Wrong Answer Journal

Organized from practice exam mistakes across the PLI course. Priority sections (2100, 1200, 1800, 700) appear first — these chapters account for the majority of exam questions.

Chapter 2100 — Patentability

35 USC 101 — Patent Eligibility

Key mistakes to avoid:

Assuming a machine or apparatus automatically makes a claim patent eligible — it needs to contribute significantly
Assuming mathematical or natural law concepts are always ineligible — they can be eligible if the claim adds significantly more
Applying POSITA analysis to the abstract idea step — it does not apply there

Q: Does using a machine or apparatus in a method claim automatically confer patent eligibility?

Wrong thinking: Any involvement of a machine weighed in favor of patent eligibility
Correct rule: The machine needs to contribute significantly to the method to move past the abstract idea threshold

Q: Is a claim covering a mathematical concept always patent ineligible?

Wrong thinking: Saw "mathematical concept" and assumed it was patent ineligible
Correct rule: Even a math concept can be patent eligible if there is a meaningful physical limit — e.g., a GPS receiver in the claim placed a meaningful limit on scope

Q: Is using a law of nature in claims enough to make them patent ineligible?

Wrong thinking: Assumed using a law of nature in the claims counted against eligibility
Correct rule: Using a law of nature in claims is valid and can be patent eligible

Q: Does applying a law of nature transform a claim to patent eligible?

Wrong thinking: Thought application of the laws of nature alone transformed a claim to patent eligible
Correct rule: It needs to be significantly more than the application of natural laws — applying them alone is not enough

Q: Can something still be patent eligible even if it involves an abstract idea?

Wrong thinking: Assumed the presence of an abstract idea caused patent ineligibility
Correct rule: A claim can still involve an abstract idea and be patent eligible — it just needs to be significantly more than the abstract idea

Q: If a concept preempts all uses in other fields, does that matter for evaluating abstract ideas?

Wrong thinking: Thought preemption of use in other fields would not be relevant for evaluating abstract ideas
Correct rule: If a claim locks up a concept so tightly that it prevents anyone from using it in any other field (e.g., claiming a mathematical formula for all uses), it is likely an abstract idea

Q: Does POSITA analysis apply when evaluating whether a claim embodies only an unpatentable abstract idea?

Wrong thinking: Assumed POSITA applied to all §101 determinations
Correct rule: POSITA does not apply to determining whether a method claim is an unpatentable abstract idea

Q: An inventor wasn't the actual inventor — which statute bars patentability?

Wrong thinking: Assumed prior art would eliminate the application
Correct rule: §101 bars patentability when the person filing is not actually the inventor

35 USC 102 — Prior Art, AIA, and Grace Period

Key mistakes to avoid:

Confusing when a 1.130 affidavit works vs. when a derivation proceeding is required (1.130 fails when claims are identical/substantially the same)
Forgetting that canceling AIA-eligible claims does not revert the application to pre-AIA
Mixing up the prior art date for foreign applications (it's the priority date, not the publication date or abandoned US filing date)
Forgetting that diligence in a priority contest only needs to be continuous at the time of filing for the other party

Q: Can a 37 CFR 1.130 affidavit remove a reference that claims the same or substantially same patentable invention?

Wrong thinking: Thought 1.130 could be used to swear back any reference
Correct rule: If the reference claims the same patentable invention, a derivation proceeding is required — 1.130 only works when claims are different

Q: What are the requirements for a Rule 1.130 affidavit?

Wrong thinking: Assumed mode of disclosure mattered
Correct rule: Must (I) identify the subject matter publicly disclosed and establish the date and content; (II) if the earlier disclosure was a printed publication, attach a copy. Mode for disclosure does not matter.

Q: Does canceling AIA-eligible claims revert an application to pre-AIA status?

Wrong thinking: Thought canceling the AIA claim would return the app to pre-AIA
Correct rule: Once an application contained a claim with an effective filing date on or after March 16, 2013, it is permanently under AIA — even if those claims are canceled

Q: What is the prior art date for a foreign application where the US counterpart was abandoned?

Wrong thinking: Thought the foreign priority date still counted even when the US filing was abandoned
Correct rule: The foreign priority date did not count because the US application was abandoned

Q: Under pre-AIA, does a foreign application use its foreign priority date for prior art purposes?

Wrong thinking: Assumed the foreign priority date was used for prior art under pre-AIA
Correct rule: Pre-AIA does not use the foreign priority date — it uses the US filing/priority date

Q: What is the prior art date for a foreign application that didn't publish in the US?

Wrong thinking: Picked the prior art date of when the foreign application published
Correct rule: The correct prior art date was the foreign application's priority date; opting out of US publication does not change this

Q: When a prior art reference has a "based on X, in view of Y" structure under AIA, can Y be removed?

Wrong thinking: Thought the reference couldn't be removed as prior art if Y was removed
Correct rule: The reference was indeed prior art based on priority dates; the first nonprovisional added new matter, placing it under AIA

Q: Does diligence in a priority contest need to be continuous throughout the entire period?

Wrong thinking: Thought diligence could not be interrupted at all
Correct rule: Diligence only needs to be continuous at the time of filing for the other party

Q: Can claiming foreign priority be implied rather than explicit?

Wrong thinking: Thought claiming foreign priority required explicit language in the question
Correct rule: It can be implied by non-intentional behavior

Q: Does a CIP application get to use its parent's filing date for all claims?

Wrong thinking: Thought the CIP could use the parent's filing date
Correct rule: CIP cannot use its parent's filing date for new claims — only for the matter carried over from the parent

Q: What can overcome a 102(a)(2) rejection with a joint research agreement?

Wrong thinking: Thought recording the agreement with the USPTO was sufficient
Correct rule: Must (1) provide a statement of common ownership AND (2) amend the application to disclose the names of the parties to the joint research agreement

Q: To overcome a 102 rejection on a product-by-process claim, is a mere argument enough?

Wrong thinking: Assumed a mere argument would suffice
Correct rule: An affidavit is required — otherwise the examiner will say "prove it"

Q: Can admitting prior art be overcome with a 1.130 affidavit?

Wrong thinking: Thought you could still use a 1.130 affidavit after admitting prior art
Correct rule: Admitting prior art renders any claim to a 1.130 affidavit ineligible

Q: Under AIA, if you invent something and a coinventor earlier disclosed it (< 1 year), can you still patent it?

Wrong thinking: Thought you couldn't swear back to coinvented prior art
Correct rule: Even if the prior art was coinvented, you can swear with a 1.130 affidavit/declaration that you were the sole inventor of that specific subject matter

35 USC 103 — Obviousness and KSR

Key mistakes to avoid:

Teaching away is a valid way to overcome an obviousness rejection — don't dismiss it
"Obvious to try" is only valid when there is a finite number of identified, predictable solutions with specific direction on how to achieve each one
For chemical compound obviousness, the analysis is: (1) identify the starting point compound, (2) provide reason to modify, (3) find the predictable solution
A teaching away article targeting the lead compound invalidates the starting point for the obviousness analysis

Q: Is a "teaching away" from a reference relevant to overcoming an obviousness rejection?

Wrong thinking: Thought a teaching away didn't count; was distracted by the "appreciated by" language
Correct rule: A teaching away is a way to overcome an obvious rejection

Q: For an obviousness analysis on chemical compounds, what is the correct framework?

Wrong thinking: Thought the starting reference point was wrong
Correct rule: Chemical compounds obviousness: (1) identify the starting point (compound), (2) provide reason to modify, (3) find the predictable solution

Q: Is "obvious to try" general guidance from the prior art enough to establish obviousness?

Wrong thinking: Thought general guidance was enough
Correct rule: If there is no specific direction on how to actually achieve the claimed invention, this is a situation where examiners can erroneously equate "obvious to try" with actual obviousness — it is not enough

Q: Can one teaching-away article override an obvious variant of a lead compound?

Wrong thinking: Thought a teaching away from the lead compound would not override one piece of obvious variant evidence
Correct rule: A teaching-away article targeting the lead compound would invalidate the starting point, weakening the entire obviousness rejection

Q: When an examiner cannot find prior art, what should happen?

Wrong thinking: Assumed the examiner would be right and the rejection would stand
Correct rule: If the examiner cannot find prior art, they should vacate the rejection and allow the claim

35 USC 112 — Written Description, Enablement, and Means-Plus-Function

Key mistakes to avoid:

112(f) claims include functional language but explicitly exclude the structure to perform the function — this is the opposite of what feels intuitive
A structural modifier in a claim means it does not satisfy 112(f) — "means for" or "step for" are required
Drawings may not be submitted after the filing date to cure an enablement deficiency — 35 USC 113
The examiner must always construe/define the claims first before making a §112 rejection

Q: Does a 112(f) claim include the structure necessary to perform the recited function?

