Ethan Fulcher | Patent Bar Exam Prep | March 2026 Extracted from mpep-1200.pdf, mpep-2100.pdf, mpep-0700.pdf, 37CFR.pdf
From 37 CFR 41.31(b):
The signature requirements of §§ 1.33 and 11.18(a) of this title do not apply to a notice of appeal filed under this section.
From 37 CFR 41.31(c):
An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office.
From MPEP § 1204:
Appeal fees (notice of appeal, petition, and appeal forwarding fees) due under 37 CFR 41.20 cannot be paid using a general authorization to a deposit account under 37 CFR 1.25(b), which only authorizes payment of fees under 37 CFR 1.16 through 1.18.
Exam Rule: No signature required. All rejected claims presumed on appeal. General authorization CANNOT pay appeal fees.
From MPEP § 1207.03(a):
A ground of rejection is considered to be new if the examiner relied upon a different statutory basis (e.g., a 35 U.S.C. 102 rejection was changed to a 35 U.S.C. 103 rejection), or if the examiner relied upon a different reference to reject the claims.
A ground of rejection is not a new ground of rejection when the examiner applies the same art under a different statutory basis if the same art was applied in the same manner as before.
From MPEP § 1207.03(b) — Petition to Designate New Ground:
If the appellant believes the examiner's answer contains a new ground of rejection that is not designated as such, appellant may file a petition under 37 CFR 1.181 requesting that the ground of rejection be designated as new, within 2 months from the mailing date of the examiner's answer.
If the petition is granted, the new ground of rejection is set, and the appellant has 2 months from the decision on the petition to either: (1) reopen prosecution by filing an appropriate amendment and/or new evidence accompanied by the requisite fee, or (2) maintain the appeal by filing a new reply brief.
From MPEP § 1207.03(c) — Appellant's Reply to New Ground:
If the examiner's answer contains a new ground of rejection, the appellant must, within two months from the mailing date of the examiner's answer, either: (A) Reopen prosecution before the primary examiner by filing a reply under 37 CFR 1.111 with or without amendment; or (B) Maintain the appeal by filing a reply brief.
Failure to timely take either action results in the termination of the appeal.
From MPEP § 1208:
A reply brief may be filed by the appellant to respond to points raised in the examiner's answer. However, a reply brief that is not responsive to points raised in the examiner's answer will not be considered by the Board.
From 37 CFR 41.41:
Reply brief. (a) Appellant may file a reply brief to an examiner's answer within the later of two months from the date of the examiner's answer, or the date of filing of any reply brief. (b) A reply brief shall not include any new or non-admitted affidavit or other evidence.
From 37 CFR 41.47:
Appellant may request an oral hearing within two months from the mailing of the examiner's answer, or date of filing of a reply brief, whichever is earlier. A request for an oral hearing must include the fee required by 37 CFR 41.20(b)(3).
From MPEP § 1213.02:
When the Board designates a new ground of rejection in its decision, a new ground of rejection by the Board is not a final action for purposes of judicial review.
Within two months from the date of the Board's decision:
- Appellant may reopen prosecution before the examiner by filing an appropriate amendment/evidence under 37 CFR 1.111
- Appellant may request reconsideration by the Board by filing a petition for rehearing identifying the points believed to have been misapprehended or overlooked
If neither is done within two months, the appeal is terminated.
From MPEP § 1215.02:
If an applicant fails to file an appeal brief, the appeal is dismissed, but the application is not abandoned if there are allowable claims. The examiner will cancel all finally rejected claims, and the application proceeds to allowance on the remaining allowed claims.
Claims that were objected to (e.g., as dependent upon a rejected claim but otherwise allowable) are treated as rejected for purposes of this analysis. They are NOT considered allowed.
From MPEP § 2152.02:
35 U.S.C. 102(a)(1) provides that a claimed invention is anticipated if it was patented, described in a printed publication, or in public use, on sale, or otherwise publicly available, before the effective filing date of the claimed invention.
Unlike pre-AIA § 102, there is no "by others" requirement under AIA 102(a)(1) — even the inventor's own prior art may bar the patent (subject to the grace period exceptions in 102(b)(1)).
