Mariano Rivera knows something about perfection. The New York Yankees now-retired pitcher is regarded by many experts as the greatest closer in the history of major league baseball. For those who are not aficionados of America’s Pastime, the closer comes in after the game has largely been played, and his sole job is to get the last several opposing batters out. For seventeen seasons, Mariano Rivera (a.k.a. “the Sandman”) dominated at his position and was virtually unhittable.
The USPTO Director also knows something about perfection, albeit in a far different context than baseball. For six years, the USPTO Director has dominated opposing patent practitioners, who have gone hitless against the Office in cases involving reciprocal ethical discipline.
“Reciprocal discipline” is a process for disciplining an attorney in a second jurisdiction after the attorney has been ethically disciplined by another jurisdiction. A patent or trademark attorney who is publicly disciplined in another jurisdiction is subject to reciprocal discipline by the USPTO, even if the attorney’s conduct has nothing to do with their practice before the Office. And while it is theoretically possible for a patent or trademark practitioner to avoid reciprocal discipline in the USPTO, in reality they would have a better chance of hitting a Rivera cut fastball blindfolded with one arm tied. To date, the USPTO’s record in Section 11.24 cases is a perfect 77-0, and counting. Practitioners, meet the “Sandman.”
While the USPTO’s unblemished record under Section 11.24 might seem obnoxiously lopsided, the numbers are not that surprising once consideration is given to the nature of reciprocal discipline and the standard applicable in such matters. Two questions commonly arise when a USPTO practitioner has first been publicly disciplined by another jurisdiction. First, can the practitioner or OED Director re-litigate the disciplinary action before the USPTO? Second, regardless of whether they can re-litigate, can either party challenge, before the USPTO, the disciplinary sanctions imposed in the other jurisdiction. The answers to these questions are set forth in 37 C.F.R. § 11.24.
Before delving into the weeds of Title 37, some higher level background assists in understanding the analysis codified in Section 11.24. The starting point is the decision of the Supreme Court of the United States in Selling v. Radford, 243 U.S. 46 (1917). See In re Portner, No. D2011-44, at 4 (USPTO Dir. June 22, 2012) (acknowledging reciprocal discipline under 37 C.F.R. § 11.24 based on Selling).
Selling involved an attorney admitted to the Michigan and United States Supreme Court bars, but ultimately disbarred in Michigan. Id. at 47. The Solicitor General of the United States sought the attorney’s disbarment from the Supreme Court based on the Michigan disbarment. Id. The Supreme Court observed the loss of an attorney’s right to practice in one jurisdiction “must in the nature of things furnish adequate reason in every jurisdiction for taking away the right to continue to be a member of the Bar in good standing.” Id. at 49. The Court explained “we have no authority to re-examine or reverse as a reviewing court the action of the Supreme Court of Michigan.” Id. at 50. The Court further found “the necessary effect of the action of the Supreme Court of Michigan . . . unless for some reason it is found that it ought not to be accepted or given effect to” is to “absolutely destroy” the attorney’s “right to continue to be a member of this Bar.” Id.
The Supreme Court held it “should recognize the condition created by the judgment of the state court” unless “one or all of the following conditions appear”:
- That the state procedure from want of notice or opportunity to be heard was wanting in due process; 2. that there was such an infirmity of proof as to facts found to have established the want of fair private and professional character as to give rise to a clear conviction on our part that we could not consistently with our duty accept as final the conclusion on that subject; or 3. that some other grave reason existed which should convince us that to allow the natural consequences of the judgment to have their effect would conflict with the duty which rests upon us not to disbar except upon the conviction that, under the principles of right and justice, we were constrained so to do.
Id. at 51.
The Selling case planted the seeds for a process that is today uniformly referred to as reciprocal discipline. Since Selling was decided, “every state in the country has [adopted] a ‘reciprocal’ discipline rule.” See Attorney Grievance Comm’n of Maryland v. Whitehead, 390 Md. 663, 680 n.12 (2006) (surveying the reciprocal discipline rules in every state). As noted in Whitehead, many jurisdiction have adopted, either verbatim or in substance, the American Bar Association’s Model Rules for Lawyer Disciplinary Enforcement DR 22 (2001) (“ABA Model Rules”). The Model Rules state “a judicial determination of misconduct . . . by the respondent in another jurisdiction is conclusive, and not subject to re-litigation in the forum state.” 390 Md. at 680 n.12 (citing ABA Model Rule DR 22). Pursuant to the ABA Model Rules, the court “shall impose the identical discipline . . . unless disciplinary counsel or the lawyer demonstrates” that any of the enumerated exceptions set forth in Selling exist. 390 Md. at 680 n.12 (quoting ABA Model Rules DR 22 cmt.). The court in Whitehead further recognized some states require reciprocal discipline by their use of the words “shall” or “will,” while in other jurisdictions reciprocal discipline is permissive but not mandatory. See id.; see e.g., D.C. Rule of Discipl. Enforc. Rule XI, Section 11(c) (stating reciprocal discipline “shall be imposed” in the District of Columbia “unless the attorney demonstrates” one of the Selling exceptions applies).
