[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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