[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
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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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