USPTO proposes CLE and bar dues for patent practitioners

By Gene Quinn
August 8, 2018

Madison Building USPTOEarlier 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.”

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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.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 22 Comments comments. Join the discussion.

  1. Luis Figarella August 8, 2018 12:50 pm

    First, the number of practitioners in the USA is about 46,000 (+/-), even at $240, what do you figure the number would go down to? 33,000?

    Second, I know the USPTO reads your blog, maybe they could allow up to two fees (for two practitioners) per pro-bono patent filing?

    LuF

  2. JB August 8, 2018 1:09 pm

    Unfortunately this is Will Covey’s last ditch effort to stay relevant as he looks for a new job.

  3. Night Writer August 8, 2018 2:21 pm

    They have trashed our practice with the AIA/Alice/KSR/eBay. We all make less now. Now they want to bleed us of another $500-$1,000 per year?

    And, let’s all not forget that the budgets for patents in corporations is one giant pot. When they bump up those fees it comes out of our pay.

    The long slow death of patents in the USA. Hard to find anyone that wants to be a patent attorney now. And every corporation that I work with talks of de-emphasizing patents and cutting back on the budget.

    Still want to see graphs of patent applications filed for inventions made in the USA. My guess is that it has fallen since 2012.

  4. Kevin R. August 8, 2018 2:54 pm

    I have little problem with an annual ($250) fee to the USPTO if they provide free, on-demand CLE webinar videos updated every two-three months.

    The media hosting would be simple. The request to stay current on the law would be reasonable. No need to get CLE factories involved. The quality of webinar would be consistent to examiner training–for better or worse–and would be a chance for transparency.

  5. Valuationguy August 8, 2018 3:13 pm

    Just another tax…..

    Considering no one (in gov’t) is talking cutting gov’t spending….they have to get the revenue from somewhere….

    If the Fed require licensing for every profession….they can merely raise licensing fees just for letting people work…while the gov’t provides no additional value whatsoever. (Doesn’t look like the PTO’s disciplinary office provides any value anyway based on your article.)

  6. Anon August 8, 2018 3:17 pm

    Second, patent agents are not required by state bar associations to take any CLE.

    I have touched upon this topic previously (without success of generating any meaningful dialogue), but patent agents present FAR BIGGER issues than merely CLEs (think nearly ALL attorney ethics issues, and certainly those related to absolute zero requirements for understanding any state laws, any laws regarding agency, contract, or tort, and certainly not least, any requirements that state boards may impose for the handling of client funds).

  7. EG August 9, 2018 8:11 am

    Hey Anon,

    I concur in your concerns as it relates to some (but not all) patent agents, especially those who simply take and pass the patent bar exam simply to punch that ticket for their resume, but never actually engage in patent practice.

  8. Night Writer August 9, 2018 8:59 am

    @6 Anon. I agree, but now it is only a public right.

    We aren’t securing property, but merely helping them with a granting of a public right from an administrative agency.

  9. CP in DC August 9, 2018 9:19 am

    Requiring continuing LEGAL education is not a bad idea, but lets make it for all.

    Like Anon says, patent agents too. But why stop there, examiners, PTAB judges, and anyone practicing patent law should be held to the same standard. Even government lawyers must have some state bar certification, they’re not exempt.

    If a “registered practitioner” (semantics from the PTO to exclude its own) must have CLE (and the necessary fee) to practice before the PTO, then naturally those on the other end should also know all the laws, rules, ethics, etc. required to practice. I’m sure examiners with their ample “expertise” will have no problem passing the test:
    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.

    Because, of course, we want to “assure the public” that examiners and PTAB judges maintain their competence and certify their scrutiny of those materials by examination. Spare me… Given the high rate of reversals of ex parte appeals at the PTAB and PTAB decisions at the Federal Circuit, the PTO will have to find a way to keep those “practitioners” working after failing the test(s).

