by Dennis Crouch
37 C.F.R. § 11.18(b) imposes crucial responsibilities on patent applicants, attorneys, and agents. Documents submitted to the USPTO implicitly certify that:
- Statements made are true or are are believed to be true (based upon information and belief) and do not include any attempt to conceal a material fact; and
- That a reasonable inquiry was conducted to confirm that: (i) statements have no improper purposes, (ii) legal contentions are supported by existing law or valid arguments for change, (iii) allegations and factual contentions have or are likely to have evidentiary support, and (iv) denials of factual contentions are based on evidence or a reasonable lack of information or belief.
Recent USPTO disciplinary cases underscore the seriousness of these obligations. Examples include filing a micro entity status request without proper investigation and submitting an information disclosure statement (IDS) by a non-practitioner without practitioner review. Rubber stamping is not permitted.
The PTO Just released a final order in a case against Jinggao Li, operator of the Dragon Sun Law Firm. In re Li, D2023-19 (PTO Order). Li received a public reprimand for relying on foreign counsel’s guidance on micro entity status, resulting in unwarranted status in 19 of 27 cases. Similarly, in In re Wu, D2023-24 (PTO Order), US patent agent Qianqian Wu was reprimanded for submitting 20+ applications with micro entity status, despite the income-level qualification allowing only four applications. She also reported relying upon client’s statements regarding their qualification for micro entity status. Similar recent cases include In re Tung-Yun McNally, D2023-22 (PTO Order); and In re Chew, D2023-08 (PTO Order).
It is worth noting that these cases involve practitioners whose names with Chinese origins and Chinese entities as clients. In a recent conversation with Dir. Vidal, she acknowledged her role as Undersecretary of Commerce focuses on the economic war between the US and China, but assured that her role as PTO director does not involve discrimination against China-originated innovation. She explained that the agency did not target Chinese fraudulent activity, but recognized that most of the current fraud and blatant misconduct before the PTO originates from China.
As a practitioner, ask yourself: Are you conducting inquiries, reasonable under the circumstances, to validate the information you present?
US-China Trade War: Upon reviewing these cases, you may notice that the attorneys involved have ethnic Chinese backgrounds, and the clients appear to be Chinese entities (on information and belief). I recently spoke with Dir. Vidal about the potential impact of the US’s economic war with China on the USPTO, particularly regarding actions taken against attorneys representing Chinese companies. Vidal acknowledged that her role as Undersecretary of Commerce and White House advisor involves addressing the antagonistic conflict. However, she reassured me that her position as PTO Director does not include discrimination against innovations originating from China, or their attorneys. Vidal clarified that the agency did not specifically target Chinese fraudulent activity, but has observed that most of the current fraud and blatant misconduct within the PTO can be traced back to China.
= = =
11.18 Signature and certificate for correspondence filed in the Office.
(a) For all documents filed in the Office in patent, trademark, and other non-patent matters, and all documents filed with a hearing officer in a disciplinary proceeding, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Office must 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 Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that –
- All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
- To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
- i. The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
- ii. The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
- iii. The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
- iv. The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
(c) Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions or actions as deemed appropriate by the USPTO Director, which may include, but are not limited to, any combination of –
- Striking the offending paper;
- Referring a practitioner’s conduct to the Director of the Office of Enrollment and Discipline for appropriate action;
- Precluding a party or practitioner from submitting a paper, or presenting or contesting an issue;
- Affecting the weight given to the offending paper; or
- Terminating the proceedings in the Office.
(d) Any practitioner violating the provisions of this section may also be subject to disciplinary action.
One issue that may arise is the question of where to file first; the US or China? In situations like this, you need to coordinate with your foreign associate in China. For example, where you have joint inventors where one is a US citizen residing in the US and the other is a Chinese citizen residing in China. Is the applicant a US company or a Chinese company? Which of the joint inventors contributed more to the development of the invention? You need to depend on the honesty of the answers provided to you by your client, but you also need to press for honest answers.
if the invention was made in the USA its illegal to file first in china without a FF license.
And if the invention was primarily created in China, you need a foreign filing license from China to file in the US.
Similar rules in Spain. On advice of counsel, I have filed a national case in Spain the same day as the US provisional.
Does anyone else have experience in this?
I have heard of “negotiations” between filing first in the Sovereigns of India and the US.
Thankfully, one of our partners was expert in this, so he handled the issue any time it came up.
Interesting course of action there, xtian. If the purpose of restricting first filing outside the jurisdiction is the protection of national security, one would suppose intuitively that BOTH Spain and the USA would regard this first filing in the other jurisdiction as a breach of their national security regulations.
Incidentally, what reason other than national security could justify restrictions on filing first outside the jurisdiction? I can’t think of any.
It need not even rise to “National Security,” and may be as “lowly” as aimed for encouragement of emerging industries.
Past examples include Pharma and software, current examples may include AI.
Sure, there may well be overlap with National Security, but that does not diminish differences in the drivers.
