Patent Law Institute Live Blog: Ethics – from the USPTO to Trial


Welcome to the final panel of the day! The Patent Law Institute live blog concludes with the ethics portion of the seminar. The panel is titled, “Ethics: from the USPTO to Trial”.  The panel is led by Kenneth W. Brothers, a partner in the Intellectual Property Practice of Dickstein Shapiro. The ethics panel discusses the quandary of single advocacy at the PTO, facing requirements for information, cross citing case-to-case in the PTO, and other advocacy ethics issues. Here are the highlights:

  • The PTO is included in the list of tribunal in which attorneys must be completely objective and an advocate at the same time.
  • There is a duty of candor to the PTO to disclose all information known to be material to patentability. This duty belongs to inventors and all attorneys associated with the inventor. When in doubt, disclose.

    Be totally neutral in citing prior art.
  •  Inequitable conduct is seen as a plague in the Patent System because it kills a patent forever. Inequitable conduct must be plead with particularity. Like most fraud cases, inequitable conduct is easy to claim but hard to prove.
  • AIA says you can cure inequitable conduct through supplemental examination unless its been proven against you with particularity.
  •  Therasense threw out the balancing test of conduct and sliding scale, but rather establishes what an accused infringer must prove by clear and convincing evidence.
  • Avoid dumping into the record the results of broad poorly drafted searches.
  • Be sure to disclose non-English references. Explain the materiality and provide a translation to keep the examiner happy.
  • The general duty to preserve every email or every electronic document in some circumstances may also include deleted data, data in slack spaces, backup tapes, legacy systems, and metadata.
  • If you’re aware of files that should’ve been recovered and weren’t, it is not enough to report the issue with your partner or law firm. You need to go to the court.
  • Reissue your hold letter quarterly, and make sure it is appropriately narrow. Stay on top of it to make sure your client is being protected.
  • Do not let your client self collect without guidance, because they’ll miss a lot of relevant stuff and they’ll provide irrelevant stuff. It also exposes the client to testifying to privileged information.

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