Whether you practice in trademark or patent law, you generally want to avoid receiving communication from the Office of Enrollment and Discipline (OED). But what happens when they send you a certified letter that includes a Request for Information and Evidence Under 37 CFR 11.22(a) (RFI)?
Understanding one of OED’s core missions, investigating allegations of misconduct by practitioners, is helpful in guiding your thought process. At first, the fear sets in. If your conduct was related to a grievance filed by a client or fellow practitioner, your thoughts may begin with anger and hatred. You then may wonder what you could have done differently–or even worse– you may try to respond without understanding the key issues and the professional conduct rules. However, it is important to remember that their duty is to protect the public from unscrupulous practitioners, and those who bring disrepute to the profession.
As a practitioner, you clearly understand the benefits of hiring counsel experienced in the area of practice to represent your interests, but before you reach out, here are some suggestions to assist you in contemplating your strategy for a response:
Confirm receipt of the RFI by contacting OED by e-mail or phone and request a reasonable extension of time. Remember that OED operates under a 1-year statute of limitations. See 35 U.S.C. § 32. Therefore, you may be requested to enter into a tolling agreement. See 37 CFR § 11.34(e). Often, by the time you receive the RFI, you have only 2-3 weeks to respond, which may not be enough time to procure and review documents.
Review the USPTO Rules of Professional Conduct. See 37 CFR § 11.101 et seq. While one might consider this an exercise in futility, acknowledgment of missteps, as well as contrition, are often key factors in addressing the concerns of OED, or other bar counsel.
Prepare a truthful response and understand that a failure to respond to a question by upholding your 5th Amendment right to self-incrimination may result in an adverse inference against you. See, e.g., Baxter v. Palmigiano, 425 U.S. 308 (1976). Therefore, it may be helpful to understand the nuances of the Privacy Act, as well as the exceptions, including how OED routinely shares information (and receives information from) other agencies and bars.
A knowing failure to respond may be considered a failure to cooperate, which itself is purportedly an additional violation of the USPTO Rules of Professional Conduct. See 37 CFR § 11.801(b). Therefore, not responding is NOT an option because it will likely result in a greater sanction, even when one was not originally contemplated.
Understand that the staff attorney has been given the duty to investigate the allegations. While the receipt of the RFI means the complaint has passed an initial intake inquiry, your thoughtful response could result in a dismissal of the grievance. Therefore, politely and thoroughly explaining the issues allows the staff attorney to make a recommendation to the OED Director on how to proceed. Attacks on the staff attorney, social media research into their minor flaws, and other reactions are not helpful.
- Consider how best to humanize yourself in this situation. We all are products of our own experiences, and the OED’s experience in discussions with the grievant, as well as your written response, will clearly formulate their decision-making process. However, to the extent you can provide a reflection of yourself, your thought process, and any mitigating factors, those often help your cause.