues? I thought that none of the choices were correct.
(iv)There were one or two alloy questions.
(v) There was a question that appeared to test what is required for a range to be anticipated. Is a data point in one region enough or does one need points across the entire range? MPEP has some discussion about a a trend being sufficient. I thought that is what was being tested, but a trend requires more than one specific region to be tested.
(vi) there were probably two questions on “means plus” – testing I believe the concept of “equivalence”.
(vii) There was that question which tests what the Board can or cannot remand the examiner to do.
(viii)There was the question which asked whether the decision of the CAFC that upheld the validity of a claim would be binding on the patent office or not.
(ix)There were two questions that tested what a final rejection was in the context of continuations.
(x) there was a question about missing pages in the specification
(xi)There was that question about the painkilling effect of the compound Z. The application was for an intermediate. Z posseses anti cancer properties, which somehow is considered to be “incredible utility” by the patent office
(xii) There was one question that asked what the appropriate course of action would be if the patent for which the maintenence fee was being paid was not properly identified.
(xiii) There was one question about requirements for recording
(xix) No Moondust question. No Lancer toothbrush question.
(XX) I think that question about 150 versus 300 F where the correct answer has to do with an affidavit was there.
(XXi) No question on patent term extension and adjustment.
(XXii) No question testing knowledge of CPA
(xxiii) I think they had the small entity question where the small entity was claimed in error, a good faith mistake, and hence what should the applicant do?
Anyway, this is all I remember. I greatly appreciate the contributions of everybody. Thanks.
Sanjeev
Thank you very much for this website. Great resources!
where are the questions 43 to 48?
Sam
12/11/08
Took the exam this morning at prometric and PASSED!. I was only scoring around 65-70% on the prior released exams-however i did guess quite often as lookup on my little laptop was a pain. I also only took/practiced the 2003 exams, however i did read through all the questions on this site as well as patentbarquestions, one time each. I also used the PLI audio course.
I estimate that i got about 10-15 verbatim repeat questions that in each section. There were also a couple of questions that were looking for what is NOT in accordance with the MPEP although in prior exams they were looking for the one answer in accordance with the MPEP. I also concur with other posters that there are quite a few PCT questions that i received in the afternoon section. Happily, the PCT questions were the same ones mentioned on this site.
Specifics that I can recall,
Tribell
mirror question
quite a few questions on what happens after board gives new ground of rejection
quite a few questions on death of inventor
two nearly identical questions about swedish inventors and costa ricans question
Japan 45 days
obviousness based on ranges-34.9 versus 35
also had the spanish phone design question. however, it was changed such that the right answer is no longer “give up”. this was NOT one of the answer choices.
There were plenty of repeats to make time management not an issue and i was able to look up every question rather effectively. This test is extremely manageable. Good Luck to all future test takers!
also, question on Suspended Practicioner, Piecemeal Examination, Australian application files a PCT within 30 months but claims priorty in oath and declaration and not in the specification (althou, this cite says expiratin of 30 months),combination /subcombination, 112 6th paragraph “means for” “step for”
this website is extremely helpful. keep up with it.
1
http://1 | 202.75.39.100
1…
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From Repeat Questions, 2008/11/11 at 8:26 AM
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upnorthguy
feb2008barexam@gmail.com | 65.207.2.2
I took the exam yesterday in Maryland. Missed it by a handful.
The look of the exam is near perfect match to the Easybarpass software (MPEP is a bit different) and the minimizing of the window is odd- you can make it a bit smaller, move it around, but you cannot toggle between the MPEP and the exam window- you have to close the MPEP. It does open to the same chapter/location when you reopen it though, which was helpful.
8 questions on PCT
I saw quite a few repeats and a few variations (~25 total):
-52 tables
-Potter
-Smith (DRAM)
-Japan 45 days
-file as small entity and then find out the next day that your client licensed to big entity the day before (can’t remember the exam)
-Laurel, Abbott, Hardy
-What can be filed by fax
-two questions on oaths (1.63) (one was which of the five is unacceptable, missing signatures, filing three oaths for three inventors (one signature per oath), missing dates)
-Parking meter (10/15/03 PM #28)
-10/15/03 AM #26 variation
-question on what assignee not yet of record can do (four they can’t do, one they can..file an amendment, submit small entity status, something with a practicioner (hire/fire))
-one related to inventor that died (where he had assigned rights to company) who can keep prosecuting until someone intervenes
-Piecemeal examination
-Bloc
-Smith laminate (variation)
-Obviousness (IX on mypatentbar)
-Board decisions (XXIII on mypatent bar) 4/15/03 AM #37
-Design patent in country X (variation)
-Titanium baseball
-Tribell
-Moondust
-Foil wing airplane
-lip gloss
I need to know the old exams a bit better for the next try. There were a few that I recognized as repeats (or variations) that I later checked that I missed (picked the wrong of the last two choices)
Quite a few dealing with appeals (5-6).
I made up my scratch paper the way someone else suggested and I thought it was helpful:
Answers Confidence (1-10) Keywords, MPEP sections
1. A [s]B[/s] C [s]D[/s] E
2.
3.
I numbered 1-50 for each session (during the Prometric tutorial, where you get 15 minutes to review before the exam begins), then as I went through I would put down letters and mark them off as I ruled them out. I also put down my answer and circled it. That was helpful for a couple of questions where I forgot to indicate my answer on the computer screen so when I went to review and checked for the next unanswered, I could refer to my sheet and fill it in.
One thing that I did in the AM session, that I thought didn’t work that well (for me anyways) was I went through and read and answered all 50 questions. That took me about 1 hour 45 minutes. Then I went back and started looking at the questions I had marked…which was too numerous. I had about 30 of the 50 that I wanted to check something on, and I got bogged down trying to find some of them. I think the last 10 or 12 questions I had marked I didn’t get to look at again.
