On February 5, 2013, I will be in New York City giving a presentation on ethics at the 7th Annual Patent Law Institute. My lecture will be revisited in San Francisco, California on March 19, 2013, an event that will be webcast live.
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:
- Practitioner Discipline — January 2012
- Practitioner Discipline — July/August 2012
- Practitioner Discipline — October 2012
- Practitioner Discipline — November/December 2012
After starting with January and then fearing I would run out of time as I marched forward through all 48 disciplinary actions taken by OED during 2o12, I decided to start at the end of the year and work my way backwards. There were no reported decisions in September 2012, so that was an easy month to handle.
What follows are the decisions from June 2012, which are numerous.
The Road Forward: Software Patents in the Post-Alice Market
Join Gene Quinn and Scott Alter for a discussion on patent eligibility, techniques for claiming software, prosecution strategies and more. Wednesday, March 4, 2015 at 12pm ET ~ CLICK HERE to REGISTER
In the Matter of George Reardon (June 4, 2012)
George Reardon was a registered patent agent (Registration No. 53,505). He was also the President and Executive Director of the National Association of Patent Practitioners (NAPP). He was alleged to have misappropriated at least $116,894.80 in NAPP funds and provided false annual financial reports to NAPP. Reardon did not admit to any wrongdoing or violation of the Disciplinary Rules of the USPTO, but he did choose to file an affidavit of resignation during the pendency of an investigation into the alleged misappropriation of funds. As a result, the United States Patent and Trademark Office (USPTO) accepted Reardon’s resignation and ordered his exclusion from practice before the Office.
While Reardon did not admit to violating any of the Disciplinary Rules of the USPTO Code of Professional Responsibility, he 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 him are true, and (ii) he could not have successfully defended herself against such allegations.
Reardon was charged with violating 37 CFR 10.23(a), 10.23(b)(3), 102.23(b)(4) and 10.23(b)(6).
In the Matter of Karla Shippey (June 11, 2012)
Karla C. Shippey was an attorney licensed in California and authorized to represent others before the USPTO in trademark and non-patent matters. She is not a registered patent practitioner and is not authorized to practice patent law before the USPTO.
On July 6, 2011, the Supreme Court of California Ordered Ms. Shippey be suspended for one year, stayed that suspension, placed her on two-year probation, and suspended her for the first six months of her probation. Thus, it seems that it would be more accurate to say Shippey was suspended for six months and placed on probation for an 18 months thereafter.
The discipline was predicated upon a determination that Ms. Shippey failed to obtain loan modifications or perform any other legal services of value in the representation of seven clients; failed to respond to a Notice of Missing parts and other correspondence from the USPTO and thereby causing clients’ patent applications to become abandoned; failed to forward an issue fee to the USPTO, causing the client’s patent application to become abandoned; failed to promptly refund fees paid in advance by clients for legal services, despite not having earned the fees; and failing to promptly refund fees paid by a client to cover an issue fee, despite not having forwarded the issue fee to the USPTO.
Surprisingly, there was no discussion of that fact that the actions of Ms. Shippey constituted the unauthorized practice of law before the United States Patent and Trademark Office. Clearly, the allegations leveled against Shippey suggest that she was prosecuting patent applications by and for clients. Such activities are supposed to be undertaken only by registered patent practitioners.
Notwithstanding, Ms. Shippey has been suspended for one year and placed on probation for two years by the USPTO for violating 37 C.F.R. § 10.23(b)(6) via 37 C.F.R. § 10.23(c)(5) by having been suspended on ethical grounds by a duly constituted authority of the State of California. After completing six months of her USPTO suspension, Ms. Shippey may seek reinstatement pursuant to 37 C.F.R. § 11.60. If reinstated, Ms. Shippey will be permitted to practice in trademark and non-patent matters before the USPTO during her probationary period, provided she otherwise satisfies the conditions of 37 C.F .R. § 11.14(a) and is not subsequently suspended or excluded from practice before the Office.
Of potential interest is the fact that much of the decision in this case revolved around Shippey’s claim that there was insufficient justification for the imposition of discipline identical to that imposed by the California Supreme Court. To this the OED responded by citing Selling v. Radford, 243 U.S. 46 (1917), which set the standards for imposing reciprocal discipline on the basis of a state’s disciplinary adjudication. Under Selling, the state disbarment creates a federal-level presumption that imposition of reciprocal discipline is proper unless an independent review of the record reveals: (1) a want of process, (2) an infirmity of proof of the misconduct, or (3) that grave injustice would result from the imposition of reciprocal discipline. The standard the responding attorney must meet is one of clear of convincing evidence that the Selling factors preclude reciprocal discipline. Simply, Shippey did not meet that burden.
