What To Do When You Receive An OED Grievance.
Updated: Nov 12, 2019
Whether you practice in trademark or patent law, you generally want to avoid receiving communication from the Office of Enrollment and Discipline (OED). But what happens when they send you certified letter that includes a Request for Information and Evidence Under 37 CFR 11.22(a) (RFI)?
Understanding one of OED's core missions, investigating allegations of misconduct by practitioners, is helpful in guiding your thought process. At first, the fear sets in. If your conduct was related to a grievance filed by a client or fellow practitioner, you may wonder what you could have done differently--or even worse-- you may try to respond without understanding the key issues and the professional conduct rules.
As an attorney or agent, you clearly understand the reason for hiring counsel to represent your interests, but before you reach out, here are some suggestions to assist you in contemplating your response:
Confirm receipt of the RFI by contacting OED by e-mail or phone and request a reasonable extension of time. Remember that OED operates under a 1-year statute of limitations. See 35 U.S.C. § 32. Therefore, you may be requested to enter into a tolling agreement. See 37 CFR § 11.34(e).
Review the USPTO Rules of Professional Conduct. See 37 CFR § 11.101 et seq.
Prepare a truthful response and understand that a failure to respond to a question by upholding your 5th Amendment right to self incrimination may result in an adverse inference against you. See, e.g., Baxter v. Palmigiano, 425 U.S. 308 (1976).
A knowing failure to respond may be considered a failure to cooperate, which itself is purportedly an additional violation of the USPTO Rules of Professional Conduct. See 37 CFR § 11.801(b).
Understand that the staff attorney has been given the duty to investigate the allegations. While the receipt of the RFI means the complaint has passed an initial intake inquiry, your thoughtful response could result in a dismissal of the grievance. Therefore, politely and thoroughly explaining the issues allows the staff attorney to make a recommendation to the OED Director on how to proceed.
The law firm of Carr Butterfield, LLC has a dedicated team of professionals who represent individuals and entities under regulatory investigations. The IP ethics practice is led by Emil Ali, who worked on the promulgation of the USPTO Rules of Professional Conduct as a former OED attorney.
This post is made available by the lawyer for educational purposes and to provide general information, not to provide specific legal advice. By using this site you understand that there is no attorney-client relationship between you and the publisher.