USPTO Amending Rules by Creating a Separate Design Patent Bar for Practitioners
Since October 2022, the USPTO has publicized their intent to increase the number of registered practitioners and broaden the educational skill set of those registered by creating a separate Design Patent Bar eligible to design professionals that would not otherwise qualify for the current regular Patent Bar. On November 16, 2023, the USPTO officially established the Design Patent Bar, giving notice in the Federal Register.
Interest in design patent protection has been steadily increasing over the last three decades as evidenced by the increasing number of design patent applications filed at the USPTO.[1] Additionally, the U.S. Court of Appeals for the Federal Circuit recently issued an en banc decision limiting the scope of prior art available in design patent infringement analysis.
Prior to the new rule change, there has only been a single Patent Bar for all patent practitioners. Those who sought to be registered in the old system were required to have a technical degree in science or engineering—or be able show equivalent education or experience—simply to qualify to take the qualification examination. Successfully passing the examination allows those individuals to then perform duties necessary for the preparation and prosecution of utility, plant, and design applications before the USPTO. Starting on January 2, 2024, this will change.
Going forward under the new, separate registration system, those individuals seeking acceptance to the Design Patent Bar must have a “bachelor’s, master’s, or doctorate of philosophy degree in any of the following areas from an accredited college or university: industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, or art teacher education, or a degree equivalent to one of these listed degrees.” Those registered and admitted to the separate Design Patent Bar will be qualified to practice in design patent matters only. Those admitted under the regular registration system will continue to be qualified to practice in design patent matters in addition to utility and plant patent matters.
During the proposed rulemaking and comment period, the USPTO received numerous comments in favor of the proposed rule changes. These comments include: aligning the criteria for design patent practitioners with those of design patent examiners at the USPTO, improving design patent practitioner quality and representation, and allowing more under-represented groups to practice design patent law and aid more under-represented inventors in acquiring patents, as well as enabling individuals with valuable knowledge of design to aid design patent prosecution, and ensuring consistent, high-quality design patents via qualified practitioners.
The USPTO also received comments that were not in favor of the proposed rule changes. Among those were comments related to causing confusion within the public, increasing the difficulty of identifying appropriate counsel, adding significant administrative costs to the USPTO due to the separate pathways to practice, and increasing the risk of potential malpractice and ethical concerns.
Regarding the confusion to the public and ethical concerns, the USPTO has made clear that any individual, whether attorney or agent, who is admitted under the Design Patent Bar is still required to comply with the ethics rules regarding competent representation of their clients. Such practitioners must avoid causing confusion with their clients by informing them of their practice limits and limitations, in part, by using the designation “Design Patent Attorney” or “Design Patent Agent” and using the word “design” with their signature on USPTO documents.
While the risk of confusion to the public and ethical considerations for individuals admitted to the Design Patent Bar can be mitigated, potential applicants should still perform due diligence prior to selecting suitable representation. Often, an invention may qualify for both utility and design patent protection. While individuals or companies seeking representation and counsel for design patent matters may be represented by those admitted under the Design Patent Bar, those representatives may fall short, both technically and legally, in advising their clients as to the advantages and disadvantages of pursuing both design and utility filings. Further, those practitioners admitted only to the Design Patent Bar will be unable to provide representation and counsel for any utility patent applications, forcing those clients who would be appropriately served by both types of patent applications to seek separate counsel for different types of patent applications.
Accordingly, individuals or companies seeking representation for patent matters, whether utility or design, should consider full-service patent practitioners or firms. Such practitioners or firms will be able to provide competent representation and counsel for all of a client’s patent needs, and many firms already have individuals well-versed and experienced in the specifics of design patent matters. Persons seeking to work as a Design Patent Agent or Design Patent Attorney should also consider joining a full-service patent firm so as to be a part of a team of professionals that can give their clients adequate counsel and support for all their patent needs.
