I will be speaking at the 7th Annual Patent Law Institute sponsored by the Practising Law Institute live from New York City on February 4-5, 2013, and live from San Francisco, CA on March 18-19, 2013, with the San Francisco location also being webcast. My topic this year is ethics, and those who attend my presentation live or via webcast will earn 1 ethics CLE credit. In addition to discussing the impact of the America Invents Act on ethics, specifically from a malpractice standpoint, I will also discuss the enforcement efforts of the Office of Enrollment and Discipline (OED) during 2012.
One of the cases from 2012 that has caught my attention is The Matter of David P. Gaudio, which was decided on December 12, 2012, and was the last action taken by OED during 2012.
David Gaudio was not a registered patent practitioner, but this was not a case where OED went after someone who was only engaged in trademark representation via a reciprocal discipline proceeding. The Law Office of David P. Gaudio, P.C. formed The Inventors Network, Inc., a corporation licensed by the Pennsylvania Department of State. Gaudio was alleged to have engaged in the unauthorized practice of patent law. Gaudio knew that the representation of inventors without being a registered patent practitioner violated USPTO regulations.
The complaint alleged that Gaudio knowingly permitted The Inventors Network to file over 150 patent applications with the Office that were not prepared or reviewed and signed by a registered patent practitioner. The complaint also alleged that Gaudio knowingly permitted The Inventors Network to prosecute over 150 patent applications before the USPTO without the requisite involvement of a registered patent practitioner; knowingly permitted the Inventors Network to charge and collect fees for patent legal services from patent applicants based on the representation that a registered patent practitioner would prepare and prosecute their patent applications before the Office; and knowingly permitted The Inventors Network to fail to disburse fully to a registered patent practitioner all fees for patent legal services collected from patent applicants. The complaint further alleged specific scenarios where Gaudio specifically engaged in representation that must be done only by a registered patent practitioner.
The rules Gaudio was alleged to have violated were: 37 C.F.R. §§ 10.23(a), 10.23(b)(4), 10.23(b)(5), 10.31 (a), 10.23(b)(3) by engaging in acts and omissions constituting violations of 35 U.S.C. §33, 10.23(b)(6), and 10.89(c)(6).
Gaudio did not admit to violating Disciplinary Rules of the USPTO Code of Professional Responsibility, but he did file an Affidavit of Resignation, which formally and finally ended the OED inquiry. Resigning from practice while under investigation does, however, mean that if/when Gaudio ever seeks reinstatement, the USPTO will conclusively presume that the allegations set forth in the disciplinary complaint were true, and that he could not have successfully defended himself against such allegations.
What makes this case interesting is that the USPTO has historically not gone after those who engaged in representation at the Office but were not registered patent attorneys. This bizarre interpretation of the limitation of OED power created a strange anomaly. At the same time the USPTO provides a registration examination and ostensibly said that you could not represent others unless you were a registered patent attorney or patent agent, the Office refused to go after those who were not registered practitioners under the theory they only had jurisdiction over registered practitioners. So why give a registration examination? It was a peculiar understanding if you ask me. Require registration and then claim lack of authority to go after those engaging in the unauthorized practice of law because they are not registered….? Truly a bizarre interpretation.
I have wondered privately and publicly why the USPTO was not doing more to shut down the practice of patent law by non-practitioners. That being the case, it is appropriate to notice that something has changed at OED. This is definitely a step in the right direction. It isn’t exactly shutting down the non-practitioners who are not lawyers, but this step does seem quite significant and could well signal new USPTO interest in preventing those who are not registered practitioners from preying on unsuspecting inventors.
Time will tell whether this case stands for the proposition that the USPTO will go after attorneys who are not registered but are engaging in patent practice before the Office, or whether this more generally signals an attempt to prevent all unauthorized practice of law, including by corporations and those who are not members of any state bar.