OED Warns Patent Agents: Stay In Your Lane

The Office of Enrollment and Discipline wants registered Patent Agents to know that they cannot practice trademark law.

Patent agents are one of the few individuals who are legally authorized to provide legal services without being a member of a State Bar.  Patent agents, like other registered patent practitioners, are authorized to engage in the limited practice of patent law before the USPTO.   Pursuant to federal regulation, a registered patent agent is authorized to “practice before the Office in patent matters.”  37 C.F.R. § 11.5(b)(1). 

This means that a patent agent may prepare and prosecute patent applications; advise clients on patent rights; participate in inter partes and other contested proceedings before the PTAB; and provide legal advice and services relating to patent matters before the USPTO. 

While these rights are broad, patent agents must be mindful of the limitations of their license.  This is because a patent agent who provides legal services outside of the limited scope of what they are authorized to provide may be disciplined—including suffering the loss of their license—by engaging in the unauthorized practice of law in violation of the USPTO Rules of Professional Conduct.

One area that we have seen create problems for patent agents occurs when they attempt to provide trademark legal services.  Generally speaking, only a licensed attorney in good standing and admitted to a state or territorial bar can represent another individual in a trademark proceeding before the USPTO. 

One of the leading disciplinary cases to address UPL in the context of patent agents is In re Bang-er Shia, Proc. No. D2014-31 (USPTO Dir. 2016). In this case, a registered patent agent exceeded her limited authority by filing and signing trademark documents as a purported “domestic representative” of various foreign clients.  The USPTO Director concluded that Ms. Shia had engaged in the unauthorized practice of trademark law and issued an order excluding the agent from practicing before the USPTO.  As a result of her disciplinary exclusion, Shia is prohibited from representing anyone–including patent clients–in matters before the USPTO.

Patent agents have recently become targets of foreign nationals who may seek to end-run the USPTO’s trademark regulations requiring foreign trademark applicants to be represented by U.S. counsel.  Agents must be particularly mindful that they cannot provide independent legal advice or services relating to trademark matters—getting caught providing such services may result in exclusion from practice before the USPTO in any matters. 

Patent agents must always be mindful not to stray from their permitted practice areas.

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