Prosecution LuncheonPatent

January 2015

Patent Appeals Standard of Review

• Teva v. Sandoz (US Supreme Court)– Claim Construction Review Standard

– Extrinsic Evidence- Factual conclusions underpinning claim construction rulings will be reviewed for “clear error” during an appeal

– Intrinsic Evidence - Determinations regarding evidence “intrinsic to the patent” will be reviewed de novo during an appeal

• Prosecution Discussion Point– Should you consider not defining terms in the

specification/prosecution so that the court will need to consider extrinsic evidence? (still probably “No”)

Overview

Overall Theme- Scary Ethical Issues

• Conflict Checks– Subject Matter Conflicts– Inventor Conflicts & Representation

• Failure to Supervise

• Signature Requirements

• Priority Claim

Subject Matter Conflicts

• Massachusetts Supreme Court Will Address Subject Matter Conflicts – ANNOUNCEMENT: The Justices are

soliciting amicus briefs. Whether, under Mass. R. Prof. C. 1.7, an actionable conflict of interest arose when, according to the allegations in the complaint, attorneys in different offices of the same law firm simultaneously represented the plaintiffs and a competitor in prosecuting patents on similar inventions, without informing the plaintiffs or obtaining their consent to the simultaneous representation.

Subject Matter Conflicts

• Gunn v. Minton (US Supreme Court)

– State Law Malpractice Claims for Patents Do Not Arise US Patent Laws

– No Exclusive Federal Jurisdiction

• Mass Rule 1.7(a) prohibits a lawyer from representing a client if the representation of that client will be “directly adverse” to another client, unless:

– (1) the lawyer reasonably believes the representation will not adversely affect the relationship with the other client; and

– (2) each client consents after consultation.

Subject Matter Conflicts

Subject Matter Conflicts

• Indiana Rule 1.7. Conflict of Interest: Current Clients– (a) Except as provided in paragraph (b), a lawyer shall

not represent a client if the representation involves a concurrent conflict of interest. A concurrent conflict of interest exists if: (1) the representation of one client will be directly adverse

to another client; or

(2) there is a significant risk that the representation of one or more clients will be materially limited by the lawyer's responsibilities to another client, a former client or a third person or by a personal interest of the lawyer.

Subject Matter Conflicts

• Mass. Rule 1.7(b) states a lawyer shall not represent a client if the representation of that client may be materially limited by the lawyer’s responsibilities to another client or to a third person, or by the lawyer’s own interests, unless:

– (1) the lawyer reasonably believes the representation will not be adversely affected; and

– (2) the client consents after consultation.

Subject Matter Conflicts• Indiana Rule 1.7. Conflict of Interest: Current

Clients– (b) Notwithstanding the existence of a concurrent

conflict of interest under paragraph (a), a lawyer may represent a client if: (1) the lawyer reasonably believes that the lawyer will be

able to provide competent and diligent representation to each affected client;

(2) the representation is not prohibited by law; (3) the representation does not involve the assertion of a

claim by one client against another client represented by the lawyer in the same litigation or other proceeding before a tribunal; and

(4) each affected client gives informed consent, confirmed in writing.

Subject Matter Conflicts

• Mass. State Court Granted Dismissal – Competitors Does Make Them “Adverse”

For the Purposes of Rule 1.7– Both Parties Obtained a Patent– “In the absence of any allegation that [the law

firm’s] independent professional judgment was impaired as a result of the dual representation or that it otherwise failed to do something that it would have done had it not been representing [its other client], it is difficult to see how there was a true conflict of interest as defined by Rule 1.7.”

• Mass. Supreme Court Pulled From Court of Appeals

Inventor Prosecution Conflicts

• Recent OED Case In the Matter of Radanovic– Note: Seasoned Patent Attorney (since 1967)– 2009: Patent Attorney Filed Patent Application

Named Joint Inventors- McCoy and Patel– 2011: McCoy Questions Whether Patel Contributed to

the Invention– Jan. 17, 2013: Patent Attorney Pays Issue Fee

Inventor Prosecution Conflicts• Recent OED Case In the Matter of Radanovic

– Jan. 28, 2013: McCoy Claims Patel Made No Inventive Contribution Patent Attorney Still Represents McCoy and Patel

– Feb. 2013: Patent Attorney Hires 3rd Party Patent Attorney to Investigate Report (April 8, 2013) Concludes McCoy is Sole Inventor Patel Never Provided 3rd Party Patent Attorney Evidence of

Contribution to Claimed Subject Matter

Inventor Prosecution Conflicts• Recent OED Case In the Matter of Radanovic

– Early 2013: Patent Attorney and McCoy Discuss How to Remove Patel as an Inventor on Patent No Similar Conversation with Patel

– Patent Attorney Attempted to Have Clients Agree to Binding Arbitration/Mediation as to Inventorship & Submit Certificate of Correction if Needed to Correct Inventorship Patel Balks

Inventor Prosecution Conflicts• Recent OED Case In the Matter of Radanovic

– May 3, 2013: Patent Attorney (as instructed by McCoy) Expressly Abandons Patent Application Files a Continuation Solely Naming McCoy Does Not Inform Patel

– May 8, 2013: Patel Terminates Representation– Patent Attorney Continues to Represent McCoy Until

September 2014

Inventor Prosecution Conflicts• Recent OED Case In the Matter of Radanovic• Violations

