Who gets to become a Patent Attorney?

by Dennis Crouch

The USPTO has released a new Request for Comments about changing the qualification rules to sit for the Patent Bar Exam (“Admission to the Examination for Registration to Practice in Patent Cases”) that are set forth in the General Requirements Bulletin (GRB).

To be clear, the proposals in this RFC are quite modest and narrow:

  • Allowing graduate degrees (Masters / Doctoral) in an accepted science/engineering field to count for qualification under Category A.
  • Adding a few additional degree majors to Category A. These are all majors where applicants have been regularly able to qualify for the exam under Category B.  The change here is designed to streamline the process.
  • Modifying the lab requirement of Category B so that it no longer needs to be 8 hours in the same field.  Thus, it could be 4 hours of physics and 4 hours of chemistry (both with lab).

[Federal Register Notice: 2021-05940].  Comments should be submitted via www.regulations.gov (PTO-P-2021-0005) by May 22, 2021.

I recently spoke with the USPTO head Drew Hirshfeld who sees the proposals here as primarily making the system more efficient and less cumbersome.  About 1/3 of recent applicants to register fall under Category B, and handling the paperwork for those applications it is a time intensive process for both applicants and OED.

Dir. Hirshfeld noted that bigger changes may come later, such as addressing design patents and computer science; and considering the role that the registration requirements may play with regard to diversity.   Eliminating the requirements altogether is really not even on the radar.

Bigger policy changes are unlikely before a new director is appointed by President Biden.

There has been a good amount of discussion regarding the artificial monopoly created by the GRB, and whether the requirements actually further American innovation.  Back in December 2020, Senators Tillis, Coons, and Hirono sent a letter to USPTO Director Andrei Iancu seeking information about how the Office sets is criteria for who gets to become a patent attorney.  Dir. Iancu responded just before leaving office in January 2021.

The proposed changes here are effectively identical to those proposed by Dir. Iancu in his Jan 19, 2021 letter.

My view: The proposals will incrementally improve the system, but really only at a minor level.

Who gets to become a patent attorney?: You may have been hoping that I would answer the question posed in the article title. It turns out that the answer depends greatly on your country of permanent residence.  Some require a background in science/engineering, others require a background in law, only a few require both.  In the US, a patent attorney is both a lawyers and trained scientist/engineer. However we also have patent law professionals known as patent agents who are not attorneys.

I won’t spell out the particular rules here because – as my post notes – they are in flux. But, I will direct you to the USPTO’s page titled Becoming a Patent Practitioner.

 

114 thoughts on “Who gets to become a Patent Attorney?

  1. 17

    My education is in mathematics. I qualified for the patent bar by the backdoor provision (enough credits in physics, some acquired by taking physics classes during law school). My math degree has proved extremely valuable to my practice. I use my knowledge of complex mathematical topics almost every day when dealing with new inventions. Even if the invention itself is not very mathematical, the way mathematicians analyze things is very similar to how a patent attorney should evaluate an invention to achieve the maximum claim scope. Physics is sometimes useful, but not nearly as much as math. I think at the very least, they should add mathematics to the list of degrees that qualify one to take the patent bar.

    1. 17.1

      I aways find it funny when the PTO holds STEM days when they really on allow STE to work there, oops sorry math.

    2. 17.2

      +1

  2. 16

    Slightly OT, but I would love to know who these companies are that are ACTUALLY and CURRENTLY outsourcing patent drafting to India.

    This is a serious allegation because these patents would be invalid under 35 U.S.C. 185.

    If this is something that is actually widespread (I see no evidence that this is the case– I have heard of companies EXPLORING doing this and nixing the initiative due to obvious risk), this needs to be exposed publicly.

    If the same company is enforcing these patents, this is also evidence of inequitable conduct, as they know the patents are invalid and are enforcing them anyway. Also, they did not disclose the outsourcing to the USPTO.

    So I am sorta calling BS on this without names.

    1. 16.1

      The language of Section 185 does not mention drafting of patent applications abroad. Rather, the provision bars the filing of a patent application in a foreign country without first obtaining a foreign filing license.

      1. 16.1.1

        Not sure I agree. The statute is pretty poorly worded, and “assisted another’s making” could be construed as drafting. Even if not a violation of 185 (didn’t bring this up to parse statutes), it is likely inequitable conduct and the unauthorized practice of patent law.

        “Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error, and the patent does not disclose subject matter within the scope of section 181.”

        1. 16.1.1.1

          Like what does “making” mean? Does it mean filing, or does it mean drafting? And does there have to be intent to file in the foreign country specifically? Admittedly, I have not done in-depth research on this subject. It would be a great law review article.

          1. 16.1.1.1.1

            What I DO know is that the intent of the provision is to prevent proprietary (specifically national security-related) information from being exported to other countries prior to filing. So I do not see why drawing the line at “filing” and excluding “drafting” from prohibited activities would be consistent with that intent.

