Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
CAMERON WEIFFENBACH, DIRECTOR, OFFICE OF
ENROLLMENT AND DISCIPLINE
v.
F. WESLEY TURNER, RESPONDENT
Disciplinary Proceeding D89-6
March 26, 1991
Douglas B. Comer
Deputy Commissioner of Patents and Trademarks
MEMORANDUM OPINION AND FINAL ORDER
BACKGROUND
*1 F. Wesley
Turner ("Turner") appeals to the Commissioner of Patents and
Trademarks under 37 CFR § 10.155 from
an Initial Decision of the Chief Administrative
Law Judge of United States Department of Commerce (Hon. Hugh J. Dolan), in a
disciplinary proceeding under 37 CFR Part 10.
The Director of the
Office of Enrollment and Discipline ("OED") charged Turner with three
Counts of misconduct:
Count 1
In holding himself out
as a member of a partnership by using the firm name "Turner, Murray & Whisenhunt" on letterhead in a
manner implying or stating that a partnership exists or existed, and that
members of said partnership were authorized to practice law in the state of New
York, Respondent did fail and/or refuse to exercise his duty to refrain from
conduct involving dishonesty, fraud, deceit or misrepresentation which is
required of those registered to practice before the PTO.
Count 2
In failing or refusing to
communicate with and return telephone calls to clients and/or failing or
refusing to promptly provide patent searches for which Respondent had been
retained by clients, Respondent engaged in unethical conduct.
Count 3
In failing and/or
refusing to cooperate with the Office of Enrollment and Discipline in
connection with investigations by [not] responding to questions posed to him,
Respondent engaged in unethical conduct.
The Director requested
that Turner be suspended or excluded from further practice before the Patent
and Trademark Office. The ALJ's Initial Decision was rendered on October 2,
1990, in which the ALJ ordered that Turner be barred from further practice
before the Patent and Trademark Office.
The ALJ held in the
Initial Decision that Turner never filed a proper Answer. Also, no hearing
before the ALJ was ever held. The Initial Decision noted at 8:
This is essentially a
default decision. For more than three years the Respondent has avoided direct
and timely responses to the serious questions which have been raised.
The following excerpt from the Initial Decision at 1-2 describes
the course of proceedings before the ALJ:
This is a disciplinary
proceeding initiated under 35 U.S.C. §
32 and 37 C.F.R. Part 10 against
a patent agent [Footnote omitted.] registered to practice before the Patent and
Trademark Office (PTO) (Registration No. 26,059). In the Complaint and Notice
of Proceeding under 35 U.S.C. 32 dated
October 20, 1989, Respondent is charged with three counts of misconduct. The
complaint was returned by the U.S. Postal Service and a second copy was
remailed to Respondent on November 22, 1989. Since an answer was not filed
within the required 30 days, Respondent was found to be in default by order of
the Administrative Law Judge on November 28, 1989. At the request of the
Director, the order was withdrawn on December 5, [1989] based upon the failure
to effect service. The copy of the complaint also was returned and service was
made by publication in the Official Gazette for four weeks starting on January
30, 1990 and ending on February 20, 1990.
*2 On March 6,
1990, Respondent called Counsel for the Director and requested a copy of the
complaint. Another copy of a complaint was mailed by the Director to Respondent
on March 9, 1990. On April 4, 1990, Respondent requested a 30-day extension of
time to file an answer. On April 5, 1990, Respondent filed a preliminary answer
denying all counts. On April 9, 1990, the unopposed request for an extension
was granted by the undersigned and Respondent was given until May 10, 1990 to
respond indicating that "[n]o further extension should be expected!"
On May 21, 1990,
Respondent filed an answer which was rejected together with the two prior
answers in an order dated June 18, 1990. The three answers failed to include
the information required by 37 C.F.R. part 10 and in particular, 37 C.F.R.
§ 10.136. Respondent was given until
July 16, 1990 to file a proper answer and
advised that no further extensions would be granted.
On July 16, 1990, Respondent requested
copies of returned correspondence referred to in the order of June 18, 1990 and
indicated that he would "continue [his] response after September 3-7,
1990" because he would be traveling from July 16th - September 3, 1990.
This response failed to comply with 37 C.F.R. § 10.136(d) and in an order dated July 25, 1990 the specific
allegations in the complaint are deemed to be admitted and considered proven.
In his order of July 25, 1990, the ALJ stated that the parties
would have 30 days to file their respective pre-adjudication arguments, and
would thereafter have an additional 15-days to file any rebuttal. Also, the ALJ
stated that the record will close for the Initial Decision as of October 1,
1990.
In response the ALJ's
Order, the Director timely filed his pre-adjudication arguments, while Turner
filed only a fourth "Answer" after business hours on October 1, 1990.
