Moving from a Patent Agent to a Patent Attorney

By Dennis Crouch

In November 2012, I posted about the fact that a large number US Attorneys are actually listed as "patent agents" on the USPTO rolls rather than patent attorneys. While this issue is typically rather minor it does have a few implications. First, it creates an artificial disconnect between state attorney conduct regulators and the USPTO's Office of Enrollment and Discipline (OED). The professional status of Patent Agents is regulated only by the USPTO while the Patent Attorneys are regulated by both the USPTO and the relevant state of attorney registration. Second, the misidentification causes policymakers to over-estimate the number practicing patent agents. The combination of these two issues pushes the USPTO's OED to be more proactive and aggressive because it believes itself to be the sole regulator of so many patent law professionals. Finally, the misidentification creates some confusion in the marketplace – especially for innovators looking particularly to hire a patent agent because of their perceived lower cost and greater technological focus. See: Dennis Crouch, Are you a Patent Attorney Masquerading as a Patent Agent? at http://www.patentlyo.com/patent/2012/11/patent-attorney-agent-registration-status.html.

In the November post, I particularly called-out the Finnegan Henderson firm for having a large number of patent attorneys actually listed as patent agents in addition to well-known patent litigator Joe Re from Knobbe who was also listed as a patent agent. I just pulled-up the USPTO Roster again and found that Joe Re is now officially a patent attorney as are about 20 Finnegan attorneys who were previously listed as patent agents. In all, more than 200 attorneys have changed their status in the past two months. I suspect that there are at least 1,000 more individuals who are still misidentified on the rolls.

9 thoughts on “Moving from a Patent Agent to a Patent Attorney

  1. Ned–I agree. I have already received two notices from the PTO about decs in newly filed continuing apps where I filed a copy of the dec from the (original) parent app. The notices indicate that the decs do not contain the language you mention. Actually Carl Oppedahl had a post on this very blog awhile back about ‘new magic words’ required which is a good explanation (it comes up right away on Google). I’ve looked around and don’t think there’s any way around fixing it, but as Carl explained, fortunately if you can’t find an inventor after all these years the new rules also make it easier to file a substitute dec averring that you couldn’t find them, and a showing of diligence is not required (although it is expected). If anyone does know of a way around this, I would love to hear it, but everything I’ve seen indicates it is in fact the case that new decs must be filed even in continuing apps. I agree, totally useless and a waste of time.

  2. Dennis, did you receive a finder’s fee from all these people? Or at least flowers or a nice thank you email? :)

  3. I’ve been trying to change my status with the USPTO’s OED for nearly two months now. After sending them the requisite fee/certification of good standing back in November, I have yet to receive a response. They haven’t even cashed my check. I called the OED repeatedly, but have been met by a series of dour OED employees, each foisting me off to another person who is magically never around.

    It’s almost a caricature of a soulless bureaucracy.

  4. Can’t you just show ownership of the invention by the assignee and then have the assignee sign the new declaration?

  5. Huh? FUBAR!!!

    On 9/16/12, rule 1.63 was modified. In particular, 1.63(a)(4) changed from

    “(4) State that the person making the oath ordeclaration believes the named inventor or inventors to be the original and first inventor or inventors of thesubject matter which is claimed and for which a patentis sought.”

    to

    “(4) state that the application was made or was authorized to be made by the person executing the oath or declaration.”

    The change in item 4 was mandated by statute according to the USPTO notice.

    Rule 1.63 rules notice further states:

    “Section 1.63(d) implements the provisions of 35 U.S.C. 115(g). Section 1.63(d)(1) provides that a newly executed oath or declaration under § 1.63, or substitute statement under § 1.64, is not required under § 1.51(b)(2) and § 1.53(f) or § 1.497 for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with § 1.63, or substitute statement under § 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.”

    We should noted that the new statement for subsection 4 was not in the former rule. The way the Office seems to be treating rule 1.63(d) is to require new oaths to the extent oaths filed in parent applications contain the old subsection 4 content and not the new.

    This has got to be a mistake. But if it is not, it is going to cause havoc as a lot of people are going to have to track down inventors for applications filed years ago, and that may be difficult.

    FUBAR, I say.

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