USPTO - Changes to Representation of Others Before the United States Patent and Trademark Office

The USPTO published: Changes to Representation of Others Before the United States Patent and Trademark Office on May 26, 2021. 

The USPTO states the change "aligns the USPTO Rules of Professional Conduct more closely with the American Bar Association (ABA) Model Rules of Professional Conduct. It also improves clarity in existing regulations to facilitate the public's compliance, including revising various deadlines, the procedures concerning the registration exam, provisions related to the revocation of an individual's registration or limited recognition in limited circumstances, and provisions for reinstatement. It makes non-substantive changes to improve the readability of various provisions as well."

Copyright © 2021 Robert Moll. All rights reserved.

IP Watchdog - Christmas Gifts for Patent Attorneys and Inventors - One More to the List - David Hricik and Mercedes Meyer Patent Ethics: Prosecution

Today, Gene Quinn of IP Watchdog says "no need to panic" and lists: Christmas Gifts for Patent Attorneys and Inventors.

I am not looking for a gift, but wish to add: David Hricik and Mercedes Meyer Patent Ethics: Prosecution (2016-2017). As stated in chapter 1: "This book comprehensively addresses ethical issues that face patent lawyers, patent agents, companies, and firms that prosecute and opine about patents. This edition also now includes a chapter devoted to post-disposition proceedings, including inter partes review under the AIA."

Not seeing anything like it on Amazon I ordered the Kindle version this week. I am still browsing this substantial book, but so far it appears very useful. I suggest review of the table of contents on Amazon to see what's covered. My mild criticism is this Kindle book is expensive, but still consider it money well spent given what's at stake. It's not the issues on "our ethics radar" that tend to cause problems -- it's the issues that aren't. This book should help spot ethics issues before they cause harm, which is "a gift that keeps on giving."

Copyright © 2018 Robert Moll. All rights reserved.

Dolak - Patent Office Contested Proceedings and the Duty of Candor

Tonight, I suggest reading Professor Lisa Dolak's Patent Office Contested Proceedings and the Duty of Candor. Professor Dolak has been speaking on ethics issues in intellectual property for years, and this is a nice contribution to AIA trial work.

Here's the abstract: "The implementation of post-grant trial proceedings in the U.S. Patent and Trademark Office is one of the most significant aspects of the Leahy-Smith America Invents Act. Practitioners have a great deal of new subject matter to master, including the governing statutes and rules, and instructive Patent Trial and Appeal Board decisions. All of this new law is superimposed, however, on an existing legal landscape relating to the practitioner’s duty of candor and potential consequences for candor violations. Furthermore, the new law creates additional candor and disclosure obligations specifically applicable in post-grant contested proceedings.

This paper discusses the “old” and “new” candor obligations of practitioners – their sources, their reach and applicability, and the potential consequences for their breach – in the context of the representation of clients in the new USPTO post grant contested proceedings. It identifies several examples of statements and conduct in post-grant proceedings that may particularly implicate the practitioner’s duties of candor and/or disclosure and, accordingly, warrant heightened care on the part of practitioners (registered and unregistered) and parties who participate in the new proceedings."

Copyright © 2014 Robert Moll. All rights reserved.

Professor David Hricik's Legal Ethics and Non-Practicing Entities Article

Much of the press talks about the lack of ethics of patent trolls, but like many things there is more to the story.

For example, Santa Clara University Law School invited Professor Hricik to speak on legal ethics that face a "patent troll" or non-practicing entity's (NPE) counsel. It sounds like the assumption was to focus on this side, because NPE's have much less discovery than defendants which can be leverage to extract a nuisance settlement.

In preparing for the talk, Professor Hricik realized, and called it counter-intuitive, that the legal ethics issues extend to defendant's counsel in a big way, because they have significant control over how discovery is scheduled, but are typically paid by the hour. For example, they could bifurcate discovery and schedule determinative issues like infringement at the front end of discovery to save money. Yet the NPE's desire the suit not be quickly adjudicated aligns with defendant counsel's desire to "earn" fees during discovery. So if the NPE counsel makes comprehensive discovery, the defendant's counsel may act in a cost ineffective way.

Professor Hricik notes Rule 11 and 35 USC 285 require counsel act ethically. My observation is courts rarely use Rule 11 and Section 285 to police how parties manage discovery. And without court limits, discovery in patent litigation is too often a law firm money maker.

Anyway, I agree with Professor Hricik about ethics obligations running to all parties in NPE litigation, and recommend reading: Legal Ethics and Non-Practicing Entities: Being on the Receiving End Matters too.

Copyright © 2013 Robert Moll. All rights reserved.

America Invents Act - USPTO Rules of Professional Conduct Effective May 3, 2013

Today, the Federal Register published the Rules of Professional Conduct for practice before the USPTO, which will be effective on May 3, 2013. See the Rules and related commentary (here).

The USPTO said it's: "Designed to make life easier for the more than 41,000 practitioners who interact with our agency, they are based upon the American Bar Association’s Model Rules of Professional Conduct. The ethics rules are the first major update since 1985 and reflect the rules in place in 49 states and the District of Columbia. We spent a great deal of time reaching out to stakeholders in the IP community to balance the need of applicants as well as practitioners. Additionally, I am proud to say that the latest rulemaking eliminated the annual practitioner maintenance fee."

Note if you are practicing in California, it has not adopted the Model Rules. See California's Professional Rules of Conduct here.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO Proposed Professional Conduct Rules

Director Kappos has posted an explanation relating to the USPTO's proposed ethics rules: USPTO Harmonizes Professional Conduct Rules. This proposal is a smart and overdue move that will better align the PTO rules with the ABA Model Rules adopted by 49 states and DC. I think the logic is unassailable: why should we have two sets of ethic rules governing patent attorney conduct?

For additional detail see the following: Proposed USPTO Rules of Professional Conduct for the Notice of Proposed Rulemaking, the ABA and USPTO rule comparison chart, and the ABA Model Rules and Comments.

These rules are open for public comment: ethicsrules.comments@uspto.gov until December 17, 2012.

Copyright © 2012 Robert Moll. All rights reserved.