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Patent bar study notes for the USPTO registration exam

These are the compact notes that I used to study in 2014.

pre-AIA 102 dates comparison
pre-AIA 102 dates comparison
(a) invention vs public                  [present in US or written anywhere]
(b) filing vs publication + 1 yr         [use/sale in US or written anywhere]
(d) filing vs self foreign filing + 1 yr [foreign grant bars US patent]
(e) invention vs US patent publication   [regardless claiming][PCT counts once in English]
(g) invention vs invention

AIA 102
filing date effective any place, any language
(a) prior art                 (b) exceptions
(1) available to public       (1) < 1 year
                                 (A) inventor disclosure
                                 (B) non-inventor disclosure,
                                     but inventor disclosed first
(2) patent app                (2)
    [names another]              (A) inventor disclosure
    [if published]               (B) non-inventor disclosure,
    [claimed or not]                 but inventor disclosed first
                                 (C) commonly owned disclosure

AIA transitional app is one that ever had a claim that was unsupported before 2013/03/16
applicant must indicate so
AIA transitional app is examined under AIA 102, but subject to pre-AIA 102(g) interference

CFR 1.130 (AIA) prior disclosure from inventive entity
CFR 1.131 (pre-AIA) swear behind
CFR 1.132 any other traversal evidence

Obviousness (2100)
Graham factual inquiries:
(A) the scope and content of the prior art
(B) differences between the claimed invention and the prior art
(C) the level of ordinary skill in the art
   - commercial success
   - long felt but unsolved needs
   - failure of others
- examiner must articulate 103 rejection rationale
- exemplary rationales:
(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¡± ¨C 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 reference or to combine prior art reference teachings to arrive at the claimed invention.

Non-obviousness if:
 - problem not previously recognized, even if solution is obvious
 - unpredictable results (predictability requires expectation that: elements can be combined and will work for the intended purpose)
 - prior art teaches away
 - no reason to modify lead compound and modifying would be disadvantageous
 - reason to modify compound but no expectation of success
 - no reasonable expectation of success
Obvious if:
 - TSM ensures obviousness
 - specification indicates obviousness
 - web browser usage
 - known elements and predictable results
 - elements operate in combination as they would otherwise
 - structural similarity plus motivation to combine
 - reason to combine and how to do so recognized
 - recognized problem and reason to modify

- a pure compound is obvious from a mixture with a property resulting from the compound
- multiple lead compounds may be considered
- the rationale for combining need not be explicit, it can come from general knowledge
- analogousness of art construed broadly
- consideration of different-field reference requires consideration of problem to solve
- reasonable expectation cannot be based on app disclosure
- not just the differences, but the claimed invention as a whole must be obvious
- examiner must make prima facie case with evidence before burden shifts to applicant

Appeal process (for exam and reexam) (1200)
appellant: notice of appeal [2nd rejection of claim + 6 months]
appellant: amend only to cancel/comply [advisory action otherwise]
appellant: appeal brief [2-7 months from notice, $0, failure to file abandons all claims, bars interview]
examiner: allow | reopen prosecution | write examiner's answer [examiners' appeal conference, optionally new grounds of rejection]
new ground -> appellant reopen prosecution | maintain appeal [debatable new ground petitionable, 2 months]
appellant reply brief [2 months]
--- jurisdiction to PTAB ---
<> oral hearing
<- decision
<- remand
-> rehearing
-> judicial review
- absence of appellant does not preclude examiner arguments at an oral hearing
- extension only for cause
- notice can be unsigned
- appeal brief must be filed with petition to revive for its consideration
- RCE implies appeal withdrawal
- if no brief filed after notice: examiner amends to cancel rejected and object claims
- with reason, affidavits can be submitted between final and reply brief
- no affidavits in Board jurisdiction
- if appelant is unresponsive after appeal, examiner cancels rejected and objected claims
- real party in interest assumed if not indicated
- jurisdiction stays with Board during prosecution reopened on new grounds

PCT process (1800)
  0 priority filing
<12 PCT filing claiming priority
 16 priority claimed
 16 ISA International Search Report
(16 or ISR + 2) deadline for Article 19 claim amendments
 18 publication
(22 or ISR + 3) deadline for Article 34 spec + claim amendments
(22 or ISR + 3) demand preliminary examination (optional)
 30 enter US
- filing date requires: description, claim, designation of a country, name of applicant (not inventor)
- filing date does not require: fee, abstract, a US national, English language (failing the latter two, application forwarded to IB)
- national stage entry requires: request, fee
- all countries are automatically designated
- US/RO accepts filings from any nationality, if in English

PPH requirements (700)
- same priority date; stated equivalent independent claims; foreign allowance before substantive US examination
- petition with: request; claims correspondence table; copy of last foreign OA; IDS

Design (1500)
- must meet 112, except for best mode
- broken lines show unclaimed environmental structure
- not published before issue
- 6 months for 102(d) bar
- valid 14 years from grant
- no maintenance fees
- plant valid 20 years from filing, but no maintenance

Reissue & correction (1400)
- reissue can broaden within two years of issue
- reissue apps are not published
- reissue requires oath: from inventors if broadening, else assignee is ok
- no term extension, even with correction of too early priority claim
- applicant may request division
- certificate of correction is for patents, not apps
- new priority claim required
- missing priority claim requires reissue
- original non-elected claims may not be recaptured in a reissue
- restriction may be made in a broadening reissue

Supplemental exam (2800)
- patent owner filing to resolve concern of inequitable conduct during prosecution
- includes refundable reexam fee
- no more than 12 written items, no interviews
- results in certificate or
  - no owner statement
  - information beyond printed publications considered
  - any issues considered

