The exam will probably contain a specific question or two directed at correcting the inventorship of an application. Priority claims will also be tested in a couple of questions. Usually, the conditions for meeting the right of priority of an application are incorporated into the test in at least one question.

Here's what you need to know:

Application Types:

Nonprovisional:
1. contains at least 1 claim
2. is not abandoned after 12 months
3. requires an oath or declaration

Provisional:
1. contains no claims
2. is abandoned after 12 months no oath or declaration is required

Conversion of nonprovisional to a provisional application:
1. requires a petition under 37 C.F.R. 1.53(c)(2) and a fee
2. the nonprovisional will become a provisional application and will keep the original filing date of the nonprovisional

Conversion of provisional to a nonprovisional application:

Rules governing the conversion of a provisional application to a nonprovisional application:
1. in the case of a successful conversion, there is only one application and that application has a single filing date, the filing date of the provisional application
2. the conversion of a provisional application to a nonprovisional application will adversely impact on the term of any patent to issue from the application
3. the conversion of a provisional application to a nonprovisional will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application
4. an applicant having filed a provisional application can avoid any adverse patent term impact resulting from converting the provisional application to a nonprovisional application by instead filing a nonprovisional claiming the benefit of the provisional application under 35 U.S.C. 119(e)

For a nonprovisional application to properly claim the benefit of the filing date of a provisional application, the provisional application must be entitled to a filing date and the basic filing fee must be paid within the time period set forth

Continuation Application:
1. if a patent examiner rejects one or more of the claims filed in an original application, a continuation application may be filed within three months of the rejection:
a. a continuation requires a new fee, newly written claims and receives a new filing date - however, the original filing date will be used to determine any prior art disputes the same subject matter is included in both
b. no new matter is acceptable

Rules governing continuation applications:
1. a continuation may be filed during the pendency of the parent
2. a continuation need only have one inventor in common

A continuation application may be filed under 35 U.S.C. 111(a) by providing a new specification and drawings and a newly executed declaration provided the new specification and drawings do not contain any subject matter that would have been considered new matter in the prior application

A continuation application may:
1. be a second, third, etc. application by the same applicant for the same invention
2. be filed under 37 C.F.R. 1.53(b) or (d)
3. be filed before the parent application becomes abandoned

Continuation-In-Part Application (CIP):

If an inventor makes improvements after he or she files the original application, he or she may file a continuation-in-part application to cover the improvements. The new material will have the filing date of the CIP application while the old material will still retain the filing date of the original application

For continuation-in-part applications:
1. the first application must be copending and the CIP will retain the earlier filing date
2. the CIP contains new matter over the patent application
3. some substantial portion of all of the earlier applications is repeated
4. some new matter is added
5. a fresh set of papers with a new oath must be sent
6. they must be filed before the parent application becomes abandoned there is some new subject matter involved
7. they may be filed under 37 C.F.R. 1.53(b)

Continued Prosecution Application (CPA):
a continuation application of a prior nonprovisional application claiming a design may be filed as a continued prosecution application

Continued prosecution applications are filed under 37 C.F.R. 1.53(d):
1. these have the same serial number as its parent although no reference to the parent is inserted into the specification
2. they cannot be filed for provisional applications
3. they can be filed for PCT applications if they are in the national stage

Correction of inventorship:

37 C.F.R. 1.48(a):
1. this rule is used as a guideline for the correction of inventorship
2. it discusses the correction of inventorship for all applications, except for reissues
3. the assignee's written consent is not required if an inventor is being deleted because some of the claims were deleted during the prosecution

A petition under 37 C.F.R. 1.48 is not required where:
1. the claims and inventorship match in the end
2. there is a spelling error in the name of the inventor
3. the inventor's name has changed
4. a court issued an order for the correction of the invention of a patent
5. there was no change in the individual, but the incorrect name was given
6. A nonprovisional application filed under 37 C.F.R. 111(a) on or after 12/1/97, which lists the names of the correct inventors, but the inventive entity differs
7. a provisional application filed on or after 12/1/97, which lists the names of the correct inventors, but the inventive entity on the cover sheet differs

Right of priority of an application

Foreign priority may be claimed under 35 U.S.C. 119(a)(d) or (f), the conditions for receiving the benefit of the filing date of a prior application filed in a foreign country include that:
1. the foreign application must be by the same inventor or by his or her legal representatives or assignees
2. the application must have been filed within 12 months from the date of the earliest foreign filing in a recognized country
3. it must be for the same invention
4. the foreign application must be filed where similar privileges are bestowed upon applicant after filing application (like an inventors certificate)

When claiming domestic priority under 35 U.S.C. 120 or 119(e):
1. the same disclosure must be present
2. the applications must be copending
3. a reference to the prior application must be made
4. at least one common inventor must be present
5. it must be filed for within the appropriate time period
6. the application must be properly translated in English