PLI's Exam-Focus Patent Office Exam Course (2021)

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INTRODUCTION TO PLl'S PATENT OFFICE EXAM COURSE You have in your hands the best possible course for preparing for the Patent Office's Registration Exam. The Exam, starting in 2012, changes every 6-12 months. The rate and extent of change depends on how many, and how recent, Statutory or Rule updates may have been implemented. This started with the America Invents Act ("AIA"), the Patent Law Treaty Implementation Act ("PLTIA"), the Hague Agreement for International Registration of Industrial Designs and a series of Supreme Court decisions on patent eligibility. Those changes to the Exam, and more, are all covered in this course. It is also likely that the USPTO will continue to tweak the Exam as they adjust their procedures to account for the "real" world of practice that their earlier rule-making did not entirely •foresee. We will, of course, continue to update the course (including written materials, lectures and practice questions) to cover all of the tweaks that the USPTO puts out and tests. This is not a worry for you; it is a worry for us. Relax. You should plan about 200 hours total of study time to be fully prepared for the Exam. The course is composed of three building blocks: The first block is the Pre-Course. This building block is designed to give you the necessary familiarity with patents and the prosecution process, even if you are already familiar with them. In addition, the Pre-Course includes a glossary of key terms, phrases and concepts to further establish your knowledge base before you begin the second building block, the Patent Office Exam Course proper. The Pre-Course lectures are the first lectures in the online homestudy course. (The Pre-Course is not reviewed in the live courses. You must do it before attending a live course.) This is how we make sure that everyone starts "on the same page." If you are not already familiar with how the Registration Exam itself works, you should go to PLI' s Patent Office Exam Course Website (www.PatentOfficeExamCourse.com) and listen to our free briefing. The Patent Office Exam Course itself will require about 50 hours to complete and forms the major component of building both the required knowledge and practice base for the Exam. There are 30 + hours of lectures, and practice or homework segments throughout the course. The object is to build your knowledge layer-by-layer and give you practice using that newly acquired knowledge in an Exam format, so that the question styles, scope, and pace become familiar. You begin the course by simply listening to or watching the first lecture (after the Pre-course) and proceeding in the order laid out in the online course. (You may have a slightly different order of lectures in the live course. We'll inform you of that order in advance of your live course, so that you can be adequately prepared. But, in the meantime, don't hesitate to proceed through the homestudy lectures in that order.) Once you have completed the second building block, it is time to use the third block, the PostCourse materials. The Post-Course includes 60-80 hours of additional exercises. More practice questions are provided than have been scheduled. Use your personalized performance diagnostics in Patware to tell you which of the most testable subjects you need more practice on. If you are attending a live course, you will be assigned the minimum reading (including the Pre-Course) to do before class starts. But it's better still if you review as much of the materials and lectures as possible prior to your arrival at the lecture location. The materials to bring with you to the live location are: (1) the three-ring notebook (Study Guide), and (2) a laptop or tablet so that you

can review the MPEP via the online homestudy course. (If you can't bring a laptop to the course, you should bring a hardcopy of the MPEP.) Good luck in your preparations.

All content: Copyright© 2011, 2012, 2013, 2014, 2016, 2018, 2019 by Practising Law Institute. All rights reserved. This material is made available for individual purchasers of PLI's Patent Office Exam Course, and may not be reproduced or transferred (electronically or otherwise) for any reason or by any means.

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INTRODUCTION TO THE EXAM I. Registration to Practice .................................................................................. 1 II. The Nature of the Exam ............................................................................... 2 III. Your Preparation ......................................................................................... 4 IV. A Successful Strategy for Passing the Examination ................................... 4 A. Organization Is Key to Success (or Know Where to Look, Before You Look) ..................................................................................................... 5 B. The Same Basic Questions and Answers Appear Year after Year; So Know the Answers to Past Exam Questions ................................................. 5 C. Practice Taking as Many Questions as You Can Under Real Exam Time Conditions; i.e., 3 Minutes per Question............................................ 6 D. Create and Implement a Plan to Be at Your Best.. ............................. 6 E. Seek the Best Answer, Not the "Correct" Answer. ........................... 6 F. Answer Every Question and Guess Intelligently ............................... 7 G. Let the Tested Documents Be Your Guide ........................................ 7 H. Don't Let the Patent Office Trip You Up with Tricky Questions ..... 8 I. Prepare for What Will Be on the Exam................................................. 8 J. Don't Panic ............................................................................................ 8 K. AND Don't Confuse This Test with Real Life ................................... 9 V. What You Don't Need to Know .................................................................. 9 VI. Source Books ............................................................................................ 10 VII. The Patent Office Universal Principles ................................................... 11 A. The Rule of Diminishing Rights ...................................................... 11 B. The Capitalist Patent Office ............................................................. 11 C. Rigid Rule Application .................................................................... 12 D. Failure to Respond Results in Abandonment.. ................................. 12 VIII. Search Issues on the Electronic Exam ................................................... 12

I. Registration to Practice In order to prepare and file a United States patent application for anyone other than yourself, to advise others regarding such an application, or to represent others in complying with Patent Office procedures after filing, you must be either a registered Patent Agent or a registered Patent Attorney. Unless you have worked at the Patent Office for four years, the only way to become a Patent Agent or Attorney is to pass the Registration Examination given by the Patent Office (often unofficially referred to as "the Patent Bar Exam" by others, and occasionally by the Patent Office itself). In order to take the Exam, you have to prove that you are qualified to sit for the Exam. In general, the Patent Office requires a bachelor's degree in science or RP-1

engineering, or the rough equivalent. (For details, see the General Requirements Bulletin" at the Patent Office Website, or via www.PatentOfficeExarnCourse.com.) 11

A Registered Attorney is a lawyer who has passed both the Patent Registration Exam AND some state bar examination (and has been admitted as a member of that state bar). A Registered Agent is an individual who has passed the Patent Registration Exam but is not an attorney. If a Registered Agent later passes some state bar exam, thens/he can have their designation on the Patent Office Website changed from agent" to attorney" by simply submitting proof to the Office that s/he has passed a state bar exam. You need never pass the Registration Exam again. And the Exam is the same for both Agents and Attorneys. II

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The Patent Office is the only remaining agency of the Federal Government that requires some qualification beyond membership in a state bar to represent clients before the agency. Similarly, the Patent Office is alone in allowing non-lawyers who have passed an examination and satisfied the Patent Office's ethical and technical requirements to represent clients. The Patent Office is determined to keep the Exam as a qualification, and may add other requirements (e.g., continuing education requirements) in the future. The Patent Office will register those former examiners who have served at least four years, and were not fired for incompetence or malfeasance, without taking the Examination. That promise keeps a good many examiners in place until four years have passed. Otherwise, the rest of us, no matter how brilliant an academic or law school history, no matter how many years as a lawyer or working in a patent law firm, have to take and pass the Examination. It is for many a last and late rite of passage, and one that is unnecessarily dreaded. Because the Exam qualifies non-lawyers as well as lawyers, there are no questions (or at most one or two) on the Exam requiring legal knowledge beyond that necessary to prepare and prosecute patent applications and to perform the few other miscellaneous functions assigned by law to the Patent Office. The legal knowledge you need to pass this Exam, you can easily learn in this course. Attorneys have no particular advantage on the Exam. If it happens in the Patent Office, you are expected to know everything about it; if it happens in court (or indeed anywhere outside the Patent Office), it is not, with very few exceptions, the concern of the Exam.

