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 The Manual of Patent Examining Procedures is not up to date, and in places it is significantly out of date.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.”

For those who want to represent inventors or companies in their pursuit to obtain a U.S. patent it is necessary to take and pass the Patent Bar Examination and become either a Patent Attorney or a Patent Agent.  Not just anyone can take the Patent Bar Exam.  In order to qualify to even take the Exam it is necessary for the individual seeking to take the test to demonstrate to the USPTO’s Office of Enrollment & Discipline (OED) that they: (1) Possesses good moral character and reputation; (2) Possesses the legal, scientific, and technical qualifications necessary for him or her to render applicants valuable service; and (3) Is competent to advise and assist patent applicants in the presentation and prosecution of their applications before the Office.  Generally speaking, the main hurdle for most who are unable to sit for the Exam is the scientific/technical qualification requirement.

Those applying to take the Patent Bar must demonstrate to OED that he or she possesses the scientific and technical training necessary to provide valuable service to patent applicants. The General Requirements Bulletin sets forth the particulars for most situations, and divides qualifications into three distinct categories that define what the applicant must provide OED — Category A, Category B and Category C.  With Category A having a Bachelor’s Degree in a specified field is enough to qualify.  Under Category B you need a certain number of credit hours, but you must also have a Bachelor’s Degree, which means that college students are not eligible to sit for the Patent Bar Exam until they have graduated.  Category C allows other relevant technical background to suffice, but those allowed to sit for the exam under Category C are few and far between, and one would have to wonder how easy it would be to obtain employment without at least some scientific coursework at a college or University level.

 

It is the time of the year where John White and I gear up for our summer Patent Bar Review Tour, criss-crossing the country teaching the PLI Patent Bar Review Course all over the United States. Next week we will be at PLI headquarters on Seventh Avenue in New York City, followed by courses in Houston (June 6-10), San Francisco (June 19-23), Boston (July 11-15) and Chicago (August 7-11).  If you cannot make it out to a live course you can always do the home-study version of the course which is delivered via the World Wide Web.

Of course, as we are gearing up for a busy summer so are those who are peddling what really can only be characterized as fake, counterfeit versions of the PLI Patent Bar Review Course.  PLI has been the top patent bar review course for years, so it is not surprising on some levels that there are those fraudulently using the PLI name to sell knock off courses that are simply not what they purport to be.  So buyer beware!  If the price seems extraordinarily low it is because it is not a legitimate course.  Also, the only way to acquire the latest version of the PLI patent bar review course is to purchase the course directly from PLI.

Some will no doubt wonder how I am so sure that there are fake, counterfeit courses on eBay.  Good question.  Take a look at this eBay posting.  Whoever bought this course for $499.95 just wasted $499.95.  Although the ad says that it is the latest version of the PLI course that is fully updated that is simply not true.  It is a lie!

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.

Last week I was on the Road in Western Pennsylvania, with a quick road-trip north to visit Pittsburgh Pennsylvania, visiting Duquesne University School of Law on Wednesday for a lunch and learn presentation and then the University of Pittsburgh School of Law on Thursday for another lunch and learn presentation.  In between, on Wednesday evening, I drove out to Dubois, Pennsylvania to give a presentation to the Entrepreneurs Club that is associated with the Small Business Development Center of Clarion University.

As with most presentations to inventor or entrepreneur groups things quickly moved into answering questions from the audience, who then dictate where we spend our time.  On the other hand, my presentation to the law students at Duquesne and Pitt were remarkably predictable.  Whenever I travel to speak at law schools I inevitably get asked questions about what students should be doing to (1) set themselves up in a position to be hired; and (2) how to ultimately land a job.  With that in mind I thought it might make sense to do a primer on steps that can be taken in order to find a legal job.

No doubt you have heard about the new law that is upon us in the land of patents; it’s in all the papers and on all the blogs.  The America Invents Act was signed by President Obama on September 16, 2011, and marks the largest single re-write of U.S. patent law ever.  Even the 1952 Patent Act pales in comparison because that was almost completely a codification of existing case law that had developed over the decades.  America Invents, however, embarks upon a new path and leads us into the great unknown in many respects.

Those preparing to take the patent bar exam or contemplating sitting for the exam at some point in time in the future likely don’t want to hear that U.S. patent law is heading into the great unknown.  How can you be expected to take a pass the patent bar examination under these circumstances?  First: Relax. You do not have to unlearn or forget what you are currently learning, or soon will learn, for the patent exam or for your practice life after you pass the exam.  That being said, the sooner you do take the patent bar exam the better off you will be!