Failure To Communicate No. 1 Cause Of USPTO Attorney Discipline

Michael E. McCabe, Jr.Communications, Diligence, Discipline, Failure to Communicate, Patent Ethics0 Comments

At the risk of sounding like a broken record, since it is the New Year I thought it would be helpful to remind you all, again, of what is in my opinion the First Commandment of Ethics:  Thou Shalt Communicate With Thy Clients.

Seriously.  Clients do not like to be ignored by their attorneys.  This means that when they call or write about the status of their matter, they expect a response—and fast.  To be sure, in this day of instant communications and the ability to send an email any time or day, even one or two days without a response from their lawyer can feel like an eternity to an anxious client.

For example, in In re Jerry A. Schulman, Proc. No. D2016-02 (USPTO Dir. Apr. 13, 2016), a patent practitioner consented to a two (2)-year suspension from practice before the USPTO for allowing multiple patent and trademark applications to go unintentionally abandoned for multiple clients without their knowledge or consent and failure to communicate with his clients about Official Actions. With respect to one client in particular, Mr. Schulman filed seventeen (17) patent applications and nineteen (19) trademark applications.  He neglected those applications, failed to inform his client of important Office correspondence regarding the applications, failed to timely respond to Office communications, allowed the patent and trademark applications to become abandoned without the client’s knowledge or consent, did not inform the client of the abandonments, and misrepresented to the client the status of several of the patent applications.A two-year suspension may seem generous in light of the conduct.  Notably, the OED, in settling Mr. Schulman’s disciplinary matter, recognized certain mitigating factors, including that Mr. Schulman had no prior disciplinary history before the Office during the forty (40) years he had been registered as a patent practitioner. In addition, he expressed remorse, attempted to mitigate the harm to his clients by reviving some patent applications at his own expense, and fully cooperated with the OED during its investigation of this matter.

Often times, a failure to communicate with a client is just one of multiple acts of related misconduct by a practitioner.  The failure to communicate death spirals into forms of related misconduct, including unintentional abandonments and lying to the clients to cover it up.  In such cases, the USPTO has not hesitated in excluding such practitioners from practice before the USPTO.

For example, in In re Kristofer E. Halverson, Proc. No. D2016-33 (USPTO Dir. Oct. 12, 2016), a patent attorney was charged with multiple counts of ethical misconduct arising from his inactions and failure to communicate with clients in multiple patent and trademark prosecution matters.  His failure to communicate was compounded by not informing the clients about the abandonment of their applications.

In one client case, the USPTO issued an Ex Parle Quayle Action on a patent application being prosecuted by Mr. Halvorson.  Mr. Halvorson did not notify the client of the Office Action and took no further steps in the prosecution of the application.  The USPTO issued a notice of abandonment, and Mr. Halvorson failed to notify his client that the client’s patent application had become abandoned.  When the client inquired about the status of the application, he misled the client by saying that the USPTO was “slow.”

With respect to another client, Mr. Halvorson was paid in advance $15,000 to prepare and prosecute four (4) separate patent applications.  In each case, he failed to report an Office Action, failed to respond to the Office Action, and allowed the applications to go abandoned without the client’s knowledge or consent.

This same course of misconduct occurred in other patent and trademark applications filed by Mr. Halvorson on behalf of other clients. In each case, he failed to report important Office correspondence, failed to take any action in response, and allowed the clients’ applications to go abandoned without their knowledge or consent.  In at least some of those cases, he affirmatively misled the clients when they asked about the status of their applications, falsely representing that the applications were still pending when in fact they had gone abandoned.

Based upon these undisputed facts, an administrative law judge found that Mr. Halvorson violated numerous rules, which included failing to provide diligent representation and failing to communicate with his clients.  The USPTO subsequently ordered Mr. Halvorson to be excluded from practice before the USPTO in patent, trademark, and non-patent matters.

Takeaways

For USPTO practitioners, there are several key takeaways.  First, responsiveness to client requests for information must be a top priority.  Even if you are unable to respond substantively to a client email or request for information, practitioners should make it a habit of acknowledging that they received their client’s message and will reply as soon as they are able.  Most clients will appreciate the immediacy of the response and should understand that they are not being ignored.

Second, if you take the “I will get back to you shortly” approach, then practitioners must follow up.  A good practice is to electronically docket a deadline to respond to the client’s email or message.  This will limit the possibility of inadvertently forgetting about the client’s message and not responding at all.  Remember, while you may have hundreds of cases for hundreds of clients, many clients believe their matter is your only matter.  Responding to the client’s requests in a timely manner justifies their feelings that they are important to you, which is a good thing for you.

Third and finally, if you screw up, own up.  Everyone makes mistakes.  In the IP world, unintentional abandonments happen.  The worse thing for a practitioner to do is to ignore their mistakes, cover-up their mistakes, or lie about their mistakes.  Practitioners will best serve their clients and themselves by promptly communicating their mistakes to the client, apologizing, and trying to remedy their errors to the extent possible.

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