II. The Nature of the Exam The Examination became available as a computer-delivered multiple-choice exam in late summer of 2004. (If you care to know the history of the Exam prior to the computer-based version, just call the PU Patent Bar office. We've been teaching to this Exam pretty much since its inception more than 50 years ago.) The computerdelivered Exam is administered by a company called Prometric and is available at their locations across the country. Essentially, there is at least one testing facility available in every city, and most large towns and suburbs. The examination is prepared and graded by the Patent Office.

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The Examination is "open book", in the sense that you can look up information in the MPEP (the Manual of Patent Examining Procedure) and the other miscellaneous documents specifically listed by the Office as testable. These are the source ... often quite literally ... of all questions on the Registration Exam. To pass the Examination, you must answer at least 70% correctly. The Examination is composed of 100 multiple-choice questions, but only 90 of those questions count. Thus, you must answer 63 of the 90 questions that count correctly. The remaining 10% are "beta test" questions that will not count for or against you; they are being administered by the Office only to get statistics on their performance for future use as "real" questions. You will not know which questions are merely "beta test" and which count, so it is best to assume that all questions count, but don't let yourself spend too much time on any one question (or you may well be wasting your time on a "beta test" question). There is no longer a right to an appeal. If you fail to reach the 70% mark, your only real option is to take the Exam again.

If you are uncomfortable taking the Exam on a computer, there is the option to take the Exam on paper. But that option is only available at or near the Patent Office in Alexandria, only available for a week or two in July (generally), must be signed up for by April of that year, and costs considerably more to take. For a variety of reasons that will become clear in the Review Course, we do not think this paper-based, "PTO-Administered Exam" (as it is called in the General Requirements Bulletin) is advisable, except for those who are adamant about not taking the Exam on a computer. There are in fact a few distinct advantages to taking the Exam in the computer-based format, and no real advantages to doing it on paper for the average taker. (Paper-based Examinees get a clean hardcopy of the MPEP to take into the Exam, rather than the electronic, searchable version that the computer-based takers get.) If you need more information on the Exam itself, don't hesitate to come to PLI' s Patent Bar Review Website (www.PatentOfficeExamCourse.com) to find our current briefing on the Exam. We always update that briefing whenever there are any important changes to the Exam. The overall pass rate has historically varied between 30% and 60%. In 2000, the pass rate was a dismal 37%, but otherwise has since hovered just above 50% pretty reliably. The Patent Office procedures are written down in three places: 1) the basic law of 35 U.S.C. (United States Code); 2) the Patent Office Rules embodied in 37 C.F.R. (Code of Federal Regulations); and, 3) the Manual of Patent Examining Procedure (MPEP). Of these three sources, the MPEP is the most important. All the important laws and rules are reproduced and expanded upon in the MPEP. Every patent attorney in the United States faced with a procedural question regarding an application turns to the MPEP. Almost every answer to every Exam question is in the MPEP. To walk into the Examination without an in-depth knowledge of the MPEP is to walk in unprepared.

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III. Your Preparation The way to pass this Examination is no different than any other exam. The Exam is "open book," in the sense that you have an MPEP and the other tested documents available to you. The key here is the same as to any open book Exam - organization and a balance between memorized information and information you look up. Most importantly, learn the MPEP. All the answers to the Exam questions can either be found directly in, or are clearly determined from, the MPEP. So your efforts should be primarily focused on obtaining full and complete familiarity with the MPEP. Don't kid yourself that this guide and our course, as good as they are, will allow you to avoid the intellectual labor required to pass the Exam. They will, however, enable you to reduce your preparation time to around 200 hours. Also, this study guide contains proven techniques, used by thousands of successful takers, that will maximize your chances of success. Some of you taking this Exam have considerable work experience with patents and assume that you can easily pass the Exam. Many such confident and likely competent test-takers sadly will not pass because the Exam focuses on issues and problems which come up only rarely in practice before the Patent Office. Conversely, many who pass the Exam on the first try do not even know what a patent is before beginning to prepare for the Exam. Starting from a position of total ignorance is obviously more difficult than starting with a knowledge base, but with this guide, it is in fact quite possible to pass starting from total ignorance.

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The effort you put into preparing for the Examination and the quality of the preparation are much more important in passing than the level of knowledge at the beginning of preparation. In short, what follows is not a treatise on patent law; it is a study guide based on what is tested on the Registration Examination. You do not need or want a treatise which will do nothing but fill your head with unnecessary information.

IV. A Successful Strategy for Passing the Examination The following ten-point strategy is entirely based upon common sense and timehonored test-taking techniques. If something below strikes you as stupid and pointless, then either you don't understand what we are trying to communicate, or it just doesn't fit into your way of taking tests. If it is the latter, then you shouldn't try to radically change what has been working for you in taking tests. In short, take what you believe useful and reject the rest once you're sure you understand what we're suggesting. In rejecting the rest, bear in mind that these approaches have worked for a lot of people over a long time, and those people are all now Registered Patent Attorneys and Agents.

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A. ORGANIZATION IS KEY TO SUCCESS (OR KNOW WHERE TO LOOK, BEFORE YOU LOOK) Anyone can achieve a perfect score on an open-book exam, if enough time is allotted. Thus, every designer of an open-book test tries to make sure that there are enough questions so that no one can possibly look up all the answers. The Registration Exam is no different. At the same time, an open-book exam designer tries to make sure there are not so many questions that there is no time to look up anything; otherwise, the open-book nature of the exam is a fraud. This is also true of the Registration Exam. The most important key to this Exam is time management. On this Exam, you must get at least 70% of the 90 questions that count correct in order to pass. On average, an Examinee who knows the answers to half the questions should be comfortably able, in the time allotted, to find the answers to enough of the remaining questions to pass, coupled with some intelligent guessing. This is the Exam strategy in a nutshell - learn enough to get at least 50-60% right off the top of your head (without any "look up"), and you will have enough time to look up answers to the others to get you over 70%. Add some intelligent guessing (using some of the tips you will learn in this course) and you have a reasonable margin of safety. This study guide contains the basic information you should commit to memory. Thus, the key to time management is knowing what you have to look up and where to find that information. This study guide will tell you in detail what it is you have to know "cold" and where to look up anything that you are likely going to have to look up.

