Responding to a Request for Information and Evidence from the USPTO's OED
The envelope comes by Certified Mail, Return Receipt Requested and stamped as “Personal and Confidential.” Inside is a letter from the USPTO captioned “REQUEST FOR INFORMATION AND EVIDENCE UNDER 37 C.F.R. § 11.22(f).” The letter goes on to read that the Office of Enrollment and Discipline (OED) received information regarding you, and that the OED Director requests further information before determining whether a violation of the USPTO Rules of Professional Conduct has occurred.
Each year the OED issues hundreds of these Requests for Information and Evidence (RFI) to practitioners. Many receive only one, but others receive multiple—opening the door to expansive and invasive questioning. In the end, in Fiscal Year 2019, OED records indicate that 41 cases closed with a warning letter, while 40 resulted in formal discipline, along with an additional 17 reciprocal actions. This was a noticeable increase from Fiscal Year 2018, which saw 31 warning letters and 33 formal disciplinary matters. Interestingly, Fiscal Year 2019 also indicated an increase of the imposition of discipline on Trademark attorneys—up 260% between Fiscal Year 2016 and Fiscal Year 2019.
The USPTO Director is charged by regulation to appoint an OED Director whose duties include investigating grounds for discipline against practitioners. The OED receives information about practitioners from many sources including state bars, the public, the patent and trademark examining corps, and through other sources, including news and blog posts. Generally, that information is called a grievance, which is defined as “…a written submission from any source received by the OED Director that presents possible grounds for discipline of a specified practitioner.” See 37 C.F.R. § 11.1. Upon receiving a grievance, the OED Director screens the matter, then generally directs a staff attorney to issue an RFI to request the practitioner’s comments.
Understanding the RFI
An OED RFI commonly includes recitation of facts “under consideration” by OED, along with a list of individual requests for information, which act as both interrogatories and demands for production of documents, as well as a summary of the USPTO Rules of Professional Conduct (USPTO Rules) that are at issue or implicated.
While the second line generally states that: “[t]he issuance of this letter means that the matter has passed OED’s initial screening process” all hope is not lost. The OED is charged with investigating grounds for discipline and must evaluate grievances at face value. While some grievants remain anonymous, others open themselves up to being questioned by the OED themselves. As such, the OED often sends the practitioner and grievant each an RFI requesting further details. Sometimes the identity and responses of the grievant are shared with the practitioner, but other times that key information is withheld.
Responding to the RFI
Generally, practitioners are given 30 days from the mailing date to respond to an RFI, and are warned that failing to respond to an RFI is itself an independent violation of the USPTO Rules under 37 C.F.R. § 11.801(b). As such, it is important to carefully respond to the OED, even if the claims appear to be meritless, in order to prevent further allegations of misconduct. While many trademark practitioners have never heard of the OED, and thus argue that they should not be subject to spending the time or resources defending such investigations, such arguments have little merit, especially when the trademark practitioners continuously practice before the USPTO in trademark matters.
When it comes to requesting further time to respond, OED staff attorneys differ in their approach—some offer reasonable short extension with a phone call, while others request complex tolling agreements. As such, it is important for practitioners to be aware that the OED is running on a one-year statute of limitations from the date the OED Director received the grievance. See 35 U.S.C. § 32; see also 37 C.F.R. § 11.34(d).
The Privilege of Being an Attorney
Practitioners often ask me—"can’t I just refuse to answer these questions based upon privilege?” The answer is complicated, and addressed in another useful post about The Sanctity of Attorney-Client Privilege and OED Investigations. Generally speaking, though, it can be helpful to provide a limited amount of information to allow the OED Director to verify a practitioner’s conduct, and may be expressly permissible when your client is the one complaining. However, OED often requests mounds of information about clients whom would never dream of complaining about you. In such cases, the practitioner should analyze their duty under the confidentiality provisions of 37 C.F.R. § 11.106 and state law, attorney-client privilege, and work product immunity. While no magic answer exists, a good understanding of the scope of the matter, the client(s) and potential for obtaining consent, and the rules at issue, should help determine whether waiver is appropriate or feasible.
This RFI is Unfair – What Should I do?
While in most situations, an individual subject to criminal investigation or civil discovery can enlist a neutral, whether a judge or arbitrator, to help resolve complex disputes, generally speaking no such neutral exists in the RFI process with OED. Notwithstanding that lack of a “judge” during the investigation process, a petitions process exists that allows a practitioner to petition to invoke the supervisory authority of the OED Director over the staff attorney. Should that process not succeed, the practitioner could appeal to the USPTO Director, whose appeals are heard by the General Counsel of the USPTO—also the OED Director’s supervisor.
Once the USPTO Director rules on the petition, it becomes a final agency action, which can be appealed through the court system. Few practitioners go through the petitions process, and even fewer appeal those decisions to the courts because of the lack of confidentiality once the appeal is made to the courts, in addition to the fact that the petitions process takes months, during which time the response is still due to OED without tolling.
The Waiting Game
Once the OED receives your response, you can expect weeks or months to go by before hearing back. Many cases have multiple sets of RFIs, and the OED staff attorneys tend to carefully review your responses for inconsistencies—often reaching out to witnesses, including colleagues, state bars, and your clients.
Practitioners aspire to have their case closed with no formal action, but much of that depends on the staff attorney’s recommendation to the OED Director. Notably, it is important to know that the staff attorney is generally just doing their job—above them are the decision makers who may overrule their recommendations based upon other factors at play. Of course, when formal action is at play, the practitioner should evaluate whether to proceed to trial or accept a settlement. It should be noted that practitioners who proceed to trial may be subject to the costs of the proceeding as a requisite to reinstatement.
Practitioners should be mindful about what statements they make during the process to the OED (and others). Therefore, thorough thought should be afforded to whether the practitioner should participate in an in-person interview with the OED or provide any responses regarding matters where their knowledge is uncertain. For example, the OED often coordinates with state bars to share information, therefore information you provide to another regulatory agency may ultimately be read and reviewed by the OED. Finally, it bears repeating that OED cases have a one-year statute of limitations (and a larger ten-year look back period), which should be present in a practitioner’s mind in understanding whether an investigation may actually be time-barred.
Should You Hire Counsel?
The answer is clearly yes (but of course biased). Just as you would explain to your clients the importance of having adequate patent or trademark counsel, an attorney experience in OED matters can not only help guide the process, but also provide a buffer to prevent heated or emotional arguments with the OED regarding the nature of the allegations. Of course, cost is always an issue, but obtaining counsel can provide long term benefits, especially if it means the ability to secure your licensed to practice IP law before the USPTO (and preventing any reciprocal action by state bars). Ultimately, even representation by a fellow colleague is better than no representation as it could allow a third party to help guide you on how to clearly and concisely respond to the OED’s inquiry, without having it expand further.
For additional information related to understanding the how best to respond and protect yourself during an OED investigation, contact McCabe & Ali, LLP at 877-OED-4097.
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