            1. 16.1.1.1.1.1

              In 2006 or so, thbe PTO issued an advisory that said outsourcing searches violated the rule

              1. 16.1.1.1.1.1.1

                Interesting – you wouldn’t happen to have a link, would you?

          2. 16.1.1.1.2

            35 USC 185 refers to “making application”, not “making an application” or “preparing an application”. For example, refer to 35 USC 100, where reference is made to “an application”. As per the OED, application (n.) is “a formal request to an authority for something.”

            1. 16.1.1.1.2.1

              Intent may be construed based on headings.

              § 181. Secrecy of certain inventions and withholding of patent
              § 182. Abandonment of invention for unauthorized disclosure
              § 183. Right to compensation
              § 184. Filing of application in foreign country
              § 185. Patent barred for filing without license
              § 186. Penalty
              § 187. Nonapplicability to certain persons
              § 188. Rules and regulations, delegation of power

              1. 16.1.1.1.2.1.1

                This is consistent with my argument that the USPTO is concerned with “inventions” and not “applications”

              2. 16.1.1.1.2.1.2

                BIS controls the export of information necessary to any drafting, and dictates that only upon the obtaining of the export license, may the information be allowed to go overseas.

                It is a fait acompli that one may not outsource the information necessary to obtain the item that is to be the vehicle to obtain the export license necessary to export the information in the first instance.

                THIS is not rocket science (although, quite clearly, information about rocket science certainly falls into the BIS net).

                1. Sort of a banal statement anon. The consequence of exporting the information is material.

                  Clearly, if this is still occurring, the consequences of violating BIS rules are not sufficient. Does anybody even know what the consequences are, or if they are even enforced?

                  If the patents are deemed invalid, this could actually put a stop to this behavior.

                2. It is not banal.

                  It also is not a consequence of the rules themselves being insufficient.

                  It IS a consequence of lack of enforcement.

            2. 16.1.1.1.2.2

              You are focusing on the definition of “application,” not the definition of “making.” Making means to “create or prepare something.”

              1. 16.1.1.1.2.2.1

                There are definitely arguments one can make both ways.

                1. Also look at section 182:

                  “35 U.S. Code § 182 – Abandonment of invention for unauthorized disclosure

                  The invention disclosed in an application for patent subject to an order made pursuant to section 181 may be held abandoned upon its being established by the Commissioner of Patents that in violation of said order the invention has been published or disclosed or that an application for a patent therefor has been filed in a foreign country by the inventor, his successors, assigns, or legal representatives, or anyone in privity with him or them, without the consent of the Commissioner of Patents. The abandonment shall be held to have occurred as of the time of violation. The consent of the Commissioner of Patents shall not be given without the concurrence of the heads of the departments and the chief officers of the agencies who caused the order to be issued. A holding of abandonment shall constitute forfeiture by the applicant, his successors, assigns, or legal representatives, or anyone in privity with him or them, of all claims against the United States based upon such invention.”

                2. I posted something about section 182 below (awaiting moderation). Even though this deals with secrecy orders specifically, it provides evidence that these provisions concern themselves with disclosing inventions abroad, not just with filing.

    2. 16.2

      I worked at a company that had hundreds of, if not over a thousand, apps per year drafted overseas. None of the applications included subject matter that was export controlled. Nothing illegal or unethical about it.

      It’s been going on for 20+ years now.

      As others have noted, 35 USC 185 has no bearing on the issue, and you’ve completely misread it.

      Take a deep breath and maybe a nap. You’ll feel better.

      1. 16.2.1

        Color me shocked.

        /s

        1. 16.2.1.1

          It’s a fairly common practice amongst large filers. Maybe it’s not in your mom’s basement where you live. You should get out more.

          1. 16.2.1.1.1

            What are the company names?

            1. 16.2.1.1.1.1

              I won’t mention any current names, but I will say (now that they’re “out of business” so to speak) that Motorola had a patent drafting operation in India. When they packed up and left my former employer considered hiring them.

              Applications being drafted overseas is common practice. Many years (15+) ago I did work for a company on the European continent that had all of their applications drafted in Ireland. They were sent to us in the U.S. for review and clean up and first filing in the U.S.

              None of this is new. It’s been going on for 20+ years. You seem to be living in a cocoon. You should get out more too.

              Sheesh.

              1. 16.2.1.1.1.1.1

                No need for personal attacks. Sheeesh to you too. I have heard that companies are doing this, and have had clients who have considered it (and thought better of it), but I have never actually worked with one of them. And just because it has been going on doesn’t make it OK.

              2. 16.2.1.1.1.1.2

                You being glib and snarky is no substitute for either being on point or noticing the nuances already made in comments on this topic.

                It just shows you to be an arse, and very likely still bu ttsore from the fact that any time a Liberal Left mouthing point comes up, you lose the ability to apply anything remotely close to critical reasoning.

                Say, “La vee.”

  3. 15

    I’m always amazed at the number of tools that comment on this blog. Not very useful tools, either. Ironic, given the subject matter.

