The Decline of the Patent Registration Exam

• Jurisdiction: United States,Federal
• Citation: Vol. 91
• Publication year: 2021

91 Nebraska L. Rev. 325. The Decline of the Patent Registration Exam

The Decline of the Patent Registration Exam

Christi J. Guerrini(fn*)

TABLE OF CONTENTS

I. Introduction..........................................326

II. The Establishment of the Patent Registration Exam ...331
A. The Emergence of a Patent Bar....................331
B. The Adoption of the Patent Registration Exam.....334
III. The Decline of the Patent Registration Exam.......... 338
A. Evaluating Exam Quality.......................... 338
B. Early Improvements ............................... 341
1. The First Exams .............................. 341
2. Substantive Improvements ..................... 342
3. Administrative Improvements .................. 344
C. Recent Failures................................... 347
1. Elimination of Drafting Exercises .............. 348
2. Recycling Exposed Test Items.................. 355
3. Disregard of Best Practices Regarding Test Form Construction and Scoring................ 359
4. Reproduction of Source Materials in Test Items.......................................... 363
5. Disregard of Generally Accepted Item-Drafting Guidelines ..................................... 366

IV. Implications .......................................... 369

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A. Economic Harm...................................370
B. Reputational Harm................................374

V. The Future of the Patent Registration Exam ..........378
A. Should Registration Continue to Be Conditioned on Evidence of Legal Competence? ....................378
B. Should Registration Continue to Require Exam- Based Evidence of Legal Competence?.............379

C. Can the Patent Registration Exam Be Saved? ......380

VI. Conclusion............................................385

I. INTRODUCTION

The U.S. Patent and Trademark Office(fn1) is no stranger to problems of underfunding, overwork, and incompetence. Not even ten years after it first began examining patents, the Patent Office already was expressing frustration with a backlog of unexamined applications and a shortage of skilled examiners. Commissioners in the 1840s, who complained of the physical impossibility of keeping up with patent fil-ings(fn2) and worried about losing capable examiners to the better-paying private sector,(fn3) could just as well have been presiding over the modern-day PTO, whose struggles to efficiently and effectively conduct its business are well documented.(fn4) Apparently, in the almost 200 years

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that have passed since the United States adopted an examination-based patent system, much having to do with the Patent Office has changed, but not the basic complaints by and about it.

These complaints-both their nature and endurance-call into question whether the PTO is institutionally capable of satisfactorily performing its duties. The quality of the PTO's examinations of patent applications has long vexed the patent community,(fn5) and the subject features prominently in virtually every report on the PTO's operations.(fn6) Most recently, the promise of improving the quality of the PTO's patent examinations by, among other things, releasing additional funds to the agency and increasing the input of third parties, helped secure the passage of the Leahy-Smith America Invents Act of 2011.(fn7)

By contrast, relatively little attention has been paid to the quality of the PTO's performance of its non-examining functions. Although patent examination is surely the most costly and visible of the PTO's patent-related responsibilities, it is only one of them. The PTO is also tasked with important non-examining functions, including guiding the development of domestic and international patent and innovation policies, processing and disseminating information about patents and the U.S. patent system, and promoting high-quality patents and the integrity of the prosecution profession through regulation of the patent bar.(fn8)

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Focusing on this last function, for over a century the PTO has enjoyed almost complete autonomy in regulating who may draft patents and negotiate their issuance by the agency. Since 1897, the Patent Office has maintained a registry of lawyers and non-lawyers who are allowed to prosecute patents before it.(fn9) And since 1934, passage of a written examination has been an essential part of the process of being added to the registry.(fn10)

In these respects, patent prosecution is unique among the many specialized fields of law, as it is both the only one to allow non-lawyers to practice in the field(fn11) and the only one to condition entry into the field on passage of an exam.(fn12) The purpose of the "patent bar exam," as it is known, is to ensure that all individuals who practice before the PTO can competently prepare and prosecute patent applications.(fn13) It holds the distinction of being the only bar exam created by and administered on behalf of the federal government.

As the value of patents to the United States economy has increased dramatically in recent years, so, too, has the number of individuals taking the patent registration exam. The first group of examinees in 1934 comprised only sixty-one individuals.(fn14) By 1986, that number

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had shot to 722,(fn15) and in fiscal year 2010, 3,120 individuals took the exam,(fn16) In other words, between 1986 and 2010, the number of persons taking the patent registration exam increased by 332%. To put this growth in perspective, during that same time period, the number of persons taking the "general" bar exam increased by only 19%.(fn17)

Despite the exam's functional and symbolic significance to a rapidly growing profession, and in contrast to the extensive literature that has developed around the general bar exam,(fn18) the patent registration exam has thus far largely escaped the notice of policymakers and academics. One aim of this Article, therefore, is to draw attention to the exam as a regulatory and political tool and a subject of scholarly inquiry. This Article's second, more specific aim is to take advantage of the opportunity presented by the patent registration exam to study the quality of the PTO's performance of one of its non-examining functions.

This Article focuses on the PTO's management of the patent registration exam instead of one of the agency's other non-examining responsibilities for three reasons. First, as already mentioned, a critical analysis of the exam has not yet been conducted and is overdue. Second, because the PTO's exam-related responsibilities are well defined and relatively narrow, the quality of the PTO's execution of them can be examined in some detail.

Finally, the subject presents a unique opportunity to gather and study a set of primary sources that to my knowledge has not yet been subjected to any kind of scholarly analysis: the exams themselves. Thus, in researching this Article, I collected eighty-one registration exams administered over the course of forty-nine non-consecutive years, with each full decade represented by at least five years' worth of exams.(fn19) Copies of many of these exams were obtained in response

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to Freedom of Information Act (FOIA) requests to the PTO.(fn20) Because these documents are not otherwise easily accessed, they will be published in connection with this Article on a webpage hosted by the University of Houston Law Center's Institute for Intellectual Property and information Law.(fn21)

It should be noted that passage of a written exam is only one requirement that must be satisfied to become a registered patent prosecutor. The other major requirement is proof of technical competency in the form of education or training in a recognized scientific or engineering discipline.(fn22) This Article is limited to a consideration of the exam requirement, the technical requirement having already been analyzed by other scholars.(fn23) Nevertheless, the two requirements necessarily overlap since a patent's validity and strength can be diminished by the drafter's technical incompetence even where the drafter's legal competence is not an issue.

Part II of this Article describes the historical circumstances that led to the adoption of the exam requirement. Part iii then describes the evolution of the exam from its first administration in 1934 and continuing to the present day. The story these exams tell is that the patent registration exam was the subject of continual tinkering by the Patent Office, with changes made at least every decade and sometimes every year. Notwithstanding these frequent adjustments, some patterns emerge. Specifically, for the first few decades of its history,

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the Patent Office endeavored to make the exam more rigorous and comprehensive. But as the twentieth century came to an end, practical considerations stemming from a shortage of funds and labor took precedence over quality when the PTO introduced changes to the exam that have had the effect of impairing its quality. I describe these failures in terms of modern psychometric standards that apply to professional licensure exams and conclude that the U.S. patent registration exam is today an invalid, unreliable, and unfair assessment of readiness to practice.

Part IV describes the consequences of the exam's failures, which include wasting the agency's and examinees' valuable time and resources and undermining confidence in the PTO's institutional legitimacy. Finally, Part V concludes...