My 2013 ethics series continues, today looking at several final orders in disciplinary proceedings resolved in April 2013.
These, together with the other orders from the Office of Enrollment and Discipline from our 2013 ethics series, will be at the core of my ethics presentation on February 4, 2014, at the 8th Annual Patent Law Institute in New York City. The event will be live and webcast, and then reprised on March 18, 2013, in San Francisco.
This case relates to Leonard Tachner of Irvine, California. Tachner was suspended from practice before the Office in patent, trademark, and non-patent matters for five years for severely neglecting his patent practice to the detriment of his clients, but with a provision that would allow him to apply for reinstatement after serving four years of the suspension. This action is the result of a settlement agreement between Tachner and the OED Director pursuant to the provisions of35 U.S.C. §§ 2(b)(2)(D) and 32 and 37 C.F.R. §§ 11.19, 11.26, and 11.59.
Washington, D.C. – December 4, 2013: Crowell & Moring LLP is pleased to announce that Teresa (Terry) Stanek Rea, former acting and deputy director of the United States Patent and Trademark Office (USPTO) and acting and deputy under secretary of commerce for intellectual property, has returned to Crowell & Moring as a partner in the firm’s Intellectual Property Group. She also joins as a director with C&M International, Ltd. (CMI), the international trade and investment consulting firm affiliated with Crowell & Moring. Rea brings to the firms an impressive breadth of domestic and international experience and skills. Her private practice background in intellectual property (IP) and international trade coupled with her senior government service combine to make Rea a true asset for advising clients in the explosive growth area of IP protection. Rea will work with clients in several key areas, including global IP policies and strategies, patent enforcement and post-grant administrative proceedings, trade secrets policy and enforcement, and digital/Internet-related copyright issues.
When you’re dealing with any third-party patent and there’s a lawsuit pending –whether it’s against you or or your customer, from a non-practicing entity or a practicing entity– there’s no question that post grant challenge(PGC) options change strategy from the defendant’s perspective, says Samir Pandya, Senior IP Counsel of the Global Litigation Group at SAP, at the 2013 AIPLA Annual meeting.
The State of PGCs Today
Before the America Invents Act (AIA), we had inter partes reexamination, ex parte reexamination, and the option to purely litigate. Since the AIA, we’ve done away with the first one. Ex parte reexamination is still technically an option, though many find it an unappealing one. “I have had very bad experiences with it. I have yet to see one really succeed. There may be a limited use for it in certain situations, but when you think about ex parte it’s easy enough to say I’m not going to worry about it as an option,” says Pandya. The third option of purely litigating is of course still on the table, but it’s increasingly becoming too expensive, too slow, or too tedious an option to pursue.
Inter Partes Review and the Covered Business Method Patent Program are the new O.K. Corral and it is High Noon
There is a battle cry against abusive litigants in the patent industry. Among the tactics suggested is a “loser pays” system to try to mirror Europe, where this type of abuse is minimal. The Congressional Research Service presents that 92% of companies who assert but do not make products (over broadly and derisively called “trolls”) lose litigation that reaches judgment on the merits. [i] So far, direct fee shifting has received criticism under US jurisprudence, but the US Supreme Court on Sept. 30, 2013 agreed to hear cases involving the award of attorneys’ fees in patent litigation.[ii] Also, several of the proposed bills in Congress support more aggressive fee awards for bad conduct and enhanced rules. In particular, Rep. Bob Goodlatte’s Innovation Act recently cleared the House Judiciary Committee with a specific focus on cutting down on abusive patent litigation.
The America Invents Act (AIA), the first patent reform in decades, created a new forum to resolve patent disputes that effectively shifts fees. The AIA created the Inter Partes Review (IPR) and the Covered Business Method (CBM) program, which are “mini-trials” before an appeal board of specialized legal and technical expert judges. In these proceedings, the board takes a second look at patents the USPTO has already granted to determine whether they are valid. The judges on the USPTO Patent Trial and Appeal Board (PTAB) have been prolific in decisions clarifying the rules of engagement. The result? Up front costs for patent owners where 85% of the IPR/CBMs involve parallel litigation in court, and 66% of the time, the litigation is stayed pending the PTO proceeding. This can increase the overall cost of litigation for patent owners, while increasing the alternatives for defense strategies – pay up extortion fees or pay the PTO IPR/CBM fixed and potentially higher initial fees. However, the defendant then triggers the same level of fees for the patent owner now taking the defense in IPRs/CBMs.
My 2013 ethics series continues, today looking at several more final orders in disciplinary proceedings at the United States Patent and Trademark Office.
The title here is a little misleading. There was only a single final action in March 2013, so I’ve also included one decision from April 2013. Discussion of the remaining two decisions from April will appear in the next installment of the series.
The totality of this series will make up the backbone of my 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.
Washington – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced that the San Jose City Hall building, located at 200 East Santa Clara Street, has been selected as the permanent location for the USPTO’s Silicon Valley satellite office. The search for permanent office space was put on hold in July due to sequestration. Generous support and assistance from the City of San Jose, the California State Assembly’s Speaker’s Office, along with the collective support for the satellite office championed by members of the California congressional delegation, will enable the USPTO to move forward with occupying permanent space in Silicon Valley by the end of 2014.
Last week, U.S. Secretary of Commerce Penny Pritzker outlined her “Open for Business Agenda.” Promoting American innovation is a core priority of the Agenda, as technology and innovation is the key driver of U.S. competitiveness, wage and job growth, and long term economic growth. The selection of a permanent USPTO office in the Silicon Valley is a key part of the Commerce Department and Obama administration’s efforts to boosting America’s innovation economy.
“A permanent USPTO office in Silicon Valley will help grow the regional innovation ecosystem by empowering entrepreneurs to more readily navigate the nation’s intellectual property system,” said U.S. Secretary of Commerce Penny Pritzker. “The USPTO plays a crucial role in helping protect the cutting-edge ideas that drive our economy and keep the U.S. globally competitive. The permanent satellite offices help advance the Commerce Department’s innovation agenda by helping entrepreneurs get their products to market more quickly, provide resources tailored to the needs of local start-ups, and create good paying, high-skilled jobs.”
Next year I will be speaking at the 8th Annual Patent Law Institute sponsored by the Practising Law Institute. The event, like in previous years, will be bi-coastal. We will be live from New York City on February 3-4, 2013, and live from San Francisco, CA on March 17-18, 2013, with the San Francisco location also being webcast. My topic will be ethics, which will provide the all important and highly sought after ethics CLE credit.
In addition to discussing ethical issues generally raised by the practice of patent law, perhaps spending some time discussing the Traps for the Unwary within the America Invents Act, I also always like to do a rundown of recent OED disciplinary proceedings. For more articles on this topic please see Ethics & OED.
With this in mind, I will be publishing summaries of the disciplinary proceedings before the Office of Enrollment and Discipline at the United States Patent and Trademark Office from 2013. I have already published the first article in the series, which related to the reinstatement petition granted to Hunaid Basrai in June of 2013.
What follows are the OED decisions from the first quarter of 2013. There were no decisions in January 2013.
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