My 2013 ethics series continues, today looking at three disciplinary orders from June 2013. The theme today is failure to respond to a complaint from OED, which will guarantee that you are disciplined to whatever extent the Director of OED seeks. Failure to respond will result in a determination that there is no genuine issue of material fact, so if you should ever find yourself facing a disciplinary inquiry not responding is not an option. Your problems will not go away. Furthermore, failure to respond also prevents any good will that can be generated toward mitigating factors.
These summaries, as well as others in the 2013 Ethics & OED series, will be discussed during my ethics presentation on February 4, 2014, at the 8th Annual Patent Law Institute in New York City, and then again on March 18, 2013, in San Francisco.
For more articles in this series please see Ethics & OED.
In the Matter of Hugh P. Gortler (May 8, 2013)
In this disciplinary proceeding Hugh Gortler was publicly reprimanded by the USPTO in a reciprocal disciplinary proceeding. Gortler had been “publicly reproved” by the State of California as the result of his guilty plea to the misdemeanor of spousal battery.
Again, in this case, Gortler was served a complaint, given forty (40) days to respond, but no response was filed. Failure to respond is something that you see with surprising frequency in disciplinary proceedings. Failure to respond will lead to a determination that there is no genuine issue of material fact.
While 40 days may not seem like a long time to respond, particularly if you have an active practice, OED seems nearly universally willing to grant one or more extensions of time to respond. Even if you have done something that quite clearly demands discipline it seems to me that OED is willing to bend over to grant plenty of process and opportunity to be heard. Here Gortler was lucky, at least to some extent, because he was only reprimanded.
Time and time again in reciprocal discipline proceedings we see the USPTO handing down identical discipline to what was handed out at the State level. This is no doubt because State discipline creates a presumption that the imposition of reciprocal discipline is proper. See Selling v. Radford, 243 U.S. 46 (1917). Thus, seeking the identical penalty as already handed out at the State level is relatively easy and straight forward, and puts the responding practitioner at a significant disadvantage, requiring the Respondent to demonstrate lack of due process, severe lack of proof in the State proceeding or that a grave injustice would occur as the result of imposition of reciprocal discipline.
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In the Matter of Richard Chae (June 3, 2013)
Richard Chae is a registered patent agent who was suspended on an interim basis pursuant to 37 CFR §11.25(b), which gives the USPTO Director “authority to place a practitioner on interim suspension after hearing the request for interim suspension on the documentary record.” Interim suspension will allow for Chae to be prevented from representing individuals at the USPTO while a formal disciplinary proceeding against him is conducted. Chae’s June 28, 2012, conviction for offering to bribe a police officer, which is a felony offense under the California Penal Code, is what provoked this disciplinary proceeding.
Perhaps of interest, the USPTO had difficulty initiating this disciplinary proceeding. A copy of the Notice and Order and the Disciplinary Complaint were sent to the law firm address provided by Chae to OED, but the Post Office returned the mailing indicating that Chae could not be found at that address. Similarly, the mailing was also sent to him at a residential address, but that too was likewise returned by the Post Office. As a result, the Final Order that issued on February 12, 2013 was vacated due to failure of service.
Ultimately, OED successfully served Chae by publication in the Official Gazette, which is authorized pursuant to 37 CFR §11.35(b), which reads:
If a copy of the complaint cannot be delivered to the respondent through any one of the procedures in paragraph (a) of this section, the OED Director shall serve the respondent by causing an appropriate notice to be published in the Official Gazette for two consecutive weeks, in which case, the time for filing an answer shall be thirty days from the second publication of the notice. Failure to timely file an answer will constitute an admission of the allegations in the complaint in accordance with paragraph (d) of §11.36, and the hearing officer may enter an initial decision on default.
The lesson here is simply don’t commit a crime, which should be obvious enough probably. The greater lesson for the masses, however, is that you really do need to notify OED of address changes. Changing your address or law firm affiliation on the cases where you are representing is, of course, essential, but that does not work to keep OED notified. OED maintains a separate database. This is mandated by 37 CFR §11.11(a)(1), which states:
A registered practitioner must notify the OED Director of his or her postal address for his or her office, up to three email addresses where he or she receives email, and a business telephone number, as well as every change to any of said addresses or telephone number within thirty days of the date of the change. A registered practitioner shall, in addition to any notice of change of address and telephone number filed in individual patent applications, separately file written notice of the change of address or telephone number to the OED Director.
In the Matter of Stephen R. Robinson (June 11, 2013)
On June, 29, 2012, Robinson was disbarred by Order of the Supreme Court of Kansas for commingling client funds, including unearned fees and USPTO filing fees collected in advance, with his personal account. The commingled funds were used for personal use by Robinson. As a result of his disbarment, this USPTO disciplinary proceeding was initiated as the result of OED seeking reciprocal discipline.
On April 4, 2013, Robinson was notified that a Complaint for Reciprocal Discipline Pursuant to 37 CFR §11.24 was filed by OED, and that the complaint requested the Acting Director of the USPTO to impose reciprocal discipline. Robinson was given forty (40) days to respond. No response was made, which made it easy for the USPTO to proceed to exclude Robinson from practice at the USPTO.
Specifically, Robinson was excluded for violating 37 CFR §11.804(h), which defines professional misconduct as including being “publicly disciplined on ethical or professional misconduct grounds by any duly constituted authority…”
To the extent there is any greater lesson to be learned here other than don’t commingle funds, it has to be that if you do not respond you are going to have whatever discipline handed down against you that OED seeks.