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Study Manual:
Tips and Basics for the Patent Bar

Copyright © 2003-2004


All rights reserved. No part of this work may be reproduced or transmitted in any form or by any means, electronic or mechanical, including photocopying, recording, or by any information storage or retrieval system, without the written permission of the copyright owner.

ISBN (pdf digital format): 0-9729047-2-7

Every precaution has been taken to ensure that the information presented in this book is accurate. However, neither the author nor Intellectual Properties Enterprises, Inc shall have any liability to any person or entity with respect to any loss or damage caused or alleged to be caused directly or indirectly by the information contained within this work. The information is presented on an “as is” basis, there is no warranty.

Contact info: Intellectual Properties Enterprises, Inc website:

A few words about this book

This Study Manual is a preparatory aid for those preparing to take the patent bar examination. This exam covers topics found in the Manual of Patent Examining Procedure (MPEP).

You will find more information explaining IP Enterprise’s line of study aids at the Patent Education Series website, or you may feel free to contact us via email or the toll free number listed below.

Contact info for IP Enterprises:




Thank-you for downloading your free copy of the “Study Manual: Tips and Basics for the Patent Bar”. I know you will find it useful in your preparation for the patent bar exam.


If you would like more background on the Patent Bar exam and what it is for, please visit us at our Patent Bar Exam News site.

IP Enterprises is committed to the success of those interested in patent law through the affordability and quality of its patent bar exam prep materials. Therefore, we are interested in any feedback or improvements you may have for our series of patent bar exam prep aids. Any suggestions for new study aids that would make your preparation easier and more productive are also appreciated. Please feel free to call the toll free number to order or send an e-mail in regards to our line of patent bar exam prep aids.

I wish you the best of luck on the exam!




Lisa A. Ginger - President March 2004

Table of Contents

Chapter I: Overview of the Test
-What happens after you’ve been accepted? 8
-What will the test set-up be? 9
-Thetestitself 11

Chapter II: The Patent Education Series
-What does the test cover? 15
-Prep review choices 17
-Howitworks 18

Chapter III: Tips for the Test
-Types of questions you will encounter 29
-Detailed breakdown of the test questions 29
-Summary of important test tips 41
-Statistics 43

Chapter IV: Overview of Patents
-What does it mean to patent? 49
-What can be protected? 49
-How to go about getting an invention patented 52

Chapter I:

Overview of the Test

The patent bar exam is currently a 100 question multiple choice exam. It will be administered via computer by Prometric, a reputable testing agency, beginning in April 2004. Test takers may not bring anything into the exam, but will have access to the PTO’s online, searchable Manual of Patent Examining Procedures (MPEP) in pdf form. This online MPEP is the only reference material that may be accessed throughout the entire test. In addition, the testing facility will also provide scratch paper and a pencil, both of which will be collected at the end of the exam.

The exam consists of a morning and an afternoon session. Each session consists of 50 multiple choice questions and each one must be completed in 3 hours. You will have to answer at least 70 out of the 100 questions total in order to pass. It is expected that there will be a one hour lunch break between the two sessions.

In the past, the Patent Bar exam was only administered twice a year, but now that it is computerized, interested individuals may take the exam at any time of the year they wish. Once you have been admitted to sit for the exam, you will need to schedule an appointment to take the Patent Bar at one of the hundreds of Prometric testing facilities throughout the country.

One point to note is that not just anyone may take the patent bar exam. You must prove to the PTO that you possess the proper background in science or engineering in order to sit for the exam. The new Patent Bar admissions bulletin should be released in early spring of 2004. Once this admissions bulletin has been posted, you may submit your application at any time throughout the year. There will no longer be application deadlines. Check out the new admissions bulletin. Our Patent Bar News site also provides you with a summary of the application requirements.

Once you have submitted your application to sit for the exam, the PTO will determine whether or not you qualify. Initially (in early spring of 2004), you should expect the turn-around time to be a little delayed due to a rush of applications. Once the application numbers have settled down, the PTO has expressed that they hope to respond to applications to sit for the exam within 2-4 weeks.

