October 2, 2023


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

5 min read

by Dennis Crouch

37 C.F.R. § 11.18(b) imposes essential obligations 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 fabric reality; and
  2. {That a} affordable inquiry was carried out to substantiate that: (i) statements haven’t 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 help, 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 assessment. Rubber stamping is just not permitted.

The PTO Simply launched a closing order in a case in opposition to Jinggao Li, operator of the Dragon Solar Legislation Agency.  In re Li, D2023-19 (PTO Order).  Li acquired a public reprimand for counting on overseas 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 current 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 current dialog with Dir. Vidal, she acknowledged her position as Undersecretary of Commerce focuses on the financial warfare between the US and China, however assured that her position as PTO director doesn’t contain discrimination in opposition to 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 underneath the circumstances, to validate the data you current?

US-China Commerce Warfare: 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 lately spoke with Dir. Vidal in regards to the potential affect of the US’s financial warfare with China on the USPTO, notably concerning actions taken in opposition to attorneys representing Chinese language corporations. Vidal acknowledged that her position 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 in opposition to 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, apart from correspondence that’s required to be signed by the applicant or celebration, 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 celebration presenting such paper, whether or not a practitioner or non-practitioner, is certifying that –

  1. All statements made therein of the celebration’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 gadget a fabric 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 understanding the identical to include any false, fictitious, or fraudulent assertion or entry, shall be topic to the penalties set forth underneath 18 U.S.C. 1001 and some other relevant felony statute, and violations of the provisions of this part could jeopardize the probative worth of the paper; and
  2. To the very best of the celebration’s information, info and perception, fashioned after an inquiry affordable underneath the circumstances,
    • i. The paper is just not being introduced for any improper objective, similar to to harass somebody or to trigger pointless delay or unnecessary 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 recent legislation;
    • iii. The allegations and different factual contentions have evidentiary help or, if particularly so recognized, are more likely to have evidentiary help 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 means 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 are usually not restricted to, any mixture of –

  1. Putting 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 may be topic to disciplinary motion.

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