Are you a Patent Attorney Masquerading as a Patent Agent?

In looking through the USPTO database of registered practitioners, I was surprised to see that 93 patent agents list a current affiliation with the major firm, Finnegan Henderson. That seemed to me like an unusually large number of registered patent agents within a single firm. This morning I used Google to search for the first 30 on my list and found that 26 of those are actually patent attorneys, not patent agents. It appears that many of those individuals became a registered patent agent before having passed a state bar exam and then never changed their registration status. Of those 30, I also found a handful who are no longer at the Finnegan firm but have not updated their address information to reflect their new firm. I singled-out Finnegan here simply because they employ more US patent practitioners than any other law firm. No. 2 on that list (Fish & Richardson) does not appear to do a better job of managing its attorney rolls. I looked at the FR website for ten of their listed patent agents and found that nine of them are actually attorneys. Knobbe Martens is no different. Their top litigator, Joe Re, is listed as a patent agent on the USPTO rolls.

I was already aware of this issue, but it came to a head recently as I began working on a project that considers the professional role of patent agents as compared with patent attorneys. Outside of my own navel, the issue is important for several reasons – especially as the PTO moves to align its ethics rules with those of the various state bar associations.

The current USPTO rules require that "a registered practitioner who is an attorney in good standing with the bar of the highest court of one or more States shall provide the OED Director [William Covey] with the State bar identification number associated with each membership." 17 C.F.R. 11.11. Although not express within this sentence, the normal understanding is that any substantive change such as this will be updated "within thirty days of the date of the change." Id. The rule also requires practitioners to update their contact information.

The USPTO relies heavily on state bar association ethics rulings regarding individual practitioners in its own OED decisions. In addition, the USPTO is in the process of moving toward a system that more closely aligns its ethics rules with the rules of most state bar associations. However, this link cannot be easily made unless the USPTO is apprised of the patent attorney's state bar registration. Although certainly not strong evidence, an attorney's failure to provide this information is at least minimally suggestive of a desire to keep the various regulatory bodies from talking with one another about particular persons of interest. In reality, the failure to switch from agent to attorney is likely only an oversight in the vast majority of situations.

What to do: You can check your own registration status by searching on the USPTO website here: https://oedci.uspto.gov/OEDCI/. The process of making this change is quite easy, but it does require $100 to the USPTO and likely some money to the appropriate state bar to obtain a Certificate of Good Standing. http://www.uspto.gov/ip/boards/oed/practitioner/changeinfo.jsp.

67 thoughts on “Are you a Patent Attorney Masquerading as a Patent Agent?

  1. FYI, the rule is 37 C.F.R. 11.11, not 17 C.F.R. 11.11.

    In view of this article, I checked my registration status and was surprised to learn that I am still identified as an agent, despite having been a licensed attorney for 5+ years. I could swear that I updated my registration status with the PTO when I updated my address many years ago, but either I did not or the update did not stick. I’ll rectify that issue in the immediate future.

    As to your claim that some patent attorneys are intentionally masquerading as patent agents,that is simply ridiculous. On what basis are you making that assertion? Do you have personal knowledge of someone that is intentionally violating this rule? Or are you simply guessing? I can’t imagine a single reason why any patent attorney would act in the manner you suggest. The $100 fee is a paltry sum when you consider the average patent attorney’s salary. And it is extremely doubtful that any new patent attorney thinks “Hey! You know what? I just passed a bar exam and the PTO requires me to tell them of my brand new status as an attorney in XYZ state. But I’m not going to tell them, because god forbid I get into some trouble with a state bar years from now and the PTO finds out. Nope. No sirree. I’ve got to hide the fact that I’m an attorney so the PTO police will have more trouble finding out if I am a bad boy later. Never mind that I am extremely proud of my achievement of passing the/a bar. That pride is irrelevant, cause us patent attorney have to protect ourselves by any means necessary.”

    Like your “guess” as the motivations of patent attorneys that are registered as agents, one might “guess” as to the purpose of this article. It has no intellectual merit (at least not compared to most posts on Patently-O), and seems squarely aimed at directing OED to investigate one of the most prestigious patent firms in the United States. What is your angle, other than simply crying wolf?

  2. There is no requirement to be a member of the bar in an “Article III court,” in order to practice as an attorney. It is merely required to be a member of the bar in a State court.

