Patent Bar (USPTO Registration Exam)

Key Topics to Master:

• 35 U.S.C. 101 subject matter eligibility and utility
• 35 U.S.C. 102 novelty, prior art categories and statutory exceptions
• 35 U.S.C. 103 obviousness and the Graham factors
• 35 U.S.C. 112(a) written description, enablement and best mode
• 35 U.S.C. 112(b) definiteness and claim interpretation
• 35 U.S.C. 112(f) means-plus-function claiming
• AIA first-inventor-to-file versus pre-AIA first-to-invent applications
• Grace period disclosures and the inventor-originated exception

Key Topics to Master:

• Filing date requirements and accorded filing dates
• Specification, abstract, claims and drawing requirements
• Inventor's oath or declaration and substitute statements
• Micro entity, small entity and undiscounted fees
• Notices to file missing parts and incomplete applications
• Provisional applications and their conversion
• Assignments, recordation and applicant of record
• Power of attorney, correspondence address and customer number practice

Key Topics to Master:

• Non-final and final Office actions and proper replies
• Shortened statutory periods and extensions of time under 37 CFR 1.136
• After final practice, AFCP-style options and advisory actions
• Restriction requirements, election and rejoinder
• Statutory and non-statutory double patenting and terminal disclaimers
• Continuations, divisionals and continuations-in-part
• Request for continued examination practice
• Abandonment, revival and unintentional delay petitions
• Interview practice and the interview summary requirement

Key Topics to Master:

• Domestic benefit claims under 35 U.S.C. 120 and copendency
• Provisional benefit under 35 U.S.C. 119(e)
• Foreign priority under 35 U.S.C. 119(a) to (d) and certified copies
• Specific reference requirements in the application data sheet
• Delayed benefit and priority claims and the petition to accept
• Effective filing date determination for AIA applications
• Prior art exceptions under 35 U.S.C. 102(b)(2)(C) and common ownership
• Interference and derivation basics

Key Topics to Master:

• Notice of appeal, timing and fees
• Appeal brief content requirements under 37 CFR 41.37
• Examiner's answer and new grounds of rejection
• Reply brief and request for oral hearing
• Board decisions, remands and reopening prosecution
• Pre-appeal brief conference practice
• Inter partes review and post-grant review basics
• Consolidated Trial Practice Guide procedures

Key Topics to Master:

• PCT international application filing and the receiving office
• International Searching Authority, search report and written opinion
• Chapter II demand and international preliminary examination
• The 30-month time limit for entering the national stage
• 35 U.S.C. 371 national stage requirements
• Bypass continuation under 35 U.S.C. 111(a) as an alternative
• PCT Article 19 and Article 34 amendments
• Patent Prosecution Highway pilot programs, a named exam source material

Key Topics to Master:

• Reissue applications, the reissue oath and the recapture rule
• Broadening reissue and the two-year limit
• Ex parte reexamination and substantial new question of patentability
• Supplemental examination
• Certificates of correction for Office and applicant mistakes
• Statutory and terminal disclaimers after issue
• Maintenance fee due dates, grace periods and surcharges
• Patent term adjustment and patent term extension

Key Topics to Master:

• 37 CFR Part 11 USPTO Rules of Professional Conduct
• Duty of disclosure, candor and good faith under 37 CFR 1.56
• Information disclosure statements and their timing tiers
• Conflicts of interest and client confidentiality
• Signature requirements and certifications under 37 CFR 11.18
• Representation, withdrawal and revocation of power of attorney
• Unauthorised practice and limits on patent agent activity
• Changes to Representation of Others Before the USPTO final rules, a named exam source material

• 1Download the General Requirements Bulletin from uspto.gov and decide which of Categories A, B, C or D you qualify under.
• 2Order an official transcript bearing the university stamp or seal; the USPTO does not accept a diploma or a copy of a transcript.
• 3File Form PTO-158 with the $118 non-refundable application fee and the $226 registration examination fee, and answer questions 14 through 21 completely.
• 4Download the four named source materials: MPEP Ninth Edition Revision 01.2024, the Consolidated Trial Practice Guide of November 2019, the Changes to Representation of Others final rules, and the Global and IP5 PPH notice.
• 5Read MPEP Chapter 100 and 200 headings to learn the numbering scheme, because searching by section number is faster than searching by keyword on exam day.

• 1Practise finding an answer in the MPEP inside 90 seconds using the electronic version's search, since 90 scored questions in 360 minutes leaves four minutes each.
• 2Build a personal index of the twenty MPEP sections you expect to need most, keyed to the concepts rather than the chapter titles.
• 3Note that external links inside the reference materials are redacted during the exam, so learn to navigate within the documents rather than out of them.
• 4Work through MPEP Chapter 2100 section 2106 on subject matter eligibility, the longest single block in the manual.
• 5Time yourself on twenty practice questions using only the MPEP, with no notes.

• 1Study 35 U.S.C. 101 subject matter eligibility and the utility requirement.
• 2Work 35 U.S.C. 112(a) written description, enablement and best mode.
• 3Cover 112(b) definiteness and 112(f) means-plus-function interpretation.
• 4Practise identifying whether a described rejection is proper and what reply is available.
• 5Log every question you get wrong by MPEP section, not by topic name.

• 1Learn the AIA 35 U.S.C. 102 prior art categories and the 102(b) exceptions cold, since the manual is slow to search on this topic.
• 2Study the grace period and the inventor-originated disclosure exception.
• 3Cover pre-AIA 102 subsections, which still govern applications filed before March 16, 2013.
• 4Work 35 U.S.C. 103 obviousness, the Graham factors and the common ownership exception under 102(b)(2)(C).
• 5Drill effective filing date questions, which combine benefit claims with prior art dates.

• 1Study filing date requirements and what a notice to file missing parts requires.
• 2Cover the inventor's oath or declaration and substitute statement practice.
• 3Learn micro entity, small entity and undiscounted fee eligibility and the consequences of an incorrect assertion.
• 4Work provisional application practice, including conversion and the 12-month benefit period.
• 5Study assignments, recordation, power of attorney and customer number practice.

• 1Study statutory and shortened statutory periods and the extension of time rules in 37 CFR 1.136.
• 2Work through what constitutes a proper reply to a non-final and a final Office action.
• 3Cover restriction requirements, election with and without traverse, and rejoinder.
• 4Learn statutory and non-statutory double patenting and when a terminal disclaimer cures it.
• 5Study abandonment and revival, including the unintentional delay standard.

• 1Study 35 U.S.C. 120 benefit claims, copendency and the specific reference requirement.
• 2Cover 35 U.S.C. 119(e) provisional benefit and 119(a) to (d) foreign priority with certified copies.
• 3Work continuation, divisional and continuation-in-part practice under 37 CFR 1.53.
• 4Study request for continued examination practice and how it differs from a continuation.
• 5Drill delayed benefit and priority claim petitions.

• 1Work MPEP Chapter 1800 systematically, since PCT questions are heavily date-driven and reward pattern recognition.
• 2Learn the 30-month national stage deadline and what must be filed under 35 U.S.C. 371.
• 3Cover the international search report, written opinion, Chapter II demand and international preliminary examination.
• 4Study Article 19 and Article 34 amendments and when each is available.
• 5Read the Global and IP5 Patent Prosecution Highway pilot notice, which is a named exam source material.

• 1Study the notice of appeal, appeal brief requirements under 37 CFR 41.37 and the examiner's answer.
• 2Cover new grounds of rejection in an answer and the applicant's options in response.
• 3Work reply brief timing, oral hearing requests and Board decision outcomes.
• 4Read the Consolidated Trial Practice Guide of November 2019, another named source material.
• 5Cover the basic structure of inter partes review and post-grant review.

• 1Study reissue practice, the reissue oath, broadening reissue within two years and the recapture rule.
• 2Cover ex parte reexamination, the substantial new question standard and supplemental examination.
• 3Learn maintenance fee windows, grace periods and surcharges.
• 4Work 37 CFR Part 11 professional conduct rules and 37 CFR 11.18 signature certifications.
• 5Study the duty of disclosure under 37 CFR 1.56 and information disclosure statement timing tiers.

• 1Sit two full 100-question papers split into two three-hour halves with a one-hour break, mirroring the real schedule.
• 2Use only the MPEP and the other three source materials, with no personal notes, since notes are prohibited in the testing room.
• 3Track how many questions you answered from memory versus by lookup; lookups above roughly a third of the paper mean you will run out of time.
• 4Rework every miss and record the MPEP section that contained the answer.
• 5Practise flagging and returning, since you may review any question within a session.

• 1Spend most of the week on the two areas where lookups cost you the most time, usually PCT dates and post-issuance deadlines.
• 2Schedule with Prometric if you have not already, paying the $221 examination administration fee at the time of scheduling.
• 3Check that your government-issued photo ID with a signature is current and that the name matches line 1b of your application exactly.
• 4Confirm your admission letter's scheduling window has not expired; extensions cost $124 each and must be requested before the window closes.
• 5Plan a lunch you can eat quickly, since the scheduled break is one hour and unscheduled breaks let the clock run.