IP Law Daily, PATENT NEWS—USPTO issues notice of proposed rulemaking to create patent bar for design patent practitioners, (May 16, 2023)

By Robert Margolis, J.D.

Proposed rules would create separate design patent bar, and align criteria for design patent bar practitioners with those of USPTO design patent examiners.

Following receipt of comments on draft proposals to create a new design patent bar that is separate from the existing patent bar, such that admitted design patent practitioners could practice in design patent matters only, the United States Patent and Trademark Office has issued a notice of proposed rulemaking. The notice seeks written comments to the regulatory amendments the USPTO has proposed to effect the creation of the separate design patent bar. Written comments must be received on or before August 14, 2023.

Background. The Director of the USPTO has statutory authority to require a showing by patent practitioners that they possess “the necessary qualifications to render applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office.” 35 U.S.C. 2(b)(2)(D). Pursuant to that authority, the USPTO has promulgated regulations, administered by the Office of Enrollment and Discipline (OED), providing that registration to practice in patent matters before the USPTO requires a practitioner to demonstrate possession of “the legal, scientific, and technical qualifications necessary for him or her to render applicants valuable service.” 37 CFR 11.7(a)(2)(ii). The USPTO determines whether an applicant possesses the legal qualification by administering a registration examination, which applicants must pass before being admitted to practice. Currently, the USPTO sets forth guidance for establishing possession of scientific and technical qualifications in the General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases before the United States Patent and Trademark Office (General Requirements Bulletin).

Patent practice admission criteria. The criteria for practicing before the Office are based in part on a determination of the types of scientific and technical qualifications and legal knowledge that are essential for practitioners to possess. Presently, there is only one patent bar that applies to those who practice in patent matters before the Office, including in the utility and design patent areas.

Public comments. On October 18, 2022, the USPTO published a request for comments on the potential creation of a design patent bar. The request for comments asked two principal questions: (1) should such a separate bar be created for design patent practitioners; and (2) if so, how should applicants be admitted to that bar and what standards would apply to those seeking to be design patent practitioners.

Supporting design bar creation. The Office received 21 comments in response to the request, thirteen of which supported the creation of the separate design patent bar. Among the reasons given to support the creation of a separate design patent bar were: (1) to align the criteria for design patent practitioners with those of USPTO design patent examiners; (2) to improve design patent practitioner quality and representation; (3) to allow more under-represented groups to practice design patent law and serve under-represented inventors; (4) to enable persons with valuable design experience aid in design patent prosecution; (5) to increase competition among practitioners, thus lowering costs; (6) to ensure more consistency and higher quality in design patents, via qualified practitioners; and (7) to increase economic opportunities for design practitioners, by giving them the ability to access a new market for their services.

Criteria for admission. A majority of the commenters who favored creation of the separate design patent bar indicated that design patent bar practitioners should be required to take the current registration examination, but the existing scientific and technical requirements would be modified to align with the qualifications for design patent examiners at the USPTO. Thus, the general criteria for admission to the patent bar would be modified to include individuals with design degrees. Applicants for the design patent bar will need to 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. The Office noted that those degrees are currently acceptable for individuals applying for design examiner positions with the Office. As noted, applicants would also have to take and pass the current registration examination. They also would be required to undergo and pass the same moral character evaluation as currently conducted for patent bar applicants.

Effect on others. Creation of the separate design patent bar, for design practitioners only, would not impact the ability of current practitioners or applicants who meet current criteria for admission to the patent bar generally to practice in any patent matter before the Office, including design patent matters. In other words, while design patent bar practitioners could practice in that area only, other patent bar members admitted to practice patent prosecution generally could also practice in design patent matters.

Rules to be amended. The notice of proposed rulemaking identifies several provisions within 37 CFR Parts 1, 11, and 41 that would be amended, including by adding definitional terms, specifying the requirements for design patent bar applicants to fulfill, and making other changes necessary to create the design patent bar as described above.

News: Patent USPTO