Moving Toward a Design Patent Bar – Progress in the IP Community

“Perhaps the recent movement and call for a change to the patent bar requirement, as applied to design patents, is [one] tangible, executable action item that will make the intellectual property community more diverse, inclusive and equitable.”

Challenging established processes is a commonly recognized leadership principle. In recent weeks, the emphasis by the United States Patent and Trademark Office (USPTO) on reconsidering and reforming patent bar eligibility, especially with regard to a potential design patent bar, represents a significant challenge to well-established Patent Office procedures. If the health and viability of an organization can be defined in terms of its ability to revisit, revamp and evolve existing rules and procedures, then this initiative, led by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal, represents a healthy and viable intellectual property community.

Qualifying for and Passing the Patent Bar

Under the current version of the USPTO rules, a technical background is required to qualify for the patent bar examination. As defined by the USPTO, an “applicant applying for the examination must demonstrate to the Director of the Office of Enrollment and Discipline (OED) that he or she possesses the scientific and technical training necessary to provide valuable service to patent applicants.” According to the USPTO, “[t]he requirement for lab-based core science courses is meant to ensure familiarity with the processes involved in conducting valid experiments, the scientific method, and proper analysis of scientific data.” This serves the over-arching goal of the requirements which are intended “to ensure fairness in the application process while also ensuring that patent practitioners who represent inventors are qualified, understand the technology, and are able to communicate effectively with inventors regarding the technical features of the invention.”

The patent bar examination specifically covers the laws, rules, and procedures dictated by the Manual of Patent Examining Procedure (MPEP). In previous iterations, the patent bar examination includes a multiple-choice section for testing an applicant’s knowledge of the MPEP and a hand-graded written portion for testing his or her ability to draft claims. As currently implemented by the USPTO, the patent bar examination has eliminated the written portion and is now broken into two sessions covering 50 multiple-choice questions. The questions on the patent bar examination apply to all technology backgrounds and do not expressly test for detailed technical knowledge (although the questions may include some technical descriptions). Accordingly, the technical qualification portion most likely relates to the practice of patent law after passing the patent bar examination rather than being able to successfully complete and pass the patent bar examination.

The Current Rules Create an Unnecessary Barrier

Currently, a patent bar registration entitles an attorney or agent to file and prosecute utility or design patents before the USPTO. Although there are a limited number of technical degrees or coursework that enable a person to be eligible to sit for the patent bar examination, the grant of the patent bar registration does not limit the person to practice only in the field in which they are technically qualified. Just as there is no distinction between the technical areas in which a registered patent lawyer may practice, there is no distinction between their ability to file utility patents and design patents. Given that design patent protects an ornamental design for a useful article of manufacture, it is not likely that an underlying technical degree or coursework is a prerequisite for strategic execution of an intellectual property strategy including design patent filings and prosecution. This lack of nexus between a technical degree or coursework does not impact the existing community of registered patent attorneys and patent agents. It does, however, deprive the intellectual property community of additional members, and it deprives individuals without the required technical degree program or coursework from expanding their practice to include filing non-technical design patents. The general consensus is that these missing additional members represent a disproportionate number of people from underrepresented affinity groups, including women and minorities.

At a high level, the USPTO is considering proposals that would eliminate the technical background requirement for individuals to be able to file and prosecute design patents before the USPTO. Specifically, according to Director Vidal, such proposals under consideration are aimed at ensuring that “everybody has an opportunity to participate in the innovation ecosystem to make sure that we’re not creating unnecessary barriers to practice before the USPTO.” In that regard, the USPTO rules and regulations for the preparation and prosecution of design patents are covered under Chapter 21 of the MPEP. Additional rules and regulations set forth in other chapters of the MPEP are also applicable to design patents. Accordingly, while it would seem that a general knowledge of the MPEP may still remain a minimal qualification for a practitioner, such knowledge is typically learned through independent study or coursework, often well after an attorney or agent-in-training has begun work in a legal organization. There is nothing to suggest that the minimal qualification of demonstrating knowledge of USPTO rules and regulations could not be achieved by individuals who do not have a technical degree.

