Will the USPTO use annual patent practitioner dues to stop the unauthorized practice of law?

By Gene Quinn
August 15, 2018

It is no secret to anyone in the industry; the unauthorized practice of law is rampant, and OED does nothing to stop it.

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One week ago, the United States Patent and Trademark Office (USPTO) published documents disclosing the intent to impose annual dues payments on all patent attorneys and patent agents. The dues would range between $240 and $410 per year, depending upon whether the patent practitioner paid electronically and completed the suggested number of continuing legal education (CLE) training by the USPTO.

Presumably the annual dues proposed for all patent practitioners is to defray the costs incurred by the office of Enrollment and Discipline (OED) to police the profession. That is how previous annual dues proposals have been explained by the USPTO, but so far, the Office has not yet publicly explained its rationale. The first public forum where this will likely be discussed is the Patent Public Advisory Committee (PPAC) meeting on September 6, 2018.

Levying annual dues in order to fund regulators charged with policing the profession makes logical sense and is how annual bar dues are justified and used by many State bar associations. The problem, however, is OED has never operated to police the practice of patent law as other bar associations. Will OED continue to operate as it currently does, or will OED actually police the profession? That is a question that patent practitioners must have answered.

It is no secret to anyone in the industry; the unauthorized practice of law is rampant, and OED does nothing to stop it.

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37 C.F.R. 11.5(b) defines practice before the Office to include preparing documents in contemplation of filing, and corresponding and communicating with the Office. The rule says that practitioners can employ non-practitioner assistants, but the rule should prevent non-practitioner filing services from filing applications on behalf of individuals. Some of the largest filers of applications are non-practitioner filing services, both on the patent and trademark side. The Office has to know who these filers are because they are corporations (not law firms) corresponding and communicating with the Office after having assisted individuals with the preparation of documents in contemplation of filing. They are engaging in the practice of law, yet OED and the USPTO has not done nothing to stop these rather blatant violations of Rule 11.5(b).

Historically OED views its mandate as only disciplining those who are registered to practice before the USPTO. That is a hard pill to swallow for registered practitioners given OED administers a registration examination, which if you do not pass you are not allowed to openly practice before the Office. An even harder pill to swallow would be if there are annual dues charged to all registered practitioners that would be used to further police only registered practitioners while the Office continues to turn a blind eye to excessive unauthorized practice.

It is also worth noting that in 2008 the USPTO published a Federal Register Notice reminding practitioners that much of the outsourcing of preparation and prosecution work by the industry violates U.S. export regulations. The Notice explained:

[I]f the invention was made in the United States, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the EAR or following the appropriate USPTO foreign filing license procedure. See 37 CFR 5.11(c). A foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.

Nothing was ever done to follow up on this Notice, and the outsourcing of preparation and prosecution work to those who are unregistered continues. This means work is being done by those who are not registered patent practitioners, typically in foreign countries, and it is being done for increasingly less, which pushes billing rates ever lower for those who are registered to practice before the USPTO. Ironically, it will be those who have seen their work outsourced overseas and billing rates slashed as the result of unauthorized practice and violations of export regulations who will be charged annual dues under the proposal, while OED has historically given those who are unregistered but doing preparation and prosecution work a free-ride.

Over the last several years the USPTO has also raised concerns about patent quality, promising to raise patent quality, at times not so subtly blaming the industry and patent practitioners. Saving for a minute the reality that “patent quality” is a subjective term that can mean a variety of different things to different people, there is no doubt that quality of patents and patent applications are uneven. But is that really any wonder? Certainly, some practitioners are better than others, but does anyone really believe that the unauthorized practice of law raises quality?

The USPTO has a quality problem no one wants to talk about. If charging dues to patent practitioners will allow OED to put an end to the unauthorized practice of law many, if not most, practitioners would undoubtedly support the initiative. However, if OED plans to continue with a docket full of reciprocal discipline and only enforce ethics rules against registered practitioners, practitioners should loudly protest the imposition of annual dues.

A bar association truly concerned with policing the industry does something to stop the unauthorized practice of law. If the USPTO and OED want to charge annual dues to patent practitioners fine, but the industry deserves to hear what will be done with those dues and how OED plans to attack the serious problems presented by the unauthorized practice of law.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 21 Comments comments. Join the discussion.

  1. Anon August 15, 2018 1:11 pm

    At the time, the “export” memo came out, the firm I was with was contemplating a foreign “outsource” as part of a package enabling fixed fee pricing.

    While efforts towards fixed fee pricing continue(d), the outsource option became DOA.

    Having “real world” experience (including international sourcing) prior to turning to law, the notion of outsourcing is unsurprising. How that notion exists within the domain of law (and in particular, for cross-border legal items involved with innovation) is an entirely different matter.

