1 Ethics and Patent Agents David Hricik Professor, Mercer University School of Law Of Counsel, Taylor English Duma LLP

2 Who I am Lawyer (1988-) Large, small, solo Litigation Malpractice, DQ, ethics compliance F/t Professor (2002-) PR, Patent Law, Consultant, expert. Write & Speak Other Info… Chaired AIPLA, ABA Rader Clerk 2012 ALI

3 Scope of Conversation Ethical code that applies –Discipline by OED –Disqualification or conflicts of interest in PTO in state or federal courts What patent agents can and cannot do. Privilege over client-patent agent communications

When Representing Others Before the Office USPTO Rules apply (modified 2013). Similar to Model Rules and State Rules but not identical. Special Issue: –Solos need to follow USPTO accounting rules. 4

Limits of Rules Rules do not necessarily define the standard of care. Any malpractice claim will be in state court, not federal court, unless there is diversity. Rules often used as “shields” by clients in suits for fees. 5

6 Limited Authority to Practice Law Patent agents practice law, but they are not lawyers. While not unique, the fact that they are authorized to practice law only to a limited extent creates unusual splits and complexities in practice.

7 APL v. UPL What May Patent Agents Do?

8 APL v. UPL: Sperry Patent agents can prepare and prosecute applications even though they are not lawyers and even though the “preparation and prosecution of patent applications for others constitutes the practice of law.” But “registration in the Patent Office does not authorize the general practice of law, but sanctions only the performance of those services which are reasonably necessary and incident to the preparation and prosecution of patent applications.”

USPTO Regulation Practice before the Office in patent matters includes, but is not limited to: preparing and prosecuting any patent application; consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office; drafting the specification or claims of a patent application; drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; drafting a reply to a communication from the Office regarding a patent application; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Patent Trial and Appeal Board, or other proceeding. 9

10 The Easy Ends of the Spectrum A Patent Agent Can’t: –Draft wills –Appear as counsel in court –Draft contracts for the sale of a business –File a trademark application A Patent Agent Can: –Write an application –Write claims –Respond to office actions –Conduct a patentability search and opine on patentability

11 Some Counterintuitive Conclusions A Patent Agent Can’t: –Advise who owns an invention if ownership turns on a contractual relationship. –Advise about alternative forms of IP protection (TM, TS, etc.) Other interesting stuff…

12 Opinions: The Purpose Often Determines the Propriety Whether a patent agent can give certain advice depends upon the purpose for which the client will use the advice… and maybe even the forum in which the opinion will be used!

13 Right Purpose? Client asks whether a claim will cover a competitor’s product to know, e.g., whether to file a CIP to include different claims. –Competency/APL: patent agent can advise on BRI; Phillips? Same question, but client asks to know whether to file an infringement suit. –Phillips.

14 Right Purpose? Client asks whether its product infringes a third party’s patent. Ever proper?

15 Right Purpose? Client asks patent agent to draft an assignment to file with a new application. –Proper? –Proper so long as (old) USPTO form is used? –Proper if doing so is not “law practice under state law”? –Never proper? Client asks patent agent to draft assignment of an issued patent. –Never proper?

Right Purpose? Client asks for validity opinion on third-party’s patent. To file a lawsuit? –BRI/Phillips To seek its reexamination, IPR, etc.? –What if client then relies on opinion in litigation? 16

17 Patent Agents & Privilege Some Clarity, but not Much.

18 Confidentiality and Privilege Confidentiality: Patent agents must maintain as confidential all information “relating to the representation” of each client. –“Confidential information” is much broader than privilege, WP. –USPTO recently expanded definition of confidentiality. Privilege: a sued client can prevent agents from disclosing “privileged” information to the opposing party. –So, merely confidential information can’t be withheld, but privileged can

19 Only if Supervised: attorney-client privilege only protects patent agents working under authority and control of an attorney Same as Attorney: “The fact that the applicant's patent attorney might employ a patent agent for certain aspects of prosecution is irrelevant.” No Privilege: Patent agents are “mere solicitors of patents who fall outside the privilege” and are “comparable to the employees with legal training who serve in the mortgage or trust departments of a bank or in the claims department of an insurance company.”

20 When Lack of Privilege May Matter Even though agent’s obligation of confidentiality is the same as a lawyer, agent’s communications with the client may not be as protected against disclosure – by privilege -- to third-parties as those from lawyer to client.

21 CAFC Queen’s U. Panel CAFC not regional law applies. Formalism doesn’t control; but only “reason and experience” are source of client privilege. Factors supporting: –Role of patent agents; –Congressional recognition to act; –Sperry’s characterization as agents as “practicing law;” and –“current realities of “patent litigation.”

But… Scope of privilege is “coextensive with the rights granted to patent agents by Congress.” Which returns us to where we began! Majority in Queen’s U said no privilege where, e.g.: –Agent opines on validity of another patent; But Reyna points out that this is part of reexam, IPR, etc….? 22

USPTO Now repealed PTO Code had required patent agents to keep confidential info “protected by the… agent-client privilege” –Official Comments stated: “privilege is applicable in certain cases to communications” between clients and patent-agents : USPTO studying, noted pendency of Queen’s U. –Hope for clarity in the future! 23

24 Beyond the Legal: What to Do Judge Reyna dissented in Queen’s U. Without clear rules and even then… –Avoid communicating client confidences. –Avoid forwarding confidential s. –If concerned about particular communications, involve a lawyer. –To extent practicable, be supervised.

25 Thank You David Hricik