Patent Bar Examination (USPTO Registration Exam) Patent Application Filing and Formalities Syllabus

Patent Application Filing and Formalities syllabus — full chapter and topic list

Expand any chapter to see its topics and sub-topics. This is the whole examinable outline for Patent Application Filing and Formalities in Patent Bar Examination (USPTO Registration Exam), not a summary of it.

1. 1

   Types of Patent Applications

   5 topics

   • Nonprovisional utility applications
   • Provisional applications
     • Filing requirements and one-year pendency
     • Conversion and claiming priority
     • No examination and no claims requirement
   • Design and plant applications
     • Design patent term and single-claim rule
     • Plant patent asexual reproduction requirement
   • Continuing applications
     • Continuations
     • Divisionals
     • Continuations-in-part (CIP)
   • International applications under the PCT
2. 2

   Filing Date and Application Components

   4 topics

   • Requirements to secure a filing date
     • Specification with description
     • Filing by reference to a prior application
   • Parts of a complete application
     • Specification
     • Claims
     • Drawings
     • Oath or declaration
   • Application Data Sheet (ADS) and its corrections
   • Incorporation by reference
3. 3

   Inventorship, Oaths, and Declarations

   4 topics

   • Determining correct inventorship
   • Inventor's oath or declaration requirements
   • Substitute statements and assignee filing
   • Correction of inventorship
     • Adding or deleting inventors
     • Diligence and lack of deceptive intent considerations
4. 4

   Fees, Entity Status, and Filing Procedures

   4 topics

   • Small entity and micro entity status
     • Qualification criteria
     • Loss of entitlement and corrections
   • Filing fee, search fee, and examination fee components
   • Electronic filing via Patent Center
   • Certificate of mailing and transmission practice
5. 5

   Drawings, Sequence Listings, and Special Disclosures

   4 topics

   • Drawing standards and requirements
   • Biological deposits and sequence listing rules
   • Computer program listings and tables
   • Foreign language applications and translations

Patent Application Filing and Formalities flashcards for Patent Bar Examination (USPTO Registration Exam)

20 of 50 cards from the Patent Application Filing and Formalities deck — real questions with worked answers.

1. What is a nonprovisional utility application and what statute governs its filing?

   A nonprovisional utility application is a regular patent application filed under 35 U.S.C. 111(a) that is examined on the merits and can mature into a utility patent. It must include a specification with at least one claim and is subject to examination.

2. What three core fees are due for a nonprovisional utility application at filing?

   The basic filing fee, the search fee, and the examination fee. (Excess claims fees and application size fees may also apply.) All three must be paid, though they may be paid late with a surcharge.

3. What are the requirements to secure a filing date for a nonprovisional utility application under current rules (post-AIA, after Dec. 18, 2013)?

   Only a specification (with or without claims) is required to obtain a filing date. Drawings are required only when necessary to understand the invention; at least one claim is no longer required for the filing date but must be added to avoid abandonment.

4. What is a provisional application and what is its key limitation?

   A provisional application is filed under 35 U.S.C. 111(b) to establish an early filing/priority date. It is never examined, requires no claims or oath/declaration, automatically becomes abandoned 12 months after filing, and cannot itself mature into a patent.

5. What must a provisional application contain to receive a filing date?

   A specification complying with 35 U.S.C. 112(a) (written description and enablement) and any drawings necessary to understand the invention. No claims, oath, or declaration are required.

6. Within what time, and how, can an applicant claim the benefit of a provisional application?

   A nonprovisional must be filed within 12 months of the provisional's filing date (extendable to 14 months via a petition to restore priority for an unintentional delay) and must include a specific reference to the provisional in an ADS.

7. How long is the term of a design patent and what statute governs design applications?

   Design patents filed on or after May 13, 2015 have a 15-year term from grant (14 years if filed before that date). Design applications are governed by 35 U.S.C. 171 and cover new, original, ornamental designs for an article of manufacture.

8. How many claims may a design patent application contain and how is the claim worded?

   A design application may contain only a single claim, in the form 'The ornamental design for [the article] as shown and described.'

9. What is a plant patent and what type of plants does it cover?

   A plant patent under 35 U.S.C. 161 is granted to whoever invents or discovers and asexually reproduces a distinct and new variety of plant (other than a tuber-propagated plant or a plant found in an uncultivated state). It has a single claim.

10. What is a continuation application?

    A continuation is filed under 35 U.S.C. 120 during the pendency of a prior nonprovisional application, claiming the same invention with the same disclosure (no new matter) and at least one common inventor, to pursue additional claims.

11. What is a divisional application and when is it typically filed?

    A divisional is a later application carved out of an earlier (parent) application, claiming a distinct invention. It is commonly filed in response to a restriction requirement and discloses no new matter relative to the parent.

12. What is a continuation-in-part (CIP) application and how does it affect priority?

    A CIP repeats a substantial portion of a prior application and adds new matter. Claims supported by the original disclosure get the parent's priority date; claims relying on the new matter get only the CIP's filing date.

13. What is the deadline to claim domestic benefit of a prior nonprovisional application under 35 U.S.C. 120?

    The benefit claim must be made within the later of 4 months from the actual filing date of the later application or 16 months from the filing date of the prior application, by a specific reference in the ADS.

14. What is a PCT international application and what does filing one provide?

    A PCT application is filed under the Patent Cooperation Treaty and establishes a single international filing date effective in all designated Contracting States, providing a unified procedure for filing, searching (ISR), and optional preliminary examination before entering national stage.

15. By what deadline must a PCT applicant enter the U.S. national stage under 35 U.S.C. 371?

    National stage entry must occur within 30 months from the priority date. The basic national fee and a copy of the application (if not already communicated) are required by that date.

16. What are the parts of a complete nonprovisional utility application?

    (1) A specification including a written description, claims, and an abstract; (2) drawings when necessary; (3) the inventor's oath or declaration; and (4) the prescribed filing, search, and examination fees. An ADS is strongly recommended.

17. In what order should the sections of a utility specification appear?

    Title; cross-reference to related applications; statement on federally sponsored R&D; background; brief summary; brief description of drawings; detailed description; claim(s); abstract; and any sequence listing. The claims and abstract begin on separate pages.

18. What is an Application Data Sheet (ADS) and what information does it contain?

    An ADS (37 CFR 1.76) is a sheet containing bibliographic data: inventor information, correspondence/applicant information, domestic benefit and foreign priority claims, and representative info. Benefit and priority claims must be in the ADS to be effective.

19. How are corrections to an ADS made after filing?

    By submitting a corrected (marked-up) ADS under 37 CFR 1.76(c) showing changes with strikethrough for deletions and underlining for additions, identifying only the information being changed relative to the most recent ADS or oath/declaration.

20. In a conflict between the ADS and the inventor's oath/declaration, which controls for inventor name and residence?

    The most recent submission controls. Generally the ADS governs, but if the ADS and oath/declaration are filed together, the ADS controls except that the oath/declaration governs the inventor's legal name in some cases—per 37 CFR 1.76(d), the most recently submitted document prevails.

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