Ethics and OED 2012: Practitioner Discipline at the USPTO
|Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: December 11, 2012 @ 9:00 am
Next year I will be speaking at the 7th Annual Patent Law Institute sponsored by the Practising Law Institute. The event, like in previous years, will be bi-coastal. We will be 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 will be ethics, which will provide the all important and highly sought after ethics CLE credit.
In addition to discussing ethical issues raised by the America Invents Act, such as the new statute of limitations and avoiding catastrophic malpractice issues with the shift to first to file, I also always like to do a rundown of recent OED disciplinary proceedings. The last time I did this was several years ago. See Patent Office Disciplinary Actions and Lack Thereof.
With this in mind, over the coming weeks and months leading up to the 7th Annual Patent Law Institute, I will be publishing a summary of the disciplinary proceedings before the Office of Enrollment and Discipline at the United States Patent and Trademark Office. What follows starts with the first Order of 2012.
In the Matter of Arthur J. Cutillo (January 10, 2012)
On January 14, 2011, in the U.S. District Court for the Southern District of New York, Arthur J. Cutillo (Registration No. 52,789) pled guilty to the crimes of insider trading, conspiracy to commit securities fraud in violation of 18 U.S.C. § 371, and securities fraud in violation of 15 U.S.C. §§ 78j(b) and 78ff. These crimes are felonies under the United States Code.
On June 30, 2011, Cutillo was sentenced to thirty (30) months in prison and ordered to forfeit $378,608. The Supreme Court of New York disbarred Cutillo as a result of his guilty pleas.
In this reciprocal disciplinary proceeding the USPTO ordered that Cutillo be excluded from the practice of patent, trademark, and other non-patent law for violating 37 C.F.R. § 10.23(b)(6), which proscribes engaging in conduct reflecting adversely on a practitioner’s fitness to practice.
No surprises here. If you are convicted of a felony and disbarred in the State where you are registered it is a virtual certainty that OED will initiate a disciplinary proceeding against you and you will be disbarred by the USPTO.
In the matter of Junwei Wayne Hou (January 10, 2012)
Junwei Wayne Hou is an attorney licensed in Maryland and authorized to represent others before the USPTO in trademark and non-patent matters. Hou is not a registered patent practitioner and is not authorized to practice patent law before the USPTO.
In a reciprocal disciplinary proceeding, the USPTO Director ordered that Mr. Hou be reprimanded for violating 37 C.F.R. § 10.23(b)(6) by being reprimanded on ethical grounds in the State of Maryland. On December 2, 2009, the Attorney Grievance Commission of Maryland issued a Letter of Reprimand publicly reprimanding Mr. Hou for violating Maryland Lawyers’ Rules of Professional Conduct 1.4 and 1.7.
The reason for the reprimand in Maryland related to Hou’s failure to communicate a conflict of interest. Hou represented a husband and wife in immigration matters and later agreed to represent them in connection with a Marital Separation/Property Settlement Agreement. Hou failed to obtain their informed consent in writing and also failed to timely inform the husband (the Complaining party) that his wife had filed for divorce while Hou remained the attorney of record on the immigration matter.
Of particular note here are several things. First, once again the USPTO does nothing more severe than the punishment meted out by the State of Maryland. Second, Hou did not respond to the official disciplinary proceeding initiated by OED. This lead to a determination that there was no genuine issue of material fact. Although it didn’t cost Hou here it is probably not the best practice to ignore OED.
In the matter of Patrick N. Burkhart (January 10, 2012)
The USPTO publicly reprimanded Patrick N. Burkhart (Registration No. 33,352) for violating 37 C.F.R. § 10.77(c) and 10.112(c)(4). Mr. Burkhart violated § 10.77(c) by not providing a client with accurate information about the status of a patent application and by not timely filing a change of correspondence address after withdrawing from representation of a matter so that a client would receive future correspondence directly from the Office about an issued patent. He also violated 37 C.F.R. § 10.112(c)(4) by not promptly delivering a former client’s property in his possession (i.e., the client’s application file), which the client was entitled to receive .
Burkhart had previously been investigated for violating disciplinary rules in 2008. At that time in order to settle those charges a settlement was entered into between the OED Director and Burkhart. The final order required Burkhart to within 30 days notify his clients in writing on the designated list with partial refunds to them of past collected legal fees and the schedule for repayment of the refunds. The suspension was stayed and he was permitted to continue to practice so long as he complied with the terms of the settlement. Burkhart did not comply and the three-year suspension was vacated and suspension was activated on September 3, 2008.
Given that Burkhart is currently suspended from practice before the Office, in addition to a public reprimand, should he ever successfully petition for reinstatement to practice before the USPTO, he will upon reinstatement be placed on probation for eighteen months. Additionally, because Burkhart did not file a client’s patent application he agreed to reimburse the client for expenses in having another practitioner familiarize himself with the client’s file.
