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The US Patent and Trademark Office (USPTO) has made efforts over the past two years to increase diversity in the Patent Bar[1], and continues to consider those requirements, most recently with a Federal Register Request for Comments on “Expanding Admission Criteria for Registration To Practice in Patent Cases Before the United States Patent and Trademark Office.”

The Request for Comments states: “This request for comments seeks public input on the scientific and technical requirements to practice in patent matters before the United States Patent and Trademark Office (USPTO or Office). Specifically, the Office seeks input on whether it should revise the scientific and technical criteria for admission to practice in patent matters to require the USPTO to periodically review certain applicant degrees on a predetermined timeframe, and make certain modifications to the accreditation requirement for computer science degrees.

“This request for comments also seeks input on whether the creation of a separate design patent practitioner bar would be beneficial to the public and the Office, whether to add clarifying instructions 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) for limited recognition applicants, and whether the Office should make any additional updates to the scientific and technical requirements for admission to practice in patent matters. The USPTO is undertaking this effort as part of its continual review of the admission criteria for sitting for the registration examination.”

 

Narrow field of admission criteria

The GRB allows an applicant to provide proof of attaining a degree in certain subjects listed under Category A. 

Category A has considerably expanded since the early 1990s when I applied to sit for the exam, when, even with a PhD in molecular biology and genetics and two years of neuroscience graduate school, I was not qualified under Category A (biology apparently not being “technical” enough at that time). 

Alternatively, one can look to Category B, which lists numbers of semester hours in certain courses that would allow one to qualify.  I cobbled up all the chemistry and physics hours I could in order to qualify.

 

Article highlights USPTO's "outdated set of scientific and technical requirements"

Categories A and B have been broadened through the years, but it was not until an article was written in the fall of 2020 by a law student at Indiana University’s Maurer School of Law, Mary T. Hannon, that the USPTO picked up on the fact that its Categories were inherently biased against women. 

Mary T. Hannon begins this paper as follows:

“Qualified women are unnecessarily excluded from membership in the “Patent Bar” as a result of the perpetuation of an institutionally biased and outdated set of scientific and technical requirements by the United States Patent & Trademark Office (USPTO). While the USPTO has not failed to recognize the lack of equal gender representation among innovators in the United States, it has remained silent on the lack of gender diversity within its own patent bar. Still further, even when the gender gap within the Patent Bar has been acknowledged, there have been few, if any, attempts to abolish the systemic obstacles that seem to exclude women from participation.

“As will be appreciated by any patent practitioner, and as will be addressed in more detail herein, to be Patent Bar eligible in the United States, an individual must establish she has the requisite “scientific and technical” knowledge. While the reasons women are underrepresented in the Patent Bar are not due exclusively to these scientific and technical requirements, these eligibility requirements are unnecessarily exclusionary of women and are responsible, in large part, for the lack of female patent practitioners in the United States. This exclusion of women, as well as the pervasive silence and lack of acknowledgement thereof, is particularly troubling in a time in which there is a growing recognition of the lack of gender equality within the patent system as a whole.”

 

USPTO widened admission criteria in 2021

In apparent response to this paper, the USPTO sought comments on the Patent Bar qualifications in early 2021. 

This initiative sought to provide a more flexible approach in considering degrees not recited verbatim in Category A, where rigidly relying on the specifically recited degrees might discourage the involvement of women and others who are underrepresented in the innovation ecosystem. 

In the fall of 2021, the USPTO expanded Category A with respect to technologies and included advanced degrees, and revised Category B to be more flexible, with the inclusion of biology courses!! 

 

New "Design Patent Practitioner Bar"?

The current Request for Comments looks to broaden the consideration of computer science degrees, but also considers the possibility of establishing a separate “Design Patent Practitioner Bar”, the creation of which would most certainly expand the diversity of USPTO registered practitioners to include more women and others who are underrepresented in the innovation ecosystem. 