Wrong thinking: Thought a claim invoking 112(f) included the structure to perform the function
Correct rule: The opposite — 112(f) includes functional language but explicitly not the structure to perform the function. Requires: (1) "means for" or "step for" or a nonstructural term, (2) modified by functional language, (3) not modified by sufficient structure/material/acts to achieve the function

Q: If a structural modifier is present, does it satisfy 112(f)?

Wrong thinking: Thought a structural modifier satisfied 112(f)
Correct rule: If a structural modifier is included, it does not satisfy 112(f)

Q: What is required to get a filing date?

Wrong thinking: Thought spec, claim, and drawings were all required for a filing date
Correct rule: Just the specification is required to get a filing date. Spec, claim, drawings, fees, and oath are required to start examination

Q: Can drawings be submitted after the filing date to overcome a specification insufficiency?

Wrong thinking: Thought a CIP would be the best option
Correct rule: Drawings are specifically not allowed after the filing date to overcome any insufficiency of the specification due to lack of enabling disclosure — 35 USC 113

Q: What must the examiner do before making an enablement rejection?

Wrong thinking: Thought the examiner did not have to construe the claims first
Correct rule: The examiner's first step is always to define/construe the claims before making any §112 rejection

Q: If a claim element was not in the original description, can it satisfy the written description requirement?

Wrong thinking: Missed that a "U shape" was not in the original description
Correct rule: Since it was not in the original description, the 35 USC 112(a) written description requirement is not met

Q: What does means-plus-function language require to invoke 112(f)?

Wrong thinking: Did not recognize the means-plus-function claim
Correct rule: 112(f) is invoked by "means for" language; the examiner then compares to equivalent prior art. To stop this, specify the exact structure in the claim

Q: Do claim contents constitute part of the original disclosure?

Wrong thinking: Did not realize claim content was part of the original disclosure
Correct rule: The content of the claims does constitute part of the original disclosure

Q: What is the difference between 112(a) and 112(b)?

Wrong thinking: Mixed up 112(a) and 112(b)
Correct rule: 112(a) = written description/enablement/best mode. 112(b) = definiteness — if you are discussing claims as if they are not claiming the original invention, that is a 112(b) violation

Q: Can claiming a new use for something old satisfy novelty under 102?

Wrong thinking: Thought claiming a new use was always patentable
Correct rule: If you are not claiming a method of use, it is anticipated (same thing = anticipated). A new method of use = novelty

Chapter 1200 — Appeals

Key mistakes to avoid:

Reply briefs are due 2 months from examiner's answer — this deadline cannot be extended
The quickest path when you only want to argue (not amend) is a reply brief — not reopening prosecution
Petitions under 37 CFR 1.181 are required to admit evidence when the examiner refuses to enter it
After a new ground of rejection in the examiner's answer, there are specific sequencing rules depending on how you respond

Q: Can the 2-month deadline for a reply brief be extended?

Wrong thinking: Thought an extension of time could be purchased for a reply brief
Correct rule: Cannot be extended. The Board will not consider any new arguments unless they address the points made in the examiner's answer

Q: When an examiner issues a new ground of rejection in their answer, what is the quickest response if you only want to argue — not amend?

Wrong thinking: Thought reopening prosecution was needed
Correct rule: Just filing a reply brief is the quickest because the applicant is not looking to amend claims

Q: If the examiner refuses to enter evidence into the record, what must you file?

Wrong thinking: Thought it applied only if the examiner explicitly refused
Correct rule: To admit evidence to the record, if the examiner refuses or does not enter it, you must file a petition under 37 CFR 1.181

Q: After a 1.181 petition is granted designating a new ground of rejection, can you file a reply brief?

Wrong thinking: Thought you could always file a reply brief after any new ground of rejection in examiner's answer
Correct rule: You can file a reply brief only if the new ground was originally included in the original examiner answer. This question was specifically about when a 1.181 petition is filed and granted

Q: When the USPTO receives a new ground of rejection, what does it default to?

Wrong thinking: Thought the USPTO defaulted to maintaining the appeal
Correct rule: The USPTO will default to reopening prosecution

Q: What citation format does the Board prefer?

Wrong thinking: Thought no specific reporter system could be cited
Correct rule: The Board prefers United States Reports or West Reporter system, but any other reporter system is acceptable

Q: If both a rejection and an objection exist, is the matter only appealable?

Wrong thinking: Thought purely a rejection was needed before it could go to the board
Correct rule: If there is both a rejection and an objection, it is only appealable

Q: Can the PTAB direct the examiner to consider an affidavit the examiner explicitly denied?

Wrong thinking: Thought the PTAB could always tell the examiner to consider an affidavit
Correct rule: The Board can only do this if the examiner didn't notice or ignored it. If the examiner explicitly denies it, the Board cannot force them to consider it

Q: Does the Board consider claims you have not specifically argued?

Wrong thinking: Thought the Board would consider all claims
Correct rule: The Board will only consider claims you specifically argue — others rise and fall together

Q: If you respond to a final rejection within 2 months, what advisory action deadline do you get?

Wrong thinking: Forgot about the two-month rule
Correct rule: If you respond to the final rejection within 2 months, you get the later of 3 months or the mailing date of the advisory action for free

Chapter 1800 — PCT

Key mistakes to avoid:

At least one applicant in a US-filed international application must be a US resident — but a filing fee is not required at the time of filing
Article 19 (Chapter I) and Article 34 (Chapter II) have different timing windows — know both
PCT applications have automatically designated the US since 2004; new originals cannot be transmitted by fax
No paperwork is needed to enter national phase for design applications through the Hague Agreement — it is automatic

Q: Is an abstract required for a complete international application?

Wrong thinking: Thought an abstract was required
Correct rule: A certified copy of any priority document is actually not required until 16 months — and an abstract, while standard, is not what prevents an international filing date

Q: What is required to get an international filing date for a PCT application?

Wrong thinking: Thought the inventor's name was required
Correct rule: You do not need the name of the inventor. Just the applicant; the inventor comes later

Q: For a US-filed PCT application, does at least one applicant need to be a US resident?

Wrong thinking: Thought a US resident was not required for at least one applicant
Correct rule: They do need to be a resident. What is not required at filing is the filing fee

Q: What is the difference between Article 19 and Article 34 amendments in PCT?

Wrong thinking: Did not know the Article 19/34 difference
Correct rule: Article 19 = Chapter I — later of 2 months from ISR or 16 months from priority date. Article 34 = Chapter II — later of 3 months from ISR or 22 months from priority date

Q: Since 2004, do PCT applications automatically designate the US?

Wrong thinking: Thought fax was acceptable for PCT applications
Correct rule: PCT applications have automatically designated the US since 2004. New original applications cannot be transmitted by facsimile

Q: Is paperwork needed to enter national phase for a design application through the Hague Agreement?

Wrong thinking: Thought paperwork needed to be filed to enter national phase for a design app through the Hague amendment
Correct rule: You don't need to do anything — it happens automatically

Q: Where is the issue fee paid for a design application filed through the Hague Agreement?

Wrong thinking: Thought the issue fee would need to be paid to Geneva
Correct rule: Like normal, you pay the US within three months

Chapter 700 — Examination of Applications

Key mistakes to avoid:

Extensions of time are bought retroactively — you do not need to get one before a post-final rejection interview
Prioritized examination under 37 CFR 1.102 is unavailable for design applications
When making a restriction requirement, the applicant must elect one group and traverse — failing to elect means the response won't be considered a response
If the RCE fee is not paid, the application is sent out the door; there is no provisional suspension

Q: Do you need to obtain an extension of time before a post-final rejection interview with the examiner?

Wrong thinking: Thought an extension of time had to be obtained before the post-final rejection interview
Correct rule: Extensions of time are bought retroactively

Q: Is prioritized examination under 37 CFR 1.102 available for design applications?

Wrong thinking: Thought it was unavailable because it required EFS
Correct rule: It is unavailable for design applications entirely

Q: How do you admit evidence to the record when the examiner refuses?

Wrong thinking: Thought it applied only if the examiner explicitly refused to enter it
Correct rule: File a petition under 37 CFR 1.181 to admit evidence to the record

Q: If you get a notice of omitted items for a continuation, what is the effect on filing date?

Wrong thinking: Missed that the continuation rule applied
Correct rule: For a continuation, you can just show the items were in the original (like a clerical error) — no effect on filing date

Q: When responding to a restriction requirement, must you elect and traverse?

Wrong thinking: Thought you didn't have to elect in a restriction requirement
Correct rule: You must elect one and state you are traversing. If you fail to elect, your response won't be considered and you won't be able to petition the Commissioner

Q: If the RCE fee is not paid, what happens?

