Intellectual Property Association March 7th, 2016

Registration is required to represent patent applicants before the U.S. Patent & Trademark Office. Registration is not required for patent litigation, but some firms may prefer you to register. Types of practitioners: ─ Attorneys ─ Agents

Administered by USPTO Office of Enrollment and Discipline (OED): See General Requirements Bulletin at: for full details on the registration process.

Registration requires: ─ U.S. citizen / resident alien status ─ qualifying moral character and fitness ─ scientific and technical training ─ passing the examination itself ─ payment of various fees: Application Fee: $40 Registration Examination Fee: $200 Service Fee: $150 No Annual Registration Fee

Biology Biochemistry Botany Computer Science (accredited) Electronics Technology Food Technology General Chemistry Marine Technology Microbiology Molecular Biology Organic Chemistry Pharmacology Physics Textile Technology Aeronautical Engineering Agricultural Engineering Biomedical Engineering Ceramic Engineering Chemical Engineering Civil Engineering Computer Engineering Electrical Engineering Electrochemical Engineering Engineering Physics General Engineering Geological Engineering Industrial Engineering Mechanical Engineering Metallurgical Engineering Mining Engineering Nuclear Engineering Petroleum Engineering Category A: Bachelor’s Degree in one of the following:

Category B: Bachelor’s Degree in another subject Option semester hours in physics. Option hours in a combination of the following: 8 hours of chemistry or 8 hours of physics, and 24 hours in biology, botany, microbiology, or molecular biology. Option hours in chemistry. Option hours in a combination of the following: 8 hours of chemistry or 8 hours of physics, and 32 hours in chemistry, physics, biology, botany, microbiology, molecular biology, or engineering, or some computer science. ** Must provide transcripts and official descriptions from the catalogs of the year in which you took the course.

Category C: Practical engineering or scientific experience Taken and passed the Fundamentals of Engineering (FE) exam.

100 multiple-choice questions (90 scored): ─ 50 morning session (3 hours) ─ 50 afternoon session (3 hours) Limited “open book” examination: ─ Manual of Patent Examining Procedure (MPEP). ─ Provided electronically (as searchable PDF) or hard copy. Administration: ─ computer administration - Prometric. ─ paper administration: July 21 and 22, 2009 in Alexandria, VA. Deadline for application May 15, Must answer 70% of scored questions correctly to pass.

Process: Submit application (available on OED website). Following approval (about one month), schedule test date with Thomson Prometric within 90 days. Test centers: Indy (2), Terre Haute, Carmel, Louisville (2), Lafayette, Evansville, Cincinnati. Receive unofficial test result at end of exam. Official results come later. Pay $100 registration fee. Receive registration certificate automatically.

Types of Questions: ─ Substantive Patent Law ─ USPTO Rules and Procedures

Claim 1 of an application recites “[a]n article comprising: (a) a copper substrate; and (b) a electrically insulating layer on said substrate.” The specification defines the term “copper” as being elemental copper or copper alloys. In accordance with the patent laws, rules and procedures as related in the MPEP, for purposes of searching and examining the claim, the examiner should interpret the term “copper” in the claim as reading on: (A) Elemental copper only, based on the plain meaning of “copper.” (B) Copper alloys only, based on the special definition in the specification. (C) Elemental copper and copper alloys, based on the special definition in the specification. (D) Any material that contains copper, including copper compounds. (E) None of the above.

Claim 1 of an application recites “[a]n article comprising: (a) a copper substrate; and (b) a electrically insulating layer on said substrate.” The specification defines the term “copper” as being elemental copper or copper alloys. In accordance with the patent laws, rules and procedures as related in the MPEP, for purposes of searching and examining the claim, the examiner should interpret the term “copper” in the claim as reading on: (A) Elemental copper only, based on the plain meaning of “copper.” (B) Copper alloys only, based on the special definition in the specification. (C) Elemental copper and copper alloys, based on the special definition in the specification. (D) Any material that contains copper, including copper compounds. (E) None of the above.

In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is patentable subject matter under 35 USC 101? (A) A novel and unobvious abstract idea. (B) A previously undiscovered law of nature. (C) A billing process containing mathematical algorithms producing a written invoice. (D) A novel and unobvious discovery of a physical phenomenon. (E) All of the above.

In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following is patentable subject matter under 35 USC 101? (A) A novel and unobvious abstract idea. (B) A previously undiscovered law of nature. (C) A billing process containing mathematical algorithms producing a written invoice. (D) A novel and unobvious discovery of a physical phenomenon. (E) All of the above.