    The request for comments has little (if anything) to do with reducing quality of patent bar applicants, so you can all unbind your pale undies around the idea that brown people might become qualified because they have a relevant degree that isn’t listed on the ridiculously narrow and outdated Category A list (also, one thing I can thank the previous administration for is making it more obvious who who the pale undie bundle brigade members are).

    With the exception of proposal 3, the other proposals merely bring in degrees of people who ALREADY qualify on a regular basis into category A. Proposal 3 also seems unlikely to result in any less quality of patent bar applicants than those that qualified in Category B before, since it still requires the same level of science education, but allows for classes in a combination of science fields rather than just 1. It’s important to note that the 8 hours of science classes is only a part of the Category B requirement, so your k knicker knots should be untied white away.

    I do appreciate the comedy some of you tried to provide with the lawyers-only suggestions. So funny. And sad. PTAB and Fed. Circ. judges are exclusively attorneys, with the PTAB judges having slightly more science background. That’s turned out swimmingly. Also, I’ve met patent agents far more qualified than many patent attorneys I’ve met. But I get it. Protect the pale undie bundle brigade.

    I guess I have little objection to requiring practical training prior to any practitioner being able to practice solo, but it shouldn’t be required to qualify to be listed on the patent bar. Such a requirement would not only be a nightmare to keep track of at the USPTO (y’all want practitioner fees to cover that?), it would be unnecessary. I’d suggest state bars deal with that, but they only deal with lawyers, and if they dealt with agents, they might be forced to recognize that agents should legally be allowed to partner with attorneys in firms.

    For those of you concerned about how much less lucrative your patent career has become, you need to look at a much larger picture. Yes, drafting is being outsourced outside of the US (and, in my opinion, that should be cracked down on–but lots of lawyers seem to think it ok to use it as a cost cutting tool despite that it seems likely to violate IP export laws, so it must be ok, right lawyers?). Also, there are market factors at play around how much money can be squeezed from a company before it dies, so don’t bother with long term investments like patents (oh, and thanks to the PTAB and CAFC, it’s a pretty risky investment too!) I hate to say it, though, your career doesn’t really factor much into the public good. Yes, my career might be less lucrative if more people can do it. But I can guarantee you that there are plenty of innovative concepts that are never pursued in the patent system because it’s not accessible/affordable. (Another funny joke was the “if those ideas were so valuable, existing attorneys would be clambering for them!” one. Hahaha! You don’t make money off of pro bono work, and there are some serious ethical questions around being compensated based on future value of a patent. Fun times.)

    I’ll probably be ok, though, because I am excellent at my job, and I look forward to training the new, diverse people you are all afraid of to be good at their jobs, too. The world will be a better place when the pale undie bundle brigade has shuffled off to their assisted living centers where their misogyny and racism can be shrugged off as the effect of cognitive decline.

    1. 15.1

      “Not very useful tools, either. Ironic, given the subject matter.”

      I disagree, Alanis. It is actually highly appropriate that the tools be not useful, given the extremely low bar for utility in this field.

      1. 15.1.1

        Lol. None of the tools disappoint. For what it’s worth, Ben, I used the word “ironic” correctly. I’m always surprised by how useless these tools are given their alleged skill and knowledge. But thanks for catching the 101 reference.

    2. 15.2

      Brown people….?

      I think that you are inserting your own ISM there.

      1. 15.2.1

        You read the comments like an examiner reads art. Your cherry picking skills are superb. Your interpretation skills… Not so much.

        1. 15.2.1.1

          What is exactly called out for “interpretation” for the (even of only for argument, admitted to be ‘cherry-picked’) choice of yours to insert the ISM?

          Instead of the instant snark, a better response from you would have been at least an explanation, or better yet, a withdrawal of that “cherry-picked” comment.

          Doubling down on the snark is simply not an effective response from you.

          Try again.

          1. 15.2.1.1.1

            I’m sorry your feelings are hurt. But I will explain because you clearly can’t get past the cherry picking and interpretation deficit. You read my post and got all offended that I might have called you a bad person. But if you had fully read all the comments on this article, including by other people who are obviously concerned about melanin levels for no reason whatsoever, you would realize that maybe I’m talking about someone else. But you had to get all offended, probably because you resemble at least a few of my remarks, but also because it’s just apparently what you do as a pale undie bundle brigade member.

            Also, I’m not actually sorry. There’s nothing to apologize for. The comments section here is nothing but snark. You’re just mad it isn’t always a thought-free safe space for you.

            1. 15.2.1.1.1.1

              Odd – not sure why you would think that my “feelings are hurt.”

              Are you projecting as a last gasp mechanism?

              There is zero indication from me of any indication that I expect any type of “snark-free zone.”

              However, when YOU provide ONLY snark and not content, are called out on it, and given a chance to provide some content, and then double down, why would YOU expect to not be called out on it again?

              Feel free to add some (any) content at any point here…

    3. 15.3

      A woke one. Anyone disagreeing with him is an ‘ist. The Enlightenment is weak with this one.

