How to Pass the PTO Exam in the New Format

For the last thirty-five years I have divided my time between being a working patent attorney (24,421) and helping aspiring patent attorneys pass the PTO exam. For more than a decade, I taught for Kayton at PRG, and then created the present PLI course, which, while credible, is also now overpriced and badly in need of updating. For the last few years, I have offered a reasonably priced home study course on CDs that proved very effective. I tell you all this to establish that I know this exam intimately, and I know how to pass it.

The PTO has decided to get out of the exam business by outsourcing the exam, fundamentally altering its nature in the process. Instead of being an open-book exam, from which only old exam questions are barred, the exam will be given on computer at the site of the provider, with access only to an electronic MPEP. Each exam will be created uniquely from a pool of questions, just like your driver's license exam. According to the PTO there will be no appeal or challenge to the questions, but you will be able to take the exam again after sixty days. At this time, you still have to get 70 out of 100 multiple-choice questions correct.

Many years ago I developed a twelve-point strategy for passing the exam and it was proven to work thousands of times over the years. Ten of those twelve points remain right on for the new exam format, but passing the exam now requires an adjustment in approach. The optimum bar review course also requires a shift in approach, and that is why I am re-recording our course in its entirety.

Let's start by reviewing the ten points that still completely apply.

1. PREPARE ONLY FOR WHAT WILL BE ON THE EXAM.

One mistake made by most who fail this exam is to assume that it is a basic test of patent law, or a test of PTO procedures. It is not. Rather, it is a test of certain PTO Rules and procedures as embodied in the Manual of Patent Examining Procedure (MPEP). Certain parts of the MPEP have always been tested extensively on this exam, while other parts were ignored. That will continue. Many, if not most, of the questions descended to the level of minutia. That will continue. It will continue because the PTO intends to use questions from recent exams as the pool from which each customized exam is created. New questions will be added from time to time, but for the next few years the bulk of the questions on every exam will be from exams given before the format was changed.

In general, focus your preparation on Chapters 700 and 2100, and ignore chapters 2300 and 2400. The PTO in fact has told us NOTHING will come from Chapter 2400. Chapter 700 focuses on the rules and procedures for responding to official actions. Chapter 2100 spells out the basic law that the PTO follows. Both are heavily tested.

An interference is a contest in the PTO to determine which of two rival applicants is entitled to a patent, and the details are in Chapter 2300. Happily the PTO has never tested on interferences, apart from an easy question every couple of years.

To take this exam, you have to have a college degree with a couple of years of hard science or engineering courses. Most people who take the exam are lawyers. Most test takers have done a bar review course (albeit maybe not the right one for them). And yet the success rate is still usually below 50%. Taking the exam again is not only an expensive, time consuming pain, but puts your career on hold. For all these reasons, the ONLY way to prepare is an obsessive focus on what will be tested and nothing more.

2. IT'S A RACE WHERE PACING IS EVERYTHING.

You have to take two exams each with fifty multiple-choice questions. Some of the questions can be answered in less than a minute, some questions require many minutes, but on average to pass, you need to be on a three minute per question pace.

For many years I have received dozens of calls after each time the PTO sends out the exam results. Most have been from grateful students who are now successful patent agents or attorneys. A few have been from those who did not pass. I always ask the same question: "Did you finish?"

I almost always get the same answer: "No, I just didn't follow what you told me. I tried to look up too many questions and I only got to question 46 or 47 when the exam ended, and then I just put something down."

If you follow my advice and do enough practice exams to achieve that intuitive, three-minute per question average pace, and keep to that pace on the exam, you will pass. If you don't, you will likely fail. It really is that simple.

Another cause of failure to finish is a refusal to abandon a question that you can't easily find the answer to. YOUR GOAL IS TO GET MORE THAN 70 QUESTIONS RIGHT. If you try to get them all right, you won't finish, and if you don't finish, you won't pass. You have to defer those impossible questions to the end to make sure you harvest all those easier questions, and you have to give up on questions when your look-up is going nowhere.

3. KNOW THE OLD EXAMS, PARTICULARLY THE LAST TWO YEARS.

The PTO is taking the old exams off their web site and won't make them available. Gosh, I wonder why? Could it be because almost all the pool questions on both the morning and afternoon tests, and maybe more, will be EXACT copies of questions from a previous exam, many from within the last two years? That means the heart of your preparation will be focused on the old questions, which the PTO may be trying to conceal, but which we have in their entirety

Moreover, the PTO has a set of tricks they bring out for every exam. The best way to condition yourself to recognize and avoid their tricks is to practice the old questions.

4. PRACTICE, PRACTICE, PRACTICE.

On exam day as you take the exam you want to be as relaxed and comfortable as possible given the circumstances. You can't be trying your pacing for the first or the second or the third time on exam day. The best way to achieve that pacing is to practice on old exams. Set aside three hours and try a practice exam. Do it just like on exam day. Do this as many times as you can.

