Becoming Patent Bar Eligible: What Courses are Acceptable?
|Written by Gene Quinn
Patent Attorney & Founder of IPWatchdog
Zies, Widerman & Malek
Follow Gene on Twitter @IPWatchdog
Posted: Jun 7, 2012 @ 5:16 pm
For those who want to represent inventors or companies in their pursuit to obtain a U.S. patent it is necessary to take and pass the Patent Bar Examination and become either a Patent Attorney or a Patent Agent. Not just anyone can take the Patent Bar Exam. In order to qualify to even take the Exam it is necessary for the individual seeking to take the test to demonstrate to the USPTO’s Office of Enrollment & Discipline (OED) that they: (1) Possesses good moral character and reputation; (2) Possesses the legal, scientific, and technical qualifications necessary for him or her to render applicants valuable service; and (3) Is competent to advise and assist patent applicants in the presentation and prosecution of their applications before the Office. Generally speaking, the main hurdle for most who are unable to sit for the Exam is the scientific/technical qualification requirement.
Those applying to take the Patent Bar must demonstrate to OED that he or she possesses the scientific and technical training necessary to provide valuable service to patent applicants. The General Requirements Bulletin sets forth the particulars for most situations, and divides qualifications into three distinct categories that define what the applicant must provide OED — Category A, Category B and Category C. With Category A having a Bachelor’s Degree in a specified field is enough to qualify. Under Category B you need a certain number of credit hours, but you must also have a Bachelor’s Degree, which means that college students are not eligible to sit for the Patent Bar Exam until they have graduated. Category C allows other relevant technical background to suffice, but those allowed to sit for the exam under Category C are few and far between, and one would have to wonder how easy it would be to obtain employment without at least some scientific coursework at a college or University level.
Showing Required Scientific and Technical Training
An applicant is considered to possess the necessary scientific and technical training if he or she provides an official transcript showing that a Bachelor’s degree was awarded in 1 of 31 different scientific or engineering disciplines by an accredited United States college or university, or that the equivalent to a Bachelor’s degree was awarded by a foreign university. For a listing and discussion of these Category A degrees see Who Can Take the Patent Bar?
Those who have a Bachelor’s degree in a subject not listed must demonstrate possession of the necessary scientific and technical training under either Category B or Category C. For more on this see Patent Bar Qualifications: Category B.
It is not uncommon for individuals to have a Bachelor’s degree in a field not listed on the Category A list, but does possess a Masters degree or Ph.D. in a field that is listed on Category A. For those who have a Master’s or higher level degree in one of the Category A fields, but does not have a Bachelor’s degree in such subject, will need to establish to the satisfaction of the OED Director that he or she possesses the necessary scientific and technical training. In other words, the mere possession of an advanced degree in a Category A discipline does not automatically qualify you to take the Patent Bar Examination. Possession of the necessary scientific and technical training is typically established in the manner set forth under Category B.
This is sometimes surprising to those who hold advanced degrees, who question why the USPTO would have such a silly requirement. The unfortunate truth, however, is that this is not a silly requirement. There are “engineering or science sounding advanced degrees that focus almost exclusively on business and/or management topics, which is not the case for Bachelor’s degree programs. Those with advanced degrees but no Category A Bachelor’s degree should NOT panic. You should easily have enough credits under one of the Category B options to qualify to sit for the Exam.
It is not uncommon for those wishing to become a Patent Attorney or Patent Agent to need to qualify under Category B by counting course credits. There are 4 separate options. Option 1 requires 24 credit hours of Physics with all classes qualifying for credit for Physics majors. Similarly, Option 3 requires 30 credit hours of Chemistry with all classes qualifying for credit for Chemistry majors. Whether you are seeking to qualify under one of the 4 Category B options the question becomes this: Which courses will the USPTO recognize as counting toward fulfillment of the required number of credit hours?