What happens after you’ve been accepted? If accepted to sit for the exam, the PTO will provide you with a 90-day window for scheduling your exam with a Prometric testing center. The exam must be taken before this 90-day window expires. Therefore, you should definitely begin your study preparations before ever submitting an application. Early preparations will only help ensure that you are ready to take the exam before the 90-day window has expired. We suggest that you wait until you have completed Step II of our strategy (or at the very least, started it) before applying to take the exam. Most people will probably pay this warning no heed, but don’t be like most people. Most people don’t pass this exam the first time around!

The cost of the exam is expected to be as follows:
-a nonrefundable application fee of $40
-a registration examination fee of $200
-a service fee to Prometric for $150

After you take the Patent Bar exam, you will not find out right away whether you passed or failed. At least not if you take an exam in early spring of 2004. Early test takers will probably have to wait a few weeks to be notified of their results via mail. Eventually, Prometric will have a ‘real time’ grading system in place.

One last point to make is that an individual who fails the exam will not be allowed to retake it for 60-days. Appeals will no longer be accepted by the PTO.

What will the test set-up be? On the day of your scheduled test date, be sure to bring a current ID with you. The exact types of identification that are considered appropriate will be outlined for you by Prometric and your PTO Patent Bar acceptance form.

In the past, test takers had to report to the testing facility no later than 8:30 a.m. on the day of the test. It is assumed that the computerized exams will start at approximately the same time, but the Prometric testing center will provide you with the specifics when you schedule your exam. Once the test begins, you will have no more than three hours to complete the first section of the exam consisting of 50 multiple choice questions. You will have access to a searchable form of the MPEP on your computer terminal, some scratch paper and a pencil. At the end of the three hour test period, you will have a one hour break for lunch and when you come back, you can expect another set of 50 multiple choice questions. Once again, you will have another three hours to complete this section of the exam. You will have access to a searchable MPEP on your computer terminal, some scratch paper and a pencil.

You may assume that because you will have access to the MPEP on your computer testing terminal, the test will be easy and you won’t have to memorize too much material. An assumption like this will almost certainly cost you time and money by resulting in a failing score! The truth is; no one ever has enough time to look up even half the answers, let alone all of them. The test covers far too much material. You may have the time to look up the topics covered in approximately 10-15 questions per test session if you read quickly and are familiar with the organization of the MPEP, although even this may be a bit of an overestimation.

The day of the exam, you should plan to spend the entire day at the testing facility. It is wise to arrive a half hour early and expect to be there until about 5 p.m.

Prior to the day of the test, you should locate the test facility. Make sure you know how to get there. Also, search for the bathrooms, parking spaces, a place to eat lunch and anything else you can think of. The day of the test will be stressful enough; you won’t need to add any more stress to it.

Make sure to be well rested the night before the test. Of course, eat a good breakfast the morning of the test and make sure you have access to a good lunch. If you do plan to travel for lunch, be sure to keep track of the time and arrive back early. It is wise not to drink too much caffeine before or during the test. Also, try to stretch out and look away for a moment or two during the exam. Short breaks are necessary to help you focus.

Keep in mind that the temperature in the testing room may not be a nice, comfortable 70 degrees. You may want to bring a light sweater or jacket and wear layers as you may become a bit overheated. Another possibility is that you might become distracted with the noise of people at other computer terminals. You may want to consider bringing in sound-deadening earphones or ear-plugs on test day if you get easily distracted. These should be allowed, although the Prometric test facilitator may need to inspect them first.

The test itself Since there is no special course, training class or specific patent-related college degree required to become a patent practitioner, all that stands between an engineer or scientist with the appropriate technical background is achieving a passing score on the patent bar exam. Therefore, the PTO has tried to make this test difficult. And they do a pretty good job of that as the national pass rate usually falls between 30-60% (although the October 2002 exam was a record breaking 72%). Only highly ambitious individuals who have learned the material inside-out actually pass.

