Under the direction of Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, that agency has made great strides to improve diversity both within the USPTO and in the innovation ecosphere at large.

The USPTO website aptly states:

“At the USPTO, we know that the broad diversity of our country is the number-one reason our nation continues to be inventive and innovative. This diversity drives our arts and culture, and our economic vitality and growth. But we are not unique and we are not doing enough. Most of the world recognizes the importance of diversity in developing solutions to the world’s most challenging problems. Most of these problems are common to all of us.1"           

On the innovation side, Director Vidal’s efforts have led to the creation of the Women’s Entrepreneurship (WE) initiative2 and the Council for Inclusive Innovation (CI2)3. On the practice side, the USPTO’s efforts began with expanding opportunities to practice before the agency by evolving the admissions criteria for the patent bar.  

On October 18, 2022, the USPTO published a Federal Register Notice (FRN)4 requesting public input on whether to modify the scientific and technical criteria for admission to practice in all patent matters. To date there have been three categories of technical and scientific qualifications that allow applicants to be eligible to sit for the registration: (1) Category A for specified bachelor’s, master’s, or PhD degrees; (2) Category B for other bachelor’s, master’s, or PhD degrees with technical and scientific training; and (3) Category C for practical engineering or scientific experience. In response to the public comments, the USPTO published a FRN5 implementing the changes including: 

(1) requiring the USPTO to review certain applicant degrees in Category B every three years to determine whether they should be moved to Category A, (2) making a modification to the accreditation requirement for computer science degrees such that all Bachelor of Science in computer science degrees from an accredited university or college will be accepted under Category A, and (3) providing clarifying instructions to applicants for limited recognition.

Director Vidal stated that “[e]xpanding the admission criteria of the patent bar will encourage broader participation and keep up with ever-evolving technology…This is part of our effort across the Agency to deploy and keep up with the fast pace of technological change and to lower barriers to our innovation ecosystem.6” 

These changes are now reflected on the USPTO’s website7. 

A further effort to expand opportunities to practice at the USPTO was the creation of a design patent practitioner bar.  On May 16, 2023, the USPTO published a FRN8 proposing its creation, and after receiving public comments, the USPTO implemented the design patent practitioner bar, wherein admitted design practitioners would practice solely in design patent matters9 as published on November 16, 2023.  Admission to the design patent bar requires that an applicant have a bachelor’s, master’s, or doctorate degree in one of the following areas (or its equivalent): industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, or art teacher education.  Applicants for registration to practice in design patent matters only have to take and pass the current registration examination and pass a moral character evaluation in order to be registered10. 

Most recently, on February 20, 2024, the USPTO issued a Notice of Proposed Rulemaking (NPRM)11 to amend the criteria that individuals must meet to practice before the Patent Trial and Appeal Board (PTAB). Previously, only members of the USPTO patent bar were eligible to appear as lead counsel in America Invents Act (AIA) proceedings involving third-party challenges to issued patents. Other attorneys could appear if granted permission in a specific proceeding, and were limited to acting as backup counsel. To expand these opportunities, the Office proposed giving parties the option to designate non-registered practitioners whom the PTAB has recognised on a pro hac vice basis as lead counsel, allowing parties to proceed without backup counsel upon a showing of good cause, and establishing a streamlined alternative procedure for pro hac vice admission available when counsel was previously recognised pro hac vice in a proceeding. 

On October 9, 2024, the USPTO issued a final rule12 to amend the rules to allow parties to proceed without back-up counsel upon a showing of good cause, and to establish a simplified and expedited alternative procedure by which parties can request that a non-registered attorney be recognised pro hac vice. However, based on input received from the public13, the USPTO decided NOT to permit non-registered attorneys to appear as lead counsel, and instead proposed a pilot project under which non-registered attorneys who are recognised pro hac vice would be permitted, in certain circumstances, to appear as lead counsel14. The final rule became effective on November 12.

FICPI's view and involvement

FICPI is pleased that the USPTO continues to maintain high standards for practicing before the examining corps and the PTAB, and continues to value and encourage the specialised backgrounds required to be a competent and successful patent practitioner.

FICPI itself has been making great strides to increase diversity of its membership and representation of more diverse individuals on its committees and senior leadership. In the past few years in particular, this has been driven by FICPI’s DEIA Committee, and through the Presidency of Roberto Pistolesi, who early-on declared that encouraging younger IP attorneys to join FICPI was one of his goals.

Initiatives such as the Young IP Attorney of the Year and encouraging more diversity of speakers at platforms such as the FICPI Congress and Open Forum form part of this strategy. 

Next steps

 

Footnotes:

  1.   https://www.uspto.gov/about-us/news-updates/remarks-uspto-director-kathi-vidal-women-ip-diversity-and-inclusion
  2.   https://www.uspto.gov/about-us/events/womens-entrepreneurship-series-leading-purpose-women-making-difference
  3.   https://www.uspto.gov/about-us/news-updates/usptos-council-inclusive-innovation-launches-new-initiative-expedite-patent
  4.   https://www.federalregister.gov/documents/2022/10/18/2022-22569/expanding-admission-criteria-for-registration-to-practice-in-patent-cases-before-the-united-states
  5.   https://www.federalregister.gov/documents/2023/05/16/2023-10409/expanding-admission-criteria-for-registration-to-practice-in-patent-cases-before-the-united-states
  6. https://www.uspto.gov/subscription-center/2023/uspto-opens-opportunities-practice-agency-evolving-admissions-criteria
  7.  https://www.uspto.gov/sites/default/files/documents/OED_GRB.pdf
  8.   https://www.federalregister.gov/documents/2023/05/16/2023-10410/changes-to-the-representation-of-others-in-design-patent-matters-before-the-united-states-patent-and
  9.   https://www.federalregister.gov/documents/2023/11/16/2023-25234/representation-of-others-in-design-patent-matters-before-the-united-states-patent-and-trademark
  10.   ibid
  11.   https://www.uspto.gov/subscription-center/2024/expanding-opportunities-practice-ptab
  12.   https://www.federalregister.gov/documents/2024/10/10/2024-23319/expanding-opportunities-to-appear-before-the-patent-trial-and-appeal-board
  13.   Presumably including comments made by FICPI during a meeting with USPTO officials on April 17, 2024.
  14.   https://www.federalregister.gov/documents/2024/10/10/2024-23319/expanding-opportunities-to-appear-before-the-patent-trial-and-appeal-board

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