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Expert Analysis

USPTO Ethics Rules May Change The Way You Email Clients

Law360, New York (December 4, 2014, 10:11 AM EST) -- Prosecution of a patent application — the act of negotiating with the U.S. Patent and Trademark Office or a foreign patent office to secure patent protection — generally can proceed without substantial client involvement. While client input may be valuable, its absence does not necessarily preclude a practitioner from taking action. Once appointed by a client to prosecute an application at the relevant patent office, the practitioner can prepare and file correspondence that attempts to distinguish the client's invention from the cited prior art. As a whole, this framework affords the practitioner a large degree of self-sufficiency....

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