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?
I’m not suggesting that those who write the patent bar examination questions are testing irrelevant stuff, but what types of questions would you ask if you were writing an exam question that tried to determine whether someone who wanted to be admitted to the club understood the rules well enough to become a member? You would likely ask questions about organization rules and procedures that fell into one of several categories: (1) those that are commonly misunderstood or unknown by current members; (2) those that are of extraordinary importance due to the magnitude of harm that could accompany a misunderstanding or mistake; or (3) those things that are particularly weird. So it isn’t at all surprising that counter-intuitive rules that are commonly misunderstood or misapplied make up a statistically relevant portion of the exam.
The patent exam actually tests real life situations, unlike so many other standardized tests, such the multi-state bar exam for example. The rules that you will learn when studying for the patent bar exam are rules that you will need to know in practice, particularly if you are in a small firm or are a solo practitioner. To pass the multi-state bar examination you need to learn what the criminal law was over 100 years ago, which is just crazy. How does that determine whether a law school graduate is fit to be an attorney?
You don’t need to pass a history exam on patent law or patent practice to achieve a passing score on the patent bar examination, but you do need to know that a month is always at least 30 days, two months is always at least 60 days and three months is three calendar months, even if that adds up to less than 90 days. When can three months add up to less than 90 days? When the examiner sends the First Office Action on the Merits in February, for example. In that case you will not get 90 days to respond during what is called the “shortened statutory period, which is the free period to respond. This being the case, in many questions things are mailed from the Patent Office to the applicant’s representative in February.
Why can’t we all just agree that a month is, oh lets say A MONTH! Sadly for those who would like to pass the patent bar and become a patent attorney or patent agent the length of a month isn’t even one of the more obscure rules! It does, however, illustrate how seemingly simple concepts can be twisted into a complicated set of rules that govern all of patent practice.
Perhaps as teachers we should be grateful that so many of the rules are just plain screwy. If you have a good memory, and if you actually want to pass this exam you really need a good memory, it is hopefully easier to remember ridiculously strange rules. But this begs the real question, which is – how did we manage to turn the patent application procedure into a process that looks more like a Monty Python sketch than a legal proceeding? Of course, the answer is because the Supreme Court and Congress know little or nothing about patent law and even less about patent prosecution, leaving the Patent Office to attempt to implement a hopelessly incoherent set of laws. This is not to say that the Patent Office is blameless, but lets always remember who is steering the ship.
In any event, the next few days will be difficult for these students sitting listening to John and I lecture. They will, however, slowly start to understand the material. The light bulbs will go on, usually around the afternoon of the third day or the morning of the fourth day. Then the overwhelming majority will pass on their first attempt to take the patent bar, upon which time they will become immediately grateful that the rules of practice and procedure at the Patent Office are inexplicably strange. After all, if this were an easy process then inventors and companies could do it on their own!
So let’s all raise a glass to whoever is responsible for the craziness found at in the rules of procedure and practice at the United States Patent and Trademark Office, and toast them for giving all of us the best job security anyone could ever ask for!