USPTO Patent Bar Questions with Correct Answers
Timeline for PCT Correct Answer-· Within 12 months of your priority
date you must file the international application
o This can be extended by two months if unintentional, but very hefty
fee
· Around 16 months of your priority date, you receive the international
search report and written opinion (preliminary, non-binding opinion as
to novelty, inventive step, and industrial applicability) from the ISA
(international search authority)
o The opportunity to amend claims under Article 19 is available only
after the applicant has received the international search report and
written opinion of the ISA. The period for Article 19 amendments ends
at 16 months from the priority date or 2 months after the mailing date of
the report and opinion, whichever is later.
· At 18 months, international publication occurs
· At 22 months or 3 months from the issuance of your report and
opinion, whichever is later, you have at make your optional "demand"
for the international preliminary examination
o Article 34 amendments can amend the claims, the description, and the
drawings and are available during the international phase (Phase 1) if
and only if the applicant files a demand for international preliminary
examination. These arise and remain available until the end of 22
months from the priority date or 3 months after the date of mailing of the
report and opinion, whichever expire later. They are made in
conjunction with a Chapter 2 demand.
· 30 months from priority is the deadline for entering national phase.
o To enter the US national phase, you must also furnish:
§ A copy of the international application; and
,§ The national filing fee
o The oath and translation must also be provided to the designated
Office, but can be filed later with the usual surcharge
An international application must contain the following elements
Correct Answer-- A request (i.e., an indication that it is intended as an
international application), and
- Designation of at least one contracting (PCT-participating) state, and
- The name of the applicant, and
- Specification, claim, and drawing (if necessary to understanding of the
invention), and
- An abstract, and
- The fee
A PCT (international) application filed in the USPTO must have:
Correct Answer-a. At least one "applicant" who is a US national or legal
resident;
b. English description (spec, claims, and drawings if necessary);
c. Request for treatment as an international application;
d. Designation of at least one country (automatic), which can be the US;
e. Priority claim (if appropriate); and
f. Abstract (may be submitted later)
English, Applicant, Request, Priority, Designation - this gets you your
original filing date. Abstract and money can come later!
,Tricky issues regarding initial PCT filing Correct Answer-1. Fee and
abstract may be submitted late
2. "applicant" means inventor OR owner
3. Priority claim cannot be added late. (However, if unintentional can be
extended by two months with hefty fee)
4. An all-encompassing designation is automatic
5. The standard for restriction is based upon unity of invention and the
US restriction rules do not apply
Timeline for perfecting an assignment Correct Answer-i. In order to
perfect ownership of a patent, it is necessary to record within 3 months
ii. 35 USC 261 explains: "An interest that constitutes an assignment,
grant or conveyance shall be void as against any subsequent purchaser or
mortgagee for a valuable consideration, without notice, unless it is
recorded in the Patent and Trademark Office within three months from
its date or prior to the date of such subsequent purchase or mortgage."
AIA 102(a)(1) Correct Answer-1. Anything before your filing date, no
matter where in the world is prior art against you. Even if your own.
a. Could be patents or printed publications, public use of a product, sales
- ANYTING that has put your invention in the public domain. Your
efforts or others.
, AIA 102(a)(2) Correct Answer-1. Prior art against you will include the
filing dates of other ahead of your own, but only ones that have a filing
date effect as prior art, are Us patents, US published applications and
published PCT applications that designated the US (any PCT filed after
July 2004 automatically designates the US)
a. Only 3 documents that have a prior art effect as of their earliest
effective filing date anywhere in the world - can include foreign filing
date. It is a worldwide race to get a filing date!
AIA 102(c) Correct Answer-Joint Research Agreements
i. Expands ownership to include joint ventures but it has to meet the
following requirements
1. The joint venture needs to be in place before the filing date of the
application
2. The subject matter of the application has to have arisen under the joint
venture
3. The patent office has to be made aware who are the members of the
joint venture
ii. If all of that is in place then it disqualifies prior filings which have not
yet published or issued, which are owned by the joint venture or any of
the members of the joint venture!
