Commissioner of Patents and Trademarks
Patent and Trademark Office (P.T.O.)
IN RE B. PETER BARNDT, RESPONDENT
Disciplinary Proceeding Docket No. D92-3
September 10, 1992
Attorney for Respondent
Jay M. Cantor, Esq.
Attorney for the Director
James T. Carmichael, Esq.
Douglas B. Comer
Acting Commissioner of Patents and Trademarks
*1 B. Peter Barndt
(respondent) appeals [FN1] to the Commissioner from an Initial Decision [FN2]
of the Administrative Law Judge (ALJ) entered on June 25, 1992, in the
above-identified disciplinary proceeding. In taking the appeal, respondent
seeks review only of the sanction imposed by the ALJ.
The comprehensive opinion
and findings of fact by the ALJ appear as an appendix to this memorandum
opinion and order. Familiarity with the ALJ's opinion and findings of fact are
presumed.
Declarations Submitted with the Appeal
Attached to respondent's
appeal brief are copies of declarations signed by two individuals. [FN3] An
appeal to the Commissioner from an initial decision of the ALJ must take place
on the record made before the ALJ, not some new record made on appeal for the
first time. [FN4] Accordingly, the two declarations have not been considered
and are returned herewith.
Introduction
The ALJ determined that a
sanction was appropriate in this case. Specifically,
the ALJ ordered that respondent be suspended for a period of five (5) years.
However, the ALJ found that respondent was remorseful for the harm he had
caused. Accordingly, the ALJ suspended execution of the last four years of the
five-year suspension provided respondent meets certain conditions.
On appeal, respondent
contends that he should not be required to serve any suspension. Respondent
further contends that the Commissioner should order that the files of this
disciplinary proceeding be maintained in confidence. [FN5] For reasons which
follow, the decision of the ALJ is affirmed and respondent's confidentiality
request is denied.
Background
The record reveals that
in September of 1987, respondent approached the Colonial Clinic, Spokane,
Washington, and requested "assessment and treatment services for a
drinking problem." [FN6] A treatment plan was developed. Respondent
"completed this comprehensive program in May of 1988." [FN7]
After May of 1988,
respondent engaged in what he admits was unprofessional conduct. The ALJ's
findings of fact reveal that a * * * patent application became abandoned in
March of 1989, [FN8] when respondent did not reply to a Patent and Trademark
Office (PTO) action entered in December of 1988. [FN9] Respondent thereafter
offered to draft a response to the PTO action, even though the application was abandoned. [FN10]
Finally, in forwarding the December PTO action to * * *, respondent concealed
the date the action was mailed. [FN11] Respondent also concealed other
date-identifying information on the action. [FN12]
The ALJ's findings also
reveal that a PTO "Ex parte Quayle" action [FN13] in connection with
a * * * application was entered in November of 1988 with a response being due
in January of 1989. [FN14] Respondent did not timely respond to the Quayle
action and * * * application became abandoned. [FN15] Respondent admitted that
he "failed to notify Mr. * * * later on that his case would go abandoned
if further action were not taken." [FN16]
*2 In connection
with a * * * patent application, respondent received a notice of allowance and
issue fee due which had been mailed in November of 1988. [FN17] A requirement
was also made by PTO that drawings be corrected. [FN18] Respondent failed to
make the required drawing corrections and did not pay the issue fee. [FN19]
Accordingly, the * * * patent application became abandoned.
In March of 1989,
respondent left Spokane, Washington, to assume a patent attorney position at TI
in Dallas, Texas. [FN20] According to the record, respondent has abstained from
alcohol since completing the recovery program at Colonial Clinic. The ALJ
found, correctly, that respondent has shown remorse for his actions. [FN21]
Copies of letters in the file of this disciplinary proceeding indicate that respondent has
contacted his non-TI clients and is making some effort at restitution. [FN22]
It is well established
that the Commissioner is primarily responsible for protecting the public from
unprofessional behavior of practitioners and for oversight of the bar
practicing before PTO in patent cases. Kingsland v. Dorsey, 338 U.S. 318
(1949). Determining an appropriate sanction is, therefore, a matter largely within
the discretion of the Commissioner, taking into account the matters mentioned
in the rules, [FN23] and applying appropriate burdens of proof. [FN24]
Respondent does not
contend that the Director failed to establish his case by clear and convincing
evidence. Indeed, respondent admitted all allegations in the complaint.
