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   Why do you need to pass the patent bar?
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JimIvey
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Re: Why do you need to pass the patent bar?
« Reply #15 on: Sep 1st, 2004, 11:25am »
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I'll just touch on a few things over the last several posts.
 
As for the Florida case, it's a matter of federalism.  In the US, we have a multi-tiered legal system -- e.g., federal, state, local.  Licensing of attorneys for the practice of law is a state matter.  Registration of patent attorneys/agents is a federal manner.  Florida tried to require that federally registered patent agents practicing in Florida become attorneys and members of the Florida state bar.  That's a no-no.  The states are free to legislate things that the federal government leaves un-legislated, but they're not free to un-do or re-do federal legislation.
 
Officially (in California, at least), the practice of law is defined as the offering of a legal opinion.  Of course, everyone does that.  However, if you start to charge money for that, you can expect the state bar to come talk to you.  The most common fact situation for getting into trouble for practicing law without a license is when an attorney allows a paralegal to take on too much responsibility and dispense too much advice to clients.  It's interesting to note that the bar tends to enforce those laws -- if you're not a member, what can they do to you?  They can't disbar you.  I'm sure there are some penalties, but the main import of the rule is to go after attorneys who deligate too much.
 
As to what we're called, I'm a "registered patent attorney."  Mr. Stasik is a "registered patent agent."  As a group, I don't think we have an official name -- hence, the adoption of the not-so-accurate "patent bar."  
 
As for remarking on the "quality" of a patent -- I suppose anyone can do that.  Forgive me for parsing language, but that's what I do.  From a legal standpoint, people aren't concerned so much about how well written a patent is but rather it's legal effect.  Of course, that's affected by the quality of the patent. But the thing that makes analysis of patents a legal matter is that people want to know the patents' legal effect -- is it valid?  is it infringed?  is it enforceable?
 
As for the helpfulness of sitting for the registration exam to do licensing, I'm not sure whether to give it a thumbs up or thumbs down.  I think most licensing attorneys don't go that route.  You should certainly know something about patent law.  The registration exam is focused primarily on procedure -- which can be helpful, but I'm not sure how much.  For example, I can look at a file history and tell you (mostly) why the attorney/agent did what she did and why the various arguments, amendments, and procedural choices were made.  That comes more from experience than the registration exam, but the registration exam will help some.  In short, the registration exam focuses primarily on 37 CFR and licensing/litigating attorneys focus primarily on 35 USC.  Yes, the two are related, but they don't cover exactly the same things.
 
The problem is that I don't think most licensing deals get that involved in the details of prosecution.  A friend of mine who does licensing for a major electronics manufacturer says he prefers to not talk about the specifics of the patents and to just get into "how much" the other party is going to pay.
 
I hope that helps.
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Isaac
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Re: Why do you need to pass the patent bar?
« Reply #16 on: Sep 1st, 2004, 5:24pm »
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on Sep 1st, 2004, 7:38am, Will wrote:
So, let me see if I understand this.  I can give advice about the "quality" of the patent with a JD, but cannot actually file the papers to receive the patent.
 
If it isn't called the patent bar, how do you refer to the license/IP bar?  What do you pass and what do you have when you do?
 
 

 
The registration exam for patent agents and attorneys is widely referred to as the patent bar.  Mr. Stasik just objects to it being called so because bar generally is used to refer to the organization of people licensed by a state to practice law.
 
I've never heard it referred to as an IP bar before.
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Re: Why do you need to pass the patent bar?
« Reply #17 on: Sep 1st, 2004, 5:36pm »
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on Sep 1st, 2004, 5:01am, eric stasik wrote:
Mr. Clark,
Even within the limited scope of the USPTO, agents and attorneys are not completely interchangeable.  
 
For example, as far as I know NONE of the communications between a patent agent and a client are covered by US attorney-client privilege - something that would normally attach to the practice of law in the US. This, of course, could be significant in a US litigation.  
 
Eric

 
They are not quite interchangeable before the PTO primarily because agents cannot represent clients in trademark matters.
 
There can be an issue with attorney/client privilege.  Some courts (as far as I know, only the ones in whatever circuit Mass. is in) have suggested that clients do not have the attorney client privilege with patent agents unless they are supervised by attorneys.  All other courts that have considered the issue extend the privilege to patent attorneys and agents equally.   At least one court has suggested that communications even with attorneys for the sake of obtaining a patent are not privileged.
 
With the exception of trademark matters, PTO rules generally apply equally to practitioners.  I cannot think of any significant way other than the way they are listed on the PTO registry that agents and attorneys are treated differently with respect to patent matters before the PTO.
 
I do agree that when saying that patent agents can practice law, what is really meant is that practice before the PTO in patent matters is the practice of law, and patent agents are allowed to do that.   I would expect that to extend to preparatory matters like taking depositions, advising clients etc. for things like appeals before the BPAI.
reexamination proceedings, protests, and of course filing and prosecuting patent applications.
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Re: Why do you need to pass the patent bar?
« Reply #18 on: Sep 2nd, 2004, 1:21am »
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on Sep 1st, 2004, 11:25am, JimIvey wrote:
I'll just touch on a few things over the last several posts. The problem is that I don't think most licensing deals get that involved in the details of prosecution. A friend of mine who does licensing for a major electronics manufacturer says he prefers to not talk about the specifics of the patents and to just get into "how much" the other party is going to pay.

 
That is often the licensing executive's attitude, but it is my experience that prospective licensees invariably tend to get hung up on the need for a license, arguing that they don't infringe, the patent is invalid, the claims were narrowed by prosecution estoppel, etc.  
 
Each and every one of these objections has to be met by the licensor in a capable and cogent manner or you'll never get around to talking "how much." You also have to be able to independently judge the strength of the opposing arguments to know when to press and when to yield.  
 
Becoming a registered USPTO patent attorney won't necessarily provide you with all the background you need, but it's not a bad place to start.  
 
But that's just my opinion.  
 
Regards,  
 
eric stasik
 
 
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JimIvey
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Re: Why do you need to pass the patent bar?
« Reply #19 on: Sep 2nd, 2004, 10:14am »
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Mr. Stasik raises a very good point.  This friend of mine works for a very large, international, electronics manufacturer and manages a large portfolio in one product area.  He negotiates from a position of strength.  My perception is that most of the readers here are individual inventors or with very small companies.  Such parties won't have the luxury of ignoring the merits of their patent(s).  In short, don't try that at home.
 
However, from the perspective of someone picking out a career in licensing, my point is that the merits of individual patents vary from job-to-job -- from very important to entirely irrelevant.  
 
Regards.
« Last Edit: Sep 2nd, 2004, 10:15am by JimIvey » IP Logged

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