USPTO Updates Registration Exam for Patent Practitioners

The following post was written by Gene Quinn , of IPWatchdog and Practice Center Contributor.

The United States Patent and Trademark Office (USPTO) will update its registration examination and provide new reference materials effective April 12, 2011. The changes will help ensure that newly registered patent attorneys and agents are fully qualified in the most current patent laws, rules and procedures.  This change marks the first change to the exam in approximately 5 years, and will bring the patent bar exam current with law, rules and regulations through the Winter of 2011. Those who are interested in taking the patent bar exam should consider this update a major revision, indeed such a major revision to the test that old patent bar exams circulating the Internet will be an insufficient means to study for the new exam.

“Patent applicants and examiners will benefit from the updated registration examination because newly registered patent attorneys and agents will have demonstrated familiarity with the most current patent laws, rules and procedures,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.

All applicants wishing to practice in patent cases before the USPTO must pass the registration exam consisting of 100 multiple choice questions. The revised exam questions will be based on the Manual of Patent Examining Procedure (MPEP) Edition 8, Revision 8, along with other published USPTO policy and procedure reference materials. Administration of the previous version of the registration examination ceased April 4, 2011.

Click here for the full IPWatchdog article.


US Patent Office Issues Update to KSR Examination Guidelines

Written by Gene Quinn (of and Practice Center Contributor)

The United States Patent and Trademark Office has provided an update to its Examination Guidelines concerning the law of obviousness under 35 U.S.C. 103 in light of precedential decisions from the United States Court of Appeals for the Federal Circuit issued since the 2007 decision by the United States Supreme Court in KSR Int’l Co. v. Teleflex Inc. The Updated KSR Examination Guidelines were published today in the Federal Register, and in response to the requests of many stakeholders the USPTO has included additional examples to help elucidate the ever-evolving law of obviousness. These guidelines are intended primarily to be used by Office personnel in conjunction with the guidance in the Manual of Patent Examining Procedure. The effective date of the these new Guidelines is September 1, 2010, but members of the public are invited to provide comments on the 2010 KSR Guidelines Update.  The Office is especially interested in receiving suggestions of recent decisional law in the field of obviousness that would have particular value as teaching tools.

The Examination Guidelines Update correctly explains that every question of obviousness must be decided on its own facts, thus it is the intent of the Office to “clarify the contours of the obviousness inquiry after KSR, and help to show when a rejection on this basis is proper and when it is not.”   The 2010 KSR Guidelines Update provides a ‘‘teaching point’’ for each case discussed, and there is a table listing many of the cases and their teaching points, which can be found on the last two pages of the roughly 17 page Federal Register Notice. Perhaps this table was intended to be all inclusive, but I do not see, for example, Ball Aerosol v. Limited Brands, 555 F.3d 984 (Fed. Cir. 2009) in the table. (more…)