Respondent's defense is not that he did not do what the Director charged.
Rather, respondent maintains that he should not be suspended under the
circumstances. The ALJ determined that a suspensionand a period of probation
was an appropriate sanction in this case. [FN25]
The ALJ's determination
was entirely appropriate and is supported by substantial evidence in the
record. The evidence is that respondent is a recovering alcoholic. Respondent
sought, obtained, and successfully completed treatment in May of 1988.
Thereafter, during the December 1988 through March 1989 time period, respondent
committed the unprofessional acts in question. During this same time period,
respondent sought and obtained employment with TI.
The record shows that TI offered respondent employment sometime around February
of 1989 and respondent accepted employment "during the last two weeks of
February." [FN26] There is some evidence that the effects of alcoholism continue
even after completion of successful treatment, [FN27] and Gokee is of the
opinion that this is "the case with ... [respondent]." [FN28]
However, respondent never established Gokee's qualifications on the record.
Likewise, respondent failed to establish, even by a preponderance of evidence,
let alone by clear and convincing evidence, that his unprofessional actions
were alcohol related. The record reveals that at the time of the unprofessional
acts, respondent successfully convinced TI to hire him as a patent attorney. In
short, respondent has not shown that the ALJ erred or otherwise abused any
discretion in imposing the sanction, or that he should receive "no
suspension" in connection with the events involved in this case.
*3 Respondent
presents an argument that a suspension will have an adverse impact on TI. This
argument has been considered only to the extent that it is based on material in
the record before the ALJ and without consideration of the declarations
mentioned in note 3, supra. Respondent's argument can be made every time an
individual working for a corporation, law firm, or Government agency is
sanctioned. If TI believes that respondent is a valuable employee, TI
presumably will make every effort to retain respondent in an appropriate
position [FN29] during the period of his suspension and probation.
Publication of Decision and Sanction
Respondent requests that
the decision in this matter not be published. The request is denied. The ALJ
determined that the facts and circumstances of this matter should be made
public. [FN30] Respondent's argument is (appeal brief, page 6):
Furthermore, there
should be no publication of the facts and circumstances of this proceeding at
this time in order to avoid compromise of Respondent's position in his present
supervisory position.
Respondent's argument fails to overcome the provisions of 37 CFR
§ 10.159(c) (1991), and provides no
legitimate basis for the Commissioner to exercise any discretion within the
scope of § 10.159(c) to order these
particular files maintained confidential. The fact that TI employees working
for, or reporting to, respondent may learn of the facts and circumstances here
involved is but a natural consequence of what has occurred.
Decision
For the foregoing reasons,
as well as those given by the ALJ, the initial decision of the ALJ is affirmed.
Order
Upon consideration of
respondent's appeal and the record (except to the two declarations returned
herewith), it is
ORDERED that effective
October 13, 1992, respondent, B. Peter Barndt, of Plano, Texas, is hereby
suspended from practice before the Patent and Trademark Office for a period of
five (5) years, and it is
FURTHER ORDERED that
execution of the last four (4) years of the period of suspension is suspended
provided that during that last four (4) years respondent shall perform all
patent associated work under the supervision of his named supervisor and that
respondent commit no further violations of the PTO Code of Professional
Responsibility, and it is
FURTHER ORDERED that this
memorandum opinion and order, accompanied by the initial decision of the ALJ,
be published and that an appropriate notice appear in the Official Gazette.
