In re Andrew P. Lahser, Proc. No. D2016-2 (USPTO Dir. June 10, 2016)

Michael E. McCabe, Jr.Neglect, USPTO

Disposition: One (1)-year suspension from practice before the USPTO, with the right to apply for reinstatement after nine (9) months, and requirement that the practitioner retake and pass the Model Professional Responsibility Exam (MPRE) and the Patent Bar Examination as conditions for reinstatement.  Final decision here.

Summary: A patent attorney represented a client in various trademark and patent matters. During the course of the representation, the practitioner failed to adequately communicate important Office correspondence to the client by allowing applications to become abandoned without the client’s knowledge or consent, and by preparing invoices for patent and trademark filings that unintentionally contained incorrect fee calculations, which resulted in over-charged fees. Prior to any disciplinary proceeding, the practitioner voluntarily made restitution to the client. The practitioner and OED Director entered into a settlement agreement in which he admitted that his conduct violated USPTO Code of Professional Responsibility, 37 C.F.R. §§10.23(a) and (b) via 10.23(c)(8) (failing to inform a client of correspondence received from the Office), and 10.77(c) (neglecting a legal matter); and violated the USPTO Rules of Professional Conduct, 37 C.F.R. §§ 11.101 (requiring thoroughness and preparation reasonably necessary for the representation), 11.103 (diligence), 11.104 (communication), and 11.115 (safekeeping property and funds).

Related to USPTO Practice?  Yes

Facts: This matter arose from a patent and trademark practitioner’s neglect and failure to communicate in the handling of certain patent and trademark matters for a client. Andrew Lahser, an Arizona-based lawyer, was engaged by the client to file three (3) provisional patent applications and a non-provisional patent application, which was filed on his client’s behalf on December 31, 2009.

Mr. Lahser received a Notice to File Missing Parts in the non-provisional application, which was mailed by the Office on January 22, 2010; but he neglected to communicate the Notice to his client. He also prepared an invoice, which showed improper charges for extra claims and fees not required by the USPTO.

Mr. Lahser received an Office Action on the merits in the non-provisional application, which was mailed on October 25, 2011, but he (a) failed to communicate the Office Action to his client in a timely manner; and (b) failed to respond to the Office Action, which caused the application to become abandoned. On July 9, 2012, Mr. Lahser filed a Petition for Revival in the non-provisional application, along with additional claims filed in the form of an amendment. The Petition for Revival was granted, but Respondent received an Office Action mailed on November 6, 2012, providing Notice of Non-Compliant Amendment where he had constructively elected another invention and, thus, the additional claims were not entered.

Mr. Lahser did not inform his client about the non-compliant amendment, the abandonment, the petition, or the revival of the non-provisional application until January 2013, at which time he advised his client about the original filing error, the steps he had taken to correct the original filing error, the abandonment of the application, and his efforts to revive the application.

Mr. Lahser recommended filing a continuation application and offered to only charge USPTO fees to his client. The continuation application was filed on March 15, 2013. The USPTO issued a Notice to File Missing Parts in the continuation application on May 13, 2013 because no fees were submitted with the filing. Mr. Lahser received another Office Action in the revived non-provisional application, which was sent by the USPTO on June 19, 2013; but Mr. Lahser later incorrectly informed his client that he was “still waiting for action” from the USPTO, and he failed to mention the Office Action or the Notice to File Missing Parts in either pending application.

In July, 2013, Mr. Lahser billed this client for $3,440 fees in the continuation application, but he improperly billed for more claims than had been filed in the continuation application. Mr. Lahser never paid any fees in the continuation application. On October 29, 2013, Mr. Lahser emailed his client and incorrectly indicated that “there is no action from the Patent Office yet,” despite having received the Office Action dated June 19, 2013. Mr. Lahser filed an Office Action Response in the revived non-provisional application sometime in December 2013, but failed to communicate that filing to his client.

Mr. Lahser was also engaged by his client to prepare and file a trademark application. His client paid $1,075 for the work, but Mr. Lahser never filed any such application. Mr. Lahser, however, provided his client with a draft trademark search and opinion.

In mitigation, Mr. Lahser had no history of discipline, demonstrated a cooperative attitude during the OED investigation, and made restitution to the client.