shayvana

course guide & study plan

Mon, 01 Jan 0001 00:00:00 +0000

Complete Preparation for the USPTO Registration Examination

Keyed to MPEP 9th Edition, Revision 01.2024 (current exam source material)

HOW THIS COURSE WORKS

This course is built the way the top commercial courses (PLI, PES, Wysebridge) structure their programs, but as an original, self-contained curriculum:

Substantive modules (01–10) — every tested area of patent law and USPTO procedure, organized by how the exam actually tests it (not by MPEP chapter number). Each module contains the black-letter rules, the deadlines, the exceptions, and — critically — the exam traps that the USPTO loves to test.
Quick Reference (Module 11) — every deadline, time period, fee category, and mnemonic in one place. This is your final-week review document.
Practice Exam (Module 12) — exam-style questions with detailed answer explanations that teach you the reasoning pattern the exam rewards.
MPEP search training — woven throughout, because the exam is open-book and your ability to verify answers in the MPEP quickly is half the battle.

Your only other required resources (both free):

foundations & MPEP navigation

Mon, 01 Jan 0001 00:00:00 +0000

Core MPEP: Chapters 100, 200 (overview), 500. Legal framework: 35 U.S.C.; 37 C.F.R. Part 1.

1.1 The legal hierarchy (know this cold — it explains everything else)

35 U.S.C. (the Patent Act) — the statute. Sections you must know by number: 101 (eligibility/utility), 102 (novelty), 103 (obviousness), 111 (applications), 112 (specification/claims), 119 (foreign & provisional priority), 120 (benefit of earlier US filing), 121 (divisionals), 122 (confidentiality/publication), 131–135 (examination, reexamination of rejections, appeals, derivation), 151–154 (issue, term), 251–257 (reissue, disclaimers, corrections), 261 (ownership), 282 (presumption of validity), 301–307 (ex parte reexam), 311–319 (IPR), 321–329 (PGR), 351–376 (PCT).
37 C.F.R. Part 1 (“the Rules”) — USPTO regulations. Cited as “Rule 1.xxx” or just “Rule 111,” etc. Part 11 = ethics; Part 41 = appeals; Part 42 = AIA trials.
MPEP — the examiner’s manual. Not law, but it’s what the exam tests. It reprints the statutes and rules (statutes in the 35 U.S.C. appendix, rules in the 37 C.F.R. appendix — searchable on exam day!).

🪤 Trap: The exam quotes rules by CFR number. Learn the big ones: 1.111 (reply to non-final), 1.113 (final rejection), 1.114 (RCE), 1.116 (after-final amendments), 1.131 (antedating declaration), 1.132 (evidence declaration), 1.136 (extensions of time), 1.53 (application filing), 1.55 (foreign priority), 1.78 (domestic benefit), 1.97/1.98 (IDS), 1.121 (amendment format), 1.181 (petitions).

patentability I — §101, utility & §112

Mon, 01 Jan 0001 00:00:00 +0000

Core MPEP: 2103–2107 (eligibility/utility), 2111–2117 (claim interpretation), 2161–2186 (§112), 608, 706.03.

2.1 The five patentability requirements (the exam’s skeleton)

Every claim must satisfy ALL of: (1) eligible subject matter + utility (§101), (2) novelty (§102), (3) nonobviousness (§103), (4) adequate disclosure — written description, enablement, best mode (§112(a)), and (5) definiteness (§112(b)). Plus statutory double patenting (§101 “a patent”) and nonstatutory double patenting (judicial). 📌

2.2 §101 — Statutory categories & judicial exceptions (MPEP 2106)

Step 1: Claim must fall into a statutory category: Process, Machine, Manufacture, Composition of matter (mnemonic: “PMMC”). Not eligible per se: transitory signals, data per se, contracts, humans (“no claim directed to or encompassing a human organism” — AIA §33). 📌

patentability II — prior art, §102 & §103

Mon, 01 Jan 0001 00:00:00 +0000

Core MPEP: 2120–2159 (incl. 2131–2138 pre-AIA, 2141–2146 obviousness, 2150–2159 AIA), 706.02, 715 (Rule 131), 716 (Rule 132).

This is the hardest and among the most heavily tested material. Master the AIA framework first; then learn pre-AIA because the exam still tests it (and pre-AIA applications still exist).

3.1 Which law applies? (MPEP 2159) 📌

AIA first-inventor-to-file (FITF) applies to any application that ever contained a claim with an effective filing date on or after March 16, 2013 (and to anything claiming benefit of such an application).
Pre-AIA (first-to-invent) applies if ALL claims are entitled to a pre-3/16/2013 effective filing date.
🪤 Transition trap: An application filed after 3/16/2013 claiming benefit of a pre-3/16/2013 parent is pre-AIA only if no claim ever had post-AIA effective filing date. Add one claim with new matter → the whole application becomes AIA forever (even if the claim is canceled), AND pre-AIA 102(g) can also still apply. A transition statement (checkbox) is required for such straddling applications.

3.2 AIA §102 — the structure 📌 (memorize verbatim-level)

102(a)(1): A person is entitled to a patent unless the claimed invention was patented, described in a printed publication, in public use, on sale, or otherwise available to the public ANYWHERE IN THE WORLD before the effective filing date of the claimed invention.

filing applications, priority & benefit

Mon, 01 Jan 0001 00:00:00 +0000

Core MPEP: 200 (201–217), 600 (601–609), 500 (506), Rules 1.51–1.78.

