Agents of Invention, Part 2
Welcome to another installment of Agents of Invention, our series exploring the exciting world of patent agents by the law library’s own T.C. Deveau. T.C. has a PhD in Neuroscience and has worked as a patent agent for almost 7 years. He’s currently in the final year of GSU Law’s part-time program.
(https://www.flickr.com/photos/82175587@N00/3280979916 licensed via creative commons).
In order to represent clients in patent matters in front of the USPTO, one must be a registered agent with the USPTO – either as a patent agent or attorney. The primary mechanism by which one becomes registered is by passing the USPTO Registration Exam (also colloquially referred to as the “Patent Bar”). Those interested in patent practice may have heard of this exam, and this post will provide guidance on how to sign up to take the exam.
You may be thinking – what exactly does it mean to represent clients in front of the USPTO? Generally, this means submitting documents related to patent applications and communicating with the USPTO. A more detailed definition is provided by the USPTO in 37 C.F.R. 11.5(b) and 37 C.F.R. 11.5(b)(1) for those that are curious.
(https://www.wikihow.com/Become-a-Patent-Lawyer#/Image:Become-a-Patent-Lawyer-Step-5-Version-5.jpg licensed via creative commons)
First, before one can sit to take the U.S.P.T.O. Registration, one must satisfy the eligibility requirements of the USPTO. To be eligible to sit for the exam, the USPTO requires: (1) good moral character; and (2) sufficient technical background and/or training to demonstrate technical expertise.
Satisfying the moral character portion is generally straightforward for applicants, involving a “yes” or “no” checklist to statements regarding things such as felonies, disciplinary reprimands, federal debt, etc., similar to what one has to deal with on a law school application.
If the answer is “yes” to any of the questions on the application, then a detailed statement explaining the circumstances is required. A heightened standard (and application fee) for applicants who previously: (A) faced convictions; (B) were disciplined professionally; or (C) were denied for “Lack of Good Moral Character and Reputation” is required. If one falls into one of these categories then one is not automatically disqualified, but subject to review based on the information provided on a case-by-case basis.
Satisfying the second eligibility prong – technical background – can be a little confusing. There is no “one size fits all” educational or experiential model that demonstrates technical expertise, so the USPTO has several categories that it lumps its requirements into – Category A, Category B, and Category C.
CATEGORY A: Bachelor’s Degree, Master’s Degree or Doctor of Philosophy Degree in a Recognized Technical Subject.
The following subjects are currently “recognized technical subject” areas by the USPTO. If your major in college, Master’s degree, or Ph.D. was in any of these subjects, then submit an official transcript showing award of the degree. The technical subject areas have been expanded in the last few years, and even expanded to include graduate degrees. The following list is current as of 2022:
CATEGORY B: Bachelor’s Degree, Master’s Degree or Doctor of Philosophy Degree in Another Subject.
For people that have a degree in a subject that is not explicitly listed in Category A above (at the time I applied, Neuroscience was not a recognized subject area so my application was a category B application), the USPTO will still qualify it if your transcript demonstrates one of the following options:
- Option 1: 24 semester hours in physics. Only physics courses for physics majors will be accepted.
- Option 2: 32 semester hours in a combination consisting of the following: Eight semester hours in a combination of chemistry and physics, with at least one course including a lab, and 24 semester hours in biology, botany, microbiology, or molecular biology. Only courses for science or engineering majors will be accepted.
- Option 3: 30 semester hours in chemistry. Only chemistry courses for chemistry majors will be accepted.
- Option 4: 40 semester hours in a combination consisting of the following: Eight semester hours in a combination of chemistry, physics, and/or biology, with at least one course including a lab, and 32 semester hours of chemistry, physics, biology, botany, microbiology, molecular biology, or engineering.
Unfortunately for individuals trying to qualify under this category, there is a lot more paperwork involved. In addition to an official transcript showing conference of the degree, a course description from the institution in the same year the course was taken has to be provided, as well at is showing a grade for that class (only grades of C- or better are accepted).
This category is a catch-all, and the USPTO provides more options than those explicitly listed above. For example, the USPTO, on a case-by-case basis, will consider teaching experience, other training, etc. If trying to qualify under this category, get in touch with the USPTO and consult with someone about exactly what they’ll want to see so it can be furnished with the application.
CATEGORY C: Practical Engineering or Scientific Experience.
This category is reserved for individuals that do not qualify under Category A or Category B, but have received a bachelor’s degree and passed the Fundamentals of Engineering (FE) test. The official FE results and official bachelors transcript showing the award of a degree must be submitted to the USPTO to qualify under this category.