From MPEP § 2152.04 — "Disclosure":
Section 102(a) uses the term "disclosure" to encompass all prior art categories under 102(a)(1) and 102(a)(2). A "disclosure" is "made available to the public" when members of the public can, without undue burden, access the information.
From MPEP § 2152.05:
AIA 35 U.S.C. 102(a)(1) applies to disclosures that were publicly accessible before the effective filing date of the claimed invention (patents, published applications, publications, public use, on sale, etc.).
AIA 35 U.S.C. 102(a)(2) applies to US patents, US application publications, and WIPO-published PCT applications that are effectively filed before the effective filing date of the claimed invention.
Key Distinction:
From MPEP § 2153.01(a):
Under AIA 35 U.S.C. 102(b)(1)(A), a disclosure made 1 year or less before the effective filing date of the claimed invention is NOT prior art if the disclosure was made by:
- The inventor or joint inventor, OR
- Another who obtained the subject matter disclosed directly or indirectly from the inventor
From MPEP § 2153.02:
Under AIA 35 U.S.C. 102(b)(1)(B), a disclosure is NOT prior art under 102(a)(1) if the disclosure was made 1 year or less before the effective filing date AND was preceded by a public disclosure by the inventor, OR another who obtained the subject matter from the inventor.
IMPORTANT — AIA 102(b) is NOT a rejection basis:
AIA § 102(b) contains EXCEPTIONS to 102(a), not independent bases for rejection. Rejections are made under 102(a)(1) or 102(a)(2) only. Applicant invokes 102(b) to remove a reference.
From MPEP § 2154.01:
AIA 35 U.S.C. 102(a)(2) creates prior art based on US patents, US application publications, and WIPO-published PCT applications that were effectively filed before the effective filing date of the claimed invention.
From MPEP § 2154.01(a) — WIPO Published Applications:
A WIPO published international application is prior art under AIA 102(a)(2) if it was:
- Published in English; and
- Designates the United States; and
- Has an international filing date before the effective filing date of the claimed invention.
The prior art date for the WIPO publication is the international filing date, not the publication date.
From MPEP § 2154.01(b) — Determining Effective Filing Date Under AIA 35 U.S.C. 102(d):
A reference that otherwise qualifies as a US patent document under 102(a)(2) is given an effective prior art date of the earliest foreign filing date to which it claims priority under 35 U.S.C. 119, 365(a), or 365(b), but only if:
- The foreign filing claimed adequate written description support; and
- The reference claims priority in the US patent or US application publication
Exam Rule — Critical: A foreign filing date ONLY counts as prior art if a US patent, US publication, or WIPO PCT publication that CLAIMS that priority date exists. An ABANDONED US application claiming a foreign priority DOES NOT carry that foreign filing date as prior art.
From MPEP § 2155.01:
37 CFR 1.130(a) — Affidavit of attribution: An affidavit or declaration establishing that a disclosure was made by the inventor or was obtained from the inventor establishes that the disclosure is not prior art under AIA 102(a)(1) or 102(a)(2).
From MPEP § 2155.02:
37 CFR 1.130(b) — Affidavit of prior public disclosure: An affidavit or declaration establishing that a disclosure was preceded by a public disclosure made by the inventor (or another who obtained the subject matter from the inventor) establishes that the disclosure is not prior art under 102(a)(1).
Requirements for 130(b) affidavit:
- Must identify the subject matter publicly disclosed and establish the date and content of the earlier public disclosure
- If earlier disclosure was a printed publication, a copy of the publication must accompany the affidavit
NOTE: The earlier disclosure need not use the same terminology or be an enabling disclosure under § 112(a).
From MPEP § 2155.03 — When Derivation Proceeding Is Required:
When the reference at issue is a patent or patent application that names another inventor and the applicant's claims are the same or substantially the same as the claims of the reference, a Derivation Proceeding under 35 U.S.C. 135 is the appropriate mechanism, not a 37 CFR 1.130 affidavit.
