Patent Law

Exam Plan

By Gary Odom and Jordan Kuhn

USPTO registration exam questions have remained very similar throughout the years, some word-for-word identical, but the overall focus of the 100-question exam has shifted drastically. Is this merely the necessary result of a shift in exam format, or is it an indication of a change in focus at the PTO? Regardless, for those currently preparing for the Patent Bar, modify your study plan accordingly.

The exam, previously offered twice a year in paper format at 15 testing locations throughout the country, is now offered essentially any day of the year in electronic format at hundreds of Prometric testing centers across the nation. Prior to June 2004, only the paper version of the exam was offered. Test takers were permitted to bring any materials, including study materials and a marked up version of the MPEP, and excluding old exam questions, with them to the test. Currently, test takers must attack the electronic version of the exam with a pencil, some scrap paper, and an electronic, text-searchable-by-chapter, version of the MPEP.

One of the best methods of preparing for the Patent Bar remains reviewing old exam questions and working through them in a test-like atmosphere. However, the last exam released to the public is from October 2003, and although exam questions haven't changed significantly since then, the concentration of questions from different chapters of the MPEP has. In old exams, 2003 and earlier, questions were heavily geared toward Chapter 700 (Examination of Applications) and Chapter 2100 (Patentability), and although many of these questions remain, it appears the focus has shifted to other, arguably less significant, matters: Chapter 300 (Ownership and assignment), Chapter 500 (Receipt and Handling of Mail and Papers), Chapter 1200 (Appeal), Chapter 1400 (Correction of Patents - Certificate of Correction & Reissue), Chapter 1800 (Patent Cooperation Treaty), and Chapter 2200 (Citation of Prior Art and Ex Parte Reexamination of Patents).

Obviously, questions should be derived from each chapter of the MPEP, since each chapter has its own significance. However, the current distribution of questions is un-proportionate to the amount of content and the significance of the content in each chapter, and is additionally un-proportionate to the quantity of practice questions available from each section, making it more difficult to prepare for the examination.

Admittedly, with the change in exam format from the paper version to the electronic version and the corresponding change in available materials from study notes and a heavily marked up copy of the MPEP to an electronic text-searchable MPEP, it is obvious that some change in test content had to occur. Yet, questions remain. Was the change in focus the necessary change? Is the current exam a better or at least equal indication of preparedness of a future prosecutor? Can some of the current issues between examiner and prosecutor, regarding examination and patentability, be attributed to this shift?

Additionally, was the change in question concentration entirely dictated by the move to the electronic test format, or does the PTO have an ulterior motive? With current management practices, it is difficult to know.

So, what effect has this change in exam format had on patent registration applicants? Well, if we venture into chart-land, we see that there is no true historical trend for passing rates of the registration exam. Although, the average passing rate has increased from 49.2% (1992-2003, prior to electronic testing) to 57.3% (2004-2006, after the shift to electronic testing), this jump is not large enough to indicate that this trend will continue.

To those currently in the midst of studying: Limit the time you spend reviewing Examination and Patentability questions, since many of these are gimmes, and since these are no longer the heart of the examination. Concentrate instead on all of the chapters you may have overlooked at first glance; learn the details of PCTs, appeal, re-issue, and re-exam; focus on assignment, and mail dates, and facsimile transmission. Although there are not a lot of available practice questions related to these topics, try your best, review the appropriate chapters, and good luck.

To those who have recently passed the exam, after following the above advice: Congratulations! Now, please go back and review Chapter 700 and Chapter 2100 of the MPEP, so that you can be a thoroughly informed prosecutor, ready to perform his duties, in order to help revive our dying system.

Full post as published by The Patent Prospector on February 24, 2008 (boomark / email).