If this download is burdened with extra carriage returns (ie double spaced), run it through my CLASVIEW.BAS to pull them out, or Email me and I will Email a short program that de-dubbles the file..
links to: MPEP/ 37CFR/ 35USC INDEX AND
CROSS-INDEX BASED ON QUESTIONS FROM OLD EXAMINATIONS.
(1991-1997) .
Simpler to use, no junk, combined, and more relevant than the "official"
indexes in the MPEP.
Plus other study tools.
TEST TAKING TIPS
PATENT BAR REVIEW COURSE
EXAMINATION FOR REGISTRATION TO PRACTICE BEFORE THE U.S. PATENT OFFICE
TEST TIPS
1995
February, 1997
June 2, 1997
June 21, 1997
July 25, 1997
Aug 24, 1997
Aug 7, 1998
Overview:
The US Patent Bar examination is open to people with an engineering or
certain other natural science degrees, essentially the same requirements
as state engineering EIT registration, which incidentally, is a
sufficient qualification by itself. Being an attorney does not count.
No actual engineering experience or showing of technical competence is
required. If it was, few attorneys would be eligible.
The examination is written in a manner significantly favoring young
attorneys. The style, the intensity, the type of questioning, the length
of the sittings, the need for a good memory, reading skill, certain test
grading rules, and not too much real-life experience or common sense, all
add difficulty to the older examinee, and even more to the person who
has been practicing engineering for a long time. Most of these can be
overcome by diligent study and a knowledge of the structure of the
examination, some of which is described herein.
Age, age related conditions, and personal handicaps making the examination
unreasonably difficult might be petitionable for relief, but may require
challenge through the Citizens' with disabilities acts to be recognized.
Some handicapping conditions like be pregnancy, diabetes, prostrate
problems, circulation problems, and the like all operate against sitting
for an intense 3 hour examination, and hence uniquely burden the applicant
contrary to the spirit if not the letter of the law. Secret --- The PTO
let it slip that they do make provisions for pregnancy. They have given
at least one preggie a few extra minutes. (personally, I would rather be
spotted a few points.)
DISCLAIMER:
These Tips were written over a period of years. Rules change. The 6th
edition (now on Rev 3) of the MPEP is changed considerably from the 5th
edition.
Among other things, Provisional Applications have come into the rules. There
are some unique (non-traditional, non-conforming to past practice) details
relating to Provisional Apps. In particular about the holiday rule does not
apply to Prov Apps expiration date. The PTO likes to test on new and obscure
points.
The indexes were prepared from the answer keys published by the PTO. Again
rules change and old answers might not be correct. Also, the PTO makes
mistakes.
Simply put ---- The indexes and tips have value, but as part of your study,
verify the current position.
TEST TIPS ---- MORNING SESSION
Nothing beats a good index except a photographic memory and lots of
studying. The indexes published in the MPEP are marginal, and divided
between the 35USC, 37CFR, and MPEP. The most valuable is the MPEP as the
MPEP usually cites both the CFR and USC. You will have time enough to look
up only abut 1/3 of the questions, and even then you should be familiar
enough with the documents to quickly separate the junk from the relevant
reference material by scanning familiar material. If you can borrow one,
use a portable computer with a good search engine and a copy of the MPEP in
RAM, on disk, or CDROM.
Check with the OED about whether computers are still allowed in the current
examination. I have seen them used in the morning session. They do not
seem to be allowed in the Afternoon session. Noisy keyboards and beeps are
NOT allowed. Besides, the afternoon test is closed book and requires that
you write your claim in the official "blue-book" supplied along with
scratch paper. The scratch paper is collected when you turn in your blue
book. -----> I HAVE CHECKED WITH THE PTO (1997) AND A WILMA TURNER
THERE SAYS NO COMPUTERS <-------"
Examinations for 1995 and earlier are based on the 5th Edition of the
MPEP. The 5th Edition has had 16 revisions and few older questions refer
to deleted or revised paragraphs. These are obvious when looked up.
The August 1996 examination is presumably based on the 6th Edition.
The 6th Edition has been revised considerably over the 5th edition
combining and moving paragraphs. It is not known if many significant
rules have been changed. PPA has been added. Most of the changes I am
familiar with are essentially editorial and for the better. However, the
information may be in different locations and much more exemplary
information has been included.
I have prepared a composite index of all three reference documents based
on the questions asked since 1991-1997. It is an index and DOES NOT
HAVE THE QUESTIONS OR THE ANSWERS, which are against the rules to take into
the test room anyway. It does reference all three sources using words,
phrases, and multiple-entry cross indexing forms more likely to come to
mind than the "official" wording of the MPEP indexes. My index is
available free to all practicing engineers and scientists taking the
examination for registration.
A companion index ranking subjects by their frequency of occurrence in
past tests is included. It MUST NOT be taken into the examination
since the questions are identified and might be construed as "questions"
and "answers", which are not to be taken in. Also, it has no practical
value as a test aid or index.
Also included are additional observations and analysis of old tests.
To Professor K's Bar Review Students:
Prof. K's lecture notes are superb and cover a very high percentage of the
bar questions. His course notes alone are almost enough to pass the test
if you can find your way through them. They are no-nonsense, succinct,
yet adequately detailed, especially if you added margin notes during his
lectures. BUT they are not (or were not) indexed. Making up a GOOD
index of them is an almost sure winner. I made up the index during the
lecture itself. It was a small distraction, but took up only a small
percentage of the time.
Better, Know the material, but prepare an index anyway so you can
quickly dig them out for verification. Many bar questions rely on
selecting the answer option having the correct long list of obscure
details. Prod K usually has the complete needed/not needed details.
The good Professor has an uncanny ability to anticipate test questions.
If he or one of his instructors said something is important, "it has been
a long time since this was asked", or some such emphasis,
----> PAY ATTENTION; KNOW THE MATERIAL THOROUGHLY!! <----
Write it down!!!!
