New Patent Bar Online Exam - Prometric

[AndyD]

Hello everyone,

My inaugural post, although I am a lurker as I studied for the test.

I just passed the test, first time around, yesterday the 5th of December.

I wanted to say thanks to everyone who contributes here as the material is invaluable.  I bought a PLI set off ebay and that was great and all, but relatively outdated already.  Without seeing and learning the questions off this site I don't think I would have passed.

Now for my experience:
- the test was far harder than the older tests.  Not more difficult, but focused on more details and subtle differences.
- the PDF viewer they have is nice although the text is small and I had to zoom in.  I kept the window non maximized so I can move it and look at the answer possibilities.
- it focused a whole lot more on PCT, specifically IA and entering national stage in the US.  Also a lot of focus on appeal and reexam, reissue.  My guess would be that between those topics about half the test was covered.
- about 15 repeats from old tests, and about a dozen of the "new" reported questions appeared on my test.

I had the following old reused questions:

-laminate
-Tommy/Jo
-60% C vs D.
-Megacorp
-Cellphone antenna
-Hair Gel
-Smith and Jones (two variants on the same facts, one morning one afternoon).
-Toothbrush.
-Synthetic Z and Bloc
-Cross the road
-Toothbrush power switch.
-Moondust
-Design in Germany and file within 6 months here.
-Parking meter

And the following "new":
- titanium baseball (I chose indexing on shelf).
- mirrors
-Costa Rica applicants sending stuff to US office.  Also same but german applicants with a different approach.
-Velcro and trademark use.
-Maintenance fee not paid (no mention of patent number).
-Deceptive intent.
-Door handle.
-and a number of questions I recognized from discussions here but which do not have a "name" to them. 
-A lot of PCT missing items, also determining 102e dates of various PCT patterns (3 questions like this, one where filed in Germany, one where filed before 2000, one filed after 2000, but US stage after 30 months).

I also had two identical questions, or I guess the same question twice.  In the afternoon numbers 38 and 40.  If they weren't so close I would not have noticed.  It was a very easy "which is true" style one dealing with designs.  I had time to go back and look word for word and they were exactly the same, even the answers.

I had about 20 minutes left for review in the morning (I looked them up one at a time) for about 10 marked questions I had left over.  In the afternoon I had about 45 minutes for 3 marked questions, as most of the repeats were here and I was much faster.

I did notice that a number of questions we have posted here were refined in the language and clarified.  They all pointed to an answer whereas here we always narrow them to two or so depending on the recollection of facts.

If anyone has any questions I will answer stuff as and if I remember.

Good luck to everyone taking it.  Now onto finding a patent job 

Andy

[eslifer]

Now onto finding a patent job 

Andy

Now may be the hard part, but good luck in your search.

[cheesepep]

I had a question about properly claiming priority to an application when it has been forgotten to be claimed to.  Do I file a reissue or a CoC?  Thanks.

[Rudy711]

The last version of the MPEP I see that specifically mentions (A) is MPEP 8th edition revision 2, which states "the Board may remand for a fuller description of the claimed invention" in MPEP 1211. See http://www.uspto.gov/web/offices/pac/mpep/old/E8R0_1200.pdf .

I checked each of the later versions and did not see this language in MPEP 1211, for revisions 3, 4, 5 or 6.

What is particularly disturbing is that the change from MPEP revision 2 to MPEP revision 3 is not cited in the Blue Pages for MPEP revision 3.

Thus, I frankly have no idea (a) why was the change in revision 2 section 1211's treatment of remand for fuller description not included in the Blue Pages of revision 3, and (b) under current rules, can the Board remand for a fuller description of the claims (and why or why not)?

For the April 15, 2003 morining session question 25:
25. In accordance with USPTO rules and procedures set forth in the MPEP, which of the following is not a proper basis on which the Board of Patent Appeals and Interferences may remand a case to the examiner?
(A) Remand for a fuller description of the claimed invention.
(B) Remand for a clearer explanation of the pertinence of the references.
(C) Remand for a selection by the primary examiner of a preferred or best ground of rejection when multiple rejections of a cumulative nature have been made by the examiner.
(D) Remand to the primary examiner with instructions to consider an affidavit not entered by the examiner which was filed after the final rejection but before the appeal.
(E) Remand to the primary examiner to prepare a supplemental examiner’s answer in response to a reply brief.

