In 1993, with the help of a mentor and friend of mine, the late Q. Todd Dickinson, I passed the patent bar exam.  I was 23 and had just started law school at night.  I had zero experience writing and prosecuting patent applications.  But, I was a good test taker and I got my “Reg. #” as a result (#39314).  That gave me an official title of Patent Agent and allowed me a very limited license to represent others in their legal matters.  To be fair, it was at least 5 years until someone actually took me up on that ability . . . As it sounds, a patent agent is someone who has passed the patent bar examination but does not have a law degree or license to practice law as authorized by a State Supreme Court.  Unlike a state law license, there are no continuing education or recertification requirements to maintain the patent agent title or the ability to represent others before the USPTO.  There isn’t even an annual fee for a patent agent to keep his or her registration active.

Agent versus Attorney

A skilled patent agent is an amazing asset to a legal practice, particularly one that has a substantial technical background and/or industry experience.  They are generally hard to find, particularly ones that are already trained and proficient at drafting and navigating patent office practice.  We at Neugeboren O’Dowd utilize patent agents and lean on them regularly for their unique combination of technical know-how and patent practice skill set.  

A patent attorney is someone who, in addition to passing the patent bar exam, has also completed law school and passed at least one state bar exam.  Patent attorneys, like all attorneys, are required to complete minimum yearly continuing education and ethics compliance requirements in order to keep their law license active and maintain the ability to represent others in legal matters.

The ability of a patent agent to represent others is thus necessarily very limited and is restricted to activities “which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding[s] before the [US Patent] Office involving a patent application or patent in which the practitioner is authorized to participate.” Luv N’ Care, Ltd. v. Williams Intellectual Prop. (D. Colo. Jun. 12, 2019).

The vast majority of the time patent agents are employed by a law firm and supervised by an actual lawyer.  So, the distinctions above never really become an ethical or malpractice issue since the agent is acting under the authority of a state licensed attorney, who maintains the client interaction and can appropriately give advice on matters outside the scope of a patent agent’s legal representation.  This is much like how paralegals function inside law firms.  However, cases do arise when agents are operating independently or otherwise cross the line into what is clearly legal representation outside the scope of their restricted representative activities.  The Colorado District Court ruled on one of these cases not too long ago.

Waiving Privilege

It is not hard to imagine a situation where a client hires a patent agent to initially file and prosecute a patent application and the scope of work naturally creeps into other realms.  The following are just some of the natural by-products of this type of relationship that we have observed on occasion:

  • Infringement and validity opinions or other analyses of third party patents.
  • Corporate diligence issues such as evaluating ownership, assignments, licenses, and any other transactional document that is controlled by state or international law.
  • Trademark and copyright issues.
  • Responses to cease and desist letters and other legal assertions that are in contemplation of litigation.

The problem here is not that the individual doesn’t have the skill set to give competent advice. But because they aren’t licensed to practice law there will not be an attorney-client privilege associated with those communications.  The law does recognize a very limited patent agent privilege but outside of this limited scope there is no privilege and a waiver is inevitable.  

If a patent agent gives advice on an infringement or validity issue, opposing counsel in a litigation will undeniably have access to those communications and documents during discovery.  The patent agent will be deposed; the client will be deposed; all documents and information that touched those communications will be subject to discovery with virtually no ability of the client to withhold that information based on the attorney client privilege or work product protections.  Patent applications are generally in the public domain so the use of and identification of the patent agent won’t be hard to find.  It would be the first subpoena I would send in a patent infringement litigation and a nightmare for the client on the receiving end of that request.  

Beyond Privilege Waivers

Despite the privilege problem discussed above, other more serious repercussions can develop for the individual agent.  In most states, including Colorado, these types of activities, or even the advertising of these types of activities, would constitute the unauthorized practice of law.   At least in Colorado that is a crime with the potential for jail time – nuf said about that . . . Don’t end up on this list.

Aside from the potential criminal liability, if an agent maintains a malpractice insurance policy it certainly won’t cover activities outside of this limited scope so any liability that the client endures as a result of a privilege waiver will pass to the patent agent with no insurance resource to fall back upon.  

Patent agents are a great thing for a legal practice, they just need to operate in a very narrow lane if practicing on their own, and, more appropriately, be supervised by an attorney.  If you are one practicing on your own, be cautious in the advice you give your clients.  Or better yet, come join our firm . . . 

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