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Patent Agent FAQ

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Roger Schlafly

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Jul 14, 2003, 4:19:38 AM7/14/03
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Archive-name: legal/patents/agent-faq
Last-modified: 2003/06/18
Posting-Frequency: Biweekly
Copyright: Roger Schlafly

Patent Agent FAQ

Q: What is a patent agent?

In the USA, A patent agent is someone who is licensed to practice law
before the US Patent Office (PTO).

Q: Is that the same as a patent attorney?

Yes, as far as the US PTO is concerned about patents. It calls them both
patent practitioners. A patent attorney is a patent practitioner who is
also licensed by his state to represent clients in court in that state.

Licensing of patent agents and attorneys outside the USA may be
different, and it not addressed in this FAQ.

Q: Can patent agents give legal advice?

Yes. That is mainly what patent agents are licensed to do -- give
legal advice to inventors and represent them in quasi-legal
proceedings before the US PTO. A patent agent can advise about
the patentability of an invention, draft a patent application so
that it claims the protection that you want and need, and prosecute
it with the US PTO.

Q: Can I get a patent myself?

Yes, you can always represent yourself. The best how-to book is
Patent It Yourself, by David Pressman.
http://www.amazon.com/exec/obidos/tg/detail/-/0873375637/

After seeing the complications and pitfalls described, many inventors
hire a patent agent.

Q: Where can I get more legal information?

The US PTO has copies of patents online, and a lot of other info.
http://www.uspto.gov/

An excellent treatise on copyrights and patents is available online.
Legal Protection of Digital Information, by Lee Hollaar.
http://digital-law-online.info/

Q: Can patent agents help with ownership and licensing issues?

Yes. Many inventors are not sure who owns their inventions, and suffer
from various legal misconceptions about patents. A patent agent can help
with those issues as he investigates the patentability of your invention.
Patent agents commonly do things like executing a patent assignment and
recording it with the US PTO.

Q: Can patent agents give patent infringement opinions?

Yes. Patent agents sometimes have to, such as under MPEP 708.02, so it
is within the skill set and license of someone who practices before
the US PTO.

When you get notice of a patent infringement claim, it is usually
best to get a competent opinion on whether the patent is valid and
whether your product infringes. Otherwise you can be liable for
triple damages if a court finds willful infringement.

A patent agent can also handle a reexamination before the US PTO,
if prior art shows that a patent's claims should be narrowed or
cancelled.

Q: My lawyer says that only lawyers can practice law. Who is right?

The state of Florida tried to regulate patent agents in 1963, and the
US Supreme Court ruled 9-0 that federal law preempts state law, and
that patent agents are licensed to practice patent law by the US PTO.
No state has tried to regulate patent agents ever since. See Sperry
v. Florida, 373 U.S. 379 (1963).
http://caselaw.lp.findlaw.com/scripts/getcase.pl?court=us&vol=373&page=379

Q: Is patent advice covered by attorney-client privilege?

Advice is usually privileged and confidential if it reflects a legal
question from a client, such as in a patent infringement opinion. Such
an opinion would normally only be revealed if the client decided to rely
on it at a trial. In almost all jurisdictions, patent agent advice has
the same privilege as attorney advice.

Q: Can patent agents represent me in a patent infringement trial?

You need a lawyer to handle a court case. He does not have to be a
patent attorney under the rules.

Q: I have an invention to patent. Whom should I hire?

Many patent agents and attorneys specialize in particular technological
areas, so make sure that you hire someone who understands your invention.
Beyond that, there are the usual considerations of price, skill,
reputation, availability, timeliness, etc.

The US PTO has a list of all the registered patent agents.
http://www.uspto.gov/web/offices/dcom/olia/oed/roster/index.html

Q: How do I get copyrights and trademarks?

Patent agents usually just handle patent matters. If you want someone to
represent you in a legal dispute, then you probably want a lawyer. If
you just want to register a copyright or trademark, the process is
relatively simple and you can do it yourself. Nolo Press has some
self-help legal books and information.
http://www.nolo.com

This Patent Agent FAQ is an attempt to concisely and accurately
describe patent agents, without the bias towards patent attorneys
that is common on some lawyer sites that have never accepted that
1963 Supreme Court decision. This FAQ will be kept here:
http://www.schlafly.net/patent/agentfaq.htm

Disclaimer: I believe that I have described the situation accurately.
I will cite contrasting views, if they are backed up by some authority.
Send comments and corrections to me at:
rogers...@mindspring.com

Rodney

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Jul 14, 2003, 1:04:07 PM7/14/03
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Roger wrote:
> Archive-name: legal/patents/agent-faq
> Last-modified: 2003/06/18
> Posting-Frequency: Biweekly
> Copyright: Roger Schlafly
>
> Patent Agent FAQ
>
> Q: What is a patent agent?

That was very informative for newbe's, maybe you need to post it every
month here
--
Rodney Long,
Inventor of the Boomerang Fishing Pro. , Straight Up Hooks ,
Straight Up Lures, Mojo's Rock Hopper & Rig Saver weights,
and the EZKnot http://www.ezknot.com

Isaac

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Jul 15, 2003, 3:20:43 AM7/15/03
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On Mon, 14 Jul 2003 12:04:07 -0500, Rodney <r...@ezknot.com> wrote:
> Roger wrote:
>> Archive-name: legal/patents/agent-faq
>> Last-modified: 2003/06/18
>> Posting-Frequency: Biweekly
>> Copyright: Roger Schlafly
>>
>> Patent Agent FAQ
>>
>> Q: What is a patent agent?
>
> That was very informative for newbe's, maybe you need to post it every
> month here

I should point out that an internet search will turn up a number of
FAQ's on the web which address similar topics. The author's of some
of those sources reach different conclusions on some issues than does
Mr. Schlafly.

