dissenting.
I respectfully dissent. The only “mistake” made by Mr. Lipman was in respecting his client’s rights for the time needed to investigate the withdrawal of the endorsements by the Vinson & Elkins attorneys, instead of rushing to impeach his client without investigation, as the PTO (and my colleagues on this panel) hold was the necessary behavior. Mr. Lipman acted reasonably, responsibly, and diligently to satisfy both the lawyer’s responsibility to his client and the lawyer’s responsibility to the PTO. The Commissioner’s reprimand was unwarranted, and should not be sustained.
When Vinson & Elkins notified Mr. Lip-man that they were withdrawing their pri- or glowing affidavits, part of the then-closed record, he immediately inquired of his client and of the affiants. Vinson & Elkins (Mr. Martin) did not in his initial letter, dated April 27, ask that the four affidavits be withdrawn; Mr. Martin stated that “you must not refer to our affidavits in any appeal documents.” Mr. Lip-man immediately complied, excising from the almost-completed brief (due on May 7) all mention of and quotations from the four affidavits. However, critical to the Commissioner’s decision to discipline Mr. Lip-man, he did not also change the total of “17” testimonials to a new total of “13.” This was the “false and misleading information” for which Mr. Lipman was disciplined.
This behavior was not culpable, and it is hard even to view it as negligent in view of the diligence with which Mr. Lipman obtained information from his client and sought it from the affiants. He acted, as he must, to consider his client’s interest in light of this sudden disparagement by these previously enthusiastic supporters. Mr. Lipman can not be faulted for investigating before acting.
Indeed, it would have been highly irresponsible to act without this inquiry. Only a few days elapsed between each of the *1373many communications among those involved, except for the delays on the part of the Vinson & Elkins attorneys when they initially chose not to respond to his inquiries. On May 18 Mr. Lipman sent Vinson & Elkins a twenty-eight page refutation of the charges against his client. No reply was received, nor was Mr. Lipman told that no reply would be made. On June 12 Mr. Lipman again wrote, stressing the importance of a prompt reply. On July 23 a reply was mailed to Mr. Lipman, apparently triggered by a communication from the PTO in response to a direct contact by Vinson & Elkins on June 29. Even with these delays, only eleven weeks in total elapsed before Mr. Lipman prepared the document formally withdrawing the four affidavits. There is absolutely no indication of the “deliberate, calculated deception” that the majority sustains.
Most application of law is by hindsight. However, when an attorney’s reputation is placed at risk, it is essential that the actions for which he is criticized be evaluated as a reasonable attorney would have acted at the time. By July 30 Mr. Lipman informed his client that “we must inform the PTO about V & E.... I firmly believe we must act now.” (Emphasis in original.) He sent the document, prepared for filing, to the client on August 2. This was not “deliberate, calculated deception” of the PTO. Mr. Lipman acted reasonably and diligently, in fidelity to the canons and to his responsibilities to his client and to the PTO.
Meanwhile, the Commissioner, by letter mailed August 1, remanded the client’s registration matter to the Office of Enrollment and Discipline for investigation of the allegations in the Vinson and Elkins letter to the PTO of June 29. On August 14 the PTO initiated an investigation of Mr. Lip-man, on the basis that “The affidavits should have been withdrawn immediately after receipt of Mr. Martin’s letter of April 27th....”
Mr. Lipman, now himself the subject of a disciplinary investigation, obtained waiver of the attorney-client privilege and provided the full history of these events. As evidence of the reasonableness of his actions in the circumstances that prevailed, he submitted affidavits of seven of the most respected practitioners in the fields of legal ethics and PTO attorney responsibility. These affiants made powerful statements in his support. For example, former Commissioner of Patents and Trademarks Donald W. Banner declared:
This case should never have been brought against Respondent on the basis of this record. The documented history of Respondent’s involvement in informing himself and the PTO of the facts surrounding the incidents about which he is charged show absolutely no intent, reckless disregard or gross misconduct. The record discloses a concerned practitioner who was presented with third party accusations which were unsubstantiated and who made a reasonable effort to determine the truth of those accusations. The allegations contained in the [PTO] complaint indicate that there was no consideration of the totality of the circumstances — including Respondent’s duty to his client, the nearly impossible position in which Respondent was placed by Mr. Martin’s April 27th letter and the time pressure upon Respondent to meet a jurisdictional deadline.
Former Commissioner of Patents and Trademarks Donald J. Quigg, who instituted the PTO rules of professional conduct, declared:
[I]t is my opinion that, faced with the situation presented to him, Respondent performed in a reasonable manner under the requirements of the Ethics Rules, including Canons 6 [“A practitioner should represent a client competently.”] and 7 [“A practitioner should represent a client zealously within the bounds of the law.”] (37 C.F.R. 1076 and 10.83).