From MPEP § 2159:
The first inventor to file (FITF) provisions of the AIA apply to any application that contains or contained at any time a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
If an application ever contained a claim with an effective filing date on/after 3/16/2013 (even if that claim was later canceled), the application is examined under AIA.
Transition applications that contain ONLY claims with effective filing dates before March 16, 2013 (including only those entitled to pre-AIA priority dates) are examined under pre-AIA law.
Three-way analysis for applications filed on or after March 16, 2013:
The Two-Step Alice/Mayo Framework:
Step 1 (§ 2106.03): Is the claim directed to one of the four statutory categories? (process, machine, manufacture, composition of matter)
Step 2A (§ 2106.04): Is the claim directed to a judicial exception? (abstract idea, law of nature, natural phenomenon)
- Prong 1: Does the claim recite a judicial exception?
- Prong 2: Does the claim integrate the exception into a practical application?
Step 2B (§ 2106.05): If not integrated into a practical application, does the claim include significantly more than the exception?
From MPEP § 2106.04(d):
A claim that is directed to a judicial exception is nonetheless eligible if it integrates the exception into a practical application. An exception is integrated into a practical application when the exception is applied, relied upon, or implemented in a manner that imposes a meaningful limit on the exception.
Examples of integration into a practical application:
- Improvements to a technology or computer functionality
- Particular treatment or prophylaxis for a specific disease
- Use of a particular machine that imposes a meaningful limit
- Transformation or reduction of an article to a different state or thing
Examples of features that do NOT integrate the exception:
- Simply reciting the exception with instructions to "apply it"
- Adding generic computer components as tools (generic computer, generic database, etc.)
- Mere insignificant extra-solution activity (printing, gathering data)
From MPEP § 2106.05(b):
A claim that uses a particular machine will satisfy the machine prong of the machine-or-transformation test if the machine: (1) is integral to the claim; and (2) imposes a meaningful limit on the claim by substantially limiting the scope of the claim.
Factors weighing FOR eligibility:
- Particular machine is incorporated into the claimed method
- The machine is central to achieving the claimed purpose
Factors weighing AGAINST eligibility:
- The machine is merely the object on which the method operates
- The recited machine is generic (generic computer)
- The machine contributes only nominally to the method
From MPEP § 2106.05(d):
Whether an element or combination of elements represents well-understood, routine, conventional activity is a question of fact.
The following constitute well-understood, routine, conventional activity:
- Activities that are well-known in the art
- Techniques used in conventional patent prosecution
- Generic computer implementation
- Use of generic components for their known purposes
Exam rule: If a claim amounts to no more than "apply the abstract idea using a computer," it is NOT eligible simply because it uses a computer.
From MPEP § 601.01 (as amended by PLTIA effective 12/18/2013):
For applications filed on or after December 18, 2013, a filing date is awarded upon receipt of a specification (including at least one claim or a reference to a previously filed application). The filing fee, claims, and drawings need not be present to receive a filing date.
However, if the application does not include at least one claim, the USPTO will send a Notice to File Missing Parts. The applicant must file at least one claim within the period set by the Office or the application will be abandoned.
Critical date: December 18, 2013
From MPEP § 706.07(b):
It would be improper to make final a first Office action in a continuation application if the continuation application contains material which was:
- Presented after final rejection in the parent application, and
- Was denied entry because it raised new issues requiring further consideration
Exam rule: If the material was denied entry in the parent after final because it raised new issues, the examiner CANNOT make the first action final in the continuation.
From MPEP § 714.13:
An amendment filed after final rejection may be entered at the examiner's discretion if it: (A) Cancels claims or complies with all requirements of form expressly set forth in previous Office actions (B) Presents rejected claims in better form for consideration on appeal (C) Amends the specification (including claims) upon showing of good and sufficient reason why amendment is necessary and was not earlier presented
Such an amendment submitted after final rejection will not normally be entered if it raises new issues that would require further consideration.
From MPEP § 713.02:
The examiner may require that the applicant furnish: (1) a general statement of the state of the art; (2) identification of no more than three closest prior art references; and (3) an explanation of how the broadest independent claim patentably distinguishes over the closest prior art reference.
