Five Strikes And You’re Out At The USPTO

Michael E. McCabe, Jr.Exclusion on Consent, Failure to Communicate, Misrepresentations, Neglect, Unauthorized Practice of Law0 Comments

The USPTO Director excluded a patent attorney on consent following a disciplinary investigation arising from numerous alleged violations of the USPTO’s ethics rules.  See In the Matter of Edward Etkin, Proc. No. D2016-05 (USPTO Dir. Jan. 8, 2016).

The OED conducted a disciplinary investigation into the conduct of patent attorney Edward Etkin of Brooklyn, New York. The OED found that Mr. Etkin engaged in misconduct in multiple client matters before the USPTO:

First Matter – In 2012, Mr. Etkin received an Office Action in a patent application that he had filed, but he did not communicate to his client that the Office Action had been issued, nor did he file any response to the Office Action. The USPTO issued a Notice of Abandonment, which Mr. Etkin received but failed to communicate to his client. He made no attempt to revive the application and misled the client regarding the status of the application, implying that the application was still pending and advising the client to file a CIP application. The client paid $2,600 for filing a CIP, but Mr. Etkin failed to file the application yet represented to the client he had done so. Mr. Etkin also fabricated documents, which appeared to have originated from the USPTO, relating to the status of the application, and gave those documents to his client.

Second Matter – In 2013, Mr. Etkin received an Office Action in a patent application that he had filed, but he did not communicate to his client that he had received it, and did not file any documents with the USPTO responsive to the Office Action. The application went abandoned, and Mr. Etkin made no attempt to revive it nor did he communicate the abandonment to his client.

Third Matter – Mr. Etkin filed a petition to revive an abandoned patent application on behalf of a third client. The petition was filed more than four years after the date of abandonment. In the petition, Mr. Etkin knowingly falsely certified that “[t]he entire delay in filing the required reply from the due date from the reply until the filing of a grantable petition pursuant to 37 CFR I .127(b) was unintentional.” In fact, the delay in filing the petition was intentional. The petition to revive was granted based on Mr. Etkin’s false certification that the delay was unintentional.

Thereafter, the USPTO issued an Office Action in the application. Mr. Etkin received the Office Action, but did not notify the client that it had been issued, nor did he file any document in response. The USPTO issued a Notice of Abandonment, which Mr. Etkin received but failed to report to the client. Instead, Mr. Etkin misled the client into believing the application was still pending.

Fourth Matter – In 2012, Mr. Etkin received a Notice of Allowance in response to an intent-to-use trademark application he filed on behalf of the same client he represented in the Third Matter described above. Respondent did not inform the client that he had received the Notice of Allowance, and did not file any documents responsive to the Notice of Allowance. The application went abandoned, and Mr. Etkin failed to inform the client about the abandonment and failed to take any action to revive the application.

Fifth Matter – In March 2015, Mr. Etkin became administratively suspended by the USPTO for failure to respond to the Office’s mandatory practitioner survey. After becoming administratively suspended, Mr. Etkin actively engaged in practice before the Office while not authorized to do so, including filing at least two new non-provisional patent applications, and failing to withdraw from at least four pending patent applications.

exit-signMr. Etkin represented, in mitigation, that he has not been the subject of any previous disciplinary complaint. In addition, Mr. Etkin represented that he has submitted full or partial restitution of legal fees to the affected clients. Furthermore, Mr. Etkin represented that he had experienced significant and ongoing health problems that affected his ability to practice law in a reasonably diligent manner. Mr. Etkin also represented that those health problems resulted at least in part from extreme damage to his home and law office, including his client files, records, and office computer systems, caused by Hurricane Irene in 2011 and Hurricane Sandy in 2012.

The exclusion on consent means that Mr. Etkin is not eligible to apply for reinstatement for a minimum of five (5) years. If he does apply for reinstatement, the OED Director will conclusively presume that the facts set forth in the order of exclusion on consent could not have been rebutted by the practitioner.

Mr. Etkin was required by rule to comply with 37 CFR Section 11.58 (the duties of a suspended or excluded practitioner), which includes notifying all of his bars of the USPTO’s Order.  Mr. Etkin is a member of the New York State bar.  Notably, according to public records made available through the New York State Unified Court System (click here), Mr. Etkin still has his New York law license.  In fact, the New York state records state Mr. Etkin has “no record of public discipline.”  Thus, it appears Mr. Etkin is still allowed to practice law pursuant to his New York State law license.

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