Question: 35 U.S.C. 322 covers petitions involved in post-grant reviews. 35 U.S.C. 322(a) provides that a petition filed under 35 U.S.C. 321 may be considered. List two reasons why a petition filed under 35 U.S.C. 321 may be considered. Answer:…
Waukeshia D. Jackson Waukeshia is a patent attorney and the co-founder and managing partner at Jackson & Lowe Law Group P.C. in Atlanta, Georgia. She has worked in the field of intellectual law for over 6 years at the time…
Question: In what two situations is the examiner not responsible for examining the sufficiency of the showing? Answer: The examiner is not responsible for examining the sufficiency of the showing except when: The application claim is subject to a rejection…
The time has come. After much mental preparation and perhaps procrastination, you’ve decided to hunker down with a pot of coffee and all the material you need for the patent bar exam. However, you find that no matter what you…
Question: A Certificate of correction may be used in order to correct an issued patent as long as the filing was made without deceptive intent in what situations? Answer: A Certificate of correction may be used in order to correct…
Question: List an advantage of filing a CPA compared to a continuation or divisional application. Answer: The following list includes advantages of filing a CPA compared to a continuation or divisional application: The papers required to be filed in the U.S.…
Question: List 2 times when a request for continuing examination may be proper. Answer: A request for continued examination may be proper when: An Office action is a final rejection. A Notice of Allowance has issued. An Office action under…
If you’ve failed the patent bar exam, USPTO statistics show that you’re not alone. Each year, more than half the people taking this exam don’t pass it. Although many review companies would like you to believe their particular review course makes…
Question: What may an applicant do in response to a rejection based on failure to claim patent-eligible subject matter? Answer: In response to a rejection based on failure to claim patent-eligible subject matter, applicant may: Amend the claim, e.g., to…
The sweaty brow. The shaky palms. Everything about an in-person interview for a dream job screams nervousness, but it doesn’t have to be that way if you come prepared. Knowing the basics of a job interview, especially for something as…
Question: When is a reference analogous art to the claimed invention? Answer: A reference is analogous art to the claimed invention if: The reference is from the same field of endeavor as the claimed invention (even if it addresses a…
Question: What must an appellant file if he or she wishes to reinstate an appeal after prosecution is reopened? Answer: If an appellant wishes to reinstate an appeal after prosecution is reopened, appellant must file a new notice of appeal…
You’re working on passing the patent bar exam now, but did you know there’s a lot you can do help help you find your first job even before you pass it? Networking takes time, so getting started now is the…
Question: An error in a recorded assignment document will be corrected by the Assignment Division provided a “corrective document” is submitted. What items must the “corrective document” include? Answer: The “corrective document” must include the following items: A copy of…
Question: What is one consequence that may result where the patent owner fails to make a timely appeal after the issuance of a Right of Appeal Notice, or where a timely patent owner’s appeal is subsequently dismissed? Answer: Where the…
Question: What is the order of arrangement for the specification? Answer: The following order of arrangement is preferable in framing the specification. (A) Title of the invention. (B) Cross-reference to related applications. (C) Statement regarding federally sponsored research or development.…
What is Test Anxiety? Unless you have nerves of steel, you’re probably going to feel at least some level of anxiety during any given test. It’s only natural. It’s especially common when the test you’re taking is the patent bar exam. The…
Question: Name 2 individuals who may grant written authority to status information in a non-published, pending or abandoned application. Answer: A non-published, pending or abandoned application containing written authority granting access to the requester allows the requester access to status…
You are a job seeker in the legal field. You’ve found a reputable patent law job that is hiring and you need to make the best cover letter and resume imaginable to get the job interview. However, good resumes can…
Question: List 2 requirements of the summary of abstract. Answer: The summary of abstract should preferably be between 50 and 150 words. It should contain the following: (A) Indication of field of invention. (B) Clear indication of the technical problem.…
Question: What does 35 U.S.C. 102(a)(2) provide? Answer: AIA 35 U.S.C. 102(a)(2) provides that a person is not entitled to a patent if the claimed invention was described in a patent issued under 35 U.S.C. 151, or in an application…
Studying plays a key role in the quality of your education and you want to create an environment that encourages the learning processes. According to CBS News, the way you learn when multi-tasking or sitting in a distracting environment differs from your…
Question: In addition to the list of all patents, publications, U.S. applications, or other information submitted for consideration by the Office, what else must each information disclosure statement include a legible copy of? Answer: In addition to the list of…
Question: What must a petition filed on or after September 16, 2012 be accompanied by to correct the inventorship in a patent? Answer: A petition filed on or after September 16, 2012 to correct the inventorship in a patent must…
Stress There is a single, substantial reason you should not wait until after law school to take the patent bar exam: stress. After law school, you will need to pass the regular bar exam. That alone will garner you a…
Question: List one way inter partes reexamination differs from ex parte reexamination. Answer: Inter partes reexamination differs from ex parte reexamination in matters of procedure, such as when the third party requester can participate, the types of Office actions and…
Question: List two computer functions recognized to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner. Answer: The courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they…
Question: Name two times when an applicant may want to consider an explicit petition for foreign filing licenses. Answer: Explicit petitions for foreign filing licenses may be considered by applicants when: the filing receipt license is not granted; the filing…
Question: Name two indicia that a continuing reissue application is being filed. Answer: Indicia that a continuing reissue application is being filed are: A reissue oath/declaration, which is not merely a copy of the parent’s reissue oath A specification and/or…
Question: For participation in the Global/IP5 PPH pilot program at the USPTO, does the applicant need to submit a petition fee under 37 C.F.R. 1.17(h). Answer: No, for participation in the Global/IP5 PPH pilot program at the USPTO, the applicant…
