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Study Manual:
Tips and Basics for the Patent Bar

Copyright © 2003-2004

INTELLECTUAL PROPERTIES ENTERPRISES, INC

All rights reserved. No part of this work may be reproduced or transmitted in any form or by any means, electronic or mechanical, including photocopying, recording, or by any information storage or retrieval system, without the written permission of the copyright owner.

ISBN (pdf digital format): 0-9729047-2-7

Every precaution has been taken to ensure that the information presented in this book is accurate. However, neither the author nor Intellectual Properties Enterprises, Inc shall have any liability to any person or entity with respect to any loss or damage caused or alleged to be caused directly or indirectly by the information contained within this work. The information is presented on an “as is” basis, there is no warranty.

Contact info: Intellectual Properties Enterprises, Inc website: www.patentbarstudy.com
www.patenteducationseries.com
email: order@patentbarstudy.com

A few words about this book

This Study Manual is a preparatory aid for those preparing to take the patent bar examination. This exam covers topics found in the Manual of Patent Examining Procedure (MPEP).

You will find more information explaining IP Enterprise’s line of study aids at the Patent Education Series website, or you may feel free to contact us via email or the toll free number listed below.

Contact info for IP Enterprises:
Sites: www.patentbarstudy.com www.patenteducationseries.com
Email: order@patentbarstudy.com

 

Hello;

 

Thank-you for downloading your free copy of the “Study Manual: Tips and Basics for the Patent Bar”. I know you will find it useful in your preparation for the patent bar exam.

 

If you would like more background on the Patent Bar exam and what it is for, please visit us at our Patent Bar Exam News site.

IP Enterprises is committed to the success of those interested in patent law through the affordability and quality of its patent bar exam prep materials. Therefore, we are interested in any feedback or improvements you may have for our series of patent bar exam prep aids. Any suggestions for new study aids that would make your preparation easier and more productive are also appreciated. Please feel free to call the toll free number to order or send an e-mail in regards to our line of patent bar exam prep aids.

I wish you the best of luck on the exam!

 

Sincerely,

 

Lisa A. Ginger - President March 2004

Table of Contents

Chapter I: Overview of the Test
-What happens after you’ve been accepted? 8
-What will the test set-up be? 9
-Thetestitself 11

Chapter II: The Patent Education Series
-What does the test cover? 15
-Prep review choices 17
-Howitworks 18

Chapter III: Tips for the Test
-Types of questions you will encounter 29
-Detailed breakdown of the test questions 29
-Summary of important test tips 41
-Statistics 43

Chapter IV: Overview of Patents
-What does it mean to patent? 49
-What can be protected? 49
-How to go about getting an invention patented 52

Chapter I:

Overview of the Test

The patent bar exam is currently a 100 question multiple choice exam. It will be administered via computer by Prometric, a reputable testing agency, beginning in April 2004. Test takers may not bring anything into the exam, but will have access to the PTO’s online, searchable Manual of Patent Examining Procedures (MPEP) in pdf form. This online MPEP is the only reference material that may be accessed throughout the entire test. In addition, the testing facility will also provide scratch paper and a pencil, both of which will be collected at the end of the exam.

The exam consists of a morning and an afternoon session. Each session consists of 50 multiple choice questions and each one must be completed in 3 hours. You will have to answer at least 70 out of the 100 questions total in order to pass. It is expected that there will be a one hour lunch break between the two sessions.

In the past, the Patent Bar exam was only administered twice a year, but now that it is computerized, interested individuals may take the exam at any time of the year they wish. Once you have been admitted to sit for the exam, you will need to schedule an appointment to take the Patent Bar at one of the hundreds of Prometric testing facilities throughout the country.

One point to note is that not just anyone may take the patent bar exam. You must prove to the PTO that you possess the proper background in science or engineering in order to sit for the exam. The new Patent Bar admissions bulletin should be released in early spring of 2004. Once this admissions bulletin has been posted, you may submit your application at any time throughout the year. There will no longer be application deadlines. Check out the new admissions bulletin. Our Patent Bar News site also provides you with a summary of the application requirements.

Once you have submitted your application to sit for the exam, the PTO will determine whether or not you qualify. Initially (in early spring of 2004), you should expect the turn-around time to be a little delayed due to a rush of applications. Once the application numbers have settled down, the PTO has expressed that they hope to respond to applications to sit for the exam within 2-4 weeks.

What happens after you’ve been accepted? If accepted to sit for the exam, the PTO will provide you with a 90-day window for scheduling your exam with a Prometric testing center. The exam must be taken before this 90-day window expires. Therefore, you should definitely begin your study preparations before ever submitting an application. Early preparations will only help ensure that you are ready to take the exam before the 90-day window has expired. We suggest that you wait until you have completed Step II of our strategy (or at the very least, started it) before applying to take the exam. Most people will probably pay this warning no heed, but don’t be like most people. Most people don’t pass this exam the first time around!

The cost of the exam is expected to be as follows:
-a nonrefundable application fee of $40
-a registration examination fee of $200
-a service fee to Prometric for $150

After you take the Patent Bar exam, you will not find out right away whether you passed or failed. At least not if you take an exam in early spring of 2004. Early test takers will probably have to wait a few weeks to be notified of their results via mail. Eventually, Prometric will have a ‘real time’ grading system in place.

One last point to make is that an individual who fails the exam will not be allowed to retake it for 60-days. Appeals will no longer be accepted by the PTO.

What will the test set-up be? On the day of your scheduled test date, be sure to bring a current ID with you. The exact types of identification that are considered appropriate will be outlined for you by Prometric and your PTO Patent Bar acceptance form.

In the past, test takers had to report to the testing facility no later than 8:30 a.m. on the day of the test. It is assumed that the computerized exams will start at approximately the same time, but the Prometric testing center will provide you with the specifics when you schedule your exam. Once the test begins, you will have no more than three hours to complete the first section of the exam consisting of 50 multiple choice questions. You will have access to a searchable form of the MPEP on your computer terminal, some scratch paper and a pencil. At the end of the three hour test period, you will have a one hour break for lunch and when you come back, you can expect another set of 50 multiple choice questions. Once again, you will have another three hours to complete this section of the exam. You will have access to a searchable MPEP on your computer terminal, some scratch paper and a pencil.

You may assume that because you will have access to the MPEP on your computer testing terminal, the test will be easy and you won’t have to memorize too much material. An assumption like this will almost certainly cost you time and money by resulting in a failing score! The truth is; no one ever has enough time to look up even half the answers, let alone all of them. The test covers far too much material. You may have the time to look up the topics covered in approximately 10-15 questions per test session if you read quickly and are familiar with the organization of the MPEP, although even this may be a bit of an overestimation.

The day of the exam, you should plan to spend the entire day at the testing facility. It is wise to arrive a half hour early and expect to be there until about 5 p.m.

Prior to the day of the test, you should locate the test facility. Make sure you know how to get there. Also, search for the bathrooms, parking spaces, a place to eat lunch and anything else you can think of. The day of the test will be stressful enough; you won’t need to add any more stress to it.

Make sure to be well rested the night before the test. Of course, eat a good breakfast the morning of the test and make sure you have access to a good lunch. If you do plan to travel for lunch, be sure to keep track of the time and arrive back early. It is wise not to drink too much caffeine before or during the test. Also, try to stretch out and look away for a moment or two during the exam. Short breaks are necessary to help you focus.