B. THE SAME BASIC QUESTIONS AND ANSWERS APPEAR YEAR AFTER YEAR; SO KNOW THE ANSWERS TO PAST EXAM QUESTIONS. The Registration Exam has for the most part been predictable in not only the areas which will be tested and the number of questions from these areas, but the basic questions which are asked. This means that the primary thing you need to have a grasp of in your head is the old Exam questions and answers. We will take you through almost all of the past Exam questions that are still relevant to the Exam during this course. In addition, we have added new questions directed to subject matter not tested until recently. As the USPTO adds newly testable materials, we add corresponding supplemental materials, lectures, and questions to complete your preparation.

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C. PRACTICE TAKING AS MANY QUESTIONS AS YOU CAN UNDER REAL EXAM TIME CONDITIONS (I.E., 3 MINUTES PER QUESTION). Few people do their best the first time at anything, and certainly not at unfamiliar events where the consequences of failure are considerable. Most of us perform best when we are comfortable in our surroundings and are doing something that we know how to do and have done many times. Few, no matter how long or well they prepare, are going to be truly comfortable while taking a difficult, full-day exam. But having a rational feeling of control and confidence, as well as a little (not too much) anxiety, adds considerably to the chances of success. There is no better way to gain an intuitive understanding of the appropriate pace, the logic to the questions, and what the Patent Office expects, than to take simulated examinations for the allotted three-hour sessions, and carefully compare your answers to the correct answers. If Exam day is the first day you have practiced taking this Exam, exam day will be your practice for trying again next time.

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CREATE AND IMPLEMENT A PLAN TO BE AT YOUR BEST.

You will need every minute allotted to you for the Exam and you will need to be at your best for every minute. Thus, do whatever is necessary to make sure that you arrive at the test-taking room as relaxed as possible, in plenty of time, and that your journey there is as free from anxiety as possible.

E. SEEK THE BEST ANSWER, NOT THE "CORRECT" ANSWER. The multiple-choice answers are usually either a short phrase or a sentence. They cannot possibly cover every circumstance and they are amenable to different interpretations. The Office also has no professional question-writing staff. Therefore, your object is not the "correct" answer; your object is the best answer available of the five possibilities. There are no write-in votes. When you find that best answer, don't think about all the nuances and reasons why there could be a better answer. Select the best answer and move on. For many of the questions, you will be able, by the application of logic and a little bit of knowledge, to narrow the choices down to one or two. If either answer is more complete, then that is the one that the Patent Office considers "correct." The other, less-complete answer is WRONG, no matter how close it is. For example, the choice might be between one answer which says you do X, Y and Z and the other possibility is X, Y, Z and pay the required fee. If a fee is indeed required, then that is the only correct choice.

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Seeking the best answer also means reading all the answers. Picking answer number 3 without going on to look at numbers 4 and 5 will lose you points because 4 or 5 may be better answers. For long questions, always read the call of the question and the answers before you read the fact pattern, so you know what facts you are looking for.

F. ANSWER EVERY QUESTION AND GUESS INTELLIGENTLY. Only correct answers are counted. So failing to answer a question is the same as answering incorrectly. Thus, there is no penalty for guessing. Moreover, it is almost always possible, by eliminating the ridiculous and unlikely, to reduce the possible correct answers to two or three. Sometimes it is even possible to eliminate all but one choice. Thus, timing and pacing to make sure there is full and fair consideration given to each question and answer will add to your score. Approaching the multiple-choice questions with the Sherlock Holmes technique is an excellent method. Sherlock solved his mysteries by eliminating everything except the correct answer. Once you have eliminated all other possibilities, whatever remains, no matter how unlikely, must be correct. The set of answers always includes one, two, or three possibilities that are obviously wrong. Eliminate those obviously wrong answers first, and then eliminate all other likely wrong answers. If the answer which remains would have been the one you selected as correct anyway, then it's highly likely that the selected answer is the correct answer. Some people use the time before the Exam starts to write out a grid on their scratch paper: the numbers "1" -"50" down the left-hand side of the paper (for the question numbers) and "A," B," "C," "D," and "E" next to each number. Then, after you've read the body of the question and are considering each choice, you can cross out any choice you know to be clearly incorrect, circle any choice you think might be right, maybe draw a question mark near any choice you might have to look up, and maybe even make a note of what you want to look up. Whatever works for you. Even if you go ahead and guess on that question, when you have time to come back to it, you'll have a very quick reminder of which choices you were considering and what you might want to look up. You must learn some simple approaches to make sure that every question gets its due time, but no more. Otherwise, you may not finish, and if you don't finish, you won't pass.

G. LET THE TESTED DOCUMENTS BE YOUR GUIDE. The MPEP and the other testable documents have in them the answer to every question on the Exam, because the Exam questions were prepared from those documents. The key, therefore, is first having a minimum number of questions to look up, and then having sufficient familiarity with the documents to find those answers quickly. The testable documents should be a primary source of information in preparing for the Exam, though you will likely need this Study Guide first to make it make sense. RP-7

H. DON'T LET THE PATENT OFFICE TRIP YOU UP WITH TRICKY QUESTIONS. On every Exam, there are a number of questions that can be easily misunderstood, particularly by a test taker rushing to get through the Exam. These questions often have an obvious answer once the question is understood. For example, there will be questions that ask which of the answers is correct and which is false and among the answers can be "None of the above" and "All of the above." Read each question twice and make sure you are looking for correct or wrong answers. The Patent Office will occasionally offer answers which first state whether you can do something or whether a given situation exists and then coupling that with a reason. The reason may well be a correct fact, but one which just doesn't determine the result. For example, it often rains in the morning because hurricanes have winds in excess of 120 miles per hour. That is an incorrect answer, even though both clauses are independently true.

I. PREPARE FOR WHAT WILL BE ON THE EXAM. Most test takers think this is a test of patent law or patent prosecution. It is not. It is a test of certain areas of the MPEP and other tested documents, and whether you can apply those rules to hypothetical situations. Many of the questions are based upon situations which happen only every decade or so in the life of a busy practitioner. A lot of the questions have an aura of "Gosh, wouldn't it be fun to ask this?" You have enough to do preparing for what is on this Exam; you do not have time to prepare for what will not be on the Exam.

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DON'T PANIC.

All of us have had the experience sometime in our academic career of panicking during an exam. It is one of those experiences that may be good for you, but should not be repeated. The basic requirements for panic are present in the Registration Exam - a long preparation time, a career that is ardently desired in the balance, the certainty of encountering surprises in questions, and the certainty that you won't know and can't find the answer to some questions. The antidote to panic is in preparing for panic, thinking through in advance what you will encounter and getting comfortable with the idea. Practicing old Exams under as real conditions as you can create will help. You may even want to go to the extent of driving to your testing center and looking at the room so you can picture yourself cozy and comfortable on Exam day. Most importantly, condition yourself to deal with the impossible and unexpected. When you see that question from left field, say to yourself: "Ah, PLI was right again. Here is the first unexpected and likely impossible question. I am sticking to the game plan: making an educated guess and marking the question for RP-8

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later review if I have time. The fact I can't begin to answer this question will not affect whether I pass or not, unless I am drawn into wasting time that can be put to getting the easy ones."