Wrong thinking: Thought prosecution would reopen even if the RCE fee wasn't paid
Correct rule: Since the RCE fee was not paid, the application is sent out the door — any allowed claims are subsequently allowed and canceled rejected claims are canceled

Q: Can examiners communicate with unregistered individuals?

Wrong thinking: Did not fully understand MPEP 713.02
Correct rule: Examiners cannot communicate with unregistered individuals or suspended practitioners

Q: What happens if a request to suspend action is filed with an improper RCE?

Wrong thinking: Did not realize the request would be ignored
Correct rule: The request to suspend action would be ignored if the RCE was improper

Q: How do you reset the filing date when fixing a notice of omitted items in a non-continuation?

Wrong thinking: Thought a preliminary amendment would work
Correct rule: A petition needs to be filed to reset the filing date

Reissue and Reexamination

Key mistakes to avoid:

Reexaminations only allow narrowing — broadening can only be done through reissue, up to 2 years after the patent issues
Extensions of time cannot be obtained retroactively in reexamination once you are 2+ months past the original due date
Only documents (patents and printed publications) can be used as evidence in reexaminations — not prior sales
Failure to respond in reexamination = termination (not abandonment)

Q: Can extensions of time be obtained retroactively in a reexamination once you are 2+ months past the deadline?

Wrong thinking: Thought you could request retroactive extensions in reexamination
Correct rule: Extensions cannot be obtained retroactively in a reexamination once you are two months or more past the original due date

Q: Can prior sales be used as evidence in reexaminations?

Wrong thinking: Thought reexaminations could use prior sales as evidence
Correct rule: Only documents (patents and publications) can be used as evidence for reexaminations

Q: What happens if you fail to respond to an official action in a reexamination?

Wrong thinking: Thought failure to respond would result in abandonment
Correct rule: It results in termination — the PTO issues a reexamination certificate

Q: Is a fee required at the time of filing a reexamination?

Wrong thinking: Thought fee was necessary at the time of filing
Correct rule: If you don't send it, you'll get a notice of missing parts. Note: the automatic surrender of the original patent grant occurs upon issue of the reissue

Q: Can you request the examiner not consider prior art in a reissue that was not considered in the original application?

Wrong thinking: Thought you could request the examiner ignore prior art not previously considered
Correct rule: Abandoning the original application is the way to go when the reissue will not work

Q: Can a reexamination broaden claims?

Wrong thinking: Thought broadening was allowed up to 6 years after expiration
Correct rule: Only narrowing is allowed in reexamination. Broadening can only be done with reissue, up to two years after the patent issues

Q: Under pre-AIA, what can be submitted in a reexamination written submission?

Wrong thinking: Thought anything could be submitted
Correct rule: Pre-AIA only patents or printed publications. Post-AIA you can also submit statements from the patent owner pointing out inconsistencies

Q: Does the duty of disclosure apply to all parties in reexamination proceedings?

Wrong thinking: Thought duty of disclosure for reexam applied to all
Correct rule: Duty of disclosure only applies to the patent owner/applicant — no duty of disclosure for written submissions

Oaths and Declarations

Key mistakes to avoid:

After September 15, 2012, the O/D is not required until the application is in condition for notice of allowance
Declarations do not need to be notarized; oaths do
A 37 CFR 1.63 declaration is the inventor's oath/declaration — the inventor must fully understand the application as written

Q: Under AIA, when must an oath/declaration be filed in response to a notice of missing parts?

Wrong thinking: Thought pre-AIA rules applied to the two-month deadline
Correct rule: After September 15, 2012 (when the first part of AIA went into effect), you do not need to submit the O/D until the application is in condition for a notice of allowance

Q: What is a valid reason to file a substitute statement?

Wrong thinking: Selected "the person filing has reviewed the contents" as not relevant
Correct rule: The correct answer was "The inventor has assigned the rights to the invention"

Q: Do inventors need a patent practitioner to file and prosecute their own cases?

Wrong thinking: Thought even inventors needed a patent practitioner
Correct rule: Inventors technically do not need a patent practitioner, but a corporate assignee would

Q: Does an oath/declaration always require the inventor's legal name?

Wrong thinking: Thought oath/declaration always required the inventor's legal name
Correct rule: Sometimes, if the inventor's legal name is in the ADS, it is not required on the oath/declaration itself

Q: What is a 37 CFR 1.63 declaration, and when can it be signed?

Wrong thinking: Did not know exactly what a 37 CFR 1.63 declaration was
Correct rule: A 37 CFR 1.63 declaration is the inventor's oath/declaration. They must fully understand the application as written — signing it before the application is ready is a violation

Q: Do oaths require notarization? Do declarations?

Wrong thinking: Did not realize oaths needed to be notarized
Correct rule: Oaths are required to be made before someone authorized to administer oaths (notarized). Declarations are not — which is why declarations are used by nearly everyone now

Ethics

Key mistakes to avoid:

The "shield turned sword" rule: you cannot use confidential information learned while defending someone to then attack them — no waiver or screening makes this ethical
Know the difference between "must" withdraw and "may" withdraw — only must when representation would violate USPTO rules of professional conduct

Q: Can a practitioner represent opposing sides sequentially using information from the first representation?

Wrong thinking: Thought representation could be appropriate for both sides with consent and proper screening
Correct rule: You cannot be the "Shield" and then become the "Sword" against the same target using secrets learned while being the Shield. No amount of screening or waivers makes that ethical. (37 CFR 11.109, 11.110)

Q: Does a conflict arise when the same firm uses different lawyers to represent two different applicants in the same tech space for prosecution?

Wrong thinking: Thought a conflict would stop same firm/different lawyers from doing this
Correct rule: This is not a conflict for patent prosecution, as long as both sides provide consent

Q: When must a practitioner decline or terminate representation?

Wrong thinking: Thought "must" and "may" were interchangeable
Correct rule: Only MUST decline or terminate when representation will result in a violation of USPTO rules of professional conduct. There is an extensive list of reasons you MAY decline/terminate. (37 CFR 11.116)

Q: Can a practitioner act on behalf of a client without explanation to make an informed decision?

Wrong thinking: Thought failure to protect a client's interest overrode the communication requirement
Correct rule: Practitioners must explain matters to a client to allow them to make informed decisions — acting without informing is a violation (37 CFR 11.107, 11.104)

Patent Prosecution Highway

Key mistakes to avoid:

PPH status can carry over to a continuation
The US application must have the same earliest priority date as the application from the Office of Earlier Examination (OEE) — PLTIA matters here
A claim narrower than an OEE-allowed claim can still be granted, but only as a dependent claim of a claim of the same/similar scope as the OEE-allowed claim
PPH does not absolve applicants of their duties under 37 CFR 1.56 and 37 CFR 11.18

Q: Can PPH status carry over to a continuation?

Wrong thinking: Thought PPH would not carry over to a continuation
Correct rule: PPH status can indeed carry over to a continuation

Q: Why might a US application not qualify for PPH due to PLTIA timing?

Wrong thinking: Thought priority could be restored even for pre-PLTIA applications
Correct rule: The US application must have the same earliest priority date as the OEE application. PLTIA (December 18, 2013) is required for priority restoration — applications filed before that window cannot take advantage of it

Q: If a US claim is narrower than an OEE-allowed claim, can it still enter the PPH?

Wrong thinking: Thought a narrower claim just needed to be amended or be a dependent claim of a broadened independent claim
Correct rule: A narrower claim can only be granted if it is a dependent claim that depends on a claim of the same or similar scope as the OEE-allowed claim. It can also be amended to "sufficiently correspond"

Q: If a CIP adds new matter, does it share the same priority date as the original for PPH purposes?

Wrong thinking: Thought the CIP would not share the earliest priority date with the original application
Correct rule: The CIP shares the same priority date for the original disclosure. New matter in the CIP has its own later priority date. For PPH purposes, the CIP can qualify, but PPH claims must correspond to the original-disclosure claims only

Q: Does PPH absolve applicants of duties under 37 CFR 1.56 and 11.18?

Wrong thinking: Thought PPH would not require adherence to 37 CFR 1.56 and 11.18
Correct rule: The PPH program does not absolve applicants of these duties. Complying with PPH disclosure requirements does not mean you are absolved of the duty to inform the USPTO of other material information

PTAB — IPR, PGR, and CBM

Key mistakes to avoid:

IPR (inter partes review) is only available after September 16, 2012 — it replaced inter partes reexamination; there is no automatic conversion
PGRs are allowed within 9 months of patent grant; IPRs are only available after 9 months
CBM (covered business method) review is essentially a PGR — grounds are 101, 102, 103, and 112
IPR discovery is sequenced (like ping-pong), not simultaneous

Q: When did inter partes review become available, and what did it replace?