Keep in mind that the temperature in the testing room may not be a nice, comfortable 70 degrees. You may want to bring a light sweater or jacket and wear layers as you may become a bit overheated. Another possibility is that you might become distracted with the noise of people at other computer terminals. You may want to consider bringing in sound-deadening earphones or ear-plugs on test day if you get easily distracted. These should be allowed, although the Prometric test facilitator may need to inspect them first.

The test itself Since there is no special course, training class or specific patent-related college degree required to become a patent practitioner, all that stands between an engineer or scientist with the appropriate technical background is achieving a passing score on the patent bar exam. Therefore, the PTO has tried to make this test difficult. And they do a pretty good job of that as the national pass rate usually falls between 30-60% (although the October 2002 exam was a record breaking 72%). Only highly ambitious individuals who have learned the material inside-out actually pass.

You might be asking, just how can a multiple choice test be so difficult? Well, most of the questions on the patent bar exam are much longer than the average multiple choice question from back in the days of college. And the detail involved with the questions also makes the test difficult. Patent Law is already complicated enough to pose problems on its own, but the PTO makes it more complicated with the difficult question style they prefer. Many of the questions are similar to the type of questions one might encounter on an IQ test. The PTO not only tests you over the material in the MPEP, but also on your ability to think logically and analytically. To provide you with an example of just how wicked the PTO may be, the following sample question is provided.

You are preparing a patent application for your client, Perry. The invention is disclosed in the specification as a doodad making machine comprising elements A, B, and means C for performing a function. The specification discloses two specific embodiments for performing the function defined by means C, namely C’ and C”. The specification also discloses that components D or E may be combined with A, B, and means C to form: (i) A, B, D, and means C; or (ii) to form A, B, E, and means C. The specification also discloses that component G may be used, but with only means C’ to improve the machine’s performance. The specification also states that the machine is rendered inoperative if component G is used with C”, or whenever components D or E are present. The first three claims in the application are:

1. A doodad making machine comprising A, B, and means C for performing a function.
2. A doodad making machine as claimed in Claim 1 wherein means C is C'.
3. A doodad making machine as claimed in Claim 1 or 2 further comprising D.

Which of the following would be a proper claim 4 and be supported by the specification?

 

(A) A doodad making machine as claimed in Claim 2, further comprising E.

(B) A doodad making machine consisting essentially of A, B, means C for performing a function, D and G.
(C) A doodad making machine as claimed in Claim 1 or 2, further comprising D.
(D) A doodad making machine as claimed in Claims 1 and 2, further comprising G.
(E) A doodad making machine as claimed in any of the following claims, wherein means C is C”, and further comprising G.

What is all this business with doodads and widgets? What in the world are they talking about…C, C’, C’’?

This question is tough. In order to answer it, you need to be familiar with the following terms; specification, disclosure, specific embodiments and claims. You must also understand some of the complicated rules of claim writing. And not only do you need to understand all these concepts, but you also have to be able to think logically and rationally while under a time limit.

Fortunately, there are not too many questions quite this convoluted on any given test (the answer to this question is choice A in case you were wondering), but the testing style of the PTO is similar the whole way through. Basically, they go out of their way to present difficult material in a manner which makes it even more difficult to comprehend. However, if you take the time to really learn the material and familiarize yourself with previous exam questions, you will not be overwhelmed by questions like the above example.

The Patent Education SeriesTM Patent Bar Package was developed to help you pass this difficult exam. It can save you time, money and frustration. The following chapter will introduce you to how our program works and what you will receive when you purchase our Package.

Chapter II:

The Patent Education SeriesTM

 

The Patent Education SeriesTM from IP Enterprises consists of the:

 

•Study Manual: Tips and Basics for the Patent Bar

-the ebook you are currently reading!
•Patent Law Online:
-an online course with nine modules, interactive quizzes, an in-depth
glossary and a MPEP cross referencing section
•Guidebook to Patent Law:
-lecture-style outline of the Manual of Patent Examining Procedure
(MPEP)
•Patent Bar Exam Prep Workbook:
-short answer, fill-in-the-blank and true/false questions with answers
•PTO Exam Simulator:
-downloadable software you may run on your PC
-contains over 600 PTO exam questions/answers which may be answered by topic or randomly
•3-Step Lesson Plan to help guide you through it all The material you need to know in order to achieve a passing grade on the patent bar exam is all within the Patent Education SeriesTM. This chapter will discuss the best method for using these materials in order to ensure that you receive a passing grade on your first try.

What does the test cover? First, let’s discuss exactly what the patent bar exam covers. This exam tests your knowledge of the Manual of Patent Examining Procedure (MPEP). The MPEP is a few thousand pages in length and it explains and references many laws and rules set-up by the Patent and Trademark Office (PTO). The laws established by the PTO are described in “United States Code Title 35 – Patents”. This group of laws is referred to as 35 U.S.C. The rules covered in the MPEP are known as the “Code of Federal Regulations – Patents, Trademarks and Copyrights” and are referred to as 37 C.F.R. Both the MPEP and the patent bar exam only cover the Regulations covered in the Patents section. The rest is for copyright and trademark attorneys to know. Between 35 U.S.C. and 37 C.F.R., there are hundreds of laws and rules that establish and govern the fundamentals of patent law. You will need to know very specific details about these laws and rules in order to pass the patent bar exam.

The MPEP basically covers every angle of each of the relevant 35 U.S.C. laws and 37 C.F.R. rules. It lists them, defines them and discusses them, exhaustively. One thing to keep in mind is that the MPEP was written to establish the fundamentals of patent law not only for patent practitioners, but for PTO examiners as well (examiners are the individuals who determine whether or not a patent application should become a fullfledged patent). Fortunately, there are sections of the MPEP that really only pertain to examiners and are never tested on the patent bar exam. Therefore, you do not need to know every law or rule or even every chapter of the MPEP. In addition, the MPEP is also filled with forms used by patent practitioners or inventors when filing patent applications. It also references important court cases that have helped establish the laws and rules of the PTO. Therefore, you can easily cut out quite a bit out of the MPEP when preparing for the exam, but what is left is still a fairly tall and daunting heap of paperwork.

Another point to make is that the MPEP is not set in stone. As the laws, rules and forms change, newer editions of the MPEP are published. The PTO constantly makes adjustments and refines the laws and rules.

Even the basic fundamentals of patent law change over time. The area of biotechnology is a prime example. Two decades ago, the field of biotechnology was in its early stages, but now it has exploded. Corporations are patenting genetic sequences, natural chemicals, microorganisms, even plants and animals! The PTO has been busy adjusting their laws and rules to keep up with the changes in this area of rapidly changing technology.

Another example of major changes occurred when the PTO added in an entire chapter discussing the topic of Patent Terms (Chapter 2700). The MPEP is growing, which is a very scary thought.