In the PM session, I changed it up and looked up things in the MPEP as I went, keeping a good eye on my time to make sure I wouldn’t end up with a big pile of unanswered questions at the end. After doing it this way, I marked only 3 questions and finished with about 7 minutes left. I had really looked at the 3 marked as much as I thought I could, but I did a bit more digging on them in the MPEP to confirm or reject the answer I had settled on.
I thought my PM section was much easier than my AM, but that could have been flavored by more beta questions. Hard to tell for sure.
From Exam Questions and Concepts, 2008/11/05 at 10:55 AM
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Mars Caterpillar
fuduan_zju@hotmail.com | 24.148.77.248
I just took the patent bar and passed on my first try. This website has been really helpful to me, so I guess it is time for me to make my contribution.
I went in there expecting to see no more than 5 repeats, but it turns out that I saw around 20 or even more repeats on the exam. So make sure you know the answers to the 02 and 03 exams!!! I did the 02 and 01 exams too. But what really helped was going through this website and the post on interpolaw. I also spent the day before the exam going through all 200 questions in the April and October 03 exams and memorize the questions that I was not able to find answers for.
Spanish phone – variation
Aroma Kit
What an assignee not of record can sign – small entity status statement.
a question with the answer “document affecting title”
(this one and the assignee question above are just questions that I still have no idea where to look up, but I just memorized the answers)
PCT priority date questions
electric lamp with switches on different places, but I vaguely remember seeing John White’s comment that they give credit to answer A, which is the making the argument that the prior art does not disclose an electric power outlet or something like that
Make sure you know how to calculate the PCT priority dates and correction of inventorship!
many appeal questions – mostly new ground in board’s rejection
Two joint inventors jointly appoints a practitioner to file their patent application. Then one dies, whether the practitioner needs to obtain new power of attorney from heir of the deceased inventor
Potter question
priority dates in CIP application – claims 1-10 supported by original parent application but claims 11-20 are not. There is a prior art reference after the filing date of the parent application but before the CIP application. So the examiner can only reject claims 11-20 but not claim 1-10.
Mirror question
I had two 102(e) question as well as questions disqualifying prior art for common ownership under 103
Also whether you can use fax to submit CPA/RCE
request/requirement for information – examiner can request for information reasonably necessary for examination
A new question – in a reissue application, you want to 1) broaden the claims, and 2) delete an inventor. The question is whether the inventor being deleted needs to sign the oath for reissue application. The right answer is no.
Costa Rico question – the USPTO will accord an International filing date for the application and forward the application to IB. Actually I had two questions, the other question is identical except that the applicants are all German nationals.
150 v. 300 F question
From Exam Questions and Concepts, 2008/10/22 at 9:20 PM
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emerson
sganow@msn.com | 99.138.183.213
In the original post, why 30 days when 20.5 and 20.6 defer to 20.7 which states “two months from the date of the invitation.” (a (i) and a(ii)
From Q) Missing Parts (30 days) – PCT, 2008/10/21 at 2:39 PM
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hblyxnmk
http://www.google.com/search?q=ykfkuzqz | 211.75.183.109
hblyxnmk…
hblyxnmk…
From Repeat Questions, 2008/09/26 at 1:43 AM
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Testtaker
tnjones@iupui.edu | 38.115.157.133
How do you subscribe to this blog to get access to the old exams and answers? I signed up for WordPress but that obviously wasn’t enough.
From Old Exams, 2008/09/23 at 10:37 AM
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Toxidyne
nwitchey@yahoo.com | 70.181.95.194
I took and passed this exam today (about 1 hour ago).
This site proved most helpful both due to listing repeat questions as well as listing new questions that have been encountered.
The repeat questions I had are already listed.
New questions included the following:
- Mirror question
- Piecemeal examination
- PTO-892
- Appeals (MANY ON APEALS ESPECIALLY ON NEW GROUNDS)
- Spanish Phone
- Sweden, Germany, and Costa Rican (Germany and Costa Rica were identical.
- There were three questions on death of inventor at various time.
A likely beta question included one with regards to Accelerated Examination as opposed to petition to make special (see 708.02 in new MPEP).
With respect to appeals, there were three questions specifically related to an appellant filing amendments to overcome a new ground of rejection give by the board.
From Study Guide, 2008/09/08 at 7:22 PM
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upnorthguy
feb2008barexam@gmail.com | 65.207.2.2
Eunzukim-
Yes, only 90 questions are graded. You only need 63 correct out of the 90 (still 70%, just like the old requirement of 70 correct out of 100).
See http://www.uspto.gov/web/offices/dcom/olia/oed/unofres19aug05.htm:
“As previously announced, as of June 9, 2005 the registration examination is using the Eighth Edition, Revision 2 of the Manual of Patent Examining Procedure (MPEP). The computer-delivered examinations include 100 multiple-choice questions, and only ninety of the questions will be scored. Accordingly, to pass the examination a candidate must correctly answer seventy percent (sixty-three) of the ninety scored questions. Each of the scored questions has been used on previous examinations forms and had been psychometrically analyzed to ensure the question provides a useful assessment of a candidate’s legal qualifications.”
The beta questions do not count towards your score, but it is difficult if not impossible to to tell which questions they are (like the beta questions on the MBE for those law students out there) so you just end up answering all 100 questions (hoping that 10 of your incorrect ones are the beta questions!).
From Prometric Patent Bar, 2008/09/05 at 8:44 AM
Thanks for this site guys! Looking at the old questions here definitely helped me. My test (Feb 2009) had surprisingly many questions about the following topics: Appeal details, e.g. Board enters new rejection, PCT (in combination with priority claim complications, e.g. including provisional applications), non-obviousness, assignment (esp. vs dead inventors), what you can’t fax, reissue or cert. of correction.
My recommendation for test takers: keep repeating the 2002 and 2003 exams until you get 95% on all of them because the majority of your questions will be repeats (or obvious variations).
Good luck!
Thanks to this site, I took the test 2/10 and passed the first try.
Some notes I noticed if I could help others are…..
