Complete Patent Bar Exam Notes with Verified Solutions
1. What is the earliest effective filing date of a divisional application? (102
date): Earliest effective filing date for determining prior art (102) of a divisional (or
any continuation) is the earliest filed priority application (i.e. provisional, foreign app,
or US nonprov parent)
2. What date is used to determine patent term?: The earliest filed US nonprov
app or PCT date for national phase applications; provisionals and foreign priority
dates do not affect patent term
3. When is a translation of a priority application required?: To overcome a prior
art rejection by perfecting priority claim; A translation is required to prove to the
Examiner that a foreign app in a language other than English actually supports the
priority that it's being purported to provide
4. What is the main difference between a continuation app and a continua-
tion-in-part?: CIPs must contain new matter; continuations must have an identical
disclosure to the parent application
5. What is the earliest effective filing date in a CIP?: Depends on when the matter
was introduced; matter introduced in parent app has effective filing date of parent,
and new matter has effective date of CIP filing date
6. When is a substitute app filed?: When the copendency period of the parent app
has been allowed to expire, either accidentally or intentionally; chain of priority is
broken when a substitute app is filed instead of a continuation
7. 37 CFR 1.53(d): rule for filing design applications and CPAs of designs; CPAs
result in the death of the parent (can't be copending like utility app continuations)
8. Power to Inspect: allows patent practitioner to view the whole file history of an
app; not the same as POA
9. suspending prosecution: can only be done when it is the Examiner's turn for
action; must be done via a Petition to Suspend, not a letter to the USPTO
10. When is filing a substitute app preferable?: Never; means you've messed up
and missed the period of copendency and broken the chain of priority, which is never
good
11. PASSING TIP: fee vs no fee: If you see two answers that look correct and one
involves paying a fee, the one with the fee will likely be the more correct answer
12. How do you retain foreign priority in a continuation?: Must claim the benefit
of foreign priority and must identify the app containing the certified copy of the foreign
app; do not need to keep re-filing the certified copy
13. 37 CFR 1.48(a): rule that inventorship is corrected under
14. If the contribution of an inventor is no longer being claimed, how is
inventorship affected?: Claimed subject matter determines inventorship, so if
someone's contribution is no longer being claimed, person must be removed as an
inventor under 1.48(a), even if their contribution is still in the disclosure
, Complete Patent Bar Exam Notes with Verified Solutions
15. Can provisional apps claim priority to an earlier filing?: No
16. PASSING TIP: rule 48 vs rule 76: Sometimes correcting inventorship will be
talked about under rule 48 and sometimes under rule 76, depending on what is being
asked. Rule 48 is the rule that talks about the ability and responsibility to change
inventorship; rule 76 is the mechanical rule about how you actually go about getting
the inventorship changed
17. What size paper must assignments be recorded on?: A4 or letter (8.5x11)
18. Can a nonprov that claims priority to a provisional add new subject mat-
ter?: Yes, but will be subject to different 102 dates coinciding with when the matter
was introduced into the app
19. How long is the priority period for design apps?: 6 months
20. How do you correct an inadvertent failure to claim or perfect foreign
priority?: By seeking a reissue
21. Does the translation of a non-English foreign priority app need to be sworn
in the form of a declaration?: No
22. What must property rights statements to the DOE or NASA contain?: A full
statement of the facts surrounding the conception and making of the invention
23. PASSING TIP: Need to know what each chapter of the MPEP contains: Stop
practicing this study set and go review the Table of Contents of each chapter real
quick
24. Substitute Statement: Can be submitted by a legal representative of an in-
ventor who is legally incapacitated or noncooperative (after good faith effort to
make cooperative) in lieu of an oath or declaration; Oftentimes is in the form of an
employment agreement
25. Can an assignment be recorded even if it does not convey a full and
complete interest in a patent?: Yes
26. Do amendments made in a parent design app carry over to a CPA?: Yes
27. Can copyright and mask work notices be placed in a US app?: Yes (might
wanna find out what these are tho)
28. 102(a)(1): prior patents or patent publications
29. What is the difference between the abandonment of an invention vs aban-
donment of an application?: Abandonment of an application can occur via many
different routes (e.g. failure to respond in a timely fashion); Abandonment of an
invention can only occur through disparaging the invention
30. Who is bound by duty of disclosure under rule 56?: Everyone substantively
involved in the prosecution of an application, including, but not limited to, the inventor,
the person funding the patent, and any patent practitioners must disclose anything
