The regulations governing the recognition of individuals to practice before the United States Patent and Trademark Office in patent cases are set forth in 37 CFR §§ 10.5, 10.6 and 10.7. Please note that recognition under the regulations reproduced below is limited to representing individuals in patent cases only. Only attorneys or individuals individuals who were not attorneys and were recognized to practice before the Office in trademark cases prior to January 1, 1957, may represent persons in trademark cases. 37 CFR § 10.14.
A register of attorneys and agents is kept in the Office on which are entered the names of all individuals recognized as entitled to represent applicants before the Office in the preparation and prosecution of applications for patent. Registration in the Office under provisions of this part shall only entitle the individuals registered to practice before the Office in patent cases.
(a) Attorneys. Any citizen of the United States who is an attorney and who fulfills the requirements of this part may be registered as a patent attorney to practice before the Office. When appropriate, any alien who is an attorney, who lawfully resides in the United States, and who fulfills the requirements of this part may be registered as a patent attorney to practice before the Office, provided: Registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States and further provided: The alien may remain registered only (1) if the alien continues to lawfully reside in the United States and registration does not become inconsistent with the terms upon which the alien continues to lawfully reside in the United States, or (2) if the alien ceases to reside in the United States, the alien is qualified to be registered under paragraph (c) of this section. See also § 10.9(b).
(b) Agents. Any citizen of the United States who is not an attorney and who fulfills the requirements of this part may be registered as a patent agent to practice before the Office. When appropriate, any alien who is not an attorney, who lawfully resides in the United States, and who fulfills the requirements of this part may be registered as a patent agent to practice before the Office, provided: Registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States, and further provided: The alien may remain registered only (1) if the alien continues to lawfully reside in the United States and registration does not become inconsistent with the terms upon which the alien continues to lawfully reside in the United States or (2) if the alien ceases to reside in the United States, the alien is qualified to be registered under paragraph (c) of this section. See also § 10.9(b).
Note: All individuals registered prior to November 15, 1938, were registered as attorneys, whether they were attorneys or not, and such registrations have not been changed.
(c) Foreigners. Any foreigner not a resident of the United States who shall file proof to the satisfaction of the Director that he or she is registered and in good standing before the patent office of the country in which he or she resides and practices and who is possessed of the qualifications stated in § 10.7, may be registered as a patent agent to practice before the Office for the limited purpose of presenting and prosecuting patent applications of applicants located in such country, provided: the patent office of such country allows substantially reciprocal privileges to those admitted to practice before the United States Patent and Trademark Office. Registration as a patent agent under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.
(a) No individual will be registered to practice before the Office unless he or she shall:
(1) Apply to the Commissioner in writing on a form supplied by the Director and furnish all requested information and material and
(2) Establish to the satisfaction of the Director that he or she is:
(i) Of good moral character and repute;
(ii) Possessed of the legal, scientific, and technical qualifications necessary to enable him or her to render applicants for patents valuable service; and
(iii) Is otherwise competent to advise and assist applicants for patents in the presentation and prosecution of their applications before the Office.
(b) In order that the Director may determine whether an individual seeking to have his or her name placed upon the register has the qualifications specified in paragraph (a) of this section, satisfactory proof of good moral character and repute and of sufficient basic training in scientific and technical matters must be submitted to the Director. Except as provided in this paragraph, each applicant for registration must take and pass an examination which is held from time to time. Each application for admission to take the examination for registration must be accompanied by the fee set forth in 37 CFR § 1.21(a)(1) of this subchapter. The taking of an examination may be waived in the case of any individual who has actively served for at least four years in the patent examining corps of the Office. The examination will not be administered as a mere academic exercise.
If you are a former employee of the U.S. Patent and Trademark Office who meets the scientific and technical training requirements for admission to the registration examination and, before terminating your employment with the U.S. Patent and Trademark Office, you served four or more years in the patent examining corps of the U.S. Patent and Trademark Office as an examiner, supervisory patent examiner, or group director at any time, you may request a waiver of the examination for registration pursuant to 37 CFR § 10.7(b). Complete the Application for Registration [Form PTO-158], Oath [Form PTO-1209], and Undertaking Under 37 CFR § 10.10(b) [Form PTO-275] (if not previously completed), and remit a registration fee of $100.00 as required by 37 CFR § 1.21(a)(2). Please make payment by check or money order made payable to the Commissioner of Patents and Trademarks. Current employees of the PTO may not be registered due to conflict of interest regulations.
