In re Paul S. Levine, No. D2015-21 (USPTO Dir. Aug. 1, 2016)

Michael E. McCabe, Jr.Conflict, USPTO

Disposition: Two (2)-year suspension, with all but sixty (60) days stayed, and probation for the balance of the two (2)-year period, plus required to retake and pass the Multistate Professional Responsibility Exam, predicated upon identical discipline imposed by the Supreme Court of California. The practitioner’s request for nunc pro tunc treatment of USPTO suspension period to coincide with the already-served California suspension period was denied by the USPTO Director.  Final decision here.

Summary: A trademark practitioner was reciprocally suspended from practice before the USPTO for two (2) years, with all but sixty (60) days suspended, plus probation for the balance of the two (2)-year suspension period and a requirement that he take and pass the Multistate Professional Responsibility Exam, for violation of 37 C.F.R. § 11.804(h) for being publicly disciplined by a duly constituted authority of the State of California. The practitioner opposed imposition of a suspension by the USPTO and requested that the USPTO suspension date be treated as effective nunc pro tunc from the date the practitioner was suspended in California. The USPTO Director denied the practitioner’s request. The practitioner was not required to petition for reinstatement, however, after serving the sixty (60)-day USPTO suspension period. The California state discipline arose from the attorney’s conflict of interest in representing two (2) clients and his continued representation of one (1) client adverse to the other in an arbitration, in violation of California’s ethics rules.

Related Case: In re Paul Samuel Levine, 13-O-219307 (Cal. Sept. 4, 2014)

Related to USPTO Practice?  No

Facts: This matter arose from discipline imposed against a non-patent practitioner by the Supreme Court of California.

Mr. Levine has been a member of the California Bar since 1982. In 2011, a woman hired Mr. Levine to draft an agreement between her and a partner for the production of a film in Thailand. At the time, Mr. Levine already had a legal relationship with the second party. When a dispute arose, the woman hired a new attorney and pursued arbitration against her old partner. Despite the conflict, Mr. Levine continued to represent the partner until the arbitrator ordered both sides to brief the issue of whether Mr. Levine could continue representing the partner.

In addition to failing to withdraw from the matter, Mr. Levine stipulated that he failed to provide written disclosures to the two clients when a potential conflict existed and did not inform them of reasonably foreseeable adverse consequences, including potential risks in the representation. In mitigation, Levine entered into a pretrial stipulation with the State Bar. He had one (1) prior record of discipline, a 2000 private reproval for failing to refund unearned fees for nine months in two (2) client matters, and failing to communicate with a client, promptly return client files or complete work.

The Supreme Court of California suspended Mr. Levine for two (2) years, but ordered that he serve only sixty (60) days of that suspension while the balance of the suspension period was stayed and he was placed on probation. In addition, the Supreme Court of California ordered Mr. Levine to retake and pass the Multistate Professional Responsibility Exam (MPRE) as a condition of his probation.

On July 1, 2015, the USPTO Director issued a complaint for reciprocal discipline and order to show cause why Mr. Levine should not receive from the USPTO the identical discipline he received in California. Mr. Levine responded by stating that he did not object to the imposition of reciprocal discipline so long as he was deemed to have been suspended from practice before the Office during the sixty (60)-day period of his actual suspension in California, from October 4, 2014, through December 4, 2014. Mr. Levine explained that he did not practice before the Office during that time period and that no additional time suspension should be imposed upon him by the USPTO. The practitioner thus requested that the USPTO Director treat his service of his California suspension period as fully discharging any reciprocal suspension that would otherwise ordinarily be imposed by the USPTO.

The USPTO Director denied this request. The USPTO Director determined that the only way a practitioner would be entitled to nunc pro tunc treatment from the USPTO for discipline imposed in another jurisdiction is to follow the USPTO’s regulations set forth in 37 C.F.R. § 11.24(f).

The USPTO Director explained that to be eligible for the imposition of reciprocal discipline nunc pro tunc, Mr. Levine must (1) have promptly notified the OED Director of the discipline imposed upon him by the Supreme Court of California and (2) establish by clear and convincing evidence that he voluntarily ceased all activities related to practice before the Office and complied with all provisions of 37 C.F.R. § 11.58. The USPTO Director found that Mr. Levine failed to promptly notify the OED Director of the discipline imposed upon him by the Supreme Court of California and failed to establish by clear and convincing evidence that he voluntarily ceased all activities related to practice before the Office and complied with all the provisions of 37 C.F.R. § 11.58.

Since Mr. Levine failed to follow the mandate of Section 11.24(f), the USPTO Director refused the practitioner’s request to have the USPTO suspension treated as having already been served by his service of the sixty (60)-day California suspension. Accordingly, the practitioner was suspended from practice before the USPTO for sixty (60) days and his request for nunc pro tunc treatment was denied.

The USPTO Director did, however, waive the requirement that Mr. Levine petition for reinstatement after serving his sixty (60)-day suspension period. The opinion provides no explanation or clue as to why the USPTO Director chose to provide this accommodation to Mr. Levine.