Termination of an OED Disciplinary Proceeding: How a SOL Defense may be Properly Construed
Steve Lipman – Guest Author of PatentAttorney.com
Steve Lipman has practiced for more than 40 years in intellectual property litigation, acquisition, and counseling in DC, VA, NY, and BOS. Steve began in the Federal Government with the USPTO and then in private practice as an equity partner in four law firms. He has served many times as a legal expert witness, a prosecution and defense counsel, and a consultant, for more than 40 patent and trademark attorneys and practitioners in ethics, disbarment / disciplinary investigations and hearings, and registrations before the USPTO’s Office of Enrollment and Discipline (OED).
Prior to the AIA’s 2012 amendment to 35 U.S.C. §32, disciplinary investigations from the Office of Enrollment and Discipline (OED) of the USPTO fell under the general Statute Of Limitations (SOL) provision stated in 28 U.S.C. §2462 (“[E]xcept as otherwise provided by Act of Congress, an action, suit or proceeding for the enforcement of any civil fine, penalty, or forfeiture, pecuniary or otherwise, shall not be entertained unless commenced within five years from the date when the claim first accrued …”). In enacting the AIA, Congress inserted the following language into 35 U.S.C. §32, i.e., the statute:
“A proceeding under this section shall be commenced not later than the earlier of either the date that is 10 years after the date on which the misconduct forming the basis for the proceeding occurred, or 1 year after the date on which the misconduct forming the basis for the proceeding is made known to an officer or employee of the Office as prescribed in the regulations established under the section 2(b)(2)(D).”
See generally “Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings”. (All emphases are added unless indicated otherwise). Thus, the USPTO through its OED could bring a Complaint against an attorney or practitioner within (a) 10-years after an alleged misconduct occurs, or (b) 1-year after an alleged misconduct is “made known to an officer or employee of the Office,” whichever of the two SOL sub-phrases (a) and (b) occurs earlier.
Eleven months after the AIA’s amended statute became effective, the USPTO then promulgated its own limiting regulation requiring that the 1-year SOL sub-phrase (b) does not start counting the 1-year until the OED Director “receives a grievance forming the basis of the [C]omplaint.” Federal Register Vol. 77, No. 147, July 31, 2012, at p. 45247 (effective Aug. 30, 2012); see also “Filing a Grievance”. The plain language of the amended statute above is broad: notice is accomplished when an alleged misconduct is made known to an “officer or employee” of the Office, i.e., a disjunctive construction. As such, the implication is clear that either an officer or an employee can satisfy the statute. The USPTO has contended that this statutory language somehow encompassed only the OED Director as per the regulation. In other words, the USPTO has read the statute that allows notice to an officer or employee to really mean only one officer, i.e., the OED Director himself. This is almost exactly the opposite of the statute’s actual wording, and would render the statute subservient to the regulation.
The article also describes the evidence how and what the USPTO already knew and understood the meaning of “made known to an officer or employee of the Office” and to be prior to the implementation of the regulation and provisions in the MPEP which requires certain conduct to be reported to OED by officers and employees – and such evidence as (i) blogs and non-commercially-based periodicals, and (ii) commercially-based periodicals and “web services,” like the well-known Law360. Certainly any referral evidence to OED by an officer or examiner prior to the OED Director himself becoming aware of an alleged misconduct would meet the four corners of the statute.
Stated clearly, the regulation cannot limit the statutory provisions of the AIA’s amended 35 U.S.C. §32. Again, it is the statute and not the regulation that can significantly strengthen a SOL Defense when supported by clear and convincing evidence “made known to an officer or employee of the Office” applied by the determinative legal arguments and conclusions discussed in the following SOL Decision reached at the Hearing stage of a OED Disciplinary Investigation.