K. AND DON'T CONFUSE THIS TEST WITH REAL LIFE. The patent profession is full of successful, rich practitioners who didn't pass the Exam the first time ... and in some cases, even the second time. If you truly want to be a registered agent or attorney you will become one. If you don't pass, the rational response is a serious consideration of whether being a patent agent or attorney is what you truly want to do. If it is, then the effort needs to be redoubled and the way you are preparing reexamined. If you decide you don't really care that much, then you will find success in some other way.

V. What You Don't Need to Know The Registration Exam, like all such tests, changes from year to year and evolves over time. Moreover, every Exam has at least one or two questions that are unpredictable. It certainly cannot be guaranteed that the Exam will not be expanded to include the following, but it is a pretty safe bet that it will not. 1. Fees -The Patent Office has almost never inquired into the specific amount of any fee, but questions requiring knowledge of what you can do in the Patent Office without paying a fee and what actions require a fee have been common. In particular, a question which requires knowing which Petitions to Make Special are free and which require a fee has been on almost every other Exam. 2. Biotechnology - The MPEP contains an entire chapter (Chapter 24) on the unique requirements for applications involving biotechnology. The Patent Office has asked questions which require you to know that biological material must be deposited, but never asked for knowledge beyond the superficial. 3. Technology - The Patent Office does not expect any particular technical knowledge, and therefore none of the questions will require you to have any particular scientific knowledge or know anything specific to electrical engineering, chemistry or any other technical specialty. 4. Law Applicable to Enforcing, Litigating and Licensing Patents - The Patent Office Exam is limited to what happens at the Patent Office. 5. Interferences and Post-Grant Challenges - Interferences (old, but still mentioned) and Post-Grant Challenges (new since the AIA) are important and complex areas of patent prosecution which logically should be fertile ground for questions. However, prior to 1997, the Patent Office never asked a question about the details of what happens after an interference is declared, and only one was asked in 1997, and very few since. The same is true for the myriad Post-Grant procedures put in place by the AIA. The likely questions will be directed to eligibility for such procedures by filing date of the patent. In the same way that no real interference questions have appeared since 1997, we expect similar treatment of the Post-Grant RP-9

materials. You'll have to know whether a given patent is eligible for PostGrant review, how such a procedure is initiated, and what the effect of the outcome is on the patent. And, although the AIA "eliminates" interferences in applications having filing dates on or after March 16, 2013, it remains available for patents filed before that date and is mentioned in many places in theMPEP. 6. Patent Examiner Responsibilities - The rules regarding how the examiners carry out their duties and how they are rated for those tasks have never been the subject of questions. 7. Foreign Patent Laws - Dealing with foreign patent systems to effect filings for U.S. clients is a major part of the job of a U.S. Agent or Attorney. No questions have ever been asked about how to file applications in foreign countries or the differences between U.S. law and foreign law, apart from questions on foreign filing licenses, which are common. It is important, though, to distinguish "foreign" from PCT (Patent Cooperation Treaty, Chapter 1800 of the MPEP and dealt with extensively in this course). PCT is tested, sometimes heavily, and should be an essential part of your preparation. 8. The Numbers Associated with Specific Rules or Statutes -The Patent Office has never asked, for example, the number of the rule which governs interviews. You should know and associate §101 with patentable subject matter, §102 with novelty, §103 with obviousness and §112 with disclosure. The Patent Office won1t try to fool you by quoting 1135 U.S.C. §111 11 when the correct statute is 35 U.S.C. §112. 9. Patent Term Extensions for Drug and Medical Devices - Patents on human and animal drug and medical devices can be extended for up to five years to compensate for time lost in administrative review, but apart from knowing this possibility, no questions have ever been asked about specific procedures for doing so. As of Tune 8, 1995, a patent which has been delayed in issuance because of an appeal to the Board or to a court, or because of an interference or secrecy order, can have up to five years added to its term. A general question on term extension because of Patent Office delay is a possibility. In addition, P.T.A. (Patent Term Adjustment) is now a routine part of practice, and applies to applications filed on or after May 29, 2000.

10. The Patent Office Classification System - Patents and applications are organized for searching and for assignment to examiners according to a complex system which is set forth in a separate manual. The classification system is also the basis of restriction requirements. This has never been tested. 11. The Rules for Preparing Patent Drawings - The PTO publishes a lengthy 11 Guide for the Preparation of Patent Drawings 11 that has numerous examples. Knowledge of the contents of this guide is not required.

VI. Source Books The exam is assembled from these sources - 1) the basic patent statute, 35 USC; 2) the Rules promulgated by the Patent Office which explain the laws, 37 CFR; and 3) RP-10

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the MPEP, which further explains and expands upon the Rules; and 4) any interim guidelines or other policy publications specifically listed as testable by the Office. 37 CFR and 35 USC are reproduced as appendices in the MPEP. The other publications are provided as supplementary materials (until they are folded into a future revision of the MPEP). 37 CFR, more commonly called 11 The Rules, 11 is divided into chapters. 90% of what you need is in Chapter 1. For example, Rule 1.131 (37 CFR 1.131) covers how to swear back of a prior art reference. Chapters 3 and 5 are short and cover Assignments and Secrecy, respectively. Chapter 11 governs the conduct of registered agents and attorney. Part 41 covers Appeals and Interferences. Part 42 covers practice before the Patent Trial and Appeal Board.

VII. The Patent Office Universal Principles Every institution has unwritten, universal rules which govern its behavior, and the Patent Office is no exception. Some of these generalizations define the relationship between the Patent Office and the examiners, others define how the institution evolves and protects itself politically. While all are fascinating, we are concerned only with generalizations which will help you organize your memorization and provide an edge for those inevitable questions where you don't have a clue otherwise. All these rules have exceptions, but they are almost always true, which means they should be applied to get to an answer you don't know and don't have time to look up.

A. THE RULE OF DIMINISHING RIGHTS A patent application is "born" when a set of papers sufficient to get a filing date is deposited at the Patent Office or sent to the Patent Office by permitted methods. An application ends its life when it dies (i.e., when it is abandoned expressly or by failure to respond), or when it moves to another plane of existence by virtue of its issuance as a patent. The Patent Office rules are structured so that the rights given the applicant and the registered agent or attorney decrease as time progresses. Thus, a Final Rejection limits the actions that an applicant can take in response. In some instances, papers which could have been filed earlier are simply forbidden, as in the case of a Final Rejection. In other instances, the papers can be filed upon payment of a fee.

