Design Patent Bar Plagued by Low Applicant Numbers Two Years In

Christopher Santone used the US Patent and Trademark Office’s launch of a practice bar specific to design patents to make a career switch. More than two years after that launch, though, the former industrial designer is one of a small handful of members of the PTO’s new design patent bar.

Now a design agent at McAndrews Held & Malloy, Santone became familiar with patents as an industrial designer. He’s the listed co-inventor of 19 design patents and one utility patent.

“Once I went up the ladder in industrial design, I found myself looking for other opportunities, going into manufacturing, logistics, and global supply chain,” Santone said. Then he discovered the design patent bar.

The PTO launched it to expand opportunities to practice before the agency, including for members of underrepresented communities. Then-Director Kathi Vidal told Bloomberg Law in 2022 the traditional requirements to practice are oriented around utility patents and don’t align with what’s needed to practice in the design space. Instead of that technical background, applicants to the new bar must have a degree in industrial design, product design, architecture, applied arts, graphic design, fine or studio arts, or art education.

But Santone is one of just 47 people to apply to join the design patent bar from its January 2024 launch through Feb. 1, 2026, according to PTO records.

There are only five registered design practitioners—all of them patent agents, not attorneys. That limits their practice to working on patent applications, rather than litigating cases before agency tribunals.

Despite the low numbers, the design patent bar is needed, said Sarah Fackrell, co-director of Chicago-Kent College of Law’s intellectual property program.

“Art people have something unique and valuable to bring to this field,” she said. “The creation of the design patent bar is incredibly, symbolically important in recognizing that.”

The PTO declined to comment for this story.

New Bar, Same Exam

Most of the application process was seamless for Santone, he said. He sent the PTO his credentials, including his transcript, so they could verify his degree. Then he had six months to take the exam.

But unknown to Santone, he said, was what the test would looks like. He spoke with attorneys and PTO staff to learn whether the design-focused exam would be different than the one for utility-patent practitioners, who need backgrounds in science, technology, engineering, and math, collectively called STEM.

But the test is the same, according to Alan Herda, a Dallas-based partner at Haynes and Boone.

That presents a barrier to entry for those with design backgrounds—but possibly an appropriate one—Herda said, noting that design and utility patent case law have moved closer together in the last few years with courts rulings on issues, including obviousness.

Many people with arts backgrounds don’t have the experience studying the “dense subject matter” of utility patents, Santone said, noting that he prepared for the exam by taking a popular prep course that many utility-patent attorneys use to study. He said he knows people who’ve applied for the design patent bar and couldn’t pass the exam.

“It’s a really difficult test,” Santone said. “They’ve taken it a few times now, and they haven’t passed.”

When Elizabeth Ferrill of Finnegan, Henderson, Farabow, Garrett & Dunner LLP took the patent bar exam early in her career, she said, 20% of questions concerned the Patent Cooperation Treaty, which isn’t relevant for design patents.

“You would be investing time to take a test that has a lot of things on it that have nothing to do with design patents,” Ferrill said.

The exam focuses mostly on rules for patent applications, prosecution, and interacting with the PTO, according to Ferrill. The test is less of a barrier if applicants, including those with arts backgrounds, are prepared.

More Action Needed

It’s much too soon to say whether the design patent bar is a success, said Dan Gajewski, a director for Sterne Kessler’s Mechanical & Design Practice Group.

“It makes sense that we’re only seeing it start with agents and not attorneys, because of the education requirements and qualifications that we need,” Gajewski said. The pipeline of attorneys and law students with design backgrounds could take longer to build, he said.

Saying the PTO had opened the door only a “crack,” Fackrell suggested expanding the types of degrees that can qualify applicants to become design patent practitioners.

“Design patent prosecution is essentially a legal endeavor,” she noted, and a broader range of degrees could allow more attorneys without technical backgrounds to apply.

More outreach to students is needed, too. Both Gajewski and Herda said they remember IP attorneys speaking to their undergraduate engineering classes.

“During the presentation, you realized that being a patent lawyer was an option for engineers in the future,” Herda said.

Santone, though, said he didn’t “learn a single sentence about patents or IP” during his time in art school.

Fackrell said she shared a similar experience: She went to college for art and design, finding her way to law school after being encouraged by her undergraduate media law professor to pursue it.

But not everyone was so encouraging.

“The truth is when you’re an art major, people don’t exactly encourage you to go to law school,” Fackrell said. “I was treated by some people like I was some kind of delusional Elle Woods wannabe.”