Mariano Rivera knows something about perfection. The New York Yankees now-retired pitcher is regarded by many experts as the greatest closer in the history of major league baseball. For those who are not aficionados of America’s Pastime, the closer comes in after the game has largely been played, and his sole job is to get the last several opposing batters out. For seventeen seasons, Mariano Rivera (a.k.a. “the Sandman”) dominated at his position and was virtually unhittable.
The USPTO Director also knows something about perfection, albeit in a far different context than baseball. For six years, the USPTO Director has dominated opposing patent practitioners, who have gone hitless against the Office in cases involving reciprocal ethical discipline.
“Reciprocal discipline” is a process for disciplining an attorney in a second jurisdiction after the attorney has been ethically disciplined by another jurisdiction. A patent or trademark attorney who is publicly disciplined in another jurisdiction is subject to reciprocal discipline by the USPTO, even if the attorney’s conduct has nothing to do with their practice before the Office. And while it is theoretically possible for a patent or trademark practitioner to avoid reciprocal discipline in the USPTO, in reality they would have a better chance of hitting a Rivera cut fastball blindfolded with one arm tied. To date, the USPTO’s record in Section 11.24 cases is a perfect 77-0, and counting. Practitioners, meet the “Sandman.”
Each year the Practising Law Institute hosts its annual Patent Litigation Seminar. I will be speaking at the New York Patent Litigation 2014 program, which will take place from November 10-11, 2014. There will be an earlier presentation of the program in Chicago, IL, from October 6-7, 2014. I have this on the brain at the moment because my written materials for my presentation were due last week.
In New York I will be presenting on the topic of ethics, which will result in 1 credit of ethics, always useful for those who are required by their State bars to obtain continuing legal education credits annually.
In addition to discussion of the relatively newly adopted USPTO Rules of Professional Conduct, my presentation will also discuss a variety of other matters. Those who have seen my ethics presentations before know that one of the things I particularly like to do is dive into the OED Reading Room and find interim decisions and final orders. These decisions and final orders give us the best insight into what type of activity the Office of Enrollment and Discipline focuses on. Such an approach winds up being informative, allows us to discuss the substantive ethics rules and alleged violations, and frequently to feel better about ourselves knowing that our practices are set up so that the catastrophe that lead to OED inquiry could never happen to us.
Of course, every once in a while review of OED disciplinary activity may make even the most conscientious among us take a hard swallow. This is not to suggest that many practitioners will believe they are potentially in trouble, but legal ethics is not about morality or morals in any larger sense. Legal ethics is about rules, and the wisest approach to the matter is to know where the line is and stand well clear. Sometimes, however, some might be far closer to the line than they might have anticipated.
The Ethics & OED series continues, today looking at three more orders in reciprocal disciplinary proceedings at the United States Patent and Trademark Office. The totality of this series will make up the backbone of my ethics presentation at the 8th Annual Patent Law Institute sponsored by the Practising Law Institute, which will take place in New York at the beginning of February 2014, and which will be reprised live in San Francisco in mid-March 2014.
These three proceedings, like every other reciprocal disciplinary proceeding, demonstrate the overwhelming importance of obtaining the best resolution possible when the State ethics authorities come knocking. Because there is a presumption that reciprocal discipline is appropriate, to prevail at the USPTO you would need to demonstrate that there was a lack of due process, complete lack of evidence or that there is some manifest injustice that would occur if discipline were to be handed out by the USPTO.
Whether we like it or not, you are going to be disciplined by the USPTO to the same extent you were disciplined by the State ethics panel, or a Federal Court (see Graham below). However, this sometimes seems to lead to unequal treatment of practitioners who are similarly situated but for the State in which they are admitted. Eventually someone will raise an equal protection argument, but you don’t want that to be you. It would have a significant uphill battle no doubt like all such arguments, but it would be very nice for OED to take a step back and consider whether it is fair to simply defer its own disciplinary authority to the States.
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.
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.
My 2013 ethics series continues, today looking at several final orders in disciplinary proceedings resolved in April 2013.
These, together with the other orders from the Office of Enrollment and Discipline from our 2013 ethics series, will be at the core of my ethics presentation on February 4, 2014, at the 8th Annual Patent Law Institute in New York City. The event will be live and webcast, and then reprised on March 18, 2013, in San Francisco.
