Proposed Continuing Legal Education Guidelines, 64128-64130 [2020-22420]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 85, Number 197 (Friday, October 9, 2020)]
[Notices]
[Pages 64128-64130]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-22420]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2020-0042]


Proposed Continuing Legal Education Guidelines

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Request for comments.

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SUMMARY: This request for comments seeks public input on proposed 
guidelines regarding continuing legal education (CLE). Pursuant to the 
final rule published on August 3, 2020, registered patent practitioners 
and individuals granted limited recognition to practice before the 
United States Patent and Trademark Office (USPTO or Office) in patent 
matters will be required to biennially submit a mandatory registration 
statement beginning on March 1, 2022. On the registration statement, 
practitioners may state whether they have completed 6 credits of CLE 
within the previous 24 months. The USPTO has prepared proposed CLE 
guidelines, attached to this request for comments as Appendix 1, which 
advise practitioners and providers as to the proposed types of CLE 
courses and activities that will qualify for USPTO CLE credit. In this 
request for comments, the Office seeks input on the proposed 
guidelines.

DATES: Comment Deadline Date: Written comments must be received on or 
before January 7, 2021.

ADDRESSES: Written comments should be sent by email addressed to 
[email protected]. Comments may also be submitted by postal mail 
addressed to Mail Stop OED, Director of the United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to 
the attention of William Covey, Director for the Office of Enrollment 
and Discipline, CLE Guidelines Request for Comments 2020.
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by email to more easily share all comments 
with the public. The Office prefers the comments to be submitted in 
plain text but also accepts comments submitted in portable document 
format or DOC format. Comments not submitted by email should be 
submitted on paper in a format that facilitates convenient digital 
scanning into portable document format.
    The comments will be available for public inspection at the Office 
of Enrollment and Discipline (OED), located in Madison West, Eighth 
Floor, 600 Dulany Street, Alexandria, VA 22314. Comments will also be 
available for viewing via the Office's website (www.uspto.gov). Because 
comments will be made available for public inspection, information that 
the submitter does not desire to be made public, such as address or 
phone number, should not be included.

FOR FURTHER INFORMATION CONTACT: William Covey, OED Director, by 
telephone at 571-272-4097.

SUPPLEMENTARY INFORMATION:

Summary

    In this request for comments, the Office seeks feedback and 
information regarding the proposed CLE guidelines attached as Appendix 
1. The goal of the proposed guidelines is to clarify for registered 
practitioners and those granted limited recognition pursuant to 37 CFR 
11.9(b) what types of CLE classes or activities will qualify for USPTO 
CLE credit. The guidelines also seek to establish a procedure for 
approving CLE courses that would qualify for USPTO CLE credit. Finally, 
the guidelines seek to establish the type of recognition practitioners 
will receive if they certify on their registration statements that they 
have completed 6 credits of CLE in the preceding 24 months.

Background

    As set forth in the final rule, published on August 3, 2020 (85 FR 
46932) beginning on March 1, 2022, active patent practitioners will be 
required to submit a biennial electronic registration statement. 37 CFR 
11.11(a)(2). On the registration statement, practitioners may also 
certify that they have completed 6 credits of CLE within the preceding 
24 months, with 5 of the credits in patent law and practice and 1 of 
the credits in ethics. 37 CFR 11.11(a)(3).
    The Office recognizes that patent practitioners and CLE providers 
may seek more specific guidance as to how the USPTO will implement the 
CLE provisions. In order to assist patent practitioners and CLE 
providers in determining what courses or activities enable a 
practitioner to make the CLE certification, the USPTO has prepared the 
attached proposed CLE guidelines. The proposed guidelines also address 
the form of recognition practitioners will receive when they make the 
CLE certification on their biennial registration statement.

Request for Public Comments

    The Office seeks written public comments on the proposed CLE 
guidelines attached as Appendix 1 to this request.
    The Office welcomes any comments from the public on the topics 
covered in this notice. The Office also poses specific questions below 
and invites public feedback on those questions.