There are many Macro-Economic theories that one can delve into for additional views.
I accept that there are multiple rmacro-economic easons for encouraging filing. I just don’t see the decisive importance to any one jurisdiction that it is the one in which the inventor files first. What does it lose, if it gets its filing one day later?
If you are familiar with the economic theory, and have the communication skills of a patent attorney, you can in just a few words, tell me what you have in mind.
What does it lose?
Control.
That’s enough for most all political concerns.
C’mon MaxDrei, you should know better.
So, anon, you have “control” in mind. Me too.
But what sort of “control” other than control over national security do you have in mind? Who are the controllers that decide whether to issue all those foreign filing licenses (without which, inventors can please themselves where they file first)? What factors are the the controllers controlling, other than questions of national security?
Asked and answered.
See post 5.1.1.1.2.1.
If the purpose of restricting first filing outside the jurisdiction is the protection of national security, one would suppose intuitively that BOTH Spain and the USA would regard this first filing in the other jurisdiction as a breach of their national security regulations.
Sure, the simultaneous first filing in two countries frustrates the national security goals of each. Fortunately, this situation does not present often enough to be a real detriment to the well functioning of the patent system.
The hidden “i” clearly misses the point.
The point is simply not one of “too few” or “too many,” but rather, respect for the legal manner of entry.
Another “policy” NON-win for Malcolm, by the by.
A safer alternative can be to get a U.S. PTO security clearance for a copy of the application before actually filing it in either the U.S. or anywhere else.
Fair enough, of course, but this still will not resolve the issue that Max raises—viz., that it not possible to give two nations both the “first look” at the application before anyone else sees it.
Wow – the hidden link here “.,”is some serious misrepresentation.
Apologetic Propaganda for Fauci — as opposed to what that person should be facing….
Greg, I don’t follow you. The prohibition is against filing a patent application. I do not see a prohibition in getting security clearance from the governments of each of the involved countries before you file a patent application in any country’s Patent Office.
But as you say, inventions of national defence interest have, until recently, been special cases with special rules applying. Is that changing now though? Is most every technology, these days, of interest for national defence?
No change leastwise in the US Sovereign, MaxDrei.
ALL US applications have always been under a ‘review in US first’ policy (BIS regulations) for initial screening.
The penalty has also always been severe (and notably, was NOT changed even when the AIA did massive changes – including wholesale removal of “deceptive intent” language).
I could go back now some 15 years at least to remember being on our firm’s action committee reviewing proposals to outsource application drafting (to India) and being stopped cold due to the BIS hurdle.
I don’t follow you. The prohibition is against filing a patent application. I do not see a prohibition in getting security clearance from the governments of each of the involved countries before you file a patent application in any country’s Patent Office.
Indeed not. It seems to me, however, that you have been exploring two different questions so far: (1) how to handle conflicting demands of two different sovereigns about when to file; and (2) what interests justify the sovereigns in making those demands?
Paul’s 5.1.1.1.3 is an answer to the first question, and I take no objection to it. Paul does not purport to answer the second question—which is fine—but I still find the second question to be also interesting.
I share your intuition that the sovereigns who enact these “file here first” rules are trying to vindicate a national security interest. The interest can be summarized something along the lines “we want a chance to review this secret before you disseminate it outside our national borders so that we can prevent its dissemination if it looks likely to prejudice our national security interests.”
Whether the dissemination of the information happens in the context of “filing” or “pre-filing security clearance” really should not make a difference to the jealous sovereign. Either way, the ability of the other sovereign to prevent dissemination is frustrated if the information is shared outside the sovereign’s control. What Paul is discussing, then, is a loophole in the national security rules. I do not wish to close this loophole, but I can see why a scrupulously security-minded sovereign might wish to do so.
ge “t” ting
pretty ridiculous with the hidden links…
Almost as if conversations on patent topics are merely a front to the rampant signaling….
Not sure why drone strikes in Moscow need be hidden….
ipguy, can you expand on the factors that are relevant to the decision “where to file first”? I well understand that it is necessary for other reasons to “press” for an honest answer to the question what exactly each one of joint inventors contributed to the invention but I don’t understand why that should determine where to file first. The issue of where to file first is exclusively a national security (rather than a patent law) issue, isn’t it?
It’s the rules/factors of the patent office jurisdictions involved. I rely on my counsel in Europe, China or wherever for whatever the requirements of their jurisdictions are, and they rely on me for USPTO requirements.
“That a reasonable inquiry was conducted to confirm that: (i) statements have no improper purposes, .. [and] (iii) allegations and factual contentions have or are likely to have evidentiary support..”
One would think this basic attorney ethics requirement would be even higher for election fraud allegations made in Federal court lawsuit complaints? Yet we have recent examples in which Texas, AZ and possibly other attorneys have so far apparently shockingly escaped any attorney disciplinary consequences?
Texas, you say? There’s unethical lawyers there trying to subvert democracy by any means necessary to save their dying “culture” and demented white guy and fetus worshipping “religious values”?
