FAQs For IP Practitioners Who Receive A Request For Information and Evidence Under 37 CFR 11.22(f) From USPTO/OED

Michael E. McCabe, Jr.Patent EthicsLeave a Comment

I am frequently contacted by patent and trademark practitioners who have been served with a “Request for Information and Evidence Under 37 C.F.R. 11.22(f)” from the Director of the Office of Enrollment and Discipline (OED) of the U.S. Patent and Trademark Office (PTO).   In Fiscal Year 2018, the OED Director issued over 100 such “Requests” (also referred to as “RFIs”).  Some clients come to me after they have already answered an RFI on their own and have subsequently received a second or follow-up RFI.  The vast majority of my clients–and I have represented over 100 patent attorneys, patent agents and trademark attorneys in OED ethics investigations–prefer to be represented from the start.

I have culled from my experience a list of some of the most frequently asked questions for those clients who are new to the OED investigatory process.  I attempt to answer those below.  In addition, I suggest that you read my 2017 article, “You Just Received an OED Bar Grievance.  Now What?” (click here).

FAQs About Responding to OED Request for Information Under 37 C.F.R. 11.22(f)

What is an RFI?

A “request for information and evidence” is a document that is drafted by the staff attorneys of the OED to aid in their determination of whether the recipient or another practitioner may have engaged in unethical conduct.  The RFI itself is drafted in the form of a letter.  The letter is always sent by certified mail, return receipt requested.

The “typical” RFI includes three parts: (1) a statement or narrative summary of alleged facts “under consideration”; (2) a list of written questions and demands for relevant documentation (similar in substance and style to Rule 33 interrogatories and Rule 34 document requests in litigation); and (3) a brief summary of the USPTO’s ethics rules that may be implicated by the conduct described in the factual allegations.

Why am I receiving an RFI?

The predicate for issuance of an RFI is the receipt by the OED Director of a “grievance” regarding a specified patent or trademark practitioner.  In PTO-speak, a “grievance” means “a written submission from any source received by the OED Director that presents possible grounds for discipline of a specified practitioner.”  See 37 C.F.R. 11.1.  A “grievance” may include a formal written complaint that someone (often a client or another practitioner) files with the OED Director, although “grievances” are much broader than simply traditional bar complaints.  “A written submission from any source” can include, for example, newspaper and journal articles, such as an article posted in IP 360, court decisions, and referrals from a member of the patent or trademark examining corps.

Essentially, a grievance can be anything as long as it is written, it identifies a specific practitioner, and it identifies conduct that, if proven, presents “possible” grounds that the practitioner violated one or more of the USPTO’s ethics rules.  Even anonymous grievances are accepted and there is no oath requirement, fee, or other formality that must be met for a written complaint to rise to the level of a “grievance.”

What does issuance of an RFI mean?

Not every complaint against an IP practitioner rises to the level of a “grievance.”  The OED receives hundreds of complaints about alleged practitioner misconduct each year.  When it receives a complaint, it first vets the complaint to determine if the complaint involves someone within the OED’s disciplinary jurisdiction and whether that person’s conduct is the type of behavior that the ethics rules of the USPTO are designed to remedy.

The OED, for example, often weeds out private matters, such as mill run attorney-client fee disputes that do not raise issues of blatant over-billing, incompetency, or fraud.  If OED screens out a complaint, it will typically report to the complaining party (assuming one can be readily identified) to thank them for the information and advise them the matter is not being investigated.  Non-investigated complaints do not get reported to the practitioner, so a practitioner may never know that a complaint had been filed against him or her.

When the OED issues an RFI, it means that the matter has past the OED initial screening process.  The OED has thus made a preliminary assessment that the facts alleged in the complaint–assuming they are true and can be proven–may warrant a conclusion that a specifically identified patent or trademark practitioner may have violated at least one of the USPTO’s Rules of Professional Conduct.

Must I respond to the RFI?

Yes.  While it is captioned a “request” for information, it is more accurate to say that the RFI is a “demand” for information.  Indeed, practitioners have an independent ethical duty to “cooperate with the Office of Enrollment and Discipline in an investigation of any matter before it.”  See 37 C.F.R. 11.801(b).  Thus, even if the underlying facts or law involved in the “grievance” are without merit, a practitioner can still be disciplined independently if it is found the practitioner failed to cooperate with the OED’s investigation.

When must I respond to the RFI?

The RFI itself sets forth a deadline for responding.  Typically, first RFIs have a 30-day written response period, although some RFIs may demand a faster response period depending upon the circumstances.  Notably, the response deadline is calculated from the date stamped on the RFI itself–which may be one or two weeks before the practitioner actually receives it.  In other words, two weeks of a one-month clock may have already run without the practitioner’s knowledge.  This could create angst in preparing a response.

