The USPTO has ordered a registered patent agent who allowed a patent application to go abandoned, failed to communicate with his client, and failed to cooperate with the Office of Enrollment and Discipline’s ethics investigation to serve a six-month license suspension and one-year probation. This case presents a cautionary tale for IP practitioners and teaches […]
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
OED Announces Delay of Practitioner CLE Certification & Biennial Registration Read More »
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,
How to Calculate Time Limitations in OED Proceedings Read More »
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
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
USPTO Confirms Agency “Practitioners” May Ethically Partner With Foreign Attorneys Read More »
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
Inequitable Conduct: The Accusation That Could Change Your Life Read More »
The letter comes in the mail from OED asking you a few questions about a handful of trademark applications, including whether each form was electronically signed by the respective applicant or attorney. The light bulb still has not hit—you ask yourself who is OED, and why are they asking about signatures. You read further into
Trademark Signature Best Practices and OED Read More »
Inequitable conduct is supposed to be personal to each individual who owes a duty of disclosure to the USPTO. Thus, just because an inventor may have knowingly and intentionally lied to the USPTO does not mean that prosecution counsel did so as well. Indeed, most prosecutors are in a position where they must rely upon