You might be asking, just how can a multiple choice test be so difficult? Well, most of the questions on the patent bar exam are much longer than the average multiple choice question from back in the days of college. And the detail involved with the questions also makes the test difficult. Patent Law is already complicated enough to pose problems on its own, but the PTO makes it more complicated with the difficult question style they prefer. Many of the questions are similar to the type of questions one might encounter on an IQ test. The PTO not only tests you over the material in the MPEP, but also on your ability to think logically and analytically. To provide you with an example of just how wicked the PTO may be, the following sample question is provided.

You are preparing a patent application for your client, Perry. The invention is disclosed in the specification as a doodad making machine comprising elements A, B, and means C for performing a function. The specification discloses two specific embodiments for performing the function defined by means C, namely C’ and C”. The specification also discloses that components D or E may be combined with A, B, and means C to form: (i) A, B, D, and means C; or (ii) to form A, B, E, and means C. The specification also discloses that component G may be used, but with only means C’ to improve the machine’s performance. The specification also states that the machine is rendered inoperative if component G is used with C”, or whenever components D or E are present. The first three claims in the application are:

1. A doodad making machine comprising A, B, and means C for performing a function.
2. A doodad making machine as claimed in Claim 1 wherein means C is C'.
3. A doodad making machine as claimed in Claim 1 or 2 further comprising D.

Which of the following would be a proper claim 4 and be supported by the specification?


(A) A doodad making machine as claimed in Claim 2, further comprising E.

(B) A doodad making machine consisting essentially of A, B, means C for performing a function, D and G.
(C) A doodad making machine as claimed in Claim 1 or 2, further comprising D.
(D) A doodad making machine as claimed in Claims 1 and 2, further comprising G.
(E) A doodad making machine as claimed in any of the following claims, wherein means C is C”, and further comprising G.

What is all this business with doodads and widgets? What in the world are they talking about…C, C’, C’’?

This question is tough. In order to answer it, you need to be familiar with the following terms; specification, disclosure, specific embodiments and claims. You must also understand some of the complicated rules of claim writing. And not only do you need to understand all these concepts, but you also have to be able to think logically and rationally while under a time limit.

Fortunately, there are not too many questions quite this convoluted on any given test (the answer to this question is choice A in case you were wondering), but the testing style of the PTO is similar the whole way through. Basically, they go out of their way to present difficult material in a manner which makes it even more difficult to comprehend. However, if you take the time to really learn the material and familiarize yourself with previous exam questions, you will not be overwhelmed by questions like the above example.

The Patent Education SeriesTM Patent Bar Package was developed to help you pass this difficult exam. It can save you time, money and frustration. The following chapter will introduce you to how our program works and what you will receive when you purchase our Package.

Chapter II:

The Patent Education SeriesTM


The Patent Education SeriesTM from IP Enterprises consists of the:


•Study Manual: Tips and Basics for the Patent Bar

-the ebook you are currently reading!
•Patent Law Online:
-an online course with nine modules, interactive quizzes, an in-depth
glossary and a MPEP cross referencing section
•Guidebook to Patent Law:
-lecture-style outline of the Manual of Patent Examining Procedure
•Patent Bar Exam Prep Workbook:
-short answer, fill-in-the-blank and true/false questions with answers
•PTO Exam Simulator:
-downloadable software you may run on your PC
-contains over 600 PTO exam questions/answers which may be answered by topic or randomly
•3-Step Lesson Plan to help guide you through it all The material you need to know in order to achieve a passing grade on the patent bar exam is all within the Patent Education SeriesTM. This chapter will discuss the best method for using these materials in order to ensure that you receive a passing grade on your first try.

What does the test cover? First, let’s discuss exactly what the patent bar exam covers. This exam tests your knowledge of the Manual of Patent Examining Procedure (MPEP). The MPEP is a few thousand pages in length and it explains and references many laws and rules set-up by the Patent and Trademark Office (PTO). The laws established by the PTO are described in “United States Code Title 35 – Patents”. This group of laws is referred to as 35 U.S.C. The rules covered in the MPEP are known as the “Code of Federal Regulations – Patents, Trademarks and Copyrights” and are referred to as 37 C.F.R. Both the MPEP and the patent bar exam only cover the Regulations covered in the Patents section. The rest is for copyright and trademark attorneys to know. Between 35 U.S.C. and 37 C.F.R., there are hundreds of laws and rules that establish and govern the fundamentals of patent law. You will need to know very specific details about these laws and rules in order to pass the patent bar exam.

