Unauthorized Practice of Patent Law and State Regulators

by Dennis Crouch

People v. Dak Steiert and Intelligent Patent Services, LLC (Co. 2019)

A recent decision by the Colorado Supreme Court has ordered Mr. Dak Steiert (and his company Intelligent Patent Services) to cease unauthorized practice of law in Colorado.

Steiert’s website (expertpatentlaw.com) touted its patent expertise:

“our patents are drafted entirely by patent attorneys with at least 5 years experience. Unlike any other firm, we do not use paralegals to draft patents. we don’t let rookie attorneys draft your application) then give it to a senior employee for a brief glance…”

Steiert is not a lawyer or patent agent, but did hire experienced patent attorneys to do the work on a contract basis.  The problem though his that nonlawyer Steiert “engaged in the unauthorized practice of law by advertising, offering, and providing the legal services of patent attorneys to inventors in Colorado.”  Colorado precedent prohibits non-lawyer owned companies “from offering or purveying legal services of licensed lawyers.”

Steiert apparently also drafted at least one set of patent claims — something that the Supreme Court’s Presiding Disciplinary Judge also identified as unauthorized practice of law.  In a separate proceeding, prosecutors in Eagle County, Colorado have charged Steiert with fraudulent advertising, criminal impersonation (of patent attorneys), and criminal “bait advertising.”  That case is prepping for trial.

I’ll note here that Steiert argued that the alleged practice of law in this case was the practice of patent law.  As such, the appropriate regulator is the USPTO and not the Colorado Supreme Court.  The Presiding Disciplinary Judge rejected that allegation.  However, Steiert’s argument has some precedential merit. In particular, Federal Judge in Missouri dismissed a somewhat similar case against LegalZoom for its patent drafting system. Janson v. LegalZoom.com, Inc., 802 F. Supp. 2d 1053 (W.D. Mo. 2011). In particular, the court held that Missouri’s laws governing unauthorized practice of law were preempted by the Patent Act and USPTO regulations.

Michael McCabe has discussed the case in several posts on his IPEthics Blog.

60 thoughts on “Unauthorized Practice of Patent Law and State Regulators

  1. 7

    >Janson v. LegalZoom.com, Inc., 802 F. Supp. 2d 1053 (W.D. Mo. 2011).

    Huh. It does seem that he has a non-trivial defense.

    I don’t know. Weird to say that all patent law is precluded by federal law when there is licensing, consultation of whether to litigate, claim charts, etc.

    Seems like what is covered by the PTO is fairly narrow and the Patent Act. Plus, the causes of action in the Patent Act are just merely federal causes of action. Is the state court saying that you can practice law as long as it is federal causes of action?

    Hmmm….seems like there is a lot here to think about.

    1. 7.1

      People need to read McCabe’s blog for a better understanding of the sordid facts here.

      This profession is troubled enough without parasites like this cl0 wn.

      Let’s take a guess as to the subject matter focus of the applications this guy was “handling.” Anybody?

        1. 7.1.1.1

          It’s called a “correlation”. Identifying them is something we can do freely because (in part) people like me punch people like you in the face on a regular basis.

          We know that facts frighten you, Bildo. Go cry yourself another river.

          1. 7.1.1.1.1

            Lol – the Internet tough guy routine is so charming.

            Your innuendo (rather than actual facts) is noted.

  2. 6

    Are there any PTAB judges who have been promoted out of the examiner ranks who do not have law degrees?

    Should examiners without law degrees be permitted to suggest claim amendments to unsuspecting pro se inventors?

    1. 6.1

      “Are there any PTAB judges who have been promoted out of the examiner ranks who do not have law degrees?”

      Iirc there used to be, but I don’t think it happens much if any today. There are enough examiners/managers with law degrees for them to be able to pick those instead. Which you may as well if you have the choice.

      “Should examiners without law degrees be permitted to suggest claim amendments to unsuspecting pro se inventors?”

      Yes, that’s been office policy for forever. The office (all of the office personnel) can suggest what they would find distinguishes etc. though the office doesn’t usually take part in behind the scenes consulting work on what would help the applicant etc.

      1. 6.2.1

        One traditional answer to question 2 is that if you take free advice [on amending your claims, etc.] you are getting what you paid for.

    2. 6.3

      The job requirements for a patent job include a law degree and admission to at least one state bar.

      usajobs.gov lists the job announcements. I was actually interviewed but not hired by the USPTO for a patent judge job. (When CJ Smith asked me slickly if I wanted to burn the patent system down, I flip ped him off.)