Notice of Restriction on Activities of
Suspended Practitioner
Respondent's attention is
directed to 37 CFR § 10.158 (1991)
concerning the restrictions on a practitioner suspended from practice before
PTO.
Reconsideration and Appeal Rights
Any request for
reconsideration of this decision must be filed and served within twenty (20)
days of the date of entry of this memorandum opinion and order. 37 CFR § 10.156(c) (1991). Any request for
reconsideration mailed to the PTO must be addressed as follows and a copy must
also be served on the attorney for the Director:
*4 Douglas B. Comer
Acting Commissioner of
Patents and Trademarks
Crystal Park II, Suite
906
U.S. Patent and
Trademark Office (P.T.O.)
Washington, D.C. 20231
Any request hand-delivered to the PTO must be hand-delivered to
the Office of the Commissioner, in which case the service copy for the attorney
for the Director shall be hand-delivered to the Office of Enrollment and
Discipline.
If a request for
reconsideration is not filed, and respondent desires further review, respondent
is notified that he is entitled to seek judicial review on the record in the
U.S. District Court for the District of Columbia under 35 U.S.C. § 32 and Local Rule 213 of the U.S. District
Court for the District of Columbia within thirty (30) days of the date of entry
of this memorandum opinion and order.
FN1. 37 CFR § 10.155
(1991).
FN2. 37 CFR § 10.154
(1991).
FN3. The two declarations are dated July 23, 1992, and were signed
by Richard L. Donaldson, General Patent Counsel and Senior Vice President of
Texas Instruments Incorporated (TI) and Richard J. Agnich, Senior Vice
President, Secretary and General Counsel of TI.
FN4. 37 CFR § 10.155(b)
(1991).
FN5. See 37 CFR §
10.159(c) (1991).
FN6. Declaration of Gokee dated January 10, 1992, page 1.
FN7. Id.
FN8. ALJ finding number 4.
FN10. ALJ finding number 9, second full paragraph.
FN11. ALJ finding number 10, first full paragraph.
FN12. ALJ finding number 10, second full paragraph.
FN13. See Ex parte Quayle, 1935 Dec.Comm'r Pat. 11 (Comm'r
Pat.1935).
FN14. ALJ finding number 16.
FN15. ALJ finding number 17.
FN16. ALJ finding number 19.
FN17. ALJ finding number 24.
FN18. Id.
FN19. ALJ finding number 25.
FN20. Request for Settlement of Complaint, dated November 27,
1991, page 1, paragraph number 4.
FN21. Initial Decision entered June 25, 1992, page 8, fourth full
paragraph under CONCLUSION.
FN22. See (1) letter to * * * dated January 8, 1992; (2) letter to
* * * of the same date; and (3) letter to * * * of the same date, all attached
to respondent's declaration dated January 10, 1992.
FN23. 37 CFR § 10.154
(1991).
FN24. 37 CFR § 10.149
(1991).
FN25. Initial Decision entered June 25, 1992, page 8, fourth full
paragraph under CONCLUSION.
FN26. OED, Exhibit 4 (attached to complaint), page 1, paragraph 1.
FN27. Gokee declaration dated January 21, 1992.
FN28. Id. at page 2.
FN29. See 37 CFR § 10.158
(1991).
FN30. Initial Decision entered June 25, 1992, page 9, second full
paragraph.
June 25, 1992
Hugh J. Dolah
Administrative Law Judge
APPENDIX TO MEMORANDUM OPINION AND ORDER
INITIAL DECISION
PRELIMINARY STATEMENT
*5 This is a
disciplinary proceeding initiated under 35 U.S.C. § 32 and the Regulations promulgated thereunder at 37 C.F.R. Part
10, against B. Peter Barndt, a patent attorney registered to practice before
the Patent and Trademark Office (PTO)
(Registration Number: 31,587).
