For most attorneys, the practice of their chosen specialty only requires a law degree and bar admission. Not so for patent attorneys. The United States Patent and Trademark Office requires attorneys to pass an additional test to become a patent attorney. The prerequisites for sitting for the exam are provided in the General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases.


In a recent patent litigation involving tool carrying cases (2012), the Federal Circuit Court of Appeals was asked whether the lower court had erred by interpreting that Federal Rule of Evidence 702 required patent experts to be attorneys.

This was a novel question, one that likely hadn’t even occurred to most attorneys to ask. However, the mere fact that a recent lower court opinion created such a requirement makes it worth discussing.

To prevail in its case, one of the elements required for the plaintiff to demonstrate was that the defendant’s invention in question failed the test of obviousness. The determination of obviousness requires a court to examine whether an invention was obviously distinguishable from a pre-existing invention by the plaintiff “to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. §103(a). To rebut plaintiff’s assertion, not surprisingly, the defense relied upon the testimony of a patent expert.

Notwithstanding the patent expert’s knowledge of the field, which was acknowledged by both parties, the lower court determined that his testimony, as a matter of law, could not address the alleged claims because he was not a attorney.

The lower court stated that because the patent expert was “not a lawyer, he was not qualified as an expert to testify as to what the prior art teaches and the correct interpretation of patent claims in the prior art.” Thus the lower court held that the expert did not have sufficient expertise, because he didn’t have “legal experience and training.”

In reversing the lower court’s decision, the Federal Circuit Court of Appeals found that “the exclusion of a technical expert for the reason that he is not a lawyer was contrary to Federal Rule of Evidence 702.”

“To be sure, many lawyers have technical training, but it is technological experience in the field of the invention that guides the determination of obviousness, not the rhetorical skill or nuanced advocacy of the lawyer.”

The Circuit Court did state that, while it certainly couldn’t hurt for an expert to be an attorney, Rule 702 has no such requirement.

By Ian Heller, Attorney at Law