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[newpatatty]

hello,

i am a new patent attorney and just began working for a small company drafting patent applications for solo inventors.  the owner/president of the company is a patent agent who has been practicing for about 6 years or so.  i am not positive but i believe the patent agent's father used to sell marketing services to inventors for another patent attorney who would file the patent applications and when his son got licensed by the uspto, they just opened up their own shop.  the father still runs the company and sells marketing services and the son files the patent applications for the inventions. 

i was recently given an office action to respond to.  the application was originally written by a different out of state patent attorney/agent (not sure which) who the patent agent sometimes sends applications to for out of office drafting.  the original application included both apparatus and method claims.  I was looking through the file and it looks like a few months back the examiner sent the patent agent a restriction requirement forcing an election of either the apparatus claims or the method claims. 

i cannot find anywhere in the file or database software that the patent agent sent the restriction requirement to the inventor or talked to the inventor at any point.  this company uses some sort of database software instead of what would probably be considered more of a docketing software, so all i have to go on are the notes logged in the history and what is in the hard file.  the patent agent elected one species of the apparatus claims without traverse.  again i do not see anywhere in the database history or file that the response was ever sent to the inventor.  i suppose of course that a phone call may have been made which just was not logged. i also suppose that since i am new to practice that maybe i am overly paranoid since law school seems to pound malpractice risks into your head.  but this seems kind of sketchy to me.  is this kind of stuff ok?  is there some sort of difference in professional standards for patent agents and attorneys? am i overreacting? 

thanks in advance

[khazzah]

i cannot find anywhere in the file or database software that the patent agent sent the restriction requirement to the inventor or talked to the inventor at any point. 
...
i suppose of course that a phone call may have been made which just was not logged. i also suppose that since i am new to practice that maybe i am overly paranoid since law school seems to pound malpractice risks into your head.  but this seems kind of sketchy to me.  is this kind of stuff ok?  is there some sort of difference in professional standards for patent agents and attorneys? am i overreacting? 

IMHO it's "standard behavior" to inform the client of a) any communication from the PTO and b) any paper filed with the PTO.

What's more variable IMHO is whether the practitioner is required to ask for and/or wait to obtain client input before proceeding. In my experience, some clients want you to handle the substantive stuff without their input, some want the opportunity to provide input but don't always do so, and some insist on you waiting for their input. (Input provided at 5 PM on the 3 month date, of course).

It's probably a good idea to ask your boss what sort of client communication procedures are standard at your company. Could be the last guy simply wasn't following procedures.

is there some sort of difference in professional standards for patent agents and attorneys?

Interesting question. I'm curious to hear responses to this. 

[Wiscagent]

is there some sort of difference in professional standards for patent agents and attorneys?

Interesting question. I'm curious to hear responses to this. 

So far as the USPTO OED is concerned, in patent matters an agent and an attorney have the same ethical rules.  And in non-USPTO matters or non-patent matters an agent has no right to represent a client.

Other than the ethical rules, what does "professional standards" mean in this context?  If professional standards means the ability to do a good job providing advice, drafting, and prosecuting a patent application; there is tremendous variability in the skill level of both attorneys and agents, and there is no way to determine if one group is generally better qualified than the other.

[khazzah]

So far as the USPTO OED is concerned, in patent matters an agent and an attorney have the same ethical rules.  And in non-USPTO matters or non-patent matters an agent has no right to represent a client.

No doubt about that. I was thinking of malpractice rather than ethics violations.

Other than the ethical rules, what does "professional standards" mean in this context?  If professional standards means the ability to do a good job providing advice, drafting, and prosecuting a patent application; there is tremendous variability in the skill level of both attorneys and agents, and there is no way to determine if one group is generally better qualified than the other.

So when determining whether a patent agent is liable for malpractice [for an action of patent prep/pros], you don't treat agents any differently than attorneys? So that when we decide on generally accepted professional standards, the pool is patent practitioners (agents + attorneys)?

[Wiscagent]

[W]hen determining whether a patent agent is liable for malpractice [for an action of patent prep/pros], you don't treat agents any differently than attorneys? So that when we decide on generally accepted professional standards, the pool is patent practitioners (agents + attorneys)?

