Ethics & OED: Practitioner Discipline at PTO – March/April 2013

By Gene Quinn
November 26, 2013

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.

For more articles in this series please see Ethics & OED.

In the Matter of Keith E. Frantz (March 5, 2013)

Keith E. Frantz of Rockford, Illinois, was a registered patent attorney (Registration No. 37,828). He was charged with violating numerous rules of ethics and ultimately submitted his resignation.

The rules Frantz was charged with violating were:

  1. 37 C.F.R. § 10.77(c) (proscribing neglect oflegal matters entrusted to the practitioner);
  2. 37 C.F.R. §§ 10.23(a) and (b) via 37 C.F.R. § 10.23(c)(8) (proscribing failing to inform a client o f important Office correspondence);
  3. 37 C.F.R. §10.23(a) (proscribing engaging in disreputable or gross misconduct);
  4. 37 C.F.R. §§ 10.23(b)(4) (proscribing engaging in conduct involving dishonesty, fraud, deceit, or misrepresentation);
  5. 37 C.F.R. §§ 10.23(a) and (b) via 37 C.F.R. § 10.23(c)(2)(i) (proscribing knowingly giving false or misleading information to a client in connection with any immediate, prospective, or pending business before the Office);
  6. 37 C.P.R. § 10.84(a)(1) (proscribing failing to seek the lawful objectives of a client through reasonably available means permitted by law);
  7. 37 C.P.R. § 10.84(a)(3) (proscribing prejudicing or damaging a client during the course of a professional relationship);
  8. 37 C.P.R. § 10.89(c)(6) (proscribing intentional or habitual violations of the USPTO Code of Professional Responsibility); and
  9. 37 c.P .R. § 10.23 (b)(6) (proscribing engaging in any other conduct that adversely reflects on a practitioner’s fitness to practice before the Office).

Frantz voluntarily submitted an affidavit of resignation while this disciplinary proceeding was pending against him. The import of that is that by rule, should he apply for reinstatement under 37 CFR §11.60, the OED Director will conclusively presume that the allegations set forth in the complaint were true and that he could not have successfully defendant himself from those allegations.

Please note that part 10 of Title 37 does not exist at this point. For the rules violated as alleged in the complaint see Appendix R from MPEP 8th Edition, Revision 8.

In the Matter of Glen A. Cipriani (April 11, 2013)

This matter concerns Glen A. Cipriani of Charlotte, North Carolina, who is a registered patent attorney. Cipriani was censured in the State ofNorth Carolina for participating in a law suit filed qui tam pursuant to 35 U.S.C. § 292 to collect monetary assessments from a defendant accused of false marking. Cipriani used information he obtained from a prior client for his own personal use and potential financial gain without the consent of the client and to the client’s disadvantage. This matter came to be known by the relevant investigative authorities in North Carolina as the result of a letter to the Grievance Committee of the North Carolina State Bar. Learning of the inappropriate use of confidential client information a member of the firm reported Cipriani’s actions to the Bar.

On October 2, 2012, the Director ofthe Office and Emollment and Discipline at the USPTO served a Complaint for Reciprocal Discipline Under 37 C.F.R. §11.24 on Cipriani. OED requested that the USPTO Director impose reciprocal discipline on Respondent for violating 37 C.F.R. § 10.23(b)(6), which prohibits a practitioner from engaging in any conduct that adversely reflects on the practitioner’s fitness to practice, as the result of his being reprimanded on ethical grounds the State of North Carolina.

Selling v. Radford, 243 U.S. 46 (1917), sets the standards for imposing reciprocal discipline on the basis of a State’s disciplinary adjudication. Under Selling, State disciplinary action creates a federal-level presumption that imposition of reciprocal discipline is proper unless an independent review of the record reveals: (1) lack of due process, (2) an infirmity of proof of the misconduct, or (3) that grave injustice would result from the imposition of reciprocal discipline. The standard the responding attorney must meet is one of clear of convincing evidence that the Selling factors preclude reciprocal discipline.

Cipriani argued that reciprocal discipline was inappropriate because : (1) the procedure used by the State of North Carolina was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process; and (2) there evidence used in North Carolina was so inadequate that it would be clearly an error to accept the final conclusions reached by the State of North Carolina.

On the issue of lack of due process, the evidence showed that the process was more than adequate and that Cipriani fully participated. The OED decision explained:

Respondent has not clearly and convincingly shown that he was denied due process. To the contrary, Respondent acknowledges that he received notice of all claims brought against him, participated in discovery, testified in his own defense, presented evidence, vigorously cross­ examined witnesses, made objections, and filed various motions in support of his position.

Furthermore, as is frequently mentioned when lack of due process is raised in reciprocal discipline cases, it was pointed out that Cipriani could have raised a due process challenge at the state appellate level, but failed to do so. In fact, he did move forward with an appeal but ultimately voluntarily withdrew the appeal.

On the issue of lack of proof, interestingly Cipriani did not challenge the core facts asserted against him, but rather sought to challenge the credibility determinations of the witnesses. Of course, credibility determinations are left to the trier-of-fact and given great deference, so this was hardly a winning strategy. Furthermore, the OED decision explains: “A disagreement about the credibility of a witness does not show ‘infirmity of proof.'”

Ultimately, reciprocal discipline was ordered for Cipriani’s violation of 37 CFR 10.23(b)(6).

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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