Patent Office Practice after the America Invents Act

Abstract

Currently, the Patent and Trademark Office (PTO) requires all lawyers practicing before it in patent matters to possess a hard science or engineering undergraduate degree. The relative obscurity of PTO practice has allowed this requirement to remain, mostly unnoticed, even though it bars most lawyers from practicing before the PTO. Like all administrative agencies, however, the PTO is subject to the requirements of the Administrative Procedures Act (APA). Although the PTO’s technical degree requirement may have once passed muster under the APA, this may no longer be the case. Congress recently made major changes to US patent law by passing the America Invents Act (AIA). The AIA at once makes PTO practice far more important and brings into question whether the PTO can continue to exclude the vast majority of lawyers from practicing before it. This article suggests that the increased importance of PTO practice after the AIA creates a strong incentive for attorneys to challenge the PTO’s admissions requirements under the APA and argues that such a challenge, when brought, will likely succeed.