Patent Bar cheat sheet

A nonprovisional application must include a specification, claims, drawings where necessary, and at least one claim; filing date is granted when these are received (35 U.S.C. 111).

Claims are examined for clarity under 35 U.S.C. 112(b); a claim is indefinite if its scope cannot be reasonably ascertained by one of ordinary skill in the art.

An independent claim stands alone; a dependent claim incorporates all limitations of the claim from which it depends and must further limit it (35 U.S.C. 112(d).

A preliminary amendment filed with the application is entered; amendments filed after a first Office action must not add new matter (35 U.S.C. 132(a)).

A Notice of Allowance triggers payment of the issue fee within 3 months; failure to pay results in abandonment unless a petition for revival is filed.

An Information Disclosure Statement must be filed before the first Office action on the merits to avoid a fee; later filing requires certification of timely submission.

A Request for Continued Examination (RCE) requires payment of a fee and a submission; it does not require a new oath or a new application.

The inventor's oath or declaration must identify each inventor and state the duty of disclosure; it may be filed after the filing date with a surcharge.

35 U.S.C. 102(a)(1) bars patentability if the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date.

35 U.S.C. 102(b)(1) provides a one-year grace period for disclosures made by the inventor or one who obtained the subject matter from the inventor.

35 U.S.C. 103 rejects claims obvious over the prior art at the time of the invention; post-AIA, the effective filing date governs.

35 U.S.C. 101 defines patentable subject matter as any new and useful process, machine, manufacture, or composition of matter, or improvement thereof.

35 U.S.C. 112(a) requires written description, enablement, and best mode; 112(b) requires particular and distinct claiming.

The statutory term of a utility patent is 20 years from the earliest non-provisional U.S. filing date, subject to patent term adjustment for delays.

A provisional application must be filed with a specification and drawings, but no claims are required; it establishes a priority date for 12 months.

37 C.F.R. 1.131 allows an affidavit to swear behind a reference under pre-AIA 102(a) or (e), but not under 102(b).

A first Office action on the merits is typically a non-final rejection; a second action is made final when the examiner considers the application ready for appeal.

After a final rejection, an applicant may file an after-final response that places the application in condition for allowance, or file an appeal or RCE.

The examiner's answer responds to the appeal brief; a reply brief may be filed within 2 months of the answer.

A restriction requirement is made when the examiner finds independent and distinct inventions; the applicant may traverse or elect without traverse.

A notice of allowability includes the reasons for allowance; the applicant may file a response to the reasons for allowance only to correct errors.

The MPEP 2100 series governs patent eligibility; a claim to a judicial exception must include an inventive concept to be patentable.

An examiner may issue a requirement for information under 37 C.F.R. 1.105; failure to comply may result in abandonment.

A pre-appeal brief conference request may be filed with the notice of appeal to seek review before the appeal brief is filed.

Novelty under 35 U.S.C. 102 requires that each and every limitation of the claim be disclosed in a single prior art reference.

Obviousness under 35 U.S.C. 103 requires a reason to combine references, such as a teaching, suggestion, or motivation, or a reasonable expectation of success.

Enablement under 35 U.S.C. 112(a) requires that the specification teach how to make and use the invention without undue experimentation.

Written description requires that the specification reasonably convey that the inventor possessed the claimed invention as of the filing date.

Best mode is a requirement of 35 U.S.C. 112(a) but is not a basis for invalidity under 35 U.S.C. 282 post-AIA.

Double patenting is statutory under 35 U.S.C. 101 and nonstatutory under 35 U.S.C. 103; a terminal disclaimer may overcome nonstatutory double patenting.

A claim is anticipated only if the reference discloses all limitations arranged as in the claim; a missing limitation defeats anticipation.

The doctrine of inherency applies when a prior art reference necessarily discloses a limitation even if not expressly stated.

37 C.F.R. 11.18 requires that a practitioner certify that a paper filed is not presented for an improper purpose and that factual contentions have evidentiary support.

A practitioner must disclose to the Office all information known to be material to patentability under 37 C.F.R. 1.56; this duty extends to the inventor and each attorney.

Conflicts of interest are governed by 37 C.F.R. 11.107; a practitioner may not represent a client if the representation is materially limited by another interest.

A practitioner may not communicate with a represented party about the subject of the representation without consent under 37 C.F.R. 11.104.

Fees must be reasonable under 37 C.F.R. 11.106; contingent fees are permitted in patent prosecution but not in certain other matters.

A practitioner must maintain client confidences under 37 C.F.R. 11.106; disclosure is permitted only to prevent a crime or fraud.