If the practitioner cannot make the deadline, then the onus is on the practitioner to contact the OED in a timely manner (usually seven days prior to the response deadline) to request an extension of time.  Not all extension requests are granted, and sometimes the OED will ask for the practitioner to provide partial answers by the deadline with the balance due by the agreed-upon extension date.  Extensions of time are a matter of privilege, and the OED Director has wide latitude in granting extension requests and imposing conditions for an extension of time.  A recipient of an RFI who needs more time would be wise to provide the OED Director with a detailed explanation of the reasons why more time is required.  Some of the more common reasons justifying an RFI response extension include the practitioner’s (or their counsel’s) travel, lack of availability due to preexisting work or family obligations, health issues, trials and hearings, delay in receiving the RFI, and the practitioner’s need for time to engage counsel.

What should an RFI response look like? 

No style guidelines exist for responding to an RFI.  It just has to be in writing–but it does not even need to be typed.  I have seen responses that are captioned like pleadings, legal briefs, or discovery responses.  Many responses are in the form of a letter.  The only real formality is the requirement that the response be “wet signed” when filed–either by the practitioner being investigated (if not represented by counsel) or by the practitioner’s OED defense counsel.  The signature is not under penalty of perjury.  The OED is not picky about the formatting of the response and is more interested in its substance, including whether the information being provided is responsive to the requests.

A practitioner may wish to volunteer information to the OED that the request does not expressly call for.  There are strategic considerations involved in deciding whether or what type of information to volunteer to the OED.

Whatever information you decide to provide, the single most important thing to remember is that the response must be truthful.  OED will seek to verify the information provided, and discrepancies may be a cause for concern–including further investigation.  The OED does not suffer kindly those whom it believes have misled them in an ethics investigation.

May I withhold information from OED?

That is one of the trickiest questions clients face when determining how much information to provide.  Often times RFIs call for information or documents that are protected by the attorney-client privilege and/or work product immunity doctrine.  There is no bar counsel response exception to the attorney-client privilege.  Practitioners therefore must give careful consideration to whether they may produce and rely upon privileged information, or whether they are obliged to maintain the privilege.  One must consider what affects a waiver of privilege might have and whether counsel under investigation may overcome a client’s privilege if necessary for the lawyer to defend themselves in an ethics investigation.

For example, in a matter where a current or former client is the grieving party, a practitioner has a right of self-defense and is generally free to rely upon what would otherwise be privileged communications in order to defend themselves in the OED investigation.  But many other investigations are not prompted by a client grievance.  Whether a practitioner can, or should, waive a non-grieving client’s right of confidentiality or privilege normally requires a case-specific analysis of the relevant facts and law.

Can I challenge the scope or legality of the investigation?

In litigation when a person receives an improper discovery request, they have a ready available remedy: they can seek review by an independent judicial officer, who will resolve the matter and the parties will be bound by the court’s ruling.

No judicial officer exists to police the OED Director, who is only permitted to make a “reasonable inquiry” into the matter.  If a practitioner believes the OED Director’s inquiry is unreasonable, his or her “remedy” is to first file a petition with the very person who issued the inquiry at issue:  the OED Director.  See 37 CFR 11.2(b)(e).

Once that petition is denied (assume it will be), the practitioner must then file a second petition–this one to the USPTO Director to exercise his supervisory authority “in appropriate circumstances in disciplinary matters.”  It can take several months for the petitions’ process to work its way through the system.  A decision by the PTO Director denying a practitioner’s petition for review constitutes a “final agency action” which may then be reviewed by a federal district court judge.

In other words, the path to review by a judicial officer is as slow as it is burdensome, and it can be many months before a judicial officer has the opportunity to review what is essentially a discovery request.  Thus, while it is possible to challenge the scope and reasonableness of an ethics investigation, care must be taken to ensure that proper internal remedies are exhausted before seeking review by a district court judge.

To whom must I report the OED investigation?

OED ethics investigations are protected by the federal Privacy Act.  Indeed, because of the Privacy Act, the OED is prohibited from disclosing to the public–including clients–the facts involved, legal issues, or even the existence of a grievance or ethics investigation.

Still, practitioners who are employed may be required under the terms of their employment to disclose the grievance–especially if the grievance arises from the lawyer’s provision of legal services.  Moreover, some practitioners have malpractice insurance that may provide coverage for the cost of ethics defense counsel, and if counsel owes a duty to report an ethics inquiry to their malpractice carrier depends upon the terms of the applicable insurance policy.

What will OED do when it receives my response?

The first step is for the OED to docket and review the response.  The staff attorney is going to determine if the response has actually answered the questions in the RFI.  A sure fire way to receive a second, or follow-up, RFI is by failing to respond fully to the questions in an initial RFI.

