This follows up on a post below about former client conflicts, about the catch-all rules.
The OED, of course, regulates patent agents and patent lawyers. A practitioner who violates a provision of the PTO Code can be disciplined by the OED. Discipline can include disbarment, suspension, a public reprimand, or a private reprimand. So, if a practitioner steals money from a client for whom he is prosecuting a case, there's no doubt the OED would have jurisdiction to discipline the practitioner.
Over the years, I've had practitioners contact me because the OED was coming after them for things the practitioner did in, for example, patent litigation involving a patent that the practitioner had nothing to do with prosecuting. Say, for example, the lawyer overcharged the patentee for representing it in an infringement suit.
There are lots of rules in the PTO that could "reach" this conduct and so permit the OED to discipline the practitioner for conduct having nothing to do with practice before the Office. For example, 37 C.F.R. § 10.23(b)(5) prohibits conduct that is “prejudicial to the administration of justice.” (In the forthcoming edition of our book, I go into what the PTO says that phrase means, but let's put that to the side.) Thus, on its face section 10.23(b)(5) would reach this conduct: overcharge a plaintiff in a patent suit, and lose your ability to prosecute patents.
In my view, the OED does lack jurisdiction, but the OED believes otherwise, and some have agreed with it in articles.
Let's start with the text of this rule: on its face, it reaches the conduct I've described (assuming that overcharging is, in fact, "prejudicial to the administration of justice." Nothing in the rule itself says that it has to be prejudicial to the administration of justice at the PTO. And, some say the rule means what it says. An important commentator, Cameron K. Weiffenbach, wrote:
Disciplinary Rule 37 C.F.R. § 10.23(b)(5) is directed to conduct that is “prejudicial to the administration of justice.”
The expression “prejudicial to the administration of justice” is not defined in the USPTO rules. This rule is, however, associated with misconduct in court proceedings.
The USPTO does not use the term “court” in its rules, but the term “tribunal,” which the USPTO defines, includes the “courts, the office [USPTO], and other adjudicatory bodies.” 37 C.F.R. § 10.1(z).
Thus, conduct that could constitute violation of 37 C.F.R. § 10.23(b)(5) could be conduct that impairs the public confidence in the USPTO such as lying to a client or to the USPTO, or neglecting a matter before the USPTO or even failing to pay a parking ticket.
(Emph. added.)
Again, I know the OED believes that this rule reaches very far. From what I have seen, the OED believes it can come after you for conduct done anywhere if it is "prejudicial to the administration of justice." And, I have to tell you, there are several other provisions of the PTO Code that aren't limited, expressly, to practice beforre the Office.
Why do I think that it doesn't have jurisdiction unless it's a matter before the Office? Well, because the PTO said so, repeatedly, and to avoid an interpretation of this very rule that would let it have that power.
Here's what happened.
When the PTO was adopting the PTO Code back before 1985, many people complained that, as then proposed, the PTO Code applied to anything the practitioner was doing -- in prosecution, or not. The PTO repeatedly responded to those comments before adopting the final rules by doing three things: (1) it adopted 37 CFR 10.1 to say that the PTO was intending solely to regulate practice before the Office; (2) the PTO amended many rules in light of comments to include a provision in 37 CFR 10.1 that says "with respect to practice before the Office," and (3) with respect to other rules, in comments the PTO repeatedly said, basically, "we don't have to include a phrase saying this specific rule only applies to conduct before the Office because 10.1 says no rule reaches that far."
With respect to this specific rule -- "prejudicial to the administration of justice" provision -- in fact, the PTO said that that rule was limited to practice before the Office, and pointed to Section 10.1 as a basis for not having to say so explicitly.
So, where we are in my view is: these catch-all rules can't catch anything that does not constitute "practice before the Office." The PTO said they didn't, so they can't.
But, like I said, I've had folks make that argument to the OED, and I know it disagrees. Seems to me there's a problem with that, but you need to be aware of it.
In closing, and to be clear, there are rules in the procedural rules at the OED that allow for "reciprocal discipline." So, if a state bar (or, I suppose, a federal court) were to discipline a lawyer for overcharging a patent infringement client, or for failing to pay that parking ticket, the OED could also impose discipline. But, without getting boring on you (ha, you say, you did that at the headline!), there are a lot of procedural protections in that circumstance that aren't present even where, say, a judge were to issue an order sanctioning a practitioner for something done in litigation.
Finally, I'll note that there are some choice of law issues beneath all of this that lead me to believe that he OED would never be applying these rules to conduct that occured in a parking ticket matter, or a patent infringement suit, but those are for another day.