It WILL be on the next Exam!.
I have found that one of the best ways to prepare your reference materials is:
A. Don't take too much stuff, You cannot use them anyway. If you do not
know your references thoroughly, they are useless because you cannot
find what you need quickly. The biggest common offender in this
matter is Prof Kayton's otherwise excellent 6 volume "Patent Practice"
B. I split the MPEP into 3 3-ring binders.
The first contains 100-1500,
The second 1600-end, 37cfr sections 2-10.
The third has 35USC, 37CFR, the INDEX to the
MPEP, and my Index97 and "study notes".
It is important to put the various indexes in one or more separate
binders even if they are the rivet-type file folders. This saves
flipping pages between the index and the text portions of the MPEP.
Especially useful if more than on index line has to be referred to.
My index is more usefulits own separate binder.
Most questions can be answered from either
my notes or MPEP 100-1500. However, in 1997, a very large percentage
of the questions were directly from MPEP 2100. Know this section!!
C. I have found that the CFR is the most concise universal reference, but
the MPEP is generally preferred for study because it reprints the
appropriate CFR reference and has expanded textural information and/or
examples. Use the CFR or MPEP, whichever you find most familiar.
Your study volume should be highlighted and annotated during your
study, especially the key words and whether a fee is or is not required.
The new stuff in Rev 6 is very well done, especially 2100, which repeats
or expands or re-catalogs much of what was in 700.
None of the MPEP indexes is complete or cross-indexed, and they are
separated.
More tips:
An evaluation of old tests has revealed several interesting foibles.
1. In earlier tests, if a question had an answer option of "all/none of the
above", the correct answer was most often the all/none choice. Recent
tests have not continued this pattern. Scan the other choices with
easy answers or answers you know. This may immediately eliminate or
hint toward the all/none choice.
2. The last 6 (through 1994) tests have had 27 questions on USC 102.
35USC 102 A, B, & E are represented approximately equally.
D is the answer only once.
None for C, F, or G. See file "byfreq96.txt"
1997 analysis of these points has not been done.
3. Watch for holidays, PTO likes to ask about period expiration dates
which end on weekends and holidays. Clue -- A day of week or common
holiday date is mentioned. Big ALSO -- An Express mailing on Sat,
Sunday, or Holiday in DC used to be given the NEXT working day as the
filing date. (How can a mailing be made on Sunday or a Holiday??
Easy, The Airmail Facility Post Office at many airports is open on
Sunday.)
A rule change (OG 1192, Nov 26, 1996) makes the filing on the date of
deposit without regard to Sat. Sun, Hol. The Rev 2 of the MPEP does
not have this change yet. Beware.
3a. Except for Provisional Applications --- Provisioal Apps
run for 1 CALENDAR year independently of the day when the year ends.
4. The first day of a safe period is safe. Period defining dates are
inclusive. ie. Nov 1, 1993 through Nov 1, 1994. (1 year + 1 day)
even though the statute may say "1 year". Terminal dates of periods
expire at midnight. Therefore, for example, if a 3 month period starts
on Aug 2, 3 months is Nov 2 and the drop-dead hour is
Midnight Nov 2 (immediately after 11:59:59 PM)
5. Watch for inventions made in Canada or Mexico. Nafta countries are
treated differently. Verify the current status of both NAFTA and GATT
modifications to the historical rule. Most of usc102 is NO NAFTA zone.
usc104 implies that for some purposes GATT is equivilant to NAFTA. If so,
this is a pervsion of the Constitution, Neither NAFTA or GATT are not
ratified treaties.
6. Make up a time schedule in 10 or 20 minute or 5 or 10 question
intervals. One is included in the index files.
Keep on schedule. You have an average of 3.6
minutes/question. You MUST answer all 50 questions.
You cannot pass if not all have been tried.
Use any extra time to review questionables.
Take care not to panic and not to doubt all your answer choices,
there is not enough time.
If you see yourself running out of time without finishing, mark where
you stop answering questions, put random pattern onto the unanswered
questions. You just may get some. In fact, you probably will get
more right than you would by using the last few seconds to answer the
present question.
Make sure you have time to complete the guesses.
Then go back and consider as many of the
guesses as you have time for. Perhaps a scan can answer one or more
obvious ones or eliminate obvious wrong choices.
If you have cause to petition or sue for leniency because of a
handicap, the marking of the last considered question may be crucial
to your argument.
7. Mark up the test booklet. Devise a set of consistent markings and
use them generously. Mark T/F questions T or F, strike out the
obvious incorrect answers, and for EVERY question, mark or circle the
correct answer.
If you are doubtful about which is the correct answer, mark
the question with a priority code for quick return and review.
The primary purpose of marking the selected answer in the test
booklet is if you should, as expected, get off mark in marking the
test answer sheet, you can quickly find and repair the error.
Review the test sheet position often to catch when you get out of
order before much damage is done and it is still quickly correctable.
DO NOT mix A, B, C, etc which are part of the question, ie USC 102
A, B, C, etc with answer options A, B, C, etc. This is an easy
mistake to make. Marking the book helps greatly.
8. Take a GOOD eraser, several #1 or #2 pencils, pencil sharpener,
reading glasses, Kleenex, clock, food, water, and a sweater or
shawl for cold air-conditioning drafts, comfortable clothes for
sitting, especially shoes and loose slacks. Too many books is
a burden, and there is no time to use any you are not totally
familiar with.
9. There is some question whether a computer is allowed. It is not
in the afternoon. (old format)
I have seen them in the morning session, but
have not seen any specific instructions in Admissions bulletins
for a long time. In any case, noisy keys are out.
Ask the PTO. Maybe the PTO website tells, www.uspto.gov.
The admission papers are posted there.
[ I CHECKED AND THEY ARE NOT ALLOWED in 1997 ]
10. If you wear glasses, wear the ones most comfortable for READING, not
driving, etc. Bifocals cause neck strain in intense reading
situations. A magnifying glass may be handy if your test copy has a
bad print on some feature.
