Who May Practise, and On What Terms

Three rules taking effect across 2024 changed who may appear before the USPTO and on what terms. The first created a separate design patent practitioner bar: applicants with a degree in industrial design, product design, architecture, applied arts, graphic design or fine arts may now sit for registration, and those admitted practise in design matters only. The second reworked motion-to-amend practice at the Patent Trial and Appeal Board, giving a patent owner the option of preliminary guidance on a motion and the option of one additional revised motion. The third let parties proceed without backup counsel on a showing of good cause, such as lacking the resources for two counsel, and streamlined repeat pro hac vice recognition. Together they matter most to how a firm staffs a matter.

They are separate rulemakings sharing a theme and nothing else. Cite the underlying rule, not this page.

Three Rules at a Glance

The Design Bar Is Additive and Bounded

"Prior to this rulemaking, there was only one patent bar" for those who practise in patent matters before the Office. Now there are two. The new one opens registration to a population that could not previously sit, and confines that population to design matters. An existing general practitioner is unaffected and retains authority over design work; a design-only practitioner gains a bounded authority that does not reach utility matters. The staffing question that follows is whether a design matter is being handled by someone whose admission stops at the design bar.

Motions to Amend Cut Both Ways

The motion-to-amend rule expands both sides of the same exchange. The patent owner gets preliminary guidance and one revised motion. The Board gets confirmed room to raise its own grounds, with the rule clarifying that "a preponderance of evidence standard applies to any new ground of unpatentability" it raises. And the Hunting Titan decision, described as one "which places limitations on the Board's exercise of discretion to raise grounds", "is de-designated from precedential status as of the" rule's effective date.

For a patent owner, that makes amendment strategy an early decision rather than a late fallback: the guidance and the revised motion are worth planning for at the start of a proceeding. For a petitioner, the de-designation matters in the other direction.

Backup Counsel: Available but Narrow

The good-cause example the Office chose, lacking the resources for two counsel, points the relief at under-resourced parties rather than at convenience. A party with the means to field backup counsel should not expect the exception to be read broadly. "Good cause" is illustrated, not defined; that reading is an inference about emphasis, not a holding.

The same rule set up "a streamlined alternative procedure for recognizing counsel pro hac vice that is available when counsel has previously been recognized pro hac vice in a different PTAB proceeding", and those recognised "have a duty to inform the Board of subsequent" changes bearing on that recognition.

• Whether the design bar's admission requirements have been revised since, or how many have been admitted, is not in these documents.
• The motion-to-amend effective date is taken from the Federal Register's own record for the document rather than quoted from the rule's text.
• All three rules are in force at the record date above; no decision applying them is captured.

What This Does Not Decide

• It does not say whether anyone is eligible for the design bar.
• It does not say whether a specific motion to amend would succeed.
• It is about who may appear and on what terms, and says nothing about patentability.

Educational, not legal advice. This page reports what an authority says. Applying it to a matter is work for a registered practitioner with the file in front of them.