Non-licensed practitioners

blazing saddlescrazy

Non-licenses practitioners come in different shapes and sizes.

General search terms from a computer in Israel, for ‘patents’, patent attorneys, Israel Patent Office, etc., turns up paid adverts from non-licensed practitioners, what I would call cowboys and cowgirls – self styled patent experts. Some of these refer to themselves as IP Managers. These tend to be paralegals who have set up by themselves and offer portfolio management services.

There are also self-styled patent writers, patent searchers, US licensed practitioners who are not licensed in Israel, would-be patent attorneys who can’t pass the exams, retired examiners and struck off IP lawyers from abroad.

Under Section 154 of the Israel patent Law it is illegal for anyone who is not licensed in Israel as a patent attorney or as an Attorney-at-law to draft patent applications, or to provide any IP services in Israel, including procedural work opposite foreign patent offices.

Section 154 is as follows:

Rights of patent attorneys

154. (a) Patent attorneys have the exclusive right to deal in Israel, for remuneration, with applications for patents, designs and trade marks and with the preparation of any document to be submitted to the Registrar, the Office or to an authority for the protection of industrial property in another country, to represent the parties and to handle and represent in any proceeding before the Registrar or in the Office.

(b) This section does not derogate from the right of an advocate or of a State employee to perform the said acts within the scope of his functions.

This Law should be read together with Sections 19 and 20 of the Israel Bar Law, and doing so makes it clear that providing IP advice (consultation) is also illegal for anyone who is not a licensed Israeli attorney-at-law, or a patent attorney.

Subsequent to both the Israel Patent Law and the law of the Israel Bar, there was a Basic Law, Freedom of Occupation. The courts have used this to find certain laws that restrict employment illegal. It is not inconceivable that a court would find a US patent agent working in Israel to help local clients file and prosecute patents in the US as doing nothing wrong and would limit the application of Section 154 Law that forbids them to do so. This is, however, speculation.

The Israel Patent Office website carries a warning:

הובא לידיעתנו, כי אנשים שאינם עורכי דין או עורכי פטנטים עוסקים לכאורה, בשכר, בפעילות שנתייחדה לעורכי דין ולעורכי פטנטים, ובכלל זה הכנת מסמכים המוגשים לרשם הפטנטים בישראל ובחו”ל, גם אם אינם חותמים על המסמכים בשם הלקוח.כל אדם מהציבור הזקוק לשירותי ייעוץ ורישום בתחום הפטנטים, סימני המסחר והמדגמים מוזהר בזאת שלא לפנות לאותם גורמים הפועלים בצורה בלתי חוקית, שכן הסתייעות באותם גורמים עלולה לגרום להם נזק בלתי הפיך.

This is a rough translation:

Let it be known that people who are not patent attorneys or attorneys at law apparently practice, for payment, services that can only be provided by patent attorneys or attorneys at law, including preparation of documents for submitting to the Israel Patent Office and to foreign patent offices, even if they don’t sign in the name of the client. Any member of the public who needs advice or registration services relating to patents, trademarks and designs is hereby warned not to turn to such illegal practitioners, since doing so may result in irreversible damage.

Unfortunately, (apart from this notice) neither the patent office, the Ministry of Justice, the Israel Bar or the Association of Patent Attorneys has done anything to combat the non-licensed practitioners who draft patents and give advice, based on a little experience as an inventor, a trainee attorney, as an examiner or as a paralegal, or based on having read a book like Patent it Yourself.

The cowboys are not only a problem to licensed practitioners. They are a problem to the wider public as well. As their work is illegal, they do not have and cannot have malpractice insurance.  This means that if they screw up, and this is not an unlikely scenario, the client has no recourse.

Patent Attorneys are bound by attorney-client privilege. Clients can discuss their inventions with licensed practitioners and if they have complaints about malpractice, can complain to the Israel Patent Office. The patent attorney could have his license suspended. Discussing with a cowboy practitioner provides no protection whatsoever.

There are some patent searchers as well that offer patentability searches direct to the public. Because patent attorneys are legally responsible for their opinions, they can’t compete on price with patent searchers who are often skilled in library science but don’t have an understanding of science or technology, and don’t have knowledge of patent law. I’ve seen searches from patent search firms that give patentability opinions. I think that this is illegal for them to do, and well beyond their competence.

