Patent Law

The USPTO has published its final rules implementing changes to its rules of discipline and professionalism that governing patent attorneys, patent agents and trademark attorneys.

Limits on Patent Agents: The most notable portion of the rules may be Section 11.5(b)(1), which defines exactly what PTO registration authorizes. This includes: "preparing and prosecuting any patent application, consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office, drafting the specification or claims of a patent application; drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to the Board of Patent Appeals and Interferences, or other proceeding." This also includes drafting patent assignments "if the practitioner is filing or prosecuting the patent application, and assignment does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party."

In a comment, the PTO makes clear that PTO registration does not authorize offering an "opinion of validity of another party's patent when the client is contemplating litigation and not seeking reexamination" because such activity "could not be reasonably necessary and incident to the preparation and prosecution" of a client's patent. Further, the PTO sees "no circumstance [where] practice before the Office [would] include the rendering of opinions on infringement."

Of course, these limits are directed to patent agents. When practicing within their state, patent attorneys have overlapping authority from state bar registration.

Notes:

• Effective Date, September 15, 2008
• Read the Rules
• These rules are a full revision of the disciplinary procedures. I have not yet read them all.