Patent Agent Exam cheat sheet

35 U.S.C. 102(a)(1): prior art includes patented, described in a printed publication, public use, on sale, or otherwise available to the public before the effective filing date; 102(a)(2) covers earlier-filed published applications and patents naming another inventor.

35 U.S.C. 102(b)(1) exceptions: a disclosure within one year before the effective filing date is not prior art if it was made by the inventor or joint inventor, or by another who obtained the subject matter from the inventor, and the inventor's own intervening disclosure is also excepted.

35 U.S.C. 102(b)(2) exceptions apply to 102(a)(2) art only: subject matter obtained from the inventor, previously publicly disclosed by the inventor, or commonly owned (subject to 102(b)(2)(C) coordination).

35 U.S.C. 103: obviousness asks whether differences between claimed invention and prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill at the effective filing date; objective indicia (commercial success, long-felt need, unexpected results) rebut.

KSR (2007) permits combining references where there is an articulated reason with rational underpinning; mere obviousness to try requires some identified need or design incentive.

35 U.S.C. 101: process, machine, manufacture, or composition of matter, or improvement, that is useful, novel, and nonobvious; judicial exceptions are laws of nature, natural phenomena, and abstract ideas.

Alice/Mayo two-step: (1) is the claim directed to a judicial exception; (2) do additional elements integrate the exception into a practical application or amount to significantly more.

35 U.S.C. 112(a): written description, enablement, and best mode; 112(b) requires particularly pointing out and distinctly claiming the subject matter; 112(f) covers means-plus-function claiming.

Inventorship: each claim must name every contributor to the conception of that claim; correction of inventorship is by petition under 37 CFR 1.48, not by assignment.

Filing basics: a nonprovisional needs specification, at least one claim, drawings where necessary, and an inventor oath/declaration; a provisional needs specification and drawings but no claims or oath, and lives 12 months.

Priority chain: a nonprovisional claiming benefit of a provisional must be filed within 12 months of the provisional; foreign priority under 35 U.S.C. 119(a)-(d) is 12 months from the earliest foreign filing; PCT national stage is 30 months from priority.

Information Disclosure Statement: duty under 37 CFR 1.56 is to disclose material information; an IDS must be filed before the first action on the merits or within three months of filing, and must include copies of non-U.S. documents unless the examiner can access them.

Office action response timing: 3 months shortened statutory period with extensions to 6 months total on a fee basis; after final rejection, a response can be an amendment under 37 CFR 1.116, a request for continued examination (RCE), or an appeal.

RCE under 37 CFR 1.114: filed with a fee and a submission; it does not require a new oath and buys another full prosecution cycle; only two free RCEs are not a rule - each RCE requires a fee.

Appeal: notice of appeal within the response period; appeal brief within 2 months of the notice; examiner's answer; reply brief; then either a pre-appeal brief conference or appeal to the PTAB, with further review by the Federal Circuit or a civil action.

Examiner interviews: an interview can be requested after the first action; a complete record requires an interview summary and, if agreement is reached, a written amendment or statement of the substance of the interview.

Allowance and issue: notice of allowance with issue fee due within 3 months; issue fee payment plus any required publication fee; patent issues on a Tuesday; maintenance fees due at 3.5, 7.5, and 11.5 years from grant.

Duty to correct: a certificate of correction under 35 U.S.C. 255 fixes clerical or typographical errors; reissue under 35 U.S.C. 251 corrects errors in the patent itself, with a two-year window for broadening.

Claim categories: apparatus/machine claims read on structure; method/process claims require steps; a single claim cannot mix statutory classes without care, and a product-by-process claim is limited by the process when the product is not otherwise distinguishable.

Preamble: it is a statement of the invention's purpose; it is limiting when it recites essential structure or is relied on to define the invention, but not when it merely states an intended use.

Transitional phrases: 'comprising' is open-ended (additional elements allowed); 'consisting of' is closed; 'consisting essentially of' is semi-closed and excludes only material that would affect the basic and novel characteristics.

