Sent: Monday, January 12, 2004 1:09 PM
To: ethicsrules comments
Subject: Comment on Changes to Representation of Others Before the USPTO
Comment to Proposal for:
Changes to Representation of Others Before the United States Patent and Trademark Office
In particular it proposes:
"... The first option, accepting the state bar's determination on moral character without further review, is administratively convenient. However, it raises the issue of equal treatment between patent attorneys and patent agents as to standards applied. The nature of the patent application proceedings before the USPTO allows for registered practitioners to represent clients before the Office who may or may not be attorneys. In addition, "Congress placed the responsibility on Director to protect the public." 35 U.S.C. Sec. 2(b)(2)(D)..."
Comment Moral Character and Practice before the USPTO. The
question is incorrectly posed and should be considered in a
different light. Congress placed the responsibility on
Director to protect the public." 35 U.S.C. Sec. 2(b)2(D).
,' Congress did not explicitly authorize agents to practice as registered practitioners. The
power granted to the Director by Congress allows the Director to authorize those competent
with legal and technical competence to represent other before the USPTO. This power has
been expanded to enable agents to practice as registered practitioners before the office
if they meet the technical competence and pass an exam. However, the legal competence and
moral fitness is not evaluated for agents as it is for attorneys, which is unfair to
attorneys and the public. This is inherently wrong, because a practitioner is one
authorized to the practice of law. Agents possess very little, if any, legal training and
have not been adjudged competent by the legal profession. Therefore the legal and moral
fitness requirement should be the same for all practitioners and agents; and agents should
not be given a free pass just because they lack legal competence as defined by 48 of the
50 states and by the Federal judiciary.
An agent, if he is to practice before the USPTO, should be
limited to representation
concerning the preparing and filing of patent application and should be excluded from
representing clients in matters pertaining to legal rights and other state causes of
action implicit in such work. A patent application is a public disclosure and as such the
applicant gives up other legal rights for the benefit of obtaining a patent. A patent
agent, when encouraging an applicant to file a patent, violates state law by committing
the "unauthorized practice of law" in that state when they discuss or fail to discuss the
legal ramifications of filing the patent application. If the client is to be made aware
of his/her legal position, it becomes incumbent upon the practitioner to inform the client
of those rights, which requires advice from an attorney and not an agent.
Treat all practitioners the same with respect to fitness, moral character, and legal
1. Requiring all practitioners to have minimum Technical and Legal experience if they are
to practice before the USPTO.
2. Resolve the inherent "unauthorized practice of law" by agents issue by:
a. eliminating agent status altogether,
b. allow agent status for those only who complete the patent academy with four or more
c. change the name "agent" to "non?legal agent" or other name in order to protect the public and to put the public on notice that they are not working with an attorney,
y d. notify agents that they can not practice law and further limit their scope of practice
to preparing and filing application, not prosecution of patent applications,
e. require a registered attorney to sign work done by an agent,
!~ and / or
f. require each agent to practice under the supervision of registered attorney.