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
{ 2077 comments… read them below or add one }
Hi all,
Thanks for putting this one together.
My test at Prometric here in Lowell, MA, will be Monday, Dec 17th. I mainly work with the PLI material and also took their class.
When did you start this web site? Have not seen it before.
Regards,
Rolf Seichter
978-852-5803
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
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
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!
Thanks for your input…were there REALLY this many repeat questions?? Looks like you had about 60 repeats…
“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.
I saw this question in August 2014
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 😀
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.
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
Can anyone help me to understand the difference between priority and prior art. I believe that this the nub of question #40 of the 10/03-pm exam. What is the 102(e) date of a single patent application filed first in another country, then as a PCT international after 11/29/00 (properly in English and designating the US), and finally in the US, with each application claiming priority from its predecessor? I read the answer to Q40-10/03-pm to say that the effective filing date of this application is that of the foreign filing, and its 102(e) date to be that of the international filing. Is this right?
Thanks, Art Williams
Can anyone help me to understand question #7 on the 10/02-am exam? I read the fact pattern to say that the applicant combined a known material with a known process to obtain a new material with new and useful properties. I read the PTO answer to be inconsistent with the question in saying that the material and its properties cannot be affected by the process, when the question says that they are, in fact, affected.
Thanks, Art Williams
In regards to post #33:
The “prior art” generally refers to the collection of references comprising of patents, patent applications, publications, etc. that deal with the same subject matter of the patent application under examination. The examiner will always compare the patent application under examination with the prior art to see if the invention was already anticipated or rendered obvious.
“Priority” refers to the fact that a later filed patent application may enjoy the benefit of the filing date of a prior filed application if the prior application provides an enabling disclosure for the claims in the second app. What this means is that all the prior art having publication (or sometimes filing) dates before the second app but AFTER the first app are disqualified because they are no longer “prior”. Thus, you always want to shoot for the earliest possible effective filing date by claiming priority so as to decrease the number of references that constitute “prior art” (even if it means shortening the life of your patent).
Remember that eventually the current patent application under examination will ITSELF BECOME PRIOR ART under 102(e) against future patent applications. The date that a patent application becomes prior art is referred to its 102(e) date and MAY BE DIFFERENT FROM THE EFFECTIVE FILING DATE, as is the case for this question.
In this particular question, the fact pattern closely resembles Example 4 in MPEP 706.02(f)I. Since the PCT app was filed after 11/29/00, designated the US, and published in English, the IA filing date is the 102(e) date. However, as you correctly noted, the effective filing date of the application is that of the foreign filing.
Thus, there are 3 dates for every application:
1) The date on which the patent term begins
2) The “antedating” date, i.e. effective filing date
3) The 102(e) date
Sometimes they are same, but most of the time they are not.
As for #7 on the 10/02-am exam, I think the issue is this:
The publication discloses the SAME composition as the patent application (the aluminum and titanium alloy). If the composition is the same, it must be that each product contains the same inherent characteristics. It doesn’t matter whether or not this characteristic is poor ductility or great ductility because the alloy itself is what’s being claimed. Thus, since the material is the same, it doesn’t matter how it was made….it was already anticipated.
Now, the applicant may be able to file a patent for the PROCESS of microstructure refinement (although probably not because it was already well-known), but certainly not for the alloy itself. Incidentally, it is true that “unexpected results” may overcome obvious type rejections, but only if there is ample evidence (not just arguments). However, I think this is an anticipatory type rejection.
Hope this helps….
Duty of disclosure.
Does anyone know whether the following two statements are true?
1, Statements made in information disclosure statements are not binding on an applicant once the patent has issued since the sole purpose of the statement is to satisfy the duty of disclosure before the Office.
2, Since the issue fee has been paid, Al no longer has a duty to disclose to the Office material prior art. He is under no obligation to submit the prior art reference to the Office.
Passed the exam today and wanted to contribute some questions that haven’t made it to this forum. In addition to the usual ones listed above, I encountered the following:
An appeals questions related to filing a second appeal after the first appeal was rejected, and the applicant got rejected after reopening prosecution. Which of the following is correct? (from MPEP 1200 ver batim)
1) If the rejection under 37 CFR *>41.50(b)41.50(b)41.50(b)< is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered.
Answer = 1, 2, and 3 are correct
Another question on who can sign a disclaimer, all of the following are correct except:
A) inventor only where inventor has not assigned
B) inventor + assignee of part interest
C) assignee of part interest
D) assignee of entire interest
E) cannot remember this one
I choose D.
Thanks again to everyone for contributing. You're awesome.
Cindo,
congratulations on your pass. Would you mind eleborate on the appeal question? What are the other answer choices (i.e. 2 and 3)?
Also, why assignee of the entire interest (D) cannot sign terminal disclaimer? Did you mean (C) assignee of part interest?
Thanks.
Sorry, the above question should have read:
An appeals questions related to filing a second appeal after the first appeal was rejected, and the applicant got rejected after reopening prosecution. Which of the following is correct? (from MPEP 1200 ver batim)
1) If the rejection under 37 CFR *>41.50(b)41.50(b)41.50(b)< is terminated before the examiner, the application file must be returned to the Board so that a decision making the original affirmance final can be entered.
Answer = 1, 2, and 3 are correct
Passed the exam. I had the following questions:
MANY on appeal – 37 CFR 41.50 (b)
Potter (altered, not as in old exams)
Mario Lepieux (also different)
Mirror question
Death of Inventor
Some bizarre question on PTOL 892 (possibly one of the 10 test questions?)
Melting point
MANY on reissue
A few on PCT
Many on obviousness (had to scour chapter 2100 and they were all word-for-word)
Japanese 45 days no FFL
I did not have many repeats, but when I got them, I just answered them without thoroughly reading them – I had no time!
I passed the Exam on the first try the other day. My strategy was:
1) Watched John White’s PLI videos
2) Take and commit 2003/2002 Exams to memory.
3) Reviewing the new questions submitted on this site.
Some of the questions I remember were:
Mirror question (chose parallel answer)
Japanese 45 day
147 multiple dep claims question (slight variation)
Melting point
Red ink
“Unexamined German” applications not 102(d) art
CIP to french phone design patent (can’t do it; makes it 102(d)
fruity lip gloss – using it as a gag is public use (no experimental)
Laurel, Abbott Hardy
Hair Gel – ex parte reexam
Reexam certificate open to public
Assignee without full interest can still sign small entity
filing petition for unpaid maintenance fee
Compound Y
DRAM
5 steps to crossing road
Piecemeal examination (just search section 2100 for “piecemeal”)
PCT questions – 16 months from priority date to correct
I had lots of repeats which I read briefly to make sure they weren’t altered at all and then I moved on quickly.
I passed the exam (second try) few days ago. I want to thank everyone on this web site for their valuable input. The test was a challenge for me because (a) I am not a lawyer or a law student and (b) The last time I took 6 hr, exam was few decades ago when I was in college. (Just turned 65!).
Here is how I prepared for it.
(1) I purchased 2009 PLI material and used it extensively. Their Study Guide is condensed version of MPEP and it includes only the material that is on the test. Read the guide book 2-3 times. PLI gives you 38 audio tapes of which I copied key chapter’s tapes on my ipod and listened to them repeatedly during gym workout and during driving to & back from work. The most useful PLI item is their Patware software (9.0)CD. It has 2002/2003 tests and additional practice tests including custom exams. Did all 2002/2003 tests over & over again until I got over 90%. Same for all other tests on the CD.
(2) Went over 68 or so repeat questions listed on this web site until I understood the concept. Also did few 2001/2000 tests to make sure I can handle unknown questions.
(3) Practiced “Look up” items in MPEP with key words and timed it to make sure I can find ans. in less than 3 min. or better
During the 6 hr. exam………….
(1) I made three passes. During the first pass, I handled all repeat, familiar and date related questions(102 , PCT). If quesion was long or unfamiliar or weird looking, I skipped to the next. I had 45-50 min. leftover. During second pass, I tackled “look up” questions and covered most of the loeftover test. I had 10 min. left at the end to cover questiones that were marked for reviews. Some questions related to 103, 112 & appeal were in the “look up” category.
(2) No panic. (If you practiced timing your tests, there is no reason to panic)
(3) Always looked at the call of the question to make sure. (even in repeat questions they may change the call of the question to trip you up) Know the concept.
(4) Look for the best complete ans. and not the correct ans.
(5) There were 30-35 repeat or variation of repeat questions. I answered each of those in less than 2 min. or better. (Thanks to 02 & 03 tests and this web site)
If anyone has any questions or need more information feel free to ask on this web site or send me an email. (ih8market @yahoo.com)
Good luck!
I took the exam Nov. 2 and passed (2nd try). Used the PLI home study course; the written material was useful to help focus on what to study. I used their test simulator CD to practice answering questions using the ‘find’ .But I also printed tests out and studied that way. I flunked 1st time using only PLI and not really using the tips on this site.
This site really helped me to pass this time! I wish I had used it the 1st time. Thanks everyone – I want to pay it forward by posting what I saw on the test. My test center in Albuquerque was comfortable and quiet with headphones and a fast computer.
My advice – like everyone else’s – is to study the 2002 and 2003 exams and study the repeated questions. I did not much study the earlier ones.
I used the scoring grid idea to keep track of my answers. It helped me stay calm. I circled the answer numbers that I thought I had 95% right. When it came down to 2 answers, those were the ones I searched first after going all the way through. I had 30 minutes left to search about 10 answers both in the evening and morning.
Used the 102e flow chart in chapter 700 because I got nervous and it helped clear my mind to use it! Also used the table regarding IDS at 609.01Examiner Checklist for Information Disclosure Statements several times!
There must be other Examiner checklists that can be used for easy reference…maybe others can post what they have found….it is important to know fees/ deadlines for Advisory Actions and IDS.
I saw the following repeat questions:
7. Compound Y/cancer cure
13. Fee not reduced for small entity/recording a document affecting title
16. Tribell
24. Means for pulling open the door/replace with structure in claim
34. IDS after notice of allowance (oops, I gave the wrong answer!)
38. Board rejects claim 1 /Claim 2 depends on claim 1/Claim 3 allowed
44. Japan/45 days
October 2003 pm repeats:
6. Moon dust pencil/no duty to disclose
50. 102(g) ex parte rejection
28. Parking Meter
45. Smith over Jones, Appeal
April 2003 AM repeats:
2. Japan/45 days
4. Markush- but variation: question asked about wording in 35 USC 112 para 6
8. Twice rejected concept (variation)
26. IDS after notice of allowance (variation)
37. Appeal affirms rejection/results in abandonment
41. Barry in view of Foreman
other topics:
40% ownership XYZ/60% ownership PQ/two inventors/double patenting: who must sign terminal disclaimer?
Claiming priority from foreign filing of design patent/6 month rule
Combination lacks specificity as way to overcome rejection
Failure of examiner to establish prima facie case of obviousness
There were lots of questions – 5 to 10 – on reissues and reexaminations
And questions on fees and Advisory Actions
One question asked about Construing claims: answer:bgive claims their broadest reasonable interpretation
There were questions on 102 a, b, d, e, and g
Provisional applications – 5 questions;
I also had the question regarding the traveling patent attorney in Germany needing to file something just before the expiration of six months. I also think the fax is the only way to go.
A question about Maintenance fees that was easy to look up
There were 3 questions about protests – just know where to look and search
Question about a PCT with no US filing – use the flow chart in chapter 700.
1 multiple dependent claim question.
I never have to do this again! yippee!
I agree with Senior44 – PLI Patware custom exams were great – I created a PCT only exam – and did all of the 85 questions several times. I also did a custom exam on Appeals and 102e. These customized exams helped a lot – there are new questions that are not on old exams and they really help you understand a topic that is sure to be tested!
I had asked this before, but my comments have been deleted.
Does anyone know where to find a list of countries that publish patent applications? This is in relation to the Japan/45 days question.
Thanks!
Chapter 1800, search”member” and it will lead you to a list for WTO members.
Japan would meet all typical standards in any question – PCT, 45 days, 18 month publications, etc.
I just wanted to thank you for putting this site together. I took the exam yesterday and passed! My success was due in large part to taking your suggestions. Many of the questions from the 2003 exam were repeated. I specifically recall the Laurel/Abbot, Jack & Jill in Vietnam, Spot Remover and Moondust.
If I had to study for this again I would pay far more attention to the PCT and to correction of inventorship issues. I had 5 questions dealing with inventorship, 3 on Board/examiner review and another 5-6 PCT questions. Definitely study all of the Japan PCT questions.
Best of luck to you all…
I had a question about the Least Expensive way for a correction to be made with the inventor’s name is wrong/something immaterial. (Dec. 2009 test)
It is similar to an older test question (can’t recall which one), BUT there was no “send a letter and bring to attention” answer.
Instead there was an answer (D) or (E) which stated: call the examiner and have the examiner take care of it. (I selected this one)
All other selections dealt with filing a petition to correct.
yeah i had this one
but i think i had a choice of filing ads so i picked that one
All correspondence with the PTO must be in writing, so “call the Examiner” is not correct. Intuitively it’s not correct either. Inventorship = ownership. You cannot call the PTO and just request a change in inventorship anymore than I can call your bank and have my name added to your bank account.
I disagree. You’re right that it’s not intuitive, but if it’s just a typo, you’re not really changing inventorship. According to MPEP 201.03, situations where 1.48 petition isn’t required:
“(B) Where a typographical or transliteration error in the spelling of an inventor’s name is discovered, the Office should simply be notified of the error. A new oath or declaration is not required. See MPEP § 605.04(g). Reference to the notification will be made on the previously filed oath or declaration”
Also, ADS wouldn’t work because in the case of inconsistencies between oath/declaration and an ADS, the oath/declaration governs inventors’ names and citizenship.
passed today 12/31 !!!
great thanks to everybody who took time to post here & on the “patentbarquestions”
a separate thank you to the host “patentbar” (aka “sanmahan”? :)) )
as “cindy” put it “nothing really surprised me”
the exam was pretty predictable. i recognized most of either questions or concepts which i got from this site patentbarQ, old exams & probably my learning soft.
i d/n read all the posts here or on the wiki site but i did all the exams starting oct 2001 with j white’s comments.
can’t advise anybody to buy any expensive stuff. there’re sooooooooooo many free free resources.
i posted some comments on the patentbarquestions.
repeats and old exams helped a ton.
whatever i d/n know i looked in the index and also in THE CHAPTERS like 700 2100 1200 1800.
a lot of what i saw on the exam is discussed in one form or the another here and on the wiki site.
things that really surprised me (though verbatim from the mpep) were something like “can an examiner request drawing if they are not required for the understanding of the invention?” YES he can.
or something like “if one of the combinations (? d/n remember exact wording) is old is the invention anticipated?” yes it is.
a Q about xyz that was patented in 1906 can you patent it? yes as a method of growing hair if it was patented as a shoe polish
all of our old friends were there (d/n recollect spanish phone though)
hairgel
tribell
titanium ball
j j smith
bloc
costa ricka
sweden
mirror
2 inventors assigned 40 % to the company a & 40 % to the company b. who needs to sign a reissue oath?
i d/n read “things to know” on the wiki site (d/n have time) just the questions section.
a Q what do you need to get a reissue application filing date?
i answered only specification and drawings i think. everything else may be filed later.
also had velcro
cell phone invention (d/n show antenna and the strap in the article)
cell phone from idaho. when a guy sold it to test market penetration a year before filing. one of the answers was “try to prove it was for testing the invention”. i d/n pick this one.
one Q asked what can you do if you file an application on the year anniversary of the sale but w/o a claim?
i picked “you have time to convert to provisional up until a year after filing”.
a Q what happens if an applicant d/n file an appeal brief?
appeal is dismissed and examiner acts on the application.
a Q which application can’t become cont.
obviously provisional
a Q that i d/n if i picked the right answer was asking when an examiner d/n have to give reasons for allowance. but it was asking in the negative like “all except”
good luck to everybody
something like “if one of the combinations (? d/n remember exact wording) is old is the invention anticipated?” yes it is.
CDV,
Was this question regarding “Anticipation” or “rejection”?
Because, if it is of “rejection”:
2173.05(j): Old Combination
A claim should not be rejected on the ground of Old Combination
With the passage of the 1952 Patent Act, the courts and the Board have taken the view that a rejection based on the principle of old combination is NO LONGER VALID. Claims should be considered proper so long as they comply with the provisions of 35 USC 112, second paragraph.
I passed. Many thanks to everyone at this site. It was a big help. Review it IN DETAIL putting a lot of time into reconstructing both what the Q is SAID to be & (based on your knowledge & the MPEP & old exams) what the Q *is.* Some things get lost in translation, but if your’re smart & supplement this site with good, hard studying of the MPEP & the 2002-2003 exams, you will get a lot of freebies.
Observations:
1. Overall: Many people report a marked difference between the AM & PM sessions. I didn’t see that. There seemed to be roughly 10-12 repeats in both sessions –> enough to give you a boost but not enuf to make up for not knowing the material or being able to search the MPEP quickly & effectively.
2. Repeats:
i) Laurel Abbott & Hardy
ii) Japan 45 days
iii) Issue fee Transmittal form (1003 PM Q#38)
iv) Copper substrate (1003 AM Q#4)
v) 3rd Party submissions (1003 PM Q#10)
vi) Beck – Mixture Y made by Process Q1
vii) Verification stmt (1003 PM Q#32)
viii) Cancer/Bloc/incredible utility
ix) ABCD/ABCDE/BCDE
x) DRAM
xi) 5 steps for x-ing the road
xii) 147 claim counting (no variation – it’s 147)
xiii) IDS/RCE (1003 AM Q#34)
xiv) New ground of rejection (at least 4-5 Ques’s on this topic) (1003 AM Q#37)
xv) Twice rejected (0403 AM Q#8)
xvi) Inert gas (0403 AM Q#30)
xvii) 34.9% polyethylene (0403 AM Q#44)
xviii) Cancelled matter (0403 PM Q#48)
xix) Protest (1002 PM Q#46)
3. “New” questions reported on the site(s):
i) Trade secret (varied a little from what I read on the site – so be careful)
ii) Assignee not of record CAN sign an assertion of small entity status but CANNOT file a terminal dislcaimer
iii) Red or black ink (Red ink *CAN* be used to correct file wrappers, indicate amend’s accepted/denied etc.)
iv) Piecemeal – reject but call atty 1st
v) Hairgel (Patent app filed <11/29/99 so do NOT answer Inter partes reexam – it's ex partes!)
vi) Lipgloss (gag gift version)
vii) Spanish phone — the comments on the site are all over the map as to whether inventors should "give up" or whether the diff's in designs take it out of the realm of anticipation. I went with the only ans choice that held the 2nd design mod rejected under 102d but do not know if it was correct or not.
viii) Information requested from PTO (i.e. client wants you to find out about competitor's patent
ix) Maintenance fee missing number
x) Japanese patent 16 month priority (I got a TON of priority Q's. At least 3-4 questions on the 4/16 month rule, & another 3-4 on 119/120/365c).
xii) Best mode
xiii) Advisory action
xiv) The "much debated divisional-reissue question"
xv) Revival of abandoned reexamtn
xvi) Contesting inventorship via interference
xvii) What amend's can be submitted i) after filing NOA & ii) after brief
Strategies: I took a synergistic approach: get a few points from the site(s), a few points from good MPEP searching & some more from repeats & together the whole is greater than the sum of its parts. I definitely hit the books hard starting about roughly 12/15 but started to take the foot off the gas a day or two before the Exam. I've taken enuf of these things before to know that freshness & being mentally sharp on exam day will do much more for you than the 1 or 2 or things you *might *pick up in the hours before the exam.
Good luck to everyone!
NEW QUESTION
What do you all think and why?
1. A question related to 3 inventors A, B, and C on a pending application. Applicant discovers the ADDRESS is incorrect for Inventor B. How do you make an address change on the application? (one inventor may be unavailable, and these answers are just surmises)
A) Assignee of entire interest sends in an Application Data Sheet correcting
B) 3 inventors declare oath with correct addresses
C) Send in notification of Inventor B’s address
D) Assignee declares oath with all the correct Inventive Entity info
E) Assignee signs a petition under some number naming all inventors A, B, C declaring all inventors and identifies Inventive Entity
*** I answered A).
603 Supplemental Oath or Declaration
37 CFR 1.67 Supplemental oath or declaration.
(a) The Office may require, or inventors and applicants may submit, a supplemental oath or declaration meeting the requirements of § 1.63 or § 1.162 to correct any deficiencies or inaccuracies present in the earlier filed oath or declaration.
(1) Deficiencies or inaccuracies relating to all the inventors or applicants (§§ 1.42, 1.43, or § 1.47) may be corrected with a supplemental oath or declaration signed by all the inventors or applicants.
(2) Deficiencies or inaccuracies relating to fewer than all of the inventor(s) or applicant(s) (§§ 1.42, 1.43 or § 1.47) may be corrected with a supplemental oath or declaration identifying the entire inventive entity but signed only by the inventor(s) or applicant(s) to whom the error or deficiency relates.
(3) Deficiencies or inaccuracies due to the failure to meet the requirements of § 1.63(c) (e.g., to correct the omission of a mailing address of an inventor) in an oath or declaration may be corrected with an application data sheet in accordance with § 1.76.
(4) Submission of a supplemental oath or declaration or an application data sheet (§ 1.76), as opposed to who must sign the supplemental oath or declaration or an application data sheet, is governed by § 1.33(a)(2) and paragraph (b) of this section.
I got a similar question, but it was in the form of “which is incorrect.” The incorrect choice said that the supplemental oath only identified inventor B. A supplemental oath has to identify the entire inventive entity, and be signed by at least the inventor involved in the change. (Some of the questions had all the inventors signing where only one was required, but I’m sure that’s ok.)
603 Supplemental Oath or Declaration:
Example 4: An application was filed with a declaration under 37 CFR 1.63 executed by inventors A and B. If it is later determined that an error exists in the mailing address of inventor B, the mailing address of inventor B may be corrected by a supplemental declaration identifying the entire inventive entity and signed by inventor B alone, or an ADS under 37 CFR 1.76 containing only a change in inventor B’s mailing address.
NEW QUESTION- verified twice
5. Inequitable Conduct: Typically examiner does not look into inequitable conduct based on admission by applicant, but in which case may it be taken into account
A) Applicant says “not intentional” even though Examiner knows there is inequitable conduct
B) Applicant says “unintentional” about knowing some art or court case
C) ?
D) Third Party files a protest of fraud saying he invented the invention first
E) a variant of D
What do you think and why?
*** I might say the answer is B)???
It seems to me the Question is incomplete (or should I say imperfect?).
I got this. The choices were all in the basic form of that the applicant made some statement of no deceptive intent, etc., then the various circumstances. One had something to do with the applicant admitting that in related litigation, the other party raised questions of fraud/inequitable conduct. Two answer choices involved protest. The correct answer is that the examiner has knowledge of a judicial determination of fraud/inequitable conduct.
Can somebody explain this question to me Pl?
or direct me to the related chapter, pl?
New Question Verified twice
6. Which one does not work to invoke 112 6th paragraph?
(A) the claim limitations uses the phrase “means for” or “step for;”
(B) the “means for” or “step for” must be modified by functional language; and
(C) the phrase “means for” or “step for” must not be modified by sufficient structure, material or acts for achieving the specified function.
D) the claim limitation recites “step for”
E) None of them invoke 112 6th paragraph
MPEP 2181
Under Roman Numeral I:
A claim limitation will be interpreted to invoke 35 U.S.C. 112, sixth paragraph, if it meets the following 3-prong analysis:
(A)
the claim limitations must use the phrase “means for” or “step for;”
(B)
the “means for” or “step for” must be modified by functional language; and
(C) the phrase “means for” or “step for” must not be modified by sufficient structure, material or acts for achieving the specified function.
There are three elements (notice they are conjunctive using “and”) to invoke 112 (6). All the elements A, B, and C must be in the claim to invoke 112 (6). The above question, if it’s reproduced correctly, only lists one element per answer choice. Therefore, I would choose (E) as none of them invoke 112 (6).
But if the question was more like: “Which of the following are factors or elements in determining whether 112(6) is properly invoked?”
I would choose an answer choice of “All of the Above.”
※ The examination process under 35 U.S.C. 112, 6th paragraph: begin by applying the 3-prong analysis
* If the phrase “means for” or “step for” is absent, paragraph 6 is not invoked
* If the phrase “means for” or “step for” is used but either the second or third prong of the test is not satisfied, paragraph 6 is not invoked
I think E is the answer.
I got this. E is the answer. All of the A, B and C.
My question was: which DOES work, and the answer choices were (A), (B), (C) as you wrote them, (D) was the claim limitation recites “step of” and (E) was choices (A), (B), and (C). I chose (E).
I got this Q on 10/15/2011.
What do you all think?>
*** Proper 102(e) Date ***
J.J. Smith filed a nonprovisional application on date1.
Which of the following can have a proper 102(e) date?
a) Pending nonprovisional application by another that claims
the same invention, filed before date1
b) A prior patent by J.J. Smith
c) A PCT application published under 21(2) in English
d) A published article, filed before date1
e) All of the above
So what is the correct answer???
I don’t think any of choices A-E are correct.
A). Not correct because 102(e) art is only for U.S. Patents or US Patent Publications by another. Since the application in a) is not a U.S. Patent or U.S. Patent Publication, it can’t be 102(e) art.
B) Not correct because 102(e) art requires the reference to be by another. Since J.J. Smith is the inventor his own prior patent can’t be a 102(e) reference.
C) For a PCT application to be 102(e) art, it must publish in English AND designate the U.S. Since there is no designation of the U.S., it can’t be 102(e) art.
D) Not correct because mere published articles can’t be 102(e) art–102(e) art requires U.S. Patent or U.S. Patent Publication.
E) All of the above can’t be correct. If it was available as an answer choice, I would pick “None of the above.”
answer is (A). See Anticipated under 102(e) (10.03.17p)
*** Contesting Inventors ***
J and K work for company XYZ and have no obligation to sign inventions to XYZ.
J and K invent something. XYZ fires K. K refuses to cooperate.
XYZ and J ask practitioner E to file an application naming J and K as joint inventors.
E files the application, but K refuses to sign. K thinks that he conceived of
the invention alone and that J did nothing. K has hired F as his attorney.
How can K and F contest inventorship?
a) Fire E as the attorney of record, and grant F a power of attorney
b) Provoke an interference by filing a new application to the same invention
naming K as sole inventor
c) File a petition under Rule 48, signed only by K under Rule 47.
d) Wait til the patent issues, then file for a reissue
and amend inventorship to remove J.
e) Wait til the patent issues, then file for a reexam,
presenting evidence that shows J was not an inventor.
So what is the correct answer???
See last parqgraph of MPEP 409.03(i), rights o fthe nonsinging inventor. Looks like the correct answer is (b).
12/31/2009 had a q about a pct filed w/o claims but everything else present, what can you do to keep certain filing date? choices were 1 fax w/cert. 2.mail w/cert. 3 express mail. 4.wait for us/ro send invitation to correct & correct within given time. 5.all of the above.
=== i saw this question. what is answer?
I don’t think you can fax or use certificate of mailing since it’s for the purpose of getting a filing date. Not sure about the express mail choice because it would depend on what day you send it. Responding to the invitation to correct would get you a filing date of whenever you correct, so you don’t get to keep the original filing date there either.
As much as I agree with Emily’s reasons and think that D should be the answer, 37 CFR 1.431(b) clearly says that “a part which on the face of it appears to be a claim” is one of the requirements to get a filing date of an IA.
So, can you even get a filing date in “real life”?
1. Which of the following does not constitute probative evidence of commercial success to support a contention of non-obviousness?
a) In a utility case, gross sales figures accompanied by evidence as to market share.
b) In a utility case, gross sales figures accompanied by evidence as to the time period during which the product was sold.
c) In a utility case, gross sales figures accompanied by evidence as to what sales would normally be expected in the market.
d) In a utility case, gross sales figures accompanied by evidence of brand name recognition.
e) In a design case, evidence of commercial success clearly attributable to the design, and not to improve performance of the device.
So which one is the correct answer???
D is the correct answer. Just practiced this question the other day.
I saw this question too…. But don’t think I understand this answer….
Think about what shows value with respect to the invention: Brandname is not related to the iprovement you want to sell/patent. The others are evidence of commercial success due to that new product.
So it is not total sales of a company either, just the sale of the product/feature protection is sought for.
2) A practitioner submitted a new patent application to the PTO using the Express Mail service of the U.S. Postal Service. The PTO never received the new application. Which of the following is not necessary to comply with the requirements for receiving the date of deposit with the U.S. Postal Service as the filing date?
a) A petition showing that the number of the Express Mail mailing label was placed on the application before the application was sent.
b) A true copy of the new application showing certificate of mailing thereon signed by the practitioner’s secretary stating when the correspondence was deposited with the U.S. Postal Service as first class mail with sufficient postage in an envelope addressed to the Commissioner of Patent and Trademarks.
c) A true copy of the Express Mail mailing label showing the “date-in” or other official notation entered by the U.S. Postal Service.
d) A true copy of the new application showing the number of the Express Mail mailing label thereon.
e) A true copy of any returned postcard receipt.
So which one is the correct answer???
Answer (b) See section MPEP 513(e)(1)(2)(3)
See 37 CFR 1.10 (e)(3)
or
513 VII
Re Q1, its (d)..brand name recognition is NOT considered.
Re Q2, its (b)..you do not need a COM when mailing stuff using express mail
i had Q2 appear on my test yday
I passed last week, thanks for the great site.
I am selling my almost entirely unused PRG study materials. This includes: 1) All 4 volumes of volumes of “Patent Practice” textbook,
2) Printed practice questions corresponding to each volume of “Patent Practice,”
3) CD-ROM with over 2,000 practice questions (really helpful),
4) Printed version of MPEP (4 large binders),
5) PRG’s “Latest Tips and Tricks for Success” for passing the patent bar on your first try, and
6) Binder with all handouts from class and my notes.
Price is 750 (paid almost 3,000).
Please respond to this thread if interested.
I am struggling with one question from the old exams:
April 2002 a.m. question 8: WHY IS THE JONES PATENT NOT 102(e)–SINCE IT ISSUED AS A U.S. PATENT BEFORE THE FILING OF CLARK’S PATENT?????? THE ANSWER SECTION CLAIMS THE JONES PATENT IS 102(a).
8. On March 20, 2000, Patsy Practitioner filed a patent application on widget Y for the ABC Company based on a patent application filed in Germany for which benefit of priority was claimed. The sole inventor of widget Y is Clark. On September 13, 2000, Patsy received a first Office action on the merits rejecting all the claims of widget Y under 35 U.S.C. § 103(a) as being obvious over Jones in view of Smith. When reviewing the Jones reference, Patsy notices that the assignee is the ABC Company, that the Jones patent application was filed on April 3, 1999, and that the Jones patent was granted on January 24, 2000. Jones does not claim the same patentable invention as Clark’s patent application on widget Y. Patsy wants to overcome the rejection without amending the claims. Which of the following replies independently of the other replies would not be in accordance with proper USPTO practice and procedures?
(A) A reply traversing the rejection by correctly arguing that Jones in view of Smith fails to teach widget Y as claimed, and specifically and correctly pointing out claimed elements that the combination lacks.
(B) A reply traversing the rejection by relying on an affidavit or declaration under 37 CFR 1.131 that antedates the Jones reference.
(C) A reply traversing the rejection by relying on an affidavit or declaration under 37 CFR 1.132 containing evidence of criticality or unexpected results.
(D) A reply traversing the rejection by stating that the invention of widget Y and the Jones patent were commonly owned by ABC Company at the time of the invention of widget Y, and therefore, Jones is disqualified as a reference via 35 U.S.C. § 103(c).
(E) A reply traversing the rejection by perfecting a claim of priority to Clark’s German application, filed March 21, 1999, disclosing widget Y under 35 U.S.C. § 119(a)-(d).
ANSWER:
8. ANSWER: The correct answer is (D). The prior art exception in 35 U.S.C. § 103(c) only applies to references that are only prior art under 35 U.S.C. § 102(e), (f), or (g). In this situation, the Jones patent qualifies as prior art under § 102(a) because it was issued prior to the filing of the Clark application. See MPEP § 706.02(l)(3). Also, evidence or common ownership must be, but has not been, presented. Mere argument or a statement alleging common ownership does not suffice to establish common ownership. Answer (A) is a proper reply in that it addresses the examiner’s rejection by specifically pointing out why the examiner failed to make a prima facie showing of obviousness. See 37 C.F.R. § 1.111. Answer (B) is a proper reply. See MPEP § 715. Answer (C) is a proper reply. See MPEP § 716. Answer (E) is a proper reply because perfecting a claim of priority to an earlier filed German application disqualifies the Jones reference as prior art.
You are right. The reference does qualify as 102(e) art, and therefore could be properly excepted under 103(c). However, the prior art patent also issued before the application filing date, which also makes it a reference under 102(a). Because 103(c) doesn’t help you out when it comes to 102(a) references, answer choice D won’t work (and is therefore the correct choice).
In practice, an Examiner will only rely on 102(e), when he can’t “get” you with 102(b), or 102(a), in that order of preference.
Peter, This may not help, but, check this explanation from the USPTO:
http://www.uspto.gov/web/offices/com/sol/foia/oed/regrades/R2003-108.pdf
The question starts on page 5.
WOW!!!! Fantastic reference. Thanks. I am still not certain why this is “clearly a reference under 102(a)”, but I will study this further.
THANKS VERY MUCH FOR THIS REFERENCE!.
Does anyone know when the duty of disclosure ends? Is it when the patent issues or when the patent has been filed?
Thanks.
I have a question about the interaction of a 102(d) and a Continuation-in-part.
Off the top of my head, I file an app in Germany 3/1/95, next I file in the US on 2/1/96 (within one year of my German filing before a Germany patent issues). The German patent issues 5/1/96. Next I file a continuation-in-part to the US file adding new matter and a new inventor, on 6/2/96. I thought under section MPEP 201.08 the CIP took the benefit of the parents filing date.
My question is whether this continuation-in-part is 102(d) barred since the German filing is >1 year before the CIP was filed and the German patent has issued before the CIP filing?
I’m confused about the new-matter added to the CIP.
(1) If all the matter including the new matter was disclosed in the German app then the CIP is 102(d) barred?
(2) if the new matter added in the CIP is not disclosed in the German app but the original matter was disclosed then….?
If someone could direct me to the correct location of the MPEP or assist me with the question I’d be grateful.
Thanks.
I passed the exam this week and there were few repeats. I saw the same repeats reported above.
The exam was a more time consuming morning sessoin and an faster pm session. Most of the answers I found in the MPEP.
Unlike the older questions, the newer questions are harder to search through the CFR. It seems the older exams (2001/2/3) are almost doable just with the CFR. The new ones are not.
Exam concepts:
– Filing requirements for PCT applications at the US-PTO (minimum requirements to get filing date, nationality, etc). The questions were perfectly searchable in the PCT chapter.
-Tricky questions about when the examier should not have to write a statement of allowability, extensions of time during reexaminations.
-102(e) questions regarding prior art dates.
– questions regarding the difference between 102 and 112 rejections.
– 102(d) requirements
-102 rejections using more than one reference
– Appeals were straight forward, the hard one was which new argument can be presented without any previous mention in briefs/answers/replies even during oral hearing.
– Faxing from overseas
-Attorney not of record
-Public access
-reissue to fix inventorship: what has to be submitted.
-the time windows, especially with the examiners answer, reply etc. Know were to find the variable windows, the mail date which closes and ends it all.
-missing figure question, how to fix without loosing filing date.
I noticed that two questions were repeated within the exam.
How did I prepare?
– Read the freepatentbar.com summary.
– Worked the practice questions over and over again. Do not just learn them, work them. Find the answers in the MPEP every single time. Even investigate the “wrong” answers. That is, research all: A, B, C, D, E.
– You got to get to the level that you can read a question and know which MPEP chapter you need to search in just looking at the question.
-And spent time reading and studying this mypatentbar site. Work it back and forth, ask questions, post. Work the discussions, search for the discussion points, do not just look up the quoted MPEP material. Try to find it yourself.
-Read Chapters, 200, 1200, 700, 2100 at least twice. Once halfway through the studying, then again toward the end. The PCT summary on this webpage is great. Then go and read 1800.
-The dump area of patentbarquestions.com helped a lot as well.
-Look at the intelproplaw webpage as well.
-Study what exam takers report from previous exams.
The folks here sent me a free one-day trial for the usptoexam.com webpage. It is nicely done. Didn’t agree with all the sample answers, but this was great since I learned a lot from working the answers given. I redeemed that voucher two days before the exam and it helped a lot. Especially working the diffcult questions, looking at their explanations and then working those answers.
I have no law background and studied from scratch. Didn’t take a course either. Studied over the course of five months, two of them solid.
I passed! First try. A huge thanks to everyone on this site and patentbarquestions.com.
Here are some of the things that I used to study.
http://www.mypatentbar.com
– Looked up the answers to the repeat questions about 3 times. (make sure that you look up the specific part of the MPEP that contains the answers. If you do this, you will be ready for the variations on the actual test.)
– Took the 2003 tests 2 times (Looked up answers that I missed)
– Looked up the answers to the “new questions” 3 times (these are found in “Exam Questions and Concepts”)
– Read most of the Study Guide
– Read and looked up answers to question in people’s posts (one of the posts had a pdf letter from the USPTO with questions and answers.)
http://www.patentbarquestions.com (this site isn’t working now, but hopefully it will be fixed in a while)
– Looked up the “Key Things to Know”
– Looked up the answers to the “new questions”
http://www.freepatentbar.com (I didn’t use this very much, but it is available)
Use the MPEP 8th edition 4th revision to study. Acrobat Reader 5.0 is pretty close to the software you can use during the test. One of the things that I learned on the test is that you can click on the PDF and then start you search from where you clicked. This is helpful to refine your search.
I probably spent about 120-150 hours studying for the exam.
Some of the repeats that I saw were:
Product by Process (4.00.6a)
Restriction (4.00.9a)
Mario Lepieux (4.00.10a)
Laurel, Abbot and Hardy (4.00.14a)
Federal Court Decisions binding for Office (4.00.19p)
Claims stand or fall (4.00.28p)
102(b) dates (4.00.41p)
XYZ/ABC Appeal (10.00.02a)
Sally, Ted and Spot Remover (4.01.10p)
Smith’s Drawings (10.01.3p)
Signing Inventors (4.02.44a)
Henrietta’s Camera (4.02.11p)
Non-Signing Inventor (10.02.1a)
Broadening Reissue (10.02.12a)
Dead Inventors (10.02.30a)
Facsimile Transmissions (10.02.49a)
Certificate of Correction (4.03.11a)
Potter (4.03.12a)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
Time for Filing an Appeal Brief (4.03.39a)
Small Entity Status (4.03.13p)
Copper substrate (10.03.4a/4.03.16p)
Smith / DRAM (10.03.9a)
Inventor Refused to Sign (10.03.12a)
Tribell (10.03.16a)
Hydrocyclone (10.03.31a)
ABCD/ABCDE/BCDE (10.03.2p)
Moondust (10.03.6p)
Parking Meter (10.03.28p)
Issue fee transmittal form – XYZ Company (10.03.38p/4.03.11p)
App Data Sheet (10.03.43p)
Toy plane with Foil Wings (10.03.46p)
As you can see, I saw a lot of repeats, SO DO THE OLD TESTS!
Good Luck to Everyone!
This is interesting. I do not recall seeing many of those questions cited above. Even considering the exam haze, some of them are so characteristic that I would recall them. This confirms the feeling I had going into it, that you need to know the old questions, but be ready to do some serious searching on the questions you do not recognize. And that everyone who takes it may get a randomly generated exam. In other words, each exam may be more or less unique. Know your stuff!
Just passed. My first thought was that I am glad I don’t have to sit through that again.
Thanks to everyone who has made this site an excellent resource.
I also used the patbar.com program (in addition to this site)—and it was worth every cent. Overall, probably 300-400 hours.
Here are a couple of new questions I had not seen:
1) Inventor A refuses to sign. Inventor B signs. Inventor A thinks he is the only inventor and thinks B should not be applying for a patent. What can A do?
Answers ranged from
a) File own patent with same claims and call interference (this is the choice I reluctantly picked).
b) Wait for B’s patent to issue file protest (wrong because protest cannot be for issued patents).
c) Wait for B’s patent to issue–call for re-exam
d) Correct under 1.48–and sign by “A” stating elimination of B was without deceptive intent (No way)
I forget the other response—maybe wait for B patent to issue an then correct through re-issue (wrong). Basically, I went through the process of elimination. In the end it seemed that only (a) was right.
Very annoying question about maintenance fees–and what happens when a fee is returned. All the answers centered around 1.377.
Probably received over 25 repeat questions (very lucky)..
If you have the answers to 2002-2003–and can answer within 30 sec–then you will be fine. (Also–you must know why the wrong answers are ‘wrong’)
Best of luck everyone—and thanks again.
Peter
Peter,
Congratulations on passing the patent bar exam!
Thanks so much for posting and adding a new question. It’s contributions like yours that help make this site so helpful to everyone preparing for the patent exam.
Best of luck in your new career.
Can someone help me understand the difference between RCE and a continuing application?
JSimha,
RCE & continuing applications are similar. Both are filed after final action while the application is still pending. For a continuation, you would file a new application (see MPEP 201.07) For an RCE, you pay for one more round with the examiner on the same application.
But, you probably want a much more complete explaination than that. Chapter 14 of the book “Patent It Yourself” written by Pressman and published by NOLO has a very good explanation and chart which explains Continuation, RCE, Reissue, CIP, Substitute, Divisional, etc. You can buy it at http://www.usptoexam.com/Books.htm or get it at a library. It also has a very clear explanation of the PCT process. I found it very useful to learn the basics.
Took exam on April 22 and passed.
I took a PLI course, went through the old exams from 2000-20003, and repeat questions from this site.
The first half was brutal with may be 10 repeats at best and many tricky questions that requried checking the MPEP. I had five minutes left till the end of the first half of the exam and still was going over some of the marked up questions.
In contrast, the second half was very easy and loaded with repeats from the old exams and this site; I would say about 35 questions total if not more. I finished it in two hours and double checked about 10 questions that were somewhat tricky during remaing time.
The questions were pretty much in line with Bob’s April 15 post.
This is a question I saw earlier.
On Feb 15, 2000, Debbie conceived a new, useful and nonobvious improvement in saddles for horses. Debbie spent the next four months working regularly on the idea and she built a prototype that implemented the concept on JUne 17, 2000. Debbie basically visits a patent atty on Dec 1, 2000 and an application was filed on Dec 11, 2000.
On May 15, 2000, Billie conceived an idea substantively identical to Debbie’s. Billie immediately files an application on June 14, 2000. Later on JUly 9, 2000, Billie built a prototype that implemented the concept and tested it on Aug 11,2000.
With regard to Priority contest, which is correct?
a) debbie will be awarded priority only if she can establish diligence for the entire time between May 14, 2000 and her actual RTP in June,2000 and can establish that she did not ASC the invention.
b) debbie will be awarded priority only if she can establish diligence for the entire time between Feb 14, 2000 and her actual RTP in June,2000 and can establish that she did not ASC the invention.
c) debbie will be awarded priority if she can establish diligence for the entire time between May 14, 2000 and Dec, 2000 and can establish that she did not ASC the invention.
The rest are clearly wrong answers.
Can somebody pl tell me how A can be the most correct answer and not B?
Clearly,
2138: To qualify as prior art under 35 U.S.C. 102(g), however, there must be evidence that the subject matter was actually reduced to practice, in that conception alone is not sufficient.
Thank you.
This is a question I saw earlier.
On Feb. 15, 2000, Debbie conceived a new, useful and nonobvious improvement
in saddles for horses. Debbie spent the next four months working regularly on
the idea and she built a prototype that implemented the concept on June 17,
2000. The prototype worked perfectly for its intended purpose. The next day,
Debbie visited a patent attorney, Ginny, and asked her to prepare a patent
application on Debbie’s behalf. Ginny explained that her workload would prevent
her from working on the application for at least four months. Ginny therefore
declined representation of Debbie and gave her the names of a number of other
qualified patent practitioners. Debbie, however, did not contact any of the
individuals recommended by Ginny. Debbie visited Ginny again on Dec. 1, 2000.
At that time Ginny agreed to represent Debbie. A patent application was filed in
the Patent Office on Dec. 11, 2000.
On May 15, 2000, Billie conceived an idea substantively identical to Debbie’s.
Billie immediately prepared a detailed technical description including drawings
and visited a patent attorney. Billie filed a patent application on June 14, 2000.
Later, on July 9, 2000, Billie built a prototype that implemented the concept and
had fully and successfully tested it by Aug. 11, 2000.
With regard to a priority contest between Debbie and Billie, which of the following
statements is most correct?
(A) Debbie will be awarded priority only if she can establish diligence for the
entire time between May 14, 2000 and her actual reduction to practice in June
2000, and can establish that she did not suppress, abandon or conceal the
invention.
(B) Debbie will be awarded priority only if she can establish diligence for the
entire time between her conception in Feb. 2000 and actual reduction to practice
in June 2000, and can establish that she did not suppress, abandon or conceal
the invention.
(C) Debbie will be awarded priority if she can establish diligence for the entire
time between May 14, 2000 and her patent filing in Dec. 2000, and can establish
that she did not suppress, abandon or conceal the invention.
(D) To encourage prompt disclosure of inventions to the public, priority is always
awarded to the first to file an application, in this case Billie.
(E) Billie must be awarded priority because his patent application established a
constructive reduction to practice prior to Debbie’s actual reduction to practice
Answer:
ANSWER: The most correct response is (A). 35 U.S.C. § 102(g); Mahurkar v.
C.R. Bard, Inc., 38 USPQ2d 1288 (Fed. Cir. 1996). If statement (D) were correct,
there would be no need for interference proceedings. Statement (B) is incorrect
because Debbie need not establish diligence for the period from February 2000
until just before Billie’s conception on May 15, 2000. Statement (C) is incorrect
because, so long as there has not been an abandonment, suppression or
concealment of the invention, Debbie need not show diligence between the
actual reduction to practice and the patent filing. Statement (E) is inconsistent
with 35 U.S.C. § 102(g).
Can somebody pl explain how A can be the most correct answer and not B?
Clearly,
2138: To qualify as prior art under 35 U.S.C. 102(g), however, there must be evidence that the subject matter was actually reduced to practice, in that conception alone is not sufficient.
Also, according to
715.07(a):
Where conception occurs prior to the date of the reference, but reduction to practice is afterward, it is not enough merely to allege that applicant or patent owner had been diligent. Ex parte Hunter, 1889 C.D. 218, 49 O.G. 733 (Comm’r Pat. 1889). Rather, applicant must show evidence of facts establishing diligence.
Thank you,
2138.01
The first of many to reduce an invention to practice around the same time will be the sole party to obtain a patent, unless another was the first to conceive and couple a later-in-time reduction to practice with diligence from a time just prior to when the second conceiver entered the field to the first conceiver’s reduction to practice.
So, Debbi only need to establish diligence from just prior to Billie’s conception to reduce to production.
Makes sense.
Thank you.
Had combination/subcombination today.
It is proper to require restriction when a combination does not require the particulars of the subcombination as claimed for patentability, the subcombination can be shown to have other utility, and there would be a serious search burden as evidenced by separate classification, status, or filed of search. 806.05(c)
I took the exam last month, and had at least three questions about dead inventors. I think one was re changing inventorship, one was about inheritance of the patent rights and who could make decisions, and one was something about assigning rights. Either way, lots of dead inventors on one test.
Just passed today on my first try.
I have noticed the following questions:
Titanium Baseball (Public Use/Printed Publication)
Mirror (Inherent Function)
Amending the Abstract – PCT
Deleting Priority Benefit Claim
Missing Parts – PCT
Costa Rica (all applicants are Costa Rican)
Velcro
Trade Secret Question
Germany – PCT/Patent Term
Maintenance Fee Paid / Check Returned
Death of inventor before application is filed
Terminal Disclaimer – who can sign
Piecemeal
Documents Requiring Signatures
Assignee – what can be filed without establishing assignment of record
Best Mode – part of 35 USC 112 first paragraph
I also passed the exam on May 13, 2010. This site provided very useful info and I really appreciate all those who have contributed to it. Here are the questions that I recall:
– Titanium Baseball (Pulic Use/Printed Publication)
– Mirror (Inherent Function)
– Costa Rica and Sweeden – PCT
– Velcro (Trademarks in Claims)
– Information requested from USPTO
– Trade Secret Question
– Means plus Function variant of Door Handle (Determining Equivalence)
– Piecemeal
– Missing parts in PCT Application (30 days)
– Shoe Polish and hair gel
Overall, I think there were about a total of 25~30 questions from “Repeat Questions” (in both sessions), I remember the following:
– Tommie and Jo(4.00.23a/4.00.24a)
– Bond 60%C or 60%D (4.00.27a)
– 147 Claim Counting (10.03.50a/4.03.28p)
– Lancer Toothbrush (4.03.33a)
– Bloc; Synthetic Z (10.03.7a/4.03.32p)
– RCE During Appeal (10.03.36a)
– Moondust (10.03.6p)
– Correcting the Name of the Inventor (10.03.18p)
– Design Patent in Country X (10.03.27p)
– Smith & Jones… (10.03.30p)
I passed today! I crammed for 6 days…about 10-12 hours a day…mostly just did old exams from April and October 03. Reading through full passages of the the MPEP was actually very useful as well. I only did that for some portions of 700, 1200, and 1400 and found that it helped me understand the intricacies of the rules a lot better. If I had more time, I would have read through more sections. One thing I found that was AWESOME was the charts for 102(e) prior art dates in chapter 700. There were probably three questions on that…and if you learn to read the charts, it’ll take just a minute.
I got ALL the same questions that GS got above. Lots of repeats, especially in the morning half, for some reason. I can’t remember any new questions. I feel like I saw at least 90% of the questions between this site and the April and Oct 2003 exams. Definitely recommend memorizing those…including reading the explanations with the answers.
Anyways…with 6 full days of prep…I felt like I did pretty well…probably scored at least 80…felt pretty confident about most of the questions, and only had to go back to two or three. Overall, I felt like there was more than enough time to look up questions that I hadn’t memorized from past exams (but if i hadn’t memorized past exams…I probably would have been short on time)….and I basically looked up every question in the MPEP just to be safe. Still finished each section with at least 40 minutes to spare and check answers.
The check-in/out process for Prometric is a bit of a pain in the butt. We had to do biometric (finger print) verification for signing in and out of the test room. You don’t get extra time outside of the one hour lunch break. While you’re taking the exam, you can leave to go to the bathroom…but you have to sign in and out and the time just keeps ticking. Don’t wear pants with lots of pockets!! They made everyone flip every pocket inside out and one guy had cargo pants on!!!!
I failed the exam yesterday – got a 65% – was pretty upset, but I guess I should’ve put more work into it. Any advice on what to do or not do the second time around is greatly appreciated!
I feel like if I had an extra 40 hours to study, I’d definitely pass. I am a law student so I thought I could probably figure things out since I was somewhat familiar with this stuff but that is not the case for all the topics. Sure, my background helped me understand 101, 102, 103 and 112 but that is not where most of the questions came from.
I couldn’t do much full time study because of school, work and final exams and some other commitments, but I did study full time and overtime the last three days before the exam. Things really started to come together in those days. Before that I tried to study at least every other day for about 4 hours but definitely took some breaks from it here and there because of the other things I had to get done.
I started studying by watching John White’s PLI DVDs to get familiar with the concepts a couple of months ago. I don’t think very much sunk in at that point but at least the MPEP verbiage wasn’t overwhelming. I didn’t watch all of them, just 100 – 700 and attempted the PCT but it made no sense to me so I moved on. Then then I started looking over old practice exams to see if I knew the answers to the questions without looking things up.
I started doing half exams every other day about 3 weeks ago. I did a total of 3 practice exams, I did the 03 exams twice each, and read this site two days before the exam. Next time I will definitely make sure I have all the repeats down cold, and understand reported new questions as well, because I had a fair amount of both on my exam yesterday.
I could tell it was going to be a close call from the first half. I had more than expected on Access, Assignment, PCT and Appeal questions, the four topics I was only generally familiar with. Sorry John White, the meat and bones is not 700 + 2100. Don’t get me wrong, I had a good amount of questions from those, but not as many as I thought I would. I wouldn’t say any one chapter dominated, except maybe the PCT, but I think it was just my bad luck.
In the first half I had maybe one PCT question and a lot of Access (100), Assignment (300), Owner/Inventor (400) questions that I had no idea about. Also there were a bunch of protest (1900) and third party submission questions. I wasn’t even aware the protest chapter existed/was tested until a day before the exam!
I felt like on the second half, almost every other question was on the PCT which was my weakest chapter. And the fact patterns were lengthy and date laden. There were also a lot of reexam and appeal questions in the second half. Both halves had 700 + 2100 questions but the majority of the questions didn’t really come from those chapters.
I can’t start studying for the exam again until August which really bums me out because I feel like I learned so much and I might forget a lot of it and will have to start from scratch. Next time I plan to actually read 700 and 1800 and skim 600 and 1200 and maybe 1400 and 2100. I will definitely practice with Appendix R a lot more too. I wasted a lot of time trying to find things on the weird obscure questions that I got as well as on 100-600 which I was just generally familiar with. I knew a bunch of rules from them, but I wasn’t sure of myself on any of them, so I’d try to find them before answering the question, and I didn’t even know where I learned them from to begin with.
I had about 40 repeats of which I remembered the answers to about half, and the rest I was mostly sure or couldn’t remember. Reading the new reported questions from this site helped a good amount, except for the debated questions. If I had more time, I’d try to find the answers in the MPEP myself, but I didn’t. Even so, reading the discussions helped on the exam for at least a quarter of those questions.
Any tips or suggestions on how to proceed in August are welcomed and appreciated!
Repeats
(not sure about some of the Oct 03 ones because I did them that morning, and I’m not sure if I remember them from practice or the actual exam)
Laurel, Abbot and Hardy (4.00.14a)
Smith Laminate(4.00.17a) (i think my variant was about which would be proper for a 102 rejection)
Prior Art (4.00.42a)
Reexamination (4.00.47a)
Federal Court Decisions binding for Office (4.00.19p) (my variant used “not invalid” instead of valid)
Prior Art (10.00.16a)
Mitch and Mac (10.00.23a)
Affidavits (10.01.46p)
Hair Gel (4.02.37p) (my variant was neither hairgel nor football pads, don’t remember what though)
37 CFR 1.131 (10.02.6a)
Public Inspection (10.02.21a)
Dead Inventors (10.02.30a) (variant)
Third Party Submissions (10.02.46a)
35 USC 119(a) (10.02.1p)
Protest (10.02.46p) (variant)
Reduction to Practice (4.02.1a)
Japan/nonpublication request/45 days (10.03.44a/4.03.2a)
Certificate of Correction (4.03.11a)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
Board of Appeals Remanding case to the Examiner (4.03.25a)
Certificate of Mailing (4.03.29a)
Verification (4.03.31a)
Small Entity Status (4.03.13p)
Bloc; Synthetic Z (10.03.7a)
Smith (10.03.9a)
Tribell 10.03.16a
Supplemental Oath (10.03.26a)
Hydrocyclone (10.03.31a)
Dependent Claim (10.03.41a) (variant having a valid choice)
Restriction Appeal (10.03.42a) (variant but asks about the same thing)
ABCD/ABCDE/BCDE (10.03.2p)
Moondust (10.03.6p)
Diligence (10.03.8p)
Verification Statement (10.03.32p)
Certificate of Mailing (10.03.34p)
ABCD/ABCDE/BCDE (10.03.2p)
Toy Airplane with Foil Wings (10.03.46p)
Product-by-Process Claims (10.03.13p)
Correcting the Name of the Inventor (10.03.18p) (variant where the correct answer of the old exam wasn’t listed)
Which, if any: Chapter 600 (10.03.22p) (variant)
Design Patent in Country X (10.03.27p)
Parking Meter (10.03.28p)
New Questions
Q2) Titanium Baseball (Pulic Use/Printed Publication)
Q4) Submitting Tables on CD-ROM
Q8) Missing Parts – PCT
Q9) Correcting PCT Applications
Q12) 1.131 and 1.132 Affidavits
Q16) Lip Gloss/Ship Bell (Experimental Use)
Q18) Small Entity Status
Q19) Mexican Nationals – PCT
Q20) Information requested from USPTO
Q21) Trade Secret Question
Q22) Germany – PCT / Patent Term
Q23) Broom
Q24) Japanese Patent
Q26) Maintenance Fee Paid / Check Returned
Q27) Reissue (variant of Tommie and Jo)
Q28) Means plus Function variant of Door Handle (Determining Equivalence)
Q29) Death of inventor before application is filed
Q31) Chemical Claim
Q34) Investigating Deceptive Intent
Q35) 2 Month Rule for Final Office Action
Q36) Notice of Appeal
Q37) Terminal Disclaimer
Q38) Piecemeal
Q39) Advisory Action
Q40) Assignment
Q42) Missing parts in PCT Application (30 days)
Q51) Best Mode
Q52) Multiplicity
Q56) Restriction Requirement / Continuation Application
Q57) 102(a): Need to file foreign language translation
Q60) Anticipation
Q61) PCT Publication
Q62) 102 and 103 Rejections
Q63) TP Submissions
Q64) Restriction
Q66) Claims
Q67) Obviousness
Q68) Hydrocyclone
Did you seriously get these many familiar questions?
I am praying that I get too….
when I started looking over them today I wondered the same thing… I’d say at least half of the ones I posted (from both repeated and new questions) were the exact ones I looked at before. About a quarter are either variants or test the same concept. I guess about 15% I probably erred on, and actually remember them from practicing the day of…
Haha when I started looking over them today I wondered the same thing… I’d say at least half of the ones I posted (from both repeated and new questions) were the exact ones I looked at before. About a quarter are either variants or test the same concept. I guess about 15% I probably erred on, and actually remember them from practicing the day of…
so yeah – moral of the story – know ALL the repeats cold. I only knew most of 03’s. Should’ve worked on the older ones too! About half of my repeats came from 00, 01 and 02.
I’m really good at recalling what I’ve looked at before so I recognized many questions. (But just because I’ve recognized them doesn’t mean I always remembered the answer, especially if I made no effort to memorize)
My friend who took and passed a few months ago said he only had 10 repeats but he also doesn’t believe in photographic memory which leads me to believe that he doesn’t have one. He passed by remembering a bunch of rules and being very familiar with the MPEP and where and how to search best.
So, I suspect that those who say they only got 10 repeats or so, don’t actually remember the others as repeats. Thoughts?
I guess I’ll give my “moral” in three days ;-)!
this is easier said than done; however, i think you should re-exam asap and shake off the anxiety of your last exam.. as Gen. Patton declared, “success is not measured at how high you have climb, but at how high you bounce back when you hit the bottom.”
good luck S.. we will be seeing your post in this site within the week
any suggestions where to buy cheap materials for Alabama State Bar? bar materials are cheap back home in my native country
Sorry to hear that, Banana. You will pass next time for sue. S, I am taking the exam the same day as you. Good Luck to both of us. Thank you for answering some of my questions.
Amen!
Oops, I meant you will pass for sure next time. Typo.
Banana, I feel your pain. I didn’t have more than 20 repeats, at best and Lima’s exam description feels familiar. I too wish I had more time to study – but as you rightly pointed out, knowing the old exams COLD will definitely help!
In my exam, there were a good number of 700, 2100, PCT, appeal, protest and reissue in my second half. I had barely any questions from chap. 600 throughout.
I plan to go to the USPTO and review my exam soon – will try and post newer questions again after that.
Good luck S and newtopatentbar!
In an April exam, there was a question on adding an inventor with a refusing other inventor that went something like:
An application is filed for inventors A and B both assigned to X. During the prosecution, X decides inventor C should be added. In the meantime, B has been fired and refuses to cooperate. What can be done? Don’t remember their choices. I have been trying to figure this one out:
Can’t do 1.47 – too late, already filed with original oaths
Can’t do 1.48a – It requires an oath or declaration by actual inventors that (1.63a4) believes named inventors original inventors, which B won’t sign
Can’t do RCE – prosecution is not closed
Can petition 1.183 for suspension of rules + 1.48, needs consent of X (201.03). No guarantee petition will be approved
Can do Continuation with correct inventorship under 1.53, then abandon parent
Agree on analysis?
This is definitely an option.
MPEP 201.07 Continuation with the correct inventorship under 1.53 and a subsequent abandoning of the parent.
MPEP 1481.02 If the patent has already issued, assignee can also file for a reissue.
See MPEP § 1412.04. Reissue is a proper vehicle for correcting inventorship in a patent. Because correction of inventorship does not enlarge the scope of the patent claims, the reissue application may be filed more than two years after the patent issued.
Another possibility:
Can convert the application to provisional by 1.53c2. Then file a non-provisional claiming priority 119e and oath or declaration using 1.47 for refusing inventor
Passed on the First try, yesterday!
My moral of the story – Know the old tests and exam questions and concepts WELL.
I went in 45 mins ahead and started the exam right away. I think I had atleast 30-40 repeats and for the ones that were new, I guess I didn’t have to refer to the MPEP that much.
I owe a lot to this site and freepatentbar.com and patentbarquestions.com. I am returning the favor.
Exam Questions and concepts:
Q3) Mirror
Q) Correcting PCT Applications – PCT (MPEP 1800)
Q14) Costa Rica and Sweeden – PCT
Q15) Spanish Phone – Design
Q18) Small Entity Status
Q23) Broom
Q24) Japanese Patent
Q25) Electric Fan
Q26) Maintenance Fee Paid / Check Returned
Q34) Investigating Deceptive Intent
Q35) 2 Month Rule for Final Office Action
Q36) Notice of Appeal
Q37) Terminal Disclaimer
Q38) Piecemeal
Q40) Assignment
Q51) Best Mode
Q59) PTO-892
Q63) TP Submissions
Q64) Restriction
Q67) Obviousness
Repeat Questions:
Mario Lepieux (4.00.10a)
Smith Laminate(4.00.17a)
Affidavits (10.01.46p)- different version
Facsimile Transmissions (10.02.49a)
Potter (4.03.12a)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
Lancer Toothbrush (4.03.33a)
Polypropylene range (obviousness of ranges) (4.03.44a)
Bloc; Synthetic Z (10.03.7a/4.03.32p)
Amendment after Appeal (4.03.38p)- variation
Reexam Extension of Time (10.03.6a)
35 USC 102(d) (10.03.8a) variation
Smith / DRAM (10.03.9a)
Tribell (10.03.16a)
RCE During Appeal (10.03036a)
Restriction Appeal (10.03.42a)
Correcting the Name of the Inventor (10.03.18p)- with an ADS variation
Q) Affidavit 1.131 (10.03.36p)- a couple of variations
Besides these, I got:
1) Correction of inventorship:
a) through 1.48
b) through continuation applications
and c) reissue and the inventors don’t have to sign where there is a broadening claim
2) what is needed for recording an assignment except cover sheet
3) joint inventors- one inventor dies during prosecution
4) what is needed for oral hearing EXCEPT date and time
5) got a couple of combination/subcombination questions
6) two patents- one issued. No common inventor and no common assignment, how can they be rejected:
a) statutory double patenting
b) nonstatutory double patenting
c) provisional double patenting
d) 102(e) rejection (I chose)
e) None of the above
Thanks a lot. keep up the good work, guys!!!
Good luck everybody, else!
Sorry a correction!
6) two patents- one issued. No common inventor and no common assignment, how can the patent be rejected:
a) statutory double patenting
b) nonstatutory double patenting
c) provisional double patenting
d) 102(e) rejection (I chose)
e) None of the above
Got a real messy appeal question on 6/02/2010 that I in all likelihood missed. Involved a continuation filed after notice of appeal. Asking for copendency so can ask for extension of time? I went with C. Here is the question and answers as best a I remember:
Appeal is filed in parent application A following final rejection but no brief is filed, and a continuation B is filed one day before the seven months to file brief in parent A expires. Nothing filed in A (extension of time etc) but cover letter for B says “Commissioner is authorized to deduct any fees etc including necessary to make parent application A co pending.”
Question was what is status of B?
(A) Co pending because filed before notice of abandonment mailed in application A
(B) Abandoned because it should have been addressed to “Director” and not “Commissioner”
(C) Abandoned because separate applications require separate papers, and therefore request for extension in B cover letter didn’t extend A to make co pending
(D) Co pending if an automatic extension is filed in A before seven months expires
(E) Abandoned for some other reason I can’t remember
Any thought on the answer???
I found the following, not directly on point with appeal briefs, but still looks relevant. Based on this, I would think (c) is the correct answer. From 710.02(e):
Applicants are cautioned that an extension of time will not be effected in the prior application by filing a petition for an extension of time, extension fee, or fee authorization, in the continuing application. This is because the petition for an extension of time (or constructive
petition under 37 CFR 1.136(a)(3)) must be directed toward and filed in the application to which it pertains in accordance with 37 CFR 1.4 and 1.5.
but u still can’t make auto extensions after notice of appeal is filed. only 1.136(b) petitions for cause and only before the ssp is up.
I got this Q yesterday.
The the additional facts are notice of appeal was filed on Oct 27, the continuing application was filed with brief on April 26 the following year with authorization to charge necessary fees. The question is “as on May 1, what is the status of the application?” One of the choices is “copending, because it is still within 5 months extension limit and can make another extension.”
I passed the patent bar June 4th. It was my second try. I wasn’t even aware of this website the first time. Make sure you take advantage of all the information this website offers you. I had a ton of repeats. Definitely more repeats in the afternoon. Make sure you know the repeat Qs backwards and forwards. You’re doing yourself a disservice if you don’t know these questions. How disappointing would it be to fail and realize you could have passed had you memorized the answers the the freebies (repeats Qs)?
I like the site too…job well done!
I took the test last Wednesday and I did not pass, unfortunately. I missed passing by 1 question got 68%. I did not have that many repeats maybe 15%. The concepts that were most tested were PCT, Restriction/Double Patenting and provisional patents.
The repeats I remember were:
Japan 45 days
Japan PCT
Mario Lepieux
Mitch and Mac
Best Mode (4.03.17a)
Inert gas
Provisional Filing Requirements (4.03.40a)
Board Decisions (4.03.37a)
Bond 60%C or 60%D
Moondust
Bloc; Synthetic Z (10.03.7a)
Tribell 10.03.16a
Door Handle (10.03.24a)
Reexam Extension of Time (10.03.6a)
I got a question regarding when is a combination of reference in a 102 rejection proper, does any one know? Never or only to define a term in the other reference?
Also got a question about Faxing an oath and an affidavit from Germany just before midnight, but the transmission will not be completed until after midnight.
Bottom line know all the repeats, PCT, appeals, RCE, 102(e) and 119 well
Alex
only to define a term
maybe OK for 1 or 2 other things too, but for sure OK if 2nd reference is only used to define a term
Here’s a list a question I remember from the test yesterday
Q18) Small Entity Status
Q24) Japanese Patent
Q25) Electric Fan
Q31) Chemical Claim
Q36) Notice of Appeal *
Q37) Terminal Disclaimer
Q38) Piecemeal
Q41) Documents Requiring Signatures
Q50) Appeals #6
Q51) Best Mode
Q53) Reissue/Filing Amendment
Q54) Australia (30 Month) – PCT
A new question I encountered:
102(d)
Which of the following is in accordance with the MPEP102(d)?
A. 102(d) establishes NASA
B. 102(d) stopped the oil leak in the gulf
C. Foreign patent can be combined with other prior art to bar a U.S. patent in an obviousness rejection based on 35 U.S.C. 102(d)/103
D. An application must always be filed on or before the 1 year anniversary of a foreign application for the same invention by the same applicant to prevent a 102(d) bar
E. A&D
Obviously I don’t recall what A&B were but I was able to eliminate them fairly quickly.
C is what I chose since it is the last sentence in section 2135.01 (I)(B)
D wasn’t correct b/c if no patent has issued there is no bar under 102(d)
New question I encountered:
102(d)
Which of the following is in accordance with the MPEP102(d)?
A. 102(d) establishes NASA
B. 102(d) stopped the oil leak in the gulf
C. Foreign patent can be combined with other prior art to bar a U.S. patent in an obviousness rejection based on 35 U.S.C. 102(d)/103
D. An application must always be filed on or before the 1 year anniversary of a foreign application for the same invention by the same applicant to prevent a 102(d) bar
E. A&D
Obviously I don’t recall what A&B were but I was able to eliminate them fairly quickly.
C is what I chose since it is the last sentence in section 2135.01 (I)(B)
D wasn’t correct b/c if no patent has issued there is no bar under 102(d)
Another question I hadn’t seen had to do with exparte reexamination and extension of time under 37 CFR 1.550(c). It was a which one of these is not correct type questions.
I chose A and it’s the only answer I remember. It said something like “There is statutory no time limit for for a 1.530(b) statement to a be filed under the provisions of 37 CFR 1.550(c).” All the other answers except E had something about 1.550(c), i was able to look up b,c,d and find what I thought supported them. I believe the relevant MPEP section is 2265 Extension of Time.
Question I had not seen b/f had to do with what to file with a request for an accelerated examination. The answers mapped directly to 708.02(a)Accelerated Examination (I.)(I)(1-5) and was E all of the above.
708.02(a)Accelerated Examination (I)
(I)At the time of filing, applicant must provide in support of the petition an accelerated examination support document.
(1)An accelerated examination…
(2)For each reference cited…
(3)The accelerated examination…
(4)The accelerated examination…
(5)The accelerated examination…
Protest question I had not seen b/f:
Corporation XYZ has you a practicing patent attorney file a protest on patent application A that has already been published but has not received a first office action.
A. The protest will not be considered b/c Corporations cannot file protest.
B The protest will not be considered for some odd reason
C. The protest will be considered even though the application was published because a final action has not been sent yet
D. The protest will not be considered for some odd reason
E. The protest will not be accepted or considered
I picked C based on the information from the cited passage below.
1901.04 When Should the Protest Be Submitted
… a protest under 37 CFR 1.291(a)must be submitted prior to the date the application was published … or the mailing of a notice of allowance … whichever occurs first, and the application must be pending…in order to be ensured of consideration… A protest submitted after the mailing of the notice of allowance will not knowingly be ignored if the protest includes prior art documents which clearly anticipate or clearly render obvious one or more claims. However, the likelihood of consideration of a protest decreases as the patent date approaches.
PCT question:
PCT app filed on 11/20/00 (before the 11/29/00 date) claims US and published in English
IB sends copy to USPTO
Applicant files national stage fee date X
USPTO sends a Notification of Missing Requirements
Files declaration in accordance with 37 CFR 1.497 on date Y (within 2 months from notice)
What is the 102(e) date?
I picked date Y.
No 102(e) date since there is no prior art under 102(a) or b.
Continuation App Question:
File an app
Get a final office action
On the last date of the 6 month period for extension file a continuation
The continuation app requests that the original app be extended under 136(a)
It is now two days after the 6 month period has expired. What is the status of the apps?
I chose the answer that said something about the original app being abandoned and the continuation not being filed since the app was abandoned at the time the continuation was filed and not properly extended.
I believe relevant passage is 710.02(e) Extension of Time:
Applicants are cautioned that an extension of time will not be effected in the prior application by filing a petition for an extension of time, extension fee, or fee authorization, in the continuing application. This is because the petition for an extension of time (or constructive petition under 37 CFR 1.136(a)(3)) must be directed toward and filed in the application to which it pertains in accordance with 37 CFR 1.4 and 1.5.
There may have been an appeal brief filed after the final office action. In either case the date the continuation app was filed was the final day a response was due along with an extension of time under 136(a) in the original application. Either at the end of the 6 (in the case of final) or 7 (in the case of the NoA) month period.
Darth,
Thanks for your helpful posts. I had a similar exam last month that I did not pass by 2 points. Any other recollections? What side did you come down on for the chemical claim? answers are all over the place on that one…might as well flip a coin if they let you take a coin in…Did you have teh same Aussie question I did? Mine went something like this:
Aussie PCT; US national stage; submits, specification, oath authorization to charge fees. The national stage application is:
A. Allowed
B. Disallowed
C. Allowed but need substitute specification
D. 371 treated as a 111
E. Abandoned
Amny thoughts?
Thanks
Man that’s tough one question. Have or are you going to go to the USPTO to review your test? Have you scheduled your next test? From what I’ve read the second time usually goes more smoothly. Good luck on the next one.
For the Chemical Claim question I made the decision before going into the test to go with “Examiner should withdraw enablement rejection, but keep written description as the application does not show how to make said chemical.” which was B on my test. I read up on what everyone posted here and on patentbarquestions and tried to verify with the MPEP but I could not find anything I thought was definitive. Nothing that I thought was significantly different than what has been posted jumped out in the actual question during the test. So I was at least able to spend very little time on the question because I had predetermined my answer even if I missed it.
I did not have the Aussie question.
I agree, the chemical question should be settled in your mind before the exam. Decided against the trip to VA after some cost-benefit analysis. I am scheduled for more abuse in two weeks. I wonder what are the chances I will get a similar exam…I may be wasting my time figuring out what questions I had, what I got wrong, and what the correct answers are…..
I passed the Bar today. Some questions remembered
Q1: multiple reference 35 USC 102 rejection:
(A) Examiner must only rely on a single referenct to make 102 rejection
(B) Multiple references may be used by the examiner to prove that the primary reference contains an “enabled disclosure;”
(C)Examiner may use other references to expand the meaning of a term used in the primary reference;
(D) Multiple references may be used but only to show that a characteristic not disclosed in the primary reference is inherent
(E) Multiple references may be used to prove that the primary reference contains an “enabled disclosure” and to expand the meaning of a term used in the primary reference;
Answer: B
Q2: A design patent was filed in France in June 7, 2003, applicant wanted to file a US design patent application and claim the priority of French filing. How can the applicant make such claim?
a: file US application within 6 months
b: file US application with 12 months
c: file application within 12 months and claim the priority within 16 months
d:….
e: None of the above
Answer: e. (because 119(a)-(d) is not available to design patent. see MPEP 201.13)
Q3: Practitioner paid full application fee, later found that the application may assert small entity status, how can he get refund?
Answer: assert small entity status and make a refund request within 3 months from the payment of the filing fee.
Q4: what amendment made on or after notice of appeal but before appeal brief will be accepted
a: request an unoffice review by the examiner
b: convert dependent claim into independent claim
c: rewrite the claim to make it more persuasive without accepting examiner’s advice
d: add new matter …
e: …..
Answer: not sure, I selected c.
Q5: calculate the number of dependent claims for fee: Claim 1 is independent claim; Claim 2 depends on Claim 1; Claim 3 depends on Claim 2, Claim 4 depends on Claims 2 and 3; Claim 5 depends on Claim 3; Claim 6 depends on claims 2, 3 and 5
a: 5
b: 7
c: 8
d: 9
e: none of above
Answer: I selected c
Q6: US provisional design patent application filed on D1, applicant filed a non-provisional design patent D2, applicant wanted to file a continuing application to claim priority of both applications,
a: filed on D3
b: filed no later than D4
c: …
d:…
e: can’t claim priority of provisional application
Answer: e (119(e) is not available to design patent)
I had Q1-Q6 on my exam as well. SP’s post jogged my memory.
I believe the answer to Q2 is A though SP based on:
35 U.S.C. 172 Right of priority.
The right of priority provided for by subsections (a) through (d) of section 119 of this title and the time specified in section 102(d) shall be six months in the case of designs. The right of priority provided for by section 119(e) of this title shall not apply to designs.
I think priority from foreign apps are ok for design apps just not provisionals or PCT’s.
Also think B is the correct answer on Q4 based on:
37 CFR 41.33. Amendments and affidavits or other evidence after appeal.
(b)Amendments filed on or after the date of filing a brief pursuant to § 41.37 may be admitted:
(1)To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or
(2)To rewrite dependent claims into independent form.
The fact is “before appeal brief”, so “rewrite dependent claims into independent claim” is not the answer. According to MPEP, the applicant can “present rejected claims in better form for consideration
on appeal”, answer c is close to this one,
you’re right sp 41.33 (a) applies with that fact pattern not (b)
Q5: why not 5 (answer a)?
claim 1: ind, so ignore
claim 2: counts as 1 dep on
claim 3: counts as 1 dep
claim 4: counts as 1 dep b/c it is improper multiple dep claim
claim 5: counts as 1 dep
claim 6: counts as 1 dep b/c it is improper multiple dep claim
thanks
I think the correct wording on the question should be “Claim 4 depends on Claims 2 or 3 …Claim 6 depends on claims 2, 3 or 5” which would make 8 the correct answer. That’s the way it was on my test anyway.
that would make sense then. much appreciate the clarification.
I saw this Q yesterday.
Who cannot sign the oath/declaration:
a: practitioner retained by inventor, then inventor cannot be found
b: inventor died, his legal representitive
c: inventor died or cannot be found, the court appointed a legal representitive
d: joint inventor when the other inventor can not be found
e: the CEO of a company which bought the invention
e: the CEO of a company which bought the invention, the inventor can not be found
The oath or declaration may not be signed by an attorney on behalf of the inventor, even if the attorney has been given a power of attorney to do so. Opinion of Hon. Edward Bates,10 Op. Atty. Gen. 137 (1861). See also Staeger v. Commissioner of Patents and Trademarks, 189 USPQ 272 (D.D.C. 1976) and In re Striker, 182 USPQ 507 (PTO Solicitor 1973) (In each case, an oath or declaration signed by the attorney on behalf of the inventor was defective because the attorney did not have a proprietary interest in the invention.).
Passed test today. Prepared using PLI home course, followed by extensive study of old tests 2002-2003, as well as the “new questions” on this website. Guess it’s my turn to give back to the community.
Overall it was easy. I finished the morning session with about 1 hour to spare and the afternoon session with 45 min extra. Memorizing repeat questions is the key.
REPEATS (OLD):
Mario Lepieux (4.00.10a)
Smith Laminate(4.00.17a)
Foreign Patents (4.02.50a)
Notice of Appeal (4.03.8a)
Potter (4.03.12a)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
Lancer Toothbrush (4.03.33a)
Board Decisions (4.03.37a)
Polypropylene range (obviousness of ranges) (4.03.44a)
New Grounds of Rejection (4.03.45a)
Interference and Reexamination (4.03.12p)
Foreign Priority (4.03.22p) POTTER – 2 VERSIONS
Bloc; Synthetic Z (10.03.7a/4.03.32p)
Bloc; Synthetic Z (10.03.7a)
Smith / DRAM (10.03.9a)
Tribell (10.03.16a)
Correcting the Name of the Inventor (10.03.18p)
Smith & Jones… (10.03.30p)
Foreign prior art date (10.03.40p)
Smith, Jones & Brown (10.03.42p)
NEW QUESTIONS
Q3) Mirror (112 enabling or 112 indefinite)
Q12) 1.131 and 1.132 Affidavits
Q14) Costa Rica and Sweden – PCT
Q15) Spanish Phone – Design
Q19) Mexican Nationals – PCT filed in US/RO not in English
Q22) Germany – PCT / Patent Term
Q23) Broom
Q24) Japanese Patent Qs
Q25) Electric Fan
Q26) Maintenance Fee Paid / Check Returned
Q29) Death of inventor before application is filed
Q34) Investigating Deceptive Intent
Q59) PTO-892
Q61) PCT Publication in US/RO
Q64) Restriction of Combinations/Sub-Combinations
OTHER QUESTIONS:
1) What is needed for accelerated examination?
2) Which statements invoke 112 6th paragraph?
3) PCT – if you file at US/RO you do not need to submit the IA or wait for it to be transferred from IB to enter national stage, just pay the fee. BUT, the facts also indicated there was a correction in the inventorship of the IA that was sent DIRECTLY to the IB – so now do you need to update your IA app at the US/RO? I chose no, just pay the fee – I think somewhere in 1800 I saw that correction of inventorship on PCT should be done
4) PCT – you submit 3 corrections: (I) typo in name, (II) missing page of spec, (III) missing drawing – which corrections will be accepted? (I) will be and (II) will not; but not sure about (III)…
MISC:
I took the 15 minutes to write down 50 numbers as others have suggested. People haven’t mentioned this – but the 1 hour break is optional. I only took a 20 minute break b/c I just wanted to get it over with.
GOOD LUCK!!
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.
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.
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).
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
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?
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
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!
Congrats Adam!
Thx!!!
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!!
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)
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.
MODS: Delete this SPAMMER.
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.
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.
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).
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.
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.
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.
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!
HI Gini
I am also taking the exam on wed wht hv been ur main focus for prep.
Thanks and Good Luck
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
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!
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
Good Luck to both of you!
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
Thanks a lot!
Thanks a lot
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!
Hi Gini..
Congrats……….so now we have become professionalmates……
Punita
Thank you Punita, congratulations to you too!
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
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
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!!!!
Could you please tell how did you search?
LM
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.
thanks. I am getting ready for 11/10 – LM
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.
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
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
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.
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.
Addressing LM’s question about searching
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.
YW, that’s great! That is a ton of repeats too!
Remember any unusual new questions?
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
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
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.”
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.”
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.
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
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.
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.
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.
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.
Looking for patent agent job. Do you know any one is hiring ?
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.
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!
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.
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
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.
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.
Thanks Rodney.
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.
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.
THANKS FOR THE REPLY. MAKE SENSE. IN THE INTEREST OF TIME, I WILL SKIP IT FOR NOW.
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!!!
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.
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.
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.
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!
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
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.
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!
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!
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.
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!
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
Passed the exam yesterday, this site was a huge help. I’ll be posting comments on questions as a I remember things.
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.
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.
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
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
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
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.
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!
PTA applies to utilities and plant filed on or after May 29, 2000
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
Question: Can you file CON of CIP?
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!
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.
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.
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.
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.
BG,
How many repeats do you think you got? It really seems like its hit or miss.
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.
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!
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
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.
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
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.
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.
The blackout period is from 4/5 to 4/12. I’m taking the old version of the test on the 4th.
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!
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.
Yeah, I’m taking it on the 4th.
Me too
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
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.
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.
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!
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.
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
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
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!
Costa Rica and Sweeden – PCT—Had both; Both will be forwarded to the IB and accorded the filing date.
Which filing date?????????????????
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.
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
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.
So what were the answers Li?
I selected E on 1st question, but I promise it’s wrong. I believe it’s a test question. The 2nd answer is B.
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
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.
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.
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.
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.
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?
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.
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.
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.
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.
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.
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.
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.
well, it looks like one answer was wrong not some.
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!!!
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!
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?
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.
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!!!
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
Hi Ben, OK try serendipcl@gmail.com. Sorry for the confusion!
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
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!
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!
has anyone taken the new exam with changes made on April 12?
Found this website useful for the Bilski case: http://iskraip.com/presumptionofvalidity/35-usc-101/35-usc-101-patent-prosecution-after-bilski-v-kappos/
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!
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”
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!
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!
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…
HTM, Congratulations! Do you recall what question was asked about Bilski? What are the Bilski flowcharts?
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.
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.
what is the PCT new 2 months rule?
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.
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.”
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.
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
What works for me is searching against the index; reading through the index. Good luck!
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?
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.
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.
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
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!
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]
“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.
“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
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?
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.
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.
I concur. An RCE is not a new application. 714.01(e) last paragraph.
Alexia, absolutely no need to say sorry. The law itself causes confusion.
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?
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.
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.
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.
Thank you very much for this insight!
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.
What made the hard ones hard? The guidelines looked fairly straight forward.
Any examples of wording?
TIA!!!
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
what where the questions? Can you rephrase/describe them and post here, please,
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?
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
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
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)
Thank you so much, Overworkked for taking the time to post this! Invaluable information.
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.
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.
I have NOT taken the exam yet, just FYI. I plan to in about 3-5 weeks.
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!
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.
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.
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]
how much material regarding the new stuff was on your recent exam? (i.e. KSR, Bilski, etc)
Not much, about five to six total. The new material may appear as one of the choices some time.
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?
This is a random question..but can you file a continuation application instead of a response to an official action ? Thank you.
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.
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
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.
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.
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.
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
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).
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.
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.
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
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.
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!
Ben can you please post the questions and answers after you go to DC please? thank you
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.
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!
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.
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!
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.)
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.
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!
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
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.
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.
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.
Has anyone come across a summarized list of the new material that may be potentially tested on the new version of the test?
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.
BEN please post what you remember after you go to DC to check your exam
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!
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!
Has anybody had experience with the new test that was supposed to take effect on April 5th?
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).
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.
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.
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?
mmm – I have the same question as you. Anybody know if a preliminary score includes beta questions?
Congratulations on passing!
About how many hours did you spend going over old exams?
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
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.
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.
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?
A bachelors degree is just not enough when you are competing with those who have a advanced degrees with solid technical backgrounds.
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?
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.
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.
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.
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.
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.
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.
BTW I am a female
not a him 
good luck to all
a supplemental oath or declaration is considered an amendment in a reissue
Cool – thanks for your response!
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!
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.
😎
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. 😉
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
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!
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).
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.
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.
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 ?
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.
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!
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
Does anyone know where I can find a summary of the new material? Thanks.
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!
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!
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?
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.
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
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
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.
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!
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?
By the way, what firm are you at?
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
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
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.
Got it – the word LESS being the operative word here.
thx
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.
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.
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.<
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).”
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.
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!
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.
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.
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?
I also had the outsourcing question on 8/2/11. I choose the same answer as PB.
do you still have the PLI study package?
Thanks
Yes, shoot me a email at patentagent2011@gmail.com. Thanks
where are zao and ben’s question summaries? I’m new to this site…
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.
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?
BigBadVoodoDaddy, do you recommend reviewing all of the questions on past exams or would knowing and understanding the repeats be sufficient?
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.
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.
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!
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.
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.
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…
“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?
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!
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
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.
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!
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.
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.
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.
Congrats. I got my official letter within a week–took it on a Thursday and got it on a Tuesday.
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.
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.
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.
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
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.
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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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!
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.
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!
Q: Steps Involved in Accelerated Examination Procedure 8/24/11
@ 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.
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!!
What kind of Qs on Assignments did you see?
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
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.
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.
That sounds good. It would be great to have someone to talk to about the exam.
Hi:
I am preparing to take the exam in next three months.
Have physics background (Ph.D)
Will appreciate exchange of ideas.
Thanks.
Preparing to take exam , next months.
Physics background. (Ph.D.)
Exchange of information, ideas will be appreciated.
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…
Thx looks like 2000 exams is really important !!
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
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.
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
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.
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)
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.
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
This is a very helpful rundown of exam questions, Gregory. Thanks! I’m sure you’ll pass the next time.
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
I sent you an email. I am very interested
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?
Sorry the email should be:
yni_ben@yahoo.com;
Can you send again, I did not get your email.
The correct email is: yni_ben@yahoo.com
PS: the underscore may not show due to the hyperlink formate
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!
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.)
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!
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!
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!
and also if your PLI materials are v2011?
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!
Can you report back about your exam review at the PTO?
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 =/
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.
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,
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!
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.
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!
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!
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.
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.
http://www.uspto.gov/web/offices/pac/mpep/documents/0200_201_11.htm#sect201.11
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!
(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.
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.
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.
Thanks a lot! About how many repeats did you get from this website and other exams?
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
I am re-taking on Nov 16th. One month after yours !
I’m scheduled for Nov. 16th, too. Good luck!
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
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.
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.
Real sorry bout that bro
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.
I thought you need 63% to pass the exam?
You need 70% to pass
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!
Thanks and Congrats
Cheers!
Can you explain further which Trade Secret Q type you got their are a couple variants posted.
Just took the test, didn’t pass but I will be posting soon as to content
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.
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)?
My understanding is that “sealed” means not accessible to the public (not published).
Checked at VA Zao/Ben posting. Stays in envelope not open to public.
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?
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!
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.
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.
Does anybody know how to get Adobe Acrobat 5 for Windows Vista? Can somebody please post a link…
What’s KSR v. Teleflex and Bilski v. Kappos?
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
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
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…
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.
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
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.
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
Thx! And Congrats
Thanks for your post. You’re 1-17 may have been the difference in my passing. I copied some a yours in my post.
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.
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!
Passed: 11/23/2011
First of all thanks for putting up this wonderful site, it was indeed a great help. There seems to be a lots of old exam questions in the database so do solve 2000-2003 exams.
I was lucky enough to get some repeats which saved me a lot of time and I gave me time to search the MPEP for the lesser known questions.
Here are some of the questions I had:
– Piecemeal
– Indefinite ‘high’
– Tommy and Jo
– Moondust
– Toy plane with foil wing
– Best mode
– Germany PCT
– Sweeden PCT
– Japanese Patent
– Missing parts PCT
– Death of inventor
– Duty to disclose
– Facsimilie transmission
– Public inspection
– Reissue
– Non signing inventor
– Mixture Y melting point 150F
– Multiplicity of claims
– Canceled matter as PA
– Parking meter
– ADS/Oath inconsistency
– 2 or 3 questions with 1.131 and 1.132 affidavit
– 2 or 3 basic Bilski/KSR questions
– Few basic 102 questions
I am selling my almost entirely new PRG study materials. This includes:
1) All 4 volumes of “Patent Practice” textbook,
2) Printed practice questions and notes corresponding to each volume of “Patent Practice,”
3) Over 2,000 practice questions databank (really helpful),
4) PRG’s “Latest Tips and Tricks for Success” for passing the patent bar
I am offering the package for $700 (paid almost $2800) plus shipping.
If interested please email me at: nirja03@gmail.com
Good luck to all future test takers
Thanks everyone who posted to this site. All I would say is know the Repeat questions and Exam questions and concepts by heart. That would indeed save you a lot of time and will boast your confidence during the exam.
I am selling my PLI course. This new PLI complete set (very well kept and no highlighting) includes: Precourse Book, Complete Study Guide, Practical Prime Questions Book, Postcourse Book, 36 lecture CDs, Patware CD.
Offering the package for $500 plus shipping. Those of you interested please email me at: niyati13@yahoo.com
All the best folks.
I passed 11/26/11.
-Electric Fan/Lamp (size doesn’t matter 😉 )
-Trade secret (stays in envelope)
– Piecemeal
– Indefinite ‘high’
– Moondust
– Toy plane with foil wing
– Best mode
-Mexican Nationals (choose not okay because of langauge).
-10.03.4p
-Question where PCT claims provisional filed before 11/29/00 (went with that as the 102e date.
-Bloc; Synthetic Z (10.03.7a/4.03.32p)
1.) 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
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 (My answer)
d.102a & 102d
e.102b & 102d
3) There was a very weird question about accelerated examination with respect to an accelerated examination with respect to a soil improving composition. It asked what you need, ADS, petition/fee, the question was impossible to search in the MPEP.
4) there was a question where a composition was 102b rejected because the same composition was claimed in the prior art, the patent was recommending it for a different use (hair growth). I said that the different utility DIDNT matter because it would have been inherent in the original composition.
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)
5.) 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)
6.) Which of the following applications cannot serve as the basis for a continuation?
answer: I chose ‘provisional’
7.) 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)\
8) Chemical compound
a. Not defined in the claims how to make it
9) At least 3 questions on 35 USC 112, 6th paragraph – those were a bitch.
Lastly for those a you still reading. My study/Experience.
I did not use any study material, so if you’re a good test taker don’t think you have to pay money for a review course. I’ve been reading casually for over a year, I read the entire MPEP and highlighted stuff that was important;however, I would not recommend it as I didn’t really remember much. After that I started doing practice tests and was like FML. But I stayed strong, I did the 2000-2003 exams twice. I reread 700,1200,1400,1800, 2100 based on my highlights. And made a summary sheet for these exams, along with the 70 or so questions on this website. I then saw ChemEEE’s comments and added those to my summary sheet with the 70 questions. I brought all my summary sheets with me to the exam.
The first half of the exam was pretty stressful, but not as bad as the afternooon. 2 hours into my exam my computer crashed because I WAS PRESSING ENTER IN THE FIND FEATURE OF THE MPEP, YOU HAVE TO CLICK NEXT. Don’t worry though, because they quickly revived my test, only lost a couple a minutes. It happened again on the afternoon but it didn’t crash (talks about a fatal error), go figure.
Lastly, I would like to thank everyone whose posted on this website, and the creator of this site. I did not use any preparation material and I know that if it weren’t for this website, and the people actively posting, I would not have passed this exam. I bought a bottle a champagne, and I’ll be drinking that in honor of all a you, and I wish the best of luck to those taking the test. You can do it. Just don’t stress, go over the questions on this site and the practice exams, and it’s in your grasp.
Matthew Doyle
Biological Systems Engineer
A couple more questions.
-A patent had a covered range of 5-10% A and 90-95% B. Asked how a reference of 4.9%A and 95.1%B should be handled. I said an obviousness rejection because its just outside the range.
-4.03.30a (Inert Gas)
-10.03.22a (Public Access)
-Tommie and Jo Variant. Asked if the different inventive entities resulted in a 102(e) rejection. I’m not sure if that’s right but that’s what I put.
-4.00.19p Federal court decisions binding on office.
-10.03.50p 35 USC 102g
-10.03.26a Supplemental Oath as an amendment
– The you file a reply within 2 months, advisory action WITHIN 3 months, when is extension of time calculated from: The end of the Shortened Statutory Period, Not the advisory action mail date because it was sent within 3 months.
That’s all I can remember, sorry I didn’t write down more. I hope that I my memory helps.
– 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.
-What types of applications are considered a new application (RCE). Other choices were national stage application, CPA, provisional.
-I had a couple appeal questions related to a boards rejection. Just remember that dependent claims that are objected to as dependent will die if they’re independent claims are shot down in appeal. That bought me 2-3 points.
– I had a doozy about when an amendment can be filed in Appeal: Answer choices were 3 months after appeal with no brief, 3 months after appeal with belated brief, 4 months after appeal with no brief. No idea because it was just generically an amendment. Didn’t say what the purpose of it was.
– I had a question about when an IDS is appropriate with an RCE: Answer choices were after a non-final action, final action, notice of allowance, appeal, non of the above. I wasn’t sure about that
-I had a question relating to when an examiner can submit new evidence after a brief and oral hearing, (or some combination like that). I chose the answer that if pertinent court case comes to light after the combination of evidents, it can be submitted.
-Death of inventor assigned to partial assignee. I said partial assignee could continue prosecution.
-Inventors A,B,C assign a patent to XYZ, they realize that D,E should be inventors. C refuses to participate. What should you do
Narrowed to 2 choices: XYZ should file a reissue application adding D,E as inventors (I chose this). 4 of the 5 inventors should file a reissue application (seemed incorrect).
– A question bout continuation applications: Know that it doesn’t have to be the same inventive entity, just need one common inventor.
– A question of what documents can’t be faxed.
-A question about 102(a): testing that you know in this country means U.S.A
Dear Matthew – Thank you for the details on the exam and congrats!
Can you tell me if Acrobat 5 or higher was offered for your use of MPEP?
Are the supplemental materials on KSR and Bilski (from USPTO) also available during the exam?
Thank you.
JP
Just passed the test 12/1/2011. I was lucky to get enough repeats in both the sessions. For studying, I used PLI materials (from eBay) plus this site. The Patware that came with PLI course was very helpful. And of course, I am thankful to this site and the comments posted by all the enthusiastic would-be patent practitioners. Practicing on 2001-2003 exams 2X is a must. Many of the repeats were variants of the questions in these exams and had to be careful in going through them.
Here are the questions I remember..
1. Laurel, Abbot and Hardy
2. Smith laminate…a little twist in the question asking which claim(s) would be anticipated by prior art. One of the claim had ‘consisting of’ preamble.
3. A variant of Tommy and Joe
4. 102 date of cancelled matter
5. Reexamination (April 2000 AM)
6.Federal Court decisions binding for office
7. 102(b) dates (4.00.41p)
8. Criteria for 102(f) rejection….MPEP 2100 has answers
9. Which application is not new…..answer RCE
10. Decision refusing to accept maintenance fees CFR 1.377 (this I had to search)
11. Electric lamp.. Prior art drawing not scale
12. Affidavits (10.01.46p)…a variant question. Here the 102(a) could be overcomed.
13. New matter added to spec (which results in changing the scope of claim1 ) and new matter also added to claim 2. What should the examiner do? ..Answer.. object spec and reject both claims 1 and 2 . Had to search MPEP 700
14. Correcting inventorship through reissue when one of the inventor is un-cooperative.
15. Correcting ccar in PCT application
16. Spanish phone design..102(d) bar.
17. Trade secret material submitted in the envelope
18. Piecemeal
19. Supplemental Oath after allowance in Reissue is taken as an amendment.
20. Third party submissions
21. IDS after notice of allowance (4.03.26a)
22. Board decisions (4.03.37a)
23. Obviousness rejection when the prior art range does not overlap but close to the claimed range (34.9% and 35%)
24. New amendments accepted after Reply brief…argument based on recent Board or Federal Circuit decision
25. Bloc Synthetic Z (10.03.7a)
26. Public access (10.03.22a)
27. RCE during appeal (10.03.36a)
28. Moondust
29. Toy plane with foil wings
30. 5-6 questions on statements regarding 103 obviousness which do not comply with USPTO. These are pain since you can’t memorize them. Have to look it up in MPEP 2100.
Copied from Matt D
31. 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: answered all are true
32. Which of the following does not need to be submitted for recording of assignment?… copy of application
33. Question about when the examiner does not need to give reasons for allowance…had to search MPEP 1200
32. This questions tripped me…the requirement for filing date for national stage app from PCT. One choice was basic national stage fee within 30 months and the other choice was basic national stage fee plus copy of IA within 20 months. Both were the best (incomplete) choices…looks like a beta question.
That’s all I can remember. Good luck with your preparation!
I just booked my visit to USPTO to review my exam on 12/16/11 (I had taken the exam on 11/16/11). I’ve been told that no copies can be made or notes taken. Has anyone gone to the USPTO to review their exam? Also, I just received the letter to schedule my 2nd exam and found out that on or about 1/31/12, the exam will cover 2 new rules issued on 9/26/11 in accordance with the Leahy-Smith America Invents Act. Also, the exam will include questions concerning the 11/22/11 rules governing practic in ex parte appeals. Again, this is on or about 1/31/12 (which is now motivating me to schedule to retake the exam sooner than later).
Lisa –
I visited the PTO and reviewed my effort on the exam. One of their staff sits in the room with you and monitors what you do. You have about 2.5 hours to read through and memorize as much as you can. It was instructive but would have been more helpful if I could have taken notes or dictation on my ipod…but can’t do either. Just rush out to your car and write down as much as you can remember.
Greg,
Thanks for the info. Is the staff able to answer or explain any questions?
hey Greg! Any questions you can tell us? please! or do you have some contact information?
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Hi everyone,
I just passed the patent bar yesterday 12/7/11 during an afternoon/evening appointment in SF at the California St. Prometric site.
My exam wound up being about >20% repeat questions from old exams found on this website or else reported from recent test-takers. Questions that I had included:
– Indefinite ‘high’ – several answers suggested it could be indefinite, one had an appropriate rationale that amounted to a person of ordinary skill knowing what was meant
– Tommy and Jo
– Moondust
– Death of inventor and practitioner doesn’t have any partial interest so can’t just go ahead and assume power of attorney
– Minors can sign oaths and file for patents as long as they know what they’re doing and are capable
– Don’t get small entity status reduction for recording fee
– Facsimile transmission not allowed for filing designation of contracting states in an IA
– What can an assignee not of record sign? I can’t remember the answer unfortunately.
– Synthetic Z
– Reissue – several questions on this, one concerning correction of inventorship
– Mixture Y melting point 150F
– Canceled matter – public access to it after the patent is issued
– Getting assignee listed on patent by checking fee transmittal form
– Parking meter
– ABCD/ABCDE/BCDE
– JJ Smith
– ADS/Oath inconsistency
– Spanish phone – 102(d) bar for design CIP
– 2 or 3 questions with 1.131 and 1.132 affidavit – really regretted that this was my weakest section of the MPEP; had no clue where to find the info on what not to do with these affidavits
– 2 or 3 basic Bilski/KSR questions
– Few basic 102 questions
-Federal Court rejections are binding for office, but the office can still reject things that the court accepts bc they have a different standard of review
– Japanese PCT question where the whole point was that the IA filing date could be used to determine patent term
– examiner can make restriction requests until final action, then no more!
– question with a linking claim 3 and two distinct claims; examiner orders a restriction and the correct response is that you elect either claim 1 or claim 2 and say that claim 3 will be in one or the other application, but you don’t have to bother traversing the rejection when there’s a linking claim bc if it’s ultimately allowed, the restriction requirement is removed anyway
– trade secret question and had multiple answers where something could be kept in an envelope away from the public, but one specified “unless there was a petition to expunge” and that seemed like the right answer based on my searching about
– new grounds of rejection after appeal, and I had to look up both of them, but it was pretty clear once you go to Appeals and then scroll down to New Grounds of Rejection and look at the appellant response section right after; one of them had to do with multiple rejections and now some are allowed while others aren’t and what happens afterwards
– Potter question
– 2month rule question with a twist – you reply within 2 months and the examiner sends an advisor action in less than the 3 month SSP, to what date do you measure your extension time and fees? answer: from the end of the SSP, since measuring it from the mailing of the advisory action would be a disadvantage in this case
– question about accelerated examination; this had to do with two issues, one getting information to the examiner ahead of time, including your own search for relevant documents; second, you qualified for making special status – in this example, the person was a soil scientist so she’d get the environmental (without fee) special status
– 102 (g) facts question
– one question for which I looked up every correct statement to find the incorrect one left me with what looked like the most improbable answer going into it, something like public has the same meaning when applied to a public use or a sale. Logically, that’s true, of course. Just threw me bc I was thinking of public use as public and sales not necessarily public.
– A few questions on re-examination – sadly, another topic that I was not that confident about and had to look up probable answers verbatim
-Lots of obviousness questions, some clearly related to KSR; couldn’t find any answers in the KSR supplemental materials so just winged it on what I thought was logical based on what I had read beforehand (I sort of suspected something was weird about the search function with my supp materials – never found anything on any of them); some KSR material was already incorporated in the MPEP version we were searching, so maybe it had to do with that too?
– question on what would be 101 acceptable, but the answer was pretty clear (the most structurally defined claim even though all were based on an abstract/mathematical concepts).
-really simple PCT 102(e) question where the Japanese app was filed in the USPTO, desig. US, and later published in English, so IA filing date was the 102(e) date
– Obviousness rejection when the prior art range does not overlap but close to the claimed range (34.9% and 35%)
– question where a nucleotide was claimed in an application and the exact same nucleotide was claimed in a patent or published application but the proteins expressed in either case were claimed to have different properties; my answer was that this amounted to a different use for the same invention, so it didn’t matter, still anticipated
Anyway, hope that helps. Thank you all for pitching in to make this resource possible. There is very little chance that I would have had enough time to think through and look up answers to other questions in time if not for the presence of so many familiar questions. Looking forward to working with some of you one day…
Congrats and thank you so much for this list – you rock.
**important**correction to above list.
instead of:
“Federal Court rejections are binding for office, but the office can still reject things that the court accepts bc they have a different standard of review”
here is the correct statement:
“Federal Court rejections are binding for office, but the office can still invalidate patents that the court finds valid bc they have a different standard of review”
sorry if I caused any confusion during the time between postings…
one more correction (eek – now I know I’m tired)…
instead of “you don’t have to bother traversing the rejection when there’s a linking claim”
should have read “you don’t have to bother traversing the restriction requirement when there’s a linking claim”
OK, and looking at post 166 jogged my memory on this one…
instead of: “What can an assignee not who has not recorded his assignment yet sign?” the question was about what an assignee who has not previously or concomitantly provided evidence of assignment can do. I agree with the poster that viewing the status of application is as far as they can go.
Also, as far as accelerated examination, all the points were verbatim from the list at 706.02(a)…
Your blog is pretty cool to me and your topics are very relevant. I was browsing around and came across something you might find interesting. I was guilty of 3 of them with my sites. “99% of blog managers are doing these five mistakes”. http://bit.ly/syWJZ9 You will be suprised how fast they are to fix.
Those taking USPTO registration examination will have to agree to Prometric’s terms and conditions at the time of the test, which prohibit them from disclosing or discussing any test content after the exam. How is this site legal?
Anybody know what this illegal Website does. We will check all user information.
If you really are from the USPTO.
Firstly, please give the USPTO patent bar exam to your examiners. You can rest assured most of them will not be in a position to answer these questions. Not because they are not good their job, but because of the horrible fact patterns.
Secondly ost people who take the prometric can pass the exam only because the right answer from the USPTO perspective is available when people revisit the answers. Sometimes it’s impossible for one answer to be right and the other to be wrong unless it’s fiat law. A classic example of this being the question, indefinite claim using High. There are multiple interpretations which allow your different choices to be correct. Come to think of it all your questions are in the same league.
Thirdly, now that the wrong answers by fiat are reinforced, your pool of questions and their veracity is suspect. Statistical analysis of experimental questions gotten right by people taking the exam vs those after disclosure in real exams will reveal, more people get it right after the real exams … Again reinforced fiat.
Fourthly, please be sure to check your new questions based on those extra PDF’s where even the patent office is not sure of the interpretation. Please update your MPEP and make the MPEP the basis for the test. Not the other way around. If you guy’s can’t incorporate KSR into MPEP after 3 years don’t expect people who are new to patent law to absorb these materials and find an interpretation that is in sync with the dogma of USPTO.
Last but not least release a cache of questions every two years to ensure your questions are not arbitrary and have an independent audit by patent practitioners. Why don’t you have your databases reviewed by patent practitioners who have been on the patent roles for 20 years ? The horrible quality, arbitrariness and ambiguity of OED at USPTO will be readily apparent. It’s probably even illegal the way these questions are drafted and tested without verification.
In addition to the comments by the earlier poster, USPTO gets a real kick by letting courses which charge hundreds of thousands of dollars teach relevant parts of the patent bar exam. These are updated to “reflect” the new material in the patent bar exam. How will you stop these coaching shops from including content in their exclusive seminars which are discussed in passing with a monetary restriction on entry ?
In addition if what the other poster has described is accurate, how many exam takers have had to pay again to take these tests because of what the previous poster pointed out ? If there are many of these people will you after statistical analysis revisit those who were dealt an unfair hand and change the results and refund them for their troubles due too the USPTO’s faulty questions ?
Plus the most important question of all, do you guys even know how to use prometric experimental questions and remove the bad ones ? From the evidence available it seems you guys have totally failed. This isn’t an exam which tests anything except the USPTO’s own dogma. Do you guys do a statistical curve to account for all the crap thrown out like other standardized tests ? If the new questions are being answered wrong by a lot of test takers before the release of questions which is sorted out after the release of these questions then there is a serious problem in curving of results from your office. Hope we get answers to these instead of just threats.
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Just took the test and passed on first try.
Concur with everyone on this site that the best way to study is to do the 2002 and 2003 tests (over and over again) and memorize the new and repeat questions.
Things that threw me off about the Prometric test (vs. Patware): The MPEP is in a separate window that pops open and it closes everytime you click back to the test (however your place is saved from your last search so no need to worry). The find option is very crude and you CANNOT simply click on a portion of the PDF to start the search from that location (i.e., you can have the search do a “find again” when you’ve entered a search term but I’m used to being able to click on a section and then having the search function begin at that location. This made it so that I had to read the sections more using the hand-drag tool). How I overcame this was by memorizing the page number of my search location and I would hit “find again” until I saw that the page numbers have changed dramatically.
I took PLI and wasted WAAY too much time listening to John White. God bless the man and I definitely learned a lot but the hours I dedicated to the lectures set me back in terms of time I could have used to study old exams. I’d also like to point out that I paid special attention to HS and Pinchme’s postings since their tests were both less than two months prior to my test. Take away from all this: MEMORIZE the list of questions that people post on this site (esp. the ones closer to your test date).
My contribution:
– Indefinite ‘high’
– Tommy and Jo #2 (the answer was E, none correct)
– Moondust eraser
– Death of inventor
– Minors can sign oaths and file for patents as long as they know what they’re doing and are capable (this was the LAST “except” choice, I wasted a whole bunch of time researching A-D only to see this option at the end)
– Don’t get small entity status reduction for recording fee
– Facsimile transmission not allowed for filing designation of contracting states in an IA
– Synthetic Z cancer
– Supplemental oath treated as amendment when: filed in a REISSUE application after the Notice of Allowance (don’t be fooled by one of the other choices that said a supplemental oath in a non-reissue allowance can also be treated as an amendment. I don’t think that is the case. Pick reissue only, not both Reissue and non-Reissue).
– Mixture Y melting point 150F
– Canceled matter – public access to it after the patent is issued
– Getting assignee listed on patent by checking fee transmittal form
– Parking meter
– ADS/Oath inconsistency (I think I got two questions on this, really get acquainted with searching for oaths/declarations in the MPEP)
– Spanish phone – 102(d) bar for design CIP (there seemed to be a lot of “Spanish” questions, you might want to google Spanish on all the pages of this site to see if other spanish questions were posted by others).
– at least 4 questions with 1.131 or/and 1.132 affidavits (look at the Regs and chapter 700 for the answers to these)
– 2-3 Bilski/KSR questions.
-A 112 6th paragraph question about computer implemented means claims that I looked up in the supplement, that took me a while).
-Federal Court rejections are binding for office, but the office can still reject things that the court accepts bc they have a different standard of review
– Variations of the German/Japanese PCT questions (really go through the PCT chapter and study the nuances).
– Trade Secret in envelope (the answer choices all seemed somewhat plausible but I chose the one that seemed the least plausible which was it is never included in the record if it’s a proper trade secret, I believe that’s inline with what people are saying).
– new grounds of rejection after appeal
– Potter
– 2month rule question with a twist – the AA comes before the end of your SSP so SSP end date is your term extension calculation date
– question about accelerated examination (had to do with soil science but that is beside the point). Question basically asks you to look up all the Accelerated criteria (such as you doing your own search, you listing out all the search search results, etc.) and find the one that’s not correct
– 102(f) question
– “Public” use = same “public” in public sale or something like that (read Pinchme’s post above).
-A question from one of the past exams where the answer was: Abandon the app since the Board affirmed the rejection of independent claim 1
-A question where the answer is: The application is still pending; the appeal is considered withdrawn and the app will be passed to issue with claims 1-5 canceled and claims 6-10 allowed (watch out for claims 4-10, that’s incorrect).
– 2 questions on patentable subject matter under 101 (I almost never looked stuff up in Bilski or KSR, just looked at MPEP and used my own judgment on the ones that I couldn’t find in the MPEP).
-really simple PCT 102(e) question where the Japanese app was filed in the USPTO, desig. US, and later published in English, so IA filing date was the 102(e) date
– 34.9% vs. 35% problem
-Piecemeal
-Don’t need copy of app for recording
-clock fan
-change CCAR to car in PCT
-Which is not new? RCE
-A question where answer is: A person being sued for infringement may file a request for re-examination without first obtaining the permission of the Court in which the litigation taking place
Ganush,
thanks for your feedback. I take the Exam on the 17th
Walter,
Let me know how it goes, i take mine the 26th.
thx!
Out of curiosity,
Since the patent bar has 100 questions, where 10 are beta questions that do not count towards your final grade and the test taker must get 70% of the questions correct in order to pass, does this mean that the test taker must get 63 questions right (70% of 90 questions)?? Is this how it works??
Hello exam takers. To those who have already taken the exam once before, can we go back to answers already marked and change the answer? I know with Protometric, you can “mark” and answer and go back. But what if you picked “A” and later wanted to pick “B”? Can you do that?
Also, which of the test simluators is best (in your opinion)?
Thank you and good luck to all.
JP
You can go back and change your answer but only for the particular session you are in, i.e. am or pm. So it’s a good idea to make your best guess just in case you run out of time and don’t make it back to the question.
I don’t know about the test simulations. I bought the PRG home study materials but wish I would have taken a live class. They had a nice test simulator included.
Thank you Jennifer! I’m using the Bull’s Eye Study guide materials. They are pretty good but similar to what I can find on this website. I was considering purchasing CatPrep or such, because I wanted to get a feel for the live exam.
JP
Hi there, I found your web site by way of Google whilst searching for a similar subject, your site got here up, it looks good. I’ve bookmarked to favourites|added to bookmarks.
Hello,
I took the exam back on Dec. 23 and found out that I couldn’t search on the supplement documents. I was able to search on the MPEP, but when I used the search option for the supplement documents, the screened just blinked like it turned on and off and there was no highlighting or message that no match was found. Did any of you out there experience the same thing? Were you able to search the supplement documents just like you were able to search the MPEP? Thanks.
I took the exam on Dec 22 and did not pass. I have applied to take the exam again. On Dec 22 I could not search the supplemental docs.
To all of you who took the exam around Dec. 23, 2011 and could not search the supplement docs: I just talked to OED and the lady (Ms. Knucker) requested that Prometric refund the $150 Prometric fee to me. I hope that you all submitted a claim to OED and Prometric when it occurred so they have it on record – that was what I did. It doesn’t help that the program “crashed” and that I didn’t pass the exam, but at least I get a refund and will retake in Feb. Ms. Knucker said there were problems with the exam and that Prometric is trying to fix it. Good luck.
Jen- thanks for this update. Does it sound like the issue is still going on and has not been resolved yet?
Kam-yes, it sounds like the issue is still going on and has not been resolved yet. That was the impression I got after speaking with Ms. Knucker.
What’s most effective while searching the MPEP (what I’ve noticed at least) is typing in the verb and the word before or following the verb of what you’re searching for. The verb usually stays the same in the exam vs. the MPEP. Any thoughts on this?
The issue with the searchable supplements was still a problem as of 1/18/12. I passed so I didn’t have to get into getting a refund, but I still am going to call the OED at the USPTO and make them aware of the issue.
Wanted to say thank you for putting up this site, and thank you to all the contributors for maintaining it. Took the Patent Bar today and passed (at least “provisionally” – has anyone ever heard of it being rescinded? I’m being overly worried..)
Only question I can remember from the test today was Moondust. 1.24.11 I’m sure there were more, but I can’t recall right now…
Also, the Prometric software crashed on me 5 times today. At one point, the employees there had to restart my computer. What a pain.
I just took the patent bar exam for the first time last night (1/25/12) and I passed (at least based upon the preliminary test results). The exam was more difficult than I expected. It had far more of an emphasis on appeals and PCT practices than I had anticipated and these questions in particular were more focused on minutia than I had anticipated. For instance, among the several questions I had in these areas, I had several questions specifically addressing the processing of a new grounds of appeal raised by the board of appeal and a couple of questions regarding what happens in a PCT if at least one of the applicants “is”/or “is not” a resident or a US national. [Note: I am not sure whether the fact that these questions were repeated was due to the fact that these were from the group of pilot questions that the USPTO tests with each exam or are typical of the current exams.]
My preparation was adequate obviously since I passed by I likely did not pass by a very wide margin. Here is what I had done to prepare. I had purchased the OmniPrep system. They have the following guarantee on their website “Our UPDATED course now contains 90% of the questions asked on the current patent bar exam – we now make it impossible to fail.” So, I was thinking that I couldn’t go too wrong.
I somewhat followed there prescribed methodology: listened to their MP3 recordings overview of the MPEP, read/rewrote their MPEP summary (it still isn’t very well written in my opinion, although they claim to have recently re-written it). Then I practiced questions. I started off with their question bank and I would practice several hours per day learning the answers to. Towards the end of the question bank there were formatting issues with several questions so and, additionally, instead of questions with A, B, C, D and E answers they started just throwing in question topics with the answer. I didn’t really use the latter part of the question bank so you will have to keep that in perspective related to my comments below. I was feeling pretty confident at this point and I thought I would be ready to take the exam based on my ability to answer the “frequently asked” questions. I had planned for two more weeks of study and then I was going to take the exam and then unfortunately I had to take a month off from studying in order to complete a rush project for one of my clients.
When I started studying again, I started by taking the old exams. When I took the 2000 exams, I only got around 50% correct on my first pass through the exam, without doing any look-up in the MPEP and I was getting done in about 2 hours (I am an incredibly slow reader). When I would review the answers to the exam, I would not only review the questions I got wrong but also the questions I got right! Since you only need a 70% to pass and you can look up what you don’t know, knowing what you know is more important than memorizing all of the questions.
I realized at this point, I needed to do better and I started practicing looking up questions during my practice exams. By the end of the 2001 exams using some look-up I was able to bump up my percentage to around a 65% and still finish in about 2.5 hours for each section of the exam. By the end of the 2002 exams it was 75% in 2.25 hours and by the last 2003 exams I was at 85% with some look-up and finishing my first pass through the exam in just over 2 hours.
My goal was to get as many questions as I could correct in as little time as possible and then use the remaining time (hopefully at least 45 minutes) to research the hard questions so that I could guarantee that I would pass.
Then the last thing I did was I went back to the OmniPrep “frequently asked” questions and I took those questions again. At this point I was able to breeze through these questions about 50 in an hour and I was getting 90% or better with out any look-up necessary.
I was pretty stoked since I was led to expect tby OmniPrep that 70% of the questions that I would see would come from the question bank and the other 20% would be from questions on the old exams and then the remaining 10% would be new pilot questions, which is why OmniPrep claims 90% of the questions.
If only that had been true, the exam would have been a breeze! Even though I am 46, I still have a phenomenal memory for questions that I have seen before. Only about half of the questions in the total exam that I took were ones that I had seen before. Unfortunately, in the morning session it was only about a 1/3. I had to do far more look-up in the first part of the exam than I expected. As a result when I finished my first pass through the exam I only had 30 minutes left and I was unable to get back through all of the questions that I had marked for review within those 30 minutes.
In the 2nd half they were much more kind to me and I saw a lot more questions that I knew and for some of these I was so familiar that I could instantly just go right to the answers. I finished my first pass thru with some look-up with an hour remaining and I got through a 2nd pass on all of the questions I had marked for review with 2 minutes to spare.
So here is what I could have done better. I should have practiced far more intensively on how to look things up. Since roughly 50% of the questions were new to me I had to look up far more than I had expected.
Here is the strategy that I would use for a new question that I didn’t know the answer to. I would read the question and see if I could eliminate the answers down to two (no more than three) possible answers. If I couldn’t do that I would look at the answers and then see if I could guess which was the right one. If it was only a guess or I was down to two answers then I would ask myself, do I know what section of the MPEP to go to or am I going to have to search the subject index to find it first. If I knew what section to go to then I would look at the question and the answers that I thought it might be correct and see if I knew what word (or words) would be good search words to use to help me find the answer quickly. If I thought there was a good possibility that I could find the answer quickly. I went for it!
If I didn’t think I could find it quickly then I would have to decide whether or not I still wanted to look it up. If I did, I tried to find it as quickly as possible. If I wasn’t being successful in my search I would give up on the search and then give the question my best guess and then mark it for review and move on! BEING WILLING TO MOVE ON IS KEY!
Unfortunately, I didn’t know as well as I should have what was contained in each section of the MPEP. So, having to go to the subject index first slowed me down. Also the version of the MPEP that I had practiced with showed me an index of all the entries that had the word I was searching for along with part of the sentence that it was next to. As a result, I could sometimes find the answer by looking just at the index.
