[Federal Register Volume 61, Number 190 (Monday, September 30, 1996)]
[Proposed Rules]
[Pages 51072-51074]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 96-24865]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 10
[Docket No. 960828233-6233-01]
RIN 0651-AA92
Registration Examination for Patent Practitioners and the
Establishment of a Continuing Education Requirement and an Annual Fee
for Registered Patent Practitioners
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Advance notice of proposed rulemaking and notice of hearings.
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SUMMARY: The Patent and Trademark Office (PTO) will hold public
hearings, and request comments, on issues relating to the
administration and format of the Registration Examination for Patent
Practitioners and to the establishment of a continuing education
requirement and an annual fee for registered patent practitioners.
Interested members of the public are invited to testify at public
hearings and to submit written comments on the topics outlined in the
supplementary information section of this notice.
DATES: Public hearings will be held on October 29, 1996, November 20,
1996, and December 3, 1996 starting at 9:00 a.m. and ending no later
than 5:00 p.m.
Those wishing to present oral testimony at the hearings must
request an opportunity to do so no later than October 22, 1996, for the
October 29, 1996 hearing; November 13, 1996, for the November 20, 1996
hearing; or November 26, 1996 for the December 3, 1996 hearing.
Written comments will be accepted by the PTO until December 6,
1996. Written comments and transcripts of the hearings will be
available for public inspection on or about December 20, 1996.
ADDRESSES: The October 29, 1996 hearing will be held in San Francisco,
California. Additional information on location will be subsequently
available from the PTO.
The November 20, 1996 hearing will be held in Dallas, Texas.
Additional information on location will be subsequently available from
the PTO.
The December 3, 1996 hearing will be held at the Crystal Forum,
Crystal Mall 1, 1911 South Clark Place, Arlington, Virginia.
Requests to testify and for additional information on hearing
locations should be sent to G. Lee Skillington by facsimile
transmission to (703) 305-8885, by mail marked to his attention
addressed to Commissioner of Patents and Trademarks, Box 4, Washington,
D.C. 20231 or by Internet electronic mail to [email protected].
Written comments should be sent via mail marked to the attention of
G. Lee Skillington and addressed to Commissioner of Patents and
Trademarks, Box 4, Washington, D.C. 20231 or via Internet electronic
mail to [email protected]. They will be maintained for public
inspection in Room 902 of Crystal Park 2, 2121 Crystal Drive,
Arlington, Virginia. They will also be made available via the PTO's
World Wide Web site at http://www.uspto.gov.
FOR FURTHER INFORMATION CONTACT: G. Lee Skillington by telephone at
(703) 305-9300, by facsimile transmission at (703) 305-8885, by mail
marked to his attention addressed to Commissioner of Patents and
Trademarks, Box 4, Washington, D.C. 20231, or by electronic mail at
[email protected].
SUPPLEMENTARY INFORMATION:
I. Background
Pursuant to 35 U.S.C. 31 and 32, and 37 CFR Part 10, the PTO's
Office of Enrollment and Discipline (OED) receives and acts upon
applications for registration to practice before the PTO in patent
cases, prepares and grades the Registration Examination for Patent
Practitioners (Registration Examination),
[[Page 51073]]
maintains a register of all individuals entitled to practice before the
PTO in patent cases, conducts investigations into possible violations
of the PTO's Disciplinary Rules by practitioners practicing before the
PTO in all matters.
In recent years, the preparation and administration of the
Registration Examination has taxed OED's resources. The PTO is seeking
to restructure the administration and format of the Registration
Examination in order to free resources needed to investigate and take
appropriate action against individuals who no longer meet the
qualifications necessary to represent others before the PTO. The
Registration Examination restructuring should provide greater assurance
to our patent applicants that registered practitioners possess the
essential skills necessary to practice before the PTO in patent cases.
Moreover, in furtherance of these goals, the PTO is seeking to
establish continuing education requirements for registered patent
practitioners and an annual registration fee. The annual fee would be
used to support the costs associated with the continuing education
program and with fulfilling OED's ongoing disciplinary
responsibilities.
II. Issues for Public Comment
Interested members of the public are invited to testify and to
present written comments on issues related to the discussion topics
outlined below, including the specific issues identified in the
questions following each topic.
A. Administration and Format of the Registration Examination for Patent
Practitioners
The purpose of the Registration Examination is to determine whether
individuals who seek to practice before the PTO in patent cases possess
the necessary qualifications. At present, the Registration Examination
consists of two parts: (1) a multiple-choice portion that tests
knowledge of PTO practice and procedure, and (2) a portion that
primarily tests claim drafting ability. OED prepares and grades the
Registration Examination, regrades the Registration Examination when
requested, and drafts reconsideration decisions of the regrades when
requested.
