In the recent decision of Matter of Kley Achterhof, an attorney was suspended from practice before the U. S. Patent and Trademark Office in patent, trademark and other non-patent matters for a period of 18 months. The decision addressed the ability of an attorney who did not pass the patent registration exam to engage in the practice of law before the USPTO by having clients file submissions pro se, that is, on their own behalf.
The attorney was involved in a group designed to support inventors in connection with patent-related matters, through which he attended conferences and was scheduled to speak on a panel. After meeting several inventors through the group, the attorney performed a patent search review, and later helped draft and develop a response to an Office Action to be submitted to the USPTO by the client as if he were proceeding as a pro se applicant acting on his own behalf, without counsel, although in fact the client had not prepared the document in question.
The client raised issues with the attorney regarding whether the attorney could submit information in pro se while having an attorney working on the patent. The client asked three other lawyers who all indicated to the client that this was not proper. The client secretly recorded a conversation with the attorney in which the attorney indicated that having a non-registered attorney work on the patent was a “grey area” and said it was not necessary for the attorney to be registered as long as he was not appearing on behalf of the client before the USPTO. The client terminated the engagement with the attorney and requested a refund of fees paid.
In total, the attorney assisted numerous clients in drafting patent applications, patent drawings, claims and related patent work, advising clients on navigating the patent process and helping them secure patents. In the discipline proceeding he produced 291 invoices related to such work. In the disciplinary proceeding, the attorney claimed that he had never practiced in patent matters, but rather, only assisted pro se clients.
The ALJ found, and the USPTO affirmed, that the attorney had engaged in the unauthorized practice of patent law without being admitted to practice before the patent office. In addition, the attorney had mislead his clients and potential clients by indicating that he could advise them regarding patent law and they could file their patent matters pro se, indicating that there were no restrictions against doing so. His conduct violated 37 C.F.R. § 11.701, prohibiting false or misleading communication about the practitioner or his services. In addition, the attorney had engaged in conduct involving dishonesty in violation of 37 C.F.R. § 11.804(c). The decision of the USPTO concluded that the statements made by the attorney were “plainly false” because the attorney was not a registered practitioner and therefore was not allowed to represent patent applicants before the USPTO.
The opinion rejected the attorney’s argument that he acted in good faith based on a publication referencing the USPTO’s alleged failure to enforce the rules against unauthorized practice of law against unregistered practitioners, holding that ignorance of the attorney’s ignorance law or reliance on inaccurate information was irrelevant.