Regarding Turner's submission, the Initial Decision at 8 n. 7, stated:
After business hours on
October 1, 1990, a fourth filing titled "Answer To A Complaint And Notice
of Proceeding Under 35 U.S.C. 32" was received by facsimile in the Office
of the Administrative Law Judge. It does not constitute an Answer to the
Complaint under the applicable regulation 37 C.F.R.
§ 10.136 and, as such, it is rejected.
The filing is principally a complaint that the Agency has not furnished him
with copies of his own records which he apparently has not maintained. He has
not shown any follow up nor made a request to this Tribunal to obtain these
documents for over three months. Nor did he file exception to the Order of July
25, 1990 which set the schedule for processing this matter. His untimely
request for a further extension is denied.
The telephone log of
this office reflects that Respondent placed calls to the Office of the
Administrative Law Judge on September 28 and October 1, 1990. The
Administrative Law Judge was not in the office on September 28. On October 1,
the calls were returned by a staff member. Respondent should have been and was
made aware that "ex parte" conversations are avoided and all
communications relating to the substance of the proceeding should be by written
submission and placed in the record. The most recent filing by Respondent
contains no basis for deferring the decision in this matter.
*3 The ALJ made the following findings and conclusions of law
(Initial Decision at 7-8):
Findings
1. F. Wesley Turner
(Respondent) is an agent registered to practice (Registration No. 26,059) before the Patent
and Trademark Office (PTO).
(Charge 1)
2. During May, 1985,
Respondent used letterhead of the law firm of Turner, Murray and Whisenhunt.
3. The law firm of
Turner, Murray and Whisenhunt does not exist.
4. During May, 1985,
Respondent knowingly held himself out as a partner of a non-existent law firm.
5. During May, 1985,
Respondent knowingly held himself out as a partner of a non-existent law firm
to several clients for whom he agreed to perform a patentability search and
prepare a patent application.
(Charge 2)
6. Respondent did not
promptly conduct a patentability search for the Schwartzes.
7. Respondent did not
promptly return telephone calls from the Schwartzes.
8. When he failed to
perform the search, respondent did not return the full amount of the retainer
fee to Dr. Schwartz.
9. Respondent did not
promptly return telephone calls from Mr. Armel.
10. When he failed to perform the search,
Respondent did not promptly return the retainer fee to Mr. Armel.
(Charge 3)
11. Respondent failed to
return the completed questionnaire from the Office of Enrollment and
Discipline.
Conclusions of Law
(Charge 1)
1. Respondent's
letterhead referring to a non-existent law firm violated 37 C.F.R. §
10.35(b).
2. Respondent's use of
the name of a non-existent law firm was conduct involving dishonesty, fraud,
deceit and misrepresentation in violation of 37 C.F.R. § 10.23(b)(4).
3. Respondent's knowingly
giving false and misleading information about the status of his law firm to two
clients in connection with conducting a patent search and preparing a patent
application violated 37 C.F.R. §
10.23(c)(2)(i).
(Charge 2)
4. Respondent's failure
to promptly perform a patent search for the Schwartzes, to promptly return
their telephone calls and to promptly return their retainer fee violated 37
C.F.R. § 10.84.
5. Respondent's failure
to promptly perform a patent search for Mr. Armel, to promptly return his
telephone calls and to promptly return his retainer fee violated 37 C.F.R.
§ 10.84.
(Charge 3)
6. Respondent's willful
failure to promptly return to the Office of Enrollment and Discipline a
completed questionnaire violated 37 C.F.R. §
10.23(c)(16).
General
7. The three charges are
supported by clear and convincing evidence. 37 C.F.R. § 10.149.
The ALJ also concluded
(Initial Decision at 9) that Turner violated disciplinary
rules DR1-102(A)(4) and DR2-102(C) of the Code of Professional Conduct of the
American Bar Association.
OPINION
*4 Chapter 1, Part
10, of Title 37 of the Code of Federal Regulations governs the conduct of
practitioners before the Patent and Trademark Office, and was first promulgated
in 1985. The effective date of all provisions of Part 10 was March 8, 1985. See
50 Fed.Reg. 5158 (Feb. 6, 1985). Since Turner's conduct underlying all three
Counts occurred subsequent to the effective date of Part 10, review will be
limited to solely the applicable provisions of Part 10. Thus, whether Turner's
conduct also separately violates certain disciplinary rules of the Code of
Professional Conduct of the American Bar Association is not at issue. Since the
ALJ applied the applicable provisions of 37 CFR Part 10, his further discussion
of DR1-102(A)(4) and DR2-102(C) of the Code of Professional Conduct of the
American Bar Association was necessary.
A decision in this appeal
is based on the administrative record before the ALJ. 37 C.F.R. § 10.155(b) Accordingly, submission of new
evidence not previously before the ALJ is inappropriate.
