Patent Timing...
TheMarshall
I have via my patent lawyer. The idea (which I can not and will not go
into) is very simple and has high profit ability. I have all the
funding I need for this project. My question is how log should a
provisional patent take for me to know the Provisional patent is truly
mine? In other words how long do I have to wait for my Provisional
patent to show up in a search?
Glen
aaron
wrote:
>My question is how log should a
>provisional patent take for me to know the Provisional patent is truly
>mine? In other words how long do I have to wait for my Provisional
>patent to show up in a search?
>
>Glen
I think you have misunderstood the purpose of a provisional patent. A
Provisional Application for Patent (PAP) will not be published or
searchable, unless you follow up the PAP with a non-provisional
application within one year. Otherwise, the PAP becomes abandoned and
will never be published.
See:
http://www.uspto.gov/web/offices/pac/doc/general/index.html#provisional
So, you have 12 months to file a non-provisional application, with
claims, oath, and declaration. Unless you file a nonpublication
request (for patent applications that will not be filed in another
country), your non-provisional and provisional applications will be
available to the public in about 18 months after the filing date of
the PAP.
Aaron
aaronapm AT yahoo DOT com
Richard
attorney did not clearly explain to you the function of a provisional
application for patent.
Perhaps your attorney mentioned receiving a recipt from the patent
office. The attorney may have mailed a return postcard along with the
application. If it's been three weeks since the application was filed,
the postcard confirming recipt of the application should be coming back
shortly.
Richard Tanzer
TheMarshall
have... how would I know? I don't want to dump a ton of money into
this if someone else has claimed the idea.
Is there any way to search for Provisionals? This should public
information ... right?
James White
> I have filed a Provisional Patent three weeks ago for a very good idea
Wrong, you filed a Provisional Application----it dies completely (with no
one being the wiser and you getting no rights from it) in 12 months if you
don't file the full application with all the fees for processing, etc. You
might want to study the www.idearights.com link (and any of the others in my
sig). All you've done so far is put in an oar by way of getting a priority
date for anything in your Provisional Application that is novel and
non-obvious. Good luck.
> mine? In other words how long do I have to wait for my Provisional
> patent to show up in a search?
It never will unless you follow through with a full application which does
issue then your Provisional Application will be available to anyone who
wants it bad enough even though it won't really be "published" or
searchable.
--
James E. White
Inventor, Marketer, and Author of "Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)" Info Sites: www.willitsell.com www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com
[Follow sig link for email address. Replies go to spam bit-bucket]
James White
> So what if someone filled a Provisional for the same Idea that I
> have... how would I know?
You won't and can't unless their full application issues as a patent WITHIN
the year your Provisional Application holds a priority date.
> I don't want to dump a ton of money into
> this if someone else has claimed the idea.
First, you cannot claim an "idea," you have to have some "embodiment" of
that idea whether it be physical or a process or a compound or whatever of
the specifically allowable kind of things for which patenting is available.
Second, quoted directly from your prior post:
> I have all the funding I need for this project.
Do you or don't you. All the funding you "need" is 100% at risk and you MUST
put it at risk WITHOUT any way of knowing all the answers in advance. That's
just the way the game gets played. (Lesson 2 in Business 101.)
> Is there any way to search for Provisionals? This should public
> information ... right?
No way to search, they are NOT public information. Time to quit making up
the law in your own head and start studying it as it really is!!! (You're at
least the 257,000th inventor this year to "make up patent law" so don't
worry that you're all alone out there.)
Mike Brown
>>have... how would I know?
> You won't and can't unless their full application issues as a patent WITHIN
> the year your Provisional Application holds a priority date.
Slight correction - you will know if and when their patent is issued, OR
if the utility patent application they file based on their provisional
is published, eighteen months after the provisional filing date.
--
Michael F. Brown
Registered Patent Attorney No. 29,619
James White
--
James E. White
Inventor, Marketer, and Author of "Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)" Info Sites: www.willitsell.com www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com
[Follow sig link for email address. Replies go to spam bit-bucket]
"Mike Brown" <br...@bpmlegal.com> wrote in message
news:43a1771a$1...@news2.lightlink.com...
TheMarshall
Thank you for your clear explanation.
James White,
It was just a simple question about the search capabilities on
provisional. I am no lawyer I just wanted a quick answer about the
Provisional. I stated that I have all the funding I need because I
didn't anyone to think I am looking for money. And yes it is not
just an idea there is a working prototype. Overall you input was
helpful and appreciated.
Emma Anne
> And it's disappointing that your patent
> attorney did not clearly explain to you the function of a provisional
> application for patent.
Well . . . we don't have the patent attorney's side of the story. :-)
TheMarshall
My posted question was about searching for a Provisional patent, not
the function.
markde...@hotmail.com
what do you mean "need"? having more money is always good. if you
have leftover money and dont want it, give it to me.
Richard
"It's diappointing that after working with your patent attorney, you
still do not clearly understand the function of a provisional
application for patent."
The bottom line is that even after working with the attorney, the
inventor was still confused.
- Rich
markde...@hotmail.com
charge more? isn't it smarter to hire a patent agent; you can always
hire a real attorney later on if litigation is necessary.
Alun L. Palmer
@g47g2000cwa.googlegroups.com:
They often are, despite our best efforts.
Alun Palmer, Patent Agent
Alun L. Palmer
@z14g2000cwz.googlegroups.com:
> what can a patent attorney do that a patent agent cannot do, except
> charge more? isn't it smarter to hire a patent agent; you can always
> hire a real attorney later on if litigation is necessary.
>
>
Of course I agree with you, but then I would, wouldn't I?
Alun Palmer, Patent Agent
Mike Brown
> charge more?
That's not really a fair assessment. I'll try to summarize the differences:
Everyone agrees that for routine patent application prosecution
purposes, attorneys and agents are legally equivalent. They both passed
the same patent bar exam at the USPTO, and are equally licensed by that
agency to practice before it. If all you want is someone to prepare,
file and prosecute a patent application before the USPTO, the choice of
attorney or agent will come down to individual differences in
background, personality and ability, not license.
I also think everyone agrees that patent agents cannot give legal advice
unrelated to patents, or litigate in court. Patent agents also cannot
file trademark applications, even though they are filed in the USPTO.
Many, if not most, of my clients have questions about contracts,
business formation, trademarks and copyrights in addition to their
patent issues at some point in our relationship. For those issues, a
patent agent is not legally permitted to offer advice.
The limits of "patent-related" advice which a patent agent can give is
debatable, and predictably some patent agents have a much broader
definition than some patent attorneys. There is a great deal of debate,
which does not bear repeating here, about whether or not patent agents
can issue validity or infringement opinions (there is no debate that
patent attorneys can). That issue's been beaten to death on this group -
if you're really masochistic, look at the archives.
> isn't it smarter to hire a patent agent; you can always
> hire a real attorney later on if litigation is necessary.
That's one reason why many prosecution firms (including ours) have a mix
of attorneys and agents.
