In looking through the USPTO database of registered practitioners, I was surprised to see that 93 patent agents list a current affiliation with the major firm, Finnegan Henderson. That seemed to me like an unusually large number of registered patent agents within a single firm. This morning I used Google to search for the first 30 on my list and found that 26 of those are actually patent attorneys, not patent agents. It appears that many of those individuals became a registered patent agent before having passed a state bar exam and then never changed their registration status. Of those 30, I also found a handful who are no longer at the Finnegan firm but have not updated their address information to reflect their new firm. I singled-out Finnegan here simply because they employ more US patent practitioners than any other law firm. No. 2 on that list (Fish & Richardson) does not appear to do a better job of managing its attorney rolls. I looked at the FR website for ten of their listed patent agents and found that nine of them are actually attorneys. Knobbe Martens is no different. Their top litigator, Joe Re, is listed as a patent agent on the USPTO rolls.
I was already aware of this issue, but it came to a head recently as I began working on a project that considers the professional role of patent agents as compared with patent attorneys. Outside of my own navel, the issue is important for several reasons – especially as the PTO moves to align its ethics rules with those of the various state bar associations.
The current USPTO rules require that "a registered practitioner who is an attorney in good standing with the bar of the highest court of one or more States shall provide the OED Director [William Covey] with the State bar identification number associated with each membership." 17 C.F.R. 11.11. Although not express within this sentence, the normal understanding is that any substantive change such as this will be updated "within thirty days of the date of the change." Id. The rule also requires practitioners to update their contact information.
The USPTO relies heavily on state bar association ethics rulings regarding individual practitioners in its own OED decisions. In addition, the USPTO is in the process of moving toward a system that more closely aligns its ethics rules with the rules of most state bar associations. However, this link cannot be easily made unless the USPTO is apprised of the patent attorney's state bar registration. Although certainly not strong evidence, an attorney's failure to provide this information is at least minimally suggestive of a desire to keep the various regulatory bodies from talking with one another about particular persons of interest. In reality, the failure to switch from agent to attorney is likely only an oversight in the vast majority of situations.
What to do: You can check your own registration status by searching on the USPTO website here: https://oedci.uspto.gov/OEDCI/. The process of making this change is quite easy, but it does require $100 to the USPTO and likely some money to the appropriate state bar to obtain a Certificate of Good Standing. http://www.uspto.gov/ip/boards/oed/practitioner/changeinfo.jsp.