USPTO Director Kathi Vidal has made considerable strides in embracing and encouraging women to innovate, as has the World Intellectual Property Office (“WIPO”) in its “Closing the Gender Gap in IP” series.[2]

 

FICPI's view

FICPI’s DEIA committee is thrilled to see these initiatives in advance of the International Day of Women and Girls in Science on 11th February, as well as World IP Day on 26th April, dedicated to “Women and IP: Accelerating innovation and creativity.” https://www.wipo.int/ip-outreach/en/ipday/

 

 

References

[1] In the US, a patent practitioner can be a “patent agent,” who has a degree and/or coursework in particular areas and has passed the Patent Bar, or can be a “patent attorney,” who additionally has a law degree.  Both types of patent practitioners can practice before the USPTO, while only patent attorneys can practice in district court.  Trade mark attorneys in the US need only be registered in the bar of any US state (i.e. they have a law degree and have passed a state bar.)

 

[2] Tune in to a FICPI Focus 45 webinar on 8th March 2023, when Lisa Jorgenson, WIPO’s first female Deputy Director General of the Patents and Technology Sector, will be participating in our webinar on Gender and Equity!

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FICPI is truly a global organisation with members from over 80 nations and territories across the world. Earlier this year we launched our Diversity, Equity, Inclusion and Accessibility committee which complements our commitment to DEIA through The Inclusion Project. 

The first step in the project was to create a group of FICPI members, the composition of which speaks to the diversity and inclusion that FICPI has already achieved.

The committee is starting to make recommendations on the opportunities, challenges and plans that would support FICPI’s ambitions to be a model professional member organisation in its support and implementation of the DEIA principles.

Identity: the importance of names

Our names hint at our roots, our cultural identity, our families and other intangibles while our pronouns and voices give further clues to our background and our chosen place in the world.

Our name campaign aims to encourage FICPI members to:

Voice record your name pronunciation using the LinkedIn’s feature: Tap your profile photo, then select View Profile. Tap the Edit icon from your introduction section. Select Record name pronunciation. Tap the Record button and hold to record your name Add your preferred pronouns on your LinkedIn profile  Add your preferred job title or role description Add an up-to-date photo Add pronoun and pronunciation information to your FICPI profile (log into the FICPI website to make any changes to your profile) If you’ve secured a place at this year’s FICPI Congress, add your pronoun and other information to your Eventmobi profile too!
  Share your qualifications and experience – check these are up to date across all the platforms too!

 

Make your voice heard

Get involved with FICPI’s DEIA committee and our work - find out more and see the whole list of committee members at: https://ficpi.org/commissions/deia-committee 

We’d love to hear from you - chat to us at the FICPI Congress or get in touch with Elia Sugrañes or Sharon Crane.

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It is important for countries like India, with diverse biological resources, to have regulations on access and use of biological resources. At the same time, the applicability of these regulations becomes equally important.  The “Biological Diversity Act” [henceforth referred to as “Act”] enacted in 2002, has gained a lot of attention in recent years in view of the National Biodiversity Authority’s (NBA) active enforcement of the key provisions of the Act.

Currently, all foreign entities engaged in research and commercialisation involving any Indian biological resource, have to sign benefit-sharing agreements even before initiating research. Further, if any intellectual property (IP) rights are sought involving such research, both Indian and foreign entities must enter into benefit-sharing agreements in lieu of permission by the NBA. Any such patent will remain pending until such time as the necessary permission from NBA is submitted to the Indian Patent Office. In addition, contravening the provisions attract criminal penalties. All this has led to widespread discussions on possible simplification and clarity in the Act.

To address some of the above concerns and to ensure that the Act is relevant in the current and future contexts, an amendment – Amendment Bill 2021 [henceforth referred to as “the Bill”] has been proposed before the Indian Parliament. The Bill proposes to provide relief on penal provisions, simplification of the approval process for Intellectual Property (IP) applicants, among other changes.

 

In this blog, we review some of the key proposed amendments:

 

Biological resources

At the outset, the Bill seems to have widened the definition of “biological resources” – it now includes plants, animals, micro-organisms or parts of their genetic material, derivatives (excluding value-added products), with actual or potential use or value for humanity. However, it does not include human genetic material. The proposed definition seeks to remove the term ‘by-products’ and replace it with the term “derivatives”. The derivative is further defined as ‘a naturally occurring biochemical compound or metabolism of biological resources, even if it does not contain functional units of heredity’. This amendment seems to have expanded the scope to include more components than what was noted previously.