THe answer indicate Support for each of answers (A), (B), (C) and (E) is specifically provided for in MPEP § 1211.

But I cann't find the support for answer (A) in the MPEP § 1211.

Could anyone tell me where is the support for answer (A) or the answer is changed with the new version of MPEP?

Thanks!

I am having a problem with my reading of the MPEP here:
Affidavits or declarations filed with ** the filing of a notice of appeal but before jurisdiction passes to the Board (see MPEP § *>1206<) will be considered for entry only if the appellant makes the necessary showing under 37 CFR *>1.116(e)< as to why they >are necessary and< were not earlier presented. Authority from the Board is not necessary to consider such affidavits or declarations.

Affidavits or declarations filed after a final rejection and prior to a notice of appeal are handled as provided in MPEP § 715.09, § 716, and § 716.01. >If such evidence has not been treated by the examiner, the Board may remand the proceeding to permit the examiner to consider such evidence.<  

Doesn't the above indicate that support for answer D is present in 1211?

After thinking about this I believe two factors are involved:

1. Answer A: Clearly there has been a mistake in either omitting this from Rev 3 onwards, or not updating the question answers to reflect the fact that this was intentionally deleted from the MPEP.

2. Answer D: The key is the wording to the question "....an affidavit NOT ENTERED by the examiner....." and getting confused with MPEP 1211.03. 

The phrase "NOT ENTERED" means not admitted by the examiner (for some specific intentional reason  not just lack of time or resources by the PTO), and is governed by 715.09 Seasonable Presentation (last paragraph) In which case Answer D is correct because "....Review of an examiner's refusal to enter an affidavit as untimely is by petition and not by appeal....."  Also...MPEP 714.13 II. ENTRY NOT A MATTER OF RIGHT.  Specifically mentions affidavit filed after rejection, but before or with appeal (i.e.notice of appeal, not brief).  must show good and sufficient reasons why it is necessary and was not earlier presented - if it doesn't show sufficient reason I assume it doesn't get ENTERED because entry is not a matter of right. (to put a rather fine point on it) 

Now for MPEP 1211.03.  It states: "...Affidavits or declarations filed after a final rejection and prior to a notice of appeal are handled as provided in MPEP 715.09. 716, 716.01 >If such evidence has not been treated  by the examiner, the Board may remand the proceeding to permit the examiner to consider such evidence.<"  

The procedure noted by italics above from 1211.03 creates confusion in that it applies to affidavits there WERE ENTERED by the examiner, BUT NOT (YET) CONSIDERED, or reviewed by the examiner.  (as opposed to Answer D - affidavit NOT ENTERED).  It is possible for an affidavit to satisfy 716.01 (A)(3), and get entered without immediate consideration by the examiner, then if the appeal is filed very quickly thereafter (or with the affidavit), the case is now before the board without sufficient time for the examiner to respond to the affidavit...in which case it would then be remanded back to the examiner per 1211.03.

This is the best logic I can come up with.  The fact this question stays on the test bank must mean that it is still valid.   

[LEX]

Any thoughts as to whether or not the new administration will change the format or procedure of the current examination?  Like initiate due process for examination re-testing and provide prior previously unpublished exams under the FOIA! Just wondering;}

[thc23]

Took the test today in CT.  Passed on the first try.  Thought I would share me experience and give back to help others,

With regard to studying: Used an old audio CD kit from 2002.  Started going through the lectures in late Aug.  I'm an engineer by training without any experience in law.  Eventually moved to practice exams and "new questions" on the Wiki forums.  Studied about 10-15 hours per week until early Jan.  Took the all the 2003 and Oct 2002 exams about three times until I had the questions down cold.  By the end I was getting about 90% in 1.5 hours on the practice exams.  Distilled what I needed to know into single, short sentences on multiple notecards for review.  Towards the end I would try to do 50 practice questions straight to build up endurance for the exam.

With regard to the test:
Many repeats.  Know both practice exams and "new questions" and you'll fly through the repeats.  Know your PCT dates and when you can claim foreign priority, etc.  Know you appeal and restriction requirement too.  Not as many short, easy questions as found in old exams. 

