USPTO unveils new patent design bar

Move updates agency’s “inconsistent” and “exclusionary qualification” criteria | Aims include increasing the diversity of design patent practitioners | Kathi Vidal comments.

The  US Patent and Trademark Office (USPTO) has confirmed plans to create a design patent practitioner bar, broadening the qualifications required for those who wish to practise exclusively in design patent proceedings at the agency.

The  update—set to be published today, November 16, in the agency’s Federal Register—will create a separate design patent bar with degree requirements that align more closely with current hiring practices for design patent examiners.

These include degrees in industrial, product and graphic design, architecture, applied and fine/studio arts, art teacher education or an equivalent design related degree. Before this rulemaking, applicants who wished to practise design patent cases before the USPTO needed to have a scientific or technical degree.

The same scientific and technical requirements for admission to practise applied—regardless of the type of patent application.

The much-anticipated change follows years of  mounting concerns about the low representation of women at the patent bar.

A clamour for change

In 2020, Mary Hannon—now a judicial law clerk at US Court of Appeals for the Federal Circuit—published an academic article The Patent Bar Gender Gap: Expanding the Eligibility Requirements to Foster Inclusion and Innovation in the US Patent System,  arguing that there were “systemic barriers” facing women at the US Patent Bar, and that the qualification criteria was “inconsistent”.

In December that year, senators Thom Tillis, Mazie Hirono and Chris Coons wrote to the USPTO citing concerns about the issues raised by Hannon. A year later, academics urged the office 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, noting 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”. 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.

New requirements

In response, the USPTO published a Federal Register Notice in October 2022, requesting public input on the possible creation and implementation of a design patent practitioner bar.  In addition to the degree requirements, applicants have to meet other requirements to register for the bar, including taking and passing the current registration examination and passing a moral character evaluation.

Commenting on the move towards a design patent bar,  Kathi Vidal, director of the USPTO, said: “By creating a separate design patent bar that better aligns with the backgrounds of those who practise in the design space, we will broaden participation before the USPTO while further securing the robustness and reliability of the intellectual property we grant.

“This is part of our larger effort to open the doors more widely to the innovation ecosystem while ensuring our policies and procedures align with the USPTO’s mission.”

Criticism of the move

The creation of a design patent practitioner bar will not impact the ability of those already registered to practise in any patent matters, including design patent matters, before the USPTO.

Further, it won’t affect the ability of applicants who meet the current criteria— including qualifying for and passing the current registration exam—to practise in any patent matters before the USPTO.

The development, however, has attracted criticism as well. The office noted that it had received a few comments suggesting that the division of the bar “would cause confusion within the public and increase the cost of identifying appropriate counsel”.

Others felt it would add significant administrative and policing costs to the USPTO, and increase the risk of potential malpractice and ethical concerns.

The change will be effective from January 2, 2024.