Règlement proposé au USPTO qui empêcherait un agent de brevets non-avocat de préparer des cessions ou une licence

Un règlement proposé par le USPTO a des dispositions inquiétantes pour des agents de brevets qui ne sont pas avocats aux États-Unis.

Voir: l’avis sur le Federal Register

Dont voici un extrait:

But for limited situations noted below, a registered patent agent is not authorized by his or her registration to practice before the Office to draw up a contract or to select contract forms for a client relating to a patent, such as an assignment or a license, if the state in which the agent resides or practices considers drafting contracts the practice of law. Assignments and licenses are the creation of state, not federal, statutory law. Although 35 U.S.C. 152, 202, 204 and 261 refer to assignment or licensure of patents or patent rights, assignments and licenses are forms of contracts, which are creatures of state, not federal law. Contracts are enforceable under state law. The authority to prepare contracts and provide advice regarding the terms to include in contracts is subject to the state law regarding who is authorized to practice law. In contrast, submission for recordation of assignments and licenses is a ministerial act that does not require legal training. It has been the long-standing position of the Office that a registered patent agent may prepare a patent assignment or license if not prohibited by state law, and an agent may submit the assignment or license for recordation. The Office solicits comment on whether it should explicitly provide for circumstances in which a patent agent’s causing an assignment to be executed might be appropriate incidental to preparing and filing an application. For example, execution of a standard assignment document may be incidental to filing an application where the inventor is an employee of an organization, such as a corporation or partnership, and signed an agreement to assign inventions to the organization. It would be also consistent with the law in some states for a registered patent agent who is a regular (salaried) employee of the organization acting for his or her employer to undertake to prepare assignments only for the employer.

Voir aussi les commentaires sur Patently-O.


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