Patent Pending

The California State Bar Court Review Department proposes disbarment as the sanction for a second disciplinary offense

 The hearing judge in this proceeding found Wittenberg culpable of violating rule  1-300(B) of the Rules of Professional Conduct by engaging in the unauthorized practice of law (UPL) in 300 to 400 trademark matters before the United States Patents and Trademark Office (USPTO).

He had been convicted of insider trading

 As a result of his felony conviction, Wittenberg was placed on interim suspension in California in 2001 and disbarred in Virginia in 2002. In 2003, the USPTO Office of Enrollment and Discipline (OED) filed a complaint against him. Subsequently, he submitted a resignation affidavit, which the USPTO accepted. In June 2004, the USPTO ordered that Wittenberg “be excluded on consent from practice before the United States Patent and Trademark Office,” and ordered the OED to publish a notice in the “Official Gazette,” which stated that Wittenberg had been excluded from practice before the USPTO “in patent and trademark law cases beginning July 1, 2004.” The USPTO final decision also recited that Wittenberg’s resignation affidavit contemplated that he will pursue the USPTO’s formal reinstatement process should he wish to later have the exclusion lifted; and, in that process, the USPTO Director of OED will conclusively presume certain facts as to the complaint against him.

The sanction

Wittenberg was an experienced practitioner before the USPTO, yet he continued to represent numerous trademark clients for nearly six and a half years after he was excluded from practice before the office. He never sought reinstatement, although the regulations in effect at the time of his exclusion and thereafter required such a process before resuming practice before the USPTO. The affidavit he executed regarding his exclusion also referenced such a process. We agree with the hearing judge that Wittenberg, as a long-time practitioner in his field, knew or should have known about the regulatory scheme and that he was engaging in UPL. However, rather than carefully determining what, if anything, he was required to do before resuming his practice, he assumed that his 2005 relief from actual suspension in California allowed him to resume practice before the USPTO. This exhibits, at best, a cavalier attitude toward compliance with the regulations that apply to practitioners in the field of law to which he has devoted much of his career.

(Mike Frisch)