[Federal Register: December 12, 2003 (Volume 68, Number 239)]
[Proposed Rules]
[Page 69441-69562]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr12de03-23]
[[Page 69441]]
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Part II
Department of Commerce
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Patent and Trademark Office
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37 CFR Parts 1, 2, 10 and 11
Changes to Representation of Others Before the United States Patent and
Trademark Office; Proposed Rule
[[Page 69442]]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 2, 10 and 11
[Docket No.: 2002-C-005]
RIN 0651-AB55
Changes to Representation of Others Before the United States
Patent and Trademark Office
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The United States Patent and Trademark Office (Office or
USPTO) proposes to update the procedures regarding enrollment and
discipline. The Office also proposes to replace the current USPTO Code
of Professional Responsibility, which is based on the Model Code of
Professional Responsibility of the American Bar Association, with new
USPTO Rules of Professional Conduct, largely based on the Model Rules
of Professional Conduct of the American Bar Association.
DATES: To be ensured of consideration, written comments must be
received on or before February 10, 2004.
ADDRESSES: Comments should be sent by electronic mail over the Internet addressed to: ethicsrules.comments@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop OED-Ethics Rules, United
States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia
22313-1450 or by facsimile to (703) 306-4134, marked to the attention
of Harry I. Moatz. Although comments may be submitted by mail or
facsimile, the Office prefers to receive comments via the Internet. If
comments are submitted by mail, the Office would prefer that the
comments be submitted on a DOS formatted 3\1/2\-inch disk accompanied
by a paper copy. The comments will be available for public inspection
at the Office of Enrollment and Discipline, located in Room 1103,
Crystal Plaza 6, 2221 South Clark Street, Arlington, Virginia, and will
be available through anonymous file transfer protocol (ftp) via the
Internet (address: http://www.uspto.gov). Since comments will be made
available for public inspection, information that is not desired to be
made public, such as an address or telephone number, should not be
included in the comments.
FOR FURTHER INFORMATION CONTACT: Harry I. Moatz ((703) 305-9145),
Director of Enrollment and Discipline (OED Director), directly by
phone, or by facsimile to (703) 305-4136, marked to the attention of
Mr. Moatz, or by mail addressed to: Mail Stop OED-Ethics Rules, U.S.
Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-
1450.
SUPPLEMENTARY INFORMATION: At this time, nearly 28,000 individuals are
registered as patent attorneys and agents, of whom about 80% have
indicated that they are attorneys. The registered patent attorneys have
offices located in all fifty States and the District of Columbia. More
than 2,500 individuals applied for admission to the registration
examination given on October 18, 2000. At the same time, the
Martindale-Hubbell reports that there are more than 900,000 lawyers and
law firms listed in its legal directory. More than 17,000 attorneys are
members of the Intellectual Property Law Committee of the American Bar
Association. Any attorney who is a member in good standing of the bar
of the highest court of a State or the District of Columbia is eligible
to practice before the Office in trademark and other non-patent
matters. 5 U.S.C. 500(a). Forty-two of the bars have adopted the Model
Rules of Professional Conduct of the American Bar Association or a
modification thereof, and two have disciplinary rules which are a
combination of the Model Code and the Model Rules of Professional
Conduct of the American Bar Association. Adopting ethics rules that are
largely based on the Model Rules of Professional Conduct of the
American Bar Association would provide attorneys, as well as registered
patent agents, with consistent ethical standards, and large bodies of
both case law and ethics opinions.
This notice of proposed rule making sets out rules in three areas:
(1) Rules of general applicability, and rules governing the
recognition of individuals to practice as attorneys and agents before
the Office in patent, trademark, and other non-patent matters
(Sec. Sec. 11.1-11.18);
(2) Rules governing investigation and disciplinary proceedings for
possible violations of the Office Rules of Professional Conduct
(Sec. Sec. 11.19-11.62). Disciplinary proceedings can result in
reprimand, suspension or exclusion (disbarment) of individuals from
practicing before the Office who, after notice and opportunity for a
hearing, are found to have violated an imperative USPTO Rule of
Professional Conduct; and
(3) Rules setting out the proposed Office Rules of Professional
Conduct (Sec. Sec. 11.100-11.806).
These changes are intended to improve the Office's processes for
handling applications for registration, petitions, investigations, and
disciplinary proceedings. The changes also are intended to bring
standards of ethical practice before the Office into closer conformity
with the Rules of Professional Conduct adopted by the majority of
States, while addressing circumstances particular to practice before
the Office. As these environments change (e.g., by adoption of
amendments to the Model Rules of Professional Conduct of the American
Bar Association) the Office will consider whether to make further
changes to the rules.
This proposed rule making is being conducted under the auspices of
the General Counsel of the United States Patent and Trademark Office,
James Toupin (703) 308-2000, and the supervision of the OED Director,
Harry I. Moatz (703) 305-9145). They would appreciate feedback on the
overall rule making process in addition to any comments on the merits
of the proposed rules.
Table 1 shows the principal sources of the proposed rules relating
to (1) admission to practice of attorneys and agents in patent matters,
and (2) practice in trademark and non-patent matters.
Table 2 shows the principal sources of the rules proposed for
disciplinary proceedings.
Table 3 shows the principal sources of the rules proposed for the
Office Rules of Professional Conduct.
Discussion of Specific Rules:
Section 1.1 would be amended to add paragraph (4) to provide an
address for correspondence for the Office of Enrollment and Discipline
in enrollment, registration and investigation matters.
Section 1.4 would be amended to revise the references from
Sec. Sec. 10.18(b)(2), 10.18(c), and 10.23(c)(15) to Sec. Sec.
11.18(b)(2), 11.18(c), and 11.804(c)(i)(15), respectively.
Section 1.21 would be amended to revise one paragraph into two
distinct fees, add ten paragraphs to provide for ten new fees, as well
as to reserve paragraph (3), redesignate another paragraph and change a
section citation therein. These fees are intended to fund the costs of
the registration examination process, disciplinary system, and maintain
the roster of registered practitioners up-to-date. Bar disciplinary
activities are generally regarded as being in the interest of
maintaining the Bar's reputation for integrity and supporting the
willingness of potential clients to engage the services of
practitioners. The continual
[[Page 69443]]
updating of the USPTO roster is also in the interest of assuring that
registered practitioners are identified to the public they seek to
serve. The cost is currently met by funds from application, issue, or
maintenance fees. By adopting these fees to be paid by registered
practitioners, the costs of these activities are not passed on to
applicants. Thus, USPTO will recover the costs associated with these
activities from the practitioners instead of the public in general. The
funds would be directed to these activities and would not be diverted
to support other proposals. The fees are based on the status of the
registered practitioner.
The USPTO is revising the way in which its registration examination
is administered. Currently, the examination is administered twice a
year, using a unique set of questions each time. The USPTO is moving to
a frequently administered computer-based examination using a slate of
questions randomly selected from a large data bank of questions and
answers that will be publicly available. This change will make the
testing process more efficient and will benefit applicants by
permitting instant notification of test results, eliminating the
current approximately six weeks needed to report the results of a
paper-based examination. The computer-based examination will also
facilitate more frequent administration and permit the test to be given
simultaneously in many locations, thus reducing delays and travel
expenses for applicants. Paragraph 1.21(a)(1)(ii)(B) would increase the
examination fee to $450 for the test administered by the USPTO in order
to recover the full costs of the examination process. Paragraph
1.21(a)(1)(ii)(A) would introduce a reduced examination fee of $200 for
the test administered by a private sector entity. The $200 fee would
cover the costs of establishing and maintaining an up-to-date question
and answer data bank to be used in the computerized delivery of the
examination, but excludes the costs of actual test administration. This
$200 fee will apply where administrative testing arrangements are made
by a private sector entity. Applicants paying the $200 fee would
schedule the test with the private sector entity, and pay a service
fee, estimated to be $150, to the entity.
A registered practitioner in active status is one who is able to
represent clients and conduct business before the USPTO in patent
cases. To maintain active status, the practitioner would pay the annual
fee required under Sec. Sec. 1.21(a)(7)(i) and 11.8(d) and comply with
the continuing legal education (CLE) requirements under Sec. Sec.
11.12(a) and (e). With respect to the CLE requirement, an inactive or
administratively suspended practitioner would have to contact the OED
Director to be advised which CLE's to take.
A registered practitioner in inactive status would be prohibited
from representing clients and continuing to practice before the Office
in patent cases. Inactive status may be of an administrative nature
where the status is inconsistent with the role of a practitioner, as in
the cases of examiners working for the Office and judges. Inactive
status also may be voluntary, as in the case of practitioners who have
retired or are unable to continue their practice due to disability-
related matters but still desire to maintain a recognized professional
association with the USPTO. Practitioners with a disability may become
inactive.
A registered practitioner under administrative inactive status is
not responsible for payment of the annual fee, or complying with the
CLE requirements while in this status, but will have to complete the
continuing education requirements for restoration to active status. A
registered practitioner under voluntary inactive status is responsible
for paying a reduced annual fee and completing the CLE requirements
during the period of inactivation. For the purposes of this section,
the fee for a registered practitioner in voluntary inactive status is
25% of the fee for a registered practitioner in active status. If a
condition occurs that automatically terminates a practitioner's
administrative inactive status, e.g., separation from the USPTO, it
would be permissible for that practitioner to seek a voluntary inactive
status where the practitioner does not intend to represent clients and
practice before the Office, but still desires to maintain a
professionally recognized association with the Office.
A registered practitioner who is administratively suspended is one
who has failed to pay the annual fee required under Sec. 11.8(d) or to
comply with the continuing legal education requirements under
Sec. Sec. 11.12(a) and (e). Registered practitioners under active
status can be administratively suspended under failure to comply with
payment of the annual fee or failure to meet the CLE requirements.
Registered practitioners under voluntary inactive status can only be
administratively suspended for failure to comply with payment of the
reduced annual fee.
Paragraph 1.21(a)(5)(i) would be added for a new fee for review of
a decision by the OED Director. Paragraphs 1.21(a)(7) (i) and (ii)
would be added for a new annual fee for registered patent attorneys and
agents based on their active or inactive status. Paragraphs 1.21(a)(7)
(iii) provides for a new fee due with a request from a practitioner
seeking restoration to active status from inactive status. Paragraph
1.21(a)(7) (iv) would be added for payment of the balance due on the
annual fee upon restoring active status to a registered practitioner in
inactive status. Paragraph 1.21(a)(8) would be added for a new annual
fee for individuals granted limited recognition. An individual granted
limited recognition would not be eligible for voluntary inactive
status. Paragraph 1.21(a)(9) would be added to set fees associated with
the administrative suspension of a registered practitioner. Paragraph
1.21(a)(9)(i) would be added for a new fee for delinquency in payment
of the annual fee or completing the required CLE requirements.
Paragraph 1.21(a)(9)(ii) would be added for a new fee for reinstatement
following administrative suspension. Paragraph 1.21(a)(5) has been
redesignated (a)(5)(ii), and section citation of 10.2(c) would be
changed to Sec. 11.2(d). Redesignated (a)(5)(ii), and section citation
of 10.2(c) would be changed to Sec. 11.2(d). Paragraph 1.21(a)(10)
would be added for a fee paid on application by a person for
recognition or registration after disbarment, suspension, or
resignation pending disciplinary proceedings in any other jurisdiction;
on petition for reinstatement by a person excluded, suspended, or
excluded on consent from practice before the Office; on application by
a person for recognition or registration who is asserting
rehabilitation from prior conduct that resulted in an adverse decision
in the Office regarding the person's moral character; and on
application by a person for recognition or registration after being
convicted of a felony or crime involving moral turpitude or breach of
fiduciary duty. Paragraph 1.21(a)(11) would be added for a paper
version of the continuing training program and furnished narrative.
Paragraph 1.21(a)(12) would be added for Application by Sponsor for
Pre-approval of a Continuing Education Program.
Paragraph (a)(5) of Sec. 1.21 would be revised to add two
paragraphs. Paragraph (i) would introduce a fee for review by the OED
Director of a decision by a staff member of the Office of Enrollment
and Discipline. Section
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1.21(a)(5) would be revised and redesignated (a)(5)(ii).
Paragraph (a)(6) of Sec. 1.21 would be eventually revised by
deleting the fee for regrade and reserve the omitted paragraph.
