December 2008

Means-Plus-Function Fools Gold

Patent

Welker Bearing v. PhD, Inc. (Fed. Cir. 2008)

Mechanism For: Welker’s patent claims a clamping mechanism for holding parts in place when welding. The appeal focuses on construction of a “mechanism for moving said finger.” Affirming a prior similar ruling, the Federal Circuit found that the claim structure “mechanism for [performing a function]” is presumptively interpreted as a means-plus-function claim element.

“The term ‘mechanism’ standing alone connotes no more structure than the term ‘means.'” Quoting MIT v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006).

Instead of claiming a “mechanism for moving said finger,” the patentee could have claimed a “finger displacement mechanism.” Opining on that counterfactual, the Federal Circuit noted that it would not have presumed a means-plus-function construction.

“If claim 1 … had recited, e.g., a “finger displacement mechanism,” a “lateral projection/retraction mechanism,” or even a “clamping finger actuator,” this court could have inquired beyond the vague term “mechanism” to discern the understanding of one of skill in the art. If that artisan would have understood such language to include a structural component, this court’s analysis may well have turned out differently. Instead the applicant chose to express this claim element as “a means or step for performing a specified function without the recital of structure, material, or acts in support thereof.””

A reminder here: means-plus-function language is akin to fools gold. Welker’s “mechanism” claim appears broadly written until means claim interpretation doctrine limited to the particular structures disclosed in the specification that perform the claim function and structures that are only insubstantially different. Here, Welker described a linear finger movement which was considered substantially different from a rotational movement.

Means-Plus-Function Equivalents versus Doctrine of Equivalents: Means-plus-function claims are interpreted to cover only structures disclosed in the specification that perform the claimed function and, in addition, any equivalents of those disclosed structures.  On its face, this appears duplicative of the traditional doctrine of equivalents (DOE). In this case, the Federal Circuit spells out some differences between the two. Most notably, “an equivalent structure [for means-plus-function analysis] under § 112 ¶ 6 must have been available at the time of the issuance of the claim, whereas the doctrine of equivalents can capture after-arising technology developed after the issuance of the patent.”  This statement by the court does not, however, precisely explain the distinction.  For means-plus-function claims, court precedent allows the doctrine of equivalents to only capture after-arising technology.  [Link] “Indeed this case does not present a case for equivalents under the doctrine of equivalents at all. This case presents only the question of structural equivalents under §112 ¶ 6.”

Federal Circuit Affirms Nonobviousness of Plavix Isomer Patent

Patent

Sanofi Synthelabo v. Apotex (Fed. Cir. 2008)

In an opinion by Judge Newman, the Federal Circuit affirmed the validity of Sanofi’s patent covering the blockbuster drug Plavix. The Plavix patent covers a dextrorotatory isomer. The validity question rises from the fact that the racemate of the compound was known and described in earlier Sanofi patents. For its obviousness argument, Apotex noted that separation of enantiomers is routine and that there are many examples of compounds that exhibit stereoselectivity. Thus – Apotex argued – there was both motivation and means for creating the Plavix compound from the known racemate that Sanofi had previously admitted was an important compound.

The Federal Circuit disagreed with Apotex – finding “no error in the district court’s findings that, on the state of the prior art, a person of ordinary skill would not have had the expectation that separating the enantiomers would be likely to produce an isomer having absolute stereoselectivity as to both the favorable antiplatelet activity and the unfavorable neurotoxicity.”

Notes

  • This case falls in line with the Federal Circuit’s 2006 decision on preliminary injunction in this case. [Link]
  • In November 2008, the Canadian Supreme Court affirmed patentability of the Canadian patent on Plavix. [Link]

Federal Circuit Affirms Nonobviousness of Plavix Isomer Patent

Patent

Sanofi Synthelabo v. Apotex (Fed. Cir. 2008)

In an opinion by Judge Newman, the Federal Circuit affirmed the validity of Sanofi’s patent covering the blockbuster drug Plavix. The Plavix patent covers a dextrorotatory isomer. The validity question rises from the fact that the racemate of the compound was known and described in earlier Sanofi patents. For its obviousness argument, Apotex noted that separation of enantiomers is routine and that there are many examples of compounds that exhibit stereoselectivity. Thus – Apotex argued – there was both motivation and means for creating the Plavix compound from the known racemate that Sanofi had previously admitted was an important compound.

