‘Extend patent bar to design practitioners’, say academics

The US Patent and Trademark Office has been urged to extend patent bar eligibility to design patent practitioners to increase the number of women patent attorneys and inventors.

Adjunct professor at the New Hampshire School of Law Jeanne Curtis and director of the IP programme at Benjamin N. Cardozo School of Law, Chris Buccafusco argued for the change in a letter to the USPTO.

This latest development comes after former USPTO director Andrei Iancu wrote to senators last month outlining policy changes under consideration by the office after senators expressed concern over a lack of women patent attorneys.

Issued on February 8, the letter held that the proposed change would help diversify the patent bar and would also remove barriers to women in patenting.

Eligibility requirements 'unjustifiable’

The USPTO’s patent bar exam is open to graduates with bachelor’s degrees in 32 subjects, covering technical expertise, such as biology, physics, chemical engineering and microbiology.

Applicants who hold bachelor’s degrees in these subjects would have to prove they have technical and scientific expertise in one of the 32 “Category A” subjects.

But the letter argued that many people qualified to prosecute design patents are excluded from the patent bar, with the overwhelming majority of those excluded being women.

“In its current form, the eligibility requirements allow those with a background in science and engineering to prosecute design patents but those with a background in design-related fields cannot,” wrote Curtis and Buccafusco.

This status quo was “not justifiable”, said the letter, and “unnecessarily restricts the number of women admitted to the patent bar”.

Expanding the eligibility requirements to include design-related degrees would help ensure that patent prosecutors have “the legal, scientific, and technical qualifications necessary for him or her to render applicants valuable service”, while at the same time “adding some long overdue diversity to a bar that is currently about 70% men”, the letter stated.

Women inventors

Curtis and Buccafusco further argued that such a move would also increase the number of women patentees because women inventors are partial to hiring a female patent attorney, particularly when their invention relates to a product for women.

They pointed to the example of Spanx creator Sara Blakely, who sought a female patent attorney during the process of securing rights to her invention as she believed that a woman would best understand her product. However, she reported that following her search she could not find a single female patent attorney in the entire state of Georgia.

The letter said that by limiting access to the patent bar to people who have studied science and engineering, the office’s rules disparately impact women’s access to the profession.

Curtis and Buccafusco pointed out that it was well known that science and engineering fields are skewed towards men in colleges and universities highlighting that in 2013, women earned only 37% of undergraduate STEM degrees in the US. By contrast, women today comprise the vast majority of students at leading industrial and fashion design schools such as the Parsons School of Design (78%), Rhode Island School of Design (69%), and Fashion Institute of Technology (85%).

A distorted pipeline of talent

Curtis and Buccafusco argued that the “exclusion of designers from the patent bar is unnecessary and inhibits diversity in the patent bar”.

“Accordingly, the patent bar is drawing attorneys from a highly distorted pipeline of talent. If the office allowed in either design majors or people with any undergraduate major to prosecute design patents, the number of women in the patent bar would be sure to rise,”  said the pair.

They added that it made sense for the USPTO to prioritise design knowledge as design patents seem to be increasingly valuable to firms’ IP portfolios.

The smartphone litigations between Apple and Samsung resulted in enormous infringement verdicts that were largely based on Apple’s design, said the letter, which added that design patents’ legal and economic significance would continue to grow.

“Revising the eligibility requirements to include design-related fields will allow women greater access to this important and expanding area of patent practice, a goal seemingly sought by many, including Congress and the office,” argued the academics.

Curtis and Buccafusco proposed several ways in which the proposed change to the eligibility rules could be implemented. First, they suggested that those possessing a degree in science or engineering should prosecute utility and design patents, but those with design-related degrees would only be permitted to prosecute design applications.

“This solution can create a stronger connection between the background of the prosecuting attorney and the subject matter of the applications being prosecuted and can only serve to improve the quality of design patents,” wrote Curtis and Buccafusco.

‘Enhance the quality of design patents’

They added that this approach would enhance the quality of design patents because it would create “a strong nexus between the prosecuting attorney and the subject matter of the applications being prosecuted”.

Curtis and Buccafusco also argued for the creation of a separate prosecution bar for design patents. Finally, the letter held that eliminating existing education requirements would align design patent prosecutors with trademark prosecutors.

“Trademark prosecutors are not subject to the same requirements as patent prosecutors. Indeed, the PTO does not require trademark prosecutors to be registered with the office nor does it require trademark prosecutors to sit for and pass a separate bar exam even though trademark prosecution, like patent prosecution, is governed by a robust set of office rules,” concluded Curtis and Buccafusco.

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