Paragraph (a)(7) of Sec. 1.21 is proposed to be added to provide
for a new annual fee paid by active and voluntary inactive registered
patent attorneys and agents.
Paragraph (a)(8) of Sec. 1.21(a)(8) is proposed to be added to
provide for a new annual fee paid by individuals granted limited
recognition to practice before the Office.
Paragraph (a)(9) of Sec. 1.21 is proposed to be added to provide
for new fees associated with delinquency resulting in administrative
suspension of a registered practitioner, and reinstatement of the
practitioner.
Paragraph (a)(12) of Sec. 1.21 is proposed to be added to provide
for a fee to be paid by a sponsor upon submitting to the OED Director
all information called for by the ``Application by Sponsor for Pre-
approval of a Continuing Education Program.''
Section 1.31 would be amended to revise the references from
Sec. Sec. 10.6 and 10.9 to Sec. Sec. 11.6 and 11.9, respectively.
Section 1.33(c) would be amended to revise the references from
Sec. Sec. 10.5 and 10.11 to Sec. Sec. 11.5 and 11.11, respectively.
Section 1.455 would be amended to revise the reference from Sec.
10.10 to Sec. 11.10.
Section 2.11 would be amended to revise the reference from Sec.
10.14 to Sec. 11.14.
Section 2.17(a) would be amended to revise the reference from
Sec. Sec. 10.1 and 10.14 to Sec. Sec. 11.1 and 11.14, respectively.
Section 2.17(c) would be amended to revise the reference from Sec.
10.1 to Sec. 11.1.
Section 2.24 would be amended to revise the reference from Sec.
10.14 to Sec. 11.14.
Section 2.161(b)(3) would be amended to revise the reference from
Sec. 10.1 to Sec. 11.1.
Section 11.1 would set out definitions of terms used in Part 11.
The defined terms include: affidavit, application, attorney, belief,
consent, consult, differing interests, employee of a tribunal, firm,
fraud, full disclosure, giving information, hearing officer, knowingly,
law clerk, legal counsel, legal profession, legal service, legal
system, matter, OED Director, Office, partner, person, practitioner,
proceeding before the Office, professional legal corporation,
reasonable, reasonably should know, registration, respondent, secret,
solicit, state, substantial, tribunal, and United States.
In the proposed rules, the word ``individual'' is used to mean a
natural person, as opposed to a juristic entity. The definition of
``person'' is similar to the definition of ``person'' in 1 U.S.C. 1.
``Attorney'' is defined in the same manner as the term is used in 5
U.S.C. 500(b). The proposed definition includes an attorney who is a
member of one bar in good standing, and ``under an order of any court
or Federal agency suspending, enjoining, restraining, disbarring or
otherwise restricting'' the attorney from practice before the bar of
another state or Federal agency. The broad definition is believed
necessary inasmuch as 5 U.S.C. 500(b) provides that ``an individual who
is a member in good standing of the bar of the highest court of a State
may represent a person before an agency * * *.'' Though an attorney
suspended in one state and a member in good standing in another state
could represent a person before the Office, nevertheless the grounds
for suspension in one state may give rise to grounds for suspending the
attorney from practice before the Office, 5 U.S.C. 500(d)(2), after
notice and opportunity for a hearing. See Selling v. Radford, 243 U.S.
46 (1917).
The phrase ``full disclosure'' is used to define the explanation a
practitioner must give a client regarding potential and actual
conflicts of interest. The explanation is based on discussions of full
disclosure found in Opinion No. 1997-148, Standing Committee on
Professional Responsibility and Conduct (California), and in In re
James, 452 A.2d 163 (D.C. App. 1982).
Section 11.2, like current Sec. 10.2, would continue to provide
for the OED Director. The proposed rule sets out the duties of the OED
Director, including receiving and acting upon applications, conducting
investigations concerning the moral character and reputation of
individuals seeking registration, conducting investigations of possible
violations by practitioners of the Office Rules of Professional
Conduct, initiating disciplinary proceedings, dismissing complaints or
closing investigations, and filing with the Director of the United
States Patent and Trademark Office (``USPTO Director'') certificates of
convictions of practitioners. Except as otherwise noted, any final
decision of the OED Director refusing to register an individual, refund
a fee, recognize an individual, or reinstate a suspended or excluded
practitioner would be reviewable by the USPTO Director. A fee, set
forth in 37 CFR 1.21(a)(5), would be charged.
Section 11.3 would provide for waiver of the rules and qualified
immunity.
Paragraph (a) of Sec. 11.3, like current Sec. 10.170, would
provide for suspension, except as provided in section (b), in an
extraordinary situation, when justice requires, of any requirement of
the regulations of this part which is not a requirement of the
statutes.
Paragraph (b) of Sec. 11.3 would prohibit waiver of any provision
of the Office Rules of Professional Conduct, Sec. Sec. 11.100 through
11.806; the disciplinary jurisdiction of the rules, Sec. 11.19; or the
procedures for interim suspension and disciplinary proceeding based on
reciprocal discipline or conviction of a serious crime, Sec. 11.24.
Paragraph (c) of Sec. 11.3, like current Sec. 10.170(b), would
provide that a petition to waive a rule will not stay a disciplinary
proceeding unless ordered by the USPTO Director or a hearing officer.
Paragraph (d) of Sec. 11.3 would provide a qualified privilege for
complaints submitted to the OED Director. This privilege should arise
from the necessity to reduce to the extent possible any probability
that an ethics complainant having honest cause to complain may be
intimidated by a practitioner into not filing a complaint. Some states
recognize that a complainant has absolute immunity for filing a
complaint regardless of the outcome of the proceeding. See Drummond v.
Stahl, 127 Ariz. 122, 618 P.2d 616 (Ct. App. Div 1 1980), cert. denied,
450 U.S. 967, 101 S.Ct. 1484, 67 L. Ed. 2d 616 (1981); Katz v. Rosen,
48 Cal. App. 3d 1032, 121 Cal. Rptr. 853 (1st. Dist. 1975); Field v.
Kearns, 43 Conn. App. 265, 682 A.2d 148 (1996), cert. denied, 239 Conn.
942, 684 A.2d 711 (1996); Jarvis v. Drake, 250 Kan. 645,830 P.2d 23
(1992); Kerpelman v. Bricker, 23 Md. App. 628, 329 A.2d 423 (1974);
Netterville v. Lear Siegler, Inc., 397 So.2d 1109 (Miss. 1981); Sinnett
v. Albert, 188 Neb. 176, 195 N.W.2d 506 (1972); Weiner v. Weintraub, 22
N.Y.2d 330, 292 N.Y.S.2d 667, 239 N.E.2d 540 (1968); Elsass v. Tabler,
131 Ohio App.3d 66, 721 N.E.2d 503 (1999); McAfee v. Feller, 452 S.W.2d
56 (Tex. Civ. App. Houston 14th Dist. 1970). Complaints filed with a
state bar committee are absolutely privileged as communications made in
a quasi-judicial proceeding. E.g., Goldstein v. Serio, 496 So.2d 412
(La. Ct. App. 4th Cir. 1986), writ denied, 501 So.2d 208, 209 (La.
1987).
Under English common law, the ``absolute privilege'' from
defamation actions that attaches to all statements and testimony by
witnesses, judges, and parties in the course of any judicial proceeding
has been held to apply to
[[Page 69445]]
testimony and statements made in the course of solicitor disciplinary
proceedings. See Addis v. Crocker, 1 Q.B. 11, 2 All E.R. 629 CA. See
Halisbury's Laws of England, Libel and Slander 28:98-101. Several
states provide absolute privilege for complaints and testimony in
ethics proceedings through statutes, court rules, or rules of attorney
discipline. See Alaska Attorney Rules, Disciplinary Enforcement Rule 9
(Supp.1983); Ariz. Rules Regulating Conduct of Attorneys, Rule XII
(Michie Supp. 1983); Cal. Art. 5.5 Sec. 6094 (1984); Colo.R.C.P. Rule
259(C) (Michie Supp. 1983); Stone v. Rosen, 348 So. 2d 397
(Fla.Dist.Ct.App. 3 1977); Ga. Code App. to Title 9, Part IV, State Bar
Rule 4-221(g); Hawaii S. Ct. Rule 16.7 (1992); La. Rev. Stat. Ann.
Sec. 37 ch. 4 App., Art. of Incorp. Of La. State Bar Ass'n., Art. 15
Sec. 13 (West Supp. 1983); Minn. Rules of Law: Prof. Resp., Rule 21
(1977); Miss. Code Ann. Sec. 73-3-345 (1992); N.J.S.Ct.Rule 1:20-
11(b)(1984); Sullivan v. Crisona, 283 N.Y.S.2d 62 (Sup. Ct. 1967)
(interpreting N.Y. Judiciary Law Sec. 90); N.D. Cent. Code Sec. 27-
14-03 (1974); Okla. Ct. Rules Governing Disciplinary Proc., Chap. 1,
App. 1-A, Rule 5, Sec.5.4 (1981); S.C. Rules on Disciplinary Procedure
for Att'ys Sec. Sec. 11, 26 (Lawyers Coop. Supp. 1983) (complaints may
be subject to contempt sanctions and injunction against malicious
filing, but privilege prevents lawsuits predicated on filing or
testimony); S.D. Codified Laws Ann. Sec. 16-19-30 (1994); W. Va. State
Bar Bylaws Art. VI Sec. 43 (1982); Wyo. Ct. Rules, Disciplinary Code
for the Wyo. State Bar, Rule VI (1973).
Other jurisdictions provide qualified immunity or privilege. See
Ind. S.Ct. Rules Part VI, Admission & Discipline Rule 23 Sec. 20
(1983) (immunity in absence of malice); Kan.S.Ct.Rule 223 (same
privilege as attaches in other judicial proceedings); Me. Bar Rule
7(f)(1) (1983) (immunity in absence of malice); Neb.S.Ct. Rule 106
(1983) (absolute privilege for good faith complainant); In re Proposed
Rules Relating to Grievance Pro., 341 A.2d 272 (N.H. 1975) (approving
proposed rules effective July 25, 1975, Rule 10 providing immunity for
statements made in good faith).
Communications made to licensing agencies in connection with an
application for issuance, renewal, or revocation of a license have
frequently been held to be entitled to absolute privilege. Alagna v.
New York & Cuba Mail S.S. Co., 155 Misc. 796 279 NYS 319 (1935)
(complaint to Federal Communications Commission complaining of conduct
of licensed radio operators held absolutely privileged). Communications
to Federal agencies responsible for protecting the public are
privileged. See Holmes v. Eddy, 341 F.2d 477 (CA 4 1965) (holding
communication to the Securities and Exchange Commission did not amount
to defamation since Commission had statutory duty to protect public
from frauds through stock issues, and communication was treated as
confidential and not disclosed until beginning of court action);
Riccobene v. Scales, 19 F.Supp 2d 577 (N.D. W. Va. 1998) (statements by
attorney, representing Army officer's wife, to officer's superior made
in course of representing the wife, are absolutely privileged as they
were intended to obtain Army's help in ending domestic abuse, and Army
had clear interest in receiving reports of domestic violence committed
by soldiers).
A person filing a complaint with the Office is proscribed from
providing materially false written statements. Under 18 U.S.C 1001(a)
criminal penalties are provided for whoever, in any matter within the
jurisdiction of the Office ``knowingly and willfully * * * (2) makes
any materially false, fictitious, or fraudulent statement or
representation; or (3) makes or uses any false writing or document
knowing the same to contain any materially false, fictitious, or
fraudulent statement or entry.''
The Office is responsible for protecting the public from persons,
agents and attorneys demonstrated to be ``incompetent or disreputable,
or guilty of gross misconduct, or who does not comply with the
regulations established under section 2(b)(2)(D) of'' the Patent
Statute. 35 U.S.C. 2(b)(2)(D). The proposed rule provides potential
complainants with appropriate notice of the qualified immunity while
enabling the Office to fulfill its responsibility.
Recognition To Practice Before the USPTO
Section 11.4, like current Sec. 10.3, would provide for a
Committee on Enrollment, which will advise the OED Director in
connection with the Director's duties under Sec. 11.2(b)(2).
Section 11.5 would provide for keeping a register of attorneys and
agents recognized to practice before the Office in patent matters, and
a definition of practice before the Office.
Paragraph (a) of Sec. 11.5, like current Sec. 10.5, would
continue to provide for maintaining a single register of attorneys and
agents registered to practice before the Office. The proposed rule
would conform to actual practice.