Isaac

Alun Palmer

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Jul 15, 2003, 9:36:11 AM7/15/03
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Isaac <is...@latveria.castledoom.org> wrote in
news:slrnbh7aq...@latveria.castledoom.org:

Here is one that I think is worth reading, because it is even-handed
although written by an attorney:

http://www.lawplusplus.com/column5.htm

Here is a short quote from it:

"There is a split of opinion on whether patent agents can legally prepare
patent infringement and validity opinions. Nothing I've read or heard has
resolved this issue in my mind. There is also a split of opinion in the
courts regarding 'privilege,' the legal doctrine that prevents certain
information from being given to the opposing party during a litigation.
For instance, some courts refuse to treat communications between a patent
agent and a client as privileged."

Notice that he doesn't say we (patent agents) can't prepare opinions on
validity or infringement, only that there is a split of opinion. I
personally beleive the question is whether it meets the 'reasonably
necessary and incident' test of Sperry in each individual instance, but
others take different stances on this, so be aware of that.

Even though I beleive that agents can prepare infringement opinions in
certain circumstances, you should also be aware that if the opinion is to
be used in court it may not be accepted.

He also notes in the same paragraph that not all courts recognise
privilege for agents. To be more precise, it depends on which circuit you
are in.

Here is another quote:

"Based on the Sperry case, the patent statute, and present USPTO
regulations, patent agents can legally do the following: prepare
patentability opinions; prepare patent applications; prepare patent
assignments and other documents typically filed with a patent application;
and negotiate with the USPTO about patent applications."

I think everything in that paragraph is well settled, despite some posts
that have appeared here.

Alun Palmer, US Patent Agent, Reg. No. 47,838

Isaac

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Jul 15, 2003, 4:03:02 PM7/15/03
to
On 15 Jul 2003 13:36:11 GMT, Alun Palmer <elek...@yahoo.com> wrote:
>
> Here is one that I think is worth reading, because it is even-handed
> although written by an attorney:

Your article is a great summary of where the disagreement lies on this
issue. I did get a little chuckle over the line quoted above.

Isaac

Roger Schlafly

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Jul 15, 2003, 5:36:47 PM7/15/03
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"Alun Palmer" <elek...@yahoo.com> wrote

> Notice that he doesn't say we (patent agents) can't prepare opinions on
> validity or infringement, only that there is a split of opinion.

Yes. In the FAQ, I say I will cite contrasting views, if they are backed
up by some authority. Someone has sent the FAQ to the Calif. Bar
Assn and the USPTO, in an effort to get them to say that something
is incorrect. So far, I've heard no objection from either.


Tim Jackson

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Jul 15, 2003, 7:04:02 PM7/15/03
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Roger Schlafly wrote on Tue, 15 Jul 2003 21:36:47 GMT....

> In the FAQ, I say I will cite contrasting views, if they are backed
> up by some authority.

Most newsgroup FAQs that I've seen have been produced as a result of
consensus amongst regular users. They went through several drafts which
were clearly marked as such, and were revised as a result of comments
received, before the finished version was eventually released.

They weren't just produced by a single person who refused to change
anything unless other users produced something he deemed to be
sufficiently authoritative.

--
Tim Jackson
ne...@winterbourne.freeserve.invalid
(Change '.invalid' to '.co.uk' to reply direct)
Absurd patents: visit http://www.patent.freeserve.co.uk

Roger Schlafly

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Jul 15, 2003, 8:17:06 PM7/15/03
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"Tim Jackson" <ne...@winterbourne.freeserve.invalid> wrote

> > In the FAQ, I say I will cite contrasting views, if they are backed
> > up by some authority.
> They weren't just produced by a single person who refused to change
> anything unless other users produced something he deemed to be
> sufficiently authoritative.

Actually, I made several changes as a result of discussions here. If
you see anything that is inaccurate or misleading, let me know and
I will change it.

But I am not going to put false info in the FAQ just because somebody
here has a mistaken opinion. There are lawyers here who would like
to put limits on patent agents that would make it impossible for patent
agents to operate independently. Their opinions are wholly unsupported
and wrong.


Alun Palmer

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Jul 15, 2003, 11:56:49 PM7/15/03
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Isaac <is...@latveria.castledoom.org> wrote in
news:slrnbh8nf...@latveria.castledoom.org:

The greatest problem with UPL issues is that anyone who is a lawyer
automatically has a vested interest. Despite this, some of them are
remarkably free from bias.

Tim Jackson

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Jul 16, 2003, 4:03:17 PM7/16/03
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Roger Schlafly wrote on Wed, 16 Jul 2003 00:17:06 GMT....

> Actually, I made several changes as a result of discussions here.

True, I accept that. (Including one suggestion from me, for which thank
you.)

> But I am not going to put false info in the FAQ just because somebody
> here has a mistaken opinion.

I'm an outsider looking in, and I don't know the rights and wrongs of the
disputed parts of your FAQ. But from where I sit there look to be
genuine differences of opinion on some unsettled legal points, rather
than a clear-cut case of you being right and other people being wrong.
In these circumstances, an FAQ that was produced by consensus would point
out the uncertainties, or even just remain silent on the disputed issues,
rather than dogmatically stick to just one line.

> There are lawyers here who would like
> to put limits on patent agents that would make it impossible for patent
> agents to operate independently. Their opinions are wholly unsupported
> and wrong.

I've seen a number of people here with rather more moderate opinions, but
you don't seem to be giving their views due weight.

Roger Schlafly

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Jul 16, 2003, 6:27:34 PM7/16/03
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"Tim Jackson" <ne...@winterbourne.freeserve.invalid> wrote

> > But I am not going to put false info in the FAQ just because somebody
> > here has a mistaken opinion.
> I'm an outsider looking in, and I don't know the rights and wrongs of the
> disputed parts of your FAQ. But from where I sit there look to be
> genuine differences of opinion on some unsettled legal points, ...