On the other hand, in the end you really should choose your professional
based on his/her ability to understand your technology and communicate
with you. The difference in cost between an attorney and an agent may or
may not be significant in the end - my billing rate is higher than the
agents' who work for me, but I work sufficiently faster that the total
cost is in the same ballpark either way. Many firms are happy to offer a
fixed fee quote for a specific job such as preparing and filing an
application, and if you're comfortable with the quote and the
professional who will be doing the work, it's really irrelevant if
he/she is an attorney or an agent.
pltrgyst
>Many, if not most, of my clients have questions about contracts,
>business formation, trademarks and copyrights in addition to their
>patent issues at some point in our relationship. For those issues, a
>patent agent is not legally permitted to offer advice.
Really? I'd have thought it was legal for anyone to offer advice to anyone else
on absolutely any subject. Caveat emptor, of course.
-- Larry
Roger Schlafly
> I also think everyone agrees that patent agents cannot give legal advice
No, that is not true. The precise rules vary from state to state,
but I don't think that any state has such a broad prohibition
on giving legal advice.
> The limits of "patent-related" advice which a patent agent can give is
> debatable, and predictably some patent agents have a much broader
> definition than some patent attorneys. There is a great deal of debate,
> which does not bear repeating here, about whether or not patent agents can
> issue validity or infringement opinions (there is no debate that patent
> attorneys can). That issue's been beaten to death on this group - if
> you're really masochistic, look at the archives.
I'll just note that no patent agent has been successfully prosecuted
for issuing validity or infringement opinions. The debate is an academic
one, as there is no practical obstacle to patent agents issuing such
opinions.
Roger Schlafly
Yes. The attorney can represent you in court. That is the only
advantage to using a patent attorney.
Richard
For the price of a beer, I'll give you casual advice on just about
anything. My understanding is that casual advice from someone who does
not claim to be an expert generally isn't a problem. If you ask me how
to fix your car, or how to cook chili, or how to evict your tenant, or
what to do about my swollen knee; I don't think I would have any
liability for my advice - assuming that I don't claim to be an auto
mechanic, a cook, or a lawyer, or a doctor.
In contrast, if someone asks me (a patent agent) for professional legal
advice beyond my competency, such as how to prepare a complex patent
assignment, or how to deal with a patent infringement issue, I should
refrain from providing specific legal advice. If I provided advice and
that person acted on it (and it turned out badly for them) I might be
liable for practicing law without a license, and I might be in danger
of losing my status as a registered patent practitioner.
Anyway ... that's my non-lawyerly understanding.
Richard Tanzer
Roger Schlafly
> In contrast, if someone asks me (a patent agent) for professional legal
> advice beyond my competency, such as how to prepare a complex patent
> assignment, or how to deal with a patent infringement issue, I should
> refrain from providing specific legal advice. If I provided advice and
That is quite a bit different. Mike said, "For those issues, a patent
agent is not legally permitted to offer advice." It is just not true
that patent agents are prohibited from offering advice on those
issues.
Mike Brown
PLEASE don't take my statements out of context and then say I'm wrong.
These are NOT the "those issues" I was referring to.
I did *not* at any time say that patent agents could not offer advice on
infringements, patent assignments, etc. In fact, I specifically said
that the issue is debatable, and has been debated ad nauseam, and I
won't get involved in that debate. I have not stated my opinion on the
issue at all - if I did, you might find that we are closer than you
think. For argument's sake I'll concede that as a patent agent you can
do anything you like if it's related to prosecuting a patent (I don't
believe the preemption is quite that broad, but I don't want to waste my
time arguing just how broad it is).
What I specifically said was that "patent agents can't offer legal
advice UNRELATED TO PATENTS, or litigate in court". Your response was
that "No, that is not true. The precise rules vary from state to state,
but I don't think that any state has such a broad prohibition on giving
legal advice."
New York does:
---
Judiciary Law, Article 15
§478. Practicing or appearing as attorney-at-law without being
admitted and registered.
It shall be unlawful for any natural person to practice or appear as an
attorney-at-law or as an attorney and counselor-at-law for a person
other than himself in a court of record in this state, or ... to hold
himself out to the public as being entitled to practice law as
aforesaid, or in any other manner, ... in such manner as to convey
the impression that he is a legal practitioner of law or in any manner
to advertise that he either alone or together with any other persons
or person has, owns, conducts or maintains a law office or law and
collection office, or office of any kind for the practice of
law, without having first been duly and regularly licensed and admitted
to practice law in the courts of record of this state, and without
having taken the constitutional oath.
484. None but attorneys to practice in the state.
No natural person shall ask or receive, directly or indirectly,
compensation for appearing for a person other than himself as attorney
in any court or before any magistrate, or for preparing deeds,
mortgages, assignments, discharges, leases or any other instruments
affecting real estate, wills, codicils, or any other instrument
affecting the disposition of property after death, or decedents'
estates, or pleadings of any kind in any action brought before any
court of record in this state, or make it a business to practice for
another as an attorney in any court or before any magistrate unless he
has been regularly admitted to practice, as an attorney or
counselor, in the courts of record in the state;
---
Here are a few New York cases on point:
"With certain exceptions, no person may appear for anyone other than
himself in any court or before any magistrate or give legal advice for
another, unless he has been licensed to practice as an attorney and
counsellor at law in New York" Jemziura v McCue (1973)
"State has strong public policy against practice of law in New York by
any person, unless he has been regularly admitted to practice as an
attorney or counsellor in courts of record of the state, and any
unauthorized practice of law is a misdemeanor." Dacey v NY County
Lawyer's Assn (1968)
----
The Sperry case, which said that Florida could not stop patent agents
from practicing under UPL, would pre-empt this blanket prohibition for
patent agents, but only insofar as their Federal authorization permits -
the Supreme Court opinion specifically says,
"In his petition for certiorari, petitioner attacked the injunction
"only insofar as it prohibits him from engaging in the specific
activities . . . [referred to above], covered by his federal license to
practice before the Patent Office. He does not claim that he has any
right otherwise to [373 U.S. 379, 383] engage in activities that would
be regarded as the practice of law." 1 We granted certiorari, 371 U.S.
875 , to consider the significant, but narrow, questions thus presented.
...
"Moreover, since patent practitioners are authorized to practice only
before the Patent Office, the State maintains control over the practice
of law within its borders except to the limited extent necessary for the
accomplishment of the federal objectives. 47 [373 U.S. 379, 403]
...
"It follows that the order enjoining petitioner must be vacated since it
prohibits him from performing tasks which are incident to the
preparation and prosecution of patent applications before the Patent
Office. The judgment below is vacated and the case is remanded for
further proceedings not inconsistent with this opinion."
---
Even more interesting are a few opinions of the Unlawful Practice of Law
Committee of the NYS Bar Association (which is authorized by New York
Judiciary Law, section 476-a, to bring actions for UPL), which say that
in New York State patent agents should not offer legal advice even
relating to patents:
"It is not proper for a non-attorney recognized to practice in the USPTO
to render legal advice or prepare legal instruments relating to such
practice in New York State" UPL Committee, Advisory opninion No. 37
"It is not proper for out-of-state attorneys, registered patent
attorneys, and patent agents not admitted to practice in New York to
engage in non-prosecution patent law practice, with certain exceptions"
Advisory Opinion No. 31
(whatever those "exceptions" are, they're related to non-prosecution
patent law, not to non-patent related law.)
I found one or two other opinions of state bars outside NY which were
similar:
From Illinois:
"Attorney B's situation raises many of the same questions addressed in
the response to question 2 above and is addressed, in part, by Sperry v.