Of the twenty-six
Respondent's Exhibits (1 through 26) submitted by Turner in connection with this appeal, only eight are
part of the administrative record before the ALJ--Respondent's Exhibit 1
(included in Government's Exhibits 1 and 3); Respondent's Exhibit 2 (included
in Government's Exhibit 4); Respondent's Exhibit 3 (Respondent's submission of
May 21, 1990, to the ALJ); Respondent's Exhibit 6 (same as Government's Exhibit
18); Respondent's Exhibit 8 (same as Government's Exhibit 15 before the ALJ);
Respondent's Exhibit 11 (same as Government's Exhibit 9); Respondent's Exhibit
23 (same as portions of Government's Exhibit 9); and Respondent's Exhibit 25
(same as Government's Exhibit 19).
For purposes of this
appeal, only Respondent's Exhibits 1, 2, 3, 6, 8, 11, 23, and 25 have been
considered. All other Respondent's Exhibits are not a part of the
administrative record before the ALJ; accordingly, they have been sealed and
have not been considered. In contrast, all of the Government's Exhibits were
properly before the ALJ and thus have been considered.
There is no legitimate
reason to reopen the disciplinary proceeding in order to have the ALJ consider
Turner's new submissions. The submissions are not of the "newly
discovered" type which might justify granting of new trials, and Turner
has not demonstrated that the evidence could not have been submitted earlier
and also would have been of significance.
Nevertheless, the
following comments pertain to Respondent's Exhibits 9 and 10 which are both
discussed in papers submitted on appeal from the ALJ's decision.
Respondent's Exhibit 9 is
a copy of a photograph of Turner's office
[[submitted to show that it would be clear to new clients that Turner
was a sole practitioner]; it does not help Turner's cause. Nothing requires
that all partners in a law firm practice at the same address, and the charge
against Turner stems from improper use of letterhead, not from any allegation
that the office setting caused a false impression.
*5 Respondent's
Exhibit 10 is a copy of United States Patent No. 4,485,152, in which only
Turner's name is identified in the place for Attorney, Agent, or Firm, and
which is allegedly customarily shown to new clients[[submitted to show
indication to new clients that Turner was a sole practitioner]. It also does
not help Turner's cause. On the face of any issued patent, at the location
designated for identification of Attorney, Agent, or Firm, an attorney or agent
of record is free to list his or her own name rather than the name of the
partnership in which he or she practices. Also, whatever the patent shows, the
use of letterhead which falsely suggest the existence of a non-existent
partnership is nevertheless improper.
A. Count 1, Non-Existent Partnership
Turner has not denied
that on or about May 9, 1985, he prepared a retainer agreement subsequently executed by Dr. Sidney
Schwartz and his son Paul ("Schwartzes"), on a letterhead which bears
the firm name Turner, Murray & Whisenhunt. The agreement refers to services
to be rendered including a patentability search and preparation of a patent
application. The copy of the retainer agreement in the record (Government
Exhibit 1) reflects that the wording "Attorneys at Law" immediately
follows the name Turner, Murray & Whisenhunt on the letterhead.
Turner also has not
denied that in May, 1985, he prepared a retainer agreement subsequently
executed by Mr. Armel, on a letterhead which bears the firm name Turner, Murray
& Whisenhunt. The agreement refers to services including a patentability
search and preparation of a patent application. The copy of the retainer
agreement in the record (Government Exhibit 2) reflects that the wording
"Attorneys at Law" immediately follows the name Turner, Murray &
Whisenhunt on the letterhead.
Turner has not denied
that the Schwartzes pursuant to their retainer agreement gave Turner a personal
check, dated May 8, 1985, made out to Turner, Murray & Whisenhunt as an
advance payment, and that the check was cashed and endorsed with the firm's
name and Turner's name (Government Exhibit 3). Turner also has not denied that
pursuant to Mr. Armel's retainer agreement, Mr. Armel gave Turner a check made
out to Turner, Murray & Whisenhunt as an advance payment, and that the
check was cashed and endorsed with the firm's name and Turner's name (Government Exhibit 5).
The ALJ found that during
May, 1985, Turner used letterhead of the law firm of Turner, Murray and
Whisenhunt. The retainer agreement with the Schwartzes and the retainer
agreement with Mr. Armel constitute direct and more than sufficient evidence in
support of that finding. In addition, the designation of Turner, Murray &
Whisenhunt as the payee on the checks made by the Schwartzes and by Mr. Armel,
and the endorsement of those checks by the firm name, give further support for
the ALJ's finding.
Turner admits that there
is no business relationship between himself and Messrs. Murray and Whisenhunt
(Answer, May 21, 1990, page 5). That admission manifestly supports the ALJ's
finding that the law firm of Turner, Murray & Whisenhunt does not exist.
*6 The ALJ found
that during May, 1985, Turner knowingly held himself out as a partner of a
non-existent law firm; the ALJ also found that during May, 1975, Turner
knowingly held himself out as a partner of a non-existent law firm to several
clients for whom he agreed to perform a patentability search and prepare a
patent application. The two retainer agreements, one with the Schwartzes and
one with Mr. Armel, together with Turner's admission that there is no business
relationship between he and Messrs. Murray and Whisenhunt, constitute more than
sufficient evidence in support of those findings. In addition, the designation
of Turner, Murray & Whisenhunt as the payee on the checks made by the Schwartzes and by Mr.
