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How Much Longer Can the USPTO Test an Old MPEP?


Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog, Inc.
Principal Lecturer, PLI Patent Bar Review Course
Posted: September 27, 2009 @ 9:43 pm

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Last week I was in New York City teaching the PLI Patent Bar Review Course along with John White.  The week was a good one, although the city was crazy with heads of state at the UN, terror worries about NY City hotels and President Clinton at the Sheraton across the street from PLI headquarters at the Clinton Global Initiative gathering.  Despite all of this another group of patent bar students are going through the right of passage called the Patent Bar Exam.  The last live course for the PLI Patent Bar Review will be in San Francisco, CA, the week before Thanksgiving, so if you or someone you know is going to be taking the patent bar and would like to study for it over down time during the end of the year it might make sense to take this live immersion course to ramp up quickly and get the patent bar complete before the USPTO changes the exam.  Will the USPTO change the exam and actually start testing relevant laws?  That is a good question.  No announcement has been made, which is curious in and of itself.  One would think that eventually the USPTO will have to change the exam and test laws that at least approximate practice, right?  Who knows, but testing a version of the MPEP that is 4 or 5 years out of date is not a long term strategy.

All summer long as John and I criss-crossed the country teaching patent bar review courses in every time zone except the Mountain Time Zone, which we really should do something about, John and I would wonder over cocktails while students were reading and studying when the change to the new version of the MPEP would be made.  We both figured that the announcement would likely come in August, like it did last time and I believe the time before when new MPEP versions started to get tested.  The only wrinkle being David Kappos not taking over the USPTO until the start of August and the Office seemingly in a holding pattern for much of the summer as a result of waiting for a leader and trying to outlast the budget crisis.  But an announcement has to come sometime soon, right?



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This summer when handicapping when a new version of the MPEP would be tested it didn’t seem like such a big deal because we figured an announcement would be coming soon, but August came and went with no announcement.  For those patent attorneys and patent agents who are not familiar with the contents of the Patent Bar Exam, allow me to point out just how crazy this testing of a horribly outdated MPEP has become.  The following are the things NOT yet tested because they are not in the tested version of the MPEP.

  1. KSR v. Teleflex – The United States Supreme Court issued its decision in KSR back on April 30, 2007, so we are nearly 29 months into this obviousness nightmare and the Patent Office is not testing KSR.  We still need to teach students that the way to overcome obviousness rejections is to argue there is no teaching, suggestion or motivation.  Of course, like any responsible professors, we mention what the law is, but we cannot teach it in any depth because it would be irresponsible to cloud a student’s mind with this nonsense when they don’t need to know it for the exam.  Still, if the goal is to determine whether folks are qualified and have the requisite knowledge to practice shouldn’t the single most important and massive law change in the last 10 years since the AIPA actually be a part of the qualification process?
  2. Accelerated Examination – The patent bar examination idea of accelerated examination is a Petition to Make Special.  Those still exist if the inventor is 65 years old or older, or in a poor state of health and potentially may not be able to assist in the prosecution of the patent application if there is delay.  All the other Petitions to Make Special have gone the way of Raphus cucullatus, better known as the dodo bird.  In order to accelerate an application unless there is an age or illness matter, you must use accelerated examination.  You even have to do this for green technologies.  Of course, accelerated examination requires what is known as an Examination Support Document (ESD), but sometimes called an “express suicide document” (credit to Ron Reardon) or simply what I refer to as the rope to hang yourself with.  The Patent Office likes requiring applicants to write and examine their own patent, but it is obviously not enough of a concern to test presently.
  3. Electronic Filing – The new Electronic Filing System is widely used but is to new to be tested under the current version of the tested MPEP.  Yes, the USPTO has had one or another electronic filing system for quite a while, but the truth is that previous electronic filing means were so horrible that no one even used them.  With so many patent applications being filed electronically one would assume that at some point the Patent Office might want to start testing it and maybe even having some kind of practical “how do you use EFS” component to the patent bar exam.  I realize that most will not toil with EFS, rather having competent and helpful staff to handle knowing how to do is and only requiring the attorney or agent to “click here now” to file.  Nevertheless, the patent bar exam tests you as if you are a solo practitioner without even a secretary, and if that is how they test filing papers, which does make sense given the prevalence of small firms and solo attorneys and agents, shouldn’t EFS be a meaningful testing component?
  4. Withdrawal from Representation – In May 2008 the Patent Office changed the rules relating to withdrawing from representation.  Under the old rule the Office required that there be at least 30 days between approval of the request to withdraw and the last day to take action on the application. Now you just need to give the client reasonable notice, deliver the client’s file and notify the client of any due dates. It is now much easier to withdraw, and testing the old rules with respect to something as important and fundamental as the attorney-client or agent-client relationship is just odd.

I could go on and on, but this gives you an idea of what the exam is testing, which is the way things used to be in many respects.  I just cannot imagine that will go on for much longer in this state.  It made sense to hold off pending figuring out what was going to happen with the claims and continuations rules, the appeals rules held up and apparently completely killed by OMB and the IDS and Markush rules that seem to have disappeared into the night.  But the word is that Kappos will somehow moot the Federal Circuit en banc rehearing of the claims and continuations rules, and the Patent Office will likely start over with all new rules initiatives.  The Supreme Court will decide Bilski within the next 9 months, probably sooner, so continuing to wait for certainty and settle law is a little like believing in Santa Claus, or maybe even like believing in patent reform.

When the Patent Office does decide to update the exam it is going to be completely different and likely far more difficult and complex, at least if the KSR guidelines and ESD requirements are any indication.  So a word to the wise — take the exam sooner rather than later if you can because the Patent Office just can’t continue to test such an outdated MPEP for much longer.