    4. 15.4

      The l i e here by the ideologue ghostndragon is that lowering the bar to the patent bar will increase the number of patent filings. The fact is that right now many inventors are abandoning patents and companies too because patents are so difficult to enforce in the USA.

      This is a misdirection. The problem isn’t that there are all these great ideas that would be patented if the cost was 50% less. The problem is that patents can’t be enforced.

      Furthermore, the USPTO continues to raise their fees and maintenance fees which continues to put a strain on the system.

      The idea that flooding the system with lots of low cost people on the front end is somehow going to help anything is ludicrous.

      1. 15.4.1

        Those are all excellent points.

        But you forgot about one *important* one: under Herr Biden’s edicts, “equity” is a necessary buzzword, and you just have to have the virtue signaling going on.

        1. 15.4.1.1

          So on brand. So off topic.

          1. 15.4.1.1.1

            Except not.

            Your attempt to control the narrative, though, is noted.

            (psssst: you don’t control the narrative)

      2. 15.4.2

        Your pale undies might be too tight. You forgot that you already replied to something you didn’t actually read.

    5. 15.5

      “Yes, drafting is being outsourced outside of the US (and, in my opinion, that should be cracked down on–but lots of lawyers seem to think it ok to use it as a cost-cutting tool despite that it seems likely to violate IP export laws, so it must be ok, right lawyers?”

      Why is this something that is constantly shrugged off? These companies need to be named and shamed, and the attorneys responsible for these decisions need to be disciplined. This is inequitable conduct, plain and simple.

      1. 15.5.1

        Violating export control laws is more than merely inequitable conduct.

        1. 15.5.1.1

          Agree, but the alleged bad actors (if they exist) don’t seem to care about export laws.

      2. 15.5.2

        “Why is this something that is constantly shrugged off?”

        Because it’s not an issue. Nobody is sending export controlled subject matter overseas without a license to do so in order to have patent applications drafted.

        “This is inequitable conduct, plain and simple.”

        No it’s not. You clearly don’t understand what is, and what is not, inequitable conduct.

  4. 14

    At its best, patent drafting and prosecution is a marriage–a perfect union–between the technical and legal. At its worst, a patent application is a technical manual or scientific paper divorced from legal and business realities, or a hollow, formalistic legal document blind to the implications of technical aspects.

    To protect the public at-large and make efficient use of government resources (e.g. to ultimately keep patent fees down and the patent process accessible), one who is engaged in providing such services must be required to have requisite expertise.

    In Canada, for many years, we’ve had an experience requirement (now 2 years) + stringent examinations to qualify to practice at the patent office. However, like the US, there was no “profession” per se. We are now moving towards regulating the profession, similar to the UK and EPO. The College of Patent and Trademark Agents is set to open this year. Its interaction with the law societies will be interesting, and it isn’t wholly clear if there will be arrangements to reduce the burden of dual qualification on certain professionals.

    With the need for at least some technical education becoming ever more important to operate effectively in society, I see the hybrid solicitor/barrister-engineer/scientist becoming more important overall. Perhaps even the “superior” profession eventually (100 years out?).

    Once the profession moves beyond the embryonic stage, it is inevitable that a rational and standardized method of qualification will prevail. Personally, I hope we don’t reduce it to more university education (e.g. as has happened with the law, medicine, and other professions) and instead retain practical experience as paramount.

    Qualification will inevitably vary and be suited to local conditions. However, I wonder if an experience requirement and/or more substantial examination as is common elsewhere, in place of university education, may ultimately be better for the American public and also improve accessibility/equity.

  5. 13

    If they are going to look at requirements to sit for the exam, the inquiry needs to address a very basic question. Here’s an excerpt of 35 USC §2(d)

    “[a person admitted to the exam shall be] possessed of the necessary qualifications to render applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the office….”

    There are two phrases here: “valuable service” and “other business.” What exactly is valuable service? Is prosecuting patent applications the only thing because thats what the engineering/science degree authorizes. If prosecuting applications is the only thing why is other businees even in the law?

    I’ll tell you whats both valuable service and other business, finding evidence to support applications, commonly called searching for prior art. When searches are done patents can withstand 102 and 103 challenges, when they are not done you get IPRs.

  6. 12

    How about requiring at least five years of actual real-world experience in engineering or science?

    And the same for patent examiners.

    1. 12.1

      Re: Examiners, you could probably get a substantial improvement by merely requiring either degree or some pittance of experience to match examination field.

      “Got a degree including the word ‘engineering’? Then we’ve got an examining seat for you in Operations Research or Cryptography!”

  7. 11

    Get rid of agents. Nobody without legal training should be practicing before a government agency. Let anybody with a law degree practice before the office.

    1. 11.1

      Lol wut? Patent applications aren’t exactly rocket science or the case of the century to prosecute. And all that does is further licensure in society making the inequality even worst (by a tiny degree) than it is today. Literally AAA JJ the ostensible liberal: LETS INCREASE INEQUALITY U GAIS ITLL WORK OUT SUPER WELL.

      1. 11.1.1

        WTF are you talking about?

