I have written extensively about the ethical issues that can arise during patent prosecution and litigation. This summer, I’m tackling two topics which, stated simply, are: what patent agents can and can’t do, and subject matter conflicts during patent prosecution. This post relates to one issue concerning the former.

First, some definitions: nonlawyers are people who are neither patent agents, patent lawyers, or lawyers; lawyers are people who are licensed by a state, but not registered with the PTO; patent agents are not lawyers, but are registered with the PTO; and patent lawyers are both licensed with a state and registered with the PTO.

It is clear that a nonlawyer cannot provide, say, an opinion as to whether a party is likely to infringe an issued patent. At the outset, that’s clearly the practice of law, and so you’d have an unauthorized practice issue. In addition, the cases suggest that only attorneys can provide such opinions in a way that reasonable reliance can take place. So, forget about nonlawyers.

Can patent agents provide opinions of counsel? It’s an interesting question. The cases I’ve seen suggest not: that it must be from a lawyer, and best if from a patent lawyer. I find this quite interesting, though, as from a functional perspective it doesn’t make a lot of sense. Here’s why.

It is appropriate for a patent agent to advise a client as to whether proposed claims are patentable. That’s what registration authorizes them to do, and obviously they must do this in order to competently prosecute applications.

In making a patentability determination, the patent agent obviously must rely on patent law principles concerning anticipation and nonobviousness. Anticipation, of course, is the mirror image of infringement. “That which infringes if later anticipates if earlier” is close to some quote I’ve read too many times. So, the patent agent is deemed qualified to advise clients on whether proposed claims are patentable.

Yet, he can’t advise a client as to whether a proposed product infringes a patent, or whether an issued patent is invalid. The law seems settled, in part because the PTO only has authority to authorize patent agents to conduct activities that are reasonably related to prosecution: advising clients whether their products infringe valid patents certainly isn’t necessary for prosecution, at least in the abstract.

But from a functional standpoint, this dichotomy doesn’t make a whole lot of sense. Why shouldn’t a client be allowed to receive and rely upon an opinion of invalidity due to nonobviousness, say, from a highly experienced patent agent? The patent agent is required, for example, to know the law of obviousness and to be able to make judgments on behalf of clients in that regard during prosecution. From the perspective of protection of clients, it doesn’t make a whole lot of sense to deny them this choice.

From a legal perspective, again, though, it does, though. The short answer is that it’s the unauthorized practice of law, and allowing this to happen would encourage UPL. (Indeed, if a lawyer was involved, you could have the lawyer get hit for assisting with UPL; however, obviously, UPL would not be a problem if the patent agent was assisting the lawyer to write an opinion.)

So, where we end up is this interesting odd thing: the purpose for which the advice (obvious, or not, for example) is going to be used determines whether it’s appropriate to have a patent agent do it. If the purpose is patentability, it’s fine; if it’s invalidity, it’s not.

I would love your thoughts and comments. hricik_d@mercer.edu

David Hricik
Mercer Law School

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