Posts Tagged: "office of enrollment and discipline"

It is no secret to anyone in the industry; the unauthorized practice of law is rampant, and OED does nothing to stop it… If charging dues to patent practitioners will allow OED to put an end to the unauthorized practice of law many, if not most, practitioners would undoubtedly support the initiative. If OED plans to continue with a docket full of reciprocal discipline and only enforce ethics rules against registered practitioners, practitioners should loudly protest the imposition of annual dues.

The United States Patent and Trademark Office (USPTO) has provided the Patent Public Advisory Committee (PPAC) information relating to proposed patent fees in advance of the PPAC meeting on fees scheduled for September 6, 2018. Among the documents released are a spreadsheet detailing various “Patent Enrollment Fees”. Lines 195 through 198 propose the creation of a new fee code relating to the imposition of annual patent bar dues for all patent practitioners, which would range from $240 per year to $410 per year, depending upon whether the dues were paid electronically, and whether the dues were paid with or without a certificate of Continuing Legal Education (CLE) compliance.

“This is a mere change in form, not substance,” according to John White, principle lecturer in the PLI patent bar review course. “The PTO will start testing the current version of the MPEP, and stop testing the miscellaneous memos and the like that are currently tested. But all of those memos have now been incorporated into the new MPEP, so there’s no change of substance. Just a change in citations.”

Despite being excluded from the practice of patent law before the USPTO, Kroll is openly continuing his practice. His website Invention.net is still up and running, advertising his services as specializing in patent law and having obtained thousands of patents for inventors. On Monday, April 2, 2018, an e-mail sent to [email protected] inquiring about assistance yielded a return e-mail containing advice on the need to quickly file a patent application because the U.S. is not a first to file country… Michael I. Kroll presents a very real challenge to the authority of the United States Patent and Trademark Office, and specifically to the Office of Enrollment and Discipline. If the Office is unable to stop Kroll from practicing why exactly should any practitioner concern themselves with OED? Why have any ethical rules?

Core values are key to avoiding ethical violations. This is because most ethics violations are not intentional. They occur because decisions are being made based on the wrong values (i.e., increased revenues alone) or on emotion (i.e., fear that taking more time to evaluate will be disastrous). Establishing sound core values and strong decision making emotional intelligence skills will help ensure that you do not commit an unintended ethics violation.

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.

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.