Time for Action

For many years, government agencies, corporations, law firms and individual citizens have been working toward commitments and pledges to increase diversity, inclusion and equity in the workplace. Execution of such commitments and pledges have been historically difficult to achieve. In recent months, there appears to be a heightened demand for tangible, executable action items that accompany commitments and pledges. Perhaps the recent movement and call for a change to the patent bar requirement, as applied to design patents, is in line with such tangible, executable action items that will make the intellectual property community more diverse, inclusive and equitable. If so, with the full support of intellectual property stakeholders, we can make it happen.

Image Source: Deposit Photos
Image ID: 7244323
Author: Alexmit

Mauricio Uribe Mauricio Uribe is a Partner with Knobbe Martens. He has extensive experience in comprehensive client counseling in all aspects of intellectual property law. He has counseled various clients on patent [...see more]

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

18 comments so far.

Anon
November 25, 2022 01:38 pm
My searching friend,

That you do not understand the cascading support provided under the 35 USC / 37 CFR / MPEP banner is the proof you asked for is a You problem.

All else is related to that, as you are truly chasing a non-existent windmill based on your lack of legal understanding (and wanting what you DO understand to have more import).

I can only present the law to you, and cannot make you understand it.
PA Crier
November 23, 2022 05:44 pm
OK

“ignored your points” “too bad” “lose the opportunity to learn law” bookmark this page”

Let’s backup to the riddle. You lied! You clearly understood the message the riddle conveys. In a patent’s timeline the concept of “average skill in the art” only becomes relevant in the life cycle when someone wants to steal i.e. invalidate an issued patent. You definitely understood that. The riddle further states that the concept of “average skill in the art” is missing from the front end of the timeline when evidence is being gathered. You most definitely understood that invoking a “cart in front of the horse” analogy. The riddle only makes two points so I will stop here but only do so to keep it “as simple as possible, but no simpler.”

Thank you for validating the riddles veracity.

You could have saved your self time if the riddle was unclear simply by asking. Your error in this exchange is assuming that the person who conceived the riddle didn’t know what they were saying. Shame on you. You’re a lawyer. Why would you do that.

Moving on

“lose the opportunity to learn law”

Contrary to what you think, the seven passages you cite do not undermine or disprove my argument. In fact, they support my argument. You failed to emphasis, as I do, that MPEP 0900 et seq, accurately depicts a thorough search process.

My comment “The patent office has no requirement that examiners perform this function” is made precisely because I know what the regulations say. You actually thought that someone would make a bold statement like “prove it” without already knowing that you absolutely could not prove it. Why would you make that assumption? My God, you’re a lawyer. Shame

Nowhere does the Office couple 37 CFR 1.104 to MPEP 900 et seq. Without explicit commitment by the patent office to the process laid out in MPEP 900 et seq. there is no policy, rule or regulation requiring examiners to perform the function. I stand by my comment.

§ 1.104(a)(1) plainly states “…examiner shall make a thorough study thereof….” What I apparently understand that you don’t is that the word “thorough” is undefined. Before you say anything you should know that Thom Tillis proposed S.4704 – Patent Examination and Quality Improvement Act of 2022 that requires “…defining what constitutes a clear and thorough search by a patent examiner…” Therefore, not only do I know factually that “thorough search” is not defined in patent law so does Senator Tillis. Now you know too.

Defining a thorough search is a policy question. Despite a pending bill all discussion on the bill at this stage of the process are policy not law.
Goggle Tillis’s language “clear and thorough search” you’ll find a definition. Careful though if you click on it you’ll go to my blog. I also posted on Linked-In should you be interested and still remain anonymous.

I have no idea what opportunities to learn patent law you think you were teaching. That comment only shows how much you didn’t understand the discussion and that you have an inflated ego.