Florida, supra. The fact that Attorney B is registered to practice
before the Patent and Trademark Office authorizes him to practice within
the Patent Office System. ***It does not authorize him to practice law
generally. It would not authorize him to file suits in federal court or
to render legal advice or service on patent and trademark issues beyond
the Patent Office System.***" (emphasis added)
VIRGINIA UPL OPINION 143
Patent Agents Admitted After January 1, 1957, Practicing Trademark Law.
"Practice by nonlawyers before administrative agencies is governed by
UPR 9-101 and UPR 9-102, which require that such practice is permissible
only as permitted by the rules of the agency. ***Nonlawyers who were
recognized to practice after January 1, 1957, as patent agents before
the Office of Enrollment and Discipline of the U.S. Patent and Trademark
Office are precluded by the regulation of that Office from also
practicing in trademark and other non-patent cases. 37 CFR 10.14(b).
Since the agency rules specifically preclude trademark practice by those
individuals, such practice would constitute the unauthorized practice of
law if conducted in Virginia.***" (emphasis added)
Extrajurisdictional Practice by Lawyers
By William T. Barker
Copyright by the author; published 56 Bus. Law. 1501 (2001).
...
"The question remaining after Sperry is the scope of the authority
conferred by admission to practice before an agency. At a minimum, it
includes representing clients before the agency in any type of
proceeding the agency can entertain (unless the authorization to
practice is limited to certain types of proceedings), together with any
services “reasonably necessary and incident to” such representation.
"It includes advising clients on whether they should institute
proceedings before the agency, just as a patent agent can advise on
whether to rely on state law protections as an alternative to seeking a
patent. As a result, and by analogy to the jurisdiction of a federal
court to determine its own jurisdiction, it must include the authority
to review a client’s problems ***and advise whether those problems can
be addressed by any of the proceedings the practitioner is authorized to
pursue (in the patent context, such advice would pertain to whether the
client has made a patentable invention).***
"Though there is scant authority on the point, I would think the
authority to practice before an agency includes planning advice:
advising a client, based on the federal law administered by the agency
admitting the practitioner, on what steps a client might take, under
state law, to pursue agency proceedings with maximum benefit or prospect
of success. ***The agency practitioner presumably could not, without
involving a state-licensed lawyer, advise on actual implementation of
such advice by drafting the necessary documents or reviewing their
efficacy under state law. If state law proceedings of some sort would be
more useful than federal proceedings, an agency practitioner could not
rely on federal authority to permit the giving of advice on the relative
merit of different state-law approaches.*** (emphasis added)
...
"The staff of the Oregon State Bar has apparently reached similar
conclusions, though it apparently does not recognize a federally
authorized practitioner’s ability to evaluate state law alternatives,
even in the intellectual property area where Sperry explicitly confirms
that right. The Bar’s deputy director and general counsel so reported in
a recent article describing reactions given by the Bar’s staff to
inquiring out of state lawyers:
"In February 1997 a Washington lawyer wrote the bar about whether he
could provide legal services to Oregon clients relating to patent,
trademark and copyright issues. The lawyer was a registered patent
agent. The lawyer posed the question whether he could offer these
intellectual property services in the State of Oregon without being a
member of the Oregon State Bar.*** The reaction he received from the bar
was that he could meet with Oregon residents in Oregon to discuss their
rights under federal law, but he could not discuss their rights under
common law even if attendant to a discussion of their federal rights.
***..." (emphasis added)
Note that even in this very broad suggestion "with scant authority" for
a patent agent to advise on state rights for planning purposes --in the
context of getting a patent-- the author makes it clear that patent
agents can't actually implement the advice by drafting documents, or
giving advice on merits of state law approaches. I think that based on
the foregoing opinions neither Oregon nor New York would even go as far
as the author would in allowing a patent agent to offer planning advice
outside the scope of his work with USPTO. None of that would allow the
patent agent to offer to write a will for the patent client, represent
him in court, or other non-patent legal services.
----
My statement, which you have labeled as "not true" was quite limited,
and I stand by it. I do not know the law of every one of the other 49
states - I am a New York lawyer. In New York State, at the very least, a
patent agent cannot offer legal advice UNRELATED TO PATENTS, and MAY NOT
LITIGATE for clients. There is a blanket prohibition against anyone
offering legal services who is not a lawyer admitted to practice in New
York - and patent agents are covered by that just as anyone else is.
Yes, Federal Law preempts for "tasks which are incident to the
preparation and prosecution of patent applications before the Patent
Office", but I can think of no such task which is NON-PATENT RELATED (by
definition). I see no way that under New York law those "tasks" could be
stretched to allow a patent agent who is not admitted to practice in New
York courts (in fact, not admitted to any court) to appear before a New
York court to represent a client in litigation.
In doing a quick check on this, I found several opinions, quoted above,
from several states, which support my contention. I found NO state or
federal law or case which permits patent agents, based solely on their
admission to prepare patent applications in the USPTO, to practice law
unrelated to patents or to appear in court for others.
If you think there is any state in which it is not unauthorized practice
of law for a patent agent - SOLELY BECAUSE HE IS A PATENT AGENT - to do
the things I listed: give legal advice or perform legal services
UNRELATED TO PATENTS, or litigate in a court, I'd be interested to know
where that is. (If there is a state where anyone may do these things,
that is not relevant, since in such a jurisdiction a patent agent is no
different than anyone else.)
Roger Schlafly
> What I specifically said was that "patent agents can't offer legal advice
> UNRELATED TO PATENTS, or litigate in court". Your response was that "No,
> that is not true. The precise rules vary from state to state, but I don't
> think that any state has such a broad prohibition on giving legal advice."
>
> New York does:
> §478. Practicing or appearing as attorney-at-law without being
> admitted and registered.
> It shall be unlawful for any natural person to practice or appear as an
> attorney-at-law or as an attorney and counselor-at-law for a person other
> No natural person shall ask or receive, directly or indirectly,
> compensation for appearing for a person other than himself as attorney in
That NY statute is not so broad as to ban giving legal advice.
It does ban appearing in court as an attorney, and certain other
practices, not just giving legal advice.
> My statement, which you have labeled as "not true" was quite limited, and
> I stand by it. I do not know the law of every one of the other 49 states -
> I am a New York lawyer. In New York State, at the very least, a patent
> agent cannot offer legal advice UNRELATED TO PATENTS, and MAY NOT LITIGATE
> for clients. There is a blanket prohibition against anyone offering legal
> services who is not a lawyer admitted to practice in New York - and patent
> agents are covered by that just as anyone else is.
If you had said that NY patent agents could not be in the business
of writing wills for money, or something else that is actually
addressed in the statute, then I would not have commented.
I agree that patent agents may not litigate for clients in court (unless
they get permission of the court). I do not agree that there is a ban
on giving legal advice. There is not a "blanket prohibition". The
actual law is much narrower than that.
You've quoted some Bar Assn statements. I guess those statements
represent the pro-lawyer political stance of those organizations.
But you haven't cited any actual law against giving legal advice.
markde...@hotmail.com
Just wondering if patent attorneys enjoy their work. How many hours do
you work if you
work for a big law firm? Do patent attorneys wish they work in a more
"exciting" area of law?
