This Post Could Save Your Patent Law License

Michael E. McCabe, Jr.OED, Office of Enrollment and Discipline, Patent Ethics, USPTO Administrative Suspension0 Comments

Some patent attorneys and agents are under the impression that once they have passed the Patent Bar exam and have earned a PTO registration number, they are essentially registered for life, with no further action required on their part.  If you are one of those people, then you should read on.

One of the jobs of the USPTO’s Office of Enrollment and Discipline (OED) is to maintain an accurate roster of “current” registered patent attorneys and agents.  There are good reasons for the OED to want to make sure that its roster is accurate.  For one thing, the PTO incurs administrative costs associated with maintaining the roster, so it makes no sense to include on the list the names of those members who are unable (think death) or otherwise unwilling or disinterested (think retirement, career change, etc.) to maintain their status as a current member of the Patent Bar.  For another thing, the public should be able to identify the names and current contact information of anyone qualified by registration to provide patent-related services before the USPTO.

How does the OED meet its goal of maintaining an up to date and accurate roster of active registered patent practitioners?   Two ways.

First, all registered patent practitioners must (let me repeat this–must) provide the OED with correct and current contact information.  See 37 C.F.R. Section 11.11(a).  It is not sufficient for registered practitioners to supply their current contact information in individual patent applications and similar types of correspondence customarily filed with the Office (although they must do that too), because it is the OED that maintains the register of qualified patent practitioners, not the patent examiners.

Section 11.11(a)(1) provides that all registered patent practitioners “must notify the OED Director of his or her postal address for his or her office, up to three email addresses where he or she receives email, and a business telephone number.”  And if a registered practitioner changes their address or telephone number, they “shall, in addition to any notice of change of address and telephone number filed in individual patent applications, separately file written notice of the change of address or telephone number to the OED Director.”  37 C.F.R. Section 11.11(a).

When you became registered, you presumably provided the OED with your most current contact information.  But if and when that information is no longer accurate, such as when you change jobs or simply move office locations, then you must notify the OED of your new information.  You can do this in one of two ways.

One way is to do an update online by accessing the “OED practitioner portal.”   Alternatively, you can complete a change of address form (link here) and file it with the OED.

Why am I making such a big deal about this?  It has to do with the second way the OED maintains an accurate roster–the “mandatory practitioner survey.”  As the OED explains on its website:

The Office of Enrollment and Discipline (OED) periodically conducts a mandatory survey of registered practitioners pursuant to 37 C.F.R. § 11.11. The purpose of the survey is to ascertain whether the practitioners desire to remain on the register. The United States Patent and Trademark Office benefits from the survey by obtaining confirmation that OED’s records regarding each practitioner’s address and telephone number are correct, or by receiving updated information.

How does the OED conduct its mandatory survey?  My mailing the survey to the practitioner’s last known address as set forth in the records of the OED.  The OED is not going to hunt down your “true” address and it assumes that the contact information it has for you is correct.  If the practitioner survey is “returned to sender” (the OED), do not count on the OED to search the Internet for you.  They might.  But then again, they might not.  Instead, the OED Director might file an order to show cause with the USPTO Director why the registered practitioner should not be administratively suspended, and this “notice” is then published in the Official Gazette (and who really reads that?)

So if the practitioner fails to provide the OED with updated contact information, there is a chance that the practitioner will never receive the “mandatory survey.”

What happens if you fail to respond to the OED’s “mandatory survey”?

ADMINISTRATIVE SUSPENSION!

That is correct: “Any registered practitioner failing to reply and give any information requested by the OED Director within a time limit specified will be subject to administrative suspension” under 37 C.F.R. Section 11.11(b).

That is a big deal.

An administratively suspended registered practitioner will “no longer be permitted to practice before the Office in patent matters or in any way hold himself or herself out as being registered or authorized to practice before the Office in patent matters.”  37 C.F.R. Section 11.11(b)(2).  They are “prohibited from practicing before the Office in patent cases while administratively suspended.”  37 C.F.R. Section 11.11(b)(6).

Furthermore, the repercussions for an administratively suspended patent practitioner who knows he or she has been administratively suspended and who continues to practice before the Office anyway can be severe–those individuals “will be subject to discipline” by the OED.  Such knowing misconduct potentially exposes the administratively suspended practitioner to an ethics charge for knowingly engaging in the unauthorized practice of law.  See 37 C.F.R. Section 11.505.

For those registered patent practitioners who were unaware that they were administratively suspended, once they do learn about it, there are several steps they must take if they want to preserve their ability to practice patent law before the USPTO.

First, they must discontinue holding themselves out to the public as being authorized to practice before the USPTO in patent matters.

Second, they must cease signing papers for filing in patent matters in the USPTO.

Third, they should promptly file for administrative reinstatement pursuant to 37 C.F.R. Section 11.11(f).  They do this by filing in the OED a “Reinstatement Data Sheet” (Form PTO-107R) along with various administrative reinstatement fees.  If, in the five years prior to applying for administrative reinstatement, the practitioner has been convicted of a felony or misdemeanor (other than a “minor traffic violation”), then that could delay, if not derail, the reinstatement process.

If they do this relatively quickly and have no negative information on the Reinstatement Data Sheet, then the administrative suspension should be lifted within a few days.

But here is one significant kicker to the whole administrative reinstatement issue–if the practitioner was administratively suspended for two or more years before the date when the OED receives the completed Reinstatement Data Sheet, then he or she must also retake and pass the Patent Bar Examination before they will be reinstated.

Ouch!

Let’s say that you go through all of this and you get administratively reinstated, is all well again?  Not exactly.

What about all of those papers you filed in the Office in patent matters during the time you were administratively suspended?  Are they legal nullities?  Thankfully, the answer according to the USPTO is no.  However, according to sources at both the OED and the Office of Patent Legal Administration (OPLA), the practitioner should file correspondence ratifying their prior signatures in each of the patent cases in which they had signed a paper while their patent bar registration was under administrative suspension.

Getting administratively suspended does not mean you are an unethical lawyer.  On the contrary, even the best practitioner may simply forget the requirements in Section 11.11(a).  And if you move office locations or change jobs, contacting the OED with a change of address form may not be at the top of your to do list.

Worried yet?

Here is a very simple exercise to set your mind at ease.  I encourage all registered patent practitioners to take this simple test, which should take about 30 seconds:

First, go to the OED “Patent Practitioner Search” page on the USPTO’s website (link here).  Search for yourself.  Confirm that: (a) you are listed; and (b) your contact information is correct.

If you are listed, and your contact information is correct, then you are good to go.

If you are listed, but your contact information is outdated or incorrect, then follow the instructions above and update promptly your contact information with the OED.

If you are not listed, then this is a problem.  Call the OED and find out why.  The “Patent Practitioner Search” page only identifies those registered patent attorneys and agents who are active.  If you are not listed, it could mean that you were administratively suspended.  If that is the case, then you will need to follow the rules set forth in 37 C.F.R. Section 11.11.

Administrative suspensions are easy problems to avoid–but it starts with the most simple of things: Make sure the OED has your correct contact information.  If it does not, then you run the risk of not receiving the OED’s “mandatory survey,” the unpleasant surprise of having your Patent Bar membership administratively suspended, and the headache associated with administrative reinstatement.

 

 

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