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On January 25, 2017, the Federal Circuit ruled a district court did not abuse its discretion when it awarded the prevailing party’s attorneys’ fees under 35 U.S.C. § 285 based upon the losing party’s conduct with respect to responding to one particular issue in discovery. In National Oilwell Varco, L.P. v. Omron Oilfield & Marine, Inc., No.
The rules of ethics–particularly rules that prohibit conflicts of interest and require the utmost loyalty–apply to the President of the United States. That is the premise underlying a lawsuit filed today by a group of ethics experts against President Trump. See Citizens for Responsibility and Ethics in Washington v. Donald J. Trump, Case No. 1:17-cv-00458-RA (S.D.N.Y. Jan. 23, 2017).
A recent patent malpractice action filed in federal court in New York against an IP firm raises once again the issue of subject matter conflicts between concurrent clients in prosecuting patent applications in a similar field of technology. The issue of subject matter conflicts in concurrent patent representation continues to be an area of significant interest–and concern–for I ...
At the risk of sounding like a broken record, since it is the New Year I thought it would be helpful to remind you all, again, of what is in my opinion the First Commandment of Ethics: Thou Shalt Communicate With Thy Clients. Seriously. Clients do not like to be ignored by their attorneys. This means that when they call or write about the status of their matter, they expect a response—and fast.
The Federal Circuit on Friday affirmed a district court’s order imposing sanctions against a Colorado patent attorney and his patentee client for vexatious litigation. Doubling down, the Federal Circuit imposed its own sanctions for what it says was a frivolous appeal. See Walker v. Health International Corp., No. 15-1676 (Fed. Cir. Jan. 6, 2017).
To all of you who have been dying to know what happened in the world of ethics and discipline at the USPTO in the past year, I am pleased to say your wait is finally over. I have written, “2016 USPTO Disciplinary Decisions — The Year in Review.” Why was The 2016 Year in Review necessary? I for one have found it quite time-consuming to get a handle on ethics decisions published by the USPTO.
The United States Court of Appeals for the Second Circuit rejected yesterday a now defunct Virginia IP firm’s attempt to rely on 35 U.S.C. § 101 and the Supreme Court’s Alice decision as a defense to an $8 million damages award arising from the firm’s negligence in handling a client’s patent application. Protostorm, LLC v. Antonelli, Terry, Stout & Kraus LLP et al., 15-2084 (L) (2d Cir. Dec.
I have lived and worked in the Washington, D.C. metro area my entire adult life. Washington is notorious for its traffic. The math for my office commute is simple. Ten hours per week. 500 hours per year. For 30 years. That’s 15,000 hours–or 1.71 years of my life–just going to and from the office. I know I am not alone.
Attorney Rodger Moore enjoys a good bottle of wine. Evidently, his budget does not. After scamming his local grocery store for years by switching prices on expensive wines for a cheaper variety, Mr. Moore is now paying a hefty price–with his law license. Mr. Moore became licensed to practice law in 2001. His ethics problems started almost immediately thereafter. In November 2001, Mr.
“What we’ve got here is failure to communicate.” Cool Hand Luke A law school professor once told me the easiest question to grade on an exam is the one where the student fails to provide any answer at all. So too is the case for the IP practitioner who chooses to ignore a USPTO ethics investigation.
The USPTO today issued a warning about the dangers of fraudulent trademark solicitations. In a blog posted on the USPTO’s website (link here), Commissioner for Trademarks Mary Boney Denison warned: Trademark solicitations have been a global problem for decades, including for USPTO customers, and we have implemented several measures to protect our customers against them.
The USPTO Director excluded a patent attorney on consent following a disciplinary investigation arising from numerous alleged violations of the USPTO’s ethics rules. See In the Matter of Edward Etkin, Proc. No. D2016-05 (USPTO Dir. Jan. 8, 2016). The OED conducted a disciplinary investigation into the conduct of patent attorney Edward Etkin of Brooklyn, New York. The OED found that Mr.
Litigators spend much of discovery searching for “hot” documents. In this context, when we say “hot” we mean really awesome, or at least very good, documents. Some documents are smoking gun “hot.” They might be summary judgment “hot.” They could also be your-so-hot-I-cannot-wait-to-play-you-on-cross-examination “hot.
A recent disciplinary decision published by the USPTO Director illustrates a serious flaw in the Office’s rules governing reciprocal discipline. In re Sanjeev Kumar Dhand, D2016-17 (USPTO Dir. Nov. 16, 2016). California Discipline The factual background of the Dhand case is eerily similar to our post from yesterday (link here).
An IP attorney continued his legal education the hard way. He falsely represented to the California Bar that he had completed the mandatory minimum of 25 hours of continuing legal education. In truth, he had completed zero hours of CLE. The result: a one-year suspension. This matter involved California-based patent attorney Jens Edward Hoekendijk.
Some IP practitioners are unaware of the ethical rules regulating the practice known as “fee-splitting.” In this context, “fee-splitting” refers to the situation where a first USPTO practitioner divides a portion of a client’s fee with a second practitioner who is from a different firm as the first. According to 37 C.F.R. Section 11.
Each year, a number of patent and trademark practitioners agree to exclusion from the USPTO rather than face an OED ethics investigation or USPTO disciplinary action. While not always the case, such consent exclusions usually involve very serious–and often criminal–practitioner misconduct. One such matter is the case of former patent attorney David N. Caracappa. See In re David N.
Guessing wrong about the enforceability of an advanced conflict waiver could lead to unexpectedly bad consequences. One doomsday scenario is illustrated by a recent California immediate appellate court decision in the case of Sheppard, Mullin, Richter & Hampton, LLP v. J-M Manufacturing, 244 Cal.App.4th 590 (2016).
Halloween is upon us. We put out the candy bowl and wait for the tiny ballerinas, ghosts, and football players to ring the doorbell and shout “trick or treat.” Despite the seemingly optional “or” language in the request, traditionally the kids will always get the treat. Law firms also prefer “treats” in the form of new business.
Dear Readers, Two years ago, I started IPethics & INsights as a forum for discussing my passion and interest in ethical issues for the intellectual property practitioner. I am very pleased to announce that IPethics & INsights has been nominated for inclusion in The Expert Institute’s “Best Legal Blog” contest in the category of niche and specialty blogs.