Expanding Admission Criteria for Registration To Practice in Patent Cases Before the United States Patent and Trademark Office, 31249-31251 [2023-10409]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 88, Number 94 (Tuesday, May 16, 2023)]
[Notices]
[Pages 31249-31251]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-10409]


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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: Notice.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) previously published a notice requesting comments on the 
scientific and technical requirements to practice in patent matters 
before the USPTO. Specifically, the Office sought 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, make certain 
modifications to the accreditation requirement for computer science 
degrees, and 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. The USPTO has considered the 
comments and, based on the support for the proposals, is implementing 
updates to the GRB. Expanding the admission criteria of the patent bar 
would encourage broader participation and keep up with the ever-
evolving technology and related teachings that qualify someone to 
practice before the USPTO.

DATES: The new version of the GRB incorporating the proposed updates 
will be published and be applicable as of May 16, 2023.

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

SUPPLEMENTARY INFORMATION:

Summary

    On October 18, 2022, the Office published a request for comments on 
four proposals on the scientific and technical requirements to practice 
in patent matters before the USPTO. The first proposal was to add 
commonly accepted Category B degrees to Category A on a predetermined 
timeframe, namely every three years. The Office received 10 comments 
responsive to this proposal. The second proposal was to remove the 
requirement that computer science degrees be accredited by the 
Accreditation Board for Engineering and Technology (ABET) in order to 
be considered under Category A, and instead, to propose that the USPTO 
would accept all Bachelor of Science in computer science degrees from 
accredited colleges or universities under Category A. The Office 
received 14 comments responsive to this proposal. The third proposal 
was to clarify the instructions for applicants who are applying for 
limited recognition. The Office received five comments responsive to 
this proposal. A majority of the comments were supportive of the 
suggested changes regarding these three proposals. The fourth proposal, 
whether to implement a design patent practitioner bar, and, if so, how 
to do so, will be addressed in a separate notice.
    This notice provides information related to the implementation of 
the first three proposals. Based on the USPTO's evaluation and comments 
received, the USPTO is changing the criteria to: add common Category B 
degrees to Category A on a predetermined timeframe, namely every three 
years, and remove the requirement that in order to qualify under 
Category A, Bachelor of Science in computer science degrees must be 
accredited by the Computer Science Accreditation Commission of the 
Computing Sciences Accreditation Board, or by the Computing 
Accreditation Commission of the ABET, on or before the date the degree 
was awarded. Instead, all Bachelor of Science degrees in computer 
science from an accredited university or college will be accepted under 
Category A. Additionally, the instructions to limited recognition 
applicants to apply for recognition will be clarified to aid applicants 
in the application process.

Background

    The Director of the USPTO is given 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). The courts have determined that the USPTO Director bears 
primary responsibility for protecting the public from unqualified 
practitioners.
    Pursuant to that responsibility, USPTO regulations provide that 
registration to practice in patent matters before the USPTO requires a 
practitioner to, inter alia, demonstrate possession of scientific and 
technical qualifications.\1\ The role of patent practitioners with 
scientific and technical backgrounds in providing full and clear patent 
specifications and claims has long been acknowledged. The USPTO 
publishes the GRB, which sets forth guidance for establishing 
possession of scientific and technical qualifications. The GRB also 
provides applicants instructions on how to apply to become a patent 
practitioner. The GRB is available at www.uspto.gov/sites/default/files/documents/OED_GRB.pdf.
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    \1\ Legal representation before Federal agencies is generally 
governed by the provisions of 5 U.S.C. 500. That statute, however, 
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 GRB lists three categories of scientific and technical 
qualifications that typically make one eligible for admission to the 
registration examination in order to practice before the Office in all 
patent matters: (1) Category A for specified bachelor's, master's, and 
doctorate of philosophy degrees; (2) Category B for other degrees

[[Page 31250]]

