Last week, Hal Wegner sent a note around to his email list regarding the licensing of patent practitioners in the USA. Among his observations were the following:
(a) The patent bar examination administered by the USPTO is geared toward testing a potential practitioner’s knowledge of ex parte patent drafting and prosecution. Absent separate legal training (e.g. a law degree), the patent bar exam does not ensure that a practitioner (i.e., a patent agent) will be competent to represent clients in appeals, reexaminations and interferences before the USPTO. This can have disastrous effects for the patentee later on, as mistakes made during such proceedings are rarely curable during subsequent proceedings before the Federal Courts. Nevertheless, the USPTO allows agents to engage in such advocacy practice, even as, ironically, the USPTO has stated that (i) an agent is not competent to direct a client how to complete a standard, fill-in-the-blanks assignment agreement, because that constitutes the practice of law, and (ii) an agent found to have engaged in such activity will be subject to disciplinary action by the USPTO’s Office of Enrollment and Discipline.
(b) Conversely, by requiring registration (for which a technical background is a prerequisite) in order to represent clients in patent matters before the USPTO, even those matters which are legal rather technical in nature or do not involve specialized technological issues, the USPTO denies applicants the ability to avail themselves of the skill of many of the finest legal minds. This despite the fact that those same non-technically trained lawyers routinely argue patent cases at the trial and appellate levels, and even though, for representation before other federal agencies (including trademark practice before the USPTO), a state bar admission is considered sufficient.
With regard to the latter group, Professor Wegner noted that just as the potential for malpractice claims and sanctions by state bar associations assure competence in representation before other federal agencies, it can fairly be assumed that the same concerns will assure self-policing among lawyers, both technically-trained and not, who practice before the USPTO. Therefore, he suggested, anyone admitted to a state bar should be allowed to practice before the USPTO.
Professor Wegner’s observations gave me pause to consider, or rather re-consider, the situation regarding representation in Israel, as well as the effectiveness, or ineffectiveness, of the OED enforcement regime.
In Israel, as in most countries other than the USA and Canada, there is a bifurcation between lawyers and patent practitioners. Lawyers study law as a first, and in most cases only, degree. In order to practice, lawyers must pass an examination administered by the bar association, which is a statutorily created body to which all lawyers must belong in order to maintain their license. Lawyers are authorized to practice before all state agencies, including the Israel PTO.
Patent practitioners, on the other hand, must have a technical degree, and pass examinations administered by the ILPTO.[1] There is no statutorily recognized patent bar association to which Israel patent agents[2] must belong in order to keep their license, although they do have to pay an annual fee to the ILPTO. Israel patent agents are authorized to practice before the ILPTO in all matters handled by the ILPTO. This includes not only patent prosecution but also trademark registration, as well as all ex parte matters (such patent and trademark oppositions and cancellation actions) before the ILPTO. Israel patent agents are likewise authorized to prepare all necessary documents to those ends, including patent, trademark and design applications. Patent agents are also authorized to prepare documents for filing in foreign patent or trademark offices, and have limited authorization to represent clients regarding technical (but not legal) points in patent matters before Israel courts, subject to leave of the court and subject to the client’s lawyer being present.
Thus, unlike in the USA, in Israel a patent agent is authorized to prepare assignments and pleadings, and to argue legal points in adversarial proceedings before the Commissioner, as well to prepare and file trademark applications, without the input of a lawyer; and a lawyer with no technical training is authorized to prepare and file patent applications, without the assistance of a patent practitioner. Nevertheless, notwithstanding the permissiveness of Israel law in these respects, for the most part there is self-policing of both lawyers and patent agents in terms of the types of representation they will undertake. Patent litigators routinely involve agents as part of the legal team representing clients before the courts, and litigators are more often than not brought in by patent agents to prepare pleadings, make oral arguments and conduct cross-examinations in inter partes matters before the ILPTO. Although it occasionally happens that a lawyer without a technical background will file and prosecute a patent application, it is a rare event; in almost all instances, law offices having a significant IP practice will employ patent agents to prosecute and, if necessary, prepare patent applications. In those cases where a patent agent attempts to argue an inter partes case without a litigator’s assistance, it is usually an agent who already has significant experience in such proceedings.
In short, if the Israeli experience is any indication, Professor Wegner’s suggestion that a USPTO registration requirement be jettisoned for people who are members of a state bar is eminently sensible. The specter of malpractice and bar association sanctions will be sufficient to ensure competence in representation.
As to the issue of US patent agents handling appeals, interferences and inter partes reexaminations at the USPTO, the potential for malpractice and sanctions from the Office of Enrollment and Discipline (OED) should be sufficient to deter agents who aren’t competent to handle such issues from handling them, at least on their own. In any event, I wonder if this isn’t something of a red herring. I don’t have statistics on the percentage of appeals in which the appellant is represented by an agent as opposed to an attorney, but my suspicion is that it is rather small. Perhaps more to the point, I don’t accept the notion that law school somehow imbues a person with particular wisdom that escapes the mere mortals who are patent agents. Experience counts far more than law school, which is why many law firms won’t let associates sign their own papers for the first year or two. In that respect, an agent working within a firm setting can acquire the experience necessary to properly represent a client in patent office appeals and the like.
One other point that Professor Wegner made was that under the current system, patent attorneys are subject to two disciplinary bodies, their state bar association and the USPTO’s OED. I agree that in the case of patent attorneys, being subject to state bar discipline alone should be sufficient. Unfortunately, in this matter I can’t draw on any parallels from Israel, because there are no ethics rules for Israel patent agents.
[1] In practice, the ILPTO illegally delegates responsibility for this examination to a third party, but that’s a story for another post.
[2] Like patent agents in Europe and many other places, patent agents in Israel refer to themselves as “patent attorneys”; as an American I prefer to use the term “agent” since for me, “attorney” connotes possession of a law degree.