Topic 1: Subject Matter of Courses Qualified for USPTO Patent CLE 
Credit

    The proposed CLE guidelines provide that a practitioner may obtain 
USPTO patent CLE credit for a course that pertains to any topic listed 
in 37 CFR 11.5(b)(1), which defines practice in patent matters before 
the USPTO. Applicable topics include, but are not limited to: 
Preparation and prosecution of patent applications, determining and 
rendering opinions on patentability, and drafting documents to be 
presented in any patent-related proceeding before the USPTO, including 
proceedings before the Patent Trial and Appeal Board (PTAB). Accepted 
topics also include litigation that pertains to any of the topics 
listed in 37 CFR 11.5(b)(1).
    As noted in the final rule, the purpose of the CLE certification 
and recognition is to incentivize practitioners to engage in CLE 
relevant to their practice before the Office. As explained in the NPRM, 
``Ideally, when practitioners are well-trained and well-educated in 
patent law and practice, higher quality applications are filed, 
prosecution is more efficient, and patent grants become stronger, more 
reliable, and more predictable.'' 84 FR at 37415. Accordingly, the 
proposed CLE guidelines provide that patent CLE credit may only be 
obtained for courses that pertain directly to practice in patent 
matters before the USPTO.
    The USPTO invites comment on the parameters to be used to determine 
what subject matters beyond those listed in 37 CFR 11.5(b)(1) would 
qualify for patent CLE credit, if any.

Topic 2: Other Activities That May Qualify for USPTO CLE Credit

    The final rule states that patent practitioners may obtain up to 
two of the five credits in patent law and practice by participating in 
the USPTO Patent Pro Bono Program. See 37 CFR

[[Page 64129]]

11.11(a)(3)(ii). The final rule further provides that patent 
practitioners will earn one hour of USPTO patent CLE credit for every 
three hours of pro bono service. 37 CFR 11.8(a)(3)(ii).
    The proposed CLE guidelines set forth certain other activities that 
may qualify for USPTO CLE credit, including service in a law school 
clinic participating in the USPTO Law School Clinic Certification 
Program. The proposed guidelines also limit the number of credit hours 
that a practitioner may claim related to such activities.
    The USPTO invites comments on whether a practitioner may earn 
income and CLE credits simultaneously (for example, if a practitioner 
is paid for a speaking engagement on a CLE-eligible topic).

Topic 3: Providers of USPTO Patent CLE

    The proposed CLE guidelines set forth eligible subject matter for 
USPTO patent CLE credit (that is, CLE courses provided by the USPTO) 
and explain that any course approved by a state bar for ethics credit 
may also be used for USPTO ethics CLE credit. However, the guidelines 
do not currently set forth a procedure by which providers may apply to 
the USPTO for approval of CLE courses for USPTO credit in patent law 
and practice and/or ethics.
    The proposed CLE guidelines could provide a procedure for approval 
of courses by non-USPTO providers (that is, CLE courses offered by 
providers other than the USPTO). The USPTO invites comments regarding 
the merits of implementing such a procedure or suggestions concerning 
the specific method by which the USPTO could review and approve such 
courses.

Topic 4: Form of Recognition for Practitioners Who Certify Completion 
of CLE

    The final rule provides that the OED Director may publish whether 
each registered practitioner or person granted limited recognition 
under 37 CFR 11.9 has certified that he or she has completed the 6 
USPTO CLE credits in the past 24 months. 37 CFR 11.11(a)(1). The 
proposed CLE guidelines provide that such recognition will take the 
form of a statement on the practitioner's individual profile on the 
online practitioner database. The USPTO invites comments on what manner 
the recognition should take.

Questions Regarding the Proposed CLE Guidelines

    As noted above, the Office welcomes any comments from the public on 
any portion of the proposed CLE guidelines. The Office is particularly 
interested in the public's input on the following questions:
    1. What course topics should qualify for USPTO patent CLE credit?
    2. What parameters should be used to determine what subject matters 
beyond those listed in 37 CFR 11.5(b)(1) would qualify for patent CLE 
credit, if any?
    3. What activities should qualify for USPTO CLE credit, either in 
patent law and practice or ethics?
    4. Should organizations or providers outside the USPTO be 
authorized to deliver USPTO CLE courses? If so, how should such courses 
be approved?
    5. In what manner should the USPTO recognize practitioners who make 
the CLE certification on their mandatory registration statement?
    6. Are there any other issues or concerns that the USPTO should 
consider regarding the CLE guidelines? If so, what are they and how and 
why would they apply?

    Dated: October 2, 2020.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.

Appendix 1

USPTO Proposed Continuing Legal Education Guidelines

    The following USPTO CLE guidelines are intended to advise 
practitioners as to what types of courses or activities qualify for 
USPTO patent and ethics credit, how to calculate CLE credit for a 
given course or activity, and how providers may obtain approval of a 
CLE course for USPTO patent or ethics credit.
    If practitioners have further questions regarding CLE that are 
not addressed in this document, they are encouraged to contact the 
OED at 571-272-4097 or [email protected].

I. Voluntary CLE Certification

A. Certification for Active Registered Patent Practitioners and 
Persons Granted Limited Recognition Pursuant to 37 CFR 11.9

    37 CFR 11.11(a)(2) provides that registered patent practitioners 
and persons granted limited recognition pursuant to 37 CFR 11.9(b) 
are required to biennially file a mandatory registration statement. 
On the statement, practitioners will state whether they have 
voluntarily completed 6 CLE credits within the 24 months preceding 
the filing of the registration statement (the reporting period). See 
also 37 CFR 11.11(a)(3)(i). Five of the six credits must be in 
patent law and practice, and one credit must be in ethics. 37 CFR 
11.11(a)(3)(ii).
    Persons who certify that they have completed six CLE credits as 
described above will be recognized in the USPTO's online 
practitioner database. Such recognition will consist of a notation 
on the practitioner's individual profile, which states, ``This 
practitioner has certified completion of six credits of continuing 
legal education within the previous 24 months.''
    No practitioner or person granted limited recognition pursuant 
to 37 CFR 11.9(b) is required by the USPTO or the OED to complete 
CLE credits. The OED notes that this recognition does not constitute 
endorsement of any particular practitioner or CLE.

B. Certification for Persons Newly Registered or Granted Limited 
Recognition

    At the time an individual is newly registered to practice in 
patent matters before the USPTO or granted limited recognition 
pursuant to 37 CFR 11.9(b), he or she will submit a registration 
statement. In order to complete the registration statement, the 
practitioner shall state whether he or she has completed six credits 
of CLE within the applicable reporting period, consisting of five 
credits in patent law and practice and one credit in ethics.
    Thereafter, the practitioner or individual granted limited 
recognition will be required to timely file biennial registration 
statements, which will include a voluntary CLE certification.

C. Calculation of CLE Credit Hours

    Practitioners may earn 1 credit hour of CLE for every 50 minutes 
of instruction time or other accredited activity. Practitioners may 
not earn CLE credit in increments of less than 0.5 credit hours. 
Credit hours may be calculated based on the following examples:

0-24 minutes of instruction time or accredited activity = 0 CLE 
credit hours
25-49 minutes of instruction time or accredited activity = 0.5 CLE 
credit hours
50-74 minutes of instruction time or accredited activity = 1.0 CLE 
credit hours
75-99 minutes of instruction time or accredited activity = 1.5 CLE 
credit hours
100-124 minutes of instruction time or accredited activity = 2.0 CLE 
credit hours
125-149 minutes of instruction time or accredited activity = 2.5 CLE 
credit hours
150-174 minutes of instruction time or accredited activity = 3.0 CLE 
credit hours

    Practitioners may not earn partial credit for attendance at a 
portion of a course or CLE session. Credit may only be earned by 
attending an entire CLE course or session.

D. Carry-Over of CLE Credits

    Practitioners who earn more than six CLE credit hours in a 
reporting period are permitted to carry over up to three CLE credit 
hours from that reporting period to the next reporting period, up to 
two of which may be in patent law and practice and up to one of 
which may be in ethics.

[[Page 64130]]

II. Activities for Which USPTO CLE Credit May Be Earned

A. Attendance at CLE Courses Completed During a Reporting Period

    Practitioners may earn CLE credit by attending a CLE course in 
either (1) patent law and practice or (2) ethics.
    Practitioners may not earn CLE credit for repeating a course or 
program with identical content, in any format, even if the course or 
program is repeated in a different biennial registration period. 
Practitioners may earn CLE credit for completing an updated version 
of a course or program the practitioner previously completed.

1. CLE Courses in Patent Law and Practice

    Practitioners may earn patent CLE credit by attending a CLE 
course on the topic of patent law and practice.
    In general, courses designated for USPTO patent CLE credit will 
pertain to any of the topics listed in 37 CFR 11.5(b)(1), which 
defines practice in patent matters before the USPTO. Applicable 
topics include, but are not limited to:
     Preparation and prosecution of patent applications;
     Consulting with or giving advice to a client who is 
contemplating filing a patent application or other document with the 
Office, including considering the advisability of relying on 
alternative forms of protection that may be available;
     Drafting a specification of claims of a patent 
application;
     Drafting an amendment or response to an Office 
communication;
     Determining and rendering opinions on patentability;
     Drafting documents to be presented in any patent-
related proceeding before the USPTO, including proceedings before 
the PTAB;
     Drafting an assignment of rights in an issued patent, 
patent application, or in contemplation of the filing of a patent 
application; and
     Litigation that pertains to the topics listed in 37 CFR 
11.5(b)(1).
    The USPTO offers numerous opportunities to earn patent CLE 
credit at no cost. USPTO CLE courses are listed on the USPTO 
website, which contains a schedule of upcoming courses and links to 
USPTO CLE courses that are available on demand.

2. CLE Courses in Ethics

    Practitioners may obtain USPTO ethics CLE credit by attending a 
CLE course that is offered by the USPTO for ethics CLE credit. 
Practitioners may also obtain USPTO ethics CLE credit by attending a 
CLE course that has been approved by any state bar for ethics 
credit. In general, courses accepted for USPTO ethics CLE credit 
will pertain to a practitioner's obligations under the USPTO Rules 
of Professional Conduct, including a practitioner's obligations 
under such rules to clients; prospective clients; and/or the USPTO, 
courts, and other legal institutions.

B. Other Activities for Earning Credit During a Reporting Period

1. Participation in the USPTO Patent Pro Bono Program

    Practitioners may earn up to two CLE credits in patent law and 
practice by participating in the USPTO Patent Pro Bono Program. 
Practitioners may earn one credit hour of CLE in patent law and 
practice for every three hours of service provided to a client 
through the USPTO Patent Pro Bono Program.

2. Participation in the USPTO Law School Clinic

    Practitioners may earn up to two CLE credits in patent law and 
practice by taking part in a law school clinic that participates in 
the USPTO Law School Clinic Certification Program. Practitioners may 
earn one credit hour of CLE for every three hours of service in such 
a clinic.

3. Presenting or Preparing for a Course Approved for USPTO CLE Credit

    Practitioners may earn up to two CLE credits in patent law and 
practice or up to one credit in ethics for either speaking at a 
USPTO-accredited CLE course or preparing written materials for such 
a CLE course (but not both). Credit for preparation will be awarded 
on the basis of time spent by a practitioner either (1) preparing 
written materials for use in the presentation of the course; or (2) 
preparing a presentation as an instructor or presenter for the 
course. The number of preparation minutes shall not exceed four 
times the number of instructional minutes in the presentation being 
prepared.

4. Writing

    Practitioners may earn up to two CLE credits in patent law and 
practice or up to one credit in ethics for writing, as an author or 
co-author, materials published in the form of an article, chapter, 
or book that contributed substantially to the continuing legal 
education of the author or co-author and other practitioners, and 
that was not done as part of the practitioner's regular employment, 
as a service to the practitioner's clients, or as a marketing device 
for the practitioner or the practitioner's employer.

5. Teaching at an Accredited Law School

    Practitioners may earn up to two CLE credits in patent law and 
practice or up to one credit in ethics for teaching, lecturing, or 
speaking on (1) legal ethics, or (2) patent law and practice, as 
defined in part VI(B) of these guidelines, in the position of a 
part-time faculty member in any law school accredited by the 
American Bar Association.

C. Non-Qualifying Activities

    No CLE credit can be claimed for the following activities:
     Activity done in the ordinary course of practicing in 
patent matters before the USPTO, the performance of regular 
employment, or as volunteer service to clients, bar organizations, 
or the general public (except as noted above).
     Activity associated with membership in an organization, 
including committee meetings, business meetings, or work sessions.
     Legislative activities and/or lobbying.
     Reading or reviewing written materials outside the 
context of preparing to present a CLE program approved by the USPTO 
for CLE credit (or a course for which such approval has been 
sought).
     Solicitation of clients or other marketing or 
promotional activities.

III. Recordkeeping

    It is recommended that practitioners who certify completion of 
CLE keep records that substantiate such completion for three 
previous reporting periods (i.e., six years). Although there is no 
specific recordkeeping requirement, practitioners should be aware 
that the USPTO's OED may request that a practitioner supply 
documentation that substantiates his or her completion of CLE or 
``other activities.'' Practitioners are reminded that they have 
ethical obligations to be complete, accurate, and truthful in all of 
their representations to the USPTO. Consequently, practitioners may 
be subject to discipline under the USPTO Rules of Professional 
Conduct if their CLE certifications are false or misleading.

[FR Doc. 2020-22420 Filed 10-8-20; 8:45 am]
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