What You Need to Know, But Do Not Know About USPTO Discipline. Cameron Weiffenbach AIPLA Spring Meeting May 3, 2013

Transcription

1 What You Need to Know, But Do Not Know About USPTO Discipline Cameron Weiffenbach AIPLA Spring Meeting May 3, 2013

2 Discipline Statistical Data Year Complaints Filed Published Decisions

3 Discipline Statistical Data Year Complaints Filed Published Decisions Disciplinary decisions can be found in the OED FOIA room at http// e-foia.uspto.gov/foia/oedreadingroom.jsp. 3

4 Reporting Requirements Rule 11.11(a): Notify OED of change of postal address, address and/ or business phone number within 30 days of change. Rule 11.11(c): If employed by USPTO, Notify OED on first day of employment. Rule 24: Notify OED of disciplinary action by another jurisdiction within 30 days of being disciplined. Rule 25: Notify OED of being convicted of a crime either in the United States or abroad within 30 days of the conviction. 4

5 AIA Amended 35 U.S.C. 32 [A disciplinary] proceeding under this section shall be commenced not later than the earlier of either the date that is 10 years after the date on which the misconduct forming the basis for the proceeding occurred, or 1 year after the date on which the misconduct forming the basis for the proceeding is made known to an officer or employee of the Office as prescribed in the regulations established under [35 U.S.C. 2(b)(2) (D)] [emphasis added]. Five year rule statutory bar under 28 U.S.C no longer viable. New tolling statute Office can initiate disciplinary action within 10 years after the conduct occurred or within one year after the Office becomes aware of the misconduct. Tolling period can be waived by tolling agreement between OED and the practitioner. 5

6 Sanctions Exclusion Exclusion Automatic 5 year suspension. Exclusion by Consent - Resignation Suspension period less than 5 years. Stayed Suspension period could include actual suspension. Public Reprimand while current Office policy is that no priviate reprimands are invoked, 37 C.F.R discusses the handling of private reprimands. Warning (37 C.F.R ) based on 5 U.S.C. 558(c) where conduct does not involve willfulness. 6

7 Rule Requirements Within 30 days after date of Final Order File notice of withdrawal in each pending patent and trademark application and proceeding and notice to all opposing counsel in proceeding pending before the USPTO. Notice of discipline to all clients having business before the Office and to all jurisdictions/ agencies where admitted to practice; each notice must include a copy of Final Order and be mailed by certified mail, return receipt requested. Deliver to all clients papers and other property to which the client is entitled to as well as all unearned funds and government fees paid in advance. Remove all advertising suggesting authorization to practice before the USPTO. Within 45 days after Final Order, file affidavit Copy of each notice, address of each client and return receipt for each notice. Disclose account number for each client/trust account; describe disposition of all client funds and provide proof of proper distribution and closing accounts. Precise steps taken to remove all advertising. 7

8 Rule Reinstatement Reinstatement is not automatic. Petition for Reinstatement under Rule must be filed. Petition cannot be filed before end of period of suspension or exclusion. Prove compliance with all requirements of Rule 58 for the full period of suspension or exclusion. Prove practitioner has good moral character and repute, competency and learning in law required for admission to practice before the Office. Prove resumption of practice before the Office will not be detrimental to the administration of justice or subversive to the public interest. In addition to the petition fee, the petitioner/practitioner must pay costs of a disciplinary proceeding before granting of the petition for reinstatement. The Order for reinstatement by the USPTO Director is published in the Official Gazette. 8