As I feverishly continue my review and summary of OED ethics decision in advance of my presentation on ethics at the 7th Annual Patent Law Institute, I recently found an interesting case about discipline of an attorney practicing trademark law. The case is In the Matter of Michelle A. Massicotte (May 16, 2012). This case has significance for patent attorneys because the action taken by the Office of Enrollment and Discipline (OED) was as the result of false statements made in a petition to revive three trademark applications after failure to respond to an Office Action.
The tale starts like this: Michelle A. Gallagher, formerly known as Michelle A. Massicotte, is an attorney licensed to practice law by the Commonwealth of Massachusetts. Massicotte is not a registered patent practitioner and is not authorized to practice patent law before the USPTO. She was not engaging in any patent law practice before the Office, yet what she was charged with doing is the type of response that patent attorneys do file with some frequency, so her discipline is quite instructive.
Unlike most of the disciplinary proceedings dealing with an attorney licensed to practice law, this was not instituted as a a matter of reciprocal discipline pursuant to 37 CFR 11.24. Rather, the USPTO suspended Massicotte for twenty-four (24) months for violating 37 CFR §§ 10.23 (b)(4), (b)(5), and (b)(6) by giving false or misleading information to the Office; 37 CFR 10.77(e) by neglecting a matter entrusted to her; and 37 CFR § 10.84(a) by failing to seek the lawful objectives of a client through reasonable available means permitted by law.
Under the terms of the settlement agreement reached with Massicotte, she is eligible to file a petition requesting reinstatement after serving two (2) months of her 24-month suspension. If reinstatement is granted, she would then be permitted to practice trademark and other non-patent law before the Office, provided that she otherwise satisfies the conditions of 37 C.F.R. § 11.14(a) and unless subsequently suspended. She is also ordered to serve an additional twenty-four (24) month probationary period in the event she is reinstated.
The disciplinary penalty leveled against Massicotte was predicated on the fact that she provided the Office with false or misleading information in connection with petitions to revive three abandoned trademark applications. The trademark applications went abandoned for failure to respond to an Office Action. Massicotte revived these applications, at least in part, because she argued that the Actions were not received until after the time period to respond had passed. She also indicated that, during this time frame, she was experiencing a high-risk pregnancy. The first part was false; she had received the Office Actions in a timely fashion. The second part was true. The OED took notice that there were mitigating factors present. First, Massicotte was, in fact, experiencing a high-risk pregnancy. She also had no prior history of disciplinary actions during her twelve-year legal career. It was further believed that the actions of Massicotte were aberrational. Massicotte also fully cooperated with the OED.
This matter is of significance for several reasons. First, it does show that, at least occasionally, the USPTO will initiate investigations on their own against attorneys, even those who are not registered patent practitioners. Second, the case shows the importance of having a clean disciplinary record and cooperating with an OED investigation. Third, it shows what the USPTO thinks of false statements made in petitions to revive.
Frequently when teaching the Patent Bar Review Course, students will ask: “But how would the USPTO ever find out?” This case does not offer an answer to that question, but the Office did find out somehow. Upon finding out that the facts were not as were asserted, Massicotte was suspended. The suspension would have been of a wholly different character and length had it not been for the mitigating factors, and even still, Massicotte was suspended for two years and will be placed on probation for an additional two years.
This should be a warning to patent attorneys about the “casual statements” that are sometimes made in filings with the Office. The penalty even for someone with a clean record and other mitigating factors just isn’t worth running the risk.