Hello, everyone!

I just finished my clerkship with Chief Judge Rader, and have arrived back at Mercer Law School.  What an amazing and transformative year.  It was an honor to serve the court.

In my absence, the PTO adopted new ethical rules.  The rules are here, on a page that includes some helpful tables comparing the PTO rules to the Model Rules, and other information.

Unlike the effort in 2003, this time the PTO in large part adopted a slightly-out-of-date version of the ABA Model Rules, with a couple exceptions (including, for some odd reason, the choice of law provision).  There are now fewer differences between the ethical rules that apply to discipline in OED proceedings and those that would apply in state disciplinary proceedings, but key differences exist.  One is that the PTO did not adopt any private-practice screening provisions, but several states permit screening to be used, even over the objection of a client, to avoid a conflict caused by a lawyer migrating from one firm to another.  I'm still working through them, and will post more as I go.



About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

11 thoughts on “Hello, everyone!

  1. 11

    LB, you might want to actually read the original SC cases, including Walker Process.

    Imagine two competitors. One has a patent that will dominate the industry. Another competitor suppresses prior art in exchange for a low cost license.

    That, LB, is potentially an antitrust violation.

    What does this imply? One can sit on prior art — OK. But one cannot tell the patentee that I have this prior art and unless you give me a sweetheart deal I will give it to the PTO or to a defendant in court.

    So there is a duty to some degree to the public regarding prior art. Disclose it to the PTO, publish it, file it in court, butdonot confidentially send itonly tothe patentee. That is unethical.

  2. 10

    Nonsense, Ned, even leaving aside the fact that mailing a reference to a patentee is not suppressing anything. The duty of disclosure attaches to those involved with the filing, not with potential or real targets. Where do you find in the rules or statutes that I have a duty to disclose to the PTO material pertinent to my competitor’s application? I’d appreciate a citation other than to a case where ompetitors are colluding, since your proposition is much broader than that.

  3. 9

    Also consider that suppressing evidence of invalidity is unethical and potentially an antitrust violation. Thus giving information only to the patent applicant and not to the PTO smacks of unclean hands from the get go. If this is done by a competitor, the stink of conspiracy in restraint trade is begins to emerge.

  4. 8

    I think that’s a fine question, Ned, but a different one. Speaking of added facts, I note that you’ve added the facts where the person sending the material is “seek[ing] to impose upon the patent owner additional costs for filing RCE’s and other costs and delays.” If that’s the only reason, then there might be an ethical issue, but certainly not one that’s cured by having your mailroom staff throw away the prior art. (Indeed, I wonder how we could implement your reporting suggestion if our mailroom throws these letters away.) But, pre-issuance submissions by third parties are only allowed up to the first office action (assuming there is one) – is it your position that it’s unethical for a third party to mail relevant art directly to a prosecuting attorney after a non-final office action?

    I’d be happy to hear the good professor’s take on this question, in addition to my question.

  5. 7

    OK. Or we could just simplify the question. Are there any circumstances under which mailroom staff could ethically discard a registered letter addressed to an attorney at the firm, when that registered letter is from another law firm and references a matter handled by the addressed attorney, thereby allowing the addressed attorney to avoid seeing the letter? ‘Cause anon says that’s what his counsel does, but apparently only when the sending attorney is a friend of the attorney actually involved and when the letter is an effort to trap the patentee’s attorney and avoid the established rules regarding notice of prior art and third parties.

  6. 5

    Leopold, you might want to include all the facts of that discussion and omit your new added ones (the use of the attorney was a proxy – a ‘friend’ of the attorney actually involved, and was in an effort to trap the patentee’s attorney and avoid the established rules regarding notice of poor art and third parties.

    Then ask yourself if you want to pollute Prof. Hricik’s threads with the same rah-rah cheer leading for Malcolm that you do on the main site.

  7. 4

    LB, I could question rather should be should we report people who avoid statutory requirements for disclosing information to the patent office by this subterfuge. The requirement of practitioners and attorneys in general is to disclose information to the patent office that might be relevant to patentability. The statue provides procedures and timelines for doing this. People who intentionally avoid these rules and seek to impose upon the patent owner additional costs for filing RCE’s and other costs and delays are not operating in a ethical manner.

  8. 3

    Are there any new ethics rules that would let attorneys instruct their mailroom staff to discard registered letters containing prior art material, so that the addressed attorney doesn’t see it?

  9. 2

    Professor, welcome once again.

    I notice Chief Judge Rader has observed that Section 282 invalidity does not extend to 101. I believe he is now calling 101 invalidity non statutory.

    Now, what are we to make of that? Can there be both statutory an non statutory validity?

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