PTO Proposes Rules for OED Patent Practitioner Discipline

On Thursday, January 5, 2012, the United States Patent and Trademark Office published three Notices of Proposed Rulemaking regarding implementation of various provisions of the Leahy-Smith America Invents Act (AIA). A fourth Notice of Proposed Rulemaking was published in the Federal Register on Friday, January 6, 2012.  The Notices of propose rules concern inventor oaths and declarations (77FR982), as well as for third party submissions of prior art (77FR448) in a patent application and for third party citations of prior art (77FR442) in a patent file. The Patent Office also published proposed rules related to the statute of limitations under which registered practitioners may be disciplined for misconduct before the Office (77FR457).

When I first set out to write this article my intention was to do something that briefly summarized the proposed rules to bring everyone up to speed.  Unfortunately, that is not going to be possible.  These proposed rules are the first wave of rules in 2012 that are aimed at the implementation of the AIA.  As we all well knew, the changes to patent law and practice were going to be enormous.  Even these seemingly peripheral rules have layers of nuances, making cursory summary nearly impossible.  For that reason I am going to go one at a time through the proposed rules, today tackling the proposed rules relating to the time limit for the Office of Enrollment and Discipline to bring an action against a patent practitioner for alleged misconduct.

Before proceeding with discussion of the statute of limitations issue, it is worth noting that these proposed rules are just the beginning.  The USPTO expects to publish additional proposed rules implementing other AIA provisions later this month. These subsequent publications will likewise be posted in the Federal Register and will also have a sixty-day comment period. The Patent Office has said that proposed rules due out later in January will relate to rules for supplemental examination, inter partes review, post-grant review, the transitional program for covered business methods, and derivation.  I will be taking each of the proposed rules one-by-one.  It is going to be a busy 2012 to keep up with the proposed changes and final rules that need to come on line sometime during 2012.


OED Statute of Limitations

The Leahy-Smith America Invents Act (AIA) requires that disciplinary proceedings be commenced not later than the earlier of the date that is 10 years after the date on which the misconduct forming the basis of the proceeding occurred, or one year from the date on which the misconduct forming the basis of the proceeding was made known to an officer or employee of the USPTO.  See Section 3 of the AIA, amending 35 U.S.C. 146(k).

Generally speaking, there are four steps taken by the Office of Enrollment and Discipline (OED) prior to the filing of a disciplinary complaint against a practitioner: (1) Preliminary screening of the allegations made against the practitioner; (2) requesting of information from the practitioner about his or her alleged conduct; (3) conducting a thorough investigation after providing the practitioner an opportunity to respond to the allegations; and (4) submitting the investigated case to the Committee on Discipline for a determination of whether there is probable cause to bring charges against the practitioner.

Under the proposed regulation, the one-year statute of limitations begins to run for when the OED Director receives the practitioner’s complete, written response to a request. The Federal Register Notice explains that the Patent Office considered, but rejected, a regulation that would have the one-year limitation commence on the date on which the OED Director initially receives allegations about a practitioner, which if  you ask me is far more in keeping with the language of the America Invents Act.

Notwithstanding, the USPTO did not choose to commence the one-year limitations period upon learning of actionable misconduct for three reasons.

First PTO Rationale

The USPTO says it usually receives information about a practitioner from a client who alleges that the practitioner acted improperly. While mere allegations of ethical violations may alert the Office that a client is subjectively dissatisfied with a practitioner, they often do not provide sufficient objective evidence that misconduct has occurred.

The Notice points out that it is the belief of the USPTO that it would be unfair to the practitioner that the basis of a disciplinary proceeding be predicated only on the allegations levied against him or her without providing the practitioner an opportunity to respond to the allegations. That is, of course, true.  It is, however, wholly irrelevant from a statute of limitations standpoint.

First, there will be some point in time prior to the receipt of the practitioner’s response that the USPTO has convinced themselves that there is enough of an allegation to warrant inquiry.  So it seems inappropriate to point to the fact that initial information may be cryptic.  That is likely true, but does cryptic information reach the level of the USPTO knowing of misconduct?  No it wouldn’t.  The USPTO themselves says that they preliminarily screen the complaints and then seek information from the practitioner.  Obviously the USPTO has been able to articulate the concern enough to request information from the practitioner, so the knowledge standard has been satisfied at least no later than the time information is requested of the practitioner, likely sooner by at least some period of time.

Second, statute of limitations are found throughout the law, and they relate to the time limit within which an action must be brought if one is going to be brought.  The institution of an action does not require iron clad proof, and throughout the law the statute of limitations begins to run against ordinary citizens bringing legal action when they knew or should have known that they had a claim that could be made.  I see no reason why the same analysis shouldn’t apply to the Patent Office.

Second PTO Rationale

The Patent Office says that a regulation that proposes commencing the one-year limitation period on the date the OED Director initially receives allegations about a practitioner’s alleged misconduct would unnecessarily restrict the OED Director’s ability to grant reasonable extensions of time to respond to the OED Director’s initial request for information.

This is not correct.  The Patent Office is creating false choice here.  Either we toll the statute of limitations until well past the time when the USPTO has been made aware of misconduct (which will violate the law) or we start the statute of limitations early and then that becomes a burden on practitioners.  Of course an OED inquiry is already a burden on practitioners. But it is far more of a burden if it is allowed to drag out indefinitely.

