You represent a patentee in a highly contentious litigation against an accused infringer. The parties hate each other, and the gloves came off months ago–if they were ever on in the first place.
Then extraordinarily you catch your opposing counsel in a lie. There is no question that the conduct is material and raises substantial concerns about the honesty and fitness to practice of the other lawyer. Both you and your opposing counsel are registered to practice before the USPTO.
You tell your client about the “whopper” and advise that you have an affirmative obligation to report your opponent to the OED Director. But the client is hesitant. In fact, he sees this reporting as “blowing” a huge opportunity to gain a tactical advantage in the litigation, an advantage that if played properly could put more dollars in your client’s pocket.
“Offer a deal” instructs the client. “Tell that lying SOB that if he doesn’t start playing ball and increase his settlement offer, his career is toast and you are going to report him to the judge, bar counsel and whoever else will listen.”
Can you do it? After all, the law requires that you represent your client “zealously.” Indeed, under the guise of zealous advocacy you might believe you are ethically obligated to make the most of your opponent’s unethical conduct for the benefit of your client. What’s the downside?
Threatening Discipline As Ethical Misconduct
Under ABA Model Rule 8.4(d), a lawyer cannot use the threat of a report to the appropriate authorities as a bargaining chip. ABA Formal Op. 94-383, at 5. Threatening a disciplinary complaint against opposing counsel in order to gain an advantage in litigation or to coerce a settlement or obtain some other advantage may be considered conduct prejudicial to the administration of justice, and therefore violates Rule 8.4(d). Id. at 4 (stating that “rule 8.4(d) prohibits a lawyer from engaging in conduct that is prejudicial to the administration of justice”). USPTO Disciplinary Rule 11.804(d) proscribes similar misconduct prejudicial to the administration of justice.
Several states have rules that explicitly prohibit threatening to file a disciplinary grievance against an adversary to gain an advantage in a civil matter. In California, for example, a lawyer “shall not threaten to present criminal, administrative or disciplinary charges to obtain an advantage in a civil dispute.” California Rules of Prof’l Conduct, R. 5-100(A). The District of Columbia also prohibits a lawyer from “seek[ing] or threaten[ing] to seek . . . disciplinary charges solely to obtain an advantage in a civil matter.” D.C. Rules of Prof’l Conduct, R. 8.4(g).
The New York City Bar Association recently published the following guidance on the limits of threatening to file a bar complaint:
An attorney who intends to threaten disciplinary charges against another lawyer should carefully consider whether doing so violates the New York Rules of Professional Conduct (the “New York Rules” or “Rules”). Although disciplinary threats do not violate Rule 3.4(e), which applies only to threats of criminal charges, they may violate other Rules. For example, an attorney who is required by Rule 8.3(a) to report another lawyer’s misconduct may not, instead, threaten a disciplinary complaint to gain some advantage or concession from the lawyer. In addition, an attorney must not threaten disciplinary charges unless she has a good faith belief that the other lawyer is engaged in conduct that has violated or will violate an ethical rule. An attorney must not issue a threat of disciplinary charges that has no substantial purpose other than to embarrass or harm another person or that violates other substantive laws, such as criminal statutes that prohibit extortion.
According to the New York City Bar opinion, there is a difference between “merely advising another lawyer that his conduct violates a disciplinary rule or could subject them to disciplinary action” and accompanying that “mere advice” with “a statement that you intend to file disciplinary charges unless the other lawyer complies with a particular demand.” The latter, according to the NY opinion, constitutes a wrongful “threat.”
The New York City Bar opinion further states that “before making a report” to disciplinary counsel, “an attorney is permitted to confront her adversary with evidence of misconduct to confirm that an ethical violation has occurred. See Roy D. Simon, “Threatening to File Grievance Against Opposing Counsel,” New York Legal Ethics Reporter (Originally published in NYPRR, Nov. 2005). As Professor Simon explains, “a lawyer has the right … to notify opposing counsel, as a courtesy, of the intention to file the grievance.” Id. Further, the attorney may “confront opposing counsel with evidence of misconduct” and may “ask whether opposing counsel denies the misconduct or can cast doubt on whether it occurred.” Id. What the attorney may not do is condition the handling of a mandatory grievance on compliance with a particular demand. So, if after confronting the opposing lawyer with evidence of the misconduct, the attorney is convinced that the other lawyer in fact committed the misconduct, it would be improper, in the words of Professor Simon, to “invit[e] the opposing lawyer to bargain away the grievance.”
A threat of a disciplinary complaint may also violate ABA Model Rule 4.4(a), which states, “[i]n representing a client, a lawyer shall not use means that have no substantial purpose other than to embarrass or harm a third person.” This same rule applies to USPTO practitioners. See 37 C.F.R. § 11.404(a) (“In representing a client, a practitioner shall not use means that have no substantial purpose other than to embarrass, delay, or burden a third person, or use methods of obtaining evidence that violate the legal rights of such a person.”). The New York City bar opinion explains, “Threatening to file a disciplinary complaint against an adversary in order to gain a strategic advantage violates this rule, if the threat serves no substantial purpose other than to embarrass or harm the other lawyer or his client.”
A threat to snitch to bar counsel may in some circumstances expose the lawyer making the threat not only to disciplinary charges but potentially criminal charges. Indeed, the New York City bar opinion also opines that a wrongful threat of filing of a disciplinary complaint could be considered extortion. Under New York law, for example, the following conduct is criminal:
A person obtains property by extortion when he compels or induces another person to deliver such property to himself or to a third person by means of instilling in him a fear that, if the property is not so delivered, the actor or another will … [e]xpose a secret or publicize an asserted fact, whether true or false, tending to subject some person to hatred, contempt or ridicule; or … Perform any other act which would not in itself materially benefit the actor but which is calculated to harm another person materially with respect to his health, safety, business, calling, career, financial condition, reputation or personal relationships.
The New York City bar opinion explains that, “Under certain circumstances, threatening to file a disciplinary complaint may violate New York’s law against extortion or other criminal statutes.” In such cases, the lawyer’s conduct would also violate Rule 3.4(a)(6) (“A lawyer shall not … knowingly engage in other illegal conduct”) and multiple subsections of Rule 8.4, including Rule 8.4(b) (prohibiting “illegal conduct that adversely reflects on the lawyer’s honesty, trustworthiness or fitness as a lawyer”), Rule 8.4(d) (prohibiting “conduct that is prejudicial to the administration of justice”), and Rule 8.4(h) (prohibiting “conduct that adversely reflects on the lawyer’s fitness as a lawyer”). The USPTO’s disciplinary rules proscribe similar conduct.
Although no attorney would like to be in the situation where they are compelled to report a fellow attorney or judge, the rules of professional conduct dictate that under certain circumstances, such reporting is required. It is important that after learning of ethical misconduct to analyze your local ethics rules, the conduct at issue, and the scope of your knowledge of the improper conduct. For USPTO practitioners, the “rat rule” generally follows the ABA Model Rules and, therefore, cases and commentary addressing similarly worded rules should be considered. The wrongful threat to file a complaint to extract some benefit from the “unethical” lawyer is not only unethical itself–it may also constitute a crime. Consequently,counsel must tread carefully when communicating with another counsel regarding the other counsel’s possible ethical violation. While it is not unethical to confirm information necessary to satisfy the reporting attorney that in fact there was misconduct which must be reported, the reporting attorney should be careful not to cross the line from simply confirming misconduct to threatening to file a an ethics complaint to gain a tactical advantage. If the duty exists to report, then the misconduct should be reported with no strings attached.