Another twist is that the Patent Office will frequently make changes to the rules, laws and theven the MPEP itself whenever they want. So, even though we are currently using the 8 edition MPEP, Revision 1, the PTO is still changing its content. They post these changes on a daily basis on their website (there is a link to it on the Lesson Plan so that we can keep you up-to-date on all the important law changes). The PTO will notify you as to which changes they are currently testing over before you take the exam. But wait, don’t panic yet. The PTO is slow to update the patent bar exam to reflect new material (you can expect about a 90-day lag time). In addition, the same “core” topics and details are tested time and time again. It is estimated that only 0-3 questions will deal with the latest changes to the MPEP when you take your exam. However, you do need to be aware of the fact that the MPEP is dynamic and ever changing. Once you get into the field of patent law, you will need to keep this in mind. There will always be a new manual to purchase and become familiar with throughout your career.

Prep review choices Since the patent bar exam is based on the MPEP and you have easy access to it, the material that you need to know in order to pass the exam is very accessible. The one rather large glitch is that the MPEP is well over 3-thousand pages in length and is written in rambling legal language. It does not differentiate between tested material and that which is unnecessary for the exam.

A review course or prep materials will only be beneficial. They will save you time and frustration. In the end, with review materials, you can be assured that you will be fully prepared for your new career.

Although it is quite inexpensive, the Patent Education SeriesTM provides you with what you need to know to pass and is highly competitive even in comparison with much more expensive review courses. The Patent Education SeriesTM is a well structured, convenient program. You will not need to travel or take time off from work, and may even study from the convenience of your own home. Remember that no matter how you plan to tackle this exam, expect to read a large quantity of material and put in some serious independent study time. Ultimately, you will get out of it what you put into it.

How it works We understand the importance and challenge of the Patent Bar exam and have developed our system to help you pass on your first try in the least amount of time. The Patent Education SeriesTM includes everything that you need to pass. And one of the benefits of our program is that we leave out everything you don’t need to know!

In addition, our self study course provides you with ultimate flexibility. You take it at your own pace. We will always provide you with updates as new editions of the MPEP become printed and extra time on the online course or the software if you need it. You will never have to re-purchase our course.

The Patent Education SeriesTM revolves around a 3-step strategy. We provide you with a detailed Lesson Plan for each step – which you are free to view by clicking on the link. Here, we will touch on each of the three steps and give you insight into how the program works.

Step I: Learn the Fundamentals of Patent Law by working with the Patent Law Online Course

The Patent Law online course is a self-paced system consisting of four major components; the Modules, a Glossary, a Quizzes and the Reference section. The Modules are the primary component. Begin learning the modules and you will be well on your way to learning Patent Law.
We have broken the fundamentals of Patent Law down into nine different modules that cover all the important
objectives of Patent Law. Each module contains several topics. To make assimilating the material easier, the modules have less than a dozen different topics within them. The topics are explained in an easy to understand, ‘big picture' format. A clear navigation system on the left lets you know which topic you are currently on and exactly where that is within the module. Jump ahead, jump back or use the navigation to pace yourself.

The online course also contains interactive quizzes. You may take a quiz for a particular topic or a set of modules when you are ready. Correct/incorrect responses are shown for each question and are received instantly. Attempting all the quizzes will greatly increase your comprehension.

There is also a separate Glossary section in the online course. Within the glossary, you will find over 250 easy to comprehend definitions to necessary patent-related terms. It's simple to find what you need. You can go straight to the source!

Lastly, there is a reference section which provides you with information on the most important laws and rules relevant to key topics, and cross-referencing to the appropriate MPEP section.

The course covers the fundamentals of every topic tested on the exam and is sure to speed up your study time. It was developed in order to make understanding the material as painless as possible! You may preview this powerful learning tool by simply going to the Patent Law online course preview. Take the first module, an “Introduction to Patent Law” with all the quizzes for free. Also, be sure to view the comprehensive objectives of this course while there.

Step II: Learn the details of Patent Law with the Guidebook to Patent Law/Prep Workbook bundle The Guidebook to Patent Law follows the same basic organizational pattern of the MPEP; both consist of Chapters 100-2500, Chapter 2700, a section on ethics and an index. However, the Guidebook is much easier to follow and it only includes the material that is tested on the patent bar exam. The endless text found in the MPEP is replaced with a concise, lecture-style outline. By reviewing the Guidebook, you will not only learn the detailed material, but you will know exactly where to find the necessary information in the MPEP (for exam day look-up) since all the same section headings are preserved throughout it.

The material within each chapter of the Guidebook to Patent Law is presented in a logical manner. The chapters in the Guidebook range in size from a single page up to about 60 pages in length, depending on how much tested material could be on the exam from that particular chapter. In addition to containing the regular chapters, the Guidebook also has an in-depth section on Prior Art Rejections. This is a very heavily tested area. In the MPEP, prior art rejections are spread-out over Chapters 700 and 2100, two of the longest and most heavily tested chapters. By combining the material into a separate section, the details of prior art rejections becomes much easier to learn and to reference.

Be prepared to read through the material presented in the Guidebook more than once. After all, this material is complex and it builds on itself. Focus on gaining an in depth understanding of the material while becoming familiar with the organization of the Guidebook and therefore, the MPEP.

Each chapter within the Guidebook to Patent Law begins with a chapter number and title. Following the chapter title is a short summary of the covered topics. A short paragraph follows which begins with a number of stars. The stars rank the chapters by importance in an easily recognizable format; the five star system. Five stars indicate that the chapter is a heavily tested one, while one star indicates that it will not contain too much testable material (as you can guess, these are the shortest chapters). A short description follows the stars, discussing the most heavily tested sections within each chapter. This will help you identify the most important material within the longer chapters. Here is an example taken from Chapter 100 of the Guidebook:

Chapter 100: Secrecy, Access, National Security and Foreign Filing

Summary: This chapter discusses the confidentiality of patent applications and patent related documents. The focus is on who may or may not have access to the particular application types.

Patent applications containing sensitive issues will be placed under a secrecy order by the PTO. Absolutely no member of the public may view these patents even after they have issued.

Foreign filing licenses must be issued to a patent applicant if he or she desires to apply for another patent that discloses the same subject matter in a different country immediately after filing for a U.S. patent.

* This chapter has not been tested much in previous exams. However, a few questions may touch on accessing patent applications. You may expect one question related to 37 C.F.R. 1.11 or 35 U.S.C. 122, which regard the files that are open to the public.

A table of contents follows, which has the MPEP heading code (101, 102, etc…) and the topic written out next to it followed by its page in the Guidebook to Patent Law. For example:

ChapterOutline: Page

Confidentiality of Patent Applications
101General 103
102 Information as to the status of an application 103
-How to determine the status of an application 106
-Accesstoinventors 106
103 Right of public to inspect patent files and some application files
•Summary of 37 CFR 1.11 107
•Access to particular types of patents 107
-Pending or non-published abandoned patents 107
-Abandoned applications 108
-Provisionalapplications 108
-Reissueapplications 108
-International applications 108
-Incorporation by reference 109
•Petition for access 109
•Servicingtheapplicant 110
•35 U.S.C. 122 111

Issues Regarding National Security
120Secrecyorders 113

Foreign Filing
140 Foreign filing licenses 114
150StatementstoDOEandNASA 114

With this format, you can easily determine that 101, 102 and 103 all fit under the category pertaining to the Confidentiality of Patent Applications.

 

As you can see, it will be a snap to find the information you need in the MPEP since all the headings are the same once you’ve spent a little time learning from the Guidebook.