Means-plus-function under 112(f) requires the claim to recite 'means for' or a generic placeholder; the specification must disclose corresponding structure, and the claim covers that structure and equivalents.

Antecedent basis: every definite article or 'said' term must have an earlier introduction; a claim term first appearing with 'the' or 'said' lacks antecedent basis and can be rejected under 112(b).

Claim differentiation: a dependent claim is presumed narrower than the claim from which it depends, so a limitation in a dependent claim should not be read into the independent claim.

Phillips (Fed. Cir. 2005): claim construction relies on intrinsic evidence - claim language, specification, and prosecution history - with extrinsic evidence only as a secondary aid.

Indefiniteness: under Nautilus (2014), a claim is indefinite only if, read in light of the specification and prosecution history, it fails to inform with reasonable certainty those skilled in the art about the scope of the invention.

Drafting rules: each claim is a single sentence; use consistent terminology; avoid relative terms like 'substantially' unless the specification defines them; dependent claims add limitations and must refer to a preceding claim.

Practice before the USPTO requires registration; a registered practitioner includes attorneys and agents who pass the examination and maintain registration; pro se inventors may file without registration but cannot represent others.

37 CFR 11.18: a signature on a submission certifies a reasonable inquiry that the paper is not presented for an improper purpose, the legal contentions are warranted, and the factual contentions have evidentiary support.

37 CFR 1.56: duty of candor and good faith; each individual associated with the filing and prosecution has a duty to disclose material information; inequitable conduct can render the entire patent unenforceable.

Conflict of interest under 37 CFR 11.107: a practitioner cannot represent a client if the representation is directly adverse to another client or materially limited by responsibilities to another client or third party, absent informed consent.

Confidentiality under 37 CFR 11.106: client information cannot be revealed without informed consent, except to prevent reasonably certain death or substantial bodily harm or as required by law.

Fees: the USPTO sets fees under 35 U.S.C. 41; small entity (37 CFR 1.27) and micro entity (37 CFR 1.29) discounts apply to many fees but not all; fees are subject to change and must be verified.

Deadlines: many USPTO deadlines are extendable with fees, but some are not - e.g., the 12-month provisional conversion date, the 3-month issue fee period, and the 2-month appeal brief period are governed by specific rules.

Ex parte reexamination can be requested by any person at any time based on patents and printed publications; inter partes review before the PTAB must be filed after 9 months from grant or after termination of a post-grant review.

Fraud and inequitable conduct: withholding a known material reference with intent to deceive can make the patent unenforceable; the standard requires but-for materiality plus specific intent.

35 U.S.C. 102(a)(1): prior art includes patented, described in a printed publication, public use, on sale, or otherwise available to the public before the effective filing date; 102(a)(2) covers earlier-filed published applications and patents naming another inventor.

35 U.S.C. 102(b)(1) exceptions: a disclosure within one year before the effective filing date is not prior art if it was made by the inventor or joint inventor, or by another who obtained the subject matter from the inventor, and the inventor's own intervening disclosure is also excepted.

35 U.S.C. 102(b)(2) exceptions apply to 102(a)(2) art only: subject matter obtained from the inventor, previously publicly disclosed by the inventor, or commonly owned (subject to 102(b)(2)(C) coordination).

35 U.S.C. 103: obviousness asks whether differences between claimed invention and prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill at the effective filing date; objective indicia (commercial success, long-felt need, unexpected results) rebut.

KSR (2007) permits combining references where there is an articulated reason with rational underpinning; mere obviousness to try requires some identified need or design incentive.

35 U.S.C. 101: process, machine, manufacture, or composition of matter, or improvement, that is useful, novel, and nonobvious; judicial exceptions are laws of nature, natural phenomena, and abstract ideas.

Alice/Mayo two-step: (1) is the claim directed to a judicial exception; (2) do additional elements integrate the exception into a practical application or amount to significantly more.

35 U.S.C. 112(a): written description, enablement, and best mode; 112(b) requires particularly pointing out and distinctly claiming the subject matter; 112(f) covers means-plus-function claiming.

Inventorship: each claim must name every contributor to the conception of that claim; correction of inventorship is by petition under 37 CFR 1.48, not by assignment.

