Patent Agents Can’t Do X

August 14, 2008 on 3:45 pm | In Caselaw, Legislation/Regulation, USPTO |

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?

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