Those who regularly read IPWatchdog.com may remember that on August 25, 2008, I wrote that the United States Patent & Trademark Office had finally, once and for all put an end to invention scams thanks to the fact that they had adopted new rules that would significantly impact who can engage in the representation of clients before the USPTO on both the Patent Office side of the building and the Trademark Office side of the building. Unfortunately, the new rules of practice that went into effect on September 15, 2008, will in no way have any impact on invention companies, nor will it have any impact on anyone else other than those of us who are patent attorneys or patent agents registered to practice before the United States Patent & Trademark Office. The Office does not believe they have the authority to do anything to regulate the activities of those who are not attorneys or agents, and sadly the Office is probably right given current rules and laws.
The Patent Office has long held the belief that they are unable to regulate the activities of anyone who is not a registered patent attorney or patent agent. So the new rules that specifically prohibit unregistered individuals and companies from preparing and filing patent and trademark applications will not be enforced by the United States Patent & Trademark Office. What this means is that anyone can prepare and file either a patent application or a trademark application with the USPTO and the USPTO can do nothing to stop that activity. Even if the USPTO knows that the person filing the application is not an attorney or agent registered to practice before the Office there is nothing that they feel they can do under the current law to stop the unauthorized practice of law. In effect, what these new rules seem to have unintentionally done is remove all of those from the low-cost, self-help industry that were ethical members of the bar. The entire industry that has developed has become unregulated and now exclusively reserved for those who have no ethical, moral or legal obligation to look out for the best interests of those they act on behalf of. I don’t think for a minute that was the intention of the Patent Office, but that is the sad reality nevertheless.
The rule at the heart of the debate is new Rule 11.5(b), which states:
Practice before the Office includes, but is not limited to, law-related service that comprehends any matter connected with the presentation to the Office or any of its officers or employees 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 or registration of a trademark, or 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. Nothing in this section proscribes a practitioner from employing or retaining non-practitioner assistants under the supervision of the practitioner to assist the practitioner in matters pending or contemplated to be presented before the Office.
This new rule requires that all patent application related work be done by or under the direct supervision of a patent attorney or patent agent who is registered to practice as such by the Patent Office. Similarly, all work related to the preparation and filing of a trademark application must be performed by or under the direct supervision of an attorney registered to practice in any State. Thus, the rule is very clear as to what is considered the unauthorized practice of law, but the USPTO will not be enforcing the rule against those who are not registered patent attorneys or agents. Rather, the authority to go after those who violating Rule 11.5(b) resides in the various Attorney Generals in each State. So despite the fact that it is the United States Patent & Trademark Office that has promulgated Rule 11.5(b), the Office is leaving it to the States to enforce, or not enforce, the regulation as they may see fit.
The governing statute, at least on the patent side, does not say who can actually file an application, but rather merely says that an application can be filed. The Patent Office has always interpreted the statute to mean that anyone can file an application and the policy of the Office has always been that no application can or should be denied based on the fact that it has been filed by someone who is not a registered patent attorney or patent agent. Admittedly, this does make sense because inventors can represent themselves, and if there are multiple inventors who have contributed the group can elect one inventor to act as the representative of the group. So it is not uncommon for individuals to file patent applications, but to learn that the Office will not prevent an application from being submitted by one who is not an inventor and not a registered patent attorney or agent was still shocking. In recent months I have learned that one particular individual who is not an inventor, patent attorney or patent agent files upwards of 8,000 patent applications each year without any adverse consequences.
To find out which companies are operating in the patent and trademark space you merely need to do a search on your search engine of choice, listen to the radio or watch late night television. These companies are operating out in the open, and now I understand why. The Patent & Trademark Office simply does not have the authority to go after these companies, so they have chosen to attempt to make it impossible for attorneys to work with them, whether the company be a legitimate enterprise or one of the many scam companies operating as an invention business. Given that big business is now starting to represent inventors, prepare and file applicatons it would seem to me that former interpretations by the Office should at the very least be questioned, and Congress should consider giving the USPTO the authority they need in order to stop the unauthorized practice of law. We ought not have to wait for States to do what logically the USPTO should have the authority to do.
Many readers of IPWatchdog.com know that while I have been and continue to be one of the more vocal critics of invention scam companies, I had a long standing relationship with LegalZoom.com. LegalZoom.com was founded by Robert Shapiro (of OJ Simpson fame) and provides self help for inventors and for those who are seeking to obtain trademarks. When the new rules came out I was in contact with LegalZoom.com immediately because the way that they were doing business would have clearly violated new Rule 11.5(b). Talks with LegalZoom.com ensued and attempts were made to create a workable self-help process that would be in compliance with the new rules and allow me to continue with some type of collaborative arrangement. Unfortunately, we were unable to reach agreement on a workable process under the new rules and I was forced to end my cooperative arrangement with LegalZoom.com.
LegalZoom.com has since started offering the service again, they continue to use the system that I invented and have a patent pending on, but because I am a registered patent attorney and ethically bound to follow the rules of the Patent Office I lost about 65% of my business overnight. So excuse me for being extremely upset over the fact that the Patent Office has to allow anyone, regardless of training, experience or bar credentials, to prepare and file patent applications on behalf of inventors. So what is the point in being ethical? What is the point in taking the Patent Bar Exam? I might as well have set up shop in one state and then if the Attorney General gets wise move to another State and keep doing the same thing; namely engaging in the unauthorized practice of law at the United States Patent Office.
As I struggle to rebuild my business after a sudden and unexpected change of rules, and as I struggle to keep my house out of foreclosure, it is of little solice to learn that the Patent Office is not simply choosing to ignore their own rules, but rather that the Patent Office does not have the authority to enforce its own representation rules. This just doesn’t make good sense.
About the Author
|Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)
B.S. in Electrical Engineering, Rutgers University
Gene is a US Patent Attorney, Law Professor and the founder of IPWatchdog.com. He teaches patent bar review courses and is a member of the Board of Directors of the United Inventors Association. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide