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Non-practicing entities who engage in a pattern of filing numerous lawsuits without any intention of testing the merits, solely to extract low ball settlements, should take note that the USPTO’s Office of Enrollment and Discipline (OED) takes a keen interest in such conduct. A recent “exceptional case” decision in a patent case from federal court in California should give pause ...
Who is an IP firm’s patent prosecution client when the firm represents a limited liability company and one of its members is the sole inventor? Does the answer change if the LLC is never actually formed, and no one ever advises the law firm? Those are just two questions that appear to be at the center of a malpractice lawsuit filed recently by a Massachusetts business against the IP law firm of .
Patent and other high technology litigation invariably involves the disclosure of highly confidential technical and financial information. One of the first orders usually entered in such cases is a protective order, which enables parties to designate and disclose to a limited universe of people what the producing party considers to be confidential information.
Some patent attorneys and agents are under the impression that once they have passed the Patent Bar exam and have earned a PTO registration number, they are essentially registered for life, with no further action required on their part. If you are one of those people, then you should read on. One of the jobs of the USPTO’s Office of Enrollment and Discipline (OED) is to mainta ...
Greenberg Traurig has apparently decided that discretion is the better part of valor. The law firm has agreed voluntarily to withdraw as counsel from a litigation rather than face a disqualification motion in which it was charged with a conflict of interest for trying to invalidate patents it helped prosecute.
Once upon a time, John Steele, the founder of the law firm formally known as Prenda Law, believed he had found the perfect recipe for a successful niche copyright law practice. First, monitor certain file-sharing websites containing porn and obtain the IP addresses of individuals who downloaded or attempted to download said porn.
The USPTO has suspended a PTO-employed attorney for thirty (30) days for practicing trademark law before the Office for private clients, in violation of federal conflicts of interest laws. See In re Tara K. Laux, Proc. No. D2016-39 (USPTO Dir. Mar. 9, 2017). According to a settlement agreement reached with the OED Director, attorney Tara Laux, who has worked at the USPTO since ...
It is Ethics 101 that a law firm cannot use its former client’s confidential information in a substantially related matter on behalf of a different client directly adverse to the former client, at least not without the former client’s informed consent. The reason for this common sense rule, which prohibits “side-switching,” is that a lawyer’s duty of confidentiality extends b ...
The ABA has dived head first into the pool of law firm cybersecurity. On May 11, 2017, the American Bar Association’s Standing Committee on Ethics and Professional Responsibility issued Formal Opinion 477 (here), which addresses a broad range of issues that lawyers must consider to protect client confidential information from “nefarious actors throughout the internet.
A former female colleague asked me once why nearly all of my clients are men. Frankly, I had never given the matter any thought. It took me awhile even to accept my colleague’s conclusion that nearly all of my clients were, in fact, of the male variety. So I pulled out my list of clients I’d represented over the years, and realized that my ex-colleague was on to something– mor ...
Bad news sells. As the author Douglas Adams observed, “Nothing travels faster than the speed of light with the possible exception of bad news, which obeys its own special laws.” Take IP litigation, for example. The mainstream IP media regularly reports on both allegations and court decisions regarding issues relating to attorney conduct–or alleged misconduct.
The only time a patent attorney or agent ever wants to hear from the USPTO’s Office of Enrollment and Discipline is when they are admitted to the Patent Bar and issued a registration number. Other than that, no news is good news. So if an envelope arrives from the OED (certified mail, return receipt requested), don’t expect the Office to be writing to complement you on your we ...
Do you worry about ethics in your IP practice? If not, you should. There is way too much going on out there, and not knowing what is happening can leave you exposed to ethics and malpractice risk. If you can spare 90 minutes, tune in tomorrow from 1:00-2:30 pm EST for the ABA-IPL Landslide Webinar Series, entitled “Identifying and Resolving Ethical Conflicts of Interest in Patent Prosecution.
CLE courses seem to be popping up left and right about the impact of the Supreme Court’s 2016 Halo v. Pulse decision reversing the prior Seagate willful infringement standard. The focus of these other CLEs seems to be more on the substantive law of willfulness and how the district courts have responded to the issue and applied the Halo standard.
The three-year ethics saga between Matthew Swyers, owner of The Trademark Company, and the USPTO’s Office of Enrollment and Discipline (OED), ended with a whisper, with Mr. Swyers agreeing to resign from practicing before the USPTO. By entering into what is called an “exclusion on consent” agreement, Mr. Swyers voluntarily gives up the ability to provide U.S.