Promulgating Requirements for Admission to Prosecute Patent Applications

Abstract

Among federal agencies, the U. S. Patent and Trademark Office is unique in its ability to require attorneys to submit to special requirements, such as passing a six hour examination, before being permitted to practice before it in patent cases. Indeed, the Supreme Court has held that an individual so admitted to practice before the PTO need not comply with state requirements otherwise applicable to those practicing law. The first part of this article discusses how this requirement came to be. It then discusses how the PTO determines whether an individual is fit to sit for the patent examination, focusing particularly on provisions contained in a bulletin mailed by its Office of Enrollment and Discipline (OED) to all would-be patent practitioners. It also briefly discusses rule-making requirements (and exceptions) generally applicable to federal agencies and examines the nature of the aforesaid provisions intended to affect admission to prosecute patent applications. This article concludes that the detailed provisions sent to applicants, fitting none of the rule-making exceptions, should be promulgated in accordance with the Administrative Procedure Act. It also concludes that, in the meantime, those provisions should not be regarded as binding on applicants to practice before the PTO in patent cases. Finally, the article contains an appendix that should be of particular interest to persons involved with software patents