1.like everyone else says, the 03′ 02 repeats are SUPER IMPORTANT. You should also study the 01, and 00 if you want to make your test successrate go up. Good 30% or more could have been a repeats or variations, but just don’t only depend on that to pass since you will definately not.
2.I took the course from Patentbar.com
3.I noticed that my first half was a disaster. But don’t get discouraged because I remember other person saying there were many wacky and never seen type problems in the first half too.
May be it is possible many of the 10 Beta questions are chunked together. The second half for me was WAAY easier and there were little tricky problems. Marked like 25 problems in the first half of the test, but only market 12-17 problems in the second half.
4.I did not rush through the exam. I studied enough so that when the subject matter I don’t know came up, I knew not to look too long in the MPEP until I skip. Didn’t even use the scratch note and paper at all.I spent good 2-7minutes a problems. If I was sure I can find the answer, I may even have spent little longer near end of a session since even 1 % could make diff between pass/fail. I noticed rechecking after finishing for me during practice didn’t make that much of a difference. Trusted first guts.
I took and passed the test about a week ago, and will post various comments under those sections to which I believe they likely relate.
There were TONS of questions on reexam, reissue, and appeal. Quite a bit on the PCT, though not unexpectedly so. Those first 3 were a very large portion of the test, and I am positive that a review of only the PLI materials would not have permitted me to pass.
There were also a ton of questions from the Oct 2003 exam — make sure you know those.
Here are the known questions that I am pretty sure were on my test:
- Mirror
- PCT app in wrong office (3 questions on this)
- Door handle
- 2 month rule
- PTO-892
- Multiplicity
- Signing small entity request by non-owner
- Death of inventor / who can proceed with prosecution
- Requesting refunds
- Divisional reissue
I’m pretty sure that there were a few others, but these are ones I’m nearly certain were on the test.
Thank you for the excellent website.
Just a quick question to Matt B., what other materials did you use to study reexam/reissue/appeal (other than PLI)? Thanks your help!
I did extra questions on with the PLI software on reexam/reissue/appeal/PCT, just because I knew they would be under-represented in the old tests. Beyond the PLI materials, I read the outlines on this website for each those topics, probably two or three times each. I also read through the “key things to know” from patentbarquestions.com.
I did not read the MPEP on these (or any other) topics; although I can’t say that I would advise against it, I just didn’t think I personally needed to. I did read various sections of the MPEP on the most important stuff, like 102 and obviousness, but it was probably less than 50 pages total. However, if I was taking the test again, I would definitely read more of the MPEP on those newly important topics.
I also went through ALL the reported questions on both this site and patentbarquestions.com. Many of these questions were on the exams, and I am confident I would not have passed had I not studied these questions. As a bonus to going through them, there will be a few that are automatic answers that will save you 3 minutes, giving you extra time to look up the answers on the ones you aren’t familiar with.
There was a question about a date format mistake for PCT applications.
Application was filed on 01/04/2002. The applicant received a notice from the Office that application number 10/123456 as provided by the applicant did not match the PCT filing date of 04/01/2002 and that the applicant must make amendments to parts of the application.
What is last date till which the applicant can make amendments to the PCT app.
My understanding was that the MM/DD was swapped with DD/MM.
TO the question of “MM/DD was swapped with DD/MM”, i believe that i had seen similar report somewhere in this website, but just couldn’t find it any more. Can anybody remind me please? thank you.
Had a Protest Question on my exam today:
-Guy wanted to file a protest basted on public use or on-sale (ok per protest) but the application alread published but the 1st office action had not yet been received.
Will office “consider” protest? I got caught up on the when the MPEP says (not verbatim) protests will be entertained by office when either app is not published or notice of allowance is given, whichever happens earlier.
My brain crashed on the word ‘earlier’ and all the anwers looked like the lawyers face in ‘fear and loathing’ after he took the adrenal gland but one of the answers that I chose had to do with them not accepting it (I think) but there being a potential for them to still consider it. Another answer said they would do nothing.
1901.04 WHEN SHOULD THE PROTEST BE SUMBITTED
Except where a protest is accompanied by the written consent of the applicant . . ., a protest . . . must be submitted prior to the date the application was published . . .or the mailing of a notice of allowance . . ., whichever occurs first, and the application must be pending when the protest and application file are brought before the examiner in order to be ensured of consideration.
A protest submitted after the mailing of the notice of allowance will not knowingly be ignored if the protest includes prior art documents which clearly anticipate or clearly render obvious one or more claims. However, the likelihood of consideration of a protest decreases as the patent date approaches.
1901.06(V) PROTEST FILED AFTER ALLOWANCE
OR THE PUBLICATION OF THE APPLICATION
A. Without the Written Consent of Applicant<
If the protest is submitted after the publication of the application . . . or the mailing of a notice of allowance . . ., whichever occurs first, and is not accompanied by the written consent of the applicant, it should not be entered in the application file.
MPEP seems ambiguous…on the one hand, 1901.04 seems to say your protest might be considered even if it is late if, e.g., your protest makes a strong case for a 102/103 rejection. But then 1901.06(V) seems to say if you're late and you don't have written consent, your protest doesn't even get entered, let alone "considered" by the examiner.
Had a new counting claims question:
-How many dependent claims for fee calcu purposes. (I guessed 8)
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
Had another PCT today:
Something about Article 19 amendments and the answers were something like:
a) can only amend claims and must send to Int Bureau or R/O
b)
c) can only amend the claims and must be sent to Internations Bureau (I think I put this one)
Had the exam today. Many, many, many questions on appeal! There were only about 4 questions on PCT.
Other tested topics were: amendments, change of inventorship, change of addresses, Certificate of Mailing, and lots of obviousness questions.
Repeated questions: titanium baseball, lipstick, tribell, broom handle, submitting tables on cd-rom, mexcian national, chemical claim, piecemeal, small entity, best mode, and hydrocyclone. I recall that the discussion for all these questions above was pretty good. But for the CD question I am sure that the correct answer today was: “submission is improper because none of the tables exceeds X pages in length and each CD must be submitted in duplicate”
! Also had moondust, Laurel, Abbot and Hardy, Smith Laminate, Bloc, Smith DRAM, Mr. Brick, and melting point.
