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

What is incorporation by reference and what is the rule for incorporating essential material?

Incorporation by reference allows referenced material to be treated as part of the disclosure. Essential material (needed for 112(a)/(b) support) may be incorporated only by reference to a U.S. patent or U.S. patent application publication, not to foreign patents or non-patent literature.

How can an applicant incorporate by reference a prior application to cure a missing or inadvertently omitted portion of a specification or drawing?

Under 37 CFR 1.57, a claim for priority/benefit of a prior application present on the filing date is considered an incorporation by reference of the prior application, allowing inadvertently omitted material to be added without loss of filing date if it was contained in the prior-filed application.

Who is the correct inventor of a patent claim?

An inventor is one who contributed to the conception of at least one claim of the invention. Conception—not reduction to practice—is the touchstone. A person who only reduces an invention to practice or provides routine assistance is not an inventor.

What is joint inventorship under 35 U.S.C. 116?

Inventors may apply jointly even if they did not work together physically or at the same time, did not each contribute equally, and did not each contribute to every claim. Each joint inventor must contribute to the conception of at least one claim.

What must an inventor's oath or declaration state under 35 U.S.C. 115?

It must state that the application was made or authorized by the inventor and that the person believes himself/herself to be the original inventor of a claimed invention. It must include an acknowledgment that willful false statements are punishable.

When may the filing of the inventor's oath or declaration be postponed, and what is the deadline?

If an ADS is filed identifying each inventor, the oath/declaration may be postponed until the application is otherwise in condition for allowance, but it must be filed no later than payment of the issue fee. A surcharge applies for late filing.

What is a substitute statement and when may it be used in lieu of an oath or declaration?

Under 35 U.S.C. 115(d) and 37 CFR 1.64, an applicant (e.g., assignee) may submit a substitute statement when an inventor is deceased, legally incapacitated, cannot be found/reached after diligent effort, or refuses to sign. It must identify the inventor and the basis for using it.

Who may file and prosecute a patent application as the applicant besides the inventor?

Under 35 U.S.C. 118, an assignee, an obligated assignee, or a person with sufficient proprietary interest may file as the applicant. The inventor remains named, but a juristic entity must be represented by a patent practitioner.

How is inventorship corrected in a pending nonprovisional application?

Under 37 CFR 1.48(a), file a corrected ADS identifying each inventor by their legal name and pay the processing fee. For added inventors, a new oath/declaration from each added inventor is also required.

How is inventorship corrected in an issued patent?

Through a Certificate of Correction under 35 U.S.C. 256 / 37 CFR 1.324 when the error arose without deceptive intent, with a statement and required fee, or via a court order. This adds or deletes inventors named in the granted patent.

What is the small entity discount and who qualifies for small entity status?

Small entities receive a 60% reduction on most USPTO fees. Qualifying small entities are independent inventors, small business concerns (500 or fewer employees), and nonprofit organizations, provided no rights have been assigned/licensed to a non-small entity.

What is micro entity status and what discount does it provide?

Micro entity status (37 CFR 1.29) provides an 80% fee reduction. It is available under the gross income basis or the institution of higher education basis to applicants who also qualify as small entities.

What are the requirements for micro entity status on the 'gross income' basis?

The applicant must qualify as a small entity, not be named on more than 4 prior nonprovisional U.S. applications, not have a gross income exceeding 3 times the median household income in the prior year, and not have assigned/licensed rights to an entity exceeding that income limit.

How and when is small or micro entity status established, and what happens on loss of entitlement?

Status is established by a written assertion (small) or certification (micro) before or with the first fee paid at the discount. If entitlement is lost, a notification of loss of status must be filed before or with the next fee paid at the higher rate; status must be checked each time the issue fee and maintenance fees are paid.

What are the three principal examination-related fee components paid at filing of a utility nonprovisional?

The basic filing fee, the search fee, and the examination fee. These three together (plus any excess claims and application size fees) constitute the fees due to begin examination.

What excess claims fees apply to a utility application?

Fees are charged for each independent claim in excess of 3, for each claim (independent or dependent) in excess of 20 total, and a separate higher fee for each application containing a multiple dependent claim.

