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[Wiscagent]

What is the different between what you propose, and somebody who owns a business, hiring some bum off the street, and having the bum prepare a will for that somebody?  It would still be UPL.

Perhaps a better question would be at what point does general advice become UPL?

Fred the 'bum off the street' works for Joe, neither of them are lawyers.  Joe is preparing his own will.  Joe asks Fred to take a look at the will and comment.  Fred tells Joe to make sure which of his kids, step kids, and grandkids are included; and Fred sagely tells Joe "That 'per stirpes' thing is confusing, make sure you get it right."  Does that cross the line to UPL?  I doubt it.

[klaviernista]

OP, what state/country are you in?  In the U.S., what constitutes the "practice of law" varies by state.

[eeengineer]

I AM THE OP AND MY RESIDENCE IS IN WISCONSIN BUT THE INDIVIDUAL I AM WANTING TO HELP IS A RESIDENT OF MINNESOTA.
I TALKED TO (I BELIEVE HE WAS) AN ATTORNEY AT THE PATENT OFFICE THIS MORNING.  HE INDICATED I COULD NOT HELP MY ASSOCIATE EVEN IF I DID IT AS AN EMPLOYEE.  I SAID THAT TO ME THEN THAT IMPLIED THAT I COULD NOT BRING INTO MY OWN BUSINESS A NON-REGISTERED EMPLOYEE TO HELP ME WITH FILING MY OWN PATENT APPLICATIONS, AND HE SAID THAT WAS CORRECT.   I SAID DO YOU MEAN I CAN'T EVEN HIRE A DRAFTSMAN TO MAKE DRAWINGS OF MY INVENTION, AND HE SAID I COULD HIRE SOMEONE NON-REGISTERED TO MAKE DRAWINGS BUT THAT NON-REGISTERED PERSON COULD NOT WRITE SPECIFICATION OR CLAIMS, EVEN IF I FILED MYSELF.  I GUESS I FAIL TO SEE THE DIFFERENCE BETWEEN DRAFTING A DRAWING AND DRAFTING SOME WORDS, AS A DRAWING IS JUST AS MUCH A REQUIREMENT OF AN APPLICATION AS A CLAIM OR SPECIFICATION. 
SOMEONE SUGGESTED I "JUST" GO PASS THE EXAM, AND MY REPLY IS THAT I AM SIXTY YEARS OLD AND NOT REALLY INTERESTED IN GOING INTO THIS LINE OF WORK.  IT HARDLY SEEMS WORTH IT FOR THIS ONE CASE TO SPEND THE TIME, MONEY AND A TRIP TO ARLINGTON REQUIRED TO TAKE THE TEST.
IN READING EITHER THE CFR OR MPEP THERE WAS A SECTION INDICATING AN EXCEPTION COULD BE MADE FOR INDIVIDUAL APPLICATIONS WHERE THE PERSON "PRACTICING" BEFORE THE PATENT OFFICE DID NOT NEED TO BE REGISTERED. I MAY LOOK INTO THIS; DOES ANYONE KNOW OF REASONS THE PO WILL ALLOW THIS ONE-OFF WORK.
AGAIN, THANKS FOR EVERYONE'S HELP.

[klaviernista]

Interestingly, Wisconsin does not appear to define what constitutes the "practice of law" or the "unauthorized practice of law."  However, Minnesota clearly (IMO) bars non-attorneys from assisting in the preperation of legal documents, which include patent applications (EDIT:  Of course, non-lawyer patent agents are expressly permitted by federal law to prepare patent applications)/Edit  See below.

As to the use of a draftsperson, many jurisdictions permit non-lawyers to assist in the preparation of legal documents, provided that such non-lawyers are supervised by a licensed attorney who is responsible for their actions.  This is how many law students gain experience in the IP field, namely by working for a licensed practitioner who allows them to assist in the preparation of patent applications etc., and hwo ultimately takes responsibility for their actions.