5. Create and implement a plan to be at your best on exam day.

Know where the test site is, how to get there and how long it will take. Bring your lunch, and plan what food and beverage will get you back to work on the afternoon exam reenergized and relaxed, ready to continue to rock and roll.

Plan you pre-exam night to get the rest and attitude you want and need on exam day. Cast your mind back to your college and law school days. You had then exam eve rituals that put you in the best frame of mind. Maybe it was a movie. Maybe a run in the park. Whatever it was, get it back out for one last time.

6. LET THE MPEP BE YOUR GUIDE.

Every question on the exam and every answer can be found in the MPEP. It is your bible.

The procedures and rules that govern the filing and prosecution of patent applications are governed by three tiers- the basic patent law (35 USC ), the Rules of Practice (37 CFR ), and Chapters 100 through 2700 of the MPEP. The Rules explain the law, and the Chapters in the MPEP explain the Rules. The law and the rules are reproduced as appendices to the MPEP so this one volume has every thing in it. The MPEP is usually revised every year so making sure you have the up-to-date volume is vital. You can get an up-to-date copy at patentpublishing.com that includes a CD with each copy in the same searchable pdf format as what you will see on the exam.

7. ALWAYS SEEK THE BEST ANSWER, NOT THE CORRECT ANSWER.

After you read a few of the exam questions and look at the five possible answers, you are going to say to yourself, "None of these are right. The right answer isn't here." And you'll be correct. On other questions, you will find two answers that are literally correct. One trap many people fall into is to assume there must be a trick here, and they can find it if they just keep looking. Almost always, there is no trick. It's just a lousy question.

The PTO is also fond of "All of the Above" and "None of the Above" and "(A) and (B)" so it is essential that you check every one of the five possibilities before selecting your choice.

If there is no really correct answer, seize the one that is the best and move on. If there are two or more correct answers, grab the one that is the most complete and move on.

Whatever else you do on this exam, you have to keep moving.

8. ANSWER EVERY QUESTION AND GUESS INTELLIGENTLY.

This is not an exam that punishes guessing; it's an exam that rewards guessing. There are five possible answers to every multiple choice question and two or three can almost always be eliminated by application of one or more of the general rules you have learned, or memorized facts. Sometimes every answer, save one, is clearly no good and then it's not guessing, it's a gift.

9. NEVER LOOK UP AN ANSWER YOU ARE 90% SURE IS CORRECT.

Often you can, by process of elimination, reduce the possible answers to two, and sometimes only one answer that could be right. Other times you will be 99% sure than one answer is correct. It is tempting to go into your MPEP to confirm that what you know to be true is in fact true. DON'T DO IT! Instead make a note that you want to check the answer at the end if there is time and move on. The computer will allow you to flag questions and to return to them later, as time allows.

10. TAKE A FOCUSED AND REASONABLE BAR REVIEW COURSE.

In some ways, the new format is easier because of the fact you will be able to review in advance most of the questions in the pool, if not all of them, because they are old exam questions. At the same time, a good bar review focused on this format can really help you.

This exam will not determine whether you have a successful life, or even a successful career in patent law. Don't put that kind of pressure on yourself. It's an important test, but it's just another test, like the many tests you have passed in the past. Keep your perspective, and two good things will happen -- your preparation and exam taking will be much less stressful, and you will have enhanced your chances of success.

Now to the ways in which this new format requires a fresh approach.

1. YOU WILL LIVE OR DIE BASED UPON WHAT IS IN YOUR HEAD.

Under the old exam format, you could take in your own materials and notes. While the exam length never permitted you to look up more than a dozen or so questions, you could maximize your look up opportunities by proper organization of you materials and MPEP. Under the new format, you have access only to an electronic, searchable PDF formatted MPEP. Using an electronic MPEP can be slow and awkward, no matter how many times you have practiced using it, and your look up opportunities are significantly reduced. You absolutely must have the basics down cold - things like the details of 35 USC 102 - and the more minutia you can remember using mnemonics or just brute force, the greater your chances of passing.

2. PRACTICE NOT JUST ANSWERING, BUT ALSO BY RECOGNIZING OLD EXAM QUESTIONS.

Under the old exam format, you practiced old exam questions mostly to learn the tricks and the point being tested. Of course, you tried to know as many questions as you could because you knew many would be on your exam verbatim, but the focus was on learning the test point. Under this new format, the more questions you can instantly recognize and instantly recognize the PTO answer, the better will be your chances of success.

You first reaction must be that this is ridiculous; no one can memorize a thousand questions, but that's not what you have to do. All you have to do is to be able to recognize the answers that are correct, and this your brain is trained to do.

Finally, for those who are among the first to try this new system, my advice is not to volunteer to be a laboratory animal. Let others take the exam for the first couple months and wait for a consensus to emerge together with information about the questions. You will save yourself a lot of time and aggravation.

Jim Longacre

January 29, 2004