Posts Tagged: "patent bar"

My conversation this week with John White was much like any number of conversations we have had over the years over dinner or drinks. What prompted me to ask John to speak with us this week was an article he recently wrote, which we published on IPWatchdog. It was styled as an open letter to Elon Musk and Vivek Ramaswamy, the incoming co-leaders of the soon-to-be Department of Government Efficiency. In that article John explains that “the patent system is currently foundered”, but that it can be fixed with “focus and ongoing commitment to see the fixes through to results.” So, that is where we start our conversation, like so many we have had over the last 26 years—what is wrong with the patent system and how should it be fixed.

The U.S. Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (NPRM) today that would allow practitioners who are not registered with the USPTO patent bar to act as lead counsel in proceedings before the Patent Trial and Appeal Board (PTAB). The Office has decided to propose that practitioners must still be represented by a registered practitioner, but to allow parties to “designate a non-registered practitioner as lead counsel and the registered practitioner as back-up counsel.”

Gene Quinn and I have collectively been teaching patent bar prep for almost 60 years! In that time, we’ve had contact with many career-bound patent people. All had, without exception, a background in the sciences or engineering, or both. The list of qualifications has, over the years, been expanded as technology has expanded. In years gone by, degrees in Biology and Computer Science would not have qualified you to sit for the U.S. Patent and Trademark Office (USPTO) Registration Exam, but now they do, along with many other intersectional STEM qualifications, including, for the first time, advanced degrees in these disciplines. Good, I say. The more the merrier.

The U.S. Patent and Trademark Office (USPTO) published a Federal Register Notice today implementing the suggestions it received on expanding the patent bar following its October 18, 2022, request for public input on the topic. The USPTO last year requested public comment on two FRNs that attempted to expand opportunities to practice in front of the agency. The Office said at the time it planned to “expand the admission criteria of our patent bar to encourage broader participation and to keep up with the ever-evolving technology and related teachings that qualify someone to practice before the USPTO.”

Challenging established processes is a commonly recognized leadership principle. In recent weeks, the emphasis by the United States Patent and Trademark Office (USPTO) on reconsidering and reforming patent bar eligibility, especially with regard to a potential design patent bar, represents a significant challenge to well-established Patent Office procedures. If the health and viability of an organization can be defined in terms of its ability to revisit, revamp and evolve existing rules and procedures, then this initiative, led by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal, represents a healthy and viable intellectual property community.

Surely there can be no greater national interest to the United States than to allow each and every single person working to solve the COVID-19 pandemic to cross our border without issue, especially those who have already earned visas to work in the United States. However, a series of unfortunate events and policies has resulted in an ironic situation in which, in one example, an attorney from Sweden, who has spent significant periods of time within the United States since 2006, cannot return to the states to sit for the patent bar; aid members and clients of her law firm who are needful of her unique skills, including one colleague who is undergoing medical treatment for a serious health condition; or prosecute several patent applications representing some vital advancements in the fight against COVID-19. U.S. Embassy inaction, which is blocking her ability to take the U.S. patent bar, join her colleagues in the U.S. who have mentored her in this field for a year-and-a-half, and work on these COVID-19 patent solutions, arguably threatens the very chance of those inventions and technologies being properly commercialized to benefit everyone in the United States and beyond.

A critical battle against systemic racism currently engages the United States. Patent practitioners across the country—from the University of Minnesota Law School (a mere 2.5 miles from the location of the killing of George Floyd) to the U.S. Patent and Trademark Office (USPTO) headquarters in Alexandria, Virginia (another 1,000 miles away)—must cast a critical eye towards our profession to identify systemic barriers in the patent field.

The United States Patent and Trademark Office (USPTO or Office) earlier today published a Request for Comments in the Federal Register asking for public input into proposed changes 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). The Office is considering changing the criteria applicable in ways that would streamline the process for both applicants and the Office of Enrollment and Discipline (OED), the office within the USPTO tasked with administering the Patent Bar Exam and implementing the rules pertaining to admission to practice before the Office.

As we celebrate Women’s History Month, it is important to point out the role of women in the field of patent law. Women have been members of the patent bar since as early as 1898, when Florence King became the first woman registered to practice before the U.S. Patent Office, as well as the 685th registrant. She became a lawyer first, and then went back to school to obtain a degree in Mechanical and Electrical Engineering so that she could register on the patent bar. As a woman patent practitioner with a mechanical engineering degree, I feel a lot of gratitude to women like Florence King, who paved the way for me. Yet, despite her trailblazing efforts over a century ago, there is still a considerable lack of gender diversity in the patent bar.

The 2020 “Progress and Potential” report produced by the United States Patent and Trademark Office (USPTO) focused on women and inventorship. Recently, however, members of Congress asked the USPTO to consider a gender gap in patent practitioners, rather than inventors. This request is based on an article authored by Mary T. Hannon of DePaul University that argued that there is a formidable gender gap in individuals eligible for the patent bar, primarily based on the categories of technical background required to sit for the exam. Last week, the USPTO replied to the December letter—which was sent by Senators Mazie Hirono (D-HI), Thom Tillis (R-NC) and Chris Coons (D-DE)—citing statistics that found 29.22% of the 397 applicants that have taken and passed the registration examination since October 2019 selected the “Ms.” field on their applications and that, of the 1,937 applicants who have submitted applications electronically since October 19, 2019, 65.67% chose the “Mr.” salutation while only 34.33% chose “Ms.”

“Qualified women are unnecessarily excluded from membership in the patent bar,” wrote Mary T. Hannon in a recent law review article seen by Senators Mazie Hirono (D-HI), Thom Tillis (R-NC) and Chris Coons (D-DE), who promptly sent a letter to United States Patent and Trademark Office (USPTO) Director Andrei Iancu demanding answers. A scandal of epic proportions in 2020 if an agency of the executive branch is actively excluding women from the ranks of patent practitioners. But it’s just not true.

The patent bar exam is a multiple-choice examination made up of 100 questions. You will be given 3 hours to complete the first 50 questions and another 3 hours to complete the second 50 questions. The exam is on-demand and can be taken any time. The patent bar exam has recently been updated effective August 16, 2018, and the exam can be expected to be updated every year at least once. Thus, the patent bar exam has become a moving target. While it does not wildly shift overnight, or change in unannounced ways, gone are the days the exam would remain the same for many years.

“This is a mere change in form, not substance,” according to John White, principle lecturer in the PLI patent bar review course. “The PTO will start testing the current version of the MPEP, and stop testing the miscellaneous memos and the like that are currently tested. But all of those memos have now been incorporated into the new MPEP, so there’s no change of substance. Just a change in citations.”

You’ve passed the patent bar exam. Now what? We have heard that question too many times to count over the years as we have collectively spent over 50 years teaching patent bar review courses. With so many firms cutting back on, or eliminating training, and experience being necessary to get a job, we decided to create this Patent Practitioner Training 101, to bridge the gap for those new to the industry, and to offer a training solution to those firms in need of a ready-made program… At the end of this, course students should have a strong grasp on the day to day basics of patent practice, and a catalogue of examples and templates to draw upon for a variety of the most common and likely occurrences that real life will throw at a patent practitioner.