Good question.  But I don't have a good answer.

If a client comes to a patent attorney and unambiguously asks the attorney for help exclusively for prep & pros; and in the course of their relationship the only discussions and activities relate strictly to prep & pros, then yes I think the responsibilities / standards / malpractice liabilities of that attorney would be the same as for an agent.  But that is an unlikely scenario.

It is much more likely that the client will want to discuss some issues beyond the scope of an agent's license.  So as soon as the attorney answers one of those non-USPTO or non-patent questions ... like it or not, the attorney is providing service beyond the scope of an agent.  And, in that very likely scenario, the attorney would have broader responsibilities, i.e. higher standards, than an agent.

I've had clients ask me, an agent, questions that are clearly beyond my scope.  My usual response is to recommend that they seek advice of counsel, or offer to loan them one of the books I have that discuss their concern.  I also add a disclaimer, explaining that no book can substitute for a professional consultation.  (I rarely get the books back; so if you want to do that, I suggest stocking up on used paperbacks.)

[newpatatty]

IMHO it's "standard behavior" to inform the client of a) any communication from the PTO and b) any paper filed with the PTO.

What's more variable IMHO is whether the practitioner is required to ask for and/or wait to obtain client input before proceeding. In my experience, some clients want you to handle the substantive stuff without their input, some want the opportunity to provide input but don't always do so, and some insist on you waiting for their input. (Input provided at 5 PM on the 3 month date, of course).

It's probably a good idea to ask your boss what sort of client communication procedures are standard at your company. Could be the last guy simply wasn't following procedures.

Thanks. I will do just that.

Other than the ethical rules, what does "professional standards" mean in this context?  If professional standards means the ability to do a good job providing advice, drafting, and prosecuting a patent application; there is tremendous variability in the skill level of both attorneys and agents, and there is no way to determine if one group is generally better qualified than the other.

Sorry if I used an ambiguous term there.  I meant standards based on rules of professional ethics, which I believe you answered. 

If a client comes to a patent attorney and unambiguously asks the attorney for help exclusively for prep & pros; and in the course of their relationship the only discussions and activities relate strictly to prep & pros, then yes I think the responsibilities / standards / malpractice liabilities of that attorney would be the same as for an agent.  But that is an unlikely scenario.

It is much more likely that the client will want to discuss some issues beyond the scope of an agent's license.  So as soon as the attorney answers one of those non-USPTO or non-patent questions ... like it or not, the attorney is providing service beyond the scope of an agent.  And, in that very likely scenario, the attorney would have broader responsibilities, i.e. higher standards, than an agent.

Exclusively for prep/pros?  Does that also include opinions rendered for patentability? 

I've had clients ask me, an agent, questions that are clearly beyond my scope.  My usual response is to recommend that they seek advice of counsel, or offer to loan them one of the books I have that discuss their concern.  I also add a disclaimer, explaining that no book can substitute for a professional consultation.  (I rarely get the books back; so if you want to do that, I suggest stocking up on used paperbacks.)

What kinds of things come up that would be clearly beyond the scope of the patent agent during patent prep/pros discussion or representation?

[khazzah]

What kinds of things come up that would be clearly beyond the scope of the patent agent during patent prep/pros discussion or representation?

Infringement. For example, if the client asks whether or not a claim will read on a particular infringement scenario, that's outside the scope of a patent agent's representation. 

[Wiscagent]

newpatatty asked if "Exclusively for prep/pros" includes opinions rendered for patentability?  Yes; and such opinions are within the scope of a patent agent.  (I know that some attorneys disagree on that.)


newpatatty asked "What kinds of things come up that would be clearly beyond the scope of the patent agent during patent prep/pros discussion or representation?"  As Karen mentioned, infringement-related questions.  Also questions about licensing, drafting assignment papers, litigation-related questions, and fuzzy areas re design patents / trademarks / copyright.

[khazzah]

Also questions about licensing, drafting assignment papers, litigation-related questions, and fuzzy areas re design patents / trademarks / copyright.

