Ethics & Practices Overview
Ethics Rules are covered in the MPEP, but not in the numbered chapters. Ethics rules can be found in Appendix R (Rules) Part 11 (“Representation of Others Before the USPTO”)
- formerly Part 10
- use Part 11 Index when searching, not the general index
- The ethics rules here are a bit different from ethics rules of various state bar associations for attorneys because the USPTO has non-lawyer counterparts (patent agents)
- Patent office now uses a modified set of Model ABA rules; but old decisions still apply as precedent
- Note: For Trademark applications – must be registered attorney; patent agents cannot file TM application
- Ethics issues are often due to lack of communication with client; so stay in touch, reach out
- Don’t lie, cheat, or steal, misrepresentation, even if it doesn’t hurt or affect anyone
Competence
- Don’t take work you feel not competent to handle
- Legal competence – discretionary
- Technical competence – discretionary; not just about your degree, also about experience and other areas of expertise
Fee Splitting
- Cannot split unless you (1) notify client, (2) the total fee is reasonable, and (3) you split fee in proportion to work done
- No referral services for fee
- Exception: agreement in consideration of retirement (buy their practice)
Confidentiality & Disclosure – confidential relationship with your client
- Who is your client? Inventor? Owner?
- Usually inventor’s employer is your client, not the inventor – different legal interests
- Not always, but often who pays your bills
- Disclosure – Must be honest to client; tell them what they need to know
Compensation – typically hourly, but contingency okay too as long as reasonable
- Can also take interest in patent/app
- CANNOT finance litigation, but can advance fees
Hiring & Firing – client can hire/fire without cause as long as POA does not have proprietary interest
- Fire with revocation by owner/inventor
Duty to Patent Office
- Rule 56 mandatory disclosures to patent office
- Not a duty to verify facts; only “reasonable inquiry”; unless “incredible utility” or fishy facts
- Must disclose unprivileged info about ethics violations
- Duty not to submit or present anything that is: not true, submitted for improper purpose (e.g., delay), violates PTO rules
- Errors discovered àmust fix within reasonable amount of time
Scope of Activities for Patent Agent who is Not a Lawyer
- No difference at PTO for patents
- Agents CANNOT file trademarks
- Attorneys (even if just registered in-state and not PTO) can file trademarks
- Both can practice PTO stuff in every state
- Attorney can only do non-PTO activities in state where admitted to bar
Advertising
- you can advertise your expertise when licensed
- you MUST use your name
Funds
- use a separate account – keep your funds SEPARATE from clients
- use a trust account for your earned money
Rule 11.18(b)
- Applies to anybody who submits something to PTO under their signature (inventor, owner, patent agent/attorney, expert, etc.), not just registered people
- Implicitly certifies that:
- Saying everything is true (or believed to be true with reasonable basis)
- After reasonable inquiry, party believes that: … not improper purpose, warranted by law and non-frivolous arguments, evidentiary support for factual allegations, etc.
- So must inquire into really unbelievable discoveries (“incredible utility” or changing fact pattern) with more than client’s word, but can accept client’s word for normal things
Final Rule (Federal Register notice)
ABA and USPTO Rule Comparison Chart