The OED Redemption: Director Expediting Petitions To Reinstate Suspended Practitioners

Michael E. McCabe, Jr.Discipline, Office of Enrollment and Discipline, Patent Ethics0 Comments

canstockphoto0082620It is not necessarily an easy feat for a suspended lawyer to become readmitted to the Bar.  Some jurisdictions prohibit a suspended lawyer from even entering into a law firm.  In other jurisdictions, a suspended lawyer may work as a paralegal subject to numerous restrictions and conditions.   For lawyers who have practiced for many years on their own, such prohibitions may be very difficult to accept. Moreover, depending upon the length of the suspension, some suspended lawyers simply move on with their lives, finding work in another field, never again returning to the practice of law.

In some state jurisdictions, a suspended attorney automatically becomes authorized to practice law again effective immediately after the suspension period has run.  Not so for practitioners who are suspended by the USPTO.  By rule, the end of a USPTO suspension period simply marks the first day when the suspended patent or trademark practitioner may apply to have their USPTO privileges reinstated.  Unless and until the Director of the Office of Enrollment and Discipline (OED) approves the suspended practitioner’s reinstatement petition, the practitioner remains suspended.

The good news for suspended practitioners is that if they follow, to the letter, the duties set forth in 37 C.F.R. Section 11.58, then they are much more likely to obtain a (relatively) fast decision on a petition for reinstatement.  The faster the suspended lawyer can be reinstated, the faster he or she can resume the practice of patent or trademark law and represent clients in matters before the USPTO.

The Director of the OED has made a concerted effort to move quickly on reinstatement petitions.  This is in apparent recognition that a practitioner who has served their suspension should not be “punished” by unduly delaying consideration of the petition or otherwise allowing a suspended attorney to remain “on the sidelines” any longer than necessary.

Take, for example, the case of (previously) suspended trademark practitioner David B. Newman.  Mr. Newman was suspended for 30 days for an unintentional violation of the USPTO’s rules governing conflicts of interest arising from a joint representation.  See In re Newman, Proceeding No. D2015-14 (USPTO Dir. Nov. 12, 2015).  Mr. Newman complied with the duties set forth in 37 C.F.R. Section 11.58. On December 31, 2015, Mr. Newman filed a petition for reinstatement.  The petition was granted three weeks later, on January 21, 2016. See In re David B. Newman (OED Decision on Petition).   In a related case arising from the same operative facts, the OED Director granted the suspended practitioner’s petition for reinstatement in five (5) days.  See In re Jeremy U. Blackowicz (OED Decision on Petition).

canstockphoto3858330In another case, registered patent attorney Jens E. Hoekendijk was suspended by the USPTO for one year as reciprocal discipline arising from a California disciplinary proceeding.  The California matter arose from this practitioner’s false reporting  to the California State Bar that he was in compliance with the minimum continuing legal education (CLE) requirements when he knew that he was not in compliance.  Mr. Hoekendijk received a one year suspension from California, with all but thirty (30) days of the suspension stayed.  In a subsequent action for reciprocal discipline filed by the USPTO, Mr. Hoekendijk received a one year suspension, but he was permitted by the Office to petition for reinstatement after completing thirty (30) days of his USPTO suspension.  See In re Hoekendijk, Proceeding No. D2015-25 (USPTO Dir. July 24, 2015).  Mr. Hoekendijk applied for reinstatement with the USPTO on October 7, 2015, and his petition was granted two months later, on January 7, 2016.  See In re Jens E. Hoekendijk (OED Decision on Petition).

In yet another reinstatement petition decided on February 29, 2016, the OED Director reinstated a patent attorney who had received a four year suspension, but who was allowed pursuant to a prior settlement agreement to apply for reinstatement after serving two years of his suspension.  The reinstatement petition was filed on January 8 and was granted in seven (7) weeks.  See in re Robert K. Tendler (OED Decision on Petition).

The flip side of these promptly resolved petitions for reinstatement is that if the suspended practitioner fails to provide a complete reinstatement application, or otherwise fails to comply with 37 C.F.R. Sections 11.58 and 11.60, action on a reinstatement petition may be inordinately delayed.  The case of patent attorney Phillip P. Pippenger, who was reciprocally disciplined by the USPTO arising from his failure to timely file a patent application and a complaint in a civil action, is instructive.  Mr. Pippenger received a sixty (60) day suspension from the USPTO.  See In re Pippenger, Proceeding No. D2014-16 (USPTO Dir. July 15, 2014).  Mr. Pippenger filed a petition for reinstatement on October 10, 2014. Although the public record is unclear, apparantly there were problems with his petition.  The end result is that Mr. Pippenger’s petition was not granted until April 30, 2015–the delay adding nearly seven (7) months to his two (2) month suspension.  See In re Phillip M. Pippenger (OED Decision on Petition).

To expedite reinstatement, suspended practitioners must comply with all of the duties spelled out in Title 37, Sections 11.58 and 11.60.  Pursuant to Section 11.58, the practitioner must take the following steps promptly upon being suspended and they must confirm to the OED Director in writing that they have in fact completed such steps, which include:

(a) filing a notice of withdrawal as of the effective date of suspension in each pending patent and trademark application, each pending examiner re-examination interference or trial proceeding and every other matter pending in the Office;

(b) providing all clients with written notice of the suspension and of the practitioner’s consequent inability to act as a practitioner after the effective date of the suspension order.  In that letter, the client must be notified that if not represented by another practitioner, the client should act promptly to substitute another practitioner or seek legal advice elsewhere;

(c) offering to deliver all clients papers and other property and have delivered back to those clients their papers and other property when requested;

(d) closing out any IOLTA accounts;

(e) removing any telephone, legal or other directory advertisement any statement or representation which suggests that the practitioner is authorized to practice patent, trademark or other non-patent law before the Office, including taking down any website that suggests an ability to practice;

(f) not holding oneself out as authorized to practice law before the Office and not rendering legal advice or services to any person having any immediate or prospective business before the Office;

(g) not advertising the availability or ability to perform legal services for any person having immediate or prospective business before the Office as to that business;

(h) refusing any new retainer regarding immediate or prospective business before the Office and not engaging as a practitioner for another in any new case or legal matter regarding practice before the Office; and

(i) providing notice of the suspension to all federal and state courts in which the suspended practitioner is a member.

Proof that all of these requirements were satisfied must be promptly provided in writing to the OED Director.  In addition, the practitioner must maintain a copy of this proof–especially since evidence of compliance with the duties in Section 11.58 is required as part of a petition for reinstatement under Title 37, Section 11.60.

In addition to proving to the OED Director that he or she complied with Section 11.58, the suspended practitioner, in their reinstatement petition under Section 11.60, must: (1)  submit evidence of good moral character, reputation, competency and learning; and (2) demonstrate to the OED Director that reinstatement will not be detrimental to the public interest or subversive to the administration of justice.

Proper and complete documentation, as well as a nonrefundable fee, are the keys to getting expedited consideration of a petition for reinstatement before the USPTO.  The closer the practitioner comes to showing “perfect” or near perfect compliance with Sections 11.58 and 11.60, the greater the likelihood they will receive a prompt and favorable outcome from the OED Director on a reinstatement petition.

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