Attorney discipline: Special concerns for patent lawyers

Thomas Hallin, Fishman Stewart PLLC

Almost 40 years ago, an old-time lawyer I was litigating against lamented during one of the breaks, “The practice of law isn’t what it used to be.”

What would he say today?

The adage that “if you can’t try the law, try the facts, and if you can’t try the facts, try the lawyer,” seems to have gained a robust vitality in today’s practice. Attorneys could easily find themselves defending against grievances filed before state disciplinary commissions, before federal agencies, or even more daunting, before both state and non-state disciplinary bodies under the doctrine of “reciprocal discipline.”

Today, attorney disciplinary authorities are more aggressive, better funded, more heavily staffed and generally more passionate about investigating and addressing perceived attorney improprieties. To the extent that there are improprieties, in truth, some don’t even affect the practice of law.

In Michigan, where I am admitted, attorney disciplinary matters are investigated and prosecuted by the Attorney Grievance Commission (AGC). In 2014, the AGC, staffed with 11 attorneys and two investigators, docketed approximately 2,872 Requests for Investigation (grievances). The areas of practice most likely to trigger a grievance appear to be:

1. Criminal law

2. Domestic relations

3. Probate law

4. Personal injury

Of the 2,872 grievances filed, most were disposed of by way of summary dismissal, admonishments, or contractual probation. Noteworthy, however, is the fact that 135 grievances culminated in the filing of a formal complaint. After the filing, the complaint is then tried before the Attorney Discipline Board (ADB), the adjudicative body in the Michigan disciplinary process, which may impose disciplinary action that may include suspension or even disbarment. At the very least, the aggrieved attorney may have to deal with any ramifications that stem from just the public nature of the complaint, as well as having to endure the trial.

For attorneys who also practice before a non-state disciplinary body such as the United States Patent and Trademark Office (USPTO), the danger of being “grieved” may be greatly enhanced. Note, moreover, that the possibility for a grievance is not limited to those of us who are registered patent attorneys, but can apply to attorneys practicing before the U.S. Trademark Office, where a separate specialized bar exam and registration are not required to conduct business.

Additionally, the investigative section of the USPTO known as the Office of Enrollment and Discipline (OED) has the ability to discipline attorneys for failure to comply with USPTO regulations, regardless of whether or not the conduct was related to practice before the USPTO.

Under provisions of the America Invents Act (AIA), which went into effect in 2012, the OED must initiate an action either one year from learning of the misconduct or 10 years from the improper activity, whichever is earliest. Discipline can range from mere warning letters to actual, formal disciplinary sanctions, which include public reprimands, suspension, and exclusion to practice before the USPTO.

While the OED has authority over patent agents, only a small fraction of disciplinary sanctions handed down by the OED are attributed to them (13 percent in 2014, and 9 percent in 2013). This may partially be due to the application of “reciprocal discipline” by which the OED may reciprocate discipline by a state disciplinary agency, such as Michigan’s AGC described above. (See 37 C.F.R. § 11.24.) By way of reciprocal discipline, the OED can effectively discipline an attorney based on improprieties committed before other state and federal courts and tribunals.

Despite this, the USPTO still has more grounds upon which to rely to initiate a grievance, and ultimately impose disciplinary sanctions, namely, the USPTO Rules of Professional Conduct (see 37 C.F.R. Part 11), than a state disciplinary agency. The OED is clearly relying upon such expanded disciplinary territory. In 2014, 67 percent of the disciplinary sanctions were based on non-reciprocity, and in 2013, the number was 73 percent.

Areas in which the OED has identified as problematic areas include, but certainly are not limited to:

1. Neglect

2. Dishonesty, fraud, deceit, misrepresentation

3. Federal-related issues

4. Unauthorized practice of law

While the overall numbers of disciplinary actions for a state disciplinary agency, like Michigan’s AGC, are greater than those of the OED, this fact alone should not be viewed as an indicator of diminished aggressiveness on the part of the OED.

While the AGC, for the most part waits for grievances to come to it, the OED, by various accounts, actively goes out looking. OED staff attorneys are believed to monitor news articles, published opinions, blogs, online discussions and other information outlets, where findings of inequitable conduct, exceptional case decrees, imposition of sanctions and other procedural and substantive improprieties are reported.

Given this understanding, along with the greater scope for instituting grievances, attorneys that practice before the USPTO in any capacity may have to fear the OED more than any other disciplinary body.
Attorneys in today’s disciplinary climate must tread lightly, especially those that practice in areas before other agencies with their own disciplinary commissions, such as the USPTO and its OED. That old-time lawyer from 40 years ago probably would not know what to say. Luckily for him, he does not have to say anything.

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Thomas A. Hallin is a partner and general counsel at Fishman Stewart PLLC intellectual property law firm in Bloomfield Hills. Prior to his patent litigation career, Hallin served as Livingston County prosecuting attorney, assistant Michigan attorney general, vice chair of the Michigan Attorney Grievance Commission and as a member of the Federal Judicial Nominating Committee. Hallin represents attorneys before the AGC in Michigan and USPTO nationally on attorney disciplinary defense matters.

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