2. Ethics Before the Office: Professional Responsibility at the USPTO William J. Griffin Deputy Director Office of Enrollment and Discipline United States Patent and Trademark Office

3. OED Discipline: Warnings vs. Formal Discipline Generally speaking, “formal discipline” at OED is public discipline. Formal disciplinary sanctions include: – Exclusion from practice before the Office; – Suspension from practice before the Office; or – Public reprimand. 37 C.F.R. § 11.20(a). The OED Director may conclude an investigation with a warning. 37 C.F.R. § 11.21. – A warning is neither public nor a disciplinary sanction.

4. OED Discipline: Warnings vs. Formal Discipline

5. OED Investigations: The Privacy Act The Privacy Act limits the release of certain records identifying individual persons by executive agency without the consent of the individual to whom the records pertain. – Release of information can occur without consent under certain circumstances. See 5 U.S.C. § 552a. OED investigations are subject to the Privacy Act. – OED’s ability to disclose information relating to its investigations are limited. – Grievants are not “parties” to investigations and are not entitled to updates or other information. – OED can disclose information to, inter alia, those who can reasonably be expected to provide information needed in connection with investigations. See 78 Fed. Reg. 16834 (Mar. 19, 2013).

6. OED Discipline: Grievances and Complaints An investigation of possible grounds for discipline may be initiated by the receipt of a grievance. See 37 C.F.R. § 11.22(a). Grievance: “a written submission from any source received by the OED Director that presents possible grounds for discipline of a specified practitioner.” 37 C.F.R. § 11.1. Common Sources of Information: – External to USPTO: Clients, Colleagues, Others. – Internally within USPTO: Patent Corps, Trademark Corps, Other. – Other: News Articles. Duty to report professional misconduct: – 37 C.F.R. § 11.803.

7. OED Discipline: Grievances and Complaints If investigation reveals that grounds for discipline exist, the matter may be referred to the Committee on Discipline to make a probable cause determination. See 37 C.F.R. § 11.32. If probable cause is found, OED Director may file a complaint under 37 C.F.R. § 11.34. See 37 C.F.R. § 11.32. 37 C.F.R. § 11.34(d) specifies that the timing for filing a complaint shall be within one year after the date on which the OED Director receives a grievance.

8. Formal Discipline

9. Other Types of Discipline Reciprocal discipline. 37 C.F.R. § 11.24. – Based on discipline by a state or federal program or agency. – Usually conducted on documentary record only. Interim suspension based on conviction of a serious crime. 37 C.F.R. § 11.25.

10. USPTO Disciplinary Decisions Breakdown of Reciprocal vs. Non-Reciprocal Formal Decisions FY15 FY12 FY13 FY14

11. USPTO Disciplinary Decisions Breakdown of Disciplinary Decisions by Practitioner Type FY15 FY12FY13FY14

12. OED Enrollment: Law School Clinic Certification Program Allows students in a participating law school’s clinic program to practice before the USPTO under the strict guidance of a Law School Faculty Clinic Supervisor. The OED Director grants participating law students limited recognition to practice before the USPTO. Signed into law by President Obama on December 16, 2014. Recent expansion added 19 schools. 42 law schools actively participate: – 19 trademark only, – 6 patent only, – 17 both.

13. Office of Enrollment and Discipline Recent OED Case Law

14. Legal Fees In re Neeser (USPTO D2015-16) – Patent Attorney: Formed a partnership w/ non-lawyer practicing patent law. Failed to maintain trust accounts for clients’ funds. Neglected applications. – Suspended from practice before USPTO for 12 months. – Mitigating factors included remorse, cooperation w/ investigation, and no prior discipline.

15. Conflict of Interest In re Radanovic (USPTO D2014-29) – Patent attorney: Represented two joint inventors of patent application. No written agreement regarding representation. Attorney became aware of a dispute wherein one inventor alleged that the other did not contribute to allowed claims. Continued to represent both inventors. Expressly abandoned application naming both inventors in favor of continuation naming one. – Mitigating factors included clean 50-year disciplinary history. – Received public reprimand.

