As one of the only former Office of Enrollment and Discipline (OED) attorneys in private practice, I receive many questions about the inner workings of OED. As a federal jurisdiction, the USPTO has a large and diverse group of attorneys that come under its purview. For example, there are over 46,000 registered patent practitioners holding active status, and thousands more who practice before the USPTO in trademark matters.
While many people are familiar with OED being the “registrar” of patent practitioners, Will Covey, the OED Director & Bill Griffin, the Deputy Director, lead a team of consummate professionals who run a nationwide bar with multiple ancillary programs. For example, OED runs a nationwide Law School Clinic program that allows law students in 56 schools across the United States to practice before the USPTO in patent and/or trademark matters under limited recognition. OED also oversees the Patent Pro Bono Program that provides low-income inventors and businesses with patent legal services, through a network of local nonprofit grantees.
Of course, OED also wears the hat of a “board of bar examiners” in drafting questions for the Examination for Registration to Practice before the USPTO, deciding moral character issues, processing Applications for Registration, overseeing the mandatory Survey of Registered Patent Practitioners, and granting limited recognition to nonimmigrant aliens. Paulette Walker oversees the amazing team that helps process approximately two thousand applications for the Registration Exam each year.
One of the most important duties of OED is to "regulate" the conduct of IP practitioners. While the practice of law is generally regulated by the highest court of each State, with some duties delegated to bar associations, OED has outsized authority and influence on the discipline side. Understanding the context of OED’s authority helps those under investigation to navigate the minefield.
Intake
In many States, grievances are received by an intake office where they are evaluated and then either dismissed or sent for further investigation and prosecution. OED differs greatly in that it receives the grievance directly, and decides whether to open an investigation. Once an investigation is opened, a staff attorney reviews the matter and decides whether to contact the attorney. In some cases, a brief review of the record allows the staff attorney to close the file, while other situations warrant communicating with the grievant or the practitioner under investigation.
OED Comes Knocking
When OED sends an RFI, it creates a variety of feelings, but it is helpful to calmly review what they are asking for. Generally, a staff attorney and the OED Director have no interest in hassling practitioners, rather they are laser focused on protecting the public and ensuring compliance with the USPTO Rules of Professional Conduct. Unlike most States, OED does not have subpoena power during the investigatory process. This means that the staff attorney relies on USPTO records, the grievant, and the practitioner to complete the puzzle. At this stage, the case can close with no action, a warning letter, diversion, or public or private discipline through settlement.
Grand Jury Of Their Peers
If the OED Director decides to pursue formal discipline, a memorandum is issued to the Committee on Discipline, which is made up of attorneys employed by the USPTO, who decide whether to find probable cause to bring charges against a practitioner. While many States have similar committees, the USPTO’s use of internal staff and no “public members” make it an outlier.
So Many Judges—Not Enough Time
Once probable cause against a practitioner is found, the OED Director files formal charges before an Administrative Law Judge (ALJ), who is a hearing officer chosen by the USPTO Director. While the USPTO has many Administrative Patent and Trademark Judges, the USPTO presently uses ALJs from the Environmental Protection Agency, and previously used ALJs from the Department of Housing and Urban Development to hear disciplinary cases. The ALJ makes an initial decision, that becomes a final agency action after 30 days, unless it is appealed to the USPTO Director. However, don’t get your hopes up that you will be able to meet the USPTO Director at a hearing. The General Counsel of the USPTO, presently Sarah Harris, has a long standing delegation to decide disciplinary cases on behalf of the USPTO Director, and such appeals are generally decided on the documentary record. Often, the General Counsel delegates authority to the Deputy General Counsel for General Law to hear these cases. Unless a request for reconsideration is filed, a practitioner is eligible to proceed to judicial review.
For additional information, please contact McCabe & Ali, LLP at 877-OED-4097.
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