The USPTO Rule on reciprocal discipline, 37 C.F.R. § 11.24, was promulgated “to provide procedures for reciprocal discipline of a practitioner” before the USPTO. 73 Fed. Reg. 47650, at 47655 (Final Rule Aug. 14, 2008). The rule applies whenever “a practitioner who is subject to the disciplinary jurisdiction of the Office  has been publicly censured, publicly reprimanded, subjected to probation, disbarred or suspended in another jurisdiction.” Id.; see also 72 Fed. Reg. 9196, at 9201 (Supp. Not. of Prop. Rule Making Feb. 28, 2007) (explaining under section 11.24 that, “If an attorney has been disbarred or suspended in another jurisdiction, reciprocal discipline before the Office applies regardless of whether the practitioner remains registered as an attorney or agent.”).
Section 11.24 sets forth a step-by-step procedure that applies whenever a “practitioner” (i.e., an individual subject to the disciplinary jurisdiction of the USPTO) has been ethically disciplined by another jurisdiction. As a threshold matter, the procedure in Section 11.24 is a significant departure from how the Office normally initiates and prosecutes practitioners for violating the USPTO’s ethical rules. In the context of the “usual” (non-reciprocal discipline) action, the OED Director convenes a panel of the Committee on Discipline, which serves as a kind of grand jury.
The Committee decides whether the OED Director has shown that probable cause exists to file disciplinary charges. The burden of proving probable cause is not particularly onerous, especially since the practitioner is not permitted to appear and it is the OED Director’s “show.” If (more likely when) probable cause is found, the OED Director files a disciplinary complaint with an administrative law judge. 37 C.F.R. §§ 11.32, 11.34. The matter then proceeds like a typical administrative agency adjudication, including pleadings, motions practice, discovery, and a trial before the ALJ. 37 C.F.R. §§ 11.34-11.54. In such proceedings, the OED Director bears the burden of proving, by clear and convincing evidence, the practitioner violated one or more of the Office’s ethics rules. The initial decision of the ALJ becomes final in thirty (30) days unless one of the parties seeks review by the USPTO Director, in which case the Director makes the final decision. 37 C.F.R. §§ 11.55-11.56.
A reciprocal discipline proceeding, in contrast, follows a completely different set of rules, before a different tribunal, applying a different standard of proof, imposed on a different party, based on different—and much more limited—issues than in the “usual” disciplinary case. Section 11.24(a) requires the OED Director to file with the USPTO Director (not an ALJ) a complaint for reciprocal discipline predicated on the discipline imposed in the other jurisdiction. The complaint is filed without Committee on Discipline involvement. The USPTO Director is then required to provide the practitioner with:
- A copy of the record or order regarding the public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification from the other jurisdiction;
- A copy of the USPTO’s reciprocal discipline complaint; and
- An order directing the practitioner to file a response with the USPTO Director and the OED Director, within forty days of the date of the notice establishing a genuine issue of material fact showing why the imposition of the identical public discipline is unwarranted.
37 C.F.R. § 11.24(b)(1)-(3).
Once the notice requirements set forth in Sections 11.24(a) and (b) have been satisfied, Section 11.24(d) dictates the manner in which the disciplinary hearing shall proceed. In accordance with Section 11.24(d), “the USPTO Director shall hear the matter . . . .” 37 C.F.R. § 11.24(d)(1). Furthermore, unless “the USPTO Director determines that an oral hearing is necessary,” the USPTO Director “shall” hear the matter “on the documentary record.” Id.
What occurs next in the process depends completely upon whether the practitioner chooses to exercise his or her right under 37 C.F.R. § 11.24(b)(3) to “file a response with the USPTO Director and the OED Director . . . . establishing a genuine issue of material fact . . . . that the imposition of the identical [sanction imposed by the other jurisdiction] would be unwarranted and the reasons for that claim.” If the practitioner fails to file such a response, then it is “game over” – the USPTO Director “shall impose the identical public censure, public reprimand, probation, disbarment, [or suspension . . . .” imposed by the other jurisdiction. 37 C.F.R. § 11.24(d)(1).
