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Abstract

Consider a student who graduates in the top 20% of his class. He is an enterprising individual and, rather than working for a law firm, elects to start his own practice after passing the bar. After several months of counseling small clients on patent matters, he gets his first big break when an inventor who is a family friend has a patent challenged at the United States Patent and Trademark Office (USPTO). The recent graduate jumps at the opportunity and offers to represent the inventor in the corresponding trial at the USPTO. The inventor agrees and the young man begins filing motions and discovery requests in the case. He reviews the relevant production and counsels his client on how best to proceed. As the trial advances, he negotiates with the opposing party over possible terms of settlement. Near the conclusion of the trial, he argues the inventor’s case before a panel of judges, who rule that the patent is invalid.

Perhaps surprisingly, our protagonist is not an attorney and has no formal legal training. He has only a bachelor’s degree in chemistry. Nonetheless, because he has successfully passed the USPTO’s entrance examination he is authorized by congress to engage in the practice of law in connection with any procedures that are conducted at the USPTO.1

Traditionally, the overwhelming majority of practice before the USPTO has been confined to patent prosecution, which is the process of preparing a patent application and navigating the legal and administrative requirements to have the application issue as a patent.2 Non-attorney patent practitioners have engaged in such procedures since the USPTO first formulated rules governing practice before the office in 1869.3 However, the Leahy-Smith America Invents Act (AIA) added three new trial proceedings to the list of activities that are carried out at the USPTO.4 Each of the new trials introduces a host of procedures that are unfamiliar to ordinary patent prosecution. In particular, unlike patent prosecution these trials: (i) are conducted using motion practice, (ii) allow for limited discovery including depositions, (iii) encourage oral argument in front of a panel of judges, and (iv) allow settlement resolution.5 Non-attorney patent practitioners are unaccustomed to these new procedures and lack any formal legal training to prepare them for such practices. Thus, the addition of the new trial procedures greatly expands the authorization to practice law that patent agents have historically enjoyed.

This note will explore the reasons why authorizing patent agents to conduct these trials is not justified and comes with unnecessary risks. Section I discusses the state of the practice of law by patent agents at the USPTO. The section begins with a demonstration that patent agents already engage in the practice of law in their historically common activities before the USPTO.6 This is followed by a brief history of how patent agents received their authority to practice law. The second half of section I then outlines the distinctions between traditional practice at the USPTO and practice under the new trial proceedings.

Section II sets forth the general concerns that arise when nonattorneys practice the law. Section III then explains why, in spite of these concerns, the USPTO has been justified in allowing patent agents to practice before the Office without being attorneys at law. As explained in Section IV, however, extending the authorization of patent agents to conduct the new trial proceedings raises new concerns, and is not justified for the same reasons as allowing patent agents to prosecute patents. Finally, Section V proposes a simple solution to avoid concerns over the expanded authorization of patent agents to practice the law under the new trial proceedings by limiting these proceedings to registered patent attorneys.

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