Welcomes You to Ethical Jeopardy 200 300 400 500 100 200 300 400 500 100 200 300 400 500 100 200 300...
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- Slide 1
- Slide 2
- Welcomes You to Ethical Jeopardy
- Slide 3
- 200 300 400 500 100 200 300 400 500 100 200 300 400 500 100 200
300 400 500 100 200 300 400 500 100 PTO Inequitable Conduct
LitigationAIAChance Stradley Ronon Stevens & Young, LLP
- Slide 4
- 100. Bike-X sued Attorney LeMonde of Dewey, Cheatum, and How
over an alleged conflict of interest with Cyclonics. During the
trial, Bike-X testified that it abandoned several applications at
the recommendation of LeMonde who insisted that they were stupid
and not patentable. Bike-X also testified that its patent portfolio
included a memorandum disclosing a body-connected bicycle having
only a rear brake assembly and no front brake assembly. An
application was not filed for the subject matter. Bike- X also
testified that its rear brake assembly design was incorporated into
the design of the 657 patent body-connected bicycle. If all of the
averments are true, describe two PTO Rules LeMonde probably has
violated.
- Slide 5
- 100. 10.23 Misconduct; 10.57 Preservation of confidences and
secrets of a client; 10:84 Representing a client zealously; 10:85
Representing a client within the bounds of the law
- Slide 6
- 200. On grant of the 657 patent, Cyclonics gave Attorney
LeMonde, in addition to the previously agreed to prosecution fee, a
$100,000 bonus and 1,000 shares of stock in Cyclonics for his work.
Do these gifts violate any PTO rules?
- Slide 7
- 200:Probably not. Rule 10.64
- Slide 8
- 300.After celebrating the grant of the 657 patent, a buzzed
LeMonde rode his body-connected bicycle into BVM Church and passed
out on the altar during mass. Sister Elsie died from shock at
witnessing the event. LeMonde was convicted of DUI, disorderly
conduct, and criminal mischief.. He was acquitted of recklessly
causing catastrophe. Which of the above offenses must be reported
to OED?
- Slide 9
- 300. DUI
- Slide 10
- 400. Trenary is a named inventor on Cyclonics 657 patent and
has developed a cult following after his commercial appearance
during the Olympics with the body-connected bike. The commercial
prominently features the 657 patent and he recommends that anyone
wanting a patent should contact Dewey, Cheatum, and How. Cyclonics
receives a 0.25% discount on its legal services for each new client
the firm receives as a result of the commercial. Is this a proper
arrangement?
- Slide 11
- 400. No. Rule 10.32(b)
- Slide 12
- 500. As a gesture of good will, Cyclonics has offered to pay
the prosecution costs for the next patent that Bike-X applies for.
May Dewey, Cheatum, and How accept such fees on behalf of
Bike-X?
- Slide 13
- 500. Yes, provided that Bike-X gives informed consent. Rule
10.68.
- Slide 14
- 100. Inequitable conduct requires an intent to do this to the
USPTO.
- Slide 15
- 100. What is deceive?
- Slide 16
- 200. A finding of inequitable conduct can render a patent
this.
- Slide 17
- 200. What is unenforcable?
- Slide 18
- 300. Inequitable conduct must be pled with this.
- Slide 19
- 300. What is particularity?
- Slide 20
- 400. Inequitable conduct requires affirmative misrepresentation
of this type of fact.
- Slide 21
- 400. What is material?
- Slide 22
- 500. Inequitable Conduct must be proven with this type of
evidence.
- Slide 23
- 500. What is clear and convincing evidence?
- Slide 24
- 100.Spokes is being represented by Attorney LeMonde in
litigation brought by Bike-X. During cross examination, Spokes
makes a statement that Attorney LeMonde knows to be false. Attorney
LeMonde immediately discloses her knowledge of the false statement
and all relevant information to the tribunal. Has Attorney LeMonde
acted properly?
- Slide 25
- 100. No. Attorney should have consulted with client
confidentially and advised him of the lawyer's duty of candor to
the tribunal under Rule 3.3.