Paragraph (b) of Sec. 11.5 would add a new concept for
disciplinary and non-disciplinary matters. The paragraph introduces
definitions for practice before the Office broadly, as well as practice
before the Office in patent matters, and practice before the Office in
trademark matters. The proposed broad definition of practice before the
Office is similar to the definition of ``practice'' adopted by the
Internal Revenue Service. 31 CFR 10.2(e). Practice before the Office
would not include the physical or electronic delivery of documents to
the Office.
The definition of practice before the Office in patent matters is
derived from Sperry v. Florida, 373 U.S. 379, 137 USPQ 578 (1963). In
Sperry, the Supreme Court found that ``preparation and prosecution of
patent applications for others constitutes the practice of law.'' The
Court recognized that ``[s]uch conduct inevitably requires the
practitioner to consider and advise his clients as to the patentability
of their inventions under the statutory criteria, 35 U.S.C. 101-103,
161, 171, as well as to consider the advisability of relying upon
alternative forms of protection which may be available under state law.
It also involves his participation in the drafting of the specification
and claims of the patent application, 35 U.S.C. 112, which this Court
long ago noted `constitute[s] one of the most difficult legal
instruments to draw with accuracy,' Topliff [hairsp][hairsp]v. Topliff,
145 U.S. 156, 171. And upon rejection of the application, the
practitioner may also assist in the preparation of amendments, 37 CFR
1.117-1.126,\1\ which frequently requires written argument to establish
the patentability of the claimed invention under the applicable rules
of law and in light of the prior art. 37 CFR 1.119.'' Sperry, 373 U.S.
at 383, 137 USPQ at 579.
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\1\ 37 CFR 1.117-1.119, and 1.122-1.124 no longer exist.
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Consistent with the foregoing, courts in several jurisdictions have
held the preparation of patent applications by unregistered individuals
to be the unauthorized practice of law. See In re Amalgamated
Development Co., Inc., 375 A.2d 494, 195 USPQ 192 (D.D.C. 1977), cert.
denied, 434 U.S. 924 (1977); People v. O'Brien, 142 USPQ 239 (N.Y.
1964); Cowgill v. Albright, 307 N.E. 2d 191, 191 USPQ 103 (Ct. App.
Ohio 1973); and Virginia v. Blasius, 2 USPQ2d 1320 (Va. Cir. Ct. 1987).
In Ohio, the preparation, filing and prosecution of patent
applications before the Office has been recognized as the practice of
law. Formal Opinion 91-25 (1991) of the Board of Commissioners on
Grievances and Discipline of the Ohio Supreme Court.
[[Page 69446]]
The definition of practice before the Office in trademark matters
is derived in part from disciplinary cases concerning attorneys engaged
to prepare and prosecute trademark matters. See Attorney Grievance
Commission of Maryland v. Harper, 477 A.2d 756 (Md. 1984) (holding
attorney neglected legal matter by failing to prosecute filed trademark
application); State of Nebraska v. Gregory, 554 N.W.2d 422 (Neb. 1996)
(holding attorney did not competently act or zealously represent a
client by failing to file a trademark application); Office of
Disciplinary Counsel v. Frease, 660 N.E.2d 1156 (Ohio 1996) (holding
attorney neglected legal matter entrusted to him when he did not file
applications for trademark registration). The definition is also
derived from case law involving unauthorized practice of law wherein a
layperson offered trademark registration services. See Statewide
Grievance Committee v. Goldstein, 1996 Conn. Super. LEXIS 3430 (Conn.
Super. 1996) (enjoining layperson from advertising, offering to
complete, and completing blank legal documents for ``areas commonly
understood to be the practice of law including * * * trademark and/or
patent,'' soliciting information from customers and using the
information ``to select, prepare or complete legal documents,'' and
``providing written and/or oral instructions to customers advising them
what to do with their legal documents.'').
The definition of practice before the Office also includes private
conduct relating to good character and integrity essential for a
practitioner in patent, trademark, or other non-patent law matters. The
definition is derived from case law disciplining attorneys for
misconduct not related to the practice of law. Any misbehavior, private
or professional, that reveals a lack of good character and integrity
essential for a person to practice as an attorney constitutes a basis
for discipline. Matter of Hasbrouck, 657 A.2d 878 (N.J. 1995); In re
LaDuca, 140, 299 A.2d 405 (N.J. 1973). That a person's activity does
not arise from a lawyer-client relationship, that the behavior is not
related to the practice of law or that the offense is not committed in
the attorney's professional capacity is immaterial. In re Suchanoff,
460 A.2d 642 (N.J. 1983); In re Franklin, 365 A.2d 1361 (N.J. 1976).
Section 11.6, like current Sec. 10.6, would provide for
registration of individuals to practice before the Office in patent
matters.
Paragraphs (a) and (b) of Sec. 11.6 would provide for registration
of attorneys and agents, respectively. Citizens of the United States
could be registered regardless of their residence. The OED Director
could register resident aliens, under appropriate circumstances.
Registration of permanent resident aliens would be consistent with In
re Griffiths, 413 U.S. 717 (1973) (permanent resident alien entitled to
be admitted to Connecticut Bar notwithstanding status as alien). See
also Raffaelli v. Committee of Bar Examiners, 496 P.2d 1264 (Cal. 1972)
and Application of Park, 484 P.2d 1264 (Alas. 1971). The Office
currently registers permanent resident aliens. See In re Bhogaraju, 178
USPQ 628 (Comm'r Pat. 1973); In re Bramham, 181 USPQ 723 (Comm'r Pat.
1974); and In re Keen, 187 USPQ 477 (Comm'r Pat. 1975).
The proposed rules would restrict circumstances under which an
alien could be registered. Registration would be precluded if the
practice of patent law before the Office is inconsistent with the terms
of any visa under which the alien is admitted to and continues to
reside in the United States. Registration would be precluded, for
example, when the visa petition does not describe that the alien as
being authorized to be employed in the capacity of representing patent
applicants before the Office. See In re Richardson, 203 USPQ 959
(Comm'r Pat. 1979) (alien admitted to U.S. with H-3 visa for training
could not practice patent law under terms of the visa), and In re
Mikhail, 202 USPQ 71 (Comm'r Pat. 1976) (alien admitted to U.S. on B-1/
B-2 visa and visiting the U.S. temporarily for business or pleasure
could not practice under the terms of the visa). It is nevertheless
appropriate for some aliens to be granted limited recognition under
Sec. 11.9. See In re Messulam, 185 USPQ 438 (Comm'r Pat. 1975)
(granting limited recognition to alien admitted to U.S. on L-1 visa for
purpose of rendering service to a single company for whom the alien had
previously worked abroad and who would remain in the U.S. temporarily).
See also In re Gresset, 189 USPQ 350 (Comm'r Pat. 1976).
Paragraph (c) of Sec. 11.6, like current Sec. 10.6(c), would
continue to provide for registration of foreign patent agents on the
basis of substantial reciprocity. Paragraph (c) would add procedures
for removing a patent agent's name from the register if the patent
agent is no longer registered in good standing before the patent office
of the country in which he or she resides, or no longer resides in the
foreign country. The procedures would avoid any necessity of going
through an administrative proceeding.
Section 11.7, like current Sec. 10.7, would set forth the
requirements for registration.
Paragraphs (a)(1) and (a)(2) of Sec. 11.7, like current Sec.
10.7(a), would continue to require an individual to apply for
registration, and establish possession of good moral character, as well
as legal, scientific and technical qualifications, and competence to
advise and assist patent applicants.
Paragraph (a)(3) of Sec. 11.7 would explicitly place the burden of
proof of good moral character and reputation on the applicant, and
provide ``clear and convincing'' as the standard of proof.
Paragraph (b)(1) of Sec. 11.7, like current Sec. 10.7(b), would
continue to require an individual to take and pass a registration
examination in order to practice in patent matters before the Office.
Paragraph (b)(2) of Sec. 11.7 would identify components of a
complete registration application, give an individual submitting an
incomplete application 60 days from the notice to file a complete
application, and require individuals to update their applications
wherever there is an addition to or change to information previously
furnished with the application.
Paragraph (c) of Sec. 11.7 would allow for a petition to the OED
Director from any action refusing to register anindividual, refusing to
admit an individual to the registration examination, refusing to
reinstate an individual, or refusing to refund or defer any fee. The
petition would be accompanied by the fee set forth in Sec. 1.21(a)(5).
Paragraph (d) of Sec. 11.7, like current Sec. 10.7(b), would
continue to provide for waiver of the examination for former patent
examiners. Unlike Sec. 10.7(b), waiver no longer would be available
(except for a grandfathering provision) merely upon successfully
serving in the patent examining corps for four years. Paragraph (d)
would introduce new conditions for waiver of the registration
examination for former patent examiners and expand the occasions for
waiving the examination for other Office employees.
Currently, the requirement to take the examination may be waived in
the case of any individual who has actively served for at least four
years in the patent examining corps of the Office. The Office provides
newly hired examiners with initial training. Thereafter, training
provided by the Office is received on the job, or in more advanced
formal training courses. Primary patent examiners are examiners who the
Office has certified as having legal competence to act with a minimum
of oversight. The Office also gives primary examiners a certificate
granting authority to negotiate with
[[Page 69447]]
practitioners. Before an examiner is promoted to primary patent
examiner, a group of patent applications that he or she has examined is
reviewed for competence and compliance with rules and procedures.
However, no test is administered to ascertain the examiner's knowledge
of patent law, practice and procedure. After an examiner achieves
primary status, there is no periodic testing/training to ensure that
the individual maintains an expected level of competency in law,
regulations and practice and procedures. Currently, subsequent training
takes place in the form of lectures or memoranda following changes to
the patent law and/or regulatory changes.
To ensure competence the Office is instituting a formal
certification and recertification program for patent examiners, in
keeping with its 21st Century Strategic Plan. The program will require
examiners being promoted to grade GS-13 to pass a competency
examination based on the examination taken by persons seeking to be
registered as a patent practitioner.
Also, patent examiners, like licensed practitioners, would be
required to receive training and pass recertification tests to update
and maintain competence and proficiency in patent law, practices and
procedures.
The proposed rule would provide for waiver of the registration
examination for two groups of former patent examiners who were serving
in the patent examining corps at the time of their separation.
Paragraph (d)(1) of Sec. 11.7 would address former patent
examiners who, by a date to be determined, had not actively served four
years in the patent examining corps, and who were serving in the corps
at the time of their separation. The registration examination would be
waived for a former examiner if he or she met four conditions. The
former examiner must have (i) actively served in the patent examining
corps of the Office, (ii) received a certificate of legal competency
and negotiation authority; (iii) been rated, after receiving the
certificate of legal competency and negotiation authority, at least
fully successful in each quality performance element of his or her
performance plan for the last two complete fiscal years as a patent
examiner, and (iv) not have been under an oral or written warning
regarding the quality performance elements at the time of separation
from the patent examining corps.
Paragraph (d)(2) of Sec. 11.7 would address former patent
examiners who, by a date to be determined, have actively served four
years in the patent examining corps, and who were serving in the corps
at the time of their separation. The examination would be waived for
the former examiner if he or she meets three conditions. The former
examiner must (i) have actively served for at least four years in the
patent examining corps of the Office by the date to be determined, have
been rated at least fully successful in each quality performance
element of his or her performance plan for the last two complete fiscal
years as a patent examiner in the Office; and (iii) not have been under
an oral or written warning regarding the quality performance elements
at the time of separation from the patent examining corps.
Requiring that an examiner be rated at least fully successful in
the quality performance elements of his or her performance plan is in
accord with prior practice. Former examiners, who upon separation from
the Office, were rated unacceptable for quality performance elements
have been required to take the registration examination. Accord,
Commissioner's Decision, leg.01.pdf, posted on the Office Web site as
http://www.uspto.gov/web/offices/com/sol/ foia/oed/legal/leg01.pdf.
