Preparing for the patent agent exam

In a previous post, we had written about the release of a revised draft revised patent manual (hereafter ‘draft manual’) at the IPO. This post will discuss how one preparing for the patent agent exam by using the draft manual.

The draft manual discusses the application of patent law in the four patent offices and states that it has been compiled with an intention to codify the practices and procedures being followed in the Indian Patent Office.
The draft manual specifies the procedure of filing of a patent application to the grant of a patent, maintenance of patent; exception to the right of the patentee, government use, compulsory licensing have been included.

It deals with the procedure of filing a patent application, including an ordinary application, PCT international application, PCT national phase applications, convention applications, patent of addition, divisional application; Examination, grant, pre-grant and post grant oppositions; post-grant procedures such as maintenance of patent, appeals, revocation, compulsory licensing and use of patents for the purposes of government; patent agents, offences and penalties, general powers of Controller, general services and miscellaneous provisions; and time limits.  Therefore, for preparing for paper-1, the draft manual may be referred to directly.

In previous years question papers (both paper-1 and paper-2) , one could clearly see a trend in the questions-viz. the answers to questions were generally present (except for the claim drafting/writing a specification) in the draft manual.  This trend is expected to continue.

If we could give advise to a prospective candidate for the patent agent examination, we would recommend reading and re-reading  the draft manual.  In another post, we had discussed the importance of paper-2 and how it effected the chances of passing the examination overall.  The remainder of this post discusses preparation for paper-2.

Paper 2 consists of writing a complete specification and writing claims.

Preparing a specification:
Chapter 5 of the draft manual refers to the contents of an application.  Note the different kinds of applications provided for in the chapter: Chapter 5 of the manual starts with the discussion of a provisional and complete (aka non-provisional application).  Addtionally note the different sections in the application-They include Title, Field of Use, Background, Prior art and problem to be solved, Object, Summary, List of drawings, Detailed Description,  Claims, and Abstract.
A candidate should be able to clearly separate out section from a disclosure.  By separating out we mean that given a jumbled up disclosure in the exam, a candidate should be able to list each an every part of the specification in their appropriate section headings.
Placing the contents of the background in the detailed description or vice versa is a common error. It is best to avoid such errors.  A patent and a patent application are legal documents and there is a binding declaration once the contents are put on file.  If an agent makes such mistake, it may cost an inventor her invention-for example when detailed description is put into prior art.

One way to avoid such mistakes is to look at current applications or even granted applications.  Applications are available freely at: IPO; USPTO; EPO; WIPO-PCT.  The applications/granted patents may be of any field of a candidates interest or one could plug in search terms in the title field.
It is recommended to look at all of these sites because at times, the IPO website is very slow.

Claims:
Claims go to the heart of the patent application. They specify the metes and bounds of the rights of patent holder.  A patent is an exclusionary right-it excludes others from practising what is ‘claimed’, not merely disclosed in the specification.

For the purposes of the examination, a candidate must learn to write proper claims that contain the basic ingredients that Examiners are looking for.   Because the patent office does not disclose the best or above average answers, recourse must be taken to what is provided for in the manual.  Sections 05.03.13-15 of the draft manual discuss what should be in claims.

One suggestion which might be useful to candidates is that writing claims is like writing a story.  Link up all characters, provide a flow and be as clear as possible.

Two things which candidates may see in applications before the USPTO, EPO, WIPO are:  indentation of claims for spacing; and use of numbers while referring to drawings in claims.  These elements may be used when writing the claims in the application.  One possible (made up) example  is:

1.  A method for preparing X comprising:
using XYZ 32 to extrude metal body 80;
performing de-mineralization on the extruded metal body 80 to yield compound ABC 85; and
forming X by combining ABC with PQR 90 in the presence of JKL 45 at 100F.

2.  The method of claim 1, wherein compound ABC belongs to species of MNJ.

3.  The method of claim 1, wherein…..

Such claims and formatting can be seen on the previously mentioned sites: USPTO; EPO; WIPO-PCT
USPTO: http://patft.uspto.gov; EPO http://www.epo.org/patents/patent-information/european-patent-documents.html; WIPO-PCT: http://www.wipo.int/patentscope/search/en/search.jsf

It is suggested that a candidate see a large number of patents and application/s to see how claims are written.
As an exercise, just look at a small disclosure (from these sites) and write claims;  then compare your claims with the ones on file.   This exercise of looking at granted patents/application would help to prepare for paper-2.

If candidates have any questions, they are welcome to post them in the comments section of the blog.  I would try and answer as many questions as possible.