Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
INITIAL DECISION ON DEFAULT
*1 IN THE MATTER OF: MORRIS S. BORENSTEIN RESPONDENT
Docket No. DP 91-13
August 16, 1991
Appearance for Respondent:
Morris S. Borenstein, Esq.
2 Canal Street
World Trade Center--Suite 2317
New Orleans, LA 70130
Appearance for Agency:
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 29615).
Respondent has been charged with failing to deliver a client's property, which was in Respondent's possession, and separately with failing or refusing to cooperate with the Office of Enrollment and Discipline in the United States Patent and Trademark Office (OED). The complaint dated April 26, 1991 details the two charges. Respondent initially failed to respond to the complaint.
On June 24, 1991 Respondent filed an untitled submission with an unsworn "Affidavit". The thrust of the submission is that he is encountering emotional difficulties, that he drafted but has not filed a patent application, and that he is attempting to settle this matter with the Office of Enrollment and Discipline. That submission does not constitute an answer or a showing of good cause under 37 C.F.R. § 10.136. Counsel who appears on behalf of the Agency has made no filing. Verbal inquiry of the Agency reveals that there are no settlement or other discussions, nor has Respondent proposed any settlement.
Unfortunately, this is the second default proceeding recently initiated against this practitioner. The earlier case, an Initial (mistitled Recommended) Decision on Default, was issued on April 26, 1991 and is pending before the Commissioner of Patents. Neither this Tribunal nor the Patent and Trademark Office of the United States operates a refuge for ill or disabled Patent Counsel. The public must be protected from the delinquent tendencies that this practitioner has now repeatedly demonstrated.
By not responding to Mr. Hunter, and by not delivering to that client as requested, property in Respondent's possession to which Mr. Hunter is entitled to receive, Respondent has engaged in unethical conduct.
In failing and/or refusing to cooperate with OED in connection with an investigation by 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.
1.1 Harry R. Hunter initially employed an individual, James B. Lake, to conduct a patent search respecting Mr. Hunter's invention and Mr. Hunter paid Mr. Lake a total of $565.00.
*2 1.2 By letter dated January 30, 1987, Respondent informed Mr. Hunter that Respondent had become associated with Mr. Lake, and that Respondent wished to arrange a meeting with Mr. Hunter to discuss the results of a patent search which had arrived.
1.4 By check number 105 dated February 9, 1987, Mr. Hunter paid Respondent $100.00 as a down payment for a draftsman's fee. Respondent acknowledged the same by a receipt.
1.5 By check number 106 dated March 16, 1987, Mr. Hunter paid Respondent $100.00 "for pat.[ent] prep.[aration]". Respondent issued a receipt for payment of the money for drafting an application. In the receipt, Respondent indicated that the amount of Mr. Hunter's account was $600.00, that $100.00 was paid, and $500.00 was due.
1.6 By check number 108, dated March 31, 1987, Mr. Hunter paid Respondent $670.00 for legal services. Respondent issued a receipt acknowledging payment of the money. In the receipt, Respondent indicated that Mr. Hunter's account was $670.00, that the amount paid was $670.00, and that the amount due was "-0-".
1.7 Mr. Hunter received from Respondent or Respondent's secretary, two drafts of a patent application specification, including claims. Each draft contains the statement that "I have illustrated ... my invention", and each draft includes reference numerals in the specification to elements of the invention. Mr. Hunter appears to have an illustration of his invention in two hand drawn Figures, constituting only an informal drawing on lined paper, and reference numeral 30 set forth in the specification is not contained in the Figures, while reference numeral 37 in Figure 2 is not contained in the specification.
1.8 Mr. Hunter has called Respondent by telephone, but Respondent has not returned the calls. Mr. Hunter has sent Respondent one or more letters, but Respondent has not responded. By letter dated December 13, 1988, Mr. Hunter requested "a complete copy of my file on prevention of pest and water into a brick wall's weep holes". The letter was mailed to Respondent at "3626 Magazine Street, NO La 70115" by certified mail, return receipt requested on December 14, 1988, and respondent signed for the letter on December 16, 1988.
1.9 Respondent has neither responded to Mr. Hunter's letter dated December 13, 1988, nor delivered the file documents requested by Mr. Hunter. Moreover, Respondent has not communicated to Harry R. Hunter that no application has been filed.
1.10 By not communicating with Mr. Hunter, including responding to all telephone calls and written communications, and informing Mr. Hunter about the status of the legal services and patent application, Respondent engaged in conduct that adversely reflects on his fitness to practice before the PTO and/or neglected legal matters entrusted to him.