Paragraph (d)(3) of Sec. 11.7 would address certain former Office
employees who were not serving in the patent examining corps upon their
separation from the Office. The examination would be waived for a
former Office employee meeting four requirements. The former employee
must demonstrate by petition that he or she possesses the necessary
legal qualifications to render to patent applicants and others valuable
service and assistance in the preparation and prosecution of their
applications or other business before the Office by showing that (A) he
or she has exhibited comprehensive knowledge of patent law equivalent
to that shown by passing the registration examination as a result of
having been in a position of responsibility in the Office in which he
or she: (i) Provided substantial guidance on patent examination policy,
including the development of rule or procedure changes, patent
examination guidelines, changes to the Manual of Patent Examining
Procedure, or development of training or testing materials for the
patent examining corps; or (ii) represented the Office in patent cases
before Federal courts; and (B) was rated at least fully successful in
each quality performance element of his or her performance plan for the
position for the last two complete rating periods in the Office, and
was not under an oral warning regarding the quality performance
elements at the time of separation from the Office.
Paragraph (d)(4) of Sec. 11.7 would provide additional conditions
for waiver of the examination for each individual covered in paragraphs
(d)(1) through (d)(3). To be eligible for consideration for waiver, the
individual must file a complete application within two years of
separation from the Office, together with the fee required by Sec.
1.21(a)(1)(i). All other individuals and former examiners filing an
application or paying a fee more than two years after separation from
the Office would be required to take and pass the examination in order
to demonstrate competence to represent applicants before the Office. If
the examination is not waived, the individual or former examiner also
would have to pay the examination fee required by Sec. 1.21(a)(1)(ii)
within 30 days of notice.
Paragraph (e) of Sec. 11.7 would eliminate the provision for
regrade of an examination. The current rule requires the Office to
treat each regrade request individually. Candidates requesting regrade
seek, in effect, individualized regrading. Individualized regrading can
promote the occurrence of arbitrary and capricious decisions.
The standard for review of the grading of the registration
examination is ``whether the officials of the Patent Office acted
fairly and without discrimination in the grading of the plaintiff's
examination, pursuant to a uniform standard.'' See Cupples v. Marzall,
101 F.Supp. 579, 583 (D.D.C. 1952). The Office uses a set of model
answers in grading examination answers. The use of Office Model Answers
to grade the examination satisfies the Cupples standard ``because it
provides a set of uniform standards by which all examinations can be
fairly judged and is therefore not arbitrary and capricious.'' Worley
v. USPTO, 2000 U.S. Dist. LEXIS 16992, 16997 (D.D.C. 2000). In
contrast, ``permitting individualized and subjective regrading upon
request would promote, not reduce, the likelihood that the Office would
make arbitrary and capricious decisions regarding who passes and fails
the Patent Bar examination.'' Worley, at 16998. See also Kyriazis v.
Dickinson, No. 99-2299, slip op. at 7 (D.D.C. Dec. 8, 2000) (``this
Court rejects Plaintiff's argument that a regrade of question 16 of the
examination should consist of an individual determination as to whether
Mr. Kyriazis's explanation for his answer constitutes the correct
interpretation of patent law, rather than a determination whether the
grading conformed with the PTO's Model Answers'').
To treat each regrade request individually requires dedication of
[[Page 69448]]
considerable resources. Further, such regrades require release of both
the questions and Model Answers. In turn, release of the questions and
answers necessitates preparation of new examinations twice each year.
Producing new examinations twice each year requires dedication of
considerable resources. The Office is already pressed for staff and
time to provide these services. The Office intends to change the
delivery of the registration examination. The examination would no
longer be administered twice a year in a paper and pencil format.
Instead, a private sector party would deliver the examination at
computer terminals at that party's test sites. It is anticipated that
the examination would be administered each business day. The
examination would not be delivered to applicants on the Internet. The
registration examination is and will continue to be a multiple choice
examination. The Office intends to develop a databank of multiple
choice questions in following years that can be reused in subsequent
examinations. The source of the questions and answers would be the
patent laws, rules and procedures as related in the Manual of Patent
Examining Procedure (MPEP) and policy statements issued by the Office.
The examination would be ``open-book'' in the sense that the MPEP and
policies would be accessible at the same computer terminals where the
examination is taken. Paper forms of the MPEP or policies could not be
brought into the private sector party's test site. New questions would
be introduced as MPEP revisions or policy statements introduce new
policies, rules, procedures, or statutory law changes. The USPTO would
announce when questions are added to the data base addressing revisions
of the MPEP or new policy statements. Questions would be retired as
necessary and consistent with the changes. Reuse of questions could
reduce the time and resources needed to develop the examination each
time it is given. To reuse questions and reduce pressure on the staff,
it would be necessary to cease publication of the questions and the
corresponding answers. This would preserve the fairness of the test for
later applicants.
The Multistate Bar Examination (MBE), like the registration
examination, is a multiple choice examination. Questions on the MBE are
reused in later years. An individual may review on his own MBE
examination papers under the guidelines established by the National
Conference of Bar Examiners, i.e., under supervision and without taking
notes. See Fields v. Kelly, 986 F.2d 225, 227 (8th Cir 1993). Under
proposed paragraph (g), an unsuccessful applicant would schedule an
opportunity to review, i.e., inspect the examination questions and
answers he or she incorrectly answered under supervision without taking
notes. The questions could not be copied. This would be the same as the
guidelines established by the National Conference of Bar Examiners for
inspection of the MBE.
Under proposed paragraph (e), an unsuccessful applicant satisfying
the admission requirements would have a right to sit for future
examinations. The due process clause of the Fourteenth Amendment does
not require that unsuccessful applicants be given the opportunity for a
regrade. The applicant is afforded due process by permitting him or her
to sit for the examination again. See Lucero v. Ogden, 718 F.2d 355
(10th Cir. 1983), cert. denied, 465 U.S. 1035, 79 L. Ed. 2d 706, 104
S.Ct. 1308 (1984) (``Courts have consistently refrained from entering
the arena of regrading bar examinations when an unqualified right of
reexamination exists.''); Tyler v. Vickery, 517 F.2d 1089, 1103 (5th
Cir. 1975), cert. denied, 426 U.S. 940, 49 L. Ed. 2d 393, 96 S.Ct. 2660
(1976); Poats v. Givan, 651 F.2d 495, 497 (7th Cir. 1981); Davidson v.
State of Georgia, 622 F.2d 895, 897 (5th Cir. 1980); Sutton v. Lionel,
585 F.2d 400, 403 (9th Cir. 1978); Whitfield v. Illinois Board of Bar
Examiners, 504 F.2d 474, 478 (7th Cir. 1974) (Constitution does not
require an unsuccessful applicant be permitted to see his examination
papers and to compare them with model answers or answers of successful
applicants); Bailey v. Board of Law Examiners, 508 F.Supp. 106, 110
(W.D. Tex. 1980); and Singleton v. Louisiana State Bar Ass'n., 413
F.Supp. 1092, 1099-1100 (E.D. La. 1976).
Limiting access to the questions would not deny the unsuccessful
applicant equal protection of the laws. Inasmuch as some of the
questions appear in following years, the questions must be kept secret
in order to preserve the fairness of the test for later applicants. See
Fields v. Kelly, 986 F.2d at 227. An unsuccessful applicant also is not
deprived of a property right without due process by limiting access to
the questions. Providing an opportunity to review the examination under
supervision without taking notes affords the applicant a hearing at the
administrative level. Id. at 228.
The Administrative Procedures Act provides procedural protections
in matters involving an ``adjudication,'' which includes licensing. 5
U.S.C. 554. However, the Act also provides that these protections are
not required where there is involved ``proceedings in which decisions
rest solely on inspections, tests, or elections * * *. ``5 U.S.C.
554(a)(3). This subsection implicitly recognizes that ``where
examinations are available, further procedural protections are
unnecessary. See also 1 K. Davis, Administrative Law Treatise Sec.
7.09 (1958).'' Whitfield v. Illinois Board of Bar Examiners, 504 F.2d
474, 478 (7th Cir. 1974).
Paragraph (f) of Sec. 11.7 would continue the current practice in
which applicants seeking reciprocal recognition under Sec. 11.6(c)
must file an application and pay the fee set forth in Sec. 1.21(a)(6).
It would introduce the practice of paying the application fee required
by Sec. 1.21(a)(1)(i).
Paragraph (g) of Sec. 11.7 would continue the practice of
soliciting information bearing on the moral character and reputation of
individuals seeking recognition. If information from any source is
received that tends to reflect adversely on the moral character or
reputation of an individual seeking recognition, the OED Director would
conduct an investigation into the individual's moral character and
reputation.
The proposed regulation specifies that the information sought
bearing on the moral character and reputation of individuals includes
events regardless of whether the records have been expunged or sealed
by a state court. In accordance with the supremacy clause of the United
States Constitution, ``a federal agency acting within the scope of its
congressionally delegated authority may pre-empt state regulation.''
Louisiana Public Service Comm'n. v. FCC, 476 U.S. 355, 369, 90 L. Ed.
2d 369, 106 S.Ct. 1890 (1986). The pre-emptive force of a Federal
agency's regulation does not depend on express Congressional
authorization. Instead, the correct focus is on ``the proper bounds of
[the Federal agency's] lawful authority to undertake such action.''
City of New York v. FCC, 486 U.S. 57, 64, 100 L. Ed. 2d 48, 108 S.Ct.
1637 (1988).
Congress has authorized the USPTO Director to adopt regulations
requiring individuals to demonstrate that they are of good moral
character and reputation before being recognized. 35 U.S.C. 2(b)(2)(D).
The statute does not mention expungement as a means for removing
statutory disqualifications. Congress does not appear to have
contemplated these expungements would limit the USPTO Director's
authority under statute. Requiring disclosure of expunged offenses is a
rational and
[[Page 69449]]
reasonable method to promote licensing individuals presently possessing
good moral character and reputation. In Dickerson v. New Banner
Institute, Inc., 460 U.S. 103, 103 S.Ct. 986, 74 L. Ed. 2d 845 (1983),
the Supreme Court held that an Iowa expungement of a judgment did not
remove disabilities imposed by the Federal Gun Control Act of 1968 on
the basis of the state conviction, and that the expungement did not
nullify the conviction. Information regarding expunged offenses is
clearly relevant to, though not necessarily determinative of, an
applicant's moral character. See Wilson v. Wilson, 416 F.Supp. 984 (D.
Oregon 1976). Expungement, for example, does not signify that the
person was innocent of the crime. Rather, expungement alleviates
certain continuing effects of a conviction under various laws. State
bar examiners consider the commission of any crime, including expunged
offenses, in weighing an applicant's overall character and fitness to
practice law. See In re Leff, 619 P.2d 232 (Ariz. 1980); State Bar v.
Langert, 276 P.2d 596 (Calif. 1954); Florida Board of Bar Examiners Re:
Certified Question--Felony Convictions--Federal Youth Corrections Act,
361 So.2d 424 (Fla. 1978); In re Majorek, 508 N.W.2d 275 (Neb. 1993);
In re McLaughlin, 675 A.2d 1101 (N.J. 1995); and In re Davis, 403
N.E.2d 189 (Ohio 1980). Requiring disclosure of arrests, even if a
state court has ordered expungement, does not violate a constitutional
right to privacy. See AFL-CIO v. HUD, 118 F.3d 786 (D.D.C. 1997). The
proposed rule would provide applicants with notice of the requirement
for disclosure of expunged records.
The USPTO is seeking comments on the two alternatives proposed
below for accepting a state bar's determination on the moral character
of persons seeking to become registered practitioners who at the time
of filing of their USPTO application, have been admitted as an attorney
in a State Bar and continue to be in good standing.
One option is to require applicants who are attorneys to submit a
certified copy of their State Bar application and moral character
determination. The Office may accept the moral character determination
as meeting the requirements set forth in Sec. 11.7(g).
The second option is to require these applicants to submit a
certified copy of their State Bar application and moral character
determination and for the Office to accept the State Bar's character
determination as meeting the requirements set forth in Sec. 11.7(g)
if, after review, the Office finds no substantial discrepancy between
the information provided with their USPTO application and the State Bar
application and moral character determination. In such a case, OED will
accept the moral character determination of the State Bar as meeting
the requirements set forth in Sec. 11.7(g), so long as this acceptance
is not inconsistent with other rules and the requirements of 35 U.S.C.
2(b)(2)(D). If the USPTO finds that there is substantial discrepancy or
if OED obtains or receives other or new information, or if the
determination of moral character conflicts with other rules or Sec.
2(b)(2)(D), the USPTO reserves the right to make an independent
decision.
The first option, accepting the state bar's determination on moral
character without further review, is administratively convenient.
