USPTO Proposes New Rules that Would Create a New Design Patent Practitioner BarMay 17, 2023

On May 16, 2023, the USPTO published proposed rules that provide for the creation of a new design patent practitioner bar. The proposed design patent practitioner bar would provide for a new designation of practitioner able to practice before the USPTO. This newly proposed designation allows individuals to be classified as design patent practitioners wherein such individuals are only allowed to practice in the design patent space and are forbidden to handle utility or plant patents.

On October 18, 2022, the USPTO published a request for comments regarding potential establishment of a new design patent practitioner bar. The request offered three possibilities for establishing a new design patent practitioner bar wherein the three options included “requiring design patent practitioner bar applicants to: (1) take the current registration examination, but with modified scientific and technical requirements; (2) be a U.S. attorney (i.e., an active member in good standing of the bar of the highest court of any State); or (3) take a separate design bar examination instead of the current registration examination”. Among the commenters who were in favor of creation of a separate design patent practitioner bar, the majority supported the first option.

Thus, the rules proposed by the USPTO seek to implement option (1) described above. The proposed rules require applicants to pass the current registration exam and pass a moral character evaluation just as applicants to the traditional patent bar must do. The difference between requirements for the traditional patent bar and the newly proposed design patent bar arise with regard to possession of requisite scientific/technical qualifications. The proposed rules allow for the scientific/technical qualifications required for admittance to the design patent practitioner bar to be satisfied with 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, or a degree equivalent to one of the listed degrees.” Thus, the proposed rules for admittance to the design patent bar allows for more individuals to practice before the USPTO in the design patent space than may have been allowed under the traditional patent bar system. Under the proposed rules, as long as design patent practitioner applicants satisfy the newly proposed scientific/technical requirements described above (i.e., possess one or more of the above-enumerated degrees), such applicants could be eligible for admittance to the design patent practitioner bar assuming they meet the other requirements. Additionally, such applicants could be admitted to the design patent practitioner bar without needing to possess an engineering, science, and/or similar degree or to demonstrate scientific/technical qualifications in another way as is required under the traditional patent bar system.

While these new rules for creation of a design patent practitioner bar have been proposed, admittance to the traditional patent bar will not be affected. “Patent practitioners admitted in the past, present, and future who have fulfilled [the traditional scientific/technical requirements for admittance to the patent bar] will be authorized to practice in all patent matters, including in utility, plant, and design patents.”

The deadline to submit written comments regarding the proposed rules is August 14, 2023.

Joseph M. Hallman is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Joseph directly via email at joseph.hallman@ipmvs.com.