The ARDC Claims Patent Lawyer Was Not Diligent And Deceived Clients

BEFORE THE HEARING BOARD:

The ARDC has brought a complaint against Jerry Allen Schulman (“Respondent”) and has alleged that the Respondent allowed numerous patent applications and trademarks to become abandoned because he did not respond to correspondence from the United States Patent Office. Unfortunately, the lawyer also allegedly made false representations to the clients that their patent applications were pending and proceeding normally. In Count II of the Complaint, the Administrator alleges as follows:

12. Respondent did not communicate to ASICO that the applications referred to in Count I had been abandoned. Periodically, Respondent would provide ASICO with a document called the “ASICO PATENT DOCUMENT” that purported to give the status of each of the company’s patent applications. These dockets did not show that the patent applications had been abandoned. In fact, many of the patents had been abandoned, and Respondent knew that but did not include that information on the chart, in an effort to conceal his inaction from his client.
13. In many instances, the dockets stated that action had been taken by Respondent and the application was “awaiting action,” presumably by the USPTO.
14. For example, Respondent had a docket dated June 17, 2009 (“Sample Docket”). The Sample Docket falsely stated that patent application number 11/534,573 was “pending.” In fact, that application had been abandoned on June 15, 2007. Respondent knew that his statement that patent application number 11/534,573 was pending was false, because he knew the application had been abandoned.

15. The Sample Docket did not show that patent application 11/864,865 had been abandoned on June 12, 2008. On June 17, 2009, Respondent knew that the application had been abandoned, but chose not to include that with the information conveyed to ASICO.
16. The Sample Docket falsely stated that patent application number 12/050,167 was “undergoing preexam processing.” In fact, the application had been abandoned on December 2, 2008. Respondent knew that his statement that patent application 12/050,167 was undergoing preexam processing was false, because he knew the application had been abandoned.
17. The Sample Docket falsely stated that patent application number 12/263,315 was “undergoing preexam processing.” In fact, Respondent had received a Notice to File Missing Parts on November 18, 2008, a notice to which Respondent never provided a response. Respondent knew that his statement that patent application number 12/263,315 was undergoing preexam processing was false, because he knew that he had received the Notice to File Missing Parts.
18. The Sample Docket falsely stated that patent application number 12/408,715 was filed and awaiting action. In fact, Respondent had received a Notice to File Missing Parts on April 15, 2009, a notice to which Respondent never provided a response. Respondent knew that his statement that patent application number 12/408,715 was awaiting action was false, because he knew he had received the Notice to File Missing Parts.

19. Respondent also prepared another document he titled “ASICO Trademarks.” This charts purported to represent the status” of each ASICO trademark that Respondent handled. The charts do not show that some of the trademark applications had been abandoned. Respondent knew that some of the trademark applications had been abandoned but did not convey that information to ASICO.
20. Respondent knew that the representations he made to ASICO regarding the status of the patent and trademark applications were false because he had received notices from the USPTO advising him that the applications had been abandoned due to his inaction.
21. By reason of the conduct described above, Respondent has engaged in the following misconduct:
conduct involving dishonesty, fraud, deceit or misrepresentation by providing ASICO with charts purporting to show the status of patent and trademark applications that contained false statements, or intentionally omitted truthful information in an effort to conceal his inactivity, in violation of Rule 8.4(a)(4) of the Illinois Rules of Professional Conduct (1990 and 2010).

Comment: these allegations have not been proven and the Respondent has not filed his response to the complaint. What made this case interesting for the ARDC was the repeated efforts to deceive the client that the patent and trademark applications were pending.

Edward X. Clinton, Jr.

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