Filing basics: a nonprovisional needs specification, at least one claim, drawings where necessary, and an inventor oath/declaration; a provisional needs specification and drawings but no claims or oath, and lives 12 months.

Priority chain: a nonprovisional claiming benefit of a provisional must be filed within 12 months of the provisional; foreign priority under 35 U.S.C. 119(a)-(d) is 12 months from the earliest foreign filing; PCT national stage is 30 months from priority.

Information Disclosure Statement: duty under 37 CFR 1.56 is to disclose material information; an IDS must be filed before the first action on the merits or within three months of filing, and must include copies of non-U.S. documents unless the examiner can access them.

Office action response timing: 3 months shortened statutory period with extensions to 6 months total on a fee basis; after final rejection, a response can be an amendment under 37 CFR 1.116, a request for continued examination (RCE), or an appeal.

RCE under 37 CFR 1.114: filed with a fee and a submission; it does not require a new oath and buys another full prosecution cycle; only two free RCEs are not a rule - each RCE requires a fee.

Appeal: notice of appeal within the response period; appeal brief within 2 months of the notice; examiner's answer; reply brief; then either a pre-appeal brief conference or appeal to the PTAB, with further review by the Federal Circuit or a civil action.

Examiner interviews: an interview can be requested after the first action; a complete record requires an interview summary and, if agreement is reached, a written amendment or statement of the substance of the interview.

Allowance and issue: notice of allowance with issue fee due within 3 months; issue fee payment plus any required publication fee; patent issues on a Tuesday; maintenance fees due at 3.5, 7.5, and 11.5 years from grant.

Duty to correct: a certificate of correction under 35 U.S.C. 255 fixes clerical or typographical errors; reissue under 35 U.S.C. 251 corrects errors in the patent itself, with a two-year window for broadening.

Claim categories: apparatus/machine claims read on structure; method/process claims require steps; a single claim cannot mix statutory classes without care, and a product-by-process claim is limited by the process when the product is not otherwise distinguishable.

Preamble: it is a statement of the invention's purpose; it is limiting when it recites essential structure or is relied on to define the invention, but not when it merely states an intended use.

Transitional phrases: 'comprising' is open-ended (additional elements allowed); 'consisting of' is closed; 'consisting essentially of' is semi-closed and excludes only material that would affect the basic and novel characteristics.

Means-plus-function under 112(f) requires the claim to recite 'means for' or a generic placeholder; the specification must disclose corresponding structure, and the claim covers that structure and equivalents.

Antecedent basis: every definite article or 'said' term must have an earlier introduction; a claim term first appearing with 'the' or 'said' lacks antecedent basis and can be rejected under 112(b).

Claim differentiation: a dependent claim is presumed narrower than the claim from which it depends, so a limitation in a dependent claim should not be read into the independent claim.

Phillips (Fed. Cir. 2005): claim construction relies on intrinsic evidence - claim language, specification, and prosecution history - with extrinsic evidence only as a secondary aid.

Indefiniteness: under Nautilus (2014), a claim is indefinite only if, read in light of the specification and prosecution history, it fails to inform with reasonable certainty those skilled in the art about the scope of the invention.

Drafting rules: each claim is a single sentence; use consistent terminology; avoid relative terms like 'substantially' unless the specification defines them; dependent claims add limitations and must refer to a preceding claim.

Practice before the USPTO requires registration; a registered practitioner includes attorneys and agents who pass the examination and maintain registration; pro se inventors may file without registration but cannot represent others.

37 CFR 11.18: a signature on a submission certifies a reasonable inquiry that the paper is not presented for an improper purpose, the legal contentions are warranted, and the factual contentions have evidentiary support.

37 CFR 1.56: duty of candor and good faith; each individual associated with the filing and prosecution has a duty to disclose material information; inequitable conduct can render the entire patent unenforceable.

Conflict of interest under 37 CFR 11.107: a practitioner cannot represent a client if the representation is directly adverse to another client or materially limited by responsibilities to another client or third party, absent informed consent.

