Expanding Admission Criteria for Registration To Practice in Patent Cases Before the United States Patent and Trademark Office, 63044-63046 [2022-22569]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 87, Number 200 (Tuesday, October 18, 2022)]
[Notices]
[Pages 63044-63046]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-22569]



[[Page 63044]]

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-P-2022-0027]


Expanding Admission Criteria for Registration To Practice in 
Patent Cases Before the United States Patent and Trademark Office

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 the scientific 
and technical requirements to practice in patent matters before the 
United States Patent and Trademark Office (USPTO or Office). 
Specifically, the Office seeks input on whether it should revise the 
scientific and technical criteria for admission to practice in patent 
matters to require the USPTO to periodically review certain applicant 
degrees on a predetermined timeframe, and make certain modifications to 
the accreditation requirement for computer science degrees. This 
request for comments also seeks input on whether the creation of a 
separate design patent practitioner bar would be beneficial to the 
public and the Office, whether to add clarifying instructions to the 
General Requirements Bulletin for Admission to the Examination for 
Registration to Practice in Patent Cases before the United States 
Patent and Trademark Office (GRB) for limited recognition applicants, 
and whether the Office should make any additional updates to the 
scientific and technical requirements for admission to practice in 
patent matters. The USPTO is undertaking this effort as part of its 
continual review of the admission criteria for sitting for the 
registration examination.

DATES: Comment Deadline: Written comments must be received on or before 
January 17, 2023.

ADDRESSES: For reasons of government efficiency, comments must be 
submitted through the Federal eRulemaking Portal at 
www.regulations.gov. To submit comments via the portal, one should 
enter docket number PTO-P-2022-0027 on the homepage and click 
``Search.'' The site will provide search results listing all documents 
associated with this docket. Commenters can find a reference to this 
notice and click on the ``Comment'' icon, complete the required fields, 
and enter or attach their comments. Attachments to electronic comments 
will be accepted in portable document format (PDF) or DOCX format. 
Because comments will be made available for public inspection, 
information that the submitter does not desire to make public, such as 
an address or phone number, should not be included in the comments.
    Visit the Federal eRulemaking Portal for additional instructions on 
providing comments via the portal. If electronic submission of and 
access to comments is not feasible due to a lack of access to a 
computer and/or the internet, please contact the USPTO using the 
contact information below for special instructions.

FOR FURTHER INFORMATION CONTACT: Will Covey, Deputy General Counsel and 
Director, Office of Enrollment and Discipline (OED), at 571-272-4097 or 
[email protected].

SUPPLEMENTARY INFORMATION:

Summary

    In this request for comments, the USPTO seeks feedback and 
information on revising the scientific and technical criteria to 
practice in patent matters before the Office, whether the instructions 
to applicants for limited recognition should be clarified, and whether 
the Office should establish a separate design patent practitioner bar.