4.1 What gets a filing date? (Rule 1.53; MPEP 601, 506) 📌

Post-Patent Law Treaties Implementation Act (PLTIA, Dec. 18, 2013):

Application	Required for a FILING DATE	Can follow later (with surcharge/notice period)
Nonprovisional utility (111(a))	A specification (with or without claims!)	Claims, drawings, oath/declaration, filing fee, English translation, inventor’s names via ADS
Provisional (111(b))	Specification (no claim needed) + cover sheet identifying it as provisional (else treated as nonprovisional)	Fee, cover sheet (with surcharge)
Design	Spec + any required drawing (drawings still required for filing date in designs) 🪤	Fee, oath
PCT national stage (371)	Different regime — see Module 09
Reference filing (Rule 1.57(a))	An ADS referencing a previously filed application (specified by number, filing date, office) can substitute for the spec/drawings on filing day; a copy must follow ⏰

🪤 Exam favorites:

prosecution — office actions & replies

Mon, 01 Jan 0001 00:00:00 +0000

Core MPEP: 700 (esp. 706, 710, 711, 713, 714), 609, 2000. Rules 1.104–1.148, 1.97–1.98. THE HIGHEST-YIELD MODULE ON THE EXAM.

5.1 Time periods & extensions — memorize this cold 📌⏰

Statutory maximum: 6 months to reply to any Office action (35 U.S.C. 133). NO extension can go beyond 6 months from the action’s mail date. EVER.
Shortened statutory periods (SSP) typically set:
- Reply to Office action on the merits (non-final or final): 3 months
- Restriction requirement / election: 2 months (extendable to 6)
- Ex parte Quayle action (formal matters only, prosecution otherwise closed): 2 months
- Notice to File Missing Parts: 2 months
- Reply to notice re IDS or misc.: varies (often 1–2 months)
Extensions under Rule 1.136(a) (automatic, retroactive, buy-as-you-go): up to 5 months of extension, purchased with or before the reply — no advance request, no cause needed. Total = SSP + extensions ≤ 6 months. The reply filed late is timely if extension fee accompanies it.
Rule 1.136(b) (for cause): only when 1.136(a) is unavailable (e.g., where the action says so, reexam has its own rules); must be requested BEFORE the deadline; not automatic.
🪤 Where 1.136(a) does NOT work: reply to a Notice of Allowance issue-fee payment (3 months, NOT extendable — statutory ⏰), interference/PTAB trial deadlines, ex parte reexam (special rules, sufficient-cause extensions), reply due dates set by statute, and where the Office action expressly excludes it.
Counting: months are calendar months from the mailing/notification date; if the last day is Sat/Sun/federal holiday in DC → next business day. 🪤 The rolled deadline is timely, but a 1.136(a) extension is still measured from the original date.
Notice of Appeal: due within the reply period (i.e., up to 6 months with extensions from the final rejection). After notice of appeal, the appeal brief is due 2 months from the notice of appeal, extendable under 1.136(b)?? — no: appeal brief extensions are under 41.37 (2 months, extendable per 1.136(a)?) — Rule: brief due 2 months from Notice of Appeal, extendable under 1.136(a)? Careful — extensions of time in appeals to file the brief ARE available under 37 CFR 41.37(c)/1.136(a)-style? See Module 07 for the precise appeal-period rules (brief: 2 months, extensions available; failure → application stands abandoned absent allowed claims).
Abandonment occurs the day after the maximum period expires without a complete reply. Revival: petition under 1.137 — unintentional delay only + fee + required reply. 📌

5.2 First actions & the examiner’s toolkit (MPEP 706, 707)

Examiner issues a first Office action on the merits (FAOM): rejections (substantive — appealable) and objections (formal — petitionable). 📌
Compact prosecution: examiner should address all issues in one action.
Rejection types: 101 (eligibility/utility/double patenting-statutory), 102, 103, 112(a)/(b)/(d), nonstatutory double patenting (obviousness-type, “ODP”), res judicata, improper Markush, etc.
First action final? A first action in a continuing application may be FINAL if all claims are to the same invention as the parent and would have been properly finally rejected in the parent. A first action in a substitute application likewise. NOT proper in a CIP with new-matter claims or where new issues exist. 🪤
Ex parte Quayle: all claims allowable; only formal matters remain; prosecution on merits is CLOSED; 2-month SSP.
Interviews (MPEP 713): available before final as of right (generally granted); after final = at examiner’s discretion; video/phone/in-person; not normally before FAOM except in continuing applications (First Action Interview programs aside); applicant must file an interview summary; agreements reached must be made of record. No interviews to “sound out” the examiner.

5.3 Replies under Rule 1.111 (non-final) — what makes a reply complete 📌

Must be bona fide and responsive to EVERY ground of rejection/objection: distinctly point out errors, address every rejected claim, present arguments or amendments.
A general allegation of patentability is NOT responsive.
Amendments may add/cancel/amend claims (no new matter — §132).
🪤 A reply that omits addressing one rejection = incomplete → examiner may give a short period (or 1 month) to complete; abandonment risk.

