In order to represent others in patent matters before the USPTO, one has to be admitted to such practice by the USPTO, even if one is already a lawyer admitted to a state bar. Practicing in patent matters on behalf of others without a license can result in fines (35 U.S.C. §33) or, if false statements are involved, imprisonment (18 U.S.C. §1001). Yet at the same time that U.S. citizens are required toe the line, pay for and pass the USPTO registration examination, and follow the USPTO’s rules in order to represent clients before the USPTO, the USPTO allows foreign citizens to practice before it without a license and without the threat of repercussions.
How does this come about? Well, the first thing one needs to do is acquire a USPTO customer number. Although typically one or more practitioner numbers are associated with a customer number, you don’t need a practitioner number to get a customer number, and you don’t need to provide a U.S. address. So if you’re a foreign practitioner registered, in say, Israel, but not registered in the USA, you can still get a USPTO customer number, e.g. 36131 or 63426.
Next, you tell your clients that they can save money by avoiding the use of a U.S. associate and filing directly at the USPTO. Since you yourself aren’t licensed to practice before the USPTO, you can’t sign the papers on their behalf; maybe you tell your clients this piece of information, maybe you don’t. It doesn’t really matter, since any inventor can act pro se, so you can pull a fast one the USPTO: you prepare and file all the forms and substantive papers yourself, but you have the inventor(s) sign the papers themselves (maybe; see discussion below), so that, to the USPTO’s eyes, it appears that the inventors are prosecuting their own applications. Of course, there’s the minor fact that the customer number associated with the filing of the papers has a name and address that are completely different from the name and address of the inventors, but it never crosses the mind of anyone at the USPTO that the person whose name is associated with the customer may de facto be acting as the agent for the inventors.
Even better, it appears that no one at the USPTO checks to see that the papers are actually signed, so you don’t really need to get the inventors’ signatures. You can just type their names on the papers in your word processor, and put slash marks in front and after the typed named. Under 37 C.F.R. 1.4(d)(2), that counts as an “S-signature”, and is, apparently, acceptable. So if you look, for example, at the inventor’s declaration filed in USSN 11/619629 (20070159626), the declaration wasn’t signed by the inventor; the form was filled out and submitted by the person associated with customer number 36131, who is neither the inventor nor a practitioner registered before the USPTO. One wonders if the inventor ever saw the declaration before it was filed.
Actually, in some cases, why bother even pretending the inventor is directly involved at all? If you’re filing a provisional, for which no declaration is required, you can do everything yourself. Thus, for example, provisional application no. 60/597171, which served as the priority document for USSN 12/088096 (20080265144), was filed using a transmittal form in which the person submitting the correspondence admitted that the use of the electronic filing system “is for OFFICIAL correspondence between patent applicants and their representatives and the USPTO. Fraudulent or other use besides the filing of official correspondence by authorized parties is strictly prohibited, and subject to a fine and/or imprisonment under applicable law.” However, the person submitting the paper was neither the applicant nor a person authorized by the USPTO to represent others in patent cases.
Or maybe you can actually get the inventors to sign a power of attorney appointing you to prosecute their application, even though you’re not a registered practitioner. That’s what happened in USSN 11/657079 (20070173385). Actually, in that case, the applicants listed their Israeli attorney (who is not licensed before the ILPTO or the USPTO) as one of the inventors. Whether or not he actually constitutes an inventor under U.S. law is anyone’s guess, but it’s a moot point, as the application went abandoned. That may have had something to do with the well-written claims, which were rejected inter alia as being indefinite for claiming both an apparatus and the method steps of using the apparatus:
1. A method and device comprising
a) a system of weights that is removably attachable and adjustable to fit a body or part of a body,
b) the said weights attached in such a way that are in contact with the said body or said part of the body and
c) a means to fill and to empty the said weights with substances wherein the said weights are adjustable in size and in number,
whereby the said weights will strengthen the muscle, flesh or bone of the said body or part of the said body, and/or lose fatty tissue from the said body or part of the said body.
Of course, as a way of running your practice, listing yourself as an inventor when you’re probably not one under U.S. law (see, e.g. publication no. 20070169254) presents the minor problem that the validity of any patent issuing from the application is in question, but if your clients are a bunch of foreigners who don’t know any better and they pay, what do you care?
Or you can forego listing yourself as an inventor altogether, and just file a POA in which you’re appointed by the inventor, even though you yourself aren’t a licensed practitioner. (See e.g. 20070113993). The USPTO doesn’t check anyway, does it? I mean, you’ve got a customer number, right? That should be good enough.
Moreover, looking at some of these applications, they’re pathetic. It’s not just that they’re pathetically written. It’s that the “inventions” described are so obvious, the applications should never have been filed in the first place. Look, for example, at 20070008183: put a recorder in a car that records how fast a car traveled from point A to point B, to provide the police with evidence of speeding.
In view of this, my question is, why did I bother to take and pass both the USPTO and New York bar exams? Being licensed in both places puts constraints on me: I have to worry about ethics rules, and I have to be concerned about defending myself against unfounded charges of inequitable conduct if I make an honest mistake and don’t IDS some reference of questionable materiality. But if I were just Joe Shmoe foreign citizen, I could have just gotten myself a USPTO customer, and I could now de facto be representing clients before the USPTO with impunity, without fear of reprisals for any malfeasance on my part.
Maybe this is just another variation of the maxim, no good deed goes unpunished, and I, like thousands of other registered practitioners, was a sucker for getting my USPTO registration number. But, cynical as I sometimes am, I would still hope that USPTO would take steps to prevent such behavior, and to stop punishing those of us who play by the rules. Letting non-registered practitioners practice before the USPTO cuts into our livelihood; it also deprives some inventors with genuinely good ideas competent representation before the USPTO.
My suggestion for what the USPTO could do to clean up this mess? It should require:
(a) in the case of a lone inventor, either the address associated with customer number is the same as the address of the inventor, or there is at least one registered practitioner associated with the customer number; and
(b) when there are joint inventors, either all the inventors are associated with the customer number (and not just one inventor is associated with the customer number), or the there is at least one practitioner number associated with the customer number.
I don’t know how much of a headache it would be for the USPTO to implement this, but it would go a long way toward preventing unwary overseas applicants from being duped.
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