When is representing a Foreign client that uses Foreign Counsel UPL?

Started by dab2d, 08-15-17 at 03:47 AM

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dab2d

So I have always had a hard time with this one.

Is there an Unauthorized Practice of Law (UPL) issue when representing a foreign client who relies exclusively on foreign counsel to render prosecution decisions? 
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smgsmc

I'm confused by your post.  Perhaps you could clarify the situation.

(a) You are a US patent attorney representing a foreign client before the USPTO.  Correct?

(b) You are handling patent prosecution, not litigation.  Correct?

(c) So, let's assume the application has been filed, and you receive an office action.  What happens now?  Do you forward it to the foreign counsel, and does the foreign counsel then prepare the response and send it to you for filing?  You provide no input at all.  Is that the scenario?

dab2d

You are correct on a, b and c.

All the Local Counsel is doing is reading, signing, and filing.
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Tobmapsatonmi

Quote from: dab2d on 08-15-17 at 06:13 PM
You are correct on a, b and c.

All the Local Counsel is doing is reading, signing, and filing.


https://e-foia.uspto.gov/Foia/RetrievePdf?system=OED&flNm=0920_DIS_2017-06-16

Not exactly on point, but it has a similar flavor.  I think the practitioner doing what you mention is not acting improperly if he reads, understands, and does not think what the foreign counsel proposes is incorrect.  But if he objects, will foreign counsel listen to him and take his advice?

I think even in the normal situation of a US firm prosecuting for foreign corporations, where the work is mainly shunted in from the corp's hometown IP firm, it's always a bit uncomfortable to know where the line is.  Especially in those cases where the US firm really has no contact with the foreign corporation, other than having the requisite POA forms on file.


ETA: I don't see the issue so much as UPL (maybe could be twisted into "assisting another's UPL" under 37 CFR ยง10.47, esp. if you think the foreign counsel is taking wrong positions), as a potential failure to comply with one's own requirements.  For example when you sign the paper, 37 CFR 10.18(b)(2)(ii - iv) says you're certifying that:

"The claims and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law; (iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and (iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief."

If the foreign counsel is taking what you believe are frivolous legal positions, or arguing baseless "facts" (etc.) and won't take direction, and you file the paper anyway, it'd be hard to say you haven't breached these provisions.
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dab2d

It is just a thought that has always bothered me. UPL is a non-qualified person giving legal advice. Thus how isn't any advice by Foreign IP Firm not UPL?   

Even if they are Foreign Clients, their hometown IP firm is providing them Advice on US prosecution. How is that not UPL.

Take it a step further, what if the client is a US entity, and they find a foreign based firm to work on their project (Lets over look the registration number issue)... that has to be UPL, even though I think it is the same actions being done.

What happens if the Parent Company is a Foreign company, the Foreign IP Firm handles their US filings using local Counsel. Then the Foreign Company opens up a Fully owned US entity. They now make the US entity the Applicant but they want use the Foreign IP Firm for their IP work.   
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midwestengineer

Quote from: dab2d on 08-15-17 at 03:47 AM
So I have always had a hard time with this one.

Is there an Unauthorized Practice of Law (UPL) issue when representing a foreign client who relies exclusively on foreign counsel to render prosecution decisions?

I don't view it as a UPL issue.  I think of it as a negligence issue/failure of duty to the PTO on the part of the US practitioner.  The US practitioner is signing the filing so it's not UPL.  Whether the US practitioner violated its duty to the USPTO by signing the filing is another issue.

The foreign firm isn't operating in the US so it isn't subject to US regulations on the UPL.

dab2d

Okay.... I can see what you are saying.

So given how most of this works, (as an examiner you see horrible specs and claims because the Attny would tell you that the client/firm wanted that way) what are the things to look out for.

Like you said, Often times you do not even contact the client, but are relying (if they even relay) advice through a third party. Are you relying on them as the client's agent?
Basically, what is the best SOP to use when dealing with foreign clients?   

What is stopping a US entity from employing foreign firms if they are making informed decisions and they instruct you to follow the directions of the Foreign Firm.


Nothing I post on this forum is legal advice.  You rely on anything I post at your own risk.  This post does not form an attorney client relationship between myself any person participating in this thread.

smgsmc

I'm a patent agent, not a patent attorney.  If we're concerned strictly with patent prosecution, I don't understand why the issue of UPL is even raised in the first place.  After all, patent prosecution does not require the services of an attorney; i.e., patent prosecution can be performed by a non-attorney patent agent and by a non-practitioner pro-se inventor.

Also, how does this situation differ from the following scenario in which probably most practitioners have found themselves facing more times than they wished:  The inventor client thinks he knows how to respond to an office action better than the practitioner can.  The practitioner explains to the inventor why the inventor's response is not a wise choice and recommends an alternative response.  But the inventor digs in his heels and insists that the practitioner file the inventor's response.  Is there a similar UPL issue (assume a US inventor)?  So in your case, your client gives you the explicit instructions:  Do what the foreign counsel directs you to do.  Does UPL arise solely because the client provides you instructions via his designated foreign counsel?

midwestengineer

Quote from: dab2d on 08-16-17 at 01:47 AM
Basically, what is the best SOP to use when dealing with foreign clients?   

So there are two issues (1) foreign clients that don't want your advice but want you to sign filings and (2) foreign clients that don't follow your advice but receive your advice.

Don't represent (1).  The malpractice liability and professional risk is staggering.  Represent (2) but mitigate your malpractice risk by papering everything.

MR

Quote from: smgsmc on 08-16-17 at 05:51 AM
I'm a patent agent, not a patent attorney.  If we're concerned strictly with patent prosecution, I don't understand why the issue of UPL is even raised in the first place.  After all, patent prosecution does not require the services of an attorney; i.e., patent prosecution can be performed by a non-attorney patent agent and by a non-practitioner pro-se inventor.

My understanding was that pro-se prosecution isn't UPL because it isn't providing legal services to another, and the patent agents are licensed to practice (some) law.  An engineer can't (without being guilty of UPL) file a provisional patent application listing her employer as the applicant, can she?



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