USPTO’s Drew Hirshfeld on Proposed Changes to Requirements for Patent Bar Registration: It ‘Just Makes Sense’

By Gene Quinn
March 22, 2021

“The USPTO is not going to address anything bigger [than this proposal] at this time…. If there is going to be a larger conversation about whether there is a need for a separate design bar, for example…it will be with public input and complete transparency.” – Drew Hirshfeld

Drew Hirshfeld

The United States Patent and Trademark Office (USPTO or Office) earlier today published a Request for Comments in the Federal Register asking for public input into proposed changes 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 (GRB). The Office is considering changing the criteria applicable in ways that would streamline the process for both applicants and the Office of Enrollment and Discipline (OED), the office within the USPTO tasked with administering the Patent Bar Exam and implementing the rules pertaining to admission to practice before the Office.

The changes contemplated by the USPTO make sense, but they do not go nearly as far as some will want. In recent months, debate has been developing regarding a desire to allow for a multitude of degrees traditionally held by women to qualify one to become a patent practitioner. The proposed changes do not directly address those issues, nor do they address making changes to or eliminating technical competency requirements for patent practitioners. Instead, what the USPTO is doing here during a transition between Administrations is to make administrative changes that should not be controversial.

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Categories and Proposed Changes

In order to become a patent attorney or patent agent, it is necessary to take and pass the patent bar examination. Only those individuals who can demonstrate technical and/or scientific competency are allowed to sit for the examination. The burden is placed on individuals applying for the examination to demonstrate that they possess the scientific and technical training necessary to provide valuable service to patent applicants. Notwithstanding, the Office had created a list of Category A degrees that presumptively qualify an applicant to sit for the patent bar exam. These degrees include biology, general chemistry, physics, electrical engineering, mechanical engineering and several dozen other degrees. Those who do not presumptively qualify with a Category A degree from an accredited United States college or university, or an equivalent bachelor’s degree awarded by a foreign university, typically turn to Category B, which provides four separate options to demonstrate the required competency based on a defined number of credits in certain fields of study. For example, the quickest and easiest option B route is to take 24 credit hours of physics for physics majors. Alternatively, there is a Category C, which allows applicants to otherwise show competency through practical engineering or scientific experience, and has largely been reserved historically for those who have passed a Fundamentals of Engineering test, or from time to time a particularly determined Ph.D. candidate. If an applicant does not qualify under any of these categories, the USPTO will conduct an independent review for compliance with the scientific and technical training requirement.

As announced in the Federal Register Notice this morning, the USPTO is considering expanding Category A to include common Category B degrees that have historically led to applicants being allowed to sit for the patent bar exam, including aerospace engineering, bioengineering, biological science, biophysics, electronics engineering, genetic engineering, genetics, marine engineering, materials engineering, materials science, neuroscience, ocean engineering, and textile engineering. The Office is also considering accepting advanced degrees (i.e., master’s and doctoral degrees) under Category A. Finally, the Office is also considering accepting a combination of core sciences under Category B, Options 2 and 4, so long as one of the core science courses has a lab component.

“These changes make sense, and they streamline the process,” said Drew Hirshfeld, Commissioner for Patents at the USPTO, when speaking with IPWatchdog about the Federal Register Notice. “This is more of an administrative update for things that do not seem controversial.”

Hirshfeld, who has been Commissioner for Patents for over five years and recently had his appointment renewed for another five-year term, is presently acting with the authority of the Under Secretary of Commerce for Intellectual Property and Director of the Patent Office. Hirshfeld will occupy this temporary position until such time that President Biden’s eventual nominee is confirmed by the Senate, upon which Hirshfeld will return to his position as Commissioner for Patents.

Why Now?

During this time period where there is no confirmed political leader in position at the  USPTO, protocol dictates that the career official vested with the powers of the Director tend to Office business but not engage in large initiatives or shifts in agency policy. Essentially, the business of the Office is to keep going until such time as the new President puts his person in position. These proposed changes are not shifting Office policy or making new rules. Rather, the resulting proposal now out for public comment seeks to make it much easier for those with advanced degrees to qualify for admittance to the patent bar, and to seek the input of the public  regarding whether the requirement that labs in sequential semesters for certain Category B options be maintained.

“The USPTO is not going to address anything bigger [than this proposal] at this time,” Hirshfeld told IPWatchdog. “If there is going to be a larger conversation about whether there is a need for a separate design bar, for example, if that goes forward, it will be with public input and complete transparency.”

When asked “why now?” Hirshfeld reiterated that these changes “just make sense, so we should do them because they make sense.” But why not wait and make smaller and larger changes all together? “We should never stand in the way of doing the right thing,” Hirshfeld explained.

My Take

Indeed, for what it is worth, having spent almost an entire generation (21 years and counting) teaching would-be patent practitioners how to take and pass the patent bar exam, I think the changes suggested by the Office are not controversial and should be easy to approve. Truthfully, these changes should not make a significant difference with respect to who can demonstrate the scientific and technical competency required to sit for the registration examination, it just alleviates needless administrative burden for many, and for the Office.

The degrees that the Office is contemplating adding to the Category A list are hard core science and engineering degrees, and they should be in Category A. Their absence in Category A hasn’t stopped anyone from becoming a member of the patent bar, it just made the applicant go through the additional steps of providing course descriptions as they existed at the time classes were taken in order to satisfy Category B, and then required OED to review those course descriptions to determine eligibility to sit for the registration examination.

Adding advanced degrees to Category A makes sense provided the degree matches one already on the Category A list. The historical reason advanced degrees were disregarded was because of the existence of degree mills once upon a time that would grant “engineering sounding” degrees that were really glorified business degrees. So, as long as the advanced degree is a scientific or engineering degree, it absolutely should qualify under Category A to demonstrate the requisite scientific and technical qualifications to sit for the patent bar exam.

I’m less certain about the need to do away with two sequential labs for certain Category B options and will be keenly interested in the public comments. The proposed change should make it easier for some computer science majors to qualify. However, I have long said that the single best way to pick a good patent practitioner is to know how they performed in labs. If they did OK in the classroom and great in labs that suggests they knew enough to know what was going on and had the ability to explain what they had done and why the results obtained were achieved—something rather uncommon for many engineers and scientists, but absolutely essential for a patent practitioner. So, I’d be inclined to require more labs, not fewer.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. 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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 21 Comments comments. Join the discussion.

  1. Anon March 22, 2021 2:22 pm

    Well reasoned response, Gene.

    Thank you.

  2. BP March 22, 2021 4:08 pm

    Agreed, nice job by Gene.

    An area of “Master of Science” degree proliferation has been in “environmental” (e.g., MS in Environmental Studies). Here’s an example: “biologically grounded ecology course(s) should have been taken as an undergraduate . . . if not, students are required to take one”. Thus, seems like someone can get a “Master of Science” degree with a single, undergraduate science course.

    Glad to see that the to be published Request for Comments steers clear of such “MS” degrees. That said, many environmental engineering programs arose from civil engineering and/or chemical engineering. A BS, BEng or advanced degree in legitimate environmental engineering should be worthy as a Category A.

  3. John White March 22, 2021 5:57 pm

    Great article. Good presentation of reasonable extensions of existing policies. Thanks Gene.

  4. Night Writer March 22, 2021 6:06 pm

    Education matters and spending time understanding science matters. The people in my firm typically have a MS or Ph.D. in science and have spent 10+ years studying science. That is the type of experience that makes good practitioners.

    We’ve seen the type of ridiculous opinions that come from the CAFC judges that know nothing about technology or science. We should tougher up the requirements if we want higher quality patents.

    The patent firms with the highest quality ratings also have high high standards for science training.

    But I would still like to see example backgrounds that would be eligible under this plan that are not eligible otherwise.

    Frankly, India and China patent people are now doing an awful lot of the patent work at 1/3 the cost the US firms do the work.

  5. Night Writer March 22, 2021 6:08 pm

    I also have never liked Drew Hirshfeld. I’ve listened to him and read a lot of his stuff.

    I think he is in over-his-head in running the USPTO and should make no changes.

    And this strikes me as a political move to boost his own personal standings.

  6. Pro Say March 22, 2021 6:48 pm

    Two thoughts:

    1. Any reason why nominees for the patent-specialty, innovation-critical CAFC shouldn’t have (at least) the same technical educational requirements . . . as that required of Patent Bar applicants?

    2. Re: “India and China patent people are now doing an awful lot of the patent work at 1/3 the cost the US firms do the work.”

    Would you (is anyone?) rely on such . . . for critical, bet-the-company innovations?