- Slide 26
- 200. Attorney LeMonde is arguing a preliminary injunction
motion in a patent case in U.S. District Court. Attorney LeMonde
knows a Federal Circuit case that would dispositively resolve the
case against Bike-X. The opponents have omitted that case from
their brief. Should Attorney LeMonde bring the case to the courts
attention?
- Slide 27
- 200. Yes. Rule 3.3
- Slide 28
- 300. TRUE or FALSE? It is frivolous to file an action or a
defense in a case when the facts of the case have not been fully
substantiated.
- Slide 29
- 300. False. Pa.R.C.P. 3.1 Comment 2.
- Slide 30
- 400. An executive at Bike-X expects that the company will be
sued for infringement in the near future. However, a complaint has
not yet been served. May the attorney advise the executive to
instruct employees of the company to perform their yearly clean out
of their files?
- Slide 31
- 400. No. Pa.R.P.C. 3.4(a).
- Slide 32
- 500. Ladies and gentlemen of the jury, if you look at the facts
of the infringement, you will surely conclude, as I did during my
initial review of this case, that the defendant not only has
infringed my clients patents, but has willfully infringed them. Is
this statement by an attorney to the jury within the bounds of
ethics?
- Slide 33
- 500. No. Pa.R.P.C. Rule 3.4(c).
- Slide 34
- 100. Inventor Spokes insists that he qualifies as a micro
entity under the AIA because he is a solo inventor and this is his
first patent application. You are aware that he makes $200,000 per
year. Can you ethically file his patent application claiming micro
entity status?
- Slide 35
- 100. No. You are aware he does not qualify for micro entity
status.
- Slide 36
- 200.True or False: The AIA amended 35 U.S.C. 32 to require
disciplinary proceedings to be commenced not later than the earlier
of: 10 years after the misconduct occurred, or one year from when
the misconduct was made known to the USPTO, as prescribed in the
regulations governing disciplinary proceedings.
- Slide 37
- 200. True.
- Slide 38
- 300. Under the new oath and declaration required to be signed
by the inventors under the AIA, reference to this type of intent
has been removed?
- Slide 39
- 300. What is deceptive intent?
- Slide 40
- 400.Inventor Spokes compiled a number of references when
developing the idea for the body-connected bicycle and provided
them to Attorney LeMonde. Attorney LeMonde inadvertently omits
several of the references when filing an Information Disclosure
Statement. After the patent issues, Attorney LeMonde files for
Supplemental Examination to cleanse the patent. Can the Examiner
refer the Attorney LeMonde to the Office of Enrollment and
Discipline for failing to comply with the duty to disclose during
the initial prosecution?
- Slide 41
- 400. Yes. An investigation may be initiated pursuant to
information from any source suggesting possible grounds for
discipline. 37 CFR 11.22(a).
- Slide 42
- 500. Is it ethical to disregard this requirement of
patentability even though it is not sufficient to invalidate a
patent under the AIA?
- Slide 43
- 500. What is best mode?
- Slide 44
- 100.A representative from Bike-X storms into your office after
learning of Cyclonics new patent. He demands that you immediately
hold a press conference naming each of Cyclonics officers and
characterizing them as greedy corporate pigs bent on stealing
Bike-X's products and customers. Can you hold such a
conference?
- Slide 45
- 100. No. Rule 3.6
- Slide 46
- 200. Attorney LeMonde spends most nights with best friend, Lee
Discoverer who is always inventing some new gizmo or gadget. Ten
years later Lee has made millions on one of his inventions but is
facing an infringement suit where it is alleged that he falsified
records to prove his dates of invention. Lee wants Attorney LeMonde
to defend him because he was there when he first made the
invention. Can Attorney LeMonde take the case?
- Slide 47
- 200. No. Under Rule 3.7
- Slide 48
- 300.Yes or No. Can Attorney LeMonde, a licensed lawyer three
years out of an accredited law school and who during that time has
engaged exclusively in the preparation and prosecution of patent
applications before the PTO avoid appointment by a court to
represent a person in a criminal matter solely because of the
nature of his practice and experience?
