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!
Earlier today I spoke at the Practising Law Institute program on the America Invents Act. We had a good turnout in the room and an excellent turnout via webcast. The program was 4 hours long, and truthfully we could have gone on for at least several more hours without running out of material. For those who stayed online we ran long by about 20 minutes, and stayed talking with attendees and answering questions of live attendees for another 20 minutes. We are already talking about reprising the presentation for an audience at PLI’s New York City location on Seventh Avenue, so stay tuned.
There will be plenty of time to drill down on the particulars of the America Invents Act. The Act is dense, language choices from section to section in some places change and in other places remains the same, making you suspect that different terms must mean different things but the same term in different places has to mean the same thing, right? Our moderator, Denise Kettelberger (Faegre & Benson) said that patent attorneys should really read the Act about 10 times, which is really good advice. Every time you read it you notice something a little different, and during the presentation of others today I found myself taking notes and looking up things in the Act with new understandings. This is a major re-write of patent laws and not one that is at all simple.
That being said, I thought I might take this opportunity to provide a high level overview of the America Invents Act. What follows is discussion of 5 provisions contained in the Act. Look for an overview breakdown of additional provisions (prior user rights, supplemental examination, post-grant review, etc.) coming soon.
This morning I am sitting in the back of the conference room at PLI headquarters inNew York City. Today is day 1 of the PLI patent bar review course. John White is at the podium and going through some preliminary matters, eliciting appropriate laughter at times from the audience. Everything is fine and fun at this early morning hour, but that will soon change. After this preliminary segment we will roll up our sleeves and begin to charge through the rules and procedures that govern practice before the Patent Office. Don’t get me wrong, I do honestly believe this course is a great course, and our pass rate is extremely high, but at the start of every new class I wonder how in the name of all that is holy will we be able to make sense for these patent newbies of what has become a hopeless mess of regulatory chaos. The America Invents Act will only make matter worse, but that is another story for another day.
Thinking about what lies in front of these students is mind numbing. Even more mind numbing is that every year there are many individuals who will attempt to pass the patent bar examination without even taking any review course. What are these people thinking? Obviously, they are thinking that if they could get through a science degree surely they can get through 1 multiple guess exam. Those who have taken the exam know the danger inherent in this thinking, but how could it be possible that the rules of practice at the Patent Office have become so ridiculous and counter-intuitive? In fact, as I have told the several thousands of students I have taught over the years, the more ridiculous and counter-intuitive the more likely it will be on the exam! Scary, huh?
The America Invents Act, which just recently passed by the Congress and sent to the White House for President Obama’s signature, is the most significant patent reform legislation in decades, and it promises to change virtually all of patent practice as we know it over the next 18 months. Some pieces of the legislation will go into effect almost immediately, but other aspects of the legislation will become effective 12 months and 18 months after the bill becomes law. We are in for the largest set of changes anyone practicing has ever faced. The 1952 Patent Act codified what was in existence, the American Invents Act shakes the very foundation of patent law and patent practice.
The United States Patent Office is now offering the patent bar examination in electronic format, and that means that the way you study for the exam needs to change. In the past 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.
I have been teaching the PLI Patent Bar Review Course since March 2000, so I know a thing or two about how to help students pass the exam. Recently I published 5 Tips for Passing the Patent Bar Exam. What follows is a sequel to that article; more specifically an additional 5 tips for passing. If you are inclined to implement these tips and strategies be sure to integrate them into your practice and not for the first time on exam day.
In order to become a patent attorney or patent agent and represent inventors or corporations before the United States Patent and Trademark Office you first need the proper scientific training and then you need to take and pass the Patent Bar Exam, sometimes referred to as the Patent Agents Exam or Patent Registration Exam. The test, which is administered via computer, is an open book exam, but the Manual of Patent Examining Procedures (MPEP) is like no other book you have ever seen. It is sometimes random and haphazard, it is redundant, and it is exceptionally boring. Nevertheless, the MPEP can be your life line. The biggest mistake that anyone could make is that an open book exam is not terribly difficult. Open book exams are more difficult than closed book exams because the tester can ask more pointed and specific questions than could reasonably be asked in a closed book exam. Familiarity with the MPEP is essential to success.
Since March of 2000, I have been a principal lecturer in the PLI Patent Bar Review Course. This means I have devoted a good portion of my professional life to working with students interested in passing the Patent Bar Exam. As a result, I have come up with a number of tips that should help you develop a personal strategy for tackling the Patent Exam. Do remember though that any strategies you are going to employ should not be first unveiled on exam day. Weave these and any other strategies you want to develop into your exam preparation for maximum success on exam day.
I am currently in San Francisco, California, teaching the PLI patent bar review course. Our next live stop will be Boston from July 11-15, and then on to Chicago from August 2-6.
Wherever we go we always get large numbers of individuals who are currently in law school, have recently graduated law school or are engineers or scientists looking to change careers. During one of the breaks between sessions on day 1 here in San Francisco one of the students taking the course asked me a question that we receive quite a lot, which is: Once I pass the exam how do I learn to actually do this? Like so many things in life experience is the best teacher, but finding a job without some experience can be extremely difficult.
As I started discussing some ways to learn the craft I noticed a growing number of students eavesdropping . Soon there were a handful of students in the conversation and still more in their seats listening in. After hours on day 2 of the course I stuck around and gave some advice and answered questions from those who are new to the industry and looking to learn the craft. As a result of that discussion, and many other similar conversations over the years, I thought I would put together a top 10 list of things that new patent practitioners should know.
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