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Patent Law

: Patently Obvious

Patent Practitioner Ethics Update

By Dennis Crouch, Esq.

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In a recent presentation, PTO Discipline Director Harry Moatz repeated his statements regarding a practitioner's duty to make reasonably inquiry prior to submitting any papers to the USPTO. "Practitioners submitting papers must read each paper submitted to the Office before it is submitted. Each submitted paper must be read in its entirety … regardless of the source of the paper." The duty of inquiry is codified in the Federal Regulations as 37 C.F.R. § 11.18(b). That section requires that submitted papers be submitted only for proper purposes and that any claims made be legally warranted. Section (b)(1) requires that all statement made be believed to be true and that no statement "covers up by any trick, scheme or device a material fact." Section (b)(2) goes on to require that the person filing the paper actually make "an inquiry reasonable under the circumstances" to ensure that the paper is not being presented for any improper purpose and that the contentions are "warranted by existing law or by a nonfrivolous argument [to change] existing law."

Mr. Moatz provides several examples that could be seen as failure to make a reasonable inquiry: (1) Filing an application with claims that are anticipated by at least one publication authored by one of the inventors. (2) Burying a reference material to patentability among a large number of cumulative references. (3) Filing an application with one or more claims unpatentable over a combination of prior art references cited by applicant in the specification.

37 CFR § 11.18 (b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—

(1) All statements made therein of the party's own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and

(2) To the best of the party's knowledge, information and belief, formed after an inquiry reasonable under the circumstances,

(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;

(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;

(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and

(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.

In his presentation, Mr. Moatz listed the primary complaints that he receives against patent practitioners. They include:

Neglect.
Lack of candor (Either to client or the PTO).
Failure to make reasonably inquiry.
Failure or delay in filing application
Failure to respond to OA (even when client has not paid)
Misuse of the certificate of mailing
Insufficient funds
Failure to pay issue fee
Failure to revive
Failure to turn over files to new attorney
Failure to communicate with client

Additional reasons for ethical sanction include DUIs; unauthorized taking of prescription meds; and disbarment. Under the new ethics rules (Aug 2008), a practitioner must notify the OED Director within 30 days of being convicted of "any" crime. The PTO will then determine whether the conviction is serious enough to merit interim suspension. Practitioner must also give notice of disbarment within 30 days. The new rules also provide for “disability inactive status” when a practitioner is judged legally incompetent.

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