 

Entities incorporated in India

The Bill further proposes to exempt entities incorporated in India from seeking approval from NBA before access for research, commercial utilisation or bio-survey and bio-utilisation, except when they are controlled by a foreign company within the meaning of clause (42) of section 2 of the Companies Act. This seems to provide flexibility as compared to the existing provision which mandates an entity having foreign participation to obtain approval before accessing the biological resource. Foreign company (as per Section 2 (42) of the Companies Act, 2013) means - ‘any company or body corporate incorporated outside India which - a) has a place of business in India whether by itself or through an agent, physically or through electronic mode; and b) conducts any business activity in India in any other manner’. Thus, there is a difference between “foreign-controlled” versus the current terminology, i.e. “foreign participation” which expands the ambit of the provisions to even those Indian entities which may have minor foreign stakes.

Another significant amendment to note is that it extends relaxation to companies registered/incorporated in India who will only require registration with the NBA, prior to obtaining grant of IP rights. However, the foreign entities will continue to require obtaining approval from NBA. Once an IPR is granted, both Indian and foreign entities will require prior approval from NBA for any commercialisation. Further, according to the proposed amendments, registration and/or prior approval will also apply to biological resources from India that are deposited in repositories outside India.

 

Alternative Indian medicine

The amendments further propose an exemption to registered AYUSH (alternative Indian medicine) practitioners along with local people and communities of the area, including growers and cultivators of biodiversity from providing prior intimation to the state biodiversity board when the biological resources are accessed for commercial utilisation for codified traditional knowledge, cultivated medicinal plants and its products. The Bill also clarifies that the biological resource and items derived from them, including agricultural wastes, when normally traded as commodities, cultivated medicinal plants and their products would not fall under the purview of the Act. This exemption however is applicable only to Indian entities. No such exemption will apply if biological resources are employed for obtaining IPR.

 

Change to penalties

Another significant change that the amendments propose is to withdraw the penal provision of imprisonment and limit the penalty only to a heavy fine.

 

Conclusion

Overall, the Bill provides clarity on certain points in the Act while providing exemptions for certain scenarios. However, the Bill still lacks clarity on value-added products which are currently defined as being products that may contain portions or extracts of plants and animals in unrecognizable and physically inseparable form. In the past, there has been a lack of agreement between applicants and NBA as to whether a particular biological resource/product is a value added product or not. It would therefore, be helpful to have some clarity (with examples) in the accompanying guidelines that may be issued once the Bill is approved.

Currently, the proposed Bill is under review by the Joint Committee of the Parliament based on the suggestions and recommendations provided by the public and stakeholders. We expect some tweaks at least in a few clauses mentioned in the Bill and hope to receive clarification (through Guidelines) for e.g., on terms such as ‘derivative’ and ‘value added products’. We do not expect significant changes in the proposed procedure to seek permission and/or approval for accessing/obtaining biological resources for research, commercialisation, or bio-survey and bio-utilisation as this is largely being viewed as a welcome change.  

 

Next steps Find out more FICPI's Study & Work Group on International Patent Matters Find out more about FICPI's Study & Work Group on Asian Issues   FICPI’s view and involvement  FICPI is the only organisation exclusively for independent IP attorneys. The organisation uniquely combines education and advocacy on topics around patents and trade marks, with a focus on developing the professional excellence of its individual members. FICPI brings independent IP attorneys around the world together to connect, share knowledge and grow.  Events such as FICPI’s 2022 World Congress offer the opportunity to attend plenaries, workshops and breakouts, and to meet and further discussions in congenial surroundings.

 

This blog is authored by Dr. Deepa Kachroo Tiku (click to see FICPI bio) together with her colleagues, Shivakumar R and Sridhar R.

 

Shivakumar R is a partner and patent attorney at K&S Partners, an Indian IP firm with offices in major Indian cities – New Delhi, Gurgaon, Mumbai, Bangalore, Chennai, and Hyderabad.

Shivakumar has over 16 years of experience in handling patents in biotechnology, microbiology, molecular biology, biochemistry, pharmaceuticals, biopharmaceuticals, material sciences and metallurgy, medical diagnostics, therapeutics, and nanotechnology. He comes with rich experience in managing vast IP portfolios for large companies. In addition, he counsels start-ups and MSMEs on how to strategically utilise their IP for their business needs.

Shivakumar is also an expert on Indian Biodiversity law, working statements, and restoration of lapsed patents.

 

 

 

Sridhar R is a senior associate and patent attorney at K&S Partners.