To request waiver of the examination, place an "X" in the appropriate box of the Application for Registration. All relevant documentation must be submitted with your application. Please refer to the Instructions for Applying for Admission to take the Examination for additional information.
Unless the examination has been waived pursuant to 37 CFR § 10.7(b), you must take the examination for registration. To be admitted to the examination for registration, you must demonstrate that you possess the scientific and technical training necessary to enable you to render applicants for patents valuable service. You bear the burden of showing that you possess the requisite scientific and technical training. The showing must satisfy one of the following categories, A, B, or C, below.
Category A. Bachelor’s Degree in a Recognized Technical Subject. You will be considered to have the necessary scientific and technical training if you show that you received a Bachelor’s degree in one of the following subjects from a United States college or university of recognized standing, or the equivalent to a Bachelor’s degree in one of the following subjects from a foreign university:
* The computer science program for which your degree was awarded must be accredited by the Computer Science Accreditation Commission (CSAC) of the Computing Sciences Accreditation Board (CSAB) on or before the date your degree was awarded.
If you have a Bachelor’s degree in one of the above-identified subjects, you must furnish an original official transcript from the college or university from which you received your degree. A copy of your diploma will not be accepted. An official transcript from your college or university issued to you, as a student is acceptable provided it includes an original college or university stamp or seal.
If you have a Master’s or higher level degree in one of the subject areas listed above, but do not have a Bachelor’s degree in such subject, you must qualify under Category B below.
Category B. Bachelor’s Degree in Another Subject. If you have a Bachelor’s degree in a subject other than one of those listed in Category A, you must establish that you possess scientific and technical training equivalent to that received for a Bachelor’s degree in one of the subjects listed in Category A. To establish such equivalence, you must submit a showing that you have satisfied one of the following options.
If you need to make a showing to establish your scientific and technical training, it is strongly recommended that you file your showing at least two months prior to the closing date for filing your application to afford an adequate time to present a supplemental showing which the Office of Enrollment and Discipline may require.
Option 1: 24 semester hours in physics. Only physics courses for physics majors will be accepted.
Option 2: Combination of 24 semester hours in biological sciences and either 8 semester hours of chemistry (two sequential semesters, each semester including a lab) or 8 semester hours of physics (two sequential semesters, each semester including a lab). Only biological science courses for biological science majors will be accepted and only chemistry and physics courses for chemistry, biology, or physics majors will be accepted.
Option 3: 30 semester hours in chemistry. Only chemistry courses for chemistry majors will be accepted.
Option 4: Combination of 40 semester hours of chemistry, physics, the biological sciences, or engineering. The courses relied upon must include at least 8 semester hours of chemistry (two sequential semesters, each semester including a lab) or 8 semester hours of physics (two sequential semesters, each semester including a lab). Only chemistry, biological sciences, and physics courses for majors in chemistry, physics, biology, or engineering will be accepted.
For each college or university where you took a course for which you are requesting credit under Category B, you must furnish an "official transcript" as described in Category A, at page 2, column 2.
For each course relied upon in Options 1, 2, 3, or 4 above, you must furnish an official course description which is concurrent with the year in which you took the course, and you must furnish an original official transcript from the college or university where you took the course. You must also submit copies of the catalog cover page showing the year, the page(s) describing the requirements for your major, and complete pages describing the courses you want considered. Only courses in which you received a grade of C- or better will be accepted. Please highlight the courses you want considered. To convert quarter hours into semester hours, multiply quarter hours by 2/3. Certified English translations of foreign language transcripts and course descriptions must be furnished.
Under Option 4, up to four semester hours will be accepted for courses in design engineering or drafting. Also, under Option 4, computer science courses that stress theoretical foundations, analysis, and design, and include substantial laboratory work, including software development will be accepted. Such courses include the representation and transformation of information structures, the theoretical models for such representations and transformations, courses that provide basic coverage of algorithms, data structures, software design with a laboratory, programming languages with a laboratory, and computer organization and architecture. Other acceptable courses in computer science include artificial intelligence and robotics, networking, linear circuits, logic circuits, operating systems, and software methodology and engineering.