        1. 11.1.1.1

          Somehow all these calls for a change are supposedly about “equity” and making the qualifications available to women and minorities and to make obtaining patents more affordable to lower income people.

          Patent costs have dropped about 60 percent in the last 20 years. The patent system is in a free fall.

          This is about the acting director wanting publicity for himself and SV is elated as it will make patents seems even cheaper and less quality than they do now.

          1. 11.1.1.1.1

            I’m not calling for that. There’s no need for the “patent bar.” We don’t require anybody practicing before the FDA, the IRS, the EPA, etc. to be “registered.” Somehow all of those agencies manage to function without an elaborate system of screening the attorneys who appear before them. It’s also unnecessary for the PTO to be doing so.

            1. 11.1.1.1.1.1

              Maybe you are right AAA JJ.

              I probably would be fine with the only qualification is that you are a licensed US attorney in some state or territory.

            2. 11.1.1.1.1.2

              There’s no need for the “patent bar.”

              I would beg to differ — if the several years in a row LESS THAN 50% PASS RATE is any indicator.

              If your path were chosen, then the incoming attorney size would be more than double, with people who cannot pass a multiple choice test.

              Perhaps you are suffering from a sense of false equivalency in thinking that just because other specialty areas do not have the type of rigor that this specialty area has, that they ‘must be the same.’

              Perhaps instead, we should be wondering why these other specialty areas do not have this type of rigor.

              Which famous judge was it that remarked that patent law is by far the most difficult of the specialties of law?

              1. 11.1.1.1.1.2.1

                “Which famous judge was it that remarked that patent law is by far the most difficult of the specialties of law?”

                Insert infinite eyeroll emojis here.

                If it’s the most difficult of the specialties of law, why does it allow people with no legal training (i.e. patent agents) to practice it?

                1. Because those it allows passes the test that keeps out more than 50% of those attempting.

                  When you choose to ‘belieb’ something, is your ability to reason always such a casualty?

                2. The idea that passing a multiple choice exam demonstrates competence to practice “the most difficult of the specialties of law” is pretty ridiculous thinking. Even for you.

                3. And yet, people do not pass.

                  How does your “logic” process that?

                  Oh wait, it does not.

                  Maybe you can bank on some of those infinite eye rolls

                4. “And yet, people do not pass.”

                  So? How does that prove that the people who do pass the multiple choice exam are competent to practice “the most difficult of the specialties of law”?

                5. Wow – are you really that dense?

                  You want to eliminate something that — more than apparently — separates a very large number of otherwise smart (eng and law degrees, typically) from the ability to practice.

                  Your “Belieb” really is blocking your ability to reason.

          2. 11.1.1.1.2

            Is there a reference for the 60% reduction in cost you cite? I would be interested to see the evolution of patent drafting/prosecution costs over the years.

  8. 10

    I wonder how this fits in with the reality that so much of the US work is now being done by Chinese and Indian patent people and filed by US agents/attorneys.

    Seems to be rather than broadening the eligibility that the USPTO should clamp down and require more training and tougher tests.

    (But I am also a realist and now that we are just one or more swings of the a xe from the likes of Chien and Lemley before the patent tree falls.)

    1. 10.1

      clamp down and require more training and tougher tests.

      My understanding of the current pass rate (for those WITH engineering background and – typically – law backgrounds as well) remains below 50%.

      See link to uspto.gov

      You are talking about Type A people typically already with dual degrees.

      Further, this is not the first time that you have alluded to the potential for oversees drafting and then being filed by a US practitioner.

      I do hope that you still have to abide by BIS regulations, and if any practitioner does not, the penalty is still loss of all related patent rights.

      I tend to think that you are posting your feelings – unconnected to any actual data (let alone anecdotal incidents).

      1. 10.1.1

        anon, these are huge international corporations.

        BIS regulations are, of course, adhered to.

        The only reason the bottom hasn’t fallen out of the patent system is the that the Chinese have decided that patents are necessary for innovation.

        1. 10.1.1.1

          You are much, much too quick to make that assertion.

          As you SHOULD recall, an export license from the USPTO is available ONLY AFTER filing.

          As to “The only reason the bottom hasn’t fallen out of the patent system is the that the Chinese have decided that patents are necessary for innovation.” – that’s an entirely SEPARATE point and has nothing to do AT ALL with any decision to ‘off-shore’ any writing of US patent applications.

          Of course, if the innovation does occur off-shore, then you are NOT off-shoring the writing (as was your initial contention).

          1. 10.1.1.1.1

            anon, that’s a good point.

            Several things. Some of the innovation occurs off shore. Almost all the work is done by international teams.

            Another thing is that what some are doing is making the first filing in China and we become translators.

            It is ugly.

            1. 10.1.1.1.1.1

              Anything actually off shore is legitimately out of the scope of the point at hand (not to say, that such is ‘free and clear,’ as other Sovereigns have their own gate-keeping laws).

              Keep focus on what ‘off shoring’ means, and when it can actually be employed under BIS.

