On January 2, 2024, the United States Patent and Trademark Office (USPTO) introduced the “Design Patent Bar,” which was an expansion designed to encourage diversity.  As USPTO Director Kathi Vidal stated in the months leading up to the new offering, the design patent bar was one of the ways she was working to ensure “everybody has an opportunity to participate in the innovation ecosystem to make sure that we’re not creating unnecessary barriers to practice before the USPTO.” Yet, as we approach the end of the year, it’s clear that the initiative has not been met with overwhelming enthusiasm.  With only 21 applications received, and no non-former patent examiners successfully registered since the beginning of the year, it’s time to delve into what this new bar means for the industry, and why the response has been so tepid.

What is the Design Patent Bar?

Only individuals who are registered to practice may prosecute patents before the USPTO, while only attorneys licensed in a state or territory of the U.S. may prosecute trademark applications.  Exceptions apply for law school students and those granted limited recognition.  Individuals seeking registration or recognition to practice in patent matters must meet the requirements of 37 CFR § 11.7, including the legal, scientific, and technical qualifications, as well as good moral character and reputation. Prior to this year, that meant having a “technical” background.

With the advent of the design patent bar, those with a degree in Industrial design, Product design, Architecture, Applied arts, Graphic design, Fine/studio arts, Art teacher education, or equivalent degrees were eligible to take and pass the same registration exam that traditional patent attorneys took, but their resulting registration number was limited to design patents.

The Numbers Tell a Story

So far, the numbers associated with the new Design Patent Bar are strikingly modest:

  • 21 Applications: Since the launch of the new design patent bar, only 21 individuals have applied to be registered. This number is notably low, especially considering the cost for the USPTO to implement the program, and suggestions of broad improvements in the design patent space.
  • 4 Registered Practitioners: Of those who are registered, only four are not currently government employees—and each one of them is a former design patent examiner—each having independent eligibility as a former examiner.

Why the Tepid Response?

While the USPTO’s intentions may have been noble, several factors might explain why the Design Patent Bar has seen such limited uptake:

  1. Complexity and Requirements: The registration exam process may be perceived as complex. As such, potential candidates might be hesitant to invest time and resources into a program that requires a deep understanding of the Manual of Patent Examining Procedure or need time to study for the examination prior to applying.  Moreover, the financial and time investments required to prepare for and pass the registration examination might be a barrier for many potential candidates.
  2. Market Demand: The niche nature of design patent law (as well as the issues addressed in major comments to the USPTO), could mean that the demand for such specialized expertise is currently low, especially in light of the potential need for clients of a design patent practitioner to also seek utility protection from another practitioner.
  3. Lack of Infrastructure: Today’s law firms already have trouble understanding and implementing traditional patent agents.  As such a subclass of patent agents or attorneys who are limited to design practice may similarly face hurdles in seeking opportunities in traditional law firms who lack the infrastructure.

What Does This Mean for the Industry?

The low registration numbers could indicate a need for the USPTO to reassess the design patent bar, and whether continuing to support the costly program is feasible. The USPTO might consider revising the process or requirements to make it more accessible and appealing to a broader audience.  Major IP organizations, including AIPLA, submitted comments against the bifurcation of the bar.  While the USPTO’s Office of Enrollment and Discipline, which administrates the admissions functions, does not track diversity data, it appears that the agency and industry may focus on different ways to increase access and diversity within the patent profession—including through pipeline programs, and working with industry to find projects that work.

Conclusion

While the new design patent bar represents a significant step toward enhancing the diversity of the patent profession with noble intentions, the current numbers highlight that the road to widespread adoption is still paved with challenges.