Wrong thinking: Thought IPR was available pre-2013 as well
Correct rule: Inter partes review is only available after September 16, 2012 — it replaced inter partes reexamination on that date

Q: Is there automatic conversion from inter partes reexamination to inter partes review?

Wrong thinking: Thought inter partes reexam got converted to inter partes review
Correct rule: There is no automatic conversion — inter partes reexamination simply ended on 9/16/2012

Q: Is IPR discovery simultaneous or sequenced?

Wrong thinking: Thought IPR would involve requests from each party at the same time
Correct rule: IPR is like a ping-pong match — "sequenced discovery," not simultaneous (35 USC 316)

Q: What grounds are available in a covered business method patent review?

Wrong thinking: Thought CBM would only be under 102 and 103
Correct rule: CBM is essentially a post-grant review (PGR) so the grounds are 101, 102, 103, and 112 (37 CFR 42.300)

Q: Can an IPR be filed after a PGR has concluded?

Wrong thinking: Thought the window for IPR opens when the PGR finishes
Correct rule: PGRs are allowed until 9 months; IPRs are only allowed after 9 months — the windows do not overlap in this way

Q: Once there is an infringement suit, how long do you have to file an IPR?

Wrong thinking: Thought there was no challenging after PGR for things you could have raised
Correct rule: Once there is an infringement suit, you have 12 months to file an IPR

Q: Does a license to the patent meet the threshold to challenge under CBM review?

Wrong thinking: Thought a license would meet the threshold
Correct rule: CBM patent review has a high threshold — like being sued. A mere license does not meet this threshold

Priority, Assignment, and Filing

Key mistakes to avoid:

Patent term is 20 years from earliest nonprovisional filing date — not the provisional
Small entity status must be reestablished for continuations, divisionals, CIPs, CPAs, and reissues
CPA (continued prosecution application) is only for design patents since 2000 — not utility patents
Priority mail express label must be on each paper prior to mailing

Q: When was a claim required to get a filing date?

Wrong thinking: Thought a claim was not required to get a filing date
Correct rule: A claim was required before December 18, 2012 (when PLTIA went into effect). After PLTIA, a claim is not required for a filing date

Q: What is a foreign filing license, and who needs it?

Wrong thinking: Didn't know FFL was only to leave the US
Correct rule: A foreign filing license is only needed to leave the US. If you invent in the US, you need an FFL to file outside the US

Q: Do design applications have provisional applications?

Wrong thinking: Thought a design application could claim priority to a provisional application
Correct rule: Design applications cannot have provisional applications

Q: Does converting an application from utility to provisional preserve the filing date?

Wrong thinking: Thought converting would make the new date the priority date
Correct rule: Converting from a utility to a provisional keeps the original filing date — but this application must be abandoned because the conversion is not allowed in a meaningful way

Q: When does patent term expire?

Wrong thinking: Thought patent term expires 20 years from the earliest date
Correct rule: Patent term expires 20 years from the earliest nonprovisional filing date

Q: Does patent term adjustment apply before May 29, 2000?

Wrong thinking: Thought patent term adjustment applied to all patents
Correct rule: Patent term adjustment only applies after May 29, 2000 (MPEP 2730)

Q: Does small entity status automatically carry over to a continuation?

Wrong thinking: Thought small entity status would not need to be reestablished when assignment was transferred
Correct rule: Needs to be reestablished for all of: continuation, divisional, CIP, CPA, and reissue

Q: Does claiming foreign priority require the exact same inventive entity?

Wrong thinking: Thought claiming priority to a foreign application required the exact same inventive entity
Correct rule: Claiming priority to a foreign application does not require the exact same inventive entity — only one inventor in common is required

Q: What must be done to get an assignment recorded on the face of an application?

Wrong thinking: Did not know what was required
Correct rule: A fee transmittal form is required to get the assignment proper on the face of the application

Q: Does the assignment record in the USPTO reflect the legal reality of who the assignee is?

Wrong thinking: Assumed the legal reality of the assignee would carry over to a continuation
Correct rule: According to MPEP 306, the record in the office is not automatically updated to reflect the legal reality — it needs to be updated with a proper assignment document

Q: Does an assignment in a foreign language need a verified translation?

Wrong thinking: Missed that foreign language requirement
Correct rule: An assignment in a foreign language must have a verified translation (MPEP 302.02)

Q: When is the last day to submit a preissuance submission?

Wrong thinking: Thought the last day was the day of the deadline
Correct rule: The last day to submit is the day before the deadline

Q: How many items can be submitted in supplemental examination?

Wrong thinking: Thought 14 items with explanations would be fine
Correct rule: No more than 12 items for supplemental examination — there are 12 letters in "SUPPLEMENTAL," corresponding with the maximum limit

Q: When can protests be filed?

Wrong thinking: Thought a protest could be filed when it was too late for a third-party submission
Correct rule: Protests are only for before the application publishes (MPEP 1900)

Q: What is a Certificate of Correction?

Wrong thinking: Did not recognize the Certificate of Correction process
Correct rule: A Certificate of Correction is technically filing a petition to the Commissioner with the appropriate petition fee

Q: If a CIP includes a preliminary amendment, what is its priority date?

Wrong thinking: Did not catch that a preliminary amendment was added
Correct rule: The CIP thus has a priority date of the earlier filed application

Q: Can a provisional application be used for design patent priority to get around prior art within 1 year?

Wrong thinking: Thought a design application could claim priority to a provisional application
Correct rule: Design applications cannot have provisional applications

Q: What is required for a foreign application to qualify for priority?

Wrong thinking: Thought "or a nonobvious improvement" would work
Correct rule: The foreign application must be for the same invention — not an obvious improvement

Q: Does a CPA option still exist for utility patents?

Wrong thinking: Did not know CPA was only for design patents now
Correct rule: CPAs are not available since 2000 for utility patents — they are only for design patents. If you have some allowed claims and some finally rejected, you can cancel the rejected claims to immediately place the application in condition for allowance

Q: Can you take over prosecution of an application if you own only partial rights?

Wrong thinking: Thought partial rights were sufficient
Correct rule: You can only take over prosecution if you own the entire right/interest in the application

Q: When must the priority mail express label be affixed?

Wrong thinking: Did not realize timing mattered
Correct rule: The priority mail express label must be on each of the papers mailed prior to mailing

Q: What must accompany a submission for unlocatable files?

Wrong thinking: Did not know what "accurate and complete" required
Correct rule: Unlocatable files need to be supplied and accompanied by a statement that the list is "accurate and complete"

Q: Can a certificate of mailing be used from a foreign country?

Wrong thinking: Thought a certificate of mailing could be used from a foreign country
Correct rule: Only the USPS can do a certificate of mailing — it cannot be used from a foreign country

Q: Are prophetic patents allowed?

Wrong thinking: Thought you couldn't patent something that didn't physically exist
Correct rule: Prophetic patents are allowed — but you cannot misrepresent that you never physically had it

Q: How can inventorship be corrected post-AIA?

Wrong thinking: Thought inventorship could only be changed without deceptive intent
Correct rule: Inventorship can be changed with a Certificate of Correction — post-AIA removed the "without deceptive intent" requirement

Q: Does "if one claim is post-AIA, all claims are post-AIA" apply?

Wrong thinking: Did not follow the priority claims carefully
Correct rule: If one claim is post-AIA, all claims are post-AIA. Note also that inter partes review existed before AIA

Q: Can copendency end before a patent issues or application abandons?

Wrong thinking: Did not know 35 USC 119(e)
Correct rule: Copendency only ends when a patent issues or the application abandons (35 USC 119(e))

Q: When can the Director suspend or exclude a practitioner without a hearing?

Wrong thinking: Thought a hearing was always required first
Correct rule: The Director can place a practitioner on interim suspension if convicted of a serious crime in the US court system — no hearing required

Q: Can facsimile be used to receive most documents?

Wrong thinking: Thought facsimile wouldn't be received
Correct rule: Facsimile can be received other than on holidays or weekends. Note: it is forbidden for new applications, color drawings, secrecy orders, and reexamination requests

Design Patents

Key mistakes to avoid:

Design patents have a 6-month foreign priority window (not 12 months)
Design patents can get an extra 2 months under PLTIA if delay was unintentional
Design patents cannot have provisional applications

Q: What is the foreign priority window for design patents?

Wrong thinking: Thought design patent priority was 12 months
Correct rule: Design patents have a 6-month foreign priority window

Q: Can the 6-month design patent priority window be extended under PLTIA?

Wrong thinking: Thought the window was strictly 6 months with no extension
Correct rule: Design priority IS 6 months, but you can get an extra 2 months under PLTIA if the delay was unintentional

Q: Can design applications claim priority to provisional applications?