With over a decade of experience, Sridhar handles patent matters in the fields of biotechnology, therapeutics, biochemistry, microbiology, molecular biology, nanotechnology, and chemistry. In addition, Sridhar advises clients in matters of the Biological Diversity Act, including filing applications before the National Biodiversity Authority (NBA).

Read more about The Indian Biological Diversity Act: a review of the Amendment Bill 2021Log in or register to post comments

The National Council for Expanding American Innovation (NCEAI) includes leaders from industry, academia, government and non-profit organisations who are assisting the United States Patent and Trademark Office (USPTO) with developing “a national strategy to build a more demographically, geographically, and economically inclusive innovation ecosystem”, 85 FR 83906.  FICPI recently provided comments to the USPTO’s request for input for creating opportunities to expand the “innovation ecosystem to include all individuals, including those from underrepresented socioeconomic, geographic, and demographic groups”.  Id.   In response to the USPTO’s questions intended to guide the public’s comments, FICPI stressed the fact that the motivation to innovate should be encouraged during the earliest stages of education.  IP professionals should work with school systems to encourage the inclusion of “invention education” in the science curriculum and to promote early STEM education.  Working through their firms, professional associations, and individually, IP professionals can align with schools to provide lectures and webinars about innovation and the protection of inventions, and to provide hands-on learning by being involved in school activities that promote innovation, such as science fairs.  Likewise, IP professionals can align directly with practising teachers as well as those studying to be teachers in undergraduate and graduate programmes by encouraging the incorporation of “invention education” into teaching programmes.

With respect to developing inventors and entrepreneurs from underrepresented groups, FICPI noted that individuals who are not associated with large corporate or education institutions often do not know what patents are, and do not recognise that their inventions might be patentable.  To address this, FICPI suggested that awareness campaigns be directed to those underrepresented individuals, perhaps using already available tutorial videos, with access via a general diversity and inclusion website page.  FICPI also suggested that clinics could be offered where potential inventors would receive a limited number of hours of free consultation on their innovations and how best to protect them and bring them to market.  Organisations (e.g. incubators) devoted to small entrepreneurs do exist, and are often associated with universities or are located in other areas where innovation is occurring.  

The USPTO also noted that there exist barriers to innovation inclusion specific to underrepresented groups, and asked what supporting role government organisations should play in helping underrepresented groups overcome these barriers.  FICPI noted that members of underrepresented groups often do not have the confidence, or the “voice” to take credit for their innovations and express their desire to develop those innovations.  Often, they also do not know how to access investment that would assist them in the development and protection of inventions.  Encouraging these innovators, or potential innovators, to invent, and protect those inventions, is something that should be taught early, and government organisations should find ways to work with schools to educate on these issues and encourage creative minds.

Finally, the USPTO noted that inventors thrive when cultural and institutional barriers within workplaces are minimised or removed, and asked how can organisations remove these barriers to create an inclusive, innovative workplace culture.  FICPI responded that barriers to women and underrepresented populations often occur because these people have additional life responsibilities that take time away from education and/or professional development.  For women attorneys, their ability to get their billable work done and deal with family issues often precludes practice development and networking time.  Law firm management positions generally go to the highest billers, and hence, many women do not make it to the management level.  There needs to be a sharing of family responsibilities for women to be able to advance at the same pace as men.

FICPI’s view and involvement 

FICPI recognises that as a part of advancing its mission to promote the IP profession, it must actively engage with the educational system to encourage and promote “invention education”.  Moreover, FICPI seeks to encourage the inclusion and promotion of underrepresented groups, and recognises that diversity within the FICPI ranks leads to a deeper and richer experience for its members, for the governmental agencies with which it cooperates, and for the clients its members serve.

Next steps

Stay tuned for more information on FICPI’s efforts to make the association and the IP profession in general, more diverse and inclusive.

FICPI is supporting World IP Day on 26th April, the focus this year is on ‘taking your ideas to market’. 
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“Of all the arts, music stands out for its unique ability to transcend the limitations of language and form; it serves as a way to express the inexpressible, as explored in philosophy. Music communicates beyond words, languages, or even images,” declares Joana Fialho Pinto.

As part of FICPI's celebration of World IP Day 2025, whose theme is “Celebrating the beat of IP in music”, we interviewed a number of FICPI members for whom music is dear to their professional and personal interests.