Armel, and the endorsement of those checks by the firm name, given further
support for those ALJ findings.
Turner incorrectly argues
that his use of the letterhead at issue is protected by the first amendment
right to freedom of speech under the first amendment (Br. 1, January 10, 1991).
Protected commercial speech under the first amendment does not include that
which is false, deceptive, or misleading. Zauderer v. Office of Disciplinary
Counsel of the Supreme Court of Ohio, 471 U.S. 626, 638 (1985); the letterhead
involved in this case falsely suggests that Turner practices in a non-existent
partnership.
Furthermore, in the
administrative record there is a firm resume (Government Exhibit 15) furnished
by Turner to Dr. Schwartz (Initial Decision at 3 n. 2). The resume indicates
that Turner is in a law partnership with Messrs. Murray and Whisenhunt, and
that the firm includes two other associate attorneys and a support staff of
four non-lawyers. Turner has not denied giving Dr. Schwartz the firm resume.
Nor has he taken a definite position on why the resume was given to Dr.
Schwartz. Rather, he argues (Br. 5, November 9, 1990):
It is possible that
Respondent shared Respondents private and personal conception of the type of
persons and an organization that Respondent had thought could be of value to
the local business interest, i.e., a 1983-84 association/organizational that
included Robert Murray and Fred Whisenhunt among others. Please Note:
Respondent's Exhibit 8 (which appears to be a duplicate
of the PO's Exhibit 15). [Emphasis in original].
The argument is without merit. There is no evidence in the record
to support the notion that Turner informed Dr. Schwartz that the information on
the firm resume is only a failed plan. Insofar as Turner refers only to
possibilities, it is equally possible that the firm resume was given to Dr.
Schwartz to establish a false impression that Turner practiced in a
partnership.
Turner argues that the
firm resume "lacks credibility as a possible or probable 1985 publication
since the foreign associate list does not describe the foreign patent
correspondents used by the Respondent-Appellant in 1985" (Br. 4 January
10, 1991). The argument is without merit. While the firm resume lists a number
of foreign associates in other countries, whether Turner actually used any of
the listed foreign associates in 1985 is not at issue. Nothing requires that
the list include every foreign associate with which Turner has an on-going
business relationship, and nothing prevents Turner from sending work to someone
not appearing on the list. Furthermore, there is nothing in the administrative
record to show whether none of the listed foreign associates was used by Turner
in 1985.
*7 In any event,
Turner was not charged with improper distribution of the firm resume. The
resume evidence is consistent with and thus supports the ALJ's findings
concerning Turner's improper use of letterhead.
Turner argues that
throughout the period 1982-1986, he held himself out as a sole practitioner by consistently using the
following name and business address for all patent matters when corresponding
with clients and various Patent and Trademarks Offices including the United
States Patent and Trademark Office (Br. 5, January 10, 1991):
F. Wesley Turner
125 Wolf Road, 5th
Floor
Executive Law Offices
503-8
Albany, New York 12205
The argument has no merit, because the charge relates to false
suggestion stemming from Turner's improper use of letterhead, and not how Turner
signed correspondence, or how his address was designated. In addition, the
administrative record does not include all of Turner's correspondence in patent
matters from 1982-1986.
Based on the foregoing
evidence, the ALJ correctly concluded that: (1) Turner's letterhead referring
to a non-existent law firm violated 37 C.F.R. § 10.35(b); (2) Turner's use of the name of a non-existent law firm
was conduct involving dishonesty, fraud, deceit and misrepresentation in
violation of 37 C.F.R. § 10.23(b)(4);
and (3) Turner's knowingly giving false and misleading information about the
status of his law firm to two clients in connection with conducting a patent
search and preparing a patent application violated 37 C.F.R. § 10.23(c)(2)(i).
Section 10.35(b) of Title 37, Code of
Federal Regulations, states:
(b) Practitioners may
state or imply that they practice in a partnership or other organization only
when that is the fact.
Section 10.23(b)(4) of
Title 37, Code of Federal Regulations, prescribes that a practitioner shall
not:
Engage in conduct
involving dishonesty, fraud, deceit, or misrepresentation.
Section 10.23(c)(2)(i)
prohibit a practitioner from:
Knowingly giving false
or misleading information or knowingly participating in a material way in
giving false or misleading information, to [a] client in connection with any
immediate, prospective, or pending business before the Office.
Turner cites a discussion
of the Court of Appeals of New York, New York Criminal and Civil Courts Bar
Association v. Jacoby, 61 N.Y. 2d 130, 460 N.E.2d 1325 (1984). He argues that
under Jacoby, the use of an institutional name composed of surnames is not
representing that there are lawyers bearing those names and admitted in a
particular jurisdiction, or even that there are lawyers in the institution who
bear such surnames, admitted to practice anywhere.
