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Roger Schlafly

Moatz, Harry
From: roger@...
Sent: Sunday, December 28, 2003 11:54 AM
To: ethicsrules comments
Subject: Patent rules comment

Comments on proposed changes for patent practitioners published here:

[Federal Register: December 12, 2003 (Volume 68, Number 239)] [Proposed Rules] [Page 69441?69562]
From the Federal Register Online via GPO Access [wais.access.gpo.govJ [DOCID:fr12de03?23]

One of the proposed new rules is:

Sec. 11.102 (c) A practitioner may limit the objectives of the representation if the client having immediate or prospective business before the Office consents in writing after full disclosure by the practitioner.

In support of the rule are these remarks:

The terms upon which representation is undertaken may exclude specific objectives or means. Such limitations
., may exclude objectives or means that the practitioner regards as repugnant or imprudent, or which the practitioner is not competent to handle. For example, a patent agent who is not an attorney should exclude services beyond the scope authorized by registration as a patent agent, such as preparing and prosecuting trademark and copyright registrations, patent validity or infringement opinions, or drafting or selecting contracts, including assignments.

These remarks significantly misstate the law.

1. Limitations on the practice of law vary from state to state, and are not so easily summarized. 2. Patent agents can and do often offer services that are not directly authorized by the USPTO. Eg, a patent agent might offer engineering or marketing advice, and there is nothing controversial about it. 3. The patent agent license has always been construed to include giving legal advice that is necessary or incident to USPTO filings. For most patent agents, filing patent assignments is essential to maintaining an independent practice. But the above remarks imply that a patent agent cannot even download the official USPTO assignment form and hand it to a client. Also, it is often necessary, appropriate, and lawful for patent agents to give patent validity and infringement opinions.

The following rationale would make more sense:

For example; a patent practitioner who is not a licensed engineer could exclude services such as engineering advice, if such advice is improper under the applicable laws.

A better example would be that a practitioner specializing in chemical patents might decline to do electrical patents.

Roger Schlafly

United States Patent and Trademark Office
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Last Modified: 7/4/2009 5:45:36 PM