Patent Practitioner Discipline


USPTOOver the last several years, I have given the ethics lecture part of PLI’s Patent Law Institute, which grants those in attendance (or viewing via webcast, in most states) one ethics credit toward CLE compliance. This year, I will once again give the ethics presentation at the 8th Annual Patent Law Institute sponsored by the Practising Law Institute, which will take place in New York at the beginning of February 2014, and which will be reprised live in San Francisco in mid-March 2014.  Materials are due early so that PLI can put everything into book form for attendees, so I have been writing to ensure enough to support one credit hour of CLE, and starting the planning of my hour-long presentation generally.

A big part of what I like to do when I give an ethics lecture is to review recent decisions of the Office of Enrollment and Discipline to see what OED has been focusing on and what trouble our fellow members of the patent bar are getting into. This not only gives us insight into the OED approach, but also gives us an opportunity to review the ethics rules practitioners are charged most frequently with violating. It also gives us an opportunity to discuss the process you will be afforded if you should find yourself on the wrong side of an OED complaint.

As I read through the determinations so far for 2013, a couple of things jumped out at me aside from particular circumstances and rule infractions. For example, most (if not all) of the practitioners were charged with violating one or another section of Part 10 of Title 37 of the Code of Federal Regulations.

Part 10 is no longer the controlling section for ethics at the USPTO, and is now a reserved section. Ethics rules have been moved to Part 11 of Title 37. Proceedings are being conducted under the procedures within Part 11, but the rules governing practice at the time of infraction will dictate the substantive ethical rules that will be applied, which is why so many of these cases cite violations of various sections of Part 10. To obtain a copy of Part 10 of Title 37, please see the Rules Appendix to MPEP 8th Edition Revision 8.

Next, a number of cases discuss discipline being handed out nunc pro tunc. Discipline nunc pro tunc is appropriate only if the practitioner: (1) promptly notified the OED Director of his or her suspension or disciplinary disqualification in another jurisdiction; (2) establishes by clear and convincing evidence that the practitioner voluntarily ceased all activities related to practice before the Office; and (3) complied with all provisions of 37 CFR § 11.58. Essentially, if you are going to be suspended, you can cease practicing voluntarily ahead of discipline being handed out…essentially beginning to serve the sentence on your own for the purpose of getting more quickly to the end point. It would likely also show acceptance and responsibility, potentially powerful mitigating factors that the PTO can use to justify a less severe sanction.

Finally, there are numerous reciprocal discipline cases during 2013. These reciprocal discipline cases demonstrate the importance of obtaining the best resolution possible when the ethics authorities come knocking. Because there is a presumption that reciprocal discipline is appropriate, to prevail at the USPTO you would need to demonstrate that there was a lack of due process, complete lack of evidence or that there is some manifest injustice that would occur if discipline were to be handed out by the USPTO. Whether we like it or not, you are going to be disciplined by the USPTO to the same extent you were disciplined by the state ethics panel, or a court (see Graham).

For more of my writings on ethics issues, please see Ethics & OED.

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