Are you interested in taking the Patent Bar exam after the December 16th, 2016 updates?
If so there are a few things to know.
First, you have to take the exam on or before December 9th, 2016 if you don’t want to deal with the updates.
December 9th will be the last day the exam is offered prior to the update. After the 9th, the USPTO will take about a short break until December 16th. No one can schedule an exam date during that time period.
The USPTO stops scheduling exams for about a week every time they update to allow the Prometric testing centers time to refresh the question bank and the MPEP + supplemental materials they are allowed to search.
Some of the questions previously in beta will be transferred out of beta and into the scored question pool while the new questions will be added in beta format.
The questions covering the new material will be in beta format for an undisclosed amount of time. It is possible this new material will be in beta until the exam is updated again. However, it is also possible (and more likely) that the USPTO updates the question bank in between major updates to the exam.
However, one strategy is to quickly guess on questions covering the new material since those questions will likely be in beta and not scored. It’s a gamble, but the sooner after the exam is updated that you take the Patent Bar, the more likely that the new material will not be scored.
In addition to updating the question bank, the Prometric testing center will also need to update the search documents test takers can review during the exam.
Since the exam is open book, you will have access to the MPEP (split up into 30+ different PDF files organized by chapter) and each of the supplemental exam notices (also in PDF format).
What Exactly is Changing/Updated?
Second, here’s further information on what exactly this new update entails.
The exam has been covering the MPEP 9th Edition, Revision 07.2015, Last Revised November 2015 since March of 2016. Fortunately, that is still the version of the MPEP that will be tested post-December. The MPEP is where the bulk of your exam questions will come from. If you started studying before December then that’s fine, you’re ahead of the game.
In addition to the MPEP, the USPTO has also been testing over 4 supplemental PDF’s. These cover New Trial Proceedings (Inter Partes, Post Grant, and Covered Business Method Review) and Derivation Proceedings. These are all part of the America Invents Act (AIA).
The other 2 supplements are Changes to Representation of Others which essentially covers Ethics of Patent Practitioners and the Patent Prosecution Highway or PPH Program. Each of these 4 supplements have been tested on the exam for a while. Again, if you’ve started studying those then you’re ahead.
Here is how the USPTO source materials covered through December 9th, 2016 are listed on the USPTO website:
- 1. Manual of Patent Examining Procedure (MPEP), Ninth Edition, Revision 07.2015 http://www.uspto.gov/web/offices/pac/mpep/index.html;
- 2. Inter Partes, Post Grant, and Covered Business Method Review Final Rules (77 Fed. Reg. 48680, August 14, 2012) http://www.uspto.gov/aia_implementation/fr_specific_trial.pdf;
- 3. Derivation Proceeding Final Rules (77 Fed. Reg.56068, September 11, 2012) http://www.uspto.gov/aia_implementation/2012-22204-derivation-proceedings.pdf;
- 4. Changes to Representation of Others Before the USPTO Final Rules http://www.gpo.gov/fdsys/pkg/FR-2013-04-03/pdf/2013-07382.pdf; and
- 5. Implementation of the Global and IP5 Patent Prosecution Highway (PPH) Pilot Programs with Participating Offices http://www.uspto.gov/patents/law/notices/global-ip5.pdf
The only change post-December 16th, 2016 is the addition of 10 new supplements. So the version of the MPEP and the 4 additional supplements are all the same. You need to know all those. In addition, you will have 10 additional supplements covering Subject Matter Eligibility (also known as SME).
