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Patent Law: The Patent Prospector
By Gary Odom and Jordan Kuhn
The USPTO has promulgated its final rule for CFR changes of authorized activities and sanctions for patent and trademark agents. The comments warn that being a patent agent does not cover activities, not necessary to prosecution, which would constitute practicing law.
The suggestion to define practice before the Office as rendering opinions on validity and infringement for clients has not been adopted. Whether a validity opinion involves practice before the Office depends on the circumstances in which the opinion is sought and furnished. For example, an opinion of the validity of another party's patent when the client is contemplating litigation and not seeking reexamination of the other party's patent could not be reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the Office involving a patent application or patent. In such situations, the opinion may constitute unauthorized practice of law. See Mahoning Cty. Bar Assn. v. Harpman, 608 N.E.2d 872 (Ohio Bd.Unauth.Prac. 1993). Similarly, a validity opinion for the sale or purchase of the patent is neither the preparation nor the prosecution of a patent application. Likewise, the opinion is not a proceeding before the Office involving a patent application or patent. Registration to practice before the Office in patent cases does not authorize a person to provide a validity opinion that is not reasonably necessary and incident to representing parties before the Office.
To preserve flexibility, the PTO wants a fuzzy line as to what is permissible under the aegis of being a patent agent.
The Office will not attempt by rule to define exactly what constitutes practice of patent law that is subject to the Office's jurisdiction. The scope of activities involved in practice of patent law before the Office is not necessarily finite, and is subject to change as the patent statute changes and rules are promulgated to the implement statutory changes. Instead, § 11.5(b)(1) is written to provide that registration to practice before the Office in patent cases sanctions the performance of those services which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the Office involving a patent application or patent in which the practitioner is authorized to participate. The services are identified as including considering the advisability of relying upon alternative forms of protection which may be available under statute law, and drafting an assignment or causing an assignment to be executed for the patent owner in contemplation of filing or prosecution of a patent application for the patent owner, or the practitioner represents the patent owner after a patent issues in a proceeding before the Office, and in drafting the assignment the practitioner does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party.
Patent agents are authorized only to effect patent assignments within the confines appropriate to prosecution. Ownership issues and post-issuance transfer agreements may be tricky, and agents are not trained for such.
The filing of an assignment, while not legally required for prosecution, is no doubt "reasonably necessary and incident to" prosecution of a patent application. This is true to enable an assignee of record of the entire interest to control prosecution of the application to the exclusion of the assignor. See 37 CFR 1.33(b)(4) and 3.71.
Preparing an assignment or causing an assignment to be executed is appropriate only when they are reasonably necessary and incidental to the preparation and prosecution of a patent application, or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate.
Contrary to several comments, the Office has not taken the position that a registered patent agent could prepare a patent assignment or license for a patent if not prohibited by state law. The Office's long-standing position has been that ''[p]atent agents * * * cannot * * * perform various services which the local jurisdiction considers as practicing law.
Inasmuch as numerous situations involving assignments arise, the Office is not attempting by rule to explicitly identify all circumstances when a registered practitioner may prepare or cause an assignment to be signed. Instead, the provisions of § 11.5(b)(1) are written to broadly outline the circumstances when a practitioner may prepare an assignment for patent applicants and patentees by virtue of the practitioner's registration.
Section 11.5(b)(1) provides circumstances in which a registered practitioner may prepare an assignment or cause an assignment to be executed. The assignment must be reasonably necessary and incidental to filing and prosecuting a patent application for the patent owner or the practitioner represents the patent owner after the patent issues in a proceeding before the Office. In drafting the assignment the practitioner must not do 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. Thus, where a previously existing written employment agreement between an inventor and the employing corporation contains one or more clauses obligating an inventor to assign to the company inventions made in the course of employment, a practitioner may draft an assignment wherein the provisions replicate those of the employment agreement.
A practitioner, by virtue of being registered, may prepare an assignment or cause it to be signed in the foregoing circumstances if in drafting the assignment the practitioner does no more than replicate the terms of a previously existing oral or written obligation of assignment from one person or party to another person or party. Registration does not authorize a registered practitioner to recommend or determine the terms to be included in an assignment. The practitioner is not authorized to select or recommend a particular form assignment from among standard form assignments. Registration does not authorize a practitioner to draft an assignment or other document in circumstances that do not contemplate a proceeding before the Office involving a patent application or patent. For example, where an assignment is prepared in contemplation of selling a patent or in contemplation of litigation, there is no proceeding before the Office. When, after a patent issues, there is no proceeding before the Office in which the patent agent may represent the patent owner, drafting an assignment or causing the assignment to be signed are not activities reasonably necessary and incidental to representing a patent owner before the Office.
There is no statute or rule requiring training in contract law as a condition to be registered as a patent agent... Absent adequate training, a person drafting an assignment could overlook issues for which lawyers have received training. For example, in addition to preparing an assignment form, it may be necessary to advise whether the inventor is obligated to assign the invention, and if so, to whom. It may be necessary to resolve ownership questions, for example, to file a terminal disclaimer where there is no previously existing employment agreement or where an employment agreement contains no obligation to assign patent rights. In some situations, assignments lead to serious complexities, which can impact title and prevent patent enforcement. Patent agents are not empowered by their registration to provide advice about title and enforcement of patents. Accordingly, it is appropriate to set forth authority of practitioners to prepare an assignment or cause an assignment to be executed by virtue of their registration.
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