This case relates to Leonard Tachner of Irvine, California. Tachner was suspended from practice before the Office in patent, trademark, and non-patent matters for five years for severely neglecting his patent practice to the detriment of his clients, but with a provision that would allow him to apply for reinstatement after serving four years of the suspension. This action is the result of a settlement agreement between Tachner and the OED Director pursuant to the provisions of35 U.S.C. §§ 2(b)(2)(D) and 32 and 37 C.F.R. §§ 11.19, 11.26, and 11.59.
My 2013 ethics series continues, today looking at several more final orders in disciplinary proceedings at the United States Patent and Trademark Office.
The title here is a little misleading. There was only a single final action in March 2013, so I’ve also included one decision from April 2013. Discussion of the remaining two decisions from April will appear in the next installment of the series.
The totality of this series will make up the backbone of my ethics presentation at the 8th Annual Patent Law Institute sponsored by the Practising Law Institute, which will take place in New York at the beginning of February 2014, and which will be reprised live in San Francisco in mid-March 2014.
Next year I will be speaking at the 8th 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 3-4, 2013, and live from San Francisco, CA on March 17-18, 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 generally raised by the practice of patent law, perhaps spending some time discussing the Traps for the Unwary within the America Invents Act, I also always like to do a rundown of recent OED disciplinary proceedings. For more articles on this topic please see Ethics & OED.
With this in mind, I will be publishing summaries of the disciplinary proceedings before the Office of Enrollment and Discipline at the United States Patent and Trademark Office from 2013. I have already published the first article in the series, which related to the reinstatement petition granted to Hunaid Basrai in June of 2013.
What follows are the OED decisions from the first quarter of 2013. There were no decisions in January 2013.
It is that time of the year again where I am preparing my materials for my yearly ethics presentation, which will take place during the 8th Annual PLI Patent Law Institute. This year the Patent Law Institute will take place in New York City on February 3-4, 2013, and in San Francisco on March 17-18, 2013. The webcast will be from the New York location on February 3-4.
One of the primary segments of my ethics presentations is always a rundown of the activities of the Office of Enrollment and Discipline over the last year or so. As I started to review the cases one case jumped out at me that deserved stand alone attention. The case is In re Hunaid Basrai, which was decided on June 18, 2013.
According to §11.15 “Any practitioner who is suspended or excluded under this Part shall not be entitled to practice before the Office in patent, trademark, or other non-patent matters while suspended or excluded.” However, reinstatement to practice after is possible. In order to be reinstated, however, the disciplined practitioner must serve the sentence and then petition the Office for reinstatement.
It is not common to see a petition for reinstatement, much less an actual reinstatement. That is, however, what happened with respect to Mr. Basrai, who was suspended nunc pro tunc from October 26, 2009, for a period of 60 months, but with the last 24 months stayed. Basrai’s petition for reinstatement was successful, and he is once again a patent agent registered to practice at the USPTO.
The United States Patent and Trademark Office (USPTO) announced earlier today that effective May 3, 2013, it will update the USPTO Rules of Professional Conduct that govern practitioners who practice before the USPTO. These new USPTO ethics rules are based on the American Bar Association’s Model Rules of Professional Conduct, which were published in 1983, substantially revised in 2003 and updated through 2012.
The Federal Register Notice explains that currently there are approximately 41,000 registered patent practitioners, with at least 75% of the roster of patent practitioners being attorneys who are admitted in one or more States. Given that the ABA Model Rules have been adopted by 49 states and the District of Columbia, nearly all of the attorneys registered to practice at the USPTO are already professionally governed by ethics rules modeled from the ABA Model Rules of Professional Conduct. Thus, this change should not be considered to be a substantive change to the rules that apply to patent attorneys.Indeed, the Federal Register Notice explains that this USPTO efforts “benefits and reduces costs for most practitioners by clarifying and streamlining their professional responsibility obligations.” Of course, for those who are patent agents, however, the rules will be different.
What follows are the decisions from April and May 2012. In this time period in 2012 at the OED the Office found themselves dealing with a patent attorney that accepted referrals from an invention promotion company, a patent attorney that didn’t notify a client of an abandoned application, a trademark attorney that submitted false statements in three petitions to revive abandoned applications and a reciprocal discipline involving negligence associated with maintaining a Trust Account.