You Just Received An OED Bar Grievance. Now What?

Michael E. McCabe, Jr.OED, Office of Enrollment and Discipline, Patent Ethics0 Comments

The only time a patent attorney or agent ever wants to hear from the USPTO’s Office of Enrollment and Discipline is when they are admitted to the Patent Bar and issued a registration number. Other than that, no news is good news.

So if an envelope arrives from the OED (certified mail, return receipt requested), don’t expect the Office to be writing to complement you on your well-crafted patent application or tell you what a fine job you did rebutting a likelihood of confusion rejection.  It means that a grievance has been filed against you, the OED has screened the grievance, and it has made an initial determination that–taken at face value–provides a sufficient justification for the OED to commence an investigation into whether you may have violated the USPTO’s ethics rules.

For many practitioners on the receiving end of an OED grievance, it is not uncommon for panic to set in.  Fear too.  And anger.  Sometimes all of the above.  These are all completely normal reactions.  

Many practitioner faced with an OED have a host of questions.  Has the OED prejudged me?  How serious is this?  Will I lose my license?  What should I do?

Here are some suggestions on what to do, and what not to do, if you receive an OED grievance.

  1.  Accept the delivery.  Seriously.  The letter is sent certified mail return receipt requested for a reason.  If you refuse delivery, the Postal Service is going to simply return the letter back to the OED with a note indicating delivery was refused.  That is a terrible way to begin an investigation.
  2. Read the letter.  Remember back when the stock market was tanking?  Some investors would get their monthly brokerage statements and simply file them away unopened or trash them.  Avoidance is a very common reaction to anticipated bad news.  But really, this defense mechanism is not going to help you.  So sit back, take a deep breath, and read the letter from cover to cover.   And if you just cannot bring yourself to doing so, then get someone that you know and trust–a family member, spouse, colleague, someone–to read it for you.
  3. Docket the response deadline.  The OED Grievance letter requests “information and evidence” by a date certain.  Typically, the deadline for responding is 30 days from the date on the letter–not the date the letter was received.  This means you may only have a few weeks to respond.  So docket the deadline just as you would any other important pleading or filing.
  4. Consider requesting an extension of time.  The OED Director is generally very reasonable about granting extensions of time.  Two things to consider.  Number one, you have to ask before the deadline.  Normally, the OED requires receiving a request for extension of time to respond to a grievance at least seven (7) days before the due date.  Number two, you have to provide the OED with a reason for the request.  The Office applies a rule of reasonableness.  They understand that most IP attorneys are busy people who have lives, work and family obligations, travel commitments, medical issues, and even just simply require time to engage counsel.
  5. Hire counsel.  Many attorneys feel that since they are trained legal professionals, they should be able to respond to an OED grievance.  After all, they presumably lived through whatever is the subject matter of the grievance, and many feel that they have nothing to hide.  Indeed, some IP practitioners believe that if they “lawyer up” it is a sign of guilt.  It is not.  A law school professor of mine used to love to preach that a lawyer who represents himself has a fool for an attorney and an idiot for a client.  Self-representation is a dangerous game.  It is often very difficult for an individual to think clearly and objectively when they are personally accused of ethical wrongdoing.  Many IP attorneys are not well-versed in the USPTO’s Rules of Professional Conduct and Code of Professional Responsibility.  Preparation of a response to a grievance requires careful thought and planning, risk assessment, time, and an understanding as to not only what the OED is expecting but also what is going to happen with your response once it is received at the OED.  Independent outside grievance counsel can bring perspective and help the unschooled practitioner who thinks they are smart enough to represent themselves from making critical mistakes.
  6. Conduct a thorough investigation.  The OED wants you to provide them with all of the information needed for them to assess whether there is any merit to the grievance.  To meet their expectations normally requires a thorough investigation of the facts, including a review of files, correspondence, emails, and witness interviews.
  7. Answer the question.  This sounds obvious, but many practitioners, whether intentionally or inadvertently, do not answer the OED’s grievance questions.  The OED employs about a dozen well-trained attorney “investigators.”  They have seen hundreds of responses, and so they pretty much know when they are being fed a “line” and when they are getting reasonable responses. Conclusory responses, unsubstantiated assertions, and bald allegations will only cause the OED to question your own veracity and ask more questions.
  8. Make their job easy.  You want to not only answer their questions.  This is an opportunity for you to explain what was going on.  The investigators’ job is fundamentally to uncover all of the pertinent facts.  So give that to them.  Lay it out, in chronological order.  And by all means supplement your response with contemporaneous records.  Address all of the factual and legal issues raised by the grievance.