Also, there were at least 4 questions on reissue and 3 on reexamination!
….and I passed :)
Good luck to everyone
NYpatbar,
do you remember any of he appeal questions?
Also, what is the change of address question?
Thank you
Amy:
This is what I can remember on Appeal:
1) Board affirms examiner’s rejection and also enters a new ground of rejection. What is the process from there? Answer: From MPEP 1214 (I) verbatim: “Prosecution before the examiner of the 37 CFR *>41.50(b)41.50(b)< rejection. If the application becomes allowed, the application should not be returned to the Board"
2) There was a question directly from 1214.06 (II)
3) Question on the time period in which appellant can correct a noncompliant appeal brief. All the answers centered around the language in 1205.03. I chose (E) as the correct answer: "1 month or 30 days from the mailing of the notification of non-compliance, whichever is longer, or 2 months from the filing of the notice of appeal, all within the period for response to the office action [which would be 6 months (or 2 + 5 = 7 months)].
4) Question directly from 1211. It asked “Under what situations does the Board have authority to remand to the examiner?” And it listed a couple of choices which are verbatim found in 1211. I chose the answer with ‘all of the above’.
Reexam & Reissue:
1) There was a question that required you to know that a reexam and reissue can be coupled together.
Change of Address:
1) If the inventor’s address is listed incorrectly what can/should be submitted to correct this? Answer choices I narrowed it down to were: supplemental oath and ADS.
Certificate of Mailing:
“What cannot be given a date if sent with a Certificate of Mailing?” — Just go through the list in MPEP 500.
Protest:
There was a question directly from MPEP 1900 Protest. Question stated that the protest was filed after publication and asked what the examiner should do. I answered that “it should not be entered in the application file” from MPEP 1901.06 (V)(A).
1 question asking, “In which of the following circumstances should an examiner NOT use a ‘Reasons for Allowance’? It was one of those questions with I, II, III and you had to choose. The answer is directly in the MPEP if you search for ‘Reasons for Allowance’ in MPEP 700 i think.
2 questions on Certificate of Correction. One of them asked what you should do if you file a reissue after obtaining a certificate of correction in the original patent. I answered that you should include the changes made by the Certificate WITHOUT underlining, etc. when you file the reissue. The other question asked about how to correct an inventor’s name in an issued patent.
I don’t know if this helps because I can’t remember the questions and answer choices, but I am very confident the sections I have listed are the correct references. So, if you just look up those sections, you should be able to recognize the answer quickly.
re: examiner’s reasons for allowance
1302.14
In most cases, the examiner’s actions and the appli-cant’s replies make evident the reasons for allowance, satisfying the “record as a whole” proviso of the rule. This is particularly true when applicant fully complies with 37 CFR 1.111 (b) and (c) and 37 CFR 1.133(b). Thus, where the examiner’s actions clearly point out the reasons for rejection and the applicant’s reply explicitly presents reasons why claims are patentable over the reference, the reasons for allowance are in all probability evident from the record and no statement should be necessary.
When an examiner issues a restriction and the applicant fails to make any election, what is the consequence?
I just do not know the answer.
Can anyone help me to understand the difference between priority and prior art. I believe that this the nub of question #40 of the 10/03-pm exam. What is the 102(e) date of a single patent application filed first in another country, then as a PCT international after 11/29/00 (properly in English and designating the US), and finally in the US, with each application claiming priority from its predecessor? I read the answer to Q40-10/03-pm to say that the effective filing date of this application is that of the foreign filing, and its 102(e) date to be that of the international filing. Is this right?
Thanks, Art Williams
Can anyone help me to understand question #7 on the 10/02-am exam? I read the fact pattern to say that the applicant combined a known material with a known process to obtain a new material with new and useful properties. I read the PTO answer to be inconsistent with the question in saying that the material and its properties cannot be affected by the process, when the question says that they are, in fact, affected.
Thanks, Art Williams
In regards to post #33:
The “prior art” generally refers to the collection of references comprising of patents, patent applications, publications, etc. that deal with the same subject matter of the patent application under examination. The examiner will always compare the patent application under examination with the prior art to see if the invention was already anticipated or rendered obvious.
“Priority” refers to the fact that a later filed patent application may enjoy the benefit of the filing date of a prior filed application if the prior application provides an enabling disclosure for the claims in the second app. What this means is that all the prior art having publication (or sometimes filing) dates before the second app but AFTER the first app are disqualified because they are no longer “prior”. Thus, you always want to shoot for the earliest possible effective filing date by claiming priority so as to decrease the number of references that constitute “prior art” (even if it means shortening the life of your patent).
Remember that eventually the current patent application under examination will ITSELF BECOME PRIOR ART under 102(e) against future patent applications. The date that a patent application becomes prior art is referred to its 102(e) date and MAY BE DIFFERENT FROM THE EFFECTIVE FILING DATE, as is the case for this question.
In this particular question, the fact pattern closely resembles Example 4 in MPEP 706.02(f)I. Since the PCT app was filed after 11/29/00, designated the US, and published in English, the IA filing date is the 102(e) date. However, as you correctly noted, the effective filing date of the application is that of the foreign filing.
Thus, there are 3 dates for every application:
1) The date on which the patent term begins
2) The “antedating” date, i.e. effective filing date
3) The 102(e) date
Sometimes they are same, but most of the time they are not.
As for #7 on the 10/02-am exam, I think the issue is this:
The publication discloses the SAME composition as the patent application (the aluminum and titanium alloy). If the composition is the same, it must be that each product contains the same inherent characteristics. It doesn’t matter whether or not this characteristic is poor ductility or great ductility because the alloy itself is what’s being claimed. Thus, since the material is the same, it doesn’t matter how it was made….it was already anticipated.