Jacoby is not apposite to
this case. It does not involve an administrative regulation such as 37 C.F.R.
§ 10.35(b) which prescribes that a
practitioner state or imply that he is in
a partnership only when that is a fact. Moreover, while there was an actual
partnership of lawyers in Jacoby by the Institutional name, no such partnership
exists under the facts of this case. The issue here is whether the
institutional name appearing on Turner's letterhead, Turner, Murray &
Whisenhunt, identifies a real partnership, not whether there are persons named
Murray and Whisenhunt, and if so, where they are admitted to practice law.
*8 In contrast,
Florida Bar v. Hastings, 523 So.2d 571
(Fla.Sup.Ct.1988) is more pertinent. Florida Bar is a disciplinary case
involving DR 2-102(C), a disciplinary rule of the former Code of Professional
Responsibility of the Florida Bar, which provides:
A lawyer shall not hold
himself out as having a partnership with one or more other lawyers or
professional corporations unless they are in fact partners.
The respondent in Florida Bar, Hastings, stipulated that by
practicing law under the firm name of Hastings and Goldman without actually
having a partnership relation with Mr. Goldman insofar as ownership was
concerned, he violated DR 2-102(C).
Turner points out that in
the retainer agreements he signed his own name without also printing the
institutional name before his signature. Though that is true, the charges stem
from the use of improper letterhead, not from representations
arising from how Turner's signature was signed. That the firm name does not
again appear immediately before Turner's signature does not negate the false
suggestion arising from the improper letterhead that Turner practices in a
partnership.
Turner argues that the
designation of Turner, Murray & Whisenhunt as the payee on checks from Dr.
Schwartz and Mr. Armel and his endorsement of those checks by the firm name may
well be for reasons other than noting that Turner was in a partnership. It is
not necessary, however, to guess, or to have findings on the precise reasons,
why the firm name was designated as the payee and why the checks were so
endorsed. Nevertheless, Turner's endorsement of the checks is consistent with
the false impression, if any, that Turner practices in a partnership, conveyed
through improper use of letterhead, and does not undermine the ALJ's findings.
Turner's Answer of May
20, 1990, stated that "[Turner] advised referrals that [he] was a sole
practitioner who was registered to practice before the US Patent and Trademark
office in regard to patent matters." Turner argues that his Answer of May
20, 1990, also stated that he specifically pointed out to new referrals that
the surnames Murray and Whisenhunt merely reflected knowledgeable contacts in
Arlington, Virginia. Turner also argues that his Answer of May 20, 1990,
indicated that he frequently shared with new referrals the information that
Messrs. Murray and Whisenhunt were only acquaintances who agreed to work with Turner in being
supportive at their discretion of Turner's patent activities on a case-by-case
basis.
Turner does not assert
that he specifically informed either Dr. Schwartz or his son, or Mr. Armel,
that he was a sole practitioner. Turner also does not assert that he
specifically informed either Dr. Schwartz or his son, or Mr. Armel, that
Messrs. Murray and Whisenhunt were not in any partnership with Turner. What
Turner does assert is with respect to new referrals as a group. Even as to new
referrals as a group, however, Turner submitted no evidence to show that he
customarily explained that he was a sole practitioner or that Messrs. Murray
and Whisenhunt were merely acquaintances, not partners. Even if there were such
evidence, the improper use of letterhead in the particular instances of the
Schwartzes and Mr. Armel suggests that on those two occasions Turner departed
from any such customary practice.
*9 Turner argues
that the administrative record includes no evidence that any client has ever
been actually misled. The argument is without merit. First, 37 C.F.R. § 10.35(b) prohibits conduct on the part of
the practitioner falsely stating or implying that he practices in a
partnership, without regard to whether a client actually relied on that
misinformation. Similarly, a violation of neither 37 C.F.R. § 10.23(b)(4) nor 37 C.F.R. § 10.23(c)(2)(i) requires actual reliance by a
client on false or misleading information originating from a practitioner.
Thus, even if Turner otherwise informed
the Schwartzes and Mr. Armel that he is a sole practitioner, the use of a
letterhead suggesting the existence of a non-existent partnership is
nevertheless a violation of the regulations. And if actual reliance is required
for establishing a violation of the regulations, Turner's improper use of
letterhead supports a rebuttable presumption that there was such reliance.
Turner has submitted no evidence to rebut the presumption.
B. Count 2, Unzealous Representation
Section 10.84 of Title 37
of the Code of Federal Regulations states:
§ 10.84 Representing a client zealously.
(a) A practitioner
shall not intentionally:
(1) Fail to seek the
lawful objectives of a client through reasonably available means permitted by
law and the Disciplinary Rules, except as provided by paragraph (b) of this
section....
