Prosecution Luncheon
Patent
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
Subject Matter Conflicts
• 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
• 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 Year
Deadline
Patent Attorney
Mistakenly Concludes
Provisional Directed to
Prior Version of the
Malpractice
Filed PCT &
Office Action
Invention
Suit?
Utility
All Claims Rejected
Jan. 16, 2008 Jan. 18, 2008
Patent Attorney
Never Consulted Client
or Explained Adverse
Consequences
?
Oct. 31, 2012
Patent Attorney
Files Without Claiming
Priority to the
Provisional
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 Luncheon
Patent
January 2015