      1. 6.3.1

        “I was actually interviewed but not hired by the USPTO for a patent judge job. (When CJ Smith asked me slickly if I wanted to burn the patent system down, I flip ped him off.)”

        Are you pulling our leg NWPA? We all know the guy didn’t ask you “do you want to burn the patent system down?” when you’re literally shilling for the patent system every day of your life. Why would he possibly ask you that?

        1. 6.3.1.1

          Especially when Mr. Writer’s name tag clearly indicated his full name of Night Writer…

          (could not find my sar casm sign)

    3. 6.4

      With respect to number 2, I find it interesting that Mr. Steiert could theoretically join the PTO branch in Colorado as an examiner; suggest the same claims to an unsuspecting pro se inventor; and, the system would permit it. Seems like there is a flaw in the PTO’s longstanding tradition of letting examiners who are untrained in 35 USC §271 suggest claims to pro se inventors.

      1. 6.4.1

        “Seems like there is a flaw in the PTO’s longstanding tradition of letting examiners who are untrained in 35 USC §271 suggest claims to pro se inventors.”

        What flaw would that be?

        1. 6.4.1.1

          There is a flaw representing a failure to understand how the Supremacy Clause governs the ability of the States to govern the actions of Federal employees in the course of their duties. There is a flaw representing a failure to distinguish between suggesting claims in prosecution (35 USC 131) and accusing devices of infringement (35 USC 271).

          Perhaps he is demanding a Miranda-like warning concerning prosecution history estoppel. That’d be fun.

          “You have the right to remain silent. Anything you say can and will be used against you in a court of law. You don’t have the right to an attorney. If you cannot afford an attorney, it’s solely your problem. Do you understand the rights I have just read to you? With these rights in mind, do you wish to speak to me?”

    4. 6.5

      “Should examiners without law degrees be permitted to suggest claim amendments to unsuspecting pro se inventors?”

      Typically, Examiners with four years of experience can have the patent bar examination waived if they apply for registration as a patent agent (see General Requirements Bulletin). Apparently in the eyes of the patent office, experienced examiners are at least as able to recommend claim amendments as newly minted patent agents.

  3. 5

    I have to wonder if the registered attorneys (they are named in the linked articles), are themselves set up for disciplinary actions.

    1. 5.1

      The PTO OED reads decisions like this carefully for the possibility of its own disciplinary investigations.

      1. 5.2.1

        Are you ok? You seem angry? All posts you have are really negative against the patent system in every way possible and against others personally.

        Being perpetually disgruntled isn’t the best way to live life.

        1. 5.2.1.1

          Cosmo,

          You must be new here. “MM” (aka Malcolm) has been this way for some fourteen years (at least).

          This was documented awhile back on one of the occasional Prof. Crouch “let’s have a nice ecosystem” efforts.

          His attitude most likely comes from a prominent cognitive dissonance of his working in a field (and ostensibly creating work product) of a nature of Private personal property that rankles his Liberal Left mindset (as these items created are more or less created in order to engage in the crass “make money” activities that he loathes.

          1. 5.2.1.1.1

            Not totally new here – just tired of his ranting against the US patent system.

            It’s like an uninformed 1st year gunner on steroids that thinks everyone believes he is smart because the prof calls on him without the self-awareness that he is called on as a foil for a dumb response to the question at hand.

              1. 5.2.1.1.1.1.1

                The sad thing is that there is a cadre of confirmation-biased individuals that absolutely lap up Malcolm’s ven0m.

                Not to get preachy, but I am reminded of Matthew 18:6.

                Were he to actually engage (as opposed to his typical drive-by monologue style), he might raise to that “play the foil” level that you speak of.

          1. 5.2.1.3.1

            I have no idea what that is supposed to mean and no way am I clicking on that link. But I lol’d at the hulk reference. Friday Nights right before the Love Boat?

              1. 5.2.1.3.1.1.1

                I don’t have a lawn. But if I did, I wouldn’t care if kids were on it, provided they werent wearing MAGA hats and burning a cross.

                1. “I don’t have a lawn”

                  Color me surprised! Actually not. The only thing that can even produce an MM is a city. Born n raised city slicker weren’t ya?

                2. I live in the country and take the train to work or I work remotely. Lawns are silly, especially if you live in a warm climate where it doesn’t rain much for half the year.

