Reminder Regarding Unauthorized Practice Before the U.S. Patent & Trademark Office in Patent Matters

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Conduct of a registered patent lawyer is regulated by both the ethics statutes, rules, and regulations of the state in which the lawyer is admitted to practice law, as well as by the ethics rules of the U.S. Patent & Trademark Office (“the Office”).  This situation provides a good reminder of the scope of the Office’s requirement that only duly authorized patent lawyers and agents may “practice before the Office.”

The Office maintains a register of attorneys and agents who are recognized as entitled to represent applicants having prospective or immediate business before the Office in the preparation and prosecution of patent applications.  Only those individuals whose names appear in the register are entitled to engage in “practice before the Office.”[1] 

The Office of Enrollment & Discipline (“OED”) is responsible for maintaining and enforcing compliance with all of the ethics rules of the Office, including the rules relating to authorization to practice before the Office.  While all practitioners engaged in practice before the Office are subject to the disciplinary authority of the OED, importantly, a “person not registered or recognized to practice before the Office is also subject to the disciplinary authority of the Office if the person provides or offers to provide any legal services before the Office.”[2] 

The USPTO Director, after notice and opportunity for a hearing, and where grounds for discipline exist, may impose on a practitioner the following types of discipline:[3]

(1) Exclusion from practice before the Office;

(2) Suspension from practice before the Office for an appropriate period of time;

(3) Reprimand or censure; or

(4) Probation. Probation may be imposed in lieu of or in addition to any other disciplinary sanction. 

In addition, the OED Director may refer the existence of circumstances suggesting unauthorized practice of law to the authorities in the appropriate jurisdiction(s).[4]

What constitutes “practice before the Office” in patent matters?  Perhaps not surprisingly, the Office takes an extremely broad view of its own authority to impose discipline on practitioners.  In general, many of the activities that one would consider “legal work” are considered to be “practice before the Office.”  Such activities include, but are not limited to, the following:

·        Law-related service that comprehends any matter connected with the presentation to the Office relating to a client’s rights, privileges, duties, or responsibilities under the laws or regulations administered by the Office for the grant of a patent;

·        Law-related service that comprehends any matter connected with the presentation to the Office relating to a client’s rights, privileges, duties, or responsibilities under the laws or regulations administered by the Office for enrollment or disciplinary matters;

·        Such presentations include preparing necessary documents in contemplation of filing the documents with the Office, corresponding and communicating with the Office, and representing a client through documents or at interviews, hearings, and meetings, as well as communicating with and advising a client concerning matters pending or contemplated to be presented before the Office.[5]

More specifically concerning patent matters, all of the activities in the following non-exclusive list are considered to constitute “practice before the Office” which subjects the individual performing such activities to the disciplinary jurisdiction of the Office (as implemented by the OED), regardless of whether the individual is registered or recognized to practice before the Office or not:

·        preparing and prosecuting any patent application;

·        consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office;

·        drafting the specification or claims of a patent application;

·        drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention;

·        drafting a reply to a communication from the Office regarding a patent application; and

·        drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Patent Trial and Appeal Board, or other proceeding.[6]

Note that “drafting the … claims of a patent application” is considered to be “practice before the Office,” as is “drafting an amendment or reply” to an Office action during prosecution of a patent application.

In sum, care should always be taken to avoid engaging in unauthorized practice before the Office.  Receiving a disciplinary communication from the OED will surely ruin your day, and may adversely affect your career.

 

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