The most specific and direct statement in the General Requirement Bulletin about courses is the paragraph that deals with the types of courses that are examples of courses that will not be deemed sufficient to demonstrate the necessary scientific and technical training, which says:
The following typify courses that are not accepted as demonstrating the necessary scientific and technical training: anthropology; astronomy; audited courses; behavioral science courses such as psychology and sociology; continuing legal education courses; courses in public health; courses relating technology to politics or policy; courses offered by corporations to corporate employees; courses in management, business administration and operations research; courses on how to use computer software; courses directed to data management and management information systems; courses to develop manual, processing or fabrication skills (e.g. machine operation, wiring, soldering, etc.); courses taken on a pass/fail basis; correspondence courses; ecology; economics of technology; courses in the history of science, engineering and technology; field identification of plants and/or animals; home or personal independent study courses; high school level courses; mathematics courses; one day conferences; patent law courses; paleontology; political science courses; repair and maintenance courses; radio operator license courses; science courses for non-science majors; vocational training courses; and work study programs. Also not accepted are college research or seminar courses where the course content and requirements are not set forth in the course descriptions; and courses that do not provide scientific and technical training. Further, 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.
But what about online courses, which are growing ever more popular? I couldn’t find that answer specifically in the General Requirements Bulletin so I asked OED if they could clarify the Office’s position on such courses. According to OED, “online courses appearing on an official transcript will be considered on a case-by case basis.” OED went on to tell me: “Factors that come into play in determining whether credit is acceptable toward the requisite technical and scientific training include the school’s accreditation and how the school treats credit for the course. There is no per se rule regarding on-line courses.”
While this may seem like no help at all, this answer from OED is particularly enlightening if you are familiar with the way the Patent Office evaluates courses generally. Furthermore, if online courses are evaluated on a case-by-case basis that must mean that there are indeed some online courses that the Patent Office is willing to accept.
When determining whether to accept a particular course one particularly important consideration is whether the course has been accepted for college-level credit for a Category A degree at an accredited U.S. college or university. We know that the USPTO will accept courses taken at Community Colleges if those courses would count toward a degree listed on Category A. Indeed, some who are short credits will take them at Community Colleges and then be admitted to take the exam. The same rationale seems to apply when OED is evaluating online courses. So before you take a class at a Community College or online make sure that the credits for the course could be used by someone pursuing a Category A degree. If the answer is that the course would count toward the credit requirements for a Category A degree you should be fine.
A copy of a diploma, the actual diploma itself or an unofficial transcript are not acceptable evidence of a degree in the eyes of OED. Similarly, a letter from the registrar specifying a degree or degrees is not sufficient. It is necessary for the applicant to provide an official transcript from a college or university as evidence of the degree received. An official transcript issued to an applicant will be accepted provided the transcript includes a university or college stamp or seal.
The one issue that sometimes arises is with respect to name changes, as may be the case due to marriage or divorce. Transcripts must show the same name as the application. If there is a difference between the name on the transcript and the name of the applicant sufficient legal documentation of the name change, such as a marriage certificate or court order, must be provided.
When to Apply for the Patent Bar Exam
If you file a complete application and you qualify under Category A or B you will likely receive an admission ticket to take the Patent Bar Exam within two weeks. It is important to keep in mind that those seeking to qualify under Category B will need to submit not only an official transcript, but will also need to include course descriptions for each course relied upon. This can take some time because the course description must be the official course description for the course in the year in which the course was taken. Colleges and Universities do keep old course descriptions and they can be obtained, but it can take at least several weeks (or longer) to get the information you need, particularly for old courses where that information may be stored in archives off-site. So if you are going to attempt to qualify under Category B you should do the leg work necessary in advance. Don’t wait to the last minute before you want to apply and think you will be able to apply quickly or easily.
When you obtain an admission ticket to the Exam you will have a 90 day window within which to schedule the Exam at a Prometric Test Facility. Those who have taken the PLI Patent Bar Review Course are told that they should spend another 100 hours studying materials we provide for the “post course.” Typically students will apply when they are about 50% to 60% through the 100 hours so that by the time they get the admission ticket they will be able to take advantage of the full 90 window. It doesn’t make sense to apply too early and just have your window closing day after day when you are not yet ready for the Exam.
About the Author
Gene Quinn is a US Patent Attorney, law professor and the founder of IPWatchdog.com. He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene started the widely popular intellectual property website IPWatchdog.com in 1999, and since that time the site has had many millions of unique visitors. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, USA Today, CNN Money, NPR and various other newspapers and magazines worldwide. He represents individuals, small businesses and start-up corporations. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.