PA Bar: Removing The Exclusivity Of “Patent Attorney”

[EDIT: The Pennsylvania House of Delegates voted down this measure in May 2019, mostly due to issues unrelated to the “patent attorney” designation discussed herein.] The Pennsylvania Bar Association, following the American Bar Association’s adoption of new Model Rules in August 2018 (deleting earlier Rule 7.4) and seeking to conform Pennsylvania’s Rules to follow the ABA, has proposed eliminating the exclusivity of the term “patent attorney.”

Currently, a “patent attorney” in Pennsylvania is exclusively limited to attorneys registered to practice before the United States Patent and Trademark Office. The PA Bar Association Legal Ethics and Professional Responsibility Committee proposes a change that would permit a broader definition of “patent attorney” that encompasses other attorneys, as long as the term is not misleading.

Specifically, the IP Law Section opposes a revision to Rule 7.2(c)(1):

Rule 7.2 

(c) A lawyer may communicate the fact that the lawyer does or does not practice in particular fields of law. A lawyer shall not state or imply that the lawyer is certified as a specialist in a particular field, except as follows: 

(1) a lawyer admitted to engage in patent practice before the United States Patent and Trademark Office may use the designation “patent attorney” or a substantially similar designation; 

Only Pennsylvania attorneys who are registered to practice before the USPTO may currently use the term “patent attorney.” This helps clients identify lawyers who are registered to practice before the USPTO and can help them navigate proceedings before it, including the most sought-after service provided by many patent attorneys, that of helping a client obtain a patent.

USPTO registration for an attorney has several requirements including:

(1) Passing the USPTO Registration Examination (commonly referred to as the “Patent Bar Exam”), which traditionally has a pass rate of less than 50%;

(2) Submission of an education transcript showing a degree or large number of courses reflecting an expertise in science or engineering, which demonstrates that a practitioner will serve their clients with an appropriate level of technical expertise; and

(3) Following the USPTO Rules of Ethics, which are much more strict than state bar rules in many instances, and include a prohibition against sharing referral fees for work done before the USPTO (“A practitioner shall not give anything of value to a person for recommending the practitioner’s services” 37 CFR 11.702).

These requirements and more set a “patent attorney” apart from attorneys who are otherwise engaged in licensing and litigation related to patents, but the proposed deletion of Rule 7.2(c)(1) would allow for those not admitted to practice before the USPTO to designate themselves as “patent attorney.” Some in the patent attorney community are concerned the objective standard associated with “patent attorney” will be diluted among the bar and for clients.

The IP Law Section of the PA Bar opposes the deletion of Rule 7.2(c)(1). The proposed change will be voted on at the May 17, 2019 PA Bar Delegates meeting.

If you have questions, contact me.