Additional information can be found in the General Eligibility Bulletin here.
Fill out and Submit the Application
Alright – so now that you’ve read all the fine print and determined that you are eligible and collected any and all relevant paperwork, it’s time to fill out and submit the application. This part is generally straightforward, and the application is no-nonsense, and will be similar to other applications that you have filled out before.
An example application can be found with the General Eligibility Requirements, and hey, because it’s the 21st century, can even be filled out and filed online with the USPTO here.
The exam will have to be submitted with an application fee along with all the relevant documentation. After submission, it will be reviewed by the USPTO and approved or rejected, generally within about 14 days. If approved, proceed to register, if not, get in touch with the USPTO and they can help you rectify any application defects.
Register to Take the Exam
Unfortunately, you can’t simply register to take the exam. As we discussed above, you have to be approved to take it by the USPTO after demonstrating your eligibility.
After receiving your approval letter, you proceed to the Prometric website here to register and take your exam. This isn’t a “offered twice a year” type exam, and there will be just about any time of year you can sign up and take it.
The only caveat to registering for the exam is, after approval, you only have a certain amount of time to register and take the exam. This time period may range from about 90 days or more. The USPTO does know that life happens, and this time period may be extendable. It is extendable with the payment of additional fees to the USPTO, and note that prometric may also want a rescheduling fee.
90 days is probably a suitable preparation period for most but this is something to keep in mind. It’s not worth filling out and submitting the application if you plan to take it a year later, for example.
Currently, Prometric is the vendor but this may be subject to change.
The Exam Itself
The Exam itself is 100 multiple choice questions broken up into two 50-question/three-hour chunks. Only 90 of these questions are graded and 10 may be experimental.
Preparation and Study
The Registration Exam generally tests one on the laws, rules, regulations, and procedure of patent prosecution. These can range from to overcoming Examiner rejections, post-grant proceedings, and more mundane questions like “what can/can’t you fax into the USPTO?” Yes, you might be thinking it’s crazy for them to asking a question about fax in 2022, but, computers/computer systems are not infallible and there may be a time in practice where you have to actually snail mail and fax things into the USPTO. Some items the USPTO still won’t accept electronically either.
The Exam sources questions from the Manual of Patent Examining Procedure, the Code of Federal Regulations, and other sources, such as the Federal Register. The MPEP and CFR is where the overwhelming majority of questions will be coming from.
To prep and study for the exam, there are a variety of prep courses one can take. No, it’s not necessary to take a prep course, but, like the actual bar exam, you’re not going to find many practitioners out there that recommend a DIY “go at it yourself” approach. Most will say just suck it up and spend the money for the course and get to work.
There are a lot of advantages to prep courses too. One of the main ones is prep courses often have large proprietary question banks and computer software that emulates the display you will see on test day. This alone is worth the price of admission in my mind, because it tends to be an area where “practice makes perfect.” Prep courses also do the organizational work for you or organize the material in a readily digestible format and provide a study timeline.
GSU’s courses in Patent Law and Patent Drafting and Prosecution can be very valuable resources and help one prep for the exam as well. Definitely take them if you get the chance. These courses, however, are not a substitute for exam prep.
Please note no valuable consideration is provided by any outside source in writing the above advice; it is simply based on the author’s personal experience.
I’ve Taken the Exam – Now What?
After submitting your completed exam, you’ll immediately get a notification at the test center as to whether or not you passed. This is unofficial, and you should wait for the official USPTO communication to let you know, but I’ve not heard of anyone getting a pass at Prometric and an official notification or vice-versa.
This official notice from the USPTO generally comes 10-14 business days after the exam, but could be sooner or later. If you passed, congrats!
If you didn’t pass – not a big deal. It’s a tricky test with a low pass that is generally taken by very intelligent people. Not uncommon for people to have to take it more than once, especially people with technical backgrounds and no legal backgrounds. Hope back on the horse, re-apply (you don’t have to submit all the application addendums with the re-application), register to take it again, and get back to the books. You got this.
The Fine Print
Please keep in mind that the purpose of this blog post is a good faith effort to provide information relating to the exam. As anyone trying to be a patent agent or attorney should be aware, this blog post should be a guide, but should not be a substitute for doing your own due diligence. Please double check the official USPTO and Prometric guidelines before proceeding to apply for and take the exam.
Additional information regarding the USPTO Registration Exam can be found here:
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