From MPEP § 713.05:
Office employees are FORBIDDEN from holding oral or written communications with applicant's non-registered representatives regarding the merits of any pending patent application.
Interviews may only be conducted with: (1) the applicant, (2) a registered patent attorney or agent, (3) a registered practitioner appointed as associate in the application.
From MPEP § 509:
A general authorization to charge a deposit account will be considered as an authorization to charge the fees under 37 CFR 1.16–1.18 (e.g., basic filing fees, search fees, examination fees) unless a more specific authorization is provided.
A general authorization to charge fees to a deposit account will NOT authorize:
- Maintenance fees (37 CFR 1.20)
- Issue fees (37 CFR 1.18(a)(1)) unless specific authorization to charge issue fee is given after Notice of Allowance
- Supplemental examination fees
- Appeal fees (37 CFR 41.20)
Text of Rule:
(a) Except as provided in paragraph (b) of this section, a practitioner shall not represent a client if the representation involves a concurrent conflict of interest. A concurrent conflict of interest exists if: (1) The representation of one client will be directly adverse to another client; or (2) There is a significant risk that the representation of one or more clients will be materially limited by the practitioner's responsibilities to another client, a former client or a third person or by a personal interest of the practitioner.
(b) Notwithstanding the existence of a concurrent conflict of interest under paragraph (a) of this section, a practitioner may represent a client if: (1) The practitioner reasonably believes that the practitioner will be able to provide competent and diligent representation to each affected client; (2) The representation is not prohibited by law; (3) The representation does not involve the assertion of a claim by one client against another client represented by the practitioner in the same proceeding before a tribunal; and (4) Each affected client gives informed consent, confirmed in writing.
Text of Rule (key subsections):
(a) A practitioner who has formerly represented a client in a matter shall not thereafter represent another person in the same or a substantially related matter in which that person's interests are materially adverse to the interests of the former client unless the former client gives informed consent, confirmed in writing.
(b) A practitioner shall not knowingly represent a person in the same or a substantially related matter in which a firm with which the practitioner formerly was associated had previously represented a client whose interests are materially adverse to that person and about whom the practitioner had acquired information protected by §§ 11.106 and 11.109(c) that is material to the matter; unless the former client gives informed consent, confirmed in writing.
(c) A practitioner who has formerly represented a client in a matter or whose present or former firm has formerly represented a client in a matter shall not thereafter: (1) Use information relating to the representation to the disadvantage of the former client except as these rules would permit or require with respect to a client, or when the information has become generally known; or (2) Reveal information relating to the representation except as these rules would permit or require with respect to a client.
Exam Key: Subsection (c) creates the hardest prohibition — when a practitioner has confidential information about a matter, this cannot be cured by ethical screens (unlike (a) and (b) conflicts which can be cured by screen + consent).
Text of Rule:
(a) While practitioners are associated in a firm, a conflict of interest under § 11.107 or § 11.109 that exists with respect to one practitioner in the firm is imputed to all practitioners in the firm.
(b) When a practitioner has terminated an association with a firm, the firm is not prohibited from thereafter representing a person with interests materially adverse to those of a client represented by the formerly associated practitioner (and not currently represented by the firm), UNLESS: (1) The matter is the same or substantially related to that in which the formerly associated practitioner represented the client; and (2) Any practitioner remaining in the firm has information protected by §§ 11.106 and 11.109(c) that is material to the matter.
Key: When a practitioner leaves, the firm CAN represent adverse parties in some circumstances. But NOT if any remaining practitioner has confidential information (§ 11.109(c) material).
Text of Rule:
(a) Mandatory withdrawal — Except as stated in paragraph (c) of this section, a practitioner SHALL NOT represent a client or, where representation has commenced, SHALL withdraw from the representation of a client if: (1) The representation will result in violation of the USPTO Rules of Professional Conduct or other law; (2) The practitioner's physical or mental condition materially impairs the practitioner's ability to represent the client; or (3) The practitioner is discharged.