On a broader note, if one wants an "easy" high paying job, which is the
best area of law to get in to right now?
McGyver
news:1135315372.6...@g44g2000cwa.googlegroups.com...
Patent work looks dull to me, but so is my job, business law. Most jobs get
dull if everything you do has been done by you many times before. I have a
friend who is the head of a large patent law firm. I asked him how much he
has to pay a rookie right out of school who wants to be a patent attorney.
He said $225,000 per year. For that much money, dullness can be tollerated.
And at those rates, you can see why it would be necessary to work the rookie
tons of hours per week. But still, I'm sure patents attorney, like me,
sometimes wish they had gone into something more exciting, like criminal
defense.
There are no easy fields of law.
McGyver
PTRAVEL
> you work if you
> work for a big law firm? Do patent attorneys wish they work in a more
> "exciting" area of law?
For what it's worth, most of the patent attorneys in my firm are former
litigators. I find it surprising that they prefer prosecution to litigation
but, evidently, they do. Their hours vary based on the amount of work we
have in. As a rule, they do not have to do the kind of pushes that we
litigators are faced with in the month or two before a trial.
>
> On a broader note, if one wants an "easy" high paying job, which is the
> best area of law to get in to right now?
No area of law is easy, and all areas of law require a pretty significant
time committment and a lot of work. It's worse when you start as an
associate. After 13 years in practice, and having become a partner, I'm in
the office, at least, 8 am to 6 pm, Monday through Friday (and frequently
later), work a Saturday or two a month, and have to devote a considerable
amount of additional time to marketing, flying around to visit clients, etc.
When I have a trial, I'm usually 7 days a week for at least the month prior.
This is far better than when I started as an associate.
>
PTRAVEL
"McGyver" <Grey...@msn.com> wrote in message
news:fGUqf.29$mz2.16@trnddc08...
> <markde...@hotmail.com> wrote in message
> news:1135315372.6...@g44g2000cwa.googlegroups.com...
> > Just wondering if patent attorneys enjoy their work. How many hours do
> > you work if you
> > work for a big law firm? Do patent attorneys wish they work in a more
> > "exciting" area of law?
> >
> > On a broader note, if one wants an "easy" high paying job, which is the
> > best area of law to get in to right now?
>
> Patent work looks dull to me, but so is my job, business law. Most jobs
get
> dull if everything you do has been done by you many times before. I have
a
> friend who is the head of a large patent law firm. I asked him how much
he
> has to pay a rookie right out of school who wants to be a patent attorney.
> He said $225,000 per year.
That sounds a little high, though some patent attorneys command a premium,
e.g. double-Es are plentiful, but good BioChems are particularly difficult
to find just now.
Emma Anne
> Just wondering if patent attorneys enjoy their work. How many hours do
> you work if you
> work for a big law firm? Do patent attorneys wish they work in a more
> "exciting" area of law?
Personally, I love it. I like learning new things all the time. I like
inventors. I like working by myself a lot.
I don't work in a big firm, and I work quite reasonable hours. I'm not
making $225K either, though.
Bruce Hayden
I think he would have to be a fool to pay that much for
a rookie. Anywhere close to that. My view is that a patent
attorney probably needs at least five years of practice
before he isn't dangerous.
If they are actually billing out enough to cover that $225,000
a year, they are gouging. If they are paying 1/3, that means
that they must be billing him at $675,000 a year, at
2,000 hours, that works out to $337.50 per hour, clearly
outrageous for a rookie, when you can get 30 year practitioners
for less than that. And if he only has a 1700 or so hour
billing target (more likely in a patent firm), it is even worse.
--
--------------------------------------------------------------------
The preceding was not a legal opinion, and is not my employer's.
Original portions Copyright 2005 Bruce E. Hayden,all rights reserved
My work may be copied in whole or part, with proper attribution,
as long as the copying is not for commercial gain.
--------------------------------------------------------------------
Bruce E. Hayden www.softpats.com
Dillon, Colorado bha...@ieee.org
Phoenix, Arizona bha...@highdown.com
Bruce Hayden
> Just wondering if patent attorneys enjoy their work. How many hours do
> you work if you
> work for a big law firm? Do patent attorneys wish they work in a more
> "exciting" area of law?
Enjoying patent work depends primarily on one thing:
do you love technology? Those of us who do would not do anything
else. In particular, I love working with bleeding edge technology.
In my case, software and computer and processor architectures.
Whenever I get bored with the technology, I get back into law,
and when I get bored with the law, I get back into technology.
It is truly the best of both worlds.
Probably the highpoint of my career was when I was on a couple
of patent committees for a large semiconductor company. They
consisted of a bunch of PhDs and two patent attorneys. And
we would race each other to see who could first understand
the inventions being presented to us. At first, I was discounted
as a mere patent attorney. But after a year or so, I had
earned the respect of the engineers, and when I said something
was old, my opinion was respected, and we wouldn't file on it.
What must be remembered is that to do our job right, we need
to be able to understand an invention in minimal time. The
inventor may have spent years on it, but we typically have
an hour or so to understand it enough to write it up sufficiently
that we can get valuable claims allowed. If we screw this up,
they have flushed their filing money, and sometimes even some
of their R and D money, down the drain.
Needless to say, most inventors are pretty blind as to what is
patentable and what is not. Many think their inventions are
much more innovative than they really are. On the other hand,
they often don't understand why their inventions are novel and
non-obvious - or rather, cannot abstract them to a higher level
in order to get broader claim coverage because they are too
close to a specific implementation. That too is part of our job.
Frankly, I have come to see most of the rest of the practice
of law as being much, much, more boring than patent law.
Yes, I think it would be nice to litigate more - but many
of those who litigate for a living are bored silly by the
endless depositions and motions. My father practiced general
civil law, with a banking orientation, for some 47 years,
and, looking back at it, I am glad I didn't follow in his
footsteps. Not surprisingly, my next brother followed me
into patent law, and not my father into general practice.
Finally, as to hours. Patent firms tend to set 1600 to 1700
hour billing (usually meaning actually collected) hour targets,
while general practice firms set 2000 or so hour targets,
in line usually with their general practice brethren.
But note, early on, there is often a lot of slippage here -
with not all hours worked being billed, and some of those
not being collected. So, in a firm, I would not be
surprised if someone had to work 45 to 50 hours a week
to make the billing targets for their first 3-5 years.
Once you are experienced though, you can expect to be
a lot more efficient, billing and collecting for most of
the work you do. Then, you are probably talking 40-45
hours a week (ignoring client development, etc.)
The logical solution, of course, is to go out on your own.
One poster below indicated that he works half time for
$300k a year. That is plausible for an experienced
practitioner. But, as I note in another post, if you
try this before being properly trained (minimum 3-5
years of working for someone else), you are not doing
your clients any service, and are more than likely
committing malpractice on a routine basis.
> On a broader note, if one wants an "easy" high paying job, which is the
> best area of law to get in to right now?
Isn't one. But if you are willing to work hard for
five or so years as you get trained, you may be able
to turn patent law into that easy high paying job.
Bruce Hayden
> <markde...@hotmail.com> wrote:
>
>>what can a patent attorney do that a patent agent cannot do, except
>>charge more? isn't it smarter to hire a patent agent; you can always
>>hire a real attorney later on if litigation is necessary.