11. Schedule time for a quick stretch. Then do them regularly.
12. Scout the territory. The day before the test, check out the test
site to prevent surprises. Find: Parking/bus stop, traffic,
testing room(s), restrooms, food, prices, power outlets for a battery
charger, lighting, etc. If you can, select a test room nearest to
the appropriate restroom. Someplaces pre-assign the rooms.
Consider taking your own lunch and eating it outdoors to rest your
eyes. In any of the examinations I have taken, the doors have been
locked during lunch break. You can leave your books in the test room
during lunch.
13. Get a good night's sleep for SEVERAL nights prior, and watch your
diet including vitamins, coffee, medication, etc.
14. Keep Clam. (a Seattle slogan)
TEST TIPS ---- AFTERNOON SESSION
---- THE FOLLOWING WAS PREPARED IN RECOGNITION OF THE CLAIMS DRAFTING
CONTENT OF THE AFTERNOON SESSION USED IN 1994, 1995, 1996. THE NEW
FORMAT MAY WELL CONTAIN MUCH OF THE SAME MATERIAL, BUT QUERIED
DIFFERENTLY. ---- Rev. July 21, 1997
The PTO licensing test, Afternoon Session, is replete with peculiarities,
idiosyncrasies, inconsistencies, and out-right violation standing of PTO
rules, and worse, the stated rules of the test.
The following has tips to avoid as many of these as can be identified.
These tips are distilled from the model answers, a response to a petition
for re-grade, and from the actual grading instructions used by the PTO
acquired with a FOIA request.
Don't forget --
Only 1 capital and only 1 period per claim. [-1 point]
Preamble wording = I claim:
1. An xxxxxx for yyyyy comprising: [-3 points]
The two 1995 examinations have required method claims.
1. A METHOD of preparing xxxxxx for yyyy, using zzzz, comprising:
(from PTO model answers)
The instructions usually require the steps to start with a
particular step. Often, that is an inadequate starting
point.
What to do? Recite the setup or other conditions in the
Preamble. Be sure to work in "the word method". [- 3 points]
Note that " ... , WHICH COMPRISES THE FOLLOWING STEPS:" was
used in at least one model answer.
Improper claim format. ie Jepson, or method when not instructed.
[-40 points <---- ]
Method step wording = Use the gerund (ing) form not the present,
future, other conjugations, or infinitive forms.
ie turnING on switches a,b, and c ---
catchING the tuna -----
Claim numbers are plain. ie 1. 2. Do not use "Claim 1" after
"I Claim:". [-2 points]
Markush wording = Selected from the group consisting of A & B. or
-- wherein M is A, or B, or C.
USE "CONSISTING OF", never use COMPRISING. [-2 points]
take care in the use of "OR" and "AND"
Multiple Dependent wording = The xxxx according to claims 1 OR 2 wherein
said zzzzz further comprises:
or An xxxx according to claims 1 OR 2:
always use OR, never use and. [-3 points]
Clam drafting questions or parts:
Read Instructions for each claim CAREFULLY THEN REMEMBER THE FOLLOWING:
Keep close track of "Objects", cite them all, even if old art.
Easy to lose points here. [-5 points each]
Watch for elements identified as "critical" or "important", These are
expected to be used in your claims, (usually the independent claim) even
if they are prior art. Do not put in any other features or elements.
[-3 points each for missing criticals, -2 each for unnecessary
elements or limitations]
Question (to PTO): "Applicant argues that a problem lies in that not
all of the elements listed in the OBJECTS OF THE INVENTION may be
considered novel, and that it is unclear as to what elements are to be
considered as necessary for inclusion in the claims.
PTO Reply: "The purpose of listing the elements in the OBJECTS OF THE
INVENTION is to stipulate what the inventor considered to be the invention
as a whole, which may indeed include some elements known in the prior art.
There is no requirement that EVERYTHING mentioned in the OBJECTS OF THE
INVENTION needs to be novel. As for the particular inclusion of elements
in the claims, these were clearly defined by the DIRECTIONS FOR THE
MECHANICAL OPTION in conjunction with the OBJECTS OF THE INVENTION and the
DESCRIPTION OF THE INVENTION. In particular, claim 1 required the
structure both stipulated in the OBJECTS OF THE INVENTION and referred to
as critical in the DESCRIPTION OF THE INVENTION, while the remaining
claims referred to the specific structure mentioned in the DESCRIPTION OF
THE INVENTION."
Question (to PTO): "Applicant questions why certain items which may be
in prior art are to be included in the claims, while other items which may
not constitute prior art are not to be recited the claims."
PTO Reply: "The basis on what structure is to be recited depends on what is
being required per the DIRECTIONS FOR THE MECHANICAL OPTION, irrespective
of whether some of the structure may be prior art. If structure considered
by the applicant as necessary is not called for in the DIRECTIONS, then is
should not be in the claims. Also, at no time is a claim to be drafted so
as to be completely readable on prior art. Thus, claims drafted in the
examination, as in reality, can be a mixture of old and novel structure."
Comment: This appears to be in direct contradiction to the instructions
which say "..., and which is not anticipated by the prior art" !!!
However, if the instruction sentence is diagramed and carefully analyzed,
it can be construed that the anticipation relates to the word CLAIM, which
is the PTO position, not a sub-part. REMEMBER THIS DISTINCTION. IT
APPEARS IN MOST OF THE RECENT TEST OPTIONS. (1993-1995)!!!
The correct answer still requires a portion of dumb luck to anticipate the
PTO. It appears overall, that leaving out a non-critical element, as
defined above, is less likely to lose points than including one.
Use EXACT WORDS including ADJECTIVES from test text. [-3 points]
DO NOT RENAME ELEMENTS [-2 POINTS EACH]
Failure to interrelate structure when asked to do so. [-3 points]
Failure to recite structure or purpose when asked to do so.