    As to the fee, it’s like any other state bar that charges you annually and provides you with nothing. Why do you think the ABA is losing money? Yes, it’s voluntary, but no one joins when nothing is provided. The same here. Unless the PTO can prove it provides value, we all see this for what it is, another tax on the practice. If they want to test competency, then test it for all without exceptions.

    Maybe this way, the PTO can provide those “registered practitioners” a minimal level of faith that the PTO actually KNOWS what it’s talking about.

  10. interesting August 9, 2018 10:25 am

    A couple interesting thoughts here in the comments.

    I think it would be fantastic if the PTO held like quarterly training/review sessions, with required attendance by examiners, and require practitioners to attend 2 a year or something. Talk about updates to the law and examination practice. Get everyone on the same page, or at least get everyone arguing about the same things. It would be enlightening for examiners to see issues that practitioners have to deal with, and vice versa. Make it part of the PTO budget.

  11. The Professor August 9, 2018 10:27 am

    Why don’t they do something about the unauthorized practice of law that is increasingly prevalent, rather than picking on registered practitioners? I’d contribute $200/yr to that effort.

    This proposal is so typical of the government. Place requirements on others, but don’t take action that requires work on their part.

  12. Chuckles August 9, 2018 10:37 am

    1. Unless there is a specific law requiring all those funds to go to OED, those funds would just end up in the USPTO general budget, Congress would take its share for the US general budget, and maybe a little of it might eventually trickle down to OED. Government promises are worth very little, if anything.
    2. Is the OED so inefficient that it needs that much from every person? The Federal courts have fewer people registered to practice, and the dues are only around $50 for a five-year period.
    3. Just another tax by another name.
    4. With most corporations treating patents and patent attorneys as fungible items, I would not recommend being a patent attorney to anyone. The heyday of being a patent attorney (prep and pros) is over and done.
    5. Of course, maybe the increased fees would drive some attorneys out of the practice and, if the number of practicing prep and pros attorneys drops low enough, then maybe respect and rates would go up again. Nah. I’m just dreaming.

  13. Delbert August 9, 2018 11:01 am

    Nobody wants to join the ABA because it is a leftist organization.

  14. ghost August 9, 2018 11:04 am

    I agree with CP’s comments. As an agent, I am not required to take CLE in any state. Of course, that makes sense. I ONLY practice patent law, which is a federally granted license not state. I don’t think it’s unreasonable to require some level of CLE for patent agents, but I do think that whoever decides what is required thinks long and hard about what’s relevant and practical. And it would be great if both sides of the prosecution coin were required to be on the up and up.
    In addition, what exactly would this fee do other than to pad the USPTOs funding? If the goal is to reduce the number of registered practitioners, this is a good start but why? But if there’s method to that madness, it’s not clear that charging an annual fee would achieve anything beneficial. If it’s intended to target the people who just stay registered because they can, then do the CLE requirement but not the fee. If the USPTO intends to provide CLE for the cost of the fee, then make that clear now because I’m going to oppose it and so is everyone else if there’s nothing but a tax and no benefit.
    Mr/s. Anonymous above is mistaken about how problematic patent agents are. I would hazard to guess that the vast majority of patent agents aren’t freelancing fools scamming clients and snubbing ethics. At least not any more than the population of patent attorneys are. Think of us as patent attorneys who only practice patent law–without the law school debt. Many of us actually get CLE because it’s the right thing to do, but don’t get it recorded because we don’t need to get it recorded. In fact, many of us would welcome CLE requirements so that our employers might consider paying for additional CLE instead of having to rely on free CLE or paying out of pocket. Also, for what it’s worth, I am actually more on top of changes in patent law and practice than the patent attorneys I work with and I’m often the one who keeps them up to date.

  15. Michael E. McCabe, Jr. August 9, 2018 11:27 am

    I agree with Anon’s observation about the need for patent agents to get mandatory continuing legal education. These folks–who number over 10,000 from what OED tells me–often have no training whatsoever in the Rules of Professional Conduct by which their conduct is bound. And those Rules require a baseline understanding of how client relationships are formed, the duties that arise from those relationships, how money is to be handled, how conflicts are to be identified and resolved, etc. Those people are at the mercy of getting caught engaging in unethical practices which they had no clue were unethical out of, essentially, ignorance. I have represented many, many patent agents who hang a shingle ultimately to be investigated and disciplined (sometimes quite severely) by the OED. And while there is no guarantee that they would have done anything differently, at least they should have been–and in my opinion should be–required to demonstrate at least some minimal understanding of legal ethics.

    The OED is the only line of defense between the patent agents and the public. And while it is laudable that they test on minimum competency on patent practices and procedures, I think that improvement is needed where it comes to requiring that prospective licensees be required to demonstrate, as part of the admissions process, at least a baseline understanding of the key ethical concepts before they get their license. Agents should not be exposed to these crucial issues for the first time when they become the target of a PTO/OED ethics investigation–by then, it is usually too late for them.

    Attorneys in most states are required, separate from their bar exams, to take and pass the Multistate Professional Responsibility Exam. That is a 2-hour multiple choice exam administered by a 3rd party. How difficult would it be to require agents to take and pass the MPRE as a condition for admission to the Patent Bar? After all, these people are getting a license to practice law. And they are getting that license without having to take a single class from law school: all they are tested on by the PTO are the technical rules of practice before the Office in patent matters. These people are being set up to fail, in my experience having consulted with way too many patent agents than I care to say.

    Whether the PTO’s CLE proposal passes or not (and it seems it is several years out at best), that proposal does not, in my view, address a core problem of patent agents who are licensed to practice law, who are subject to the same duties and responsibilities that lawyers owe to clients and the public, all without having so much of a clue about the most rudimentary concepts about the duties that come with that license. I wrote about this issue last year: “Mandatory Ethics Training for Patent Agents is Long Overdue” posted on my IP ethics blog on July 17, 2017. And I don’t believe that allowing a practitioner to opt out of mandatory ethics training by paying a (slightly) higher fee is the answer.

  16. Anon August 9, 2018 11:37 am

    EG @7,

    I sense mutual agreement, but would posit that your reply may actually represent a portion that I am NOT concerned with: those not practicing. Instead, my concerns are with the opposite people: patent agents who may obtain the right to practice, and then go out and practice on their own outside of interactions with attorneys who may know, appreciate, and apply all of the other areas of client interactions (and ethics therein) per any particular State Bar controlled environment.

    In past attempts at dialogue, I have referenced the Supreme Court ruling indicating that Florida could not control a patent agent due to the patent agent’s work being of a Federal nature. Those who may become registered patent agents (but do not practice) are just not in the “danger” that I envision because they are not practicing. (Upon consideration, I do reflect that I may be misreading your reply – and that we may also have agreement on this point).

    Night Writer @8,

    Your point is recognized – and I would be remiss to not note that I have over the past several years explicitly remarked on how changing the very basic core nature of a patent from a PRIVATE personal property right to a PUBLIC franchise property right will necessarily unfold and impact many other areas of patent law (for example, Franchise rights may have different exhaustion impacts that private personal property sales).

    Greg Delassus has been notoriously absent from discussing this critical change in nature of a patent. His point has been that a (Public) Franchise right is still a property right. While that may be true, it is only a half truth, as the path to the change to Franchise critically involved the notion of “Public” which is in apposition to the Lockian nature of patents as a grant of a patent secures the inchoate PRIVATE personal ownership with legal effect. Greg has bristled at the notion of “Franchise” carrying with it the modern version of having franchisees and franchisors, but the modern path – critically depending on the notion of “Public” carries with it those notions of Franchisee and Franchisor, and the NEW notion that a grant of a patent is NOT the fruition of the inchoate private personal ownership, but instead is merely the creation of a government franchise agreement – with the government retaining the role of the Franchisor.