B. THE CAPITALIST PATENT OFFICE Your Patent Office does almost nothing for nothing. Faced with choosing between an answer in which a fee is required and one in which no fee is required, and no time to look up the answer, the choice is obvious: take the one with the fee. Focus on memorizing the few actions you can take without a fee, which are detailed later in this study guide. The Patent Office also has a moral quality to its fees. Those actions you can take without payment of a fee are either those which are clearly in the public interest or which involve no error or fault on the part of the agent or applicant. But beware: this is not always the case. In addition, the amount of the fee RP-11

tends to be a function of the degree of fault. Thus, reviving an application as unintentionally abandoned carries a high fee; while, if it was a PTO mistake, there is NO fee.

C. RIGID RULE APPLICATION The Patent Office enforces the rules to the limit. A petition can be filed under Rule 1.183 to suspend the rules and allow justice to be done, but the Patent Office rarely grants such a petition and it is very unlikely that the answer to any question on your Exam will be to file a petition to suspend the Rules. And the Patent Office has no power to suspend the statutes.

D.FAILURE TO RESPOND RESULTS IN ABANDONMENT Many of your Exam questions will involve the Patent Office transmitting some paper requiring some act on your part. With very few exceptions (for example, a Notice of Omitted Items), failure to respond will result in abandonment.

VIII. Search Issues on the Electronic Exam Keep in mind that Patware tracks the actual Exam almost to the letter. BUT the search function on Patware may be slightly different, depending on which version of Adobe Acrobat you have installed on your computer. The main difference between Patware and the actual Exam is that the document reader closes on the actual Exam as you go from question to question. (On Patware, you can leave the electronic documents open.) Every time you re-open the MPEP on the Exam, it starts at the beginning. It does NOT return to where you last were. Also, you can have only one document open at a time on the Exam. If you open a second document, the first one closes. This won't be a substantive problem, since the questions are meant to test only one document (e.g., one MPEP chapter). But you need to know this so that you're not expecting to be able to return to a document without starting from scratch. These are the reasons we usually recommend that you give all 50 questions in each session your best guess, and then go back at the end of the session to look up the questions you marked for review. You do not want to slow yourself down during the Exam proper by opening and re-opening the documents time and time again. It may only take seconds each time, but those seconds add up faster than you might think. As with Patware, on the actual Exam, you can only search one document (e.g., one chapter of the MPEP) at a time. That should keep your search time down, but means that you have to at least know what chapter something is found in. If you don't, you can always search the MPEP's index. (You should absolutely leave this kind of question to the end ... if you have the spare time. Better to assume that this RP-12

0

type of question is a beta question before you scramble all over the MPEP looking for a clue.) But the advantage may be then that the index will tell you exactly which section you will have to go find in the correct chapter. As long as you know what chapter a question can be found in, it is sometimes a good idea just to quickly skim the index at the beginning of each chapter. This may indicate for you what the issues in the questions are, even if they had slipped your mind. If nothing else, this can be a quick way to find the section that answers the question most efficiently for you. You also may be able to search the chapter for a key word or phrase you find in the question. This can often be very helpful in the process of answering a question. Sometimes, you will find an example in the document that is an exact copy of the question. But be sure that you read the question thoroughly and carefully to make sure that it really does track the example exactly. In most cases, you'll maybe just find an example that is close to the question you have at hand. Mastering the search function is never enough to pass the Exam. At most, you'll find real help on a question or two using this method. You won't have time to look up every question, as stated before, and you'll rarely find anything that will answer the question without your first understanding the issues. Understanding the issues in a question is the first priority, and the only way to be sure of passing the Exam. Keep in mind that the search function also has limits as a tool. The search function employs a "string search" method. So, for any letters you type into the search box, it will show you all instances of where those letters appear in the document in that order. So, note, for example, that typing in "R.C.E." will not return any cases where "RCE" is spelled without the periods in between the abbreviations. But note also that if you search for "RCE" you will also get all words that have that letter combination ... including "Commerce". And since the Patent Office is an agency of the Department of Commerce, you can probably guess that "Commerce" shows up very often in these documents. In short, one of the reasons to do practice exams in Patware is to get familiar with the uses and disadvantages of the search function. The online Exam demo also has some additional helpful information on how the electronic documents work, at https://www.prometric.com/sites/default/files/USPTO/htmldemo/tutpg1.h tm. Another issue you should consider with a computer-based exam is taking notes. Normally, you can just take notes right on the exam paper ... e.g., noting which of two choices you're trying to decide between. You can't do that on the computer-based Exam interface, though, so you must get in the habit of making notes on your scratch paper, so that if/when you return to the question, you're not starting from scratch. You should probably also note any quick thoughts on where in the documents you think the answer will be found, if that occurs to you on your first pass at the question.

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Introduction and Instructions © PLI 2018

PLI Patent Office Exam Course Pre-Course Introduction and Instructions Dear PLI Patent Bar Review Registrant: The purpose of the Pre-Course is to provide a solid knowledge foundation on which to build the additional information contained in the Patent Bar Review Course. If you have been working as a patent examiner or have been prosecuting patent applications for more than two years, the Pre-Course will likely review subject matter with which you are already quite familiar. The extent to which the Pre-Course will be useful to those few of you is to complete definitions and to fill in any blanks in your knowledge base. For these candidates, it is recommended that you only review the Keyword Glossary (at the back of this book) and then proceed to the materials for the Patent Bar Review. For all others, please proceed.

Materials The Pre-Course includes almost two hours of Pre-Course lectures (found at the first tab of the online course), a file history (following in this book), and a Keyword Glossary. Use You can either choose to read the Keyword Glossary before beginning the Pre-Course, if you're not at all familiar with the jargon of patent prosecution. Or you can wait until you hit a term or phrase you're not familiar with, and look that up. Some of the information will not be fully understood at this point. However, it is a place to begin the familiarization process. The lectures are designed to be listened to as you flip through the file history. Aside from being a pre-course for the Patent Bar Review Course, this two-hour lecture is also entitled "Anatomy of a File Wrapper." The lecture and materials walk you through a complete prosecution of a patent application at the Patent Office. Each and every collection of papers and events is identified and discussed from initial filing to final rejection and issue.

The Nature of a Patent Let's start at the beginning. The U.S. Constitution provides: "Art. 1, Sec. 8. The Congress shall have power... To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." The "securing to inventors" is called a''patent," and the laws which establish patents are set forth in 35 United States Code (U.S.C.). The rules by which the Patent Office administers the laws can be found in 37 Code ofFederal Regulations (C.F.R.), and the interpretation of those rules are in the Manual of Patent Examining Procedures (M.P.E.P.). The M.P.E.P. contains all the laws and rules which are applicable to what happens in the Patent Office, and most everything you need to pass the Exam. A rationale for the existence of patents is to encourage innovation in the useful arts by requiring early and complete disclosure of an invention in return for a monopoly limited in time and scope. The body of knowledge of mankind is thus increased, and the limited monopoly provides a way for the recovery of the capital often necessary for

