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[klaviernista]

Possibly it's that "intent" thing you mention.  Or maybe just the fact that when defining the invention, the agent is only making a judgment call as to how to make his client's claim language read on the client's invention, while in the other case the agent is making a judgment call as to how to make his client's claim language read on some 3rd party's product.  This may well be a distinction without a difference

First things first, let me apologize if I am being overly argumentative today.  It has been an excrutiatingly long week.  So if I strike a nerve with my writing style, it is completely unintentional.

I think what might be causing you/me/us some consternation is that in the "drafting claims to cover a competitors product" scenario, the agent is implicitly representing to his client that he believes that the competitor's product does, in fact, infringe his proposed claims.  So in a way, simply by drafting a set of claims for the purpose of covering a competitor's product, the agent is (albeit implicitly) communicating a legal opinion to the client which may be outside of the scope of practicing before the USPTO. 

Its a tough nut.  And I agree that we are not likely to find case law addressing the issue spot on (at least not in the case of a patent agent).  OUt of curiosity, I'll poke around over the weekend and see if I can dig up some cases.

[DogDayPM 9er9er9er]

... He said, you have to remember that people who are not lawyers do licensing as well.

.... found a citation from a PTO web page, which I cited nearly verbatim. 

Thanks for the info.  I think I remember that PTO statement, something to the effect that it's the "long-standing policy" of the PTO that an agent can draft an assignment if not prohibited by state law.  The basis being that it (PTO/Federal Gov't) has no business messing with state law purview.

But that again leaves us begging the question, are there any states that do not consider contract drafting to be the practice of law?  Klav' dropped us a survey of the states, but as far as I can tell the ones that don't explicitly name contracts as legal practice have some catch all like "other activities that constitute the practice of law as provided by statute or common law". 

So, at the risk of partially outing yourself(?), in what state(s) did the adjunct professor practice?

But also there may be an alternative interpretation to the phrase "do licensing" that does not mean "draft licenses".  What I mean is, you and the prof may have had differing definitions in your head at the time.  I've got a number of acquaintances who say they "do licensing" for their employers (e.g., a Business Development & Licensing director), but they don't actually draft the licenses.  When they say they "do licensing", they just mean they make money for their company by negotiating license deals.

[DogDayPM 9er9er9er]

It has been an excrutiatingly long week.  So if I strike a nerve with my writing style, it is completely unintentional.

I think what might be causing you/me/us some consternation is that in the "drafting claims to cover a competitors product" scenario, the agent is implicitly representing to his client that he believes that the competitor's product does, in fact, infringe his proposed claims.  So in a way, simply by drafting a set of claims for the purpose of covering a competitor's product, the agent is (albeit implicitly) communicating a legal opinion to the client which may be outside of the scope of practicing before the USPTO. 

Four-day weeks are the worst, eh?  That's because TUESDAY began with a hangover.  But no, you haven't hit any nerves with me. 

The second paragraph of yours quoted above is pretty much where I come out with this - that it essentially touches on an opinion, even if implicit.  In the real world, though, I can't imagine it comes up very often. 

[horsechute]

"there may be an alternative interpretation to the phrase "do licensing" that does not mean "draft licenses".  What I mean is, you and the prof may have had differing definitions in your head at the time."

I anticipated this, but do not think there was any static on the wire. My Professor practiced in a state where I am sure views drafting K's as the practice of law; but that does not say much, because the people he referred to could have been practicing in such mainstream states as Alaska or Louisiana. I did a little offhand caselaw and google research (like 5 minutes worth) and remember coming to the conclusion that it is likely a gray area for a few states that people may be exploiting.

Unless anyone in my current fanbase like Daubleman has anything to add, I think I'll just let this one drop, and go crack open a beer for the start of the weekend.

[klaviernista]

Four-day weeks are the worst, eh?  That's because TUESDAY began with a hangover.  But no, you haven't hit any nerves with me. 

Heh! Tuesday did begin with a hangover.  It ended with the conclusion of a 10 hour long meeting.  Wednesday?  Another 8 hour meeting.  Yesterday?  Yep, you guessed it.  Another meeting.  Today is the first day I've had more than 5 minutes to myself in my office.  That said, the meetings were important, useful, and very interesting.