On the page following the Table of Contents, the actual outline ensues (sample follows). Each section begins with the same headings found in the table of contents (which correspond to the appropriate heading in the MPEP). A few of the larger sections follow with a brief summary in italics to help introduce the material. In addition, if there is a law or rule that is tested from that particular section it will follow the section heading with the key points written out beneath it. Different font styles will help guide you through the outline.

Confidentiality of Patent Applications

101 General

Patent applications must be kept confidential. This provides for a simpler application process as there is less chance for ideas to be stolen. Approved patents, however, are freely open to the public (unless they are under a secrecy order).

-in order to maintain the confidential status of patent applications:

-no information on the filing, status or subject matter of any patent application will be disclosed to the public
-no access or copies of any application or patent papers will be allowed

-confidentiality only applies to the applications; actual existing patents are open to the public (unless they are under secrecy order)

-exceptions to the confidential status of applications include:
-when written authority from the applicant is gained by a member of the public
-when the application is both abandoned and published

-the application cannot be in a file jacket of a pending application (meaning that no one is trying to continue patenting that particular invention)

-if it is deemed necessary by the Commissioner

 

-when the material of the application is incorporated by reference in a U.S. patent

 

102 Information as to status of an application

There are 3 major types of patent status. These include whether the application is pending, abandoned or issued. This statute discusses the rules regarding the confidentiality of an application’s status.

While you are reading through each of the chapters, you may want to take some notes. It is always easier to learn complicated material if you take the time to write something down, at least the major points, and put the ideas into your own words. You may also want to highlight certain sections.

At the end of the Guidebook to Patent Law is the index. The first part to the index is a subject index. You should be able to find any topic within the Guidebook using this section. Part II of the index lists the laws and rules and the page number of their location in the Guidebook. The PTO has a peculiar system for the numbering of the laws and rules. As we’ve already mentioned, there are two sets; the United States Code Title 35 series (35 U.S.C.), and the Code 37 of Federal Regulations (37 C.F.R.) series. Each of these have their own numbering system that follows the appropriate abbreviation; for example, 37 C.F.R. 1.14.

The Prep Workbook will help you test your knowledge as you learn the details of Patent Law. You should answer questions from the Prep Workbook as you review the Guidebook to Patent Law. Every chapter is covered in the Workbook. The questions consist of fill-in-the blank, short answers, and true/false. All the answers are found at the end of each chapter in the Workbook. In addition, important key term and rules and laws are highlighted for each chapter.

We suggest that you review each chapter in the Prep Workbook as you read the corresponding chapter in the Guidebook to Patent Law. Keep in mind that for some of the Workbook questions from Chapter 700 and 2100, you will need to reference the Prior Art Rejections section found in the Appendix of the Guidebook.

Step III: PTO Exam Simulator Once you feel confident with the material presented in the Prep Workbook and the Guidebook, you should move on to the PTO Exam Simulator. This powerful software contains over 600 previously asked patent bar exam test questions. Answers for every question are provided and even cross-referenced to the MPEP.

We suggest that you initially answer questions from individual topics to help focus in on the material. Follow along with the Lesson Plan and attempt the topics in the order we have presented them for you. You will have a maximum of 3 hours with any given topic per session. However, many of the topics only have a few questions and can therefore be completed in minutes. The software will keep track of how many questions you have attempted, how many you answered correctly, your current percentage, and count down the time.

You may review the questions in each topic as many times as you’d like. Each time you do, the questions will be given to you in a random order. At the end of each test session, the software will present you with a printout of you session, providing you with answers and explanations. It will even prompt you to try all the questions you previously missed! This will greatly help you improve on your weak areas.

The PTO Exam Simulator will keep track of your score for each topic in a scoreboard. When you can score 70% or above in each topic, you are ready for the randomized test sessions.

Once you’ve become familiar with the test questions, you should begin taking simulated practice exams. Just select “multiple quiz mode” on the PTO Exam Simulator, check off all the topics and you will be given questions randomly from the total question pool. Since there are over 600 questions in the pool, this option will enable you to simulate an unlimited number of final exams. Each exam will be set-up with a 3 hour time limit. During the exam session, the software will keep track of how many questions you have attempted, how many you have answered correctly, your percentage score, and count down the time. When you have completed the test session, the software will provide you with a printout of the test including the questions, answers, explanations and MPEP referencing where appropriate. After that, it will prompt you to try all the questions you previously missed again!

We recommend that when you begin taking old exams questions with the PTO Exam Simulator, use your Guidebook to Patent Law for help finding the answers to difficult questions. Remember, the Guidebook maintains the same headings and subheadings as the MPEP so if you can find it in one, you can find it in the other!

Looking things up with the online MPEP will be incredibly cumbersome. Using the Guidebook initially will help you focus on what is really important, learning the material! Please realize that although the test is considered “open book” you will not have too much time to look many answers up. If you learn the material before you take the exam, the time factor will not be an issue. By following our strategy, on the day of the real exam, you will breeze through the questions and will only need to use the online MPEP on your computer terminal a few times during the day.

One reason for the low pass rate of the patent bar exam is that many people do not take advantage of the fact that they have access to old exams. They diligently read through their MPEP or study guide and then simply run out of time and energy to take old exams. Don’t fall into this trap! The old test questions really are your best gauge for determining if you are ready to take the real exam. Everything else will hopefully help make sense of this mess the PTO calls patent law, but attempting the old exams will truly prepare you for taking the patent bar exam. Once you can pass old exams by a comfortable margin, you will be ready to pass the real thing.

When taking a practice exam, remember that you only need a 70 to pass. It is very likely that of the people who do pass, not many get over 80 correct out of 100. The test is mentally strenuous and covers more material than the normal individual is used to having to know to pass a single test. The PTO Exam Simulator will help you apply the material in the manner and format in which the PTO will test over.

>>>>> Our Review Course <<<<<<

We realize that many people are on a budget and spending thousands of dollars on a Patent Bar review course just isn’t an option. And education really shouldn’t be something you pay off on a credit card for years. That is why we offer our Package for a low price. In addition, you have the option of purchasing the tools in the Package individually. The Patent Law online course, Guidebook to Patent Law, the Prep Workbook and the PTO Exam Simulator are all available for separate purchase.

The following chapter will introduce you to some test taking tips that will help you become more familiar with the PTO’s testing style and ultimately, in finding the correct answer, passing the test and moving on with your life.

Chapter III:

Tips for the Test

The difficulties associated with the patent bar examination have already been discussed. The long, detailed oriented questions, the stress of the time limit and the complexity of the material all mount to quite an obstacle. The focus will now shift to providing you with tips for overcoming the difficulties, hopefully leading you to a passing score.

For each of the different model types of questions on the test, an example is given. The answer to the question is also provided, but for now you don’t need to get too wrapped up in the answers or even the topics themselves (they won’t be clear until after you have extensively read through and studied the Guidebook to Patent Law). For now, it is important to focus on the types of questions and to become familiar with the topics that will be tested.

