Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
INITIAL DECISION ON DEFAULT
*1 IN THE MATTER OF: EDMUND FRANCIS BARD RESPONDENT
Docket No. DP 91-9
August 22, 1991
Appearance for Respondent:
Edmund Francis Bard III
Houston, Tx 77096
Appearance for Agency:
Robert D. Edmonds, Esq.
U.S. Patent and Trademark Office
Office of Enrollment and Discipline
P.O. Box 15667
Arlington, Va 22215
Hugh J. Dolan
Administrative Law Judge
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 an attorney registered to practice before the Patent and Trademark Office (PTO) (Registration Number 20094).
Respondent has been charged with failing or refusing to cooperate with the Office of Enrollment and Discipline in the United States Patent and Trademark Office (OED), and professional misconduct. The complaint dated April 30, 1991, details the two charges.
Respondent has failed to respond to the complaint. For his failure to file an answer, Respondent has been found to be in default by Order dated June 13, 1991. Pursuant to applicable regulation 37 C.F.R. § 10.136(d), the facts alleged in the complaint are deemed to be admitted.
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 professional misconduct.
Respondent engaged in professional misconduct by handling legal matters which he was incompetent to handle, by failing to associate himself with someone who was competent to handle such legal matters, by handling legal matters without adequate preparation, by neglecting one or more legal matters entrusted to him, by failing to seek the lawful objectives of his client by being punctual in fulfilling professional commitments, and by damaging a client in the course of a professional relationship.
Failure to Cooperate
1. The PTO received a complaint from a former client of Respondent, alleging that Respondent failed to file a response to an Office Action in the client's pending patent application. The former client alleged that Respondent billed the client for work he did not perform. Because the complaint suggested possible violation of the Disciplinary Rules warranting an investigation, OED mailed a letter via first class certified mail, dated March 21, 1989, investigating the complaint, addressed to Respondent at his address then of record, 6565 W. Loop South, Houston, TX 77401. A certification card signed by M. Bard and showing a delivery date of March 29, 1989, was returned to the PTO.
2. No response to the letter was received by OED.
3. OED mailed a second letter dated November 7, 1989, to the Respondent at his address of record in OED in 1989, 6565 W. Loop South, Suite 710, Houston, TX 77401, in accordance with 37 C.F.R. 10.11(b). The second letter was returned to OED marked "Forwarding Time Expired". Accordingly his name was removed from the Register of Attorneys and Agents, effective December 12, 1989.
*2 4. After publication of Respondent's removal from the Register, Respondent requested Reinstatement and submitted a "Data Sheet" dated February 10, 1990, listing the same address for both his home and office address: 5439 Darnell, Houston, TX 77096. Respondent was reinstated on February 27, 1990.
5. OED mailed, by certified mail, a third letter concerning its investigation to the Respondent dated June 14, 1990, enclosing a copy of the March 21, 1989 letter. This second letter was addressed to Respondent at 5439 Darnell, Houston, TX 77096. A certified mail receipt card with a partially legible signature, believed to be Doug Mayer, shows delivery made on June 20, 1990.
6. No response to the third letter was received by OED.
7. OED mailed, by certified mail, a fourth letter concerning its investigation to the Respondent dated September 28, 1990. This fourth letter, containing all the documents previously mailed June 14, 1990, was addressed to Respondent at 5439 Darnell, Houston, TX 77096. The certification card was not returned to OED.
8. The fourth letter added a $280.00 dishonored check to the matters under investigation. This check, drawn on the account of Respondent, was returned to the PTO because of insufficient funds. The check was dated "22 June 1990", and it was imprinted with an address of 6565 W. Loop South, Suite 710, Houston, TX 77401. This check was submitted to pay the issue fee in a patent application. The check was signed by Robert C. Bard, a person not registered to practice before the Patent and Trademark Office in Patent cases.
9. No response to the fourth letter was received by OED.
11. The findings set forth in paragraph 8 of Count 1 above, including the dishonored check of $280.00 are restated herein by reference.
12. On December 13, 1988, the PTO mailed to Edmund F. Bard, 5439 Darnell, Houston, Texas 77096, a notice of allowance on patent application for a condom invented by Jo Ann Ferguson and requiring an issue fee be paid in the amount of $280.00. Over six months later, on July 6, 1989, the PTO mailed a notice of abandonment of the Ferguson patent application for failure to pay the issue fee.
13. On July 21, 1989, Respondent filed a petition to revive the abandoned Ferguson application, citing 37 C.F.R. 1.137, which applies to reviving applications abandoned for failure to respond to Office actions, as distinguished from 37 C.F.R. 1.316, which applies to applications abandoned for failure to pay the issue fee on time. In the Respondent's statement accompanying the petition, he said that he prepared the issue fee check, but that it was placed in the file and forgotten.