So you don't see anything wrong with the FAQ, but you think
I should change it anyway?

I am not sure just what you think those genuine differences are,
but I'd be happy to provide pointers to contrary views (if they
have some support).

There are 50 state Bar assns in the USA, and all are dominated
by lawyers with a vested interest in squeezing patent agents
out of business. They commonly give opinions on UPL and related
matters. If you could find where just one of them gives an
opinion contrary to the FAQ, then I could provide a link to it
and make sure that its point of view was represented. But I
cannot find one authority anywhere that disputes even one sentence
in the FAQ.


Tim Jackson

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Jul 16, 2003, 7:25:41 PM7/16/03
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Roger Schlafly wrote on Wed, 16 Jul 2003 22:27:34 GMT....

>
> So you don't see anything wrong with the FAQ, but you think
> I should change it anyway?

No, that's not what I said. I don't know whether or not you are wrong.
Neither do I know whether or not the others are wrong. I can however see
that there is room for more than one opinion, but that you are only
prepared to give one: your own.

>
> I am not sure just what you think those genuine differences are,
> but I'd be happy to provide pointers to contrary views (if they
> have some support).

Since we appear to be talking about unsettled legal questions, neither
you nor they seem to have better or worse support.

>
> There are 50 state Bar assns in the USA, and all are dominated
> by lawyers with a vested interest in squeezing patent agents
> out of business.

And you don't think that's just a slight exaggeration? Surely it's
only patent attorneys who are in competition with patent agents? How
many state bars are dominated by patent attorneys, rather than other
legal disciplines?

> But I
> cannot find one authority anywhere that disputes even one sentence
> in the FAQ.

That's right. And neither do you seem to have any better authority for
your own views. As I read the discussions in previous threads, both
sides were basing themselves on the same authority, a decision of the
Supreme Court. And both sides were then speculating on how that would be
applied in circumstances that the Supreme Court didn't reach. It's just
a matter of opinion.

I'm not saying you are wrong. I simply don't know. What I am saying is
that a good FAQ shouldn't present only one side of a disputed issue
without the other.

What you seem to be doing here is presenting an argument about an
unsettled question (even though you yourself may think it is settled).
In itself, that's absolutely fine - argument about unsettled issues is
part of what newsgroups are for. But it's not what FAQs are for.

Roger Schlafly

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Jul 16, 2003, 10:15:38 PM7/16/03
to
"Tim Jackson" <ne...@winterbourne.freeserve.invalid> wrote

> I'm not saying you are wrong. I simply don't know. What I am saying is
> that a good FAQ shouldn't present only one side of a disputed issue
> without the other.

I agree -- I only put undisputed statements in the FAQ. I deliberately
omitted some of my opinions.

Ernest sent the FAQ to the California Bar assn and the USPTO, in the
hopes that they will find something wrong. So far -- nothing.


Tracy Aquilla

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Jul 17, 2003, 9:29:11 AM7/17/03
to
"Tim Jackson" <ne...@winterbourne.freeserve.invalid> wrote in message
news:MPG.197fbf80...@news.freeserve.net...

> Roger Schlafly wrote on Wed, 16 Jul 2003 00:17:06 GMT....
>
> > There are lawyers here who would like
> > to put limits on patent agents that would make it impossible for patent
> > agents to operate independently.

Patent agents are not licensed to defend their clients against infringement
actions in court. Therefore, in the real world, they really can only operate
independently to the extent of representing clients before the USPTO.

> > Their opinions are wholly unsupported
> > and wrong.
>
> I've seen a number of people here with rather more moderate opinions, but
> you don't seem to be giving their views due weight.

Indeed. And contrary to Roger's repeated assertions, I don't believe that
there are many attorneys who want to put patent agents out of business.

Regardless, an unbiased interpretation of the law indicates that it might,
in fact, not be legal for patent agents to prepare certain legal documents,
such as infringement opinions or license agreements, and certainly they are
not licensed to represent clients before the courts. Any FAQ on this subject
should make these points very clearly.
Tracy

Tracy Aquilla

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Jul 17, 2003, 9:38:46 AM7/17/03
to

"Tim Jackson" <ne...@winterbourne.freeserve.invalid> wrote in message
news:MPG.197feee54...@news.freeserve.net...

> Roger Schlafly wrote on Wed, 16 Jul 2003 22:27:34 GMT....
> >
> > I am not sure just what you think those genuine differences are,
> > but I'd be happy to provide pointers to contrary views (if they
> > have some support).
>
> Since we appear to be talking about unsettled legal questions, neither
> you nor they seem to have better or worse support.

This is precisely the point - the law is unsettled on what, exactly, US
patent agents are licensed to do. Therefore, I would err on the side of
caution. Others throw caution to the wind, which may not be in the clients'
best interest.

> > There are 50 state Bar assns in the USA, and all are dominated
> > by lawyers with a vested interest in squeezing patent agents
> > out of business.
>
> And you don't think that's just a slight exaggeration? Surely it's
> only patent attorneys who are in competition with patent agents?

Realistically, patent agents probably do not really compete with patent
attorneys to a great extent. There aren't really that many patent agents to
begin with, and the scope of the services they can provide is but a narrow
slice of the wider patent practice of patent attorneys. Patent agents also
cannot provide legal services pertaining to other IP issues that most
clients require (e.g., trademark, copyright).

How
> many state bars are dominated by patent attorneys, rather than other
> legal disciplines?

ZERO.

> What you seem to be doing here is presenting an argument about an
> unsettled question (even though you yourself may think it is settled).

Exactly.

> In itself, that's absolutely fine - argument about unsettled issues is
> part of what newsgroups are for. But it's not what FAQs are for.

