Law Prohibits All Federal Employees from Representing Private Clients before the USPTO

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 Cir. 2022) (non-precedential).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.

20 thoughts on “Law Prohibits All Federal Employees from Representing Private Clients before the USPTO

  1. 6

    So what happens in the case of a government lab – let’s say Oak Ridge – and a government attorney – employee of Oak Ridge – represents Oak Ridge before the Government USPTO? What if said government employee at Oak Ridge gets bonus pay for high prosecution output – compensation? If the holding is that broad, then how does this work?

    1. 6.1

      … does not fit the “private client” aspect.

      1. 6.1.1

        That drawing reminds me of tennis.
        I wonder if an NDA that is broken immediately is cause for a law suit? Do you think David and Gordy will act and let me know how he bought in with the 20%.
        Was it with property?
        Was the NDA easy to check out with D416,453. NESCCO….Assignee.
        That must be why all those prosecutions were switched. I’ve been painting the lines on the wrong tennis court.

        1. 6.1.1.1

          NOW the obstruction and the reason are good enough for my many laches.

          1. 6.1.1.1.1

            Called and threatened by a ROBO CALLER. 202-291-5098. THE ROBOT TOLD ME I WAS COMMITTING A CRIME. SAID I WAS GUILTY OF WEAKENING HOMELAND SECURITY. TOLD ME TO DIAL #1 I ASKED A REAL PERSON,WAS THIS A JOKE. THEY SAID YAH. IMAGINE THEY MAKE MY LIFE A H@LL AND DON’T EVEN HAVE THE GUTS TO USE A REAL PERSON WHEN THEY THREATEN ME.

  2. 5

    It’s not clear from the decision why the USG’s “direct and substantial interest” in patent applications is different in kind from its interest in carrying out any activity authorized by law and administered by an agency. If Congress had wanted to prohibit any USG employee from representing a private party before an agency, it would not have included the “in connection with …” limitation in the statute. It seems like something more is needed in the court’s reasoning to give effect to that limitation.

  3. 4

    Oh, for crying out loud. There’s no conflict and no potential conflict, unless the man goes to work as a USPTO examiner and one of the cases he drafted is placed on his docket. The waiver argument is especially stupid: “You knew what you were signing up for when got a USPTO license, therefore you’re bound by the rule” begs the questions whether the rule (a) is of the scope that the PTO asserts and (b) is constitutional.

    1. 4.1

      It’s also a little unclear that ” 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.

      1. 4.1.1

        /sigh. I really which we could edit/delete comments.

  4. 3

    One might wonder why the Navy informed the USPTO.

    1. 3.1

      At least the fact pattern was not one in which he was already employed by the Navy, and then the USPTO admitted him.

      (from the decision: “Mr. Correll has been a registered patent attorney since September 12, 2000. S. App’x1 41. In September 2002, Mr. Correll became an electrical engineer for the U.S. De- partment of the Navy at the Naval Undersea Warfare Cen- ter of the Naval Sea Systems Command in Newport, Rhode Island.”)

    2. 3.2

      From Van Ee (emphasis added):

      on behalf of public interest groups in response to requests by an agency at which he is not employed for public comment on proposed impact statements related to land-use plans; these proceedings lack the particularity required by the statute, will not result in a direct material benefit to the public interest groups, and do not create a real conflict of interest or entail an abuse of position by Van Ee. Accordingly, we do not reach Van Ee’s contentions concerning the First Amendment’s application to § 205 or the appearance regulation, and we reverse the grant of summary judgment and remand the case for entry of a declaratory judgment in Van Ee’s favor in accordance with this opinion.

      Well, two out of three…

      1. 3.2.1

        … I am also surprised that no mention was made of any ACTUAL conflict check protocol (which any appreciable legal organization – and which I would suspect the law firm established by Correll – would have).

    3. 3.3

      One might wonder who this is. Maybe this is why he was more than likely in a very high (because of his character) position and felt it was the right thing to do.

  5. 2

    Not to comment on this particular case,* but if 18 U.S.C. § 205 is read that broadly would it not prevent government employed agents or attorneys from even pro bono representation of indigent Social Security appellants? [A fairly common attorney pro bono activity.]

    *”prosecuting 211 patent applications” sounds like a lot of “moonlighting”?

    1. 2.1

      Yeah I was just thinking when I read the decision the other day that it seemed overbroad by a good bit, though I’m not sure if there are some carve outs and all even as mentioned in the statute (but which I didn’t look up) and perhaps more beyond those mentioned.

    2. 2.2

      While I agree that pro bono representation of indigent SS appellants is fairly common, I am less certain that it is common for government employee attorneys. Do you know government employee attorneys who do this pro bono work?

  6. 1

    Key part of that key rule:

    “ is a party or has a direct and substantial interest.”

    1. 1.1

      If a government agency really does have a “direct and substantial interest” in a particular matter, it’s a little problematic that the agency can also act as “judge” in that same matter (vs. the normal rationale that the agency is merely “protecting the public interest,” and thus, doesn’t have direct stake in the outcome).

      1. 1.1.1

        I hear you – but to me, the word “or” means “or” in this instance, and can one doubt that the government IS a party?

        I do note that this is NOT what the case itself focused on.

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture