Patent Agent FAQ
Roger Schlafly
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
> 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
> 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
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
>
> 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
> 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
> 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
> > In the FAQ, I say I will cite contrasting views, if they are backed
> > up by some authority.
> 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
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
> 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
> > 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
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
>
> 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
> 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
news:MPG.197fbf80...@news.freeserve.net...
> Roger Schlafly wrote on Wed, 16 Jul 2003 00:17:06 GMT....
>
> > 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
"Tim Jackson" <ne...@winterbourne.freeserve.invalid> wrote in message
> Roger Schlafly wrote on Wed, 16 Jul 2003 22:27:34 GMT....
> >
> > 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
> 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
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
>
> "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
"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
"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
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
>
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
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
> >> 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.
If your formulation won't work in every state, then Tracy is wrong,
and it does depend on state law.
Alun Palmer
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
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
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
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
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
>
> 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
> "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
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
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
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
> Sperry held that state laws cannot place _restrictions_ on the activities
of
Correct.
Roger Schlafly
> > Really it is necessary to start from the premise that
> > whatever is not prohibitted is permitted.
> 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
>
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
> 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
> "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
> 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
news:slrnbhr0mv...@latveria.castledoom.org:
No, that's quite alright. I never thought it would be.
Alun
Isaac
> 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
>> 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
> 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
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
"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
news:gOjTa.119728$N7.16383@sccrnsc03...
> > 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?
Not that it's relevant, but of course you already know the answer.
> 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.
OK, but how does that fact relate to this discussion. Do you disagree with
something above? Apparently there is some unidentified law that you allege
is unconstitutional. Which law would that be?
Isaac
>
> 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.
>
You appeared to be saying something different, but perhaps I missed your
point. You said that patent agents cannot do things outside of the scope
of their license. The set of things outside of the scope of their license
would seem to include both things that require some other license and things
that require no license at all.
>> 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.
Does it seem likely that Congress has the power to pass such a law?
Isaac
Alun Palmer
>
> "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.
>
You've answered your own question, then
Roger Schlafly
> You appeared to be saying something different, but perhaps I missed your
> point. You said that patent agents cannot do things outside of the scope
> of their license. The set of things outside of the scope of their license
> would seem to include both things that require some other license and
things
> that require no license at all.
Yes, you're right. Tracy's comments were contradictory.
> >> 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.
> Does it seem likely that Congress has the power to pass such a law?
Congress would have to claim that it affects interstate commerce
somehow. However, this is getting off track. I doubt that there is even
one member of Congress who cares whether patent agents do real
estate closings or not.
Isaac
It was just a goofy example. I suppose it would have been safer to
ask about patent agents performing weddings.
Isaac
James White
> Not that it's relevant, but of course you already know the answer.
Actually I don't "know" the answer but I have a good guess.
> OK, but how does that fact relate to this discussion. Do you disagree with
> something above? Apparently there is some unidentified law that you allege
> is unconstitutional. Which law would that be?
My point was simply that your "communist" lawyer* position in your
statements was untenable. You have already said that is so in conceding your
"arguments" failure in your replies to Alun.
*The "communist" lawyer or bureaucrat position is always that if there is
not a law that says you can then they can tell you you can't. (The point
that even lawyers and bureaucrats are not authorized to "make law," is, of
course, lost on such people too, they automatically place themselves above
the law.) It obviously has nothing to do with true Communism but it is a
mindset that too many lawyers seem to follow and it totally flies in the
face of the U.S. Constitution.
Tracy Aquilla
> On Thu, 24 Jul 2003 09:27:46 -0400, Tracy Aquilla <aqu...@bpmlegal.com>
wrote:
> >
> > 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.
> >
>
> You appeared to be saying something different, but perhaps I missed your
> point. You said that patent agents cannot do things outside of the scope
> of their license. The set of things outside of the scope of their license
> would seem to include both things that require some other license and
things
> that require no license at all.
That is obvious. What also should be obvious is that we were not discussing
it in a vacuum. But I suppose some people needed clarification that I was
making particular reference to patent agent's activities in representing
clients in patent matters, not real estate or other non-patent related
matters.
Don't forget that, in addion to adhering to the scope of their federal
license, patent agents also are charged with adhering to their areas of
competence. It is possible for a patent agent to act with the laws of his
state and nevertheless exceed the authority granted to him by the PTO.
>
> >> 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.
>
> Does it seem likely that Congress has the power to pass such a law?
It probably could if it cared to.
Tracy Aquilla
> "Isaac" <is...@latveria.castledoom.org> wrote
> > You appeared to be saying something different, but perhaps I missed your
> > point. You said that patent agents cannot do things outside of the
scope
> > of their license.
Do you disagree?
The assertion was made that patent agents can do anything they want, as long
as it does not constitute UPL in any state. That is not true. See 37 USC
10.10, 10.14, 10.22-10.24, and 10.31-10.40, for example.
In fact, it is quite possible to comply with state law and nevertheless
exceed the scope of the federal license. So the original statement is false,
as I said.
> > The set of things outside of the scope of their license
> > would seem to include both things that require some other license and
> things
> > that require no license at all.
>
> Yes, you're right. Tracy's comments were contradictory.
Contradictory, but not self-contradictory.
Tracy Aquilla
> > activities that require no license at all can be performed legally by
> > anyone, including patent agents. Of course that is true.
> >
>
> You've answered your own question, then
But it is possible for an act that is legal under state law to violate the
patent agent's duties nevertheless.
Alun Palmer
> "Isaac" <is...@latveria.castledoom.org> wrote in message
> news:slrnbi0hv8...@latveria.castledoom.org...
>> On Thu, 24 Jul 2003 09:27:46 -0400, Tracy Aquilla
>> <aqu...@bpmlegal.com> wrote:
>> >
>> > 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.
>> >
>>
>> You appeared to be saying something different, but perhaps I missed
>> your point. You said that patent agents cannot do things outside of
>> the scope of their license. The set of things outside of the scope of
>> their license would seem to include both things that require some
>> other license and things that require no license at all.
>
> That is obvious. What also should be obvious is that we were not
> discussing it in a vacuum. But I suppose some people needed
> clarification that I was making particular reference to patent agent's
> activities in representing clients in patent matters, not real estate
> or other non-patent related matters.
>
> Don't forget that, in addion to adhering to the scope of their federal
> license, patent agents also are charged with adhering to their areas of
> competence. It is possible for a patent agent to act with the laws of
> his state and nevertheless exceed the authority granted to him by the
> PTO.
>
That is true of attorneys too.
Alun Palmer
Here you are simply talking about obeying our code of ethics, which is a
given. I read an interesting case before the Board against a patent
attorney who claimed he was only bound by the state bar code of ethics.
Needless to say, his argument didn't carry any weight with the Board!
Alun Palmer
Roger Schlafly
> "Tracy Aquilla" <aqu...@bpmlegal.com> wrote
> > But it is possible for an act that is legal under state law to violate
> > the patent agent's duties nevertheless.
