Application for Law School Faculty Member to Become a Fa










Law School Application Packet
2020-2025 Expansion

















Table of Contents
I.
II.
III.
IV.

History ………………………………………………………………………………………………………………….2
Overview ………………………………………………………………………………………………………………2
Program Expansion ……………………………………………………………………………………………...3
Program Requirements …………………………………………………….……….…………………………4
Part A. Clinic Participation ……………………………………………….……….…………………………4
Part B. Law School Dean’s Certifications ……………………………………………………………..7
Part C. Faculty Clinic Supervisor(s) ………………………………………………………………………8
Requirements …………………………………………………………………………………………….8
Responsibilities ………………………………………………………………………………………….8
Participation and Change in Faculty Clinic Supervisor(s) ………………………....10
Part D. Law School Clinic Students …………………………………………………………………….10
Requirements …………………………………………………………………………………………..10
Student Applications and Limited Recognition ………………………………………..11
V.
Application Deadline …………………………………………………………………………………………..12
VI.
Application Review Process .………………………………………………………………………………..13
VII.
Notification and Acceptance into the Program …………………………………………………..13
VIII. After Acceptance into the Program ……………………………………………………………….……14
Renewal ……………………………………………………………………………………………………14
Reporting Requirements ………………………………………………………………………….14
Training Webinar ……………………………………………………………………………………..15
Visits to Law Schools ………………………………………………………………………………..15
IX.
USPTO Employees ……………………………………………………………………..................................15
APPLICATION ..…………………………………………………………………………….….........................................16
(1)
General Information …………………………………………………………………………………16
Part A. Law School …………………………………………………………………………………..17
Part B. Intellectual Property Curriculum ………………………………………………….17
Part C. Law School Clinic ……………………………………………………...........................18
Part D. Law School Dean ……………………………………………………...........................19
Part E. Law School Clinic Director ……………………………………………………………20
Part F. Faculty Clinic Supervisor(s) ...………………………………………………………...21
(2)
Requirements For All Law School Clinics …………………………………….................24
(3)
Additional Requirements for Patent Clinics (Patent Clinics Only)….………….26
(4)
Additional Requirements for Trademark Clinics (Trademark Clinics Only)..28



1








o Conflict of interest – certify that the school has a process that ensures that
no conflicts exist in the representation of clinic clients. This is a continuing
obligation throughout participation in the Program.
x

The law school, through the law school dean, or one authorized to act for the
dean, maintains a duty to update OED as to each participating law school clinic
student’s status should it change during the student’s participation in the clinic in
the Program.

x

The dean’s certifications are required any time new students are added to the
clinic for participation therein.

Part C. Faculty Clinic Supervisor(s)
Requirements
x

Faculty clinic supervisor(s) for patents must, at a minimum, be a registered patent
attorney or patent agent under 37 C.F.R. § 11.6(a) or (b) in good standing with
OED of the USPTO and possess at least three years of experience in prosecuting
patent applications before the USPTO within the last five years. See 37 C.F.R. §§
11.16(c)(1)(i) and 11.16(c)(1)(ii).

x

Faculty clinic supervisor(s) for trademarks must, at a minimum, be a licensed
attorney in good standing with the highest court of any state and possess at least
three years of experience in prosecuting trademark applications before the
USPTO within the last five years. See 37 C.F.R. §§ 11.16(c)(2)(i) and 11.16(c)(2)(ii).

Responsibilities
x

Faculty clinic supervisor(s) must ensure that a conflict of interest check is
performed for each participating law school clinic student and each client or
potential client of the clinic. See 37 C.F.R. § 11.16(c)(3)(i).

x

Faculty clinic supervisor(s) are responsible for instructing, mentoring, overseeing,
and supervising all law school clinic students participating in the clinic. See
37 C.F.R. § 11.16(c)(3)(ii).



8








x

Faculty clinic supervisor(s) are responsible for the content and timeliness of all
applications and documents submitted to the USPTO through the clinic. See
37 C.F.R. § 11.16(c)(3)(iii).

x

Faculty clinic supervisor(s) are responsible for all oral communications by the
participating law school clinic students to the USPTO and clinic clients. See
37 C.F.R. § 11.16(c)(3)(iv).

x

Faculty clinic supervisor(s) are responsible 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. See 37 C.F.R. § 11.16(c)(3)(v).

x

Faculty clinic supervisor(s) must discuss, review, and approve all documents
signed by participating law school clinic students from the participating law
school clinic prior to submission to the USPTO. Participation in the Program
requires that all submissions to the USPTO be reviewed and approved by a
faculty clinic supervisor(s) prior to filing with the USPTO.

x

Faculty clinic supervisor(s) are attorney of record on all patent and trademark
applications filed with the USPTO through the clinic.

x

Faculty clinic supervisor(s) must read and be familiar with the USPTO ethics rules
(see, 37 C.F.R. § 11.101 et seq.); the relevant sections of the USPTO’s procedural
rules; and the USPTO’s Program rules, requirements, and procedures. Faculty
clinic supervisor(s) must ensure that participating law school clinic students do
the same.

x

Faculty clinic supervisor(s) must maintain a written record of all documents
submitted to the USPTO through the clinic/Program by law school clinic
student(s).

x

Faculty clinic supervisor(s) must comply with the USPTO’s reporting requirements
for the Program. See 37 C.F.R. § 11.17(b).

x

Faculty clinic supervisor(s) for clinics participating in the patent portion of the
program must ensure that students who qualify for the patent portion of the
program based on design patent practitioner qualifications are restricted to
practicing before the USPTO in design patent matters only.


