August 15, 2023
The US Patent and Trademark Office (USPTO) announced a notice of proposed rulemaking on May 16 that would create a separate design patent bar. The proposed changes would effectively expand the admission criteria for those who practice in design patent cases before the USPTO.
To practice before the USPTO as a patent attorney or patent agent, one must register and pass the patent exam, also known as the patent bar. Currently, applicants must have a scientific or technical degree to qualify, such as biology, engineering, computer science, chemistry, or physics.
On October 18, 2022, the USPTO published a request for comments in which it requested feedback on the potential creation of a separate design patent bar to allow those without a scientific or technical degree to practice in design patent cases. Based on the comments, the USPTO published a Notice of Proposed Rulemaking (NPRM) on May 16, 2023, creating a separate patent bar that effectively expands the admission criteria for those who practice design patent cases.
The proposed rules for the design patent bar would allow the applicant to have a degree in industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, art teacher education, or an equivalent design-related degree. The degree requirements align with the current hiring practices of the USPTO for design patent examiners.
The evaluation for design patent bar applicants would otherwise be the same: applicants would be required to take and pass the same registration examination as general applicants and undergo and pass a moral character evaluation. However, admitted design patent practitioners could practice before the USPTO in design patent matters only and would be required to note “design” with their signature.
Patent practitioners already admitted and those applying going forward who have fulfilled the scientific and technical requirements for the general patent bar will continue to be authorized to practice in all patent matters, including in utility, plant, and design patents.
The USPTO will accept comments on the proposed rulemaking via its eRulemaking Portal through August 14, 2023.
John Hemmer (LAW ’06) is a Partner at Morgan, Lewis, & Bockius LLP in the Intellectual Property practice group.