> Naturally
Summarizing, lawyers, agents, and everyone else are subject to
all applicable federal and state laws.
Isaac
> "Roger Schlafly" <rog...@mindspring.com> wrote in message
> news:seYTa.155$6V.64...@twister1.starband.net...
>> "Isaac" <is...@latveria.castledoom.org> wrote
>> > You appeared to be saying something different, but perhaps I missed your
>> > point. You said that patent agents cannot do things outside of the
> scope
>> > of their license.
>
> Do you disagree?
>
> The assertion was made that patent agents can do anything they want, as long
> as it does not constitute UPL in any state. That is not true. See 37 USC
> 10.10, 10.14, 10.22-10.24, and 10.31-10.40, for example.
I think you meant to cite the CFR rather than the code.
>
> In fact, it is quite possible to comply with state law and nevertheless
> exceed the scope of the federal license. So the original statement is false,
> as I said.
I think you're switching definitions on here. The source of this argument was
your comment suggesting that patent agents needed to be enabled to practice
law if it doing so were outside the scope of their license from the USPTO.
The responses came from those who were suggesting that patent agents could
practice law in their home state if the state UPL laws didn't prohibit
it, even if federal law didn't enable it. I think it was pretty clear nobody
was talking about patent agents attempting to engage in federally prohibited
conduct, and at I at least explicitly pointed that out.
So while a patent agent cannot practice before the PTO in trademark cases,
it's strictly a matter of state law whether he can register trademarks
on a state level. The patent agent doesn't require a federal enabling
statute to do so.
Isaac
Roger Schlafly
Last-modified: 2003/07/18
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. 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. Others think that
such regulation is unlikely or impossible.
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
Tracy Aquilla
>
> Here you are simply talking about obeying our code of ethics, which is a
> given. I read an interesting case before the Board against a patent
> attorney who claimed he was only bound by the state bar code of ethics.
> Needless to say, his argument didn't carry any weight with the Board!
OK, so we agree that the original statement that "patent agents can do
anything they want, as long as it does not constitute UPL in any state" is
indeed false.
Tracy
Tracy Aquilla
news:bg18c7$prt$1...@slb9.atl.mindspring.net...
> Archive-name: legal/patents/agent-faq
> Last-modified: 2003/07/18
> 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).
... but in patent matters only.
> 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.
Actually, the PTO calls patent agents "patent agents," and calls patent
attorneys "patent attorneys," (see the Registry of Agents and Attorneys)
although both have equal authority in patent matters before the Office.
> 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.
A proper FAQ would note that this is an area where the scope of the agent's
license is not entirely clear and one ought to be careful to avoid UPL.
Patent agents are licensed to "give legal advice" ONLY pertaining to the
representation of clients before the USPTO in patent matters. Neglecting
this fact does patent agents reading the FAQ no service.
> 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.
A proper FAQ would note that this is an area where the scope of the agent's
license is not entirely clear and one ought to be careful to avoid UPL.
Patent agents are licensed to "give legal advice" ONLY pertaining to the
representation of clients before the USPTO in patent matters. Assignments,
licenses and other contracts are governed by state law, which usually
requires a license to practice law in the state. Neglecting this fact does
patent agents reading the FAQ no service.
> 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.
This is where the FAQ ventures into dangerous territory. The question posed
should be, does the patent agent's federal license include within its scope
the rendering of patent infringement opinions. And the answer should be, at
the very least, that the law is unsettled on this exact point. Reference to
the fact that something "is within the skill set" is improper as that is
irrelevant to the issue of licensing.
> 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 proper FAQ would point out the caveats mentioned here numerous times, such
as the fact that rendering an infringement opinion may in fact literally
exceed the scope of a patent agent's license and also, separately, may
result in a court holding that the infringement opinion is not competent and
therefore does not excuse willful infringement. Any purported "Patent Agent
FAQ" that neglects such details is sorely lacking and may indeed be
misleading.
> 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.
This is not a correct summary of US law on this point. Perhaps you would be
wise to review the most recent CAFC decisions in regard to the
attorney-client privelege and work product doctrine as applied to
communicatinos between patent attorneys (and agents) and their clients. The
CAFC held not to long ago that an attorney's opinions regarding claim
construction are not priveleged. It seems that would make much (if not most)
of an infringement opinion open to discovery, regardless of who prepared it.
> 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.
A simple NO should preceed the above disclaimer.
> Q. Are there any restrictions on patent agents preparing
> patent-related legal documents?
>
> Possibly, in some states.
Wrong - see Sperry. If there is any restriction on a patent agent's practice
before the USPTO, then it must be based on federal law, as the federal law
preempts all state laws in regard to the practice of patent agents. Roger, I
think your FAQ would be better if it simply pointed out the law and provided
the references. Your interpretation of the case law will only confuse patent
agents who might be trying to learn something from it.
> 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. Others think that
> such regulation is unlikely or impossible.
>
> 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?
Any Patent Agent FAQ should clearly state that patent agents are not
licensed to practice copyright or trademark law (and probably should end
there).
Roger Schlafly
> OK, so we agree that the original statement that "patent agents can do
> anything they want, as long as it does not constitute UPL in any state" is
> indeed false.
Nobody said that. You misread Alun's message. His main point was
that state laws apply in areas not regulated by the feds. See:
http://www.google.com/groups?selm=Xns93BF75A3E5A2Celektrosmdonet%40130.133.1.4
Roger Schlafly
> Actually, the PTO calls patent agents "patent agents," ...
It also calls them patent practitioners.
> > 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.
> A proper FAQ would note that this is an area where the scope of the
agent's
> license is not entirely clear and one ought to be careful to avoid UPL.
No, it is entirely clear that a patent agent can do the above tasks.
> > 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.
> A proper FAQ would note that this is an area where the scope of the
agent's
> license is not entirely clear and one ought to be careful to avoid UPL.
> Patent agents are licensed to "give legal advice" ONLY pertaining to the
> representation of clients before the USPTO in patent matters. Assignments,
> licenses and other contracts are governed by state law, which usually
> requires a license to practice law in the state. Neglecting this fact does
> patent agents reading the FAQ no service.
Are you saying that a patent agent cannot record a patent assignment? Or
that it depends on state UPL laws?
> > 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.
> This is where the FAQ ventures into dangerous territory. The question
posed
> should be, does the patent agent's federal license include within its
scope
> the rendering of patent infringement opinions. And the answer should be,
at
> the very least, that the law is unsettled on this exact point. Reference
to
> the fact that something "is within the skill set" is improper as that is
> irrelevant to the issue of licensing.
Everyone agrees that patent agents can sometimes give patent infringement
opinions. If you think that there might be circumstances and states where
it is not permitted, then tell me and give me a reference.
> > 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.
> This is not a correct summary of US law on this point. Perhaps you would
be
> wise to review the most recent CAFC decisions in regard to the
> attorney-client privelege and work product doctrine as applied to
> communicatinos between patent attorneys (and agents) and their clients.