(b) Permissive withdrawal — Except as stated in paragraph (c) of this section, a practitioner MAY withdraw from representing a client if: (1) Withdrawal can be accomplished without material adverse effect on the interests of the client; (2) The client persists in a course of action involving the practitioner's services that the practitioner reasonably believes is criminal or fraudulent; (3) The client has used the practitioner's services to perpetrate a crime or fraud; (4) The client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement; (5) The client fails substantially to fulfill an obligation to the practitioner regarding the practitioner's services and has been given reasonable warning; (6) The representation will result in an unreasonable financial burden on the practitioner or has been rendered unreasonably difficult by the client; or (7) Other good cause for withdrawal exists.
Exam Key: MUST withdraw for 3 reasons (rules violation, impairment, discharged). Everything else is MAY withdraw.
From MPEP § 11.25:
Upon being convicted of any crime, a practitioner must notify the OED Director in writing within 30 days from the date of conviction.
If the OED Director determines the crime is a serious crime, the OED Director must:
- Provide the USPTO Director with proof of the conviction, and
- File a complaint against the practitioner predicated upon the conviction
The USPTO Director then has authority to place the practitioner on interim suspension after hearing the request on the documentary record (without affording the practitioner an opportunity to be heard).
If the crime is NOT a serious crime, the OED processes the matter in the same manner as any other information or evidence of a possible rule violation.
Key requirements for international filing date (per PCT Article 11(1)):
NOT required for filing date:
| Article 19 | Article 34 | |
|---|---|---|
| Scope | Claims ONLY | Claims, Description, AND Drawings |
| Filed Before | International Bureau | IPEA (International Preliminary Examining Authority) |
| Deadline | LATER of: (a) 2 months from transmittal of ISR, OR (b) 16 months from priority date | LATER of: (a) 3 months from transmittal of ISR, OR (b) 22 months from priority date |
Critical: Article 34 is always LATER than Article 19 and allows MORE to be amended.
From MPEP § 1817.01:
As of January 1, 2004, all PCT contracting states are automatically designated upon filing of an international application. Individual designations are no longer required. Designations cannot be added after the initial filing — but since all states are now automatically included, this restriction rarely matters.
From 37 CFR § 1.412(a):
The USPTO is a Receiving Office only for applicants who are residents or nationals of the United States of America.
From 37 CFR § 1.421(a):
If an international application is filed in the USPTO without at least one US applicant being identified, but with at least one applicant from a PCT contracting state, the USPTO will accept the application and forward it to the International Bureau for processing as the Receiving Office.
Exam Rule: US ACCEPTS international applications from non-US nationals — it just forwards them to the IB rather than processing them itself.
From MPEP § 1893.01(a)(1):
The filing of a copy of the international application and the basic national fee in order to avoid abandonment under 37 CFR 1.495(b) may not be transmitted by facsimile. See 37 CFR 1.6(d)(3) and 37 CFR 1.8(a)(2)(i)(F).
Exam Rule: National stage entry documents (copy of international application + basic national fee) CANNOT be faxed. The national stage entry must be made by mail, hand delivery, or EFS.
From MPEP § 1403:
A reissue application may be filed to broaden the scope of the patent claims. However, all broadening reissue claims must be filed within two years from the grant of the original patent. 35 U.S.C. § 251.
A reissue application can be granted a filing date without an oath or declaration, or without the filing fee being present. The reissue applicant will be given a period of time to provide the missing parts and to pay the surcharge. The filing date of the reissue application determines whether the broadening requirement has been met — the claims do not need to be allowed within 2 years, just filed.
From MPEP § 1412.02:
The recapture doctrine prevents a patentee from regaining through reissue subject matter that was surrendered in the original prosecution to obtain the patent. The test for recapture is:
- Determine whether, and in what way, the reissue claims are broader than the patent claims
- Determine whether the broader aspects of the reissue claims relate to surrendered subject matter
- If the surrendered subject matter was a deliberate limitation, the recapture doctrine bars the claim
Key: Mere deletion of an element from a claim does NOT automatically invoke the recapture doctrine — there must have been a deliberate surrendering of that element to obtain the patent.
From MPEP § 2258:
Rejections on prior art in reexamination proceedings may only be made on the basis of prior patents or printed publications. Prior art rejections may be based upon the following portions of 35 U.S.C. 102: ...(e).