1.11 By not delivering to Mr. Hunter promptly after Respondent received Mr. Hunter's December 13, 1988 letter the "copy of my file on prevention of pest and water into a brick wall's weep holes", Respondent failed to promptly deliver to a client as requested by the client property in Respondent's possession which the client is entitled to receive.
*3 2.1 Upon receipt of the documents inquiring about Mr. Hunter's patent matters OED instituted an investigation regarding Respondent's conduct. Two letters dated November 6, 1990 were mailed to Respondent by certified mail, return receipt requested. One letter was mailed to Respondent at the business address of which separate notice was last received by the Director of OED, 3624 Magazine Street, New Orleans, LA 70115 (the Magazine letter). The second letter was mailed to Respondent at 829 Barrone Street, New Orleans, LA 70113 (the Barrone letter). The first and second letters provided Respondent with a copy of the documents inquiring about Mr. Hunter's patent matters. The letters notified Respondent that the materials warranted an investigation under 37 C.F.R. 10.131(a), and 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. The letters dated November 6, 1990 also referred Respondent to his duty to cooperate with any investigation under 37 C.F.R. 10.131(a) and 10.23(c)(16).
2.2 The return receipt card for the Magazine Street letter bears the signed name of Shirley Rigney and a hand written date of "11-19-90", and the card was returned to the PTO. The return receipt card for the Barrone Street letter bears the signed name of "Mr. Chastant" and what appears to be a stamped date of "NOV 13, 1990", and the card was also returned to the PTO.
2.3 Respondent did not respond to either the Magazine street letter dated November 6, 1990 or to the Barrone Street letter dated November 6, 1990 with a written statement fully and fairly explaining anything.
2.4 By letters dated December 11, 1990, and January 18, 1991, Respondent was again requested to respond to the letter dated November 6, 1990 by providing the requested written statement. The letters were mailed to Respondent by certified mail, return receipt requested, at the same Magazine Street address, 3624 Magazine Street, New Orleans, LA 70115. The letter dated December 11, 1990, was returned with a note stating that the "FORWARDING TIME EXPIRED" and indicating that Respondent's new address was "829 Barrone St" in "New Orleans, LA 70013-1102". The letter dated January 18, 1991, was returned with the same note, OED Exhibit 17.
2.5 By letters dated December 11, 1990, and January 18, 1991, Respondent was again requested to respond to the letter dated November 6, 1990 by providing the requested written statement. The letters were mailed to Respondent by certified mail, return receipt requested, at the same Barrone Street address. The letter dated December 11, 1990, was not returned, and a return receipt card respecting a letter mailed to Respondent at Barrone Street address was received in the OED. Neither the letter dated December 11, 1990, nor the return receipt card respecting the letter have been returned to or received by OED.
*4 2.6 On or about February 1, 1991, OED learned from a telephone information operator that Respondent had a telephone number on Canal Street, and upon calling that number learned that the telephone number was for an office where Respondent received mail, and that the address was 2317 World Trade Center, # 2 Canal Street, New Orleans, LA 70130. By letter dated February 1, 1991, addressed to Respondent at 2317 World Trade Center, # 2 Canal Street, New Orleans, LA 70130, Respondent was again requested to respond to the letter dated November 6, 1990 by providing the requested written statement. The letter was mailed to Respondent by certified mail, return receipt requested. Neither the letter dated February 1, 1991, nor the return receipt card respecting the letter have been returned to or received by OED.
2.7 As of the date of the Complaint and Notice, OED had received no response to the letters dated December 11, 1990, January 18, 1990, or February 1, 1990, and OED had not received from Respondent a written statement pertaining to the documents inquiring about Mr. Hunter's patent matters.
The conduct set forth in paragraphs 1.1 through 1.11 of Count 1 of the Complaint and Notice 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(b)(6); 37 C.F.R. 10.77(c); and/or 37 C.F.R. 10.112(c)(4).
The conduct set forth in paragraphs 2.1 through 2.7 of Count 2 of the Complaint and Notice 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).
As in the earlier proceeding, an indeterminate suspension is appropriate since 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 before the Patent and Trademark Office. Ongoing personal problems or blatant procrastination are not legitimate excuses for misconduct and cannot be tolerated in patent practice.
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 shall be removed from the rolls.
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.
*5 This Initial Decision is rendered pursuant to the provisions of Section 32 of Title 35, United States Code, and Section 1.348, Title 37, of the Code of Federal Regulations.
Exceptions to this Initial Decision on Default must be submitted within 30 days of this date and addressed to:
Harry F. Manbeck, Jr.
Commissioner of Patents and Trademarks
Room 906, PK 2
Washington, D.C. 20231