Understanding and Appreciating a SOL Defense When Applied By the Determinative
Legal Arguments and Conclusions from a SOL Decision Reached
at the Hearing Stage of a OED Disciplinary Investigation
The OED Director served a “Complaint and Notice of Proceedings under 35 U.S.C. §32” (37 C.F.R. §§11.32, 11.34) that the respondent stated affirmatively in the “Answer” with one of the following SOL “Special Matters of Defense” (§11.36(c)):
The OED Director is barred by the applicable Statute of Limitations set forth in 35 U.S.C. §32 (amended) to institute, conduct, or enforce this disciplinary proceeding against Respondent, or to have prepared and served the Complaint on and against Respondent because more than one year passed since Respondent’s alleged misconduct forming the basis for the proceeding [was] made known to an officer or employee of the Office as prescribed in regulations established under section 2(b)(2)(D).
As the Hearing stage of the OED disciplinary investigation had begun as a “contested case” (§11.38), the respondent filed a Motion to Dismiss based on the SOL “Special Matter of Defense” to the “Hearing Officer” (the “Judge”) appointed by the USPTO Director, that the Judge considered to be a Motion for Summary Judgment (“SJM”) (§§11.39(b),(c)). The Judge denied the SJM and, three days later, the respondent requested for a reconsideration of the denial to which the Judge responded with an “Order on Respondent’s Motion for Reconsideration” (the “Hearing Order”). In between the SJM and the Hearing Order, the respondent also filed a Motion to (1) Compel the OED Director to comply with the Judge’s previous Discovery Order, and (2) Request an Order to the OED Director to have a substitute OED witness prepared and available to testify at the Hearing regarding respondent’s SOL Defense Discovery Requests.
The Hearing Order recognized the AIA’s amendment to 35 U.S.C. §32 to be of a significant concern and, prior to the amendment, that OED disciplinary cases fell under the general SOL provision stated in 28 U.S.C. §2462. In enacting the AIA, the Hearing Order also recognized that Congress inserted into 35 U.S.C. §32 the previously-cited language. Therefore, the Hearing Order stated that it considered the AIA amendment to be a dual Statute of Limitations as the USPTO may bring a Complaint within 10-years after a misconduct occurs, or one-year after the misconduct is made known to the USPTO, which is earlier. According to the Hearing Order, this consideration allowed the USPTO reasonable time to discover the alleged misconduct, but not so much time that evidence and memory of the misconduct had faded (Comments of Sen. Jon Kyl, Congressional Record S1372-73 (daily ed. March 8, 2011)).
The Hearing Order reflected further that the USPTO had moved to address regulatory questions. The initial “Notice of Proposed Rulemaking and Request for Comments (NPRM)” was published on Jan. 5, 2012. The final rule was issued on Jul. 31, 2012, with an effective date of Aug. 30, 2012. In the Supplementary Information section of the NPRM, the USPTO stated that the amended statute “directs the Office to establish regulations clarifying when misconduct forming the basis for a disciplinary proceeding is made known to the Office.” 77 Fed. Reg. 457 (Jan. 5, 2012). There were only five Comments of which only one Comment critically addressed the question of notice. Comment 3 contended that the USPTO’s proposed regulation was inconsistent with 35 U.S.C. §32 because it narrowed the acceptable notice recipient from any “officer or employee” of the Agency to “the OED Director.” In response to this comment, the USPTO cited legislative history from Sen. Kyl (R-AZ), who stated that “[a] section 32 proceeding must be initiated … within 1 year of when the misconduct is reported to that section of the PTO charged with conducting section 32 proceedings.” 72 Fed. Reg. 45247, 45249 (Jul. 31, 2012). The USPTO then adopted the final rule largely as proposed, and implemented it on Aug. 30, 2012 as §11.34(d). This did not resolve, however, the question of what SOL was operative between Sept. 16, 2011 (the date of the AIA’s amendment became effective) and Aug. 30, 2012 (when the regulation became effective). As the OED Director’s Opposition acknowledged, the Hearing Order considered that the statutory language to be ambiguous that the Judge “wrestles with here.”
