Pro Se Representation Before the USPTO OED: A Risky Gamble

USPTO Ethics Investigation /

The USPTO’s Office of Enrollment and Discipline (OED) handles investigations and disciplinary proceedings against attorneys and other practitioners who engage in misconduct before the USPTO. Navigating these complex proceedings without legal representation can be a daunting and perilous task.  We have covered previously various best practices regarding what to do if you find yourself with

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The “U.S. Counsel Rule” Turns Five: Best Practices For Trademark Attorneys To Avoid USPTO Discipline

Foreign Associates, IP Ethics, OED, Office of Enrollment and Discipline, Trademark ethics, USPTO Rules of Professional Conduct /

This week marks five years since the USPTO implemented its Requirement of U.S. Licensed Attorney for Trademark Applicants and Registrants.  Also known as the “U.S. Counsel Rule”,  the USPTO on August 2, 2019 amended its trademark rules of practice to require any non-U.S. domiciled trademark applicant, registrant, or party to a USPTO trademark proceeding to

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

Patent Ethics /

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

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artificial intelligence

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

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

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AI

An IP Lawyer’s Guide to Artificial Intelligence

Artificial Intelligence, IP Ethics /

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

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OED letterhead

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

Discipline, IP Ethics, Office of Enrollment and Discipline, Patent Ethics /

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

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

Trademark ethics /

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

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