5.4 Amendment format — Rule 1.121 📌 (pure memorization, reliably tested)

Claims: each amendment must include a complete claim listing with status identifiers: (original), (currently amended), (canceled), (withdrawn), (previously presented), (new), (not entered). Currently-amended claims show underline for additions, strikethrough (or double brackets [[ ]] for ≤5 characters) for deletions. Canceled/not-entered claims: number + identifier only, no text.
Specification: replacement paragraphs with markings + clean version not required (marked-up replacement paragraph/section, or substitute spec with both marked and clean copies).
Drawings: replacement sheets labeled “Replacement Sheet”; annotated copies if required.
New claims must be numbered consecutively following the highest previously used number (even canceled ones are never reused). 🪤

5.5 Final rejection & after-final practice (MPEP 706.07, 714.12–714.13) 📌

Second or later action on the merits is normally final (unless new ground not necessitated by amendment/IDS).
After final, applicant may as of right: appeal (Module 07), file an RCE, or file amendments that (a) cancel claims, (b) comply with formal requirements, (c) present claims in better form for appeal, or (d) touch the merits — but merits amendments are entered ONLY with a showing of good and sufficient reasons why necessary and not earlier presented (Rule 1.116). Entry is at examiner discretion. 🪤 No new evidence/declarations after final as of right either (1.116(e)).
Advisory action: examiner’s response to an after-final reply; if applicant replied within 2 months of the final, the SSP for abandonment purposes runs to the LATER of the advisory action mail date or the original 3-month date (extension fees computed from that later date — the “2-month/advisory action” rule ⏰🪤 — but never beyond 6 months from final).
AFCP-type pilot programs existed for after-final consideration (AFCP 2.0 ended 2024 — don’t rely on it).
Pre-appeal brief conference: request with notice of appeal (see Module 07).

5.6 RCE — Request for Continued Examination (Rule 1.114; MPEP 706.07(h)) 📌

Available for utility/plant nonprovisionals (filed on/after June 8, 1995) — NOT for design applications, provisionals, or reexams. 🪤 (For designs: use a continued prosecution application (CPA), Rule 1.53(d) — CPAs survive ONLY for designs.)
Requires: prosecution closed (final, allowance, or appeal), + submission (amendment/argument/IDS) + fee.
Effect: withdraws finality; prosecution reopens; NOT a new application (same file, no new filing date, no 102 consequences).
After Notice of Allowance: an RCE (with submission + fee) reopens prosecution — commonly used to get an IDS considered after allowance. 🪤 Filing an RCE after allowance but before issue-fee payment is fine; after issue fee is paid you also need a petition to withdraw from issue (Rule 1.313).
RCE during appeal: withdraws the appeal; prosecution reopens on the claims as they stood.
RCEs reduce Patent Term Adjustment “B-delay” accrual. (Module 08.)

5.7 Suspension, withdrawal & miscellaneous

Suspension of action (Rule 1.103): applicant may request (good cause, or up to 3 months in a 1.53(d)/RCE filing with fee); no suspension while a reply is outstanding. 🪤
Withdrawal from issue (Rule 1.313): before issue-fee payment — petition showing good reason (or Office may withdraw). After issue-fee payment — only for: unpatentability of a claim, interference/derivation, applicant’s request for RCE-eligible reasons (via petition + RCE), or express abandonment to file a continuation. Very close to the issue date it may be impossible.
Express abandonment (Rule 1.138): written declaration; to avoid publication must be filed in time for Office to act (>4 weeks before publication? — recognized only if received in sufficient time; petition for express abandonment to avoid publication has its own fee).
Third-party preissuance submissions (35 U.S.C. 122(e); Rule 1.290): patents/publications + concise description of relevance; deadline: before the LATER of (a) 6 months after publication or (b) date of first rejection of any claim — and always before a Notice of Allowance. ⏰📌
Protests (Rule 1.291): before publication or Notice of Allowance (whichever’s first), matched criteria; no participation afterward.
Citation of prior art in a patent file (35 U.S.C. 301): anyone, anytime, for issued patents (patents, printed pubs, patent-owner claim-scope statements).

5.8 IDS & the duty of disclosure (MPEP 609, 2000) 📌 — guaranteed points

Duty (Rule 1.56): each individual associated with the filing and prosecution (inventors, attorneys/agents, anyone substantively involved) owes a duty of candor and good faith, including disclosing information material to patentability as defined by the rule. The duty runs to information known to those individuals — no duty to search. Duty lasts until issuance and applies to claims pending. Violations (inequitable conduct) aren’t policed by examiners; but egregious misconduct kills patents in court and Office fraud has consequences.

restriction, double patenting & ownership

Mon, 01 Jan 0001 00:00:00 +0000

Core MPEP: 800 (803–823), 804 (double patenting), 300, 2109, 2137. Rules 1.141–1.146, 1.321, 3.x.

