Robert J. Webster
304 South Lee Street
Alexandria, VA 22314
February 8, 2004
Office of Enrollment and Discipline
U.S. Patent and Trademark Office
Attn: Mr. Harry Moatz
P.O. Box 1450 Alexandria, Virginia 22313-1450
Dear Mr. Moatz:
I think that the proposed rule package is well thought out and well written. Please consider the few comments that I present below before finalizing the rule package.
1. Please consider amending section 11.19, as indicated
below, which reflects the fact that being convicted of a
crime and/or being disciplined in another jurisdiction is
not, in an of itself, misconduct.
Sec. 11.19 Disciplinary jurisdiction.
(c) Misconduct - grounds for discipline. (1) Practitioners. Acts or omissions by a practitioner (including a suspended, excluded, or inactive practitioner), acting individually or in concert with any other person or persons constituting gross misconduct, violating the imperative USPTO Rules of Professional Conduct, or the oath taken by practitioner shall constitute misconduct and shall be grounds for discipline, whether or not the act or omission occurred in the course of providing legal services to a client, or in a matter pending before the Office. Grounds for discipline include:
(i) Conduct resulting in conviction of a crime (see Secs. 11.24, 11.803(d) and 11.804(b));
(ii) Conduct resulting in discipline imposed in another jurisdiction (see Secs. 11.24 and 11.803(e)(1) and (f)(4));
(iii) Failure to comply with any order of a Court disciplining a practitioner, or any order of the USPTO Director disciplining a practitioner;
(iv) Failure to respond to a written inquiry from OED Director in the course of an investigation into whether there has been a violation of the imperative USPTO Rules of Professional Conduct without asserting, in writing, the grounds for refusing to do so; or
(v) Violation of the imperative USPTO Rules of Professional Conduct. See Sec. 11.100(a).
2. Please consider amending section 11.24 by changing
"attorney" to "practitioner" to make the only sentence in
which "attorney" appears be consistent with
the rest of that section, and to reflect the fact that attorneys are not the only type of practitioners to which the section applies, as indicated below.
Sec. 11.24 Interim suspension and discipline based upon reciprocal discipline.
(a) Notification. A practitioner who has been disbarred (including disbarred or excluded on consent) or suspended by a disciplinary court, or who has resigned in lieu of a disciplinary proceeding before or while an investigation is pending shall notify the OED Director in writing of the same within ten days from the date he or she is so suspended, disbarred, excluded or disbarred on consent, or has resigned. Upon learning that a practitioner subject to the disciplinary jurisdiction of the Office has been disbarred, suspended or has resigned in lieu of disciplinary action, the OED Director shall obtain a certified copy of the record of the suspension, disbarment or resignation from the disciplinary court, and file the same with the USPTO Director and the hearing officer if a disciplinary proceeding is pending at the time. Every practitioner who has been suspended, or disbarred, or who has resigned shall be disqualified from practicing before the Office in patent, trademark, and other non-patent cases, as a practitioner, during the time of suspension, disbarment, or resignation.
Note: As a practical matter section 11.24 appears to apply only to attorneys because only attorneys are subject to bar disciplinary proceedings in other jurisdictions.
If this is true, does an equal protection clause problem exist because this section probably does not, as a practical matter, apply to agents who are not attorneys?
3. Please consider amending section 11.803 to (a) make the reporting subsections distinct from the subsections defining the conduct serving as the basis for the reporting; (b) exclude suspension and disbarment from practitioner conduct, and (c) delete the reference to section 10.25(b), which seems to have been removed from the existing Rules of Practice, as follows:
Sec. 11.803 Reporting professional misconduct.
1. (a) A practitioner having knowledge that another practitioner has committed a violation of the Rules of Professional Conduct that raises a substantial question as to that practitioner's honesty, trustworthiness, or fitness as a practitioner in other respects, shall inform the appropriate professional authority.
(b) A practitioner having knowledge that an employee of the Office has committed a violation of applicable Federal statutes, and rules adopted by the Office of Government Ethics that raises a substantial question as to the employee's fitness for office shall inform the appropriate authority. The Office of Enrollment and Discipline is not an appropriate authority for reporting under this section unless an imperative rule of the USPTO Rules of Professional Conduct is violated.
(c) The provisions of this section does not require disclosure of information otherwise protected by Sec. 11.106, or information gained by a lawyer or judge, administrative law judge, administrative patent judge, or administrative trademark judge while serving as a member of an approved lawyers assistance program to the extent that such information would be confidential if it were communicated subject to the attorney-client privilege. The provisions of this section do not authorize the filing of frivolous complaints.
(d) A practitioner:
(1) Found guilty of a crime or who pleads guilty or nolo
contendre or enters an Alford plea to a criminal charge in a
court of a State, or
`„,r of the United States, except as to misdemeanor traffic offenses or traffic ordinance violations, not including the use of alcohol or drugs, shall within ten days from the date of such finding or plea advise the OED Director in writing of the finding or plea and file with the OED Director a certified copy of the court record or conviction or docket entry of the finding or plea; or
(2) Found by a court of record or duly constituted authority of the United States to have engaged in inequitable conduct to obtain a patent shall within ten days from the date of such finding advise the OED Director of the finding and file with the OED Director a certified copy of the court record or finding.
(e) A practitioner:
(1) Reprimanded, suspended, disbarred as an attorney, or disbarred on consent from practice as an attorney on any ethical grounds (including ethical grounds not specified in this Part) by any duly constituted authority of a State, or the United States, or who resigns from the bar of any State, or Federal court while under investigation; shall within ten days from the date of such action advise the OED Director in writing of such action and file with the OED Director a certified copy of the order, finding or plea;
(2) Residing in a foreign country or registered under Sec. 11.6(c), who is reprimanded, suspended, disbarred, disbarred on consent from practice as an attorney on any ethical grounds, by any duly constituted authority of a foreign country, including by any foreign patent or trademark office, or who resigns while under investigation by any duly constituted authority of a foreign country, shall within ten days from the date of such action advise the OED Director in writing of such action and file with the OED Director a certified copy of the order, finding or plea; or
(3) Who, as a result of any other event or change, would be precluded from continued registration under Secs. 11.6(a), or 11.6(b), or 11.6(c), or as a result of any other event or change would be precluded from continued recognition under Secs. 11.9 or
11.14, or any event or change that would be grounds for disciplinary action under Sec. 11.25(c) shall within ten days from the date of such event or change advise the OED Director in writing of the event or change and file with the OED Director any records regarding the event or change.
2. (fa) Conduct that constitutes a violation of paragraphs (a) through (e) of this section includes, but is not limited to:
(1) Failing to comply with the provisions of paragraphs (d) or (e) of this section;
(2) Willfully refusing to reveal or report knowledge or evidence to the OED Director contrary to Secs. 11.24(a) or (b); OF 10.26(b);
(3) In the absence of information sufficient to establish a reasonable belief that fraud or inequitable conduct has occurred, alleging before a tribunal that anyone has committed a fraud on the Office or engaged in inequitable conduct in a proceeding before the Office; or
(4) Conduct.which.serves.as.the.basis.for B being suspended, disbarred as an attorney, or disbarred on consent from practice as an attorney on any ethical grounds (including ethical grounds not specified in this part) by any duly constituted authority of a State, or the United States, or resigning from the bar of any State, or Federal court while under investigation.
Robert J. Webster