I was speaking last month at the PTO, and the OED director gave a talk on several issues that surprised me. I’ll be posting about them in the coming days.
One was the suggestion that customer number practice can result in greater instances of inequitable conduct. Although he mentioned imputation, I don’t think that’s what he meant: if three lawyers are on a customer number, then each might be deemed, for that reason alone, to be substantively involved in prosecution and, so, their knowledge would “count.” So, even though only one lawyer is actually doing any work on the file, if another lawyer on the customer number “withheld” information, that could be an omission.
I don’t know how you can possibly get, absent unusual facts, intent to deceive by the lawyer who didn’t know his information mattered, but I also think it elevates form over substance to say that everyone listed on the same CN is involved.
But, he suggested that firms rethink the structure of their customer number practice….
Agreed. I was very surprised by this. I wrote something about “imputation” and inequitable conduct a long, long time ago that dealt with why ethics rules don’t apply, and even went back through the PTO’s adoption of its regs in the early ’90s, which addressed a lot of the “open” questions that seem to again exist….
I think the office of OED needs to understand the words “intentional.”
It drives up readership and royalties! Wait, I don’t get royalties.
I was surprised by his comment. I have a lot of respect for Director Covey, but this one (and the one I’ll get to tomorrow or later tonight) really throw me. Wait til you see that one.
You’re such a tease…
Seriously? Where do they find these OED people, on Mars?
Not for inequitable conduct. That’s pretty settled. (Also, if imputation applied, not sure there could be patent firms.)
“I don’t know how you can possibly get, absent unusual facts, intent to deceive by the lawyer who didn’t know his information mattered,I also think it elevates form over substance to say that everyone listed on the same CN is involved.”
You’re right on both counts. The OED director doesn’t have enough real issues to deal with – he has to make up pretend ones?
Would not the ethical rules regarding firm practice already ‘impute’ any shared knowledge?
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