The following is a list of issues that I would like deliberated by the Ministry of Justice or the Knesset before legislating a Code of Practice for Israel Patent Attorneys. The same issues should be discussed by the IPAA and other relevant fora when considering voluntary codes.
In no particular order:
Patent Attorneys often provide opinions to third parties such as investors.If they have a conflict, maybe they should not be allowed to provide an opinion or should at least be required to announce their interest.
- Should patent attorneys that are not employees but outside service providers be allowed to own shares in their clients?
- Should patent attorneys that are not employees but outside service providers be allowed to draft applications for shares in their client’s business?
- May a patent attorney that is not an employee but an outside service provider be allowed to jointly own a patent application with his client?
- May a patent attorney that is not an employee but an outside service provider be allowed to list himself as an inventor on a patent that he or one of his partners or an employee of the IP firm is filing and prosecuting?
Israel Patent Attorneys are specialists in IP Law but do not have a general legal background (unless, like me, they also have Law Degrees). If they are not licensed to practice law, regardless of their personal knowledge, what are the borders of what services can they legally provide? Attorneys-at-law tend to take a narrower view and patent attorneys a wider view. The border is not clear. Now is an excellent time to provide clarity and guidelines.
- May a patent attorney who is not an Attorney-At-Law provide legal information regarding IP related tax issues, the sale of IP, copyright and the validity of Israel patents.
- May a patent attorney who is not an Attorney-At-Law provide advice regarding service inventions?
What Patent related services may a self-styled patent expert, patent manager, IP manager, Search expert, IP Paralegal or other IP practitioner who is neither a patent attorney or an attorney-at-law be allowed to practice?
Section 154 of the Israel Patent Law lists the 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.
There are all sorts of people who offer patent related services that are not formally qualified and are not regulated. Section 19 and 20 of the Israel Bar Law and Section 154 of the Patent Law which is reproduced above make this quite clear. The Law does not seem to have teeth, and there are a whole slew of non-patent attorneys that provide such services. Nevertheless, it is not always clear what the meaning of the Law is. For example:
- Is a graphics person who produces IP drawings for a patent attorney to file preparing a document for submission to the registrar. There are a large number of such people offering services to patent attorneys on a free-lance basis. I’d argue this should be legal, but is it?
- What if a graphics person provides an inventor with such figures for inventor to submit himself?
- What if a company, say a prototyping company, produces such drawings and accompanying description for an inventor to submit himself?
- What if such a company also provides draft claims?
- What about a person who has worked for a patent attorney firm in the past or is moonlighting and still working for a patent firm. I am thinking of a paralegal or a trainee patent attorney or someone else who is neither an attorney-in-law nor a patent-attorney. Does this happen? Yes. Is it illegal? I think so.
- What about a US licensed practitioner who has failed to pass the Israel Patent Bar, and merely helps clients obtain IP rights in the US? Such a person seems to be helping with the preparation of any document to be submitted to the office or to an authority for the protection of industrial property in another country. It seems to be illegal.
- But what about companies that are bona fide US firms (or European or other foreign firms) whose attorneys come to Israel a few times a year to meet with their clients? If they accept remuneration for advice given locally or work on an office action whilst here, is this illegal?
- What about US firms that operate in Israel and aggressively chase Israeli clients?
I would argue that their operating an office here is illegal and contrary to Section 154. The fact that they do not prosecute patents in Israel does not make their offering IP services to Israel clients directly a legal activity.
Advertising. The Israel Bar Code of Ethics places significant limitations on the type of advertising that Israel Attorneys-at-law are allowed to engage in. The voluntary code of ethics for Israel Patent Attorneys has similar limitations that are voluntary. The response to the Call for Comments that the IPAA sent out last time was drafted by Reinhold Cohn lawyers and called to limit, at least locally in Israel, patent attorneys from using any form of advertising that Attorneys-in-Law cannot use. There is some legitimacy and logic in holding patent attorneys to the same standards as Attorneys-In-Law, but there are counter arguments. If patent attorneys provide services that are hybrids of technical,,scientific and legal services, maybe they should have the option to market themselves in a more high-tech service provider and less legal manner? Note Reinhold Cohn themselves have moved from Legal South Tel Aviv to a High Tech park and moved out of a Bauhaus building and into a modern building in a high-tech park. They’ve changed their logo to something more distinctive and less legal looking, and adopted the high-techy acronym RCIP. Let’s take this one stage further. Reinhold Cohen has a sister firm of attorneys at law to provide complimentary services, handling oppositions, enforcement and the like. Does this mean that a patent attorney cannot handle these issues? If a patent attorney does not want to handle these issues and wants to brand himself more like a technology service provider, may be he or she should be able to advertise more proactively?
Another corollary of aping the legal profession, is that patent attorneys would have to have a dedicated premises for meeting clients that is not shared with any other type of business. This limitation of legal practices may be inappropriate to patent attorneys.
- Two or more law firms can share office space without competing, if one handles wills and the other handles litigation, conveyancing (real estate law), one handles criminal and the other civil, etc. There are 75,000 potential room-mates to share office space with. Patent attorneys don’t have this flexibility. If Reinhold Cohn’s proposal is accepted, they will have to rent a full office, or share with direct competitors. Note – small offices are hard to come by and the rents are usually much higher.
- Why shouldn’t a high-tech patent attorney specializing in start-ups rent office space in the offices of a venture capital firm, a high-tech incubator, a start-up trendy premises like We Work? It may not be appropriate for a large IP firm, but it may be a good solution for a sole practitioner or a small firm.
- Maybe in the modern world, a patent attorney does not need an office at all? One can have all one’s files on a laptop and work anywhere. I have a number of clients that I visit who have never visited by office. Maybe I don’t actually need an office? The code of ethics for lawyers is a document that was drafted in an earlier age. It has occasionally been updated. It may be inappropriate as a basis for an up-to-date profession that provides services at the cutting edge of technology.
Treatment of trainees and employees
I think trainees should be registered within less than a month of starting their apprenticship. They are entitled to a minimum wage. Percentage based remuneration is not appropriate for trainees.
Should percentage based remuneration be legal for any employee?
Should patent attorney firms be able to demand exclusivity from a licensed practitoner, whilst employing him on the basis of tax invoices for jobs on eat-what-you-kill basis? I am aware of situations where employers do not fire employees working on a percentage basis but simply close the tap. The employer does not provide redundancy pay.
Some firms make employees sign non-compete clauses, contracts requiring them to stay for at least a year after qualifying, letters explaining that strange employment terms where the employees idea that he insisted on and other shenanigans. I think that the current proposed code of conduct is an ideal opportunity to address all these issues.