The PTO is considering restructuring the PTO practice and procedure
portion of the Registration Examination such that it is a computer-
administered examination. At the completion of the computer-
administered examination, an applicant would be immediately provided
with a computer-graded score. The computer-administered examination
would be offered numerous times throughout the year at various
locations around the United States. Only applicants who have passed the
computer-administered examination would be eligible to complete further
requirements for registration.
As a further requirement for registration, the PTO is considering
substituting the claim drafting portion of the Registration Examination
with a comprehensive course on preparation and prosecution of patent
applications, including drafting of specifications, claims, and
responses to office actions. The PTO is also considering
apprenticeships as alternatives to the comprehensive course.
The PTO seeks public input on these considerations and other
general matters relevant to restructuring the administration and format
of the Registration Examination. In addition, the PTO seeks public
input on the following particular questions:
1. Should the PTO give a computer-administered examination
consisting of a bank of reusable questions?
2. Should the PTO develop the comprehensive course on preparation
and prosecution of patent applications or, in the alternative, should
the PTO just develop criteria for the course?
3. Should the PTO teach the course or, in the alternative, should
the course be taught by non-PTO entities or individuals, such as
universities and professional associations?
4. What qualifications should the course instructors have?
5. If the PTO does not teach the course, should the PTO certify the
available courses?
6. Should former PTO examiners be required to pass the computer-
administered examination if they wish to practice before the PTO in
patent cases?
7. Should former PTO examiners be required to take the course or
participate in an apprenticeship if they wish to practice before the
PTO in patent cases?
B. Establishment of Continuing Education Requirement for Registered
Patent Practitioners
The purpose of the continuing education requirement is to provide
greater assurance to the PTO's patent applicants that individuals who
practice before the PTO in patent cases possess the necessary
qualifications. At present, the PTO does not require registered patent
practitioners to continue their legal or technical education.
The PTO seeks public input on the establishment of a continuing
education requirement for registered patent practitioners and other
general matters relevant to the requirement. In addition, the PTO seeks
public input on the following particular questions:
1. Should the continuing education requirement mandate minimum
requirements for legal, technical, and legal ethics education? Or, in
the alternative, should the continuing education requirement mandate
minimum requirements for continuing education that can be met with
either legal, technical, or legal ethics education?
2. Should the PTO give credit to patent practitioners for relevant
legal and ethics courses taken to meet a state bar's continuing
education requirement?
3. What penalty should be imposed for failure to meet the
continuing education requirement?
4. What is a reasonable number of required continuing education
credits?
5. Should the qualifying legal education be limited to patent law?
C. Establishment of an Annual Fee To Maintain Registration
An annual fee would be used to support the costs associated with
the continuing education requirement and to provide resources to OED to
fulfill its ongoing disciplinary responsibilities. At present, the PTO
does not require an annual registration fee for registered patent
practitioners. The PTO seeks public input on the establishment of an
annual fee for registered patent practitioners and other general
matters relevant to an annual registration fee.
III. Guidelines for Oral Testimony
Individuals wishing to testify at the hearings must adhere to the
following guidelines:
1. Requests to testify must include the speaker's name,
affiliation, title, telephone number, facsimile number, mailing
address, and Internet mail address (if available).
2. Speakers will be provided between five and fifteen minutes to
present their remarks. The exact amount of time allocated per speaker
will be determined after the final number of parties testifying has
been determined. Efforts will be made to accommodate requests made
before the day of the hearing for additional time for testimony.
3. Requests to testify may be accepted on the day of the hearing if
sufficient time is available on the schedule. No one will be permitted
to testify without prior approval.
4. A schedule including approximate times for testimony will be
provided to all speakers on the morning of the day of the hearing.
Speakers are advised that
[[Page 51074]]
the schedule for testimony may change during the course of the
hearings.
IV. Guidelines for Written Comments
Written comments should include the following information:
1. Name and affiliation of individual responding.
2. If applicable, an indication of whether comments offered
represent the views of the respondent's organization or are the
respondent's personal views.
3. If applicable, information on the respondent's organization,
including the type of organization (business, trade group, university,
non-profit organization, etc.), and the general areas of interest to
the organization.
If possible, respondents should include a machine-readable
submission of their written comments. Machine-readable submissions can
be provided via Internet electronic mail or on 3.5'' floppy disk
formatted for use in either a Macintosh computer or MS-DOS based
computer. The document should be formatted as either plain text, ACSII
text, Microsoft Word (Macintosh, MS-DOS, or MS-Windows), or WordPerfect
(Macintosh, MS-DOS, or MS-Windows).
Information that is provided pursuant to this notice will be made
part of a public record and will be available via the Internet. In view
of this, parties should not provide information that they do not wish
to be publicly disclosed or electronically accessible. Parties who
would like to rely on confidential information to illustrate a point
being made are requested to summarize or otherwise provide the
information in a way that will permit its public disclosure.
Dated: September 20, 1996.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 96-24865 Filed 9-27-96; 8:45 am]
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