To all of you who have been dying to know what happened in the world of ethics and discipline at the USPTO in the past year, I am pleased to say your wait is finally over. I have written, “2016 USPTO Disciplinary Decisions — The Year in Review.”
Why was The 2016 Year in Review necessary? I for one have found it quite time-consuming to get a handle on ethics decisions published by the USPTO. For anyone who has ever tried to research the disciplinary decisions of the USPTO, you will find the only publicly available resource (apart from this blog, of course), is a page on the OED’s website called the OED Freedom of Information Act (FOIA) “Reading Room.” The “Reading Room” is a repository of PDF files in a table that can be organized in chronological or reverse-chronological order.
Unfortunately, the Reading Room tells the reader absolutely nothing about what, exactly, was happening in the world of discipline at the USPTO. Indeed, the Reading Room fails to provide any summary of what each of the USPTO’s disciplinary decisions was about, the procedural context of the case, the facts and issues involved, or how the matter was resolved. Moreover, you will not find any analysis or annotations of any of the USPTO’s disciplinary decisions on Lexis or Westlaw.
To find out just what happened and why in any given USPTO disciplinary decision requires the reader to roll up their sleeves and pore over, one-by-one, each PDF file and read the decision, culling the details from the many pages of raw, unannotated data.
And limiting oneself to the information included in the USPTO’s decisions themselves frequently is not enough. Indeed, it has been my experience, having read literally hundreds of PTO disciplinary decisions, that the discussion can be, well, sparse. Details are sometimes redacted, and facts that may be pertinent to the decision are often simply not included. This form of public record, quite frankly, leaves much to be desired for your avid researcher. Sometime the missing information can be found in the public record, but the researcher must get away from the FOIA Reading Room and research other sources—such as online court records, PACER, the news media, and public disciplinary records from state court bars. To gather all of that additional information and get a more “complete picture” is a tedious and time-consuming process.
The purpose of The 2016 Year in Review is to fill this knowledge gap and provide a (hopefully) user-friendly and useful source of information about what happened in the 2016 universe of USPTO disciplinary decisions. The summary is intended also to be a resource so practitioners can make informed decisions about the types of recent conduct that may lead to USPTO discipline and the range of discipline that may be imposed in a given case based upon the Office’s past practices—at least insofar as that information can be gleaned from the USPTO’s 2016 docket of published decisions.
The 2016 Year in Review is organized in two parts. In Part I, the summary analyzes the USPTO’s disciplinary decisions according to the type of procedural mechanism utilized in reaching the decision. There are six different procedural mechanisms in USPTO disciplinary matters that were utilized in its 2016 published decisions: (i) settlement agreements; (ii) exclusions by consent; (iii) interim suspensions; (iv) final Agency decisions reached after formal administrative adjudication; (v) reciprocal discipline decisions; and (vi) reciprocal transfers to disability inactive status. For the information of the reader, each procedural mechanism separately addresses those disciplinary matters that arose in the course of the practice of patent or trademark law, on the one hand, and those disciplinary matters that were unconnected to providing USPTO-related legal services (and may have been completely unrelated to the practice of law).
With respect to each of these decisions, the paper provides: (i) the citation of the USPTO decision; (ii) citations to any related state or federal disciplinary decisions or cases, (iii) the ultimate disposition of the matter at the USPTO; (iv) a very brief synopsis of the decision; and (v) a more detailed discussion of the factual, procedural, and legal issues as well as legal analysis, if any, provided by the USPTO.
Part II of The 2016 Year in Review uses the same body of raw data (the published 2016 disciplinary decisions of the USPTO), but organizes the information according to the different types of practitioner behavior that led to discipline. Providing the information in this fashion proved to be a bit more of a challenge because many USPTO disciplinary cases cannot be neatly shoehorned into any one type of category of misconduct. In some cases, for example, a practitioner bounced a trust account check, allowed a matter to go unintentionally abandoned, and made a misrepresentation to the client. Is that matter best characterized as a money-handling case, a neglect case, or a misrepresentation case? In reality, it is all three.
For simplification, The 2016 Year in Review summarizes the USPTO disciplinary decisions according to what seemed to be the most important “bad behavior” based upon the facts. To that end, the paper breaks down the published decisions into the following general categories of practitioner misconduct: (i) unintentional mishandling of client funds; (ii) conflicts of interest/failure to recognize the client; (iii) neglect/failure to communicate/unintentional abandonment; (iv) neglect/failure to communicate/unintentional abandonment plus some other significant misconduct (e.g., failing to return unearned fees, failure to cooperate with OED ethics investigation, etc.); (v) conduct that primarily involves misrepresentations or dishonesty, prejudices the administration of justice, or comprises the unauthorized practice of law; and (vi) criminal misconduct.
I hope you find The 2016 Year in Review to be a useful resource.