Patent Bar Blues: New Rules, Old MPEP Make for Difficult Study
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
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Posted: Jan 11, 2013 @ 11:51 am
Since April 2011, the United States Patent Bar Examination has been a moving target. For many years the exam was static, largely remaining the same. Numerous repeat questions would be asked from administration to administration and changes to the law not tested. In fact, it was nearly 5 years before the USPTO started testing changes to the law of obviousness mandated by the U.S. Supreme Court in KSR v. Teleflex, which was difficult to imagine since the law fundamentally changed and impacts nearly ever application filed.
Enter David Kappos. As Kappos was setting out to redefine the USPTO he also made time to have his team update the stale patent bar exam. The first updates of the patent bar examination in some time were unveiled in April 2011, and with every new Federal Register Notice the exam is being updated to test the latest law and newest rules.
There does, however, remain a problem associated with studying for the patent bar exam. The Manual of Patent Examining Procedures is not up to date, and in places it is significantly out of date. That can make studying for the patent bar a daunting task for those who attempt to do it on their own. Without the guidance of a course that can pull everything together it is quite possible that a student will study the wrong material out of the MPEP, even believing they are about to get a question correct because the answer is included in the MPEP. A case in point will illustrate.
As many likely know, I have taught the PLI patent bar review course for 12+ years. One of my roles in addition to teaching is writing new exam level difficulty questions for the database we provide for students to practice with. In addition to writing new questions based on Federal Register Notices I also write new questions based on the feedback we receive from students who have passed. I also search the Web for discussions about what others have seen on the patent bar exam.
On one particular discussion forum I saw a detailed discussion about a particular question that many were reporting they had seen on their exam. To a person everyone was agreeing on the correct answer and telling future takers to look for the question and safely know that they could rely on the answer because it comes straight from the MPEP. The unfortunate thing is that all of these individuals were getting this question incorrect and anyone who relied on this information moving forward would get the question incorrect. The MPEP section that points to one answer as correct cites an old version of the Rule. The Rule was modified in a Federal Register Notice, which is a testable document and supersedes the MPEP. The new language of the Rule has not yet made it into the MPEP section. The moral of the story is that you have to be very careful when you rely on these forum sites and take advice from someone who is either studying or just passed the exam. They may be giving you good information, but they may be leading you astray.
With the permission of PLI what follows is a question I wrote on this point that is now in the PLI database of questions along with several thousand other questions. Following the question is the explanatory answer that accompanies the question so students can further their learning as they review practice exam results.
Hideki Matushi is the inventor of an air bar apparatus for a motorcycle and an associated method of manufacturing the air bag apparatus. After filing two sequential Requests for Continued Examination it has become clear that the patent examiner is not going to find any claims presented patentable. Consequently a decision to appeal is made and a Notice of Appeal filed with the Patent Office, which is received by the Office on September 14, 2012. The appeal brief is prepared and filed on November 13, 2012. The appeal brief does not mention whether Matushi is the real party in interest. As it turns out, Matushi is the real party in interest (indeed the only party of interest) and the failure to specifically identify him as the real party in interest was an oversight on the part of his patent attorney. There is no assignee of record in the application. How will the Board treat the appeal brief?
A. The Board will assume that Matushi, as the named inventor, is the real party in interest and the case will proceed on appeal.
B. The Board will notify Matushi of the defective brief and he will be given time to cure the defect.
C. The filing of a non-compliant appeal brief will result in a dismissal of the appeal.
D. The Board will do nothing until March 15, 2013, at which time the appeal will be abandoned due to failure to submit a compliant appeal brief.
E. The Board will do nothing until April 15, 2013, at which time the appeal will be abandoned due to failure to submit a compliant appeal brief.
Pursuant to 37 CFR 41.37(c)(1)(i)(effective January 23, 2012), “A statement identifying by name the real party in interest at the time the appeal brief is filed, except that such statement is not required if the named inventor or inventors are themselves the real party in interest. If an appeal brief does not contain a statement of the real party in interest, the Office may assume that the named inventor or inventors are the real party in interest.” Thus, failure to specifically identify Matushi as the real party in interest will not result in the brief being deemed to be non-compliant.
B is incorrect in this situation. It is, however, correct that if a non-compliant appeal brief is filed the “appellant will be notified of the reasons for non-compliance and given a time period within which to file an amended brief.” See 37 CFR 41.37(d). Here, because Matushi was the only real party in interest there is no defect that requires correction.
IT IS IMPORTANT TO NOTE that if you read MPEP 1205 you will become convinced that the answer is B, not A. Such a believe would be due to the fact that section 1205 of the latest revision of the MPEP (from August 2012) quotes an old version of 41.37(c)(1)(i). This will lead you to erroneously believe that answer B is correct. Please look specifically at 37 CFR 41.37(c)(1)(i) in the Federal Register Notice titled “Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals,” dated November 22, 2011, and which became effective on January 23, 2012.
C, D and E are incorrect because the brief was compliant. See 37 CFR 41.37(c)(1)(i) (effective January 23, 2012). Also, the date in D is only 6 months after the receipt of the Notice of Appeal. Remember, the shortened statutory period for filing an appeal brief is two months, which can be fully extended by 5 months, which means the appeal brief can be filed up to 7 months after the receipt of the Notice of Appeal. Of course, after the shortened statutory period automatic extensions of time would be required.
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.