I agree 100%. Thanks.
Tracy

Roger Schlafly

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Jul 17, 2003, 1:47:26 PM7/17/03
to
"Tracy Aquilla" <aqu...@bpmlegal.com> wrote

> Regardless, an unbiased interpretation of the law indicates that it might,
> in fact, not be legal for patent agents to prepare certain legal
documents,
> such as infringement opinions or license agreements, and certainly they
are

How's this?

Q. Are there any restrictions on patent agents preparing
patent-related legal documents?

Possibly, in some states. Currently, none of the 50 states
have any statutes or regulations specifically limiting such
practices, and no state has successfully brought an action
against a patent agent for such a matter since Florida failed
before the US Supreme Court in 1963. Some people think that
it is possible that some state will try to regulate patent
agents, and that some limited regulation might survive legal
scrutiny under existing precedents.

Alun Palmer

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Jul 17, 2003, 4:15:41 PM7/17/03
to
"Tracy Aquilla" <aqu...@bpmlegal.com> wrote in
news:3f16a549$1...@news2.lightlink.com:

> "Tim Jackson" <ne...@winterbourne.freeserve.invalid> wrote in message
> news:MPG.197fbf80...@news.freeserve.net...
>> Roger Schlafly wrote on Wed, 16 Jul 2003 00:17:06 GMT....
>>
>> > There are lawyers here who would like
>> > to put limits on patent agents that would make it impossible for
>> > patent agents to operate independently.
>
> Patent agents are not licensed to defend their clients against
> infringement actions in court. Therefore, in the real world, they
> really can only operate independently to the extent of representing
> clients before the USPTO.
>

I think Roger was alluding to other things, such as attempts to limit the
scope of agents' advice on _new_ inventions to only patentability instead
of all sections of the patent law, and to prevent agents from representing
corporations by dissuading us from preparing routine assignments.
Litigation is not really an issue when most patent attorneys do no
litigation either.

All we seek to do is to independently represent clients before the PTO,
but there are some who would lay dubious roadblocks in the way of that
limited objective. I don't include you in that, but you know who I mean.

Alun Palmer

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Jul 17, 2003, 4:32:46 PM7/17/03
to
"Tracy Aquilla" <aqu...@bpmlegal.com> wrote in
news:3f16a787$1...@news2.lightlink.com:

>
> "Tim Jackson" <ne...@winterbourne.freeserve.invalid> wrote in message
> news:MPG.197feee54...@news.freeserve.net...
>> Roger Schlafly wrote on Wed, 16 Jul 2003 22:27:34 GMT....
>> >
>> > I am not sure just what you think those genuine differences are, but
>> > I'd be happy to provide pointers to contrary views (if they have
>> > some support).
>>
>> Since we appear to be talking about unsettled legal questions, neither
>> you nor they seem to have better or worse support.
>
> This is precisely the point - the law is unsettled on what, exactly, US
> patent agents are licensed to do. Therefore, I would err on the side of
> caution. Others throw caution to the wind, which may not be in the
> clients' best interest.
>
>> > There are 50 state Bar assns in the USA, and all are dominated
>> > by lawyers with a vested interest in squeezing patent agents out of
>> > business.
>>
>> And you don't think that's just a slight exaggeration? Surely it's
>> only patent attorneys who are in competition with patent agents?
>
> Realistically, patent agents probably do not really compete with patent
> attorneys to a great extent. There aren't really that many patent
> agents to begin with, and the scope of the services they can provide is
> but a narrow slice of the wider patent practice of patent attorneys.
> Patent agents also cannot provide legal services pertaining to other IP
> issues that most clients require (e.g., trademark, copyright).
>

I think that's something of an over statement. The majority of patent
attorneys only do things that could be done by a patent agent most of the
time anyway, so I think the competition is very real, albeit the number of
active agents is relatively small.

About 20% of those with a registration number are agents, but many are
really law clerks because they are in law school, and quite a few are
searchers who do no prosecution. Perhaps only as few as 5% of
practitioners are practicing patent agents and not law students, although
at the same time maybe 10% are litigators who don't do proseution.

The real divide is between law firms and solo practitioners.

Tracy Aquilla

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Jul 21, 2003, 10:13:37 AM7/21/03
to

"Alun Palmer" <elek...@yahoo.com> wrote in message
news:Xns93BBA846CB20...@130.133.1.4...

>The majority of patent
> attorneys only do things that could be done by a patent agent most of the
> time anyway,

Have you any evidentiary support for your assertion? Based on the
interactions I've had with many patent attorneys over the past several
years, the majority of patent attorneys appear to do much more than merely
prepare and prosecute patent applications.
Tracy


Tracy Aquilla

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Jul 21, 2003, 10:19:34 AM7/21/03
to

"Roger Schlafly" <rog...@mindspring.com> wrote in message
news:8jBRa.4277$KH2.148...@twister2.starband.net...

> "Tracy Aquilla" <aqu...@bpmlegal.com> wrote
> > Regardless, an unbiased interpretation of the law indicates that it
might,
> > in fact, not be legal for patent agents to prepare certain legal
> documents,
> > such as infringement opinions or license agreements, and certainly they
> are
>
> How's this?
>
> Q. Are there any restrictions on patent agents preparing
> patent-related legal documents?
>
> Possibly, in some states.

Note that this is a matter of federal law (NOT state law); patent agents are
licensed by the federal government. Recall the holding in Sperry regarding
federal preemption. The states cannot restrict patent agents' practice
beyond the restrictions in the federal law. So, assuming that they are
restricted from preparing the above-mentioned legal documents, such
restriction is based solely on the scope of the agent's federal license.