Confidentiality under 37 CFR 11.106: client information cannot be revealed without informed consent, except to prevent reasonably certain death or substantial bodily harm or as required by law.

Fees: the USPTO sets fees under 35 U.S.C. 41; small entity (37 CFR 1.27) and micro entity (37 CFR 1.29) discounts apply to many fees but not all; fees are subject to change and must be verified.

Deadlines: many USPTO deadlines are extendable with fees, but some are not - e.g., the 12-month provisional conversion date, the 3-month issue fee period, and the 2-month appeal brief period are governed by specific rules.

Ex parte reexamination can be requested by any person at any time based on patents and printed publications; inter partes review before the PTAB must be filed after 9 months from grant or after termination of a post-grant review.

Fraud and inequitable conduct: withholding a known material reference with intent to deceive can make the patent unenforceable; the standard requires but-for materiality plus specific intent.

35 U.S.C. 102(a)(1): prior art includes patented, described in a printed publication, public use, on sale, or otherwise available to the public before the effective filing date; 102(a)(2) covers earlier-filed published applications and patents naming another inventor.

35 U.S.C. 102(b)(1) exceptions: a disclosure within one year before the effective filing date is not prior art if it was made by the inventor or joint inventor, or by another who obtained the subject matter from the inventor, and the inventor's own intervening disclosure is also excepted.

35 U.S.C. 102(b)(2) exceptions apply to 102(a)(2) art only: subject matter obtained from the inventor, previously publicly disclosed by the inventor, or commonly owned (subject to 102(b)(2)(C) coordination).

35 U.S.C. 103: obviousness asks whether differences between claimed invention and prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill at the effective filing date; objective indicia (commercial success, long-felt need, unexpected results) rebut.

KSR (2007) permits combining references where there is an articulated reason with rational underpinning; mere obviousness to try requires some identified need or design incentive.

35 U.S.C. 101: process, machine, manufacture, or composition of matter, or improvement, that is useful, novel, and nonobvious; judicial exceptions are laws of nature, natural phenomena, and abstract ideas.

Alice/Mayo two-step: (1) is the claim directed to a judicial exception; (2) do additional elements integrate the exception into a practical application or amount to significantly more.

35 U.S.C. 112(a): written description, enablement, and best mode; 112(b) requires particularly pointing out and distinctly claiming the subject matter; 112(f) covers means-plus-function claiming.

Inventorship: each claim must name every contributor to the conception of that claim; correction of inventorship is by petition under 37 CFR 1.48, not by assignment.

Filing basics: a nonprovisional needs specification, at least one claim, drawings where necessary, and an inventor oath/declaration; a provisional needs specification and drawings but no claims or oath, and lives 12 months.

Priority chain: a nonprovisional claiming benefit of a provisional must be filed within 12 months of the provisional; foreign priority under 35 U.S.C. 119(a)-(d) is 12 months from the earliest foreign filing; PCT national stage is 30 months from priority.

Information Disclosure Statement: duty under 37 CFR 1.56 is to disclose material information; an IDS must be filed before the first action on the merits or within three months of filing, and must include copies of non-U.S. documents unless the examiner can access them.

Office action response timing: 3 months shortened statutory period with extensions to 6 months total on a fee basis; after final rejection, a response can be an amendment under 37 CFR 1.116, a request for continued examination (RCE), or an appeal.

RCE under 37 CFR 1.114: filed with a fee and a submission; it does not require a new oath and buys another full prosecution cycle; only two free RCEs are not a rule - each RCE requires a fee.

Appeal: notice of appeal within the response period; appeal brief within 2 months of the notice; examiner's answer; reply brief; then either a pre-appeal brief conference or appeal to the PTAB, with further review by the Federal Circuit or a civil action.

Examiner interviews: an interview can be requested after the first action; a complete record requires an interview summary and, if agreement is reached, a written amendment or statement of the substance of the interview.

Allowance and issue: notice of allowance with issue fee due within 3 months; issue fee payment plus any required publication fee; patent issues on a Tuesday; maintenance fees due at 3.5, 7.5, and 11.5 years from grant.

