On November 23, 2011, the USPTO announced that the Patent Bar Exam will be updated to cover two new rules related to provisions of the America Invents Act (AIA), and one new rule effected by the USPTO (and not related to the AIA). The changes to the examination content are expected to go into effect on or about January 31, 2012.
The new material includes (a) the implementation of a prioritized examination procedure (per AIA), (b) revision of the standard for granting an inter partes examination request (per AIA), and (c) rules governing ex parte appeals before the Board of Patent Appeals and Interferences (BPAI) (per USPTO), discussed in more detail below.
(a) The prioritized examination procedure is the first track (Track I) of a three track system designed to streamline the patent examination process and to give Applicants greater control over the examination timeline of their applications. Information on this procedure was published in the Federal Register and can be found here. The prioritized examination procedure became effective as of September 26, 2011 and can be requested by any Applicant filing an original utility or plant application.
(b) The inter partes reexamination procedure will be replaced by a new inter partes review process as of September 16, 2012, in accordance with the provisions of the AIA. The AIA also provides that any inter partes reexamination request filed between September 16, 2011 and September 16, 2012 will only be granted if there is a reasonable likelihood that the requester will prevail with respect to at least one claim challenged in the request. The previous standard for granting an inter partes examination request required a substantial new question of patentability with respect to any challenged claim. Information on the inter partes reexamination/review procedure was published in the Federal Register and can be found here.
(c) The USPTO has amended various aspects of the rules governing appeals before the BPAI, including (i) removing several of the briefing requirements typically required for an appeal brief, (ii) providing for the Board to assume earlier jurisdiction over the appeal, (iii) no longer requiring Examiners to acknowledge receipt of reply briefs, (iv) creating procedures for appellant to seek review of an undesignated new ground of rejection issued either in an Examiner’s answer or in a Board decision, (v) providing that the Board will presume that the appeal is taken from all claim rejections unless the claims are cancelled by an applicant’s amendment, and (vi) clarifying that, for purposes of the Examiner’s answer, any rejection relying on evidence not present in the Office Action from which the appeal is taken shall be designated as a new ground of rejection. These new rules are applicable to all appeals stemming from notices of appeal filed on or after January 23, 2012. Information on these new rules was published in the Federal Register and can be found here.
Earlier this year (in April), the USPTO updated the Patent Bar Exam for the first time in about five year to test material contained in the MPEP Edition 8, Revision 8 (previously Ed. 8, Rev. 4 was tested), as well as to include material in the exam relating to (1) developments in the obviousness inquiry after KSR Int'l Co. v. Teleflex Inc., (2) new interim patent subject matter eligibility examination instructions, (3) interim guidance for determining subject matter eligibility for process claims in view of Bilski v. Kappos, and (4) supplementary examination guidelines related to § 112 requirements.
While not all aspiring patent attorneys or agents will be very enthusiastic about these updates, simply because the precise nature of the new questions is unknown (there are no practice questions yet available), one thing is certain: these updates to the Patent Bar Exam will be good for the overall patent community, including the USPTO, practitioners, and applicants, since these exam updates ensure that newly registered patent attorneys and agents will possess an up-to-date knowledge of the laws, rules, and procedures required to practice before the USPTO.