Alun Palmer

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Jul 21, 2003, 11:22:39 AM7/21/03
to
"Tracy Aquilla" <aqu...@bpmlegal.com> wrote in
news:3f1b...@news2.lightlink.com:

Just my own experience. In the large IP law firm I used to work for the
vast majority of the attorneys did nothing but prosecution. We did also
have a litigation department, but it was fairly small, and there were one
or two people who specialised in licencing. Some smaller firms that I have
done overflow work for seem to do nothing but prosecution. There again, if
they specialised in litigation I don't suppose I would be doing
prosecution for them. Of course, I am in the Washington DC area, more or
less, which probably makes a difference. OTOH, there is a guy in the next
town who does both patent law and criminal law!

Alun Palmer

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Jul 21, 2003, 11:34:13 AM7/21/03
to

>

Not exactly, Tracy. Really it is necessary to start from the premise that
whatever is not prohibitted is permitted. Some activities may be grey
areas in the scope of the federal licence, because Chief Justice Warren
declined to reach them in Sperry, and/or because the PTO don't care to
regulate them. State UPL laws vary, though, so a patent agent (or anyone
else) may do whatever is not prohibitted by the state, whether or not it
falls within the scope of a federal licence, including if it cannot be
reliably determined whether it falls therein.

Isaac

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Jul 21, 2003, 1:45:45 PM7/21/03
to

I don't think that works here. You start with state laws that in many (most?)
states would completely prohibit the practice of patent agents, and carve
out of that prohibition protected areas in which the state cannot enforce
its laws because of federal pre-emption. Thus things must be explicitly
or implicitly allowed under federal law.

I agree that my formulation won't work in every state. Based on Prof.
Hollaar's discussion, it wouldn't seem to work in Utah for example. But
it sure seems to be the situation in many other states.

Isaac

Roger Schlafly

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Jul 21, 2003, 1:57:09 PM7/21/03
to
"Isaac" <is...@latveria.castledoom.org> wrote
> >> Note that this is a matter of federal law (NOT state law); ...

> >> assuming that they are restricted from preparing the above-mentioned
> >> legal documents, such restriction is based solely on the scope of the
> >> agent's federal license.
> I agree that my formulation won't work in every state. Based on ...

If your formulation won't work in every state, then Tracy is wrong,
and it does depend on state law.


Alun Palmer

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Jul 21, 2003, 5:42:01 PM7/21/03
to
Isaac <is...@latveria.castledoom.org> wrote in
news:slrnbho9m...@latveria.castledoom.org:

The core activities of patent preparation and prosecution would fall
within UPL in most states, but different states have different definitions
of what types of documents must be prepared by a lawyer.

Isaac

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Jul 21, 2003, 10:09:57 PM7/21/03
to

Okay. I see your point and Roger's point. I guess I'm quibbling about
the use of the word "some" in the particular area of the faq. Unless it's
clear that in more states than not, the issue is clear that patent agents
can take the actions Roger asks about, I think saying "some" is misleading.

Isaac

Alun Palmer

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Jul 21, 2003, 11:37:11 PM7/21/03
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Isaac <is...@latveria.castledoom.org> wrote in
news:slrnbhp77...@latveria.castledoom.org:

Well, I don't know. What does he mean by patent related documents?

For example, here in Maryland the rule that only lawyers may prepare deeds
of assignment appears to apply only to real estate. Ergo, it seems that at
least in Maryland I might be able to prepare a patent assignment even if
not incident to prosecution (in the latter case I beleive it falls within
Sperry). I think a lot of analysis of state laws might be needed before we
could truly determine whether 'some' is the right word or not.

Isaac

unread,
Jul 22, 2003, 12:16:42 AM7/22/03
to

If no one has done the analysis, "some" is just speculation. But it's a
minor nit. I don't have a problem with Roger expressing his opinion in
a FAQ. "Some" isn't the word I would have used, but it ought to be good
enough to let someone know that they need to check their own situation
out.

Without seeing more of Maryland's UPL scheme, it just isn't possible to
tell whether you are correct, but it seems unlikely to me that the only
assignment document that falls under UPL in Maryland is an assignment
of real estate. OTOH it isn't clear to me that a patent assignment
falls outside of the area of federal pre-emption. If we could answer
that, the state law issue for that question would be moot.

From what I can see, the practice of law in Maryland includes "giving legal
advice". There is another clause that says that UPL includes any other
service the Marland Court of Appeals says it includes. Who the heck knows
what either of those clauses includes and doesn't include. Some things
are enumerated including preparing an instrument that affects the title of
real estate, but the list is not exhaustive. I also note that UPL includes
preparing documents that might affect a court case. That would seem to
include infringement opinions, but I really couldn't be sure.

I don't see any grounds to say definitively that preparing a patent
assignment, or an assignment of rights under a contract for that matter
does not constitute the practice of law in Maryland based on what I
found of Maryland's UPL rules.

Isaac

Alun Palmer

unread,
Jul 22, 2003, 5:55:55 AM7/22/03
to
Isaac <is...@latveria.castledoom.org> wrote in
news:slrnbhpel...@latveria.castledoom.org:

Maybe ultimately we will look at all the states, but for now I am only
looking at Maryland because I live there.

As you say, preparing an instrument that affects the title of real estate
is enumerated. A patent is not real estate, whatever else it may be. Could
a patent assignment fall under some other head? Maybe, but it is not
clear, and there is certainly no case law.

The most hilarious part is preparing documents that **might** affect a
court case. I would say that might even be void for vagueness. **Any**
document **might** affect a court case!!! In other words, preparing
documents require a lawyer, period - I don't think so. It is difficult,
perhaps impossible, to construe this so that it makes any sense.

The most striking thing is that these rules are not well drafted.

Isaac

unread,
Jul 22, 2003, 7:46:22 AM7/22/03
to
On 22 Jul 2003 09:55:55 GMT, Alun Palmer <elek...@yahoo.com> wrote:
>
> As you say, preparing an instrument that affects the title of real estate
> is enumerated. A patent is not real estate, whatever else it may be. Could
> a patent assignment fall under some other head? Maybe, but it is not
> clear, and there is certainly no case law.