Duty to correct: a certificate of correction under 35 U.S.C. 255 fixes clerical or typographical errors; reissue under 35 U.S.C. 251 corrects errors in the patent itself, with a two-year window for broadening.

Claim categories: apparatus/machine claims read on structure; method/process claims require steps; a single claim cannot mix statutory classes without care, and a product-by-process claim is limited by the process when the product is not otherwise distinguishable.

Preamble: it is a statement of the invention's purpose; it is limiting when it recites essential structure or is relied on to define the invention, but not when it merely states an intended use.

Transitional phrases: 'comprising' is open-ended (additional elements allowed); 'consisting of' is closed; 'consisting essentially of' is semi-closed and excludes only material that would affect the basic and novel characteristics.

Means-plus-function under 112(f) requires the claim to recite 'means for' or a generic placeholder; the specification must disclose corresponding structure, and the claim covers that structure and equivalents.

Antecedent basis: every definite article or 'said' term must have an earlier introduction; a claim term first appearing with 'the' or 'said' lacks antecedent basis and can be rejected under 112(b).

Claim differentiation: a dependent claim is presumed narrower than the claim from which it depends, so a limitation in a dependent claim should not be read into the independent claim.

Phillips (Fed. Cir. 2005): claim construction relies on intrinsic evidence - claim language, specification, and prosecution history - with extrinsic evidence only as a secondary aid.

Indefiniteness: under Nautilus (2014), a claim is indefinite only if, read in light of the specification and prosecution history, it fails to inform with reasonable certainty those skilled in the art about the scope of the invention.

Drafting rules: each claim is a single sentence; use consistent terminology; avoid relative terms like 'substantially' unless the specification defines them; dependent claims add limitations and must refer to a preceding claim.

Practice before the USPTO requires registration; a registered practitioner includes attorneys and agents who pass the examination and maintain registration; pro se inventors may file without registration but cannot represent others.

37 CFR 11.18: a signature on a submission certifies a reasonable inquiry that the paper is not presented for an improper purpose, the legal contentions are warranted, and the factual contentions have evidentiary support.

37 CFR 1.56: duty of candor and good faith; each individual associated with the filing and prosecution has a duty to disclose material information; inequitable conduct can render the entire patent unenforceable.

Conflict of interest under 37 CFR 11.107: a practitioner cannot represent a client if the representation is directly adverse to another client or materially limited by responsibilities to another client or third party, absent informed consent.

Confidentiality under 37 CFR 11.106: client information cannot be revealed without informed consent, except to prevent reasonably certain death or substantial bodily harm or as required by law.

Fees: the USPTO sets fees under 35 U.S.C. 41; small entity (37 CFR 1.27) and micro entity (37 CFR 1.29) discounts apply to many fees but not all; fees are subject to change and must be verified.

Deadlines: many USPTO deadlines are extendable with fees, but some are not - e.g., the 12-month provisional conversion date, the 3-month issue fee period, and the 2-month appeal brief period are governed by specific rules.

Ex parte reexamination can be requested by any person at any time based on patents and printed publications; inter partes review before the PTAB must be filed after 9 months from grant or after termination of a post-grant review.

Fraud and inequitable conduct: withholding a known material reference with intent to deceive can make the patent unenforceable; the standard requires but-for materiality plus specific intent.

35 U.S.C. 102(a)(1): prior art includes patented, described in a printed publication, public use, on sale, or otherwise available to the public before the effective filing date; 102(a)(2) covers earlier-filed published applications and patents naming another inventor.

35 U.S.C. 102(b)(1) exceptions: a disclosure within one year before the effective filing date is not prior art if it was made by the inventor or joint inventor, or by another who obtained the subject matter from the inventor, and the inventor's own intervening disclosure is also excepted.

35 U.S.C. 102(b)(2) exceptions apply to 102(a)(2) art only: subject matter obtained from the inventor, previously publicly disclosed by the inventor, or commonly owned (subject to 102(b)(2)(C) coordination).

35 U.S.C. 103: obviousness asks whether differences between claimed invention and prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill at the effective filing date; objective indicia (commercial success, long-felt need, unexpected results) rebut.