[-5 points]
If the claim declares an element is 4 parts, ie 4 holes, 3 legs, etc.
use the number, not "Plurality". [-10 points].
Follow directions closely (except in the wierdos) [- 2 points]
Spelling, grammar, capitalization. Watch for "the the" type errors left
over from eraser editing, and large "capital" first letters in words
from sloppy penmanship. -1 point each.
Two sentences in a claim [-3 points]
Misdescriptive and inferential claiming (describing an element rather
than calling it by name). [-2 points]
Element outside invention (when not needed by the "directions??").
[-4 points].
Using means plus function to describe a named element. USE THE NAME!
[-4 points]
Check your claim numbering. -2 points if misnumbered or missing.
Product by process:
No previous test (afternoon session) have required product by process
claims. However, only two have required method claims (in 3 of 6
options). There have been two morning session questions on product by
process.
Just in case, review Product by Process forms. Also MPEP 706.03 e and
805.05 e, f, & g. Also in Patent Practice by Irving Kayton, Chapter 10.
While an ordinary claim may contain a detail that is in fact a product by
process activity, it would be expected that a test question would require a
preamble distinctly identifying the claim as a product by process type.
Example: An article of manufacture prepared by a process comprising the
steps of: (derived from Kayton, 5th edition, 10-44)
Note the similarity to Method Claims.
Wierdos:
The PTO does not follow its own rules of practice and worse does not always
follow the rules set for the examination.
May 1995 test required a multiple dependent claim depending on two previous
claims, one of which, claim 2, did not relate directly to the multiple
dependent claim, thus, violating the test instructions to do the best for
the client. They want the "best" for the PTO. Obviously, these are trick
questions. (the multiple dependency on claim 2 claim as presented in the
model answers does not further limit anything within the claim 2.
Therefore such a multiple dependent claim would cost the client a multiple
claim fee for no purpose, which is not in the Client's best interest per
the instructions)
Features you might deem to be prior art must be claimed if the feature
is named in the "objects".
The test text may use wording that is inconsistent with, and even
describe an impossible-to-construct invention using the ordinary
definitions of common words. Too bad. The text and drawings rule. They
re-define the words.
Some of the points lost shown here are different when the offense is in the
independent claim than when it is in a dependent claim.
A Strategy:
The three options, mechanical, electrical, chemical are clearly prepared by
three different teams.
Choose your option. Despite 40 years as an Electronic Engineer and
developer of several products, I find the electrical option usually
incomprehensible. I choose the mechanical option as more straight
forward and understandable. In fact this is one of the problems faced by
experienced engineers during the Examination for Registration. We have
too much generalized real knowledge and common sense. The test is
designed by and for Attorneys without much practical engineering
experience even though being an engineer (but apparently not necessarily
a competent engineer) is the ONLY prerequisite. There are specific
faults for which points are deducted that are well within the regular
techniques and habits of practicing engineers. Slipping into Upper Case
letters is one of them.
1. Read the Directions first and watch for the elements mentioned to be
included in the answer claims. Highlight in several colors, mark
critical points so they can be found. Especially "Objects", and
elements identified as "critical", or "essential" (even if prior art).
Pencil in marginal notes and indexing marks.
2. Do a rough OUTLINE of the claims on scratch paper using the test
directions as a guide. (paper is supplied by the PTO). List the
objects, features, and points to be put into each claim. DO NOT attempt
to write the claims on the scratch paper for transcription to the blue
book. There simply is not enough time for copying.
3. Fill in the critical points. Especially the elements listed in the
"objects", as "critical", "it is important", "must have", etc.
4. It is better to have too much than too little. Although including
un-necessary limitations looses points, as does too little interrelation,
you lose more points by missing something the PTO insists should be
there.
Observations:
The examination would be difficult enough even if it was clearly and
unambiguously drawn. It is nearly impossible to pass without an
understanding of the foibles and idiosyncrasies of the PTO.
Actually, when the test is understood in the light of the need to keep
the specification compact for use as a test, it generally quite good.
Minor problems occur because of editing requirements and the PTO
occasionally makes a dumb mistake which they vigorously and stubbornly
defend.
The reply to a request for regrading re-stated the PTO position and
clearly misstated the actual content of the Instructions. Obviously,
the "secret" or "hidden", even if unintentional, PTO positions must be
anticipated (or followed by sheer luck).
The test looks like the same crew edits an existing patent into a
compacted version for the test, makes up the instructions, writes the
model answers, and finally makes up the grading key. Mistakes are made
in the edit and instructions that should be caught if a second crew tried
out the test. Also, there are style differences suggesting that the 3
options are made up by different teams. A simple patent search has
found the model patents.
Electrical Option:
If you should decide to tackle the electrical option, remember the
following and you should be able to do it:
1. Most electrical components have at least two terminals, and both
must be connected to something.
ie. an on-off switch having two terminals selectively connecting said
terminals thereby completing or opening an electrical path and;
a battery having two terminals, to one being connected to a common buss,
the other to one contact of said on-off switch ----
An electrical claim has THREE PARTS:
1 the elements and their functions,
2. their interconnections, including the power connections,
essentially a word description of the wiring diagram,
3. and the path(s) of the signals.
Example:
an antenna for receiving signals;
a receiver for selecting and demodulating signals having an RF input and
an audio output;
an audio amplifier having an input and output
a loudspeaker for converting electrical signals to sound,
where the antenna is connected to the input of the receiver which has its
output connected to the input of the audio amplifier which has its output
connected to the loudspeaker, whereby a signal captured by said antenna
is converted to audio signals by said receiver, and said audio signals
are amplified by said audio amplifier, and said amplified audio signals
are converted to sound by said loudspeaker.
