“Government employees are not available to accept private clients”

by Dennis Crouch

Correll v. Hirshfeld (Fed. Cir. 2022) (pending appeal)

From 2002-2017, Kevin Correll worked as an electrical engineer for the US Navy.  Correll is also a patent attorney and during that time Correll ran his own small firm.  In 2016, someone at the Navy figured out that this was a problem and worked with the USPTO Office of Enrollment & Discipline to begin an investigation.  Why is this a problem — at least according to the USPTO “U.S. Government employees are not available to accept private clients or to represent clients other than their agency before the United States Patent and Trademark Office.”  This quote comes from the USPTO mandatory survey of registered practitioners and is only loosely based upon the most on-point statute and regulations. 18 U.S.C. §§ 203, 205; 37 CFR § 11.111.  Rather, Rule 11.111 limits Federal Employees from acting “contrary to applicable Federal ethics law, including conflict of interest statutes.”  Here, the conflict of interest statutes (18 U.S.C. §§ 203, 205) include the following prohibitions:

Whoever … receives … any compensation for any representational services, as agent or attorney or otherwise … (B) at a time when such person is an … employee … of the United States … in relation to any … application … in which the United States is a party or has a direct and substantial interest, before any department, agency, court, court-martial, officer, or any civil, military, or naval commission [shall be punished]. 18 U.S.C. § 203.

Whoever, being an … employee of the United States … (2) acts as agent or attorney for anyone before any department, agency … in connection with any covered matter in which the United States is a party or has a direct and substantial interest shall be subject to the penalties … 18 U.S.C. § 205.

In a 2001 informal advisory letter, Marilyn Glynn General Counsel for the Office of Government Ethics concluded that these provisions should be seen as prohibiting current government employees from moonlighting as patent attorneys for private paying clients.  But, that opinion was based upon rather weak analysis.

= = =

An Administrative Law Judge (ALJ) found that Correll engaged in improper conduct by representing private clients and concluded that he should be suspended from practice for 5 years.  The USPTO Director then confirmed that judgement.  Correll then took his case to the E.D.Va. District Court who denied his motion for a preliminary injunction. Now, Correll has brought that case to the Federal Circuit.

In the appeal, Correll presents three arguments:

  1. The restriction on practice suppresses Correll’s rights of free speech and free association.
  2. The USPTO’s broad prohibition improperly reaches beyond what is provided by either statute or rule.  See Van Ee v. Envt’l Protection Agency, 202 F.3d 296 (D.C. Cir. 2000).
  3. The district court improperly gave deference to the USPTO’s interpretation of the statutes.

In its briefing, the USPTO makes a big deal its survey that clearly put Correll on notice.

Of course, this type of notice only carries weight if it is also supported by law. If the Federal Circuit is willing to engage, it could become a quite interesting opinion.


34 thoughts on ““Government employees are not available to accept private clients”

  1. 5

    It’s too bad this blog does not have a dedicated Ethics section to explore this particular conundrum in more detail.

  2. 4

    Was the Navy aware? What is the Navy’s policy re moonlighting?
    Did the Navy file a complaint here? I’m not sure the USPTO is the right party to initiate proceedings re this potential “conflict of interest” (particularly given the possibility of waiver of the conflict)

      1. 4.1.1

        Brother anon – that power is circumscribed though: think left hand and right hand…

        (more below)


          How so? The PTO has determined that his activities were contrary to the ethical standards followed by EVERY federal employee. That conduct allows the PTO to discipline the attorney under 35 USC 2.


            The charge (yet to be proven) has been made.

            That is simply fundamentally different than a Conclusion of such having been reached.

            That’s also a bit like the emphasis on “notice” as noted in the article. That (alone) merits a big “So what?” – one may not rest on the conclusion that needs to be tried and arrived at.


              There is no dispute that he represented someone at the PTO while he was a federal employee, right? See the Standards of Ethical Conduct for all Executive Branch employees. link to oge.gov . The PTO can, and does, regulate attorneys who practice before it for ethical standards.


                From the very first paragraph of your link:

                These summaries are not a substitute for actual ethics advice. You should consult your agency ethics official for specific guidance about the application of these rules to your situation.

                1. Every year, the federal employee is reminded of these obligations and standards. I am sure the Navy attorney in question just ignored it and never even bothered to check with OGE.


                Brother anon,

                Thank you most sincerely for that link.

                I have now read it in detail, and I have to admit that I am even more puzzled — given the general parameters spelled out therein.

