Voluntary CLE for Patent Attorneys and Patent Agents: What are the Issues?

By David Hricik, Mercer Law School

Curious for your comments on this.

The USPTO has promulgated a final rule. Originally, it was going to charge a fee every two years for practitioners to register, but it has backed off of that.  However, instead of having a fee and allowing a deduction for those who take 6 hours of CLE every two years — one hour of ethics, and 5 hours of CLE related to “patent law and practice” and one on “ethics” — it is going to create an on-line directory where practitioners who certify compliance with that CLE requirement will be listed by the Office.

The USPTO explained:

As noted in response to Comment 81 above, the USPTO has elected not to implement the proposed annual active patent practitioner fee at this time. In addition, under the Final Rule, completion of CLE remains voluntary. However, practitioners may be recognized in the online practitioner directory if they certify completion of six credit hours of CLE (five in patent law and practice; one in legal ethics) in the preceding 24 months

The rule implementing this final rule states in pertinent part:

(2) Biennially, registered practitioners and persons granted limited recognition may be required to file a registration statement with the OED director for the purpose of ascertaining whether such practitioner desires to remain in an active status. Any registered practitioner, or person granted limited recognition under § 11.9(b), failing to file the registration statement or give any information requested by the OED director within a time limit specified shall be subject to administrative suspension under paragraph (b) of this section.

(3)(i) A registered practitioner, or person granted limited recognition under § 11.9(b), who has completed, in the past 24 months, five hours of continuing legal education credits in patent law and practice and one hour of continuing legal education credit in ethics, may certify such completion to the OED director.

(ii) A registered practitioner, or person granted limited recognition under § 11.9(b), may earn up to two of the five hours of continuing legal education credit in patent law and practice by providing patent pro bono legal services through the USPTO Patent Pro Bono Program. One hour of continuing legal education credit in patent law and practice may be earned for every three hours of patent pro bono legal service.

The USPTO is to release “guidelines” to implement the rule in the near future “with a request for public comment on them.”  Those guidelines “will address the types of CLE courses that may qualify for recognition and the form of recognition for patent practitioners who certify that they have completed the CLE.”  (The Rule and comments to the proposed rule are here.). Some guidance is given, however:

Generally, the same types of courses and activities that qualify for CLE credit for a state bar will qualify for credit for purposes of the CLE recognition in the online practitioner directory, so long as it covers the appropriate topics. It is expected that these CLE reporting periods will not align with all state bar reporting periods, as they vary from state to state. Each CLE certification for the purposes of recognition in USPTO’s online practitioner directory should be supported by the completion of different CLE courses. In other words, practitioners may not use the same courses to certify to the USPTO more than once that they have completed the six credits of CLE.

So, given that if you take 6 hours of CLE over two years, you get to be listed on this registry, what issues do you see?

To me, putting aside the definitional issues of what is “patent law and practice,” the proposal creates an odd thing: it will cause only patent lawyers to be listed in this directory, not patent agents, unless patent agents think it’s worthwhile to do CLE to be listed on this registry.  That is, because all but two states (I think) require CLE for lawyers (but none do for patent agents), patent lawyers will get listed, but my instinct is that patent agents aren’t likely to pay a couple hundred dollars in CLE fees to be listed, one would think.

In that regard, though, others had raised a concern about the original proposal — a $100 discount off the now-rejected bi-annual registration fee would make no sense for patent agents — and in response the USPTO stated in the final rule announcement that it was going to provide free CLE courses, “thus alleviating the financial burden of obtaining CLE credits.”

That helps, obviously, but still means six hours of time over two years for patent agents.  Does that create a disincentive strong enough to not be on this registry?  Do patent agents get business that way anyway?

What other issues do you see? (Yes, it’s another sign of the destruction of American democracy, but in the comments address more mundane things, please!). Will insurance companies likely ask about compliance?  What about lawyers in states without CLE requirements — is this registry an incentive?

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

9 thoughts on “Voluntary CLE for Patent Attorneys and Patent Agents: What are the Issues?

  1. 7

    THANK YOU for these comments. I appreciate them.

  2. 6

    Before mandating or even making voluntary any CLE requirement, there should be some quality control mandate for CLE. 98% are just the worst. Mostly a nothing more than a practitioner doing it to put “I give CLE on this topic, I so smart” on their LinkedIn profile.

  3. 5

    To the title of this article – and specifically to the view that merely providing volunteered service in order to earn Continuing Legal Education credits, I have to seriously question whether the type of learning BY the practitioner in providing any such volunteer service the type of learning that the CLE program was a even meant to provide.

    I am all for volunteer services (and actively provide them – even in the COVID era), but I have a problem with confusing and conflating two very different goals with the commingling of service given and education received. There appears to be no check to prevent receiving credit for continued lackluster (or even poor) service given, and what lesson would the practitioner actually learn? That some noble Ends should justify even questionable Means?

    Don’t we have enough of that already?

  4. 4

    Thanks, everyone — this is really appreciated.

  5. 3

    While I might be interested in taking CLE courses, the cost is a significant factor and could lead to my retirement. I also question “(ii) A registered practitioner, or person granted limited recognition under § 11.9(b), may earn up to two of the five hours of continuing legal education credit in patent law and practice by providing patent pro bono legal services through the USPTO Patent Pro Bono Program.” Just how does an agent provide “pro bono legal services” without running afoul of state prohibitions against non-attorneys providing legal services. That would likely shut down the significant number of pro bono and reduced fee applications and prosecution that I already do for aspiring inventors who have a great idea and little money for a patent. Perhaps this is just another effort to get rid of those pesky independent inventors that big data hates so much.

  6. 2

    David,
    thank you for drawing attention to this development. As a member of a bar that does not mandate CLE, I would not be motivated by an indication on the list of registered practitioners that I had taken participated in a list of CLE courses. In more than 30 years’ practice as a patent attorney, no one has asked me about whether or not I attend CLE courses. My sole motivation in attending courses, reading blogs like this one and giving seminars is to learn what others have to say about topics relevant to my practice or my clients. Everything else is window dressing.
    Bob

  7. 1

    Notwithstanding any particular requirement for Continuing Legal Education. Is there not an overarching ethical requirement to provide competent legal service?

    Granted that the apparent baseline reasoning FOR having some type of measure of CLE may well be that very ethical ‘be competent’ driver, one may be able to argue that diligence outside of any structured CLE mechanism may provide for that competence, I can imagine other (more draconian, even if “legitimate”) mechanisms, such as having to qualify “from scratch” every ‘X’ number of years.**

    **given that the last time I checked, patent registration results were well below 50% for prospective candidates – candidates typically at the height of their legal and technical combination of knowledge – I have to wonder how the patent bar would react if that were on the table.

    1. 1.1

      Hi David,

      I disagree with the statement that “patent agents aren’t likely to pay a couple hundred dollars in CLE fees to be listed”. As a patent agent who does many CLE courses annually, I will have no problem with this. A CLE requirement for the Patent Bar makes sense – the question will be, how to satisfy it in a meaningful way. For patent agents who just want to be told what to do and regard themselves as second-class citizens, CLE might not make sense. But for patent agents who realize they practice patent law at the USPTO and PTAB, and actually in all states of the U.S., CLE is right.

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