Extension of Comment Period on Initiatives to Practice Before the USPTO

USPTO Update by: Cristina Lai & Grace Kim

The USPTO is extending the deadline for submitting comments regarding two Federal Register Notices to January 31, 2023. The previous deadline was January 17, 2023.

The first Federal Register Notice addresses eligibility for registration to practice before the USPTO. Currently, prospective patent practitioners must demonstrate scientific and technical qualifications according to one of the following requirements: a bachelor’s, master’s, or Ph.D. degree in a field recognized by the USPTO as a technical subject; a bachelor’s, master’s, or Ph.D. degree in a field other than one recognized as a technical subject along with technical and scientific training; or practical engineering or scientific experience and passage of the Fundamentals of Engineering (FE) exam.

The USPTO is inviting comments on a proposed practice of periodically reviewing non-technical subject degrees that are commonly accepted and evaluating whether the degrees should be recategorized as technical subjects. The USPTO is also inviting comments on eligibility of computer science degrees. Currently, computer science degrees are only recognized as technical qualifications if they are accredited by one of a number of known commissions or boards. In a broader approach, a computer science degree could be eligible as a sole qualification regardless of accreditation.

The USPTO is further considering creation of a separate design patent practitioner bar and is open to comments on requirements and procedures for said design bar, including, for example, whether a separate registration exam should be created for design patent practitioners.

The second Federal Register Notice addresses eligibility to appear before the Patent Trial and Appeal Board (PTAB) in AIA proceedings. Parties engaged in AIA proceedings are required by 37 CFR 42 to designate a registered patent practitioner as a lead counsel and at least one back-up counsel. The at least one back-up counsel may not be a registered practitioner only if a motion to appear is granted based on the back up counsel’s familiarity with relevant subject matter and state Bar membership. The USPTO is looking to expand eligibility for participation in AIA proceedings and the capacities in which non-registered practitioners can practice and appear before the PTAB. The USPTO is seeking comments regarding potential modifications to PTAB rules as well as expansion of training and development programs that would increase such participation in patent procedures. 

Comments regarding any of the above initiatives can be submitted at www.regulations.gov until January 31, 2023.