6.1 Restriction practice (35 U.S.C. 121; MPEP 803) 📌

Examiner may require restriction between independent OR distinct inventions when there would be a serious burden to examine both. Both prongs required (independence/distinctness + serious burden).
Election required even when traversing. Applicant must elect an invention; may traverse (with reasons) to preserve petition rights. Election with traverse → if requirement maintained, review by PETITION (Rule 1.144) — restriction is NOT appealable (it’s not a rejection). 🪤 Petition deadline: no later than appeal (must be filed before appeal); traverse must be timely and distinct or petition rights are waived.
Election of species: where a generic claim + multiple species; if a generic claim is allowable, claims to a reasonable number of dependent species are examined (rejoinder).
Rejoinder: withdrawn process claims can be rejoined if a product claim to which they’re linked becomes allowable (process must depend from/require the allowable product).
Linking claims: if a linking claim is allowed, restriction between linked inventions is withdrawn.
Non-elected claims: withdrawn (status identifier “withdrawn”), pursued in a divisional.
§121 safe harbor 📌🪤: a divisional filed as a result of a restriction requirement cannot have its parent (or siblings, per consonance) used against it for double patenting — PROVIDED consonance with the restriction is maintained and it’s a true divisional (the safe harbor does NOT protect continuations or CIPs, and does not apply if claims cross the restriction lines).
PCT national stage: the analogous concept is unity of invention (single general inventive concept; special technical feature) — a DIFFERENT standard than independent/distinct; applies in 371 national-stage applications too. 🪤 Bypass continuations get U.S. restriction practice.

6.2 Double patenting (MPEP 804) 📌

Two flavors:

appeals & petitions

Mon, 01 Jan 0001 00:00:00 +0000

Core MPEP: 1200, 1000. Rules: 37 CFR Part 41 (41.30–41.54), 1.181–1.183.

7.1 Appeal vs. petition — the governing distinction 📌🪤

	APPEAL (PTAB)	PETITION (Director/TC Director)
Reviews	Rejections (substantive patentability)	Objections, requirements, procedural rulings (restriction, refusal to enter amendment, holding of abandonment, revival, suspension, formalities)
Authority	35 U.S.C. 134; 37 CFR Part 41	Rules 1.181 (no fee), 1.182 (issues not otherwise provided for — fee), 1.183 (waiver of rules in extraordinary situations — fee)
Timing	After claim rejected twice (or any final rejection — a claim rejected in a parent counts toward “twice”)	Generally within 2 months of the action complained of (1.181(f)) ⏰; petitions don’t stay other deadlines unless stated 🪤

7.2 Ex parte appeal timeline 📌⏰

Notice of Appeal (fee; no signature required 🪤): within the reply period of the rejection (max 6 months with 1.136(a) extensions).
Appeal Brief: due 2 months from the notice of appeal; extensions available under 1.136(a) style per 41.37 (up to the 5-month cap; abandonment risk if no allowed claims and no brief — failure to file brief = dismissal; application abandoned unless claims stand allowed).
Examiner’s Answer: may contain a new ground of rejection (with TC Director approval) → appellant must, within 2 months, either (a) reopen prosecution (reply under 1.111) or (b) maintain the appeal with a reply brief. ⏰
Reply Brief: optional, within 2 months of the examiner’s answer (no new arguments beyond answering the answer; no new amendments/evidence).
Appeal forwarding fee: due within the reply-brief period (post-2012 practice — replaces the old separate brief fee timing) — failure = dismissal.
Oral hearing: optional, separate request + fee within 2 months of the examiner’s answer.
PTAB decision: affirm (in whole/part), reverse, or issue a new ground of rejection (41.50(b)) → appellant has 2 months to either reopen prosecution before the examiner (amend/evidence) or request rehearing. ⏰
Rehearing request: within 2 months of decision.
Court review: appeal to the Federal Circuit (notice within 63 days ⏰) OR civil action against the Director in E.D. Va. (§145; district-court route allows new evidence but appellant pays USPTO expenses). Cannot do both.

7.3 Brief & amendment mechanics

Brief contents (41.37): real party in interest; related appeals; summary of claimed subject matter (with spec/drawing citations for each independent claim and every means-plus-function limitation); argument keyed to each ground; claims appendix. Claims argued separately get separate headings — otherwise claims stand or fall together. 🪤
Amendments during appeal: after notice of appeal but before brief — only cancels claims or rewrites dependent into independent form (1.116-type); after brief — very limited. New evidence after appeal: only with showing of good cause via reopening.
Jurisdiction: passes to the Board when the reply brief is filed or the time expires; before that the examiner can reopen/allow.
Pre-Appeal Brief Conference (pilot, still available): file with the notice of appeal + succinct 5-page argument → panel reviews for clear errors before briefing.
Withdrawal of appeal: = abandonment if no allowed claims. RCE withdraws the appeal and reopens prosecution.
Affirmed in part → application returns to examiner for action on any reversed/allowed claims per the decision.

7.4 Petitions practice essentials (MPEP 1000; Rule 1.181–1.183) 📌

1.181: invoke Director’s supervisory authority; review of objections/requirements/refusals; no fee; 2-month guideline.
1.182: questions not specifically provided for; fee.
1.183: suspension of a rule (not statutes!) in an extraordinary situation where justice requires; fee. 🪤 Statutory requirements can never be waived by petition (e.g., the 6-month statutory reply cap, issue-fee deadline, 12-month provisional deadline beyond the restoration rule).
Common petitions: revive abandoned application (1.137 — unintentional), withdraw from issue (1.313), make special/Track One (1.102), withdraw holding of abandonment (no fee — arguing it never was abandoned, e.g., proof of timely reply), delayed benefit/priority claims (1.78/1.55), access, foreign filing license (retroactive), express abandonment to avoid publication.
Petition does NOT toll the running of any reply period unless the rule says so. 🪤