Wrong thinking: Thought a design application could claim priority to a provisional application to get around prior art within 1 year
Correct rule: Design applications cannot have provisional applications

Wrong Answer Journal

Organized from practice exam mistakes across the PLI course. Priority sections (2100, 1200, 1800, 700) appear first — these chapters account for the majority of exam questions.

Chapter 2100 — Patentability

35 USC 101 — Patent Eligibility

Key mistakes to avoid:

Assuming a machine or apparatus automatically makes a claim patent eligible — it needs to contribute significantly
Assuming mathematical or natural law concepts are always ineligible — they can be eligible if the claim adds significantly more
Applying POSITA analysis to the abstract idea step — it does not apply there

Q: Does using a machine or apparatus in a method claim automatically confer patent eligibility?

Wrong thinking: Any involvement of a machine weighed in favor of patent eligibility
Correct rule: The machine needs to contribute significantly to the method to move past the abstract idea threshold

Q: Is a claim covering a mathematical concept always patent ineligible?

Wrong thinking: Saw "mathematical concept" and assumed it was patent ineligible
Correct rule: Even a math concept can be patent eligible if there is a meaningful physical limit — e.g., a GPS receiver in the claim placed a meaningful limit on scope

Q: Is using a law of nature in claims enough to make them patent ineligible?

Wrong thinking: Assumed using a law of nature in the claims counted against eligibility
Correct rule: Using a law of nature in claims is valid and can be patent eligible

Q: Does applying a law of nature transform a claim to patent eligible?

Wrong thinking: Thought application of the laws of nature alone transformed a claim to patent eligible
Correct rule: It needs to be significantly more than the application of natural laws — applying them alone is not enough

Q: Can something still be patent eligible even if it involves an abstract idea?

Wrong thinking: Assumed the presence of an abstract idea caused patent ineligibility
Correct rule: A claim can still involve an abstract idea and be patent eligible — it just needs to be significantly more than the abstract idea

Q: If a concept preempts all uses in other fields, does that matter for evaluating abstract ideas?

Wrong thinking: Thought preemption of use in other fields would not be relevant for evaluating abstract ideas
Correct rule: If a claim locks up a concept so tightly that it prevents anyone from using it in any other field (e.g., claiming a mathematical formula for all uses), it is likely an abstract idea

Q: Does POSITA analysis apply when evaluating whether a claim embodies only an unpatentable abstract idea?

Wrong thinking: Assumed POSITA applied to all §101 determinations
Correct rule: POSITA does not apply to determining whether a method claim is an unpatentable abstract idea

Q: An inventor wasn't the actual inventor — which statute bars patentability?

Wrong thinking: Assumed prior art would eliminate the application
Correct rule: §101 bars patentability when the person filing is not actually the inventor

35 USC 102 — Prior Art, AIA, and Grace Period

Key mistakes to avoid:

Confusing when a 1.130 affidavit works vs. when a derivation proceeding is required (1.130 fails when claims are identical/substantially the same)
Forgetting that canceling AIA-eligible claims does not revert the application to pre-AIA
Mixing up the prior art date for foreign applications (it's the priority date, not the publication date or abandoned US filing date)
Forgetting that diligence in a priority contest only needs to be continuous at the time of filing for the other party

Q: Can a 37 CFR 1.130 affidavit remove a reference that claims the same or substantially same patentable invention?

Wrong thinking: Thought 1.130 could be used to swear back any reference
Correct rule: If the reference claims the same patentable invention, a derivation proceeding is required — 1.130 only works when claims are different

Q: What are the requirements for a Rule 1.130 affidavit?

Wrong thinking: Assumed mode of disclosure mattered
Correct rule: Must (I) identify the subject matter publicly disclosed and establish the date and content; (II) if the earlier disclosure was a printed publication, attach a copy. Mode for disclosure does not matter.

Q: Does canceling AIA-eligible claims revert an application to pre-AIA status?

Wrong thinking: Thought canceling the AIA claim would return the app to pre-AIA
Correct rule: Once an application contained a claim with an effective filing date on or after March 16, 2013, it is permanently under AIA — even if those claims are canceled

Q: What is the prior art date for a foreign application where the US counterpart was abandoned?

Wrong thinking: Thought the foreign priority date still counted even when the US filing was abandoned
Correct rule: The foreign priority date did not count because the US application was abandoned

Q: Under pre-AIA, does a foreign application use its foreign priority date for prior art purposes?

Wrong thinking: Assumed the foreign priority date was used for prior art under pre-AIA
Correct rule: Pre-AIA does not use the foreign priority date — it uses the US filing/priority date

Q: What is the prior art date for a foreign application that didn't publish in the US?

Wrong thinking: Picked the prior art date of when the foreign application published
Correct rule: The correct prior art date was the foreign application's priority date; opting out of US publication does not change this

Q: When a prior art reference has a "based on X, in view of Y" structure under AIA, can Y be removed?

Wrong thinking: Thought the reference couldn't be removed as prior art if Y was removed
Correct rule: The reference was indeed prior art based on priority dates; the first nonprovisional added new matter, placing it under AIA

Q: Does diligence in a priority contest need to be continuous throughout the entire period?

Wrong thinking: Thought diligence could not be interrupted at all
Correct rule: Diligence only needs to be continuous at the time of filing for the other party

Q: Can claiming foreign priority be implied rather than explicit?

Wrong thinking: Thought claiming foreign priority required explicit language in the question
Correct rule: It can be implied by non-intentional behavior

Q: Does a CIP application get to use its parent's filing date for all claims?

Wrong thinking: Thought the CIP could use the parent's filing date
Correct rule: CIP cannot use its parent's filing date for new claims — only for the matter carried over from the parent

Q: What can overcome a 102(a)(2) rejection with a joint research agreement?

Wrong thinking: Thought recording the agreement with the USPTO was sufficient
Correct rule: Must (1) provide a statement of common ownership AND (2) amend the application to disclose the names of the parties to the joint research agreement

Q: To overcome a 102 rejection on a product-by-process claim, is a mere argument enough?

Wrong thinking: Assumed a mere argument would suffice
Correct rule: An affidavit is required — otherwise the examiner will say "prove it"

Q: Can admitting prior art be overcome with a 1.130 affidavit?

Wrong thinking: Thought you could still use a 1.130 affidavit after admitting prior art
Correct rule: Admitting prior art renders any claim to a 1.130 affidavit ineligible

Q: Under AIA, if you invent something and a coinventor earlier disclosed it (< 1 year), can you still patent it?

Wrong thinking: Thought you couldn't swear back to coinvented prior art
Correct rule: Even if the prior art was coinvented, you can swear with a 1.130 affidavit/declaration that you were the sole inventor of that specific subject matter

35 USC 103 — Obviousness and KSR

Key mistakes to avoid:

Teaching away is a valid way to overcome an obviousness rejection — don't dismiss it
"Obvious to try" is only valid when there is a finite number of identified, predictable solutions with specific direction on how to achieve each one
For chemical compound obviousness, the analysis is: (1) identify the starting point compound, (2) provide reason to modify, (3) find the predictable solution
A teaching away article targeting the lead compound invalidates the starting point for the obviousness analysis

Q: Is a "teaching away" from a reference relevant to overcoming an obviousness rejection?

Wrong thinking: Thought a teaching away didn't count; was distracted by the "appreciated by" language
Correct rule: A teaching away is a way to overcome an obvious rejection

Q: For an obviousness analysis on chemical compounds, what is the correct framework?

Wrong thinking: Thought the starting reference point was wrong
Correct rule: Chemical compounds obviousness: (1) identify the starting point (compound), (2) provide reason to modify, (3) find the predictable solution

Q: Is "obvious to try" general guidance from the prior art enough to establish obviousness?

Wrong thinking: Thought general guidance was enough
Correct rule: If there is no specific direction on how to actually achieve the claimed invention, this is a situation where examiners can erroneously equate "obvious to try" with actual obviousness — it is not enough

Q: Can one teaching-away article override an obvious variant of a lead compound?

Wrong thinking: Thought a teaching away from the lead compound would not override one piece of obvious variant evidence
Correct rule: A teaching-away article targeting the lead compound would invalidate the starting point, weakening the entire obviousness rejection

Q: When an examiner cannot find prior art, what should happen?

Wrong thinking: Assumed the examiner would be right and the rejection would stand
Correct rule: If the examiner cannot find prior art, they should vacate the rejection and allow the claim

35 USC 112 — Written Description, Enablement, and Means-Plus-Function

Key mistakes to avoid:

112(f) claims include functional language but explicitly exclude the structure to perform the function — this is the opposite of what feels intuitive
A structural modifier in a claim means it does not satisfy 112(f) — "means for" or "step for" are required
Drawings may not be submitted after the filing date to cure an enablement deficiency — 35 USC 113
The examiner must always construe/define the claims first before making a §112 rejection

Q: Does a 112(f) claim include the structure necessary to perform the recited function?

