In re Sanjeev Kumar Dhand, D2016-17 (USPTO Dir. Nov. 16, 2016)

Michael E. McCabe, Jr.Misrepresentation, USPTO

Disposition: One (1)-year suspension, fully stayed, and one (1)-year probation commencing on the date of the USPTO’s order, predicated upon identical discipline imposed by the Supreme Court of California. The USPTO Director rejected the practitioner’s request for nunc pro tunc treatment of probation term.  Final decision here.

Summary: A patent attorney received a one (1)-year fully-stayed suspension plus one (1)-year term of probation as reciprocal discipline arising from discipline imposed in California, in which he was found to have engaged in moral turpitude and gross negligence by falsely certifying to State authorities that he had satisfied California’s mandatory minimum continuing legal education requirements when in fact he had only partially completed the necessary minimum number of required CLE hours. The attorney did not oppose a reciprocal one-year fully-stayed suspension, however he sought an order that his probationary period commence nunc pro tunc from the date that he began his probationary period in California. The USPTO Director rejected the attorney’s request for nunc pro tunc treatment of the term of probation.

Related Case: In re Sanjeev Kumar Dhand, Case No. 14-O-01528 (Cal. May 14, 2015)

Related to USPTO Practice?  No

Facts: This matter involved California-based patent attorney Sanjeev Kumar Dhand.   Mr. Dhand was required to complete at least 25 hours of minimum continuing legal education (“MCLE”) during the period of February 1, 2010, through January 31, 2013 (the “compliance period”).  Mr. Dhand falsely reported to the California State Bar that he had timely completed all of his MCLE during the compliance period, when in fact he had only completed 9.75 MCLE hours during the compliance period. Mr. Dhand represented that he “believed that he had in fact complied” but that he affirmed his MCLE compliance “without checking his records to ascertain whether his belief was correct.” An audit revealed the misrepresentation.

The Supreme Court of California alleged, and Mr. Dhand agreed, that his false report to the State Bar was grossly negligent, an act involving moral turpitude in willful violation of California ethics law. In re Sanjeev Kumar Dhand, Case No. 14-O-01528 (Cal. May 14, 2015).

In considering the appropriate sanction, the Supreme Court of California noted the absence of aggravating factors and the existence of five mitigating factors: (1) discipline free practice for twelve and one-half (12.5) years (which was given “significant weight”); (2) evidence from eleven (11) individuals attesting to his good character; (3) evidence of substantial community service and pro bono work; (4) change in law office procedure to avoid future non-compliance; and (5) cooperation in the State Bar’s investigation.

The California Bar ordered Mr. Dhand to serve a one (1)-year suspension, which was fully stayed. In addition, during the stayed suspension period, Mr. Dhand was given probation and was ordered to pass the Multistate Professional Responsibility Exam (“MPRE”).

Mr. Dhand reported his suspension to the OED Director pursuant to 37 C.F.R. § 11.24(a). Thereafter, the USPTO Director served Mr. Dhand with a complaint for reciprocal discipline and issued an order to show cause why he should not receive the same disciplinary sanction from the USPTO that he received in California. Mr. Dhand did not contest the imposition of the stayed one-year suspension. He requested, however, that since he had already completed the one-year probationary period and had passed the MPRE, the USPTO should not impose those additional disciplinary sanctions.

On November 16, 2016, the USPTO Director issued its Order imposing reciprocal discipline pursuant to 37 C.F.R. § 11.24. In re Sanjeev Kumar Dhand, D2016-17 (USPTO Dir. Nov. 16, 2016). The USPTO Director agreed that since Mr. Dhand had submitted proof that he had retaken and passed the MPRE, he would not be required to do so again by the USPTO. Id. at 4. The USPTO Director, however, rejected Mr. Dhand’s request that he be placed on one-year probation from the date of the California Bar disciplinary Order.

The USPTO Director explained that the one (1)-year probation was “a standalone requirement” and that the probation “was always part of the state level discipline separate and apart from the other terms of that discipline.” The Director stated that Mr. Dhand’s request that he not be placed on a reciprocal one-year probation was, in effect, asking that the term of his probation run nunc pro tunc from the start of his California probation period.

The USPTO Director held that imposition of reciprocal discipline nunc pro tunc is governed by 37 C.F.R. § 11.24(f), which states that:

Upon request by the practitioner, reciprocal discipline may be imposed nunc pro tune only if the practitioner promptly notified the OED Director of his or her censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification in another jurisdiction, and establishes by clear and convincing evidence that the practitioner voluntarily ceased all activities related to practice before the Office and complied with all provisions of§ 11.58. The effective date of any public censure, public reprimand, probation, suspension, disbarment or disciplinary disqualification imposed nunc pro tunc shall be the date the practitioner voluntarily ceased all activities related to practice before the Office and complied with all provisions of § 11.58.

The USPTO Director held that to be eligible for nunc pro tunc treatment, Mr. Dhand must have: (1) promptly notified the OED Director of the California discipline; and (2) ceased all activities relating to practice before the USPTO and complied with the duties of a suspended practitioner pursuant to 37 C.F.R. § 11.58. Id. at 5-6.   Since he failed to meet these requirements, the USPTO Director reasoned, Mr. Dhand was not eligible for nunc pro tunc treatment with respect to the running of his period of probation.

It is true that the USPTO Director’s requirement that Mr. Dhand “voluntary cease all activities related to practice before the Office” and comply with “all of the provisions of § 11.58” literally tracks the requirements set forth in 37 C.F.R. § 11.24(f). Those requirements, however, make no sense in Mr. Dhand’s case for two reasons.

First, Mr. Dhand was not suspended from practice by the California bar; his suspension was fully stayed. Because his suspension was fully stayed, the USPTO Director could not have imposed upon him any period of actual suspension. The USPTO Director’s finding that Mr. Dhand was required to “cease all activities related to practice before the Office” literally meant that he would have had to voluntarily agree to an actual suspension for some undefined period of time just to qualify for nunc pro tunc treatment of his probationary period. That part of the holding is illogical and is contrary to the USPTO’s reciprocal discipline scheme, which mandates that a practitioner may not receive any greater discipline than what he or she received from the other disciplinary jurisdiction.

The second error with the USPTO Director’s reasoning was the finding that Mr. Dhand was required to comply with 37 C.F.R. § 11.58. That provision, however, only applies when a practitioner has been excluded, suspended, or resigned. When a practitioner is suspended, for example, they are required to notify their clients of the suspension, withdraw from all proceedings before the Office, and take numerous other steps consistent with the inability to practice patent or trademark law before the USPTO. Because his suspension was fully stayed, however, Mr. Dhand was not required to withdraw from his appearance in any matters before the USPTO and he was and is fully qualified to practice before the USPTO. The USPTO Director’s holding that Mr. Dhand was required to comply with Section 11.58 in order to qualify for nunc pro tunc treatment of his one-year probation period is, again, completely illogical, since the disposition he received in the state court did not impact his ability to continue practicing law just like any non-suspended practitioner.

What this decision shows is a logical gap in the USPTO’s nunc pro tunc rule. It is one thing to require the practitioner to report their discipline—including a period of probation—to the OED Director as a condition for receiving nunc pro tunc treatment. But where, as in the Dhand case, the practitioner received no actual period of suspension (only a fully-stayed suspension), the additional requirement that the practitioner comply with “all provisions of [37 C.F.R.] § 11.58” and voluntary cease “all activities related to practice before the Office” renders the nunc pro tunc remedy illusory since the practitioner would be required to terminate his USPTO practice simply to enjoy the benefit of an earlier start date of his probationary period.

In sum, in its current form, the nunc pro tunc rule only works when a practitioner receives an actual term of suspension. When a practitioner receives from a state bar probation with no actual suspension time, the nunc pro tunc rule imposes far greater discipline than the practitioner received from the state bar. This result violates 37 C.F.R. § 11.24(d), which provides that the maximum level of discipline to be imposed is “identical” to the discipline imposed by the state bar. The wording of Section 11.24(f) should be modified so that a practitioner who receives a fully-stayed suspension should not be required to cease practice before the Office and comply with the duties of a suspended practitioner as a condition for qualifying for nunc pro tunc treatment by the USPTO.