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New Admission Criteria to Practice Before USPTO Designed to Foster Diversity and Promote Innovation

Authors

This blog post was written in collaboration with Summer Associate Shelby Farrand.

On May 16, 2023, the United States Patent and Trademark Office published a Federal Register Notice outlining its newly expanded admission criteria for registration to practice before the office.1 These changes followed an October 18, 2022, request for comments on four proposals related to the technical requirements for registration.2

The General Requirements Bulletin outlines the scientific and technical training requirements for eligibility for the patent office exam. It sets forth three categories of potentially eligible applicants: Category A, Category B, and Category C.3 Category A applicants possess a degree that the office recognizes as satisfying the technical requirements for registration.4 These degrees are listed in the GRB.5 Category B applicants do not possess one of the degrees listed in the GRB, but otherwise demonstrate that they have satisfied technical requirements for registration, namely, training in chemistry, physics, and biology.6 Put another way, Category A is not an exhaustive list, so the office routinely approves Category B applicants who can demonstrate that their degree was of “the same or similar scientific and technical rigor” as those listed in Category A.7 Category C applicants similarly do not possess a listed degree but have otherwise demonstrated their technical abilities by passing the Fundamentals of Engineering exam.8

The October 2022 proposed changes were:

  1. Review and add commonly accepted Category B degrees to Category A every three years
  2. Remove the requirement that computer science degrees be accredited by the Accreditation Board of Engineering and Technology to be considered in Category A
  3. Implement a separate patent office exam for design patent practitioners
  4. Add clarifying instructions in the GRB for limited recognition applicants.9

Based on the support it received during the comment period, the USPTO implemented proposals one, two, and four.10 The GRB is updated to reflect these changes.11 Proposal three was not addressed in the May 16 notice but will be addressed at a later date.12

Why Expand the Admission Criteria?

The USPTO is charged with ensuring patent practitioners have the necessary qualifications to provide adequate patent counsel.13 The requirements, however, should not be so rigid as to hinder access. With its admission criteria, the USPTO should strive to “strike the right balance between protecting the public from unqualified practitioners and increasing access to the USPTO.”14

Finding the right balance is important because the admission criteria set by the USPTO have economic and technical consequences. For example, an expansion of admission criteria can “increase competition to the benefit of consumers, inventors, and practitioners.”15 Increased competition means more choices for patent services and lower legal fees for inventors.16 By lowering barriers to the patent office, the USPTO encourages new inventors to seek patents and by doing so promotes innovation.17

Expanded admission criteria also promote innovation by increasing the diversity of the patent bar. The patent bar has long struggled to increase diversity.18 To demonstrate this, one commentor highlighted the fact that, as of 2020, there are more patent attorneys and agents named “Michael” than there are racially diverse women.19 Though some progress has been made in recent years, there is still a long way to go.20 The USPTO’s new admission criteria are widely seen as steps to deliberately foster diversity and inclusion.21

The three implemented changes are summarized below.

Change 1: Add Commonly Accepted Category B Degrees to Category A

First, the USPTO will review commonly accepted Category B degrees on a three-year cycle and add appropriate degrees to Category A.

Because the technical credentials of a Category A applicant have been pre-approved by the USPTO, the processing time of a Category A applicant is less than for the other categories.22 For example, the average processing time for a Category A applicant is seven calendar days, while the average processing time for a Category B applicant is 10–14 days.23

Conducting a routine review of commonly accepted Category B degrees will allow the patent office to promote more recognized degrees to Category A, thereby increasing administrative efficiency and simplifying the application process.24 A continuously improving application process that rejects unnecessarily rigid and burdensome requirements removes unreasonable barriers to practice, especially for diverse applicants.25

This change also allows the patent bar to keep pace with the quickly evolving technological landscape. USPTO Director Kathi Vidal described the changes to admission criteria as part of a larger “effort across the Agency to deploy and keep up with the fast pace of technological change and to lower barriers to our innovation ecosystem.”26

Change 2: Remove the ABET Accreditation Requirement for Computer Science Degrees

Next, the USPTO removed the requirement that computer science degrees be ABET-accredited to qualify under Category A. Under the new rules, all computer science degrees from accredited colleges and universities will qualify under Category A.