– 37 CFR 10.66(b)- a practitioner shall not continue multiple employment if the exercise of the practitioner's independent professional judgment in behalf of the client will be or is likely to be adversely affected by the practitioner's representation of another client, or if it would be likely to involve the practitioner in representing differing interests

Inventor Prosecution Conflicts• Recent OED Case In the Matter of Radanovic• Violations

– 37 CFR 11.107(a)- a practitioner shall not represent a client if the representation of one client will be directly adverse to another, or where there is a significant risk that the representation of a client will be materially limited by the practitioners' responsibilities to another

– 37 CFR 11.109(a)- a practitioner who has formerly represented a client in a matter shall not thereafter represent another person in the same or a substantially related matter in which that person's interests are materially adverse to the interests of the former client unless the former client gives informed consent, confirmed in writing

Inventor Prosecution Conflicts• Recent OED Case In the Matter of Radanovic

• Result: Settlement- Public Reprimand

– In mitigation, the OED Director has taken into consideration that Respondent has been a member of the patent bar for almost 50 years, has no disciplinary history, and had no dishonest or selfish motive.

Failure to Supervise Staff & Signature

• S-Signature- Review– 37 CFR 1.4 Spells Out the Signature

Requirement– Clearly the patent attorney must sign the

documents and not the secretary or staff.

• MPEP 502– The “must insert his or her own

signature” requirement is met by the signer directly typing his or her own signature using a keyboard. The requirement does not permit one person (e.g., a secretary) to type in the signature of a second person (e.g., a practitioner) even if the second person directs the first person to do so.

Failure to Supervise Staff & Signature• In the Matter of Druce (Experienced Patent Attorney)• Non-Lawyer Assistant (Without Attorney’s

Knowledge)– Fabricated email confirmation messages and submitted

the fabricated emails to the Office

– Affixed USPTO receipt stamps to postcards and submitted the doctored postcard receipts to the Office;

– Fabricated a United States Postal Service Express Mail label that falsely represented a patent application had been mailed to the Office on a certain date; and

– Fabricated certificates of mailing that falsely represented that papers had been mailed to the Office weeks and/or months earlier than they actually had been sent.

Failure to Supervise Staff & Signature• Non-Lawyer Assistant (Without Attorney’s Knowledge)

– Signed Patent Attorney's signature to papers filed with the Office in many patent applications

– Electronically "cut and pasted" a digital version of Patent Attorney's signature and affixed it to papers filed with the Office

– Prepared petitions signed Patent Attorney's name to the petitions and/or affixed a digital version of Patent Attorney's signature to the petitions; and filed the petitions in the Office

• Patent Attorney knew that the non-lawyer assistant had signed Respondent's name to application papers submitted to the Office in many patent applications that Patent Attorney was responsible for prosecuting on behalf of clients

Failure to Supervise Staff & Signature

• In the Matter of Druce (Experienced Patent Attorney)

• Results: (Settlement)- Done Practicing Before USPTO– Already not practicing because did not Return OED

Survey– 24 Month Suspension– Reinstatement Contingent Upon Notifying Clients – Even Reinstated- 24 Month Probation

• Mitigation:– Cooperated with OED– Alleged Lack of Knowledge

Changing Priority Claim• In the Matter of Hultquist

(experienced Patent Attorney)

Provisional Filed

Jan. 16, 2007

1 YearDeadline

Jan. 16, 2008

Filed PCT &Utility

Jan. 18, 2008

Patent AttorneyMistakenly Concludes Provisional Directed to

Prior Version of the Invention

Patent AttorneyFiles Without Claiming

Priority to the Provisional

Patent AttorneyNever Consulted Client or Explained Adverse

Consequences

Office ActionAll Claims Rejected

Oct. 31, 2012

MalpracticeSuit?

?

Changing Priority Claim• In the Matter of Hultquist

• Results: (Settlement)– Public Reprimand– Failure to Communicate with

Client • 11.104 Communication.

– (a) A practitioner shall:– (2) Reasonably consult with the client about the means by

which the client’s objectives are to be accomplished;– (3) Keep the client reasonably informed about the status

of the matter;– (b) A practitioner shall explain a matter to the extent

reasonably necessary to permit the client to make informed decisions regarding the representation.

SAWS Update• USPTO Notice About Sensitive

Application Warning System (SAWS)– The Sensitive Application Warning System

(SAWS) program is one of many practical, internal efforts that the USPTO has in place to ensure that only the highest quality patents are issued by the Agency. By bringing an additional quality assurance check to a very small number of pending patent applications, the USPTO helps ensure that those applications that could potentially be of special interest, are properly issued or properly denied. An application flagged for such a quality assurance check undergoes the same types of examination procedures as any other patent application, and is held to the same substantive patentability standards.

SAWS Update• USPTO Notice About Sensitive

Application Warning System (SAWS)

– Finally, to ensure that this important quality assurance program continues to operate at maximal efficiency, the Agency is currently reviewing the program and will work to ensure that the program does not subject applications to unnecessary delays.

– This quality assurance program applies to all pending patent applications that disclose potential SAWS subject matter, which typically represent a very small percentage of all pending applications in an average month, usually around 0.04%. http://www.uspto.gov/patents/init_events/Sen

sitive-Application-Warning-System.jsp

Prosecution LuncheonPatent

January 2015