Lol at all the people who are trying desperately to frame the #PatentBar debate as being only about diversity.

Diversity is important.

But the much bigger problem is that it makes no sense to require a science/tech background to prosecute design patents.

And no, "there might be utility patent overlap" is not a good reason.

There also might be (and in some cases, there is more likely to be) trademark and/or copyright overlap.

Those areas are complex, too. Being good at utility patent work doesn't mean you're also good at trademarks or copyrights.

Referrals may have to be made (or consulting with a partner required) both ways.

So this factor is, at best, neutral. It doesn't support the status quo.

#PatentBar

Forty-eight comments and still not a single good argument in favor of limiting design patent practice (totally or mostly) to people with scientific or technical backgrounds.

https://www.regulations.gov/docket/PTO-P-2022-0027/comments

#PatentBar #DesignPatents

"The Justice Department's Antitrust Division, a technology industry group and others have thrown their support behind a proposal to create a separate design patent bar at the U.S. Patent and Trademark Office, while [attorneys who currently have an oligopoly on design patent work] have pushed back on the idea."

https://www.law360.com/ip/articles/1565768?nl_pk=fd062d42-234e-4b6a-b9b5-4052fd7ef7ac&

#PatentBar #DesignPatents

There is a small but usually quite vocal group of patent attorneys who specialize in design patents.

I noticed that none of them filed comments in their own names.

https://www.regulations.gov/document/PTO-P-2022-0027-0001/comment

#PatentBar #DesignPatents

Anonymous:

"Not only should there be a separate patent bar for design patent prosecutors but the design bar should be exclusive. Which is to say, in order to represent someone before the office in a design case, a practitioner must pass the design bar. This requirement will eliminate the large number of unsuccessful applications created by new, inexperienced attorneys and agents that may have technical backgrounds but no experience in matters of design."

https://www.regulations.gov/comment/PTO-P-2022-0027-0042

#PatentBar

More from Lisa:

"Supporters of a separate design patent bar cite that attorneys with an industrial design, architecture, or graphic design background can do a better job than Patent Attorneys. Unless I have been missing something for the past 23 years, Patent Attorneys are skilled at reviewing, interpreting, and describing technical drawings in utility and design patent applications. Thus, I do not think that the USPTO should pursue a separate design patent practitioner bar."

#PatentBar

Patent attorney Lisa Kilday:

"[T]he USPTO has failed to demonstrate that there is a long-felt need to create a separate design patent bar. There have been ZERO complaints to the OED in the past five years against Patent Attorneys related to their competency in filing design patent applications.... If there are no documented problems with Patent Attorneys prosecuting design patent applications, why is the USPTO attempting to create a new occupation?"

https://www.regulations.gov/comment/PTO-P-2022-0027-0043

#PatentBar

I'll just let Lisa's comments speak for themselves: https://www.regulations.gov/comment/PTO-P-2022-0027-0043

#PatentBar

Jeanne Curtis (the coauthor of this article https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3245319) argues in favor of change: "I am inclined towards Option 3 (as modified above) followed by Option 2. Option 1 is less desirable if it were to be adopted in its present form although it too would still be an improvement over the current regime."

https://www.regulations.gov/comment/PTO-P-2022-0027-0047

#PatentBar

Jeanne Curtis (the coauthor of this article https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3245319) argues in favor of change: "I am inclined towards Option 3 (as modified above) followed by Option 2. Option 1 is less desirable if it were to be adopted in its present form although it too would still be an improvement over the current regime."

https://www.regulations.gov/comment/PTO-P-2022-0027-0047

#PatentBar

An adjunct law prof "do[es] not recall ever having spoken to a student who wanted to only prosecute design patent applications during the 30 plus years that I have taught patent law practice." Well, okay then.

https://www.regulations.gov/comment/PTO-P-2022-0027-0034

#PatentBar #LawStudents

The Duke IPLS statement is joined by Boston University School of Law’s Intellectual Property Law Society; the University of Houston Law Center's Intellectual Property Student Organization; and the Stanford Intellectual Property Association.

#PatentBar #LawStudents

From the Duke IP Law Society:

"The PTO’s current system ... is inherently flawed and unreasonably limiting. There are several potential solutions, including abolishing eligibility requirements for design patent prosecutors, the creation of a separate design patent bar, or the expansion of eligible degree types under the current eligibility system. Any of the aforementioned proposed solutions would be more favorable than the current system."

https://www.regulations.gov/comment/PTO-P-2022-0027-0035

#PatentBar #LawStudents

The Computer & Communications Industry (CCIA) "suggests that the Office should offer a separate design patent practitioner bar or at the very least create and incorporate a design patent subsection into the current patent practitioner bar. Such a separate bar should not be a “patent bar lite” but rather would recognize the distinct knowledge bases required between utility and design patent prosecution."

https://www.regulations.gov/comment/PTO-P-2022-0027-0040

#PatentBar

The Intellectual Property Owners Association (IPO) also filed some comments.

"IPO supports establishment of a design patent practitioner bar, in which admitted design practitioners would practice solely in design patent matters. ... The USPTO should adopt a list of degrees that would qualify .... The degrees commonly held by USPTO design examiners are a good starting point for this list...."

https://www.regulations.gov/comment/PTO-P-2022-0027-0038

#PatentBar #IPO

The Boston Intellectual Property Law Association has also weighed in (first time with the new name)? https://www.regulations.gov/comment/PTO-P-2022-0027-0036

They argue there should be a separate design patent bar--for attorneys only (so no agents).

#PatentBar #BIPLA #Boston

Clearly, we need to check out the DOJ one first.

"EXPANDING ACCESS TO THE DESIGN PATENT BAR WILL
ENHANCE COMPETITION .... The Antitrust Division encourages the
USPTO to consider these potential procompetitive benefits when assessing the impact of
expanding access to the design patent bar."

https://www.regulations.gov/comment/PTO-P-2022-0027-0046

#PatentBar #Antitrust

The new batch includes comments from:

- Law professors (myself included)

https://www.regulations.gov/comment/PTO-P-2022-0027-0033

https://www.regulations.gov/comment/PTO-P-2022-0027-0037

- Law students

https://www.regulations.gov/comment/PTO-P-2022-0027-0035

- The DOJ Antitrust division 👀

https://www.regulations.gov/comment/PTO-P-2022-0027-0046

#PatentBar #LawFedi

There are now 48 comments posted on the #PatentBar: https://www.regulations.gov/docket/PTO-P-2022-0027