              Mere translating of something legitimately under a separate Sovereign MAY reflect a different problem of “hollowing out,”** but is NOT at point here.

              Note: I was on our firm’s panel that looked into this over a decade ago. While it has been a small number of years since I actively managed any BIS changes, I am pretty sure that the official position of the US has not changed.

              **Prior to law, I was in management and was active in international sourcing – so the understanding of what “hollowing out” means has more depth with me than most attorneys.

              1. 10.1.1.1.1.1.1

                … the pre-law management experience is one of the reasons why I was brought onto the firm’s panel.

  9. 9

    I did not see any consideration of whether the USPTO Pro Bono program has an impact on providing access to patents to underrepresented categories of inventors. Maybe the managgement of this program is too decentralized to permit collection of data.
    I think there are also clinics organized by laws schools that could help underrepresented categories of inventors, although the federal government has probablly no influence on thse clinics.

  10. 8

    As ever, the problem with handing out licences to practise is that “It takes one to know one” by which I mean that it is not at all easy to assess competence in drafting i) an independent claim ii) a supporting specification iii) reasons why an issued claim is invalid and iv) reasons why an issued claim is infringed.

    And yet, the public is entitled to expect that a person possessing such a licence is a “safe pair of hands” by which I mean somebody competent enough to drive through that which the client deserves, namely the achievement of a deserved full scope of protection.

    Who else but qualified and experienced patent attorneys are competent to pronounce on the competence to practise of would-be patent attorneys? A “guild” system, operating as it should, protects not only guild members but also the public .

    1. 8.1

      Guild systems – certainly not just patent attorneys, certainly not just attorneys as a larger class, and certainly not guilds in the classical sense — simply have shown themselves to be to prone to NOT looking out first and foremost for the general public.

      This lack is simply a natural thing – and exemplifies an entirely Rational Actor mode, that while indeed rational, is nonetheless NOT optimal for the purpose of the greater good as a primary beneficiary.

      This is easily seen (especially in regards to innovation) with the original ascendancy of the US patent system that made the US the gold standard (until we let Efficient Infringers start to denigrate the system).

    2. 8.2

      When you have a medical malpractice claim how do you know the attorney you hire is competent to handle such a case? If you’re being audited by the IRS how do you know the attorney you hire to defend you is competent? When you have a property dispute with a neighbor how do you know the attorney you hire is competent to handle it?

      I could go on.

      1. 8.2.1

        That’s a really good point: how do I know whether (say) the surgeon about to operate on my knee or my brain is competent to do the job?

        One approach would be to delegate the rating job to social media. Another would be to have some sort of route to a Certificate of Competence to Practise the profession of surgery.

        Do we agree, that those who aspire to be a lawyer or a doctor should not be able to practise their profession until they have acquired a Practice Certificate? I assume so.

        Are qualified lawyers fit to practise brain surgery? Do we agree, that a Practice Certificate in one profession is no qualification to practise a different profession? I assume so.

        Where we disagree is whether as a patent attorney one is a member of a profession different from that of attorney-at-law, a profession in its own right, having its own professional body, disciplinary proceedings etc and unique route to qualification. The rest of the world thinks so, the USA not.

        You might say that it makes no difference. But my experience tells me that it does.

        1. 8.2.1.1

          One approach would be to delegate the rating job to social media.

          Well that’s pretty much brain dead.

          1. 8.2.1.1.1

            Another approach would be to require candidates first to qualify as an attorney at law and then, after that, pass an automated multiple-choice answer exam paper. A deficiency of that approach though is that it doesn’t test whether the candidate is or is not able to see the wood for the trees. By that I mean, identifying out of a client’s presentation what are the essential features of the inventive concept that will be the subject of the contemplated patent application.

            Some candidates have this ability, others not, and you can’t teach it to those who lack it. You have to test for it. Or else foist knowingly on the public a cohort of practitioner that is incompetent to practise.

            1. 8.2.1.1.1.1

              ?

              Or not.

              Are you throwing feces at the wall again to see what sticks?

  11. 7

    Fed Cir appointees should be required to take and pass the patent bar, augmented with this short essay section:

    Define “abstract idea”.

    Judge Plager of the Federal Circuit wrote concerning patent eligibility “The Emperor Has No Clothes”. What did he mean?

    You represent a software start-up company looking to raise money. They have a novel, non-obvious idea and want you to file a patent application. They want to compete with Apple and enjoin them if and when they infringe. Discuss how you would advise the client, including any problems that might arise with that strategy.

    What does “by securing” mean in the Patent Clause of the Constitution?

    The US and China have patent systems. Which is better, and why?

    Is a patent property if the statute says so? Discuss.

  12. 6

    Reading all this, I am reminded of that old joke about the tourist from the USA, driving a hired car in rural Ireland and asking a bystander to tell him how to get back to Dublin. The answer “Oh dear. Very unfortunate. You know, this really is not the best place to start from. You would be much better starting from somewhere else”

    So, given a fresh start, a blank sheet (like Europe had in 1978), what would you choose as the route to qualify as a patent practitioner, with a Certificate of Qualification to Practise” in which the public could place high confidence?

