Sections 2106, 2112, 2121–2128, 2153–2159, 2161–2181 | ~35–40% of exam questions
AIA applies if application ever contained a claim with effective filing date on/after March 16, 2013. Canceling those claims does NOT revert to pre-AIA.
NO. Once the application contained such claims, it is permanently examined under AIA.
Only if there is a US patent, US published application, or WIPO-published PCT designating the US that claims that foreign priority date. Abandoned US applications and unpublished applications carry NO prior art date.
AIA 102(b) is an exceptions/safe harbors section — NOT a basis for rejection. Rejections go under 102(a)(1) or 102(a)(2) only.
(1) Identify subject matter publicly disclosed and establish date and content; (2) If prior disclosure was a printed publication, a copy must be attached. No requirement for "same manner" or "enabling disclosure."
MUST: (1) Provide statement of common ownership; AND (2) Amend the application to disclose the names of the parties to the joint research agreement. Recording the agreement with USPTO is NOT sufficient.
(1) Particular machine/apparatus incorporated into claimed method; (2) machine is integral to achieving the invention; (3) use imposes meaningful limits. [AGAINST eligibility: machine is merely object on which method operates; machine contributes only nominally]
Obviousness (§103). Never mix 103 analysis with 101 analysis.
Must do MORE than "apply it." The claim must incorporate applications of the law in a way that provides significantly more — unconventional steps, particular machine, new/useful result with meaningful limitations.
NO. Step 1 finding that claim is directed to abstract idea is just the gateway. Step 2 still applies — if the claim amounts to significantly more, it IS eligible.
NO. Failure of prior art to recognize an inherent property does not preclude a finding of anticipation. The key is whether the property is NECESSARILY present, which can be shown by separate evidence (e.g., test data, expert declaration).
ALL THREE must be present: (1) "means for" / "step for" / non-structural term WITHOUT structural modifier; (2) Modified by functional language; (3) NOT modified by sufficient structure/material/acts to perform the function.
MAY invoke §112(f) because "mechanism" without a structural modifier is a non-structural term. "Detent mechanism" → does NOT invoke (structural modifier "detent" present).
NO. "Circuit" is a structural term (recognized by those skilled in art as structure). Does not invoke §112(f).
A general purpose computer alone is NOT sufficient. Must identify the specific algorithm or programmatic steps that perform the claimed function.
Objection under 37 CFR 1.75(c) (not rejection). Object to it as being in "improper dependent form." (Test: does it include every limitation of the claim it depends from? NOT: does it change the scope?)
Still REQUIRED in 35 USC §112(a) — not eliminated. What changed: failure to disclose best mode is no longer grounds for invalidity in litigation. But you still MUST disclose best mode per the claims — cannot ethically pursue claims for which you know best mode is undisclosed.
Sections 706, 708, 709, 713, 714 | Major source of procedural questions
The continuation contains material that was denied entry in the parent after final rejection because it raised new issues. Filing that material as a preliminary amendment in the continuation does NOT make it fair to make the first action final.
NOT available for: design applications. Max total claims: 30 (no more than 4 independent). Extension of time terminates special status.
Only AFTER filing a response to any outstanding Office Action. Cannot request suspension while a reply to an Office Action is outstanding.
The registered practitioner AND the inventor/client can attend. BUT: unregistered individuals cannot conduct/schedule the interview. Examiner cannot communicate with unregistered persons on behalf of applicant.
(1) General statement of state of art; (2) identification of ≤3 closest prior art references; (3) explanation of how broadest independent claim distinguishes.
Any time a claim is being amended in that filing. Original = claims that are not being changed. "Previously presented" = claims that were amended in a prior filing but are not being changed in this one.
NO. Double brackets are used to indicate deleted text, but they can only be used to delete 5 or fewer characters. For larger deletions, use strikethrough or standard amendment notation.
Sections 1204–1209 | Heavily tested — 10–15% of exam questions
NO. 37 CFR 41.31(b): Notice of Appeal does not require signature.
