The United States Patent and Trademark Office recently amended 37 C.F.R. § 42.11 to include a certification requirement similar to that of Rule 11. Section 42.11 prescribes the duty of candor owed to the Patent Office. As noted in the Federal Register, the Office sees the new rule as preventative in nature. Despite comments expressing concern that disciplinary actions at the Office will increase as a result of the rule change, the Office noted that disciplinary actions are rare, and that the rule change would not be likely to affect that infrequency. How significant the rule change is and how much it increases the burden on practitioners is unclear, however. The amended rule includes the following language:
(a) Duty of candor. Parties and individuals involved in the proceeding have a duty of candor and good faith to the Office during the course of a proceeding.
(b) Signature. Every petition, response, written motion, and other paper filed in a proceeding must comply with the signature requirements set forth in § 11.18(a) of this chapter. The Board may expunge any unsigned submission unless the omission is promptly corrected after being called to the counsel’s or party’s attention.
(c) Representations to the Board. By presenting to the Board a petition, response, written motion, or other paper – whether by signing, filing, submitting, or later advocating it – an attorney, registered practitioner, or unrepresented party attests to compliance with the certification requirements under § 11.18(b)(2) of this chapter.
(1) In general, if after notice and a reasonable opportunity to respond, the Board determines that paragraph (c) of this section has been violated, the Board may impose an appropriate sanction on any attorney, registered practitioner, or party that violated the rule or is responsible for the violation.
(2) Motion for sanctions. A motion for sanctions must be made separately from any other motion and must describe the specific conduct that allegedly violates paragraph (c) of this section. The motion must be authorized by the Board under § 42.20 prior to filing the motion. At least 21 days prior to seeking authorization to file a motion for sanctions, the moving party must serve the other party with the proposed motion. A motion for sanctions must not be filed or be presented to the Board if the challenged paper, claim, defense, contention, or denial is withdrawn or appropriately corrected within 21 days after service of such motion or within another time the Board sets. If warranted, the Board may award to the prevailing party the reasonable expenses, including attorneys’ fees, incurred for the motion.
(3) On the Board’s initiative. On its own, the Board may order an attorney, registered practitioner, or party to show cause why conduct specifically described in the order has not violated paragraph (c) of this section and why a specific sanction authorized by the Board should not be imposed.
(4) Nature of a sanction. A sanction imposed under this rule must be limited to what suffices to deter repetition of the conduct or comparable conduct by others similarly situated and should be consistent with § 42.12.
(5) Requirements for an order. An order imposing a sanction must describe the sanctioned conduct and explain the basis for the sanction.
As such, subject to sanctions, the relevant documents filed with the Board in a post-grant proceeding must comply with § 11.18(b)(2), which is reproduced below:
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.
This new requirement seems to be broader than Rule 56 (37 C.F.R. § 1.56), which imposes a duty to disclose information material to patentability. In contrast, the amended requirement apparently requires that a lawyer must certify, based on a reasonable investigation, that an amended claim is patentable over all prior art of which a party or persons involved in the post-grant proceeding are aware. The amended require raises questions such as how involved a party or person must be for the certification requirement to apply if that person knows of any material prior art.
How the new rule will be applied remains uncertain thus far, especially after the Federal Circuit’s ruling in Ohio Willow Wood Company v. Alps South, LLC, 2015-1132 (Fed. Cir. 2016). In Ohio Willow, a representative of the patentee who was involved in litigation of a patent that was also subject to a reexamination at the Office was found to have committed inequitable conduct for not disclosing material information to the Office in the reexamination. The material information was found during discovery of the concurrent litigation, but partly because the representative was an employee of the company asserting patent infringement, the court determined that the representative had to report the material information from the litigation to the Office in the reexamination. See my previous article here.
The Office will likely need to offer guidance to clarify the rule change. Until then, practitioners should at least be aware of the rule change and should proceed with caution when submitting any documents and claims to the Office in a post-grant proceeding.