- Slide 49
- 300. No. Pa.R.P.C. 6.2.
- Slide 50
- 400. Attorney LeMonde has inside information relating to the
development of Cyclonics roller assemblies, which were not provided
in the 657 patent. A reporter contacts Attorney LeMonde indicating
that she will be running a story on the cutting edge design. Can
Attorney LeMonde provide her with the details of the roller
assemblies?
- Slide 51
- 400. No. Rule 1.6
- Slide 52
- 500. Spokes wishes to apply for a use- based trademark
registration on Cyclonics in connection with their bicycle design.
Spokes tells you that he has receive several phone call for a
company by the name of Cyclonics but that when he asked them what
Cyclonics does, he was told by the callers that they manufacture
vacuum cleaners. Spokes has been unable to locate the company. Can
you file the trademark application?
- Slide 53
- 500. Yes. Unrelated goods
- Slide 54
- Double Jeopardy
- Slide 55
- 400 600 800 1000 200 400 600 800 1000 200 400 600 800 1000 200
400 600 800 1000 200 400 600 800 1000 200 Duty of Disclosure
Conflicts New PTO Ethics Rules Fees Chance Stradley Ronon Stevens
& Young, LLP
- Slide 56
- 200. The duty to disclose covers all information that is
material to this issue.
- Slide 57
- 200. What is patentability?
- Slide 58
- 400. The duty to disclose exists until an application becomes
one of these.
- Slide 59
- 400. What is abandoned or issues as a patent?
- Slide 60
- 600. The USPTO recommends disclosing relevant art using this
under 37 CFR 1.97.
- Slide 61
- 600. What is Information Disclosure Statement?
- Slide 62
- 800. Information is this if it makes a prima facie case of
unpatentability.
- Slide 63
- 800. What is material?
- Slide 64
- 1000. The duty to disclose applies to inventors, agents,
attorneys, and anyone else who has this level of involvement in
preparation or prosecution.
- Slide 65
- 1000. What is substantive?
- Slide 66
- 200. Was it proper for Dewey, Cheatum, and How to represent
both Bike-X and Cyclonics?
- Slide 67
- 200. Probably Not. Rule 10.66.
- Slide 68
- 400. During the prosecution of the 657 patent Attorney G.
LeMonde filed a response with a three-month extension using Bike-X
funds because Cyclonics was in a poor cash flow situation.
Immediately after grant, Investor provided cash to Cyclonics and
LeMonde re-placed the Bike-X funds. LeMonde kept meticulous records
of the transfer so that no Bike-X funds were lost. Bike-X
subsequently disengaged from LeMonde and received all of its
deposited funds. Were these transactions acceptable?
- Slide 69
- 400. No. This would be attorney misconduct and violate, at
least, Rule 10.23(c)(3) and Rule 10.112(b).
- Slide 70
- 600. Trenary, inventor of the Cyclonics 657 patent, has
developed a novel aerodynamically shaped water bottle that reduces
airflow around the body while bicycling. He seeks representation
from Dewey, Cheatum, and How to file and prosecute the patent. May
Dewey, Cheatum, and How file and prosecute Trenarys application
before the USPTO?
- Slide 71
- 600. Likely Yes. There is a significant difference between the
technologies of the 657 patent (body-connected bike) and the water
bottle.
- Slide 72
- 800. Bike-X realizes that Cyclonics is a new start-up firm with
poor cash flow. Bike-X proposes to enlist Attorney Hubb to
challenge the validity of the 657 patent on the grounds that the
invention was disclosed in a 1955 Bicycle Forever article authored
by Spokes, a named inventor on the 657 patent. The rare edition of
Bicycle Forever was supplied by Bike-X. Hubb is somewhat skeptical
about the authenticity of the magazine and article because Spokes
is 31 years old. May Hubb decline to represent Bike-X?
- Slide 73
- 800. Yes. If Hubb reasonably believes that Bike-X wants to
conduct a fraudulent proceeding, he has no duty to support the
fraud.