The MPEP basically covers every angle of each of the relevant 35 U.S.C. laws and 37 C.F.R. rules. It lists them, defines them and discusses them, exhaustively. One thing to keep in mind is that the MPEP was written to establish the fundamentals of patent law not only for patent practitioners, but for PTO examiners as well (examiners are the individuals who determine whether or not a patent application should become a fullfledged patent). Fortunately, there are sections of the MPEP that really only pertain to examiners and are never tested on the patent bar exam. Therefore, you do not need to know every law or rule or even every chapter of the MPEP. In addition, the MPEP is also filled with forms used by patent practitioners or inventors when filing patent applications. It also references important court cases that have helped establish the laws and rules of the PTO. Therefore, you can easily cut out quite a bit out of the MPEP when preparing for the exam, but what is left is still a fairly tall and daunting heap of paperwork.

Another point to make is that the MPEP is not set in stone. As the laws, rules and forms change, newer editions of the MPEP are published. The PTO constantly makes adjustments and refines the laws and rules.

Even the basic fundamentals of patent law change over time. The area of biotechnology is a prime example. Two decades ago, the field of biotechnology was in its early stages, but now it has exploded. Corporations are patenting genetic sequences, natural chemicals, microorganisms, even plants and animals! The PTO has been busy adjusting their laws and rules to keep up with the changes in this area of rapidly changing technology.

Another example of major changes occurred when the PTO added in an entire chapter discussing the topic of Patent Terms (Chapter 2700). The MPEP is growing, which is a very scary thought.

Another twist is that the Patent Office will frequently make changes to the rules, laws and theven the MPEP itself whenever they want. So, even though we are currently using the 8 edition MPEP, Revision 1, the PTO is still changing its content. They post these changes on a daily basis on their website (there is a link to it on the Lesson Plan so that we can keep you up-to-date on all the important law changes). The PTO will notify you as to which changes they are currently testing over before you take the exam. But wait, don’t panic yet. The PTO is slow to update the patent bar exam to reflect new material (you can expect about a 90-day lag time). In addition, the same “core” topics and details are tested time and time again. It is estimated that only 0-3 questions will deal with the latest changes to the MPEP when you take your exam. However, you do need to be aware of the fact that the MPEP is dynamic and ever changing. Once you get into the field of patent law, you will need to keep this in mind. There will always be a new manual to purchase and become familiar with throughout your career.

Prep review choices Since the patent bar exam is based on the MPEP and you have easy access to it, the material that you need to know in order to pass the exam is very accessible. The one rather large glitch is that the MPEP is well over 3-thousand pages in length and is written in rambling legal language. It does not differentiate between tested material and that which is unnecessary for the exam.

A review course or prep materials will only be beneficial. They will save you time and frustration. In the end, with review materials, you can be assured that you will be fully prepared for your new career.

Although it is quite inexpensive, the Patent Education SeriesTM provides you with what you need to know to pass and is highly competitive even in comparison with much more expensive review courses. The Patent Education SeriesTM is a well structured, convenient program. You will not need to travel or take time off from work, and may even study from the convenience of your own home. Remember that no matter how you plan to tackle this exam, expect to read a large quantity of material and put in some serious independent study time. Ultimately, you will get out of it what you put into it.

How it works We understand the importance and challenge of the Patent Bar exam and have developed our system to help you pass on your first try in the least amount of time. The Patent Education SeriesTM includes everything that you need to pass. And one of the benefits of our program is that we leave out everything you don’t need to know!

In addition, our self study course provides you with ultimate flexibility. You take it at your own pace. We will always provide you with updates as new editions of the MPEP become printed and extra time on the online course or the software if you need it. You will never have to re-purchase our course.

The Patent Education SeriesTM revolves around a 3-step strategy. We provide you with a detailed Lesson Plan for each step – which you are free to view by clicking on the link. Here, we will touch on each of the three steps and give you insight into how the program works.

