OFFICE OF ENROLLMENT AND DISCIPLINE (OED) USPTO COMPLAINTS

FREQUENTLY ASKED QUESTIONS

The United States Patent and Trademark Office (USPTO) has an extensive regime of ethics regulations that parallel—and to a great extent overlap with—the ABA Rules of Professional Conduct. They are investigated by the USPTO Office of Enrollment and Discipline (OED) As stated on the USPTO website, “[a]ll attorneys and agents practicing before the USPTO in trademark or patent matters are subject to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et. seq. and disciplinary jurisdiction under 37 C.F.R. § 11.19(a). Additionally, unauthorized individuals who represent others before the USPTO are subject to the disciplinary jurisdiction of the USPTO. See 37 C.F.R. §11.19(a).”

The Nissenbaum Law Group welcomes potential clients who are seeking legal advice concerning OED investigations, complaints and hearings into potential violations of the USPTO Rules of Professional Conduct.

The following are a number of frequently asked questions (FAQs) that emerge from a review of the underlying regulations which serve to elaborate upon the scope and parameters of this process.

FAQ # 1 – What are the basic grounds for discipline against a practitioner before the USPTO who violates the disciplinary regulations of Title 37?

There are five grounds for discipline of practitioners before the USPTO under 37 C.F.R. § 11.19(b). They include the following:

Grounds for discipline include:

(i) Conviction of a serious crime;

(ii) Discipline on ethical or professional misconduct grounds imposed in another jurisdiction or disciplinary disqualification from participating in or appearing before any Federal program or agency;

(iii) Failure to comply with any order of a Court disciplining a practitioner, or any final decision of the USPTO Director in a disciplinary matter;

(iv) Violation of any USPTO Rule of Professional Conduct; or

(v) Violation of the oath or declaration taken by the practitioner. See § 11.8.

FAQ # 2 – What is the general procedure for an initial investigation by the OED Director?

The procedure by which the OED Director investigates potential violations is strikingly similar to the typical way potential violations of the ABA Rules of Professional Conduct are investigated. Under 37 C.F.R. § 11.22, the matter goes through a basic intake screening procedure by which the OED Director determines whether there is sufficient basis to initiate the investigation. When the matter is initiated, the OED Director is required to notify the practitioner in writing that the investigation into their potential violation of the regulations has commenced. Thereafter, they may request information from the grievant, the practitioner or “[a]ny other person who may reasonably be expected to provide information and evidence needed in connection with the grievance or investigation.”

FAQ # 3 – Once the OED Director determines that the matter should move forward, what is the next step?

The OED Director is required to appoint a Committee on Discipline to pursue a matter that the OED Director determines should move forward. The Committee will review the evidence and vote as to whether “there is probable cause to bring charges.” Thereafter, it will forward its “probable cause, findings and recommendations” to the OED Director. 37 C.F.R. § 11.23

FAQ # 4 – What is the procedure for a hearing respecting the potential violations by the practitioner?

The procedure by which a complaint is heard is relatively the same as that which generally applies to potential violations of the ABA Rules of Professional Conduct. There is a pleading stage which leads to limited discovery and motion practice culminating in a formal hearing. Ultimately the hearing officer will prepare a report with an initial decision which may include “[a]n order of default judgment, of suspension or exclusion from practice, of reprimand, of probation, or an order dismissing the complaint. The order may also impose any conditions deemed appropriate under the circumstances.” 37 C.F.R. § 11.54

FAQ # 5 – Does the practitioner have a right to appeal?

Either party has the right to appeal within fourteen days after the initial decision by the hearing officer. The notice of appeal is filed with the USPTO Director through their General Counsel. The USPTO Director reviews the entire record, accepts appeal briefs from the parties, and then has the authority to conduct a de novo review if the Director so chooses. Either way, the Director ultimately is empowered to render a disposition that can include a number of potential outcomes, such as, affirming, reversing or modifying the initial decision, or remanding it for further proceedings. 37 C.F.R. § 11.55 & 37 C.F.R. § 11.56

The Nissenbaum Law Group welcomes inquiries from attorneys practicing before the USPTO who may be in need of representation with regard to an OED investigation, complaint or hearing.