November 19, 2008Student Intellectual Property Law Association

SIPLAA student association dedicated to the promotion of intellectual property issues across the student body of Franklin Pierce Law Center, to those of the NH bar, and beyond.

AKA THE “PATENT BAR EXAM”PRESENTED BY THE STUDENT INTELLECTUAL

PROPERTY LAW ASSOCIATE (SIPLA) OF FRANKLIN PIERCE LAW CENTER

SPONSORED BY BAR/BRINOVEMBER 19,2008

Registration to Practice in Patent Cases Before the United States Patent and

Trademark Office

Links used during presentation

General Requirements Bulletin (Bulletin) http://www.uspto.gov/web/offices/dcom/olia/oed/

grb.pdf

Office of Enrollment and Discipline (OED) http://www.uspto.gov/go/dcom/gcounsel/oed.htm

Do I have to take it?

Probably.It is necessary to prosecute patent applications

(on behalf of others) before the USPTO.Not required for litigation, however, it is my

understanding that most firms “suggest” their associates pass it.

Patent agent vs. patent attorney No attorney-client privilege Can appeal to BPAI Inequitable conduct

Can I take it?

Citizen of US (or in good standing with a foreign patent office) [Bulletin at 1]

Scientific and Technical Training Requirements Category A: B.S. in a Recognized Technical Subject

[Bulletin at 4] Category B: Bachelor’s Degree in another subject

4 Options involving coursework [Bulletin at 5-8] Category C: Practical engineering or Scientific

Experience [Bulletin at 8]

Where and how do I take it?

On site at the USPTO Paper exam administered once a year

Computer-based exam www.prometric.com Can take wherever there is a Prometric office 3 month window to choose a testing date 261 Sheep Davis Road, Concord, NH Tutorial available on OED website

Reasonable accommodations [Bulletin at 17]

Application

See end of bulletinLine by Line instructions [Bulletin at 11+]Prior tickets, convictions [Bulletin at 10,12-

13] Need paper copies of all tickets, anything in front of

court, even moving violations over $100. Failure to produce will delay registration process

School transcripts [Bulletin at 10]

General test info

Fees [Bulletin at 10] Written: $40+$450=$490 Electronic: $40+$200+$150=$390 Can use credit card and fee form available on OED website

100 Questions Two 3 hour sessions, 50 questions each for a total of 100 90 questions scored 70% correct to pass (63/90)

Statistics Between 6/9/2005 and 10/17/2006, 4165 tests were

administered with a pass rate of 58.2% [OED site] Currently, there are 9178 active agents and 28061 active

attorneys

What happens after I pass?

“Final approval for registration is subject to establishing to the satisfaction of the Director of the Office of Enrollment and Discipline that the person seeking registration is of good moral character and repute. 37 CFR § 11.7   Accordingly, any information tending to affect the eligibility of any of the following persons on moral, ethical, or other grounds should be furnished to the Director of Enrollment and Discipline…” [OED, emphasis added]

Generally, a 30 day waiting period.Pay another $100 fee to finalize registration.Recently, USPTO added a $118 yearly fee for all

members of the patent bar [Federal Register / Vol. 73, No. 222, Page 67750, Nov 17, 2008; will reflected under 37 CFR 1.21]

Primary Study Resource

MPEP Only resource allowed during examination Exam questions are taken directly from it Primary source used by examiners, agents and

attorneys in determining examination procedure Only 27 chapters, over 2000 pages Patent laws, rules, regulations, procedures Be sure to use the correct revision of the MPEP.

MPEP is updated to reflect minor changes as well as major policy shifts in U.S. patent law, such as KSR, Bilski.

Can find this information on OED website. All prior versions of MPEP are located on third floor of

library.

Secondary study resources

Past exams Multiple exam questions are repeated from year to

year (as many as 10+) See OED website, a few are offered for free, others

can be purchased for $30 per exam.

www.patentbarquestions.comhttp://www.intelproplaw.com/ip_forum/BAR/BRI, PLI, patbar.com,

patenteducationseries.com

End

Thanks BAR/BRI and SIPLAOpen to panel discussion