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Sheinbein v. U.S. Patent and Trademark Office

Posted in Opinion Commentary by Jake Ward on October 4, 2006

A Patent Practitioner May Be Found Unfit to Practice Before the USPTO Based Solely on Disbarment in Another Jurisdiction. 


(Fed. Cir. 2006, 06-1161)


The CAFC affirmed a district court judgment sustaining the decision of the USPTO that excluded Sheinbein from practice before the USPTO. 


Sheinben had been barred from practicing law in Maryland after helping his son, who was being investigated in connection with a murder, flee to Israel.  Based on this act, the Maryland Court of Appeals determined that Sheinbein had committed the criminal act of obstructing or hindering a police officer and had engaged in conduct prejudicial to the administration of justice.  Following the OED’s filing of a disciplinary complaint,Sheinbein was excluded from practice before the USPTO.


On appeal, Sheinbein argued, among other things, that the USPTO’s authority to sanction is limited to sanctions based directly on his conduct, not on findings of other jurisdictions regarding his conduct.


The court noted that the USPTO has statutory authority to exclude any person, agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established by the USPTO to govern the conduct of attorneys practicing before the Office.


One such regulation is disciplinary rule 37 C.F.R. § 10.23. This regulation provides that:

     (a) A practitioner shall not engage in disreputable or gross misconduct.
     (b) A practitioner shall not:
               (1) Violate a Disciplinary Rule.
               (2) Circumvent a Disciplinary Rule through actions of another.
               (3) Engage in illegal conduct involving moral turpitude.
               (4) Engage in conduct involving dishonesty, fraud, deceit, or misrepresentation.
               (5) Engage in conduct that is prejudicial to the administration of justice.
               (6) Engage in any other conduct that adversely reflects on the practitioner’s fitness to practice before the Office.


Thus, the CAFC held that a practitioner may be found unfit to practice based solely on his disbarment in another jurisdiction. In such cases, the court also noted that the exclusion is based on the finding of the other jurisdiction regarding the practitioner’s conduct, and not based on the conduct that resulted in the disbarment.

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