“bookmark this page”

I absolutely am bookmarking the AI/Patent Quality post because Ms. Burke commentary is fundamentally germane to patent quality and I want to properly attribute her when I cited her work. As far as what you contributed, I only knew MPEP 900+ off the top of my head. You are correct that the regulations are legal drivers. As you can see now I already knew that. Sad I had to explain it. Your compilation saves me time from compiling the list myself. Thank you very much.

“ignored your points”

You made zero points. You accuse me of not understanding the discussion when in fact NOTHING you said was on topic. You accused me of contradiction and inconsistency because you failed to understand my comment about the design bar. You asserted that I wanted “ratchet up requirements” which was completed contrived by you. You accuse me of being too colloquial. You apparently do not understand how policy is debated. We are not in a courtroom and the discussion was never about patent law. You failed multiple times to understand the discussion is about policy.

The presumption of validity was killed by IPRs is perfectly appropriate statement in policy debate. Not a single patent issued today carries the presumption of validity because every single patent is vulnerable to an IPR where there is no presumption. This is a perfectly acceptable policy statement. Your comments about Takings Law are totally irrelevant to the person losing their patent at PTAB. No one (me) in this discussion has said the IPR procedure is illegal so why are you trying to force-in irrelevant comments on Takings Law?

You made no points directed to policy. There is nothing for me to ignore. It is another cognitive error on your part asserting that I am uninformed on the regulations you listed.

“too bad”

The only thing that is too bad in all this Anon is you convincing yourself that you were somehow teaching a misguided uninformed (fill in the blank) about patent law.

I am now no longer confused about your strained efforts to turn the discussion onto legal requirements. This is you thinking you’re clever trying to change the subject. You project a strong sense of juvenile bravado. Puffing yourself all up because you have a JD trying to dominate a discussion. The discussion was never about patent law despite your best to make it that.

on the other hand

What is particularly bad about this exchange Anon, is I don’t think we disagree on any single point at all.

You stated:

To the first, I have LONG championed the notion that improvements to the so-called “poor patent quality” should instead be aimed at “poor patent examination quality,” and to the second, I have also long affirmed that a Best Practices on the side of an applicant is to do the most complete search one can do. However, on that point, I have also pointed out that searching by the applicant is not a legal requirement, as search IS a function of the Office (see below). As I have noted elsewhere, we should NOT be aiming to put requirements on applicants

We are in agreement on every single statement you make in this paragraph. And because we agree totally on this statement I bet you would be receptive to my policy proposals. Too bad this discussion went south right off the bat.
Anon
November 21, 2022 07:00 pm
You have ignored all the points I have presented.

Too bad.

For you (as you lose the opportunity to learn about the law — to which any policy push must interact with.

I suggest you bookmark this page just in case you do want to inform yourself of the legal drivers.
PA Crier
November 21, 2022 06:03 pm
Nitesh Gupta’s post was about AI and patent quality. AI and patent quality is about policy not patent law. My comments concerning 1) AI not yet at a stage to replace humans and 2) comparing search results of private sector searchers and public sector searchers (surely you concede that examiners are public sector searchers) is also about policy not law.

Claiming that this discussion was about the law when it is absolutely not only means you want to change the subject for some reason.

Julie Burke responded to Mr. Gupta’s AI and patent quality post by citing actual PTO policy directed to the PTO teaching search skills. Her post informs the issue of patent quality and evidence gathering greatly. You dismissed her comments with gibberish about increased cost and sport of kings that had nothing to do with the subject.