Herbert S. Wamsley, former Executive Assistant to three Commissioners, stated:
The only intent shown in the documented history is the intent of a practitioner who, with full dedication and integrity to *1374his job, went about determining the truth of third party allegations before taking any action which would irreparably harm his client’s case.
An academic expert on legal ethics, Professor Charles W. Wolfram of the Cornell Law School, Chief Reporter for the Restatement of the Law Covering Lawyers and author of the treatise on Modem Legal Ethics (West), observed:
That Mr. Martin forced the Commissioner’s hand before Mr. Lipman could complete his planned course of action says nothing about the legitimacy of Mr. Lip-man’s own actions. That Mr. Martin insisted that Mr. Lipman take action prior to May 7 or at some other time prior to August 2 also does not determine Mr. Lipman’s responsibilities. That others who fully possessed both the facts and objectivity might have taken or counselled Mr. Lipman to take a different course of action does not in the circumstances impugn what Mr. Lipman did.
Professor Wolfram concluded that “Mr. Lipman did not violate any mandatory norm in representing his client.”
Two former United States Attorneys for the District of Columbia with extensive experience in legal ethics (Earl J. Silbert and Charles F.C. Ruff), also unequivocally supported Mr. Lipman’s actions. Mr. Ruff, among other distinctions, had been Acting Deputy Attorney General of the United States and Chief Inspector for the Drug Enforcement Administration. He stated:
On the raw information provided to Respondent in the April 27th Letter, it would not have been reasonable to have revealed the April 27th letter to the PTO.... On the basis of the factual record in this case, this disciplinary proceeding never should have been brought.
Mr. Silbert is Chairman of the Committee of Grievances of the United States District Court for the District of Columbia, Chairman of the Ethics in Government Act of the American Bar Association White Collar Crime Committee, and Chairman of the Hearing Committee for the Board of Professional Responsibility in the District of Columbia. His statement included a discussion of recanted testimony, such as the Vinson & Elkins recant. He said that during the time that he served as United States Attorney for the District of Columbia, occasionally a witness would recant while an appeal was pending. He said that while there were various procedures for dealing with such an occurrence, the appellate court could not properly consider the recantation as it was not part of the closed record before it, drawing analogy to the closed record before the PTO. Mr. Silbert said:
[T]o allege that it was Respondent’s duty immediately to inform the PTO of the April 27th letter, without inquiring further into the surrounding circumstances, ignores the complexity of the difficult ethical obligations on Respondent.
Former Assistant Commissioner for Patents Rene D. Tegtmeyér, then a partner in Mr. Lipman’s firm, declared:
[I]t is clear to me that Respondent never acted with an intent to deceive the PTO or to misstate any facts of which he had knowledge in his representation of the applicant in Proceeding E88-2.
Mr. Tegtmeyer, with whom Mr. Lipman consulted during his investigation of the allegations against the client, also testified about the conduct of that investigation.
All of these witnesses were experienced in disciplinary issues and in the ethical obligations of attorneys. All agreed, without the slightest qualification, that Mr. Lipman’s conduct was appropriate and reasonable in the circumstances, and not a violation of any code or canon or other legal or ethical obligation. Professor Wolfram testified:
I would say that if you presented lawyers in this country with this set of facts as a problem, I think, I would hope, that the ones I would consider to be noble practitioners would behave exactly the way [appellant] did. I regard this as a *1375case study in the way to handle a problem ... and it’s a horrible thing to have to say to him from the witness stand in a case in which he is the defendant, but I think he ought to be proud of what he did.
There is no information or authority or citation contrary to the evidence provided by these witnesses and the force of their conclusions.
Mr. Lipman was constrained by the “dual trust ... imposed on attorneys at law [to] act with fidelity both to the courts and to their clients.” State v. Jackson, 162 Conn. 440, 294 A.2d 517, 523 (1972). Mr. Lipman acted reasonably and responsibly to fulfill that trust, immediately deleting from the brief all references to and quotations from the Vinson & Elkins affidavits, asking both Vinson & Elkins and the client for the true facts, consulting with others in his firm, pursuing the matter diligently, and acting promptly to notify the PTO when it became clear that no resolution was possible. The PTO canons respect the lawyer’s duty to the client as well as the lawyer’s duty to the PTO. See PTO Canon 4 (the lawyer has the duty to protect the client’s secrets).
There was no evidence whatsoever of an intent to deceive the PTO. See Jaskiewicz v. Mossinghoff, 822 F.2d 1053, 1059, 3 U.S.P.Q.2d 1294, 1299 (Fed.Cir.1987) (even negligence, if in good faith, is not deception). Mr. Lipman refrained from the precipitous (and irresponsible) action that the PTO states was his obligation immediately on receiving the April 27 letter. This was proper, not improper, representation. He actively and diligently investigated the matter and duly and timely prepared the appropriate documents for filing in the PTO. The circumstances do not establish a violation of 37 C.F.R. 10.23 (Misconduct). I must, respectfully but with urgent concern for this miscarried disciplinary action, dissent.