USPTO seeks public feedback on initiatives to expand opportunities to practice before the agency 

WASHINGTON—The United States Patent and Trademark Office is requesting public input on two new Federal Register Notices (FRNs) aimed at expanding opportunities to practice before the agency, namely Expanding opportunities to appear before the Patent Trial and Appeal Board (PTAB) and Expanding admission criteria for registration to practice in patent cases before the USPTO.   

“These proposals are part of our broader initiatives to improve quality and participation. Only by thinking critically about what criteria are necessary for the work we do and opening our doors to all who meet those criteria will we expand our innovation ecosystem for the betterment of our country,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO.

Expanding opportunities to appear before the PTAB  

Under current USPTO rules, only members of the USPTO patent bar are eligible to appear as lead counsel in America Invents Act (AIA) proceedings involving third-party challenges to issued patents. Other attorneys may only appear if granted permission in a specific proceeding, and are limited to acting as backup counsel. To ensure quality representation in PTAB proceedings without creating undue restrictions or barriers to entry for practitioners wishing to appear before the PTAB, we are seeking public input on whether the PTAB’s rules and procedures should be modified to increase opportunities for practitioners. Much of the work done before the PTAB requires a skillset different from that needed for pure prosecution, and even requiring a low pro hac bar erects barriers that may not be necessary to ensure quality representation. 

We are also considering improvements to training and development programs, such as the PTAB’s Legal Experience and Advancement Program (LEAP), aimed at expanding opportunities for less experienced practitioners to appear before the PTAB. You can read the full FRN for more information.  

Expanding admission criteria for registration to practice in patent cases before the USPTO  

To ensure high-quality, inclusive representation for all American innovators, we plan to expand the admission criteria of our patent bar to encourage broader participation and to keep up with the ever-evolving technology and related teachings that qualify someone to practice before the USPTO.  

In addition, in recognition of the growing importance of design protection amid new and emerging technologies, we are considering whether a separate design patent practitioner bar would benefit the public and the USPTO. We are looking to identify possible areas of improved administrative efficiency as well.  

We are also requesting feedback about whether the instructions to patent bar applicants who are not U.S. citizens, do not reside in the U.S., and are applying for limited recognition to practice in patent matters should be clarified in the General Requirements Bulletin (GRB) for Admission to the Examination for Registration to Practice in Patent Cases Before the USPTO. You can read the full FRN for more information.  

Users can submit comments on both proposals via the Federal eRulemaking Portal until January 17, 2023. 

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