Patent Bar Examination (USPTO Registration Exam) Patentability: Substantive Conditions Syllabus

Patentability: Substantive Conditions syllabus — full chapter and topic list

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

1. 1

   Patent-Eligible Subject Matter (35 USC 101)

   5 topics

   • Statutory categories of invention
     • Process, machine, manufacture, composition of matter
   • Judicial exceptions
     • Abstract ideas
     • Laws of nature and natural phenomena
     • Products of nature
   • The two-step eligibility framework (Alice/Mayo)
     • Directed to a judicial exception
     • Significantly more / inventive concept
   • Utility requirement
     • Specific, substantial, and credible utility
   • Double patenting
     • Statutory (same invention) double patenting
     • Nonstatutory (obviousness-type) double patenting
     • Terminal disclaimers as a remedy
2. 2

   Novelty Under the AIA (35 USC 102)

   4 topics

   • Prior art categories under AIA 102(a)
     • Public disclosures before the effective filing date
     • Effectively filed prior patents and applications
   • Exceptions and grace period under AIA 102(b)
     • Inventor's own one-year grace period disclosures
     • Disclosures derived from the inventor
     • Common ownership exception
   • Effective filing date determination
   • Anticipation analysis
     • Every element disclosed in a single reference
     • Inherency doctrine
     • Enablement of prior art
3. 3

   Pre-AIA Novelty and Statutory Bars

   4 topics

   • Pre-AIA 102(a), (e), and (g) prior art
   • Statutory bars under pre-AIA 102(b)
     • Public use and on-sale bar
     • Printed publication bar
   • Abandonment and derivation under pre-AIA 102
   • Swearing behind a reference (Rule 1.131 affidavits)
4. 4

   Nonobviousness (35 USC 103)

   4 topics

   • The Graham v. John Deere factual inquiries
     • Scope and content of prior art
     • Differences between prior art and claims
     • Level of ordinary skill in the art
   • Rationales supporting an obviousness rejection
     • Combining prior art elements
     • Simple substitution and obvious-to-try
     • Teaching, suggestion, or motivation
   • Objective indicia of nonobviousness
     • Commercial success
     • Long-felt need and failure of others
     • Unexpected results
   • Rule 1.132 declarations to rebut obviousness

Patentability: Substantive Conditions flashcards for Patent Bar Examination (USPTO Registration Exam)

23 of 51 cards from the Patentability: Substantive Conditions deck — real questions with worked answers.

1. What are the four statutory categories of patentable invention under 35 U.S.C. 101?

   Process, machine, manufacture (article of manufacture), and composition of matter. A claim must fall within at least one of these to be eligible.

2. What are the three judicial exceptions to patent eligibility under 35 U.S.C. 101?

   Laws of nature, natural phenomena (including products of nature), and abstract ideas. These are not eligible for patenting even if they fit a statutory category.

3. What is the two-step Alice/Mayo framework for subject-matter eligibility?

   Step 1: Is the claim directed to one of the four statutory categories? Step 2A: Is the claim directed to a judicial exception (law of nature, natural phenomenon, or abstract idea)? If yes, Step 2B: Does the claim recite additional elements amounting to 'significantly more' than the exception (an inventive concept)?

4. In the USPTO's expanded eligibility analysis, what are the two prongs of Step 2A?

   Prong One: Does the claim recite a judicial exception? Prong Two: Does the claim integrate that exception into a practical application? If integrated into a practical application, the claim is eligible without needing Step 2B.

5. At Step 2B of the Alice/Mayo test, what kind of additional element does NOT supply an inventive concept?

   Elements that are well-understood, routine, and conventional activity previously known in the industry, or that merely append generic computer components, do not amount to 'significantly more.'

6. What does the utility requirement of 35 U.S.C. 101 demand of an invention?

   The invention must have a specific, substantial, and credible utility (a real-world use that is not merely speculative or for further research).

7. What is the difference between specific, substantial, and credible utility?

   Specific = utility particular to the claimed subject matter (not general). Substantial = a real-world ('practical') use. Credible = believable to a person of ordinary skill based on the disclosure and the totality of evidence.

