USPTO Announces Impending Update to Patent Bar Exam

Earlier today the Office of Enrollment and Discipline of the United States Patent and Trademark Office announced that the patent bar exam will be updated at some point in April 2011 to test material in the Manual of Patent Examining Procedure (MPEP), Edition 8, Revision 8, as well as other published USPTO policy and procedure reference materials. The additional reference materials include:

1. Examination Guidelines Update: Developments in the Obviousness Inquiry After KSR v. Teleflex

2. New Interim Patent Subject Matter Eligibility Examination Instructions

3. Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos

This announcement signals a major shift in the way would-be patent attorneys and patent agents will be tested, bringing the exam forward to test the latest developments in rules and laws.  It can be reasonably anticipated that the patent bar exam will become a moving target as the Kappos Administration continues to move forward with initiative after initiative and rules package after rules package.  With Three Track rules due to be out soon, the recent provisional patent rules package, Appeals rules soon to come and a variety of other rules packages, including a review of Restriction Practice versus Unity of Invention, those preparing to take the exam need to be mindful of the need to stay current and not rely upon outdated study guides, reference materials and old questions when studying for the exam.

Efforts to update the patent bar examination come, no doubt, as a result of the Kappos Administration’s continued efforts to revitalize the USPTO from top to bottom, and speak of a desire to make sure that those entering the practice of law are qualified with an adequate understanding of the law and rules that apply as they enter the profession.  At times in the past the exam had grown a bit stale, but the mantra around the Patent Office these days is “all hands on deck,” and that filters down throughout the entirety of the Office and into the OED.

According to the announcement on the USPTO website, the Office will be updating the content of the registration examination by updating the source material and including sources beyond the MPEP to conform the content of the examination to current practice.  The questions on the examination will correspond to the updated source material.  The Office anticipates that the update will occur some time sometime in April, 2011, with an announcement in or about mid-February from the USPTO, which will identify the exact date in April, 2011 when the update will occur. At that time the USPTO will announce the last date in April, 2011 when the current examination will be administered and the first date in April, 2011 when the examination will first be given containing updates in the question content and the source of questions.

Will the OED be able to meet an April 2011 update of the patent bar examination?  Without knowing what is going on behind the scenes, it seems likely that this has been on the Patent Office radar for some time now and is being announced now to give those studying for the examination fair warning about when the new and updated materials will be tested.  Given the likelihood that this has been in the works for some time, and given what is described to me as “Kappos time” I think it is likely that this will not slide and we will, in fact, have a date certain for the new exam to be administered sometime in April 2011.

What is “Kappos time”?  That is how some at the Office refer to meeting milestones on projects.  Kappos, the consummate professional, is not by any stretch of the imagination a typical politician.  He comes from the private sector where he spent his entire career and where things get done and missing deadlines is not acceptable.  His incredible work ethic had infected the USPTO and everyone seems to know that deadlines are not to slide, so I would be surprised to see a deadline so publicly announced slide.

As those studying for the patent bar exam know, when you take the examination, which is now in computerized format, a PDF copy of the MPEP is provided.  Gone are the days that you bring in your own copy of the MPEP and any notes you may wish.  Similarly, moving forward the announcement earlier today explains that “[w]hen any source material for the examination questions is updated, the source material will be provided to registration candidates taking the examination in PDF format on the computers at the examination site. The source materials also will be provided to those taking the USPTO administered examination.” The notice also explains that inconsistencies between the MPEP, Edition 8, Revision 8 and the specifically identified testable policies and procedures will be in favor of the policies and procedures controlling.

Whenever the Patent Office has updated the testable material in the past they have heavily tested the material tested for the first time.  That should mean that KSR v. Teleflex and Bilski v. Kappos will be heavily tested.  Up until this update the Office has not tested EFS Web, so it can be anticipated that EFS Web filing will find its way into questions rather than everything being filed in paper format.

Finally, in the interim, while we wait for the updated examination, the test will be given based on MPEP, Edition 8, Revision 4.  Those wishing to take the patent bar examination and be tested on Edition 8, Revision 4 must take the exam prior to the effective date of the update in April 2011.  After the content of the examination is updated, the currently administered examination will no longer be available for candidates.


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