Federal Circuit Delivers Another "Win" for OED; Lessons Learned Regarding OED Procedure
On November 20, 2019, a panel of the U.S. Court of Appeals for the Federal Circuit upheld a District Court order affirming the three-year suspension of patent attorney Louis Piccone. See Piccone v. USPTO, No. 2019-1471, 2019 U.S. App. LEXIS 34493 (Fed Cir Nov. 20, 2019). The decision confirms many points regarding how the statute of limitation and delegation of duties within the USPTO’s Office of Enrollment and Discipline (OED) are viewed by the Federal Circuit.
Briefly, Mr. Piccone was first suspended from practice before the USPTO by order of EPA Chief Judge Susan L. Biro dated June 16, 2016, after a hearing which took place from October 13-14, 2015. On May 25, 2017, Mr. Piccone’s request for reconsideration of Judge Biro’s decision was denied by the Sarah T. Harris, General Counsel of the USPTO, on behalf of the USPTO Director. Ms. Harris once again denied Mr. Piccone’s request for reconsideration on February 9, 2018, leading to his filing of a District Court Action in the Eastern District of Virginia, which included a Bivens claim. On November 13, 2018, Mr. Piccone’s petition was denied, and his numerous arguments, which included claims regarding the statute of limitations, failed.
Mr. Piccone, a resident of Canada, was first admitted in to practice in Pennsylvania in 1989, and before the USPTO as a patent attorney in 1997. However, importantly, Mr. Piccone’s Pennsylvania license was suspended (administratively) at least three times between 2007 and 2014, and he was censured a number of times within litigations. After being made aware by Massachusetts Board of Bar Examiners of allegations against Mr. Piccone, OED began its own investigation.
While Mr. Piccone made colorful arguments regarding due process, the Federal Circuit panel was unmoved. For example, Mr. Piccone alleged that exculpatory evidence was withheld from him; however, the panel found no evidence of such evidence, and noted the limitations of discovery under the USPTO’s procedural rules.
The Piccone case is instructive to practitioners unhappy with OED’s investigation into their conduct. While many practitioners are frustrated with lengthy Requests for Information and Evidence (RFIs), Mr. Piccone was likely similarly dismayed. Interestingly, it appears that his conduct only implicated one filing before the USPTO—a Response to an Office Action filed in a singular trademark application in which Mr. Piccone is alleged to have drafted the response, but had the President of the client submit it. Again, it appears that Mr. Piccone’s legal work in the background was the key in this allegation. This was problematic because OED alleged that Mr. Piccone was not licensed as an attorney in any state, and therefore not eligible to practice trademark law. OED’s other claims were likely gleaned through four RFIs sent to Mr. Piccone, which dealt with his alleged unauthorized practice of law in Massachusetts, Illinois, and Iowa—nothing related to the practice of patent or trademark law before the USPTO.
The Piccone case also highlights that the judiciary is unmoved by allegations that a person other than the OED Director signed the Complaint, noting that “Deputy Director [William] Griffin was
within his power to institute disciplinary proceedings against Mr. Piccone.” Equally important was the fact that the panel, which included former USPTO Solicitor and colleague of the OED Director, Raymond Chen, noted that constructive notice of an allegation against Mr. Piccone was not enough, and that OED had properly filed the Complaint because Mr. Piccone had failed to establish the affirmative defense.
Practitioners should be mindful that much of their conduct outside of patent and trademark law may implicate the jurisdiction of the USPTO, and run afoul of the USPTO Rules of Professional Conduct. Respondents in OED matters should be mindful of the technical and procedural limitations of OED’s investigation process. Quite frankly—once a Complaint is filed, the train has left the station, so practitioners should carefully and expeditiously work to cooperate with OED, while being sure to uphold their rights.
For additional information related to understanding the complex regulatory framework of OED, contact Carr Butterfield, LLC at 503-635-5244.
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