Patent Ethics

USPTO Disbars Siemens’ Outside Patent Atty For $2.5M Billing Fraud

Consent Resignation, Criminal Conviction, OED, Office of Enrollment and Discipline, Patent Ethics /

Each year, a number of patent and trademark practitioners agree to exclusion from the USPTO rather than face an OED ethics investigation or USPTO disciplinary action.  While not always the case, such consent exclusions usually involve very serious–and often criminal–practitioner misconduct. One such matter is the case of former patent attorney David N. Caracappa.  See In

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OED Cracks Down On Patent Practitioners Working With Invention Promoters

Communications, Competence, Conflicts of Interest, Patent Ethics, PTO Ethics Decisions, PTO Ethics Rules, USPTO Ethics Investigation, USPTO OED /

George Foreman pitches their services on late night television commercials.  A Google search for “how to sell my invention” turns up scores of them. Many individual inventors believe they have designed the next “better mouse trap” but typically have no clue how to monetize or market their invention. That is where invention marketing or promotion

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5 Myths About USPTO Ethics Investigations and Disciplinary Complaints

Patent Ethics, USPTO Ethics Investigation, USPTO OED /

Many IP practitioners are misinformed about the function of the USPTO’s Office of Enrollment and Discipline (OED). Here are the top 5 myths about OED ethics investigations and attorney discipline at the USPTO. Myth #1 – The OED Only Cares About Practice Before the USPTO There is a perception that the USPTO only cares about

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USPTO Director Reverses ALJ In Disciplinary Case, Rules In Favor Of Attorney

Patent Ethics, USPTO Director Decisions, USPTO OED /

On August 5, 2016, the USPTO Director issued a Final Order reversing an administrative law judge’s initial decision, which had suspended a practitioner for 18 months. The Final Order held the OED Director violated USPTO precedent and mandatory rules regarding reciprocal discipline—37 C.F.R. § 11.24.  The Final Order is significant because it not only confirms the

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PTAB Awards Attorneys’ Fees As Sanction For Protective Order Violation

OED, Office of Enrollment and Discipline, Patent Ethics, PTAB Sanctions /

On July 1, 2016, the Patent Trial and Appeal Board in RPX Corp. v. Applications in Internet Time LLC, IPR2015-01750, 01751 & 01752, ordered patent owner Applications in Internet Time (AIT) to pay petitioner RPX Corp. $13,500 in attorney’s fees as a sanction for violating the Board’s protective order.  The Board found sanctions were warranted

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Putting On Your Halo: Patent Litigators’ Ethical Duty To Communicate Change In Willfulness Law

Duty to Non-Client, Duty to Tribunal, Patent Ethics, Patent Litigation Ethics /

Last week, the Supreme Court issued an opinion that significantly altered the legal landscape for proving willful infringement in patent cases. In Halo Electronics, Inc. v. Pulse Electronics, Inc., the Supreme Court rejected the Federal Circuit’s two-part Seagate test for awarding enhanced damages under 35 USC § 284, finding that both the substantive requirement for “objective recklessness”

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Mass. Court Nixes Conflict Claim Against Gillette Former In-House IP Attorney Who Provided Competitor With Infringement Opinions Regarding Ex-Client’s Patents

Conflicts of Interest, IP Ethics, Patent Ethics /

On May 5, 2016, a Massachusetts state court dismissed Gillette’s claims for breach of fiduciary duty against its former in-house IP counsel who left Gillette and went to work for a competitor, where he used allegedly privileged information gained during his prior employment and helped his new employer analyze and avoid infringement of Gillette’s patents—including

Mass. Court Nixes Conflict Claim Against Gillette Former In-House IP Attorney Who Provided Competitor With Infringement Opinions Regarding Ex-Client’s Patents Read More »

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