  3. Your conclusion that reporting bar membership must be done within 30 days is pure conjecture. There is no time limit set. The requirement is simply to provide the OED Director with the membership number for every state where an attorney is licensed and in good standing. There is no requirement to tell the PTO you are an attorney vs. an agent. Thus, there is no authority to require attorneys to update their attorney/agent status.

    Read the rule.

  4. I’ve attempted to update my information twice. I paid the fee once. The USPTO still has not updated my info.

  5. I often send people to the USPTO database to find a registered practitioner (in my position, I cannot give referrals in the traditional sense). Also, it has been my experience that most of the sites that pop up on Google searches for “patent attorney (city)” mine their information directly from the PTO. It seems to me that the failure to keep your information there current is akin to shooting yourself in the foot from a marketing standpoint. Especially if your name exudes competence, or if the prospective client favors ‘attorneys’ over ‘agents.’ Maybe not the best way to make rain, but still…

  6. Fair enough. A lot of things in law aren’t clear cut and involve an evaluation of risk. I’d take that risk; lots of smarter and more experienced than me have too. I might believe you if/when I hear it from OED or a qualified ethics counsel. You have not persuaded me.

  7. I suspect that your personal interpretation of the regulation may be entitled to little deference before the OED unless you are relying on the advice of qualified ethics counsel.

  8. If your firm is so insistent on your taking the PTO exam, then why aren’t your firm’s PR partners equally as fastidious about making sure that their attorneys’ bar info is current? My former firm employer was fairly diligent about reminding folks of these things, even though it was a large GP firm with no prosecution practice.

  9. This is often checked early in the inventor/SME due diligence process:

    1) The USPTO registration database will be checked.
    2) During Google searches, the registration info also appears at several patent websites.

  10. My certificate of good standing with the Supreme Court of my state shows a different admit date than my admit date with the state bar, and, in fact provides that I “was admitted on [date] as a member of the bar of the Supreme Court of [State], the highest court of this State.” (emphasis added).
    So, the language used by my state’s “highest court” parallels the language used by the PTO. You can’t have two courts that are both the “highest” court of the state, so the supreme court’s statement supports my interpretation and the interpretation of many attorneys I know.

    Sure we could be wrong, and sure we could request a clarification from the PTO. But what other, “lower” courts could the PTO have been thinking would not be good enough to count as an “attorney” if it chose to make the regulation refer to the “highest” court?

  11. The other side of the coin is us prosecution attorneys. We never go into court. I therefore do not know my juris number and had no idea there was a rule seemingly requiring us to update a number we never use with the Patent Office.

  12. I’m an associate at a firm similar to Finnegan that is not on your list, though we do have a large quantity of associates that are still agents (myself being one of them).

    My explanation is this:

    We are pushed to take the patent bar right after our summer associateships or very early in our careers. The firm subsidizes everything and even offers a course. I’d say 75-90% of summer associates end up taking the patent bar either during their 3L year or within their first year of practice (when they still might not be admitted to the state bar). So, most of us start out as agents.

    As at most firms, the vast majority of associates (myself included) wind up in litigation. I’ve never prosecuted a patent or had any interaction with the PTO in my entire career. Aside from the rule that I change my registration to Attorney (which I had no idea existed until I read Dennis’s great post), I’ve never felt any need to update my registration status with an organization that I don’t interact with. I think that at most firms you’ll find similar stories — took patent bar during or directly after law school because firm required or heavily recommended it, ended up in litigation and never updated registration rolls.

  13. I suspect that the purpose is to facilitate reciprocal discipline. If the PTO elects to proceed with a disciplinary complaint made against a practitioner, they probably want to know who else needs to be informed.

  14. In every state that I’m aware of, the judicial branch controls who is admitted to practice law within the jurisdiction. The judiciary may, in some instances, delegate authority to the “state bar” to make initial recommendations concerning attorney discipline.

    If you have been sworn in by a judicial officer to practice law, then I suspect that you are a member of “the bar of the highest court of one or more States” within the meaning of the regulation.

    If, for some reason, the highest court of the state in which you’re barred won’t prepare a letter of standing on your behalf, then I would figure out what OED wants you to do to comply substantially with the regulation. Again, unilateral nondisclosure is probably not a good idea.

  15. Good points, but there are some areas where patent agents can step over the line, and that includes drafting licensing or employment contracts, trademarks, copyrights, litigation advice, etc.

    P.S. I’m curious if patent agents can get cheaper malpractice insurance?