What about foreign licensed practitioners who advise clients in Israel about the law in a jurisdiction that they are licensed in?

Gerson Panitsch is a partner of Finnegan, the largest US IP firm who spends time in Israel. He claims to advise clients regarding enforcement in the US, and does not practice Israel Patent Law. Under the Israel Law above, this does not matter. His practicing here is still illegal under Israel Law. Gerson Panitsch points out that Israel is obliged under International treaties to allow foreign law firms to set up branches here. Maybe he is correct. I don’t know. Even if he is, it does not make his activities in advising his Israeli clients, a legal activity.

It is not just Finnegan of course. Other large US patent litigation firms such as Quinn Emmanuel and Fish Richardson also come over to tout for litigation work in the US. Their running educational events like mock trials would not be considered illegal. Their advising Israel firms on IP litigation matters in the US at their hotel in Tel Aviv, would, however, appear to be illegal.

The territorialism of IP licenses is perhaps at odds with the multinational nature of patent law. Then again, if we accept that the majority of wealth in the twenty first century is in non-tangible assets such as patents and trademarks, it seems sensible and correct for governments to regulate the industry and set standards of minimum competence, and have procedures for suspending a license of someone who malpractices.

Lawyers, doctors and surgeons, nurses and others who are trained abroad are required to requalify in Israel. Why should patent attorneys be different? The Israel Law has procedures for waiving certain requirements, and a shortened internship may be in order. I think that foreign licensed practitioners wishing to practice in Israel should be required to pass an oral and written exam though, and to have at least a minimal competence in both Hebrew and English.

Since the US is the largest Jewish community in the diaspora, there are a large number of US patent agents and attorneys who immigrate to Israel and not all of these requalify locally. Some can’t be bothered to. Some can’t seem to be able to pass the exams. Some have trained as patent attorneys locally, past the US exams as patent agents but have not been able to pass the exams here. It would appear that their advising clients in Israel is against section 154 of the Israel Patent Law.

The United States Patent and Trademark Office (USPTO) is generally accepted as being the most important patent office in the world. For some technologies, such as fast changing fields like telecommunications for example, patent applications are often only filed in the US. Nevertheless, at least until the America Invents Act (AIA) which did a lot to close the gap between US patent practice and that of the rest of the world, the United States had the most unique and eccentric patent law of any economically significant regime, and possibly still does. Think first to invent, the applicant being the inventor by default and not his employer, business method patents, patents for methods of medical treatment, etc. The United States concept of Unity of Invention is different from that in Europe.

Perhaps because of the size of the United States market, very many United States patentees only file their applications in the United States. At international conferences, it seems to me very clear that US practitioners are less aware of patent laws and strategies in other jurisdictions. They seem to be less cosmopolitan in outlook and more parochial, than patent attorneys from elsewhere.

Use of a US provisional application as a priority document makes a lot of sense for a US inventor in the United States who would otherwise need a license to first file abroad. It makes far less sense to an Israeli who can first file in Israel, then expedite examination and get an indication of patentability from a patent office that is recognized to provide International Search Reports (ISRs). The Application may be abandoned before publishing if necessary.

On occasion, I have advised clients to first file in UK, in Taiwan, in the US (both provisional and non-provisional, in New Zealand and with a PCT application. The strategy I chose depends on where the markets are, where competitors are, where client is based, on the nature of the technology and other considerations. It is a generality, but I find that US attorneys are less knowledgeable about strategy. Perhaps in some cases, the US practitioner is not really competent to advise Israeli companies and inventors, because of a sort of blinkered vision?

So should a competent experienced US licensed practitioner have to requalify before giving advice to Israeli clients? I suspect that my US licensed friends will have a different answer to those licensed in Israel who see work being handled by US practitioners. But where the US practitioner is advising the Israeli client about US law, and drafts and files on their behalf in the US, does it make sense that the US practitioner can sit in New York or Washington and discuss the matter over the phone or by email with the client, but can’t legally meet the client in Tel Aviv or Jerusalem to discuss the matter?