    1. 6.1

      That old joke is even funnier than you might imagine – coming from you and your propensity for “here, wear my eyeglasses, they work for me.”

    2. 6.2

      It is often the case, that the old ones are often the best, isn’t it, anon.

      Also with patent attorneys, I find.

      1. 6.2.1

        No. Especially those that have been around the same block for forty plus years and are more interested in pushing things like EPO Uber Alles.

  13. 5

    The degree requirements are dumb. “You have to have one of X degrees, and then that degree enables you to practice in absolutely any technology area.” A system fundamentally based on trusting practicioners to know where they should practice should go ahead and trust practicioners to know where they should practice.

    Not to say that anyone should be able to practice.

    It seems like the qualification should be based on what (from what I’ve heard from you guys) actually matters: experience prosecuting patents.

    Perhaps the system should take a note from the engineering profession, and include a time-in-professional-practice requirement to be admitted to the patent bar. Rename the patent bar exam something like “The Fundamentals of Patents Exam”, and give people who pass the exam a certificate that allows them to present themselves as trainees to employers. Require them to practice under a registered practicioner for a number of years, and then admit them to the bar. Include a second, harder test after the time-in-practice requirement if you like.

    Such a system would continue to constrain the number of practicioners (thus keeping extant practicioners and their wallets happy) in a way that is meaningfully tied to their ability to do the job.

    1. 5.1

      I like this idea in theory, but knowing business and firm interests, this period of training would be an excuse to exploit these trainees who need the training to get registered.

      1. 5.1.1

        “this period of training would be an excuse to exploit these trainees who need the training to get registered.”

        That’s a reasonable concern, but it doesn’t stop either Engineering or Medicine from using such exploitive systems. (Though I’d agree that there is probably more on the line with the work of a Structural PE or an Internist than with a patent prosecutor).

        Along those lines, considering the downsides of a time-in-practice requirement, it’d almost certainly increase the cost to an inventor of getting a professional’s help (like it does with the PEs and Internists). That could plausibly outweigh the benefits of protecting inventors from hapless prosecutors.

        1. 5.1.1.1

          could plausibly outweigh the benefits of protecting inventors from hapless prosecutors.

          How much of ALL of this can be reasonably traced to that problem?

          (I recognize that you likely have no answer – but the question bears asking because you appear to believe that such is a critical driver here)

        2. 5.1.1.2

          …as opposed to protecting inventors from hapless patent examiners….?

      1. 5.2.1

        Seems like they’d be a tad bit more interested in “stakeholder” input on this matter than “non-attorney employee” input.

        Or any matter, come to think of it.

        1. 5.2.1.1

          I chuckle as I am reminded of 6’s ‘education series’ on why examiners are no better off than indentured servants.

        2. 5.2.1.2

          The patent bar, like most groups of licensed professionals, still operates under a guild mentality. Hence the strong opposition by “stakeholders” (both inside and outside the PTO) to any change that might allow more otherwise qualified people into the system.

          1. 5.2.1.2.1

            There certainly is more than just a small degree of truth to that.

    2. 5.3

      >>It seems like the qualification should be based on what (from what I’ve heard from you guys) actually matters: experience prosecuting patents.

      Ben took that right from his policy sheets.

      No, Ben. Education matters and spending time understanding science matters. The people in my firm typically have a MS or Ph.D. in science and have spent 10+ years studying science. That is the type of experience that makes good practitioners.

      We’ve seen the type of ridiculous opinions that come from the CAFC judges that know nothing about technology or science. We should tougher up the requirements if we want higher quality patents.

      The patent firms with the highest quality ratings also have high standards for science training.

      What what the standard response is from the policy sheet. I guess I will find out.

    3. 5.4

      Plus, who has said this:

      >>It seems like the qualification should be based on what (from what I’ve heard from you guys) actually matters: experience prosecuting patents.

      My memory is that almost everyone that does this for a living has said that a strong science background is a must. But nice obfuscation Ben. You get a +1 for clouding the issue and making false claims.

      1. 5.4.1

        “Plus, who has said this:”

        I could be wrong, but I think I’ve seen a sentiment of ‘new practicioners know nothing and have to be trained for a few years before they’re worth anything’ repeatedly expressed here and elsewhere.

        If that’s true, it makes sense to protect inventors from people whose sole qualifications are holding an engineering engineering degree and passing a multiple choice exam.

        1. 5.4.1.1

          So you are doubling down and pretending you don’t know the difference between a necessary and sufficient condition.

          Another +1 for the job rating for the day.

          1. 5.4.1.1.1

            My best guess at the meaning of your sufficient vs. necessary framing (since you chose brevity over clarity) is that you view having a degree as a necessary condition. Sorry if I’m wrong.

            So would you be in favor of a degree + time-in-practice requirement? I would be happy with that as an improvement over the current system.

