Question: Provide an example of a non-limiting claim that is not directed to any of the statutory categories. Answer: Examples of a non-limiting claim that is not directed to any of the statutory categories include; Products that do not have…
Have you ever wondered about the difference between a patent attorney and a patent agent? And how much you can make in this lucrative field under each title? With the rise in technology, patent attorneys and agents are in demand.…
Question: A practitioner shall provide competent representation to a client. What does competent representation to a client entail? Answer: Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation. Chapter Details: The…
So much technology invented in the 1990’s was critical to the advancement of technological innovation that got us to where we are today. Smartphones, the digital camera, targeted Internet searches and the World Wide Web itself, emojis, even SnapChat and…
Question: Name one circumstance where applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application. Answer: Applicants must timely file a notice of foreign filing to avoid abandonment of a U.S. application if: applicant…
A patent paralegal, also often referred to as an intellectual property paralegal, is a career path you can choose to take if you’re interested in patent law, trademarks, copyrighting, and trade secrets. Patent paralegals can’t legally perform law but they…
Question: Name one item any further written opinion established by the International Preliminary Examining Authority should set forth. Answer: Any further written opinion established by the International Preliminary Examining Authority should set forth, as applicable: (A) Any defects in the…
Question: List one consequence for when the patent owner fails to file a timely response to any Office action prior to an Action Closing Prosecution (ACP). Answer: If the patent owner fails to file a timely response to any Office…
While this site focuses on the Patent Bar exam, there are many other professional exams that may pertain to you and advance your career. As an example, you may be eligible to take the Fundamentals of Engineering Examination or FE exam.…
Question: Would a computer-implemented method that is deemed novel and non-obvious be effected by the tax strategy provision even if used for a tax purpose? Answer: A computer-implemented method that is deemed novel and non-obvious would not be affected by…
As most first-year law students know, getting your foot in the door at a patent law firm and looking at your first real intellectual property job can feel like a daunting task. When you’re first starting out on a summer…
Question: What are the most common basis for filing a reissue application? Answer: The most common bases for filing a reissue application are: the claims are too narrow or too broad; the disclosure contains inaccuracies; applicant failed to or incorrectly…
Question: When is a 35 U.S.C. 102 rejection with multiple references proper? Answer: A 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to: Prove the primary reference contains an…
Question: Is it true that living subject matter with markedly different characteristics from any found in nature, such as the claimed bacterium produced by genetic engineering, are excluded from patent protection by 35 U.S.C. 101? Answer: No, it is not true.…
Of course, the wheel and internal-combustion engine had already been invented long ago there were as yet no super modern innovations like cell phones or whichever device is in your hand right now as you read this. But so much…
Question: Can an Appellant request to reopen prosecution if the examiner’s answer does not have a rejection that is designated as a new ground of rejection? Answer: No, an appellant cannot request to reopen prosecution if the examiner’s answer does…
In every field, continuous learning is one of the most important ways to stay on top of constantly changing rules, regulations, and standards. This is particularly true of the patent process, which is why patent attorneys and registered patent agents…
Question: What are the two criteria for subject matter eligibility? Answer: First, the claimed invention must be in one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter…
Question: Can maintenance fees be paid in cash? Answer: Maintenance fees may not be paid in cash. A maintenance fee may be paid: with Treasury notes with national bank notes with post office money orders with certified checks over the…
If you’re interested in pursuing a degree in intellectual property law, you’re required to take and complete a variety of classes that are directly related to intellectual property law at a qualified law school. The path to this career isn’t…
Question: Name two ways a patent may be corrected or amended. Answer: A patent may be corrected or amended in eight ways, namely by: reissue, the issuance of a certificate of correction which becomes a part of the patent, disclaimer,…
Engineers and law are a powerful combination. Communication skills learned in law school complement the quantitative skills developed in engineering training. Analyzing legal cases is similar to techniques used in scientific problem-solving. Patent law is a specialized legal field which…
Question: What is the definition of fundamental economic practices? Answer: The courts have used the phrases “fundamental economic practices” or “fundamental economic concepts” to describe concepts relating to the economy and commerce, such as agreements between people in the form…
“Even the accomplished suffers setbacks sometimes. The more bitter the lessons, the greater the successes will be.” -Lucio Tan You are going to fail at some point in your patent law career. You are going to fail at some point…
Question: List two statutes that grounds for post-grant review may be raised for. Answer: Grounds for post-grant review include grounds that could be raised under 35 U.S.C. 102 or 103 including those based on prior art consisting of patents or…
Preparing for the patent bar exam is more than a little overwhelming. There are a lot of complex details to learn. But if you’re open to taking responsibility for the results and hold yourself accountable, you’re already on your way…
Question: What does the broadest reasonable interpretation (BRI) do? Answer: The BRI sets the boundaries of the coverage sought by the claim and will influence whether the claim seeks to cover subject matter that is beyond the four statutory categories…
Ever wonder just how long it takes to prepare for and pass the patent bar exam? We decided to review success stories and additional comments sent in by clients who recently passed the exam to find out what the average…
Question: When will a practitioner be responsible for another practitioner’s violation of the USPTO Rules of Professional Conduct? Answer: A practitioner shall be responsible for another practitioner’s violation of the USPTO Rules of Professional Conduct if: The practitioner orders or,…
Think positive! How many times have you heard that phrase in your life? In preparing for your career as a patent agent or attorney, you’re likely going to hear this a lot. The patent bar exam is intimidating and finding…