Background

    The Director of the USPTO has statutory authority to require a 
showing by patent practitioners that they possess ``the necessary 
qualifications to render applicants or other persons valuable service, 
advice, and assistance in the presentation or prosecution of their 
applications or other business before the Office.'' 35 U.S.C. 
2(b)(2)(D). Courts have determined that the USPTO Director bears the 
primary responsibility for protecting the public from unqualified 
practitioners. See Hsuan-Yeh Chang v. Kappos, 890 F. Supp. 2d 110, 116-
17 (D.D.C. 2012) (``Title 35 vests the [Director of the USPTO], not the 
courts, with the responsibility to protect [US]PTO proceedings from 
unqualified practitioners.'') (quoting Premysler v. Lehman, 71 F.3d 
387, 389 (Fed. Cir. 1995)), aff'd sub nom., Hsuan-Yeh Chang v. Rea, 530 
F. App'x 958 (Fed. Cir. 2013).
    Pursuant to that authority and responsibility, the USPTO has 
promulgated regulations, administered by OED, that provide that 
registration to practice in patent matters before the USPTO requires a 
practitioner to demonstrate possession of ``the legal, scientific, and 
technical qualifications necessary for him or her to render applicants 
valuable service.'' 37 CFR 11.7(a)(2)(ii).\1\ The Office determines 
whether an applicant possesses the legal qualification by administering 
a registration examination, which applicants must pass before being 
admitted to practice. See 37 CFR 11.7(b)(ii). To take the registration 
exam, applicants must first demonstrate they possess specific 
scientific and technical qualifications. The USPTO sets forth guidance 
for establishing possession of these scientific and technical 
qualifications in the GRB, which is available at www.uspto.gov/sites/default/files/documents/OED_GRB.pdf. The GRB also contains the 
``Application for Registration to Practice before the United States 
Patent and Trademark Office.''
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    \1\ Legal representation before Federal agencies is generally 
governed by the provisions of 5 U.S.C. 500. However, that statute 
provides a specific exception for representation in patent matters 
before the USPTO. 5 U.S.C. 500(e). See 35 U.S.C. 2(b)(2)(D) 
(formerly 35 U.S.C. 31).
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    The criteria for practicing before the Office are based in part on 
a determination of the types of scientific and technical qualifications 
and legal knowledge that are essential for practitioners to possess. 
This helps ensure that only competent practitioners who understand the 
applicable rules and regulations and have the background necessary to 
describe inventions in a full and clear manner are permitted to 
practice.
    Presently, there is only one patent bar that applies to those who 
practice in patent matters before the Office, including in the utility 
and design patent areas. The same scientific and technical requirements 
for admission to practice apply regardless of the type of patent 
application (i.e., whether the application is a utility patent 
application or a design patent application).

Request for Public Comments

    The USPTO seeks written comments from the public on the scientific 
and technical requirements for admission to practice in patent matters, 
including whether there should be separate requirements for 
practitioners who intend to only prosecute design patent applications 
(i.e., whether the Office should establish a separate design patent 
bar). In addition, the Office seeks comments on whether the 
instructions to applicants for limited recognition in patent matters 
should be clarified.
    The USPTO welcomes any comments from the public on the proposals 
covered in this notice as well as responses to specific questions posed 
at the end of this notice. The Office also

[[Page 63045]]

welcomes any other comments related to the subject matter of this 
notice.

Request 1: Require the USPTO To Periodically Review Applicant Degrees 
and Add Commonly Accepted Category B Degrees to Category A on a 
Predetermined Timeframe

    The USPTO has evaluated, and continues to evaluate, the scientific 
and technical qualifications set forth in the GRB. These evaluations 
seek to clarify guidance on what will satisfy the scientific and 
technical qualifications and to identify possible areas of improved 
administrative efficiency.
    The GRB lists three categories of scientific and technical 
qualifications that typically make one eligible for admission to the 
registration examination: (1) Category A, for specified bachelor's, 
master's, and Ph.D. degrees; (2) Category B, for other bachelor's, 
master's, and Ph.D. degrees with technical and scientific training; and 
(3) Category C, for individuals who rely on practical engineering or 
scientific experience and have passed the Fundamentals of Engineering 
test. If an applicant for registration does not qualify under any of 
the categories listed in the GRB, the USPTO will conduct an independent 
review for compliance with the scientific and technical qualifications.
    Starting in early 2020, the Office undertook a review of Category B 
applications to identify bachelor's degrees that are routinely accepted 
as demonstrating the requisite scientific and technical qualifications. 
In September 2021, the Office added 14 of these degrees, which were 
previously evaluated under the criteria listed in Category B, to 
Category A. The review of degrees is ongoing and is currently based on 
applicant data from those applying for the registration exam. Category 
A is not an exhaustive list of all degrees that would qualify, and the 
USPTO's current practice is to accept degrees when the accompanying 
transcript demonstrates equivalence to a Category A degree (for 
example, molecular cell biology may be equivalent to biology).
    The Office is considering whether, given the fast pace at which 
technology and related teachings evolve, it should periodically review 
commonly accepted Category B degrees and add them to Category A. These 
reviews would seek to clarify guidance on what would satisfy the 
scientific and technical qualifications, would improve administrative 
efficiency, and would simplify the application process for aspiring 
practitioners. For example, the USPTO could conduct such reviews on a 
three-year cycle. This timeframe would provide adequate time for the 
USPTO to gather, review, and analyze the degree data from a sufficient 
number of applicants for the registration exam. The Office invites 
comments on the proposed predetermined timeframe and whether the review 
should be based on any other criteria. If other criteria are suggested, 
the Office requests detailed information on why the specific criteria 
are recommended and any data that would be relied on in analyzing the 
criteria.