Best way to do this is to have the patent attorney bring
in a litigation attorney to sit first chair. Most litigation
attorneys don't have the background to litigate patent
(or other IP) cases. So, the patent attorney provides the
IP expertise, and the litigation attorney provides the
litigation expertise. The reason to let the patent attorney
pick the litigation attorney is that he more likely knows
who is good and who he can work with well.
>
> Yes. The attorney can represent you in court. That is the only
> advantage to using a patent attorney.
Roger, being a patent agent, takes a different view on this
than do those of us licensed as patent attorneys. He believes
that he can legally give validity and infringement opinions.
Most of us have given up arguing with him, as he routinely
posts his misinformation in his patent agent FAQs in this
and other forums.
My view is that patent agents are limited to the type of
work that is tied directly to filing and prosecuting patent
applications with the USPTO. Thus, they can give patentability
opinions, but not infringement opinions. They obviously cannot
represent you in court, but also shouldn't be drafting
licensing agreements either - but can perform the ministerial
function of filling out standard patent application
assignments. They also shouldn't be representing
you in licensing negotiations with other parties.
Let me note that if you hire Roger to give you a
non-infringement opinion, and then continue to make,
use, or sell a product based on that opinion, it is
highly likely that if you are ultimately found to be
infringing, the infringement will be considered
intentional, since the opinion will be not be
considered to competent, as it was not given by
a licensed patent attorney.
Let me add that patent agents also should not be
giving legal advise as to copyrights, trademarks,
trade secrets, etc. - but this part of the law
does not require USPTO registration (and many of
its practioners are not patent attorneys).
markde...@hotmail.com
promotion. A senior associate with 5 years experience can expect to
make about $375,000. But at a 50% tax rate in NYC, that is less than
$200,000 take-home.
criminal law might be more fun, but who can live on $64,000 in the
DA's office? I wonder how much the PD pays.
Isaac
> $225K sounds about right in a big city. 5% annual raise until
> promotion. A senior associate with 5 years experience can expect to
> make about $375,000. But at a 50% tax rate in NYC, that is less than
> $200,000 take-home.
Complete rookies in large cities are being paid 125-135k by large firms.
A few firms in NY may be paying 150k.
Maybe $225k sounds good, but it does not sound typical.
Isaac
Isaac
wrote:
>
> Let me note that if you hire Roger to give you a
> non-infringement opinion, and then continue to make,
> use, or sell a product based on that opinion, it is
> highly likely that if you are ultimately found to be
> infringing, the infringement will be considered
> intentional, since the opinion will be not be
> considered to competent, as it was not given by
> a licensed patent attorney.
I'm not sure this is true anymore. The importance of getting a gold
plated non-infringement opinion from an attorney is no longer the
near absolute requirement it once was. If a company can successfully
against willful infringement without introducing an opinion, it is
far from certain that relying on a non attorney opinion would be fatal.
It might well be that the most important issue be that the opinion is
independent, technically sound, and at least facially a basis for
reasonable reliance.
Isaac
Richard Tanzer
been posted here during the past few days. Here's what I found regarding
working hours and salary:
- [new associate has] to work 45 to 50 hours a week for their first 3-5
years
- experienced [attorney works about] 40-45hours a week (ignoring client
development, etc.)
- 13 years ... a partner ... 8 am to 6+ pm, Monday through Friday ... +
work a Saturday or two a month + time to marketing + visit clients, etc.
- [praparing for] a trial ... 7 days a week for at least the month prior.
This is far better than when I started as an associate.
- I don't work in a big firm, and I work quite reasonable hours. I'm not
making $225K either, though.
- I'm solo, and work about half time, generating about $300k annually.
- rookie right out of school ... $225,000 per year
- A senior associate with 5 years experience can expect to make about
$375,000.
- [experienced] <$337.50 per hour
Summary:
- hours per week (rookie) = 45-50; 70
- hours per week (experienced) = 20; 40-45; 60
- income per year (rookie) = <$225k; $225k
- income per year (experienced) = $300k; $375k
Here are some comparisons from the web
- salary.com: Patent Attorney III $111k - $134k
- salary.com: Patent Attorney IV $124k - $167k
- payscale.com: patent prosecutor $45-$116
- payscale.com: patent agent $57 - $100
- U.S. Bureau of Labor Statistics (May 2004) the median annual earnings
of all (NOT just patent) lawyers were $94,930. The middle half of the
occupation earned between $64,620 and $143,620. Median salaries of
lawyers 9 months after graduation from law school in 2004 was $55k
- There are help wanted ads on W.K.McLauglin for experienced patent
attorneys. One pays "well over $200k"; the other is for $150k
My conclusion: Hours worked and compensation vary widely. Typical
patent attorneys earn from about $125k - $250k, but many are outside of
that range. Hours worked range from part time to "compulsive nut who
needs to get a life."
That's how it looks to me.
Richard Tanzer
Isaac
> - U.S. Bureau of Labor Statistics (May 2004) the median annual earnings
> of all (NOT just patent) lawyers were $94,930. The middle half of the
> occupation earned between $64,620 and $143,620. Median salaries of
> lawyers 9 months after graduation from law school in 2004 was $55k
> - There are help wanted ads on W.K.McLauglin for experienced patent
> attorneys. One pays "well over $200k"; the other is for $150k
The variation in salaries is so great that IMO median earnings are useless.
I see advertisements for attorney positions in NY City offering salaries
in the low 30s. Entry level salaries vary widely with firm size, location,
type of work, candidate qualifications, and other factors. Overall salaries
vary immensely with experience level, individual ability, etc.
Lawyers who start out by opening their own firms right out of school may
experience the typical small business pattern of making next to nothing
the first year or so, while others may settle some huge case that fell into
their lap the first month after they open their doors.
Isaac
Roger Schlafly
> Let me note that if you hire Roger to give you a
> non-infringement opinion, and then continue to make,
> use, or sell a product based on that opinion, it is
> highly likely that if you are ultimately found to be
> infringing, the infringement will be considered
> intentional, since the opinion will be not be
> considered to competent, as it was not given by
> a licensed patent attorney.
So you say, but you give no statute or precedent to support
this opinion. No such patent agent opinion was ever held to
be incompetent.
> Let me add that patent agents also should not be
> giving legal advise as to copyrights, trademarks,
> trade secrets, etc.
Just your personal opinion, and not the law. See:
http://www.schlafly.net/patent/agentfaq.htm
PTravel
"Roger Schlafly" <roge...@mindspring.com> wrote in message
news:2431d$43adf471$943f91b6$32...@STARBAND.NET...
> > Let me add that patent agents also should not be
> > giving legal advise as to copyrights, trademarks,
> > trade secrets, etc.
>
> Just your personal opinion, and not the law. See:
> http://www.schlafly.net/patent/agentfaq.htm
>
I hope your last remark was in reference to the discussion about patent
agent non-infringement opinions. If it is in reference to your statement
about giving legal advice re: copyright, trademarks and trade secrets, it is
absolutely the law that patent agents may not give advice about those
fields. Incidently, the statement in your FAQ about obtaining trademarks is
inaccurate and extremely misleading.
