USPTO Exam Questions || with 100% Error-free Answers.
Key words for identifying a Markush group? correct answers "consisting of" plus "AND"
example: R is an element consisting of A, B, AND C.
what cannot be filed via fax? correct answers anything app or provisional app that is related to a
NEW application. So CPA, RCEs, amendments CAN be faxed
look for answers with CPA and RCE listed because if one is true the other will likely be true. and
if one is false, the other will likely be false correct answers ..
you appeal a ____ you petition a ____ correct answers appeal a rejection. appeals can be made
against NON final rejections and final rejections
petition on objection
inventions must be the ____ when comparing foreign and US applications filed by the same
inventor for the same invention correct answers EXACT same - not even a non obvious
improvement can be added
one cannot show nonobviousness by attacking the references individually where the rejections
are based on a combination of references. correct answers ..
rejected based on XYZ in view of ABC means.. correct answers you are being rejected based on
a combination of references. therefore, you cannot only appeal a single reference, you would
have to appeal based on all of them
is adding best mode in an amendment considered new matter? correct answers YES
what is a jepson claim and what identifies prior art? correct answers it has a preamble where
everythign in it is admitted prior art of another. then the claims all talk about what are the novel
imrpovements to this prior art
when is request for an interview prior to the first Office action typically granted? correct answers
when it is a substitute or continuing application and it must be in the EXAMINER's office (not
the practitioner's office)
if there is both a rejection and objection, do you petition or appeal? correct answers appeal! a
petition will not be allowed.
is Encouraging the client to meet with an opposing party for settlement discussions allowed?
correct answers YES
is investing the funds the client advanced for the practitioner legal fees (not costs and expenses)
in long term United States Treasury Bills in order to obtain
guaranteed protection of the principal allowed? correct answers NO
,is Entering into an agreement with the client to limit the amount of any damages which the client
may collect for any mistakes the practitioner may make during prosecution of the client's patent
application in exchange for prosecuting the application at a reduced fee. allowed? correct
answers NO
is Failing to disclose controlling legal authority which is adverse to the practitioner's client's
interest when arguing the patentability of claims in a patent
application allowed? correct answers NO
are application processing fees reduced with small entity status? correct answers FALSE - only
maintenance fees. Still must pay the same..
also to ascertain small entity status, no clear wording is required - but you must clearly indicate
HOWEVER, filing fees ARE reduced.
what foreign filing papers is precluded from receiving the benefit of a certificate of mailing or
transmission? correct answers Certificate of Mailing procedure does not apply to papers mailed
in a foreign country But they ARE permitted by fax transmission (can combine fax and
certificate of mailing from a foreign country and it's OK). "The Certificate of Mailing procedure
does not apply to papers mailed in a foreign country
"Board affirms rejection.." - what does this usually mean next? correct answers abandonment
what happens to assignment if only one of 2 inventors signs the assignment and oath, but other
named inventor does not sign anything? correct answers the other inventor cannot be excluded
from accessing the application because the entire assignment does not belong to the assignee
designated by the other inventor, even though the other inventor did not sign the oath.
also, a nonsigning inventor is entitled to inspect any papers in the application
what are the appropriate ways to respond to final rejection? correct answers 1. ammendment
cancelling rejected claims and only pursuing allowed claims
2. notice of appeal WITH fee (note: watch out for if it says "only a notice of appeal" - can't just
file only - also need fee.
