PTO Revises Rules of Ethics and Professionalism

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.

69 thoughts on “PTO Revises Rules of Ethics and Professionalism

  1. “The English rule is: what comes after and infringes, if coming before takes away novelty. Nice and simple. What’s wrong with that?”

    Nothing. That’s the U.S. rule, too.

    This thread has repeatedly gone off the rails. The PTO’s regulations are about the limits of their power to grant the authority to practice law. Again, this is about authorization, not about competence. If you want to be able to render infringement opinions in your state, complain to your state legislature, not here.

    BTW, the PTO never said that agents can’t HAVE opinions about infringment, and didn’t say that those opinions couldn’t be used in the preparation and prosecution of patent applications. They merely said that PTO registration doesn’t authorize you to offer opinions to clients contemplating litigation. You’re not being dissed. At least not by the PTO.

  2. The English rule is: what comes after and infringes, if coming before takes away novelty. Nice and simple. What’s wrong with that? So anybody in England who can grasp novelty can do infringement. Mind you, England doesn’t do Doctrine of Equivalents. Get rid of DoE, and Bingo, agents can opine.

  3. “I think that agents must necessarily be permitted to render opinions on infringement whenever it is incident to preparation of claims.”

    Why? Because it’s inconvenient for the client who opted for a lower-cost alternative? Because it’s bad for business for the patent agents?

    The patent office isn’t in the business of handling infringement issues and neither should patent agents. To the extent that clients need legal advice relating to infringement, they should be willing to retain, and pay for, an attorney.

  4. Clearly the patent attorney and patent agent will both be faced with deciding whether a divisional or continuation application is needed to cover a competitor’s product introduced after filing. In this context, it is necessary to determine if the current (perhaps issued) claims cover the competitor’s product, and if not, whether claims drafted for a continuation will cover the competitor’s product. This undoubtedly requires an infringement analysis. So, the PTO position “circumstance [where] practice before the Office [would] include the rendering of opinions on infringement” is just plain wrong.
    I think that agents must necessarily be permitted to render opinions on infringement whenever it is incident to preparation of claims. The problem for those like PATENT.DRAFTER is that infringement determinations require his technical expertise and an equal amount of training and experience in case law interpretation and legal research. Patent agents are granted a license without any requirement that they show any ability to interpret any case law whatsoever. Given that infringement analysis and validity analysis often turn on legal issues of claim interpretation, estoppel, prior case law determinations regarding particular terminology, and perhaps even res judicata and its distinction from issue preclusion, is has always appeared to me that legal training is necessary to infringement analysis, and a certification of legal training is necessary to client protection. Nonetheless, if the PTO is going to permit patent agents to practice, and patent agents will on occasion have to make infringement determinations, patent agents appear entitled to do so. The fact that PATENT.DRAFTER asserts there is no benefit to law school and legal training in rendering infringement opinions is a great example of the conundrum: his lack of awareness of the need for legal education and training in one professing to be competent to render infringement opinions is a good sign that he does not know what is needed, and is exactly why licensing is needed to protect clients, but here the licensing is given regardless of legal education and training.

    For JUST VISITING and LEOPOLD BLOOM and LONG TIME LISTENER, attorneys without technical degrees or training are not competent to draft patent infringement opinions, but that just falls into the unavoidable gap that exists when any attorney goes outside of his area of expertise: some lack of expertise can be overcome and we leave that to individual lawyers to decide (under ethics rules that govern this situation), but they are more competent to decide the issues than those without any legal training. One would hope so, any way. Most guys and gals who replace their own brakes could handle the technology of many patents (even if they have degrees in art history), and many attorneys come up to speed on various technologies to handle tort cases. Do we have any examples of glaring mistakes reported in the case law?

  5. Even though secretaries may sometimes get an assignment ready for filing, the burden of responsibility (and liability) with respect to the terms of the assigment ultimately falls on the lawyer. An agent is not trained as to the content and meaning of the terms of an assignment. From my own dealings with agents, I recognize most do not appreciate the nuances in the language of assignment as well as lawyers do. There is no one-size-fits-all for assigments. For an agent to simply attach an existing previously prepared assignment as part of a patent application filing is nothing more than what a secretary does. But for an agent to actually modify the terms of an assignment, or to select which of many form assigments are suitable for a client, constitutes the unauthorized practice of law. Agents should beware in such cases, for under these new rules their preparation or selection of assignments may jeopardize their registration number or even get them in trouble with the local bar association.

