It is no secret to anyone in the industry; the unauthorized practice of law is rampant, and OED does nothing to stop it.

One week ago, the United States Patent and Trademark Office (USPTO) published documents disclosing the intent to impose annual dues payments on all patent attorneys and patent agents. The dues would range between $240 and $410 per year, depending upon whether the patent practitioner paid electronically and completed the suggested number of continuing legal education (CLE) training by the USPTO.

Presumably the annual dues proposed for all patent practitioners is to defray the costs incurred by the office of Enrollment and Discipline (OED) to police the profession. That is how previous annual dues proposals have been explained by the USPTO, but so far, the Office has not yet publicly explained its rationale. The first public forum where this will likely be discussed is the Patent Public Advisory Committee (PPAC) meeting on September 6, 2018.

Levying annual dues in order to fund regulators charged with policing the profession makes logical sense and is how annual bar dues are justified and used by many State bar associations. The problem, however, is OED has never operated to police the practice of patent law as other bar associations. Will OED continue to operate as it currently does, or will OED actually police the profession? That is a question that patent practitioners must have answered.

It is no secret to anyone in the industry; the unauthorized practice of law is rampant, and OED does nothing to stop it.

37 C.F.R. 11.5(b) defines practice before the Office to include preparing documents in contemplation of filing, and corresponding and communicating with the Office. The rule says that practitioners can employ non-practitioner assistants, but the rule should prevent non-practitioner filing services from filing applications on behalf of individuals. Some of the largest filers of applications are non-practitioner filing services, both on the patent and trademark side. The Office has to know who these filers are because they are corporations (not law firms) corresponding and communicating with the Office after having assisted individuals with the preparation of documents in contemplation of filing. They are engaging in the practice of law, yet OED and the USPTO has not done nothing to stop these rather blatant violations of Rule 11.5(b).

Historically OED views its mandate as only disciplining those who are registered to practice before the USPTO. That is a hard pill to swallow for registered practitioners given OED administers a registration examination, which if you do not pass you are not allowed to openly practice before the Office. An even harder pill to swallow would be if there are annual dues charged to all registered practitioners that would be used to further police only registered practitioners while the Office continues to turn a blind eye to excessive unauthorized practice.

It is also worth noting that in 2008 the USPTO published a Federal Register Notice reminding practitioners that much of the outsourcing of preparation and prosecution work by the industry violates U.S. export regulations. The Notice explained:

[I]f the invention was made in the United States, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the EAR or following the appropriate USPTO foreign filing license procedure. See 37 CFR 5.11(c). A foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.

Nothing was ever done to follow up on this Notice, and the outsourcing of preparation and prosecution work to those who are unregistered continues. This means work is being done by those who are not registered patent practitioners, typically in foreign countries, and it is being done for increasingly less, which pushes billing rates ever lower for those who are registered to practice before the USPTO. Ironically, it will be those who have seen their work outsourced overseas and billing rates slashed as the result of unauthorized practice and violations of export regulations who will be charged annual dues under the proposal, while OED has historically given those who are unregistered but doing preparation and prosecution work a free-ride.

Over the last several years the USPTO has also raised concerns about patent quality, promising to raise patent quality, at times not so subtly blaming the industry and patent practitioners. Saving for a minute the reality that “patent quality” is a subjective term that can mean a variety of different things to different people, there is no doubt that quality of patents and patent applications are uneven. But is that really any wonder? Certainly, some practitioners are better than others, but does anyone really believe that the unauthorized practice of law raises quality?

The USPTO has a quality problem no one wants to talk about. If charging dues to patent practitioners will allow OED to put an end to the unauthorized practice of law many, if not most, practitioners would undoubtedly support the initiative. However, if OED plans to continue with a docket full of reciprocal discipline and only enforce ethics rules against registered practitioners, practitioners should loudly protest the imposition of annual dues.

A bar association truly concerned with policing the industry does something to stop the unauthorized practice of law. If the USPTO and OED want to charge annual dues to patent practitioners fine, but the industry deserves to hear what will be done with those dues and how OED plans to attack the serious problems presented by the unauthorized practice of law.