What is Patent Center and what is required for most electronic filings?

Patent Center is the USPTO's web-based system for electronic filing and managing applications (it replaced EFS-Web and PAIR). Non-DOCX/non-electronic filing of new utility/plant applications incurs a non-electronic filing fee surcharge for non-micro entities.

What filing date is accorded to an application correctly submitted through Patent Center?

The filing date is the date the USPTO electronically receives the application (in the USPTO's official time zone, Eastern Time). There is no 'Certificate of EFS/Patent Center transmission' needed because receipt is instantaneous and acknowledged.

What is a Certificate of Mailing under 37 CFR 1.8 and what does it accomplish?

A Certificate of Mailing states the date a paper is deposited with the USPS as first-class mail addressed to the USPTO. The paper is considered timely if the certificate date is within the period, even if the USPTO receives it later.

For which submissions does the Certificate of Mailing/Transmission under 37 CFR 1.8 NOT apply?

It does not apply to new patent applications, papers requiring a specific receipt date such as filing-date-establishing documents, issue fee payments in some contexts, and certain other excluded papers (e.g., agreements, papers to the PTAB filings barred by rule).

What is the 'Priority Mail Express' (formerly Express Mail) rule under 37 CFR 1.10?

A paper or fee deposited with USPS Priority Mail Express to the USPTO is accorded the date of deposit (the 'date in' on the mailing label) as its filing/receipt date, including for new applications—unlike the Certificate of Mailing.

What are the general drawing standards regarding ink, lines, and shading?

Drawings must be in black ink (or photographs where appropriate), with durable, dense, dark, uniformly thick and well-defined lines; shading is encouraged where it aids understanding. Color drawings require a petition and fee and are accepted only when they are the only practical medium.

What are the acceptable sheet sizes and margin requirements for patent drawings?

Sheets must be either 21.0 cm x 29.7 cm (A4) or 21.6 cm x 27.9 cm (8.5 x 11 inch). Margins: top 2.5 cm, left 2.5 cm, right 1.5 cm, bottom 1.0 cm, with a usable surface within those margins.

When are drawings required for an application to be granted a filing date?

Drawings are required only where they are necessary for the understanding of the subject matter sought to be patented (35 U.S.C. 113). If necessary drawings are omitted, the office accords no filing date until they are supplied (subject to the 1.57 incorporation rule).

What is required for a biological deposit to satisfy the enablement requirement?

When an invention requires a biological material not otherwise available, a deposit in a recognized International Depositary Authority (IDA) under the Budapest Treaty must be made, ensuring public access upon grant and viability/replacement assurances, with the deposit referenced in the specification.

What is the sequence listing requirement for applications disclosing nucleotide or amino acid sequences?

Applications disclosing sequences must include a sequence listing in the WIPO Standard ST.26 XML format (effective July 1, 2022) as a separate part of the disclosure, with proper identifiers; failure to comply can trigger a notice requiring correction and a fee.

How must large tables and computer program listings be submitted in an application?

Computer program listings exceeding 300 lines (60 chars/line) must be submitted as an ASCII text file (formerly on compact disc) rather than in the drawings/specification body. Large tables may likewise be submitted electronically and are incorporated into the specification by reference to the file.

What is the rule for filing a nonprovisional application in a foreign (non-English) language?

An application may be filed in a non-English language and still receive a filing date. An English translation of the non-English specification and claims, a statement that the translation is accurate, and a processing fee must be filed in response to a notice (within the time set) to avoid abandonment.

For a provisional application filed in a non-English language, when is an English translation required?

No translation is required in the provisional itself, but if benefit of that provisional is later claimed, an English translation of the non-English provisional and an accuracy statement must be filed in the nonprovisional (or the applicant must confirm they have been filed), per 37 CFR 1.78.

Compare the key differences between provisional and nonprovisional applications.

Provisional: 35 U.S.C. 111(b), no claims/oath required, never examined, auto-abandons at 12 months, lower cost, establishes priority. Nonprovisional: 35 U.S.C. 111(a), requires claims and oath/declaration, is examined, can mature into a patent, and starts the 20-year term clock.