8. What is double patenting and what are its two types?

   Double patenting prevents a single inventor/assignee from obtaining two patents for the same invention. (1) Statutory ('same invention') double patenting under 35 U.S.C. 101; (2) Non-statutory (obviousness-type) double patenting, judicially created, where claims are not patentably distinct.

9. How can an obviousness-type double patenting rejection be overcome?

   By filing a terminal disclaimer that disclaims the term of the later patent extending beyond the earlier patent and requires common ownership. A terminal disclaimer cannot overcome statutory (same-invention) double patenting.

10. Which patent regime applies to a claim: AIA or pre-AIA, and what is the dividing line?

    AIA (first-inventor-to-file) applies if the application has an effective filing date on or after March 16, 2013. Pre-AIA (first-to-invent) applies if every claim has an effective filing date before March 16, 2013.

11. What are the categories of prior art under AIA 35 U.S.C. 102(a)(1)?

    Subject matter that, before the effective filing date, was patented, described in a printed publication, in public use, on sale, or otherwise available to the public.

12. What are the categories of prior art under AIA 35 U.S.C. 102(a)(2)?

    Subject matter described in a U.S. patent, published U.S. application, or published PCT application that names another inventor and was effectively filed before the claimed invention's effective filing date (the 'secret prior art' / Hilmer-abolished category).

13. Under AIA, did the 'on sale' and 'public use' bars retain a geographic limitation?

    No. Under AIA 102(a)(1) these activities are prior art regardless of where in the world they occur; the pre-AIA 'in this country' limitation was eliminated.

14. What is the AIA 102(b)(1) grace-period exception for an inventor's own disclosures?

    A disclosure made one year or less before the effective filing date is not prior art if it was made by the inventor/joint inventor, or by another who obtained the subject matter from them.

15. How does AIA 102(b)(1)(B) protect an inventor against an intervening third-party disclosure?

    A third party's disclosure within the one-year grace period is not prior art if, before that disclosure, the inventor (or one who obtained it from the inventor) had publicly disclosed the same subject matter.

16. What is the AIA 102(b)(2)(C) common-ownership exception?

    A 102(a)(2) reference is not prior art if, at the time the claimed invention was effectively filed, the subject matter and the claimed invention were owned by, or subject to assignment to, the same person (or under a joint research agreement).

17. How is the 'effective filing date' of a claimed invention defined under the AIA?

    The earlier of (1) the actual filing date of the application containing the claim, or (2) the filing date of the earliest application to which the patent/application is entitled to priority or benefit AND that describes the claimed invention (35 U.S.C. 112(a) support).

18. For a prior-art patent or published application under AIA 102(a)(2), what is its 'effectively filed' date?

    The earlier of its actual filing date or the filing date of the earliest application to which it is entitled to claim priority/benefit that describes the subject matter relied upon as prior art.

19. What is the legal standard for anticipation under 35 U.S.C. 102?

    A single prior-art reference must disclose, expressly or inherently, each and every element of the claim arranged as in the claim, enabling a person of ordinary skill to make the invention without undue experimentation.

20. What is the doctrine of inherency in an anticipation analysis?

    A reference inherently discloses a limitation if that limitation is necessarily present in the prior art, even if not expressly described; probabilities or possibilities are not enough—the missing feature must be the natural result.

21. What is the 'genus-species' rule for anticipation?

    A prior-art species anticipates a later claim to the genus, but disclosure of a genus does not necessarily anticipate a claimed species within it unless the species is disclosed with sufficient specificity (e.g., 'at once envisaged').

22. What were the three subsections of pre-AIA 35 U.S.C. 102(a)?

    Prior art if, before the applicant's invention, the invention was (1) known or used by others in this country, or (2) patented, or (3) described in a printed publication, in this or a foreign country.

23. What does pre-AIA 35 U.S.C. 102(e) cover?

    Prior art consisting of a U.S. patent or published U.S. application by another that was filed in the United States before the applicant's date of invention (using the earlier U.S. filing date as the effective reference date).

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