Your attempt to change the subject twice now is unproductive and fails completely to inform the ongoing policy debate for either patent quality or a design bar. This is tedious. I’m done.
Anon
November 21, 2022 11:18 am
I. Not a quibble

a. Not being an attorney, making a very substantial mistake of treating law colloquially (your comment of, “ I’m confused why you keep saying legal requirements.” evinces that you do not understand that this discussion IS a legal discussion. I am reminded of Einstein’s quote: Everything should be made as simple as possible, but no simpler”

b. Depending on ‘loose’ second hand sources (perhaps with liberties taken to be ‘readable’)

c. “ but your problem is with the legal websites spreading false information” – let me amend your statement: my problem would be with both. The law firm linked to the bitlaw article is doing no one any favors with such a loose rendition.

d. “[E]xamining against 35 USC 102 and 103 under the law (which necessarily includes explanatory case law)” makes absolutely no sense to me. – This is a YOU problem, as my statement properly reflects the law. I do “get” that while you have developed a fine expertise for matters related to searching, you are not an attorney, and thus, you may not understand the law. But the law remains the law, whether or not you understand it.

e. To this end, BOTH of your statements of, “. If I am wrong about examiners search skills… why do [admittedly low number] patents get overturned every year by the very agency that granted them.” AND “…focused searching up front will strengthen a patent against invalidity” are non sequiturs to the point at hand. To the first, I have LONG championed the notion that improvements to the so-called “poor patent quality” should instead be aimed at “poor patent examination quality,” and to the second, I have also long affirmed that a Best Practices on the side of an applicant is to do the most complete search one can do. However, on that point, I have also pointed out that searching by the applicant is not a legal requirement, as search IS a function of the Office (see below). As I have noted elsewhere, we should NOT be aiming to put requirements on applicants, as that leads to a Domain of Kings syndrome. A proper system should WELL be able to handle a full spectrum of inputs.

II. Prove it

a. Including but not limited to:

i. 35 USC 131 Examination of application
ii. 37 CFR 1.104 Nature of examination (prior art thorough investigation is made explicit
iii. MPEP 701 (laying out the above, while also noting explicating, “ The main conditions precedent to the grant of a patent to an applicant are set forth in 35 U.S.C. 101, 102, 103, and 112.”
iv. MPEP 707 (reiterating 37 CRR 1.104)
v. MPEP 0900 et seq, including:
1. MPEP 902.02 Class and Subclass Definitions in USPC
2. MPEP 904.03

III. The presumption of validity is dead. It was killed by IPRs

a. You are being too colloquial again
b. IPR – as a mechanism – explicitly takes the presumption of validity away at the institution decision point (prior to its adjudication on the merits).
c. Had you been paying attention, you would have realized that I have blogged extensively as to how this is a legislative takings, and Takings Law applies. This then is NOT “killed by” (as the Congress is indeed allowed to perform Takings), but instead is an improper application of that power. Further, this takings is only present in the IPR mechanism (and only upon institution). You – again – are being too colloquial on a matter of law.

IV. Horse and cart

Your question of, “If evidence is not the basis to determine ordinary skill what is?” misconstrues both the horse and the cart. There are indeed factual matters (see the Graham Factors) that establish just who the legal fiction of the Person Having Ordinary Skill In the Art is (the horse), but it is after establishing that, that the asserted prior art and the invention are evaluated (the cart). Your original statement inserted the cart before the horse.

V. This versus your own website

“apologies to Mr. Uribe for having this conversation on your post about a Design patent bar”
a. It’s a blog –side discussions happen all the time, and
b. no, I will not be responding to your web site, thank you.

PS: please note that I do respect your viewpoints (tremendously so) on the topic to which you are well versed, and that is why I have taken additional time (and – hopefully – kept snark to a minimum).
PA Crier
November 18, 2022 08:26 pm
My apologies to Mr. Uribe for having this conversation on your post about a Design patent bar. I plan to submit comments to that RFC. I believe that the US patent bar is too restrictive.

Now back to Anon.

If you say so. Here is a link to BitLaw.

https://www.bitlaw.com/patent/requirements.html

Multiple Legal websites limit patentability requirements only to the four I mentioned. Criticize me if you wish but your problem is with the legal websites spreading false information. I stand with what I can cite in a paper and in this case that would be BitLaw. I’ll add enablement going forward though so I won’t get comments like this.

