Ethics & OED: Practitioner Discipline at the USPTO Oct. 2012

bI 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.

What follows is discussion of the two disciplinary proceedings undertaken by the USPTO during the month of October 2012. First up is a situation where the USPTO went after an attorney in California who engaged in representation of trademark clients. Richard Gibson was not a patent practitioner, yet OED went after him for violation of various ethical rules, which is something recently new for the USPTO to do.  The second case is a case where a patent practitioner was caught up in a sting operation. The sting was searching for adults soliciting sex from minors in Seattle, Washington.

In the Matter of Richard H. Gibson (October 4, 2012)

On September 25, 2012, Richard Gibson submitted an Affidavit of Resignation, submitted for the purpose of being excluded on consent pursuant to 37 C.F.R. § 11.27. This case is noteworthy because Gibson was not a registered patent practitioner, but rather was an attorney licensed by the State of California. As an attorney in good standing in California Gibson was authorized to practice before the USPTO with respect to trademark and other non-patent matters,  see 37 C.F.R. § 11.14(a), and was the attorney of record in several trademark applications filed with the USPTO. Thus, Gibson was subject to the USPTO Code of Professional Responsibility. See 37 C.F.R. § 11.19(a).

The Affidavit of Resignation by Gibson was provoked by the disciplinary complaint pending against him. While Gibson did not admit to violating any of the Disciplinary Rilles of the USPTO Code of Professional Responsibility, if and when he applies for reinstatement, the OED Director will conclusively presume for the limited purpose of determining the application for reinstatement that (1) the allegations set forth in the disciplinary complaint were true, and (2) he could not have successfully defended himself against such allegations.

The complaint alleged that Gibson filed a client’s trademark applications in an untimely manner, did not inform the client about Office correspondence received in connection with trademark applications, failed to respond to Office correspondence, allowed trademark applications to become abandoned without the client’s knowledge or consent, made false or misleading statements to the client about the status of its trademark applications, and did not obtain the client’s consent after full disclosure of actual or potential conflicts of interests before simultaneously representing the client and another client of his with whom he had financial and business dealings.

The complaint against Gibson alleged that he violated the following Disciplinary Rules of the USPTO Code of Professional Responsibility: 37 C.F.R. §§ 10.77(a), 10.77(c), 10.23(a) and (b) via 37 C.F.R. § 10.23(c)(8), 10.23(b)(4), 10.62, 10.66, 10.84, and 10.40(a).

An interesting question is whether the USPTO will start to go after those who are not registered to practice before the Office. Over the years I have wondered in many writings when the USPTO would crack down on the many non-attorney legal services within the patent and trademark space. Indeed, back in 2008 I was told that the USPTO was changing to rules of practice (specifically 37 C.F.R. § 11.5) to specifically address non-attorney legal services. I would later learn that the USPTO has never believed that they have the authority to go after non-attorneys, which is peculiar at least on the patent side of the building since the USPTO does require a registration examination to practice. Not having the authority to prohibit practice by those who haven’t been admitted to practice has always seemed bizarre to me, and continues to seem bizarre.

Those who may wish that the Gibson case signals a more active USPTO will likely be disappointed. If you look specifically at 37 C.F.R. § 11.19(a), the language of the rule seems to exclusively given the USPTO authority over “practitioners.” Thus, an argument could be made that OED went after Gibson only because he was a practitioner admitted in California, which seems to be why OED says they had jurisdiction if you read the Final Order in this matter. Perhaps OED will spread its wings and eventually tackle the many non-attorney services in the patent and trademark space.

In the Matter of Mr. B (October 31, 2012)

This case dates all the way back to 2009. On July 8, 2009, the OED Director filed a disciplinary complaint against B and on October 26, 2009, Director Kappos entered an order suspending Mr. B on an interim basis while the complaint was referred to a hearing officer for the purpose of conducting a formal disciplinary proceeding? What would warrant summary suspension without process being finalized? Mr. B was convicted of attempting to have sex with a minor.

Mr. B was caught in an Internet sting run by the Seattle Police Deparment. On July 25,2007, a detective in the Seattle PD was conducting an investigation on the Internet posing as a 13 year-old female under a pseudo-name “JL.” Mr. B and the detective struck up a conversation.  Ultimately it was agreed that Mr. B and JL would meet at a local Blockbuster Video Store for the purpose of engaging in sexual activity. B would claim that even though JL presented as 13 years old he believed it reasonable to suspect JL was an adult. That argument didn’t fly.

B ultimately pled guilty to Attempted Child Molestation in the Second Degree, which is a felony offense. He was ordered confined for twelve months in a home detention program (later reduced to 8 months) and to participate in a program for the treatment of sexual deviancy, and to register in the Washington State Sex Offender Registration program. Mr. B fully served his sentence on July 14, 2009.

A mitigating factor in this matter was the OED Director’s receipt of a factual statement from the state court judge who sentenced Mr. B and monitored his probation. The judge expressed that Mr. B had complied with all rules and requirements of treatment and probationary supervision. The fact that Mr. B accepted responsibility in both the criminal and disciplinary proceedings seemed to also be considered a mitigating factor.

Notwithstanding, the USPTO ordered Mr. B suspended from October 26,2009, for sixty (60) months, with the final twenty-four (24) months of the suspension stayed, and placed on probation for sixty (60) months also from October 26, 2009.  If my math is correct that means that Mr. B was suspended for thirty-six (36) months, making him ineligible to practice before the USPTO until October 26, 2012. Separately in the Order, however, is the requirement that Mr. B “shall be permitted to seek reinstatement under 37 C.F.R. § 11.60 to practice, patent, trademark, and non-patent law before the USPTO after serving the first thirty-six (36) months of his suspension…” As of the writing of this (on December 10, 2012) a search for Registration No. 53,973 returns no found matches.

The rules Mr. B violated were 37 C.F.R. §§ 10.23(a) (engaging in disreputable or gross misconduct), 10.23(b)(3) (engaging in illegal conduct involving moral turpitude), and 10.23(b)(6) (engaging in conduct that adversely reflects on his fitness to practice before the Office).