(2) Fail to carry out a
contract of employment entered into with a client for professional services,
but a practitioner may withdraw as permitted under § § 10.40, 10.63, and 10.66.
(3) Prejudice or damage
a client during the course of a professional relationship, except as required
under this part.
(b) In representation
of a client, a practitioner may:
(1) Where permissible,
exercise professional judgment to waive or fail to assert a right or position
of the client.
(2) Refuse to aid or
participate in conduct that the practitioner believes to be unlawful, even
though there is some support for an argument that the conduct is legal.
The charge of Count 2
pertains to Turner's efforts, or lack thereof, in providing the patentability
search as noted in the retainer agreement with the Schwartzes and also the
patentability search as noted in the retainer agreement with Mr. Armel. The
facts involving the case of the Schwartzes, as stated by the ALJ, are as
follows (Initial Decision at 4-5):
[Turner] entered into a
retainer agreement with the Schwartzes on May 9, 1985 and was paid $500 in
advance for conducting a patentability search and $250 towards the preparation
of a patent application. (Govt.Exh. 1, pg. 3, Item A). After waiting eight
weeks without hearing from Turner, Dr. Schwartz called Turner's office and left
a message with Turner's secretary, who promised that Turner would return the
call. Turner did not return that call nor several other calls from the
Schwartzes. Finally, when Turner answered the telephone himself, he promised
the Schwartzes that he would complete the patent search. In late September
1985, Turner reported to the Schwartzes that he had completed the search and
that the results looked favorable for obtaining a patent. However, he said that
the Schwartzes must wait one more week.
*10 Dr. Schwartz
called again several times but was told each time that [ [Turner] was in Washington, D.C. After
calling on October 5, 1985 and being told that [Turner] was in Washington, Dr.
Schwartz visited [Turner's] office in Albany minutes later and found [Turner]
there. At that time, [Turner] admitted that he had done no work on the patent
search and at the demand of Dr. Schwartz, gave him a check for $500.
In this appeal, Turner does not deny that in the five month period
from May to October, 1985, he did not perform a patentability search for the
Schwartzes and he does not deny that the Schwartzes were nevertheless charged
$250.
The facts involving the
case of Mr. Armel, as stated by the ALJ, are as follows (Initial Decision at
5-6):
[Turner] entered into a
retainer agreement with Mr. Jack Armel on May 16, 1985 and was paid $1,500 in
advance for conducting a patentability search and preparing a patent
application (Govt.Exh. 2). Between May 16th and June 12, 1985, Mr. Armel made a
number of telephone calls to [Turner], who did not answer and so Mr. Armel left
messages with the answering service. [Turner] did not return any of Mr. Armel's
calls.
On June 12, 1985, Mr.
Armel sent [Turner] a letter terminating [Footnote omitted] his services and
requesting return of his retainer (Govt.Exh. 6). However, after receiving some
material from [Turner], who advised him that the
search had been ordered, Mr. Armel authorized [Turner] to complete the search
in a letter dated June 14, 1985 (Govt.Exh. 7). In a response to OED [ [Office
of Enrollment and Discipline] dated October 6, 1986, [Turner] provided a copy
of a letter dated June 18, 1985, which he claims forwarded a search report to
Mr. Armel (enclosure to Govt.Exh. 9.) Mr. Armel denied ever receiving the
report but mentioned that he had sued [Turner] in the City Court of Albany for
the return of the retainer fee (Govt.Exh. 11). [Turner] did not make an
appearance in court and Mr. Armel was awarded a default judgment of $1,560.20
on December 9, 1985. [Footnote omitted.]
The ALJ noted that the OED had inquired Turner about the report
but that Turner did not respond to the inquiry (Initial Decision at 6). The ALJ
stated that there is no evidence to establish that Turner actually mailed the
report on June 18, 1985, and concluded that Turner never sent the report
(Initial Decision at 6).
Turner argues he did
fully perform the professional services Mr. Armel contracted for (Br. 10,
January 10, 1991), but points to noevidence in the administrative record which
would show that the ALJ erred in concluding that Turner never sent the search
report to Mr. Armel. There is no reason to question the ALJ's finding in that
regard.
Turner argues that the
retainer agreement with the Schwartzes did not give the Schwartzes any right to
manage or to supervise Turner's time and work schedule.
The argument has no merit, because the charge against Turner does not depend on
any such right possessed by either the Schwartzes or Mr. Armel. Though Turner
may have certain discretion in the day to day scheduling of his work, he
nevertheless must comply with the requirements of 37 C.F.R. § 10.84, which he has not done.
*11 Turner further
argues that the retainer agreement with the Schwartzes stated that the specific
time and length of service within the work periods provided by the agreement is
determined on the basis of mutual satisfaction of the parties. That argument
also has no merit, because regulatory provisions governing the conduct of
practitioners cannot be waived by clients. The PTO establishes the level of
acceptable conduct of practitioners, and the standard is the same for all
practitioners alike. The fact that some clients may demand less from their
attorney and/or agent does not mean the practitioner need not meet the standard
of conduct as required under PTO regulations. Moreover, it is evident that
neither the Schwartzes nor Mr. Armel were satisfied with how Turner handled
their work.