In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following fees may not be reduced by 50 percent for “small entities”? (A) The basic filing fee for a design patent application. (B) The fee for a disclaimer. (C) The fee for a petition for an extension of time. (D) The fee for recording a document affecting title. (E) The maintenance fee due at 3 years and six months after grant.

In accordance with the patent laws, rules and procedures as related in the MPEP, which of the following fees may not be reduced by 50 percent for “small entities”? (A) The basic filing fee for a design patent application. (B) The fee for a disclaimer. (C) The fee for a petition for an extension of time. (D) The fee for recording a document affecting title. (E) The maintenance fee due at 3 years and six months after grant.

A registered practitioner filed a utility patent application on May 15, 2000 pursuant to 35 USC 111(a) claiming a detergent composition. On May 15, 2002 the Office mailed a non-final Office action setting a 3-month period for reply. A proper reply was mailed on August 15, 2002 by first-class mail with sufficient postage to the USPTO. The reply was received by the USPTO on September 15, On September 30, 2002, the Office mailed a final Office action. On October 15, 2002, the Office received a Request for Continued Examination (RCE) meeting all of the requirements of 37 CFR On October 30, 2002, the USPTO mailed a Notice of Allowance in view of the RCE and amendment. The utility application issued on February 11, Which of the following statements is in accord with the patent laws, rules and procedures as related in the MPEP concerning the amount of additional term applicant X would receive because of Patent Term Adjustment (PTA)? (A) The patentee would earn PTA because the Office failed to mail at least one notification under 35 USC 132 or notice of allowance under 35 USC 151 no later than fourteen months after the date the application was filed under 35 USC 111(a) but would lose some earned PTA because applicant did not file a response to the non-final rejection within three months. (B) The patentee would earn PTA because the Office failed to mail at least one notification under 35 USC 132 or notice of allowance under 35 USC 151 no later than fourteen months after the date the application was filed under 35 USC 111(a) and would not lose any earned PTA because applicant filed a response to the non final rejection within three months. (C) The patentee would not earn any additional time under the provisions of PTA because the application is utility application, not a design application. (D) The patentee would not earn any additional time because the application was filed prior to May 29, 2000 and the filing of the RCE would not make the application eligible for PTA. (E) The patentee would earn PTA because the filing of the RCE on October 15, 2002 makes the application eligible for PTA and the Office did not mail at least one notification under 35 USC or notice of allowance under 35 USC 151 within 14 months of the date the application was filed under 35 USC 111(a).

A registered practitioner filed a utility patent application on May 15, 2000 pursuant to 35 USC 111(a) claiming a detergent composition. On May 15, 2002 the Office mailed a non-final Office action setting a 3-month period for reply. A proper reply was mailed on August 15, 2002 by first-class mail with sufficient postage to the USPTO. The reply was received by the USPTO on September 15, On September 30, 2002, the Office mailed a final Office action. On October 15, 2002, the Office received a Request for Continued Examination (RCE) meeting all of the requirements of 37 CFR On October 30, 2002, the USPTO mailed a Notice of Allowance in view of the RCE and amendment. The utility application issued on February 11, Which of the following statements is in accord with the patent laws, rules and procedures as related in the MPEP concerning the amount of additional term applicant X would receive because of Patent Term Adjustment (PTA)? (A) The patentee would earn PTA because the Office failed to mail at least one notification under 35 USC 132 or notice of allowance under 35 USC 151 no later than fourteen months after the date the application was filed under 35 USC 111(a) but would lose some earned PTA because applicant did not file a response to the non-final rejection within three months. (B) The patentee would earn PTA because the Office failed to mail at least one notification under 35 USC 132 or notice of allowance under 35 USC 151 no later than fourteen months after the date the application was filed under 35 USC 111(a) and would not lose any earned PTA because applicant filed a response to the non final rejection within three months. (C) The patentee would not earn any additional time under the provisions of PTA because the application is utility application, not a design application. (D) The patentee would not earn any additional time because the application was filed prior to May 29, 2000 and the filing of the RCE would not make the application eligible for PTA. (E) The patentee would earn PTA because the filing of the RCE on October 15, 2002 makes the application eligible for PTA and the Office did not mail at least one notification under 35 USC or notice of allowance under 35 USC 151 within 14 months of the date the application was filed under 35 USC 111(a).