with technical and scientific training; and (3) Category C for 
individuals who rely on practical engineering or scientific experience 
by demonstrating that they have passed the Fundamentals of Engineering 
test. If a candidate 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 
pursuant to 37 CFR 11.7(a)(2)(ii).
    The USPTO has evaluated, and continues to evaluate, the list of 
typically qualifying training set forth in the GRB. These evaluations 
seek to clarify guidance on what will satisfy the scientific and 
technical qualifications, to identify possible areas of improved 
administrative efficiency, and to clarify instructions where warranted. 
To that end, the USPTO published a notice requesting comments on three 
proposed updates to the GRB, namely, to add commonly accepted Category 
B degrees to Category A every three years; to remove the requirement 
that computer science degrees be accredited by ABET in order to be 
considered under Category A, and instead accept all Bachelor of Science 
in computer science degrees from accredited colleges or universities; 
and to clarify the instructions for applicants who are applying for 
limited recognition. See Request for Comments on Expanding Admission 
Criteria for Registration to Practice in Patent Cases Before the United 
States Patent and Trademark Office, 87 FR 63044 (October 18, 2022).
    The USPTO received comments from intellectual property 
organizations, industry, individual patent practitioners, and the 
general public. The USPTO acknowledges and appreciates the many 
comments that were submitted from the intellectual property community. 
The comments are available at www.regulations.gov/docket/PTO-P-2022-0027/comments. The USPTO has considered the comments, including those 
that raised concerns or provided suggestions. The USPTO is implementing 
the proposals as stated in the request for comments, and as explained 
below. Additional suggestions beyond the scope of the request for 
comments and the questions posed therein were provided within many of 
the comments. The USPTO appreciates the suggestions and may address 
them in the future, once further evaluation and data is garnered.
    This notice merely describes agency policy and procedures and does 
not involve substantive rulemaking. While the criteria for admission to 
practice in patent matters is generally described in 37 CFR 11.7, the 
rule does not set forth the specific scientific and technical criteria 
for admission.

Update 1: Review Commonly Accepted Category B Degrees and, Where 
Warranted, Add Them to Category A Every Three Years

    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 
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 
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).\2\ A determination of 
equivalency does not indicate that the degrees are the same. Rather, it 
is an evaluation that the degrees have the same or similar scientific 
and technical rigor required to provide patent applicants valuable 
service. Currently, the average processing time for applicants with 
Category A degrees is seven calendar days. The average processing time 
for applicants with Category B degrees is 10-14 calendar days.
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    \2\ See OED Frequently Asked Questions (FAQs), available at 
www.uspto.gov/learning-and-resources/patent-and-trademark-practitioners/oed-frequently-asked-questions-faqs.
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    Given the fast pace at which technology and related teachings 
evolve, the USPTO will review commonly accepted Category B degrees and 
add them to Category A on a three-year timeframe, beginning from the 
publication date of this notice. These reviews will clarify guidance on 
what would satisfy the scientific and technical qualifications, improve 
administrative efficiency, and simplify the application process. 
Conducting such reviews on a three-year cycle will provide adequate 
time for the USPTO to gather, review, and analyze the degree data from 
a sufficient number of applicants for the registration exam. One 
commenter suggested that such reviews rely on the technical and 
analytic ability required by the particular degree. Once the potential 
degrees that may be moved from Category B to Category A are ascertained 
based on applicant data, the degrees will be assessed to determine 
whether they present sufficient technical and scientific qualifications 
necessary to render patent applicants valuable service. See Premysler 
v. Lehman, 71 F.3d 387, 389 (Fed. Cir. 1995). Other commenters 
suggested specific degrees for current incorporation into Category A. 
The degrees suggested either are not ones that are currently awarded by 
a great majority of institutions (e.g., artificial intelligence), are 
not ones that applicants actually have or that a lot of applicants have 
(e.g., artificial intelligence and cheminformatics), or are ones that 
would already be evaluated as equivalent to a current Category A degree 
(e.g., cell biology as equivalent to biology). As stated in this 
notice, the USPTO will continue to collect and analyze data on the 
degrees on a three-year cycle.
    Lastly, a number of commenters suggested making applicants' degrees 
publicly available. The USPTO is not permitted to blanketly reveal such 
information, as stated in the Privacy Act Statement that accompanies 
the application in the GRB, and there is no current infrastructure to 
do so.

Update 2: Accept Bachelor of Science Degrees in Computer Science From 
Accredited Colleges and Universities Under Category A

    Prior to this notice, acceptable computer science degrees under 
Category A must have been accredited by the Computer Science 
Accreditation Commission of the Computing Sciences Accreditation Board 
or by the Computing Accreditation Commission of the ABET on or before 
the date the degree was awarded. As of the publication of this notice, 
this criterion will be changed so that all Bachelor of Science degrees 
in computer science from accredited colleges and universities will be 
accepted under Category A, regardless of whether the degree program is 
accredited by the ABET. An overwhelming majority of those who commented 
on this proposal were in favor of this change, as they thought ABET 
accreditation did not convey a perceivable benefit.

Update 3: Provide Clarifying Instructions in the GRB for Limited 
Recognition Applicants

    The USPTO requested input on whether the instructions below should 
be added to the GRB to aid limited recognition applicants in applying 
for recognition. Based on the support of commenters, these instructions 
will be placed in the GRB. These instructions will not change the 
process by which applicants for limited recognition apply for 
recognition. One commenter suggested that instructions be given for

[[Page 31251]]

each immigration status or visa category; however, the ever-changing 
landscape of immigration prohibits such an exhaustive list. The 
instructions below are to be inserted under Section F of the GRB.
    F. 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 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 
related approved notices.
    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.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2023-10409 Filed 5-15-23; 8:45 am]
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