  16. What would be more interesting is the Finnegan data, say, a month later.

    Unless somone is cracking the whip, things like this gets pushed down and down the todo list.

    I do commend DC in brining this issue to light.

  17. I believe that the USPTO fee structure for several years has provided the USPTO the authority to require an annual fee of $118 from all active attorneys and agents. To date the USPTO has not instituted the fee, but could do so at any time.

  18. Bobby, your opinion is wrong. To become a Patent Attorney, the PTO requires a letter from “the bar of the highest court of one or more States,” not the state bar. In some states, that means you have to be admitted to the Supreme Court of that state in order to get the letter.

    In those states if you send in the form with just a letter from the state bar, even if the state bar is an arm of the supreme court, the PTO will reject it. You will need to be sworn into the state supreme court and then get a letter from them.

  19. One possible incentive is to allow individual patent attorneys to sign papers alone, while require patent agents to sign papers with a patent attorney. You can come up with any other ways to “encourage” patent agents to change status. The status quo, however, does not provide such encouragement.

  20. Why should patent agents/attorneys be anymore concerned about the accuracy of their data than the people they represent who routinely file forms with inaccurate information or USPTO that allows inventors to use uninhabited islands as the geographic location for inventors or obfuscate the contracts or grants that funded their research.

    This is a blips in a sea of bad data.

  21. Wouldn’t patent agents have to comply Patent rules in the same way as patent attorneys, while patent attorneys have to comply with state rules that patent agents don’t need to comply? So, why change? Unless the practice scope of patent agents is made substantially more restrictive than patent attorneys, there is really no incentive for the change, like one of the previous posts indicated.

  22. Simple question: If a patent “attorney” and a patent “agent” can practice before the patent office in exactly the same way, why would someone change the status for more rules/regulations to comply?

    Unless the patent office distinguish “attorneys” over “agents” in some meanful ways, nothing would really change in the patent bar.

  23. “Although certainly not strong evidence, an attorney’s failure to provide this information is at least minimally suggestive of a desire to keep the various regulatory bodies from talking with one another about particular persons of interest.”

    Not only is it not strong evidence, it’s no evidence at all.

  24. I would agree. An agent may be able to draft an opinion that states that, in his or her opinion, a particular product is not within the literal scope of the claimed invention (as long as there are no complicated claim construction issues). But an agent should not be opining on any aspect of 35 USC 271, as infringement determinations are the province of Article III courts (and not the PTO). Therefore, providing an analysis under s. 271 is limited to those who are members of the bar of at least one Article III court.

  25. Once you are sworn in, you are a member of the bar of the highest court of your state. The highest court may also have a separate bar that governs one’s ability to participate in oral arguments before said court. In my opinion, the PTO regulation is not refering to this latter specialized bar, but to the former.

    Besides, if an attorney is in doubt, unilateral nondisclosure is not an option. One should err on the side of disclosure when in doubt. Or one should at least seek written clarification from OED as to the PTO’s interpretation of the regulation.

  26. Clearance and non-infringement opinions are also not practice before the Office.

    Sounds like some of the long time agents are trying to skip out on law school. I don’t blame them; it’s not incredibly productive. But it is required.

  27. This comment appears to read Sperry in an overly broad way. Sperry held that the practitioner’s activity did not constitute the unauthorized practice of law in Florida insofar as his practice is limited to the preparation and prosecution of patent applications and activities incident thereto.

    A number of activities are nonetheless forbidden to patent agents, including: (1) holding oneself out as a patent “attorney”; (2) engaging in any activity whatsoever concerning the licensing or assignment of patent rights, as the disposition of such rights is governed exclusively by state law; (3) providing any legal advice non-statutory quasi-patent doctrines, such as implied license, exhaustion, inequitable conduct, estoppel, doctrine of equivalents, reverse doctrine of equivalents, etc.; and (4) failing to secure informed consent of his or her clients concerning any of the above limitations.

    This is particularly sensitive in the areas of assignments. The assignment of patent rights is generally governed by local state law. Thus, a non-attorney patent agent CANNOT give a client an assignment document for execution, at least not without advising the client to seek separate legal advice from an qualified attorney concerning the agreement.

  28. It would be nice if the law firms could notify the Patent Office and keep their attorney rolls current. Since it is up to each practitioner, the law firms should not be faulted.

