Patent Bar Examination (USPTO Registration Exam) Post-Issuance Proceedings and PTAB Practice Syllabus

Post-Issuance Proceedings and PTAB Practice syllabus — full chapter and topic list

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

1. 1

   Patent Owner Corrections and Adjustments

   4 topics

   • Certificates of correction
     • Office mistakes
     • Applicant mistakes
   • Disclaimers
     • Statutory disclaimer of claims
     • Terminal disclaimers
   • Patent term adjustment and extension
   • Maintenance fees and reinstatement of expired patents
2. 2

   Reissue Applications

   4 topics

   • Grounds for reissue and the error requirement
   • Broadening reissue and the two-year limit
   • The recapture rule
   • Reissue oath/declaration and intervening rights
3. 3

   Reexamination Proceedings

   4 topics

   • Ex parte reexamination
     • Substantial new question of patentability
     • Requester participation limits
   • Supplemental examination
   • Scope of prior art usable in reexamination
   • Conduct and conclusion of reexamination
4. 4

   America Invents Act Trial Proceedings

   4 topics

   • Inter partes review (IPR)
     • Timing and threshold for institution
     • Available grounds (102 and 103 patents/printed publications)
   • Post-grant review (PGR)
     • Nine-month window
     • Broader grounds available
   • Derivation proceedings
   • PTAB appeals from examination
     • Appeal brief and examiner's answer
     • Oral hearing and Board decisions

Post-Issuance Proceedings and PTAB Practice flashcards for Patent Bar Examination (USPTO Registration Exam)

25 of 51 cards from the Post-Issuance Proceedings and PTAB Practice deck — real questions with worked answers.

1. What is a Certificate of Correction used for?

   To correct minor errors in an issued patent (e.g., clerical, typographical, or printing mistakes) without needing a full reissue, so the patent reads correctly going forward.

2. Under 35 U.S.C. 254 vs. 255, who is responsible for the error a Certificate of Correction fixes?

   Section 254 covers mistakes caused by the USPTO (corrected free of charge); Section 255 covers clerical/typographical mistakes made in good faith by the applicant (corrected for a fee).

3. What kinds of applicant errors qualify for a Certificate of Correction under 35 U.S.C. 255?

   Only mistakes of a clerical or typographical nature, or of minor character, made in good faith, and only if the correction does not require new matter or re-examination.

4. Which statute allows correction of inventorship in an issued patent, and what is required?

   35 U.S.C. 256 allows correction of named inventors (adding/removing) by Certificate of Correction when the error arose without deceptive intent; all parties and assignees must agree.

5. What is a statutory disclaimer under 35 U.S.C. 253?

   A patentee's filing that formally dedicates/disclaims one or more complete claims of the patent to the public, treating them as never having been part of the patent.

6. What is a terminal disclaimer and what is its primary purpose?

   A disclaimer of the terminal (end) portion of a patent's term; its main use is to overcome a nonstatutory obviousness-type double patenting rejection by tying the patent's expiration to a related patent and requiring common ownership.

7. What is Patent Term Adjustment (PTA) under 35 U.S.C. 154(b)?

   Additional patent term added to compensate the patentee for certain USPTO delays during prosecution of the application.

8. Describe the three categories of USPTO delay (A, B, C) that generate Patent Term Adjustment.

   A delay: failure to act within set time frames (e.g., no first office action within 14 months). B delay: failure to issue the patent within 3 years of filing. C delay: delays due to interferences/derivations, secrecy orders, or successful appeals.

9. How does applicant conduct affect Patent Term Adjustment?

   PTA is reduced by any period the applicant failed to engage in reasonable efforts to conclude prosecution (e.g., responding more than 3 months after an office action); overlapping USPTO delays are also not double-counted.

10. What is Patent Term Extension (PTE) under 35 U.S.C. 156, and what does it compensate for?

    Restoration of patent term lost while a product (drug, medical device, etc.) underwent premarket regulatory review by the FDA.

11. What are the key limits on Patent Term Extension under 35 U.S.C. 156?

    The extension cannot exceed 5 years, and the remaining patent term after approval (regulatory review period considered) generally cannot exceed 14 years; only one extension per product/patent.

12. When are maintenance fees due for a utility patent, and is there a grace period?

    They are due at 3.5, 7.5, and 11.5 years after grant, each with a 6-month grace period during which the fee can still be paid with a surcharge.

13. Which types of patents require maintenance fees?

    Only utility patents; design and plant patents do not require maintenance fees.

14. What happens if a maintenance fee is not paid within the grace period?

    The patent expires at the end of the grace period (i.e., 4, 8, or 12 years from grant).

15. How can an expired patent be reinstated after a missed maintenance fee?

    By filing a petition to accept delayed payment showing the delay was unintentional, paying the maintenance fee plus the petition/reinstatement fee.

16. What is a reissue patent and what defects can it remedy under 35 U.S.C. 251?

    A reissue corrects a patent that is wholly or partly inoperative or invalid due to a defective specification/drawing, or by the patentee claiming more or less than he had a right to claim, where the defect arose through error.

17. What is the 'error' requirement for reissue, and what does NOT count as error?

    There must be an error in the original patent that the reissue corrects. A mere change of mind, or a deliberate choice made during prosecution, is not correctable error; the error need not be 'without deceptive intent' for post-AIA patents.

18. Can reissue be used to add new matter to a patent?

    No. A reissue must be based on the original disclosure; no new matter may be introduced into the reissue application.

19. What is the surrender requirement when filing a reissue?

    The patentee must offer to surrender the original patent; the original is surrendered upon grant of the reissue, which then takes its place for the remainder of the original term.

20. What is a broadening reissue?

    A reissue that enlarges the scope of the claims of the original patent (claims something broader than originally claimed).

21. What is the two-year limit on broadening reissue?

    A reissue application that broadens the scope of the claims must be filed within two years from the grant of the original patent.

22. Can a broadening reissue be filed after two years if a broadening reissue was already filed within two years?

    Yes. If a broadening reissue was applied for within the two-year window, broadened claims may continue to be pursued/added in that reissue even after two years, as long as the public was on notice of the intent to broaden.

23. What is the recapture rule in reissue practice?

    A patentee cannot use reissue to recapture subject matter that was deliberately surrendered (e.g., by amendment or argument) during the original prosecution to obtain allowance.

24. Describe the basic three-step analysis for applying the recapture rule.

    (1) Determine whether the reissue claims are broader than the patented claims; (2) determine whether the broadening relates to subject matter surrendered during original prosecution; (3) determine whether the surrendered subject matter has been entirely or substantially recaptured.

25. Who must sign the reissue oath/declaration and what must it state?

    The reissue declaration (usually by the inventors, or assignee in certain cases) must identify at least one error being relied upon as the basis for reissue and state that the error arose without deceptive intent (for pre-AIA) / identify the error (post-AIA).

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