Request 2: Modify the Accreditation Requirement for Computer Science 
Degrees Under Category A To Accept Bachelor of Science Computer Science 
Degrees

    Currently, under Category A, the USPTO accepts computer science 
degrees accredited by the Computer Science Accreditation Commission 
(CSAC) of the Computing Sciences Accreditation Board (CSAB), or by the 
Computing Accreditation Commission (CAC) of the Accreditation Board for 
Engineering and Technology (ABET), on or before the date the degree was 
awarded. Computer science degrees that are so accredited may be found 
on the internet (www.abet.org).
    The USPTO requests input on whether the accreditation requirement 
for computer science degrees should be modified to accept under 
Category A Bachelor of Science degrees in computer science awarded by 
an accredited United States college or university, regardless of the 
ABET accreditation status of the program. Under this modification, 
Bachelor of Arts degrees in computer science may still qualify an 
applicant to sit for the examination under Category B. The Office 
requests that any commenters also include the rationale, data, and/or 
reasons for modifying the requirement.

Request 3: Possible Creation of a Separate Design Patent Practitioner 
Bar

    The USPTO is considering whether a separate design patent 
practitioner bar would be beneficial to the public and the Office, 
along with possible options for creating and implementing it. To that 
end, the Office requests input on whether a design patent practitioner 
bar, in which admitted design practitioners would practice solely in 
design patent matters, should be established. The potential creation of 
a design patent practitioner bar would not impact the ability of those 
already registered to practice in any patent matters, including design 
patent matters, before the USPTO. It would also not impact the ability 
of applicants who meet the current criteria, including qualifying for 
and passing the current registration exam, to practice in any patent 
matters before the Office.
    Options for implementing a design patent practitioner bar include 
requiring design patent practitioner bar applicants to:
    (1) take the current registration examination, but with modified 
scientific and technical requirements;
    (2) be a U.S. attorney (i.e., an active member in good standing of 
the bar of the highest court of any State); or
    (3) take a separate design bar examination instead of the current 
registration examination.
    The USPTO seeks input on which of the three options, or 
combinations of the three options, would be most appropriate for 
establishing a design patent practitioner bar, including any rationale, 
data, and specific criteria associated with the recommended option(s). 
For example, if a commenter recommends a particular option, the Office 
seeks input on why that option was recommended over the other options; 
what data the commenter relied on in selecting that option, if any; and 
what criteria would be appropriate in executing the option. 
Furthermore, the Office notes that design patent examiners typically 
have one of the following degrees: industrial design, product design, 
architecture, applied arts, graphic design, fine/studio arts, or art 
teacher education. The Office seeks input on whether design bar 
applicants should have one of these degrees, or other particular 
degrees.
    Any of the three options presented above could require regulatory, 
Manual of Patent Examining Procedure (MPEP) and GRB changes; training 
of the examining corps; updates to information technology systems; and 
workflow changes within the Office. Depending on the option(s) chosen, 
timing and costs could vary significantly. Additionally, option (3) 
would require the creation of an entirely new examination.
    The USPTO also requests any additional comments that would be 
useful in deciding whether to create and implement a design patent 
practitioner bar, and if so, how it should be implemented. For example, 
the Office is interested in any additional options not described above, 
as well as how such options could potentially be implemented, the 
reasoning for such options, and any data or research the commenter 
relied on in postulating the options.

