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 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. B, who was suspended nunc pro tunc from October 26, 2009, for a period of 60 months, but with the last 24 months stayed. B’s petition for reinstatement was successful, and he is once again a patent agent registered to practice at the USPTO.
In the original disciplinary proceeding that lead to the B suspension, the OED Director filed a disciplinary complaint against B on October 26, 2009, and then Director Kappos entered an interim suspension order because B was convicted of a felony. Authority for such an interim suspension comes from 37 CFC 11.25. Subsection (a) explains in part:
Upon being advised or learning that a practitioner subject to the disciplinary jurisdiction of the Office has been convicted of a crime, the OED Director shall make a preliminary determination whether the crime constitutes a serious crime warranting interim suspension. If the crime is a serious crime, the OED Director shall file with the USPTO Director proof of the conviction and request the USPTO Director to issue a notice and order [interim suspension and referral for disciplinary proceeding].
The crime B was convicted of related to his attempt to have sex with a minor. The scenario leading to the arrest was set afoot as the result of an Internet sting run by the Seattle Police Department that snared B. B chatted online with an under-cover police office posing as a 13 year old.
B ultimately pled guilty to Attempted Child Molestation in the Second Degree, a felony offense. He was ordered confined for twelve months in a home detention program (later reduced to 8 months) and to participate in a program for the treatment of sexual deviancy, and to register in the Washington State Sex Offender Registration program. Mr. B fully served his sentence on July 14, 2009.
A mitigating factor in this matter was the OED Director’s receipt of a factual statement from the state court judge who sentenced Mr. B and monitored his probation. The judge expressed that Mr. B had complied with all rules and requirements of treatment and probationary supervision. The fact that B accepted responsibility in both the criminal and disciplinary proceedings seemed to also be considered a mitigating factor.
Having served his suspension B filed a Petition for Reinstatement and Affidavit on November 1, 2012. In the written decision on that petition the OED wrote: “After careful review of the Petition for Reinstatement and Affidavit, the Director of Enrollment and Discipline has determined that reinstatement of Mr. B to practice before the United States Patent and Trademark Office is appropriate.”
Petitions for Reinstatement
Hopefully you will never find yourself in need of filing a Petition for Reinstatement, but if you do the requirements for a Petition for Reinstatement are found in 37 CFR 11.60. Section (b) explains:
An excluded or suspended practitioner shall be eligible to apply for reinstatement only upon expiration of the period of suspension or exclusion and the practitioner’s full compliance with §11.58. An excluded practitioner shall be eligible to apply for reinstatement no earlier than at least five years from the effective date of the exclusion. A resigned practitioner shall be eligible to petition for reinstatement and must show compliance with §11.58 no earlier than at least five years from the date the practitioner’s resignation is accepted and an order is entered excluding the practitioner on consent.
A resigned practitioner is not be eligible for reinstatement until compliance with §11.58 is shown, and the excluded, suspended or resigned practitioner seeking reinstatement has the burden of proof by clear and convincing evidence that reinstatement is appropriate. 37 CFR 11.60(c) provides a list of elements that must be established in the petition by the practitioner seeking reinstatement. They are:
(1) That the excluded, suspended or resigned practitioner has the good moral character and reputation, competency, and learning in law required under §11.7 for admission;
(2) That the resumption of practice before the Office will not be detrimental to the administration of justice or subversive to the public interest; and
(3) That the suspended practitioner has complied with the provisions of §11.58 for the full period of suspension, that the excluded practitioner has complied with the provisions of §11.58 for at least five continuous years, or that the resigned practitioner has complied with §11.58 upon acceptance of the resignation.
While not an issue in this instance, it is of course always possible for OED to deny any request for reinstatement. §11.60(e) is informative on that point and says:
If the excluded, suspended or resigned practitioner is found unfit to resume the practice of patent law before the Office, the OED Director shall first provide the excluded, suspended or resigned practitioner with an opportunity to show cause in writing why the petition should not be denied. Failure to comply with §11.12(c) shall constitute unfitness. If unpersuaded by the showing, the OED Director shall deny the petition. The OED Director may require the excluded, suspended or resigned practitioner, in meeting the requirements of §11.7, to take and pass an examination under §11.7(b), ethics courses, and/or the Multistate Professional Responsibility Examination. The OED Director shall provide findings, together with the record. The findings shall include on the first page, immediately beneath the caption of the case, a separate section entitled “Prior Proceedings” which shall state the docket number of the original disciplinary proceeding in which the exclusion or suspension was ordered.
Interestingly, there is no §11.12 within Title 37 of the CFR. 11.12 and 11.13 are reserved.
Nunc pro tunc
Here B was disciplined nunc pro tunc. Hopefully you will never need to know what that means. What happens in this situation is the discipline, although handed out at a later time effectively starts as of some time earlier. Here the original discipline of B was not finally handed down until October 31, 2012, although there was an interim suspension order issued on October 29, 2009. Thus, the suspension began on October 29, 2009 and was effectively almost over by the time the disciplinary order was actually published.
Discipline nunc pro tunc is appropriate only if the practitioner: (1) promptly notified the OED Director of his or her suspension or disciplinaary disqualification in another jurisdiction; (2) establishes by clear and convincing evidence that the practitioner voluntarily ceased all activities related to practice before the Office; and (3) complied with all provisions of 37 CFR § 11.58. Here the interim suspension order no doubt facilitated nunc pro tunc being appropriate. If, however, you ever find yourself in a situation where you are going to be suspended you can cease practicing voluntarily ahead of discipline being handed out. Essentially removing yourself and beginning to serve the sentence in order to get to the end point. It also has the benefit of showing acceptance and responsibility, which can be important mitigating factors that the PTO would use to minimize any suspension.