                Which — if any — of the document can one rely on to press a case against this person’s off hours service to others that (without more) have NOT been shown to impugn any matter conflict, nor have shown any misuse of (his) office or of his authority while his separate day time duties have been to Hand Left?

                Mind you, whether or not Hand Right has authority to discipline is NOT the issue at point.


            We need to distinguish between the USPTO as the regulator of the patent bar, and the federal government (represented here by the USPTO) as the employer.

            Wrt the first case, it’s hard to see a conflict-of-interest from a pure “legal ethics” POV between electrical engineering work and attorney work. EE’s simply don’t do legal work.

            It does sound like there may be a violation of the terms of employment. But, the Navy should be the primary actor, and the proper remedy is probably something like firing w. cause.


              “EE’s simply don’t do legal work.”

              Pretty sure there are plenty of EE patent attorneys.


                Not only that 6, but this particular person was granted a registration number by the USPTO DURING his time as an engineer for the Navy.

                I do not know the exact time, but Reg. No. 46641 is present in the USPTO archives for the 2006 published list of practitioners, while not being there in the next earlier available 2001 publication.

                This also means that he was likely practicing for a whole decade before someone raised a stink.

                Without more — and one cannot assume ‘that’ more, there is NO ethical violation even present to which the later action of the USPTO to sanction for ethical violations can attach.

                Where is the REST of the story?

  3. 3

    As a federal employee who works for the US, you cannot take a position that is contrary to a position of the US. When he represents someone who has gotten an adverse action from the US, the representing attorney would have to take a position contrary to the US’s position. This is clear in the ethical standards for all employees of the US. Now, if he were a Navy patent attorney prosecuting a case on behalf of the Navy before the PTO, that would be a different situation. Navy patent applications get rejected all the time. There is one case where DOE took an appeal to the CAFC on a patent application, if I recall.

    1. 3.1

      Brother anon,

      I am not sure that your example supports your assertion – even as the attorney who has as his client one branch MAY act without ethical violation, this acting would not be constrained to the acting attorney (directly or solely), but instead would establish the TYPE of action that would be ethically permitted.

      The fact that you share likely reads larger than your initial constraint.

      1. 3.1.1

        If another agency such as the Navy were to appeal a USPTO action, the DOJ would have to give the Ok, I believe. It would be very rare. Imagine if the DOJ represented both sides at the Supreme court. I think the only exception for a fed is to represent oneself (say in tax court) but that is it.


          he DOJ would have to give the Ok, I believe

          Does it? That’s an added fact to your provisio and may well change my view.

          But it is also very much a stretch – given that each ‘sub-unit’ may well engage fully without actually comprising the mission or intent of its designated authorities, so even if you end up with a Left Hand disagreeing with a Right Hand, the entire disagreement does NOT create conflict within one hand or the other (and which would generate a True conflict of interest).

          As I noted – this is outside of my bailiwick, and I suspect that nuances of employment law would better inform the critical aspects against which a decision may be reached.


            The Navy’s counsel is subject to DOJ supervision as to appeals. I can’t point you to any particular statute, but I am pretty sure. It’s not INDEPENDENT of the Unites States of America. Remember, all Navy patents are assigned to the USA, as represented by SecNavy. The USPTO is also represented and supervised by USDOJ in appeals. You can’t have the SG arguing against himself in court.


              The Left Hand is NOT the Right Hand — my point provided is that the “conflict” can be — and per your note, IS – handled without their being a genuine conflict within the duties of each individual hand.

              Otherwise, the government would ethically be forbidden to even engage in obtaining patents (or would need not rise to a level of appeal for there to be the ethics issue).


                I think if the left hand took a hammer and bashed the right hand, it would hurt.

                1. That was funny, but given your provisio that Appeals can be undertaken, the ethics impact is just not what you propose it to be.

                  You have provided THAT the Left Hand MAY already take a hammer to the Right Hand.

  4. 2

    Most employers take a dim view of moonlighting employees. Given the past tense of “From 2002-2017, Kevin Correll worked…”, I take it he is no longer employed by the Navy. It would be interesting to know if he left that job on his own or he was given the boot.

    Whether or not the survey that put him “on notice” had a solid legal basis, he was still “on notice” that there was an issue as to whether he could take on private clients. What kind of due diligence did he exercise to come to the conclusion that he could take on private clients?

    Based on the above, the survey’s prohibition seems to be far broader than what seems a reasonable restriction which, to me, would be that Mr. Correll should not have represented any private client “in which the United States is a party or has a direct and substantial interest” (which I think is rather limiting to situations where, e.g., the application is based upon research at least partially paid for by the US government).

    I hope the Federal Circuit takes this up.