16. Prospective Clients In re Guttenberg (USPTO D2015-15) – Trademark attorney: Filed post-registration trademark documents on behalf of trademark registrants after sending solicitation letters to registrants who had upcoming renewals due. Solicitation letters were confusing and may have been misconstrued by recipients as being mailed by United States Government. – Received public reprimand and two-year probation.

17. Neglect In re Tachner (USPTO D2012-30) – Patent attorney; disciplinary complaint alleged: Failed to report Office communications and docket due dates. Apps. became abandoned; patents expired for failure to pay maint. fees. Used handwritten docket book and “white board” for docketing due dates. Staff was undertrained and underequipped. – Suspended from practice before USPTO for 5 years. In re Kubler (USPTO D2012-04 and 10-06) – Patent attorney: Lacked uniform system of client communication in his office. Caused inconsistent client communications practices and communications delay. – Received Public Reprimand: Practitioner also agreed to attend practice-management classes.

18. Dishonesty, Fraud, Deceit or Misrepresentation In re Hicks (USPTO D2013-11) – Trademark attorney: Sanctioned by EDNY for non-compliance with discovery orders. Federal Circuit affirmed sanction and found appellate brief to contain “misleading or improper” statements. – Received public reprimand and one-year probation. In re Reardon (USPTO D2012-19) – Patent agent; president of non-profit organization. – Disciplinary complaint alleged: Misappropriated at least $116,894 from non-profit org. for personal use. Used non-profit’s credit card for personal use without authorization. Submitted false annual financial reports to conceal his conduct. – Excluded from practice before the USPTO.

19. Dishonesty, Fraud, Deceit or Misrepresentation In re Goldstein (USPTO D2014-10) – Patent attorney; disciplinary complaint alleged: Falsely informed clients he filed patent and TM applications on their behalf and that applications were being examined. Created and sent clients fake filing receipts for patent applications. Created fake cease-and-desist letters allegedly sent to potential infringers. Created phony response to fictitious inquiry from patent examiner. Billed clients for services he did not perform and fees he did not pay. – Excluded from practice before the USPTO.

20. Fee-Related Issues In re York (USPTO D2013-19) – Patent attorney: Contract attorney to law firm, claimed firm owed him money. Inter alia, deposited payments from firm client into personal account without informing firm. Used firm’s deposit account in violation of firm policy. – Received public reprimand and 2 year probation. In re Lane (USPTO D2013-07) – Patent agent: Sent notice of charges to client without demand for payment, as parties were working on potential business relationship that would subsume the charges. Later sent an invoice and added an 18% interest charge from first notice. Because client was unaware that interest was accruing, interest charge was excessive fee and disreputable conduct. – 18-month suspension added to earlier discipline.

21. Unauthorized Practice of Law In re Pham (USTPO D2015-01) – Patent Agent (Former Attorney): Represented ex-wife in trademark dispute. Signed emails as “Associate General Counsel” Emails contained legal opinions. – Received public reprimand. In re Campbell (USPTO D2014-11) – Patent agent: Represented person in Colorado matter involving DUI charges. Attempted to claim he was “attorney in fact” for driver. Sued City of Colorado Springs in civil court on behalf of driver. Appeared on behalf of driver in license revocation hearing. -Excluded from practice before the USPTO.

22. Improper ex parte Contact In re Caracappa (USPTO D2014-02). – Registered patent attorney was counsel of record in inter partes review proceeding. – Co-counsel sent an email to PTAB email address, naming a specific judge as the addressee. – The email explained a mathematical error in a paper filed by the opposing side. – Opposing counsel was not copied on the email. – Attorney authorized and had full knowledge of the email, including the fact that opposing counsel was not copied. – PTAB held that the email was an improper ex parte communication. Received public reprimand.

