Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN THE MATTER OF: MORRIS S. BORENSTEIN RESPONDENT
Docket No. DP 91-2
April 26, 1991
Appearance for Respondent:
Morris S. Borenstein, Esq.
2 Canal Street
World Trade Center--Suite 2317
New Orleans, LA 70130
Appearance for Agency:
Robert D. Edmonds, Esq.
Office of Enrollment and Discipline
P.O. Box 15667
Arlington, VA 22215
Hugh J. Dolan
Administrative Law Judge
RECOMMENDED DECISION ON DEFAULT
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 a patent agent registered to practice before the Patent and Trademark Office (PTO) (Registration Number 29615).
Respondent has been charged with failing to diligently represent a client and failing or refusing to cooperate with the Office of Enrollment and Discipline in the United States Patent and Trademark Office (OED). The complaint dated November 26, 1991, details the two charges.
Respondent initially failed to respond to the complaint. [FN1] For his failure to file an answer, Respondent has been found to be in default. Pursuant to applicable regulation 37 C.F.R. § 10.136(d), the facts alleged in the complaint are deemed to be admitted. Respondent's submission dated April 8, 1991, and received on April 12, 1991, does not constitute an answer under 37 C.F.R. 10.136, nor is it a showing of good cause.
By failing to promptly file a petition to revive the A application, by failing to assist in an effort to revive the A * * * application despite the urgings of his client's new representative, and by failing to represent his client zealously resulting in the loss of at least 27 months of a patent's normal 17 year life if a patent is granted, Respondent engaged in unethical conduct.
In failing and/or refusing to cooperate with OED in connection with an investigation by not responding with a written statement setting forth the facts and circumstances of his conduct as it pertains to a complaint received by OED, Respondent engaged in unethical conduct.
Failure to adequately represent.
1.1 Respondent was attorney of record until April 23, 1990 in application Serial No. 000000 having a filing date of October 13, 1987, and naming * * * A * * * as inventor (the A * * * application).
1.2 Respondent was notified by an Office action dated January 7, 1988, that a response was due within three months, or on or before April 7, 1988.
1.3 Pursuant to 37 C.F.R. 1.136(a), to avoid abandonment of the A * * * application, Respondent was required to file a request for an extension of time and the appropriate fee for an extension of time together with a response to the Office action.
*2 1.4 Respondent filed or caused to be filed two requests for extensions of time, for a total of sixty days and paid the appropriate extension of time fees for an extension of time totalling two months.
1.6 Respondent did not respond to the Office action, causing the A * * * application to become abandoned on June 8, 1988.
1.7 Respondent was notified by a NOTICE OF ABANDONMENT dated August 16, 1988, that the A * * * application had become abandoned due to failure to respond to the Office action.
1.8 On or about November, 1989, more than one year after the A * * * application became abandoned, applicant A * * * authorized Seth Nehrbass, a member of the Pravel, Gambrell, Hewitt, Kimball & Krieger law firm (the Pravel firm), to seek to revive the A * * * application, and Nehrbass filed in the PTO on or about January 18, 1990, a PETITION TO REVIVE UNDER 35 U.S.C. § 133 AND 37 C.F.R. § 1.137(A) OR, IN THE ALTERNATIVE UNDER 37 CFR § 1.137(b) AND 37 C.F.R. § 1.183 (Petition to Revive), wherein Nehrbass stated that A * * * contacted Nehrbass regarding the status of the A * * * application and authorized Nehrbass to contact the PTO regarding the application; further Nehrbass learned from the PTO that the A * * * application was abandoned; further, A * * * called Respondent, who told A * * * that he had just heard from the PTO about two weeks earlier; further, Nehrbass then called Respondent, who told Nehrbass that personal problems were the reason why he, Respondent, could not respond to the Office action or communicate with applicant A * * * regarding the A * * * application.
1.9 To have the Commissioner consider the abandonment of the A * * * application as having been unavoidable and revive the A * * * application under 37 CFR 1.137(a), it is necessary to file a petition accompanied (i) by an adequate verified showing that the delay in prosecuting the application was unavoidable, (ii) by the proposed response to the Office action, (iii) by the petition fee required by law, and (iv) by a terminal disclaimer and fee where the petition is filed more than six months after abandonment; and further, to have the Commissioner consider the abandonment of the A * * * application as having been unintentional and revive the A * * * * application under 37 CFR 1.137(b), it is necessary to file a petition within one year of the date on which the application became abandoned accompanied (i) by a statement that the abandonment was unintentional, (ii) by a proposed response to the Office action, and (iii) by the petition fee required by law.