Wrong thinking: Thought a claim invoking 112(f) included the structure to perform the function
Correct rule: The opposite — 112(f) includes functional language but explicitly not the structure to perform the function. Requires: (1) "means for" or "step for" or a nonstructural term, (2) modified by functional language, (3) not modified by sufficient structure/material/acts to achieve the function

Q: If a structural modifier is present, does it satisfy 112(f)?

Wrong thinking: Thought a structural modifier satisfied 112(f)
Correct rule: If a structural modifier is included, it does not satisfy 112(f)

Q: What is required to get a filing date?

Wrong thinking: Thought spec, claim, and drawings were all required for a filing date
Correct rule: Just the specification is required to get a filing date. Spec, claim, drawings, fees, and oath are required to start examination

Q: Can drawings be submitted after the filing date to overcome a specification insufficiency?

Wrong thinking: Thought a CIP would be the best option
Correct rule: Drawings are specifically not allowed after the filing date to overcome any insufficiency of the specification due to lack of enabling disclosure — 35 USC 113

Q: What must the examiner do before making an enablement rejection?

Wrong thinking: Thought the examiner did not have to construe the claims first
Correct rule: The examiner's first step is always to define/construe the claims before making any §112 rejection

Q: If a claim element was not in the original description, can it satisfy the written description requirement?

Wrong thinking: Missed that a "U shape" was not in the original description
Correct rule: Since it was not in the original description, the 35 USC 112(a) written description requirement is not met

Q: What does means-plus-function language require to invoke 112(f)?

Wrong thinking: Did not recognize the means-plus-function claim
Correct rule: 112(f) is invoked by "means for" language; the examiner then compares to equivalent prior art. To stop this, specify the exact structure in the claim

Q: Do claim contents constitute part of the original disclosure?

Wrong thinking: Did not realize claim content was part of the original disclosure
Correct rule: The content of the claims does constitute part of the original disclosure

Q: What is the difference between 112(a) and 112(b)?

Wrong thinking: Mixed up 112(a) and 112(b)
Correct rule: 112(a) = written description/enablement/best mode. 112(b) = definiteness — if you are discussing claims as if they are not claiming the original invention, that is a 112(b) violation

Q: Can claiming a new use for something old satisfy novelty under 102?

Wrong thinking: Thought claiming a new use was always patentable
Correct rule: If you are not claiming a method of use, it is anticipated (same thing = anticipated). A new method of use = novelty

Chapter 1200 — Appeals

Key mistakes to avoid:

Reply briefs are due 2 months from examiner's answer — this deadline cannot be extended
The quickest path when you only want to argue (not amend) is a reply brief — not reopening prosecution
Petitions under 37 CFR 1.181 are required to admit evidence when the examiner refuses to enter it
After a new ground of rejection in the examiner's answer, there are specific sequencing rules depending on how you respond

Q: Can the 2-month deadline for a reply brief be extended?

Wrong thinking: Thought an extension of time could be purchased for a reply brief
Correct rule: Cannot be extended. The Board will not consider any new arguments unless they address the points made in the examiner's answer

Q: When an examiner issues a new ground of rejection in their answer, what is the quickest response if you only want to argue — not amend?

Wrong thinking: Thought reopening prosecution was needed
Correct rule: Just filing a reply brief is the quickest because the applicant is not looking to amend claims

Q: If the examiner refuses to enter evidence into the record, what must you file?

Wrong thinking: Thought it applied only if the examiner explicitly refused
Correct rule: To admit evidence to the record, if the examiner refuses or does not enter it, you must file a petition under 37 CFR 1.181

Q: After a 1.181 petition is granted designating a new ground of rejection, can you file a reply brief?

Wrong thinking: Thought you could always file a reply brief after any new ground of rejection in examiner's answer
Correct rule: You can file a reply brief only if the new ground was originally included in the original examiner answer. This question was specifically about when a 1.181 petition is filed and granted

Q: When the USPTO receives a new ground of rejection, what does it default to?

Wrong thinking: Thought the USPTO defaulted to maintaining the appeal
Correct rule: The USPTO will default to reopening prosecution

Q: What citation format does the Board prefer?

Wrong thinking: Thought no specific reporter system could be cited
Correct rule: The Board prefers United States Reports or West Reporter system, but any other reporter system is acceptable

Q: If both a rejection and an objection exist, is the matter only appealable?

Wrong thinking: Thought purely a rejection was needed before it could go to the board
Correct rule: If there is both a rejection and an objection, it is only appealable

Q: Can the PTAB direct the examiner to consider an affidavit the examiner explicitly denied?

Wrong thinking: Thought the PTAB could always tell the examiner to consider an affidavit
Correct rule: The Board can only do this if the examiner didn't notice or ignored it. If the examiner explicitly denies it, the Board cannot force them to consider it

Q: Does the Board consider claims you have not specifically argued?

Wrong thinking: Thought the Board would consider all claims
Correct rule: The Board will only consider claims you specifically argue — others rise and fall together

Q: If you respond to a final rejection within 2 months, what advisory action deadline do you get?

Wrong thinking: Forgot about the two-month rule
Correct rule: If you respond to the final rejection within 2 months, you get the later of 3 months or the mailing date of the advisory action for free

Chapter 1800 — PCT

Key mistakes to avoid:

At least one applicant in a US-filed international application must be a US resident — but a filing fee is not required at the time of filing
Article 19 (Chapter I) and Article 34 (Chapter II) have different timing windows — know both
PCT applications have automatically designated the US since 2004; new originals cannot be transmitted by fax
No paperwork is needed to enter national phase for design applications through the Hague Agreement — it is automatic

Q: Is an abstract required for a complete international application?

Wrong thinking: Thought an abstract was required
Correct rule: A certified copy of any priority document is actually not required until 16 months — and an abstract, while standard, is not what prevents an international filing date

Q: What is required to get an international filing date for a PCT application?

Wrong thinking: Thought the inventor's name was required
Correct rule: You do not need the name of the inventor. Just the applicant; the inventor comes later

Q: For a US-filed PCT application, does at least one applicant need to be a US resident?

Wrong thinking: Thought a US resident was not required for at least one applicant
Correct rule: They do need to be a resident. What is not required at filing is the filing fee

Q: What is the difference between Article 19 and Article 34 amendments in PCT?

Wrong thinking: Did not know the Article 19/34 difference
Correct rule: Article 19 = Chapter I — later of 2 months from ISR or 16 months from priority date. Article 34 = Chapter II — later of 3 months from ISR or 22 months from priority date

Q: Since 2004, do PCT applications automatically designate the US?

Wrong thinking: Thought fax was acceptable for PCT applications
Correct rule: PCT applications have automatically designated the US since 2004. New original applications cannot be transmitted by facsimile

Q: Is paperwork needed to enter national phase for a design application through the Hague Agreement?

Wrong thinking: Thought paperwork needed to be filed to enter national phase for a design app through the Hague amendment
Correct rule: You don't need to do anything — it happens automatically

Q: Where is the issue fee paid for a design application filed through the Hague Agreement?

Wrong thinking: Thought the issue fee would need to be paid to Geneva
Correct rule: Like normal, you pay the US within three months

Chapter 700 — Examination of Applications

Key mistakes to avoid:

Extensions of time are bought retroactively — you do not need to get one before a post-final rejection interview
Prioritized examination under 37 CFR 1.102 is unavailable for design applications
When making a restriction requirement, the applicant must elect one group and traverse — failing to elect means the response won't be considered a response
If the RCE fee is not paid, the application is sent out the door; there is no provisional suspension

Q: Do you need to obtain an extension of time before a post-final rejection interview with the examiner?

Wrong thinking: Thought an extension of time had to be obtained before the post-final rejection interview
Correct rule: Extensions of time are bought retroactively

Q: Is prioritized examination under 37 CFR 1.102 available for design applications?

Wrong thinking: Thought it was unavailable because it required EFS
Correct rule: It is unavailable for design applications entirely

Q: How do you admit evidence to the record when the examiner refuses?

Wrong thinking: Thought it applied only if the examiner explicitly refused to enter it
Correct rule: File a petition under 37 CFR 1.181 to admit evidence to the record

Q: If you get a notice of omitted items for a continuation, what is the effect on filing date?

Wrong thinking: Missed that the continuation rule applied
Correct rule: For a continuation, you can just show the items were in the original (like a clerical error) — no effect on filing date

Q: When responding to a restriction requirement, must you elect and traverse?

Wrong thinking: Thought you didn't have to elect in a restriction requirement
Correct rule: You must elect one and state you are traversing. If you fail to elect, your response won't be considered and you won't be able to petition the Commissioner

Q: If the RCE fee is not paid, what happens?