Now, the applicant may be able to file a patent for the PROCESS of microstructure refinement (although probably not because it was already well-known), but certainly not for the alloy itself. Incidentally, it is true that “unexpected results” may overcome obvious type rejections, but only if there is ample evidence (not just arguments). However, I think this is an anticipatory type rejection.
Hope this helps….
Duty of disclosure.
Does anyone know whether the following two statements are true?
1, Statements made in information disclosure statements are not binding on an applicant once the patent has issued since the sole purpose of the statement is to satisfy the duty of disclosure before the Office.
2, Since the issue fee has been paid, Al no longer has a duty to disclose to the Office material prior art. He is under no obligation to submit the prior art reference to the Office.
Passed the exam today and wanted to contribute some questions that haven’t made it to this forum. In addition to the usual ones listed above, I encountered the following:
An appeals questions related to filing a second appeal after the first appeal was rejected, and the applicant got rejected after reopening prosecution. Which of the following is correct? (from MPEP 1200 ver batim)
1) If the rejection under 37 CFR *>41.50(b)41.50(b)41.50(b)< is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered.
Answer = 1, 2, and 3 are correct
Another question on who can sign a disclaimer, all of the following are correct except:
A) inventor only where inventor has not assigned
B) inventor + assignee of part interest
C) assignee of part interest
D) assignee of entire interest
E) cannot remember this one
I choose D.
Thanks again to everyone for contributing. You're awesome.
Cindo,
congratulations on your pass. Would you mind eleborate on the appeal question? What are the other answer choices (i.e. 2 and 3)?
Also, why assignee of the entire interest (D) cannot sign terminal disclaimer? Did you mean (C) assignee of part interest?
Thanks.
Sorry, the above question should have read:
An appeals questions related to filing a second appeal after the first appeal was rejected, and the applicant got rejected after reopening prosecution. Which of the following is correct? (from MPEP 1200 ver batim)
1) If the rejection under 37 CFR *>41.50(b)41.50(b)41.50(b)< is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered.
Answer = 1, 2, and 3 are correct
Passed the exam. I had the following questions:
MANY on appeal – 37 CFR 41.50 (b)
Potter (altered, not as in old exams)
Mario Lepieux (also different)
Mirror question
Death of Inventor
Some bizarre question on PTOL 892 (possibly one of the 10 test questions?)
Melting point
MANY on reissue
A few on PCT
Many on obviousness (had to scour chapter 2100 and they were all word-for-word)
Japanese 45 days no FFL
I did not have many repeats, but when I got them, I just answered them without thoroughly reading them – I had no time!
I passed the Exam on the first try the other day. My strategy was:
1) Watched John White’s PLI videos
2) Take and commit 2003/2002 Exams to memory.
3) Reviewing the new questions submitted on this site.
Some of the questions I remember were:
Mirror question (chose parallel answer)
Japanese 45 day
147 multiple dep claims question (slight variation)
Melting point
Red ink
“Unexamined German” applications not 102(d) art
CIP to french phone design patent (can’t do it; makes it 102(d)
fruity lip gloss – using it as a gag is public use (no experimental)
Laurel, Abbott Hardy
Hair Gel – ex parte reexam
Reexam certificate open to public
Assignee without full interest can still sign small entity
filing petition for unpaid maintenance fee
Compound Y
DRAM
5 steps to crossing road
Piecemeal examination (just search section 2100 for “piecemeal”)
PCT questions – 16 months from priority date to correct
I had lots of repeats which I read briefly to make sure they weren’t altered at all and then I moved on quickly.
I passed the exam (second try) few days ago. I want to thank everyone on this web site for their valuable input. The test was a challenge for me because (a) I am not a lawyer or a law student and (b) The last time I took 6 hr, exam was few decades ago when I was in college. (Just turned 65!).
Here is how I prepared for it.
(1) I purchased 2009 PLI material and used it extensively. Their Study Guide is condensed version of MPEP and it includes only the material that is on the test. Read the guide book 2-3 times. PLI gives you 38 audio tapes of which I copied key chapter’s tapes on my ipod and listened to them repeatedly during gym workout and during driving to & back from work. The most useful PLI item is their Patware software (9.0)CD. It has 2002/2003 tests and additional practice tests including custom exams. Did all 2002/2003 tests over & over again until I got over 90%. Same for all other tests on the CD.
(2) Went over 68 or so repeat questions listed on this web site until I understood the concept. Also did few 2001/2000 tests to make sure I can handle unknown questions.
(3) Practiced “Look up” items in MPEP with key words and timed it to make sure I can find ans. in less than 3 min. or better
During the 6 hr. exam………….
(1) I made three passes. During the first pass, I handled all repeat, familiar and date related questions(102 , PCT). If quesion was long or unfamiliar or weird looking, I skipped to the next. I had 45-50 min. leftover. During second pass, I tackled “look up” questions and covered most of the loeftover test. I had 10 min. left at the end to cover questiones that were marked for reviews. Some questions related to 103, 112 & appeal were in the “look up” category.
(2) No panic. (If you practiced timing your tests, there is no reason to panic)
(3) Always looked at the call of the question to make sure. (even in repeat questions they may change the call of the question to trip you up) Know the concept.
(4) Look for the best complete ans. and not the correct ans.
(5) There were 30-35 repeat or variation of repeat questions. I answered each of those in less than 2 min. or better. (Thanks to 02 & 03 tests and this web site)
If anyone has any questions or need more information feel free to ask on this web site or send me an email. (ih8market @yahoo.com)
Good luck!
I took the exam Nov. 2 and passed (2nd try). Used the PLI home study course; the written material was useful to help focus on what to study. I used their test simulator CD to practice answering questions using the ‘find’ .But I also printed tests out and studied that way. I flunked 1st time using only PLI and not really using the tips on this site.
This site really helped me to pass this time! I wish I had used it the 1st time. Thanks everyone – I want to pay it forward by posting what I saw on the test. My test center in Albuquerque was comfortable and quiet with headphones and a fast computer.
