In today’s Federal Register, the USPTO has reopened the discussion on whether or not patent agents may prepare and file assignments for their clients.
The USPTO has long allowed patent agents to file patent assignments, considering the assignment “incident to the preparation and prosecution of patent applications
before the Patent Office”. Now, the USPTO is considering removing the language under the argument that assignments are a form of contracts, which is governed under state law.
This has a profound and negative effect on patent attorneys as well, as any assignment filed for an out of state client would also fall into this trap.
My sense is that patent attorneys, especially those who see patent agents as a threat to their livelihood, would commend this new rule change so that they would have some albeit miniscule argument as to why a patent attorney is better than a patent agent. Having had a solo practice both as a patent agent and a patent attorney, I have had to make both sales pitches to potential clients.
Regardless of being a patent agent or patent attorney, this ruling adversely affects ALL practitioners. No longer will a patent attorney nor an agent be able to send a simple assignment form to an out of state client and file the document with the USPTO. Either practitioner would have to send the client to a local attorney (who may poach the client) or force the client to file his or her own assignment with the USPTO.
Does the client benefit in this ruling? Probably not, since the client has incurred additional expense without adding any value. Does the attorney gain an advantage over a patent agent? Maybe a slight advantage for in-state clients, but the patent agent probably has the advantage over an attorney for out of state clients, since the client would expect to seek a local attorney for other types of legal help.
In the end, the client takes the beating. If these rule changes are enacted, an out of state client must go find a local attorney who is most likely not a patent attorney, who must get up to speed on the case, attempt to understand patent law, and take the time and effort to properly file an assignment with the USPTO. Rather than getting a free or very low cost service (I file assignments for free with any patent application that I write), a client may pay $500 to $1000 for the same service from someone unfamiliar with the client, their case, and the law surrounding their case.
I hope that myopic and monopolistic attorneys and bar groups do not support this change to the rules, thinking that they gain an advantage over their patent agent counterparts, because they wind up only cutting their own throats at the same time.
