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PTO Has Authority to Exclude Attorney from Practicing Before PTO Based on Disbarment in Other Jurisdictions

06-1161
September 25, 2006

Decision icon Decision

Last Month at the Federal Circuit - October 2006

Judges: Newman, Lourie (author), Rader

[Appealed from: D.D.C., Judge Huvelle]

In Sheinbein v. Dudas, No. 06-1161 (Fed. Cir. Sept. 25, 2006), the Federal Circuit affirmed the district court’s decision to sustain the PTO’s exclusion of Sol Scheinbein from practice before the PTO.

Scheinbein was a member of the bars of the District of Columbia and the State of Maryland, and registered to practice before the PTO. In 1997, he helped his son flee to Israel after learning that his son was being investigated for murder. In 2001, the Maryland Court of Appeals held that Scheinbein committed the criminal act of obstructing or hindering a police officer and engaged in conduct prejudicial to the administration of justice. Based on those findings, Scheinbein was barred from practicing law in Maryland in 2002, and he was subsequently barred from practicing in the District of Columbia in 2004 as reciprocal discipline for his misconduct in Maryland.

In 2004, the PTO’s Office of Enrollment and Discipline instituted a disciplinary proceeding pursuant to 37 C.F.R. § 10.134, seeking to exclude Scheinbein from practicing before the PTO based on his disbarments. The ALJ issued an Initial Decision on SJ that Scheinbein should be excluded from practicing before the PTO. Scheinbein appealed to the Director of the PTO, who adopted the ALJ’s decision and imposed the sanction of excluding Scheinbein from practice before the PTO. Scheinbein then appealed to the district court, who granted the PTO’s motion for SJ of affirmance and dismissed the case.

On appeal, the Federal Circuit affirmed the district court’s decision to sustain the PTO’s exclusion of Scheinbein from practicing before the PTO. The Court held that the PTO has the statutory authority to exclude Scheinbein based on his prior disbarments and that the statute of limitations does not preclude the exclusion.

With respect to the PTO’s statutory authority, the Federal Circuit held that 35 U.S.C. § 32 provides that the PTO has the authority to exclude from practice before the PTO a practitioner “shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 2(b)(2)(D),” which delegates authority to the PTO to establish regulations governing conduct. The Court explained that, based on the plain language of 37 C.F.R. § 10.23(c)(5), one of the disciplinary rules enacted pursuant to the PTO’s statutory authority, “a practitioner may be found unfit to practice based solely on his disbarment in another jurisdiction.” Slip op. at 6. The Court explained that the exclusion is based on the finding of another jurisdiction regarding the conduct, not the conduct itself. Thus, Scheinbein’s prior disbarments violated § 10.23, and the PTO properly excluded him from practice before the PTO.

With respect to the five-year statute of limitations imposed by 28 U.S.C. § 2462, the Federal Circuit held that the PTO’s filing of its complaint in 2004 occurred within the limitations period because the basis for the complaint was Scheinbein’s violation of § 10.23, which occurred at the time of hisdisbarments in 2002 and 2004, not at the time of the underlying conduct in 1997. The Court explained that a claim accrues when the factual and legal prerequisites for suit are satisfied, and in this case, those prerequisites were not satisfied until the disbarments occurred.