My advice – like everyone else’s – is to study the 2002 and 2003 exams and study the repeated questions. I did not much study the earlier ones.
I used the scoring grid idea to keep track of my answers. It helped me stay calm. I circled the answer numbers that I thought I had 95% right. When it came down to 2 answers, those were the ones I searched first after going all the way through. I had 30 minutes left to search about 10 answers both in the evening and morning.
Used the 102e flow chart in chapter 700 because I got nervous and it helped clear my mind to use it! Also used the table regarding IDS at 609.01Examiner Checklist for Information Disclosure Statements several times!
There must be other Examiner checklists that can be used for easy reference…maybe others can post what they have found….it is important to know fees/ deadlines for Advisory Actions and IDS.
I saw the following repeat questions:
7. Compound Y/cancer cure
13. Fee not reduced for small entity/recording a document affecting title
16. Tribell
24. Means for pulling open the door/replace with structure in claim
34. IDS after notice of allowance (oops, I gave the wrong answer!)
38. Board rejects claim 1 /Claim 2 depends on claim 1/Claim 3 allowed
44. Japan/45 days
October 2003 pm repeats:
6. Moon dust pencil/no duty to disclose
50. 102(g) ex parte rejection
28. Parking Meter
45. Smith over Jones, Appeal
April 2003 AM repeats:
2. Japan/45 days
4. Markush- but variation: question asked about wording in 35 USC 112 para 6
8. Twice rejected concept (variation)
26. IDS after notice of allowance (variation)
37. Appeal affirms rejection/results in abandonment
41. Barry in view of Foreman
other topics:
40% ownership XYZ/60% ownership PQ/two inventors/double patenting: who must sign terminal disclaimer?
Claiming priority from foreign filing of design patent/6 month rule
Combination lacks specificity as way to overcome rejection
Failure of examiner to establish prima facie case of obviousness
There were lots of questions – 5 to 10 – on reissues and reexaminations
And questions on fees and Advisory Actions
One question asked about Construing claims: answer:bgive claims their broadest reasonable interpretation
There were questions on 102 a, b, d, e, and g
Provisional applications – 5 questions;
I also had the question regarding the traveling patent attorney in Germany needing to file something just before the expiration of six months. I also think the fax is the only way to go.
A question about Maintenance fees that was easy to look up
There were 3 questions about protests – just know where to look and search
Question about a PCT with no US filing – use the flow chart in chapter 700.
1 multiple dependent claim question.
I never have to do this again! yippee!
I agree with Senior44 – PLI Patware custom exams were great – I created a PCT only exam – and did all of the 85 questions several times. I also did a custom exam on Appeals and 102e. These customized exams helped a lot – there are new questions that are not on old exams and they really help you understand a topic that is sure to be tested!
I had asked this before, but my comments have been deleted.
Does anyone know where to find a list of countries that publish patent applications? This is in relation to the Japan/45 days question.
Thanks!
Chapter 1800, search”member” and it will lead you to a list for WTO members.
Japan would meet all typical standards in any question – PCT, 45 days, 18 month publications, etc.
I just wanted to thank you for putting this site together. I took the exam yesterday and passed! My success was due in large part to taking your suggestions. Many of the questions from the 2003 exam were repeated. I specifically recall the Laurel/Abbot, Jack & Jill in Vietnam, Spot Remover and Moondust.
If I had to study for this again I would pay far more attention to the PCT and to correction of inventorship issues. I had 5 questions dealing with inventorship, 3 on Board/examiner review and another 5-6 PCT questions. Definitely study all of the Japan PCT questions.
Best of luck to you all…
I had a question about the Least Expensive way for a correction to be made with the inventor’s name is wrong/something immaterial. (Dec. 2009 test)
It is similar to an older test question (can’t recall which one), BUT there was no “send a letter and bring to attention” answer.
Instead there was an answer (D) or (E) which stated: call the examiner and have the examiner take care of it. (I selected this one)
All other selections dealt with filing a petition to correct.
yeah i had this one
but i think i had a choice of filing ads so i picked that one
All correspondence with the PTO must be in writing, so “call the Examiner” is not correct. Intuitively it’s not correct either. Inventorship = ownership. You cannot call the PTO and just request a change in inventorship anymore than I can call your bank and have my name added to your bank account.
I disagree. You’re right that it’s not intuitive, but if it’s just a typo, you’re not really changing inventorship. According to MPEP 201.03, situations where 1.48 petition isn’t required:
“(B) Where a typographical or transliteration error in the spelling of an inventor’s name is discovered, the Office should simply be notified of the error. A new oath or declaration is not required. See MPEP § 605.04(g). Reference to the notification will be made on the previously filed oath or declaration”
Also, ADS wouldn’t work because in the case of inconsistencies between oath/declaration and an ADS, the oath/declaration governs inventors’ names and citizenship.
passed today 12/31 !!!
great thanks to everybody who took time to post here & on the “patentbarquestions”
a separate thank you to the host “patentbar” (aka “sanmahan”? :)) )
as “cindy” put it “nothing really surprised me”
the exam was pretty predictable. i recognized most of either questions or concepts which i got from this site patentbarQ, old exams & probably my learning soft.
i d/n read all the posts here or on the wiki site but i did all the exams starting oct 2001 with j white’s comments.
can’t advise anybody to buy any expensive stuff. there’re sooooooooooo many free free resources.
i posted some comments on the patentbarquestions.
repeats and old exams helped a ton.
whatever i d/n know i looked in the index and also in THE CHAPTERS like 700 2100 1200 1800.
a lot of what i saw on the exam is discussed in one form or the another here and on the wiki site.
things that really surprised me (though verbatim from the mpep) were something like “can an examiner request drawing if they are not required for the understanding of the invention?” YES he can.
or something like “if one of the combinations (? d/n remember exact wording) is old is the invention anticipated?” yes it is.
