Case Number(s): 11-J-10588-LMA
In the Matter of: Sung Il Oh, Bar # 201634 , A Member of the State Bar of California, (Respondent).
Counsel For The State Bar: Paul T. O’Brien, 1149 S. HILL STREET
LOS ANGELES, CA 90015-2299
Bar # 171252
Counsel for Respondent: In Pro Per Respondent
SUnG IL OH
710 QUAIL VALLEY LANE
WEST COVINA, CA 91791
Bar # 201634
Submitted to: Assigned Judge
<<not>> checked. PREVIOUS STIPULATION REJECTED
Note: All information required by this form and any additional information which cannot be provided in the space provided, must be set forth in an attachment to this stipulation under specific headings, e.g., "Facts," "Dismissals," "Conclusions of Law," "Supporting Authority," etc.
1. Respondent is a member of the State Bar of California, admitted June 10, 1999.
2. The parties agree to be bound by the factual stipulations contained herein even if conclusions of law or disposition are rejected or changed by the Supreme Court.
3. All investigations or proceedings listed by case number in the caption of this stipulation are entirely resolved by this stipulation and are deemed consolidated. Dismissed charge(s)/count(s) are listed under "Dismissals." The stipulation consists of 10 pages, not including the order.
4. A statement of acts or omissions acknowledged by Respondent as cause or causes for discipline is included under "Facts."
5. Conclusions of law, drawn from and specifically referring to the facts are also included under "Conclusions of Law".
6. The parties must include supporting authority for the recommended level of discipline under the heading "Supporting Authority."
7. No more than 30 days prior to the filing of this stipulation, Respondent has been advised in writing of any pending investigation/proceeding not resolved by this stipulation, except for criminal investigations.
8. Payment of Disciplinary Costs-Respondent acknowledges the provisions of Bus. & Prof. Code §§6086.10 & 6140.7. (Check one option only):
<<not>> checked. Until costs are paid in full, Respondent will remain actually suspended from the practice of law unless relief is obtained per rule 5.130, Rules of Procedure.
checked. Costs are to be paid in equal amounts prior to February 1 for the following membership years: two billing cycles following the effective date of the Supreme Court Order. (Hardship, special circumstances or other good cause per rule 5.132, Rules of Procedure.) If Respondent fails to pay any installment as described above, or as may be modified by the State Bar Court, the remaining balance is due and payable immediately.
<<not>> checked. Costs are waived in part as set forth in a separate attachment entitled "Partial Waiver of Costs".
<<not>> checked. Costs are entirely waived.
IN THE MATTER OF: SUNG IL OH
CASE NUMBER(S): 11-J-10588-LMA
FACTS AND CONCLUSIONS OF LAW.
Respondent admits that the following facts are true and that he is culpable of violations of the specified statutes and/or Rules of Professional Conduct.
Case No. 11-J-10588-LMA (Discipline in Other Jurisdiction)
PROCEDURAL BACKGROUND IN OTHER JURISDICTION:
1. At all times herein mentioned, Respondent was registered to practice patent law before the Office (Registration Number 45,583) and therefore subject to the USPTO Disciplinary Rules set forth at 37 C.F.R. § 10.20 et seq.
2. On or about January 18, 2011, the United States Patent and Trademark Office (USPTO) issued a Final Order that Respondent be disciplined, upon findings that Respondent had committed professional misconduct in that jurisdiction. Thereafter, the decision of the USPTO became final.
3. In or about 1999, Respondent began using Mr. G, a registered patent attorney, to provide patentability search services for Respondent’s clients. Respondent and Mr. G developed a good working relationship over the course of several years as a result of their collaborative efforts.
4. In or about February 2005, Mr. G solicited Respondent’s interest in obtaining flat fee referrals from a company known as PTO (Patent Trademark Institute of America and International Patent Inventors, Inc,collectively).
5. In or about March, 2005, Respondent was contacted by the president of PTI and subsequently entered into an agreement by which PTI would refer inventors to Respondent to prepare, file and prosecute patent applications in the USPTO on behalf of the referred inventors.
6. Between in or about May 2005 and January 2007, PTI referred hundreds of inventors to Respondent. Respondent represented hundreds of the referred inventors and did not disclose to these clients, in writing or otherwise, how much he was paid by PTI to perform services on their behalf; nor did Respondent obtain the clients written consent to permit him to accept compensation from PTI for the patent legal services that Respondent performed on their behalf. Respondent, moreover, did not advise the client inventors of the potential conflict of interest in the event that PTI became unable or unwilling to compensate Respondent for his services or forward costs and fees paid to PTI by the client inventors.
7. Specifically (as one example of an inventor client to whom Respondent failed to make necessary disclosures), Respondent entered into a contract with Mr. V to provide services in obtaining full patent protection and trademark protection. Mr. V had paid PTI $9,995 and $1,695, respectively, for these services. PTI had paid Respondent to perform a patentability study for Mr. V. Respondent did not disclose his business relationship with PTI, his compensation agreement with PTI, or the potential for a conflict of interest to arise between Mr. V and PTI to Mr. V.
8. On or about January 10, 2007, the United Stated District Court, Eastern District of Virginia, issued an order placing PTI in court receivership pending the outcome of contempt litigation proceedings that had been brought against PTI by the Federal Trade Commission (FTC). The FTC had sought sanctions for contempt against PTI due to allegations it had violated the terms of an order arising from a 1998 civil
settlement that PTI and the FTC had entered into.
9. In or about July 2007, Mr. V became aware of the receivership action and instructed Respondent to return his patent file, which Respondent did. Thereafter, Respondent filed a request to withdraw as counsel for Mr. V before the USPTO; before any action was taken, however, on the request, Respondent was served with a notice of allowance for Mr. V’s design patent.