In the Complaint and
Notice of Proceedings dated October 29, 1991, Respondent is charged with one
count of engaging in professional misconduct. The charge arose after Respondent
neglected to respond to one or more Office actions; failed to communicate or by
inadequately communicating with his client(s) about one or more Office actions
affecting their patent applications, and abandoned his clients during the
course of prosecuting their applications.
The Office of Enrollment
and Discipline seeks to have the Respondent suspended from practice before the
Patent and Trademark Office. Respondent submitted his answer to the Complaint
in which he admitted all allegations set forth in the Complaint. No hearing was
requested. The parties were to submit findings and conclusions and responses by
January 21, 1992. Pursuant to a notice of settlement discussions, the record
remained open for such filings until February 21, 1992, at which time it became
ready for decision.
CHARGE
By neglecting to respond
to one or more Office actions and by failing to communicate or by inadequately
communicating with his client(s) about one or more Office actions affecting
their patent applications, and by abandoning his clients during the course of
prosecuting their patent applications, Respondent engaged in professional misconduct.
LAW AND REGULATIONS
The Regulations state
that "[a] practitioner shall not engage in disreputable or gross
misconduct." 37 C.F.R. § 10.23(a).
Nor shall a practitioner "[e]ngage in any other conduct that adversely
reflects on the practitioner's fitness to practice before the Office." 37
C.F.R. § 10.23(b)(6). Further,
"[c]onduct which constitutes a violation of paragraphs (a) and (b) of this
section includes, but is not limited to: ... (2) Knowingly giving false or
misleading information or knowingly participating in a material way in giving
false or misleading information to: (i) the Office or any employee of the
Office." 37 C.F.R. §
10.23(c)(2)(i). Finally, the regulations state that a practitioner shall
not "[n]eglect a legal matter entrusted to the practitioner." 37
C.F.R. § 10.77(c).
FINDINGS OF FACT
1. Respondent B. Peter
Barndt is an attorney registered to practice before the United States Patent
and Trademark Office in patent cases under Registration Number 31,587.
THE * * * PATENT APPLICATION
2. Respondent filed a
patent application on behalf of the inventor, * * *, on May 6, 1988. It was
assigned Application No. * * *. An Oath and Power of Attorney in Mr. * * *'s
patent application provided Respondent with the authority and responsibility to
act on this application.
*6 3. Respondent
received a first Office action rejecting all claims directed to the * * *
patent application, mailed to Respondent on December 30, 1988, setting a
3-month shortened statutory period for response. A response to this rejection
was due on or before March 30, 1989.
4. The Respondent never
filed a response to the Office action. the application was abandoned effective
March 31, 1989, by operation of law. Respondent received a Notice of
Abandonment of the * * * patent application, mailed to the Respondent on July
31, 1989.
5. In a response dated
February 15, 1991, to an Office of Enrollment and Discipline (OED) Requirement
for Information, Respondent explained that during the period when a response to
the Office action was due:
I physically left
Spokane [Washington] on the 9th of March, and started work for a [corporation
in Texas] on March 13, 1989.
I notified some of my
clients prior to the end of February, 1989[,] in person, or by telephone that I
would be leaving Spokane and would be employed full time out of state.
6. In a response dated
July 10, 1991, to an OED Request for Comments, Respondent's specifically
addressed Mr. * * *'s patent application:
I admit that I never
filed a petition to withdraw [as attorney of record, see 37 C.F.R. § 10.40(a) ]. I further admit that I failed to
timely notify Mr. * * * that his application was going to go abandoned.
7. The Complaint contains
a chronological account of Mr. * * *'s transactions and attempted communications
with Respondent. In the middle of his complaint to OED, Mr. * * * alleged that
in August 1989, he called another Spokane attorney and was told by that
attorney where to telephone Respondent in Texas. Mr. * * * continued:
8/17/89 Talked to * *
*, he said all claims have been rejected and he will send copies out and I
should get them by Wednesday of next week. If I don't receive [them] by Friday,
I should call back.