There is no such index during the exam. You have no idea even how many times that word you are looking for is in the text you are searching. The only thing you can really do is hit “find again” to go to the next entry. If the word I was searching for occurred to frequently then I would quickly see if I could think of a better word and if not abandon the question.
I will say this, often if you see a good phrase to search but don’t know which section of the MPEP to search, often I have found it useful to go directly to the Patent Rules OR Patent Law section of the MPEP and search there instead of going to the subject index first and then a particular section. If I have a good phrase then this will potentially take me write to the answer in one step rather than two. Through practice searching I was able to get a feel for which one to use but I didn’t do as much practice as I should have.
At least 85% of my preparation was spent on knowing the answers to question and 15% on search strategies. Given that only 50% of the questions were ones that I had seen before, I would suggest that you would be better of spending at least 50% of your time on developing fast efficient search strategies utilizing only the limited tools that are available to you during the exam.
Good luck!
Hi Mark, thanks so much for the time spent providing us your thoughts. One question- would you say the MPEP viewer used on the test is still most akin to Adobe Acrobat 5?
I don’t remember what Acrobat 5 is like anymore. Sorry!
I will let you know that there is no cut and past capabilities so you have to type the words correctly, which can be a problem for me since I am such a terrible speller.
The exam is full screen and the MPEP opens on top of it. You can size the MPEP anyway you want. But you CAN”T look at them side by side since there is no way to resize the exam.
I would often make the MPEP relatively narrow so that I could still see the questions as I was trying to do my search on. I would make it just tall enough so that I could still see the find button, which opens up as a pop-up window ontop of the MPEP, regardless of how tall the MPEP was.
If my search didn’t turn up anything then I was ready to reanaylyze my questions for my next search term then if i got a hit I would make the MPEP full size.
Another tip is that if you were glasses or otherwise have difficulty reading small text bring them. Although you can magnify the MPEP to any size you want the smaller the text is the more you can scan. Then zoom in using the zoom buttons to quickly do focused reading.
I believe that they are running Adobe Acrobat 4. You have to click “next” with the cursor to move to the next found word in each file.
Mark,
To followup on your comments and suggestions (which are good)
I also used omniprep ,and could pass all the old 2002 and 2003 tests in 1hr at 95 % and still failed.
It did not work for me as they did not really prepare me for any new or recently asked variants of old questions
I switched to using the bullseye materials and this site for study and passed.
If I had to do it all over again I would have simply used the bullseye, this site, and some sort of test taking program like CATprep. It would be less than $100 and be far more relevant.
Just my advice to people
I have to agree with notsaying also.
I don’t think the Omniprep was sufficient preparation by itself. It certainly doesn’t live up to its advertizements. (However, I did enjoy the simulated tests.) I had studied a lot but it was the look-up practice that I did on my own that made the difference between passing and failing.
I have also prepared a couple of patents Pro Se, which helped me more than anyhting understand the USPTO philosophy.
Took the Exam yesterday and passed (“preliminary results indicate that you passed”). Very happy to say the least!
there were about 20-30 repeats mostly from 2002-2003 exams so I suggest you study these cold and get at least 90% right in these. I did them so many times that all i had to do was just click the right answer and move on. This is very useful because it allowed me to finish each session having about 1hr and 30 min left for look ups which I think is what got me over the hump.
There were also very easy 102(a) and 102(e) Qs
5-9 obviousness Qs (2 KSR)
1 bilski
few assignment Qs (i would leave these to look up)
about one small entity and Death of inventor Qs (easy to look up; same as above or just know cold)
As for new Qs here’s what i saw:
4-7 Qs on appeals and what to do after board issues new ground of rejection
about 3-5 PCT questions- one regarding the possibility of fixing spec and claims, or just claims or just spec prior to IPRP and national phase entry and whether that is allowed, and the tied to the time allowed to do so.
As for repeat new Qs from above:
-indefinite ‘high’
-piecemeal
-trade secret
-broom
-electric fan
-tommy and joe
-chemical claim
-2 month rule
-best mode
-multiplicity
-restriction
-fax filing of CPA w/o basic filing fee
Finally, in only took a month and a half to prepare but had uncanny memory of the 2002-2003 Qs once I went through those tests twice. I used PLI went through the chapters in the books only once and just reviewed them again before exam. I also found that watching John white’s lectures on crucial chapters such as 600, 700, 2100, 1200, and 1800 were instrumental at making sense of things.
The fact that I prepared in such little time and was able to pass tells me that it’s definitely doable. Good luck!
btw the PLI I used was the 2006 version
also saw the india outsource Question
Congrats Justpassed. Please, can you share that india outsource Q in more detail?
Thank you.
JP
Just passed 1/26/12. I feel like had the same test as Ganush from post 585. For me, I’ve actually had about a year of practice under my belt, which I think helps tremendously in establishing a framework for how Examiners think. So hats off to all of you who are studying without any experience.
That said, if you are in a situation similar to mine, I think you have a bit less to fret about. I studied by literally cramming for about 28 hrs straight before the test. I started by first doing the Oct. 2003 exam, marking the questions I got wrong as well as the ones I got right but was unsure about, and going over those answers. Then, I went through every repeat question listed on this site doing the same thing. I got through about 2/3 of the questions listed on the Exam Concepts tab before I went and took the test. I don’t really recommend my study schedule, but I wanted to illustrate how experience in the industry probably helps in providing you the correct way of approaching these questions. Also, there’s no way I could have done it without this site.
During the test, I estimated >30% were repeats and an additionally 10% were obvious variations on repeats. I breezed through those, and was afforded a lot of time to search the MPEP for the ones that didn’t jump out at me. Usually, the answer was listed verbatim or close to verbatim somewhere.
Again, awesome site, and good luck to you all!
delirious…you truly are the exception as I too wouldn’t recommend your study program.
ah also saw question on re-exams where the answer was that a third party re-exam requester’s identity cannot be maintained confidential.
I took the exam and passed on 1/26/12.
I used the same strategy as delirious.
1) I took my prometric scrap paper and numbered it 1-50 and added the multiple choice options (A-E). Once I read the question, I grouped the questions into three categories in my mind: (a) those I knew, i.e., repeats and variants, (b) those I did not know, i.e., required searching the MPEP or I had not seen before, and (c) those I kind off knew but was unsure about.
2) For the questions I knew, I selected the answer and marked it on my paper. For the ones I did not know, I skipped them immediately after reading them. For those I knew and was unsure about, I selected an answer and marked them on my computer and correspondingly put a question mark next to them on my scrap paper.
3) For the questions I either didn’t know or were unsure about, I wrote down the relevant MPEP questions next to them on my scrap paper. You can click on the MPEP on the computer and view the table of contents if you need to pique your memory as to the relevant MPEP sections that apply to each concerned question.
4) I was able to breeze through the ones I knew and were unsure about in about 1 hr 30 min or less (which is why it is very important to know the repeats and variants cold). If you’ve practiced enough and memorized the repeats and variants, you should be knocking out at least 30-35 questions in about 1 hr 30 mins. If not, you are in danger of failing the exam.
5) You need to dedicate at least 1 hr 30 mins to search the MPEP for anywhere from 15-20 questions. You may not need to look up that many questions, but you need to anticipate that there will be at least 15-20 questions that will require you to search an obscure part of the MPEP for all the 5 possible options, which is very time consuming.
6) Next thing is to attack the questions you skipped.
7) For questions that have the call of the questions like “which of the following is in accordance with PTO rules, MPEP” you should move on once you find the answer to the right one. Just make sure you read the MPEP very well so that you don’t get burned by skimming through the MPEP and picking the wrong answer. Read it well, understand it, and pick the right answer. If, for example, A is wrong, eliminate it, and move on to B, Do these till you find the right answer.
8) For questions that have the call of the questions like ” The following are in accordance with MPEP rules except” you need to also eliminate the wrong answer. Once you find the wrong answer, choose it and move on.
9) Next thing is to attack the questions you marked–those you were unsure about.
10) Do this and you will be in good shape.
Make sure you get at least 90% of the look-up questions. You can do it. They are in the MPEP and can be found when you have the time.
Found this website, it’s a flow chart for PCT
http://www.pct-compass.com/downloads/PCT/tables_1_9.pdf
For the ones who passed, congratulations!
Will you please post any new questions that you may remember as a giving back to this site? Highly appreciated!!
see my posts and pinchme’s post above Ying
can anyone who took the test today elaborate what new material was tested based on AIA? if so, how many questions and on what topic?
Yes, I am wondering too since my exam is on coming Saturday….
I think the new AIA materials for the exam are listed as points 7-9 on the following USPTO website:
http://www.uspto.gov/ip/boards/oed/aia_regexamsourcematerial.jsp
I’ve downloaded these materials (in addition to the Bilski and KSR materials (Points 2-6) and it looks like they are no more than 60 pages (including 2-9)
Yes, we’ve all seen those, but we want to see what kind of questions they’re asking.
I just passed today and saw zero questions dealing with the newly testable materials. Maybe they haven’t been integrated into the exam yet…. Or, I just didn’t realize that they were testing the new materials b/c I never bothered to study them.
There were a few questions on KSR and maybe a couple dealing with Bilski.
Plus, the usual 15 – 20 repeats from past exams. Off the top of my head:
the “moondust” question
the “147” as the answer – claim counting question.
Laurel, abbot and Hardy
Good luck!
Thanks for the update, Dave!! May I ask how you studied for the test and how many hours you put in?
I studied using an old copy of the PLI course. For about 4+ weeks studying 3-4 hours a day, then about 6-8 hours for the final week.
I did mostly practice tests on patware and of course, I used this site to make sure I was familiar with all the repeats.
Thanks Dave! A few more questions for you:
1) Roughly how many PCT questions did you see, and how similar were the concepts in those questions to the exercises/software from PLI?
2) Were the “hydrocycolone” and “door handle means plus function claim” among the repeats?
3) did you ever go into any of the supplemental materials, and if so, did you experience any technical problems with the test?
Oh and one other question: Did you happen to see anything about submitting/protecting Trade Secrets in the application, per http://patentbar.wordpress.com/?p=105
Hi,
I passed the patent bar on Feb 1. This was definitely a protracted ordeal as I started studying for the exam back on August 2009 but caught the swine flu and couldn’t take the exam before law school resumed. With two kids, law school and interning I couldn’t handle studying so I stopped. I resumed studying August 2010 and studied for three weeks but got 62%. Couldn’t study during law school and had a baby Dec 2010. Finally got around to studying again Dec 2011 for three weeks and got 64%. I had technical difficulties during the exam, couldn’t search the supplements. Complained to Prometric and OED, got a refund, retook and passed on Feb 1. Moral of the story, be persistent if you don’t pass and retake it ASAP!!!
The first half of my exam had long fact patterns. I felt like I was solving long math equations for three hours! If you know the fundamentals, it’s not bad – just very long and time consuming. The second half had really short fact patterns so I was excited because I thought it would be easier. Boy was I deceived! They were such obscure questions. I remember thinking, “really, the PTO wants us to know this? Why?”
I cannot stress learning to search the MPEP enough. Learn to search the MPEP. Learn to search the MPEP. Learn to search the MPEP. If I had not forced myself to learn how to search the MPEP when I studied this last time, I don’t think I would have passed. The first two times taking the exam, I tried to memorize everything. When I didn’t pass, I knew I had to change my approach so I searched the MPEP for every answer choice in the old exams this time around.
My ex-boss (patent attorney) said the patent bar was a turkey hunt. I didn’t know what he meant by that, but know I understand. You need to learn how to search effectively for key words in the answers. I noticed that if I used the verbs in the answer choices, I had a high likelihood of finding it in the MPEP. During the exam, I even ended up searching using some Latin phrase because it was in one of the answer choices and I found it and was able to answer the question.
I took the exam in the Bay Area and again, had technical difficulties. This time, I was unable to search the MPEP whereas last time, I wasn’t able to search the supplements. I complained to Prometric, Ms. Knucker yesterday and today. I also complained to a staff attorney at OED on Tuesday. I was unable to search the MPEP whenever the computer felt like it didn’t want to search, it was so random. For instance, at times I could search Appeals but then at other times I couldn’t. VERY FRUSTRATING!
I studied effectively for a total of three months for the exam.
Good luck everybody and if you have any questions, feel free to email me at sertag@hotmail. I have some study aids I can email you.
I hear you on the Prometric software having serious issues. I took the exam in San Francisco (California Street location) in late January. My software crashed on me five times during the morning session, each time requiring the software to reboot itself, and once the staff had to restart my computer. Each time I watched as my time ticked down…. so frustrating that we pay them good money and they give us horrid software.
Meant to say I studied effectively for two months.
I took the exam 2/7/2012
First, I passed & wanted to thank everyone posting materials here and mypatentbar.com as it proved to be incredibly helpful.
Now as for EXTREME Technical Difficulties: Thank you Culver City Prometric center for putting me through the worst test experience of my life. The system crashed at least 7 or 8 times as I was accessing MPEP (not even the new reference materials). I lost time but they couldn’t do anything about it. The computer rebooted and got out of the test software. They just told me to sit in the waiting area and weren’t explaining what was going to happen with my test. Exam time was running as the technician was working on it! I’m usually relatively calm during exam time, but I had headaches and my body temperature was high as the system kept crashing and crashing. Very hard to concentrate as the staff was standing next to me just to see the error message to make a report and as I had to leave and re-enter the room. Reschedule your test if you can as soon as possible.
The very same thing happened to me the first time I took the test in Tucson, AZ, in June 2007. Because of the lost time / stress, I missed passing by 1 question. I didn’t find this out until a week later, because the technical problems also wiped out the computer pass / fail notification. I was told I could file a complaint but as I was moving out of the area a few weeks later, I just let it go. I’m glad you were able to pass.
Now as for Questions, I’m sorry if any of the following are not accurate as I don’t remember them well.
1) there was a question that a practitioner uses express mail to send a reply to OA on date A (which is in time) and the office receives it on date B which is too late.
in which one of the following will the reply be timely?
I) a proper 1.10 use with a label and the date-in being recorded by post office.
II) an express label being recorded with a date-in but failing to put the label and numbers on the papers being sent beforehand. ( I found a sentence in the MPEP that basically stated that this would be necessary for petitions but would not be if the USPTO does receive it. here, USPTO did receive it, so this one was fine too)
III) no label, sent with express mail but accompanied with a certificate of mailing sheet
A) I is only true
B) II only
C) III only
D) I & II
E) I , II, & III
2) There were 2 or 3 KSR questions. one of them was:
Obvious to try requirements are the following EXCEPT:
All true answer choices such as limited number of options with predictable results straight out of the obvious to try requirements in the reference materials of KSR. I was between an answer choice of well-articulated reasons why it is obvious and another answer choice stating that a specific teaching of why it was obvious to try. Then it hit me that KSR Supreme Court basically said TSM are useful but not required. so I chose that.
3) repeat of what the assignee can sign (small business entity)
4) PCT question of a Japanese application in Japanese language of a Japanese applicant and citizen who is also a US resident. The IA only designated Japan. The choices that made some sense were A) send it to the Japanese office and B) send it to IB. I chose send it to IB.
5) 2 PCT questions on faxing to get a filing date.
6) Which one of the following would get a filing date?
B) A provisional application missing pages but with some type of disclosure
C) A provisional application having a spec but missing claims (obviously yes)
D) B&C
I chose both because I found the language in MPEP with similar wording that if you’re missing pages and some type of disclosure, you’d get the filing date. Only if you send the material later in response to a notice would the filing date change.
7) A badly worded question on trade secret so hard to rephrase it. What should an examiner do when materials are submitted as trade secret?
B) keep the material in the sealed envelope that the examiner does not use if there is no petition to expunge.
C) Disclose the material that the examiner finds to be important in deciding patentability. (I remember the word important not material )
D) B &C
8) A KSR question that whether a rejection would be appropriate where the examiner does not rely on Graham factual inquiries and goes through the seven inquiries of KSR approach instead.
9) A KSR question on whether a practitioner’s response to 103 OA would be proper if the practitioner states that the examiner has not applied any of the 7 KSR guidelines and the examiner determines that this assertion is true. What should the examiner do on the next OA?
I have to run to class but I will post more later. Thank you and sorry if my memory is blurry.
One important MPEP search tip during the test when the answer choices have key words that repeat numerous times throughout a chapter:
when you search a word, the first time it searches from the beginning of the document. The second time, if you change the search term, it starts from where it left off on last search.
So when you’re searching a phrase that occurs frequently, it’s better to first search the full title of the section you think it’s in. Then, search the term. This made my searches much faster.
Just as a made-up example, if you want to know prima facie requirements of enablement. You can search enablement, it highlights the enablement section in the index. Then, search the title phrase verbatim. Finally, if you search prima facie, it will get you to the right place.
You don’t have the alternative to just click on the section and search from there. This way, you’ll set a starting point for your searches.
very nice tip. In Adobe Acrobat 5 you can just click on a section or the text of the section and the search will begin from there. So I am assuming that is not possible on the test?
I took test today on 2/9/2012
Thank you for mypatenbar.com and many helpers.
I met a question about “Deposit of Biological Material”
I searched MPEP and found it.
I. ?
II the issue of the need to make a deposit of biological material typically arises under the enablement requirement of the first paragraph of 35 U.S.C. 112, the issue could also arise under the description requirement (35 U.S.C. 112, first para¬graph), best mode requirement (35 U.S.C. 112, first paragraph) or the requirements of the second para¬graph of 35 U.S.C. 112 with respect to the claims.
III ?
IV They are not designed to decide substantive issues such as whether a deposit of a particular organism or material would be recognized or necessary for the purposes of satisfying the statu¬tory requirements for patentability under 35 U.S.C. 112.
I selected II and IV
2403Deposit of Biological Material
37 CFR 1.801 indicates that the rules pertaining to deposits for purposes of patents for inventions under 35 U.S.C. 101 are intended to relate to biological material. For the purposes of these rules, the term “biological material” is defined in terms of a non-exhaustive list of representative materials which can be deposited in accordance with the procedures defined in these rules. These rules are intended to address procedural matters in the deposit of biological material for patent purposes. (IV)They are not designed to decide substantive issues such as whether a deposit of a particular organism or material would be recognized or necessary for the purposes of satisfying the statu¬tory requirements for patentability under 35 U.S.C. 112. Although (II)the issue of the need to make a deposit of biological material typically arises under the enablement requirement of the first paragraph of 35 U.S.C. 112, the issue could also arise under the description requirement (35 U.S.C. 112, first para¬graph), best mode requirement (35 U.S.C. 112, first paragraph) or the requirements of the second para¬graph of 35 U.S.C. 112 with respect to the claims.
37 CFR 1.801 does not attempt to identify what biological material either needs to be or may be deposited to comply with the requirements of 35 U.S.C. 112. For the most part, this issue must be addressed on a case-by-case basis. Thus, while the Office does not currently contemplate that there would be any situations where a material that is not capable of self-replication either directly or indirectly would be acceptable as a deposit, an applicant is clearly not precluded by these rules from attempting to show in any given application why the deposit of such a material should be acceptable to satisfy the requirements of 35 U.S.C. 112.
I met another question about 112(6)
(A)the claim limitations must use the phrase “means for” or “step for;”
(B)the “means for” or “step for” must be modi¬fied 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) ?
(E) None of ~
I seleted (D)
2181 Identifying a 35 U.S.C. 112, Sixth Paragraph Limitation [R-6]
I.LANGUAGE FALLING WITHIN 35 U.S.C. 112, SIXTH PARAGRAPH
A claim limitation will be presumed to invoke 35 U.S.C. 112, sixth paragraph, if it meets the follow¬ing 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 modi¬fied 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.
Thanks, Joshua! Any thoughts/feedback on the new material tested?
From the Supplementary Guidelines on Section 112:
By contrast, a claim limitation that does not use the phrase ‘‘means for’’ or
‘‘step for’’ will trigger the rebuttable presumption that § 112, ¶6 does not
apply.67 This presumption is a strong one that is not readily overcome.68 This strong presumption may be overcome if the claim limitation is shown to use a non-structural term that is ‘‘a nonce word or a verbal construct that is not recognized as the name of structure’’ but is merely a substitute for the term ‘‘means for,’’ associated with functional language. However, § 112, ¶6 will not apply if persons of ordinary skill in the art reading the specification understand the term to be the name for the structure that performs the function, even when the term covers a broad class of
structures or identifies the structures by their function (e.g., ‘‘filters,’’ ‘‘brakes,’’ ‘‘clamp,’’ ‘‘screwdriver,’’ and ‘‘locks’’).
The following is a list of non-structural terms that may invoke § 112, ¶6: ‘‘mechanism for,’’ ‘‘module for,’’ ‘‘device for,’’ ‘‘unit for,’’ ‘‘component for,’’
‘‘element for,’’ ‘‘member for,’’ ‘‘apparatus for,’’ ‘‘machine for,’’ or ‘‘system for.’’ 72 This list is not exhaustive, and other non-structural terms may invoke § 112, ¶6.
The following are examples of structural terms that have been found
not to invoke § 112, ¶6: ‘‘circuit for,’’ 73 ‘‘detent mechanism,’’ 74 ‘‘digital detector for,’’ 75 ‘‘reciprocating member,’’ 76 ‘‘connector assembly,’’ 77
‘‘perforation,’’ 78 ‘‘sealingly connected joints,’’ 79 and ‘‘eyeglass hanger
member.’’
And it goes on. (the numbers are footnotes)
I took my exam on 2/10/2012 (second try) and passed! Last semester I took a patent law course at my law school, so I thought I had a good understand of the 2100 patentability stuff. But I wouldn’t have passed the exam without this site! I didn’t use any study materials except ones provided in this website.
I’m so thankful to all of the helpful contributors here that I wanted to give some insight scoop on questions covered in my exam, especially the new questions under Leahy-Smith AIA.
My exam had about 20 Repeat questions, mainly from 2003 exams. Do 2002-2003 exam questions over and over! I had about 5 questions from the above 65 “new” questions (aluminum plane, pct w/ swedish, etc).
Subjects covered extensively on my exam were: appeals (1200) and patentability (2100), esp rejections in regard to 112 paragraph 1. I had many questions that asked “whether rejection was proper” or “how to overcome examiner’s rejection” when there is written description, enablement, or both issues (e.g. – specs show that inventor was in possession of the invention but does not disclose the method of making it or the ranges are unclear; upon rejection, practitioner claim that POSITA would know how to make the invention just by looking at formula and equations described in Specification. What shoule examiner do? What reply is proper when examiner makes second rejection? What KSR factors?)
Enablement was a big deal on my exam, especially with Graham & KSR cases. One question asked what should examiners consider when deciding enablement (KSR 7 factors). In other questions, I had to remember that KSR does not overrule Graham, and that examiners do not have to give notice of allowance if he cannot provide one of the 7 KSR factors (they are guidance for examiners, not a regulatory requirement).
New AIA Question: 66yo man goes to emergency room and gets idea for an invention in medical dispense system. He wants uspto to review his invention within 12mo. What should he do?
Answer: file special application (since he’s over 65), make up to 4 independent claims and total of 30 claims, and apply under Track 1 when it is shown that for fiscal year 2012, there has only been 500 applicants under Track 1.
Other answer choices involved:
a) Reg app, make 2 independent claims and total of 50 claims, Track 1
b) special app, make 2 independent claims and total of 50 claims, Track 1 when applications for fiscal year of 2012 is already 10,000
c) special app, make up to 4 ind claims and total of 30 claims, track 1 when there’s already 10,000 applicaions for year 2012
Pretty easy, right?
Correct me if I am wrong, but the new Ex Parte Appeal under AIA states that the BPAI will assume that all claims are rejected and will review all, unless the applicant cancels specific claims. This is to avoid errors where some claims are unintentionally left out. I had a question that asked what should BPAI do when examiner rejects three independent claims 1, 2, and 3, where the practitioner appeals claims 1 and 3 but does not cancel claim 2. It didn’t state the date of appeal. Choices were: a) review claims 1 & 3 only; b) review all 3 claims; c) to e)…something to do with giving back to examiner. Any thoughts?
Many appeal questions involved
– when does BPAI have jurisdiction? (I think it’s when appeal brief is submitted)
– what happens when examiner gives second rejection with new reference? can the practitioner appeal?
– when can practitioner bring new argument to oral argument during appeal when it is not specified in his appeal brief? (answer is when there is new judicial ruling relevant to his case; first part of oral argument is not dedicated to discuss new arguments; several weeks into oral hearing, practitioner cannot bring as evidence what examiner said during prosecution that was not discussed in brief)
I also had 2 questions about Indian patent agents filling out the us patent app:
1) firm was busy so had patent app completed by Indian patent agent in India. the firm’s uspto-registered patent agent then reviewed and submitted it to uspto. what is true?
a) it’s unlawful (export regulation?) because foreign filing license is required
b) foreign filing license is not required because us patent agent is the one who actually submitted the app
c) patent agent can retrospectively get foreign filing license
d) A and C
e) foreign filing license does not involve this issue
I chose A, not D. You CAN get the foreign filing license retrospectively, but it requires “unintentional error w/o deceptive intent.” fact pattern was unclear, but it sounded like they did it intentionally to avoid deadline. Any thoughts?
2) Someone in India wrote US patent app and sent to US firm. Firm’s patent agent then submitted the app, and notice of allowance was received. Soon, the Indian person realized there is material reference that she wants it included. Does she have duty of disclosure?
a) No, notice of allowance is already sent
b) No, her duty ends when prosecution ends
c) No, she is not the one who submitted the app
d) Yes, because she drafted the app
e) She’s in foreign country, not registered to practice in front of uspto, so all the procedures and rules do not apply to her.
Some quetions I also recall:
1) shoe polish is found to help grow hair. how can u claim invention? answer: claim the method of growing hair
2) in 2002, japanese person files PCT app in US, designating only Japan as recipient country, and app is written in Japanese.
a) invite him to submit english translation
b) invite him to submit english translation and surcharge fee
c) give filing date when english translation is submitted
d) give app to japanese RO
e) transmit to IB once transmit fee is submitted (correct one, I believe)
Know enablement, how to distinguish enablement w/ written description, proper rejection / reply in regard to 102 and 103, PCT, appeal, and know how to search MPEP. Patent bar exam is not easy, but it’s quite manageable if you could put some time and effort in it.
Good luck!
Thanks David, this is really helpful. I’m taking it tomorrow.
It seems like a lot of people are saying they’re going heavy on appeals. I wonder if a nice chunk of these are beta questions, since the new appellate rules became fair game as of 1/31/2012. How many of these questions had the appellate process starting after “January 23, 2012” (or not give any date at all)? Did you ever use appellate supplement (or any of the non-MPEP resources)? By the way, you’re right about the BPAI taking jurisdiction “when appeal brief is submitted,” but only for appeals filed AFTER 1/23/12 (otherwise it’s whenever the brief is “transmitted” to them).
Also, I’m hoping this isn’t a stupid question, but what does KSR have to do with enablement? I thought they only addressed obviousness.
Thank you David. And congrats! The answer to the Indian filer was left out.
Does she have duty of disclosure (answer d?).
JP
MFB, you are correct, KSR deals with obviousness, not enablement!
My sincere apologies! I was writing my comments above @ 2:30am, so my brain wasnt working properly. I had many “how to overcome” and “what is proper rejection” questions in regard to 103, in light of KSR & Graham factors. “Obviousness” is big part of patent prosecution & litigation, so it makes sense to see many obviousness questions on the exam.
Still, I was very surprised to see so many “how to overcome” and “what’s proper rejection” questions dealing with enablement and obviousness. Some dealt multiple factors (written description + enablement) & (102 & 103). I also didnt expect to see several KSR questions either.
I don’t recall any appeal questions having dates after 1/23/2012. Most of them did not have any dates, so it threw me off. However, many appeal questions dealt with oral arguments, new references, what examiners should do in light of BPAI decisions (basic concepts not affected by AIA), so I was able to look up MPEP for what seemed to be correct answer choices.
JP, I chose D (she has duty because she drafted the app) but not 100% sure; E seemed very tempting, but since she was substantially involved in patent app, I just went with D.
Good luck with the exam!
David
Preliminary passed the exam today (2/13/2012). Many thanks to the discussion by you guys!
Several general thoughts about the exam
1. There is a 15 min tutor before the morning session. Therefore you can you this period to finish the grid answering sheet before you start the exam, which will save you 3-4 minutes. For the same reason you may enter the exam room 10 minutes earlier in the afternoon session, then start the exam.
2. When preparing for the exam, I worked on 00-03 old tests a lot. However I STRONGLY recommend that in the Saturday/Sunday before your exam date, you should do one of the 97-99 test. I did this on 2/11, Saturday.
The reason is, working on the old exams a lot could be a double sided sword – I could memorize the old exams so well that I am able finish 50 questions in just one hour and get 100% correct, but I actually never paid attention to time management.
Therefore, I think it is helpful to spend a whole day doing one of the 97-99 test and try to stimulate the “real exam” environment (for example, in a library, have one-hour break). It is not important what you would learn from exam, just for getting yourself ready for a “real”, “unfamiliar” exam. And don’t get frustrated if you get a bad results. Those old exams are “weird” and quite different from 00-03. I got 75/100 in my simulation using 98 exam.
3. The pdf reader in the exam is OK. The biggest problem for me is, when I was doing simulation exams and need search a key word in MPEP, I used to direct copy-paste the key word from the exam window to the pdf window. But in the real exam program did NOT allow me to copy-paste, so I have to type in the key words. Therefore, watch out for the typo mistakes, that could waste your time.
I will paste some exam questions later.
1. Paid in large entity, later found small entity eligible, ask for refund
(1) 3-month, not 1.136 extendable
(2) The starting date of 3-month is (1) actual date when payment was received by USPTO, or (2) 1.10 “date in”. 1.8 date is irrelevant.
This is similar to a question in old exam, asking what is the starting date of 2-month for filing appeal brief after filing of notice of appeal. Just FYI, 1.8 rule is only effective for deadline situations.
2. For 101, need to consider except: whether it is living and inanimate, 2105
3. An 1.42, 1.43, 1.47 question, all are true except:
I choose – the attorney of record may sign O.D. behalf of applicant is the attorney could not find the applicant. I think the statement is wrong, and is the correct answer.
4. An question about correct inventorship error, I hesitated between to answers
(1) An invertor was omitted when filing , but his claims were all canceled during prosecution. Therefore correction of inventorship is not necessary.
(2) When invertorship error is discovered before 1st office action, you can wait, and correct it after NOA but before paying issue fee.
I don’t like (1). It seems like using a wrong method to correct a mistake. But (2) looks more likely to be wrong, since after NOA, you have to use RCE of continuation application.
5.A question about when restriction is proper
Thanks to Zao and as she mentioned, the correct answer is a very ill-written one related to “double patenting”.
Just FIY, there were another two answer with “never”. It is a common exam strategy that answers with “never”, “only” “must” are not correct. But actually those two “never” answers are correct and direct quotes from MPEP.
6. Accelerated examination, need to know
(1) Applicant age is not considered
(2) Definite need a petition fee
(3) No more than 3 ind. Claims and 20 total claims
(4) Must e-file
It took me some time between two final choicesabout if an ADS is needed. My final decision is it is NOT.
7. To perfect a foreign (German) property in reissue, which is missed in original application, you must have
Claim the foreign priority + Certified copy + petition for unintentional delay (since 4/16 months period already passed).
Like the question I mentioned above, I had two final choices about whether English translation is needed, which I think it is NOT.
8. One obvious question asks if market force could be used to determine obviousness, I think YES.
9. A question about Int App filing date.
Int App is filed without claim and applicant name. 30-day was given for missing part (seems like still 30 days, not 2 months for missing part. However, it s not question is about). Claim is filed on date 1, applicant name is filed date, both within 30 days, the Int. Appl. Filing date is date 1, or date 2?
I think is date 2, since both are necessary for getting an Int. App. Filing date.
10. An office action dated on Jan 3, 3 months SSP. Reply is filed on July 5. The fact of question tells you July 4 is holiday (of course), and July 5 is Wed (that means July 3 is Monday). I think the reply is NOT timely filed, because the last date is July 3, which is neither Saturday, Sunday, or holiday.
I remember an old exam question, the last day falls in July 4, which is also Sunday. But the question did not tell you and you need to figure it out by yourself, that July 5 (Monday) is ALSO a holiday (Since July 4 is Sunday) and next business day is July 6. I spend 3 minutes trying to see if there were any similar tricks, actually there were not, just a straight forward, simple question.
11. Period of 30 days is 30 calendar days, SSH rule does not apply.
12. Terminal disclaimer is NOT a binding admission that obviousness double patenting rejection is correct.
13. Lip Gloss. The question is actually simple – test use ended on Jan 1, 2001, but she continued to use it on Jan, Feb and March 2001. Application was filed on 02/01/2002. Of course the public use in Jan, 2001 will be 102(b) bar.
I believe there is some debate about when will the public use start, the end of test use, or later actual public use? In another word, whether the gap between the end of test use and the date of after actual public use is relevant.
I believe it is the later date when actual public use starts. For those believe it is the end of test use, no offense, maybe you are misled by an old exam question. That old question is about some new floor material used in a supermarket for making the floor non-sticking. In the answer it clearly states that “on the date xx/xx/xx since the test use ended, the public use started”.
It is correct. But the difference between the supermarket foor and lip gloss is, that non-sticking material was already painted on the floora and STAYED on the floor , and it is impossible to scratch it off after the test use. Of course 102(b) public use will start right after the test use. For lip gloss, after test use she can just washed it off.
The above discussion is not related to my question, but might be helpful.
I just passed the patent bar using PLI’s Exam Focus Patent Bar Review materials. I purchased these materials full price ~$2,000 but I am selling them for only $500 because: they are from 2010, it does not include Patware and there are some highlighting and writing. Patware is now accessed online rather than on CD.
I have ALL the updated supplemental materials starting from 2011 until 2012 because PLI was kind enough to send them to me.
Although I bought the materials in 2010, I used all of the same materials when I passed on Feb. 1, 2012.
The materials include:
All lectures on CD (from 2010)
Course Lecture
Study Guide
Claim Drafting and Amendment Supplement
Study Guide Exercise & Practice Exam Materials
ClaimsLight/Claim Drafting Workbook
Post Course Materials
Key Words Glossary
Updates on the 2011 and 2012 changes
I am located in SF Bay Area so if you’re local, we can meet at a public place for you to check out the materials.
sertag@hotmail.com
Thanks for looking!
I have a PLI Patent Bar Review Course for sale. It is a 2009 version, so it is fairly new. It has some writings and highlighting in it, but it is in overall good condition. Hey, I just used it to pass the Patent Bar. The package includes the following:
1) Pre-course book.
2) Claims light manual.
3) Prime Questions.
4) The three-ring binder that contains a summary of the MPEP.
5) All the CDs that contain the lectures.
6) Patware.
7) I will also include a supplement that covers the updates to the MPEP and the recent changes to the Patent Bar Exam. The supplement covers the new testable materials on exam–Bilski and KSR and patentability updates.
This is all you need to pass the Patent Bar. If you have any questions, please email me at akinsdoherty@gmail.com
I will take $450 OBO.
Passed today the 21st of Feb 2012. SOOOO many repeats it felt like cheating. Know all the repeats from the old exams, this will make your exam taking experience way less stressful. I wont mention the ones I had, as they were all easy if you had gone over them. It literally felt like there were 40 q’s that were old or posted here, and many more felt like simple variants of the concepts in those questions.
Study the posted questions on this site as well!
I got 52 tables 1/2 page each
When can you submit drawings in PCT if you hadnt already
A question about color drawings (believe answer was submit one copy by EFS-web, with amend to spec) all others didnt work
two bilski q’s: one on the signal generated. not sure of answer.
Costa Rica PCT
Japanese PCT
Germany/PCT term
suspended practioner
Broom
Chemical Claim
Indefinite High
Board issues new ground of rejection
was a q on accerelated exam
Means plus equivalence factors
an easy q on which mult depen claim is improper “1 or 2 and 3 or 4” was the answer
a q on when can examiner should include reasons for allowance in notice of allowability (ans not when applicant has complied with 1.1??? and 1.2??) its in the allowance chapter.)
not too much on the new supplements (no inter partes being eliminated q’s, i used the ex parte appeal to look up something about the concise explanation in the brief. Used the 112 supp once.)
Not much KSR and PCT q’s were straightforward.
studying this site and old exams is way more important than pouring over outlines and the MPEP. I didnt have to look that much up to figure out answers (maybe 10 or so problems) the rest I utilized the search function to check answers.) This site helped me alot. Thanks to everyone and best of luck. Time to finish what i started (the bottle of tequila staring at me.) I will post more new q’s if i think of any.
This is a testimonial…
I passed the patent bar exam today (first attempt). Thank you to all of the contributors to this website (MyPatentBar.com). This website was my study guide. Over approximately 10 weeks I estimate that I devoted about 250 hours in preparation. Starting slowly at first and gradually building with intensity as my exam date drew closer. Basically, I studied the information provided under the “Study Guide” tab of the website during the early weeks, seriously, thoroughly studying the subject matter and referring when necessary to MPEP to add clarification. Also during these early weeks I read all of the supplemental source material identified on the USPTO website. This effort consumed the first 6+ weeks. Then, for about the last four weeks I intensely studied this website’s “Exam Questions and Concepts” and the “Repeat Questions” tabs, as well as the “Old Exam” questions/answers from the April and October 2002 and 2003 exams that were not included under the “Repeat Questions” tab. I can’t overemphasize that when you study these exam concepts and exam questions, you should NOT be doing it in an effort to commit the specifics of the question/answer to memory, but to familiarize yourself with just how patent bar exam questions are structured and to, most importantly, increase your understanding of the application of patent law in various scenarios. It is important to not only understand why the right answer is right, but also why the wrong answers are wrong. I spent a lot of time during this effort going back to the MPEP and reading (and understanding) the referenced provisions. This helped at lot because on my exam today there were no more than about 25-30 questions that were recognizably repeat questions (or variants). However, being able to carefully read the exam questions and answer choices and then “reasoning” (deducing) what I felt to be the correct answer based on my understanding of the resolution in closely similar scenarios I am sure benefited me. Finally, I think that the exam was a fair test of one’s understanding of the principles of patent law. I detected no trick questions or questions focused on nuanced minor facts. It benefited me greatly to have put in place a preparation strategy that I tracked closely on a regular basis during the 10 weeks. I wanted to give myself a fair chance of passing on the first attempt and I thank God that my efforts paid off. It was important for me also to not only go into this exam feeling confident about my preparation, but also to take a deep breath, slow down, and be sure to intently concentrate during the exam. I completed the exam one question at a time on a pace that essentially consumed the two full three-hour sessions (100 questions total). Again, special thanks to the MyPatentBar.com website owner(s), and thanks to all the contributors. The questions and answers provided by the numerous contributors (in the forums) were very helpful too. Thanks.
Just got a preliminary pass today. Many many thanks to everyone who contributed to this site. Didn’t have time to read all the Exam Concept part on this site but I know some of the questions asked during my test were related to some listed here. So read it if you have time. Got tested on the new material regarding Track I expedited examination, relatively straightforward. Good luck to everyone!
Took exam yesterday. Not as many repeats as others have indicated recently and mostly on the AM section. Concentrate on PCT, Appeal, IDS, RCE, Access, and 103. As far as questions from the supplemental materials – 1 on accelerated exam and 2 KSR. Also had several rather obscure questions regarding transmission and oaths. Some of the repeats included:
– Swedish Nationals (PCT)
– Japanese PCT
– Japanese Foreign Filing License
– Suspended Practioner
– Broom
– Tommie and Jo (Toxic Waste)
– French Patent (102(d) only)
– Schmid – no translation needed for perfecting priority
A few questions for folks who recently took the exam:
1. Does the PDF search allow you to search the entire MPEP or just by chapter.
2. How do you keep track of filing dates (or “in” dates) for domestic v. PCT and how do you keep track of when the fax v. certificate of mailing v. express mailing come in to the picture.
3. Any big picture items to remember from KSR and other newly minted supplemental materials.
4. When do you refer to 700 v. when do you refer to 2100? Both have info about 102 and 103. I am always confused as to where to go first.
Thanks for your help.
Mike
You can search the MPEP by chapter only but you can also search the subject matter index. You cannot search the entire manual. I thought it all worked pretty well though and was easy to do (albeit the text was tiny!).
Took exam today and passed but studied until I was dreaming patent law
… I got a lot of help from this site (I also used PLI materials) and this site rocks. I don’t know that I would have passed without all your help on the repeats and new questions. Here are some of my questions (repeats all mostly all in the PM):
-Suspended Practioner
– Broom
– Tommie and Jo (Toxic Waste)
– French Patent (102(d) only)
Moondust
7. Compound Y/cancer cure
Q4) Submitting Tables on CD-ROM
Q17) Velcro (Trademarks in Claims)
Q20) Information requested from USPTO
Q22) Germany – PCT / Patent Term
Q7) Claiming, Deleting and Reclaiming Benefit Claim
Q28) Means plus Function variant of Door Handle (Determining Equivalence)
New Q – Death of Inventor … Barbara is the answer (she’s the dead guy’s personal rep and living will rep)
2! – Yes 2 questions on Potter Question (could have been exact – not sure)
2! – Yes 2 questions on Chemical Compound for depression (chem formula in spec so written description is met … no method for making it but applicant points out that PHOSITA can so rejections under 112 enablement and written description should be removed)
Q14) Costa Rica – PCT
Q52) Multiplicity
Q6) Obviousness
Q20) Information requested from USPTO
Newer Q – encoded signal is not patentable
Laurel, Hardy & Abbot
When are copies of signatures ok? I answered that copies are ok.
What is needed for Accelerated Exam (to make special)?
Drawings missing from PCT … hard Q because I wasn’t sure if they were necessary or not. Answered that ok to submit late because not required.
112/Para 6 Q
Lots of Appeal Qs – but, sadly, I can’t remember the specifics. Just know when to file amendments and on what basis. Also – what to do when Bd affirms Examiner’s rejections (claims rejected die – including dependent ones – and allowable claims get allowed)
Q33) Indefinate Claim USing ‘High’
Broadening Reissue (10.02.12a)
What is needed for filing assignment? Not copy of the patent.
– New matter added to spec (which results in changing the scope of claim1 ) and new matter also added to claim 2. What should the examiner do? ..Answer.. object spec and reject both claims 1 and 2 . Had to search MPEP 700 (I just copied this from a poster above – I answered the same)
-Smith laminate
Advice: Take the 2002/2003 exams multiple times til you have the answers down cold (and understand them). Take Mambo’s excellent 4 tests of repeated Qs (I did all 4 twice) and go thru all the new questions (he posted these this past January on this site). I feel like PLI gave me a good starting point but those three things got me over the hump – at least from what I can remember a whomping 34 Qs were repeats or new from this site – and I bet there were more that I’m just not remembering! I did look at the ref materials a couple of times – Bilski, 112 and KSR specifically so read those ahead of time – not for the new laws re: appeals, inter partes reexams. Good to you all!
Just remembered two more …
The just out of range – obviousness rejection and not 102 (because the applicant’s numbers are just outside of the patent’s range but very, very close).
XYZ/ABC Appeal (10.00.02a)
Now we’re up to 36 out of 100 – that I remember at least – that came right from the repeats and this site!
Looks like I can’t stop myself … add this to the list of what I saw today –
Roger Rocket (4.02.18p/4.02.19p/4.02.20p)
Able and Baker (10.01.24a)
Facsimile Transmissions (10.02.49a) – could have been a variation … I remember something about Certs of Mailing also … more tricky to find in the MPEP.
Also – know about 102 f and 102 g … does 102 g need to be in this country?
Polypropylene range (obviousness of ranges) (4.03.44a) (this was the range question I saw)
ABCD/ABCDE/BCDE (10.03.2p)
Parking Meter (10.03.28p)
Ok – I’m stopping now – this is well over 25% of my questions. Upshot is study those repeats and new Qs!
Thanks to everyone who has contributed to this site! The input and discussions have been very helpful to me.
I took the exam today and received a preliminary pass! The luck of the Irish with a lot of hard work and help from this site were the keys!
My study routine was comprised of: 1) Completing PLI’s 2010 Exam Focus Program (which I bought unused on eBay for $300); 2) Taking the 2002-2003 exams over and over (20+ times); and 3) Taking the repeat questions reported on this website, and consolidated by Mambo, a few times until I was getting all of the answers. In the days leading up to the test, I was scoring in the 90’s on the older tests and knew all of the repeat questions.
One thing that helped, that someone recommended and I highly recommend, is to go back to much older tests (2000-2001) in the days prior to the test to confirm the mechanics of searching the MPEP. After doing so many repeat questions, you rely less on searching the MPEP, and re-establishing that ability helped.
On test day, first I answered the repeat questions and any easy ones, then attacked the remainder. The morning session had about 7 repeats/variants and the afternoon had about 14. The test was much more difficult than I anticipated. I used all of the time available and there were only a few that I was not 100% confident about the answer.
I experienced the search problem on the Supplemental Materials. Adobe began to scroll through the pages non-stop and I could not stop it. The instructor re-located me to a new computer and I lost a little time. Don’t search the supplemental materials!
I marked all of the questions I could remember I had today. Below is a summary.
Thanks to all and good luck to future test takers!
Repeats
Laurel, Abbot and Hardy (4.00.14a)
Prior Art (10.00.16a)
Nylon Rope and Tent Fabric (10.02.43p)
Notice of Appeal (4.03.8a)
Potter (4.03.12a)
Enabling Disclosure (4.03.49a)
Final Rejection Period for Reply (4.03.4p)
Bloc; Synthetic Z (10.03.7a)
Smith (10.03.9a)
Allowance after abandonment after appeal (Variation on 10.03.38a)
Dependent Claim (10.03.41a)
Restriction Appeal (10.03.42a)
ABCD/ABCDE/BCDE (10.03.2p)
Moondust (10.03.6p)
103 Obviousness (10.03.16p)
Which, if any: Chapter 600 (10.03.22p)
Foreign Priority (10.03.24p)
Design Patent in Country X (10.03.27p)
Parking Meter (10.03.28p)
Ex Parte Rejection (10.03.50p)
New
Submitting Tables on CD-ROM
Claiming, Deleting and Reclaiming a Benefit Claim (Question 3)
Suspended Practitioner
Broom
Means plus Function variant of door handle
Death of inventor before application is filed
Indefinite Claim Using “High”
One more note, with 30 minutes to go in the afternoon session I noticed something disturbing while switching from the MPEP back to the exam. The exam application is always present in the background and getting back to from the MPEP can be done by either closing the MPEP (clicking on the x) or clicking in the exam. The MPEP can be displayed full screen or non-full screen so you can move it around and see the exam and MPEP. I realized that going from the MPEP to the exam by clicking in the exam could change / select an answer unintentionally depending where the cursor is on the exam. If the cursor is near the answer button or anywhere near the text, that answer is selected. This is much different from how applications work today, in that when an inactive application is selected, the first selection / mouse click brings focus to the application / window to make it active and the second selection / mouse click is applied. I’m not sure if I inadvertently changed any answers by the nuance (aside from the one I noticed), but with only 30 minutes left, I didn’t have the option to double-check all of my work!
Good luck to all and study hard!
Your comments and advice are priceless! thanks so much for posting.
Took the test this week…repeats included:
Q14) Costa Rica and Sweeden – PCT
Q21) Trade Secret Question
Q22) Germany – PCT / Patent Term
Q23) Broom
Q24) Japanese Patent
Q38) Piecemeal
Q52) Multiplicity
I have a question about searching during the test. I am currently taking the practice exams and after a bunch at 46 am now getting in the low 60s on a 3 hour practice test. I am able to finish the test in about an hour and 15 minutes so I have plenty of time to look up, but it appears that everything I need to look up has far too many search results doing a keyword. Any pointers on the best way to look things up.
For what it’s worth, my advice is you need to be getting in the mid to high 90’s on all of the 2002-2003 tests in under 1 hour. I suggest doing this by initially looking up every answer offered and picking the best answer. This will hone your searching skills. As you continue to go through the exams and recognize the correct answer, process the incorrect answers to build your memory database with why they are not correct. This will help with the many variant questions/answers. I was very surprised with how much searching was required for the real test and I had forgotten how much searching I did when I first started to take the practice exams. After doing so many practice exams, I developed the ability to identify the key word or words to search for and the appropriate chapter. In my opinion, its a time thing that can’t be rushed. It’s like training for a marathon. Build up your ability and endurance over a significant time period.
1 year tracking of exam questions:
I posted this over in the Patent bar repeat Q section, but wanted to post it here as well….
So, in my OCD-ness of studying, I decided to take a look at all the questions from the repeat section, and track which ones have been reported by people to be tested this past year (april-11-Apri-12). I’ve only worked my way through the comments under each specific question in the “Repeat question” section. I’m about to now go back to the “Exam questions and concepts” page and look through the past year to see what people have also posted as seen questions.
BUT: in the meantime, here it is, in all it’s glory. It’s pretty self-explanatory…anything that has a green box by it has been on an exam w/in the past year (and you can see what month, how many times it’s been reported to have been re-tested). Each name of the question is also a hyper-link to the specific page question.
Enjoy!
here’s the document: http://minus.com/mlIrCuwyL/1f
How awesome are you? very!
Not that awesome, but, thankful I can help out. This site has been killer for studying (let alone everyone’s comments and thoughts and feedback). Just trying to help you out with studying (especially if you’re going to be taking the exam in the next few months here).
I hope to go through the exam concepts page this week post by post and make another running list of recent questions, and I’ll throw that up there as well.
I’m wondering if someone shouldn’t make some sort of google email address for this site (or just a random email address, and then share that address and password, so we can upload our study materials as google docs…..hmmm. Any thoughts? Would people be interested in this sort of thing?
As Promised:
This is the link for the Finalized (for now, for me) excell spreadsheet tracking every question reported, be it from old exams, “new” test questions from this webpage, or “new new” questions from user’s posts (reflecting updates to the exam, etc).
https://docs.google.com/spreadsheet/ccc?key=0AhyB6CmD9mgMdFJjd1A5VVBIZWRab01mZlBmLUhzYXc
Basic Layout: Month by month breakdown of each question (each question is also hyperlinked [ahh, that’s an exam question answer] to the specific page of that question (if there is a page for it).
Anything that has a green box to the left has been reported to be on an exam at LEAST once within the past year (indicated by an X in that month).
If it has a BIG X, it means that question was reported >5 times that month.
Now, there are 3 tabs in this spreadsheet.
Page/Tab 1: old exam repeats
Page/Tab 2: “Repeat / New questions”
Page/Tab 3: Questions from oh, the last 4-5 months people have reported on that are only found in people’s comments (meaning, they aren’t listed on the question pages anywhere)
Lastly: a gmail account was created to host this spreadsheet (in case anyone in the future desires to keep updating it). I’m kinda just throwing it out there in good faith that people won’t abuse the email or the spreadsheet, but see it as a way to keep helping all those studying (like myself).
gmail: mypatentbarr@gmail.com
password: usptoposita
The spreadsheed is saved under “google docs.” Feel free to add updates, or even upload your own study material (perhaps outlines, etc).
Finally: Best of Success to everyone studying right now for the exam. From this guy…I’m looking forward to it being over (but is it sick that in some small way, I get a small thrill when I find the correct answer?) Makes me wonder how in the heck these guys did it BEFORE computers…think about the papercuts from flipping through the manual!
.
As Promised:
This is the link for the Finalized (for now, for me) excell spreadsheet tracking every question reported, be it from old exams, “new” test questions from this webpage, or “new new” questions from user’s posts (reflecting updates to the exam, etc).
https://docs.google.com/spreadsheet/ccc?key=0AhyB6CmD9mgMdFJjd1A5VVBIZWRab01mZlBmLUhzYXc
Basic Layout: Month by month breakdown of each question (each question is also hyperlinked [ahh, that’s an exam question answer] to the specific page of that question (if there is a page for it).
Anything that has a green box to the left has been reported to be on an exam at LEAST once within the past year (indicated by an X in that month).
If it has a BIG X, it means that question was reported >5 times that month.
Now, there are 3 tabs in this spreadsheet.
Page/Tab 1: old exam repeats
Page/Tab 2: “Repeat / New questions”
Page/Tab 3: Questions from oh, the last 4-5 months people have reported on that are only found in people’s comments (meaning, they aren’t listed on the question pages anywhere)
Finally: Best of Success to everyone studying right now for the exam. From this guy…I’m looking forward to it being over (but is it sick that in some small way, I get a small thrill when I find the correct answer?) Makes me wonder how in the heck these guys did it BEFORE computers…think about the papercuts from flipping through the manual!
Thanks Bfusion! I had actually been doing the same thing on my own lately, but I think it is great you put that together. I’m taking the exam on Friday (4/6/12) : / and I’ll do my best to update the excel sheet
Great! Yeah, any updates or even pseudo-remeberences of questions will be a helps as we keep trying to piece together “new” questions.
I’m still waiting to hear back from the USPTO so I can register for the exam….will probably take 5/5/12 or somewhere there-abouts (If I get the green light that is!)
Best of Success!
I can’t find the spreadsheet anywhere; if anyone could send it my way I would certainly appreciate it! — lebbin.allen[at] gmail. com
The spreadsheet is currently down. Sorry everyone. Bear with me as I work through some issues…I’ll keep you posted.
Bfusion ~ thanks for outstanding OCD work. This pulls together what I am sure others have already been attempting to track mentally. I am sitting for this exam soon so this is a great complimentary resource. Cheers!
Ghost,
You are most welcome…I really do hope it helps (When you are you taking the exam btw?).
I attempted to put question qualifiers / answers as well (so, if one wanted to do a mental rundown through the questions, perhaps a keyword will stick in our minds).
What in the world? the second part of that post made no sense. *sigh*
What I MEANT to say is that on the spreadsheet, you’ll see each question has my attempt to “paraphrase” the question down to keywords, with a paraphrased answer as well. My thought was perhaps after studying so long, with a final look over the questions a keyword will stick in our brains.
ALSO: I created a gmail account to host/save the spreadsheet as a google doc. I also figured if anyone wanted to upload anything else to share, they could utilize that email address/google docs.
the e mail address: mypatentbarr (gmail)
to log in –> usptoposita
BF – T-minus 72 hours. I’ve been focusing on practice exams under near-true test conditions (i.e. old version of Adobe on my 10-year-old 1.4 Ghz computer). The new AIA stuff is the wild card in all this of course.
I’ve been studying for the past couple months. John White recommends reading the MPEP 700 and 2100 a few times each. Also, MPEP 1800 and a quick skim over 600. I’ve already read through 700 and 2100. For the people who have taken the exam and passed, is this a wise course of action to spend time reading through them as opposed just knowing where things are in the MPEP, which I could do by practicing looking stuff up as I practice problems. Thanks in advance for your replies.
I’d work on problems and practice looking stuff up as you mention. I focused mainly on 2002 and 2003 problems. Getting familiar with the table of contents and (more importantly for me) the index was very very helpful. Good luck!
Thanks, Bfusion!
Very nicely done. This VERY helpful.
FYI: I posted google docs of the exams that Mambo5 created using old repeat questions (as a way to jostle your brain)
They are hosted / loaded in the mypatentbarr gmail / google docs account (login password again is: usptoposita)
https://docs.google.com/document/d/11mm1_gstSTH2gvVt3qLFwyGLAt2X0Dd5OE4_jZoXlsI/edit
https://docs.google.com/document/d/1L1TNbWveQXpGvFSVX3_Y5sm19ayb3t6CvPvVZD98zkI/edit
https://docs.google.com/document/d/1MZxK-UqFZfN73BvB6HauMY7WpVxp3_CKZLLi3OuPzt8/edit
https://docs.google.com/document/d/1KwcYqcKPOMKasdyXR_ilsMUu7tQdcJ9dM85kKFpjASQ/edit
Ugh, my previous post is awaiting moderation….I think I had too many hyperlinks in the post.
Anyway: I uploaded as google docs/word docs the 4 tests made by Mambo5 (which were made using repeat questions) to the mypatentbarr gmail account.
(the login password is: usptoposita)
What is the link to your gmail account? Thanks!
Sorry, ignore my question. Sorted it out.
Sorry for any confusion:
the email address is: mypatentbarr @ gmail
Bfusion and others,
I hope I didn’t overstep my metes and bounds, but I uploaded a few docs to the gmail docs page Bfusion started.
I added a version of the old tests (1999-2003) wherein the questions are ordered according to the chapter on the MPEP to which they refer. I also uploaded an MPEP Summary. Both of these were downloaded from an apparently now defunct website called OpenIPSource.com.
Thank you, Bfusion, for putting this site and compilation together. I hope this addition is helpful.
RT (nice humour btw)
Fantastic. Thanks for adding! That was my hope that the email/docs might be a way to share other materials, and I’m glad to see it’s working thus far.
I’m gonna go scout out those additional resources now!
Very nice. Thank you very much Bfusion, RT, and everyone else that is contributing.
I’m having problems logging into the account. It states the password was changed 9 days ago. Is there any other way to get the material? Any help is greatly appreciated! Thanks.
I passed the exam today on my first attempt. I used the PatBar course to introduce and familiarize myself with material, but I believe this website is truly what helped me pass the exam. I repeatedly did the old exams (April 2002 – October 2003) and repeat questions consolidated by Mambo5. I realized that I needed to complete 10 questions per half hour, which saved me 30 minutes at the end of each section to go over any marked questions. As the exam date neared, I would check the website daily for updates on the questions being tested.
Exam questions that I can remember (new and old questions):
1. French patent 102(d) only
2. Which of the following does not need to be submitted for recording assignment Copy of the application
3. New matter added to specification: addition not made to claim 1 but indirectly affects it; new matter directly affects claim 2 object to new matter in spec, reject claim 1 and 2 under 35 USC 112
4. Deleting and reclaiming benefit claim
5. Missing parts: no claims in PCT claiming benefit to prior provisions
6. Suspended practitioner: 2 practitioners, 1 was suspended and no address provided for the non-suspended practitioner will never send to suspended practitioner
7. Broom
8. Tommie and Joe
9. Costa Rica and Sweden
10. Applicant gives full power to attorney and assigned the application in full to Corp Z then applicant dies attorney can continue prosecution unless and until assignee intervenes (I think)
11. Indefinite claim using “high” high is not necessarily indefinite if POSITA would understand the term based on the description
12. Who can sign a disclaimer, all of the following are correct except only assignee of part interest
13. What docs can be submitted with copy of signature declaration, credit card, and amendment (I think this was the correct answer)
14. Appeals dependent claims objected for dependency on rejected independent claim will be treated as rejected if the appeal doesn’t overcome rejection of the independent claim
15. Appeal can file appeal after ANY claim is rejected twice
16. Linking claims 1 and 3 by claim 2 elect claim 1 or 3, and attach claim 2 to the selected claim
17. Range: applicant claims range just outside 103 rejection only
18. Moondust
19. Parking meter
20. Design patent filed in Country X
21. Potter
22. 52 tables, ½ page each answer selected was the choice stating it was improper b/c it did not provide a duplicate copy
23. Accelerated examination
24. Which situation is a 1.131 affidavit appropriate
25. To perfect a German priority in a reissue application which is missed in the original application claim the foreign priority + certified copy + petition for unintentional delay
26. Question about color drawings in a design application
27. Means plus equivalence factors
28. When should an examiner include reasons for allowance not when an applicant has complied with CFR 1.111(b) and 1.133(b)
29. Question about how an applicant with a business method invention could argue that his invention was patentable something about showing or amending the claim so that it is an application of an abstract idea
30. What information may be required
31. Encoded signal is not patentable
32. Claim 1 is rejected twice, claim 2 depends on claim 1, and claim 3 is allowed cancel claims 1 and 2, and allow the application with claim 3 only
33. Combination/subcombination question
34. Laurel, Abbot, and Hardy
35. ABCD/ABCDE/BCDE
36. Death of inventor question I selected the answer choice that contained Barbara b/c she is the dead guy’s personal representative
37. Germany – PCT/Patent Term
38. Restriction requirement / continuation application no appeal can be made when no claims are under rejection
39. RCE filed without submission in reply to a final rejection no reply will prevent the application from being held abandoned
40. Supplemental oath or declaration is treated as an amendment when filed in a reissue application after the Notice of Allowance
41. Requirements for 102(g) to form the basis for an ex parte rejection
42. Which of the following is true After a reexamination proceeding is terminated and the certificate has issued, any member of the public may obtain a copy of the certificate by ordering a copy of the patent.
43. Rapidity with which innovations are made evidence of ordinary skill in the art
44. 102(f) question
45. Chemical compound
46. When an IDS is appropriate with an RCE I chose after Notice of Allowance
47. Proper dependent claim
48. Question about the difference between statutory and non-statutory double patenting
49. When will Board consider new evidence after appeal brief is submitted federal decision made that affects that case
50. Telephone interview is appropriate except …
Dreams,
congrats! Thanks for posting the questions you remember and for helping those yet to take the exam! Best of success!
FYI: Spreadsheet updated (I used RED x’s and font color) to reflect the questions / repeats Dream posted this morning.
Thanks, Bfusion for such a great resource! One question – should I be able to access links from the NEW QUESTIONS BEING TALKED ABOUT NOT “LISTED” BUT IN PEOPLE’S COMMENTS sheet? I’m able to access links from the other sheets but not that one.
Zan,
No. Unfortunately, because the questions in the “new questions being talked about not listed” sheet are compiled from me going through everyone’s posts (or, pretty much everyone) on this site (meaning, I would look through everyone’s post on this tab (exam questions and concepts) here on mypatentbar and see what things are new), there is no way to directly hyperlink to the specific post.
THAT BEING SAID (should have thought of it earlier….): I should have come up with a referencing system, and at least give the posting number (for instance, this will be post 690 in this tab). I’ll see if i can come up with something for the future so people can keep track where these “new” questions are coming from.
furthermore….
“Incorporating non-essential material by reference to a hyperlink is not allowed”…hence, I didn’t put hyperlinks in…
I need help. I don’t think I’m getting the big picture. Is the MPEP only stated to give instructions to examiners how to reject or object to an application? I.e., is everything worded against the applicant?
I am not sure about the use of terms ‘prior art’ and ‘reference’. It sounds like the term reference is used against an applicant when the examiner finds a reference that can be used for a 102 rejection. But sometimes a ‘reference’ is used by the applicant to prove ‘prior invention’. Is it just me or is a ‘reference’ used both ways?
“reference” is just a generic term that is used according to its plain meaning. It isn’t given any special definition in the MPEP. It’s basically anything that you “refer” to.
Hey Ya’ll. At risk of being redundant, I thought I’d check in with people that have sat for the exam in the past month or so and see if there are still problems with the exam software crashing when you try to search the supplemental Bilski, KSR, and AIA materials. I know people were reporting issues with it a few months back, and I’m wondering if it’s been fixed. If not, it sounds like pressing “ENTER” for the search function might have been the culprit to avoid? Thanks!
Bfusion your spreadsheets were also incredibly helpful. I actually brought copies of them with me and reviewed them in between exam sessions.
I did run into a problem when I pressed “Enter” in the search function. The software didn’t crash but the search function screen turned completely gray. Closing the search window and going to the next problem cleared the problem.
Good luck to everyone!!!
Likewise Dreams, best of luck and success to ya! I sit in one month (May 4th), so here’s to hoping I cross that border into the realm of Patent agent / attorney-hood to join you!
What do the stars (*) and >an internationalentering the U.S. national phase (“national stage application”)ashould< be used whenever papers or other communications are
My last post was chopped up by the site.
Question is, what do the stars (*) and greater than (>) and less than ( person< had a…
deletions* and additions (><) from the previous version of the MPEP
Thank you, and congrats on passing!
Also, thanks for updating q’s you saw.
Recent Exam Update / Guidelines from the USPTO:
http://www.uspto.gov/patents/law/exam/examguide.jsp
(long powerpoint slides…I’m looking for a better synopsis of the new material…)
Just got a preliminary pass on my first attempt. I studied for ~2 months (between 1-4 hours daily, listening to 2010 PLI mp3’s and doing repeat questions here). Here’s everything I remember while it’s still fresh. (I’ll add details to each later)
-Federal Court Decisions binding for Office (4.00.19p)
-Declassified Reference (4.00.34a)
-Product by Process (4.00.6a)
-PCT Amendments
-Method of growing hair
-Japan 45 Days
-Suspended Practitioner
-Potter (both variations)
-Parking meter
-Assignee not of Record can…
-New Rejection By Board
-1 rejected, 2 objected for being dep on 1, 3 allowed- no action, then…
-Piecemeal Examination
-Requirements for Information
-Q21) Trade Secret Question
-Q22) Germany – PCT / Patent Term
-Q23) Broom- multiplicity
-How to defend an Assignee when an inventor hasn’t assigned a patent he was under obligation to.
-BOTH variants of the Chemical Compound question
-India export laws
-Foreign Atty has duty if wrote app
-66 year old in hospital- track I
-KSR rationales (had to know elements of one of them)
-Foil wing airplane
-Silent regarding dimensions
-Electric Fan and Lamp
-Best mode
-Death of both inventors after Notice of Allowance
-Know that the Oath must list entire inventive entity
-Certificate of Correction prior to Reissue App- no marks in Reissue App
-When Supp Oath considered amendment
-Tommie and Jo Toxic waste
– Rights of non-signing inventor (straight from MPEP)
-102(g) basis for exparte reexam rquierments
-5 or 6 questions on when 1.131 affidavit can be used (YES, that many!)
-Third Party Submissions
-Protest
-Claim amended to add new matter- 112 rejection
-Problem where ranges given, had to amend claim to obviate prior art
-Appeals- if claim not canceled then considered by Board (even if not argued)
-If change would
-No fax for CPA
-Mixture Y melting point 150F
-There were 2 or 3 really tricky questions that took quotes out of the MPEP verbatim, save for 1 word. (I caught them only when reviewing my answers)
Didn’t have enough time to find the answers for these:
-Is a requester allowed to file a second request for reexam if based on different SNQP? I answered yes.
-Is patent office ever able to file, sua sponte, an RCE (if applicant states he authorizes payment of any fee to have considered an IDS that was filed after issue fee was paid)? I answered no but couldn’t find it in the MPEP.
-When filing a continuation, does a practitioner have to resubmit all the prior art from the parent?
-When examining a continuation, does an examiner have to cite all the references from the parent and make them of record in the continuation?
Well, that’s all for now.
Again, thanks to everyone who contributed to this site!!
And if anyone wants to buy my study materials, email the communal account -mypatentbarr -at-gmail.com.
*correction: No Cert of Transmission for CPA*
Got a provisional pass today. Thanks to all who contribute to this website. Thanks Bfusion for the spreadsheet. I’ll log back on soon (after appropriate celebratory engagements) and provide as much input as I can. In the meantime, I should note that this thing was *very* hard. Had some repeats (maybe 10 max), but this baby has been updated. Bottom line: if I had just studied repeats (and this website) like some others have successfully done in the past, I don’t think I would have passed. I did the PLI prep course as my primary source. Take everything with a grain of salt, though. No two tests (or test takers) are alike. CHEERS!
I didn’t fare as well (did not pass 4/4), I will say that there were not many repeats and the test was pretty difficult. I would agree that you cannot pass by studying repeats alone. I’m planning to go to USPTO to review my test soon. I’ll try to post anything that may be helpful after. Off the top of my head, I remember multiple questions re: signing documents, e.g. for what documents is a copy of a signature no good. Know Bilski, there was a question on that. Like I said, I’ll try to follow up w/ a long post soon.
I agree that just memorizing repeats is not the way to go. I would say that about 75% of the repeats I mentioned were not verbatim, but rather variants of the same concept tested. People, you must know WHY each answer choice is correct or incorrect AND know how to look up each correct answer in the MPEP. I did some fairly heavy searching in the MPEP.
Hi Miranda and TheGhostOfBilski,
What software did use to simulate the exam settings?
My used copy of Patware 9.0 says it expired. Anyone knows how to make it work?
Thank you.
Used a current copy of Patware, online version, for practicing. Also used Adobe 5.0 to practice with that; however, I did not find the Prometric pdf display software to be that hard to get used to. In fact it was just fine. Computers at my facility were fast; I was able to search supplemental materials (although there were some strange screen issues from time to time when searching in the supplemental materials…hard to describe but it wasn’t that bad).
Change the current date in the Windows “date and time” settings to 2009 and turn off auto-internet synch. HG Wells lives!
I used Adobe 5.0 on my computer, which was really really slow at searching. Luckily, the prometric version was quite speedy. (Though it did crash on me once and I had to get my proctor to reboot the computer. I have no idea if I lost any time, but the whole ordeal lasted about 3 minutes. and it wasn’t even while I was searching the supplemental materials!)
so you did not use any test simulator at all?
I do find that USPTO has a preview of the software.
can’t post links here so just google “prometric uspto sample” and the first result is it
P.S. – I have patent bar study materials for sale. Complete PLI PBR. Most current version. Drop me a line if you’re interested: GhostofBilski at gmail.com
and may the odds be ever in your favor
Any inpunt on this question?
1) firm was busy so had patent app completed by Indian patent agent in India. the firm’s uspto-registered patent agent then reviewed and submitted it to uspto. what is true?
a) it’s unlawful (export regulation?) because foreign filing license is required
b) foreign filing license is not required because us patent agent is the one who actually submitted the app
c) patent agent can retrospectively get foreign filing license
d) A and C
e) foreign filing license does not involve this issue
I think e). There is no filing in a foreign country. The Indian aget just prepared it.
One question for anyone who took the exam,
I can search Appendix R Patent Rules, right?
yes- did you you look at the demo i referred you to?
NO, which demo did you recommend?
Hi Miranda, can you please give more details on the following questions? or just refer me to somewhere
-no FAX for CPA
I am really confused with this one.
-PCT Amendments
–How to defend an Assignee when an inventor hasn’t assigned a patent he was under obligation to.
I guess 1.47 is the way to go
-India export law
-Electric Fan and Lamp
-Death of both inventors after NOA
I guess the legal representative keeps the thing going. 1.42
-Certificate of Correction prior to Reissue
-Office sua sponte RCE
I guess NO too
-Oops- meant fax ok for CPA, no rule 8 cert of transmission.
-PCT Amendments- know the two times you can make substantive amendments to the IA (not just typo corrections)
-Defending an Assignee- lot of wordy answer choices about proof of an obligation to assign (but no actual assignment made before being fired). Don’t remember the fact pattern or the answer choices, but I didn’t feel it was worth it to spend too much time on it as it required an extensive MPEP search for each of the answer choices. possibly a beta question.
– India export- I just went with the consensus here (which was that it might violate export laws), although another answer choice was tempting as well. Found something in the mpep that you COULD export files abroad for purposes of application prep… again didn’t spend too much time on it…
– electric fan was the question about being silent dimensions.
– Death of both inventors- office will still let it issue…
-If you make changes via cert of correction prior to reissue, do you have to underline bracket those changes in the reissue? I said no.
hope that helps!
Re India Export questions: I found this (might help, but it’s from 2008 and definitive office action may already be in place)
“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.
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.
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.”
http://www.patentlyo.com/patent/2008/07/outsourcing-of.html
(Export Administration Regulations) EAR specifically prevents the sending abroad of any information relating to technology that has been developed in the US as US export laws prohibit the sending of information relating to technology overseas without a proper license.
That being said, it doesn’t seem like any “official” rule has been made (apart from EAR regulations).
OK, I think the consensus is correct
1. Cannot do it without first obtaining a clearance from some goverment agency, like Bfusion said.
2. Foreign license does not cover it. even you have foreign license you cannot do it without clearance. However, I don’t konw if USPTO know this or they unintentionally design an answer saying it is because of absence of foreign license.
3. Here is what I found in MEPE
>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.<
HELP!
I’m studying to take the test the 2nd time, but feel like I need more prep materials. I purchased the OmniPrep prep but failed my 1st test back in Jan. Now I’m prepping again but can’t afford to buy the PLI course. (I’ve been out of work for nearly a year.)
Can anyone just email me a copy of the mp3’s or upload the lectures to the joint gmail site?
uploading commercial material will be a serious issue, future IP practioners. Check if you can listen from your friends’ place once. You only need do it once to get a general idea. Then practice exam questions and read MEPE for the substantial learning.
I was about to say this as well. Please folks, let’s use some discernment here. We need to respect commercial property.
This is a great website for everyone. I don’t want to see it trapped into trouble.
Agreed Sol and Miranda. Please,
DO NOT put materials that are commercial onto the mypatentbarr shared documents. As long as I have access to it, and if I see commercial items get posted, I will delete them (and I hope everyone else will as well). Quite frankly, since I was the one to initiate the shared documents, posting that type of material could come back to bite me.
PS: SOL, your comments have been spot on. I commend you for your research and willingness to post on this site. It’s been a huge help for me (pretty much, if I see a post by you, I read it because I know it’s going to be clear and informative).
Bfusion. Meant to tell you that I took and passed on 4/6 (first attempt, too!). I def think it is attributable to your work and gathering all the info, so thank you! Truth be told the exam was much more difficult than I thought it’d be. What pushed me over the edge was the second page of the excel sheet “Exam questions Contetns ‘new'” A lot of stuff showed up that I would have been unfamiliar with.
timtim,
Congrats! That’s great news to hear.
Apparently, it seems there is either a trend of a TON of repeats, or hardly any at all. Sorry that you got the later, but glad to know you were able to pass!
If you don’t mind, could you do a brief summary of how you studied, amount of time, and then if you can recall any questions, just list them in a post and I’ll update the spreadsheet more (i have ~ 1 month to go till I sit for my exam).
This is testimonial
I started studying back in January. I had an old 2006 PLI kit and I’d read the chapters in that, then listen to the John White audio lectures, and then skim over the referred to section of MPEP. I also made flashcards to help me remember what the sections of the MPEP were. You of course won’t get a question on the exam asking “what does 609 refer to?”, but it helped me become familiar with the MPEP and I saved time on test day because I knew where to look for everything.
After I made it through the study kit I found this website and all the old exams/questions and discussions. This website made the difference, I do not think the PLI study kit would have been sufficient alone. I’d go through questions and take the exams under test conditions (know 2002 and 2003 exams pretty well).
In the week or two leading up to exam, I studied Bfusion’s excel sheet. I would definitely recommend looking at the “New” questions and concepts tested…I probably saw more of those questions than actual repeat questions. If you know those I think you’ll be in good shape. A few questions that tripped me up on exam dealt with signature requirements. Like on what type of documents is an original required/or a copy acceptable.
Other thoughts-
Prometric Center was pretty nice, staff was helpful. My computer worked well enough. But remember that there is no CTRL – F Find hotkey shortcut.
Take the tutorial time period to write up an answer sheet on scratch paper
Take the full hour break
From my experience and what I’ve heard from others, the first half was more difficult than the second (second half still wasn’t a breeze though) so don’t get discouraged!
Good luck!
No Ctrl – F!!! so how do you activate the search function?
There is a designated “search” box, just to type in your entry. You just click the next “arrow” to find the next search.
Bfusion,
It seems many recent exam passers have credited you with their success. Is your spreadsheet open for public viewing? If so, would I be able to access it? If so, how? Any and all help is greatly appreciated!
Thanks again,
-GG
Gato,
login to the gmail account below, and go to documents. You’ll see all the resources there.
gmail: mypatentbarr @ gmail.com
password: usptoposita
Greatly appreciated! Many thanks for all your hard work!
-GG
Hi Bfusion,
I log in the gmail account. Under document, I see an excel file with only instructions and no questions.
Did I miss anything? Thanks!
Amy
Hi Amy,
Is this the name of the excel spreadsheet you are looking at?
Copy of Comprehensive 1 year analysis of exam questions for PatBar (April 11′ – April 12′).
If so, there should be “tabs” or “sheets” at the bottom of the spreadsheet. Each tab will have questions from either old exams, new reported questions, or REALLY new reported questions.
~Bfusion
Hey everyone,
Just wanted to drop quick post following up on what Bfusion said earlier, about how it seems there are either a bunch of repeats, or very few (my experience being the latter). I honestly believe the best way to prep for this test is to understand the underlying law and policy behind the questions; this way you are much better equipped to answer questions out of left field on the test. This site, and the commentary on it are great! but I would recommend using it only as a supplement to hone your prep. My 2 cents.
-Miranda’s question
Is patent office ever able to file, sua sponte, an RCE (if applicant states he authorizes payment of any fee to have considered an IDS that was filed after issue fee was paid)? I answered no but couldn’t find it in the MPEP.
I think no. because
37 CFR 1.114. Request for continued examination.
(a)If prosecution in an application is closed, an applicant may request continued examination
the rules say “an applicant”
However, the Office can withdraw the issue and reopen
(b)Once the issue fee has been paid, the Office will not withdraw the application from issue at its own initiative for any reason except:
(1)A mistake on the part of the Office;
(2)A violation of § 1.56 or illegality in the application
(3)Unpatentability of one or more claims; or
(4)For interference.
NOTE:(2) 1.56 is about duty of discloure
Miranda’s question
-When filing a continuation, does a practitioner have to resubmit all the prior art from the parent?
If submited AND considered, then not necessary. But you can if you would like them to be printed on the patent. Also remember, if the prior application is a PCT, you’d better submit it for ensured consideration.
If submitted but NOT considerd, you MUST do it again
609.02Information Disclosure Statements in Continued Examinations or Continuing Applications[R-5]
Hey all,
I uploaded a .pdf summary / document to the mypatentbarr gmail account explaining “accelerated examinations,” as a few questions have been reported recently concerning AE’s.
here is the direct link:
https://docs.google.com/file/d/0BxyB6CmD9mgMRmx1YlZxMWpyOTg/edit
Got a preliminary pass first trial today.
I claim
A method of passing patent bar, comprising the steps:
reading PLI materials once;
completing PLI selfstudy course once;
l
istening to PLI lectures randomly;
reading in details 600, 700, 1200, 1400, 1800, 2100,2200 once;
go through the website every sections excpet “repeat questions” and “Exam questions and concepts” and “Old Questions”. Save these sectoins for later.
reading sup materials in details once;
finishing 2000-2003 old exams once
2000 April 76% correct
2000 Oct 82%
2001 April 84%
2001 Oct 93%
2002 April 86%
2002 Oct 94%
2003 April 91%
2003 Oct 87%
After every 50 questions, I immediately revisit the questions I got wrong, check the explanation, search the MEPE and read relevant sections
Go through the repeat questions here.
Retake one by one on the webpage, check the answers, search MEPE, do True/False on everyone’s comments (apprantly many are wrong,including mine). I spent full 3 days on this part
Go through Exam Questions and Concept.
Do True/False on everyone’s comments and Search MEPE (apprantly many are wrong,including mine). I spent full 3 days on this part
Because spent 6 days on “repeat questions” and “Exam questions and concepts”, thest steps really too time consuming and completely destroy my plan. I could not retake 2001-2003, which I planned to do. I changed my plan
I print posts in 4 recent months since Dec, and read through, note questions I have not seen, check MEPE and read.
Then I went to back to 2002-2003, I retake the questions I got wrong and the questions I marked with ? (When I took them first time, I mark ? on questions testing sections I am not familiar with). These are probably 30 x 2 x 2 x 2 =240 questions. I could not finish them, so I only did 2002 April and 2003 April and Oct
I read 1800 quickly again, taking me half a day.
The day before the test, I read 700/2100 table of contents (my earlier plan was to read them once again but no time to do so)
I visited the center.
I quickly went through Exam Questoins and Concepts,and few questions I noted on the recent 4 months, and Miranda’s questions.
I am tired of studying, cannot do it any more.
-Product by Process (4.00.6a)
-PCT Amendments
-Method of growing hair
-Japan 45 Days
-Suspended Practitioner
-Potter
-Parking meter
-Assignee not of Record can…
-New Rejection By Board
-1 rejected, 2 objected for being dep on 1, 3 allowed- no action, then…
-Piecemeal Examination
-Requirements for Information
-Q21) Trade Secret Question (about expunge but I don’t there is any correct answer there)
-Q22) Germany – PCT / Patent Term
-Q23) Broom- multiplicity
-How to defend an Assignee when an inventor hasn’t assigned a patent he was under obligation to. (don’t know the answere for sure, can the assignee’s lawyere file protest? schedule interview?)
-India export laws (Bfusion and mine understanding is correct, nothing to do with Foreign license and actually Foreign license is trap answers)
-Foreign Atty has duty if wrote app
-66 year old in hospital- track I
-KSR rationales (had to know elements of one of them)
No need to folllow TSM, TSM is only one of seven
No need to follow seven, as long as the examiner satisfy the standard of obviouness
-Foil wing airplane (comprising is the problem, understand comprising is open-ended.
-Silent regarding dimensions
-Electric Fan and Lamp
-Best mode
-Death of both inventors after Notice of Allowance
-Know that the Oath must list entire inventive entity
-Certificate of Correction prior to Reissue App- no marks in Reissue App
-When Supp Oath considered amendment
-Tommie and Jo Toxic waste
– Rights of non-signing inventor (straight from MPEP)
-102(g) basis for exparte reexam rquierments
-Protest
-Claim amended to add new matter- 112 rejection
-Written description and -Problem where ranges given, had to amend claim to obviate prior art
With respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure. In the decision in In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), the ranges described in the original specification included a range of “25%- 60%” and specific examples of “36%” and “50%.” A corresponding new claim limitation to “at least 35%” did not meet the description requirement because the phrase “at least” had no upper limit and caused the claim to read literally on embodiments outside the “25% to 60%” range, however a limitation to “between 35% and 60%” did meet the description requirement.
-Appeals- if claim not canceled then considered by Board (even if not argued)
-If change would
-Mixture Y melting point 150F
-Is a requester allowed to file a second request for reexam if based on different SNQP? YES, but a different SNQP
-IDS after issue fee paid?
-When filing a continuation, does a practitioner have to resubmit all the prior art from the parent? NO I am sure
-When examining a continuation, does an examiner have to cite all the references from the parent and make them of record in the continuation? YES I guess
Good luck!
SOL!!!!!
Congrats my friend. This is both exciting (And sad) news. Exciting that you passed, but it’s sad because let’s face it, you’ll no longer be posting here! Your comments (including this post) have been a great help.
Best of Success in all you do.
~bfusion
Congrats, Sol!
102(d) is often tested. Read and understand this section.
in 2100
III.THE FOREIGN PATENT OR INVENTOR’S CERTIFICATE WAS ACTUALLY GRANTED BEFORE THE U.S. FILING DATE
Pay attention to B and C subsection
Know where to find what owner of record can do and owner not of record can do.
300-25
Know handwritten signature
When can a copy of signature be used? Do you check one by one? Easy way for me, almost all handwritten signatures can be used in orignal or copy, with exceptions. in 500
I.HANDWRITTEN SIGNATURE
Also, S-sginature cannot be used as a copy. S-signature implies certification. Read the rules word by word.
EPAS
Reciept date, filing date, transmission date? what are their relationship?
What if your document did not go through EPAS? losing the date or not? What should you do? What is the Office going to do?
Really know
what can be faxed but will get the benefit of certificate of transmission, meaning you will get a date, the actual receipt date in the Office, but not certified date your certificate
what can be faxed and will get the benefit of certificate?
If inconsistency, what petition you need to do?
What CANNOT be faxed at all, meaning you will get any date if you use fax, regardless it is recieved or not.
Know Article 19 amendment, time, where to file, content?
Know 7 KSR rationals.
Know an examiner can still use TSM
Know an exmainer can also use the other 6 ratinonals
Know an examiner is not limited to any of the 7K KSR rationals, as longas the Examiner articluate why it is obvious in poosita and have factual analysis.
Know Graham is still useful but Examiner is not limited to use Graham analysis (my understanding, could be wrong or inaccurate)
Know when you can appeal
Any of your claims get rejected twice and is currently under rejection. Then you can file an appeal. And you file appeal based on all rejected claims (including those rejected once only)
Know the fate of claims in appeal after a decision and your rehearing/judicial review expired
Rejected-Affirmed-Canceled
Objected for being depdendent on Rejected claims, also canceled
Allowed-Still allowed
A claim get a new ground of rejection from Examiner: either reopen or maintain the applea, what is the difference?
A claim get a new gorund of rejctoin from the Board:either reopen or request for rehearing, what is the difference?
the same Claim A rejecton 1 affirmed and also get a new rejection 2 from the board.
You can
request rehearing
OR reopen rejecton 2 with examiner, and request rehearing of rejection 1,what will happen? Examiner consier rejecton 2 and return it to the board, board then reconsider rejection 1
OR reopen rejecton 2 with examiner, and NOT request rehearing of rejection 1,what will happen? Examiner consier rejecton 2 and return it to the board to make rejection 1 final. then you can request of hearing of rejection 1.
OR you get luck, even the Examiner is only reopen in regard rejection 2, if your respeons directed to rejectoin 2 also overcome rejecton 1, you get the claim allowed. No need of returning to the board anymore.
PTE and PTA application date? Before date X, PTE, on or after date X, PTA
Can RCE jump an applicatoin from PTE to PTA? NO because RCE is not a new application.
Oath/Dec involving joint-inventor must identify everyone. You can have one signature on the oatch/dec from one joint-inventor, so you can submit multiple oath/dec, but every oath/dec must identify every joint-inventor
If no reagent of record, like your agent got suspsended, then where the Office send communicatoin to? to the first named inventor. Who can sign? ALL must sign.
103(c)
help 103 not 102 rejections
common ownership at when?
how to offer 103(c) argument and affidavit? evidence?
provisional double patenting?
only when there is a common owner or inventor, the Examiner can make pro double patenting. Otherwise, cannot.
Thanks, Sol, for all of your effort after passing.
I’m scheduled for the test in less than 2 weeks and you are very helpful!
I might be being dense here, but can someone tell me what the acronyms PTE and PTA are (taken from Sol’s post above). Also, what is EPAS? Taking the test on Wednesday, I just found this site, and now am a little concerned I don’t know what these mean.
PTE= Patent term extension for utility and plant patents issuing on applications filed between june 8, 1995 and may 29, 2000 – former
35 USC 154(b)
PTA= Patent term adjustment for utility and plant patents issuing on applications filed after may 29, 2000 – amended
35 USC 154(b)
Using EPAS, you create and submit a Patent Assignment Recordation Coversheet by completing on-line web forms and attaching the supporting legal documentation as TIFF of PDF for submission via the Internet.
Hope this helps…..
Good luck for your exam.
EPAS is the electronic assignment system. I’m not sure of the answers to Sol’s questions above – I’ll have to review more on the S-signature and EFS. PTA is patent term adjustment (effective after May 29, 2000) and PTE is patent term extension (effective after June 8, 1995). I’ve been told the most important thing to know of these two is the dates of eligibility. John White stresses 14, 4, 4, and 4 in regards to PTA. Sorry I couldn’t be of much more help….
FYI (To all test-takers in the next few months).
If you just started using this site, I’ve put up a BUNCH of study materials onto a shared email/documents google account. You’ll find a bunch of prep exams, a bunch of study guides, and an excel spreadsheet with repeat questions (indicating how many times each question has been asked within the past year).
to access these things:
go to gmail:
login id: mypatentbarr @ gmail.com
password: usptoposita
enjoy!
Hi, Bfusion:
Are you sure the login information? I tried several times but failed
Sorry, Bfusion. I got it. Thanks.
Hi everyone~
Just found this site and wanted to thank you all for this useful comments. Tried logging into Bfusions gmail account only to find out the spreadsheet has been removed…..please, Bfusion -or some good Samaritan – can you share?
Thanks so much….I would really appreciate it!
Hi Monica,
I took the spreadsheet down temporarily…I’m trying to work on protecting it (it kept getting corrupted / changed…hyperlinks missing, etc, etc).
I should have it back up soon!
in the meantime, if you absolutely need it (your test say is coming up in these next few weeks), please email the mypatentbarr@gmail.com email and I’ll try and help.
I got a preliminary pass yesterday 4/25/12, and this site was instrumental! Here is my contribution.
Repeats:
• Missing parts – PCT
• Who can sign a 1.131 affidavit
• Spanish phone – the CIP variant
• Velcro
• Who can assert small entity status
• Mexican Nationals PCT – variant with a Mexican company (I think)
• Trade secret question
• Japanese patent
• Electric fan and lamp
• Piecemeal
• Advisory Action
• Best mode
• Appeals-Rejection in continuation
Past Exam Repeats
• Laurel, Abbot, and Hardy (4.00.14a)
• Smith Laminate (4.00.17a)
• Prior art (10.00.16a)
• IDS After Notice of Allowance (4.03.26a)
• Small Entity Status (4.03.13p)
• 147 Claim Counting (10.03.50a)
• Bloc; Synthetic Z (10.03.7a)
• Canceled matter as prior art (4.03.38p)
• 5 Steps to Cross the Road (10.03.23a)
• Supplemental Oath as an Amendment (10.03.26a)
• Late IDS when Client Knew about the Prior Art All Along (10.03.34a)
• ABCD/ABCDE/BCDE (10.03.2p)
• Moondust (10.03.6p)
Other Questions I Remember
• Question about when a provisional double-patenting rejection is proper
• Question about whether a reply to an office action of January 4 is timely filed on July 5 with a fee and petition for extension of time after a federal holiday on July 4
• Question about whether a certificate of correction becomes part of the patent such that a member of the public could obtain a copy by ordering a copy of the patent
• AIA question about the standard for granting inter partes reexam
• Supplemental materials questions about KSR and Bilski
• Question about who may reply to and assert new grounds for ex parte reexam
• Variant of 10.03.12a where A and B are listed as inventors and assigned their rights to Corporation; Corporation decides that C and D need to be added as inventors, but B disagrees. It was unclear whether C and D had also assigned their rights to Corporation, but I went with the answer where Corporation may change inventorship without consent of the inventors.
Congrats on the prelim pass! Thanks for posting.
I echoed CG’s comment. I got a preliminary pass yesterday 4/25/12 on my 2nd attempt, and this site was instrumental! Here is my contribution.
Time stamp Subject (MPEP CFR USC ANS Re-peat Com)
2000.04a.14 Laurel,Abbot and Hardy, overcome 102a rejection
2000.04a.23 Tommie and Jo in paper mill
2000.04a.32 demo of nonObviousness
2000.04a.47 Request Reexamination after being sued for infrigement
2000.10a.02 Sam, ABC, unclaimed embodiment and XYZ Appeal & Interference
2001.10a.05 color photo, MegaCorp-SES
2001.10p.46 Overcome by 1.131
2002.04p.04 Diligence
2002.04p.38 Smith and Jones, invertorship correction
2002.10a.08 overcome nonstatutory Double Patenting
2002.10a.21 Public Inspection
2002.10a.34 Jane w/o page 5, Notice of Omitted Items
2002.10p.05 Duty to disclose
2002.10p.08 basis for 112P1 rejection
2003.04a.12 Potter vs Smith & Jones, overcome 103a commonly owned, different invention
2003.04a.26 IDS after Notice of Allowance
2003.04a.40 provisional app requirement
2003.04a.44 Polyethylene 65.1%, for 103 rejection
2003.04p.12 Interference, Reexamination, reissue
2003.04p.15 Able, Ben, John, Inventor requirements
2003.04p.19 101 utility requirements
2003.04p.23 Appeal Brief, Examiner Answer
2003.04p.44 Request Reexamination after being sued for infrigement
2003.10a.09 Smith DRAM, CIP
2003.10a.26 Supplemental oath as an amendment
2003.10a.41 MDC
2003.10a.42 Restriction Appeal
2003.10p.02 ABCD/ABCDE/BCDE
2003.10p.06 Moondust, duty to disclose
2003.10p.19 103 obviousness rejection
2003.10p.24 Foreign Priority
2003.10p.28 Parking Meter, objection to the specification, defective drawing
2003.10p.36 Affididavit under 1.131
2003.10p.42 Smith, Jones & Brown, 103a rejection
2003.10p.43 ADS vs oath
2003.10p.50 facts for 102g rejection
Q04 Submitting Table on CD-ROM
Q06 Obviousness(General)
Q07 Claiming, Deleting and Reclaiming a Benefit Claim – entend paten term
Q08 PCT Missing Parts
Q10 Suspended Practitioner
Q13 International Search Report — Amendment
Q14 PCT Costa Rica and Swedan publication
Q22 Germany PCT Patent Term
Q23 Broom Handle
Q24 Japanese Patent PCT
Q29 Death of inventor
Q31 Chemical Claim relieving headache
Q33 Indefinite claim using HIGH
Q41 Documents require signature
Q52 Multiplicity
Q66 objected Claims after appeal
Q67 Obviousness, touch of range
I use different time stamp in excell file to allow me to sort easier.
In addition, Bfusion’s New questions from post are important. I see most Qs from Dreams do come true and Miranda. Plus EPAS and signature which I may missed.
WOAH! GW, congrats….that’s a HECK of a lot of repeats!
I summarize New Qs from post as follows:
N01 color drawing in design app
N02 acceleration exam
N03 business model patentability
N04 encoded signal is not patable
N05 file 2nd reexam based on new SNQP
N06 recite all reference in continuing app
N07 EPAS
N08 signature
Provisional Pass on 4/24. I credit this site with passing. The repeats were invaluable because it allowed me more time to look up the other buried in the MPEP questions. Definitely memorize the concepts and answers.
I remember:
Potter
Death of Inventor
PCT over some kind of amendment
Germany PCT
Japanese PCT
ccar PCT question
Smith Dram
Laurel Hardy
adding parts
Spanish Phone
probably about 5 questions related to small entity status
trade secret question
electric fan
maintenance fee paid, check returned
piecemeal
smith laminate
all of the claims allowed when appeal is abandoned questions
moondust (some sort of variation)
minor inventor is competent to sign
situation 1.131 affidavit appropriate – I think the answer was 102e and 102g
business method invention
difference between statutory and non-statutory patenting
two questions relating to SNQP
Two where it asked about KSR/Bilski
That’s all I remember.
Many thanks to all who contribute to this site!! I received a preliminary pass on 4/23/12. Whew; what a relief!
As mentioned by many others, having repeat questions from this site memorized was very helpful, so that -buoyed by my confidence at having at least a few correct answers-I could spend more time looking up obscure facts in the MPEP. I prepared by learning the basics (Longacre book), doing old exam questions, and becoming familiar with the MPEP. The day before the exam I read through the chapters on appeal, PCT, and 2100.
I had about 15 repeat questions, and the rest were mostly familiar concepts, but required looking up/double-checking. There were a few concepts that I had never heard of- but findable. I, surprisingly, did not have any AIA-related questions. Many, many obviousness and 102, and quite a few appeals questions.
The repeat (verbatim) questions that I saw:
-Laurel,Abbot and Hardy
-Tommie and Jo
-Moondust
-Potter (both)
-ABCD/ABCDE/BCDE- broadening reissue
-Two easy MDC questions- I think both repeats
-Parking Meter, objection to the specification, add a drawing
-Broom Handle & multiplicity
-Polyethylene obviousness of ranges
-Five steps to cross a road
-Design patent in country X
-Smith DRAM
Unfamiliar/modifications of prior questions:
-Final rejection period for reply, whether filing a petition tolls the period
-101 utility question on computer program that just stored data (or something non-useful)
-Design- how/when to submit color photos
-How to respond to a restriction requirement when claims are linked
-Nonprovisional filed without claims, have one year to convert to provisional
-Who must sign a disclaimer
-Claim interpretation (MPEP verbatim)
-What documents can be faxed
-RCE when object to restriction requirement (but no rejected claims)
-Which docs to submit to get an expedited (environmental) review
-To claim priority in a reissue, which docs to submit
-Multiple questions on when can/cannot use 1.131
-When can use 1.8 certificate of mailing
-ETS signatures, what they mean
-Delineated Graham factors, asked which of examples were appropriate secondary considerations
-How to overcome 103(a) rejection- evidence of commercial success (some kind of color-based laundry-sorting system)
-When can multiple references be used in a 102 rejection (answers were verbatim from MEPE)
-Fax- if file CPA without fee by fax, how will it be treated
-102(f)
-102(g)
-How can public inspection a reissue
-Want to submit an IDS after Notice of Allowance
-Provisional app requirements for filing
-When a supplemental oath acts as an amendment
-ADS vs oath, which controls re:address
-Submitting two tables on CD-ROM, collectively over 52 pages, but each less
-Claiming priority, then deleting it, then wanting to reclaim it (cannot reclaim)
-Who to mail OA to if Suspended Practitioner
-When can file amendment to PCT, related to International Search Report dates
-Deadline to claim priority in PCT (16 mo rule)
-Who prosecutes after the death of inventor who had assignment
-When an indefinite claim using HIGH is ok
-Which documents are ok to submit with a copy of a signature
-What happens to objected Claims after appeal
-When
-Two issued patents, how one owner can challenge the other
-When can submit new arguments during an appeal
-When/how an interview is proper with Examiner (policy stuff)
Additionally, my study-partner and I put together a summary of the currently-tested portions of the AIA (because who actually likes reading the Federal Register?). It is based on presentations given by USPTO officials during their recent roadshow tour. I do not assert that it is 100% complete, but will hit the major points of change. I’ll post it on bfusion’s gmail site later today.
Best of luck to all studying!
Casey,
Congrats on the pass! Job well done. Thanks for your feedback (and for posting your study materials to the email account/documents).
I’m taking the exam next friday. T-minus one week. yikes.
Casey,
Congrats.
How did you like the Longacre book?
Has anyone else used his materials?
I am T-minus 2 weeks…
I found Longacre adequate, but not overwhelmingly great. I used it for a general idea of what to expect in each chapter, and some specific details. There is a lot of information in it, and if I had tried to memorize it all it would have been a wasted of time- I think the thing that really helped was becoming familiar with old exam questions, not just their specific content but also the way to approach how to look up answers (especially in a non-time crunch setting) so that on the actual exam I was not panicking whenever I had a question whose answer I didn’t know.
Best of luck!
Thanks, Casey. I wasn’t sure if Longacre was worth the price. I have downloaded his free materials and I’m studying those in addition top this site.
I am using his review book now… test May 20…I’ll let you know. So far only getting a B review. I’ve found errors with in the book.
Totally failed yesterday. Should have spent more time on this site. Congrats to everyone who has been passing. I will be spending more time here and hoping to get a pass soon!
2 different Potters
Smith DRAM
submit an IDS after Notice of Allowance
Germany PCT
Japanese PCT
ccar PCT question
color photos
Laurel,Abbot and Hardy
Tommie and Jo
parking meter
broom handle
contacting suspended practitioner
indefinite claim using HIGH
Submitting two tables on CD-ROM, collectively over 52 pages, but each less
Hi all, I never commented here but just passed the bar on April 12th!! It was a hard exam but with 3 months of PLI course + past exams + thoroughly going over this website, I was able to pass.
For the sake of full disclosure, I am a 2nd year law student and had taken patent law course already so I knew general 102, 103, 101, 112 concepts but that’s about it. You can do it guys!!
Considering the recent unavailablity of this website, has anyone thought of putting together an exam of the “new” questions listed in bfusion’s spreadsheet? It could be similar to Mambo’s P, X, and Y. I’m worried of all the new questions/answers we’d be lacking if something did happen to this website!
Zan,
I’m working on it already 😉 To everyone asking about the spreadsheet, I am really sorry it’s not available right now (I know, people REALLY needed it, but I had to take it down…I’ll disclose reason why later).
So…in the meantime, hold tight. There is still a lot of good material on the gmail documents, and I should have something better back up soon
I don’t want to be rude or anything, but instead of asking someone else to do it how about you do it yourself since you obviously are the person who is most concerned about it since you posted. I believe Bfusion has already passed the patent bar and probably has many other things to do and he has contributed immensely to this website. I’m sure others would like to see something like that too, but really asking someone else to do it?
Thanks bamboozled,
Yeah, if I can throw a word in…(we’ll see if all my work pays off..I sit for the exam on friday….6 days), but organizing your thoughts, questions, for me, has really helped me see trends, learn material, and think through issues. I know we all use this site because there is some good info here (it doesn’t hurt that it’s free!). I’m trying to formulate better organized materials to share because it’s helping me….but I can only do so much.
I’ll keep you all posted on how I do next friday (with updates, etc).
for now, back to studies…..
Sorry, Bamboozled but I did not ask someone else (Bfusion included) to put together another exam. I simply asked if anyone thought of doing so. I’ve already started to put together my own exam based on the “new” questions. I agree with Bfusion. After sorting through the questions, comments, and suggestions, I’ve learned alot.
No worries Zan. I hope the studies are going well!
hi all,
Is there anyone who passed the exam and want to sell their PLI study materials? I am preparing for the exam to give this August and would appreciate any help..feel free to email at demunshi@gmail.com
I just got my provisional pass yesterday (5/3), and wanted to thank everyone who’s posted here. All the repeat questions I remember getting were as posted by Jill and Casey. As far as prep goes, I found Mambo’s tests really helpful. I also do recommend reading through a couple of the bigger chapters – not word for word, but skimming for the stuff that seems like good test material. Also, I found the discussions of the repeat questions on this site invaluable, especially for the ones I got wrong.
As my contribution to the site, I took Mambo’s tests and put them in word docs, then made pdf flashcards out of those. You can grab them here: http://d.pr/f/QuyD (drop.lr link)
Big up to Mambo and everyone else on this site. The discussions posted here were definitely the most helpful resource outside of the old test questions.
Congrats dusty and thanks for your contribution! I downloaded your ziped folder, however, can not open the Word files…
May I ask you to upload your files onto Bfusion’s gmail account, as the pdf Mambo test have been uploaded there.
mypatentbarr@gmail.com
password:usptoposita
Just passed. Done. Fin. It’s all over.
I’ll update with a big list of repeat questions tomorrow…I’m still processing / downloading all the info that I can remember from my brain. But, for right now…I would say that knowing all the old questions and repeat questions was essential to passing. Even if I didn’t see the exact question, by knowing previous questions/facts to those questions, it was REALLY easy to rule out two or three answers off the bat.
I’ll also post how i studied, etc, etc tomorrow…for now, going to take a break!
CONGRATS Bfusion.
Hi ,
Thank you all for your comments its really very helpful for a new comer like me. I could download Mambo’s file and I was just reviewing from them. Can some one confirm that various files within that folder. Does pdf files among these docs carries the right answer as per mambo’s understanding. Kindly confim. Also, It will be really helpful in case any one can share the searching/lookup tips/strategy from MPEP during exam. I am planning to appear in my exam in 2 months time frame and had no legal background. I really do not want to miss this chance of passing the exam. Therefore any inputs will be really helpful. Once again thank you for reading and providing your suggestion. I wait for your response.
Ok…yes, I’m OCD. I couldn’t wait to post…So, here’s my quick take of the exam:
REPEAT QUESTIONS:
(Caveat….some of the “repeats” were VERY close variants. I mean, VERY close. Some were asking the opposite of what was seen on these old tests. So my thoughts:
1) read the questions carefully
2) STUDY the old questions a LOT. Because you’ll see variants. But guess what? You’ll have a REALLY good idea of what the answer is because you KNOW the material from studying the questions. Thus, you’re searching will be SOOOO much easier.
So, that being said, I Listed EVERY question that was either verbatim, or was a very close variant, OR….questions that were CRUCIAL to me understanding a question I hadn’t seen before (but, by knowing these old questions, I was able to easily find the correct, OR, narrow down to 2 options)
I haven’t sat down to iron out the “new new” questions yet. Going to sleep on them and see what my sub-conscious makes of them. I wrote down what I remember, but gonna let my brain kick out any more thoughts on those. I’ll post them soon.
QUESTIONS I ENCOUNTERED
2000.04a.23 Tommie and Jo in paper mill
2000.04a.32 demo of nonObviousness
2000.04a.47 Request Reexamination after being sued for infrigement
2000.10a.02 Sam, ABC, unclaimed embodiment and XYZ Appeal & Interference
2001.10p.46 Overcome by 1.131
2002.04p.04 Diligence
2002.04p.38 Smith and Jones, invertorship correction
2002.10a.49 Facsimile Transmission
2002.10a.50 Reissue
2002.10a.08 overcome nonstatutory Double Patenting
2002.10a.21 Public Inspection
2002.10p.05 Duty to disclose
2002.10p.08 basis for 112P1 rejection
2003.04a.01 RTP (reduction to practice)
2003.04a.12 Potter vs Smith & Jones, overcome 103a commonly owned, different invention
2003.04a.26 IDS after Notice of Allowance
2003.04a.40 provisional app requirement
2003.04a.47 Claims may Not contain
2003.04p.12 Interference, Reexamination, reissue
2003.04p.15 Able, Ben, John, Inventor requirements
2003.04p.19 101 utility requirements
2003.04p.22 Foreign Priority
2003.04p.23 Appeal Brief, Examiner Answer
2003.04p.28 Claim Counting (147)
2003.04p.44 Request Reexamination after being sued for infrigement
2003.10a.11 Prior Art exclusion of 35 USC(c)
2003.10a.26 Supplemental oath as an amendment
2003.10a.32 Enablement
2003.10a.39 Overcoming a rejection based on 102(e)
2003.10a.41 MDC
2003.10a.42 Restriction Appeal
2003.10a.44 Foreign filing without publication
2003.10p.04 Invitation to correct PCT app
2003.10p.15 National Stage by Fax
2003.10p.19 103 obviousness rejection
2003.10p.24 Foreign Priority
2003.10p.28 Parking Meter, objection to the specification, defective drawing
2003.10p.36 Affididavit under 1.131
2003.10p.43 ADS vs oath
2003.10p.50 facts for 102g rejection
Q06 Obviousness(General)
Q06 *** Drug dispense machine with touch screen (how to reject)
Q07 Claiming, Deleting and Reclaiming a Benefit Claim – entend paten term
Q08 PCT Missing Parts
Q10 Suspended Practitioner
Q12 1.131 affidavits
Q13 International Search Report — Amendment
Q14 PCT Costa Rica and Swedan publication
Q14 ***Japan resident files only in Japanesse
Q20 Information requested fro USPTO
Q21 Trade Secret (which is false)
Q22 Germany PCT Patent Term
Q23 Broom Handle
Q24 Japanese Patent PCT
Q25 Electric Fan (size doesn’t matter)
Q29 Death of inventor
Q31 Chemical Claim relieving headache
Q33 Indefinite claim using HIGH
Q34 Investigating Deceptive Intent
Q37 Terminal disclaimer (who can sign)
Q40 Assignment: what docs can an assignee NOT of record sign (small ent)
Q41 Documents require signature
Q52 Multiplicity
Q66 objected Claims after appeal
Q67 Obviousness, touch of range
Conclusions: Um, if the above list doesn’t tell you…study the old questions. I know people have reported that they only had a handful of “repeats.” I would say of that list, maybe 20 were EXACT repeats. But, that means the oh, other 40 or so were either close variants, or were easily figured out because of these old questions.
So, study..the old questions
Put the time in, study…and, I’ll keep posting here for a while (and checking in on mypatentbarr@gmail to answer more questions).
For now, Bfusion…out!
Congrats, Bfusion!
Did you encounter any KSR and Bilski questions? Any suggestions?
I got one with the track I inventor (old guy in hospital, wants to get a patent / submission within 12 months). Similar to the one reported already.
Other than that, there was one or two on Should an examiner stick to KSR rationals, or can they throw out Bilski.
One other on how can an applicant argue / overcome (and one of the answers was “argue they didn’t use ANY of the KSR rationales”
In general, I think don’t stress too much on the KSR / Bilski. Know the main points, the concepts. Know what supplemental materials are available…but, I was able to easily search through the materials to find answers (I didn’t study the new materials really at all. I looked through them, looked over main points / people’s breakdown of the material, and focused more on the old exam questions / stuff that’s been reported)
Bfusion.
I’m assuming you passed? Thank-you for all or your posts.
Yup. Passed =)
congrats Bfusion! Knew you’d have no problem with it : )
Congrats! Bfusion, you earned and deserve it!
Many Congratulations Bfusion and thank you for your comments. Would you please share some tips on search strategy of MPEP during exam. I heard computers are very slow while searching. Is there any tip you would like to share for searching quickly to locate the exact rule etc.. Many thanks,
Hello, I’m looking to purchase study materials. In particular, PLI materials. I’m planning on taking the exam sometime around June-July. Please feel free to contact me at mazinga87@gmail.com.
Index Searching:
My suggestion is to find a word in the question, or concept in the question, that you can use. So, say you see a question about trade secret. So, open up the index, and search for trade secret. you’ll probably get a bunch of hits…so, just look each time you search for Trade Secret and either write down the location in the MPEP, or if you find the chapter you’re confident the answer is in, then go to the MPEP and search for that section.
Once I opened the MPEP chapter, I would often just scroll down to the location I got from the reference, and then do a keyword search. So, once at the right place, I would search for some phrase or word that was in the given answers on the exam.
I found this to either directly lead me to the section i needed, or, if I never found the answer, indicate this was the correct choice (if the call of the question was “which is wrong…”)
The computers for me were pretty fast actually searching. I found the MPEP software / searching to be EASIER than using adobe / pdfs. Sure, you can’t keep multiple windows open, but..for me, it was easier.
Provisional Pass this weekend. As you can see I had approx 60 repeats or close variants….
UPDATE: I also had the Hospital Patient Track 1. The question is tricky because it makes you choose between the new prioritized Track 1 or Accelerated Examination in 700. However, the fact pattern states that the practiioner’s secretary just quit the office and now, any response to an Office Action will take him 6 weeks. This is key because under Accelerated Examination the response to an OA is one month, no extensions, whereas Prioritized Track 1 allows for normal 3 months responses. That’s why you choose Track 1 prioritized over MPEP Accelerated Examination.
I had these, or slight variations:
Restriction (4.00.9a)
Tommie and Jo(4.00.23a) VARIANT
Declassified Reference (4.00.34a)
102 (f) (4.00.44p)
Final Office Action (10.01.11a)
Written Description (10.01.14a)
Able and Baker (10.01.24a)
35 USC 103, 102(f) and 102 (g) (10.01.26a)
Obviousness (10.01.30a)
LIP GLOSS (4.02.32a)
Broadening Reissue (10.02.12a)
Third Party Submissions (10.02.46a)
Facsimile Transmissions (10.02.49a)
Express mail (10.02.34p)
Nylon Rope and Tent Fabric (10.02.43p/04.01.20a/11.99.2a)
File by Fax (4.03.5a)
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)
IDS after Notice of Allowance (4.03.26a)
Certificate of Mailing (4.03.29a)
Prior Art under 102(d) (4.03.3p)
Interference and Reexamination (4.03.12p)
Copper substrate (10.03.4a/4.03.16p)
35 USC101 (4.03.19p)
Interviews (4.03.20p)
Petition to make Special (4.03.21p)
Bloc; Synthetic Z (10.03.7a/4.03.32p)
Public Use (4-03-36p)
35 USC 102(d) (10.03.8a) variation
Smith / DRAM (10.03.9a)
Small Entity Fee (10.03.13)
Tribell (10.03.16a)
National Stage by Fax (10.03.15p)
Anticipated under 102(e) (10.03.17p)
Correcting the Name of the Inventor (10.03.18p)
Parking Meter (10.03.28p)
Issue fee transmittal form – XYZ Company (10.03.38p/4.03.11p)
Q4) Submitting Tables on CD-ROM
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)
Q19) Mexican Nationals – PCT
Q21) Trade Secret Question
Q22) Germany – PCT / Patent Term
Q24) Japanese Patent
Q25) Electric Fan
Q29) Death of inventor before application is filed
Q31) Chemical Claim
Q33) Indefinate Claim USing ‘High’
Q34) Investigating Deceptive Intent
Q37) Terminal Disclaimer
Q41) Documents Requiring Signatures
Q63) TP Submissions
Q64) Restriction
Taking the Exam tomorrow at 8 AM in Arizona. Studied using PLI materials (crammed into 10 long days) and this website (an additional 10 long days). Have all 200 of Mambo’s repeat questions down cold + the new questions posted on this page. I’ll report back tomorrow evening! Thank you to everyone that has contributed to this forum and I look forward to contributing soon regardless of my result.
Looking forward to it. Good luck!
PASSED!
My experience was very similar to those shared by Sabrina and RT below.
Critical to success:
– Know all of the questions from Mambo’s tests down cold.
– Know all of the reported new questions down cold.
– Know how to search the MPEP quickly
I didn’t have that many repeats in the AM session (probably only about 5), but I had about 20 in the PM session. Off the top of my head, I definitely remember:
– Laurel & Hardy
– Parking meter
– Chemical compounds (reported new question)
– Potter (both versions)
– Smith DRAM
– Appeals after new rejection by Board
– Appeals when some claims chosen for rehearing and others chosen as subject of re-opened prosecution with Examiner
– Basic filing fee (reported new question)
– Inventor death (the Barbara question)
– Calculating PCT patent term
– Lots of 102/103 questions
-1.131 & 1.132 affidavits–when they can be used
– Broom multiplicity (reported new question)
– Tommy and Jo
The Prometric computer was surprisingly fast and I agree with Bfusion’s comments regarding it actually being EASIER to use than the PDF searching method. However, my computer did crash during the exam (which caused a small heart attack), but they had it back up in no time.
I will keep posting here as new repeats surface in my memory.
Best of luck to everyone. Fantastic site.
Got my preliminary pass today.
Lots of repeats and or close variations. I think there were 30 questions (total) that I had to look up, and out of those 30, only 5 that I wasn’t sure about even after looking stuff up.
Here is how I prepared.
1. I read all of the outlines in the study guide part of this website
2. I worked out the old tests (2002 and 2003 only) and ‘learned’ the MPEP by looking up the answers to these 400 questions.
3. I worked the repeat and reported questions on this website and read all the comments and looked up concepts as needed.
4. I worked Mambo5’s tests.
5. I worked through the repeat and reported questions two more times just answering, checking, and moving on (in other words, I skipped the comments this time).
My advice: KNOW THE REPEAT AND REPORTED QUESTIONS.
Oh, by the way, I had to change computers two times during the second half of testing because my computer went haywire when I was searching a pdf file. If this happens to you, DO NOT PANIC (like I did) because all of your answers up to that point are somehow saved.
NEW QUESTION that I had to look up: (was terribly worded and some of the choices were listed using the CFR section that goes with them)
An application is a proper continuation applications if the previous application is any of these except:
A. A divisional Application
B. An RCE
C. A CPA
D. An application entering national stage under section 371
E. A provisional application
Answer I chose: E because a ‘continuation’ from a provisional is a nonprovisional application (so it’s not really a ‘continuation’). I found this information under 201.07 Examiner’s note 2.
After I looked it up, I realized I should have been able to use common sense on this one, but, oh well.
Got the prelim pass yesterday.
It was my second attempt. I failed miserably back in January and was reluctant to try again before believing that I had done something different in my preparation than the first time.
I purchased the Omniprep program last summer because it was cheap and offered a money-back guarentee. I followed the program but failed the test in January. True to their offer Omniprep DID refund the entire $495 after about 2 months.
I am a scientist and over 50 yr old. My memory was NEVER good (which is one reason I didn’t pursue medicine.) My preparation to pass required more memorization than I’d ever done. In spite of the “open-book” nature of the test, remebering the old questions and where to answers in the MPEP required a lot of effort for me.
What was the difference for me? What would I suggest? As nearly everyone else who has written one of these posts has said:
1. Study the old questions,
2. Take the old tests repeatedly,
3. Read key chapters 600, 700, 1200, 1800, 2100,
4. Practice searching and looking up every question while doing 1. and 2., above.
The biggest difference for me was UNDERSTANDING why answers were right and wrong. Practice looking up the answers and reading the USPTO answers for questions I didn’t get was huge. Reading WHY answers were wrong was very helpful.
I’m going to update which questions I remember later.
I agree 100%…in fact, when I said KNOW the repeat questions earlier, this is what I meant…do not just memorize, KNOW WHY the answers are correct.
I’ve pasted Bfusions post about repeats he saw and included only the ones I remember. My memory is not that great, so this is not as accurate as some others might be.
In general, the test was heavy with
Obviousness and 103 (they don’t let you know what is KSR…)
Enablement & Description and 112 (several of the old q’s) att least two related to seperability of E and D
What is anticipation 102
Appeals
Many PCT
Statuatory 101
I had these, or slight variations:
Restriction (4.00.9a)
Tommie and Jo(4.00.23a) VARIANT
Declassified Reference (4.00.34a)
102 (f) (4.00.44p)
Final Office Action (10.01.11a)
Written Description (10.01.14a)
Able and Baker (10.01.24a)
35 USC 103, 102(f) and 102 (g) (10.01.26a)
Obviousness (10.01.30a)
Broadening Reissue (10.02.12a)
Third Party Submissions (10.02.46a)
Facsimile Transmissions (10.02.49a)
Express mail (10.02.34p)
Nylon Rope and Tent Fabric (10.02.43p/04.01.20a/11.99.2a)
File by Fax (4.03.5a)
Board of Appeals Remanding case to the Examiner (4.03.25a)
IDS after Notice of Allowance (4.03.26a)
Certificate of Mailing (4.03.29a)
Prior Art under 102(d) (4.03.3p)
Interference and Reexamination (4.03.12p)
35 USC101 (4.03.19p)
Interviews (4.03.20p)
Petition to make Special (4.03.21p)
Public Use (4-03-36p)
35 USC 102(d) (10.03.8a) variation
Smith / DRAM (10.03.9a) (exactly)
Small Entity Fee (10.03.13)
National Stage by Fax (10.03.15p)
Anticipated under 102(e) (10.03.17p)
Correcting the Name of the Inventor (10.03.18p)
Parking Meter (10.03.28p) (exactly)
Issue fee transmittal form – XYZ Company (10.03.38p/4.03.11p)
Q4) Submitting Tables on CD-ROM (slight variation – MAY was NOT a choice)
Q12) 1.131 and 1.132 Affidavits
Q13) International Search Reports – PCT
Q14) Costa Rica and Sweeden – PCT
Q19) Mexican Nationals – PCT
Q21) Trade Secret Question
Q22) Germany – PCT / Patent Term
Q24) Japanese Patent
Q29) Death of inventor before application is filed
Q31) Chemical Claim
Q33) Indefinate Claim USing ‘High’
Q37) Terminal Disclaimer
Q41) Documents Requiring Signatures
Q63) TP Submissions
Q64) Restriction
Potter – Both variation
Tommie and Jo exactly
Moondust in pencil exactly
Depression Drug and obviousness
Chemical disclosure and 2 112 rejections (enablement and written desrip.) do you maintain both, neither or just one
Hi all (It’s bfusion).
A few of you asked what my background was/is:
I have a PhD (molecular biophysics), but had NO background in law.
Frankly, the MPEP scared the dickens out of me, and just the fact of starting to study seemed like an overwhelming task. The first question, WHERE DO YOU START?!!!
I’m working on putting together some materials / study guidelines that I used, because I found the whole process of studying to be SO confusing, and I myself wasted a good bit of time just trying to organize myself.
That being said, I probably “studied” for about 150 hours. Mind you, this includes surfing the net trying to find information, organizing information (And making study materials, etc). But, I think that time could be cut down EASILY, and still be able to pass the exam.
I’ll keep you all posted on the new materials.
For now, I’ll keep trying to help as much as I can!
~Bfusion
If something is due on July 3 Monday, will it be accepted Wednesday July 5 without incurring late fees or being abandoned?
