Exam Traps & Tricks - Patent Bar Prep

Fractured Crown: The Examination Traps

The Patent Bar exam is designed to test not just knowledge, but precision. Every question contains traps—subtle distinctions that catch unwary test-takers. Athelia learned these traps during her training, understanding that applicants who fail examination do so because they missed the details.

Timing traps: Confusing 12 months (provisional to non-provisional) with 6 months (foreign priority under § 119). Missing that continuation copendency requires filing BEFORE parent issues, not just before abandonment.

Statutory traps: Thinking § 102(b) grace period applies to foreign filings (it doesn't under § 119). Confusing written description (§ 112(a)) with indefiniteness (§ 112(b)).

Procedural traps: Believing all Office Actions are extendable to 6 months (restriction requirements are NOT extendable). Thinking appeals must go to Federal Circuit (can go to district court under § 145).

This page catalogs the most common traps. Read each one. Understand WHY the wrong answer is wrong. The exam will present these traps in new clothing, testing whether you truly understand the distinctions or just memorized patterns.

⏰ Timing & Deadline Traps

⚠️ Patent Term: Filing Date vs. Grant Date

❌ TRAP:

"Patent term is 20 years from the date the patent is granted."

✅ CORRECT:

Patent term is 20 years from U.S. filing date (§ 154(a)(2)), NOT from grant date. Exception: Design patents run 15 years from grant.

💡 Why This Matters:

If prosecution takes 5 years, you lose 5 years of enforceable term. That's why PTA (Patent Term Adjustment) exists - to compensate for USPTO delays.

⚠️ Provisional Priority: 12 Months vs. 20 Years

❌ TRAP:

"If I claim priority to a provisional, my patent expires 20 years from the provisional filing date."

✅ CORRECT:

Provisional gives you 12 months to file non-provisional, but patent term runs 20 years from non-provisional filing, not provisional.

💡 Example:

Provisional filed: Jan 1, 2020
Non-provisional filed: Dec 1, 2020 (within 12 months)
Patent expires: Dec 1, 2040 (20 years from non-provisional)
NOT Jan 1, 2040

⚠️ Extension Deadlines: 3 vs. 6 Months

❌ TRAP:

"I can extend my Office Action response deadline by 6 months."

✅ CORRECT:

Statutory period is 3 months. You can extend UP TO 3 additional months (total 6 months maximum from OA mailing). Extensions beyond 3 months require fees.

💡 Fee Schedule:

1st month extension: $200 (small entity)
2nd month extension: $600
3rd month extension: $1,400
Cannot extend beyond 6 months total.

⚠️ Copendency: "Any Time" vs. "Before Parent Issues"

❌ TRAP:

"I can file a continuation any time as long as the parent application exists."

✅ CORRECT:

Continuation must be filed BEFORE parent issues as patent or goes abandoned. Parent and child must be copending for at least one day (§ 120).

💡 Critical Timing:

If NOA received, you have ~3 months (issue fee deadline) to file continuation. Once patent issues, too late to claim priority.

🔤 Confusing Terms & Similar Concepts

⚠️ Written Description vs. Enablement

Aspect	Written Description (§ 112(a))	Enablement (§ 112(a))
Question Asked	Did you have the invention?	Can others make/use it?
Test	Would PHOSITA recognize you possessed claimed invention?	Can PHOSITA make/use without undue experimentation?
Focus	Inventor's possession at filing	Teaching to public
Common Issue	New claims added after filing, genus claims without representative species	Broad claims without sufficient examples, unpredictable arts

💡 Easy Way to Remember:

Written Description: "Did you DESCRIBE what you're claiming?"
Enablement: "Can others DO what you're claiming?"

⚠️ Anticipation (§ 102) vs. Obviousness (§ 103)

Aspect	Anticipation (§ 102)	Obviousness (§ 103)
Prior Art References	Single reference	Can combine multiple
Elements Required	ALL elements in one reference	Elements from combined references
Arrangement	Arranged as claimed (or inherent)	Obvious to combine/modify
Standard	Exact disclosure (or inherency)	Would PHOSITA find obvious?

❌ COMMON MISTAKE:

"Reference A has elements 1-3, Reference B has element 4. Therefore claim 1-4 is anticipated."

✅ CORRECT:

"Claim is NOT anticipated (needs all elements in single reference). Claim MAY be obvious if motivation exists to combine A and B."

