Patent Bar Exam: MPEP Search Strategies
|Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: November 5, 2008 @ 2:49 pm
When the patent bar exam was given in written form test takers were permitted to bring in with them any materials they wanted except for old exam questions. The ability to bring practically anything into the examination lead to people tabbing the Manual of Patent Examining Procedures, creating detailed and easy to use outlines, and bringing easy to follow flow charts and tables. Gone are these days, but when you do take the examination you will be provided with an electronic copy of the Manual of Patent Examining Procedures, so at least a part of your study needs to be centered around familiarizing yourself with search techniques and strategies that have a chance of success come exam day.
MPEP SEARCH STRATEGIES 1 – SEARCH BY CHAPTER
The PDF version of the MPEP will only allow you to search within 1 chapter at a time. So, if you are looking for a reference in the MPEP using the search feature you are going to need to know what chapter to search in. Don’t be discouraged by this. By the time you take your exam you should know where all the big ticket items are located in the MPEP anyway. Additionally, you would never want to have the MPEP searchable from start to finish. You will notice, if you haven’t already, that the MPEP is extremely redundant. What this means is that if you were to search from start (page 1) to finish (the last page) for virtually any topic, you would find hundreds of references, most of which are not relevant to your immediate needs. By only allowing chapter by chapter searching the Patent Office is actually doing you a favor. Having said this, you do need to know what each chapter generally contains so you don’t have to waste time figuring out which chapter contains the information you are looking for.
MPEP SEARCH STRATEGIES 2 – STRING SEARCH
The search feature that comes incorporated into the PDF version of the MPEP that you will be given is what is called a string search. What this means is that the results returned will come back with matching strings of text. For example, if you type in “patent” the search will find not only the word “patent”, but the word “patentable”. This is because the first six letters of the word “patentable” are “patent”. This may seem like a silly example, and it probably is. Hopefully by exam time you would not need to look up the word “patent” in the MPEP. Nevertheless, you might be tempted to try and look up “RCE”, the short hand reference of a request for continued examination. This might seem reasonable, at least until you realize that the word “commerce” ends with the letters “rce”. Given that the United States Patent Office is a federal agency in the Department of Commerce, you can imagine how often the word “commerce” appears in the MPEP itself. The point is that you want to be familiar with the quirks associated with using the search feature prior to exam day. The only way to become familiar with the quirks, such as the string search, is to spend some time practicing searching during the post course.
MPEP SEARCH STRATEGIES 3 – STRANGE NAMES
Another way to speed up the look-up process is by identifying strange names of inventors or particularly well defined technologies. Now, don’t panic, the exam itself is content neutral with respect to technology. Just because the question starts to mention some specific technology does not mean you need to understand the technology. In all likelihood the question is just giving you background information to create a context, and the question will deal with when you need to file an appeal brief or how long you have to respond to some action of the examiner, or some other equally technology neutral question. Nevertheless, because those who write the questions for this exam sometimes lift questions straight out of the MPEP, without changing the names of the parties or the name of the technology, by putting in an inventor name or the name of a specific invention you might find yourself take to the exact spot in the MPEP where the question writer lifted the question from, which means an easy point for you.
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About the Author
|Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)
B.S. in Electrical Engineering, Rutgers University
J.D., Franklin Pierce Law Center
L.L.M. in Intellectual Property, Franklin Pierce Law Center
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Gene 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’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting and patent prosecution. As an electrical engineer by training his practice primarily focuses on software, computers and Internet innovations, as well as electrical and mechanical devices. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide.