On August 5, 2016, the USPTO Director issued a Final Order reversing an administrative law judge’s initial decision, which had suspended a practitioner for 18 months. The Final Order held the OED Director violated USPTO precedent and mandatory rules regarding reciprocal discipline—37 C.F.R. § 11.24. The Final Order is significant because it not only confirms the mandatory nature of reciprocal discipline, but it also appears to be the first time the USPTO Director has ever reversed a decision of an ALJ and ruled in favor of a practitioner in an attorney disciplinary case.
This matter arose in 2013, after the practitioner had been suspended by a state bar. The practitioner, as required by 37 C.F.R. § 11.24(a), reported the state bar suspension to the OED Director. According to Section 11.24(a), “upon receiving notification” of the suspension, the OED Director was required to file with the USPTO Director a complaint seeking the identical discipline imposed by the practitioner’s state bar, via a mandatory disciplinary process known as “reciprocal discipline.” We have previously discussed the process for reciprocal discipline at the USPTO in our article published in IPWatchdog.
Notwithstanding the mandatory language in Title 37, Section 11.24, the OED Director refused to follow Section 11.24. Instead, the OED asserted Section 11.24 was discretionary, and the OED thus “chose” not to follow it. Instead, the OED Director sought and obtained approval from the USPTO’s Committee on Discipline and filed with an administrative law judge a de novo disciplinary complaint seeking the practitioner’s exclusion from the USPTO or an indefinite suspension–a far cry from the discipline imposed by the practitioner’s state bar. Funk & Bolton represented the practitioner in the USPTO disciplinary proceeding. Continue reading