Timeline for PCT Correct Answer-· Within 12 months of your priority
date you must file the international application
o This can be extended by two months if unintentional, but very hefty
fee
· Around 16 months of your priority date, you receive the international
search report and written opinion (preliminary, non-binding opinion as
to novelty, inventive step, and industrial applicability) from the ISA
(international search authority)
o The opportunity to amend claims under Article 19 is available only
after the applicant has received the international search report and
written opinion of the ISA. The period for Article 19 amendments ends
at 16 months from the priority date or 2 months after the mailing date of
the report and opinion, whichever is later.
· At 18 months, international publication occurs
· At 22 months or 3 months from the issuance of your report and
opinion, whichever is later, you have at make your optional "demand"
for the international preliminary examination
o Article 34 amendments can amend the claims, the description, and the
drawings and are available during the international phase (Phase 1) if
and only if the applicant files a demand for international preliminary
examination. These arise and remain available until the end of 22
months from the priority date or 3 months after the date of mailing of the
report and opinion, whichever expire later. They are made in
conjunction with a Chapter 2 demand.
· 30 months from priority is the deadline for entering national phase.
o To enter the US national phase, you must also furnish:
§ A copy of the international application; and
,§ The national filing fee
o The oath and translation must also be provided to the designated
Office, but can be filed later with the usual surcharge
An international application must contain the following elements
Correct Answer-- A request (i.e., an indication that it is intended as an
international application), and
- Designation of at least one contracting (PCT-participating) state, and
- The name of the applicant, and
- Specification, claim, and drawing (if necessary to understanding of the
invention), and
- An abstract, and
- The fee
A PCT (international) application filed in the USPTO must have:
Correct Answer-a. At least one "applicant" who is a US national or legal
resident;
b. English description (spec, claims, and drawings if necessary);
c. Request for treatment as an international application;
d. Designation of at least one country (automatic), which can be the US;
e. Priority claim (if appropriate); and
f. Abstract (may be submitted later)
English, Applicant, Request, Priority, Designation - this gets you your
original filing date. Abstract and money can come later!
,Tricky issues regarding initial PCT filing Correct Answer-1. Fee and
abstract may be submitted late
2. "applicant" means inventor OR owner
3. Priority claim cannot be added late. (However, if unintentional can be
extended by two months with hefty fee)
4. An all-encompassing designation is automatic
5. The standard for restriction is based upon unity of invention and the
US restriction rules do not apply
Timeline for perfecting an assignment Correct Answer-i. In order to
perfect ownership of a patent, it is necessary to record within 3 months
ii. 35 USC 261 explains: "An interest that constitutes an assignment,
grant or conveyance shall be void as against any subsequent purchaser or
mortgagee for a valuable consideration, without notice, unless it is
recorded in the Patent and Trademark Office within three months from
its date or prior to the date of such subsequent purchase or mortgage."
AIA 102(a)(1) Correct Answer-1. Anything before your filing date, no
matter where in the world is prior art against you. Even if your own.
a. Could be patents or printed publications, public use of a product, sales
- ANYTING that has put your invention in the public domain. Your
efforts or others.
, AIA 102(a)(2) Correct Answer-1. Prior art against you will include the
filing dates of other ahead of your own, but only ones that have a filing
date effect as prior art, are Us patents, US published applications and
published PCT applications that designated the US (any PCT filed after
July 2004 automatically designates the US)
a. Only 3 documents that have a prior art effect as of their earliest
effective filing date anywhere in the world - can include foreign filing
date. It is a worldwide race to get a filing date!
AIA 102(c) Correct Answer-Joint Research Agreements
i. Expands ownership to include joint ventures but it has to meet the
following requirements
1. The joint venture needs to be in place before the filing date of the
application
2. The subject matter of the application has to have arisen under the joint
venture
3. The patent office has to be made aware who are the members of the
joint venture
ii. If all of that is in place then it disqualifies prior filings which have not
yet published or issued, which are owned by the joint venture or any of
the members of the joint venture!
