Lawyer fails to correct Rule 131 Dec; Patent held unenforceable; lawyer agrees to discipline

Thanks to a reader..

This OED decision from January 8, 2014 disciplinary order is interesting.  Briefly, a very senior patent attorney (with a low reg number) was suspended for filing a Rule 131 declaration antedating a prior art reference, and then failing to correct the prosecution record after the declarant admitted to the patent attorney, during prosecution, that the Rule 131 declaration was false.  The patent that issued from that application was subsequently litigated and held to be unenforceable due to inequitable conduct predicated in part on a finding that the Rule 131 declaration was false.  

 Two thoughts:  one, why would a reasonable practitioner continue to prosecute?  For the fees?  (If the client had given the practitioner an interest in the application, I can see the financial interest, but otherwise…?).  Second, think of the costs that, I bet, are coming downstream:  the accused infringer ought to move for fees under 285, and, if so, those fees ought (in my view under these allegations) be paid by the lawyer.  So, back to the first thought: why?

10 thoughts on “Lawyer fails to correct Rule 131 Dec; Patent held unenforceable; lawyer agrees to discipline

  1. Thanks.

    That being said (and as Prof. Hricik indicates), the role of the attorney can sometimes become muddled (caveat – I am not saying there was any muddle in the focal case of this thread). See, for example, Fair labor Practices Associates v. Quest Diagnostics Inc., 2013 WL 5763181 (2nd Cir. Oct. 25, 2013 (lawyer’s ethical obligation to former client outweighed federal interest in encouraging whistleblowers to disclose FCA violations)

  2. Nice cite. Like I said, the last time I had reason to look into this was long ago. It seems that the lawyer, per the current ABA model rules, is required to disclose the falsity of the testimony. So maybe Tendler was remembering back to his law school days, when even a “noisy withdrawal” was ethically suspect.

  3. Why? Perhaps a lack of clarity vis-a-vis other ethics rules you learn in law school. At trial, after a witness testifies and the lawyer realizes that the testimony was false, is he allowed to disclose this to the judge? That discloses a client confidence to the detriment of the client. The ethics on this are pretty fuzzy last time I checked, which was a long time ago. It would be interesting for a professor specializing in ethics to discuss this on a blog somewhere.
    Why? The inventor had twelve other applications with this patent attorney, which might have produced a lot of revenue to be lost.
    Why? Stupidity and greed.
    As for attorney fees, we do not know whether the litigators knew of the problem, and proceeded anyway, which would absolve Tendler of culpability for the litigation. Tendler might not have known about the litigation.

  4. By the way, heebie jeebies is a great name. I am not sure how many of my students at Mercer, most of whom were born around 1988 or so, would have a clue what it meant!

  5. David, your headline is misleading. The attorney didn’t knowingly file a false declaration; he failed to correct the record when it became known to him that the declaration was false.

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