Patent Reform Act of 2007 - Update (Part 8)
Summary: Patent Reform Act of 2007 would require courts to forward the identify of registered patent practitioners to the Patent Office if practitioners' conduct is linked to an act of inequitable conduct.
It's not everyday that patent agents and attorneys registered to practice before the U.S. Patent & Trademark Office are found to have committed inequitable conduct by a court of law, despite the fact that inequitable conduct is "indiscriminately pled in nearly every case" as a defense to patent infringement (AIPLA Reports 2007). Nevertheless, patent reformers in Congress have proposed new provisions to the Patent Act, as shown below, which require the Patent Office to consider "appropriate disciplinary action" under 35 U.S.C. § 32 where inequitable conduct is attributed to a registered patent attorney:
"ATTORNEY MISCONDUCT- Upon a finding of inequitable conduct, if there is evidence that the conduct is attributable to a person or persons authorized to practice before the Office, the court shall refer the matter to the Office for appropriate disciplinary action under section 32, and shall order the parties to preserve and make available to the Office any materials that may be relevant to the determination under section 32."
That excerpt is from Section 12 of the Patent Reform Act of 2007, H.R. 1908.
In case you're a patent practitioner and haven't read section 32 since your patent bar exam days, it says:
"The Director may, after notice and opportunity for a hearing, suspend or exclude, either generally or in any particular case, from further practice before the Patent and Trademark Office, any person, agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 2(b)(2)(D) of this title, or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant, or other person having immediate or prospective business before the Office."
Interestingly, the new provision is coupled to other provisions under the Patent Reform Act of 2007 that would ostensibly make it harder for courts to reach an evidentiary finding of inequitable conduct in the first place:
"To prove a person with a duty of disclosure to the Office intended to mislead or deceive the examiner under paragraph (1), specific facts beyond materiality of the information misrepresented or not disclosed must be proven that establish the intent of the person to mislead or deceive the examiner by the actions of the person. Facts support an intent to mislead or deceive if they show circumstances that indicate conscious or deliberate behavior on the part of the person to not disclose material information or to submit false material information in order to mislead or deceive the examiner."
Thus, the presumption of a threshold level of intent may not be available under the new Act even if it is found that the non-disclosed or misleading information is highly material. In other words, regardless of the materiality of non-disclosed or misleading information, the evidence must still establish "conscious and deliverate behavior" on the part of the actor.
Comments:
- If the inequitable conduct provisions in the Patent Reform Act of 2007 are aimed at quelling accusations of inequitable conduct during patent litigation, one has to wonder how the "Attorney Misconduct" provision will help. The problem is with over-eager litigators who perceive every submission, statement, and undisclosed prior art as an act of fraud on the patent office.
- Correct me if I'm wrong, but doesn't the PTO's Office of Enrollment and Discipline (OED) already perform the kind of disciplinary review described above, at least informally (see OED website here). No need to codify something that appears to work.
- Why is the new Section 12 entitled "Attorney Misconduct," when the language encompasses patent agents ("...a person or persons authorized to practice before the Office...")? Which is it?
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As an aside, click here for a post at Patently-O about Section 32 and the new "claims and continuations" rule.