If the practitioner timely files a response under Section 11.24(b)(3), then “the USPTO Director shall consider” that response. 37 C.F.R. § 11.24(d)(1). After considering the practitioner’s response, the USPTO Director “shall impose the identical” discipline “unless the practitioner clearly and convincingly demonstrates, and the USPTO Director finds there is a genuine issue of material fact” that:
- The procedure elsewhere was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process;
- There was an “infirmity of proof” in the other proceeding;
- The imposition of the same disciplinary sanction would result in “grave injustice;” or
- The practitioner was not, in fact, disciplined in the other jurisdiction.
37 C.F.R. § 11.24(d)(1)(i)-(iv).
Several points are noteworthy about how the reciprocal discipline process differs from ordinary USPTO disciplinary proceedings. First, the burden of production and persuasion is always with the practitioner, not the OED Director. Second, the practitioner must meet the “clear and convincing” standard. If the practitioner fails to respond (or if the response fails to meet his or her burden), then whatever public discipline was imposed in the other jurisdiction is also imposed by the USPTO Director. Third, only the practitioner has standing to seek a different disciplinary sanction. Neither the USPTO Director nor the OED Director has standing to seek a greater disciplinary sanction than the sanction imposed by the other jurisdiction. In other words, the discipline imposed by the other jurisdiction operates as a ceiling, not a floor, to the reciprocal discipline the USPTO may impose.
The analysis in a reciprocal discipline case quickly collapses to one issue: whether the practitioner has provided the USPTO Director with evidence sufficient to raise a genuine issue of material fact that one of the Selling factors exists: i.e., denial of due process, infirmity of proof, or grave injustice. Re-litigation of the merits of the other jurisdiction’s disciplinary decision is not an option for either the practitioner or the OED Director. Indeed, the USPTO Director has consistently interpreted 37 C.F.R. § 11.24 as both prohibiting re-litigation and providing for “narrow” review of limited issues. See In re Brufsky, No. D2013-12, at 3 (USPTO Dir. Feb. 4, 2014) (holding the standard under Selling is “narrow” and that “[‘a Federal court, or here, the USPTO Director] is not sitting as a court of review to discover errors in the [hearing judge’s] or the [state] court’s proceedings.’”) (parentheticals in original) (citing In re Zdravkovich, 634 F.3d 574, 578 (D.C. Cir. 2011)); In re Shippey, No. D2012-02, at 6 (USPTO Dir. June 11, 2012) (explaining 37 C.F.R. § 11.24 provides “no entitlement to a de novo review” of the state disciplinary proceeding and the USPTO’s review is “‘extremely limited’”).
In the six years since Section 11.24 went into effect, the overwhelming majority of respondents (64 of 77, or 83%) failed to submit a response to the USPTO Director’s show cause notice. In all of those cases, the USPTO Director imposed the same sanction imposed by the other jurisdiction.
In the remaining thirteen (13) matters, the practitioner submitted evidence and argument attempting to show the existence of a genuine issue of material fact under the Selling factors in Section 11.24(d). In every case, the USPTO Director denied the practitioner’s request, finding the practitioner failed to make the requisite showing needed for the USPTO even to consider imposing different discipline than what was imposed in the other jurisdiction. In essence, in each one of those cases, the USPTO treated the practitioner’s response much as a district court treats a Rule 56 motion for summary judgment – the USPTO Director has found every time the respondent failed to raise any genuine issue of material fact and thus entered judgment as a matter of law imposing the same discipline against the practitioner that was imposed in the other jurisdiction.
The burden of overcoming the presumption of imposing identical discipline before the USPTO is designed to be difficult. Indeed, as long as the practitioner received legally effective notice of the prior proceeding and had an opportunity to participate, as a practical matter it is not possible for the practitioner to show any denial of due process or “infirmity of proof.” Furthermore, the USPTO generally applies an irrebuttable presumption that whatever sanction was good enough for the other jurisdiction is good enough for the USPTO. Consequently, it is difficult indeed to raise a “grave injustice” argument sufficient to generate any genuine issue of fact. The USPTO Director readily acknowledges the difficulty practitioners face in attempting to raise a challenge under Section 11.24(d). See In re Portner, No. D2011-44, at 5 (USPTO Dir. June 22, 2012) (“The Office reiterates that, to prevent the imposition of reciprocal discipline, Respondent is required to demonstrate that he meets one of these [section 11.24(d)] factors – a task that is particularly difficult for Respondent because he stipulated to the facts” in the prior proceeding). In reality, it will take quite an unusual set of circumstances for a practitioner to make an adequate showing required by Section 11.24(d).