Types of questions you will encounter:

 

•Straightforward true or false questions

 

•Long winded story questions with more information than you would ever need to answer the question (very difficult)

 

•Claim drafting questions (very difficult)

 

•Fill in the blank questions

 

•Finish the sentence questions

 

•Select from Roman numerals

 

•Miscellaneous

Detailed breakdown of the test questions
•Straightforward true or false questions
These questions are usually the easier ones. They contain straightforward phrasing and there is no background story to sort through. The phrases frequently found in these straightforward questions include:

1) Which of the following is in accord with proper USPTO practice and procedure?
2) Which of the following is not in accordance with proper USPTO practice and the procedures set forth in the MPEP?
3) Which of the following is not a USPTO recommendation or requirement?
4) Which of the following is true?
5) Which of the following statements concerning (insert topic such as preliminary amendments) is/are in accordance with proper USPTO rules and the procedures set forth in the MPEP?
6) In accordance with the USPTO rules and the procedures set forth in the MPEP, which of the following statements is most correct?

As you can see, the questions are set-up very simply (there is no extensive background) and ultimately, you can approach choice A, B, C, D and E as though each one were a true or false question. Occasionally, the choices for A, B, C, D and E may cover completely different topics, or the PTO may throw in a choice for all of above or none of the above.

Even with these little tricks, these are very straightforward questions. More often than not, the answer choices will be text taken word-for-word straight from the MPEP (and most of these are presented word-for-word in the Guidebook too). You will just need to look for either the most correct or the most incorrect response. Make certain you distinguish which one you are searching for by writing either true/false, or correct/incorrect down on your scratch paper. Then for each of the answer choices, ask yourself if the statement is true or false and indicate that by marking the appropriate letter on your scratch paper as well.

The following is an example of a straightforward question taken from the April 18, 2001 pm session:

 

1. Which of the following is in accord with proper USPTO practice and procedure?

(A) Upon request to convert a provisional application to a nonprovisional utility application, the nonprovisional application is accorded a filing date as of the date on which the request to convert was filed, but the original filing date of the provisional application is preserved.

(B) If a provisional application does not have a claim as filed, and a claim is not filed with a timely request to convert the provisional application to a nonprovisional utility application, the Office will notify the applicant and set a time period for submitting a claim for examination.

(C) A provisional application filed in November 2000 is entitled to the right of priority under 35 U.S.C. 119 of a copending utility application for patent filed in Great Britain in January 2000.

(D) A request filed in January 2001, to convert a provisional application filed in the USPTO in April 2000, to a nonprovisional utility application is timely if filed after the abandonment of the provisional application, i.e., after the pendency of the provisional application, but within twelve months of the filing date of the provisional application provided no petition to revive has been filed and granted.

(E) A nonprovisional utility application filed under the provisions of 37 CFR 1.53(b) in January 2001, and claiming the benefit of the earlier filing date of a provisional application must be filed during the pendency of the provisional application.

Answers & rationale: False - A) This is definitely false as there is only one application and that application has a single filing date. This filing date is always the filing date of the provisional application...the original filing date is not preserved.
True - B) A claim must be presented in order to convert a provisional application to a nonprovisional application. The PTO will set a time period within which a claim must be submitted for the Office to grant the request if the provisional application does not have a claim and a claim is not filed with the request.
False - C) Provisional applications are never entitled to the right of priority of any other application. Therefore, C is definitely false.
False - D) You cannot convert a provisional to a nonprovisional application if the provisional application is already abandoned.
False - E) The provisions were amended to eliminate the requirement that a nonprovisional application claiming the benefit of a provisional application must have been filed during the pendency of the provisional application.

As you can see, if you have a solid grasp on the topic of converting a provisional application to a nonprovisional application, (which is covered in MPEP 200) this type of question would not give you too much trouble at all.

•Long-winded story questions When we say long-winded, we really mean loooooonnnnggg-winded. These questions are usually fairly difficult, especially compared to the straightforward true/false questions mentioned previously. The long, storybook questions will provide you with a detailed background, most of which happens to be completely irrelevant. These questions require a great amount of time just to read through, let alone to sift out the unnecessary information. After you read through the story, there is usually a sentence stating “based on the above, which of the following statements is most correct?” Therefore, you can approach these in the same manner as the straightforward true/false questions by marking a T or F by each answer choice. And sometimes, as we will show you, it is possible to answer the question right without even reading the question itself!

The following is an example taken from the April 18, 2001 pm session:

15. Joe and Jim, local businessmen, conceived the idea of an improved fishing pole. Thereafter, they had a prototype made, and after successfully testing the pole, they filed a patent application on their invention. Both men are widowers, Joe with a grown son, and Jim with a grown daughter. Joe and Jim invite their children to come to the next Lions Club social event, and it isn’t long before the children are thinking in terms of wedding bells. Ecstatic at the thought of the upcoming marriage, Joe and Jim decide to assign their patent application to their children as a wedding present. Accordingly, they execute a document properly assigning their patent application to their children effective on the date of their marriage, and mail it to the USPTO with a cover letter requesting that the document be recorded. Shortly after the document is recorded, Joe’s son meets another woman, and breaks off his engagement to Jim’s daughter.

In light of this scenario, which of the following statements is true?

(A) Since the assignment was conditioned on the marriage of the children, and the condition was not fulfilled, the USPTO will regard the assignment as without effect for Office purposes.

(B) Since the assignment was recorded, the USPTO will require the parties to certify that the marriage condition was fulfilled before the assignment will be effective for Office purposes.

(C) Since the assignment was recorded, the USPTO will not determine whether the marriage condition was fulfilled and will regard the assignment as absolute.

(D) Since the USPTO does not record conditional assignments, the recording of the assignment document will be regarded as inadvertent, and without effect for Office purposes.

(E) Since the assignment was recorded, the USPTO will regard it as a determination of the validity of the document and the effect that the document has on the title to the patent application.

The best way to approach this question is to jump immediately to the answer choices in order to determine what the general topic of the question is. In this case, the topic is assignments (found in MPEP 300). Once you have established the topic, quickly skim through the question, underlining the relevant information. The only information necessary in the story are the four words “the document is recorded” which is found in the last sentence. The MPEP states that once a document is recorded, the PTO will not check to see if any conditions of the recordation have been filled. Therefore, the correct answer is clearly answer C. Since the assignment was recorded, it will be regarded as absolute. End of story. Answers: 15) You don’t need to know what was invented, the inventors names, or that they are

widowers. The details of this question are ridiculous, so don’t waste your time with
any of them.

False - A) The Office does not check whether conditions of an assignment are fulfilled or not.
False - B) Since the Office will not determine whether a condition has been fulfilled, the Office will treat the submission of such an assignment for recordation as signifying that the act or event has occurred.
True - C) Assignments which are made conditional are regarded as absolute assignments for Office purposes, the PTO will not check to see if such conditions have been fulfilled.
False - D) The Office will record any properly made assignment.
False - E) The recording of a document is not a determination by the Office of the validity of the document or the effect that document has on the title to an application or patent. The following is an additional example of a long, story question taken from the April 18, 2001 am session:

4. Buddy is a recent father and a machinist at a local machine shop that makes custom automotive parts. One day while driving to work, Buddy conceived an idea for an improved baby stroller. He quickly worked out many of the details of how to build such an improved stroller, but he still had questions. Buddy later explained his idea to his employer and showed the employer detailed preliminary drawings of the stroller without any agreement as to confidentiality. Buddy wanted use of his employer’s machine shop to build a model. Buddy’s employer was also excited about the stroller idea and its commercial potential, and the two quickly reached an oral agreement. Buddy would have free use of the machine shop equipment and supplies after regular business hours to work on his model. In exchange, Buddy agreed to assign any patent rights in his invention to the employer for $1000.00. Only Buddy and, occasionally, his employer were ever present in the shop when Buddy was working on the stroller. Buddy finalized the design just over a year later, and a patent application was on file within a month of finalization along with a recently executed written assignment of the rights in the invention to Buddy’s employer. During prosecution of the patent application, the examiner learned of the oral agreement between Buddy and his employer, and rejected the claims on the basis that the invention was on sale more than one year before the application filing date.