The commentary in the proposed rules explains that the regulations follow the long-standing practice of affording a practitioner a reasonable opportunity to respond to the allegations levied.  That practice is wholly appropriate, but doesn’t in any way change a statute of limitations analysis.  By comparison, if you received substandard care from a physician you could sue for medical malpractice.  When does the statute of limitations begin?  That is frequently a question in these types of cases because many, if not most, times the patient does not know for some time that malpractice has been committed.  The statute of limitations is tolled until the patient knew or should have known that they could bring an action seeking redress.  There is no requirement that the patient go to the physician and hear their side of things before they determine whether they really have a claim.  No where in the law is such a thing required.  Of course there will be another side to the story, but the presence of another side of the story does not ever get considered in a statute of limitations inquiry.

Furthermore, if the rule is going to ignore the requirements of the law then why not pick one that ignores the statute and retains flexibility?  A better approach, albeit it still in violation of my reading of the AIA, would be that the statute of limitations would commence upon the USPTO learning of misconduct and a tolling would apply for any time the practitioner requests an extension to respond.

Third PTO Rationale

Third, the Office is concerned that starting the one-year limitation period from the date the OED Director initially receives an allegation of misconduct might encourage dilatory responses and other delay tactics by practitioners, which would not be in the public interest. For example, a practitioner could simply choose to hinder the investigation by providing incomplete responses with the purpose of having the one-year limitation period run without the OED Director having received the practitioner’s side of the story.

This strikes me as unrealistic.  Are we to believe that the Office of Enrollment and Discipline won’t be able to handle a situation where there is practitioner delay?  Furthermore, delay and feet dragging is again not a legally cognizable rationale for extending a statute of limitations.  Throughout every area of law if you are going to give the other side an opportunity to demonstrate that they should not be brought into an action you NEVER allow feet dragging by that other side to cause you to miss a statute of limitations.  If someone is given the opportunity to exonerate themselves and chooses to drag their feet then they should hardly complain when an action is instituted against them within the statute of limitations.

Why This Matters

In order to explain why this matters let me use a real life, actual scenario that I am familiar with, of course not naming names.

Practitioner A come to discover that Patent Practitioner B is engaging in what seems to clearly be misconduct.  In order to satisfy his/her own ethical obligations Practitioner A provides the information learned to the Office of Enrollment and Discipline.  Several months later Practitioner A receives a letter from OED saying that the Office would not contact the practitioner and would not institute an investigation, but that Practitioner A was free to raise the misconduct with other authorities and/or agencies of the federal government.

In this scenario the Office has been made aware of misconduct.  If the one-year limitation does not start to run until Practitioner B submits his/her response the USPTO could have been aware of these actions for many years before the statute of limitations would have run.

What if the management of OED changes, as it does from time to time?  Under OED Director 1 a decision may be made not to pursue, but if the statute of limitations does not run until Practitioner B submits a response a subsequent OED Director might choose to bring charges.  This would seem to clearly violate 35 U.S.C. 146(k), but would not violate the proposed rules.

Much Ado About Nothing?

Is this much ado about nothing?  Perhaps.  We all know how the legal challenges to practitioner discipline go, whether they are at the State level or with respect to the OED.  The nefarious practitioner is always at an extreme disadvantage, and it is hard to argue with that being the factual reality of these cases.  For me, however, that means that the USPTO needs to make sure they get these statute of limitations rules correct.  Even if these rules violate the law is a Court later likely to overturn disciplinary enforcement because of the failure to cleanly satisfy the requirements of the AIA?  Likely not.

I see other ways that the USPTO could keep the flexibility they desire to continue to extend practitioners courtesy extensions of time to respond to disciplinary requests.  This laudable practice, however, shouldn’t require the creation of statute of limitations rules unlike any other throughout the law.


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Join the Discussion

5 comments so far.

  • [Avatar for Anon]
    January 16, 2012 09:55 am

    I note an interesting related thread over at Patently-O concerning discipline centering around an IDS submission wherein the party submitting a list of references admits to not having read each reference submitted.

    Curious as to the impression from the typical readers here…

  • [Avatar for Paul Cole]
    Paul Cole
    January 12, 2012 07:57 am

    It indeed happened to me but I should not add details as I do not wish to make difficulty for particular individuals. However, I was 4000 miles away from home at the time and my US colleague was 1000 miles away from home and it was a live in person interview. In the circumstances failure to show up could be categorised as gross. The examiner did not have signatory authority but I saw the supervising examiner who was excellent insofar as we were able to go. But there was no explanation or apology then or since.

  • [Avatar for Gene Quinn]
    Gene Quinn
    January 11, 2012 04:08 pm


    Have you had this happen at the USPTO? What can you tell me about the details? Was the examiner a hoteling examiner that didn’t show up for a live, in person interview at the USPTO?

    Is this something that others are having issues with?


  • [Avatar for Paul Cole]
    Paul Cole
    January 11, 2012 02:30 pm

    What should be done about examiners who don’t make the grade e.g. by failing to turn up for a long scheduled interview, with no subsequent explanation or apology?

  • [Avatar for Anne Barschall]
    Anne Barschall
    January 9, 2012 07:44 pm

    10 years! Sheesh! That’s a long statute of limitations.