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Professional Responsibility for IP Practitioners OED s Role and Responsibilities In Handling Grievances and Disciplinary Matters Against Practitioners

1 Professional Responsibility for IP Practitioners OED s Role and Responsibilities In Handling Grievances and Disciplinary Matters Against Practitioners William J. Griffin Deputy Director of the Office
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1 Professional Responsibility for IP Practitioners OED s Role and Responsibilities In Handling Grievances and Disciplinary Matters Against Practitioners William J. Griffin Deputy Director of the Office of Enrollment and Discipline United States Patent and Trademark Office Produced by the United States Patent and Trademark Office; no copyright is claimed by the United States in this presentation or associated materials. 2 Authority for OED s Regulation of Conduct 35 U.S.C. 2(b)(2)(D): The Office may establish regulations, not inconsistent with law, which. (D) may govern the conduct of agents, attorneys, or other persons representing applicants or other parties before the Office. Attorneys and agents are subject to discipline for not complying with USPTO regulations. 35 U.S.C. 32; See Bender v. Dudas, 490 F.3d 1361, 1368 (Fed. Cir. 2007)(Section 2(b)(2)(D) and 35 U.S.C. 32 authorize the USPTO to discipline individuals who engage in misconduct related to service, advice, and assistance in the prosecution or prospective prosecution of applications. ) 3 Authority for OED Pursuing Discipline of Practitioners Practitioners are subject to discipline for not complying with USPTO regulations, regardless of whether their conduct was related to practice before the Office. Repeated alcohol offenses, for example, may reflect adversely on a practitioner s fitness to practice before the Office. 37 CFR 10.23(b)(6). See Moatz v. Reynolds, Proceeding No. D available at (suspending patent attorney for two years in connection with conduct related to alcohol dependency). 4 Sources of Grievances Against Practitioners An investigation may be initiated pursuant to information from any source suggesting possible grounds for discipline. 37 CFR 11.22(a). External to USPTO Clients, Colleagues, Others Internally within USPTO Patent Corps, Trademark Corps, Other Other Published Decisions, News Articles 5 Types of Disciplinary Complaints Predicated on probable cause determination by Committee on Discipline (COD) after Committee convenes. 37 CFR Seeking reciprocal discipline. 37 CFR Seeking interim suspension based on conviction of a serious crime. 37 CFR 11.25 6 Complaint Probable Cause Four steps precede the filing of a complaint based on a probable cause finding by the COD: 1. Preliminary screening of allegations; 2. Requesting information from practitioner; 3. Conducting investigation after providing practitioner an opportunity to respond; and 4. Submitting case to COD for probable cause determination. 7 Potential Post-Investigation Outcomes Upon completion of the investigation, OED may: Close the investigation without further action; Issue a warning; Enter into a proposed settlement agreement; or Convene the COD to determine whether there is probable cause to file a disciplinary action against practitioner. 8 Statute of Limitations The Leahy-Smith America Invents Act (AIA) was signed into law Sept. 16, The AIA introduced significant changes to the U.S. patent statutes. The AIA amended the statute of limitations for commencement of disciplinary proceedings pursuant to 35 U.S.C. 32. 9 Statute of Limitations (cont d) Prior to enactment of the AIA, disciplinary actions for violations of the USPTO Code of Professional Responsibility were subject to a five-year statute of limitations pursuant to 28 U.S.C See, e.g., Sheinbein v. Dudas, 465 F. 3d 493, 496 (Fed. Cir. 2006). 10 Statute of Limitations (cont d) The AIA amends 35 U.S.C. 32 to require disciplinary proceedings to be commenced not later than the earlier of: 10 years after the misconduct occurred, or One year from when the misconduct was made known to the USPTO, as prescribed in the regulations governing disciplinary proceedings. 