  6. rather the question boils down to whose licenses (patent agent and/or attorney) allow them to do which tasks for their clients

  7. The question whether patent attorneys are better equipped to render a certain opinion than patent agents boils down to competencies of the professionals. A patent agent may not draft a patent application and /or prosecute it without giving a thought about a future possibility of litigation similarly a patent attorney or patent litigator need to be fully aware of patent drafting, prosecuting etc. Most often then not people tend to specicialise in a field in which they are comfortable with.

  8. “If the claims I’ve drafted are allowed by the USPTO, you can sue the manufacturer of product X for infringement.”

    Sounds like you have rendered an opinion

  9. The drafting of claims that read upon the client’s invention, and that read upon (or do not read upon) a competing product, is the most essential part of a patent agent’s job. Surely the agent can safely tell the client, “If the claims I’ve drafted are allowed by the USPTO, you can sue the manufacturer of product X for infringement.”
    If the client presses for an opinion, the answer has to be, “I’ve done my best to put you in a strong position. Whether or not you’ll win depends on a lot of factors, many of which are unrelated to the work I’ve done, and it may depend on facts that neither one of us even knows about. You’ll have to consult a patent attorney if you want an evaluation of your chances.”

  10. They file a couple of trademark applications, advise a client on trade secret issue and all of a sudden they are “IP attorneys”

  11. Permitting general lawyers to opine regarding patent validity, infringement, etc. is nuts. Those of us who are not only members of state bars but also registered patent attorneys have permitted general practioners to mislead clients into thinking they are “IP” savvy and can “handle” the clients’ patent matters.

    The generalists care only about client retention, not competence.

    Too bad we gave up the APLA and got suckered into the AIPLA.

  12. “Are non-patent attorneys (e.g. patent litigators) ethically permitted to write opinions or perform an infrignement analysis?”

    Provided that they are competent to do so, nothing prevents them from doing just that. One of the reasons someone might not do so in a litigation context is that the practice of relying on non-patent attorney opinions was trashed in some of the old case law (like Underwater Devices).

  13. “Yet the key pretext for licensing professionals (medical, legal, financial, or technical) is that licensure guarantees the public a minimal standard of competence.”

    Maybe. In fact, the key reality of licensing is that it gives a regulatory entity (USPTO, state bar) a means to regulate conduct in the profession. Here the PTO is simply saying that it doesn’t regulate professional conduct outside the domain of patent prosecution (and it can’t, as a matter of law). So, outside their domain, you’re subject to state regulation, which says you can’t practice law without a license. It really has nothing to do with your competence.

  14. “My question centers around the phrase ‘patent attorney’ above, which implies both state bar and USPTO registration. Are non-patent attorneys (e.g. patent litigators) ethically permitted to write opinions or perform an infrignement analysis?”

    If they are actually competent to do so, which is not presumed from the mere possession of a state bar license. Model Rules of Professional Conduct Rule 1.1, right up front, says “A lawyer shall provide competent representation to a client. Competent representation requires the legal knowledge, skill, thoroughness and preparation reasonably necessary for the representation.” The flip side of this is possession of USPTO registration by an attorney does not necessarily mean that he can ethically provide infringement/invalidity opinions either.

  15. patent.drafter,

    “My point, as set forth in detail above, is that *competence* in rendering an opinion of validity or infringement has little (if any) correlation to membership in a state bar – and absolutely *no* causative relationship.”

    It is not an issue of competence. It is an issue of license and the scope thereof.

    “Thanks for clarifying that distinction, though. If you find the time, could you further explain how the distinction between invalidity and unenforceability practically affects the patentee’s interest in litigation?”

    As far as litigation, the effect is the same: the court will not enforce the patent.

