A New Frontier in Patent Bar Ethics?

AuthorGeorge W. Jordan III
PositionGeorge W. Jordan III is chair of the ABA Section of Intellectual Property Law. As senior counsel at Norton Rose Fulbright in Houston, Texas, he specializes in patent litigation and investigations with an emphasis on wireless, mobile, and e-commerce technologies, as well as licensing and due diligence in all areas of intellectual property law. ...
Pages3-63
Published in Landslide® magazine, Volume 12, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Perspective
We stand today on the edge of a New Frontier.
—John F. Kennedy
P
resident Kennedy’s words in his 1960 presidential nomina-
tion acceptance speech may well apply to the future of the
patent bar. The U.S. Patent and Trademark Ofce (USPTO)
this summer issued a notice of rulemaking proposing an annual
patent practitioner fee,1 and our Section in response provided
comments thanks to a task force led by Rivka Monheit.
This fee concept is not new; the USPTO proposed the
same sort of fee in December 2003.2 At that time, the proposed
$100 registered practitioner fee corresponded to the cost of the
USPTO’s disciplinary and roster maintenance programs for active
registered practitioners. Five years later, the nal rule assessing a
$118 “annual practitioner maintenance fee” for active registered
practitioners described the fee increase as a “reection of changes
in the consumer price index and stafng adjustments from the
time the rule was proposed.”3 Though on the books, the fee was
not acted upon; it was increased to $120 in September 2012,4 and
was eventually taken off the books in April 2013.5 The USPTO
cited 35 U.S.C. § 2(b)(2)(D) and § 41(d) as legal bases for the
practitioner fee.6 Section 2(b)(2)(D) authorizes the establishment
of regulations that govern the “recognition and conduct” of attor-
neys and agents and require them to “show that they are of good
moral character and reputation and are possessed of the necessary
qualications” to represent parties before the Ofce. Addressing
fees more directly, § 41(d)(2)(A) generally authorizes the Direc-
tor to establish fees for patent-related processing and services to
recover the “estimated average cost to the Ofce.” The Section’s
comments accordingly reect that the amount of an annual patent
practitioner fee should be carefully assessed.
The USPTO has described its proposed annual patent prac-
titioner fee as intended to shift the costs of its disciplinary and
roster maintenance programs from applicants, or the public in
general, to practitioners.7 That position might nd support in
the ABA Model Rules for Lawyer Disciplinary Enforcement.
For example, Rule 8 provides that “lawyer discipline” should
be “funded by fees assessed on lawyers admitted to practice in
the state,” and an annual fee “shall be used to defray the costs
of disciplinary administration and enforcement [and] lawyer
regulation.”8 Therefore, the patent bar might hesitate to merely
dismiss the concept of an annual patent practitioner fee.
Patent Bar Ethics Exam?
Before again heading down the path of introducing an annual patent
practitioner fee, perhaps as stated by Benjamin Franklin “an ounce
of prevention is worth a pound of cure.” In particular, the USPTO
could proactively introduce a patent bar ethics exam instead.
Registered patent practitioners are bound by the USPTO
Rules of Professional Conduct.9 But how many of them truly
understand these rules and can comfortably apply them?
While the rules “conform” to the ABA Model Rules of Pro-
fessional Conduct, there are differences—so much so that the
USPTO provides a comparison chart.10
Just as we require one to pass a driving test before being allowed
to get behind the wheel of a car, should we not require practitio-
ners to pass an exam on USPTO ethics rules before allowing them
to represent parties before the Ofce? The fact that attorneys must
pass an ethics exam required by a state bar, such as the Multistate
Professional Responsibility Exam, to be admitted to practice in that
state seems a poor reason to rule out a USPTO-specic ethics exam
that could help protect the public and the profession from registered
practitioners—attorneys and agents alike—who may be ill-
equipped to apply the USPTO ethics rules. Even if we could assume
that state bar ethics exams sufciently prepare registered attorney
applicants to apply the Ofce’s ethics rules, is not the lack of eth-
ics training to provide registered agent applicants reason enough
to introduce a USPTO-specic ethics exam? That is a key ques-
tion for a potential new frontier. Michael E. McCabe Jr., who chairs
the Section’s Ethics and Professional Responsibility Committee, in
2017 stressed the very problem of there being no formal ethics train-
ing for registered agents.11 To McCabe’s point that mere knowledge
of the ethics rules is not enough, a patent bar ethics exam should be
designed to test that a prospective registrant understands and can
correctly apply the rules.
Prior to charging all patent practitioners to cover the cost of
investigating and disciplining those practitioners at risk of exit-
ing the back door of the profession, it might be worth trying a
USPTO-specic ethics exam to better protect the front door of the
profession. The Ofce of Enrollment and Discipline could even
offer a course or instructions on preparing for the exam. Because
the public cannot easily discern which practitioners have a solid
grasp of these ethics rules, it is better to be safe than sorry.
