Florida IP Attorney’s Referral Agreement Results In Indiana Suspension


Dave Stafford for www.theindianalawyer.com

A Florida intellectual property attorney who represented Indiana clients has been suspended from the practice of law for 30 days for failing to disclose to clients that his firm was pursuing patents under an agreement with another company that charged clients to develop, protect and market their inventions.

The Indiana Supreme Court suspended Robert Wayne Gray for a month, with automatic reinstatement, in an order issued Thursday afternoon. Justices accepted the statement of circumstances and conditional agreement for discipline agreed upon by Gray and the disciplinary commission.

According to the order in In the Matter of: Robert Wayne Gray, 18S-DI-433, the U.S. Patent and Trademark Office filed a disciplinary complaint against Gray in December 2016 based on referral agreements he had with a company called USPC. After that complaint, Gray agreed to exclusion from practice before the USPTO without an admission of misconduct.

Operating as The Gray Law Group, Gray’s firm under its contract with USPC “would perform relevant prior art searches on behalf of USPC’s inventor clients and, if able, would draft and file a provisional patent application on behalf of the inventor client,” justices wrote. “The inventor clients were charged separate fees by USPC for each step. TGLG did not enter into separate representation agreements with these clients. The inventor clients interacted primarily with USPC during this process and were not told of the limitations on representation or how fees would be shared between USPC and TGLG,” the order says.

“TGLG did not obtain the inventor clients’ written informed consent to TGLG’s simultaneous representation of, and ongoing business relationship with, USPC. TGLG also did not discuss with the inventor clients the relative benefits or drawbacks of a provisional patent application in comparison to available alternatives, such as filing a non-provisional application,” according to the order.

The parties agree Gray violated the following Indiana Professional Rules of Conduct:

  • 1.2(a) and (c): Failing to consult with a client about the objectives of representation and failing to obtain a client’s informed consent to limit the scope of representation;
  • 1.4(a)(1), (a)(2) and (b): Failing to promptly inform a client of any decision or circumstance requiring the client’s informed consent, failing to reasonably consult with a client about the means by which the client’s objectives are to be accomplished, and failing to explain a matter to the extent reasonably necessary to permit a client to make informed decisions;
  • 1.7: Representing a client when there is a conflict of interest without obtaining informed, written consent;
  • 1.8(f): Improperly accepting compensation for representing a client from one other than the client;
  • 5.1: Failing to make reasonable efforts to ensure that the conduct of another lawyer over whom the lawyer has direct supervisory authority conforms to Rules of Professional Conduct, and;
  • 5.4(c): Permitting a person who recommends, employs, or pays the lawyer to render legal services for another to direct or regulate the lawyer’s professional judgment inrendering such legal services.