3 thoughts on “March-In Rights

  1. 1

    Off topic, but thinking about LinkedIn, Julie Burke has a LinkedIn thread asking whether it constitutes unauthorized practice of law for the USPTO to offer advice on their website about language for use in patent assignment docs. After all, ownership of patents is governed by state or foreign law—not U.S. federal law—so how is the USPTO in a position to offer advice about what sort of language is legally sufficient under (e.g.) Kansas law, or Brazilian law?

    By the same token, is it unauthorized practice of law for patent agents to handle assignments? The logic of Sperry v. Florida—the case that held that state bar authorities have no power to regulate patent agents—was predicated on the premise that patent agents are not involved with state law. Assignments, however, do involve state law. Is it possible that the state bar can regulate patent assignments, but not the drafting and prosecution of patent applications?

    1. 1.2

      Great questions.

      If I recall correctly, while as an agent, all of my work in anything related to assignments was supervised and under the name of a state-barred attorney (and not under my own authority).

      Would that cover your question?

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