That was one of my exam questions today — I said it is abandoned, since 6 months hit July 3, which is Monday, and the application was not submitted to the Office. I passed.
Hi,
Can any one please confirm how Mpep is provided during exam. Is it individual chapter pdf files or a complete one pdf file of MPEP . As I have each chapter of mpep pdf file and was wondering how to search using each pdf files. It will be really helpful if people who appeared can provide the answer asap.
many thanks
Hi barexam,
The MPEP on the test is provided in a drop down menu, where you can select individual chapters (listed by number and title), as well as all the supplemental info / ammendments, appendixes, and index.
It’s actually easier (was for me) on the exam to search for answers, than it was using adobe reader on my own computer.
you will not be able to have both the exam and the mpep up at the same time, but when you switch back to the test from the mpep and back again you come back to the same place.
you also must use the arrow to advance the search from one occurance of the word to the next.
Hi Byfusion,
Drop down menu would include each individual chapter. So if i am searching for something and not so sure which chapter it may belong . How can one make sure for searching correct answer. Is it something within dropdown menu one can enter respective keyword and do AltF for search within whole Mpep document in one go and see the best answer.Please reply. I just wanted to make sure i practice well enough to pass the exam. And it very urgent and important. Thanks in advance.
Hi all,
Please take a look at the question below and let me know what you think the correct answer is.
You are prosecuting a U.S. patent application in the USPTO on behalf of your client Hans. The U.S. application was filed on August 11, 1993. The U.S. application corresponds to a German application Hans filed in the German Patent Office on August 10, 1992. In addition, Hans also filed a corresponding application in France on September 2, 1992, and in Japan on September 18, 1992. The examiner rejected all of the claims in the U.S. application under 35 USC §102(a) as being anticipated by a U.S. patent to Muller which discloses, but does not claim, Hans’ claimed invention. The patent to Muller was granted on June 22, 1993, and is based on an application filed in the PTO on September 2, 1992. Which foreign application or applications, if any, can be used to remove the Muller patent as a reference if a claim for priority is made by Hans?
A. German application.
B. German and French applications.
C. French application.
D. French and Japanese applications.
E. None of the above.
I thought the correct answer was D because the question is only asking about how to overcome the 102(a) reference. Based on this, I thought the French or Japanese application could be used to overcome the 102(a) rejection. However, the exam prep course I am using has the correct answer as E. Any ideas?
Thanks in advance.
I think it has to do with the NAFTA date (12/08/1993) and WTO date (01/01/1996) for activity outside the US when relying on a date of invention to swear back to. The French and Japanese applications do not meet the requirements for the WTO Date. Therefore, both dates cannot be used.
I think this has to do with the requirement that the priority application must be the first application disclosing the invention. The German priority clearly cannot be validly claimed because the U.S. application was filed at 12 months + 1 day, that is, one day too late. The other applications cannot be the basis for a valid priority claim because none of them was the first application.
I agree with Martin.
Please refer to Article 4 of Paris Convention.
C. –
(1) The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks.
(2) These periods shall start from the date of filing of the first application; the day of filing shall not be included in the period.
(3) If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day.
(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union. shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.
Just received my preliminary pass this afternoon. I had a few repeats, but not too many of the obvious/easy ones. My advice: review the mpep topic headings, do not panic when you see questions you have never seen, take a breath, use common sense to eliminate answers, and rely heavily on the “find” function. Search for strings of phrases in the answers or non-common words and trust yourself to figure it out as you go.
Congrats Control F. Do you recall any of the un-repeated questions? How did you prepare for the exam? Sometimes I think the ones who passed the exam, maybe it’s bc they did the repeated questions before the exam, and luckily, they also got most of the repeats through the exam… that’s why some people passed. But for the ones did not get so many repeats during the exam, they failed…
A question on Repeated question 2002 April AM #32, Johnnie and Tile.
I don’t understand what answer (E) is talking about…
(E) The floor tile having the coating material affixed to the outer surface of the tile, an article of manufacture, would not be patentable as of January 1, 2002 inasmuch as the article was in public use on the supermarket floor for one year.
What is “an article of manufacture”?
If this answer is talking about Jonnie can not file a patent bc she had public use more than 1 year (on 12/31/00), and now is 1/1/2002. – then (E) is also the correct answer. Please help.
An article of manufacture is really just any item made. They were using language from 101 “article of manufacture.” E may not have been the right choice because NOT ALL public use is considered public use. For example simply testing the product (as here i believe) if done in a limited way and with good reason may not be public use.
Prelim pass today, 5/17/2012 – Now to pay it forward:
Repeats:
Tommie and Jo(4.00.23a/4.00.24a)
Make a Patent Application Special (4.00.36a) (variant)
Reexamination (4.00.47a)
Affidavits (10.01.46p) (close variant)
Signing Inventors (4.02.44a)
Non-Signing Inventor (10.02.1a) (variant)
Omitted Items (10.02.34a) (variant)
Dead Inventors (10.02.30a) (variant)
Japan/nonpublication request/45 days (10.03.44a/4.03.2a)
Potter (4.03.12a) (both Potter questions)
Board Decisions (4.03.37a) (major variant but same concept)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
147 Claim Counting (10.03.50a/4.03.28p)
National Stage by Fax (10.03.15p)
Design Patent in Country X (10.03.27p)
Parking Meter (10.03.28p)
Toy plane with Foil Wings (10.03.46p)
Q10) Suspended Practitioner
Q14) Costa Rica and Sweeden – PCT
Q20) Information requested from USPTO
Q21) Trade Secret Question
Q23) Broom
Q25) Electric Fan
Q31) Chemical Claim – except it was about depression not headaches
Q38) Piecemeal
New questions from other posts (see BFusion’s Excel spreadsheet, tab 4)
French Patent – 102(d) only
Schmidt – no translatoin needed for perfecting priority
AIA question: Old man in ER, idea for medical dispense. Wants USPTO to review <12 months.
Indian Patent Agent filing out US patent app. (it's unlawaful….export regulation…foreging filing liscence needed.
Someone in india wrote US patt app & sent to US. Firm submits, notice allowance recied. Does indian person have duty to disclose material reference? Answer:? Yes, because she drafted the app
Shoe polish is found to help grow hair. How do you patent? Claim the METHOD of growing hair
Japanese person files PCT app in US, deignating only japan, and app is in japaneese: Transmit to IB once fee submitted
When restriction is proper: answer-poorly worded answer related to "double-patenting"
A Claim limitation will NOT be presumed to invoke 35 USC 112 6th paragraph? – (answer D…search MPEP 2181
KSR: Obvious to try requirements are the following EXCEPT: KSR supreme court said TSM are useful, but not required
Which of the following most correct to claim domestic priority: 1st sentence of Spec OR Ads
When can IDS be considered appropriate submission with RCE: AFTER ALLOWANCE
Certificate of Correction prior to Reissue App- no marks in Reissue App
Is patent office ever able to file, sua sponte, an RCE (if applicant states he authorizes payment of any fee to have considered an IDS that was filed after issue fee was paid)? NO
-Is a requester allowed to file a second request for reexam if based on different SNQP? I answered yes.
-When examining a continuation, does an examiner have to cite all the references from the parent and make them of record in the continuation? YES
You mentioned Dead Inventors (10.02.30a) (variant)
The USPTO answer for 10.02.30a is All answers. So can you give us a hint as to how they changed the question?
Also, some other stuff I saw:
Examiner finally rejects independent claim 1, object to dependent claim 2, and allows independent claim 3. Applicant appeals claim 1 and Board affirms rejection.
Result? – Examiner allows ONLY claim 3 (claim 2 is now rejected as well).
Nonsigning inventor question:
This was different than the other questions, it asked what are the nonsigning inventor’s rights? Nonsigning inventor was not entitled to an inter partes examination or a hearing, but if he believes he should have been the sole inventor he can hire a practitioner and file his own app and interference.
Question about polyester material. Applicant claims material that is 25-60% polyester. Examiner rejects because anticipated by reference with 25% polyester. Applicant amends claim to “at least 35% polyester.” Examiner issues non-final rejection based on 112 lack of written description (material more than 60% was not described in app). Applicant amends to material that is 35%-60% polyester. What should examiner do? – I said remove both rejections.
Know that design patents can’t have RCE’s.
Know the way that 103(c) is used when a 103(a) rejection is made in light of a 102(e) reference, but 103(c) is NOT available in a 102(e) rejection. These are the potter questions, but it came up a lot.
There was one question that troubled me about designs. It asked how to stop a design from becoming abandoned after final rejection. There were no answers I liked
My method:
I only studied this site (no prep courses). REALLY go through BFusion’s excel sheet and also do Mambo 5’s tests. Look up the reasoning behind the answers. If you have time, study PCT and Appeal sections, because they seem to be tested heavier on the actual test than this site shows (although that may be subjective).
I will post more if it comes to me, good luck everyone!
Do you still have BFusion’s old spreadsheet? Could you add it to the Gmail account or somewhere else so we can download it again?
Hi, Keener. Did Bfusion say why he had to remove the spreadsheet from the gmail account?
Not much detail. Maybe something about making it so people couldn’t change it.
Hi all (bfusion here),
I can’t give specifics, but I had to take it down due to the ballpark reasons of legal issues and trying to make it unchangeable for others (admin protected). Long and short…it’s going to take a little more time before I can get it up.
BEST advice I can give. KNOW the 2002 and 2003 exams well. In and out. Not just the answers, but the hows and whys of the question. Study how questions are asked, phrasing, etc.
ALSO: my 2 cents worth. It seems like some of the “new new new” exam questions, or even ones people have been posting as questions they can remember seeing on their exams, are indeed EXACT or well, close variants of old exam questions (even going back to 2000, 1999 exams).
I don’t have a photographic memory, but with much cranial pounding, can tend to lock away questions and fact patterns….so when I see these posts, (or, for instance, on my exam), I was able to say “I know I saw that question on an old USPTO exam” or say “because I knew that fact pattern from an old exam, it’s helping me answer this question.”
This website is awesome! I passed the exam today and am really thankful that I went through all the questions on this website.
Got a question on the new expedited track I, make sure to know it must not exceed 4 independent claims and 30 total claims.
Also know the new 103 requirement, so read the new Bilsky guidance.
Congrats Miss A!
Does anyone know if the questions over old material that is no longer valid law are still in the question bank? I know that the new stuff is being tested, but I was wondering if they are still testing over interferences and topics that have now been preempted?
Thanks.
Hi Lauren,
As far as I can remember (on my exam), they didn’t have any “trick” questions trying to trip you up where you’d be tempted to answer based on “old” rules.
I also didn’t encounter any questions (say from 1999 exams) that according to new regulations, would no longer be valid.
Hope that helps.
I would be careful about relying on any old exam questions that include a definitive TSM finding as a requirement for 103 rejection. On today’s exam, a specific TSM finding requirement was included as an incorrect response (in my opinion).
I also had an appeals procedure question that was clearly AIA related and included old appeal question elements in both the question set-up and the response choices. I examined the question and rejected it under 112 p2.
Also had a 2003 question verbatim which had both A and D as acceptable answers in 2003. If this is not a trick question, I don’t know what is. Seems clearly designed to waste the time of the test taker and erode confidence by a Sophie’s Choice. Unlike a typical real-life experience with the PTO. 😉
I had a question about an old man inventing a blood pressure device while in a hospital, and asking for results within a year from a practitioner. This one is easy to spot as the dates of the invention conception and other events from December 2011 into 2012 . Although I have never seen any prior exam questions related to the Accelerated Examination program which started in 2006(?), AE was clearly one of the potential choices, as were other Petition to make Special options for the inventor. Review the reference documents from Mambo’s library on AIA. And be happy when you see KSR questions. These are a gift. You don’t need to know the KSR minutiae, just the basics: TSM is not a requirement, and what are the 7 KSR factors. Graham analysis + 6 more.
I Agree with Claiming…
Specifically the comment
“I would be careful about relying on any old exam questions that include a definitive TSM finding as a requirement for 103 rejection. On today’s exam, a specific TSM finding requirement was included as an incorrect response (in my opinion).”
I think I remember a question similar to this as well. In my opinion, the questions on the exam pertaining to TSM / Grahms were pretty “obvious” in that, the call of the question or the answer mentioned TSM or Grahm (or gave examples of them)…which should be a BIG CLUE you are going to need to take into consideration the new regulations.
I recall more details on the KSR questions:
1) (Paraphrasing) Which of the following is NOT a rationale for determining obviousness:
[Pick 4 items from this list. My guess is the the exam mixes up which of the 7 are included or grouped as options. Answer on my version was (E) all of them, (unless a phony rationale is included).
[Text was of course verbatim to the MPEP and supplement]
2141 III — (A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art
KSR question 2: Easily overlooked is how KSR slightly modified the guidelines for examiner’s search for prior art. Know this quote, it was an answer on yesterday’s test:
2141 (II)(A)(2) “as noted by the Court
in KSR, “[w]hen a work is available in one field of
endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or
a different one”,”
KSR question 3: Regarding the examiner’s determination of a person or ordinary skill in a 103 analysis, pieces of this KSR language were among the question responses: 2141(II)(B) “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton….”KSR…[I]n many
cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a
puzzle.”Id. …Office personnel may also take into
account “the inferences and creative steps that a person of ordinary skill in the art would employ.”
Hey gang,
I never posted on this site before but have found some comments on this site quite useful. I passed the exam yesterday first try and now want to sell my PLI material. I have the 2011 version including notes, DVDs, and audio lectures. I paid $565 for the package which was brand new at the time and I have kept the materials in pristine condition. If anybody is interested in purchasing the used 2011 PLI package please email me at mcmullendc19@gmail.com. Thanks and good luck to everyone.
Dave
The PLI lectures from John White are fantastic, but do not be discouraged by him. He recommends an insane amount of study time outside of the course, including reading 2100 THREE times. He is a better instructor than he gives himself credit for. I reviewed several of his key lectures (appeal/re-issue/re-exam) with a day before taking the exam and he was dead on regarding topics that the 2003 exams did not cover. Kudos to Prof. White! Reading 2100 3 times, however….YIKES!
Hi Tom/byfusion, Can you share byfusion’s excel sheet you are referring above? This will be a great help. Thanks
I don’t mind emailing the spreadsheet to anyone, but I feel like it’s not mine to share. If Bfusion has a reason to take it down, I don’t want to get him in trouble… He says he wants to make it admin protected, but maybe it would be easier just to post screenshots onto imgur or some such solution.
Took the exam today and passed. Woo-hoo.
Many things to pass onto this board, which I should have studied much more than I did.
Many KSR and AIA questions are appearing. KSR specific >= 4, AIA >=4
I recall at the moment:
KSR:
1: Which of these PTO/MPEP inquiries are required elements for a complete 103 analysis and rejection:
I. Determination of PHOSIT….
IV: A specific finding of a TSM reference.
KSR:
Q: [ Look up the 7 KSR factors in supplement ]
AIA:
Old man conceives of BP device in hospital, wants patent resolution in under a year. Practitioner has no staff and cannot respond to office actions in under 6 weeks.
A) Prioritized exam (office over 10,000 PE app limit)
D) Prioritized exam (500 PE apps filed)
Know that prioritized exam does not have the 30 day office action response requirement that an AE does.
AIA: new appeals rules
Very complex fact pattern that had to be an experimental question.
1200 Appeals: New grounds for rejection by board: 2!!!! questions. WTF!
MPEP 1200 and 1400 — Your friends.
Best advice I have to offer: TAKE the exam NOW! Do not waste time guessing what you need to know. Failure will be the most valuable and least expensive study course available to you.
I agree, TAKE exam NOW!!
I got about 4 or 5 design patent questions
AIA: Same as above 1
KSR, Bilski about 4
No 102(e)date calculations
Know 103(c) when it can be applied
lots of reexam and appeals
PCT
102(b)
I remember this one specifically:
Patent spec describes 25-60% something and preferrably 35-60% or something like that. Claim calls for comprising 25-60%
Patent A disclosed 25% of the thing so rejected under 102(b)
Amendment to say comprising at least 35%
Rejection under 112 and 102
Amendment to comprising 35-60%
what should examiner do..
A) remove both
B)Remove 102 but keep 112
C)-D) I don’t remember…
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)
Q19) Mexican Nationals – PCT
Q20) Information requested from USPTO
Q21) Trade Secret Question
Q22) Germany – PCT / Patent Term
Q56) Restriction Requirement / Continuation Application
Q57) 102(a): Need to file foreign language translation
Thank you everyone for posting your repeats. Great site!
I can’t really recall the other ones I am just glad I am done!!
No more studying who, who!!
New supplemental material that was tested:
Inter partes reexamination – Question asked how someone who wants to participate in a reexamination can apply for it. Know the new reasonable likelihood standard for inter partes reexamination, when it is effective, and when it phases out.
Bilski – I think the question was about a claim for a method of advertising. The answer was straightforward and required you to know the reasons that a method is or is not patentable.
(I took the exam a few weeks ago so don’t remember details)KSR – Had some questions but forgot the details
(I took the exam a few weeks ago so don’t remember details)
Is there a link to other materials I can read on Bilski, KSR, or the APA that people are saying that shows up on the exam. I have an older copy of the PLI study guide. Thank you.
Here’s the list of things you will have (and need to be familiar with) on the exam.
http://www.uspto.gov/ip/boards/oed/aia_regexamsourcematerial.jsp
I have read that there are significant changes coming for the test due to full implementation fo the AIA. Been looking around for a definitive answer on this (only ones found are from prep companies), when would be the best time to take it before? I hear September 16 mentioned so I figure I will have to register candidacy by mid June?
Took/passed test yesterday. Definitely study the 2002-2003 questions. All the usual suspects appeared–moondust, German PCT, count the # of claims (147), etc.
Also, if you are searching the MPEP on test day, don’t hit “Enter” instead of “find again.” I would hit “enter” out of habit and it gave me a run-time error and shut down the program. Twice. haha. Perhaps a nefarious person could break the program to buy more time, but you shouldn’t need to if you study.
Good luck everyone!
Congrats, bnukem!
Would you please elaborate on the question about first search by Examiner?
I’m afraid I don’t really recall. I’ll look/think about it, though!
Congrats bnukem!
Would you mind listing what materials you study in preparation for the test and how long you spent preparing?
Thanks!
-H
I used Pat Bar. I was working full time, so ~3-4 months of nights and weekends. I don’t think i spent as much time on this as I did on the real bar, but the level of detail for the patent bar was probably more intimidating.
HELP! Can you word-search in the test software? Can you word search the tables of contents on the test?
SOS. Taking the test in TWO DAYS!!!
Hi, Patentlyawsome. I’ve not taken the test yet but the test software should an index. All you have to do is go to the index, click find, enter the word(s), and that will direct you to the section. Good luck!
thank you! I know you can search when you select a section but I wasn’t sure about the indexes FOR the sections.
got my prelim pass on 6/2. I studied for approx. 3 weeks for 3-4 hours a day on avg. I ONLY studied materials from this website – so big thanks to all the contributors here. I had taken two substantive patent courses prior to studying, so I had a fairly strong background in 101, 102, 103 and 112 issues
i will try to look through the above questions and identify the repeats when I have time but for now,
i saw 7-8 questions on 1.131 and 1.132 declarations as to who can make them and when they’re appropriate (e.g., to overcome a 102(a) rejection)
4-5 on obviousness, specifically asking about KSR
4-5 on PCT
nothing tested on AIA (i.e., nothing where app. was filed after Sept. 26, 2011)
overall, I saw 15-20 repeats that were either exactly the same or very close variants that I was able to answer w/out looking up in the MPEP
I saw another 15-20 variants that I was able to answer quickly based on having studied the repeat questions here.
there were probably 60 questions that I had never seen, 35-40 of which I was able to look up in the MPEP w/in 4-5 minutes and approximately 20 of which I was totally clueless on and had to spend in excess of 5 minutes trying to find the answer
Anybody out there who did not pass on his or her first attempt that did pass on a subsequent attempt? If so, what advice would you give to someone who just failed? I put a great deal of time into studying and am not sure what I can do differently the second time around. Any and all suggestions would be greatly appreciated. Thanks!
I studied from an older version (circa 2010) of patent bar review course materials. Although I did read the supplements posted on the PTO website prior to taking the exam, I have a feeling that KSR, Bilski, and AIA may have done me in. Any additional advice on how to approach the new content on the upcoming exams?
Did you practice the questions on here? Practice the old exam questions in particular 2002 and 2003? Did you read or skim any of the chapters that some of the people did read/skim i.e. 700, 1800, 2100?
Yes, sadly I went through the old exams many times. I do think I needed to do a better job of reading the MPEP, especially 1200, 1400, 1800, and 2200. I’m just at a loss as to what more I can do on the next attempt. I think it may be too early to tell what types of questions will be on AIA; we may have to read the materials and do the best we can.
If you don’t mid me asking, how close were you to passing? My friend took the exam a year ago and failed by 3 questions and passed on the second try.
I did not pass the test yesterday. Have you re-taken the exam? If so, how many questions were repeats from the test you just took?
Is there a document of some sort that I can read up on the AIA that has been published by the PTO? I have the other stuff from the PTO website that someone posted a link to and thanks to that person for posting it too.
Go to the USPTO.gov website and search for this document:
“America Invents Act: Effective Dates”
Key potentially testable matter for the next few months are:
1) Revision of Standard for Granting an Inter Partes Reexamination Request
2) Prioritized examination
You can find more details on all the AIA changes at: uspto.gov/aia_implementation/patents.jsp
Thanks Out of Round for your prompt reply.
I have both of those documents. Are exam questions coming from other areas of the AIA besides those two documents?
No Problem.
At the PLI course I attended in March, John White those were the two near-term AIA-testable areas.
Should know other PTO new material besides AIA such as:
“Rules of Practice Before the BPAI in Ex Parte Appeals.”
“Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C 112, and Related issues in Patent Applications.” (This is the next beyond the July 2010 Bilski Interim Guidance document).
and, of course, the latest (2010) “KSR Guidelines Update.” (obviousness determination)
Good luck!
I got my prelim pass on 6/9 (Yeah, no more studying!). I owe big thanks to all the contributors here. I feel that this site helped me the most. I would like to pay back.
I have been studying since last October because I am a medicinal chemist and had hardly any IP experience. I did use PLI material to educate myself about the basics of patent law, especially 101, 102, 103 and 112 issues. In the past two months, I usually study 3-4 hours a day on avg. and 6-8 hours on weekends, focusing on reading this site and do old exams. Make sure that you know 2003 and 2002 questions cold.
Being honey, I do remember much because I had a long day (near 12 hours) due to Prometric center’s technical difficulties. I got there little after 7:30am and was not seated until 12:25pm! I was exhausted by the time I finished the test at 7:17pm. I will try to look through the above questions and identify the repeats when I have time but for now,
Overall, I didn’t see many repeats. About 10-15 that were either exactly the same or very close variants that I was able to answer w/out looking up in the MPEP.
For those who are worried about the AIA testable material, I saw Nothing tested on AIA. Bilski (2-3) and KSR (6-7) material were in the test pool.
I saw lot of questions on 1.131 and 1.132 declarations as to who can make them and when they’re appropriate (e.g., to overcome a 102(a) rejection) and when not (e.g., to overcome a 102(b) rejection).
Appeal is tested heavily: new ground rejection by the Board, court decision not binding..
4-5 on PCT: IA filing in Spanish at US/RO, Germany
I saw another 15-20 variants that I was able to answer quickly based on having studied the repeat questions here.
There was lot of questions that I had never seen before. However, most of the Qs I was able to look up in the MPEP w/in 3-4 minutes and approximately 12-14 of which I was totally clueless and had to spend in excess of 5 minutes trying to find the answer. Make sure you know the concepts so that you can eliminate what you think most likely wrong. I had hardly anytime left by the time I finish everything.
I feel that the test is manageably challenging. If I can do it you CAN, too.
Good luck to all of you who are planning to take the test
YZ
Hi, YZ, :
It’s so interesting that I am a medicinal chemist and I also passed on 06/09. My experience at the prometric center was not that bad, but I did have problem with the mouse and I lost some time due to the freeze,
I don’t’ know why I can’t leave a comment directly. Anyway, here is my contribution.
A lot of 102 and 103a rejections. Several questions about 131 affidavit.
There are quite a few questions from the reference material. 4-5 questions about patentability and a few about the KSR. Also a couple from 112 PowerPoint instructions: A lot of appeal questions based on the new ground rejection from examiner and the board. I am surprised that I got two similar questions both in the morning and afternoon. It’s about the reply brief after the examiner answer which has new ground of rejection. I couldn’t remember the details.
In the morning, I got several questions about restriction requirement. One question is about the timing of restriction requirement. Which one is in accordance except. Answer: I chose the one after final rejection. There is also the question about second restriction requirement in the continuation and the answer is something there is no rejection, can’t appeal, but to petition.
I got more questions about the application of non-provisional/provisional. Provisional application filed missing drawing/figure, what can you do?. I chose the answer contained 1.53e.
Non-provisional filed without a claim, what can you do?I chose the one to convert to PA and with the fee. The confusing wrong answer is to convert to PA and ask refund.
Not a lot PCT questions: one is the corporation as applicant and filed in Spanish. There are three answers stating that USPTO not competent as RO. 1) due to the corporation is not a citizen/national 2) due to spanish not in English. 3) both which I chose.
Another PCT question is that it indicates the applicant/inventor is US citizen but forgot to include the name and at least one claim. The claim and the inventor name were submitted separately. The claim was earlier than the inventor name. Which date is the filing date of PCT. 1) the receiving date of claim or the date of inventor name. I chose the later one (Not sure).
PCT failed to enter the national stage, what can you do? I chose to the one to revive the PCT. I was not sure about the other wrong answer (Give up in US forever and file in other country with 31 month requirement.)
Two questions about the assignee in the reissue. 1) If the record is silent about the assignee, then USPTO assumes there is one. 2) the consent of assignee is required to complete reissue application.
Two questions about one-month shortened period for reply. First one is in which circumstances will the examiner set one-month period reply. I chose the answer which contains something about traverse restriction requirement. The other one asks what’s in accordance of MPEP except, I chose 30 calendar days
Two old man questions. One is about the track one submission and the other is about the interview before first action.
One question about protest, the party of real interest need not be named.
One question about the copy of signature: credit card. The other two statements are about declaration and something els.
One question about 102f: public knowledge does not to be in this country.
Repeat::
Tommi and Joe
Tribell
lipgloss
Berry and Forman
High is not indefinite
102d: ‘patented” doesn’t need publication
102g as base for ex parte rejection
Federal court decision binding for office( not invalid decision is not binding)
Public inspection ( one is about assignment records and one is about oral request by whom)
Dead inventor(partly assigned to the attorney)
Signing inventor
Express mail label
Copper substate
Claim counting: 8 for PLI material
Trade secret
Electric fan
2 month rule ( but the advisory action is before the SSP, so expiration is the SSP)
Small entity fee refund: 3 month
Thanks for sharing Lynn.
The PCT Spanish application: Not a lot PCT questions: one is the corporation as applicant and filed in Spanish. There are three answers stating that USPTO not competent as RO. 1) due to the corporation is not a citizen/national 2) due to spanish not in English. 3) both which I chose.
I assume that corporation is a US corp, correct? If it is not a US Corp, USPTO probably would return the application. Bc the corp is a US Corp, that’s why USPTO forwarded the app to IB. So the answer should be 2) only, due to Spanish not English. Please correct me, if I am wrong.
I had many of the ones lynn did on 6-18. I got one about filing a provisional with a claim and a description. Then a year later wanting to claim benefit of the provisional. What to do? (I was confused because provisionals don’t have claims I thought) Some of the answers had to do with filing copies of the provisional, adding more claims, and paying fees to make it a non-provisional (or something).
USPTO as a receiving office if the applicant(s) are a mix of nationals to US and non nationals plus filing an application in Spanish. Is the PTO a receiving office and why?
USPTO as a “competent” receiving office when applicant is national and files application in English.
About 5 new ground of rejection questions in various combinations. One was confusing: Examiner rejects 1-10. Board affirms and introduces new ground of rejection on 1-10. Appellant reopens prosecution and files amendments that are strong enough to overcome new ground of rejection AND the affirmed decision. What happens next?
a. examiner allows application
b. examiner sends application back to board to review all decisions
c. examiner rejects (?)
d. ?
e?
Board affirms examiners rejection on claims and introduces new ground of rejection. Appellant reopens prosecution before examiner. Examiner affirms the board’s rejection (or rejects also as to the new ground). appellant can do all of the following except?
a. file second appeal as to new ground
b. file appeal as to all rejections
c. file continuation?
Lots of oath/declaration questions.
Joint inventors each sign separate declarations, but they are not dated nor do they include all the invtors names on them. (john signs he is the inventor but doesn’t date, sally signs she is the inventor but doesn’t date, and smith signs he is the inventor but doesn’t date) on three separate documents. What will pto do?
a. accept as is
b. reject because all inventors must acknowledge entire inventive entity on the oath/declaration *my pick
c. reject because it’s not dated
d. reject becuase it’s not on one document
e. accept if the inventors date the document *something else that’s wrong
In which case will examiner give a 1 month extension for an incomplete response?
This had to do with giving a bona fide response but it didn’t actually say bona fide. One of the answers was “when appellant filed timely response answering everything except that the amendment didn’t comply with 1.121” that’s what I chose. The others were either really wrong or borderline.
When does “means for” and “step for” invoke the 112 para. 6?
know the 3 pronged test noted in MPEP.
Examiner will issue a “reason’s for allowance” for all of the following except:
a. when applicant argued case through appeal rebuttals
b. when examiner believes there is more cogent argument available
c. When claims are so similar to prior art
d. When method claims in which article limitations impart patentability.
e. when both an affidavit under 1.131 and (something) with 1.33 has been utilized *pretty sure this is the wrong one
Applicant wants to submit biological substance. When/why would someone do this?
I. something ridiculous
II.fulfill enablement
III. fulfill the spec
IV. biological substances are not supposed to prove some facts??
Joint inventors filed an application. They included an oath but didn’t put the address for inventor B. All of the following are ways to fix except: …
a. file continuation
b. -e were various combinations of 1.48 rules
3rd party Smith files his first exparte reexam against Jones. What is true:
I. Jones can make a statement within 2 months after …something
II. Another person can file a reexam against Jones during this pending reexam. If he files after ( ?) amount of time he has to have Jones’s consent.
III. not sure?
When can you use 1.131? and when can you NOT use 1.131?
Applicant has an application she files in Germany in mm-dd-99. Then she files a PCT. Then she enters national stage in US by the 30th month and complies with all requirements to do so. Patent issues in the US. But she realized she did not claim priority in the patent. What can she do?
a. File reissue…..blah blah
b. File reissue blah blah…
c. File a cert of correction blah blah…
d. File cert copy of the IA, certificate of correction, fee, statement under 1.55 that delay to claim priority is unintentional * my pick
e. File cert copy of IA, cert of correction, fee, statement under 1.55, and translation
The disclosure must contain:
a. disclosure that enables PHOSITA (basically fulfills enablement)
b. if chemical compound then it’s chemical formula
c. if a chemical claim, then ithe disclosure must contain……..?
d and e I don’t remember
Access to assignments: like 2-3 questions on varoius things you can/cannot have access to depending on who you are.
Power to inspect:
answer was: “access will be given on oral request to any applicant, patentee, or attorney or agent of record in application or patent only upon proof of identity or upon recognition based on personal acquaintance.”
Propriety of final rejections: different combinations of this I can’t remember them all.
Propriety of appeal: answer was “claims are twice rejected, it’s okay” or something like that.
Applicant initially claimed Large Entity Status when filing non-provisional application. At time of filing he qualified for small entity and now wants a refund. How /when to get a refund?
a. within 2 years
b. within 6 months
c. within 3 months of timely payment
d. ?
e?
I’m tired just thinking about all that. GOOD LUCK EVERYONE.
Wow,
Just finished my first attempt at the exam. Failed by three questions. Was really surprised by the number of E filing questions which were coming up. All of the normal suspects were heavily tested: reissue, reexam, appeals, PCT, etc. Not a lot of repeats. What was really frustrating were two repeat questions which were based off of the same fact pattern, but the questions came up at different points of the exam.
Sorry to hear that Samsam. You must studied a lot for being only 3 points away. Don’t give up and try again. I am preparing for my second try. Do you remember what kind of E filing questions did they ask? The details of e-filing is not in MPEP, one has to use the e-filing system in order to know them… will you please give some examples of the questions? Thanks.
Hi Samsam, sorry to hear you didn’t pass the first time. Could the E filing questions have related to the new Track 1 materials? (i.e. did it have to do with prioritized examination procedures and utility applications have to be E filed whereas plan have to be filed by paper?)
Passed the exam on the first try. Thanks everyone on this website.
There are about 10 word-to-word repeats from 2002 & 2003 exams.
About 7~10 PCT questions. They are not that hard. I didn’t read MPEP 1800. Just read the repeat questions about PCT on this website. They are well covered.
Many 102, 103 questions. They are quite straight forward. Many of them are variations from 2002 & 2003 exams.
So do the old exams several times until you understand not only the correct answer but also why the wrong answers are wrong.
Good luck!
when a second action can be made final: http://www.uspto.gov/web/offices/pac/dapp/opla/documents/2ndactionfinal.pdf
Is this not supposed to be on MPEP since this memo was printed in 2007? Which question are you referring to?
I had at least 2 questions on the AM and PM section that asked about when it was appropriate for rejections to be made final.
Hey guys,
I’ve been keeping track of the posts as well as the new questions and help on here. It has been helpful in preparing for the Exam. I hope to pass. I am taking the exam in a few days. Here’s to passing. Once I take it, I will post what I remember on here.
You will pass if you have studied this site. Looking forward to your good news!
Got prelim pass yesterday 6/29/12. The morning session was incredibly difficult, with maybe 3-5 repeats. I had a ton of difficulty trying to find answers in the MPEP, and went with my best guesses in many cases. During break, I thought I was surely going to fail….
The afternoon session was soooo much easier. tons of repeats. It felt like I was doing a Mambo5’s test again!!
I was happy to pass at the end of the day. No more John White! No more studying! If anybody wants to buy the PLI course let me know. I have the 2010 version.
Congrats Indi!! The morning session must have been brutal for you. I would have been discouraged for the afternoon session… glad you sustained and passed!! – Do you remember any new unrepeated questions? My test is next week, only if you remember any
Thanks Potential! Good luck for next week! I am sure you will do well.
I don’t remember the details of most of the questions….
There was a question on Prior art search. I was able to find the answer in the first few pages of 900.
I had a question on Bilski about an abstract claim that has been rejected. what to do to overcome the rejection? I chose using a computer (machine) to do something….
I think the lesson to learn from my experience is that even if the morning session does not go well, don’t get nervous. Approach the afternoon session calmly and confidently.
As promised I am posting my repeats. Just to reiterate what I said in a different post and to add a bit more meat onto the post.
This is what I did for my studying for the patent bar and what helped me the most passing the exam. I owned an older version of the PLI study material and I was worried that it might be out-dated (2006 version), but it was more than sufficient since the PLI study material gave me the foundation for understanding the material in the Patent Bar. I used this website for practice problems and the invaluable information people were providing for each thread. There are a lot of people on here who KNOW what they are talking about. I took John White’s advice and read some chapters in the MPEP (600, 700, 1800, and 2100). I read some of them two times and other three times. I also read some of the other chapters (1200 and 2200). Like John White said these chapters aren’t structured for reading, but what I got from them was just a good idea where things were so I was able to find stuff efficiently and knew which chapters to go to during the exam. Also, doing practice problems from this website and the old exams and looking up the answers helped out a lot too. I did the 2001, 2002, and 2003 exams along with the Mambo5 exams. The 2001-2003 exams I was scoring mid 80-mid 90 percent. The Mambo5 questions were all memorized so always 100%.
1. small entity status
2. trade secret question
3. electric fan
3. tommie and jo
4. broom
5. means plus function door handle
6. investigating deceptive intent
7. 2 month rule, but in this question the examiner gets the advisory action back before the SSP ends, so when does the free period end? I selected the SSP because they get the first 3 months free and the 2 month rule only helps if the advisory action goes beyond 3 month disregarding if an applicant files a notice of appeal which messes up everything if filed too early.
8. piecemeal
9. i had the two versions of Potter which can be found in the old exams
10. claim counting that answer is 147.
11. roger rocket
12. non-signing inventor
13. non-publication/45 days
14. PCT filed application and fee by fax (cannot do this)
15. I had one where the patent attorney was on his/her deadline day for a 102 bar date and filed a non-provisional with everything but a claim. The question asked if he would be or would not be awarded a filing date with some various answers. I selected that if the attorney converted the non-provisional application to a provisional application before the 1 year deadline passed from the filing of the non-provisional because the provisional does not require any claims.
16. lancer toothbrush
17. i got another one where the applicant discovered a prior art and the patent agent wanted to submit it but the issue fee has been paid and the applicant does not want to spend any money so he cannot file a RCE or even withdraw the patent from issue. So, what happens is the patent agent submits the prior art via IDS, but the PTO does not consider the new IDS, but will put it in the file.
18. toy plane with foil wings
19. i had one where independent 1 is rejected and claim 2 which depends from 1 is objected to because of it’s dependency and independent claim 3 is allowed and the board affirms the rejection of claim 1 and what does the examiner do. I picked cancel claim 1 and 2 and allow 3.
I had more but it’s early where I am and having to pull everything from memory may take a bit longer. I’ll go through the questions later and put a note if I got the question or not later on. Good luck!
Are Mambo5’s tests identical to the “repeat questions” on this website?
Yeah, I also made some of my own documents from this website to help prepare for the exam. The biggest problem in my opinion is trying to sort out all of the bad/wrong answers that people have posted. Too bad they can’t be deleted.
My fellow Patent Exam reviewers,
I took it today and I got my prelim pass!! No more studying. I committed to approximately 180-200 hours of studying. I will go more in depth after I relax some (maybe tonight or maybe tomorrow) but here is a quick breakdown. There were some repeats (probably 8-10 in the morning and about 8-10 in the afternoon, couple variants…no more than 20/25 repeat). The new questions really helped!! If you have STUDIED this site, you will pass (emphasis added purposefully for extra emphasis). There was of course PCT, Appeals, 3-4 Ex Parte, Inter Parte, KSR, Biliski, etc in addition to the regular 102/103 stuff. One AIA question (Old man in ER – new accelerated exam), Spanish Phone (Keypad desing modification), French Patent, Japanese app, range of 25-60%, PCT failed to enter national stage, new ground of rejection, Two or three questions on oaths, reissue, patent access, Tommie & Jo, and new question on claim counting. Okay…that’s it for now.
I am tired. Once I have relaxed some and I will add more. I feel honored to be among you guys. I am a little in shock that I am a contributor to this site and can say I preliminarily passed. Definitely props to some big contributors to this site or those whose name I saw and immediately knew you were EXTRA reliable with your information, such as: Mambo, Bfusion, Overworkked, Jamecam, passedatlast, Miss_A, patent law, MNGirl, KillianRed, GDB, theGhostofBiliski, etc. There are of course others but these names I pretty much know by name.
That is pretty much it. The afternoon session was much easier (to me).I was finished by two hours or a little over and had time to go back to double-check somes questions I had marked. Here is to paying it forward (which I will more in depth). Good luck!!
Congratulations FL2NYPatentLaw!!
I feel encouraged. I am taking the test in 2 days, will you please kindly post the questions, especially the ones that took you some time to find the answers? Again, congrats and happy 4th of July!!
See how tired I am. I meant to say the morning session was much easier for me. The afternoon, I used up most of my time.
Hello again,
I am giving a quick recount for those who have the exam in a few days. Many of the questions were from the 68 questions…not all but I am including the ones I recall or I think should be reviewed in depth just because some questions touched on similar topics. Again, I took the exam on 7/3 and a good number came from the 68 questions.
Q5) Amending the Abstract – PCT
Q6) Obviousness
Q7) Claiming, Deleting and Reclaiming Benefit Claim – Variant
Q8) Missing Parts – PCT – Variant
Q9) Correcting PCT Applications
Q11) Digital Media for Gene Sequence – Biotechnology
Q12) 1.131 and 1.132 Affidavits
Q13) International Search Reports – PCT
Q14) Costa Rica and Sweden – PCT
Q15) Spanish Phone – Design
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 – Variant
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 – Variant
Q33) Indefinite Claim Using ‘High’
Q34) Investigating Deceptive Intent
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 – Variant
Q50) Appeals
Q53) Reissue/Filing Amendment
Q56) Restriction Requirement / Continuation Application
Q58) Exam Concept – Appeal -Variant
Q60) Anticipation – Variant
Q61) PCT Publication – Not
Q62) 102 and 103 Rejections
Q63) TP Submissions
Q64) Restriction
Q65) CPA
Q66) Claims
Q67) Obviousness
Q68) Hydrocyclone
New Oath Question
There was a question of what can a copy of be submitted?
A. Oath
B. Authorization to Charge Credit Card
C. Amendment
D. Combo.
E. All of the above
*I chose E. I looked it up somewhere in the MPEP that the USPTO accepts copies of all three and that is why dark ink is required.
Another question asked
All of the following can submit who can sign for an inventor if they are not available, EXCEPT?
A Registered Practicioner on behalf of his sole inventor client with no assigne or obligation to assign but the inventor can not be located after a diligent effort
*(THIS was my answer – the mpep does not allow a practicioner to file on behalf of a sole inventor if they cant be found. SEE MPEP 300 or 400).
B. Something else
C. Assignee instead sole inventor (true, so wrong answer.)
D. Something else
E. Something else
Another question was the new claim counting question which asked you to count the dependent claims.
*My answer was 8 (the correct answer). See MPEP 608.01(n) to learn how to claim count.
Took the Patent Bar today (7/5/12) for the first time and passed! No more studying! Yay!
Background:
I just graduated with my bachelors in engineering and am heading to law school to pursue Patent Law. I decided to study for and take the patent bar this summer to try and get it out of the way. My background is strictly technical.
Study Strategy:
I took one day off between my last exam and studying for the patent bar. I bought PLI off of Ebay. I’m currently working as an engineering intern, so I would study for an hour during lunch, go home and study for 2-4 hours a night after work, and 5-8 hours on the weekend. This was done for about 9 weeks. About three weeks before the exam, I started re-reading chapters 100, 200, 700, 1800, and 2100 in the PLI binder. Good stuff. I read those about 3-4 times. When I was going through, I also made flashcards. Personally, I found that this really helped me remember short facts, dates, and rules. In addition to following PLI, I did fake tests on a daily basis, created via Patware. Of course 2002-2003 exams are a staple. I happened upon this site about 2.5 weeks prior to the exam, and reviewed material here daily. I didn’t realize until I took the exam today how helpful this site was, especially when it came to the new material. The majority of new questions that people are talking about (referring to bilski, ksr, bpai), I encountered today. Honestly, it saved me. This site also helped in that the discussions people have about the material really pull everything together. I would just skim the discussions going on in the repeat questions sections. I also read the study guides for appeal, PCT, 103, and 102.
I took work off this week, and went into hardcore cramming mode 4 days before the exam. On Sunday, I discovered that I was one of the unfortunate people who was gypped when they purchased PLI off of eBay. It turns out, what was advertised as the 2012 version of PLI, was really the 2010/2011 version. BEWARE WHEN YOU BUY PLI OFF OF EBAY! Here is the article which enlightened me as to my misfortune: http://www.ipwatchdog.com/2012/05/08/buyer-beware-counterfeit-patent-bar-review-courses-on-ebay/id=24719/.
For the past 4 days, I locked myself in a room and read this site and googled everything that had to do with bilski, ksr, and bpai. I also reviewed Mambo5’s tests, 2002-2003 exams, combed over this site, and used the PLI Patware to make fake exams. I was at the point with the 2002-2003 exams where I didn’t have to even look at the question, I could tell what the correct answer was buy looking at the answer choices.
I will say, even though I didn’t purchase the correct version of PLI, I really don’t think it was that big a deal. John White’s lectures were excellent in teaching me 85% of what I needed to know. Patware was great making fake exams. I just wish I would have known that it wasn’t the most updated version.
Here are some statistics to my studying that I figured out today:
Took 85 practice tests
Answered 2500 practice questions
Created 250 notecards
Studied for 200-225 hours
I share this because it might give you an idea of what to budget for when it comes to studying. Who knows? I might have gone overboard, but I passed on my first try, so there might be a little truth
The Exam:
Prometric is sketch and super strict. No lip gloss, water, etc. into the exam room. Every time you enter the room, you have to sign in, turn your pockets inside out, and get waved down by the metal detector. One thing that I read on this site was the suggestion to bring ear plugs. I did that, and it helped immensely. When I practiced at home, it was completely silent. When you go to Prometric, there are people taking all kinds of tests, and some require a lot of typing. Personally, the sound of someone typing blew a bit of my concentration at first. I just put my earplugs in, put the Prometric ear muff things on over top, and I was good to go. The computer did freeze up on me once, but I was up and running on a different computer in no time. One thing that I didn’t really account for was how long it took the computer to search for a document. I wasn’t used to it being less than super quick, and that caused for me to modify how I was searching. Also, when you select a chapter to search in the MPEP, you have to highlight the chapter, and then press ‘Go’. Wasn’t that way in Patware and it took me a little adjusting to realize that the chapters don’t switch unless you press the button. Overall, a decent experience.
Oh, I did go the day before the exam to just figure out where Prometric was located, and I found that it helped ease the anxiety a little bit.
On the first section of the exam, there were about 15 repeat questions. There were also a handful of questions that have been discussed here that relate to ksr, bilski, etc. There was the blood pressure question, and a couple 103 ksr questions. I actually ran out of time and had to guess on 4-5 questions.
The second section was a bit weird. There were only about 5 repeats, but the other questions were easier than the first section. The majority of the questions were found verbatim in the MPEP. It was a little tedious to do all of that searching, but that’s just a testament to how important it is to know your MPEP inside and out. Essentially, figure out which chapter something is in, and search via a phrase that is pulled out of the question or answers. I found that I did a lot better in the second section.
Here are the repeat questions that I remember:
Public Use (10.03.47p)
Ex Parte Rejection (10.03.50p)
Claim Counting (10.03.50a)
NonProvisional Filing Date (10.03.1p)
Foreign Priority (4.03.22p)
Final Rejection Period for Reply (4.03.4p)
Provisional Filing Requirements (4.03.40a)
Beck – Mixture Y with melting point of 150F (10.03.11p/4.03.22a)
File by Fax (4.03.5a)
Notice of Appeal (4.03.8a)
Potter (4.03.12a)
Japan/nonpublication request/45 days (10.03.44a/4.03.2a)
File by Fax (4.03.5a)
Tommie and Jo (4.00.23a/4.00.24a)
I’m sure there were more, but my brain is mush right now.
Here are the topics that showed up on my test a lot:
103 obviousness
appeal
pct
ksr (about 5 or so)
certificate of mailing
signatures (electronic, who can sign what, etc)
reexam
reissue
1.131 and 1.132
It seemed like I was in a never ending cycle of questions that related to those topics.
Here are topics that were tested on very little, if at all:
claims (claim formats, multiple dependent, etc)
foreign priority
102a,b,c,d,e (questions were asked that had to do with these relating to 1.131, 1.132, or obviousness, but not by themselves)
That’s all that I can remember for now. I might post more as they come back to me. Thanks to everyone on this site!
Got my preliminary pass yesterday. Second try – no more studies!
I want to thank everyone who contributed to this site, it definitely helped me during the test.
What I especially want to thank here is Mambo and Bfusion.
I did Mambo’s 4 sets of test repeatedly, then Bfusion’s help was just tremendous.
Luckily I started using this site in April when Bfusion posted his Excel spreadsheet for one year comprehensive newly reported questions, old repeats, and the questions posted in Exam and Concept on this site. The Excel sheet was extremely well organized, I was impressed, and since he posted his email account and password (mypatentbarr@gmail.com, pw:usptoposita) on this site, I emailed him and asked him to coach me for the test. He kindly agreed.
Without Bfusion’s coaching, I would still have been reading MPEP paragraph by paragraph with no specific goals. I wanted to first finish reading the whole entire MPEP, then do the old exam questions etc. But Bfusion suggested a brand new concept on how to read the MPEP while preparing for this exam. He coached me all the way till the day before my test. I have to say, his Excel sheet was a killer for the test, and he also complied 100+ questions that included the newest questions posted on this site. Those 100+ questions were very organized, and he summarized each questions within a few lines and the answers in a few words.
I see people post on this site saying the normally spend 4-5 days on this site, reading the posts, figuring out what kind of new questions are being tested etc. I was the fortunate one to be able to use and study with his material.
I also used 2012 PLI material, John White’s lectures are excellent, and their newest AIA test questions (50 in total, including Track I, Appeal, Reexam etc.) are very closely aligned with the current exam. PLI’s material helped me understand the MPEP, Bfusion provided a goal oriented way on how to pass the test.
Time to pay back to this site:
Had about 30+ repeats in the morning, maybe 10 repeats in the afternoon.
Study this site, Old Exam Questions, Exam Questions and Concepts will not only give you confidence during the test, but also, it saves up your time from searching for the answers. You know the answer by looking at a few words of the question, you saved yourself time to spend on searching for other questions.
I am sharing some questions that I have never seen or took me some extra time to find the answers:
1. Potter question, exactly the same fact pattern, but it was rejected by 102(e) – NOT 103(a). So the question asks you, what can you do to overcome the rejection? I know I almost got tricked that I wanted to select the answer for a statement from the inventor stating that when the invention was made, they both of the invention belonged to the same assignee… but wait, it is not a 103 rejection, it was a 102(e) rejection!!! – don’t use 103(c) to overcome a 102(e) rejection.
2.KSR obvious to try – examiner rejected someone’s application under KSR-obvious to try, the examiner should do the following EXCEPT:
a) tell the applicant that he selected from finite numbers …
b) obvious to one of the ordinary skill in the art
c) teaching suggestion motivation
d) Clearly articulate the reason for the rejection (my choice)
e) …something aligned with obvious to try rule
3. KSR – dont remeber the fact pattern, the examiner should do Except:
a)
b)
c) the examiner should not use the Grahan but only use KSR rules (my choice)
4. Claim counting -147
5. During appeal, when the Board makes new ground of rejection, applicant can either reopen the case or seek for rehearing to ask the Board to reconsider the case. What if someone submitted an amendment and argument to reopen the prosecution before the examiner, meanwhile, also requested for a rehearing?
a)The Board will consider the case before the examiner exam the amendment
b) The Board will not consider the case until after the examiner finish examining the amendment (my choice)
c) the examiner will not consider the case until the Board finishing the rehearing
d) … something like that
6. PTA- someone filed an app in early 2000. blah blah, then filed an RCE in late 2000. Will he be qualified to get any PTA?
answer No. His app filed before 5/20/2000, does not qualify for PTA, an RCE will not bump his app to be qualified for PTA.
7. PCT- someone filed provisional app on 6/9/1999, then filed PCT 12/01/2000. then the PCT enters national stage later. when is the earliest 102e date?
6/9/1999 (the provisional fd).
8. EPAS- below which one is correct?
a) record an assignment but it fails to be recorded at USPTO, the assignment can be filed again electronically by EPAS (wrong)
b) the person inserting the coversheet has to have the same signature as ….’s signature (my choice)
c) to correct a mistake pointed out by USPTO, the resubmitting of an assignment will NOT get the original submitting date (wrong)
d) wrong
9. Examiner rejected someone’s application with a patent A in view of pat B. After the rejection, applicant requested an interview, during interview, applicant admitted that pat A and B make his application obvious.
Which is correct?
a) the rejection is proper unless applicant can provide evidence show otherwise
b) the rejection is improper
c) improper
d) improper
10. PCT- filed app in mm/dd/2000 designated US. ISR sent out report to both applicant and USPTO on 12/07/01. Applicant wants to amend the application, what should he do?
a) he must make the amendment ONLY to the description to IB before 2/7/2002.
b) he must make the amendment ONLY to the description to USPTO before 2/7/2002.
c) he must make the amendment ONLY to the claims to IB before 2/7/2002. (my choice)
d) he must make the amendment ONLY to the claims to USPTO before 2/7/2002.
11. Assignment inspection- below are correct Except?
a)
b)
c) The office will open certain parts of assignment document to public inspection. If an assignment contains two or more items, only the part that is related to the published patent will be open to public, remaining part won’t open to public (my choice)
12. Suspended practitioner- which one is correct:
a) USPTO will contact the practitioner
b) during the absence of the practitioner, all applicant must sign all the documents (my choice)
c) only one select applicant can sign for the rest
13. What is NOT proper for a restriction?
a)
b) blah blah … double patenting (my choice)
14. Inventor died after USPTO mailed Notice of Appeal. Correct answer
a) practitioner will continue the prosecution unless legal rep intervenes.
15. 66 years old guy was rushed into hospital. He invented a blood pressure device hurry to file an app. But his attorney’s legal assistant is on vacation, has to respond to any OA in 6 weeks. Which program should he choose? – Track I.
16. 1.131 affidavit, when will be used properly (4-5 questions)
17. shoe polish to grow hair – method of growing hair
18. Tradesecret examination procedure, below are correct EXCEPT:
the envelope will stay sealed on the examiner’s desk without petition to expunge.
19. How to perfect priority?
a) something wrong
b) wrong
c) certified copy + … + with a statement says the delay is unintentional (my choice)
d) certified copy + …+ translation (translation not needed)
20. Best Mode –
dont remember the choices, but this was verbatim.
The absence of a specific working example is not necessarily evidence that the best mode has not been disclosed, nor is the presence of one evidence that it has.
21. Which of the following may invoke 112/6 ?
a) ‘element for,’’
b) ‘‘‘module for,’’
c) ‘‘device for,’’
d) ‘‘component for,’’
e) all of the above – from online material 112 guidelines (my choice)
Ok, that’s all that I remembered, like Bfusion always says, do the repeats, it will help you vastly. I give thanks to everyone to this website and so glad now I am being one of you!!
Good luck, you will pass.
Hi,
I am using 2010 PLI material for the exam. Can you please post or email me the all the newest AIA test questions (50 in total, including Track I, Appeal, Reexam etc are very closely aligned with the current exam from PLI’s material 2012 )?
Thank you
Hi, Potential:
Congradulation.
I’m about to have my second try soon. I don’t think Bfusion’s excel spreadsheet available now. Could you kindly send me a copy of it? Without the help, I ‘m so nervous.
Thanks
To: emily.gs.us@gmail.com
Could someone email Bfusion’s spreadsheet. Kindly appreciated.
Thanks.
I took the exam today 7/7/12. I got through, thanks to this website, a little bit of studying and lots of luck. The questions you have in here are spot on. This is my dump. Hope it helps! Thanks everyone.
Q. Some claims are rejected 1-10. Board has new grounds of rejection and they affirm examiner rejection. The practioner chooses to reopen prosecution and amends making the rejection and the one they had affirmed earlier allowable. What should examiner do?
A. I chose allow the application. This is a possibility, to not likely in a real scenario.
Q. Another one was on oral hearing, when can it be filed.
A. There was one option that had all the right ingredients except it can be filed after a reply brief. The one I chose was oral hearing should be filed in two months from the examiner answer.
Q. Another one from appeals on if there are rejections that have new grounds and the appellant chooses for a rehearing in some and prosecution in others what will happen next.
A. Answer would be that the examiner will prosecute the claims not chosen for rehearing and it will go to the board for further action.
Q. Range question coating up to 180 degrees. –> Indefinite how to correct?
A. Was not too clear but I chose that he should point to the coating that has a structure in the spec, to overcome that indefiniteness. The other option I remember was using a trademark that was not specific (unlike Jack Daniels Rye type), but it was not too convincing.
Q. Applicant claims a toy plane whose wings are covered in aluminum foil. The spec describes a toy plane whose wings are covered in foil but whose body isn’t. Reference discloses a plane that is covered entirely in chewing gum wrapper, which includes aluminum foil and another material. Claim is rejected, and applicant responds by arguing that covering only the wings in foil provides useful aerodynamic properties, and therefore the claimed invention is distinguishable from the reference. How should the examiner respond?
A. The examiner should maintain the rejection in view of practitioner’s arguments. The claim is open‐ended (“…comprising wings covered in aluminum foil”). Thus, the prior art anticipates the claim.
Q. In what situation does the PTO still investigate violations of 37 CFR 1.56?
A. Form paragraph 14.21.09 should be used where the examiner becomes aware of a judicial determination of fraud, inequitable conduct or violation of the duty of disclosure on the part of the applicant independently of the record of the case, i.e., the examiner has external knowledge of the judicial determination.(what I choose after much contemplation
Q. Person files a German application. Person later files a US application and forgets to claim priority from the earlier filed foreign application to get the benefit of the earlier filing date. The US patent issues and then person realizes that he/she did not make a claim for priority from the earlier German application or submit the certified copy. Assuming that all the timing requirements were met in order for the US patent to get the benefit of the German application how can the person perfect priority based on the German application?
A. File a reissue application along with the necessary fees, certified copy of the priority document (German Application), and English translation and a claim for priority. There were two options one that required a translation and the other that did not.
Q. Priority 102(e) date for application filed after Nov. 29th that claims priority to US provisional filed before Nov 29. What is the 102 (e) date.
A. Figure it out
Q. if a patent agent who works on an application from India needs to obtain foreign filing license and how to address export control
A. In this case no foreign license is required and he needs to make sure export control laws are followed.
Q. Who has a duty to disclose, cites someone in foreign country who is a patent agent.
A. Only one option said she has duty to disclose because she drafted the application.
Q. 112 rejections under enablement and written description, the application has shown that the inventor had possession of the invention and there are structure drawing etc. that prove it. He overcomes the rejection by pointing out prior art that was enabling and written description requirement is met. What should examiner do?
A. Two options seemed correct that mentioned on canceling the rejection, one said it was incorrect to begin with, reading the question carefully it seemed that the enablement requirement was lacking, therefore 112, first paragraph was correct. The other answer was more complete that I chose.
Q. Regarding trade secret (in a sealed envelope) that was a part of reexamination and the choice was what was incorrect. I chose the option where the trade secret was subject to patentability, but was not made public (remained in the sealed envelope). Other options related to filing the petition to expunge.
A. Materials submitted under MPEP § 724.02 will only be released to the public with any other papers in the reexamination file if no petition to expunge (37 CFR 1.59) was filed prior to the mailing of a Notice of Intent to Issue Reexamination Certificate (NIRC)
Q. When is a supplemental oath or declaration treated as an amendment?
A. After Notice of Allowance in reissue application. MPEP 714.16. There were other choices that pointed to during prosecution of reissue, after allowance of Non-provisional, during prosecution of non-provisional.
Q. Lots of 112 questions. Remember to read this section.
Q. Claim contains 6-10 % Ni and 8-12 % Moly. Prior art is found that speaks on 9% Moly, what should practioner do to overcome the rejection.
A. I chose the one that said amend the claim to contain 10% Moly, and argue the case.
Q. Another one that contains 25-65 of a claimed composition. The examiner rejects based on earlier reference that *includes* 25% of this composition. 102(b) rejection. Practioner amends to > 35% of composition. Examiner rejects under 112 and 102 (b). Practioner modifies to containing 35-65%, what should the examiner do?
A. I choose remove the rejection under 112 and 102. The other option that was closest was remove rejection under 112, but maintain under 102.
Q. Japan and Swedish PCT questions. The application is filed in USRO by Japanese applicant and in Japanese, will he get a filing date.
A1. The correct answer is once the fees are paid the USRO will forward to IB for processing. The other option was they will forward to Japanese receiving office which is not correct.
A2. Swedish was the same except that it was filed in English with fees etc. So in this case the answer was straight forward, that they will get filing date. Be careful on the wording, they will get a date even though it was filed in the incompetent office.
Q. On oath or declaration. Multiple inventors filed declaration separately, without dating it or address. What will the office do, the options were declaration will be disallowed based on a) Date b) address c) they not signing together d) will be allowed based on oath (something like that) e) not listed together.
A. I could find only address as the option where declaration will be incomplete. So I chose that. Need to check this one.
Q. Express mailing: What date will I get without petition, three options had the condition that the date in was clearly marked, the fourth was date in was not clear (but it was in the application (inside the envelope)), fifth option was a) b) c)
A. Reading this section it was clear that fourth option you can get date in by a petition.
Q. Two questions on facsimile, what is allowed?
A. Remember the US application will not get a filing date if filed by fax, but CPA is allowed (even though CPA will not get certificate of transmission through other methods), so this is confusing.
Q. PCT question of how much time after the ISR for international preliminary examination. The ISR was date Aug 7th 2007,
A. All answers had the 22 month deadline of Feb 7th 2007 only difference was what can be amended. The answer is spec, claim or drawing can be amended.
Q. There was a mistake in the specification that was corrected after issue using a Certificate of correction, now what needs to be done if the inventor wants to file a reissue.
A. The answer the correction should be included in the reissue without underlining or brackets. Other options did not teach that.
Q. Disciplinary action against the practioner who is working on a case for ben and able, What is wrong choice?
A. The option that I chose what the patent office will appoint a practioner on behalf the inventors to help. Others had correct options including appoint a new person; they sign the documents themselves etc.
Q. What happens if the IDS is filed after issue?
A. Answer is it is kept on file and not considered by the board.
On the last question, What happens if the IDS is filed after issue fees are paid (clarification)?
A. Answer is it is kept on file and not considered by the Office.
Does the USPTO let you know which questions you miss by mail or do you have to schedule a time to go in and look at the exam? What’s typically the procedure? I’d like to know how many I got right/wrong, just to sate my curiosity.
I have a quick question. When these repeat questions show up on exams do they change up the order of the answers? So if I got the red or black ink question wil the correct answer involving black ink always be D?
Also does anyone know how the questions from PLI’s PatentWare program stack up to the actual exam questions?
Thanks for any information
Joker16,
They DO change the order of the answers. So, you can’t just memorize “D” for black ink, etc. You need to know the details of the answer for why it’s right.
Thanks Bfusion, I assume in the process of trying to memorize these I’d learn the entire correct answer, but I just wanted to make sure.
Yup. And, the other thing you’ll learn by practicing old questions, is to PAY ATTENTION to the details. Trust me. You’ll be taking some questions, and when you check the answers, you realize “I did NOT see that word in the question” or you pick because you “thought” you knew the correct answer.
it’s little lessons like this that will make a difference on the exam.
Bfusion, can I get a copy of the excel spreadsheet that you made? I can use all of the help I can get, as this is my second time around.
Nar,
Regarding the problem in which an app is filed after 11/29/00 that claims priority of an earlier provisional, the 102(e) date is effective the day of filing the subsequent app or the day the provisional is filed? I understand that the provisional date establishes priority, but does it also establish 102(e) dates?
Hi all,
I am about to take the exam on July the 18th for the first time and honestly I dont know what to expect. I have done many exam questions but I dont feel like I have the new stuff KSR, Bilski down. I have only read chapter 2100 and have an idea where to look up where during the exam. Besides that I purchased something from Amazon. Hopefully that will suffice. Could someone email Bfusion’s spreadsheet to erenusumer@hotmail.com. Kindly appreciated
Hi The molecular biologist,
Bfusion took the excel spreadsheet off, so people may not send you his spreadsheet via email, we respect the fact that he took it off for a reason as he created the excel spread sheet etc.
You can email Bfusion directly and ask him, he will respond.
Below is his email address, good luck on your test, the remaining 7 days are critical for you.
mypatentbarr@gmail.com
password: usptoposita
If you log in to Bfusion’s gmail account that they set up, there is a sheet that outlines the new material. If you know that sheet and the questions discussed here, you should be good to go. I took the exam on 7/5 and passed, and that was all that I did to learn the new material. The important thing is that you know where the new stuff is located, and the one that I found to be tested the most was ksr obviousness in 2100.
Hi all, to whom is scheduling to take the patent bar in future. I have passed the exam 1 week ago. Want to sell PLI study material.
*2012 PLI Patent Bar Study Guide (MPEP related)
*PLI – Apeal, Track I, Inter Parte Reexam (New AIA rules Material) (50 new questions that are closely aligned with the Patent Bar Exam)
*PLI – Bilski, KSR, 112 Study Material and Questions
If you are interested please email me: potentialpa@gmail.com
Hello everyone:
I took and passed the patent bar on July 5, 2012, and waited until I got the official letter to post this, so sorry for the delay. Like everyone else, I want to thank all the contributors to this website—it definitely helped me to pass the exam.
Some background: I’ve got a PhD in chemistry and decided after some time in industry that I needed a change. I started to work at a law firm as a scientific advisor (non-registered patent agent) in January 2012 and began to officially study for the patent bar. Because I have 2 young kids and a full-time job, this meant that I was studying about 1-2 hours everyday after they went to bed. My husband was very supportive and took on more duties during this time period. My strategy consisted of: (1) reading through and taking notes of a friend’s 2010 PLI course binder, specifically going through the chapter summaries [this took about 6 weeks] (2) going through a set of flashcards of ~250 repeat questions from previous USPTO exams [went through twice; scored ~50% the first time, ~70% the second time] (3) took the 2002 & 2003 USPTO exams in timed sessions, using the MPEP to search; I reviewed the tests a second time as well (4) read this website, specifically the section on newer questions (5) read through the 2000 & 2001 USPTO exams, searching the MPEP to understand the correct & incorrect answers. About 6 weeks before the exam, I began to more rigorously study on the weekends, sometimes spending up to 8 hours to supplement the ~10 hours during the week. I also took a night course on patent law at the nearby university (3 hours/week for 6 weeks). All in all, I studied for ~6 months.
Here are the best pieces of advice I received in this time period:
1) Do the old USPTO tests and use the MPEP while you’re taking them—really a no-brainer, but takes time and dedication. You can’t simply memorize the answer—you’ve got to understand it since the USPTO will use the same fact pattern and ask different questions OR change the fact pattern slightly from before. Using the MPEP with the exam will force you to remember where to find some concepts and help you gain familiarity with the MPEP. If you take all the exams from 2000-2003, that’s 800 questions that you’ve searched the MPEP with. You’ll gain familiarity whether you like it or not.
2) Even if you get repeat questions on the test, READ THEM CAREFULLY to make sure you know what they are asking (in case they do change something up).
3) The old USPTO tests are based on the version of the MPEP of that time period—so sometimes the answers aren’t quite correct anymore on those old tests.
4) Use this website, especially the section on newer questions that have come up after the 2003 USPTO tests. Yes—sometimes people post the wrong answers or there’s lots of discussion but no clear cut answer—just means that you have to look it up yourself. But at least you know what to expect at the exam.
5) If I wasn’t sure where to find something, I searched Appendix R before going to the specific MPEP chapters. This really saves some time. Other sections of note: (1502.01) Design Patents chapter because it lists important dates to remember (regarding when RCE’s could be used; when CPA’s became for design patents only) and other general rules about patents that might otherwise be difficult to find in one spot; 37 CFR 1.6 (what you can/can’t fax); 37 CFR 1.8 (what documents you can/can’t use a Certificate of Mailing/Transmission)
When I was at Prometric, I brought my own foam ear plugs (I felt more comfortable using my own gear). The computer was actually faster than I thought it would be. I remembered the suggestions here not to use keyboard shortcuts and just used the FIND & FIND AGAIN buttons at the top of the screen. When going between the test and the MPEP, I would center the question on the screen—get the answers such that I could see all of them on-screen and then start my MPEP search. I was able to size the MPEP window smaller than the exam window so I could see the question and read the MPEP at the same time; I’d just move the window around so I could see the exam underneath. This helped tremendously. A few times, the MPEP did not reset itself at the beginning when I clicked on the exam. I’m still not sure why that happened, but I was grateful for it.
I found the first half to be much tougher than the second half. But I was also panicking a bit in the beginning, likely due to nerves. It took me 2 hours to go through the first section, leaving me only an hour to go back and check on the unanswered questions or iffy answers. I did much better on the second half—finished it in 90 minutes and used the next 90 going over all the answers. I think that I had at least 20-30 repeats. Others have said it and I will also reiterate: efficient searching was key to passing this exam.
Here are the questions and concepts that I remember from the exam. I wrote this all down immediately after the exam, so as not to forget. From reading the posts of this time period (july 5-7th), we seem to have all had a very similar exam.
2 Potter questions (same fact pattern; different questions; 1 in each session)
Piecemeal examination (verbatim from this website)
Japanese 45-day
Clock-fan-object (verbatim from this website)
PCT question about what kind of amendment could be made after the ISR; answer: could amend claims, need to send to IB (not to the RO)
102(e) date for PCT application that claimed priority to a US provisional (those charts in chapter 700 are a must read)
Judicial ruling on fraud (that question shows up in this website in the “newer questions” section)
Duty of disclosure on patent agent located outside of US
147 claims
Requirements for patent filing for obtaining a filing date
EPAS question
Question regarding use of fax (what can/can’t be faxed)
Death of inventor
Assignments
PTA question (needed to know that the PTA was N/A since the patent was before May 29, 2000)
When is supplemental oath considered an amendment; answer: for reissue after Notice of Allowance
Examiner issues 112, first paragraph rejections (written description & enablement) for an application regarding chemical compounds (see the “newer questions” section for discussion on this one; still not sure if I answered this one correctly)
IDS after issue fee was paid; client specifically refuses to pay for RCE; what happens to IDS submission? Answer: will be put in the file but will not be considered
How to apply for accelerated examination
25-60% composition ranges—obviousness question
New ground of rejection by Board
Canceled matter as prior art—qualifies under which section of 102
Can appeal twice rejected claims
Toy plane with foil wings
Incorrect address in oath/declaration: how to correct; had to choose the incorrect answer [answer had to do with the oath didn’t list all the inventors]
Suspended practitioner
Multiplicity
2-month rule but advisory action given before end of SSP; what is the date used to calculate extensions?
Non-provisional to provisional conversion: have a year to do it
When can a copy of the oath/declaration be used? Answer: continuing application
Content of a protest
Trade Secret question
Reexamination: which of the following not allowed? 1st request from 3rd party; a request from a 4th party; 2nd request from initial 3rd party; all are allowed [I chose all are allowed]
Which of the following language does not invoke 112, 6th paragraph: “module for…”, “element for…”, “unit for…”, none of these, all of these [I chose none of these]
If have certificate of correction, how to handle those corrections when filing for reissue? Answer: incorporate the changes in the patent without any underlining or bracketing (no markings)
2 KSR questions (same ones as Potential’s July 7th post)
No Bilski questions (this surprised me)
ALD,
Congrats on your pass! Your hard work has paid off!
Interesting that there were only 2 KSR questions and 0 Bilski questions. Can you offer any studying tips on the AIA material?
Thanks for the help and congrats again!
Gato Guapo:
The KSR ruling is about obviousness. The Supreme Court (SC) ruled that the Federal Circuit applied the teaching-suggestion-motivation (TSM) test too rigidly in determining the obviousness. SC said that TSM test is a guide but one must go back and apply the Graham factual inquiries to determine obviousness. SC also presented some exemplary rationales for obviousness once those inquiries had been made. The KSR questions I saw took language verbatim from the MPEP for the questions & answers. So, searching using small phrases helped. The material is in Chapter 2100; search “KSR” to find the section.
I didn’t get any Bilski questions, but my understanding of that decision is that the SC didn’t like the Federal Circuit’s rigid use of the machine-transformation test–that it is a guide not the sole test to determine eligible subject matter for patentability. Look at 35 USC 101 (MPEP Appendix L) to see what is considered eligible for patenting.
As for AIA, the test won’t start to incorporate that material until October. Your best bet is to take the test before then so you don’t have to learn 2 separate sets of laws/rules for the exam.
Good luck!
Bilski question will test if you know that Machine or Transformation test is not definitive test for patentable subject matter.
For KSR questions you should be ready to look up the 7 factors. Note that 6/7 include “predictable” and the last one is the old TSM rule.
Remember Bilski –> expanded MT KSR —> expanded TSM
My last question to ALD really goes out to anyone. Any advice regarding the supplemental material (AIA, Bilski, KSR) would be greatly appreciated!
I received my preliminary pass yesterday!! Yeah to being done with studying for this mind-numbing test. I just wanted to let everyone know about how I studied and then give some pointers on what questions I remember.
Background: I have a BS in Chemistry. I am currently in Law School in my second year. I knew I had to take the test this summer before the new material came out and to help me get into firms that deal with IP work. I also have two young children and a wonderful husband.
Study Program: I bought the patbar program (a lot cheaper than the PLI materials) by David Meeks mid-March. The program comes with 91 lectures which took me until mid-June to finish. The program comes with CDs which I would listen to on the road to school and trips. I think this helped reinforce the material I was studying at home. Mid-June, after I was done going through the lectures I took my first test (Oct 2003) and failed miserably. I was very discouraged by my results and thought I wouldn’t be ready by July 16. Somehow, I found this website and from mid-June to July 16, every night and weekend I went through the repeat questions, the outline, and the patbar lecture. I have to stress at this point, it TAKES TIME to understand the material. Do not stress out if IDS and Appeals don’t make since when you go through it. It shouldn’t and your brain has to make sense of a lot of rules on really mundane stuff. Your brain is training for a marathon, not a sprint. Slow and steady is how your study program should be like. You can not cram for this test. The week before I took the test I studied 4 hours each day and then all day on Saturday and Sunday. I took the 2003 and 2002 tests several times and by Sunday I was getting 80-90% results.
Exam Day: Get sleep! I don’t know how other people went through the exam, but I answered every question without looking at the MPEP. This way I was able to see what every question was and to the best of my ability answer most of the questions. This way you aren’t look up answers for questions you really should know by the time the exam comes. It took me an hour to go through the questions. The next 2 hours I went through each question to make sure my answer was correct. This way, you able to know which section to look at and the key words to search for. This is how I approached the exam, and maybe this will help you.
Last, before I get into the questions, remember to keep with your own study habits. By know, you should know what works for you. Example: the patbar came with index cards of the various chapters and rules. I spent 2 days going through that without remembering anything. I finally realized that index cards just don’t work for me. They never have, and I was trying an approach that I knew would fail and wasted two days to try to make it work.
Questions on the exam:
1. Know how to make a demand for PCT. One question asked you didn’t make a demand but want to go to the national stage in the US. It was pass the 30 months so want to do you do? I’m really not sure what the answer is on this, I put file the application and fee but I could be wrong.
2. Requirements for utility, I think this was asking about new stuff. The question was what stuff does the examiner question for utility EXCEPT. Answers were: live and inanimate, human being, mineral, found in the wild. I choose live and inanimate.
3. Be careful on what the question is asking. I had a LOT of EXCEPT questions, and going back I saw I answered some questions wrong because of that.
4. Got a question about the old man in the hospital. Be aware of the number of claims he is requesting.
5. Got how to calculate dependent claims.
6. Got a question of filing in Mexico for a PCT application. Is the USPTO the appropriate RO if the Company resides in US but it is in Spanish? I said yes.
7. Know if you are claiming priority to a provisional (or non provisional) the application has to be translated.
8. Know how to apply the new obviousness requirements. There was a question on the “obvious-to try”. There was also a question on business methods.
9. Know if you are filing an appeal, and you don’t mention an assignee. the Board ASSUMES there IS AN assignee. I had to look this up.
10. Use the index if you are truly stuck on how to find a key word.
11. Linking claim and how to resolve it when you have to elect between two claims placed on a restriction.
12. There were several questions on how to overcome rejections on 102 and 103.
13. I had a question on chemical formulas and the requirements on placing them in the disclosure. Know you can’t reference how to make the formula in another patent.
14. I had a biological material question.
15. Know how to measure SSP. Had 2-3 questions asking about this.
16. Know what needs a signature to receive a filing date.
17. Know what happens when certain documents are missing and what happens to the filing date.
18. I had 5-8 repeats, but going through the exams really helps to know how to search new questions.
19. An abandoned foreign application is not a patent.
That’s all I can remember for know. I just want to thank this website and bfusion for the materials. The outline and questions he put together really helped the last week of studying. Good luck everyone else who is studying.
Congrats, Ngrey!
Regarding #6 though – if the international application is NOT in English, wouldn’t the USPTO forward it to the International Bureau? The USPTO would still honor the filing date, but because the international app is not in English, it is not a competent Receiving Office.
Anyone – If I am wrong, please correct me. Congrats again, Ngrey.
It could be. The question was tricky though because I remember one of the answers saying: No because one has to be a national AND a resident of the US to file with the USPTO. I think I narrowed down to the one I picked and this one. But you don’t have to be both. Also I know I’m missing some parts in this question.
=) Congrats Ngrey! Job well done! I’m glad that this time around, you can pack up your study materials for good (that is, you know, until you have to re-open the MPEP in the hopeful new vocation/job =)
All the best,
~Bfusion
Hi bfusion
Where can I get/buy our materials that everyone references????
Hi Mwhitaker,
Please feel free to email me (bfusion.uspto@gmail.com).
I have also posted a bunch of free materials if you login to this email account:
email: mypatenbarr@gmail.com
password: usptoposita
Best!
~Bfusion
I took the test last week and did not pass. I had a few questions that Ngrey got:
1) Biotechnology deposit of samples in compliance with 112 or not
MPEP
2) Linking claim and how to resolve it when you have to elect between two claims placed on a restriction. – Can Ngrey provide her feedback on this? My test had three claims and one of the claims was the linking claim. I guess you cannot restrict the claim according to MPEP 809?
3) Dependent claim counting 608.01n For fee calculation purposes under § 1.16, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim.
4) Terminology that invokes means plus function claim
5) Quoting Ngrey here: “Requirements for utility, I think this was asking about new stuff. The question was what stuff does the examiner question for utility EXCEPT. Answers were: live and inanimate, human being, mineral, found in the wild. I choose live and inanimate.” I remember the answers to my question were detailed in MPEP 2105
Here are some new questions that I encountered:
1) 101 – what is patentable – Bilski question
2) A signal with data packet embedded – is it patentable under 101 (a process?) Don’t recall if utility was specified. But the utility is that you can better embed your data packet? Not sure.
3) Question on refund – can’t remember all details but it wasn’t an easy question.
4) Declaration – improper (3 inventors – no address, not dated but proper ADS) – I said that the declarations were improper with no address
5) Reexam question – a third party named Smith requests a reexam
The applicant requests a rexam
A third party named Jones on a SNQP different from Smith and the Applicant – is the ground for the third party reexam proper?
6) 704.10 Request for information
7) 3rd Party reply to Patent holder’s reply in a reexam
Repeats
1) Tribell
2) Mexican PCT
3) Spanish keypad
4) Restriction on combination/subcombination
5) When is final rejection appropriate – new grounds
6) Lipgloss
7) Tommie and Jo variant
8) PTA question
This is to the linking claim, to the best of memory. The question was: Applicant A has three claims. 1) For a process, 2) Linking 3) Method. He was to elect on of the claims. What should he do?
A Argue why he shouldn’t have to elect
B. Cancel application
C. Elect 1 and reject others
D. Elect 1 and then the linking claim will be allowed and examined for patentability.
E. Something else.
I choose D (or a variant of it) because of 809. “When all claims directed to the elected invention are allowed, the linking claim will be allowed” Hope that helps.
Also, I remember the refund question as well. It was for a small entity, and the applicant realized he made in mistake. Look at the dates and make sure it’s within the three month rule AND it’s not extendable.
And, so sorry for the not passing part. Try again, your chances are greatly improved on the second try. Nothing wrong with having to take this test again!
Restricted,
I had similar questions as you and Ngrey in my exam yesterday.
2) Signal – I think question asked signal distortion and the invention is to clean up that signal. Is this invention patentable?
I forgot all the choices, but this invention isn’t patentable per 8/25/09 101 guideline (Seach for: Transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se))
4) Supplemental Declaration – (3 inventors A,B,C – no address, not dated but proper ADS), which one is improper.
A) Identifying the entire inventive entity, all three signed.
B) Identifying the entire inventive entity, B signed.
C) A also had incorrect address, identifying the entire inventive entity, A and B signed
D) identifying the B only, B signed.
E) New ADS.
I picked D per 37CFR1.67(2). Not all inventive entity listed.
Took my exam and passed yesterday. This site and PLI material really helped me prepare.
Here my experience:
Started light studying in May on PLI material (12hrs a week). More studying after I register for my exam in June (20hrs a week). Heavy studying last week to remember as much as I can.
Read chapter 2100, 1800, and skim 700. I forgot about some material in 2100 before I took the exam, but just know that 213x is for 102 material, 214x is for 103, and 216x-217x is for 112. When you encounter those questions, just scroll to that section of MPEP and search keyword from there.
Searching MPEP during exam is a bit tricky. When I started, every time I search new word, it’d start from beginning of that chapter. My trick around it was scroll to the section you want, double click on the document, then hit the “FIND” button. I had reasonable success in searching only that section after that.
I had about 20-25 repeats. I’d say 18 or so are from 2002/2003 exam and the rest from 1-68 in this section.
Here are some new questions that I had. Many of them are same/similar to Ngrey’s material from post 912, so I’ll only refer back to those.
1) PCT – 2 days passed 30 month deadline, what to do? I picked you can revive per MPEP1893.02 Abandonment.
2) Had same question, picked same answer
4) Had old man question as well – 90+yr old man went to hospital, and he got new idea for patent while in hospital. He wants to file patent and have it issued within 12 months. What to do? This is Track I stuff. I picked file application with 4 independent claims and 30 total claims.
6) Had #6, I picked US won’t be receiving office.
8) Had Obvious-to-try as well. Had to look up MPEP 2100 for answer.
9) Had same question.
13) Had same question. Same answer.
14) I had a biological material question – The question asked when can you deposit the material to serve as description. I forgot what I picked.
Good luck everyone!
Can anyone please let me know where to get the information about KSR, Bilski, new 112 guidelines details/stuff for the exam preparation? Where do we find them in the MPEP?
Thank you!
It should already be included in the new MPEP and the notices. But, I didn’t look at the notices once during the exam. The information that is new will be easily found in the MPEP. Get the outline and questions from Bfusion. They are a great summary of the new questions being asked. But, I wouldn’t stress to much about about the new stuff. It’s not, yet, heavily tested.
Can someone send me Bfusion’s excel spreadsheet please? My email is kbmorse.cs@gmail.com. Thanks!
Which MPEP version is used in the Patent Bar exam?
Thank you,
can someone please email me the Bfusion spreadsheet of new questions: studiouspatentstudent@yahoo.com.
could some please email me the Bfusion spreadsheet of new questions:
batcountry18@hotmail.com
Could some please email me the Bfusion spreadsheet of new questions:
patentstudy@yahoo.com
I’ll jump on this train – requesting the spreadsheet as well.
josrychl@umich.edu
Can someone please email me the bfusion spreadsheet of new questions also? Thanks for the help
patbarguy@gmail.com
What do we have to do to get the bfusion spreadsheet guys? The requests are piling up. We all want to pass, so how about a little help.
Thanks in advance.
I really appreciate all contributors to this website. Without this website, I won’t get those unpopular questions right. I’d like to share my experiences as below.
Preparation:
1. At least do 2002-2003 past exam questions two times. It is better to mark all unfamiliar questions and take personal notes during the first round. Kept the second round at last.
2. Must read all of 61 types of current questions (Remember read every posts on Q1-Q68 first, DO NOT the posts on the main pages first): http://mypatentbar.com/current-questions/. Don’t think a particular question/ topic is unpopular or disfavorite.
3. Redo those marked past exam questions or all 2002-2003 questions. If you have time, do all repeated question: http://mypatentbar.com/repeat-questions/. Actually, I did not past exam question other than 2002-2003.
4. During the exam, do not use “ENTER” to search. Use mouse all the time. The exam service was unexpected terminated when I press “ENTER” to “search next” which is a basic function of Acrobat reader, but not provided by the Prometric Software.
The followings are questions in my exams.
Piecemeal, prolix, multiplicity (all of them. You need to distinguish the differences among them.
Which rejection can be overcome by 1.131 affidavit? The answer is narrowed down to two options: (B) rejection under 102(a), (C) rejection under both 102(a) and 102(g). I couldn’t find from MPEP if 1.131 can overcome 102(g). But I chose (B).
One question relates to MPEP 724.02 trade secret (the question gives the MPEP section number). However, I still can not figure out which answer is correct. (I think I fully understand the concept before I took the exam.) During the exam, I read the section again. I still could not figure out which option is correct. I though all the options are incorrect. The question is related to reexam. How should the examiner do for the trade secret document sealed in the envelop?
Timing to file Oral hearing: two months from Examiner’s Answer or on the date the Reply Brief is filed. Remember “no whichever is later or earlier” statement on new appeal rules.
Retroactive license: 45 days (the applicant found he forgot to inform USPTO after 2 months of filing in Japan). The application is abandoned.
2 fax, 1 certificate of mail/mailing questions
The right of nonsigning inventor. The answer can be found easily on MPEP.
Obvious to try: Only one of five options is not listed in MPEP (not supplemental materials) which is articulate reason it is obvious. I chose this one.
What can assignee not of record do: small entity statement. MPEP 324: Examples of situations where ownership need not be established under 37 CFR 3.73(b) are when the assignee: signs a request for a CPA under 37 CFR 1.53(d), where papers establishing ownership under 37 CFR 3.73(b) were filed in the prior application and ownership has not changed (MPEP § 201.06(d)); signs a small entity statement (MPEP § 509.03); signs a statement of common ownership of two inventions (MPEP § 706.02(l)(2)); signs a NASA or DOE property rights statement (MPEP § 151); signs an affidavit under 37 CFR 1.131 where the inventor is unavailable (MPEP § 715.04); signs a certificate (of mailing/tx) under 37 CFR 1.8 (MPEP § 512);
Q10 of mypatentbar; Suspended practitioner: I was struggling between two options. I think the option mentions that the applicant may file revocation to revoke the suspended practitioner and file POA is not correct. Because it is not necessary to file a revocation. I forgot the one option I chose.
Both inventors died after the date Notice of allowance was mailed. They did not receive it. How does USPTO handle it? Will USPTO withdraw the NoAl?
One question relates to that the former examiner can not acquire any interest of application or patent within one year after termination of the employment.
One inventor was listed as one of joint inventors. However, he does not agree. How could he do? Protest? He should file another application and request for inter partes reexam. Please read MPEP.
One application was filed with three separate declarations signed by one of three inventors, respectively. Each declaration only indicates the signing inventor as the first inventor and left the second inventor box blank. How does USPTO handle this situation?
Express mail practice: one option mentions that date-in box was left blank but a certificate of mailing was enclosed inside the envelop. Which date will USPTO record the document?
Prioritized Examination Track: choose 500 PET applications for fiscal year 2012 according to USPTO document dated Feb. 25, 2012. This can not be found in all the materials. But you will know it by reading this website.
20 years patent term measures from the filing date of nonprovisional application, but not the filing date of its provisional application. First application is provisional. Second application is nonprovisional application claiming benefit of the provisional application. PCT application claims benefit of both nonpro’l and pro’l applications. National application of the PCT is granted a patent. How to measure its patent term?
Similar situation as above: 102(e) date is filing date of provisional application. You can refer to the flowchart on page 700-40.
Incorporated by reference question.
Oath does not show address and date.
A practitioner found he has to file an application at 10:30pm Pacific time. Even EFS is too late to file the application. No USPS available at that time. EFS time at DC is next day already.
147 total claims
Who is allowed to access the assignment related to a pending application? A prospective buyer of the application. Please read the related MPEP.
Correct statement (at the bottom of left column on page 2100-80): Unlike questions of public use, there is no require¬ment that “on sale” activity be “public. The wrong statement mention “Like questions of…”
Will USPTO consider IDS filed after issue fee is paid? No.
Reference under 102(e) rejection can not be removed by 103(c).
How does the examiner do the search? Interpret claim first? Search only claimed invention or all features toward the same claimed invention which are disclosed in spec but not claimed.
Applicant, within two months, files a reply to FOA with 3-month SSP. Advisory Action was mailed within 3 months of FOA. When is the date the extension fee measure from? The date the 3-month SSP expires.
Timely restriction requirement: it is improper for examiner to issue a R.R after FOA.
What is a proper R.R. between combination and subcombination? I could not memorize it but you can search keywords from options in MPEP. Please read the MPEP.
Obviousness: One option describes like this: if a independent claim is determined nonobvious, the dependent depending from the independent claim is nevertheless obvious. I found the similar sentence in MPEP. I remember someone discuss this question somewhere in the website. The key for this question is the meaning of “nevertheless.” Does “nevertheless” have the meaning of “not”? Anyway, I choose this one. Other options are incorrect in my opinion!!
May canceled matter in a patent be a prior art under 102(a), 102(e), printed publication, public knowledge? The options mix them together. I was struggle with two options. I choose the option that canceled matter in a patent can be 102(a) prior art as of patented date because it become public knowledge then. I think it is also a printed publication as of patented date.
During Chapter I of PCT, what and when is allowed to amend? 2/16 (ISR/ priority date) is for amendment to claim only. Remember the answer is submitting the amendment to IB, not USRO. You can find it on PCT Article #19.
File reissue after complete of Certification of Correction. No bracketing, no underlining for those changed by CoC.
May a requester who already filed on ex parte reexam file another ex parte reexam with different SNQ? Any request can be filed within six years after expiration of the patent (enforceability of the patent).
I omitted those repeated questions (some of the above items are repeated).
Good luck to all of you.
I would love to get bfusion spreadsheet guys. Please email me.
kksante@gmail.com
I know this is may be getting old but could someone e-mail me a copy of bfusion’s spreedsheet of new questions ? It would be greatly appreciated.
jradose2@gmail.com
Thanks
I sincerely appreciate all contributors to this website. Without this website, I won’t get those unpopular questions right. I’d like to share my experiences as below.
Preparation:
1. At least do 2002-2003 past exam questions two times. It is better to mark all unfamiliar questions and take personal notes during the first round. Kept the second round at last.
2. Must read all of 61 types of current questions (Remember read every posts on Q1-Q68 first, DO NOT read the posts on the main pages of current-questions first but the last): http://mypatentbar.com/current-questions/. Don’t think a particular question/ topic is unpopular or disfavorite.
3. Redo those marked past exam questions or all 2002-2003 questions. If you have time, do all repeated question: http://mypatentbar.com/repeat-questions/. Actually, I did not past exam question other than 2002-2003.
4. During the exam, do not use “ENTER” to search. Use mouse all the time. The exam service was unexpected terminated when I press “ENTER” to “search next” which is a basic function of Acrobat reader, but not provided by the Prometric Software.
The followings are questions in my exams.
Piecemeal, prolix, multiplicity (all of them. You need to distinguish the differences among them.
Which rejection can be overcome by 1.131 affidavit? The answer is narrowed down to two options: (B) rejection under 102(a), (C) rejection under both 102(a) and 102(g). I couldn’t find from MPEP if 1.131 can overcome 102(g). But I chose (B).
One question relates to MPEP 724.02 trade secret (the question gives the MPEP section number). However, I still can not figure out which answer is correct. (I think I fully understand the concept before I took the exam.) During the exam, I read the section again. I still could not figure out which option is correct. I though all the options are incorrect. The question is related to reexam. How should the examiner do for the trade secret document sealed in the envelop?
The followings are questions in my exams.
Piecemeal, prolix, multiplicity (all of them. You need to distinguish the differences among them.
Which rejection can be overcome by 1.131 affidavit? The answer is narrowed down to two options: (B) rejection under 102(a), (C) rejection under both 102(a) and 102(g). I couldn’t find from MPEP if 1.131 can overcome 102(g). But I chose (B).
One question relates to MPEP 724.02 trade secret (the question gives the MPEP section number). However, I still can not figure out which answer is correct. (I think I fully understand the concept before I took the exam.) During the exam, I read the section again. I still could not figure out which option is correct. I though all the options are incorrect. The question is related to reexam. How should the examiner do for the trade secret document sealed in the envelop?
Timing to file Oral hearing: two months from Examiner’s Answer or on the date the Reply Brief is filed. Remember “no whichever is later or earlier” statement on new appeal rules.
Retroactive license: 45 days (the applicant found he forgot to inform USPTO after 2 months of filing in Japan). The application is abandoned.
The right of nonsigning inventor. The answer can be found easily on MPEP.
Obvious to try: Only one of five options is not listed in MPEP (not supplemental materials) which is articulate reason it is obvious. I chose this one.
Jamie,
I had the Trade secret in reexam as well. I think the question asked which of the choices are correct. All the choices mentioned something about keeping the document seal. One of the choice said, if examiner only used portion of the seal document for opinion, the unused document can remain seal. That seems logical until I found in MPEP that said if examiner found sound information, it should return to practitioner and he/she can separate unused document into seal envelop. Otherwise, entire seal document will be available to public.
What can assignee not of record do: small entity statement. MPEP 324: Examples of situations where ownership need not be established under 37 CFR 3.73(b) are when the assignee: signs a request for a CPA under 37 CFR 1.53(d), where papers establishing ownership under 37 CFR 3.73(b) were filed in the prior application and ownership has not changed (MPEP § 201.06(d)); signs a small entity statement (MPEP § 509.03); signs a statement of common ownership of two inventions (MPEP § 706.02(l)(2)); signs a NASA or DOE property rights statement (MPEP § 151); signs an affidavit under 37 CFR 1.131 where the inventor is unavailable (MPEP § 715.04); signs a certificate (of mailing/tx) under 37 CFR 1.8 (MPEP § 512);
Q10 of mypatentbar; Suspended practitioner: I was struggling between two options. I think the option mentions that the applicant may file revocation to revoke the suspended practitioner and file POA is not correct. Because it is not necessary to file a revocation. I forgot the one option I chose.
Both inventors died after the date Notice of allowance was mailed. They did not receive it. How does USPTO handle it? Will USPTO withdraw the NoAl?
One question relates to that the former examiner can not acquire any interest of application or patent within one year after termination of the employment.
One inventor was listed as one of joint inventors. However, he does not agree. How could he do? Protest? He should file another application and request for inter partes reexam. Please read MPEP.
One application was filed with three separate declarations signed by one of three inventors, respectively. Each declaration only indicates the signing inventor as the first inventor and left the second inventor box blank. How does USPTO handle this situation?
Express mail practice: one option mentions that date-in box was left blank but a certificate of mailing was enclosed inside the envelop. Which date will USPTO record the document?
Prioritized Examination Track: choose 500 PET applications for fiscal year 2012 according to USPTO document dated Feb. 25, 2012. This can not be found in all the materials. But you will know it by reading this website.
20 years patent term measures from the filing date of nonprovisional application, but not the filing date of its provisional application. First application is provisional. Second application is nonprovisional application claiming benefit of the provisional application. PCT application claims benefit of both nonpro’l and pro’l applications. National application of the PCT is granted a patent. How to measure its patent term?
Similar situation as above: 102(e) date is filing date of provisional application. You can refer to the flowchart on page 700-40.
I’m taking the test again. there was a question i stil am not clear on just like the trade secret question. thought i had it understood but the answers didn’t seem to fit. my mind was locked on patentablility then disclose. didn’t see it. another was when a patent issues and the there has been a certificate of correction what do you do in the reissue. do you make the changes that were noted in the certificate of correction or do you just file the reissue and a clean copy of the cerificate of correction.
another was when you know your patent has a bad claim do you do a disclaimer and then reissue or do you just do the reissue.
anybody else recall those questions?
Had this exact question yesterday… the answer is in 1453 IV. (c) — on page 1400-84. It reads:
(C)For a reissue application, where a certificate of correction has issued for the patent: An amendment in the reissue application must be presented as if the changes made to the original patent text via the certificate of correction are a part of the original patent. Thus, all text added by certificate of correction is presented in the amendment (made in the reissue application) without italics. Further, any text deleted by certificate of correction is entirely omitted in the amendment (made in the reissue application).
Hey gang, took the exam yesterday and got a 67%. I was wondering if anyone here knows what happens next? I know in two weeks or so I will get the official letter from the USPTO saying I didn’t pass. How long til I can take the exam again? I’ve heard 30 days and 60 days. And is that measured from when you took the exam or when they send you the letter? I’d really like to take the exam again before the October 2 changes.
joker you can write the check for 240, complete the application, (no need to resend transcripts but you must recomplete where you went and degree etc). about 10 days after that you get notice that you can take exam again. they give you another window. good luck. i’m doing the same thing. same score…
Thanks Bankins!
Hi All,
If you are interested in the spreadsheet, you can email me directly:
bfusion.uspto@gmail.com
(I’m currently asking $85 for my materials….which includes the spreadsheet, and two word documents (one is ~100 compiled questions of new material being asked on the exam, and one is ~10 pages of concepts to know for the exam being tested).
Best!
~Bfusion
did anyone have the question where the practioner is in germany and he’s at the last day of the 6 month statutory period to respond to the first office action and he has to get the amendment to the pto? i think one of the options was he could fax it with an authoriztion to charge his credit card for the extension of time or his account. something like that.
T
I had that one the other day. I believe the correct answer involved faxing the response. Three of the answers were wacky. The other answer was express mailing the response from Germany with a certificate of mailing, but that is incorrect because you can’t get a filing date on the day you mail in a foreign country. So the fax answer with a certificate of transfer is the right answer.
I believe one of the facts was it is 11:50 PM in Germany and the fax wouldn’t finish sending til after midnight Germany time. I think this is a red herring fact. All that matters is the response arrives in DC before midnight eastern time.
can someone please email me the Bfusion spreadsheet of new questions: edwinakumar@gmail.com
You need to ask bfusion directly for the materials. He is asking for a fee, which is reasonable seeing that it would have taken several hours to put together the material. His email is bfusion.uspto@gmail.com.
Good luck with studying.
Greetings all. Just wanted to say thanks for all the valuable information posted on this site. I received my provisional pass today on my first try. I wanted to give my two cents worth of information. Some background on myself. I have a Ph.D. in Chemistry with little to no experience with patent work but industry experience. I studied the MPEP since mid may averaging about 15-20 hours a week. I took all of the practice exams at least once and took the 2002 and 2003 exams at least three times. They are your most valuable study resource along with this website. I did not use any of the commercially available study material. In my experience the morning exam was much more taxing than the afternoon session. There were about 5 questions on Biliski and about two or three involving 102(e) dates. I had several repeat questions like piecemeal examination, agent in Germany with approaching deadline, claim counting, and laurl and Hardy. There were quite a few others but I can’t remember them now. I would say around 20 repeats in total. I will caution that they have changed some of the wording in the answers but the repeats I had all had the same answer. I didn’t have but I think one question over the new material. I looked over the material on bfusion’s gmail account which was quite useful (i didn’t buy his spreadsheet though). The test seemed to have quite a few appeal questions, with at least two repeats. I would recommend knowing what can be used for prior art rejections for each of the 102 possibilities. I was taking the practice exams in about two hours and I ended up using every bit of the time in both sessions. The search function takes some getting used to but it is usable. Just remember hitting enter does nothing after the first hit and you have to manually click.. Also remember you can make the MPEP smaller so you can see the answers and MPEP at the same time. The MPEP is labeled with chapter names so you don’t have to memorize which chapter is examination and which is patentability etc. I did have the test crash a little into the second session but Prometric fixed it withing two minutes and it resumed where it crashed. The testing center in Ft. Smith Arkansas is top notch. My best piece of advice is to just relax and think logically. Most of the time if you have a basic understanding of the MPEP you can reason the answer. Other than that I can’t think of anything at the moment. If my brain starts working and I can think of anything else I will post it. Thanks again for help.
Thanks ChemDoc. I’ll be taking the exam in a couple of weeks and am wondering what supplemental material is provided on the exam for quick reference (can I find the reference material on the uspto website?) I’ve been using the 2010 PLI material as study guide and there have been lots of changes/additions since that time. Any advice would be greatly appreciated.
The supplemental material that is available on the uspto website is what is available on the test. There is a button on the test that says Supplemental material that has all of the pdf documents in it for the new material. I honestly didn’t open it but once I think. Like I said in my previous post I did not use any PLI material or any other commercially available study material only the MPEP. I think the key is understanding where things are likely located in the MPEP for quick lookup and a good foundation of base knowledge on the material. Taking and mastering the old exams will help greatly with this. You may get a few questions over the new stuff but remember the majority of the information is from years ago and it is likely that a significant portion of the new material will be beta questions as well. I did remember a few more questions from my test such as potter application (twice), fan diagram (scale of figures), missing parts on PCT, 1.131 affidavits, Velcro, small entity status, maintenance fee returned, at least four questions on proper PCT filings with foreign inventors and related filing dates, and at least four questions on restriction practices. I hope this helps
ChemDoc,
I’ll be taking the exam this coming week and was wondering if you could remember anything about the Bilski questions as I have not spent a ton of time on that topic yet.
JH
Sorry I don’t remember the specifics about the Bilski questions. The only reason they stood out is they quoted the Bilski case name in the answer selections. I didn’t spend much time studying the material either. I read over the pdf files on the USPTO website and that was it. Good luck with your exam.
can someone please email me Bfusion’s spreadsheets?
talltrees2013@yahoo.com
Very much appreciated!!! Thank you in advance!!!
You need to ask bfusion directly for the spreadsheet and extra materials. He has asked those who have bought the materials to not pass it on to other potential test takers for his own interests.
You can email him directly at bfusion.uspto@gmail.com and he is very quick in responding to your request.
Hope this helps.
Hi,
I will be taking exam in October, can anyone suggest me where can I get nut shell of recent AIA amendments.
just passed.
Had a question that stumped me for a minute.
Basically states which is true (weird question)
I if an office action has a 3 month rely set from may 28, it must be submitted on august 28, not the last calander day of the month
II 30 days is 30 calander days
III if you file and extansion with a response on a sat. the time for the extension starts on a monday
I picked I and II because the third one seemed wrong and i found it was not true in chapter 700
I also had a “rapidity” question – i cant remeber it,maybe look that word up before the exam.
had DRAM, lauerl hardy abbot, resrtiction linking (elect claim 1 or 3, bc 2 is linking it will be examined), new matter (objection to the spec, reject the claim 112), what can be filed after double rejection (amendment comply with 1.116?)
I take the test in 2 days berry, any other repeat questions you can remember?
did you get a lot of repeat questions veryberry? Thanks
o look at this website it helped a lot!
http://brittpatbar.blogspot.com/
Hi everybody,
I passed the patent bar on July 18th and I am in the process of getting my certification. I have already been active sending out a lot of applications primarily to law companies in New York City but the only problem is that I never hear anything back. My background is in biotech/pharma (Masters in Biotechnology from the Technical University of Denmark) with altogether 8 years of experience in industry and academia and I have drafted one patent for a diagnostic product. It seems like everybody wants at least 3+ years of experience in the field. Given how bad the economy is getting a foot inside a law-company seems to be extremely difficult. I have been applying broad not just in New York City but also in biotech pro cities like Boston and San Diego. I Any suggestions, knowledge or information regarding finding a position in this field is welcome. Best of luck to all future exam takers.
To: The Molecular Biologist,
Why aren’t you looking at the EPO Examiner jobs? If I was a citizen from an EU member state, that would be one of the top jobs on my list.
Hi Timmy,
Thanks for the suggestion but I it is not in my plans to relocate back to Europe as I moved to New York City about one year ago. I speak 3 languages fluently (Danish, English and Turkish) and proficient in French so I was hoping to get my foot inside a company with my international background and science skills.
Just passed today 8/07/12. First try. Bad news though, almost no repeats. There were maybe 10 that seemed familair. A few verbatim from this site and the rest variations. And I memorized all of the repeats and exam questions. I basically just had to look every question up in the MPEP. Thats the key. I was hoping to rely on repeats but I dont recommend it now. I used the PLI 2006 DVD lectures that I got from a friend of mine. Went through them in a week or so. Then I went through the questions on this site for about a week. Thats all there is to it. The rest you just have to look up. Type keywords into the subject matter index. It will take you to the right place. Lots of PCT, Appeals, Obviousness. I think one of the only repeats i got was the 147 claim counting question. Dont get too crazy with studying. Maybe 1 month max of part time study. Its mostly just look up. I saw some people on here saying they studied for like 250 hours. Way overboard. I figured Id get the exam out of the way before the major changes. Good luck guys.
rossco993,
Congratulations on passing the exam. Do you know when the major changes will take place? I too would like to take and hopefully pass the exam before the changes take effect. Thanks.
The Patent Office will start testing the first major revisions resulting from the America Invents Act (“AIA”) on October 2nd, most likely.
Passed yesterday, 8/7/12. About 80% of my test was repeats.
If anyone wants to buy my PLI stuff (2012), the license is good until February 2013 and includes all the upcoming changes for AIA… find it on Craigslist in St. Louis, Missouri.
Mike: Do you still have your PLI stuff available and how much are you asking for it?
Just passed today! This website was very helpful.
Some questions from above that were on my exam included:
Info requested by USPTO
How to amend claims in IA
trade secret question
broom
japanese patent
reissue (variant of Tommy and Jo)
death of inventor after application filed
investigating deceptive intent
piecemeal
advisory action
assignment
PCT publication
Also there were a ton of PCT questions and Appeal questions.
I probably studied about 5 hours a day for the last 4 weeks. I used the PatBar review course. I made sure to take the 2002 and 2003 exams about 3 times each. I also used Bfusions study material which he now sells for $85 and he can be reached at Bfusion.uspto@gmail.com. Overall the exam wasn’t too bad. There were less repeats from the old exams than I would have expected or wanted but this website and Bfusion’s study materials were EXTREMELY useful.
JA, thanks for sharing. Do you recall how much new stuff (AIA related) questions were on the exam?
AA,
I just passed yesterday, and I would say I had 4-5 KSR and 2 accelerated exam questions. Also had 1-2 questions on the new Re-exam stuff
Hi, I have my exam due on 12th Sep. I would really appreciate if someone can please share how MPEP is shown during pro-metric exam. Is it available as individual chapter format or a complete one file wherein one has to manually scroll each chapter. Also, Any specific tip to search MPEP in shortest time span during exam. Thank you in advance.
It’s a PDF form. You can search by chapter from a drop down menu of the MPEP, or search through the various reference documents (KSR for example) , and then search for a keyword within that chapter or document. Also on the left hand side is an outline of the chapter that you can use to quickly skip to a particular section of each chapter.
I’d say the quickest way to search is to pull up the chapter germane to the question and search for a keyword within the chapter. If you don’t know what chapter it comes from, pull up the index and search for the keyword there, then go to whichever chapter it tells you it is located within.
Thank you, M
Hey I just wanted to mention something I have been noticing while studying.
Many of the questions include prompts that have “…which of the following does NOT accord…”
I’ve found the MPEP rarely compares two instances of something happening and then says the later of the two. It’s almost always the EARLIER of the two. The point is, if you have to guess for whatever reason, keep this in mind for future questions. This has yet to steer me wrong.
Here’s a good example of what I mean: Q) Protest (10.02.46p)
It seems like whoever puts the test together uses this technique throughout
Can any one please confirm whether “subject matter index” wherein each MPEP terminology is listed is a part of prometric MPEP too. As I can see that in MPEP listed at USPTO. I want to make sure I am using it correctly and therefore can use same for to narrow down search during exam. Thanks .
Hi, Barexam,
yes, the subject matter index that you are using (if you downloaded from the USPTO website as part of the entire downloadable MPEP) is the same that you’ll be able to use on the exam. Furthermore, if you pull up the subject matter index (from the drop down menu, on the day of your exam), it will look identical to what you are looking at now. the only “difference” is that once you search through the subject matter index and find the chapter you need to go to (or specific reference within a chapter), you’ll need to open that chapter and then scroll (or search) for the location you are interested in.
hope that helps!
Thank you so much, Bfusion.
Hi all,
I (unfortunately) had to temporarily lock out the email (mypatentbarr). I got word that several people were abusing it (spam mailing others who had emailed asking for help or resources). This is not what I had intended when I made resources available, and I am grieved that people were taking advantage of that.
All that being said:
1) I am making my study resources available (the spreadsheet, and my notes/questions). You can email me directly at: bfusion.uspto@gmail.com
Thanks for all those who positively contributed to the mypatentbarr email. I do plan on staying in touch and will hopefully have something to offer/give back to this community here soon.
all the best,
Bfusion
I am really sorry people were taking advantage of your wonderful resources. It makes me sad that people would stoop to that level.
Passed after first attempt yesterday, Aug 18, 2012, at testing center in Merrillville, IN. My computer had to reboot TWICE during the exam, lost about 5 minutes in reboot time, plus I was fuming and could not concentrate for several minutes afterward. Someone mentioned it earlier, there’s a glitch in the testing program that if you hit the enter key, rather than clicking the “find again” button, it may sometimes cause a crash. I was using the enter key both times that my computer crashed, after that I had to make a conscious effort to use the mouse.
As for repeats, I’d say I got about 5-10 verbatim repeats, 25-40 looked familiar and were variations of past questions, and the rest were new. I had the aluminum foil airplane question, Japanese PCT question, a question on EPAS electronic signature which I had never seen before, the Potter question involving a rejection based on 102(e) and the answer that you cannot overcome the rejection by evidence that the reference and claimed invention were owned by the same entity at the time of invention (103(c) exception only applies to 103(a) rejections), a question whether you can get a filing date with missing pages from the specification. I had about 10 PCT questions, 2 or 3 questions involving KSR, and a question involving priotrized exam (I think the answer involved the option where there had been only 500 prioritized exams filed that year, while the other option said there had been 10,000 filed that year, meaning no other prioritized exams would be granted by the USPTO that year. The other options involved petition to make special, which would not be as fast as prioritized exam and were therefore false).
I also use PatBar, which in my opinion was a complete waste of money and actually caused me to waste time studying useless information. Past exams are all you really need.
Brian,
Congrats on the pass! Yeah, A bunch of us even back in May (and earlier) had similar issues with the software. Hitting enter caused the entire program to crash on me twice.
If I hadn’t passed the exam, I would have pursued this issue more seriously with Prometric. I probably lost 10-15 minutes due to rebooting and glitches. That’s some valuable time right there.
Again, congrats on the Pass!
I just got my prelim pass. Thanks to the founders of this website and to those who have positively contributed to it. I used PLI to learn to substantive material, although I probably would have passed by just studying the old exam questions and this website. Here are the questions that I remember:
1. Both Potter variations (based on 103(a) and 102 (e) rejections);
2. DRAM cells
3. ABCDE
4. Which of the following is an improper multiple dependent claim. You can eliminate the answer choices by referring to 608.
5. French application filed April 26, 2002, French patent issues on April 28, 2003 and patent is filed in US on April 30, 2003. This is a 102(d) rejection.
6. A question where the answer was that the examiner must recite all the references from the parent in a continuing application.
7. Which of the following is it ok to have a copy of a signature: I. declaration; II. credit card authorization; and III. Amendment. I chose all of the above.
8. When is an IDS an appropriate submission with an RCE? After notice of allowance.
9. When is an supplemental oath/declaration considered an amendment: my choice was in a reissue application after notice of allowance.
10. Which of the following is a proper reply to a final rejection: my choice was an amendment cancelling all of the rejected claims in the utility application.
11. IA application claiming priority to earlier Japanese patent. The patent term begins on IA date (not priority date).
12. IA application is filed with missing parts and applicant responds on the last day (30 days following filing) to preserve the initial filing date. Question asked what method to use in filing the missing parts such as fax, EFS, certificate of mailing, or express mail post office to addressee (my choice).
13. Patent with three claims. Independent claim 1 is rejected (twice), claim 2 is objected to for its dependency on claim 1 and independent claim 3 is approved by examiner. Board affirms rejection of 1, what happens? Patent issues with independent claim 3 only.
14. All can sign disclaimer except: Answers were combinations of people including applicant, assignee of entire interest, applicant and assignee of entire interest or assignee of part interest (my choice).
15. Which of the following is true about claim interpretation in non means plus function. My answer was claim is given broadest reasonable interpretation in light of the specification. Be careful because a different answer choice would have been correct if given in means plus function.
16. A question about Bilski where the initial claim was rejected by the examiner because it was an abstract idea. The question asked how to overcome the rejection. My answer was to amend the claim to make it an application of an abstract idea.
17. Each of the following is a proper reply to a new ground of rejection (not sure if it was an examiners new ground of the board’s) to maintain the appeal except: my answer was to file an amendment and/or affidavit because this would result in reopening prosecution.
18. What is not required to file an assignment: a copy of the patent or application.
19. A question about EPAS. I think it asked which of the following is correct. My answer was something along the lines where the signature on the cover page indicates certification.
20. There was a question about restriction practice. The answer could be narrowed down by comparing them directly to 806.05(j).
21. German application which failed to claim priority, what to do? File a reissue, make a claim for priority, file a certified copy of the priority document, make petition for unintentional delay, and pay any required fees (be careful because another answer choice was identical except it included a translation of the priority document, which I don’t think you need).
22. In a PCT application filed on 12/7/00 claiming priority to earlier application filed 12/7/99, the international search report issues, what can be done? My answer was that applicant can amend only the claims on 2/7/01 to the International Bureau (be careful because another answer choice was identical except that it said amend claims on the same date to the ISR/RO).
23. A question on transitory signals. My answer was that it was not patentable subject matter under 101.
24. What can appellant include in oral hearing that was not presented in appeal brief or reply brief. My answer was any new decision from the Board or the Federal Circuit relevant to the appeal. Another answer choice included arguments not made in appeal brief or reply brief but made during prosecution.
25. Two questions on death of inventor: 1. Fishing pole inventor died before filing application. Who can file? The answer was Barbara, the named executor and legal representative should file the application (not the minor son who is an heir of the estate). 2. I don’t remember the question to the second one but the answer was straight from MPEP 409.01(e): When an applicant who has prosecuted an application after assignment, dies, the administrator of the deceased applicant’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes.
26. An appeals question where board enters a new grounds of rejection. Applicant decides to request rehearing for some of them and reopen prosecution as to the others. Which of the following is correct. My answer was that the board will not take up the rehearing until the applicant finishes prosecution on those rejections he has decided to reopen prosecution.
27. A question asking which of the following is correct. I. on a rejection made on May 30, applicant has until August 30 to reply; II. one month means not less than thirty days; and III. Something where if additional time is requested it will be calculated from the end of the time to respond. My answer was I and II.
28. There was a question about interviews. I’m not sure if it was asking for the right answer choice or the incorrect answer choice. Either way, I could not find the answer choices in 700. Some of the answer choices that I remember was that the patent office greatly emphasizes telephone interviews, the practitioner must demand a telephone interview to protect his client’s rights, and a practitioner can request a telephone interview whenever he thinks it would be beneficial to his client’s application.
29. There was a question about design applications and including a color photograph. One answer choice included the language straight from 1500 (Pho- tographs are acceptable only in applications in which the invention is not capable of being illustrated in an ink drawing or where the invention is shown more clearly in a photograph), but did not say anything about grantable petitions, which are required. Two answer choices were easily dismissed and two others included the required grantable petitions, but only included a single set of the color photograph where three sets are required. I chose the first one, the one where the language came straight from the MPEP.
That’s all I can remember. Good luck to everyone.
Hi Patman,
Thanks so much for your very detailed recall of the questions you encountered. Regarding your question 28, MPEP 713.05 says “However, present Office policy places great emphasis on telephone interviews initiated by the examiner to attorneys and agents of record. See MPEP § 408.” I think that might be the answer to your question 28.
I took the test today and missed by a healthy handful. The MPEP froze up a number of times on me (1 or 2 times in the AM session and 3 times in the PM session) which required a reboot by the Prometric staff. I think this was the same problem that Brian above mentioned related to hitting “Enter” instead of clicking on “Find” with the mouse. I don’t think I lost any exam time but it definitely interrupted the test flow (and it is very hard not to automatically hit enter when you are trying to move quickly!).
I had numerous questions similar to Patman above:
7. Which of the following is it ok to have a copy of a signature: I. declaration; II. credit card authorization; and III. Amendment.
11. IA application claiming priority to earlier Japanese patent. The patent term begins on IA date (not priority date).
15. Which of the following is true about claim interpretation in non means plus function. My answer was claim is given broadest reasonable interpretation in light of the specification. Be careful because a different answer choice would have been correct if given in means plus function.
16. A question about Bilski where the initial claim was rejected by the examiner because it was an abstract idea. The question asked how to overcome the rejection. My answer was to amend the claim to make it an application of an abstract idea.
21. German application which failed to claim priority, what to do? File a reissue, make a claim for priority, file a certified copy of the priority document, make petition for unintentional delay, and pay any required fees (be careful because another answer choice was identical except it included a translation of the priority document, which I don’t think you need).
23. A question on transitory signals. My answer was that it was not patentable subject matter under 101.
25. Two questions on death of inventor: (Mine was not the same as Patman’s, but in the same area of the MPEP): 1. Fishing pole inventor died before filing application. Who can file? The answer was Barbara, the named executor and legal representative should file the application (not the minor son who is an heir of the estate). 2. I don’t remember the question to the second one but the answer was straight from MPEP 409.01(e): When an applicant who has prosecuted an application after assignment, dies, the administrator of the deceased applicant’s estate may carry on the prosecution upon filing letters of administration unless and until the assignee intervenes.
27. A question asking which of the following is correct. I. on a rejection made on May 30, applicant has until August 30 to reply; II. one month means not less than thirty days; and III. Something where if additional time is requested it will be calculated from the end of the time to respond. My answer was I and II.
28. There was a question about interviews but it wasn’t the same as Patman’s. It had to do with the daughter of an inventor potentially going to the PTO for an interview where her dad (the inventor) was old and hard of hearing.
Summary of questions I remember:
Exam Questions and Concepts:
Tribell
Advisory Action
Spanish Phone
Counting dependent claims (8 dependent)
One of the Tommie & Jo questions (I can’t recall which)
Polypropylene ranges (34.9 and 65.1) (4.03.44a)
Canceled Matter as PA (4.03.48p)
Bloc, Synthetic Z (10.03.7a)
Repeat Questions:
Submitting Tables on CD
Claiming, Deleting and Reclaiming Benefit
Spanish Phone
Lip Gloss
Mexican Nationals
Trade Secret
Germany PCT App/Patent Term
Fan, Light, Clock Question (point was that dimensions in a drawing in PA are not relevant or limiting to the reference it is applied to if not specifically called out).
Indefinite with Using “High”
Documents Requiring Signatures
Missing Parts – PCT
Death of Inventor (a variant similar to Sarah’s comments)
TP Submissions
Linking Claims Restriction
Another newer question:
I also had one regarding prioritzed exam. A number of the answer choices were the same except that they had different numbers of indepenent claims (3, 4, 5). Two of the answers included the reference to the 2012 where the PTO only reported 500 prioritized exams had been completed.
Hi,
I too missed the pass mark by 3% today. Are you planning to retake ? Major revisions moving ahead, How do you plan to go about. I am totally lost as to what to do next ?
Hey guys and gals,
I passed on August 18th!! Thanks to everyone on this site who comments and contributes. I had 45 minutes to an hour extra each session to review. In order to get a lot of the new questions right, and have the time to search them, you need to crush the repeats and move on.
Here’s what I did and what I recommend:
I went through all the tests on the PTO website and made sure to understand what each question taught. There are a lot of little things that are just way more efficient to learn and know than have to look up in the MPEP. Either way, taking the practice tests, and seeing where they say to look, helps foster the growth of your search skills. I recommend taking each exam and being able to recognize every question on those tests – you can’t afford to miss a fast ball down the middle if it shows up on the test.