However, it raises the issue of equal treatment between patent
attorneys and patent agents as to standards applied. The nature of the
patent application proceedings before the USPTO allows for registered
practitioners to represent clients before the Office who may or may not
be attorneys. In addition, ``Congress placed the responsibility on
Director to protect the public.'' 35 U.S.C. Sec. 2(b)(2)(D).\2\ Under
35 U.S.C. Sec. 32, the USPTO is under an obligation to consider the
moral character of all applicants seeking to become registered
practitioners. The states and USPTO have concurrent authority to
protect the public. Kroll v. Finnerty, 242 F.3d 1359 (Fed. Cir. 2001).
Thus, the USPTO may not have authority to resolve all moral character
questions of attorneys by deferral to the state determinations.
Complete deference to a determination on moral character made by state
bars is inconsistent with the USPTO's responsibility of protecting the
public. Further, it is possible that state bars may be unaware of
violations brought to the attention of the Office. The Office cannot
circumvent its responsibility to protect the public. In tandem, it is
not the Office's intent to place an unnecessary burden on state bars to
make determinations on issues that can be equally addressed by both
entities. Thus, while it is appropriate to consider the determination
on moral character made by state bars as part of the application
process at the USPTO, it is inconsistent with the statute to accept the
state bar determination as dispositive of the issue for USPTO purposes.
Under the first option, the USPTO would give deference to the state
bars if the Office allows patent attorneys to submit a copy of their
state bar applications and moral character determinations. Under the
second option, the USPTO would still give deference, but reserves the
authority to look further into the issue of moral character if there is
substantial discrepancy between the information provided in the USPTO
application form and the state bar application or if new information is
provided related to this matter. This is a satisfactory compromise that
enables both the states and the USPTO to exercise their respective
authorities to protect the public.
Paragraph (h) of Sec. 11.7 would define moral character. The
definition is derived from Konigsberg v. State Bar of Cal., 353 U.S.
252, 77 S.Ct. 722, 1 L.Ed.2d 810 (1957); and In re Matthews, 462 A.2d
165 (NJ 1983). This paragraph also would provide a nonexclusive list of
moral character factors considered by the OED Director. The list would
be substantially the same as that considered by the Committee of Bar
Examiners of the State Bar of California in ``Statement on Moral
Character Requirement For Admission to Practice Law in California,''
which is available at http://www.calbar.org/shared/2admndx.htm.
Paragraph (h)(1) of Sec. 11.7 would provide not only that an
applicant convicted of a felony or crime involving moral turpitude or
breach of fiduciary duty is presumed not to be of good moral character,
but also that the individual would be ineligible to apply for
registration until two years after completion of any sentence and
probation or parole. See In re Dortch, 687 A.2d 245 (Md. 1997); Seide
v. Committee of Bar Examiners (Calif.), 782 P.2d 602 (Cal. 1989). The
individual would have to pay the fee required by Sec. 1.21(a)(10) with
the application for registration.
Paragraph (h)(4) of Sec. 11.7 would provide that an attorney
disbarred or suspended from the practice of law, or an attorney who
resigns in lieu of discipline would not be eligible to apply for
registration for a period of two years following completion of the
discipline. The OED Director would have discretion to waive the two-
year period only if the individual demonstrates that he or she has been
reinstated to practice law in the State where he or she had been
disbarred or suspended, or had resigned. The attorney would have to
[[Page 69450]]
pay the fee required by Sec. 1.21(a)(10) with the application for
registration.
Paragraph (i) of Sec. 11.7 would identify factors that may be
taken into consideration when evaluating rehabilitation of an applicant
seeking a moral character determination for registration.
---------------------------------------------------------------------------
\2\ ``[T]he primary responsibility for protection of the public
from unqualified practitioners before the Patent [and Trademark]
Office rests with the Commissioner of Patents [and Trademarks].''
Gager v. Ladd, 212 F.Supp. 671, 673, 136 USPQ 627, 628 (D.D.C.
1963), (quoting with approval Cupples v. Marzall, 101 F.Supp. 579,
583, 92 USPQ 169, 172 (D.D.C. 1952), aff'd, 204 F.2d 58, 97 USPQ 1
(D.C. Cir. 1953)).
---------------------------------------------------------------------------
Paragraph (j) of Sec. 11.7 would provide procedures for the OED
Director and Committee on Enrollment to hear cases arising if the OED
Director believes that any evidence suggests that an individual lacks
good moral character and reputation. The procedures are in accord with
those recognized in Willner v. Committee on Character and Fitness, 373
U.S. 96, 83 S.Ct. 1175 (1963) as providing due process. When the
evidence is information supplied or confirmed by the individual, or is
of an undisputed documentary character, the hearing will be on the
written record. When a person or source whose reliability or veracity
is questioned supplies the evidence, the individual may choose to have
a hearing on the written record, or have an oral hearing to confront
and cross-examine the person or source providing the evidence. The
expense of an oral hearing could be a serious burden on an individual
who is both distant from the Office and without an established
practice. The rule provides such an individual with an alternative to
an oral hearing, i.e., being heard on a written record with briefing.
The procedures for an oral hearing are similar to those adopted by the
District of Columbia Court of Appeals. Rule 46(f) and (g). An oral
hearing will provide the Committee and OED Director with an opportunity
to observe the individual's demeanor.
Paragraph (k) of Sec. 11.7 would allow an individual whose
application for registration has been rejected because of lack of good
moral character and reputation to reapply for registration. The
individual would be permitted to reapply five years after the ruling,
unless otherwise provided. The individual would also be required to
take and pass the registration examination. This provision follows the
same time provisions of Rule 201.12 of the Rules Governing Admission to
the Bar of the State of Colorado. The individual would have to pay the
fee required by Sec. 1.21(a)(10) with the application for
registration.
Section 11.8 would continue the practice under current 37 CFR 10.8
of requiring an oath and payment of a fee prior to registration, and
conform to the practice of filing a completed Data Sheet.
Paragraph (a) of Sec. 11.8 would provide a two-year period within
which an applicant who passes the registration examination may complete
registration. In effect, a passing score would be good for two years.
The Office would deem this period reasonable for individuals who have
not been registered, and not completed their registration within two
years. Their continued familiarity with the Patent Statute, Office
practices and procedures, and changes thereto in the interim is not
established, and they could not lawfully practice before the Office in
patent matters in that period. The two-year period is similar to the
time afforded District of Columbia Bar applicants, who may request
acceptance of a prior Multistate Bar Examination or essay exam result
provided, inter alia, the prior administration of the examination was
within 25 months of the examination about to be administered. See Rules
46(b)(8)(A)(3) and 46(b)(8)(B)(3) of the Rules of the District of
Columbia Court of Appeals.
Under paragraph (a) of Sec. 11.8, limited recognition would no
longer be granted to individuals while awaiting registration. The
period candidates await registration is expected to be reduced by the
Office's soliciting information tending to affect the eligibility of
candidates based on their character on both the Office Web site as well
as the Official Gazette. The names of the candidates receiving a
passing score will be published. The public will be given 60 days from
publication on the Web to provide the information.
Paragraph (b) of Sec. 11.8 would add procedures for applicants
seeking registration as a patent attorney or agent. An individual
seeking registration as a patent attorney would have to demonstrate
that he or she is a member in good standing with the bar of the highest
court of a state.
Paragraph (c) of Sec. 11.8 would codify a practice of requiring
individuals to update the information and answers they provide on their
applications based on events occurring between the date an individual
signs an application, and the date he or she is registered or
recognized to practice before the Office in patent matters. This would
include not only changes of address, but also events that may reflect
adversely on the individual's moral character. The latter would serve
the integrity of the registration process to require the applicant to
update information and answers, and show that the individual continues
to satisfy the requirements of Sec. 11.7(a)(2)(i).
Paragraph (d) of Sec. 11.8 would introduce an annual fee to be
paid by registered practitioners. The amount of the fee would be set
forth in Sec. 1.21(a)(7). The annual fee would be due in three-month
intervals depending on the first initial of a practitioner's last name.
The roster would be divided into four units. The payment period for
last names beginning with A-E shall be every January 1 through March
31; the payment period for last names beginning with F-K shall be every
April 1 through June 30; the payment period for last names beginning
with L through R shall be every July 1 through September 30; and the
payment period for last names beginning with S through Z shall be every
October 1 through December 31.
In the past, the fees paid by applicants and patentees have
supported the costs of the activities that maintain the patent
practitioner's community reputation for integrity. The proposed annual
fee is introduced pursuant to 35 U.S.C. 41(d). The annual fee is
intended to fund the costs of the disciplinary system, and maintaining
the roster of registered practitioners up-to-date by (i) annually
surveying the practitioners for current address/telephone/e-mail
information, and (ii) daily updating the roster with new changes of
address. With an annual fee, the Office would be funding the
disciplinary system as State Bars do, by dues from the bar members. Bar
disciplinary activities are generally regarded as being in the interest
of maintaining the Bar's reputation for integrity and supporting the
willingness of potential clients to engage the services of
practitioners. The continual updating of the USPTO roster is also in
the interest of assuring that registered practitioners are identified
to the public they seek to serve. The current cost of USPTO
disciplinary and roster maintenance programs is a little in excess of
$100 per year per registered practitioner. That cost is currently met
by funds from application, issue, or maintenance fees. It is
problematic to charge applicants for this activity, since many of the
complaints concern applications that were not filed or were filed or
prosecuted improperly or should not have been filed in the first place,
or patentees, who have received the benefit of competent counsel. The
anomaly is magnified by the need for disciplinary action concerning
practitioners who have been convicted of felonies, or disciplined by
state bars for matters other than practice before the Office. By
adopting an annual fee to be paid by registered practitioners, the
costs of these activities is not passed on to applicants. Thus, USPTO
will recover the costs associated with these activities from the
practitioners instead of the public in general. The funds received from
the annual fee would be directed
[[Page 69451]]
to these activities and would not be diverted to support other
proposals. The annual fee would not be imposed on persons during the
calendar year in which they are first registered to practice before the
Office. Failure to comply with this rule would subject a registered
practitioner to penalties set forth in Sec. 11.11(b).
Section 11.9 would continue the same practice under current Sec.
10.9 of providing limited recognition of individuals under the
appropriate circumstances.
Paragraph (a) of Sec. 11.9 would continue to provide for limited
recognition of individuals to practice before the Office in a
particular patent application or applications. The practice would be
limited to individuals who are not attorneys representing the
individual's close relative, such as a child, elderly parent.
Paragraph (b) of Sec. 11.9 would provide for aliens, residing in
the United States, to obtain limited recognition to practice before the
Office in a particular patent application or applications if the
Immigration and Naturalization Service or the Department of State has
authorized the alien to be employed in the capacity of representing a
patent applicant by preparing and prosecuting the applicant's U.S.
patent application. Recognition may be granted if the applicant
satisfies the provisions of Sec. 11.7(a), (b), and (c) or (d).
Consistent with current practice, limited recognition would be granted
in maximum increments of one year, but would not be granted or extended
to an alien residing abroad. Limited recognition also would not be
granted to aliens admitted to the United States to be trained.
Recognition to practice before the Office, like admission to practice
law in any other jurisdiction, is not a training opportunity.
Paragraph (c) of Sec. 11.9 would continue to provide for limited
recognition of an individual not registered under Sec. 11.6 to
prosecute an international application only before the U.S.
International Searching Authority and the U.S. International
Preliminary Examining Authority.
Paragraph (d) of Sec. 11.9 would provide for a limited recognition
fee paid by an individual granted limited recognition under paragraphs
(b) or (c) of Sec. 11.9. The same individuals would also be required
to pay an annual fee upon renewal or extension of the limited
recognition previously granted. Failure to comply with the rule would
subject the individual to loss of recognition.
Section 11.10 would set forth provisions regarding post-employment
restrictions on practice before the Office. Paragraph (a) would permit
only practitioners who are registered under Sec. 11.6 or individuals
given limited recognition under Sec. 11.9 to prosecute patent
applications of others before the Office.