This change received wide support because the ABET accreditation is seen as creating no more than “an artificial distinction among computer science degrees with no discernable justification.”27 In fact, some of the most prestigious computer science programs in the country, including UC Berkeley, Stanford, and Carnegie Mellon, are not ABET-accredited.28 Removing the ABET-accreditation requirement allows the USPTO to increase access to patent practice in “one of the fastest growing areas of patent prosecution and innovation.”29

Change 3: Add Clarifying Instructions for Limited Recognition Applicants

Lastly, an applicant who is not a U.S. citizen but is lawfully residing in the U.S. may apply for limited recognition to practice before the USPTO.30 The USPTO added clarifying instructions to the GRB for limited recognition applicants, although the application process itself did not change.31 Rather, the GRB was updated to include more detailed instructions concerning the required documentation.32 Similar to changes one and two, this change simplifies the application for registration, thereby increasing access to the patent office.

  1. Expanding Admission Criteria for Registration To Practice in Patent Cases Before the United States Patent and Trademark Office, 88 Fed. Reg. 31249 (May 16, 2023).

  2. Expanding Admission Criteria for Registration To Practice in Patent Cases Before the United States Patent and Trademark Office, 87 Fed. Reg. 63044 (Oct. 18, 2022) (requesting comments).

  3. United States Patent and Trademark Office, Office of Enrollment and Discipline (OED), General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office (May 2023), at 3–8.

  4. Id. at 3.

  6. Id. at 4.

  7. Expanding Admission Criteria, 88 Fed. Reg. at 31250.

  8. Supra, note 3, at 8.

  9. Expanding Admission Criteria, 87 Fed. Reg. at 63045–46.

  10.  Expanding Admission Criteria, 88 Fed. Reg. at 31249.

  11.  Supra, note 3, at 3–9.

  12.  Expanding Admission Criteria, 88 Fed. Reg. at 31249.

  13.  35 U.S.C. § 2(b)(2)(D).

  14.  Comment by the Antitrust Division of the United States Department of Justice, Comments in Response to Expanding Admission Criteria, 87 Fed. Reg. 63044, Dkt. No. PTO-P-2022-0027-0046, at 3 (Jan. 31, 2023); see also Comment by ADAPT, Comments in Response to Expanding Admission Criteria, 87 Fed. Reg. 63044, Dkt. No. PTO-P-2022-0027-0025, at 3 (Jan. 16, 2023) (urging the USPTO to “strike the right balance”).

  15.  Comment by the Antitrust Division, supra, note 14, at 6.

  16.  Id. at 3.

  17.  See Id. at 5.

  18.  Comment by ADAPT, supra, note 14, at 2.

  19.  Id.

  20.   See generally Elaine Spector and Latia Brand, Diversity in Patent Law: A Data Analysis of Diversity in the Patent Practice by Technology Background and Region, LANDSLIDE, September/October 2020.

  21.   See Comment by ADAPT, supra, note 14, at 2; see also, e.g., Comment by ABA Section of Intellectual Property Law, Comments in Response to Expanding Admission Criteria, 87 Fed. Reg. 63044, Dkt. No. PTO-P-2022-0027-0029, at 1 (Feb. 1, 2023).

  22.   Expanding Admission Criteria, 88 Fed. Reg. at 31250.

  23.   Id.

  24.   Id.

  25.   Comment by ADAPT, supra, note 14, at 3; Comment by ABA Section of Intellectual Property Law, supra, note 21, at 2.

  26.   Eileen McDermott, Patent Office Implements Changes to Requirements for Admission Criteria for Patent Bar, IP WATCHDOG (May 16, 2023, 10:15 AM), https://ipwatchdog.com/2023/05/16/patent-office-implements-changes-requirements-admissions-criteria-patent-bar/id=160930/.

  27.   See, e.g., Comment by ABA Section of Intellectual Property Law, supra, note 21, at 3.

  28.   Id.

  29.   Comment by the American Intellectual Property Law Association (AIPLA), Comments in Response to Expanding Admission Criteria, 87 Fed. Reg. 63044, Dkt. No. PTO-P-2022-0027-0027, at 2 (Jan. 26, 2023).

  30.   Supra, note 3, at 9.

  31.   Expanding Admission Criteria, 88 Fed. Reg. at 31250.

  32.   Id.

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.