a Q about xyz that was patented in 1906 can you patent it? yes as a method of growing hair if it was patented as a shoe polish
all of our old friends were there (d/n recollect spanish phone though)
hairgel
tribell
titanium ball
j j smith
bloc
costa ricka
sweden
mirror
2 inventors assigned 40 % to the company a & 40 % to the company b. who needs to sign a reissue oath?
i d/n read “things to know” on the wiki site (d/n have time) just the questions section.
a Q what do you need to get a reissue application filing date?
i answered only specification and drawings i think. everything else may be filed later.
also had velcro
cell phone invention (d/n show antenna and the strap in the article)
cell phone from idaho. when a guy sold it to test market penetration a year before filing. one of the answers was “try to prove it was for testing the invention”. i d/n pick this one.
one Q asked what can you do if you file an application on the year anniversary of the sale but w/o a claim?
i picked “you have time to convert to provisional up until a year after filing”.
a Q what happens if an applicant d/n file an appeal brief?
appeal is dismissed and examiner acts on the application.
a Q which application can’t become cont.
obviously provisional
a Q that i d/n if i picked the right answer was asking when an examiner d/n have to give reasons for allowance. but it was asking in the negative like “all except”
good luck to everybody
I passed. Many thanks to everyone at this site. It was a big help. Review it IN DETAIL putting a lot of time into reconstructing both what the Q is SAID to be & (based on your knowledge & the MPEP & old exams) what the Q *is.* Some things get lost in translation, but if your’re smart & supplement this site with good, hard studying of the MPEP & the 2002-2003 exams, you will get a lot of freebies.
Observations:
1. Overall: Many people report a marked difference between the AM & PM sessions. I didn’t see that. There seemed to be roughly 10-12 repeats in both sessions –> enough to give you a boost but not enuf to make up for not knowing the material or being able to search the MPEP quickly & effectively.
2. Repeats:
i) Laurel Abbott & Hardy
ii) Japan 45 days
iii) Issue fee Transmittal form (1003 PM Q#38)
iv) Copper substrate (1003 AM Q#4)
v) 3rd Party submissions (1003 PM Q#10)
vi) Beck – Mixture Y made by Process Q1
vii) Verification stmt (1003 PM Q#32)
viii) Cancer/Bloc/incredible utility
ix) ABCD/ABCDE/BCDE
x) DRAM
xi) 5 steps for x-ing the road
xii) 147 claim counting (no variation – it’s 147)
xiii) IDS/RCE (1003 AM Q#34)
xiv) New ground of rejection (at least 4-5 Ques’s on this topic) (1003 AM Q#37)
xv) Twice rejected (0403 AM Q#8)
xvi) Inert gas (0403 AM Q#30)
xvii) 34.9% polyethylene (0403 AM Q#44)
xviii) Cancelled matter (0403 PM Q#48)
xix) Protest (1002 PM Q#46)
3. “New” questions reported on the site(s):
i) Trade secret (varied a little from what I read on the site – so be careful)
ii) Assignee not of record CAN sign an assertion of small entity status but CANNOT file a terminal dislcaimer
iii) Red or black ink (Red ink *CAN* be used to correct file wrappers, indicate amend’s accepted/denied etc.)
iv) Piecemeal – reject but call atty 1st
v) Hairgel (Patent app filed <11/29/99 so do NOT answer Inter partes reexam – it's ex partes!)
vi) Lipgloss (gag gift version)
vii) Spanish phone — the comments on the site are all over the map as to whether inventors should "give up" or whether the diff's in designs take it out of the realm of anticipation. I went with the only ans choice that held the 2nd design mod rejected under 102d but do not know if it was correct or not.
viii) Information requested from PTO (i.e. client wants you to find out about competitor's patent
ix) Maintenance fee missing number
x) Japanese patent 16 month priority (I got a TON of priority Q's. At least 3-4 questions on the 4/16 month rule, & another 3-4 on 119/120/365c).
xii) Best mode
xiii) Advisory action
xiv) The "much debated divisional-reissue question"
xv) Revival of abandoned reexamtn
xvi) Contesting inventorship via interference
xvii) What amend's can be submitted i) after filing NOA & ii) after brief
Strategies: I took a synergistic approach: get a few points from the site(s), a few points from good MPEP searching & some more from repeats & together the whole is greater than the sum of its parts. I definitely hit the books hard starting about roughly 12/15 but started to take the foot off the gas a day or two before the Exam. I've taken enuf of these things before to know that freshness & being mentally sharp on exam day will do much more for you than the 1 or 2 or things you *might *pick up in the hours before the exam.
Good luck to everyone!
NEW QUESTION
What do you all think and why?
1. A question related to 3 inventors A, B, and C on a pending application. Applicant discovers the ADDRESS is incorrect for Inventor B. How do you make an address change on the application? (one inventor may be unavailable, and these answers are just surmises)
A) Assignee of entire interest sends in an Application Data Sheet correcting
B) 3 inventors declare oath with correct addresses
C) Send in notification of Inventor B’s address
D) Assignee declares oath with all the correct Inventive Entity info
E) Assignee signs a petition under some number naming all inventors A, B, C declaring all inventors and identifies Inventive Entity
*** I answered A).
603 Supplemental Oath or Declaration
37 CFR 1.67 Supplemental oath or declaration.
(a) The Office may require, or inventors and applicants may submit, a supplemental oath or declaration meeting the requirements of § 1.63 or § 1.162 to correct any deficiencies or inaccuracies present in the earlier filed oath or declaration.
(1) Deficiencies or inaccuracies relating to all the inventors or applicants (§§ 1.42, 1.43, or § 1.47) may be corrected with a supplemental oath or declaration signed by all the inventors or applicants.
(2) Deficiencies or inaccuracies relating to fewer than all of the inventor(s) or applicant(s) (§§ 1.42, 1.43 or § 1.47) may be corrected with a supplemental oath or declaration identifying the entire inventive entity but signed only by the inventor(s) or applicant(s) to whom the error or deficiency relates.
(3) Deficiencies or inaccuracies due to the failure to meet the requirements of § 1.63(c) (e.g., to correct the omission of a mailing address of an inventor) in an oath or declaration may be corrected with an application data sheet in accordance with § 1.76.
