Rule 6-26.3 - MINIMUM STANDARDS(a) Minimum Period of Practice. The applicant must have been engaged in the practice of law for at least 5 years immediately preceding the application date. Practicing "patent application prosecution," as defined in section 6-26.2(a), before the USPTO as a registered patent attorney or registered patent agent shall be deemed to constitute the practice of law for purposes of the 5-year practice requirement.(b) Substantial Involvement. Substantial involvement means at least 30 percent of the applicant's practice during the 3 years immediately preceding application has been devoted to matters involving intellectual property law. During the 5 years immediately preceding application, the applicant must satisfy 1 of the following categories.
(1)Patent Application Prosecution. The applicant must have handled a minimum of 40 patent matters that involved representation of a client with senior-level responsibility. The quality of the applicant's work and the nature of the issues involved are factors in determining eligibility for certification. Demonstration of compliance with this requirement shall be made initially through a form of questionnaire approved by the intellectual property law certification committee, but written or oral supplementation (including copies of work product) may be required. Verified substantial involvement in patent matters at a government agency may be considered for satisfaction of part of the 40 patent matters that involved representation of a client for good cause shown. Verified substantial involvement in other areas of intellectual property law may also be considered to demonstrate overall proficiency.(2)Patent Infringement Litigation. The applicant must have handled with senior-level responsibility a minimum of 5 contested matters in litigation or on appeal in which there was an adjudicated decision. Additionally, the applicants must have devoted a minimum of 800 hours per year to litigation matters generally, at least 300 hours per year of which must have been devoted to patent infringement litigation. The applicant must have, tried a patent infringement litigation matter to the close of testimony, verdict, or judgment within the last 10 years. The applicant must submit work product samples and a transcript (if available) for each contested matter. Verified substantial involvement in patent infringement litigation at a government agency may be considered for satisfaction in part of the minimum requirements for good cause shown. Verified substantial involvement in other areas of intellectual property law may also be considered to demonstrate overall proficiency.(3)Trademark Law. The applicant must have handled with seniorlevel responsibility either a minimum of 6 contested matters, 25 responses to substantive refusals, or a combination of the 2. Substantive refusals on which the applicant relies must not have involved merely technical corrections, insignificant matters, or abandonment. The applicant must submit work product samples and a transcript (if available) for each contested matter. In addition, the applicant must have engaged in at least 300 hours each year in the practice of law in which the applicant has had substantial senior-level participation in legal matters involving trademark law. Three contested matters involving in the aggregate no less than 50 hours of in-session hearing or trial satisfies the requirement of 6 contested matters. Verified substantial involvement in a combination of contested matters and responses to substantive refusals is considered for satisfaction in whole or in part of the requirement of 6 contested matters or 25 responses to substantive refusals for good cause shown. Verified substantial involvement in trademark matters at a government agency may be considered in lieu of representation of clients for satisfaction in part of the minimum requirements for good cause shown. Verified substantial involvement in other areas of intellectual property law may also be considered to demonstrate overall proficiency.(4)Copyright Law. The applicant must have handled a minimum of 40 substantive matters that involved representation of a client with senior-level responsibility, with a minimum of 300 hours per year devoted to such matters. The ministerial preparation of a copyright registration is not considered a substantive matter for purposes of certification. The applicant must submit work product samples and, if the applicant also relies on participation in contested matters, the applicant must submit all available transcripts in each contested matter. Verified substantial involvement in copyright matters at a government agency may be considered in lieu of representation of clients for satisfaction in part of the minimum requirements for good cause shown. Verified substantial involvement in other areas of intellectual property law may also be considered to demonstrate overall proficiency. (c) Peer Review. The applicant must submit the names and addresses of at least 6 lawyers or judges to complete peer review forms who neither are relatives nor current associates, partners, or who otherwise practice law in an of-counsel relationship with the applicant, to serve as references. Individuals submitted as references shall be substantially involved in intellectual property law and shall be familiar with the applicant's practice.(d) Education. The applicant must complete 45 credit hours of approved continuing legal education during the 3-year period immediately preceding the filing of an application for intellectual property law certification.(e) Examination. The examination is comprehensive in scope and each applicant will be required to demonstrate at least some knowledge in each specific subject tested. Applicants have the opportunity to emphasize special knowledge in 1 or more specific subject areas.(f) Exemption. The applicant is not required to take the section(s) of the examination on patent application prosecution as defined elsewhere if currently a registered patent attorney in good standing with the USPTO. The applicant is not required to take the section(s) of the examination on the litigation process if currently certified by The Florida Bar in civil trial or business litigation. Added July 6, 2006, effective 8/1/2006, (SC06 1269), (933 So.2d 1123); amended and effective 12/4/2020 by The Florida Bar Board of Governors.