    JAOI and I discussed this last week:

    link to patentlyo.com

    There is a theoretical distinction. Here’s an example of how an valid, unenforceable could be used: marketing. The owner of the patent could market the patent as part of his intellectual property suite. I don’t see anything wrong with this because, in my opinion, to tout one’s patent (with inference that our company has the brains) does not represent or misrepresent the patent as enforceable (but you nevertheless possess a hollow patent right). On the other hand, to tout an invalid patent as part of the owner’s intellectual property suite would be fraud as a misrepresentation because an invalid patent is not a valid patent (you no longer possess a right).

    Please note that the distinction is a theoretical (possession of possession of patent rights v. loss of patent rights), but the distinction shows the difference between IC and invalidity. Either way, you can’t go a court to enforce.

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

    My question centers around the phrase “patent attorney” above, which implies both state bar and USPTO registration. Are non-patent attorneys (e.g. patent litigators) ethically permitted to write opinions or perform an infrignement analysis?

    I think clients would probably prefer USPTO registration for these, but is state bar registration all that is required?

    Thanks for thoughts,

  17. “No, you’re deemed unlicensed to render advice on those same issues, in contexts outside practice before the PTO.”

    Yet the key pretext for licensing professionals (medical, legal, financial, or technical) is that licensure guarantees the public a minimal standard of competence.

    My point, as set forth in detail above, is that *competence* in rendering an opinion of validity or infringement has little (if any) correlation to membership in a state bar – and absolutely *no* causative relationship.

  18. “Actually it renders the patent unenforceable, not invalid.”

    Good thing I proofread my claims more closely than my blog comments. :)

    Thanks for clarifying that distinction, though. If you find the time, could you further explain how the distinction between invalidity and unenforceability practically affects the patentee’s interest in litigation?

  19. “So, in order to adequately serve my clients as a patent agent, I must have sufficent insight and foresight to avoid impugning their future interests in potential litigation. Yet, I’m deemed incompetent to render advice on those same issues?”

    No, you’re deemed unlicensed to render advice on those same issues, in contexts outside practice before the PTO.

    “… while i.c. is an invalidity defense”

    Actually it renders the patent unenforceable, not invalid.

  20. One further comment – actually, a rhetorical question.

    How many of the patent _attorneys_ posting here have drawn upon their law school knowledge (or even their state bar review course) to aid them in construing

    * a claim to a method for semiconductor lithography;
    * a claim to a jet turbine blade profile; or
    * a claim to a pharmaceutical compound family?

    Can you identify the specific legal coursework that made you knowledgeable regarding the key technical terms in those claims? Who was your professor? How’d you do on the exam? Was it essay or multiple choice? Was the reading demanding? Did your bar review instructor spend a lot of time on bathocuprine, high-tungsten carbons steel, or aryl-group compounds?

    The pretense that legal *schooling* or a state bar license (as opposed to conscientious and ongoing independent study of relevant cases and technical documents) promotes any sort of competence in patent practice – frankly, it’s farcical.

  21. I realize that only p.h.e. plays into claim construction at the Markman hearing, while i.c. is an invalidity defense.

    Still – it’s presumed, based on my registration, that I’m competent to draft and prosecute patent claims that cover my clients’ inventions. Most of my clients presumably want to patent their inventions because they envision commercial embodiments thereof (whether made by themselves, or by some licensee). Thus, in a business sense, I am also presumed competent to draft claims that cover the inventive aspects of my clients’ desired commercial embodiments.

    If I’m not considered competent to opine on the potential for infringement of a claim (that I drafted) by a product (that my client wants to make, license, or enjoin), then how could I be competent to draft the claim in the first place?

  22. “[T]here are a lot if issues that would go into an infringement lawsuit. I can’t advise you on those particular issues.”

    Yet – two of the most common and significant classes of litigation issues arise from actions taken (or not) during prosecution. Namely, allegations of inequitable conduct or prosecution history estoppel.

    So, in order to adequately serve my clients as a patent agent, I must have sufficent insight and foresight to avoid impugning their future interests in potential litigation. Yet, I’m deemed incompetent to render advice on those same issues?

    I smell a logical inconsistency that tends to undermine the role of patent agents in the patenting process.

  23. “That’s not quite what you said before, Malcolm.”