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Introduction and Instructions © PLI 2018

research and development, and the attraction of the capital necessary to bring a new invention to market. What then is a patent? A U.S. patent is basically the right to prevent others from making, using, selling, offering for sale or importing within the United States, its territories and possessions, what is covered by one or more claims of the patent for a limited period. The right to exclude has been broadened in recent years to extend to certain circumstances where products made according to a U.S. patent are imported into the United States, and to offers for sale. For a period of time -- After the patent expires, anyone is free to use the teachings which are set forth and claimed in the patent; at least they are free from this particular patent right being enforced. Until June 8, 1995, the term was 17 years from the issue date of the patent. .. not the filing date, but the issue date. Today, determining the term is far more complicated, and the following general rules apply:

1) Patents which expired before June 8, 1995, remain expired; 2) All patents which were in force on that date, or that will issue or have issued on an application which was filed before June 8, 1995, will automatically have a term that is the greater of 20 years from the earliest effective filing date, or 17 years from issue, whichever is greater; and 3) All patents which issue from applications filed on or after June 8, 1995, including continuations, CIPs and divisions will expire 20 years from the earliest effective U.S. filing date. For example, a patent which issued from an application filed on June 15, 1996 claiming priority from a U.S. parent application filed May 5, 1995, claiming foreign priority from a Belgian application filed May 7, 1994, will expire on May 5, 2015. "The right" -- A patent is not self-executing. It is not a crime to infringe a patent in the United States. Rather, infringement is a tort, like libel or negligence. It is up to the patent owner to decide when and ifhe, she, or it wants to enforce the patent, and to pay for the associated costs, including the ridiculous fees charged by a litigating attorney. The successful patent litigant is entitled to an injunction and to damages to compensate for the infringement. "To exclude" -- A patent does not give its owner the right to himself, herself or itself practice (do) what is described in the patent or the claims; it gives the owner the right to exclude others, and logically the system must be structured this way. Human invention is always built upon what others have done in the past. An inventor sees what is now being done and how to improve it. Ifby obtaining a patent on an improvement, an inventor could be free of any rights of an earlier patented invention on which he has made an improvement, and transfer those rights to others, then no patent would have much value. Thus, having a patent does not convey any right to use the invention since such usage may be subject to the broader claims of an earlier patent, or may be barred or controlled by other regulations and laws. A patent can be thought of as "a dog in the manger," able to stop others from eating but not necessarily able to feast itself. "Making, using, selling, offering for sale or importing" -- In order to infringe, one of these acts must be carried out. A person who sells or offers to sell something covered by the claims of a valid patent is an infringer; a company, which didn't buy the device but used it, whether to make money or not, is an infringer; a manufacturer is an infringer. On the other hand, someone who merely obtained a patent or published an article describing something falling within the scope of a patent is not an infringer, nor is one who buys rights to an invention, but doesn't use it. "Within the United States, its territories and possessions" -- An owner of a patent has the right to stop others within the United States, its territories and possessions from making, offering for sale, selling, using or importing what is described in one or more claims of the patent for a period of time. Thus, a U.S. patent prevents an infringer from making in Guam and selling in Germany; or making in Germany and selling in the Virgin Islands; or making and selling in Germany, but using in Puerto Rico. It does not prevent someone from making in Germany, and selling in Japan. The claims -- To infringe a patent, the infringing act must encompass each and every one of the limitations of at least one claim. More than one claim of a patent may be infringed, but at least one must be.

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Introduction and Instructions© PLI 2018

The process of obtainmg a patent begins with the preparation of a patent application. The application is divided into a specification, which describes the invention in sufficient detail so that a person of ordinary skill can make or use the invention; one or more claims, which defme the scope of the invention, and thus the scope of exclusivity which is being sought and, where the nature of the invention so requires, drawings. The description itself includes a discussion of the background of the invention, a summary of the invention, a brief description of the drawings, and a detailed description of the preferred embodiments of the invention. Logically, one claim ought to be enough for one invention. In fact, however, applications typically are filed and issued with many claims, sometimes more than a hundred. Since each claim sets forth a list of what must be present for that claim to be infringed, having a number of claims with different limitations expressed in different ways makes much more likely that competitors will fmd it difficult to take the invention. The application is then delivered to the Patent Office and in due course assigned to an examiner who handles that kind of technology. With some exceptions, applications are taken up for examination in the order received, so there is a waiting period of a few months until the examiner gets to the application. The examiner studies what was filed, particularly the claims, and carries out a search of prior patents and literature ("the prior art") to find similar ideas. He or she then prepares and mails an official action, which typically rejects some or all of the claims. The applicant's agent or attorney then responds in writing within the time limits established, arguing against the examiner, changing the claims, or both. These communications are what is called "prosecution." The examiner will then reconsider his/her view and issue a further action. If the applicant and examiner are unable to agree on mutually acceptable claims, then the applicant can appeal, first within the Patent Office to the Patent Trials and Appeals Board, and if that is unsuccessful, to the court which has overall responsibility for patent appeals, the Court of Appeals for the Federal Circuit (C.A.F.C.). If and when an agreement is reached between the patent attorney or agent and the examiner, the Patent Office sends a Notice of Allowance setting a three month period for the payment of an issue fee. After the fee is paid, the patent is published on some future Tuesday in the Official Gazette and the patent right to exclude springs into existence from that day.

Overview of the Patent Process The follovving overview will introduce the reader to various stages of the patent process. This introductory section will not explain each stage in detail but, instead, this section serves as an introduction to various terms and steps necessary to understand U.S. patent laws and procedure. The patent process consists of three stages: the inventive stage, the prosecution stage, and the postallowance/enforcement stage. The first event that occurs in the inventive stage is conception; the inventor(s) envisions a new and useful concept or idea. Conception is the mental step. The second step of the inventive process is "reduction to practice." An invention is not complete until it is reduced to practice. Anyone can envision a new and useful concept or idea, but patents are only granted to the individual(s) who create(s) or invent(s) the means to actually practice the new and useful idea. For example, one may envision an intermittent windshield wiper for automobiles, but it is the one who reduces the idea to practice who should be rewarded with a patent. Reduction to practice may be either actual or constructive. Actual reduction to practice occurs when the inventive entity actually builds the invention or performs the steps of the inventive process. Constructive reduction to practice occurs when a patent application is filed that describes the invention in such detail to enable one of "skill in the art" to make and use the invention.

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Introduction and Instructions © PLI 2018

Conception

Filing Date

Reduction to practice

The timeline above shows the steps of conception, reduction to practice and filing. Of course, constructive reduction to practice would occur on the same date as the filing date (ifthere was no actual reduction to practice before) because if the application is sufficiently descriptive to be a valid patent application, that also constitutes a constructive reduction to practice. The inventor must exercise "due diligence" between conception and reduction to practice. That is, the inventor must diligently act to reduce the invention to practice and file a patent application. Remember, patents were created to give an inventor incentive to disclose the inventive concept to the world. In exchange for the inventor's disclosure, the inventor is given a monopoly for a set period of time, which today is generally 20 years from the date of filing.

Note: As we will learn below, the patent application must describe the invention in sufficient detail to enable one of "skill in the art" (a skilled artisan) to make and use the invention. Under U.S. Patent Law, enablement is a necessary element of the patent application.

