U.S. Mooting Disciplinary Actions Against Patent Attorneys Fighting for the Rights of Their Clients.
There is a presentation available on-line originated by Mr. Harry Moatz, Head of the U.S. Office of Enrollment and Discipline Monitoring Practitioner Compliance With Disciplinary Rules dating April 2006. Obviously they are mooting to step up with pressure on U.S. Patent Attorneys to refrain from any procedural steps on behalf of their clients which might be perceived by the US-PTO as obstructive (Link thanks to I/P Update). Issues and conduct being considered by OED are:
Duty to make reasonable inquiry;
Obligation to avoid submitting papers for improper purpose or delay;
Monitoring compliance - conduct that can be perceived as failure to make reasonable inquiry;
Monitoring compliance - conduct that can be perceived as being interposed for improper purpose or delay; and
Monitoring compliance - conduct that can be perceived as incompetence or neglect.
Covered would be, inter alia:
Practitioners submitting papers must read each paper submitted to the Office before it is submitted. Each submitted paper must be read in its entirety;
Causing unnecessary delay or needless increase in the cost of prosecution;
A reference material to patentability is buried among a large number of cumulative references;
Application filed with claims that are anticipated by at least one publication authored by one of the inventors executing the 37 CFR 1.63 declaration or oath;
Filing application with one or more claims unpatentable over a combination prior art references cited by applicant in the specification;
Issuance of patent to claimed subject matter would cause embarrassment to the Office and bring the patent system into disrepute;
A reference material to patentability is buried among a large number of cumulative references;
Adding undue number of claims with multiple dependent claims;
Filing an amendment, petition or other paper without required fee;
Coinventing and claiming the client's invention as the practitioner's own invention;
Improving on a client's invention;
Repeatedly submitting payments by check, credit card or electronic fund transfer, which is dishonored due to insufficient funds, stop payments, incorrect accounts, etc.;
Authorizations in patent or trademark cases to charge the deposit account are not honored;
Repeated issuance of bad checks;
Stopping payment of check and receiving the service;
Repeatedly submitting petitions that clearly have no legal merit;
Repeatedly making the same or similar mistakes that delay prosecution or issuance of patent; and/or
drafting claims that read on prior art cited by individuals associated with preparing or prosecuting patent application.
Whilst some of the items are nothing else than a matter of course, others appear to have a taste of shifting problems from the Office to the applicants and their representatives. Why should an applicant not instruct his attorney to try to get some claims not far away from prior art? Sometimes, the interpretation of prior art is disputable. It is a duty of the Office to refuse overbroad applications. It should, in my view, not be a duty of the applicant to refrain from applying for overbroad claims. The U.S. Patent Attorney finds himself in a very difficult situation with his client, the applicant, desiring to get as much patent protection as possible, on the one hand, and the OED threatening with severe disciplinary action, on the other hand. It fits into the image that in the U.S. there is also a discussion as to whether or not applicants should do a search before filing a patent. If they should think that doing so is for their own benefit they are of course free to do so. But I am very sceptical towards any approaches to exert pressure on applicants to do a (mandatory) search before filing.
And, don't forget, this discussion surely is also followed by EPO Officials who are complaining since long about patent attorneys pressing too much for their client's interests, making life harder for EPO Examiners. A move in the U.S. could easily encourage similar initiatives also in Europe.
If Europe has a parallel problem, I would advocate tackling it by signalling to the patent applicant that going to issue with even one invalid claim in the B publication will bring delay and cost and inconvenience, when it comes to enforcing the patent against an infringer. Example: grant of injunction has to wait, till the invalid claim is excised. In that way, Applicant behaviour is self-policing. Applicants that are clever will show their patent attorney all the art, and ask their attorney to take to issue claims that are valid. As I see it, the owner of a US patent needs only one valid claim. It doesn't matter to him how many invalid claims are also present in his issued patent. The invalid claims serve a useful function- they can intimidate - so Applicants at the USPTO have a strong incentive to take invalid claims to issue. I dson't see the USPTO proposals you report doing anything to dilute that incentive.
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Dipl.-Phys. Axel H Horns is Patentanwalt (German Patent Attorney),
European Patent Attorney as well as European Trade Mark Attorney. In particular, he is Member of:
presentation available on-line originated by Mr. Harry Moatz, Head of the U.S. Office of Enrollment and Discipline Monitoring Practitioner Compliance With Disciplinary Rules dating April 2006. Obviously they are mooting to step up with pressure on U.S. Patent Attorneys to refrain from any procedural steps on behalf of their clients which might be perceived by the US-PTO as obstructive (Link thanks to 
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