Patent Bar Past Exam Question: Incorporation by Reference

What would not be permitted to be incorporated by reference in your client’s U.S. utility patent application?

(A) Essential material from a U.S. patent.

(B) Essential material from a foreign application.

(C) Non-essential material from a prior filed, commonly owned U.S. application.

(D) Essential material from a magazine article.

(E) (B) and (D).

Official Answer

ANSWER: (E). Both (B) and (D) cannot be incorporated into a U.S. utility application. MPEP § 608.01(p).

Supplemental Answer

First, look under 608.01(p) Completeness [R-9], I. INCORPORATION BY REFERENCE, A. Review of Applications Which Are To Issue as Patents.

The paragraph beginning with “Essential material” explains that “In any application that is to issue as a U.S. patent, essential material may only be incorporated by reference to a U.S. patent or patent application publication.” Further, permitting incorporation by reference of material from unpublished applications was discontinued on October 21,2004. This specifically means that (A) is permitted. Essential materials from foreign applications and magazine articles are not included, and therefore (B) and (D) are not permitted.

The paragraph beginning “Other material” explains that nonessential material may be incorporated by reference to (1) patents or applications published by the United States or foreign countries or regional patent offices, (2) prior and concurrently filed, commonly owned U.S. applications, or (3) non-patent applications. Therefore, (C) is permitted.

Because (B) and (D) are not permitted, (E) is correct.


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