Add power wiring; battery connected to the toe bone, etc. It is
intuitively obvious to all mechanics of ordinary skill that an electrical
circuit is closed and contains both outgoing and return paths, but not
to the PTO. Don't forget the ground returns which must ultimately go the
battery. Don't verbally daisy chain power or grounds the connections
are connected to the bus in parallel.. Daisy chaining probably would
lose points as unnecessary limitations.
----------
Evaluation of old afternoon tests which included parts having multiple-guess
questions illustrates the PTO has remarkable ingenuity in obfuscating
the correct answer. In one, the correct answer was a poorly worded claim
that probably would not get by an examiner.
The next best (but incorrect) answer choice was a
perfectly worded and complete method claim. It was wrong because the
preamble was not for a method claim. !!
Most of the old afternoon tests focused on claim drafting and/or amendment.
A few were for how to compose the accompanying remarks. There is the usual
series on usc 102a, b, and e rejections based on all kinds of combinations
of action sequences.
The wrong-choice answers for claim amending questions mostly are of a
very few catagories:
A. Claim numbering errors.
B. Words added/deleted without proper marking. Incomplete directives.
ie, missing uline, "quotes", [brackets], --dashes--.
C. (amended twice) faults of all conceivable combinations.
D. Mixed forms. There are three forms for claim amendment,
1. [] and underline,
2. cancel and submit newly re-written, and
3. the form suggested for amendment to the specification
ie, --added words-- with where to add "finder/identifier words" in quotes
or delete "words to delete" in quotes can be applied for
additions of 5 or fewer words.
Typically, a mixed form or improper form will be presented such
as "added words" in quotes and also underlined.
E. Misdirections " " as to where the change is to be placed.
F. Introduction of new matter.
H. Antecedents. Fix independent claim to provide. Identify whether
dependent claim has proper antecedents. Fix dependent claim
to not need the questionable antecedent.
I. Support for claim from specification. Similar questions as
presented for improper antecedents.
J. In reissue and reexamination cases, the range of amendment forms
is limited, and all changes are [] uline form, including claim
number. No directives to delete claim. use [ ] around whole
claim to delete or uline under whole claim to add, including
the claim number. cfr 1.121(f)
Reissues applications have a 2 year window
of opportunity for ENLARGING the scope of claims.
REMEMBER --
* USC102 a, g, e rely on the reference being before your U.S.
invention date. Invention other than filing date can be established
by affidavit of activity and/or usc119, usc120 documents.
There is no 1 year buffer in 102 a, g, e. The date is the date...!
102(e) reference patents can issue BEFORE or AFTER your invention date.
* USC102 b, d rely on the U.S. filing date, which is fixed and
swearing back does not work. Effective filing date is established
by USC120, when applicable.
There is a 1 year buffer prior to your filing date for b & d.
* Understanding these is crucial in selecting the right answer
for many questions on both morning and new afternoon sessions.
Old afternoon questions on reissues have appeared. Reissues have their own
rules. Claim amendment is slightly different. See 714.22, 1400, c1.121
and my notes at *20*
Re-examination (see c1.121(f)) seems to be ignored, but has characteristics
similar to reissue. MPEP 2200++ for reexaminations
This is just as important for the morning session as it is for the afternoon
sessions, as 102 questions, can appear on both.
Historically, many correct answers in morning and afternoon have depended
upon whether a fee is or is not applied to the action. Suggest you download
and mark up a fee schedule for quick reference. Not for the $ amount, but
whether a fee is charged or not. Also highlight the MPEP as you come across
"fee" in your study. Fee schedule can be obtained from the PTO website.
A condensed and annotated schedule is on this website.
The "right" answer is often dependent on whether a fee is due or not.
There has always been questions on whether a deposit account can or cannot
be used to pay certain fees.
The PTO has instituted an internal mailing box system and may be asking about
proper boxes for communications. Box index is on the PTO site, and again
a condensed version is on this website.
^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^^
PJ of the OED sent a letter to all August 1997 examinees
explaining the format of the new afternoon session.
She said the afternoon session will consist of:
Section I; 15 true/false questions 1 point each 15 total
Section II; 29 multiple choices 2 points each 58 total
Section III; four options, do 3
each option consists of a fact pattern with 3 multiple choice
questions 3 points each, 27 total
=====
100
Open book!!!!
The PTO has always shown a lot of ingeniuity in devising different kinds
of questions and sneaky distictions between the correct and incorrect
choices.
Below are my best guesses on the subjects that may be included and a
report of one 1997 examinee's conversation with the OED.
1. usc 102 rejections. How to argue against or get around.
1a. usc 102 bars Which 102, a,b,c,d,e,f,or g applies.
2. usc 103 objections. How to argue against or get around.
2a. Appeals to the Appeal Board, Petitions to the commissioner,
requests to the examiner.
3. Amendments to CLAIMS. forms, method, proper and improper response,
antecedents [ deletes ] underline adds.
3a. Other forms for amending claims.
4. Amendments to specifications. forms, methods, new matter
5. Time to respond, extensions, abandonment
6. Fees due/not due and formal requirements
7. Amendment and actions after final rejection
8. Amendment and actions after notice of allowance.
9. possibly some appeal stuff, although this is outside the announced
content. Don't trust the OED to keep their word on anything.
10 PCT stuff used to be in the afternoon session. Morning has had it
more recently.
11. Continuations, divisions, CIP, File-Wrapper, (rules 60, 61),
restriction requirements.
12. Identification of true inventors (note, these are the inventors of
the CLAIMED invention, as contrasted to the inventors of the DISCLOSURES),
and ONLY the true inventors, must be listed as the inventors at issue. It costs a fee to add or drop an inventor.
Almost anything important can occur related to an Office Action and be
within the scope of the announcement.
I doubt that there will be anything on ethics, deposit accounts,
application filing requirements, Express mail, or appeal to the courts.
It is an agent exam (so says the title of the exam) , and agents cannot
take their clients into the court system... They can be expert
witnesses and advisors to the attorneys, who do not have to be patent
attorneys. What a messed up legal system we have developed!!