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patents, USPTO

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

10 comments
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  1. Don’t forget the 101/Bilski issues.

    But for KSR, I don’t know how much good it would do to test persons on “knowledge of law” relating to that case when the MPEP so grossly misstates the law on obviousness right now. Jusy imagine the test question where the “correct” answer is that the Examiner can establish a prima facie case of obviousness by showing “some … motivation in the prior art that would have led one of oridiary skill to modify the prior art reference … to arrive at the claimed invention.” This hurdle is no hurdle at all, and Examiners use it to avoid having to show where each and every element of the claimed invention is taught in the prior art.

    Time and again I see rejections in which the Examiner says it would be obvious for a PHOSITA to add an entirely new element. Usually, it is the element that solves the problem of combining the other, known elements, to arrive at the invention. That’s total BS. Read KSR and look for the part of the opinion that says that obviousness can be established without locating all of the elements in the prior art. It’s not there.

    I’m not looking forward to the day when the Patent Bar Exam has a question that requires those sitting for it to agree with the MPEP on this point. I think the computer screen will need to come with windshield wipers to deal with all the spew from hurling applicants. I hope the next version of the MPEP does away with this horrid misstatement of the law at MPEP section 2143(G), and makes it clear that each and every element must be located in the prior art, with the “motivation” only going towards combining the teachings of the references, and not invention of entire elements.

  2. Broje-

    Typically the MPEP does not go into the arguable or deep legal substance, but rather tests on what to do when X or Y happens, or how would you respond if A or B happens. So it likely wouldn’t go into deep KSR questions, just first and second level stuff (i.e., if examiner rejects based on N + M, what do you do). On the substance knowing how you react and basically how to posture is typically as deep as it goes. I just think it is crazy to continue to test on pre-KSR law.

    I agree, Bilski will be a major change (likely) one way or another. I can understand not weaving that in pending Supreme clarity (or lack thereof) but, but after almost 2.5 years it is hard to justify not testing at least basic KSR principles, and hard to justify the many other things. If the USPTO wants a test that determines if you are qualified to practice today the exam has to be updated, and soon. Otherwise the test is becoming one that determines if you were qualified to practice 4 years ago.

    Thanks for the comment. I feel your pain.

    -Gene

  3. Thanks, Gene.

    More to the point you are making, I’m curious to hear from you one or two examples of recent test questions that test on the old law. That might help me understand exactly the kind of problem that needs to be addressed.

  4. While agreeing with your points, and having had to become accustomed to the whiplash effect of studying using the 2007 version while conducting day-to-day work under the current version of the MPEP…I’m scheduled to take the exam next week. Please don’t give me a heart attack at the thought that the MPEP version could change between now and then.

  5. RP-

    The exam won’t change for at least 60 days. They always have given that notice, so you should be safe. But I would not unnecessarily delay.

    Good luck with the exam.

    -Gene

  6. The problem is the US Patent Office is no longer in charge of administering the exam. This is a typical example of what happens when one outsources – “good enough” becomes acceptable. There is no reason the Patent Office shouldn’t administer the test twice a year at dozens of locations throughout the country – you know, the same way they did for numerous decades.

  7. Mad Prosecutor-

    This has nothing to do with the outsourcing of the administration of the exam. The USPTO provides the questions, Prometrics only serves the exam the USPTO tells them to serve to the students.

    -Gene

  8. Is there any evidence, anecdotal or otherwise, that the USPTO isn’t removing from the question bank those questions which would conflict with material found in the newer MPEP revisions? In my experience the patent bar is based on minutiae that is more permanent than, and removed from major issues of practice such as, KSR vs. TSM, Bilski, etc.

    I believe that a test taker who studies using only the latest MPEP version will be just as likely to pass as one using only the MPEP version on which the test is officially said to be based. There just isn’t enough of a difference inasmuch as the actual questions in the question bank are concerned.

  9. Robert-

    Test takers who study the latest MPEP are virtually assured to fail. Don’t fool yourself, there is an enormous difference.

    The evidence comes straight from the Office of Enrollment and Discipline. They announce which version of the MPEP the test is based on and limit the test to only those issues/matters discussed in the tested version. The tested version is Revision 4, which was published in October 2005 and first became the tested version in October 2006. So any changes post October 2005 are not tested and the law and procedure that is tested is that in effect in October 2005. Obviously, much has changed since then.

    What the USPTO does is announce a version of the MPEP and when a new version is announced a date certain is identified as the last date the test for the old version will be given. The last edition of the previous testable version ceased being given on October 17, 2006. The current Revision 4 began being tested on October 19, 2006. So if/when the USPTO begins testing a new version there will be a similar announcement, which is typically made 90 days prior on the USPTO website.

    So if you rely on the current state of the law you will study many things that are not tested, and not study many things that are tested albeit obsolete now.

    -Gene

  10. “Test takers who study the latest MPEP are virtually assured to fail. Don’t fool yourself, there is an enormous difference. … So if you rely on the current state of the law you will study many things that are not tested, and not study many things that are tested albeit obsolete now.”

    Your conclusion neglects my question, “Is there any evidence, anecdotal or otherwise, that the USPTO isn’t removing from the question bank those questions which would conflict with material found in the newer MPEP revisions?”

    Your conclusion is also wrong based on my own experience. I’m aware of the differences in the MPEP revisions, and I’m familiar, to the extent any that recent passer is, with the material in the test bank. The differences in the MPEP between then and now aren’t substantive enough to change one’s score, I don’t think even by a single point.

    So where’s the evidence? Even if it’s anecdotal?