USPTO Publishes Final Rule Establishing Separate Design Patent Bar

The U.S. Patent and Trademark Office (USPTO) today announced that a final rule will be published tomorrow, November 16, in the Federal Register implementing a design patent practitioner bar.

The Office first published a Notice of Proposed Rulemaking (NPRM) to the Federal Register in May 2023 contemplating a separate design patent practitioner bar. A request for comments (RFC) was also published in October 22.

In response to the RFC, the Office received a number of comments that identified eight key advantages of creating a design bar. According to today’s Notice, the commenters said such a bar would:

• “Align the criteria for design patent practitioners with those of design patent examiners at the USPTO;
• improve design patent practitioner quality and representation;
• allow more under-represented groups to practice design patent law and aid more underrepresented inventors in acquiring patents;
• enable individuals with valuable knowledge of design to aid design patent prosecution;
• lower the costs of obtaining design patents by promoting competition among practitioners;
• ensure consistent, high-quality design patents via qualified practitioners;
• enlarge the pool of available service providers, including those practitioners whose background may be more tailored to the needs of a design patent applicant; and
• increase economic opportunities for design practitioners by allowing them to access a new market for the provision of their professional services.”

Currently, there is only one patent bar that oversees those who practice in patent matters before the USPTO, including utility, plant, and design patents. Those already registered to practice in patent matters before the USPTO would not be impacted by the change.

Applicants for the new design bar must have 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 majority of those who submitted comments in favor of the new bar preferred that design patent practitioners still be required to take the current registration examination.

According to the Final Rule, the USPTO also received nine unique comments from three organizations and six individuals in response to the May NPRM. Three opposed the creation of a design patent bar, one suggested a study should be conducted prior to implementation, and two expressed concerns that clients might mistakenly believe that design practitioners have specialized skills that uniquely qualify them to represent in design matters over those who have qualified under the traditional system.

Those opposing the creation of a separate design bar in responses to the RFC and the NPRM said that design patent practitioners “would lack the training and experience to provide fully competent counsel concerning the differences between utility and design patent protection, have a bias favoring pursuit of design patent protection which could work against the client’s interest, and that such a bar would create confusion amongst the public” and that division of the bar would increase the cost of identifying appropriate counsel, among other comments.

The Office responded by explaining that design patent practitioner bar applicants would still be required to take the current registration examination, “with modified scientific and technical requirements,” and would have the same duty to provide competent representation to their clients and to inform them of practice limitations as do all practitioners.

In response to another comment that suggested design practitioners take an entirely different and separate design bar registration examination, the Office said this does not reflect the input of most commenters. The Notice explained:

“[D]esign bar practitioners need to be familiar with the practices and procedures of patent preparation and prosecution before the USPTO. This is what the current registration examination tests. Restricting the ability to practice in design patent matters from those who meet the criteria for registration to practice in all patent matters would take away a right from those already qualified and be unfair to those who may qualify in the future.”

Design practitioners registered under the separate design bar will be required to place the word “design” (in any format) adjacent to their handwritten signature as well as adjacent to the last forward slash of their S-signature in order to indicate their design patent practitioner status.

Design patents have been increasing in popularity in recent years, although an upcoming en banc decision from the U.S. Court of Appeals for the Federal Circuit could change the game for determining design patent obviousness.

“Year over year we continue to receive more design patent applications, illustrating the importance of design protection to industry and our economy,” said USPTO Director Kathi Vidal in a statement today. “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 rule will be effective on January 2, 2024.