by Dennis Crouch
The Federal Circuit has agreed that Kevin Correll’s 5-year suspension from patent law practice should move forward. Correll v. Vidal (Fed. Cir. 2022) (non-precedential). Unfortunately, the per curiam decision appears poorly reasoned and seems to lack sufficient legal grounding. The panel included Chief Judge Moore, and Judges Prost and Hughes.
Kevin Correll worked for the US Navy as an engineer, but also moonlighted for years as a solo patent attorney (prosecuting 211 patent applications). In 2016, the Navy notified the USPTO that Correll may have violated federal rules of ethics.
The key rule:
18 U.S.C. § 205: [Federal employees may not] act as agent or attorney for anyone before any department, agency, court, court martial, officer, or civil, military, or naval commission in connection with any covered matter in which the United States is a party or has a direct and substantial interest.”
The USPTO’s Office of Enrollment & Discipline (OED) conducted an investigation and then filed a disciplinary complaint against Correll. That complaint was then decided against Correll an Administrative Law Judge and issued a 5-year suspension from practice. Drew Hirshfeld in his role as agency head affirmed the ALJ finding. Correll then moved to district court and again lost when the E.D.Va. judge denied his motion for a preliminary injunction against enforcement of the suspension. On appeal here, the Federal Circuit has affirmed.
The USPTO has long taken the position that these statutory rules prohibit any federal employee from representing private clients at the USPTO. On appeal here, the Federal Circuit agreed with the USPTO interpretation, although the court appears to limit this broad holding to cases where the attorney is compensated for the work. Slip Op. (distinguishing Van Ee v. EPA, 202 F.3d 296 (D.C. Cir. 2000) based upon receipt of compensation). I would suggest compensation as a distinguishing mark applies for the parallel statute 18 U.S.C. § 203, but doesn’t seem to apply directly to Section 205.
The DC Circuit’s Van Ee decision includes dicta stating that an employee representing a private party in an “application for a … patent” could create a conflict of interest. On appeal here, the Federal Circuit latched-onto that language in its conclusion that Section 205 applies to Correll’s behavior. But, a major difference between Van Ee and this case is that the DC Circuit was considering a situation involving an EPA employee who was advising a private group regarding EPA actions. Here, Correll is an outsider to the USPTO. That distinction is relevant because the courts have interpreted Section 205 in light of its primary goal of preventing situations “in which a federal employee, acting as a private party’s agent or attorney, could be perceived as having divided loyalty and as using his or her office or inside information to corrupt the government’s decisionmaking process.” Slip Op. (quoting Van Ee). An outsider to the agency is seemingly much less likely to create a conflict.
Here, the district court also concluded that “[t]he government has a direct and substantial interest in patent applications.” Correll v. Under Sec. of Com. of Intell. Prop. (“Director” ), 121CV898AJTIDD, 2022 WL 298125, at *2 (E.D. Va. Jan. 13, 2022). That conclusion stuck on appeal.
Correll’s biggest argument appears to be that First Amendment freedoms of speech and association should apply to limit the reach of the statute. Courts use a balancing test to decide when a gov’t employer can permissibly limit its employees speech. Pickering v. Board of Education, 391 U.S. 563 (1968). Here, the Federal Circuit agreed with the district court that “the government’s interest in avoiding even the appearance of impropriety outweighs the burden that Mr. Correll’s suspension has on his rights.” The courts particularly noted that the prohibition on representing clients was only a “minimal” burden while the government interest is “direct and substantial.” I’m not sure about the basis for that conclusion in this situation.
The court also found waiver by Mr. Correll. In particular by signing-up as a patent attorney Mr. Correll expressly agreed to be bound by the laws and as such cannot now complain about those laws.
Even without Pickering balancing, however, it is apparent that Mr. Correll’s suspension does not violate his First Amendment rights. Mr. Correll agreed to comply with the conflict-of-interest statutes when he registered to practice before the PTO by signing an “Oath or Affirmation” in which he promised to “observe the laws and rules of practice of the [PTO].” Among those rules was a prohibition on federal employees representing private clients.
Slip Op. I’ll note that the “rules” prohibiting federal employees from representing private clients is simply 18 U.S.C. §§ 203, 205 cited above. This conclusion seems obviously overreaching. If the prohibition on practice is a violation of 1st Amendment rights, then any waiver requirement is also likely an unconstitutional condition in violation.
If you remember, this appeal is from a denial of a preliminary injunction. On remand the district court will still need to decide the case on the merits. It will be a bit of a process to tease out which aspects of the decision here were definitive legal conclusions creating the law of the case and which were more deferential conclusions allowing for reconsideration on remand.