the new uspto rules of professional conduct - fish rules of professional... · the new uspto rules...

The New USPTO Rules

of Professional Conduct

Christopher Bowley, PhD Principal

Joseph Valentino, PhD Technology Specialist

October 24, 2013

Fish & Richardson Patent Webinar Series

I. Overview

II. Jurisdiction and Administration

III. History and Guidance

IV. Highlights – Competence, Confidentiality, Conflicts of Interest, Client Property, Candor

V. Comments on Rules/Changes Not Adopted

VI. Questions

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Patent Webinar Series

#fishwebinar Agenda

New USPTO Rules of Professional

Conduct: Overview

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• Purpose: To harmonize and modernize rules with ABA Model Rules of Professional Conduct

• Proposed Rules Published on 10/18/2012; Comment Period Ended 12/17/2012; New Rules Published 4/3/13, Effective 5/3/13

• Detailed info: • http://www.uspto.gov/ip/boards/oed/ethics.jsp, • William R. Covey, Deputy General Counsel for Enrollment and Discipline

• Previous rules of conduct and discipline found in 37 CFR Parts 10 and 11.

New rules remove Part 10 and add to Part 11 • First Significant Revision to Rules of Professional Conduct since 1985

Overview #fishwebinar


Jurisdiction and Administration

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• 35 U.S.C. § 2: USPTO governs the “recognition and conduct of

agents, attorneys, or other persons representing applicants or other parties before the Office.” • Enforced by Office of Enrollment and Discipline (OED), 37 CFR §11.2 • Disciplinary Jurisdiction, 37 CFR §11.19

• Grievance Process, 37 CFR §11.22

• File written grievance (Client, Colleague, USPTO, Other Sources) • OED investigates potential violations and determines whether to initiate

disciplinary proceeding

• Disciplinary Actions, 37 CFR §11.20-21 • Warning (non-public, not sanction) • Probation • Reprimand or Censure • Suspension from practice for an appropriate period of time • Exclusion from practice • Restitution

Jurisdiction and Administration #fishwebinar


History and Guidance

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• 1985 - USPTO adopted detailed rules which expressly incorporated many 1980 updates to the older 1970 model ABA Code

• 2003 – Proposal to replace the USPTO Code of Professional Responsibility with rules based on the modern ABA Model Rules of Professional Conduct (RPC)

• 2004 - Final adopted rules did not include a majority of the 2003 proposed revisions; largely dealt with computerized exam

• 2008, 2012 – Revised rules for disciplinary proceedings and maintenance fees

History #fishwebinar


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• Based on ABA Rules of Prof. Conduct: 49 states and the District of Columbia have adopted rules in some form or another. Exception: California

• “Comment” and “Annotation” sections of ABA Model Rules may also be used for guidance as to how to interpret the equivalent USPTO Rules of Professional Conduct

• Non-binding case law and opinions written by disciplinary authorities that have adopted the ABA RPC

Guidance


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Rule Comparison Chart

http://www.uspto.gov/ip/boards/oed/AbavsUSPTO.pdf

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• Section 1 (§§11.101-11.118): Client-Practitioner Relationship

• Section 2 (§§11.201, 11.203-11.205): Counselor

• Section 3 (§§11.301-11.307, 11-309): Advocate

• Section 4 (§§11.401-11.404): Transactions with Persons Other Than Clients

• Section 5 (§§11.501-11.507): Law Firms and Associations

• Section 7 (§§11.701-11.705): Information About Legal Services

• Section 8 (§§11.801-11.804): Maintaining the Integrity of the Profession

Sections


Highlights

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#fishwebinar

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• Competence (§ 11.101): A practitioner shall provide competent representation to a client. Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation.

• Compare § 11.7, which requires scientific and technical qualifications as requisite for registration

Highlights - Competence


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• Confidentiality of Information (§ 11.106): (a) A practitioner shall not reveal information relating to the representation of a client unless the client gives informed consent, the disclosure is impliedly authorized in order to carry out the representation . . ., or the disclosure is required by paragraph (c) of this section. (c) A practitioner shall disclose to the Office information necessary to comply with applicable duty of disclosure provisions. (Rule 56 and ?)

• What about confidential info from 2nd client?

Highlights - Confidentiality #fishwebinar


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• What about confidential info from 2nd client?

• Withdraw? New Rule 11.116: A practitioner shall not represent a client, or where representation has commenced, shall withdraw from the representation of a client if: (1) The representation will result in violation of the USPTO Rules of Professional Conduct or other law

• Under Rule 1.56, the duty to disclose “exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned”



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Highlights - Confidentiality


• What about confidential info from 2nd client? • ABA Model Rule 1.6, cmt. 12 (2012): “[I]f other law supersedes the rule,

paragraph (b)(6) permits disclosure necessary to comply with the law. Whether such a law supersedes Rule 1.6 is a question of law beyond the scope of these Rules.”