In the absence of any operative regulation, the Hearing Order noted further that the USPTO contended there are “two reasonable interpretations of the ambiguity in §32.” First, the USPTO theorized that “there is no one-year provision until the USPTO establishes regulations. In other words, the 10-year repose was the only relevant time period until the August 30, 2012 effective date ….” The Hearing Order stated the amended statute cannot reasonably be read in this way as it is a fundamental canon of statutory interpretation that a statute should be construed “so as to avoid rendering superfluous” any statutory language. Astoria Fed. Sav. & Loan Ass’n v. Solimino, 501 U.S. 104, 112 (1991). The Hearing Order noted that the USPTO ignored the entire second half of 35 U.S.C. §32, simply wishing Congress’ words out of existence until it was ready to interpret them as there is nothing in the statute to suggest Congress would sanction such an action. In fact, the amended statute stated that it “shall apply in any case in which the time period for instituting a proceeding under section 32 of title 35, United States Code, had not lapsed before the date of the enactment of this Act.” Pub. Law 112-29, §3(k)(3). According to the Hearing Order, had Congress intended for the amendment to 35 U.S.C. §32 to become effective only upon interpretation by the USPTO, it would have said so in the “Effective Date” section of the statute, as it did elsewhere in the AIA. For example, the Hearing Order noted that the amendments to 35 U.S.C. §§ 6, 122, 301, and 303, among several others, all stated “[t]he amendments made by this subsection shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act ….” The Effective Date section amending 35 U.S.C. §41 stated that it became effective 10 days after the enactment of the AIA. The Hearing Order reflected that there is no such delaying language in reference to the 35 U.S.C. §32 amendment as this was evidence that Congress considered the various effective dates of its amendments and intended the SOL to be effective as of Sept. 16, 2011, subject to later revision by the USPTO.
The USPTO’s second theory was that “the one-year period begins to run when the OED Director receives a written grievance (i.e., exactly what established under 37 C.F.R. §§11.1 and 11.34).” OED Director’s Oppos’n. The Hearing Order believed to have determined that there was no merit to this argument as the USPTO merely twisted its own regulation around and imputed it back to the statute, thereby validating itself. The converse to the statutory canon described previously was applicable here. Not only must the reader give every word in a statute effect, one also cannot read words into the statute; particularly when doing so alters the statute’s meaning. Iselin v. United States, 270 U.S. 245, 250 (1926). The plain language of the AIA-amended statute is broad: notice is accomplished when the misconduct is made known to an “officer or employee” of the Office. The Hearing Order stated that this is a disjunctive construction. As such, the implication is clear that either an officer or an employee can satisfy the statute. The USPTO contended that this language somehow encompassed only the OED Director. (As discussed at length in an “Order on Cross SJM’s (vacated on other grounds), the Judge offered no opinion about the validity of the USPTO’s regulations. However, the USPTO attempted to claim that the statute itself limits notice to only the OED Director. The Hearing Order stated that this is “flatly incorrect.” Whether §§11.1 and 11.34(d) are reasonable interpretations of 35 U.S.C. §32 was considered a different question, but that is a question for another court at another time.). In other words, the USPTO reads a statute that allows notice to any officer or employee to really mean only one officer, the OED Director himself. The Hearing Order stated that this is almost exactly the opposite of the statute’s actual wording, and would render the statute subservient to the regulation. Indeed, the Hearing Order commented that allowing the USPTO to interpret the statute, then teleport that interpretation back onto the statute, would create precisely the sort of retroactive legislation the respondent complained of, and the OED Director tacitly acknowledged, is improper.
The USPTO contended further that both of these interpretations were reasonable, and thus warranted Chevron deference. Under Chevron and its progeny, an agency’s reasonable interpretation of a silent or ambiguous statute is given controlling weight. See Chevron U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837 (1984). However, the Hearing Order noted that Chevron is not applicable in this instance as the USPTO did not cite any interpretation of the statute other than §§11.1 and 11.34(d). In fact, in its SJM, the OED Director affirmatively stated that it is the USPTO’s interpretation of 35 U.S.C. §32 – as sets forth in §§11.1 and 11.34(d) – that the one-year limitations period commences when the OED Director (not a patent examiner or any other employee or officer of the USPTO) receives a written grievance. That interpretation is reasonable and entitled to substantial deference.