I'm sure there is some case law that points us in the right direction
even if there is none involving patent agents.

> The most hilarious part is preparing documents that **might** affect a
> court case. I would say that might even be void for vagueness. **Any**
> document **might** affect a court case!!! In other words, preparing
> documents require a lawyer, period - I don't think so. It is difficult,
> perhaps impossible, to construe this so that it makes any sense.

Like ordinary business records, tax records, medical reports etc.
It's certain that the clause doesn't include any of that. What do
the cases suggest?

> The most striking thing is that these rules are not well drafted.

You have to construe this things in terms of the case law as well as
whatever clarifying rules the Court of Appeals have adopted. We haven't
done so, and I'm not going to try. To see the Maryland bar associations
take on the topic, look here:

http://www.msba.org/departments/commpubl/press_ctr/articles/2001/03-13-2001b.htm

There is a statement in there that explains the benefit of having vague,
er that is flexible UPL rules.

Isaac

Tracy Aquilla

unread,
Jul 22, 2003, 9:59:21 AM7/22/03
to

"Alun Palmer" <elek...@yahoo.com> wrote in message
news:Xns93BF75A3E5A2...@130.133.1.4...

> "Tracy Aquilla" <aqu...@bpmlegal.com> wrote in
> news:3f1b...@news2.lightlink.com:
>
> >
> > "Roger Schlafly" <rog...@mindspring.com> wrote in message
> > news:8jBRa.4277$KH2.148...@twister2.starband.net...
> >> "Tracy Aquilla" <aqu...@bpmlegal.com> wrote
> >> > Regardless, an unbiased interpretation of the law indicates that it
> >> > might, in fact, not be legal for patent agents to prepare certain
> >> > legal documents, such as infringement opinions or license
> >> > agreements, and certainly they are
> >>
> >> How's this?
> >>
> >> Q. Are there any restrictions on patent agents preparing
> >> patent-related legal documents?
> >>
> >> Possibly, in some states.
> >
> > Note that this is a matter of federal law (NOT state law); patent
> > agents are licensed by the federal government. Recall the holding in
> > Sperry regarding federal preemption. The states cannot restrict patent
> > agents' practice beyond the restrictions in the federal law. So,
> > assuming that they are restricted from preparing the above-mentioned
> > legal documents, such restriction is based solely on the scope of the
> > agent's federal license.
> >
> >
> >
> >
>
> Not exactly, Tracy.

It is not clear with which assertion above you disagree.

> Really it is necessary to start from the premise that
> whatever is not prohibitted is permitted.

I do not agree with that. Prohibited by whom?

> Some activities may be grey
> areas in the scope of the federal licence, because Chief Justice Warren
> declined to reach them in Sperry,

Not "may be" - there ARE areas in which the scope of the federal licence is
unclear.

> and/or because the PTO don't care to
> regulate them.

> State UPL laws vary, though, so a patent agent (or anyone
> else) may do whatever is not prohibitted by the state, whether or not it
> falls within the scope of a federal licence, including if it cannot be
> reliably determined whether it falls therein.

Perhaps I misunderstand what you are trying to convey, but it appears that
you are saying patent agents can do whatever they please, even if it is not
within the scope of the patent agent's federal license, as long as it does
not constitute UPL in any state. I don't think that is a correct statement.
Of course, an agent clearly is not authorized to practice beyond the scope
of the federal license - that is against the rules!
Tracy


Tracy Aquilla

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Jul 22, 2003, 10:03:31 AM7/22/03
to
"Roger Schlafly" <rog...@mindspring.com> wrote in message
news:fQVSa.495$Jn1.14...@twister2.starband.net...

Sperry held that state laws cannot place _restrictions_ on the activities of
patent agents. If the federal license permits an activity, then the states
cannot prohibit that activity. If you learned nothing else from Sperry, you
should at least understand this part.
Tracy


Tracy Aquilla

unread,
Jul 22, 2003, 10:16:01 AM7/22/03
to
"Alun Palmer" <elek...@yahoo.com> wrote in message
news:Xns93BF73AE6CB...@130.133.1.4...

I worked at a "patent mill" for a year myself. But even at that firm, most
of the experienced attorneys were doing more than merely patent prosecution.
Admittedly, the majority of the junior associates there apparently did very
little of anything else. But I don't think junior associates at patent
"boutiques" constitute the majority of patent attorneys.
Tracy


Alun Palmer

unread,
Jul 22, 2003, 11:41:09 AM7/22/03
to
Isaac <is...@latveria.castledoom.org> wrote in
news:slrnbhq90...@latveria.castledoom.org:

> On 22 Jul 2003 09:55:55 GMT, Alun Palmer <elek...@yahoo.com> wrote:
>>
>> As you say, preparing an instrument that affects the title of real
>> estate is enumerated. A patent is not real estate, whatever else it
>> may be. Could a patent assignment fall under some other head? Maybe,
>> but it is not clear, and there is certainly no case law.
>
> I'm sure there is some case law that points us in the right direction
> even if there is none involving patent agents.
>

I would be mildly surprised if there was any case that involved preparing
a transfer of something other than land (including buildings). But you
never know?

>> The most hilarious part is preparing documents that **might** affect a
>> court case. I would say that might even be void for vagueness. **Any**
>> document **might** affect a court case!!! In other words, preparing
>> documents require a lawyer, period - I don't think so. It is
>> difficult, perhaps impossible, to construe this so that it makes any
>> sense.
>
> Like ordinary business records, tax records, medical reports etc.

Or even supermarket receipts, laundry tickets, etc

> It's certain that the clause doesn't include any of that.

If only because it would be absurd.

> What do
> the cases suggest?
>

I honestly don't know. I suppose I should research it.

