Opinion
D.D. No. 74-12
Decided April 2, 1975.
Attorneys at law — Misconduct — Indefinite suspension from practice of law — Acts warranting.
ON CERTIFIED REPORT by the Board of Commissioners on Grievances and Discipline.
Respondent, Halbert E. Whitaker, admitted to the Ohio Bar in 1949, is a patent lawyer and general practitioner in Berea.
Prior to December 5, 1966, respondent agreed to perform patent and trademark services for a Mr. John Steele, who imports and distributes wigs and hairpieces.
Steele wished to patent an invention which caused wigs to fit more closely around the brow and face of the wearer.
Respondent knew from the outset that the inventor of the wig improvement was a South Korean businessman who supplied wigs to Steele.
Nonetheless, respondent began processing the patent application, named Steele as the inventor, and filed it on September 27, 1968.
At the hearing before the Board of Commissioners on Grievances and Discipline, respondent attributed the delay in filing the application to the time it took to prepare drawings of the invention (until the fall of 1967), the time required to prepare a verbal description of the invention (until the late spring of 1968), and the allegation that Steele wasn't paying his bills.
Invoices, included in the record, indicate that Steele paid respondent $910 for trademark services, $250 retainer on February 15, 1967, for the patent application, and, as to trademark services only, allegedly owed respondent $445 as of December 5, 1968.
In May 1967, respondent had Steele sign the patent application in blank. Prior to filing the application, respondent changed Steele's signature date to a date in September of 1968, allegedly because the patent office refused to accept "stale oaths," and respondent then notarized Steele's oath stating that he was the inventor. When questioned as to the propriety of notarizing a false statement, respondent stated: "He [Steele] was making the false oath, I wasn't."
It has been held that falsification of a jurat by an attorney acting as a notary public constitutes an offense involving moral turpitude. In re Prentice (Ohio App. 1953), 132 N.E.2d 634.
On October 20, 1967, approximately a year before he filed the patent application, respondent executed the following letter under his letterhead:
"Dear Mr. Steele;
"It has come to my attention that there is a possibility that wigs using your silk-trim construction are being imported and sold which are similar to your wigs.
"In reviewing your patent coverage, please be advised that your patent or patents will be enforceable against the importer and its customers. As you know, the patent laws of the United States allows the patent owner to obtain an injunction to prevent the unlicensed infringement of such patent rights. This injunction is obtained in a Federal Court and is effective throughout the United States.
"Please let me know how you wish to proceed and against whom to take action.
"/s/ H.E. Whitaker
"H.E. Whitaker
"REGISTERED PATENT ATTORNEY"
Respondent explained the circumstances surrounding his preparing and signing the October 20 letter as follows:
"A. First of all, we were seated in the coffee shop, Mr. Steele, Mr. Wargo [attorney for Steele] and myself, and they advised me that they had been unsuccessful in their attempt to enforce the contractual arrangement [that the South Korean send wigs to Steele only] and that Steele was looking for some way to do something about his supplier selling wigs to people other than Steele. He also advised me that in the —
"Q. His contractual obligation that you referred to earlier where Steele was to have the exclusive right to sell this type of wig?
"A. Right.
"So, Steele says that he was about to go to Korea and he wanted something in writing to take along to show his supplier and see if he could scare him into restricting his sales to Steele.
"So he said, `I want you to write a letter to him and tell him that we are going to sue him.'
"I said, `You can't do that. You don't have a patent. You can't sue anybody until you get a patent.'
"Q. What did he respond to that?
"A. Well, he says, `Let's work out the language.'
"So Wargo and he started to dicate and I started making notes. And we sat there in this little booth there, in this little `greasy spoon,' and wrote this letter.
"And I remember telling my secretary to take it — I have an IBM with the ball and I have one with the italics. I told her to write, `Registered Patent Attorney' under there in italics.
"And I recall that for Steele to carry it along with him to Korea, which he did. He picked this letter up — or, I delivered it to Wargo's office and Steele picked it up and took it to Korea with him.
"Q. When you told him that he couldn't sue on his patent because he didn't have it, did he at any time respond, `Why don't I have it?' Or, `Let's get it in the works.' Or any words to that effect that you can recall?
"A. Yes. From time to time thought it would be nice to get going on the patent and get it on file.
"Q. Now, as I understand it, you say that this was written to enforce the contractual relationship with his supplier?
"A. No. I didn't say that.
"Q. Then correct me if you would, please. I'm sorry.
"A. This letter had absolutely nothing to do with any contractual relationship.
"Q. What was the purpose of this letter, again?