From https://www.revisor.mn.gov/statutes/?year=2007&id=481.02
Minnesota Statutes
481.02 UNAUTHORIZED PRACTICE OF LAW.
Subdivision 1. Prohibitions.  It shall be unlawful for any person or association of persons,
except members of the bar of Minnesota admitted and licensed to practice as attorneys at law,
to appear as attorney or counselor at law in any action or proceeding in any court in this state
to maintain, conduct, or defend the same, except personally as a party thereto in other than a
representative capacity, or, by word, sign, letter, or advertisement, to hold out as competent or
qualified to give legal advice or counsel, or to prepare legal documents, or as being engaged
in advising or counseling in law or acting as attorney or counselor at law, or in furnishing to
others the services of a lawyer or lawyers, or, for a fee or any consideration, to give legal advice
or counsel, perform for or furnish to another legal services, or, for or without a fee or any
consideration, to prepare, directly or through another,for another person, firm, or corporation, any
will or testamentary disposition or instrument of trust serving purposes similar to those of a will,
or, for a fee or any consideration, to prepare for another person, firm, or corporation, any other
legal document, except as provided in subdivision 3.


Of course, I am NOT an expert on legal ethics.  Consult with your local bar association for advice.

[Wiscagent]

klaviernista,

Thanks for the citation of the Minnesota UPL.  Unfortunately it raises more questions than it resolves.  Examples:
 - Where do patent agents fit in under Minnesota law?
 - Where do CPAs (who are allowed to represent clients in Federal Tax court) fit in?
 - How does a business represent itself in court?  Is a business required to hire an attorney or can a (non-attorney) officer or a (non-attorney) employee represent the business?
 - How does 37CFR§ 3.71 work under Minnesota law?

[smgsmc]

You personally are an inventor.  Your business is an assignee (assuming you assigned your rights to your business).  You are confusing inventor (who may prosecute his own application before the USPTO) with an assignee (who does not have that right).  It does not matter who signs the documents, preparing the documents is practicing before the USPTO.

What about all the tech specs, law students, and even associates, who haven't taken the patent bar, yet do prep and pros.  A registered atty/agent in the firm reviews the material and signs the docs for filing.

[ExaminerEsq]

I AM THE OP AND MY RESIDENCE IS IN WISCONSIN BUT THE INDIVIDUAL I AM WANTING TO HELP IS A RESIDENT OF MINNESOTA.
I TALKED TO (I BELIEVE HE WAS) AN ATTORNEY AT THE PATENT OFFICE THIS MORNING.  HE INDICATED I COULD NOT HELP MY ASSOCIATE EVEN IF I DID IT AS AN EMPLOYEE.  I SAID THAT TO ME THEN THAT IMPLIED THAT I COULD NOT BRING INTO MY OWN BUSINESS A NON-REGISTERED EMPLOYEE TO HELP ME WITH FILING MY OWN PATENT APPLICATIONS, AND HE SAID THAT WAS CORRECT.   I SAID DO YOU MEAN I CAN'T EVEN HIRE A DRAFTSMAN TO MAKE DRAWINGS OF MY INVENTION, AND HE SAID I COULD HIRE SOMEONE NON-REGISTERED TO MAKE DRAWINGS BUT THAT NON-REGISTERED PERSON COULD NOT WRITE SPECIFICATION OR CLAIMS, EVEN IF I FILED MYSELF.  I GUESS I FAIL TO SEE THE DIFFERENCE BETWEEN DRAFTING A DRAWING AND DRAFTING SOME WORDS, AS A DRAWING IS JUST AS MUCH A REQUIREMENT OF AN APPLICATION AS A CLAIM OR SPECIFICATION. 
SOMEONE SUGGESTED I "JUST" GO PASS THE EXAM, AND MY REPLY IS THAT I AM SIXTY YEARS OLD AND NOT REALLY INTERESTED IN GOING INTO THIS LINE OF WORK.  IT HARDLY SEEMS WORTH IT FOR THIS ONE CASE TO SPEND THE TIME, MONEY AND A TRIP TO ARLINGTON REQUIRED TO TAKE THE TEST.
IN READING EITHER THE CFR OR MPEP THERE WAS A SECTION INDICATING AN EXCEPTION COULD BE MADE FOR INDIVIDUAL APPLICATIONS WHERE THE PERSON "PRACTICING" BEFORE THE PATENT OFFICE DID NOT NEED TO BE REGISTERED. I MAY LOOK INTO THIS; DOES ANYONE KNOW OF REASONS THE PO WILL ALLOW THIS ONE-OFF WORK.
AGAIN, THANKS FOR EVERYONE'S HELP.

Is it possible to turn off your Caps lock?

