The Patent Office is establishing a separate design patent bar for people to practice design patent prosecution in front of the USPTO. I am generally against this, because I believe it will lead to bad advice being given to inventors which can destroy their ability to protect their ideas properly.
The design patent bar, unlike every other state or specialty bar in the country, will be open to non-attorneys. People with bachelor’s, master’s, or doctoral degrees in certain fields (industrial design, architecture, applied arts, graphic design, fine arts, and art education) will be able to register for practice before the USPTO. They will not, however, be able to give legal advice, because they are not attorneys. This presents a few problems.
First, clients coming to these practitioners may not realize that they are not lawyers. They may believe they are getting legal advice.
Second, these practitioners do not have to know anything about other types of law that often go hand-in-hand with design patent considerations. They won’t need to know the law regarding utility patents, provisional applications, trademark, and trade dress. They won’t need to know contract law as it relates to ownership or assignment of rights in the inventive material. They won’t need to know anything about design patent infringement. Instead, they will only need to know the examination rules for design patent practice. This isn’t because of their own fault, but because the USPTO is opening its doors too wide and without enough safeguards for the public.
The manner in which the Patent Office is doing this shifts all burden and risk to the least-protected party: the client. This has the potential to be a huge disservice to clients.
When clients come to me, I try to be straightforward in discussing all options available to the client for his or her inventive subject matter. That can bring up many areas of law. In some cases, it may include design patent work and trade dress work. The decision to pursue either or both of those forms of protection can depend on a lot of factors, and many of those factors are grounded in an understanding of the law. Or, I may discuss with clients the differences in utility and design patent prosecution and in enforcement of utility and design patents. These are discussions that are, of course, founded in legal theory and experience. Sometimes clients ask questions that I can’t answer, because they touch on areas of law that I do not know. In those instances, not only do I feel a moral obligation to refer to the client out, but ethically I cannot advise the client on those questions.
A non-attorney design patent practitioner cannot offer advice on the above considerations. If they do, they would likely be committing the unauthorized practice of law in their local state jurisdiction. If they don’t, they are not fully informing their clients.
Clients who come to non-attorney design patent practitioners may be doing so because they have already decided that they need a design patent. In some cases, that may be true. However, in many cases, and certainly not in a trivial minority of cases, those clients may need other or several options for protection. Design patent practitioners may not be aware of the other options, and even if they are, unauthorized practice of law rules would prevent them from advising their clients on those other options. This is a huge problem for the client, because it promotes a false confidence in the protection they have obtained, and by the time the client will be aware of the magnitude of the problem, statutory deadlines will prevent the client from going back to file the protection they should have gotten in the first place.
This problem already exists today, but the design patent bar will magnify it. I recently experienced the current problem first-hand. I have a client who hired me to write a few patent applications on a device. We discussed the different forms of protection, and trademark came up. The client said that they had already hired someone to do the trademark work, and they wanted me to remain on the patent work.
That was totally fine from my perspective, because I’m not interested in splitting a relationship the client already has with another attorney. However, the client developed several embodiments of the invention over time, and this created issues. While I was preparing a continuing patent application on one of those later embodiments, the trademark attorney filed a statement of use in the trademark application. A statement of use must show that a trademark is being used with a product that is for sale. The statement of use often contains a specimen or picture of the product with the trademark applied to the product. In this case, that is what the trademark attorney did – he filed almost a dozen photographs of my client’s inventive device.
Now, I had told the client not to disclose any inventions until we filed – to keep everything secret. We had sent information reminding the client to keep it secret. But patent law is complicated, and clients forget. As a backstop, perhaps the trademark attorney who filed the trademark application would have known to keep it secret. But he only does corporate law and trademark law – he doesn’t practice patent law. He had no reason to know the implication of his submission. Moreover, the problem here wasn’t a simple US patent question – it triggered international patent law issues.
When the trademark attorney submitted photographs of my client’s invention to the Trademark Office, it created a public disclosure, because Trademark Office filings are public. That acted to immediately waive almost all foreign rights on the invention. So, without knowing it, this trademark attorney obliterated my client’s intentional patent opportunity on that invention. I spent about two weeks (and a decent amount of money) with foreign associates trying to establish if there was any way to claw back protection. There wasn’t.
Luckily, because we had filed other patent applications for this client already, much of the core subject matter remained available for patenting. However, if the trademark attorney had submitted that filing before any of our applications had been filed, he could have unwittingly destroyed this client’s patent portfolio. And that would be entirely because he didn’t know what questions to ask the client.
I foresee a similar problem here. Non-attorney design patent practitioners will not know what questions to ask clients that could really affect other paths for protection. This is not a slam on them for not being attorneys. After all, there is no reason for them to know the law – they aren’t attorneys, they didn’t go to law school, they don’t have to take continuing education, they don’t have to abide by a local code of ethics, and they won’t be tested by a state bar (at all) or by the USPTO bar to see whether they can provide competent advice on anything other than design patents.
Others have expressed similar concerns, noting that design patent practitioners “would lack the training and experience to provide fully competent counsel concerning the differences between utility and design patent protection, have a bias favoring pursuit of design patent protection which could work against the client’s interest, and that such a bar would create confusion amongst the public.”
Ultimately, my concern is that the least sophisticated clients will be harmed by creation of the design patent bar. Most of my clients are careful and open to listening to me for an education on intellectual property law. They come to me for guidance globally, not to fill out forms. I am worried that clients who seek out design patent practitioners will have already decided that they need a design patent, and the practitioner will have no interest or ability to advise them otherwise.