NO. General authorization covers only 37 CFR 1.16–1.18 fees. Appeal fees are under 37 CFR 1.17(b) — not covered.
All rejected claims, unless expressly canceled by the applicant. No need to list them in the Notice of Appeal.
(1) Reopen prosecution by filing amendment under 37 CFR 1.111 within 2 months; OR (2) Request reconsideration by the Board. If neither → appeal terminated.
File an amendment within 2 months under 37 CFR 1.111 to reopen prosecution. If no amendment → appeal automatically dismissed.
ONLY arguments responsive to the Examiner's Answer. New arguments not responsive to issues raised in the Examiner's Answer will NOT be considered by the Board.
Within 2 months from the EARLIER of: (a) date of Examiner's Answer, or (b) date of filing of Reply Brief.
Application is NOT abandoned. Examiner cancels all rejected claims and allowed claims proceed. Claims objected to as dependent on rejected claims are treated as rejected (not allowed).
Applicant must file a new Notice of Appeal (new, separate appeal) — the Board does NOT automatically retain jurisdiction.
NO. Non-admitted evidence cannot be relied on by either the Examiner OR the Applicant.
Sections 1852–1865 | 5–10% of exam questions
A certified copy of the priority document — NOT required at filing. Can be submitted later to perfect priority claim.
30 months from the earliest claimed priority date (or PCT filing date if no priority).
Claims ONLY, before the International Bureau. Deadline = LATER of: (a) 2 months after transmittal of search report, OR (b) 16 months from priority date.
Claims + Description + Drawings, before the IPEA. Deadline = LATER of: (a) 3 months after transmittal of search report, OR (b) 22 months from priority date.
No — all PCT contracting states are automatically designated upon filing. No need to designate individual countries.
NO. PCT applications (including corrections to international applications like designations) CANNOT be transmitted by facsimile.
Utility = 12 months. Design = 6 months (PCT does not apply to designs; use Hague Agreement).
US residents/nationals can file directly. For non-US nationals — US will ACCEPT and FORWARD to International Bureau if: (a) no US applicant AND (b) at least one applicant is from a PCT contracting state OR nationality not identified.
Sections 601–609 | Oaths, declarations, filing requirements, IDS
Specification only — no claim required, no drawing required. But: claims must be submitted within the time period set by the Director, or application goes abandoned.
NO. After September 16, 2012, a previously filed oath/declaration does not need to be replaced in a continuation application.
YES — can defer until the application is OTHERWISE IN CONDITION FOR ALLOWANCE. Must file Application Data Sheet (ADS) with inventor information at the time of filing.
(1) Inventor is deceased; (2) Inventor is legally incapacitated; (3) Inventor refuses to execute the oath; (4) Inventor cannot be found after diligent effort. [Having merely ASSIGNED rights is NOT enough alone.]
NO. If information is in the ADS, the oath/declaration itself does not need to repeat name, mailing address, or residence.
Certificate of Correction (if only change is inventorship + all parties agree). Requires fee + statements from each affected inventor + all assignees. Reissue is NOT needed for inventorship-only corrections.
37 CFR 1.48 request with processing fee. Under AIA, no petition is required — just the request and fee (removed the "without deceptive intent" requirement).
Yes, but each oath/declaration must identify all joint inventors by name. Separate declarations that don't identify the other inventor(s) are defective.
Starts from the date on the communication from the foreign patent office — NOT the date received by the foreign associate or the US practitioner.
From the date on the communication from the foreign patent office (not when the US attorney received it, not when a foreign associate received it).
USPTO Rules of Professional Conduct | 8–12% of exam questions
Triggered when a practitioner possesses confidential information about a matter. NO CURE — no ethical screen, no client waiver, no representation possible.
(1) Practitioner reasonably believes competent and diligent representation; (2) not prohibited by law; (3) not same proceeding assertion; (4) each affected client gives informed consent confirmed in writing.
Only with informed consent from both clients. Without consent, taking adverse action against one jointly-represented client violates 37 CFR 11.107.