    See, for example: http://www.businessdictionary.com/definition/franchisor.html

    CP in DC @9,

    I love your thoughts on “reciprocity.” It is only far too often that I have run across examiners who not only do not know or understand how to apply the law, but take such a lack of understanding to fight MY proper application of the law. Your point here is exceptional: let’s take the Office at its word for the “good” that should come from what they want to do (and the reason that they want the money) and APPLY that “want good” reasoning across the board and especially where an application would have real benefits. The phrase “put your money where your mouth is” comes to mind…

  17. Emil Ali August 9, 2018 12:07 pm

    This is welcome news, albeit very far from fruition. The disclosure to PPAC is the first step in a long process. As many are aware, the regulatory framework for the CLE and Annual Fee was removed in 2013, and would need to be put forth in a new NPRM. During that time, registered practitioners should bring forth their comments, including who should be subject to the CLE and Annual Fee requirement.

    While having another Annual Fee and CLE is another headache for many of us, registered practitioners can comment regarding allowing the USPTO to accept CLEs from other states and having requirements that are simple and easy to comply with.

    As CP in DC mentioned, the interpretation of registered practitioner excludes many examiners who have never sat for or taken the registration exam. The Annual Fee and CLE requirement will likely also exclude PTAB judges and every other registered patent attorney that is administratively inactive pursuant to 11.11(c)(1). I for one would support the CLE requirement for administratively inactive (government employees).

    I would also love to see OED more involved in proactive management-based regulation, especially as it relates to solo practitioners and patent agents.

  18. Bruce Young August 9, 2018 2:02 pm

    I will point out that according to presentations I have seen from the OED, the rate of problems from Patent Agents is no higher than for Patent Attorneys. That being said, I think that annual CLE related to patent law and/or ethics should be required of all registered practitioners. What I don’t understand is why they would allow a practitioner to avoid CLE by simply paying a higher fee. That makes no sense to me. E

  19. Anon August 9, 2018 2:08 pm

    Passed in transition (and certainly no sleight intended),

    ghost @14,

    I was talking at a larger scale general level and fully permit that such as yourself may well exist. It would not be the first time that exceptions prove the rule though, and for every person such as yourself there are others along a spectrum of those that simply do not know to those that do not care as to the OTHER facets of practicing law (even constrained to a mere sliver of Federal law of patents) that simply are not taught, checked, or controlled with the mere Federal level of becoming a patent agent. It is NOT a matter that patent agents ARE “freelancing fools” as it is a matter that nothing prevents such “freelancing fools” in a practice of law (in contrast that ALL attorneys at least have some mechanism in place to help reduce the incidence of “freelancing fools.”

    Michael E. McCabe Jr., @ 15,

    I could not put finer details on the point that I wanted to make – my deepest thanks.

    A link to the article that you mention: https://www.ipethicslaw.com/mandatory-ethics-training-for-patent-agents-is-long-overdue/

  20. roro August 10, 2018 4:02 pm

    How is this even constitutional, separating one group of people (patent lawyers) and treating them different than all other people (other lawyers that practice in front of governmental agencies?

  21. Anon August 10, 2018 5:44 pm

    roro,

    How is this NOT constitutional?

    The separation you see is widespread practice – especially when one considers the ability to practice certain aspects (i.e., medical certifications if one is to practice medicine).

    You seem to be entertaining a fallacy that no sense of regulation is ever permissible.

    Discrimination (unlawful) does NOT occur in situations whole (but particular) professions are affected, but rather such is precluded based on (personal) characteristics within the larger class to which any such regulations are directed to.

    Unauthorized practice of law is forbidden across our entire system. Mind you, this is not the same as “representing yourself” and rather pertains to a person’s ability to represent another.

  22. LLDC September 7, 2018 6:32 pm

    The proposed fees are absolute BULL. E-mail your concerns to the Mensa members at the PTO: fee.setting@uspto.gov.

    Comments close on September 13, 2018.

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