More About the OED Jurisdictional Reach

Blogged below, the OED in recent years has reversed the position it took in 1985 about the scope of its rules, emphasizing that, now, they apply to even conduct that has nothing to do with practice before the Office.  Let me parse through some of the issues this creates, and I no doubt will do more later.

The first one is a due process issue.  A lawyer should be on notice that the USPTO rules apply to his conduct, no matter what.  Given the adoption of Section 10.1 (discussed in the earlier post), and repeated formal responses during the notice & comment period in adopting the 1985 rules, that notice seems lacking.  Statements by the OED director in speeches probably aren’t enough, I’d say.

The due process issues are much, much deeper, however.  A recent case helps explain why.  The USPTO, like (I think) every state, allows for “reciprocal discipline.”  This means that if, say, Texas brings a disciplinary case against me, and I’m found guilty (or agree to guilt), the USPTO could (if I were registered, but I’m not) discipline me, too.   I could avoid reciprocal discipline only by a sticking too a few very narrow paths above the reciprocal discipline chasm.  See Selling v. Radford, 243 U.S. 46 (1971); 37 C.F.R. 11.24(d)(1).

One path requires showing that the state proceeding against me lacked due process.  Matter of Brufsky, Proc. No. D2013-12 (USPTO OED Feb. 2, 2014).  Among other things, due process requires that the lawyer have notice of the charge against him, have the opportunity to present evidence, testify, cross-examine witnesses, and present argument.  Id.  

Showing a lack of due process is a pretty tall order where the state has good attorney-disciplinary procedures in place and follows them.  The lawyer in Brufsky tried and failed.

Now switch things to what the OED director has said lately — that the USPTO can discipline a lawyer when the conduct has nothing to do with practice before the Office.  The OED director’s slides recount a case where a lawyer got sanctioned for discovery violations and that resulted in discipline — by an agreed order — of the lawyer by the OED for violating one of its rules.  See In re Hicks.  Can the USPTO apply Selling to this set of facts?

I’d say no.  Unfortunately, Hicks was an agreed case (because the client wanted to avoid fighting — more on that below), but the OED order reads as if fact-findings made under Rule 37 and statements made by the Federal Circuit about his brief being misleading were sufficient.

First, there was no notice (I’d say) that Hicks had notice that his conduct could subject him to anything except the sanctions specifically authorized by Rule 37 for a discovery violation.  Further but in this regard, even if he was on notice that he might be disciplined, a lawyer representing a client before a tribunal (in my hypo, the court hearing the car wreck case) is, ordinarily, required to follow only the tribunal’s ethical rules. So, Hicks had notice only that he was subject to discipline for violating whatever rules that federal court had chosen.  Consequently, for due process to be met, the OED would have to show that Hicks had violated a rule applicable in federal court (probably the forum state’s rules).  The agreed order refers only to the USPTO Rules.

Second, so far as I’m aware a lawyer faced with a Rule 37 motion can’t take the deposition of opposing counsel or other witnesses, or cross-examine anyone.  There’s usually no live hearing on a Rule 37 motion — maybe oral argument.

Third, the premise of Selling and the USPTO regulations is that a proceeding occurred where the lawyer knew that discipline was a potential remedy.  That’s not often the case in Rule 37 motions.

So, just something to chew on.

Friday, speaking in San Antonio on a generalized ethics symposium, but I’m speaking about prosecution bars and the role that ethics rules should play in informing their scope. I’m betting a dollar no one will have a clue what I’m talking about.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

One thought on “More About the OED Jurisdictional Reach

  1. 1

    Very interesting Prof. Hricik.

    For vested interests, I for one would like to see some degree of ethical responsibility when it comes to some of the (over) heated rhetoric that appears on law blogs.

    Knowing and purposeful deceit really should not be accepted anywhere.

    While ascertaining identity (and thus enforcing any such control) may have its problems, such does not – and should not – alleviate personal responsibility for one who knows – or should know – better.

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