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Request 4: Clarifying Instructions in the GRB for Limited Recognition 
Applicants

    The USPTO requests input on whether the following instructions 
should be added to the GRB to aid limited recognition applicants in 
applying for recognition. These instructions would not change the 
process by which applicants for limited recognition apply for 
recognition. Rather, the Office seeks to clarify the process for 
applicants. These instructions would be inserted on page 7 of the GRB, 
under Section E.
    E. ELIGIBILITY OF ALIENS: No grant of registration except under 37 
CFR 11.6(c). An applicant who is not a United States citizen and does 
not reside in the U.S. is not eligible for registration except as 
permitted by 37 CFR 11.6(c). Presently, the Canadian Intellectual 
Property Office is the only patent office recognized as allowing 
substantially reciprocal privileges to those admitted to practice 
before the USPTO. The registration examination is not administered to 
aliens who do not reside in the United States.
    Limited recognition to practice before the Office in patent 
matters. An alien residing in the United States may apply for limited 
recognition to practice before the Office in patent matters pursuant to 
37 CFR 11.9(b). To be admitted to take the examination, an applicant 
must fulfill the requirements as stated above in Section III and 37 CFR 
11.9(b), which includes that establishing that such recognition is 
consistent with the capacity of employment authorized by United States 
immigration authorities, for example the United States Citizenship and 
Immigration Services (USCIS), United States Department of State, U.S. 
Customs and Border Patrol, and the U.S. Department of Labor. The 
evidence establishing such consistency must demonstrate: (1) the 
applicant's authorization to reside in the United States, and (2) the 
applicant's authorization to work or be trained in the United States. 
It must include a copy of both sides of any work or training 
authorization and copies of all documents submitted to and received 
from the immigration authorities regarding admission to the United 
States, and a copy of any documentation submitted to the U.S. 
Department of Labor. This may include a complete copy of the 
application for a particular immigration status, the application for a 
work or training permit, and/or any approved notices related thereto.
    Qualifying documentation should specifically show that the 
immigration authorities have authorized the applicant to be employed or 
trained in the capacity of representing patent applicants before the 
USPTO by preparing and prosecuting their patent applications. Any 
approval that is pending at the time the application is submitted will 
result in the applicant being denied admission to the examination.
    A qualifying alien within the scope of 8 CFR 274a.12(b) or (c) is 
not registered upon passing the examination. Therefore, such qualifying 
aliens will not be patent attorneys or patent agents. Rather, such an 
applicant will be given limited recognition under 37 CFR 11.9(b) if 
recognition is consistent with the capacity of employment or training 
authorized by immigration authorities. Documentation establishing an 
applicant's qualification to receive limited recognition must be 
submitted with the applicant's application.

Request 5: General Request for Additional Suggestions on Updating the 
Scientific and Technical Requirements for Admission To Practice in 
Patent Matters

    Lastly, the USPTO invites any additional comments on updating the 
scientific and technical requirements for admission to practice in 
patent matters. For example, the Office is interested in any additional 
suggestions not described above, as well as how such suggestions could 
potentially be implemented, the reasoning for such suggestions, and any 
data or research the commenter relied on in postulating the 
suggestions. When offering suggestions, please reference the applicable 
rules and/or section in the GRB that may be impacted.

Questions Regarding Admission Requirements To Practice in Patent 
Matters Before the USPTO

    As noted above, the USPTO welcomes comments from the public on 
proposed updates to the scientific and technical requirements for 
admission to practice in patent matters. The Office is particularly 
interested in the public's input on the questions below; commenters can 
address any or all of the questions or provide additional comments:
    1. Should the Office review applicant degrees and add commonly 
accepted Category B degrees to Category A on a predetermined timeframe, 
e.g., every three years?
    2. Should the Office accept Bachelor of Science degrees in computer 
science under Category A from an accredited United States college or 
university regardless of whether the degree program is ABET accredited?
    3. Should the Office create a separate design patent practitioner 
bar, and if so, which option(s) and what criteria should be implemented 
for its creation?
    4. Should the Office add clarifying instructions to the GRB for 
limited recognition applicants?
    5. Should the Office implement any additional updates to the 
scientific and technical requirements for admission to practice in 
patent matters, and if so, what should those include?

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2022-22569 Filed 10-17-22; 8:45 am]
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