A Helping Hand?
The July notice of rulemaking indicated that the proposed pat-
ent practitioner fee would help fund the USPTO Patent Pro Bono
Program.12 This program matches volunteer patent profession-
als with under-resourced inventors and small businesses for free
legal assistance in preparing and ling patent applications.13 The
ABA Section of Intellectual Property Law has been a strong sup-
porter of the program since its inception in 2011. The Section’s
Pro Bono Committee has taken on active committee roles at the
state and national levels and has worked closely with the USPTO
George W. Jordan III is chair of the ABA Section of Intellectual
Property Law. As senior counsel at Norton Rose Fulbright in Houston,
Texas, he specializes in patent litigation and investigations with an
emphasis on wireless, mobile, and e-commerce technologies, as well as
licensing and due diligence in all areas of intellectual property law. He
can be reached at george.jordan@nortonrosefulbright.com.
By George W. Jordan III
A New Frontier in Patent Bar Ethics?
Continued on page 61
Volume 12 • Number 2 • November/December 2019
Published in Landslide® magazine, Volume 12, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
6 Patenting Nature
Examine the rationales for limiting patent eligibility in the life sciences, the
problems entailed, and proposals for expanding the scope of statutory subject
matter eligibility.
By Rochelle C. Dreyfuss
10 IP Strategies for the Red-Hot Digital
Health Industry
Explore opportunities and challenges for protecting digital health technologies,
including patent eligibility challenges, use of trade secrets, and sustaining
product life cycles.
By Mi Zhou, Mark Russell Sperling, Justin T. Fleischacker, and Preston K. Ratliff II
Columns
1 Perspective
A New Frontier in Patent
Bar Ethics?
By George W. Jordan III
5 Proles in IP Law
Li-Hsien (Lily) Rin-Laures
56 Decisions in Brief
By John C. Gatz
Departments
®
®
Editorial Policy: Landslide® magazine provides
articles on contemporary issues in intellectual
property law for practicing attorneys and others
interested in the subject matter. The materials
contained herein represent the opinions of
the authors and should not be construed to be
those of either the American Bar Association,
the Magazine Editorial Board, or the ABA
Section of Intellectual Property Law (ABA-
IPL) unless adopted pursuant to the bylaws of
the Association. Nothing contained herein is to
be considered as the rendering of legal advice
for specic cases, and readers are responsible
for obtaining such advice from their own legal
counsel. These materials and any forms and
agreements herein are intended for educational
and informational purposes only. Landslide
magazine advertisers are responsible for the
content of their ads as printed. The ABA, ABA-
IPL, and its Magazine Editorial Board are not
responsible for the accuracy of ad content.
Pg. 10
32 Why Open Source Licenses with
a Commons Clause May Become
Less Common
Consider the Commons Clause and the competing policy
issues that can arise when deciding whether to modify existing
open source licenses.
By Nicholas D. Petrella and Stephen E. Kabakoff
36 The Changing Landscape of
Copyright Infringement and
Sovereign Immunity
Analyze the law of sovereign immunity waivers for copyright
cases, including constitutional challenges to the Copyright
Remedy Clarication Act and contractual waivers of immunity.
By Cayce Myers
42 Reverse Confusion: A Trademark
Doctrine in Decline or on the Rise?
Review the history of reverse confusion, which occurs when a
company ignores the trademark rights of a smaller competitor,
causing confusion as to the source of the rst user’s goods.
By Robert D. Litowitz
48 The Art of Telling IP Stories
Learn how to compose a compelling story and make it ow so
that readers can understand complex subject matter.
By C. Edward Good
52 Leading by Example: Elevating
Women through Intentionality
Eight “rising stars” in IP share their views on leadership,
mentorship, and the role that men can play in elevating women,
as well as advice to the future generation of leaders.
By Erika Harmon Arner, Jency J. Mathew,
and Courtney Kasuboski
15 Who Owns That Patent?
Do Your Interactions with
Others Jeopardize Your Patent
Ownership?
Recent inventorship case law demonstrates potential
risks to patent ownership when third-party interactions
lead to an invention and suggests how to mitigate these
risks.
By Rebecca M. McNeill and Hilary Dorr Lang
20 Pulling Back the Curtain on
Complex Funding of Patent
Assertion Entities
Discover how a single patent metastasized into one
of the biggest patent assertion entities, and how these
entities leverage the continuing imbalance in the cost of
litigation.
By Jonathan Stroud
27 Informed Drafting and
Prosecution of Software and AI
Patents
Patenting prospects vary dramatically across art units,
examiners, and time. Strategic patenting decisions can
help prepare for the worst and strengthen allowance and
validity odds.
By Kate Gaudry and Rodney Rothwell
Pg. 15
Pg. 48

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