1.10 Respondent and Nehrbass were notified by a decision dated February 27, 1990, Exhibit 5, that the Petition to Revive was dismissed by the PTO, because, inter alia, the showing of record was inadequate to establish unavoidable delay, and the petition had not been filed within one year of the date of abandonment to permit the abandonment of the A * * * application to be considered as having been unintentional.
1.12 From June 8, 1988, the date the A * * * application became abandoned, until the date Respondent's power of attorney was revoked, Respondent did not file a petition to revive the A * * * application under 37 CFR 1.137.
1.13 A RENEWED PETITION TO REVIVE the A * * * application under 37 CFR 1.137(a) was filed on April 23, 1990, by Nehrbass after Respondent failed to file a petition to revive.
1.14 By a decision dated July 31, 1990, Nehrbass was notified that the RENEWED PETITION TO REVIVE under 37 CFR(a) was dismissed by the PTO, and that the "facts of the situation that led to the abandonment should be set forth in a statement from Mr. Borenstein."
1.15 Between August 27, 1990 and October 1, 1990, Nehrbass, acting on behalf of A * * * attempted to contact Respondent and requested Respondent, on more than one occasion, both orally and in writing, to provide a written statement of the facts that led to the abandonment of the A * * * application.
1.16 By letters dated August 27 and September 13, 1990, Nehrbass requested Respondent to provide a written statement setting forth the facts of the situation that led to the abandonment.
1.18 The A * * * application has not been revived as of the date of this Notice and Complaint.
Failure or refusal to cooperate.
2.1 Upon receipt by OED of a copy of the Petition to Revive, Respondent was notified in a letter, dated April 16, 1990 and sent by certified mail, return receipt requested, that the Petition to Revive warranted an investigation under 37 CFR 10.131(a), that he was requested to submit a written statement within thirty days fully and fairly disclosing all facts and circumstances pertaining to the allegations contained in the communication; and further, Respondent was reminded in the letter dated April 16, 1990 of his duty to cooperate with any investigation under 37 CFR 10.131(a) and 10.23(c)(16). The letter dated January 30, 1989 was addressed to Respondent at 3624 Magazine Street, New Orleans, LA 70115, the address of which separate notice was last received by the Director of OED from Respondent.
2.2 Respondent did not respond to the letter dated April 16, 1990 and neither the letter nor the return receipt card were received by OED.
2.3 By letter dated June 4, 1990, a SECOND REQUEST FOR COMMENTS was sent by certified mail, return receipt requested, to Respondent again notifying him that a written statement was requested within thirty days fully and fairly disclosing all facts and circumstances pertaining to the allegations contained in Petition to Revive; and further, Respondent was again reminded in the letter dated June 4, 1990 of his duty to cooperate with any investigation under 37 CFR 10.131(a) and informed that consideration would be given to charges of a violation of 37 CFR 10.23(c)(16) of the PTO Code of Professional Responsibility if a written statement is not filed.
*4 2.4 Respondent did not respond to the letter dated June 4, 1990 and neither the letter nor the return receipt were received by OED.
2.5 By letter dated September 13, 1990, a THIRD REQUIREMENT FOR INFORMATION was sent by certified mail, return receipt requested, to Respondent again notifying him that a written statement was requested within thirty days fully and fairly disclosing all facts and circumstances pertaining to the allegations contained in the Petition to Revive; and further, Respondent was again reminded in the letter dated September 13, 1990 of his duty to cooperate with any investigation under 37 CFR 10.131(a) and 10.23(c)(16) of the PTO Code of Professional Responsibility if a written statement is not filed.
2.6 Respondent did not respond to the letter dated September 13, 1990 and neither the letter nor the return receipt card were received by OED; and further Respondent has failed and/or refused to provide a written statement pertaining to the Petition to Revive received by OED.