Registration to practice before the USPTO requires passing the patent bar and possessing the required technical background under 37 C.F.R. 11.7.

A practitioner may not assist a non-practitioner in the unauthorized practice of law before the Office under 37 C.F.R. 11.505.

A claim may be amended during prosecution but may not introduce new matter under 35 U.S.C. 132(a); new matter is subject to rejection.

An examiner's rejection under 35 U.S.C. 112(b) must identify the claim and the reason for indefiniteness; a response may amend or argue.

A Notice of Abandonment is issued when a response is not timely filed; revival may be requested under 37 C.F.R. 1.137 with a fee.

A divisional application is filed in response to a restriction requirement and is entitled to the parent's filing date.

A continuation application claims the same disclosure as the parent and must be filed while the parent is pending.

A continuation-in-part adds new matter and only claims supported by the new matter receive the later filing date.

The issue fee must be paid within 3 months of the Notice of Allowance; the patent issues on the next Tuesday after payment.

A statutory invention registration was a publication option; it is no longer available for applications filed after 2013.

35 U.S.C. 116 permits joint inventors to file; each inventor need not contribute to every claim, but must contribute to the invention.

35 U.S.C. 118 allows a non-inventor to file on behalf of an inventor who refuses to join, upon proof of the refusal.

35 U.S.C. 120 gives the benefit of an earlier filing date for a later application that discloses the same invention and is copending.

35 U.S.C. 119 gives a 12-month priority period for foreign applications and a 6-month period for design applications.

35 U.S.C. 154 sets the patent term at 20 years from the earliest non-provisional filing date, subject to adjustment.

35 U.S.C. 271 defines direct infringement, inducement, and contributory infringement; 271(e)(1) provides a safe harbor for FDA submissions.

35 U.S.C. 282 places the burden of proving invalidity on the challenger by clear and convincing evidence.

37 C.F.R. 1.53 governs filing dates; a specification and any required drawings must be filed to obtain a filing date.

MPEP 706.02 lists the conditions for a rejection: the claim must be compared to the prior art and the difference explained.

A rejection under 35 U.S.C. 103 must include a rationale for combining references, such as a teaching, suggestion, or motivation.

The examiner must provide a written explanation of the rejection; a bare assertion of obviousness is insufficient.

An applicant may request an interview with the examiner under MPEP 713; the interview must be summarized in a record.

A notice of appeal must be filed within 2 months of the final rejection, with a fee; the appeal brief follows within 2 months.

The Patent Trial and Appeal Board reviews examiner rejections; a new ground of rejection may be designated as a new ground.

An examiner may reopen prosecution after an appeal brief if a new ground of rejection is warranted.

An application is published 18 months after the earliest filing date unless a nonpublication request is filed.

35 U.S.C. 101 eligibility for a claim to a law of nature requires an inventive concept beyond the natural phenomenon.

The Alice/Mayo two-step test asks whether the claim is directed to a judicial exception and, if so, whether it includes an inventive concept.

A claim to a product of nature is not patentable unless it has markedly different characteristics from the natural product.

Obviousness can be established by a combination of references, a single reference, or the knowledge of one of ordinary skill in the art.

The Graham factors for obviousness are the scope and content of the prior art, differences between the prior art and the claims, the level of ordinary skill, and secondary considerations.

Secondary considerations include commercial success, long-felt need, unexpected results, and copying.

A rejection under 35 U.S.C. 112(a) for lack of enablement must be supported by evidence of undue experimentation.

A claim that recites a means-plus-function limitation is construed under 35 U.S.C. 112(f) to cover the corresponding structure and equivalents.

37 C.F.R. 11.303 requires a practitioner to keep a client reasonably informed and to comply with reasonable requests for information.

A practitioner may not charge a contingent fee in a patent prosecution matter if the fee is contingent on the issuance of a patent, unless the client is informed in writing.

A practitioner must withdraw from representation if the representation will result in a violation of law or the disciplinary rules under 37 C.F.R. 11.116.

A practitioner may not reveal client information without consent except to prevent a crime, to secure legal advice, or as required by law.

A practitioner must not make a false statement of material fact to the Office; misrepresentation may result in disciplinary action.

The duty of candor under 37 C.F.R. 1.56 requires disclosure of prior art known to be material; failure may render the patent unenforceable.

A practitioner may not solicit clients in a manner that violates 37 C.F.R. 11.701; advertising must not be false or misleading.

A practitioner must supervise non-lawyer assistants and is responsible for their conduct under 37 C.F.R. 11.503.