if you get a rejection that you want to overcome, you have to show proof yourself as the person
filing to have the rejectoin vacated and the claim allowed, and not just demand that the examiner
show you proof. for the rejection to be overturned, the examiner should not go get the reference
themselves, you as the practioner have to show this proof correct answers
can you overcome a rejection by demonstrating that the reference is Nonanalogous art or the
reference teaches away from the claimed invention? correct answers NO! these ways will not
help you overcome the rejection (if these are the options, the answer might be "none of the
above" and also if you cite the reference disparages the claimed invention, this is not correct to
overcome either)
if you are incorporating something by reference, you do not have to explicitly outline everything
in the referenced app in your new continuation app. And if the examiner sends you a notice of
,omitted items, you don't have to respond if you already incorporated the missing items by
reference correct answers ---
is it valid if a rejection relies on more than one reference? correct answers YES
can you amend a specification to claim priority? correct answers YES - just can't add new matter
and claim something NEW
RCE does not equal PTA extension correct answers careful of RCE plus patent term adjustment
questions - usually RCE does not give more of an extension
when is a supplemental oath treated as an amendment? correct answers when filed in a REISSUE
application after Notice of allowance has been mailed (does NOT apply to nonprovisional
applications)
What happens if you file an RCE during an appeal process? (meaning before the appeal decision
has been amde) correct answers he filing of an RCE will be treated as a withdrawal of the appeal
by the applicant, regardless of whether the RCE includes the appropriate fee or a submission
You have three claims, 1 (independent, rejected), 2 (dependent on claim 1, allowed), claim 3
(independent, allowed). Your appeal does not go through on the claim one rejection. what
happens to your other claims if you dont take further action? correct answers 1 and 2 are
cancelled and examination proceeds with just claim three. Howver, if no claims were allowed
(example, there was no claim 3), the examiner could hold the appliciation abandoned, set a 1
month time for you to convert 2 to a dependent claim, or make it a dependent claim themselves
and proceed
review of a final restriction requirement is only possible as a petitionable matter before a ______.
it is not appealable to the board correct answers Technology Center Director
A notice of appeal may be filed after any of the claims has been_________, regardless of
whether the claim(s) has/have been finally rejected correct answers twice rejected
a dependent claim has to refer back to and ______the claim from which it depends. correct
answers FURTHER LIMIT.
a dependent claim CAN relate to a separate invention, and it CAN be separately classified from
the claim from which it depends
is an abandoned application considered prior art? correct answers when it is improperly
incorporated by reference in the disclosure of the US application (note: watch out for "only"
option - do not use that)
a claim CANNOT be narrowed by interpretation of the specification correct answers ____
in PCT/international applications, can you designate a contracting state via facsimilie? correct
answers NO - you cannot do this by fax. if you do this by fax, it will be ignored and you wont get
, your filing date. YOU ALSO CANNOT SEND IN A COPY OF THE INTERNATIONAL
APPLICATION VIA FAX AND YOU CANNOT ENTER YOUR FILING FEE TO ENTER
THE NATIONAL STAGE VIA FAX
what can a third party submit in a pending published application by including the application
number and fee? correct answers provides that a third party may submit in a published
application a foreign-language publication and an English language translation of pertinent
portions of the publication. The submission must "identify the application to which it is directed
by application number," . . "include the fee set forth in § 1.17(p);" include "a list of the patents or
publications submitted for consideration by the Office, including the date of publication of each
patent or publication;"
least expensive way to correct name spelling on published declaration? correct answers file a
request for corrected filing receipt and a separate letter to the office explaining that the
declaration contains a typo error and the correct spelling is listed and request correction of office
records
for an obviousness rejection, you must prove the two infringements are equivalents based on
prior art, not just because they say they are the same correct answers
can an RCE be filed after a non-final office action rejection? correct answers NO - only can file
an RCE after prosecution is closed
situations where affadavits or declarations are innapropriate correct answers (A) Where the
reference publication date is more than 1 year prior to applicant's or patent owner's effective
filing date
(B) Where the reference U.S. patent or U.S. patent application publication claims the same
patentable invention
(C) Where the reference is a foreign patent for the same invention to applicant or patent owner or
his or her legal representatives or assigns issued prior to the filing date of the domestic
application or patent on an application filed more than 12 months prior to the filing date of the
domestic application
(E) Where the reference is a prior U.S. patent to the same entity, claiming the same invention.
The question involved is one of "double patenting."
F) Where the reference is the disclosure of a prior U.S. patent to the same party, not copending.
H) Where the subject matter relied upon is prior art under
specification can just say "this invention is useful" you must be SPECIFIC in the SPECIFication
- i.e. what is it useful for?? correct answers
notice of appeal may be filed after ANY of the claims has been _______. correct answers twice
rejected, regardless of whether the claim(s) has/have been finally rejected. So no, not all of the
claims have to be twice rejected, just at least one must be twice rejected.
T/F: in rejecting claims, the examiner may rely upon facts within his own personal knowledge,
unless the examiner qualifies as an expert within the art, in which case he is precluded from