Study this website – especially for the new questions. Study an and Bfusion’s spreadsheet and new exam question sheet. A lot of the questions currently in the bank are easy if you memorize the facts on this sheet.
I’ll be back to list the questions
Congrats JoJo!
Glad to know that the study materials were helpful!
I’m also selling my PRG materials (best way to get a solid foundation) if anyone is interested shoot me an email lowry86@ufl.edu
Took the exam today 08/21/12 and passed.
Not many repeats. (Maybe its a Tuesday thing). I also, unfortunately, do not remember much about the exam but I will do my best to put in two cents.
Questions I do remember:
Both of the Potter Questions
The airplane gum wrapper question
Claim Counting
Death of Inventor( dont remember details but both inventors died)
Documents Requiring Signature
Fan, Light., Clock question
as I said not many…
there was one question about about a corporation or something didn’t have time to prepare an application, they sent it to India to have it prepared, then it was sent back to the US and filed by corporation. Answers had something to do with needing a foreign license or violating something… I wasnt sure on the answer to this one.
If I think of anymore I will post them
Topics that were asked a lot about:
102/103
PCT
Facsimile
What I did to prepare for the exam:
I had old study materials (patbar) given to me. Don’t waste your money on it, but if you can borrow it it is a good way to get an over view, but you could do the same thing by looking at this website or other free materials I bet. I think it really helped to get an a broad overview of the topics to help understand what is going on. After having a background understanding I started going through this website, repeat questions and exam questions reading through all the comments, then I did practice tests 2002-2003 to practice being timed and looking up in the MPEP. After going through that I really started paying attention to the blog everyday for about three weeks to see what questions were popping up and making sure I had those down cold. I basically had an outline of recently asked questions just to help me review. What I found was really important was not just memorizing the answers to the old questions, but understanding why it was the answer and where that answer came from. Good thing I did because most of my test had questions I had not seen before, but I could figure out the answer because of similar facts or rules. I had down cold 102/103 and where to look that up easily. Made it much easier on me on the exam. Also I thought the PDF of the MPEP available for the exam was hard to navigate after getting used to looking at the PDF on my MAC. So just be prepared to have to make some adjustments. The first part half of the test was definitely more difficult than the afternoon session, part of that could have been adjusting to the test and PDF MPEP.
You are doing yourself a disservice to not use this website, really helped me to feel prepared!!! Thanks to everyone that contributed hopefully I can contribute more if I can remember questions.
To be clear, if you email Bfusion asking for his spreadsheet, he will now require you sign an NDA and pay him $85 for access to the spreadsheet. His post 5 days ago looks like it is free, but it isn’t. I recognize that it took Bfusion a lot of time to prepare the spreadsheet, and it is probably worth the $85 if you have enough time before the exam. However, I just wanted to post here so anyone else isn’t surprised and disappointed.
For everyone that gives back to the community here, thank you very much! I just found this website a few days before the exam and it has been incredibly helpful.
Adam,
Thanks for updating the post roll. It seems my post back on July 26, 2012 is now long buried and so people aren’t seeing that yes, my materials now cost a little.
This was the post:
Hi All,
If you are interested in the spreadsheet, you can email me directly:
bfusion.uspto@gmail.com
(I’m currently asking $85 for my materials….which includes the spreadsheet, and two word documents (one is ~100 compiled questions of new material being asked on the exam, and one is ~10 pages of concepts to know for the exam being tested).
Best!
~Bfusion
Passed!
It is all a blur, and I didn’t have much time to review this website, so I don’t know all the lingo for the different questions. I saw about 15 questions that I had seen either here or in the 2003 exams I took. The questions I remember include:
Spanish phone
death of inventor after application filed
PTO requesting search info
indefinite claim using “high”
A couple german priority questions
The chemical claim to an intermediate “Y”
MANY 1.131 / 1.132 questions
Lip Gloss
Tommie / Jo
A couple about what you need original signatures for. Not sure if those were repeats, but they annoyed me 😉
Surprisingly, I only remember 1 question on AIA stuff (prioritized exam), 1-2 questions on Bilski, and 1-2 questions on KSR. Most of the questions seemed old and based off the MPEP.
Good luck to anyone prepping to take it soon!
Hey everyone, I thought I’d post my experience here since this site was such a great help! I just passed on Aug 24th. This was actually my second time taking the exam (first try was in June). On the first try I put in about 140 hours of studying spread out over 6 weeks, I ended up failing by one question (68%). With that in mind, 150 hours is probably the sweet spot to pass. I first read through Patent Law, by Mueller. I highly recommend this book, as I had no prior patent knowledge so jumping right into the MPEP would be way too intimidating. After learning the basics with that I went through the MPEP study guides on here. I took the 2002 exams (1x) and 2003 exams (2x) then the mambo tests going over each wrong answer in detail. I committed the 68 repeats to memory more or less. DO THESE EXAMS AT LEAST TWICE EACH until every question is second nature. I didn’t the first time around and thats probably why I failed. For the latest attempt I started up studying 2 weeks prior to the exam for about 60 hours total. I did 2002 (2x) and 2003 (2x) and mambo (2x) and went over the last 3 months of comments here to get any new questions that aren’t included in the 68 repeats. This is CRUCIAL, as I probably saw about 40 repeats. (I’ll try to post these later). Also, searching is really key, I looked up most of the answers on the exam 600,700,1200,1800,2100 are the most important of course. As for AE/KSR/Bilski just read through the supplements, there are only a few questions and easy to look up.
Still no luck in finding the so – called mambo questions…am I searching wrong? Any tips? Thank you!
The “amazing” Mambo5 questions are found in the comments under the “Study Guide” tab. (Go to that tab and then use Control-F to find “Mambo5”)
Just got my preliminary PASS!!!!!!!!!!!!!!!!!! Yar!! This site made the difference. I will post what I used from this site to study!!! The exam is an exhausting experience but the conversations over key issues on this site is what made it possible.
Make sure you study and know all the questions on the exam questions and concepts. I had about 15 repeats which made the difference. Try to go over the prometric tutorial in advance!!! The search was kind of slow. Also make sure you do all the Mamboo5 exams. I looked over all the comments on recent exam posts over and over again. I did the oct. 2003 and april 2003 about 4 times each!!!!
I had the Foil air plane
Japan 45 days
Tom Joe
A lot of appeal make sure you know your appeal stuff!!
examnier should cancel claims 1 and 2 and allow claim 3 only
one hundred forty seven
Mixture Y
Inventor Jones Dec. 2 1999 prior art date
Potter smith ( I had to one with the April 2003 question 12 and one was a all of the following except)
October 2003 #11 AM
October 2003 PM# 24
102G abandon suppressed and concealed and actually reduced to practice answer choice C. Facts (1) and(2)
April 2003 PM #44
October 2003 AM # 25
I will remember more once I get some rest long day! Study hard! You can do it. Practice taking the test in 3hours at a time just like you are in the exam. Best of luck!!
There was a prioritized exam question the answer I pick said something about only having 500 previous prioritized exam previous the six year old applicant filing. I went between this answer and another which said there were already 10,000 prioritized applications issued. 10,000 is the limit per year so I picked the one that said 500.
I also had a KSR question where the answer said something like: don’t use the graham inquiry to determine obviousness us the supreme courts KSR rational to determine obviousness.
I also had on 112 question out of the supplement.
Make sure you know the appeals process in and out there were about 10 -15 questions on appeal.
Make sure you understand the PCT process explained in the 68 questions cold.
I studied for about 3 months about 20 hours a week. Then I found this site and postponed my exam(for exactly 22 days) until I had time to thoroughly go through each exam and concept (all 68). The last two weeks I went over old exams and a 60 plus page study guide I put together based on the (68 questions – this was a big help).
Ultimately, you don’t want to just memorize the answers. You must understand why the answers on the old exam are correct. Look at the module answer. When you are look over the commentary on this site cross check peoples answers with the MPEP and make sure what they are saying is correct. The exam has many variants of old questions switched all around. So you have to know this stuff cold. Also do practice exams in loud places the prometric center is not all that quite! You have to be able to focus on your test questions while the clock is ticking. Before you sit and take the exam be confident ( this comes from getting 80%-90% correct on old exams) being arrogant won’t help you at all. Relax and if you put the time in you will pass!
What is the best material to use for learning Bilski for the exam? Is it the USPTO interim guidelines?
Steve,
I used the USPTO interim guidelines. However, there may have only been two questions on my exam at most.
Notice of appeal: MPEP 1205
• Preserves possibility of appeal and the pendency of the case while you wait t here from the patent office.
• Does not have to be signed
• Does not have to identify claims on appeal
• An appeal brief must be within two extendable months from the date the notice of appeal is received at the patent office
Appeal brief: MPEP 1206
• An appeal brief must be filed along with a fee within two months of the date the Notice of Appeal is received at the PTO. The time period may is automatically extendable (doesn’t have to be for cause) up to an additional 5 months (this has to be paid for so there is a FEE).
• A defective/noncompliant appeal brief must be fixed within one month or 30 days for noncompliance
• Until you file your brief you are under examiner discretion
• The brief must set forth the following
1. Identify the real party of interest (by license or ownership) – if this changes during appeal applicant has 20days to advise the Board of Appeals. UPDATE: IF THE APPEAL BRIEF DOES NOT CONTAIN A STATEMENT OF THE REAL PARTY OF INTEREST, THE OFFICE MAY ASSUME THAT THE NAMED INVENTOR OR INVENTORS ARE THE REAL PARTY OF INTEREST
2. Related appeals and interferences UPDATE: A statement identifying by application, patent, appeal or interference number all the prior and pending appeals, interferences or judicial proceedings (collectively, “related cases”) which satisfy all of the following conditions: 1) Involve an application or patent owned by the appellant or assignee, 2) are known to appellant, the appellant’s legal rep or assignee and 3) may be related to , directly, affect or be directly affected by or have a bearing on the board’s decision in the pending appeal. No statement is required if there are related cases. If an appeal brief does not contain a statement of related cases the office may assume that there are no such related cases.
3. A statement of the status of the claims
4. A statement of the status of all amendments
5. A summary of claimed subject matter of each UPDATED: rejected independent claim which shall refer to the specification in the Record by page and line number or by paragraph number and to the drawing if any, by reference characters
6. Grounds of rejection to be viewed on appeal
7. Arguments directed to each and every rejection with separate headings (reasonably identifying the ground of rejection being contested by claim number, statutory basis and applied reference if any) for each (you may want to cite case law because the board makes policy) with citations of the statues, regulations, authorities and parts of the record relied on.
8. An appendix containing a copy of the claims appealed
9. Evidence appendix: affidavits, photos of demonstrations
10. Related proceedings appendix
UPDATE: a appeal brief shall not include any new or non-admitted amendment, or any new or non admitted affidavit or other evidence.
Provide for the Board to take jurisdiction over the appeal earlier in the appeal process: Jurisdiction passes immediately following the filing of a (single) reply brief or the expiration of the filing period for a reply brief (whichever is earlier).
No longer require examiners to acknowledge receipt of reply briefs (since jurisdiction is already passed on, it makes no sense anymore).
Create specified procedures under which an appellant can seek review of an undesignated new ground of rejection in either an examiner’s answer or in a Board decision: i.e. for examiner’s Answer, it is a Rule 1.181 petition filed within 2 months of mailing of Examiner’s answer; for Board Decision, it is a request for re-hearing within 2 months of decision.
Provide that the Board will presume that the appeal is taken from the rejection of all claims under rejection unless cancel by an applicant’s amendment.
Clarify that, for purposes of the examiner’s answer, any rejection that relies upon Evidence not relied upon in the Office action from which the appeal is taken shall be designate as a new ground of rejection.
• Once you file the appeal brief there is no more examination. You are committed to the appeals process
Amendments after filing appeal brief: 37 CFR 41.33 (b)
• No longer examiners discretion
• Amendments filed on or after the date the appeal brief is filed may only;
1. Cancel claims that don’t affect other claims
2. Rewrite dependant claims into independent format
3. Affidavits will not be admitted without a showing of good cause why they were not previously presented and the affidavit must overcome ALL outstanding rejections.
Examiner’s Answer: MPEP 1208,1208.1, CFR 41.39 (In Response to the appeal the examiner will file an Examiner’s Answer; the answer may;
• Set forth new grounds of rejection by examiner: if this happens you can
1. Reopen prosecution and respond to the action like any action
2. Ask the appeal be maintained (reinstatement) and respond to the new grounds of rejection by filing a reply brief (however the reply brief cannot submit amendments or rule 1.132 affidavits or declarations.
Whether reinstatement or reopening prosecution is elected, no second fee for the Notice of appeal or the appeal brief is required
In response to the examiner’s answer you can:
• File a reply brief: You can file a reply brief regardless i.e. as matter of right. The appellant has 2 months following the examiner’s answer to file a reply brief. Any extension of time to file the Reply Brief must be for cause (Rule 1.136(b)). If the examiner wants to respond to the new issues applicant poises in the Reply Brief, he or she may file an supplemental examiner’s answer.
• Request a oral hearing – may be requested within 2 months after the date the examiner’s Answer is sent and the usual fee is paid. This 2 month deadline is only extendable for cause under Rule 1.136(b). If an oral hearing is not requested timely, it is waived and the appeal will be decided upon the papers
IV.REQUEST FOR DESIGNATION AS NEW GROUND OF REJECTION
• Appellant cannot request to reopen prosecution pursuant to 37 CFR 41.39(b) if the examiner’s answer does not have a new ground of rejection under 37 CFR 41.39. If appellant believes that an exam¬iner’s answer contains a new ground of rejection not identified as such, appellant may file a petition under 37 CFR 1.181(a) within two months from the mailing of the examiner’s answer requesting that a ground of rejection set forth in the answer be designated as a new ground of rejection.
Supplemental Examiner’s Answer:
• May be filed in response to any NEW issue raised in the reply brief
• This supplemental examiner’s Answer many not include a new ground of rejection
• Applicant may file a supplemental reply brief to said supplemental examiner’s answer – the applicant gets the final word
Board of Appeals Decision: 1213, 37 CFR 41.50, 1214.01, 1211, 1215, 1216
• The board of appeals may:
1. Remand to the examiner for – further consideration, further search, further consideration of an amendment. Upon remand the examiner may submit a supplemental examiners answer. Upon remand the applicant may reopen prosecution or file a reply brief. The remand can be to applicant and the applicant has 30days to respond to the board.
2. Issue a statement, which constitutes a new ground of rejection. If the board of appeals issues an NEW GROUND OF REJECTION the applicant can have the ask the examiner to review the new ground or have the new ground reviewed by the board:
Submit an appropriate amendment of the claims so rejected or a showing of facts, or bother and have the matter reconsidered by the examiner. If the examiner again rejects the claims with the new showing the applicant can again appeal to the board
The applicant can have the new rejections reconsidered by the board of appeals
• Following a decision of the board of appeals:
1. The appellant has 2 months to file a request for rehearing. Extensions of time must be for cause (Rule 1.136 (b))
2. The appellant can file a continuation (Rule 1.53 (b) or 1.53 (d) or RCE) at any time during appeal and expressly abandon the parent (53 (d) or RCE) or continue the appeal. (53(b))
3. The appellant may at anytime withdraw the appeal but unless there are claims allowed, such withdrawal results in abandonment of the application.
4. An applicant dissatisfied with the decision of the Board of appeals my seek review by the court of appeals for the Federal Circuit (C.A.F.C) or the U.S. District Court for the district of Columbia(a bit more flexible under the federal rules as he or she may elect. Must appeal within 2 months
• If the Board of appeals decisions is ½ claims accepted and ½ rejected you can:
1. Appeal what was not allowed to the CAFC
2. Take what is allowed and roll with it
3. Do nothing this will not result in abandonment
• The Board can also state that a claim may be allowed in amended form and the statement is binding on the examiner.
Post- Appeal: 1215.02,1215.04
• If no appeal is taken from a decision of the Board, the file is returned to the examiner.
• If no claims are allowed, the application will become abandoned as of the deadline date for an appeal to the CAFC or District court
• If claims are allowed and the appeal is unsuccessful or withdrawn or dismissed for failure to file an Appeal brief the examiner will cancel the rejected claims and send the application to issue.
• If no claims are allowed, but one or more claims are allowable, except for dependency on a rejected claim, the application is abandoned.
1214.06 Examiner Sustained in Whole or in Part
I. NO CLAIMS STAND ALLOWED
Claims indicated as allowable prior to appeal except for their dependency from rejected claims will be treated as if they were rejected. The following examples illustrate the appropriate approach to be taken by the examiner in various situations:
(A)
If claims 1-2 are pending, and the Board affirms a rejection of claim 1 and claim 2 was objected to prior to appeal as being allowable except for its dependency from claim 1, the examiner should hold the application abandoned.
(B)
If the Board or court affirms a rejection against an independent claim and reverses all rejections against a claim dependent thereon, ** after expiration of the period for further appeal, >the examiner< should proceed in one of two ways:
(1)
Convert the dependent claim into independent form by examiner’s amendment, cancel all claims in which the rejection was affirmed, and issue the application; or
(2) Set a 1-month time limit in which appellant may rewrite the dependent claim(s) in independent form. Extensions of time under 37 CFR 1.136(a) will not be permitted. If no timely reply is received, the examiner will cancel all rejected and objected to
claims and issue the application with the allowed claims only.
Just took and failed…66%. Hating self/the world. I think I had the same questions as JLG MT40 and Eric. Went down to the wire with a minute left of each session. Back to the drawing board! I will try to recall unlisted specifics tonight.
I am selling my PLI patent bar study materials, if anyone is interested in more details please shoot me an email at: patentstudy@yahoo.com
btw if i rush out my app to retake in the morn, will i be able to squeeze in before the test change on oct 2? i just withdrew the cashiers check
I’m not certain, but isn’t there a 6 week wait after not passing? Don’t want you to go through stress for nothing.
Also, what do you think you did wrong/could have done better? 66% is just infuriating. Sorry.
Like JLG’s test, despite the many repeats, there were SO MANY questions with I,II,III,IV, II and III, or I and IV, which required major lookup time. It was definitely draining. I think John White said it best with “You must be a 102 machine” by the time you take this test. Well, I would add “You must be a 103, 1.131, and 103 machine” to that statement. I may have burned an unnecessary 10 minutes looking those up (but like those before, would probably have looked them up anyway to be certain). What else…appeals before the board and examiner remand were major. I also foolishly picked the EPAS answer choice instead of express mail, despite reading JLGs report that morning. Oh, I have but did not do Mambo5s tests…that might be the factor that would have pushed me over the mark. I only did 2000-2003, repeats only, and 68 new concepts.
Hmm interesting, good to know!
Have a little over a week before the exam. Will take those things into consideration!
Hello all, just got my prelim pass on Wednesday, Aug 29th. I discovered this site 3 days before my test and found it incredibly helpful, so I think it’s only right that I do my part and contribute. Please forgive me as my mind is mush right now and I won’t be able to recall every question that I got. The good news is, I had many many repeats and/or questions I was already familiar with from this site. Here are the one’s I remember:
New Questions:
Q15) Spanish Phone
Q17) Velcro
Q8) Missing Parts, PCT (2nd question)
Q19) PCT Mexican Nationals
Q25) Electric Fan (dealing with insignificance of scale of drawings)
Repeats:
10.03.02p
10.03.38p
10.03.18p
One of the Smith and Jones variants
10.03.31p
10.03.06p
10.03.13p
10.03.50a
10.03.44a
10.03.34a
10.03.26a
10.03.23a
10.03.22a
10.03.07a
04.03.48p
04.03.30a
Others I recall:
Two Potter questions
Some new matter question I have seen before
At least two questions re: 103 exception
A few questions on the new Bilski and KSR stuff (most of which don’t require lookup)
One question on the new inter partes reexam (when to apply SNQ v. Reasonable Likelihood of Success)
Can a party file two reexam requests?
A couple of fax questions (just try to learn as much about it as you can)
Laurel and Hardy question
An ADS question
Intermediate laminate/layer question
That’s about all I’ve got right now. I may have made a mistake or two above, but I’m pretty sure I had all of those, and some that I can’t remember. All in all, I would say that I had seen 35-40 questions that I was familiar with.
Recommendations:
KNOW THESE REPEAT QUESTIONS COLD. And not just the answers, but the MPEP or CFR sections associated with them. Even having seen so many of these before, I still needed to look for answers and it helped tremendously to know where to look.
By doing this (assuming you get 35 repeats), you can safely assume that you’ll get at least 32-33 of those repeats right. That means you only need around 37 of the remaining 65 to get a passing score. That’s well under 60%, which is manageable.
I’d also like to point out that the test was actually still very difficult. I received a lot of questions I had never seen before covering topics not discussed in the PLI review materials. This means it is imperative to know these repeats so that you can use the extra time to look these others up. Even with 35-40 repeats, I still only finished with about 5 min left each half, before I had a chance to go back and look over my answers.
I am fully aware that without this site, I probably would not have passed. So I thank all of you that have contributed.
Congrats to those that have passed, and good luck to those taking it soon.
Hi! Anybody can tell me what is the typical time for OTD to approve my application (category A)? And in chicago or nearby area, what is the current reservable date?
Obviously I am trying to get tested before the new law been tested. Oct 3rd, correct? Any idea how different it could be? And is there any review course that already started to cover that? Thanks very one!
I passed the exam last week! Many thanks to all who contributed to this website. A special thanks to Bfusion for all his support and incredibly useful study materials. Here’s a listing of questions that I encountered.
147 claims
Broom
Potter (both)
Costa Rica PCT
Spanish phone
Foil wing airplane
Mixture Y melting point
A lot of dates, must select priority date – it’s the date of nonprovisional.
Small entity, file good faith and pay difference
Trade secret
Death after NOA – Barbara (dead one’s personal rep)
Chemical compound for depression
Best mode
examiner must cite references
requester, SNP – same requester cannot submit for same question of patentability
old man in hospital. Track I, 500 applications
examiner rejects 1-3, practitioner appeals 1 and 3, BPAI review all 3.
new argument- Judicial
India – person writes US app, she has duty to disclose
japanese – transmit to IB
German reissue, no need for English translation
Smith/protest
Article 19, amendment to the claims only
ABCD
most correct to claim domestic priority – 1st sentence of spec or ADS
combination/sub
CoC, reissue – clean copy
Just a couple of the many questions I’ve not seen before:
Which of the following may not invoke a 112 6th paragraph?
a) module for
b) device for
c) component for
d) all of the above
e) none of the above
Careful! This is a NOT question. All of the above may invoke 112 6th, thus, the correct answer is none of the above!
June 2005 design application filed. What would be the proper response to a final action to avoid abandonment?
a) RCE
b) Something
c) Something
d) Amendment
e) authorization for deposit/payment at time of filing.
I figured the correct answer was amendment since we have to respond to final office action.
102b question: I’m not sure if it was a NOT question but some of the answers included:
a) “on sale” must be “public”
b) Someone from the US makes an offer to sale invention to another in Germany
c) One invented a rocking horse, person other than the inventor sold/profited from the horse w/o inventor’s knowledge.
d) Selling of rights to the invention.
102e questions knowing what the correct priority dates are for apps filed Dec 1, 2000 and another question for an application filed Nov 28, 2000.
Chemical/chemical formulas in spec/claims
Rapidity – is evidence of ordinary skill in the art (KSR)
What is required for filing of a provisional?
Requirement for information, 37 CFR 1.105 – I wasn’t sure what they were asking, it took a lot of my time!
How do we make a claim allowable because it was examiner said it was too broad? I chose to amend to include particularity of compound in specification (KSR)
A lot of questions asking all are correct except.
which of the following are correct: One answer was teaching-suggestion-motivation may be used to determine obviousness? Know that an examiner can still use TSM although not as the sole reason.
How may applicant overcome obviousness rejection? Correct answer dealt with the examiner failing to provide evidence that he used any one of the 7 factors.
Best wishes to everyone taking the exam. If I can pass on my 1st try, you can too! Thanks again to all of you.
ZAN! Congrats on passing!
Would you kindly share the study matrial what Zan is referring in the above? I am scheduled to have test on 9/12 and need a short summary beforehand. My e-mail address is kenchoi06@gmail.com. Thank you in advance…
I think the 102(b) question that Zan is referring to is a which of the following is a 102(b) question, although I’m not sure, and the answer is C. USPTO doesn’t care if you know whether you know your invention is being sold for the 102(b). There is a question in one of the 2002 exams about some lady showing some car invention to someone else in confidence, but that company sold cars using the invention in the USA without her knowledge anyway, and it was a 102(b) bar because she filed her application for the invention a year after the car invention went on sale. As to D, an offer of sale of rights in the patent is not a 102(b). As to A, offer of sale does not have to be public, one private offer of sale, even if unsuccessful, qualifies as an offer of sale under 102. As to B, an offer of sale has to take place in this country, so an offer of sale in Germany doesn’t qualify.
Hello there! I know this is kinda off topic but I
was wondering if you knew where I could find a captcha plugin
for my comment form? I’m using the same blog platform as yours and I’m having
trouble finding one? Thanks a lot!
Dear Bfuson, would you kindly send me a copy of study materials what Zan is stating in the above? I am scheduled to have a test on 9/12/12 and need a quick summary like yours before the testing. Thank you in advance.
Sorry but here’s my email address: kenchoi06@gmail.com
Selling PLI Patent Bar Review Material 2011 Version. Brand new.
Please email potentialpa@gmail.com if interested.
I gave the exam on 9/5 and passed.
Preparation: I took the PLI patent bar course. John White is a great teacher and introduces concepts really well. It takes time to learn, so spend at least 2 weeks on just learning the material and grasping it. Then take the exams. I did the 02 and 03 exams 4 times. I did not use Bfusion’s spreadsheet. I did have Mambo5’s exams, but didn’t get time to do it (I am sure Mambo5’s exams are good to do and wish I had time to do it).
I saw quite a few PCT questions, a few appeals. About 5 questions on the new material (Bilski/KSR). A few on 131 affidavits, 102 and 103.
Repeats:
Moondust
ABCDE
Laurel
102(g) I and II
Parking Meter
Tommie and Jo
Potter (both)
German Reissue
Chemical compound depression
I’ll post more as I remember. My piece of advice is this: 1) understand the material 2) take the 02 and 03 exams (a few times) 3) go over 1200, 1800 4) read 102, 103, 131, 132 in 700 and 2100 5) Be familiar with the new supplements 6) Use the Patent Rules Document in the exam to search, it really helps save time.
Hey Lisa,
Any chance you’ll be selling your PLI materials?
Hey Lisa,
Where did you find Mambo5’s exams? I have been looking and couldn’t find them. I am taking my exam on 9/25 and need all the help I can get.
Thanks!
You can find Mambo5’s exams here:
Search for Mambo5’s comment on the “Study Guide” tab of the website.
Definitely recommend the PLI course. Especially with all the new changes. I don’t have PLI materials for sale though.
Selling PLI Patent Bar Review Material from 2006 (Complete Set). I just used it to pass the exam 9/5/12.
mazinga87@gmail.com
Just got back from exam in Northern NJ. I want to first say this website was invaluable (prelim pass).
As to content, the morning was a bear. Just finished it with 5 minutes to go. Very few repeats and detailed questions. First question was about interviews (you may not have an interview solely for “sounding out the examiner.”
Had lipgloss, the second question of tommie and jo (not the first) as in one of the exam; the ubiquitous spanish phone utiliy/design problem.
CD ROM (51 tables, each 1/2 page), no duplicate CD
Examiner investigating deceptive intent
PTA question
Know whether design patents are eligible for RCE practice.
Refund due to conversion to small entity status: refund within 3 month of assertion NOT extendable via 1.136 (one answer)
Lots of appeals (i think some were betas)
4-5 PCTs; know in the US, you can go past the 30 month (or so I answered)
Canceled matter (for bad spellers, its one l, not two) is available under 102(e)
There was a question about 102(d) regarding “Patented” in a german application (that is the key to the question).
Trade secret question.
and for gosh sakes, know all about MPEP 715 (1.131)
had the question about ensuring XYZ appeared on the face of the patent. I know its a repeat.
not enough death for my liking.
For the new stuff, 2 bilskis: the encoded signal and a business method rejectedd as abstract.
Had an obvious to try question (KSR)
I had the Track 1 question (4 ind cl. 30 total)
Indefinite claim using “high”
102(f) question (using after filing date art)
One last thing, this exam seemed to be all about how quick you could search and trick you. One question I remember vividly said in a joint inventor situation, you use 1.42 for a legally incapacitated inventor (true answer is its 1.43).
So be careful out there and good luck.
What is the “encoded signal” here for Bilski? Searched the supplemental materials in case there was such an example and did not find anything.
Thanks!
Never mind, I think I found them in some comments.
Hey everyone. I’m set to the take the test in a week. I’ve been looking over recently reported question and have noticed the “Foil airplane” question is mentioned often.
I can’t find any details on the question. Any help?
Justin,
Hope it helps. Good luck. Mine is Sept. 13
Q) Toy Airplane with Foil Wings (10.03.46p)
A variant question #46 citing a Toy Plane with Foil Wings from the October 2003 (pm) exam is in the Prometric database.
Original Question: 46. A primary examiner is examining a patent application. The application includes a specification and a single claim to the invention that reads as follows:
1. A building material to be used as an alternative to brick in the construction of a house, said building material comprising compressed refuse, the majority of which is wood.
In the specification, the inventor explains that the wood to be used in the inventive building material should be balsa wood. According to the specification, balsa-containing building material has the advantage of being lighter than brick. In a first Office action mailed to the registered practitioner representing the inventor the single claim was rejected as anticipated under 35 U.S.C. § 102 over Patent A. Patent A issued more than one year before the effective filing date of the application, and teaches a building material to be used as an alternative to brick in the construction of a house comprising compressed refuse, the majority of which is pine. The practitioner replies to the first Office action by arguing that the invention is different from that of Patent A. According to the practitioner, the inventor uses balsa wood, not pine. The claim has not been amended. Which of the following describes how the examiner should proceed in accordance with the patent laws, rules and procedures as related in the MPEP?
(A) The examiner should allow the claim.
(B) The examiner should allow the claim only after including a Reasons for Allowance pointing out that the inventor argues that her invention is directed to using balsa wood, not pine.
(C) The examiner should issue a Final Rejection again rejecting the claim as anticipated under 35 USC102 over Patent A.
(D) The examiner should reopen prosecution and begin anew, this time searching for a reference that shows a building material containing balsa wood.
(E) The examiner should withdraw the rejection but issue a new Office action this time rejecting the claim under 35 USC 112, second paragraph, because the claim is broad enough to encompass using pine.
ANSWER: (C) is the best answer. 35 U.S.C. § 102; MPEP §§ 2111 and 2131. MPEP § 2131, under the heading, “To Anticipate A Claim, The Reference Must Teach Every Element Of The Claim.” “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Here, every element of the claim is found in Patent A. See MPEP 2111, under the heading “Claims Must Be Given Their Broadest Reasonable Interpretation,” where it explained that “[d]uring patent examination, the pending claims must be ‘given the broadest reasonable interpretation consistent with the specification,” and cites In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) to explain that “reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope ofthe claim by implicitly adding disclosed limitations which have no express basis in the claim.” (A) and (B) are incorrect. MPEP § 2111. The claim, as written, is not allowable over Patent A since Patent A disclosed every element recited in the claim. (D) is incorrect. There is no need to search again for a building material, this time looking for balsa wood. The claim has not been amended to be directed to balsa wood. Since it still broadly recites “wood,” Patent A that discloses pine remains germane and anticipates the claim. (E) is incorrect for one or more reasons. It is incorrect because it wrongly agrees with the practitioner’s argument that Patent A is poor reference. It also is incorrect because it seeks to reject the claim over 35 U.S.C. § 112, second paragraph, for indefiniteness. The claim is clear on its face and there is nothing indefinite about what the claim says. This answer makes the mistake of confusing breadth with indefiniteness. The claim is broad but it is definite.
Variant question with a toy airplane with foil wing:
Applicant claims a toy plane whose wings are covered in aluminum foil. The spec describes a toy plane whose wings are covered in foil but whose body isn’t. Reference discloses a plane that is covered entirely in chewing gum wrapper, which includes aluminum foil and another material. Claim is rejected, and applicant responds by arguing that covering only the wings in foil provides useful aerodynamic properties, and therefore the claimed invention is distinguishable from the reference. How should the examiner respond? I said the examiner should maintain the rejection b/c the claim is broad enough to include a plane that is covered entirely in aluminum foil (limitations present in the spec will not be read into the claim if not expressly recited A patent of a paper airplane with aluminum foil (I think) wings. The prior art is a plane covered with aluminum I think. Is it patentable? similar to Oct 2003: PM 46 (airplane with foil on wings, prior art has airplane covered completely in chewing gum wrapper) I recently reviewed this answer at the PTO. Yes, the examiner should maintain the rejection in view of practitioner’s arguments. The answer description points out that the claim is open-ended (“…comprising wings covered in aluminum foil”). Thus, the prior art anticipates the claim.
Thanks Brenda. I appreciate it. Good luck to you too!
Lisa don’t know if you are still checking this website but I just passed using the 2011 PLI course and would be interested in selling it. I also have the 2004 PLI course which i had bought a while ago but never took the exam. The 2011 take home course has all written materials but the lectures are online and am not sure how whether/how you will have access to them. The 2004 has all of the lectures on CDs which I have and are very similar to the 2011 lectures. I also have the written materials for the 2004 course. However, it is also my understanding that the exam will start testing the new materials in early October. If you are still interested send me an email at 15edgare@gmail.com
Sorry didn’t mean Lisa. I mean Danielle. Congrats on passing Lisa.
I recalled a fragment of a question involving Express Mail from my exam on 8/30: it involved the propriety of an Express Mail paper that had an illegible/unindentifiable label on its face. The minute details escape me at the moment but I think the relevant rule is: a proper Express Mail mailing must have the express mailing number AND/OR certificate of mailing label thereon (reference: 500 PLI materials…check out the MPEP for correctness)
CFR 1.10(b) says that
(b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the “Express Mail” mailing label with the “date-in” clearly marked.
Is this what they were testing?
I’ve read references to the Mambo exams on this forum. Where can I find this exam, and how is it being used to study? Is it just a compilation of old exam questions or something else? Thanks.
Mojo,
The reference to “mambo exams” are a compilation of old exam questions rearranged in different order. A previous test taker created 4 tests by randomly picking questions from old exams.
They can be found by searching for “Mambo5” on the “Study Guide” tab of the website.
Hi,
For prioritised exam limit is 10,000 annual. Which was earlier 500. Is there any limit for accelerated exam too. I don;t know I am little confused as I read in one of the question wherein it says “answer is 500 beware one of statement would say 10,000″Please provide clarity.
Thanks in advance.
So question is Old man goes to hospital and gets an idea for an invention on medical dispense system. He wants USPTO to review invention within 12 months.. So can his application can be filed under prioritised examination with 4/30 claim and the applicant limit is 10,000 or 500 ?
Please provide solution.
Thanks
Barexam
500
Thanks Brenda.
I don’t know how you could pass that test w/o this site. To those who only study a month, I can’t relate. Took me 3 tries from first attempt in May (where I didn’t have this site) to Sept. By the 3rd attempt the morning session took about and hour and the afternoon and hour and a half. By the way if you fail I found by the time you get your application back in …which you can turn in without transcripts. You just complete the app and mail it in. You don’t need any attachments. By the time they get back to you (about 2 weeks) the prometric testing center was booked. So it worked out that it took about 60 days to get signed up to take the test again. I think I paid PTO $240.00 to apply and then $250 to prometric. So it’s a 500 buck proposition to take the test again. Each time I would think what more could I study. But each time I just went thru each qeustion again, picking up the little things I missed the first or second or third time. I hope this is an encouragement for those studying. I have a law office and 3 children so for 9 months I spent looking at this stuff after baseball, soccer, or while in the midst of preparing for a trial, taking the family vacation. ….keeps you sober …. so it can be done.
Questions. All the repeats were there. New questions were a thermos with some material that had to be heated to 180 degrees. Rejected as obvious. Which claim overcomes. My choice the claim amendment which discusses the specific material (which is in the spec) and that its this material that disperses the heat. I have no idea on whether its correct or not. But the cool thing about this site is folks can build on this foundation and clarify. Some people seem to have photographic memories. I’m not one of them. Sorry…..
Another question about a design app that has a final rejection. What can you do to avoid abandonment. Not an rce 114 says not available. Appeal and no fee. Looked good to me but I saw in the mpep that its defective not to have the fee. So what’s left? I went with amend with prima facie case to comply with examiners suggestion. I don’t recall the other answer choices. I have no idea why pf case in amendment was in there. Maybe others can fill this in as well
I had both verstions of the chemical compound question. The first one had the applicant in possession of the chemical but he could not tell anyone how he made it and prior art silent. So he argued some prior art that showed the phosita could make it. I said remove both rejections. The next version had the owner in possession but no phosita could make it. I said don’t need the written description objection since he was in possession but will see the objection on enablement.
Mollybednum sp? question. Gave ranges for molly like 5 to 8%. Prior art has a data point in the range like 7.5 o its objected to. How to overcome? I saw that it was a 102b rejection so I went with the only answer that allowed you to amend to something like 9%.. I hated seeing questions on the cite where the questions were fuzzy but its my best recall….took the test 3 times so maybe you can see why..
Lots of 112 first, second and 6th para questions. Taking the test so many times this version had lots of 112 questions. The only hit to know I got the questin right was the supplement where it lists the items that invoke 112. The question I had was which one doesnt invoke….they all did so none of the above. There was one where I had hoped they were asking me the 3 prong question discussed by others on the site. I couldnt’ make the connection on test. I wanted it to be the 3 prong test but it didn’t fit the other 112 questions or at least I didn’t think it did. It asked about limiting claims….
There was what I thought was going to be a restriction or double patenting question. Something about an app rejected b/c a prior patent issued w/n 6 months of filing. It does not have a common owner or assignee. Double patenting rejection? Provisional double patenting rejection? I went with flat out 102e…rejection since the patent was by another….???
Do you get a refund when you convert the non provisional to provisional. This was in some prior comments as yes. I did the look up both b/f and during the test and read specifically you don’t. So unlike most stuff on this site I went against the prior test takers and said no
there expungement question was there. I couldnt go with the examiner says its important’ and it stays in the envelope absent the petition ….I felt like important isn’t in the mpep rather material to patentability. So I went with the one that says if he doesn’t make it of record it will stay in the envelope. I don’t like that answer either since I would think if it was mailed in its in the record….but the other choice was mail in only material to patentablity and not what may be helpful….. None of the choices fit wthat I wanted to see i.e. if its material to patentability it wont be expunged and the envelope can be read.
I think there was one about when you can use 131 affidavit to overcome a 103a rejection..
Good luck to all. I’ve been reading this site since May. Some contributer like Maggie and big voodoo were key. You can tell pretty quickly who was kind enough and smart enough to help the rest of us out.
i had the question about the express mailing label. it was correct. the papers though, didn’t have the label. do you get a filing date? i did a look up and read that if there is a discrepency between the papers and the label you can file a petition to get a date but where there is no date on the correspondence they won’t forgive you and you don’t get a date.
there was a shortened statutory period (2 months) question where applicant does a certified mailing the day before its due. then examiner mails the advisory action the next day. as if they crossed in the mail. i went with the answer the applicants extension if he wanted one would be counted from the date the advisory action mailed. facts are a bit of a mess here. hopefully others can clarify. but i recall thinking i hadn’t seen any examples of replies via certified mail. what date do you get. you should get the date you said you placed in the mail etc… a few more sample questions would help solidify the cert mail and when its timely etc…
i got the epas questions covered in 300. i dont recall too many talking about it but the question was all true except..i went with the one that said if your electronic submission was not good you could just do another electronic submission. i don’t think so…i think you need to fax.
I sent my registration for the exam almost two weeks ago and still no response from the USPTO. I just now started to go over the old exams, repeat questions and quite frankly I dont feel ready to take the exam. However, the changes in October are weeks away and I’m not sure if I should wing it and try to pass before the changes or keep studying and take the exam in November? Does anyone know how much new material will be added post Oct 2nd? Thanks in advance.
If I were you, I would go ahead and take it before Oct 2. At least you will be tested on known and oft-repeated material. Oct 2, I believe is phase 2 of rule additions to the exam, and March 16 will be the final phase where everything will be fully rolled out into the exam (is this true?).
Got my preliminary pass today! FEEL AWESOME AND RELIEVED. And it’s my birthday, what a wonderful present. 😀
Will continue to post tomorrow as of any repeats and new that I can think of, and also some thoughts…I have 2 kids under age 4, so all the parents out there can understand.
Here is the list off the top of my head
Both Potter q’s (and I FORGOT the answer to one, ugh!)
147 Claim counting Q (I double checked everything to make sure no minor changes)
Compound Y and Methods Q1 and Q2 (not sure what the name is in repeats/new)
Where does a PCT get published (I got this wrong when I checked during lunch, I think the answer is national stage in US)
Japanese 45 days expired to fix non publication request
Japanese and PCT
Suspension of action of attorney/agent
Affidavits (1.131 and 1.132)
Obviousness (HATED these, had to do lots of lookups)
Track 1 – 500 for prioritized Old man in hospital
Shoe polish
Broom (?)
What can/can’t be faxed (national stage)
Duty to disclose – at least 3 diff q’s! I was surprised
Patent application outsourced to India (I said can’t export)
IDS after issue fee paid (I looked this up at the end and changed my answer, said PTO will just put in file)
Design patent (6 months to file in US)
What can/can’t be filed to get filing date for: provisional, non provisional (this was asked in 2 different forms)
New question about Thermos with material heated to 180, rejected, how to get around it – one answer was add “commercial _____material” which I did not choose.
Mollybedenum
112 (1, 2 and 6th pp). Lots of enablement that required lookup.
112 6th pp – which terms do not invoke? (I think it requires “means” language, so I said none of above, answer e – I think answer a. was “module for”)
Refund when convert non provisional to provisional. I said no, just because I feel like the PTO wouldn’t be so forgiving with money. 😀
Express mailing label and correspondence papers (they had 3 different choices, I, II, and III, each with examples of situations that had the express mailing # on the label, and with something not on the correspondence papers)
Shortened statutory period 2 month rule (If you took the PLI course you know what 2 mos rule means) – If your reply to the SSP is in 2 months, and then they send an advisory action, then the extension time is calculated from the AA and NOT the SSP)
EPAS, I do not remember the details, but I looked it up (I think in 300 if there was something about assignment in this question)
No bilski.
2 KSR questions, one where I was completely stuck. It asked what does an examiner NOT have to consider in an obvious to try obviousness rejection. Looked “obvious to try” category in the supplemental reference materials. The question asked which one is NOT in accord… I found 3 of them word for word under obvious to try, so those were out. Another answer said clearly articulate or something, which I also ruled out . Then the last one was the teaching suggesion motivation test. I decided on this one because when I searched in 2100, it hinted at something like not a requirment anymore (brain is fog here).
Lots of 102(e), (a), and (b) in various forms (together or seperate). One 102(d) question (what is NOT a requirment, I said doesn’t need to be published)
Exam was very similar to commenter “t” above.
Will post more tomorrow.
Hi VenuSareen,
Congrats on the pass! I am scheduled to take the test tomorrow so just trying to get some last minute studying in. How many repeats from the 2000-2003 exams would you say there were? Also, what did you end up putting for the Thermos question? Any help at all would be much appreciated. Thanks!!
I would say easily 20 repeats.
I am racking my brain about the thermos one. Okay so in my own words (not the exam wording) – something about a thermos with a covering that keeps the drink heated to 180. Something mentioned in disclosure (not in the claim, it was generally directed to a thermos with covering) that said covering could be made out of a particular material. Examiner rejected on reference found with thermos that heated to 180 made out of plastic (?). I said amend claim to limit with the material mentioned in the disclosure to differentiate from the reference.
Last min studying: go over PCT rules + 102e. Appeals can be found on the fly in the MPEP, but PCT and 102e are too “technical” to be found in 3 minutes per question.
Hi Venu,
Congrates!! and Happy Birthday …
I will be taking the exam on October 26 (do expect new AIA questions), I have omniprep course and longacre book. Would appreciate if you provide any suggestions.
Thanks Vibha.
See below, I am going to outline everything tonight on here. Take care.
Thanks for the suggestions VenuSareen. I greatly appreciate it. Almost there. Yikes!
Took the exam @ Prometric 9/12/2012 and passed. There were a couple of themes that kept repeating, to the exclusion of more “normal” questions from 700/2100.
– Very few repeats (maybe 5, and some of those were variants).
– Repeats that I can remember were: Tommie & Jo (24), and Spanish Telephone.
– Very heavy on Ex parte reexam and appeals procedures. I swear they asked two very similar questions about new grounds for rejection.
– Also quite a bit of PCT.
– Very few questions on timelines/deadlines, which was a huge surprise.
– Majority of questions I got focused on what items are required with what filings, which meant that I was diving into the MPEP a LOT. Get good at looking stuff up!
– Quite a few on inventorship and representation as well.
– 3 design patent questions, no plant patents.
– 3 or 4 101/Bilski questions including a really snarky business method one with a bunch of “management-speak buzzwords” where the answer was “add a machine”.
– 1 KSR
– a couple Graham factors questions, but some of those were wrong answers to throw you off of the actual 102 question.
– one stupidly easy MDC claim counting question.
– I’m guessing that the ones I swear had either no right answer, or multiple right answers were beta. I was half expecting the beta questions to explicitly mention “post-AIA” to make them easy to spot, but no such luck.
Definitely not the test I was studying for, but getting familiar with the MPEP got me through nonetheless! Make sure you know appeals, reexam and PCT!
Congratulations for the preliminary pass! Are these repeat questions from 2002-2003 or 1999-2003? Thank you!
Omphalos,
Congratulations on your passing the exam.
Couldy you elaborate on the easy MDC claim counting question you got? What was the answer to that? Also, what method did you adopt to familiarize yourself with the MPEP? Did you read any specific chapter for easy search?
More stuff I’m remembering:
trade secret
means plus function of door handle
chemical claim (both versions of headache depression)
2 month rule for office action
notice of appeal
terminal disclaimer (in general)
Piecemeal
Multiplicity – The question was about having 300 or so dependent claims, confusing the examiner. One of the answers was reject as prolix. I DID NOT choose that, but that was my gut. When I check in the MPEP under piecemeal, there was another section after it mentioning how the examiner should TELEPHONE the practitioner to discuss the multiple claims and then send him a rejection in the mail. I chose that one bcz it was word for word from the MPEP.
Reissue/Filing Amendment
—————————————————————————————————-
FYI
I used PLI live course + studying over the course of 3 months at home. Studied an average of 4 hours a day, every single day (a few days off here and there for family stuff).
At the PLI course, they had a practice exam at the end of the class, and I scored 44%. I had no clue about anything there, and barely did any of the homework assigned etc. (I have a background in patents but none of that really helped here).
First, I spent time going through each of the study guide notes from PLI and creating my own notes from them. This took a while, but it got me reading the notes more actively.
Then I took a few sample sets of questions from Patware (the PLI online software that has questions to practice – I really like this software). After that began listening to John White’s lectures on the PLI online course site. I went to the important chapters first, taking notes from his lectures. He is really good at explaining the basics. I was not remembering 102 and the various sections easily until he said things like “activities in the US only, patent and printed pubs anywhere” and that 1.132 and 1.131 could only be used for 102a, 102e and nothing else.
Went through the supplementary information (KSR, Bilski etc) and that took a week easily because it was so new to me. I did not do the prime questions in the patware program at all, nor any of the homework. But I did do the questions at the end of each chapter in the study guide. Also did not read 2100 like PLI suggests. Only read through Appeals, but i don’t think it helped any, still had to do lots of lookup on the exam.
Spent a week on this site going through all of the 68 new questions.
The week leading up to the exam, did the Mambo5 sample tests on this site. I printed them each out and did them in “study mode” meaning I did not time it, I went through each question carefully, probably 3+ hours each. This was very helpful!
As the exam drew closer used two saturdays to do two full length exams (Oct and April 2003). Doing the full lenght exam was helpful in figuring out timing and how long before tired, etc.
For those utilizing PLI, please please send emails to John White (the director/instructor) if you have access/have paid for the program. I kept an email open and would type down questions as I found them, and send him a huge list of Q’s a couple times a week. Some of the q’s were silly now that I look back, but he is succint and quick in replying, even if my question was something like, where do I find the section for fax? Seeing his reply would just be another way to cement information into my head.
On walks in the neighborhood with my infant, I took notes with me. PLI has some checklist at the end of the study guide, those I took everywhere (doctor’s office visits, etc). This is an insane exam (felt more difficult than the state bar!) and I needed to use any time I could get! (Now to clean up this messy house…)
On the exam, watch the time, it counts down from 3 hours, and try to do 10 questions in 30 minutes. I looked things up as I went along if I thought it was an easy lookup. For things I did not know where to look, I marked it and if I had time went and searched. Morning session I had very little time left, afternoon session I had 20 minutes remaining to go back and check my answers. Moral of the story – look up as much as you can, even if you THINK you are almost right!
My computer also crashed, but the time resumes from where it left off, so no big deal. Also the proctor told me I could NOT make my grid sheet during the 10 minutes before the second session during lunch break (I made the grid in the morning during the tutorial with no problem).
Good luck! Thanks to all who contributed to this site, was very helpful!
Thanks venu really appreciate ur efforts.
Has the exam been updated yet? Looking at the USPTO website today, worries me. http://www.uspto.gov/ip/boards/oed/index.jsp. “The United States Patent and Trademark Office has updated the content of the registration examination. The updated examination includes provisions of the Leahy-Smith America Invents Act (AIA) that took effect September 16, 2012.” Is it just me, or are they testing new stuff earlier than expected?
Mojo, I don’t think so, because the website still says that changes are taking effect on or about October 2, 2012. http://www.uspto.gov/ip/boards/oed/exam/aia_regexamsourcematerial2012sep04.jsp
But who really knows. I am taking the exam on 9/25/12, so I’m hoping that the USPTO sticks to its promise of not testing the AIA until 10/2.
Just got the prelim pass, what a relief. Not that many verbatim repeats, but a good number of the q’s were variants/same concepts. Surprisingly, barely any new stuff aside from a couple of bilski ones.
My methods — pli written materials for background (the audio course and extra stuff seemed like a waste of time), repeats, and skimming 2100, 1800, 700, 1200. Try to do all the repeats on this site at least once — as a heads up, the new 68 take a loooong time to go over as comments are all over the place.
Repeats I can remember:
– indefinite high
– moon dust (love this q, takes literally a sec)
– laurel abbot hardy
– dram
– 34.9% obvious
– RR petitonable
– appeals – only indep claim 3 survives
– Tommie Jo
– parking meter
Also, good number of pct, obviousness, enablement, 102, and appeal type q’s.
Good luck all
Congrates NinjaVanish for the preliminary pass! Are these repeat questions from 2002-2003 or 1999-2003? Thank you!
These are repeats from 2000-03 as well as the new 68. Good luck!
Hi all!
I just got the prelim pass yesterday. Unfortunately, as NinjaVanish noted above, there were not as many repeats as I was hoping for (2-3 in morning; 4-5 in afternoon), but I was able to make my way through the exam by methodically searching through the MPEP and watching out for tricks in the wording of the questions. The best piece of advice that I have for you is getting real good at searching through the MPEP. The way I practiced this is by looking up the answers of the 2002-2003 tests in the MPEP so I had a pretty good idea where things were coming from. Also, BFusion’s study materials and Mambo5’s repeat question list were quite helpful, especially when it came down to crunch time. As far as repeats/variants go, below are the ones I remember:
– indefinite high
– moon dust
– laurel abbot hardy
– 2 Potter variants
– Tommie Jo
– parking meter
I would also recommend that you get very familiar with the supplementary materials, as they are quite hard to search through as the time is ticking down on the clock during exam time. Best of luck!
Congratulations! I have question about the repeats of questions you are mentioning in the exam. Are these only from 2002-2003 or 1999-2003?
Thank you!
For most of these questions, if you go to google and type in key words and then “site:mypatentbar.com”, you’ll find some links to the problem. For example, if you type in “moon dust site:mypatentbar.com” or “foil airplane site:mypatentbar.com”, you’ll get links to the questions being mentioned.
Prelim pass today! Wooo! Anyway, for the stuff you guys care about. . .
LOTS of appeals. . . like a bunch. 1200 is a short chapter, but I bet at least 15 problems were out of it.
Way more assignment-related stuff than I expected. . . maybe 5 or 6?
Moderate amount of PCT
Descent amount of obviousness
Some restrictions
No Bilski
1 KSR
– Parking meter
– Potter
– Molybdenum
– Tommie Jo
– appeals – only indep claim 3 survives
– TELEPHONE the practitioner to discuss the multiple claims
– Japan 45 day
– Design patents get 6 months after a foreign filing
– 147 Claim counting
– Compound Y made by method Q1 and Q1
– 500 for prioritized Old man in hospital (don’t know if that’s the right answer, but search for it and you can probably find the right answer here on the site)
– something about piecemeal
– something about “invoking 35 USC 112, paragraph 6”. . . what kind of claim will do it
– enablement question about a coating that distributes heat up to 180 degrees. . . it’s probably on this site somewhere
– Foil gum wrapper on airplane wings
– IDS after issue fee paid
– what can/can’t be faxed
– Express Mail label requirements (i.e., can get a date if the UPSP put a date-in on the envelope, even if you didn’t label the document itself)
– appeals question where the Board gives new reason for rejection and you fix some, but not all the problems. . . what happens?
– question about how to make sure you get an oral hearing – i *think* the answer was that the board doesn’t have to grant an oral hearing if it doesn’t want to, even if you do all the paperwork
– Japanese(I think) applicants file an IA designating ONLY Japan using the USPTO as the RO. . . what happens?
(a) invite applicants to submit english translation
(b) give filing date and invite to submit translation
(c) something else
(d) forward it to japanese RO
(e) forward to the IB (I picked this)
– Q where an employee has an assignment agreement, then gets fired, and files an app for an invention she made while she was employed. what can the employer do? Don’t remember any of the answers (sorry!)
– question about an inter partes reexam. . . i think the answer is that if an inventor thinks he invented something that’s already been applied for, he can file his own app, too.
– Q about if a chemical compound has to be disclosed if ordinary skill could figure it out. . . or something like that
– claims get rejected once, then again on a different ground and restricted. . . can applicant appeal? I think yes, b/c claim has been twice rejected
If I think of more, I’ll post!
Good luck, folks!
For most of these questions, if you go to Google and type in key words and “site:mypatentbar.com”, you’ll find some links to the problem. For example, if you type in “Japan 45 site:mypatentbar.com” or “foil airplane site:mypatentbar.com” or “parking meter site:mypatentbar.com”, you’ll get links to the questions being mentioned.
Congrats, James! What was your study schedule like?
Way to itense. I got the PatBar thing from a friend and spent a ton of time going through that. I think reading the lessons and hilighting was pretty useless, b/c you forget it all. I think the biggest benefit was from the summaries at the ends of the chapters, which were basically like the summaries of each topic here on this site. Doing lots of old questions was the biggest benefit: you see questions that might show up, you learn the material, and you learn to search the MPEP. If I had known, I would’ve spent a lot more time on this site.
So how many hours do you think you studied? Thanks!
I can’t think of how many hours I actually studied. I think most of them were wasted. If I had to do it all over again, I’d skip the lessons part of the PatBar books and just focus on the summaries and then old tests from this site.
Can anyone point me to a good source that provides a good outline of AIA, KSR, Bilski, and some of the additional supplemental materials?
bfusion has a good 7 page outline for all that material, but he will charge you $85 for his outlines. You can email him at bfusionuspto@gmail.com
I have not posted yet on this website–I took the exam on September 1st and did NOT pass. I got a 68%–Yes I missed it by one question. I didn’t buy bfusion’s material before I took the exam–but I can surely tell you I bought them the day after I failed. I so wish I had bought them before!!! I am now stuck–I can’t take it until after the new laws get tested. I took the PLI course in June. I called PLI today and put my name on a list–so that I will be sent the new materails as soon as they are done preparing them. I ran out of time on both sessions–I wish I had done timed practice exams. Really simulate the test conditions–Good Luck everybody!!
Hey SoClose,
You may consider to petition to EOD if you have less than 3 questions to pass — there will always be some arguable questions. And you can review the result at USPTO– it is free.
Send an email to me, if you need more information or want to talk to peers. I passed last August on my first try and glad to share and help…
Stone.c.wang@gmail.com
Took the exam today and got the prelim pass. It was way harder than the practice tests and I felt like it could have gone either way. Probably had 15 repeats, but most of them were the non-recognizable ones. I had Moondust, ABCD/BCDE, tommie and jo, 2 potter questions and those were the only really recognizable ones. No spanish phone, no foil airplane, no Einstein, no 147 claims, none of that. I didn’t even any of the newer ones cited above, 180 thermos, 500 vs 10000, etc. I was super bummed in the moment, but glad now that its over.
My breakdown was essentially as follows: 15 repeats, 10 appeals, 10 pct, 10 RCEs, which I thought was kind of excessive, 10 reissue, 5-7 assignment related questions, 1 ksr, 2 bilski, 2 drawings, and the remainder 102, obviousness, and other random questions.
I basically started studying a month ago, 3-4 hours a day using just this website and the old exams, and I have 2 kids under 3 and am a full time attorney not practicing in IP. So if I can do it you all can too. Hope this helps anyone taking it in the next week. For the rest of you, sorry…that’s a tough break for the OED to do that to you.
Finally,
Do you remember the caveats / minute differences within your question groupings? (i.e. – you had 10 Q’s on appeal — I assume you go the typical – amend during appeal / withdrawl; amend after appeal; board rejects; board affirms … but do you have any further comments as to the differences within the chapter? Maybe a better example is RCE Q’s … seems like there are limited sections & CFR rules dealing with RCE.)
Also (i guess this question’s to everyone): I’ve gone over the 68 Q’s, and the 2002/2003 tests. I’m taking the test shortly and will do the mambo test before. I’m comfortable with the material, and generally which section to find it in (although why 700 vs. 2100 still gets me sometimes) — How do you overcome the “I could study this stuff forever / I’ll never be ready” feeling? …or does the test just come and you deal with it then? :-/
Feedback appreciated.
Ready2Bdone, I took the NY Bar Exam last summer, and that’s definite one test that you will never know everything even if you spend your life preparing for it. With 28 topics and it being a closed book exam, NYBE could be a daunting exam to take. However, I came to terms with that I would never know everything and am okay with it. I need to know enough to pass, and when you realize that that’s the confidence you need to not get freaked out during the exam and you will take it and realize that it wasn’t so bad. When I asked Bfusion for advice on this exam (I didn’t pass on my first attempt), he told me that there is no way that I will ever know everything in the MPEP and USPTO know this, so what you should know is where to look for everything, know that if the question is asking about Allowance and you don’t know the answer to, you’re going to be looking in MPEP 1300. Know what terms would get you the hit that will give you the answer. Honestly, the first time I took the exam, I had no idea where assignments were in the MPEP, and spent most of my time trying to figure out where in the MPEP to look. Missed by 4 questions my first time as unprepared as I was. If you’re already comfortable with the material, then here’s my 2 cents: you are ready. The only thing you can do is tell yourself that you’re never going to know everything in the MPEP and that’s okay, but you’re confident in your searching skills, and take a deep breath and plow through this exam. I am taking my exam on the 25th, so I can’t tell you that this method would work for me, but it worked for me during the NYBE, so I’m hoping it will work again. Best of luck!
Ah, much appreciated words of encouragement tappylilyi.
Just as a FYI: Apparently OmniPrep has been offering documents oh so very similar (and I mean, so similar the same misspelled words, the same use of dots (…..) to separate ideas and concepts (that I utilize often), the same formatting, the same sequence of questions. All without my permission.
I’m not 100% sure how they came about these materials…and whether they did indeed post the materials without knowing where they came from. I’m currently talking with them trying to get it all straightened out, but it’s just disheartening to me. I’ve been trying to find my way through all this here with you guys, wanting to give you all something helpful to study with and make a small amount of money on the side.
I’m not bashing Omniprep, because I really don’t know under what mindset or conditions that my materials ended up on being sold by them. I just want yall to know…i might have to go to phase 2 of trying to protect the work (which might include sending unicorns with lasers on their heads to keep an eye on the documents).
Ahh, that’s really horrible. I hope you get everything worked out.
On a side note, do you know how long it takes to get your Patent Agent Registration Number from the USPTO. I have passed the good character (yeah) part on September 8, and I haven’t received anything in the mail about the final stage of becoming a patent agent. I am wanting on this to start working with a fellow Patent Attorney and, hopefully, start something on the side while I’m going to law school. I don’t know if I should contact the office directly or just wait another week.
Thanks for all your help. I’m sorry people are taking advantage of your wonderful services.
That’s unbelievable. I remember those misspelled words because those material are your original work. Your study material is wayyyyy better than Omni’s, I guess Omni is silently admitting that your material is better and practical than their. However, they can not do that in an honorable way, but in a sneaky and illegal way.
Bfusion, I suggest you call an intellectual property firm to consider a lawsuit, if any witness is needed, I will be there for you all the way.
As we are studying for the patent bar, we all know that our intellectual work should be protected, and if any copycat wants to steal the work, they will have to pay the price for it!!
That’s horrible, Bfusion. I hope you get everything resolved. The study guide from this website is actually a copy of someone else’s homemade study guide that he was selling on Ebay. He’s been selling them since 2004 and updating the outline as new changes came up, and I bought a copy of his outline back in May, and it was verbatim as the study guide on this website, with some extra information included. I only know this website copied the ebayer’s study guide because it was posted 3 years after he started selling his materials. Maybe he authorized it…I don’t know. Seems like everyone is just copying off each other nowadays.
Bfusion, so sorry to hear this. I hope thing will resolve in your favor. If you need my help, please let me know.
My apologies for cross-posting, but I’m guessing this page gets much more traffic than the “Study Guide” page.
Unfortunately, I’m not going to be ready for the exam before the first big set of changes go in at the end of the month. Can anyone recommend a study plan to learn the new stuff? I tried to contact Bfusion at his @gmail address earlier today regarding the outlines, but I guess he must be really busy, so I’m not expecting to hear back instantly.
Could anyone please let me know whether the answer is C or D with recent changes in the MPEP? Thank you..
Applicant received a Final Rejection with a mail date of Tuesday, February 29, 2000. The Final Rejection set a 3 month shortened statutory period for reply. Applicant files an Amendment and a Notice of Appeal on Monday, March 27, 2000. The examiner indicates in an Advisory Action that the Amendment will be entered for appeal purposes, and how the individual rejection(s) set forth in the final Office action will be used to reject any added or amended claim(s). The mail date of the examiner’s Advisory Action is Wednesday, May 31, 2000. In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following dates is the last date for filing a Brief on Appeal without an extension of time?
(A) Saturday, May 27, 2000.
(B) Monday, May 29, 2000 (a Federal holiday, Memorial Day).
(C) Tuesday, May 30, 2000.
(D) Wednesday, May 31, 2000.
(E) Tuesday, August 29, 2000.
I don’t think that the 2 month period of filing appeal brief after filing of notice of appeal has changed.
Since 2 months from the date of notice of appeal falls on a federal holiday, I think the answer should be the next day, which is C.
Do you agree?
Hi EE
I think the answer is still C according to 706.07(f) I
“For example, if applicant initially replies
within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such case, if a petition for extension of time is granted, the due date for a reply is computed from the date stamped or printed on the Office action with the final rejection. See MPEP § 710.01(a). If the examiner, however, does not mail an advisory action until after the end of the 3-month period, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension of time fee would be calculated from the mailing date of the advisory action.”
In this case Examiner replied after the end of 3 months from Final office action hence, date of the advisory action should be final date.
Correct me if I am wrong?
I got Bfusion’s study materials, and he said the answer was C, not D, because of the changes to the MPEP. I exchanged a couple of emails with him about this, and agreed that C should be the answer now, not D.
Thank you guys!
Just a thought, emailed with John White and if the Notice of Appeal is filed AFTER 9/13/04 then there is no parallel time period (3 months SSP and 2 months NoA) and only the 2 months applies. If the dates in the question remain the same, then D should still apply. Also note that the 2 month timer for appeals doesn’t start until the notice is RECEIVED by the PTO… the question is vague as to whether ‘filing’ actually means received…
Well, according to the commentators of Q 35, which is this question, someone said that they checked the answer back in Feb 2011, and the answer was D. However, a previous commentator said that May 31, 2000 is no longer an answer choice, and the updated question now has May 30, 2000 as answer choice D. Hopefully, USPTO has updated this question, because it seems very confusing, if they tell us that the MPEP 8R8 is being used and this question is not being updated with the correct answer.
I am also thinking about Jay’s comment, and yes, the current MPEP does say a first reply, not NOA, tolls the time to response if filed within 2 months of the date of the Final Action, but in this case, an amendment, which can be an appropriate response and will be entered if it incorporates the suggestions given by the examiner or removes some issues from appeal, was also filed. I wouldn’t worry too much about this question, it seems like recent takers are getting a variant of this question, which asks what happens if you mail a response within 2 months of the final action, and the office mails an advisory notice within 3 month SSP, the 3 month SSP still controls, and no EOT will need to be filed unless applicant files something outside of the 3 month SSP.
Last weekend blast before I take my test on Tuesday, Sept 25 2012.
Anyone else in same boat?
I am! Taking it Tuesday the 25th as well, will be cramming all weekend!
I’m in the 9/25 club. Kinda struggling with what my studying should entail these last three days. Intended to do a review of the repeat questions and all of the questions I answered incorrectly on my practice tests the day before . . . . . as to the other two days, take more practice tests? read the MPEP? any advise from previous test takers, or input from the other 9/25-ers?
Taking it on the 25th as well. Wish it was sooner. I have been literally trolling this website for the past 3 weeks. I’m going to take the same approach as i did with the New York Bar Exam. Wake up super early on Monday, so I can go to sleep early on Monday night, review at most 2 hours on stuff I really am unclear on. I am doing Mambo5’s tests once more between now and Monday. I am going to reread Bfusion’s new questions document once more. I am still confused about the amendment (34 and 19) deadlines for PCT, so I’m going to review that as well and new ex parte reexam rules. Good luck, everyone!
All,
Any thoughts on my question in post 1078? (the 2nd paragraph… I feel like i’ve done what everyone says, but will never really be “Ready”).
Thanks!
How can I get ahold of Bfusions new questions doc?
Hey all. Regarding the 68 “new” questions on the top of this page, is there a definitive / cleaned up list of the questions + answers anywhere?
A lot of the questions are unresolved, unclearly stated or have conflicting explanations in the comments.
Thanks!
I felt the same. But if you have more background ideas about the related chapter, it helps. You may have to read all the replies for each question!
Hi Julie G,
my email address is actually bfusion.uspto@gmail.com (I think the “dot” was left out of Tappylilyi’s post!
Hi Max,
I would recommend Bfusion’s study materials. They are extremely helpful at least for myself… I even took them with me on the exam day to look over during my one-hour lunch break.
Where do i get Bfusion’s study materials?
Email him for them. Bfusionuspto@gmail.com. He’s a very nice guy!
Can someone let me know if my understanding of amendments in PCT is correct: Within 3 months of the transfer of the search copy to the ISA or 9 months of the priority (the later of the two), a Chapter I report is established. Within 2 months of the Chapter I report or 16 months of priority (whichever is later), an applicant can file a Article 19 amendment, which is an amendment to the claims only! IPEA will not start a Chapter II search until the expiration of the later of 3 months after the Chapter I report or 22 months after priority date (19 months for applications filed before 4/1/04). Rule 34 amendments (changes to spec, drawings, and claims) can be filed with the Chapter II demand, before the establishment of the International Preliminary Search Report, or within the time limit set by the IPEA to response to the preliminary search report.
My question is if there is a set in stone time limit that a Rule 34 amendment has to be filed like there is with a Rule 19 amendment?
Thanks!
Mpep 1864.02 The amendment may be filed with the demand (PCT Article 34), within the period for reply to the written opinion of the International Searching Authority (ISA), or within the period for reply to the written opinion of the IPEA.
See MPEP § 1871 or MPEP § 1871.01, as appropriate, regarding the processing of amendments filed prior to or at the start of international preliminary examination. See MPEP 1878.02 regarding amend- ments filed in reply to the written opinion of the ISA or IPEA. Amendments under PCT Article 34, like amendments under PCT Article 19 (see MPEP § 1853), may not include new matter and must be accompanied by a description of how the replacement sheet differs from the replaced sheet.<
—–
Still trying to decipher it.
Passed (Preliminary) on 9/22. Here are the questions I got by MPEP section (that I remember):
100 – Power to inspect (1), Rights of assignee (1)
200 – Correction of Inventorship (1-2), benefit claim (1)
300 – Assignment (2-3)
400 – Death of inventor (2)
500 – Bunch of questions – fax, EFS-Web (?!), signature requirements, small entity, certificate of mailing, express mail deposit – probably 10 questions total
600 – change of address (1-2), oath/supplemental oath (2-3), fee refunds (2), essential subject matter (1), cd-rom for tables (1), none on IDS
700 – a bunch, including requirements for information (1), a lot on rejections and other typical 700 stuff, accelerated examination (2), interviews (1), a question on trade secret information in reexaminations
800 – a lot of questions from here – several on double patenting, several on restrictions.
900 – the typical question on canceled matter
1200 – several questions – applicant’s actions on new grounds of rejection by the board, reply to examiner’s answer
1400 – reissue – who can file (1), deadline for enlarging scope (2), 119(a)-(d) benefit claim
1500 – 6 month foreign priority (1), filing reqs (1), maybe a couple of others
1800 – USA not competent RO for non-English app (1), filing reqs (1), 30 month limit for national stage (1), several others
1900 – 2 questions here – were fairly easy to look up
2100 – a LOT from here, typical 102 and 103 questions, 101 questions (4, including a few involing Bilski), drawing as prior art (1), several on 102(f), one on 102(g)
2200 – a few easy questions on reexam
2400 – one question on deposit of biological materials (?!), but it wasn’t too difficult to look up
2700 – one question on patent term adjustment – this one threw me for a bit, but i eventully found the answer.
Hope this helps. I can probably pull out specifics about a particular topic if anyone’s interested.
Best of luck to everyone!
Congrats!!! Do you remember how many repeats, if any, you got?
It didn’t seem like very many – maybe 10-16?
Failed today! Damit, this is the 3rd time. 67 %. Previous test was 56%, and the one before that was also 67%. questions coming soon…..
Takingittomorrow, sorry to hear the bad news. I take it Tuesday and have two tries under my belt now with similar results. Any specific advice, obviously your account of repeats will be helpful. Thanks!
Hey guys. I’m taking it tomorrow and am having a little mental meltdown. Two things are killing me:
1. Does anybody know where to get a working copy of adobe acrobat 5 for mac, to practice the exam format?
2. Having tons of trouble quickly searching MPEP. Anybody have any last-minute advice?! Do you all try to find an answer by searching for phrases from the question/answers or do you search by concept?
-Eternally grateful
5-6 Appeal questions, 5-6 PCT, 15 repeats (old exams), 5-6 reissue (how to correct something), inter parte and ex parte examination, small entity status (5) questions,
Claims 1 and 2. 2 is dependent on claim 1. Independent claim 3. Claim one is rejected, board affirms. What happens? Grant application with claim 3.
There are claims 1-10. 1 and 2 are rejected. 2-5 are objected for their dependency on claims 6-10. The board of appeals affirms the examiners rejection. What happens?
Repeats
(1) potter
(2) Moon Dust
(3) Potter variation (same answer different place)
(4) 2 months shortened staturtory reply
(5) 45 days, Japan application nonpublication request/45 days (10.03.44a/4.03.2a)
(6)
French application April 23, 2002, turns into French Patent April 29th, 2003, and then a US application is filed April 30th. What are possible rejections?
A. 102(d)
New Questions/on this website questions
(1) PCT application, what happens at 19 months?
(2) What are the requirements for an accelerated application? Requirements of accelerated examination 708.02(a). I think of the requirements were in the answer choices, except there was a IV (ADS with something), which may or may not have bee required.
a. I.
b. II.
c. III.
d. I,II, IV, V
e. I, II, III, IV
(3) A lot of questions about third parties and what they can do. Also, inter party and ex party re-examination. Was this in the MPEP or new hand out matieral?
(4) Inventors A, B, C invent something, but forget to submit inventor B’s address with application. Each of the following can correct the error except? (look for this questions on this website)
a. ?????
(5) DNA question with A-C-C-__? How does the prior art or last base function?
(6) 112 first paragraph. When making a rejection, can you make both an enablement rejection and specification rejection?
(7) A design application, dimensions do not matter?
(8) Spanish telephone design application, then CIP in the US?
(9) Question about assignments and who can sign them? Partial interest, all inventors, the assign?
(10) When you file a continuation examination, do you need to file all the same prior art with it?
(11) PCT question about an American company filing an invention for 3 Mexicans. One of the Mexicans is a resident, the other are not. The American company is a US corporation. Fee, application in SPANISH, and everything else. Will the RO accept their application?
a. Yes
b. No, not in Spanish
c. Yes, it will forward it?
d. NO ….reason
e. NO ….reason
(12) Can a 1.131 overcome an RCE?
(13) Subcombination/combination question
a. See the section in MPEP 800, and review all possible restriction requirements. THIS IS A HARD question. Every answer is slightly different, but only one is correct. (common sense, but really nit picky).
(14) Double patenting questions
a. What are the requirements for a double patenting rejection?
i. See the section.
ii. Common assign or inventor in common?
iii. What else?
iv. Answer is an EXCEPT answer.
Which of the following is NOT a new application? Answer: RCE
Questions that I spent too much time on
(1) which of the following is the least expensive way to correct an error in a patent?
a. ADS sheet
b. Reissue
c. Some CFR stuff
d. Other
e. Other
(2) Which of the following is NEVER a 102(a) prior art date
a. Art that the application submitted labeled “prior art”
b. Cancelled matter in a published patent application
c. Canceled matter in an abandoned
d. A document used to explain to the definition of a term in another document
e. A document written by the applicant
Hi Takingittomorrow, thanks for your input, and you have my condolences. I have a question about the question about correcting a patent…is it a patent or patent application? because if it’s a patent, then there are only four ways to correct it: reissue, CoC, disclaimer, and reexam. If it’s to correct ownership, then CoC would be the cheapest way…it costs around $230.
Also, a document written by the applicant is never prior art under 102(a), which clearly states that the printed publication needs to be by another. In regards to D, another document can be used to support a 102(a) prior art. There was a question in which the examiner used another document to show that the properties were inherent in the 102(a) prior art.
Actually, a disclaimer is the cheapest way to correct a patent…it’s only $100.
there was an obvious question, which was the classic I, II, III, IV, pick which ones can overcome an obvious argument. I think the answer was E, but the choices were very confusing because instead of saying “one with ordinary skill in the art” it said “an inventor faced with the same problem” (something like that)….so if you assume the inventor is one with ordinary skill in the art, then it is E. FUCK THE USPTO and their crappy questions.
Forgot to say, about 6-9 KSR, obviousness questions. these were SOOOO TRICKY! I thought it would be simple, like listing the 7 factors, or how to overcome. However, the USPTO does a good job of making the wording strange to tricky you.
101 issue, which of the following is NOT considered for 101 rejections: living and inanimate?
(15) 101 rejection. Which of the following is NOT a 101 rejection?
a. Living and inanimate.
(16) Can a minor sign anything?
(17) When can someone (or the public) attain access to the re-examination record?
(18) Can market force determine obviousness?
a. This question was strange because I THOUGHT this was used to OVERCOME a rejection of obviousness NOT actually determine it/ or against it?
(19) Provisional application, Can two people claim rights to a provisional application? (one single inventor versus a group of inventors).
Hi Takingittomorrow,
Market force can be used in an obviousness determination.
From MPEP 2143:
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(2)a finding that there were design incentives or market forces which would have prompted adaptation of the known device (method, or product);
(4)a finding that one of ordinary skill in the art, in view of the identified design incentives or other market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to one of ordinary skill in the art;
Reexam file is open to public examination
From MPEP 103-
(d)All papers or copies thereof relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to inspection by the general public, and copies may be furnished upon paying the fee therefor.
A minor can sign a declaration/oath if he is competent and understands what he’s signing. MPEP 409.
No clue about the provisional application question.
The answer to the provisional application question is YES, as long as each inventor named in joint provisional application has some contribution to the subject matter disclosed in the application (See 605.07).
I understand market force can be a determination in OVERCOMING, but what about determining? Or is that a moot point? If it works one way it works the other?
Market force can be used by the examiner in determining obviousness as well, see the part of the MPEP I quoted. One can also use market force to overcome obviousness.
Also had two correction questions. One was about the misspelling of an inventors name “john” versus “jon.” How do you correct it? Which is least expensive?
There was a misspelling of the word “car,” it was “ccar.” How to correct it? At what points in the patent phase (allowance, after allowance, before, etc.).
I believe the “john” question is question 18 from the Oct. 03 PM exam. If it is, it has not had any other reports of being a repeat that I know of for a while. Good to know.
http://mypatentbar.com/2010/04/13/q-10-03-18p/
I’m not sure if the “car” misspelling question is referring to a PCT, but if it’s a PCT application, obvious linguistic mistake can be rectified under MPEP 1836 within 26 months of the priority date.
Just passed today, I wish i had a better memory of what was up there. Look at james update aboth, had just about all those question, i had moondust, potter twice, wooden handle with leather straps, 147 claims. I had quite a good number of repeates.
I had one very wierd question about correcting patents and reissue. One answer was file a reissue cancel broad claim 1 and add a new claim vs first disclaimer for claim 1, then reissue canceling claim 1 and then reissue. Not sure what I put.
I did have one weird chapter 900 question about how examiner do patent searches.
—–
I did notice a couple of new material questions.’
Interparties reexam was tested based on dates and timing. They would ask when can you file an interparties exam and you just need to know the sep 16 2011/2012 stuff and reasonable likelihood. Also had some bilski and a couple KSR.
I so wish i had a better memory, but seriously thank all of you! I wouldn’t have passed without you. If anyone asks me specific questions I will try my best to answer.
I also had the question asking me about market force.
Also the KSR question asked if we should abandon grahman analysis in favor for KSR, which is wrong cause KSR supplements.
Also had the question about 101 issue, which of the following is NOT considered for 101 rejections: living and inanimate? I picked living and inanimate because there is congress language saying it is not considered.
I think I took the SAME test as takingittomorrow did. Quite wierd. I had all the same stuff he addressed above.
Contrats Mike!
Do you think you could remember the wooden handle/strap, 900 and market force questions?
Someone posted the following question he/she encountered. Does anyone know what the correct answer is? Thanks!
“Another PCT question is that it indicates the applicant/inventor is US citizen but forgot to include the name and at least one claim. The claim and the inventor name were submitted separately. The claim was earlier than the inventor name. Which date is the filing date of PCT. 1) the receiving date of claim or the date of inventor name. I chose the later one (Not sure).”
Li, without a claim, the PCT will not receive a filing date. Inventors can be added later on.
Did’t pass.
A few more questions about today’s exam.
1. A question about disclaimer- who is not supposed to sign with different options!
2. What examiner is not supposed write or do when he writing about reasons for allowance?
3. Accelerated exam question? What are needed with different options (I, II, III, IV and V) and then select A,B,C,D and E
4. One EPAS question about the what is procedure for confirmation or something.
5. Another one about rapidity with which…
6.102(f) question
7.What do examiner’s search for the prior art related..
8. Combination and Sub combination one
Hope these questions help for you folks!
Hey, sorry to hear!! To pick your brain, any more details about the rapidity or EPAS one?
Was the “rapidity” question relating to “Factors that may be considered in determining the level of ordinary skill in the art may include: (1) “type of problems encountered in the art;” (2) “prior art solutions to those problems;” (3) “rapidity with which innovations are made;” (4) “sophistication of the technology; and” (5) “educational level of active workers in the field” by chance? 2141(C)
It is not about this one! I could bit find it in 2100 or 700
Thanks to all those who contribute to this site. I took the exam on 9/23, and I’ve tried to mark the repeat questions I saw, and I’ll attempt to share my experience here. I couldn’t have done it without the collective effort of all the dedicated studiers on this site. Overall, it was a very difficult exam, I didn’t see too many repeats, I’d estimate 10. It is just as difficult the second time around, and the PTO has really found ways to test some things which we don’t really focus on during our prep. I had to look up a lot, usually I’d know what chapter to search in, but sometimes I had to use the index to get some direction. It is a marathon, so try to take it one question at a time and stay positive, it can really drain you. I was way off the pace I needed to be, and in both sessions I think I just passed question 12 or so when the first hour was complete. Luckily I picked up the pace and was able to finish both sections in time. Of course, I had to make some decisions whether to answer what I thought was right or what I know to be right based on MPEP lookup. Best of luck to those taking the exam going forward. Stay positive and your efforts will pay off!
Here are some of the topics I encountered.
– I also had the rapidity question on 9/23. It was the one that Mongrel cited.
– My exam had quite a few bilski & ksr problems. Probably close to 6 or 7 questions that required analysis and not just lookup. Make sure you understand the implications of each.
– I also got the a question about an examiner doing a search….I think I had two questions somewhat related to this. One was dealing with continuations and whether cited art should be used or the examiner needs to do a new search (?) and the other was dealing with the search as a factor in requiring a restriction requirement.
– There were quite a few questions dealing with restriction..I think my exam had a few, maybe 5 total. Was an area I didn’t expect to see. The question on linking claims and combination/subcombination was there.
– PCT was heavily tested, I think one question had to do with amendments and PCT, and whether amendments can be done to the claims only or the entire application.
– Appeals was also heavily tested.
– I had probably 2-3 ‘who can sign’/who can continue prosecution questions. One was dealing with assertion of small entity and another was the repeat question dealing with the guy who invented a fishing device and died and he only heir was his 13 year old son who was incompetent or something. Another one was dealing w/a disclaimer – Who can sign it?
– Both Potter variants
– Moondust
– there was an accelerated exam question
– Had these two questions “Takingittomorrow” cited above:
Claims 1 and 2. 2 is dependent on claim 1. Independent claim 3. Claim one is rejected, board affirms. What happens? Grant application with claim 3.
There are claims 1-10. 1 and 2 are rejected. 2-5 are objected for their dependency on claims 6-10. The board of appeals affirms the examiners rejection. What happens?
– PCT question related to mexican nationals who are not residents and file PCT in the PTO RO, and whether they are competent and can get a filing date.
– Questions on fax and EFS web
– Question on filing color drawings
– CD ROM/Tables question
– Questions on ADS and oath/declarations, probably 2.
– Question on refunds…this one dealt w/someone who filed a nonprovisional but it was defective (no claim I think) and wanted to convert to provisional to avoid a bar date and whether there he is entitled to a refund.
– Question on RCE, submission and IDS. Specifically, when can the IDS qualify as a submission (one option was ‘After notice of allowance’, which is what I picked.
– quite a bit of questions from 2100, I probably spent most my time in this chapter. 700 was also tested of course, but I found myself in 2100 more than 700.
– 2-3 questions on reissue and correction of patents
– I had 2 questions related to identifying proper and improper multiple dependent claims.
My advice to avoid Mojo’s time dilemma is answer all questions to best of your knowledge without touching the MPEP/Suppl materials. Mark the ones that you guessed and then go back.
The ones I had to look up started to run together 700/2100 and it made it a lot easier and it was fresh in my mind. I was also fortunate b/c based on all the new questions that have been posted this past week with suggested answers, helped me tremendously. 20+ were automatic on both am/pm tests.
Oh, an the Index was a great “crutch” for those nonobvious questions on which chapter to look under.
Mojo, I’m so confused about the second appeals questions that you and takingittomorrow got. There are claims 1-10. 1 and 2 are rejected. 2-5 are objected for their dependency on claims 6-10. The board of appeals affirms the examiners rejection. What happens?
How can a dependent claims be dependent on subsequent claims? That’s improper under the MPEP or are you saying the claims are objected b/c of their improper form.? Are claims 6-10 rejected as well? I’m really confused by the question, because it’s unanswerable based on the facts given.
I don’t remember the specifics of the question, although I see what you are saying as it relates to 6-10. That might have been a typo, I don’t remember, but essentially the question wanted to make sure you knew what happens when the rejection is affirmed by the board but there are other claims objected to based on their reliance on the rejected claims. If you understand that, you should be able to answer this question if I recall correctly.
Looks like you need to go to 1200-52 regardless, this is a page number I have memorized, board affirms in whole or part, what happens next…
Getting ready for the test tomorrow.
I put together the below info to help me better organize and remember the sections of 35 US.C. 102. Hope it helps others.
35 U.S.C. 102: Conditions for Patentability; novelty and loss of right to patent.
My Pneumatic:
(a) Annual (in last year)
(b) Bar (Statutory)
(c) Convey to others (abandonment)
(d) ‘Ditions (four conditions)
(e) Everything Else
(f) Fraud (someone’s else invention)
(g) Interference
2132 35 U.S.C. 102(a)
(a) The invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
a. KNOWN OR USED
b. IN THIS COUNTRY
c. BY OTHERS
d. PATENTED IN THIS OR A FOREIGN COUNTRY
(b) Prima facie case is established if reference publication is “by others”…if within 1 year of the filing date the invention or an obvious variant thereof is described in a printed publication whose authorship differs in any way from the inventive entity unless it is stated within the publication itself that the publication is describing the applicant’s work.
(c) NOTE: when the reference is a US patent published within the year prior to the application filing date a 102(e) rejection should be made.
(d) REBUT:
a. Show reference’s disclosure was derived from applicant’s own work.
b. An affidavit can be used to overcome rejection, when reference is not a statutory bar under (b)(c) or (d) the applicant can swear back the reference.
2133 35 U.S.C. 102(b)
(a) > 1 year; Statutory Bar
(b) The invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in the country, more than one year prior to the date of application for patent in the US.
(c) Applicant’s own work which was available to the public before the 1 year may be used in a 102(b) rejection
(d) REBUT:
a. Rejection creates a statutory bar and cannot be overcome by affidavits and declarations, foreign priority dates or evidence that applicant himself invented the SM.
(e) Public Use test
a. Was accessible to the public, OR
b. Was commercially exploited.
c. Public Knowledge is not necessarily Public Use
d. In the U.S.
(f) On Sale test
a. The products must be the subject of a commercial offer for sale, AND
b. The invention must be ready for patenting
c. In the U.S.
2134 35 U.S.C. 102(c)
(a) Abandonment of an invention
a. Intentional
b. Delay in making first application alone is not sufficient to infer the requisite intent to abandon.
c. Delay in reapplying for patent after abandonment of a previous application does not constitute abandonment.
2135 35 U.S.C. 102(d)
(a) Four conditions, all must be present to establish a bar
a. The foreign application must be filed more than 12 months before the effective US filing date
b. The foreign application must have been filed by the same applicant as in the US
c. The foreign patent or inventory’s certificate must be actually granted before the US filing date. It need not be published.
d. The same invention must be involved.
2136 35 U.S.C. 102(e)
(a) The invention was described in:
a. An application for patent by another filed in the US before the invention by the applicant for patent
b. A patent granted on an application for patent by another filed in the US before the invention by the applicant for patent.
c. An international application filed under PCT shall have the effects for the purposes of the subsection on an application filed in the US only if:
i. the international filing date was on or after November 29, 2000
ii. The international application designated the US
iii. The international application was published by the WIPO under the PCT.
iv. The international application was published in the English language.
(b) SIRs are eligible as prior art
(c) When there is no common assignee or inventor, a US application must issue as a patent, published as a SIR or published as an application publication before it is available as prior art under 35 U.S.C. 102(e)
(d) Where there is a common assignee or inventor, a provisional 35 U.S.C. 102(e) rejection over an earlier filed unpublished application can be made. Review MPEP for date limits.
(e) “By Another”
a. The inventive entity is different if not all inventors are the same. The fact that the application and reference have one or more inventors in common is immaterial.
(f) REBUT, If not a statutory bar, Can overcome 102(e) by
a. antedating the filing date or showing that disclosure relied on is applicant’s own work.
b. Showing the reference is describing applicant’s own work.
2137 35 U.S.C. 102(f)
(a) Inventor did not himself invent the subject matter sought to be patented.
(b) Does not require an inquiry into the relative dates of a reference and the application.
(c) 35 U.S.C. 103(c) states that 102(f) will not preclude (prevent/bar) patentability where SM developed by another person, that would otherwise qualify under 35 U.S.C. 102(f), and the claimed invention of an application under examination were owned by the same person.
2138 35 U.S.C. 102(g)
(a) Basis of Interference practice:
a. Another inventor involved therein establishes that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, OR
b. Before such person’s invention thereof, the invention was made in the US by another inventor who had not abandoned, suppressed, or concealed it.
(b) Considers respective dates of conception and reduction to practice, reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
(c) Conception
(d) Reduction to Practice
(e) Reasonable Diligence
My Notes on KSR:
Obviousness inquiry After KSR v. Teleflex: 2010 KSR Guidelines Update
A. Guidelines for when applying the law of obviousness under 35 USC 103.
B. Importance of considering rebuttal evidence submitted by patent applicants in response to obviousness rejections.
C. Graham v. John Deere.
D. The determination of obviousness is dependent on the facts of each case.
E. The teaching-suggestion-motivation (TSM) test was but one possible approach.
F. Any rationale employed must provide a link between the factual findings a d the legal conclusion of obviousness.
G. KSR validated more flexible approach to providing reasons for obviousness.
H. The analysis supporting a rejection under 35 USC 103 should be made explicit.
I. When setting forth a rejection, Office personnel are to continue to make appropriate findings of fact as explained in MPEP 2141 and 2143, and must provide a reasoned explanation as to why the invention as claimed would have been obvious to a person of ordinary skill in the art at the time of the invention.
J. There may be more than one line of reasoning that can properly be applied to a particular factual scenario.
Six other rationales from the KSR as examples of appropriate lines of reasoning that could also be used:
1) Rationale A – Combining prior art elements
– according to known methods to yield predictable results
– simple substitution of one known element for another to obtain predictable results
– use of a known technique to improve similar devices, methods, or products in the same way.
a. It can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.
b. The claimed invention may nevertheless be nonobvious when the combining step involves such additional effort that no one of ordinary skill would have undertaken it without a recognized reason to do so.
c. The proposed modification thus amounted to extra work and greater expense for no apparent reason. This is not the same as combining known prior art elements A and B when each would have been expected to contribute its own known properties to the final product.
d. The problem had not been previously known.
e. TEACHING POINT: A claimed combination of prior art elements may be nonobvious where the prior art teaches away from the claimed combination and the combination yields more than predictable results.
i. Merely pointing to the presence of all claim elements in the prior art is not a complete statement of a rejection for obviousness.
ii. A proper rejection based on the rationale that the claimed invention is a combination of prior art elements also includes a finding that results flowing from the combination would have been predictable to a person of ordinary skill in the art.
f. TEACHING POINT: A claimed invention is likely to be obvious if it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they have been combined.
i. One of ordinary skill in the art would reasonably have expected the elements to maintain their respective properties or functions after they have been combined.
g. TEACHING POINT: A combination of known elements would have been prima facie obvious if an ordinary skilled artisan would have recognized an apparent reason to combine those elements and would have known how to do so. Apparent reason to combine.
i. Keep in mind the capabilities of a person of ordinary skill.
ii. Apparent Reason to combine. Keep in mind the capabilities of a person of ordinary skill.
h. TEACHING POINT: The scope of analogous art is to be construed broadly and includes references that are reasonably pertinent to the problem that the inventor was trying to solve. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning.
i. TEACHING POINT: The scope of analogous art is to be construed broadly and includes references that are reasonably pertinent to the problem that the inventor was trying to solve. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning.
j. TEACHING POINT: Predictability as discuss in KSR encompasses the expectation that prior art elements are capable of being combined, as well as the expectation that the combination would have worked for its intended purpose. Especially strong where the prior art’s teaching undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.
i. Especially strong where the prior art’s teaching undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.
2) Rationale B –Substituting One Known Element for Another.
– to obtain predictable results
– Use of a known technique to improve similar devices, methods, or products in the same way
– Applying a known technique to a known device, method or product ready for improvement to yield predictable results
a. TEACHING POINT: When determining whether a reference in a different field of endeavor may be used to support a case of obviousness (ie is analogous), it is necessary to consider the problem to be solved.
b. TEACHING POINT: Analogous art is not limited to references in the field of endeavor of the invention, but also includes references that would have been recognized by those of ordinary skill in the art as useful for applicant’s purpose.
i. A string case of obviousness based on simple substitution
c. TEACHING POINT: Because internet and web browser technologies had become commonplace for communicating and displaying information, it would have been obvious to adapt existing processes to incorporate them for those functions.
d. TEACHING POINT: A chemical compound would have been obvious over a mixture containing that compound as well as other compounds where it was known or the skilled artisan had reason to believe that some desirable property of the mixture was derived in whole or in part from the claimed compound, and separating the claimed compound from the mixture was routine in the art.
e. TEACHING POINT: A claimed compound would not have been obvious where there was no reason to modify the closest prior art lead compound to obtain the claimed compound and the prior art taught that modifying the lead compound would destroy the advantageous property.
i. Obviousness based on structural similarity thus can be proved by identification of some motivation that would have led one of ordinary skill I the art to select and then modify a known compound in a particular way to achieve the claimed compound.
f. TEACHING POINT: It is not necessary to select a single compound as a lead compound in order to support an obviousness reject.
i. No reasonable expectation of success, the claimed compound would not have been obvious.
ii. Evidence of unexpected results.
iii. Sufficient evidence of unexpected results was intruded to rebut.
g. TEACHING POINT: Obviousness of a chemical compound in view of its structural similarity to a prior art compound may be shown by identifying some line of reasoning that would have led one of ordinary skill in the art to select and modify a prior art lead compound in a particular way to produce the clamed compound.
i. The district court found that one of ordinary skill in the art would have selected compound 12 as a lead compound for modification.
ii. Obviousness of a chemical compound in view of its structural similarity to a prior art compound may be shown by identifying some line of reasoning that would have led one of ordinary skill in the art to select and modify the prior art compound in a particular way to produce the claimed compound.
3) Rationale C –Obvious to Try.
– choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success
– Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.
a. Only appropriate when there is a recognized problem or need in the art; there are a finite number of identified, predictable solutions to the recognized need or problem; and one of ordinary skill in the art could have pursued these known potential solutions with a reasonable expectation of success.
b. TEACHING POINT: A claimed poynucleotide would have been obvious over the known protein that it encodes where the skilled artisan would have had a reasonable expectation of success in deriving the claimed polynucleotide using standard biochemical techniques, and the skilled artisan would have had a reason to try to isolate the claimed polynucleotide.
i. KSR applies to all technologies, rather than just the “predictable” arts.
c. TEACHING POINT: A claimed compound would not have been obvious where it was not obvious to try to obtain it from a broad range of compounds, any one of which could have been selected as the lead compound for further investigation, and the prior art taught away from using a particular lead compound, and there was no predictability or reasonable exception of success in making the particular modifications necessary to transform the lead compound into the claimed compound.
d. TEACHING POINT: Where the claimed anti-convulsant drug had been discovered somewhat serendipitously in the course of research aimed at finding a new anti-diabetic drug, it would not have been obvious to try to obtain a claimed compound where the prior art did not present a finite and easily traversed number of potential starting compounds, and there was no apparent reason for selecting a particular starting compound from among a number of unpredictable alternatives.
e. TEACHING POINT: A claimed compound would have been obvious were it was obvious to try to obtain it from a finite and easily traversed number of options that was narrowed down from a larger set of possibilities by the prior art, and the outcome of obtaining the claimed compound was reasonably predictable.
i. The mere existence of a large number of options does not in and of itself lead to a conclusion of nonobviousness.
f. TEACHING POINT:A claimed isolated stereoisomer would not have been obvious where the claimed stereoisomer exhibits unexpectedly strong therapeutic advantages over the prior art racemic mixture without the correspondingly expected toxicity, and the resulting properties of the enantiomers separated from the racemic mixture were unpredictable.
i. The obvious to try line of reasoning is not appropriate when, upon consideration of all of the evidence, the outcome would not have been reasonably predictable and the inventor would not have had a reasonable expectation of success.
g. TEACHING POINT: An obvious to try rationale may be proper when the possible options for solving a problem were known and finite. However, if the possible options were not either known or finite, then an obvious to try rationale cannot be used to support a conclusion of obviousness.
i. Would not have presented itself as an option at all, let alone an option that would have been obvious to try
h. TEACHING POINT: Where there were a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness.
i. “Common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning”
ii. Office personnel should consider all rebuttal evidence that is timely presented by the applicants when reevaluating any obviousness determination.
i. TEACHING POINT: Even though all evidence must be considered in an obviousness analysis, evidence of nonobviousness may be outweighed by contradictory evidence in the record or by what is in the specification.
i. One of ordinary skill in the art would have expected this reconstitution method to work in humans as well.
j. TEACHING POINT:All evidence, including evidence rebutting a prima facie case of obviousness, must be considered when properly presented.
i. Rebuttal evidence had not been considered by the Board….the extensive rebuttal evidence must be considered.
ii. Nonobviousness can be shown when a person of ordinary skill in the art would not have reasonably predicted the claimed invention based on the prior art, and the resulting invention would not have been expected. All evidence must be considered when properly presented.
k. TEACHING POINT: Evidence that has been properly presented in a timely manner must be considered on the record. Evidence of commercial success is pertinent where a nexus between the success of the product and the claimed invention has been demonstrated.
l. TEACHING POINT: Evidence of secondary considerations of obviousness such as commercial success and long-felt need may be insufficient to overcome a prima facie case of obviousness if the prima facie case is strong.
Preliminary pass on 9/24/12.
As far as studying goes, the info on site made the difference between passing and failure. I took the bar once before in 2010 using only the PLI materials and old exams and got a 67%. This time, I read through the stuff on this site and used the OmniPrep question bank for practice.
I also want to promote Bfusion’s study materials that he assembled. I was under a serious time crunch (I only had 1.5 weeks to prepare for this exam) and his materials summarized the stuff on this site beautifully. He charges for these materials now (paid him via PayPal) and you’ll need to sign a NDA. It was easily worth the $85 for his spreadsheet (this is truly magnificent – it measures the frequency with which the questions were reported to be repeated and includes hyperlinks to all of the questions on this site so you can see exactly what he’s referencing), new question lists with answers/reasoning, and the summary of the Bilski/KSR stuff. It saved me a TON of time, was easy to digest, and the reasonings are very solid and easy to remember. Contact him at bfusion.uspto@gmail.com; he has always responded very quickly to my emails.
Regarding my exam, I’d say that James from 9/15/12 and I had the same exam (or pretty close to it). Here is what I remember from today’s joyful experience.
Like James said, I had lots, Lots, LOTS of appeals questions. I had at least 10 if not 15 questions about appeals. From the state of my exam, you’d think that 95% of patent prosecution involved the BPAI. These were rather easy to search; just hop into Chapter 1200 and text search the answers since many of the questions were verbatim from the chapter.
Lots of PCT, but several of these were repeat questions which made them a little bit more tolerable.
Assignment/assignee questions. Just like James said, it was way more than I expected. Also not too hard to search through these; just be careful because several of these questions needed you to pay attention to the call of the question and I caught myself getting sloppy when evaluating the answer choices.
I had one Bilski question directed to how to claim a program that compiles internet data and avoiding a 112 rejection. Answer choices were A – “a module for…”, B – “a component for…”, C – “an element for…”, D – “All of the above”, E – “None of the above”. I chose D but am unsure if this is correct.
There were 2-3 KSR questions – forgive my lack of clarity, but here’s all I remember from them. The one was a “what is the best way to determine obviousness” type of question that had 2 answer choices that were clearly wrong (A and C), B said to ignore the Graham factors and only consider the KSR tests, D said something else that seemed right but that I can’t remember, and E was B and D are correct. I chose D because I thought the Graham factors complimented KSR and that you wouldn’t just discredit them. Not sure if I’m right, but whatever…still managed to scrape by.
Repeats from past exams and this site:
– Parking meter question.
– Both Potter questions. Don’t forget the one like I did…I felt like an idiot.
– Molybdenum question.
– Tommie and Jo question.
– BPAI Appeals where only independent claim 3 survives and is allowed.
– Question where Examiner calls the practitioner to discuss the multiple claims.
– Japan 45-day question, US app. is abandoned due to violation of terms of non-publication request.
– Design patents get 6 months after a foreign filing.
– Multiple dependent claim counting (147).
– Compound Y made by method Q1 and Q2.
– Old man goes to hospital, comes up with invention, and wants to file for medical device within 12 months – remember he needs to check that there’s less than 500 in FY 2012.
– Piecemeal question.
– 112 enablement question about a coating that distributes heat up to 180 degrees – how can you get around this rejection?
– Foil gum wrapper on airplane wings question.
– IDS after issue fee paid.
– 2-3 questions on what can and cannot be faxed.
– 2 questions regarding Express Mail. One was about the label requirements (i.e., can get a date if the UPSP put a date-in on the envelope, even if you didn’t label the document itself). There was another one where the practitioner had a provisional application filed Friday January 15, 2000 (approximate date…can’t remember the year clearly), and there’s a federal holiday on Monday January 17, 2001 and she remembers at 10:30pm on the West Coast on January 18, 2001 that she wants to file the non-provisional utility patent. What can she do? I said she can send the utility patent via express mail. The other options were to fax, to send first class mail, to e-file., etc.
– Appeals question where the BPAI affirms the examiner’s rejection and issued a new grounds of rejection. The practitioner claims around it as well as the initial grounds of rejection. Now what happens?
– Question about how to make sure you get an oral hearing at the BPAI. I looked at the actual chapter and there was one part that was verbatim as to what papers you need to file and what you need to say. It was answer choice B on my exam.
– Japanese inventor is a also US resident and files an IA in Japanese using the USPTO as the RO. Now what do we do? I said that they’d be invited to submit in English and if they do so in the time period, they get the priority date that they originally filed and if not, it goes to the IB. The choices were A – give them the priority date and invite to change to English. B – give them the priority date and invite them to change to English if they pay $. C – something else that wasn’t it. D – Forward to the Japanese Receiving Office. E – my answer.
– Another assignment question where the employee has an assignment agreement but one that does NOT automatically assign inventions to the company. She leaves the company and files an application for something she made while employed. Now what happens?
– Question about an inter partes reexam when the inventor doesn’t want to sign.
– Question about if a chemical compound has to be disclosed if ordinary skill could figure it out. The question was about what types of rejections could be made (most dealt with enablement) and why (undue experimentation).
– Claims 1-20 are in the application, 1-10 are rejected, and 11-20 are restricted out. Practitioner files continuation with 1-20. Examiner rejects 1-10 again and the practitioner appeals to BPAI. Is this proper? Said it was because you can appeal as long as something was rejected twice.
– When is supplemental oath treated as an amendment? Answered when filed in a reissue application.
– Question about Examiner’s burden when making an enablement rejection.
My brain is still mushy, so that’s all for now. I will post more as I remember them.
Good luck to you all. May the Force be with you and may you all live long and prosper.
Sorry…I couldn’t resist. I really am that much of a nerd.
Passed today, exact same test as wishful thinking. The first section was easily 25 repeats while the second section had 5-10. I think the key to passing is three parts:
1. Have a huge question bank memorized when you walk in. I had both 02 and 03 exams memorized verbatim, the older ‘repeat questions’ on this site, the 68 questions from here, and bfusion’s sheet (get it, it’s worth it. got me at least 5 Qs today).
2. Know the material FAIRLY well. Don’t waste time with every detail, but once you’ve done a few hundred Qs, you start to get what they want. Also I think appeals is great that they’re testing it a lot. It’s a short chapter and is probably the most simple and finite concept on the test. Take advantage and know it cold.
3. Probably the biggest thing, get really good at searching. Know where the big stuff is and you can find answers right away. Be creative at searching and use exact words and phrases from the answers/questions.
Good luck!
also, the bilski question above, was ‘which of these will NOT trigger 112 6thP rejection.’ They are all listed in the supplement. So, answer is ‘none of the above’ cuz they all trigger it.
sorry, should have read “the 112 question above”
Can anyone help me with claim counting question, I am not able to understand why the answer is 12.
The following claims are included in a newly filed patent application:
Claim No.
1. Independent
2. Dependent on claim 1
3. Dependent on claim 1
4. Dependent on claims 2 and 3
5. Independent
6. Dependent on claim 1, 2 or 5
7. Dependent on claim 6
8. Independent
Which of the following represents the proper number of total claims for fee calculation?
1. Independent- 1 for Ind Claim {1}
2. Dependent on claim 1-1 for dep Claim {2}
3. Dependent on claim 1-1 for dep Claim {3}
4. Dependent on claims 2 and 3-1 for improper multiple dep claim (bec it is-dependent on two dep claims) {4}
5. Independent – 1 for Ind Claim {5}
6. Dependent on claim 1, 2 or 5- 3 claims {8}
7. Dependent on claim 6- 3 claims bec claim dep on 1, 2 or 5 {11}
8. Independent- 1 for Ind Claim {12}
Hope this help
Thank you for explaining this.
How to search the supplementary material in MPEP
I passed today, thanks to this website and everyone’s contribution. I literally saw 25 verbatim repeats from the 2002 and 2003 exams. I marked down the ones that I recognized as repeats and counted them up.
Here are the ones I remember:
Moondust
Hardy, Abbott, Laurel
IDS after paid issue fee
102(e) Potter
103(a) Potter
Assignment in continuation
Bloc
Smith Laminate, but a variant, which one would be a 102(b)
147 claims
ABCD
SES fee deficiency
Five steps to cross the road
RCE during appeal
45 days Japanese publication
National Stage by Fax
Inert gas
Filing an appeal after a rejection in a continuation application
Claim 1 rejected, 2 objected, BPAI affirms claim 1
Correcting Jon to John, but the right answer is not there, so I picked file a 1.48(a) b/c it was the cheapest way to fix
New Concepts and Questions
Spanish Phone
German PCT
Schmidt
Electric Fan
RCE is not a new application
Copy of App is not needed to record an assignment
Death of an inventor, executor allowed to prosecutor until assignee intervenes
Minor can sign
Velcro
Piecemeal (all were true)
Mexican National PCT
Reply within 2 months (2nd variant)
Requirement for information (petition WILL NOT toll the time to respond)
Not considered in 101 rejection: living and animate
ADS is not needed in an accelerated examination request
BPAI will examine all rejected claims, even if appellant doesn’t argue them
Know when and what the new standard for inter partes reexam is.
Had 5-6 KSR, but they were easy to look up in MPEP 2100. I did not open the supplemental materials.
There was a toy rocking horse one: the answer to that one was that delay in filing app cannot be the sole reason used to find abandonment of the invention.
Hey Everyone!
I took the exam today for the first time and got the Prelim Pass!
I will post in the next day or two more details as they come to me but for the quick hitters here it goes.
The exam was SIGNIFICANTLY harder than what I was expecting.
The Morning was terrible, maybe 4 repeat questions. On top of that my computer crashed 3 times while searching the MPEP, so they moved me to another computer and that computer crashed another 4 times!!!
Afternoon much easier with 8-10 repeats or similar questions to old exams.
Let me regroup and I will post more details tomorrow!
Got a preliminary pass today, 9/25/12 (first try) – in no small part because of this website, bfusions materials (get them folks, well worth the $ and don’t be lame-os and farm them out to other people without his permission, they are significantly undervalued). As for studying, I did a PLI review course I bought from someone on Ebay. I logged my study time through the timekeeping software at my work, and it was about 180-200 hours total. I studied 1-3 hours a night and about 5-6 each weekend day. I finished the PLI materials in about 3 weeks, then I made my own outline, purchased Bfusions materials, and spend the last four weeks just taking old tests and practice tests.
Experience at Prometric was positive. I was there when it opened at 730am, and they let me start right away before anyone else was even checked in. I took about 45 minutes of the lunch break just to calm down and then jumped right back in. Was done at about 220pm. Perfect for me. Computer froze up once, but was easy to get back online. MPEP searching was somewhat of a challenge as I had to select “keep display open” (in order to find successively) every time I opened the find window. It also had some glitches in tracking the “found” words that were really annoying. I practiced a lot on PatWare (which is essential in my opinion) and there are some pros to the actual exame format – (1) the text of hte questions is MUCH larger; and (2) you can actually see/resize the MPEP so you can see parts of the question – great for those verbatim questions. The supplemental materials were keyed to a separate button, and they are exactly as they appear on the OED website (categorized by title).
I had several repeats – about 10-15 per segment. They saved my behind when it came to time. My test was VERY heavy on 103(a)/103(c), and relatively few 112 questions – kind of odd. Like others, very heavy on who can sign what, reexam, restriction and appeals.
Here are some verbatim repeats:
* Tommie and Jo, original version
* Lipgloss /Experimental Use
* XYZ Corp/Mexican Nationals – US Receiving office
* Adequate way to traverse a restriction requirement – between groups I and 2
* Igor /Bloc
* Spanish Phone
* Data encoded signal, like others I was stumped on this one for the most part.
* 101 – not living/inanimate
* 101 – transformation inproper if it is the only consideration (Bilski)
* Several “which one of these IS or IS NOT proper”
* Several requiring election from statements I-iV.
* Biological depsoit 2403, et seq.
* Obviousness / market force
* Trefoli / aroma therapy kit (this is a prior question, I just can’t put my finger on which 2002/2003 exam its from)
Some NEW or variants::
* International application missing parts, missing inventor’s name and missing claim, what is the filing date?
*Missing drawings in a Provisional Application, appropriate response
* Handling of trade secret information submited in a reexamination
* Board provides new ground for rejection, applicant establishes allowability. Result? Application is allowed, not returned to Board. (lots of variations on this)
* Claim counting, asked for number of dependent claims. Independent claim 1. Claim 2 depends from Claim 1. Claim 3 depends from claim 2. Claim 4 depends from claim 3. Claim 5 depends from 2 or 4. Claim 6 depends from claims 2, 3 or 4. (I could be getting this a little twisted up, but this is close).
* POA to practitioner filed, Inventor assigned part interest in the patent to practitioner as compensation (question doesn’t indicate whether assignment is filed). Inventor dies. Can practitioner continue to prosecute as an assignee, or wait for legal representative?
* Tom is 94 years old and hard of hearing. Files a petition for accelerated examination. Wants to have a hearing with the examiner. Which combo of statements is in keeping wth PTO procedures: I – Cannot have a hearing to feel out the examiner; II – Tom’s daughter Mary can call the examiner to set up a mutually convenient time for the interview; III – Tom shoudl get an attorny, and be ready to present all of hte information set forth verbatim in the MPEP for a request for accelerated examination (i.e. best references, explanation, search, etc).
*VARIANT of prioritized Track I examination. Same facts, re old man and hospital, but answers changed. Two answers now say the number of applicants in the fiscal year is at 500 (10,000 not a possibility). Distinguishing characteristic is number of claims. One option says 4 independent/30 dependent, and the other said 5 independent/19 dependent.
Good luck to all.
Just realized that I transposed hearing/interview several ways in the description of the Tom/94 question. All shoudl be in reference to an interview, not a “hearing.”
Ok, some more questions are coming to me.
My first question out of the gate regarded a 103(a) objection to a continuation application (not a CIP) where the parent application was filed in June 1999. This one really threw me, and it probably shouldn’ t have in hindsight – I was sure that 103(c) wouldn’t apply, but went back and changed my answer.
Requirement for Information 1.105, petition to withdraw doesn’t toll time to respond (same as Tappy Q)
Whether cancelled material in a patent can be used as a basis for a 102(e) or 102(a) rejection.
Whether National Stage application can be salvaged by 1.137 if not filed within 30 months.
RCE during appeal.
National stage by fax.
Who cannot sign the 1.63 or 1.67 oath, legal representatives of incapacitated/dead inventors, sold joint inventor. I picked the answer that had the practitioner signing hte oath because he couldn’t (with diligence) find the inventor.
In which of the following is the signature, or lack thereof, inappropriate:
(1) reply signed by practitioner not of record, but included practitioner’s registration number ; (2) reply to office action on the merits signed by only one joint inventor, where no practitioner of record; (3) small entity status petition signed by only one of two inventors; (4) unsigned appeal brief. (This was a I, II, III, IV, or combos thereof question)
Copies of which of the following are allowed to be filed (in lieu of original signatures) :
(1) Amendment
(2) Oaths under 1.63 or 1.67
(3) Theres a third, I’m forgetting it . . .
Smith/Wilson filing re-exam, raising new SNQs – this is a repeat
Who can sign a terminal disclaimer.
Copy of signature can also be filed for credit card authorizations.
yes, that was the third – an authorization to charge deposit account.
One more – Circumstances under which Examiner should/can submit a statement detailing why the application was allowed. This was an “identify which is not correct” question. These came verbatim from the MPEP 1302.14, with the answer (not correct) being the applicant’s full compliance with 1.111(b)&(c) and 1.133(b).
Prelim pass today.
First half not bad. Second half tough. took the entire 3 hours in both sessions.
You gotta know the stuff and be very good at searching.
the Prometric survey took 2 minutes max then you get your results.
Was surprised to see at least 2 questions from Biotechnology section. I never read through this one. Didn’t expect it.
Maybe 5 repeats in morning and 10 in afternoon. alot were of question type..which one is proper procedure… so you really had to be good at searching cause they’d trip up with one word that made it not the right answer.
good luck all.
I’m remembering more now. I also got the reason for allowance question too, and it was which one was not a reason for allowance…it was something about history prosecution being clear. it’s in 1300. Got the Smith and Wilson question as well. I also got about two restriction questions and two subcom and combo questions. I got an old test question about the provisional application filing date being the 102(e) date, it was December 1, 1999 if I remember correctly. Also, an examiner should make cited references of record if he reads them in a continuation application was one of the answer to which the following is a true statement question.
My one advice: get Bfusion’s materials. They were fundamental to my success today.
Passed!! Second try, first was 3 years ago without this website. Going through old and new questions made a huge difference. I felt that at least 50% were familiar in some fashion, with 30-40% verbatim. Both AM and PM sections were similar in difficulty. Right before I took Dreams_do_come_true and Miranda posts and categorized them by section. My exam was 80% of those questions. No surprises. It almost felt too easy. Thank you everyone for posting! This site was most helpful!!
Another – which statement(s) comports with PTO.
I -If OA dated feb 28 sets three month period of response, response is due May 28 (which is not a holiday),
II -30 day response period means 30 calendar days,
III – if response date falls on a Sunday, do not need to request 1.136 extension to file response the following monday, if need an extension it runs from the Monday date, not Sunday
also had two which were mirror images of each other excepting call of the question collecting statements regarding priormart and obivousness. In one the correct answer (D) was that delay in filing did not necessarily mean abandonment under 102(c)
Also had the means plus function claim question, correct ander was (e), which directed to a, b & c.
question regarding what is necessary for 102g rejection
what types of objections can rely on materials filed / published subsequent to the application
acessibility of assignment records
what circumstances will applicant be given 30 day period to rectify missing items in a pct context
Utility application filed November 2002 subject to 102 rejection. Which the following can you use a 1.131 declaration to overcome?
A. US patent with effective filing date of February 2002, which describes, but does not claim the invention in your application.
B. US patent with effective filing date of February 2002, which describes and claims invention in the appliaction.
C. US patent with effective filing date of September 2001, which describes, but does not claim the invention in the application.
D. US patent with effective filing date of September 2001, which describes and claims invention in the application.
E. US patent filed February 2002, which describes and claims the invention in the application, but has not yet issued.
A question regarding impact of failure to make a Chapter II demand on the timeframe for entering the National Stage -no impact on 30 month deadline.
I didn’t get a single question that asked me (or required me to) to calculate a 102(e) date for any reference. That was very surprising. I must have spent a dozen hours making sure I had all that down.
Had 1 Bilski question where the case name was actually recited in the answer choices – i.e., Under Biliski, ______________________. There was only one appropriate answer based on the holding of the case.
(This question/answer likely changes based on the Oct 2 changes) – Inventor acquiries attorney, provides power of attorney and files patent app. Thereafter assigns entire interest to XYZ, and assignment is recorded. Then inventor dies. Who can prosecute? Answer was heirs/legal representatives of inventors estate, unless/until XYZ retains an attorney and takes over prosecution.
OK – I honestly think this is all I have left in the memory bank . . . tried to squeeze out every last thing i could remember, since this site was so so helpful to me in my preparations.
Good luck to everyone.
Application was filed, PTO has no record of it. What cannot be used to establish receipt by the PTO and get the filing date:
A. Petition setting forth the Express Mail date
B-E – Copies of various physical items (Express mail label, stamped received application copy, stamped return post card, etc). I chose A.
When a restriction requirement can be challenged / how – and more specifically that it requires an election to have actually been made and the restriction requirement be “final” before pursuing a petition.
Standard for challenge by applicant or third party (what is the standard/process) to finding of SNQ and opening a reexamination.
Obviousness of range question – where application claims 35-60% and reference states 34.9%. Chose appropriate rejection – 103 (not 102)
One question was a collection of four random statements, plus a “none of the above” option as choice (E). One of the other four statements (option D) was that drawings filed with a PCT within 30 days of receiving a notice that they were missing woudl be considered part of the original IA application. The other three were something I easily ruled out . . not sure why that PCT/30 day one is sticking with me.
Effect of filing an RCE, without the required fee, when a matter is on appeal, all briefing submitted and waiting Board decision. What result? What happens to claims that were allowed/rejected by the examiner?
Remembered a few other items just reading through others comments:
(1) Had the enablement thermos coating question (180 Degrees), answered that the claim should be amended to specify or describe the coating material rather than just a coating that can handle that temperature range.
(2) Question about when a supplemental oath is considered an amendment (reissue).
(3) Question regarding meeting the written description requirement in regard to a chemical compound method claim– required to detail the process of how its made, the formula, the chemical properties. I answered, just need to describe the compound/method to the extent necessary to enable someone of ordinary skill in the art to understand what is being claimed.
(4) Submission of the 52 half page tables on CD, and how need to be a longer than 51 page table and duplicate CDs required.
(5) DNA sequence base claim. Applicant calimed nucleotide AGCT, prior patent application also claimed AGCT. No details in spec/description about method, how sequence was arrived at etc. Question asked what the examiner should do – ranged from allow the claim, to rejections on 102 or 103 basis.
(6) Known chemical compound claimed as having a different chemical properties. Similar fact pattern to the Compound Z/cure for cancer/effective healing properties question, but different question — this time asking for how to claim it; claim the method not the compound.
(7)BPAI where only claim three is allowed.
(8) Restriction practice where there are two independent claims 1 & 3, and linking claim 2. Response I chose was, elect either 1 or 2 (with traverse) and indicate that the linking claim should be examined with the elected independent claim.
As stated above, I passed yesterday and the exam was awful so here is my take on the entire Patent Bar experience.
Background:
I am a part time law student in my 5th year, graduating this December. I work for an auto supplier full time. Currently in the Intellectual Property Group, I have been in this group for about a year. Also, have a daughter. (basically I do not have a lot of time)
Studying:
I was fortunate enough through my company I was able to attend the August PLI Patent Bar Prep Class in Chicago for free. To me it was an excellent base building class. I thought I knew a lot about the prosecution of patents from being in my current role at my company; however I knew practically nothing about the MPEP. Everything I learned at work was told to me by my supervising attorney for the purpose of getting work done.
