The Invent Blog®

Interesting quote in the comments (Comment 9) to the NEW rule set I mentioned previously on “Changes to Representation of Others Before the United States Patent and Trademark Office; Final Rule (14Aug2008)” (emphasis added):

Non-practitioners are not entitled to provide legal advice or otherwise practice law. To the extent practice of law includes a law-related service that comprehends any matter connected with the presentation to the Office, the preparation of necessary documents in contemplation of filing the documents with the Office, and communicating with * * * a client concerning matters pending or contemplated to be presented before the Office as in § 11.5(b), a practitioner authorized by relevant law must provide the legal services. For example, consultation with a client in contemplation of filing a patent application or other document with the Office as in § 11.5(b)(1) requires a registered practitioner to provide the services.

Perhaps a warning shot to any companies (including invention promotion firms) that file quick provisional patent applications for inventors that were not drafted by licensed patent practitioners.

Another interesting quote that follows right after the above quote:

A practitioner may not circumvent the Disciplinary Rules through the actions of another. See 37 CFR 10.23(b)(2). For example, a non-practitioner who is neither employed nor retained by the practitioner, or who is not under the supervision of the practitioner, may not assist the practitioner in matters pending or contemplated to be presented to the Office.

Perhaps a warning shot to patent attorneys/agents working with third-party patent application mills as their out-house “patent practitioner” where the communication with the client and drafting is done by the application mill and not the practitioner. I suppose one could argue that the practitioner in such an arrangement is essentially renting his/her license to the third party, merely serving as a “rubber stamp” before filing at the Patent Office.

Thoughts?

I am a big fan of public.resource.org’s quest of making government data more accessible.

One of their projects is freeing caselaw…providing “open” copies of caselaw decisions. They have already compiled US, F1, F2 and F3 decisions into free copies. See: http://bulk.resource.org/courts.gov/c/.

Doing my part, I recently compiled a list of (most) of the U.S. Supreme Court patent law decisions. With that list in hand, I looked up the corresponding bulk.resource.org links, creating a page with links to copies of all of the cases. Take a look at my handy work: http://inventblog.com/copies-of-supreme-court-patent-cases. Let me know what you think.

Maybe I’ll have to start working on the Fed.Cir. cases next.

For ease of updating, I moved the list to a separate page.  See:  http://inventblog.com/supreme-court-patent-cases

If you have Outlook 2007 running on an Exchange Server, you might be interested in one of Microsoft’s new prototype plugins. Called “Email Prioritizer” that “provides a ‘do not disturb’ button that temporarily pauses new email arrival, and prioritizes email with a 0-3 star rating system.” [hat tip Wade Dorrell via Twitter]

We recently had a patent engineer in our office who was studying for the patent bar exam (and eventual “patent agent” status). To wit, I spent some time recently trying to really understand what a patent agent can/can’t do (beyond standard prosecution). Here is the list that I was able to come up with (Note: this list is not legal advice…and if you have contrary (or supporting citations), please let me know):

• Patent agents are allowed to practice federal law (not state law) as long as it is within the scope of what their PTO registration allows them (licenses) them to do, regardless of whether or not it would otherwise be considered unauthorized practice of law (UPL) under state law. See Sperry v. Florida, 373 U.S. 379 (1963). Thus, while the State of [Insert State Here] may consider the act performed to be “Unauthorized Practice of Law,” the Supremacy Clause trumps.
• Patent agents can perform patent searches.
• Patent agents are NOT licensed by the USPTO to practice trademark law.
• Patent agents cannot appeal to the Federal Circuit.
• Patent agents cannot advise a client regarding infringement.
• Patent agents can RECORD assignments. “It has been the long-standing position of the Office that a registered patent agent … may submit the assignment or license for recordation.” OG Notice 27 March 2007.
• Patent Agents CANNOT draft contracts, licenses or assignments (unless the state in which he/she practices allows it).
  

  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. Although 35 U.S.C. 152, 202, 204 and 261 refer to assignment or licensure of patents or patent rights, assignments and licenses are forms of contracts, which are creatures of state, not federal law. Contracts are enforceable under state law. The authority to prepare contracts and provide advice regarding the terms to include in contracts is subject to the state law regarding who is authorized to practice law. In contrast, submission for recordation of assignments and licenses is a ministerial act that does not require legal training. It has been the long-standing position of the Office that a registered patent agent may prepare a patent assignment or license if not prohibited by state law…

  OG Notice 27 March 2007 (emphasis added).

Today (August 14, 2008), the USPTO released a NEW rule set (55 pages, Effective Date: September 15, 2008): Changes to Representation of Others Before the United States Patent and Trademark Office; Final Rule (14Aug2008) [hat tip Hal Wegner]. That rule set includes a major overhaul of 37 CFR § 11.5 “Register of attorneys and agents in patent matters; practice before the Office.”

Specifically, 11.5(b)(1)(ii) states that the only assignment drafting that one’s PTO registration allows a practitioner to do is:

(ii) Drafting an assignment or causing an assignment to be executed for the patent owner in contemplation of filing or prosecution of a patent application for the patent owner, where the practitioner represents the patent owner after a patent issues in a proceeding before the Office, and when drafting the assignment the practitioner does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party.

The result (as I understand it) is…if the “assignment work performed” doesn’t meet those qualifications, the Supremacy Clause doesn’t apply and the act of doing so could be considered unauthorized practice of law under state law.

Anyone have differing thoughts?

Why in the world is it so difficult to find the USPTO Code of Professional Responsibility online?

