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«DAVID HRICIK Associate Professor of Law Mercer University School of Law 1021 Georgia Ave. Macon, GA 31201 hricik_d State Bar of Texas 20TH ...»

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Thus, patent agents may: provide inventors or applicants with an opinion as to the patentability of an invention; prepare the patent application including the specification, claims, and official drawings; advise applicants what action they should take, if any, after rejection; and prepare and file amendments and responses to office actions.72 On the other hand, it is clear that a patent agent cannot write a will, file a patent infringement lawsuit in federal court, or take a deposition in connection with an infringement suit. Those matters certainly are not necessary and incident to prosecuting patent applications to issuance. Likewise, engaging in patent litigation, trademark filings, and similar pursuits is not incident to patent prosecution.73 But beyond those obvious categories, the boundaries become less clear. Even some matters that may on first blush appear incident to prosecution have been held to be outside the safe harbor of Sperry. For example, a patent agent “may not advise his client as to the ownership of an invention such as where a question of ownership arises by virtue of employment or other contractual relationship between his client and others.”74 That conduct would be unauthorized, because such determinations are not incident to patent prosecution, and it would constitute the practice of law because it obviously involves interpretation of contracts, which is clearly the practice of law.

Harry Moatz, Avoiding Misconduct Complaints in Patent Prosecution, 80 PLI/NY 29 (Aug. 2000). Mr.

Moatz is the current director of the Office of Enrollment and Discipline, the disciplinary entity within the Patent Office. See id.

A New Jersey ethics opinion noted:

(i) He may not advise a client respecting litigation in the Courts of the State of New Jersey, including litigation involving issues rising under patent law.

(j) He may not advise clients concerning rights or liabilities in connection with trade marks nor may he represent clients in the assertion of trade mark rights or in defense of liability under trade mark rules.

(k) He may not represent clients in the filing and prosecution of applications for registration of trade marks nor the prosecution of oppositions to the registration of trade marks in the United States Patent Office unless and except to the extent that Congress may preempt this field of law.

He may not represent clients in the filing and prosecution of applications for registration of trade marks nor in the prosecution of opposition to the registration of trade marks in the Office of the Secretary of State of New Jersey.

Id.

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Likewise, even though patent prosecution is but one of several possible means to protect intellectual property, a patent agent can “not advise his client as to what the client's rights may be under forms of legal protection available under federal or state law” instead of patent protection, such as trade secret protection, but “he may advise his client that there are alternate forms of legal protection on which he should seek advice from an attorney admitted to practice in this state.” 75 Again, advice as to the scope of alternate forms of protection is not incident to the prosecution of patents, and so is unauthorized but doing soclearly requires legal advice, and so constitutes the practice of law.

The most interesting and difficult questions involve areas where the patent agent has been deemed by federal law competent to provide the type of advice at issue, but not for the purpose for which the client seeks it. One example concerns whether patent agents can advise clients concerning validity, infringement, or the scope of an issued patent, as compared to a pending application that the agent is prosecuting for the client. Whether they are authorized to do so, surprisingly, turns on why they have been asked to do so: they may not do so “except incident to the filing and prosecution of a patent application.” 76 There are several variations of this scenario which shed light on the issue.

One variation is where the client has asked a patent agent whether a claim in an application the agent is prosecuting will cover a competitor’s product. Courts should hold that this conduct is authorized by federal law. Drafting claims is clearly incident to patent prosecution, and satisfying the duty to obtain claims that the client wants is a necessary part of

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that obligation.77 Likewise, patent agents should be permitted to advise clients as to whether a competitor’s product will infringe an issued patent if that advice is necessary for the client to decide whether to file a new or continuation application, or to amend claims of an existing application. Deciding whether to seek a patent, and to seek broader claims by amending a pending application or filing a continuation, each is clearly incident to patent prosecution.