(4) Submission of a supplemental oath or declaration or an application data sheet (§ 1.76), as opposed to who must sign the supplemental oath or declaration or an application data sheet, is governed by § 1.33(a)(2) and paragraph (b) of this section.
I got a similar question, but it was in the form of “which is incorrect.” The incorrect choice said that the supplemental oath only identified inventor B. A supplemental oath has to identify the entire inventive entity, and be signed by at least the inventor involved in the change. (Some of the questions had all the inventors signing where only one was required, but I’m sure that’s ok.)
NEW QUESTION- verified twice
5. Inequitable Conduct: Typically examiner does not look into inequitable conduct based on admission by applicant, but in which case may it be taken into account
A) Applicant says “not intentional” even though Examiner knows there is inequitable conduct
B) Applicant says “unintentional” about knowing some art or court case
C) ?
D) Third Party files a protest of fraud saying he invented the invention first
E) a variant of D
What do you think and why?
*** I might say the answer is B)???
It seems to me the Question is incomplete (or should I say imperfect?).
I got this. The choices were all in the basic form of that the applicant made some statement of no deceptive intent, etc., then the various circumstances. One had something to do with the applicant admitting that in related litigation, the other party raised questions of fraud/inequitable conduct. Two answer choices involved protest. The correct answer is that the examiner has knowledge of a judicial determination of fraud/inequitable conduct.
New Question Verified twice
6. Which one does not work to invoke 112 6th paragraph?
(A) the claim limitations uses the phrase “means for” or “step for;”
(B) the “means for” or “step for” must be modified by functional language; and
(C) the phrase “means for” or “step for” must not be modified by sufficient structure, material or acts for achieving the specified function.
D) the claim limitation recites “step for”
E) None of them invoke 112 6th paragraph
MPEP 2181
Under Roman Numeral I:
A claim limitation will be interpreted to invoke 35 U.S.C. 112, sixth paragraph, if it meets the following 3-prong analysis:
(A)
the claim limitations must use the phrase “means for” or “step for;”
(B)
the “means for” or “step for” must be modified by functional language; and
(C) the phrase “means for” or “step for” must not be modified by sufficient structure, material or acts for achieving the specified function.
There are three elements (notice they are conjunctive using “and”) to invoke 112 (6). All the elements A, B, and C must be in the claim to invoke 112 (6). The above question, if it’s reproduced correctly, only lists one element per answer choice. Therefore, I would choose (E) as none of them invoke 112 (6).
But if the question was more like: “Which of the following are factors or elements in determining whether 112(6) is properly invoked?”
I would choose an answer choice of “All of the Above.”
※ The examination process under 35 U.S.C. 112, 6th paragraph: begin by applying the 3-prong analysis
* If the phrase “means for” or “step for” is absent, paragraph 6 is not invoked
* If the phrase “means for” or “step for” is used but either the second or third prong of the test is not satisfied, paragraph 6 is not invoked
I think E is the answer.
My question was: which DOES work, and the answer choices were (A), (B), (C) as you wrote them, (D) was the claim limitation recites “step of” and (E) was choices (A), (B), and (C). I chose (E).
What do you all think?>
*** Proper 102(e) Date ***
J.J. Smith filed a nonprovisional application on date1.
Which of the following can have a proper 102(e) date?
a) Pending nonprovisional application by another that claims
the same invention, filed before date1
b) A prior patent by J.J. Smith
c) A PCT application published under 21(2) in English
d) A published article, filed before date1
e) All of the above
So what is the correct answer???
I don’t think any of choices A-E are correct.
A). Not correct because 102(e) art is only for U.S. Patents or US Patent Publications by another. Since the application in a) is not a U.S. Patent or U.S. Patent Publication, it can’t be 102(e) art.
B) Not correct because 102(e) art requires the reference to be by another. Since J.J. Smith is the inventor his own prior patent can’t be a 102(e) reference.
C) For a PCT application to be 102(e) art, it must publish in English AND designate the U.S. Since there is no designation of the U.S., it can’t be 102(e) art.
D) Not correct because mere published articles can’t be 102(e) art–102(e) art requires U.S. Patent or U.S. Patent Publication.
E) All of the above can’t be correct. If it was available as an answer choice, I would pick “None of the above.”
*** Contesting Inventors ***
J and K work for company XYZ and have no obligation to sign inventions to XYZ.
J and K invent something. XYZ fires K. K refuses to cooperate.
XYZ and J ask practitioner E to file an application naming J and K as joint inventors.
E files the application, but K refuses to sign. K thinks that he conceived of
the invention alone and that J did nothing. K has hired F as his attorney.
How can K and F contest inventorship?
a) Fire E as the attorney of record, and grant F a power of attorney
b) Provoke an interference by filing a new application to the same invention
naming K as sole inventor
c) File a petition under Rule 48, signed only by K under Rule 47.
d) Wait til the patent issues, then file for a reissue
and amend inventorship to remove J.
e) Wait til the patent issues, then file for a reexam,
presenting evidence that shows J was not an inventor.
So what is the correct answer???
See last parqgraph of MPEP 409.03(i), rights o fthe nonsinging inventor. Looks like the correct answer is (b).
12/31/2009 had a q about a pct filed w/o claims but everything else present, what can you do to keep certain filing date? choices were 1 fax w/cert. 2.mail w/cert. 3 express mail. 4.wait for us/ro send invitation to correct & correct within given time. 5.all of the above.
=== i saw this question. what is answer?
I don’t think you can fax or use certificate of mailing since it’s for the purpose of getting a filing date. Not sure about the express mail choice because it would depend on what day you send it. Responding to the invitation to correct would get you a filing date of whenever you correct, so you don’t get to keep the original filing date there either.
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???
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???
Re Q1, its (d)..brand name recognition is NOT considered.
Re Q2, its (b)..you do not need a COM when mailing stuff using express mail
i had Q2 appear on my test yday