8/28/89 Call for * * *,
he wasn't in office, left message for him to call. (he did not call).
8/31/89 Called * * *,
he says he will work on it this weekend and send it out to me on Tuesday, via
Express Mail. Should receive by about Thursday 9/7/89.
9/15/89 Called * * * he
says he will give me a phone report on Sunday afternoon and follow it up with a
written report on Monday or Tuesday of next week.
9/18/89 He didn't call
this week like [he] said he would, I called he was in class all day so would be
in and out.
9/19/89 Called in
afternoon not there, should be back in morning.
9/20/89 Finally caught
him there, gave brief report and his home phone number.
9/27/89 Called * * *,
he said I should have gotten it, so he is going to check it and call me at 8:00
a.m. tomorrow.
8. Respondent admitted to
having conversations with Mr. * * * in this time frame, but he has no
recollection or records of specific dates of conversations. However, Respondent
did recall:
*7 I admit that
I did not send the information he [Mr. * * *] requested as soon as I had first promised
it.
9. Respondent sent an
undated letter to Mr. * * * on or about October 2, 1989. Respondent wrote in
part:
Enclosed please find
copies of the Patent Office Official action and copies of the references cited
against your patent application. As I indicated to you, all claims have been
rejected by the Patent Office, mainly based upon the Grob, et al, Patent.
...
The broad concept of
your invention is disclosed in the Grob patent. However, there are several
specific features of your machine and the way it functions, which are different
than Grob. As we discussed briefly by telephone, in my opinion patentable
claims can be drafted. These claims, however, will necessarily be narrower in
scope than the original claims filed.
Respondent offered to prepare an amendment for the already
abandoned patent application for $475.00 and to review the patents, cited by
the examiner in the Office action, for an additional $50.00. Respondent never
disclosed to Mr. * * * that prosecution of the application had been closed,
effective March 31, 1989, the date of the abandonment of the * * * patent
application, based on Respondent's failure to respond to the Office action
dated December 31, 1988.
10. The "Patent
Office Official action", submitted by Mr. * * * with his complaint as
received from the Respondent with Respondent's letter, has the date of the
Office action concealed. In the original document, near the top of the first
page is: "date mailed 12/30/88". In the version Mr. * * * submitted
to OED, the quoted portion is not present and a hand printed message,
"send to * * * ", is in that same location on the page.
In the original document,
near the bottom of the last page is the hand written signature of Frederick R.
Schmidt and the hand written date, "12/30/88",
immediately above Mr. Schmidt's name and title stamp. In the version Mr. * * *
submitted to OED, the hand written signature and date are not present.
In the original document,
in the lower left corner of the last page, the following block is typed
B. Shideler:klw
12-21-88
12-29-88 [in hand
printing]
(703) 557-6518
In the version Mr. * * * submitted to OED, the quoted portion is
not present and a hand printed message, "send to * * * ", is in that
same location on the page.
11. When OED presented
the Respondent with the evidence of the original and altered Office actions,
the Respondent admitted that he had altered the Office Action, "to conceal
that the Office Action was not sent to him [Mr. * * *] when it should have
been." Mr. * * * learned about the abandonment of his patent application
from the PTO on October 6, 1989.
12. Because Respondent
did not file a petition to withdraw as counsel of record for Mr. * * * under 37
C.F.R. § § 1.36, 10.40(a) and 10.40(c),
Respondent had a duty to continue prosecution of the * * * application and
request further consideration of patentable subject matter. See 37 C.F.R.
§ 1.111.
In neglecting to timely prosecute the * * * patent application after a first
Office action, Respondent neglected a legal matter.
*8 13. By telling
Mr. * * * that his patent application had patentable subject matter which he
would prosecute for $475.00, without informing Mr. * * * that the application
had already been abandoned and that prosecution on the application was then
closed, and/or by concealing the date of the Office action on the patent
application from Mr. * * * which Mr. * * * could have used to determine that
his application was abandoned, Respondent knowingly gave false or misleading
information to the client in connection with immediate, prospective or pending
business before the Office.
