Patent Law Practice Center

Patent Practitioner Discipline

Over the last several years, I have given the ethics lecture part of PLI’s Patent Law Institute, which grants those in attendance (or viewing via webcast, in most states) one ethics credit toward CLE compliance. This year, I will once again give the ethics presentation at the 8th Annual Patent Law Institute sponsored by the Practising Law Institute, which will take place in New York at the beginning of February 2014, and which will be reprised live in San Francisco in mid-March 2014.  Materials are due early so that PLI can put everything into book form for attendees, so I have been writing to ensure enough to support one credit hour of CLE, and starting the planning of my hour-long presentation generally.

A big part of what I like to do when I give an ethics lecture is to review recent decisions of the Office of Enrollment and Discipline to see what OED has been focusing on and what trouble our fellow members of the patent bar are getting into. This not only gives us insight into the OED approach, but also gives us an opportunity to review the ethics rules practitioners are charged most frequently with violating. It also gives us an opportunity to discuss the process you will be afforded if you should find yourself on the wrong side of an OED complaint.

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OED Takes Action on Unauthorized Practice of Law

I will be speaking at the 7th Annual Patent Law Institute sponsored by the Practising Law Institute live from New York City on February 4-5, 2013, and live from San Francisco, CA on March 18-19, 2013, with the San Francisco location also being webcast. My topic this year is ethics, and those who attend my presentation live or via webcast will earn 1 ethics CLE credit. In addition to discussing the impact of the America Invents Act on ethics, specifically from a malpractice standpoint, I will also discuss the enforcement efforts of the Office of Enrollment and Discipline (OED) during 2012.

One of the cases from 2012 that has caught my attention is The Matter of David P. Gaudio, which was decided on December 12, 2012, and was the last action taken by OED during 2012.

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Inequitable Conduct As An Affirmative Defense

Robert Faber, partner at Ostrolenk and Faber LLP and Practice Center Contributor, recently passed along a great article called Prosecution Ethics   he wrote for the upcoming PLI program: Advanced Patent Prosecution Workshop: Claim Drafting and Amendment Writing.  In the article, Faber discusses the Patent and Trademark Office Duty of Disclosure Rules and in partiuclar what types of failure to provide different forms of information to PTO Examiners have been found by Courts to be inequitable conduct.  Faber explains that the duty of candor and good faith is breached when an affirmative misrepresentation of material fact, faliure to disclose material information or submission of false information occurs.  He then discusses particular cases when the Court has found inequitable conduct.

I caught up with Faber and asked him about one particular inequitable conduct allegation that has recently been getting more attention – “Burying” (submitting information material to an Examiner’s examination of a patent application where that submission includes a large quantity of other less relevant material).   (more…)