- Slide 74
- 1000. Bike-X desires to license the 657 patent from Cyclonics.
Cyclonics requests that Dewey, Cheatum, and How draft the agreement
and represent them in negotiations with Bike-X. May Dewey, Cheatum,
and How represent Cyclonics?
- Slide 75
- 1000. Probably not. Dewey, Cheatum, and How has represented
both clients, who have directly adverse interest in this
transaction.
- Slide 76
- 200. True or False: Under the new USPTO rules of professional
conduct, a practitioner shall provide competent representation to a
client. Competent representation requires the legal, scientific,
and technical knowledge, skill, thoroughness and preparation
reasonably necessary for the representation.
- Slide 77
- 200. True. 11.101
- Slide 78
- 400. True or False: Under the new USPTO rules of professional
conduct, a registered practitioner shall not seek to influence a
judge, hearing officer, administrative law judge, administrative
patent judge, administrative trademark judge, juror, prospective
juror, employee or officer of the Office, or other official by
means prohibited by law.
- Slide 79
- 400. True 11.305
- Slide 80
- 600. True or False: Under the new USPTO rules of professional
conduct, a practitioner who knows that another practitioner has
committed a violation of the USPTO Rules of Professional Conduct
that raises any question as to that practitioners honesty,
trustworthiness or fitness as a practitioner in other respects,
shall inform the OED Director and any other appropriate
professional authority.
- Slide 81
- 600. False. 11.803 Must be a substantial question as to that
practitioners honesty, trustworthiness or fitness as a practitioner
in other respects
- Slide 82
- 800. True or False: Under the new USPTO rules of professional
conduct, fraud or fraudulent means conduct that involves a
misrepresentation of fact made with intent to deceive or a state of
mind so reckless respecting consequences as to be the equivalent of
intent, where there is justifiable reliance on the
misrepresentation by the party deceived, inducing the party to act
thereon, and where there is or is not an injury to the party
deceived resulting from reliance on the misrepresentation.
- Slide 83
- 800. False. 37 CFR 11.1. Must be misrepresentation of material
fact and there must be an injury.
- Slide 84
- 1000. True or False: Under the new USPTO rules of professional
conduct, a registered patent agent shall not hold himself or
herself out as being qualified or authorized to practice before the
Office in trademark matters or before a court.
- Slide 85
- 1000. True 11.704
- Slide 86
- 200. TRUE or FALSE. One of the factors considered when
assessing whether a fee is excessive is the amount involved and the
results obtained.
- Slide 87
- 200. True. Pa.R.P.C. 1.5(a)(5).
- Slide 88
- 400. May outside counsel take an interest in a patent as part
of his or her fee for preparing and prosecuting the patent
application?
- Slide 89
- 400. Yes. 37 C.F.R. 10.64(a)(3).
- Slide 90
- 600. You are approached by Mr. Tandem who tells you that an
action has been brought by Bike-X asking for a declaratory judgment
that the Cyclonics patent does not apply to roller assemblies in a
bicycle. Can you ask for a 10% interest in the patent as a retainer
to be paid?
- Slide 91
- 600. No. See Pa.R.P.C. 1.8(i).
- Slide 92
- 800. Yes or No. Mr. Spokes brings his step-daughter to Attorney
LeMonde so that she can handle copyright registrations and a
license to a publisher. Mr. Spokes gives Attorney LeMonde a
retainer of $2,000. Ten weeks later he calls to tell Attorney
LeMonde that he does not like the license agreement. He requests a
major change in the license agreement before it is negotiated
further. Should Attorney LeMonde make the suggested change?
- Slide 93
- 800. No. Pa.R.P.C. 1.8(f)(2).
- Slide 94
- 1000. May outside counsel contract with a client for a
contingent fee based on whether the client obtains a patent from
the Patent and Trademark Office?
- Slide 95
- 1000. Yes. 37 C.F.R. 10.64(a)(2).