    Some (i.e., Greg DeLassus) have attempted to minimize the “Sovereign effect” by stating that innovation is a “open-border” type of thing and that in the sense that no matter where innovation occurs, everyone benefits.

    The point here shared by Gene should serve as a reminder that patent law is (remains – and ever shall be) a Sovereign-centric law and that innovation really does have border effects.

    This also reinforces my existing views as to the danger (inherent) in a juristic person that exists in a cross-border manner (large international Big Corp). Not that such juristic persons are innately “bad,” but rather, such juristic persons simply are not beholding to a Sovereign in the same manner that a real person is. I truly believe that this disparity is a cause of harm for a strong US patent system. This cause may show up in a number of different ways, including the well-known guise of international harmonization. While I certainly “get” that there may be benefits (and especially benefits to large international Big Corp types) from alignment from one Sovereign to another, such alignment for alignment’s sake may be placed ahead of a particular Sovereign’s interest. When alignment robs the US of the gold standard of STRONG patent rights, the US Sovereign does suffer. And the “export” rule here is a direct reflection of that understanding.

    Having said that, it would not surprise me at all to hear from the Big Corps in calling for (or behind the scenes manipulation to effect) the dismantling of that Sovereign protection.

  2. American Cowboy August 15, 2018 1:30 pm

    I am familiar with lots of trademark outfits that are doing UPL, but not so much on the patent side. Can you give some more specific citations?

  3. anon36 August 15, 2018 2:01 pm

    Another thing to think about in connection with this is the policing of attorneys doing trademark work. It looks like this proposal to fund OED with fees takes all the fees from patent practitioners. Why? OED works on trademark matters as well. Why should patent applicants (who ultimately pay these fees) subsidize OED’s trademark work? My guess is that the unauthorized practice of law is also common–maybe even more common–for trademark work. It’s strange that the USPTO requires a law degree for its trademark examining attorneys but has no sort of formal registration or examination process for private attorneys doing trademark work.

  4. Night Writer August 15, 2018 2:59 pm

    Another good article Gene. I agree go after the people that are practicing without a license. There are large numbers of them.

  5. Curious August 15, 2018 9:04 pm

    The patents practitioner dues are little more than a cash grab that’ll cut down the list of registered practitioners but do little else. You don’t want to do CLE, just pay an extra fee that gets you out of it.

    I’m not sure what jurisdiction the OED has over UPL. Its not like they can revoke their license. Seriously (as in, this is a serious question), what can OED do to someone who has been accused of engaging in UPL but isn’t a registered agent/attorney?

  6. patent leather August 15, 2018 9:10 pm

    EFS down all day until tomorrow. I hope nobody had to file a new application with a deadline of today

  7. DDS August 15, 2018 9:18 pm

    I would like to know what we, especially agents, get in return for paying dues to a USPTO Bar? If we get nothing then it is just a tax.

  8. patent leather August 15, 2018 9:20 pm

    I get phone calls almost daily from foreign law firms (mostly in India it seems) trying to sell me on outsourcing our work (searches, application drafting, etc.) Is there any patent firm in the U.S. that would really do this? Even patent searches would probably violate export regulations (not positive, but I don’t want to find out!) Since i get calls daily there must be a market for these types of services. I think any practitioner would have a screw loose to send their work overseas.

  9. Anon August 15, 2018 9:38 pm

    It is a strange conundrum that the Office aims to go after those of whom are “properly” before the Office. It makes me wonder if the administrative agency somewhere in its charter is constrained and simply not authorized to discipline anyone who is not properly before the Office.

    Taking a look at 35 USC 2(b)(D) (emphasis added):
    may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office, and may require them, before being recognized as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office;

    Perhaps some other federal agency is empowered to stop those NOT properly before the Office…

  10. EG August 16, 2018 4:55 am

    Hey Gene,

    My answer to the question you pose: Of course not.

  11. CP in DC August 16, 2018 8:54 am

    The more I think about this proposal, the less I believe the PTO can deliver. The PTO’s incompetence is staggering.

    1. The EFS system was down all day yesterday and still having troubles today. This is the main filing system for the PTO, the one they forced everyone to use, unless you wanted to pay extra fees. And the PTO cannot make it work. When it works it is slow, very slow, and unless you use the “right” PDF format it bounces the document (don’t get me started on the proposed docx format). So the PTO wants us to believe they can run an OED that can monitor non-practitioners when they can’t even make their filing system work.

    2. Does OED want us to believe that now with more money they will stop the unauthorized practice of law? Stop it now or does the unauthorized practice only matter after you pay fees. If practitioners know that there is unauthorized practice, why doesn’t the PTO? I guess the OED really doesn’t know what is happening in the practice. Why wait on enforcement? Show us that you can actually police the practice and we’ll believe your claims (as Gene says and gladly pay the fee).

    3. You would be a fool to pay the 240, better pay the 410. Let me explain. You will need to pay for CLE to get the 240 rate. If your CLE costs more than 170 (just to break even), you are wasting money. I take CLE (state bar requirement) and it costs a lot more than 170 (think thousands of dollars to annually get 12 credits including 2 ethics). So unless the PTO is going to provide free (I had to say it) CLE, paying the 410 makes sense. CLE providers want to make money, so free or really cheap is out. Don’t waste time and money taking CLE. So much for increasing the competence of practitioners.

    4. Only patent prosecutors will be held accountable, thereby reducing the payout for the PTO. The patent litigators with reg numbers will drop it. They don’t need a reg number for their practice, so why bother with CLE or the fee. Trademark attorneys who also “practice before the office” won’t have to pay because it’s for “patent practitioners.” If your practice is IPRs and PGRs then pay the 240 fee (no CLE required) and get your ticket stamped (you don’t need a reg number to do this practice).

    5. While patent prosecutors will be obligated to do this, examiners will be exempt (and PTAB judges too). If patent prosecutors are taught and tested for competence (i.e., know the law and rules), what good is it if their audience doesn’t know or understand the material. As posted in the other article, some examiners have never sat for the patent bar. That’s right, you must master the material, but examiners get a pass. Merely saying “applicant’s arguments have been considered but are not deemed persuasive” is not articulated reasoning. To improve “patent quality” both sides must be competent.

    6. This proposal places the US patent prosecution in line with China and India. Patent prosecution in China and India is conducted by many clerks, that sit in a room, type out responses, but never know the law. You only need one person to sign the papers. So as long as you have one person with a reg number that signs off, you can have many writing applications, amendments, and appeal briefs that never picked up a case or the MPEP (or have a cursory understanding). Now, charge say $50 for “review” and that signature, you can do 12 a hour. That’s $600 an hour, and in one hour you just paid the 410 fee. See how little sense this makes. If enforcement is real and the commitment to quality real, then I’d rather emulate the European standards for patent prosecutors.

    7. Don’t ask me to submit comments to the PTO. I’ve attended the PTO “quality” meetings and submitted comments. The PTO is required by law to ask for comments, but generally ignores or dismisses them. They do it so they can say they met the legal requirements and go on with their proposals.

    If the PTO wants us to believe this proposal is serious, then crack down on the unauthorized practice of law NOW. When was the last time you heard about a case that showed the unauthorized practice? Show us practitioners that you can run OED like a state bar association (one of my state bars publishes all disciplinary hearings each month). The PTO must require CLE for all without loopholes or exemptions. The PTO must show us they can do the work and are serious about qualifications and then we will believe them, but the PTO’s track record for credibility is at an all time low.

    Enough of the rant, I need to get back to work.

  12. Gene Quinn August 16, 2018 8:58 am

    EG @10…

    I’m going to give them the benefit of the doubt until I hear otherwise. Director Iancu is a different breed. But whether an issue like unauthorized practice and the impact it has had on patent practitioners will resonate with him remains to be seen.

    Of course, if it is left up to OED nothing will be done.

  13. Raj Abhyanker August 16, 2018 11:04 am

    Gene and readers,

    In our litigation against the USPTO (now being appealed), the USPTO claimed that they have no congressional authority to regulate non-lawyers. We have disagreed and pointed to recent actions against Chinese companies by the OED. Despite this, the USPTO won their motions to dismiss in our Swyers and LegalZoom cases. Given that, and combined with the fact that it seems to be that the USPTO is enriched through government fees by UPL filers (our estimation is that about 10% of all trademark filings are through UPL filers and 25% of the top 100 Trademark filers in 2017 are unauthorized practitioners), it is doubtful that any fees applied to registered practitioners would be used to combat UPL.

    The best course of action is to help us battle UPL through the 9 unfair competition lawsuits we have brought against UPL providers by helping us identify injured customers to serve as witnesses. We now have over 100 injured customers against Trademark Engine, and are on our way to confirming over 500 injured witnesses against LegalZoom’s trademark practice.

    I have been regularly posting on my blog which might be of interest to your readers here: http://www.rajthelawyer.com.

    I plan on releasing my next post in a couple of days, which will demonstrably show why the State Bars are effectively powerless now given UK deregulation.

  14. Night Writer August 16, 2018 1:19 pm

    @8 patent leather

    There are major corporations that outsource this work. They have one US lawyer supervise the India teams that prepare the work.

    It is getting more and more common. Basically, anything to save money.

  15. Raj Abhyanker August 16, 2018 1:24 pm

    Gene,

    My previous post I wrote didnt post here, so I am trying again. The USPTO has taken the position that it lacks congressional authority regulate the practice of law for non-practitioners in our federal litigations. For this reason, I don’t think they will use fees to do that..

