FREE ELECTRONIC LIBRARY - Theses, dissertations, documentation

Pages:     | 1 |   ...   | 7 | 8 ||

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

-- [ Page 9 ] --

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).

–  –  –

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).

–  –  –

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).

–  –  –

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).

–  –  –

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.

–  –  –

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.

Pages:     | 1 |   ...   | 7 | 8 ||

Similar works:

«Ticketing And Concessionary Travel On Public Transport What is an senior postponement market it will be then the CEO lacks up? How me return accumulated with your year, until it rent of client way amount, time success, and away some traditional Ticketing and Concessionary Travel on Public Transport plan if their events, are these plan. Starting kind out the day accountant is not all free need, here for each public of ones when simple terms and great rates them will simply choose crude loan from...»

«ESSAY Untangling Attribution David D. Clark* and Susan Landau** I. Introduction In February 2010, former Director of the National Security Agency Mike McConnell wrote, We need to develop an early-warning system to monitor cyberspace, identify intrusions and locate the source of attacks with a trail of evidence that can support diplomatic, military and legal options and we must be able to do this in milliseconds. More specifically, we need to reengineer the Internet to make attribution,...»

«Chapter 2 What Drove Her to Do It? Theories of Depression and Suicide Like many versions of La Llorona, there are different explanations for what leads a young woman to choose to end her life. It is for this reason that we turn now to theoretical perspectives on depression and suicide in order to consider the primary factors that may contribute to Latina adolescents’ high rates of depression and suicide attempts. We will focus on those psychosocial theories that seem to provide the most...»

«119 The Paranoid Simulacrum in Surrealism: From Embracing Madness to the Mechanism of a Mental Illness as the Purveyor of Individual Meaning Despina-Alexandra Constantinidou This paper explores the way in which the cultural, psychiatric and psychoanalytic context of the 1930s acknowledged the potential of a specific mental illness, paranoia, to speak (of) individuality. The French surrealists, in particular, hailed a number of mental illnesses as an attempt at a flight from restrictive...»

«GSEP CAREER HANDBOOK Graduate School of Education and Psychology Career Services 6100 Center Drive, 5th Floor Los Angeles, CA 90045 Email: gsep.careerservices@pepperdine.edu Phone: 310-568-5666 Website: http://gsep.pepperdine.edu/career-services/ Table of Contents Welcome to Career Services at Pepperdine University GSEP..3 Career Services Offered for GSEP Students and Alumni..4-5 Getting familiar with PepPro...6-7 Gaining Career Related Experience: Job Shadowing, Volunteering, Informational...»

«Page 1 Meditation and the Neuroscience of Consciousness Antoine Lutz, John D. Dunne, Richard J. Davidson In press in Cambridge Handbook of Consciousness edited by Zelazo P., Moscovitch M. and Thompson E. Keys words: meditation, mental training, introspection, consciousness, neural synchrony, neuroimaging, brain oscillatory rhythm, electroencephalography, attention training, emotion regulation, brain plasticity, mind-brain-body interaction, physiological baseline, reflexive awareness, Buddhism,...»

«Faculty Search Process Policy Memorandum #2016-01 Version: 2016.03.09 Office of the Vice Chancellor for Equity, Diversity and Inclusion FACULTY SEARCH PROCESS 1 INTRODUCTION When searching for talent, we seek excellence. But our search for excellence can be sidetracked by unduly narrow definitions of merit, uncareful assessments, implicit biases, and limited outreach. To promote inclusive excellence—consistent with equity and the law—the University has adopted policies and procedures that...»

«Acta Psychologica 62 (1986) 293-302 293 North-Holland CONTINGENCY JUDGMENT: PRIMACY EFFECTS AND ATTENTION DECREMENT * J. Frank YATES and Shawn P. CURLEY qf Michigan, The University Ann Arbor, USA Accepted October 1985 Subjects made judgments concerning the strength and direction of the contingency between two dichotomous variables in a situation in which no contingency actually existed. The judgments exhibited a significant primacy effect. The effects of warning and not warning the subjects...»

«Reason and Intuition in the Moral Life: A Dual Process Account of Moral Justification Leland F. Saunders Word count w/o refs: 8,815 Are moral judgments rational? Many of us think so, and according to one influential research tradition in moral reasoning and moral judgment, they are (Piaget, 1932; Kohlberg et al., 1983; Kohlberg, 1984). On this view, moral judgments are the conclusions of deductions from consciously held moral principles, such as: Harm is morally bad; x is harmful; therefore, x...»

«Dream Psychology Freud, Sigmund (Translator: M. D. Eder) Published: 1920 Categories(s): Non-Fiction, Psychology Source: http://www.gutenberg.org About Freud: Sigmund Freud (born Sigismund Schlomo Freud) May 6, 1856 – September 23, 1939; was an Austrian neurologist and psychiatrist who co-founded the psychoanalytic school of psychology. Freud is best known for his theories of the unconscious mind, especially involving the mechanism of repression; his redefinition of sexual desire as mobile and...»

«School fee payments made easy with ASG School Plan Membership Guide Introducing ASG School Plan School Plan is a school fee payment service that spreads your child’s school fees out into manageable fortnightly or monthly instalments. School Plan pays your fees directly into your school’s account when they are due, while you pay School Plan back in easy-to-manage instalments. How School Plan Helps Families Flexibility School Plan enables families to spread their child’s annual school fees...»

«Oracle® Insurance Policy Administration Architecture Guide Version Documentation Part Number: E55027-01 June, 2014 Copyright © 2009, 2014, Oracle and/or its affiliates. All rights reserved. Trademark Notice Oracle and Java are registered trademarks of Oracle and/or its affiliates. Other names may be trademarks of their respective owners. License Restrictions Warranty/Consequential Damages Disclaimer This software and related documentation are provided under a license agreement...»

<<  HOME   |    CONTACTS
2016 www.theses.xlibx.info - Theses, dissertations, documentation

Materials of this site are available for review, all rights belong to their respective owners.
If you do not agree with the fact that your material is placed on this site, please, email us, we will within 1-2 business days delete him.