⚠️ Continuation vs. Divisional vs. CIP

Type	Disclosure	Claims	Priority Date	Key Use
Continuation	Same as parent	Different claims	Parent filing date	Pursue different claims (broader/narrower/different scope)
Divisional	Same as parent	Non-elected invention	Parent filing date	Pursue invention restricted out by examiner (§ 121 safe harbor)
CIP	Parent + NEW matter	Old + new claims	Old claims: parent date New claims: CIP date	Add new embodiments/improvements

💡 Double Patenting Trap:

Divisional: § 121 safe harbor (no terminal disclaimer needed if proper divisional)
Continuation/CIP: May need terminal disclaimer for obviousness-type double patenting

⚠️ Reissue vs. Reexamination

Aspect	Reissue (§ 251)	Reexamination (§§ 302, 311)
Who Files	Patent owner only	Anyone (owner or third party)
Purpose	Correct errors in patent	Reexamine validity based on prior art
Can Broaden?	Yes (within 2 years of grant)	No (only narrow or cancel)
Grounds	Any error (§§ 101, 102, 103, 112)	Only §§ 102/103 based on patents/publications
Result	Original patent surrendered, reissue granted	Original patent amended (or cancelled)

📜 Substantive Law Traps

⚠️ Abstract Idea: "On a Computer" Is NOT Enough

❌ TRAP (Post-Alice):

"My claims recite performing [abstract process] using a computer, so they're patent-eligible."

✅ CORRECT:

Merely implementing abstract idea on generic computer does NOT make it eligible. Must show:
• Improvement to computer functionality itself, OR
• Particular machine/transformation, OR
• Integration into practical application beyond abstract idea

💡 Alice Two-Step:

Step 1: Directed to judicial exception (abstract idea)?
Step 2A: Integrated into practical application?
Step 2B: Significantly more than exception itself?

"Do it on computer" fails Step 2.

⚠️ Inherency: "Probably" vs. "Necessarily"

❌ TRAP:

"The prior art reference probably has this element present, so it's inherently disclosed."

✅ CORRECT:

For inherency: element must be necessarily present, not just probably or possibly present. Natural result flowing from explicit disclosure. Cannot be based on probabilities.

💡 Example:

Inherent: Prior art heats water to 100°C → inherently produces steam (necessarily follows)
NOT inherent: Prior art may heat water → might produce steam (not necessarily)

⚠️ Motivation to Combine: TSM Not Required (KSR)

❌ PRE-KSR TRAP:

"Examiner must find explicit teaching, suggestion, or motivation to combine references."

✅ POST-KSR CORRECT:

TSM test is helpful but NOT exclusive. Examiner can use:
• Common sense
• Ordinary innovation
• Predictable results
• Obvious to try
• Design need or market forces

💡 But Still Need Some Reasoning:

Examiner cannot just say "obvious" without explanation. Must articulate SOME reasoning with rational underpinning. KSR made obviousness easier to prove, not automatic.

⚠️ Small Entity: ALL Owners Must Qualify

❌ TRAP:

"I'm a small entity (< 500 employees), so I can claim small entity status even though I licensed rights to Big Corp."

✅ CORRECT:

ALL rights holders must qualify for small entity. If ANY assignee or exclusive licensee is large entity, CANNOT claim small entity status. Must check entire chain of title.

💡 Micro Entity Even Stricter:

Micro entity requires:
• < 4 previous applications
• Gross income < 3× median household
• No obligation to assign to entity exceeding income limit
• Not named on > 4 prior applications

⚠️ Best Mode: No Longer Grounds for Invalidity (AIA)

❌ PRE-AIA TRAP:

"Failure to disclose best mode invalidates the patent."

✅ POST-AIA CORRECT:

Best mode still required (§ 112(a)), BUT failure to disclose best mode is NO LONGER grounds for invalidity or cancellation. Can only be raised as inequitable conduct (different standard).

💡 Still Examine for Best Mode:

USPTO still examines for best mode during prosecution. Applicant must still disclose. Just cannot invalidate granted patent for lack of best mode.

⚙️ Procedural Traps

⚠️ Restriction: Election Binds Only Examiner, Not Applicant

❌ TRAP:

"I elected Group I in response to restriction. Now I'm stuck with only those claims."

✅ CORRECT:

Election binds examiner (must examine elected invention), but NOT applicant. Applicant can:
• File divisional for non-elected inventions
• Continue prosecuting both if restriction withdrawn
• Traverse restriction requirement

💡 § 121 Safe Harbor:

If divisional is "proper" (directed to non-elected invention after valid restriction), gets safe harbor from obviousness-type double patenting. No terminal disclaimer needed.

⚠️ After-Final Amendments: Entry NOT Guaranteed

❌ TRAP:

"I can amend claims after Final Rejection just like after Non-Final."

✅ CORRECT:

After Final, amendments entered ONLY if they:
• Place application in condition for allowance, OR
• Do not require further search/consideration

Examiner has discretion to deny entry. Safer to file RCE.

⚠️ RCE: Can File Multiple Times

❌ TRAP:

"I only get one RCE per application."

✅ CORRECT:

Can file unlimited RCEs (§ 132(b)). Each RCE reopens prosecution. No limit on number of RCEs allowed. Just pay fee each time.

⚠️ IPR vs. PGR: Timing and Grounds Different

Aspect	IPR (§ 311)	PGR (§ 321)
When to File	After 9 months from grant OR after PGR terminates	Within 9 months of grant
Grounds	§§ 102, 103 ONLY (patents/printed pubs)	ANY invalidity ground (§§ 101, 102, 103, 112)
Institution	Reasonable likelihood prevail on ≥1 claim	More likely than not ≥1 claim unpatentable