Monday, April 29, 2024

Conflict Draws Reciprocal Suspension

The full Massachusetts Supreme Judicial Court imposed a three-year suspension as reciprocal discipline for a sanction imposed by the United States Patent & Trademark Office

In 2019, an administrative law judge determined that Correll had violated several sections of the USPTO Code of Professional Responsibility -- 37 C.F.R. §§ 10.23(a), 10.23(b)(4), 10.23(b)(5), 10.23(c)(20), and 10.40(b)(2) -- and the USPTO Rules of Professional Responsibility -- 37 C.F.R. §§ 11.111, 11.116(a)(1), 11.505, and 11.804(d) -- by representing private parties before the USPTO while he was employed by the Federal government (as an electronics engineer for the United States Department of the Navy). The director of the USPTO subsequently affirmed the administrative law judge's decision in a final order issued in February 2021.

Other proceedings

The detailed facts of Correll's misconduct -- of his representation of private parties before the USPTO while he was a Federal government employee -- are set forth in the final order from the USPTO, as well as in two Federal court decisions, see note 4, supra, and need not be reiterated here.

Free speech

As to Correll's primary argument, in particular, that his suspension violates his First Amendment rights to free speech and association, it is true, as he argues, that he did not altogether give up his First Amendment rights when he became a Federal employee. It is equally true, however, that the government may impose certain regulations on the speech of its employees without violating the First Amendment. See Pickering v. Board of Educ., 391 U.S. 563, 568 (1968). The challenge is to "arrive at a balance between the interests [of the employee] in commenting upon matters of public concern and the interest of the [government], as an employer, in promoting the efficiency of the public services it performs through its employees." Id. In this case, Correll argues that the USPTO, and, in turn, the Federal courts, erred in engaging in that balancing test. Our role is, again, not to redo that inquiry, and it suffices to say that Correll was not disciplined -- his license was not suspended -- on the basis of the content of his speech, but rather on the basis that in representing private parties before the USPTO, he violated certain of the USPTO's disciplinary rules. Moreover, as the District Court noted, "the only prohibition on [Correll's] speech was the speech [he] exercised when representing private clients in front of the USPTO. [He] was free to speak on patent and trademark matters otherwise." Correll vs. Under Secretary of Commerce of Intellectual Prop., U.S. Dist. Ct., No. 21-898 (E.D. Va. Jan. 13, 2022).


here, although the USPTO imposed a five-year suspension, bar counsel recommended only a three-year suspension–- and noted that a term suspension of five years, in Massachusetts, is quite rare. Indeed, in matters resulting in an indefinite suspension, a respondent may seek reinstatement after five years. See S.J.C. Rule 4:01, § 18 (2) (b), as appearing in 453 Mass. 1315 (2009). With all of that in mind, the single justice reasonably imposed a sanction that was lesser than that imposed by the originating jurisdiction, here the USPTO. The three-year suspension is warranted.

Respondent had sought - and been denied - a preliminary injunction in a decision of the United States Court of Appeals for the Federal Circuit that described the conduct

Mr. Correll has been a registered patent attorney since September 12, 2000. S. App’x1 41. In September 2002, Mr. Correll became an electrical engineer for the U.S. Department of the Navy at the Naval Undersea Warfare Center of the Naval Sea Systems Command in Newport, Rhode Island. S. App’x 42, 44. At approximately the same time, Mr. Correll started a private law firm in Rhode Island and named it “K.P. Correll and Associates.” S. App’x 45. The  firm provides legal services related to patent and trademark matters, including acquisition of patents and federal trademark registrations. S. App’x 46–47.

Acting through his firm, Mr. Correll represented private clients, for pay, at the PTO while a Navy employee, filing or prosecuting 211 patent applications and 80 trademark registration applications between 2002 and October 25, 2017. S. App’x 130, 132. He did this despite receiving a reminder, as part of a PTO-distributed practitioner survey in 2003, that federal employees may not represent private clients at the PTO. S. App’x 199. Mr. Correll did not resign from federal employment until September 2018.

(Mike Frisch)

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