KSR (2007) permits combining references where there is an articulated reason with rational underpinning; mere obviousness to try requires some identified need or design incentive.

35 U.S.C. 101: process, machine, manufacture, or composition of matter, or improvement, that is useful, novel, and nonobvious; judicial exceptions are laws of nature, natural phenomena, and abstract ideas.

Alice/Mayo two-step: (1) is the claim directed to a judicial exception; (2) do additional elements integrate the exception into a practical application or amount to significantly more.

35 U.S.C. 112(a): written description, enablement, and best mode; 112(b) requires particularly pointing out and distinctly claiming the subject matter; 112(f) covers means-plus-function claiming.

Inventorship: each claim must name every contributor to the conception of that claim; correction of inventorship is by petition under 37 CFR 1.48, not by assignment.

Filing basics: a nonprovisional needs specification, at least one claim, drawings where necessary, and an inventor oath/declaration; a provisional needs specification and drawings but no claims or oath, and lives 12 months.

Priority chain: a nonprovisional claiming benefit of a provisional must be filed within 12 months of the provisional; foreign priority under 35 U.S.C. 119(a)-(d) is 12 months from the earliest foreign filing; PCT national stage is 30 months from priority.

Information Disclosure Statement: duty under 37 CFR 1.56 is to disclose material information; an IDS must be filed before the first action on the merits or within three months of filing, and must include copies of non-U.S. documents unless the examiner can access them.

Office action response timing: 3 months shortened statutory period with extensions to 6 months total on a fee basis; after final rejection, a response can be an amendment under 37 CFR 1.116, a request for continued examination (RCE), or an appeal.

RCE under 37 CFR 1.114: filed with a fee and a submission; it does not require a new oath and buys another full prosecution cycle; only two free RCEs are not a rule - each RCE requires a fee.

Appeal: notice of appeal within the response period; appeal brief within 2 months of the notice; examiner's answer; reply brief; then either a pre-appeal brief conference or appeal to the PTAB, with further review by the Federal Circuit or a civil action.

Examiner interviews: an interview can be requested after the first action; a complete record requires an interview summary and, if agreement is reached, a written amendment or statement of the substance of the interview.

Allowance and issue: notice of allowance with issue fee due within 3 months; issue fee payment plus any required publication fee; patent issues on a Tuesday; maintenance fees due at 3.5, 7.5, and 11.5 years from grant.

Duty to correct: a certificate of correction under 35 U.S.C. 255 fixes clerical or typographical errors; reissue under 35 U.S.C. 251 corrects errors in the patent itself, with a two-year window for broadening.

Claim categories: apparatus/machine claims read on structure; method/process claims require steps; a single claim cannot mix statutory classes without care, and a product-by-process claim is limited by the process when the product is not otherwise distinguishable.

Preamble: it is a statement of the invention's purpose; it is limiting when it recites essential structure or is relied on to define the invention, but not when it merely states an intended use.

Transitional phrases: 'comprising' is open-ended (additional elements allowed); 'consisting of' is closed; 'consisting essentially of' is semi-closed and excludes only material that would affect the basic and novel characteristics.

Means-plus-function under 112(f) requires the claim to recite 'means for' or a generic placeholder; the specification must disclose corresponding structure, and the claim covers that structure and equivalents.

Antecedent basis: every definite article or 'said' term must have an earlier introduction; a claim term first appearing with 'the' or 'said' lacks antecedent basis and can be rejected under 112(b).

Claim differentiation: a dependent claim is presumed narrower than the claim from which it depends, so a limitation in a dependent claim should not be read into the independent claim.

Phillips (Fed. Cir. 2005): claim construction relies on intrinsic evidence - claim language, specification, and prosecution history - with extrinsic evidence only as a secondary aid.

Indefiniteness: under Nautilus (2014), a claim is indefinite only if, read in light of the specification and prosecution history, it fails to inform with reasonable certainty those skilled in the art about the scope of the invention.

Drafting rules: each claim is a single sentence; use consistent terminology; avoid relative terms like 'substantially' unless the specification defines them; dependent claims add limitations and must refer to a preceding claim.