  9. Be mindful of your duty to cooperate.  Every USPTO practitioner, whether they are registered patent attorneys or agents, trademark attorneys, or others who do business before the Office (such as PHV admitted attorneys in PTAB proceedings) has an ethical obligation to cooperate with the investigators.  This does not mean that you cannot raise objections.  Questions may call for privileged information, for example, which may lawfully be withheld.  Or you may owe a duty of confidentiality to a client or third-party that limits your ability to respond.  But simply “objecting” and refusing to respond–while not per se inappropriate–requires careful thought and analysis.  This is not civil litigation where a party can string together a laundry list of boilerplate objections and expect that that will satisfy the Office.  Objections themselves require careful thought and analysis.   You may be able to obviate the need for objections by simply communicating with the OED, explaining your position and the problem you are having, and trying to come up with a compromise or alternative that gets the OED the information it needs without raising disputes that will usually only serve to antagonize and alienate the investigators.
  10. Challenges to the OED grievance process may require an Agency petitions practice.  Unlike a civil litigation where a judicial officer is available to play referee over all manner of discovery issues, that type of process does not exist in the OED.  There is, however, an internal review mechanism for practitioners to use if they have a serious issue with an OED request for information or evidence.  First, the practitioner may file a petition with the OED Director.  If that petition is denied, the practitioner may appeal the denial to the USPTO Director.  If that step fails, then the practitioner has exhausted their administrative remedies and may be able to seek relief in federal court.  Such actions are extremely rare, and I am unaware of anyone in modern times ever successfully challenging a particular request by this process.  Nevertheless, the process does exist, but it should only be used sparingly and for egregious misconduct by the regulators.
  11. Be nice.  This does not mean you have to cave on every issue.  It does not mean abandoning your rights and responsibilities.  But what the OED is assessing, at bottom, is your character.  So be a professional.  The OED is not a machine–it is an organization comprised of experience attorneys.  Many of them have worked in law firms and have patent or trademark backgrounds.  They can relate to the realities of life “on the outside.”  Show them the same courtesy and respect as you would a judge in federal court.  That does not mean that you will “win.”  But you will score character points for your professionalism, and how you act and conduct yourself can either help you (if you do it right) or hurt you (if you do it wrong).
  12. “When they go low, you go high.”  Take Michelle Obama’s advice–some grievances are nasty character attacks.  Avoid at all costs the instinct to attack the accuser.  The OED does not care about the accuser’s character; that is not what they are investigating.  Now, if the accuser is lying, then you need to address those lies and give the OED the information that will help them to realize that the grievance is incorrect or makes misrepresentations.  But this needs to be done carefully and professionally.  Limit personal attacks and vitriol–that usually does not “play well” at the OED and at best it delays or gets in the way of the OED fact-finding process.
  13. Tell the truth.  There are legions of OED decisions where it was found that the practitioner lied to the OED during the investigation.  Just don’t go there.  If you get caught in the lie, then the investigation takes a completely different turn–the conduct that might have caused the investigation to begin might long be forgotten, and the OED will now focus on whether or not the practitioner was being forthright in their answers.  And the OED staff is very resourceful–they are not called “investigators” for nothing.  The cover up is always worse then the “crime.”  Plus the truth is much easier to remember.
  14. Own it.  Let’s face it, we are all human.  And not all bar grievances end in discipline.  In fact, the majority do not.  But one thing to be mindful of is that we make mistakes.  Perfection is not the ethical standard.  So if a mistake was made, a reasonable explanation for the mistake can be provided, and remedial measures taken to prevent the mistake from happening again, those are targets worth shooting at.  You may not get off free and clear, but in my experience the chance for serious discipline (such as a multi-year license suspension) can be substantially mitigated by the practitioner’s candor and their good faith efforts to bring their practice into full compliance with the USPTO’s ethics rules.  The process begins with the response to the OED grievance.

Following these suggestions is not a guarantee of any particular outcome or success.  Every OED grievance has its own unique set of facts and circumstances.  In some cases, the nature of the attorney’s misconduct or error may be such that serious discipline cannot reasonably be avoided.  But in many cases, there is room to negotiate a more favorable resolution.  The OED Director has substantial discretion in forging a resolution that protects the public and maintains the integrity of the bar–which are the primary purposes of our system of self-regulation.  Practitioners can help themselves immensely by responding appropriately to the OED grievance.

 

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