Roger Schlafly
> I hope your last remark was in reference to the discussion about patent
> agent non-infringement opinions. If it is in reference to your statement
> about giving legal advice re: copyright, trademarks and trade secrets, it
> is
> absolutely the law that patent agents may not give advice about those
> fields.
If you think that I am wrong, then go ahead and cite the law.
Alun L. Palmer
@news.peakpeak.com:
These issues have been hashed out many times in this group, with something
less than full agreement. Suffice to say that the PTO beleive that patent
agents are as effective as patent attorneys, and either one can represent
you in patent matters before the USPTO.
The issues relating to opinions and contracts are more complex than Bruce
makes them appear.
Concerning patent law opinions, the Sperry (1) decision held that agents
may give patentability opinions, but the facts of the case concerned
infringement opinions, which were never discussed by the court. That's a
bit odd, so much so that it looks like a mistake, i.e. answering a
different question than the one that was put before the court.
Whether agents can draft contracts is partly a matter of state law, and by
no means prohibited in every state, In Maryland, for example, contracts for
real property must be drafted by an attorney, but patents are personal
property, so presumably patent contracts may be drafted by whoever you
like. Even where contract drafting is considered to be the practice of law
it may be 'incident' to patent preparation and prosecution and thence
permissible under Sperry. For example, the New Jersey bar consider drafting
assignments in pending applications to be incident to prosecution and hence
OK for agents.
In many states a 'legal discretion and profound legal knowledge' standard
applies, so that preparing contracts using standard forms is OK for a non-
attorney. The latter would be what Bruce is referring to, but it is far
from the only reason why it may be OK for a patent agent to prepare a
contract, depending on circumstances and jurisdiction.
(1) Sperry v Florida, 373 US 379, US Supreme Court 1963
Isaac
It's been awhile since I looked at Maryland's statute, but my recollection
is that like other states, it is pretty easy to say that a explicitly
addressed something is considered the practice of law, but generally difficult
to say that something is excluded except for the explicit excepted things.
I would not recommend assuming that the drafting of contracts in Maryland
is only the practice of law when the subject matter includes real estate.
I fuzzily recall some vague language about the drafting of documents defining
rights the being the practice of law that could literally apply to anything
from printing a cash register receipt to drafting M&A documents.
As for what Sperry says and does not say, I'm still experienceing trauma
from the last time we discussed this.
Isaac
PTravel
Which law? The one in every state that says only lawyers may give legal
advice (patent agents, of course, may provide legal services related to
prosecution of patent). What in the world makes you think you are
qualified, either by law, education, experience or understanding, to advise
anyone about any area of law other than patents?
>
Roger Schlafly
>> If you think that I am wrong, then go ahead and cite the law.
> Which law? The one in every state that says only lawyers may give legal
> advice (patent agents, of course, may provide legal services related to
> prosecution of patent).
Not in California, where you and I live. I'll give you some
free legal advice right now. You have no defamation case
against me, and you ought to quit making such silly legal
claims on this forum.
> What in the world makes you think you are
> qualified, either by law, education, experience or understanding, to
> advise
> anyone about any area of law other than patents?
I am qualified by law because there is no law against it.
I also have some expertise in several other areas of the
law that I have had to research for various reasons.
PTravel
> "PTravel" <ptr...@travelersvideo.com> wrote:
> >> If you think that I am wrong, then go ahead and cite the law.
> > Which law? The one in every state that says only lawyers may give legal
> > advice (patent agents, of course, may provide legal services related to
> > prosecution of patent).
>
> Not in California, where you and I live. I'll give you some
> free legal advice right now. You have no defamation case
> against me, and you ought to quit making such silly legal
> claims on this forum.
One more time:
What in the world makes you think you are qualified, either by law,
education, experience or understanding, to advise anyone about any area of
law other than patents?
As I said, your FAQ is inaccurate and extremely misleading with respect to
what it says about trademark.
>
> > What in the world makes you think you are
> > qualified, either by law, education, experience or understanding, to
> > advise
> > anyone about any area of law other than patents?
>
> I am qualified by law because there is no law against it.
You think there is no law against your giving legal advice about trademark
law?
> I also have some expertise in several other areas of the
> law that I have had to research for various reasons.
You evidently have no expertise in trademark law, but that's not the point,
which is: you are not competent, as a matter of law, to advise anyone about
trademark law.
>
>
Alun L. Palmer
news:slrndqsbam...@latveria.castledoom.org:
Whatever is not prohibited is normally permitted. Anything else would be
void as vague and indefinite. The only general clause refers to Court of
Appeals decisions, and it would be hard for the court to define something
not enumerated in the statute as being the practice of law, except in a
borderline case. I think that would be overreaching. So, in fact I don't
think MD is like most states.
Of course, that doesn't mean that you want your roofing contractor or your
dentist to draft a patent licence as a matter of common sense, but if you
want to get your patent agent to do it you probably can, at least in this
state. The code of ethics gives the agent the responsibility of deciding if
they are competent to do it.
OTOH, giving legal opinions is always the practice of law here, so
explaining anything beyond the usual meaning of standard terms is likely to
be a problem where there is no incidence to practice before the patent
office.
> I fuzzily recall some vague language about the drafting of documents
> defining rights the being the practice of law that could literally
> apply to anything from printing a cash register receipt to drafting M&A
> documents.
>
The fuzzy language we previously discussed in the MD statute refers to
documents to be submitted to a court. There was some conjecture that almost
anything could be submitted to a court, but I think really it only refers
to pleadings, motions, etc.
> As for what Sperry says and does not say, I'm still experienceing
> trauma from the last time we discussed this.
>
> Isaac
>
I know what you mean. The trouble is, if someone says patent agents can't
do x, and I either beleive that we can, or that there are important
exceptions where we can, then I feel absolutely compelled to say so.
Alun
Roger Schlafly
>> I also have some expertise in several other areas of the
>> law that I have had to research for various reasons.
> You evidently have no expertise in trademark law, but that's not the
> point,
> which is: you are not competent, as a matter of law, to advise anyone
> about
> trademark law.
And I don't think that you are even competent to post opinions
on usenet. But I will advise anyone I want on any subject I
please, and there is nothing that you can do about it.
If you were actually correct about the law, and you weren't
such an incompetent idiot, then you would be able to post
laws and precedents supporting your argument.
Isaac
> Isaac <is...@latveria.castledoom.org> wrote in
>> It's been awhile since I looked at Maryland's statute, but my
>> recollection is that like other states, it is pretty easy to say that a
>> explicitly addressed something is considered the practice of law, but
>> generally difficult to say that something is excluded except for the
>> explicit excepted things. I would not recommend assuming that the
>> drafting of contracts in Maryland is only the practice of law when the
>> subject matter includes real estate.
>>
>
> Whatever is not prohibited is normally permitted. Anything else would be
> void as vague and indefinite. The only general clause refers to Court of
> Appeals decisions, and it would be hard for the court to define something
> not enumerated in the statute as being the practice of law, except in a
> borderline case. I think that would be overreaching. So, in fact I don't
> think MD is like most states.
I think we'll just have to disagree here. While I agree that MD's UPL
laws vary significantly from those of other states, I doubt that difference
extends to limiting what constitutes the practice of law to an enumerated
list. I'd need to be shown an example of MD construing their statute
in such a narrow way.
