Disposition: Public reprimand and requirement that the practitioner retake the Model Professional Responsibility (MPRE) exam and attend two CLE course pertaining to conflicts of interest. See decision here.
Summary: A patent practitioner who failed to recognize that he had entered into an attorney-client relationship with a co-inventor of a patent entered into a settlement agreement pursuant to which he agreed to be publicly reprimanded. In particular, the practitioner was contacted by a long-time client of the practitioner for assistance in preparing and filing a patent application. Another inventor was named on the provisional application but not the non-provisional application. The long-time inventor client received the practitioner’s invoices and paid the practitioner’s fees and expenses for the representation. The practitioner did not inform the other inventor that he was not named as a co-inventor on the application. After a dispute arose between the two co-inventors, the practitioner withdrew from the representation.
Related to USPTO Practice? Yes
Facts: Mr. Ramberg is a Delaware-based solo practitioner and registered patent attorney with no history of public discipline in 20 years of practice.
In 2014, Mr. Ramberg was contacted by a long-time client with whom he had an existing relationship regarding a new invention. He met with his client and another individual, whom Mr. Ramberg understood to be a co-inventor. Mr. Ramberg filed a provisional application naming both his existing client and the other inventor as co-inventors. Mr. Ramberg did not have a written engagement agreement explaining who was his client in the matter.
Mr. Ramberg subsequently represented the other inventor as his client with respect to a trademark application. Mr. Ramberg did not explain to his long-time client or new client about the potential for conflicts of interest.
All invoices were sent to the corporate owner of the long-time inventor client, and Mr. Ramberg’s fees were paid for by that entity. In addition, an agreement between the two inventors was provided to Mr. Ramberg indicating that the other inventor assigned all of his rights in the invention to the corporate owner of the long-time inventor client.
One year after filing the provisional application, Mr. Ramberg prepared and filed a non-provisional application. The non-provisional application named only the long-time client as the sole inventor based upon Mr. Ramberg’s understanding and belief that the other inventor did not contribute to the claimed subject matter of the patent application.
In the Fall of 2015, the relationship between the inventors deteriorated, resulting in the filing of a lawsuit between them. Mr. Ramberg withdrew from the representation in the trademark and patent applications because of the adversity between the trademark applicant client and Mr. Ramberg’s long-time existing patent client.
Pursuant to a settlement agreement with the USPTO, Mr. Ramberg agreed that his representation resulted in a conflict of interest, requiring informed written consent pursuant to 37 C.F.R. § 11.107(a) and (b). He further agreed that he did not adequately communicate with his clients regarding the need for informed consent.
As part of her settlement agreement with the USPTO, Mr. Ramberg agreed to retake the MPRE and to attend two CLE courses on conflicts of interest.