    My professional legal opinion is that my previous comments are adequately consistent. ;)

  24. John prosecutor,

    I like Leopold Bloom’s response above:

    “[T]here are a lot if issues that would go into an infringement lawsuit. I can’t advise you on those particular issues.”

  25. Client to patent agent: “Does my competitor’s new XYZ product infringe any of the claims pending in the patent application which you prepared and filed for me a few years ago?”

    Is the patent agent allowed to answer that question?

  26. That’s not quite what you said before, Malcolm. I believe it was “Here’s my solution: eliminate the patent agent paradigm altogether. You want to prosecute patents and/or opine on them, in the context of an ever-changing highly complex set of rules and laws? Then get a law degree. Frankly it’s ridiculous that a non-lawyer should be able to charge a client for advice on any matter related to patents”.

    Having seriously p*ss*d at least two of us off, it seems you think it might be alright for us to prosecute applications after all. OTOH, our advice is still apparently worthless, quite literally.

    I’ve never seen this subject discussed on the Internet without it leading to a “flame war”. Not surprising, given the lack of training of patent agents, which I freely admit, versus the irrelevance of the training of most attorneys to the subject at hand.

  27. Malcolm Mooney,

    “But they aren’t attorneys, which begs the question as to why they should be allowed to charge for legal advice. That’s all.”

    Agents may not be attorneys, but the unanimous Supreme Court in Sperry did not dispute that patent agent Sperry was practicing law. Chief Justice Warren stated:

    “We do not question the determination that, under Florida law, the preparation and prosecution of patent applications for others constitutes the practice of law. Greenough v. Tax Assessors, 331 U. S. 486; @ 87 U. S. 171. And, upon rejection of the application, the practitioner may also assist in the preparation of amendments, 37 CFR §§ 1.117-1.126, which frequently requires written argument to establish the patentability of the claimed invention under the applicable rules of law and in light of the prior art. 37 CFR § 1.119. Nor do we doubt that Florida has a substantial interest in regulating the practice of law within the State, and that, in the absence of federal legislation, it could validly prohibit nonlawyers from engaging in this circumscribed form of patent practice. [Footnote 2]”

    See link to supreme.justia.com

    In my opinion, a practitioner in the practice of law — like a patent agent practicing law before the PTO — should allowed to charge for legal advice and services provided to the inventor.

  28. “Client: So, if the claim is okayed by the PTO, there [sic] [existing?] product would infringe the claim and I could sue for infringement?”

    Me: Did you learn about their product before, or after, you asked me to draft this application?

  29. “I could post some generalized bs about lawyers like you’ve done about agents”

    Lighten up and read my comment. Patent agents aren’t going anywhere and as I noted implicitly above and explicitly elsewhere on this blog, they are at least as skilled as most attorneys.

    But they aren’t attorneys, which begs the question as to why they should be allowed to charge for legal advice. That’s all.

    I’d be equally happy with a paradigm in which one could become a bona fide patent attorney with one year of legal schooling. Trust me: it doesn’t take three years to figure this stuff out, especially when torts, criminal law, and community property are completely irrelevant to the practice.

  30. “By the way, I’d like to apologize for my earlier comment (now deleted) about Mr. Albritton. It was inappropriate and inaccurate (albeit not physically impossible).”

    MM, there are those like myself who make their living as agents. I could post some generalized bs about lawyers like you’ve done about agents, but I won’t because most of them are okay by me.

  31. Here’s my solution: eliminate the patent agent paradigm altogether. You want to prosecute patents and/or opine on them, in the context of an ever-changing highly complex set of rules and laws? Then get a law degree. Frankly it’s ridiculous that a non-lawyer should be able to charge a client for advice on any matter related to patents.

    It wouldn’t be patent agents who complain the most about such a change. It would be the partners in law firms who presently leverage patent agents like there’s no tomorrow.

    By the way, I’d like to apologize for my earlier comment (now deleted) about Mr. Albritton. It was inappropriate and inaccurate (albeit not physically impossible).

  32. “It seems to me that the only proper thing to do when drafting those new claims is to consider what might happen during litigation.”

    Of course, but this is not “contemplating litigation” in the sense meant by the PTO. Note that the PTO expressly approves “giving advice to a client in contemplation of filing a patent application or other document with the Office.” This doesn’t magically just go away because you address the possibility of litigation.