The
> CAFC held not to long ago that an attorney's opinions regarding claim
> construction are not priveleged. It seems that would make much (if not
most)
> of an infringement opinion open to discovery, regardless of who prepared
it.
I remember seeing a case where a plaintiff was required to disclose in
discover the claim construction that it intended to present at trial anyway.
Is that what you are referring to? I deliberately did not say that advice
is always privileged because of exceptions like that, but that particular
exception is insignificant and not worth mentioning.
> > 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.
> A simple NO should preceed the above disclaimer.
I was going to say No, but I am not sure it is impossible. Presumably
it would be allowed if the judge said it was ok.
> > Q. Are there any restrictions on patent agents preparing
> > patent-related legal documents?
> > Possibly, in some states.
> Wrong - see Sperry. If there is any restriction on a patent agent's
practice
> before the USPTO, then it must be based on federal law, as the federal law
> preempts all state laws in regard to the practice of patent agents. Roger,
I
You are the one suggesting that there is a potential state UPL law problem
in connection with recording assignments.
Ernest Schaal
rog...@mindspring.com wrote on 7/30/03 2:05 AM:
> "Tracy Aquilla" <aqu...@bpmlegal.com> wrote
>> A proper FAQ would note that this is an area where the scope of the agent's
>> license is not entirely clear and one ought to be careful to avoid UPL.
>> Patent agents are licensed to "give legal advice" ONLY pertaining to the
>> representation of clients before the USPTO in patent matters. Assignments,
>> licenses and other contracts are governed by state law, which usually
>> requires a license to practice law in the state. Neglecting this fact does
>> patent agents reading the FAQ no service.
>
> Are you saying that a patent agent cannot record a patent assignment? Or
> that it depends on state UPL laws?
Roger,
You really destroy any credibility in your FAQ when you play word games like
this. Your pretend that "recording" an assignment is the same as as
"drafting" or "writing" an assignment. The US PTO rules permit you to record
an assignment, it does not preempt state UPL by permitting you to draft the
assignment you record.
Roger Schlafly
> this. Your pretend that "recording" an assignment is the same as as
> "drafting" or "writing" an assignment.
No, I do not pretend it is the same.
> The US PTO rules permit you to record
> an assignment, it does not preempt state UPL by permitting you to draft
the
> assignment you record.
Is there any state UPL that forbids patent agents to draft an assignment?
Ernest Schaal
There may be a few states that would not forbid such an activity by
non-lawyers, but I don't think that California is one of them.
If your question is "Is there any state UPL that (SPECIFICALLY)
forbids patent agents (BY NAMING THAT GROUP SPECIFICALLY) to draft an
assignment (SPECIFICALLY)?" then the answer would be not, there
isn't, but then there is not a state that specifically forbids
left-handed, one-armed, non-lawyer jugglers with red hair, having one
blue eye and one green eye, named "Timmy-Lou" from drafting an
assignment either.
The states define UPL generally, with the activity of drafting an
assignment being within the scope of "practicing law." The US patent
laws allows the USPTO to grant patent practitioners the right to do
certain activities, including the RECORDING of assignments. To the
degree that the USPTO grants patent practitioners the right to do
certain things, the state laws are pre-empted. But to the degree that
the USPTO has not granted a right to patent practitioners, the state
laws are not pre-empted. Since the USPTO has not granted any rights to
patent practitioners re assignments beyond recording same, the state
laws would apply to patent agents, and if the state law defines UPL
broadly (as most do) then yes the state UPL does forbid patent agents
from drafting an assignment.
Roger Schlafly
> > Is there any state UPL that forbids patent agents to draft an
assignment?
> There may be a few states that would not forbid such an activity by
> non-lawyers, but I don't think that California is one of them.
Any word yet on those complaints that you filed with the Calif Bar
assn and the USPTO? I'd be happy to cite any response you get.
They certainly have not told me that there is any substance to
your theories.
Ernest Schaal
rog...@mindspring.com wrote on 7/30/03 12:20 PM:
I didn't file any complaints, merely a request for an advisory opinion from
the Calif. Bar. No word yet, but those organizations don't move quickly.
If you want, I will file a complaint, but I would need some indication you
really do draft assignments, licenses, etc. Your mere newsgroup boasting
isn't enough to prove that you actually do it.
Tracy Aquilla
> "Tracy Aquilla" <aqu...@bpmlegal.com> wrote
> > Actually, the PTO calls patent agents "patent agents," ...
>
> It also calls them patent practitioners.
Andthe FAQ should include that, as well as noting that the PTO
differentiates between agents and attorneys.
> > > 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.
> > A proper FAQ would note that this is an area where the scope of the
> agent's
> > license is not entirely clear and one ought to be careful to avoid UPL.
>
> No, it is entirely clear that a patent agent can do the above tasks.
"Give legal advice" is far too broad a statement; the FAQ should clearly
state that there are strict limitations on patent agents' giving legal
advice (at least, a good FAQ that is not misleading would).
> > > 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.
> > A proper FAQ would note that this is an area where the scope of the
> agent's
> > license is not entirely clear and one ought to be careful to avoid UPL.
> > Patent agents are licensed to "give legal advice" ONLY pertaining to the
> > representation of clients before the USPTO in patent matters.
Assignments,
> > licenses and other contracts are governed by state law, which usually
> > requires a license to practice law in the state. Neglecting this fact
does
> > patent agents reading the FAQ no service.
>
> Are you saying that a patent agent cannot record a patent assignment?
No. Recording an assignment is not the same as preparing one. Patent agents
are authorized to use the PTO
> Or that it depends on state UPL laws?
Preparing an assignment agreement, which is a contract governed by state law
(not federal law), is not clearly within the scope of a patent agent's
license. So depending on the state, preparing an assignment agreement may
indeed constitute UPL.
> > > 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.
> > This is where the FAQ ventures into dangerous territory. The question
> posed
> > should be, does the patent agent's federal license include within its
> scope
> > the rendering of patent infringement opinions. And the answer should be,
> at
> > the very least, that the law is unsettled on this exact point. Reference
> to
> > the fact that something "is within the skill set" is improper as that is
> > irrelevant to the issue of licensing.
>
> Everyone agrees that patent agents can sometimes give patent infringement
> opinions.
No, everyone does not agree.
> If you think that there might be circumstances and states where
> it is not permitted, then tell me and give me a reference.
I have posted the explanation more than once - review the thread if you
really cannot remember.
> > > 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.
> > This is not a correct summary of US law on this point. Perhaps you would
> be
> > wise to review the most recent CAFC decisions in regard to the
> > attorney-client privelege and work product doctrine as applied to
> > communicatinos between patent attorneys (and agents) and their clients.
> The
> > CAFC held not to long ago that an attorney's opinions regarding claim
> > construction are not priveleged. It seems that would make much (if not
> most)
> > of an infringement opinion open to discovery, regardless of who prepared
> it.