14. The petition was dismissed on August 11, 1989. Although the petition stated that two checks were enclosed, one check to pay the issue fee and the other check to pay the petition fee, only one of these checks was enclosed. The check for $310.00 that was enclosed with the petition was credited to pay the issue fee because the issue fee was increased to $310.00, effective April 17, 1989. Referring to the omitted fee, Respondent was told: "THE PROPER FEE MUST BE FILED IN THE PATENT AND TRADEMARK OFFICE ON OR BEFORE March 13, 1990, TO PREVENT A POSSIBLE LOSS OF RIGHTS UNDER 37 C.F.R. 1.316(C)."
*3 15. On June 26, 1990, the Office of Deputy Assistant Commissioner for Patents in the PTO received a letter from Respondent Edmund F. Bard. The letter explained that Respondent retired approximately two years ago due to recurring vision impairment. Respondent stated that he is assisted in his practice by his son, "who is an attorney who is not an experienced patent attorney." In the paragraph bridging the second to last and last pages of the letter, Respondent writes: "... applicant's attorney does accept full blame for the fact that the file on this case was wrongly transferred to storage before he responded to the subject communication, and that an inordinate delay has therefore occurred before he has sent a replacement check to the Patent Office.
16. An Affidavit, subscribed and sworn on June 22, 1990, from Robert C. Bard, Respondents son, was submitted in connection with a financial problem affecting the issuance of the patent application. In that Affidavit, Robert C. Bard swore:
He is the son of Edmund F. Bard [Respondent] and he is an attorney licensed to practice in the State of Texas.
Respondent, Edmund F. Bard, closed his offices and retired from actual practice in September, 1988. [OED represents that it has no record that Respondent notified OED of Respondent's address change in 1988 or 1989, pursuant to this obligations under 37 C.F.R. 10.11(a)].
Respondent's retirement in 1988 was caused by "recurring impairment of vision". Respondent is apparently unable to read communications from the PTO. Robert C. Bard had to read the Notice of Allowance in the patent application several times aloud to Respondent before he (Respondent) understood the same.
Robert C. Bard has undertaken to assist Respondent in completing work including the preparation and mailing of all papers which Respondent signs, [including papers in the prosecution of the patent application which is the subject of the Affidavit]. Robert C. Bard acknowledges that he has taken over full control of Respondent's bank accounts.
Although Respondent had instructed Robert C. Bard to pay the issue fee in the allowed patent application, Robert C. Bard represents that he neglected to do so. Respondent asserts that he first became aware of the neglect when Robert first told Respondent after the statutory period for paying the issue fee had expired. Respondent hand drafted a Petition to Revive and instructed Robert C. Bard to prepare and transmit checks for $280 and $310 with the Petition. Robert C. Bard mailed the Petition to Revive more than four months after he [Robert] discovered his failure to pay the issue fee. [The PTO has a record of receipt of the $310 check, but no record of receipt of that first $280 check.]
By the month the Petition was Dismissed, Robert C. Bard's own law practice "had grown to a point where it had completely absorbed and diverted his attention away from his father [Respondent's] business affairs."
*4 The matter was not addressed again until after the applicant called Respondent [nine months later], to determine when she could expect to receive her patent.
17. In Respondent's June 26, 1990 letter, filed more than 18 months after the patent application was allowed and more than 12 months after the Notice of Abandonment was sent to Respondent, the Respondent renewed his request that the PTO accept late payment of the issue fee. The concluding paragraph of the letter stated:
"There has never been any intention on the part of the applicant to abandon the application. Inasmuch as application's attorney is only partly responsible for the series of delays in this matter, it is requested that the Commissioner waive the rules, accept the enclosed late payment of the issue fee, and that the subject application be passed to issue."
This letter was accompanied by the check on Respondent's bank account for $280, signed by Robert C. Bard, which was less than the amount that respondent was instructed to send. The fee was tendered late, the fee was insufficient and the check tendered in payment of the fee was dishonored because of insufficient funds in the account.
18. The letter was treated as a renewed petition to accept late payment of the issue fee under 37 C.F.R. 1.316(c). The petition was dismissed on August 20, 1990. The text of the petition dismissal was apparently written on the assumption that the $280.00 dishonored check was good. Respondent was told that the issue fee payment amount be sent was insufficient by $30.00. Respondent was also told that a terminal disclaimer had to be filed within two months of the August 20, 1990, petition dismissal, accompanied by payment of a terminal disclaimer fee and that the total fee due was $61.00.
