Posts Tagged: "disciplinary actions"

Termination of an OED Disciplinary Proceeding: How A SOL Defense May Be Properly Construed

The Hearing Order concluded that the parties raised sufficient issues of material fact to warrant the ready-to-go Hearing to determine when respondent’s alleged misconduct was actually “made known” to an officer or employee of the USPTO pursuant to §32. Thus, the Hearing would be able to afford the fact-finder the opportunity to assess the credibility of the witnesses and draw inferences from the facts. Further, as the parties were already prepared for the Hearing on the merits of the case, the Judge believed that he would entertain testimony on both the SOL issue and the disciplinary sanction sought by the OED Director. Thus, the Hearing Order determined that the Judge found issues of material fact existed as to when the misconduct forming the basis for the disciplinary proceeding was “made known” to an officer or employee of the Office.

Steve Lipman

June 10, 2016

Enter the Sandman: USPTO Unhittable in Reciprocal Discipline Proceedings

Mariano Rivera knows something about perfection. The New York Yankees now-retired pitcher is regarded by many experts as the greatest closer in the history of major league baseball. For those who are not aficionados of America’s Pastime, the closer comes in after the game has largely been played, and his sole job is to get the last several opposing batters…

Michael E. McCabe, Jr.

September 22, 2014

Ethics & OED: Practitioner Discipline at the USPTO Nov/Dec 2012

David Gaudio was not a registered patent practitioner, but this was not a case where OED went after someone who was only engaged in trademark representation via a reciprocal discipline proceeding. The Law Office of David P. Gaudio, P.C. formed The Inventors Network, Inc. Gaudio was alleged to have engaged in the unauthorized practice of patent law. Gaudio knew that the representation of inventors without being a registered patent practitioner violated USPTO regulations. This case seems significant because it could well signal new USPTO interest in preventing those who are not registered practitioners from preying on unsuspecting inventors.

Gene Quinn

January 10, 2013

USPTO Issues Final Rules of Discipline for Patent Practitioners

The United States Patent and Trademark Office (USPTO) announced today that it will publish final rules in the Federal Register on Tuesday, July 31, 2012, that relate to the statute of limitations provisions for disciplinary actions brought by the Office of Enrollment and Discipline (OED) at the USPTO. Subsection (e) is added to clarify that the one year period for filing a complaint may be tolled by a written agreement between the involved practitioner and the OED Director. The Office agrees that tolling agreements may provide both the Office and the practitioner with additional time to resolve matters without a complaint.

Gene Quinn

July 30, 2012

PTO Proposes Rules for OED Patent Practitioner Discipline

When I first set out to write this article my intention was to do something that briefly summarized the proposed rules to bring everyone up to speed. Unfortunately, that is not going to be possible. These proposed rules are the first wave of rules in 2012 that are aimed at the implementation of the AIA. As we all well knew, the changes to patent law and practice were going to be enormous. Even these seemingly peripheral rules have layers of nuances, making cursory summary nearly impossible. For that reason I am going to go one at a time through the proposed rules, today tackling the proposed rules relating to the time limit for the Office of Enrollment and Discipline to bring an action against a patent practitioner for alleged misconduct.

Gene Quinn

January 8, 2012

Patent Office Disciplinary Actions and the Lack Thereof

I thought it might be interesting to take a look at what the Office of Enrollment & Discipline has been up to since the start of 2010. To be perfectly honest, I was quite surprised by what I found. Not only is there not a single case involving Rule 11.5, but the overwhelming majority are related to reciprocal proceedings where discipline was already taken by a State and the USPTO is taking appropriate matching action with respect to the practitioner. In fact, out of the 37 disciplinary proceedings this year 24 have been reciprocal proceedings, where the USPTO seems to hand out justice largely or solely based on justice being handed out by some State Bar authority.

Gene Quinn

September 15, 2010