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?
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.