As for ordinary or average, I know the MPEP use ordinary. However I have read expert witness testimony and found the word average used quit often. I think your criticism on this point is so menial that you are quibbling for the sake of quibbling.

Regarding the comment “The patent office has no requirement that examiners perform this function” I say to you prove it. You can’t because there is no rule or regulation directed to prior art or searching. The lack of direction by either the Office or Congress is part of the problem. “[E]xamining against 35 USC 102 and 103 under the law (which necessarily includes explanatory case law)” makes absolutely no sense to me.

The presumption of validity is dead. It was killed by IPRs. You know as well as I do that “preponderance of the evidence” rules at the PTAB. If I am wrong about examiners search skills (and after 30 years of observation I am not) why do 300 patents get overturned every year by the very agency that granted them. The number 300 is low because hundreds more small inventors settle because they can’t afford a PTAB trial. Do you disagree with me that focused searching up front will strengthen a patent against invalidity? Maybe you do.

I’m confused why you keep saying legal requirements. My words are about patent reform which would mean changing the law. I haven’t accused examiners of violating anything let alone any legal requirements. In the same way you asserted that I was arguing for a requirement on applicants which I did not even allude to you are doing the same thing here. I feel you taking my words and inserting them into a preconceived notion.

One last thing and I asking you to educate me. If evidence is not the basis to determine ordinary skill what is? At trial expert witnesses testify to ordinary (or average) skill in the context of specific 102/103 evidence that is being applied against a claim. So please educate me. I would like to put the cart back behind the horse.

Please don’t answer on Mr. Uribe’s post. My email is [email protected]
Anon
November 18, 2022 05:59 pm
eeks – “intot tow” ==> “into two”
Anon
November 18, 2022 05:58 pm
Sorry PA Crier, but your “point” is muddled (at best).

I recognize that you are not (most likely not) an attorney, and I do value your views on search-related items (when you are capable of sticking to what you really do know).

For example, no your list of four requirements is just not correct. You split 101 intot tow items (both your 1 and 3 are captured in 35 USC 101, and you entirely miss 35 USC 112).

As to evaluating against ALL evidence, you rather mistake the nature of examination by humans. There simply is no possible way to EVER capture “ALL.” There is a reason that the existence of a presumption is at a level of Clear and Convincing – as opposed to being MORE THAN a presumption.
Further (and perhaps a bit more subtle), it is NOT the evidence that determines WHAT constitutes the “ordinary” in the legal term of Person Having Ordinary Skill In The Art. You have the cart before the horse.

“The patent office has no requirement that examiners perform this function”

You are flat out wrong here. The requirement is examining against 35 USC 102 and 103 under the law (which necessarily includes explanatory case law).

You seem to confuse the fact that your search aspects may be more thorough as somehow the legal requirements for patent grant are just not completed. Completed – perhaps poorly – is still completed.

Your last paragraph attempts to insert he colloquial “average” for Ordinary. Do not do this. Terms of art in the legal world are not to be confused with colloquial terms. Doing so helps no one. And, as I have noted, you are simply wrong as to what is required of examiners.
Your point simply does not carry.
PA Crier
November 18, 2022 12:38 pm
This is my point.

As you very well know, there are 4 requirements of patentability:

1. The invention must be subject matter eligible
2. The invention must be new.
3. The invention must be useful.
4. The invention must be non-obvious.

The only way to know if an invention is new or non-obvious is to evaluate the invention against ALL evidence pertinent to the specific invention. This evidence when combined teaches what a person of “ordinary skill in the art” would know. The objective of a patentability search is to gather all the evidence for a specific invention allowing the reader to determine what constitutes ordinary skill.

The patent office has no requirement that examiners perform this function. In fact, examiners search for references to apply to claims. Looking for references to apply to claims is a validity search. The PTO does quick and dirty validity searches skipping patentability.

