Question: What are the 4 categories of invention recited in 35 U.S.C. 101? Answer: The four categories of invention recited in 35 U.S.C. 101 are: process, machine, manufacture, or composition of matter. Chapter Details: The answer to this question can…
Intellectual property industries account for more than 38 percent of the country’s gross domestic product. IP plays a crucial role in American life. Intellectual property law protects people’s claims of ownership on works of art, inventions, and ideas. IP attorneys…
Question: Who does the duty of disclosure in reexamination proceedings apply to? Answer: The duty of disclosure in reexamination proceedings applies to the patent owner; to each attorney or agent who represents the patent owner, and to every other individual…
As any good patent attorney or agent knows, impressing your patent law client is your first priority, above all else. All lawyers must work hard to keep their business but, more importantly, through a good attorney-client relationship, you want to…
Question: Can a post-grant review be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent? Answer:…
OK, so you’ve finished law school and are putting together a resume. If you’re looking for a career in intellectual property, a strong resume along with an equally good cover letter is your first step to getting your foot in…
Question: When can a combination as claimed show that inventions are distinct? Answer: Inventions are distinct if it can be shown that a combination as claimed: (A) does not require the particulars of the subcombination as claimed for patentability (to…
As with most social networking like Twitter and Facebook for everyday communication, LinkedIn has quickly become an indispensable resource for professionals in almost every field—and that includes intellectual property. By using the latest technology, their growth has been fast and…
Question: How can a maintenance fee be paid? Answer: A maintenance fee may be paid: with cash with Treasury notes with national bank notes with post office money orders with certified checks over the internet by electronic funds transfer (EFT),…
The Patent Training Workshop has now replaced the older, Basic Patent Training course within the PES Patent Bar review. We have produced and uploaded approximately 12 hours of video for the new course and it is ready to go for…
Question: What should a subject matter eligibility rejection under Step 2 do? Answer: A subject matter eligibility rejection under Step 2 should: Identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim…
If you’re thinking about getting into patent law, then you probably already realize gaining the right degree or degrees is a priority. Patent agents have a minimum of a Bachelor’s degree. Patent attorneys have a Bachelor’s degree in science or…
Question: Who decides petitions for derivation and conducts any ensuing derivation proceeding? Answer: The Patent Trial and Appeal Board will decide petitions for derivation and conduct any ensuing derivation proceeding. Chapter Details: The answer to this question can be found in…
Law schools welcome those with engineering and science majors. A scientific or technical background is helpful for lawyers specializing in patent law. If you’re planning on applying for law school after gaining your science or engineering degree, make sure you…
Question: List 2 examples of evidence under 37 C.F.R. 1.131(a). Answer: The allegations of fact might be supported by submitting as evidence one or more of the following: (A) attached sketches; (B) attached blueprints; (C) attached photographs; (D) attached reproductions…
We’ve gotten a lot of great feedback on the Patent Training course videos that were uploaded last week. Altogether, 45 videos were uploaded which totals right around 6 hours. This means about half of the new Patent Training Workshop is…
Question: What are the three major issues that must be completed during the examination before an interference may be called? Answer: The three major issues that must be completed during the examination are: All pending claims must be allowed, finally…
We’ve just uploaded slightly under 6 hours of training videos for the New Patent Training Workshop. If you have a current membership to the PES Patent Bar review, you can access all these videos for free within the client center.…
Question: List two status identifiers that are expected to follow the claim number in an amendment to the claims. Answer: Status is indicated in a parenthetical expression following the claim number by one of the following status identifiers: (original), (currently…
The USPTO allows test takers to take the patent bar exam in a yearly paper and pencil session. It appears this upcoming paper and pencil session may be the last one offered. Apparently, fewer and fewer people have been taking…
Question: What fees might the Office refund? Answer: The Office may refund: A fee paid by mistake (e.g., fee paid when no fee is required); or Any fee paid in excess of the amount of fee that is required. Chapter…
The USPTO posted the update schedule for the patent bar source materials earlier this week. According to this latest notice, the 08.2017 version of the MPEP + 5 supplements will start being tested as of August 16th, 2018. Between now…
Question: When may a process and apparatus for its practice be shown to be distinct inventions? Answer: Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown:…
Question: Who may a party dissatisfied with a final decision in a derivation proceeding appeal to? Answer: A party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit. Chapter Details: The…
Traditional career paths have changed. A career trajectory will have plateaus and dips as scientists change direction and build skills. Whether you’re a promising student or you have years of hands-on experience working for leading companies, career changes are often…
Question: The reasons document explains why each item of information does or does not raise a substantial new question of patentability (or SNQ) in a supplemental examination. What should a reasons document include? Answer: The reasons document explains why each…
According to a report by the U.S. Patent and Trademark Office, over 38 percent of the United States’ gross domestic product is made up of intellectual property. To name a few, the field of intellectual property law protects ownership claims…
Question: When may the prior art date of a reference under pre-AIA 35 U.S.C. 102(e) be the international filing date? Answer: The prior art date of a reference under pre-AIA 35 U.S.C. 102(e) may be the international filing date if…
Do you want to be a patent attorney, a patent agent, or get a start in the field of patent law? If so taking and passing the patent bar examination is the key to getting started. The focus of preparing…
Question: Who is barred from filing a request for ex parte reexamination of a patent? Answer: “Any person” may file a request for ex parte reexamination of a patent, unless prohibited by AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). Accordingly, there…