Which of the following would provide the most reasonable basis for traversing the rejection?

(A) The Examiner cannot properly make the rejection because it is not based on prior art patents or printed publications.
(B) The oral agreement was a private transaction between Buddy and his employer and no private transaction can provide a basis for an on-sale bar.
(C) An assignment or sale of the rights in an invention and potential patent rights is not a sale of “the invention” that would operate as a bar to patentability.
(D) Because no one other than Buddy's employer was present in the shop when Buddy was working on the stroller and the oral agreement was not public, there can be no on-sale bar even though there was no express requirement of confidentiality.
(E) Although the oral agreement to assign the patent to Buddy’s employer was made more than a year before the filing date, the written assignment was less than a year before the filing date, and under the Statute of Frauds, sales for more than $500.00 require a written agreement. A rejection based on the on-sale bar can never be made unless there is a binding contract for sale.
By skimming through the answers and the last sentence of the question, we can determine

that the question deals with rejections, specifically with rejections that have their basis in 37 C.F.R. 102. We can even narrow it down further to the topic of “on sale” statutory bars within 37 C.F.R. 102(b) (found in MPEP 700 and 2100 or the Prior Art section of the Guidebook to Patent Law). Also, just by reading through the answers, we can quickly determine that answer A is obviously incorrect, as reexaminations are limited to prior art patents and publications, but the original prosecution is not. An MPEP veteran will also recognize that B and D are incorrect because there is no requirement that “on-sale activity” must be public. And, come to think of it E is clearly incorrect because an onsale bar does not require an actual sale, but it may also be based upon a mere offer to sell. So we are left with C, which happens to be a true statement regarding statutory bars.

But, just a minute, we didn’t ever read the question! Although the story about Buddy and his amazing baby stroller invention is truly fascinating, it is not necessary to read any of it in order to answer the question correctly (which is really all we care about so just skip it and buy yourself a book by your favorite author after you pass the test).

•Claim drafting questions Questions dealing with claim drafting are always complicated. You will have to read through the actual question in order to figure these out. Therefore, these questions are generally the most difficult on the test. In addition to understanding the rules governing claim drafting, you have to apply your analytical skills to arrive at the correct answer (fortunately, scientists and engineers have an extensive amount of practice thinking logically so you do have an advantage). The following is an example taken from the April 18, 2001 pm session:

6. A patent application filed in the USPTO contains the following three original claims, including product by process Claim 3:

Claim 1. A method for making an Ethernet cable comprising the steps of A, B and C.
Claim 2. The method of claim 1, further characterized by the step of D.
Claim 3. The Ethernet cable as in any one of the preceding claims.

In the first Office action, the examiner objects to Claim 3 as being an improper dependent claim and requires cancellation of the claim. Following proper USPTO practices and procedures, which of the following replies best overcomes the examiner’s objection and provides the client with the broadest patent protection?

(A) Amend Claim 3 to read: “The Ethernet cable as made by the process set forth in claims 1-2.”
(B) Cancel Claim 3.
(C) Cancel Claim 3 and add Claim 4, which reads: “An Ethernet cable made by a process comprising the steps of A, B and C.”
(D) Cancel Claim 3 and add Claim 4, which reads: “An Ethernet cable made by a process comprising the steps of A, B, C and D.”
(E) Cancel Claim 3. Add Claim 4, which reads: “An Ethernet cable made by a process comprising the steps of A, B and C.” Add Claim 5, which reads: “An Ethernet cable made by a process comprising the steps of A, B, C and D.”

Answers: False - A) This is an incorrect multiple dependent claim. False - B) Canceling claim 3 will overcome the rejection, but then the application

does not have a claim to the Ethernet cable made using the processes set forth in either claim 1 or claim 2.

False - C) Leaves application without a claim to the Ethernet cable made using the processes comprising the steps of A, B, C and D.
False - D) Leaves application without a claim to the Ethernet cable made using the processes comprising the steps of A, B and C.
True - E) Canceling claim 3 overcomes the examiner’s objection. The addition of claims 4 and 5 provide the client with patent protection in product-byprocess format for the cable by both methods of manufacture. If claim 4 is invalid, claim 5 may remain valid.

•Fill in the blank

 

There are never very many of these (sometimes only 2 per test), and they are usually very

 

easy to answer (well, you do need to learn the material first).

 

•Finish the sentence

 

These questions are fairly easy also. You should not need to spend very much time

 

coming up with the correct response, provided you know the topic, or can look it up

 

quickly.

 

The following is an example taken from the April 12, 2000 am session:

31. A prima facie case of obviousness requires a suggestion, teaching, or motivation to modify the references to produce the claimed invention. The suggestion, teaching, or motivation is established:

(A) only if the suggestion, teaching, or motivation to do so is found in the references themselves.
(B) if the claimed invention is within the capabilities of one of ordinary skill in the art.
(C) by the mere fact that the references can be combined.
(D) if the suggestion, teaching, or motivation is found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art.
(E) (A), (B), (C) and (D).
Answers:

False - A) Obviousness is not limited to being found only in the references themselves.
False - B) This is not sufficient by itself to establish prima facie obviousness.
False - C) This is not sufficient to establish prima facie.
True - D) Correct - obviousness can only be established by combining or modifying the teachings of prior art to produce the claimed invention where there is some teaching, suggestion or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art.
False – E) A, B and C are all false.

•Select from Roman numerals Questions following the pattern presented below can pose a little difficulty. However, if you read the question carefully and then go through each of the answer choices; I, II, III and IV, marking each one with either a T or F, it should be easy to determine what the correct response is.

7. Which of the following properly creates a statutory bar to patentability of applicant’s claimed invention?

I. Applicant’s invention was sold in Tokyo and New York more than one year prior to the effective U.S. filing date, but the sales were merely attempts at market penetration.

II. Applicant’s invention was experimented with and tested to further develop the invention more than one year prior to the effective U.S. filing date, but important modifications resulted from the experimentation causing the invention to be reduced to practice after the effective U.S. filing date.

III. Applicant’s invention was sold in Tokyo more than one year prior to the effective U.S. filing date, but the sale was merely market testing of the invention to determine product acceptance.
(A) I.
(B) II.
(C) III.
(D) I and III.
(E) None of the above.

(A) is the most correct answer because I is the only correct answer. Sales in the U.S. occurring more than one year before the application lead to a statutory bar. Experimental testing is allowed so II does not create a statutory bar. III does not create a statutory bar because the sale was made in Tokyo, not the U.S.

•Miscellaneous questions These are very straightforward questions. There are no tricks involved. The following is an example taken from the April 2000 am session:

12. Which of the following documents, if any, must also contain a separate verification statement?

(A) Small entity statements.
(B) A petition to make an application special.
(C) A claim for foreign priority.
(D) An English translation of a non-English language document. (E) None of the above.

