The Federal Circuit's recent decision to hear en banc the questions of whether and if so to what extent trial counsel's opinion is waived will likely shed much light on this subject. In In Re Seagate Technology LLC, Misc. No. 830 (2007), the Court agreed to hear en banc these three questions:
(1) Should a party's assertion of the advice of counsel defense to willful infringement extend waiver of the attorney-client privilege to communications with that party's trial counsel? See In re EchoStar Commc'n Corp., 448 F.3d 1294 (Fed.Cir.2006).
(2) What is the effect of any such waiver on work-product immunity?
(3) Given the impact of the statutory duty of care standard announced in Underwater Devices, Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (Fed.Cir.1983), on the issue of waiver of attorney-client privilege, should this court reconsider the decision in Underwater Devices and the duty of care standard itself?
69 Keva LLC v. Mizuno Corp., 243 F. Supp.2d 418, 422 (M.D.N.C. 2003)
Patent Agents: The Person You Are By Professor David Hricik
*Mercer University School of Law (c) 2006
*Professor Hricik is an Associate Professor of Law at Mercer University School of Law, in Macon, Georgia. He teaches patent law, legal ethics, and other courses, and is a past chair of the Ethics & Professionalism Committee of the Intellectual Property Section of the American Bar Association and currently chairs the Professionalism & Ethics Committee of the American Intellectual Property Law Association.
Prior to becoming a full-time professor, Professor Hricik litigated patent cases and represented lawyers and law firms in malpractice and disqualification matters for fourteen years, first with Baker & Botts, LLP, and most recently with the Houston law firm of Yetter & Warden, LLP.
This is another in a continuing series of articles addressing patent ethics. See David Hricik, How Things Snowball: The Ethical Responsibilities and Liability Risks Arising from Representing a Single Client in Multiple Patent-Related Representations, 18 Geo. J. Legal Ethics 421 (2005); David Hricik et al., Save a Little Room for Me:
The Necessity of Naming As Inventors Practitioners Who Conceive of Claimed Subject Matter, 55 Mercer L. Rev.
635 (2004); David Hricik, Where the Bodies Are: Current Exemplars of Inequitable Conduct and How to Avoid Them, 12 Tex. Intell. Prop. L.J. 287 (2004); David Hricik, Trouble Waiting to Happen: Malpractice and Ethical Issues in Patent Prosecution, 31 AIPLA L.J. 385 (2003); David Hricik, Aerial Boundaries: The Duty of Candor as a Limitation on the Duty of Patent Practitioners to Advocate for Maximum Patent Coverage, 44 S. Tex. L. Rev. 205 (2002); David Hricik, The Risks and Responsibilities of Attorneys and Firms Prosecuting Patents for Different Clients in Related Technologies, 8 Tex. Intell. Prop. L.J. 331 (2000).
The title is from the song “The Person You Are” by John Wesley Harding off the CD “The Name Above the Title” (1991). I would like to thank my former research assistant, Amy Falkingham (now Pille) (J.D., Mercer University School of Law 2006) for her research assistance with this article, and for financial support from Mercer University School of Law.
i
TABLE OF CONTENTS
1. Introduction... 1 2. The Requirements for Becoming a Patent Agent. ... 4 3. Patent Agents are Both Lawyers and Nonlawyers for Purposes of Discipline... 5
A. For Purposes of Discipline the Patent Office Should treat Patent Agents as
Patent Lawyers... 5 B. During Disqualification Proceedings, the Patent Office, the Patent Office
should treat Patent Agents as Nonlawyers... 6 C. For Purposes of Imputed Disqualification in Litigation and Disciplinary
Purposes, Courts and Bar Associations Should treat Patent Agents as
Lawyers... 9 D. Conclusion: Consistency... 11 4. For Purposes of Partnership and Sharing Fees, the States, but not the Patent Office, treat
Patent Agents as Nonlawyers... 11 A. The Scope of Preemption by the PTO Code... 12 B. States Cannot Prohibit Partnerships Limited to Patent Prosecution ... 13 C. Partnership Between Lawyers and Patent Agents. ... 15 5. The Fact that Patent Agents Practice Law, But are Not Lawyers, Creates Odd
Dichotomies ... 18 6. For Purposes of Privilege, Patent Agents Should be Treated as Lawyers. ... 28 7. Conclusion ... 30
1 1. Introduction
The United States Patent & Trademark Office (the “Patent Office”) permits both lawyers and nonlawyers with certain minimum educational requirements to take the patent bar and become registered with the Patent Office, and thereby become authorized to prosecute patent applications.1 Thus, a license to practice law is neither a condition of, nor is it sufficient to, practice before the Patent Office.