                  I have a garden. I grow ornamental plants, succulents, vegetables, fruit and weed. Oops, I meant to say weeds (as far as you know).

                3. “I have a garden. I grow ornamental plants, succulents, vegetables, fruit and weed. Oops, I meant to say weeds (as far as you know).”

                  You should have anon over so you guys can smoke up, listen to some Samaya and argue about 101 irl. Can livestream the fisticuffs.

                  link to youtube.com

            1. 5.2.1.3.1.2

              “and no way am I clicking on that link”

              Scared of youtube are we now boomer? It’s the hulk clip from the first avengers where bannon reveals his secrit to controlling when he hulks out.

    2. 5.3

      Good question anon. I would think they would be subject to discipline.

      As it is in the model rules that you can’t start a company with a non-attorney running it.

  4. 3

    Is Janson v. LegalZoom.com, Inc., 802 F. Supp. 2d 1053 (W.D. Mo. 2011) distinguishable as supplying forms, not attorneys, and is this Colorado decision supportable by the Sup. Ct. decision in Gunn v. Minton (2013) [Applying Grable, “state legal malpractice claims based on underlying patent matters will rarely, if ever, arise under federal patent law for purposes of §1338(a)”] (9-0, Roberts)?

    1. 3.1

      Good questions Paul.

      From a quick read, I think that there were pretty specific “law firm cannot be run by a non-attorney” aspect involved here.

      So yes, the cases may well be distinguishable along the lines of “supply mere forms” versus providing legal services (although I can see that line quickly being blurred the moment advice as to which forms are to be supplied is part of a service).

      I would also add that there may well be some real concerns with UPL as pertains to “Smart Contracts,” which does more than merely “provide a form.”

      This also appears to be in some tension with Gunn, although I would be also interested in any views to the Florida case (Solar Dynamics comes to mind, but that is not the primary one I was thinking of) – that main one being Florida Bar v Sperry…

      1. 3.1.1

        “law firm cannot be run by a non-attorney”

        Can be be owned, but not “run” by the non-attorney?

        1. 3.1.1.2

          Only if the owner lacked the ability to hire managers and/or directors. The point of the rule is to protect attorneys from being influenced/controlled by non-attorneys (i.e., to act in a way contrary to their ethical duties)

          1. 3.1.1.2.1

            But attorneys are hired by clients that do that all the time. Just ask Rudy Giuliani.

            Have you heard of Michael Cohen?

            So, that’s s pretty dumb justification for a very suspect law.

            1. 3.1.1.2.1.1

              You are invoking two infamous loathsome criminals as evidence that “everybody does it”?

              Nice.

              1. 3.1.1.2.1.1.1

                I didn’t say everybody does it.

                I said preventing a non attorney from owning a company that hires attorneys on behalf of others does not address the problem.

                Furthermore, it seems to unnecessarily limit/punish the freedom of honest entrepreneurs.

              2. 3.1.1.2.1.1.2

                Furthermore, what does it say about what Colorado thinks of attorneys if they they that if a boss tells them to do something unethical or illegal they will do it?

                And if attorneys are so easily swayed to the dark side, how does it help the situation to require that an attorney run the company?

      2. 3.1.2

        To venture along my own path, the present case may distinguish from Perry in a subtle manner.

        In Perry, Florida could not reach the practitioner because that practitioner was properly operating within the bounds of the Federal exception.

        In the present case, Mr. Steiert was not, and thus, could not depend on the exception applying to himself.

        Additionally, as noted in the linked coverage, Mr. Steiert violated the UPL by filing his own defense pro se, given that THAT filing also attempted to cover a filing for a jurisitic person, that, under Colorado state law, could only be done by a properly licensed attorney.

        Bottom line I suppose is that Mr. Steiert had multiple transgressions, with a limited — and unreaching — defense. It would have been more interesting perhaps if Mr. Steiert had been a patent agent and had aligned better with the Sperry case.

        Which, in a way, brings me around to a past discussion point regarding patent agents.

        Under a loose reading of Sperry, a patent agent may be taken as being authorized to set out their own shingle and run a “law firm” in a boutique style (only doing patent prosecution). Yet, such a person may well have ZERO training or even knowledge of legal ethics or contract law or business law, from which, the running of a business of a “law firm” requires, and to a very real degree, may dictate the state of Florida’s concerns IN the Sperry case.

        Any patent agents out there with their own shingle care to comment?