>
> I remember seeing a case where a plaintiff was required to disclose in
> discover the claim construction that it intended to present at trial
anyway.
> Is that what you are referring to?
You wrote a FAQ that purports to explain the law. It is your obligation to
assure the accuracy of your document. I suggested that you should do some
research before misstating the law. I am not interested in doing the
research for you.
> I deliberately did not say that advice
> is always privileged because of exceptions like that, but that particular
> exception is insignificant and not worth mentioning.
Based on your FAQ, an agent might mistakenly believe that a communication is
priveleged when in fact it is not. The fact that attorney's opinions on
claim construction are not priveleged certainly is not insignificant
(particularly for the client).
> > > 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.
> > A simple NO should preceed the above disclaimer.
>
> I was going to say No, but I am not sure it is impossible. Presumably
> it would be allowed if the judge said it was ok.
The FAQ doesn't make that clear either. Of course, every competent patent
practitioner should know patent agents cannot represent clients in a patent
infringement trial. If you are going to suggest otherwise, you should give a
clear explanation.
> > > Q. Are there any restrictions on patent agents preparing
> > > patent-related legal documents?
> > > Possibly, in some states.
> > Wrong - see Sperry. If there is any restriction on a patent agent's
> practice
> > before the USPTO, then it must be based on federal law, as the federal
law
> > preempts all state laws in regard to the practice of patent agents.
Roger,
> I
>
> You are the one suggesting that there is a potential state UPL law problem
> in connection with recording assignments.
No, I never made any such suggestion. You apparently still do not understand
that _recording_ an assignment _in the USPTO_ clearly is within the scope of
a patent agent's license, so there simply cannot be any state UPL problem
with that. However, _preparing_ an assignment or a license agreement is
another matter entirely. Assignment agreements are contracts governed by
state law and the preparation of such contracts is not clearly within the
scope of a patent agent's license.
Tracy
Tracy Aquilla
Shouldn't you know this already, Roger - after all, you are the expert who
wrote the FAQ! Do you really not know the answer, or are you just pretending
not to know?
Tracy Aquilla
news:BB4DC54A.51B8%esc...@max.hi-ho.ne.jp...
He probably uses a PTO form and fills in the blanks, which is perfectly
acceptable. I rather doubt Roger is foolish enough to actually practice what
he preaches.
Tracy
Tracy Aquilla
> "Tracy Aquilla" <aqu...@bpmlegal.com> wrote
> > OK, so we agree that the original statement that "patent agents can do
> > anything they want, as long as it does not constitute UPL in any state"
is
> > indeed false.
>
> Nobody said that. You misread Alun's message.
Get real, I misread nothing - it was a direct quote! You just aren't paying
attention.
Tracy
Alun Palmer
If that's what I said, I will re-phrase it. What I meant was that a patent
agent can perform any type of service that does not constitute UPL in
state law, as well as anything within the scope of the federal
registration. I beleive that under Sperry the scope of the registration
includes:
(1) Preparing and prosecuting patent applications;
(2) Counseling and/or giving legal opinions relating to new inventions;
and
(3) Performing any services reasonably necessary and incident to patent
prosecution.
Filling in an assignment form and filing it obviously falls within (3). It
is reasonably necessary and incident to prosecution because it is not
possible to prosecute an application for a company unless the application
can be assigned to them, and yet it must be filed in the name(s) of the
inventor(s).
IMHO, drafting an assignment from scratch to be filed with the PTO still
falls squarely within the same line of reasoning, but this is largely
moot, as there would seldom be any reason to do it.
Kellogg was enjoined from drafting assignments in Illinois despite
apparently using PTO forms, but IMO Sperry would distinguish.
Cases:
Sperry v Florida Ex Rel Florida Bar, 373 US 379, USSC 1963;
Chicago Bar Association et al v Wilbur Fiske Kellogg,
338 Ill App 618, 88 NE 2d 519, Appellate Court of Illinois 1949
Roger Schlafly
> > Is there any state UPL that forbids patent agents to draft an
assignment?
> Shouldn't you know this already, Roger - after all, you are the expert who
> wrote the FAQ! Do you really not know the answer, or are you just
pretending
> not to know?
Yes, I know the answer. Patent agents are allowed to draft patent
assignments
in all 50 states. You have been unable to find any authority that says
otherwise.
Roger Schlafly
> > > OK, so we agree that the original statement that "patent agents can do
> > > anything they want, as long as it does not constitute UPL in any
state"
> > > is indeed false.
> > Nobody said that. You misread Alun's message.
> Get real, I misread nothing - it was a direct quote! You just aren't
paying
> attention.
You are lying. A simple Google search shows that Alun never said
that alleged quote.
Roger Schlafly
> > Are you saying that a patent agent cannot record a patent assignment?
> No. Recording an assignment is not the same as preparing one. Patent
agents
> are authorized to use the PTO
> > Or that it depends on state UPL laws?
> Preparing an assignment agreement, which is a contract governed by state
law
> (not federal law), is not clearly within the scope of a patent agent's
> license. So depending on the state, preparing an assignment agreement may
> indeed constitute UPL.
So you say that it depends on state UPL laws. Separately, you say:
> > Q. Are there any restrictions on patent agents preparing
> > patent-related legal documents?
> > Possibly, in some states.
> Wrong - see Sperry. If there is any restriction on a patent agent's
practice
> before the USPTO, then it must be based on federal law, as the federal law
> preempts all state laws in regard to the practice of patent agents.
So which is your position?
Tracy Aquilla
Where is your authority? Where in the 35 USC or 37 CFR does it say that
patent agents are licensed to prepare assignments, which are necessarily
governed by state law, not federal law? Of course, it doesn't.
Assignments are governed by state law. You need a citation for that? One
must have a license to practice law in any state in the US. You need a
citation for that?
If you prepare an assignment and do not have a license to practice law in
the state, you would be practicing law without a license, unless your state
has no prohibition against non-attorneys preparing contracts. I suggest
consulting the state law regarding UPL in the state in which you practice.
In the state of New York, where I practice and am familiar with the laws,
one must be a member of the NY bar to prepare contracts for others. Your
state may have a different law, but I doubt it.
Now, apparently, Roger, you are of the impression that there is no state
that prohibits non-attorneys from preparing contracts for others. How many
of the 50 state's UPL laws have you analyzed to reach your conclusion?
Tracy
Tracy Aquilla
> "Tracy Aquilla" <aqu...@bpmlegal.com> wrote
> > > Are you saying that a patent agent cannot record a patent assignment?
> > No. Recording an assignment is not the same as preparing one. Patent
> agents
> > are authorized to use the PTO
> > > Or that it depends on state UPL laws?
> > Preparing an assignment agreement, which is a contract governed by state
> law
> > (not federal law), is not clearly within the scope of a patent agent's
> > license. So depending on the state, preparing an assignment agreement
may
> > indeed constitute UPL.
>
> So you say that it depends on state UPL laws.
Preparing contracts under state law for others does not constitute
practicing patent law before the USPTO.