So, the PLI class I think was great to get introduced to the MPEP in the simplest way. The class is intense, a lot of information, a lot of homework, but overall a great introduction into the MPEP. Additionally, I think the access to PATWARE was nice to try to simulate exam conditions, however John White said they cannot slow down their software enough to mimic the Prometric software.
I had sent my app in on the way to the class in Chicago and it was turned around by the PTO in 8-9 days or so. Very quick. I scheduled the exam for 9/25 and was off to the races.
My study regiment really did not amp up until after Labor Day. From there I spent 3-4 hours every Tuesday, Thursday, and Friday after work (I do not have classes those nights). Also, I spent 12 hours on Saturday, 8-10 hours on Sundays leading up to 9/25. During this time I did old exams, reviewed everything on this site, and went back through my PLI Study Guide. It sucked, I hated being away from my family but I only wanted to take this exam once.
I will give my thoughts and suggestions about how I studied down below.
I also got access to the old PLI CD’s from a classmate and I loaded them on to my IPOD and listened to them to and from work. I have an hour drive to work and back so 2 hours a day listening to the lectures from John White I think helped clear issues up that I was having. For instance, if I didn’t understand some things from Chapter 600, I would listen to the entire lecture on my way to or from work then go back and looked at the question that I thought was confusing. I think it helped because my first couple practice tests were low scoring.
I also copied all of Mambo5’s tests in a word document and took those. For those that do not know what this is, Mambo5 took all the repeated questions listed in the repeated questions section, randomized them and pasted them in the study guide tab, I simply copied and pasted them to a word document. There are a couple of errors but overall it was a GREAT tool to simulate exams.
As well, at night while lying in bed with my IPAD I would do the touch screen friendly October 2003 exam that someone posted on this site. I can’t find the link but it is around here somewhere.
I was able to get about 85-90% right on that exam, without looking at the MPEP. Which I think was detrimental to me, looking back at the exam.
Exam:
I went to the Prometric Center near the Mall in Ann Arbor MI, it must be Board Exam time because the place was swamped with people taking their Medical Board exams. I arrived 30 minutes early (exam was scheduled for 9:00 am). Waited about 25 minutes before they took me back, in the prep area, then waited another 10 minutes in there.
As far as taking the exam my experience was horrible! I get set up at a station, right out of the gate I get a question about Oaths or something that I was not prepared to get, so I started searching first question in the MPEP.
I think someone posted above about everything was mouse click driven, this is so true and I was not prepared for that. The MPEP searching I did in my preparation was ctrl F then type in window and hit the enter button to search, and hit enter to search next. This is not how the Promotric search works; a mouse click is required for find next.
Also, what made this exam suck so much is I was hitting enter to search next and that caused the MPEP to crash, and my computer to crash. In the morning they had to restart my machine 3 times. After the third they moved me to another machine. On that machine I was zooming out, for some reason when I opened a chapter it was at 116% zoom, I hit the reduce button and that froze that machine. Through various operations the Computers that I used in the morning froze a total of 6 times, and required Prometric staff to reboot them.
I will get to the questions below, but the morning was awful, I think I had to look up 30 questions and only maybe 3-4 repeats, and another 1-3 easy questions. Also, ran out of time on the last question.
I really thought about leaving at the break because I felt like I did so poorly! I texted a friend at lunch time and he gave me a pep talk about how he thought he did terrible in the morning and had an easier time in the afternoon. That was true for me.
Afternoon only had 1 computer crash, 9 or so repeats and a few easy questions right out of the MPEP.
I also searched the subject matter index a TON to quickly locate a approx. location of a subject. But that was very costly in time.
Questions:
I think my test was similar to Wishful Thinking 9/24 and James 9/15.
Here is my summary mixed in with their summaries
Repeats or very anticipated based on this website:
Like I Said above maybe 4 in the morning. The one that sticks out is one of the Potter questions, like Wishful I forgot it. Other than that I tried to block the morning because I felt terrible about it.
Afternoon:
BPAI Appeals where only independent claim 3 survives and is allowed, this is the one where board affirms rejection of independent 1 (2 is dependent) 3 was allowed what does the examiner do.
Question where Examiner calls the practitioner to discuss the multiple claims, this is the 2 piece broom. Something like 954 dependent claims, answer is E telephone the practitioner.
Japan 45-day question, US app. is abandoned due to violation of terms of non-publication request.
Design patents get 6 months after a foreign filing.
Multiple dependent claim counting (147).
Compound Y made by method Q1 and Q2.
Old man goes to hospital, comes up with invention, and wants to file for medical device within 12 months; I can’t remember the correct answer or the answer I chose. I looked this one up in the MPEP and about the special accelerated programs but again it escapes me.
The Piecemeal question. I went to 700 and 2100 and literally searched Piecemeal, I think in 2100 it will give you a list of situations where piecemeal examination is proper, my answer was E all of the above.
112 enablement question about a coating that distributes heat up to 180 degrees – how can you get around this rejection?
Foil gum wrapper on airplane wings question.
IDS after issue fee paid.
3-5 questions on what can and cannot be faxed.
Newer stuff: (a lot of these are cut and pasted from James and Wishful above with my comments added)
Like James and Wishful said, LOTS of appeals questions. I had at least 15 questions about appeals. Easy to Search, just went to Chapter 1200 and searched around (mostly afternoon for me).
A ton of PCT questions. I got the one James talks about where it is a Japanese national living in US and files in the US receiving office, but app is in Japanese. The answers were not as straight forward as the practice exams, or the new exam concepts tab. I went with the last answer which was, give a filing date, pass the app on to IB with a fee. (I think this is wrong)
A TON of Assignment/assignee questions. Like wishful said, watch the call of the question. These were relatively easy to search. One that sticks out is in where an employer has an assignment agreement with an employee when from when they started; she leaves and then files an app for an invention she made while she was employed. What can the employer do? I forget the answer choices but the correct one was word for word out of the MPEP Chapter, in a list type format. It has something to do with filing a petition, show proof of ownership, signed by an officer of the company in this case the president.
One thing that I was not prepared for was all the Oath/Declaration questions. It seemed in the morning I had 8 oath/dec that were tested trying to find something obscure. One that sticks out is when is supplemental oath treated as an amendment? I do not know the answer, but Wishful Thinking above says with a reissue, I think I did that on my exam but can’t remember.
Question about if a chemical compound has to be disclosed if ordinary skill could figure it out. The question was about what types of rejections could be made (most dealt with enablement) and why (undue experimentation).
I also had the express mail questions that were stated above by Wishful.
Question about Examiner’s burden when making an enablement rejection
One new question that I was not prepared for, and I am interested if anyone else got it was about when an examiner performs a search. It was one of those determine which of the following is correct under current MPEP. I search through 900 and picked something. But I did not think 900 was tested!
A few KSR questions. One in particular was about the Obvious to try rational. The question was phrased about what is NOT needed for an examiner to make an obvious rejection using the obvious to try rational. The answer I chose was something that the Examiner MUST use the TSM test.
I think 1 Bilski question but it referenced Bilski in the question.
Also, 2 questions about the application being prepared overseas.
1. Does a foreign filing license need to be sought before a application can be prepared by someone in India. I chose that it did not, because the USPTO does not care where a app is prepared.
2. Does a foreign preparer have a duty to disclose information in the IDS. I chose yes. Because the MPEP states that information is available to ANYONE in the process. I did not find where it said not applicable to foreign preparers, but maybe it is in there somewhere.
What I would have done differently about studying:
I think I was not familiar enough with the MPEP. This is 2 part. I feel like I spent the last 3 weeks cramming on knowing what chapters were what and where headings were. I think if I could of front loaded that, it would have relived some last minute stress.
Second part, a suggestion made to me when I first started studying in august, that I ignored, was on the very first practice test, search every single question in the MPEP and find the answer. I did not do this because of time, but wish I would of so I could be more efficient on the exam.
Another thing is I wished I would have started hardcore studying right after I got back from the PLI class. I sort of waited for a week or two and that was just wasting valuable time.
sorry for the long winded post
Good Luck to all in the future! Any questions just ask! Glad to be done!
sorry to double post as I had already posted the one after this, I also took the test yesterday and every time I pressed enter to find or switched from the references to MPEP, it froze and restarted as well. It seems you and I might have gotten the same batch of tests, terrible first half, much easier second half with the 147 dependent claims. At least we both passed, congrats!!!!!
Long winded post? Did you spend all morning writing this? You damn in-house guys need to learn how to bill.
JLH – I was trying to knock it out in one Post! it did not take too long to write, but it is helping the cause!
D – sucks about the computer crashing, i feel your pain! congrats on passing!
I took the patent bar yesterday and passed on my first try. Sincere thank you to everyone who posted information to this site, you all really helped. I read through and listened to the PatBar materials, read the bullseye outline, and did most of the questions on this website. Do the old questions. Truthfully, I only had about 5-10 repeats, two of them being about Potter, but you learn the concepts that are tested by doing them and if you actually look through the MPEP to answer the questions you will become very proficient at doing so and will pass the test. BIGGEST PROBLEM: PROMETRICS COMPUTERS (maybe my test software). The test crashed at least 7-10 times on me. It turns out that every time I switched between the references (the notices) and the MPEP, the search feature of the MPEP would stop working and then the entire computer would freeze and restart. There were 4 people taking the patent bar and I was the only one to have this problem. It could have been the test itself as it occurred again after I switched computers. I passed in the end so I don’t really care anymore, but wow was that nerve wrecking while taking the test and I lost a couple of minutes every time it happened. I will double emphasize writing down a list of 1-50 and A-E just in case something like this happens to you, and it doesn’t autosave, you can just go back quickly and know where you are.
btw, if you get a question talking about india, it is illegal to export patent work outside US. Also, the notices on the test are in a separate section called references and are not numbered so don’t just memorize what you need to know by number (although the names tell you what they are). Both of my KSR questions were from the first notice listed on obviousness, but likely could have been found in 2100. i didn’t have a bilski question but a friend I took it with said he did. Of the four people who took the patent bar that day, he and I were the only 2 to pass. It seems like the others didn’t really do old tests to familiarize themselves with how to efficiently search the MPEP.
Good luck to all those trying to cram the test in before the Oct 2 change and all those who take it after.
Got my prelim pass yesterday. Definitely had 10-12 repeats from old exams and I saw a few of the “new” questions from above. I can’t tell you what a relief it is to not have to worry about this anymore. Here’s my brain (what’s left of it) dump:
– Both Potter variations
– 1 Bilski (method for doing business with no tangible machine)
– 1 obvious-to-try KSR, how could the applicant overcome rejection?
– Claiming, deleting and reclaiming benefit claim
– Missing parts- PCT
– Submitting tables on CD
– Indefinite claim using “high”
– Recording assignment documents
– Which claim(s) is improper dependent/multiple dependent
– Laurel, Hardy and Abbott
– Couple death of inventor questions: who can continue prosecution of application, who can sign oath if heir is mentally incompetent (legal rep.)
– Reissue/broadening claim
-Ex parte reexam- which are true: does the 3rd pty who initiated reexam get to respond to patentees statement, does that 3rd pty get to file a 2nd reexam, can a different 3rd pty file a 2nd reexam
-Basis for ex parte rejection in an interference- directly from ch. 2300
-What is an amendment under CFR 1.312? supplemental oath in reissue after notice of allowance
-Polyethylene/polypropylene range (obviousness)
-Tommie and Jo
-2 piece broom- telephone interview for rejection for multiplicity of claims or something
-Telephone interview with examiner (which one is true)
-Restriction in continuing application, can applicant appeal? No, there was no rejection pending
-Suspended practioner’s address on file, second practioner didn’t have an address- who to communicate with?
-How an examiner performs their first search- right out of MPEP 904
– Examiner sent a Request for Information after 2nd rejection- is that ok?
-Which ones can be submitted with a copy of a signature: Oath/Declaration, Authorization to pay fees, Reply under CFR 1.111
-I had 2 questions with similar fact pattern- chemical compounds disclosed and claimed, but method of making wasn’t disclosed: 1) narrowed down to 2 answers: should the 112 rejection be one rejection for written description and lack of enablement, or should they be 2 separate rejections (MPEP says they are distinct and separate issues); 2) Applicant makes sound argument that method of making compounds was known in the art- does that overcome any/all of the 112 rejections?
-When shouldn’t an examiner issue a reasons for allowance statement- if applicant fully complied with examiner’s instructions for 1.111(b) and (c)
-Costa Rica nationals file PCT with US RO- can they keep their filing date? (yes)
-Who had to sign a Notice of Withdrawal of a PCT
-4-5 Appeals questions, but nothing that caught me off gaurd
I took the PRG review course last November, but didn’t start seriously studying until June. I studied about 20-25 hours a week using the notes I got from PRG and their software. There’s no way I could have passed this test without that software. I also printed off all the old exams and repeat questions from this website. Take the time to do the old exams. When you get to one on the test, you can answer it immediately and save that time to look up more difficult questions. I might be a fast reader, but I had time to look up almost every question in the MPEP. The PRG software really helped with this, I’m now the world’s fastest MPEP looker-upper. The afternoon session was definitely easier than the morning for some reason, and I had no computer problems. If I closed the MPEP and reopened it while looking at the same question, it opened back up to the same place. If I reopened it for the next question, I had to pick a chapter again. Good luck to everyone taking the “new” test. Oh, and make a special playlist of your favorite music that you know puts you in a good mood on the way to the test in the morning. I recommend La Grange (ZZ Topp) and Play that Funky Music (Wild Cherry).
Hi all!
I have been studying the PLI material for several months to prepare for my patent bar exam next month. What I have is the PLI 8.4. I have heard that there is a newer version 8.8 out there and there are new additions (KSR, Bilski, 112 changes) which will be tested. Could anyone tell me where to find study materials for those questions? If someone is kind enough to share study materials pertaining to these topics, my email is 2085097@gmail.com
Thanks a ton!
I will do a bigger brain dump soon, but I wanted to briefly let anyone who is taking the “new” test in the next week or so know you do NOT need to panic! I took it today (October 3) and am very pleased to report the new material is constrained to only 10 questions, most if not all of which are easily identifiable due to conspicuous dates (e.g., Sept. 16, 2012, dates in the future, etc.) or give-away terms (e.g., inter partes review). It would appear the PTO has not abandoned their new-questions-must-be-beta-until-we-statistically-analyze-them policy. So, for the first several days or weeks–however long it takes for them to get enough stats to determine what betas go live–it is my belief that you don’t actually have to know ANY new material to pass or even to get a perfect score. The 90 questions that are scored are all old material. Furthermore, if you pay attention to the dates and identify the betas, it appears you actually can safely focus on just the 90 questions that you know will be scored. That actually makes the test EASIER than normal, since you can avoid wasting time on 10 non-scoring questions. Of course, it’s hard to say how long this will hold true (and I obviously can’t swear it’s true since they didn’t state they were beta, so please don’t treat this post gospel!), so I’d be nervous with that strategy too far down the road. If your date is in the immediate future, though, I wouldn’t stress.
It is also my understanding that each question in the PTO database is given a “difficulty score” or something like that. The questions you see on your test–which is unique to you and not the same one everyone else on the same day takes–are psuedo-randomly selected from that database. I say “psuedo” because they do select in such a manner that your total difficulty score is within a given acceptable “total difficulty” range for the sake of normalization. So, you won’t get all 10s while your buddy gets all 1s. Basically, if that’s all true, what I hope that means is that when the test goes live, they’ll be balancing out some of the higher difficulty new material with new material gimmes (I had one today that simply related to knowing that the Oath/Dec no longer requires “original and first” statements and citizenship) as well as some easy novelty, obviousness, etc. questions that we all know from the old exams.
Things I remember from my exam on October 3, 2012, that were not direct from the 2000-2003 exams and that are pre-AIA:
* Toy airplane with foil on wings: maintain 102 rejection b/c claim was so broad as to cover wings only or entire plane being covered
* How do you submit new sales figures for a case that’s already at appeal? Can’t remember the answers–sorry.
* Fan with three stacked parts gets a 102 rejection; you try to argue that the prior art has different dimensions based on your measurement of the drawings and that parts would be covered up that you had left intentionally exposed. Answer related to you not being able to rely on measurements of drawings that weren’t specified as being to scale.
* Something about initiating interviews and what was NOT true. It was true that the PTO encourages Examiner-initiated interviews. It was NOT true (and thus correct) that Examiner’s don’t call attorneys without the attorney requesting it in an attempt to not violate the attorney’s privacy.
* Does “high” always necessitate a 112? Answer is no. You can either have provided a definition of “high” or it can be something that would be understood by one skilled in the art.
* If you’re filing something (I think it was a reissue application) after having gotten a Certificate of Correction, the application you submit should have all the changes from the Certificate of Correction incorporated therein with NO annotation (underlining, etc.).
* A bunch of random stuff in a what is correct procedure type of question. Answer is that you pay fees for each independent claim in excess of 3 and each claim (whether independent or dependent) in excess of 20.
* In a reexam, you must request extensions of time at the time of the deadline–NOT after the deadline when you get around to filing. At that point, it’s already been abandoned, and you’ll have to petition to revive.
* Something about Swedes filing a PCT app at the USPTO. It was in English. I believe the correct answer is that they get the U.S. filing date as the international filing date (U.S., as a non-competent receiving office, will forward to the IB)
* How should an Examiner conduct a search? I don’t remember all the options, but one was to limit it to just the claimed embodiment (incorrect). I think I looked in 900 to check myself after picking out what seemed logical. Sorry to lack details here.
* Can’t claim a chemical and try to make your non-enabling specification count as enabling by referring to some other application or patent.
* An application was allowed before it published. It was therefore too late for some company who submitted prior art day after NOA (can submit before publication or NOA, whichever’s first; tricky b/c usually things publish before allowance)
* Non-provisional (B) filed within year of provisional (A), as is normal. Forgot to put a claim in the non-prov (B), though, so it doesn’t get a filing date. All you can do is convert it to a provisional (C) and then refile another non-prov (D) that claims priority from (C). Basically, your mistake cost you a year of priority, but you at least salvaged priority to the date you initally filed the (faulty) non-prov (B).
* If something’s due on Feb. 28 (last day of month) and you do a one-month extension of time, that goes to March 28, NOT the last day of March.
* Trade secret in envelope. The answers related to petitions to expunge and whether the contents were material to patentability. I unfortunately don’t remember what the correct answer was; but be aware that the PTO doesn’t withhold things that are material to patentability.
Things I remember from my exam on October 3, 2012, that are post-AIA:
* Question about Jane and Betty (or some other traditionally named females) worrying that their oath/dec was invalid b/c it didn’t have “original and first” and list their citizenship. This is okay under new rules, and the answer was along the lines of them being fine.
* Something about someone, after a civil action, not wanting further litigation. Something about inequitable conduct. Answers were related to ex partes reexam, interpartes review, and supplemental examination.
* Something for which I think the answer was inter partes review but for which you needed to know the acceptable time frame.
* Something about accelerated examination for someone who was doing an environment or energy thing. I can’t remember if this was new or old.
Really sorry for being so fuzzy. I made a conscious decision to NOT study new stuff beyond what I had to do to be able to answer my boss’s questions, based on my hope that they would all be beta when the new exam went live. (As you can see from one of my other posts, I believe this was the case.) I therefore pretty much ignored them during the exam and can’t remember the details the way I can the rest of the test.
All:
I am selling my PLI 2012 Patent Bar Review Course materials. This includes updated AIA material! Please see the following link:
http://cgi.ebay.com/ws/eBayISAPI.dll?ViewItem&item=150921441993
Thanks!
Selling PLI review material. Passed on Sept 24th, completely up to date. Chicago buyer preferred. michaelstern1112@gmail.com
Thanks!
Thanks in advance for all the great info. There is so much on here and so many courses. I can’t afford one of the big ones and I don’t know where to start in my studying process. Please provide suggestions on methods/plans to start the studying process. I will have lots of time daily to study as I am waiting on bar results. I have looked at the following courses/materials:
Tapre Course
Patentbarexamprep.com
patentparstudy.com
patentbarstudyguide.com
omniprep.com
Please provide reviews, suggestions, etc. I plan on taking it before the year is up…so I need to start studying soon.
Thanks
Keith,
Not sure if you’d be interested, but I’m offering a bunch of my study materials (that I can give you testimonials of) for $85 (it’s my own work that I compiled while studying).
If you’re interested, let me know: bfusion.uspto@gmail.com
Keith – Start with this website. Familiarize yourself with the MPEP Chapters, and as soon as possible start practicing the old exams until you know at least the 2002-2003 exams cold. Look up as many answers as you can stand in the MPEP online. I used the usptoExam.com testing site for the 2002-2003 exams and it was immensely helpful. Know all the repeat questions and concepts. Also know the new questions on this website. Read Chapters 600, 700, 1800, and 2100 so that you recognize key phrases and topics that are tested over and over.
Thanks Jennifer,
usptoexam.com appears to be no longer functional, but I will start in on the rest of your advice. I appreciate you taking the time to answer and share your knowledge.
Keith,
I used an old PLI set from 2006 and OmniPrep. And I’ll just give you my reviews on using both. I have taken several courses in patent law so your approach to the exam might be different if you are coming at this with zero patent law experience. I think theres a balance between learning the material and drilling questions. I thought the old PLI set was useful to walk through the chapters. I think they had great explanations and if you don’t have coursework in patents I think it would be a great way to learn the concepts necessary for the exam. Though I don’t think its worth paying full price for (I mean PLI charges more than I paid for my entire state bar review course). Also, I wouldn’t waste time watching lectures. I read through the material and then spent time just practicing questions. If you can snag an old copy of craigslist or ebay or a friend, it would be worth it. even if its from ~2006.
I have mixed feelings with OmniPrep. Compared to PLI, I thought OmniPrep did a terrible job presenting the material to learn. I think it would be very difficult for someone who has not taken a patent law course to learn the material and I was glad I had to the old PLI material to fall back on to review.
I think their Question Bank is the heart of the OmniPrep course. Question Bank is ~ 200 pages and contains ~350 questions. Very good resource and almost makes it worth it. Downsides: It’s not entirely written well; spelling mistakes, duplicate questions, some questions incomplete, (as in they present only essence of question and not the answer options). But overall its a great resource because you just drill questions. I don’t know what % of the question bank is contained on this site but I think its fairly high. I went through the questionbank once and then marked all the questions i got wrong and went back and drilled the questions i messed up on. And after that I was scoring passing on the old exams. Sometimes it can be frustrating with their Amateur Hour approach to things. For example, they posted an addendum of recently added questions to the exam. Their last addendum was added on 8/31. I have been checking the site every day and of course its my luck that they post a new addendum of new questions this morning ON THE DAY I TAKE THE EXAM (addendum was dated yesterday but I know I checked last night). Why didn’t they post a warning last week to people taking the exam today saying “Hey we will probably add a new addendum on this date so you might want to schedule/reschedule your exam later on.” But whatever, I downloaded it to my kindle and reviewed before the exam and during the lunch break. I ended up passing. Saw quite a few questions on there that appeared on the exam so I can’t be too upset with them. It’s just that I wish they would have given some warning.
I know people who have passed this exam without spending money on a commercial review course. It definitely can be done. I would agree with Jennifer, I think this site is a great resource and I also like patentbarquestions.com . I think OmniPrep had the newest questions on the exam that this site might not have yet but if money is tight, I don’t think you absolutely need OmniPrep to pass. And I would recommend an Old PLI set (if you can get it really cheap) if you have zero experience with patents.
Hey Random,
Do you remember any of these new questions added to the Addendum? It would be of great help to see whats on the exam or atleast which topics are mostly tested. Thanks.
Random,
Thanks for your input! I took a few IP classes in law school, but that was a while ago. I may use the CAT website along with this website and a few other website suggestions. I think the best thing to do know is just get to work and see where I am in about a month.
Has anyone taken the patent bar exam with the new material (post Oct. 2, 2012)? How was it?
I took it today and failed with 64%. I spent about 5-9 hours a day studying for about a week before the exam, and I had been doing well on practice exam questions (like 80-90%). I did every practice question from the published 2002 and 2003 exams. I used a hand-me-down PLI materials, including an old (2005?) PLI DVDs, and a 2010 PLI book. I scanned through the new materials on the USPTO website for a couple days before the exam. Clearly, that’s not enough. The new material on the exam was just a bit more than I was ready for today.
I’m thinking of doing the OmniPrep course before I take the exam again, because the claim to have the most up to date practice questions. And, just to give some background, I’ve been doing part time patent law internships and summers all through law school, and graduated this year. I’m familiar with the general concepts, but the “intro” stuff in PLI is good, but was all review for me. It’s the new questions that killed me.
I am pretty sure saw at least 3 questions that had 2013 application dates! Maybe they were non-graded, don’t know. There were a few that included 2013 dates of actions with 2012 filing dates. But there was at least one question that MPEP 2720 Applications Filed Between June 8, 1995, and May 28, 2000 patent term extension category also (that I hadn’t seen as a practice question), so the older stuff is still tested also. I remember the filing date in the question was May 15, 2000. I found the section of the MPEP that was relevant, but still didn’t think I was completely sure I had the right answer.
If anyone has advice on the most “up to date” practice questions from a prep course, I’m all ears. The thought that I failed is really, really depressing for me today. I’m thinking I failed because I didn’t give myself enough time to study, and my practice questions were to old and gave me to much confidence.
Oh, I don’t know if it will help anyone, but one of the things I do remember is there was a fact pattern about a German guy facing prior art that had to keep his application alive, and had to get an action in on that day, and should he Fax it with his own signature, have a US person do something, blah blah… that was one weird question.
The old question about Japan filing after a non-publication request was on the exam today, where they missed the 45 day window to retract the non-publication request.
There was a Small Entity question, which is not entitled to a 50% discount, but it wasn’t the one on the 2002 and 2003 questions, it was a variation.
There were a few others I recognized from this site that weren’t in the old practice questions. I’ll have to think about this and comment if I can find them. But I’d have to say, more than half of the questions were stuff I’ve not seen on this site or old exams.
There was a question today about if a practitioner that was suspended for 3 months could have access to the file and would receive a rejection from the last office action mailed after his suspension date.
I only remember two for the possible choices, one being they would mail him the office action because by the time the response was do his suspension would be over (I didn’t pick that), and one was he won’t have access to the application because it’s not published and he’s no longer allowed to practice and is now just a member of the public and the application hasn’t published yet (I picked that).
I don’t know the correct answer, and it sort of blew my mind (3 month suspension? Where is that in the MPEP?) And I didn’t have time to look it up because I took a quick guess and forgot to flag it to look it up.
Hey Nameless,
IF you do remember any more, please continue to post them. It would really help. Kinda scares me that, you, having gone through Patent Law internships and all have not passed and I’m barely entering the field…oh boy.
Did studying through this site help at all!?!? Did you go through what everyone here has posted or did u just skim through the Exam/Concepts page? Let me know so I can make amends to my study style. Thanks.
the correct answer is they never mail anything to a suspended agent/atty. they will mail it to the first named inventor, assignee, or other named agent/atty in good standing. I’ve heard this question is asked in the negative. Possibly the answer you didnt pick was right because it was written in the negative?
Hi all,
I just wonder how well the Patware 9.0 CD customized exams follows the Prometric exam. I am going to take the exam next month, and pretty consistently getting ~35-40 correct answers in 50 question sessions. Is that good enough? Does it help if I keep doing the customized exams?
Thanks
I passed 9/25, and I used the Patware 9.0 CD exams to practice. I’d say the simulate the experience pretty well. Aside from new post-October 3, 2012, content, I found the Patware questions close to the actual test in terms of difficulty and subject matter. There are some differences in the MPEP lookup feature, and the Adobe version is older than what most computers now use – so some nuances there. In the 2 weeks leading up to my exam, I was consistently getting about 35-45/50 correct on the customized exams, and higher on the 2002/2003 repeats (just because I’d seen them SO many times). If you are getting these results, and are staying within the time constraints/limits (3 hours) then I’d say you are on the right track.
Passed first time in September 2012 and willing to sell P L I materials: includes recent Oct 2012 supplemental materials, all questions/chapter breakdowns provided by P L I, and my own outlines based on the lecture videos with flashcards. Email offer if interested to patentgirl13@gmail.com
Did any of you guys: patentgirl, annoniemouse, jas, find the previous posts on newish/new questions helpful? Please let me know. Thanks.
I had about 15-20 repeats from prior exams (2002/2003) or variants thereof, and probably at least another 10-15 straight from other questions recalled by other posters on this site.
Thanks Annoniemouse (lol clever name). So It is definitely still worth studying the past exams and listening to what others have posted. The post by nameless was disheartening interms of how many questions he/she didn’t see show up on the exam. Thanks again.
Hi all,
Took the exam yesterday (10/26) and passed! Like a few have posted before, there were only about 7-8 questions on the new material, which were easily recognizable by the dates and the answer choices (i.e. could get post-grant review, inter partes review etc.) If I remember correctly, I think almost every question was about the new inter partes review and post-grant review. I left these until the end, and only spent a few minutes on these.
Repeats–I had a lot of exact repeats and a bunch of variations, which gave me time to look up the ones I wasn’t sure about. These were the ones I could remember…
Past exam repeats:
4.03 am: 26, 30, 44
4.03 pm: 22, 24, 48 (variation)
10.03 am: 1, 7, 9, 11, 13, 17, 25, 32, 42, 46, 49
10.03 pm: 2 (I had 2 questions on this-1 verbatim, the other a variation), 15, 24, 50
Other repeats:
-Laurel, Abbot, Hardy
-Both Potters
-dead inventor (2 of these–one where partial assignment to practitioner before inventor died; one where assignment to ABC company before inventor died)
-obviousness- 34.9%//35%
-Foreign patent agent–duty to disclose
-claim counting (how many dependent claims–8)
-design patent in country X
-which docs can be filed using a copy? (oath/amendment/authorization to charge credit cards)
-When is an ink signature or lack thereof inappropriate?
-shoe polish
-2/3 KSR and Bilski questions, these were pretty easy to look up
-chemical claim for treating depression
-linking claim
-Japan–45 days
-who can sign a terminal disclaimer?
-question about requests for ex parte reexam, and who can file request
-one question about interviews
-Assignee not of record can sign what document?
-broom multiplicity
-Smith laminate
-3 Swedish inventors
-submitting tables on CD
-Recombinant DNA-gave a sequence A-G-G-T–can’t remember exactly what the question was asking
-German PCT filer
-about 2/3 PCT questions each session
-about 5/6 on appeals total
Overall, there were many questions (maybe half) that were answer choices I, II, III, IV and you had to pick which statements were true, which can be tricky and time consuming.
I think it is still useful to study the 2002/2003 exams and newer questions that people have posted–there were a lot of them on my test!!
Good luck everyone!
Pat. YOU THE MAN. Thanks.
Pat,
Do you remember any new ones apart from the repeats? Like Indian foreign filing, chemical claims, appeals stuff like that? Thanks in advance.
These are two I remember pretty clearly–I’ll try add if I think of more…
Old man inventor; he invents a gardening tool and wants to get a patent on it soon because he is old.
Which of these is correct?
1. His daughter can call the PTO solely to sound out the examiner
2. His daughter can call and set up a time that is convenient for her and the examiner to have an interview.
3. something else–it was verbatim from the MPEP though
(I believe I answered all)
-Question about ex parte reexm–which of these is correct?
1. Person X can request ex parte reexam while the first request is pending if there is a SNQP.
2. Person Y can request ex parte reexam on the same invention while the first request is pending if there is a SNQP
3. Something about how the person has two months to submit a response (this was easily found in MPEP, and was true)
(I wasn’t sure about this one, but I think I answered all true)
Thanks Pat! Really appreciate it.
With respect to the Daughter calling the PTO solely to sound out the Examiner…isn’t that forbidden? I mean, you can’t do that right? But you can do number 2) and 3) of course.
Anyways, this is definitely helpful. Thanks.
ggtt,
You’re right-I can’t remember if it was worded in the negative or not, but I said you could do # 2,3, but not #1.
Good luck!
Pat,
Got it. Thanks!
Just FYI -I had both of these questions on 9/25 as well.
As to the old man question, I knew (1) was improper, and (3) was proper (as it was verbatim MPEP). As to (2), I hesitated on whether the examiner could have contact with an individual who was not the applicant, the applicant’s attorney, or a registered patent agent/practitioner regarding the interview.
in reference to the old man. Can’t you not get an interview before the first action under any circumstance? Therefore the answer from MPEP would be correct?
anyone have any thoughts on the second answer?
According to both versions of the fact pattern I’ve seen, the old man has yet to submit an application. Therefore, no interview can be conducted regardless of the circumstances since it’s not “pending before the Office.” 37 CFR 1.133(a). That’s how I view it based on what has been posted…
Quick question, if a reference under 102a is a US patent or publication that is dated within 1 year of the the applicant’s filing date and it claims the exact same invention, can the applicant swear behind using a 1.131 affidavit, or does it become an issue of 102g interference?
Any help would be appreciated, thanks!
Hi KD,
Look into MPEP 706.02:
“When the claimsof the reference U.S. patent or U.S. patent applicationpublication and the application are directed to the sameinvention or are obvious variants, an affidavit ordeclaration under 37 CFR 1.131 is not an acceptablemethod of overcoming the rejection. Under thesecircumstances, the examiner must determine whether adouble patenting rejection or interference is appropriate.If there is a common assignee or inventor between theapplication and patent, a double patenting rejection mustbe made. See MPEP § 804. If there is no commonassignee or inventor and the rejection under 35 U.S.C.102(e) is the only possible rejection, the examiner mustdetermine whether an interference should be declared.”
I think yes he can since it is within one year primarily. There could be a possibility of 102g interference but I don’t know what the answer choices are. If you have more specific answer options let me know. Thanks.
Thanks for the responses. It’s not a sample question or anything, just a concept I’m not fully understanding. I think Hope’s quote from the MPEP contradicts your belief that swearing behind with a 1.131 is possible.
So in the scenario I presented, it looks like it will result in a double patenting restriction if there is at least 1 common inventor or possibly a 102 interference if not.
So then I guess my followup question is, in what scenario/situation is a printed reference used under a 102a rejection?
Thanks for your help everyone!
Just started preparing for the exam and a silly question-
Do I need study the rules (such as 35 USC 102, 103…) both before and after the AIA updates? Will questions about both old and new laws be on the exam?
Thanks!!
Has anyone, in the recent exams, seen alot of 112 2nd Paragraph Guidelines implement in January 2012 questions?
And if you remember, what did they really focus on within these guidelines? Thanks guys.
So – I took someone’s advice on here to go to the Patent Ofice and look at my wrong answers. They put me in a tiny room with dozens of MPEP books – all of the versions in a bookcase, and gave me my folder with the questions I got wrong and the answer I put, the RIGHT answer, and a detailed explanation. There was a proctor in the little room with me and every now and then I groaned out loud because of the ridiculous tangle of words in the question. To my surprise I only had 29 wrong answers to study. So I think that I got a lot of the beta questions right, but they don’t count! Overall, I think it was very helpful and I am writing down the questions as well as I can remember. And its not very well, but it’s something!
1. If the Supreme Court declares a patent is not invalid, cam the examiner find it valid? Does it add proof to the issue of validity? No. They can disagree. This from section 1200 or 1400.
2. A question where Manning made an invention, then Pete did later and submitted an application for the same thing. The answer is that Manning can show that Pete was exposed to Manning’s work and “taught” or informed by it, so Manning wins out.
3. 1.131 affadavits are not used for terminal disclosures. Review what they are used for – anything 102(a).
4. 112 6th paragraph about what “invokes” the 6th. Here, three out of the four answers do “invoke” except for one answer (the right one) that says “combine, teach” and something else. I think it could have said “teaching, suggestion or motivation” but am not sure.
5. The one that is a repeat where the answer is that the applicant should petition because “it is not an appealable matter before the board”.
6. A series of signals IS NOT patentable. This one is based on a case I found on the internet.
7. “alive or dead” is the answer to this question about factors to consider in patentability. You CAN consider alive or dead as one of the factors.
8. Something about if the practitioner is not an assignee, he can’t sign on behalf of the inventor for the inventor’s signature. He must have an interest in order to sign.
9. If there is nothing that says that the invention has been assigned, the assumption is that it is assigned.
10. Address corrections: If there are 3 inventors and one of them has an address missing, (Inventor B) he is the one that must sign and correect. The others may not correct and sign for him. I had a hard time finding this in the MPEP but I think it came from either 600, 200 or 500.
11. A counting claim problem where the answer for dependent claims was 8.
12. companies ABC and XYZ. The answer was NOT taht they are commonly assigned. They are separate and the answer begins with “the second application”…
13. One about amending the claims to overcome the rejection. Again, NOT a terminal disclaimer.
14. The designating office can’t be the US if not in English. (probably a repeat). This was a question where there were three misstatements, Know that you don’t have to be both a national and a citizen to apply in the US. You can be one or the other.
15. One where the answer was “step of” because it was the WRONG answer. Probably in a product by process question.
16. Obviousness. the answer said something like “it teaches obviousness”. I looked this up at the Patent Office in the MPEP and then could not find it again later! I think its from 2400, late in the chapter.
17. One about the specification and if it was “consistent” with the method. I think this comes out of an analysis of 112 6th again.
18. If you convert a nonprovisional into a provisional, you DONT get a refund for the difference because it isn’t “by mistake”.
19. About drawins “5 and 6” that are missing. Ah, the missing drawing questions!
I wish I were more clear on these but it is very hard to remember the whole question and the right answer, etc.
I took this at the end of September, and so there are no AIA questions. However, I found that the info on the USPTO website concerning the changes is really good and I think that they will be beta questions and deal with the “headline news”. only I can’t wait to try again and I think this helped. Even if I get only a few of these on the next exam I think I will be OK! Anyway I have benefited a lot from this site so thanks everyone… and good luck!
Just got prelim pass on first try. This site helped a lot. My big thanks to all who have contributed.
Material: I used PES Online Review. It charges a monthly fee. Only used for a month. I think it’s so so. Their notes contain minor errors here and there. Not well polished, but cover the basics. On top of that, I studied 2002-2003 tests and the 68 Qs on this website, and reviewed what people posted for the last 3 months. I didn’t read any of the MPEP chapters.
Tests: I saw around 15 old repeats during the test. Not all verbatim. Since I reviewed most of the new questions people posted, I felt more than half of the questions look familiar. In the morning, I had 1 hour left to double check the harder questions. In the afternoon, I had 1 hour and half left. The afternoon part was easier.
Questions:
Laurel and Hardy
147 Claim counting Q (I double checked the number)
Costa Rica PCT
Spanish phone
Mixture Y melting point
Best mode (no need to point out)
Compound Y and Methods Q1 and Q2
Piecemeal (all of the above)
What can/can’t be filed to get filing date for: provisional, non provisional (this was asked in 2 different forms)
New question about Thermos with material heated to 180, rejected, how to get around it
112 (1 and 2 paragraph). Got both version of chemical compound
~5 obviousness questions
rapidity (for PHOSITA)
Express mailing label and correspondence papers (they had 3 different choices, I, II, and III, each with examples of situations that had the express mailing # on the label, and with something not on the correspondence papers)
one-month extension on top of SSP. Know when that ends.
Business method got rejected, how to reply
Claim using “high” (when is it appropriate)
CD ROM (51 tables, each less than 1/2 page), no duplicate CD
Lip gloss (gag)
Tom, 94 years old and hard of hearing. Files a petition for accelerated examination. Wants to have a hearing with the examiner. (Can his daughter do the hearing for him)
Can a party file two reexam requests?
A couple of fax questions
2-3 KSR
Which signature or lack of thereof is inappropriate (small entity signed by one inventor, notice of appeal not signed, correspondence by representative not of record with registration number…)
Continuation application can claim the priority of the following, except (design, CPT in national stage, CPA, provisional)
In appeal, when Board affirms rejection, and added new rejection, applicant choose to reopen prosecution in front of examiner, and overturned all the rejection, including the Board affirmed ones. What will examiner do next.
One question that made me wonder was, examiner rejected claims 1-3 on 102, and also rejected on 103. Applicant appeals each ground as a group. What will Board do
Pick one claim on one ground, if affirms the rejection, no need to proceed?
Pick one claim on 102, and pick a different claim on 103?
Pick one claim on both grounds?
About new material: I didn’t spend much time at all on these. Around 5 hours in total to go over the basics. The two links people posted are helpful. Got around 10 questions. Most of them are easy search. Basically know at what time who are qualified to request which process.
Know only patent owner may request supplemental exam
What evidences can each process submit
Know ex parte reexam estoppel
PGR vs IPR (9 months, can appeal to Federal Circuit)
3rd party who has not previously filed a civil action can file IPR
What needs to be submitted for IPR
CBM question, does the case qualify
Inter partes reexam (09/16/2011-09/16/2012)
Takeaway: Only know 2002-2003 questions are not enough, even if you can get 90% correct. I felt the last week I spent to review all the new questions for the last 3 months and searched the MPEP to find the answers really made a difference. You need to know the key concepts involved in all these questions. So when you do the test, you can nail half of the questions and have time to search the MPEP for the rest.
Good luck to everyone!
Hurricane Sandy,
I know you didn’t do any much help but you are doing us a great favor on this website.
Just want to clarify some possible answers to the topics you’ve put up and I want to know if you remember any similar answers. Here goes:
YOUR Q) “New question about Thermos with material heated to 180, rejected, how to get around it”
MY ANSWER) Claim should be amended to specify or describe the coating material rather than just a coating that can handle the temperature range.
YOUR Q) Which signature or lack of thereof is inappropriate (small entity signed by one inventor, notice of appeal not signed, correspondence by representative not of record with registration number…)
MY ANSWER) Would it be the one where “Reply to office action on the merits signed by only one joint inventor, where no practitioner of record”?
YOUR Q) “What can/can’t be filed to get filing date for: provisional, non provisional (this was asked in 2 different forms)”
MY ANSWER) Non-provisional (B) filed within year of provisional (A), as is normal. Forgot to put a claim in the non-provisional (B), though, so it doesn’t get a filing date. All you can do is convert it to a provisional (C) and then refile another non-provisional (D) that claims priority from (C). Your mistake cost you a year of priority but you at least salvaged priority to the date you initially filed the faulty non-prov. (B).
So the ‘my answers’ are the answers of people who have posted before. I just want to know if you saw those similar answers or not, this way it kind of affirms me my studying of past comments is helping me. Thanks for the much help.
Sandy,
For: “Express mailing label and correspondence papers (they had 3 different choices, I, II, and III, each with examples of situations that had the express mailing # on the label, and with something not on the correspondence papers)”
Do you remember if it was along the lines of…”What date will I get without a petition and you had three options which had the condition that the date in was clearly marked, the fourth was date in was not clear but it was in the application inside the envelope.
Was the answer, you can get a date in by a petition?!?!
If you remember the answer along these lines and post, it would me very much helpful. Thanks.
for gotta, the express mail/certificate of mailing question i got, which was similar if not the same as sandy’s (had I, II, III choices), the question asked which would get the benefit of the mailing date WITHOUT a petition. from what i remember, one choice was the express mail with the date in clearly written and on the pages of correspondence, one without the date written in and one without the date written in but with a proper certificate of mailing. there may have been a fourth choice actually…
Hi everyone,
I’m having trouble finding in 500 what can and can’t be filed using Express Mail. Can anyone help me with this? Thanks
I passed today! I am so thankful for this site; it really calmed me down about all that new material. I remember seeing about 7 or 8 questions on the brand new stuff and I did not study it for more than five minutes so I am still assuming those questions dont count.
I did get a good number of repeats though and seems like it was very similar to Sandys test. I saw:
-lipgloss
-ben’s 147 claims
-few certificate of mailing
-3 or so KSR
-felt like a lot about appeals- and filing amendments with/before/after
-about 5 or 6 PCT
-signature or lack thereof
-94 year old tom
-tommie/jo
-crossing the street
-deposit of biological material
-spanish phone invention w/CIP
-a question about a dimpled propeller that seemed to be very similar to the cell phone without the antenna and publication question
-time for the examiner to ask for restriction
-this question about a patent assigned to a company, who then gave an exclusive license to another company who improved the invention
-if youre making a rejection under 112 and its for two reasons, do you make two objections, just one, only use one of the reasons etc.
-depression treatment chemical
-tables on the cd-rom
-which is incorrect regarding interviews
-laurel, abbot, hardy
-one one the new stuff involving peter parker, the daily planet, stretchy material and fraud/inequitable conduct
-something else regarding fraud/inequitable conduct
-missing a couple pages of the specification but the rest could be construed as written description
-exam guidelines regarding enablement
-what is not a continued application
-costa rica
-which fee isnt reduced for small entity
-file app w/ small entity status, then applicant notifies atty that its no longer small entity
-fan/clock/lamp with drawing that is not same scale (maybe these were two separate questions and I’m combining them?)
-“high”
-piecemeal
there were obviously more but I cannot remember now. Very excited I passed! for your reference, I have a degree in biochem, worked in a lab for a while, and am in law school but have never taken a patent course or worked with patents, even in my old lab. I studied for six weeks and did it!
happy halloween everyone! good luck!
Congrats!!!! And thanks for sharing!!!
Congrats!!!. I am a biochem person in law school too and hope to get the patent bar done soon.
I was wondering for the sections like 102, is the exam still testing the old law? or there will be questions for both old and new laws just depending on the date of the filing given in the question?
Thanks a lot and Congrats again!!
from what i saw, it seemed the same. this will probably change with the next big change in april. someone can correct me if im wrong. the 102 concepts are the same now since the definition of prior art is the same i believe. and, there are still a lot of repeat questions, from the 2002-2003 tests as well as the ones on here. for the new material, you will see dates like 9/16/2011 and after, and actual terms like post grant review etc. so its easy to see where you should be looking (the MPEP vs reference materials). good luck, get it done soon!
Thank you so much!!!
If an applicant can make a sound argument that the person of ordinary skill in the art (PHOSITA) can figure out the invention disclosed…
What types of rejections can be made?
Is anyone else taking the exam in November?
If I can get approval back from the PTO in time
it took me 2 weeks from my second response to get approval. Hurricane Sandy slowed down the mail for me.
I will be taking November 19th
Can someone confirm this for me?
What types of applications are considered a new application?
RCE
CPA
National Stage Application
Provisional?
Some say RCE but it doesn’t make sense to me. Help please. Thanks
RCE is NOT a new application. The other three are. Might be why it is confusing you because you read the wrong form of the question?
The question was probably which of the following is NOT a new application? Interesting…we shall see on the exam day haha.
Prelim Pass today.
Thanks for the site.
Few things.
1st three hours was brutal not many repeats- 3 I think
2nd session- 15-20 repeats
Some questions
-Old man gardening tool- yes you can have an interview before 1st office action but may have to bring certain documents and other items MPEP under interviews (direct quote on prior to 1st office action interview)
-Tribel
-Lip Gloss
-Laurel, Hardy, Abbott
-Claim counting 147
-Bloc
-Crossing the Street
-Tommie/Jo
Not on this site
Propeller question- dimples
heat resistant material 180 degrees
A continuation patent does not come from what type of patent – answer is provisional- definition of continuation patent MPEP 200
Lots of PCT
filing dates, priority dates
Quite a few what would the practitioner do in certain case
also what would examiner do in certain case
KSR- 5-6 questions
Appeals- 4-6 questions
Biological deposit
CD’s as part of app
Only 4-7 questions on AIA material- really easy to identify
Hope this helps
Thanks for having this up
thanks for post…please update if you remember any specifics!
In regard to the question individuals have recently seen regarding the disabled Applicant’s daughter conducting the interview. I’ve seen several comments that people think this is acceptable as long as she is not “sounding out the Examiner”.
MPEP 713.05 Special Situations, states “Interviews (MPEP § 713) are frequently requested by persons whose credentials are of such informal character that there is serious question as to whether such persons are entitled to any information under the provisions of 37 CFR 1.14. In general, interviews are not granted to persons who lack proper authority from the applicant or attorney or agent of record in the form of a paper on file in the application.”
While the Daughter may call and schedule the interview, just like an office admin may schedule the interview for an Attorney, I don’t see any special needs provisions that allow the daughter to act in a representative capacity and conduct the interview. Anyone disagree?
713.05 would be my point of reference. If the facts are that the elderly inventor is hard of hearing as indicated, if the facts indicate the daughter is a resonsble accomodation to assist with his disability and the applicant, agent or attorney submitted a written request for her to act as an intrepretive or assisting capacity during the interview, under the ADA, which applies to the PTO as well as any other Agency, she would be able to partipcate, not as an agent with temporary authority to prosecute, but as an assisting party for an applicant with a disability. This is likley a beta question. I would look for facts in the answers such as there was a written prior request for the daughter to participate that was either approved or more likley for an existing authorized reason that binds the examiner to allow her to participate. Absent that set of facts she would not be allowed to actually participate in the interview, but as stated anyone may be able to call and schedule one.
So I was trying to look up when can a Restriction Requirement be made…is it AT the first office action? Before it or after it? or in a second office action or after final rejection? There is nothing specific in 800 about this, it just says Office Action.
Got a prelim pass this afternoon. I started from essentially zero prior knowledge and hit the Bullseye prep and practice tests for about 3 1/2 months. This site was a huge help wrapping things up at the end. There were tons of repeats from the old tests and questions I’d seen on this site, I would say about 30-40 between the two sessions. I only did a cursory look at the new AIA materials, but as everyone commented, they’re pretty obvious as to which one they are (recent or future dates), and they were probably the beta questions anyways.
Repeated questions I can remember….
moon dust
bloc
swedish inventors
japanese filing
living or inanimate
tommie/jo
tribel
~6 appeals questions
fan/lamp/clock dimensions
112 6th paragraph
best mode
mixture y
melting point
uspto policy on telephone inteviews
communicating with suspended practictioner
rapidity
a couple variations on the missing parts in a pct app
fees reduced by small entity
trade secret
extention of time after advisory action
provisional double patenting
when to use 103(c)
a good amount of pretty straight forward 102 and 103 questions
2 KSR
8 AIA
I panicked a bit at the first couple questions on part one because they were pretty lengthy and new, but I calmed down pretty quickly as the questions and topics got more recognizable. The key is being able to knock off the repeats and short questions quickly, and then going back and looking up the rest. Making your own answer sheet is a big help. I thought I would be working down to the wire on each section, but I had plenty of time to double check everything on each section, and even ended part 2 with a little under an hour to spare, and felt surprisingly confident when I ended the test. In summary, if you’ve put the time in and understand the practice questions and the questions on this site, you should be fine….until the whole thing gets blown up in the Spring of course. Thanks for the help!
Thanks for the extra confidence budboomer. Were some of the AIA questions as straight forward as people are saying? What would be the main focus you could advise someone when studying the new material?
They seemed pretty straight forward, but I’ll admit to not being very familiar with the new material. Of the new material questions, most focused on IPR/CBM/PGR, as in when to use each and how to do so.
What about Bilski? What is the current fact pattern on that?
Budboomer:
Thank you. This helps so much. On the ‘living or inanimate’ question, which is a new one, my take is its Not a criteria for whther or not the claim is patentable subject matter under 101:
2105 Patentable Subject Matter — Living Subject Matter
In view of this decision, the Office has issued these guidelines as to how 35 U.S.C. 101 will be inter¬preted. The Supreme Court made the following points in the Chakrabarty opinion:
1. “Guided by these canons of construction, this Court has read the term ‘manufacture’ in § 101 in accordance with its dictionary definition to mean ‘the production of articles for use from raw materials prepared by giving to these materials new forms, qualities, properties, or combi¬nations whether by hand labor or by machinery.’’……7. “Congress thus recognized that the relevant distinction was not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions. Here, respondent’s microorgan¬ism is the result of human ingenuity and research.”
Ordinaryskill
^^^Yep, that was what I used as a reference in my answer. I forgot the exact question, but knowing the passage above makes the answer very clear.
Budboomer,
Do you remember any specific details that caught you off guard during the exam? Thanks for the ton of help you’ve provided with your post.
Budboomer:
I do not want to waste my time being a test subject for the OED’s new beta questions, and plan to focus on the 90 questions that count. AIA is too recent for the OED to have them off beta testing for the next few months, and with the recent weather related closures due to Sandy along the east coast there were not as many exam takers in November to advance the beta test runs. I plan to read the AM & PM fifty questions within the initial ten minutes of each session, mark all the repeats, and mark all the AIA’s (been trying to memorized the 2000-2003 questions) then go back and do the repeats first (will reread them to make sure they have not edited them!) Once I do that, say within the first 30 minutes, skip the AIA’s till the end, and do the rest of the exam with more time to search the MPEP per question. I figure if I get repeats done and out of the way, will be able to spend more time on the hard ones. Thanks for any guidance!
Ordinary Skill,
Your plan sounds great and I think it is a beneficial one. I’m really debating if it is OK to skip the new AIA Beta questions. I don’t wanna have to take the risk of loosing points…bleh. You think its wise to do that?
Other opinions?
By way of clarification, I will be answeing the AIA questions, just leaving them as the very last questions I spend any remaining time on AFTER I have done all the repeats, the other non-AIA’s and so on. Since the AIA questions are likley still in beta stage, it just makes sense to risk these questions as the last ones in the line of time allocation, since even if one answers them the time spent on them is not going to the 90 questions that count for grading. These AIA questions are the equivalent of a survey conducted live during the exam being subsidized by the exam taker to test out the OED’s sample questions, and take precious time away from real questions that definitely count towards a passing grade. One can get every AIA question right, spend three minutes on each one, and waste 24 to 30 minutes in the exam that would be better spent cross searching an appeals or PCT question that you know is real points at play. I deem this a good calculated risk, allocating the time towards the questions that are more certain to actually count than to play the role of lab rat for the OED on the limited time allocated to pass this exam.
If anyone has seen questions on PCT MISSING PARTS. I know it used to be 1 month to correct the missing parts but now its 2 months. Rule 20.5 states 1 month but Rule 20.7 states 2 months.
Can anyone confirm this? Also, if you have seen this in the latest exams, can you give more information on it?
NVM its 2 months. Ahhh.
Passed 11/13/12
Special thanks to all in this useful and helpful website.
Following are what I remember from my test yesterday for future test takers.
Good luck.
#6 Oct 2003 am
Extension of time during reexamination
#9 Oct 2003 am
Smith DRAM
#26 Oct 2003 am
Supplemental oath or declaration treated as amendment 1.312 after allowance in reissue
#42 Oct 2003 am
Appeal is not permitted because currently not rejected in continuation though twice rejected in parent.
#44 Oct 2003 am
Non publication request – 45 days
#28 Oct 2003 pm
Parking meter
Simply add comparator and alarm in drawing
#29 Oct 2003 pm
Dead line to file design application. 6 months from foreign filing.
Potter 103(a)
Laurel, Abbot and Hardy – Affidavit 1.131
New grounds of rejection by Board – 1213.02
Dead inventor had assigned part of interest to practitioner
Who can sign disclaimer – 1490
DNA question. sorry not remember
Broom 900+ claims
Number of dependent claim is 8
Indian patent agent has duty to disclose.
Best mode
“do not have to point out”
Restriction between combination and subcombination
Requirement to invoke 112 6th
Straight from new guideline Feb 2011
Second ex parte reexamination request by same requester and different requester
Tables on CD
52 tables, each less than half page length.
CD1 contains tables 1-26. CD2 contains tables 27-52.
On sale bar
Sales throughout US 1 year before filing date will bar
PCT – all applicants with Sweden residence and nationality filed IA(English) in US/RO
PCT – all applicants with Germany residence and nationality filed IA(English) in US/RO
PCT – only designating US
IA not published. Published when entered into national stage
Some other PCTs
Reissue ABCD/ABCDE/BCDE
2 variants in AM!!
Fact is almost same; reissue is filed with narrowing claim (ABCDE) and oath indicating narrowing.
Difference is when broadened claim (BCDE) is filed as preliminary amendment.
One on 2 year date, the other after 2 year date
Issued patent with claim 1 (element X) and claim 2 (element X,Y,Z)
3 year after issue, found prior art to invalidate claim 1.
Further, want claim of element X,Y.
How you can do
a. file reissue to add claim 3 (X,Y) and cancel claim 1
b. first disclaim claim 1, then file reissue to add claim 3 (X,Y)
c. wrong
d. wrong
e. file reissue to add claim 3 (X,Y) with certificate of correction to cancel claim 1
Reissue
Can be used to correct foreign priority if failed when original application filed. statement necessary.
User inspection (User pass) at USPTO
Oral request is acceptable for attorney/agent
Paperwork is necessary for others
Handling of appellant’s submission after reply brief responsive to supplemental examiner’s answer
I could not find correct answer from MPEP.
Smith laminate – which is inappropriate claim to overcome 102
a. comprising 2 layers
b. comprising 2 layers direct contact
c. comprising 2 layers, no adhesive layer therebetween
d. consisting of 2 layers
e. none of them?
94 years old
Which is true?
I. daughter can(or cannot) “sound out”
II. daughter can call examiner for appointment of interview
III. attorney can do something
Fig.3 omitted from provisional although referenced in the spec.
What can you do in response to Notice of Omitted Items? MPEP601.01(g)
Which is correct about ids?
a. applicant must conduct search
b. filing ids is admission of materiality
c. something clearly incorrect
d. submitted with list, and listed patents, publication and information.
e. forgot
Now at 8:30pm pacific time on the last day for reply to OA
What you can do is:
I. file by fax
II. file by efs-web
III. file by express mail in accordance with 3.10
Compound: enablement issue
Spec shows formula but no description of how to make.
Rejection by only enablement or both enablement and WD?
Filed nonprovisional. Found no claim in nonprovisional.
How to keep from abandoned:
Convert to provisional within 12 months.
Which is incorrect?
a. if residence in ADS is correct and residence in oath is wrong, need to file new oath
b. ???
c. ???
d. ???
e. ???
ADS governs discrepancy except citizenship
Which is incorrect claim interpretation by examiner?
Do as court does in infringement case
Which application can be faxed?
a. provisional 111(b)
b. national stage 371
c. continuation 1.53(b)
d. CPA 1.53(d)
e. nonprovisional 111(a)
Office action mailed on certain date, but no reply due set by examiner.
Practitioner filed request of suspension for three months with RCE and fee.
After 6 month date from the mailing date of OA, which is true?
a. Reply within the suspension term (3 months) is acceptable.
b. something
c. Nothing prevents the application from abandoned
d. ???
e. ???
KSR
Obvious to Try – straight from guidance 9/1/2010
2 or 3 Bilski
– Abstract idea
– Rejected under 101. examiner stated “not satisfy M-T test”
How to overcome?
a. something
b. argue “useful, concrete and tangible” result
c. something
d. add machine element <— correct?
e. something
Inter parte reexamination
Reasonably likelihood or substantial new question
Filing date of reexamination is key
AIA – 3 in am, 4 in pm
IPR – when and how
PGR – when and how
Preissuance submission – when and how
Assignment can serve as oath if including required language for oath.
Decision of IPR can be appealed to where? CAFC
In regards to:
Now at 8:30pm pacific time on the last day for reply to OA
What you can do is:
I. file by fax
II. file by efs-web
III. file by express mail in accordance with 3.10
Did the fax say anything about a CoT? Or how did you answer the question?
per MPEP 502.01 “For example, a facsimile transmission to the Office from California starting on a Friday at 8:45 p.m. Pacific time and taking 20 minutes, would be completed at 9:05 p.m. Pacific time. The complete transmission would be received in the Office around 12:05 a.m. Eastern time on Saturday (……) Note however, that if the Certificate of Transmission is available (for documents not proscribed by 37 CFR 1.8(a)(2)), then the above facsimile may be considered timely filed on Friday if it contains a Certificate of Transmission and is in compliance with 37 CFR 1.8(a)(1)(i)(B) and (ii)”
also…
The USPTO only accepts “Post office to Addressee” express mail….
The mailing can either be directly taken to the post office (where it can be stamped by a postal employee directly) or it can be put in a drop-box, but if the post office has already made the final pickup from that drop-box the mailng will not get labeled until the date of the next pickup. (Take it to the post office to be certain)
geoff,
Not remember about COT in fax.
My choice was “all of them”. There might be “II and III”
sorry “3.10” is typo. it’s “1.10”.
I believe “in accordance with 1.10” means everything is satisfied for proper “express mail” procedure.
94 years old
Which is true?
I. daughter can(or cannot) “sound out”
II. daughter can call examiner for appointment of interview
III. attorney can do something
In regards to this one is there an option for II & III since I is 100% not correct but II can be ok if the old man has a handicap and she acts as the intermediate between the examiner and the old man? Is this how you interpreted it?
And for these two since they are in English, they would FORWARD TO IB right? Anyone confirm this…
PCT – all applicants with Sweden residence and nationality filed IA(English) in US/RO
PCT – all applicants with Germany residence and nationality filed IA(English) in US/RO
Thank you for the brain dump!
geoff,
For the 94 year olds I think the answer is II and III…someone correct me?
Also, Jitt what did you put down for:
Smith laminate – which is inappropriate claim to overcome 102
a. comprising 2 layers
b. comprising 2 layers direct contact
c. comprising 2 layers, no adhesive layer therebetween
d. consisting of 2 layers
e. none of them?
Do you remember? It’s a bit confusing. Thanks for the post!!
the answer would be (a) comprising 2 layers since it asks which is inappropriate. reference 4.00.17a (it is a variation of this question)
Gotta get through this…do you have the “efs-web” submission being ok? Fax will work and like Jtt said “since 1.10 is already complied with” the mail would be ok. I’m going with all of the above since the question is “can do”
for the 8:30pm thing:
If it is sent at 8:30pm + 20 = 8:50 so I works…I guess we can use II and Express Mail works as usual as long as you have ‘date-in’ so can someone confirm that its ALL OF THE ABOVE?
geoff,
Yeah I think file by efs-web i think is good to go? Eeek. That’s an unusual one but I don’t see why not go ahead with submitting it online…so I would just go with all the above.
Also thanks for the comprising answer. Makes sense.
This question is bothering me because I know Claim 1 should obviously be cancelled but wouldn’t adding a claim 3 with reissue narrow it? The answer choices seem weird, what do you think?:
Issued patent with claim 1 (element X) and claim 2 (element X,Y,Z)
3 year after issue, found prior art to invalidate claim 1.
Further, want claim of element X,Y.
How you can do
a. file reissue to add claim 3 (X,Y) and cancel claim 1
b. first disclaim claim 1, then file reissue to add claim 3 (X,Y)
c. wrong
d. wrong
e. file reissue to add claim 3 (X,Y) with certificate of correction to cancel claim 1
gotta get through this,
My choice was (a) because added claim (X,Y) is narrowed from claim 1 (X). If (b), claim (X,Y) would be impermissible broadening from claim 2. (e) is also incorrect as CoC is not proper for changing scope substantially.
Jitt,
Compound: enablement issue
Spec shows formula but no description of how to make.
Rejection by only enablement or both enablement and WD?
For this, it seems that they person had formulas and such but no description on how to make it…in other words, he was in possession which means there was written description BUT there was no enablement.
In this case…did you answer just enablement rejection or BOTH rejections? Why would you reject both? Wouldn’t it be just an enablement rejection because the dude doesn’t show how to make it?
Any comments appreciated!
Agree to you. My choice was enablement only.
I think this question is a variant of following.
http://mypatentbar.com/2008/08/07/q-chemical-claim-mpep-2100/#comment-41188
Sweet, yeah thats what I thought! Some of the questions they give us are so poorly worded.
Jitt, just two more question…I swear I’ll stop bothering you after this:
Reissue ABCD/ABCDE/BCDE
2 variants in AM!!
Fact is almost same; reissue is filed with narrowing claim (ABCDE) and oath indicating narrowing.
Difference is when broadened claim (BCDE) is filed as preliminary amendment.
One on 2 year date, the other after 2 year date
===> for this question I know that one of the answers is File within 2 years and get the reissue with the narrowing claim…Do you remember what the variant was? Because I know in the past exams there has only been only one this kind of a question.
And for the tables on CD question, did you answer Improper because it is more than 52 which means more than 100 pages which means it needs to submitted on a duplicate CD?
Thanks. You are awesome.
I think I got 2 variants of following.
http://mypatentbar.com/2010/04/03/q-abcdabcdebcde-10-03-2p/
First one: Fact is same as above except oath was filed on April 11 and said “this is narrowing reissue”.
As oath can be amended later, preliminary amendment on May 8, 2003 for filing broadening claim to BCDE is acceptable.because the claim is filed on the 2 year date from issuance. So my answer was “Reissue is proper. Examiner may conduct search” or something like that
Second one: Fact is same as first one, but, preliminary amendment with BCDE claim is filed on May 10, which is outside 2 year date.
As oath said “this is narrowing reissue”, broadening reissue denied.
If oath said “this is broadening reissue”, the preliminary would be accepted though outside 2 year date.
Now found. In this second case, only preliminary amendment is denied, then ABCDE claim still alive? Or reissue is abandoned?
Table:
52 Tables. Length of each table is less than half page. So total length of 52 tables should be less than 26 pages. So cannot use CD.
Tables:
In my first post about tables was only fact.
Sorry to confuse you.
More detail came out from my brain!!
Tom, 94 year old, inventor filed a patent application and obtained “special” status.
He wants to have an interview with examiner.
Which is correct?
I. daughter can “sound out”
II. daughter can call examiner for appointment of interview
III. since interview is before 1st OA, attorney prepares prior art references and some paper to explain the state of the art and how claim is distinguished over references.
So,
I: NO
II: OK
III: OK MPEP713.02
Answer is “II and III”
Tom is hard of hearing…
Thanks for confirming. You are the best!!
One more question.
ASSIGNEE NOT OF RECORD can sign what? A Small Entity Status or a Terminal Disclaimer?
I need major clarification on this.
37CFR1.321(b)
The terminal disclaimer, to be recorded in the Patent and Trademark Office, must:
(1) be signed:
(i) by the applicant, or
(ii) if there is an assignee of record of an undivided part interest, by the applicant and such assignee, or
(iii) if there is an assignee of record of the entire interest, by such assignee, or
(iv) by an attorney or agent of record;
So, TD signed by assignee NOT of record may be denied.
Small Entity
37CFR1.27
(2) Parties who can sign and file the written assertion. The written assertion can be signed by:
(i) One of the parties identified in § 1.33(b) (e.g., an attorney or agent registered with the Office), § 3.73(b) of this chapter notwithstanding, who can also file the written assertion;
(ii) At least one of the individuals identified as an inventor (even though a § 1.63 executed oath or declaration has not been submitted), notwithstanding § 1.33(b)(4), who can also file the written assertion pursuant to the exception under § 1.33(b) of this part; or
(iii) An assignee of an undivided part interest, notwithstanding §§ 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee cannot file the assertion without resort to a party identified under § 1.33(b) of this part.
IPR – when and how
PGR – when and how
Preissuance submission – when and how
When you say when and how…the when is pretty obvious but how detailed of a how do we need to know? I don’t want to allocate too much time to studying new material.
So I guess Small Entity Status it is. Wordddd.
geoff,
As i spent only last 5-10 min for AIA questions, test detail is not in my memory.
I guess you may only have to review AIA roadshow presentation by USPTO if taking test within a few month. (But this presentation is not provided at test site. You can see only Final Rule.)
http://www.uspto.gov/aia_implementation/120910-aia-roadshow-slides.pdf
For example: (Below is not from actual test)
IPR: Only 102 & 103 issue
PGR/CBM: 101, 102, 103 and 112 except best mode
PGR: Petitioner has not filed invalidity action
CBM: Petitioner must be sued or charged with infringement
Preissuance submission: printed publication only and may not be submitted by fax. Translation necessary for non-English doc.
etc.
jitt,
Do you remember if these showed up on your exam? And if so, what did you put down for them? Thankssss.
Q7b (Reclaiming Benefit) : Applicant files a nonprovisional application with priority, then priority deleted, examiner cites prior art, applicant wants to amend application to get prior patent benefit. How can he do this?
Q7b (Extend life of patent by deleting a benefit claim): How can you deleting priority claim to extend life of patent deleting a benefit claim
when is your test date ggtt?
In a few weeks :/ FREAKING out even thought I studied quite a bit…you?
At this stage its just about Confidence, I guess I just need some reassuring lol.
yea I hear ya…with all the changes it makes it a little more stressful. Mines on 11/28. I’ve been studying since late August but since last week been putting in 8-10 hours a day. Go to smallentity.com and buy their exam software for 30 bucks. It simulates the tests from 2000-2003. I usually wake up and do 3 or 4 tests in about 2.5 hours then do one more before I end the day with studying this site in between. The software really helps.
Deleting benefit and reclaiming
I didn’t see them in my test, but I studied.
MPEP201.11
C) The later-filed application must contain a reference to the prior-filed application in the first sentence(s) of the specification or in an application data sheet, for a benefit claim under 35 U.S.C. 120, 121, or 365(c),
G. Deleting Benefit Claims
applicants may cancel their claim to priority by amending the specification or submitting a new application data sheet (no supplemental declaration is necessary) to delete any references to prior applications.
A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application. If the applicant later files a petition to accept an unintentionally delayed claim to add the benefit claim to the prior application in the same application from which the benefit claim was canceled, the Office may refuse to accept such benefit claim because the delay was not unintentional.
Please be sure to link through to this insightful video on the best means to approach the pressures and challenges of preparing and taking this exam. It will change your whole outlook for the better.
https://www.youtube.com/watch?v=5ilGGP9BDZs
HAHAHAHAHAHAHAHAHAHA.
Continuation application can claim priority of the following Except:
design
pct in national stage
cpa
provisial
I know you can’t claim FOREIGN priority in design but it makes sense to me the answer would be provisional given the choices above. Can someone confirm this? Thanks!
you cannot continue a provisional application because they automatically expire after 12 months (also provisional applications are not examined). You can only convert them to a non provisional.
That’s what I thought. Thanks!!
Which is correct about ids?
a. applicant must conduct search
b. filing ids is admission of materiality
c. something clearly incorrect
d. submitted with list, and listed patents, publication and information.
e. forgot
Office action mailed on certain date, but no reply due set by examiner.
Practitioner filed request of suspension for three months with RCE and fee.
After 6 month date from the mailing date of OA, which is true?
a. Reply within the suspension term (3 months) is acceptable.
b. something
c. Nothing prevents the application from abandoned
d. ???
e. ???
What was correct answer for these?
Jtt,
Can you confirm if this is right? For IDS, I think D is the right answer.
For OA question, I think the answer is C according to the information stated.
Someone correct me?
I received a preliminary pass this past week. I was over prepared, the Exam was very fair, questions off this site were very helpful, I finished the morning and afternoon sessions each 1.5 hrs early.
Some recently reported questions were on my exam, including several of the same questions as discussed above in jtt’s 11/14 post. A few that I can remember, include:
Laurel, Abbot and Hardy – Affidavit 1.131
Non publication request – Waited over 45 days (2months in this case)
900+ claims what to do – Call Applicant (MPEP 2173.05(n))
Duty to disclose – Indian Patent Attorney
Restriction b/w Combination & Sub combination (MPEP 806.04)
Restriction with a linking claim (MPEP 809)
A subsequent ex-parte reexamination whether allowed by (a) same requestor with a SNQ and/or (b) new requestor with SNQ.
Tables on Cd (MPEP 608.05)
PCT – US non competent RO
PCT – Missing drawing – Not a obvious mistake (MPEP 1836)
PCT – Non-publication until enters national stage if US only designation (MPEP 1803)
A question I had not previously seen involving interferences between your clients issued patent and a recently issued patent: Two answer choices seemed reasonable (1) request reissue of your patent and subsequently seek an interference, or (2) request exparte reexam of the recently issued patent using your clients patent as prior art. (See e.g, MPEP 1449.02)
AIA Phase II: About 7-8 AIA questions, very easy to spot based on dates, asking very generalized questions about which procedure to use based on whether more than 9mo post-grant and which standard applies at which point.
I made a pretty detailed outline while I studied, if anyone wants a copy let me know.
Best
Congrats on the pass!
I’m taking mine in 2 weeks, and I would love a copy of the outline to supplement my studying. Below is my email. Thank you!
gilhlee@gmail.com
Hey Practicioner,
I’d love the outline as well to see if it is beneficial to my studying. My email is edgeofspace127@gmail.com. Thanks a bunch.
Practicioner for this question:
A question I had not previously seen involving interferences between your clients issued patent and a recently issued patent: Two answer choices seemed reasonable (1) request reissue of your patent and subsequently seek an interference, or (2) request exparte reexam of the recently issued patent using your clients patent as prior art. (See e.g, MPEP 1449.02)
Would the answer be (1)? I can’t seem to find anything that has to do with (2) in the section you’ve provided. Please confirm. Thanks for the much help and guidance.
Hi Practioner…please email your outline. I’m concerned about all of the recently added material.
thank you!
vlv@roadrunner.com
Hi Practioner,
I’d love to have a copy of your outline. Thank you!
My email: calstan2003@gmail.com
Hi,
I kindly request you to share the outline at tsmatch@gmail.com
Thanks
TSM
Practioner- I would appreciate a copy of your outline as well (feb2008barexam at gmail). Nice work on the pass! Thanks for sharing with the site.
Hi Practitioner,
May I please get a copy of your outline as well?
Thanks.
nylakcsd@gmail.com
Hi Practitioner,
Congratulations for passing the exam. I am really scared as I am still studying the chapters and my exam is on 16th december. Could you please help me too in passing?
I would like to have a copy of outline…my email address is bajaj.s@neu.edu
Thank you very much and I heartily appreciate your help
Hi! I recently purchased the passpatentbar.com course online and am worried it is not going to contain enough of the new material. Do you still have a copy of your study guide? It sounds like you blew it out of the water…
Hey Practicioner,
Congrats on passing the exam. I am planning to take exam next month. I too would like to have your detailed Outline. My email address: rbhatnagar2@hotmail.com. Thanks very much.
All:
I took the exam yesterday and achieved a failing score of 60. I was not ready for all the variations, the new AIA material and the lack of repeats. I studied for three months, and I now know what I need to do to pass this the next go round, so I am actually fairly positive about eventually passing this exam. Kudos to those that pass this exam on the first shot, but with a passage rate in the 45-50% range my goal is simply to pass this exam. Once I finally pass I will provide a full brain dump. Rather than list all the questions I had, which would be redundant thanks to the last recent posts by those who actually passed the exam, and are the more credible source for the exam, let me just say the last postings by JTT and Practitioner (congratulations Both!) are all very accurate and I can verify all these questions were on my exam as well. I will focus on refining at least the following question which I had as a way to give back to the site at this juncture.
OLD DEAF TOM, his daughter and the improved garden Tool
Tom, 94 year old, been an avid inventor all his life, filed a patent application for an improved garden tool. He and his daughter are also both avid gardeners. The tool removes weeds without damaging the roots of the adjacent plantings. Due to age Tom obtained “special” status.
He wants to have an interview with examiner as soon as possible. (I guess at 94 that is a good idea, given that so many inventors tend to die on this exam!)
Which is in accordance with MPEP practice and procedure?
I. daughter, who is excited about the new garden tool, nonetheless CAN NOT set up interview to “sound out” examiner.
II. Daughter can call examiner for appointment for the interview so as to schedule the interview at a mutually convenient time so she can discuss the new invention with the examiner. (NOTE: there is no mention that Tom or the attorney will also participate in the interview in this version of the question set, just that the daughter is calling with the stated objective she will need to schedule at a mutually convenient time so that she can actively participate and to discuss the invention with the examiner.)
III. Since interview is before 1st office action, the patent attorney representing Tom prepares prior art references and some paper to explain the state of the art and how claim is distinguished over references.
The answers include several variations, such as I, I and II, I and III and so forth.
Here is my opinion:
I: This is correct; you can never have an interview just to sound out the examiner.
II: This is not correct, daughter is NOT an inventor, and not a registered agent, and absent written papers submitted in advance and approved by examiner, say for example she is aiding Tom as a hearing interpreter to help with his disability under the ADA, which is not specifically detailed in the answers, she likely will not be able to participate in the interview.
III: This IS CORRECT. The patent attorney can schedule an interview before the first office action, as discussed in following section of the MPEP:
713.02Interviews Prior to First Official Action [R-6]
A request for an interview prior to the first Office action is ordinarily granted in continuing or substitute applications. In all other applications, an interview before the first Office action **>is encouraged where< the examiner determines that such an inter¬view would advance prosecution of the application. Thus, the examiner may require that an applicant requesting an interview before the first Office action provide a paper that includes a general statement of the state of the art at the time of the invention, and an identification of no more than three (3) references believed to be the “closest” prior art and an explana¬tion as to how the broadest claim distinguishes over such references. See 37 CFR 1.133(a).
On my exam my answer was that I and III BOTH are in accordance with MPEP practice and procedure. There are likely several variations of this fact pattern in the exam, so read each question carefully.
Ordinary Skill,
You are kind of scaring me. How did you exactly study for the exam? Did you go through the exam concepts and questions, did you go through ALL the previous posts posted on this ENTIRE website? Have you gone and studied through the MPEP on the major concepts?
If you have done all these in the past three months of studying, I don’t know how you can fail? I mean I just hope that its not the same for everyone? Blah!
And Ordinary Skill,
It would be really beneficial if you posted what you remember from the exam as some of us are taking the exam in a week or two. It would just REALLY help so we can watch out. Much thanks for your help and I wish you best of luck on your next try.
GTGTT: The exam has lots of variations even in what appear to be repeats, so read each question carefully! I studied about three hours a day during the week, had PRG materials. Put in a solid 12 hours on weekends, and focused mainly on 2002 and 2003 problems on the PRG software. I will take the exam again in a few months, and make sure I have this material all down cold, since I apparently did not this first time.
The following are the questions I remember:
Old Tom, his daughter and the garden tool, explained in detail at my other posting.
Most if not all the questions posted by Practioner and Jtt..
– Tommie and Jo (Toxic Waste)
– French Patent (102(d) only)
Moondust
7. Bloc Compound Y/cancer cure
Q4) Submitting Tables on CD-ROM
Q17) Velcro (Trademarks in Claims)
Q20) Information requested from USPTO
Q22) Germany – PCT / Patent Term
Q14) Costa Rica – PCT
Q52) Multiplicity
Q6) Obviousness
Q20) Information requested from USPTO
Laurel, Hardy & Abbot
Q33) Indefinite Claim using relative term ‘High’, can be adequate based on terms used is art.
That’s all of the questions I recall. I am signing off. Time to start from where I left off and get back to work drilling the old exams and try to make up the ten points I need to pass. Again, thanks to everyone who contributed to this site, and good luck.
I agree with Ordinaryskill that the answer for the disabled inventor question is III. Various people keep mentioning the ADA, however, #1 I doubt in 100 questions they are testing you on a random federal statutes, and #2 “reasonable accommodations” would be getting a licensed practitioner to represent you, not allowing your daughter to pop over to the PTO and argue on your behalf.
Anyone who left there e-mail address I have sent over my outline. Ordinary Skill – What is your e-mail, I can send you over an outline if you would like.
Best.
Hi Practioner,
Would you please share your outline?!! my email is : hope8548@gmail.com
Thank you for your help.
Hi Practioner,
Congrats on the pass. Could you send me a copy of your outliine too?
antiperipheral@yahoo.com
Thanks!!
Practitioner,
would you mind shooting me a copy of your outline? Thanks!
bwd6@case.edu
Hi Practitioner,
If you’re still around, would you mind sending me a copy of your outline? Thanks a lot!
Hi Practioner, can u please share your outline to my mail I’d too?
shuklavibha76@yahoo.com
Hello Practioner,
Could you please share your outline with me? Thanks!
jjkexogrid@gmail.com
Hello Practioner,
I am a couple months late! But, may I please have your study outline? Thank you SO much and CONGRATULATIONS!!
email is: shabynowrouzi at gmail.com
Practioner,
Please send a copy of the outline to phosita@hotmail.com
Thank-you!
Practitioner,
Would you please send the outline to me as well? 2085097@gmail.com
Thanks!
Practioner,
Could you please forward your outline to pikes675@gmail.com
Thank you.
January Exam
Practitioner, could you please send me a copy of your outline to me as well?
janderbing@yahoo.com
Thanks!
Hi Practioner. May I please have a copy of your outline? Thank you!!
ChocBar999@gmail.com
Hi Practitioner, Would love a copy of your outline if you’re still offering it.
Thanks!
sendyourjunk2me@gmail.com
Hi Practitioner
Can I possibly have a copy of your outline, too?
Thanks in advance. kimboyou@gmail.com
Hi all (It’s bfusion).
It’s been a while since I’ve posted (some people were asking me about my study materials).
What I currently have, is a spreadsheet of every known question asked on the exams, when they appear, etc. and two word documents (one is ~100 compiled questions of new material being asked on the exam, and one is ~10 pages of concepts to know for the exam being tested).
I’m currently asking $85 for the materials (but, that’s about to change with some new additions/changes)
I also have a document highlighting the most recent changes to the MPEP.
if you are interested, feel free to email me (bfusion.uspto@gmail.com). IF you check back to july-September posts, you’ll see a lot of posts from people using the resources (who thought they were worthwhile).
I haven’t been posting as much (work has slammed me) but I hope to be back on here soon updating.
~Bfusion
oh, ps: A few of you asked what my background was/is after I passed the exam
I have a PhD (molecular biophysics), but had NO background in law.
Frankly, the MPEP scared the dickens out of me, and just the fact of starting to study seemed like an overwhelming task. The first question, WHERE DO YOU START?!!!
Through the process of studying, I put together the above materials / study guidelines that I used, because I found the whole process of studying to be SO confusing, and I myself wasted a good bit of time just trying to organize myself.
I passed yesterday on the second try, and the most significant factor that pushed me over the mark was BFusion’s study material. They are concise, on-point, highly accessible, and would probably guarantee a pass even if I had studied half as much. I feel like an afternoon with these materials is worth 50+ hours of “studying” that I was doing. I encountered no surprises on the exam thanks to these guides, and actually had 90 minutes left over in the AM section, and plenty of time left in PM. This is GOLD–it is literally a roadmap of the exam. You do not want to go to battle without this. I give my highest recommendation (higher than this website and PLI combined) and my deepest thanks to Bfusion.
Wyatt,
Thanks, and Congrats on the pass! A Job well done, and I’m glad I could be a part of it and help you out.
Practitioner, please send a copy of your outline to me as well. Many thanks for your generosity. Msm80@pitt.edu. I have the exam scheduled for 11/24, so it’s impending.
FYI: The OED is now announcing that the final AIA Phase III materials will begin testing in early April 2013. Strong incentive to take and pass this exam ASAP before they rewrite the entire examination to include the rest of the AIA!
Here is the link: http://www.uspto.gov/ip/boards/oed/exam/index.jsp
Passed 11/18/12
For materials, I used PLI ’06 course material and lectures, this website, read relevant MPEP 2x, Mambo test 2x, ’01-’03 exams, and read the AIA material once. Studied for a little over a month, 4-5 hrs after work, 10-12 Sat and Sun.
The exam was hard. It took me the entire 3 hrs for both sections to finish. About 15 repeats, lots of 102(e), lots of PCT, 3-4 inter partes/post grant review, 2 KSR. My advice is to really know the old exams, ESPECIALLY the ’03 exams, inside and out. For example, I got TWO Potter questions. Identical fact pattern, rearranged answer choices. I’ll try to update if I remember more questions.
Amending abstract
Claiming, Deleting and Reclaiming Benefit Claim
Missing Parts – PCT
Correcting PCT Applications
Spanish Phone – Design
Velcro
Lip gloss
Broom
Death of inv
Biological deposit
Biological sequence
2 month rule for Final
piecemeal
multiplicity
Few others
Q about 2 month rule after final. Final rej, appl responds in 1 month, examiner sends reply before SSP. Whats the last day appl can respond w/o paying ext fee?
Q about bio seq. Inv claims seq for amino acid? Prior art has same seq but its for a protein? does it anticipate?
Q about post grant/inter partes review. Really complex fact pattern w/ lots of dates. What is examiner’s best option? All i remember is the answer has to do w/ the dates. post grant review only applies for apps filed AFTER march 2013. wrong answer choices had post grant review but for dates before march 2013.
Q about timing req for inter partes review
Q about pat subj matter of transitory signal. Facts – inv adds data to signal to make is stronger/clearer? Inv claims trans signal + added data. Answer is straight from MPEP, transitory signal is not pat subj matter.
Q about accelerated examination (AIA). Inv is over 65, injured and headed to ER and about to die. Whats the fastest way to get examination (expressly says not necessarily get a patent issued). Answer choices were a mix of accelerated exam, make special, RCE. I narrowed it down to 2 choices: accl with fee or accl w/o fee since hes over 65 and qualifies for make special. Forget what I put.
Q about Canadian agent, not registered w/ PTO, prepares app, gives it to US pat agent, later on finds out something should have been disclosed. Does she have duty? I think I said yes since she did all the prep, US agent just filed.
2-3 Qs about when CFR 1.131 can be used.
Hope this helps. This website helped out a lot so I’m trying to pay it forward. On another note, anyone interested in a COPY of the ’06 PLI material and audio? Let me know.
In regards to “Q about accelerated examination (AIA). Inv is over 65, injured and headed to ER and about to die. Whats the fastest way to get examination (expressly says not necessarily get a patent issued). Answer choices were a mix of accelerated exam, make special, RCE. I narrowed it down to 2 choices: accl with fee or accl w/o fee since hes over 65 and qualifies for make special. Forget what I put.”
…I believe this statement is incorrect but would like someone to verify. As of august 25 2006 the PTO set forth guidelines for ACCL EXAMS except for when trying to use the PPH, regarding age or health. Therefore this question should be answered with make special? Also an ACCL exam ALWAYS needs fee.
On the USPTO website they have the statement about ACCL EXAMS and Make Special
“Thus, petitions to make special, except those based on applicant’s health, age, or the PPH pilot program , will be required to comply with the requirements for petitions to make special under the accelerated examination program as set forth in this notice.”
http://www.uspto.gov/patents/process/file/accelerated/index.jsp
Facts – Inventor (over 65) is injured, on his way to the ER, conception of new inv, wants examination within a year. I think it specifically mentions he wants it examined, not necessarily issued. What’s his best option?
A) make special
B) make special with weird stuff, it seemed clearly wrong to me
C) something that sounded like accelerated or reissue/RCE, it seemed clearly wrong to me
D) accelerated without fee because he was over 65 and could qualify for no fee make special.
E) accelerated with fee
I narrowed it down to D and E. When it comes down to two answer choices, I usually pick the one with the fee. Didn’t have time to check MPEP b/c I was running out of time.
Yeah but if its asking which one is the best choice, the one WITHOUT the fee would be the proper choice. If I end up getting this one or the deaf old man, I’m saving it for later.
FiLLIP,
I would go with the choice of making special. After much thought, why would they mention that he is over 65 and dying…Accel. Exam requires a FEE and does not regard age at all. So in that sense, make special makes sense.
It’s a stupid question really, because even if the “make special” doesn’t involve a fee, the track I exam under the AIA may result in faster issuance, and thus more usable patent term.
Gotta get through this, you may be right. The reason I didn’t go with make special is because the way they worded the fact pattern. From what I remember, what the inventor wanted in the fact pattern sounded very similar to the way the USPTO describes accelerated examination, something along the lines of getting a final disposition within 12 months. Hopefully, someone who remembers this question can describe the fact pattern more clearly.
An excellent you tube of John White of PLI describing the patnet bar exam to a group of law students recently. Its free to watch and if you do not have PLI its a decent lecture to at least provide basic background on the exam.
https://www.youtube.com/watch?v=1YtJ2YuTHvs
This is interesting. It looks like if you aggregate and cross-check the “memory dumps,” that the same questions appear each time. Do you think Prometric biases their question selection for each month or something like that? The overlap just does not speak to randomness.
logistically it makes sense…maybe not by month but they need to send their questions to be put into the prometric database at some point and can’t update it every day or every test?
There should be a separate forum on this site dedicated to memory dumps, creating a spreadsheet-like table and then checking frequency of occurrence over time. Either that or we blackmail a USPTO employee for the answer key (kidding…)
PatentlyScrewed,
This is exactly what I did while studying (not just using this site though), and compiled a giant frequency spreadsheet, tabulated which questions were asked what month, how often that question was asked that month, each month, going back 16 months now.
I also spent (and am spending) time updating new questions being asked, determining correct answers, etc.
So, while not an answer key….This is the resource I’m making available to people if they want!
How much are you asking for the spread sheet. Don’t bother giving me a price, if it is just old questions from 2003-1997. I need Appeal and PCT and newer material. There simply is not enough appeal, and PCT fact patterns on the old tests and 88 questions I had did not have the old question fact patterns.
cvalente2005@yahoo.com
Practitioner, Could you please send me a copy of your outline? Thanks for sharing.
Email: ou_1729@yahoo.com
Question about re-exam SNQ vs Reasonable Likelihood. If your patent application is filed prior to 9/16/2011 but you file your Re-exam request after 9/16/2011 but before 9/16/2012
Do you base it on SNQ or RL? Basically is it the application date or the date you request the Re exam important?
For those that are scoring at 70% or better and for those who have passed,
Have you heeded John White’s advice about reading Chapter 2100 of the MPEP 3 times before taking the exam?
Its a lot of reading.
I would say it depends on how you study/process information. If you know reading the chapter will help you because you can retain the information then go for it.
What I’ve done is search the MPEP all the time based on answers from previous tests or fact patterns on this website so that I familiarize myself with facts behind the questions and where things are in the MPEP if I need to search during the exam. Anytime I’m not 100% sure of something I’ll find it in MPEP and read about it. I think that’s more beneficial than reading a whole chapter.
No. Way. I cant tell you how many times I nodded off while trying this. It is more useful to know chapter headings and subheadings and the general content of frequently tested chapters. The rest comes down to quick search of Subject Matter Index, then Find and Find Next within the relevant chapter.
Chapter 2100 won’t make sense regardless of the number of times you read it. Search it, search the index, or guess.
I skimmed through it once and I found it to be helpful. It did help me remember the chapter headings. Also, I noticed after doing some of the practice exams that there are a few sections that come up frequently and would eventually end up memorizing certain section numbers.
I would say at the very least become familiar with the chapter headings and subheadings.
IF anyone took the exam over the weekend, make sure you brain dump! Thanks!
Hi Practitioner,
If you’re still around, would you mind sending me a copy of your outline? Thanks a lot!
sw33tstuffz@gmail.com
Has anyone recently aggregated all of the posted new and repeat questions, together with their answers? I’m willing to pay! I don’t know if the bfusion aggregation has the answers … and he hasn’t replied to my email!
Also, I believe that there used to be an online patent bar simulator that had a really slick and fluid interface. If automatically graphed your performance and provided you with detailed explanations for the questions you missed. Was this the old version of mypatentbar.com? If so, I miss that test simulator!
Let me know if you have any supplemental study materials that you’re willing to share. I’m using a 2010 PLI course and this website.
I found Mambos materials to be pretty helpful. It’s a mix of the ’02 and ’03 exam questions. You should be able to find it somewhere on this website.
Safeway,
I do have a compilation of the new and repeat questions (with the correct answers) that I gleaned from this site and a few others. It’s about 10 pages long (word document).
I think i have sent the outlines I prepared to everyone who has asked, best of luck.
Practitioner can you send me the outline! bryanbaysinger@gmail.com
Thanks!
Practioner,
You must be getting tired of this. I’d appreciate getting your outline.
Thx,
fooj444@yahoo.com
Hi Practioner,
Can you also send me a copy of the outline? JW50410027@yahoo.com
Thanks so much!
Hi Practioner,
Please send me a copy of the outline.
Thank you very much.
jeff_6815@yahoo.com
Hi Practioner,
Could you also send me a copy of your outline?
blakesommers4@yahoo.com
Thank you so much.
Can you also send me the outline please.
Thank you very much,
mrdlcarroll@gmail.com
Hi fellow future Patent Rockstars,
I PASSED. Preliminary Pass today so the chant of “gotta get through this” finally ended.
Here is what I remember and honestly, I did the PLI course but those guys just give you a nice base to take off from…what really gets you over the hump is this website and I hope those who are taking the exam take it before 3/16/2013 because this website will do you wonders.
I finished all the questions in the first part in 1hour and 20 minutes
I finished all the questions in the second part in 52 minutes.
Crazy right? Whats the formula…here are the steps:
1) Find a study guide or SOMETHING so you can get the basic fundamentals of things down.
2) Start understanding major concepts in 700, 2100, 800, and 600
3) Start going over past exams 2003 first then go to 2000 april and october, those have concepts about AA and SSP..remember answer within 2 of AA and BEFORE is SSP, AFTER is AA…but I got the question where the answer was starts/ends with SSP.
Anyways here we go:
Repeats:
• Missing parts – PCT–missing claim and a name, filed claim and name which date will the IA get? When the name is filed.
• Trade secret question–answer E, it was an except question which said material to patentability will remain in the envelope and not be made public.
• Japanese patent–crazy one but basically Japanese patent filed then non-provisional filed then guy wants to enter national stage…is the national stage entered properly?
• Electric fan and lamp–drawings are of little value.
• Appeals-Rejection in continuation–i think i answer can appeal TWICE rejected…D and E, D had once rejected and E had twice rejected.
• SSP-starts with SSP answer E
• Best mode-dont have to point out answer C.
• Smith Laminate (4.00.17a)- Answer A
• Prior art (10.00.16a)
• IDS After Notice of Allowance (4.03.26a)
• Small Entity Status-doc record title
• Bloc; Synthetic Z (10.03.7a)
• Canceled matter as prior art (4.03.38p)–EXCEPT question where 102e cancelled matter can be prior art. NO IT CANT PEOPLE NEVER.
• Late IDS when Client Knew about the Prior Art All Along (10.03.34a)
• Moondust (10.03.6p)
— Japanese 45 days
—> Question about whether a reply to an office action of January 4 is timely filed on July 5 with a fee and petition for extension of time after a federal holiday on July 4….Yes July 5th is okay if its late with proper fee and stuff.
–> • Question about when a restriction is proper. The answer has double patenting rejection in it.
–> provisional app requirement: need spec and drawing was one of the answers.
—> The answer was avoid litigation so file a reexam..it was a repeat.
—> High was there, refer to the spec for more clear description.
—> 102g ex partes rejection, asnwer was easy it was I and II –a repeat question.
—> Suspended Practitioner–EXCEPT office will communicate…remember office NEVER communicates with a suspended broski.
—> Claiming, Deleting and Reclaiming a Benefit Claim —can’t do it because it was intentional in the first place!
—> Soil Scientist wants to file Accel. Exam…you dont need an ADS so answer was 1, 2, 3, 4 ONLY.
—> Toil plane, examiner is still not persuaded and rejection is maintained.
—> lots of BASIC 103 Obviousness questions so know to search this.
—> barely any appeal questions or PCTs…spent so much time studying this.
—> electronic signature for an assignment document, weird question but I put the answer which was C where you are saying that by signing the E-signature, you are representing yourself and validating that this is the original signature.
—> PCT question where answer was CCAR.
—> Claim limitation question was confusing…but know that stuff.
—> KSR question where answer was D-all of the above meaning ‘component for…module for…’.
—> Potter 103 a was in there.
—> -Nonprovisional filed without claims, have one year to convert to provisional
-How to respond to a restriction requirement when claims are linked
-Fax- CPA
—> know everything you can about abandoned published applications, spent a ton of time on that one.
Make sure you guys pay attention to EXCEPT and ACCORDANCE in the CALL OF THE QUESTION.
I was definitely over-prepared but hey better to be safe than sorry in this. Honestly, I put in alot of hard work and effort for 2 months straight. Took the PLI course and it was nice and all but this website helped me get through it.
For the new AIA stuff, some of it is just common sense if you know the basic rules like PGR starts in march of 2013 and such. At the end of my tests, the questions I marked and had doubts on were new AIA stuff so I just spent time answering those but again those didn’t count so TAKE THE EXAM EARLY to relieve yourself of some hassle.
IF any of you have questions please post here, I will definitely answer you. Would really be glad to help you all since this community has given so much to me. One thing to realize is pure hard work pays off so sacrifice and don’t have a life for a while…its all worth it.
Signing off for now.
Hey gotta get through this,
Congrats on your pass, I plan to take it by mid Dec.
Do you recall anything new or different? it seems that the Qs were redundant.
Thank you for your post.
Congrats gotta get,
I could see from your posts that you had worked really hard.
Could you please guide me from where to look up for the new material. Is there any specific section in MPEP. I am appearing for exam in less than 2 weeks.
Thank you very much
Congrats gotta get,
I could see from your posts that you had worked really hard.
Could you please guide me from where to look up for the new material. Is there any specific section in MPEP. I am appearing for exam in less than 2 weeks.
Thank you very much
Just passed! I’m so relieved right now. Brain is fried, but here’s a dump of what I can remember. This site seriously saved my life. Thank you guys so much!
1. Spanish Phone – CIP/102(d)
2. New claim count – I went with eight (8) since I saw it somewhere else on here. I don’t know how to count claims.
3. Broom with 954 claims.
4. Suzy filing – Suzy has duty to disclose
5. 66 year old inventor – put it on the accelerated track, no fee required
6. Something with KSR and TCM?
7. 2 inventors give PoA to a practitioner. Application is filed. Both inventors die in a car crash before it is issued. What does the PTO do? I said the PTO will not withdraw unless the heirs intervene.
8. What is required to get a provisional filing date – this wasn’t the normal claim/spec/drawing type of question. It was a little in depth in the answer choices, but they were easily found in the MPEP.
9. Question about withdrawing one rejection, but still upholding the 102(b) rejection.
10. Lip Gloss – 102(b) bar
11. Pick a proper MDC form – pretty straight forward given the choices available.
12. Appeal filed, but before decision you file an RCE without the required fee
13. When does an examiner need to give reasons for allowance? – Answer choices were searchable in the MPEP.
14. Chemical compound – this one had to do with cancer
15. EPAS – inserting an electronic signature if an act that affirms/certifies … [etc.]
16. Transitory signals – not patentable under 101
17. One question asked which is NOT considered in an 101 analysis – I remember the answer choice was (A) and it had to do with living/inanimate (MPEP says that standard is no longer used)
18. I had the Iron and Molybdenium question. I saw a previous poster say his answer involved amending the claim to say something like “9-11% moly” but that wasn’t an option on my version. I picked the option which amended to 9% which overcame the rejection.
19. One question where all the answer choices had to do with Rapidity – was able to look up the answer choices in the MPEP to eliminate.
20. Appeals. Applicant only argues claims 1 and 3, left out 2. What should the Board do? I said examine only claims 1 and 2.
21. Effect of court’s ruling on validity. The answers were all phrased in the double negatives such as “if the court finds patent to not be invalid..” Once you work out the phrasing you will see that even if a court says something is valid, the PTO can still find it invalid, so court’s ruling is not binding when it comes to a finding of validity.
22. Office action mailed with no reply due date set. Some stuff goes on. Same answer – nothing will prevent the application from being abandoned.
23. One question dealt with filing something after having gotten a Certificate of Correction on it. I picked answer that said the CoC should be submitted with no changes.
24. DNA Sequence with ACTG – I forgot the answer to thPiecemis while I was taking the exam .
25. Overcoming 102 – answer was amend the claims so that they’re patentably distinguishable.
26. Question where the applicant himself removed the priority and now wants it back.
27. PCT filed with no claims – express mail
28. Suspended practitioner – will not ad litem appoint
29. Japan PCT. Designated only Japan. – Transmit to IB once transmit fee is submitted.
30. Velcro fastener
31. Old repeat – which is in accord regarding obviousness. Answer was statement (3) only.
32. Who can sign small entity
33. Filed as small entity and now needs to change to non-small entity.
34. Piecemeal
35. One question dealt with AA which was mailed within the 3 month period after the applicant mailed his within 2 months. There were two very close answers. I had to search the MPEP which contained a small paragraph detailing the scenario in the question.
36. Obviousness with the 34.9% and 35% fact pattern.
37. Reference X and application A were commonly owned at time invention in A was made. USC 103(c) can be properly invoked to obviate which of the following? I said rejection under 103(a) based on X, if X is available as PA only under 102(e).
38. Patent with claims 1-10 to widget, claims 11-20 to method of making. Proper restriction, claims 1-10 were elected. Fact pattern from one of the previous exams. Answer was the same.
39. Question that asked “patent term ends 20 years from which of the following dates?” I think the fact pattern dealt with various filings of provisional, nonprovisional, and IA. I believe the answer is 11/28/00 (filing date of nonprovisional)
40. Potter
41. Bloc and Compound Y – file reply arguing that whether or not a cure for cancer is incredible is superfluous since he disclosed another use.
42. Question about examiner’s burden when making enablement rejections under 112,1st. I think this was an old repeat question. Answer = Statement (2) only (examiner has initial burden to establish)
43. Question about dependent claim – Answer was something with the wording “inert gas” (this was an old test question as well)
44. I had a few 1.131 questions, but the facts are just blurred together in my mind right now.
45. I had a lot of questions regarding inter partes and ex partes reexam. I think probably at least 1/3 to ½ of these were beta questions as all their dates were in the 2012-2014 range.
46. I had several more questions from the previous versions of the exam, I just can’t remember them all right now.
47. I had at least 5-6 questions related to double patenting. Statutory, Non-statutory, provisional.
48. Question from past exam where answer was “member of public can order a copy with request and payment of fee.”
That’s all I can think of for now. I’ll post more if I can remember.
Molybdenium question: did an answer choice have to deal with the criticality of the range overcoming the obviousness?
Ah I had the molybdenum one. I believe the correct answer is to increase the Mo to be outside the range anticipated by the prior art (anticipated, not non-obvious), and therefore, the composition as a whole will no longer be anticipated by the prior art. The other answers will not overcome a 102 rejections.
Just took the test and passed (1/9/2013) – This site helped a TON and especially this post. The first 50 questions I had were mostly right from this list. HUGE HELP !!! I think I would have been able to answer correctly anyway, but would have definitely taken time away from other questions because I had thought about these in advance. My next 50 questions were much more difficult and I hadn’t seen them before, but I did good enough to pass so I’m very happy today. THANKS A TON TO ALL THE POSTS. the most recent test-takers were definitely a big help. I found this site about a week before the exam and used it to brush up on issues I hadn’t considered. again… THANKS TO ALL !!!!!!
congratulations, Kyle. I’m sure it took at least some effort, so well done!
Enjoy some celebration if you can.
Took it today and passed! As Yolo said, my brain is fried but here’s what I remember. (Sorry for the stream of consciousness rambling!)
Overall it had a lot of 102(e)/103(c)/double-patenting related questions. There was one question that distinguished between provisional rejection vs. double-patenting (I think? — I was completely confused on this one) and gave a fact pattern and asked if either one or both applied. I ended up going into MPEP 800 and looking at those charts (which many of you might not know are there) and tried to answer as best as I could. I got both Jones/Smith–common ownership questions.
Both Potter questions
Japan PCT
German patent
There was a weird question about whether german pre-issuance published patents fell into the scope of “patented.” The answer is tucked away into a MPEP 2100 case so make sure to do a search for it (and/or read it before-hand though probbly not worth your time).
A couple of post-grant/inter-partes review questions. Know the threshold standards for each and what a person needs to have standing to bring either action (i.e. can’t have filed suit but affirmative counterclaim okay etc.).
One question about substitute declaration (new AIA stuff).
More repeats in the afternoon. I only did the April 2003 exam and went through a few other repeat questions and I recognized a handful of repeats. So there were probably more than I recognized.
Lipgloss tasting like vegetable question.
Know what antedating affidavit can be used for.
Couple of questions about inventors dying.
Some PCT questions — there was one involving PCT deriving priority from a prov application — as far as I could tell, yes it can.
PCT — Is paying after 30 months a bar or just doesn’t allow foreign priority date. I think it’s the latter but not sure if I got that right.
Question about Suzy the foreign lawyer and whether she has a duty to disclose
Couple of questions about IDS after notice of allowance/issue fee.
Others: Piecemeal, Suspended practitioner, etc.
Just scanned Yolo’s list and it looks like we had a very similar test so I second a lot of what his list includes.
Hope that helps!
Oh another one I remembered: Question about what an assignee could do without having been an assignee at the time the app was filed. I said he can check the status of the app or something like that (not sure if that’s right).
Don’t know how, but I passed the patent bar yesterday after being told that my mom might have pancreatic cancer. I thought of rescheduling my exam but went ahead anyway. My test is almost the same as May except no lipgloss question.
Joe & Smith
Moon dust
Missing citizenship in declaration (AIA)
147 dependent claims
IPR and PGR (just follow the day and 9 months after issuance)
Suspended attorney (variance but same answer – No communication)
One question about declaration was signed by inventor in German and attorney not in record close by can send the declaration via fax? first class mail or Express mail –> my asnwer – Express mail to avoid abandon.
Japan 45 days to revive (repeat Q)
know how to calculate PCT priority date
design patent (I stuck with this one more than 10′ w/o answer)
a lot Qs in 2100 and 700
moon dust
best mode stated no need to clarify which one used
RCE must file before issue fee payment
Ex parte reexamination
about 6 new Qs in AIA.
Sorry, that’s all I can remember. I finished both AM and PM w/i 1:30′ and spent the rest to search the marked answers. 500,600,700,1200, and 2100.
I had law degree but did not take any patent bar courses in law school. I had BS in computer engineering and MBA.
I did not use PLI, just studied my flash cards. Concentrated on above chapters and 2003/2002 old exams for the last 2 months. The key is to memory the index and know where to look for the answers. I always read the question to determine where to look for in the MPEP. Good luck to you. I know we can all pass this exam. Now I need to figure out how to find a patent career and to cope with my mom’s illness.
PatentTaker,
I am so, so….sorry to hear the news about your mother’s illness. While I’m glad you passed (and, it is a huge accomplishment) i can’t begin to imagine what you are going through.
Not sure if I, or we here, can be of any help….but, if we can, please let me know.
~Bfusion
Hi All…Bfusion here….
I wanted to let everyone know that probably within the next week or so, I will stop offering the current study materials/resources that I developed. I’ve been working on reformatting everything: making updates to the questions (re-writing new questions from bits and pieces of people’s responses online), Revamping the frequency chart to be more usable, updating the study guides to reflect current law, in hopes to offer a more concise and well rounded package.
So that being said, I will continue to offer my current study materials for $85 for probably only one more week. After that, these materials (as they are currently offered and at the price offered) will no longer be available. It’s my hope that the new materials will better meet the needs of you all here.
If you are interested, you can email me: bfusion.uspto@gmail.com
Again, all the best to you as you study!
I got a Prelim Pass today and couldn’t be more excited. I’ll do a brain dump either tonight or tomorrow because I got the flu this morning (Yea try taking the exam with the flu lol) but I’ll give a background now on how I prepared.
I have a bachelors in Aerospace Engineering and decided to get into patent law because of economy. I was given the 1998 PRG VHS to watch and 2004 PRG manual 1. (they couldn’t find the other ones) I just watched the videos and rea the manual then studied this website! I started with the material in August but only found this website in late October. I studied since November 1st around 12-18 hours a day starting with the study guide section THEN moved to the brain dumps. I will say if you haven’t already PURCHASE BFUSION MATERIAL. It gives you a great starting point and I can honestly say 40-50 concepts on Bfusions were tested even if they weren’t exact repeats. I just reviewed every single day and studied concepts and searched MPEP constantly.
If you know your test date I’d highly suggest finding someone through this website to study with via some chat website. I studied with gotta get through this and I know it helps us SOOO much.
I don’t know how great the 2000 dollar PRG current course is but I did just fine studying the 1998 material and this website. Just need to put the time in and be over prepared. It took me under an hour to complete both sections of the exam. I was able to get every questions down to 2 choices by using MPEP search. I didn’t take the lunch break because it felt good to get into a grove and just keep going!
Lastly I’d say 25% of the test was direct repeats 2002-2003, 35% was from this website brain dumps, and another 20% was from concepts you learn while studying the repeats. The rest you had to search yourself…….go buy Bfusions stuff and take the exam before april 2nd.
As Geoff said, Geoff emailed me regarding something via the email I posted here and we studied for straight 3 to 4 days. What we did was go through every recent post of brain dumps, we then studied and went in depth with the 68 concepts on this website. We pretty much spent 12 hours each on those four days going through every question, every concept we thought was important. At the end, both of us pretty much got the same exam. We over studied on some concepts but that put us in a very comfortable place…especially because at the end of the day we felt like we did everything we possibly could for the exam.
That is how you should feel at the end of the day before you take the exam. Have you done everything you humanly possible could to study for this? I literally went through all the 2012/2011/2010 posts on this website. That is all the posts from the study guide section, exam concept section, repeat questions section, and old exams section. I copied and pasted all the comments and figured out what he general consensus was with regards to new questions and answers posted by others…I then went to check the MPEP for clarifications and THEN I checked with Geoff to see if my idea or take on something is right.
Trust me. The feeling after you pass it is absolutely incredible. If anyone wants to talk to me about the exam and need tips, please feel free to email me at edgeofspace127@gmail.com. Also, I took the PLI course and it was a great start to my studying but this website did it for me.
Take our advice and take the exam BEFORE April 2nd. After then 40% to 50% of the material on this website will disappear because of the new AIA laws that will be in full affect then.
Happy studying!
Hi Practioner,
Could you also send me a copy of your outline?
brian60625@hotmail.com
Thank you!
Hi Practioner,
Could you also please send me a copy of your outline?
philratliff48@yahoo.com
Thank you so much for the offer to share your material!
Hello Practioner,
Would you please send me a copy of your outline?
Thank you very much!
Hello Practioner,
Would you please send me a copy of your outline?
Tapent@jett-llc.com
Thank you very much!
Hi Practitioner,
can you send me your outline please?
mundyloo at gmail dot com
Thank you,
Julie
Hi Practioner,
Could you also send me a copy of your outline?
wmthudson@hotmail.com
Thank you!
Passed on first try today. It was unexpected and here’s why. Before starting to study a month ago, I found this amazing site, and someone said that it’s better to take the exam early. Other posts also said they were way overprepared. So I just signed up for a test date (thinking this would be an easy multiple choice test) and started studying. WRONG. The first day, I realized that this whole thing is way confusing and couldn’t possible master the material to pass the exam in less than a month.
So my only study material was this website and only this website. No courses, no notes of any sort. I haven’t read any MPEP sections. The only “studying” I did was just memorizing repeats and what people posted on this website. I listed all the questions people posted and just memorized the keywords. For example, today during the test, when I saw the word “piecemeal,” I just chose choice (E) because you guys posted the answer as (E). I think I saw about 50 questions or more that I instantly knew the answers to. For the rest of the test, I struggled because I still don’t have any grasp of this material and didn’t really know where to search.
I’m sure I didn’t score any higher than a 70, but it’s a pass… I got really lucky. Just wanted to share my thoughts that this site is extremely helpful and with some luck, the exam is doable. Here are the questions I remember for now:
1. Potter
2. Potter
3. Piecemeal
4. Spanish phone
5. Claim counting, 8
6. Living and inanimate
7. Rapidity
8. Suspended practitioner
9. Lip gloss
10. VELCRO
11. Broom
12. Japanese patent
13. French patent
14. Advisory action
15. ABCD/ABCDE/BCDE
16. Bloc
17. Inert gas
18. 34.9%/35%
19. Suzy
20. ACGT
21. Public access
22. Small entity refund
23. Biological materials
24. 112, sixth
25. Clean reissue
26. Signal
27. Information requirement
28. Dead inventor after allowance
29. Public access
30. Certificate of correction
31. 102(a) rej 102(e) prior art
32. Multiple dependents
33. Widget
34. Board examine all 3 claims
35. Linking claims
36. Molbydum (sp?)
37. EPAS
I know there are more, but I can’t remember. I tried
Some of the repeats I was expecting to see (ones everyone seemed to be getting) didn’t appear. Just to name a few:
– Moondust
– Japan 45 days
– Laurel, Abbot, Hardy
– Tables on CD
– PCT variants (I didn’t get any of those…)
I’m sure you guys are more interested in seeing the new questions, but I don’t really have any. I was confused with all the nonrepeat questions. I don’t even know if they are new or not:
– Preamble limitation
– One where options are double patenting, 102(e), etc…
Even with all the repeats, I was very tight on time because I would be spending 10+ minutes on searching and reading the MPEP.
Finally, I wanted to thank everyone for taking a part in creating this wonderful community. I’m going to be reading through the MPEP and learning about the patent law in more detail. I kinda feel bad about passing because it honestly wasn’t legit though. Good luck to you all!
Thats one approach! At least you avoided paying for a course and sitting through 50 hours of basic instruction on patents. But please, before you try to take on a patent for an unknowing inventor who may believe that having a registration number means the same thing as compentent ability to prosecute his invention to patent, it may be a good idea to pick up a few pointers from working under a seasoned patent agent or lawyer before you hang out your shingle and launch what may be an exciting venture prosecuting patents with your wits and rote memorization of key words from the old exams. Try doing full blown prosecution right after passing the exam without decent supervision and the next time you hear from the OED will be to respond to a compliant for gross malpratice!
All the foregoing being said, gofoit, you Rock in being able to pull offf a pass doing what little you did…good luck in the patent trade!
Dude, that is awesome haha! I wish I had your luck and skills the first time.
Rescheduling…is it possible? I have my exam set for 12/22 and wanted to find out if I can re-schedule it for either January or February w/o having to re-submit an application for registration along with fee? Thanks in advance.
Oscar,
Yes as long as you within the time frame that uspto allow, no re-submit application or registration. Call prometric & pay $35.00 to prometric.
Good luck.
Oscar,
Hey, yeah, you can reschedule, but, keep in mind: You have a 90 day window with the USPTO to take the exam (from the date you were accepted to sit for the exam).
Thus: If taking the exam in January or Feb puts you PAST 90 days from when you were accepted, you might want to reconsider (as you’ll have to re-submit).
If not:
Yes…you can reschedule your test appointments(as you schedules with Prometric) From the Prometric.com home page, click on the button for rescheduling. You’ll need your conformation number as well.
Thank you both for the clarification. My registration application was accepted in September and after reading the letter I received from the USPTO, the 90 day period to take the exam expires on 12/25! I guess it’s time to “cram down”.
What do you guys recommend I should do for the next 2 weeks? I’ve listened to John White (50hrs), read the entire 2006 PLI 3 ring binder, taken the 2000/2003 old exams at least once, gone over the “repeat question section” on this wonderful website, but still feel like it’s not coming together as it should. My immediate goals is to memorize all repeat questions, and go over the postings dating back at least 12 months. Any other suggestion/advise will be greatly appreciated. Thanks
I’d say right now, you gotta focus on learning the old and new questions…but not just learning the answers, but learn how to work through the question to find out the important information (to help you search the index as well).
BUT: familiarizing yourself with ALL the new questions and old repeated ones, will only help you more as you’ll be able to remember facts and patterns.
I do have some materials I put together that I’m selling for only a few more days actually (compilations…~10 pages of all the beta/new questions and topics being asked on the exams, as well as ~10 pages of important concepts to know). I’ve had a lot of people say they were helpful (it’s what I created when I was studying, and have refined post passing, to help others).
Let me know…you can email me: bfusion.uspto@gmail.com
Oscar,
I am in a similar position as you are, i am taking it Dec 17th and did everything you just went thru with the exception of PLI I just focused on few sections of 600 700 1200 1800 and 2100. Its crunch time and lets do it.
like “just gotta get thru this” he did 12 hours a day for 4 days of review.
Hi Oscar,
Is there a reason why you choose to review the 2000&2003 exams rather than the 2002&2003 exams? Are the 2000 exams somehow more relevant than the ones from 2002?
I’m also taking the exam in about 2 weeks and so far have listened to the PLI lectures and gone through the 2003 exam questions. Now, I’m wondering which year’s exams to tackle next.
Basically, going back over the past 12 months of posts will take you a LOT of time. It’s not impossible to do (that’s what I did), but with only 2 weeks left…you might find yourself crunched for time.
(Just as a FYI: it took me a lot longer than 2 weeks to work through the posts here, determine correct answers from posts, etc)
Thanks to all the posts on this website I was able to pass yesterday 12/6. Unforntunately there were not a lot of repeats or questions from the posts on this website. I will say that the practice questions equips one well enough to pass the exam. The changes are a coming. Take the test soon!!!!
PHESITA,
Congratulations on your exam results!
What are the practice questions that you mentioned?
Esther,
Practice tests feom 2003, questions listed in this section, as well as posts by other members regarding questions recently seen on the exam. Good luck with the test. This website is a great resource, but I feel it will be obsolete come next year sometime.
The test is going to be rewritten once the March 16, 2013 changes under the AIA kick in with the conversion of from a “first to invent” system to a “first inventor to file” system that will likely significantly complicate the Exam about April 2013. This change will nearly double the amount of material you’ll have to know to pass the Exam. The Patent Office’s OED has made it clear that they will test both systems for several years while applications from both systems are pending.
Q: If there were missing parts in a PCT application (e.g claims) but claiming benefit to prior .. what would the IA filling date?
Hi all,
Happy to announce I passed the exam on 12/04/2012.
Study material used : This website, PLI, B-fusion material.
Time taken: Totally about 7 months, 3-4 hours/day basis
Here is the Qs/topics covered in my exam.
1.Claiming, deleting and reclaiming a benefit cream
2.Missing parts correction in PCT application, Applicant submits claim first and then the name of applicant the next day, what would the filing date be ?
3.Suspended practitioner
4.When is 1.133 affidavit appropriate ?
5.Applicant not applied for Chap II demand, but satisfies USC 371 national application procedures. Is it OK
6.102 (e) date for PCT application
7.Ship bell
8.Trade secret question
9.Fan lamp Clock Dimensions questions
10.Tommie and Jo
11.Reissue broadening
12.CCar PCT mistake correction
13.Which one does not invoke 112 6th para- (i) mechanism for, (ii) module for, (iii) component for, (iv) all of the above, \v) none of the above
14.Death of inventor, Attorney or assignee, who can take over
15.Contents of abstract and disclosure
16.Two month rule
17.best mode indication not necesssary
18.restriction requirement
19.Hydrocyclone
20.Smith laminate
21.making patent application special
22.KSR vs Teleflex
23.102 (g) conditions
24.102 (b) reference requirement
25.Inventor B change in address
26.Chemical for growing hair question
27.Double patenting when appropriate
28.Fee refund conditions
29.PCT- Fascmile transmission to get Filing date- Not proper
30.Provisional patents no claims
31.Protest
32.Reduction to practice
33.Interview
34.Beck mixture Y with melting point 150 degree F
35.New grounds of rejection
36.101 considerations
37.French patent 102(d)
38.Bloc Syn Z
39.Public use
40.Abandoned application availability as Ref
41.cancelled info available as ref
42.leather straps Q
43.late submission of IDS 1.97(e) not satisfied
44.Multiple dependent claim wordings
45.Moondust
46.Verification statement necessity
47.No utility described in prior art, applicant adds utility- not patentable
48.Toy plane with foil wings
49.PGR vs Interpartes review
50.accelerated examination
51.overcoming 102 (e) rejection
52.exparte who can site ref
53.obviousness Kim and Lance Q
54.102 (c) abandoning meaning
55.US/RO as a competent RO
56.Contents of reissue oath
57.102 relying on multiple references
58.Reissue application involving CoC
59.reopening of prosecution after decision of board
60.New matter introduced, does not effect claim 1 directly but effects scope of claim 1 and effects claim 2 totally, what should examiner do ?