14. In failing and/or
refusing to communicate with the client during the course of prosecution of a
patent application and in failing to inform the client that the patent
application had been abandoned, Respondent engaged in gross misconduct.
THE * * * PATENT APPLICATION
15. The Respondent filed
patent application on behalf of the inventor, * * * on April 4, 1988. It was
assigned Application No. * * *. The Oath and Power of Attorney in Mr. * * *s'
patent application provided Respondent with the authority and responsibility to
act on this application.
16. Respondent received an ex parte Quayle
action directed to the Belles patent application, mailed to Respondent on
November 28, 1988. The action stated that all fourteen claims in the
application were allowable. It did require that the Abstract be shortened, a
lead line be added to one figure in a drawing, and minor corrections be made to
words in the specification and in five of the fourteen claims. Two months were
allowed to complete these requirements as provided for by 35 U.S.C. § 133. A response was due on or before Monday,
January 30, 1989.
17. The Respondent failed
to respond to the ex parte Quayle action and the * * * patent application was
abandoned effective January 31, 1989. Respondent received a Notice of
Abandonment of the * * * patent application mailed to the Respondent on July
24, 1989.
18. On December 5, 1989,
* * * wrote to the PTO that he previously received a call from his attorney,
the Respondent, that his application had been "excepted" (sic,
accepted). He waited for further word and then decided to call the Respondent
on December 5, 1989. Mr. * * *s' letter stated that he called the Respondent's
office telephone and his home telephone and was informed that both numbers were
no longer in service. The * * *s' letter to the PTO examiner also asked the
patent examiner how he could get his (then abandoned) Patent application to be
issued.
19. Respondent commented
on the letter sent by Mr. * * *, as follows:
To the best of my
recollection[,] Mr. * * * was informed of the status of the case when the
claims were allowed. Hoever (sic), I admit that I failed to notify Mr. * * *
later on that his case would go abandoned if further action were not taken. I
did not petition to withdraw or properly notify the Office of my change of
address in this case.
*9 20. The * * *s'
patent application status, with fourteen claims which the PTO said were
allowable, remains abandoned. The records of the PTO disclose that this was the
only application that * * * submitted for on his invention.
21. Because Respondent
did not file a petition to withdraw as counsel of record for Mr. * * * under 37
C.F.R. § § 1.36, 10.40(a) and 10.40(c),
Respondent had a duty to continue prosecution of Mr. * * *s' patent
application. In neglecting to timely prosecute the * * *s' patent application
with fourteen claims which the PTO stated were allowable, Respondent neglected
a legal matter.
22. In failing to tell
the client, Mr. * * *, that his patent application would become abandoned if
the Office action requirements for issue of the patent were not addressed in
the time allowed, where the application became abandoned for failing to inform
the client that his patent application was subsequently abandoned, Respondent
engaged in gross misconduct.
THE * * * PATENT APPLICATION
23. The Respondent filed
a patent application on behalf of the inventor, * * *, on December 4, 1987. It
was assigned Application No. * * *. An Oath and Power of Attorney in Mr. * *
*'s patent application provided Respondent with the authority and
responsibility to act on this application.
24. Respondent received a
Notice of Allowance and Issue Fee Due for the patent application, allowing all
six claims in the case, mailed November 28, 1988. Respondent was required to
file new drawings on the required size paper, with unblurred lines and to pay
the issue fee of $280.00 within three months of the Notice of Allowance. See 35
U.S.C. § § 133 and 151.
25. The Respondent failed
to correct the drawings and failed to pay the issue fee and the * * * patent
application was abandoned, effective March 1, 1989. A Notice of Abandonment of
the * * * [or * * *] patent application was mailed to the Respondent on July
24, 1989.
26. Respondent stated:
With respect to Mr. * *
*'s application[,] he was notified of the status of his case when the claims
were indicated as being allowable. I failed to notify him that the case was
going abandoned if the issue fee was not paid."
27. Respondent never
filed a petition to withdraw as attorney of record in the * * * patent
application.
28. The * * * patent
application, with all of its claims, which the PTO stated were allowable, remains abandoned. The
records of the PTO disclose that this was the only application that * * *
applied for on this invention.
29. Because Respondent
did not file a petition to withdraw as counsel of record for Mr. * * * under 37
C.F.R. § § 1.36, 10.40(a) and 10.40(c),
Respondent had a duty to continue prosecution of Mr. * * *'s application. In
neglecting to timely prosecute the patent application with its claims which the
PTO stated were allowable, Respondent neglected a legal matter.
*10 30. In failing
to inform the client, Mr. * * *, of the conditions necessary to have the
allowed * * * patent application issue, which application subsequently became
abandoned for failure to comply with those conditions, Respondent engaged in
gross misconduct.
CONCLUSION
Respondent's failure to
fully communicate with one or more clients about the status of their
applications with allowed or allowable claims and/or allowable subject matter,
which failure contributed to the abandonment of the applications; Respondent's
neglect of legal matters, by failing to file one or more amendments or drawing
corrections, and/or by failing to pay one or more issue fees as required to
keep one or more patent applications that he was the attorney of record on from
going abandoned; and/or by Respondent's concealing from one or more clients that their
application had become abandoned (through Respondent's neglect); constitutes
professional misconduct which justifies suspension or exclusion under 37 C.F.R.
§ § 10.23(a), 10.23(b)(6),
10.23(c)(2)(i), and 10.77(c).
Respondent has admitted
to the facts as established by the PTO and the charge in this cases is
uncontested. By neglecting to respond to one or more Office actions and by
failing to communicate or by inadequately communicating with his clients about
one or more Office actions affecting their patent applications, and by
abandoning his clients during the course of prosecuting their patent
applications, Respondent engaged in professional misconduct.
Respondent has submitted
numerous declarations and affidavits discussing his problem with alcohol and
his efforts to make restitution to parties injured by his misconduct.
Respondent has also submitted that he is employed by a major corporation where
he has made considerable advancement in his three years and that his position
does not involve contact with the general public. His supervisor has also
declared that he will act as both a practice monitor and substance abuse
monitor of the activities of Respondent, checking on respondent's attendance at
Alcoholics Anonymous and closely monitoring his professional activities.
Contrary to Agency
assertions, I find that the Respondent does recognize the seriousness of the
charges and has demonstrated remorse for his conduct. Additionally, Respondent has shown that
through his supervised employment, he does not have the opportunity to
represent the general public in their patent applications. Nevertheless, the
unprofessional conduct cannot go unpunished. Therefore, I find that a period of
suspension from practice and an additional probationary period is appropriate
in this case.
ORDER
That B. Peter Barndt of
2221 Covington Lane, Plano, Texas whose Patent and Trademark Office
Registration is 31,587, be suspended from practice as an attorney before the
Patent and Trademark Office for five (5) years from the date of the final
action, four (4) years of that suspension period will also be suspended, on
condition that the Respondent perform all patent associated work under the
supervision of his named supervisor and that Respondent commit no further
violations of the above cited Disciplinary Rules. In such event the four (4)
years balance will then be remitted without further order or action.
*11 Respondent's
attention is directed to 37 C.F.R. § §
10.158 and 10.160 regarding
responsibilities in the case of suspension or exclusion.
The facts and
circumstances of this proceeding shall be fully published in the Patent and
Trademark Office's official publication.
This Initial Decision is
rendered pursuant to the provisions of 35 U.S.C. § 32
and 37 C.F.R. § 10.154. Any appeal of
this Initial Decision to the Commissioner must be filed in duplicate with the
Director within 30 days of the date of this Decision, as provided in 37 C.F.R.
§ 10.155.
