37 CFR 11.16 — Representation of Others Before the United States Patent and Trademark Office
Current through: 2024-07-01

Requirements for admission to the USPTO Law School Clinic Certification Program.

§ 11.16 Requirements for admission to the USPTO Law School Clinic Certification Program. (a) The USPTO Law School Clinic Certification Program allows students enrolled in a participating law school's clinic to practice before the Office in patent or trademark matters by drafting, filing, and prosecuting patent or trademark applications on a pro bono basis for clients that qualify for assistance from the law school's clinic. All law schools accredited by the American Bar Association are eligible for participation in the program, and shall be examined for acceptance using identical criteria. (b) Application for admission and renewal —(1) Application for admission. Non-participating law schools seeking admission to the USPTO Law School Clinic Certification Program, and participating law schools seeking to add a practice area, shall submit an application for admission for such practice area to OED in accordance with criteria and time periods set forth by the OED Director. (2) Renewal application. Each participating law school desiring to continue in the USPTO Law School Clinic Certification Program shall, biennially from a date assigned to the law school by the OED Director, submit a renewal application to OED in accordance with criteria set forth by the OED Director. (3) The OED Director may refuse admission or renewal of a law school to the USPTO Law School Clinic Certification Program if the OED Director determines that admission, or renewal, of the law school would fail to provide significant benefit to the public or the law students participating in the law school's clinic. (c) Faculty Clinic Supervisor. Any law school seeking admission to or participating in the USPTO Law School Clinic Certification Program must have at least one Faculty Clinic Supervisor for the patent practice area, if the clinic includes patent practice; and at least one Faculty Clinic Supervisor for the trademark practice area, if the clinic includes trademark practice. (1) Patent Faculty Clinic Supervisor. A Faculty Clinic Supervisor for a law school clinic's patent practice must: (i) Be registered under § 11.6(a) or (b) as a patent practitioner in active status and good standing with OED; (ii) Demonstrate at least 3 years experience in prosecuting patent applications before the Office within the 5 years immediately prior to the request for approval as a Faculty Clinic Supervisor; (iii) Assume full responsibility for the instruction and guidance of law students participating in the law school clinic's patent practice; (iv) Assume full responsibility for all patent applications and legal services, including filings with the Office, produced by the clinic; and (v) Comply with all additional criteria established by the OED Director. (2) Trademark Faculty Clinic Supervisor. A Faculty Clinic Supervisor for a law school clinic's trademark practice must: (i) Be an attorney as defined in § 11.1; (ii) Demonstrate at least 3 years experience in prosecuting trademark applications before the Office within the 5 years immediately prior to the date of the request for approval as a Faculty Clinic Supervisor; (iii) Assume full responsibility for the instruction, guidance, and supervision of law students participating in the law school clinic's trademark practice; (iv) Assume full responsibility for all trademark applications and legal services, including filings with the Office, produced by the clinic; and (v) Comply with all additional criteria established by the OED Director. (3) A Faculty Clinic Supervisor under paragraph (c) of this section must submit a statement: (i) Assuming responsibility for performing conflicts checks for each law student and client in the relevant clinic practice area; (ii) Assuming responsibility for student instruction and work, including instructing, mentoring, overseeing, and supervising all participating law school students in the clinic's relevant practice area; (iii) Assuming responsibility for content and timeliness of all applications and documents submitted to the Office through the relevant practice area of the clinic; (iv) Assuming responsibility for all communications by clinic students to clinic clients in the relevant clinic practice area; (v) Assuming responsibility for ensuring that there is no gap in representation of clinic clients in the relevant practice area during student turnover, school schedule variations, inter-semester transitions, or other disruptions; (vi) Attesting to meeting the criteria of paragraph (c)(1) or (2) of this section based on relevant practice area of the clinic; and (vii) Attesting to all other criteria as established by the OED Director. (d) Limited recognition for law students participating in the USPTO Law School Clinic Certification Program. (1) The OED Director may grant limited recognition to practice before the Office in patent or trademark matters, or both, to law school students enrolled in a clinic of a law school that is participating in the USPTO Law School Clinic Certification Program upon submission and approval of an application by a law student to OED in accordance with criteria established by the OED Director. (2) In order to be granted limited recognition to practice before the Office in patent matters under the USPTO Law School Clinic Certification Program, a law student must: (i) Be enrolled in a law school that is an active participant in the USPTO Law School Clinic Certification Program; (ii) Be enrolled in the patent practice area of a clinic of the participating law school; (iii) Have successfully completed at least one year of law school or the equivalent; (iv) Have read the USPTO Rules of Professional Conduct and the relevant rules of practice and procedure for patent matters; (v) Be supervised by an approved Faculty Clinic Supervisor pursuant to paragraph (c)(1) of this section; (vi) Be certified by the dean of the participating law school, or one authorized to act for the dean, as: Having completed the first year of law school or the equivalent, being in compliance with the law school's ethics code, and being of good moral character and reputation; (vii) Neither ask for nor receive any fee or compensation of any kind for legal services from a clinic client on whose behalf service is rendered; (viii) Have proved to the satisfaction of the OED Director that he or she possesses the scientific and technical qualifications necessary for him or her to render patent applicants valuable service; and (ix) Comply with all additional criteria established by the OED Director. (3) In order to be granted limited recognition to practice before the Office in trademark matters under the USPTO Law School Clinic Certification Program, a law student must: (i) Be enrolled in a law school that is an active participant in the USPTO Law School Clinic Certification Program; (ii) Be enrolled in the trademark practice area of a clinic of the participating law school; (iii) Have successfully completed at least one year of law school or the equivalent; (iv) Have read the USPTO Rules of Professional Conduct and the relevant USPTO rules of practice and procedure for trademark matters; (v) Be supervised by an approved Faculty Clinic Supervisor pursuant to paragraph (c)(2) of this section; (vi) Be certified by the dean of the participating law school, or one authorized to act for the dean, as: Having completed the first year of law school or the equivalent, being in compliance with the law school's ethics code, and being of good moral character and reputation; (vii) Neither ask for nor receive any fee or compensation of any kind for legal services from a clinic client on whose behalf service is rendered; and (viii) Comply with all additional criteria established by the OED Director. (4) Students registered to practice before the Office in patent matters as a patent agent, or authorized to practice before the Office in trademark matters under § 11.14, must complete and submit a student application pursuant to paragraph (d)(1) of this section and meet the criteria of paragraph (d)(2) or (3) of this section, as applicable, in order to participate in the program. [81 FR 33596, May 27, 2016, as amended at 88 FR 78650, Nov. 16, 2023]