Separately, you say:
>
> > > Q. Are there any restrictions on patent agents preparing
> > > patent-related legal documents?
> > > Possibly, in some states.
> > Wrong - see Sperry. If there is any restriction on a patent agent's
> practice
> > before the USPTO, then it must be based on federal law, as the federal
law
> > preempts all state laws in regard to the practice of patent agents.
All true. Sperry held that the federal law preempts the states from
restricting patent agent's practice _before the USPTO_. Preparing contracts
for others under state law does not constitute practicing patent law _before
the USPTO_, so the states are free to regulate that activity.
> So which is your position?
My position is clear, just as I stated it. Only the federal law can place
restrictions on the scope of a patent agent's license. Reading Sperry should
have made that clear. Do you disagree? But preparing contracts for others
under state law does not constitute practicing patent law before the USPTO,
so the states are free to regulate and restrict that activity. Apparently
you disagree, but you have cited no authority to the contrary.
The point you apparently keep missing is that the states cannot place any
restrictions on the patent agent's federal license. But the states can and
do legally restrict patent agents from doing things that do not fall within
the scope of that federal license, such as, for example, the preparation of
contracts and representing clients before the courts. This should not be
that hard to understand for a person capable of passing the patent bar.
Tracy
Tracy Aquilla
> "Tracy Aquilla" <aqu...@bpmlegal.com> wrote
> > > > OK, so we agree that the original statement that "patent agents can
do
> > > > anything they want, as long as it does not constitute UPL in any
> state"
> > > > is indeed false.
> > > Nobody said that. You misread Alun's message.
> > Get real, I misread nothing - it was a direct quote! You just aren't
> paying
> > attention.
>
> You are lying.
No I am not, but you are a buffoon. It was a quote, which I cut and pasted.
Sorry you can't find the original, but if you hadn't posted so much garbage
on this subject, you might have an easier time finding Alun's original. It
is no longer available on my server. Search the archives.
> A simple Google search shows that Alun never said that alleged quote.
No simple search could ever prove that something does not exist.
Isaac
> "Roger Schlafly" <rog...@mindspring.com> wrote in message
>
> Preparing contracts under state law for others does not constitute
> practicing patent law before the USPTO.
>
> Separately, you say:
>>
>> > > Q. Are there any restrictions on patent agents preparing
>> > > patent-related legal documents?
>> > > Possibly, in some states.
>> > Wrong - see Sperry. If there is any restriction on a patent agent's
>> practice
>> > before the USPTO, then it must be based on federal law, as the federal
> law
>> > preempts all state laws in regard to the practice of patent agents.
>
> All true. Sperry held that the federal law preempts the states from
> restricting patent agent's practice _before the USPTO_. Preparing contracts
> for others under state law does not constitute practicing patent law _before
> the USPTO_, so the states are free to regulate that activity.
Your position is not consistent with the statement in Roger's FAQ. If a
state does not restrict an agent from preparing a patent related document,
then the agent can prepare that document. Roger says that possibly some
states do have such restrictions.
If I were writing the FAQ, I would say that probably most states some
restrictions, but that's a personal preference. Unless you believe that
all states have such restrictions, then your only quibble is with the
optimistic tone of Roger's statement rather than with the truth.
If a state defines the practice of law as representing clients in court,
then that state will have very few if any relevant restrictions. OTOH a
state that defines the practice of law as giving legal advice and/or
preparing documents that can affect the outcome of a court case, then
in that state a patent agent might be limited to what federal law carves
out.
Isaac
Roger Schlafly
can
> > > > > do anything they want, as long as it does not constitute UPL in
any
> > > > > state" is indeed false.
> > > > Nobody said that. You misread Alun's message.
> > > Get real, I misread nothing - it was a direct quote!
garbage
> on this subject, you might have an easier time finding Alun's original. It
> is no longer available on my server. Search the archives.
I searched the archives. Alun did not say the quote. You own Alun
an apology. Please do not misquote people.
Roger Schlafly
> My position is clear, just as I stated it. Only the federal law can place
> restrictions on the scope of a patent agent's license. Reading Sperry
should
> have made that clear. Do you disagree? But preparing contracts for others
> under state law does not constitute practicing patent law before the
USPTO,
> so the states are free to regulate and restrict that activity. Apparently
I guess you have some sort of opinion on what "practicing patent law
before the USPTO" means. Which of these are included?
preparing an opinion that an invention is not patentable.
preparing an assignment by selecting a standard form and filling
in the blanks.
recording a license agreement with the USPTO.
drafting an assignment for the express of facillitating filing a patent
application with the USPTO.
preparing an opinion advising a client about the scope of what
his patent will be (if the pending claims issue).
Some of these result in a PTO filing, and some don't. Then tell me
the basis for your distinctions.
> But the states can and
> do legally restrict patent agents from doing things that do not fall
within
> the scope of that federal license, such as, for example, the preparation
of
> contracts and representing clients before the courts.
Which state does that? Show me the cites.
Tracy Aquilla
news:slrnbiidl...@latveria.castledoom.org...
> On Thu, 31 Jul 2003 10:25:24 -0400, Tracy Aquilla <aqu...@bpmlegal.com>
wrote:
> > "Roger Schlafly" <rog...@mindspring.com> wrote in message
> >> So you say that it depends on state UPL laws.
> >
> > Preparing contracts under state law for others does not constitute
> > practicing patent law before the USPTO.
> >
> > Separately, you say:
> >>
> >> > > Q. Are there any restrictions on patent agents preparing
> >> > > patent-related legal documents?
> >> > > Possibly, in some states.
> >> > Wrong - see Sperry. If there is any restriction on a patent agent's
> >> practice
> >> > before the USPTO, then it must be based on federal law, as the
federal
> > law
> >> > preempts all state laws in regard to the practice of patent agents.
> >
> > All true. Sperry held that the federal law preempts the states from
> > restricting patent agent's practice _before the USPTO_. Preparing
contracts
> > for others under state law does not constitute practicing patent law
_before
> > the USPTO_, so the states are free to regulate that activity.
>
> Your position is not consistent with the statement in Roger's FAQ.
My position does indeed contradict Roger's FAQ.
> If a
> state does not restrict an agent from preparing a patent related document,
> then the agent can prepare that document.
My position is this: I agree with the US Supreme Court that states cannot
legally restrict a patent agent from preparing any document that falls
within the scope of the patent agent's federal license. Period.
> Roger says that possibly some states do have such restrictions.
OK, but the US Supreme Court in Sperry held that is not legal for the states
to do that.
> If I were writing the FAQ, I would say that probably most states some
> restrictions, but that's a personal preference. Unless you believe that
> all states have such restrictions, then your only quibble is with the
> optimistic tone of Roger's statement rather than with the truth.
No, see above and previous posts to this thread.
Isaac
> "Isaac" <is...@latveria.castledoom.org> wrote in message
> news:slrnbiidl...@latveria.castledoom.org...
