On November 16, 2023, the U.S. Patent and Trademark Office (USPTO) issued a new rule in the Federal Register to create a separate patent bar for design patent practitioners.

Prior to this, there was a single patent bar that traditionally required those practicing in patent matters, including design patents, to meet legal, scientific, and technical qualifications and pass the patent bar examination. Under the new rules, the USPTO expanded the eligibility for patent practitioners who do not possess a technical background. Rather, applicants to the design patent bar will be required to have a bachelor's, master's, or doctorate degree in one of the following areas, or its equivalent:

  • industrial design;
  • product design;
  • architecture;
  • applied arts;
  • graphic design;
  • fine/studio arts; or
  • art teacher education.

Applicants will also be required to pass the same patent bar examination and undergo a moral character evaluation. Once admitted to the design patent bar, the new practitioners will only be able to prepare and prosecute design patents.

Notably, the new rule will not impact existing patent practitioners who are already registered to practice in, among others, design patent matters before the UPSTO. To reduce potential confusion with the public and distinguish new design patent agents from those registered to practice all patent matters, the new rules require design patent practitioners to clearly indicate their status by placing the word "design" adjacent to their handwritten or electronic signature. There will also be a particular registration number series applicable to design patent practitioners.

The new rules will be in effect as of January 2, 2024.

The anticipated benefits

The USPTO identified eight key advantages of creating a design patent bar, noting that it would:

  • align the criteria for design patent practitioners with those of design patent examiners at the USPTO;
  • improve design patent practitioner quality and representation;
  • allow more under-represented groups to practice design patent law and aid more under-represented inventors in acquiring patents;
  • enable individuals with valuable knowledge of design to aid design patent prosecution;
  • lower the costs of obtaining design patents by promoting competition among practitioners;
  • ensure consistent, high-quality design patents via qualified practitioners;
  • enlarge the pool of available service providers, including those practitioners whose background may be more tailored to the needs of a design patent applicant; and<
  • increase economic opportunities for design practitioners by allowing them to access a new market for the provision of their professional services.

As the USPTO asserted, "[e]xpanding the admission criteria of the patent bar encourages broader participation and keeps up with the ever-evolving technology and related teachings that qualify someone to practice before the USPTO."

With less than two months until the new rules come into effect, the USPTO will soon welcome patent practitioners with more arts-based backgrounds.

Industrial design practice in Canada

In Canada, the closest analogy to a design patent are industrial design registrations. A person may represent themself or appoint an agent to represent them in business before ‎the Industrial Design Office. While appointing an agent is not mandatory, the vast majority of industrial design applications filed in Canada are prepared and filed by intellectual property professionals.

The rules applicable to industrial design practitioners only relate to the appointment of an agent. For an agent to be considered appointed, the applicant must provide the Industrial Design Office a notice of appointment indicating the name and postal address of the appointed agent. There are no technical requirements to be appointed as an agent and the agent is not required to write any exams or otherwise qualify to practice before the Industrial Design Office.

Once an agent is appointed, the Office requires the applicant to use and be represented by ‎that agent to prosecute their application. The Office will only accept instructions from that agent to avoid receiving different or ‎conflicting instructions. However, notwithstanding the appointment of an agent, an applicant may represent themself or be ‎represented by an authorized person, to do any of the following:‎

  • file an application;‎
  • pay a fee;‎
  • give notice of the appointment or revocation of an agent;‎
  • request a transfer; and
  • provide evidence of a transfer.‎

At the moment, it does not seem likely that Canada will adopt a similar licensing regime, let alone a separate design patent bar, or regulate industrial design practitioners in the near future. Currently, patent and trademark agents are regulated under the College of Patent Agents and Trademark Agents (CPATA), an independent public interest regulator of patent and trademark agents in Canada.

It may be in the public interest to regulate industrial design agents under CPATA. Currently, CPATA requires patent and trademark agents to undergo training and pass an examination to obtain a licence, as well as demonstrate good character and fitness to practice. Preparing and prosecuting industrial design applications is a complex process and requires knowledge of industrial design law and office practices. Licensing industrial design agents that represent clients before the Industrial Design Office could serve to protect the public interest.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.