    “Is the PTO really saying that the agent can write the claims, but that the agent cannot reasonably explain his work to the client.”

    NO. Agents can talk (to their clients) all they like about the law as it pertains to the scope, validity, and patentability of the claims they draft. Just be accurate.

    The PTO is not trying to set any traps. They’re just affirming that their license only covers prosecution (and re-exam) related activities.

  33. “Overall, as long as the agent’s activities are somehow connected to activities in front of the PTO, the agent should be free to opine without the risk of UPL and a malpractice claim. If his opinion is connected to litigation, however, agent beware or cautious to the reliance that your opinion will induce with your client.”

    I agree but the PTO drawing a more conservative line.

    “I don’t see anything wrong with adding new claims in an attempt to cover another’s product if that’s all you’re doing. If a client wants more claims, why not?”

    The issue here is that the client reasonably expects those claims to be drafted properly, and might very well ask the agent how he came up with those new claims. Then the question arises as to what an agent can properly say when questioned by the client.

    It seems to me that the only proper thing to do when drafting those new claims is to consider what might happen during litigation. Is the PTO really saying that the agent can write the claims, but that the agent cannot reasonably explain his work to the client.

    Lawyer’s cannot blow these questions off either. Some states regarding counseling clients in their state as practicing law in that state.

  34. “But at the same time, an attorney does possess a license to provide a legal opinion to the client of any legal topic including infringement and invalidity, right?”

    Yes, but not by virtue of the PTO registration. Rather, the attorney’s privilege to provide legal advice outside the context of representation before the PTO comes from their state bar license. That’s the significance of Dennis’ original comment: “When practicing WITHIN THEIR STATE, patent attorneys have overlapping authority from state bar registration.” Except that I disagree, slightly. I don’t think it’s actually overlapping, because practice before the PTO is exclusively governed by the PTO rules. The state bar registration gives the attorney authority to render non-prosecution advice, but only within that state and under that state’s rules. This is a subtlety that I bet has been missed by many practitioners.

  35. “Oh, and by the way, there are a lot if issues that would go into an infringement lawsuit. I can’t advise you on those particular issues.”

    Most prosecution attorneys, being honest with themselves, should offer the same advice. We’ve carved out two little fiefdoms in which neither lord is well equipped to work in the other.

  36. Leopold Bloom,

    “For example, neither agents NOR attorneys are licensed by the PTO to provide invalidity opinions or infringement opinions outside of PTO prosecution and re-examination contexts.”

    Agreed. But at the same time, an attorney does possess a license to provide a legal opinion to the client of any legal topic including infringement and invalidity, right? And it would be up to the judgement of the attorney to deem himself or herself competent to render such opinion, right?

    “You: I’ve drafted the claims in such a way that they should read on the target product. You’re the inventor, and you’re about to sign off on this application – don’t you agree? Oh, and by the way, there are a lot if issues that would go into an infringement lawsuit. I can’t advise you on those particular issues.”

    Very nice, and on hindsight, not so hard.

  37. This is a mixed bag.

    On assignments they seem to have more or less followed NJ Advisory Opinion No. 9, which AFAIK is the ONLY authority post Sperry, as opposed to their old advice that appeared to follow Chicago v Kellog, a pre-Sperry case that was arguably distinguished over by the latter. So, at last they are applying 1963 case law in the PTO, and no longer that of 1949, LOL! Par for the course, perhaps? For those who haven’t read arcane NJ bar opinions, it set a bright line that assignment after issue doesn’t meet the Sperry ‘incident to prosecution’ test, but that before issue it does, but the new ethics rules extend this a little to say that assignments in post-grant PTO proceedings meet the test. At least now I have something to point at and say “See, I can draft assignments, it says so right here”, LOL!