3rd party submission (2200)
- entered if before earlier(notice of allowance, later(publication + 6 months, first rejection of any claim))
- contains: documents, list, descriptions of relevance, translations, statement of "no disclosure duty and laws compliance"
- all published apps (not reissue, reexam, provisional)
- not necessarily prior art
- regardless of filing date
- no fee for the first filing of 3 or fewer docs
- no fax

Protest (1900)
- protest must be served upon applicant
- protest must include: copies of references, translations, explain relevance, explain if/why info not in a prior protest

Ex-parte reexam (2200)
- any person any time may request
- is not an app
- never broadens
- always ends with a certificate and surrender of original
- time extensions must be requested in advance
- no fee for Citation of Prior Art
- only requestor or patent owner can cite prior art during reexam, not 3rd parties
- "Substantial New Question" is not appealable or petitionable

- per-claim basis
- prosecution estoppel
- unavailable upon litigating
- unavailable after 1 year of accused infringement
- allowed exactly one motion to amend or cancel
- PGR possible only for effective filing dates after 16-Mar-2013
- IPR possible for any patent
- PGR available for 9 months after grant
- IPR available after PGR complete or 9 months
- PGR of 101, 102, 103, 112 (except best mode) based on any evidence
- IPR of 102, 103 based on patents and printed pubs
- PGR "more likely than not" to institute
- IPR "reasonable likelihood" to institute
- covered business method is like PGR
- IPR refusal is non-appealable
- IPR decision appealable to US CAFC

- requires a cover sheet
- priority date does not start the 20 year term of a non-provisional

- 3 months from allowance to pay issue fee, no extension
- Quayle OA is to correct objections after allowance on merits
- withdrawal possible for cause by office or applicant with fee, such as to file RCE

- IDS considered if:
  - before mailing of first OA on merits
  - during prosecution with statement or fee
  - before issue fee with statement and fee
  - after issue fee and before issue, entered in file without consideration
    - withdraw from issue with RCE and IDS for consideration
- mailing (not receipt) of foreign office citation starts 3 month clock for US IDS
- IDS deadlines not extendedable

Oath & ADS
- Pre-2012-Sept-16 missing oath caused notice of missing parts
- Post-2012-Sept-15 missing oath can be postponed until payment of issue fee [ADS must have inventor info]
  - with ADS oath need not have legal name and mailing address
- oath needs: legal name; mailing address; I am inventor; I authorize filing
- inconsistencies: later filed document governs, ADS governs simultaneous filings, oath governs inventor names and citizensip
- USPTO does not check oath to ADS
- ADS can be corrected until issue fee, except:
  - inventorship change (1.48)
  - priority or benefit claim (1.55 1.78)
  - correspondence address (1.33)

Small entity
- fee refund deadline not extendedable
- yes lower maintenance fees
- no  lower recording title docs fees

- claims can be self supporting
- examiner must consider even indefinite and unsupported claim text
- claims amendments are not rejectable as new matter
- utility app omnibus claims fail 112(b)
- claims can only depend from lower numbered claims

Assignment (300)
- divisionals and continuations inherit parent assignments
- assign an unassigned divisional with issue fee payment
- assignments must be in English
- must record by later(3 months, competing sale)

Misc facts
- notices of missing parts and omitted items have 2-7 months to reply
- suspension only if no OA pending: up to 6 months, or 3 months during RCE, or exam deferral up to 3 years
- foreign filing license implicit at 6 months
- priority/benefit claim preserved by a copy of reference in 4 months or 16 months from priority
- PLTIA gives 2 extra months to correct priority/benefit claim
- accept payment only from client
- duty to disclose lasts until issuance
- prosecution closed upon: final rejection, allowance, appeal, ex parte Quayle
- incorporation-by-reference is for essential US pat and pat app pub and non-essential any pub
- filing date requires spec, claim, drawing; not inventorship, fee, oath
- filing date with online, in-person, express mail, NOT with certificate of mailing or fax
- 45 days from foreign filing to rescind non-publication request
- after grant/pub, 1 year to provoke interference
- a "substitute" is a refiling after abandonment
- withdrawal from issue only for RCE
- withdrawal of representation requires ~30 days before non-extendable deadline, but no payment of fees
- inventors may appoint different practitioners, all practitioners must sign each reply, correspondence goes to first appointee
- prior art omitting an inherent element still anticipates
- omitted items can be filed until the first OA if available in a prior app incorporated by reference
- same entity provisional rejection possible under pre-AIA 102(e) and AIA 102(a)(2) only
- utility expiration is 20 years from filing the first US non-provisional
- untranslated doc suffices for foreign priority
- info can be expunged from app file
- any practitioner with a file can do oral hearing
- agent of record may sign an express abandonment
- CPA is for design apps only
- a published application's application file is not public
- a supplemental oath is an amendment in a reissue, but not in a non-provisional
- neither actual reduction nor disclosure of its absence is necessary
- examiner must list all references in a statement of the rejection lest the references be disregarded upon appeal
- post-final reply before 2 months -> extension fees start from earlier(6 months,later(3 months, advisory action))
- preliminary amendment may add claims and fix formalities from initial filing until substantive exam
- preliminary amendment may not add new matter
- terminal disclaimer overcoming obviousness double patenting requires a single assignee and promise not to separate patents
- relevant docs under protective order must be so submitted in a not-to-be-published IDS
- no application filings by fax (except CPA CFR1.53(d))