Here is how the source materials post December 16th, 2016 are listed on the USPTO website:
- 1. Manual of Patent Examining Procedure (MPEP), Ninth Edition, Revision 07.2015 http://www.uspto.gov/web/offices/pac/mpep/index.html;
- 2. Inter Partes, Post Grant, and Covered Business Method Review Final Rules (77 Fed. Reg. 48680, August 14, 2012) http://www.uspto.gov/aia_implementation/fr_specific_trial.pdf;
- 3. Derivation Proceeding Final Rules (77 Fed. Reg.56068, September 11, 2012) http://www.uspto.gov/aia_implementation/2012-22204-derivation-proceedings.pdf;
- 4. Changes to Representation of Others Before the USPTO Final Rules http://www.gpo.gov/fdsys/pkg/FR-2013-04-03/pdf/2013-07382.pdf; and
- 5. Implementation of the Global and IP5 Patent Prosecution Highway (PPH) Pilot Programs with Participating Offices http://www.uspto.gov/patents/law/notices/global-ip5.pdf
SUBJECT MATTER ELIGIBILITY GUIDANCE AND TRAINING MATERIALS
- 6. Memo dated July 14, 2016, Recent Subject Matter Eligibility Rulings (Rapid Litigation Management v. CellzDirect and Sequenom v. Ariosa) http://www.uspto.gov/sites/default/files/documents/memo_rlm-sequenom.pdf;
- 7. Memo dated May 4, 2016, Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection http://www.uspto.gov/sites/default/files/documents/ieg-may-2016-memo.pdf;
- 8. Subject Matter Eligibility: Workshop II Handout http://www.uspto.gov/sites/default/files/documents/ai-workshop-ii-handout.pdf;
- 9. Subject Matter Eligibility: Worksheet, Example 21, Claim 1 http://www.uspto.gov/sites/default/files/documents/ai-workshop-ii-ex-21-cl-1.pdf;
- 10. Subject Matter Eligibility: Worksheet, Example 21, Claim 2 http://www.uspto.gov/sites/default/files/documents/ai-workshop-ii-ex-21-cl-2.pdf;
- 11. Subject Matter Eligibility: Worksheet, Example 23, Claim 3 http://www.uspto.gov/sites/default/files/documents/ai-workshop-ii-ex-23-cl-3.pdf;
- 12. Subject Matter Eligibility: Worksheet, Example 23, Claim 4 http://www.uspto.gov/sites/default/files/documents/ai-workshop-ii-ex-23-cl-4.pdf;
- 13. July 2015 Update: Subject Matter Eligibility http://www.uspto.gov/sites/default/files/documents/ieg-july-2015-update.pdf;
- 14. 2014 Interim Eligibility Guidance Quick Reference Sheet http://www.uspto.gov/patents/law/exam/2014_eligibility_qrs.pdf; and
- 15. 2014 Interim Guidance on Patent Subject Matter Eligibility https://www.gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf
The new materials include the Subject Matter Eligibility guidance and training materials. These PDF’s delve into the topic of Subject Matter Eligibility in a much deeper level than what is within the MPEP. Any of those PDF files and the material within them can be covered on the exams post December 16th, 2016.
Although it looks like a lot of material, fortunately, many of the PDF’s are very short. They range from only 2 pages in length up to 16 pages long. We’ve counted up the number of pages for each of the PDF’s and added them together; there’s an additional 74 pages of material for you to review.
PES Patent Bar Review & the Subject Matter Eligibility Updates
The PES Patent Bar review course covers all the material tested on the exam. To help you prepare for the new supplements, we’ve outlined and summarized the most important material from each of the PDF’s and put it in a format that’s easier to review.
In addition, we’ve created a short answer quiz, a workbook quiz with true/false and fill-in-the-blank questions, and added a practice exam topic on Subject Matter Eligibility. Between these new quizzes, we’ve added 57 questions on this new material.
We’ve also added right at 100 new quiz questions on material that will likely be moving out of beta and into the scored question bank.
All these questions, summaries, and additional materials have been added to all of our print materials as well as the online course. So however you prefer to study, you can rest assured that you’re getting the updates you need.
In all, we’ve spent a significant amount of time updating our course for the new supplements which will result in our clients continuing to be well prepared for the exam.
While this update isn’t anywhere near as involved as the previous March 16th, 2016 Patent Bar update, we take every update seriously and do our best to keep the course current.
Right now the PES Patent Bar review currently has 2,290 total questions within it (these are split up between quizzes, short answer questions, and practice exam questions. Over 1,250 questions were written post-AIA (these include AIA, PLTIA, PPH, and SME questions).
If you’re considering taking the exam anytime in the future, we know it’ll be well worth your time to sign up for a free Trial Account and see what’s included in the course.