PTO ETHICS HORROR STORIES

Transcription

1 PTO ETHICS HORROR STORIES Presented By: Michael E. McCabe, Jr.

2 Scope of Power What Law Applies Frequent Issues The Process Sanctions Summary Outline 2

3 Part I The Litigation Patent attorneys represent Client in infringement suit. Case settles. Representation ends. Patent Attorneys move on. Several years later, New Client wants to sue Former Client in infringement suit. May the Patent Attorneys take the new matter? 3

4 Part I The Litigation Ethical duties to former clients: Shall not represent another person in the same or a substantially related matter in which that person's interests are materially adverse to interests of former client. ABA Model Rule 1.9(a) Shall not use former client s confidential information against former client. ABA Model Rule 1.9(c). Determine prior matter unrelated to new matter. Determine nothing learned from prior matter relevant to new matter. 4

5 Part I The Litigation New lawsuit filed against Former Client. DQ motion filed. Court presumes confidential information was disclosed. Issue is whether matters were substantially related. Court applies relatively broad view of how related is substantially. DQ motion granted. No interlocutory appeal available. 5

6 Part II The OED Investigation No bar grievance filed by Former Client. DQ decision reported in media. OED learns of court s opinion. OED decides to open an investigation into whether any of the PTO s ethical rules were violated. 6

7 Scope of OED Power All attorneys and agents: Engaged in practice before PTO; or Suspended or resigned; or Registered to practice; or Inactivate, reprimanded, suspended, or excluded from practice by another authority; or Anyone offering to provide any legal services before PTO. OED authorized to investigate those registered patent attorneys involved in the DQ matter. 7

8 Choice of Law in OED 1969 ABA adopts Model Code ABA adopts Model Rules. States transition from Code to Rules 1985 PTO adopts ethics rules based on ABA Model Code. May 3, 2013 PTO revamps its ethics rules to conform with ABA Model Rules. 8

9 Choice of Law in OED Which rules apply? Pre-5/3/13 Post-5/3/13 Apply PTO Code. Apply PTO Rules. OED not bound by any particular interpretation of applicable rules. Consider everything: State and ABA formal/informal ethics opinions. Court decisions. PTO published decisions 9

10 Who interprets? Choice of Law in OED OED Staff attorneys. OED Director. PTO Director (advised by PTO General Counsel). Exculpatory decisions generally not public. Unpredictability in how law will be interpreted/applied by OED. 10

11 Frequent Issues Before OED Reciprocal Discipline. 37 C.F.R Registered patent attorneys disciplined by another bar will have reciprocal discipline imposed in PTO. Interim suspension and discipline based upon conviction of committing a serious crime. 37 C.F.R Violation of PTO ethics rules. 11

12 Ethical Issues in OED Intent/knowledge-based misconduct: Dishonesty. Fraud. Misrepresentation. Theft. Intentionally failing to seek lawful objectives of client. Intentionally failing to carry out services for client. Intentionally prejudicing or damaging a client. Knowingly revealing or using client confidences. 12

13 Ethical Issues in OED Disreputable/Gross misconduct: Conduct involving moral turpitude. Negligent-like misconduct: Incompetence. Neglect/Abandonment. Failure to communicate. Mishandling client funds. Specific intent or knowledge not required. 13

14 Catch-All Rules Ethical Issues in OED Conduct prejudicial to the administration of justice. Conduct adversely reflecting on fitness to practice before PTO. General rules may apply when no specific rule applies. Any conduct not condoned by PTO. Not limited to practice before PTO 14

15 OED Investigation Grievance - Information or evidence from any source which alleges facts suggesting possible grounds for discipline of a practitioner CFR 11.22(c). 15

16 Sources of Grievances Clients. Opposing counsel. PTO internal. News media. State Bar. Self-report. 16

17 OED s Investigatory Powers OED requests information Information is extremely broad in scope and time-frame: Admit or deny all facts. (RFAs) Answer written questions. (Rogs.) Produce all documents. (Doc. Requests). 17

18 OED Investigatory Powers Usually one month to respond. One-year SOL for OED to bring charges from date misconduct is made known to an officer or employee of the PTO. Not clear if SOL starts when: OED Director actually knows. OED Director should have known. Others at PTO know/should know. Parties can agree to toll SOL. 18

19 Ethical Issues in OED In DQ Case, OED considers: Did patent attorneys use any confidential client information? Was conduct prejudicial to administration of justice? Did conduct adversely reflect on fitness to practice before PTO? Was the district court s opinion wrong? 19

20 Respond fully to RFIs. Response to OED Provide legal argument/analysis pertaining to ethical rules raised by OED. Consider what sanction is appropriate Mitigating circumstances (e.g. inexperience, lack of intent, no prior record). Aggravating circumstances (e.g. experience, knowledge, intent, prior history). Duty to cooperate. Failure to cooperate grounds for separate violation. 20

21 Results of Investigation No Action or warning Practitioner wins. Institute formal disciplinary charges: Referred to ALJ outside PTO for evidentiary hearing. Director Final Decision. Appeal to E.D. Va. Appeal to CAFC. Most cases that proceed to charging stage are ultimately resolved by settlement between practitioner and OED. 21

22 Sanctions Probation Reprimand Suspension for appropriate period of time Exclusion 37 C.F.R

23 Summary OED proactive. OED discipline subject to reciprocity with state bar. Be mindful about allowing employees or agents to respond to OED without employer s knowledge or input. 23

24 QUESTIONS? Michael E. McCabe, Jr. Funk & Bolton, P.A. 36 S. Charles Street Twelfth Floor Baltimore, MD (410) Funk & Bolton, P.A. 24