PTO Updates Patent Bar Exam to Test AIA & Appeal Rules

On November 23, 2011, the Office of Enrollment and Discipline announced that the Patent Bar Examination, typically referred to simply as “the registration examination” by the Patent Office, will be updated on or about January 31, 2012.

The United States Patent and Trademark Office will update the content of the patent registration examination to cover two new rules issued September 26, 2011 that relate to the Leahy-Smith America Invents Act.  These new rules permit prioritized examination of patent applications (Track I) and revise the standard for granting inter partes reexamination requests.  Additionally, the patent registration examination will also include questions concerning the November 22, 2011 rules governing practice in ex parte appeals before the Board of Patent Appeals and Interferences.

The new appeal rules do not even become effective until January 23, 2012.  For them to be tested starting 8 days later marks a significant departure in the administration of the Patent Bar Exam, and keeps the Patent Office promise to have the patent exam evolve to match the current state of law, rules and practice.

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Patent attorneys and patent agents will recall that for many years the Patent Bar Exam languished, seemingly unattended.  In fact, for many years the Patent Office did not test KSR v. Teleflex despite the fact that it is easily the most influential patent decision from the United States Supreme Court over the last generation, perhaps two generations.  In fact, every patent application has KSR issues raised because KSR fundamentally altered the law of obviousness.  See Chief Judge Rader Says KSR Didn’t Change Anything, I Disagree. The staleness of the exam allowed students to acquire old study materials and pass what had become a history of patent practice exam.  That all changed when David Kappos took the helm at the USPTO.  He has worked to reform the agency from top to bottom and the administration of the Patent Bar Exam shows that no corner of the USPTO goes unnoticed.

The USPTO last updated the Patent Bar Exam in April 2011.  Senior Patent Office officials have gone on the record in a variety of forums since then to explain that the Patent Exam will evolve and, in fact, closely chase changes to law and rules.  Some have wondered whether that was polite political speak.  The fact that the new ex parte appeal rules were first announced on Tuesday, November 22, 2011 and don’t become effective until January 23, 2012, should put any doubters to rest.  The announcement of the exam change came a single day after the ex parte appeal rules first appeared in the Federal Register and the rules will begin to be tested 8 days after they are implemented.

This is a significant announcement for anyone who is studying for the Patent Bar currently, but also for those who are contemplating taking the Patent Bar over the next 18 months.  The America Invents Act will usher in tremendous changes to the rules of practice because at a fundamental level it changes what is considered prior art for an application.  Since prior art is relevant to every single patent application filed it is a monumental shift.  Because MPEP Chapter 700, which deals with examination of patent applications, is perhaps the most heavily tested Chapter the Patent Bar Exam will change, and like change quite dramatically.  Compounding things further is that the “old law” will remain active for applications already filed prior to the changes and the material you will need to know to pass the Patent Bar will grow by at least 50% to 60%.

There are several critical dates to keep in mind moving forward.  September 16, 2012 is the one year anniversary of the America Invents Act and the date when many of the remaining provisions will become effective, particularly those relating to post-grant review.  Then on March 16, 2013 the remaining provisions become effective.  The March 16, 2013 date is when we convert from first to invent to first to file, which will usher in the most significant changes and cause there to be old law relevant to prior art for applications filed on or before March 15, 2013 and new law relative to prior art for applications filed on or after March 16, 2013.  It is also important to realize that the Patent Office is continuing to work on new rules that will relate to ex parte reexamination. When these reexamination rules will become effective is unknown, but we can expect it likely within the first half of 2012.

What this all means is that the law and Patent Office procedure are in flux.  To the extent that you can take the Patent Bar Exam prior to these changes becoming tested the better.  Historically when the Patent Office changes the exam questions on the new material are disproportionately tested.  In the first few weeks reports suggest the questions may be easy, but they ramp up in level of difficulty quite quickly.

While it may be too late to take the Patent Bar Exam prior to the January 31, 2012 change, and while we don’t know when the reexamination rules will be out, the best advice is to take the exam sooner rather than later.  If you can take the exam prior to September 16, 2012 you absolutely should.  Given the 8 day lag between appeal rules becoming effective and being tested and the 9 weeks notice in the change of the exam given by the USPTO in this instance, if the same happens again in the future you will likely have little time to plan and may wind up needing to shift gears mid-study, which is less than ideal.

Many know that for the last decade (and then some) I have taught the PLI Patent Bar Review Course.  “PLI plan” to handle changes, and anticipated changes, to the Patent Bar is to have a Supplement for both Phase I (i.e., the AIA and the New Appeal rules) ready for our January, 2012, Arlington, Virginia Course, which runs from January 11-15, 2012.  New lectures and questions for Patware will follow shortly, giving ample time to prepare for testing starting at the end of January 2012.  Similar, but much longer, treatments and updates will match USPTO exam anouncements for AIA related rule packages as they become test eligible during calendar 2012 and 2013. Then at some point, when these
elements are rolled into MPEP updates, and edits the same will roll into the study guide in the course. The PLI course will faithfully reflect the exam announcements to make sure that what is being tested is what the course covers.  PLI has also historically provided supplements to those who purchase a course, haven’t passed yet and get caught up in a change in testable material.

In terms of the material that will become tested effective January 31, 2012, the rules governing prioritized examination are available at http://www.gpo.gov/fdsys/pkg/FR-2011-09-23/pdf/2011-24467.pdf; the rules governing the revised standard for granting inter partes reexamination are available at http://www.gpo.gov/fdsys/pkg/FR-2011-09-23/pdf/2011-24464.pdf; and the new rules governing ex parte patent appeals are available at http://www.gpo.gov/fdsys/pkg/FR-2011-11-22/pdf/2011-29446.pdf.

The update in the content of the registration examination will be accompanied by an update in the source material for the questions.  The source for the questions and answers will be the Manual of Patent Examining Procedure (MPEP), Edition 8, Revision 8, as well as other published USPTO policy and procedure reference materials.  The source materials are identified at http://www.uspto.gov/ip/boards/oed/aia_regexamsourcematerial.jsp.  The applicable laws, rules and procedures as set forth in the published USPTO policy and procedure reference material will control in the event of a conflict with the MPEP, Edition 8, Revision 8.