9








Participation and Change in Faculty Clinic Supervisor(s)
x

Faculty clinic supervisor(s) must be approved by OED prior to commencing as a
faculty clinic supervisor.

x

In the event a faculty clinic supervisor leaves a clinic, that faculty clinic supervisor
remains responsible for all pending applications filed by the clinic until that
faculty clinic supervisor properly withdraws from the clinic’s pending applications.
o It is best practice to have a new faculty clinic supervisor approved by OED
prior to the current faculty clinic supervisor withdrawing from the clinic’s
applications in order to prevent any gap in faculty clinic supervisors.
o NOTE: Any gap in faculty clinic supervisors will result in the clinic being
suspended from the Program until a new faculty clinic supervisor is
approved by OED. See 37 C.F.R. §§ 11.17(c)(1)(i) and 11.17(c)(2).

Part D. Law School Clinic Students
Requirements
x

Each participating law school clinic student must be enrolled in the participating
law school. See 37 C.F.R. §§ 11.16(d)(2)(i) and 11.16(d)(3)(i).

x

Each participating law school clinic student must be enrolled in the law school
clinic that is participating in the Program. See 37 C.F.R. §§ 11.16(d)(2)(ii) and
11.16(d)(3)(ii).

x

Each participating law school clinic student must have successfully completed
his/her first year of law school, or the equivalent. See 37 C.F.R. §§ 11.16(d)(2)(iii)
and 11.16(d)(3)(iii).

x

Each participating law school clinic student must have read the USPTO Rules of
Professional Conduct and the relevant rules of practice and procedure for patent
matters. See 37 C.F.R. §§ 11.16(d)(2)(iv) and 11.16(d)(3)(iv).



10








Part F. Faculty Clinic Supervisor(s)
Please provide OED with the following information and certification for each proposed
faculty clinic supervisor. Please provide a curriculum vitae and other relevant information
for each proposed faculty clinic supervisor.


Faculty Clinic Supervisor(s)




(One for each proposed faculty clinic supervisor)

 Name: ________________________________________________________________________________


Address: ______________________________________________________________________________




______________________________________________________________________________

 City, State, Zip: _______________________________________________________________________



Phone: _______________________________________________________________________________

 E-mail: _______________________________________________________________________________




State Bar Membership: ______________________________________________________________
State Bar License Number: __________________________________________________________

 USPTO Registration Number (Patents only): _______________________________________








21








Faculty Clinic Supervisor(s) (CONT’D)
(One for each proposed faculty clinic supervisor)
For patent clinic:
I possess at least three years of experience in prosecuting patent applications
before the USPTO within the last five years. (Patent clinic)

For trademark clinic:
I possess at least three years of experience in prosecuting trademark applications
before the USPTO within the last five years. (Trademark clinic)
Name: ______________________________________________
Signature: __________________________________________



22


Date: ____________________







Faculty Clinic Supervisor(s) (CONT’D)
(One for each proposed faculty clinic supervisor)
As faculty clinic supervisor, I agree to the requirements for participation
in the USPTO Program and to the following:
A. Faculty clinic supervisor will submit a signed agreement confirming adequate
supervision of the law school clinic students, as set forth herein.

__________

B.

__________

Faculty clinic supervisor must ensure that a conflict of interest check is performed for
each law school clinic student and each client or potential client of the clinic.

C. Faculty clinic supervisor is responsible for instructing, mentoring, overseeing, and
supervising all participating law school clinic students in the Program.

__________

D. Faculty clinic supervisor is responsible for the content and timeliness of all
applications and documents submitted to the USPTO by the clinic.

__________

E.

Faculty clinic supervisor is responsible for all oral and written communications by
participating law school clinic students to the USPTO and clinic clients.

__________

F.

Faculty clinic supervisor shall discuss, review, and approve all documents signed by
law school clinic students from the participating law school clinic prior to submission
to the USPTO; participation in the Program requires that all submissions to the
USPTO be reviewed and approved by a faculty clinic supervisor(s) prior to filing with
the USPTO.

__________

G. Faculty clinic supervisor agrees to be an attorney of record on all patent and/or
trademark applications filed in the USPTO.

__________

H. Faculty clinic supervisor must read and be familiar with the USPTO ethics rules (see
37 C.F.R. § 11.101 et seq.); the relevant sections of the USPTO’s procedural rules; and
the USPTO’s Program rules (see 37 C.F.R. §§ 11.16 and 11.17), requirements, and
procedures and ensure that law school clinic students do the same.

__________

I.

Faculty clinic supervisor must maintain a written record of all documents submitted
to the USPTO by law school clinic students.

__________

J.

Faculty clinic supervisor participating in the patent portion of the program must
ensure that students who qualify for the patent portion of the program based on
design patent practitioner qualifications are restricted to practicing before the
USPTO in design patent matters only.

K. Upon request, faculty clinic supervisor(s) must submit a list biannually to OED of the
reporting requirements set forth in 37 C.F.R. §§ 11.17(b).

N



23


INITIAL

__________

__________