Patent agents offer efficiencies and effectiveness to clients. Obviously, because they have not had to undertake three years of legal education, patent agents, through equally qualified in the eyes of the Patent Office to prosecute patents, may be available at a lower hourly rate to clients. In addition, they may be better or at least more recently technically trained than a lawyer, and so may be better able to communicate with patent applicants and to draft more accurate applications.2
Patent agents, however, suffer from an identity crises in the eyes of the law that inhibits access to these benefits. Courts, bar associations, and disciplinary agencies struggle with whether what they do constitutes the “practice of law,” whether they give “legal advice,” and whether they are “nonlawyers” and so cannot form partnerships with lawyers to practice law.
How they are characterized has critical, real-world consequences. Whether a client can know that information disclosed to the agent will be subject to protection under a privilege, for example, or even must be held confidential by the patent agent, turns on the agent’s status.
The identity crisis is understandable. After all, at one time what we now call patent agents were designated as “patent lawyers” by the Patent Office itself.3 Today, while they can
1 37 C.F.R. §11.6.
2 See Penny Prater, The Evolving Rules of Patent Professionals, 2006 Advanced Biotechnology/Chemical Patent Practice Seminar (June 16, 2006), San Jose, California.
3 See Sperry v. State of Florida, 373 U.S. 379, 385 (1963) (discussing legislative history of this change).
2
no longer call themselves “lawyers,”4 they are authorized by federal statute to prosecute patents, and prosecuting patents constitutes “practicing law.” Thus, patent agents practice law, but, they are not “lawyers” and cannot call themselves “lawyers.” Alone, this history and those facts has led to confusion and disagreement as to how to treat patent agents for purposes of ethical rules, conflicts of interest principles, and privilege rules: though they practice law, for each purpose, are they “lawyers,” or not?
Patent agents are not the only professionals who are authorized to “practice law” without state licensure.5 But what makes them unique, and which truly makes their classification more difficult, is that, unlike other nonlawyers, patent agents must comply with ethical rules that are identical to those that apply to lawyers who practice before the Patent Office6 and, further, are largely identical to the disciplinary rules applicable to lawyers who do not practice before the Patent Office.7 Patent agents truly occupy a unique position in the legal system.
From the perspective of the Patent Office, patent agents walk, talk, and look like lawyers;
from the perspective of state bars, however, they are nonlawyers. That has led to open disagreement on fundamental conclusions as to who they really are. For example, does the fact that patent agents “practice law” mean that their clients can claim privilege over communications between the patent agent and the client, or does the fact that they are not “lawyers” mean communications cannot be privileged? Does it mean that they are “nonlawyers” or “lawyers” for conflict of interest purposes and for purposes of sharing fees or forming partnerships?
4 Id.
5 “Enrolled agents” can provide legal advice concerning federal income tax laws, for example. See 31 C.F.R.
§ 10.4(b).
6 37 C.F.R. § 10.1 et seq.
7 See Generally, Timir Chheda, A Handy List: Comparison of the ABA Model Rules of Professional Conduct with the Patent Rules of Ethics, 5 J. Marshall Rev. Intell. Prop. L. 477 (2006) (providing useful tables).
The PTO Code varies from state ethics rules in various, sometimes critical ways. Nonetheless, at their cores the two largely overlap and require similar standards of conduct.
3
Despite the fact that there are thousands of registered patent agents, no article has as yet addressed the fundamental issue as to the best characterizations of patent agents in the legal and patent systems in these critical areas. This article attempts to fill that void by providing guidance to patent agents, lawyers, courts, and bar associations in understanding the who patent agents are.
The article not only describes those ethical issues, it explores whether patent agents should be treated as “lawyers” in the various contexts in which they operate. It seeks to address the split in the authorities on whether patent agents are “lawyers” for a given purpose, clarity that is in dire need, since authorities disagree on whether they are “lawyers” for even the same purpose.
Further, often courts hold that lawyers who engage in the same act as a patent agent “gives legal advice,” but a patent agent who does the same thing does not, even though both “practice law”
when they do so.
Inefficiencies flow from this uncertainty and force clients who wish to be sure that the privilege applies, for example, to hire lawyers over patent agents even if the latter may be equally skilled and available at a lower price.
This article first describes the requirements for being a patent agent. It then describes the ethical standards which apply to them, and finally analyzes the common ethical issues that face patent agents, seeking to clarify who they really are, and what they really do.
At the outset, some definitions: a “patent lawyer” is someone who is both licensed by a state to practice law and is registered to practice before the Patent Office; a “patent agent” is registered with the Patent Office, but is not licensed by a state to practice law; a “lawyer” or
“attorney” is licensed by a state to practice law, but is not registered with the Patent Office.
4
2. The Requirements for Becoming a Patent Agent.
A patent agent is an individual who is registered to practice patent law before the Patent Office.8 To be registered, the patent agent must have certain legal, scientific, and technical qualifications, and must demonstrate good moral character.9 A lawyer who wants to practice patent law must pass the same test as does a patent agent: simply being a lawyer is insufficient to qualify to practice before the Patent Office.10 Thus, being a lawyer is neither sufficient to appear before the Patent Office, nor a condition to doing so.
