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Posts Tagged: "office of enrollment and discipline"

Exclusive Interview: PTO Director Andrei Iancu and OED Director Will Covey on Practitioner Dues, CLE and Unauthorized Practice

The focus of this interview was OED generally, but more specifically why they Office felt it was necessary to begin charging annual dues to practitioners and what those funds would be used for. I indicated leading up to the interview that I would specifically like to discuss the issue of unauthorized practice of law, explaining that I personally was not philosophically opposed to dues but that as a registered patent practitioner myself I would like to see OED do more than just reciprocal discipline, which appears to be the overwhelming portion of their work, at least if you look at the OED Reading Room of published decisions. Director Covey came with statistics and followed up after the interview with the chart included below. While it may appear OED focuses overwhelmingly on reciprocal discipline, that is a tiny fraction of what they do.

Will the USPTO use annual patent practitioner dues to stop the unauthorized practice of law?

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.

USPTO proposes CLE and bar dues for patent practitioners

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.

USPTO to Update Patent Bar Exam in August 2018

“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.”

Disbarred Patent Attorney Michael I. Kroll Still Practicing, No Comment from PTO

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 patent@invention.net 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?

6 Core Values and 5 Emotional Intelligence Skills Leading to Sound Ethical Decisions

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.

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.

Ethics & OED: Practitioner Discipline at the USPTO April/May 2012

What follows are the decisions from April and May 2012. In this time period in 2012 at the OED the Office found themselves dealing with a patent attorney that accepted referrals from an invention promotion company, a patent attorney that didn’t notify a client of an abandoned application, a trademark attorney that submitted false statements in three petitions to revive abandoned applications and a reciprocal discipline involving negligence associated with maintaining a Trust Account.

Ethics & OED: Practitioner Discipline at the USPTO July/Aug. 2012

The USPTO suspension was applied nunc pro tunc. Discipline imposed nunc pro tunc is appropriate only if the practitioner: (1) promptly notified the OED Director of his or her suspension or disciplinary disqualification in another jurisdiction; (2) establishes by clear and convincing evidence that the practitioner voluntarily ceased all activities related to practice before the Office; and (3) complied with all provisions of 37 CFR § 11.58. That was found to be the case effective October 17, 2011, thus the six (6) month suspension started effective that date.

Ethics & OED: Practitioner Discipline at the USPTO Oct. 2012

What follows is discussion of the two disciplinary proceedings undertaken by the USPTO during the month of October 2012. First up is a situation where the USPTO went after an attorney in California who engaged in representation of trademark clients. Richard Gibson was not a patent practitioner, yet OED went after him for violation of various ethical rules, which is something recently new for the USPTO to do. The second case is a case where a patent practitioner was caught up in a sting operation. The sting was searching for adults soliciting sex from minors in Seattle, Washington.

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.

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.

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.

New Look Patent Bar Examination Continues to Evolve

What I can report is that the USPTO did, in fact, meet the April 12, 2011, deadline and the newly testable material is being tested as advertised. The USPTO is also continuing to update the exam through a rigorous process of writing, vetting, and testing new questions. In addition to covering long-standing areas of patent practice, questions are being added to the database that are directed to new and emerging trends in the law and evolving rules of procedure. The subject matter covered by the exam as a whole will continue to test rules, laws and regulations that have been in existence for years, but will also increasingly include questions testing the changes.

USPTO Announces Impending Update to Patent Bar Exam

This announcement signals a major shift in the way would-be patent attorneys and patent agents will be tested, bringing the exam forward to test the latest developments in rules and laws. It can be reasonably anticipated that the patent bar exam will become a moving target as the Kappos Administration continues to move forward with initiative after initiative and rules package after rules package. Those preparing to take the exam need to be mindful of the need to stay current and not rely upon outdated study guides, reference materials and old questions when studying for the exam.