Small Changes to Tech-Background Requirement to become a Patent Attorney

by Dennis Crouch

All of us who represent clients in patent cases before the USPTO share a common background.  We all have a background in science or technology and we have all passed the registration exam (and paid the accompanying fees).

The USPTO offers three ways to show sufficient background in science or technology:

  • Category A: A university degree in science or engineering;
  • Category B: Sufficient university coursework in science or engineering; or
  • Category C: Sufficient practical experience in science or engineering.

One problem: It seems that every year I have a law student who has a science or engineering degree that does not qualify in the list of appropriate Category A degrees (bioengineering; or a PhD in Chemistry). In addition, that student might not satisfy Category B either because of the stringent requirement of two in-sequence lab courses in either chemistry or physics.  At times, my students have taken concurrent science class while in law school to make sure they qualify; others have taken the requirement as a sign that patent law is not the right field for them.

One Solution: The USPTO has now finalized a set of rules that will help ease this process for my students, while still endeavoring to ensure that all patent attorneys and patent agents have a solid tech background.

[NEW RULES]

The basic changes:

  1. Expand the majors accepted under Category A.  The PTO took a small step here and basically only added majors that basically always qualify under the old Category B.  These new degrees: aerospace engineering, bioengineering, biological science, biophysics, electronics engineering, genetic engineering, genetics, marine engineering, materials engineering, materials science, neuroscience, ocean engineering, and textile engineering.
  2. Allow post-bachelor degrees (Masters or PhD) to count under Category A, so long as the coursework shows acceptable technical and scientific training.
  3. Modify the Core Science Requirement for Category B.4 to allow non-sequential lab courses in any combination of chemistry, physics, or biology.

These changes are taking effect immediately.

6 thoughts on “Small Changes to Tech-Background Requirement to become a Patent Attorney

  1. 4

    The end goal is important; assuring that lawyers demonstrate capabilities suggesting the likely ability to comprehend and compare potential inventions that they may encounter in practice.

    It seems to me that it’s an extension -in principle- of a bar exam, without the rigor or neutrality of an actual test.

    Wouldn’t a comprehensive test for exceptional scientific literacy be handy qualifying option for (as noted) foreign qualifiers, the self-educated, or the esoterically experienced?

  2. 3

    Does the expansion also cover qualifications for examiner hiring?

    1. 3.1

      . . . and for CAFC membership?

  3. 2

    At last! My American Ph.D. will qualify me retroactively 20 years. (I have a British B.Sc. and had a tense time jumping through hoops to get in as a special case by showing that my B.Sc. is as good as an American BS.) They still have not directly addressed foreign qualifications. Maybe the hoop jumping is good for one’s character.

  4. 1

    About time they recognized materials science and engineering. No respect…

    1. 1.1

      I’m guessing most could get in already under the 2 science labs in sequence or whatever.

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