Krajec on new USPTO rules in disciplinary / ethics area
Russ Krajec had a post on 28 Feb. 07 including the text: In today’s Federal Register, the USPTO has reopened the discussion on whether or not patent agents may prepare and file assignments for their clients. [Unless IPBiz is mistaken, the USPTO website did NOT have this news up on 28 Feb. 07]
Russ continued:
The USPTO has long allowed patent agents to file patent assignments, considering the assignment “incident to the preparation and prosecution of patent applications
before the Patent Office”. Now, the USPTO is considering removing the language under the argument that assignments are a form of contracts, which is governed under state law.
This has a profound and negative effect on patent attorneys as well, as any assignment filed for an out of state client would also fall into this trap.
My sense is that patent attorneys, especially those who see patent agents as a threat to their livelihood, would commend this new rule change so that they would have some albeit miniscule argument as to why a patent attorney is better than a patent agent. Having had a solo practice both as a patent agent and a patent attorney, I have had to make both sales pitches to potential clients.
Beyond the patent agent issue identified by Russ, there are some other matters.
Saving detailed discussion for later, IPBiz says "RPC 5.5, as implemented currently in New Jersey and Pennsylvania."
Other topics in ethics / disciplinary rules covered by IPBiz:
R.M. v. Supreme Court of New Jersey, 2005 N.J. LEXIS 1140
http://ipbiz.blogspot.com/2005/10/increased-publicity-of-ethics.html
http://ipbiz.blogspot.com/2005/07/patent-law-duty-of-disclosure-to-pto.html
Russ continued:
The USPTO has long allowed patent agents to file patent assignments, considering the assignment “incident to the preparation and prosecution of patent applications
before the Patent Office”. Now, the USPTO is considering removing the language under the argument that assignments are a form of contracts, which is governed under state law.
This has a profound and negative effect on patent attorneys as well, as any assignment filed for an out of state client would also fall into this trap.
My sense is that patent attorneys, especially those who see patent agents as a threat to their livelihood, would commend this new rule change so that they would have some albeit miniscule argument as to why a patent attorney is better than a patent agent. Having had a solo practice both as a patent agent and a patent attorney, I have had to make both sales pitches to potential clients.
Beyond the patent agent issue identified by Russ, there are some other matters.
Saving detailed discussion for later, IPBiz says "RPC 5.5, as implemented currently in New Jersey and Pennsylvania."
Other topics in ethics / disciplinary rules covered by IPBiz:
R.M. v. Supreme Court of New Jersey, 2005 N.J. LEXIS 1140
http://ipbiz.blogspot.com/2005/10/increased-publicity-of-ethics.html
http://ipbiz.blogspot.com/2005/07/patent-law-duty-of-disclosure-to-pto.html
posted by Lawrence B. Ebert at 9:10 AM
0 Comments:
Post a Comment
<< Home