    1. 2.1

      Your point about whether “the United States … has a direct and substantial interest” in any old patent application (as opposed to the U.S. actually being “a party” which I think all agree isn’t the case for a run-of-the-mill application) is the same one I presume Prof. Crouch to be making when he says the 2001 OGE advisory opinion—which is basically the main basis for Correll’s disciplinary action—”was based upon rather weak analysis.”

      I don’t agree. The 2001 opinion’s analysis was fine. In 1971, the Seventh Circuit found (with a dissent, although on an unrelated point) that the U.S. has a direct and substantial interest even in an ordinary patent application. The 2001 opinion relied on that earlier finding, and I see nothing wrong in that approach. Now, perhaps you can quibble with the original Seventh Circuit reasoning because it didn’t spend very much time on the issue (one sentence and one citation in a FN). But that could just mean it’s really straightforward and doesn’t require extended discussion. In any case, it’s still not a valid criticism of the 2001 opinion itself.

      Here’s a fun fact—the 1971 Seventh Circuit opinion was written by none other than later-Justice Stevens himself.

      I think it’s fair to say CAFC will have no trouble dispatching both the statutory construction and free speech arguments that Correll raises.

      1. 2.1.1


        Care to chime in on the points of the discussion between brother anon and myself?

        It’s a bit different than the FA point that you are discussing here. I did read the briefs on that point quickly, and would agree that they do NOT work well for Correll, whom I feel has a stronger position to set out than from what I have seen.



          I’m not sure which points you refer to given the at least two different threads going on with you and your sibling, but you asked, so I’ll give it a shot for both anyway. Caveat that I don’t really claim any particular expertise here. (Not that I did for the 2001 OGE memo either, but at least evaluating a single, brief memo is a fairly self-contained task.)

          (1) I’ll take possible DOD v. USPTO appellate litigation first. This one is lightyears outside my wheelhouse. However, some preliminary Googling does turn up not just one, but actually two different law review articles covering interagency litigation (links below). The first is rather dated, from 1991, while the second is fairly recent, from 2013. I didn’t read them cover to cover, but from what I gather, interagency litigation can be a thing, at least in some circumstances. Unfortunately, neither of them address the relevant fact pattern here—the USPTO in dispute with another agency over a patent application. So, you have to extrapolate and conjecture a little. My guess would be that such litigation can occur. How it’d work behind the scenes with DOJ though I don’t have a scooby.

          link to scholarship.law.wm.edu

          link to engagedscholarship.csuohio.edu

          (2) Second is Navy as opposed to USPTO jurisdiction to discipline Correll. For this one, I think we have to assume Correll in fact committed an ethical violation—either of some federal rule or the statute referenced by the 2001 OGE memo—or the discussion really doesn’t go anywhere. My rough take is that Correll is potentially subject to discipline both ways—by the Navy and the USPTO. But the form of discipline would be different in each case. For the Navy, he could suffer employment consequences. And for the USPTO, he could be disciplined in his capacity as a practitioner.

          On the latter point, I think it’s similar to someone who practices before a state bar. Of course if you violate a state professional conduct rule, you can be subject to bar discipline. But that’s not the only way. In the course of representing a client, if you break an actual law, whether of your own state, a different state, or federal, that’s usually grounds for potential discipline too. And that’s what I think happened with Correll. He was (1) representing someone before the USPTO and (2) he (again, assuming for the sake of argument) broke a federal ethics law and/or rule in the course of that representation. That seems like fair game for the USPTO to discipline, but again, only with respect to Correll’s ability to practice. His Navy employment would be a different story.



            Meant to include the following note in regards to that NON-binding (and thankfully so 2001 memo):

            Where is the rest of the story?

            Somehow we “jump” from:

            someone at the Navy figured out that this was a problem and worked with the USPTO Office of Enrollment & Discipline to begin an investigation.

            to the actual complaint in front of an ALJ — of the EPA.

            The facts of the case before the 7th circuit are immediately distinguishable. In that case:

            This dramatic narrowing of the traditional issues of validity and infringement was the consequence of revelations during pretrial discovery. That discovery revealed that immediately after signing the notice of allowance of the original Brainard patent, Primary Examiner Beall retired from the Patent Office and became a paid consultant for plaintiff; his services related to the two reissues of Brainard, as well as the acquisition and reissue of the important Morgan patent.

            To pivot from that case basis to hold that a person cannot be a patent attorney for others — and for subject matter totally UNrelated to ANY of his — or any extension of his — governmental duties is beyond ludicrous.

            It is downright shameful.