>
> legally restrict a patent agent from preparing any document that falls
> within the scope of the patent agent's federal license. Period.
>
>> Roger says that possibly some states do have such restrictions.
>
> OK, but the US Supreme Court in Sperry held that is not legal for the states
> to do that.
I think we are talking past each other. The Court didn't say that the states
cannot restrict patent agents from preparing patent related documents, if
such documents include assignments or infringement opinions. Patent related
documents might even include complex licensing arrangments of patent
rights. Those things were really not mentioned in the opinion.
Roger said that some states might restrict patent agents from preparing
such documents. You said that his statement to that effect in his
FAQ was wrong. Well it isn't wrong. Preparing at least some of the
patent related documents I listed above is probably UPL in most states.
>> If I were writing the FAQ, I would say that probably most states some
>> restrictions, but that's a personal preference. Unless you believe that
>> all states have such restrictions, then your only quibble is with the
>> optimistic tone of Roger's statement rather than with the truth.
>
> No, see above and previous posts to this thread.
I've read them and none of them seem to match the statements you make
in this post.
Isaac
Roger Schlafly
> > My position is this: I agree with the US Supreme Court that states
cannot
> > legally restrict a patent agent from preparing any document that falls
> > within the scope of the patent agent's federal license. Period.
> >> Roger says that possibly some states do have such restrictions.
> such documents. You said that his statement to that effect in his
> FAQ was wrong. Well it isn't wrong. Preparing at least some of the
> patent related documents I listed above is probably UPL in most states.
I cannot make any sense out of Tracy's position. He seems to be
taking a narrow interpretation of the federal license, and saying
that agents can do anything within the license, and nothing else.
The trouble is that I cannot figure out just what his interpretation
of the federal license is, or what his basis for limits on agents is.
Ernest Schaal
rog...@mindspring.com wrote on 8/1/03 3:53 AM:
> "Tracy Aquilla" <aqu...@bpmlegal.com> wrote
>> But the states can and do legally restrict patent agents from doing things
>> that do not fall within the scope of that federal license, such as, for
>> example, the preparation of contracts and representing clients before the
>> courts.
>>
> Which state does that? Show me the cites.
Those cites have been shown to Roger in the past. In fact, I remember citing
the CA UPL law, quoting the pertinent part.
It sounds like what Roger is asking for is a cite to a law specifically
mentioning patent agents and patent assignments. If that is what he is
asking for, his request is unreasonable, since the law isn't drafted that
way. Instead, the UPL laws are drafted broadly, defining UPL generally.
The situation of patent agents is best defined by looking at the UPL law,
looking at Sperry v. Florida, and looking at 35 U.S.C. and 37 C.F.R. defines
as requirements for practice before it. Clearly they are permitted to draft
patent applications and file responses to office actions. They are also
clearly permitted to try to provoke an interference, to seek reexamination
or reissue, and to RECORD assignments. There is some dicta in Sperry v.
Florida that they should be permitted to draft patentability opinions for
new inventions.
Roger has argued that infringement and validity opinions would be also
covered, as well as drafting contracts, incorporation papers, joint-venture
agreements, non-disclosure agreements; and giving opinions on validity of
other people's patents, infringement opinions, and even opinions as to the
requirements of environmental law regulations. His rationale seems to be
that his license from the US PTO covers all that because it is necessary for
him to make a profit as a patent agent and because it relates to his patent
client's needs. His arguments have left me unimpressed.
I have no faith that Roger will ever admit that he has been shown the cites
or that the UPL laws apply to him.
Ernest Schaal
is...@latveria.castledoom.org wrote on 8/1/03 12:33 AM:
> On Thu, 31 Jul 2003 10:25:24 -0400, Tracy Aquilla <aqu...@bpmlegal.com>
> wrote:
>> "Roger Schlafly" <rog...@mindspring.com> wrote in message
>>> So you say that it depends on state UPL laws.
>>
>> Preparing contracts under state law for others does not constitute
>> practicing patent law before the USPTO.
>>
>> Separately, you say:
>>>
>>>>> Q. Are there any restrictions on patent agents preparing
>>>>> patent-related legal documents?
>>>>> Possibly, in some states.
>>>> Wrong - see Sperry. If there is any restriction on a patent agent's
>>> practice
>>>> before the USPTO, then it must be based on federal law, as the federal
>> law
>>>> preempts all state laws in regard to the practice of patent agents.
>>
>> All true. Sperry held that the federal law preempts the states from
>> restricting patent agent's practice _before the USPTO_. Preparing contracts
>> for others under state law does not constitute practicing patent law _before
>> the USPTO_, so the states are free to regulate that activity.
>
> Your position is not consistent with the statement in Roger's FAQ. If a
> state does not restrict an agent from preparing a patent related document,
> then the agent can prepare that document. Roger says that possibly some
> states do have such restrictions.
Issac, I hope you don't fall into the faulty logic of expecting the UPL laws
to set out a laundry list that specifically defines each type of activity
that is included and each type of activity that is not included. The law
does not work that way. Instead, UPL laws usually defined broadly, rather
than try to list every possible form of UPL.
An analogy is the traffic laws to reckless driving. Those laws don't list
each and every type of reckless driving (e.g., driving at over 100 mph in a
school playground while blindfolded).
> If I were writing the FAQ, I would say that probably most states some
> restrictions, but that's a personal preference. Unless you believe that
> all states have such restrictions, then your only quibble is with the
> optimistic tone of Roger's statement rather than with the truth.
The vast majority of them do, including where Roger lives. The omission in
the FAQ does a definite disservice to those relying on the FAQ. In that
regard, the FAQ is as misleading as those FAQs that suggest one doesn't have
to pay taxes if one doesn't use zip codes.
> If a state defines the practice of law as representing clients in court,
> then that state will have very few if any relevant restrictions. OTOH a
> state that defines the practice of law as giving legal advice and/or
> preparing documents that can affect the outcome of a court case, then
> in that state a patent agent might be limited to what federal law carves
> out.
The vast majority of the states do not define the practice of law so
narrowly as merely representing clients in court and/or preparing documents
that can affect the outcome of a court case. The statement that "in that
state a patent agent might be limited to what federal law carves out" is an
understatement, like saying that "driving with an alcohol content of 20% in
your blood MIGHT be considered to be driving while intoxicated."
Patent agents ARE restricted by state UPL laws. The question is how much of
an exception the US patent laws gives to that restrictions. Clearly, some
activities by patent agents are protected, but clearly not all activities.
Roger Schlafly
> >> But the states can and do legally restrict patent agents from doing
things
> Those cites have been shown to Roger in the past. In fact, I remember
citing
> the CA UPL law, quoting the pertinent part.
Yes, you quoted the Calif statute that simply says that the
unauthorized practice of law is a misdemeanor. It doesn't help
your case any, because patent agents are authorized to practice
law.
> It sounds like what Roger is asking for is a cite to a law specifically
> mentioning patent agents and patent assignments. If that is what he is
> asking for, his request is unreasonable, since the law isn't drafted that
> way. Instead, the UPL laws are drafted broadly, defining UPL generally.
You could cite a statute, a court case, or anything of some authority.
You might even cite the Calif Bar Assn, but it even refuses to take
your side.
You are like someone who argues that a real estate agent cannot legally
estimate the value of a house, because that is the job of an appraiser.
It might seem like a reasonable division of labor to you, but unless
you can find some law or authority to back you up, your opinion is
meaningless.
Isaac
On Sat, 02 Aug 2003 09:11:54 +0900, Ernest Schaal <esc...@max.hi-ho.ne.jp>
wrote:
> in article slrnbiidl...@latveria.castledoom.org, Isaac at
> is...@latveria.castledoom.org wrote on 8/1/03 12:33 AM:
>
> Issac, I hope you don't fall into the faulty logic of expecting the UPL laws
> to set out a laundry list that specifically defines each type of activity
> that is included and each type of activity that is not included.
I think I have consistently argued exactly the opposite. I don't think I've
said anything here that suggests otherwise. I've stated that generally
speaking UPL laws are written broadly enough so that a patent agent practicing
law outside the scope of his federal license is likely violating his state's
UPL laws.
But apparently not every state defines UPL so broadly.
> The vast majority of the states do not define the practice of law so
> narrowly as merely representing clients in court and/or preparing documents
> that can affect the outcome of a court case. The statement that "in that
> state a patent agent might be limited to what federal law carves out" is an
> understatement, like saying that "driving with an alcohol content of 20% in
> your blood MIGHT be considered to be driving while intoxicated."
I think it would be more like saying driving with an blood alcohol level
of .08 might be considered driving while intoxicated in your state. I
don't know if every state has set their levels at that point, but I'm
sure a large number of them have levels at set at that point or
lower. But perhaps there are still a few states with a 0.10 level.
Not every state has as the broad a UPL definition you describe. Here is
what Utah's definition of practicing law reads as best as I can tell:
(1) The term "practice law" means appearing as an advocate in any
criminal proceeding or before any court of record in this state in
a representative capacity on behalf of another person.
It would appear to me that a patent agent or anyone else residing in Utah
can write an infringement opinion or draft a licensing agreement without
violationg UPL in Utah because neither activity would be the practice of
law. Is Utah the only state where that would be the case? I don't know.
> Patent agents ARE restricted by state UPL laws. The question is how much of
> an exception the US patent laws gives to that restrictions. Clearly, some
> activities by patent agents are protected, but clearly not all activities.
Saying all when you mean greater than 90 percent is less likely to mislead
than saying maybe in the same situation, but using all is still inaccurate.
"Maybe" would be literally correct but also misleading. I wouldn't use
"maybe" or "all" if I were writing Roger's FAQ.
Isaac
Ernest Schaal
rog...@mindspring.com wrote on 8/2/03 9:23 AM:
> "Ernest Schaal" <esc...@max.hi-ho.ne.jp> wrote
>>>> But the states can and do legally restrict patent agents from doing things
>>> Which state does that? Show me the cites.
>> Those cites have been shown to Roger in the past. In fact, I remember citing
>> the CA UPL law, quoting the pertinent part.
>
> Yes, you quoted the Calif statute that simply says that the
> unauthorized practice of law is a misdemeanor. It doesn't help
> your case any, because patent agents are authorized to practice
> law.
Patent agents are authorized to practice law only to the extent the it is
directly associated with the practice before the US PTO. You know that, but
choose to ignore that, which I consider to be dishonesty on your part.
>
>> It sounds like what Roger is asking for is a cite to a law specifically
>> mentioning patent agents and patent assignments. If that is what he is
>> asking for, his request is unreasonable, since the law isn't drafted that
>> way. Instead, the UPL laws are drafted broadly, defining UPL generally.
>
> You could cite a statute, a court case, or anything of some authority.
> You might even cite the Calif Bar Assn, but it even refuses to take
> your side.
>
> You are like someone who argues that a real estate agent cannot legally
> estimate the value of a house, because that is the job of an appraiser.
> It might seem like a reasonable division of labor to you, but unless
> you can find some law or authority to back you up, your opinion is
> meaningless.
Your ignorance of the law is becoming legendary. The job of an appraiser
usually isn't the practice of law.
Ernest Schaal
is...@latveria.castledoom.org wrote on 8/2/03 12:43 PM:
>
>
> On Sat, 02 Aug 2003 09:11:54 +0900, Ernest Schaal <esc...@max.hi-ho.ne.jp>
> wrote:
>> in article slrnbiidl...@latveria.castledoom.org, Isaac at
>> is...@latveria.castledoom.org wrote on 8/1/03 12:33 AM:
>>
>> Issac, I hope you don't fall into the faulty logic of expecting the UPL laws
>> to set out a laundry list that specifically defines each type of activity
>> that is included and each type of activity that is not included.
>
> I think I have consistently argued exactly the opposite. I don't think I've
> said anything here that suggests otherwise. I've stated that generally
> speaking UPL laws are written broadly enough so that a patent agent practicing
> law outside the scope of his federal license is likely violating his state's
> UPL laws.
>
> But apparently not every state defines UPL so broadly.
Agreed, that there is a range of broadness in the definitions in UPL law,
but to my knowledge only Utah has a narrow definition.
>> The vast majority of the states do not define the practice of law so
>> narrowly as merely representing clients in court and/or preparing documents
>> that can affect the outcome of a court case. The statement that "in that
>> state a patent agent might be limited to what federal law carves out" is an
>> understatement, like saying that "driving with an alcohol content of 20% in
>> your blood MIGHT be considered to be driving while intoxicated."
>
> I think it would be more like saying driving with an blood alcohol level
> of .08 might be considered driving while intoxicated in your state. I
> don't know if every state has set their levels at that point, but I'm
> sure a large number of them have levels at set at that point or
> lower. But perhaps there are still a few states with a 0.10 level.
>
> Not every state has as the broad a UPL definition you describe. Here is
> what Utah's definition of practicing law reads as best as I can tell:
>
> (1) The term "practice law" means appearing as an advocate in any
> criminal proceeding or before any court of record in this state in
> a representative capacity on behalf of another person.
>
> It would appear to me that a patent agent or anyone else residing in Utah
> can write an infringement opinion or draft a licensing agreement without
> violationg UPL in Utah because neither activity would be the practice of
> law. Is Utah the only state where that would be the case? I don't know.
Utah is the only jurisdiction I know of that has so narrow a definition, and
they are under pressure to make their definition broader. My analogy to the
DWI is that 49 states have broad definitions, and Utah is the only one that
limits it to court proceedings. Therefore to say that UPL laws MAY apply is
a gross understatement, since they would in 95% of the cases.
>> Patent agents ARE restricted by state UPL laws. The question is how much of
>> an exception the US patent laws gives to that restrictions. Clearly, some
>> activities by patent agents are protected, but clearly not all activities.
