You Have Just Been Served With a PTO Bar Complaint. Now What?

The only time a patent attorney or agent ever wants to hear from the USPTO’s Office of Enrollment and Discipline is when they learn they passed the Patent Bar and are issued a registration number.

So if an envelope arrives from the OED (certified mail, return receipt requested), do not expect the Office to be writing to tell you what a great job you did on your last patent application. It means that the OED has received a complaint (or what they call a "grievance"), the OED has screened that complaint, it passes the "smell test," and the government has decided to investigate whether you violated any of the USPTO’s ethics rules.

For many practitioners on the receiving end of an OED grievance, it is not uncommon for panic to set in. Fear too. And anger. Sometimes all of the above. These are all completely normal reactions. 

Many practitioner faced with an OED investigation have a host of questions. Has the OED prejudged me? How serious is this? Will I lose my license? What should I do?

Here is a non-exhaustive list of suggestions on what to do, and what not to do, if you receive an OED grievance.

1.  Accept the delivery. Seriously. The letter is sent certified mail return receipt requested for a reason. If you refuse delivery, the Postal Service is going to simply return the letter back to the OED with a note indicating delivery was refused. That is a terrible way to begin an investigation. And, it will not make the investigation stop.
2. Read the letter. Remember back when the stock market was tanking? Some investors would file trash their monthly brokerage statements without ever reading. Avoidance is a very common reaction to anticipated bad news. But really, this defense mechanism is not going to make things better.  So sit back, take a deep breath, and read the letter from cover to cover. And if you just cannot bring yourself to doing so, then get someone that you know and trust–a family member, spouse, colleague, someone, anyone–to read it for you.
3. Docket the response deadline. The OED Grievance letter requests “information and evidence” by a date certain. Typically, the deadline for responding is 30 days from the date on the letter–not the date the letter was received. This means you may only have a few weeks to respond. So docket the deadline just as you would any other important pleading or filing.
4. Consider requesting an extension of time. The OED Director is generally very reasonable about granting extensions of time. Two things to consider. Number one, you have to ask before the deadline. Normally, the OED requires receiving a request for extension of time to respond to a grievance at least seven (7) days before the due date. Number two, you have to provide the OED with a reason for the request. The Office applies a rule of reasonableness. They understand that most IP attorneys are busy people who have lives, work and family obligations, travel commitments, medical issues, and even just simply require time to engage counsel.
5. Hire counsel. Many attorneys feel that since they are trained legal professionals, they should be able to respond to an OED grievance. After all, they presumably lived through whatever is the subject matter of the grievance, and many feel that they have nothing to hide. Indeed, some IP practitioners believe that if they “lawyer up” it is a sign of guilt. It is not. A law school professor of mine used to love to preach that a lawyer who represents himself has a fool for an attorney and an idiot for a client. Self-representation is a dangerous game. It is often very difficult for an individual to think clearly and objectively when they are personally accused of ethical wrongdoing. Many IP attorneys are not well-versed in the USPTO’s Rules of Professional Conduct and Code of Professional Responsibility. Preparation of a response to a grievance requires careful thought and planning, risk assessment, time, and an understanding as to not only what the OED is expecting but also what is going to happen with your response once it is received at the OED. Independent outside grievance counsel can bring perspective and help the unschooled practitioner who thinks they are smart enough to represent themselves from making critical mistakes.
6. Conduct a thorough investigation. The OED wants you to provide them with all of the information needed for them to assess whether there is any merit to the grievance. Before you can answer their questions, you need to investigate. This includes reviewing your relevant files, notes, correspondence and emails. Gathering all of the relevant documents and communications and refreshing your recollection about the events that are the subject of the grievance are crucial steps to answering the OED's inquiry.
7. Answer the questions.  Any teacher will tell you that the easiest exam question is the one that fails to provide any answer. Many practitioners, whether intentionally or inadvertently, do not answer the OED’s grievance questions. Or the answers are obviously incomplete or evasive. Conclusory responses, unsubstantiated assertions, and bald allegations will only cause the OED to question your own veracity and ask more questions.
8. Make OED's job easier.  The job of the OED is to determine the facts--including what facts are disputed and what facts are undisputed. Help them with their job. Lay out your response. The OED loves to have the facts presented to them in chronological order. And by all means supplement your response with contemporaneous records. Address all of the factual and legal issues raised by the grievance.