The Hearing Order seemed to determine that those regulations specify “who,” “how,” and “when” notice is achieved, now. But those regulations were not in effect at the time in question. The USPTO’s interpretations contained within them were therefore of no help in resolving the ambiguity at the time in question. The question here was: What limitations period controlled during the gap between Sept. 16, 2011, and the regulations’ effective date when there were no regulations? With regard to the regulatory gap, at best, USPTO’s position at bar was considered by the Hearing Order to be a litigation position which the Supreme Court has made clear deserves little deference, if any. Bowen v. Georgetown Univ. Hosp., 488 U.S. 204, 212-13 (1988). (“We have never applied [Chevron deference] to agency litigating positions that are wholly unsupported by regulations rulings, or administrative practice …. Deference to what appears to be nothing more than an agency’s convenient litigating position would be entirely inappropriate.”).
Given that neither of the USPTO’s proffered interpretations deserved deference, the Hearing Order stated that the Judge must weigh their persuasiveness against the language of the statute itself. The Hearing Order stated that the statute wins that contest easily. The Hearing Order stated further that the statute explains Congress’ intent to be in plain English, and can be easily understood without ignoring words or adding new words. The Judge therefore was understood to have found that, prior to the enactment of the regulations, i.e., §§11.1 and 11.34(d), the only operative SOL was the one expressed in the statute, i.e., 35 U.S.C. §32. Accordingly, the one-year statutory clock began when the misconduct was made known to a USPTO officer or employee of the Office. The Judge stated in the Hearing Order that this did not, however, automatically hand victory to the respondent as the respondent was believed to must still show that the misconduct was made known. [Emphasis in the original].
The respondent argued that a USPTO employee was aware of the circumstances giving rise to the original Complaint against the respondent. Moreover, the respondent claimed various USPTO personnel, including the OED Director, were made aware of the basis for disciplinary action due to ongoing public media coverage, a case involving the same family of patents at the heart of the disciplinary proceeding. The Hearing Order also noted that the USPTO contended, in essence, that 35 U.S.C. §32 cannot be read as broadly as the respondent suggested because it would render the notice requirement effectively unworkable. It is understood from the Hearing Order that the Judge considered there to be substantial meat to the arguments. That being said, the Hearing Order seemed to comment somewhat sardonically that those arguments could include that: (i) under a plain reading of the statute, an officer or employee would be expected to fish out pertinent information from any source at any time; (ii) an employee could click on a blog post at home, skim it offhandedly, and thus permanently frustrate the OED Director’s attempts at prosecution; and (iii) a person talking on the phone while waiting to catch a Washington D.C. metro train could trigger the statutory clock if, by happenstance, a USPTO employee was also on the platform. Then, the Hearing Order seemed to quickly confute its own arguments that they cannot be results that Congress intended.
The Hearing Order noted further that USPTO’s arguments must be weighed against the language of the statute, giving no deference to the USPTO as the notice arguments were merely made in a litigation posture. Here, a reading of “made known” is so broad as to encompass notice through publication would lead to an illogical result. The Judge was believed to have found that a reasonable interpretation of 35 U.S.C. §32 requires a written submission to an officer or employee. The Hearing Order also noted that this generalized attempt at communication is often little more than background noise, particularly in the Internet era where information is ever-present, whether or not is wished. The Hearing Order seemed that it was unconvinced that Congress intended USPTO officers or employees to be relentlessly vigilant in packing up chatter that is not directed at them.
The Hearing Order discussed further that, in reviewing a SJM, a review court must find “all ambiguities and draw all reasonable inferences in favor of the party defending against the motion.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986); Matsushita Elec. Indus. Corp. v. Zenith Radio Corp., 475 U.S. 574 (1985); see also Lujan v. National Wildlife Federation, 497 U.S. 871, 888 (1990) (“where the facts specifically averred by [the nonmoving] party contradict facts specifically averred by the movant, the motion must be denied”).
The Hearing Order remarked further that the respondent asserted that the SOL set forth by 35 U.S.C. §32 had run by the time the OED Director filed the original Complaint against the respondent. In support of respondent’s arguments, the respondent cited various events including a conversation between a USPTO employee and the respondent, and respondent’s disclosure of a filing of a USPTO document containing a copy of a pleading filed by a third party. The Hearing Order also remarked that the respondent seemed to have claimed that “the contents of that disclosure made abundantly clear any alleged misconduct which could have possibly given rise to the Complaint.” However, the Hearing Order noted that the OED Director claimed the original Complaint was timely filed because the misconduct was first “made known” to an officer or employee of the USPTO when the OED Director received a facsimile, from respondent, which included a letter and a copy of a district court’s decision.