Turner points out that in
the retainer agreement signed by the Schwartzes, the patentability search was
associated with a marker placed in a column indicating "1985" next to
a column indicating "1986-92." On that basis, Turner appears to make
the argument that the Schwartzes had agreed that Turner can delay providing a
search report to the Schwartzes until the end of 1985. To the extent that Turner actually makes that
argument, it is rejected. As already discussed, notwithstanding any private
agreement, Turner nevertheless must conform his conduct to the requirements of
law, specifically PTO regulations governing the conduct of practitioners before
the PTO. Moreover, the construction Turner would advocate is based on a
tortuous and strained characterization of ambiguous markings and associations,
not on any wording of the agreement; under the familiar principle of contra
proferentum in contract interpretation, the agreement should be interpreted in
favor of the Schwartzes, i.e., that the Schwartzes did not agree that Turner
could delay providing the search report until the end of 1985. The marking
associated with "1985" need not be construed to mean that anything
less than prompt service is expected of Turner by the Schwartzes.
Turner argues:
As the PTO knows--as
long as diligence is shown (First-in First-Out) based on the normal and routine
activities of an individual patent applicant including his patent agent in
accord with present U.S. Interference Law there is no harm suffered by a U.S.
patent applicant regarding the order of patent processing.
Turner's argument fails
to note the existence of 37 C.F.R. § 10.84
concerning zealous representation without regard to any separate showing on
whether a client has been harmed. This case concerns violation of PTO administrative regulations governing the
conduct of practitioners, not recovery for damages. It may be that in a civil
action for malpractice, harm to the client must be separately shown and even
quantified, but this is not such a case.
To the extent that Turner
is arguing that he has been diligent in the handling of matters for the
Schwartzes and for Mr. Armel, in light of his workload and the sequence in
which the work was received, Turner did not submit to the ALJany evidence
tending to establish such diligence. Furthermore, because Turner did not argue
to the ALJ that he had been diligent, he may not make that argument in this
appeal, especially when there is no evidence in the record pertaining to
Turner's workload, docket entries, and time schedule during the period in
question.
*12 Lastly, lack
of diligence can be prejudicial to an applicant who ends up a junior party in
an interference where the applicant may need to establish diligence from a time
prior to the senior party's effective filing date up to the junior party's own
filing date. See e.g., Bey v. Kollonitsch, 806 F.2d 1024, 1026, 231 USPQ 967,
968 (Fed.Cir.1986).
In any event,
representing to the Schwartzes that the patentability search has been done when
in fact the search was not performed cannot be made any less culpable by an
argument that Turner had been diligent.
Turner argues that he had
not received proper notice about Mr. Armel's civil action against him in Albany's City Court.
But this is not the forum to litigate whether Turner indeed had proper notice.
Until the City Court's default judgment against Turner is overturned, it is
what it is, a judgment in favor of Mr. Armel in connection with the service
agreement underlying Count 2 of this disciplinary proceeding. It is further
noted that Turner has not asserted that he had made any attempt to overturn the
City Court's default judgment on the basis of inadequate notice.
For the foregoing
reasons, these ALJ findings are more than sufficiently supported by the
evidence: (1) Turner did not promptly conduct a patentability search for the
Schwartzes; (2) Turner did not promptly return telephone calls from the
Schwartzes; (3) when Turner failed to perform the search, he failed to return
the full amount of the retainer fee to the Schwartzes; (4) Turner did not
promptly return telephone calls from Mr. Armel; and (5) when Turner failed to
perform the search, he did not promptly return the retainer fee to Mr. Armel.
The ALJ's conclusion that
Turner violated 37 C.F.R. § 10.84 is
also correct. The evidence of record more than sufficiently establish that
Turner failed to achieve the lawful objectives of the Schwartzes and Mr. Armel
through reasonable available means. Those objectives include expectations of
(a) timely preparation of patentability search reports; (b) prompt return of
telephone inquiries; (c) to be informed of truthful information; and (d) prompt
return of the retainer fee.
Even if Turner could not
have himself performed the patentability searches in a timely manner, he could
have informed his clients and arranged for other competent professionals to
perform the work. In that regard, it is noted that though Messrs. Murray and
Whisenhunt are known to Turner to be competent professionals who have agreed to
support Turner at their own discretion on a case-by-case basis, Turner
evidently did not request their assistance. There also can be no excuse for
informing a client that work has been done when it has not been performed.
C. Count 3, Failure to Answer OED's Questionnaire
Section 10.23(c)(16),
Title 37, Code of Federal Regulations, prohibits willful refusal to reveal or
report knowledge or evidence to the OED pursuant to an investigation under 37
C.F.R. § 10.131.
