115    Conduct of Practitioner

115.01    Applicable Rules

The conduct of an attorney or other authorized representative in proceedings before the Board is governed by Part 11 of 37 C.F.R., Subpart D – USPTO Rules of Professional Conduct (37 C.F.R. § 11.101 - 37 C.F.R. § 11.901 ).

Part 11 of 37 C.F.R., Subpart B – Recognition to Practice Before the USPTO, addresses the representation of others before the Office, including who is authorized to practice before the United States Patent and Trademark Office (set out in 37 C.F.R. § 11.4 -37 C.F.R. § 11.18 ). Part 11 of 37 C.F.R., Subpart C – Investigations and Disciplinary Proceedings; Jurisdiction, Sanctions, Investigations, and Proceedings, addresses investigations and disciplinary proceedings (37 C.F.R. § 11.19 -37 C.F.R. § 11.60 ).

In addition to the requirements specifically applicable to the conduct of practitioners, all parties in matters before the Board, whether represented by counsel or not, are expected to conduct their business with decorum and courtesy. [ Note 1.]

NOTES:

 1.   37 C.F.R. § 2.192; MySpace Inc. v. Mitchell, 91 USPQ2d 1060, 1062 n.4 (TTAB 2009) (referencing 37 C.F.R. § 2.192).

115.02    Disciplinary Proceedings

37 C.F.R. § 2.193  Trademark correspondence and signature requirements.

  • * * * *
  • (f) Signature as certification. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any document by any person, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter. Violations of § 11.18(b) of this chapter may jeopardize the validity of the application or registration, and may result in the imposition of sanctions under § 11.18(c) of this chapter. Any practitioner violating § 11.18(b) may also be subject to disciplinary action. See §§ 11.18(d) and 11.804 of this chapter.

37 C.F.R. § 11.18  Signature and certificate for correspondence filed in the Office.

  • * * * *
  • (b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that-
    • (1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. § 1001 and any other applicable criminal statute, and violations of this section may jeopardize the probative value of the paper; and
    • (2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
      • (i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
      • (ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
      • (iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
      • (iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.

37 C.F.R. § 11.20 Disciplinary sanctions; Transfer to disability inactive status.

  • (a) Types of discipline. The USPTO Director, after notice and opportunity for a hearing, and where grounds for discipline exist, may impose on a practitioner the following types of discipline:
    • (1) Exclusion from practice before the Office;
    • (2) Suspension from practice before the Office for an appropriate period of time;
    • (3) Reprimand or censure; or
    • (4) Probation. Probation may be imposed in lieu of or in addition to any other disciplinary sanction. Any conditions of probation shall be stated in writing in the order imposing probation. The order shall also state whether, and to what extent, the practitioner shall be required to notify clients of the probation. Violation of any condition of probation shall be cause for imposition of the disciplinary sanction. Imposition of the disciplinary sanction predicated upon violation of probation shall occur only after an order to show cause why the disciplinary sanction should not be imposed is resolved adversely to the practitioner.
  • (b) Conditions imposed with discipline. When imposing discipline, the USPTO Director may condition reinstatement upon the practitioner making restitution, successfully completing a professional responsibility course or examination, or any other condition deemed appropriate under the circumstances.
  • (c) Transfer to disability inactive status. The USPTO Director, after notice and opportunity for a hearing may, and where grounds exist to believe a practitioner has been transferred to disability inactive status in another jurisdiction, or has been judicially declared incompetent; judicially ordered to be involuntarily committed after a hearing on the grounds of incompetency or disability, or placed by court order under guardianship or conservatorship, transfer the practitioner to disability inactive status.

By presenting a submission to the Office, the signer makes the certifications set forth in 37 C.F.R. § 11.18(b), and is subject to sanctions under 37 C.F.R. § 11.18(c)  for violation of 37 C.F.R. § 11.18(b)(2), regardless of whether the party is a practitioner or non-practitioner. [ Note 1.]

The rules governing disciplinary proceedings are set out in 37 C.F.R. § 11.19 -37 C.F.R. § 11.60. Such a proceeding is instituted only under the circumstances specified in 37 C.F.R. § 11.19.

NOTES:

 1.   For examples of cases involving disciplined practitioners, see Bender v. Dudas, 490 F.3d 1361, 83 USPQ2d 1065, 1072-73 (Fed. Cir. 2007) (decision to exclude patent attorney from practicing before the USPTO was not "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law" in light of attorney’s failure to disclose to clients his financial relationship with invention promotion company); Sheinbein v. Dudas, 465 F.3d 493, 80 USPQ2d 1537, 1539 (Fed. Cir. 2006) (decision to exclude patent attorney from practicing before the USPTO was proper based on attorney’s disbarment in Maryland and the District of Columbia for assisting son to flee the United States to avoid murder investigation); Klein v. Peterson, 866 F.2d 412, 9 USPQ2d 1558, 1560 (Fed. Cir. 1989) (patent attorney excluded from practice for certificate of mailing violations); Moatz v. Colitz, 68 USPQ2d 1079 (Dir. USPTO 2003) (practitioner suspended for, inter alia, aiding others in the unauthorized practice of law, sharing fees with non-practitioners, and handling matter without adequate preparation); In re Rivera, 67 USPQ2d 1952, 1954-55 (Dir. USPTO 2003) (reciprocal discipline); In re Ryznic, 67 USPQ2d 1115, 1122-23 (Dir. USPTO 2003) (agent suspended for, inter alia, prosecuting patent application while employed by USPTO); In re Cohen, 66 USPQ2d 1782, 1785 (Dir. USPTO 2003) (practitioner suspended for neglecting client matter and other sanctionable conduct); Moatz v. Kersey, 67 USPQ2d 1291, 1294-96 (Dir. USPTO 2002) (practitioner represented private clients while employed by U.S. government and failed to notify USPTO of suspension in other jurisdictions); Weiffenbach v. Logan, 27 USPQ2d 1870, 1875 (Comm’r 1993) (patent attorney suspended from practice before USPTO for five years for altering an office action in a patent application and engaging in other unethical conduct); McCandlish v. Doe, 22 USPQ2d 1223, 1227 (Comm’r 1992) (patent attorney reprimanded by Commissioner for misrepresenting facts and knowingly allowing documents to remain of record which had been withdrawn).

115.03    Petitions to Disqualify

37 C.F.R. § 11.19(c)  Petitions to disqualify a practitioner in ex parte or inter partes matters in the Office are not governed by §§ 11.19 through 11.60 and will be handled on a case-by-case basis under such conditions as the USPTO Director deems appropriate.

Petitions to disqualify practitioners representing parties in ex parte or inter partes matters before the Board are not disciplinary proceedings and hence are not governed by 37 C.F.R. § 11.19 -37 C.F.R. § 11.60. Rather, petitions to disqualify are handled on a case-by-case basis. See TBMP § 114.08 (Adverse Parties Represented by Same Practitioner).

When a petition to disqualify is filed in connection with a proceeding pending before the Board, the Board immediately issues an action suspending proceedings in the case and advising the parties that no additional papers should be filed by the parties until further notice, pending briefing and consideration of the petition.

For further information concerning petitions to disqualify, see TBMP § 513.02.