Paragraph (b) of Sec. 11.10 would parallel the provisions of 18
U.S.C. 207(a) and (b). The proposal would parallel the basic
restrictions of Sec. 207(a) on any registered former Office employee
acting as representative, or intending to bring influence, in a
particular matter in which he or she personally and substantially
participated as an employee of the Office. The proposal also would
parallel the basic two-year restriction of Sec. 207(b) on any
registered former Office employee acting as representative or with
intent to influence as to a particular matter for which the employee
had official responsibility. In addition, the proposal would proscribe
the same conduct occurring behind the scenes by prohibiting conduct
that ``aids in any manner'' the representation or communication with
intent to influence. It is appropriate that the conduct proscribed by
Sec. Sec. 207(a) and (b) be extended to conduct occurring behind the
scene. The conduct is proscribed by current Sec. 10.10(b). A patent
can be held unenforceable where a former patent examiner engaged in
behind the scene efforts to obtain a reissue patent on a patent in
which he or she personally and substantially participated as an
examiner. See Kearny & Trecker Corp. v. Giddings & Lewis, Inc., 452
F.2d 579 (7th Cir. 1971), cert. denied, 92 S.Ct. 1500 (1972).
Paragraph (c) of Sec. 11.10 would introduce citation of the
statutory and regulation provisions governing the post employment
conduct of unregistered former employees. The provisions cover any
unregistered former employees, who represent another person in an
appearance or, by other communication, attempts to influence the
Government, including the Office, concerning a particular matter in
which he or she was involved. For example, a former patent examiner,
whether or not he or she becomes a registered practitioner, may not
appear as an expert witness against the Government in connection with a
patent granted on an application he or she examined as a patent
examiner.
Paragraph (d) of 11.10, like current Sec. 10.10(c), would continue
to proscribe an employee of the Office from prosecuting or aiding in
any manner in the prosecution of a patent application for another.
Paragraph (e) of Sec. 11.10 would continue the prohibition against
conflicts of interest contained in current Sec. 10.10(d). A number of
statutory and regulatory provisions affect U.S. Government employees
who are registered to practice before the Office. These provisions
include 18 U.S.C. 203 and 205.
Section 205 is a criminal statute which ``precludes an officer or
employee of the Government from acting as an agent or attorney for
anyone else before a department, agency or court in connection with any
particular matter in which the United States is a party or has a direct
and substantial interest.'' Memorandum of Attorney General Robert F.
Kennedy Regarding Conflict of Interest Provisions of Public Law 87-848,
Feb 1, 1963, 28 F.R. 985. In interpreting a predecessor statute to
Sec. 205, Acting Attorney General Peyton Ford determined that ``the
United States is a party or directly or indirectly interested'' in
proceedings involving the filing and prosecution before the Patent
Office of an application for patent, and that the predecessor statute
therefore ``proscribe[d] the participation in such proceedings of
Government employees for compensation on behalf of private parties.''
Opinion of the Attorney General of the United States, Vol. 41, Op. No.
4, 82 USPQ 165 (Atty. Gen. 1949). Under the current statute,
``[s]ection 203 bars services rendered for compensation solicited or
received, but not those rendered without such compensation; section 205
bars both kinds of services.'' Memorandum of Attorney General Robert F.
Kennedy Regarding Conflict of Interest Provisions of Public Law 87-848,
Feb 1, 1963, 28 F.R. 985. Accord, OGE Informal Advisory Letter 91 X 11,
1991 WL 521202 (O.G.E.). Sections 203 and 205 apply to full-time and
part-time employees.
OGE Informal Advisory Letter 91 X 11, 1991 WL 521202 (O.G.E.)
recognizes one exception. The prohibition does not apply if an
executive branch employee is ``a special employee'' as defined in 18
U.S.C. 202(a). The OGE Informal Advisory Letter also recognizes that
the exception does not apply to a special Government employee for those
particular matters involving specific parties in which the employee
participated as a Government employee and, if the employee served in
the department more than sixty days, to those matters pending before
the department where he or she is employed. A special Government
employee is one who is ``employed to perform * * * for a period not to
exceed one hundred and thirty days during any period of three hundred
and sixty five consecutive days, temporary duties either on a full-time
or
[[Page 69452]]
intermittent basis * * * Status as a special Government employee is
determined at the time of appointment.'' Section 202(a). The OGE
Informal Advisory Letter also recognizes that individuals serving in
the U.S. Military reserves as officers, are considered under the
provisions of section 202(a) to be special Government employees unless
they are called to active duty and serve for more than a specified
threshold period. The OGE Informal Advisory Letter indicates that
reservists in the enlisted ranks are not deemed subject to sections 203
or 205 when called to active duty.
In view of such provisions, the opinion of the Attorney General,
and the OGE Informal Advisory Letter, the position of the Office would
be that full-time and part-time U.S. Government employees other than
special Government employees, may not solicit or accept private
clients, or represent clients other than their agency before the
Office. Accordingly, the Office of Enrollment and Discipline requires
registered practitioners who are employed by the U.S. Government full-
time or part-time to list their Government addresses as their official
addresses of record.
Section 11.11 would continue the requirement under current Sec.
10.11 that a registered practitioner notify OED of a change of address
separately from any notice given in any patent applications.
Paragraph (a) of Sec. 11.11, similarly to current Sec. 10.11(a),
would provide for requiring practitioners to notify the OED Director of
their postal address and telephone number for his or her business, as
well as every change thereto. Additionally, it would require
practitioners to notify the OED Director of the e-mail address for
their business and every change to the e-mail address. Notice of the
change of address or telephone number would have to be given within
thirty days of the date of the change. Practitioners will be encouraged
to provide their business e-mail address to facilitate the Office's
ability to communicate with the practitioners. A practitioner who is an
attorney in good standing with the bar of the highest court of one or
more states would also be required to provide the OED Director with the
state bar identification number associated with each membership. This
will enable the OED Director to distinguish between individual
attorneys having the same or similar names. Further, the section
identifies the information that the OED Director will routinely publish
on the roster about each registered practitioner recognized to practice
before the Office in patent cases.
Paragraph (b)(1) of Sec. 11.11 would provide for administrative
suspension for failure to comply with the payment of the annual fee
required by Sec. 11.8(d) or Sec. Sec. 11.12(a) and (e). The OED
Director would mail a notice to the practitioner advising of
noncompliance, demanding compliance within sixty days, and payment of a
delinquency fee for each rule violated.
Paragraph (b)(2) of Sec. 11.11 would provide that upon failure to
comply with the directive within the allowed time, the practitioner
would be notified in writing that the practitioner has been
administratively suspended and may no longer practice before the Office
in patent matters, or hold himself or herself out as being registered
or recognized to practice before the Office in patent matters. The OED
Director would publish notice of the administrative suspension in the
Official Gazette. The administrative suspension would not relieve the
delinquent attorney or agent of his or her annual responsibility to pay
his or her dues to the USPTO Director.
Paragraph (b)(4) of Sec. 11.11 would provide that an
administratively suspended attorney or agent would be responsible both
for paying his or her annual fee required by Sec. 11.8(d) and for
completing the required continuing training programs.
Paragraph (b)(6) of Sec. 11.11 would provide that administratively
suspended practitioners cannot practice before the Office in patent
cases while under administrative suspension.
Paragraph (c) of Sec. 11.11 would provide for inactivation of a
registered practitioner who becomes employed by the Office.
Paragraph (c)(1) of Sec. 11.11 would provide that a registered
practitioner, upon separating from the Office and seeking reactivation,
must complete the required continuing training programs if the
practitioner did not pass recertification tests required during the
practitioner's employment at the Office and appropriate to
practitioner's grade and position in the Office.
Paragraph (d) of Sec. 11.11 would provide for voluntary
inactivation of a registered practitioner. This section accommodates
registered practitioners who are not active in representing clients
before the USPTO, but still desire to maintain a recognized
professional association with the USPTO. The USPTO will not inquire
into reasons for seeking voluntary inactivation except that voluntary
inactivation will be denied if the practitioner is delinquent on paying
annual dues. Voluntary inactivation will not preclude the USPTO from
inquiring or continuing to inquire into possible ethical violations by
the practitioner. Reasons for seeking voluntary inactivation may
include retirement, health condition of the practitioner (long-term
illnesses), or a practitioner's decision to practice in another
substantive area.
Paragraph (d)(1) of Sec. 11.11 would provide that a registered
practitioner may seek voluntary inactivation by filing a written
request to be endorsed as inactive.
Paragraph (d)(2) of Sec. 11.11 would provide that a registered
practitioner whose status has been changed to a voluntary inactive
status would be responsible both for paying his or her annual fee
required by Sec. 11.8(d) for such status and for completing the
required continuing legal education programs while in such status. For
purposes of this section, the annual fee for practitioners in inactive
status is 25% of the fee for practitioners in active status.
Paragraph (d)(3) of Sec. 11.11 would provide that a registered
practitioner in inactive status is still subject to investigation or
discipline for ethical violations during the period of inactivation.
Paragraph (d)(4) of Sec. 11.11 would provide that a registered
practitioner in arrears in dues or under administrative suspension for
fee delinquency is ineligible to seek or enter into voluntary inactive
status.
Paragraph (d)(5) of Sec. 11.11 would provide that practitioners
may not practice before the Office in patent cases while under inactive
status.
Paragraph (d)(6) of Sec. 11.11 would provide for restoration to
active status of a registered practitioner who is in voluntary inactive
status in accordance with Sec. 11.11(d). The Office provides options
for practitioners who are no longer attorneys in good standing at their
state bars but seek active status before the USPTO. Since practitioners
before the USPTO need not be attorneys, a practitioner who has ceased
to be a member in good standing of the highest court of a state for
reasons other than ethical grounds may still seek to represent clients
before the USPTO as a patent agent. Generally, attorneys are held to
the standard of ethics in effect at their respective state bars. It
becomes necessary to ensure that attorneys who are no longer members in
good standing in a state bar explain the basis of such status when
seeking restoration to active status before the USPTO. This section
seeks to avoid the possibility that an attorney under a disciplinary
proceeding or investigation at his or her state bar does not circumvent
the obligation of informing the USPTO of
[[Page 69453]]
any matter that detrimentally impacts the determination of the
practitioner's moral character.
Any registered practitioner who is voluntarily inactivated pursuant
to paragraph (d) of this section and who is an attorney may comply with
the submission of information and material pertaining to the
practitioner's moral character on proof of being a member in good
standing with the highest court of a state. If the registered
practitioner is no longer a member in good standing at the state bar,
the practitioner must submit a signed declaration or affidavit
explaining the circumstances surrounding their status at the state bar
to the satisfaction of the OED Director that the reason for not being a
member in good standing is not predicated on moral character. If the
statement submitted is not to the satisfaction of the OED Director, the
OED Director may decline restoration to active status on grounds of
present lack of good moral character as set forth in Sec. 11.7. Any
adverse decision by the OED Director is reviewable under Sec. 11.2.
This does not preclude the practitioner from submitting additional
evidence to establish the requisite moral character.
Paragraph (e) of Sec. 11.11 would allow for resignation from
practice before the Office of a registered practitioner who is neither
under investigation under Sec. 11.22 for a possible violation of the
Rules of Professional Conduct, nor subject to an adverse probable cause
determination by a panel of the Committee on Discipline under Sec.
11.23(b).
Paragraph (f) of Sec. 11.11 would establish a procedure for
reinstatement of a registered practitioner who has been
administratively suspended pursuant to Sec. 11.11(b) or Sec.
11.12(e), or who has resigned pursuant to Sec. 11.11(d).
Section 11.12 would introduce mandatory continuing education for
practitioners licensed to practice in patent cases before the Office.
Such continuing education would apply to all licensed practitioners,
whether they are registered patent attorneys, patent agents, or persons
granted limited recognition. With two exceptions, all licensed
practitioners are currently required to pass the registration
examination. The registration examination may be waived for former
patent examiners who actively served for at least four years in the
patent examining corps and separate from the Office without an legal
competence issue. Also, by long-standing custom, foreign patent agents
who are registered under 37 CFR 10.7(c) on the basis of reciprocity
with their foreign patent office have not been required to take and
pass the registration examination. A licensed practitioner has been
qualified through passing the registration examination. However, there
is no requirement for periodic education to ensure that individuals
maintain an expected level of competency in law, regulations, practices
and procedures.
It is in the interest of the practitioner community, applicants and
the efficiency of the USPTO that practitioners keep their legal
knowledge current. In recent years there have been numerous changes to
the Patent Act, and in the regulations governing the filing and
prosecution of patent applications. After significant court decisions
and other events, the Office has issued memoranda describing new
procedures and policy to be followed by Office employees as well as
registered practitioners and those granted limited recognition. Though
licensed practitioners are ethically prohibited from handling a legal
matter without preparation adequate in the circumstances, this has not
prevented members of the public from criticizing the competence of
practitioners. Such lapses can reflect adversely on the integrity of
the intellectual property system, as well as on the reliability of
practitioners as a whole. The ethics rules have not compelled
practitioners to promptly become and remain familiar with changes to
patent application practices and procedures.
