Patent: Bar Glossary- Latest Exam
with Complete Solutions 2026
Updated.
Abandoned Application - Answer - no longer in prosecution, won't go on to issue, owner will
not gain a patent.
- can formally abandon or accidentally abandon.
Situations leading to abandonment - Answer - formally expressed by applicant or
attorney/agent
- applicant failed to act during prosecution of nonprovisional
- failed to respond to OA
- failed to pay issue fee
- provisional appl expired (12 mo after filing date)
Revive abandoned application due to lack of response by applicant - Answer - petition when
delay in reply was unavoiable/unintentional
- sometimes requires terminal disclaimer- term of patent gets cut
Abstract - Answer - focus on novel components of invention
- summary-no details necessary
- mixture of background art and new invention
- no implied phrases ("the disclosure concerns...")
- commence on separate sheet
- if machine/apparatus: show organization and operation
- if article: show method of making it
- if chemical compound: show identity and use
- if mixture: show ingredients
- if process: show steps
Access - Answer - Pending patents = never viewable by public
- Under secrecy order = only viewable if got special security clearance
- Open to the public: issued patents not under secrecy order, published SIRs, reissue
applications, requests for reexamination & papers related to proceedings, interference files
, Admissions by inventor - Answer Can never be retracted. If say something is prior art in
application, that will always be noted as prior art
Allowed application - Answer Got notice of allowance, will be issued as patent after issue fee
paid.
Alternatively, can be withdrawn from issue or abandoned.
Amendments - Answer - Never include new material
- Must be signed by: attorney/agent, assignee of entire interest or ALL assignees of partial
interests, ALL of applicants
AIA - Answer - First-to-File system
- new trial proceedings to review existing patents (cheaper than ligitation)
- shorter time to review applications
Another - Answer XYZ and XY
Appeal - Answer - when claims of application REJECTED
- to Patent Trial and Appeal Board (Board)
- appellant may withdraw, but will be abandoned if no claims allowed
When to Appeal - Answer - claims have been rejected twice
- final rejection in reexamination proceeding
- final decision of admin patent judge in interpartes proceeding
Appeal Brief - Answer - mandatory after Notice of Appeal
- must be filed 2 months from Notice of Appeal
Broadening Claims - Answer - Considered new matter
- not allowed, except when filing reissue (MUST BE within 2 years of filing of original application)
Certificate of correction - Answer - use for issued patent that has nondeceptive error
- can't use for new matter
Certificate of transmission - Answer - Must accompany all faxes
- Can't fax anything used to get application filing date
with Complete Solutions 2026
Updated.
Abandoned Application - Answer - no longer in prosecution, won't go on to issue, owner will
not gain a patent.
- can formally abandon or accidentally abandon.
Situations leading to abandonment - Answer - formally expressed by applicant or
attorney/agent
- applicant failed to act during prosecution of nonprovisional
- failed to respond to OA
- failed to pay issue fee
- provisional appl expired (12 mo after filing date)
Revive abandoned application due to lack of response by applicant - Answer - petition when
delay in reply was unavoiable/unintentional
- sometimes requires terminal disclaimer- term of patent gets cut
Abstract - Answer - focus on novel components of invention
- summary-no details necessary
- mixture of background art and new invention
- no implied phrases ("the disclosure concerns...")
- commence on separate sheet
- if machine/apparatus: show organization and operation
- if article: show method of making it
- if chemical compound: show identity and use
- if mixture: show ingredients
- if process: show steps
Access - Answer - Pending patents = never viewable by public
- Under secrecy order = only viewable if got special security clearance
- Open to the public: issued patents not under secrecy order, published SIRs, reissue
applications, requests for reexamination & papers related to proceedings, interference files
, Admissions by inventor - Answer Can never be retracted. If say something is prior art in
application, that will always be noted as prior art
Allowed application - Answer Got notice of allowance, will be issued as patent after issue fee
paid.
Alternatively, can be withdrawn from issue or abandoned.
Amendments - Answer - Never include new material
- Must be signed by: attorney/agent, assignee of entire interest or ALL assignees of partial
interests, ALL of applicants
AIA - Answer - First-to-File system
- new trial proceedings to review existing patents (cheaper than ligitation)
- shorter time to review applications
Another - Answer XYZ and XY
Appeal - Answer - when claims of application REJECTED
- to Patent Trial and Appeal Board (Board)
- appellant may withdraw, but will be abandoned if no claims allowed
When to Appeal - Answer - claims have been rejected twice
- final rejection in reexamination proceeding
- final decision of admin patent judge in interpartes proceeding
Appeal Brief - Answer - mandatory after Notice of Appeal
- must be filed 2 months from Notice of Appeal
Broadening Claims - Answer - Considered new matter
- not allowed, except when filing reissue (MUST BE within 2 years of filing of original application)
Certificate of correction - Answer - use for issued patent that has nondeceptive error
- can't use for new matter
Certificate of transmission - Answer - Must accompany all faxes
- Can't fax anything used to get application filing date