Answer: E) is correct because the Office did away with separate verification statements several years ago.

Summary of important test tips It would be wise to read through these, memorize them, and practice using them!

•Tip #1 There are 50 questions per exam section. Do not leave any answers blank. You may as well guess blindly on a question rather than leave it blank as there is no penalty for incorrect selections. The test is multiple choice, therefore you have a 1 in 5 chance of getting a particular question right by guessing. If you can narrow down the answer choices, your odds of guessing correctly will only improve. Out of 5 questions that you don’t know the answer to or do not have time to even read, you should statistically get 1 right just by blindly guessing. In some instances, that can make the difference between passing and failing the exam.

•Tip #2 Skip the longer questions that require more reading. Save the longer questions for last (especially those pertaining to claim drafting), and answer the shorter questions first. The easiest and most straightforward questions are those that begin with something like: “According to USPTO rules, which of the following are true”. Most of the answers to these questions come straight from the MPEP. All the questions are worth the same amount of points, so there isn’t any reason to go after the longer, more difficult questions before attempting the easier, shorter ones.

•Tip #3 Approach every answer choice as if it is a true or false question. This will help to simplify the questions. Once you have identified whether a particular choice is true or false, write it down next to the corresponding letter (A, B, C, D or E). Be sure to distinguish whether you are looking for the most correct answer or the most incorrect answer. You will have scratch paper on the day of the exam. Write down on your scratch paper which of the two you are looking for (you may indicate this by simply writing true or false, or correct or incorrect). Otherwise, even you may get confused and answer a question incorrectly just by interpreting it wrong. Once you’ve determined what you’re looking for, then go through the answer choices and mark each one true or false. You will always be able to find the correct answer this way.

•Tip #5 Don’t get too involved with the story type questions. The best method for answering these is to read the very last sentence of the question and then look over the answers. In some cases, you will be able to determine whether a choice is true or false without reading the preceding story. If you must read the story at all, skim through it quickly, circling the relevant information. All of the story type questions will contain more information than you will ever need to determine the answer. The PTO just wants you to waste your time reading through unimportant information. Remember to keep this in mind.

•Tip #6 If a question seems as though there isn’t a correct answer or as though there is more than one correct answer, but no choice for both; don’t automatically assume you are wrong. What you think is the correct, missing answer may actually be right. Is this fair? No, but unfortunately, there are times when the PTO will have questions that they do not provide a correct answer for. Any answer you choose will be correct in these cases because credit will be given for that question as long as a selection is marked. Hopefully, these ambigious questions will be seen less and less with the new, computerized exam format. The PTO always has at least a few old questions on any given exam. Sometimes up to 30% of the questions will be taken word for word from a previous exam. The computerized exams will be no different. Familiarize yourself with old PTO questions and you will recognize repeat questions.

Statistics

 

The most commonly tested areas over several years worth of exams were carefully

 

scrutinized and tabulated in the following pages. Each complete test consists of 100

 

questions (with morning and afternoon sessions are combined), therefore each 1% on the

 

table equals approximately one question. Remember, many topics occur less than one

 

percent because some questions may contain more than one topic. A summary of what

 

the table shows and how you can use this information to your advantage follows.

Total (%) 7 recent exams

Topic

Chapter 100
Access 0.9 Foreign filing 0.1 Secrecy order 0.2 Assignment 1.1 Inventorship 2.0

Chapter 200
Correction of inventorship 1.2 Application types 7.0 Conversion of applications 0.8 Priority claims 1.7

Chapter 400
Power of attorney 1.3 Verification statements 0.2

Chapter 500
Mailing procedures 1.6 Fees 1.0 Fee refunds 0.3 Small entities 1.3 General correspondence 0.2

Chapter 600
Specification 1.9 Contents of application 0.5 Notice of missing parts 0.5 Oath/declaration 0.9 IDS 1.0 Photographs/drawings 1.2

General claims 8.1 Writing claims 5.0

Chapter 700
Request for information 0.6 Reply to Office action 0.5 Suspension of action 0.1 Office action 1.0 Interviews 0.8 Petition to make special 1.5 Amendments 3.4 Preliminary amendments 0.5 Swearing back 1.3 Patent term extensions 0.4 Abandonment 1.4 Extensions 0.9 Objections 0.4 Restriction 0.5 Double patenting 0.5 Species/genus 0.2

General rejections 1.5
35 USC 101 1.6
35 USC 102 8.9
35 USC 103 3.8

Chapter 1200
Appeal 3.5 Appeal brief 0.8 Petitions 0.6

Chapter 1300
Allowance 1.0 Issue fee 0.5

Chapter 1400
Reissues 3.2 Broadening claims 0.8 Certificate of correction 0.5

Chapter 1500
Design patents 1.1
Chapter 1600

Plant patents 0.1
Chapter 1800

PCT 0.6
Chapter 1900

Duty of disclosure 0.8
Chapter 2000

Protest 0.3

Chapter 2100
General patentability 1.0 Prior art reference 3.8 Prima facie 1.2 Reduction to practice 0.2

General 35 USC 112 4.4

Chapter 2200
Reexamination 2.6 Maintenance fees 0.6 Reminder notices 0.1

Chapter 2300
Interference 1.3 Infringement 0.8

Chapter 2700
Disclaimers 0.8 PT adjustments 0.7 Patent terms 0.1

AIP Act 1999 0.1 Nonpublication request 0.2
Ethics 1.1

Although these statistics were compiled back when the PTO administered paper and pencil exams (up until 2004), we are expecting that they will remain fairly constant even for the computerized exams. The fact is, registered Patent Practitioners must know certain points from the MPEP to be even slightly competent enough to practice Patent Law. The PTO just isn’t going to deviate from having these topics on their test.

Based on these statistics, the topics to know really well are: 1) Claims (both general and writing) = tested an average of 13.1% and as often as

40% of the test (the 11/3/99 test) 2) Rejections (general, 35 U.S.C. 101, 102 and 103) = tested an average of 15.8%
(does not fluctuate significantly from test to test) 3) Types of applications = tested an average 6.2% and as much as 9.5% (the 4/18/01
test) 4) General concept of patentability = an average of 6.2% and as much as 14.1% (the
10/1/01 test)

*Appeals, reissues and reexaminations are each tested about 3-4% The four above topics; claims, rejections, application types and patentability all combined, equal an average of approximately 41% of the test. General questions about appeals, reissues and reexaminations total approximately 12% of the questions. If you combine these general questions with the four topics listed above, you will get a total of 53% of the questions on the test (over the last several year’s worth of exams).

Remember, each percent translates to one question so you can expect about 53 questions per test on the following topics alone:
•claims
•rejections
•application types
•patentability
•appeals
•reissues
•reexaminations

Therefore, these seven topics are the areas to focus on. If you take the exam knowing only these areas, you will almost get a passing score if you answered every question pertaining to them correct. Let’s say you know these areas well enough to get 45 of the 53 questions asked of them correct. You will then need to answer 25 other questions correctly in order to pass the test. The tough part is that each of the other tested topics generally have a low frequency, usually only 1 question per topic, translating to a minimum of 25 additional topics you must know to pass.