The following typify courses which are not accepted as demonstrating the necessary scientific and technical training: science courses for non-science majors; astronomy; paleontology; anthropology; ecology; courses in public health; mathematics courses; high school level courses; one day conferences; patent law courses; continuing legal education courses, political science courses, behavioral science courses such as psychology and sociology; courses relating technology to politics or policy; courses offered by corporations to corporate employees; courses in management, business administration and operations research; courses directed to data management and management information systems; repair and maintenance courses; computer courses which are directed to business applications; courses on how to use computer software; vocational training courses; radio operator licenses; courses taken on a pass/fail basis; audited courses; home or personal independent study courses; correspondence courses; courses to develop manual, processing or fabrication skills (e.g. machine operation, wiring, soldering, etc.); economics of technology; courses in the history of science, engineering and technology; field identification of plants and/or animals; work study programs; college research or seminar courses where the course content and requirements are not set forth in the course descriptions; and courses which do not provide scientific and technical training in patentable subject matter. Also not accepted are courses that repeat, or which are substantially the same as, or are lesser-included courses for which credit has already been given.
Other factors will also be considered on a case-by-case basis with respect to scientific and technical training.
The Office of Enrollment and Discipline will consider expertise in scientific and technical training which is equivalent to that of a Bachelor’s degree listed in Category A. Applicants without a degree listed in Category A have the burden of establishing possession of sufficient training and expertise in science or engineering to be equivalent to that of a Bachelor’s degree in a subject listed in Category A. Demonstration that training is equivalent to training received in courses accepted under Category B will help establish such equivalency. Also see Category C below. Although the Office of Enrollment and Discipline will not evaluate and award credit for military service, credit may be granted for technical courses taken pursuant to military training. The applicant has the burden of showing the semester hours credit each course relied upon would be accorded toward a degree at an accredited U.S. University or college. Applicants should consult the Guide to Evaluation of Educational Experience in the Armed Services, which is available through the American Counsel on Education, Military Evaluation Program, 1 Dupont Circle, Washington, DC 20036.
Category C. Practical Engineering or Scientific Experience. If you are relying on practical engineering or scientific experience or if you cannot qualify under A or B above, you may establish that you possess the required technical training by taking and passing the Fundamentals of Engineering (FE) test. The FE test is a test of engineering fundamentals. The FE test is developed and administered by a State Board of Engineering Examiners in each State or comparable jurisdiction. The test is not administered by the U.S. Patent and Trademark Office or any other U.S. Government agency. If you desire to take the FE test, direct your inquiries to the Secretaries of the appropriate State Boards.
The examination for registration will be administered in two sessions, one during the a morning section and one during the afternoon. To pass the examination, you must take both sessions and receive a passing score of 70% on the entire examination. PLEASE NOTE: The registration examination will receive one score only and will test all applicable material throughout the examination.
Six hours are permitted for completion of the examination, three hours in the morning session and three hours in the afternoon session. The examination is designed to test your knowledge of patent law and U.S. Patent and Trademark Office rules, practice, and procedure; your understanding of claim drafting and ability to properly draft claims; and your ability to properly analyze factual situations and properly apply the patent laws and U.S. Patent and Trademark Office rules, practice, and procedure, such as would be required to render valuable service to patent applicants in the preparation and prosecution of their patent applications. 35 U.S.C. § 31. The examination will also include questions dealing with standards of ethical and professional conduct applicable to registered patent attorneys and agents.
The U.S. Patent and Trademark Office cannot identify or recommend courses to be pursued in preparing for the examination, or offer advice as to the special training required of persons who wish to be qualified to practice before the U.S. Patent and Trademark Office as a patent attorney or agent. Copies of the last three examinations and model answers are available and may be obtained from the PTO at a cost of $15.00 for each examination. Send your request specifying the examinations desired and a check or money order made payable to the Commissioner of Patents and Trademarks at the address which appears on page 6 of this General Requirements Bulletin.
Before taking this examination, you should be familiar with the patent statutes; the U.S. Patent and Trademark Office rules of practice (Parts I and 10 of Title 37 of the Code of Federal Regulations), procedure and policy set forth in the Manual of Patent Examining Procedure (M.P.E.P.); and the consolidated listing of notices in the Official Gazette. The M.P.E.P., the consolidated listing of notices in the Official Gazette, and Title 37 of the Code of Federal Regulations (CFR) may be ordered from the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402 or by calling (202) 512-1800. The U.S. Patent and Trademark Office will not provide any of these materials to applicants. The Office of Enrollment and Discipline will not counsel applicants on the patent statutes and U.S. Patent and Trademark Office rules, policy, practice, and procedure.
