“The USPTO’s decisions are intended to reflect its focus on the most influential ways to positively impact the issuance of robust and credible patents.” – Final Rule
The United States Patent and Trademark Office (USPTO) yesterday made the final decision to remove provisions in its regulations relating to voluntary continuing legal education (CLE) certification and accreditation for registered patent practitioners and limited accredited individuals. announced the rules. USPTO.
The rule also eliminates the Office of Enrollment and Discipline (OED) Director’s authority to publish a patent practitioner’s CLE status. It will go into effect on February 27th.
Agencies have received critical comments from various patent practitioners and interest groups regarding the USPTO’s failure to comply with federal administrative statutes related to agency rulemaking. In addition, stakeholders emphasized that the administrative and financial burden on patent practitioners would increase if the CLE program were implemented.
“The USPTO’s decision is intended to reflect our focus on the most influential ways to positively impact the issuance of robust and credible patents,” said the agency in its final rule announcement. is writing
In a significant change from previous advice, the USPTO now recommends that practitioners engage in both pro bono work and legal training. Previously, the USPTO recommended pro bono work in lieu of legal training.
“In addition to ensuring full competence to practice before the USPTO, we hope that all attorneys who practice before us will feel a desire to give back in the interests of the country. increase.
History of the CLE program
Following criticism from stakeholders, the USPTO has issued interim rules announcing the termination of the CLE program in November 2022. The final rule adopts the previous interim rule without change.
The CLE program was first announced in 2019 with the 2020 Notice of Proposed Rulemaking Related to Patent Fees (NPRM).
After the USPTO received public comment, the voluntary CLE program was postponed indefinitely to December 16, 2021.
This led to the publication of interim regulations in November 2022. The USPTO has not received public comments on the interim rules.
The USPTO has long considered implementing some form of CLE program, mentioning mandatory CLE certification as early as 2003.
backlash
In total, the USPTO received 26 public comments on the proposed CLE guidelines.
Potomac Law Group partner David Boundy wrote in his January 2021 comments about the proposed changes to the CLE: However, as suggested in the Proposed CLE Guidelines, it doesn’t work. Basic economic incentives are out of place…”
Similarly, the American Intellectual Property Law Association (AIPLA) clarified its concerns in public comments. The organization wrote: Ultimately, these costs are passed on to the innovator and the public. “
A number of interested parties have sent relevant letters to other government departments expressing concerns about the costs passed on to patent practitioners.
In a March 2021 letter, 85 patent practitioners highlighted differences between cost estimates made by the USPTO and patent practitioners. According to the group, the USPTO estimates the financial burden on the patent practitioner to be about $1.6 million, but the annual cost is between $120 million to $150 million to him. I estimate.
Where do you go from here?
In the agency’s announcement, the USPTO emphasized its commitment to working with stakeholders. However, the agency also clarified that it’s not completely shutting down books on the CLE program.
“In the future, the Office may reconsider CLE reports for patent practitioners, and nothing in this notice is intended to limit or prohibit such action in the future.
Because the voluntary CLE reporting program was not implemented, the agency said, “no one was a registered patent practitioner or qualified to practice patent matters before the USPTO was affected.”
Although the CLE program is no longer under consideration, the USPTO has indicated its intention to focus on additional training for patent practitioners. In its organizational statement, the USPTO notes its commitment to expand training opportunities, provide more detailed guidance, and host videos to educate practitioners on applicable cases.
“The USPTO encourages practitioners to make use of all materials relevant to their practice … All persons practicing before the USPTO must do what is necessary to maintain their professional competence. I am obliged to do so.”
Furthermore, the Secretariat emphasized the need to scale up pro bono efforts. The USPTO encourages practitioners to combine professional training with pro bono work to support domestic innovation.
“Only through aggressive and scaled-up pro bono work will we open the door to the innovation ecosystem, expanding and enabling job creation, economic prosperity, and solving the world’s problems. Publicizing can prove rewarding not only to the people you help, but personally as well.