I’m shocked. Next you’ll be telling me about Missouri turning into a legal cesspool.
Careful there Malcolm, any de-1984ing will expose your own
A
O
O
T
W
M
D
with your comment of, “unethical lawyers there trying to subvert democracy”
I agree that allegations of fraud should be to higher standards.
The criminal rapist Donny Two Scoops is going to be the RepuKKKe party’s candidate for President again. Seems problematic unless you’re a total scumbag. Thoughts Dennis?
LOL
My thoughts are that BOTH sides are
C
R
A
P
and that anyone thinking otherwise is beyond redemption.
Biden and Trump are probably the worst set of major party nominees since Filmore vs Buchanan in 1856. It is both baffling and appalling that we appear to be sleepwalking toward a re-run of that same matchup.
At least when the parties decided to rematch Eisenhower vs Stevenson or McKinley vs Bryant, those were two sets of quality candidates. Neither of these two deserve a repeat. A country as great as ours deserves a better choice, and surely can field a better set of options.
Why hide the link in the “1” of 1856?
Maybe embarrassed that you spend so much time being a Twit?
By the by, Dr. Lindsay also covers the actual history and philosophies.
Agreed. At a time when our nation and indeed the world needs a Reagan or a JFK, we’re instead stuck with Biden or Trump.
Risky times ahead.
I’ll grant that I’d prefer a younger candidate than Biden but policy-wise he’s doing a pretty good job. Comparing Biden to Pssy Grabber is beyond idiotic but I realize I’m dealing here with ape-brained dolts who still think the RepuKKKes are interested in doing anything except causing pain and chaos for everybody who isn’t a rich white Christian.
Policy wise….
Like what policy?
As for causing pain and chaos, you really are out of touch with society, as the less fortunate are suffering far more with inflation.
Time for you to set aside your typical unthinking ISMs and provide a cogent and substantive point.
What are the policies (plural) that you are referring to?
Let’s even start with a single one.
As is altogether far too common, Malcolm has reverted to his ‘drive-by’ mode.
Buh Bye
Vis a vis “policy” (intended inflation):
If Malcolm actually cared…
link to open.spotify.com
At about 17:00.
(and 6 will enjoy as well)
That is not the FRCP 11 standard. It also allows taking positions on behalf of a client when the position is supported by existing law OR “by a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law”
It is a pretty low bar, as well it should be or else the law would never change (in any event the argument needs to be NONFRIVOLOUS)
From the litigator’s perspective, do you see an ethical issue with spinning a position that is “a nonfrivolous argument for extending, modifying, or reversing existing law or for establishing new law” as if it were instead a “position is supported by existing law?”
(and to others, yes, Virginia, there is a difference)
Indeed, but that is the FRCP 11 standard for novel non-frivolous Legal arguments, not for baseless and unevaluated Factual assertions.
And, as anon notes, even the former does not protect miss-representing what the existing law is.
“does not protect miss-representing what the existing law is.”
Unless, of course, you’re one of the anti-patent judges of the CAFC when it comes to 101.
Laws, rules, regulations, requirements . . . truth and honesty?
That’s not how Communist China operates. Never did. Never will.
It’s long past time for us all to stop believing or hoping otherwise.
(Does anyone else feel at least a twinge of guilt whenever they buy a product stamped, “Made in China” . . . knowing that some of our money is going into the pockets of a government . . . that uses it to imprison and enslave millions of minorities . . . and to build a military and create weapons which threaten their neighbors . . . and which may one day be used to kill our soldiers . . . and ourselves?)
“Rubber stamping is not permitted.”
Tell that to the CAFC.
Good grief please get a life.
You keep talking to yourself, Malcolm. See a psychiatrist, he can prescribe medication for your condition.
The iron law of Woke projection fit Malcolm a full decade before the phrase was coined.
No matter the times pointed out, Malcolm simply lacks the ability to stop himself.
Prosaic,
I thought until it was my IP that I was naive.
“In a recent conversation with Dir. Vidal, she acknowledged her role as Undersecretary of Commerce focuses on the economic war between the US and China, but assured that her role as PTO director does not involve discrimination against China-originated innovation. She explained that the agency did not target Chinese fraudulent activity, but recognized that most of the current fraud and blatant misconduct before the PTO originates from China.”
Sounds to me like double talk on the part of Dr. Vital, but I guess that may have been an intended suggestion of the article. Both Russia and China are major threats to the US and need to be taken seriously. However, sometimes our efforts to combat China seem to at least border on racism.
How are you figuring double-talk? Is there an explicit Racy ISM that you can identify?
Speak up and if this be more than mere “feelings,” you will gain support.
On the other hand, if this be mere virtue signaling, your credibility takes another hit.
and do not include any attempt to conceal a material fact;
reasonable inquiry was conducted to confirm
Are you the total (or sole) inventor?
Hmmm
(reading what someone – or something – else has written does NOT make one an inventor)
It’s a pretty easy concept to grasp – if you allow yourself to.
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