What if the patent agent doesn't "draft" the assignment, but merely provides the client with a form he found, e.g., on the Internet?

It occurs to me that 95% of the time, the patent attorney doesn't draft the assignment, but merely provides the client with a form used by the firm.

So I'm curious if patent agents would be prohibited from doing the exact same thing, since that thing doesn't involve any legal advice.

At least that's how I view the above hypo -- that is, by saying the practitioner "provides the client with a form", I feel like that's stipulating that no legal advice is involved.

[NJ Patent1]

Karen:  I'm not aware of a NY or NJ ethics opinion, or court disciplinary opinion, that is on point.  Don't know where you practice.  But IMO, when I give a client a "form",  be it from my "firm" (we all recycle / rerwork assignments etc to some extent), or from "LegalZoom", or from wherever, the act of suggesting, recommending, or even providing the form to a client seeking legal advice implicitly stamps it with my imprimatur. What does the client think?  I got it (i.e. boilerplate) from my attorney, she must think it's OK, so I'll rely on her (implicit) advice.  To be sure, "form" documents can work smoothly.  But form wills have run into propblems in some jurisdictions.  Does the fact that someone else drafted the "document" absolve me of professional responsibility if a problem later surfaces?  Dunno. To borrow a comment from the "foreign filing license" thread, I don't want to be the test case.  As far as I have gone is to alert an insistent client - with caveats - that "forms" can be found on the internet or at the library.  As for an agent supplying a "form contract" (vs alerting people to their existence w/o suggestion or recommendation) , consistent w/ my view, this is IMO unauthorized practice of law.  But if there is no problem who would know?  If, per the NYT, we go the way of England, people will be able to go to Wallmart for wills and contracts.   

[Wiscagent]

According to the U.S. Supreme Court in Sperry v. Florida, 373 U.S. 379 (1963)

Florida may not prohibit [a patent agent] from performing within the State tasks which are incident to the preparation and prosecution of patent applications before the Patent Office. Pp. 373 U. S. 381-402.

Is providing an assignment form to a client "incident to the preparation and prosecution of patent applications before the Patent Office"?  I don't know.  And like NJ Patent1, I'm not aware of any on-point decisions. 

So I explain to clients that such forms are available in various books and on the internet.  I can't tell them which form is best for their situation, so they might want to consult with an attorney.

[NJ Patent1]

Wiscagent: Tks. I'll check the case at next opporunity.  Given the (apparent) uncertainty, your course of action appears prudent.  Per my post, that's what I as an "attorney" do when the client insists on "DYI".  Inform but recommend nothing.  In as much as an assignment is a contract interpreted under state law, I'd say "drafting" (or simply presenting) an assignment (a contract) is practicing law.  Recording and assignment? Filing a Dec (subject to 18 USC 1001)?  Filing a paper w/ USPTO that you must attest to?  Rings in "incidental" to me.  Per a post on a different thread, assume ur an atty admited in the great State of Confusion, and the Rules of PC of that state could be construed to be in conflict with the PTO Rules (formetly a real possibility wrt NY), what do you do?  Punt?  "New" rules in NY reduced most of the "tension" ("zealously" is now "competently", etc.).  But for a while it was a concern (at least when trying to go to sleep).  My client has a "secret or confidence" (aka prior art they expressly instruct me not to disclose, can't "betray" that secret).  A clear pronouncement from SCOTUS - or at least CAFC - that no atty or agent may be dis/de- barred before the Office for adhering to USPTO RPCs would be welcome.  But I won't hold my breath.   

[Isaac]

Is providing an assignment form to a client "incident to the preparation and prosecution of patent applications before the Patent Office"?  I don't know.  And like NJ Patent1, I'm not aware of any on-point decisions.

What we refer to as an assignment form is generally not the actual document or agree that accomplishes the transfer between inventor and assignee.  The actual consideration for the contract is usually not described in the document.   It is my opinion that a patent agent can provide the USPTO form to the client as long as the document is used only for recordation purposes.

I think there is an on point district court decision (Kellogg v. ...) that expresses a contrary result, but that court decision was prior to the Sperry v. Florida Supreme Court case.