1. Straightforward True or False Answer Choices
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:
- Which of the following is in accord with proper USPTO practice and procedure?
- Which of the following is not in accordance with proper USPTO practice and the procedures set forth in the MPEP?
- Which of the following is not a USPTO recommendation or requirement?
- Which of the following is true?
- 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?
- 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. 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 correct/incorrect down on the scratch paper given to you the day of the exam or during your practice session. 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 a previous exam. Here it is:
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 2014 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 2014.
D. A request filed in January 2014, to convert a provisional application filed in the USPTO in April 2013, 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 12 months of the filing date of the provisional application if 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 2014, and claiming the benefit of the earlier filing date of a provisional application does not need to be filed during the pendency of the provisional application.
ANSWER: (B) is the most correct answer. 37 C.F.R. § 1.53(c)(3) requires the presence of a claim to convert a provisional application to a nonprovisional application. The Office 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. (A) is not the most correct answer. There is only one application, and that application has a single filing date, the filing date of the provisional application. (C) is not the most correct answer. (D) is not the most correct answer. 37 C.F.R. § 1.53(c)(3) requires that any request to convert a provisional application to a nonprovisional application be filed prior to abandonment of the provisional application. (E) is not the most correct answer. A nonprovisional application claiming the benefit of a provisional application must have been filed during the pendency of the provisional.
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.
And if you don’t know anything about patent law yet at this time, don’t worry, you’ll understand all this once you go through your study materials or review course. We’re just providing you with example questions here so you get an idea of what type of questions are on the exam.
2. Story Questions
These questions are usually fairly difficult, especially compared to the straightforward true/false answer choice questions mentioned previously. The story 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 answer choice 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.
Since the exams are administered on a computer, the PTO had stated in the past that they’ve trimmed down the size questions (due to the fact that they will not fit on a computer screen). However, we still here from clients that they saw many questions like these on the exam. There may be fewer than there were in the past and hopefully, none will be more than a paragraph in length (in the past, there were a few where just the question was an entire page long). However, they still ask you story questions designed to provide you with more information than you need to answer the question.
For many of these questions, you need to apply the information from the MPEP in order to answer the question correctly. So in many cases, you may want to mark these questions on the test and move on to easier questions. You can come back to all the marked questions at the end.
The following is an example taken from a previous exam …
Question: 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?
- 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.
- 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.
- Since the assignment was recorded, the USPTO will not determine whether the marriage condition was fulfilled and will regard the assignment as absolute.
- 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.
- 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’ve established the topic, quickly skim through the question, underlining the relevant information. The only information necessary in the story at all 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 answer C. Since the assignment was recorded, it will be regarded as absolute.
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.