Also of interest is the fact that Shippey argued in part that the basis for her discipline in California related only to mortgage loans and not anything of consequence or concern for the USPTO. To this the USPTO pointed out “the Office notes that certain conduct that was stipulated to by Respondent, and which now form the basis of this reciprocal discipline, did involve the processing of matters pending before the Office. See Stipulation, patent Matters…”
Again, I am confused as to why the Patent Office did not do more than what they did to discipline Shippey. She was an attorney admitted in California but not a member of the patent bar. By the terms of this decision and what she stipulated to in the State of California she was engaging in the unauthorized practice of law before the USPTO. What good is a requirement that only registered patent practitioners are allowed to engage in patent practice before the Office if the Office doesn’t enforce the requirement?
I’m not suggesting that becoming a member of the patent bar is a waste of time. No one in their right mind would run the risk that the USPTO will eventually start to enforce the laws as they are written. As a member of the patent bar it is, however, rather frustrating that the USPTO does not do more to stop the unauthorized practice of law.
In the Matter of Jeffrey Bivens (June 13, 2012)
Jeffrey Randall Bivens was an attorney admitted to the practice of law in the State of Washington. He was not a registered patent practitioners, therefore he was not authorized to practice patent law before the USPTO.
The Disciplinary Board of the Washington State Bar Association issued a Statement of Alleged Misconduct, which charged Bivens of making material misrepresentations to a bank and the United States Small Business Association during his representation of the owner/seller of a company. Bivens was charged with a felony in the U.S. District Court for the Western District of Washington, ultimately entering a guilty plea to the charges brought. Bivens submitted an affidavit of resignation on the State of Washington in lieu of disbarment.
In a reciprocal disciplinary proceeding, the USPTO ordered Bivens be excluded from the practice of trademark and non-patent law before the USPTO for violating 37 CFR 10.23(b)(6) via 37 C.F.R. § 10.23(e)(5)(i) by being disbarred on ethical grounds from the practice of law in the State of Washington.
In the Matter of Paul N. Peterson (June 15, 2012)
Paul Peterson was alleged to have violated 37 CFR 10.23(b)(3) by being convicted of the crime of theft in Ohio and for misappropriating money from a client’s business checking account. Further, Peterson was alleged to have violated 37 CFR 10.23(b)(4) by obtaining a check debit card tied to a client’s business checking account and using that card to withdraw funds without the client’s knowledge, permission, or consent. He was also alleged to have written checks on the client’s business checking account without the client’s knowledge, permission, or consent.
Peterson did not admit to any wrongdoing or violation of the Disciplinary Rules of the USPTO, but he did choose to file an affidavit of resignation during the pendency of an investigation into the alleged misappropriation of funds. As a result, the United States Patent and Trademark Office (USPTO) accepted Peterson’s resignation and ordered his exclusion from practice before the Office.
If and when Peterson 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.
In the Matter of Francis H. Lewis, Jr. (June 21, 2012)
Francis H. Lewis, Jr. is a registered patent attorney (Registration No. 27,684) licensed to practice law in the State of California.
As the result of an Order of the Supreme Court of California, Lewis was suspended for two years. The suspension was stayed, but he was placed him on a two-year probation, and suspended him for a minimum of the first nine months of his probation and until he makes restitution to two clients. Thus, it would seem more accurate to say that Lewis was suspended for a minimum of nine months, but at least until he makes restitution, and thereafter placed on probation.
The discipline of Lewis was predicated upon a determination that he violated California Rules of Professional Conduct by representing three clients without their informed written consent in a landlord-tenant matter when the interests of the clients potentially conflicted. Furthermore, Lewis’ client trust account did not properly reconcile and he was alleged to have misappropriated at least $7,687.84 of his client’s funds.
In a reciprocal disciplinary proceeding, Mr. Lewis was suspended for two years from the practice of patent, trademark, and other non patent law and placed on probation for two years by the United States Patent and Trademark Office (“USPTO”) for violating 37 C.F.R. § 10.23(b)(6) via 37 C.F.R. § 10.23(c)(5) by having been suspended on ethical grounds by a duly constituted authority of the State of California. Lewis may seek reinstatement after nine months and after having made the required restitution identified in the California Supreme Court Order.
In the Matter of Brett N. Dorny (June 21, 2012)
Brett N. Dorny was a registered patent attorney (Registration No. 35,860. The Supreme Court Judicial Court for Suffolk County, Massachusetts disbarred Mr. Dorny from the practice of law for violating Massachusetts Rules of Professional Conduct. The rules violation was predicated on Mr. Dorny’s intentional misuse of client funds, multiple instances of neglect of client matters, intentional misrepresentations to clients to hide his neglect, submission of falsified documents and intentional misrepresentations to and failure to cooperate with bar counsel during the course of their investigation.
The USPTO initiated a reciprocal disciplinary proceeding pursuant to 37 CFR §§ 11.24 and 11.59. Due to the inability to server Dorny at his last known address, the USPTO served him by publication pursuant to 37 CFR 11.24, in the Official Gazette on April 24, 2012 and again on May 1, 2012. After time elapsed for Dorney to file a response the USPTO ordered Domy excluded from the practice of patent, trademark, and other non-patent law before the USPTO for violating 37 CFR 10.23(b)(6) by being disbarred on ethical grounds by a duly constituted authority of the State of Massachusetts. He was further ordered to refund fees to clients that he did not earn.
In the Matter of David Malveaux (June 22, 2012)
David Malveaux is a registered patent attorney (Registration No. 57,356) licensed to practice law in the State of California. By Order if the Supreme Court of California, Malveaux was suspended for three year. The suspension was stayed and he was placed him on a four-year probation, but further suspended him for ninety days of his probation. Thus, it would seem more accurate to say that Malveaux was suspended for ninety days and placed on probation for a subsequent 45 months.
Malveaux’ discipline was predicated upon two State Bar Court matters. Respondent faxed to the State Bar a three-page medical report for evaluation of substance abuse in connection with a then pending disciplinary proceeding, however, he misrepresented to the Slate Bar that the report had been prepared by a particular doctor. By submitting the medical report which was not authored by the doctor to the State Bar and representing to the State Bar that the report had been prepared by that doctor, he committed an act involving moral turpitude, dishonesty, or corruption in willful violation of the California Business and Professions Code. Malveaux also failed to comply with quarterly reporting conditions and the substance abuse conditions of his previous disciplinary proceeding.
In a reciprocal disciplinary proceeding, Mr. Malveaux was suspended for ninety days from the practice of patent, trademark. and other non-patent law before the USPTO for violating 37 CFR 10.23(b)(6) via 37 CFR 10.23(c)(5)(i) by having been suspended on ethical grounds by a duly constituted authority of the slate of California.
In the Matter of Henry N. Portner (June 22, 2012)
Henry N. Portner, an attorney licensed in Florida and authorized to represent others before the USPTO in trademark and non-patent matters. Mr. Portner is not a registered patent practitioner and is not authorized to practice patent law before the USPTO.
Portner was publicly reprimand in the State of Florida as the result of directly mailing advertisements for foreclosure defense and loan modification representation on various occasions in 2009. Statements in the direct mail advertisement were misleading; the advertisement lacked the necessary language stating that “If you have already retained a lawyer for this matter, please disregard this letter;” failed to disclose how respondent obtained the intended recipient’s name and address; lacked the name of the lawyer responsible for the content of the advertisement; the trade name listed in the advertisement was misleading; and the advertisement was not timely filed for review either before or simultaneously with the dissemination of the advertisement to the public as required under Florida Rules.
In a reciprocal disciplinary proceeding, the USPTO Director ordered that Mr. Portner be publicly reprimanded for violating 37 C.F.R. § 10.23(b)(6).
Perhaps of interest is the fact that Portner decided to challenge the USPTO ability to apply reciprocal discipline. Obviously, Portner didn’t learn in law school about putting the shovel down when you are in a hole rather than renewing digging with more vim and vigor! In my opinion there is nothing to be gained typically by challenging, and certainly not so when the penalty is a reprimand. Perhaps it is not as foolish as filing an action in Court, which seems to nearly universally result in more punishment, but still, what was he thinking?
In any event, Portner challenged the reciprocal discipline for 9 separate reasons:
- The Rules Regulating the Florida Bar violate the First Amendment;
- The Rules Regulating the Florida Bar violate his constitutional right to practice in Interstate Commerce;
- The Rules Regulating the Florida Bar amount to prior restraint on speech and differ materially from the rules in five other states where he practices law;
- The Florida Bar Board of Ethics met in secret resulting in a violation of his due process rights;
- Florida Bar officials raised their recommended discipline from “minor misconduct” to a public reprimand without cause;
- Rules Regulating the Florida Bar violated due process because Respondent was barred from appearing in his defense;
- USPTO imposition of reciprocal discipline would be arbitrary, capricious, unreasonable and unconstitutional;
- He was under “extreme business compulsion and economic duress from the Florida Bar” when he agreed to his public reprimand; and
- The Rules Regulating the Florida Bar were adopted without study or proof that the rules were the least restrictive of the rights of attorneys.
First, allow me to point out that I think I have an idea why the Florida Bar may have raised the recommend discipline from “minor misconduct” to a public reprimand. When in an ethical hole simply put the shovel down, stop digging and ask for forgiveness!
Second, the USPTO pointed out that his challenges of the constitutionality of the Florida Bar rules and their supposed inappropriate adoption and his state of mind cannot be contested. Portner could have raised these issues in Florida and gone to the Supreme Court of Florida, but instead he entered a guilty plea and sought a consent judgment asking the Supreme Court of Florida to impose the public reprimand he received.