    MA Patent Attorney

  29. Seems the $US100 fee to merely update one’s “affiliation” as a lawyer is quite a racket (I agree with you MM).
    In Israel there is no fee to update our contact or other such details with the ILPO.
    However, we do pay the equivalent of about $US45 each year to remain on the active practitioners list – els I presume we are not allowed to sign for our clients, though I doubt the ILPO would catch this).
    In the US, is there an annual fee to maintain one’s status as practitioner with the USPTO? There was talk of it and I was simply curious to know what happened.

  30. There is another explanation for many of these, I think. In my state, the “bar of the highest court” is separate from the “state bar.” We we pass the Bar Exam, we are sworn in by a trail court judge, and that’s when we can join the state bar organization and hold ourselves out as licensed attorneys. But both the intermediate court of appeals and the final appellate court (the Supreme Court) have a separate “bar”, membership, membership fee, oath, and swearing in. Getting sworn to these appellate courts isn’t a big deal, but it is an extra step. If you practice primarily in federal court, even as a patent agent who happens to be an attorney, there’s no need to go through those hoops.

    I noticed this a while back when I was preparing for the registration exam. Several of my friends were still listed as “agent” by OED, even though they were attorneys. After reading your post, I double-checked the status of a friend I thought was still an agent — who also happens to be a former Finnegan associate — and sure enough, she is not a member of “highest court” bar in our state.

    So, the explanation is that being an “attorney” and member of “the” Bar in a state is not coextensive with being a member of the “bar of the highest court” in a state. So you can be an attorney who is a registered agent but not eligible by the Rule to be listed as a “patent attorney”. Does this limit the ability to hold oneself out as a “patent attorney” to the public?

  31. Ah, sorry. I should pay closer attention to who writes what here, I suppose.

    I didn’t take the comment personally — I started as an attorney and didn’t sit for the patent bar until I’d been practicing nearly two years because I never had to sign anything myself until around that time. And I’ve always promptly updated my status with all applicable state bars and the USPTO whenever I’ve changed jobs since then because I’m meticulous that way.

    You’re probably right that most attorneys were unaware of this requirement, but I’m not sympathetic — it’s not hard to find the info at the OED page, after all.

  32. Dave: Dennis’s somewhat sarcastic comment that those patent agents who didn’t update their status with the USPTO ‘were just really busy’

    That was me. And just so we’re clear, it wasn’t intended to be sarcasm at your expense. The fact is I’m quite sure that a substantial percentage, if not most, of the PTO-registered patent prosecutors who later became attorneys and who read this blog had no idea until now (1) that this requirement existed and/or (2) whether their current “record” at the USPTO is updated with respect to their status as agent or attorney.

    Of those who meet (1) or (2), I’m guessing that the number who rush out tomorrow to get their “Certificate of Good Standing” for submission to the USPTO (along with the $100 fee) is close to zero.

    Maybe Dennis can put a note in his calendar to check back in 6 months and see if the numbers are changed substantially.

  33. It didn’t, and I didn’t say that it did — I was referring to updating my info with my state bar, though what I wrote was hardly a model of clarity.

    That post spoke more to Dennis’s somewhat sarcastic comment that those patent agents who didn’t update their status with the USPTO ‘were just really busy’.

    The reality is that very little junior associates do requires the ability to sign papers on their own — because of Finnegan’s second attorney review process, for example, junior associates generally prepare documents for signature by the reviewing associate or partner. So there is little incentive for those attorneys to update their status until they finally get to the point they start signing off on things themselves, which takes a while at Finnegan.

  34. Why did your status at the PTO impact your ability to sign off on discovery related correspondence? Does not your state bar admission + pro hac vice admission allow you to sign off on discovery related correspondence in a litigation (whether or not patent litigation)? PTO registration–whether attorney or agent–is basically irrelevant for litigation activities, is it not?

  35. Yes, but 6 has a tendency of living in the past.

    I don’t think he ever accepted the Kappos quote that quality does not equal reject.

  36. Well, I can only speak for myself — I updated my info promptly after passing my second state bar exam because I was litigating and needed to be able to sign off on all sorts of discovery-related correspondence. I was admitted pro hac vice to the court hearing our case, but was not licensed in the state where I was practicing, so I had an incentive to update my info despite being incredibly busy. Not everyone has that same incentive, especially if one is already a registered patent practitioner doing almost entirely prosecution work.

    But mostly, I think it depends in large part on whether the firm they’re working for has a process in place for attorneys to ensure that all their relevant practice information is updated appropriately, from the relevant state bar or bars, to the USPTO, the AIPLA, and any other professional organizations.

