On October 18, 2022, the United States Patent and Trademark Office (USPTO) posted two notices on Regulations.gov seeking public input on the requirements to practice before the USPTO and Patent Trial and Appeal Board (PTAB). The goal is to expand admission criteria so "more Americans, including those from traditionally under-represented and under-resourced communities, can participate in Office practice."1
The first notice, titled "Expanding Opportunities To Appear Before the Patent Trial and Appeal Board,"2 requests public comments on four topics.
Request 1: Expanding Opportunities To Practice Before the PTAB by Allowing Non-Registered Practitioners To Be Admitted To Practice Before the PTAB. Currently, non-registered practitioners must be admitted pro hac vice in each AIA proceeding, such as Inter Partes Review (IPR) and Post Grant Review (PGR). The USPTO is now considering other procedures and standards for non-registered attorneys. The Notice suggests a fitness-to-practice standard which would only require a familiarity with the rules of the PTAB and no prior disciplinary actions.
Request 2: Expanding Opportunities for Non-Registered Practitioners To Appear as the Lead Counsel. As of today, non-registered practitioners may only serve as back-up counsel at the PTAB. However, the USPTO is requesting comments on whether non-registered attorneys who are admitted to practice before the PTAB may serve as lead counsel. In addition, the USPTO is considering the level of experience needed for a non-registered lead counsel.
Request 3: Other Considerations Regarding Non-Registered Practitioners. The USPTO is requesting comments about whether non-registered practitioners must be accompanied by registered practitioners as their lead or backup counsel.
Request 4: Training and Development Programs and Potential Changes to LEAP. The Legal Experience and Advancement Program (LEAP) provides training to less experienced advocators before the PTAB. The USPTO may provide additional development opportunities to encourage lawyers to practice at the PTAB.
The second notice titled "Expanding Admission Criteria for Registration To Practice in Patent Cases" requests public comments on five topics. 3
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 is seeking comments on how often it should review which degrees demonstrate the requisite scientific and technical qualifications. The USPTO will likely include more degrees into Category A with each review increasing the number of people eligible for the patent bar exam.
Request 2: Modify the Accreditation Requirement for Computer Science Degrees Under Category A To Accept Bachelor of Science Computer Science Degrees. The USPTO is considering whether to accept Bachelor of Science degrees in computer science without considering the ABET accreditation status of the program.
Request 3: Possible Creation of a Separate Design Patent Practitioner Bar. This additional exam would not impact those already registered.
Request 4: Clarifying Instructions in the GRB for Limited Recognition Applicants. The process for limited recognition would not change.
Request 5 General Request for Additional Suggestions on Updating the Scientific and Technical Requirements for Admission To Practice in Patent Matters.
For those interested in commenting, the USPTO is accepting comments until January 17, 2023.
Footnotes
1 Expanding Opportunities To Appear Before the Patent Trial and Appeal Board, 87 FR 63047.
2 Id.
3 Expanding Admission Criteria for Registration To Practice in Patent Cases Before the United States Patent and Trademark Office, 87 FR 63044.
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