              Thanks for clarifying. Now it makes a lot more sense. Unfortunately it’s getting late on a Sat. night (by my standards anyway), so I’ll just throw out a few stray thoughts—

              (1) Why the ALJ is from the EPA. I noticed that too and thought it was a little weird. Federal gov’t ethics isn’t my field at all, but I’d venture that, because the actual law he was accused of violating isn’t particular to the USPTO, that sort of thing can be handled by—i.e., outsourced to—ALJs at some other agency who may have more expertise there. So it doesn’t seem completely outside the realm of possibility that EPA ALJs have more experience and/or bandwidth to handle such matters.

              (2) Yes I agree the underlying facts of Kearney are vastly different from what’s going on here. And the question of whether the U.S. has a “direct and substantial interest” in an application being prosecuted before the USPTO was a pretty tangential issue in the greater scheme of that case. Regardless, the court did make an affirmative finding on that question and, as I read it at least, its finding wasn’t limited to the particular facts before it. So arguably CAFC is obliged to follow that precedent in deciding Correll’s appeal. If the predecessor court—here, CA7—had decided a substantive patent law issue, then for sure. But still, while the law itself was general purpose ethics for federal employees, it was construed in a patent-specific context, so I’d argue that still binds CAFC.


                Thanks again, kotodama, but I have to push back on at least one of your assumptions (which I do reckon as having a prime driver – and in not a small part, that criticality bespeaks NOT presuming on that point), as well as what exactly is “binding” on the CAFC (which bespeaks to the difference between ‘fighting’ the ability of the USPTO to discipline practitioners – which appears to have been made into a strawman — and the underlying reasoning as to WHY the USPTO would be disciplining.

                In the latter sense, fighting this along a First Amendment line seems to be (as I noted) an odd, and losing, battle.

                The push back of course is your presumption of “ For this one, I think we have to assume Correll in fact committed an ethical violation.

                I say thee neigh. Now IF that fact pattern is advanced and shown to be in actual existence, then such would be a driver; but absent that critical fact, ASSUMING so is assuming the conclusion. And (further as I note), that 2001 OGE memo LACKS controlling authority and the 7th circuit would – and should – dictate a very different conclusion.

                Quite in fact, your comment of, “and (2) he (again, assuming for the sake of argument) broke a federal ethics law and/or rule in the course of that representation. lacks all substantiation in the details provided (and importantly in the discussion with my brother anon, is not even provided by him as having been established).

                IF such a fact were to be presented, AND the strawman pertaining to whether or not the USPTO may discipline a practitioner for ANY transgression no matter how tangential to the “ethical fitness,” than I would see Correll’s fight to be totally meaningless.

                But the facts at present do NOT support that take-away.

                By the way – thank you for the links to the two papers – a very interesting read (especially as the second branches from, or includes reference to, the first). But more directly to your “ My guess would be that such litigation can occur” – I am taking this as a given from my brother anon’s statement to the effect that appointed attorneys OF THE GOVERNMENT do in fact prosecute patent applications (and any such prosecution would INDUCE the legal ethics OF appealing against the patent office – in the ethical requirement of providing service to the government as inventor’s assignee).

                1. Don’t you see a distinction between a Navy attorney prosecuting an application before the PTO on Navy invention versus a Navy employee who is not working as a Navy counsel prosecuting an application before the PTO for a third party private entity? There is no legal ethics issue for a government attorney working on a government invention. The problem with Cordell is that he is not a government attorney.

                2. Brother anon – that distinction is exactly what I DO see – and without more (and per your own linked items) expressly provides for a LACK of legal ethics conflict.

                  The conflict MUST arise from more than merely being a member of the Navy and having obtained a USPTO registration number and performing the duties thereof.


            The Secretary of the Navy and the Secretary of Commerce both serve the President, so ultimately, it will be the President considering the legal issue using his subordinates. I would imagine DOJ, also part of the Executive Branch, would not allow the Secretary of the Navy to appeal a decision of the USPTO unless he wanted an opinion from the Judicial Branch. But because most Presidents do not want to give up executive power, it will not happen. I seem to recall the DOE once appealed a USPTO rejection at the CCPA or CAFC, but I can’t find the case.


              Brother anon,

              The path you lead on here cannot prevail (the unitary Executive Branch path), if but for no other reason than such reasoning would ethically eliminate the government from pursuing patent protection on ANY of its possible innovations.

  5. 1

    This may be outside my bailiwick (and be a matter of employment law), but Carroll seems to have a MUCH better position (and I would hope that he makes it clear to the Court that NONE of his clients have ever been implicated in the “keep out zone” that would affect his own Naval duties.

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