======
> 1997 correspondence:
>In the course of talking to PTO, got the following info.
>
>1. The T/F questions are on claim writing, amending, form, etc.
>
>2. The 4 options are specific areas like Electrical, Mechanical,
>Chemical, The 4th is probably Electro-Mech combined but could be 2 of one
>kind, unlikely 2 chem. So looks like long fact pattern, 3 questions.
>
>3. The M/C are probably the responses to claims and claim content.
>
>Cheers.
>===========
>Thanks for the info.
>That is similar, but more detailed than what PJ said in her letter to all
> of us.
> B.
___________________
-------------------
After you take the test, I would like to hear of your feelings about it
and other stuff. Especially if you are a career-changing engineer, and
most particularly if you are over 50, but attorneys and law students are
welcome to comment.
Email bross@seanet.com, Seattle
----- good luck -----
end
file: TESTIPS.DOC August 1995: Minor Rev February 1997. June 2,
1997, June 21, 1997, July 21, 1997 , Aug 7, 1998
===============================================================
===============================================================
LEARN THIS STUFF THEN TAKE THESE NOTES INTO THE TEST
ESPECIALLY THE WORK FORMS
NOTES ON USC 102 AND OTHER STUFF: FILE: USC102.DOC
Old tests (afternoon and morning) had USC102 questions. They seem to
have been the most popular subject on all tests.
USC 102 IS INVOLVED IN FINDINGS OF NOVELTY, WHICH MEANS SAME INVENTION
HAS BEEN PATENTED, DESCRIBED, OR ON SALE BEFORE YOUR INVENTION WAS MADE.
QUESTIONS OF OBVIOUSNESS USUALLY ARE RELEGATED TO USC 103, BUT THERE IS
ALWAYS A GREY AREA OF OPINION OF WHETHER A PUBLICATION IS OF THE SAME
INVENTION. THESE MAY BE REBUTTABLE IN AN APPLICATION, BUT FOR THE
AGENT'S EXAMINATION, IT MUST BE ASSUMED THAT THE FACTS REFER TO USC102.
In this discussion, the patent under examination will be referred to as
"your patent (or application)" as it would be in an application you are
prosecuting. Obviously, the question usually names someone else, but
again, for simplicity and uniformity, it is personalized here.
USC 119, foreign priority has no effect on USC 102.
USC 120, domestic priority (continuations, divisions, etc) do count.
NAFTA and WTO do not affect USC 102 when it says "United States", but
does when 102 says "this country", (meaning NAFTA Country). These are
parts where priority has to be established. See 706.02.
Conception and diligence to Actual Reduction to Practice can move your
invention date back to conception for determining who is first to invent.
CFR 1.131, USC 102 G
In the absence of other data, Reduction to practice is assumed to be the
U.S. filing date.
There are several sequences of activity of relevance between your patent
and the reference. The sequence slightly affects the selection of the
correct answer.
1. Filing date is Reduction to Practice (CRtoP).
2. Actual Reduction to Practice (ARtoP) is LESS than one year before
filing.
3. Actual Reduction to Practice (ARtoP) is MORE than one year before
filing.
When filing Reduction to Practice, sequence 1 and 2 combine making 102 A
and 102 B identical for many references.
Sequences 1 and 2 make the 1 year grace period in 102 B moot as all
applicable references fall under 102 A.
PTO assumes that the invention date in the U.S. (or NAFTA) is the filing
date (Constructive Reduction to Practice, CRtoP).
Actual Reduction to Practice (ARtoP) can be asserted by filing an
affidavit of facts known as Swearing Behind.
In some cases, the invention date can be moved back to the date of
conception when diligence shown between conception and ARtoP. This is to
claim "First to Invent". 37cfr 1.131 affidavits, USC 102 G.
For some older USC 102 questions (from Kayton, volume 7) the correct(?)
answer is only by ignoring ARtoP clearly stated in the question. It is
not certain whether this continues in the later questions.
-------------------------------
USC 102 STUDY.
NAFTA --- A file search of the MPEP, USC, and CFR shows that the word
NAFTA occurs in the following places:
MPEP 6th Ed. Rev 2.
1. 35USC 104 Some of these may be simply where USC104
2. 37CFR 1.131 or the CFR are merely re-printed.
3. 1.601
4. 1.616
5. 1.622
6. 1.624
7. 1.628
9. MPEP 706.02 (c) Study section 706.02 !!!
10. 715.07 (c)
11. 2131.05 Study Section 2100 !!!
12. 2138.02
The WTO has special significance also in most cases where NAFTA counts.
USC 102 was not re-worded to accommodate NAFTA, U.S. MEANS the United
States Only, but "this country" includes NAFTA countries.
// Verify whether Provisional Apps affect USC 102 a-g //
WHEN USC 102 IS WRITTEN OUT IN BOOLEAN FORM, IT IS A SERIES OF "OR"
STATEMENTS EACH BEING A SERIES OF "OR"'S NEXT TO AN "AND" except for
102 E, which has 3 and terms..
PATENT MAY BE GRANTED UNLESS : 35USC102 A or B or C or D or E or G
or F.
A = The invention was (PUBLICLY KNOWN or USED) and (BY OTHERS) and
(IN THIS COUNTRY) or (PATENTED or DESCRIBED IN A PRINTED
PUBLICATION) and (ANYWHERE) and (BEFORE THE INVENTION THEREOF BY THE
APPLICANT FOR PATENT) [102A IS A NAFTA - FREE ZONE, NO NAFTA
PRIVILEGE MPEP 706.02 (c)]
B = The invention was (PATENTED or DESCRIBED IN A PRINTED PUBLICATION)
and (ANYWHERE) or (IN PUBLIC USE or ON SALE) and (IN THIS
COUNTRY) and (MORE THAN 1 YEAR PRIOR TO THE DATE OF APPLICATION FOR
PATENT IN THE U.S.) [102B IS A NAFTA - FREE ZONE, NO NAFTA
PRIVILEGE MPEP 706.02 (c)]
C = INVENTION HAS BEEN ABANDONED.
