From: v113mg59@ubvmsb.cc.buffalo.edu (Ronald T Coslick Jr)
Newsgroups: bit.listserv.lawsch-l
Subject: Re: The Patent Bar
Date: 19 Dec 92 19:39:00 GMT
Organization: University at Buffalo
News-Software: VAX/VMS VNEWS 1.41

In article <LAWSCH-L%92121723330218@AUVM.AMERICAN.EDU>, V1754G@TEMPLEVM.BITNET writes...
>i've heard that if you work for the  PTO for 5 years, you don't
>have to take the examiner examination.   Does this mean that
>an examiner with a J.D. waives into the patent bar?

I think it's 4 years and a $100 fee.

By the way, for anyone who has to take the Patent Bar in Syracuse NY,
_don't_ spend the night in the tall round Holiday Inn right next to
I-81.  The trucks never stop running and the noise is unbearable.
I did not get a single minute of sleep the night before that exam.

For anyone interested in taking this exam, here are some general 
impressions which you may find informative:

The test covers knowledge of the patent statute, the corresponding]
federal rules, and the MPEP which stands for Manual of Patent Examining
Procedure (this is the manual used by examiners at the patent office)

Questions can be broken down into two general areas of knowledge:
1) the legal standards which are used in determining patentability 
and the ability to apply those standards to fact patterns; and
2) all the patent office rules which are designed to keep the huge
system grinding forward in an organized and predictable manner.

The "rules" type questions are found almost entirely in the morning
section of the exam which is comprised of 50 multiple choice questions.
The legal stuff makes up about 1/3 of the morning questions and almost
the entire afternoon part.  The afternoon will require some writing
although when I took it in October the written material was only worth 40
points out of 100.

To prepare for this exam, you will need:

35 USC  (the patent statute)
37 CFR 1, 5, and 10 (the corresponding Code of Federal Regulations)
MPEP (as described above)
As many old exams as you can get your hands on.  They can be ordered
from the patent office.

There are prep courses around for this exam, they are expensive and
vary in quality.  Kayton seems to be the best, they will give you a 
6 volume treatise which is excellently done but probably overinclusive
for someone who just wants to get through the exam.  You will have to 
spend a week in New York or some other large city to take it.  My 
employer bought a video course for my use which was moderately useful.
It was produced by Jim Hawes, a patent attorney from San Diego.  The best
thing about it was that all the materials I listed above were included.

I prepared for this exam in two phases.  The first lasted about a month,
I basically took my own sweet time browsing through the first half of
Landis on Claim Drafting as well as the first volume of the Kayton
materials.  From those two I acquired a good general knowledge base to
build upon.  The second phase began about 3 1/2 or 4 weeks before the
exam, when I started going through old exams.  __This is the key to
success.  Do these exams seriously.__  The format has changed many times
but the types of questions remain more or less the same.  In doing old
exams, here are some key things to keep in mind:

1) learn to use the indexes!  The MPEP is _huge_, you can never hope
to master the whole thing without lots of practice.  Get used to 
using the indexes and tables of contents for the statute and the rules.
They are much smaller and more manageable.  In no time you will be able
to cruise through them to find exactly the answer you want.  (oh yeah,
you can bring anything into this exam but old exams)  If you encounter
a question that the statute or rules don't seem to satisfactorily answer,
then go to the MPEP.  It has an index of where every statute or rule
citation occurs, so if you think your in the right place in the rules for
an answer but it doesn't seem to be there, you can quickly extrapolate
to the MPEP.

2) Take claim drafting seriously!  It is an acquired skill which requires
strategy and precision and you will also have to develop a vocabulary
of terms useful in describing the object you are claiming.  The answers
from old exams are useful here as are real life patents if you happen to
see any.

Don't let the low pass rate on this exam scare you.  Lately it has 
been about 40% - 50%, but the majority of the failures are probably
people who didn't really take it seriously the first time around.
This test is nothing compared to the New York Bar, (trust me), which
has a pass rate of about 80%.  The difference is in the preparation.
The patent bar is not some cheesy civil service exam to be taken
lightly, but it is relatively straight forward and covers a body of
knowledge which is comparatively small and self-contained.  Plus,
you don't have to be a lawyer to practice patent law before the USPTO.
A second year law student who can walk into an interview sporting
a PTO registration number has much to offer a firm.

Hope this has been helpful to anyone planning to take the exam.  I just
enjoyed the thrill of receiving my passage letter in the mail and I hope 
that in the foreseeable future you will receive the same.  Post or e-mail
if there is any other info that I could provide.

===========
Ron Coslick
v113mg59@ubvms.cc.buffalo.edu
Comments: Gated by NETNEWS@AUVM.AMERICAN.EDU