9. Be mindful of your duty to cooperate.  Every USPTO practitioner, whether they are registered patent attorneys or agents, trademark attorneys, or others who do business before the Office (such as PHV admitted attorneys in PTAB proceedings) has an ethical duty to cooperate with the investigators. Failing to cooperate in itself can be grounds for discipline, separate and apart from the grievance. This does not mean that you cannot raise objections. Questions may call for privileged information, for example, which may lawfully be withheld. Or you may owe a duty of confidentiality that limits your ability to respond. But don't treat the response as you might in, say, asserting a laundry list of boilerplate objections and expecting that that will somehow satisfy the Office and comply with your ethical duty of cooperation. Objections may be made, but they had better be well-founded and not just stated for the sake of not waiving them later. You may be able to obviate the need for objections by simply communicating with the OED, explaining your position and the problem you are having with a particular information request, and trying to come up with a reasonable alternative.
10. Challenges to the OED information request process requires first pursuing agency remedies. If you believe that the OED's request for information is improper and you want to complain about it and seek a remedy for it, there is a process. First, the practitioner can file a petition with the OED Director setting forth the issues. Think of this like a memorandum in support of a motion to quash or for a protective order.  If the OED Director denies the petition, the practitioner must (if they wish to preserve the issue) file a second petition--this time to the head of the Agency. The USPTO Director will then issue a final agency action. Depending upon the outcome of that process, you may then be able to seek relief by filing an action in federal court. But pursuit and exhaustion of administrative remedies is imperative before a federal court will take up any such challenge. Such actions are extremely rare, and I am unaware of anyone in modern times having ever successfully challenged a particular request by this process. Nevertheless, the process does exist, but it should only be used sparingly and for egregious misconduct by the OED regulators.
11. Be nice.  This does not mean you have to cave on every issue. It does not mean abandoning your rights and responsibilities. But what the OED is assessing, at bottom, is your character. So be a professional. The OED is not a machine–it is an organization comprised of experience attorneys. Show them the same courtesy and respect as you would a judge in federal court. That does not mean that you will “win.” But you will score character points for your professionalism, and how you act and conduct yourself can either help you (if you do it right) or hurt you (if you do it wrong).
12. “When they go low, we go high.”  I do not normally rely upon the advice of former First Ladies, but take Michelle Obama’s advice to heart. Some grievances are nasty character attacks. Avoid at all costs the instinct to attack the accuser. The OED does not care about the accuser’s character. That is not what they are investigating. That does not mean that the accuser and their motivations do not play a role in a response. In some cases, the credibility of the accuser is inextricably intertwined with the investigation. If they are lying, then you need to address those lies and give the OED the information that will help them to realize that the grievance is incorrect or makes misrepresentations. This needs to be done carefully and professionally. Leave the vitriol out of the response. Such language usually does not “play well” at the OED and it may just get in the way of the OED fact-finding process.
13. Tell the truth. There are legions of OED decisions where it was found that the practitioner lied to the OED during the investigation. Just don’t go there. If you get caught in the lie, then the investigation takes a completely different turn–the conduct that might have caused the investigation to begin might long be forgotten, and the OED will now focus on whether or not the practitioner was being forthright in their answers. And the OED staff is very resourceful–they are not called “investigators” for nothing. The cover up is always worse then the “crime.” Plus the truth is much easier to remember.
14. Own it.  Let’s face it, we are all human. And not all bar grievances end in discipline. In fact, the majority do not. But one thing to be mindful of is that we make mistakes. Perfection is not the ethical standard. So if a mistake was made, a reasonable explanation for the mistake can be provided, and remedial measures taken to prevent the mistake from happening again, those are targets worth shooting at. You may not get off free and clear, but in my experience the chance for serious discipline (such as a multi-year license suspension) can be substantially mitigated by the practitioner’s candor and their good faith efforts to bring their practice into full compliance with the USPTO’s ethics rules. The process begins with the response to the OED grievance.

Following these suggestions is not a guarantee of any particular outcome or success. Every OED grievance has its own unique set of facts and circumstances. In some cases, the nature of the attorney’s misconduct or error may be such that serious discipline cannot reasonably be avoided. But in many cases, there is room to negotiate a more favorable resolution. The OED Director has substantial discretion in forging a resolution that protects the public and maintains the integrity of the bar–which are the primary purposes of our system of self-regulation. Practitioners can help themselves immensely in this regard if they play by the rules and respond appropriately and professionally to the OED's grievance.