First Contact
The envelope comes by Certified Mail, Return Receipt Requested and stamped as “Personal and Confidential.” Inside is a letter from the USPTO captioned “REQUEST FOR INFORMATION AND EVIDENCE UNDER 37 C.F.R. § 11.22(f).” The letter goes on to read that the Office of Enrollment and Discipline (OED) received information regarding you, and that the OED Director requests further information before determining whether a violation of the USPTO Rules of Professional Conduct (USPTO Rules) has occurred. This may have been the first time you heard this was coming, but other times the staff attorney may also call you in advance to see if you would accept receipt via e-mail.
Each year the OED issues hundreds of these Requests for Information and Evidence (RFI) to practitioners. Many receive only one, but others receive multiple throughout the course of the investigation—opening the door to expansive and invasive questioning. In the end, in Fiscal Year 2023, OED records indicate that 14 cases closed with a warning letter, while 30 resulted in formal discipline, along with an additional 14 reciprocal actions. While there was a noticeable downward trend in published decisions and warning letters during the pandemic, we see that new investigations being opened have increased dramatically. Equally surprising is that OED’s focus, which had shifted from patent attorneys to trademark attorneys, has now returned to patent attorneys–though some of this may be based upon the disciplinary decisions being against patent attorneys, for conduct limited to trademark matters.
Why Me?
The OED Director’s duties include investigating grounds for discipline against practitioners. The OED receives information about practitioners from many parties including state bars, the public, the patent and trademark examining corps, and through other sources, including news and blog posts. Generally, that information is called a grievance, which is defined as “…a written submission from any source received by the OED Director that presents possible grounds for discipline of a specified practitioner.” See 37 C.F.R. § 11.1. Upon receiving a grievance, the OED Director screens the matter, then generally directs a staff attorney to issue an RFI to request the practitioner’s comments.
Understanding the RFI
An OED RFI commonly includes recitation of facts “under consideration” by OED, along with a list of individual requests for information, which act as both interrogatories and demands for production of documents, as well as a summary of the USPTO Rules that are at issue or implicated. While the second line generally states that: “[t]he issuance of this letter means that the matter has passed OED’s initial screening process” all hope is not lost. Importantly, while OED is supposed to review the allegations in an unbiased manner, many of the RFI’s appear to connote the practitioner already committed the (mis)conduct, as such, the RFI should be read with care to carefully point out any misapprehensions in the response.
The OED is charged with investigating grounds for discipline and must evaluate grievances at face value. While some grievants remain anonymous, others open themselves up to being questioned by the OED themselves. As such, the OED often sends the practitioner and grievant each an RFI requesting further details. Sometimes the identity and responses of the grievant are shared with the practitioner, but other times that key information is withheld. Details of the grievant, including how and when the grievance was received by the OED Director, are crucial to understanding potential statute of limitations defenses.
Generally, practitioners are given 30 days from the mailing date to respond to an RFI, and are warned that failing to respond to an RFI is itself an independent violation of the USPTO Rules under 37 C.F.R. § 11.801(b). Once again, unless otherwise specified, the date is 30 days from when the RFI was mailed–not when it was ultimately read or received by youu. As such, it is important to carefully respond to the OED, even if the claims appear to be meritless, in order to prevent further allegations of misconduct. While many trademark practitioners have never heard of the OED, and thus argue that they should not be subject to spending the time or resources defending such investigations, such arguments have little merit, especially when the trademark practitioners continuously practice before the USPTO in trademark matters.
When it comes to requesting further time to respond, OED staff attorneys differ in their approach—some offer reasonable short extension with a phone call, while others request complex tolling agreements. As such, it is important for practitioners to be aware that the OED is running on a one-year statute of limitations from the date the OED Director received the grievance. See 35 U.S.C. § 32; see also 37 C.F.R. § 11.34(d). Practitioners should be careful to receive guidance on the pros and cons of signing tolling agreements.
Equally important prior to responding, though, is consulting with counsel as well as your insurance carriers. Many of the individuals I work with have our fees paid by their malpractice insurance, which often covers the defense of allegations of misconduct connected to the lawyer’s practice of law.
Can’t I Uphold Privilege?
Practitioners often ask me—”can’t I just refuse to answer these questions based upon privilege?” The answer is complicated, and addressed in another useful post about The Sanctity of Attorney-Client Privilege and OED Investigations. Generally speaking, the lawyers within OED have an expectation of receiving a response to each and every one of their questions, without regard to privilege, confidentiality, and work product. Unfortunately, that does not line up with client demands, the ethics rules, or general practice. As such, it is often helpful to provide a limited amount of information to allow the OED Director to verify a practitioner’s conduct, without waiving privilege. Moreover, in some instances, the client may have expressly waived such privileges if they are the one complaining.
However, OED often requests mounds of information about clients whom would never dream of complaining about you. In such cases, the practitioner should analyze their duty under the confidentiality provisions of 37 C.F.R. § 11.106 and state law, attorney-client privilege, and work product immunity. While no magic answer exists, a good understanding of the scope of the matter, the client(s) and potential for obtaining consent, and the rules at issue, should help determine whether waiver is appropriate or feasible.
This RFI is Unfair – What Should I do?
While in most situations, an individual subject to criminal investigation or civil discovery can enlist a neutral, whether a judge or arbitrator, to help resolve complex disputes, generally speaking no such neutral exists in the RFI process with OED. Notwithstanding that lack of a “judge” during the investigation process, a petitions process exists that allows a practitioner to petition to invoke the supervisory authority of the OED Director over the staff attorney. Should that process not succeed, the practitioner could appeal to the USPTO Director, whose appeals are heard by the General Counsel of the USPTO—also the OED Director’s supervisor. Once the USPTO Director rules on the petition, it becomes a final agency action, which can be appealed through the court system. Few practitioners go through the petitions process, and even fewer appeal those decisions to the courts because of the lack of confidentiality once the appeal is made to the courts, in addition to the fact that the petitions process takes months, during which time the response is still due to OED without tolling.
The Waiting Game
Once the OED receives your response, you can expect months to go by before hearing back. Many cases have multiple sets of RFIs, and the OED staff attorneys tend to carefully review your responses for inconsistencies—often reaching out to witnesses, including colleagues, state bars, and your clients.
Practitioners aspire to have their case closed with no formal action, but much of that depends on the staff attorney’s recommendation to the OED Director. Notably, it is important to know that the staff attorney is generally just doing their job—above them are the decision makers who may overrule their recommendations based upon other factors at play. Of course, when formal action is at play, the practitioner should evaluate whether to proceed to trial or accept a settlement. It should be noted that practitioners who proceed to trial may be subject to the costs of the proceeding as a requisite to reinstatement.
Important Considerations
Practitioners should be mindful about what statements they make during the process to the OED (and others). Therefore, much thought should be afforded to whether the practitioner should participate in an interview with the OED or provide any responses regarding matters where their knowledge is uncertain. For example, the OED often coordinates with state bars to share information, therefore information you provide to another regulatory agency may ultimately be read and reviewed by the OED. Finally, it bears repeating that OED cases have a one-year statute of limitations (and a larger ten-year look back period), which should be present in a practitioner’s mind in understanding whether an investigation may actually be time-barred.
Moreover, as a previous attorney within OED, the aggressiveness and defensiveness of respondents was one are of concern among colleagues. As such, an important takeaway is respect of the process, but also the OED Staff Attorney on the other side. Regardless of their reputation, stature, questions, or even how they treat you, it is important to create a record that is not only clear, but also respectful and devoid of personal attacks.
Should You Hire Counsel?
Just as you would explain to your clients the importance of having adequate patent or trademark counsel, an attorney experienced in OED matters can not only help guide the process, but also provide a buffer to prevent heated or emotional arguments with the OED regarding the nature of the allegations. Of course, cost is always an issue, but obtaining counsel can provide long term benefits, especially if it means the ability to secure your licensed to practice IP law before the USPTO (and preventing any reciprocal action by state bars).
For additional information related to understanding the how best to respond and protect yourself during an OED investigation, contact Emil J. Ali of McCabe & Ali, LLP at 310-596-1234.
