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!
The patent bar exam, or registrants exam as it is sometimes referred to, will begin to incorporate some of the early changes within the next 3 months or so. The PTO will give you plenty of notice as to when changes to the patent exam will begin. The USPTO has always given 90 days fair warning on changes to testable material. For information on the patent bar exam you can check with the USPTO’s Office of Enrollment and Discipline Exam Resources page. As of this morning there is no announcement regarding testing new material. The latest update to the exam was announced in January 2011 with the newly testable material identified in February 2011 and testable starting in April 2011. So for those taking the patent bar exam over the next 90 days you will not be tested on anything in the America Invents Act.
Bob Stoll, the Commissioner for Patents, has been quoted as saying that the Office has the intent to continue to keep the patent bar exam up to date. Therefore, it is quite likely that in the coming months an announcement will be made and at least some of the America Invents Act will begin to be tested. Most, if not all, of the early effective date statutory changes relate to fees and a handful of procedural items that the fee enable. For a rundown of those things that became immediately effective with the enactment of the America Invents Act see Immediate Changes to Patent Law Start Today. Thankfully, at least for those soon taking the patent bar exam, the big, sweeping, changes (i.e., first to file and the many post grant review possibilities) will not be effective for 12 to 18 months. Once they do come online we expect testing will follow suit.
Don’t forget that as of the end of the 2011 fiscal year on September 30, 2011, the PTO has a “backfile” of nearly 679,000 patent applications that have not yet been given even a first Office Action. It will take at least 3 to 4 years, likely longer, to resolve all the patent applications currently pending. If you factor in appeals from those cases, continuation applications and requests for continued examination and we are realistically talking about 7 to 8 years for this chunk of applications to work their way through the system, with the inevitable outlier patent application that will take 10+ years thanks to multiple delaying episodes (i.e., chaining RCEs and an appeal together, for example). On top of this, we will still be filing patent applications subject to the old, first to invent system through March 15, 2013. This, as well as reexamination timeline realities (i.e., statute of limitations survives 6 years past a patent falling into the public domain), means that the “old law” will remain relevant to life at the Patent Office for quite some time.
All of the backfile is subject to almost all of the old laws and rules. Hence, the PTO Exam will cover a blend of these laws/rules/practices beginning some time in the fall of 2012 and will continue to test these materials for at least 2 to 3 years after that, perhaps even longer with respect to questions about reexamination and appeals. Thus, the bottom line is this: do not unlearn or forget anything, it all matters, and will continue to for years both on the exam, and in real practice. What will make the patent bar examination more difficult if you wait to take it until after the America Invents Act is fully testable is the need to learn both the old law and the new law. For those who take the exam after full implementation of the America Invents Act changes we estimate that the amount of information you will need to know will grow by at least 50%. This will likely hold true for several years before the old law starts to slowly disappear from the exam little by little.
Lastly, do not delay. If the enactment of the America Invents Act provides an extra impetus to start your preparation for the PTO Exam; good. The exam will only become even more of a moving target both to write and to teach to. Get ahead of this if you can!
For those who cannot get ahead of the testing of the America Invents Act, and who are also enrolled in the PLI Patent Bar Review Course, we will be there for you. As with any update to the exam to incorporate newly testable materials, we will prepare written materials, lectures, and practice questions to help you prepare. Those familiar with the PLI approach to updates know that we leave no stone unturned. Typically when newly testable material is first on the exam it is quite easy, but ramps up in level of difficulty quickly as more complex questions are written; and that is exactly what happened with the April 2011 update.
So our advice is take the exam sooner rather than later if you can. In the meantime just ignore the America Invents Act, at least for purposes of patent bar exam preparation. You will have plenty of time to deal with the intricacies of the new patent laws once you have a Registration Number!