December 6, 2023

theliverpoolactorsstudio

The Legal System

Patent Owners Lack Standing to Force USPTO to Issue Rules regarding Discretionary Denials

More on the Patent Attorney Rolls



by Dennis Crouch

The USPTO Office of Enrollment & Discipline’s list of registered patent attorneys and agents includes 48,625 individuals. Since there are no annual dues, CLE requirement, or even check-in many folks continue to stay on the rolls even though they are not practicing patent law.  One example is my colleague Professor Royce Barondes who passed the patent bar exam prior to law school and then never practiced in the field. Instead, he practiced law at Cravath in NYC and now teaches business courses, contracts, and firearms law. I wanted to get a more accurate number of folks currently practicing in the patent prosecution area. Do do this, I downloaded and parsed through USPTO records for utility patent applications filed since mid 2018 and that have been made public. (Series codes 16 and 17).

The Totals: 26,756 practitioners are associated with at least one application filed over the past four years; with 23,793 associated with at least 10 different utility patent applications.  About 80% are attorneys with the remaining 20% being patent agents. The result here does not necessarily mean that all of these attorneys worked on patent prosecution because many firms use a comprehensive customer number that lists all registered attorneys in the firm’s patent group.  This leads to crazy situations like patent agent Maki Saitoh of Oblon being associated with 31,000+ laid open applications filed over the past 4 years.  In addition, we have some undercounting because some folks doing patent prosecution work are not listed in the customer number (e.g., often in house counsel will not be listed).

I mentioned Oblon above. Although Oblon is not in the top-25 of firms in terms of patent attorneys, they are the #1 filer of US patent applications followed closely by Sughrue.  They are able to file so many applications because most of their apps claim priority to a foreign or PCT filing — so they don’t need to write a new original application.  Some firms with lots of patent attorneys don’t do much patent prosecution work.  An extreme of this is Kirkland & Ellis that has over 100 patent attorneys but does not do any patent prosecution.