In the matter of Raymond Y. Chan (January 17, 2012)
This action is the result of a settlement agreement between Raymond Chan (Registration No. 37,484) and the OED Director pursuant to the provisions of 35 U.S.C. § 2(b)(2)(D) and 37 C.F.R. §§ 11.20, 11.26, and 11.59.
For several years, Chan engaged in a business practice of having his inventor-clients sign the oaths or declarations required by 37 C.F.R. § 1.63 prior to the preparation of the clients’ non-provisional patent applications. Chan explained that he never intended to mislead the Office. Notwithstanding, the oath or declaration is supposed to be signed after the application is finally completed, not before it is finalized. Thus, Chan’s practice was contrary to patent prosecution rules and the USPTO Code of Professional Responsibility.
The USPTO did find mitigating factors: (1) Chan had no prior disciplinary history before the Office during his nearly 18 years of practice before the Office as a registered patent agent; and (2) Chan fully cooperated with OED during the investigation and resolution of this matter. This lead to Chan being publicly reprimanded and placed on probation for thirty-six (36) months. Thus, Chan is permitted to continue to practice patent law before the Office during his probation unless he is subsequently suspended or excluded from practice.
The rules Chan violated were 37 C.F.R. § 10.23(b)(4) (proscribing misrepresentation), § 10.23(b)(5) (proscribing conduct prejudicial to the administration of justice), and § 10.23(c)(15) (proscribing signing a paper filed in the Office in violation of the provisions of 37 C.F.R. § 11.18).
In the matter of Jesse Paul Suplizio (January 25, 2012)
This action is the result of a reciprocal disciplinary proceeding brought against Jesse Paul Suplizio, an attorney admitted to practice law in the State of Arizona. Suplizio was not a registered patent practitioner.
Suplizio was disbarred on ethical grounds from the practice of law in the State of Arizona. The Arizona Supreme Court issued the disbarment order based on uncontested evidence that Suplizio’s conduct violated various ethical rules relating to the scope of representation and allocation of authority between client and lawyer, diligence in representation, safekeeping of property and the termination of representation.
It is unclear what specifically Suplizio did factually, but in the Order of Interim Suspension from the Supreme Court of Arizona it is clear that Suplizio did not file a response to the Motion for Interim Suspension. He likewise did not file any response to the investigation initiated by the USPTO. It is never a good strategy to ignore ethical inquiries and hope they will go away.
In keeping with tradition, Suplizio was disbarred in Arizona so the USPTO excluded him from practice in trademark and other non-patent law related matters before the USPTO as the result of violating 37 C.F.R. § 10.23(b)(6) via 37 C.F.R. § 10.23(c)(5).
In the matter of Steven R. Scott (January 31, 2012)
This action is the result of a settlement agreement between Steven Scott (Registration No. 32,000) and OED.
Between November 2006 and September 2010, Scott signed and submitted to the Office five checks totaling $4,665.00 that were returned for having been drawn on an account bearing insufficient funds. He made good on all the checks and appeared that no clients were harmed by the check bouncing.
After this matter was brought to Scott’s attention by OED he opened a new client trust account and stated that he would deposit all government filing fees charged by the USPTO into the new client trust account. Scott also authorized the financial institution hosting the new client trust account to automatically notify the Florida Bar in the event any trust account check is returned due to insufficient funds. Finally, Scott took two continuing legal education classes covering (1) law firm financial management and (2) maintaining and managing a client trust account, each sponsored by the Florida State Bar.
The USPTO found that mitigating factors warranted only a public reprimand. These mitigating factors included: (1) Scott has been a registered patent practitioner for over twenty-five (25) years and had no prior disciplinary history; (2) Scott unequivocally accepted responsibility for his mistakes and was deeply remorseful; and (3) Scott’s current means of handling client funds earmarked for USPTO fees exceeds USPTO ethical requirements.
MORAL OF THE STORY: While there is not always a moral to be learned, other than don’t commit a felony and don’t get disbarred in your State, here we see that the USPTO is not looking to jam anyone up. Scott was a registered patent attorney for over a generation without any ethical issues. He bounced several checks, which is not something to aspire to, but mistakes in life happen. It is not that you make a mistake, but rather what you do once the mistake is made. Scott did everything right. He took responsibility and put in place new measures to make sure this would never happen again. Taking responsibility, being truly remorseful and taking steps to make sure mistakes won’t happen again, in combination with a clean record will go a long way at the USPTO.
The real story here is that Scott set the perfect example of what to do when problems arise.
TO BE CONTINUED…
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About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.