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?

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

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.

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

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

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.

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

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.