SUPPLEMENTARY INFORMATION:

Background

The Director of the USPTO has statutory authority to require a showing by patent practitioners that they possess “the necessary qualifications to render applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office.” 35 U.S.C. 2(b)(2)(D). The courts have determined that the USPTO Director bears primary responsibility for protecting the public from unqualified practitioners.

Pursuant to that responsibility, USPTO regulations provide that registration to practice in patent matters before the USPTO requires a practitioner to, inter alia, demonstrate possession of scientific and technical qualifications.^[1] The role of patent practitioners with scientific and technical backgrounds in providing full and clear patent specifications and claims has long been acknowledged. The USPTO publishes the General Requirements Bulletin (GRB) that sets forth guidance for establishing possession of scientific and technical qualifications. The GRB also provides applicants with instructions on how to apply to become a patent practitioner. The GRB is available at: www.uspto.gov/​sites/​default/​files/​documents/​OED_​GRB.pdf.

As established in the GRB, prospective patent practitioners must, among other things, successfully complete the registration examination in order to practice before the Office in all patent matters. The GRB lists three categories of scientific and technical qualifications that typically make one eligible for admission to the registration examination: (1) Category A for specified bachelor's, master's, and doctor of philosophy degrees, (2) Category B for other degrees with technical and scientific training, and (3) ( printed page 51696) Category C for individuals who rely on practical engineering or scientific experience by demonstrating that they have passed the Fundamentals of Engineering test.^[2] If a candidate for registration does not qualify under any of the categories listed in the GRB, the USPTO will conduct an independent review for compliance with the scientific and technical qualifications pursuant to 37 CFR 11.7(a)(2)(ii).

The USPTO continues to evaluate the list of typically qualifying training set forth in the GRB. These evaluations seek to clarify guidance on what will satisfy the scientific and technical qualifications requirement, to identify possible areas of improved administrative efficiency, and to clarify instructions where warranted. To that end, in 2021 the USPTO published a notice of administrative updates to the GRB including moving then commonly accepted Category B degrees to Category A. See Administrative Updates to the General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office,86 FR 52652 (September 22, 2021).

Further, in 2022 the USPTO published a notice requesting comments on proposed updates to the GRB, including moving commonly accepted Category B degrees to Category A on a routine basis, namely every three years. See Request for Comments on Expanding Admission Criteria for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office,87 FR 63044 (October 18, 2022). The USPTO received supportive comments from intellectual property organizations, industry, individual patent practitioners, and the general public. The USPTO implemented the proposals, including to review and evaluate Category B degrees and move commonly accepted Category B degrees to Category A every three years. See Expanding Admission Criteria for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office,88 FR 31249 (May 16, 2023).

It has been three years since the USPTO implemented that proposal. Thus, the USPTO has reviewed and evaluated Category B degrees from the last three years and is moving one additional Category B degree, Biomedical Science, to Category A. This notice provides clarity to the public and does not have the force and effect of law. While the criteria for admission to practice in patent matters is generally described in 37 CFR 11.7, that provision does not set forth the specific scientific and technical criteria for admission.

Review of Commonly Accepted Category B Degrees and Transition to Category A

In early 2020, the Office undertook a review of Category B applications to identify bachelor's degrees that are routinely accepted as demonstrating the requisite scientific and technical qualifications. In September 2021, the Office added 14 of these degrees, which were previously evaluated under the criteria listed in Category B, to Category A. In May 2023, the Office determined to undertake a review of Category B applications to identify bachelor's, master's, and Ph.D. degrees that are routinely accepted as demonstrating the requisite scientific and technical qualifications on a routine basis, namely every three years.

The review of degrees is ongoing and is currently based on applicant data from those applying for the registration exam and data about degree categories that is publicly available. Category A is not an exhaustive list of all degrees that would qualify an individual to take the registration exam, and the USPTO's practice is to accept degrees when the accompanying transcript demonstrates equivalence to a Category A degree (for example, molecular cell biology may be equivalent to biology). See OED Frequently Asked Questions (FAQs), available at: www.uspto.gov/​learning-and-resources/​patent-and-trademark-practitioners/​oed-frequently-asked-questions-faqs.

A determination of equivalency does not mean that the degrees are the same. Rather, the determination is a conclusion that the degrees have the same or similar scientific and technical rigor required to provide patent applicants valuable service.

Given the fast pace at which technology and related teachings evolve, the USPTO is reviewing commonly accepted Category B degrees and moving them to Category A on a three-year timeframe, beginning from the publication date of the May 16, 2023 Notice. See Expanding Admission Criteria for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office,88 FR 31249 (May 16, 2023). Conducting such reviews on a three-year cycle provides adequate time for the USPTO to gather, review, and analyze the degree data from a sufficient number of applicants for the registration exam. Once the potential degrees that may be transferred from Category B to Category A are ascertained based on applicant data, the degrees are assessed to determine whether they present sufficient technical and scientific qualifications necessary to render patent applicants valuable service. See Premysler v. Lehman, 71 F.3d 387, 389 (Fed. Cir. 1995).

In early 2026, a review of applicants with Category B degrees was conducted. With the understanding that Category A cannot be an exhaustive list of all degrees that would qualify an individual to take the registration exam, the Office is expanding the list of Category A degrees to expressly include the following degree that is routinely accepted under Category B: Biomedical Science. Listing this Category B degree under Category A will improve operational efficiency, streamline the application process for prospective patent practitioners, and encourage broader participation of prospective patent practitioners.

Other degree categories were considered but are not being included under Category A at this time to allow for the additional collection and evaluation of data. For example, the addition of degrees in Artificial Intelligence (AI) was considered. In the past three calendar years, however, there has only been one applicant with an Applied AI degree and no applicants with AI degrees. Further, the degree category of AI is not one that is currently awarded by most institutions or that many applicants have. While AI degrees are starting to be developed and implemented at universities, more data is needed for review and analysis. The AI degrees being implemented at universities currently vary in curriculum scope and complexity, with programs including many non-technical courses. As the AI degrees develop at universities, if the USPTO determines that an AI degree is equivalent to a Bachelor of Science in Computer Science degree, it may then be considered under Category A. The USPTO will continue to monitor, collect and analyze data on degrees, including AI degrees.

91 FR 51695