Once registered, a patent agent becomes subject to and must comply with the ethical standards promulgated by the Patent Office and contained in the PTO Code.11 The PTO Code is largely based upon the ABA Model Code.12 Thus, it is a comprehensive ethical code, covering everything that can be found in codes governing lawyers.13 The PTO Code applies with equal force to lawyers who become registered to prosecute patents.14
Some say that this means that “[f]or all purposes, lawyers and nonlawyers seeking to practice patent law before the United States Patent and Trademark Office find themselves on the same footing.”15 This is a half-truth. The standards that apply to patent agents and patent
8 37 C.F.R. § 11.6.
9 37 C.F. R. § 10.7(a).
10 37 C.F. R. § 10.6(a).
11 37 C.F.R. § 10.1 et seq
12 David D'Ascenzo, Federal Objective or Common Law Champerty? Ethical Issues Regarding Lawyers Acquiring an Interest in a Patent, 3 Tex. Intell. Prop. L.J. 255 (1995).
13 See generally, William Jacob, Professional Ethics before the USPTO: A Discussion for Beginners, 16 Prof.
Lawyer 22 (2005) (describing scope of PTO Code).
14 37 C.F.R. § 10.1 & 10.1(r).
15 Mold-Masters Ltd. v. Husky Injection Molding Sys., Ltd., 2001 WL 1268587, *2 (Nov. 15, 2001) (citing In re Ampicillin Antitrust Litig., 81 F.R.D. 377, 393 (D.C. 1978)). The statement is true only with respect to the Patent Office. Patent lawyers can be disciplined by a state bar for violating state ethics rules, see Buechel v. Bain, 713 N.Y.S.2d 332 (N.Y. 2000; but patent agents may not be. However, nonlawyers who practice patent law can be subject to state proceedings for the unauthorized practice of law, and patent agents can be subject to such proceedings if their conduct exceeds the boundaries authorized by federal law. Congress did not authorize those
5
lawyers by the Patent Office are identical.16 However, patent lawyers, because they are licensed by a state, likely have additional licensing requirements, such as continuing legal education requirements, that patent lawyers are not subject to. Thus, in terms of treatment by the Patent Office, the two are the same. The differences do matter, however, as becomes clear below.
3. Patent Agents are Both Lawyers and Nonlawyers for Purposes of Discipline
Unanswered questions concerning the status of patent agents exist within the Patent Office and in disqualification proceedings in state and federal courts. This section addresses what is known, and what remains to be discovered about how the Patent Office and the courts and bar associations will characterize patent agents. Surprisingly, the following shows that policies would be best served if patent agents are treated as lawyers for purposes of discipline in the Patent Office, but as nonlawyers for all other purposes.
A. For Purposes of Discipline the Patent Office Should treat Patent Agents as Patent Lawyers.
Congress authorized the Patent Office to establish disciplinary rules and to discipline practitioners who violate them.17 In accordance with that authority, the Patent Office established the Office of Enrollment & Discipline (“OED”).18 The OED reviews complaints, conducts investigations, and enforces the PTO Code.19 Over the years, the OED has written numerous opinions interpreting and applying the PTO Code.20
who have not become registered with the Patent Office to practice patent law, nor authorize those who are registered with the Patent Office to practice law broadly – only to practice before the Patent Office.
16 In re Amalgamated Dev. Co., 375 A.2d 494, 496 (Ct. App. D.C. 1977) (“The only difference between the two is that patent agents are not also attorneys.”)
17.
35 U.S.C. §§ 2(b)(2)(D), 32 (2005).
18.
See id.; 37 C.F.R. § 10.2(a) (2005).
19. See, e.g., Weiffenbach v. Logan, 27 U.S.P.Q.2d 1870 (Comm’r Pat. and Trademarks 1993); McCandlish v.
Doe, 22 U.S.P.Q.2d 1223 (Comm’r Pat. and Trademarks 1992); Weiffenbach v. Frank, 18 U.S.P.Q.2d 1397 (Comm’r. Pat. and Trademarks 1991); Weiffenbach v. Gould, 14 U.S.P.Q.2d 1331 (Comm’r. Pat. and Trademarks 1989); Small v. Weiffenbach, 10 U.S.P.Q.2d 1898 (Comm’r. Pat. and Trademarks 1989).
20. These opinions are available at: http://www.uspto.gov/web/offices/com/sol/foia/oed/oed.htm.
6
The OED has authority to reprimand, suspend or exclude patent agents, either generally or from a particular matter, but only if it proves that the patent agent has violated a disciplinary rule in the PTO Code.21 Thus, a patent agent can be disciplined by the OED only for violations of the PTO Code. As a result, the PTO Code controls the question of whether the OED may bring a disciplinary proceeding.
