On January 2, 2024, the United States Patent and Trademark Office (USPTO) introduced the “Design Patent Bar,” which was an expansion designed to encourage diversity. As USPTO Director Kathi Vidal stated in the months leading up to the new offering, the design patent bar was one of the ways she was working to ensure “everybody
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Paws For Celebration: How Furry Coworkers Changed Office Life Forever
We share a special bond with dogs that has evolved over thousands of years. But it has only been in the last few years, particularly since the pandemic, since these loyal canine companions have evolved from being more than just house pets. Our hounds have nudged, wagged, sniffed, snuggled, and loved their way into our
Lawyer Bloggers Beware: “Public” Client Information Is Still Confidential
Lawyers love to talk about their client success stories and latest wins, particularly on websites, blogs, LinkedIn and other social media. This form of lawyer self-promotion is particularly pronounced in litigation matters, where the victorious lawyers and their firms routinely, and proudly, announce to the world what wonderful result they achieved for their client.
Many
The USPTO’s Breach of Trust: Practitioner Response and Reporting Requirements
The USPTO has once again disclosed confidential information of applicants—this time for patent applicants. Previously, the USPTO has disclosed confidential information of trademark applicants, including a breach of home addresses. However, many practitioners have wondered—what are their obligations with respect to the USPTO’s actions.
Duty to Communicate with Clients
When the
Pro Se Representation Before the USPTO OED: A Risky Gamble
The USPTO’s Office of Enrollment and Discipline (OED) handles investigations and disciplinary proceedings against attorneys and other practitioners who engage in misconduct before the USPTO. Navigating these complex proceedings without legal representation can be a daunting and perilous task. We have covered previously various best practices regarding what to do if you find yourself with
USPTO Turns Up Heat In War Against China Trademarks: Five Ways U.S. Attorneys Can Avoid Getting Burned By OED Discipline
This week marks five years since the USPTO implemented its Requirement of U.S. Licensed Attorney for Trademark Applicants and Registrants. Also known as the “U.S. Counsel Rule”, the USPTO on August 2, 2019 amended parts 2, 7, and 11 of Title 37 to require any non-U.S. domiciled trademark applicant, registrant, or party to a
Understanding 37 CFR 11.801: A Lesson in Not Fully Cooperating with OED
37 CFR 11.801 is a regulation that imposes a duty on practitioners to cooperate with the Office of Enrollment and Discipline (OED). The regulation is divided into two key provisions that apply to applicants for registration, and those under disciplinary/reinstatement investigation:
False Statements: The regulation first proscribes making false statements of material fact. This is
AI and Patent Law: Can Machines Uphold the Duty of Disclosure under 37 CFR 1.56?
The world of intellectual property law is buzzing with questions and commentary regarding the practicality and ethics of using artificial intelligence to aid the practice of law before the USPTO. As I addressed in a prior blog post, some of the concerns are much ado about nothing. However, one question previously left unanswered was
Decoding the USPTO’s Signature Rules
The USPTO’s reputation for being focused on signatures is growing almost as fast as pendency. However, with recent court decisions, much is left to the eye of the beholder–leaving practitioners and their clients uncertain regarding the state of the law.
Why Signatures Matter to the USPTO
37 CFR 11.18 mandates a two-part certification process whenever
An IP Lawyer’s Guide to Artificial Intelligence
In the past year, I have seen an increase in questions related to artificial intelligence. Specifically, patent and trademark lawyers have asked whether it is permissible for those lawyers engaged in practice before the USPTO to use Generative AI. While I have and continue to present on this topic multiple times, including (here),