In re Kristofer E. Halvorson, Proc. No. D2016-33 (USPTO Dir. Oct. 12, 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 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 misleading statements in response to his clients’ requests for information, and his failure to cooperate with the OED’s investigation of his misconduct. The OED Director filed a disciplinary complaint based upon the practitioner’s misconduct. After failing to respond to the complaint, an administrative law judge entered an initial decision recommending entry of judgment by default in favor of the OED. The initial decision proposed that the practitioner be excluded from practice before the USPTO. Because the practitioner failed to appeal, the ALJ’s initial decision became the USPTO’s final decision as a matter of law, and thus the practitioner was excluded.

Facts: On July 11, 2016, the OED Director filed a Complaint against Mr. Halvorson. The complaint cited numerous instances arising fundamentally from Mr. Halvorson’s failure to communicate with his patent and trademark clients, failure to respond to office actions, and resulting abandonments of his clients’ applications without their knowledge or consent. His actions were made worse by his misleading statements in response to his clients’ inquiries about the status of their respective applications.

In one matter, for example, 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.

In addition to the foregoing, Mr. Halvorson was suspended from practice for one year by the Arizona State Bar arising from some of the same misconduct alleged in the USPTO’s disciplinary complaint. He was further administratively suspended in Arizona for failing to comply with his mandatory continuing legal education requirements in that State. He continued to practice trademark law before the USPTO even though he was suspended from Arizona and thus was not legally competent to practice in trademark matters before the Office.

The OED issued Requests for Information (“RFIs”) regarding the various matters in which he was alleged to have engaged in ethical misconduct. Mr. Halvorson, however, failed to respond to the OED’s investigation.

Based upon these undisputed facts, the ALJ found that Mr. Halvorson violated numerous rules in the USPTO Rules of Professional Conduct (for his misconduct on or after May 4, 2013), and numerous rules in the USPTO Code of Professional Responsibility (for his earlier misconduct). His violations included, inter alia, failing to provide diligent representation, failing to communicate with his clients, failing to refund or return advanced fees which were not earned, failure to respond to clients’ requests for information, failing to pay restitution to clients as he was ordered to by the Arizona disciplinary authorities, engaging in the unauthorized practice of law, failure to cooperate with the USPTO’s ethics investigation, engaging in dishonest conduct, and engaging in conduct prejudicial to the administration of justice by failing to cooperate with the OED’s investigation.

The ALJ recommended under the circumstances that exclusion from practice before the USPTO was warranted. Mr. Halvorson failed to appeal the ALJ’s initial decision. Accordingly, the ALJ’s initial decision became the USPTO’s final decision as a matter of law and Mr. Halvorson was ordered excluded from practice before the USPTO in patent, trademark, and non-patent matters.