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. Teleflex, Bilski 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.
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.
Those days are long gone, for nearly a decade now, but when you do take the examination you will be provided with an electronic copy of the Manual of Patent Examining Procedures. Don’t fool yourself though — the fact that this is an “open book” exam does not mean that it is easy or that you will be able to “wing it” and rely on the MPEP as a crutch. Many people have difficulty finishing the exam and it is a recipe for failure to simply plan to rely on the MPEP to get you through the exam. This is particularly true today where much of the examination is based on new material not found in the MPEP and only available in Federal Register Notices.
Still, you absolutely must spend a so at least a part of your study familiarizing yourself with both the MPEP and search techniques and strategies that have a chance of success come exam day. You may only have time to look up information relevant to a handful of questions, but if you do go to the MPEP you want to do so with maximum confidence that the time you spend will produce a successful result.
With this in mind, here are a few MPEP search strategies to use in your practice for the patent registration exam.
Recently it has come to my attention that there is a WikiHow page titled How to Study for the Patent Bar. I have been teaching a patent bar review course for the Practicing Law Institute since 2000, so I am something of an expert on the patent bar examination. I know a thing or two about how aspiring patent practitioners can and should proceed to study for the exam. I can tell you definitively that if you follow this Wiki advice you are guaranteed to fail!
The other principle lecturer in the PLI patent bar review course, and course creator, John White, put it like this: “If a person really follows this advice, they will be our student after 2-3 failed attempts. They will also be an emotional confused confidence lacking wreck!”
Hopefully we have your attention. You absolutely must be very careful when choosing which advice to follow. While free resources are tempting because the price is right, relying on what is free is a recipe for disaster on the patent exam.
The Office of Enrollment and Discipline (OED) of the United States Patent and Trademark Office (USPTO), has announced that the patent bar examination, which is sometimes called the patent registration exam or patent agent’s exam, will be updated again effective early April 2013. No date certain has yet been announced by the OED, but based on the previous updating of the exam when new rules became effective on September 16, 2012, it can be expected that the patent bar exam will be updated sometime during the first week of April.
This next patent bar exam update will be extremely significant for those who will be taking the exam after it has been updated. OED explains that the next update of the patent bar will usher in the testing of the final phase of implementation of the America Invents Act (AIA), which will become effective March 16, 2013. “All aspects of the AIA have now made their way onto the USPTO Exam,” says John White, creator of the PLI patent bar review course and an attorney with Berenato & White.
Indeed, the so-called first-to-file rules are the final element of the AIA to be implemented and could lead to an examination that is up to one-third new material. How is this possible? First-to-file rules and law changes the 35 U.S.C. 102 in a fundamental way. This means that the very definition of what is prior art will change. That has implications for novelty directly and non-obviousness indirectly.
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.
We just wrapped up our last live Patent Bar Review Course for 2012. We were in San Francisco for the past few days, once again teaching a room of would-be patent attorneys and patent agents. This group now has the task of studying the Phase 2 implementation of the America Inventors Act, which went into effect on September 16, 2012 and started to be tested on October 2, 2012.
In the little more than a month since AIA Phase 2 became testable we have already heard from a number of our Patent Bar students who have taken the Patent Exam since the USPTO added AIA Phase 2 to it. The good news — in addition to our usual exemplary pass rate — is that the sample questions we prepared for all the supplementary materials, from KSR and Bilski all the way through AIA Phases 1 and 2, are very, very predictive of the questions you’ll see on the actual Exam. Student after student has told us that if you can handle the questions we have added to Patware (the “AIA Phase 2 Mini-Exam” was just recently added), you can handle all the questions the USPTO will ask you on the Exam.
As you may have already heard, effective — October 2, 2012 — the United States Patent and Trademark Office will be adding a significant volume of newly testable material to the Office’s Registration Exam (i.e., the “Patent Bar 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.
Does this mean that the Patent Bar will become more difficult? The answer to that question isn’t a simply YES or NO. So let’s break this down into two different questions. (1) Will the questions be more difficult on the Patent Bar Exam? (2) Will it be more difficult to pass the Patent Bar Exam? While exam questions likely won’t get more difficult, it would be naive to believe the Patent Bar will not become much more difficult with the addition of complicated new rules that only add to the legal and regulatory rules administered by the USPTO.
Let’s go back to the first question about the questions on the Patent Bar. Once upon a time the Patent Office administered the Patent Bar Exam once or twice a year to thousands of would-be patent attorneys and patent agents across the country. The October 2003 exam was the last exam administered in this way. The USPTO changed the examination to an on-demand examination that is prepared by the Patent Office, but administered by Prometric. Because questions are randomly served from the database and no two people take the same exam the Patent Office had to normalize exam difficult someway, so they scored questions on a scale of 1 to 10 in terms of difficulty. This ensures that each person gets an exam that the Patent Office deems to be of the same level of difficulty. Thus, the new material will be fit into the database and appropriately evaluated. There will not suddenly be questions of 11 or 12 level of difficulty. So in this respect each question will not be more difficult, at least from the Patent Office perspective.
Earlier today, while working on revamping the PLI Patent Bar Review Course, I needed a citation to the MPEP and an associated Code of Federal Regulations cite. It was as this time I noticed there has been a change to how the MPEP is presented on the USPTO website. Perhaps others have noticed and this is not news, but it is the first time I’ve encountered an issue finding information in the MPEP from the USPTO for a very long time.
One of my responsibilities is to write exam level difficult questions for the newly testable material, which will be tested starting October 2, 2012. This means questions relative to the changes in the rules of practice effective September 16, 2012. This requires me to not only write the questions, but also create model answers. We strive not only to explain generally what the right answer is, but to also provide a greater opportunity for learning, which requires detailed explanations.
It was at this time that I realized that the USPTO has reclassified the Manual of Patent Examining Procedure, changing the URLs where sections were located previously, making them unfindable if you use a search engine. In some instances my search even leads to “Page Not Found” errors when searching on the USPTO website itself.
Mistakes will inevitably happen during the patent process. If the mistakes could be minimized, however, that would take a giant arrow out of the quiver of those who seek to use misdirection and half-truths to bring down the patent system. It is unrealistic to expect a patent system that is error free, but there are some mistakes that are quite difficult to rationalize as the type of error that is inevitable.
In a patent system where there are approximately 500,000 patent applications a year with somewhere between 200,000 to 250,000 issued patents a year, it is foolish to think that everything will run with 100% efficiency and accuracy all the time. But how is it possible that claims that are horribly written and terribly disjointed can be allowed after examination by a professional patent examiner?
Over the last week the news has been all over the Internet in blog after blog after blog. According to NALP, the Association for Legal Career Professionals, the employment rate for 2011 law school graduates is the lowest in 18 years. See Law School Grads Face Worst Job Market Yet. As if that news wasn’t bad enough, the NALP announcement went on to explain that less than 66% of law school graduates from the Class of 2011 are employed in jobs that require bar membership. That means that over 0ne-third of law school graduates from the Class of 2011 are either back in school, working jobs that did not require them to go to law school in the first place, or they are simply unemployed.
“For members of the Class of 2011, caught as they were in the worst of the recession… the entry-level job market can only be described as brutal,” said James Leipold, NALP Executive Director. “When this class took their LSATs and applied for law school there were no signs that the legal economic boom was showing any signs of slowing, and yet by the time they graduated they faced what was arguably the worst entry-level legal employment market in more than 30 years.”