- Slide 96
- 200. Attorney LeMonde of Dewey, Cheatum, and How received a
disclosure from Cyclonics began prosecuting a second patent
application for an improved body-connected bike. The subject matter
seemed vaguely familiar. On reviewing his Bike-X files he
discovered that the Examples in the Cyclonics application were
identical word-for- word with the Bike-X examples in his files. On
confronting Cyclonics, Cyclonics insisted that it had developed the
subject matter independently of Bike-X and was not aware of any
disclosure by Bike-X. May LeMonde withdraw from representing
Cyclonics?
- Slide 97
- 200. Yes, under Rule 10.85(b)(1) if LeMonde believes that
Cyclonics has perpetrated a fraud on the tribunal
- Slide 98
- 400. Attorney LeMonde of Dewey, Cheatum, and How just learned
that Schwinn is in negotiations with Cyclonics to license and sell
the body-connected bike as part of its product line. He tells his
cousin, Maddoff, about the discussions. Maddoff decides to purchase
a few thousand shares of Cyclonics stock. May LeMonde buy some of
Maddoffs shares?
- Slide 99
- 400. No. Rule 10.57(b)
- Slide 100
- 600. Joint inventor Spokes believes that LeMonde is incompetent
because he confused the disc brake with the wheel in the
application. Spokes and joint inventor Trenary disagree about the
competence of LeMonde. Spokes independently files a petition to
revoke LeMondes Power of Attorney and appoints Attorney Smart for
the new Power of Attorney. Will the USPTO accept the petition?
- Slide 101
- 600. Probably yes. Provided that Spokes has provided sufficient
cause, there is no need to have all inventors revoke the Power of
Attorney. See Rule 1.36(a)
- Slide 102
- 800. Attorney LeMonde has seen a slump in business and consults
with Mary Marketeer for help. LeMonde has secured patents for
Cyclonics, Trek, and Cannondale. He has secure trademark
registrations for USA Cycling (of which B Obama is a member) and
the International Cycling Law Association. Marketeer strongly
encourages LeMonde to include references to these facts and
high-profile clients in his website she can even provide a picture
of Obama on a bike as background. Should LeMonde follow her
suggestions?
- Slide 103
- 800. No. Under Rule 10.31(a) and (b) a practitioner shall not
mislead the public or use the name of an individual in the service
of the U.S. in advertising.
- Slide 104
- 1000. Attorney LeMonde and Cyclonics interviewed Examiner prior
to the grant of the 657 patent. They demonstrated the body-
connected bike to the Examiner and had him ride it. After the
interview, LeMonde ask the Examiner to keep the bike as it would
simplify the security clearance for their return airplane trip.
They left the bike and later told the Examiner the bike was his to
keep. Has LeMonde committed misconduct?
- Slide 105
- 1000. Yes. Rule 10.23(c)(4) provides that a practitioner may
not attempt to influence an examiner by improperly bestowing a
gift, favor, or thing of value.
- Slide 106
- Final Jeopardy
- Slide 107
- Cyclonics hires the Pedal Law Firm to litigate a licensing
dispute with Bike-X. Cyclonics claims that Bike-X has not been
paying enough in royalties on each of the bicycles that it has been
selling under the Agreement. The amount in question is $15,000.
Pedal Law Firm agrees to represent Cyclonics under a billable hour
fee structure arrangement. Pedal Law Firm assigns three partner
level attorneys and six associates to the matter. After minimal
discovery, the parties are not able to agree on a settlement
figure. The case proceeds to a bench trial before Judge Brief,
which lasts one day. Cyclonics is awarded $15,000 in damages under
the Agreement. Pedal Law Firm submits a bill for attorney's fees
for $75,000. Has Pedal Law Firm acted ethically and in accordance
with the Rules of Professional Conduct?
- Slide 108
- No. Rule 1.5 governs Attorney's Fees. In this fact pattern,
there was no indication that the questions involved were
particularity novel, difficult, nor required the talents of 9
attorneys. Additionally, 1.5(a)(5) states that the fee must be
considered in relation to the amount in question. Courts have held
that in a contract action, the relationship between the fee
requested and the damages recovered is a factor to be considered
because proportionality is integral in order to meet the reasonable
expectations of the parties.