Wrong thinking: Thought prosecution would reopen even if the RCE fee wasn't paid
Correct rule: Since the RCE fee was not paid, the application is sent out the door — any allowed claims are subsequently allowed and canceled rejected claims are canceled

Q: Can examiners communicate with unregistered individuals?

Wrong thinking: Did not fully understand MPEP 713.02
Correct rule: Examiners cannot communicate with unregistered individuals or suspended practitioners

Q: What happens if a request to suspend action is filed with an improper RCE?

Wrong thinking: Did not realize the request would be ignored
Correct rule: The request to suspend action would be ignored if the RCE was improper

Q: How do you reset the filing date when fixing a notice of omitted items in a non-continuation?

Wrong thinking: Thought a preliminary amendment would work
Correct rule: A petition needs to be filed to reset the filing date

Reissue and Reexamination

Key mistakes to avoid:

Reexaminations only allow narrowing — broadening can only be done through reissue, up to 2 years after the patent issues
Extensions of time cannot be obtained retroactively in reexamination once you are 2+ months past the original due date
Only documents (patents and printed publications) can be used as evidence in reexaminations — not prior sales
Failure to respond in reexamination = termination (not abandonment)

Q: Can extensions of time be obtained retroactively in a reexamination once you are 2+ months past the deadline?

Wrong thinking: Thought you could request retroactive extensions in reexamination
Correct rule: Extensions cannot be obtained retroactively in a reexamination once you are two months or more past the original due date

Q: Can prior sales be used as evidence in reexaminations?

Wrong thinking: Thought reexaminations could use prior sales as evidence
Correct rule: Only documents (patents and publications) can be used as evidence for reexaminations

Q: What happens if you fail to respond to an official action in a reexamination?

Wrong thinking: Thought failure to respond would result in abandonment
Correct rule: It results in termination — the PTO issues a reexamination certificate

Q: Is a fee required at the time of filing a reexamination?

Wrong thinking: Thought fee was necessary at the time of filing
Correct rule: If you don't send it, you'll get a notice of missing parts. Note: the automatic surrender of the original patent grant occurs upon issue of the reissue

Q: Can you request the examiner not consider prior art in a reissue that was not considered in the original application?

Wrong thinking: Thought you could request the examiner ignore prior art not previously considered
Correct rule: Abandoning the original application is the way to go when the reissue will not work

Q: Can a reexamination broaden claims?

Wrong thinking: Thought broadening was allowed up to 6 years after expiration
Correct rule: Only narrowing is allowed in reexamination. Broadening can only be done with reissue, up to two years after the patent issues

Q: Under pre-AIA, what can be submitted in a reexamination written submission?

Wrong thinking: Thought anything could be submitted
Correct rule: Pre-AIA only patents or printed publications. Post-AIA you can also submit statements from the patent owner pointing out inconsistencies

Q: Does the duty of disclosure apply to all parties in reexamination proceedings?

Wrong thinking: Thought duty of disclosure for reexam applied to all
Correct rule: Duty of disclosure only applies to the patent owner/applicant — no duty of disclosure for written submissions

Oaths and Declarations

Key mistakes to avoid:

After September 15, 2012, the O/D is not required until the application is in condition for notice of allowance
Declarations do not need to be notarized; oaths do
A 37 CFR 1.63 declaration is the inventor's oath/declaration — the inventor must fully understand the application as written

Q: Under AIA, when must an oath/declaration be filed in response to a notice of missing parts?

Wrong thinking: Thought pre-AIA rules applied to the two-month deadline
Correct rule: After September 15, 2012 (when the first part of AIA went into effect), you do not need to submit the O/D until the application is in condition for a notice of allowance

Q: What is a valid reason to file a substitute statement?

Wrong thinking: Selected "the person filing has reviewed the contents" as not relevant
Correct rule: The correct answer was "The inventor has assigned the rights to the invention"

Q: Do inventors need a patent practitioner to file and prosecute their own cases?

Wrong thinking: Thought even inventors needed a patent practitioner
Correct rule: Inventors technically do not need a patent practitioner, but a corporate assignee would

Q: Does an oath/declaration always require the inventor's legal name?

Wrong thinking: Thought oath/declaration always required the inventor's legal name
Correct rule: Sometimes, if the inventor's legal name is in the ADS, it is not required on the oath/declaration itself

Q: What is a 37 CFR 1.63 declaration, and when can it be signed?

Wrong thinking: Did not know exactly what a 37 CFR 1.63 declaration was
Correct rule: A 37 CFR 1.63 declaration is the inventor's oath/declaration. They must fully understand the application as written — signing it before the application is ready is a violation

Q: Do oaths require notarization? Do declarations?

Wrong thinking: Did not realize oaths needed to be notarized
Correct rule: Oaths are required to be made before someone authorized to administer oaths (notarized). Declarations are not — which is why declarations are used by nearly everyone now

Ethics

Key mistakes to avoid:

The "shield turned sword" rule: you cannot use confidential information learned while defending someone to then attack them — no waiver or screening makes this ethical
Know the difference between "must" withdraw and "may" withdraw — only must when representation would violate USPTO rules of professional conduct

Q: Can a practitioner represent opposing sides sequentially using information from the first representation?

Wrong thinking: Thought representation could be appropriate for both sides with consent and proper screening
Correct rule: You cannot be the "Shield" and then become the "Sword" against the same target using secrets learned while being the Shield. No amount of screening or waivers makes that ethical. (37 CFR 11.109, 11.110)

Q: Does a conflict arise when the same firm uses different lawyers to represent two different applicants in the same tech space for prosecution?

Wrong thinking: Thought a conflict would stop same firm/different lawyers from doing this
Correct rule: This is not a conflict for patent prosecution, as long as both sides provide consent

Q: When must a practitioner decline or terminate representation?

Wrong thinking: Thought "must" and "may" were interchangeable
Correct rule: Only MUST decline or terminate when representation will result in a violation of USPTO rules of professional conduct. There is an extensive list of reasons you MAY decline/terminate. (37 CFR 11.116)

Q: Can a practitioner act on behalf of a client without explanation to make an informed decision?

Wrong thinking: Thought failure to protect a client's interest overrode the communication requirement
Correct rule: Practitioners must explain matters to a client to allow them to make informed decisions — acting without informing is a violation (37 CFR 11.107, 11.104)

Patent Prosecution Highway

Key mistakes to avoid:

PPH status can carry over to a continuation
The US application must have the same earliest priority date as the application from the Office of Earlier Examination (OEE) — PLTIA matters here
A claim narrower than an OEE-allowed claim can still be granted, but only as a dependent claim of a claim of the same/similar scope as the OEE-allowed claim
PPH does not absolve applicants of their duties under 37 CFR 1.56 and 37 CFR 11.18

Q: Can PPH status carry over to a continuation?

Wrong thinking: Thought PPH would not carry over to a continuation
Correct rule: PPH status can indeed carry over to a continuation

Q: Why might a US application not qualify for PPH due to PLTIA timing?

Wrong thinking: Thought priority could be restored even for pre-PLTIA applications
Correct rule: The US application must have the same earliest priority date as the OEE application. PLTIA (December 18, 2013) is required for priority restoration — applications filed before that window cannot take advantage of it

Q: If a US claim is narrower than an OEE-allowed claim, can it still enter the PPH?

Wrong thinking: Thought a narrower claim just needed to be amended or be a dependent claim of a broadened independent claim
Correct rule: A narrower claim can only be granted if it is a dependent claim that depends on a claim of the same or similar scope as the OEE-allowed claim. It can also be amended to "sufficiently correspond"

Q: If a CIP adds new matter, does it share the same priority date as the original for PPH purposes?

Wrong thinking: Thought the CIP would not share the earliest priority date with the original application
Correct rule: The CIP shares the same priority date for the original disclosure. New matter in the CIP has its own later priority date. For PPH purposes, the CIP can qualify, but PPH claims must correspond to the original-disclosure claims only

Q: Does PPH absolve applicants of duties under 37 CFR 1.56 and 11.18?

Wrong thinking: Thought PPH would not require adherence to 37 CFR 1.56 and 11.18
Correct rule: The PPH program does not absolve applicants of these duties. Complying with PPH disclosure requirements does not mean you are absolved of the duty to inform the USPTO of other material information

PTAB — IPR, PGR, and CBM

Key mistakes to avoid:

IPR (inter partes review) is only available after September 16, 2012 — it replaced inter partes reexamination; there is no automatic conversion
PGRs are allowed within 9 months of patent grant; IPRs are only available after 9 months
CBM (covered business method) review is essentially a PGR — grounds are 101, 102, 103, and 112
IPR discovery is sequenced (like ping-pong), not simultaneous

Q: When did inter partes review become available, and what did it replace?

