On December 16, 2021, the USPTO will officially announce a delay in the implementation of the voluntary CLE certification program for registered practitioners, and those granted limited recognition. This follows a delay in the biennial registration statement, which will be
IPethics & INsights
Latest from IPethics & INsights - Page 2
Everything You Need to Know About Moral Character for the Patent Bar
By Emil Ali
You have passed the patent bar after months of hard work and studying the Manual of Patent Examining Procedure. “[H]owever, you are not being registered at this time…” The letter goes on to explain that, because of your answers on…
Working with Chinese Trademark Agencies – A Dangerous Game, or Delicate Tightrope?
By Emil Ali
Following a recent report issued by the Department of Commerce, Office of Inspector General, as well as a plethora of recent disciplinary actions published by the USPTO’s Office of Enrollment and Discipline, many practitioners have done a retrospective analysis of…
USPTO Responds to OIG Report – Continues to Blame Attorneys and Foreign Agents
By Emil Ali
Last week, we provided commentary regarding a scathing report issued by the Inspector General of the Department of Commerce (“OIG”). Since that time, the USPTO published a blog post, penned by Drew Hirshfeld, performing the functions and duties…
DOC OIG Slams USPTO’s Handling of Foreign Trademark Filings, U.S. Counsel Rule
By Emil Ali
On August 11, 2021, the Inspector General of the Department of Commerce (“OIG”), which oversees the USPTO, issued a scathing report on the state of the USPTO’s control over the integrity of the Trademark Register. The report discussed a number…
Top Three Things IP Practitioners Must Know When Working With Foreign Associates
By Emil Ali
As we noted in a prior post, the USPTO has gone on record allowing U.S. practitioners to partner with foreign attorneys by way of ownership of law firms, without violating the USPTO Rules of Professional Conduct. However, practitioners continue…
How to Calculate Time Limitations in OED Proceedings
By Emil Ali
One of the most common questions we receive from practitioners relates to response periods. As a threshold matter, the OED operates under a strict one-year statute of limitations. As such, there is a clear reason for why a staff attorney…
USPTO Delays Patent Practitioner Registration Statements and CLE Certifications Until 2024
By Emil Ali
On June 10, 2021, the USPTO’s Office of Enrollment and Discipline will announce its intention to delay by two years its previously-published requirement for biennial mandatory “registration statements” from all registered patent attorneys and agents. The USPTO’s announcement has no…
USPTO Confirms Agency “Practitioners” May Ethically Partner With Foreign Attorneys
On May 26, 2021, the USPTO clarified its position that U.S. “practitioners”—who, by definition, include only United States-barred attorneys and USPTO registered patent attorneys and agents—may form partnerships and co-own law firms with non-U.S. attorneys without violating the USPTO’s Rules…
Inequitable Conduct: The Accusation That Could Change Your Life
By Emil Ali
Patent practitioners are keenly aware that inequitable conduct allegations are commonplace in patent litigation. A finding of inequitable conduct has numerous adverse consequences for patent owners, including the possible loss of patent rights, exposure to antitrust claims, and an award…