*13 The facts
involving the charge of failing to cooperate with OED, are stated in the
Initial Decision, is as follows:
OED asked Respondent a
number of questions about his conduct in a questionnaire dated June 25, 1987
(Govt.Exh. 12). Respondent was given one month to answer (Govt.Exh. 12, page
1). Respondent acknowledged receipt of the questionnaire in his letter dated
August 3, 1987 and promised that the questionnaire
would be completed and forwarded shortly (Govt.Exh. 13).
Since no response was
received, on January 11, 1988, OED sent a follow-up letter with another copy of
the questionnaire by certified mail requiring a response within 15 days or else
it would be grounds for disciplinary action (Govt.Exh. 14). The return mail
receipt bore Respondent's signature and was dated January 22, 1988 (Govt.Exh.
14, last page). No response was received by OED (Director's Brief).
The OED's questionnaire was sent to Turner in June, 1987, to
obtain more information about the misconduct with which Turner had been
charged. Thus, the questionnaire elicits information pursuant to an
investigation under 37 C.F.R. § 10.131.
Moreover, the ALJ is correct in stating (Initial Decision at 6):
The detailed
questionnaire was necessary because Respondent's answers in his three prior
letters were considered to be incomplete (Govt.Exh. 12, page 1). Additional
information was required to resolve the complaints against Respondent.
Before the ALJ, Turner
generally asserted (Answer, May 20, 1990) that his prior correspondences
answered the inquiries of the OED. In this appeal, Turner does not challenge
ALJ's finding that he never returned a completed OED questionnaire, but
continues to assert that the questionnaire has been answered by prior
correspondences. Insofar as Turner believes he had already provided the information sought by the questionnaire,
he should have either (1) reiterated the information in an answer to the
questionnaire, or (2) pointed out specifically where in prior communications
the information sought by particular inquiries of the questionnaire had already
been provided. There is no evidence in the record tending to show that Turner
has made any such effort.
Though 37 C.F.R. § 10.23(c)(16) requires willful intent in
refusing to provide information to the Director of OED, the ALJ properly could
infer willful intent from Turner's persistent conduct over a course of three
years in failing to return an answered questionnaire to the OED. Accordingly,
the ALJ's conclusion that 37 C.F.R. §
10.23(c)(16) has been violated is supported by the record.
D. Decision
Turner will be suspended
from practice before the Patent and Trademark Office in all cases (patents,
trademarks, and others). This suspension against Turner is imposed under 35
U.S.C. § 32 (as to Patent cases) and
the Commissioner's authority to suspend attorneys from practice in trademark
and other cases. See Small v. Weiffenbach, 10 U.S.P.Q.2d 1898, 1905 (Comm'r
Pat.1989).
*14 Considering
all relevant factors (37 CFR § 10.154)
supported by the record, it is apparent that there are no extenuating
circumstances. The violations,
particularly those of Counts 1 and 2, are serious. Accordingly, the following
s3anctions are hereby imposed, running concurrently:
Count 1 (non-existent partnership)
Suspended from practice
in all matters before the Patent and Trademark office for a period of two
years;
Count 2 (unzealous representation)
Suspended from practice
in all matters before the Patent and Trademark Office for a period of two
years;
Count 3 (failure to cooperate with OED)
Suspended from practice
in all matters before the Patent and Trademark Office for a period of six
months.
ORDER
Upon consideration of the
entire record, it is
ORDERED that, effective immediately upon
entry of this order, F. Wesley Turner, of Muskogee, Oklahoma, whose OED
Registration No. is 26,059, is suspended from practice before the Patent and
Trademark office in all cases (patent, trademark, and other cases), for a
period of two years and it is
FURTHER ORDERED that
Turner is given limited recognition under 37 C.F.R. § 10.9(a) for a period of thirty (30) days from the date of this
ORDER in which to conclude any pending matters before the Patent and Trademark
Office.
Cameron Weiffenbach
Director
By: John Raubitschek
Associate Solicitor
By: John Raubitschek
Associate Solicitor
MOTION TO CORRECT THE MEMORANDUM OPINION AND
FINAL ORDER
I call to your attention
the following clerical g clerical errors in the MEMORANDUM OPINION AND FINAL
ORDER in the above-referenced proceeding.
1. At page 9, in the
last sentence of the first incomplete paragraph, between the words "was" and
"necessary", the word "not" is missing.
2. At page 13, in the
middle paragraph, the expression "nonexistent" is deleted.
3. At page 28, in the
second sentence of last complete paragraph on the page, "establish"
should be changed to "establishes".
4. At page 31, in the
last sentence of the second paragraph under
"Decision", "sanctions" should be changed to
"sanctions".
Entry of an appropriate
erratum is recommended.
Respectfully submitted,
Cameron Weiffenbach
Director
By: John Raubitschek
Associate Solicitor
20 U.S.P.Q.2d 1103
END OF DOCUMENT