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Patent Lawyer Challenges Discipline Inquiry

Plaintiff, a registered patent attorney before the U.S. Patent and Trademark Office since 1997, who is the subject of a USPTO disciplinary complaint and investigation alleging plaintiff had prosecuted a trademark application during a period of time when he was suspended from the Pennsylvania Bar, loses his Bivens action filed against the USPTO; the Alexandria U.S. District Court says plaintiff has adequate remedies under existing PTO procedures.

Plaintiff has an adequate alternative process by which he can seek relief from defendants’ alleged wrongful prosecution of his USPTO disciplinary action by pursuing the extensive and satisfactory hearing and appeal procedures laid down in 37 C.F.R. § 11 pursuant to the authority granted by Congress in 35 U.S.C. § 2(b)(2)(D). In fact, plaintiff is already pursuing those alternative avenues by contesting the disciplinary complaint before the ALJ. Even if plaintiff loses his case before the ALJ, 37 C.F.R. § 11 provides further procedures including appeal to the USPTO director and then, later to this court.

Because plaintiff’s claims regarding the baseless nature and political motivations of defendants’ investigation and prosecution are questions properly raised and resolved through the thorough, entirely adequate regulatory scheme the USPTO has devised pursuant to the valid authorization of Congress, this court will not create a Bivens action to create a parallel avenue for plaintiff to recover financial damages where Congress has not done so.

The court also dismisses plaintiff’s Privacy Act claim, which the court assumes he is alleging under 5 U.S.C. § 552. He contends his claim is based upon defendants mailing copies of requests for information containing allegations of the unauthorized practice of law to various addresses at which plaintiff purportedly has never resided. Plaintiff fails to explain how even these allegations are sufficient to prove a violation of the Privacy Act if true, merely making a conclusory assertion that they do.

Plaintiff’s FOIA claim also fails because he has not demonstrated that he can point to anything other than the purely speculative claims about the existence and discoverability of other documents, which will not be sufficient to defeat the presumption of good faith which follows agency affidavits.

Summary judgment for defendants.

Piccone v. U.S. Patent & Trademark Office (Cacheris) No. 1:15cv536, Oct. 27, 2016; USDC at Alexandria, Va.; Kimere J. Kimball for defendant. VLW 015-3-536, 19 pp.

VLW 015-3-536


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