Towards a Design Patent Bar – Progress in the Intellectual Property Community
“Perhaps the recent movement and call for a change to the patent prohibition requirement as it applies to design patents is [one] tangible and enforceable action that will make the intellectual property community more diverse, inclusive and equitable.
Challenging established processes is a commonly recognized leadership principle. Over the past several weeks, the United States Patent and Trademark Office’s (USPTO) focus on reviewing and reforming patent prohibition eligibility, particularly with respect to a possible prohibition of design patents, represents a significant challenge for the well-established procedures of the Patent Office. If the health and viability of an organization can be defined by its ability to review, revamp and evolve existing rules and procedures, then this initiative, led by the Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal, represents a healthy and viable intellectual property community.
Qualify and pass the patent bar
Under the current version of the USPTO rules, technical training is required to qualify for the patent bar exam. According to the USPTO’s definition, an “applicant applying for the examination must demonstrate to the Director of the Office of Enrollment and Discipline (OED) that he possesses the scientific and technical training necessary to provide a valuable service to patent applicants”. According to the USPTO, “[t]The basic laboratory science course requirement is intended to ensure familiarity with the processes involved in conducting valid experiments, the scientific method, and the proper analysis of scientific data. This serves the overriding purpose of the requirements which are “to ensure fairness in the application process while ensuring that patent practitioners who represent inventors are qualified, understand the technology and are able to communicate effectively with inventors regarding technical characteristics of the invention.”
The Patent Bar Examination specifically covers the laws, rules, and procedures dictated by the Manual of Patent Examination Procedures (MPEP). In previous iterations, the patent bar exam included a multiple-choice section to test the applicant’s knowledge of the MPEP and a hand-scored written portion to test their ability to write claims. As currently implemented by the USPTO, the Patent Bar Examination has eliminated the written portion and is now divided into two sessions covering 50 multiple-choice questions. The questions on the patent bar exam apply to all technology backgrounds and do not specifically test detailed technical knowledge (although the questions may include some technical descriptions). Therefore, the part of the technical qualification is most likely about practicing patent law after passing the patent bar exam rather than being able to sit and pass the patent bar exam.
The current rules create an unnecessary barrier
Currently, a patent bar registration allows an attorney or agent to file and prosecute utility or design patents before the USPTO. Although there are a limited number of technical degrees or courses that allow a person to be eligible for the patent bar examination, the grant of patent bar registration does not limit the person to practice only in the field in which it is technically qualified. . Just as there is no distinction between the technical fields in which a registered patent attorney may practice, there is no distinction between his ability to file utility patents and design patents. Since the design patent protects an ornamental design for a useful article of manufacture, a technical degree or underlying coursework is unlikely to be a prerequisite for the strategic execution of an IP strategy, including design patent filings and lawsuits. This lack of a link between a technical degree or a course does not affect the existing community of patent lawyers and registered patent agents. However, this deprives the intellectual property community of additional members and prevents people without the required technical curriculum or courses from expanding their practice to include filing non-technical design patents. The general consensus is that these missing additional members represent a disproportionate number of people from underrepresented affinity groups, including women and minorities.
At a high level, the USPTO is considering proposals that would eliminate the technical knowledge requirement for individuals to file and pursue design patents before the USPTO. Specifically, according to Director Vidal, these proposals under consideration aim to ensure that “everyone has the opportunity to participate in the innovation ecosystem to ensure that we do not create unnecessary obstacles to the practice before the USPTO”. In this regard, the USPTO rules and regulations for preparing and prosecuting design patents are covered by Chapter 21 of the MPEP. Additional rules and regulations set forth in other chapters of the MPEP also apply to design patents. Accordingly, although it would appear that a general knowledge of MPEP may remain a minimum qualification for a practitioner, such knowledge is usually acquired through independent study or coursework, often long after a lawyer or agent in training has started working in a legal organization. There is no indication that the minimum qualification of demonstrating knowledge of USPTO rules and regulations cannot be achieved by individuals who do not have a technical degree.
It’s time to act
For many years, government agencies, businesses, law firms and citizens have been working on commitments and pledges to increase diversity, inclusion and equity in the workplace. The execution of these commitments and promises has always been difficult to achieve. In recent months, there seems to be an increased demand for concrete, implementable actions that accompany commitments and promises. Perhaps the recent movement and call for a change to the patent prohibition requirement as it applies to design patents is in line with those tangible and enforceable action items that will make the intellectual property community more diverse, inclusive and equitable. If so, with the full support of IP players, we can make it happen.
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