In re Clifford G. Frayne, Proc. No. D2016-09 (USPTO Dir. June 17, 2016)

Michael E. McCabe, Jr.Misrepresentation, Neglect, UPL, USPTO

Disposition: ALJ’s initial decision recommending entry of default judgment and practitioner’s exclusion from practice before the USPTO became final Agency decision as a matter of law.  Final decision here.

Summary: A patent practitioner with over thirty-eight (38) years of experience was charged with ethical misconduct arising from his representation of a patent prosecution client as well as his representation of multiple clients in trademark matters while his state bar license had been administratively suspended by the New Jersey bar. The practitioner received a public reprimand from New Jersey for certain of his actions. The OED Director later filed a non-reciprocal disciplinary complaint seeking the practitioner’s suspension or exclusion from practice before the USPTO. After the practitioner failed to respond to the OED Director’s disciplinary complaint, and upon a motion for default judgment, an administrative law judge entered an initial decision recommending entry of judgment by default in favor of the OED. The default judgment proposed that the practitioner be excluded from practice before the USPTO. The practitioner failed to file an appeal of the initial decision. The ALJ’s initial decision thus became the USPTO’s final decision as a matter of law. Consequently, the practitioner was excluded from practice before the USPTO.

Related Case: In the Matter of Clifford G. Frayne, Case No. DRB 14-036 (N.J. Oct. 29, 2014)

Related to USPTO Practice?  Yes

Facts: In 2007, Mr. Frayne filed a non-provisional patent application on behalf of his client. Later that year, the application was published by the USPTO. In 2009, the USPTO rejected the application as anticipated by a prior art reference. Mr. Frayne evidently failed to file a response to the Office Action, and the patent application went abandoned in 2010. In 2012, Mr. Frayne filed a second nonprovisional patent application for this client’s same invention. The second application and claims were substantially similar to the specification and claims that had previously been published and ultimately were rejected by the Office. Mr. Frayne failed to disclose to the USPTO either the publication of the first nonprovisional application or the prior art reference cited by the USPTO in 2009. Mr. Frayne allegedly knew at the time he submitted the second application that the claims made in that application were statutorily barred. After examination of the second application, the USPTO rejected the second application as anticipated by the publication of the client’s first application.

Mr. Frayne failed to communicate with his client about the rejection, and the client revoked his power of attorney.

New Jersey Discipline

On July 31, 2014, the Disciplinary Review Board of the Supreme Court of New Jersey entered its decision in In the Matter of Clifford G. Frayne, Case Number DRB 14-036, recommending that Mr. Frayne be publically reprimanded. The New Jersey discipline arose from Mr. Frayne’s (i) failure to communicate with his client in connection with the patent application matter; (ii) practice of law in New Jersey from September 24, 2012, through May 14, 2013, while he was administratively suspended (and thus ineligible to practice law in New Jersey) for not paying the annual assessment to the New Jersey Lawyers’ Fund for Client Protection (CPF); and (iii) failure to cooperate with the New Jersey disciplinary authorities during its investigation of his misconduct. On October 29, 2014, the Supreme Court of New Jersey entered an Order adopting the July 31, 2014 decision of the Disciplinary Review Board

Unauthorized Practice of TM Law

On February 17, 2014, and again on May 21, 2014, the Supreme Court of New Jersey mailed Mr. Frayne a billing notice regarding his required annual assessment for 2014. However, Mr. Frayne did not pay the required annual fee for 2014 or demonstrate that he was entitled to an exemption from making such payments. Consequently, as of August 25, 2014, Mr. Frayne was found by order of the Supreme Court of New Jersey to be ineligible to practice law in New Jersey. He also failed to pay the annual assessment in 2015.

Since he was no longer a member in good standing of the highest court of any state, Mr. Frayne was not authorized to practice before the Office in trademark matters as of August 25, 2014. Nevertheless, after that date, Mr. Frayne continued to represent multiple clients in trademark matters before the USPTO.

In September 2015, the OED initiated an investigation of Mr. Frayne. He continued, however, to represent clients before the Office.

In January 2016, the OED Director filed a complaint charging Mr. Frayne with violations of the USPTO Code of Professional Responsibility for his misconduct prior to May 3, 2013:

  1. 37 C.F.R. § 10.23(b)(4), for conduct involving dishonesty, fraud, deceit, or misrepresentation based on his filing of a patent application when he knew, or should have known, that a patent was statutorily bared pursuant to 35 U.S.C. 102(b);
  2. 37 C.F.R. § 10.23(b)(5), for conduct prejudicial to the administration of justice based upon his patent application filing when he knew, or should have known, that a patent was statutorily barred pursuant to 35 U.S.C. § 102(b);
  3. 37 C.F.R. §§ 10.23(a) and (b) via 10.23(c)(15), for signing a paper filed in the Office in violation of the provisions of § 11.18, which requires practitioners to conduct a reasonable inquiry and certify, in part, that the legal contentions contained in the paper are warranted by existing law; and
  4. 37 C.F.R. § 10.77(b), for handling a legal matter without preparation adequate in the circumstances.

For his conduct after May 3, 2013, Mr. Frayne was charged with violating the USPTO Rules of Professional Conduct as follows:

  1. 37 C.F.R. § 11.804(h)(l), for being publicly disciplined on ethical or professional misconduct grounds by the Supreme Court of New Jersey;
  2. 37 C.F.R. § 11.116(a)(l ) and 37 C.F.R. § 11.505, for failing to withdraw from representation and from engaging in the unauthorized practice of law by representing others before the Office in trademark matters from August 25, 2014 through October 16, 2015, while ineligible to practice law in the State of New Jersey or any other state;
  3. 37 C.F.R. § 11.804(c), for engaging in conduct involving dishonesty, fraud, deceit, or misrepresentation by falsely representing himself to his clients and to the Office to be a person who is authorized to practice before the Office in trademark matters; and
  4. 37 C.F.R. § 11.804(d), for engaging in conduct that is prejudicial to the administration of justice by falsely representing to the Office to be a person who was authorized to practice before the Office in trademark matters during a period which he was ineligible to practice law in the State of New Jersey or any other state.

The ALJ concluded based upon the undisputed facts of the OED Director’s complaint that Mr. Frayne had violated each of the above-referenced provisions of the USPTO’s ethics rules.

In considering an appropriate sanction, the ALJ considered the following four factors: (1) whether the practitioner has violated a duty owed to client, to the public, to the legal system, or to the profession; (2) whether the practitioner acted intentionally, knowingly, or negligently; (3) the amount of the actual or potential injury caused by the practitioner’s misconduct; and (4) the existence of any aggravating or mitigating factors. 37 C.F.R. § 11.54(b).

The ALJ concluded based on these factors that Mr. Frayne’s misconduct warranted exclusion. Accordingly, the ALJ recommended that Mr. Frayne be excluded from practice before the USPTO in patent, trademark, and non-patent matters. Since he failed to respond to the ALJ’s recommended decision, that recommendation became the final decision of the USPTO, and thus, Mr. Frayne was excluded from practice before the Office.