    As to validity and infringement opinions, the PTO shows the usual lack of imagination in being able to think of PTO proceedings that involve opining on validity but not infringement. Sperry (the patent agent, not the case) admitted having provided validity opinions, but not infringement opinions, although in litigation the two are usually linked, and one may be shorthand for the other. However, J. Earl Warren failed to rule explicitly on this point, but merely held that agents “must necessarily provide opinions on the inventions brought to them”, and on remand the court below amended the injunction to allow “patentability opinions” as well as prosecution and things “incident to” prosecution. I think here we are still left looking at whether an opinion is “incident to” some PTO proceeding (not whether it involves thinking about validity or infringement), although “patentability opinions” are clearly a safe harbour, if only we can decide what they include. There is precedent (cite needed) that an infringement opinion by an agent will not protect from enhanced damages for wilful infringement, and I think that this remains more important than anything the PTO have said. IOW, there is little point in a patent agent putting an infringement opinion on record as it does not offer a shield, so whether it is unauthorised practice of law is almost moot, although perhaps not quite.

    Of course, I can’t condone the above suggestion to “use the telephone a lot” (wink, wink). I think I have something in my eye.

  38. This is silly. The PTO is simply reminding agents AND attorneys that PTO registration doesn’t allow you to practice law outside of the context of prosecuting patent applications. For example, neither agents NOR attorneys are licensed by the PTO to provide invalidity opinions or infringement opinions outside of PTO prosecution and re-examination contexts.

    Client: So, if the claim is okayed by the PTO, there [sic] product would infringe the claim and I could sue for infringement?

    You: I’ve drafted the claims in such a way that they should read on the target product. You’re the inventor, and you’re about to sign off on this application – don’t you agree? Oh, and by the way, there are a lot if issues that would go into an infringement lawsuit. I can’t advise you on those particular issues.

    That’s not so hard, is it?

  39. “Back in the real world…” I end up having to bill the client so Joe Lawyer can sit next to me and parrot my opinion. Tomfoolery. But I do it because it’s easier to eat Mr. Lawyer’s hours than play with the malpractice fire.

  40. Jim H:

    I think it would be perfectly fine for the agent to say either of those two sentences (not that I see much difference). Why? Because there is a simple (yet confusing) way to say the exact same thing without using the word “infringe.” (“The product would anticipate the claim, if it qualified as prior art.”). This is really entering the realm of form over function and semantics. The agent is not writing an exhaustive legal opinion referencing case law and jurisdiction and all the rest of it, which I think any agent with his head screwed on properly would defer to an attorney. It is a simple statement that the claim covers the product, and if the client sued the agent after losing the infringement lawsuit, I think a reasonable court would find the same.

  41. a dude,

    You: “The principle of law is concisely embodied in the truism that: That which infringes if later anticipates if earlier. The competitor’s product would anticipate the claim, if it qualified as prior art.”

    Client: So, if the claim is okayed by the PTO, there product would infringe the claim and I could sue for infringement?

    You: ____________

    Please fill in your response.

  42. John prosecutor,

    “That phrase (That which infringes if later anticipates if earlier), I believe, is meant to apply to issued claims during litigation and is not meant to include the standard applied by the PTO during examination.”

    You’re right. Adjudicating a claim of patent infringement is not a PTO function.

  43. a dude, John prosector, and/or Just Visiting,

    Assume your a patent agent — not attorney. How would you respond to the following scenario:

    Client has had an application pending for a number of years and a competitor comes out with a competing product, and asks the patent agent to add claims supported by the application and which cover the competing product and will make it infringe the new claims.

    How should the agent respond?

    Would it be okay for the agent to say, “If I write the claims and the PTO accepts them, then the product will infringe”?

    Would it be okay to say, “In my opinion, if the PTO accepts the claims that I write without revision, then the competiting product would infringe”?

    Then, a few years down the line, client sues for infringement against competitor’s product — but loses. Has agent committed malpratice? UPL?

  44. Hey, I figured out the answer. If I were a risk-adverse patent agent asked whether the competitor’s product infringed the claim I just drafted specifically to cover said product, I would say, “The product would anticipate the claim, if it qualified as prior art.” And then I would wink. And maybe do a double-wink if the client looked at me funny.

    And when flipping coins to decide whether to file another continuation, I would call either “heads” or “not heads”, you know, because confusing people while following obtuse rules is my bag.

  45. That phrase (That which infringes if later anticipates if earlier), I believe, is meant to apply to issued claims during litigation and is not meant to include the standard applied by the PTO during examination.