The same is true with patent lawyers: the OED may succeed in disciplining a lawyer practitioner only by establishing a violation of the PTO Code.22 For that reason, for purposes of discipline, patent agents should be treated as patent lawyers. They are subject to discipline only upon violation of the PTO Code.
B. During Disqualification Proceedings, the Patent Office, the Patent Office should treat Patent Agents as Nonlawyers.
Ethical issues can be raised by various personnel and entities in the Patent Office, in both ex parte prosecution and inter partes proceedings, and also by the participants to those
proceedings, since parties and PTO personnel are authorized to bring motions (called “petitions”
in the Patent Office) to disqualify.23 The Patent Office is not required to apply the PTO Code to these petitions, since regulations specifically provide that the PTO Code does not control disqualification petitions, which instead are “handled on a case-by-case basis under such conditions as the Commissioner deems appropriate.”24
Because of this “case-by-case” approach to addressing disqualification petitions, the Patent Office is not required to apply the PTO Code in deciding petitions seeking to disqualify patent agents. It has, as a result, relied on legal ethical rules when deciding the propriety of
21.
See 35 U.S.C. §§ 2(b)(2)(D), 32; 37 C.F.R. § 10.130(a).
22 Id.
23.
35 U.S.C. § 32; 37 C.F.R. § 10.130(b).
24.
37 C.F.R. § 10.130(b).
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conduct of patent lawyers. For the following reasons, however, the Patent Office should not, absent compelling reasons, treat patent agents like they are lawyers.
Although the Patent Office has relied on the PTO Code in deciding petitions to disqualify,25 those decisions have stated that when the office is deciding disqualification petitions, its interpretation of the PTO Code can be “aided by decisions of federal courts” which addressed ethical matters involving lawyers.26 While they may be informative of lawyer ethical standards, the decisions to which the office referred often were based upon legal ethical rules that differ in wording from the PTO Code, raising the possibility that a patent agent could be disqualified from representing an applicant in the Patent Office based upon principles from lawyer-ethical rules, not the PTO Code. Patent agents, of course, are not lawyers.
In applying this case-by-case approach, entities within the Patent Office should for two reasons be extremely reluctant to rely on rules that differ from the PTO Code. First, neither the disciplinary rules of the state in which the agent practices nor the authority interpreting those rules should be given much weight to the extent those rules differ from the PTO Code27 for the simple reason that the PTO Code is the only code of ethics that patent agents are required, or agreed, to follow. In determining whether a patent agent has acted unethically, there should be a very good reason before the Patent Office applies rules that were developed under attorney disciplinary codes that, by their own terms, do not apply to patent agents.28
25.
Anderson v. Eppstein, 59 U.S.P.Q.2d 1280 (Bd. Pat. App. & Interf. May 11, 2001) (“While the PTO has no specific rules which govern disqualification petitions, generally the provisions of the PTO Code . . . govern . . . .”).
26.
Id. In a trademark case, the board recently wrote that “there is nothing improper in considering relevant case law of other jurisdictions with the understanding that different wording in those standards of professional responsibility may compel a different result.” Finger Furniture Co. v. Finger Interests No. 1, Ltd., 71 U.S.P.Q.2d 1287 (June 29, 2004) (trademark decision).
27 Obviously, if the state rules and PTO Code are identical, it doesn’t matter which applies.
28 To be sure, a patent agent who is an employee of a law firm is likely to be deemed a nonlawyer for purposes of state disciplinary rules. For example, partners of law firms must take reasonable steps to ensure that nonlawyers conform their conduct to applicable state disciplinary rules. See, e.g., Model Rules 5.1, 5.2, 5.3.
8
Second, not only have patent agents not agreed to comply with state ethics rules, but application of state ethics rules to their conduct can create extraordinarily troublesome issue within the Patent Office. There is disagreement, for example, over whether a lawyer who knows confidential information of one client that is material to another client’s patent application must comply with state lawyer disciplinary rules, and keep the information confidential, or may comply with the duty of candor and disclose the information to the Patent Office.29 Some say that under state law, a lawyer may not disclose this information, even if doing so is required by the PTO Code.30 While this disagreement creates a troublesome issue for lawyers because state ethics rules can be read to conflict with the PTO Code, the same issue does not force patent agents, since they are not subject to state rules. On the other hand, if ethical issues concerning patent agents turn on rules beyond the PTO Code, then these same uncertainties begin to affect the obligations of patent agents as well.
Thus, although patent agents should be treated as lawyers for purposes of discipline, when applying the case-by-case approach to disqualification, the Patent Office should be
Thus, although patent agents should be treated as lawyers for purposes of discipline, when applying the case-by-case approach to disqualification, the Patent Office should be