Ethics & OED: Practitioner Discipline at the USPTO July/Aug. 2012

I will be presenting the ethics lecture 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 a simultaneous webcast from San Francisco for those who are unable to attend in person.

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.

So far I have written the following articles in Ethics & OED series:

An odd order sequencing I know, but with great energy and certainty that I wouldn’t run out of time I set out to ambitiously review the 48 disciplinary actions taken by OED during 2o12. Then as the calendar started to no longer be an alley I thought that perhaps I should work my way backwards.

With this in mind, what follows is discussion of the two disciplinary proceedings undertaken by the USPTO during the months of July and August 2012. There were no OED disciplinary decisions from September 2012.

In the Matter of Hugh D. Jaeger (July 9, 2012)

Hugh D. Jaeger of Wayzata, Minnesota, is an attorney licensed to practice in both Minnesota and Pennsylvania. He is also a registered patent attorney (Registration No. 27,270). The Supreme Court of Minnesota suspended Jaeger for violating various Minnesota Rules of Professional Conduct for neglecting client matters, signing documents without consent, failing to return client files and failing to cooperate with the disciplinary investigation into his actions. In what was essentially a negotiated resolution, the August 11, 2011 Order of the Supreme Court of Minnesota indefinitely suspended Jaeger for a minimum of 120 days and ordered that he be placed on inactive status (i.e., retired) following the end of his suspension period. The Supreme Court of Minnesota Order also notes that Jaeger agreed not to apply for reinstatement to practice in Minnesota and that he would not apply for admission (or readmission) to any other bar in any other jurisdiction. As the result of this Minnesota proceeding Jaeger was also similarly ordered suspended by Supreme Court of Pennsylvania.

The USPTO issued a Notice and Order Under 37 CFR 11.24, which gave Jaeger 40 days to respond. No response was forthcoming. Thus, as the result of this reciprocal disciplinary proceeding, the USPTO suspended Jaeger for a minimum of 120 days. After serving the 120 day suspension, the OED Order suggests that he may request reinstatement pursuant to 37 CFR § 11.60 for the sole purpose of being placed on voluntary inactive status. The OED order, similar to the Order of the Supreme Court of Minnesota, forbids Jaeger from being restored to active status as a member of the patent bar. Thus, for all intents and purposes Jaeger was disbarred.

If you read through disciplinary orders from OED you start to become familiar with the language used and the penalties handed out. This effective disbarment of Jaeger is peculiar in ways, but illustrative of what we see over and over again in other ways. It is peculiar for the Office to invite reinstatement only for the purpose of voluntarily going on inactive status. That, however, seems perfectly consistent with the Order of the Supreme Court of Minnesota. Thus, once again we see that the discipline handed out by the State will be equivalent to the discipline ordered by the USPTO in a reciprocal disciplinary proceeding.

Reading between the lines, and based on a 27,270 registration number, it seems that Jaeger was at or near the end of his career anyway. In order to get this disciplinary matter to go away he essentially agreed never to practice law again. In return the States of Minnesota, Pennsylvania and the USPTO will allow Jaeger to end his practice career as “retired inactive” rather than disbarred.

In the Matter of Anthony J. De Laurentis (August 1, 2012)

Anthony J. De Laurentis (Registration No. 24,757) was disbarred on consent from practicing law in Maryland for participating in a conspiracy to suppress completion in three auction sales of tax liens throughout the state of Maryland in violation of the Sherman Antitrust Act (15 U.S.C. § 1). He was not criminally charged, recognized his wrongful conduct and voluntarily terminated his participation in the conspiracy. De Laurentis also fully cooperated in an investigation by the United States Department of Justice that culminated in the indictment and conviction of his co-conspirators.

The USPTO issued a Notice and Order Under 37 CFR 11.24, which gave De Laurentis 40 days to respond. No response was forthcoming. Thus, as the result of this reciprocal disciplinary proceeding, the USPTO excluded De Laurentis from practice for violating 37 CFR 10.23(a) and (b) as the result of being disbarred in the States of Maryland. Rule 10.23(a) is the one that prohibits a practitioner from engaging in “disreputable or gross misconduct.”

