Processing All Things Federal Circuit
July 13, 2022 - Last Week in the Federal Circuit

Last Week In The Federal Circuit (July 5-8): The Case of the Moonlighting Patent Attorney

full moon blog

Precedential opinions: 1

Non-precedential opinions: 8

Rule 36: 4

Longest pending case from argument: Tris Pharma, Inc. v. Actavis Lab’ys FL, Inc., No. 21-1495 (121 days)

Shortest (non-Rule 36) pending case from argument: U.S. Aeroteam, Inc. v. United States, No. 21-2272 (26 days)

Case of the week: Correll v. Vidal, No. 22-1420

Panel: Chief Judge Moore and Judges Prost and Hughes

You should read this case if: you have a matter involving possible misconduct before the Patent and Trademark Office.

The number of attorneys practicing before the PTO has boomed with the popularity of the America Invents Act’s various adversarial proceedings before the Office. This week’s case-of-the-week serves as a reminder to attorneys appearing before the agency to keep in mind the Office’s own specific “Code of Professional Responsibility.”

This week’s case turns on the Office’s prohibition against a “former or current Federal Government employee” from “engag[ing] in any conduct which is contrary to applicable Federal ethics law, including conflict of interest statutes.” Federal law in turn prohibits federal employees from receiving “any compensation for any representational service” where “the United States is a party or has a direct and substantial interest,” including from “act[ing] as agent or attorney for anyone before any department [or] agency.”

These prohibitions came to a head in this case for the appellant, Mr. Correll, because he was an electrical engineer for the Navy who also happened to be moonlighting as a patent and trademark attorney before the PTO. The PTO Office of Enrollment and Discipline filed a disciplinary complaint against Correll, who was ultimately found to have violated the PTO’s rules and so received a 60-month suspension from practicing before the PTO. A district court rejected Correll’s request for a preliminary injunction staying that suspension while Correll sought judicial review.

The Federal Circuit affirmed. The Court rejected Correll’s argument that the government was required to show that his conduct “did or potentially could distort the government’s process” before finding he had violated the law against federal employees practicing before the PTO. The conflict-of-interest statutes contained no such requirement.

Nor was the Court convinced that Correll’s suspension violates his First Amendment freedom-of-speech and freedom-of-association rights. The Court agreed that “the government’s interest in avoiding even the appearance of impropriety outweighs the burden that Mr. Correll’s suspension has on his rights.” In that balance, the Court saw Correll’s burden as “minimal,” because he remained “free to comment on intellectual property matters in any capacity other than representing paying clients before the PTO.” The Court also rejected Correll’s First Amendment challenge because he had “willingly undertaken” the obligation to comply with PTO ethics rules—including requirements to comply with federal conflict-of-interest statutes.

Whether your practice is at the PTO, another government agency, or in court, this case is a good reminder to double check your ethics obligations—a 5-year suspension from practice is no joke!