Ethics & OED: Practitioner Discipline at the USPTO April/May 2012

On February 5, 2013, I will give a presentation on ethics at the 7th Annual Patent Law Institute in New York City. This CLE presentation will also be offered in San Francisco, California, on March 19, 2013, an event that will be webcast live. In this presentation one of the things I will discuss are the recent disciplinary actions taken by the Office of Enrollment and Discipline (OED) during 2012.  So far I have written the following articles in the Ethics & OED series:

• Practitioner Discipline — January 2012
• Practitioner Discipline — June 2012
• Practitioner Discipline — July/August 2012
• Practitioner Discipline — October 2012
• Practitioner Discipline — November/December 2012

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.

In the Matter of Michael A. Berns (April 17, 2012)

Very little information is contained within this decision. What is known is that Michael A. Berns is a registered patent attorney (Registration No. 38, 379).  Berns represented an inventor in the prosecution of a U.S. patent application. The United States Patent and Trademark Office (“USPTO” or “Office”) mailed to Respondent a Notice of Abandonment for failure to timely reply to a Notice to File Corrected Application Papers. Respondent did not notify the client of the Notice of Abandonment.

The USPTO publicly reprimanded Mr. Berns for violating 37 CFR § 10.23(b)(6) (engaging in conduct that adversely reflects upon a practitioner’s fitness to practice before the Office) via his conduct in violation of37 C.F.R. § 10.23(c)(8) (failing to inform a client of correspondence received from the Office when the correspondence (i) could have a significant effect on a matter pending before the Office, (ii) is received by the practitioner on behalf of a client or former client, and (iii) is correspondence of which a reasonable practitioner would believe under the circumstances the client or former client should be notified).

No other facts regarding the failure to notify the client are presented, but based on the fact that the negotiated resolution of the matter was a public reprimand it seems as if this was nothing more than a case of bad judgment, without any malfeasance or neglect.

When looking for broader meaning, this decision would teach the importance of notifying clients of all communications received from the USPTO. While a public reprimand may not seem overly negative, remember that when looking for mitigating factors OED will inquire about whether there have been any previous disciplinary proceedings. No one aspires to find themselves in an ethical snafu, but if and when you may it would be extremely useful to be able to point to a long record without incident of any kind.

In the Matter of Christopher Harrington (April 18, 2012)

Christopher D. Harrington, is a registered patent attorney (Registration No. 34,837). The USPTO suspended him from practicing patent, trademark, and other non­ patent law before the Office for thirty-six months for violating various Rules of Professional Conduct.

The actions that lead to this suspension stem from the fact that Harrington accepted clients that were obtained directly by an invention promotion company.  The invention promotion company solicited and contracted with inventors who hoped to obtain patents on their inventions. The invention promotion company arranged with patent practitioners, including Harrington, prosecution services for inventors before the Office. The OED decision explains that Harrington was referred a significant volume of clients between 2005 and 2008 and that:

1. Harrington did not speak with the referred clients about their invention, the patent legal services he intended to render on their behalf, the patentability opinion provided by the invention promotion company, or the patent prosecution process before the Office.
2. Harrington did not divulge the actual or potential conflict of interest that purported escrowing of attorney fees presented to Mr. Harrington’s representation of referred clients’ interests.
3. Harrington did not divulge his business relationship with referred clients nor the actual or potential conflict of interest that it presented in representing their interests, nor did he obtain referred clients’ consent after full disclosure to represent them in light of his business relationship with the invention promotion company.

Furthermore, during the course of the prosecution of their patent applications:

1. Harrington did not engage in pre-filing discussions with referred clients about their patent applications and the documents accompanying the initial filing of patent applications;
2. Harrington did not timely inform referred clients of Office actions;
3. Harrington did not adequately explain to referred clients the significance of Office actions;
4. Harrington did not adequately counsel referred clients on options when responding to Office actions;
5. Harrington did not adequately advise referred clients about the legal consequences of those options;
6. Harrington did not adequately advise referred clients about the legal consequences of not responding to Office actions;
7. Harrington did not adequately assist referred clients in making decisions regarding Office actions;
8. Took action on their applications without their knowledge;
9. Did not keep referred clients fully and timely apprised of the status o f their applications directly; and/or
10. Through adequate supervision of his staff, allowed certain applications of referred clients to become abandoned without the clients’ consent, and did not provide sufficient legal advice to an referred client when the client’s patent application became abandoned.

This lead to a host of violations. First, Harrington violated 37 CFR §§ 10.23(a) and (b) via 37 C.F.R. § 10.23(c)(8) by failing to inform clients of correspondence received from the Office when the correspondence (i) could have a significant effect on a matter pending before the Office, (ii) is received by the practitioner on behalf of a client or former client, and (iii) is correspondence of which a reasonable practitioner would believe under the circumstances the client or former client should be notified.

Second, Harrington violated 37 CFR § 10.62(a) by not refusing employment and, instead, accepting referred clients from a referring entity without the consent of the referred client after full disclosure, including not adequately describing the escrow and payment arrangement for patent legal services performed for referred clients, where the exercise of a practitioner’s professional judgment on behalf of the referred client will be or reasonably may be affected by the practitioner’s own fmancial, business, property, or personal interests and business relationship with the referring entity.

