Ways to Avoid a USPTO Ethics Investigation

In Practicing Before the USPTO in Today's Market: Conforming Your Conduct to the USPTO's Code of Professional Responsibility, (December 1, 2008), Harry I. Moatz, Director of Enrollment & Discipline at the United States Patent and Trademark Office, outlined his office's new disciplinary procedures for registered patent practitioners. Mr. Moatz also listed the primary complaints that he receives against patent practitioners as 

• Neglect.
• Lack of candor (Either to client or the PTO).
• Failure to make reasonably inquiry.
• Failure or delay in filing application
• Failure to respond to OA (even when client has not paid)
• Misuse of the certificate of mailing
• Insufficient funds
• Failure to pay issue fee
• Failure to revive
• Failure to turn over files to new attorney
• Failure to communicate with client

As noted by Professor Crouch, additional reasons for ethical sanction include DUIs; unauthorized taking of prescription meds; and disbarment.  Under the new ethics rules (Aug 2008), a practitioner must notify the OED Director within 30 days of being convicted of "any" crime. The PTO will then determine whether the conviction is serious enough to merit interim suspension. Practitioner must also give notice of disbarment within 30 days. 

Under "Ways to Avoid an OED Ethics Investigation at the USPTO," Moatz suggests

    1. Act competently when prosecuting applications before the USPTO

        A practitioner shall not neglect a legal matter entrusted to the practitioner. (37 CFR § 10.77(c)).

•  Communicate
•  File papers timely
•  Do not abandon applications without client authorization

    2. Don't make misrepresentations to the USPTO

        A practitioner shall not engage in conduct involving dishonesty, fraud, deceit, or misrepresentation. (37 CFR § 10.23(b)(4)).

• Do not prevaricate on the certificate of mailing
• Do not prevaricate to examiners
• Avoid criminal offenses

    3. A violation of the Rules includes a conviction of a criminal offense involving moral turpitude, dishonesty, or breach of  trust. (37 CFR § 10.23(c)(1)).

• Felony conviction - See, Moatz v. Rose (http://www.uspto.gov/web/offices/com/sol/foia/oed/disc/d2006-16.pdf)
• Moral turpitude – DUI
• Dishonesty – theft related crimes

4. Avoid Violation of State Ethics Rules

        A violation of the Rules includes a suspension or disbarment from practice as an attorney on ethical grounds by any duly constituted authority of a State. (37 CFR § 10.23(c)(5)).

• Reciprocal Discipline by USPTO for suspension of a practitioner by a state:

5. Avoiding conflicts of interest by former USPTO Examiner

        A practitioner who is a former patent examiner cannot accept employment in an area in which personally responsible while an employee at the USPTO. (37 CFR § 11.10(b)).