Everything You Need to Know About Moral Character for the Patent Bar

You have passed the patent bar after months of hard work and studying the Manual of Patent Examining Procedure.  “[H]owever, you are not being registered at this time…” The letter goes on to explain that, because of your answers on the PTO FORM-158 (Application for Registration), the Director of the Office of Enrollment and Discipline (OED) seeks further information to evaluate whether you are of “good moral character and repute”  The congratulatory letter is followed by an enrollment investigation, which is signed by a staff attorney who is handled the “E-File” for the OED Director’s evaluation of your moral character.

Satisfying the OED Director

Individuals applying for registration as a Patent Agent or Patent Attorney may be registered, or granted limited recognition, pursuant to 37 CFR § 11.6 if they comply with other sections of Part 11, including, inter alia, establishing “to the satisfaction of the OED Director that he or she: (i) Possesses good moral character and reputation; (ii) Possesses the legal, scientific, and technical qualifications necessary for him or her to render applicants valuable service; and (iii) Is competent to advise and assist patent applicants in the presentation and prosecution of their applications before the Office.” See 37 CFR § 11.7. The USPTO has little by way of regulations concerning what defines “good moral character and reputation;” however, OED publishes informative guidance within the General Requirements Bulletin (GRB). Notably, the GRB is not published in the Federal Register, and therefore does not have the “force of law.”  Instead, it is a reflection of how the USPTO interprets their own regulations.

The regulations do state that applicants “shall answer all questions in the application for registration and request(s) for information and evidence issued by OED; disclose all relevant facts, dates, and information; and provide verified copies of documents relevant to his or her good moral character and reputation.” See 37 CFR § 11.7(g). The regulation goes on to explain that attorneys must all submit certified copies of their bar applications and moral character determinations—but only if they are available.  Id. According to the regulation, the OED Director reviews the information in the applicant’s submissions and, if he “finds no substantial discrepancy between the information provided with his or her application for registration and the state bar application and moral character determination,” deference may be given to the state bar determination. The USPTO regulations and the GRB provide insight into some disqualifying factors, and those which may be viewed by the OED as showing a lack of good moral character and reputation. Common factors are discussed below.

Criminal Past

The OED Director is likely to view an application for registration by someone convicted of a crime with a careful lens as a conviction of certain felonies and/or misdemeanors may show evidence of a lack of good moral character and reputation. But what is a conviction? According to the USPTO regulations, convictions include a verdict, plea (including Alford plea), or receipt of deferred adjudication (deferred prosecution or deferred sentencing) for an accused or pled crime. See, e.g. 37 CFR § 11.1. Therefore, even a deferred prosecution for a charge of driving under the influence, a misdemeanor in most states, would be considered a conviction by OED.

An applicant who has been “convicted,” as defined in the regulations, should analyze whether the OED Director would view such conduct as a crime of moral turpitude as such a view would require not only an increased application fee under 37 CFR § 1.21(a)(10) (presently $1,680), but may also require a two-year period after the completion of any “sentence” prior to submitting an application for registration. Of course, there are ways to seek an exception to these requirements, under certain circumstances. Certain exceptions may apply, including a pardon or presentation of evidence showing reform and rehabilitation. Finally, current practitioners should be mindful that, upon conviction of any crime, they must notify the OED Director within 30 days of the date of any conviction (note the definition of conviction referenced above). See 37 CFR § 11.25.

Disciplined Attorneys (and other Professionals)

An applicant who has been “disbarred” from any professional practice, or who has resigned in lieu of such proceedings is generally barred from applying for registration to practice before the USPTO for five years from such date, while those who have been similarly suspended are ineligible until their period of suspension is over. As in the case of applicants with convictions, most disciplined professionals applying for registration must pay the increased application fee. Other requirements may apply, including when the discipline is also based upon a conviction. Applicants should be mindful that this applies to any professional practice. Therefore, even the revocation of a professional engineer certification or other designation prior to law school could implicate this issue.

Applicants Previously Denied Registration

An applicant who was previously denied registration by the OED Director due to a perceived lack of good moral character and reputation must generally wait two years from such a decision to reapply, unless certain exceptions apply. In the case of an applicant who withdraws their application while they are under investigation, the withdrawal is also treated as a denial for proposes of the two-year waiting period. Thereafter, the applicant must pay the increased application fee for future applications, if any. The regulation also notes that a re-applicant must also retake the exam, even if they had already previously passed the same. Top tip—carefully consider when and how to apply to avoid a denial.

Information from Other Sources

An interesting case involves an applicant who received his Ph.D in 2009 and was denied registration based upon information received from the public. The applicant appealed his denial to the USPTO Director, which upheld the denial. See In re Redacted, (USPTO, July 13, 2013). After passing the Registration Examination on May 4, 2012, the applicant responded in the negative to the question on his application that asked “[h]ave you ever been disciplined, reprimanded, suspended, expelled or asked to resign or withdraw from any educational institution, or have you resigned or withdrawn from any such institution in time to avoid discipline, reprimand, suspension, expulsion or request to resign for conduct involving dishonesty, fraud, misrepresentation, or deceit?” Per OED’s usual practice, the applicant’s name was published in the Official Gazette for Patents seeking information about the applicant’s moral character.

On June 22, 2012, the OED Director received correspondence from the applicant’s former educational institution. The letter noted that the applicant had been referred to the Office of Research Integrity, in accordance with federal regulations, due to alleged research misconduct. According to the public record, the applicant was sent multiple requests for information by OED. In response, the applicant admitted his conduct, and eventually noted that he had signed a settlement agreement with the United States Department of Health and Human Services in which he admitted research misconduct. Ultimately, on March 14, 2013, the OED Director denied the applicant’s application for registration.

The case teaches the importance of candor, as discussed below. Specifically, the USPTO Director held, in the Final Order, that while the applicant admitted his conduct to the educational institution in December 2010, that admission came “over 18 months after the grant of his doctorate degree and approximately 17 months into his post-doctoral career.” See In re Redacted, (USPTO, July 13, 2013). That fact, coupled with the failure of the applicant to provide the information to OED prior to the request for information, appears to have weighed heavily on his inability to be granted registration.

How to Respond to OED Requests

Candor is one of the most important considerations in deciding how to respond; however, proving to the OED Director that there are no future concerns is also a key issue. For example, an applicant with a history of speeding tickets, or charges for driving under the influence, may perceive that their conduct from two years ago is “in the past,” but it is in fact the applicant’s responsibility to show how they have improved their conduct since that point. In such an instance, it is likely important to take ownership and responsibility for the conduct. More specifically, the regulations discuss factors that the OED Director may use in evaluating rehabilitation, including the nature of the misconduct, mitigating circumstances, the age of the individual at the time of the misconduct, as well as any change in attitude, among other things.

Indeed, while many applicants can respond directly to and OED “E-file” or moral character investigation, avoiding the investigation is a key element.  While some cases are bound to end up with an investigation, a carefully prepared application can help speed up the process, including ensuring all documents are carefully prepared, any contrition or rehabilitation is clearly explained, and any cover correspondence accurately portrays what happened.  Far too many times, applicants gloss over serious crimes and claim chalk them up to youthful indiscretions—something that is subjective, and a view not normally shared by OED.

For additional information and assistance in applying for registration to practice, or with an enrollment investigation, please contact McCabe & Ali, LLP at 877-OED-4097 x 1234.

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