A licensed practitioner's lack of currency with practice
requirements impedes the efficiency and quality of the application
process under current conditions. Within the USPTO, there is an office
devoted to handling petitions, often by practitioners, seeking relief
from some ``unintentional'' events, as well as ``unavoidable'' events,
such as occur when new procedures and policies are not followed. Some
petitions seeking relief from mistakes reflect an unawareness of the
requirements of new rules, practices and procedures, as well as some
well-established practices and procedures. This continual need for
rework is an obstacle to improving pendency. Other mistakes may not be
similarly curable.
The trend toward continuing legal education requirements by state
bars is not sufficient to maintain the currency of knowledge among
licensed practitioners regarding patent practice before the Office.
First, while some attorneys may be required to take continuing legal
education as a matter of state bar requirements, such requirements do
not apply to patent agents and are not specific to obtaining additional
patent education. The Office's licensing of patent agents who are not
attorneys effectively preempts the states' restrictions on practicing
law without a license. Thus it is incumbent on the Office to assure
that agents are required to be kept up-to-date on legal matters in ways
equivalent to the requirements now imposed by forty state bars on
lawyers. The foreign patent agents also are not subject to the
restrictions and continuing legal education requirements imposed by
states. Similarly, although one state is now considering special
certification for patent lawyers, its proposal defers to the Office's
authority over licensing patent practitioners and thus imposes no
certification requirements based on Office practice. None of the states
mandating continuing legal education (CLE) require registered patent
attorneys to receive updated education in new Office practices and
procedures.
To assure the public that licensed practitioners maintain their
competence and proficiency, the Office proposes to deliver required
education materials via the Internet and otherwise to practitioners and
to certify their scrutiny of those materials through an interactive
computer-delivered examination. Alternatively, the Office would accept
mandatory continuing education given by a pre-approved sponsor. Section
11.12 would apply only to licensed practitioners, not to inventors
applying pro se. The availability of the education, however, will make
the patent process more accessible to inventors, while helping the
quality and efficiency of prosecution.
Delivery of mandatory continuing education by the USPTO meets the
need for equal availability of the program worldwide. The Office can
provide this service at a minimal cost because we are building on a
program we conduct for examiners. The Office is going to seek CLE
credits for the program from state bars requiring attorneys to meet
certain continuing legal education requirements. However, the Office is
not sure all state bars with the requirements will recognize the
mandatory education program offered by the Office. Therefore, the
Office believes that regular continuing education sponsors should be
able to offer the program content in alternative formats that are
acceptable to state bars.
It is anticipated that the Office would publish on the Internet
written material followed by self-administered questions and answers
that would be linked to Office publications on Office's Web site that
would provide the answers. The publications would include new rules,
policy announcements, rule packages, question and answer memoranda, the
[[Page 69454]]
Manual of Patent Examining Procedure, narrative guidelines, and other
narratives containing new information the Office wants to deliver. The
function of the program would be to assure that licensed practitioners,
like patent examiners, have read and absorbed key content of these
publications. The USPTO is planning to institute similar education of
patent examiners.
Unlike traditional continuing legal education courses that must be
taken at particular times and places, because the self-assessment
update program would be available on the Internet, it could be taken
when and where the practitioner selects. Paper copies of the questions
and narratives would be made available to practitioners lacking access
to the Internet. A licensed practitioner could take the program and
complete it, or take part and store it until he or she has more time to
complete it. The practitioner also would have the option to take it
repeatedly and as often as desired until all questions are correctly
answered. It would not be necessary for practitioners to take courses,
such as continuing legal education courses offered by other parties, in
order to complete the program.
A practitioner would have the option of obtaining the education
from a USPTO pre-approved sponsor. The practitioner would be
responsible for paying any fees charged by the sponsor for the program.
The sponsor or the practitioner taking the program from the sponsor
would be responsible for obtaining continuing legal education credit
from a state bar. The Office would not seek such credit for the sponsor
or the practitioner taking a course given by a sponsor.
The self-assessment program offered by the Office would include
multiple choice and/or true/false questions. Narrative material, such
as a guideline or policy announcement, would either precede the
question, or links to the narrative material would be embedded in the
questions. To complete a required education program, all questions must
be correctly answered. A licensed practitioner would have to complete
the program within the dates set by the USPTO Director. Taking a USPTO
pre-approved course that is offered by a USPTO pre-approved sponsor
providing comparable education also could complete the required
education program. Licensed practitioners failing to complete the
program would be administratively suspended from practice before the
Office. The results from the USPTO Web-based program would be instantly
available, and electronically recorded in the Office.
The education program requirement would not be onerous, since the
self-assessment program would be self-administered and available on the
Internet, and it would either contain or be linked to USPTO
publications on its Web site that would provide the answers. Currently,
forty states provide for or require continuing legal education for
attorneys licensed in their respective jurisdictions. The Office will
be communicating with the appropriate authorities in each of the states
in an effort to have them accept the USPTO's education program as
meeting their respective continuing legal education requirements.
Paragraph (c) of Sec. 11.12 would provide four exemptions from
completing the education. One exemption would be for newly registered
practitioners during the fiscal year he or she is first registered.
Another exemption would be for a practitioner who becomes inactive as a
result of being employed by the Office if, while so employed, the
practitioner passes all recertification programs required for patent
examiners during the practitioner's employment at the Office and
appropriate to practitioner's grade and position in the Office.
The same paragraph permits completion of the education to be
delayed for a specified time for ``good cause shown.'' The cause may be
shown in conjunction with illness, hospitalization, or such other
matters as determined by the OED Director. Good cause would not be
shown by representations that a medical condition makes attendance only
difficult or uncomfortable, that a practitioner is outside the United
States, that a practitioner finds it most difficult to complete the
program, that the practitioner obtains education by observing other
practitioners, or that a practitioner is in advanced years.
Paragraph (d)(1) of Sec. 11.12 would provide that persons seeking
reinstatement after they resigned pursuant to Sec. 11.11(d), after
their names were transferred to disability inactive status, or upon
seeking reinstatement after being suspended or excluded must furnish
the OED Director with proof that he or she has completed all education
programs required by the USPTO Director during the fiscal year(s) the
practitioner was inactive, suspended or excluded, or during the
practitioner's resignation. Thereafter, the person would have the same
education program requirement as other licensed practitioners.
Section 11.13 would provide procedures for sponsors to be approved
as offering a pre-approved mandatory continuing education program, as
well as for practitioners receiving credit for completing the pre-
approved program offered by either the USPTO or by a USPTO pre-approved
sponsor. Practitioners will not receive credit for completion of the
required education by attending a program that is not pre-approved by
the OED Director as providing the legal, procedural and policy subject
matter identified by the USPTO Director as being required to satisfy
the mandatory continuing education program.
Section 11.14, like current Sec. 10.14, continues to set forth who
may practice before the Office in trademark and other non-patent
matters. The present procedure under Sec. 10.14 would continue, except
that the definition of attorney is changed. See the discussion above
under Sec. 11.1. The change in the definition of attorney is believed
necessary in view of 5 U.S.C. 500(b), and the fact that an individual
may be an attorney in good standing in a state even though suspended or
disbarred in another state. In other non-patent matters, e.g.,
disciplinary proceedings or inter partes or ex partes patent or
trademark matters, a party could be represented only by an attorney.
Paragraph (a) of Sec. 11.14(a) would contain a sentence making
clear that registration as a patent attorney does not entitle an
individual to practice before the Office in trademark matters. On
occasion in the past, an attorney suspended or disbarred by the highest
court of a state continued to practice before the Office in trademark
matters. The sentence would provide such individuals with notice that
they may not rely on registration as a patent attorney to practice in
trademark matters.
Paragraph (f) of Sec. 11.14 would provide that an individual
seeking reciprocal recognition under paragraph (c) must apply in
writing for the recognition, and pay the fees required by Sec. Sec.
1.21(a)(1)(i) and (a)(6) of this subchapter.
Section 11.15 would provide that practitioners (individuals who
practice before the Office in patent, trademark, or other non-patent
matters) could be suspended or excluded. The USPTO Director has
authority under 35 U.S.C. 32 to suspend or exclude practitioners
registered to practice before the Office in patent matters. See also 5
U.S.C. 500(e). The USPTO Director also has authority to suspend or
exclude practitioners who practice before the Office in trademark and
other non-patent matters. See 5 U.S.C. 500(d)(2); Herman v. Dulles, 205
F.2d 715 (D.C. Cir. 1953); and Attorney General's
[[Page 69455]]
Manual on the Administrative Procedure Act, pp.65-66 (1947). See also
Harary v. Blumenthal, 555 F.2d 1113 (2nd Cir. 1977) (certified public
accountant disbarred from practice before IRS), and Koden v. U.S.
Department of Justice, 564 F.2d 228 (7th Cir 1977) (suspending attorney
from practice before INS).
Section 11.18, with one exception, would continue the provisions
under current Sec. 10.18 regarding who must sign documents filed in
the Office, and responsibility for the content of documents filed in
the Office. The exception is that the phrase ``claims and other'' found
in Sec. 10.18(b)(2)(ii) would not be carried forward into paragraph
(b)(2)(ii) of Sec. 11.18. The deletion is necessary inasmuch as Sec.
11.18 is derived from Rule 11 of the Federal Rules of Civil Procedure,
wherein a ``claim'' is not a patent claim. However, in the predecessor
rule, Sec. 10.18, it is possible to construe ``claim'' to be a patent
claim. Clearly, a patent claim is not the same claim under the Rule 11
of the Federal Rules of Civil Procedure. The practice under Sec. 11.18
is otherwise similar to that under Rule 11 of the Federal Rules of
Civil Procedure.
Investigations and Disciplinary Proceedings
Section 11.19 would introduce a definition of the disciplinary
jurisdiction of the Office.
Paragraph (a) of Sec. 11.19 would provide that practitioners
registered or recognized to practice before the Office, practitioners
administratively suspended under Sec. 11.11(b), practitioners
disciplined by suspension or exclusion, as well as pro se patent
applicants and any individual appearing in trademark or other non-
patent case in his or her own behalf, are subject to the disciplinary
jurisdiction of the Office. The inclusion of administratively suspended
practitioners, and practitioners disciplined by suspension or exclusion
would permit the Office to take further action where appropriate or
necessary. Thus, for example, a suspended practitioner continuing to
practice before the Office despite suspension may be further
disciplined for unauthorized practice before the Office. Similarly, a
practitioner continuing to practice before the Office despite removal
of his or her name from the register should not be able to use
administrative suspension as a shield to avoid discipline for
misconduct occurring before or after removal of the practitioner's name
from the register.
Paragraph (b) of Sec. 11.19 would recognize the authority of state
bars to discipline practitioners for misconduct involving or related to
practice before the Office in any matter.
Paragraph (c)(1) of Sec. 11.19 would set out grounds for
disciplining a practitioner, or a suspended or excluded practitioner.
Grounds would include conviction of a crime; discipline imposed in
another jurisdiction; failure to comply with any order of a Court, the
USPTO Director, or OED Director; or failure to respond to a written
inquiry from a Court, the USPTO Director, or OED Director in the course
of a disciplinary investigation or proceeding without asserting, in
writing, the grounds for refusing to do so.
Paragraph (c)(2) of Sec. 11.19 would set out grounds for
disciplining a pro se applicant. Grounds include violation of
Sec. Sec. 11.303(a)(1), 11.304, 11.305(a), and 11.804. Pro se
litigants in United States District Courts are subject to Rule 11 of
the Federal Rules of Civil Procedure, which imposes sanctions for
filing baseless or frivolous lawsuits wherein the pleadings are not
well grounded in fact or in law, or in a good faith argument for
extension, modification, or reversal of existing law, and had an
improper purpose. By extension, comparable conduct before the Office
would be subject to disciplinary action by the Office.
Paragraph (d) of Sec. 11.19 would continue essentially the same
procedure as current Sec. 10.130(b) for handling petitions to
disqualify a practitioner in ex parte or inter partes matters in the
Office on a case-by-case basis. See SEC v. Chenery Corp., 332 U.S. 194,
203 (1974).