Rejections will NOT be based on matters other than patents or printed publications, such as:
- Public use or sale
- Inventorship
- 35 U.S.C. 101 (patent eligibility)
- Fraud or inequitable conduct
- Insufficiency of disclosure
Exam Rule: Reexamination is limited to patents and printed publications under any applicable portion of 35 U.S.C. 102/103.
From MPEP § 2273:
If a patent owner fails to respond in a reexamination proceeding, the reexamination will result in issuance of a reexamination certificate — NOT abandonment. This is fundamentally different from patent prosecution where failure to respond results in abandonment.
From MPEP § 2181:
A claim limitation is presumed to invoke 35 U.S.C. 112(f) if it meets all of the following conditions: (1) The limitation uses the terms "means" or "step," or a generic placeholder word such as "mechanism," "module," "device," "unit," "component," "element," or "member" that is not preceded by a structural modifier; (2) The claim recites a function for the "means," "step," or other generic placeholder term; and (3) The claim does not recite sufficient structure, material, or acts for performing the function.
A claim limitation is presumed NOT to invoke §112(f) if the limitation contains a structural modifier for the generic placeholder term (e.g., "detent mechanism" or "circuit" or "beam splitter").
Exam Rule:
From 37 CFR § 1.53(f)(3) (post-AIA):
An inventor's oath or declaration need not be submitted at the time of filing if the application is filed on or after September 16, 2012. The applicant must submit an application data sheet under 37 CFR 1.76 containing the name and mailing address of each inventor. The oath or declaration must be submitted by the later of:
- The date on which the application is in condition for allowance; or
- The date set by the Office in a Notice of Allowance
From 37 CFR § 1.64:
A substitute statement may be filed in lieu of an oath or declaration when the inventor is:
- Deceased
- Legally incapacitated
- Refuses to execute the oath or declaration; or
- Cannot be found after diligent effort
Mere assignment of rights alone does not provide grounds for a substitute statement. The inventor must also fall into one of the above categories.
From MPEP § 1480:
Whenever through error a person is named in an issued patent as the inventor, or an inventor is not named, the Director may issue a Certificate of Correction naming only the actual inventor(s), on application of all the parties and assignees.
A request for Certificate of Correction to correct inventorship must be accompanied by:
- The appropriate fee
- A statement from each person being added as an inventor and each current inventor, either agreeing to the change or stating no disagreement
- A statement from all assignees agreeing to the change
When to use Certificate of Correction vs. Reissue:
End of MPEP Key Excerpts
| Topic | Key Number | Rule |
|---|---|---|
| AIA effective date | March 16, 2013 | Claim filed/supported on or after this = AIA applies |
| PLTIA filing date | December 18, 2013 | Spec only needed for filing date |
| Priority restoration window | 14 months (2 extra) | Unintentional standard only |
| Design patent foreign priority | 6 months | Not 12 months |
| PCT national stage | 30 months | From earliest priority |
| PCT Art. 19 deadline | 16 months or 2mo post-ISR | Claims only; before IB |
| PCT Art. 34 deadline | 22 months or 3mo post-ISR | All parts; before IPEA |
| Broadening reissue window | 2 years | From patent grant |
| Notice of Appeal fee paid by gen. auth. | NO | Only 1.16–1.18 fees covered |
| Notice of Appeal signature required | NO | 37 CFR 41.31(b) |
| Oral hearing request deadline | Earlier of: 2mo from EA or 2mo from Reply Brief | |
| Petition 1.181 response after grant | 2 months | File amendment or dismissed |
| New Board ground of rejection response | 2 months | Reopen or rehearing request |
| Mandatory withdrawal reasons | 3 | Rules violation, impairment, discharged |
| §112(f) triggers | 3 conditions | Non-structural term + function + no structure |
| Reexam valid basis | Patents & printed publications only | NOT: public use, sale, 101, fraud |
| Reexam failure to respond | Reexam Certificate issued | NOT abandonment |
| IPR: inter partes reexam eliminated | After 9/16/2012 | No filing date for new requests |
| IPR: any patent challengeable | Yes | Filing date of patent irrelevant |