  7. ipguy March 22, 2021 7:22 pm

    @3
    “We’ve seen the type of ridiculous opinions that come from the CAFC judges that know nothing about technology or science.”

    They’re not required to, nor are the patent litigators who argue before US District Court Judges and Federal Circuit judges.

    The article is about patent bar registration requirements. Not requirements for being a US district or appellate judge.

  8. GDC March 22, 2021 9:13 pm

    I think the changes are necessary and should go further, honestly. To date, I have never understood how an mechanical engineer, for instance, could have the credentials to sit for the pat bar (pass it) and handle botany or big pharma patent matters by simply having the engineering degree but no experience/expertise in biology. The gate keeping for qualifying & sitting for the pat exam is unnecessarily onerous.

  9. Louis Iselin March 22, 2021 11:37 pm

    For a change, I think I agree with all of Gene’s comments.

  10. Night Writer March 23, 2021 7:43 am

    @6 ipguy “They’re not required to, nor are the patent litigators who argue before US District Court Judges and Federal Circuit judges.”

    No kidding. Are you intentionally being obtuse? The point is clear that so many of the problems now in patent law are caused by people that don’t understand science and we don’t need more of those people.

  11. PeteMoss March 23, 2021 8:17 am

    I am only guessing, but I feel more patents are invalidated because the practitioner knows precious little about the prior art, and not because the written description is technically faulty. I have a Category A degree, which is better than a sharp stick in the eye. However, the underlying degree, regardless of category or level, is useless if the practitioner lacks imagination and does not study the prior art. I know some very nice, very smart people, with advanced Category A degrees from prominent schools, who I would not hire to write a parking ticket. Mere scriviners.

  12. AAA JJ March 23, 2021 10:07 am

    The “patent bar” is an unnecessary relic. Get rid of it entirely. Let any attorney in good standing with the bar of any state/DC/territory practice before the PTO. Get rid of agents. They have no legal training and should not be practicing.

  13. Albert Keyack March 23, 2021 6:08 pm

    I practiced with someone with a BSN from an Ivy League school. They had to take some freshman year Physics and Math to qualify. To Gene’s excellent point, the OED completely discounted the lab time spent on rotation in hospitals which was far more valuable for patent drafting than solving differential equations.

  14. ipguy March 23, 2021 8:04 pm

    @10

    Thank you for proving MY point.

  15. Josh Malone March 23, 2021 10:21 pm

    Woukd it be possible to prohibit lawyers from practicing patent law?

    All kidding aside, U.S. patent law practice is indistinguishable from the trial in Alice in Wonderland.

  16. Night Writer March 24, 2021 5:33 am

    @12 AAA JJ

    Yes this makes sense.

  17. Anon March 24, 2021 10:52 am

    Night Writer,

    Same question to be put to you that was put to AAA JJ on another blog (to which, AAA JJ refused to try to provide a meaningful answer):

    https://patentlyo.com/patent/2021/03/become-patent-attorney.html#comment-578335

    In other words, how in the world would the niche area of patent prosecution be better by getting rid of patent agents (who have passed the screening test), and turning around and opening up the niche area to ANYONE that ONLY has a law degree?

    Are you not aware that MOST ALL OTHER attorneys have NO sense of technology, with a HUGE percentage coming from the Liberal side of education, steeped in ANTI-logical thinking?

    AAA JJ’s view is a sure fire way to make things worse.

  18. AAA JJ March 24, 2021 11:54 am

    “Are you not aware that MOST ALL OTHER attorneys have NO sense of technology, with a HUGE percentage coming from the Liberal side of education, steeped in ANTI-logical thinking?”

    A front runner for most ignorant and ridiculous comment ever posted on the internet.

  19. Anon March 24, 2021 3:18 pm

    Absolutely not, AAA JJ.

    You are as wrong as can possibly be here. But let’s be clear: merely using technology does not count as having a sense of technology for the discussion at hand.

  20. B March 26, 2021 8:10 pm

    @ Night Write, ipguy “We’ve seen the type of ridiculous opinions that come from the CAFC judges that know nothing about technology or science.”

    I’d be happy if the CAFC judges at issue knew the difference b/t an assertion of fact supported by the record and their personal opinions, and read the various appellate decisions said judges supposedly wrote.

  21. ipguy March 29, 2021 3:55 pm

    @21
    Judge Newman knows the difference.

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