September 17, 2012
Patent attorneys are subject to ethical and disciplinary regulation by multiple governing bodies. These include the state bar authority in each state in which the attorney is admitted to practice, and the Office of Enrollment and Discipline (OED) at the U.S. Patent and Trademark Office (USPTO).
Like the state bar authorities, the OED administers a set of ethical rules by which registered patent attorneys must abide. When the OED believes that an attorney has violated an ethical rule, the OED prosecutes that attorney. The OED has the authority to impose sanctions on the attorney if an ethical violation is established, including excluding the attorney from practice (a sanction tantamount to disbarment in the state bar). The OED also recognizes patent agents, who are non-attorneys registered to practice in patent cases. Attorneys and agents are collectively called “practitioners” by the OED. Patent agents also must abide by the USPTO’s ethical rules.
A provision of the Leahy-Smith America Invents Act (AIA) required the USPTO to modify the time limits under which the OED may prosecute a practitioner. The USPTO recently passed a new rule to implement this change.
Under the new rule, the OED must prosecute a grievance within 10 years after the date on which the misconduct forming the basis for the proceeding occurred, or one year after the date on which the misconduct forming the basis for the proceeding is made known to the OED, whichever is earlier. A grievance is a written submission from any source received by the OED Director that presents possible grounds for discipline of a specified practitioner. The written submission need not be submitted by an aggrieved client or any other specific person. These deadlines may be tolled by agreement between the practitioner and the OED.
Notably, the one-year deadline begins when the OED receives the grievance, not when the basis for the practitioner’s alleged misconduct is known to an examiner or another USPTO employee.
The new rule became effective earlier this summer.
For more information, please contact Fitch Even partner Allen E. Hoover.