In an extraordinary situation, when justice requires, a petition may be filed under 37 CFR § 10.170 requesting in writing that a requirement, which is not a requirement of the statutes, be suspended or waived by the Director.
For a waiver of the examination, see page 2, column1.
THE EXAMINATION WILL BE ADMINISTERED ON WEDNESDAY, April 21, 1999. If you are seeking admission to the examination for the first time, complete the Registration Application [Form PTO-158], and Oath [Form PTO-1209], attach all other required documentation (that information upon which you are relying to demonstrate your qualifications to sit for the examination), and remit a $40.00 non-refundable application fee and a $310.00 examination fee as required by 37 CFR § 1.21(a)(1). 35 U.S.C. § 41(d). Send a check or money order made payable to the Commissioner of Patents and Trademarks.
Complete all items on the Application form including information requested for business name, address and telephone number. If you are a full-time student, enter "Student" in the business name section of the application. If you are not gainfully employed, enter "Unemployed" in the business name section. If you are not a full-time student or unemployed, you must enter your employer's name and address, and a business telephone number where you can be reached at your place of employment. If you are an officer or employee of the United States Government, you must enter the name and mailing address of the office to which you are assigned and your business telephone number where you can be reached. If you are self-employed, you must enter your business name and mailing address and your business telephone number.
In completing the Application for Registration, the documents required under items 4-14 must be submitted with your application. Please note that for item 14, a copy of your diploma is not acceptable evidence that you have received a degree. You must provide an original official transcript from your college or university as evidence of the degree received. Any official transcripts issued to you will be accepted provided the transcript includes an original university or college stamp or seal. A letter from the registrar specifying your degree or degrees is not acceptable.
If you have instructed a college or university to send your transcript directly to the Office of Enrollment and Discipline at the United States Patent and Trademark Office, please state the same in a letter accompanying your application. The college or university must be instructed to mail the transcript by U.S. Postal Service first class mail to the address appearing on page 6 of this General Requirements Bulletin by the application deadline. Former employees may also provide a copy of an official transcript on file in the U.S. Patent and Trademark Office’s Office of Human Resources with a notation that the original is in their personnel file.
Complete the portion of the Application that indicates where you wish to take the examination in item #1. You must select the area where you wish to take the examination from the following list:
If you are reapplying to take the examination, you must completely fill out and sign the Application for Registration [Form PTO-158], all required documentation, and remit the $40 non-refundable application fee and a $310.00 examination fee as instructed in the preceding section. You must answer all questions on the application form. However, you need not resubmit documentation previously submitted with a prior application unless such documentation is necessary to update your application. See 37 CFR § 10.22 of the PTO Code of Professional Responsibility.
If you are an alien not residing in the United States, you are not eligible for registration except as permitted by 37 CFR § 10.6(c). See Page 1. Presently, Canada is the only country recognized as allowing substantially reciprocal privileges to those admitted to practice before the U.S. Patent and Trademark Office. The registration examination is not administered to aliens who do not reside in the United States.
If you are an alien residing in the United States, you may apply to take the registration examination. To be admitted to the examination, you must establish by clear and convincing evidence that recognition is consistent with the capacity of your employment authorized by the U.S. Immigration and Naturalization Service ("INS"). The evidence must include a copy of both sides of any work authorization and copies of all documents submitted to and received from the INS regarding your admission to the United States and a copy of any documentation submitted to the U.S. Department of Labor. Qualifying nonimmigrant aliens within the scope of 8 CFR § 274a.12(b) or (c) are not registered upon passing the examination. Such aliens will be given limited recognition under 37 CFR § 10.9(b) if recognition is consistent with the capacity of employment authorized by the INS. Documentation establishing your qualification to receive limited recognition must be submitted with your application by the filing deadline. Qualifying documentation shows that the INS has authorized you to be employed in the capacity of representing patent applicants before the PTO by preparing and prosecuting their patent applications. Any INS approval pending at that time will result in your application being denied for the April 1999 examination.
If you have a disability for which special accommodations must be made for the upcoming examination, you must submit a separate letter with your application requesting disabled status. Your request must set forth your disability and the special accommodations that you need. Additional documentation, less than one year old, certifying the current severity of your disability and certifying that the accommodations requested are necessary for this disability should be sent by a licensed physician who has evaluated you regarding this condition. This documentation must be submitted for each examination for which special accommodation is requested. In order to insure that arrangements can be made in sufficient time before the examination date, the request for disabled status and all required documentation must be submitted no later than February 1, 1999.
