THE ATTORNEY IN GENERAL PRACTICE AND THE PATENT-RELATED CASE1 by Marc Sandy Block I. Introduction At various times during his or her general practice of law, an attorney may be confronted with a question regarding patents or patent law. The most obvious situation arises when a client asks how to proceed in protecting an invention which he believes has great commercial and technological value. In addition, however, the subject of patent or patent law may be encountered in numerous other contexts. For instance, a client may seek counsel before entering into a government contract which includes a "patent clause." In another contract context, counsel may be retained by an employer to prepare an employment agreement which, among other provisions, is intended to vest in the employer rights to inventions made by his employees. When dealing with federal or state agencies, the issue as to whether inventions submitted to the Government are subject to disclosure under the Freedom of Information Act may arise.'
as to whether a transferor has a protected interest in patent rights transferred to the debtor or whether such rights are assumable and assignable by the trustee in bankruptcy.' Still further, since the Supreme Court approved treble damages for an antitrust claim based on a fraudulently procured patent,' an attorney may find himself or herself in the busy intersection between patent law and antitrust law. Even in a personal injury case, counsel for either side might rely on publically available patents as evidence in determining whether defendant did, or did not, comply with state-of-the-art standards of safety or in showing that plaintiff did, or did not, use a product in a manner prescribed by the prOducer.'
In bankruptcy, questions may arise
The general practitioner, in facing such patent-related matters, should be aware not only of certain basic facts regarding patents and the patent laws and how such facts may be used to affect or benefit his or her client but also specific aspects of the attorney-client
MARC A. SANDY BLOCK is a member of the Law Firm of Hall, Myers & Rose in Potomac, Maryland near Washington, D.C. Mr. Block is a member of the Maryland and Virignia Bars and is admitted to practice before the U.S. Patent and Trademark Office and the U.S. Court of Customs and Patent Appeals (Court of Appeals Federal Circuit). Mr. Block is a graduate of Lehigh University (B.S.E.E.) and the George
Washington University National Law Center. He is a member of the American and Maryland Patent Law Associations. Other publications include: ADEQUATE DISCLOSURE OF COMPUTERS AND PROGRAMS FOR COMPUTERS IN PATENT SPECIFICATIONS (with Kenneth Dobyns), Journal of the Patent Office Society, September 1974, volume 56, number 9.
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relationship which may arise in such cases. II. Basics Relating to the Attorney-Client Relationship in Patent Related Matters Perhaps the initial question in a patent-related case should be: what bounds are placed on the services a non-patent attorney can render in a patent-related matter? The general rule is that an attorney can represent a client in any case involving a patent in any court to which he or she is admitted. Of course, as when providing counsel in any specialty area of law, the attorney is bound by the governing Code of Professional Responsibility (CPR) which, generally like the ABA Code, provides that "a lawyer shall not handle a legal matter that he is not competent to handle.'" In addition, however, 35 U.S.C. ยง 33 makes it illegal for anyone-regardless of membership in a state bar- to hold himself out as qualified to represent a patent applicant before the U.S. Patent and Trademark Office (also referred to as the PTO) when the representative is not registered to practice before the PTO. A violation of the statute carries with it a fine of $1,000 for each offense.
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