Posts Tagged: "patent bar"

I will be attending meetings in Morristown, NJ, on Tuesday, October 21, 2014. One of my sponsors, Innography, will be sponsoring the free happy hour event… John White and I will be in San Francisco teaching the PLI patent bar review course at the end of October 2014. This will be our last live course of the year, with our next live course being in the DC/VA area the first full week of 2015. Of course, home study courses are always available.

In recent years the registration exam to practice before the United States Patent and Trademark Office has undergone significant change… 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.

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.

Perhaps the most ridiculous suggestion given (step 8) is to download the free PTO Patent Bar Exam Review Package from CNET. The WikiHow article explains that this free package contains MPEP 8th edition revisions 1 and 2. Why would you ever want to even consider the 8th edition revisions 1 and 2 when you will be tested on the 8th edition revision 9? Revision 9 was published August 2012. Revision 1 was published February 2003 and revision 2 was published May 2004. Why would anyone who is at all serious use materials that are a decade old to take an exam that is constantly being updated and refreshed with new materials? If you study the wrong MPEP edition you have absolutely NO chance to pass the patent bar 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.

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.

Generally, the Patent Exam remains as predictable as ever in terms of what the USPTO wants you to know. The USPTO concentrates on those issues that lead to loss of rights and prejudice to your client’s situation. They want to be sure you know how to get a filing date, assert priority, respond to Office Actions, start and advance an appeal, etc. As to the post-grant procedures added by AIA Phase 2, the focus is on how they are started, timing, and thresholds of proof.