A patent specification discloses a personal computer comprising a microprocessor and a random access memory. There is no disclosure in the specification of the minimum amount of storage for the random access memory. In the disclosed preferred embodiment, the microprocessor has a clock speed of megahertz. Claims 9 and 10, presented below, are original claims in the application. Claim 11, presented below, was added by amendment after an Office action. 9. A personal computer comprising a microprocessor and a random access memory that includes at least 1 gigabyte of storage. 10. The personal computer of Claim 9, wherein the microprocessor has a clock speed of megahertz. 11. The personal computer of Claim 10, wherein the random access memory is greater than ½ gigabyte of storage. Which of the following statements is or are in accord with the patent laws, rules and procedures as related in the MPEP regarding the respective claims under the fourth paragraph of 35 USC 112? (A) Claim 9 is a proper independent claim, and Claims 10 and 11 are proper dependent claims. (B) Claim 9 is a proper independent claim, and Claims 10 and 11 are improper dependent claims. (C) Claim 9 is an improper independent claim, and Claims 10 and 11 are improper dependent claims. (D) Claim 9 is an improper independent claim, and Claims 10 and 11 are proper dependent claims. (E) Claim 9 is a proper independent claim, Claim 10 is a proper dependent claim, and Claim 11 is an improper dependent claim.

A patent specification discloses a personal computer comprising a microprocessor and a random access memory. There is no disclosure in the specification of the minimum amount of storage for the random access memory. In the disclosed preferred embodiment, the microprocessor has a clock speed of megahertz. Claims 9 and 10, presented below, are original claims in the application. Claim 11, presented below, was added by amendment after an Office action. 9. A personal computer comprising a microprocessor and a random access memory that includes at least 1 gigabyte of storage. 10. The personal computer of Claim 9, wherein the microprocessor has a clock speed of megahertz. 11. The personal computer of Claim 10, wherein the random access memory is greater than ½ gigabyte of storage. Which of the following statements is or are in accord with the patent laws, rules and procedures as related in the MPEP regarding the respective claims under the fourth paragraph of 35 USC 112? (A) Claim 9 is a proper independent claim, and Claims 10 and 11 are proper dependent claims. (B) Claim 9 is a proper independent claim, and Claims 10 and 11 are improper dependent claims. (C) Claim 9 is an improper independent claim, and Claims 10 and 11 are improper dependent claims. (D) Claim 9 is an improper independent claim, and Claims 10 and 11 are proper dependent claims. (E) Claim 9 is a proper independent claim, Claim 10 is a proper dependent claim, and Claim 11 is an improper dependent claim.

 Before graduation: ─ Looks good on resume. ─ Must front costs yourself.  After graduation but before starting work: ─ Firms will pay for fees and bar review course. ─ Must also study for state bar exam. ─ Knowledge from law school will help.  After graduation and after starting work: ─ Typically within first two years as an associate. ─ Firms will pay for fees and review course. ─ Preparation more difficult: Time off OR No time off per se but you may receive billable or non-billable hours credit.

B743 Patent Law Course ─ Helpful but not necessary. Patent Bar Review Course ─ Does not teach you patent law. ─ Teaches you what you need to know to pass the exam. ─ One-week courses are very condensed. ─ Study-at-home; need self discipline. Take old exams. ─ Many questions are repeated from past exams.

Live lectures often take place on the coasts. They are given infrequently. Courses that offer both live and at-home options generally include the same written and computerized materials with both. Courses include computerized sample questions and exam simulation software.

Name & WebsiteCostDescription BAR/BRI$1,895 (student rate) Live: Six day-long lectures At-Home: Same lectures on DVD or streaming audio or video Practising Law Institute (PLI)$1,845 (student rate) Live: Five day-long lectures At-Home: Same lectures on DVD, CD-ROM, or audio CD Patent Resources Group (PRG)$2,290 (student rate) Live: Six day-long lectures At-Home: Same lectures on DVD PATBAR.com$995 (student rate) Live: None At-Home: Lectures on DVD or audio CD Jim Longacre $1,349 $1,095 Live: None At-Home: Lectures on video iPod or Audio CD/CD-ROM Patent Education Series (PES)$647Live: None At-Home: No lectures but some materials on CD-ROM and audio CD OmniPrep$395 / $295Live: None At-Home: Materials online

Past exams: Patent Bar Simulator: $4.99/1 exam; $14.99/4 exams; $30/9 exams Pass rates: 27-70%