[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

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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]
BILLING CODE 3510-16-P