Tuesday, September 25, 2018

Questioning Design Patent Bar Restrictions

Every once in a while an article comes along that makes you realize all the things that you just don't realize. Of course, someone else realizes these things, which makes you realize all the things you should be realizing but didn't. But this is what scholarship is about, I think - spreading knowledge. The latest such article for me is The Design Patent Bar: An Occupational Licensing Failure, by Chris Buccafusco and Jeanne Curtis (both of Cardozo Law). A draft is posted on SSRN, and the abstract is here:
Although any attorney can represent clients with complex property, tax, or administrative issues, only a certain class of attorneys can assist with obtaining and challenging patents before the U.S. Patent & Trademark Office (PTO). Only those who are members of the PTO’s patent bar can prosecute patents, and eligibility for the patent bar is only available to people with substantial scientific or engineering credentials. However much sense the eligibility rules make for utility patents—those based on novel scientific or technical inventions—they are completely irrational when applied to design patents—those based on ornamental or aesthetic industrial designs. Yet the PTO applies its eligibility rules to both kinds of patents. While chemical engineers can prosecute both utility patents and design patents (and in any field), industrial designers cannot even prosecute design patents. This Article applies contemporary research in the law and economics of occupational licensing to demonstrate how the PTO’s application of eligibility rules to design patents harms the patent system by increasing the costs of obtaining and challenging design patents. Moreover, we argue that the PTO’s rules produce a substantial disparate impact on women’s access to a lucrative part of the legal profession. By limiting design patent prosecution jobs to those with science and engineering credentials, the majority of whom are men, the PTO’s rules disadvantage women attorneys. We conclude by offering two proposals for addressing the harms caused by the current system.
It never occurred to me to think about the qualifications required for prosecuting design patents. The observation that a different set of skills goes into such work is a good one; it makes no sense that a chemistry grad can prosecute design patents but an industrial design grad cannot. There are plenty of outstanding trademark lawyers who could probably do this work, despite not having a science or engineering degree.

I like that this paper takes the issue beyond this simple observation (which could really be a blog post or op-ed), and applies some occupational licensing concepts to the issue. Furthermore, I like that the paper makes some testable assertions that can drive future scholarship, such as whether these rules have a disparate impact on women. I am skeptical about the negative impact on design patents, but I think that's testable as well.

The paper concludes with some relatively mild suggestions on how to open up the field a little bit. I think they should be considered, but I'm happy to hear from folks who disagree.

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