Wrong thinking: Thought IPR was available pre-2013 as well
Correct rule: Inter partes review is only available after September 16, 2012 — it replaced inter partes reexamination on that date

Q: Is there automatic conversion from inter partes reexamination to inter partes review?

Wrong thinking: Thought inter partes reexam got converted to inter partes review
Correct rule: There is no automatic conversion — inter partes reexamination simply ended on 9/16/2012

Q: Is IPR discovery simultaneous or sequenced?

Wrong thinking: Thought IPR would involve requests from each party at the same time
Correct rule: IPR is like a ping-pong match — "sequenced discovery," not simultaneous (35 USC 316)

Q: What grounds are available in a covered business method patent review?

Wrong thinking: Thought CBM would only be under 102 and 103
Correct rule: CBM is essentially a post-grant review (PGR) so the grounds are 101, 102, 103, and 112 (37 CFR 42.300)

Q: Can an IPR be filed after a PGR has concluded?

Wrong thinking: Thought the window for IPR opens when the PGR finishes
Correct rule: PGRs are allowed until 9 months; IPRs are only allowed after 9 months — the windows do not overlap in this way

Q: Once there is an infringement suit, how long do you have to file an IPR?

Wrong thinking: Thought there was no challenging after PGR for things you could have raised
Correct rule: Once there is an infringement suit, you have 12 months to file an IPR

Q: Does a license to the patent meet the threshold to challenge under CBM review?

Wrong thinking: Thought a license would meet the threshold
Correct rule: CBM patent review has a high threshold — like being sued. A mere license does not meet this threshold

Priority, Assignment, and Filing

Key mistakes to avoid:

Patent term is 20 years from earliest nonprovisional filing date — not the provisional
Small entity status must be reestablished for continuations, divisionals, CIPs, CPAs, and reissues
CPA (continued prosecution application) is only for design patents since 2000 — not utility patents
Priority mail express label must be on each paper prior to mailing

Q: When was a claim required to get a filing date?

Wrong thinking: Thought a claim was not required to get a filing date
Correct rule: A claim was required before December 18, 2012 (when PLTIA went into effect). After PLTIA, a claim is not required for a filing date

Q: What is a foreign filing license, and who needs it?

Wrong thinking: Didn't know FFL was only to leave the US
Correct rule: A foreign filing license is only needed to leave the US. If you invent in the US, you need an FFL to file outside the US

Q: Do design applications have provisional applications?

Wrong thinking: Thought a design application could claim priority to a provisional application
Correct rule: Design applications cannot have provisional applications

Q: Does converting an application from utility to provisional preserve the filing date?

Wrong thinking: Thought converting would make the new date the priority date
Correct rule: Converting from a utility to a provisional keeps the original filing date — but this application must be abandoned because the conversion is not allowed in a meaningful way

Q: When does patent term expire?

Wrong thinking: Thought patent term expires 20 years from the earliest date
Correct rule: Patent term expires 20 years from the earliest nonprovisional filing date

Q: Does patent term adjustment apply before May 29, 2000?

Wrong thinking: Thought patent term adjustment applied to all patents
Correct rule: Patent term adjustment only applies after May 29, 2000 (MPEP 2730)

Q: Does small entity status automatically carry over to a continuation?

Wrong thinking: Thought small entity status would not need to be reestablished when assignment was transferred
Correct rule: Needs to be reestablished for all of: continuation, divisional, CIP, CPA, and reissue

Q: Does claiming foreign priority require the exact same inventive entity?

Wrong thinking: Thought claiming priority to a foreign application required the exact same inventive entity
Correct rule: Claiming priority to a foreign application does not require the exact same inventive entity — only one inventor in common is required

Q: What must be done to get an assignment recorded on the face of an application?

Wrong thinking: Did not know what was required
Correct rule: A fee transmittal form is required to get the assignment proper on the face of the application

Q: Does the assignment record in the USPTO reflect the legal reality of who the assignee is?

Wrong thinking: Assumed the legal reality of the assignee would carry over to a continuation
Correct rule: According to MPEP 306, the record in the office is not automatically updated to reflect the legal reality — it needs to be updated with a proper assignment document

Q: Does an assignment in a foreign language need a verified translation?

Wrong thinking: Missed that foreign language requirement
Correct rule: An assignment in a foreign language must have a verified translation (MPEP 302.02)

Q: When is the last day to submit a preissuance submission?

Wrong thinking: Thought the last day was the day of the deadline
Correct rule: The last day to submit is the day before the deadline

Q: How many items can be submitted in supplemental examination?

Wrong thinking: Thought 14 items with explanations would be fine
Correct rule: No more than 12 items for supplemental examination — there are 12 letters in "SUPPLEMENTAL," corresponding with the maximum limit

Q: When can protests be filed?

Wrong thinking: Thought a protest could be filed when it was too late for a third-party submission
Correct rule: Protests are only for before the application publishes (MPEP 1900)

Q: What is a Certificate of Correction?

Wrong thinking: Did not recognize the Certificate of Correction process
Correct rule: A Certificate of Correction is technically filing a petition to the Commissioner with the appropriate petition fee

Q: If a CIP includes a preliminary amendment, what is its priority date?

Wrong thinking: Did not catch that a preliminary amendment was added
Correct rule: The CIP thus has a priority date of the earlier filed application

Q: Can a provisional application be used for design patent priority to get around prior art within 1 year?

Wrong thinking: Thought a design application could claim priority to a provisional application
Correct rule: Design applications cannot have provisional applications

Q: What is required for a foreign application to qualify for priority?

Wrong thinking: Thought "or a nonobvious improvement" would work
Correct rule: The foreign application must be for the same invention — not an obvious improvement

Q: Does a CPA option still exist for utility patents?

Wrong thinking: Did not know CPA was only for design patents now
Correct rule: CPAs are not available since 2000 for utility patents — they are only for design patents. If you have some allowed claims and some finally rejected, you can cancel the rejected claims to immediately place the application in condition for allowance

Q: Can you take over prosecution of an application if you own only partial rights?

Wrong thinking: Thought partial rights were sufficient
Correct rule: You can only take over prosecution if you own the entire right/interest in the application

Q: When must the priority mail express label be affixed?

Wrong thinking: Did not realize timing mattered
Correct rule: The priority mail express label must be on each of the papers mailed prior to mailing

Q: What must accompany a submission for unlocatable files?

Wrong thinking: Did not know what "accurate and complete" required
Correct rule: Unlocatable files need to be supplied and accompanied by a statement that the list is "accurate and complete"

Q: Can a certificate of mailing be used from a foreign country?

Wrong thinking: Thought a certificate of mailing could be used from a foreign country
Correct rule: Only the USPS can do a certificate of mailing — it cannot be used from a foreign country

Q: Are prophetic patents allowed?

Wrong thinking: Thought you couldn't patent something that didn't physically exist
Correct rule: Prophetic patents are allowed — but you cannot misrepresent that you never physically had it

Q: How can inventorship be corrected post-AIA?

Wrong thinking: Thought inventorship could only be changed without deceptive intent
Correct rule: Inventorship can be changed with a Certificate of Correction — post-AIA removed the "without deceptive intent" requirement

Q: Does "if one claim is post-AIA, all claims are post-AIA" apply?

Wrong thinking: Did not follow the priority claims carefully
Correct rule: If one claim is post-AIA, all claims are post-AIA. Note also that inter partes review existed before AIA

Q: Can copendency end before a patent issues or application abandons?

Wrong thinking: Did not know 35 USC 119(e)
Correct rule: Copendency only ends when a patent issues or the application abandons (35 USC 119(e))

Q: When can the Director suspend or exclude a practitioner without a hearing?

Wrong thinking: Thought a hearing was always required first
Correct rule: The Director can place a practitioner on interim suspension if convicted of a serious crime in the US court system — no hearing required

Q: Can facsimile be used to receive most documents?

Wrong thinking: Thought facsimile wouldn't be received
Correct rule: Facsimile can be received other than on holidays or weekends. Note: it is forbidden for new applications, color drawings, secrecy orders, and reexamination requests

Design Patents

Key mistakes to avoid:

Design patents have a 6-month foreign priority window (not 12 months)
Design patents can get an extra 2 months under PLTIA if delay was unintentional
Design patents cannot have provisional applications

Q: What is the foreign priority window for design patents?

Wrong thinking: Thought design patent priority was 12 months
Correct rule: Design patents have a 6-month foreign priority window

Q: Can the 6-month design patent priority window be extended under PLTIA?

Wrong thinking: Thought the window was strictly 6 months with no extension
Correct rule: Design priority IS 6 months, but you can get an extra 2 months under PLTIA if the delay was unintentional

Q: Can design applications claim priority to provisional applications?

Wrong thinking: Thought a design application could claim priority to a provisional application to get around prior art within 1 year
Correct rule: Design applications cannot have provisional applications