When hair-loss specialist Tiffany Young explained her idea for hair extensions that attach to a headband rather than hair clips, she recalled feeling as though her male patent attorney failed to grasp the novelty of the concept.
Young wanted to patent the idea to help people with conditions like alopecia or cancer so they wouldn’t need a lot of existing hair to anchor the extensions. After receiving an initial rejection from the US Patent and Trademark Office, Young said her attorney gave up on the case.
“I felt like it was because it was a product intended for women, and he didn’t have an interest in that particular field,” she said. “I felt a little demoralized.”
The PTO is aiming to help women inventors avoid the sort of dismissiveness Young encountered, by proposing to create a separate practice bar for design patents. One goal of the initiative is to open the doors to more women practitioners at the agency.
The new bar would allow attorneys without backgrounds in science and engineering—currently prerequisites to practice patent matters before the PTO—to protect a product’s aesthetic elements with design patents. It would distinguish this practice area from more technical utility patents, which cover inventions with a functional purpose.
While it wouldn’t apply to utility patents like Young’s, a design patent bar could still lower barriers to entry into some intellectual property practices and provide a major boost to women who want to work in the space—with benefits that could redouble back to women inventors, who may find new advocates—attorneys and IP experts told Bloomberg Law.
“It seems like we’ve got this exclusionary rule that not only is not tailored to the apparent problem at hand, but it is excluding the people who actually have the most relevant knowledge,” said Sarah Burstein, co-director of the Suffolk Law IP Center.
A Patent Bar ‘Lite’
The PTO Oct. 18 solicited public comment on “whether the creation of a separate design patent practitioner bar would be beneficial to the public and the Office,” with a specific focus on opening up opportunities to a more diverse group of people.
“From my perspective, if you look at the technical requirements of practicing before the PTO, they’re really oriented around utility patents,” PTO Director Kathi Vidal recently told Bloomberg Law in an exclusive interview. “They do not align with the criteria that you need to practice in the design space.”
Currently, people who file and prosecute patents at the PTO must hold a technical degree in a science or technology field and pass the PTO’s registration exam. Practitioners agree the educational requirements make sense for handling the complex claims and subject matter associated with utility patents.
Design patents, on the other hand, cover the look and feel of a range of recognizable everyday products—from AirPods’ unique earbud shape, plastic Crocs shoes, and Yeti coolers to less tangible products like the iPhone graphic user interface.
Given that such applications are primarily composed of drawings, not explanatory text, and center on distinctive aesthetic elements, the PTO is considering opening up the degree requirements for design patent work to people in fields like industrial design, product design, architecture, graphic design, studio arts, and art teacher education—fields where women and minorities tend to be more well-represented than in STEM specialities. Those degrees are the ones typically held by patent agents that examine design patents, according to the PTO’s comment request.
“I don’t see that there’s a crying need to know molecular biology to submit a picture of a handbag,” said Jane Shay Wald, who chairs Irell & Manella LLP’s trademark practice. “It drops away a lot of entry requirements so that there would be a patent bar lite.”
Knobbe Martens partner Mauricio Uribe agreed there’s a “logical disconnect” between the requirements to file design patents and the amount of STEM specialization such applications actually require. It’s a factor that has a disproportionate effect on women and minorities, groups already underrepresented in the STEM fields needed to practice at the PTO, he noted.
Fewer than 22% of patent attorneys and agents registered with the PTO are women, a 2020 diversity and inclusion study led by the Virginia patent law firm Harrity & Harrity LLP found. Fewer than 2% of those groups are women who are members of minority groups, another study found.
While there are practical implementation questions that still need to be answered, Uribe said, it’s clear “we can deemphasize that technical degree” for design patents.
“I think there’s going to be a lot of energy behind it, a lot of support,” he said.
Some experts theorize that making it easier to practice in the design patent space would have a twofold benefit: it could bring more women to the PTO as practitioners and make available a new cohort of practitioners that women inventors could trust with their ideas.
“Women are excelling in the design space,” said Meredith Lowry, a Wright Lindsey Jennings patent attorney. “We do see a lot of innovation there, but it’s not necessarily innovation that’s something we’d file a utility patent on.”
Lowry said she’s had clients who wanted to protect designs—for items such as an improved nail polish brush and a hanger for thong underwear—who might otherwise have been discouraged by an attorney who didn’t use the products himself or understand the value of protecting them with a design patent.
The bias has plagued other women like Sara Blakely, the founder of Spanx, who in the late 1990s wanted to patent her invention for women’s shapewear. Blakely couldn’t find a single female patent attorney in Georgia. Male patent attorneys she visited “were not super impressed” with her idea, Blakely previously told NPR, and she ended up drafting much of the application herself.
“I see a lot of women who have a lot of very specific women’s health, women’s needs inventions, and they do not want to talk to a male about it,” Lowry said.
The PTO is asking the public to weigh in on how a limited practice program would work. For example, should design practitioners simply be allowed to take the general patent practitioner bar, or should they take a separate test centered on design patents? If so, a new test would have to be created.
While the spirit of the proposal is admirable, it presents several practical challenges, said Tracy-Gene Durkin, who leads Sterne, Kessler, Goldstein & Fox PLLC’s mechanical and design practice. For one, writing and administering a stand-alone design bar test could be pricey and distract the PTO from clearing its backlog of pending design patent applications.
A separate exam might also be unnecessary, she added, as many test questions cover concepts broadly applicable to practicing at the PTO. She expressed concern that agents only practicing on the design side might inadvertently steer people away from pursuing utility patents when that would best fit a client’s needs.
“If they don’t understand utility patents, they’re not even qualified to give advice on whether or not something may or may not be protectable for utility patents. Do you run the risk of them not fully counseling clients in that area?” she said.
In that sense, Durkin said, perhaps a better way to increase diversity at the PTO would be to bring more women into STEM fields and to better publicize patent practice as a career.
After her first patent attorney left her case, Young hired Durkin, who helped her rewrite the claims that described her hair extension application. The patent remains pending at the PTO.
In the meantime, Young said she supports any movement that can help other women avoid the painful start of her career as an inventor.
“It could disrupt—I hate to say it—the ‘good old boys club’ that I encountered when trying to get a female invention,” Young said.
The PTO’s comment period is set to close Jan. 17.