The actual language of the rule seems to be:

"preparing or helping in the preparation of any form or document that is
filed in a court or affects a case that is or may be filed in a court"

Unfortunately, that has the same absurd scope as discussed above, largely
due to the use of the words 'affects' and 'may'..



>> The most striking thing is that these rules are not well drafted.
>
> You have to construe this things in terms of the case law as well as
> whatever clarifying rules the Court of Appeals have adopted.

Certainly

> We
> haven't done so, and I'm not going to try. To see the Maryland bar
> associations take on the topic, look here:
>
> http://www.msba.org/departments/commpubl/press_ctr/articles/2001/03-13-2
> 001b.htm
>
> There is a statement in there that explains the benefit of having
> vague, er that is flexible UPL rules.
>
> Isaac
>

I read it, and ultimately it is not very helpful to understanding the
position of patent agents. It glosses over 'statutory exceptions' and then
discusses only what constitutes the practice of law, an enquiry that gets
us pretty much nowhere when discussing someone who does have a limited
licence to practice law.

Here's a longer quote from the article:

"The "practice of law" includes (1) giving legal advice (2) representing
another person before a unit of the State government or of a political
subdivision or (3) performing any other service that the Court of Appeals
defines as practicing law. Furthermore, the "practice of law" includes (1)
advising in the administration of probate of estates of decedents in an
orphans’ court of the State; (2) preparing an instrument that affects
title to real estate; (3) preparing or helping in the preparation of any
form or document that is filed in a court or affects a case that is or may
be filed in a court or (4) giving advice about a case that is or may be
filed in a court. There are a number of statutory exceptions that are
beyond the scope of this article."

In the first list, item (1) (giving legal advice) is part of the normal
duties of a patent agent, whereas item (2) doesn't cover federal agencies,
and so doesn't affect any patent prosecution practice, but item (3) is
open ended, i.e. it means whatever the Court of Appeals want it to mean.

In the second list, items (1) and (2) relate to probate and real estate
deeds, and have no bearing on patent law. No doubt other states have
provisions similar to that last one that don't mention real estate, and so
could be a problem, but in MD this is not the case. Item (3) is the one we
discussed above re document preparation, and item (4) clearly relates to
opinions.

The wording there is "giving advice about a case that is or may be filed
in a court". The question I would like to postulate is whether construing
the claims of a patent to determine possible infringement by a
_new_invention_ falls within this wording, and if so whether it is also
reasonably necessary and incident to prosecution, so as to fall within the
federal preemption.

The second half of that query has already been dissected, but I will just
re-state my position that it often is necessary in order to determine the
scope of what may be protected without requiring a licence on a
controlling patent.

Returning to the first half of the question, does the mere existence of a
patent that might be infringed establish a case that _may_ be filed in a
court?

Does it do so even if no infringing activity has yet taken place?

Regards, Alun, Reg. No. 47,838

Roger Schlafly

unread,
Jul 22, 2003, 12:45:57 PM7/22/03
to
"Tracy Aquilla" <aqu...@bpmlegal.com> wrote

> Sperry held that state laws cannot place _restrictions_ on the activities
of
> patent agents. ...

Correct.


Roger Schlafly

unread,
Jul 22, 2003, 12:51:48 PM7/22/03
to
"Tracy Aquilla" <aqu...@bpmlegal.com> wrote

> > Really it is necessary to start from the premise that
> > whatever is not prohibitted is permitted.
> Perhaps I misunderstand what you are trying to convey, but it appears that
> you are saying patent agents can do whatever they please, even if it is
not
> within the scope of the patent agent's federal license, as long as it does
> not constitute UPL in any state. I don't think that is a correct
statement.

Why not? If the patent agent is not violating any law, then what's
the problem?


Roger Schlafly

unread,
Jul 22, 2003, 1:38:46 PM7/22/03
to
"Isaac" <is...@latveria.castledoom.org> wrote

>
http://www.msba.org/departments/commpubl/press_ctr/articles/2001/03-13-2001b.htm
> There is a statement in there that explains the benefit of having vague,
> er that is flexible UPL rules.

So I see:

Maryland's definition of the "practice of law" does not include an
itemized, all-inclusive list but instead provides a statutory framework
within which the Court of Appeals may examine the alleged activity on a case
by case basis. Comprehensive definitions of the "practice of law" or the
"unauthorized practice of law" are neither practical nor wise. Rather
vesting in the judiciary the ability to define the "practice of law" as the
times and developments of our society require, on a case by case basis is
essential.

So the practical consequence is that patent agents can do whatever
they want in MD, because there is no UPL case law against patent
agents.


Isaac

unread,
Jul 22, 2003, 2:30:56 PM7/22/03
to
On 22 Jul 2003 15:41:09 GMT, Alun Palmer <elek...@yahoo.com> wrote:
> I read it, and ultimately it is not very helpful to understanding the
> position of patent agents. It glosses over 'statutory exceptions' and then
> discusses only what constitutes the practice of law, an enquiry that gets
> us pretty much nowhere when discussing someone who does have a limited
> licence to practice law.

I didn't mean to suggest that it would be helpful. Sorry about that.

Isaac

Alun Palmer

unread,
Jul 22, 2003, 2:37:30 PM7/22/03
to
"Roger Schlafly" <rog...@mindspring.com> wrote in
news:0FeTa.17$dp4.3...@twister1.starband.net:

> "Isaac" <is...@latveria.castledoom.org> wrote
>>
> http://www.msba.org/departments/commpubl/press_ctr/articles/2001/03-13-2
> 001b.htm

>> There is a statement in there that explains the benefit of having
>> vague, er that is flexible UPL rules.
>
> So I see:
>
> Maryland's definition of the "practice of law" does not include an
> itemized, all-inclusive list but instead provides a statutory framework
> within which the Court of Appeals may examine the alleged activity on a
> case by case basis. Comprehensive definitions of the "practice of law"
> or the "unauthorized practice of law" are neither practical nor wise.
> Rather vesting in the judiciary the ability to define the "practice of
> law" as the times and developments of our society require, on a case by
> case basis is essential.
>
> So the practical consequence is that patent agents can do whatever
> they want in MD, because there is no UPL case law against patent
> agents.
>
>
>

I wish that were true, Roger, but I doubt it. Just because there is no
case law, that doesn't mean much.

