Co-Authored by Aditi Kulkarni and Emil J. Ali
On April 26, 2022, The United States District Court for the Eastern District Court of Virginia dismissed a former patent examiner’s complaint and petition for review of the USPTO’s decision denying an application for registration to practice as a registered patent agent in a reasoned decision. The court held that the USPTO’s Final Agency Action was not arbitrary or capricious.
Shahriar Behnamian, a former patent examiner filed a civil suit against the USPTO alleging wrongful denial of his application to practice before the USPTO under 35 U.S.C. §32. He also alleged his supervisor’s unlawful retaliation and constructive retaliatory discharge as a patent examiner under Title VII of the Civil Rights Act of 1964.
Mr. Behnamian participated in the USPTO’s Patent Hoteling Program which permitted him to work remotely, full time from Hawaii, as a patent examiner between Summer 2017 and Fall 2019. However, being officially based at the USPTO headquarters in Alexandria, Virginia, he was required to report bi-weekly in-person. The USPTO’s policy permitted him to evade the one-hour physical reporting requirement by using holiday or sick leave.
When Mr. Behnamian expected the birth of his second child in Spring 2019, he petitioned to be exempted from the bi-weekly hourly reporting requirement till the child was born. His supervisor, Charles Appiah allegedly denied his request and commanded him to report to the headquarters pending the childbirth. Aggrieved, Mr. Behnamian approached four Technology Center Directors, one of whom granted his request.
Mr. Behnamian claimed that Mr. Appiah retaliated against him for approaching the Director and obtaining the leave, reduced contact, scrutinized his work, and denied him access to the time recording platform for the work he performed. Mr. Behnamian claimed that Mr. Appiah charged him as being AWOL, and Mr. Behnamian was subsequently suspended from work for seven days beginning March 9, 2020.
On May 11, 2020, Mr. Behnamian gave the USPTO two weeks’ notice, and during an exit interview, he was informed of his right to submit an application to practice before the USPTO, and seek waiver of the Registration Examination by signing the application on the last day of his employment. Mr. Behnamian submitted his application, but responded “No” to the moral character questions, including Question 17, which states: “Have you ever been disciplined, reprimanded, or suspended in any job for conduct involving dishonesty, fraud, misrepresentation, deceit, or for any violation of Federal or State laws or regulations.”
On June 10, 2020, OED approved Mr. Behnamian’s application for registration; however, less than a month later, it requested information and ultimately asked him to show cause why his application should not be denied (seemingly after already being approved) for failure to inform OED about his suspension, and good moral character at the time. Mr. Behnamian replied to the show cause notice and provided four recommendation letters in its support. However, it was seemingly too little, too late.
Seemingly unmoved, on January 15, 2021, the OED Director denied Mr. Behnamian’s application. According to the Court, the OED Director’s Order stated that: “(1) Plaintiff demonstrated a ‘lack of candor and truthfulness’ by ‘cho[osing] not to disclose his suspension’ which reflected ‘serious causes for concern regarding his present moral character’; (2) Plaintiff’s conduct in reporting his time involved dishonesty when he claimed the benefit of hours not worked; and (3) despite Plaintiff’s disagreement with the characterization of his conduct, he nonetheless exhibited an ‘ongoing lack of acceptance of responsibility for any of his actions’ which did not comply with the ‘exhortation to candor prefacing the Background Information section of the Application.’”
On February 13, 2021 Mr. Behnamian appealed to the USPTO Director and argued that the OED Director ignored his facts and reasoning. Then on August 9, 2021, in a Final Order constituting a final agency action, the USPTO denied Mr. Behnamian’s application. It held that his uncontested suspension, and inconsistency between attendance and reporting at work reflect misrepresentation. According to the Court, the USPTO Director’s decision noted that his “work history, academic success, and recommendation letters … had little probative value.”
Ultimately, as the case included some employment-related claims, Mr. Behnamian approached the EEOC. Upon filing of the instant case, the USPTO contested the matter by filing a motion to dismiss and a motion for summary judgment, the court heard arguments from both sides, dismissed Mr. Behnamian’s complaint and upheld the USPTO Director’s decision. Notably, the matter has been docked for appeal at the 4th Circuit—which is not the customary avenue for relief in a Section 32 claim.
Denial of Registration
We don’t cover the employment-related claims, which similarly seem to have failed. First, the Court extended great courtesy as it appears Mr. Behnamian’s was untimely, stating that: “…considering Plaintiff’s pro se status and that he has filed this action as a complaint rather than a petition for review, this Court will extend grace and consider the merits of the petition.”
The Court was limited in reviewing the elements of the Final Agency Action—rather than new information. Even so, the Court’s review as highly deferential to the USPTO’s Decision, with a presumption in favor of the USPTO. As such, even when Mr. Behnamian’s claim relied upon the OED Director not considering his work performance and letter of recommendation, such arguments failed because, as the Court stated: “[t]he USPTO Director’s Final Order turns squarely on the determination that the OED Director’s Final Decision ‘did not call into question [Plaintiff’s] work history or academic background.’” Indeed, while such information could have helped humanize Mr. Behnamian, it appears the OED Director and USPTO Director did not give weight to those as they did not address the conduct at issue. The Court opined that “[o]ne could be the most prodigious patent examiner in the history of the USPTO and yet still suffer from questionable rectitude.”
Moreover, the linchpin here appears to be the Court discussing what appears to be Mr. Behnamian’s continued denial. Specifically, the court stated that: “…Plaintiff’s unambiguous position remains that he committed no wrongs at any time. But without extensive documentary evidence to support that view, this Court must give due deference to the Agency’s contrary findings—which come as a result of having conducted a scrupulous and extensive investigation into Plaintiff’s self-reporting work record.”
The court dismissed Mr. Behnamian’s suit and granted summary judgment in favor of the USPTO. While Mr. Behnamian has appealed the Court’s decision, it remains to be seen whether any outcome will change. Indeed, while time often heals, a few lessons can be had for other future applicants.
- Be truthful – Your duty of candor begins even before you begin to practice before the USPTO—as such your conduct (whether related to the practice of law or not) can impact your registration to practice before the USPTO.
- Acknowledge mistakes – We all make mistakes—but how we approach them and move past them differentiates our path forward. For example, if the applicant here had acknowledged a mistake in his response to the moral character questions and/or his conduct as an employee, the result may have been drastically different.
- Focus on the facts – An applicant’s unrelated background does not usually change the dynamics. While it is important to humanize yourself before the USPTO, an applicant cannot reply on such to overcome candor issues.