Step I: Learn the Fundamentals of Patent Law by working with the Patent Law Online Course

The Patent Law online course is a self-paced system consisting of four major components; the Modules, a Glossary, a Quizzes and the Reference section. The Modules are the primary component. Begin learning the modules and you will be well on your way to learning Patent Law.
We have broken the fundamentals of Patent Law down into nine different modules that cover all the important
objectives of Patent Law. Each module contains several topics. To make assimilating the material easier, the modules have less than a dozen different topics within them. The topics are explained in an easy to understand, ‘big picture' format. A clear navigation system on the left lets you know which topic you are currently on and exactly where that is within the module. Jump ahead, jump back or use the navigation to pace yourself.

The online course also contains interactive quizzes. You may take a quiz for a particular topic or a set of modules when you are ready. Correct/incorrect responses are shown for each question and are received instantly. Attempting all the quizzes will greatly increase your comprehension.

There is also a separate Glossary section in the online course. Within the glossary, you will find over 250 easy to comprehend definitions to necessary patent-related terms. It's simple to find what you need. You can go straight to the source!

Lastly, there is a reference section which provides you with information on the most important laws and rules relevant to key topics, and cross-referencing to the appropriate MPEP section.

The course covers the fundamentals of every topic tested on the exam and is sure to speed up your study time. It was developed in order to make understanding the material as painless as possible! You may preview this powerful learning tool by simply going to the Patent Law online course preview. Take the first module, an “Introduction to Patent Law” with all the quizzes for free. Also, be sure to view the comprehensive objectives of this course while there.

Step II: Learn the details of Patent Law with the Guidebook to Patent Law/Prep Workbook bundle The Guidebook to Patent Law follows the same basic organizational pattern of the MPEP; both consist of Chapters 100-2500, Chapter 2700, a section on ethics and an index. However, the Guidebook is much easier to follow and it only includes the material that is tested on the patent bar exam. The endless text found in the MPEP is replaced with a concise, lecture-style outline. By reviewing the Guidebook, you will not only learn the detailed material, but you will know exactly where to find the necessary information in the MPEP (for exam day look-up) since all the same section headings are preserved throughout it.

The material within each chapter of the Guidebook to Patent Law is presented in a logical manner. The chapters in the Guidebook range in size from a single page up to about 60 pages in length, depending on how much tested material could be on the exam from that particular chapter. In addition to containing the regular chapters, the Guidebook also has an in-depth section on Prior Art Rejections. This is a very heavily tested area. In the MPEP, prior art rejections are spread-out over Chapters 700 and 2100, two of the longest and most heavily tested chapters. By combining the material into a separate section, the details of prior art rejections becomes much easier to learn and to reference.

Be prepared to read through the material presented in the Guidebook more than once. After all, this material is complex and it builds on itself. Focus on gaining an in depth understanding of the material while becoming familiar with the organization of the Guidebook and therefore, the MPEP.

Each chapter within the Guidebook to Patent Law begins with a chapter number and title. Following the chapter title is a short summary of the covered topics. A short paragraph follows which begins with a number of stars. The stars rank the chapters by importance in an easily recognizable format; the five star system. Five stars indicate that the chapter is a heavily tested one, while one star indicates that it will not contain too much testable material (as you can guess, these are the shortest chapters). A short description follows the stars, discussing the most heavily tested sections within each chapter. This will help you identify the most important material within the longer chapters. Here is an example taken from Chapter 100 of the Guidebook:

Chapter 100: Secrecy, Access, National Security and Foreign Filing

Summary: This chapter discusses the confidentiality of patent applications and patent related documents. The focus is on who may or may not have access to the particular application types.

Patent applications containing sensitive issues will be placed under a secrecy order by the PTO. Absolutely no member of the public may view these patents even after they have issued.

Foreign filing licenses must be issued to a patent applicant if he or she desires to apply for another patent that discloses the same subject matter in a different country immediately after filing for a U.S. patent.

* This chapter has not been tested much in previous exams. However, a few questions may touch on accessing patent applications. You may expect one question related to 37 C.F.R. 1.11 or 35 U.S.C. 122, which regard t

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