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Earlier this week we asked you our fourth Patent Bar Review Question of the Week. Remember, this week’s question is closely patterned after Question No. 2 on the October 2000 afternoon exam session, with one added benefit: Mr. Gardner has modified the Patent Office’s Model Answer to accommodate Rules and MPEP changes that have been made since the question was first released. This added information will further help you understand and prepare for what may be asked on a future Patent Bar. Here’s the question (to remind you) followed by the US Patent Office’s “Model Answer” as well as detailed commentary and analysis from from Patent Resources Group’s Academic Director Paul Gardner.
Question of the Week No. 4 (Q and A No. 2 from October 2000 Exam, Afternoon Session):
QUESTION: Which of the following is not a proper incorporation by reference in an application prior to an action closing prosecution or abandonment of the application?
(A) Incorporating material necessary to describe the best mode of the claimed invention by reference to a U.S. patent application publication.
(B) Incorporating non-essential material by reference to a prior filed, commonly owned pending U.S. application.
(C) Incorporating material that is necessary to provide an enabling disclosure of the claimed invention by reference to a U.S. patent.
(D) Incorporating non-essential material by reference to a hyperlink.
(E) Incorporating material indicating the background of the invention by reference to a U.S. patent which incorporates essential material.
Patent Office’s “Model Answer”
2. ANSWER: (D) is the correct answer. MPEP § 608.01(p).
(A) is incorrect because “essential material” may be incorporated by reference to a U.S. patent or U.S. patent application publication. 37 CFR 1.57(c).
(B) is incorrect because non-essential material may be incorporated by reference to commonly owned pending U.S. application.
(C) is incorrect because material necessary to provide an enabling disclosure is essential material, which may be incorporated by reference to a U.S. patent.
(E) is incorrect because non-essential material may be incorporated by reference to a U.S. patent which incorporates essential material.
Paul Gardner’s Commentary:
This question and answer concern the potentially useful mechanism for expanding the information disclosed in the specification of an application by simply making reference to a prior document that already contains the information. Thus, for example, where the specification of an application, as filed, states that a particular prior filed application or prior published document “is hereby expressly incorporated herein by reference,” the specification is treated a containing the information in the prior document.
There are, however, important requirements for the proper and effective use of that practice which are imposed by the Patent Office in order to minimize the burden on the public to find and obtain copies of the prior document. These requirements are set forth in 37 CFR 1.57 and MPEP 608.01(p)I., some of which are implicated by the answer options for this question.
Most notably, “essential material,” which is material that is necessary to satisfy the description, enablement, best mode, definiteness, and means-plus-function claim requirements of 35 U.S.C. Section 112, paragraphs 1, 2 and 6, may only be incorporated by reference to a U.S. patent or U.S. patent application publication.
Non-essential information, however, such as background information, are not subject to the foregoing limitation.
Further requirements are that the incorporated document be clearly identified, and that the incorporation-by-reference language used clearly indicate the applicant’s intention to incorporate the information into the specification.
Finally, hyperlinks and other forms of browser executable code are not permitted.
For more information on preparing for the Patent Bar, please see Patent Resources Group’s Patent Bar Review Course homepage, where you can get information on upcoming dates and locations for the course, including Boston in June, New York in September, San Francisco in November, and Dallas in December. Those unable to attend can even take the review courses via extensive home study DVD course materials. No matter how you take the course, you’ll receive thousands of dollars of study material and software, an exceptional value. The PRG Patent Bar Review Course is the authoritative Bar Review course designed to get you the best results.
This post was edited by Chris Jagalla.