material to the patent application
1. What is the earliest effective filing date of a divisional application? (102
date): Earliest effective filing date for determining prior art (102) of a divisional (or
any continuation) is the earliest filed priority application (i.e. provisional, foreign app,
or US nonprov parent)
2. What date is used to determine patent term?: The earliest filed US nonprov
app or PCT date for national phase applications; provisionals and foreign priority
dates do not affect patent term
3. When is a translation of a priority application required?: To overcome a prior
art rejection by perfecting priority claim; A translation is required to prove to the
Examiner that a foreign app in a language other than English actually supports the
priority that it's being purported to provide
4. What is the main difference between a continuation app and a continua-
tion-in-part?: CIPs must contain new matter; continuations must have an identical
disclosure to the parent application
5. What is the earliest effective filing date in a CIP?: Depends on when the matter
was introduced; matter introduced in parent app has effective filing date of parent,
and new matter has effective date of CIP filing date
6. When is a substitute app filed?: When the copendency period of the parent app
has been allowed to expire, either accidentally or intentionally; chain of priority is
broken when a substitute app is filed instead of a continuation
7. 37 CFR 1.53(d): rule for filing design applications and CPAs of designs; CPAs
result in the death of the parent (can't be copending like utility app continuations)
8. Power to Inspect: allows patent practitioner to view the whole file history of an
app; not the same as POA
9. suspending prosecution: can only be done when it is the Examiner's turn for
action; must be done via a Petition to Suspend, not a letter to the USPTO
10. When is filing a substitute app preferable?: Never; means you've messed up
and missed the period of copendency and broken the chain of priority, which is never
good
11. PASSING TIP: fee vs no fee: If you see two answers that look correct and one
involves paying a fee, the one with the fee will likely be the more correct answer
12. How do you retain foreign priority in a continuation?: Must claim the benefit
of foreign priority and must identify the app containing the certified copy of the foreign
app; do not need to keep re-filing the certified copy
13. 37 CFR 1.48(a): rule that inventorship is corrected under
14. If the contribution of an inventor is no longer being claimed, how is
inventorship affected?: Claimed subject matter determines inventorship, so if
someone's contribution is no longer being claimed, person must be removed as an
inventor under 1.48(a), even if their contribution is still in the disclosure
, Complete Patent Bar Exam Notes with Verified Solutions
15. Can provisional apps claim priority to an earlier filing?: No
16. PASSING TIP: rule 48 vs rule 76: Sometimes correcting inventorship will be
talked about under rule 48 and sometimes under rule 76, depending on what is being
asked. Rule 48 is the rule that talks about the ability and responsibility to change
inventorship; rule 76 is the mechanical rule about how you actually go about getting
the inventorship changed
17. What size paper must assignments be recorded on?: A4 or letter (8.5x11)
18. Can a nonprov that claims priority to a provisional add new subject mat-
ter?: Yes, but will be subject to different 102 dates coinciding with when the matter
was introduced into the app
19. How long is the priority period for design apps?: 6 months
20. How do you correct an inadvertent failure to claim or perfect foreign
priority?: By seeking a reissue
21. Does the translation of a non-English foreign priority app need to be sworn
in the form of a declaration?: No
22. What must property rights statements to the DOE or NASA contain?: A full
statement of the facts surrounding the conception and making of the invention
23. PASSING TIP: Need to know what each chapter of the MPEP contains: Stop
practicing this study set and go review the Table of Contents of each chapter real
quick
24. Substitute Statement: Can be submitted by a legal representative of an in-
ventor who is legally incapacitated or noncooperative (after good faith effort to
make cooperative) in lieu of an oath or declaration; Oftentimes is in the form of an
employment agreement
25. Can an assignment be recorded even if it does not convey a full and
complete interest in a patent?: Yes
26. Do amendments made in a parent design app carry over to a CPA?: Yes
27. Can copyright and mask work notices be placed in a US app?: Yes (might
wanna find out what these are tho)
28. 102(a)(1): prior patents or patent publications
29. What is the difference between the abandonment of an invention vs aban-
donment of an application?: Abandonment of an application can occur via many
different routes (e.g. failure to respond in a timely fashion); Abandonment of an
invention can only occur through disparaging the invention
30. Who is bound by duty of disclosure under rule 56?: Everyone substantively
involved in the prosecution of an application, including, but not limited to, the inventor,
the person funding the patent, and any patent practitioners must disclose anything
material to the patent application