After the application is filed, the "Application Branch" of the U.S. Patent and Trademark Office ("USPTO") first reviews the application for completeness. The Office will issue a "Notice of Missing Parts" setting an extendable two-month period to respond if the application is filed without the requisite filing fee, Declaration of the inventors, or ifit is not filed in English. The Office will issue a "Notice of Omitted Items" setting an extendable two-month period to respond if the application is missing any pages or drawings. Once the application is "complete" according to the Application Branch of the USPTO, it is forwarded to a Patent Examiner for examination, in due course, on the merits. The application papers are reviewed by the examiner for adherence to the applicable patent laws (35 United States Code or "35 U.S.C. ") and the applicable patent rules (37 Code of Federal Regulations or "37 C.F.R."). The Manual of Patent Examining Procedures ("M.P.E.P.") provides written guidance and explanation of the patent laws and rules to the patent examiner and patent practitioners. The MPEP is the "bible" of patent practice. The examiner first reviews the application for potential restriction requirements. If more than one invention is claimed in a patent application, the examiner is permitted to restrict the applicant to one invention for the application. By statute and rule, an inventor may only receive a single patent covering a single invention. The government filing fee provides for the search and examination of a single invention. Therefore, if the applicant has attempted to claim and protect more than one independent and distinct invention in a single patent, the examiner is permitted to force the applicant to select ("elect") one invention for examination on the merits. In practical reality, the patent examiners must search every aspect of the claimed invention. It is not uncommon for a single patent application to describe and claim more than one invention and, often, an application will describe and claims dozens of distinct inventions. If an examiner can identify more than one invention in an application, it serves the examiner's interest to issue a "restriction requirement" to thereby reduce the necessary extent of the examiner's search of the prior art. When a proper written restriction is issued by the examiner, the applicant is given an extendable period of time to elect the particular invention for prosecution in this application. The non-elected invention cannot be pursued in that application, but these "non-elected" inventions may be pursued in one or more "divisional" applications. In effect,

4

Introduction and Instructions© PLI 2018

the examiner has forced the applicant to divide the application into two or more applications.

Elected Invention Conception

Reduction to practice

Filing Date

Restriction Election Divisional ►

The applicant may file the divisional application at any time during the pendency of the original ("parent") application. The same is true of all related applications (i.e., continuation, divisional, continuation-in-part, continued prosecution applications): there must exist co-pendency between the new application and the original parent application in order to obtain the benefit of the prior filing date. A related application is an application that is entitled to the invention date (filing date) of the parent application. For example, an original parent application may describe many different inventions and, if the applicant is forced to divide the application into a number of related divisional applications for these inventions, the applicant may use the original filing date for each of these related applications. Once the restriction issues are resolved, the examiner will begin the examination process based on the elected invention. The first substantive examination step for the examiner is the search. The examiner will conduct a comprehensive search of the prior art using every resource at his/her disposal. Of course, the examiner will only research the elected invention. Next, the examiner will issue a "First Official Action" on the merits, which sets forth each allowable aspect of the claimed invention and each deficiency of the application as defined by the patent laws and rules. By statute, the applicant is given six months to respond to the First Official Action. Nearly every Official Action sets a shortened three-month period for response with automatic extensions of time possible. These automatic extensions of time can NEVER extend the period for response beyond the maximum statutory six-month period for response. For example, a First Official Action mailed on January 15, 2018 will set a shortened period for response of April 15, 2018, and the applicant may elect to extend that period for response, but not beyond July 15, 2018.

Restriction

1st Action 1/15/2018

3rd mo. 4/15/2018

4th

5th

6th mo. 7/15/2018

The applicant must respond to each and every objection and rejection listed in the First Official Action, and such response must be filed on or before midnight of the last day of the period for response. For the example shown on the above timeline, a response filed before midnight of April 15, 2018 will require no extension of time, a response filed before midnight of May 15, 2018 will require a one-month extension of time, a response filed before midnight of June 15, 2018 will require a two-month extension of time, and a response filed before midnight of July 15, 2018 (the last deadline) will require a maximum three-month extension of time. Therefore, if the First Official Action includes an objection to any portion of the description and claims, the applicant's response must address that objection. If the First Official Action includes a rejection of any claim of the application, the applicant's response must address that rejection.

Remember: The Examiner's Official Action will address the adequacy of the specification, claims and drawings as specified by the patent laws (35 U.S.C.) and patent rules (37 C.F.R.). The applicant must respond to each and every objection and rejection. The clock set by the First Official Action runs against the applicant until a response to the First Official Action is

5

Introduction and Instructions © PLI 2018

filed. Once a response to the First Official Action is filed, the clock stops running against the applicant and the ball is in the examiner's court once again. The examiner will review and consider the response submitted by the applicant and, if each objection and rejection is resolved to the examiner's satisfaction, the examiner will allow the application. If each and every objection and rejection is not resolved, the examiner will issue a Second Official Action. Like the First Official Action, the Second Official Action is presumed to generate a six-month period for response, but likewise, the Second Official Action will likely set a shortened three-month period for response that can be extended by the applicant to the statutory maximum of six months. The second Official Action will be either a "Final" Action or a "Non-Final" Action. A non-final action has the same effect as a First Official Action. A Final Action, on the other hand, has special restrictive implications for the applicant. First, when responding to a fmal action, the applicant may NOT raise "new issues." New issues are defmed as any action requiring further search or examination by the examiner. Additionally, amendments after final rejection are entered as a matter ofright if, and only if, they (1) reduce the issues for appeal, or (2) adopt the examiner's suggestion(s) to resolve objections or rejections in the application. The examiner may properly issue a "Final Rejection" if the Examiner makes the same rejection for the second time, or if any new rejections are necessitated by an amendment by the applicant. Essentially, the applicant may avoid a fmal rejection only by persuading the Examiner to withdraw a rejection without amending the claims.

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Note: the Examiner must make the entire Action final. The Examiner cannot make the rejection of one claim final and the rejection of another claim non-final in the same Action.

37 C.F.R. 116 governs the issue of Amendments after Final Rejection. Amendments after Final Rejection cannot add new claims or make substantive change to the existing claims. Amendments after Final may combine dependent claims with independent claims or they may address issues under 35 U.S.C. 112. Thus, the applicant is substantially limited after the examiner issues a fmal rejection. After the examiner has issued a proper Final Rejection, only three events may occur in that application: (1) appeal, (2) allowance, or (3) abandonment. Only allowance or abandonment will stop the six-month period for response from running. The appeal process includes filing a notice of appeal and presenting arguments to the Patent Trials and Appeals Board. The filing of a Notice of Appeal does not stop or suspend the period for response set by the Final Action, and the filing of a Notice of Appeal does not preclude the applicant from submitting further arguments or amendments to the examiner. If the applicant persuades the examiner regarding every objection and rejection, the examiner will allow the application. If the applicant cannot persuade the examiner and does not wish to appeal to the Board, the application can be abandoned outright or the application can be abandoned in favor of a continuation application, divisional application, or a continuation-in-part application.