Third, Harrington was also suspended as the result of violating 37 CRF § 10.66(a) by not declining employment from a referring entity where the exercise of Mr. Harrington’s independent, professional judgment on behalf of a client would be or was likely to be adversely affected by the acceptance of the proffered employment.

Finally, Harrington also violated 37 CFR § 10.77(c) by failing to act on legal matters entrusted to him, including not communicating with referred clients adequately and in a timely manner.

Under the terms of the settlement agreement, Harrington is eligible to request reinstatement after serving six months of his 36-month suspension. If reinstated, Harrington will be permitted to practice before the Office. If reinstated Harrington will be required to serve a probationary period of twenty-four (24) months.

In the Matter of Michelle A. Massicotte (May 16, 2012)

Michelle A. Gallagher, formerly known as Michelle A. Massicotte, is an attorney licensed to practice law by the Commonwealth of  Massachusetts. Massicotte is not a registered patent practitioner and is not authorized to practice patent law before the USPTO.

Unlike most of the disciplinary proceedings dealing with an attorney licensed to practice law, this was not instituted as a a matter of reciprocal discipline pursuant to 37 CFR 11.24. Rather, the USPTO suspended Massicotte for twenty-four (24) months for violating 37 CFR §§ 10.23 (b)(4), (b)(5), and (b)(6) by giving false or misleading information to the Office; 37 CFR 10.77(e) by neglecting a matter entrusted to her; and 37 CFR § 10.84(a) by failing to seek the lawful objectives of a client through reasonable available means permitted by law.

Under the terms of the settlement agreement reached with Massicotte, she is eligible to file a petition requesting reinstatement after serving two (2) months of her 24 month suspension. If reinstatement is granted she would then be permitted to practice  practice trademark and other non-patent law before the Office provided that she otherwise satisfies the conditions of 37 C.F.R. § 11.14(a) and unless subsequently suspended. She is also ordered to serve an additional twenty-four (24) month probationary period in the event she is reinstated.

The disciplinary penalty leveled against Massicotte was predicated on the fact that she provided the Office with false or misleading information in connection with petitions to revived three abandoned trademark applications. The trademark applications went abandoned for failure to respond to an Office Action. Massicotte revived these applications, at least in part, because she argued that the Actions were not received until after the time period to respond had passed. She also indicated that during this time frame she was experiencing a high risk pregnancy. The first part was false, she had received the Office Actions. The second part was true. The OED took notice that there were mitigating factors present. First, Massicotte was, in fact, experiencing a high risk pregnancy. She also had no prior history of disciplinary actions during her twelve years legal career. It was further believed that the actions of Massicotte were aberrational.  Massicotte also fully cooperated with the OED.

This matter is of significance for several reasons. First, it does show that at least occasionally the USPTO will initiate investigations on their own against attorneys, even those who are not registered patent practitioners. Second, the case shows the importance of having a clean disciplinary record and cooperating with an OED investigation. Third, it shows what the USPTO thinks of false statements made in petitions to revive.

Frequently when teaching the Patent Bar Review Course students will ask: “But how would the USPTO ever find out?” This case does not offer an answer to that question, but the Office did find out somehow. Upon finding out that the facts were not as were asserted Massicotte was suspended. The suspension would have been of a wholly different character and length had it not been for the mitigating factors and even still Massicotte was suspended for two years and will be placed on probation for an additional two years.

This should be a warning to patent attorneys about the “casual statements” that are sometimes made in filings with the Office. The penalty even for someone with a clean record and other mitigating factors just isn’t worth running the risk.

In the Matter of Jane A. Conners (May 30, 2012)

Jane A. Conners is an attorney licensed in California and authorized to represent others before the United States Patent and Trademark Office (USPTO) in trademark and other non-patent matters. Conners is not authorized to practiee patcnt law before the USPTO.

On April 13, 2011, the Supreme Court of California suspended Conners for three years, stayed that suspension, placed her on a three year probation, and suspended her for the first twenty-four months of the probation. Thus, it seems most accurate to characterize this action by the California Supreme Court as a suspension for two years followed by an additional year of probation.

The discipline handed out by the California Supreme Court was predicated upon a determination that Ms. Conners violated California Rules of Professional Conduct and California Business and Professions Code. Specifically, Conners failed to maintain the balance of the client’s funds in the Client Trust Account; misappropriated funds belonging to her client as the result of gross negligence in managing the Client Trust Account and failed to pay promptly return funds in her Client Trust Account to the client.

In a reciprocal disciplinary proceeding at the USPTO, Conners was suspended for three years and be placed on probation for three years for violating 37 C.F.R. § 10.23(b)(6) as the result of being suspended on ethical grounds by a duly constituted authority of the State of California. After completing twenty-four months of her USPTO suspension, Ms. Conners may seek reinstatement pursuant to 37 C.F.R. § 11.60. If she is reinstated during her probationary period Conners will be permitted to practice in trademark and non-patent matters before the USPTO during the remainder of her probationary period, provided she otherwise satisfies 37 C.F.R. § 11.14(a).