In addition, the staff attorney is going to be trying to verify the positions asserted in the response.  The OED staff attorneys are pretty good detectives when it comes to finding alleged inaccuracies in an RFI response or inconsistencies between a response and other information.  The OED will need to decide, normally within the first couple of months after receiving a practitioner’s response, whether to issue a second or subsequent RFI.  It is not at all unusual for the OED staff to issue multiple RFIs in a given investigation.

The OED may use the information in the responses to determine what are the relevant facts.  They will be asking:  What facts are undisputed?  What facts disputed?  If there is a dispute of fact,  what is the evidence on both sides of the dispute?  Is the dispute material?  What if any disciplinary rules were violated by the practitioner?  Is there evidence of aggravating circumstances or mitigating circumstances?  And what is the appropriate disposition of the matter?

Once the OED staff attorney has concluded his or her investigation, they will memorialize their findings and report their recommendations in a written memorandum to the OED leadership.  The OED Director and his advisors will utilize this information in determining whether to close the investigation or proceed to filing a disciplinary complaint against the practitioner.

Should I agree to be interviewed by OED?

Most OED investigations are conducted solely in writing.  Some staff attorneys of the OED may request that the practitioner “volunteer” to participate in a face-to-face or telephonic interview.  Practitioners who are on the receiving end of such “requests” often feel that participating in an oral interview is mandatory, and the OED likes to remind them about their duty of cooperation when making such requests.  However compulsive they may sound, attendance at an OED interview (just like will all business with the USPTO) “is unnecessary” and the business of the Office “should be transacted in writing.”  37 CFR 1.2.

That is not to say that practitioners should not participate in OED interviews.  Whether a practitioner should or should not agree to be interviewed by the OED is a decision to be made on a case-by-case basis, considering the risks, the potential of causing more harm than good, and the possible “upside” especially for someone who is at low risk for discipline and who will otherwise present themselves credibly to the OED staff.

Should I permit OED to contact my clients?

Not infrequently OED will ask for permission to contact clients who have not filed a complaint with the bar counsel over the practitioner’s conduct.  This request raises another strategic concern for the practitioner facing the request.  On the one hand, practitioners want to be helpful in cooperating fully with the OED investigation.  On the other hand, practitioners are (rightly) concerned of the potential for reputational harm or interference with their relationships with clients who receive unexpected phone calls from ethics counsel of the USPTO about their own attorney.  Practitioners faced with such a Hobson’s Choice should consider the advantages and disadvantages of acceding to such a request in the context of the specific facts of their matter.

How will the investigation end?

An OED investigation can end in one of four ways.

The OED can terminate the investigation with no further action–the file is closed.  That is considered the “best” result from a practitioner’s standpoint.

The next best termination is a termination of investigation with a private, non-disciplinary “warning” letter.  The OED likes to utilize such letters in cases where the facts or law do not necessarily add up to a strong case of an ethics violation but the matter is not entirely free from doubt.  Such warning letters are used to provide reminders to practitioners regarding what rules are implicated by their conduct and to sensitize the practitioner to the ethics issues.

A third way for an OED investigation to terminate is by filing a disciplinary complaint against the practitioner.  The complaint, which looks like a civil or criminal complaint filed in a court action, is assigned to an administrative law judge for a merits hearing with live witness testimony.  A disciplinary complaint is filed in cases involving generally more serious conduct.

A final way an investigation is terminated is by the practitioner and the OED Director entering into a “settlement” agreement.  A settlement agreement, which can be entered into before or after a disciplinary complaint is filed, finally adjudicates the matters addressed with the practitioner and OED Director agreeing to some form of public sanction–either a public reprimand, a suspension from practice before the Office for a period of time, or an order “excluding” a practitioner from practice before the Office (akin to a disbarment).

How long will the investigation last?

OED investigations typically run between six and twelve months.

Should I represent myself?

That is not a good question to ask an OED defense attorney with three kids and a mortgage.  But aside from my own self interest, I understand that some individuals have represented themselves before the OED and have done just fine.  Still, even the existence of an ethics investigation can cause extreme anxiety.  Some practitioners have neither the time nor the stomach for dealing with a government regulator who has the power to strip them of their ability to earn a living.

If can be difficult for a practitioner who is not knowledgeable about the PTO’s disciplinary rules and jurisprudence to spot the ethics issues, objectively assess their own conduct, objectively review the evidence against them, or understand the bounds of their legal exposure.  Thus, as with any legal representation, those who choose to represent themselves should proceed cautiously and understand that everything they say and do before the OED may be used against them.

 

Leave a Reply

Your email address will not be published. Required fields are marked *