So about my riddle; since the only way to determine if an invention is new and non-obvious is by knowing what a person with average/ordinary skill would know couple with the fact that the PTO does not require examiners to first determine average skill, I assert my riddle is based on a pretty accurate observation.
Anon
November 17, 2022 10:09 am
PA Crier,

Your, “Question for you: What is a requirement for patentability but not a patentability requirement? Answer: Average Skill in the Art!” seems like a forced assertion rather than an actual reflection of the law.

As such, it is unclear what point you are trying to make.

Also, are you using “Average Skill” to mean the same thing as “Ordinary Skill?”
PA Crier
November 16, 2022 03:54 pm
Interesting conversation, I appreciate the back and forth.

Question for you: What is a requirement for patentability but not a patentability requirement? Answer: Average Skill in the Art!

You are absolutely correct that the PTO by law is the sole party responsible for finding evidence. However there no mention in the MPEP or anywhere else what the target for a search is. It is impossible to determine validity without first knowing Average Skill in the Art but that is never the less how system works. For the most part it doesn’t matter. It matters most to the small or micro applicants that need the certainty of a strong patent to obtaining funding and exploit the innovation.

To be clear, I have not used the word requirement here or anywhere else. I am adamantly opposed to imposing a requirement on applicants. Applicant Incentives was proposed but did not get debated during the America Invents Act. Applicant Incentives would be an option for applicants that they do not now have. Seems to me having a second choice is better than not having one especially if you are going to be rewarded/reimbursed.

To be honest the US does not have the infrastructure to offer Applicant Incentives. That would require patent reform outside the office.
Anon
November 16, 2022 02:25 pm
Thanks PA Crier,

I also hear you with your comment of, “It is also a separate skill from examining an application on the merits (which is patent law). Patent examiners do not conduct through patentability searchers ever.”

However, examination (under the law) AS DICTATED by applicable law DOES include the act of searching as part of examination.

As such, it is simply more logical to push the onus of any improved searching in its proper direction — that being as done by the Office (as opposed to any making it a requirement of applicants).

This then is LESS a matter of ‘having obtained’ and MORE a matter of “should obtain.’ Further, such action of improvement (through EITHER the Patent Office itself or by edict of Congress) would STILL be an Office-responsible item.

I am not seeing an actual rebuttal in your discussion of 2).

As to 3), I also hear you about “arguing for reform,” but (yet again), this lands squarely as reform IN the patent office.

As to 4), IF you are saying that a government program for providing PRE-filing searches would be more beneficial, I whole-heartedly agree with you.

Please do not take my reticence for applicant-searches to be an indicator that I do not believe in the merits of searches. I do. It is definitely a “best practices,” and I advise our clients to spend as much as they can on pre-application writing searches. That being said, such costs are NOT required by law (and arguably should not be), AND such are exclusively a client decision. I make no position as to whether or not $1,000 is cost prohibitive as that is fully a client decision.

I will note that as a percentage increase versus perceived benefit, you would be fighting an uphill battle to do any more than that which I already do.
PA Crier
November 16, 2022 11:00 am
Ok I’ll bite.

1) Search skill is indeed a separate skill from inventing, duh. It is also a separate skill from examining an application on the merits (which is patent law). Patent examiners do not conduct through patentability searchers ever. Therefore, patents granted to small inventors with creative innovations are highly vulnerable. The PTAB and IPRs are clear evidence of the PTOs difficulty in providing this “front gate” service. Since the applicant can not expect a thorough patentability search from the government, how are they going to get it.

2) This Open Source thread is about finding evidence. The Design bar comment is about technical qualifications to work in the patent field. Both comments are compatible although “input quality at the front gate” is a different section of patent reform than technical qualifications. The answer to the question I posed about patent bar is: No. The US does not produce higher quality patents than our allies who lack a stringent technical requirement.