Specific questions:
-Mirrors
-Bloc and Synthetic Z
-Hair Gel
-Maintenance fee not paid (no mention of patent number).
-Deceptive intent.
-Lip Gloss
-Spanish Phone
-Broadening Reissue
-Appeal:new ground of rejection
-Indefinite "High"?
-What can assignee do before ownership
-Small entity fee refund
-ABCD - ABCDE - BCDE
-Cancer and incredible utility
-Counting claims = 147 claims

Got to keep your focus in the later parts of the exam, it gets hard, but keep going. 
The computer based MPEP was nice.  Although it covers your Q&A screen, you can search and toggle through the chapters.  Anyone with basic Adobe / computer skills will have no problems. 
Hope that helps.

[metoo]

Earlier posts suggested practice searching the MPEP using Adobe 5.0. I don't see it on AA's site and I tried downloading it from another site but it didn't work. Where can I get Acrobat 5? Thanks!

[smgsmc]

http://www.oldversion.com/program.php?n=acrobat

[metoo]

Thanks smgsmc! 5 looks similar to the current version...

[smgsmc]

Thanks smgsmc! 5 looks similar to the current version...

Others who have taken the exam recently should chime in.  I took it in 2006.  The important distinction is the "Find" command vs the "Search" command.  The "Find" command is far more limited than the "Search" command, but the exam uses (or at least did use), the "Find" command.  Adobe 5.0 has "Find" only.  Recent versions have both "Find" and "Search".  Recent takers:  Could you please help the OP and confirm whether the exam still supports only the limited "Find" command?  If so, I'll give a pointer to one of my previous posts which explained how you can run into serious problems with "Find".

[cheesepep]

I took and passed the exam in 2009.  The MPEP has a "Find" and a "Find again" button with no other buttons.  I do not remember if the Find button had a "search for whole word only," but I think that it did.

The Find button works per chapter so it will only search the chapter that you are currently in.  Additionally, it will start searching from your current page.  So for example, if you are in page 5 within a 100 page chapter, the search will start from 5-100 and then from 1-5.

[smgsmc]

To metoo:  Based on cheesepep's report, looks like you're still stuck with "Find" and "Find Again".  In which case, I recommend that you check out posts 1295-1304 in this thread for caveats.  Good luck.

[smgsmc]

To metoo:  Based on cheesepep's report, looks like you're still stuck with "Find" and "Find Again".  In which case, I recommend that you check out posts 1295-1304 in this thread for caveats.  Good luck.

Forgot to say that's way back on pg. 87 of this thread.  Time sure flies when you're having fun!

[metoo]

Thanks for the details smgsmc and cheesepep.

[2xxandalawdegree]

Took the exam today in Chicago and passed on the first try. I could NOT have done it without this thread and mypatentbar.com. 

I had:
Tribel
Spanish phone
Claim counting (the answer is still 147)
Mirrors
Titanium baseball
What an assignee not yet of record can do (small entity statement)
A question on an ex parte Quayle action, the details of which I cannot remember.
Hairgel

In all, it seems like 1/3 of the exam was repeats.  My exam was not very heavy on PCT (which was good-- I am still not sure I understand or can remember the nuances of that stuff), nor was it heavy on Reexam or appeal.  I did have quite a few questions on restriction requirements which was not what I had anticipated, but everything else was what I had expected.

If it helps any, here was my study plan: I did an online course, but much of my study was old exams. I only went back as far as 2000 and I did each exam twice.  I finished the exam with an extra hour in each section (I read quickly). I probably spent about 150 hours studying.

The MPEP at the test site is mostly user friendly.  The print in the USC and CFR sections was very tiny and probably needs to be enlarged.  You cant flip back between the MPEP and the test screen and you CANNOT SEARCH the whole MPEP (only by chapter). The outline of each chapter automatically appeared on the left of my screen. A trained monkey could get by just fine.

My unsolicited study advice: dont do a review course. do practice questions till you think your head will explode.  Take the exam shortly before it does.

Oh, and my search function allowed me to search for whole word only, but you are stuck with "Find" and "Find Again."