The Federal Circuit disagreed with Apotex – finding “no error in the district court’s findings that, on the state of the prior art, a person of ordinary skill would not have had the expectation that separating the enantiomers would be likely to produce an isomer having absolute stereoselectivity as to both the favorable antiplatelet activity and the unfavorable neurotoxicity.”

Notes

  • This case falls in line with the Federal Circuit’s 2006 decision on preliminary injunction in this case. [Link]
  • In November 2008, the Canadian Supreme Court affirmed patentability of the Canadian patent on Plavix. [Link]

Enforcing Foreign Patents in the US: Distinguishing Voda

Patent

Fairchild Semiconductor v. Third Dimension (3D) (D.Maine 2008)

The dispute between Fairchild and 3D turns — in-part — on whether Fairchild’s devices that it manufactures abroad are covered by 3D’s Chinese patents. In a well written opinion, a Maine district court (J. Hornby) rejected 3D’s motion to dismiss – finding that it has power to adjudge the conflict even though the analysis will almost certainly require determination of the scope of the Chinese patents.

Fairchild and 3D have an ongoing “worldwide” license agreement that allows Fairchild to use 3D’s patented technology. The license specifically includes both the Chinese and US patents. For consideration, 3D receives a royalty payment for any Fairchild products “covered by” on or more claims of 3D’s licensed patents. After analyzing 3D’s patents, Fairchild stopped paying the royalty and also sued for a declaratory judgment that it owes no royalties and that its products are not covered by 3D’s patents. The agreement also had a choice of forum (Maine or Texas courts) and choice of law (Maine or Texas law) that applied to the entire agreement. The case is in Federal Court based on diversity jurisdiction.

Courts normally enforce choice of forum & choice of law contractual provisions – especially when negotiated by two sophisticated parties. The catch for cases involving foreign patent rights is the Federal Circuit’s strong aversion to allowing US courts to adjudge foreign patent rights. In the 2007 Voda case, for instance, the appellate court would almost always abuse its discretion by using its supplemental jurisdiction power to adjudge claims of foreign infringement.

Here, the district court distinguished Voda on a few grounds: First, this case reaches the court based on diversity jurisdiction rather than supplemental jurisdiction. Although diversity cases can be booted on convenience factors, diversity jurisdiction is not otherwise discretionary. Here, convenience factors favor Maine as a jurisdiction over China – in particular, both parties are in the US, one has its HQ in Maine, and both previously agreed to litigate in Maine. Second, this case is not a patent infringement case. Rather, it is a contract dispute that – as part of the dispute – questions the scope of a Chinese patent. Third, problems of international relations and comity are lessened because the Chinese patent issue only involves the scope of the Chinese patent and not its validity.

It is unclear whether the Federal Circuit will have jurisdiction over any subsequent appeal since the justification for federal jurisdiction is the diversity of parties rather than patent “arising under” jurisdiction.

 

Court: Parties Must Justify Need for Claim Construction

Patent

IP Cleaning v. Annovi Research (W.D. Wisc. 2008)

IPC has accused Annovi of infringing its patent covering a high-pressure washer. Although only a single claim is in dispute, both parties requested that the court construe several claim terms. In a recent order, however, the court denied both motions for claim construction because neither party had “persuade[d] the court that construction of each specified term is necessary to resolve a disputed issue concerning infringement or invalidity” beyond the generic statement of resolving issues of infringement and validity. According to the court, it will only resolve claim construction disputes where the parties have a “concrete dispute” that will impact the outcome.

“The reason for the order is not to require parties to parrot its language before the court construes claim terms; it is to avoid the devoting judicial resources to the issuance of advisory opinions on the construction of claim terms about which the parties have no concrete dispute. As much as the parties may hate to show their hands at this early stage, they must do so, if they hope to seek the benefit of claim construction before filing motions for summary judgment. Because the parties have disregarded the order and failed to demonstrate the basis for requesting construction of the terms they dispute, their motions requesting claim construction will be denied.”

This decision is in tension with O2 Micro v. Beyond Innovation (Fed. Cir. 2008). In that case, the Federal Circuit found that the lower court had improperly refused to construe certain disputed terms. “When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute. . . . When the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.” O2 Micro. The two cases may be distinguished on the ground that in IP Cleaning, the parties have not yet shown an “actual dispute regarding the proper scope” of the claims.

Federal Circuit Affirms Narrow Construction of “Internet Billing Method”

Patent,

Netcraft Corp v. eBay and PayPal (Fed. Cir. 2008)

Netcraft sued eBay and PayPal for infringement of its patents that cover an “internet billing method.” During claim construction, the Western District of Wisconsin found that the limitation of “providing a communications link through equipment of the third party” requires that an infringer “provid[e] customers with internet access.” Of course, eBay and PayPal do not provide internet access.