Practice before the USPTO requires registration; a registered practitioner includes attorneys and agents who pass the examination and maintain registration; pro se inventors may file without registration but cannot represent others.

37 CFR 11.18: a signature on a submission certifies a reasonable inquiry that the paper is not presented for an improper purpose, the legal contentions are warranted, and the factual contentions have evidentiary support.

37 CFR 1.56: duty of candor and good faith; each individual associated with the filing and prosecution has a duty to disclose material information; inequitable conduct can render the entire patent unenforceable.

Conflict of interest under 37 CFR 11.107: a practitioner cannot represent a client if the representation is directly adverse to another client or materially limited by responsibilities to another client or third party, absent informed consent.

Confidentiality under 37 CFR 11.106: client information cannot be revealed without informed consent, except to prevent reasonably certain death or substantial bodily harm or as required by law.

Fees: the USPTO sets fees under 35 U.S.C. 41; small entity (37 CFR 1.27) and micro entity (37 CFR 1.29) discounts apply to many fees but not all; fees are subject to change and must be verified.

Deadlines: many USPTO deadlines are extendable with fees, but some are not - e.g., the 12-month provisional conversion date, the 3-month issue fee period, and the 2-month appeal brief period are governed by specific rules.

Ex parte reexamination can be requested by any person at any time based on patents and printed publications; inter partes review before the PTAB must be filed after 9 months from grant or after termination of a post-grant review.

Fraud and inequitable conduct: withholding a known material reference with intent to deceive can make the patent unenforceable; the standard requires but-for materiality plus specific intent.

35 U.S.C. 102(a)(1): prior art includes patented, described in a printed publication, public use, on sale, or otherwise available to the public before the effective filing date; 102(a)(2) covers earlier-filed published applications and patents naming another inventor.

35 U.S.C. 102(b)(1) exceptions: a disclosure within one year before the effective filing date is not prior art if it was made by the inventor or joint inventor, or by another who obtained the subject matter from the inventor, and the inventor's own intervening disclosure is also excepted.

35 U.S.C. 102(b)(2) exceptions apply to 102(a)(2) art only: subject matter obtained from the inventor, previously publicly disclosed by the inventor, or commonly owned (subject to 102(b)(2)(C) coordination).

35 U.S.C. 103: obviousness asks whether differences between claimed invention and prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill at the effective filing date; objective indicia (commercial success, long-felt need, unexpected results) rebut.

KSR (2007) permits combining references where there is an articulated reason with rational underpinning; mere obviousness to try requires some identified need or design incentive.

35 U.S.C. 101: process, machine, manufacture, or composition of matter, or improvement, that is useful, novel, and nonobvious; judicial exceptions are laws of nature, natural phenomena, and abstract ideas.

Alice/Mayo two-step: (1) is the claim directed to a judicial exception; (2) do additional elements integrate the exception into a practical application or amount to significantly more.

35 U.S.C. 112(a): written description, enablement, and best mode; 112(b) requires particularly pointing out and distinctly claiming the subject matter; 112(f) covers means-plus-function claiming.

Inventorship: each claim must name every contributor to the conception of that claim; correction of inventorship is by petition under 37 CFR 1.48, not by assignment.

Filing basics: a nonprovisional needs specification, at least one claim, drawings where necessary, and an inventor oath/declaration; a provisional needs specification and drawings but no claims or oath, and lives 12 months.

Priority chain: a nonprovisional claiming benefit of a provisional must be filed within 12 months of the provisional; foreign priority under 35 U.S.C. 119(a)-(d) is 12 months from the earliest foreign filing; PCT national stage is 30 months from priority.

Information Disclosure Statement: duty under 37 CFR 1.56 is to disclose material information; an IDS must be filed before the first action on the merits or within three months of filing, and must include copies of non-U.S. documents unless the examiner can access them.

Office action response timing: 3 months shortened statutory period with extensions to 6 months total on a fee basis; after final rejection, a response can be an amendment under 37 CFR 1.116, a request for continued examination (RCE), or an appeal.

