How Much Longer Can the USPTO Test an Old MPEP?

Last week I was in New York City teaching the PLI Patent Bar Review Course along with John White.  The week was a good one, although the city was crazy with heads of state at the UN, terror worries about NY City hotels and President Clinton at the Sheraton across the street from PLI headquarters at the Clinton Global Initiative gathering.  Despite all of this another group of patent bar students are going through the right of passage called the Patent Bar Exam.  The last live course for the PLI Patent Bar Review will be in San Francisco, CA, the week before Thanksgiving, so if you or someone you know is going to be taking the patent bar and would like to study for it over down time during the end of the year it might make sense to take this live immersion course to ramp up quickly and get the patent bar complete before the USPTO changes the exam.  Will the USPTO change the exam and actually start testing relevant laws?  That is a good question.  No announcement has been made, which is curious in and of itself.  One would think that eventually the USPTO will have to change the exam and test laws that at least approximate practice, right?  Who knows, but testing a version of the MPEP that is 4 or 5 years out of date is not a long term strategy.

All summer long as John and I criss-crossed the country teaching patent bar review courses in every time zone except the Mountain Time Zone, which we really should do something about, John and I would wonder over cocktails while students were reading and studying when the change to the new version of the MPEP would be made.  We both figured that the announcement would likely come in August, like it did last time and I believe the time before when new MPEP versions started to get tested.  The only wrinkle being David Kappos not taking over the USPTO until the start of August and the Office seemingly in a holding pattern for much of the summer as a result of waiting for a leader and trying to outlast the budget crisis.  But an announcement has to come sometime soon, right?

[Patent-Bar]

This summer when handicapping when a new version of the MPEP would be tested it didn’t seem like such a big deal because we figured an announcement would be coming soon, but August came and went with no announcement.  For those patent attorneys and patent agents who are not familiar with the contents of the Patent Bar Exam, allow me to point out just how crazy this testing of a horribly outdated MPEP has become.  The following are the things NOT yet tested because they are not in the tested version of the MPEP.

1. KSR v. Teleflex – The United States Supreme Court issued its decision in KSR back on April 30, 2007, so we are nearly 29 months into this obviousness nightmare and the Patent Office is not testing KSR.  We still need to teach students that the way to overcome obviousness rejections is to argue there is no teaching, suggestion or motivation.  Of course, like any responsible professors, we mention what the law is, but we cannot teach it in any depth because it would be irresponsible to cloud a student’s mind with this nonsense when they don’t need to know it for the exam.  Still, if the goal is to determine whether folks are qualified and have the requisite knowledge to practice shouldn’t the single most important and massive law change in the last 10 years since the AIPA actually be a part of the qualification process?
2. Accelerated Examination – The patent bar examination idea of accelerated examination is a Petition to Make Special.  Those still exist if the inventor is 65 years old or older, or in a poor state of health and potentially may not be able to assist in the prosecution of the patent application if there is delay.  All the other Petitions to Make Special have gone the way of Raphus cucullatus, better known as the dodo bird.  In order to accelerate an application unless there is an age or illness matter, you must use accelerated examination.  You even have to do this for green technologies.  Of course, accelerated examination requires what is known as an Examination Support Document (ESD), but sometimes called an “express suicide document” (credit to Ron Reardon) or simply what I refer to as the rope to hang yourself with.  The Patent Office likes requiring applicants to write and examine their own patent, but it is obviously not enough of a concern to test presently.
3. Electronic Filing – The new Electronic Filing System is widely used but is to new to be tested under the current version of the tested MPEP.  Yes, the USPTO has had one or another electronic filing system for quite a while, but the truth is that previous electronic filing means were so horrible that no one even used them.  With so many patent applications being filed electronically one would assume that at some point the Patent Office might want to start testing it and maybe even having some kind of practical “how do you use EFS” component to the patent bar exam.  I realize that most will not toil with EFS, rather having competent and helpful staff to handle knowing how to do is and only requiring the attorney or agent to “click here now” to file.  Nevertheless, the patent bar exam tests you as if you are a solo practitioner without even a secretary, and if that is how they test filing papers, which does make sense given the prevalence of small firms and solo attorneys and agents, shouldn’t EFS be a meaningful testing component?
4. Withdrawal from Representation – In May 2008 the Patent Office changed the rules relating to withdrawing from representation.  Under the old rule the Office required that there be at least 30 days between approval of the request to withdraw and the last day to take action on the application. Now you just need to give the client reasonable notice, deliver the client’s file and notify the client of any due dates. It is now much easier to withdraw, and testing the old rules with respect to something as important and fundamental as the attorney-client or agent-client relationship is just odd.

I could go on and on, but this gives you an idea of what the exam is testing, which is the way things used to be in many respects.  I just cannot imagine that will go on for much longer in this state.  It made sense to hold off pending figuring out what was going to happen with the claims and continuations rules, the appeals rules held up and apparently completely killed by OMB and the IDS and Markush rules that seem to have disappeared into the night.  But the word is that Kappos will somehow moot the Federal Circuit en banc rehearing of the claims and continuations rules, and the Patent Office will likely start over with all new rules initiatives.  The Supreme Court will decide Bilski within the next 9 months, probably sooner, so continuing to wait for certainty and settle law is a little like believing in Santa Claus, or maybe even like believing in patent reform.

When the Patent Office does decide to update the exam it is going to be completely different and likely far more difficult and complex, at least if the KSR guidelines and ESD requirements are any indication.  So a word to the wise — take the exam sooner rather than later if you can because the Patent Office just can’t continue to test such an outdated MPEP for much longer.