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Attorney's exclusion from USPTO practice based on ties to invention promotion firm affirmed
June 21, 2007

Unsuspecting inventors aren't the only ones hurt by fraudulent invention promotion firms. As a case decided today by the Federal Circuit shows, the attorneys they employ can also be harmed.

Of course, in this case, the attorney isn't a very sympathetic figure. He was on the payroll of an invention promotion firm in the 1990s, and was paid up to $15,000 every two weeks to do the firm's patent prosecution. As is the case with many invention promotion firms, however, the firm did not tell its clients that they were applying for design patents rather than utility patents, so as to avoid making good on their "money back guarantee" if no patent was obtained.

Specifically, the attorney was found to have:

  • Neglected a legal matter entrusted to him in violation of 37 C.F.R. § 10.77(c), because he did not inform his "clients" of the differences between a design patent and utility patent
  • Failed to disclose a conflict of interest created by his payment by the invention promotion firm and its guarantee in violation of 37 C.F.R. § 10.62(a)
  • Been paid by the invention promotion firm, as opposed to by the client, without full disclosure in violation of 37 C.F.R. § 10.68(a)(1)
  • Engaged in conduct that was prejudicial to the administration of justice in violation of 37 C.F.R. § 10.23(b)(5) by providing evasive answers to requests for information sent to him by the USPTO investigating his conduct

As a result of his conduct, the attorney was excluded from practice before the USPTO, a sanction affirmed by the Federal Circuit, in part because the attorney continues to assert that he did nothing wrong (a former attorney for the invention promotion firm agreed to admit wrongdoing and was suspended for five months).

This case is a reminder that inventors who seek the assistance of an invention promotion firm should investigate the firm to make sure they aren't being scammed. The USPTO has resources for inventors to check the reputation of invention promotion firms on its website, check this post for more information.

To read the full decision in Bender v. Dudas, click here.

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