OED’s jurisdictional reach: 1985 versus 2014

Back in 1985, when the PTO was for the first time going to adopt ethics rules specific to prosecution, a lot of people wrote comments concerned that the PTO was going to try to regulate practice beyond that before the Office.  In response, the PTO did several things, all of which made it clear that it was not seeking to regulate practice not before the Office and to eliminate any doubt to the contrary.

First, it adopted 37 CFR 10.1.  In part, that provision states:  “This part governs solely the practice of patent, trademark, and other law before the Patent and Trademark Office.”

Second, in response to concerns that it was trying to regulate conduct not before the Office it said (several times, but here are two):

  • “The PTO’s intent to regulate only conduct related or relevant to practice before the PTO.”
  • “The preamble of § 10.1 indicates that Subpart 10 governs solely the practice of patent, trademark, and other law before the PTO.”

Third, in response to (many, many) comments saying “you should put ‘with respect to practice before the Office’ in specific rules,” that the PTO didn’t need to do so in light of its addition of 10.1.

So, it was clear that the PTO did not intend to regulate, and was not intending to regulate, conduct not before the Office.  The PTO made that abundantly clear (I could put up a string cite of similar quotes from the notice & comment to the 1985 rules’ adoption.)

In recent speeches by OED Director Covey, he took this position:  “Practitioners are subject to discipline for not complying with USPTO regulations, regardless of whether their conduct was related to practice before the Office.”  (Copies of these slides are here.)

I know that the OED has taken an extremely broad view of its jurisdiction. The slides themselves point to some cases. (Note:  I’m not talking about reciprocal discipline — e.g., Texas disbars me; the PTO can, too.  I’m talking about a practitioner who does something in federal court, say, and he gets sanctioned; the PTO can discipline that lawyer for that.  This has zero to do with reciprocal discipline and the protections afforded by states in disciplinary proceedings.)

Someone help me reconcile these two positions.  No statute changed between 1985 and 2014, so you don’t get an easy answer.


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.

4 thoughts on “OED’s jurisdictional reach: 1985 versus 2014

  1. 4

    Excellent observation, David.

    My view: it’s authority-creep, aka short institutional memory, coupled with the need for people to justify their salaries.

    To give a similar example: when the PTO changed the rules in the late 90’s to make it easier to revive abandoned applications, they swore up and down in the rulemaking that they would ask for additional proof if more than a year had gone by since the abandonment. No way were they going to allow abuse of the system. Now revival of an abandoned application is an expedited petition on EFS that’s granted automatically as long as magic words are said, and I’ve seen apps that were revived *four years* after ostensibly going abandoned “unintentionally”. And under Aristrocrat, absent proof of fraud, challenging the propriety of that revival is not an option to defend a charge of infringement. How’d it happen? Turnover at the PTO, the people in charge not knowing their history.

    Similar thing here. So the rules say that the OED only has jurisdiction over PTO-related practice. Who cares? Who the heck remembers what was said when the OED was inaugurated? And who’s going to challenge the OED’s authority to discipline? Besides, the people in the OED need to prove they’re actually worth the money they’re paid. Cast a wider net, catch more fish.

  2. 3

    Everything a patent agent does has to be subject to the OED, since patent agents can’t do anything but practice before the Office. So, the agent had to steal client funds for a patent (or he’s engaged in the unauthorized practice of law, which a state bar could deal with).

    Patent agents are different.

  3. 2

    The obvious tie-in here to the Office attempts to re-write corporations law (in the name of some Executive Office White Paper Propaganda Piece) are clear.

  4. 1

    I hear you, David, but shouldn’t OED have broader jurisdiction at least with respect to conduct that is not subject to disciplinary application by any local bar? The slides contain the example of the patent agent who was disciplined for mishandling non-profit funds – I’m pretty sure I don’t want that guy handling client moneys under the USPTO’s seal of approval.

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