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Everything You Need to Know About the Patent Bar Exam


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: September 26, 2013 @ 8:00 am
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In order to represent clients before the U.S. Patent Office it is necessary to take and pass the Patent Bar Examination. In order to be registered to practice before the Office the individual seeking registration must: (1) Apply to the USPTO Director in writing by completing an application for registration form supplied by the OED Director and furnishing all requested information and material; and (2) Establish to the satisfaction of the OED Director that the applicant possesses good moral character and reputation and the requisite scientific qualifications and competence to advise and assist patent applicants in the presentation and prosecution of their applications before the Office.

In recent years the registration exam to practice before the United States Patent and Trademark Office has undergone significant change. For example, effective April 12, 2011, the patent bar examination was updated to test MPEP 8th edition revision 8, as well as KSR v. TeleflexBilski v. Kappos and the 112 Guidelines.  This update in testable material brought the patent bar exam current through Winter of 2011.

Effective January 2012, the USPTO updated 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 was also at this time updated to include questions concerning the November 22, 2011 rules governing practice in ex parte appeals before the Board of Patent Appeals and Interferences.

Effective October 2, 2013, the USPTO updated the patent bar exam adding a significant volume of newly testable material  to the Office’s Registration Exam. Specifically, the USPTO has added six new testable documents to the Patent Bar Exam, with these newly testable documents coming in the form of six Federal Register Notices.  All of this is thanks to the America Invents Act (AIA). See AIA Phase 2 Implemented.

Effective April 2013, the USPTO updated the patent bar exam 3 to cover virtually all aspects of the America Invents Act (AIA), most specifically starting to test the so-called “phase 3″ implementation of the AIA, which related to changes to make U.S. patent laws first-inventor-to-file.

There will be yet another update to the USPTO registration exam at the end of January 2014. The updated examination will additionally cover: (1) First-Inventor-to-File Final Rules; (2) Patent Law Treaties Implementation Act of 2012; and (3) Changes to Representation of Others Before the USPTO Final Rules.

Thus, the exam that will be given beginning on or about January 21, 2014, will be substantially different than the examination given at the beginning of April 2011. For that reason, relying on old study materials to pass the exam is not at all wise. Those trying to pass using outdated study materials are running an extraordinarily high risk of failing the exam.  Compounding this problem is the fact that the Patent Office has not released exam questions since 2003. With 11 years of significant changes in the law since the last release of exam questions, taking a patent bar review course is more important than ever.



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Exam Administration

For many years now the patent bar exam has been a fully multiple choice, fully computerized examination. The exam is made up of 100 questions. You will be given 3 hours to complete the first 50 questions and another 3 hours to complete the second 50 questions.

In terms of exam administration, the patent bar exam is delivered via computer and upon receiving an exam registration ticket you must schedule the exam during a 90 day window.  You take the exam at a Prometrics testing facility, and there many hundreds of facilities across the United States.

At the end of each 3 hour segment answers will be submitted so it will not be possible to return to the first 50 questions during the second 3 hour segment. It is also important to realize that when time expires the computer will automatically submit the answers whether or not you have selected an answer choice for each question. Therefore, it is extremely important to pace yourself and be sure that you answer every question, even if you only guess.  To help you develop strategies to succeed with this time sensitive exam please see MPEP Search Strategies and 10 Patent Bar Exam Strategy Tips.  

Unlike certain other standardized tests there is no penalty for guessing. You merely need to get 70% on the exam, so if you can guess your way to that threshold you will pass. This 70% score to pass does not exactly translate into needing 70 correct out of the 100 questions asked.  This is because everyone who takes the exam is given 10 beta questions that do not count toward the overall score.  So you really need to get 70% out of the 90 questions that count, or 63 out of 90.  There is no way to tell which questions are beta questions though, so you should not assume any question is a beta question that can be skipped.  The purpose of these beta questions is presumable to allow the Patent Office to add questions and test them to see if they are good questions prior to adding them to the permanent database of questions that count toward achieving the 70% required.

While you can indeed guess without penalty you should not, however, anticipate being able to guess your way to passing this exam. The Patent Bar Exam is an extremely difficult exam and the pass rate has historically been about 50%, although from time to time in the past certain iterations of the exam would have pass rates as low at 25%. Because there are a number of review courses you can imagine that those taking this exam on their own without any guidance are likely to fail. Indeed, the PLI patent bar review course I teach has a first time pass rate close to 90%, and we teach more students each year than any other course. Add onto this the fact that those who qualify to sit for the exam are engineers and scientists, who are a group not typically known for such widespread failure, and you can get a sense for just how difficult this exam is to pass. Taking the exam without some assistance and expecting to pass is not generally a winning strategy.

If you are interested in taking the patent bar exam please see the General Requirements Bulletin from the USPTO. I have also collected all the information you need to know about the Patent Bar Exam and preparing for the examination in the links below. For more information on the patent bar exam please see:

 

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patent Bar Exam, Patent Bar Review, 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.

 

9 comments
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  1. Thank you very much Mr. Gene Quinn, for posting the detailed valuable updated information about the Patent Bar Exam. I have a question in the the benefit of all Indian Patent Professionals. Whether they are eligible for this exam, who are nonresident of USA. Many thanks in advance.

  2. As you say Gene, one needs:

    “..good moral character and reputation and the requisite scientific qualifications and competence to advise and assist patent applicants in the presentation and prosecution of their applications before the Office.”

    But to advise clients who put their trust in the Register of Patent Attorneys, does not one also need something more? The UK and Germany think so. They test, for example, the candidate’s competence to advise competently with regard to non-domestic jurisdictions. They think that, these days, the public needs this competence, in a patent attorney.

    The EPO has a qualification examination too, and the US exam might have something in common with the EPO’s preliminary exam, which you have to pass before you can proceed to its Final Exam. In that Final Exam, Paper D (“the Practice” paper) tests knowledge of, inter alia, the Convention, Rules and the EPO’s MPEP. But Paper D is not enough to protect the public. Thus, the EPO’s Paper A tests competence in drafting patent applications, Paper B in prosecuting an application and Paper C drafting skills in inter Partes Opposition cases. The aim is that no attorney on the EPO Register will squander what the client has.

    Of course, the EPO and UK examination route is more costly. In particular, it needs real people to read and judge real scripts from the candidates. Conscientious, publc-sprited private practice attorneys offer their time to the examination system, to all intents and purposes free of charge.

    I’m curious. In the USA, is competence in claim drafting required to be demonstrated, before one can go on the USPTO Register?

  3. Amit-

    Aside from Canadians (there is some level of special reciprocity between the U.S. and Canada) only non-residents who have a proper work visa in the U.S. are eligible to take the exam.

    -Gene

  4. MaxDrei-

    Sadly, there is no skills based competence required in order to become a patent practitioner in the U.S.

    There are some who question whether skills based proficiency should be included in the Patent Bar Exam. There may be a pitch to the USPTO that they should take a look at the requirements to become a patent practitioner anew and consider going back to some kind of skills based test, or a test that in part includes a demonstration of skills. The problem with this, however, is when the USPTO did this in the past it was extremely difficult to pass the exam. Oddly, those with the most practice experience were most likely to fail because patent examiners graded claims. So they were looking for uselessly narrow claims. If the USPTO is going to go down that path again they would have to take that into account. It is hardly proficient to draft a claim so useless that it could never be useful to any business objective.

    Please note… I’m not hearing from within the USPTO that the exam should change, but I believe a credible outside group of concerned industry members (NOT PLI) of concerned individuals may make a suggestion in the near term to the USPTO.

    In terms of international law, the exam does test the Patent Cooperation Treaty, but that is about it. I don’t know that it is feasible for any one person to have intimate knowledge of multiple jurisdictions, but understanding the basics and at least being able to give some generalized advice for those who might seek international patent rights would seem helpful.

    Finally, the USPTO exam is overwhelmingly about procedure. The PTO wants to know that practitioners understand how to do what and when. They focus on due dates, what needs to be included in filings and how to interact with the Office (i.e., prosecution with examiners, Appeals to the Board, etc.). They test patent law very little.

    What might make the most sense would be to keep the exam they have and then add a second day, like a traditional state bar exam, that focuses on counseling clients and basic tasks one would expect an associate or agent to be able to undertake.

    -Gene

  5. Thank you Gene. When you look at European patent attorneys in the 38 Member States of the European Patent Organisation you can see 38 ways to become a national patent attorney but only one way to become a registered European (Patent Office) Patent Attorney. When you look at which candidates pass the EPO qualifying examination you see that entrants from the UK patent attorney profession have every year a higher pass rate than any of the other “big” Member States. That might be because in the UK the profession of patent attorney and that of attorney-at-law are different, complementary and of equal professional standing. Both professions are jealous of their respective professional reputations, and in consequence the UK patent attorney profession sets a notoriously high standard to pass the UK national examination to be registered as a UK national Patent Attorney (a profession with a specific right of audience in patent cases that go to trial in England).

    Who marks the EPO qualifying examination scripts? A team made up of EPO Examiners and patent attorneys already on the EPO Register. The marking process runs during the summer. Candidates wait several months after sitting the exams in the spring, before they get their results, but they get them in time to re-sit the following spring, which many of them do. All very expensive, of course, and seen by some EPC Member States as unfair to their practitioners. It is not an easy subject.

  6. Mr. Quinn,

    Thank you for the informative article. I’m currenty a 3L in a full-time class load and a part-time job. My superiors have recently assigned more IP work than usual, and I’m interested in learning more about the field and possibly venturing into IP/patent law.

    Do you have any suggestions or advice that you could offer? I do not have an undergraduate degree that would place me in Category A, and I have not looked into the Patent Bar. As such, I’m really not sure where to start, or if I should even consider such a path.

    Many thanks,

    Christopher

  7. Should I wait to begin studying for the patent exam until after January 24th of next year (2014) so that review courses may be updated? Would I possibly be wasting my time studying material geared toward a soon-to-be outdated version of the exam?

  8. Lauren-

    When do you plan on taking the patent bar exam? There are things you could focus on now if you have some time over Winter break. Much of the material will stay the same, although there are nuances sprinkled throughout that will change. If you have time to study over Winter break and you are interested in the PLI home study course I can tell you which segments to focus on for now. Our updated materials for January 24 are nearing completion.

    -Gene

  9. Thank you for the timely response! I would like to take the exam around March or April. Mostly I was just making sure that the program will be updated after I get into it. It sounds like it will. Thank you!