Tightrope

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

1 Comment / Trademark ethics, IP Ethics / By

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

Leave a Comment / Trademark ethics / By

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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Calendar

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

1 Comment / Patent Agent, Patent Ethics, USPTO OED / By

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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USPTO Confirms Agency “Practitioners” May Ethically Partner With Foreign Attorneys

1 Comment / IP Ethics, Multijurisdictional Practice, Patent Ethics / By

On May 26, 2021, the USPTO clarified its position that U.S. “practitioners”—who, by definition, include only United States-barred attorneys and USPTO registered patent attorneys and agents—may form partnerships and co-own law firms with non-U.S. attorneys without violating the USPTO’s Rules of Professional Conduct.  The USPTO guidance was included in the agency’s Final Rulemaking, the purpose …

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Supreme Court

Inequitable Conduct: The Accusation That Could Change Your Life

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Patent practitioners are keenly aware that inequitable conduct allegations are commonplace in patent litigation.  A finding of inequitable conduct has numerous adverse consequences for patent owners, including the possible loss of patent rights, exposure to antitrust claims, and an award of an accused infringer’s attorneys’ fees.  Because the impact of an inequitable conduct finding is …

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