On appeal, the Federal Circuit affirmed the claim construction and summary judgment of non-infringement.

Three reasons why the claim was narrowly construed:

  1. In many cases, claim construction issues are won or lost in the process of defining which “term” is going to be construed. The patentee argued that the term “communications link” was broadly written and amenable to broad construction. The defendants argued that the element in question was actually the entire process of “providing a communications link through the equipment of the third party.” That entire process is more amenable to a narrow interpretation.”
  2. The patentee did not help its cause by adding the “communications link” to the claims during prosecution. The term is not used anywhere in the specification – consequently, the patentee had little ammunition for arguing for a broad interpretation.
  3. The specification declares several “objects of the present invention,” including providing internet access. Also, the abstract includes a statement regarding an “agreement between an Internet access provider and a customer.” And, there is no specific language indicating that these statements are directed at “alternative embodiments.” [Note here, a distinction between alternative embodiments and optional functions.]

Affirmed.

Federal Circuit Affirms Narrow Construction of “Internet Billing Method”

Patent,

Netcraft Corp v. eBay and PayPal (Fed. Cir. 2008)

Netcraft sued eBay and PayPal for infringement of its patents that cover an “internet billing method.” During claim construction, the Western District of Wisconsin found that the limitation of “providing a communications link through equipment of the third party” requires that an infringer “provid[e] customers with internet access.” Of course, eBay and PayPal do not provide internet access.

On appeal, the Federal Circuit affirmed the claim construction and summary judgment of non-infringement.

Three reasons why the claim was narrowly construed:

  1. In many cases, claim construction issues are won or lost in the process of defining which “term” is going to be construed. The patentee argued that the term “communications link” was broadly written and amenable to broad construction. The defendants argued that the element in question was actually the entire process of “providing a communications link through the equipment of the third party.” That entire process is more amenable to a narrow interpretation.”
  2. The patentee did not help its cause by adding the “communications link” to the claims during prosecution. The term is not used anywhere in the specification – consequently, the patentee had little ammunition for arguing for a broad interpretation.
  3. The specification declares several “objects of the present invention,” including providing internet access. Also, the abstract includes a statement regarding an “agreement between an Internet access provider and a customer.” And, there is no specific language indicating that these statements are directed at “alternative embodiments.” [Note here, a distinction between alternative embodiments and optional functions.]

Affirmed.

Patently-O Bits and Bytes

Patent,
  • Model Jury Instructions: More on this in an upcoming post. At Judge Michel’s request an all star cast of patent law experts have hammered out a set of model jury instructions for patent infringement actions. [Link][Comments welcome to PatentJuryInstructions@gmail.com]
  • BPAI Appeal rules have been stayed – Most likely until after January 20.
  • Two keen jobs:
    • Fellow at Berkeley Law School (Sponsored by Microsoft). Apply by February 1, 2009 [Link]
    • Appellate Litigator for the USPTO Solicitor’s Office. Apply by January 9, 2009 [Link]
  • Does stare decisis apply to a previous court’s unappealed claim construction decision? See Shire v. Sandoz
  • Donoghue: “Breach of Patent Settlement Does Not Create Federal Jurisdiction” [Link]
  • Barkoff: “Federal Circuit Affirms $16.8 Million Award of Fees to Takeda in Pioglitazone Case” [Link]
  • In house counsel Brian Schar writes the American Intellectual Property Abstract (American IPA)
  • Mullin provides an update on the Troll Tracker defamation suit.
  • The Trading Secrets blog has some useful information on protecting rights via employee agreements. [Link]

Patently-O Bits and Bytes

Patent,
  • Model Jury Instructions: More on this in an upcoming post. At Judge Michel’s request an all star cast of patent law experts have hammered out a set of model jury instructions for patent infringement actions. [Link][Comments welcome to PatentJuryInstructions@gmail.com]
  • BPAI Appeal rules have been stayed – Most likely until after January 20.
  • Two keen jobs:
    • Fellow at Berkeley Law School (Sponsored by Microsoft). Apply by February 1, 2009 [Link]
    • Appellate Litigator for the USPTO Solicitor’s Office. Apply by January 9, 2009 [Link]
  • Does stare decisis apply to a previous court’s unappealed claim construction decision? See Shire v. Sandoz
  • Donoghue: “Breach of Patent Settlement Does Not Create Federal Jurisdiction” [Link]
  • Barkoff: “Federal Circuit Affirms $16.8 Million Award of Fees to Takeda in Pioglitazone Case” [Link]
  • In house counsel Brian Schar writes the American Intellectual Property Abstract (American IPA)
  • Mullin provides an update on the Troll Tracker defamation suit.
  • The Trading Secrets blog has some useful information on protecting rights via employee agreements. [Link]