Joana is a Trademark and Patent Attorney at Inventa in Portugal, whose work in IP allows her to foster the protection and promote creative innovation.

She explains, “This intersection of justice and artistic expression not only enriches my professional life but also provides me with personal fulfilment.”

The field is an exciting one.

Defending an iconic band against a trade mark application

Joana recounts her experience of defending an iconic band against a trade mark application for a wine product that attempted a wordplay on the band's name.

She describes how the band's name was already registered as a trade mark, and as a bonus, there had been a collaboration involving a wine project with another entity.

Joana details, “Additionally, the Portuguese trade mark office recognised the band’s trade mark reputation. Moreover, the PTO refused the application because the trade mark similarity infringed upon the band's artistic name, as it was used as part of the titles in the original works released by the group and protected by author's rights. Furthermore, using the (band’s) name without consent was considered another reason for refusal.”

Her interest in the field of IP as it relates to music was sparked by a profound appreciation for music and art in general, as well as a genuine respect for those who express themselves authentically.

Joana reminisces, “Early in my career I took a break from the legal path for an enriching engagement at a marketing and advertising agency. There I was surrounded by creatives and that broadened my horizons. After the break I felt compelled to return to law and was fortunate to discover intellectual property — an area I have been dedicated to ever since.”

The connection between legal protection and the artistic world forged through intellectual property rights is one which she finds immensely valuable.

She adds, “I appreciate the diversity of languages and cultures, valuing the opportunity to communicate and build connections, which aligns with my appreciation of intellectual property in a global context.”

Musical influences and artists

On a personal level, Joana is a child of the ‘80s with a fondness for the music of that era, whilst having grown up in an environment rich with classical music, leading to a truly eclectic mix on her Spotify which she can be heard singing along to in her car.

Joana adds, “My most meaningful musical experience was being part of the school choir as a teenager for several years, an experience I treasure deeply. Like team sports, choir participation offers a unique dynamic; the non-verbal communication that happens while singing is fascinating.”

Turning back to her professional life, Joana reflects on her focus on trade mark law and the intersection between trade marks and music-related matters:

“Firstly, artists leave an indelible mark on the world — the names of bands and musicians serve as distinctive signs that can be registered as trade marks. These trade marks provide essential legal protection for commercial distinction, ensuring exclusivity and facilitating the establishment and maintenance of reputation. While not replacing authorship rights, trade mark registration is relevant for securing the artists’ financial interests and market positioning, thereby empowering and motivating them to persist in their creative endeavours.

Secondly, I would highlight sound trade marks. Sounds and short melodies used as trade marks can distinguish products while forging profound emotional connections with consumers. Beyond their distinctive function, sound marks fulfil a secondary advertising role, often leveraged by contemporary marketers to craft a memorable and enduring presence in the consumer's mind. Sounds can help businesses differentiate their goods and services in the market while strengthening emotional connections with their target audience. This underscores the persuasive power of sounds and brief melodies in shaping consumer perceptions.”

The future of creativity and impact of AI

Reflecting on the impact of artificial intelligence on creatives in the music field, Joana comments, “The future of music and intellectual property poses significant challenges as music creation is being redefined in the era of generative AI. I also have concerns that algorithm-driven suggestions might stifle originality and experimentation. It is vital to maintain an appreciation for the "B-sides" of music, ensuring diversity and depth in artistic expression.”

Despite these challenges, Joana remains optimistic and has faith in human creativity.

She adds, “Global accessibility offers unprecedented opportunities for artistic inspiration, and the internet serves as a platform for undiscovered talents. AI holds the potential to free up more time for exploring and appreciating music. Therefore, there can be a promising future for both artists and audiences worldwide.

“For me, the significance of music lies in its power to evoke emotions and connect human beings, sparking shared feelings and fostering connections beyond the obvious. By enabling these bonds and a consequent sense of identification, music acts as an instrument of peace. Intellectual property ensures that creativity is nurtured and this vital form of human connection is preserved.”

This article is part of FICPI's collection of content for World IP Day 2025.   Next steps If you are interested in getting involved with FICPI's committees and working parties, find out more at: https://ficpi.org/organisation/committees If you're not yet a FICPI member, apply using our current accelerated process, in time to join us at the FICPI World Congress in Naples, Italy in October 2025. 

 

 

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