Understanding 37 CFR 11.801: A Lesson in Not Fully Cooperating with OED

37 CFR 11.801 is a regulation that imposes a duty on practitioners to cooperate with the Office of Enrollment and Discipline (OED).  The regulation is divided into two key provisions that apply to applicants for registration, and those under disciplinary/reinstatement investigation:

False Statements: The regulation first proscribes making false statements of material fact.  This is simple, the USPTO takes your statements at face value, and while we all may make mistakes in what we say or how we say, the statements made to OED should be carefully strategized to be accurate and clear—otherwise, the statement itself could lead to independent discipline.  This part of the regulation is not often controversial or confusing—we know already—don’t lie.

Duty to Cooperate: The second part of the regulation requires practitioners to assist OED in investigations or proceedings. This might include providing necessary documents, and complying with requests for information, except that a practitioner need not provide confidential information. This part of the regulation is less clear as many practitioners don’t fully appreciate their duty to cooperate, and how less-than-full cooperation can lead to problems.  Moreover, this rule has been suggested to apply even if you are not under investigation and the USPTO requests information from you.

Recent Disciplinary Case Highlighting Duty to Fully Cooperate

In a recent disciplinary action, a practitioner under investigation for violating the USPTO’s sponsorship rules and allowing a 3rd party company to prepare and file 174 trademark applications, the practitioner, Julian Haffner, received and responded to an RFI, participated in an interview, and even provided WhatsApp chat messages.  However, Mr. Haffner admitted he “did not fully respond to the RFI as he did not produce certain documents requested by OED.”  We, of course, don’t know what documents he did not provide, but we can only assume it was a contract or other documents with the 3rd party company.

While the underlying violations may not have ordinarily resulted in a suspension, Mr. Haffner appears to have received a lengthy 60-day suspension and 12-month probation for, among other things, failing to provide copies of certain documents to OED—and thereby not fully cooperating with the office.

Practical Tips for Practitioners

  1. Respond Promptly: Always respond to OED requests in a timely manner. If you cannot respond by the deadline, consider requesting an extension, and even providing clarification regarding the status of your response.  While OED will often suggest that you request a tolling agreement, you are NOT required to agree to one, and should carefully consult with counsel regarding agreeing to toll the Statute of Limitations.
  2. Be Thorough: Provide complete and accurate information.  There are two distinct ways to cooperate—to over cooperate and provide a plethora of information, or to not fully cooperate, mostly in an attempt to hide the facts.  Sometimes understanding the goal and perspective of OED is helpful to guide what information will help OED see your side of the story (whether good or bad) to get to a prompt resolution (and avoid an 11.801 charge).  Indeed, providing direct and clear responses, while still considering your duties of privilege and confidentiality, are a key part of fully cooperating with OED.
  3. Seek Guidance: The ethics and practice before the USPTO are complex enough, but working to understands the intersection of IP and legal ethics is even more complex.  It is helpful to work with counsel to understand best practices for responding and cooperating with OED, and to avoid violation the duty to cooperate provision of the USPTO Rules of Professional Conduct.

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