Douglas B. Comer
Acting Commissioner of Patents and Trademarks
MEMORANDUM OPINION AND ORDER ON
RECONSIDERATION
B. Peter Barndt
(respondent) seeks reconsideration [FN1] of the decision entered September 10,
1992. In the request, respondent raises the following principal points:
1. whether RESPONDENT'S
REPLY TO DIRECTOR'S REPLY, received by the Patent and Trademark Office on
August 31, 1992, was considered in rendering the decision of September 10,
1992;
2. whether Gokee's
qualifications were improperly raised in making the decision of September 10,
1992;
3. whether the opinion
in support of the decision of September 10, 1992, improperly made a reference
to respondent "convincing" TI to hire him; and
4. whether the ALJ's
decision and the Commissioner's decision should be published.
Discussion
RESPONDENT'S REPLY TO
DIRECTOR'S REPLY was part of the file, and was considered at the time the
decision was rendered on September 10, 1992. None of the arguments presented in
RESPONDENT'S REPLY, however, were persuasive.
It is a fact that
respondent did not establish in the record Gokee's precise qualifications to
render opinions. It is also a fact that respondent accepted employment with TI
during the last two weeks of February in 1989. It is a further fact that
respondent engaged in unprofessional conduct in the same general time frame
that respondent accepted employment with TI. Thus, respondent was able to look
after his own interests (obtaining a job) while at the same general time ignore
the interests of his clients (the unprofessional conduct). Even assuming that
Gokee is qualified to give an opinion on respondent's behavior and alcoholism
in general, his letters of January 10, 1992, and January 21, 1992, fail to make
out a clear and convincing case that respondent did not know in the late 1988
to early 1989 time frame that his unprofessional conduct was wrong. Whether one
views the matter as respondent being able to "convince" TI to hire
him or as respondent simply being hired is irrelevant. The fact is that, on
this record, respondent essentially simultaneously sought employment and
committed unprofessional acts. Under the facts
of this case, and based on the material placed in the record before the ALJ by
respondent, it cannot be said that alcoholism, or the Gokee letters, should
totally excuse respondent's unprofessional acts or that respondent has shown
that the ALJ erred in entering his decision. Gokee's letters do not comprehensively
or specifically discuss respondent's simultaneous unprofessional conduct and
success in seeking employment.
*12 The request
for reconsideration repeats the argument presented in the appeal that the
decisions in this case should not be published. The request, therefore,
presents no justification for modifying the opinion of September 10, 1992, with
regard to publication.
Decision
For the foregoing
reasons, respondent's request for reconsideration is denied.
Order
Upon consideration of the
entire record, it is
ORDERED that effective
November 13, 1992, respondent, B. Peter Barndt, of Plano, Texas, is hereby
suspended from practice before the Patent and Trademark Office for a period of five (5) years, and it
is
FURTHER ORDERED that execution
of the last four (4) years of the period of suspension is suspended provided
that during that last four (4) years respondent shall perform all patent
associated work under the supervision of his named supervisor and that
respondent commits no further violations of the PTO Code of Professional
Responsibility, and it is
FURTHER ORDERED that the
memorandum opinion and order of September 10, 1992, this memorandum and opinion
on reconsideration, and the initial decision of the ALJ, be published and that
an appropriate notice appear in the Official Gazette.
Notice of Restriction on Activities of
Suspended Practitioner
Respondent's attention is
again directed to 37 CFR § 10.158
(1991) concerning the restrictions on a practitioner suspended from practice
before PTO.
Appeal Rights
Respondent is entitled to
seek judicial review on the record in the U.S. District Court for the District
of Columbia under 35 U.S.C. § 32 and
Local Rule 213 of the U.S. District Court
for the District of Columbia within thirty (30) days of the date of entry of
this memorandum opinion and order on reconsideration.
FN1. 37 CFR § 10.156(c)
(1991).
27 U.S.P.Q.2d 1749
END OF DOCUMENT