The U.S. Patent and Trademark Office (USPTO) is amending its rules of practice to create a new design patent practitioner designation, to represent others before the USPTO as either a “design patent attorney” or “design patent agent.”1 A new separate design patent practitioner bar, available to an additional set of degrees, will allow admitted design patent practitioners to practice only in design patent proceedings. This amendment will take effect on January 2, 2024.
Traditionally, individuals seeking registration to practice in patent matters before the USPTO, including in utility, plant, and design patents, must be admitted to the patent bar. Eligibility for admission required an accredited college or university degree in limited technical subject areas (or an equivalent). These subjects are strictly limited to certain science and engineering degrees, such as biology, biochemistry, biomedical engineering, chemical engineering, computer engineering, computer science, electrical engineering, molecular biology, and other such degrees.2 This requirement applied regardless of the type of patent application the prospective practitioner was seeking to prosecute.
The USPTO has expanded the admission criteria of those seeking to practice before the USPTO to allow for design patent practitioners focused on the ornamental designs in design patent applications (sometimes known as industrial designs in other jurisdictions) to be admitted to a new design patent bar. These applicants will be eligible for admission to practice before the USPTO, without the need to meet the more rigorous engineering and scientific requirements of the standard patent bar.
To address competency and ethical concerns, the USPTO carved out certain specific requirements for design patent practitioner admission and practice. The following significant limitations apply:
1) Applicants will only be admitted to practice in design patent matters.
2) Applicants must still pass the same registration examination required of all patent practitioners.
3) Applicants must have an accredited degree in: industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, or art teacher education, or an equivalent.
4) Design patent practitioners are required to inform the USPTO and clients of their limited representation, including placing the “design” wording adjacent to their signatures.
5) Design patent practitioners are assigned a registration number from a distinguishing design patent practitioner number series.
The USPTO explained that this significant change is aimed primarily at improving design patent practitioner access, quality, and representation, by enabling individuals with valuable knowledge of design to assist in design patent prosecution.
Patent practitioners already admitted to the patent bar will not be affected. The Manual of Patent Examining Procedure will be updated to reflect these amendments.
1 See Representation of Others in Design Patent Matters Before the United States Patent and Trademark Office, A Rule by the Patent and Trademark Office, United States Federal Register (Nov. 16, 2023), available at https://www.federalregister.gov/public-inspection/2023-25234/representation-of-others-in-design-patent-matters.
2 General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases before the United States Patent and Trademark Office, USPTO Office of Enrollment and Discipline (May 2003), available at https://www.uspto.gov/sites/default/files/OED_GRB.pdf.