“If the law supposes that,” said Mr. Bumble,… “the law is a ass—a idiot. If that’s the eye of the law, the law is a bachelor; and the worst I wish the law is that his eye may be opened by experience—by experience.”

That as may be. Should one take legal advice from someone who is flouting the law? I think not.

Immigration into Israel is not only from the US of course. There are ex-patent examiners from the former Soviet Union and Ukraine that havbe relocated to Israel. Should these be able to practice here without requalifying?  No doubt the US practitioners will have reservations about the patent regime that trained the Ukrainian patent attorneys and perhaps about their English skills – although in my experience, not only do Russian immigrants have vastly better English skills than the Russian skills of their US counterparts, but often have English skills that are almost mother tongue level.

I’ve been recently contacted by a South African Patent Attorney who has relocated here. No doubt his English skills are excellent. In South Africa, patents are allowed automatically without substantive examination, unless there is an attempt to uphold them against an infringer. Should the South African by able to practice without requalifying? I don’t think so.

In summary, I am in favor of the status quo that requires foreign trained patent attorneys and lawyers to have to pass exams to practice here, and think that local hands on practical experience is also of value. At present that is the law.  It is also apparently illegal for foreign patent attorneys to practice before their native patent offices from the territory of the State of Israel. I think that this could usefully be revisited.

It is a shame that the Israel Bar and the Association of Patent Attorneys in Israel does nothing about this. Nor do they act against those who have no license whatsoever from anywhere, but still draft patent applications, help clients file in Israel and elsewhere.

What about Israelis who practice abroad, in foreign jurisdictions?

This can work the other way as well. For example Pearl Cohen Zedek Latzer (PCZL) is an Israel Law firm that specializes in IP Law. They have set up a New York Office, and one in Boston.

None of the named partners, Pearl, Cohen Zedek or Latzer are licensed in the US however.

Zeev Pearl is the managing partner of the New York office and his name is on the door, but it appears that he is not licensed to practice law in New York or anywhere else in the US – either that, or he is very discrete about his qualification on the PCZL website.

Perhaps Pearl is careful to explain to everyone entering the US office that he is not licensed in the US and not qualified to give advice there.

There are also general Israel Law firms such as Shibboleth that have opened US offices.

I can’t opine about the legality of this situation since I am not licensed in the US.

For those interested in exploring this further, see

New York City : 1st Department, Chief Counsel, First Judicial Department, Departmental Disciplinary Committee, 61 Broadway, 2nd Floor, New York, NY10006, (212) 401-0800, Fax: (212) 287-104

Website: www.courts.state.ny.us/ip/attorneygrievance/complaints.shtml

Also see the unauthorized practice of law committee in New York.  Their contact information is as follows:

Kathleen Mulligan Baxter, New York State Bar Association, One Elk Street, Albany, NY12207, Tel: 518/463-3200, Fax: 518/487-5694

kbaxter@nysba.org

See also ABA Formal Opinion 01-423 Forming Partnerships With Foreign Lawyers (2001).

Report 201H (Licensing of Legal Consultant)

Report 201J (Temporary Practice by Foreign Lawyers) as presented by the ABA Multijurisdictional Practice Commission and adopted by the ABA House of Delegates in 2003.

See Also Report 107C as Amended by the ABA Ethics 20/20 Commission (ABA Model Rule on Pro Hac Vice Admission) that was adopted by the House of Delegates in 2013.

2 Responses to Non-licensed practitioners

  1. Battar says:

    Taking the law literally, if I advise my employer not to file a patent application on the basis of having located a number of identical prior art applications in the same field, I am breaking the law. Bring on the handcuffs…
    I think the US version of the law, which allows an inventor to write and file his own patent application at his own financial risk, is the better option. (It does give rise to some hilarious patent applications, thought – like 12/471382 – you just have to read it, it’s laugh out loud material. Incidentally, the examiners’ non-final rejection – NON final ! – runs to 19 pages. I could have done it convincingly in two words).

    • Dear Battar,

      You are wrong I am afraid.

      An employee can file and prosecute, it is like an inventor representing himself directly.

      It is one loophole around the law.

      It is often not a good idea of course. In criminal proceedings one does not need representation. Actually, I once had a book called: Do It Yourself Brain-Surgery And Other Hobbies”.
      I

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