UPSTO Revises Patent Bar Qualifications

27 September 2021 PharmaPatents Blog
Authors: Courtenay C. Brinckerhoff

The USPTO has announced changes to the “technical and scientific qualifications that may typically make applicants eligible” to take the patent bar exam. The changes are being implemented after consideration of public comments submitted in response to a March 23, 2021 notice discussed in this article. While not directly addressing the under-representation of diverse practitioners in the patent bar, the additional pathways to qualification may make it easier for more to qualify.

The Changes To Patent Bar Eligibility

As set forth in the September 21, 2021 Notice, the USPTO has made three categories of changes to the “technical and scientific qualifications” to take the patent bar exam:

  • Expanded the list of “Category A” bachelor’s degrees that are accepted as “prima facie evidence of the requisite technical and scientific qualifications” to include aerospace engineering, bioengineering, biological science, biophysics, electronics engineering, environmental engineering, genetic engineering, genetics, marine engineering, materials engineering, materials science, neuroscience, ocean engineering, and textile engineering
  • Expanded “Category A” to include advanced degrees (master’s and doctoral degrees)
  • Revised the coursework requirements of “Category B” to be more flexible, with the inclusion of biology courses

Full details on the requirements for admission to the patent bar are set forth in the USPTO’s General Requirements Bulletin.

Not The Last Word

The September 21, 2021 Notice indicates the USPTO will continue to review the qualification requirements on an on-going basis. For example, the Notice states “Other degree categories suggested by commenters were considered but are not being included under Category A at this time to allow for the additional collection and evaluation of data on these degree categories.” In general, before including a degree in “Category A” the USPTO wants assurance that the underlying coursework requirements are consistent across academic institutions and meet or exceed the coursework requirements of “Category B,” including the requirement for lab-based core science courses.

As explained in the Notice, “[t]he requirement for lab-based core science courses is meant to ensure familiarity with the processes involved in conducting valid experiments, the scientific method, and proper analysis of scientific data.” This serves the over-arching goal of the requirements which are intended “to ensure fairness in the application process while also ensuring that patent practitioners who represent inventors are qualified, understand the technology, and are able to communicate effectively with inventors regarding the technical features of the invention.”

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.