RCE under 37 CFR 1.114: filed with a fee and a submission; it does not require a new oath and buys another full prosecution cycle; only two free RCEs are not a rule - each RCE requires a fee.

Appeal: notice of appeal within the response period; appeal brief within 2 months of the notice; examiner's answer; reply brief; then either a pre-appeal brief conference or appeal to the PTAB, with further review by the Federal Circuit or a civil action.

Examiner interviews: an interview can be requested after the first action; a complete record requires an interview summary and, if agreement is reached, a written amendment or statement of the substance of the interview.

Allowance and issue: notice of allowance with issue fee due within 3 months; issue fee payment plus any required publication fee; patent issues on a Tuesday; maintenance fees due at 3.5, 7.5, and 11.5 years from grant.

Duty to correct: a certificate of correction under 35 U.S.C. 255 fixes clerical or typographical errors; reissue under 35 U.S.C. 251 corrects errors in the patent itself, with a two-year window for broadening.

Claim categories: apparatus/machine claims read on structure; method/process claims require steps; a single claim cannot mix statutory classes without care, and a product-by-process claim is limited by the process when the product is not otherwise distinguishable.

Preamble: it is a statement of the invention's purpose; it is limiting when it recites essential structure or is relied on to define the invention, but not when it merely states an intended use.

Transitional phrases: 'comprising' is open-ended (additional elements allowed); 'consisting of' is closed; 'consisting essentially of' is semi-closed and excludes only material that would affect the basic and novel characteristics.

Means-plus-function under 112(f) requires the claim to recite 'means for' or a generic placeholder; the specification must disclose corresponding structure, and the claim covers that structure and equivalents.

Antecedent basis: every definite article or 'said' term must have an earlier introduction; a claim term first appearing with 'the' or 'said' lacks antecedent basis and can be rejected under 112(b).

Claim differentiation: a dependent claim is presumed narrower than the claim from which it depends, so a limitation in a dependent claim should not be read into the independent claim.

Phillips (Fed. Cir. 2005): claim construction relies on intrinsic evidence - claim language, specification, and prosecution history - with extrinsic evidence only as a secondary aid.

Indefiniteness: under Nautilus (2014), a claim is indefinite only if, read in light of the specification and prosecution history, it fails to inform with reasonable certainty those skilled in the art about the scope of the invention.

Drafting rules: each claim is a single sentence; use consistent terminology; avoid relative terms like 'substantially' unless the specification defines them; dependent claims add limitations and must refer to a preceding claim.

Practice before the USPTO requires registration; a registered practitioner includes attorneys and agents who pass the examination and maintain registration; pro se inventors may file without registration but cannot represent others.

37 CFR 11.18: a signature on a submission certifies a reasonable inquiry that the paper is not presented for an improper purpose, the legal contentions are warranted, and the factual contentions have evidentiary support.

37 CFR 1.56: duty of candor and good faith; each individual associated with the filing and prosecution has a duty to disclose material information; inequitable conduct can render the entire patent unenforceable.

Conflict of interest under 37 CFR 11.107: a practitioner cannot represent a client if the representation is directly adverse to another client or materially limited by responsibilities to another client or third party, absent informed consent.

Confidentiality under 37 CFR 11.106: client information cannot be revealed without informed consent, except to prevent reasonably certain death or substantial bodily harm or as required by law.

Fees: the USPTO sets fees under 35 U.S.C. 41; small entity (37 CFR 1.27) and micro entity (37 CFR 1.29) discounts apply to many fees but not all; fees are subject to change and must be verified.

Deadlines: many USPTO deadlines are extendable with fees, but some are not - e.g., the 12-month provisional conversion date, the 3-month issue fee period, and the 2-month appeal brief period are governed by specific rules.

Ex parte reexamination can be requested by any person at any time based on patents and printed publications; inter partes review before the PTAB must be filed after 9 months from grant or after termination of a post-grant review.

Fraud and inequitable conduct: withholding a known material reference with intent to deceive can make the patent unenforceable; the standard requires but-for materiality plus specific intent.