To summarize, approximately 50% of the test is covered in just 7 topics, the other 50% is divided up over about 50 different topics, 1 question per topic. Of course, this is the more difficult part, as there may be 50 other topics. Generally speaking, any particular exam will only cover about 50 of the different topics out of the 75 topics that are commonly tested.

Knowing this little statistical secret, it would be possible to pass even if you only know about half the topics really well, if you studied the right ones (the 7 major topics + 25-30 others to get above a 70%). Of course, you should know them all. The point is to just make sure you know the seven major topics inside and out.

Chapter IV:

Overview of Patents

 

Here’s a little introduction on patents and patentability to help get you started..

What does it mean to patent? A patent is a right granted to an individual or a group of individuals that protects their invention. Once granted a patent, the inventor(s) will gain the rights to any money generated from the use, sale or distribution of the invention. The invention will be protected and if an outside party sells or distributes it, the inventor(s) will be allowed to sue that outside party for monetary losses in what is known as an infringement case.

What can be protected? Determining what qualifies as a patentable invention is a highly difficult and complicated task. The MPEP states that “Anything under the sun that was invented by man qualifies as patentable”. Simple enough, but if you notice, following this statement is hundreds of pages full of exceptions and details on the idea of patentability. Scores of appeals and patent court cases have arisen due to questions regarding patentability because it still hasn’t, and probably never will be, entirely pinned down. So, defining what is patentable is not as clear cut as black and white. Inventions can encompass a wide variety of areas, even living subject matter so long as the subject matter is the result of human intervention. An example of a patentable living organism is a microorganism or a plant which is produced or altered through genetic engineering. The key is that the living matter must be a product of “human ingenuity” and not merely a naturally occurring object, such as a shrimp with its digestive tract removed. The living matter must be altered to yield unique properties for it to be patentable.

However, the alteration can even be the mere fact that the living matter is simply isolated or purified. For example, unaltered pieces of DNA may be patentable provided they have been sequenced. The PTO has decided that the act of isolating and sequencing a strand of DNA is the result of human intervention. Currently, there is huge debate surrounding the patenting of biotechnology related “inventions” like DNA. Is a piece of DNA really an invention at all? Or what about a microorganism that happens to degrade oil? Is that an invention? Who knows? We can only hope that maybe someday the PTO will have it all sorted out.

The PTO has established that laws or forces of nature are not deemed patentable. Examples of these include, but are not limited to, the law of gravity or E=mc2. At least the PTO has gotten that far. Computer related inventions may or may not be patentable. Computer programs that have a function when used with a computer are definitely patentable subject matter. Merely recording information (like music, literary works or data) on a computer-readable medium will not result in a patentable idea. For an object or idea to be patentable, it must fit into one of the following four categories; process, manufacture, machine or composition of matter. The subject matter must also be original, an unmodified, previously existing invention is never patentable. There must be a significant improvement over previous inventions for the new one to qualify. If two previous inventions are combined together, the combination must yield new and unexpected results for the invention to be considered patentable.

In addition, an invention must be useful and must actually work in order for it to be patentable. A useful invention is one in which the object already has a utility without anyone having to pursue further research to identify or reasonably confirm the utility. So, if you’ve invented a nifty little widget or doodad, but haven’t got a clue as to what it could be used for, the PTO isn’t going to be impressed and won’t give you a patent.

On the bright side, if an invention does not accomplish all of its intended function or it only has partial success, it may still be patentable. In the case of newly developed drugs, the claimed invention only needs to treat a single symptom of an incurable disease for it to have usefulness.

Patentable ideas fall within three general patent categories. These are: 1) patents:

-These patents are reserved for inventions that have a specific function.
-For example, a telephone with special features, a computer program responsible for running a robotic arm and a new drug that helps alleviate arthritis pain.

2) Design patents:
-Patents of this sort are reserved for inventions with no utility; these are purely ornamental. Additionally, the invention must be on or within an object possessing a specific function.

-For example, a design painted on canvas will not meet the qualifications of a design patent. However, the same design incorporated into the headboard of a bed is patentable.
-Additional examples include a new telephone design (one with the same features as an older model, just a unique appearance) and a basic chair fashioned from wrought iron in an esthetically pleasing, unique way.

3) Plant patents:

 

-New types of plants that are asexually reproduced are patentable. These include plants that are made through cuttings or by grafting.

Upon the issuance of a utility or a plant patent, the inventor will be afforded protection for his or her invention up to 20 years from the filing date of the application. A design patent will provide the inventor with 14 years of protection from the filing date.

How to go about getting an invention patented First, the idea must be conceived of. Then the idea must be reduced to practice, meaning that the invention is made into an actual working process or machine, etc. To apply for a patent, the inventor does not have to supply an actual prototype, but the examiner (the individual who reviews a patent application to determine whether or not it qualifies for a patent) must believe it is operable. Once an individual has conceived of an invention and reduced it to practice, an application must be filed with the Patent and Trademark Office (PTO). There are two major types of applications; nonprovisional and provisional applications.

A nonprovisional application must include a variety of elements, such as a title, abstract, specification, claims, drawings, etc. The date the PTO receives the nonprovisional application (the filing date) is the date under which protection will be provided if the patent is to issue. Once the nonprovisional application is received, the reviewing (or prosecution) process will begin.

Provisional applications must also include a fair number of elements, but they have far less requirements than nonprovisional applications. In addition, the cost for a provisional application is considerably less than the cost to file a nonprovisional application. Unlike the nonprovisional application, once the PTO receives the provisional application, the review process does not begin. Instead, the application is checked for its completeness, and if accepted, it will be filed for one year after it is received. After the one year holding period, the application will be considered abandoned (the PTO will assume the inventor is not interested or capable of obtaining a patent on the invention).

The usefulness of a provisional application lies in the fact that within the one year period, the applicant may convert the provisional to a nonprovisional application when he/she has the time and funds to do so. If the disclosed subject matter within the nonprovisional application is found to be patentable, the application will receive the filing date of the previously filed provisional application. In this manner, the invention is in a sense, “held” for the inventor. Now, if the inventor never gets around to filing the nonprovisional application, the provisional application will be abandoned. This is basically the equivalent of going into the PTO’s trash bin. In other words it is all over with.

In addition to nonprovisional and provisional applications, there are several other application types, these include; reissues, divisional applications, continuation applications, continuation-prosecution application, continuation-in-part applications, statutory invention registrations and substitute applications.

Some of the more interesting application types include the reissues which are used to correct an already allowed patent. Divisional applications may be used to “divide” up the material in a single application that contained too many inventions into a separate application. A statutory invention registration (SIR) isn’t really a patent at all, and the rest are what we will call, “complicated patent prosecution maneuvers” that we won’t get into here.

Remember, that this is just a small overview of patents to get you started. Purchase the course to get the all the details you need to pass the exam!

>>>>>>>In Conclusion<<<<<<< Hopefully, you have found this free manual to be useful and will continue on your quest to pass the Patent Bar exam and begin your career in Patent Law.

You may preview the Patent Law online course for more free information. You may also look over the 3-step Lesson Plan to learn the details of our strategy.

 

After that, the next step is yours. We can put you on the road to success. All you have to do is take it.

 

To order the complete package, click here.

 

If you have any questions pertaining to the Patent Education Series, please feel free to send an email to question@patentbarstudy.com.

 

Thank-you for your time and good luck with your Patent Law endeavor!

 

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