OED Announces Delay of Practitioner CLE Certification & Biennial Registration

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On December 16, 2021, the USPTO will officially announce a delay in the implementation of the voluntary CLE certification program for registered practitioners, and those granted limited recognition. This follows a delay in the biennial registration statement, which will be implemented on November 1, 2024.  As these two submissions would work in concert, we understand …

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Everything You Need to Know About Moral Character for the Patent Bar

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You have passed the patent bar after months of hard work and studying the Manual of Patent Examining Procedure.  “[H]owever, you are not being registered at this time…” The letter goes on to explain that, because of your answers on the PTO FORM-158 (Application for Registration), the Director of the Office of Enrollment and Discipline …

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Tightrope

Working with Chinese Trademark Agencies – A Dangerous Game, or Delicate Tightrope?

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Following a recent report issued by the Department of Commerce, Office of Inspector General, as well as a plethora of recent disciplinary actions published by the USPTO’s Office of Enrollment and Discipline, many practitioners have done a retrospective analysis of their trademark practices with clients and agencies in China.  But is it time to give …

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USPTO Responds to OIG Report – Continues to Blame Attorneys and Foreign Agents

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Last week, we provided commentary regarding a scathing report issued by the Inspector General of the Department of Commerce (“OIG”).  Since that time, the USPTO published a blog post, penned by Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director, and David Gooder, Commissioner for Trademarks.  …

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DOC OIG Slams USPTO’s Handling of Foreign Trademark Filings, U.S. Counsel Rule

1 Comment / Trademark ethics, USPTO Decisions, USPTO Rules of Professional Conduct / By

On August 11, 2021, the Inspector General of the Department of Commerce (“OIG”), which oversees the USPTO, issued a scathing report on the state of the USPTO’s control over the integrity of the Trademark Register.  The report discussed a number of areas of concern, including the enforcement of the U.S. Counsel rule, as well as …

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China skyline

Top Three Things IP Practitioners Must Know When Working With Foreign Associates

1 Comment / Foreign Associates, Office of Enrollment and Discipline, Outsourcing, Trademark ethics, Unauthorized Practice of Law, USPTO OED, USPTO Rules of Professional Conduct / By

As we noted in a prior post, the USPTO has gone on record allowing U.S. practitioners to partner with foreign attorneys by way of ownership of law firms, without violating the USPTO Rules of Professional Conduct.  However, practitioners continue to be surprised when they are told that practitioner relationships with foreign associates and agents outside …

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How to Calculate Time Limitations in OED Proceedings

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One of the most common questions we receive from practitioners relates to response periods.  As a threshold matter, the OED operates under a strict one-year statute of limitations.  As such, there is a clear reason for why a staff attorney is often reticent to provide an extension of time to respond to OED’s correspondence.  However, …

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USPTO Delays Patent Practitioner Registration Statements and CLE Certifications Until 2024

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On June 10, 2021, the USPTO’s Office of Enrollment and Discipline will announce its intention  to delay by two years its previously-published requirement for biennial mandatory “registration statements” from all registered patent attorneys and agents. The USPTO’s announcement has no impact on trademark attorneys.  Last year, the USPTO published a final rule stating that the …

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