Proposed Patent Attorney’s Oath.
On 1994-11-02, I took and passed the so-called “patent bar exam” and became a member of the so-called “patent bar.” I say “so-called” because, as all patent agents and patent attorneys know, the exam is not strictly called the “patent bar exam,” nor is the group of admitted patent practitioners strictly called the “patent bar.” But that’s what everybody calls it, so I’ll dispense with the quotes.
On 1995-05-08, I officially had the status of “patent agent,” and, on 1996-02-14, after I informed the USPTO that I had passed at least one state bar exam, my status changed from patent agent to patent attorney.
I have taken several oaths in my life (see related posts below), but I did not have to take any oath to begin practicing patent law. The USPTO does impose a duty of candor (via 37 CFR 1.56, AKA Rule 56) on patent practitioners but does not require said practitioners (whether patent agents or patent attorneys) to take an oath.
To further the discussion about whether or not the patent bar should have a patent oath, I have drafted a patent oath (below) based on the Maine Bar Oath and the Massachusetts Bar Oaths (one of which is the oldest in the country). Here’s my draft patent bar oath for students of legal ethics, patent ethics, and others:
I, [full legal name], do solemnly swear:
to support the Constitution of the United States
and especially United States patent law,
both codified and common law;
that I will do no falsehood,
nor consent to the doing of any in court,
or before the United States Patent and Trademark Office (USPTO);
that if I know of an intention to commit any falsehood,
I will give knowledge thereof to the court or USPTO so that it may be prevented;
that I will not wittingly or willingly promote, prosecute, or litigate any
false, groundless, or unlawful patent application,
nor give aid or consent to the same;
that I will delay no person for lucre or malice,
but I will conduct myself in the office of a patent attorney (or patent agent)
within the courts and before the USPTO
according to the best of my knowledge and discretion,
and with all good fidelity,
as well as to the courts and the USPTO, as to my clients.
So help me God.
Should the USPTO adopt a patent oath? Presumably all state bars require oaths, so all practicing patent attorneys would be bound by at least one patent oath. But what about patent agents who are member of no state bar? Would there be less perceived abuse of the patent system (via patent trolls and the like) if a patent oath were required? I think it’s a discussion worth having.
- Time For A Patent Bar Oath (10/3/2012)
Proposed Patent Attorney’s Oath.
- Massachusetts Bar Oath (06/20/1995)
Massachusetts Attorney’s Oath.
- Maine Bar Oath (05/08/1995)
Maine Attorney’s Oath.
- United States Air Force Oath Of Office (05/26/1988)
Also known as the United States Uniformed Services Oath of Office.
- United States Armed Forces Code Of Conduct (08/31/1984)
Also known as the Prisoner of War (POW) Code of Conduct.
Erik J. Heels is a trademark and patent lawyer, Boston Red Sox fan, MIT engineer, and musician. He blogs about technology, law, baseball, and rock ‘n’ roll at erikjheels.com and is an Adjunct Professor (teaching patent law) at the University of Maine School of Law.
5 Replies to “* Time For A Patent Bar Oath”
Non-disclosure of relevant prior art is a problem. Also, providing updated disclosure is an issue after a patent or trademark has been issued when requested by citizens.
Re-examination requests to the USPTO should be something that the general public should be able to make submittals, without going through the expense of patent attorneys.
I have seen so many patents issued that have been clear 102 violations, have called it to the attention with evidence to the patent attorney on record, and received no response.
Patent attorney and agents that have not been examiners don’t really know how the system works ‘inside’. Examiners have very little time to do searches on their own, and rely on full disclosure.
I have seen independent patent claims with selection of wording for important elements that appear to be selected to throw off an examiner’s search. Only later, to find that it would have been a clear rejection if standard industry wording was provided in the claim.
I would love to hear from you, to provide details of same.
The cornerstone of any claim is a full disclosure. I’ve always felt that the filing fee should include an amount of money set aside, so that if the examiner believes on first review that more disclosure may be needed, that the USPTO can request a third party independent contractor to research, instead of the burden exclusively on the examiner in their brief amount of time to review specs , drawings and search.
USPTO Form SB1209 (http://www.uspto.gov/forms/forms_alpha.jsp) is an affirmation or oath. It states:
How does this compare to my suggested oath? What’s missing? What has been added?
And so the student becomes the teacher!
I certainly do not recall this form in my days, but now I may be dating myself.
I passed the patent bar about a year ago (thanks to everything you taught me about 35 USC 102 & 112) and there was an oath that I had to sign to finalize my status as a patent agent. It is Form PTO-1209 (ftp://ftp.uspto.gov/pub/forms/sb1209.pdf).
* Valediction of David Gregory
“Look at reality with a cold, hard, steely-eyed gaze. Lawyers get bad reputations by distorting reality. If you feel yourself losing sight of reality, fear not. I have the solution: Ask you mother.”