D = The invention was (PATENTED or INVENTOR'S CERTIFICATE) and
(FOREIGN COUNTRY) and (YOUR FOREIGN APP > 1 YEAR BEFORE YOUR U.S.
APPLICATION)
E = The invention was (DESCRIBED IN A PATENT GRANTED ON A U.S. PATENT
APPLICATION) and (BY ANOTHER) and (BEFORE YOUR INVENTION)
F = APPLICANT IS NOT THE INVENTOR.
G = (BEFORE YOUR INVENTION) and (IN THIS COUNTRY) and (BY ANOTHER)
and (WHO HAS NOT SUPPRESSED, ETC.)
Take this set of equations and the screener (below) into the examination.
USC 102 A, B, D, E, and G are the tricky ones and are the subject of this
discussion. F and C refer to the act of invention. As used in the
test, answer F is always coupled with fraud, ie false statements,
plagiarism, idea stealing, etc. G is obvious. The other bars are
"gotchas" not coupled with intent to slip one by.
The following can be used as a quick screen especially to filter out some of
the several answer choices:
SCREEN:
Reference is:
YOUR PATENT ------ A, B, D D = FOREIGN PATENT
U.S. PATENT ------ A, B, E A, E = OTHER'S U.S. PATENT
FOREIGN PATENT ------ A, B, D D = YOUR FOREIGN PATENT
YOUR PUBLICATIONS ------ A, B A = only for foreign
invention B4 UR U.S.
reduction to practice.
OTHER'S PUBLICATIONS ------ A, B
USED OR KNOWN IN THE U.S. ------ A, B A, B = U.S.
ON SALE IN U.S. ------ B B = U.S.
ANOTHER'S U.S. INVENTION ------ G Catch-all clause.
INVENTION, NOT A PATENT
cuz it then
would be USC102 A.
CONCEPTION DATE AND
DILIGENCE COUNTS BOTH WAYS.
YOU, THE APPLICANT, ARE NOT THE INVENTOR ---- F
YOU HAVE ABANDONED YOUR INVENTION
AT SOME TIME. ------ C Not same as abandoning
an application.
A and B are NO NAFTA!. 706.02(c)
-----------------------------------
HOT TIPS and DIRTY TRICKS::
1. USC 102 A, E, and G are measured against your invention date in the
U.S.. By definition, therefore, for a U.S. invention, YOUR publications,
patents, and uses cannot be BEFORE your U.S. invention and therefore cannot
create a 102 A, E, G bar. They CAN create a 102 B bar. !! Your FOREIGN
inventions CAN be published, or used BEFORE your U.S. invention date,
creating a bar.
2. Each bar, except E, requires the reference to be before either your
invention or filing date.
3. If the REFERENCE patent is ISSUED AFTER your filing date (or invention
date), the answer is most likely 102 E or NO BAR.
4. DO NOT CONFUSE 102 A,B,C ETC WITH ANSWER A,B,C. MARK OR CIRCLE THE
ANSWER IN YOUR TEST BOOK, THEN TRANSFER TO ANSWER SHEET. CHECK YOUR
MARKING BEFORE MOVING TO NEXT QUESTION. !!!!!! EASY EEERROARR TO MAKE.
ARGH! If you do make a mistake transcribing, maybee(??) you can argue for
re-grading if the book is marked. Very Important and VITAL TO MARK THE
TEST BOOK. If you get out of step on the answer sheet, you can check and
remark without having to re-answer the questions.
5. The last 7 examinations (to 1996) have had 38 questions on USC 102 .
A 11 times,
B 10 times,
C 0 times,
D 2 times,
E 13 times,
F 1 time,
G 1 time.
F and G on recent exams.
6. If the question names a day, either a day of week or a holiday, PAY
ATTENTION! It probably modifies the answer in an important way by the Sat,
Sun, Holiday rule. One big nasty is to have a holiday on a weekend which
moves it effectively to the next workday, usually TUESDAY. This can move an
effective date several days.
6a Tricky, Express mailing on a Sat, Sun, holiday, is now filed on
the day mailed. Note the MPEP (rev 2) does not reflect this change in
the rules yet. Also, it is OK to use the special express mail drop
boxes found at various street locations. The PTO recommends against
their use as there is no official Post Office paper work which is needed
if something goes wrong like the PTO loses the papers.
7. First day of safe year period is safe. One year is Nov 1, 1993 --->
Nov 1, 1994, inclusive. So is last day up until midnight.
8. Apparently disclosure of invention to U.S. Agent for patenting brings
it into the U.S. (as ARtoP or CRtoP?) on the date of disclosure.
9. Occasionally a date sequence or action is suggested that is un-
realistic, but technically correct and is likely to be the right answer.
10. More often than not, "NONE of the above, or ALL of the above is the
correct answer when either is presented. Best uneducated guess. For
these type questions, scan the choices for those with easy answers,
preferably answers you know. If one of them contradicts the ALL/NONE
choice you may have the answer in hand, but at least have eliminated the
ALL/NONE choice.
11. A U.S. Patent can be used as a secondary reference even if the patent
date is AFTER your U.S. FILING. (Under USC 102 E)
12. When there seems to be an unclear choice between an ARtoP and
CRtoP (filing date) choose the filing date. This seems to be the
pattern of "most" correct answers. Might be arguable later.
13. Sale of RIGHTS is not sale of PRODUCT, ie on-sale, Rights is a
private matter and directed at continued development. NO-BAR.
14. USC 103. "OBVIOUS MODIFICATION" (USC 103) is not synonymous with
"ANTICIPATORY" (USC 102)
15. "PRIMA FACIAL OBVIOUS" IS --
16. USC 112, 21 times. Summary and Key Words/points:
Specification:
Written Description of - the INVENTION
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
BEST MODE contemplated by the INVENTOR at time of filing.
Also need to prove utility (an illegal invention has no
utility. It cannot be used.) Usually obvious as part of
how to use, but may require a specific statement of utility.
Claims:
One or more CLAIMS distinctly claiming the subject matter which
the APPLICANT regards as his (the?) invention. (editorial note)
An ELEMENT IN A CLAIM for a combination may be expressed as a
MEANS or STEP for performing the specified function without
recital of STRUCTURE, MATERIAL, 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. (ed note: drawings, incorporated
references)
A dependent claim is construed to incorporate by reference all
the limitations of the claim upon which it depends.
Multiply dependent claims to be in the alternative only (or) for
claims previously set forth.
See MPEP USC112 for detailed description of dependent and
multiple dependent claims.
17. If FEE is mentioned, be sure that a fee is required!!. If FEE is not
mentioned, be sure that a fee is NOT REQUIRED. Typical trick of PTO is
to omit or erroneously include some obscure point, usually fee, oath, or
inventor's signature from the lists of items as answer choices.
18. Mark up your test booklet. Circle or mark key verbs and adjectives.
Mark the answer choices at T/F/?/Maybe. Saves having to re-visit
already decided stuff. VERRY important if you get lost and have to go
back and remark your test sheet. Also helps in going back over doubtful
answers if you have some left-over time.
========================================================================
TRICKS THAT HAVE APPEARED IN QUESTIONS:
these are not answers to questions, but general observations.
On entitled to filing date no earlier than rcvd by PTO
II. FedX is not Xpress Mail
III. Listing of what was sent as application does not mention
OATH therefore, new matter can be entered as a prelim
amendment until the Oath is filed.
Oath not needed to get a filing date .
look for publication date after reduction to practice
Watch for omission of mention of an oath having been
filed. filing ok for date, but not processing without oath.
Questions on appeals may require very obscure logic to select the right
answer. see 1.196 and mpep 1213.02 alternate (incorrect) choices
look reasonable. The correct choice may be unreasonable, but legal.
Questions involving dependent claims may have the correct answer
that does not completely satisfies the conditions of the question if it
is the best choice or the only one permitted (by rules).
Be careful to distinguish between petitions to COMMISSIONER and
requests (petitions?) to EXAMINER.
When Q refers to USC 112, it seems to mean USC 112 only. Not including
additional rqmts such as NO NEW MATTER.
Watch for claim amendment questions where the choices presented are
not accurate true copies of claim being amended.
Take care to verify that all add/delete markings are in place and
correctly placed against the proper phrases.
Incorrect answers may be incorrect because a "TYPO" was intentionally
inserted.
Correct answer may be a useless claim as long as it is correctly formatted
and legal.
Watch for tricky wording where SAID is used incorrectly. Usually without
proper antecedent.
REEXAMINATION is not an "application" thus 1.136 does not apply (2265)
Also bcz no application, there is no "applicant".
-- file USC102.DOC --
------------------------------------------
PRIORITY DATE WORK SHEET:
ARtoP = Actual Reduction to practice. ie the hardware works.
CRtoP = Constructive reduction to practice. Paper invention. Note:
filing an enabling US Patent Application or Provisional Application
(or an enabling disclosure document?) is
an act defined as Constructive Reduction to Practice.
Your APP IN CONCEPT. IN ARtoP IN FILED IN
THE U.S. THE U.S. THE U.S. THE U.S.
<---------------<-- 12 mo -->
. .
---------------------|------------.-------|-------.------------|--------------->
| . | . |
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) | . | . |
REF | . | . |
---------------------|------------.-------|-------.------------|----------------
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) | . | . |
REF | . | . |
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) | . | . |
REF | . | . |
---------------------|------------.-------|-------.------------|----------------
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) | . | . |
REF | . | . |
---------------------|------------.-------|-------.------------|----------------
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REF | . | . |
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REF | . | . |
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REF | . | . |
---------------------|------------.-------|-------.------------|----------------
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REF | . | . |
---------------------|------------.-------|-------.------------|----------------
---------------------------------------------------------
PRIORITY DATE WORK SHEET . ALTERNATE FORM:
PEG <--- PRINTER CONTROL CODES, EPSON STANDARD ^[ and <- = ESCAPE CODE (27decimal, 1Bhex)
small print to fit on one line.
|<------------ ------------->|<---------- ------------>|<------------ ------------->|
J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J
APPL_____________________|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|
|<------- ------------->|<---------- ------------>|<------------ ------------->|
J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J
REF______________________|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|
|<------------ ------------->|<---------- ------------>|<------------ ------------->|
J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J
REF______________________|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|
|<------------ ------------->|<---------- ------------->|<------------ ------------->|
J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J
REF______________________|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|
|<------------ ------------->|<---------- ------------->|<------------ ------------->|
J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J
REF______________________|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|
|<------------ ------------->|<---------- ------------->|<------------ ------------->|
J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J
REF______________________|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|
|<------------ ------------->|<---------- ------------->|<------------ ------------->|
J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J
REF______________________|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|
|<------------ ------------->|<---------- ------------->|<------------ ------------->|
J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J
REF______________________|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|
|<------------ ------------->|<---------- ------------->|<------------ ------------->|
J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J
REF______________________|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|
|<------------ ------------->|<---------- ------------->|<------------ ------------->|
J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J F M A MY JN JY AU S O N D J
REF______________________|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|--|
file: USC102TL.DOC
Go to the home page.
for links to the other patent, inventor, and business topics.
Email your comment or request to :bross@seanet.com
Return to Home Page for more interesting patent and inventor stuff.
You are my
visitor. . . Many Thanks.
Last Revision Aug 7, 1998
-------------- key words ---------------
key words: Patent bar examination PTO Office MPEP 35USC 37CFR
registration to practice agent agents law lawyer lawyers attorneys
attornies crazy inventors crazyinventor zxzx
--- end ---