        (I recognize that SOME patent agents may well be cognizant of such things as IOLTA accounts and the archetypical 5 C’s from Legal Ethics, but I am pointing out that there are no requirements for such that flow directly from a reading of Sperry.)

        1. 3.1.2.1

          “Yet, such a person may well have ZERO training or even knowledge of legal ethics or contract law or business law, from which, the running of a business of a “law firm” requires, and to a very real degree, may dictate the state of Florida’s concerns IN the Sperry case.”

          If I recall, there were a significant number of ethical questions on the USPTO patent agent examination. A prospective agent must at least have enough training to be able to answer the questions properly, and that’s about as much as you can expect from any attorney passing any bar.

          1. 3.1.2.1.1

            Would love to know more mike – since the MPEP is the only thing tested, where in the MPEP are these ethical questions coming from?

            I can guarantee you that it is NOT the same as the Legal Ethics that Attorneys must know.

  5. 2

    Do you need any expertise (legal or technical) to draft a patent application these days?

    I’m a banker, I have a concept for charging fees to customers using a computer, and determining whether someone is doing something “suspicious.” In some cases, I use remote servers. And hierarchies. And AI. And dynamic processing.

    I know that sounds super cool but it’s nothing compared to this card game I invented, which is very practical for exercising your mind and reducing the risk of a slower brain as one enters the twilight years.

    The big issue here is : why does Colorado h@ te freedom? Dak is a True American, a pioneer and a forward thinker. The idea that one would need a government license to engage in commerce is one that would have repulsed The Framers.

    1. 2.2

      Does this typical illogical far right wing disdain for expertise and licensing apply to banking? [That worked great for the U.S. in 2008.] How about new airplanes lately?
      Sure you can file your own patent application. As far as I am aware you can also remove your own appendix if you want to.

      1. 2.2.1

        Paul, if you need your appendix removed you need to contact my Super Central Medical Agency. I’ll hook you up with some expert surgeons who will get that bugger out at bargain prices, without the usual price gouging. We can save you money by preemptively removing other troublesome tissues. We also offer amazing enemas while you are unconscious. Be restored today!!

        Now where is the fine print toggle on this comment section?

    2. 2.4

      There is no rule that says you can’t file your own patent application for your card game. You are free to prosecute any patent application for which you are a named inventor. You are not free to offer those services to anyone else unless you are a registered patent attorney or patent agent, not even if you are getting real attorneys to do the work.

      It’s not that hard to become a patent agent. If you really want to prosecute patents for other people, get a bachelor’s degree or equivalent in a hard science and take the exam.

      You’re perfectly free to drive a car on your own land without a driver’s license, but no matter how good a driver you are and how much you value your freedom, nobody wants you driving on the roads without a license, and especially not driving a taxi or bus with other people depending on you.

  6. 1

    OT (and only tangentially related), but Standing was a topic in a per curiam Supreme Court decision today vacating a lower court decision in Frank v. Gaos (involving a class action suit and Google).

    Ronald Mann over at Scotucblog covers this in part by stating:

    What we learned this morning is that the justices will not answer that question this spring. Instead, they vacated the decision of the U.S. Court of Appeals for the 9th Circuit and sent the case back for further consideration in light of the Supreme Court’s 2016 decision in Spokeo v. Robins. The Spokeo court held that a plaintiff in federal court cannot establish standing to sue simply by alleging a violation of a federal statute; the plaintiff must identify some cognizable real-world harm. Because the lower courts considered the standing question before the Supreme Court’s decision in Spokeo, they approved standing without considering the Spokeo standard. Indeed, the lower courts relied on an earlier 9th Circuit decision that was disapproved in Spokeo. Today’s opinion instructs the lower courts to consider the standing question anew, applying the standard that Spokeo articulated.

    See link to scotusblog.com for the full write-up.

    1. 1.1

      I would be curious as to how “bootstrappers” like Jonathon view this “Spokeo” development, as may be analogized to the “alleging of a violation of a Federal Statute” as a reason enough for moving from the deliberately set fora of the administrative agency (knowingly providing a starting point with NO Article III standing) to a second and separate fora WITH an Article III standing requirement, by mere “proclamation.”

      I remain baffled as to how such proponents cannot see how allowing such a maneuver nullifies the Separation of Powers that underlies the foundation of Article III standing.

      There (appears) to be a requirement for actual harm OUTSIDE of the bootstrap mechanism itself.

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