 

[scientist30]

Senior Strategic Patent Manager
Bachelors or Masters of Science degree from an accredited college or university,
MBA preferred

http://careers.peopleclick.com/careerscp/client_motorola/external/en/jobDetails.do?functionName=getJobDetail&jobPostId=183287&localeCode=en-us&source=Indeed.com&sourceType=PREMIUM_POST_SITE

Disclaimer: For discussion only. Not any type of advice

[dablueman]

I probably am in the minority, but I think under Sperry, a patent agent CAN be a partner with a patent attorney, provided the partnership ONLY does patent work before the USPTO.  No different than a patent agent partnering up with another patent agent. 

snip
4) be a partner in any firm in a state that follows the model rules of professional conduct (most states I know);
snip

I don't see a problem with your non-legal practice arrangement hypo except I don't think any patent attorney would want that because it would essentially bar them from the practice of law. Here is the ABA's model rules (most states follow this verbatim, some have variations):

Rule 5.4(b): "A lawyer shall not form a partnership with a nonlawyer if any of the activities of the partnership consist of the practice of law."
Rule 5.4(d): "(d) A lawyer shall not practice with or in the form of a professional corporation or association authorized to practice law for a profit, if:
(1) a nonlawyer owns any interest therein, except that a fiduciary representative of the estate of a lawyer may hold the stock or interest of the lawyer for a reasonable time during administration;
(2) a nonlawyer is a corporate director or officer thereof or occupies the position of similar responsibility in any form of association other than a corporation ; or
(3) a nonlawyer has the right to direct or control the professional judgment of a lawyer."

[dablueman]

Unless anyone in my current fanbase like Daubleman has anything to add, I think I'll just let this one drop, and go crack open a beer for the start of the weekend.

Is there a fanclub website and are t-shirts available? At least we can finally agree on something. Time to enjoy a beer and the weekend.

[blakesq]

I have thought about this, and I disagree, dablueman, with your statement that it would bar a patent attorney from the practice of law.   I think if a patent attorney and patent agent formed a partnership A, then the patent attorney can form business entity B that can do all non-patent legal work.  When Client C pays for patent work, he can write a check to patent attorney or patent agent, and they deposit it in A's account.  If client C pays for non-patent legal work, he simply writes a check to patent attorney, who deposits in B's account.  Maybe a little cumbersome, but workable. 

I probably am in the minority, but I think under Sperry, a patent agent CAN be a partner with a patent attorney, provided the partnership ONLY does patent work before the USPTO.  No different than a patent agent partnering up with another patent agent. 

snip
4) be a partner in any firm in a state that follows the model rules of professional conduct (most states I know);
snip

I don't see a problem with your non-legal practice arrangement hypo except I don't think any patent attorney would want that because it would essentially bar them from the practice of law. Here is the ABA's model rules (most states follow this verbatim, some have variations):

Rule 5.4(b): "A lawyer shall not form a partnership with a nonlawyer if any of the activities of the partnership consist of the practice of law."
Rule 5.4(d): "(d) A lawyer shall not practice with or in the form of a professional corporation or association authorized to practice law for a profit, if:
(1) a nonlawyer owns any interest therein, except that a fiduciary representative of the estate of a lawyer may hold the stock or interest of the lawyer for a reasonable time during administration;
(2) a nonlawyer is a corporate director or officer thereof or occupies the position of similar responsibility in any form of association other than a corporation ; or
(3) a nonlawyer has the right to direct or control the professional judgment of a lawyer."

[dablueman]

I have thought about this, and I disagree, dablueman, with your statement that it would bar a patent attorney from the practice of law.   I think if a patent attorney and patent agent formed a partnership A, then the patent attorney can form business entity B that can do all non-patent legal work.  When Client C pays for patent work, he can write a check to patent attorney or patent agent, and they deposit it in A's account.  If client C pays for non-patent legal work, he simply writes a check to patent attorney, who deposits in B's account.  Maybe a little cumbersome, but workable. 

Sorry, I was in a rush to answer because I wanted to go out to dinner. If the agent isn't getting a share of the payment from C then that's not part of the partnership, the attorney has a solo practice. Nothing prevents lawyers from going into business with non-lawyers, as long as the partnership isn't practicing law in the state. Plenty of lawyers have business partnerships outside of a law firm.

What you're suggesting however isn't likely to happen in the real world because it would be very tricky for the attorney, it's not very scalable, and therefore not worth the risk for the attorney for being in that grayish area. I'm tired so I can't give a complete answer right now, but I don't think it's a very viable arrangement. For instance the partnership couldn't call itself anything that would lead people to believe it was a law firm, etc.