Statutes including exemplary lists of proscribed activities are very
common. Generally, their applicability is not limited to only the
items listed. Yes there are situations were the list provides insufficient
notice that some activity is illegal, and in that situation, the statute
may fail constitutionally, but I think you draw the line way too narrowly.
Isaac
Roger Schlafly
> Statutes including exemplary lists of proscribed activities are very
> common. Generally, their applicability is not limited to only the
> items listed. Yes there are situations were the list provides
> insufficient
> notice that some activity is illegal, and in that situation, the statute
> may fail constitutionally, but I think you draw the line way too narrowly.
No state has a blanket prohibition on non-lawyers giving legal advice.
PTRAVEL
Typical drivel from you, I see. I know it is embarassing when you are so
often corrected publicly on your errors, but you're usual response of lies
and name-calling is really very immature.
>
>
Alun L. Palmer
Actually, MD does, at least insofar as advice is the same thing as an
opinion, but documents that must be prepared by a lawyer are listed, and
they don't include contracts for personal property, such as patents.
If you meant that some advice might not be an opinion, that's a different
point, and some indeed may not be.
The point is rather that each state has it's own UPL law, and they can't
be construed to include anything and everything that lawyers wish was
covered if it actually isn't,
The MD law is still broad enough to catch those who are really practicing
law without a licence. The necessity to charge someone with doing
something that isn't listed just doesn't exist, and this is why I have
never seen such a case and doubt that there is any case law on point.
Roger Schlafly
> opinion, but documents that must be prepared by a lawyer are listed, and
> they don't include contracts for personal property, such as patents.
I vaguely remember discussing the Maryland UPL law here before,
and no one could make sense out of it. If indeed it bans all
legal advice from a non-lawyer, then it has a very silly and
unenforceable law.
Roger Schlafly
> opinion, but documents that must be prepared by a lawyer are listed, and
> they don't include contracts for personal property, such as patents.
I vaguely remember discussing the Maryland UPL law here before,
Isaac
wrote:
I don't think the issue was that the law was hard to understand. I
think the problem is that nobody is going to put in the effort to
sort out what guidance and case law say about the statute.
I don't think UPL statutes are any more vague than say 35 USC 101.
Isaac
Roger Schlafly
> I don't think the issue was that the law was hard to understand. I
> think the problem is that nobody is going to put in the effort to
> sort out what guidance and case law say about the statute.
> I don't think UPL statutes are any more vague than say 35 USC 101.
I agree. As statutes go, UPL laws are no worse than a lot
of others.
If a state bans the giving of legal advice by non-lawyers,
then most of the state is in violation. Anyone who ever says
something like, "Don't jaywalk or you might get a ticket"
is giving legal advice. Such a statute is completely silly
and unenforceable.
Many states ban the unauthorized practice of law, without
defining it much more than that. That is just another way
of saying that they don't want non-lawyers doing what
lawyers usually do.
I live in California, and California allows patent agents
to write assignments, license agreements, infringement
letters, etc, so I don't worry about it. If California decided
that it didn't want non-lawyers doing those things, then
maybe there would be an issue.
Alun L. Palmer
news:slrndr6m4...@latveria.castledoom.org:
Some are a lot vaguer than 101, and some aren't.
It's not that I won't put in the effort to read case law on my state's UPL
law. I have tried, but I have no way of searching it, just blithely
ploughing through decisions trying to find something relevant. I vaguely
remember I found somewhere that had it organised by topic (maybe Crossing
the Bar, but that site is gone), but I couldn't find any cases concerning
patent agents for example. Nor could I find any such case relating to
contracts for personal property.
It's my belief that this is because anyone actively trying to run a law
practice without a licence is bound to be doing one or more of the things
that is actually specifically prohibited, hence the Grievance Commission
isn't going to bother attempting to enjoin them from doing something that
isn't on the list. Why should they? They might lose the case if they did
(in fact I believe they would), and there is almost certain to be something
they could hang their case on that is on the list. I could find no case
where they have tried that, and I sincerely doubt if they ever have.
I tell you what, Isaac, if you can find a case in the MD Court of Appeals
where the Grievance Commission got an injunction based on a non-lawyer
preparing a contract for personal property, not real property, and not
something else listed in the Occupational Licence Law, I will buy you
lunch. I'm pretty sure you can't find one.
Alun
Isaac
If you're right, there would never be way to determine one way or the other
whether the law could be enforced on a non enumerated activity. But given
that many states don't make the effort to enumerate things the way Maryland
has, I don't believe there are any due process concerns with pursuing an
activity outside of the list.
In fact as long as the remedy being sought is an injunction rather than
punishment, I would not expect notice to be a huge problem.
Isaac
Alun L. Palmer
news:slrndrbqsf...@latveria.castledoom.org:
AFAIK, there have been only two cases against patent agents, Sperry and
Kellog, and in both cases injunctions were sought.
Isaac
> Isaac <is...@latveria.castledoom.org> wrote in
>> If you're right, there would never be way to determine one way or the
>> other whether the law could be enforced on a non enumerated activity.
>> But given that many states don't make the effort to enumerate things
>> the way Maryland has, I don't believe there are any due process
>> concerns with pursuing an activity outside of the list.
>>
>> In fact as long as the remedy being sought is an injunction rather than
>> punishment, I would not expect notice to be a huge problem.
>>
>> Isaac
>>
>
> AFAIK, there have been only two cases against patent agents, Sperry and
> Kellog, and in both cases injunctions were sought.
I think we agree that in Sperry and Kellog, the statutes in question did
reach the patent agent's behavior. The interesting question in those cases
was whether or not federal law preempted the state statute.
Isaac
Alun L. Palmer
news:slrndrdtla...@latveria.castledoom.org:
As regards Sperry, it's clear that the Florida UPL law reached the
behaviour and was preempted by federal law.
The older Kellog case is a little different. I don't think it properly
addresses federal preemption because it assumes that acting as a patent
agent is not the practice of law, a point of view thrown out in Sperry.
The outcome of the respective injunctions is different too. The Sperry
injunction was amended below to allow things that more or less corresponded
to what Sperry had been doing. The one odd discrepancy is that it allowed
patentability opinions as per the Supreme Court holding, whereas the record
shows only preparation of infringement opinions but discusses them not
atall, choosing to discuss patentability opinions instead for reaons
unknown.
The Kellog injunction was upheld. There is no doubt that what it covered
was also covered by the Illinois UPL law. There is also no doubt that for a
patent agent to try cases in district court and to employ attorneys to do
the same could not be justified by federal law. The remaining part of the
injunction concerns preparing assignments of issued patents.
This brings us, once again, to the New Jersey advisory opinion, which
upheld the right of patent agents to do reexams, and also held that patent
agents could prepare assignments of only pending applications and not of
issued patents. The plain implication of that is that the NJ bar appear to
beleive that assignments meet the 'incident to' test of Sperry, but only as
long as the application is still pending, even though that test itself is
not discussed. It is also consistent with Kellog, FWIW.
Outside of Illinois and New Jersey, Sperry is the only binding precedent,
but taking all the above into account, as well as the statutory wording
itself, IMHO it is reasonable to suggest that a patent agent may at the
very least, and under shelter of the supremacy clause:-
1) Represent others in all patent matters before the PTO;
2) Prepare patentability opinions; and
3) Prepare assignments of pending patent applications.
