September 29, 2023


Learn Business From Experience

Significance of Due Diligence for Patent Practitioners and the US/China Financial Struggle

5 min read

by Dennis Crouch

37 C.F.R. § 11.18(b) imposes essential tasks on patent candidates, attorneys, and brokers. Paperwork submitted to the USPTO implicitly certify that:

  1. Statements made are true or are are believed to be true (primarily based upon info and perception) and don’t embrace any try to hide a cloth reality; and
  2. {That a} affordable inquiry was carried out to substantiate that: (i) statements don’t have any improper functions, (ii) authorized contentions are supported by present legislation or legitimate arguments for change, (iii) allegations and factual contentions have or are more likely to have evidentiary assist, and (iv) denials of factual contentions are primarily based on proof or an inexpensive lack of knowledge or perception.

Latest USPTO disciplinary instances underscore the seriousness of those obligations. Examples embrace submitting a micro entity standing request with out correct investigation and submitting an info disclosure assertion (IDS) by a non-practitioner with out practitioner overview. Rubber stamping shouldn’t be permitted.

The PTO Simply launched a ultimate order in a case towards Jinggao Li, operator of the Dragon Solar Legislation Agency.  In re Li, D2023-19 (PTO Order).  Li obtained a public reprimand for counting on international counsel’s steerage on micro entity standing, leading to unwarranted standing in 19 of 27 instances.  Equally, in In re Wu, D2023-24 (PTO Order), US patent agent Qianqian Wu was reprimanded for submitting 20+ functions with micro entity standing, regardless of the income-level qualification permitting solely 4 functions.  She additionally reported relying upon shopper’s statements concerning their qualification for micro entity standing.  Comparable latest instances embrace In re Tung-Yun McNally, D2023-22 (PTO Order); and In re Chew, D2023-08 (PTO Order).

It’s price noting that these instances contain practitioners whose names with Chinese language origins and Chinese language entities as shoppers. In a latest dialog with Dir. Vidal, she acknowledged her function as Undersecretary of Commerce focuses on the financial conflict between the US and China, however assured that her function as PTO director doesn’t contain discrimination towards China-originated innovation. She defined that the company didn’t goal Chinese language fraudulent exercise, however acknowledged that a lot of the present fraud and blatant misconduct earlier than the PTO originates from China.

As a practitioner, ask your self: Are you conducting inquiries, affordable below the circumstances, to validate the data you current?

US-China Commerce Struggle: Upon reviewing these instances, it’s possible you’ll discover that the attorneys concerned have ethnic Chinese language backgrounds, and the shoppers seem like Chinese language entities (on info and perception). I just lately spoke with Dir. Vidal concerning the potential affect of the US’s financial conflict with China on the USPTO, significantly concerning actions taken towards attorneys representing Chinese language corporations. Vidal acknowledged that her function as Undersecretary of Commerce and White Home advisor includes addressing the antagonistic battle. Nonetheless, she reassured me that her place as PTO Director doesn’t embrace discrimination towards improvements originating from China, or their attorneys. Vidal clarified that the company didn’t particularly goal Chinese language fraudulent exercise, however has noticed that a lot of the present fraud and blatant misconduct throughout the PTO could be traced again to China.

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11.18 Signature and certificates for correspondence filed within the Workplace.

(a) For all paperwork filed within the Workplace in patent, trademark, and different non-patent issues, and all paperwork filed with a listening to officer in a disciplinary continuing, aside from correspondence that’s required to be signed by the applicant or get together, every bit of correspondence filed by a practitioner within the Workplace should bear a signature, personally signed or inserted by such practitioner, in compliance with § 1.4(d) or § 2.193(a) of this chapter.

(b) By presenting to the Workplace or listening to officer in a disciplinary continuing (whether or not by signing, submitting, submitting, or later advocating) any paper, the get together presenting such paper, whether or not a practitioner or non-practitioner, is certifying that –

  1. All statements made therein of the get together’s personal information are true, all statements made therein on info and perception are believed to be true, and all statements made therein are made with the information that whoever, in any matter throughout the jurisdiction of the Workplace, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or system a cloth reality, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or makes use of any false writing or doc figuring out the identical to include any false, fictitious, or fraudulent assertion or entry, shall be topic to the penalties set forth below 18 U.S.C. 1001 and every other relevant legal statute, and violations of the provisions of this part could jeopardize the probative worth of the paper; and
  2. To the perfect of the get together’s information, info and perception, fashioned after an inquiry affordable below the circumstances,
    • i. The paper shouldn’t be being offered for any improper goal, corresponding to to harass somebody or to trigger pointless delay or pointless enhance in the price of any continuing earlier than the Workplace;
    • ii. The opposite authorized contentions therein are warranted by present legislation or by a nonfrivolous argument for the extension, modification, or reversal of present legislation or the institution of latest legislation;
    • iii. The allegations and different factual contentions have evidentiary assist or, if particularly so recognized, are more likely to have evidentiary assist after an inexpensive alternative for additional investigation or discovery; and
    • iv. The denials of factual contentions are warranted on the proof, or if particularly so recognized, are fairly primarily based on a lack of knowledge or perception.

(c) Violations of any of paragraphs (b)(2)(i) by way of (iv) of this part are, after discover and affordable alternative to reply, topic to such sanctions or actions as deemed applicable by the USPTO Director, which can embrace, however usually are not restricted to, any mixture of –

  1. Placing the offending paper;
  2. Referring a practitioner’s conduct to the Director of the Workplace of Enrollment and Self-discipline for applicable motion;
  3. Precluding a celebration or practitioner from submitting a paper, or presenting or contesting a problem;
  4. Affecting the burden given to the offending paper; or
  5. Terminating the proceedings within the Workplace.

(d) Any practitioner violating the provisions of this part can also be topic to disciplinary motion.

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