In order to prepare and prosecute utility, design, and plant patent matters in front of the United States Patent and Trademark Office (“USPTO” or “Office”), the USPTO requires practitioners to demonstrate possession of the legal, scientific, and technical qualifications necessary to render valuable service to clients. See 37 CFR 11.7(a)(2)(ii).
On April 20, 2023, the United States Patent and Trademark Office (USPTO) announced several proposed rule changes that would have an impact on patent applicants, patent holders, and patent challengers. A common thread running through several of the rule changes is the requirement of increased disclosure from litigating parties, including disclosures of related parties, ownership interests, and all settlement agreements (and any related or collateral agreements) between the parties. While the proposed rule changes are subject to a public comment period, if implemented, they would (i) introduce several major changes to the process of challenging patents before the Patent Trial and Appeal Board (PTAB) and (ii.) significantly increase USPTO administrative fees.
What began as a trademark infringement dispute concerning electronic cigarettes has evolved into a never-ending series of discovery issues, and lessons about the limits of Federal Rule of Evidence 502 and privilege waivers. DR Distributors, LLC filed its initial complaint against 21 Century Smoking, Inc and its owner, Brent Duke, in September 2012 alleging trademark violations. The defendants filed their counterclaim also alleging trademark violations about a month later. Though fact discovery was supposed to have ended in 2015, the parties continued to assert problems with discovery seven years later. The latest issue presented before the U.S. District Court in the Northern District of Illinois in this case was whether the defendants waived the marital communications privilege by disclosing certain communications during discovery. In its decision finding that the privilege had been waived, the Court described the limited application of Rule 502 and warned against the dangers of arguing that a disclosure was “inadvertent” without providing any explanation of how the privilege review was performed.