Client Funds

USPTO Delays Patent Practitioner Registration Statements and CLE Certifications Until 2024

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

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

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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Trademark Signature Best Practices and OED

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

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Mixing Inventor And Patent Prosecutor Intent To Deceive: CleanTech Muddies Inequitable Conduct Law

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

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USPTO Requires Patent Bar Applicants To Disclose Expunged Or Diverted Criminal Records

While in college, Joe Varsity is arrested for public intoxication. Joe pleads no contest, and the charge is dismissed after he completes an alcohol education class. Joe’s conviction is later expunged (or erased). Under the laws where Joe’s arrest occurred, “any person who shall have been the subject of such an erasure shall be deemed

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Federal Court DQs Law Firm in Patent Infringement Case, Rejecting Advance Conflict Waiver

A federal court in Alabama yesterday disqualified a law firm from representing a new client in a patent infringement case against a current firm client. In Southern Visions, LLP v. Red Diamond, Inc. (N.D. Ala. Feb. 26, 2019), the court held that Bradley Arant Boult Cummings (“Bradley”) was ethically barred from representing one client (Southern

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