The USPTO recently took the unusual step of addressing the unauthorized practice of trademark law before it by posting up Chinese language websites detailing the legal requirement to represent a client before the Trademark Office and the consequences of such unauthorized practice.
Here is the English version of the PTO’s guidance on registration to practice trademark law, and on applicants and registrants that are excluded from practice. Here are the Chinese language versions of the first and second documents. The Show Cause and Exclusion orders that are linked to the second document demonstrate the extent of the problem and the PTO guidance discusses the consequences of unauthorized practice to rightsholders.
In one case, a Ms. Emilie Bo of Kunshan, Jiangsu is alleged to been involved in more than 1,000 trademark applications or registrations without being a properly licensed attorney or authorized signatory. A Ms. Richel Lee of Hangzhou is similarly alleged to be associated with more than 350 registrations or applications. It would be interesting to determine if individuals involved in the unauthorized practice of a large quantity of trademark applications before the United States have also engaged in similar unethical activities, such as trademark squatting, in China.
USPTO’s rules on practicing before it permit both US attorneys and designated signatories (such as officers of a company) to prosecute trademark applications. Restrictions on the practice of law in China including the specific restrictions that apply to the practice of IP law are discussed in an article I wrote in the Fordham Law Review on international law firms in China (see text at footnotes 18 and 19) and have generally been more restrictive. Market access restrictions for lawyers and restrictions on their attending hearings or meetings in conjunction with Chinese counsel have also been the subject of JCCT discussions and outcomes, including in the AML context.
Update November 18, 2016: Here are some of the PTO cases, including two orders to show cause and the exclusion order, discussed above.
Categories: China IPR, Trademark, trademark squatting
The links seem to be missing!
They somehow dropped out, will reinsert later.
Perhaps an even bigger issue that the USPTO should address is unauthorized patent practice by unqualified Chinese agents, who then send the patent or office action response to a US patent attorney/agent acting as a shell who simply signs and files without any review. I think there are many US practitioners who are doing this. Simply outrageous. Guarantees disaster for the unwitting clients. Those in China filing US patents need to scrutinize the work and get to know the US agent being used to make sure they aren’t being ripped off. One of the warning signs in some cases is that the US agent/attorney doesn’t request prior art from the inventors nor does he/she file an IDS based on art known to the inventors.