[Wiscagent]

IN READING EITHER THE CFR OR MPEP THERE WAS A SECTION INDICATING AN EXCEPTION COULD BE MADE FOR INDIVIDUAL APPLICATIONS WHERE THE PERSON "PRACTICING" BEFORE THE PATENT OFFICE DID NOT NEED TO BE REGISTERED. I MAY LOOK INTO THIS; DOES ANYONE KNOW OF REASONS THE PO WILL ALLOW THIS ONE-OFF WORK.

OP -

Take a look at 37 CFR §3.71.  I'm not an expert in UPL or ethics of practice before the PTO; but it appears to me that as an authorized employee of the assignee, you could represent the assignee.  I'm hoping that someone else will comment on the rule.  Perhaps you should call back the PTO and ask how the office interprets the rule.

[klaviernista]

klaviernista,

Thanks for the citation of the Minnesota UPL.  Unfortunately it raises more questions than it resolves.  Examples:
 - Where do patent agents fit in under Minnesota law?
 - Where do CPAs (who are allowed to represent clients in Federal Tax court) fit in?
 - How does a business represent itself in court?  Is a business required to hire an attorney or can a (non-attorney) officer or a (non-attorney) employee represent the business?
 - How does 37CFR§ 3.71 work under Minnesota law?

First things first, let me be clear that I know nothing about Minnesota law in particular.  I am not licensed to practice there, and I am not holding myself out to be an expert in legal ethics or the Minnesota rules governing professional conduct.  As noted in my prior post, the OP should consult his bar association/ethics hotline for guidance.

That being said, I am well versed in reading statutes and rules in general, and it appears to me that the Minnesota rule I quoted clearly bars non-attorneys from preparing legal documents (noting, of course, the likely (and usual) exception for non-attorneys working under the supervision of an attorney).  My point is that the OP is treading a fine line.  It would be one thing if an inventor-employee prepared an application that was later prosecuted by himself (pro se) or by his employer as an assignee of record.  Both of those types of representation are authorized by federal rule and statute.  But the OP is holding himself out to his friend as someone who is well versed in patent law, and is expecting to receive compensation for nothing more than preparing a patent application.  In my view, that means that the OP is offering to prepare a legal document for his friend, when there is no state or federal authority authorizing him to do so.

As to the ability of patent agents to practice before the USPTO regardless of their state of residence, read Sperry v. Florida.  In that case, the Supreme Court unequivocally holds that the States cannot abrogate the authority of the Commissioner of the USPTO to authorize non-lawyers to practice patent law, which authority is specifically granted by federal statute (specifically, 35 U.S.C. 31).  The full text of the case is available at http://supreme.justia.com/us/373/379/case.html.  Furthermore, 37 C.F.R. 11.6(b) expressly permits patent agents (non-lawyers having passed the registration exam) to practice patent law.  Thus, a patent agent may represent a client in matters before the USPTO, regardless of their state of residence.

I know nothing about CPA's or the legal representation they may perform, either in Minnesota or a federal tax court.

As to 37 C.F.R. 3.71, I suspect that it would work under Minnesota law in much the same way as 37 C.F.R. 11.6(b) and 35 U.S.C. 31 above.  As noted above, the Supreme Court has held that the States cannot abrogate the authority of the USPTO commissioner to authorize non-lawyers to practice before the USPTO.  Here, 37 C.F.R. 3.71 authorizes the assignee of record to conduct prosecution of an application.

I suspect that there is some provision permitting a representative of a company (e.g., the president, CEO, etc., i.e., someone with authority to bind the company) to represent the company's interests in a legal proceeding, without formal legal representation.  I am not engaged in the practice of business law, however, and thus cannot speak to the particular mechanism/rule by which a business may or may not represent itself in court. 

[klaviernista]

You personally are an inventor.  Your business is an assignee (assuming you assigned your rights to your business).  You are confusing inventor (who may prosecute his own application before the USPTO) with an assignee (who does not have that right).  It does not matter who signs the documents, preparing the documents is practicing before the USPTO.

What about all the tech specs, law students, and even associates, who haven't taken the patent bar, yet do prep and pros.  A registered atty/agent in the firm reviews the material and signs the docs for filing.