> Saying all when you mean greater than 90 percent is less likely to mislead
> than saying maybe in the same situation, but using all is still inaccurate.
> "Maybe" would be literally correct but also misleading. I wouldn't use
> "maybe" or "all" if I were writing Roger's FAQ.
>
Even in Utah, patent agents are restricted as to court appearances. In the
other 49 states, plus DC, they are also restricted as to assignments,
infringement opinions, etc.
Isaac
wrote:
> in article slrnbimcq...@latveria.castledoom.org, Isaac at
> is...@latveria.castledoom.org wrote on 8/2/03 12:43 PM:
>
>> than saying maybe in the same situation, but using all is still inaccurate.
>> "Maybe" would be literally correct but also misleading. I wouldn't use
>> "maybe" or "all" if I were writing Roger's FAQ.
>>
> Even in Utah, patent agents are restricted as to court appearances. In the
> other 49 states, plus DC, they are also restricted as to assignments,
> infringement opinions, etc.
The statement in issue referred only to the preparation of patent related
documents. Elsewhere in the FAQ Roger acknowledged that you need to be a
lawyer to represent clients in court.
It looks like Utah's narrow UPL law will be a temporary thing that the state
legislature expects to reverse sometime next year. I'd like to know more
about why the legislature felt need to mess around with UPL in such
a way.
Isaac
Ernest Schaal
is...@latveria.castledoom.org wrote on 8/2/03 5:10 PM:
Assuming the statement in issue referred only to the preparation of patent
related documents, that is still different from documents required by the
Patent Office. For instance, an infringement opinion is related to patents,
so are documents creating joint-ventures, and so are non-disclosure
agreements. None of those three documents are required by the US PTO.
Reading Roger's FAQ, one would get the impression that he was in Utah, since
it is the only state that has the narrow definition of UPL that would make
his FAQ not completely inaccurate on that point, but in fact he is listed in
the US PTO as being in California, which does not have as narrow a
definition.
Isaac
wrote:
>
> related documents, that is still different from documents required by the
> Patent Office. For instance, an infringement opinion is related to patents,
> so are documents creating joint-ventures, and so are non-disclosure
> agreements. None of those three documents are required by the US PTO.
Of those examples, probably only the infringement opinion is so intimately
related to patents that it is unquestionably the subject of the statement in
Roger's FAQ. Without rehashing the old arguments, IMO there is reasonable
disagreement concerning whether patent agents are engaged in UPL if they
write an infringement opinion in California or any other state.
I understand that you disagree, but I ain't getting drawn back into that
discussion again.
> Reading Roger's FAQ, one would get the impression that he was in Utah, since
> it is the only state that has the narrow definition of UPL that would make
> his FAQ not completely inaccurate on that point, but in fact he is listed in
> the US PTO as being in California, which does not have as narrow a
> definition.
I agree that the FAQ is misleading, but IMO not fatally so. Saying that some
states have restrictions is enough to suggest the need to check out the law
in a given state. I'm under no illusion that I can draft a document creating
a joint-venture in North Carolina.
Isaac
Roger Schlafly
> Reading Roger's FAQ, one would get the impression that he was in Utah,
since
> it is the only state that has the narrow definition of UPL that would make
> his FAQ not completely inaccurate on that point, but in fact he is listed
in
> the US PTO as being in California, which does not have as narrow a
> definition.
And yet you are unable to convince the Calif Bar Assn to agree with
you. When you find any authority, anywhere, to agree with you, let
me know.
Ernest Schaal
rog...@mindspring.com wrote on 8/3/03 3:48 AM:
Your message is another example of why someone should be wary of using your
services as a patent agent.
First, you show your ignorance of civil procedures by expecting the
California Bar to drop everything and focus on my question. You wouldn't
expect the US PTO to respond to an application in that time period, but you
expect a panel of volunteers to decide quicker for free than the US PTO
responds for a fee?
Second, you continue to ignore the cites already given to you, and make wild
claims that your patent license gives you the right not only to prepare and
prosecute patent applications, but also incorporate businesses, draft
infringement opinions, draft assignments, draft joint-venture agreements,
and even draft opinions as to the meaning of environmental regulations. You
are clearly a danger to your clients, since you don't know your limitations.
Ernest Schaal
is...@latveria.castledoom.org wrote on 8/2/03 11:07 PM:
> On Sat, 02 Aug 2003 18:40:24 +0900, Ernest Schaal <esc...@max.hi-ho.ne.jp>
> wrote:
>>
>> Assuming the statement in issue referred only to the preparation of patent
>> related documents, that is still different from documents required by the
>> Patent Office. For instance, an infringement opinion is related to patents,
>> so are documents creating joint-ventures, and so are non-disclosure
>> agreements. None of those three documents are required by the US PTO.
>
> Of those examples, probably only the infringement opinion is so intimately
> related to patents that it is unquestionably the subject of the statement in
> Roger's FAQ. Without rehashing the old arguments, IMO there is reasonable
> disagreement concerning whether patent agents are engaged in UPL if they
> write an infringement opinion in California or any other state.
>
> I understand that you disagree, but I ain't getting drawn back into that
> discussion again.
I agree that we disagree as to infringement opinions, but I am heartened
that we agree on documents creating joint-ventures, and so are
non-disclosure agreements. Unfortunately for his clients, Roger is on record
as believing his US PTO license gives him the right to draft documents
creating joint-ventures and non-disclosure agreements. He even went so far
as to claim he has the right to draft opinions on employment contracts and
on environmental law.
>> Reading Roger's FAQ, one would get the impression that he was in Utah, since
>> it is the only state that has the narrow definition of UPL that would make
>> his FAQ not completely inaccurate on that point, but in fact he is listed in
>> the US PTO as being in California, which does not have as narrow a
>> definition.
>
> I agree that the FAQ is misleading, but IMO not fatally so. Saying that some
> states have restrictions is enough to suggest the need to check out the law
> in a given state. I'm under no illusion that I can draft a document creating
> a joint-venture in North Carolina.
Unfortunately for his clients, Roger is under the illusion that he can draft
a document creating a joint-venture in California. That is why he is a
danger to his clients.
Roger Schlafly
> > And yet you are unable to convince the Calif Bar Assn to agree with
> > you. When you find any authority, anywhere, to agree with you, let
> > me know.
> California Bar to drop everything and focus on my question. You wouldn't
> expect the US PTO to respond to an application in that time period, but
you
> expect a panel of volunteers to decide quicker for free than the US PTO
> responds for a fee?
That panel of volunteers consists of lawyers who would be more
sympathetic to your narrow UPL views that anyone. And yet they
refuse to side with you. Not just this time either, and not just in
California. Over the past 40 years, state bar assns in California
and other states have been asked to produce advisory opinions
limiting patent agents dozens of times, and they have refused every
single time.
Get over it. You are a Japanese paralegal. If law licensing is so
important to you, then get a license to practice law where you live.
Why don't you ask that Calif. Bar Assn if you can call yourself
a "U.S. Attorney"?