2021-12149. New Implementation Date for Patent Practitioner Registration Statement and Continuing Legal Education Certification

AGENCY:

United States Patent and Trademark Office, Department of Commerce.

ACTION:

Notice of revised implementation date.

SUMMARY:

The United States Patent and Trademark Office (USPTO or Office) is delaying the implementation of the biennial mandatory registration statement required from registered patent practitioners and individuals granted limited recognition to practice before the USPTO in patent matters until November 1, 2024. However, beginning in the spring of 2022, registered patent practitioners and individuals granted recognition to practice before the USPTO in patent matters may voluntarily certify that they have completed six credit hours of continuing legal education (CLE) in the preceding 24 months.

DATES:

New Implementation Date: The USPTO anticipates that the registration statement will first be collected on November 1, 2024. The voluntary certification of CLE will commence in the spring of 2022.

FOR FURTHER INFORMATION CONTACT:

William Covey, Deputy General Counsel and Director OED, at 571-272-4097. Please direct media inquiries to the USPTO's Office of the Chief Communications Officer at 571-272-8400.

SUPPLEMENTARY INFORMATION:

Pursuant to the final rule, Setting and Adjusting Patent Fees During Fiscal Year 2020, 85 FR 46932 (Aug. 3, 2020), registered patent practitioners and individuals granted limited recognition to practice before the USPTO in patent matters may be required to biennially submit a mandatory registration statement. See 37 CFR 11.11(a)(2). The final rule also provided that registered patent practitioners and individuals granted limited recognition to practice before the USPTO in patent matters who have completed six credits of CLE in the preceding 24 months (including five hours of CLE in patent law and practice and one hour of CLE in ethics) may voluntarily certify such completion to the OED Director. 37 CFR 11.11(a)(3)(i). In the final rule, the USPTO anticipated that practitioners would first be required to submit a registration statement in the spring of 2022, and that patent practitioners would make the voluntary CLE certification, if desired, when submitting the registration statement. 85 FR 46932, at 46948.

On October 9, 2020, the USPTO published proposed CLE guidelines with a request for comments in the Federal Register, seeking public input on the guidelines. 85 FR 64128. The request for comments closed on January 7, 2021. The USPTO received 26 comments, addressing both the proposed CLE guidelines and the provisions of the final patent fee rule which establish the biennial electronic registration statement.

After considering numerous factors, the USPTO has decided to delay the implementation of the registration statement. The decision to delay is based, in part, on the USPTO's consideration of public comments received regarding the registration statement in response to the request for public comments on the proposed CLE guidelines. The USPTO's decision is also based on a close analysis of operational priorities and budget. The USPTO notes that delaying implementation of the registration statement will allow the Office to conserve resources by integrating the registration statement with other USPTO information systems. Based on these considerations, the USPTO anticipates that the registration statement will first be collected on November 1, 2024. Once a new date for collection of the registration statement is certain, the public will be given at least 120 days advance notice.

However, as stated in the 2020 patent fee rule, the USPTO will proceed with the voluntary CLE certification beginning in the spring of 2022. Prior to the implementation of the registration statement (i.e., prior to November 1, 2024), registered patent practitioners and individuals granted limited recognition to practice in patent matters before the Office may voluntarily certify their CLE completion in accordance with 37 CFR 11.11(a)(3)(i) by logging into the Office of Enrollment and Discipline Information System—Customer Interface (OEDIS-CI), available at https://oedci.uspto.gov/​OEDCI/​SignInServlet. As registered patent practitioners and individuals granted limited recognition to practice in patent matters before the USPTO already use the OEDIS-CI system to update other information with OED, the USPTO believes that it will be efficient and convenient for practitioners to make the voluntary CLE certification, if they wish, through this same system. The USPTO will issue more specific guidance and instructions for making the certification in subsequent months.

Andrew Hirshfeld,

Commissioner for Patents, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.