3) I already know that examiners ignore art provided to them. One of the saddest categories of IPR losses are the ones where the applicant provided the invaliding evidence to the Office than subsequently used to invalidated their own patent. This happens 22% of the time. This typically happens when the applicant provides hundreds of references with their application. This argues for reform.

4) As for cost, glad you brought that up. The PTAB Reform Act proposes that the government cover the cost of an IPR for small inventors. Without looking at the stats recently there approximately 325 IPRs a year. Assuming 20% are small inventors and an IPR trial of $200,000. We get $13,000,000. It has often been said that 5% of patents are valuable which means 95% of applications do not require a thorough patentability search. For the sake of argument, I will say 2,500 small inventors a year require a thorough patentability search. A commercial patentability search cost $1000.00 give or take, equaling $2,500,00. If the government really wants to provide cost support to small inventors, which of these options provides better benefit.

I’ve said nothing anywhere about ratcheting up requirements. In fact, I argue the opposite. As for cost, yes $1000.00 does increase the applicants cost. If you are going to rail against the cost explain why this amount is prohibitive especially in view of what the applicant has to lose.
Anon
November 16, 2022 07:31 am
PA Crier,

I hear (and respect – somewhat) your view on this and on the Open Source thread.

I would point out (here), merely that this post of yours speaks AGAINST your other post in how to proceed.

The best path forward is simply NOT in ratcheting up the requirements (and thus, costs) ON applicants.

That path is the path of making patents to be the Sport of Kings.
PA Crier
November 15, 2022 05:07 pm
The US has the most restrictive patent qualification in the world. Do we produce better patents than say Canada that has no technical requirement or the EU where the requirement is a technical certification?
Anon
November 11, 2022 11:29 am
“The general consensus is that these missing additional members represent a disproportionate number of people from underrepresented affinity groups, including women and minorities.”

This statement is nothing more than an empty assertion from the virtue signaling crowd, and is made absent of ANY legitimate factual evaluations.

Further, this reflects the EMPTY “equity instead of equality” Leftist Woke nonsense that disregards actual reality.

Motte and Baily — let’s just not tolerate this nonsense.
PeteMoss
November 10, 2022 10:11 am
I applaud all efforts to lift all boats; but there has to be a realization that in-house counsel pay for favorable results, not to further diversity or engage in identity politics. Can the USPTO carve out an exception for design patent practitioners? On paper, looks good to me. Can the USPTO lower the number of technical courses needed to practice before the USPTO? I get the intent. But what law firms are going to hire these people? What in-house counsel is going to hire a sole practitioner who can only counsel the client regarding design patents? If I have a degree in chemistry, a practice area that I assume has very few design patents, will my malpractice carrier allow me to prepare mechanical design patents? Is it fair to the practitioner who got into the Patent Bar under the banner of diversity to sit in a technical engineering meeting like a deer in headlights? The USPTO can better solve its perceived diversity problem by (i) granting academic scholarships in STEM to members of underrepresented communities in return for a 4 year stint at the USPTO. Indentured servitude, like the US military academies & ROTC; (ii) educating high school science teachers & guidance counselors about USPTO requirements so that underrepresented high school students can get on a STEM track early; (iii) encouraging examiners and members of the Patent Bar to visit high school and community colleges and teach students about the rewards and the requirements of a career in patent law; and (iv) asking colleges and universities to offer a 5-year STEM degree at a 4-year tuition rate so that course work can be spread out over more semesters. Raising underrepresented individuals up to the same level of existing patent practitioners should be the goal. While lowering the Bar to meet the underrepresented community definitely makes the pool of practitioners larger, in the real world, the pool of employable practitioners stays about the same.
Dwadasi Sarma
November 10, 2022 07:43 am
If there are no technical knowledge requirements, how would a practitioner be able to determine whether a design is purely ornamental and not functional. Is not technical knowledge necessary to determine if a design is functional or not.