The Hearing Order concluded that the parties raised sufficient issues of material fact to warrant a Hearing to determine when respondent’s alleged misconduct was actually “made known” to an officer or employee of the USPTO pursuant to 35 U.S.C. §32. Thus, the Hearing would afford the fact-finder the opportunity to assess the credibility of the witnesses and draw inferences from the facts. Further, as the parties were already prepared for the Hearing on the merits of the case, the Judge believed that he would entertain testimony on both the SOL issue and the disciplinary sanction sought by the OED Director. Thus, the Hearing Order determined that the Judge found issues of material fact existed as to when the misconduct forming the basis for the disciplinary proceeding was “made known” to an officer or employee of the Office.
On the same day the Judge entered and signed the Hearing Order, both the OED Director and the respondent signed-off on a “Proposed Settlement of Disciplinary Matter Pursuant to 37 C.F.R. §11.26” (the “Proposed Settlement Agreement”) to terminate the Hearing and the OED disciplinary proceeding. And, on the very next day the Proposed Settlement Agreement was presented to the USPTO Director who immediately signed the “Final Order” that same day terminating and settling the entire disciplinary proceeding, i.e., it took only two consecutive days from the entire submission of the sign-off of the Hearing Order, the Proposed Settlement Agreement, and the Final Order, which led shortly thereafter of the Final Order to the public on the OED’s electronic FOIA Reading Room designated as “Disciplinary Proceeding No. D2013-17”.
Thus, the Final Order jammed on the brakes of the respondent, the USPTO, and the OED within only two consecutive days after the Judge signed the Hearing Order. However, the “overnight” termination of the Hearing and the disciplinary proceeding left open whether and how the Hearing Order per se could be applied to a SOL Defense of another disciplinary proceeding even though the Hearing Order derived from a settled proceeding. Nevertheless, while it is believed that the determinative legal arguments and conclusions of the Hearing Order should be applied similarly in a SOL Defense of a different disciplinary proceeding, some of the following aspects of the Hearing Order can help find and prove what, when, and how an alleged misconduct could be “made known” successfully from an “officer or employee of the Office.”
Some of the Following Aspects of the Hearing Order That Can Help Find and Prove
What, When, and How an Alleged Misconduct Could be “Made Known”
Successfully from an “Officer or Employee of the Office”
Not surprisingly, the OED Director and others from OED engaged in concerted and aggressive efforts at the birth of the AIA amendments of 35 U.S.C. §32 to promote and deliver the new SOL and other OED investigative practices. Those efforts included public speeches, in-person presentations, slide shows, published articles, and other means of communication, externally and internally of the USPTO, so possible misconduct was made known to officers or employees of the Office through such following examples as “web searches,” “published decisions,” “news articles,” and “headlines” from blogs, and non-commercially-based and commercially-based periodicals:
- The “Patent Corps, Trademark Corps, [and] Other[s],” as sources “[i]nternally within [the] USPTO,” “suggesting possible grounds for discipline” of practitioners, pursuant to the new compressed SOL of 35 U.S.C. §32 as amended by the AIA, “[o]ne year from when the misconduct was made known to the USPTO,” not made known only to the OED Director;
– “Professional Responsibility for IP Practitioners – OED’s Rules and Responsibilities in Handling Grievances and Disciplinary Matters Against Practitioners,” spoken and presented publicly by the OED Director at the Spring 2012 Annual Meeting of the American Intellectual Property Law Association;
- “OED receives information that leads to grievances from outside the PTO — clients and colleagues of the attorney — and internally from [patent] examiners *** We also do our own investigations … and we do web searches [that] I am always surprised at the frequency of [the] headlines [outside of the USPTO] about patent attorneys;”
