US creates design patent practitioner bar as applications rise

USPTO seeks to encourage “broader participation” in bar
The United States Patent and Trademark Office is the federal agency for granting U.S. patents and registering trademarks.

Shutterstock; Mark Van Scyoc

The US Patent and Trademark Office (USPTO) is creating a separate bar for practitioners who practise solely in design patent matters in a bid to encourage “broader participation” in the field as applications continue to rise.

The USPTO proposed introducing a separate design patent bar in May and published its ‘final rule’ setting out the criteria for admission to it on 16 November. 

Currently, there is only one patent bar that applies to those who practise in all patent matters before the USPTO, including in utility, plant and design patents. 

The same scientific and technical requirements for admission to practise apply regardless of the type of patent application. The creation of the design patent bar means its practitioners will not have to pass the rigorous scientific and technical examinations required of utility patent practitioners. 

In the US, “design patents” protect the way something looks while “utility patents” protect how an invention is used and works. The cost of a design patent is much less than utility patents and the process of obtaining one, generally speaking, is far less onerous.

A similar IP right to the US design patents is the “registered design right” in the UK and EU.

USPTO director Kathi Vidal said: “Year over year we continue to receive more design patent applications, illustrating the importance of design protection to industry and our economy.

“Expanding the admission criteria of the patent bar encourages broader participation and keeps up with the ever-evolving technology and related teachings that qualify someone to practice before the USPTO.”

The criteria for admission to the design patent bar, which will come into being at the start of 2024, includes having a bachelor’s, master’s, or doctorate degree in one of the following areas (or its equivalent): industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, or art teacher education.

The USPTO points out that, as with applicants for registration to practise in all patent matters, applicants for registration to practise in design patent matters would only have to take and pass the current registration examination, and pass a “moral character evaluation”, ensuring the applicant is of good moral character and reputation in order to be registered.

It adds patent practitioners admitted in the past, present and future who have fulfilled all requirements will still be authorised to practise in all patent matters, including in utility, plant and design patents.

John Hemmer, a partner at the Philadelphia practice of Morgan Lewis, welcomed the development. He said the creation of a design patent bar would increase the pool of qualified applicants, including former design patent examiners, who can be hired by law firms to work on design matters. 

Historically, he notes, it has been “challenging to staff agents and associates with engineering and advance degrees on design matters”, given the lower budgets for design patents.

He continued that the creation of the design patent bar should help the USPTO attract higher-quality design patent examiners who may now have a career path in industry after they leave the USPTO.

However, he added that as with any change to a registration system, some existing patent attorneys were concerned about a “decrease in qualified practitioners and/or confusion among the public that design attorneys or design agents will be viewed as the design experts”. 

He pointed out that most inventions have utility and design components that need to be evaluated, so having a practice that can handle both utility and designs would seem to be much more effective and efficient than someone who can only handle the design component. 

He added: “I view the design bar as an opportunity for legal departments to bring in additional team members and potentially further strengthen the ties between patent, trademark and copyright practices.”

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