11 Statute of Limitations (cont d) The USPTO published a Notice of Proposed Rulemaking (NPRM) in the Federal Register proposing amendments to the USPTO patent regulations to effectuate and interpret the statute-oflimitations changes in the AIA. 77 Fed. Reg. 457 (Jan. 5, 2012) 12 Statute of Limitations (cont d) In the NPRM, the USPTO proposed that the one-year statute of limitations contained in the AIA commences when OED receives a practitioner s complete written response to a request for information. The USPTO received five comments in response to the NPRM. These comments are currently under consideration. 13 Possible Ethics Impact of AIA Revision of 35 U.S.C. 282 to limit the best mode defense in patent litigation Removal of language regarding deceptive intention 35 U.S.C. 116 (correction of inventorship in application) 35 U.S.C. 251 (reissue) 35 U.S.C. 253 (disclaimer of invalid patent claim) 35 U.S.C. 256 (correction of inventorship in issued patent) Supplemental Examination under 35 U.S.C. 257 Revision of 35 U.S.C. 102 to implement first inventor to file 14 Therasense v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) But For Materiality Affirmative Egregious Misconduct Proposed Revision to 37 CFR 1.56 and (76 Fed. Reg (July 21, 2011)) 37 CFR 10.23(c)(10) - it is misconduct to knowingly violate requirements of 37 CFR 1.56 or 1.555 Frequently-Seen Disciplinary Actions by OED 15 Neglect of a Matter In re Kenneth Matlock, Proceeding No. D (Feb. 7, 2012) Dishonesty, Fraud, Deceit or Misrepresentation In re Donald Meeker, Proceeding No (Apr. 13, 2011); In re Prendergast, Proceeding No. D (Feb. 18, 2010). Fee-Related Issues In re Michael Diaz, Proceeding No. D (Mar. 13, 2009); In re Troxell, Proceeding No. D (Aug. 17, 2010). Failure to Adequately/Accurately Communicate with Client In re Jimmy Gilbreth, Proceeding No. D (July 14, 2009). Unauthorized Practice of Law In re Brian Rayve, Proceeding No. D (Feb. 6, 2012). Payments from Invention Development Companies In re Donald Schoonover, Proceeding No (July 14, 2009). 16 Frequent Causes for Grievances Neglect Failure or delay in filing patent application Failure to reply to Office actions Failure to revive or assist in reviving abandoned applications Failure to turn over files to new representative Failure to communicate with client Duty to report Office actions Duty to reply to client inquiries 17 Frequent Causes for Grievances (cont d) Dishonesty, Fraud, Deceit or Misrepresentation Concealing from client date of Office action, abandonment, and/or real reason for abandonment Misrepresenting to client status of abandoned application as pending Making false statements to USPTO in petitions to obtain an extension of time 18 Frequent Causes for Grievances (cont d) Fee-Related Issues Repeated failure to reply to notices of missing parts of application Failure to return client s advanced fees Improper commingling of clients advanced legal fees with practitioner s funds Checks returned or EFTs dishonored for insufficient funds 19 Bases For OED Disciplinary Action Reciprocal Discipline - 37 C.F.R Practitioner must notify OED in writing of discipline imposed and OED must obtain a certified copy of the disciplinary record to file with the USPTO Director. The OED Director then files a complaint (without COD authorization) with the USPTO Director based upon that discipline. Serious Crime - 37 C.F.R Within 60 calendar days of receiving information that practitioner has been convicted of a serious crime, OED shall request a certified copy of that record. The OED Director then files a complaint (without COD authorization) along with proof of conviction with the USPTO Director. Decisions Imposing Public Discipline Available In FOIA Reading Room 20 In the field labeled Decision Type, select Discipline from the drop down menu. To retrieve all discipline cases, click Get Info (not the Retrieve All Decisions link). Official Gazette for Patents Select a published issue from the list, and click on the Notices link in the menu on the left side of the web page. 21 Contacting OED OED s Telephone Number THANK YOU Produced by the United States Patent and Trademark Office; no copyright is claimed by the United States in this presentation or associated materials.
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