Design Patent Myths—On examiners and expertise

As my time here at the Lounge winds down, I’d like to discuss one very interesting, yet not very common, design patent myth. More than once, I’ve heard it suggested that design patent examiners are drawn from the corps of “regular” patent examiners—i.e., that they have technical or scientific backgrounds. This myth is interesting because it highlights an important asymmetry between the PTO’s educational requirements for those people who examine design patent applications and for those who prosecute them.

Patent prosecution is the process of applying for—and negotiating with the PTO in hopes of obtaining—a patent. In order to prosecute a patent for another person, you must be registered to practice before the PTO. To become a registered patent attorney, you must pass an examination, sometimes referred to as the “patent bar.” To sit for the patent bar, you need a scientific or technical background. (For the current requirements, see here.)

By contrast, in order to qualify as a design patent examiner, you need an art background. Specifically, according to a recent USAJOBS posting (click to view larger):

So someone like me (I have a B.A. in Art & Design) could become a design patent examiner—but can’t prosecute design patents. This makes no sense. And it has a number of practical consequences.

First, it means that the lawyers who prosecute design patents do not—at least in most cases—have any expertise in art or design. Instead, they have science or technical backgrounds. The fact that such lawyers do this type of work isn’t necessarily a huge problem. There are many excellent design patent lawyers who have science or technical backgrounds.

But there’s no reason why lawyers with such backgrounds should get to effectively corner the market on design patent work. It can be very difficult to break into IP if you’re not eligible to sit for the patent bar. Many firms only hire patent bar members do IP work—even work that does not require patent bar membership, such as patent litigation or trademark matters. So attorneys who actually have expertise in art and design tend to be systematically excluded from the practice of design patent law.

Obviously, there are exceptions. For example, I doubt that all of the litigators involved in Apple v. Samsung were/are registered patent attorneys. But this doesn’t change the fact that the current system makes no sense.

So here is a proposal for the PTO:  Allow attorneys who would qualify to be design patent examiners to sit for the patent bar. If they pass, those attorneys should be allowed to prosecute design patents (and represent clients in design patent-related proceedings before the PTO, such as inter partes review). Granted, making this change would involve administrative costs. And there are probably some members of the current patent bar who would object to any such encroachment on their oligopoly. But neither of these reasons justifies the exclusion of attorneys with relevant expertise from full participation in the design patent system.

Comments

[Ralph D. Clifford]

This isn't only an issue with design patents. The technical training recognized by the PTO does not match the kinds of utility patents being sought, either. See http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1626348 for my paper on topic.

My co-authors and I approached the PTO with the data out of the paper. We were effectively told to go pound sand. I doubt they would be any more open to the design patent problem.

Thanks for your series of posts on design patents. They have been excellent.