19. Over five months later, on January 22, 1991, Respondent submitted a renewed petition under 37 C.F.R. 1.316(c), which claimed to be "... in compliance with the Letter from the Deputy Assistant Commissioner ..." This renewed petition was accompanied by the applicant's two terminal disclaimers, each disclaiming a period of 12 months, one dated October 3, 1990, and the other dated January 18, 1991. The petition was also accompanied by an Affidavit from Robert C. Bard that he prepared and signed the check submitted with the renewed petition, that he prepared copies of the terminal disclaimer, that he presented the terminal disclaimer to the applicant and observed her sign it, and that he (Robert C. Bard) assembled all these materials and mailed them to the PTO on October 3, 1990. There is no record of the PTO having received anything on the Ferguson patent application in October, 1990. Nothing in the affidavit suggests that the Respondent exercised any supervision or control over the patent prosecution activities of his son, an attorney not licensed to practice in patent cases.
20. Respondent's petition was dismissed. The petition was late. A dishonored check was tendered to pay the issue fee which had not been made good. In the meantime fees had increased on November 5, 1990, and these fees were now the ones due on an application where the fees had not been completely paid. As a result of the delay caused by Respondent's failure to make good on the fees previously due, the terminal disclaimer fee increased to $50.00, the issue fee increased to $525.00 and the fee for processing returned checks is $50.00. Against this $625.00 due, a credit of $61.00 has been allowed for the money tendered with the letter filed on June 26, 1990, leaving a balance due by May 13, 1991, of $564.00.
*5 21. The maximum period of patent protection for applicant's condom has been and continues to be reduced by virtue of the failure of the Respondent to fully pay the fees due on time and to provide required documents within time periods provided by the PTO. The number of months of patent protection that the patent applicant must disclaim is now increased to 19 months. The patent applicant has accordingly been damaged by the Respondent's neglect.
Edmund Francis Bard engaged in professional misconduct in violation of 37 C.F.R. § 10.23(b)(1) by:
(a) handling legal matters which he was incompetent to handle in view of his physical impairment, 37 C.F.R. 10.77(a),
(b) failing to associate himself with someone competent to handle such legal matters in view of his employment of Robert who is not registered and is inexperienced, 37 C.F.R. 10.77(a),
(c) handling legal matters without adequate preparation in view of his failed revival attempts and erroneous invoking of Rule 137 in petitioning for revival, 37 C.F.R. 10.77(b),
(d) neglecting one or more legal matters entrusted to him in view of his failure to pay the patent issue fee, 37 C.F.R. 10.77(c),
(f) damaging the client in the course of their professional relationship in view of Ms. Ferguson having to disclaim at least nineteen months of the terminal portion of her patent, 37 C.F.R. 10.84(3),
(g) 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, 37 C.F.R. 10.131(b), 10.24, 10.23(c)(16),
(h) failing to answer the complaint, 37 C.F.R. 10.136(a-d).
Respondent's conduct in failing to cooperate with and respond to questions and requests propounded by the Office of Enrollment and Discipline as set forth in paragraphs 1 through 9 of Count 1 constitutes professional misconduct which justifies suspension or exclusion 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).
Respondent's conduct in handling one or more legal matters which he knew or should have known that he is not competent to handle, without associating himself with another practitioner who was competent to handle them, handling one or more legal matters without preparation adequate in the circumstances, neglecting one or more legal matters entrusted to Respondent, failing to seek the lawful objectives of his client by being punctual in fulfilling professional commitments and/or by damaging a client in the course of a professional relationship, as set forth in paragraphs 11 through 21 of Count 2, constitutes professional misconduct which justifies suspension or exclusion under Part 10, Title 37, Code of Federal Regulations, to wit: 37 C.F.R. 10.77, 10.84(a) and/or 10.84(a)(3).
*6 This is indeed a tragic case. Physical incapacity in the nature of vision impairment has obviously incapacitated this practitioner to the serious detriment of his clients. He can no longer perform his stewardship. He has not associated with a qualified patent practitioner and he has not gracefully withdrawn. The bottom line is that he can be steward no longer.
That the name Edmund Francis Bard III, 5439 Darnell Houston, Texas 77096 Patent and Trademark Registration Number 20094 be stricken from the rolls of attorneys admitted to practice before the United States Patent and Trademark Office; That he be excluded from such practice and that the facts and circumstances of this proceeding be fully published in the Patent and Trademark Office's official publication.
This Initial Decision is rendered pursuant to the provisions of Section 32 of Title 35, United States Code, and Section 10.154 of Title 37 Code of Federal Regulations.
Harry F. Manbeck, Jr.
Commissioner of Patents and Trademarks
Room 906, PK 2
Washington, D.C. 20231