MODULE 07 SELF-CHECK

Examiner refuses to enter an after-final amendment. Appeal or petition?
When may a claim be appealed — how many rejections, and does a parent’s rejection count?
Examiner’s answer raises a new ground. Options and deadline?
PTAB issues a new ground under 41.50(b). Options and deadline?
What are the two judicial-review routes after a Board affirmance and the deadline for the Federal Circuit route?
Can a Rule 1.183 petition waive the 6-month statutory reply period?

allowance, issue, term & post-grant

Mon, 01 Jan 0001 00:00:00 +0000

Core MPEP: 1300, 2500, 2700, 1400, 2200, 2800; 35 U.S.C. 151–157, 251–257, 301–307, 311–329; Rules 1.311–1.378, 1.501–1.570, 1.171–1.178; 37 CFR Part 42.

8.1 Allowance & issue (MPEP 1300) 📌⏰

Notice of Allowance → issue fee due in 3 months. NOT EXTENDABLE (statutory, 35 U.S.C. 151). Late = abandonment (revivable if unintentional, 1.137).
Examiner’s amendment: examiner may make minor changes with authorization; reasons for allowance may be stated (applicant may comment; silence ≠ agreement/admission — failure to respond has no adverse effect, but statements can create estoppel later, so best practice is to reply if disagreeing).
Amendments after allowance (Rule 1.312): no amendment as of right; entry needs (good reason, no new search burden, why not earlier presented) — at examiner discretion; must be filed before issue-fee payment. 🪤
Quick Path IDS / IDS after allowance: statement + fee tier (Module 05); after issue-fee payment, IDS requires more drastic steps (petition to withdraw + RCE, or continuation).
Withdrawal from issue: Rule 1.313 (Module 05).
Patent issues electronically (eGrants) on the issue date (Tuesdays); a continuation must be ON FILE before the issue date for copendency.

8.2 Patent term, PTA & PTE (MPEP 2700) 📌

Term: utility/plant = 20 years from the earliest effective U.S. non-provisional filing date (provisional and foreign priority time do NOT count against term 🪤); design = 15 years from grant.
Patent Term Adjustment (PTA, 35 U.S.C. 154(b)): day-for-day extension for USPTO delays:
- A-delay: Office misses milestones (14 months to first action; 4 months to respond to replies, act after Board/court decision, or issue after fee payment).
- B-delay: total pendency beyond 3 years (excluding RCE time, appeals, applicant-requested delays).
- C-delay: interferences/derivations, secrecy orders, successful appeals.
- Overlap counted once; REDUCED by applicant delay (e.g., taking >3 months to reply). PTA disputes: request reconsideration ⏰ (2 months from grant, extendable) then civil action E.D. Va. (180 days).
Patent Term Extension (PTE, 35 U.S.C. 156): for regulatory (FDA) review delays — one patent per product, up to 5 years, application to USPTO within 60 days of marketing approval ⏰ (a brutal deadline; part of MPEP 2750).
Maintenance fees (utility only!) ⏰📌: due at 3½, 7½, 11½ years from grant; payable in the 6-month window before each due date; 6-month grace period with surcharge (i.e., pay by 4, 8, 12 years); nonpayment → patent expires. Reinstatement: petition — unintentional delay (1.378). No maintenance fees for design/plant patents or reissues of them (reissue keeps parent’s schedule).
Intervening rights protect those who acted while the patent was expired/broadened (also in reissue/reexam contexts below).

8.3 Correcting issued patents — the toolbox 📌

Problem	Tool	Key rules
Office’s printing/clerical mistake	Certificate of Correction (35 USC 254) — no fee	Rule 1.322
Applicant’s clerical/typographical mistake of minor character, good faith, no new matter/no reexamination needed	CoC (35 USC 255) — fee	Rule 1.323
Wrong inventors named	Rule 1.324 petition (all parties’ statements + fee) or reissue	intent irrelevant post-AIA
Claims too narrow/too broad, defective spec/drawing, defective priority claim, error making patent wholly/partly inoperative or invalid	REISSUE (35 USC 251)	see 8.4
Patent owner wants Office to consider/reconsider/correct information (incl. non-documentary info) to immunize against inequitable conduct	Supplemental Examination (35 USC 257)	see 8.6
Give up claims	Statutory disclaimer (253); terminal disclaimer for term	Rule 1.321
Anyone wants patentability re-tested on patents/printed pubs	Ex parte reexam	see 8.5
Competitor challenge at PTAB	IPR / PGR	see 8.7

