New Rules for Registration of U.S. Patent Practitioners

On June 24, 2004, the USPTO published "Changes to Representation of Others Before the United States Patent and Trademark Office" to provide for e-mail of official communications with registered practitioners, and to improve the Office’s processes for handling applications for registration of patent agents and attorneys, associated petitions and moral character investigations, and computerized delivery of patent practitioner registration examinations.  The new rules become effective July 26, 2004 and apply prospectively. 

 

E-Mail Communication with Registered Practitioners

 

The Office of Enrollment and Discipline will maintain a list of up to three e-mail addresses for a registered practitioner and Practitioners will be responsible for updating OED with each and every change of e-mail address. OED plans to use all the addresses furnished by a practitioner to communicate with him or her.  However, it appears that the e-mail addresses will not be available on the published list of registered practitioners.  

 

Computerized Examination of New Patent Agents and Attorneys

 

Under the new computerized examination procedure, there are no fixed application deadlines. Applications may be submitted throughout the year. The applications will be reviewed, and persons admitted to the examination will schedule the examination at their convenience with a commercial entity engaged to deliver the examination. The commercial entity is equipped to provide the exam at over 400 locations around the United States.   An individual failing the examination must wait thirty days after the date the individual last took the examination before retaking the examination. 

 

The total fees for the computerized examination are $350 (the sum of $200 examination development fee charged by the Office, and the $150 fee charged by the commercial entity administering the examination).  The Office will also offer applicants the option of taking a paper examination administered by the Office once a year. The fee for the Office-administered paper examination will be $450. 

 

An examination will include 100 questions.  All the questions are multiple choice, and each addresses the patent laws, rules and procedures as related in the Manual of Patent Examining Procedure. The data bank of questions and answers will not be published or otherwise made available to the public. The examination will no longer be ‘‘open book’’ in the sense that the MPEP will only be accessible on-line during the computerized examination. However, prior to taking an examination, a tutorial will be provided by the commercial entity to all individuals to show them how to operate the computer, download and search the MPEP, and navigate among the questions. Further, the USPTO is in the process of developing a tutorial that will be available either on or through a link from the Office Web site to show how the MPEP will be accessed and navigated during the examination.

 

The Good Old Days . . .

 

Between 1922 and 1934, registration applicants demonstrated their qualifications by submitting evidence of experience in patent work, such as patent prosecution. Nonattorneys were required to show three years of experience preparing and prosecuting patent applications under the guidance of a registered patent attorney. Attorneys were required to show actual work experience in patent prosecution, but the experience was not required to extend over any particular period.

 

The showing of experience was ordinarily made by affidavit of the registered practitioner under whom the applicant had worked.  However, the procedure was administratively difficult due, in part, to the lack of any objective standards and congressional correspondence on behalf of individual applicants was "voluminous." Commissioner Robertson, in a 1933 report termed the registration system based upon submission of affidavits as neither reliable nor satisfactory. Commissioner Robertson regarded the applicant’s showing of ‘‘several examples of his ability to prosecute a patent application’’ as ‘‘perfunctory’’ and ‘‘certainly not sufficient.’’ Additionally, the Commissioner cited the required affidavit as being ‘‘subject to the great weakness of friendship between attorneys and the applicant,’’ and that an ‘‘established attorney hesitates to refuse to make an affidavit as to competency of one of his employees who is ambitious and is striving to climb the ladder of success.’’ The practice was ended in 1934 with the introduction of the registration examination.

The existing examination rules, adopted in 1985, largely continued those practices and procedures.  However, the number of persons seeking registration has grown from a few hundred to several thousand annually.  More than 6,000 persons filed applications seeking registration in 2003. Today, nearly 29,000 individuals are registered as patent attorneys and agents, of whom about 80% have indicated that they are attorneys.

Courtesy of William F. Heinze*
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
100 Galleria Parkway, N.W., Suite 1750
Atlanta, GA 30339-5948  (USA)

 

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*Admitted to practice in the Commonwealth of Virginia.  Not admitted in Georgia.