Similarly, a client may need to know whether its product is covered by a patent to know whether to have the patent agent file an application. Such opinions ought to be deemed incident to patent prosecution, and thus be authorized.

But the purpose for which such advice is obtained is critical. What a patent agent cannot do, however, is provide an opinion to a client about whether the client’s product infringes a third party’s patent when the purpose of obtaining the advice is not to prosecute an application or to decide whether to otherwise broaden claims. One reason to do so, for example, is to obtain an “opinion of counsel” to provide protection against a claim of willful infringement.78 Such opinions are not incident to patent prosecution, and so would not be authorized, and clearly involve the practice of law. Thus, a patent agent cannot advise a client whether a proposed product infringes a third-party’s patent or otherwise provide infringement analyses unless the purpose of the advice is incident to patent prosecution. The Patent Office has authorized patent agents to conduct activities that are reasonably related to prosecution: advising clients whether their products infringe third party patents certainly is not necessary for prosecution, at least in the abstract.





See David Hricik, Aerial Boundaries: The Duty of Candor as a Limitation on the Duty of Patent Practitioners to Advocate for Maximum Patent Coverage, 44 S. Tex. L. Rev. 205 (2002) (discussing the duty to obtain maximum patent coverage for clients and what that obligation entails).

See generally, William F. Lee & Lawrence P. Cogswell, III, Understanding and Addressing the Unfair Dilemma Created by the Doctrine of Willful Patent Infringement, 41 Hou. L. Rev. 393 (2004) (discussing purpose and use of opinions of counsel).

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Another reason why a client may ask a patent agent to opine on the scope of the claims of an issued patent is to determine whether the client’s product is covered by the issued patent, so that the client can decide whether to file a patent application, or not. In this circumstance, the client may need advice about an issued patent in order to know whether to file an application that covers the client’s own product. Under such circumstances, the patent agent’s conduct ought to be deemed authorized. Conversely, it would be unauthorized where the advice was sought for reasons other than whether to obtain a patent.

These examples show that what determines whether a patent agent may give advice is not the substance of the advice or whether the patent agent has the training to give it: it is the purpose for which the advice is used that determines the propriety of giving it. If the purpose is prosecution, Sperry provides authority.79 From a functional standpoint this dichotomy may not be true as to all patent agents. The duty of competency requires for example, to know the law of obviousness and to be able to make judgments and legal arguments on behalf of clients on those issues during prosecution. A client is fully entitled to rely on a patent agent to advise on whether a proposed claim is obvious, for example. From the perspective of protection of clients, it doesn't make a whole lot of sense to deny them the ability to obtain the same advice when the question is not whether a proposed claim is invalid as obvious, but when an issued one is.

From a legal and a practical perspective, though, the dichotomy persists.

The same dichotomy exists with respect to advice fro patent agents concerning invalidity. A patent agent must determine for example, whether a proposed claim is valid over the prior art. It is not necessary for patent prosecution, however, for a client to know whether a third party’s patent is invalid. Even though the legal knowledge and skill required to analyze whether a proposed claim is valid over the prior art is essentially a proposed no different than that required to determine whether a claim in an issued patent is valid, a patent agent can only do the former. The latter constitutes the unauthorized practice of law.

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From the legal perspective, where the advice is not incident to patent prosecution, it is unauthorized by federal law. Because it is the practice of law, it is the unauthorized practice of law. Thus, even if patent agent is highly involved in a client’s prosecution activities, and so knows the prior art and its landscape, a patent agent is clearly not authorized to provide an opinion on noninfringement or invalidity to a client about another patent.80 Clearly, a patent agent can prosecute patent applications without giving such opinions, and they are not incident to prosecution. Further, the courts have stated that, the fact that an opinion was not from a patent attorney, but instead from a patent agent, may show the client’s reliance upon the opinion was not reasonable.81 Indeed at least one court has suggested that reliance on an opinion from a patent agent is improper.82 From the practical perspective, at least one court has suggested that the knowledge needed to prosecute applications is not necessarily the same knowledge needed to conduct infringement analyses. That court wrote: “In our opinion, the rendering of opinions relating to the infringement of patents and the enforcement of patents… very definitely involves the practice of law. Whether or not a patent is violated depends upon many factors, which question can only be determined by the courts, federal or state as the case may be, presented by duly licensed attorneys at law.”83 To an extent, of course, this may be true: to the extent that See generally, Edward Poplawski, Effective Preparation of Patent Related Exculpatory Legal Opinions, 29 Am. Intell. Prop. L.Q.J. 269 (2001) (discussing need for and way to prepare such opinions).

