Recent Events - Ethics Committee Panel on Duty of Candor Before USPTO

On October 4, 2024, the Ethics Committee presented a panel on duty of candor before the USPTO in various contexts.  Panelists Michael E. McCabe, Jr., of McCabe & Ali, LLP and Anant K. Saraswat of Wolf, Greenfield & Sacks, P.C. offered their perspectives on the topics, followed by discussion among BIPLA members attending. Anant discussed Director Vidal’s recent director review decision in Spectrum Sols. LLC v. Longhorn Vaccines & Diagnostics, LLC.  During the underlying inter partes review proceedings, patent owner Longhorn withheld test results that were inconsistent with its patent owner response and motion to amend arguments.  After Spectrum became aware of the inconsistent results during deposition, it sought discovery and then argued that Longhorn’s failure to disclose the results was sanctionable.  The Patent Trial and Appeal Board found that, by not producing the inconsistent results, Longhorn violated a number of rules including: the duties of candor and disclosure under 37 CFR § 1.56, the obligation to “serve relevant information that is inconsistent with a position advanced by the party” under 37 CFR § 42.51(b)(1)(iii), the duty of candor to the Office during a proceeding under 37 CFR § 42.11(a), and the certification requirement under 37 CFR § 42.11(c) incorporating 37 CFR § 11.18(b)(2), which in turn requires, among other things, that all “allegations and other factual contentions have evidentiary support.”  The Board entered adverse judgment cancelling all claims as a sanction.  This marked the first known instance of the Board finding the duty of disclosure under 37 CFR § 1.56 applied to post-grant proceedings. On review, the Director affirmed the PTAB’s adverse judgment cancelling challenged claims based upon the violations of §§ 11.18(b)(2), 42.11(a) and (c), and 42.51(b)(1)(iii).  However, the Director vacated portions of the decision that applied § 1.56’s duties of candor and disclosure on the basis that § 1.56 “does not apply directly to AIA proceedings.”  The parties have filed appeals to the Federal Circuit.  As a takeaway, although parties in a post-grant proceeding may not face the same disclosure obligations that apply during prosecution, practitioners must be aware of the rules governing conduct during post-grant proceedings, including those requiring disclosure of inconsistent information and requiring evidentiary support for factual assertions.     Mike called our attention to the USPTO Office of Enrollment and Discipline’s strict interpretation of the practitioner signature requirements under 37 CFR § 11.18(a), which require that “all documents filed in the Office” by a practitioner “must bear a signature, personally signed or inserted by such practitioner.”  The OED’s interpretation of the rule is that an /S/ signature must be personally typed in by the signatory and cannot be inserted by another, even at express direction of the practitioner.  For example, Mike noted that the OED has pursued disciplinary proceedings where a practitioner reviewed documents and personally instructed a support staff member to insert the practitioner’s signature.  The USPTO has also taken the position that violations of § 11.18(b)(1) not only expose the practitioner to potential discipline, but additionally “may jeopardize the validity of the application or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom.”  MPEP § 410.  The Federal Circuit has yet to decide that issue.  More information is available on the McCabe & Ali website at: https://ipethicslaw.com/decoding-the-usptos-signature-rules/ and https://ipethicslaw.com/allowing-someone-else-to-type-in-your-s-signature-on-uspto-documents-is-unethical/.