Mar 212011

Saturday found me at the local Prometric testing facility taking the USPTO Registration Examination (aka Patent Bar). At the end of the 6 hours of testing, I was disappointed to see that I had missed the 70% mark by only a few questions. On the ensuing ride home, which seemed like an emotional roller-coaster, I realized that I had learned some important lessons.

1. Don’t underestimate the exam.

The pass rates of the patent bar are low for a reason. A lot of information gets tested. When you consider that the MPEP by itself is at least 2318 pages, there are 88 pages of patent statutes and 334 pages of patent rules, plus throw in the international rules and it becomes very clear that there’s a lot to wrap your brain around. I gained a humble appreciation for the exam. It’s kind of like summiting a very large mountain. Once you get to the top, sore and depleted, you look down at what you just hiked and realize you appreciate the mountain’s height. That’s what happened to me with the patent bar. I appreciated its depth by hiking its ridges! Just remember to take sufficient time to study for this test, which can mean different things to different people.

2. Don’t think you’re the exception.

I approached the patent bar with the mentality that I would probably pass because I wasn’t the typical patent bar test-taker. (For the record, I don’t even know what the typical patent bar test-taker is, but I envisioned it to be someone who didn’t yet have that much patent experience.) I thought that since I had exposed myself to plenty of patent law material at school and at work, I would be prepared for the exam. This was partially true as the classes, school events and work did prepare me, but it was not enough. The specificity on some of the questions tested is so high that you cannot possibly know the answer without poring over the pages of the MPEP. It will take hard studying for everyone.

3. Get with a study program.

There are a lot of study options for this test. I chose to study for free by using the resources that were available to me. This approach actually worked pretty nicely, I believe. I have always been someone who does well with practice problems so using previous exams helped me learn the material well. Reading through study material takes on a completely different dimension when I am actively seeking the solution to a problem. So I found it extremely helpful to just go through previous exams. Last summer, I made an iPhone app called “Actual Patent Bar Q’s and A’s.” It gives you the questions and answers from 9 tests (1999-2003). The only problem with the app is that many questions and answers contain a lot of text, which doesn’t fit very comfortably in a small screen. An iPad update is in the works.

For those of you who similarly learn through practicing on actual questions, I ran across a very nice product by CATPrep. Their Patent Bar Simulator is a Java applet, which allows for taking previously administered tests (from 2003 to 1999) on a Mac or PC. The simulator quite nicely reflects the software that Prometric uses. I found it very helpful to go through practice sessions. The MPEP link they use is not exactly similar, but CATPrep does provide the individual files for download, allowing you to open the files in a separate PDF viewer. I used Adobe Reader 5.1 and it seemed to be similar to Prometric’s Reader version.

Other available programs can be expensive. I think they have value in that they force you into a regimen of studying on a regular basis. However, I don’t know too much about them. I would recommend that anyone who is looking at taking the patent bar look into the right study program for them.

4. Don’t be stubborn.

The answers to all of the questions are available to you with one click of the MPEP button. The problem is finding it amidst so much material. It is tempting to spend too much time on one question to find the answer–especially if you know you are close. But resist that temptation. Mark the question if you are unsure, maybe even make a guess, and move on.

5. Tests are funny.

The PTO wants to make sure that you know your stuff before it will grant you a license to practice before it. I learned through a friend of mine they used to administer a more diverse exam which included a claim drafting session. However, times have changed into an efficiency-driven exam of multiple choice questions. Like all multiple choice questions, though, it can be hit-or-miss depending on a wide variety of factors you can’t control. You might psyche yourself out in situations where normally you would do well. Even though towards the afternoon session of my exam I felt like I was really in a good rhythm, the morning session felt rocky. It was early, I was in a new environment, and I hit a couple tricky problems at first. I have no advice here. Tests are what they are. You won’t always do well on them, but you can bounce back and take them again. That is what I plan on doing. My next time will be different after April 4, but I am excited as the updated material will prepare me to have a better handle on updated patent law.

 Posted by at 5:19 pm
Feb 222011

Here is question 28 from the April 15, 2003 morning session. There is a catch to this quiz–the answer is not known. All answers were accepted I believe because the date November 8, 2000 should have been November 8, 2002. Updating the question to reflect the change, what is the answer to the following question?

28. A non-final Office action dated Friday, November 8, 2002 set a three month shortened statutory period for reply. The practitioner petitioned for a one-month extension of time on Monday, February 10, 2003 and paid the appropriate one-month extension fee. An amendment responsive to the Office action was filed on Tuesday, March 11, 2003. Each independent claim in the application was revised and two dependent claims were canceled. No claim was added by the amendment. In the Remark’s portion of the amendment, the practitioner expressed his belief that no fees are required by the amendment, but nevertheless authorized charging any necessary fees to the practitioner’s deposit account, including fees for any required extension of time. A duplicate copy of the amendment was filed. No fees were submitted with the amendment.

 Posted by at 5:44 pm
Jan 132011

Some of you may recall my fascination last year with the distinction in software between a license and a sale. I argued that it makes more sense to consider computer program transactions as sales rather than licenses. Well since my post, a lot has changed in the patent-eligibility landscape. The Supreme Court in Bilski went deep into analyzing process patents. Even though the Court sidestepped software, opening it up for a future time, some of the issues it raised with regards to general process claims were quite interesting.

Just the other day I was reading about particular exercises used to optimize the human body in certain ways. True to my patent-law geek form, I immediately thought about the patentability of such exercises as novel techniques. As the dissent in Bilski pointed out, a couple hundred years ago, processes people would not have thought about patenting, are today at least being considered for patentability. Without saying whether this is a good or a bad thing, it is interesting that process patents are finding their own niche in the realm of inventions. This refinement has a long ways to go in terms of defining what a non-patentable process is, such as an abstract idea.

I’d like to take you back to my post about the difference between sales and licenses. If I teach someone else how to do a process in exchange for something in return, is this a sale or a license? It may depend on how the arrangement is set up. According to the MPEP, however, it is per se a license. You see, I’m currently studying for the USPTO registration examination and I just read a section in the patentability section of the MPEP, discussing the 102(b) sale requirement.

A claimed process, which is a series of acts or steps, is not sold in the same sense as is a claimed product, device, or apparatus, which is a tangible item. “‘Know-how’ describing what the process consists of and how the process should be carried out may be sold in the sense that the buyer acquires knowledge of the process and obtains the freedom to carry it out pursuant to the terms of the transaction. However, such a transaction is not a ‘sale’ of the invention within the meaning of §102(b) because the process has not been carried out or performed as a result of the transaction.” In re Kollar, 286 F.3d 1326, 1332, 62 USPQ2d 1425, 1429 (Fed. Cir. 2002). MPEP 2133.03(c) (8th Ed. 4th Rev.)

This simplifies process patents for now, applying a broad brush stroke to all process patents not being sales, but I am predicting that the delineation will soon need to be more precise. Some process patents are gray in their conceptualization and I sometimes like the challenge of exploring gray areas. More to come.

 Posted by at 10:37 pm