Are You Qualified to Take the Patent Bar?

Vol. 15 No. 9

Christi Guerrini is an attorney and freelance writer in Houston, Texas.

After surviving one state bar examination, most associates would be happy to never hear the “b” word again. Those eight weeks devoted to memorizing all of the legal rules and tests you never learned in law school and studying from breakfast to bed, and even in bed, became a distant memory the moment you answered that last multiple choice on the MBE.

Understandably, then, you probably aren’t eager to take another bar exam any time soon. But for those who are up to the challenge and looking for a way to enhance their marketability as an intellectual property (IP) lawyer, the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office (USPTO)—commonly referred to as the patent bar—may be worth your time and effort.

 

Why take the patent bar exam?

The most common reason for taking the patent bar is that it is a prerequisite to practicing in the area of law known as patent prosecution. Patent prosecutors prepare patents, issue opinions about patents, and work with the USPTO to get patents issued. The field enjoys a reputation for reasonable work hours and, therefore, has attracted many attorneys to its ranks.

In addition to being a career starter, successful passage of the patent bar can be a career booster, particularly for those who practice IP litigation. Although many successful IP litigators aren’t registered with the USPTO, registration nevertheless connotes expertise and carries a certain amount of cachet.

 

Who qualifies to take the exam?

If you believe that you might benefit from taking the patent bar, the question then becomes whether you are qualified to do so. The source of all information regarding patent bar eligibility is the General Requirements Bulletin published by the USPTO.

As stated in the Bulletin, the USPTO limits who may sit for the patent bar to those who possess “the requisite scientific and technical training.” There are four ways to establish the requisite training:

  • Category A applicants possess a bachelor’s degree in one of thirty-two scientific or technical subjects, including biology, chemistry, physics, and most engineering disciplines. Notably, a master’s degree in one of these subjects is not by itself considered sufficient training. (Part III.A)
  • Category B (option 1) applicants have successfully completed one of the following: (1) 24 semester hours in physics; (2) 30 semester hours in chemistry; (3) 32 semester hours comprising 8 hours of physics or chemistry and 24 hours of biology; or (4) 40 semester hours comprising 8 hours of physics or chemistry and 32 hours of some combination of biology, chemistry, physics, engineering, or, in some cases, computer science. For a course to qualify under this option, you must have received a grade of C- or better in the course and it must be applicable towards a science degree—“physics for poets” won’t do. (Part III.B.i–xi)
  • Category B (option 2) can demonstrate objective evidence of other training, education, or experience that is equivalent to a bachelor’s degree in a Category A subject. (Part III.B.xii–xiv) As several patent law professionals have noted, however, only the extraordinary candidate will qualify under this option.
  • Category C applicants have passed the Fundamentals of Engineering test, which is administered by each state’s Board of Engineering Examiners, and possess a bachelor’s degree in any subject. (Part III.C)

The first option, a Bachelor’s degree in one of the “hard” sciences or engineering, is the most direct and typical path to sitting for the patent bar. But even if your degree is in another subject, you may be closer to qualifying for the bar than you think. If you minored in biology, for example, you may only need a few more courses to qualify under Category B. The same is true if, like many a lawyer before you, your undergrad career included a jog on the pre-med track. Even if you exited the track early on, you may still have managed to collect a dozen or so qualifying credits along the way.

 

How do you apply?

If you are unsure whether a particular course or major will satisfy the Bulletin’s criteria, don’t expect a call to the USPTO Office of Enrollment and Discipline to clear things up; the OED is famously noncommittal when it comes to these kinds of questions. Really, the only guaranteed way to get the OED to comment on your particular circumstances is by submitting an application. That doesn’t necessarily mean that you should rush to get your materials in the mailbox, however. Instead, consider delaying your application until after you’ve begun to study in earnest. This is because once your application is approved you have only three months to take the exam. (Part V) And every day counts when you’re trying to squeeze the 150 study hours one prep course recommends into an already busy schedule.

 

What is the pass rate?

Be forewarned that the patent bar has an historically lower pass rate than many (if not most) state bar exams. For example, the pass rate of first-time takers of the 2010 bar exam was over 80 percent, while the pass rate of recent takers of the patent bar exam was less than 60 percent. Moreover, although the patent bar covers only one subject—USPTO procedure—preparation for the exam is still time consuming as mentioned above. Nevertheless, for some, the rewards of passing the patent bar can outweigh the pains of preparing for it.

 

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