    When I lateraled from an IP boutique to a larger general practice firm a number of years ago, the new firm gave me a list of contact info and helped me to send out all the necessary updates as part of the HR orientation process during my first week or two. Clearly many firms (Finnegan included, apparently) don’t have such a structured process for doing so.

  37. “Patent agents can “prosecute a patent but not give legal advice”?

    Actually, as a patent agent (and not an attorney), I can assure you this is not correct. Patent agents very definitely can and do give legal advice (see for example Sperry v. State of Florida, a Supreme Court opinion from 1963 I believe). In fact, it would be malpractice not to do so (how can you prosecute patents and give advice to clients on patent questions competently without giving legal advice?).

    Essentially, a patent agent is no less a fully-qualified member of the legal community than any attorney who has specialized in a particular area of law. My license is subject-matter limited (patents) and jurisdiction-limited (PTO), but it is not geographically limited at all (almost all of my clients are not local, and fully half are international). A PI attorney in Washington, on the other hand (for example) is licensed to practice any law (except patent law in the PTO), but is constrained by the rule of competence from straying too far from PI work, and is geographically limited to Washington.

    So other than the fact that my license has different boundaries than attorneys, there is very little difference between what I actually do and what an attorney does (although I realize most attorneys would not agree, but that is unimportant, since my clients and the law agree).

  38. Other tangentially related important safety tips:

    Make sure your phone number is up-to-date with us. Don’t put your home or cell number in your PTO records unless you want examiners to end up calling it on occasion.

    Also, if you’re, say, a partner or other important attorney at your firm, and you don’t really want to field calls from examiners, make sure the junior attorney handling a case includes his/her name and phone on all official correspondence with us, even if you personally sign it as well.

  39. it often takes student associates a while to update their status from patent agent to attorney

    What’s a “while”? I’m guessing it’s typical to find a few “patent agents” who are secretly attorneys who graduated from law school 10+ years ago at every one of the bigger firms with patent practices.

    Maybe they’re just really busy …

  40. “Although certainly not strong evidence, an attorney’s failure to provide this information is at least minimally suggestive of a desire to keep the various regulatory bodies from talking with one another about particular persons of interest.”

    I’m not prepared to make the inference you did here, Dennis, which strikes me as preposterous, to be completely honest.

    I think your follow-up comment is far more accurate — attorneys are just not paying attention, and they have no incentive to do so, because there is absolutely no consequence to failing to update their records with the USPTO. You can bet if their ability to get paid as an attorney depended on updating their status, it would get done promptly.

  41. Just curious 6, is that anything like examiners under the Duffas regime that were actually rewarded for making ‘mistakes’ and violating the duty to fairly examine patent applications? (you know, the don’t penalize mistakes of denying rightful patents coupled with the extra set of eyes on those applications (gasp) allowed)

    Mighty fine glass house you are in.

  42. A grand total of 6 engineers in the House governing this technology centered nation. It is enough to make one literally puke.

  43. Rules with no teeth are no rules at all D. Why do you think lawlyers have such bad reputations? The rules governing their behavior have so often such tiny bite, and bite so infrequently, as to be no rule at all. You just stumbled upon one of many thousands of such “rules” that are in effect governing lawlyers.

    But who can expect differently when those making the rules and lawls are the ones who themselves will be caught up in them?

    See page 2.

    link to senate.gov

  44. Although those might be good theoretical explanations. They do not reflect the reality for the individuals that I inspected here. Rather, I found many individuals who graduated from law school years ago that were still listed as agents.

  45. A major factor to consider is that the distinction between a patent agent and a patent attorney is very blurred. Sure, patent agents can “prosecute a patent but not give legal advice,” but in reality most patent agents do everything that a patent attorney can. So there is very little incentive for someone to re-classify themselves as patent attorney after passing a state bar.

  46. The process of making this change is quite easy, but it does require $100 to the USPTO and likely some money to the appropriate state bar to obtain a Certificate of Good Standing.

    What a racket. [vomits in nearest trash can]

  47. There are two relatively simple explanations for that number; first, the firm has a significant number of student associates attending law school part-time, as well as a number of technical specialists who are expected to enroll in part-time programs as well; and second, it often takes student associates a while to update their status from patent agent to attorney at the USPTO after they have passed a state bar.

Comments are closed.