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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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Infanti Chair Mfg. Corp., 2006 WL 616267, *3 n.8 (E.D.N.Y. March 6, 2006) (courts have held that Section 261 of the Patent Act does not displace the Uniform Commercial Code in providing a mechanism for perfecting security interests in patents.”) (collecting cases so holding).

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not legally required in order to obtain a patent.87 Further, and unlike virtually all other aspects of patent prosecution, the validity and scope of an assignment does not turn on federal patent law, which the agent is authorized to practice and with which he must be familiar, but instead turns on state contract law. On the other hand, it is extremely common and, if not legally, practically necessary for assignments to be done. Foremost, it is extraordinarily common for an employee to invent subject matter that is subject to an obligation of assignment to the employer.88 If an assignment is not authorized, then in these common cases patent agents would be unable to prosecute the application properly, since getting the application assigned to the employer is a practical requirement for prosecution.

The authorities provide little guidance, but generally restrict the scope of authority narrowly. They also reflect the same divide above: the purpose of the service is what renders it permissible, or not.

This is reflected by one of the few considered opinions on the subject. It prohibits patent agents from preparing contracts or licenses “dealing with patent rights” and also from advising clients “in matters concerning contracts, licenses or assignment dealing with patent rights,” but, nonetheless, permits them to prepare assignments that are “filed simultaneously with a patent application” and to advise clients “concerning contracts, licenses or assignments dealing with patent rights” if they “directly affect and be incident to the filing and prosecution of a patent application.”89 See generally, Jerome S. Gabig, Federal Research Grants: Who Owns the Intellectual Property?, 9 Harv.

J.L. & Publ. Pol’y 639, 644 (1986) (“inventors frequently assign their rights to an employer as condition of their employment contract.”) Richard S. Gruner, Corporate Patents: Optimizing Organizational Responses to Innovation Opportunities and Invention Discoveries, 10 Marq. Intell. Prop. L. Rev. 1, 30 (2006) (“The patents arising out of corporate employees' discoveries are typically required by employment contracts to be assigned to the inventors' corporate employers.”).

Patent Attorneys and Agents, N.J. Unauth. Pract. Op. 9, 1972 WL 19655 (March 30, 1972).

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Other authority takes an even more narrow view, overly-cabined view on this issue. For example, one court went so far as to hold that patent agents may not even use the form-based

assignments authorized and approved by the Patent Office as official forms. That court stated:

The courts of the State of Illinois, and not the United States Patent Office, may determine what constitutes the illegal practice of law in this State. The fact that the defendant used forms instead of original documents I not controlling upon the question of whether or not he was engaged in the practice of law. We have heretofore said that the preparing, drafting, and construing of assignments… relating to letters patent, constitutes the practice of law….90 Thus, the scope of the authorization from the Patent Act, which allows patent agents to practice law when necessary to prosecute patents for their clients, may be under-inclusive at least from the perspective of competency. The Patent Act does not authorize patent agents to provide certain services, even if they may be as qualified as patent lawyers to do so.

6. For Purposes of Privilege, Patent Agents Should be Treated as Lawyers.

A tremendous amount has been written about whether communications between patent lawyers and their clients can, or should, be deemed to be privileged.91 Others have examined the need for a uniform approach to privilege with respect to international and domestic patent agents.92 The courts disagree on even on the most basic question of whether communications in the United States between patent agents and their clients can be privileged.93 This section argues that patent agents should be treated as lawyers for purposes of the attorney-client privilege.

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

See Jonathan G. Musch, Attorney-Client Privilege and the Patent Prosecution Process in the Post-Spalding World, 81 Wash. U. L. Q. 175 (2003) (discussing attorney-client privilege).

James N. Willi, Proposal for a Uniform Federal Common Law of Attorney-Client Privilege for Communications with U.S. and Foreign Patent Practitioners, 13 Tex. Intell. Prop. L.J. 279 (2005) See AGFA Corp. v. Creo Prods., Inc., 2002 WL 1787534 (D. Mass. Aug. 1, 2002) (collecting cases and discussing the split among the district courts on whether a patent agent-client privilege ought to be recognized).

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The Federal Circuit’s law should apply to this question, not the law of the state or regional circuit in which the case is pending.94 Whether and if so to what extent documents that are prepared by a patent agent during patent prosecution can be privileged is obviously a question unique to patent law, since all patent agents can do is practice patent law.

For three reasons, patent agents should be treated as patent lawyers for purposes of privilege.

First, the PTO Code requires patent agents to maintain in confidence information “protected by the... agent-client privilege” to precisely the same extent as it requires patent lawyers to maintain in confidence information “protected by the attorney-client privilege.”95 The PTO Code’s requirement would be rendered somewhat superfluous if there was no patent agentclient privilege.

Second, when the Patent Office adopted this PTO Code provision, the PTO stated the “privilege is applicable in certain cases to communications between agents registered to practice before the PTO in patent cases and their clients.”96 While the Patent Office probably lacks authority to establish a privilege by regulatory fiat, the office’s position is obviously worth weight in the analysis. No court has yet recognized its position on this issue, however.

See In re Spalding Worldwide, Inc., 203 F.3d 800 (Fed. Cir. 2000) (“our own law applies to the issue of whether the attorney-client privilege applies to an invention record prepared and submitted to house counsel relating to a litigated patent.”); In re Echostar, __ F.3d __ (Fed. Cir. May 1, 2006) (“Federal Circuit law applies when deciding whether particular written or other materials are discoverable in a patent case, if those materials relate to an issue of substantive patent law.”) (quoting Advanced Cardiovascular Sys. v. Medtronic, Inc., 265 F.3d 1294, 1307 (Fed. Cir. 2001). In Spalding the Federal Circuit emphasized that application of privilege to documents created during patent prosecution “is unique to patent law” and “clearly implicates substantive patent law.” Spalding, 203 F.3d at 804.

While courts have not yet held that Federal Circuit law applies to whether patent-agent communications are privileged, it logically follows from these cases that Federal Circuit law will apply. That result seems particularly appropriate given the fact that patent agents are authorized only by federal law to practice. No state interest would appear to be implicated, and the need for federal uniformity apparent.

37 C.F.R. § 10.57(a) 49 Fed. Reg. 10012, 10016, citing In re Ampicillin Antitrust Litig., 81 F.R.D. 377, 392-94 (D.D.C. 1978).

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Third, from a functional perspective what patent agents do with respect to patent prosecution is identical to that which patent attorneys do: because communications with patent lawyers can be privileged, from a functional perspective it makes no sense to treat patent agents differently.

For these reasons, courts should hold that patent agents are “lawyers” for purposes of the attorney-client privilege.

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Who are patent agents? Who they really are depends upon what forum is asking the question, and what question is being asked. What is certain is that clients, patent agents, and patent lawyers will continue to face difficult questions in this area for some time to come.



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