If “the USPTO Director determines there is no genuine issue of material fact” regarding the factors set forth in Section 11.24(d)(1)(i)-(iv), then “the USPTO Director shall enter an appropriate final order.” 37 C.F.R. § 11.24(d)(2). “Appropriate” in this context means a written order imposing “identical” discipline to what was imposed by the other jurisdiction. See id. at § 11.24(d)(1).
If, and only if, the USPTO Director determines there is a genuine issue of material fact under one or more of the Selling factors—which has never happened in six years—the matter is still not resolved. All that means is the USPTO Director “shall” refer the matter to a hearing officer for an initial decision on whatever fact issue the Director found to exist. 37 C.F.R. § 11.24(d)(2)(i)-(ii). In the end, the practitioner could still find themselves subject to the same discipline in the USPTO that was imposed by the other jurisdiction.
It should be apparent that in light of the near impossibility of overcoming a reciprocal sanction in the USPTO, the question of which jurisdiction disciplines the practitioner first can be very important. Take, for example, the case of (former) patent attorney, Leonard Tachner. In re Tachner, No. D2012-30. (USPTO Dir. April 12, 2013). Mr. Tachner worked for decades as a solo patent attorney. In several separate client matters, patents expired for failure to pay maintenance fees as the result of Mr. Tachner’s employees’ failure to properly docket the deadlines. The OED Director filed a disciplinary complaint alleging Mr. Tachner engaged in a “pattern of neglect” in the management of his office, including using an unsound docketing system, inadequate staffing, and failure to supervise. Ultimately, the parties settled. Although the USPTO noted as a mitigating factor that Mr. Tachner had practiced for forty (40) years without any discipline, the sanction he received was severe – a five year suspension from practice before the USPTO.
A reciprocal disciplinary proceeding was subsequently filed against Mr. Tachner in the State Bar Court of California. In re Tachner, Case No. 13-J-12527 (Cal. State Bar Ct. Oct. 18, 2013). The California bar considered the same findings of fact and conclusions of law already determined by the USPTO. The California bar court found Mr. Tachner’s 40-year discipline-free history to be a significant mitigating factor and suspended Mr. Tachner’s state bar license for three (3) months – one-fifteenth the length of the suspension meted out by the USPTO. Since Mr. Tachner’s practice was largely in patent and trademark matters before the USPTO, the fact that California only suspended him for 90 days was truly a pyrrhic victory.
It would have been interesting to posit what would have happened if Mr. Tachner had been disciplined first by the California State Bar Court. If he received a three-month suspension in California, then, pursuant to Section 11.24, the USPTO Director would have been obligated to impose no greater than the same three-month suspension. Unfortunately for Mr. Tachner, the USPTO got to him first.
Section 11.24 provides an expedient process for avoiding duplicative disciplinary proceedings against IP practitioners who have been disciplined in another jurisdiction. While only the practitioner has standing to raise a challenge before the USPTO under Section 11.24, such challenges are easier said than done. If past history is any indication of future success, a most unusual set of circumstances will be needed if a USPTO practitioner is to prevail against “the Sandman” in a reciprocal discipline proceeding.
About the Author
Michael E. McCabe, Jr. is a patent litigator and partner with Funk & Bolton, P.A., in Baltimore, Maryland, where he chairs the Attorney Ethics and Discipline practice group. For more than a decade, Mr. McCabe has represented IP attorneys, patent agents, and law firms in matters involving the cross-section of intellectual property and legal ethics. He advises clients on risk management, loss prevention, and compliance with the USPTO’s rules of professional responsibility. In addition, Mr. McCabe represents intellectual property practitioners in OED investigations and contested matters before the USPTO. Mr. McCabe is the creator and editor of IPethics & INsights, a law blog and resource for members of the intellectual property and professional underwriting community who are interested in intellectual property ethics, IP malpractice, and attorney and agent discipline, including the latest USPTO and court decisions, news, and analysis. Mr. McCabe can be reached through his blog or by email at [email protected]. He loves baseball and is a diehard Washington National’s fan.