23. Duty to Supervise In re Druce (USPTO D2014-13) – Non-lawyer assistant fabricated filings and office communications – Signed patent attorney’s signature to filings. – Failure to adequately supervise non-lawyer assistant. 2-year stayed suspension and 2-year probation upon reinstatement

24. Inequitable Conduct In re Tendler (USPTO D2013-17) -Patent Attorney Filed Rule 131 declaration re: actual reduction to practice. Later learned from client that the facts were not accurate. Did not advise office in writing of inaccuracy. 4-year suspension for conduct prejudicial to the administration of justice.

25. Decisions Imposing Public Discipline Available In FOIA Reading Room  http://e-foia.uspto.gov/Foia/OEDReadingRoom.jsp  In the field labeled “Decision Type,” select “Discipline” from the drop down menu. To retrieve all discipline cases, click “Get Info” (not the “Retrieve All Decisions” link).  Official Gazette for Patents http://www.uspto.gov/news/og/patent_og/index.jsp Select a published issue from the list, and click on the “Notices” link in the menu on the left side of the web page.

26. Duty of Disclosure Charles is general counsel for Company D. Charles is also a registered patent practitioner. Company D sues 25 parties in federal court for infringement of Patent A. One of the 25 parties institutes a reexamination of Patent A during the federal litigation. Charles hires Firm Y to handle the litigation and Firm Z to handle the reexam. The federal litigation is not stayed during the reexam. Several of the defendants to the litigation file papers in federal court claiming that certain prior art invalidates Patent A. Firm Y does not inform Firm Z of these papers and Firm Z does not actively follow the litigation. Charles is a very busy attorney and does not look at the defendant’s filings or pass them along to Firm Z.

27. Ex Parte Examination Carl is handling the prosecution of Application X at the USPTO for AlphaCorp. OmegaInc is a competitor of AlphaCorp and has recently received a Notice of Allowability in one of their pending applications, Application Y, which has been published. Carl notes that the same examiner is examining Application X and Application Y, as they are directed to similar subject matter. Carl is conducting an interview with the examiner for Application X and asks the examiner about whether a certain word recently added to the claims of Application Y was responsible for its allowance.

28. Zealous Representation Carol is arguing on behalf of Company A before the PTAB in support of the patentability of the claims of one of Company A’s pending applications. The rejection at issue relies on a declaration made by Dr. Benson during a deposition in related litigation. Carol argues that the declaration should be given less weight because Dr. Benson is an interested party. Specifically, Carol argues that Dr. Benson is an inventor of a product competing with the product covered by Company A’s application. However, Dr. Benson is not listed as an inventor on the patent covering the competing product. Rather, Dr. Benson was head of R&D of the competing product’s manufacturer and was the only person on the R&D team that had prior experience in the field.

29. Record Retention TM attorney Beatrice has an office in a historic building in downtown DC. She keeps paper copies of her “closed” client files in the basement of the building. She knows that the basement is prone to flooding in extreme weather. She is handling a TM application for a client. The USPTO sends her an Office action in the application, setting an extendable two-month deadline for response. Beatrice reports the Office action to the client and requests instructions for formulating a response. The client does not reply to Beatrice’s reporting letter. Two years later, the client learns that the TM application is abandoned and files a grievance. Beatrice said that she closed the file and put it in the record room in the basement of her building. A recent flood destroyed the client’s file, so Beatrice cannot show that she reported the Office action.

30. Conflicts of Interest Perry, a partner at SmartFirm, PC represents Carl in the prosecution of a patent application for a ski binding that is easily movable from one ski to another. Brenda, another SmartFirm partner, takes over prosecution of a patent application for SkiCorp, for a ski binding that is movably attached to its corresponding ski for the purpose of cross country skiing. However, the claims of the SkiCorp patent arguably read on the described subject matter and potential products from Carl’s application.

31. Contacting OED For Informal Inquiries, Contact OED at 571-272-4097 THANK YOU