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Introduction and Instructions © PL! 2018

Note: In many cases, the applicant will fight for a broad set of claims in hopes of persuading the Examiner. After a final rejection is issued, the applicant must decide whether to continue arguing for the claims before the Examiner or, in the alternative, to present a new set of claims in a continuation or divisional application. Until one understands this concept, one cannot understand the nature and strategy involved in the patent process.

When a response filed in reply to a Final Rejection does not place the application in condition for allowance, the examiner will issue an "Advisory Action" advising the applicant that one or more of the objections/rejections has been maintained by the examiner. Significantly, the six-month time to respond to the Final Action continues to run against the applicant until the application is either allowed or abandoned. Therefore, every application receiving a proper final rejection will be allowed, abandoned or appealed on or before the end of the six-month period for response. When faced with a proper Final Rejection, the applicant may abandon the application in favor of a continuation application, thereby permitting the applicant to start over from the point of the final rejection in the parent application without the limitations associated with that final rejection. Essentially, a continuation is a mechanism to reopen patent prosecution with the knowledge gained during prosecution of the parent application. In the continuation application, the applicant may add new claims and new arguments without restriction. Of course, the applicant can never add "new matter," unless new matter is added in a continuation-in-part application which, by definition, includes new matter. Likewise, a continuation or division may be filed even when the examiner has allowed the parent application. In this instance, an applicant may wish to pursue claims directed to a different invention, broader claims or more narrow claims in a new application that claims benefit of the filing date of the parent application. Please note that an application must be (1) co-pending with its parent and (2) must have at least one inventor in common in order to be entitled to the filing date of the parent application.

7

Electronic Acknowledgement Receipt EFSID: Application Number:

8864151 12948898

International Application Number: Confirmation Number:

Title of Invention:

First Named Inventor/Applicant Name: Customer Number: Filer: Filer Authorized By:

4802

ANTIMICROBIAL CONTAINING FISH HOOK AND METHOD OF USING AND MANUFACTURING SAME

Samuel P Hopkins 36787 Blynn L. Shideler/Catherine Belled Blynn L. Shideler

Attorney Docket Number:

Hopkins-1001

Receipt Date:

18-NOV-2010

Filing Date: Time Stamp: Application Type:

11:41:46 Utility under 35 USC 111 (a)

Payment information: Submitted with Payment

I no

File Listing: Document Number

Document Description

File Name

1

Applicatlon Data Sheet

sb0014_fill.pdf

File Size(Bytes)/ Message Digest

Multi Part/.zip

Pages (If appl.)

no

4

1031594 tf93SSI076SI?LICATIONS AND PATENTS.-A disclosure shall not be prior art to a claimed invention under subsection (a)(2) i'f(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

0

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or ajoint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. (c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.-Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention; (2) the claimed invention was made. as a result of activities undertaken within the scope of the joint research agreement; and (3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. (d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.-F or purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application( I) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or (2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit ofan earlier filing date under section 120, 121, or 365(c), based upon Lor more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter. (March 16, 2013)

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A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as· set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a

AIA35 USC

whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

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35 U.S.C. 112 Specificatjon. (Sept. 16, 2012) (a) IN GENERAL-The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. (b) CONCLUSION.-The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. (c) FORM.-A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form. (d) REFERENCE IN DEPENDENT FORMS.-Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. (e) REFERENCE IN MULTIPLE DEPENDENT FORM.-A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shajJ,not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporateby reference all the limitations of the particular claim in relation to .which it is being considered.

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(f) ELEMENT IN CLAIM FOR A COMBINATION.-An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, materia~ or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Tax Exclusion (Leahy-Smith America Inve~ts Act): (a) IN GENERAL-For purposes of evaluating an invention under section 102 or 103 of title 35, United States Code, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.

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(b) DEFINIT{ON.-For purposes of this section, the term "tax liability" refers to any liability for a tax under any Fe~ral, State, or local law, or the law of any foreign jurisdiction, including any statute, rule, regulation, or ordinance that levies, imposes, or assesses such tax liability. (c) EXCLUSIONS._:__This section does not apply to that part of an invention that(!) is a method, apparatus, technology, computer program product, or system, that is used solely for preparing a tax or information return or other tax filing, including one that records, transmits, transfers, or organizes data related to such filing; or

(2) is a method, apparatus, technology, computer program product, or system used solely for financial management, to the extent that it is severable from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor. (d) RULE OF CONSTRUCTION.-Nothing in this section shall be construed to imply that other business methods are patentable or that other business method patents are valid. (e) EFFECTIVE DATE; APPLICABILITY.-This section shall take effect on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to any patent application that is pending on, or filed on or after, that date, and to any patent that is issued on or after that date.

Human Organism Exclusion (Leahy-Smith America Invents Act): (a) LIMITATION.-Notwithstanding any other provision oflaw, no patent may issue on a claim directed to or encompassing a human organism. (b) EFFECTIVE DATE.(!) IN GENERAL-Subsection (a) shall apply to any application for patent that is pending on, or filed on or after, the date of the enactment of this Act [Sept. 16, 2011].

(2) PRIOR APPLICATIONS.-Subsection (a) shall not affect the validity of any patent issued on an application to which paragraph (1) does not apply.

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Pre-AIA 35 U.S.C. 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless -

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(a) the.invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or (c) he has abandoned the invention, or (d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the fiyP.gof the application in the United States, or (e) the invention was desenbep. in - (1) an application for patent, published under section 122(b), by another filed in the United States b,e(ore the invention by the applicant for patent or (2) a patent granted on an application for patent .by anot1'et filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in sectien 351(a) shall have the effects for the purposes of this slipsection of an application filed in the United States only if the international application designated the' United States and was published under Article 2H2) of such treaty in the English language; or (f) he did not himself invent the subject matter sought to be patented, or (g)(l) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention •was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other

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[Ed. Note: This is a training aid the USPTO prepared for its examiners. It may be useful to you, as well, in helping remember AIA 102! - John White]

Exceptions 35 u.s.c. 1'02(a) '3$ U,tC. 1c,2(~) (Ba• for ReJeclon) (N9t for Re)eqlfon) = = = = = : =-iiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiioiiiiiiiiiii~iiiiiiiiiiiiiii=.iiiiiiiiiiioiiiiiiiiii.iii.iiiiiiiiiiiiii==--iiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiiii-= Prior Art

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102(a)(1) Disclosure with Prior Public Availability Date

(A) 102(a)(2) U.S. Patent, Published U.S. Patent Application, and Published PCT Application with Prior Filing Date

Disclosure Obtained from Inventor

102(b)(2)

(B)

Intervening Disclosure by Third Party

(C) . Commonly Owned Disclosure

First-Inventor-to-File Statutory Framework ___,___..~-~~___..

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