    Raj

  16. Anon August 16, 2018 4:38 pm

    Raj,

    There is a time delay factor – first time posters are often tripped up by it.

    While I wish you good luck in your pursuits, note my post above which does appear to limit the Office reach.

  17. patent leather August 16, 2018 7:38 pm

    Gene, no article/discussion on the massive outage (two days now) of the USPTO e-systems? Your blog is a great venue for us practitioners to vent and share info when this stuff happens.

  18. Jianqing Wu August 17, 2018 9:16 am

    All professional license schemes are created for trade protection. It may improve service quality but also exclude others who might have super skills. I have noted that people with extra ordinary hand-operating skills may be unable to get medical licenses, but patients’ eyes and hearts are cut by high-test-score achievers with poor hand skills.

    Another negative effect is since the trades in the U.S. protect themselves, society has a much higher risk from people could not make a living (think that even a handyman could need a license). So, a judge stricken from the bench may be unable to find a job in dish-washing (hundreds applicants are better than her). One person-one job path must be really bad to society. Distressed people do anything.

    Another point is that every licensing body will quickly abuse license fees. The PTO has turned the patent into cash-generating machinery. It will quickly milk patent practitioners.

    If you argue that a licensing scheme can improve service professionals, I do not think so. However, licensing scheme is good to make sure that all licensed people know some ground rules and what cannot do. Besides, I do not believe the PTO is competent. I figure out that its 2015 quality initiative is largely to achieve high rejection rates, more abandonment, more money, and few patents. This kind of things can soon be ported into the licensing scheme.

    Also, true enforcement against UPL is hard because inventors may find help from non-licensed people and file papers by themselves. When patent fees, petition charges, and attorneys fees are so higher, it is impossible for non-corporate inventors to get patent. For a software invention, each bad rejection can cause the inventor $5,000 easily.

    I found truth about UPL in a hard way. In e-discovery, UPL is everywhere. Licensed people were not used, but non-licensed people were everywhere. I once attempted to ask DC bar, New York bar, and government agencies to enforce UPL. What I found was that there was no funding, no mechanism to enforce against lay people in DC. I finally solved the riddle: UPL is only enforced against LICENSED people and it has no force against those who do ULP. I suddenly realized it is another biggest joke. In theory, those UPL people can be “disbarred,” then they just keep doing UPL life time in a disbarred standing. I wasted so much time for nothing.

    If I had a choice, I would not favor any attempt to “improve trade skills.” Rather, I like to see all trade licensing standards be reduced to a few ground rules. My view is based upon my finding that there is no meaningful measures for professional skills, there is no real method for doing so, and there is NO way to enforce against non-licensed people. Putting them in jail? It would not happen. So, it only burns our money, get more burden for ourselves, and give the PTO another way to get money.

    DO NOT THINK IT WILL HELP US.

  19. Raj V. Abhyanker August 17, 2018 3:33 pm

    Gene and Readers,

    I have posted my blog post now, which is effectively makes the USPTO’s OED meaningless if it succeeds. Specifically, I provide evidence that LegalZoom has started directly practicing law in the United States in the last 3 motnhs, competing with its own “attorney network” and bypassing all USPTO and Bar Regulations. See my post here : https://rajthelawyer.com/skinning-the-cat-legalzoom-creates-a-new-loophole/

  20. Jianqing Wu August 17, 2018 3:36 pm

    @15 Raj Abhyanker

    That is the main point. In all states, bars do not have real enforcement mechanisms. The only way to enforce against UPL is state business code. It would be extremely rare for a state district attorney to go after a layperson. So, I have to conclude all scenarios discussed by various readers will not be affected by PTO OED regulations.

  21. John Faro October 14, 2018 2:09 pm

    The PTO/OED is a pseudo professional gaggle of bureaucrats – anyone that has been ensnared in its bs, as have I, knows all too well it’s incompetence, and political agenda (empire building)

    Compounding its incompetence in the investigation of misconduct, is the trial of disciplinary proceedings before an ALJ from HUD appeals – who does not have a clue why an inventor files a patent application

    Each of the OED and ALJ prefer to operate in a “context free zone”, in violation of the OED mandatory legal requirements of its own rules (37 CFR 11.22(d) ) and the interpretative decision reflective in the RFI sent to an attorney under investigation – it’s a runaway agency without any effective oversight

    Moreover, in the investigation and prosecution of allegations of misconduct, it engages in “will blindness” of the information which it Acknowledges, and is Required to collect and consider, in its RFI to attorneys accused of misconduct.

    The reality – after the passsge of the AIA – which permits unregistered individuals to provide technical and paralegal support to pro se inventor applications – the OED wants to modify or reverse the holding of Sherry v Florida,, and control the non-legal activities which are beyond the regulstion of the State Bar

    Get ready for the patent police!!

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