On January 2, 2024, the United States Patent and Trademark Office (USPTO) introduced the “Design Patent Bar,” which was an expansion designed to encourage diversity. As USPTO Director Kathi Vidal stated in the months leading up to the new offering, the design patent bar was one of the ways she was working to ensure “everybody […]
The USPTO’s New Design Patent Bar: A Closer Look at the Numbers Read More »
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
Understanding 37 CFR 11.801: A Lesson in Not Fully Cooperating with OED Read More »
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
Received a Request for Information and Evidence from OED – Here is How to Respond Read More »
Do I Need Coverage? I like to think of insurance as something you hope to never need, but the safety net in case you do. None of us (hopefully) would drive an automobile without insurance, or worse, risk not having health insurance. To that end, IP attorneys who provide advice to clients should ensure not
What IP Lawyers Should Know About Professional Liability Insurance Read More »
Who are you going to call if you have a question about whether your conduct as a patent or trademark attorney is ethical? Many state bars offer “ethics hotlines” to aid their members in their understanding of, and compliance with, their obligations under applicable rules of professional conduct. Although the USPTO does not advertise a
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 »