THE DEADLINE FOR FILING ALL APPLICATION PAPERS, ALL APPROPRIATE FEES, AND ALL NECESSARY DOCUMENTATION IS JANUARY 8, 1999. If you need to make a showing under Category B or C to establish your scientific and technical training, it is strongly recommended that you file your information at least two months prior to the closing date for filing your application to afford an adequate time to present all information required to demonstrate your qualifications to take the registration examination. However, the Office of Enrollment and Discipline cannot guarantee that you will receive an indication of deficiencies in your application and documentation prior to the filing deadline. Deficiencies that lead to an incomplete filing will lead to your application being denied. There will be no opportunity to file a supplemental showing after January 8, 1999, to obtain admission to the April 1999 examination.
If you are refused admission to the examination, your $310 examination fee will NOT be automatically refunded; however, it will be refunded or held for the next examination at your written request. PLEASE NOTE: IF YOU QUALIFY TO BE ADMITTED TO THE EXAMINATION, AND LATER NOTIFY THE OFFICE THAT YOU WILL NOT BE TAKING THE EXAMINATION, THE $310.00 EXAMINATION FEE WILL NOT BE REFUNDED OR DEFERRED TO ANOTHER EXAMINATION UNLESS YOUR NOTIFICATION IS FILED WITH OED PRIOR TO FEBRUARY 1, 1999. 35 U.S.C. § 42(d). Requests for refunds or deferments, filed on or prior to February 1, 1999, will be processed in due course after the examination has been given. If for any reason prior to February 1, 1999, you have notified the Office that you cannot sit for the examination and you did not request a refund, the examination fee will be applied to the next examination for which you make application. No refunds or deferments are available for the $40 non-refundable application fee.
Mail your application papers and any other correspondence by U.S. Postal Service first class mail to:
Commissioner of Patent and Trademarks
Box OED
Washington,
D.C. 20231
A certificate of mailing pursuant to 37 CFR § 1.8 may be used when mailing applications on or before the January 8, 1999, deadline. Applications received by the PTO after the filing deadline of January 8, 1999, without a certificate of mailing will be considered late and treated accordingly. DO NOT MAIL YOUR APPLICATION BY ANY FORM OF OVERNIGHT MAIL. The Office of Enrollment and Discipline has experienced significant delays in receiving applications by overnight mail.
The Office of Enrollment and Discipline evaluates each application for admission to the examination as soon as possible after receipt in the Office. If your application for registration is disapproved, you will be notified by mail. If your disapproval notice is received before the filing deadline, you may file additional information on or prior to January 8, 1999 for consideration with your application for the April 21, 1999 registration examination.
In order to be admitted to the examination, your application forms must be complete, the proper application and examination fees must have been remitted as required by 37 CFR § 1.21(a)(1), and a satisfactory showing of your qualifications, including official transcripts, must be filed in the U.S. Patent and Trademark 0ffice on or before January 8, 1999. Facsimiles of applications will not be accepted. See, 37 CFR § 1.6(d)(1) and 37 CFR § 1.4(e). All applications for admission to the examination filed after the deadline will be considered only in connection with admission to the next registration examination. If you wish to receive an acknowledgment of the receipt of your application, include with the application a self-addressed, stamped post card to be used for such purpose. The card should contain data identifying you and each type of paper filed, e.g. application, oath, transcripts, etc. OED will stamp the receipt date on the card and place it in the outgoing mail. However, the card is not verification that all of those items you identified were present with your application. Please do not call the Office of Enrollment and Discipline regarding the status of your application unless you have not received a response four weeks after you submitted your application.
If you file an application to take the examination and later decide not to take the examination, please notify the Office of Enrollment and Discipline in writing as soon as possible.
Applicants are responsible for their own transportation to and from the examination site and for their own hotel accommodations. Applicants are also responsible for their own eating arrangements. Approximately two weeks before the examination is held, each applicant will be notified by the Office of Personnel Management of the address to which the candidate is to report to take the examination.
Keep this information for future reference. You may find it necessary to refer to it after you have filed your application. Also, please keep the Office of Enrollment and Discipline advised of any changes in your address, telephone number, or other information you may have provided in your application for registration to take the April 1999 examination.
PTO/SB/158 Application for Registration to Practice Before the USPTO [PDF]
PTO/SB/275 Undertaking under 37 CFR 10.10(b) [Fillable PDF]
PTO/SB/1209 Oath or Affirmation [PDF]