Can a Patent Agent Prepare a Patent License or an Assignment?

February 28, 2007 on 8:41 am | In The-Practice-of-Law, USPTO |

New Federal Register Notice of note: Changes to Representation of Others Before the United States Patent and Trademark Office (28 Feb 2007).

SUMMARY: In December 2003, the United States Patent and Trademark Office (Office) proposed amendments to, inter alia, the rules governing disciplinary proceedings for attorneys and agents who practice before the Office, principally rules 11.2, 11.3, 11.5, and 11.14 through 11.62. One hundred fifty-seven written comments were received. After reviewing the written comments, the Office has decided to revise several of the rules as then proposed and request additional comments on those revised proposals. Other proposed rules contained in the earlier Notice of Proposed Rule making remain under consideration by the Office. This supplemental notice of proposed rule making sets forth revisions that the Office is proposing to the rules governing the
conduct of investigations and disciplinary proceedings. Interested individuals are invited to comment on the proposed revisions in the rules.

Regarding whether a patent agent can prepare a license or assignment:

But for limited situations noted below, a registered patent agent is not authorized by his or her registration to practice before the Office to draw up a contract or to select contract forms for a client relating to a patent, such as an assignment or a license, if the state in which the agent resides or practices considers drafting contracts the practice of law. Assignments and licenses are the creation of state, not federal, statutory law.

[Via Hal Wegner]

Update: Russ Krajec ponders “This has a profound and negative effect on patent attorneys as well, as any assignment filed for an out of state client would also fall into this trap.” and Dennis Crouch opines on the ethics of representing out of state patent clients.

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2 Comments

  1. If an Assignment is a creation of each State, why do we record them with the USPTO?? Simply convenience??

    Comment by Norton R. Townsley — March 1, 2007 #

  2. Yup. An assignment is a contract and you don’t have to file it with the USPTO at all for it to be valid. It’s just convenient to do so and puts it on record for people to see. You can also put in the “assignee” box on the cover of a patent whatever you want. The assignment doesn’t have to be filed at the USPTO… it could be a private contract that only the inventor and assignee have.

    Comment by M Feigin — March 1, 2007 #

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