USPTO Requires Patent Bar Applicants To Disclose Expunged Or Diverted Criminal Records

Michael E. McCabe, Jr.Patent Ethics2 Comments

While in college, Joe Varsity is arrested for public intoxication. Joe pleads no contest, and the charge is dismissed after he completes an alcohol education class. Joe’s conviction is later expunged (or erased). Under the laws where Joe’s arrest occurred, “any person who shall have been the subject of such an erasure shall be deemed to have never been arrested and may so swear under oath.” Joe’s lawyer tells him that he is “good to go” and that he may lawfully deny the fact that he was arrested.

Joe decides to apply to law school. The law school application requires disclosure of all arrests. Minding the advice of his counsel, Joe does not disclose the public intoxication arrest. He is later admitted.

During his third year, Joe decides to apply to become a registered patent practitioner. Joe gets to Question 15 of the USPTO’s Application for Registration (Form PTO-158), which asks the following Yes/No question:

Have you ever been arrested, charged, or held by Federal, State, or other law enforcement authorities for any violation of any Federal or State law, or any country or municipal law, regulation, or ordinance? (Do not include any misdemeanor before your 16th birthday or traffic violations for which the fine was $100.00 or less.)

Remembering the advice of his criminal defense attorney, Joe believes that it is permissible for him to deny the expunged arrest on his PTO Bar application. He answers “No” to Question 16.

The OED later publishes for public comment its decision to admit Joe as a member of the Patent Bar. Someone anonymously writes to the OED Director that “Joe is a drunk–has been ever since he was arrested Freshman year in college. I would not trust him.”

The OED Director investigates and learns about the expunged arrest (don’t ask how the OED Director learned this information–if you do ask, OED will assert the “information” is confidential pursuant to the Privacy Act of 1974). OED takes the position that Joe’s failure to identify his arrest demonstrates a lack of candor to the Office and denies his application for registration. Now, Joe is facing an even greater concern than just his USPTO membership–Joe realizes that the USPTO’s denial of his license may impact his ability to become licensed as an attorney anywhere.

Joe is now very worried.

Incidents of Arrest

According to a 2017 report published by The Brookings Institute, 30% of Americans have been arrested at least once by the age of 23. Broken down along race and gender lines, 44% of Hispanic men and 49% of black men have been arrested at least once by age 23.

Moreover, a widely publicized study by the American Bar Association and Hazelden Betty Ford Foundation found that nearly 30% of young attorneys (defined as those within the first ten years of their career) are problem drinkers. In fact, the ABA-Hazelden study concluded that “the highest rates of problematic drinking were present among attorneys under the age of 30 (32.3%)” with rates declining with age.

While the ABA- Hazelden report did not address what percentage of respondents were ever arrested as a result of excess drinking or substance abuse, it is reasonable to conclude that those with a serious alcohol or drug problem are far more likely to be arrested for their conduct while under the influence–including simply being intoxicated in public.

Ambiguous Patent Bar Application

Unfortunately, the PTO Bar application fails to clarify whether an applicant is required to disclose matters where the charges were subsequently expunged. This lack of specific instruction may cause confusion among Patent Bar applicants who have had their criminal records expunged. Some jurisdictions expressly permit an individual whose record was expunged to deny the fact that they were ever arrested. See, e.g., Conn. Gen. § 54-142a(e)(3) (stating that individual whose criminal records have been erased “shall be deemed to have never been arrested within the meaning of the general statutes with respect to the proceedings so erased and may so swear under oath.”).  

Another potential ambiguity in the PTO Bar application relates to the scope of the “traffic violation” exception. For example, the charges of driving under the influence of alcohol/drugs or while intoxicated (DUI/DWI) are certainly “traffic violations.” If a Patent Bar applicant was arrested for such a traffic offense, but the fine imposed did not exceed $100, then arguably the applicant may permissibly avoid disclosure to the PTO based on the traffic violation exception to Question 15.

The ambiguities in the PTO Bar application are in contrast to the model character and fitness application published by the National Counsel of Bar Examiners (NCBE), which is posted here. The NCBE model bar application expressly warns applicants to disclose “matters that have been dismissed, expunged, subject to a diversion or deferred prosecution program, or otherwise set aside.” In addition, the NCBE sample bar application avoids the ambiguity of what constitutes a “traffic violation” that must be disclosed by asking a specific question regarding traffic violations that involve possession or usage of alcohol or drugs.

Duty of Candor on Patent Bar Application

The PTO’s Office of Enrollment and Discipline (OED) reviews all Patent Bar applications. As part of the review process, the OED will consider whether an applicant’s prior arrest history is grounds for denying registration to practice in patent matters.

The USPTO Rules of Professional Conduct prohibit registered practitioners from engaging “in conduct involving dishonesty, fraud, deceit, or misrepresentation.” 37 C.F.R. § 11.803(c). While this prohibition applies to those already registered to practice, such factors have been considered in determinations relating to whether to admit applicants to practice before the USPTO. See In re [Redacted], Moral_08, Decision on Petition Under 37 C.F.R. § 10.2(d) (USPTO 2007) at p. 8 (“The OED Director correctly found that it is appropriate to deny registration to a person.. .Who repeatedly engages in conduct involving  dishonesty   and  deceit…  .”)

The USPTO has long held that “[b]y reason of the nature of an application for patent, the relationship of attorneys to the Patent Office requires the highest degree of candor and good faith. In its relation to applicants, the Office …  must rely upon their integrity …. and deal with them in a spirit of trust and confidence …” Kingsland v. Dorsey, 338 U.S. 318, 319 (1949).

Not only is a lack of candor one of the types of evidence used to show a lack of moral character for the purposes of registration to practice before the USPT0, but candor may be considered the most important factor for such registration due to the unique nature of practicing before the USPTO. See In re [Redacted], Moral_05, Decision on Petition Under 37 C.F.R. § 10.2(c) (USPTO 2003) at p. 15  (“No moral character qualification for registration is more important than truthfulness and candor.”)

Therefore, an application for registration or recognition to practice before the USPTO may be denied if the applicant “knowingly make[s] a false statement of material fact.” 37 C.F.R. § 11.801(a).

When In Doubt, Disclose

Some Patent Bar applicants may be concerned that disclosure of a prior arrest may lead to a decision by the USPTO to deny an application for registration as a patent agent or patent attorney. However, experience shows that in most cases, this concern is overstated. That is not to state that prior arrests do not matter–of course they do. But the circumstances of the offense, including when the offense occurred relative to the date of the application, are far more relevant.

For many drinking and drug-related offenses, including DUI/DWI, public intoxication, and disorderly conduct, the OED is generally most concerned with whether the applicant is currently (at the time of the application) abusing alcohol or drugs. A “one off” arrest for minor misconduct or a misdemeanor offense is not likely, in and of itself, to result in the denial of an application for Patent Bar admission. In comparison, the OED is far more likely to refuse admission when it believes that an applicant has not been candid in disclosing “negative” information, such as a prior arrest.

Patent Bar applicants must be mindful of their duty of candor when applying for registration. Although some state laws may allow an individual, in some circumstances, to deny the fact of their arrest, the USPTO decides membership in the Patent Bar as a matter of federal law. Therefore, unless the OED expressly advises the applicant otherwise, a Patent Bar applicant should disclose arrests even when doing so may be permitted by the law of the state where the offense occurred.

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