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(Message started by: danizamu on Apr 4th, 2007, 10:05pm)

Title: Ethics of a Patent Agent in a Law Firm
Post by danizamu on Apr 4th, 2007, 10:05pm
Can a patent agent sign a fee agreement written on law firm letterhead without violating professional rules of responsibility?

Title: Re: Ethics of a Patent Agent in a Law Firm
Post by Bill Richards on Apr 5th, 2007, 7:56pm
It would probably depend upon what the fee agreement covers.  Is the agent a partner?  Would signing the agreement bind the firm?  Could be problematical.

Title: Re: Ethics of a Patent Agent in a Law Firm
Post by Wiscagent on Apr 5th, 2007, 10:27pm
If the agent is a partner in a law firm, he or she is already in ethical trouble.

Title: Re: Ethics of a Patent Agent in a Law Firm
Post by TataBoxInhibitor on Apr 5th, 2007, 10:34pm
No fee sharing with non-lawyers.   However, there are exceptions, none of which are present in these facts.

Title: Re: Ethics of a Patent Agent in a Law Firm
Post by Isaac on Apr 6th, 2007, 6:26am

on 04/05/07 at 22:27:11, Wiscagent wrote:
If the agent is a partner in a law firm, he or she is already in ethical trouble.


In some and probably most jurisdictions.  However, I believe (but am not 100% sure) that in DC patent attorneys and agents can partner up to do patent prosecution.


Title: Re: Ethics of a Patent Agent in a Law Firm
Post by TataBoxInhibitor on Apr 6th, 2007, 8:19am

on 04/06/07 at 06:26:25, Isaac wrote:
In some and probably most jurisdictions.  However, I believe (but am not 100% sure) that in DC patent attorneys and agents can partner up to do patent prosecution.


That is pretty interesting.

Title: Re: Ethics of a Patent Agent in a Law Firm
Post by Wiscagent on Apr 6th, 2007, 11:23am
Earlier I wrote “If the agent is a partner in a law firm, he or she is already in ethical trouble.”

I hadn’t considered state bar issues, I was thinking of 37 CFR 10.49, Forming a partnership with a non-practitioner.

    A practitioner shall not form a partnership with a nonpractitioner
    if any of the activities of the partnership consist of the practice of
    patent, trademark, or other law before the Office.

But it appears that I was mistaken.  Now that I take another look at § 10.49, I suppose that any attorney is a potential “practitioner” before the USPTO, at least in trademark issues; and of course any patent agent is a practitioner too.  So at least so far as PTO ethical rules are concerned, a patent agent / attorney partnership is okay.

Do I have that right?

Title: Re: Ethics of a Patent Agent in a Law Firm
Post by Isaac on Apr 6th, 2007, 12:33pm

on 04/06/07 at 11:23:13, Wiscagent wrote:
suppose that any attorney is a potential “practitioner” before the USPTO, at least in trademark issues; and of course any patent agent is a practitioner too.  So at least so far as PTO ethical rules are concerned, a patent agent / attorney partnership is okay.

Do I have that right?


Yes.   IMO any prohibition on the partnering up of patent attorneys and patent agents to do patent prosecution must be due to state law as the PTO rules speak only of relationships between practitioner and non practitioner.




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