2016 ethics and patent agents - Hricik

• in state or federal courts• What patent agents can and cannot do.. Limited Authority to Practice Law• Patent agents practice law, but they are not lawyers.. UPL: Sperry • Patent agents

Ethics and Patent Agents

David Hricik Professor, Mercer University School of Law

Of Counsel, Taylor English Duma LLP

Write & Speak

Other Info…

Chaired AIPLA, ABARader Clerk 2012

ALI

• in state or federal courts

• What patent agents can and cannot do

• Privilege over client-patent agent

communications

When Representing Others

Before the Office

• USPTO Rules apply (modified 2013).

• Similar to Model Rules and State Rules

but not identical.

• Special Issue:

– Solos need to follow USPTO accounting rules

4

Limits of Rules

• Rules do not necessarily define the

standard of care.

• Any malpractice claim will be in state

court, not federal court, unless there is

diversity.

• Rules often used as “shields” by clients in

Limited Authority to Practice Law

• Patent agents

practice law, but they

are not lawyers

• While not unique, the fact that they are

authorized to practice law only to a limited extent creates

unusual splits and complexities in

practice

APL v UPL

What May Patent Agents Do?

APL v UPL: Sperry

• Patent agents can

prepare and prosecute

applications even though

they are not lawyers and

even though the

“preparation and

prosecution of patent

applications for others

constitutes the practice of

law.”

• But “registration in the Patent Office does not authorize the general practice of law, but

sanctions only the

performance of those services which are reasonably necessary and incident to the

preparation and prosecution of patent applications.”

USPTO Regulation

Practice before the Office in patent matters includes, but is not limited to:

•preparing and prosecuting any patent application;

•consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office;

•drafting the specification or claims of a patent application;

•drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention;

•drafting a reply to a communication from the Office regarding a patent

application; and

•drafting a communication for a public use, interference, reexamination

proceeding, petition, appeal to or any other proceeding before the Patent Trial and Appeal Board, or other proceeding.

The Easy Ends of the Spectrum

A Patent Agent Can’t:

– Respond to office actions

– Conduct a patentability search and opine on patentability

Some Counterintuitive Conclusions

A Patent Agent Can’t:

– Advise who owns an

Opinions: The Purpose Often

Determines the Propriety

• Whether a patent agent can give certain advice depends upon the purpose for

which the client will use the advice… and maybe even the forum in which the

opinion will be used!

Right Purpose?

• Client asks whether a

claim will cover a

competitor’s product

to know, e.g., whether

to file a CIP to include

– Phillips.

Right Purpose?

• Client asks whether

its product infringes a

third party’s patent

• Ever proper?

– Proper so long as (old)

USPTO form is used?

– Never proper?

– What if client then relies on opinion in litigation?

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Patent Agents & Privilege

Some Clarity, but not Much.

disclosing “privileged” information to the

opposing party

– So, merely confidential information can’t be withheld, but privileged can

Only if Supervised: attorney-client privilege only

protects patent agents working under authority

and control of an attorney

Same as Attorney: “The fact that the applicant's patent attorney might employ a patent agent for certain aspects of

No Privilege: Patent agents are “mere solicitors of

patents who fall outside the privilege” and are

“comparable to the employees with legal training who

serve in the mortgage or trust departments of a bank or

in the claims department of an insurance company.”

When Lack of Privilege

May Matter

• Even though agent’s obligation of

confidentiality is the same as a lawyer, agent’s communications with the client may not be as

protected against disclosure – by privilege

to third-parties as those from lawyer to client

CAFC Queen’s U Panel

• CAFC not regional law applies.

• Formalism doesn’t control; but only

“reason and experience” are source of

client privilege Factors supporting:

– Role of patent agents;

– Congressional recognition to act;

– Sperry’s characterization as agents as

“practicing law;” and

• Scope of privilege is “coextensive with the rights granted to patent agents by

Congress.”

• Which returns us to where we began!

• Majority in Queen’s U said no privilege

where, e.g.:

– Agent opines on validity of another patent;

• But Reyna points out that this is part of reexam, IPR, etc….?

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• Now repealed PTO Code

had required patent

pendency of

Queen’s U.

– Hope for clarity in the future!

Beyond the Legal: What to Do

• Judge Reyna dissented in Queen’s U.

• Without clear rules and even then…

– Avoid communicating client confidences

– Avoid forwarding confidential e-mails

– If concerned about particular communications, involve a lawyer

– To extent practicable, be supervised

Thank You

David Hricik