Anything else not prohibited by the state is also allowed. for example, I
do not read MD law as prohibiting me from preparing an assignment of an
issued patent, on the ground that it is personal property and not real
property. In other states it may be possible to reach a similar conclusion
on other grounds, or not as the case may be.
Alun
Roger Schlafly
> This brings us, once again, to the New Jersey advisory opinion, which
> upheld the right of patent agents to do reexams, and also held that patent
> agents could prepare assignments of only pending applications and not of
> issued patents. The plain implication of that is that the NJ bar appear to
> Outside of Illinois and New Jersey, Sperry is the only binding precedent,
That NJ opinion is *not* a binding precedent. It is no more
binding than a law review article. It may reflect the wishes of
some NJ Bar Assn members in 1972, but that's about all.
Here it is.
http://lawlibrary.rutgers.edu/ethics/cuap/cua9_1.html
> Anything else not prohibited by the state is also allowed. for example, I
> do not read MD law as prohibiting me from preparing an assignment of an
>issued patent, on the ground that it is personal property and not real
> property. In other states it may be possible to reach a similar conclusion
> on other grounds, or not as the case may be.
You can also do it in other states by virtue of your patent agent license.
Alun L. Palmer
> "Alun L. Palmer" <elek...@yahoo.com> wrote:
>> This brings us, once again, to the New Jersey advisory opinion, which
>> upheld the right of patent agents to do reexams, and also held that
>> patent agents could prepare assignments of only pending applications
>> and not of issued patents. The plain implication of that is that the
>> NJ bar appear to beleive that assignments meet the 'incident to' test
>> of Sperry, ... Outside of Illinois and New Jersey, Sperry is the only
>> binding precedent, ...
>
> That NJ opinion is *not* a binding precedent. It is no more
> binding than a law review article. It may reflect the wishes of
> some NJ Bar Assn members in 1972, but that's about all.
That's quite true. Looking at it from a positive PoV, however, it does at
least tend to support the view that assignments of pending patent apps are
'incident to' prep & pros, which I for one have no doubt that they are.
Further, it tends to confirm that other patent matters before the office
fall under the supremacy clause, not merely 'prep and pros'.
> Here it is.
> http://lawlibrary.rutgers.edu/ethics/cuap/cua9_1.html
>
>> Anything else not prohibited by the state is also allowed. for
>> example, I do not read MD law as prohibiting me from preparing an
>> assignment of an
>>issued patent, on the ground that it is personal property and not real
>> property. In other states it may be possible to reach a similar
>> conclusion on other grounds, or not as the case may be.
>
> You can also do it in other states by virtue of your patent agent
> license.
>
>
That's a possible interpretation
Roger Schlafly
> That's quite true. Looking at it from a positive PoV, however, it does at
> least tend to support the view that assignments of pending patent apps are
> 'incident to' prep & pros, which I for one have no doubt that they are.
> Further, it tends to confirm that other patent matters before the office
> fall under the supremacy clause, not merely 'prep and pros'.
If that reassures you, great. I've got a 9-0 Supreme Court
decision and 40 years of acquiescence by all 50 states saying
that I can do what I want. That matters a lot more to me than
the uninformed ramblings of some old NJ Bar Assn committee.
Steve Marcus
"Roger Schlafly" <roge...@mindspring.com> wrote in message
news:6b968$43bab2b6$943f91b6$13...@STARBAND.NET...
> "Alun L. Palmer" <elek...@yahoo.com> wrote:
>> That's quite true. Looking at it from a positive PoV, however, it does at
>> least tend to support the view that assignments of pending patent apps
>> are
>> 'incident to' prep & pros, which I for one have no doubt that they are.
>> Further, it tends to confirm that other patent matters before the office
>> fall under the supremacy clause, not merely 'prep and pros'.
>
> If that reassures you, great. I've got a 9-0 Supreme Court
> decision and 40 years of acquiescence by all 50 states saying
> that I can do what I want.
Forgive me, but where in that decision does the Supreme Court state that
"you can do what you want"? IIRC, the decision says something about States
not being able to go after a patent agent who are not lawyer for the
unauthorized practice of law when the agent performs within the State tasks
which are incident to the preparation and prosecution of patent applications
before the Patent Office" It seems to me that this is "slightly" more
limited than allowing patent agents to "do what they want" to do.
Here's the link, provided from one of *your* old posts. Please show me
where the Supreme Court says that as a patent agent, "you can do what you
want."
> That matters a lot more to me than
> the uninformed ramblings of some old NJ Bar Assn committee.
>
The only thing that matters to you is your rather twisted point of view on
this issue. Somehow, you believe that a case that included in its facts
that the State of Florida only alleged that Sperry "represents Florida
clients before the United States Patent Office, . . . has rendered opinions
as to patentability, and . . . has prepared various legal instruments,
including . . . applications and amendments to applications for letters
patent, and filed same in the United States Patent Office in Washington,
D.C.," while Sperry contended "that the work performed by him for Florida
citizens is solely that work which is presented to the United States Patent
Office and that he charges fees solely for his work of preparing and
prosecuting patent applications and patent assignments and determinations
for his work of preparing and prosecuting patent applications and patent
assignments and determinations incident to preparing and prosecuting patent
applications and assignments." is to be read as broadly permiting a patent
agent to do anything the agent wants to do at any time.
You should really quit commenting on what the law is until you understand
how to read and construe a case report.
Steve
--
The above posting is neither a legal opinion nor legal advice,
because we do not have an attorney-client relationship, and
should not be construed as either. This posting does not
represent the opinion of my employer, but is merely my personal
view. To reply, delete _spamout_ and replace with the numeral 3
Steve Marcus
"Steve Marcus" <smarcus_...@cox.net> wrote in message
news:nwDuf.59734$4l5.31926@dukeread05...
>
> "Roger Schlafly" <roge...@mindspring.com> wrote in message
> news:6b968$43bab2b6$943f91b6$13...@STARBAND.NET...
>> "Alun L. Palmer" <elek...@yahoo.com> wrote:
>>> That's quite true. Looking at it from a positive PoV, however, it does
>>> at
>>> least tend to support the view that assignments of pending patent apps
>>> are
>>> 'incident to' prep & pros, which I for one have no doubt that they are.
>>> Further, it tends to confirm that other patent matters before the office
>>> fall under the supremacy clause, not merely 'prep and pros'.
>>
>> If that reassures you, great. I've got a 9-0 Supreme Court
>> decision and 40 years of acquiescence by all 50 states saying
>> that I can do what I want.
>
> Forgive me, but where in that decision does the Supreme Court state that
> "you can do what you want"? IIRC, the decision says something about
> States not being able to go after a patent agent who are not lawyer for
> the unauthorized practice of law when the agent performs within the State
> tasks which are incident to the preparation and prosecution of patent
> applications before the Patent Office" It seems to me that this is
> "slightly" more limited than allowing patent agents to "do what they want"
> to do.
>
> Here's the link, provided from one of *your* old posts. Please show me
> where the Supreme Court says that as a patent agent, "you can do what you
> want."
In my previous post, I omitted the link to Sperry:
http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=US&vol=373&invol=379