The Latest Intelligence on the Updated Patent Bar Exam

We just wrapped up our last live Patent Bar Review Course for 2012.  We were in San Francisco for the past few days, once again teaching a room of would-be patent attorneys and patent agents.  This group now has the task of studying the Phase 2 implementation of the America Inventors Act, which went into effect on September 16, 2012 and started to be tested on October 2, 2012.

In the little more than a month since AIA Phase 2 became testable we have already heard from a number of our Patent Bar students who have taken the Patent Exam since the USPTO added AIA Phase 2 to it. The good news — in addition to our usual exemplary pass rate — is that the sample questions we prepared for all the supplementary materials, from KSR and Bilski all the way through AIA Phases 1 and 2, are very, very predictive of the questions you’ll see on the actual Exam. Student after student has told us that if you can handle the questions we have added to Patware (the “AIA Phase 2 Mini-Exam” was just recently added), you can handle all the questions the USPTO will ask you on the Exam.

Generally, the Patent Exam remains as predictable as ever in terms of what the USPTO wants you to know. The USPTO concentrates on those issues that lead to loss of rights and prejudice to your client’s situation. They want to be sure you know how to get a filing date, assert priority, respond to Office Actions, start and advance an appeal, etc. As to the post-grant procedures added by AIA Phase 2, the focus is on how they are started, timing, and thresholds of proof.

Specifically, the feedback we have received suggests that approximately two-thirds of the questions come from the MPEP, with one-third coming from the materials not found in the MPEP.  This material not coming from the MPEP is the so-called “other testable material” and comes from the KSR Guidelines, Bilski guidance, 112 Guidelines and AIA Phase 1 and Phase 2. Appeals still account for approximately 3-4 questions, PCT still account for approximately 5-6 questions. But you should now also expect 3-4 KSR questions, 1-2 Bilski questions and 4-5 on Oaths/Declarations post-AIA questions.  Reports also suggest 1 question a piece on Third-Party Submissions and Citation of Prior Art.   There are 3-5 questions on the thresholds of proof and timing of Supplemental Examination, Post-Grant Review and Inter Partes Review.This still leaves 112 questions and questions on AIA Phase 1, so you can see why we say that you are likely to see nearly one-third of your exam covering questions added to the Patent Exam since it was revised in April 2011.

This breakdown of questions is not a surprise, and in fact is in line with what we expected.  See Patent Bar Exam Refresh.

The good news is that the new Patent Bar Exam is not a reason to panic, but it will require more study time than we have historically recommended simply because there is more material to know and procedures that are new, which means you will not have any familiarity with the rules and procedures that relate to such things as Supplemental Examination, Inter Partesreview and the Oath/Declaration rules are substantially different. In the past we would tell students who took our course that they should plan on spending 100 hours post-course (which we lay out for you with materials) to prepare for the Exam.  Now with the implementation of AIA Phase 2, if you take the PLI course you should plan on spending 120-130 hours post-course.

While there is no reason to panic about the new Patent Bar Exam, there is real reason for concern moving forward. The Patent Exam will not become impossible to pass, but major changes loom on the horizon. The final phase of AIA will come online and go effective on March 16, 2013.  We anticipate that Phase 3 of AIA will start to be tested by the USPTO at the beginning of April 2013.  Phase 3 of the AIA is when the U.S. converts from first to invent to first to file.  All the old first to invent rules will apply to any application filed on or before March 15, 2013, with first to file applying on and after March 16, 2013.  This means that once again additional information will be added to what you need to know to pass the Patent Bar Exam, with none being taken away.

While we have only seen the proposed rules issued by the USPTO (the final rules are not anticipated to be finally published until on or about February 16, 2012) our early estimate is that when first to file comes online it may result in as many as 25 new questions.  While that may seem hard to believe, first to file fundamentally changes the definition of what is prior art, or in other words 102.  Since any obviousness determination requires reliance on determining the appropriate prior art under 102, any 102 or 103 questions can and likely will be affected.  This is a massive change to U.S. patent laws and one that the Patent Bar Examination will almost certainly test heavily.  So if you can take and pass the Patent Bar before the end of March 2013 you will be saving yourself the headache of mountains of new material to learn.

If you are going to wait and take the Patent Bar exam until after first to file starts to be tested in April 2013, you will likely need to plan to spend 150-160 hours (or more) post-course.  By then the number of AIA Phase 2 questions should diminish, but the examination will almost certainly be 50% to 60% on newly tested materials that have come online since April 2011.

With all of this in mind, if you are going to try and get the Patent Bar Exam out of the way before Phase 3 implementation of the AIA we will be teaching two more live courses at the beginning of 2013 that will give you ample time to take the course and study afterward to get in under the wire before the change.  These courses will take place in Washington, DC in January 2013 and in San Francisco, CA in February 2013.  Our traditional Chicago, IL course in March 2013 will be with materials aimed at those taking the exam once Phase 3 (i.e., first to file) begins to be tested.

Additional Information about the Patent Bar

If you are interested in taking the patent bar exam please see the General Requirements Bulletin from the USPTO. I have also collected all the information you need to know about the Patent Bar Exam and preparing for the examination in the links below. For more information on the patent bar exam please see:



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