America-Israel Patent Law

Licensure of Patent Practitioners (1) – Thoughts In Response to Hal Wegner

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.

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[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.

Abstract or abstruse?

Both the United States and Israel publish notices of patent applications that have been allowed by their respective patent offices.  In the United States, this happens every Tuesday in the form of the USPTO Gazette.  (See the 12:01 Tuesday blog for more info.)  In Israel this occurs about once a month.  Both publications contain bibliographic data about the allowed applications, including an abstract. 

 

In the USA, the abstract is submitted by the applicant.  The requirement to do so is not found in the statute, but in Rule 1.72(b).  As anyone who has practiced in the USA knows, anything an applicant says before the USPTO can and will be used against the applicant during subsequent litigation to limit the scope of the claims, literally and/or under the doctrine of equivalents.  Hence, notwithstanding the statement in Rule 1.72(b) that “The purpose of the abstract is to enable the United States Patent and Trademark Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure” – thus implying that the abstract will not be used for purposes of claim construction – the Federal Circuit has on occasion used the abstract in construing the claims.  See, e.g. Revolution Eyewear v. Aspex Eyewear, 563 F.3d 1358 (Fed. Cir. 2009).  As a result, Irving Kayton and others have urged applicants to be as careful writing their abstracts as in writing the rest of the application, avoiding the use of expressions such as “The invention is” or “An object of the invention is to provide…”.

 

In Israel, the situation has hitherto been somewhat different.  Section 26 of the patent statute states that the Commissioner will publish notice of acceptance of the application, including “what in the Commissioner’s view is a description of the essence of the invention”.  Traditionally this has meant that the ILPTO simply takes claim 1 and, if appropriate, a relevant drawing, and publishes this as the “essence of the invention”.  Furthermore, section 27 of the statute explicitly states that this description “shall not serve the court or the Commissioner as evidentiary material in interpreting the specification [which includes the claims – DJF] in any judicial proceeding.”

 

The situation in Israel changed last week, with the issuance of Commissioner’s Circular No. 73.  (Commissioner’s Circulars are public notices in which the Commissioner announces new ILPTO administrative policies.) In it, the Commissioner explained that hitherto, it has been the Government Printing Office that typed up the information regarding the “essence of the invention” for publication.  Now, with newly-emplaced technology, it is possible to spare the GPO the work of typing in this information itself, as the information can be taken directly from the ILPTO’s own electronic files. 

 

So far, so good.  The rub is that in order to take advantage of the new technology, it will be necessary for applicants to supply in electronic form a statement as to what constitutes “the essence of the invention”.  Hence, effective as of the publication of Circular No. 73, all applicants, except for applicants whose applications are PCT national phase applications, are required to submit to the ILPTO a statement of the essence of the invention as an .rtf file of no more than 2 megabytes.  (In the case of national phase applications, the abstract submitted to as part of the PCT filing will be used.)  A request for applicants to provide this statement will included in the Notice of Allowance; according to the Circular, the deadline for submitting the statement of the “essence of the invention” will be the deadline for paying the Issue Fee.

 

At first blush, the new policy regarding abstracts seems unremarkable.  Administratively, the burden imposed upon applicant by the new policy is minor, as by the time most Israel patent applications are allowed, corresponding PCT and/or US applications, including an abstract, have already been filed, and the .rtf file of the abstract can be submitted by email to the ILPTO.  And substantively, §27 would appear to insulate applicants from their self-authored abstracts coming back to bite them.  

 

Nevertheless, upon reflection, it would seem that risk-averse applicants would do well to adopt a Kayton-like approach in submitting their abstracts.  The expression “essence of the invention”, which appears in §§26-27 of the statute, also appears in §49, which is the section that establishes that the patentee has the right to prevent others from exploiting an invention for which a patent has been granted, “whether in the manner defined in the claims or in a similar manner that includes, in view of what is defined in the claims, the essence of the invention that is the subject of the patent”.   Thus, in cases where literal infringement cannot be shown, the patentee needs to demonstrate infringement of “the essence of the invention”, so the applicant would be remiss to put statements into the record that could be used to restrict the scope of this “essence of the invention”. 

 

Furthermore, with respect to the shield provided by §27, it could be argued that a distinction should be made between an abstract provided by the Commissioner versus an abstract provided by the applicant itself.  The former does not necessarily reflect the applicant’s views as to what constitutes the “essence of the invention”, and indeed is usually made without thought on the part of the ILPTO by simply reprinting claim 1, and without seeking the applicant’s input.  The latter, however surely does reflect the applicant’s view.  It could be argued that §27 is only meant to provide a shield for the patentee from the ILPTO’s possibly haphazard, one-sided characterization of “the essence of the invention”, not from the patentee’s own such characterization, and thus §27 does not apply to the applicant’s abstract. 

 

Fortunately, it is relatively easy to write and an abstract that is non-committal, e.g. “There are disclosed compounds of the general formula X; other embodiments are also disclosed”.  Even if the ILPTO notice explicitly asks the applicant to provide a statement describing “the essence of the invention”, the applicant could simply respond that “The enclosed text is claim 1 of the application; the applicant does not take a position as to what constitutes ‘the essence of the invention’ ”. 

 

Finally, while it is admirable that the Commissioner is attempting to make ILPTO and GPO operations more efficient, he appears to have exceeded his authority with Circular No. 73.  Neither the statute nor the implementing regulations require the applicant to provide an abstract, let alone a description of the “essence of the invention”.  In contrast, the statute specifically requires that the Commissioner publish what he considers to be the essence of the invention.  There is no statutory basis for the Commissioner to require an applicant to provide him with a statement as to what the applicant considers to be “the essence of the invention”, let alone to publicly declare such a position. 

 

It is unclear what will happen to applicants who fail to provide the required statement in time, even if they timely pay the issue fee.  Will publication of the application be delayed until the applicant provides the statement?  Will the application be considered abandoned?  Will the applicant have to pay an extension fee for the overdue abstract?  Since damages for patent infringement in Israel can only be accrue from the time the application is published, such delay or abandonment would deprive the applicant of effective patent term or even patent protection, without any legal basis for such deprivation.