  46. a dude,

    “Back in the real world…”

    …there is malpractice and disbarments.

    “The principle of law is concisely embodied in the truism that: That which infringes if later anticipates if earlier.”

    This statement seems to be okay. It doesn’t opine to infringement or anticipation. It merely quotes case law.

  47. And in la-la land the agent will say “I cannot reasonably opine on infringement, hence I must defer to Joe Lawyer.”

    Back in the real world…

    “The principle of law is concisely embodied in the truism that: That which infringes if later anticipates if earlier.” — some big case, look it up

  48. John prosecutor,

    If I were an agent only, my answer would be formed in the context of the petition to make special; I would not be comfortable answering the question straight out without more of an answer because I tend to be risk adverse. If I answered without placing it in context, then I would be afraid of UPL and malpractice.

  49. And then the client asks the patent agent, “so the competitor’s new product will infringe these new claims when they issue, right?”

  50. John prosecutor,

    “[C]lient … asks the patent agent to add claims supported by the application and which cover the competing product. Is the agent thereby rendering an infringement opinion?”

    No, I wouldn’t think so. I don’t see anything wrong with adding new claims in an attempt to cover another’s product if that’s all you’re doing. If a client wants more claims, why not?

  51. That does present issues for patent agents. His client has had an application pending for a number of years and a competitor comes out with a competing product, and asks the patent agent to add claims supported by the application and which cover the competing product. Is the agent thereby rendering an infringement opinion?

  52. a dude,

    “Why not? It’s always a good idea to check your work.”

    I suppose, but I’ve never had to question myself. I write the claims understanding my client’s product.

    Just Visiting,

    “If the client asks you whether the claims you just drafted cover his product or any other product before you file the application, are you going to answer the question?”

    If the client asks about his product, I would answer yes to both, but I am an attorney.

    If the client asks about any other product and I am an agent, then I would answer his question by informing him as to the patentability of his invention against the others. If I thought another product is infringing, I would council in the context of a petition to make special. I am risk adverse to potential UPL and malpractice claims, and if I were an agent, would be worried about the extent my opinion would induce reliance.

  53. Just Visting,

    First, my compliments.

    “If it becomes necessary to identify infringement in support of a petition to make special, for example, then it would seem that the patent agent would be empowered under Sperry to opine on infringement in at least that setting.”

    In that setting, yes, his opinion of infringement is appropriate because it is a matter before the PTO and not court of law. If the patent exists, however, and no longer being prosecuted, then issuing an infringement opinion of a product against the claims of an existing patent would constitute an UPL in my opinion.

    I realize that it falls within the same scope and does not reflect upon the agent’s skill or capability to form such experience and learned opinion; one of my best friends is an agent and much better than I when it comes to practice before the PTO. For the purpose of preventing a future malpractice claim, however, the agent should not opine as to infringement of another’s product if, for example, such opinion induces the client to initiate a lawsuit and forms the basis for the Rule 11 analysis (let’s say client is solo inventor who isn’t adverse to filing a pro se complaint). If the inventor says that he filed his lawsuit because his patent agent said the product infringed the patent, the agent is susceptible to UPL and a malpractice claim.

    As far as your other statements, validity and patentability are nearly the same because they address the same issues under 101, 102, 103, and 112. Generally, the issue of patentability goes to an application for patent, and the issue of validity goes to the patent after the prosecution of the application. They bright line becomes grey with issues, for instance, of re-examination. I can see the PTO making rules with regards to it, but I would have tried to cloak the practice in terms of patentability. Yes, it is a test of “magic words,” but it dovetails with Sperry’s holding using the language of patentability and a court’s holding that validity is a question of law. In that regard, I am surprised of the PTO’s use of the validity language.

    Overall, as long as the agent’s activities are somehow connected to activities in front of the PTO, the agent should be free to opine without the risk of UPL and a malpractice claim. If his opinion is connected to litigation, however, agent beware or cautious to the reliance that your opinion will induce with your client.

  54. If the client asks you whether the claims you just drafted cover his product or any other product before you file the application, are you going to answer the question?

