“Government employees are not available to accept private clients”

by Dennis Crouch

Correll v. Hirshfeld (Fed. Cir. 2022) (pending appeal)

From 2002-2017, Kevin Correll worked as an electrical engineer for the US Navy.  Correll is also a patent attorney and during that time Correll ran his own small firm.  In 2016, someone at the Navy figured out that this was a problem and worked with the USPTO Office of Enrollment & Discipline to begin an investigation.  Why is this a problem — at least according to the USPTO “U.S. Government employees are not available to accept private clients or to represent clients other than their agency before the United States Patent and Trademark Office.”  This quote comes from the USPTO mandatory survey of registered practitioners and is only loosely based upon the most on-point statute and regulations. 18 U.S.C. §§ 203, 205; 37 CFR § 11.111.  Rather, Rule 11.111 limits Federal Employees from acting “contrary to applicable Federal ethics law, including conflict of interest statutes.”  Here, the conflict of interest statutes (18 U.S.C. §§ 203, 205) include the following prohibitions:

Whoever … receives … any compensation for any representational services, as agent or attorney or otherwise … (B) at a time when such person is an … employee … of the United States … in relation to any … application … in which the United States is a party or has a direct and substantial interest, before any department, agency, court, court-martial, officer, or any civil, military, or naval commission [shall be punished]. 18 U.S.C. § 203.

Whoever, being an … employee of the United States … (2) acts as agent or attorney for anyone before any department, agency … in connection with any covered matter in which the United States is a party or has a direct and substantial interest shall be subject to the penalties … 18 U.S.C. § 205.

In a 2001 informal advisory letter, Marilyn Glynn General Counsel for the Office of Government Ethics concluded that these provisions should be seen as prohibiting current government employees from moonlighting as patent attorneys for private paying clients.  But, that opinion was based upon rather weak analysis.

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An Administrative Law Judge (ALJ) found that Correll engaged in improper conduct by representing private clients and concluded that he should be suspended from practice for 5 years.  The USPTO Director then confirmed that judgement.  Correll then took his case to the E.D.Va. District Court who denied his motion for a preliminary injunction. Now, Correll has brought that case to the Federal Circuit.

In the appeal, Correll presents three arguments:

  1. The restriction on practice suppresses Correll’s rights of free speech and free association.
  2. The USPTO’s broad prohibition improperly reaches beyond what is provided by either statute or rule.  See Van Ee v. Envt’l Protection Agency, 202 F.3d 296 (D.C. Cir. 2000).
  3. The district court improperly gave deference to the USPTO’s interpretation of the statutes.

In its briefing, the USPTO makes a big deal its survey that clearly put Correll on notice.

Of course, this type of notice only carries weight if it is also supported by law. If the Federal Circuit is willing to engage, it could become a quite interesting opinion.