In order to prepare and prosecute utility, design, and plant patent matters in front of the United States Patent and Trademark Office (“USPTO” or “Office”), the USPTO requires practitioners to demonstrate possession of the legal, scientific, and technical qualifications necessary to render valuable service to clients. See 37 CFR 11.7(a)(2)(ii).

Applicants are deemed to possesses that legal, scientific and technical qualification by passing the USPTO’s national examination, colloquially referred to as the “patent bar”. However, in order to qualify for the patent bar, applicants must meet the requisite scientific and technical training delineated by the General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases before the United States Patent and Trademark Office. An applicant is considered to have the necessary background if they have a science or engineering bachelor’s degree from an accredited U.S. or foreign university. Accordingly, the patent bar has been traditionally reserved for practitioners with scientific, engineering, or other technical backgrounds. 

On November 15, 2023, the USPTO issued a final rule amending the rules of practice before the Office by creating a separate design patent bar. Unlike a utility or plant patent, design patents are less technical in nature and relate exclusively to the unique visual design and ornamental qualities of an item. The new design patent bar will allow practitioners who pass the design patent bar to practice in design patent proceedings only. In other words, applicants need not have a science and engineering degree to qualify. Rather, applicants to the design patent bar should have a bachelor’s degree, master’s degree, or doctorate in philosophy from an accredited college or university in industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, or art teacher education, or a degree equivalent to one of these listed degrees. Notably, applicants to the design patent bar do not need to have a legal background to qualify.

The Office received comments in favor of the design patent bar, noting that a design patent bar would:

  1. align the criteria for design patent practitioners with those of design patent examiners at the USPTO;
  2. improve design patent practitioner quality and representation;
  3. allow more under-represented groups to practice design patent law and aid more under-represented inventors in acquiring patents;
  4. enable individuals with valuable knowledge of design to aid design patent prosecution;
  5. lower the costs of obtaining design patents by promoting competition among practitioners;
  6. ensure consistent, high-quality design patents via qualified practitioners;
  7. 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
  8. increase economic opportunities for design practitioners by allowing them to access a new market for the provision of their professional services.

While this new rule does not impact practitioners who have already passed the patent bar, it does require design patent practitioners to clearly indicate their status by placing the word “design” adjacent to their handwritten or electronic signature. Importantly, practitioners who are admitted to the new design patent bar will only be able to prosecute design patents; whereas, practitioners who are admitted to the patent bar generally will be able to prosecute all patents, including design patents.

Numerous companies have used design patents to protect their intellectual property in the form of ornamental designs for clothing, furniture, machinery, commercial products, and other manufactured goods. The addition of the design patent bar will allow companies to utilize skilled designers and artists to prosecute these design patents, without requiring the assistance of the typical patent bar practitioner with a wider technical background.  

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

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Photo of Margaret Ukwu Margaret Ukwu

Margaret Ukwu is an associate in the Litigation Department and a member of the Intellectual Property and Product Liability groups. She focuses her practice on complex patent litigation involving a broad range of technologies, including electrical arts pertaining to mechanical systems, computer architecture…

Margaret Ukwu is an associate in the Litigation Department and a member of the Intellectual Property and Product Liability groups. She focuses her practice on complex patent litigation involving a broad range of technologies, including electrical arts pertaining to mechanical systems, computer architecture, pharmaceutical and medical devices, internet applications, mobile operating systems, wireless communications and user interfaces. She also advises clients on all aspects of patentability and provides patent counseling regarding invalidity, non-infringement and freedom to operate assessments.

Margaret also specializes in all aspects of pre-trial work and trial preparation, including drafting motions in limine, jury instructions, working on demonstrative and exhibit lists, preparing witnesses for trial and drafting opening and closing statements.

While in law school, Margaret interned for the Honorable Sam Rugege at the Supreme Court of Rwanda. Prior to practicing law, she worked as a control systems engineer at a large multinational company.

Photo of Elizabeth Shrieves Elizabeth Shrieves

Elizabeth (Beth) Shrieves is an associate in the Litigation Department and a member of the Intellectual Property and Patent Law groups. Beth has experience litigating in numerous federal district courts across the United States, as well as before the Federal Circuit, U.S. Patent…

Elizabeth (Beth) Shrieves is an associate in the Litigation Department and a member of the Intellectual Property and Patent Law groups. Beth has experience litigating in numerous federal district courts across the United States, as well as before the Federal Circuit, U.S. Patent and Trademark Office, and International Trade Commission. Beth’s experience covers a wide variety of products and technology involving software and applications, medical devices and technology, electrical hardware, telecommunications, supercapacitors, automotive engines, weapon systems, and consumer products. She has counseled clients throughout all stages of litigation, including both plaintiff and defense work, from pre-suit investigation, initial pleadings, discovery, trial, and through appeal.

Beth graduated from George Mason University School of Law where she earned her J.D., Magna Cum Laude. Prior to earning her law degree, she received a bachelor’s degree from Wake Forest University where she also graduated Magna Cum Laude. Beth also previously worked as a paralegal where she gained a deeper understanding of the nuances of commercial litigation.