• 2006 N.C. Ethics Op. (2005-9): Lawyer for public company may reveal confidential information about corporate misconduct to SEC under permissive-disclosure regulation authorized by Sarbanes-Oxley Act, even if disclosure would otherwise be prohibited by state's ethics rules

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• Compare new § 11.106(a) with previous§ 10.57:

10.57(a) - “Confidence” refers to information protected by the attorney-client or agent-client privilege under applicable law. “Secret” refers to other information gained in the professional relationship that the client has requested be held inviolate or the disclosure of which would be embarrassing or would be likely to be detrimental to the client. 10.57(b) - [A] practitioner shall not knowingly: (1) Reveal a confidence or secret of a client.

Highlights - Confidentiality


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• Confidentiality of Information, Cont’d (§ 11.106): (b) A practitioner may reveal information relating to the representation of a client to the extent the practitioner reasonably believes necessary: (2) To prevent the client from committing a crime, fraud, or inequitable conduct before the Office that is reasonably certain to result in substantial injury to the financial interests or property of another and in furtherance of which the client has used or is using the practitioner’s services.



• Conflict of interest: Current clients (§§11.107-108): - (§11.108): Specific Rules (h) A practitioner shall not: (1) Make an agreement prospectively limiting the practitioner’s liability to a client for malpractice unless the client is independently represented in making the agreement.

• Previous§ 10.78 Limiting liability of a Client: A practitioner shall not attempt to exonerate himself or herself from, or limit his or her liability to, a client for his or her personal malpractice.

Highlights – Conflict of Interest #fishwebinar

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• Safekeeping property (§ 11.115): (a) . . . . Funds shall be kept in a separate account maintained in the state where the practitioner’s office is situated, or elsewhere with the consent of the client or third person. Where the practitioner’s office is situated in a foreign country, funds shall be kept in a separate account maintained in that foreign country or elsewhere with the consent of the client or third person.

Highlights – Client Property

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• Safekeeping property (§ 11.115(f)(4)-(5)): Includes added “safe harbor” provision for those complying with recordkeeping requirements of their state bar Includes provision encompassing patent agents and those with limited recognition who are employed by a law firm

Highlights – Client Property

#fishwebinar

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• Candor toward the tribunal (§ 11.303): (a) A practitioner shall not knowingly: (2) Fail to disclose to the tribunal legal authority in the controlling jurisdiction known to the practitioner to be directly adverse to the position of the client and not disclosed by opposing counsel in an inter partes proceeding, or fail to disclose such authority in an ex parte proceeding before the Office if such authority is not otherwise disclosed.

Highlights – Candor

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• Candor toward the tribunal (§ 11.303): - (e) In a proceeding before the Office, a practitioner shall disclose to the Office information necessary to comply with applicable duty of disclosure provisions. Reference to Duty of Disclosure under Rule 56

Highlights – Candor

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• No CLE requirement for practitioners

• No annual fees for practitioners to maintain their registrations

• No pro bono requirement

• Pursuant to AIA directive, PTO is currently working with IP associations to establish pro bono programs

• www.uspto.gov/aia_implementation/programs.jsp

Proposed Rules Not Adopted


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• Requirements of old rules are substantially the same but . . . do new rules unduly focus on the experience of patent attorneys at the expense of patent agents?

• Patent agents may have never taken a course on legal ethics, and have no have no state CLE requirements regarding legal ethics

• Rules are not entirely intuitive

Comments on Proposed USPTO Rules


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• New USPTO Rules of Professional Conduct

• Effective May 3, 2013

• 78 Federal Register 20179

• 37 CFR §§11.101-901, and other provisions

• New ethics rules based on ABA Model Rules of Professional Conduct

• Specific language tailored to the specialized nature of practice before the USPTO

Summary


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Thank You!

© Copyright 2013 Fish & Richardson P.C. These materials may be considered advertising for legal services under the laws and rules of professional conduct of the jurisdictions in which we practice. The material contained in this presentation has been gathered by the lawyers at Fish & Richardson P.C. for informational purposes only, is not intended to be legal advice and does not establish an attorney-client relationship. Legal advice of any nature should be sought from legal counsel. Unsolicited e-mails and information sent to Fish & Richardson P.C. will not be considered confidential and do not create an attorney-client relationship with Fish & Richardson P.C. or any of our attorneys. Furthermore, these communications and materials may be disclosed to others and may not receive a response. If you are not already a client of Fish & Richardson P.C., do not include any confidential information in this message. For more information about Fish & Richardson P.C. and our practices, please visit www.fr.com.

Christopher Bowley, PhD Principal

212-641-2295 [email protected]

Joseph Valentino, PhD Technology Specialist

212-641-2255 [email protected]

http://cl.exct.net/?ju=fe2a157577630775711675&ls=fdf315757263007575107875&m=fef91273766d05&l=fec417707c660175&s=fe3616717066057e751679&jb=ffcf14&t=

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