Lowering the Bar? Counsel Concerned by USPTO Design Patent Plan

The United States Patent and Trademark Office (USPTO) recently released a proposal to create a separate design patent bar. The measure could mean more opportunities for lawyers, however, it could also pose the risk of confusing people who do not understand IP nuances.

Some professional believe it might be necessary for practitioners to refer to themselves in a specific way to help eliminate confusion. Finnegan partner Beth Ferrill told Managing IP, “The office could also require people to use a specific phrase or provide a website link that neutrally explained the differences between a design patent practitioner and a professional who prosecuted both design and utility patents. The labelling needs to be crystal clear,” she says. “In my experience, people don’t understand the difference between a utility and design patent, and I’m worried they may focus on the word ‘patent’ and not see the word ‘design’.”

At Finnegan, Beth said that everyone who works on design matters also does utility patents.

“In my experience, having a person work on both the utility and design side for a particular client’s work is sometimes the most efficient way of doing things. They get to know the client’s preference. From a workflow perspective, it’s much easier if you have someone who can do either one.”

Speaking on what this proposal means, Beth mentions that the USPTO had to start with something.

“They can take this list and see where it goes,” she says. “If there’s another major that bubbles to the surface and the USPTO is open to adding that, I think that’s good.”

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