Rule 10.23(b) lists various things not to do. There are any number of sections of 10.23(b) that, could fit. The closest fits seems to be:

10.23(b)(3), which prohibits a practitioner from engaging in “illegal conduct involveing moral turpitude.”
10.23(b)(4), which prohibits a practitioner from engaging in “conduct involving dishonesty, fraud, deceit, or misrepresentation.”
10.23(b)(6), which prohibits a practitioner from engaging in “any other conduct that adversely reflects on the practitioner’s fitness to practice before the Office.”

Moral of the Story: Don’t commit a crime!

In the Matter of Mark L. Chael (August 1, 2012)

On September 26,2011, the Supreme Court of Illinois ordered that Mark L. Chael (Registration number 44,601) be suspended from the practice of law for six (6) months for violating Rules of Professional Conduct by attempting to charge an unreasonable fee, by engaging in conduct involving dishonesty, fraud, deceit or misrepresentation, and by engaging in conduct which tends to defeat the administration of justice, or to bring the courts or the legal profession into disrepute. According to the Illinois State Bar Association website, Chael “recorded more than 260 hours of time he falsely claimed to have spent on behalf of one of the firm’s clients during a two-month period.”

The USPTO issued a Notice and Order Under 37 CFR 11.24, which gave Chael 40 days to respond. No response was forthcoming. Thus, as the result of this reciprocal disciplinary proceeding, the USPTO determined that there was no genuine issue of material fact. The USPTO further determined that suspension was the appropriate discipline. Chael was suspended from the practice of patent, trademark, and non-patent law before the USPTO for a period of six (6) months for violating 37 CFR 10.23(b)(6) via 37 CFR 10.23(c)(5)(i) by having his license to practice law in the state of Illinois suspended on ethical grounds by the Supreme Court of Illinois.

The USPTO suspension was applied nunc pro tunc. Discipline imposed nunc pro tunc is appropriate only if the practitioner: (1) promptly notified the OED Director of his or her suspension or disciplinaary 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. That was found to be the case effective October 17, 2011, thus the six (6) month suspension started effective that date.

Chael was a partner with a prominent Chicago patent firm. He is no longer listed on that firm’s site.

In the Matter of Heather L. Mansfield (August 2, 2012)

Heather L. Mansfield of Westfield, New Jersey, was a registered patent attorney (Registration No. 39,157). The Director o f the United States Patent and Trademark Office (“USPTO” or “Office”) has accepted Ms. Mansfield’s affidavit of resignation and ordered her exclusion on consent from the practice ofpatent, trademark, and non-patent law before Office.

Mansfield voluntarily submitted her affidavit of resignation at a time when a disciplinary investigation was pending against her, thus she is deemed to have conclusively acknowledged that her conduct violated 37 C.F.R. §§ 10.23(b)(5) and 10.23(a) via 10.23(c)(1) predicated upon certain acts that culminated in her guilty plea and conviction of one count of “Interference with Custody of Children – Conceal” in the Superior Court of New Jersey, Hunterdon County on January 5,2012. This stemmed from charges brought on March 3, 2011, by the New Jersey State Police, for Kidnapping and Interference with Custody. An Amber Alert was authorized and she was apprehended near the Canadian border. See Hunterdon County Press Release.

While Ms. Mansfield did not admit to violating any of the Disciplinary Rules of the USPTO Code of Professional Responsibility, she acknowledged that, if and when she does apply for reinstatement, the OED Director will conclusively presume, for the limited purpose of determining the application for reinstatement, that (i) the allegations set forth in the disciplinary investigation against her are true, and (ii) she could not have successfully defended herself against such allegations.

Gene Quinn Gene Quinn is a patent attorney and a leading commentator on patent law and innovation policy. Mr. Quinn has twice been named one of the top 50 most influential people [...see more]

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