Earlier today the United States Patent and Trademark Office (USPTO) provided the Patent Public Advisory Committee (PPAC) information relating to proposed patent fees in advance of the PPAC meeting on fees scheduled for September 6, 2018. Among the documents released are a spreadsheet detailing various “Patent Enrollment Fees”. Lines 195 through 198 propose the creation of a new fee code relating to the imposition of annual patent bar dues for patent practitioners, which would range from $240 per year to $410 per year, depending upon whether the dues were paid electronically, and whether the dues were paid with or without a certificate of Continuing Legal Education (CLE) compliance.
The substance of this new fee code means that the USPTO is once again contemplating the possibility of reviving a proposal that envisions all patent practitioners paying annual patent bar dues. The difference between this proposal and previous proposals is that the associated CLE requirement would not mandatory. A patent practitioner paying dues electronically and having complied with the voluntary CLE requirement would pay annual dues of $240 per year, while the maximum annual dues paid would be reserved for practitioners paying dues by filing on paper without certifying compliance with the voluntary CLE requirement, which would result in a $410 per year dues payment. Filing electronically without certifying compliance with the voluntary CLE requirement would result in annual dues of $340 per year, while filing by paper and certifying compliance with the voluntary CLE requirement would result in annual dues of $310 per year.
“I am going to assume for the moment that, as the Office did the last time annual bar dues were proposed, it will be styled as a fee primarily to run the Office of Enrollment and Discipline,” said Todd Dickinson. “In this way the fee would maintain the registry and provide the funding for disciplinary matters related to policing the profession.”
Indeed, as Dickinson’s comment suggests, the USPTO has had a recent flirtation with both CLE for patent practitioners and annual bar dues. Those familiar with recent USPTO history will recall that proposals for patent practitioners to have a separate CLE requirement and to pay annual bar dues are not new. When Jon Dudas was Director of the USPTO a similar proposal was made. In December 2003, the USPTO proposed requiring mandatory CLE for patent practitioners, as well as a mandatory bar dues payment for each practitioner. The 2003 Federal Register Notice read in part:
A registered practitioner in active status is one who is able to represent clients and conduct business before the USPTO in patent cases. To maintain active status, the practitioner would pay the annual fee required under §§ 1.21(a)(7)(i) and 11.8(d) and comply with the continuing legal education (CLE) requirements under §§ 11.12(a) and (e).
In 2003, according to the Federal Register Notice, the USPTO was of the belief that State bar mandatory CLE requirements were insufficient to maintain the integrity of practice before the Office for several reasons. First, not all states have mandatory CLE requirements. Second, patent agents are not required by state bar associations to take any CLE. The 2003 Federal Register Notice explained:
The trend toward continuing legal education requirements by state bars is not sufficient to maintain the currency of knowledge among licensed practitioners regarding patent practice before the Office. First, while some attorneys may be required to take continuing legal education as a matter of state bar requirements, such requirements do not apply to patent agents and are not specific to obtaining additional patent education. The Office’s licensing of patent agents who are not attorneys effectively preempts the states’ restrictions on practicing law without a license. Thus, it is incumbent on the Office to assure that agents are required to be kept up-to-date on legal matters in ways equivalent to the requirements now imposed by forty state bars on lawyers. The foreign patent agents also are not subject to the restrictions and continuing legal education requirements imposed by states. Similarly, although one state is now considering special certification for patent lawyers, its proposal defers to the Office’s authority over licensing patent practitioners and thus imposes no certification requirements based on Office practice. None of the states mandating continuing legal education (CLE) require registered patent attorneys to receive updated education in new Office practices and procedures.
To assure the public that licensed practitioners maintain their competence and proficiency, the Office proposes to deliver required education materials via the Internet and otherwise to practitioners and to certify their scrutiny of those materials through an interactive computer-delivered examination. Alternatively, the Office would accept mandatory continuing education given by a pre-approved sponsor. Section 11.12 would apply only to licensed practitioners, not to inventors applying pro se. The availability of the education, however, will make the patent process more accessible to inventors, while helping the quality and efficiency of prosecution.
Delivery of mandatory continuing education by the USPTO meets the need for equal availability of the program worldwide. The Office can provide this service at a minimal cost because we are building on a program we conduct for examiners. The Office is going to seek CLE credits for the program from state bars requiring attorneys to meet certain continuing legal education requirements. However, the Office is not sure all state bars with the requirements will recognize the mandatory education program offered by the Office. Therefore, the Office believes that regular continuing education sponsors should be able to offer the program content in alternative formats that are acceptable to state bars.
Ultimately, and unsurprisingly, the Office received a record number of comments and complaints about requiring mandatory CLE for patent practitioners, and new annual patent bar dues. This led to the Office suspending the start of the mandatory CLE and bar dues program each year. Then when David Kappos became Director of the USPTO, the mandatory CLE requirement and bar dues were officially abandoned.
More recently, in 2013, when the USPTO updated the ethics rules relating to the representation of others, the Office again declined to implement a mandatory CLE requirement. At that time the contemporaneous Federal Register Notice read:
To maintain competence, all practitioners should keep abreast of changes in the legal landscape. To that end, attending CLE courses may be helpful, but the Office is not instituting a mandatory CLE reporting requirement at this time. Further, these rule changes are not a deviation from the approach in the USPTO Code. The Office will continue to assess the need for CLE reporting requirements and may revisit this issue in the future.
It would seem that the future has arrived and the USPTO is once again of the belief that CLE is desirable, and is proposing a fee structure to encourage voluntary compliance.
With respect to bar dues, in 2003 when annual bar dues were proposed for patent practitioners the Office explained that “an annual fee, the Office would be funding the disciplinary system as State Bars do, by dues from the bar members.” The problem, however, is so much of what the USPTO does in terms of discipline is merely reciprocal discipline, which means the Office merely hands out the exact discipline already handed out by another tribunal. In fact, in a recent ethics opinion written by USPTO General Counsel Sarah Harris, the Office of Enrollment and Discipline was ordered to stand down and cease attempts at pursuing original disciplinary enforcement when reciprocal discipline could be handed out.
In any event, one can only imagine that the initial response from patent practitioners will be unfavorable. The imposition of annual dues will no doubt be cause for concern, particularly where OED seems to have an unfortunately limited amount of authority to actually police the industry, and a historic unwillingness to go after invention scams that have long preyed upon the most vulnerable and unsophisticated inventors.