8.4 Reissue (MPEP 1400) 📌 — reliably several questions

Grounds: patent wholly or partly inoperative or invalid due to (a) defective specification/drawings, or (b) claiming more or less than the patentee had a right to claim — through error (post-AIA: no “without deceptive intent” requirement). Failure to claim priority/benefit or to file a divisional can qualify; a change of mind about claim scope can qualify as error (recapture aside).
NO NEW MATTER. Same invention disclosed.
Broadening reissue: only within 2 years of grant ⏰📌 (a broadening reissue APPLICATION must be filed within 2 years; intent to broaden must appear within the 2 years; any claim broader in ANY respect = broadening 🪤). Broadening reissue must be signed by… the inventor’s oath for a broadening reissue must be signed by the inventors (assignee of entire interest may sign only for non-broadening reissues, unless the application was filed by the assignee under 1.46). 📌
Recapture rule 🪤: cannot reclaim subject matter deliberately surrendered during original prosecution to obtain allowance (3-step analysis: broadened? related to surrendered matter? claims not materially narrowed otherwise?).
Mechanics: offer to surrender the original patent (no physical surrender now); reissue oath/declaration stating the error; entire patent reprinted format; amendments per Rule 1.173 (no strikethrough of original patent claims — brackets for deletions, underline for additions); prosecuted like an application; open to public; protests possible; original claims can be rejected on any ground (full examination).
Effect: original patent surrendered when reissue grants; reissue expires when the original would have. Intervening rights (35 U.S.C. 252): absolute for products made before reissue re claims not in original patent; equitable for continued practice.
Multiple reissues from one patent possible (e.g., divisional reissues).
🪤 Reissue CANNOT: extend term, revive an expired patent, correct inventorship alone if that’s the only error? (it CAN correct inventorship), rescue claims from prior public disclosure, or be filed by a third party — only the patent owner (with assignee consent).

8.5 Ex parte reexamination (35 U.S.C. 302–307; MPEP 2200) 📌

Who: ANYONE (patent owner, third party — may be anonymous via straw party, Director sua sponte). When: any time during enforceability. Basis: ONLY patents and printed publications raising a substantial new question of patentability (SNQ). 📌
Fee + request; Director decides SNQ within 3 months ⏰. Denied → partial refund. Granted → patent owner may file an optional statement (2 months) → requester may reply (2 months) → then examination proceeds ex parte (third-party requester is OUT after the reply). 🪤
Conducted with special dispatch; claims get BRI (if unexpired); patent owner may amend/add claims but NO broadening 🪤; no extensions under 1.136(a) (sufficient-cause only); certificate issues canceling/confirming/amending claims. Appeal: patent owner only → PTAB → Fed. Cir.
Intervening rights apply to amended/new claims.
(Inter partes reexamination was abolished 2012 — replaced by IPR; MPEP 2600 is legacy.)

8.6 Supplemental examination (35 U.S.C. 257; MPEP 2800)

Patent owner only; asks Office to “consider, reconsider, or correct information” — information is NOT limited to patents/printed publications (can be anything: sales, 112 issues, declarations). Up to 12 items per request.
Office decides within 3 months whether any item raises an SNQ ⏰; if yes → Director orders ex parte reexamination (which then proceeds under reexam rules, except not limited to patents/printed pubs).
Payoff: patent can’t be held unenforceable for conduct relating to information considered in supplemental examination (inequitable-conduct inoculation) — EXCEPT allegations already pled in litigation/ANDA notice before the request, or unless the ensuing reexam wasn’t finished before suit. Fraud found → Director refers to AG. 📌

8.7 AIA trials — IPR & PGR (35 U.S.C. 311–329; 37 CFR Part 42) 📌

	IPR	PGR
Petitioner	Person who is NOT the owner & hasn’t filed a DJ action of invalidity	same
Grounds	102/103 only, patents & printed publications only	ANY invalidity ground (101, 112 except best mode, 102, 103)
Patents covered	Any patent	FITF (AIA) patents only
Window	After the LATER of 9 months post-grant or termination of any PGR — for FITF patents; anytime after grant for pre-AIA patents ⏰	Within 9 months of grant ⏰
Threshold	Reasonable likelihood petitioner prevails on ≥1 claim	More likely than not ≥1 claim unpatentable (or novel/unsettled legal question)
Litigation bar	Petition barred if filed >1 year after petitioner (or privy/RPI) is served with an infringement complaint ⏰🪤	—
Standard of proof	Preponderance; claims construed under Phillips (district-court) standard	same
Timeline	Institution decision ≤3 months after owner’s preliminary response; final written decision within 1 year of institution (+6-month good-cause extension) ⏰	same
Estoppel	Raised or reasonably could have raised — applies in USPTO, district court, ITC after final written decision 📌	same (broader in effect given broader grounds)
Features	Owner preliminary response; ONE motion to amend claims (no broadening); discovery limited; settlement allowed (terminates); appeal to Fed. Cir. only	same

🪤 Contrasts to memorize: reexam = SNQ standard, anyone, anytime, ex parte, patents/printed pubs. IPR = adversarial trial, 102/103 pubs only, 9-month/1-year gates. PGR = 9 months, any ground, AIA patents. Supplemental exam = owner only, any information, unenforceability shield.

PCT & international applications

Mon, 01 Jan 0001 00:00:00 +0000

Core MPEP: 1800; 35 U.S.C. 351–376; PCT Articles/Rules; Rule 1.495 (national stage). Reliably 5–10 exam questions — nearly all answerable by memorizing the timeline.