– “Patent Attorneys Can Take Steps To Avoid Grievances,” cited and reprinted in BNA’s Patent Trademark and Copyright Journal, Vol. 83, p. 180, Dec. 9, 2011, reprinted on Dec. 16, 2011 in BNA’s Life Sciences Law & Industry Report, and delivered publicly by the OED Director on Dec. 1, 2011;
- “Published Decisions [and] News Articles” also “suggesting possible grounds for discipline” of practitioners, pursuant to the AIA-amended SOL of 35 U.S.C. §32, “[o]ne year from when the misconduct was made known to the USPTO;”
– “Harmonization and Enforcement of USPTO Ethical Standards in the Post-AIA Era,” spoken and presented publicly by the OED Director through a slide-show on May 30, 2013; and
- “Web searches,” “published decisions,” “news articles,” and “headlines”:
– Blogs and non-commercially-based periodicals;
In such well-known, easily-provided electronic format as IPwatchdog, Patent Baristas, Patently-O, and many other randomly-listed examples from one of many Internet sites at the relevant time period, like “Most popular intellectual property and technology law blogs”; and
– Commercially-based periodicals and “web services;”
In such well-known, easily-provided electronic format as Bloomberg’s “BNA Patent Trademark and Copyright Journal”, Portfolio Media’s “Law360”, and many others of such commercially-based periodicals and web services;
For example, two critical commercially-based periodicals of “published decisions” or “news articles” from Portfolio Media’s “Law360,” believed to be and still subscribed and received by the USPTO’s Office of the General Counsel (OGC) in which OED and its Staff Attorneys are a component of OGC, were published on the Internet at the relevant time period beyond the one-year period “suggesting possible grounds for discipline” for the Hearing Order (see “At Trial, HTC Says Intellect Wireless Patents Unenforceable” and “Favoring HTC, Judge Finds Wireless Patents Unenforceable”, in addition to other evidence in support of the SOL Defense beyond these two critical sources).
Indeed, it is believed that these latter two critical sources would have been significant in support of the Hearing Order, among other evidence, because the Order made clear that the parties raised sufficient issues of material fact to warrant the Hearing to determine when and what respondent’s alleged misconduct was actually “made known” to an “officer” or “employee” witness of the Office pursuant to 35 U.S.C. §32. Accordingly, the Hearing Order likely would have been applied at the Hearing as well for the fact-finder to assess the credibility of the employee/officer witnesses and to draw positive inferences from their testimony. Further, as the witnesses were already identified and teed-up for the Hearing on the merits, the Judge seemed in favor of a reasonable and limited number of concise, fact-based testimony, documents, and admissions at the Hearing. Those testimonial Hearing witnesses were also likely to have been at least the OED Director and one F.R.Civ.P. 30(b)(6) employee from inside of the OED pursuant to §11.52 (Discovery) and §11.51 (Depositions) through the following:
(a) subpoenaed depositions duces tecum and ad testificandum for both SOL discovery and Hearing testimony (35 U.S.C. §24; 37 C.F.R. §§11.38, 11.43, 11.50, and 11.51(a)); and
(b) minimal and concise written requests for SOL documents and admissions (§11.52).
In addition, the two aforementioned critical sources, among other evidence for the Hearing, could have been proffered and applied just as well through Office employees outside of the OED, such as a patent examiner. As known well, patent examiners are trained well and repeatedly from at least two periodic training programs through the “Office of Patent Training (OPT)”) supplemented with a multi-part “AIA First Inventor To File (FITF)” segment in large part from the Office’s “MPEP Staff”. The MPEP Staff ensures that revised policies and procedures of the Office are appropriately disseminated to USPTO personnel through MPEP revisions, the Federal Register or Official Gazette notices, or other official announcements. Thus, the MPEP contains instructions to patent examiners, as well as other substantive and procedural material in the nature of information and interpretation that outline the current Office procedures “which the patent examiners are required or authorized to follow in appropriate cases in the examination of a patent application.” Id.