  14. 4

    “…and considering the role that the registration requirements may play with regard to diversity…”

    For those of us who live in the real world and not in the academy, what does this mean in plain English – that requirements should be waived for people with a melanin content above a threshold level in their epidermis, or who have two X chromosomes?

    I don’t know if licensing of practitioners is desirable or not. Once upon a time, the PTO licensing exam included a claim drafting exercise. It bore no relation to the practical realities of claim drafting; maybe that’s why that section was dispensed with over 20 years ago in favor of more multiple choice questions. But the current questions test nothing of claim drafting skill. So I am doubtful of the PTO’s ability to ensure quality representation through an examination. And on the other side of the coin, there are many patent litigators who are not licensed before the PTO.

    If there *is* going to be an examination, it should be equally rigorous for all, and should constitute an attempt to ascertain the candidate’s facility with patent law and practice. If that means that fewer (or more) people having a particular skin color/eye shape/sexual characteristic are admitted to practice than would otherwise be the case, so be it.

    1. 4.1

      It means – in plain English:

      “Count me in on virtue signaling.”

      or…

      “The equity (versus equality) mandate is being put into effect.”

    2. 4.2

      This is really a question about national innovation policy.

      One basic question is whether the current structure of patent attorneys/agents is the best way to promote and inspire American innovation while also maintaining an orderly property rights system. How many potential innovations have been lost to society due to a lack of access to a patent attorney?

      1. 4.2.1

        That’s just it — this is a Liberal Left TOKEN while the amount of innovation protection lost (due to Supreme Court led) judicial re-writing of patent law and the propaganda efforts of Efficient Infringers dwarves ANY “ISM” factor.

      2. 4.2.2

        Have any great innovations actually been lost for that reason? I mean, if they are in fact great, wouldn’t patent attorneys/agents be falling over themselves to get those clients on board?

        And I’m not sure how an innovation can be “lost” simply because it doesn’t end up being patented. The idea itself still exists of course. Unless perhaps, someone comes up with a supposedly great innovation, but for some reason doesn’t get it patented, and then—out of pure spite I guess?—keeps it completely secret and takes it to the grave without anyone else ever learning of it. But that scenario would seem a little farfetched.

        And everyone knows the PTO itself and other groups like VLA have pro bono invention clinics. So are those still not sufficient? And if so, is that claim based on any evidence or just conjecture?

      3. 4.2.3

        This flies in the face of the quality drum that was played as a reason to pass the AIA and IPRs.

        So now the argument is we need a flood of new less qualified people to write more patents, so that we can tougher up those IPRs to get rid of poor quality patents.

        Sure.

        1. 4.2.3.1

          … you were not supposed to make that connection, because, here, “equity” is the underlying buzzword.

      4. 4.2.4

        I don’t see how your answer relates to the statement “…and considering the role that the registration requirements may play with regard to diversity…”

        Are you asserting that because of their skin color or some other characteristic, certain people don’t have access to patent counsel, and therefore the requirements for who can serve as patent counsel should be changed? If so, I don’t see how the proposed solution fixes the putative problem: access to patent counsel is not dependent on “race” or gender. It may be dependent on geography, as there are higher concentrations of patent practitioners in urban areas than in rural areas. And as a practical matter, it may be dependent on income, as most patent practitioners do what they do in order to make a living, but maybe some provide pro bono services. That’s not going to help with PTO fees, though.

        Anyway, that’s just conjecture on my part about what it is you’re trying to suggest. If you have a point to make, you should make it.

        1. 4.2.4.1

          I completely agree with Atari Gender-Specific-Identified.

          Better aim please with the virtue signaling.

  15. 3

    Shouldn’t this be titled, “Who gets to become a Patent Practitioner?” The issue being considered is whether someone is qualified to take the Patent BAR exam. That’s based on their technical education — whether they’re also an attorney or not isn’t relevant. Patent agents get sort of glossed over with a single sentence in the above.

  16. 2

    Never ends.

    So would this allow people that currently don’t qualify to qualify? And, if so, what is that class of people?

    And would recommend tightening the requirements not loosening the requirements and putting the same requirements on the judges at the CAFC retroactively.

    1. 2.1

      I’m always confused about this proposal for CAFC judges. AFAICT, some of the same people (I don’t presume to know if that includes present company) making the proposal also seem fine with various decisions rendered by lay judges and lay juries. But those groups—especially the latter—typically have even less engineering and science training than your average CAFC judge. And then you have the PTAB, which is composed of specialist judges. But again, those same people don’t seem to like a lot of PTAB decisions. So the proposal appears to me as fairly inconsistent.

      1. 2.1.1

        Not if you consider the role the CAFC is supposed to play. They are supposed to be making patent law predictable and understandable–workable.

        The patent judges running the IPRs were picked to burn down the system and the IPRs themselves were structured to favor the petitioner in at least there is no longer a presumption of validity at the PTAB.

        So, and actually there already is in the statute or in the comments statements that the CAFC should be filled with people that can understand science.

  17. 1

    Eliminating the requirements altogether is really not even on the radar.

    What would be the reasoning for doing so?

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