(1) Representation would violate USPTO Rules or other law; (2) Practitioner is physically/mentally impaired; (3) Client discharges the practitioner. All other withdrawal reasons are permissive.
NO. Practitioner must NOT have inventor sign declaration before application is prepared and reviewed. This is a disciplinable violation.
NO. Juristic entities (corporations, partnerships, etc.) MUST be represented by a registered patent practitioner. All papers must be signed by a practitioner.
Only if the practitioner was convicted of a serious crime. Conviction of ANY crime triggers the notification duty (30 days) but interim suspension requires a "serious crime" determination by OED.
Sections 502, 503, 509 | Filing procedures, fee authorization, fax rules
Only 37 CFR 1.16 through 1.18 fees (filing fees, search fees, examination fees). Does NOT cover: maintenance fees, issue fees, supplemental exam fees, appeal fees.
NO. Authorization to charge issue fee can only be filed after mailing of Notice of Allowance.
Only a CPA (Continued Prosecution Application, 37 CFR 1.53(d)). Regular nonprovisionals, provisionals, continuations under 1.53(b) CANNOT be filed by fax.
NO. A CPA filed by fax does NOT get the benefit of Certificate of Transmission — it must be received by the USPTO by the due date/time.
For correspondence related to enrollment and disciplinary investigations or disciplinary proceedings (37 CFR 11.18(a)). All other USPTO filings can use S-signatures.
Post-grant proceedings instituted after September 16, 2012
Inter Partes Review (IPR). Filing an inter partes reexam request after 9/16/2012 will NOT be accorded a filing date.
Any patent issued from an application filed before, on, or after September 16, 2012 — the patent's filing date is irrelevant. The IPR petition itself must be filed on/after 9/16/2012.
Only patents and printed publications (same as reexamination). Cannot challenge: 101, 112, inventorship, fraud, public use, or sale.
(1) Patent owner deposes petitioner's declarants first; (2) After patent owner's response, petitioner deposes patent owner's declarants; (3) After petitioner's reply, patent owner can depose petitioner's declarants again.
NO. Motion to seal + protective order only protects genuinely confidential information that is not already publicly available.
Sections 1412, 1460, 1481
2 years from the grant of the original patent. At least one broadening claim must be FILED (not necessarily allowed) within 2 years.
YES. A reissue can be granted a filing date without an oath/declaration or filing fee. The broadening claim must be PRESENT though. Missing parts are given a time period to correct.
Automatically upon issue of the reissue patent. No physical return required.
Certificate of Correction + grantable petition under 37 CFR 1.55(f) (no need to file full reissue application as long as the original priority claim was timely made in the parent application).
Sections 2209, 2272, 2812
Issuance of a Reexamination Certificate — NOT abandonment. This is opposite from regular prosecution.
NO. Reexamination is limited to prior patents and printed publications only.
Section 2701
For applications filed on or after June 8, 1995: 20 years from filing date of earliest US nonprovisional in the priority chain (EXCLUDING provisional applications).
The filing date of the EARLIEST US nonprovisional to which priority is claimed under 35 USC § 120. The PCT international filing date if no earlier US nonprovisional exists.
Section 213
Standard = "unintentional" (not "unavoidable"). Extra window = 2 additional months (14 months total). Must file petition stating delay was unintentional.
Section 306
The rights transfer, but the Office's assignment records will only reflect it if a formal Assignment Recordation request with fee is filed in the continuation.
Section 1122
NO. If any foreign filing has been made, you CANNOT opt out of US publication. If you had already opted out and then file foreign, you must rescind the opt-out AND file notice of foreign filing within 45 days of the foreign filing.
Pre-issuance third-party submissions and protest rules
Patents and printed publications ONLY. Cannot submit: physical samples, affidavits of public use/sale, protests, or documents with party-added markings. Can include English translation of foreign-language publication.
Protests may be filed in unpublished applications only. Protests in published applications are not permitted (use pre-issuance submission instead).