  55. Jim H: “Are you suggesting that I need to verify that the invention infringes the claims that I just wrote?”

    Why not? It’s always a good idea to check your work.

  56. a dude,

    Not sure I understand the facts.

    Say an inventor comes into my office, shows me his invention, and I write the claims corresponding to his invention. Are you suggesting that I need to verify that the invention infringes the claims that I just wrote?

  57. “no circumstance [where] practice before the Office [would] include the rendering of opinions on infringement.”

    As I asked on another blog, what happened to petitions to make special and the certification that the claims pending are being “unquestionably infringed”?

  58. “I’m surprised the PTO will actually allow for the agent to provide an opinion regarding validity”

    Sperry supports patent agents carrying out activities reasonably incident to prosecution before the office. If it becomes necessary to identify infringement in support of a petition to make special, for example, then it would seem that the patent agent would be empowered under Sperry to opine on infringement in at least that setting.

    Further Sperry specifically mentions patentability opinions which would include opining on whether valid claims could be obtained.

    If the patent agent is preparing a continuation application and is asked if it is possible to draft claims covering an existing product, that activity would appear to be reasonably incident and allowable under Sperry. Further, wouldn’t that preparing the claims for the continuation also reasonably include a determination what issued claims already covered? How would a patent agent make a determination regarding filing a terminal disclaimer if he cannot evaluate the scope and validity of the applicant’s issued claims.

    It’s clear that a patent agent could not conduct opinion activities not connected with preparation and prosecution, but the view that those opinions on a given matter (infringement, validity, patentability) are never intimately connected with prep and pros is wrong IMO.

    All of that said, the Sperry opinion depends heavily on what PTO regulations allow patent agents to do, and was primarily about the Supremacy Clause limiting what states can do to contravene federal authority. Sperry would be far less helpful in addressing federal attempts to limit patent agent’s activities.

  59. “Claims are not written against any existing product, process, etc….”

    What? They d*mn well better be.

    If the inventor’s prototype/design/product does not “infringe” the claim you draft for him, you may as well not even show up at the door. Call in sick, pass the case to another attorney. Holy cow.

    For claims v. products, the difference between literal infringement and anticipation is a date.

  60. a dude,

    Most of the time, claims are written to avoid obviousness and anticipation most of the time. Claims are written to address questions of patentability in light of the existing prior art and printed publicantions and examined in light of patentability sections of 101, 102, 103, and 112. Claims are not written against any existing product, process, etc….

    Infringement involves looking at a questionable product, process, etc…, and comparing it to an existing patent.

  61. How can anyone write a claim without knowing whether the inventive product infringes the claim? That’s the whole point, is it not?

  62. Just Visiting,

    It’s a technicality. Infringement is a question of law solely under the jurisdiction of the courts. An agent’s practice has been deemed the practice of law, but his practice is limited to the PTO and issues of patentability. See Sperry v. Florida.

    Unlike an attorney, an agent cannot practice law outside the PTO.

    I’m surprised the PTO will actually allow for the agent to provide an opinion regarding validity because, like infringement, it is a question of law. However, qeustions of validity do overlap questions of patentability. I think the PTO is attempting to limit the agent’s scope to those issues of patentability which is permissible under Sperry.

  63. I understand the the official restriction of agents preparing and having assignments executed. In reality, however, secretaries routinely handle this task (at least everywhere I have worked).

    What about common ownership issues with terminal disclaimers? Is there any problems here?

  64. “no circumstance [where] practice before the Office [would] include the rendering of opinions on infringement.”

    Is the PTO just being a bit unimaginative here? Perhaps the office interprets “rending opinions on infringement” to refer in particular to opinions in anticipation of litigation, but certainly an agent could reasonably be asked to draft claims that will be infringed by competitors. To the extent that a restriction on providing “opinions on infringement” limits the ability of an agent to opine to the client on the scope of claims he has just drafted, this seems a bit silly.

Leave a Reply

Your email address will not be published. Required fields are marked *

You may use these HTML tags and attributes: <a href="" title=""> <abbr title=""> <acronym title=""> <b> <blockquote cite=""> <cite> <code> <del datetime=""> <em> <i> <q cite=""> <strike> <strong>