From our previous posts, it is clear that, the United States Patent and Trademark Office (USPTO) has been increasing investigations and disciplinary actions against those who work with foreign trademark associates. However, in today’s global economy, many clients demand global trademark and patent protection—so is it unethical for a U.S. Trademark Attorney to work with foreign trademark associates? The short answer is no; however, working with foreign associates can be a delicate tightrope.
The USPTO Rules of Professional Conduct apply to practice before the USPTO, and include prohibitions, for example, on sharing fees with non-lawyers. Since many foreign trademark associates are not U.S. licensed lawyers, many practitioners believe that such conduct is prohibited because the practitioner may be sharing fees with or taking direction from a non-lawyer. However, recognizing the need for global IP protection, the USPTO published two Official Gazette Notices sanctioning this common practice: Practitioner’s Responsibility to Avoid Prejudice to the Rights of a Client/Patent Applicant, 1086 O.G. 457 (Dec. 10, 1987) and Responsibilities of Practitioners Representing Clients in Proceedings Before the Patent and Trademark Office, 1091 O.G. 26 (May 25, 1988). These Notices address certain obligations and suggested measures to be undertaken when doing business with foreign associates.
Since that time though, the USPTO continues to discipline attorneys for working with foreign associates, especially from China. For example, in the Francis Huisok Koh case, this Maryland-based practitioner was suspended for violating various provisions of the USPTO Rules of Professional Conduct. In this case, USPTO reiterated the importance of providing competent representation 37 C.F.R. §11.101; practicing diligence 37 C.F.R. § 11.103; responsibilities regarding non-practitioner assistance 37 C.F.R. § 11.503(b); engaging in misrepresentation 37 C.F.R. § 11.804(c); engaging in conduct prejudicial to the administration of the USPTO trademark registration system 37 C.F.R. §11.804 (d); and engaging in other conduct that adversely reflects on a petitioner’s fitness to practice before the USPTO 37 C.F.R. §11.804 (i).
Despite having no previous record of professional discipline, the USPTO alleged that Mr. Koh had become the attorney of record in over 28,000 trademark applications, and in doing so (as a sole practitioner) had significant challenges in carrying out his ethical obligations. In other words, the USPTO suggested that Mr. Koh did not adequately review filings, and therefore failed to comply with 37 C.F.R. 11.18. It is difficult to determine what, if anything, Mr. Koh did to comply with his obligations, especially with a high volume of trademark applications.
In light of the USPTO’s continued focus on trademark lawyers who work with foreign associates, here are 3 important lessons to avoid discipline with the USPTO:
- Practitioners Must Comply With 11.18
37 C.F.R. 11.18 requires practitioners to sign, file, or later advocate for prior filings to do so on information and belief—after an inquiry that is reasonable under the circumstances. Violations of the rule not only may result in serious consequences, including disciplinary action, but also may jeopardize the filings in the trademark applications—or even leave them subject to vulnerability in federal court. Note: The USPTO is not authorized to cancel trademark applications or registrations.
Compliance with 11.18 should be a rubric that is applied by practitioners in submitting documents to the USPTO. For example, allowing a foreign associate to take the lead and draft documents may be appropriate in certain circumstances; however, the practitioner is ultimately responsible for the filings (mistakes and all—even when committed by their foreign associate). As such, a foreign associate, even if trained as a lawyer, should be treated as a non-lawyer—someone whose work must be thoroughly reviewed to ensure not only the information in accurate, but that it is supportable by evidence.
- Choose Wisely
In choosing to work with foreign associates, the practitioner must ensure that the foreign associate understands the importance of candor and accuracy to the USPTO. A common theme of the disciplinary actions issued by the USPTO involve either failing to review the filings made to the USPTO, or allowing others to access the practitioner’s account and file patent or trademark applications. Even when done without the practitioner’s knowledge, these filings (and the associated misconduct) are imputed to the practitioner who generally has a duty to supervise the conduct of these foreign associates. See 37 C.F.R. § 11.503.
Before creating a relationship with a foreign association, practitioners should consider: (1) talking to other lawyers who have worked with the foreign associate; (2) training the foreign associate on ethical obligations; and (3) continuing to monitor and audit these practices. Moreover, simply verifying the identity and checking references from others can be helpful to better understand the reputation of foreign associates.
- Be Cautious Regarding Sponsoring Foreign Associates
As noted above, not only does the practitioner have their own ethical obligations, they also have a duty to supervise the foreign associate. As such , even when working with foreign associates that you have come to trust, sponsoring them requires additional diligence.
Many IP practitioners are not aware (because the USPTO fails to highlight this issue) that, upon the creation of their USPTO.gov accounts, they sign an agreement stating that:
As an attorney, I may only sponsor attorney support staff under my supervision, employed or retained by my individual law practice, law firm, or as employees of the same company as myself. I will not attempt to sponsor any other individuals or organizations, including any foreign or domestic company, group, client, agent, attorney or other practitioner. In addition to the identity verification required by the USPTO, as a sponsoring attorney, I understand that I am responsible for confirming the identity of any person whom I sponsor.
This agreement, considered a clickwrap agreement, has been amended by the USPTO countless times without notification to practitioners. However, it should be read as a guide of how the USPTO views sponsorship and setting the tone in putting limitations to who can be sponsored.
The USPTO obviously frowns upon situations where you “lend” your name and bar credentials to foreign firms for trademark filings. For example, practitioners should avoid, at all times, in giving access to their name and bar credentials to anyone to make filings. However, even sponsoring individuals may be ripe with abuse. For example, the USPTO’s systems do not provide a way for the sponsoring practitioner to review filings made by the sponsored account. As such, it is possible that a sponsoree may engage in misuse of the account without the sponsoring practitioner being aware of the conduct. In one recent instance, OED suggested that sponsored accounts have been used to make filings, then the power of attorney is immediately removed by the bad actor—meaning the attorney would never know their information was being used improperly—even with a diligent search of the USPTO’s records. Once again, even if this misconduct was without the practitioner’s knowledge, the USPTO may discipline the practitioner for such conduct under 37 C.F.R. § 11.503.
In a global economy where sellers are being required to file trademark applications simply to sell on online platforms, we see an important role for trademark practitioners and firms to work effectively with foreign associates; however, it is also important to remain vigilant of the ethical obligations of these practitioners.