The Design Patent Bar: An Occupational Licensing Failure

Authors

Christopher Buccafusco, Duke Law SchoolFollow
Jeanne C. Curtis

Document Type

Article

Publication Date

2019

Abstract

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 United States 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 design. Nevertheless, the PTO applies the same eligibility requirements to both utility and design patents. While chemical engineers are eligible to prosecute both utility patents and design patents (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

Citation

Christopher Buccafusco & Jeanne C. Curtis, The Design Patent Bar: An Occupational Licensing Failure, 37 Cardozo Arts & Entertainment Law Journal 263-298 (2019)