The USPTO Rules of Professional Conduct generally proscribe a practitioner’s failure to cooperate in an OED investigation, or a knowing failure to respond to a lawful request from an admissions or disciplinary authority. See 37 CFR § 11.801(b). Furthermore, OED notes in their requests for information that “if you do not respond to this request for information or any OED request, the Committee on Discipline may draw an adverse inference in making a determination under 37 CFR § 11.23. See Baxter v. Palmigiano, 425 U.S. 308 (1976).” Importantly, however, the rule does not require disclosure of confidential client information protected by 37 CFR § 11.106. See 37 CFR § 11.801(b).
Baxter, and its progeny, have stood for the proposition that an adverse inference is permitted in non-criminal cases when an individual upholds their Fifth Amendment rights. See SEC v. Colello, 139 F.3d 674, 677 (9th Cir. 1998) (“Parties are free to invoke the Fifth Amendment in civil cases, but the court is equally free to draw adverse inferences from their failure of proof.”); see also United States v. Solano–Godines, 120 F.3d 957, 962 (9th Cir. 1997) (“In civil proceedings, however, the Fifth Amendment does not forbid fact finders from drawing adverse inferences against a party who refuses to testify.”).
While on its face, OED’s assertions are bold and may have a chilling effect on respondents; care should be taken to understand that a refusal to provide information to OED cannot alone sustain a violation of the cooperation rule. That is, a respondent may, and likely should, uphold his or her obligations under 37 CFR § 11.106, and may choose to withhold information or testimony under their Fifth Amendment rights. Importantly, OED is permitted, under its system of records, to share information received during an OED disciplinary investigation with law enforcement agencies. Therefore, any information provided to OED, even in a private disciplinary context, could be shared with other agencies, or used against either a respondent or his or her client in a criminal or other action. Nevertheless, a respondent should always consider responding to a lawful request from OED, even if it is to uphold confidentiality or a Fifth Amendment right.
Nevertheless, the USPTO clarified the limitation of the adverse inference in a final rule issued in 2008 by stating that:
When the practitioner refuses to answer or provide unprivileged information, the OED Director still has the burden of providing the members of the Committee panel with sufficient evidence to determine that there is probable cause to bring charges that practitioner engaged in conduct involving grounds for discipline. See § 11.23(b)(1). When the OED Director provides such sufficient, uncontested evidence, the Committee panel may properly find probable cause relying on the evidence presented by the OED Director, inferences drawn from that evidence, as well as adverse inferences drawn from the practitioner’s refusal to answer the inquiry or produce unprivileged information.
See 73 FR 47674 (emphasis added).
Practitioners should attempt to cooperate to the best of their ability and provide information sufficient to help OED make an informed decision to terminate the investigation. In doing so, practitioners may find it most helpful to understand the parameters of privilege, confidentiality, work product immunity, and of course the potential for breach and disclosure of such to not only OED, but also other agencies. It is important for the respondent to also seek clarification when needed. Indeed, courts have long noted that lawyers who seek further information prior to responding in a disciplinary investigation should not be penalized for such conduct. See State ex rel. Okla. Bar Ass’n v. Krug, 92 P.3d 67 (Okla. 2004) (reversing recommendation of discipline for failure to cooperate based upon respondent’s multiple communications with the General Counsel requesting information regarding the grievance). Additionally, those desiring to uphold their Fifth Amendment rights should carefully weigh their options and make an adequate risk assessment of providing the information to OED.
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