Why isn’t it clearly linked to on the OED’s website? Seriously! While those rules are hammered into every attorney’s head (they are generally duplicative of our state bar ethics rules), non-attorney practitioners (in my experience) don’t always remember them (e.g., if you advertise on the Internet, Rule §10.32 requires you to “include the name of at least one practitioner responsible for [the advertisement's] content.”).

Where is it located? It is located in MPEP – Appendix R at Section 10 et seq.

For the benefit of future Internet searches, please pardon the following list of keywords:

§ 10.4 Committee on Discipline, § 10.11 Removing names from the register, § 10.14 Individuals who may practice before the Office in trademark and other non-patent cases, § 10.15 Refusal to recognize a practitioner, § 10.18 Signature and certificate for correspondence filed in the Patent and Trademark Office, § 10.20 Canons and Disciplinary Rules, § 10.22 Maintaining integrity and competence of the legal profession, § 10.23 Misconduct, § 10.24 Disclosure of information to authorities, § 10.31 Communications concerning a practitioner’s services, § 10.32 Advertising, § 10.33 Direct contact with prospective clients, § 10.34 Communication of fields of practice, § 10.35 Firm names and letterheads, § 10.36 Fees for legal services, § 10.37 Division of fees among practitioners, § 10.38 Agreements restricting the practice of a practitioner, § 10.39 Acceptance of employment, § 10.40 Withdrawal from employment, § 10.47 Aiding unauthorized practice of law, § 10.48 Sharing legal fees, § 10.49 Forming a partnership with a non-practitioner, § 10.57 Preservation of confidences and secrets of a client, § 10.62 Refusing employment when the interest of the practitioner may impair the practitioner’s independent professional judgment, § 10.63 Withdrawal when the practitioner becomes a witness, § 10.64 Avoiding acquisition of interest in litigation or proceeding before the Office, § 10.65 Limiting business relations with a client, § 10.66 Refusing to accept or continue employment if the interests of another client may impair the independent professional judgment of the practitioner, § 10.67 Settling similar claims of clients, § 10.68 Avoiding influence by others than the client, § 10.77 Failing to act competently, § 10.78 Limiting liability to client, § 10.84 Representing a client zealously, § 10.85 Representing a client within the bounds of the law, § 10.87 Communicating with one of adverse interest, § 10.88 Threatening criminal prosecution, § 10.89 Conduct in proceedings, § 10.92 Contact with witnesses, § 10.93 Contact with officials, § 10.101 Action as a public official, § 10.102 Statements concerning officials, § 10.103 Practitioner candidate for judicial office, § 10.111 Avoiding even the appearance of impropriety, § 10.112 Preserving identity of funds and property of client, § 10.130 Reprimand, suspension or exclusion, § 10.131 Investigations, § 10.132 Initiating a disciplinary proceeding; reference to an administrative law judge, § 10.133 Conference between Director and practitioner; resignation, § 10.134 Complaint, § 10.135 Service of complaint, § 10.136 Answer to complaint, § 10.137 Supplemental complaint, § 10.138 Contested case, § 10.139 Administrative law judge; appointment; responsibilities; review of interlocutory orders; stays, § 10.140 Representative for Director or respondent, § 10.141 Filing of papers, § 10.142 Service of papers, § 10.143 Motions, § 10.144 Hearings, § 10.145 Proof; variance; amendment of pleadings, § 10.149 Burden of proof, § 10.150 Evidence, § 10.151 Depositions, § 10.152 Discovery, § 10.153 Proposed findings and conclusions; post- hearing memorandum, § 10.154 Initial decision of administrative law judge, § 10.155 Appeal to the Commissioner, § 10.156 Decision of the Commissioner, § 10.157 Review of Commissioner’s final decision, § 10.158 Suspended or excluded practitioner, § 10.159 Notice of suspension or exclusion, § 10.160 Petition for reinstatement, § 10.161 Savings clause, § 10.170 Suspension of rules.

- Expanded PDF size–”On or about August 29, 2008, the USPTO plans to enhance TEAS to (1) increase the size limitation of PDF attachments from 3 to 5 megabytes; and (2) accept other “non-Adobe flavors” of PDFs. Please note, however, that the number of pages within any PDF file may not exceed 100 pages, separate and apart from the 5 megabyte limit.” (New 07/10/2008)
- Paper filing required (New 08/01/2008)
- Filing requests to divide (Updated 08/01/2008)
- PDF Requirements (Updated 07/10/2008)
- Post-Publication Amendments (Updated 08/01/2008)
- Language updates ITU and Post-Registration forms. (New 08/01/2008)
- ROA Character Conversions New 08/01/2008)

I just noticed something I hadn’t seen before…the TEAS form signature block now directs attorneys to provide which state bar they are a member of:

If an attorney, enter “Attorney of record, [specify at least one state] bar member.”

Update, I also notice that you must select a box that says:

I hereby confirm that this response addresses each issue raised in the Office action or any previous Office action incorporated by reference, and does not consist only of a signature (unless the missing signature was the sole issue raised within the Office action).

Someone asked me about health insurance options for small businesses earlier. I pointed them to a three year old post I wrote on “Health Savings Accounts for Lawyers and Business Owners.”

I’m still using mine and am VERY glad I set it up.

A few months ago I had our office’s insurance guru give me a quote to add my family back to the Firm’s plan. His answer was $1700. OUCH. Needless to say, I’ll be keeping my HSA.

Excellent summary by Gene Quinn of PLI Patent Blog regarding “EAR Export Licenses” as they relate to outsourcing patent application drafting.