9.1 The PCT timeline (measured from the PRIORITY DATE) ⏰📌 — MEMORIZE

Month	Event
0	Priority date (first filing, e.g., U.S. provisional)
12	Last day to file the PCT international application claiming priority (Paris Convention year; 2-month restoration possible — RO/US applies “unintentional” standard)
~16	International Search Report (ISR) + Written Opinion (WO) established (target: 3 months from ISA receipt of search copy or 9 months from priority, whichever later)
18	International publication by WIPO (in one of the publication languages)
19	(If wanted) demand for Chapter II should be considered by now for some offices; see 22-month rule below
22	Demand for Chapter II preliminary examination due: LATER of 3 months from ISR/WO transmittal or 22 months from priority ⏰
28	International Preliminary Report on Patentability (IPRP Ch. II) target
30	U.S. national stage entry deadline (35 U.S.C. 371) — most countries 30 months; some 31+ (EPO 31)

Article 19 amendments: claims ONLY, filed with the International Bureau, within 2 months of ISR transmittal (or 16 months from priority, whichever later), one opportunity. 📌 Article 34 amendments: claims, description, AND drawings — filed with the IPEA with/after the demand (Chapter II only). 📌

design, plant, biotech & ethics

Mon, 01 Jan 0001 00:00:00 +0000

Core MPEP: 1500, 1600, 2400; 35 U.S.C. 161–164, 171–173; 37 CFR Part 11.

10.1 Design patents (MPEP 1500) 📌

Protects the ornamental design for an article of manufacture (35 U.S.C. 171). Functionality (design dictated solely by function) → §171 rejection.
One claim only, in formal words: “The ornamental design for [article] as shown (and described).” 📌🪤
Drawings are everything: required for the filing date; must show the design fully (surface shading; broken lines = unclaimed environment); computer-generated icons/GUIs on a display are eligible articles (per current guidance).
Term: 15 years from GRANT (apps filed on/after 5/13/2015); no maintenance fees; not published at 18 months; no provisionals for designs; no RCE — use a CPA (Rule 1.53(d)); expedited “rocket docket” examination available (Rule 1.155). 📌🪤
Foreign priority: 6 months (not 12) ⏰; design applications can claim benefit of a utility application (and vice versa) if 112 support exists.
Novelty/obviousness apply: ordinary-observer test flavors anticipated designs; obviousness now judged with a KSR-flexible approach (LKQ v. GM, 2024, replaced the rigid Rosen/Durling test — plausibly tested going forward). 📌
Design patent practitioner bar (2024): separate admission track (design-related degrees); design practitioners may practice ONLY in design matters; regular patent practitioners may practice in both. 📌
Hague (international design) applications: U.S. can be designated; published by WIPO; 15-year term from grant.

10.2 Plant patents (MPEP 1600) 📌

Asexually reproduced, distinct and new variety of plant (cultivated sports, mutants, hybrids, newly found seedlings) — NOT tuber-propagated plants (potatoes!) and NOT plants found in an uncultivated state. 🪤
One claim; term 20 years from filing; no maintenance fees; right to exclude asexual reproduction/sale/use of the plant so reproduced.
Color drawings/photos common (permitted); specimen may be required; the description must be as complete as reasonably possible (enablement standard relaxed — botanical description + asexual reproduction statement).
Contrast: sexually reproduced (seed) varieties → Plant Variety Protection Act (USDA certificate), and utility patents can also cover plants (any type) if 101/112 met. Three overlapping regimes. 📌
Inventorship: whoever discovers AND asexually reproduces.

10.3 Biotech-specific rules (MPEP 2400)

Deposit of biological material (Rules 1.801–1.809): when words alone can’t enable (e.g., novel microorganism), deposit with an IDA (Budapest Treaty depository) satisfies 112(a). Deposit may be made during pendency, but must be made no later than payment of the issue fee (with assurance earlier); viability tested; term of deposit ≥30 years/5 years past last request; all restrictions on public access irrevocably removed upon grant. 📌⏰
Sequence listings (Rules 1.831–1.835 current; former 1.821–1.825): nucleotide/amino-acid sequences must be in a standard electronic ST.26 XML sequence listing (apps filed on/after July 1, 2022); it’s part of the disclosure; late submission cannot add new matter. 📌
§101 products of nature (Myriad/Mayo) — Module 02. Utility for research tools/ESTs: specific & substantial required (in re Fisher-type facts).

10.4 Practitioner ethics — 37 CFR Part 11 (USPTO Rules of Professional Conduct) 📌

Modeled on the ABA Model Rules. Exam-relevant highlights:

quick reference — deadlines, tables & mnemonics

Mon, 01 Jan 0001 00:00:00 +0000

Your final-week and morning-of review. If you know everything on this sheet cold, you walk in with ~60% of the exam pre-won.

A. THE MASTER DEADLINE TABLE ⏰

Trigger	Deadline	Extendable?
Reply to any Office action	SSP (usually 3 mo; restriction 2 mo; Quayle 2 mo)	1.136(a) auto-extensions to statutory max 6 months
Statutory reply maximum	6 months (35 USC 133)	NEVER
Issue fee after Notice of Allowance	3 months	NEVER (revival if unintentional)
Provisional → nonprovisional	12 months	+2 mo restoration (unintentional, petition/fee)
Foreign priority (utility)	12 months	+2 mo restoration
Foreign priority (design)	6 months	+2 mo restoration
Benefit/priority claim in ADS	later of 4 mo from filing / 16 mo from parent or foreign filing	belated → petition (unintentional)
Certified copy of foreign application	same 4/16 window (PDX/interim copy exceptions)	petition for cause
Nonpublication request rescission after foreign filing	45 days from foreign filing	NO — abandonment (revival possible)
Inventor’s oath/declaration	no later than issue-fee payment	—
IDS free window	3 mo from filing or before FAOM	then statement or fee tiers (see D)
Third-party preissuance submission	before later of (6 mo after publication / first rejection), and before allowance	NO
After-final reply for advisory-action date benefit	within 2 months of final	—
Notice of Appeal	within reply period (to 6 mo max)	via 1.136(a)
Appeal brief	2 months from NOA	yes (to 5 mo ext)
Reply brief / oral hearing request / respond to new ground in answer	2 months from examiner’s answer	limited
Respond to PTAB new ground (41.50(b)) or request rehearing	2 months from decision	limited
Federal Circuit appeal	63 days from Board decision	—
Petition under 1.181	2 months (guideline)	—
Maintenance fees	3½ / 7½ / 11½ yrs (windows open 6 mo before)	+6-month grace w/ surcharge; then unintentional-delay reinstatement
Broadening reissue	2 years from grant	NEVER
PGR petition	9 months from grant	NO
IPR (FITF patent)	after later of 9 mo post-grant / PGR termination	—
IPR after service of complaint	1 year from service	NO
Derivation petition	1 year from first publication of the claim	NO
Ex parte reexam SNQ decision by Office	3 months	—
PCT filing from priority date	12 months	+2 mo restoration (RO/US: unintentional)
Art. 19 amendments	2 mo from ISR (or 16 mo from priority, later)	—
Chapter II demand	later of 3 mo from ISR/WO or 22 months from priority	—
U.S. national stage (copy + basic fee)	30 months from priority	NOT extendable; revivable (unintentional)
Assignment recording vs. BFP	3 months from assignment or before subsequent purchase	—
PTE (FDA) application	60 days from marketing approval	—
Biological deposit	no later than issue-fee payment	—

B. WHAT IS NEVER EXTENDABLE UNDER 1.136(a) 🪤

Issue fee • 6-month statutory cap • issue-fee-triggered oath deadline • reexam periods (1.136(b)/(cause) regime) • PTAB trial dates • IPR/PGR windows • broadening-reissue 2-year window • 30-month national stage • preissuance-submission window • provisional’s 12-month life (restoration ≠ extension).

practice exam with answers

Mon, 01 Jan 0001 00:00:00 +0000

Exam-style questions in the USPTO’s format. Do Sets A–D closed-book after finishing the modules; Set E open-book (eMPEP practice). Then move to full released USPTO exams. Answers follow each set — cover them. Unless stated otherwise, “AIA” facts and current rules apply, and dates avoid weekend/holiday issues.

SET A — Foundations, Filing & Formalities (Q1–8)

Q1. A practitioner deposits a new continuation application in a U.S. Postal Service box on Friday, March 6, using Priority Mail Express under 37 CFR 1.10, with a “date accepted” of March 6. The parent patent issues Tuesday, March 10. The USPTO receives the papers March 11. The continuation’s filing date is: (A) March 11, and it is not copending with the parent (B) March 6, and it is copending with the parent (C) March 10, and copendency fails (D) March 6, but copendency fails because receipt followed issuance (E) March 11, but copendency is preserved by the certificate of mailing

personal telemetry

Thu, 23 Jul 2026 00:00:00 +0000

a quiet instrument panel for a life. sensors record signals — chess games, posts, films, books, music, commits, browsing weeks — into one store, a nightly action syncs it, and static pages replay it like memory. rest is tracked as signal, not gap. echo answers the question the project was built for: who were you a year ago. no servers, nothing that can break while its owner sleeps.

Sun, 12 Jul 2026 19:59:53 -0500

reading the housemaid as the immediate followup to finishing crime and punishment literally felt like i just watched a tiktok of pure brainrot. entertaining in the moment and easy to digest but junk food nonetheless. this weekend i learned about chinese youth and their twist on garbage time, the concept of garbage time, and the word eustress from the post ’type out the code’ on the blog ‘haskell for all.’ great piece on the importance of staying sharp because the way you do the little things is the way you do the big things. i also wrote my own blog post about why there is no wall between software developers and architects like there is for building developers and architects.

sky calendar

Mon, 25 May 2026 00:00:00 +0000

chess master manque

Fri, 27 Mar 2026 00:00:00 +0000

learn grant writing

Sun, 01 Feb 2026 00:00:00 +0000

rabbithole

Thu, 15 Jan 2026 00:00:00 +0000

powers group

Fri, 01 Aug 2025 00:00:00 +0000

the grant writers gathering

Thu, 01 May 2025 00:00:00 +0000

lenilani consulting

Sat, 01 Mar 2025 00:00:00 +0000

five star transportation

Sun, 01 Sep 2024 00:00:00 +0000

opening recommender

Sat, 01 Jun 2024 00:00:00 +0000

about

Mon, 01 Jan 0001 00:00:00 +0000

summary of intent

this site isn’t to impress. it’s to remember. to gather all the pieces of who i am and give them a home. whenever i come back to my personal website, i’m always wrestling with the question of who exactly is the target audience. these kinds of things always end up as part biography, part resume, part mirror. it’s for me and it’s for you, but i’ve come to the decision that it’s mostly for me. if you want my cv you have my linkedin.

chess master manque

Mon, 01 Jan 0001 00:00:00 +0000

i wish

Mon, 01 Jan 0001 00:00:00 +0000

sky calendar

Mon, 01 Jan 0001 00:00:00 +0000

writing practice

Mon, 01 Jan 0001 00:00:00 +0000