On the “patent side” of OPT and FITF training, “officers” of the Office are also involved on that “side” as well. For example with “officers,” at times the Deputy Commissioner for Patent Examination Policy, believed to be an “officer” of the USPTO, is consulted through other appropriate Office “officers” to formulate recommendations to the Commissioner for Patents (another individual believed to be an “officer”) who may be necessary for others believed to be “officers” – such as the USPTO Director, General Counsel, Solicitor, Chief PTAB Judge, Commissioner for Patents, Deputy Commissioner for Patent Examination Policy, Deputy Commissioner for Patent Operations, and TC Directors. “Organizational Offices of the USPTO”. In addition, there are believed to be an Office “officer” within the three sections of the OGC – the Solicitor’s Office, the Office of General Law (OGL), and the OED. These and other Office “officers” review and discuss recommended guidance to enable the USPTO Director to decide how the Office should and will proceed. Ultimately, policy and other implications of other Office “officers” are officially incorporated into the MPEP and OPT resources from the “Office of Patent Legal Administration” (OPLA). To reflect changes in law, rules, procedures, and policies, OPLA recommends updates to the MPEP as well as forms used by the Patent Examining Corps and external Office customers delivered through training on specialized subjects, patent law, and procedure for OPT. Id.
Not surprisingly, therefore, the preceding extensive and substantive details learned and applied by the “employee[s] or … officer[s] of the Office” from their organized USPTO training (and day-to-day work) and from the MPEP have taught them to identify many variations of possible practitioner misconduct that should be communicated by them to OED. Those communications to OED can and might be developed into evidence for a formal allegation of misconduct – or for a SOL Defense. The following are just a few illustrations of possible misconduct to be communicated to OED:
- MPEP 2307.01 Ex Parte Communications [R-08.2012]; 37 CFR 41.11 (Ex parte communications in inter partes proceedings);
– “… [PTAB] action may include a sanction in the interference or referral of a patent practitioner to the Office of Enrollment and Discipline;”
- MPEP 1134 Third Party Inquiries and Correspondence in a Published Application [R-11.2013]; 35 U.S.C. 122 (Confidential status of applications; publication of patent applications);
– “Office personnel (including the Patent Examining Corps) are instructed to: (1) not reply to or act upon any third-party inquiry or other submission in an application, except those in compliance with 37 CFR 1.290 or 37 CFR 1.291 … When refusing third-party telephone or oral discussions, examiners may call the party’s attention to the statutory prohibition on initiating protests, or 37 CFR 1.2 … The Office may also refer third-party inquiries, or submissions not provided for in 37 CFR 1.290 or 37 CFR 1.291, by registered practitioners in applications to the Office of Enrollment and Discipline for appropriate action;”
- MPEP 714.01(a) Unsigned or Improperly Signed Amendment [R-07.2015]; 37 CFR 1.33 (Correspondence respecting patent applications, reexamination proceedings, and other proceedings;
– “An amendment signed by a practitioner who has been suspended or excluded from practice under the provisions of 37 CFR Part 11 is not entered. The file and unentered amendment are submitted to the Office of Enrollment and Discipline for appropriate action;”
- MPEP 512 Certificate of Mailing or Transmission [R-07.2015]; 37 CFR 1.8 (Certificate of mailing or transmission);
– “Examiner Note: … Misuse of a Certificate of Mailing under 37 CFR 1.8 or improperly claiming the benefit of 37 CFR 1.10 which appears to be more than a one-time, inadvertent error should be brought to the attention of the Office of Enrollment and Discipline;” and
- MPEP 410 Representations to the U.S. Patent and Trademark Office [R-07.2015]; 37 CFR 1.4 (Nature of correspondence and signature requirements);
– “…Where the circumstances of an application or other proceeding warrant a determination of whether there has been a violation of 37 CFR 11.18(b), the file or the application or other proceeding will be forwarded to the Office of Enrollment and Discipline (OED) for a determination of whether there has been a violation of 37 CFR 11.18(b) ….”
The regulation cannot limit the statutory provisions of the AIA’s amended 35 U.S.C. §32 and would render the statute subservient to the regulation. Again, it is the statute not the regulation that controls which can and should significantly strengthen a SOL Defense from an “officer or employee of the Office” who was “made known” of an alleged misconduct more than one-year prior to the OED’s filing of a Complaint when supported by clear and convincing evidence applied properly by the determinative legal arguments and conclusions of the Hearing Order.
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