"A. He thought that if he could talk to this Korean, I think — he thought the Korean was more stupid than he was, because the Korean had laughed in his face when he showed him this letter, because the Korean knew that he invented it and Steele was never going to get a patent.
"Q. How did he explain that?
"A. I found out afterwards.
"Q. From whom?
"A. Steele.
"Q. But the purpose of this letter was to be used with reference to who; his Korean supplier, the inventor?
"A. One man: the individual to see, that was the guy who made that wig right there (indicating).
"Q. It wasn't to be used with reference to anyone else?
"A. That's correct.
"Q. And the purpose was to attempt to frighten or threaten?
"A. Intimidate, or whatever you want to call it.
"Q. To intimidate, or whatever word you want to use, coerce, that one Korean supplier?
"A. To restrict his sales to Steele." (Emphasis added.)
Previously, on September 15, 1967, respondent had prepared the following letter:
"Gentlemen:
"The Continental Wig Company has made certain improvements in the wig construction of a wig cap wherein a marginal silk lining is provided in the brow area of the cap. Continental Wig owns the improvements which have been incorporated in wigs supplied to purchasers in the United States by foreign manufacturers. Further, Continental Wig is processing patents for the purpose of maintaining the above mentioned ownership exclusively.
"We feel that this information should be made available to the trade in order that Continental Wig's position may be understood.
"Yours Very Truly
[not signed]
"H.E. Whitaker."
Respondent explained the purpose of that letter as follows:
"A. Steele wanted a letter which he could mail out and circularize the industry where he stood on his silk lining.
"Q. And what was the purpose of his circularizing the industry with a letter like this? What was intended to be accomplished by it?
"A. Well, he wasn't advertising otherwise, and I guess he wanted to let people know that he was going to obtain patents, or something or other, for these items.
"Q. Was his patent coverage in September of 1967 any different than it was in October of 1967?
"A. No, sir."
At all times, respondent knew that any patent obtained on the invention would be unenforceable and therefore worthless. He did not offer to terminate the professional relationship when his client allegedly insisted upon subscribing a false oath.
Steele is not qualified to hold the wig patent for two reasons: (1) He did not invent the process and (2) the wig had been on sale in this country for well over a year by the time respondent filed the patent application. Section 102, Title 35, U.S. Code, in pertinent part, reads:
"A person shall be entitled to a patent unless —
"(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
"(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
"* * *
"(f) he did not himself invent the subject matter sought to be patented * * *." (Emphasis added.)
Near the end of August 1968, Steele procured the services of another patent attorney, John F. Pearne, in connection with investigating the status of the patent application.
On September 27, 1968, respondent sent the patent application to the United States Patent Office for filing. The application "was given an official filing date, October 7, 1969 with the patent official serial number 765,427."
Respondent and Mr. Pearne were the only witnesses before the board.
The board found respondent guilty of violating "Canons 15 and 16 and via Canon 26 the spirit and admonitions of Canon 22," and thereby guilty of misconduct as defined in Gov. R. V(5)(a), and recommended that he be suspended for an indefinite period from the practice of law. Respondent objects to both the finding of misconduct and the recommendation of the board.
Respondent's alleged misconduct occurred prior to the adoption of the Code of Professional Responsibility on October 5, 1970 (23 Ohio St. 2d), while the Canons of Professional Ethics governed the bar of this state.
Mr. Crede Calhoun, for relator.
Messrs. Kelley, McCann Livingston and Mr. Walter C. Kelley, for respondent.
After a careful analysis of the evidence, this court agrees that the record amply supports the findings of the Board of Commissioners on Grievances and Discipline that respondent has violated the provisions of Canons 15, 16 and 22.
In addition, this court finds that respondent has violated the provisions of Canon 32, in that he rendered service disloyal to the law, Canon 41, in that he assisted and participated in fraud and deception, and Canon 44, in that he failed to withdraw from employment when it was clear that his continued employment would require his engaging in a course of conduct which was both immoral and illegal.
The record does not reflect any appreciation or recognition by respondent that his actions were improper. Also, in consideration of respondent's objections and contentions, we find no facts in mitigation or justification of his actions.
Therefore, the report and recommendation of the Board of Commissioners on Grievances and Discipline are confirmed, and it is the judgment of this court, pursuant to Gov. R. V (6) (b), that respondent, Halbert E. Whitaker, be suspended for an indefinite period from the practice of law.
Judgment accordingly.
O'NEILL, C.J., HERBERT, CORRIGAN, STERN, CELEBREZZE, W. BROWN and P. BROWN, JJ., concur.