62.Restriction when proper
63.Telephoning the examiner
64.Provisional double patenting definition
65.sales figures to rebut obviousness
66.Reexamination- time for submission
67.Refund – 1.10 express mail date in of first class mail COM date considered
68.EPAS
69.Encoded signal patentable ?
70.A files Prov app, ABC file Prov App then A files Non-prov of Prov and then ABC file Non-prov of Prov. Who can claim which priority
71.Obviousness concepts
72.Conversion of Non-prov to Prov appl
73.Mailing or faxing from Germany
Thanks for the organizers of this website and ALL THE BEST for the future exam takers
-TSM
TSM,
Glad to have been a part of the journey with you and helped out along the way!
To the rest of you, I’n my attempt to organize a LOT of the resources online that are scattered, I set up another website:
http://www.wysebridge.com
I’m currently working on filling in the forum section, and am hoping it’ll provide much more organization to all the information passed around.
Again, Congrats TSM, and to everyone else, all the best as you study!
TSM,
Congrats on passing and also for sharing the questions/concepts you saw on your exam. Regarding item#16, are you referring to the two months allowed to correct a defective PCT app? Thanks
This is probably a reference to the “two-month rule” when responding to final office actions
http://mypatentbar.com/2008/08/07/2-month-rule-for-final-office-action/
http://longacrepatentbarreview.wordpress.com/2011/07/28/397/
Hey Oscar,
Sorry for the delay in replying.
Q 16 refers to the two month rule for replying to final office action. If applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such a case, if a petition for extension of time is granted, the due date for a reply is computed from the date stamped or printed on the Office action with the final rejection. See MPEP § 710.01(a). If the examiner, however, does not mail an advisory action until after the end of 3 months, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension of time fee may be calculated from the mailing date of the advisory action. In no event will the statutory period for reply expire later than 6 months from the mailing date of the final Office action.
You can read 710.02(e) in MPEP for more details.
Hope it helps.
-TSM
Got a preliminary pass yesterday, first try. Thanks for this site.
There were plenty of repeats- Tribell, Bloc, Mixture Y, Potter, Smith Laminate, Kim & lance, Martinet Leather straps, moon dust, toy plane, ccar, Tommie & Jo, etc. TSM list is exhausthive, I may had most these too. I think everyone should know the 2000-2003 questions cold, no matter which ones are being reported by test takers.
Here are some points that seem more relevant to know than the specific repeated questions:
– Know the specifics of obviousness analysis, a change of few words in the exam can make the difference between right & wrong,
– There were quite a few questions in which some additional words phrase were added to confuse the test takers
– Know when can a french patent under 102(d) also be cited for 102(a)
– Know very specifically when more than one reference can be cited for 102
– See the recent 112 guideline- module for , component for, device for, etc. non-structural do invoke 112 para 6, I think somewhere,on this site, or may be patentbarquestions.com docs, I saw the comment the incorrect response that these do not invoke 112 para .
– Know clearly that assignee can override inventors in a reissue to correct inventorship
– Is ADS required for Accel. Exam request ?
– patentbarquestions.com’s Recent questions and Load Dump also have some relevant information that has not yet made it to this site
– Are there any subtle issue for PCT national stage entry with or without demand for PCTs filed before Jan 2004?
– Excess claim fee- more than 20 total & more than 3 independent
You need to be well prepared.
My answering strategy was – to quickly answers all the questions, with Marking off any in which there was some doubt. And additionally noting down, on the scratch sheet, the specific questions number, in which there was major doubt/misunderstanding, along with the point which was doubtful and could be verified in MPEP. This way I was able to complete all the questions in both sessions in about 90 minutes, leaving 90 minutes for specific searches in MPEP and rechecking/reanswering questions that had been Marked and/or noted. I think in both sessions I had noted down about 10 questions (majpr doubt) and I think in both sessions the specific MPEP searches helped in changing to the correct answer for about 5 of the 10 noted questions.
It is not too bad. You just need to be well prepared and be very alert in paying attention to the specific words and phrases in the questions and answer options.
Good luck to all the test taker,
Can someone please tell me from where to read AIPA, KSR and Bilski Material
Also, please please tell me from where to search the new material in exam. I have no idea and my exam is around the corner.
Everyone says easily identifiable but I have no clue.
thank you very much
SRT,
As UBetcha responded to me last week on the “Repeat Questions” tab…
Moreover, the more recent questions are easy to look up in the Federal Register. I suggest practicing how to search the rules at the end of each Federal Register announcement and identifying some helpful search phrases such as “civil action” and “more likely than not,” etc. to find them.
His post listed these topics:
1. Substitute statement when inventor dies
2. Suspension of civil action if inter partes review and civil action filed on the same day.
3. Standing to file PGR or IPR when party has already filed Civil Action
4. Documents that may be submitted as a prior art citation (in particular, statements related to scope of claims)
5. Prioritized Examination Track 1 available when < 10K
6. Standards of review for IPR (reasonable likelihood of sucess) and PGR (more likely than not)
7. Nothing on new appeals procedures, best mode, transitional program on covered business methods, or third-party submissions.
Look up this stuff in the supplemental materials.
There are supplemental materials dealing with Bilski and KSR as well. Hope this helps. These are all available during the exam along with the MPEP.
Got a preliminary pass on the test today!! WooHoo!
I was going to do my brain dump, but I think I had pretty much the same as what was posted just above by RB. There is very good advice in his post. Read TSM’s list above too. I don’t think I had all those repeats, but every one I had is on his list.
I found, as others have posted, that you need to be careful when in the MPEP pdf files to press the find next button and not enter. Once it locked up on me and the pdf reader would not work. After a quick panic, I closed it, but had to move to another test question, then it worked again.
Good luck future test takers!
Q: English translation is not required for claiming priority of IA 119 d only in a PCT application?
Hi Practioner,
Could you also send me a copy of your outline?
josyulav@gmail.com
Thanks for your help.
Same here. Can I get a copy of the outline?
Joshralmond@gmail.com
Hi All,
I talked with the USPTO this morning. Prometric (and the test) STILL use ER8 on the exam. That means when studying (especially getting used to searches) you should be using V8ER8 to get used to studying (along with searching all the annoying supplements).
This kinda stinks since it’s a pain to search the supplements, but, as a heads up for you all!
So, be prepared. On exam day (until the USPTO changes over) you’ll encounter version ER8 + Supplementals.
I got done with the Exam on 12-12-12. However, the following, for the tuture test takers, is from form PTOL-303 (Rev. 7-05) from E8r8 (Advisory Action Before the Filing of an Appeal Brief), and I also get the same in my day to day work:
————
b) The period for reply expires on: (1) the mailing date of this Advisory Action, or (2) the date set forth in the final rejection, whichever is later. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection. Examiner Note: If box 1 is checked, check either box (a) or (b). ONLY CHECK BOX (b) WHEN THE FIRST REPLY WAS FILED WITHIN TWO MONTHS OF THE FINAL REJECTION. See MPEP 706.07(f). Extensions of time may be obtained under 37 CFR 1.136(a). The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The appropriate extension fee under 37 CFR 1.17(a) is calculated from: (1) the expiration date of the shortened statutory period for reply originally set in the final Office action; or (2) as set forth in (b) above, if checked. Any reply received by the Office later than three months after the mailing date of the final rejection, even if timely filed, may reduce any earned patent term adjustment. See 37 CFR 1.704(b).
——————-
Considering the above it seems the correct answer for the May 31, May 30 question from 2003, for Amendments filed with AA, may still be May 31, irrespective of the year of the Advisory. I.e., doesn’t matter whether before or after 2004.
I took the exam today and I passed. I will post more tomorrow or next few days.
This is how I prepared, first I practiced old exams 2003-2002 without timing myself. I wanted to get familiar with the material and search MPEP. I also went over the questions listed on this website (Exam Qs and concept) and read everyone’s comments of all 68 Qs while searching the answers in the MPEP. I went over comments and list of Qs from test takers from this website and thenI copied and past them and wrote notes for myself. All above strategy took over 10 weeks, the last 2 weeks I took the 03 and 02 exams again. Read the supplement material the day before my exam and made notes.
If you want to pass practice old exams, I had so many repeats and I also had repeats from recent test takers if you go over that with old exams practice and the 68 Qs from exam concept with understanding the basics you will pass.
From what I remember:
PCT and it was from old exams I think It had to do with measuring term of patent
Velcro
Lipgloss
Piecemeal
Rapidity-easy to spot the answer
Advisory action rule- timing is from SSP
Examiner Stating reason for allowance is ok. Except: look into that section 1300 and see when can does not need to give a reason for allowance.
There was a list to pick from for what is true: and its I,II,III choice mainly subject matter I think but one of the choices involved that I was not sure about, whether 101 subject matter of methods for conducting business is ok???something like that.
The one with the old guy in hospital and wants allowance within a year but no help at the office and wants it processed quick, two of the choices I wasn’t sure was whether to pick the one with priority examination with fee and claims are <10k for 20012 or the one with accelerated exam no fee because of his age but with 3 indpnd claims and 20 dpend ones
Subject matter all except living and inanimate
PCT Person did not file missing parts when was invited to submit and application entered national stage what happens to the application
Another Q. Applicant submitted application PCT inventor name and missing something else I don’t remember but at two different date from deadline when office invited him when is the filing date? It’s the date last item was submitted.
Person filed application with priority and then decided to remove it then patent issued, examiner reject application since another priority reference with similar disclosure , applicant decided to reclaim the priority to overcome the rejection since the initial prioirty benefit dated was before the one referenced by examiner also he wants to file the RCE which he thinks that way it will extend patent term. Most of the answers were : file RCE and do other stuff, I thought he cannot reclaim priority benefit since it was not unintentional.
CIP-is enemy of 102d (from this website look thru one of the questions) from exam questions and concept section)person filed IA and then wanted to file in US but there was CIP involved which precluded him to get the IA benefit.
When can you use 103C, 1.131
When can examiner not do restriction- most answers were involving non-final action but the one I chose was final action he can not.
IDS filed after Issue, what happens
When to file RCE-after allowance
Filing suspension but incomplete RCE-from old exam
The new stuff:
The patent owner had a patent and the 3rd person wanted to use owner statement from prior Fed court proceedings against owners patent. All answer choices were owner made statements about his patent in court..I chose all answer (info from AIA) for using part citing owners statement.
A person filed Interparte and review same day he filed in fed court what happens?( From supplement)
Itnerparte reexam first while a Stay in court.
I will try to remember and I will add more.
Thank you all for this website It really helped.
Thank you for the comment. I’m surprised that inter partes reexam is still being tested. What could possibly be the value of learning that at this point after AIA?
Brad, the Interparte info is from the new AIA material they didn’t ask about inter parte from MPEP with regard to 3rd part and ex parte/inter parte just use the new material
Hello averyone,
I got a preliminary pass for the exam on December 16, 2012.
Firstly, all my heartiest regards and thanks to contributers of this website. I know thanks is not enough but really this website and BFusion material was really very helpful. Thank you Brian (BFusion)
Like Whew, My test also had lots n lots of patentability (2100) questions then many PCT, reissue, reexamination, and appeal, with few on RCE.
I got only 5-6 new material questions and because of the guidance from this website I could get the stuff easily.
I got many repeats (around 20-25) from 2002-2003 exams and few from exam questions section here (VELCRO, spanish phone).
Also so many questions as discussed by Hope…I got exactly same questions like Velcro
Lipgloss
Piecemeal
Rapidity-easy to spot the answer
Advisory action rule- timing is from SSP
My sincere advise is to understand the concepts. I have taken the PLI course material, have studied BFusion material, have read material from patentbar (thanks to david for that). Plz understand and practice for the repeats and earlier exams and study this website thoroughly.
Please please read chapter 2100 3 times( as said by John White). There are so many questions everytime come from this chapter.
I think hard and practice is the key to success and there is no short cut.
Thank you to this website again and again.
I have my PLI material with me with some of the key material I prepared for myself for concepts.
I am selling it for $400 or BO if anyone is interested.
Good luck to all test takers.
Please let me know if I could help anyone to pass.
congrats on the passing score.
you wrote: “I got only 5-6 new material questions and because of the guidance from this website I could get the stuff easily.”
Can you elaborate on the “new material questions” for me? I’m taking the exam on Friday and am not sure what new material will be on there from when I last took the exam in August. thanks.
It seems there’s some spreadsheet or outline from Bfusions out there on the new material. I really need to take a look at this material. Can anyone send me the file please?
please send it to arthurgeldres@hotmail.com.
thanks so much!!!!
Arthur,
Hey, Bfusion here. Yes, there is/was a spreadsheet (and outlines, concepts to know, question compilations) that I compiled as I was studying for the exam, that I used to pass the exam and a lot of others have used over the past few months as well.
All my new material is online. Through the process of helping others study, I decided to set up another website and better organize all the free resources online, as well as offer a paid membership portion of the site giving tutoring help and a much more involved, focused, and organized study method (using online testing simulators, question help, forums, etc).
This is the site: http://www.wysebridge.com
Please, feel free to use the free portion, and if you think you might be interested in the paid part, or have any questions, don’t hesitate to contact me!
I disagree with reading 2100 front to back. I think doing problems in exam setting helps much more, b/c it forces you to look up concepts on the fly. Then when you correct the wrong answers and analyze why you got the questions wrong AND correct, you will inevitably read much of 2100. Then when you get to the actual exam date, you will be well prepared to look up answers you need (sometimes you won’t have to b/c you’ll recognize the repeat questions).
If you do the alternative and read 2100 front to back, you will (i) use up lots of time you could be using doing problems under timed conditions; and (ii) inundate your brain and long-term memory with stuff you won’t need to know. That said, certain major 2100 concepts will need to be read and reread in the Mpep, but you’ll end up doing this anyway if you do practice problems in timed conditions. Correcting problems (while thoroughly understanding why you get questions right or wrong), fyi, takes more time than doing problems.
also remember the difference between final rejection reply to examiner during prosecution versus reexam final rejection. For extension purposes you can not extend reply to rejection in Reexam using 1.136, after the two month it will be abandoned and you you will need to revive 1.137. I got that question.
However in a final rejection during exam prosecution you can extend using 1.136.
while it’s true that you cannot extend time to reply under 1.136 for a reexam action, you can extend for cause under rule 1.550. The reason you cannot under 1.136 is b/c that rule applies to applications, and a reexamination is not an application and there is no “applicant.” What’s being reexamined is an issued patent rather than an application for patent.
Hope,
“Advisory action rule- timing is from SSP” is this from the old question where they ask when is the last day to reply and the answer is “The date the AA was mailed”?
It is from an old test which I got on my exam, I checked the answer and it was something about being abandoned since in a reexam with 2 months set period for reply in this case would not be extended. reexam different than prosecution.
It is from an old exam which I also got yesterday. in reexamination the rule is different. no extension will be available
Happy to report a preliminary pass today! Thank you all so much for this site!
This was my first attempt, and I studied pretty much exclusively off of this site. I read through the study guide here, went through the exam questions and concepts page, took both 2003 and the oct 2002 tests timed (though I paused the timer when I took breaks), and finally took all of the repeat questions from 2000-april2003. I also re-read a number of the exam questions and concepts sections. I did not try to memorize questions/answers, but made a point to understand the reasoning behind every correct and incorrect answer.
I did not read through any sections of the MPEP and would not recommend it. In my opinion, you’re better off going through practice questions and looking up the answers in the MPEP to learn where everything is. Reading through any of the sections without a question in mind is just going to throw a ton of information at you that isn’t going to stick, and might even confuse you down the line as you vaguely recall something out of context and eliminate an answer prematurely as a result. But that’s just my opinion.
I have had plenty of exposure to patent law in law school, so I understood some of the basic concepts already, and I have experience in nitpicking textual analysis… I highly recommend that anyone without such a background spend some time reading an intro to patents book/write-up first to get a general overview of the law, as opposed to the procedural-side that the patent bar tests.
Overall, I would say I tried to look up at least 70-80% of the answers, even if I had seen the questions before. For the ones that I did know the answer, I made sure to read through the question and all of the answers, so as not to miss a variation. I tried for at least two minutes on each question that I didn’t know the answer to (and probably succeeded in verifying at least 50%), and had maybe 6 minutes to review in the am, and 30 mins in the pm. I changed one answer in the am and two in the pm upon review. I also lost 2-3 mins during my first pass to a crash in the am when I hit enter instead of clicking “find next” and had to get one of the staff to log me back in. In the pm, I plowed through and took a short bathroom break during my review time.
If I could figure out a question within 5 minutes, I marked it for review, made an educated guess (eliminated as many answer choices as I could) and moved on. There was one question where I swear there were two correct answers, but I gave up on that after 2 mins when I could not eliminate either one. Often, I could eliminate 1-2 answer choices that were just glaringly wrong without needing to refer to the MPEP.
Wish I were better at remembering questions, but I’ll do my best:
There were less than 10 AIA 2012 questions– about 4 am and 4 pm. I spent a few minutes on each, but mostly ending up guessing, assuming they were beta questions. I only managed to verify one of them– a post-grant review transitional program for covered business method patents question. I don’t remember the question very clearly, but I remember that it was important standing-wise that the claimed-invention wasn’t a “technological invention.” (I don’t think the burden was relevant, but it was on the petitioner to show that it was not.) I think there was also a question about the difference in standard of review between inter parte review and post grant proceedings. The rest were all some mix between inter partes review and post grant review and ex parte. I never chose post grant review since there was no mention of a business method patent.
There was one question dealing with ex parte appeals where the examiner’s answer included an acknowledged new grounds that I had to open up the corresponding 2011 supplement (See revised §41.50(b)(1) and (2) in particular), and I opened the ksr supplement whenever there was an obviousness question unless I already knew the answer. And there were a lot of obviousness questions.
Everything else was in the MPEP. I looked at Appendix R a couple of times, but I mainly stuck with the chapters. There was one question about using multiple 102(a) references, where it was important to know that one of the times multiple 102(a) refs are allowed is to explain, not expand the terms, and another is to prove that the primary reference contains an enabled disclosure. Two of the answers included expanding the terms to trip you up. There was another question where one of the incorrect answers was the combined 102(a) reference to explain the term, but I don’t remember what the question was. I think it was a 102/103 question that I found the answer to in ksr supp.
There were a number of appeal and RCE questions. I wish I had a better knowledge of the timeline going in. It would have saved me a lot of time. One of the questions was a repeat involving entering in a reference the practitioner/applicant had forgotten to include after notice of allowance, where the answer was that it was incorrect to pay the issuance fee before the RCE.
Other topics/repeat questions I think I saw today (but might be remembering from practice over weekend):
Missing Parts – PCT
Claiming, Deleting, and reclaiming Benefit
Suspended Practitioner
Costa Rica and Sweden
Spanish Phone
Small Entity Status
Germany – Non-record attorney – sign with reg number and File by fax
Indefinite Claim
Notice of Appeal
Missing parts in PCT – still get/what is filing date
Advisory Action
Examiner’s Amendment
Appeals
Reissue/Filing Amendment
Potter
Moondust
Fan+lamp
PCT to National w/o Chapter II (okay + no additional fee)
EPAS
Toy plane w/aluminum wings
Leather straps
Correcting name of inventor (Quite a few variations)
Cure for cancer/headache treatment
Product-by-process y with different melting points
ccar pct fix
smith laminate
abandoned app as reference
canceled matter as reference
112, 6¶
public access
US not competent as RO with non-US (but PCT) filed in English
Good Luck!
TJ,
Can you help me find an electronic version of the KSR supplement? This is the first I’m hearing of its existence and it’s stressing me out a little. thanks.
http://edocket.access.gpo.gov/2010/pdf/2010-21646.pdf
You can find all of the supplemental materials under the “source materials” link: http://www.uspto.gov/ip/boards/oed/exam/index.jsp
Number 2 on this list.
http://www.uspto.gov/ip/boards/oed/exam/aia_regexamsourcematerial2012sep04.jsp
Missing Parts – PCT
Claiming, Deleting, and reclaiming Benefit
Suspended Practitioner
Costa Rica and Sweden
Spanish Phone
Small Entity Status
Germany – Non-record attorney – sign with reg number and File by fax
Indefinite Claim
Notice of Appeal
Missing parts in PCT – still get/what is filing date
Advisory Action
Examiner’s Amendment
Appeals
Reissue/Filing Amendment
Potter
Moondust
Fan+lamp
PCT to National w/o Chapter II (okay + no additional fee)
EPAS
Toy plane w/aluminum wings
Leather straps
Correcting name of inventor (Quite a few variations)
Cure for cancer/headache treatment
Product-by-process (with bread as the product and the alleged new characteristic being that it lasts fresh for 10 days). You overcome the prior art publication showing the same bread by arguing that the publication doesn’t disclose the trait of lasting fresh for 10 days.
laminate two layers (one is a transparent layer), and the prior art used for a 102 rejection has both layers with an adhesive layer between them. The call of the question asks to determine which claim will survive a 102 rejection using the prior art. I narrowed the answers to two options: (i) a laminate comprising layer 1 and layer 2; and (ii) a layer consisting of layer 1 and 2.
canceled matter as reference
112, 6¶
public access
US not competent as RO with non-US (but PCT) filed in English
(note: I got two questions on the US as a competent office for PCT, so I can’t remember the exact fact pattern. In one question, the Int’l app was not in English. I think the other one was the inventors not being resident or nationals of the US). the call of both of these questions was: which of the following according to MPEP procedure is the correct Int’l filing date (one of the questions had answers with some dates repeated, but with different reasoning).
Got a preliminary pass today. Thank you to everyone who has posted and will post on this site.
First Brain Dump.
Repeats
Japan 45 days
And another Japan question
Tribell
Smith Laminate (alternative)
Reexamination (4.00.47a)
ABC and XYZ Corps. – Appeal (10.00.2a) (I think, There were a couple with ABC and XYZ)
4 or 5 Smith problems all varied.
35 USC 102(e) (4.02.11a)
Hydraulic lift. Inventor assigns rights in exchange for job then Inventor dies.
Best mode question
AIA are easy to identify by the dates:
-years include 2011-2016
-There is a new phrase but I don’t remember what it was but you have to look in the federal register for the answer.
“Struggling company” patent infringed by MEGACORP, but doesn’t have money to afford to prosecute. What to do? Interpartes, ex parte, something else.
Too much to process right now. I need a drink. I’ll post more later.
I took the exam today, and I can say I got all of the problems that PBEOW lists above.
I got a preliminary passing score, and I will quickly give my two cents on how to pass before the exam changes again in March/April 2013.
Take practice exams from 2003 and 2002 (at least). Do the corrections for what you got wrong and what you got right. What I mean is look up in the MPEP the stated reasoning from the exam answers. Doing this for the questions you got wrong and correct will help you to see how the exam tries to trip you up with the various answers for a given question. Doing this will also help you see what your thought process was when you were taking the exam and why you chose the wrong/right answer. Ultimately, it’s more important to understand the concepts/reasoning behind the questions than it is to simply memorize fact patterns. Doing this is what got me the passing score. I write that last sentence, b/c I know that I didn’t study any of the new law.
For those new-law questions, I got hung up in the morning portion of the exam trying to answer them correctly. I soon realized that doing that was throwing off my pace, so I did a much better job in the afternoon of blindly guessing on those questions when I saw a fact pattern with dates having years in 2010 or greater. My passing score tells me that the new-law questions were beta/experimental questions.
I infer that the USPTO is building up a bank of questions using these beta questions and that these questions will become scored questions in March/April while the first-to-invent questions in March/April will become the next batch of beta/experimental questions. Thus, if you have the time/means, I recommend taking the test before March/April 2013.
I have taken a legal bar exam and passed before, and I can tell you that the patent bar is much more challenging. There is no shame in not passing, but on the flip side, passing is one of the greatest rushes I’ve ever felt. It’s totally worth trying to pass. Trying means doing practice problems ad nauseum and, if you have the time, learning the new law.
Good luck to all future-test takers. Thanks so much to everyone affiliated with this site–in particular, BFusion, Brad, and the people or the person who set up this site. I didn’t use it the first time (I used 2009 PLI materials), and I failed. This time, I learned the law with PLI and took the exams posted on this site. I actually ran out of time to learn the repeat-questions section of the site, but if you take the exams, you’ll see questions repeated even if those exams are just from 2002 and 2003. Good luck and happy holidays!!!
I passed yesterday.
My 2 cents on how to study: Go through the old questions slowly, search the MPEP, find all the answers and be sure you understand the issues. I had less than 10 verbatim repeats, and maybe half the questions had fact patterns or issues that I was familiar with and could find quickly because I had dealt with the issue before.
Be careful with the search as others have mentioned, I lost a few minutes in the morning section when the pc crashed. I think the trick is to never press ‘enter’. Use the ‘find’ button with the mouse.
The following are the issues for the AIA questions that I received as best I can remember. I am certain that this list is inclusive of the obvious AIA questions that were on the exam.
1- Who has standing for PGR? I guessed that one of the parties was estopped because of a prior re-exam.
2- Who has standing for IPR?
3- Who can sign a declaration? I think the right answer was the option for the assignee to use a substitute statement when one of the inventors was unavailable.
4- IPR and civil suit filed same day. Which is stayed, if any?
5- Pre-issuance submissions. What can’t be submitted? Various options were several affidavits from various parties and other documents. I think the correct answer was an affidavit made by the submitter.
6- Situation with 60 yr old inventor on death bed. Which avenue to pursue for disposition in 12 months? Options were prioritized examination with 10000 previous submissions, prioritized examination with 500 submissions, petition for accelerated examination, petition to make special based on age, and petition to make special based on health. I chose PE with 500 previous submissions.
7- PGR or IPR, which is appropriate based on the facts? Question and options included various dates as well as the different standards of review for each.
8- Other questions were ambiguous as to whether the new rules or the old rules applied, particularly related to declarations and inventors. For example, questions asking about how to claim priority when no dates were given and who should sign declarations when no dates were given. I assumed the questions were old, and applied the old rules, but I’m not sure whether that assumption was correct.
Happy studying and good luck to all!
I too passed, but on the 19th! My test didn’t have any of the questions Brad has mentioned, but Passed before the end of theWorld must have had many of the ones I saw.
This web site was invaluable to getting me to passing, but also what got me over the finish line, finally, was the new materials that Bfusion put together as a formal course. (Wysebridge.com).
I have gone through PLI materials, through the material from OmniPrep, the Meeks patbar review and lastly the Wysebridge stuff. Each has positives and negatives about them, and I’ve taken this beast of an exam and failed with a 63! So, here’s my final formula that worked:
1. there’s no substitute to knowing the material and understanding it. You absolutely must be proficient at looking up information because the questions asked frequently have such fine nuances that it is impossible to have memorized the MPEP to pick the right answer unless you know where to look or have seen the question before! And, as many have pointed out before me, even the questions that you’ve seen before are often tweaked just slightly.
2. So, while you could do PLI, which has an outstanding set of practice questions, they are no where near the difficulty level you’ll encounter. However, that said, it is a good way to learn/understand the concepts.
Plus, their staff was outstanding in terms of trying to help. However, they lack anything but the USPTO sets of questions from the early 2000s in terms of difficulty level.They are expensive too, but I bought the course when I was still a student so it was ‘reasonable’. John White is an outstanding speaker and quite good at explaining things.
I found Meeks to be more like a college course and not so much a ‘review’ course. Parts were almost as dry as the MPEP itself and the audio stuff I stopped listening too because i couldn’t stay focused on the almost monotone recordings. But, if you’re the kind of person that wants an indepth background on the material, it’s an ok way to go. But, again, they don’t have an efficient way of beating the questions into your head.
Omniprep i found to be most disappointing in terms of help from their staff. I’d come across a questions that looked to have a wrong answer, i’d ask them about it, and then get the same answer in a reply. No explanation as to why their answer was right, just the verbatim answer. I really didn’t pay much attention to their review materials since I had the Meeks and PLI stuff, so I can’t comment on the quality of that. They do have an extensive set of questions, but the decent ones are from the old USPTO sets. They also seemed to have copied verbatim information found on this website!! LAZY!!! so, it’s good they have made it easier to work with the questions, i think it was a waste of my money because of the other material i have AND this website!
Lastly, I cán’t thank Bfusion enough for his new website. I was pleasantly surprised at how well organized it is. Plus, it has many nice features that you don’t see with the other offers. I especially liked the Question Search option. You enter a topic, such as 102(a), and it pulls ALL the questions in its database related to that. By this point, I had a pretty good idea as to what areas I really needed to drill so this was an outstanding feature. He does provide the answer as part of the displayed answers, which my preference would have been that you have to work first and then reveal the answer, but it does help reinforce what the right answer is for the facts given. However, he does offer questions by chapter and those you need to answer before seeing the correct one. When I used it, I wasn’t comfortable with the MPEP access, mostly because i didn’t ‘see’ where it is. His answers directed you to the right place in the MPEP, so you didn’t need to look it up. My preference is that it would have been better for me to have to look for it. I did have a CD with the current MPEP being used on the exam but it was missing the latest PDFs for the last set of AIA material being tested. Bryan has been VERY responsive in fixing or adding things so he may very well have already addressed this.
for those of you who don’t know, the MPEP offered on the exam is 8r8, NOT 8r9, so get used to looking at the federal notices!
I had a TON of KSR questions on my exam. But, that is incorporated into the MPEP version available, so look that stuff up in 2100 now and really read/understand that.
The IPR/PG stuff was fairly straight forward. Didn’t see any tricks about it. Need to have an idea about when you use which and who can use it.
Again, my thanks to Bryan and his new Wysbridge.com website. It is what got me over the goal line. I saw at least 40 of the questions he has on my exam. Another 20 were modifications of what he has. The rest, well…
So in short, on exam day I:
1. set up my scratch paper such that I had all 100 questions listed with ABCDE. I did this during the 15 minute review time you have to see how the prometric system works. You can see that ahead of time so review it before you get there then use the time to see up an answer sheet.
2. as you go through the questions, if you know it, mark your sheet, i put a check next to it so I knew to never look at the question again and moved on.
3. if i didn’t know it, i’d go through the answers, mark off the obvious wrong answers on my scoring sheet, usually leaving 2 to pick from. If I couldn’t find it in the MPEP quickly, i’d pick one of the two and enter it in the program, mark it using the “mark” feature of the software and move on.
4. when i hit questions that i had ABSOLUTELY NO CLUE about what they were asking, I’d leave it blank so that the software would make it as missing, and move on.
Using this method, I had about an hour left in each session where I could go and look up answers. Since I had marked my paper, I knew which two i had to research, saving a ton of time. The checks i put on my paper also was encouraging. In the morning session i was POSITIVE about 30 of the answers and in the afternoon i was positive about 35. The odds were in my favor that I would have enough to pass from the remaining questions. That positive feedback in the morning and afternoon really took pressure off me so I could focus.
Sorry to ramble on. But, if you have any questions’about the different courses I mentioned, I”d be happy to answer via email. Please don’t post them here because I won’t see it.
Send it to me at: ingacat@yahoo.com
Cheers and good luck! If I can pass it, so can you!
Vicki
I took the exam today and agree with the following:
“I had a TON of KSR questions on my exam. But, that is incorporated into the MPEP version available, so look that stuff up in 2100 now and really read/understand that.”
Had I not done the above suggestion, I would have run out of time. There are a lot of obviousness/103/KSR questions. In a nutshell, KSR allows the examiner to use 6 other types of reasoning in addition to the old-school reasoning of teaching/suggestion/motivation. You don’t have to necessarily memorize those 6 types of reasoning, but another specific thing you should know is: (i) common knowledge as it relates to taking official notice and what the examiner has to show to rely on common knowledge, see MPEP 2100 (somewhere).
Know the concept of using non-analogous art. It applies to 103 and 102 questions. There were so many one line questions (ie, which of the following may an examiner rely on; may not rely on) for a 103 rejection, for a 101 rejection, etc.
good luck all!
Hi everybody,
I am a registered to practice before the USPTO and I am actively looking for a full-time position as patent agent. I bring 8 years of progressive experience from the biopharmaceutical industry from Denmark and the US and I am fluent in 3 languages (Danish, English and Turkish and I am proficient in French). I have multiple scientific publications in highly respected journals and a patent that I drafted and filed for the product I developed. Ever since passing the patent bar exam in july I have been looking for a job in law firms and small boutiques, you name it, but find it extremely hard to get my career started in intellectual property especially in this grueling economy. I do not have the possibility to be an examiner yet as I am not a US citizen. The majority of the places require at least 4-5 years of prosecution experience so unless you have a friend or a family member in a company who can get your foot inside it seems to an impossible task to make the transition from science to patent law.
I have solid work-ethics and have exceptional analytical, communication, interpersonal, organizational, problem-solving skills and at this point I am willing to relocate anywhere in the US to get that first golden experience.
I see that most places in the biotech and chemical arts generally require PhD as opposed to other arts and some few years of experience but I have industry experience that a PhD professional does not have. I have product-development and manuscript writing skills that most PhD students do not encompass.
My question is, would anyone happen to know someone who is looking for a person with my professional skills that is hiring right now or do you think 2013 will be turning-point in this field with more entry-level positions if these even exist in intellectual property ?. I am in the process in considering getting intern-ships as they might be the only way to get that first exposure experience. That is if companies are willing to spend their attorney time to train you which I also highly doubt.
I greatly appreciate any suggestion to get my career started in IP or contacts any of you might have in this field. I am open to going to part-time law school if it is sponsored by a company. Adding another degree and standing with a big debt with the uncertainity of not landing a job is not in my plans. It is a highly competitive field and the market is really bad so best of luck to future test-takers.
fyi, the market for patent attys is much different from patent agents. I think patent attys are in much higher demand b/c it’s difficult to find people trained in science AND law. good luck to you, patent scientist.
On wikipedia it says that there are only 40,000 people registered to prosecute patents in the USPTO. Of those, 30,000 are patent attorneys. This is why I think there is strong demand for patent agents/attorneys; there simply aren’t that many out there all while technology continues to move and grow at a fast pace.
Like so many of you who have posted on here, I feel obligated to post about my experience after having received my preliminary pass about an hour ago. I guess I can divide the post into three parts: preparation, exam substance, and exam experience.
First, to start my prep, I took the outstanding PRG live course in San Francisco in early November. I thought Mr. Gardner was an outstanding lecturer and that the in-class materials that came with the class were very well organized.
After the class, I had about 6 weeks to prepare. During those 6 weeks, I balanced working full-time at a firm with studying: about two hours of Examware every weeknight and five hours on both Saturday and Sunday. All in all, because i wasn’t perfect with my routine, I ended up spending a little more than 100 hours answering the Examware questions. Additionally, for everyone who uses that software, I highly recommend skipping the questions that have less than five answer choice (true/false questions, for example) because they don’t simulate the real test questions as well.
I didn’t start using this site or the Wysebridge site until about two weeks ago. I compiled all of the old exam questions from this website and compiled the organized “newer” repeat questions from Wysebridge. This ended up totaling about 200 pages of questions that I summarized, read, and took notes on for hours and hours over the past couple of weeks. I probably reviewed questions that were potential repeats for at least 30 hours. It sounds stupid, but it helped a lot as I’ll explain below. So, in total, adding up the Examware, repeat question review, and other review of the material, I studied for about 150 hours in the past six weeks.
Second, I’ll try and regurgitate what I can remember of the Exam. I think I probably had about ten repeats per session and they included, among several others: Tommy and Jo, Smith’s Laminate, foreign filing in Japan and notification after 45 days, Foil Airplane, Smith and his telephone (instead of Texas he sold in Idaho), and Potter/Smith (a variant I think).
Importantly, after I did such rigorous (and ridiculous) review of the previously used questions, I could spot them almost right away. This provided comfort and confidence from the very start. I was able to dispose of the questions that I knew already and the ones with the short prompts in a first pass through. Once I started, I felt very comfortable the rest of the time.
I saw probably ten AIA questions or so and they stuck out like sore thumbs. The questions almost always mention either 2012 or a year further into the future. I skipped them and tried to attack them at the very end by just searching repeatedly through the different relevant Federal Register sections.
Third, the testing facility was fine, but I have one serious gripe. The “PDF” that Prometric provides looks and feels like Adobe Version 1.0. The find function on my machine sometimes would minimize and maximize the window inexplicably. Furthermore, once you punched one search term into the screen and reached the bottom of a section, if you scroll back to the top of the section to search from the beginning, the cursor seems to think that you’re still at the bottom. This problem is sort of hard to explain in text, but it basically meant that I might have skipped over some search terms without knowing it.
All in all, I’m ecstatic and relieved. Balancing the full-time job with studying was miserable. Merry Christmas and happy new year to everyone.
I also passed (today). I’m so relieved, so I suggest studying as suggested above to feel the same way. It’s awesome.
I agree with the following: “I think I probably had about ten repeats per session and they included, among several others: Tommy and Jo, Smith’s Laminate, foreign filing in Japan and notification after 45 days” and “Potter/Smith (a variant I think).”
good luck!!!
Thanks for the comments, by JustDoItNow on Repeat Questions..
I too would like to have some clarification on Cchese’s following point:
2. ‘do you wish to remain on the register’? = what’s the meaning of this?
I am not on register yet, so what’s the right answer for the above question in the data sheet?
I obviously want to get on the register, otherwise I would not have taken this exam.
Thanks
You want to check that you want to be/remain on the register in the OED data information form. This is the same form that you will use once you are registered to change your contact information. There is no stand alone data OED data information form for use by those of use that are pending formal registration. Please leave the registration number box empty.
Data Sheet Guidance:
On the data sheet, Do not put a registration number on the data sheet, you do not have one and do not confuse your OED ID # you received when you were approved to take the exam as your permanent Registration number, it’s only a temporary number used to control your application until you pass the exam and are licensed.
You also list on item 1. Yes, (that you want to remain on the register.)
On item 2, if you are an agent, list agent, if you are already a member of a state bar and can obtain a certificate of good standing from the clerk of that states Supreme Court, list attorney. This means you a licensed lawyer.
You should check on the OED website and you will find your name within a week or so of passing which is posted for public comments on your moral character and fitness for 45 days. If no major comments are received and the OED, upon reviewing your file and checking available records find no problems with character and fitness (just like you went through with your state bar) after the 45 days run you will get a registration number, typically within a few days after the 45 days which will be posted on the register of attorneys and agents.
You will get your formal certificate in the mail in about three weeks after the 45 days run.
If you are not an attorney you enroll initially as a Patent Agent. If you are in law school, after you graduate, pass a state bar and can obtain a certificate of good standing from your state supreme court clerk’s office, send it in along with the fee and the OED will reissue your certificate with the denotation you are a Patent attorney, and your status on the roll at the OED will also be changed.
Just Do It: Thanks for clarifying. If you don’t mind one more clarification would help.
In the exam registration form I had given my work address as the mailing address. The work mailroom messed up the delivery so I got the acceptance, with the OED ID, letter from USPTO 2 weeks late, which delayed my exam date. So, immediately after getting the preliminary pass, I specifically wrote to USPTO to change my mailing address to my home address and they did, so I received the Data Sheet & Oath very quickly, at my home address. Now it seems USPTO has my home address as my correspondence addres.
The Data sheet is asking for a correspondence and home address. Correspondence address seems to be the address to which USPTO will send mail, that would be fine for the later official work related mail, but I want at least the patent agent certificate etc. to be sent to my home address. So, what’s the best way to get this? would it better to put the home address as correspondence address too and the later after receiving the PA certificate inform USPTO to change the correspondence address to work address ?
Thanks.
Preliminary PASS today. I studied for maybe 20 to 30 hours for the exam, but I focused on intellectual property law in law school, etc.
I first took this exam my first year of law school. I reviewed a second hand PLI course, but had better things to do than study at the time. I ended up with a 69%.
This time around, I started over the with PLI course but, since I had more experience, was able to skip a lot of the lessons.
Which study resource takes the cake? B-fucking-FUSION and his WyseBridge study material and website. Seriously. I had 20 to 30 repeats on this exam and aced them all. They were the same repeat, beta, and experimental questions that WyseBridge highlighted on the Frequency Chart and Repeat-specific practice exams.
Tribell
Moon dust
Cancer/pain
Swedes
Japanese
Cell phone
10+ Appeal Questions
10+ AIA Questions
Amend “ccar”
Fix inventorship, listing only B with B’s signature
Aluminum airplane
Toy horse
Lip gloss
Cell phone testing and offer for sale
IDS/Notice of Allowance thing
Access to assignment records
Small Entity pays full for documents affecting title
Mixture Y, Q1 and Q2, 150F and 300F Question
DRAM
Crossing the Road
Which tolls 112P6 – All of them
Which is a proper MDC
A few questions re: Fax
New matter in Spec that affects Claims 1 and 2
New matter in claim, still examine, 112 rejection after
Lots more.
Anyway, thanks to B-Fusion and WyseBridge.
PLI with DVDs/CDs for sale.
took my test today did not pass. Lots of new AIA material and not beta.
ABCD/ABCDE/BCDE (10.03.2p)
Parking Meter (10.03.28p)
Ex Parte Rejection (10.03.50p)
Filing Date (10.03.39p)
Filing date (10.03.29p)
Which, if any: Chapter 600 (10.03.22p)
Foreign Filing without Publication (10.03.44a)
Smith / DRAM (10.03.9a)
Foreign Priority (4.03.22p)
Final Rejection Period for Reply (4.03.4p)
Obvious (04.03.41a)
nonpublication request/45 days (10.03.44a/4.03.2a)
Final Office Action (10.01.11a)
Smith Laminate(4.00.17a)
Laurel, Abbot and Hardy (4.00.14a)
Q4) Submitting Tables on CD-ROM
Q14) Costa Rica and Sweeden – PCT
Q23) Broom
Q40) Assignment
Q41) Documents Requiring Signatures
Q50) Appeals
Q51) Best Mode
Q52) Multiplicity
Q61) PCT Publication
Sorry to hear! I had mine scheduled for today as well, but rescheduled a few days ago to take it in 3 weeks. I just did not feel comfortable enough with the new AIA material or my search techniques.
I will be putting your post to good use (if it is any consolation). Please provide any additional information if you are able, it would be greatly appreciated.
* old man garden tool daughter to talk to examinar??
* lots of new obvious questions different from old exams and study material
* intra review
*post grand
*Biliski
*KSR
*PCT
*LOTS of Appeal and hard ones at that
*no patentability
*no “how to get around rejections” using 1.131 or 1.132
*NO F’n Gimmies : (
*JUST LOTS OF new pain
My problem was the time…. ran out of time then I choked on questions that I had marked for further review
only used MPEP a few times
Had I had a few gimmies, budgeted my time better, and spent more time studying Appeal, PCT and the new material, I would have passed
I have read many posts on this site and have concluded that 1 or 2 guys on here have not been truthful and may be posting about taking the exam with different names. The exam I had yesterday was a different monster….. Many of the fact patterns have not appeared on previous exams. I don’t mean the same old questions…. I mean the same fact patterns. If you are not up on KSR, Bilinski, the new obvious rules, Intra review, post grant, and an expert on appeal with PCT in for good measure… you will not pass. I knew the old stuff cold and glanced at the new stuff because I was burnt out from study and I got my ass handed to me.
@cvalante:
Sorry to hear that. Sounds like you were unlucky and got the exam as they started moving aia questions from beta. Also, according to some of the reports I’ve read, you have about a 50-50 chance as to whether you get a test with a ton of repeats or not. When I took it a few days ago (and passed), I did not get a lot of repeats, but I only had about 10 aia questions.
If you don’t mind me asking, what are you doing that is taking so long if you aren’t using the MPEP?
For the next time, if you haven’t already, install acrobat 5.0 and get used to searching the mpep as you would on the exam. You should be using the MPEP (almost) ALL the time. Once you know where and how to search, you can open the correct section and search for a string from each answer choice and solve many questions in < 2 minutes. Do not search the entire file, which will leave you hitting find again over and over. Instead, use the table of contents of each file to limit your search to a specific subsection of the file.
And if you've been reading the recent posts, appeals and PCT have been covered a lot recently. That's not a new thing. You should have appeals and pct down cold. Obviousness also seems to be big.
KSR and Bilski didn't really add anything. KSR basically said that the TSM test is not the only test and you can combine references so long as there is some motivation (internally or externally) to combine them. Also, it's not obvious if something in the prior art suggested that combining the references would lead to an inferior (than the prior art) result.
Bilski basically stated that business methods are not per se unpatentable (in other words, they may be patentable), and reiterated that abstract ideas are not patentable.
I had the old man + daughter talk to examiner question. Pretty sure this one is a gimme. The PTO will only speak with an inventor (including joint inventors) or patent practitioners. (See MPEP 400). There are a few exceptions under 409 for legal incapacity, but the question did not say that he was incapacitated, just old. Moreover, 409 only says they can sign the oath or declaration. There's nothing about speaking with the examiner. Furthermore, there's the whole secrecy/access stuff from 100 that limits to inventors, agents, and assignees.
“I knew the old stuff cold and glanced at the new stuff because I was burnt out from study..”
That’s about how I was mid-week before I rescheduled. Thank you very much for your help, I’ll be spending a lot more time on the points you mentioned.
One positive, at least you have time for another shot before the Final AIA changes become testable.
I also spent the last few days before the test preparing for 102e and pct timelines and was rewarded with very few. Should have spent the time on new AIA.
Yes. I was hoping the new stuff was going to be beta questions but they were not and that coupled with an inordinate amount of appeal questions sunk me. I will take it again in Feb.. Good Luck.
how do you know the new AIA stuff was not beta material?
Hey do you know where a listing of what documents are available… along with the MPEP.. on the current test. I am using PLI and they have a number of additional documents included a Federal Register for the KSR material that is also covered in 2100. Didnt know if that Federal Register would still be available or if would have to seach obviousness questions in 2100. I navigate the Federal Register quicker but want to get used to whatever will be on the test.
JRICE.. Here you go..
http://www.uspto.gov/ip/boards/oed/exam/aia_regexamsourcematerial2012sep04.jsp
http://www.uspto.gov/aia_implementation/index.jsp
http://www.uspto.gov/aia_implementation/roadshow.jsp#heading-1
@Jake I was over prepared for a test I did not get. When I did not get the test I studied for, I took too long reviewing the questions.
It has been a long time since I have taken tests and I did not take that into consideration.
Just posted a lengthy writeup of my exam but doesn’t appear to have been posted.
Here’s a condensed recap:
I received a provisional pass on 12/29 (1st attempt). In preparation, I used the PLI lectures, reviewed both ’03 exams (twice) and the Oct. ’02 exam (once), Bfusion’s material and this website. This website was best resource I found. Overall, must have put in about 170 hours after listening to the PLI lectures.
My game plan was to finish each session (AM & PM) with 30 minutes to spare so that I could go back and review marked questions. Was able to work at this pace in the AM session, but the PM session was much more difficult, with lengthy questions/fact-patterns and I had to make many educated guesses just in order to finish a first pass in time.
Here’s the questions I remember (12/29/12):
Japan/non-publish/45 days
Light/fan/clock
Tommie & Jo (variant)
Application references priority doc, want to correct “ccar” typo, missing drawing, missing sheet
Smith laminate
Shoe polish – method claim
Leather straps stapled to wooden stick (french martinet)
Potter: Overcome rejection by stating that Potter and Smith applications commonly owned
Beck – mixture Y
IDS after Notice of Allowance
Canceled matter ever prior art – 102(a)
Not-of record agent in Germany faxes PTO on last day
When can a 1.131 affidavit be used (see comment # 460 above)
Indefinite “high”
Conversion from non-provisional to provisional: Can you get refund?
Block – synthetic Z
Toy plane (foil wings)
Moondust
Tribell
Suspended co-practitioner
Encoded signal not patentable
Trade secret
Entitled to PTA?
S-signature is a certification
Many small entity and PCT questions
Enablement and obviousness questions
Not as many questions from Ch 600 as I had expected. Some AIA & KSR questions.
Good luck to all future test passers!
Thank you for the info. I took a couple of weeks ago and missed by a few questions. I remember seeing most of these but have trying to remember them.
Clarification:
When can a 1.131 affidavit be used (see comment # 460 on _Repeat Questions page_)
1.131 is for providing an affidavit in support of a date–to ante date a prior art reference used in a 102 rejection. I think it’s for 102(a), 102(e) and 102(g) rejections. In contrast, you can’t antedate a 102(b) rejection.
Try to think of a 1.132 affidavit as support for an argument instead of a DATE of invention/conception/reduction-to-practice. For example, an inventor might want to argue to the examiner what a person skilled in the art would have done at the time of invention; if so, s/he will submit a 1.132 affidavit.
In sum, 1.131 relates to a date, typically for antedating a reference. 1.132 relates to making an argument.
Took the exam on 12/29 and passed. This is my second try. I scored 66 in first try in September, and I was not fully prepared just to take the exam before the changes. I took PRG video course which gave me a base to start. And, the key is to practice the past exams as many times as you can. But I would say this website contributed at least 50% to my pass. So I feel obligated to share what I can recall in the exam.
1. French patent, 102(d) only
2. Potter
3. Potter
4. German patent PCT, IA on Nov 29, Published in German. Question is when term starts?
5. Biological material (verbatim from 2400)
6. AIA question: Old man in hospital wanted to file idea in one year (500 applicants in Track I queue)
7. Rapidity
8. Expartie exam, in non-final OA, what examiner will do if no reply is received on the day of SSP expiration
9. Provisional filing on obtaining filing date if a figure is missing
10. AIA question: need to know post grant exam and inter partie review criteria difference: RLP vs most likely ..
11. Dependent claim count (8)
12. Peace meal (all)
13. When use 1.131 (10.01.46p)
14. Lip gloss
15. Spanish phone
16. Which statement is true on double patenting provisional rejection (need to lookup MPEP)
17. Practitioner not on record can sign small entity status
18. Priority claim: claimed first, then removed ,tried to reclaim back due to prior art
19. Bloc; Synthetic Z (10.03.7a/4.03.32p)
20. ABCD/ABCDE/BCDE (10.03.2p)
21. Two inventors dead after NoA. What patent office will do.
22. Japan IA, 45 days
23. Velcro
24. Broom
25. Advisory action within 3 month SSP
26. MOLYBDENUM (argue even the prior art claim is in range but the difference may generate unexpected results to reject 103)
If you are interested, I have my PRG material for sale including the lecture slides with latest updates on AIA and PRG text books (the 9th editio, 3 volumes, published in 2011). Please contact me at nusww@yahoo.com.
Best luck!
The Pre 1999 questions focused heavily on Claim drafting.
To those that have passed, were there many questions focusing on claim drafting?
No. I think there was one or two questions dealing with transitional words, but that’s about it.
I agree with Jake. Claim drafting was not on my exam, but understanding transitional phrases was. I think you can find the phrases that are synonymous with “comprising” in Ch. 2100 of the mpep.
Hi test takers,
Just passed the exam in December. I posted my two cents earlier. I am selling my PLI material for $500. I bought it in October so it includes the new AIA stuff. It also comes with hundreds of old exam questions as well as full length exams. I used it exclusively to study. It’s in good condition as I was very careful with it. Some highlights and notes in the margins. Please let me know if you are interested in buying. Good luck!
~Kevin
wutangfinancial@hotmail.com
For those of you that have recently taken the test and seen the AIA questions. How in depth were the questions. More concerned with general dates of applicability and thresholds or more complex. Thanks in advance.
The ones I saw were more about the thresholds and comparing the different post grant options.
preliminary pass today! Failed twice before (due to be under prepared and rolling the dice)
If you don’t use Bfusion’s material, you are going to miss out on easy points.
Few repeats: Moondust, Potter, questions about SSP, reissue questions
new Material: A lot (at least 10-15) questions regarding post-grant review, ex parte and inter party rexamination or review. Know the dates, know what happens if the some one brings a civil action. One question about business patents (simple if you read the handouts). Honestly, I wish I made more details about these questions, but they are all the same. Know Sept. 12, 2011 and after, what happens.
Thanks for all the feedback!! Another quick question…. the questions you all have encountered on KSR.. do they use almost the exact scenarios from the cases or do they modifiy the cases while testing the general principle?
Memory dump I am at halftime right now…
Potter
Block synthetic
Living inanimate
Japan 45 days
Communication with suspended practitioner
Encoded signal not patentable
Linking to two provisionals one 12 months one 24 months out – I put past the time period
Japan PCT
Swiss PCT
5 or so on new AIA
5 or so on PCT dates etc (nervous about this)
I’ll memory dump more after the second half! Wish me luck!
Also,
Tip moon dust
Indefinite high
Smith laminate
Also,
Clock fan 3 saucer size question
1.131 when can you use
Tin foil wing plane maintain the rejection
Preliminary Pass! All in all 20 repeats in the AM and right around the same in the afternoon section. I saw on avg 10 AIA all easily discernable by date. Go to the regtister for those if you attempt/have the time. Basically all PGR and Inter Partes differences.
So a quick memory dump.
Cancer Sytnehtic Z w/ Bloc = not incredible b/c headaches
French Martinet from 1906 = I chose it is prior art
Spanish Phone
Priority claim: claimed first, then removed, tried to reclaim back due to prior art
Correcting ccar, drawing etc at Stage 1 of IA. I chose ccar only
One about when 1.136(a) and (b) can be used… choices were an except answer… except during reissue during litigation, except during rexxam, except during paying issue fee.
Tommy and Jo variant
French 102(d) only
Dead inventor signed rights to company right before passing, the estate may prosecute unless the assignee of entire interest intervenes.
That is all I can really think of at the moment. Kind of scatterbrained. One word of advice is when studying past questions know the reasons for the answers. That is the new questions under qysebridge are not going to be verbatim what the questions appear like but are pretty darn close. I took it once and failed it after taking pat bar course. I used this site mainly and Bullseye the second time and that made a huge difference. Know old questions! 40 were from 2003 or older and I believe I picked up another 10 per each section from the new questions found on here and wysebridge. I hope this helps!
Took it for the first time today and unfortunately did not pass (65%). I will compile a list of repeats once I get an opportunity, but here are some quick notes:
-Around 7-10 repeats per session. It is hard to give a precise number because often the call of the question and answer choices were different than the old questions I had gotten familiar with.
-Probably 10-12 Inter Partes and PGR questions.
-Another 12-15 questions relating to PCT dates and obviousness.
I was very thorough in ensuring the Inter Partes and PGR questions were correct, which leads me to believe they are still being used as Beta questions. In hindsight, I should have verified more of the simpler questions that I flew through. I really wish it would be easier to review the questions I had gotten wrong to help the next time around!
Here are most of the repeats, from what I can recall:
-Japan 45 days
-Ccar
-Moondust
-Plane with Foil Wings
-Bloc; Synth. Z
-Potter (Possible variant)
-Tommy and Jo (Variant)
-Living inanimate
-Martinet
-Clock fan with 3 size sauvers
-Foreign design patent outside 6 months
-Comm w/suspended prac. (Variant)
-Smith laminate (Neg. Variant)
Took it today and passed solely because of this site. Didn’t have too many repeats, but there were some notable ones:
1. Compound Y
2. 2 Potter questions
3. Which of the following is true question, regarding a court finding of validity/invalidity having binding effect on reexam. I believe the important choice read
A final decision by a United States District Court finding a patent to be NOT INVALID will have no binding effect during reexamination since the PTO may still find the claims of the patent to be invalid.
4. Dependent claim counting, claims 1-8
“New” Questions
5. 101 regarding signals hidden in variations of patterns in what seemed to be some part of the electromagnetic spectrum.
6. Which of the following is an inappropriate time for examiner restriction. I answered after final rejection, but couldn’t be sure.
7. Which of the following is an inappropriate usage of a reason for allowance? I think answer is when applicant when applicant fully complies with 37 CFR 1.111 (b) and (c) and 37 CFR 1.133(b).
8. Question about PGR and Ex Parte reviews with 2 applications given to the same party. One was over 9 months out, one was under. Petitioner wanted to invalidate both, the only two answer choices including both patents involved only one form of review.
9. Question about Requesting special in which applicant was 66. The question didn’t ask when can you file the request without fee, but how to get the patent as fast as possible.
10. Claiming benefit, cancelling benefit, then attempting to reclaim again
11. Information disclosure statement after issue fee has been paid. Answer is that the office will attach the statement, but wont consider it.
12. Assignee of full interest can file a reissue to correct inventorship without inventor declaration
13. Know that filing a inter partes review and a civil case to invalidate a claim on the same date will automatically cause the IPR to be stayed.
14. Question about 2 joint inventors, one of whom dies before signing the oath, and the other of whom signs the oath only for himself, tells the patent attorney to file the application, then leaves for vacation (and is unavailable) for 2 weeks. Know that one inventor signing and leaving the other signature line blank is presumed good enough to be considered to sign for the inventor.
I will post more if I think of them. Let me know if anyone has questions.
I think your answer to question 13 above is incorrect.
Updated 35 USC 315 states, “If the petitioner or real party in interest files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for inter partes review of the patent, that civil action shall be automatically stayed until either–“.
Based on that, it appears the civil action will be stayed if a IPR and civil action are filed on the same day, not the other way around.
I got it mixed up. Thanks for clearing that up.
Thanks for the response. Re-reading my reply, I realize I may have come off a little strong. If I did, I apologize. I’m scheduled to take the test Jan. 30, and I really appreciate you taking the time to post your experience.
Thanks again!
Got a preliminary pass yesterday (first attempt). This web site helped immensely.
I started studying in late November and have spent approximately 300 hours studying. I purchased the PatBar course by David Meeks, and overall found this quite helpful at a reasonable cost. I spent the first two weeks reading through the entire PatBar course and answering all the test questions linked to each study lesson.I also read all relevant chapters from Patent Law, 4th edition, by Janice Mueller. I thought this helped in getting an overall sense of the law and procedure; it will often explain the underlying rationale for clauses and procedures, which aids in remembering and understanding. They also have some good coverage of AIA, although it is somewhat incomplete, focusing mainly on PGR and Inter Partes Review. I also picked up the West Law printed version 8.8 of the MPEP and found this really helpful as an aid to remember the structure of the MPEP, and skimmed selected parts (700, 2100, 1800).
After this, in mid-December, I took the 4 test suites assembled by Mambo. I had an overall pass rate of 60% and was somewhat discouraged by this. I then did a first pass of all old questions from 2000-2003, answering all in depth. Subsequently, I started repeat reviews of all documented old (00-03 only), new and repeat questions. I did this by assembling a compilation of all questions with each question, answer options, and correct question bolded with one page per question; in total about 1200 pages… I then repeatedly restudied these questions, by doing a fast scan of the question, focusing on the correct answer only. It is essential that you understand the reasons why an answer is correct and not correct, before starting this scan procedure, but I found this a very helpful way to memorize correct answers. I estimate that I did around 4-5,000 questions scans like this; spending typically max. 10 seconds on each question. I only started studying AIA and other notices in the last two weeks before the test.
In the last week before the exam I redid the entire Mambo suite of questions and this time had a pass rate of 98%, with no errors in the first 2 tests. Within the last week I realized I had some weak spots, particularly related to chapters 100-500 in the MPEP. I think this is because I studied these first and it didn’t sink in well initially. I re-read these parts in detail and then did a quick scan of the entire PatBar course, reading the very good lectures (chapter summaries), and doing a scan of all questions and answers for each study chapter.
I was reasonably confident that I should be able to pass the exam going in. However, the test itself turned out to be more difficult than I expected. After the first 50 question session, I was very concerned since there were many questions of a type I had never seen before, and I thought it was possible I was well below 70% at that point. Some of the questions were lengthy and I wasted time on several occasions, and ended up with 10 minutes to recheck at the end of the first session.
The second part seemed overall easier, but I still had a good number of questions I had not seen before (in addition to AIA questions). I got a better pace going in the second half, and had 30 minutes to spare at the end. I am, on a side note, tempted to do a quick review of pre-00 questions to find out if some questions originate from that pool.
The exam had a reasonable number of repeats; I estimate between 20 and 30 in total. There were, as mentioned, a lot of older procedural questions that I did not recognize (signatures, appeals, PCT, etc., etc.). There were a good number of AIA questions, probably around 8-10. These were quite easy and really only required remembering the central dates and transitions from SNQ to reasonable likelihood.
I did not practice with Adobe 5.0 and did not have a problem due to this. The test environment is easy to use, and search functions as expected, with ability to search on full phrases. I did not use the side-to-side feature described by others, and found it quite easy to switch back and forth between question and MPEP or additional materials. Note that additional material is not numbered by notice number; you have to go by the sometimes lengthy title. For the AIA questions I encountered it really should not be necessary to look anything up, though. Others have noted it’s possible to accidentally change an answer when clicking back to the question. This is best avoided by always clicking on the top part of the screen. Within the same question, it will stay in the same part of the MPEP when you re-click to search. You can go up to the top of the document and search from there. I managed to avoid hitting return, so did not experience a system crash.
The overall lesson is that the test is a bit of a mental challenge and it’s important to just keep chugging along, even if you get a sense mid-way that you may not pass.
On another note, for those that may not be able to take the test before after the beginning of April, when they start testing the full AIA with MPEP 8.9. It’s impossible to know for sure, but I doubt the test will become much more difficult. It will be easier to look up answers, since most will be supported by the MPEP alone, and unless they switch to a harder category of AIA questions, it may just be an advantage to have more of those in the test.
Thanks for the recap you posted.
What are the Mambo test suites you refer to? I’m taking the test this Wednesday and am looking for all the last-minute help I can get.
Thanks again!
Np. You can find a link to the Mambo suite in dusty’s comment above (from May 4, 2012).
They are simply a selection of the known repeating questions from ’00 to ’03; in total about 190 questions over 4 tests. You could try these now, doing them all in detail, and reviewing all wrong answers carefully. If you get 90-95%+ you are in good shape. If not, then do a quick scan for all repeating questions and all ’03 and ’02 questions, and repeat the Mambo test.
Thanks for the review. I am going to take the exam before April, as I expect it will not only get harder, but it will make exam questions from the 2002 – 2003 pool of ‘repeats’ much less likely to appear on the exam, since the OED plans to rewrite the questions to focus on recent changes in the law, especially the AIA. To quote from the OED website:
“Examination for Registration to Practice in Patent Cases will be updated again in early April 2013 to Include New Provisions from the Leahy-Smith America Invents Act (AIA)
The United States Patent and Trademark Office will be updating the content of the registration examination in early April 2013. The updated examination will include provisions of the Leahy-Smith America Invents Act (AIA) that will take effect March 16, 2013. Specifically, the updated examination will additionally cover the following topics: Derivation Proceedings and First-Inventor-to-File.”
http://www.uspto.gov/ip/boards/oed/exam/index.jsp
This means all the 102 from the old pre-AIA and post AIA will be on the exam, and many of the so called repeat questions will become much less likley to be on the exam, replaced with the new AIA questions now being transitioned into the exam. The exam is going to get tougher by an order of magnitude, and the old questions much less likley to be part of the exam. Good Luck everyone!
@Kyle & Halfdan,
Yeah…the MAMBO exams are 4 “randomized” exams compiled from old USPTO exams. Basically (as you might know) if you look at old exams long enough, you start to memorize the order of questions (you associate an answer and anticipate an answer because you know the information/question on either side of the question you are looking at). This was a simple attempt to try and boost the learning.
It’s one of the elements I decided to build into the website to help people test themselves, study for the exam, etc. Basically, we took all the old exams, new questions that show up frequently, and ones that we’ve compiled by piecing together information about what’s showing up on the exam currently (so, the newest questions being asked), and allow you to randomly answer questions, or take randomized 50 question exams. The other feature is that you can take an exact repeat of every 50 question exam you ever took (we keep entire history of your practicing online), that way you can compare.
feel free to email me: bfusion.uspto@gmail.com or you can take a look at the site (www.wysebridge.com).
In addition to the MPEP, are the other “source materials,” listed at http://www.uspto.gov/ip/boards/oed/exam/aia_regexamsourcematerial2012sep04.jsp, provided for reference during the exam???
Yes. All those source materials are available to you during the exam.
You have one button that opens up the MPEP (broken up by chapter) and another that opens up all the reference material.
10/4 Kyle. Thank you. I appreciate your quick feedback.
No problem jb.
I took the test this morning and received a preliminary pass.
My best advice is to review/memorize all the Mambo exams, ’03 exams, and the New Repeat questions over at Wysebridge. The first half of the test was pretty tough with few repeats. The second half, however, was a breeze with many repeats and easy, direct phrase lookups. I was able to finish the second half of the test with a little over 30 minutes to spare.
Kyle,
Congrats, and welcome to the club. RE: your correction above, no worries. It’s good to make sure we’re getting the right information out there.
Kyle,
Congrats on the Pass! Job well done, and, it’s a huge accomplishment!
Glad you found the site (Wysebrigde.com) helpful. We’re going to be working on updating the Free resources here soon (including updating chapter summaries to reflect the new changes coming down the pipe).
For now though, all that material (updates, policy changes, “spreadsheets” of which questions are showing up on the exam, etc) is part of the PRO access.
@JB: did you download a copy of MPEP ER8 yet? If not…get used to having to open up each chapter at a time (instead of relying on the online “searchable” MPEP). This will mimic the exam better.
Yes. I’ve been practicing with the downloaded version of Ed. 8 Rev. 8 in that manner (although sometimes I’ll end up with a few chapters open at a time). Thanks! Hoping to take it this month. Still waiting on my notice and test window.
Good! Yeah, for as cumbersome as it is studying using the .pdfs to search, it’ll actually probably be easier on your exam day using their version of the MPEP and search set up.
All the best to ya!
Hi Everyone,
Took the test and got a preliminary pass yesterday. Here are my stats and what I can remember from the test.. Sorry my brain is fried! Thanks to Bfusion and his site. He was very helpful. His site and advice really helped me, as well as this site.
I studied using PLI (the recent version) for 217 hours.
questions:
1) 3 sweedish pp submit a complete IA in the US, and it needs to be forwarded to IB office b/c US is not a proper receiving office – what is the filing date? (is it the US date or the date that the IB receives?)
2) all of the following can receive a copy of the signature except…
3) multiplicity repeat (984 – telephone election)
4) There were several questions about PGR/Inter partes review
5) KSR was definately on the test/Bilskey
6) submitting 51 tables on a CD or something.. I think you need to know that you need to submit in duplicate.
7) when can a partial assignee sign
8) death of inventor after assigning partial interest to practitioner who can prosecute
9) death of inventor after he appoints practitioner, and then assigns invention in exchange for a 5 yr employment contract, who can prosecute
10) Best mode – it was an all in accordance, except problem.
11) Prov app filed 11/28/99, non-prov filed yr later which claims priority, then IA filed which claims priority to both… on on on, what is the date for the 20 yr term.
12) design app claiming priority (remember 6 months not 12)
13 who can sign for small entity (all except question)
LOOK at Wysebridge NEW QUESTIONS, they saved me.
Finally:
I am selling my Study Materials. I have the most recent PLI book, including the 2 supplements covering the Phase 1 and 2 changes. (Phase 3 is not covered, as it doesnt go into effect until march, and they probably wont test on it until April).
Unfortunately the videos can only be accessed through the website, so you wont have access to that.
I also have an older version of the PLI (from 2008) which includes the audio and video CD’s.
email me if you are interested. cca1049501@yahoo.com
9)
Hey All,
As a heads up, I started a blog (wysebridge.wordpress.com/) where I’ve been posting tips, study help, suggestions, once or twice a week. I’m going to start expanding, and maybe post a “new” question once or twice a week as well.
While the material on the other study site (wysebridge.com) is much more comprehensive (especially in the PRO access side of the site), I wanted to continue to try and help test-takers as much as possible even if they can’t afford additional study materials.
Keep it up guys. Especially those of you trying to get this exam done before April!
Admin – please remove my post (1501) above 2/4/13 @ 9:30 am. I am getting major spam.
thx
I have PLI course material: 3-ring binder, all the books, CD and DVDs and also patware 9.0. All this material is 2012 year stuff. I’m planning to sell it. No marking on the books and they are excellent condition. If interested to buy please contact me at josyulav@gmail.com
Took the exam today and got my prelim pass. I did not use a study course and used this website as my study guide. I did all the old practice exams, studied the repeat questions, and looked at all the new questions on Wysebridge. I also practiced searching the MPEP while doing 4 practice exams. There were a lot of repeats of old exams and the new questions on my test, about 15-20 on each morning and afternoon sections. There were about 10 questions testing the new material which were obvious by the dates (2011 and after). I didn’t do any practice search of the supplemental materials before and didn’t realize until the afternoon section almost all the answers were in the AIA itself. Here’s 5 questions I remembered:
Q: Sally files patent application. She notices after 1 month of Bob’s patent issuance that his patent is for same invention. What can she do except?
A. File reissue application if applicable reissue error with interference
B. Protest using her patent as prior art
C. Reexam using her patent as prior art
D. Seek interference
E. Something
Q: Patent issued after 2011. Competitor submits for inter partes exam to Board of Appeals. Patent owner replies and Board decides not to institute inter partes exam. What can the competitor do?
A. Appeal to U.S. District Court
B. Appeal to Fed. District Court in Eastern Virginia
C. Request rehearing from Board
D. Appeal to Director of USPTO
E. Appeal to International Trade Commission
Q. International application submitted to IB under PCT only indicating US as RO. No action taken afterwards, can IB publish?
A. IB will publish after 18 months
B. IB won’t publish after 18 months but if it enters national stage in US, it will be published and published again under 35 USC 122(b)
C. IB will publish after 18 months and publication again under 35 USC 122(b)
D. IB won’t publish after 18 months…..
E. IB will publish after 18 months….
Q: Examiner must consider what for obviousness rejection
I. if applicant replies that rejection is not supported by any of the 7 obvious rationales under KSR, examiner must withdraw rejection
II. The rationale to modify or combine the prior art does not have to be expressly stated in the prior art
III. Examiner must start with teaching suggestion motivation test
Q: Mary’s grandfather is 94 years old and from Texas and has great new invention for something. Before submitting an application, Mary wants to get interview. In which case will the USPTO allow an interview?
I. Mary wants to speak to examiner to sound him out
II. Mary wants to call the examiner and ask him stuff about application
III. Grandfather calls examiner about field of art or something and his attorney also wants to be there.
Other questions:
1. what document will be accepted with copy of signature?
2. claim 1 is indep, claim 2 depends on 1, claim 3 depends on 2…,etc. how many claims are there for fee calculations?
3. multiplicity (984 claims)
4. anticipation (patent with claims for food additive with ingredients for chicken gumbo anticipated by prior patent with claims for food additive listing all the ingredients and some extra one for chicken/shrimp gumbo)
5. 3 swedish pp submit a complete IA in the US, and it needs to be forwarded to IB office b/c US is not a proper receiving office – what is the filing date? (is it the US date or the date that the IB receives?)
6. death of inventor after he appoints practitioner, and then assigns invention in exchange for a 5 yr employment contract, who can prosecute
7. Prov app filed 11/28/99, non-prov filed yr later which claims priority, then IA filed which claims priority to both… on on on, what is the date for the 20 yr term.
8. design app claiming priority (remember 6 months not 12)
9. applicant submits tables with tables 1-25 on one cd and tables 26-52 on another cd
10. what’s required proper recording of assignment?
11. variation of question about death after app filed and assign of rights to corp.
12. bunch of questions about disqualifying prior art under 103(a), 102(e)
13. variation on smith laminate question (which claim would support rejection)
14. Laurel, Abbot, and Hardy question
15. Repeat Make a Patent Application Special question
16. Repeat Potter application German application
17. question about appeal and board giving new grounds for rejection
18. repeat request for nonpublication question (Japanese patent 45 days)
19. question about when uspto won’t grant 1 month extension of time for reply
20. question about inventor of corp. going on cruise and forgetting to sign declaration for new application, inventor only accepting calls in case of emergency, what attorney should do that’s cheapest for company?
Thanks so much for this free site, it’s the best!
JW:
Thanks for the info. What were your answers for the first five questions?
Q: Sally files patent application. She notices after 1 month of Bob’s patent issuance that his patent is for same invention. What can she do except?
After September 17th 2012 under the AIA cannot seek an Interference.
A. File reissue application if applicable reissue error with interference
B. Protest using her patent as prior art
C. Reexam using her patent as prior art
D. Seek interference
E. Something
Q: Patent issued after 2011. Competitor submits for inter partes exam to Board of Appeals. Patent owner replies and Board decides not to institute inter partes exam. What can the competitor do?
One option is to appeal to federal District Court that has civil jurisdiction over Alexandria Va. Based Director of USPTO, federal district court for eastern district of VA.
A. Appeal to U.S. District Court
B. Appeal to Fed. District Court in Eastern Virginia
C. Request rehearing from Board
D. Appeal to Director of USPTO
E. Appeal to International Trade Commission
Q. International application submitted to IB under PCT only indicating US as RO. No action taken afterwards, can IB publish?
Best answer is C.
A. IB will publish after 18 months
B. IB won’t publish after 18 months but if it enters national stage in US, it will be published and published again under 35 USC 122(b)
C. IB will publish after 18 months and publication again under 35 USC 122(b)
D. IB won’t publish after 18 months…..
E. IB will publish after 18 months….
Q: Examiner must consider what for obviousness rejection
I. if applicant replies that rejection is not supported by any of the 7 obvious rationales under KSR, examiner must withdraw rejection
II. The rationale to modify or combine the prior art does not have to be expressly stated in the prior art
III. Examiner must start with teaching suggestion motivation test
Best answer is II and III. TSM is no longer only criteria for 103 post KSR, but still one of several criteria to support a holding of obvious under 103, along with the seven rationales in KSR.
Q: Mary’s grandfather is 94 years old and from Texas and has great new invention for something. Before submitting an application, Mary wants to get interview. In which case will the USPTO allow an interview?
I. Mary wants to speak to examiner to sound him out
II. Mary wants to call the examiner and ask him stuff about application
III. Grandfather calls examiner about field of art or something and his attorney also wants to be there.
Best answer: Mary is not the inventor or an attorney in the case, so she cannot participate in the interview. As to I: no one can seek an interview to “sound out” the examiner, as an interview is to discuss the substance of the claims and specification.
Q: Sally files patent application. She notices after 1 month of Bob’s patent issuance that his patent is for same invention. What can she do except?
Clarification: The question dates are critical. Sally can not bring Interference proceedings for applications filed on or after March 16, 2013, and will be replaced by “Derivation Proceedings.”
A. File reissue application if applicable reissue error with interference
B. Protest using her patent as prior art
C. Reexam using her patent as prior art
D. Seek interference
E. Something
So for the 1st question, as of today 02/07/2013, would B be the correct answer? (since protest must be done before the allowance or the publication. )
I think interference proceedings will be no longer available for the applications based on the first-inventor-to-file system(after march 16, 2003, and they said these materials will be tested on early April 2003)
Just wanted to clarify because I’m taking the exam on 02/25/13.
For the Mary and Grandfather questions,
None of the choices can be true because the application must be filed before requesting for an interview.
For the obviousness question, where can I find a reference in MPEP that examiner must start with TSM test?
Something is missing in the fact pattern. It appears Sally does not have a patent. So how can she file for reissue?
It would be better for you to actually learn the material and to get busy and reasearch each one and find your own answers in the MPEP. The questions will change on any given exam though the issues may be similar, and it would be a diservice to you to simply provide an answer without the substantive basis for each one.
Hello everyone,
Just got my preliminary pass…there were quite a few repeats especially from 2003 exams. Also a lot of the questions posted above by JW and Christy were on my exam. LOTS of appeal questions and about 7 PCTs, which were fairly basic. I counted 9 questions on the new material (Biliski/KSR, AIA /questions with post 2011 dates) i just skipped those- made a semi-educated guess but didn’t spend too much time on it. Additionally, i looked up about 80% of the questions in the MPEP, so be very familiar with it (and no i did not read it).
I studied for about 6 months and used the 2012 PLI material. I am selling my materials so if anyone is interested in buying please reply to this post.
I took the exam and got a Preliminary Pass today!
I cannot remember specific questions but want to give an update. I got very few repeats. I counted 10. There were a lot of questions on obviousness concept and PCT (specifically what is needed for filing date. Other questions touched upon RCE, 1.131, who can sign a Reissue application, design application (term), patent term extension. For the new material that is currently being tested – PGR, business covered applications, IPR – I pretty much make sure I knew the standards and when these applications can be filed. This was sufficient to answer these questions. If you can’t remember the material, it is easy to look up.
Now how did I study –
I took the PLI prep course – I found this useful to introducing me to the concepts and start getting an understanding of an area that I was never exposed to. What I found very helpful though was the past exams. I took these exams and look up the answer even when I knew the answer. I pretty much was honing my search skill. Even though, I can memorize, I generally forget especially in the first part of the exam since it takes me a while to control my nerves. I also make sure I understood the concept. I used this website to determine which subject areas are frequently tested and then make sure I become familiar with where these sections are in the MPEP. I also used the questions to familiarize myself with unique words that are generally used in the MPEP so I can make my search more efficient and effective. This saved me today! I think I looked up at least 90% of the questions. Generally, I was able to eliminate at least 3 of the answers, then just search the MPEP to determine which of the last two was correct. Hope this is helpful to those of you who are not good memorizers but are good searchers.
Anyway, I have 2012, 3 ring binder and supplements that covers everything that is being tested. If you are interested in the material, all you have to do is pay for shipping and it is yours. Let me know.
Good luck to those who are currently prepping for the test.
Congratulations – -way to go.
Wish me luck – – – –
I’d like to have your binders!
Please email me to finalize.
Many thanks.
Dot
After my initial post about the exam, someone else posted as me answering questions, really weird. I think I chose choice E for the first question about Sally and Bob’s same invention but the question didn’t mention any dates (post or pre 2011) and I forgot what choice E was, the 2nd question I put request for rehearing b/c when I looked up the AIA, it said you can’t appeal, 3rd question the answer was that IB can’t publish IA even if no action after 18 months but can publish if IA enters national stage and US can publish again (found that answer by searching 18 months under PCT section of MPEP), 4th question about obviousness, I chose II (the TSM is mentioned in the KSR supp), 5th question about interviews, I chose III b/c there was something in the interview section of the MPEP about discussing about the relevant field in the area (same phrase as in the question) before patent application, not positive i’m right so you’ll have to look it up. I do agree with whoever posted as me that you definitely need to practice searching the MPEP before the exam. It will really help you with figuring out different search strategies (key words/phrases, dates, etc.) and where things are located in the MPEP. For example, small entity status definitions can be found under 500 which is not obvious (to me at least). Also, I didn’t really study the supplemental materials and had to guess at half of the new questions (post 2011) so I would also recommend practicing searching for stuff in the supplemental materials (inter partes, ex parte, post grant, prior art). For repeat questions, I noticed they changed the answer choice to try to trick people (For example, repeat question about laminate, guy invents laminate with two layers and no layer inb/t, prior art anticipates with laminate with 3 layers, top, middle, bottom, how can he amend claim to avoid this? On my test, the question asked which claim would be anticipated and the correct answer was “comprising of top and bottom layer”) so you have to watch out for that on the exam b/c you’ll have looked at the repeat questions so many times and just pick the answer from memory as a reflex. Hope this helps!
1. Sally and Bob question,
I still think Protest is an invalid action for Sally because Bob’s patent was issued already. Although I have no idea what choice E might be.
2. Inter Partes Review Question
I first thought the answer was B because you can in fact appeal for the final decision of the Board for Inter Partes or Post-grant Reviews (35 USC 141(c)). This was a trap for me. The question is asking if the “Director’s decision on whether to institute Inter Partes Review can be appealed” (the Director decides whether to institute those reviews). The answer is No!
35 U.S.C. 314 Institution of inter partes review. (Sept. 16, 2012)
(d) NO APPEAL.—The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.
3. Only US is designated. Will IB publish after 18 month?
JW is absoulte right. IB won’t publish if the IA ‘only selects US’, because USPTO keep applications confidential. Straight from the MPEP.
1803 Reservations Under the PCT Taken by the United States of America [R-6]
if the United States is the only PCT Contracting State designated in an international application, the international application will not be published by the International Bureau (IB) at 18 months.
…
The application will, however, be published under 35 U.S.C.122 (b) if it enters the national stage in the United States. It will be published again if it is allowed to issue as a United States patent.
4. Obviousness question
7 guidelines of the KSR is not a law. I agree II is the only correct choice there.
5. Interview
I’ve been looking for a statement in MPEP for interviews granted before filing an application. I still can’t find it.
In re 5. Interview…
According to both versions of the fact pattern I’ve seen, the old man has yet to submit an application. Therefore, no interview can be conducted regardless of the circumstances since it’s not “pending before the Office.” 37 CFR 1.133(a). That’s how I view it based on what has been posted…
Also want to mention some more questions that I remembered:
1. question (post 2011) about company A being sued by company B for patent infringement, company A finds publication (or info) that claims in company B’s patent don’t meet written description requirement. what can company A do? choices were, file inter partes as of some date, file ex parte as of some date, file post grant review as of some date, file inter partes as of some date and stay civil action, file ex parte as of some date and stay civil action
2. question about prior art submission, patent is issued to person, later Thor finds German patent that anticipates patent and wants to submit it anonymously, how does he do it?
3. repeat question about company with patent for ABCDE claim, reissue for narrower claims, amends claim to BCDE, what should examiner do? except with variation on the dates
The search function on the exam is similar to when you do Ctrl F on a document. There are two buttons, Find and Find Again, and on the bottom of the screen back and forth arrows to guide through each instance the word is found. Also, on the left side of the screen will be a list of all the the sections and subsections in the title of the MPEP and you can click on the section to go directly to it (this was really helpful to me). You also get a very basic tutorial in the beginning of morning section of the exam which lasts 15 minutes. I did it in 5 minutes and started the exam. You can go through the tutorial as many times as you want in the 15 minutes though.
In case anyone doesn’t know, you can see exactly what the tutorial looks like on the Prometric site:
http://www.prometric.com/demos/uspto/htmldemo/tutpg1.htm
After becoming familiar with this ahead of time, you can use the 15 minutes at the beginning of your test to modify the answer booklet you get to help keep track of what you need to search in the MPEP.
Good call. The action was not brought by the petitioner.
How about this one… you cannot petition for PGR on a patent that did not issue from the first-to-file system… correct? so i’m not sure that any of the choices could be right (if it’s post-2011)? I’m liking all answers accepted. I hate those.
JW,
Thank you for posting your exam questions. I think they will be a great help for my exam on the Feb. 25th.
My answer for the question 1:
I must first know the important dates for this question (after 9mo. from the issue?) but you cannot do IPR or EPR in this case because the publication is neither relevant to 102 nor 103. So the only valid answer left here will be to conduct PGR within 9 mo. from the issue date of B’s patent.
IIbe… question for you… if that fact pattern (question 1) read as challenging the validity of a claim, instead of infringement, would you be looking for an answer that says “None of the above?”
Since information relating to 112 can only be advanced within a PGR, and PGR cannot be instituted if civil action is to challenge validity? Let me know your thoughts. Going in on 2/27.
God I hate the civil action questions.
I really didn’t care much about the fact that B is suing A. According to 35 USC 325 (a)(1), for the PGR to be barred, the ‘petitioner’ must file a civil action before the petition for PGR.
For this case, isn’t A the petitioner? or can either party file a civil action and they are barred for PGR.
I still think the answer would be the same although I am not too confident
Good search information as efficient searching will be the key to success.
What is the syntax if I want to search for 2 non-sequential words at the same time, such as NONSECRET and COMMERCIAL? What if I want to search a phrase, such as: “secret use of a process by another”.
I’ve read some comments from people who have passed saying ” …the only thing you have to know is that you don’t have to know anything…” I take such a comment with a grain of salt, but the implication here is that a mastery of locating the information is more important than committing concepts to memory. I want to be prepared for that part of the exercise. Thanks.
Thanks for the input on the search function. Can you answer a couple of more questions while it is still fresh on your mind?
What is the required syntax in the search box to search for 2 non-sequential words at the same time, such as NONSECRET and COMMERCIAL? Are there any quotation marks needed or the use of the word AND ?
What if I want to search a phrase, such as: “secret use of a process by another”? Just type the whole thing in?
Thanks very much.
JW,
Did you make a grid/answer sheet template for your exam (meaning, did you take notes/write down facts/questions about questions during your exam on paper, or did you just stick to the computer and go back through/review there?)
I made notes on some of the questions on the scrap paper, but I didn’t keep track of the question numbers or anything. For questions that I wasn’t 100% sure of, I clicked the mark button so I could review those questions afterwards. That function is pretty useful on the exam.
Previous poster stated:
.KSR obvious to try – examiner rejected someone’s application under KSR-obvious to try, the examiner should do the following EXCEPT:
a) tell the applicant that he selected from finite numbers …
b) obvious to one of the ordinary skill in the art
c) teaching suggestion motivation
d) Clearly articulate the reason for obvious (my choice)
e) …something aligned with obvious to try rule
I feel like the answer should be teaching suggestion motivation answer C??? Any input?
I don’t think the examiner can exclude TSM.
In MPEP 2014.08 II.A.4.(c), there is a case they refer to 3 Graham Factors (TSM) that was obvious to try.
(Just search the word “try” on MPEP 2014)
I think the answer could be “A”. I think the examiner can’t just say its an obvious choice because there was a finite number of things you can try without relating to the context of the subject mater.
The KSR guidelines states:
that this rationale is only appropriate when there is a recognized problem or need in the art; there are a finite number of identified, predictable solutions to the recognized need or problem; and one of ordinary skill in the art could have pursued these known potential solutions with a reasonable expectation of success.
…
Courts appear to be applying the KSR requirement for ‘‘a finite number of identified predictable solutions’’ in a manner that places particular emphasis on predictability and the reasonable expectations of those of ordinary skill in the art.
…
The Federal Circuit cautioned that an obviousness inquiry based on an obvious to try rationale must always be undertaken in the context of the subject matter in question, ‘‘including the characteristics of the science or technology, its state of advance, the nature of the known choices, the specificity or generality of the prior art, and the predictability of results in the area of interest.’’
Yea, I see what your saying… I think the flaw is in the way the poster reworded the problem… looking at other posts… it seems that it states under obvious to try must articulate all of the following except:
Answer choices
Id say there was probably more detail in actual problem about finite numbers. I found a list of 4 to articulate under obvious to try in the MPEP. TSM isnt explicitily listed but it does say:
“Then, Officepersonnel must articulate the following:
(1) a finding that at the time of the invention, therehad been a recognized problem or need in the art, whichmay include a design need or market pressure to solve aproblem;
(2) a finding that there had been a finite number ofidentified, predictable potential solutions to the recognizedneed or problem;
(3) a finding that one of ordinary skill in the art couldhave pursued the known potential solutions with areasonable expectation of success; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view ofthe facts of the case under consideration, to explain aconclusion of obviousness.”
TSM may be included in 4 but I dont think is necessary to articulate.
Another area I am unsure of… deals with PCT Designating on the US. Will be Published when enter national stage and again when issues per:
Accordingly, under PCT Article 64(3)(b), if the United States is the only PCT Contracting State designated in an international application, the international application will not be published by the International Bureau (IB) at 18 months. Even though the United States Patent and Trademark Office has begun pre-grant publication under 35 U.S.C. 122(b), the United States has not removed its reservation under PCT Article 64(3) because not all United States patent applications are published. See 35 U.S.C. 122(b)(2). The application will, however, be published under 35 U.S.C. 122(b) if it enters the national stage in the United States. It will be published again if it is allowed to issue as a United States patent.
However, I am unsure of whether this applies after the Jan 1, 2004 date where automatic designation of all states???? If it automatically designates everyone would it even be possible to only designate US?
Thanks in advance for the input.
I am going to take the test in early March. I wonder if the MPEP the E8r8 or e8r9?
Thanks!
I ask this because when I clicked into the link for e8r8 at the “source materials” webpage at USPTO, it actually shows e8r9…
Brandon-SA,
Currently, at prometric, the MPEP version used is ER8. This is slated to change in April.
It appears to me that some of the questions relating to the new post-issuance proceedings (e.g., JW 1506 and IIbe 1518 in re JW 1506) need new Subpart A of Part 42. But that’s not included in MPEP Ed. 8 Rev. 8 (or Rev. 9) and it is not included in or promulgated as part of one of the listed source materials. You can figure it out by (i) knowing what you cannot do (i.e., cannot appeal) or (2) search for it and find it in USPTO’s response to comments referencing 42.71 (Comment 65).
Long story short… for anyone that knows, should I (we) expect to not have Subpart A of Part 42 as a reference during the test? I ask b/c I haven’t breezed through any of the response to comment portions of the FR notices. Wondering if I should spend some time doing that?
I need an advice from someone who recently took the exam. I may need to reschedule my exam.
I just did an old exam, 2003 October.
I already have gone through all the repeat question at least once so I felt pretty confident about it knowing the 50% of the questions are repeats.
However I only scored 75%. This is a passing grade but I think i would have gotten much lower score if I didn’t know the repeats.
Assuming the repeats and questions posted here will be at most 30% of the questions on the actual exam, I am very worried (maybe over-worried) about the test which I have less than 40 additional hours to study. I really can’t fail this one, just because I don’t want to study the new First-Inventor-to-File system.
I just want to know your opinion if I will be good to take the exam on 02/25/13 or I should reschedule my exam.
IIbe… I just did those the other night and had the opposite experience (I did all 100 and missed 2 in about 3 hours). Which actually makes me concerned for myself on 2/27 since I’m not sure if I know it, or just know the questions having done SO MANY (I’ve done them all once going back to 1997 as well as the Mambo tests and now I’m starting over). Can you list which Q’s you missed?
Hi IIlbe,
I was in a similar state when, as practice, I retook the Oct. ’03 exam two days before my December date late last year and only scored about a 78%. I was not all that confident going into the actual exam, but somehow did manage to pass. My advice is to keep reviewing both tests from ’03, read through the 69 questions listed on this website, and read the memory dumps from recent test takers. Good luck. You can do it!
Ozzie
Sorry, I posted this in the wrong section before.
Preliminary pass today! Such a relief.
Here is my brain dump. I will try to do more later.
There were around 25 repeats total (out of 100). Since you all know what those are, I will try to put the new stuff here.
Standing in inter parte review: The asked about use of court documents (did not say deposition) such as statements the inventor made in infringement and a criminal matter. I wasted maybe 15 minutes trying hunt down the answer, to no avail. I just guestimated that any statement in an adverse proceding would not be usable.
Inherent function question using a bicycle. Claim is for handle bars, frame, wheels, and spokes. Later the applicant tries to add rubber tires but is rejected as new matter. I went with arguing that the tire is an inherent part of a wheel.
Claim count where answer was 8. All I had to do was count the number of dependent claims and add in multitples when something depended on more than 1 preceding claim.
A question the new post-grant review (up to 9 months after) and inter parte review. Was pretty basic if you know the cutoff.
Another question where you had to know that a party can initiate an inter parte review even though first involved in a civil action in the patent (must be the defendent in the matter- not the one who initiated the civil action) This also took about 10 minutes to find – I initially had the wrong answer
Electronic filing question that wasted some time. I never found the answer but just went with “the person filing an e-signature is certifying that they are in fact that person” (it seemed to good to be true so I wasted time trying to disqualify the other answers)
Tricky one: Applicant gives partial assignment to practitioner and dies. I think the correct answer was the power of attorney is revoked on his death. (Yes, the practitioner can still prosecute the petition because of the partial assignment but, the power of attorney is no longer in force.)
You need to know 102abcdefg and 103 but, don’t bother memorizing. There are many questions regarding these and they are easy to find in the MPEP (you all know where). Just open the MPEP to the section when reading these questions. – I was very happy to see these numbers when I opened a new question because I knew I would not waste a lot of time searching in remote areas of the MPEP.
Know the difference between anticipation and obviousness as they try to trick you by asking an obviousness question and giving an answer having to do with anticipation, and vice-versa.
Oh yes: a 30 months PCT -> national stage question I have not seen. What happens if someone passes through 30 without providing what is needed for the national stage? I initially had the wrong answer but, on review found somewhere that they can petition to revive. Other answers were Give up, you will never get it, and 2 other options involving extensions to file in 31 months (not possible in this case).
Anyway, I welcome your comments telling me I am wrong on something. I really don’t care because I am soooooooo happy I passed. I used Omniprep because I signed up with them last summer (didn’t get anything done for so long due to a move and other things). They are not very up to date but the practice tests and MPEP summary were good. If I had it all to do over again I would probably use wysebridge. I used the list of new and old repeat questions from the free side to create a list of questions to test myself with.
The best thing: Read every sample question here and all of the commentary. AS you read think about who you agree with and who you don’t. Look up the stuff in the MPEP.
Hey everyone! took it this week and passed!!!!!
Background: bio undergrad, start law school this year, I worked barely part-time and decided I had to dedicate this time to something that will pay off way more in the long run… and so took ZERO classes for this exam! I basically self-taught and started in October (although not too seriously). From January until my exam date I spent about 5-8 hours daily studying with my materials which included:
*Smallentity.com (this site had all the exams from 2000-2003 and their explanations for only $30…) It keeps tabs of your scores, and has the Mark feature like the actual exam. I probably took the 2002/2003 exams about 25 times total in both the STUDY mode feature and the TIMED feature. IT IS WORTH IT! ***it also has a MPEP feature, so you can act like you are taking the exam and searching!
FURTHERMORE, I read the latest posts people put here, the STUDY guide feature (reading them and even writing some of them down to make it stick) and the 68 questions at least 3 times (with their comments) to get it completely memorized.
EVEN AFTER ALL THAT…the first half of my exam was extremely difficult. The second half had repeats, but the first half came down to my MPEP search skills that came with studying with the SMALLentity.com program (you can only download it onto 2 computers btw, so choose wisely and DO NOT download it onto your friend’s cpu which uou only have access to once a year….)
THANK YOU ALL SO MUCH, ESPECIALLY THE CREATOR OF THIS SITE and all the many CONTRIBUTORS !! I wish you all the best to pass this exam before the April 2nd changes, and after! United we stand, divided we fall!
Repeats!!!
-POTTER
-japan designating everyone but japan
-147 (claim counting) some people got the one with correct answer 8
-foreigner has duty to disclose
-no chapter2= OK good to go
-velcro
-50.3% and 30.4 % ranges – reject as obvious only 103
-Kim product- make it patentbly distinguishable
– roman numeral question BIOLOGICAL structure substance question: answers II and IV, aka bio not needed to be substantive, and 112 overturn rejection
– no need for a full assignee to correct inventorship with inventor signatures(i.e. add inventor c , delete b etc…)
-electronic coversheet question: if you sign it it means it’s your signature
– person claims benefit, gets rid of it, wants it back- i think you’re outta luck
-missing figure 3 in PROVisional app = must file A NEW PRovisional
-pierre french = 102d
-may17, had to mail with an express label and you get the date (my version wanted you to pic from roman numerals: one had express label and no number on label, one had express label and number but no transmit configuration or something, and i forget the third….)
-something due, you get the date of the LATEST of correction filed and international filing gets the date, and its within the 1-month office extension time to reply….answer was APRIL11…)
-broadening ABCDE-go on as normal bc of 371c
– overcoming rejection-by showing examiner did something wrong
-IDS jurisdiction appeal is under office control
-person turns in IDS late and sends a weak “response” and correct answer= ids is not considered but added to file anyways
– 2 month rule for AA or SSP etc…learn it….i always stumbled on this
-all right about practioner in trouble with law EXCEPT- (answer was “court can ad libi person )
-Piecemeal (all the above!!)
-laurel abbott hardy
-electric-fan-lamp (measurements don’t matter in silent dimensions in disclosure)
-make sure you make claim patentably distinguishable (when trying to overcome rejections, and you cannot figure out the answer, just pick that)
-restriction requirement (learn section inMPEP, I got confused)
-unexamined german documents DON’T count as published documents
-DRAM
I’ve done so many of the questions from 1997 – 2003 that this is the best way I can think of to continue to prepare… here are my comments in re Ramon Glyde 1540. Did not copy all of them here…
“Standing in inter partes review: The asked about use of court documents (did not say deposition) such as statements the inventor made in infringement and a criminal matter. I wasted maybe 15 minutes trying hunt down the answer, to no avail. I just guesstimated that any statement in an adverse proceeding would not be usable.”
This is in reference to Citation of Prior Art in a Patent File Final Rules (77 Fed. Reg. 46615, August 6, 2012) and not about standing in an inter partes review. Standing refers to the patent being available for IPR and estoppel from previous proceedings. This type of information may be cited in patent files under 37 CFR 501(a)(2), and then may be used by the Office after the proceeding has been instituted (i.e., is not cited as part of the petition). Speaks to what the patent owner believes the claim scope to be.
“Inherent function question using a bicycle. Claim is for handle bars, frame, wheels, and spokes. Later the applicant tries to add rubber tires but is rejected as new matter. I went with arguing that the tire is an inherent part of a wheel.”
Inherency is typically in reference to what is not explicit in prior art. I think it’s new matter (unless it’s clear from the drawings). Also check out MPEP 2163.07(a). Strength, rigidity or flexibility, ability to roll, have a diameter, etc. would be inherent to the wheel.
“Another question where you had to know that a party can initiate an inter partes review even though first involved in a civil action in the patent (must be the defendant in the matter- not the one who initiated the civil action) This also took about 10 minutes to find – I initially had the wrong answer.”
Yup yup. 37 CFR 42.201.
“Tricky one: Applicant gives partial assignment to practitioner and dies. I think the correct answer was the power of attorney is revoked on his death. (Yes, the practitioner can still prosecute the petition because of the partial assignment but, the power of attorney is no longer in force.)”
The power of attorney is not revoked since the practitioner has an interest. MPEP 409.01.
“Oh yes: a 30 months PCT -> national stage question I have not seen. What happens if someone passes through 30 without providing what is needed for the national stage? I initially had the wrong answer but, on review found somewhere that they can petition to revive. Other answers were Give up, you will never get it, and 2 other options involving extensions to file in 31 months (not possible in this case).”
Yup yup. MPEP 1893.02. Also 711.
If this is annoying, please someone tell me to stop…
Not tracking with this:
“Another question where you had to know that a party can initiate an inter partes review even though first involved in a civil action in the patent (must be the defendant in the matter- not the one who initiated the civil action) This also took about 10 minutes to find – I initially had the wrong answer.”
Yup yup. 37 CFR 42.201.
— 42.201 seems to be related to Post-Grant review. In addition, the Register seems silent to post-grant review and inter partes review in regards to “a defendent in the matter”. The only rule that mentions this fact pattern is 42.302 (…”has been sued for infringement of the patent”)
Either way, it looks like knowing 42.100-42.107 is important.
jb you are definitely ready.
Thanks for the vote of confidence! But I have the benefit of not being timed… for the moment. I did all the tests going back to 1997 and, once I thought I was ready to roll, 1998 really put me in my place. That’s my best advice to anyone… regardless of what folks say, do ALL of the tests. ALL of them. From what I remember, there are only a handful of questions pre-2000 that are no longer correct based on changes to the rules. Time for filing appeal brief and 112 fourth para. objection vs. rejection are two that come to mind. Plus, it forces you to really use and navigate the MPEP.
Some more:
What can someone who thinks they will become an assignee sign?
Small entity only
DNA question where GCAT sequence is patented for some use and someone else finds is can be used for something else, x. This was similar to a past question. The answer is they can’t patent the same sequence (this is actually an inherent function – even though it was not initially known). They could, however, patent “a method for doing x using GCAT”
I am sorry but my memory is fading on others. The stress of the situation is not conductive to long term memory retention. I really just wanted to give as many of the “new” questions (one’s I have not seen anywhere else) because that was what stressed me out most when preparing. I had a good grasp of all the old questions but the unknown just scared me.
Again, thank you to everyone who contributed here and, particularly, to the people maintaining this site.
Need help on this one folks… I’ve tried to figure it out but I’m at a loss.
“What can someone who thinks they will become an assignee sign?
Small entity only”
I’m taking this to refer to the “obligated assignee.” This person can’t do jack unless he or she filed the application as the “applicant” under new 37 CFR 1.46. It’s either all or nothing?
A partial assignee could sign if the application was made prior to 9/16/2012?
hi everybody, I know maybe this is a stupid question, but still want to make sure: now the exam is NOT testing the new “first inventor to file” rule, right?
I mean, for 102(a), it is still “… before the invention thereof by the applicant for patent”, NOT “before the effective filing date of the claimed invention”, correct?
Thanks a lot.
As far as what I have read from this website. None of the recent takers reported any question regarding the first-inventor-to-file.
But they will be included if you are taking in April.
Mid April correct?
The United States Patent and Trademark Office will be updating the content of the registration examination in early April 2013. The updated examination will include provisions of the Leahy-Smith America Invents Act (AIA) that will take effect March 16, 2013. Specifically, the updated examination will additionally cover the following topics: Derivation Proceedings and First-Inventor-to-File.”
http://www.uspto.gov/ip/boards/oed/exam/index.jsp
This means all the 102 from the old pre-AIA and post AIA will be on the exam, and many of the so called repeat questions will become much less likley to be on the exam, replaced with the new AIA questions now being transitioned into the exam. The exam is going to get tougher by an order of magnitude, and the old questions much less likley to be part of the exam. Good Luck everyone!
thanks a lot…
has anyone looked in the forum section at wysebridge? It looks like they are trying to better organize and keep track of the new AIA questions by breaking each question into separate topics for discussion. This could be a huge help…
THIS IS A SERIOUS POST GUYS!!!!!
I used this website when I prepared for the patent bar and its probably one of the main reasons I passed. THIS WILL COME TO AN END SOON IF PEOPLE DO NOT PROTEST
http://www.uspto.gov/ip/boards/oed/
The USPTO is soon going to start requiring all test takers to agree to a CONFIDENTIALITY AGREEMENT, which IMO is super-unconstitutional (FOIA the living hell out of the PTO once they decide to do this) and will therefore prevent discussion and memory dumps on future material.
Yeah I noticed that too, and it really sucks. I’m not a lawyer though but is it really unconstitutional? In business people sign NDA’s all the time. Joining the USPTO is a privilage so I don’t think they can be stopped from making up whatever rules they want i.e. requiring silence about testing for membership. It is an interesting question if test questions can be gotten through a FOIA request…
I understand they don’t want people memorizing their tests, but they offer little to no guidance/preparation for the exam themselves other than to say “know everything in the MPEP + more..”.
My story is that I’m planning to take the exam on March 29 (made sure to get in the last whack before the final AIA changes take effect). I’m using Patbar to study, which I liked pretty well. Now I’m just taking old tests over and over again and reading up on the new AIA stuff in The Ultimate Patent Bar Study Guide book. It seems okay, but it’s so accessible and digestable that I’m concerned it’s not rigorous or encompasing to get me through the test.
I’d love to hear from others how they knew they were ready for the new stuff (post 2003 changes, AIA, etc.).
Thanks to all for all the great comments on the site. It’d be a crying shame to see the community go poof or at least not have the benefit of people that actually took the exam.
Ben:
I expect the OED will be strictly enforcing their new confidentiality policy. Look at the OED site. They will not allow you to continue with the exam given by Prometrics if you do not agree to the confidentiality agreement at the beginning of the exam! This new OED policy will make use of PTO exam questions in any form and the use of debriefings from recent test takers, which all the bar preparation courses do presently, for development of practice exams for future bar review courses a violation of OED policy. I wonder how these bar exam prep courses will be able to function after this goes into effect? They all use test similators written from old exam qustions and updated through debriefings from their recent students who have just taken the exam, which would be a violation of OED policy after April 2, 2013!
If the OED could copyright the questions they would have done this many years ago, so I expect that under the applicable copyright laws they can not as this is work product of a federal agency and not enforceable under copyright. The better legal strategy would be for the OED to do a rulemaking or issue guidance for applicants and publish this in the Registration Application on this issue and give it the color of law through a regulation that states that disclosure of the questions is a violation of the ethical rules of conduct (declare that this is considered to be cheating on the exam) or promoting the advancement of less than qualified practitioners to be able to be registered, and interfering with the objectivity of the OED evaluation of applicants ability to practice and apply the MPEP competently, which is solid law and fully enforceable under existing ethics rules in the legal community in the various bar associations.
The issue that the OED has is that non-lawyers take this exam. They may not be held to the stricter ethical rules outlined above, at least through their existing bar affiliations. however, the OED has on the books existing ethical standards, and they could likley require this Confidentiality Agreement under their ethical rules that posting old questions interferes with the OED process and is therefore a violation of its ability to properly evaluate the competency of applicants. They can assert that position now as per their mission and regulations. If they put out a rulemaking and supporting MPEP guidance in the Registration rules this would become as much a requirement for admission to the patent bar as the educational and charecter and fitness requirements long a part of obtaining admission to the patent bar.
I would say that the OED can and will be able to enforce this new requirement, and posting on this site would be a liability for any future applicant for registration.
The truth is that if one does not know this material on their own, they will be eventually subject to OED complaints anyway and loose their registration number. Its probably a positive development to keep those who are less than competent out of the patent bar in the first place.
1) Section 105 of the copyright act prevents government from having copyright in their work
2) FOIA prevents administrative agencies like USPTO from withholding public information from the public. No way is this legal.
FOIA exceptions would apply in this type of request, as the questions are not public information, and they are part of the adjudicatory process by OED. I have gone to federal district court seeking agency information using a FOIA request where an agency is on the other side of the release…certainly OED would likley be able to use, among other defenses, a work product defense as the questions are part of the discretionary process of vetting applicants for admisssion. If you believe this is a done deal to get these questions under the FOIA, please give it your best shot.
The following are the published USPTO FOIA Exemptions:
Categories of Exempt Information
Exemption One: Records which are specifically authorized under criteria established by an Executive Order to be kept secret in interest of national defense or foreign policy and are in fact properly classified pursuant to such Executive Order.
Exemption Two: Records related solely to the internal personnel rules and practices of the USPTO.
Exemption Three: Records specifically exempted from disclosure by statute, provided that such statue
Requires that the matters be withheld from the public in such a manner as to leave no discretion on the issues; or
Establishes particular criteria for withholding or refers to particular types of matters to be withheld.
Exemption Four: Trade secrets and commercial or financial information obtained from a person that is privileged or confidential.
Exemption Five: Interagency or intra-agency memoranda or letters which would not be available by law to a private party in litigation with the USPTO.
Exemption Six: Personnel, medical, and similar files (including financial files) the disclosure of which would constitute a clearly unwarranted invasion of personal privacy.
Exemption Seven: Records compiled for law enforcement purposes, but only to the extent that the production of such law enforcement records:
Could reasonably be expected to interfere with enforcement proceedings;
Would deprive a person of a right to a fair trial or an impartial adjudication;
Could reasonably be expected to constitute an unwarranted invasion of personal privacy;
Could reasonably be expected to disclose the identity of a confidential source, including a state, local, or foreign agency or authority or any private institution which furnished records on a confidential basis;
Would disclose techniques and procedures for law enforcement investigations or prosecutions, or would disclose guidelines for law enforcement investigations or prosecutions if such disclosure could reasonably be expected to risk circumvention of the law; or
Could reasonably be expected to endanger the life or physical safety of any individual.
Exemption Eight: Records that are contained in or related to examination, operating, or condition reports prepared by, on behalf of, or for use of an agency responsible for the regulation or supervision of financial institutions.
Exemption Nine: Geological and geophysical information and data, including maps, concerning wells.
You are clearly an OED Troll trying to scare off anyone from posting further questions from the exam on this site. Please disregard his postings.
Studious, I am not with any agency, just another applicant in the private sector preparing to pass the exam. Each applicant to this exam will have to make their own determination as to what is right or wrong. If I fail my exam, I plan to review the exam questions I miss within 90 days by personal appointment at the PTO, as you and any other applicant can do if they do not pass, and use that process to study what I need the next time I take it, rather than wasting my time filing a FOIA. We all need to remember there is an ethical responsibility that comes with this registration process that should be taken seriously.
I would appreciate help in understanding this concept:
If a PCT is filed after Nov29, 2000 (say for example Nov 30, 2000)
it is not in English and
it does not designate US
it does not have a 102(e) date.
So if the examiner were to use this piece item as prior art to reject a claim, then what date will be used?
MPEP 706.02(f).
The reference may be applied under 35 U.S.C. 102(a) or (b) as of its publication date, or 35 U.S.C. 102(e) as of any later U.S. filing date of an application that properly claimed the benefit of the international application (if applicable).
Thanks jb.
I did not phrase my question correctly. However from your reply it is clear. There can be a 102(a), (b) or (e) rejection – the dates will be using a) publication date, b) patent issue date and (c) US filing date. Given the bare minimum info, there will not be any 102(e) rejection since there is no US filing, no US designation and it is not in English.
juan
Passed! I still cannot believe!
1. Prometric Testing Center: I am not sure if other testing centers have better equipment but BEWARE! The screen resolution for the testing center is TERRIBLE! I could barely read the MPEP during the actual test. I was so used to my HD screen.
2. Study the repeats and current questions:They are GIFTS! I could not have completed the exam without those questions. If you can compile about 200 questions posted here and fully understand their explanation, then I think you are in a good shape.
3. My memory dump: I have very short memory but I will try.
There are 2 versions of ABCDE reissue question. (I was able to catch this because I had both of them in the same session. One is the 10.03.02p question and the other one has the patent date on 2009. In here the applicants sign the broadening claims on the 2 year anniversary and hand deliver it 3 days later. I chose it was untimely unlike the answer from the repeat. (and some reason relating broadening claims should be filed within 2 years, but you should check)
The old man’s daughter interviewing question actually filed an application and the question asked which of the following statement true. (I mentioned earlier that you cannot have interview before filing an application)
I. you cannot sound out an examiner
II. daughter request for interview
III. Old man’s practitioner request for interview
I chose I & III
A lot of repeats as past test takers mentioned here. Not so much on PCT maybe less than 10% and most of them from repeats and here.
For AIA, they heavily ask you regarding PGR and IPR.
One question also involved in pre-issuance.
Fact pattern: a published application. received first office action on the 6th month. you represent a 3rd party who wants to submit pre-issuance submission. question asks what you need for submitting via EFS and when can you submit. Answer: Identifying the document, a concise description, a statement, translation (if the reference is not in English), and the fee. I can’t remember the date.
A lot of appeal questions that I really cannot remember the fact patterns. (and they were the most difficult part of my exam. Do a thorough review on them!)
Congrats on the pass! What notice on the current exam materials covers pre-issuance submissions? I’ve found -a- notice that describes them, but it doesn’t seem to be one of the 9 items they are currently testing.
Ignore that…I went to an old link on the USPTO website that hadn’t been updated with the new items.
Maybe a stupid question-
Is the KSR stuff in the MPEP 8r8 version now used in the test? It is in the 8r9 version but I did not find any in the 8r8 version (by searching “KSR”). Bilski is in it though.
During the exam, in addition to the MPEP, they also give the guidelines for KSR and Bilski and other new rules such as AIA
Yesterday I passed the test. This is a great site to learn lot of stuff in addition to PLI material.
I have PLI course material: 3-ring binder, all books (unmarked), cd and DVDs and Patware 9.0. They are available at a price. If interested contact me at josyulav@gmail.com
A quick question for what will happen on the test day – Are the morning and afternoon sections indenpendent from each other?
I mean – I know I can mark some questions to check back later during the test. Do I finish everything in the morning or I can check back the questions in the morning section in the afternoon?
Thanks!
brandon-
Here is what you will do on test day:
-Arrive at Prometric. Stuff all your things in one of the lockers (including your watch and anything in your pockets..they must be completely empty) and/or hang your jacket. Keep your ID out and the key you get from the lock on the locker you choose.
-Check in (and show your ID)
-Get called to a second spot, they again check your ID, take a quick digital pic and have you sign in, check your pockets and wave the metal detector wand over you. I’ve seen them have people pull up pant legs and long sleeves and check. I had to lift up my untucked t-shirt once in a previous try. They give you two sharpened pencils and a scrap book (basically a larger version of a blue book). Ask for earplugs if you want them. They usually have large ear muffs in the test room that you could wear as well.
-They will get the program started and then seat you. The starting screen says something like “click OK to start the tutorial”. If you don’t click it it rolls into the tutorial in a minute or two automatically.
This is the online version of the pre-test tutorial that Prometric has:
https://www.prometric.com/demos/uspto/starthere.htm. It matches what you would be able to see on test day.
-You can choose to start the exam at any point during the 15 minute tutorial. It is best to make your answer sheet during this time. I used the mouse pad as a straight edge and set up a sheet with a column about 3/4″ wide on the left, then another the same width numbered. (You can only fit 15-20 on the first page and then 25-30 on the 2nd and subsequent pages). I only used four of the eight pages in the book. If you need more, You can get another book (but you have to turn in your first one). I drew a horizontal line after every fifth number to help me keep things straight. Then I wrote out A B C D E for each, the one more vertical line after E for your notes area. I did this for all 100 questions during the 15 min tutorial.
If the question was a repeat I would mark the answer on the computer, then circle the corresponding letter on my sheet and then mark it with a star in the left column to know that it was 100% right and did not need to be reviewed (and of course, I did not click the “Mark” button on the test program).
For other questions, I would cross out any answers I knew immediately were wrong, make a few notes on the subject of the question. and then usually make a mark to gauge how sure/unsure I was. I put a small ? in the left column if I had no clue. I always marked some answer though, just to be safe in the event I ran short on time. Then I would click the “Mark” button on the screen.
-When the test starts you get the first 50 questions in the AM session and can move freely between all 50 during that time. A timer is counting down in the uppe right of the window. You cannot come back to the AM session after it is over. I went through and answered all 50 and then went back to dig in on my MPEP searches. I had about 1.5 hours to search in the AM session (and ended up being a little tight on time).
-As soon as your timer hits zero (or you end it early) a 60 minute timer starts for your lunch break. Once the timer hits zero the PM session will start ticking down from 3 hours – even if you are not there.
-The PM session starts with question 1 again (really 51). Again, you can move freely between these 50 questions. Again, I answered all 50 first then searched. I had my first run of answers done in one hour and had two hours to search in the PM session (many more repeats).
-You can take breaks as needed (bathroom, etc.) during the test but your three hour timer does not stop. You need to bring your ID out with you and sign out each time you leave the room. If you need new pencils (shaper) raise your hands and someone will come in to check on you.
-When you are done there are about 10 survey questions you have to answer (e.g. “Did you have to show your ID to the staff?”, “Was the staff friendly/helpful”, etc.). Very annoying! You click END on the survey and then the screen puts up a box that says Processing or something like that. You wait 15-20 seconds or so and then you get your screen. If you fail, it says the percent correct you answered. If you pass it says this:
“Preliminary test results show that you passed the U.S. Patent and Trademark Office Registration Examination for Patent Attorneys and Patent Agents. You will receive your official examination results from the USPTO in due course.”
Make sure you click the END button at the bottom of the screen. The Prometric peeps cannot print your test sheet for you if you do not do that.
Good luck!
Thank you so much, Guy, for the detailed info!!!
Have a question about prioritized exam vs “make special”
I saw people posted a new AIA question – 65-year-old man dying in hospital wants to get a patent – what the difference between filing a petition making special and under Track 1? My understanding is there is also a twelve-month goal for cases made special. Are these two options independent or dependent on each other?
There is nothing anyone posting here can do about 1) the new AIA exam questions 2) the new confidentiality agreement that will become a legal prerequisite to taking the exam, except study, take the exam, and move on without violating any ethical rules by posting on this or any other site.
Wrong. You can ignore the CA and continue to post to help your fellow future practitioners. The CA will more than likely be found to be unenforceable after being challenged by PRG, PLI, etc. in District Court.
Your point is well noted.
Hopefully there will be a judicial review funded by someone with deep pockets. Once PRG, PLI, OmniPrep, (which on their web site claims that they have course development staff that “take the exam” weekly to provide their own course updates), and the myriad other bar review courses prevail in court with a final decsion that the OED’s Confidentiality Agreement as a condition precedent to taking the exam is both unlawful and unenforceable, one may assume posting on this site is also both lawful and compliant with patent office rules and regulations. Absent that event, at least for me, and perhaps others, posting in defiance of a stated patent office policy and violating a contract to comply with this policy to take the exam is more risk than its worth in being a good “net citizen” and posting questions on the blogs.
All that being said, my question is whether or not it makes sense to work so hard passing this exam and then upon passing getting a job as a patent agent/attoreny only to be thrown under the bus by an alledged ethics violation!?! I prefer NOT to become defendant “A” in a test case for a new wave of patent office policy enforcment by posting on a web site. I have a family to feed and bills to pay….which is why I am taking this exam!
Actually, Wilson has more validity to his posts than anything you have provided regarding this issue, studious.
Also, telling people to simply ignore a confidentiality agreement signed with a federal agency is very irresponsible, and you are inviting people to subject themselves to ethics violations. How about you provide some convincing arguments to support your stance instead of telling people to violate confidentiality agreements and calling people who are discussing the issue objectively “trolls” .
The reality is, at this time the OED is likely well within its powers to require a confidentiality agreement. There is no indication that doing so would violate any rights requiring an increased level of scrutiny. Most likely, the persons challenging the agreement will bear a heavy burden in proving that the OED does not have a legitimate interest in protecting its test questions (especially considering it is an “open book” test).
I received my preliminary pass earlier this week. Here is what I saw that I can recall:
-Smith DRAM
-ABC and XYZ corp
-Biological Materials
-Electric fan: different sized saucer
-Crossing the road
-Claim counting Ben 147
-Laurel, Abbot & Hardy
-Inventor Beck 150 degrees
-Spanish Phone
-Tommie & Jo
-Federal Court Decisions Binding
-A question about submitted tables on CD-ROM variant
-Lip gloss
-Chemical claim: relieve headaches
-Chemical compound for depression
-Indefinite claim using “high” (variant)
-Terminal disclaimer: who may sign? (variant)
-Piecemeal
-What does don’t require signatures? (variant)
-Small entity 50% reduction
-Late IDS when client knew of PA all along
-Claim to make electrical device heating a base
-Oath with wrong address (variant)
-Continuation app basis (variant)
-Patentable business method
-CoC clean copy
-Combination/Subcombination
-Toy horse (I had this question in each session, AM and PM!)
-Lost application at PTO (variant)
-Thermos 180 degree
Other questions I had generally:
-I had a number of the same questions that JW and llbe above had so check out those posts.
-two questions about examiner interviews.
-two questions about death of inventor.
-6-8 PCT questions.
-5-6 appeals questions.
-two questions about protests.
-a question about rapidity.
-7-8 AIA questions. I answered them all, but did not look any of them up. They are still beta at this point. (tick tock tick tock…!)
-The only supplemental material I looked at was the KSR doc…once.
-two questions on restriction
-a few questions about use of 131 affidavits
-a couple of questions about 112 written description and enablement
Thanks to everyone that contributes to this forum. Without the collective discussion here, this test would be much, much harder for most, if not all, of us.
