An ethics blog for IP attorneys

Understanding 37 CFR 11.801: A Lesson in Not Fully Cooperating with OED

By Emil Ali | June 4, 2024

37 CFR 11.801 is a regulation that imposes a duty on practitioners to cooperate with the Office of Enrollment and Discipline (OED).  The regulation is divided into two key provisions that apply to applicants for registration, and those under disciplinary/reinstatement investigation: False Statements: The regulation first proscribes making false statements of material fact.  This is […]

Read More

AI and Patent Law: Can Machines Uphold the Duty of Disclosure under 37 CFR 1.56?

By Emil Ali | April 22, 2024
artificial intelligence

The world of intellectual property law is buzzing with questions and commentary regarding the practicality and ethics of using artificial intelligence to aid the practice of law before the USPTO.  As I addressed in a prior blog post, some of the concerns are much ado about nothing. However, one question previously left unanswered was the […]

Read More

Decoding the USPTO’s Signature Rules

By Emil Ali | April 16, 2024

The USPTO’s reputation for being focused on signatures is growing almost as fast as pendency.  However, with recent court decisions, much is left to the eye of the beholder–leaving practitioners and their clients uncertain regarding the state of the law. Why Signatures Matter to the USPTO 37 CFR 11.18 mandates a two-part certification process whenever […]

Read More

An IP Lawyer’s Guide to Artificial Intelligence

By Emil Ali | April 2, 2024

In the past year, I have seen an increase in questions related to artificial intelligence.  Specifically, patent and trademark lawyers have asked whether it is permissible for those lawyers engaged in practice before the USPTO to use Generative AI.  While I have and continue to present on this topic multiple times, including (here), (here), and […]

Read More

Received a Request for Information and Evidence from OED – Here is How to Respond

By Emil Ali | March 1, 2024
OED letterhead

First Contact The envelope comes by Certified Mail, Return Receipt Requested and stamped as “Personal and Confidential.” Inside is a letter from the USPTO captioned “REQUEST FOR INFORMATION AND EVIDENCE UNDER 37 C.F.R. § 11.22(f).” The letter goes on to read that the Office of Enrollment and Discipline (OED) received information regarding you, and that […]

Read More

Federal Circuit Issues Opinion Reversing USPTO’s Improper Invalidation of Trademark

By Emil Ali | October 18, 2023

On October 18, 2023, the Federal Circuit issued an opinion in GREAT CONCEPTS, LLC, v. CHUTTER, INC., reversing the decision of the USPTO’s Trademark Trial and Appeal Board.  The Court analyzed very crucial point in the progeny of In re Bose— whether alleged fraud on the USPTO that could invalidate a trademark application also applies […]

Read More

USPTO Announces Requirement for Support Staff to Obtain Identity Verification

By Emil Ali | October 16, 2023
Trademark Alert

On September 5, 2023, the USPTO announced in a Federal Register Notice that all non-attorney support staff would be required, beginning on January 20, 2024, to verify their identity to access the USPTO’s Trademark Electronic Application System (“TEAS”).  This follows multiple changes in July 2022 and October 2023 to the USPTO’s Trademark Verified USPTO.gov Account […]

Read More

What IP Lawyers Should Know About Professional Liability Insurance

By Emil Ali | October 3, 2023

Do I Need Coverage? I like to think of insurance as something you hope to never need, but the safety net in case you do.  None of us (hopefully) would drive an automobile without insurance, or worse, risk not having health insurance.  To that end, IP attorneys who provide advice to clients should ensure not […]

Read More

Artificial Intelligence for Lawyers: How To Maintain Your Technical Competency

By Michael E. McCabe, Jr. | August 16, 2023

Lately I have been inundated with news and information about Artificial Intelligence.  It seems that all the legal news is talking about these days, and will not stop talking about, is how AI is going to change my life.  Forever.  In major ways.  As the ABA recently noted, Artificial Intelligence (AI) is changing everything everywhere […]

Read More

Ninth Circuit Holds Rule 45 Subpoena Geographic Limits Apply To Remote Testimony: Is This Doom And Gloom For Trial By Zoom?

By Michael E. McCabe, Jr. | July 30, 2023

In an appellate case of first impression on a novel procedural issue, the Ninth Circuit on July 27 in Kirkland v. USBC, Los Angeles, quashed trial subpoenas purporting to command individuals who resided and worked out-of-state and more than 100 miles from the courthouse to “appear” at a hearing by contemporaneous video transmission.  Addressing an […]

Read More
Scroll to Top