Alun

Isaac

unread,
Jul 22, 2003, 2:46:07 PM7/22/03
to
On Tue, 22 Jul 2003 17:38:46 GMT, Roger Schlafly <rog...@mindspring.com> wrote:

> Maryland's definition of the "practice of law" does not include an
> itemized, all-inclusive list but instead provides a statutory framework
> within which the Court of Appeals may examine the alleged activity on a case
> by case basis. Comprehensive definitions of the "practice of law" or the
> "unauthorized practice of law" are neither practical nor wise. Rather
> vesting in the judiciary the ability to define the "practice of law" as the
> times and developments of our society require, on a case by case basis is
> essential.
>
> So the practical consequence is that patent agents can do whatever
> they want in MD, because there is no UPL case law against patent
> agents.

That isn't the conclusion I would reach. I would suggest that the non
patent agent cases would give guidance as to what is considered the
practice of law in Maryland. I suspect that determining what constitutes
the practice of law is little more difficult for a patent agent that it is
for a tax preparer or a banker. The hard part is determining what constitutes
the unauthorized practice of law.

My guess is that for most of the interesting patent law questions in Maryland,
it's strictly a matter of what federal law allows. I certainly wouldn't
assume that there is no limit onwhat patent agents can do.


Isaac

Alun Palmer

unread,
Jul 22, 2003, 2:51:33 PM7/22/03
to
Isaac <is...@latveria.castledoom.org> wrote in
news:slrnbhr0mv...@latveria.castledoom.org:

No, that's quite alright. I never thought it would be.

Alun

Isaac

unread,
Jul 22, 2003, 2:52:13 PM7/22/03
to
On Tue, 22 Jul 2003 09:59:21 -0400, Tracy Aquilla <aqu...@bpmlegal.com> wrote:

> Perhaps I misunderstand what you are trying to convey, but it appears that
> you are saying patent agents can do whatever they please, even if it is not
> within the scope of the patent agent's federal license, as long as it does
> not constitute UPL in any state. I don't think that is a correct statement.
> Of course, an agent clearly is not authorized to practice beyond the scope
> of the federal license - that is against the rules!
> Tracy

Unless there is some federal prohibition against some activity, I would
think the patent agent could do anything that wasn't the practice of law
in his particular state. Is there some federal law that would prevent
a patent agent from handling a real estate closing if doing so were legal
in his particular state?

Isaac

Isaac

unread,
Jul 22, 2003, 3:53:15 PM7/22/03
to
On 22 Jul 2003 18:51:33 GMT, Alun Palmer <elek...@yahoo.com> wrote:

>> I didn't mean to suggest that it would be helpful. Sorry about that.
>>
>> Isaac
>>
>
> No, that's quite alright. I never thought it would be.
>

OTOH I did find it to be a very interesting peek at the thought process
of whatever attorney(s) wrote the document.

Isaac

James White

unread,
Jul 22, 2003, 7:30:20 PM7/22/03
to
> Tracy

> Perhaps I misunderstand what you are trying to convey, but it appears that
> you are saying patent agents can do whatever they please, even if it is
not
> within the scope of the patent agent's federal license, as long as it does
> not constitute UPL in any state. I don't think that is a correct
statement.
> Of course, an agent clearly is not authorized to practice beyond the scope
> of the federal license - that is against the rules!

??? What country do you live in? Here in the good ol' USA we have a
constitution that even makes it (theoretically) possible to keep a law from
being enforceable if it's counter to the Constitution.

--

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)" www.willitsell.com
Also: www.booksforinventors.com and www.idearights.com
[Follow sig link for email addr.Replies go to spam bit-bucket]


Tracy Aquilla

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Jul 24, 2003, 9:19:21 AM7/24/03
to
"Roger Schlafly" <rog...@mindspring.com> wrote in message
news:_YdTa.17$kL7.8...@twister2.starband.net...

As a patent agent, you should know the answer. Presumably, the OED would
have a problem with patent agents doing things that are beyond the scope of
their federal license. Indeed, the rules clearly state that you aren't
supposed to do things that exceed the scope of that license.
Tracy


Tracy Aquilla

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Jul 24, 2003, 9:27:46 AM7/24/03
to

"Isaac" <is...@latveria.castledoom.org> wrote in message
news:slrnbhr1ut...@latveria.castledoom.org...

> On Tue, 22 Jul 2003 09:59:21 -0400, Tracy Aquilla <aqu...@bpmlegal.com>
wrote:
>
> > Perhaps I misunderstand what you are trying to convey, but it appears
that
> > you are saying patent agents can do whatever they please, even if it is
not
> > within the scope of the patent agent's federal license, as long as it
does
> > not constitute UPL in any state. I don't think that is a correct
statement.
> > Of course, an agent clearly is not authorized to practice beyond the
scope
> > of the federal license - that is against the rules!
> > Tracy
>
> Unless there is some federal prohibition against some activity, I would
> think the patent agent could do anything that wasn't the practice of law
> in his particular state.

It appears that what you are really trying to say is that unregluated
activities that require no license at all can be performed legally by
anyone, including patent agents. Of course that is true.

> Is there some federal law that would prevent
> a patent agent from handling a real estate closing if doing so were legal
> in his particular state?

I don't know.

Tracy Aquilla

unread,
Jul 24, 2003, 9:32:35 AM7/24/03