Thursday, March 01, 2007

USPTO Proposes New Rules On Representation

Yesterday, the USPTO released a Federal Register Notice titled "Changes to Representation of Others Before the United States Patent and Trademark Office," which updates the 2003 draft that tried to define the allowable scope of representation for patent agents and attorneys.

Commentators from the draft expressed concern as to whether practice before the Office was defined too broadly by including participation in drafting applications and including activities ‘‘incident to the preparation and prosecution of patent applications before the Patent Office.’’
The 2007 draft does not seek to expand the PTO's jurisdiction, and has removed ‘‘participation’’ in drafting applications and activities as being activities that are ‘‘incident to the preparation and prosecution of patent applications before the Patent Office.’’

Under the new proposel, drafting patent applications would continue to be "practice before the Office." However, the revised proposed sections indicate that a registered practitioner must be able to provide clients with advice about relying upon alternative forms of protection that may be available under State law.

Accordingly, the proposed rules state:

A registered patent agent is not authorized by his or her registration to practice before the Office to draw up a contract or to select contract forms for a client relating to a patent, such as an assignment or a license, if the state in which the agent resides or practices considers drafting contracts the practice of law. Assignments and licenses are the creation of state, not federal, statutory law. Although 35 U.S.C. 152, 202, 204 and 261 refer to assignment or licensure of patents or patent rights, assignments and licenses are forms of contracts, which are creatures of state, not federal law.

While the notice singles out agents, it is apparent that attorneys can be caught up in this as well(i.e., an attorney from CA filing an assignment for a NY client).

See more from Anything Under the Sun blog and Patently-O.

View the FR Notice here.

The PTO is soliciting comments, which are due by May 29, 2007. Comments should be e-mailed to the PTO's director of OED Harry Moatz @ ethicsrules.comments@uspto.gov.

1 Comentário:

John Rizvi said...

Peter, thanks for the heads up.

Unfortunately, we have very little case law providing direction and clearly distinguishing between advice that constitutes practice before the PTO verses that which is considered practice under state law.

It will be interesting to see how the new proposal will pan out in the courts...although I wouldn't hold my breath...

Other than my home state of Florida, no other state (to my knowledge) has tried to regulate PTO practice in recent history. The Florida case on point was Sperry v. Florida, 373 U.S. 379 (1963). In a 9-0 decision, the U.S. Supreme Court ruled that federal law prempts state law and that patent agent practice cannot be restricted.

John Rizvi
Florida Patent Attorney
My blog:
Florida Intellectual Property
Law Blog

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