The Wysebridge site (by Bfusion) made all the difference. The frequency charts are so helpful. Not knowing some of the repeat questions out there could make or break it for you. Even with some repeats (about 25 total) I was looking up sections of the MPEP furiously for the rest of my time. This is the best resource I have found and I highly recommend it.
Good luck to all and get your test in before 4/2 if you can!
Passed! This website is extremely helpful!! And thank you everyone for your input!
30-40% are old questions, 20% new questions are just so easy to analyze, guess or check quickly. I had 10-12 very new questions that I need to check the supplemental materials which might just be beta questions (I tried to check and search for 3 minutes and then give up and just guess the answer).
I received my application confirmation at the end of January, which provide a list of source materials(the supplemental) and said the questions will appear on the updated registration examination beginning on or about April 2, 2013. Guessing the “beta questions” will become real questions then??
Moe,
I believe that OED will enforce the new confidentiality agreement.
It would not surprise me if they take action to enjoin sites and bar examination prep companies to prevent them from republishing examination questions.
Unfortunately, that may be the case. Hopefully if any action is taken, OED will work with sites and the prep companies to allow information to continue to be shared, so long as it is not verbatim.
Being that the USPTO is self-funded, I do not see them being too aggressive in searching out individual contributors. However, only time will tell how much resources they will dedicate to enforcement.
So I am a newb, I am hearing the exam changes around April 2 so does that mean if i take the exam on April 2 the exam will be harder ? Or do the changes come into effect starting on April 3?
The official word is, “on or about April 2, 2013,” which leaves some room for play.
That being said, questions regarding the latest round of materials will likely be in beta form for at least the first few weeks, until they are vetted.
Dazed&Confused,
Welcome (firstly)…and, yes…there will be some fairly major changes coming down the line in April. While the USPTO has published and stated that April 2nd the exam will change (meaning, the material that has been in “beta test” mode / will most likely become part of the actual scored exam), it’s best to say it’s a wait and see game.
That being said though, since confidentiality agreements will have t be signed by each test-taker (starting in April) it will be much harder to determine just WHAT’s been changed since well, there could be potential breaches of said agreement. THUS, what’s really known is 1) there will be new questions covering new material and 2) the version of the MPEP offered during the exam will be updated to ER9 (the “newest” version of the MPEP).
Best thing to do (if you just started studying) is wait until the end of April or early May, to give yourself time to study and to see what types (if it’s at all possible) of changes/updates are on the exam.
If you have any questions, please feel free to contact me (bfusion.uspto@gmail.com).
I’m also working (at wysebridge.com) to keep updates on the material, the questions being asked now covering the new material, and working on material for post April changes.
Finally passed today!!!
This site is truly invaluable. Did PLI as well as OmniPrep, but it’s the concepts and discussions here which will help you learn why the answers are right or wrong. Had I had the extra money, I’d have just signed up with Bfusion’s site–seems like the guy gets the gist of what’s tested and how to TAKE this exam as opposed to simply learning a ton of esoteric material.
Put in some serious hours–at least 500 over the last 3 months. If you suck at multiple choice questions like I do, then you’re going to REALLY have to put in some work.
Several repeats. Among them were:
Potter
Obviousness
Japan 45 Days
Bloc Synthetic Z
Beck 150 Degrees
Tommie and Jo
Toy Plane With Foil Wings
Lip Gloss
Best Mode
Fan + Lamp
Missing Parts PCT
Indefinite Claim Using “High.”
Suspended Practitioner
Late IDS When Applicant Knew
Combination/Subcombination
Oath With Wrong Address
Small Entity 50% Reduction
CofC Clean Copy
Toy Horse
Encoded Signal
Living and Inanimate
Leather Straps
Moondust
Dead Inventor
Interview
Prior Art Under 102(d)
Advisory Action
Trade Secret
New Matter
PCT 102(e) date
Question about petition to make special for soil improvement.
Know anticipation vs. obviousness. They posed a number of questions mixing up 102 vs. 103 rejections.
In addition, there were a number of Phase II AIA questions. Know 9 months for post grant review. Know threshold for Inter Partes Review.
Supplemental Examination question involving characters from “Animal House.” LOL
1 Bilski abstract idea question.
Paragraph 6 of 112 for computer implemented claims (new 112 guidelines).
No KSR questions, but I think that was a fluke. Just had to know the basics of obviousness and prima facie case.
Thank you to everyone who has posted here and has made this place such a great resource.
Oh yeah, there were at least 10 appeal/final rejection questions (allowance after abandonment was one). I’m just too scatterbrained to recall them. However, know the new appeals guidelines as well as the basics.
OHY,
Many Congrats to you and your hard work/dedication to studying! Thanks for the compliment and feedback as well. Greatly appreciated…as that’s what we’re trying to do..just make studying for this exam as efficient as possible for people.
@OhHellYeah!!!
Congrats on passing and also for sharing with the rest of us. Can you tell me more about the “leather strap” question? I’ve seen others mention it, but I havent been able to find the actual question/answer? Thanks
Hey Gotta Try,
It was a question that I had never really explored. I just saw it mentioned on this giant thread.
The leather straps question was about an application with a single claim directed to a handle with six leather straps stapled to one end of the handle (no method of use). The prior art was a French patent for a martinet (a cat o nine tails type of whip). Either way, there was no claim language in the prior art–only the drawing. Because the drawing taught every element of the claim, I’m pretty sure that answered that it was fully anticipated (sorry if my memory’s a little foggy, but I had a couple of glasses of wine last night).
Best advice is to go through each of the questions and concepts threads and really look at the discussions. I didn’t post here when I was studying, but I’ll be happy to post what insights I gained over the months now.
Hope that helps a little bit, and best wishes.
Wanted to mention that I started using the Wysebridge Pro services about 1w ago, and am quite happy with the content and added value.
Some background on me: BS & MS in EE, worked in R&D for 25+ years, and have just 14 months ago switched gears in my career and have taken a job in a corporate legal dept as an IP technologist. I took the PRG live course last summer, but work and life got in the way, and I didn’t have a chance to study and use their exam simulator much before my rights expired. A couple months ago, I started listening to 2006 PLI lectures. (Hello, John White here . . . ) I’m probably only about 1/3 of the way through old 2002/2003 exam questions, having worked through those at a slow pace off and on for a couple months now. With exam day on 3/30, I only have about 100 quality hrs left to study, so I was looking for a boost.
The Wysebridge Pro offerings that have been useful for me so far are:
– The tips/tricks in the Pro study materials. I think much of it can be found here, but it was taking me a lot of valuable study time to sort and compile them. Wysebridge does that for you.
– Question frequency chart. I think it will be helpful to use this to set my practice priorities
– Pro Chapter Summaries. John White was the best at helping me learn the basic concepts (I personally find him easier to follow than Paul Gardner), but the Pro chapter summaries so far seem to be putting everything in the right depth I need to know in one, easily reviewable spot. I’m basically reading a chapter summary and immediately taking on chapter-focused questions in one sitting. My percentages have gone from <50% to 80+% using this process.
– Exam simulator. Wysebridge's simulator is much more useful for me than the PRG simulator. You can choose to have questions administered to you sliced several different ways: by chapter, original old exam, frequently asked, random, and in either 50 Q Exam mode or study mode.
There's probably more that I'll discover, but for now, that's what's working for me now.
Of course, this site is awesome! When I read your posts, I don't feel so alone. Thanks for all the encouragement and info! I hope to give back when it's my turn!
Hi Dave,
Nice to see another double e coming out of research. I’m trying to get in just before phase III as well.
Have you (or anyone?) found any sample questions on:
KSR, Bilski, AIA (up to phase II) or I guess any of these supplemental material topics?
http://www.uspto.gov/ip/boards/oed/aia_regexamsourcematerial.jsp
I’ve heard the online PLI course has some practice test material on these latest topics but I’m not sure whether it’s worth the 2k at this stage.
It seems the “counterfeit” copies of PLI are lacking on the new materials
http://www.ipwatchdog.com/2012/05/08/buyer-beware-counterfeit-patent-bar-review-courses-on-ebay/id=24719/
HI All,
I am planning to take the exam in May, I have an old version (from last year) of PLI. Does anyone know how to supplement for the new material that will be added by April 2nd? I cannot afford a lot of money so your help is appreciated. Thanks
Hi, Kansas_Man,
There are a few options out there for you, and what you decide to do could depend on a few factors, the main one being $$. If you have unlimited resources, you’ll probably get the most amount (in terms of number of reading pages & material) from one of the larger companies (because they have the human resources to churn out material). That being said, you also have to decide if you want all that material, when you could be better off with a streamlined, focused review of materials. A lot depends on the person and $$, and time investment.
We’re working to keep our question databases and review materials up-to date with the new material, the changes to the exam, on top of the other resources provided (question simulators and databases, study materials, personal feedback and input, etc). All this is over on the new Wysebridge site. We do allow free access to a lot of materials, including the blog and forum section (where we’re starting to discuss new questions and material), but the majority of material for the AIA (and additional resources) are part of the PRO access.
http://www.wysebridge.com
Hope that helps!
Hey all,
Just wanted to give people a heads up that we’ve moved our blog. All our weekly/bi-weekly posts, comments on material, study tips, etc, for the patent bar exam, will now be posted on the Wysebridge parent site:
http://www.wysebridge.com/blog
All the best as you study!
Hey everyone:
If you’re looking for an affordable live patent bar review, check out U Street Prep! We’re a new prep service offering live classroom instruction at our headquarters in DC and everywhere online through our interactive eLearning platform. Our 30 hour course was designed specifically for the post-AIA exam by a team of experienced patent practitioners. We’ve gone to great lengths to make studying for the patent bar simple, intuitive, and practice-based so you can rest assured you will be prepared come exam day.
Our next class starts March 30th. See our website for our course curriculum, a sample of our study materials, and free online practice quizzes.
http://www.ustreetprep.com
The program costs $495, but we’re currently offering a discount to users of this forum. Use the promo code “MyPatBar” when you sign up and receive an additional $100 OFF.
Phil
Director, U Street Prep
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Hi all,
Just a reminder that Yesterday (March 16th), All of us entered a new era as it were in patent law. The US went from a first to invent to a “first to file” landscape. We’ll be posting updates and rule changes and briefs on the other site at Wysebridge, (http://www.wysebridge.com/index.asp), but wanted to post here as well.
Also, we’re unrolling some changes to the site and updates as well to try and 1) make the site accessible to more people and 2) better meet your needs studying.
Hope everyone’s studying is coming along well. As always, if you have any questions, please feel free to ask/shoot an email (bfusion.uspto@gmail.com).
Need some advise. I sent my application late February in the hope of getting one last shot at the exam prior to the big change happening on 4/3. Unfortunately, I just received a notice of incompleteness from the USTPO which blows any chance I had at taking the exam prior to 4/3 out of the water.
Is the new material going to appear on 4/3 all at once or can we expect a beta test phase such as the one that took place back in September of last year? Obviously this changes everything, more material to study going forward. Any advise as to what material I should be focusing now will be greatly appreciated.
gottaTry,
Keep in mind…that as of yesterday, first to file went into effect. All things equal, it’s probably fair to assume that over the next few weeks “first to file” questions will show up on the exam (which will probably be beta).
sorry about the incomplete response btw…
Thanks Bfusion.
I’m sending back my application first thing tomorrow and hopefully when I take the exam, the new “first to file” questions will still be in beta phase.
GottaTry,
That’s what I’m thinking…that for the next month or so, they’ll really start testing first to file questions, and most likely all the “beta” questions we’ve been seeing will start to be scored/tested. We won’t really know for sure though until April 2nd, and even then details will be fuzzy for a while as far as the impact on the exam.
Hope everything pans out with the resubmission of the application!
To rule out an infringement case, is it enough to study the patented claims or I should make sure that the patented claims are sufficiently supported by the related description?
How we can evaulte product by selection?
Thank you
Hello all,
After taking the 1999 and 2000 tests, I noticed that they are very different from the 2001-2003 tests in that there are a pile of hard questions with huge fact patterns, proper claiming, and also ones that test antecedent basis. Are those not tested as much anymore? Any thoughts?
Ben,
After studying and analyzing which questions have been repeated, and when, I found that the majority of questions pre-2002 over the past year have not been repeated. There are a few from older exams (pre-2002) that show up now and then, but in general, most are either new or close variants of questions from 2002-2003.
One of the things I compiled is a frequency spreadsheet of every question, when it’s shown up on an exam, how often it’s shown up, and any variations of said question. It’s one of the study resources I’m making available to people to hopefully help them focus their preparation.
Can you provide a link to this frequency spreadsheet?
Hi, Repeater,
The frequency chart is part of the Wysebridge PRO package (http://www.wysebridge.com/), along with a bunch of other materials…
Got my preliminary pass late last week. What I had done was copy all of the answers from the 2001-2003 exams into a Word document, and then did a search of the different MPEP chapters that showed up in the explanations of those answers (e.g. 706, 502, etc.). I then put this distribution into a spreadsheet and identified the heavy hitters. I can tell you that the 4 biggest players were 706.02, 706.03, 608.01, and 706.07. 2100 had more than any other chapter, and they were spread all over the board. This was a couple of hours of work but I think it was worth it.
I put in about 200 hours since the beginning of the year. As stated, have all the old exams (at least 2002-2003) down cold, most importantly why the answers are correct and not just memorizing the answer. Know the subject matter for the different topics and where to find it in MPEP. I also used “The Ultimate Patent Bar Study Guide” by John Watts – read that 3 or 4 times and it provided a very good base and was a good reference. I avoided sites where the masses gathered and conjectured on what answers might be right or wrong to which questions.
Probably a dozen verbatim repeats from earlier tests. There were also several where the answers were modified from familiar questions – be careful. The rest was random. Hard to know what will happen on and after April 2, 2013.
I’ll sell my “The Ultimate Patent Bar Study Guide” book if anyone is interested for $15.00 – I’ll pay the shipping. Paperback, good shape, no writing, but you can see that it has been read 3 or 4 times and referenced. Good luck to all.
HELP! I’m taking the exam tomorrow… 36 hours from now….I’m not really ready but it got a last minute date at prometric and thought I would try it before April 2.
Can someone please post the questions or links to the most recent questions that are mentioned by the recent testtakers, specificaily: TOY HORSE, OATH WRONG ADDRESS, MISSING PARTS PCT. I can’t find these anywhere on this site.
Also…. I’m weakest on PCT. I’ve studied PLI materials but they don’t seem that great on this topic and I don’t have time to read the chapter. Is there an intro to 1800 that is CLEAR and valuable? or is there a summary someone can recommend with all the main exam points.
My profound gratitude for your help and I promise to brain dump everything I see after I take the exam.
THANK YOU!
Marty,
Your MPEP distribution spreadsheet is a winner. Those sections show up in alot of questions.
Walt
MO
Damn Son… I’m taking it on the 29th. You might try the wysebridge site. Look at his 1800 summary.
Walt
I’m taking it on the 29th too! Good luck to us both!
MO
I would also casually read through the headings of 1800 in the MPEP. Doesn’t take too long and will help you a lot.
Walt
Ben,
Good luck man. I’ve been going at it straight the last 5 days.
Walt
How’d it go MO?
Walt
Passed yesterday. I can’t remember all of the repeats, but there were a lot. Good luck to those taking it today.
Hey guys!
thanks for all the help, I definitely agree with Marty above, John Watts study guide is a great thing, it’s cheap but spot on, especially on a couple of new AIA materials. On my test, the first part was incredibly hard, lots of obscure questions, although some of those I found verbatim by searching the key words… yeah… remember to click open instead of hitting enter, I think I messed that up a few times. Lots of poorly worded 112 questions, seriously, some were almost unreadable. I DO NOT recommend reading the MPEP. I never read a single statute or section or anything, and it was NOT needed. Do the repeat questions and the 2002-2003 questions. One question that sticks out and still bothers me, is what the h*** is an Outstanding action? like is a notice of Allowance an outstanding action? It kinda tripped me. Another was, whether if you acquire a company that counts as an estoppel in a future inter-partes reexam. BTW, PGR and inter-partes were easy, while KSR was poorly worded, and no Bilski on mine… I don’t think there were any new appeal questions, or maybe did not spot them so I answered all Appeal questions under old rules…. Basically, my advice is go through the whole thing as fast as you can answering the Gimmes and marking the hard ones, then go through again searching the MPEP for that. Cause thats what I did in the afternoon part and it all went so much better. And they don’t let you take your medicine into the room… that seriously p*****ed me. Also, happy to sell my old 2010 PLI stuff that has notecards and some new materials highlighted and attached and also with the John Watts book. Worked for me just fine. Just post your email addy and I’ll get back to ya.
Hi all,
I’ve got a preliminary pass last week. It was my second time to take the exam but thankfully I was well prepared this time. I used PLI materials and this web site. I listed up what I saw on my exam and my experience of studying for this exam and during exam.
PCT (International Application filing dates and contents) – a lot
RCE
Ex parte Appeal questions – a lot. need to know what and when to submit
102(a), (b), (c), (d), (e) – as multiple choices
102(e)/103(c) – I saw twice
112 para 1
Assignment
Oath/ Declaration – supplemental oath for inventorship
Application data sheet or Certificate of Correction for typo error on inventor’s address
Extensions for appeal brief (2 mons + 5 mons extension)
Interview – after RCE
Swearing back/affidavit – what to submit (argument + evidence)
Markush group claiming – claiming language
Inventorship correction – overlap with supplemental oath
Refund of fees – for small entity after filed as large entity
103(a) and KSR/Graham factors
Design patent – drawings
Claiming priority – international app / PCT app
Power of Attorney -inventor deceased but assigned
Facsimile and Mail certificate, Express mail – RCE, CPA, International App applicability
Restriction requirement – elect with traverse or without traverse
Double patenting – statutory and obviousness
Patent term adjustment – when RCE filed
Reissue
Accelerated exam – what to submit
I saw at least 10 questions from repeat and new questions, such as Toy Plane, Amending abstract-PCT, missing parts – PCT, electric fan, reissue (variant of Tommie and Jo), and suspended practitioner, so I definitely recommend doing those questions. I only practiced two whole exam, 2003 April & Oct tests but I did all the repeats and new questions on this website. Very helpful.
I also had a couple of Ex parte Reexam, Inter parte Reexam, Inter parte Review, and Post Grant Review mixed questions, and a citation of prior art / third party submission question. Those questions are really straight forward. What you need to know is what are the differences between those proceeding, like no appeal right to third party (ex parte reexam) v. any one can appeal (inter parte review and post grant review) etc.
I am a person who needs to make flash cards to organize my memory, so I did that. I did not specifically try to memorize the flash cards but I ended up being familiarized with not only concepts but MPEP numbers and it was very helpful on the exam day when I looked up MPEP.
At the beginning of the exam, during 15 mins instruction time, I wrote down MPEP sections which is important, and also wrote a quick outline of AIA Phase II laws. I knew from my previous exam experience that the supplemental materials will not be helpful to find actual sections during exam, so I tried to memorize only this part. My quick outline worked very well.
I did not read 2100 thoroughly but I was familiarized enough to know where to go and find the answer. It might be because I have been working at an IP law firm and I have worked on at least 20-30 Office Actions though. But for people who have not seen actual office actions, I believe that knowing where to go on 2100 will be helpful.
I got so panicked when I had 2-3 questions in a row I had no idea during exam. What I did is to skip those and find easier questions to answer. After I felt comfortable enough, I went back to those skipped questions and surprisingly it was not that hard any more.
That’s all I have. Thanks to all the people who have contributed to this web site. And best of luck to new test takers!
Hey all,
Prelim pass today! My head is a fog after the test but here’s what I have to offer:
There were repeats that were from the 2002-2003 exams, but almost none from the “new” questions. I’d have to go back through the exams to jog my memory on the particulars but that’s not happening today. Seems like a lot of AIA questions ~10-15. One in particular had a fact patern that was about instituting a PGR or IPR but what really tossed me was that there was a -none of the above-. The filing date for the application was 2009, so I picked none because I think it was all prior to the date of implementation. Scary question. Also, they still have a sense of humor at the PTO. One other AIA question used Bruce Wayne, Commissioner Gordon, Bruce Banner and Jonah Jameson as the principals and had to do with infringement on stretchable pants for Banner…heh. He needs that invention!
I think the best advice I can give is about how I prepared. I used the PatBar materials for my study course. For the price I definately think it’s worth the money. I believe it did help me to have a workbook and read the abbriviated and salient portions of the MPEP, in addition to the audio lectures. Getting it twice and then taking the quizzes after each section really helps it sink in. After those I used an exam simulator that came with it for the 2001-2003 exams and took them over and over again until I was getting over 80% on all of them. I ended up taking each one 3-4 times. There -is- merit in retaking an exam until it’s pretty down pat. You WILL get repeats on the real test and just checking them off and moving on saves time and builds confidence. Another great thing about PatBar was that David Meeks was outstanding in answering my questions in a timely (heh) fashion. That support counted for a lot.
My biggest weakness was the AIA material. I used their questions from this link: http://www.patentbarstudyguide.com/aiafaq/ and put the questions and answers into two different documents, like a mini test. But, in addition to just reading them over and over I went through the notices and “looked up” the answer like I would have to on the test. About that…maybe it was the pressure but I couldn’t find squat in the AIA notices. Just the dates of implementation. I recommend really practicing and getting familar with them because when I was taking the test they just seemed like a blur. I got The Ulitimate Patent Bar Study Guide by Watts just for the AIA stuff, but I recommend it for that as well as his explainations of the ‘new’ questions on this site. Not being from the IP world I wish I had read it first before starting to study as he goes over the MPEP with a very broad brush. It’s not enough to pass on it’s own, but it’s a great start and supplement.
I took the 1999 and 2000 tests about a week ago and got kind of humbled (scored in the low to mid 60’s). I didn’t see any repeats of those on the exam but I think they were worth taking because they do reinforce the fundamentals (anticipation, obviousness, etc.) Plus the fact patterns on there are alot more complex than the later tests so it was good training.
I spent a boatload of time studying (250-300 hrs) since December. You definately can’t -cram- for this.
Day of test sage advice: Definately eat light and -drink- light. In the first half I had a whole 9 seconds left after answering question 50. Part two was better, 9 minutes, but I didn’t go through fast and then go back like other say to do. I just don’t roll that way. Having to dash to the bathroom would have been BAD in either of my sessions. Also, be gentle to the find function. USE the button, not ENTER. My program crashed in the AM and I nearly had a heart attack. They got it back up in <1 minute and the answers were all saved, but still. Definately make and use an answer sheet. It's a good security blanket to let you see where you are and how you're doing, and which questions to go back and look at if you have time. Oh, and the monitors at my testing center were TINY, like maybe 15"…seemed like less. If you have vision issues be prepared for reading very small print.
I'm off to the non-patent bar where I anticipate I will get very drunk, obviously. Best of luck to all, especially with the upcoming revision.
Ben
Pleliminary pass today. Thanks to all who contribute here. I have been practicing for 3 years as an attorney doing patent law (can’t officially call myself a patent attorney until today), so that helped with the practical stuff. The rest I learned from here. I didn’t buy a prep course. I just did the mambo 200 question collection 2 times, the 68 “new” questions and random questions here and there on this site. I didn’t do the old exams except for the questions in the mambo set, so I don’t know what, if any, repeats were from the old exams.
My prep, experience, and approach were different than mdaakriyklo above. I only recognize some of the ones he mentions above. I found the AIA questions unwieldy. In some the 5 answers were closely worded and had 5 variables in each; the answers varied in one or more of the variables so it was hard for me to keep all that in my head while reading the reference materials to check each of the variables (party, date, etc.).
I had trouble positioning the MPEP window over the question to be able to see both. That was the main thing that bugged me. I only used scratch paper twice. Didn’t use a grid. One thing I did not anticipate is that the search is slow. So, on the larger chapters, I had to wait sometimes for the term to be found. Also, sometimes the term was not highlighted on the page.
AM session, the first 4-5 questions seemed like out of the blue. I made a best guess and marked them for later consideration. Then I started to get a few about which I felt better and got into a bit of a groove. I finished a first pass with an hour to go and used the last hour to search in all the questions (10–15) that I marked for follow-up. I did more searching for each question as I got it in the PM, so I got through all those with about 30 minutes left. The PM seemed to have more easy questions and more difficult ones.
Questions:
ABCD/ABCDE/BCDE
Spanish Phone
102(e) and 103(a) Potter
PGR and IPR; some questions dealing with who can institute PGR or IPR after filing suit (standing) / requesting ex parte review. I assumed the AIA questions were betas so I took a good crack but focused on other questions.
Track I prioritized exam for old guy in hospital (500 cases in the current year)
Two PCT patent term questions dealing with 102(e) date and patent term; one claiming priority to a foreign patent and one claiming to a provisional
Assignee need not prove ownership for assertion of small entity status
Examiner ascertaining differences between claims and prior art
Correcting inventorship (AB and CD inventors)
Claim counting: 1 is independent; 2 depends from 1; three depends from 2; four depends from 2 or 3; 5 depends from 3; 6 depends from 2, 3, or 4. I think that was it
Toy horse question about on sale bar
a 102(d) question
a 102(f) question
103(c)
Oh, here’s a gift for you: question about provisional double patenting. I stumbled upon a flow chart in one of the MPEP chapters for determining when it is proper with respect to ownership and whether rejection deals with two applications or a patent and an application. Take a look at that flow chart.
Timeliness of RR (i.e. when can examiner issue one during exam)
Applicant wants to file IDS after issue fee, but before issue; doesn’t want to file RCE. What happens to IDS?
A few dead inventor questions (dead during prosecution)
Appeal: claims 1 and 3 argued in brief; examiner maintains rejection of all 3 claims; what claims does Board consider
living versus inanimate for 101
encoded wave for 101
another 101 about statutory subject matter (know that business methods are not categorically non-statutory)
Proper multiple dependent claim language
Enablement v. written description for chemical compound
Obviousness (35% / 34.9% question)
Claim range 25%–65%, reject by 102 based on 25% disclosed; amend to > 35%; 112 reject; amend to 35%–65%; argue that both rejections should be removed
CoC filed then reissue; application should have bracketing and underlining removed
Suspended practitioner
Bloc Z
Lip gloss gag gift (experimental use)
Advisory action sent before end of 3-month SSP; when to start clock for extension of time fees
Biological Materials deposit
Piecemeal is OK for what situations
Proper dependent claim (question with high 1800 degree temperature)
Inert gas
Claiming, Deleting and Reclaiming Benefit Claim (variant)
VELCRO
Effect of preamble on claim meaning
Broom multiplicity
Basic filing fee
Starting to remember the ones below a little less well
When is a 1.131 appropriate?
COM for CPA (can’t be used I think)
Gene sequence AGCT; different use for same composition
Access to abandoned applications’ content
Pleliminary pass today. Thanks to all who contribute here. I have been practicing for 3 years as an attorney doing patent law (can’t officially call myself a patent attorney until today), so that helped with the practical stuff. The rest I learned from here. I didn’t buy a prep course. I just did the mambo 200 question collection 2 times, the 68 “new” questions and random questions here and there on this site. I didn’t do the old exams except for the questions in the mambo set, so I don’t know what, if any, repeats were from the old exams.
My prep, experience, and approach were different than mdaakriyklo above. I only recognize some of the ones he mentions above. I found the AIA questions unwieldy. In some the 5 answers were closely worded and had 5 variables in each; the answers varied in one or more of the variables so it was hard for me to keep all that in my head while reading the reference materials to check each of the variables (party, date, etc.).
I had trouble positioning the MPEP window over the question to be able to see both. That was the main thing that bugged me. I only used scratch paper twice. Didn’t use a grid. One thing I did not anticipate is that the search is slow. So, on the larger chapters, I had to wait sometimes for the term to be found. Also, sometimes the term was not highlighted on the page.
AM session, the first 4-5 questions seemed like out of the blue. I made a best guess and marked them for later consideration. Then I started to get a few about which I felt better and got into a bit of a groove. I finished a first pass with an hour to go and used the last hour to search in all the questions (10–15) that I marked for follow-up. I did more searching for each question as I got it in the PM, so I got through all those with about 30 minutes left. The PM seemed to have more easy questions and more difficult ones.
Questions:
ABCD/ABCDE/BCDE
Spanish Phone
102(e) and 103(a) Potter
PGR and IPR; some questions dealing with who can institute PGR or IPR after filing suit (standing) / requesting ex parte review. I assumed the AIA questions were betas so I took a good crack but focused on other questions.
Track I prioritized exam for old guy in hospital (500 cases in the current year)
Two PCT patent term questions dealing with 102(e) date and patent term; one claiming priority to a foreign patent and one claiming to a provisional
Assignee need not prove ownership for assertion of small entity status
Examiner ascertaining differences between claims and prior art
Correcting inventorship (AB and CD inventors)
Claim counting: 1 is independent; 2 depends from 1; three depends from 2; four depends from 2 or 3; 5 depends from 3; 6 depends from 2, 3, or 4. I think that was it
Toy horse question about on sale bar
a 102(d) question
a 102(f) question
103(c)
Oh, here’s a gift for you: question about provisional double patenting. I stumbled upon a flow chart in one of the MPEP chapters for determining when it is proper with respect to ownership and whether rejection deals with two applications or a patent and an application. Take a look at that flow chart.
Timeliness of RR (i.e. when can examiner issue one during exam)
Applicant wants to file IDS after issue fee, but before issue; doesn’t want to file RCE. What happens to IDS?
A few dead inventor questions (dead during prosecution)
Appeal: claims 1 and 3 argued in brief; examiner maintains rejection of all 3 claims; what claims does Board consider
living versus inanimate for 101
encoded wave for 101
another 101 about statutory subject matter (know that business methods are not categorically non-statutory)
Proper multiple dependent claim language
Enablement v. written description for chemical compound
Obviousness (35% / 34.9% question)
Claim range 25%–65%, reject by 102 based on 25% disclosed; amend to > 35%; 112 reject; amend to 35%–65%; argue that both rejections should be removed
CoC filed then reissue; application should have bracketing and underlining removed
Suspended practitioner
Bloc Z
Lip gloss gag gift (experimental use)
Advisory action sent before end of 3-month SSP; when to start clock for extension of time fees
Biological Materials deposit
Piecemeal is OK for what situations
Proper dependent claim (question with high 1800 degree temperature)
Inert gas
Claiming, Deleting and Reclaiming Benefit Claim (variant)
VELCRO
Effect of preamble on claim meaning
Broom multiplicity
Basic filing fee
Starting to remember the ones below a little less well
When is a 1.131 appropriate?
COM for CPA (can’t be used I think)
Gene sequence AGCT; different use for same composition
Access to abandoned applications’ content
Provisional patent filed without drawing
PCT filed without claim and inventor name; claim filed on one date and name filed on another; when is filing date
EPAS
Hey all,
Took the exam yesterday, preliminary pass! First of all let me thank everyone who has contributed to this site over the years, it was an invaluable resource. I LAUGHED when I saw Tommie and Jo on the exam, as there was no way I would have expected that question had it not been for this site. So, in an effort to pay it forward I took several hours and reconstructed as much of the exam as I could remember.
Here are the repeats I had. Most were verbatim, but some were variations:
Restriction (4.00.9a)
Smith Laminate (4.00.17a)
Tommie and Jo (4.00.24a) (only 24a, not 23a)
Prior Art (4.00.42a)
Reexamination (4.00.47a/4.03.44p)
Federal Court Decisions (4.00.19p)
XYZ/ABC Appeal (10.00.02a)
Prior Art (10.00.16a)
Protest (10.02.46p)
Nonpublication request / 45 days (4.03.2a/10.03.44a)
Potter (4.03.12a)
Beck – Mixture Y with melting point of 150F (4.03.22a/10.03.13p)
IDS after Notice of Allowance (4.03.26a/10.03.34a)
Board Decisions (4.03.37a)
Bloc; Synthetic Z (4.03.32p/10.03.7a)
112 second paragraph (4.03.41p)
Canceled matter as PA (4.03.48p)
Prior art exclusion of 35 USC 103(c) (10.03.11a)
Small Entity Fee (10.03.13a)
Tribell (10.03.16a)
RCE During Appeal (10.03.36a)
Dependent Claim (10.03.41a)
Invitation to Correct PCT Application (10.03.4p)
Moondust (10.03.6p)
Prior Art Reference (10.03.19p)
Filing date (Design Patent in Country X) (10.03.29p)
Certificate of Mailing (10.03.34p)
Restriction (10.03.41p)
Toy Plan with Foil Wings (10.03.46p) (103 variant, not the 102 variant)
Ex Parte Rejection (10.03.50p)
Here are the “new” questions I had:
Q7) Claiming, Deleting and Reclaiming Benefit Claim
Q9) Correcting PCT Applications
Q10) Suspending Practitioner
Q14) Costa Rica and Sweeden – PCT
Q21) Trade Secret Question
Q22) Germany – PCT / Patent Term
Q25) Electric Fan
Q33) Indefinite Claim Using “High”
Q39) Advisory Action
Q53) Reissue / Filing Amendment
Q55) Basic filing fee
Q64) Restriction
Q65) CPA
I’ll post additional info about the repeats and the “new” questions in the comments for those specific questions.
And now on to what will probably be the most valuable information in this post. Here are all the questions I remember that I had never seen before:
1. AIA – Company A files for a patent after March 16, 2013, patent issues on January 3, 2014. Company A sues Company B for infringement, and Company B files a counterclaim for invalidity based on a prior sales of Company A. Company B wants to initiate PGR in the PTO. Company B requests PGR on October 17, 2014. The request says “prior sales of Company A means that there is a reasonable likelihood that Company B will prevail in invalidating at least one claim in the patent.” PTO rejects the request for PGR, why?
(I) request cannot be based on prior sales
(II) request uses the wrong standard, “reasonable likelihood” only applies for IPR
(III) request was untimely
The answer was (II) and (III). You needed to know that PGR must be initiated within 9 months of the patent issue date. But (III) didn’t specify WHY the request was untimely, so the question might be trying to trick you into thinking it has to do with the “counterclaim” rule (Once a litigant files a declaratory judgment action for invalidity, he is precluded from requesting PGR, but filing a declaratory judgment counterclaim is OK).
2. AIA – a patent application was filed BEFORE March 16, 2013 but issued AFTER March 16, 2013. A competitor wants to challenge validity before the BOARD. What can he do?
(A) something with PGR
(B) something with PGR
(C) something with PGR
(D) something with IPR
(E) something with ex parte reexam
I answered (D). PGR doesn’t work because the patent application was filed before March 16, 2013. Both IPR and ex parte reexam work, but only IPR would go to the BOARD, ex parte reexam would go to an examiner.
3. AIA – Company A has a patent and accuses Company B of infringement. Company B discovers prior sales of Company A and accuses Company A of inequitable conduct. What can Company A do? Answer was the only choice that involved supplemental examination.
4. AIA – Which is correct about the transitional program for covered business method patents? I believe the correct answer was “a person may not file a petition for a transitional proceeding with respect to a covered business method patent unless the person or the person’s real party in interest or privy has been sued for infringement or has been charged with infringement under that patent” which is in AIA Sec. 18(a)(1)(B).
5. means plus function claims – Applicant wants to make absolutely sure that claim language does not get construed as a means plus function term. Which of the following would work?
(A) “component for sending information”
(B) “element for sending information”
(C) “[something] for sending information”
(D) all of the above
(E) none of the above
I found this question to be rather tricky because my understanding was that even if you do not use “means for” it is still possible (though unlikely) that the claim language will be construed as a mpf term. (MPEP 2181). But, I chose (E) because the MPEP says “Thus, absent an express recitation of “means for” or “step for” in the limitation, the broadest reasonable interpretation will not be limited to “corresponding structure…and equivalents thereof.” I figured this is what the question was driving at, but I’m not sure.
6. Time calculations – Which of the following is correct?
(I) If the due date falls on a Sunday, then any extension is calculated from the following Monday (if not a Federal Holiday)
(II) A 30-day period for reply in the Office means 30 calendar days
(III) If there is a 3-month SSP set in an office action dated February 28, the reply is due on May 28 and not on the last day of May
Answer was (II) and (III). Straight out of MPEP 700.
7. 102(c) – Question was which of the following is true? Answer was verbatim from MPEP 2134 (“Delay alone is not sufficient to infer the requisite intent to abandon.”)
8. 102 – Applicant files for a French patent on April 2, 2004. French patent issues on May 5, 2005. Applicant then files U.S. application on June 5, 2005. What rejections are proper based on the French patent?
(A) 102(a)
(B) 102(b)
(C) 102(d)
(D) 102(a) and 102(d)
(E) 102(b) and 102(d)
I chose (C).
9. Patent Term Adjustment – Long fact pattern with tons of red herrings, but it was deceptively easy. 4 Answer choices went through various permutations of why or why not applicant would be entitled to patent term adjustment and how much adjustment. But the correct answer was simply that the applicant was not entitled to patent term adjustment because the application was filed on May 17, 2000 which is before May 29, 2000. (MPEP 2710). There was also an RCE submitted after May 29, 2000 but that doesn’t count. (MPEP 2730).
10. PCT – Applicant files a PCT application on February 20 without applicant’s name and without claims. On March 20, Office sends notice of missing parts and gives 1 month to file name and claims. Applicant files name on April 10 and claims on April 11. What is the filing date?
(A) February 20
(B) March 20
(C) April 10
(D) April 11
(E) April 20
I chose (D).
11. Provisional Double Patenting – A question asked in which situation would it be appropriate to make double patenting and/or provisional double patenting rejections. The answer choices had different situations where there was a double patenting rejection, a provisional double patenting rejection, or both, and the earlier patent/application was owned by various combinations of inventors and assignees. I wasn’t sure of the answer, but 3 answer choices had a provisional double patenting rejection based on an ISSUED U.S. patent, so I eliminated those. The other 2 choices had a provisional double patenting rejection based on a copending application. But only 1 of those 2 choices had a situation where there was any sort of common ownership, so that’s the answer I chose.
12. Protest – A protest was filed after publication, citing prior sales. There were facts thrown in about the date of the first office action and the date of the notice of allowance. The question was would the protest be considered by the PTO?
(A) no, because a corporation cannot file a protest
(B) no, because a protest cannot raise “on sale” prior art
(C) yes, because it was filed before the first office action
(D) yes, because it was filed before the notice of allowance
(E) no, it would not be entered, and therefore will not be considered
I chose (E) because there was no consent of the assignee. (MPEP 1901.06-V-A).
13. Conversion of Non-Provisional to Provisional. Fact pattern was there was sales activity and then exactly one year later practitioner files a nonprovisional but screws it up because he forgot to submit a claim, so he didn’t get the filing date. What should he do to avoid the statutory bar?
(A) tell client he actually did submit the claim (PTO still has a sense of humor…)
(B) convert the nonprovisional into a provisional and ask for a refund
(C) convert the nonprovisional into a provisional within 12 months of the filing date of the nonprovisional
(D) submit a claim in the nonprovisional application
(E) something
I chose (C). (MPEP 601.01(c)).
14. PTO issues a final office action and sets 3-month SSP. Applicant files reply within 2 months and Advisory Action issued within 3 months. An extension fee is calculated from what day?
(A) Advisory Action
(B) end of 3-month SSP
(C) Office Action
(D) Reply
(E) something
I chose (B). I had chosen (A) first but then noticed the Advisory Action was not sent after the end of the 3-month SSP.
15. 102(e) – U.S. provisional application filed December 5, 1999. PCT application filed on December 5, 2000 which claimed priority to U.S. provisional, designated U.S., later published in English. U.S. patent publication eventually issues. What is the 102(e) date? Answer was December 5, 1999. I think the question was testing the idea that an international application can claim priority to a provisional even though the provisional was filed prior to November 29, 2000.
16. 101 – All of the following can be considered in rejecting a claim under 101, except? Answer was straight out of the Chakrabarty lists in MPEP 2105. I chose “whether the invention is living or inanimate”
17. 101 – Which is true regarding patentable subject matter? This might have been an “except” question
(A) new mineral discovered in the earth [is/is not] patentable subject matter
(B) law of nature, physical phenomena and abstract ideas [are/are not] patentable subject matter
(C) if the broadest reasonable interpretation of the claimed invention as a whole encompasses a human being, the invention [is/is not] patentable subject matter
(D) new plant found in the wild [is/is not] patentable subject matter
(E) a product of human ingenuity [is/is not] patentable subject matter
Whichever ways the question and answers phrased, the answer was easy to identify, and straight out of MPEP 2105.
18. 101 – Applicant claims an “electronic signal” that sends data. Should examiner reject under 101?
(A) no, because the electronic signal is a “manufacture”
(B) no, because the electronic signal is a “process”
(C) no, because the electronic signal is a “composition of matter”
(D) no, because the electronic signal is a “machine”
(E) yes, because the electronic signal is none of a process, machine, manufacture, or composition of matter
I chose (E). MPEP at page 2100-10 (“a claim reciting only a … signal … per se does not appear to be a process, machine, manufacture, or composition of matter). I wasn’t sure of this answer but I couldn’t find anything specifically to the contrary in the MPEP or supplemental materials.
19. KSR – Examiner rejects claim as obvious. What would be an appropriate reply?
(A) examiner failed to provide a teaching, suggestion, or motivation
(B) examiner said that a person of ordinary skill in the art is also a person of ordinary creativity
(C) examiner did not articulate any reasoning with any rational underpinning to support his conclusion of obviousness
(D) something
(E) something
The answer was (C).
20. Supplemental Oath or Declaration – Inventors A, B, and C submit a first oath/declaration. The first oath/declaration inadvertently omitted B’s mailing address. All of the following are ways to correct the error except?
(A) submit an application data sheet with B’s mailing address
(B) submit a supplemental oath/declaration that identifies the entire inventive entity and signed by A, B, and C.
(C) submit a supplemental oath/declaration that identifies the entire inventive entity and signed by only B.
(D) assuming that A’s address was also missing, submit a supplemental oath/declaration that identifies the entire inventive entity and signed by A and B.
(E) submit a supplemental oath/declaration that identifies only B and signed by only B.
The answer was (E). (37 CFR 1.67 (a)(2)).
21. Provisionals – Fact pattern had 2 provisionals and 2 nonprovisionals which the question labeled “Provisional 1” “Provisional 2” “Nonprovisional 1” and “Nonprovisional 2.” Each of the nonprovisionals attempts to claim priority to both of the provisionals. Facts also stated that different inventors were on each application, but it didn’t matter because there was always at least one common inventor. I don’t remember the question but the issue had to do with whether an examiner can use prior art dated after Provisional 1 and Provisional 2 to reject claims in Nonprovisional 2. The examiner could do so because Nonprovisional 2 was filed more than 12 months after Provisional 1, and Provisional 2 didn’t support the claims.
22. Examiner Searching – Which of the following is correct regarding an examiner’s first search for prior art?
(A) examiner should search for prior art in examining a provisional application
(B) examiner should not search subclass
(C) examiner’s search should be strictly limited to the claimed invention
(D) examiner’s search should cover the invention as described and claimed, and should be extended to include immaterial variants
(E) examiner should review references identified in a parent application and identify them in a continuing application
I chose (E).
Happy to answer any questions, so feel free to ask. Good luck everyone!
Congrats!
do you mind to share your personal email?
mine: yellowstone999@gmail.com
thanks a lot!
Nice summary Z. I had several of those too.
I just recalled, too, that I had two questions on requests for information (1.105 I think).
Hello all, I just took it on March 30th, 2013, and here are some of the questions and concepts that came on mines. Hope it helps!
One question had an applicant who had requested no publication in the USPTO because of no foreign filing, go on and file in Japan, which mandates publication at 18 months. 2 months pass and then the applicant realizes he has to inform the Examiner. What is the proper course? Correct answer noted that past the 45 day mark, the application is abandoned and a petition for revival must be entered. Only one answer had the 45 day mark.
A question asked when can an practitioner submit a copy of a signature during an office proceeding. Answers included a declaration, a small entity status petition and a authorization to charge a credit card (and one more).
Several questions regarding the new inter partes, post grant and citation of prior art. The model was similar. Competitor or third party sees a piece of prior art, in one case his patent, in another a publication, that puts into question an issued patent. In one question, the requester wants to be anonymous, in the other, he wants to reply. What and when. Answers included important dates that would have placed it into the new inter partes, post grant mechanisms. Post grant is within the first 9 months, inter partes then after.
Question asked about a competitor who wanted to question an issued patent based on a deficiency on its written description after issued. What was the best way and when.
Question asked about a competitor who wanted to submit a trade publication while the application was being prosecuted. A first office action was entered rejecting the claims. Answers provided dates to submit before and after the first office action. Proper answer was the new pre-issuance submission which requieres a list of the publication, consicse statement, fee and reference to the AIA.
Question asked several statements about 103. Wrong answer included a statement that examiner can use non-analogous prior art. Another answer (i think the right one) was when a rejection is made under KSR and the applicant points out that one of the rationales was left out, the examiner must withdraw or reconsider all the steps. Another wrong answer was that a prior art must expressly teach.
Question asked about two patents issued within months of each other. Answer asked about what remedy did the junior patent owner have against the other. Wrong answer mentioned an interference at the Fed. District Court.
Question asked what documents cannot be faxed at the USPTO. Right (wrong) answer was a PCT application. “Right” answers included an RCE. Another one asked what can be faked. Right answer was a CPA (wrong answer were provisional apps, non provisional apps, RCE).
Another PCT question was about an Int. applicant requesting non-publication of the PCT app. Then it goes into the national stage in the US. Will it publish in the US?
Two sets of question both involving our reissue application for patent. In both, claim One claims Composition Y, and claim two claims X Y Z. They later see a patent that claims Y, thus being prior art for claim 1. Applicant seeks to cancel claim 1 and make an intermediate claim 3 of XZ. In one question, the reissue is filed past the two years by a few days. In the other, it is files on the 2 year mark. Is it allowable or improper broadening?
Question asks about IDS statements. Which one of this is true.
(a) A IDS is a statement that a search has been made.
(b) Materials listed on an IDS are an admission that they are material to the patent ability.
© You may only file one IDS per application.
(d) You may list patents, publication and information on an IDS
(e) None of the above.
Question asked about an utlility application filed before 2000, which then goes into reissue in 2001. Is it eligible for patent term adjustment?
Question asked if the assignee needed to consent for a correction of inventor.
Question asked what was the due course if an applicant submitted new information following the examiner’s answer and the reply brief. Correct answer noted that applicant may do so if it is to report a new decision from the CFAC which may hold relevancy.
Question asked about procedure following new grounds of rejection by the Board.
Question asked if a foreign attorney who prepared the application for the US practitioner had a duty to disclose.
I had this one too “Question asked if a foreign attorney who prepared the application for the US practitioner had a duty to disclose.”
Hey All,
As a former test-taker, I just wanted to reach out to those still studying and will be taking the exam now post April 2nd, and say all the best to you as you prepare. I know there are some of us still somewhat active on this site, and if we can try and help in any way, let us know.
I’ve also set up (over at the new wysebridge site: http://www.wysebridge.com/) forums to try and help wade through the new AIA material, and we are continually updating our study resources and question databases there to try and help.
Again, all the best as you study!
~Bfusion
When I looked at PTO’s material, even in revision 9, new AIA was not incorporated into the MPEP, for example, new 102 is not in section 706 of MPEP. Does anyone know any reason why?
MPEP 8th edition revision 9 was issued in August 2012. Most of the AIA didn’t take effect until September 2012 and March 2013.
I know the exam will be on FITF and many others after 4/2. But the MPEP was not updated, such section 706.
Does anyone what should we based on? The new 35 USC 102. (All previous exams are based on MPEP, not directly on USC.)
Cardozo — It depends on the facts in your question. Basically, if the application was filed before March 16, 2013, then the old 102 applies. If the application was filed on or after March 16, 2013, then the new 102 applies. The exams are based directly on the USC because the USC is in appendix L of the MPEP. Appendix L contains both the new and old section 102.
Passed the exam today on the first shot. I can not violate the confidentiality agreement required to take the exam so I will be general. Taking the old 2002-2003 exams is good practice, but no longer the means to pass. No way to pass this exam without reading all the MPEP and Federal register cited by the OED. I outlined these, and spent at least three solid months, eight hours a day studying. I am between jobs, and desperate for employment, so I did the best i could. My plan was to take the exam and if I did not pass it, schedlue a review at the USPTO and use this as the primary means to find out how to focus on the exam. I am sorry, but in my opinion this site is washed up, as anyone who passes this exam and puts in the hard work will not want to risk an OED disciplinary action by violating the confidentiality agreement.
Drake,
First: CONGRATS on the pass!
Second: Thanks for your feedback, and I concur. It’s not worth risking an OED disciplinary action by posting material referring to the exam on this site.
That being said, I think there IS value in discussing the new rules, changes, (sans questions from the exam). We’ve set up a forum (over at http://www.wysebridge.com/forums) to better organize these discussions and allow “like” data and information to be posted together. We hope this will be a beneficial asset to the community.
On top of that, learning (As you said) the MPEP, and how to study…are key.
Again, many congrats, and all the best to ya!
Thanks Bfusion, you are providing a real service. The exam is an order of magnitude harder now than before AIA, for sure, but the rules should be intact for many years post AIA. I am relieved that I passed. It was on par with my thesis defense ordeal last year. For what is worth,I believe the exam is now a more accurate measure of the current law, and knowing the MPEP and the substance of the AIA is about the only way to pass. The days of gaming this exam by working the old questions is history.
here here
Hey, Drake,
Do you have personal email?
thanks,
Julie
Drake,
Congratulations. Unfortunately, I couldnt take a shot at the exam, prior to 4/3, so I must prepare for the AIA portion of it. I have an old copy of the PLI course (2007) and have read the summary of each chapter, done the old exams, and score in the mid 80s for the most part. However, I havent tackle AIA and was wondering if you could provide me with the outline you created to study or give me some tips?
Thanks
I found the PTO’s AIA web site very useful, and read their guidance. Here is a link to the site, which has several links to AIA instructional lectures on 102 and the main AIA instruction materials being used within the PTO to train the examiners.
http://www.uspto.gov/blog/aia/
Quoting from the web site “During the months of March and April 2013, we are educating our examiners on the new statutory framework for prior art found in AIA 35 U.S.C. 102 as well as explaining to them how to identify whether an application is subject to examination under the first-inventor-to-file provisions of the AIA or the first-to-invent provisions of pre-AIA law. We have created two videos and a one-hour live lecture to share this information…..In addition to training our examiners on the first-inventor-to-file provisions, we want to help all of you understand the new prior art framework. To do so, we have prepared a series of four videos. Each video explains a particular aspect of the new prior art regime. More specifically, the first two videos address what constitutes prior art under the AIA, and the second two videos cover exceptions that remove prior art from being available to apply against a claimed invention. Each video is less than 5 minutes and distills the new prior art framework into its basic components for easy understanding.”
Hi Drake,
Are there really lots of AIA questions? How many repeats that you saw?
I used the link Drake provided (Thank you!), very useful but the videos are no longer available, oh so it appears to me. Does anyone have further information on their availability. There are 4 videos from the USPTO on the new 102 and prior art analysis available on YouTube, they are directed at applicants and unlikely to be the videos referenced at the Drake provided link. Thanks
Drake,
Thanks for the suggestions.
Anyone can help me out:
MPEP under study guide in this website is useful for the exam?
I am very new for this exam. Thanks a lot
Julie,
the MPEP study section on this site is a good place to start. It’s a summary of all chapters in the MPEP and the concepts you need to get familiar with. Read it at least twice and then start working on the old exams. Keep in mind, that the format of the exam changed on 4/3 and you are now also responsible for all AIA changes.
Thanks a lot!!!
Do you mind to tell me a bit the change on 4/3? What did you mean by I am responsible for all ATA changes? Do you mean this new ATA changes has not updated in this MPEP old materials? Do USPTO has new materials coming out?
Sorry I asked lots of questions.
Thanks
Hi, Julie,
The America Invents Act (AIA….not ATA) became law ~1.5 years ago September 16, 2011. One of the changes in the AIA is that the United States would move to a first-inventor-to-file system from a first-to-invent system.
The first-inventor-to-file provisions become effective on March 16, 2013, and as of April 2nd, 2013, the exam now includes these changes (meaning, you will be tested on them).
We have a bunch of study resources and materials at http://www.Wysebridge.com (and will be adding some AIA materials to the free portion of our site to try and help people more!).
As always, feel free to ask questions (you can also email me at bfusion.uspto@gmail.com).
All the best!
~Bfusion
Hi, Julie,
The America Invents Act (AIA….not ATA) became law ~1.5 years ago September 16, 2011. One of the changes in the AIA is that the United States would move to a first-inventor-to-file system from a first-to-invent system.
The first-inventor-to-file provisions become effective on March 16, 2013, and as of April 2nd, 2013, the exam now includes these changes (meaning, you will be tested on them).
We have a bunch of study resources and materials at Wysebridge.com (and will be adding some AIA materials to the free portion of our site to try and help people more!).
As always, feel free to ask questions (you can also email me at bfusion.uspto@gmail.com).
All the best!
~Bfusion
Thanks a lot!!!!!!
Ugh!
I sat on Friday and failed, and failed bad. In February I sat and scpred a 67%. This exam was much more difficult and my score reflected as much. I’m not sure what to do. There are lots of changes, and I don’t know how to prepare. Drake’s comments are correct. I would like to share some of the more substantive aspects, but the USPTO made it very clear that any disclosure is frowned upon.
I’m not even sure if the job market makes it worth studying anymore for these changes.
Any comments or support would be very helpful.
Good luck.
Anony E Mouse:
Drake here. You will pass the exam, so do not give up. IMHO going forward this is going to be a two, three and even four time ordeal, each time you learn by taking the exam, and better yet, schedlue a review of your missed exam questions at the PTO if you can afford to travel the Alexandria and do the in person review allowed by the OED. look at it this way, few pass the CPA on their firts attempt. The patent bar exam is at that level of difficulty post AIA. Its a process not a single event. stick with it.
One more thing…the job market is tight in patent work, just like everything else. This exam is not an panacea. Its only a tool. If you really are commited to a job doing patent work, long term its worth the hard effort it takes to pass the exam. If you are not commited to doing patent work, or thought this might look good on your resume, move on and focus on what you are truly commited to accomplish.
Anony,
Sorry to hear about the exam. I’m planning on taking it prob in June and I too dont know how to go about it. I know the NDA prohibits any discussion about the specifics of the exam, but can you at least comment as to the % distribution of the old to new material ratio?
Judging by your comments, it appears that the USPTO is going all in with AIA material making an already difficult exam even more so than before. I need to take Drake’s advise and start focusing on the AIA material, create a study guide, flash cards, etc and move forward. I do wonder though how the “big boys” (i.e. PLI, Bulls’ eye, etc) will adjust their study material going forward? Are you allowed to at least the say the number of AIA questions you saw? Dont want you to get in trouble, just wondering what if anything you are allowed to discuss.
Hi, GottaTry and Anony,
From what we can gather as well, it does seem that a lot of material is being sourced from the new changes stemming from AIA (which makes sense, as this is now law). That being said though, as is the case, you’ll need to continue to make sure you have a good grasp of how to look up information in the MPEP, and get familiar with how the USPTO asks questions.
We’re about to upload a ~35 page document summarizing the AIA changes. It’s a short (ha, I know..45 pages isn’t “short”) overview of the AIA changes in bullet point form, hitting key points, key facts to know. We’ve already started to add new questions testing the AIA material as well.
These resources mentioned will be in the PRO section of the wysebridge site (www.wysebridge.com). We’ll work on trying to provide a free AIA summary guide as well, but for now these resources will be in Wysebridge PRO.
And, along with what Drake mentioned….the lay of the land is changing for this exam a lot. Keep at it!
~Bfusion
Bfusion,
Thanks for all the work you do. I will certainly check your website for the valuable data you will make available for everyone (PRO and Free version). I saw a video of John White yesterday discussing the AIA changes….in it, he mentioned that prospective test takers should expect to add an additional 50 hours of prep time to account for all AIA material. This of course is in addition to the recommended 150hrs….based on your analysis of he new AIA material do you share his opinion? Thanks.
GottaTry,
Sadly…yes, and a lot of the reason for the additional time is because as test-takers, you’re going to have to try and keep straight “2 sets” of rules. Meaning, when you encounter a question, you’re going to have pre March16th and post march 16th facts floating around in your head. This in and of itself is going to be challenging (let alone learning the new material).
We have some suggestions and are providing some guidance for how to tackle these problems on test day. Feel free to email me (bfusion.uspto@gmail.com) or reach out on Wysebridge.
Keep at it!
I am trying to understand Z’s analysis of this patent term question:
As posted: “9. Patent Term Adjustment – Long fact pattern with tons of red herrings, but it was deceptively easy. 4 Answer choices went through various permutations of why or why not applicant would be entitled to patent term adjustment and how much adjustment. But the correct answer was simply that the applicant was not entitled to patent term adjustment because the application was filed on May 17, 2000 which is before May 29, 2000. (MPEP 2710). There was also an RCE submitted after May 29, 2000 but that doesn’t count. (MPEP 2730).”
I can not reach this bit: “the applicant was not entitled to patent term adjustment because the application was filed on May 17, 2000 which is before May 29, 2000. (MPEP 2710).”
Any help appreciated. My reading of 2710, says the applicant is entitled:
2710 Term Extensions or Adjustments for Delays Within the USPTO Under 35 U.S.C. 154 [R-2]
Utility and plant patents issuing on applications filed on or after June 8, 1995, but before May 29, 2000, are eligible for the patent term ** extension * provisions of former 35 U.S.C. 154(b) and 37 CFR 1.701. See MPEP § 2720. Utility and plant patents issuing on applications filed on or after May 29, 2000 are eligible for the patent term adjustment provisions of 35 U.S.C. 154(b)(amended, effective May 29, 2000) and 37 CFR 1.702-1.705. See MPEP § 2730.
Plant and utility patents issuing on applications filed before June 8, 1995 which have a term that is the greater of the “twenty-year term” (see MPEP § 2701) or seventeen years from patent grant are not eligible for term extension or adjustment due to delays in processing the patent application by the United States Patent and Trademark Office.
Since the term of a design patent is not affected by the length of time prosecution takes place, there are no patent term adjustment provisions for design patents.
Nicola – The distinction is between patent term ADJUSTMENT and patent term EXTENSION. The call of the question was specific to adjustment. A patent application filed before May 29, 2000 is not eligible for patent term adjustment, though it might be eligible for patent term extension.
Hello Z,
Thanks for reply, very appreciated. I am still heavily using this site. Constructing my own question bank from what stellar contributors like you have posted over the last months.
All the best,
Nicola – no problem, happy to help out. Also, I noticed a typo in my post for “5. means plus function claims.” It should have said I chose (D) none of the above. Good luck on the exam!
Can you leave your email to me?
thanks
Nicola,
Bfusion here: I saw your post, and wanted to reach out to you as you are preparing to study (and I noticed you are working through creating question banks, etc). I’m not sure what your time-line is to study, and when you’re planning on taking the exam, but, if you come into a time crunch, we’ve compiled a large question database (gleaned from numerous sources). We also are expanding our database of post AIA (america invents act) questions to test yourself and get familiar with the rules and changes (along with all our study guides and review sheets)
all that information is over at the wysebridge site: http://www.wysebridge.com/
Also, we’re working on organizing the forums to allow for specific discussion about AIA topics and rule changes.
All the best to you as you study, and if we can be of any help, we’ll gladly assist you any way we can!
Thanks Bfusion,
Hi,
I am selling my PLI materials (2006), which includes the three ring binder, 38 discs, 1 pre and 1 pro reading materials. I am asking $100 OBO. Please contact with me via superxul@126.com if interested.
Hello –
I’m selling my John Watts “The Ultimate Patent Bar Study Guide” for $20.00 (including shipping). It is a like new paperback with no writing, no bent pages etc. It is a great summary and is the only money I ever spent to pass the exam last month (except for $390 to sign up for the test and another $100 for registration!!).
I’ll also include all my spreadsheets where I break down which MPEP section the past exam questions (2003 and before) come from, and some other miscellaneous data I created to prepare for the exam. I also have all the answers from 2003, 2002, and 2001 on separate sheets in a Word document so you can review the correct answer for each question without seeing the answer to the next one.
I’m also including a computer program I wrote which runs on your PC. It has 2 digital timers which are on the screen, telling you the total amount of time which has passed as well as how much time you have spent on the current question (you click a button after answering each question). It also tells you what question you should be on based on 3 minutes 36 seconds per question. It turned out to be an invaluable resource for me when I began taking entire tests to gauge how I was doing on time.
I’ll include all this supplemental material on a DVD or CD when I send the book. Reply here and let me know how I can contact you. Good luck to all.
MartyD
Drake here:
What are your odds of passing the Post AIA Exam? Looks like they are now very, very low. Check out the significant decline in the patent bar passage rate as evidenced on the OED public comment notices from May 11, 18, where as many as one hundred passing candidates were being submitted to public comment from the previous week, and the huge decline for May 25th (6 passed), June 1st (7 passed) and June 8th (9 passed).
http://www.uspto.gov/ip/boards/oed/practitioner/notices/index.jsp
I still am in shock that I passed this monster of an exam, seeing how few passed it during my week. Good Luck…
Drake,
Also, keep in mind that it’s very likely that the number of individuals sitting to take the exam dropped off in April as well. Without knowing how many individuals actually registered for the exam in April, it’s hard to appropriately gauge the new passing rate. To me (my observations) MANY, MANY test takers were waiting until the end of april/early may, to try and get a feel for the exam.
That at least would be my explanation for the sharp drop off. Is the exam harder…yes, it appears it’s more difficult (just the simple fact you are now responsible for knowing MORE information/having to lookup more). BUT, the weeks before April 2nd, MANY, MANY people were attempting to get past the exam. April 2nd-now, a lot of people aren’t sitting for the exam…giving themselves time to learn the AIA material.
Got a job….finally! R&D Engineer (pHD. Chem E.) with major company. They noted the Reg # was a plus. The company patent lawyer that covers the group I was assigned noted that he expects far fewer new patent agents/attorneys for the forseable future (he was an examiner in the Kappos era.) Had nothing but good things to say about Kappos and stated that the OED was in fact under direction to get the exam up to date. There are draft proposals at OED to raise the educational standards and also require annual fees. Will likely be coordinating the patent work in my department with the legal group. Its not going to mean any big salary bump but will give me the on the job training at their expense.
Drake
Drake,
Congrats on the Job!!
I am planning on taking the exam in early. I have been studying a few hours a day since the first week of March. I just took the April 2000 and October 2000 exams and scored a 63% and 66%, respectively. Any thoughts on what kind of gauge these older exams are for success on the 2013 test (other than the AIA differences, obviously)? Any tips/thoughts?
Thanks.
Sorry meant to say I plan on taking the exam in early June.
Now Worried,
Using old exams is still a decent gauge of your comprehension and ability to locate information in the MPEP. Scoring mid 60’s is a good start. However, bear in mind that those 2000 exams were sourced from older versions of the MPEP (and thus different rules/laws). But, if you can keep that in mind…in “general” it’s a good start.
You’ll want to (for sure) work on the 2002-2003 exams, as up till April, a fair number of questions were either verbatim or sourced from these exams.
On top of that, you’ll want to make sure you have a good understanding of the AIA material, and start testing yourself using questions sourced from the AIA material.
If you can keep at it (A few hours every day) over the next month…learning to search the MPEP, getting familiar with the architecture and information in the MPEP, and start to learn the new AIA materials, you’ll have a good shot. It (really) does just take time to get familiar with the MPEP and getting comfortable looking up information (and learning how to do it efficiently and effectively).
If you have any other questions, you can always email me. We’ve also posted a lot of information over at http://www.wysebridge.com/, and are continually updating our study resources (including our database of AIA questions!)
All the best,
~Bfusion
This website is great! If anyone wants a great deal on PLI materials, check this out:
http://cgi.ebay.com/ws/eBayISAPI.dll?ViewItem&item=181131779702
I have a question about AIA:
for example, Tim, a solitary man, develops an innovative system for generating electricity in his basement. After inventing the system, Tim neither discoses the invention to the public nor files a patent application covering the technology. Ten years later, Tom, Tim’s only friend, steals schmatics of the system while in Tim’s basement. Tom realizing the potential value of the system, files for patent protection. According to AIA, is Tom proper to be eligible for this patent?
First to file.
thanks a lot.
Would be a 102(f) bar since he did not himself invent the subject matter.
Ignore that, missed that you were referring to post-AIA
Going for a triple, here is some discussion on the topic:
http://www.patentlyo.com/patent/2012/10/with-102f-eliminated-is-inventorship-now-codified-in-35-usc-101.html
Tom is definitely not proper,
Even in the “first inventor to file” system, the first filer must have actually!!! invented the invention, as opposed to stolen it here or derived it.
I suspect one of the answers for such a fact pattern would refer to “Derivation proceedings” to determine who was the “first inventor to file,” … notice it is not “first thief …,” nor “first ‘deriver’ …”.
Derivation proceedings will apply to applications with an effective filing date on or after March 16, 2013.
Check out 37 CFR Part 42, Changes to Implement Derivation Proceedings; Final Rule
In the Moe provided Patently O link, the only bit I found helpful to understand the new landscape was from a poster: “I believe that one of the major purposes of the new act was to eliminate inventorship challenges altogether except in the limited context of derivation proceedings where the validity of a second filed patent was imperiled by the presence of the first file patent, and the subject matter was taken from the inventor of second file patent. You will note that there is a one year statutory limit on filing derivation proceedings.”
Best,
Hi all,
Thanks to everyone who has contributed to this site. It is extremely helpful in preparing for this awful exam. I have an pretty unfortunate situation and I am wondering if anyone could provide any input re the below:
I was told by my boss (I work for a tech start-up in the renewables sector) in the beginning of FEB to become a patent agent and manage our IP. I started looking into it, figured out pretty quickly that I needed to take a review course, purchased PLI’s (on the company dime
and began studying. I applied to sit for the exam asap after I learned more about the process, and didn’t hear anything back for quite some time. I finally called and was told I didn’t qualify under category A because by degree is in “biological sciences” and not “biology”. No shit. I spent a week going back and forth with them, my school, etc, trying to prove my technical proficiency. Total nightmare. Finally, I got my approval letter ON APRIL 2nd!! Not a joke. They totally screwed me. Now I have to take this exam in 12 days, on the 17th of May (pressure from work) and I need to really make the best use of my remaining time.
I have the updated materials from PLI re the AIA and have been doing my best to ingest them. What I would like an opinion on is this: Is it even worth my time trying to memorize as many of the above repeats as I can anymore? I understand that everyone is now under NDA and would not want to put anyone at risk, but I would love to know if, in general, it would be a better use of my time focusing on concepts and hoping for the best on the test, or if there are still enough repeats to warrant memorizing old questions. I am still taking the old exams and all of that, but I don’t know if I should be doing the hard-core memorization like many of the above (pre-April 2) comments suggest.
Thanks so much and best of luck to all. What a nightmare…
Awesome,
1) Really, really to sorry about the timing and sequence of you being registered. What a pain to say the least.
2) “Hopefully” your employer will consider the fact that the exam is indeed harder now. Not only harder, but as you are aware, finding out information about the exam, what to expect, etc, has become all but impossible.
3) As far as how to attack/approach the next few days studying, I don’t think memorizing old questions at this point will help to much. Why? because even in the past, typically you would only see a small number of “verbatim” repeats, with a lot of variations, or questions that were similar in nature. So, if you spend your remaining time solely trying to memorize…it’s going to probably hurt come exam time with the new AIA material especially.
4) That being said, if you can balance (learning the new concepts, etc) and spend time practicing questions (not necessarily trying to memorize), that would be my approach.
All the best to you….if I/we can be of more help, that’s what we’re here for…
Awesome — The question everyone wants the answer to is whether the exam now tests both old 102 and new 102 or only tests new 102. People really aren’t supposed to say because of the new NDA. Best information I have is that the exam does test both, but I cannot reliably confirm. Nevertheless, assuming that the exam does test both, if someone told me they had 10 days until the exam, and had not prepared at all, this would be my advice. You’re playing a numbers game, so you have to focus on studying the material that will comprise the lion’s share of the exam and rely on searching/guessing for everything else. That’s how people study for any state bar exam — there is just way too much material to know everything in time. This is what to do:
1) Study 101, 102, 103, 112, inventorship, reexam, reissue, AIA
2) For AIA, study only what is on here (http://www.rppostgrant.com/ComparisonCharts/post-grant-review-comparison.html) and here (http://www.uspto.gov/aia_implementation/faq.jsp).
3) Do all the repeat questions identified on this site and the “new” questions. Don’t just memorize the answer, learn the concepts in the explanations. The only questions you should purely memorize are the ones where you don’t understand the explanation.
4) Besides the questions identified on this site, forget about PCT, appeal, patent term adjustment/extension, and interference. Rely on searching/guessing on additional questions on these topics.
5) Know my post above on 3/31/13.
6) During the exam, on the first pass of each session skip over (1) any question that requires looking up, and (2) any AIA question. On the second pass do all the remaining questions BESIDES AIA. Leave AIA for last because it is likely that most if not all of the 10 beta questions will be AIA.
7) When searching, search for the most obscure language you can find in the answer choices. If some obscure phrase doesn’t come up in the search, try another.
8) If you don’t know where to search, start with 2100, then 700, then the subjet matter index.
Good luck!
Went through this EXACT hassle while in Law School (one of my majors is in Biological Sciences). It was a nightmare to go back and forth with the school, only the recent pdfs of course lists were accessible, etc. and by the time I reached final approval, there was no way I could get the exam in (if I remember correctly I could have tried to do it in a three week period DURING EXAMS). Lost all of my registration fees!
The “list of majors” is ridiculous when the school you attended happened to call their program something slightly different.
Hi All,
I failed my first trial for the patent bar back in march and now I want to go for another one. I don’t have much time as I need to take it by the third week of June. I also work full time. So my question, what would be the best to prepare for the exam, is taking the PLI live course would be a good help? I have a technical background so I thought it will be an intense 5 days course that will prepare me for the exam. I am not sure that’s the best approach and use of money. Any suggestions or recommendations will be highly appreciated.
Thanks
HI KM-AE,
Sorry to hear about the first run through of the exam. Here’s the good news. You’ve already put it time studying for the exam…that will not go to waste (especially if you are/keep studying now). You need to build upon what you’ve already seen/learned.
Everyone learns differently….so, that being said, it’s hard to sometimes give advice on “this will work best.” However, my general suggestion is that nothing beats short, intense, focused periods of studying (a few hours a day) compared to an all out assault of many hours crammed into a few days. There’s just no way you can assimilate and retain all that information.
My suggestion, is make sure you obtain some form of AIA (post April 2nd updates to the Exam) summary, review material, and exam questions (we have all these as part of the PRO membership at http://www.wysebridge.com/index.asp), and from now till your exam, work through this material (and keep refreshing on the rest of the MPEP as well).
That’s just my two cents. We’re currently offering access to PRO membership for $349. Yes, it’s on the less expensive side. We really want to facilitate a community of test-takers (and passers), and know that for many people taking this exam, $$ is a big factor (when you figure it’ll cost ~$500 with registration and fees for the exam alone). So, we decided to take a “risk,” and open up access to all of our online, interactive, study resources for well, a lot less than others.
Also, for the entire month of May, we’ll be donating to the National Foundation for Celiac Awareness for every new subscription.
KM, either route you take (be it with Wysebridge, or another study resource), I wish you all the best!
Does anyone have any suggestions for preparing for the added AIA content? I get the basics of changing to a first inventor to file system and the changes in post-grant proceedings, but I’m not sure how to take “practice questions” in AIA or exactly what else will be tested.
Any advice is greatly appreciated.
Unfortunately with the USPTO now requiring test takers to sign a “NDA”, it’s almost impossible to get meaningful data that can be analyzed in order to prepare for the exam, at least via the collaborative way that took place at this website over the last few years. You can still buy the PLI Review program, which now includes their newest material on AIA, but that will set you back some 3k or so. I should point out that there are other affordable alternatives to PLI, Wysebridge being one of them. Bfusion runs Wysebridge and monitors this website constantly. Reach out to him, I believe his company is either working towards compiling information for AIA or has already done so.
There are a lot of information being posted by many law firms which help understand the new changes if you search on google. Additionally, you can also download the official material posted on the uspto website, read it, and make your own study guide/flash cards, etc and prepare that way. If others have other suggestions, I would love to hear them as I too need help on that area.
Just a reminder to everyone that today is the last day to sign-up for the next U Street Prep class starting 5/18 with a discount!
Get 30 hours of interactive class time, over 150 original practice questions, over 300 pages of exclusive, AIA-updated prep material, and all the help you need. Check out ustreetprep.com for details.
You have the will, we have the way.
Hi all,
Just curious if anyone else has been going through PL I’s newest materials concerning the AIA. I bought their course in early Feb which included the previous supplemental materials for AIA phase 1 and phase 2, got screwed by the Office and couldn’t get my test in before April 2 (see my comment above), and have been going through their updated materials (which they sent me pretty quickly after April 2) which includes the FITF, derivations, all the post-grant procedures, etc.
I am wondering if anyone else is feeling like the new materials are relatively straightforward to the point that you are wondering what you are missing? I realize the volume of material to know is considerable now that the AIA is fully implemented, but it all seems pretty easy to got a handle on, especially relative to some of the older materials. The new FITF rules, for example, seem MUCH more straightforward than old 102 (although I have full confidence in the PTO’s ability to make some amazingly confusing and horribly worded questions out of them), and all of the procedural changes seem pretty mechanical in nature. Does anyone else feel the same? Maybe it’s because my test is now 5 days away and I am simply looking for some reassurance but if I am totally kidding myself, feel free to let me know.
Thanks!
PLI is worthless. My exam 1/3 of questions were about appeals and PLI has a very brief 3 pages on appeals. No detail, whole program is brief and very dated.
Ugh sorry to hear that man. Did you pass?
Eric (and Awesome),
Eric, sorry to hear the news.
We’ve been writing about the exam changes/what to expect over at wysebridge:
http://www.wysebridge.com
we’ve also organized some forums to discuss these changes as well, and you can take a look at the latest post….(http://www.wysebridge.com/usptoexam)
Awesome: If you’ve put time and effort into studying and practicing, and have looked at the AIA and are feeling confident…that’s a good thing. As Eric mentioned, sacrificing the bulk of the MPEP material to worry about AIA will be catastrophic. Yes, you need to know the AIA…but not at the sake of understanding the architecture of the MPEP and process of patent law.
Passed yesterday! First attempt!
Soooooo relieved to be done with that monster. If I can do it you can do it!
Best of luck to all and thanks to everyone for contributing. Special thanks to Bfusion.
Cheers
Congrats Awesome!
Any non-NDA breaching advice you can give us? I’m coming down the home stretch.
Plan of taking the exam at least twice. This is what I did and passed in February 2013. First timetak the exam with just a little study of the old exam questions, mainly to get to know the exam, and this also gives you the right to go to the PTO and review all the questions you missed, which is a way to bypass the NDA since you get to read all the questions you missed on the exam and the PTO will give you the correct answers and where they came from. Cheaper to do this than to take a 3000 dollar PLI or PRG course and the odds are way better since none of the courses have AIA and the new questions available, but you will through your threee hour review iof your failed exams at the PTO. You then use your PTO exam review notes to refocus your personal study to hit what you missed and know what is actually on the exam, likely as a repeat in the next exam you take!
This exam is really a give away so long as you use this method, and use the PTO’s own exam review option each time to review your failed exam questions. Remember you only need a 70.
Of course, you don’t get to take any notes during a review of missed questions at the PTO. You get to look at copies of:
-the questions you missed (including all answers and analysis of why the right one is right)
-a paper copy of the MPEP, statutes & regs + supplemental material
No pens, paper or cell phones out during the review.
Best bet is to bring a notepad and go sit down as soon as you complete the review session and write down everything you can remember.
Congrats Awesome.
Any advise how to tackle or what strategy you used to prepare for the AIA section of the exam? Thanks in advance.
Awesome,
Many Congrats!!! It is always wonderful to hear of success stories of those who have passed the exam, and it’s extra special (to us) when they’ve used Wysebridge Patent Bar Review study materials to pass!!
As a heads up to everyone, there is less than 10 days to take advantage of Wysebridge’s Support Celiac Awareness Discount on the PRO membership!
For more information about our study resources and to contact us regarding the discount, you can visit: http://www.wysebridge.com
Ditto on everybody’s questions above about any and all non-NDA info you can give us on the rough % of AIA questions vs. Pre-AIA questions, or, barring that, the answer to Awesome’s question @ May 6, 2013 at 1:46 pm regarding whether it is still worthwhile to study the old exams.
So far I’ve been taking the old practice exams and reviewing the questions and answers, especially the 2002 and 2003 exams. I’ve taken them more than once to the point where the last time I took them I got 84% correct (first time I took them I barely got 50% correct). At the same time I take the old exams I follow along in the MPEP and have become somewhat familiar with where things are located.
In addition, I’ve searched the web for anything I can find on AIA changes. I understand the basics (we’re no longer a FTI we’re now a FTF system in the US; No more Inter-Partes Reexamination – now it’s Post-Grant Review and Inter Partes Review; etc.)
Other than that I’m not sure what I should be doing.
I guess that’s because I don’t know if the repeat questions are still being tested or if the AIA has completely taken over all 100 questions. I’m assuming it’s some combination of old repeat questions + new AIA questions. (???) I don’t have the $ to drop $3k on PLI just to see their new AIA materials, and to be honest, I don’t find the pre-AIA PLI review materials (which I have) to be that helpful. (John White is annoying and not a very good teacher).
Any help at all is greatly appreciated.
Best advice is plan on taking the exam a few times…you will figure the approach that works for you after you take the exam once or twice , and this is still cheaper than forking over $3,000 to PLI.
Question: What do you call a patent agent/attorney who took the exam three or four times before she passed?
Answer: A Registered Patent Agent/Attorney
Hi Hoping and PlanB,
Good questions and feedback!
PlanB: Love the Question/Answer set. HA!
Hoping, we wrote a little forum post earlier this month over at wysebridge giving a breakdown/synopsis of the exam:
(http://www.wysebridge.com/usptoexam).
In summary, you are still going to have to know the general bulk MPEP information (appeals, PCT, etc). Not every question is going to be some factual analysis of AIA changes.
PlanB, what you described is a key element (although you didn’t say these exact words). Don’t worry about passing/not passing the first time. Think about it, if you put pressure on yourself to pass the first time, you’re only going to get yourself worried, stressed, drawing focus away from learning the material and how to take the exam. On top of that, as PlanB mentioned, if you don’t pass, it’s not like you are at square one again. NO…you have a HUGE base of knowledge, and on top of that, will be able to spend just a little bit more time honing and focusing on your weak areas (As well as know having gained information about what the exam looks like!).
Again…all the best to you as you study and prepare. If you’re interested in AIA review questions, study materials, etc…we’ve compiled a lot at Wysebridge (Accessible as a PRO member)…for a LOT less than PLI (and we’re currently running a discount till the end of May!)
~Bfusion
@Plann B:
I hear you. I’m not afraid to have to take it again (nobody at my office even knows I’m taking it so no pressure there) but I’d rather not have to take it more than once if I can help it. Plus my 3-month registration window is up in 2 weeks so I’d rather not have to deal with all of the re-registration woes if possible.
Two weeks until the test. Anyone have suggestions on how to prepare in my last two weeks? I have one practice test left (taking it tomorrow). I plan on going over the AIA materials a few times in the next few weeks, looking over old questions, and browsing the chapter headings for the major chapters. Other than that I’m not really sure what to. Any suggestions?
@Two Weeks:
We’re in the same boat. I’m also taking it in 2 weeks and it sounds like we have about the same strategy re taking old exams and looking over new AIA stuff.
I saw on Wysebridge that the post-April 2 exam is still approx. 75% pre-AIA material and only about 25% AIA material, if that helps give you a gauge on where to focus your studies over the next 2 weeks.
So far I’ve been scoring around the mid-70’s on practice exams. My goal is to get that up over 90% before exam day so that even if I fall short of that on the exam I will be ok.
@ Hoping2Pass
I’m with you, I really don’t want to take this exam a second time, but I know its not the end of the world if I need to.
I’ve been spending some time going through the AIA supplements and becoming familiar with those, but without practice questions its hard to gauge how well I know them. Hopefully the AIA questions are still pretty straightforward at this point.
I have finished all the practice exams (’00-’03) and I am going over those again, as well. Other than that I’m trying to do as many “practice” searches as I can, basically just trying to locate info in the MPEP when I don’t know where something is.
If I come up with any groundbreaking strategies and/or information in the next two weeks I’ll share it here. Good luck if I don’t hear from you again!
@Two Weeks
I hear ya. And good job on finishing all of the practice exams back to ’00. I’ve done all of the 02 and 03 exams as that is where the bulk of the repeat questions are, but I havn’t gotten to the ’01 or ’00 exams yet. Will do those at some time between now and then.
And you hit the nail on the head w/ re to not having any AIA practice quetions to look at. I feel like I can look at this stuff all day long but without a context to put it into I’m kinda spinning my wheels so to speak. It certainly makes it hard to know what to expect.
From the AIA materials that I’ve read so far, I would speculate (again, pure speculation on my part – no proof of this whatsoever) that the USPTO would want to test areas where the AIA changes have the biggest practical impact. For example, 102(g) situations are obviously way different under the AIA. I also wouldn’t be surprised to see questions on inter partes reexamination vs. “Post-Grant Review.” And also the appeals process.
Again, all speculation. I have no idea.
I’m just taking comfort in the fact that most of what we have reviewed will still make up the majority of the exam.
Will certainly check back periodically if I come across anything.
Good luck.
Hello All:
This is a very belated email, sorry for that.
I took the exam at the end of the last week of March and passed it. At that time the consensus was that until 2 April all AIA related questions would be preliminary and not be counted. I felt otherwise, because most of the AIA sections had been enacted long time ago, and USPTO was providing the federal registers for reference during the exam.
Here is my experience.
I took it twice, passed the 2nd time.
My background is Physics / EE. It is hard to quantify the time I put on preparation – it was spread over 7 months, ~2-3 hours a day, and several weeks in between without any studying. The last 3 hour exam I took was 17 years ago.
I used 2006 PLI material that I bought from my colleague. I listened to John White’s lectures over & over again. They were great. I read the printed material thoroughly. It took a couple of iterations before things started to fall in place.
I spent quite some time on this web-site, but in the end I gave up. In the beginning I went through the discussion section religiously, only to find it confusing and many-a-times incorrect. What inspired me was the notes people left after passing the exam.
I signed up for Wysebridge and I think it saved me a lot of time. Several of the questions from there (which essentially is in this web-site) were in my exam. Wysebridge was helpful.
As for the AIA portion, I tried studying the federal registers, but it was a difficult read. I resorted to USPTO’s road-show presentations. I watched video’s posted in YouTube by several law firms. I read through presentation that I could find in Google (basically those created by law firms). These presentations and video’s made understanding of the AIA much more easier.
Juan.
Juan,
First: Congrats on the Pass! Glad we were able to assist you in your studies to help get you over the edge!
Secondly: You make a good point (especially about the AIA and Federal Registers). They are tough to wade through. There is a fair amount of material available online scattered around. We’re working to centralize those resources as links over at http://www.wysebridge.com/. On top of that, we’ve provided a lot of AIA summaries and quick bullet-point reviews to help test-takers get a good overview and grasp of the AIA material.
Again, many congrats and all the best to you!
I took the test yesterday and failed with a 65%. I will admit being underprepared (I only found mypatentbar a couple of days before the test, a mistake I will remedy the next time around). I had not studied enough, but mainly I did not do enough of the older test questions. I cannot stress studying the old questions and newer repeats enough! Here are my observations:
I still have quite a few repeats from old tests and others mentioned here.
I did not get a great deal of AIA questions. There were a couple testing the difference in time periods for post grant review and inter partes review. I remember one on derivation.
Three biggest sections for me were 2100, PCT, and 700 – In that order.
Long,
Sorry to hear about the results…however, a 65% with minimal studies/being underprepared is really, really good. Look at it this way…you have a good base, you just need a little more to get you past the mark. I know a lot of test-takers who don’t pass feel utterly deflated, but the GOOD news is you aren’t back at ground zero. You’ve already put a lot of time and effort into studying…now you just have to build on that (and if anything, you are now more prepared to pass since you’ve seen the exam once already!)
We have a fair number of free resources available over at:
http://www.wysebridge.com/
On top of that, we do have a paid membership available, which allows access to a lot more material, including more practice questions, AIA exam questions, in depth study materials, summaries, AIA update reviews….to name a few.
Again, all the best to you as you study and prepare to pass this time around!
I’m taking it next week so THANK YOU for your input! Much appreciated. I have no doubt you will ace it the next time around.
Passed 5/22/13 !
Background in Computer and Electrical Engineering. Know the repeats cold. Watch out for dates and know the basics of Post-Grant, Inter-partes review, supplemental examination, and first-to-file. And know exactly where to find topics in the MPEP.
Biggest tip: use the “Subject Matter Index” to search for keywords, it’s your friend. Good Luck
GoodThings,
CONGRATS! Great news…and, what you mentioned is something I’ve been recommending and telling others to do: USE that subject matter index (as well as the appendices!!!) to do initial searches in. Couldn’t agree more, and why we set up some tutorials and practices on the Wysebridge Patent Bar Review Site!
All the best to you!
~Bfusion
Hi,
can anyone refer me to the site of questions on the OED website. Thanks
Best
Let me begin by thanking everybody on this forum that provided me with an invaluable tool during the last 2 months as I studied for the patent bar.
I received my preliminary PASS!!! today on my first attempt, and I can honestly say I would not have done it without this website.
I have been studying off and on for the better part of 4 years, so imagine my disappointment when I took a look at this website again in April and had my mini AIA induced panic. Let me give you my thoughts from the exam this afternoon.
The AIA material is straightforward, I used youtube videos to study, the most important things to know are the basics of pre-grant, derivation, and new 102a rules, nothing terribly complicated and only 5-6 questions so don’t fret.
https://www.youtube.com/watch?v=BjvmicX9VuE
That is one in a series of videos that really helped make the new AIA material easy to understand.
The MOST IMPORTANT skill you need to have is to be able to quickly and accurately search the MPEP. I had about 10-15 repeat questions, but most of those were variants of the “repeat questions.” I would recommend going through the old exams and make sure you understand the questions not only for the answer, but for the wrong answers as well. You will need this basic base of knowledge to help weed out the easy questions so you have more time to look the ones you have no way of knowing until you get to the test.
I found the test to be very fair compared to some of the older 2000-2001 tests where I often found myself scratching my head, but this could also be due to my improved MPEP searching skills. I purchased the PatBar study materials and used their test suite CD in order to practice old exams and doing MPEP searches. It was the only valuable part of the entire course, and I imagine PLI and other courses would have been a similar experience. The ONLY way to study this material is to take practice tests over and over until you can speak the patent language, just knowing what a wrong and right answer looks like and being able to decipher fact patterns is what this puppy is all about. I know I am rambling but Its 4am and I still haven’t gotten over the joy of passing, and I am so thankful for this forum.
What else…it was very helpful to read the comment sections because many of the variants of the repeat questions showed up, and I know I smiled a few times as a should be tricky problem turned into an easy point.
102/103 was heavily tested, PCT and Appeals showed up, random questions from section 100, 200, even one from 900? Protests? They were all searchable using the INDEX that points you in the right direction. Other questions that I couldn’t easily look up I was able to make educated guesses simply based on word patterns and identifying red herrings that indicate a wrong answer. If anybody has any more specific questions I’ll be happy to answer, I will be lurking around for a little while to bask in the sunshine and help pass along any help I can to this forum.
Thank you all again!
Agent D,
First off, congrats. I can’t even imagine what that feels like, but someday I will. (got a 65%)
I just wanted to say that I agree 100% with what you said about the AIA aspect of the exam. That was not my problem. For me it was all of the other pre-AIA questions that had come up after the 2000-2003 exams.
You said:
“The ONLY way to study this material is to take practice tests over and over until you can speak the patent language, just knowing what a wrong and right answer looks like and being able to decipher fact patterns is what this puppy is all about. “
Agree 100000%!!! The only problem I found is getting my hands on the RIGHT practice tests.
I studied the old exams (2000-2003) over and over and over and over again. Not just for the sake of memorizing questions & answers but actually understanding why a certain answer is correct and understanding why the other answers are incorrect. In short, I learned the rules via the practice questions. But, I only had the 2000-2003 exams. That was not enough. I needed something more recent. I was fully familiar with 600, 700, 1800 and 2100 and I completely MASTERED the 2000-2003 practice exams and I STILL only got a 65% correct on the actual exam. So while I couldn’t agree with you more on the value of doing practice questions, I would add an asterisk to that statement and note that you need MORE than the 2000-2003 exams. Those are definitely necessary, but not sufficient.
There were questions which raised issues that I had never seen before and I didn’t even have a clue where to look for them at. Not even scanning the Index helped. If I had seem those questions before I took the exam I have no doubt that I would have studied those areas raised by those questions the same as I did for the others and probably would have had a different outcome.
So hopefully for those of you practicing, you will not make the same mistake I did. Make sure that you do not rely exclusively on the 2000-2003 exams.
I think as I said before the most important thing is learning how to search. 60% or more of the questions I had never seen or even heard about before getting to the test, but reading through the answers I could easily pick off 1-3 of the answers for being obviously wrong, and it made searching much easier. I definitely agree that the older tests seem to test different information, but the most important thing is the searching function.
I went back and read Z’s post from March, and it seems like I had A LOT of similar questions to his. It seems to me like they are pulling from a little different test bank and the days of 30-40 repeats on the test are long gone. You will get it next time, for sure. The Subject Matter Index was an invaluable tool for me, I went straight to that anytime there was any hint of doubt where I should start looking. Each question was a grind, I”m just glad I was able to get through it on my first try. You got this!
Agent D, (And Hoping To Pass)
Many Congrats on your pass Agent D (And keep it up Hoping….you’re on your way to getting past this exam!!!)
One of the critical components (as you mentioned Agent) while studying for the Patent Bar Exam, is learning to search. Learning to be comfortable with searching for answers. It’s one of the elements we emphasized while creating the study programs and materials over at Wysebridge Patent Bar Review (http://www.wysebridge.com). However, here’s where we think people go “wrong…”
It seems that for a fair number of people, when studying older exams (2000-2003) they go about it to strictly memorize answers. The sad part is (as has been mentioned) gone are seeing word for word, verbatim, repeat questions. So, if this is how you approach those old exam questions (and studying), you’ll be left struggling on exam day.
Where the old tests come in handy is this: learning to work through what questions are asking, how they ask, and frankly, spending the time to work through a question. It’s called practice….practice…practice…
As everyone (hopefully) is aware, you’re going to have to look up a LOT of questions/answers on exam day. So, just like most things in life, the more you practice (in this case, spending time with questions), the better prepared you’ll be.
It’s why when we were creating wysebridge to help individuals like you all here (after having spent months on this and other study forums), we decided it was crucial to have databases of actual exam questions, one’s we’ve written sourced from other questions, and questions we’ve written sourced from the MPEP. All of these are designed to help the individual practice. (also, because we give our users the freedom to practice questions by chapter, or topic, or randomly, it helps prevent “memorizing” the question sequences of old exams, which is what we found a lot of test-takers inadvertently were doing while studying). Thus, the 90% scores they were seeing on old 2000-2003 exams didn’t reflect what they knew…but rather, included the fact they had memorized the answer sequence from looking at the exact same question sequence multiple times!!!
At the end of the day, everyone does learn differently…however, taking the time to work through questions, look at them, figure out what keywords to use to search….will set you up to pass on exam day.
All the best to you all as you study, and as always, if you have questions (anyone), please feel free to ask!
~Bfusion
Still hoping to pass. Got dinged with a 65%. I feel more annoyed than any other emotion b/c now I have to wait 30 days to do this all over again.
I know we can’t get into the details of the exam so I will just tell you how I prepared so you can take it for what it’s worth. I did all of the 2000, 2001, 2002 and 2003 exams, and then did them again and again to the point where I was scoring in the 90’s (on a few runs I got a perfect 100%) under timed conditions. My times were averaging about
Sorry had a browser malfunction.
What I was saying was:
Sorry for the duplicate. Had a browser issue.
I know we can’t get into the details of the exam so I will just tell you how I prepared so you can take it for what it’s worth. I did all of the 2000, 2001, 2002 and 2003 exams, and then did them again and again to the point where I was scoring in the 90’s (on a few runs I got a perfect 100%) under timed conditions. My times were averaging about an hour and a half. On one of my better runs, for example, I finished the October 2003 Afternoon set in 49 minutes and got 96% correct. So timing was never an issue and that held true on the actual exam.
In addition I reviewed what little AIA material is out there. I was familiar with the new concepts regarding Supplemental Review, Ex Parte Reexam, Post Grant and Inter Partes Review as well as the changes to 102 (FTF, etc). However, I never was able to find any commercial course that had ACTUAL AIA questions.
In addition, I wasn’t able to locate many of the “newer” pre-AIA questions. (I saw some on Wysebridge but not many that were complete). And by “newer” I mean the questions that were not on the 2000-2003 exams.
Keeping what I just said in mind, when I got to the actual exam I still only got a 65%. So again, I can’t talk about the actual content due to the NDA but read b/w the lines, folks.
Good luck.
Hoping to Pass-
That sucks!! I’m so sorry–you were so close. My first time (pre-AIA) I got a 68%. Can you go to USPTO to inspect your exam? I live on the West Coast so I could not. I’ve heard from many people that it was really helpful to do so.
Hang in there–Next time for sure!!!!
Thanks. I’m on the east coast so it is possible for me to head over to the USPTO. As I understand it, we’re allowed to review our exam but we’re not allowed to take notes of any kind or any recording devices. But even still it might be helpful just to see the questions again b/c there were a lot (about half of the exam) that I did not recognize from the 2000-2003 exams.
Hi – I have made the pilgrimage to see my wrong answers, and I am convinced that its worth it. Besides trying to memorize ~30 questions, I found that in the actual test, I 1. got tired at the end of each 3 hour session and that meant about 7-10 wrong answers clustered near the end of each session, even though I practiced in 50 question chuncks. I went through all 50 in the actual test within the first two hours, and then reviewed the ones I wasn’t sure of, but this cluster effect was still happening. I also noticed what type of questions I was apt to get wrong, and noticed the lack of “brand new” questions which either meant that I got them all right or they were beta. I can’t tell if they include the beta questions in your “wrong answer” folder that you get wrong but that aren’t counted. I think they do. Anyway, the more you know about your test taking strenghts and weaknesses the better, After looking at the questions and right answers for 2 1/2 hours, I found that I could actually remember 29. I sat in the little snack area and quickly wrote them down immediately following the session. Good Luck!
Are covered business methods ie. CBM tested?
Took the test for the first time yesterday and got a prelim pass. What a relief. Obviously I can’t talk about specific questions but I will give a quick rundown of how I studied. It studied for about 3 months, 2 hours a day during the week and 4-4-6 hours each day of most weekend.
I paid for Omniprep. It was not worth it. I didn’t really use there materials other than an AIA summary and some question “banks” they had, which seemed to be copy/pasted from the internet or something. If I had to do it over again, I would probably try Wysebridge. I used the free portion of Wysebridge and this site A LOT. I spent a significant amount of time going over the repeat questions (00-03) and the “new” pre-AIA questions and really understanding the concepts being tested.
I took all the tests from 2000-2003 once under timed conditions (I would have done more timed questions but I felt comfortable with my pace). I reviewed the questions a number of times to fully understand each correct/incorrect answer and to practice searching.
I was worried about the lack of study material for AIA related questions. I pretty much googled around and found AIA materials prepared by law firms, the USPTO Youtube videos, and whatever else I could find online. A had a basic understanding of AIA material and that was sufficient.
In summary, do as many questions as you can get your hands on, truly understand the correct and incorrect answers, and do a TON of practice searching in the MPEP.
Good luck!
2 weeks,
CONGRATS!!!
We’re thrilled (as always is the case) that you found the Wysebridge Free materials helpful in your studies!
We couldn’t agree more, taking time to practice is paramount. Glad you were able to utilize the questions we compiled on the free portion. As a heads up for everyone else, we are continuing to expand our question database, and as a PRO member, you’ll have access not only to the questions, but to live, customizable, testing platforms where you can practice questions by type, chapter, randomly, or do an actual repeat old MPEP exam, all online.
All the best to you 2 weeks!
~Bfusion
http://www.wysebridge.com
This site has degraded into nothing but a target for Robo-spammers and barkers for patent bar reviews. It is just a metter of time before this site goes “404” dark due to neglect.
AIA Study Resources Available:
Hi All,
Thanks for all the feedback about Wysebridge Patent Bar Review (http://www.wysebridge.com), and how to continue to make studying for the patent bar easier, more approachable, and helpful!
We’re still expanding and updating our AIA study resources (which include question databases, comprehensive summaries as well as topical breakdowns of AIA material).
You can get a feel for the site for free (by creating a login) which also allows you to post on the forums!
As always, we hope to continue to help you study and pass the exam!
I started studying for this last year, got sidetracked for a while, and now I’m back again. Now with AIA changes in effect, I’m wondering whether one has to know both pre-AIA and AIA policy equally as well — that is, will there be questions that say “in a patent application filed in January 2010 … ” for example, where the intent is to test the pre-AIA rules?
Thanks in advance for any guidance.
Hi, Laser (and to everyone else using or coming across this site now),
I’ll probably stop monitoring/checking/ posting updates and help here in the near future, as (sadly) spammer/trolls seem to have taken over.
That being said, I’ll still be available through the wysebridge.com site (where we’re expanding our forums as well).
To answer your question laser…from the information we’ve been able to gather, yes…you’ll need to know pre and post AIA policy (because both “sets” of rules still apply to patent apps / patents).
Hope that helps (and if you need study resources/materials for AIA, we have reviews, exam questions, at wysebridge.com)
All the best!
~Bfusion
@Laser – yes you will need to know both. Without getting into too much detail, it’s still majority pre-AIA, but you will definitely need to know both pre-AIA and post-AIA materials.
Hey all, had to pay it forward. I passed the exam first try in July, 2013. Studied for 3 months. About 2-3 hours a day during the week and aimed for 5-6 hours a day on weekends. In the last 7 days, I studied about 4-5 hours a day.
I began by using some old 2010 PLI materials. I did not listen to the tapes, but went through the material in the binder about 2 times. However, its tricky using old materials because the law has changed on certain topics and it can get confusing. Then I purchased Omni Prep. Omni Prep was just ok in retrospect because it was so dense, however it did have all Q’s with A’s and had supplemental info for changes in the law. What was most helpful was the overview from the ultimate patent bar study guide, doing questions and using Wysebridge. The Ultimate Patent Bar study guide- great book, read it 2 to 3 times. It could use more detail (you need more details to pass) but its awesome and necessary for an understanding of how material fits together. In the last month and a half I did all practice exams from 2000-2003 twice. First without timing myself and then again under exam conditions. I even did one full 6 hour exam 2 weekends before the exam to get a feel for the fatigue/stress etc. In the last 2-3 exams I did, I was averaging 75 -78/100. I also went through the “new repeat questions” and the “older repeat questions” twice on the Wysebridge website. Had I not already purchased Omni prep I would have just done Wysebridge PRO. It’s a great resource and these guys seem to know what they are doing- thanks Wysebridge. I also went through the ‘repeated questions’, ‘common exam questions and concepts’ as well as questions that people remembered & posted from pre-NDA exams in 2011 and 2012 on this website. This website was helpful but sometimes the older posts were confusing.
For AIA stuff I reviewed parts of USPTO’s AIA roadshow pdf, the AIA FAQ on the USPTO website twice and the AIA stuff on the Ultimate Patent bar study guide website twice.
Good luck, don’t get stressed and try to think of key and unusual words and phrases when searching MPEP.
not sure anybody is reading this anymore, but i just wanted to say i took the exam today and passed, definitely owe some of that to the questions and responses from here, so thanks!
not much at all from AIA, and where there was it was pretty clear, i just read summaries of the guidelines and that was enough. if you know all the old stuff really well you probably don’t even need to know the new stuff to get a passing score.
happydays, I’m still using this site, and taking the exam soon. could you give us any other information, such as whether there was lots on appeals, pct, etc? Lots of repeats? New? or 00-03?
If possible could you please share your email?
Congrats on passing, quite an achievement post AIA!!!
i saw a good mix of repeat questions from 00-03, as well as the questions on here. i’d say close to 40% of the questions i’d already seen either exactly or slightly varied. maybe like 5 AIA questions, and the rest were doable with a basic understanding of the MPEP and how to search it. of course PCT, appeals and rejection of claims was well represented, but i honestly can’t remember how many of each. there wasn’t a single question that i couldn’t find a reasonable answer to either from studying past questions or from a relatively quick lookup, which kinda surprised me. maybe i got lucky with the batch on my exam.
one resource i found useful was the book “The Ultimate Patent Bar Study Guide” by John Watts. good summary of MPEP with a reproduction of almost all the questions on this page and their answers. also had a good section covering the new AIA rules, from which i think i was able to answer all the related questions on the exam correctly, though i did have to search the supplementary materials on the exam for a few details. i just noticed a previous poster also used this book, definitely a good resource, but as stated not enough to pass just by itself.
i have to say the supplementary materials they provide during the exam in addition to the MPEP are very difficult to read through, it’s not indexed so unless you’re good at using the right search term to find the important sections it can be a real time suck wading through it.
the best advice i can give is use a good study guide to become familiar with the MPEP (i did the PLI course), then do all the old exams and know the answers and why (since there will be variations), and know the questions and answers on this page and you should be able to pass with ease.
@happydays, first of all congrats. Hoping to be where you’re at soon.
“i saw a good mix of repeat questions from 00-03, as well as the questions on here. i’d say close to 40% of the questions i’d already seen either exactly or slightly varied. maybe like 5 AIA questions, and the rest were doable with a basic understanding of the MPEP and how to search it…there wasn’t a single question that i couldn’t find a reasonable answer to either from studying past questions or from a relatively quick lookup, which kinda surprised me. maybe i got lucky with the batch on my exam.”
^^^^^—– I WISH(!!!) that this was my experience but it absolutely was not. I would have liked to have had that batch of questions on the exam I took any day! I took it about a month ago and, from what I’m hearing from others, I got a pretty bad batch. Very few word-for-word repeats and, more critically, at least 50% of my exam had little, if anything, to do with the subject matter tested on the 2000-2003 exams (including about a dozen or so AIA questions). It was bizarre to say the least.
Although I knew 600, 700, 1800 and 2100, I’ll admit that my knowledge of the other chapters was not that strong. And, ironically, as fate would have it, that’s where a good 40% of the questions on my exam came from. I had an inordinate amount of questions on my exam from 200, 400, 500 and 900 as well as the AIA. And, as you know, these topics generally do not form the majority of the questions tested on the 2000-2003 exams. The 200 stuff wasn’t that big of a deal but the 400 and 500 stuff threw me. I hadn’t focused on those chapters so when confronted with those questions I didn’t even know where to start. (if I see those same questions now, however, they’re toast!)
So I’ve been stressing to anybody who may be studying for this thing to not make the same mistake I did by relying on the knowledge gained from the 2000-2003 exams. They are necessary but not sufficient.
Also, as you mentioned, knowing how to search the MPEP on exam day is priceless. I was familiar with the index so I was generally able to get to whatever subject I was looking for but on a few questions with really long answer choices it was difficult to identify the correct search terms to use in the first place. I ran into a few of those.
Hopefully next time I’ll have a better batch and will be able to report back with some good news.
HappyDays and Yoyo,
Happy: MANY congrats to you on your accomplishment! We’re glad that you found our free resources helpful and instrumental to your passing, and we hope to continue to be able to help people pass the exam by providing these resources.
As we’ve believed from the start, one of the essentials to passing is getting familiar with questions (spending time reviewing, reading, learning..by practice). This is one of the elements we built our Wysebridge PRO membership around, the ability to practice exam questions, real past exams, completely randomized exams, exams by chapter….as well as tracking your answers to help you tailor your studies and reviews.
Yoyo,
All the best to you as you wrap up your studies. If you have any questions or concerns about material, what’s being tested, etc…please feel free to email (info@wysebridge.com) and I’ll be sure to respond (just throw your username in the subject so I know it’s from you!)
All the best!
~Bfusion
http://www.wysebridge.com
Happy: I just realized it was the previous poster who used Wysebridge! Congrats to both you and “Whew!”
Had the exam 7/22/2013
Got tons of help and useful tips from this site, thank you so very much everyone!
Trying my best to remember what I had, in general, I had quite some repeated questions.
Two new questions about post-grant review and derivation proceedings, not in MPEP, but in the reference material provided. Need to know when and who can file, and what they are for.
variation of mood dust
PCT filing date, non-english application date is the US RO receive data
supplementary oath can be treated as amendment in Reissue
notice of appeal need fee or not
Can missing drawing be part of IA or not if submitted within 30 days of filing and w.o. new matter
IDS after notice of allowance, how to get admitted, time and methods
what is ok with assignee’s signature? small entity status assertion
USC 112 paragraph 6, means for and steps for
what are the means for ‘consisits of , consists essentially of, comprising of, etc
1.131 Affidavits
what can not be send by fax?
Hey Guys,
I took the patent bar in the second half of July 2013 and passed (for the “preliminary pass”). I only studied for 1-2 weeks, probably got around 40 hours of studying in total, but I’m already a practising attorney doing patent litigation, so I didn’t really need as much study. I used this website a bunch, so I wanted to give back a little and update everyone on the CURRENT STATUS OF THE EXAM AS OF JULY 2013.
1. Plenty of repeats. I’d say 15-20 direct repeats, and if you could questions that tested the same concept, there were probably around 30. Also, since these were repeated concepts, I’m assuming most of them probably weren’t under beta testing. So just to be clear, by spending a few hours knowing the repeated questions mentioned on this website, you can get almost HALF your passing score with almost no work.
2. By far the highest tested topic/chapter was 2100, with at least 20 questions. Around 10 PCT questions mostly testing the same concepts as the repeat questions on this site (foreign national filing applications at US RO, elements of a complete application to get a filing date, etc.).
3. There were probably 10-15 AIA questions, most were really easy. The AIA materials are VERY easy to search through, because the questions are straightforward. If you’re asking about the staying a civil action for inter partes review, just search for “stay” and it takes you right to the answer. Don’t freak out about them testing the new AIA: if you know the basics (how long after issuance you can request the various types of Review; the structure of the new 102; basic changes to Oath/Dec; types of prior art relied upon in the various reviews) you’ll be fine.
4. Overall I found the test a lot easier than I was expecting… probably 5-7 questions that I wasn’t sure about. I used someone else’s PLI materials (just the notes) that didn’t have the AIA stuff, so I just used the USPTO materials for AIA. I used this site for the repeat questions, and once again, studying the repeat materials is the most worthwhile thing you can do. The day before the test, just sit down and read through all the repeat questions once against from start to finish. Free points.
One last thing, when you get a preliminary pass, do they tell you your actual score when they send you the official letter?
@ZK2K – congrats on passing. I’m glad that YOU personally found the test to be easy but just wanted to be clear, objectively speaking this test is not easy.
For anybody unfamiliar with the exam, it should be noted that 2 weeks of studying is NOT, repeat, NOT normal. As ZK2K mentioned, he’s a professional, folks. Don’t try this at home.
Hello,
I just received my letter today confirming that I passed the exam. I took the exam on 7/17. My study routine was to listen to all of the PLI lectures, with special focus on AIA materials. I also did all the PLI “Prime Questions” and made single but thorough pass through the old exams, making sure I remembered the correct answers and reasoning. When I got my preliminary pass and the letter, I did not receive any type of score indication.
At least 12-15 exam questions came from the new materials not yet in the MPEP. Do yourself a favor and read through those Federal Register Notices, paying close attention to filing deadlines and the types of info listed by ZK2K above in the discussion. I saw maybe 10 old questions from the released exams. I am working in the field, which was helpful for some background. I still took a full two weeks off to study right before the exam. I recommend leaving lots of time to get ready before you schedule because the costs of rescheduling/reapplying can rack up quickly.
Best of luck!
Hi…thanks for your post. I am preparing for the exam and I work in the patent field as well, but couldn’t manage time to prepare for the exam in a regular basis for my work. Since you have the similar situation as me, I was wondering how long did it take you to prepare for the Exam and how many hours you used to put in a week?
Thanks!
Amy,
How’s your studying coming along?
Also, as a reminder & heads up for everyone, the USPTO announced changes to the exam coming in January. Still a way off, but…it’s not that far away!
We wrote a post about it (http://www.wysebridge.com/blog)…and also have a bunch of other study materials (some are still free!).
All the best!
~Bfusion
For those wanting a bare bones starting point for the AIA changes, I recommend checking out these slides http://www.slideshare.net/toddjuneau/the-america-invents-actasof-sept2012-patent-law-changes-summary
(just came across this after googling “AIA summary”)
Understanding these basics for inter partes review, post grant review, supplemental examination, etc. for these slides makes reading the Federal Register Notices a lot less daunting. It certainly worked for me.
Good Luck to all.
Thanks to these most recent posters. Very helpful and all the best!!!
Anyone else taken the test recently? I’m taking it this week would appreciate any comments at all
Cheers..
Hey all,
Just passed the exam yesterday, 2nd try, extremely relieved and very hungover. My first time taking the exam was in late March (missed the pass by 2 questions), just before the AIA changes took place. I used the updated PLI course to study. After taking it twice, both before and after the AIA changes took place, this is what I noticed:
The exam is relatively the same both pre and post 4/02/13. It primarily constitutes (maybe 75-80%) questions based on pre-AIA material and I have a feeling the questions based on the new material could be the “test” questions. This isn’t to say you shouldn’t study the new material (new 102, IPR, PGR, derivation proceedings, etc), but it definitely wasn’t a huge focus of the exam (at least mine).
Something that I’d like to echo that other people have mentioned: While the bulk of the material is still coming from 2100 and 700 there was a lot of material coming from many different chapters of the MPEP. I probably had 20-25 questions coming from 100, 300, 500, 600, 800, 1200, 1800, 2200.
If I were to give one piece of advice I would say this: Be extremely familiar with the MPEP and know how to immediately identify the chapter the concept of a question is concerned with. I cannot stress enough how important it is to be able to effectively navigate the MPEP. During my 1st try I wasn’t that familiar with it and I think that is the primary reason I did not pass. This time, however, I probably used the MPEP to look up at least 80/100 questions. Some of the questions deal with very vague and specific material that you would never know to study but the answers are recited almost verbatim in the correct MPEP chapter. To attain familiarity do hundreds of repeat questions for practice. Also, regarding repeats, I had maybe 10, mostly variants, not direct repeats.
Anyways, my take away point is that the exam, while difficult, is still very passable. Do and understand repeats, familiarize yourself with the MPEP and attain a basic knowledge of the new AIA changes and you’ll be golden. Good luck all!
SweatsnSweaters,
Congrats on the pass (and hope you are STILL celebrating). All the best to you!
~Bfusion
http://www.wysebridge.com
@SweatsnsweaterS: thanks for giving us the heads up. I’m taking it again soon and I echo basically everything you just said. I definitely noticed a lot more questions from the other chapters besides 700 and 2100 when I took it last month. Also I had maybe 12 AIA quetions on my entire exam. The rest were all pre-AIA.
@ FirsttoFile (and others!),
From the data we’ve been compiling on the frequency of questions being repeated, it does appear (as you and sweatsnsweaters mentioned) that:
1) there are still a good number of repeats.
Also
2) Questions we haven’t seen asked in a while are showing up on the exam as well, almost as if they are cycling back through.
We have this information, links to the questions, over at Wysebridge Patent Bar Review (www.wysebridge.com). These charts are accessible through the PRO portion of the site.
All the best as you all study!
~Bfusion
Any one else recently take the test? We are still out here listening
People are definitely still taking it. The problem is the non-disclosure agreement that the USPTO is forcing people to sign.
How long has it been taking people to hear from the USPTO after applying to take the exam? I’m a category A applicant and my application has been pending for over 4 weeks. I was hoping to take the test before I start law school in a week and a half!
Hi Jennie,
It usually takes 2-4 weeks (not sure if there is a rhyme or reason to it really, probably varies based on # of apps coming in). If it goes much longer, I’d contact to check the status.
All the best to you as you study!
~Bfusion
http://www.wysebridge.com
Just passed today!!! This was my second time taking it. (First time got a 68)
I first took it last month after studying off and on since January. I’m an IP attorney so it was hard for me to find the time to dedicate to it. Which brings me to my first point – you do not need PLI. At all. I had a patent attorney friend forward me the PLI lectures and I listened to the first few sessions and once I hear John White say that you’ll be listening to him for another 40 or 50 hours or whatever it was I promptly hit the stop button and started studying on my own. Don’t get me wrong, I’m sure I put in more than 40 hours total, but that was 40 hours well spent actually taking practice exams and learning the concepts talked about on this website. I literally did not have time to listen to a lecture for 40 hours on top of studying for an additional 40, 50, 60 hours or however long it took. So that’s point #1.
Now having taken the dang thing twice I’ll try to organize this by what was helpful and what was not.
On my first run I used this website which is extremely helpful. I printed off the past exams and used this website to figure out which questions were the repeat questions and I spent extra time making sure I understood the right and wrong answers for each. There’s really no way of getting around this process. You have to do the past exams! And not just to memorize the answers. You really need to understand the concepts. The discussions on this site regarding the various question topics are helpful. Use them.
Unfortunately for me, from the time I started studying in January until the time I took the dang thing in July the test had literally changed on April 2 to incorporate the AIA materials. As you guys know there’s not much out there about the AIA. My first time around I tried to get my AIA info from law firm websites and on-line study guides from courses that claimed to have the latest on the AIA. Not helpful.
On my second time around I simply went here:
http://www.uspto.gov/aia_implementation/faq.jsp
Very Helpful. In fact, if you know the info from these 5 links then you’re golden:
http://www.uspto.gov/aia_implementation/faqs_first_inventor.jsp
and
http://www.uspto.gov/aia_implementation/faqs_post_grant_review.jsp
and
http://www.uspto.gov/aia_implementation/faqs_inter_partes_reexam.jsp
and
http://www.uspto.gov/aia_implementation/faqs_inter_partes_review.jsp
and
http://www.uspto.gov/aia_implementation/faqs-supplemental-exam.jsp
My first time around I had about 10 questions on the AIA. My second time around there were about the same number. The rest were (A) questions you’ve seen from the past exams, (B) variants or (C) other chapters of the MPEP that were not heavily tested on the past exams (ie. 100, 400, 500).
On exam day, things I did differently:
On my first time around I sat down and ran through the exam one time answering whatever questions I knew off the top of my head WITHOUT USING THE MPEP. Then I went back through to get the harder questions which required me to actually look something up in the MPEP. As a general strategy this was effective and left me with plenty of time to tackle the harder questions. However, I wasted time flipping through the Prometric Exam looking for the questions that I had not answered because I forgot where they were. Not helpful.
On my second time around, before I even started the Prometric exam I sat down for about 60 seconds and numbered 1 through 50 on my scratch paper. Then, as I went through the exam using the same strategy that I described above, I wrote down the answer to each question on my scrap paper as I answered it on the Prometric exam, and if I was able to narrow a question down to 2 possible choices, I wrote those two choices down on my scratch paper next to the corresponding numbered question and then moved on to the next question. Then, once I reached the end, I looked at my scratch paper and targeted the questions that I had narrowed down to a 50/50 choice FIRST because I had already taken the time to fight through the analysis of eliminating 3 bad answer choices. AFTER I was done with those, I moved on to the questions where I was not able to eliminate any answer choices. This was very helpful.
The Prometric exam allows you to skip back and forth between questions but you can only skip 1 question at a time and only to the immediately preceding or succeeding question. For example, you can skip from question 34 to question 35 to question 36, but you can’t skip from, say, question 50 all the way back to question 1 with one click. That will literally take 50 clicks as you scroll through all of the questions from 50 down to 1. For this reason, it is important to keep track of your own questions on your scratch paper so that you can quickly pinpoint where you need to go.
Also, as somebody mentioned up above, you want to be familiar with the MPEP. On my first time through, I was only familiar with the big chapters (600, 700, 1800, 2100). What ended up happening on the exam was that if I saw a question coming from another chapter, I would have no idea which chapter it came from. So I would spend valuable minutes trying to use various key words in the Subject Matter Index to figure out which chapter to go to. Not helpful.
On my second time taking the exam, as I studied the past exams I made it a habit to do two things on every question:
1. Get the right answer
2. Tell myself which chapter the answer came from
Very helpful. This allowed me to hone in on the correct chapter for any given problem that I saw on my exam the second time around. Because I had studied this way, I was usually able to skip the step of going to the Subject Matter Index altogether and was able to simply pull up the correct MPEP chapter immediately and start running my search for the answer to each question.
On a related note, it’s probably a good idea to study in front of your computer with the PDF version of the MPEP up on the screen for easy access. The answers that are provided for the past exams don’t always give you the full picture. Sometimes it is necessary to actually go to the chapter in the MPEP where the answer is located and read the entire paragraph(s) where it comes from so that you can fully understand any given concept.
The PDF version of the MPEP is the version that will be used on the actual exam so you might as well get familiar with it:
http://www.uspto.gov/web/offices/pac/mpep/index.html
Another quick word about searching the MPEP on the Prometric exam, once you finally get to the correct chapter and you’re trying to figure out the right answer out of the 5 choices in front of you, try to use unique words contained in each answer choice to guide you to the answer. Sometimes (most times?) the exam lifts entire sections of text straight out of the MPEP and puts them on the exam in the form of an answer choices. This is especially true for those annoying questions that ask which one of the following 5 answer choices accords with the rules. If you run a search using generic words like “prior art” or “best mode” then your search is probably going to return too many results. But to the extent you can use unique words from the answer choices themselves like “Bilski” or even exact phrases like “the examiner has the initial burden” then your search will usually take you directly to the answer.
This is getting a bit long so I’ll leave you with something that I found very helpful but only a select few of you will be able to take advantage of it: IF YOU DON’T PASS ON YOUR FIRST TRY, GO TO THE USPTO TO REVIEW YOUR EXAM!!! Fortunately I’m within driving distance of the USPTO so I went there to review my answers. Very helpful. Even though you can’t write anything down or record any of the answers, you tend to remember the questions that stumped you especially after somebody shows you the right answers. My advice is, if you can swing it, go to the USPTO and review your answers. You get 2 1/2 hours to look over whatever you missed, memorize as much as you can and then run downstairs and write down everything you can remember.
Hope that helps.
I posted this earlier but it had links in it so it never went through. I’m taking the links out so hopefully it will work:
Just recently passed today!!! This was my second time taking it. (First time got a 68)
I first took it last month after studying off and on since January. I’m an IP attorney so it was hard for me to find the time to dedicate to it. Which brings me to my first point – you do not need PLI. At all. I had a patent attorney friend forward me the PLI lectures and I listened to the first few sessions and once I hear John White say that you’ll be listening to him for another 40 or 50 hours or whatever it was I promptly hit the stop button and started studying on my own. Don’t get me wrong, I’m sure I put in more than 40 hours total, but that was 40 hours well spent actually taking practice exams and learning the concepts talked about on this website. I literally did not have time to listen to a lecture for 40 hours on top of studying for an additional 40, 50, 60 hours or however long it took. So that’s point #1.