See Edward Poplawski, Effective Preparation of Patent Related Exculpatory Legal Opinions, 29 Am. Intell.

Prop. L.Q.J. 269, 286-87 (2001) (stating that an opinion “should be given by a qualified United States patent attorney. As such, an opinion by a non-attorney, including even a patent agent, a general attorney, or a foreign attorney is normally entitled to little weight.”). Under this view, if an opinion is obtained, the fact that it came from a nonlawyer patent agent does not preclude reliance, but reduces reliability of the opinion.

No direct authority holding that only an attorney must given an opinion, though at least one court has intimated that opinions from patent agents are insufficient. See Signtech USA Ltd. v. Vutek, Inc., 44 U.S.P.Q.2d (BNA) 1741, 1750 (W.D. Tex. 1997) (stating that "any oral opinion given by a patent agent not yet licensed to practice law was incompetent").

Chicago B. Ass’n. v. Kellogg, 88 N.E.2d 519, 524 (Ct. App. Ill. 1949).

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infringement turns on the admissibility of evidence at trial, for example, a patent agent may lack the training to competently give the advice. It would seem, however, that in many circumstances a patent agent is as technically able as a lawyer to make these determinations.

Another aspect of patent practice that raises interesting questions is the fact that patent prosecution often involves the drafting of contracts. The contract that is common in patent prosecution is an assignment. It is common, but not required,84 for patent applications to be assigned by an employee to her corporate employer because the employee owes an obligation to assign inventions to the employer.

Patent assignments, however, are contracts governed by state law.85 Consequently, the

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nonlawyer may not draft an assignment of property from one person to another, and that is what a patent assignment does.86 Therefore, unless the drafting of an assignment is incident to patent prosecution, it constitutes the unauthorized practice of law.

The authorities have not clearly answered that question, and the governing law is ambiguous. Pointing against this activity being authorized is the fact that patent assignments are Assignments are not required by the patent laws; they are simply an optional means by which ownership of an application is transferred from one person (usually the inventor) to another (usually the inventor’s employer) because of an existing contractual requirement to do so. See generally, Peter Caldwell, Employment Agreements for the Inventing Worker: A Proposal for Reforming Trailer Clause Enforceability Guidelines, 13 J. Intell. Prop. L. 279 (2006) (providing a review of the recent use of such assignment clauses).

Interesting, patents are personal property created by federal law, 35 U.S.C. § 261, but their transfer is made through contracts governed by state law. See Univ. of W. Va. v. Vanvoorhies, 278 F.3d 1288 (Fed. Cir. 2002) (assignment was a matter of state law contract).. While governed by state law, some terms in the contract may be governed by federal law. Id. (assignment was a matter of state law contract, but whether an application was a “continuation-in-part” or not was a question of federal patent law).

Drafting an assignment is the practice of law in many states. See, e.g., In re Burton, 614 A.2d 46, 48 n.4 (Ct. App. D.C. 1992) (jurisdiction’s rule defined the practice of law as “preparing… contracts, assignments... or any other instruments affecting… personal property or any interest therein…”); Okla. B. Ass’n. Legal Eth. Comm. Eth.

Op. 319 (Dec. 13, 2002) (preparation of contracts constituted the practice of law). See also Gasser Chair Co. v.



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