The Perilous Case of Double Disbarment by OED
Can you lose a law license you don’t presently have? According to the USPTO, yes you can. While not a common occurrence, a practitioner may be disciplined based upon an investigation by OED, as well as by a reciprocal discipline imposed based upon a matter adjudicated by a state—even based upon the same operative facts.
Take the case of registered practitioner Robert Ryan Morishita who, on September 28, 2018 was excluded from practicing before the USPTO, based upon a Complaint filed on November 1, 2017. The decision, signed by administrative law judge James Jeremiah Mahoney, states that Mr. Morishita did not appear, answer the Complaint, or seek an extension of time. Additionally, Judge Mahoney found that Mr. Morishita, inter alia, misrepresented the status of a patent application, forged an Office Action, allowed an application to become abandoned, and failed to return fees. Judge Mahoney interestingly noted that the OED Director had not proven that Mr. Morishita had intentionally failed to comply with rules or orders by failing to participate in the case by stating that: “…the OED Director has not demonstrated, by clear and convincing evidence, that Respondent engaged in the bad faith obstruction of the disciplinary proceeding because there is no evidence that demonstrates that Respondent is aware of these current proceedings.” In the end, though, Judge Mahoney found adequate support to conclude that Mr. Morishita should be excluded from practice before the USPTO.
Nevertheless, on September 8, 2018, just weeks before Judge Mahoney’s Order, the OED Director filed a “Complaint for Reciprocal Discipline Pursuant to 37 C.F.R. § 11.24” against Mr. Morishita, predicated upon his March 9, 2018 disbarment in the State of Nevada. From its face, it appears that the Nevada disbarment was based upon similar, if not the same, conduct. Nevertheless, on January 23, 2019, the Deputy General Counsel of the USPTO, by delegation from the USPTO Director, excluded Mr. Morishita from practice before the USPTO—again. It is unclear from the record whether the OED Director notified the USPTO Director regarding the September 28, 2018 exclusion, or whether such was considered by the USPTO Director as being redundant in light of the order.
In analyzing the rationale for two simultaneous cases, we review the reciprocal discipline regulation, which requires the OED to file the charges for practitioners subject to the jurisdiction of the USPTO. See 37 CFR § 11.24(a) (“The OED Director shall, in addition, without Committee on Discipline authorization, file with the USPTO Director a complaint complying with § 11.34 against the practitioner predicated upon the public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification.”). While one might argue that the jurisdiction is not there if a practitioner is already excluded, the regulations make clear that even disciplined practitioners fall under the jurisdiction of the office. See 37 CFR § 11.19(a).
Therefore, practitioners should always proceed with caution to understand the nuances of how certain actions may affect their ability to practice before the USPTO (as well as state bars).
For additional information and practice tips related to the defense of OED proceedings, contact Carr Butterfield, LLC at 503-635-5244.
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