New Patent Appeals Rules: Delayed by Whitehouse OMB

Patent

Patent applicants appealing examiner decisions do not need to comply with the USPTO’s new appeal brief rules that were set to become effective on December 10, 2008. According to the notice to be published tomorrow: The PTO “will notify the public when the revised effective and applicability dates are set. In the subsequent notification, the Office will provide at least a 30-day time period before the BPAI final rule 2008 becomes effective.”

http://www.federalregister.gov/OFRUpload/OFRData/2008-29297_PI.pdf

As noted previously on Patently-O. David Boundy of CantorFitz has led the charge against implementation of these new rules. Boundy notes the fact that Jon Dudas signed the FR notice on December 5, but as of this writing (Dec 9 at 5:23pm), there is still no notice on the USPTO website.

Post-Reexamination Litigation Estoppel

Patent

Acco Brands, Inc. v. PC Guardian Anti-Theft Products, Inc., 3-04-cv-03526 (N.D.Cal., December 4, 2008).  

Infringers have long been reticent about filing for inter partes reexamination. One problem is the estoppel provision – 35 U.S.C. § 315(c) – that limits the claims that the third-party requester can later make in court. In particular, Section 315(c) is written to estop the third party requester from later asserting an invalidity defense in litigation if the third-party requester “raised or could have raised” the ground during the reexamination. (The estoppel provision only applies once the PTO determines that the challenged claim is valid).

35 U.S.C. §315(c): A third-party [inter partes] requester … is estopped from asserting at a later time, in any civil action … the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.

In this case, the PC Guardian had requested an inter partes reexamination based on several prior art references. However, upon consideration, the PTO confirmed that the claims were patentable.

In the ensuing infringement litigation, PC Guardian made an end-run around the estoppel argument. For its non-infringement contention, PC Guardian presented three 1980’s Macintosh portable computers as prior art. According to the defendant’s argument, the physical computers when seen in combination with the references considered by the PTO rendered ACCO’s patent obvious.

Because reexaminations are restricted to considering only patents and printed publications, the district court agreed that Section 315 does not estop PC Guardian from asserting the combinations during litigation.

File Attachment: PCGuardian.pdf (84 KB)

During prosecution, claims are indefinite when amenable to multiple plausible constructions

Indefinite, Patent,

Ex parte Miyazaki (BPAI Precedential 2008)

In a rare precedential opinion, the Board of Patent Appeals and Interferences (BPAI) has re-defined the standard for a §112 indefiniteness rejection during patent prosecution. The BPAI’s definition for pre-issuance indefiniteness focuses on ‘plausible’ indefiniteness and varies dramatically from the Federal Circuit’s standard of ‘insolubly ambiguous.’ The BPAI argues that a lower threshold of ambiguity is justified pre-issuance because it gives the PTO power to ensure that claims are “precise, clear, correct, and unambiguous.”

As such, we employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing courts. In particular, rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.

The expanded indefiniteness examination runs parallel to the PTO’s approach of broadly construing claims during prosecution. Both tactics are intended to better ensure that issued patents can be counted-on as being valid patents.

The Federal Circuit’s insolubly ambiguous standard is premised on the strong presumption of validity associated with an issued patent. The BPAI grounds its lower threshold in the notion that patent applications have no presumption of validity.

Read the BPAI Miyazaki Opinion: /media/docs/2008/12/fd073300.pdf

Patently-O Bits and Bytes

Patent
  • Law School Hiring: This year has been dismal for law student hiring. There are many 2Ls and 3Ls who are hopeful patent attorneys, but do not have jobs lined up yet or even serious prospects. In past years, those students would have been already snapped up by the big players. Contact me (dcrouch@patentlyo.com) if you are interested in looking at some Mizzou law resumes.
  • Crocs: Helping keep the streets free of ugly shoes (as well as microscopic fungi), Sketchers has agreed to stop selling its molded footwear. Crocs had sued for design patent and trade dress infringement. Crocs, Inc. v. Skechers U.S.A., Inc., Case No: 1:08-cv-01450-RPM (D. Co 2008).
  • Wall Street Journal Patent News:
    • Medicis Pharmaceuticals (NYSE) climbed 2.26, or 20%, to 13.38, as the Scottsdale, Ariz., skin-products maker agreed to settle a yearlong patent dispute with Impax Laboratories over a generic version of Medicis’ acne drug Solodyn.
    • Falling 7.67, or 46%, to 8.95, Tessera Technologies, a San Jose, Calif., company specializing in semiconductor packaging, was handed a setback when an International Trade Commission judge said six big chip makers didn’t infringe its patents.
  • Future of the PTO: On December 11, 2008 in DC, Chris Katopis will moderate an historic panel of former PTO Leaders: Dickinson, Lehman, Mossinghoff, and Godici. Free Live or via Telephone. Details, RSVP, and call-in info from TLiszka@comptia.org.
  • Santa Clara Computer and High Technology Law Journal’s 25th Annual Symposium: January 30, 2009 in San Jose. I will be presenting some ideas on attorney ethics and inequitable conduct. Other topics include developments in non-practicing entity patent litigation and litigation before the ITC.

Patently-O Bits and Bytes

Patent
  • Law School Hiring: This year has been dismal for law student hiring. There are many 2Ls and 3Ls who are hopeful patent attorneys, but do not have jobs lined up yet or even serious prospects. In past years, those students would have been already snapped up by the big players. Contact me (dcrouch@patentlyo.com) if you are interested in looking at some Mizzou law resumes.
  • Crocs: Helping keep the streets free of ugly shoes (as well as microscopic fungi), Sketchers has agreed to stop selling its molded footwear. Crocs had sued for design patent and trade dress infringement. Crocs, Inc. v. Skechers U.S.A., Inc., Case No: 1:08-cv-01450-RPM (D. Co 2008).
  • Wall Street Journal Patent News:
    • Medicis Pharmaceuticals (NYSE) climbed 2.26, or 20%, to 13.38, as the Scottsdale, Ariz., skin-products maker agreed to settle a yearlong patent dispute with Impax Laboratories over a generic version of Medicis’ acne drug Solodyn.
    • Falling 7.67, or 46%, to 8.95, Tessera Technologies, a San Jose, Calif., company specializing in semiconductor packaging, was handed a setback when an International Trade Commission judge said six big chip makers didn’t infringe its patents.
  • Future of the PTO: On December 11, 2008 in DC, Chris Katopis will moderate an historic panel of former PTO Leaders: Dickinson, Lehman, Mossinghoff, and Godici. Free Live or via Telephone. Details, RSVP, and call-in info from TLiszka@comptia.org.
  • Santa Clara Computer and High Technology Law Journal’s 25th Annual Symposium: January 30, 2009 in San Jose. I will be presenting some ideas on attorney ethics and inequitable conduct. Other topics include developments in non-practicing entity patent litigation and litigation before the ITC.

California’s One-Sided Patent Regime: Litigating With Immunity

Patent

Biomedical Patent Management Corp. (BPMC) v. California Department of Health Services (on petition for certiorari)

BPMC’s patent infringement lawsuit against the California was dismissed after the state asserted immunity under the Eleventh Amendment of the US Constitution – a decision affirmed by the Federal Circuit. In its petition for certiorari, BPMC argues that the State has waived its immunity. BPMC presents two separate theories of waiver – one narrow and one broad. The narrow waiver theory focuses on the facts of this particular dispute – that California had previously voluntarily been a litigant in a case involving the same parties, same patent, and same infringing actions. The prior case was dismissed and then re-filed, but the state refused to participate in the second coming. The broader and more interesting waiver theory focuses on California’s deep and continued involvement in the patent system as a patent applicant, patent holder, patent plaintiff, and patent licensor. Particularly notable for this case is California’s extensive use of the Federal Courts to sue infringers. As posed by BPMC, the broad waiver question is: “Whether or in which circumstances a State may waive its Eleventh Amendment immunity in patent actions by regularly and voluntarily invoking federal jurisdiction to enforce its own patent rights.”

Before granting certiorari in patent cases, the Court often asks the Solicitor General to provide the US Government’s views on the petition. In a recent filing, the Solicitor General recommended that the petition for certiorari be denied. On the narrow waiver question, the Solicitor sees the facts as too narrow to warrant Supreme Court attention. The SG sees the broader question as “undeniably important.” However, the Solicitor sees the proposed focus on whether a state has “regularly and voluntarily invoked federal jurisdiction to enforce its own patent rights” as “unworkable.”

“Under petitioner’s proposed rule, it is not clear at what point a State would be deemed to have voluntarily participated in enough federal court patent suits to have waived its Eleventh Amendment immunity from all such suits. Nor is it evident how a State would know in advance when it was poised to cross the waiver threshold.”

The Solicitor also notes that most of the issues were resolved by Florida Prepaid cases. Although well written, the Solicitor’s brief is just that – brief.

There are several reasons why I do not believe that the SG’s opinion seriously diminishes the chances of being granted certiorari. First, [some]* patent cases in the past decade were granted certiorari despite a SG recommendation against the grant. Second, the Supreme Court has already shown interest in the case by asking for the SG’s recommendation, and the SG recognizes that the issue is important. Third, the SG’s arguments of unworkability and lack of clarity are rather weak. The brief is just that – brief – and does not address many underlying constitutional issues. Fourth, the Supreme Court has already focused on this issue and has experience. However – as the SG notes, the issue raised by BPMC is not directly covered by the court’s prior rulings.

BPMC’s counsel – Andrew Dhuey – indicated that the Supreme Court may consider the petition in its January 9th Conference.

Notes:

  

Patent Practitioner Ethics Update

Patent,

In a recent presentation, PTO Discipline Director Harry Moatz repeated his statements regarding a practitioner’s duty to make reasonably inquiry prior to submitting any papers to the USPTO. “Practitioners submitting papers must read each paper submitted to the Office before it is submitted. Each submitted paper must be read in its entirety … regardless of the source of the paper.” The duty of inquiry is codified in the Federal Regulations as 37 C.F.R. § 11.18(b). That section requires that submitted papers be submitted only for proper purposes and that any claims made be legally warranted. Section (b)(1) requires that all statement made be believed to be true and that no statement “covers up by any trick, scheme or device a material fact.” Section (b)(2) goes on to require that the person filing the paper actually make “an inquiry reasonable under the circumstances” to ensure that the paper is not being presented for any improper purpose and that the contentions are “warranted by existing law or by a nonfrivolous argument [to change] existing law.”

Mr. Moatz provides several examples that could be seen as failure to make a reasonable inquiry: (1) Filing an application with claims that are anticipated by at least one publication authored by one of the inventors. (2) Burying a reference material to patentability among a large number of cumulative references. (3) Filing an application with one or more claims unpatentable over a combination of prior art references cited by applicant in the specification.

37 CFR § 11.18 (b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—

(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and

(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,

(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;

(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;

(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and

(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.

In his presentation, Mr. Moatz listed the primary complaints that he receives against patent practitioners. They include:

  • Neglect.
  • Lack of candor (Either to client or the PTO).
  • Failure to make reasonably inquiry.
  • Failure or delay in filing application
  • Failure to respond to OA (even when client has not paid)
  • Misuse of the certificate of mailing
  • Insufficient funds
  • Failure to pay issue fee
  • Failure to revive
  • Failure to turn over files to new attorney
  • Failure to communicate with client

Additional reasons for ethical sanction include DUIs; unauthorized taking of prescription meds; and disbarment.  Under the new ethics rules (Aug 2008), a practitioner must notify the OED Director within 30 days of being convicted of “any” crime. The PTO will then determine whether the conviction is serious enough to merit interim suspension. Practitioner must also give notice of disbarment within 30 days.  The new rules also provide for “disability inactive status” when a practitioner is judged legally incompetent.

Notes:

Patently-O Bits and Bytes: Vote for Patently-O

Patent

The ABA is running its annual law blog popularity contest, and Patently-O again made the cut of top 100 legal blogs. Apparently, Patently-O is being voted on for the award of best “niche” blog. Unfortunately, I tend to avoid that word (niche) because I don’t want to sound too French (neesh) or too rural (nitch).

Follow the link to Vote for Patently-O (towards the bottom of the ballet) http://www.abajournal.com/blawgs/blawg100_2008/niche. (Only one vote per computer).

Patently-O Bits and Bytes: Vote for Patently-O

Patent

The ABA is running its annual law blog popularity contest, and Patently-O again made the cut of top 100 legal blogs. Apparently, Patently-O is being voted on for the award of best “niche” blog. Unfortunately, I tend to avoid that word (niche) because I don’t want to sound too French (neesh) or too rural (nitch).

Follow the link to Vote for Patently-O (towards the bottom of the ballet) http://www.abajournal.com/blawgs/blawg100_2008/niche. (Only one vote per computer).