In most (I suspect all) states, there is an exception under the rules of professional conduct for non-lawyers working under the supervision of a licensed attorney.  E.g., see Model rule 5.3 (available at http://www.abanet.org/cpr/mrpc/rule_5_3.html).  The key distinction between rule 5.3 and the OP's circumstance is the supervision by a licensed attorney (or in the OP's circumstance, the lack thereof).

[klaviernista]

IN READING EITHER THE CFR OR MPEP THERE WAS A SECTION INDICATING AN EXCEPTION COULD BE MADE FOR INDIVIDUAL APPLICATIONS WHERE THE PERSON "PRACTICING" BEFORE THE PATENT OFFICE DID NOT NEED TO BE REGISTERED. I MAY LOOK INTO THIS; DOES ANYONE KNOW OF REASONS THE PO WILL ALLOW THIS ONE-OFF WORK.

OP -

Take a look at 37 CFR §3.71.  I'm not an expert in UPL or ethics of practice before the PTO; but it appears to me that as an authorized employee of the assignee, you could represent the assignee.  I'm hoping that someone else will comment on the rule.  Perhaps you should call back the PTO and ask how the office interprets the rule.

Calling the USPTO to get some clarification is not a bad idea, but I would still call the bar association in my state and ask for their assistance.  If I recall correctly, there is a fairly robust set of case law saying that a misrepresentation by a government employee will not estop the government from taking any appropriate action against an individual who relied on the erroneous advice.  Not to say that the USPTO will give the OP bad advice.  But in the event that the USPTO employee the OP talks to is incorrect about the application of the rule, the OP likely would not be protected by his reliance on the misrepresentation by a government employee.  Better to have the bar association chime in on the issue and/or directly research the issue.

[Kaitlin]

I GUESS I FAIL TO SEE THE DIFFERENCE BETWEEN DRAFTING A DRAWING AND DRAFTING SOME WORDS, AS A DRAWING IS JUST AS MUCH A REQUIREMENT OF AN APPLICATION AS A CLAIM OR SPECIFICATION. 

 
Members of the patent bar can correct me if I'm wrong, but it seems to me (from a patent litigation standpoint) that, while the drawings are important, much, much more hangs on the wording and arrangement of the claims.  "Drafting" language is not the same as "drafting" a drawing.  What goes into the specification and how the claim(s) is/are structured require a much broader understanding of patent law than just the conventions and rules for rendering 2-dimensional illustrations.  Further, I would assume that in drafting a drawing the draftsman doesn't add a whole lot of his or her own interpretation.  Drafting language, unless you're just serving as a typist or editor, involves much more.   

[BobRoberts]

eeengineer said:
"I GUESS I FAIL TO SEE THE DIFFERENCE BETWEEN DRAFTING A DRAWING AND DRAFTING SOME WORDS, AS A DRAWING IS JUST AS MUCH A REQUIREMENT OF AN APPLICATION AS A CLAIM OR SPECIFICATION."

Kaitlin said:
"...Further, I would assume that in drafting a drawing the draftsman doesn't add a whole lot of his or her own interpretation..."

I agree Kaitlin.  The draftsman is not creating the drawings, but is taking the informal Figures of a patent application and converting them to the Formal Requirements for a Patent application.  The draftsman will make sure that the margins, reference numerals, shading, etc... are proper under the rules of the PTO, but does not create the actual content of the Formal Drawings.  The content is provided to the draftsman/draftsperson.

[Wiscagent]

Better to have the bar association chime in on the issue and/or directly research the issue.

I expect the bar association will say that a lawyer is needed.

It's like asking a medical technician if the guy with some first aid training can handle an injury.  Or asking a nurse if the medical technician can handle an injury.  Or asking a doctor if a nurse can handle an injury. 

Most individuals will explain how their particular specialty makes them better qualified to handle a situation than other specialists.  Unless resolving the problem is messy, demeaning, or does not pay well.

[bleedingpen]

Better to have the bar association chime in on the issue and/or directly research the issue.

I expect the bar association will say that a lawyer is needed.

It's like asking a medical technician if the guy with some first aid training can handle an injury.  Or asking a nurse if the medical technician can handle an injury.  Or asking a doctor if a nurse can handle an injury. 

Most individuals will explain how their particular specialty makes them better qualified to handle a situation than other specialists.  Unless resolving the problem is messy, demeaning, or does not pay well.

Ha so true!  It is like asking a financial planner if you need a financial planner....