The conduct set forth above and in paragraphs 1.1 through 1.19 of Count 1 and 2.1 through 2.6 of Count 2 of the Complaint and Notice constitutes professional misconduct which justifies suspension under Part 10, Title 37, Code of Federal Regulations, to wit: 37 C.F.R. 10.23(c)(16); and/or 37 C.F.R. 10.24(a). An indeterminate suspension is appropriate because there has not been a record developed respecting all of the circumstances surrounding the professional misconduct. The Respondent's default and lack of an adequate answer has prevented such inquiry. Respondent's representations of illness, marital difficulties and that he is undergoing therapy (without verification), when considered with the serious misconduct found, warrant the prompt removal of this individual from the rolls until it can be affirmatively shown on his behalf that he can function responsibly in the profession. The Respondent may show cause in the future respecting why he failed to respond in a timely fashion and furnish some explanation for the misconduct set forth and found under the two charges. Until he does so his name should be removed from the rolls. [FN2]
That Morris S. Borenstein, 2 Canal Street, World Trade Center, Suite 2317, New Orleans, LA 70130, Patent and Trademark Registration Number 29615, be suspended for an indeterminate period from practice as a patent attorney before the United States Patent and Trademark Office, and that the facts and circumstances of this proceeding be fully published in the Patent and Trademark Office's official publication.
The action is recommended under the provisions of Section 32 of Title 35, United States Code, and Section 1.348, Title 37, of the Code of Federal Regulations.
FN1. This Tribunal's Order issued on April 2, 1991, sets forth the background as follows:
The docket file in this matter reflects that the complaint was filed and service made on Respondent's address as it appeared in the attorney registration records of the Patent and Trademark Office on November 26, 1990. On January 31, 1991, a Default Order was entered against Respondent based upon the failure to timely respond. Agency Counsel subsequently advised that the Complaint and Notice of Proceeding had been returned as undeliverable. The March 13, 1991, affidavit of the then Agency Counsel details the difficulties encountered in attempting to locate and serve this member of the patent bar. (It is the responsibility of bar members to notify the Patent and Trademark Office of their current mailing address.) In any event, it is apparent that Respondent has been on notice of this proceeding since shortly after the February 1, 1991, mailings were sent to three different addresses and he has not yet answered.
While the initial Default notice may be considered as premature by the Patent Office, I would not agree. Mailing to the last known address furnished by a practitioner, is and should be good and sufficient service. Whether or not it is received, in situations such as this where Respondent is responsible for the non-receipt, failure of actual receipt should not be a defense or cause for delay.
In any event he is separately in default for failure to file an answer, as contemplated by the regulations, based upon the February 1, 1991, reissuance of the Complaint. Respondent will have 10 days to April 12, 1991, to Show Cause why this matter should not be disposed of as proposed in the Order of January 31, 1991, which is attached.
The tardily filed request for an extension of the time in which to answer, based on the unsupported claim of Rubella is denied. A medical certificate or other independent support is required as well as a timely request.
As was observed in A & B Commercial and Loper, Docket Numbers 8114-109 to 112, Order of Dismissal (July 19, 1988), Counsel may not wait until the time for filing is due to expire and then presume that an extension will be issued, without an adequate showing of cause or excuse.
It is elementary that a lawyer who relies on the filing of a request for extension of time in lieu of meeting a filing date does so at his/her peril. If such a request is denied after the due date, there is no automatic extension while it is pending. To hold otherwise would allow counsel to manipulate the due date.
Sheeran v Merit Systems Protection Bd, 746 F.2d 806, 807 (CA FC 1984) [corrected citation].
The parties may not arrogate to themselves the functions of this Tribunal in managing the processing of these proceedings.
This proceeding is at the point of adjudication not of initiation!
FN2. Subsequent to the preparation of the above disposition Respondent submitted a physician's billing reflecting an office visit on March 30, 1991, which contains a diagnosis of "Polyarthritis due to virus infect". In his transmittal Respondent states: "At the time of my appointment the doctor diagnosed my condition as possibly Rubella". This tardy submission adds nothing of significance to the record. It neither explains nor excuses the default upon which this disposition is based. That we sexagenarians are of times afflicted with general arthritic-like pains and symptoms is not to be questioned. However, such generalized complaints and assertions do not constitute a physical disability. The Respondent's failure to cure his default is but an extension of the derelictions that have brought him before this Tribunal.