10. In or about September 2007, Respondent forwarded the notice of allowance to Mr. V and advised him that he would have to pay an issue fee and file amended drawings and a substitute declaration within seven weeks. PTI had already informed espondent that it could not provide the necessary funds to pay the issue fee for Mr. V’s design patent.
11. Respondent offered to file the necessary papers if Mr. V would pay an additional $500, including $100 for Respondent’s further services. Mr. V declined the offer; his patent application was thereafter abandoned when the issue fee was not timely paid.
CONCLUSIONS OF LAW:
12. The disciplinary proceeding in the other jurisdiction provided Respondent with fundamental constitutional protection.
13. Respondent’s conduct in the other jurisdiction as set forth above would warrant the imposition of discipline in California as violation(s) of the following:
14. By not informing his clients of his business relationship with PTI, Respondent accepted employment and failed to provide written disclosure to the client that he had a business relationship with an entity the member knew or reasonably should have known would be affected substantially by the resolution of the representation, in willful violation of rule 3-310(B)(3), Rules of Professional Conduct.
15. By accepting payments from PTI for services on behalf of clients, without disclosing to the clients that he was paid by PTI and that a potential conflict existed in the event his fees or costs that the client advanced to PTI were not forwarded to Respondent by PTI, Respondent failed to obtain the informed, written consent
of his clients, to permit him to accept compensation for representing a client from one other than the client, in willful violation of rule 3-310(f), Rules of Professional Conduct.
The disclosure date referred to, on page 2, paragraph A(7), was July 18, 2011.
AUTHORITIES SUPPORTING DISCIPLINE.
Standard 1.3 - The primary purposes of disciplinary proceedings conducted by the State Bar of California and of sanctions imposed upon a finding or acknowledgment of a member’s professional misconduct are the protection of the public, the courts and the legal profession; the maintenance of high professional standards by attorneys and the preservation of public confidence in the legal profession. Rehabilitation of a member is a permissible object of a sanction imposed upon the member but only if the imposition of the rehabilitative sanctions is consistent with the above-stated primary purposes of sanctions for professional misconduct.
"Under rule 3-310(F), an attorney may accept payment of his legal fees from a third party only if there is no interference with independence of attorney’s professional judgment or the attorney-client relationship, information relating to the representation remain protected as client confidences and secrets, and the attorney obtains the client’s informed written contsent." [Citation] ["The essential relation of trust and
confidence between attorney and client cannot be said to arise where the attorney and client cannot be said to arise where the attorney is employed, not by the client, but by some corporation which has undertaken to furnish its members with legal advice, counsel, and professional services. The attorney in such a case owes his first allegiance to his immedicate employer, the corporation, and owes, at most, but no incidental, secondary, and divided loyalty to the clientele of the corporation."] In the Matter of Valinoti (Review Dept. 2002) 4 Cal. State Bar Ct. Rptr. 498.
COSTS OF DISCIPLINARY PROCEEDINGS.
Respondent acknowledges that the Office of the Chief Trial Counsel has informed respondent that as of July 18, 2011, the prosecution costs in this matter are $$2,287. Respondent further acknowledges that should this stipulation be rejected or should relief from the stipulation be granted, the costs in this matter may
increase due to the cost of further proceedings.
Case Number(s): 11-J-10588-LMA
In the Matter of: Sung Il Oh
By their signatures below, the parties and their counsel, as applicable, signify their agreement with each of the recitation and each of the terms and conditions of this Stipulation Re Facts, Conclusions of Law and Disposition.
Signed by: Sung Il Oh and Paul t. O’Brien
Respondent: Sung Il Oh
Deputy Trial Counsel: Paul T. O’Brien
Case Number(s): 11-J-10588
In the Matter of: Sung Il Oh Bar Number 201634
Finding the stipulation to be fair to the parties and that it adequately protects the public, IT IS ORDERED that the requested dismissal of counts/charges, if any is GRANTED without prejudice, and:
<<not>> checked. The stipulated facts and disposition are APPROVED and the DISCIPLINE RECOMMENDED to the Supreme Court.
checked. The stipulated facts and disposition are APPROVED AS MODIFIED as set forth below, and the DISCIPLINE IS RECOMMENDED to the Supreme Court.
checked. All Hearing dates are vacated.
The parties are bound by the stipulation as approved unless: 1) a motion to withdraw or modify the stipulation, filed within 15 days after service of this order, is granted; or 2) this court modifies or further modifies the approved stipulation. (See rule 5.58 (E) & (F), Rules of Procedure.) The effective date of this disposition is the effective date of the Supreme Court order herein, normally 30 days after the file date. (See rule 9.18(a), California Rules of Court.)
Judge of the State Bar Court: Lucy Armendariz
Date: August 4, 2011
[Rules Proc. of State Bar; Rule 5.27(B); Code Civ. Proc., § 1013a(4)]
I am a Case Administrator of the State Bar Court of California. I am over the age of eighteen and not a party to the within proceeding. Pursuant to standard court practice, in the City and County of Los Angeles, on January 24, 2012, I deposited a true copy of the following document(s):
STIPULATION RE FACTS, CONCLUSIONS OF LAW AND DISPOSITION AND
in a sealed envelope for collection and mailing on that date as follows:
by first-class mail, with postage thereon fully prepaid, through the United States Postal Service at Los Angeles, California, addressed as follows:
Sung I. Oh
710 Quail Valley Lane
West Covina, California 91791
checked. by interoffice mail through a facility regularly maintained by the State Bar of California addressed as follows:
Paul T. O’Brien, Enforcement, Los Angeles
I hereby certify that the foregoing is true and correct. Executed in San Francisco, California, on August 4, 2011.
Bernadette C.O. Molina
State Bar Court