Now having taken the dang thing twice I’ll try to organize this by what was helpful and what was not.
On my first run I used this website which is extremely helpful. I printed off the past exams and used this website to figure out which questions were the repeat questions and I spent extra time making sure I understood the right and wrong answers for each. There’s really no way of getting around this process. You have to do the past exams! And not just to memorize the answers. You really need to understand the concepts. The discussions on this site regarding the various question topics are helpful. Use them.
Unfortunately for me, from the time I started studying in January until the time I took the dang thing in July the test had literally changed on April 2 to incorporate the AIA materials. As you guys know there’s not much out there about the AIA. My first time around I tried to get my AIA info from law firm websites and on-line study guides from courses that claimed to have the latest on the AIA. Not helpful.
On my second time around I simply went to the uspto dot gov website for teh “AIA Implementation”
Very Helpful. In fact, if you know the info from the following 5 sections on the uspto’s AIA site then you’re golden:
first_inventor
post_grant_review
inter_partes_reexam
inter_partes_review
supplemental-exam
My first time around I had about 10 questions on the AIA. My second time around there were about the same number. The rest were (A) questions you’ve seen from the past exams, (B) variants or (C) other chapters of the MPEP that were not heavily tested on the past exams (ie. 100, 400, 500).
On exam day, things I did differently:
On my first time around I sat down and ran through the exam one time answering whatever questions I knew off the top of my head WITHOUT USING THE MPEP. Then I went back through to get the harder questions which required me to actually look something up in the MPEP. As a general strategy this was effective and left me with plenty of time to tackle the harder questions. However, I wasted time flipping through the Prometric Exam looking for the questions that I had not answered because I forgot where they were. Not helpful.
On my second time around, before I even started the Prometric exam I sat down for about 60 seconds and numbered 1 through 50 on my scratch paper. Then, as I went through the exam using the same strategy that I described above, I wrote down the answer to each question on my scrap paper as I answered it on the Prometric exam, and if I was able to narrow a question down to 2 possible choices, I wrote those two choices down on my scratch paper next to the corresponding numbered question and then moved on to the next question. Then, once I reached the end, I looked at my scratch paper and targeted the questions that I had narrowed down to a 50/50 choice FIRST because I had already taken the time to fight through the analysis of eliminating 3 bad answer choices. AFTER I was done with those, I moved on to the questions where I was not able to eliminate any answer choices. This was very helpful.
The Prometric exam allows you to skip back and forth between questions but you can only skip 1 question at a time and only to the immediately preceding or succeeding question. For example, you can skip from question 34 to question 35 to question 36, but you can’t skip from, say, question 50 all the way back to question 1 with one click. That will literally take 50 clicks as you scroll through all of the questions from 50 down to 1. For this reason, it is important to keep track of your own questions on your scratch paper so that you can quickly pinpoint where you need to go.
Also, as somebody mentioned up above, you want to be familiar with the MPEP. On my first time through, I was only familiar with the big chapters (600, 700, 1800, 2100). What ended up happening on the exam was that if I saw a question coming from another chapter, I would have no idea which chapter it came from. So I would spend valuable minutes trying to use various key words in the Subject Matter Index to figure out which chapter to go to. Not helpful.
On my second time taking the exam, as I studied the past exams I made it a habit to do two things on every question:
1. Get the right answer
2. Tell myself which chapter the answer came from
Very helpful. This allowed me to hone in on the correct chapter for any given problem that I saw on my exam the second time around. Because I had studied this way, I was usually able to skip the step of going to the Subject Matter Index altogether and was able to simply pull up the correct MPEP chapter immediately and start running my search for the answer to each question.
On a related note, it’s probably a good idea to study in front of your computer with the PDF version of the MPEP up on the screen for easy access. The answers that are provided for the past exams don’t always give you the full picture. Sometimes it is necessary to actually go to the chapter in the MPEP where the answer is located and read the entire paragraph(s) where it comes from so that you can fully understand any given concept.
The PDF version of the MPEP on the USPTO site is the version that will be used on the actual exam so you might as well get familiar with it.
Another quick word about searching the MPEP on the Prometric exam, once you finally get to the correct chapter and you’re trying to figure out the right answer out of the 5 choices in front of you, try to use unique words contained in each answer choice to guide you to the answer. Sometimes (most times?) the exam lifts entire sections of text straight out of the MPEP and puts them on the exam in the form of an answer choices. This is especially true for those annoying questions that ask which one of the following 5 answer choices accords with the rules. If you run a search using generic words like “prior art” or “best mode” then your search is probably going to return too many results. But to the extent you can use unique words from the answer choices themselves like “Bilski” or even exact phrases like “the examiner has the initial burden” then your search will usually take you directly to the answer.
This is getting a bit long so I’ll leave you with something that I found very helpful but only a select few of you will be able to take advantage of it: IF YOU DON’T PASS ON YOUR FIRST TRY, GO TO THE USPTO TO REVIEW YOUR EXAM!!! Fortunately I’m within driving distance of the USPTO so I went there to review my answers. Very helpful. Even though you can’t write anything down or record any of the answers, you tend to remember the questions that stumped you especially after somebody shows you the right answers. My advice is, if you can swing it, go to the USPTO and review your answers. You get 2 1/2 hours to look over whatever you missed, memorize as much as you can and then run downstairs and write down everything you can remember.
Hope that helps.
CONGRATS on the pass…and great feedback! What’s your educational background (if you don’t mind me asking), as you’ve got a great qualitative and analytical mind (and willingness to write a helpful post).
Did you have any issues with your computer freezing during the exam?
All the best to you..and many, many congrats again!
~Bfusion
http://www.wysebridge.com
Thanks. When you don’t pass your first time you tend to develop a deeper understanding of the material than what you would have had if you had just passed the stupid thing in the first place.
As far as my background I’m an attorney and an Architectural Engineer which is a bit of a misnomer since Arch. E. combines Electrical Engineering, Mechanical Engineering, Civil Engineering and Computer Science. Architecture is a part of the curriculum as well but only for context since the people who graduate from the program are engineers and not architects.
Didn’t have any problems with my computer crashing.
Hi All,
Just took the exam and did not pass! I studied old PLI and practice exams and thought I was in good shape BUT clearly navigating the MPEP is what took me down. At home I searched and found exact phrases and located answers quickly. I didn’t see many repeats and what looked more to be non-700/2100 material. Are there easy and hard versions out there? Also, ANY tricks on searching MPEP would be greatly appreciated.
So sad I failed
Yes sometimes the test is a lot harder. My first time I got a 68%. Studied for another month, and then got a 58%. It was way harder!
I can relate. Tried the same approach and the same thing happened to me. (See my post above on 8/19/13)
Go to the USPTO to review your exam if you can.
I took the exam last week and passed on my first try. I’m an engineer, zero background and experience in patent prosecution. studied about 4-month part-time, using the PLI material copied from a friend, did 00-03 old exams, and this website has been a great help!
I got very few old repeats < 5 from 00-03 exams and about ~10 repeats from this website, some from the 68 questions others reported by recent test takers. Not much from new AIA, ~5-10 questions on inter partes review, post-grant review, inventor's oath/declaration, new 102 rule, and derivation proceeding. TONS of 103 questions, at least 20. ~5 PCT, many appeal questions, Strongly recommend read all the posts from this website carefully, make sure you understand the concepts being tested. Doing the old exams once is enough.
For some reason I also found the MPEP provided at the exam is a bit hard to search. In the morning session I didn't do much searching, but the afternoon session was much harder, very few repeats. Didn't have any problem with computer crashing.
Good luck to everyone! and thanks again for all the posts!
For past test takers, will the exam will have the Federal Register publications available for searching (i.e, for the new AIA enactments)?
I’m presuming the answer is “no.” Then, for information being tested in those publications, will just have to be memorized as they have yet to make their way into the MPEP, right?
RL,
You will have access to the Federal Registers on the exam!
So, you won’t have to memorize those documents. Sure, you’ll want to know facts and some overarching principals, but don’t waste your time memorizing them.
There are AIA summaries, more of what to expect on the exam day (basically, all those little tips and tricks and “stupid” issues of the exam day that can save you a few points here and there which add up), and a ton of other info over at Wysebridge Patent Bar Review: http://www.wysebridge.com
All the best!
~Bfusion
Hey all,
Just a Reminder (If you missed my post earlier):
The USPTO Patent Bar Exam will be changing again (Jan 24th, 2014). First-to-file will be included, and a bit more. So, if you are thinking/planning on taking the exam, try and get it in before then!
All the best,
~Bfusion
http://www.wysebridge.com
Took the exam yesterday, failed with 55/100. Saw the potter, ABCD–ABCDE reissue twice. like 15-20 103 questions. in hindsight, i shouldnt have disregarded swearing back and rule 131 affidavits. 4-5 board questions. 10 PCT questions. ton of 102 questions, including the now irrelevant sections.
Make an efforts to go over inter partesreview/reexamination/supplemental examination/post grant review. They came up.
Hello Aaron,
Sorry to hear about the exam. Were there a lot of repeats? Thanks.
honestly i only remember seeing one from the 2000-2003 exams.
@Aaron: sorry to hear about the bad news but it’s only temporary. If you got that close this time then you’re in there next time. Took it my first time a few months ago and missed it by 2 lousy points.
The good news is that your exam in September sounds a lot like the 2 exams that I took in August and in July, which means that there’s a STRONG possibility that when you retake it you’re going to see an exam very similar to the one you just took. (up until January 24th that is, then the exam is making a change). So take advantage of that fact and retake it soon. Definitely before January 24.
If it’s at all possible, go to the USPTO and review your exam questions. It was a HUGE part of the reason why I passed my second time.
Sounds like you know where your weaknesses were so study up in those areas and good luck.
Thanks for this website. I passed the exam on the 16th last Monday.
I am selling the PLI’s Patent Bar Review Study Guide 2013 (all new AIA materials and also including supplemental Materials: Inter Partes review, Post-Grant, covered business method, Supplemental Examination, and Derivation Proceedings). In addtion, I an including the book “The Ultimate Patent Bar Study Guide by John Watts”. Both study guide and book are in very clean condition. I am asking for $500 if you are interested. I will give you all hard copies of old exams and answers.
I am in San Francisco.
Hi, Sarah
I am interested in the material. Dose the PLI material include the CDs?
Lily
Thanks.
The course is all online now, not on CDs.
Thanks, Sarah.
So when will the online access code expire? I am thinking of take the test in early Jan 2014?
Can you drop me an email at yxu22@hotmail.com? So we can discuss more?
I am in Ohio. Could you ship the material?
Thanks!
Took the exam at Sep 17th, failed 62/100. Barely see any repeat (<2) from 2000-2003. Many 102/103 questions, and the new materials (~20) including inter partesreview/reexamination/supplemental examination/post grant review. Need to go through this part carefully. Some questions (3 questions) are asking who can sign and who need not sign. Also saw the potter, ABCD–ABCDE reissue twice.
Sorry to hear about it. I noticed that till you really grasped the fundamental of old exams (not just remeber the questions/answers), you would find more repeats in the exam. I took the exam on the 16th, lots of repeats (not exact words by words) in the morning, lots of 103, Bilski, new materials in the afternoon. Just remember, the new material questions are not tricky if you know the basics on these topics. The PLI course provides enough to handle these kinds of questions. I failed the first time on July, 19th with 65%. After that I read chapter 300, 400 (death), 500 (small entity), part of 800, part of 1400, 1800 at least once, 700, 1200, 2100 twice, and review of recent questions and comments on this site. I was able to finish my morning section in 2 h without going to MPEP with 4-5 marked questions. I took about 50 mins to go to MPEP to recheck the marked questions, and final reviews within the remaining time. My afternoon section was more stressful, but I still managed to finish 50 questions in 2h15min. Then I did go to MPEP to recheck marked questions. Luckily, I didn’t need to look up anthing on all new AIA -related topics. I had to say that PLI did very good jobs on preps of all new materials.
Thanks, Sarah, I feel like that more readings on the MPEP would help me better under my situation. Also read the new materials. Plan to take another one soon, 8% to go.
Balance, took the exam the same day, sounds like we got the exact same exam. Beat me though, i got a 55%. I feel partially screwed over because of how few repeats we got.
I took the test and passed today. Here is what I did:
-Studied 300+ hours within 3 months and progressively added intensity as the test date approached.
-Used 2012 PLI material, OmniPrep, and mypatentbar.com (this site).
-Specifically, listened to the PLI lectures during commutes and immediately after heading to bed, and worked on as many questions as I could possibly get my hands on. Between the 3 sources, I definitely over-studied.
-When working on questions, I did not make a deliberate attempt of memorizing the questions and answers. You will naturally remember most of the questions, and the concepts repeat among the practice questions. I did everything in my power to try to understand every single question as to why an answer is correct or incorrect. Learn the concepts. There are no shortcuts for this test.
-OmniPrep has a ton of post-2011 (including AIA) questions that they’ve farmed from Prometric. Those were invaluable and definitely worth the $495 alone. However, they are not the exact questions but a test taker’s recollection of what they encountered during farming expeditions.
-Work on every single question posted on this website and read all the comments. Be an active learner. It will take a long time, but you will encounter many different trains of thoughts and learn how to better interpret meanings and concepts of the MPEP material from the contributors.
My experience and opinion of the test:
I was able to complete the morning session with 1.5 hours remaining, which I didn’t need. I probably used the MPEP twice. However, the second half was much harder. I probably had 45 minutes left to go through marked questions, which I had a lot of. Had I not over-studied, the second half would have been a train wreck and would have resulted in a failing result.
In my opinion, the AIA made the exam easier. The questions were basic, and can easily be searched in the Federal Register notes that were provided. The way I determined which were the beta test questions were to look at the list of source materials provided on the USPTO website for the exam, and deduced those that were newest additions compared to the old source materials located on the same page (as of this writing). The new source materials are most likely producing the beta questions. Another tip is to work on the shorter-length questions first. The longer questions drained a lot of my brain power, and they are worth the same amount. However, don’t just entirely skip over the long questions because sometimes it is a very easy concept that is disguised by its length.
That is all I can push my brain to write about at the moment. I’m exhausted.
I am also selling my studying material at a steep discount as I do not have a use for them anymore. All of my materials include:
1. 2012 PLI: lectures, study guide, pre-course materials, and supplement materials. The supplemental materials were marked up before I had possession of them, but they are still usable.
2. OmniPrep: study guide, (old) question bank, AIA mini review, (new) question bank.
I am selling everything for $600—a value well over $2000. PLI and OmniPrep wont be happy about this, but I’m sure they’ll be grateful for the free advertisement of their products. If you are interested, please leave an email address and I will get in touch with you shortly thereafter.
Good luck to all!
RL –
I’m interested in purchasing your study materials. Since Omniprep is web-based are you selling your login/password info or are you just selling the physical materials? I’m a former SF resident, now living in San Diego. To avoid any shipping costs – my mother in law lives in SF and would happily pick materials up from you and ship to me herself. Would love to hear from you! My email is sarahwoodson13@gmail dot com. Thanks!
By the way, I’m in San Francisco.
Just curious, what is your scientific background? I passed on the 16th and live in SF. I have Ph.D. in organic chemistry, worked in biotech before.
Hey All,
As someone who’s been following this exam for a while, there are some trends and patterns, and often, lots of confusion.
First: Repeats. This is a highly debated and speculated category. In the past (we’re talking 7+ years ago) you could literally bank on seeing dozens of word for word repeats (mentors and older patent practitioners have said this is how they studied and passed the exam). This is NO longer the case. Why? Because you’ll probably only, in reality, see 5-10 (if that) WORD FOR WORD repeats. what you are more likely to encounter, are variants of questions, or completely brand “new” questions. However, the more time you spend practicing questions, learning material (and HOW to search), you’ll find yourself feeling like you are encountering a repeat (or, rather, that you actually know something about the question, rather than it just being a shot in the dark to answer). So, often, when you see people post they saw 20-30 repeats, many times they are variants, or were questions that by studying them, helped them answer an entirely different question on the exam.
Also, when relying on people’s recaps of questions they’ve seen on an exam, bear in mind the “exposure” differences test-takers might have with questions. For example, compare two individuals, one of whom only looked at say the 2002-2003 exams (and never opened the 2001 exams), the other, looked at all the old exams (1999-2003) and “repeat” questions. The second individual, come exam time, has the potential to report a much higher repeat level than the first individual, simply because of his/her exposure to more questions.
All that to say: It’s becoming more and more important to focus more on finding the balance of knowing some facts, some material, countered with developing your skills to search and find material in the MPEP. If you expect that all you need to do to pass is to memorize repeats, well, your likelihood of passing is much much lower.
We’ve (over at Wysebridge Patent Bar Review) have developed a program that allows you (and we help you) to learn the basics, learn the important elements of the exam, and practice (using old question databases, new exam questions sourced from the exams, and questions we’ve written to help you lock in important facts and rules. We also are continually expanding our post AIA question database to provide more and more material to familiarize yourself with).
Feel free to email us (info@wysebridge.com) if you have any questions, and as always, we have a bunch of free material on the site as well. We’re also the most cost-effective (our PRO package is only $349), should you decide to utilize our study program! And, we occasionally give away $50 discounts via email newsletter, which also keeps you up-to-date on exam changes, study tips, and other important highlights of the exam.
All the best,
Bfusion
http://www.wysebridge.com
I’ve been looking on here for a while, never really posted. But I was set up to take the exam a few days ago at a prometric location. In the first ten minutes the exam crashed 3 times. Then they had me switch stations. Things were going smooth for about 20 minutes and then crashed again. They asked me to reschedule. I’m frustrated over the emotional trauma but a little glad to have gotten a short glimpse at some questions.
I will be going in sometime this week or next week to take the exam and hopefully everything goes smooth.
and Bfusion, you’ve been very helpful on this forum.
Sorry to hear that. But like you said, at least on the bright side you got to see a few questions first before the thing died and (I’m presuming) the crash won’t count against you.
Jagsir,
OUCH. Oh man, that’s awful. I can’t even imagine, but…as you said, you got a glimpse and a little leg up on the whole thing. Keep us posted how things go for you…if I (or wysebridge) can be of help, please don’t hesitate to reach out/contact us.
All the best,
~Bfusion
http://www.wysebridge.com
So do we still have to remember the old rules that are now substituted in AIA? For example, do they specify an old filing date and want us to apply the older rules?
thanks so much in advance
LS,
Short Answer: Yes.
You’ll need to know both sets of rules, and specifically, be aware of the important dates and facts which would kick in the new rules/laws/guides.
As for your example, this does happen, HOWEVER, make sure that just because you see a pre-AIA implementation date / rule effective date, you don’t automatically go with the old rule. There very well could be some fact in the question that would then call the new rules/law into play.
So I know that it is free to obtain status information of (eligible) applications . Have been searching around in MPEP 100 and the rules section, but can not find a specific sentence saying this. It is so frustrating that I can not even find such a stupid little thing…. Where t-f can I find this information? Your help will be greatly appreciated.
LS,
For Patents (quick search) found 707.05 7.82.03 How To Obtain Copies of U.S. Patents and U.S. Patent Application Publications:
“All U.S. patents and U.S. patent application publications are available free of charge from the USPTO web site (www.uspto.gov/patft/index.html), for a fee from the Office of Public Records (http://ebiz1.uspto.gov/oems25p/index.html), and from commercial sources. Copies are also available at the Patent and Trademark Resource Centers (PTRCs). A list of the PTRCs may be found on the USPTO web site(www.uspto.gov/products/library/ptdl/locations/index.jsp). Additionally, a simple new feature in the Office’s Private Patent Application Information Retrieval system (PAIR), E-Patent Reference, is available for downloading and printing of U.S. patents and U.S. patent application publications cited in U.S. Office Actions.”
For Status: “Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free)”
Hope this helps!
BTW, for AIA material and help, we have summaries, guides, test questions, and more over at Wysebridge Patent Bar Review.
Best,
Bfusion
http://www.wysebridge.com
LS,
For Patents (quick search) found 707.05 7.82.03 How To Obtain Copies of U.S. Patents and U.S. Patent Application Publications:
“All U.S. patents and U.S. patent application publications are available free of charge from the USPTO web site, for a fee from the Office of Public Records, and from commercial sources. Copies are also available at the Patent and Trademark Resource Centers (PTRCs). Additionally, a simple new feature in the Office’s Private Patent Application Information Retrieval system (PAIR), E-Patent Reference, is available for downloading and printing of U.S. patents and U.S. patent application publications cited in U.S. Office Actions.”
For Status: “Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free)”
Hope this helps!
BTW, for AIA material and help, we have summaries, guides, test questions, and more over at Wysebridge Patent Bar Review.
Best,
Bfusion
http://www.wysebridge.com
Just took the patent bar yesterday. Passed on my first try. Studied using PLI. Saw 10-15 verbatim repeats from the 02-03 tests. I wish I would have spent more time on this site looking through the current questions section because I saw around 10 that I recognized from this page. A good deal of obscure PCT questions. Surprisingly not much on appeal.
I am on a one month study plan, what would you guys recommend as the best study material?!
I know PLI is good, but its soo extensive. Any opinion on Bullseye? Wysebridge? Wysebridge Pro? Patent Education Series? PatBar?
Im very familiar with the MPEP and navigate it proficiently and know Patent Law well, I work in Patent Law, and am involved in prosecution already, just haven’t gotten around to take the exam.
I need to pass this thing and I need to do it SOON!
Im thinking of doing all the questions available, and reading their answer explanations. What do you guys recommend as far as study material and techniques? How representative are these questions of the actual questions?
Honestly, you don’t NEED to pay for a study course. And I’m not trying to be funny. You need to review the past exams which you can get from this website for free, and when you review them you need to pay special attention to the repeat question in years 2000-2003 (and especially years 2003 and 2003).
Then you need to go here:
USPTO (dot) GOV > AIA IMPLEMENTATION > FAQ
And know the following 5 topics on that site:
first_inventor
post_grant_review
inter_partes_reexam
inter_partes_review
supplemental-exam
The exam will pull anywhere from about 10 to 15 questions from the AIA. The rest (the majority of the exam) will be pre-AIA from the chapters that you are familiar with (600, 700, 1800, 2100) and also from chapters 100, 400 and 500 (pay attention to what happens when an inventor dies).
That’s it in a nutshell.
Good luck.
Hey Sam,
What First to File said was “true” in that, you don’t have to pay for a program/ However, what you have to weigh out is your time/energy/effort worth it trying to sort through answers (especially with free materials) and whether things are right, wrong, etc.
Frankly, it’s what we’re doing (and always working to hone and improve) is how to best consolidate, create, and structure our study materials and practice simulators to help you pass efficiently. This is exam is part knowledge, part skill. If you focus on only one or the other, you’re going to have a much hard time.
The other aspect (that First 2 file mentioned) is studying review/repeat questions. It is helpful to study repeats (it helps you get a feel of how the USPTO asks / phrases things, etc, and the more you test yourself, the more you’ll remember) What we did at wysebridge, is analyze and report every repeated question on the exam, and how often it shows up, month by month, over the past 18 months. This is a really powerful way to see and determine which questions are repeated, when, and which topics are more heavily tested.
First2file is also correct in that the majority of questions come from the major 5-6 chapters of the exam. But, you have to get used to looking up information, and learning how to search and find information along with understanding the generalities of the material. Again, it’s a balance.
Sam, all the best to you! If you have any more questions, please feel free to reach out or email me!
Best,
Bfusion
http://www.wysebridge.com
Sam:
I was in your shoes, work in BIG LAW. Associate cutbacks schedlued last year but the lead patent partner said if I could get a USPTO reg number he would bring me into his section at a higher salary as I had a BSEE (US Naval Academy) and my service before law school. I paid for and took PLI on my own dime, and now am duly licensed and prosecuting. Highly suggest you spring for the PLI course rather than take the cheap route and elevate the risk you will not pass as per your objective. I hold several patents, and had a solid overview of patent law from Law School courses, but this exam is based on the MPEP, AND KNOWING PATENT LAW ALONE IS NOT ENOUGH TO PASS THIS EXAM. This exam is a seperate beast all-together. If you really can not afford to fail and do not have time to surf this site and work out the old postings take PLI. If time is not an issue, yes, its possible to carve out the right materials from this site and pass the exam…but that will take longer and has less certainty than PLI, which will law it all out for you.
Just throwing this out there (and hoping for confirmation). If I’m wrong, please let me know and I’ll remove, but I believe I’m correct.
After the AIA implementation, the answer to Question 46 of the April 2001 PM test is no longer (A).
The RCE price has risen recently (Google RCE price under AIA) and is now NOT equal to the basic filing fee of a NP app.
Taking the exam on 10/28/13. Wish me luck!
Good luck!!! Please do come back with suggestions, comments or anything you think will help. Thanks!
Took it on 10/15. Got a 62. Have not received failure letter yet. Any chance that there were enough “bad” questions such that they pass me?
Ric,
Sadly, I can’t say I’ve heard of an exam result being overturned on more than 2 questions. A 62%…equates to having gotten ~ 56 of the scored questions correct. They would have to “throw out” another 7 questions.
If you live near DC, you could go and take a look at your answers, but, even then, you’ll have to try and remember everything and make a case.
Best bet: Write everything you remember down (if you haven’t already), regroup, and take the exam before Jan 24th.
Hang in there…you’re really close. If I/we can be any help, please don’t hesitate to reach out!
~Bfusion
http://www.wysebridge.com
I took the exam today and got a 56% the exam is definitely the exam is getting more AIA heavy and the were 5-10 on IPR and PGR. 6 were repeats from old exams. I think more time is better spent working on search skills. I know I will need a prep course now, though. I have a question about retaking, though? Do you just pay $150 or do you need to include the fee for processing the exam, too?
Also, how up-to-date is the AIA material offered by wysebridge?
Hey Maz,
Sorry to hear about the results…and, agreed, learning about how to effectively search is a skill you have to practice and hone in on for this exam.
Per the GRB…looks like it’s $240. (www.uspto.gov/ip/boards/oed/GRB_March_2012.pdf)
You have to wait thirty days from the 21st (or when you took your exam) before retaking the examination.
An individual reapplying shall: (A) File a completed application for registration form wherein all
requested information and supporting documents are furnished, (B) Pay the fees required by § 1.21(a)(1) of this subchapter..
$40.00 non-refundable application fee as required by 37 CFR § 1.21(a)(1)
$200.00 registration examination fee payable to the United States Patent and Trademark Office for test administration by a commercial entity. [37 CFR § 1.21(a)(1)(ii)(A)].
For Wysebridge, we are completely up-to-date with the AIA materials, and come January, will unroll the next set of changes/updates to match the exam (but hopefully, you’ll be passed by then).
All the best,
Bfusion
where do I find the new AIA rules in the MPEP? Where can I get a copy a searchable federal register notices for the new AIA rules?
Miesha,
Most of the AIA rules are not incorporated into the MPEP yet, as the latest edition of the MPEP (E8R9) was released prior to the AIA implementation.
Here’s the USPTO archive/database for the federal registers (www.uspto.gov/news/fedreg/fr_2012.jsp).
All the best Miesha!
~Bfusion
http://www.wysebridge.com
I’m taking the test on the 29th. I’m scoring in the mid 90’s on the old (00-03) practice exams. What should I be doing this last week to prepare? 600/700/1200/1800/2100 and the AIA?
Also, is there a summary anywhere regarding how to correct inventorship/when to use what particular petition etc? I’m having a hard time keeping the rules straight for that.
Any help would be much appreciated. Thanks!!!
After AIA, ADS for correction of inventorship for applications (new rule 1.48, can be found in register notes) and re-issue for patents by the owner if not all of inventors agree with the correction (MPEP 1412.04) and rule 1.324 if all inventors agree with the correction.
Hi, taking the first week of December. How have you prepared for AIA? I have a strong grasp on post-grant proceedings but am worried about the federal register search.
Does anybody know if the consolidated rules and laws are available at the exam? I just recently realized that they have a lot of updates compared to Rev 9., Aug 2012.
Has anyone ever used Patent Education Series as their review course? I paid $300 for it, and it is pretty useless.
Taking the exam the first week of December. It will be my second time (took August 2012 and failed by two questions.)
Feeling good about all old exams but nervous about new material not included in my 2012 PLI.
How is the AIA information available? Is it a bunch of different federal register documents you have to search? Is it all combined in one?
Thanks!
I’m curious how useful it is to review the old exam questions from 1997-2003 in light with the updated MPEP, AIA, Federal Register Notices, etc.. Are there many instances were the questions are no longer relevant or have a different answer?
Thanks
Hey all,
I know there is a lot of questioning over the AIA, what material is available. I’ll try and help answer:
Amy & Farrah: The appendices R and L are available on the exam. BUT, for most of the AIA, you will have additional source materials in the form of federal register documents. The reason being, a lot of changes as a result of the AIA are not incorporated into the MPEP yet. It’s not one document, but multiple drop down options (so, to answer another question, yes, you’ll have to search through more than one document). But, they tend to label each FR appropriately so that helps.
George: It depends on what/how you look at the old questions. They are useful in terms of getting a feel for what/how the USPTO words and asks things. They are also helpful in helping you learn what is still 50-70% of the exam material being tested. BUT, yes, you will encounter questions that based on the new rules and laws, are either null and void, or provide the wrong answer, OR reference parts of the MPEP not in existence.
Again, it’s good to review not just the 1997-2003 questions, but to know what questions post 2003 are repeated and asked, and the variants thereof. We have that info at wysebridge patent bar review (we are still providing our frequency chart of every repeated question on the exam, and how many times per month it’s shown up). But, you also want to make sure you practice on questions that refer to and are sourced from AIA materials (which we provide also). Again, the questions are designed to help you learn the material, but also learn the skills to find the answers in the MPEP. Searching, more than ever, is an essential skill of this exam.
All the best to you all. Hang in there. Not that it necessarily “helps” but, many current patent attorneys have said they aren’t sure if they could pass the exam as it is currently. Is the exam harder now? Yes. But, it’s passable and doable. The exam is part knowledge and part skill, so make sure as you study, and if you chose a study program, you get both.
~Bfusion
Thanks!
Thank you Bfusion!
Took the Patent Bar last Friday (25th) and received a provisional pass. How long until I get the official pass? I’ll give you my general schedule, what supplements I used, and an overview of the test (NOTE: I did not have to sign any confidentiality form as some other people above stated. May have been an oversight by the Prometric guy or the PTO stopped using them).
I started studying the week before Labor Day. I used Patent Education Series. It wasn’t quite as intense as my Barbri bar review program, but I found the summaries very helpful. I basically spent about three hours a day for a month going through their old summaries and physically writing summaries of their summaries myself. I paid close attention to 500, 600, 700, 1200, 1800, and 2100, as well as the AIA stuff.
After about a month, I went through and took (not skimmed through to memorize answers– physically took 1/2 of a test with the MPEP open and using it to find answers) all of the 1997-2003 tests. I would do half of one test per day. On weekends I would do both an AM and a PM test. This was probably the most helpful part of my studying– I really learned how to search the MPEP and find where the correct answers are.
Next: I took the last two weeks off of work before the test and went through all of the current/repeat questions on this site and read the comments. EXTREMELY helpful as well, as I saw a number of NEW (non-97 to 03) questions and basically laughed to myself as I knew the answer based on previous comments. Make sure to do this.
NOW: old questions. Overall, I probably got 6 or so direct repeats from 97-03 tests. Here a few I recall.
102(e) Potter question
No more than 3 dependent claims (WRONG)
Underlining and bracketing question for reissues
Q2 process at 150 degrees.
There were maybe 1 or 2 more but I don’t remember them.
In terms of new stuff:
12 or so AIA questions. These were easy to look up–I had no problem finishing these quickly because they were basic. I really had no practice searching through the references because I had no questions except the 14 or so practice questions from Patent Education Series (there were probably 2 questions that were verbatim from the PES databank though, so that helped). However, again, this stuff was easy as long as you knew the basics.
From the 68 questions/comments, I probably had 6 or 8 repeats. I remember:
94 year old grandpa, daughter calls.
Red ink.
45 days Japan.
Multiplicity.
Advisory Action (variant–Action sent before 3 months).
That’s really all I recall right now. As you can see, in total, I maybe knew 17-18 questions without having to look them up. That’s why it’s important to understand the old exams wrong answers and how to look up info on the MPEP.
Good luck to you all!
Congrats!! Thanks for coming back to provide help. Have you got a lot of PCT? When you said “I took the last two weeks off of work before the test and went through all of the current/repeat questions on this site”, what do you mean “current/repeat”? I only saw “repeat questions” and the 68 one. Could you explain it? Thanks!
I meant the 68 Q’s and the repeats.
I also probably had 8 or so PCT questions (including a few variants on the what is the 102(e) prior art date) and maybe 2 on what happens when an international files a US app–> forwarded to IB).
Surprisingly there were very few (~5) appeals questions. Lots of obviousness (~16) and inventorship/death of inventor/how to change inventorship (probably 8 or so, as hard as it is to believe).
Congratulations! And thanks for providing the debrief on the test.
I just took the exam and get a preliminary pass last week. First time taker and had been studying it for about 4-5 months.
I didn’t see a lot of repeats from the old exams(5-6 at the most) and about 10 AIA questions or maybe more. It has many new questions that really test your knowledge on the MPEP. I would consider them pretty hard and not very reseachable.
The program i use is Omni patent bar review. Personally, i think it’s very helpful on preparing the exam mainly because it has an up to date question bank and a lot of newer questions i saw on the exam were the questions I had seen in their question bank. I have the question bank with the latest questions for sale. Let me know if you are interested.
Hi, HappyPath,
I am quite interested in the question bank you offer for sale here. Would you please leave me your email so I can contact you for more details?
Thanks!
Do you still have the Omni material for sale? If so, I am interested.
Hey Seattle and Happy,
Congrats on the Pass! A great accomplishment!
As a Reminder to Everyone: TAKE THE EXAM SOON! IF you need an incentive to study, the exam will be changing (getting harder) in less than 3 months:
CHANGE DATE: JAN 24th, 2014.
Make sure you get ahold of something that will help you prepare and pass before then, as passing rates always, always drop off after major changes.
Wysebridge Patent Bar Review Runs $50 discounts now and then for members who sign up (making the PRO membership access $299).
With a PRO membership you get all inclusive materials including summaries, reviews, question databases, simulators, frequency charts of commonly repeated questions, and an entire AIA study suite outlining changes, and practice questions to help you learn and study.
But, whatever you do, try and get this exam over with before then!
All the best,
~Bfusion
Has anyone used Wysebridge recently and passed the exam? Can you rely entirely on it? Any insight will be helpful.
Thanks,
Hi everyone,
I am studying the 68Q hard here. I realize that Q43-48 are missing. Were they taken off intentionally? Also, some people on this site keep saying new questions. Do they mean the 68Q or somewhere else? I don’t seem to see people reporting new questions. The 68Q list is not dynamic, is it? Testing date is very close. Any input is appreciated!!
Amy/anyone,
I am taking the test November 15th, does anyone want to study, by reviewing/asking questions over skype/gchat?
Thanks!
I passed my test a little over a month ago – does anyone know how long it takes to get your registration number?
There are other comments on here with this info, but not easy to find.
My timeline:
2/25 passed exam
3/1 received letter from PTO with official notice of results
3/7 mailed fees to PTO
3/7 saw name on registration notices posted online by PTO
4/22 saw name on USPTO website with reg. number
5/1 received PKI code from PTO
5/3 completed PKI confirmation, able to e-file
I passed!!
I used the PLI course a while ago but then didn’t touch the patent stuff at all for about a year. So in the three weeks I had to study for the exam, I reviewed my PLI course (which gave me a solid understanding of MPEP but unfortunately did not cover the new changes) and signed up for Wysebridge. I have to say that the old question collection on the Wysebridge website is GOLD. Especially when you do not have enough time to find these stuff in internet yourself.
To all of you who have yet to pass: no worries, it’s doable and you WILL pass. Best of luck!
do you mind to leave your contact information.
Thanks so much.
I desperately need help.
Also, Bryan @ Wysebridge typically answers your email and questions really promptly. It’s a good feeling to have somebody to ask when you are prepping/panicking for the exam.
I passed today after second trial. I still think my Sep. exam is more difficult than Nov. exam. In Nov. exam, I see >20 repeats or even 30 repeats from 02/03, I got all the questions mentioned by recent takers. And there are 3 questions about appeal of non-final rejection of continuation application. Somehow today I got much less new AIA material related. So catch the wind and best wishes for the others.
Balance,
Congrats! All the best to you!
~Bfusion
Where do I find 37 cfr 42 in the mpep?
I think u mean 37CFR1.42 so u go to mpep -rules(r) and just enter 1.42 you will get it ( no need to enter 37CFR 1.42 or CFR 1.42)
By entering 42 you won’t find it !
With 1.42 in mpep chapters u won’t know which one to choose so go in the MPEP rules
Hope this helps !
how to find 37 cfr 42 in the mpep?
Provisional pass today, 11/14. First try. Much harder than the practices I had been doing; very glad I got it out of the way before the January changes. TONS of questions on both obviousness and oaths/declarations (pre- and post-AIA). About 8 questions on ex parte reexam and AIA proceedings (know when to file and basis/standard for instituting). Saw several of the newer repeat questions.
My study: 5 months. PatBar with emphasis on 03/02 exams, Wysebridge chapter summaries and newer repeat questions, this forum for newer repeats and older repeats. I agree with some of the above posters in regards to checking out the FAQs on the PTO website–you should definitely know Derivation, Inter Partes Reexam, Inter Partes Review, Post Grant Review, Supplemental Exam and the basics of First-to-File and the new 102(a).
I can’t remember right which newer repeats I saw (still in shock), but I will try to point them out on the forums. Good luck!
hello,
where can i find the new repeat on this website. people keep talking about it but i could not find them. Please help.
Thanks
Hey All,
As a Reminder to Everyone: TAKE THE EXAM SOON! IF you need an incentive to study, the exam will be changing (getting harder) in less than 3 months:
CHANGE DATE: JAN 24th, 2014.
Make sure you get ahold of something that will help you prepare and pass before then, as passing rates always, always drop off after major changes.
Over at Wysebridge (www.wysebridge.com) you get all inclusive materials including summaries, reviews, question databases, simulators, frequency charts of commonly repeated questions, and an entire AIA study suite outlining changes, and practice questions to help you learn and study.
But, whatever you do, try and get this exam over with before then!
All the best,
~Bfusion
Bfusion,
You mentioned that the exam will be getting much harder after the 24th, I’m curious why you think will be getting much harder. It seems they will be only adding the following source material after that date:
(1) First-Inventor-to-File Final Rules (78 Fed. Reg. 11024, February 14, 2013);
(2) Patent Law Treaties Implementation Act of 2012 (http://www.govtrack.us/congress/bills/112/s3486/text); and
(3) Changes to Representation of Others Before the USPTO Final Rules (http:/www.gpo.gov/fdsys/pkg/FR-2013-04-03/pdf/2013-07382.pdf).
Doesn’t seem to be too large of a leap.
Thanks,
G
Hey George,
Sorry! I didn’t see this till just now.
It isn’t a huge leap in material, BUT, it adds more material to the exam you are responsible for knowing and sorting through. On top of this, the USPTO (with exam changes) will tend to open up even more questions and “banks” of questions, so you can probably expect to see them testing out material, questions, etc…for a while.
Statistically, passing rates post exam changes drop as well.
All the best!
Questions:
I am in really stressful situation to prepare for this exam.
1. Is that ok I just read the study Guild, not the MPEP? MPEP is really hard to read.
2. Can anyone help me double confirm how to register this exam?
Thanks a lot!
Chris,
1) Reading the MPEP (like a book) will consume your time and frustrate you beyond belief. Make sure you have materials that will teach and tell you what you need to know, AND, provide the means to develop the skills to pass. Reading summaries is a good way to start..but also, make sure you have materials UPDATED for the AIA changes (some went into effect already…this past spring). This site (for instance) does NOT have those updated materials, nor do the questions reflect the changes.
2) Be glad to help you with the registration!
you can email info@wysebridge .com
Wysebridge Patent Bar is actually the company that got started from helping and tutoring people here, and anything we can do to help, we’ll be glad to try our best too!
All the best,
Bfusion
http://www.wysebridge.com/
Chris:
Know the MPEP by way of the index. You will need to search it for nearly each question on the exam. Plan to NOT pass the exam the 1st time you take it, just take it and that dry run will greatly help you determine if this is doable of not. No review course is as good a preperation than simply taking the exam and knowing how to search the index.
With all due respect this is terrible advice.
There are some folks who prepare well enough to pass this exam 1st go. Prepare for the worst and hope for the best on exam day.
My comment is that if you have to go to the index for most questions you are not ready to pay $ to test. On text day you should know the MPEP chapters by heart enough to know which chapter or perhaps 2 chapters to go straight to to start searching..
All the best to those taking the exam today before the changes!
Hey All,
Sorry I’ve been absent the past few days. Apparently my email/bfusion was blocked on this site (I’m not really sure why. Everytime I wrote a post here, it wouldn’t appear!) so I’m now Bfusion. (with a dot).
Some “facts” for you:
The USPTO has prided (it seems) on keeping the passing rate for the patent bar exam around 50%. In years 2012 and prior, on average, about 50-55% of all test-takers passed. In 2013, just 46% of test-takers passed.
This might not seem like much, but…remember, in March of 2013, a LOT of rules and laws changed, and so did the exam. These were the changes under the AIA.
That being said, iF you assume that from Jan-March (3 months) of 2013 (when the exam content was pre-AIA), that 50- 55% of those test-takers passed, then to get at an annual (12 months) pass rate of 46%, only 33% of test-takers passed from April-Dec (of 2013). That means only 1/3rd of all test-takers in this new era of AIA are passing.
Ouch.
What does this mean for current test-takers? Finding a balance. gone are the days of 30-40 repeats (which is when most study programs were started and this was a major factor in their courses). Now, expect 5-10 repeats.
It’s important to find a balance of knowing material (the MPEP, appendices, FR), and being able to search the MPEP effectively. Also, make sure you are able to learn HOW to take the exam, getting a feel for all the little nuances, etc.
Just my two cents…
All the best!
`Bfusion
I want to confirm with you guys:
Before AIA, the effective priority art date is the published date.
but for AIA: Effective prior art date of subject matter in
patents and published applications under AIA is the actual filling date.
is that right?
thanks
Correct it’s earlier filling date ( of domestic or foreign any one -if benefit claim can be made)
What is your (anyone’s) opinion of Patent Education Series prep course? It’s been around since 2001, but seems very poorly written.
what does “Examiner’s Note” means in the MPEP?? I could not get it. please help
During exam, how do you decide whether to search in MPEP, CFR, or USC?
I just passed the exam yesterday. I have to say no matter how you study, the key to pass this exam is PRACTICE..!!! You need to look at many questions as you can…the point in this exam not the laws or rules but the tricks the PTO examiners stress on in the questions. Questions may be different but the tricks are the same, may be 10-12 tricks per every section or so. If you get your mind to pick those tricks, you are done and ready to go.
Another key is to practice how to find different parts easy in the MPEP, don’t try to depend on just keywords, sometimes you need to find the right section, read it and then answer the question as the PTO changed the wording. Repeat questions were involved so practice and practice.
I used PLI course, they did a great job to prepare me. Also they have tons of questions, quizzes, exercises to practice especially on the AIA new rules. I also found it very good to read the chapter (from PLI) then answer all the questions came in that chapter in the old PTO exams (got those sorted out). This way you help your self to pick up the tricks related to each chapter.
Last advice, get yourself familiar to the MPEP, I really did appreciate that on the day of the exam. I am coming from a biology background not legal so I really suffered to pass this exam. I hope those points were helpful. Finally on my exam day the computer crashed on me several times, no worries time stops and the staff were very helpful.
Good luck to everyone.
Kansasman2014 congrats! How many repeat questions did you have. I have been reading the forums and the consensus is that they are currently much lower than the past exams. I am also using PLI, how high were you scoring on the exams and questions prior to the test? Thanks for the advice.
the repeats were about 10-14. I was scoring between 75 and 85, never higher than 85:(
pay close attention to the 100 questions on the AIA exams ( 2X 50
Hi, Kansasman2014,
Congratulations!!
I will have the exam next week and also am using PLI materials, but it does not cover the new materials of AIA. I wonder if you could point out some important points on AIA.
or do you mind to share the new AIA practice questions.
Thanks a lot!
Julie,
I can point to reexamination, appeal, and oath those are the most important. Like correct invention by ADS, if no executed oath then the next executed oath id considered the right inventive entity..etc.
yo0u can email me kansasman2014@yahoo
Passed yesterday!!!
MY STORY
I was hired in Jan 2013 by a large law firm to become a Patent Agent right out of undergrad. I attended a PLI live course in Chicago for a week. I studied using the PLI online materials (watched all of the video lectures, took all of the practice tests) for about 2 months before my first attempt at the registration exam in October 2013. I earned a 61%. I flew to DC to review my missed questions at the USPTO. After about a month off from studying I resumed studying using primarily this site with the PLI question bank in my back pocket. Took the exam yesterday, and passed.
STUDY STRATEGY
I cannot express how important it is to be able to recognize the repeat questions from this site. It saves time and gives a nice confidence boost during the exam. To those who are preparing for the exam, deliberately read each of the 68 exam questions and concepts. Figure out why the answer is what it is, which can be done by analyzing all of the comments associated with each question. I also would highly suggest going through the repeat questions starting from the bottom up. Taking all of the available old exams on the USPTO website will help you practice recognizing the repeat questions and manage your time appropriately. The PLI materials, namely the AIA questions, were a huge help too.
TEST STRATEGY
Go in having a plan. Do you need to skip the wordy questions or obvious look-up questions? Do you need to answer each question in succession? Figure out what works for you. The first sentence of the question is usually the hardest to comprehend and most important to the question. Spend time grasping the fact pattern of each question. For look-up questions, its important to know which section of the MPEP to search. Believe in yourself on test day.
Good luck!!!
Do u still have the PLI AIA practice material.
I’m interested in purchasing that as I have old PLI material 2011.
Yes I do. More than happy to sell my study materials. I have the 2013 PLI physical binder including AIA practice material (notes, mini-exams, questions, etc.). If interested please email me at trmckenz@ncsu.edu, thanks.
This site is fantastic (passed yesterday). A new category must be added (OR REALLY TWO NEW CATEGORIES):
1. CITATIONS OF PRIOR ART VS. 3rd PARTY PREISSUANCE SUBMISSIONS. THIS CATEGORY BLEEDS INTO :
2. POST-GRANT REVIEW VS. INTER PARTES REVIEW (VS EX PARTE REVIEW).
A competitor has a publication and believes it invalidates a newly issued patent and he wants to begin a PTO proceeding (not district court litigation) to invalidate the patent. By what means does he submit it? Look for the filing date of the patent (if after 3/15/2013 AND his request is within the first 9 months of after issue), then POST GRANT REVIEW is his best bet (wherein the standard will be preponderance-of-evidence). If it’s 9 months or more after issue, then use INTER PARTES REVIEW (wherein the standard is reasonable likelihood).
The next topic (I guess here it would be topic # 1 IN MY BLOG HERE) could be “3RD PARTY SUBMISSIONS vs. CITATIONS OF PRIOR ART” Just know what rules suffice for 1.291 3RD PARTY PREISSUANCE SUBMISSIONS, such as which elements are necessary “list of pats and pubs, English translations, concise descriptions etc). These submission requirements are different than those for PROTEST and different from those for 3P SUBMISSIONS OF PRIOR ART under 35 USC 301, (RULE .’ 501?). Anyway know the ins and outs of these ‘submission’ areas cold. They’re new AIA stuff, and they (along with the InterPartes Review, Post Grant Review) were tested heavily (5-6 questions total).
PASS, dunk and break the backboard
This ecstatic feel after a long and arduous time of preparation, and then getting what you desire – I love it. I actually had an hour left for both the morning and afternoon section to thoroughly review my answers and reconfirm with the MPEP.
I would like to begin by thanking every contribution on this website because it was the biggest factor for my passing of the exam.
********************IMPORTANT************************
FOR THOSE OF YOU WHO HAVE THE OPTION OF TAKING THE EXAM PRIOR TO JANUARY 22, 2014 (because the exam will be unavailable 22nd and 23rd due to changes that will implement on the 24th) I HIGHLY RECOMMEND THAT YOU TAKE IT.
***********************************************************
Here are the material that were introduced on April 2, 2013
http://www.uspto.gov/ip/boards/oed/exam/aia_regexamsourcematerial2012sep04.jsp
And here are the material that will be introduced Jan 24, 2014
http://www.uspto.gov/ip/boards/oed/exam/index.jsp
As most people may know, I am “expressly prohibited from disclosing, publishing, reproducing, or transmitting the content, or substantially similar content, of this exam, in whole or in part, in any form or by any means, verbal or written, electronic or mechanical, for any purpose.”
However, I interpret this to explicitly prohibit the disclosure of actual problems and that I still pertain the right to share my studying tips (since patent bar courses do exist and are not addressed as violators of this agreement on the USPTO webpage).
I understand that most of you reading this will be used to skimming, reading fast for answers and pertinent information – but, I would like to ask that you please, read, every, single, word. Otherwise these tips will sound obvious. Oh and I would like to add that my favorite question to add at the end of any information I am given is: Why?
1. This website is far from obsolete. I have noted a drop in the number of people interacting on this website and it befuddles me. Find and solve every single problem which appeared in a past exam that you can possibly find.
2. Be able to explain in your own words, with only the MPEP as reference, as to WHY each answer of a problem is correct or incorrect. Merely viewing the answer and being able to understand it won’t get you very far.
3. Be able to QUICKLY find the location of each answer choice in the MPEP and be familiar with certain phrases or unique MPEP terminology for search.
4. Have a comprehensive overall understanding of the MPEP. There is no notification that will appear above your head with a “ding” sound once you have reached enlightenment – you will simply know it.
5. Preparing for this exam takes real dedication time, effort, and headaches. There is no easy way to study for it. The only lucky pass would be if you studied past questions without fully understanding the concepts behind them and 70+ of them came out verbatim on your exam – I wouldn’t bet on it, better to buy lottery tickets with the exam money.
6. Note that I have not addressed newly added material.
Largely I believe passing this exam involves two aspects – 1. Having an overall comprehensive understanding of the MPEP. 2. Practice and familiarity solving past problems and efficiently finding answers in the MPEP.
The order for which you meet these criteria is based on personal preference. But in order to pass I believe you need both. If you only meet part 1 then you will not have time to tackle all of the problems. If you only meet part 2 then you will not have time to solve variations to the questions you were prepared for.
As for myself, to meet criteria 1, I have used the omniprep & bullseye (I have their material up to November 2013 and looking to sell for $65, feel free to mail me at krnsensual@gmail.com) as well as reading the MPEP, and finding many other resources & information online. (If you would like to buy my study material off of me I will also add all of the information that I independently found online that were particularly useful. And will address the new material regarding the exam.)
For criteria 2, this website was the largest question bank with many responses from real users, not all of the responses were correct but the majority were intelligent and helped resolve my misunderstandings. Also for this part mainly I just spent a lot of time going through the order of my tips 1, 2, 3.
Well…. This post turned out to be longer than I intended. Hope this helps people out =D
PASS, dunk and break the backboard
This ecstatic feel after a long and arduous time of preparation, and then getting what you desire – I love it. I actually had an hour left for both the morning and afternoon section to thoroughly review my answers and reconfirm with the MPEP.
I would like to begin by thanking every contribution on this website because it was the biggest factor for my passing of the exam.
********************IMPORTANT************************
FOR THOSE OF YOU WHO HAVE THE OPTION OF TAKING THE EXAM PRIOR TO JANUARY 22, 2014 (because the exam will be unavailable 22nd and 23rd due to changes that will implement on the 24th) I HIGHLY RECOMMEND THAT YOU TAKE IT.
***********************************************************
Here are the material that were introduced on April 2, 2013
http://www.uspto.gov/ip/boards/oed/exam/aia_regexamsourcematerial2012sep04.jsp
And here are the material that will be introduced Jan 24, 2014
http://www.uspto.gov/ip/boards/oed/exam/index.jsp
As most people may know, I am “expressly prohibited from disclosing, publishing, reproducing, or transmitting the content, or substantially similar content, of this exam, in whole or in part, in any form or by any means, verbal or written, electronic or mechanical, for any purpose.”
However, I interpret this to explicitly prohibit the disclosure of actual problems and that I still pertain the right to share my studying tips (since patent bar courses do exist and are not addressed as violators of this agreement on the USPTO webpage).
I understand that most of you reading this will be used to skimming, reading fast for answers and pertinent information – but, I would like to ask that you please, read, every, single, word. Otherwise these tips will sound obvious. Oh and I would like to add that my favorite question to add at the end of any information I am given is: Why?
1. This website is far from obsolete. I have noted a drop in the number of people interacting on this website and it befuddles me. Find and solve every single problem which appeared in a past exam that you can possibly find.
2. Be able to explain in your own words, with only the MPEP as reference, as to WHY each answer of a problem is correct or incorrect. Merely viewing the answer and being able to understand it won’t get you very far.
3. Be able to QUICKLY find the location of each answer choice in the MPEP and be familiar with certain phrases or unique MPEP terminology for search.
4. Have a comprehensive overall understanding of the MPEP. There is no notification that will appear above your head with a “ding” sound once you have reached enlightenment – you will simply know it.
5. Preparing for this exam takes real dedication time, effort, and headaches. There is no easy way to study for it. The only lucky pass would be if you studied past questions without fully understanding the concepts behind them and 70+ of them came out verbatim on your exam – I wouldn’t bet on it, go buy lottery tickets instead with the exam money.
6. You may note that I have not addressed newly added material.
Largely I believe passing this exam involves two aspects – 1. Having an overall comprehensive understanding of the MPEP. 2. Practice and familiarity solving past problems and efficiently finding answers in the MPEP.
The order for which you meet these criteria is based on personal preference. But in order to pass I believe you need both. If you only meet part 1 then you will not have time to tackle all of the problems. If you only meet part 2 then you will not have time to solve variations to the questions you were prepared for.
As for myself, to meet criteria 1, I have used the omniprep & bullseye (I have their material up to November 2013 and looking to sell for $65, feel free to mail me at krnsensual@gmail.com) as well as reading the MPEP, and finding many other resources & information online. (If you would like to buy my study material off of me I will also add all of the information that I independently found online that were particularly useful. And will address the new material regarding the exam.)
For criteria 2, this website was the largest question bank with many responses from real users, not all of the responses were correct but the majority were intelligent and helped resolve my misunderstandings. Also for this part mainly I just spent a lot of time going through the order of my tips 1, 2, 3.
Well…. This post turned out to be longer than I intended. Hope this helps people out =D
Don’t lose hope! The pass is still within your grasp.
Q: Examiner must consider what for obviousness rejection
I. if applicant replies that rejection is not supported by any of the 7 obvious rationales under KSR, examiner must withdraw rejection
II. The rationale to modify or combine the prior art does not have to be expressly stated in the prior art
III. Examiner must start with teaching suggestion motivation test
Any idea for this problem?
I am guessing the answer is II only. Somebody answered II and III, but I can’t find any reference supporting answer choice III. Any input will be appriciated.
lala, I think you are correct. By the way, where can I look up the 7 factors under KSR from? I can’t find in MPEP.
I. MPEP-2143;page2100-124
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel. Any rationale employed must provide a link between the factual findings and the legal conclusion of obviousness
See:the words-any rationale …
Page-2100-150
It is important for Office personnel to recognize that when they do choose to formulate an obviousness rejection using one of the rationales suggested by the Supreme Court in KSR and discussed herein, they are to adhere to the guidance provided regarding the necessary factual findings.
See:one of the rationales suggested …
II. MPEP :2144-page 2100-150
The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law.
MPEP-pg2100-151
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.
III.MPEP 2143.01
Obviousness can * be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so
MPEP-pg 2100-174
A suggestion or motivation to combine references is an appropriate method for determining obviousness, however it is just one of a number of valid rationales for doing so
But later it also mentioned that pg2109-147
The mere fact that references can be combined or modified does not render the resultant combination obvious unless **>the results would have been predictable to one of ordinary skill in the art
So the answer is II only because I is not telling something that will lead to obviousness rejection and III can be included based on choices available in the answering sheet as it is definitely one of the method used .
Prov app filed 11/28/99, non-prov filed yr later which claims priority, then IA filed which claims priority to both… on on on, what is the date for the 20 yr term.
Say non-prov was filed on 11/28/00, then 20 yrs count from 11/28/00. RIght?
I agree with you 11/28/00. I remember provisional application does not count.
Correct
Provisional application time is not counted in the 20yrs patent term
Anybody planning an exam before Jan 24, 2013?
Let’s discuss problems. GIve me an email if you are interested.
thepast1725@gmail.com
anybody?
I took the test on Friday and passed! Since I took the test before,
I knew I had to change my strategy — so here are my thoughts:
1. I studied Wysebridge’s excellent spreadsheet of frequently asked questions, concrete, experimental and beta – and used them to quiz myself until I knew each one and where it came from in the MPEP. This is the best and most complete data base out there, IMHO. I did not take a patent review course.
2. I looked up everything about a question in the MPEP so as to get to know the MPEP. I also worked on “searching” and what is effective.(Picked one word that was “different” or “key” and that was the best strategy, Looking up phrases doesn’t seem to work)
3. I took tests by chapter on Wysebridge so that I would know whats in the MPEP and where to look.
4. I didn’t take even one of the old tests this time.
5. I had a set of my own questions from drving down to DC to see the ones I got wrong (!). This way I could compare with the frequency chart and see what was there. If you fail, go to DC!
6. At the test, I looked up as I went along because my thought process was already cooking on a problem and I have found that for me, time gets lost if I try to return later. However, I kept a strict eye on the time, making sure that I had covered half of the questions by the time I had an hour and a half left. I looked things up super quickly and was able to look up 10 or 12 questions, each session. If you can only look up 7 or 8, you are not working quickly enough. They make a lot of questions that require a look-up.
7. I took the full hour break and quickly looked at my list of questions to review the ones I hadn’t had in the morning.
8. I had at least 25 repeats on the exam. There were many, many fact pattern questions with names and companies and the morning was way harder than the afternoon. Considering that I have taken the test before, I was amazed that there weren’t more AIA questions. There were only a few on my test.
Lyleth, or anyone who has taken the exam more than once, were there questions from the first administration repeated on the second administration?
I had exactly the same situation as Lyleth and employed a weirdly similar strategy and passed on Friday, too. This is a solid studying strategy if you have taken the exam or want to upgrade your skill level before you take it the first time–big confidence booster. Practicing the old exams only helps to gauge how efficiently you keep time and develop your search skills, however, now that the exam will change again you are better off learning the chapters and knowing how they are similar and different from each other.
My advice: Learn each chapter and be familiar with what each covers, i.e., test how well you can guess the correct chapter–read the question and do not worry about the answers. This strategy proved effective in breezing through the exam and having time to search the more difficult questions. Read the FAQs for AIA, know them and understand them all. Know the difference between ex parte reexam, inter partes rexamm, inter partes review, and post grant review. Pay particular attention to the dates.
General advice
Wysebridge is very helpful and worth the money.
My computer shut down twice, so be mentally prepared for stuff like that.
Travel to the exam light…just bring your wallet, keys, and phone.
Take the break. If you move like lightening you’ll crash like thunder…seriously.
Relax and have fun. If you are not having fun, then YOU’RE NOT READY.
when a rejection is made under KSR and the applicant points out that one of the rationales was left out, the examiner must withdraw or reconsider all the steps.
True or false?
an examiner can use any of rationales suggested by KSR.
I believe the fact that the examiner did not use one of the rationales does not force him to withdraw and reconsider all the steps.
Any input will be appreciated.
Lala:You are correct ..the examiner has to only consider one or more steps for obviousness rejection not all of them !
Hello, I was wondering if anyone had an opinion as to which program would be better Patent Education Series or Wysebridge? Thank you in advance
PES is useless
Ok, some updates I’ve been able to source (from a few sources).
1) Old material (meaning, a good amount…50-65%) is sourced from pre AIA. This means, use this site, or the question databases on Wysebridge to study. You’re bound to see some repeats. (If you are a PRO Wysebridge user, make sure you go through the 200+ beta question database as there are a LOT of questions and topics coming from there. For those who are wondering…these are questions that are different from the “68” common repeats on this site).
2) Topics: A Lot of what’s been discussed here, but make sure you go through PCT dates, and make sure you know your 103 well.
Hang in there!
~Bfusion
http://www.wysebridge.com/
I preliminary passed the patent bar on Friday.
Congrats
Congrats Piki!
Any suggestions !
Hi everyone, here is another question, that is in the current exam set, which I wonder, how should it be correctly answered.
Inventor A writes and application describing his discovery about golf balls with dimples having a honeycomb shape, which can fly much faster than traditional golf balls. In the claim, the golf balls are only described as comprising dimples. Examiner rejects the claim based on a patent that describes the golf balls as comprising dimples. The patent does not disclose dimples as being honeycomb shaped. The inventor, in his response to the office action, does not amend the claims, but argues that the dimples are defined in the application as honeycomb. What should the examiner do:
A) Maintain the rejection.
B) Allow the application specifying that dimples are defined as honeycomb.
C) …
(A) The examiner should maintain the rejection.
I am sorry you feel that way. It’s true, that the AIA has significantly changed the exam landscape, and the effective way to study for the exam. As i have posted and shared on this site, my information is sourced from feedback about current exams, and experiences about current exams. While everyone’s experience on the exam will be unique…the decision to post the accumulated information here was one to try and help others get a general feel of what the exam was currently like.
As we’ve discussed here over the past few months, the AIA has (probably most importantly) changed what is considered prior art for an application, and this has the ripple effect on the rest of applications. As has been the case for several years, MPEP chapter 700 is most heavily tested chapter on the Patent Bar Exam.
If you have any questions, or I can help in any way, I’d be glad to make myself available.
All the best,
I took the Patent Bar this past Monday (first time) and passed!!! Here’s my study experience — I hope it helps another prospective patent agent/attorney in their quest to conquer this exam:
I started studying from 2nd-hand PLI materials that I got from eBay (MPEP 8.8, patware 9.0) in mid-Dec, did all of the official practice tests on the Patware software, and studied the repeat questions posted on Wysbridge, mypatentbar etc.
The PLI course was a great kickoff to immerse me in patent prosecution and introduce me to all of the exam content. I spent my holiday break listening to all of the lectures and reading all of the course material. I then proceeded to listen to random lectures during my daily half-hour commutes to/from work for the next month. The words “Hello……..John White here…..” started haunting me everywhere I went and invading my dreams……
Coming off of that course, though, I was only getting in the 50%’s for scores on all of the prime questions, mini-exams etc. My first few practice tests that I took, I think I got 26/50, 27/50 and 30/50. This was without looking anything up in the MPEP, but was still rather discouraging.
Once I started using the MPEP, my scores increased by ~2-4 pts with every succeeding test. I went from 30/50 to 32/50 to 35/50 to 39/50 (all on separate exams….not repeats). The final breakthrough came with the discovery of the Wysbridge, mypatentbar.com, patentbarquestions.com, and patentacademyonline sites with all of the discussion on repeat questions and new questions since 2003. After practicing and studying that repository of questions and community feedback thoroughly, one of my exam sessions (morning of Oct 2003, I think) was a 45/50. I was getting confident but was still very nervous about the new AIA material.
Wysebridge and mypatentbar.com and patentbarquestions had some great information on general AIA topics that have recently been covered and even had a few specific questions. It was tougher to find information on the AIA content because of the nondisclosure agreement that has recently been put into place for the exam. My final discovery was the PatentAcademyOnline website, which had a great summary (free of charge) of all of the AIA topics that would be covered on the exam. I reviewed that material thoroughly in the few days before the exam and was very comfortable answering the AIA questions that appeared on my exam.
The exam itself was grueling despite my confidence and the morning session was particularly challenging. I took it one question at a time, answering all of them with my best guess and marking the questions I figured needed review after I got through all 50. I probably marked 25-30 of them!! I then went back and carefully reviewed as many as possible with my remaining time. I switched answers on some of my questions after finding specific passages in the MPEP — my advice to test-takers is to use ALL of the time allotted for both sessions. Check and recheck your answers….there are many tricky questions on there. Also, take the 1-hour lunch break. It is essential to clear your mind and take a breather to regroup for the afternoon session.
One final note is that my exam crashed repeatedly during the morning session —- whenever I would click on a hyperlink in the index of the MPEP, the software would shut down and the proctor would need to restart the PC. At first I thought it was just one particular hyperlink, but the error occurred with every hyperlink that I clicked. It was a devastating and distracting bug, but fortunately it didn’t cut into my time at all and I probably only lost ~1 minute of time. Be prepared for things like this to happen and try not to let it rattle your concentration.
Do you still have that material- for sale
Thanks
Piki can u please help and suggest how to go ahead and what’s the best material to use -especially seeing new questions and variants of old questions.
Reading old exam answers is no more a good idea!!
Congrats saxman 717.
Please email me ..your suggestion and tips about coyrses and website will greatly help in the exam.
Monikamanocha12@yahoo.co.in
liar
I’m looking for new PLI material with recent AIA changes and course material included- for patent bar exam (preferably 2013)
Can you please contact me on monikamanocha12@yahoo.co.in
Thanks
I have my new 2013 PLI materials for sale if you like, email me at kansasman2014@ yahoo.com
This website is awesome but if you really wanna pass (on the 1st try!) then go to wysebridge.com. There, the info is already structured for you so that you can keep an easy tab of what you’ve seen/what you still need to study. There are HUNDREDS of repeat questions….I got significantly more repeats in the PM section, and choosing the right answer was literally like muscle memory at that point. I can honestly say I would not have passed on the first try without the assistance of wysebridge. Not to mention owner/CEO Bryan is a total wealth of knowledge who almost always responds to emails within 24 hours!! So relieved to have passed. THANK YOU mypatentbar & Wysebridge!!!
Hey guys, quick question. I purchased 2012 version of PLI course. Unfortunately, I was unable to take the exam then. How significant are the AIA changes. Is it possible to buy the supplemental material. Thank you.
Hi Newbie,
The AIA changes are very significant and are becoming more and more a part of the exam.
Since the Spring of 2013, the AIA has begun to be tested on the exam.
Whether you scour through the internet, the USPTO site, or utilize another company for AIA reference material, you’ll want to make sure you familiarize yourself with these changes for sure.
If you have any other questions, feel free to ask!
All the best,
Bfusion
http://www.wysebridge.com/
Hello Newbie
I faced the same situation like you . In a loop
Hi Bifusion
How much Wysebridge prepares you for AIA new stuff when compared to New PLI bonus material – as I am in same situation like Newbie and looking for either PLI bonus material with AIA changes or a study course so I’m well prepared for the next attempt.
I have PLI 2013 with the new AIA for sale. If interested contact me at Kansasman2014@yahoo.com (I passed the exam in January 2014)
Hi ToPassBarExam (And Newbie),
I can gladly talk with you about the AIA material, but I also know that talking with individuals who have used Wysebridge to Pass in the AIA era might mean more. You can email (info @wysebridge.com ) and I’ll gladly put you in touch with a few individuals you can ask about how Wysebridge helped them with studying (including the AIA changes).
But, briefly, we’ve broken down the AIA into major topics, and provide you with easy to read summaries, highlighting the important “must knows,” as well as providing you with study questions.
This (of course) is all part of the Wysebridge PRO access, so you’ll also be able to utilize our question and exam practice suite, as well as our frequency charts of repeated questions, and a lot more.
Hang in there ToPassBarExam…and if I can be of any help to you, please don’t hesitate to contact me!
Best,
~Bfusion
Thanks Bryan
Thanks Bfusion !!
Today was my 4th attempt. First attempt was a 40, second was 51, third was 62, and fourth was a 68. I used Patent Education Series, which is not very good, but its cheap. QUESTION: Is there any chance of appealing this 68?
I am sorry to hear that, but I think the idea of appeal will be time and money consuming. I believe it’s better to use this energy to knock it down for one and last time. I passed this January and I can help in discussion or tips. I also have my PLI 2013 with the new AIA which I can sell for a good price and can help you tremendously. if you want contact me at kansasman2014@yahoo.com
Thanks K-man. I’ll think about ur offer. Right now, I’ve spent enough on PTO fees to have bought that PLI course that everyone raves about. I probably should have bit the bullet last year, and sprung for that course, but it runs against the grain in me to have to spend so much money on a cram course in order to pass an exam that’s designed to trick test takers. I’d rather spend money on learning REAL useful stuff. But, that’s how the SYSTEM is , so I gotta play along.
I think Kansas is right !
Better you prepare yourself well for next one..with a better plan and material !
We can discuss , I am preparing for this month !
My email is Monikamanocha12@yahoo.co.in
Anybody preparing to give the exam soon -this month
Lets discuss !
My email monikamanocha12@yahoo.co.in
Thanks
Jay,
Hey, sorry to hear about the results. Although, you are improving, but I know it’s gotta be frustrating. Hang in there!
You can appeal, but…you’ll need to really be sure of what you are appealing (which means going to the USPTO to check you answers and see if you have anything to appeal).
If I can be of any help, please don’t hesitate to ask/contact me!
All the best,
~Bfusion
http://www.wysebridge.com/
Jay, if today was your 4th attempt then you obviously took on 4 more categories of material at a minimum since your last attempt..
If you were to review your answers and found one that was a fairly nonvetted newer question (but not a beta question) … then you may have a slight chance at finding cause for appeal. However, is it worth the effort and expense?
If the OED allows review at your PLI site I would review your answers on all 4 exams.. However this seems like it’s probably not going to happen. I guess if I were you and close to the patent office I would want that review so I would be able to put my eyes on each question I missed. Might be time for a vacation and reset with more determination. You are better prepared today than you ever have been! Good luck
Thanks for your encouragement!!
If Someone is looking forward to give the exam soon -this month
Lets discuss !
My email monikamanocha12@yahoo.co.in
Thanks
Can Someone help ..
What’s the difference between
1) invalid claim(s) can be disclaimed with fee
2) invalid claims can be cancelled -especially used in case of restriction requirements (no fee)
When can (1) be used and when can (2) be used
Txs
I think the answer is
Only claims in patent -can be disclaimed
Claims in application are -cancelled
Please confirm if its correct or any more suggestions .
Hey All,
I spoke with the USPTO this morning:
The local review of answers (meaning, reviewing your exam at prometric rather than in DC) is still in the works, but no timeline or deadline was given to me.
So…kinda good news? Means that they haven’t totally shot down the idea, but…it also means it could be a while.
Hang in there (to those taking the exam soon!), and as always, if you need some help, or have questions, please feel free to email me!
Best,
Bfusion
http://www.wysebridge.com/
News for Future test takers:
The United States Patent and Trademark Office updated the content of the registration examination on January 24, 2014. The updated examination covers all material referred to in the Source Materials, including the Leahy-Smith America Invents Act (AIA)
Check USPTO website for more details.
I passed the patent bar last month. I have the 2013 PLI study materials (binder, tons of papers and notes) that include AIA material. If you would like to have my study materials please reach out and we can arrange something – trmckenz@ncsu.edu
Hi everyone,
This is my tribute to the people who put efforts in creating this webpage, which is a rich resource for preparing for the exam. Yesterday I took the exam (for the second time) and I passed. Such a relief! Here, I would like to share my experience to offer others a good chance to prepare and quickly pass the exam. What you need to know for the current exam are MPEP chapters: 700, 1200, 1800 and 2100 (PLI course covers this part), from AIA law differences between old and new oaths, differences between 3rd party submission and protest as well as differences between post grant, ex parte and inter partes review/reexam procedures.
Here are some specific examples that I saw:
– certificate of mailing (relative to bar date or lost application)
– restriction requirements
– filing IDS after allowance without RCE
– appeal brief content
– use of 1.131 and 1.132 for 102 and 103
– enablement vs best mode
– enablement and written description rejections for chemical formulas
– partial assignment to company, inventor dies, who continues prosecution
– examiner’s request of IDS
– patent term relative to international application filing date
– consisting vs comprising
– 30 days meaning
– use of discs for sending over 50 pages long tables
– filing date for application filed by (non-US citizen) authors at US/RO (check if country is within PCT)
-1 year restriction for filing inter-partes review if party sued for infringement
– Oath can be signed by minor
– new AIA oath does not require citizenship and “first inventor” statement
Finally, make sure that you get Wysebridge’s list of new questions. I saw more than 20 questions from there in both exams.
Best of luck to everyone!
i bought wisebridge and it was less than what bfusion says it is wink wink ella
Article 25 is a good read
hey guys..
Got a quick question for any one that would have any insight on this. I’m taking the patent bar in 2 weeks. I know new material was added in January, so does anyone know if the questions tend to be easier than usual when initially introduced? I’m using PLI and they provide pretty good examples to apply to the new material but they seem so basic.
Any helpful input would be greatly appreciated
Thanks
It is harder with 46% pass rate in 2013 with some applicants taking multiple times so actual pass rate per individual is more like 7% pass rate for first timers 15% second and 30% after third attempt. Most people nevertake the test again after the one or two attempts. Best to study take. Review failed test and study take again.
Hey All,
To those starting to study/work through material here: Remember, that the AIA laws are in full effect now and fair game for the exam.
On the exam, you’ll need to know both pre-AIA and post-AIA rules/laws (and when to apply based on dates/situations).
All the best to you!
~Bfusion
Just a quick question !!
Can a practitioner take a similar patent application from the different clients (e.g. in gas area) while a practitioner has taking a patent application from the client in similar are (e.g. in gas area) ?
It’s probably a case by case basis. The practitioner would have to look at the questions on this page under rule 1.7 and make a determination. Even if there is a possible conflict of interest, the practitioner may still represent them both if “Each affected client gives informed consent, confirmed in writing.”
Look at rule 1.7 and its exception.
http://www.uspto.gov/ip/boards/oed/AbavsUSPTO.pdf
thanks…
Actually, there was a similar question in the previous testing, but I’m not sure what the exact question was…it was about a pharmaceutical companies’ patent applications….Do you have any idea on this question?
Br
thanks…
Actually, there was a similar question in the previous testing, but I’m not sure what the exact question was…it was about a pharmaceutical companies’ patent applications….I remember (not sure) it seems that there were choices 1)Practitioner keeps the current representation, 2) Practitioner declines the current representation and accepts the new representation, 3) Practitioner can represent both clients..etc.
Do you have any idea on this question?
Br
Oh, 37 CFR 10.66 is a better source.
Hey All,
Bfusion here (from Wysebridge Patent Bar Review as well). In case you missed the news, we’re offering a $50 off our Patent Bar Review program till the 20th. If you have any questions, etc, please feel free to contact me!
All the best,
~Bfusion
http://www.wysebridge.com
Hello,
Any specials coming up? I am thinking about taking the plunge and buying a study aid.
Thank you
http://www.uspto.gov/aia_implementation/patents.jsp
Recent questions in testing…
Would you someone show answer to the following two questions?
1. If there is no description on how to make an invention/product, for example pharmaceutical compound, in an application. There is no any prior art or knowledge on how to make such invention the examiner could refer, What is the examiner’s decision on this application, rejection, objection or allow, if so what criteria needs to be cited for the decision?
2. There are 3 claims (1, 2, and 3) in an application and all are rejected by examiner, Applicant file an appeal to Board only for claim 1 and 3. And then board affirms the examiner’s initial decision, rejection..What’s next following action from examiner or board for this situation ?
Thanks
Chang
Chang your questions lack enough detail to answer… Hit Ctrl F on your keyboard type enabling or appeal and you’ll find an answer.
The Board will review all three claims unless the applicant specifically cancels claim No. 2!
Hi Gotta
Thanks for answer, but still confusing. Even though the applicant does not appeal with Claim 2, the Board will review all of them (Claim 1, 2, and 3) and make a decision? Is it true?..Would you let me know some references for this situation in MPEP or more?
Thanks
Chang
Read mpep
http://mpep.uspto.gov/RDMS/detail/manual/MPEP/current/d0e18.xml#/manual/MPEP/current/d0e131453.xml
1214 Procedure Following Decision by Board
Just took the patent bar today and passed. I didn’t spend much time on this website at all, but I figured I’d toss out some info related the questions I saw. So I used OmniPrep and also bought a book on Amazon that had 550 practice problems (lots of overlap between both sets of questions). I memorized hundreds of practice problems before the test and kept track of how many Q’s I was sure about during the test. It turns out roughly 35% of my test was repeat questions from either the old ’99-03 exams or problems listed on either OmniPrep or the 550 problem book. I then looked up almost all the remaining questions, even those I was 90% sure about. Ended up being sure about 70% of the problems by the end of the test and felt pretty certain about another 20% of the questions with the remaining 10% of the questions I could eliminate wrong answers down to roughly 2 possible choices for each question, so my best guess is I got around 90-95% right.
For each 3hr section I initially got through the 50 questions in about 1hr 15min and then spent the remaining 1hr 45min looking up answers and re-reading the problems to make sure I caught everything. I really didn’t ever practice searching the MPEP, so this was pretty new to me, but I caught on pretty quick. One tip of advice: using the drop-down list of the MPEP chapters, once you select a different chapter, you must hit “go” (or some button similarly named) just to the right of it. Otherwise you’ll remain in the same previous chapter. I didn’t catch this right away and wasted 20min of false searching.
Another tip: I read through chapter summaries of the entire MPEP probably 10 times with the entire summary being around 200 pages. This took a lot of time but I know it was essential for me to quickly pick up on the right answer or at least eliminate 2-3 wrong answers right off the bat without having to search.
Jeff
I did not have a drop down for mpep just PDFs. Hmm… You had a better set up. Congrats. You did not even have to open the new material. Awesome!!
For the test, if you have PDFs, do you either (1) have multiple of them open and can only search one at a time or (2) only have one open at a time? I ask because I have been using Patware, the PLI software, and I have to re-download each chapter whenever I switch. If I have the pdfs and can have multiple of them open at a time I figure I will save a little time switching between chapters.
One at a time and hyperlinks crash
I am taking the bar tomorrow, March 25.Thank you for the information. I thought you could only have one open at a time but it sounded from his response that I may have been in error. I don’t mind John White. As busy as I have been, it was nice to be able to listen to lectures rather than have to read a lot of the material(granted, I have had to read a fair amount). I decided my 1L year in law school that I wanted to do patent law and decided to get a second bachelors while doing law school. 2 years later, and I am getting my BS in Biology awarded this month and will finish law school this summer, in August. I just hope to pass tomorrow so March can be a great month!
Hey congrats on passing Jeff! I’m working on the Omniprep course as well, do you mind linking me to the 550 practice problem book that you used?
Hi Amy,
Sorry for the delayed response. Have been busy visiting law schools (I’m starting law school this fall). It’s called “Patent Bar Exam Practice Questions” and is on Amazon for $114. Good luck!
I’m using the same book and it’s great
all I used as study material was this site and uspto. passed 1st time! all repeats
4 or 5 pcts, aias right out of the faqs and expedited prioritized exams. So happy!!!
Which faqs and expedited prioritized exams are you referring to?
If you are taking the bar and not aware of the uspto website it’s too early for you to ask.
i was merely asking for a link because i was not using those materials. contrary to your condescending tone, i passed yesterday. now i am curious if you came on here to help or just brag.
Hey All,
It came to my attention recently that there were individuals posting using derivations of my old username handle. Really apologize for any confusion and I feel bad for the individual who felt the need to clog up this site. It was for a while a useful and friendly place to find content about the exam, and to ask questions, get support, feedback, and insight into how to pass the exam and yes, even discuss other study options.
If you start back in early 2013 you’ll see that I too (using the handle bfusion….take a look at all the posts) got my start here on the site, and began to help and tutor colleagues as they were taking the exam. Yes, Wysebridge Patent Bar review is now (has been) successfully helping people pass the exam, and I kept the Bfusion handle as people here recognized that name.
Sometime not to long ago that account(original bfusion name) got blocked (not sure why…this was supposed to be an open forum), and it seems that recently others have taken to using derivations of the name to post things.
I’ll gladly continue to offer assistance and help to those of you studying (as I’ve always said, please feel free to reach out if you have any questions, concerns, about the exam, or how to study). If this site continues to get blasted with spam, I know there are others working to try and provide other means to discuss and mutually help one another as they study for this exam.
To the individual(s) posting using “bfusion…” etc, you seem to be really doing a disservice to the community here.
All the best,
~Bfusion
http://www.wysebridge.com
Quick note to Everyone:
Those little icons that are next to each poster on these forum are specific to an email address.
It looks like whoever is posting as USPTO MONITOR, Justpassedtoday, jeff, amy, and the derivations of “bfusion” all are the same individual and are really clogging up your forums.
Just a friendly “heads up” if someone asks you to send your information to them on this site (as it seems to be getting spammed a lot more now).
As always, all the best.
~Bfusion
http://www.wysebridge.com
best method to pass
Hey all,
The USPTO updated their “Guidance for Examination” page with videos and a few power-points covering an assortment of topics (35 USC 103, First to File, etc) http://www.uspto.gov/patents/law/exam/examguide.jsp. While the material is geared towards those who are examiners, some of it is a nice overview / topical review of some of the key components / tested areas on the exam.
All the best,
~Bfusion
Yes. I know that since I posted earlier and now your reposting. plagerist.
I agree with you safe haven. Approx 3000 exams per year with maybe 50% taken by same applicant. That means that approximately 1500 individuals take the test. Lets say 50% of the 1500 don’t use any study program. That leaves 750 individuals. Let’s say 50% of them buy PLI or used program or something else. That leaves around 375 individuals. Let’s say 50% opt for the free site on you know. That leaves what round number 180 indiciduals??? @ what XXX should be around $60K for a best year?? More like $10K-$20K per year. Okay that is not bad spending money but you cant live on it or live with yourself when you really should be putting the PHD to better use. The numbers do not work out that well. We both know that is how this mess started…. fuzzy numbers.
What is the “the free site on you know?” PM to hotlee @ gmail.com. thanks.
Hey All,
The USPTO Announced that the newest version of the MPEP is now online and searchable. This is version E9. Not to be confused with version E8…R9 (which is E8 revision 9). http://mpep.uspto.gov/RDMS/detail/manual/MPEP/current/d0e18.xml?
Currently, the USPTO has not made an announcement as to when E9 will be the version on the exam, so until then, just be “aware” that when studying, you should use E8R9 until they make that switch.
All the best!
~Bfusion
Hello everybody …. So I am taking PATBAR and have access to their old exams but I do not have the Wysebridge new questions …. Can anyone assist me in acquiring them … ?? I’m scheduled for May 4th.
Anybody know how derivation will be affected by AIA? I know it will end but sure of details.
Preliminary pass today, first try!
Maybe I was lucky, but I did see a lot of repeats, not from 97-03 or the 68 questions, but from the previous discussions on this site! Two or three days before the exam, I read through the comments in this section that were posted within two years, and wrote down the test points mentioned there. Although they were not complete questions, it was still very helpful to understand the test points. I saw probably 20 of them!
I didn’t intentionally memorize the repeat questions, so I am now sure how many appeared today, maybe ~10.
I also didn’t use any preparation course, except a 2nd hand PLI summary, which was not useful – it was based on old test points!
Not many AIA questions – guess I was quite lucky… Probably 15 were related to AIA materials, but they were straightforward, although some of them had complex fact patterns with most of the information being red herring… Being familiar the published FAQ on USPTO website should be sufficient.
A few words about how I prepared:
I am currently a postdoc and have no legal experience so far. I first read the MPEP twice, first time just to get familiar with the language and understand the basic concepts; second time to better understand the test points, using the chapter summary of PLI and this site; this took me two-month;
Then I practiced the old exams (97-03) and new repeats on this site. My score steadily improved, from 35/50 to over 45/50, because some questions were already repeats…
Finally, I read comments on this section – MOST HELPFUL part of my study. I should have spent more time on this. Luckily that I was already quite familiar with MPEP, so I didn’t have to read the entire section when I saw a test point. For those of you who don’t want to read the entire MPEP, I believe reading the comments here and the associated section in MPEP would be more efficient.
The entire preparation was a little more than 4 months. I didn’t count how many hours I spent, probably more than 400 hours, considering that I studied in most of the nights and weekends…
You were lucky. Care to share your AIA and non repeat experience on how you studied. Lots of obvious 97 to 03 questions using KSR rules would have confused me into wrong answers during exam. I’m staying away from 103 on practice tests. I hear now there are lots of appeal and PCT questions and practice test are generally weak in these areas. The pli must have covered 1800 and 1200 pretty thoroughly. Do you still need your pli material? How much for the pli material?
I have to say that PLI summary is NOT sufficient in covering 1200 and 1800 – only several pages. Maybe the lectures on the CD/DVD cover more detailed information, but I don’t have them…
I would recommend the summary of this website. And more importantly, read the comments in this section. The comments covered a lot of test points in 1200/1800. For my test, 1800 was reasonably tested, but 1200 was indeed heavily tested. But I believe there is fluctuation between test and test, so better to get familiar with both chapters.
My PLI summary was from a friend, and I cannot resell it… However, as I said before, it is not very useful anyway. So, better to spend the money somewhere else.
As to AIA, I used a brutal way to study. I read the source materials (Federal Register) first. Then I go the FAQ published by USPTO. I printed out the questions but not the answers. Then I tried to answer each question by searching the Federal Register, to practice my searching skills and to get more familiar with the test points.
Since these rules are quite new, the questions are correspondingly straightforward. Maybe the fact pattern is complex, but they may just be red herring. To answer the question, you only need to know the very basic. For example, IPR can only rely on patents and printed publications, but PGR can rely on wider range of information.
For nonrepeats, I think being familiar with MPEP is still critical. I went to MPEP frequently during the exam. I checked probably 70% of the questions using MPEP… So, I would recommend practicing the old exams, just to improve the search skills.
DON’T stay away from 103 questions during practice. The KSR only supplements the criterion for obviousness rejection, but NOT replacing it… A lot of old principles are still valid and tested!
Hey All,
NoAnother: Congrats on the pass! And, what a way to go through the AIA material (that is labor intensive..but, it worked!).
One of the principals that you hit on is this: You blended knowledge with skill. It’s not enough to just read source material or reviews (if there are any), and conversely, neither is it enough to just memorize questions or just take exam questions. You need to partner both, and you need that blending to be focused on the IMPORTANT parts of the MPEP (as you probably know, there is a LOT of material…and also, a LOT of material that is not tested, not has it ever been tested!)
To those of you still reading/studying/wondering about the exam, please feel free to ask questions! If you need a more focused, targeted, all encompassing study aid, you can check out the free materials on our Patent Bar Review site (www.wysebridge.com), and if interested, have access to all our study programs (which include targeted AIA factoids, study references, and practice questions) for a fraction of what other review courses charge.
Last bit of advice: Please, Please….make sure you learn not just the material (meaning, don’t just study the MPEP, AIA changes, etc). Make sure you are able to learn ABOUT the exam itself, and how to prepare for, and take, that exam.
All the best,
~Bfusion
No violation
Some questions…
1) the examiner must use TSM for obviousness evaluation?
2) there are A, B, C and D company, A sued B and C with the same subject matter. And who can file the protest?
3) Can affidavit be used to overcome under 102(g)?
Br
Hey All,
Just a (continual) reminder that the USPTO released the newest version of the MPEP (E9) and that this is the edition that is loaded into their online “searchable” format.
HOWEVER: as of April 29th (today), the version on the exam is still E8R9 (the prior version.
just a heads up as you study, that if you are using the searchable version on-line, this is currently NOT the version on the exam.
Also, for those of you new around here, over at wysebridge patent bar review, we’re continually posting updates, tips, and answers to questions on the forums there as well.
All the best to you!
~Bfusion
http://www.wysebridge.com/blog
Im looking for PLI 2014 materials for sale in SoCal, anyone has that material, please reply.
Patent Bar Exam Study Tips (From Wysebridge Patent Bar Review)
Tip # 5. Don’t panic. If you start to worry or feel yourself freaking out, take slow deep breaths, and look away from the screen. You’ll be ok. Promise.
6. Answer the easiest questions first. If you’re stuck on a question, think about moving on to the next question (but be sure you mark it on your answer sheet template). You can always return to the question later. Often returning to a question after taking time to answer other questions can give you a fresh perspective, and you might find something in the answers of another question to help you.
7. Don’t second-guess an answer unless you are certain that you misread or misinterpreted the question. You don’t understand how crucial this one is. You’re going to doubt yourself. DO NOT CHANGE YOUR ANSWER unless you are 100% sure you know the right answer. This even goes for that “gut feeling” guess. GO WITH IT. More often than naught, that gut sense will be the right answer. Also, watch out for careless errors and double-check that selected the correct radio button.
We have more study tips, free study resources (reviews, questions, etc), and a lot more to help you study (and pass) this exam over at http://www.wysebridge.com
All the best to you!
~Bfusion
I took the test this week and passed first try. I purchased omniprep and a second hand recent version of PLI (just the green book). I went through both courses and all the practice exams. It’s still important to do the old exams, read through all the questions on this site and understand the answers. doing this will help you practice your search skills and there were about 10-15 repeats. Being able to knock 10-15 questions in a matter of second was very helpful. You need to not only read, but understand the study materials. the questions are tricky and complicated. lots of PCT, maybe 10-15 AIA, 5 on appeal,
Hey there Guys,
One of the aspects of the patent bar (Especially when it comes to studying for the Patent Bar Exam) is trying to wrap your mind around the questions, what to study, what can i “know” about the exam prior to going in. It’s one of the aspects of Wysebridge Patent Bar Review that we incorporate (our Frequency Charts of every repeated exam question =)
In a really slick combination of data, the patent bar exam, and analytics,
a paper was published the other day highlighting the Gender Differences amongst Patent Practitioners. We felt inspired to create a little infographic as well.
The paper, titled “Gender Diversity in the Patent Bar” by Saurabh Vishnubhakat, examines the gender breakdown of patent agents and attorneys in the fields. We created a little chart/infograph to highlight the details:
http://www.wysebridge.com/blog
All the best to you as you study and prepare to enter this field!
~Bfusion
Passed on my first try a few days ago. I studied with a recent version of PLI. I would really recommend getting it because it efficiently focuses on the topics you need to know and really prepares you for AIA material. However, my future firm paid for it (I just graduated law school) and if I had to personally dish out the cash I’m not sure if I would buy it or not. Anyhow, I looked over this site sporadically and found it helpful. Everyone here is correct: do old practice tests! I didn’t memorize old questions, but you will recognize repeats on the exam.
I can’t really remember specific questions I got on the real exam, but figured I’d chime in on some of the topics I saw. Lots of appeal, PCT, and restriction practice questions (I think it’s out of the ordinary how many restriction questions I got). I took the Oct 02 test and both 03 tests and saw about 10 or so repeats. As far as AIA, I probably had 5 questions, and most of those were concerned with distinguishing PGR and inter partes review. The rest of the material I either knew from basic knowledge of how the PTO works or I looked up the material (mostly looked up). The most important thing I did to prepare for the test was take practice exams and learn how to search the MPEP efficiently. Some of the questions ask about obscure topics, so searching the MPEP efficiently is very necessary.
Hope this helps a little, and good luck to everyone studying. It’s a brutal test to study for due to the sheer amount of testable info, but getting it over with is also a great feeling.
Hey Jdaniel,
Congrats on the pass! Huge accomplishment, and all the best to you!
J Daniel,
Could I get your cell? Email me at welddoctors@hotmail.com I have a couple of questions about the exam search feature.
Troy
Hey All,
A Little Tip while studying the NEW AIA materials….
Did you know that you can easily locate the 37 CFR’s for the AIA at the end of each document (the FR’s)?
These are the little tips and tricks Wysebridge Patent Bar Review (www.wysbridge.com) shares with you because to pass this exam, it’s more than just knowing the MPEP…you have to know the exam, and the skills it’ll take to pass.
All the best as you study!
~Bfusion
Hey, I just took and passed the Patent Bar last week!
I have two sets of PLI Patent Bar Exam Home Study materials for sale. One of them is brand-new and unopened, with plastic wrappings still on. It’s the newest updated post-AIA version.
Email me at ariellejgu@gmail.com!
HI All,
I have PLI Patent Bar Exam Home Study materials for sale. It’s the newest updated post-AIA version and I passed the exam in January. If interested, please email me at kansasman2014@yahoo.com
Hey All,
Well, the USPTO is at it again! Some good news, and some well, less than exciting news:
First:
REVIEW REVIEW REVIEW! I had posted a while back about the potential for the ability to review your past USPTO exam at prometric locations. Well, guess what:
You now can.
Per the USPTO Website:
Registration Examination Applicants Review Sessions
Beginning on or about June 04, 2014, those applicants who failed their registration examination will be able to schedule a review session through Prometric at a location selected by the applicant for a fee of $195. Reviews must take place within 65 days after the date of the examination. Applicants will review only those scored questions they answered incorrectly (37 CFR 11.7(e)). Complete instructions for scheduling these review sessions will be provided with the result letters.
Second:
CHANGES CHANGES CHANGES! Well, you knew it was coming (especially with the newer E9 MPEP available online).
OCTOBER 4th, 2014: The USPTO EXAM CHANGES AGAIN…..
Examination for Registration to Practice in Patent Cases will be Updated October 4, 2014
The United States Patent and Trademark Office will update the content of the registration examination on October 4, 2014. The last date to take the current examination is September 29, 2014. No exams will be scheduled between September 29, 2014 and October 4, 2014. The updated examination will cover all material referred to in the Source Materials, including the Leahy-Smith America Invents Act (AIA). The updated examination will cover all material in the current examination and additionally will cover: the material in the Manual of Patent Examining Procedure (MPEP) Ninth Edition, March 2014; Consolidated Patent Laws including changes implementing the Patent Law Treaty; Consolidated Patent Rules including changes to implement the Patent Law Treaty; and Patent Prosecution Highway. See Source Materials for the Registration Examination. For further information concerning AIA, please refer to the AIA Implementation web page.
I’ll keep you posted (or you can read more at Wysebridge Patent Bar Review (http://www.wysebridge.com/blog).
All the best,
~Bfusion
Preliminary I passed test. Thanks for this site and Bfusion.
Congrats Jeff! A Huge Accomplishment for you…glad I (and Wysebridge Patent Bar Review) was able to help out along the way!
All the best in this next phase of your life!
`Bfusion
I took it today and preliminary I passed on first try. I’m glad I passed because it was brutal and I thought I failed. My study method: read and reread PLI materials (I will say they are not complete. I did not look into other resources, so I can’t compare), got the flash cards from Amazon, practiced old exams from 2000-2003. In addition, I made a few tables and went online to search for some tables/charts to help me understand the Post-grant proceedings, protest, 3rd part submission…etc. Note: I have prior patent prosecution and litigation experience and I know that helped me a lot.
On another note, during the exam when I was searching the MPEP, the system crashed on me twice (I raised my hand but no one came then I saw my proctor was sleeping!!!!!)
Were there a lot of repeates?
Hey Sunny,
Congrats on the pass! Great job, and a huge accomplishment. On a side note, It baffles me how their system is STILL crashing (that issue has been going on for 1+ years now). Wild. We’ve contacted prometric about this (and another issue with searching…one that could potentially miss a “hit” when doing a keyword search, if the word comes at the end of the sentence on the page).
It’s always good to get the feedback from those who passed. Chris, to address your point….the exam has changed, but…from the feedback we know of, there still are repeats on the exam, though…as you might guess, the word for word q’s are slowly being phased out.
All the best,
Bfusion
http://www.wysebridge.com (Wysebridge Patent Bar Review)
Does anyone know if the control+shift option works with the exam?
Also does anyone have the latest version of PLI hard copy of the book s
I can’t speak to the control+shift but I was able to use the search function during the exam. I also have the 2014 PLI books along with the newest supplemental materials they sent out in February.
I talked to enrollment today the said the pdf is not Adobe? They also affirmed the new test in October and the $150 paid Prometric to review the missed questions if you fail. I’ve heard adobe 5. Have you seen the USPTO pdf search on the .gov site. It’s cumbersome. Anyone know where to practice with or download the correct searchable MPEP?
Hey Chris and Troy,
Yeah, It is Not Adobe on the exam, but, getting used to (As you mentioned) opening single .pdfs to do searches will be helpful for the current exam.
I’m not sure what will happen post Oct, if the USPTO will have updated their searching function.
All the best,
Bfusion
http://www.wysebridge.com
Hey all,
A few months back we had been discussing about an updated forums/place to collaborate, work on questions, discuss the exam, etc.
We are finally up and running (www.forum.wysebridge.com), with a simpler, easier to use interface and way to better keep track of questions, answers, and discussions (instead of long threads like here).
This site has been instrumental in a lot of individuals paths while studying, but as time has gone by and threads and information have become outdated, the need for a better place to collaborate and work on materials has grown.
So, please feel free to utilize, share, collaborate on our new platform!
All the best,
~Bfusion
Hello,
I am using PLI 2012 to prepare the exam, the prime questions on the book, some of them are earlier than 2000, like 1997, is there anyone interested in taking a look of them together?
thank you
Just passed last week – selling the latest PLI home study materials (binder, 2014 supplement, pre-course materials). Email pbmat14@gmail.com!
Passed the patent bar yesterday! about 10 repeats and 10ish AIA stuff. I used PLI’s material and took 2003 and 2000 exams over and over til I had that cold and had a general grasp of 700/1200/1800/2100. There were about 5-10 really nitpicky questions that took some time to find in the MPEP, which I saved for last and had a good bit of time to go through. Really read those questions, they are tricky sometimes!
Congrats! How many PCT do you think you saw?
sorry this is late, i think 5 or less pct. i didn’t see nearly as many as i thought i would.
Hello,
Passed the patent bar and am selling PLI materials. Email shang.sm11@gmail.com!
I am looking to buy PLI study materials, anyone please email me and let me know, Thanks. I am planning to study for MPEP exam and taking the test soon, I would appreciate any help, suggestions, and recommendations from all of you. I am an old EE engineer, and want to do patent related works when I am retire in a few year!
Hi Steve,
Were you able to find anyone to help you with study materials?
If not, I’ll be glad to try and help you with your studies (I run Wysebridge Patent Bar Review). We’ve helped a number of individuals who were in your similar position, with lots of hands on practical EE experience looking to utilize that knowledge base!
All the best,
Bfusion
http://www.wysebridge.com
Hey – can somebody explain the Mary and her grandfather example to me?
To summarize, Mary’s 90-year old grandfather wants to file an application – is he allowed to call the examiner and discuss the field of art? (answers is yes)
Also, does selling the product of your invention post-AIA bar you from getting a patent or does it count as a “disclosure exception” under the second part of 102?
Need a lot more details on the first question to give a meaningful answer.
As to the second, you selling your own invention less than a year prior to your filing would not be prior art due to the exception of (b)(1)(A). All of the (a)(1) prior art (publication, use, sale, otherwise available to the public) is considered a “discloure” that can be excepted under (b)(1).
I just passed the patent bar in August with ease. I’m selling my study materials. Whoever wants to buy cheap, please contact me or leave your contact info in this forum.
Hey Lucky,
Congrats on the pass! Huge accomplishment!
Question for you: did you have any issues on the exam day with your testing software? I’ve been getting feedback from a number of people saying their systems froze or crashed (Which was a big issue back in 2011-2012 era).
All the best!
~Bfusion
http://www.wysebridge.com
Please give me contact info, I am interested in buying.
Please give me your contact info, I am interested in buying the pli material.
Passed this week, I feel like by a comfortable margin.
Not going to violate the NDA but I will say if you are using a NEW version of PLI and supplementing with this site, you are doing the right thing and probably have a 90% shot at passing. PLI was so spot-on as to the new stuff it was almost scary.
People bad-mouthing PLI on here or other boards are either trying to get away with an old edition (which is a baaaad idea right now) or just aren’t paying attention.
Good luck everybody!
Hi Bfusion, can you guaranteed that I will pass the exam if I am taking your 12 month PRO level study program and materials?
I am new to this website, and I really like it very much. I am planning to study for MPEP exam and taking the test soon, I would appreciate any help, suggestions, and recommendations from all of you. I am an old EE engineer, and want to do patent related works when I am retire in a few year!
Hi Bfusion, can you guaranteed that I will pass the exam if I am taking your 12 month PRO level study program and materials?
I am new to this website, and I really like it very much. I am planning to study for MPEP exam and taking the test soon. I am an old EE engineer, and want to do patent related works when I am retire in a few year! I would appreciate any help, suggestions, and recommendations from all of you.
Hi , I have a question and I am pretty sure that the answers will be beneficial to others too. I read on USPTO website mentioning that one has to score 63 marks out of 90 to consider as pass as the 10 beta questions are not considered in marking. So 63 marks out of 90 is 70% marks in order to pass. So now at the end if someone sees their score as 57% that means the person is short of 6 marks to make it 63 as passing no. for making as 70%. Is 57% marks means one has scored 57 marks out of 90 or marks are different than percentage? Please confirm. Just wanted to clarify and consider review if needed. I in anyways appearing again but will be good to know. Thanks in advance for replying.
Nancy – you need to post exactly what was displayed at the end, I’m sure it is much clearer than what you’ve written. If it actually says “57%” then that would be the percentage of the 90 questions that were answered correctly.
IDS, foreign patents
In submitting information disclosure statement, does the PTO require certified translation of foreign patents?
Thanks a lot.
See Rule 98. IF you have a translation (or if it’s at least “readily available”), you have to submit it. There’s no certification requirement as to this translation since you’re just submitting whatever you already have.
Whether or not you have a translation on hand, you always have to submit a concise statement of relevance of a foreign-language document.
Hey All,
Just a reminder that as of Oct 5th, the Patent Bar Exam will now use version E9 (the one that is searchable on the OED website, and has a bit of the prior FR material added in).
This is a change up…so, for those of you studying/currently studying, if you weren’t aware and were using E8R9, you should switch to E9 and get used to the format and updates.
As always, we’ll be keeping our ears to the ground to help with insights onto the exam.
Also, we (Wysbridge Patent Bar Review) are running a $100 discount for October. This is for the full 12 month access to the PRO review materials.
All the best!
~Bfusion
http://www.wysebridge.com
Hey Everyone,
Wanted to give individuals a heads up that Wysebridge Patent Bar Review is running a $100 discount off their 12 month access, and anyone that signs-up between now and the 31st will be placed into a drawing for a FREE 12 month access.
All the best to you as you study!
`Bfusion
http://www.wysebridge.com
I passed after the changes implemented. I used Wysebridge for studying and I liked it, primarilly because I was on a budget. It actually does provide a lot of bang for your buck. I read and re-read the pro-chapter summaries and did the frequently asked uestions until i knew the concepts behind each question—this involved a lot of practice tests. All in all I did probably end up studying for more than 150 hours. I highly recommend it to anyone considering buying a program.
As for the test, I won’t violate the non-disclosure agreement…..but I will share with you my strategy. Finish the section in two hours, mark the ones you have no idea but go with your gut on those that you are reasonably certain of—still mark it. In the last hour go through the questions you marked. This really worked for me, i was able to change 5-6 questions in both sections from something that was clearly wrong to something clearly right. This was my salvation. Also take the full break, eat something salty on your break so you won’t have to go to the bathroom.
Good luck to all, I’m happy to be done with this monster.
I strongly suggest when you plan to take the exam, plan for a long day a total of 6 hours with 1 hour break. I find that the first 3 hours are fine then after lunch it becomes a challenge focusing on the questions due to fatigue setting in. Do not eat a heavy lunch, perhaps bring a sandwich just enough to give you energy. Also you can keep a snack and water or soda in your locker. When you find yourself losing focus, go to your locker and get replenishment quickly to bring you back to focus then return to the exam, that 3-5 minute refresh can help tremendously.
Sitting for the exam early January. Any advice on what past exams to study? Recent repeat questions? TIA!
Just passed the exam today. Used the PLI materials with the supplements. Great stuff and it was the difference! Highly recommend them for future test takers. The supplements on the new exam materials after the October changes easily got me 3 or 4 questions alone.
Selling my 2014 patent bar material from PLI with all supplements on Amazon. Check it out.
I just passed the patent bar, so my materials are now available. I bought the materials at the end of November 2014; I haven’t written on any of the pages. It was my impression that these materials saved me quite a bit of time by helping me to focus on the most important topics and concepts. Email me at uwave_notes@yahoo.com (uwave_notes (at) yahoo (dot) com) if you’re interested. I’m asking $900.00 plus shipping for now; I’ll gradually lower the price until they’re sold.
Just wanted to say I wouldn’t have passed without this site. Studying the repeat questions and other materials got me at least an extra 10 points on the exam…and I assure you, I barely passed.
do you mind to leave your contact info?
Anyone who reviewed their exam will see the repeats on his next time?
Is it worth reviewing the exam?
thanks
Hi Julie!
It depends. There’s no guarantee that you’ll see the same q’s as your prior exam (after going to review). That said….In “general”….reviewing can help (as mentally, it’ll help you get an idea of what you missed, what to remember, etc).
ALSO…there are still a number of new/old repeat questions on the exam (Wysebridge Patent Bar Review continues to provide those frequency charts to show which questions are repeatedly showing up on the exams).
So…if it’s a matter of mentally getting an advantage…it might be worth it to review.
All the best!
~Bfusion
http://www.wysebridge.com
Thanks for your answer, Bfusion.
I saw the OED webpage said there will be update after June. any advice for this change?
thanks
Hi Julie!
Yeah, the exam is changing again, and we’re curious to see exactly what those changes will entail (from the OED website, the exam is covering the exact same material as the last change in October…. The updated examination will cover the same material as the current examination, which is outlined in the Source Materials for the Registration Examination, including the Leahy-Smith America Invents Act (AIA)).
Not sure if it’s going to be question updates/different databanks, but we’ll be sure to keep people posted on those changes!
Best,
Bfusion
http://www.wysebridge.com
Julie,
I highly recommend the review. You will get at least 30 Q&A which will allow you to figure out what your weak areas are. In my first exam, I noticed many PCT questions but didn’t think I had done that bad in those questions. Also, there were a few questions that I was so certain I had answered correctly but I hadn’t. During the review session, I noticed there were several concepts and rules that I was wrong about or that I had simply never seen before. For my 2nd attempt, I came to this site and spent considerable time reviewing the Repeat Questions. I don’t recall any questions from my 1st test showing up in my 2nd test though, but still I had memorized some rules that I had missed in my preparation the first time so that helped.
I passed the exam recently and am thankful to this site. Here are some tips to newcomers.
– Do not count on doing MPEP quick searches during the exam. The pdf interface is old. You can view each chapter page by page, or jump to a page, but it could be hit or miss. Ctrl-F is not active. You have to type the search string in ‘Find’ box and hit the ‘Repeat’ button. Note that ‘Find’ doesn’t give an indication that the end of document has reached, so pay attention to the page number appearing at the top of page.
– The ‘Mark’ feature on the exam is convenient and shows in red the questions that you have selected for later review. So really there is no need for you to make a ‘grid’ on paper before the exam starts, (as some others have advised).
– There were very few repeats in the recent exam. But it is still helpful to study old (200-2003) exams, but not memorize the answers. Instead study hard why each answer is right or wrong. I could only recognize about 5 word for word repeats. The rest were partial.
– The glossary has new stuff. PPH, IPR, PGR etc.. They are located in separate short docs under the drop down menu.
– Study the ‘overviews’ of ALL MPEP chapters. I actually read 1500 for the first time during the test to answer a question.
– Prometric gives you 4 sheets and two pencils, that’s plenty. Actually you wouldn’t have much time to write anyway.
– Do not plan to drive out during the lunch break. Too risky. Bring food or walk to a nearby gas station to get a bite. Be back in half hour.
– Other than car keys and driver license, leave other things in the car. The locker provided is too small for a laptop bag.
– After you pass the exam (and you will), post your inputs to help others.
On March 22, 2012, a patent was issued to Company O. Company C, a competitor, submited a
request for inter partes exam to the Board of Appeals. Company O then replies to the request and the
Board of Appeals decides not to institute an inter partes exam. Which of the
following can Company C do?
I. Appeal to U.S. District Court
II. Appeal to Federal District Court in Eastern Virginia
III. Request rehearing from Board of Appeals
IV. Appeal to Director of USPTO
A. I
B. I, II
C. II, III
D. III, IV
E. III
I found this question online. Can anyone help me determine what the answer is? According to USC 312, it seems like the answer should be “the decision is final and non-appealable.” However, that isn’t an option. Any help would be great.
they are not correct. should be final and nonappealable. I think.
FINAL DECISION.— A determination by the Director under subsection (a) shall be final and non-appealable. Upon a determination that no substantial new question of patentability has been raised, the Director may refund a portion of the inter partes reexamination fee required under section 311.
I found on FAQ for AIA that decision by Board not to institute interpartes exam is not appelable.
Hello everyone!
Quick question to those who have taken the exam recently. Do we need to know old vs. new rules pertaining to the AIA or are we able to just study the new rules? For example, I don’t get many practice questions (obviously) for the new 102 rules and I’m curious if I should be spending much time practicing the old ones.
Thanks!
The people I have spoken to that have taken it post AIA have said there are plenty of questions about the new rules. Basically you need to know both.
Regarding “Board of Appeals decides not to institute an inter partes exam..
This is rather confussing:
1)
2601: ” Public Law 107-273 expanded the scope of what qualifies for a substantial new question of patentability upon which a reexamination may be based, expanded the third party requester’s appeal rights to include appeal to the Court of Appeals for the Federal Circuit (see MPEP § 2679), and made
technical corrections to the statute.”
2)
2648: “Once a request for inter partes reexamination has been denied, the Central Reexamination Unit (CRU) will allow time for seeking review of the examiner’s determination refusing reexamination. If no petition is filed within one (1) month, the CRU will process the reexamination as a concluded reexamination file. See MPEP § 2647 and § 2694. If a petition is timely
filed, the petition (together with the reexamination file) is forwarded to the office of the CRU Director for decision. The CRU Director then reviews the
examiner’s determination that a substantial new question of patentability has not been raised or that there is no reasonable likelihood that the requester
will prevail. The CRU Director’s review is de novo. Each decision by the CRU Director concludes with the following paragraph:
March 2014 2600-48 2647.02 MANUAL OF PATENT EXAMINING PROCEDURE
This decision is final and nonappealable….
3) The requester may seek review of a denial of a request for reexamination only by petitioning the Director of the USPTO under 37 CFR 1.927 and
Dear Bfusion,
I see your email address is not available anymore and I have a question for you regarding your study guide. Can you please email me?
Thank you,
Annette
Recently I passed the exam using PLI home study material (first try!) and it is available for sale. I bought the material around July 2015 (I paid $1900) and used it as my only study source along with this website. I have not written anything on it (no marks) and the condition is very good. All of the online lectures was copied onto CD. These lectures were extremely helpful to absorb the material and I think this was the key for me to pass the exam because it provides both visual and audio memories of the material. I am asking $700 including shipping. I hope my study material finds another home to assist a future patent agent/attorney. If you are interested, please email me at banana_apple_orange@hotmail.com
I recently found some questions related to PLTIA.
It is my understanding that the current exam through Mar 8 is MPEP R9.0 effective Nov 2013.
Since PLTIA went into effect Dec 2013 the changes will not be tested until after Mar 8 2016
These changes include a 2 month extension on claiming priority (for cause) and there is no longer a requirement to file a claim or drawing to get a filing date.
http://www.uspto.gov/patents/init_events/PLT_Memo_to_Examiners_12-13-2013.pdf
I took the patent bar in April 2016 and did not pass although I was pretty confident with the material. I used PLI online course and studied hundreds of hours as suggested. Unfortunately PLI emphasized pre-AIA in their practice questions, and there were hardly any pre-AIA questions on the new (post March 2016) patent bar exam. I studied AIA as well but without much of ‘past exam questions’ type of practice questions. In many questions, I ended up getting down to 2 answers and then selecting one with 50/50 chance. My advice would be to focus on AIA.
I am using PLI online course too. Don’t you think the AIA questions in Patware not enough? I am preparing the test now, and wondering if there are better sources for AIA questions. Please share if you know any.
I am looking for a Patent Bar tutor! email me if interested: BLawyered@outlook.com
I took the exam in April and did not pass. I am considering signing up for the Q&A review session for $195… has anyone done this??? Is it worth it?
Thanks!
I did the review session when I failed by 1 question (yeah. sucked.). It was helpful in that it allowed me to identify what types of questions seemed to give me the most trouble (appeal, reissue, PCT were the trouble spots for me).
If you failed by a lot, its safe to say you need more practice in a lot of different areas, but if you were close I think it’s probably worth the money to see what your trouble spots were.
I passed the exam today and have my PLI home study material for sale. The study material was bought in Aug 2015. I have not written anything on it (no marks) and it looks like new. I am asking $500 including shipping. I can share with you some helpful tips for the preparation. If you are interested, please email me at joejohnsonforeal@hotmail.com
Hi I am looking for the PLI home study material (the more recent the better)
if you have one pls email valiaev.aa at gmail dot com
thanks a lot
Just passed the exam ! April 28 2018. On my second try.
I wrote a detailed guide called
HOW TO PASS THE PATENT BAR WITHOUT A COURSE
on my website! The guide should help anyone who has no idea where to start and is on a budget. The link is
http://www.adrianmederos.com/2018/05/how-to-pass-patent-bar-without-course.html
I wrote about tips and advice for others taking the exam!
Also selling the 2016 PLI study guide for $300. It’s everything you need to pass. Reach out if interested I@AdrianMederos.com
This website was really helpful! Thanks to the Admin!
I passed the exam last month! I’m selling the 2017 (payed around $3000) PLI study guide for $250, plus notes re subjects I failed when I took it the first time, plus a chart that helped me memorize important information. It’s everything you need to pass. Reach out if interested homie_domy@hotmail.com
Hi everyone,
I’ve recently come across this question but I got the wrong answer and I don’t understand why. I chose E but apparently the answer is D, can anyone help explain why?
Thanks!
On December 18, 2013, which of the following statements regarding an applicant’s duty to submit a drawing in a U.S. patent application is true?
I. The examiner may only require a drawing where the drawing is necessary for the understanding of the invention.
II. If a drawing is not necessary for the understanding of the invention, but the case admits of illustration, the examiner may require the drawing, but the lack of a drawing in the application when filed will not affect the filing date of the application.
III. If a drawing is necessary for the understanding of an invention, but is not submitted on filing, the application will be given a filing date anyway.
(A) I
(B) II
(C) III
(D) II and III
(E) I, II, and III
I think the word “only” in that sentence is the culprit. MPEP 608.02: 37 CFR 1.81: Drawings required in patent application:
(a) The applicant for a patent is required to furnish a drawing of the invention where necessary for the understanding of the subject matter sought to be patented. The rest of the paragraph states II and III. My first pick would have been E. Hope this helps.
Thanks! This is very helpful, there have been a few questions like this were one word has thrown me off! I guess with practice this will get easier
Hey everyone, recently passed the patent bar.
I made a video called, “How to pass the patent bar without an expensive course”
I thought this might help some of you who are overwhelmed on where to begin!
https://www.youtube.com/watch?v=P21yivrGT0w
If anyone needs study materials for patent registration exam, please take it for free from me, email me at jasaol@outlook.com. I used those to prepare for my exam and I passed so no longer need those.
Hi Jerry, Do you still have the study material available? Thanks
Anna would you like to be study partners?
I found this in the uspto site. They are training materials for the examiners. I was wondering if someone might comment if it is useful. https://www.uspto.gov/learning-and-resources/examiner-training-materials
Also looking for a study partner to hold each other accountable. Message in if you want to join.
I’m also preparing for the exam nut I just started. Can I join you guys?
Hi Cheri,
Please email me at holyriver6@gmail.com in order to study together.
Selling my 2019 PLI home study material. Email at jeansebyan at gmail dot com
Selling my 2020 PLI study materials! Comment here with your email so I can reach out – FYI: due to Covid I was approved in May 2020 and certified to take it until Feb 2021
Jonathan,
I’m interesting in buying your study materials! Please email me at samp29001@gmail.com. Thank you
Hi,
If this is still available please email me at denahuynh@hotmail.com. Thank you.
Hi there, I am looking for a study partner. Let me know at: brandy(dot)gamblin(at)g(“nothing-to-see-here, move along”)mail(dot)com.
ha ha. bots shouldn’t be able to figure that one out.
Hope you’re having a great day everyone!!
Would anyone from here be interested in splitting the PLI course? I have an .edu address, so the cost is $1895. There are two others already interested in splitting the cost if we can get more people to lower the per person cost.
Please email for more info: brandy(dot)gamblin(at)gmail(dot)com
Thank you
Has any recent test taker found the Q1-68 above to be relevant to the current exam?
Hi,
Would anyone be interested in spliting the cost of the PLI course? The upside is that you can keep the binder as I already have one. Ideally you would need a .edu email so that the cost would be lower.
Feel free to email me if you are interested: qinsi(dot)zheng(at)gmail(dot)com
Best,
Hi there! Is anyone selling the PLI binder? Or would anyone want to split the PLI course? Please email me at thamyuanfang(at)gmail(dot)com
Sorry, but only one user is allowed per course. Copying the book would violate PLI’s copyright. (You can, however, buy the book second hand.) Sharing the online aspects of the course violate the EULA (End User License Agreement) that each purchaser agrees to when they first access the course online.
Mark Dighton, Admin. Director
Patent Office Exam Course, PLI
Selling my 2020 PLI material. Let me know if you’re interested!
I would be interested.
Great. Shoot me an email at amustap5 (at) hotmail (.) com to discuss
Need help! Have taken the exam in 3 occasions with results in the low 60s. Anyone have any advise? Also, selling my PLI course materials, if interested email me please. Thank you
Dear Nancy: Would you like some help from us at PLI? Have you written us before? I can take a look at your work in the course and offer some advice, if you’d like.
Sincerely,
Mark Dighton, Admin. Director,
Patent Office Exam Course, PLI
Yes! Absolutely! Please. How can reach you?
nancy_es2000@yahoo.com
Hello! I’m selling my PLI 2020 materials. Please email me at thamyuanfang[at]gmail[dot]com
Hi! looking to pass off my PLI materials. If interested please email me at 121649702@qq.com
Thanks!
Hi, I’m looking to pass off my PLI material. Please email me if interested. leott58[at]gmail[dot]com
Have a 2019 PLI binder for sale available at katiedonald4@gmail.com
just passes the exam. I have 2017 and 2019 PLI complete binders. They are in brand new condition. no marks or signs of wear and tear. I’d let them go for $400. I have some other Qs & As too.
pls email me at phildelprose@gmail.com
thanks
Phil
just passes the exam. I have 2017 and 2019 PLI complete binders. They are in brand new condition. no marks or signs of wear and tear. I’d let them go for $400. I have some other Qs & As too.
pls email me at tylersheveas@gmail.com
thanks
Tyler
I’m looking to pass off my 2021 PLI materials (brand new, unboxed); contact me at mingzh411@gmail.com if you’re interested; the materials can also be found at https://www.ebay.com/itm/185352010744
Thanks!
Update: sold
I have a 2019 PLI binder for sale available at: https://www.ebay.com/itm/185362207239