Paragraph (e) of Sec. 11.19 would make clear that the Office can
refer unauthorized practice allegations and convictions to the
jurisdiction(s) where the act(s) occur. This can apply to unregistered
individuals, including unregistered attorneys practicing before the
Office in patent matters by ghostwriting applications and/or replies to
Office actions to be signed and filed by inventors.
Section 11.20 would continue the present procedure in current Sec.
10.130(a) under which the USPTO Director imposes discipline. The
statutory framework for practice before the Office in patent,
trademark, and other non-patent law vests responsibility for discipline
in the USPTO Director. 35 U.S.C. 2(b)(2)(c). The discipline imposed on
practitioners includes reprimand, suspension or exclusion. Paragraph
(a)(1) is based on 35 U.S.C. 32 and 5 U.S.C. 500(d). The term
``exclude,'' rather than ``disbar,'' is used throughout the proposed
rules because ``exclude'' is used in 35 U.S.C. 32. Probation has been
employed by OED pursuant to 35 U.S.C. 32 and 5 U.S.C. 500(d). See
Weiffenbach v. Lett, 1101 Official Gazette 59 (April 25, 1989).
Paragraph (a)(2) of Sec. 11.20 would permit sanctions to be
imposed on patent applicants representing themselves or other
applicants under Sec. 1.31, a person or party representing themselves
or others in a patent case pursuant to Sec. 1.33(b)(4), or by a
representative appearing in a trademark application pursuant to Sec.
11.14(e). A variety of sanctions can be imposed on pro se litigants
subject to Rule 11 of the Federal Rules of Civil Procedure. The
sanctions usually imposed serve two main purposes: deterrence and
compensation. Subsidiary goals include punishing prosecution/litigation
abuse, and facilitating case management. See Navarro-Ayala v. Nunez,
968 F.2d 1421 (C.A. Puerto Rico 1992). Sanctions that may be imposed on
pro se litigants may also be imposed on pro se applicants, including
prohibition from commencing additional or continuing other proceedings
before the Office without being represented by a licensed attorney or
by leave of the Commissioner for Patents or the Commissioner for
Trademarks to proceed pro se. Accord, Schramek v. Jones, 161 F.R.D. 119
(D.C. Fla. 1995); and Ketchum v. Cruz, 775 F. Supp. 1399 (D. Colo.
1991), aff'd, 961 F.2d 916 (1991).
Paragraph (b) of Sec. 11.20 would provide for imposition of
conditions with discipline as a condition of probation, to protect the
public.
Section 11.21 would provide for issuing warnings alerting the
practitioner that he or she could be subject to disciplinary action if
corrective action is not taken to bring his or her conduct into
conformity with the Office's Rules of Professional Conduct. 5 U.S.C.
558(c) authorizes warnings.
Section 11.22 would continue the OED Director's authority under
current Sec. 10.131(a) to investigate possible violations of Rules of
Professional Conduct by practitioners. See Sec. 11.2(b)(2).
Paragraph (b) of Sec. 11.22 would continue the provisions of
current Sec. 10.131(a), under which a nonpractitioner can report to
the OED Director a possible violation of Rules of Professional Conduct.
The OED Director would be enabled to require that the report be
presented in the form of an affidavit.
Paragraph (c) of Sec. 11.22 would provide for initiating
investigations upon complaint or information received from any source.
The investigation would not be abated because of neglect by the
complainant to prosecute a
[[Page 69456]]
charge, or in view of settlement, compromise, or restitution.
Paragraph (d) of Sec. 11.22 would require a complaint alleging
misconduct by a practitioner to be in writing and contain a brief
statement of the facts upon which the complaint is based.
Paragraph (e) of Sec. 11.22 would provide for screening
complaints. Complaints would be docketed only if they are not unfounded
on their face, if they contain allegations of conduct, that, if true,
would constitute a violation of the practitioner's oath or the Rules of
Professional Conduct that would merit discipline, and are within the
jurisdiction of the Office.
Paragraph (f) of Sec. 11.22 would provide for notifying the
complainant when a complaint is not docketed, and giving the reasons
therefor. This rule would provide that the OED Director's decision is
not subject to review.
Paragraph (g) of Sec. 11.22 would permit complainants to be
advised of the docketing of the complaint.
Paragraph (h) of Sec. 11.22 would provide for notifying a
practitioner in writing when a formal investigation in the
practitioner's conduct has been initiated.
Paragraph (i) of Sec. 11.22 would provide for a practitioner to
have 30 days to respond to an inquiry, and to allow only one 30-day
extension of time. The response must set forth practitioner's position
with respect to allegations contained in the complaint.
Paragraph (j) of Sec. 11.22 would provide that the OED Director
could request information from the complainant, practitioner, or any
other person who may reasonably be expected to have information needed
concerning the practitioner. A number of state bars were surveyed to
identify whether a common practice existed on handling the issue of
contacting a non-complaining client. Many states have no specific
procedural rules but can and do contact the non-complaining client
without the safeguards contained in proposed paragraph (j) of this
section. For example, one state bar has no rule but contacts the
attorney first, and then attempts to call the non-complaining client
before the attorney communicates with the client. Another has no rule
and does in fact contact the non-complaining client without first
informing the attorney.
In the absence of a consistent practice among the various state
bars, the USPTO is placing formal safeguards through Section 11.22(j).
We recognize that such contact can create the possibility of conflicts
with the attorney. At the same time, there are cases in which
disciplinary action is most necessary and the non-complaining client is
unknowingly being victimized. The USPTO needs the discretion to
undertake the appropriate investigation without necessarily going
through the attorney. The USPTO wants to be careful to balance the
competing interests with the creation of a formal procedure that
provides appropriate safeguards to the attorney-client relationship.
Paragraph (j) of Sec. 11.22 would provide that the OED Director
could request information from the complainant, practitioner, or any
other person who may reasonably be expected to have information needed
concerning the practitioner. The attorney will be contacted first
unless there is good cause to believe that such contact would interfere
with the gathering of relevant material from the client. If the OED
Director believes that there is good cause for such interference or the
attorney declines to consent, the OED Director will provide a showing
including reasons to the USPTO Director for review and clearance.
Paragraph (k) of Sec. 11.22 would permit the OED Director to
examine financial books and records maintained by a practitioner
reflecting his or her practice before the Office.
Paragraph (l) of Sec. 11.22 would provide that a practitioner's
failure to respond or evasive response to the OED Director's written
inquiries during an investigation would permit the Committee on
Discipline to enter an appropriate finding of probable cause.
Paragraph (m) of Sec. 11.22 would allow the OED Director to
dispose of investigations by closure without issuance of a warning,
institution of formal charges, diversion, or exclusion on consent.
Paragraph (n) of Sec. 11.22 would permit the OED Director to
terminate an investigation and decline to refer a matter to the
Committee on Discipline in a variety of circumstances, including where
the complaint is unfounded, the matter is not within the jurisdiction
of the Office, the questioned or alleged conduct does not constitute
misconduct, the available evidence shows that the practitioner did not
engage or willfully engage in the questioned or alleged misconduct,
that there is no credible evidence to support any allegation of
misconduct by the practitioner, or that the available evidence could
not reasonably be expected to support any allegation of misconduct
under a ``clear and convincing'' evidentiary standard.
Section 11.23 would continue the practice of current Sec. 10.4 of
providing for a Committee on Discipline.
Paragraph (a) of Sec. 11.23 would describe the organization of the
Committee on Discipline. The Committee would have two or more
subcommittees having three members each to facilitate processing of the
matters the OED Director refers to the Committee. The Committee would
designate a Contact Member to review and approve or suggest
modifications of recommendations by OED Director for dismissals, and
warnings.
Paragraph (b) of Sec. 11.23 would set forth the powers and duties
of the Committee on Discipline. The Committee would designate a Contact
Member to review, and approve or suggest modifications of,
recommendations by OED Director of dismissals and warnings. The
Committee would prepare and forward its own probable cause
recommendations to the OED Director.
Paragraph (c) of Sec. 11.23 would provide that no discovery could
be had of deliberations of the Committee on Discipline. See Morgan v.
United States, 313 U.S. 409, 422 (1941). Accordingly, under the
proposed rules, a disciplinary proceeding would resolve whether a
practitioner has or has not committed violations alleged in the
complaint that the Committee authorized to be filed under Sec. 11.26.
Section 11.24 would provide for interim suspension and discipline
based on reciprocal discipline of a practitioner suspended or
disbarred, or who resigns in lieu of discipline. The USPTO Director,
upon being provided with a certified copy of a disciplinary court's
record disciplining a practitioner, would suspend the practitioner in
the interim. The practitioner would be provided with a forty-day period
to show cause why reciprocal discipline should not be imposed. A
certified copy of the record of suspension, disbarment, or resignation
shall be conclusive evidence of the commission of professional
misconduct. The practitioner may challenge imposition of reciprocal
discipline on four specific grounds, i.e., lack of notice or
opportunity to be heard, infirmity of proof of establishing misconduct,
grave injustice resulting from imposing the same discipline, or the
misconduct warrants imposition of a different discipline.
Section 11.25 would provide for interim suspension and discipline
of a practitioner convicted of committing a serious crime or other
crime coupled with confinement or commitment to imprisonment. The USPTO
Director, upon being provided with a certified copy of a court's record
or docket entry, would suspend the practitioner from
[[Page 69457]]
practice before the Office in the interim until the conviction becomes
final. Practitioners would be disqualified from practicing before the
Office if confined or committed to prison. Upon the conviction becoming
final, the practitioner would be provided with a forty-day period to
show cause why discipline should not be imposed. A practitioner
convicted of a serious crime involving moral turpitude per se, or a
crime wherein the underlying conduct involved moral turpitude, would be
excluded. The practitioner may challenge imposition of discipline if
material facts are in dispute.
Section 11.26 would provide a program for diversion from a
disciplinary proceeding.
Paragraph (a) of Sec. 11.26 would permit the OED Director to offer
diversion to a practitioner under investigation, subject to
limitations.
Paragraph (b) of Sec. 11.26 would make diversion available in
cases of alleged minor misconduct. However, diversion would not be
available when the alleged misconduct resulted in, or is likely to
result in, prejudice to a client or another person; discipline was
previously imposed, a warning previously issued, or diversion was
previously offered and accepted (unless exceptional circumstances
justify waiver of this limitation); the alleged misconduct involves
fraud, dishonesty, deceit, misappropriation or conversion of client
funds or other things of value, or misrepresentation; or the alleged
misconduct constitutes a criminal offense under applicable law.
Paragraph (c) of Sec. 11.26 would set forth procedures for
diversion.
Paragraph (d) of Sec. 11.26 would provide a diversion program that
is designed to remedy the alleged misconduct of the practitioner. It
may include participation in formal courses of education sponsored by a
voluntary bar organization, a law school, or another organization;
completion of an individualized program of instruction specified in the
agreement or supervised by another entity; or any other arrangement
agreed to by the parties which is designed to improve the ability of
the practitioner or other individual to practice in accordance with the
Rules of Professional Conduct.
Paragraph (e) of Sec. 11.26 would close an investigation if the
practitioner completes the diversion program. If the practitioner does
not successfully complete the diversion program, the OED Director would
be able to take such other action as is authorized and prescribed under
section 11.32.
Section 11.27 would provide for excluding a practitioner on
consent. This would be the sole manner for settling any disciplinary
matter.
Paragraph (a) of Sec. 11.27 would provide that a practitioner
under investigation or the subject of a pending proceeding may consent
to exclusion, but only by delivering to the OED Director an affidavit
declaring the practitioner's consent to exclusion. The affidavit would
state, inter alia, that the consent is freely and voluntarily rendered,
that the practitioner is aware that there is currently pending an
investigation into, or a proceeding involving, allegations of
misconduct, the nature of which shall be specifically set forth in the
affidavit; that the practitioner acknowledges that the material facts
upon which the allegations of misconduct are predicated are true; and
that the practitioner submits the consent because the practitioner
knows that if disciplinary proceedings based on the alleged misconduct
were brought, the practitioner could not successfully defend against
them.
Paragraph (b) of Sec. 11.27 would provide that the affidavit and
any related papers are submitted to the USPTO Director for review and
approval. The USPTO Director would enter an order excluding the
practitioner on consent.
Paragraph (c) of Sec. 11.27 would provide for informing the
hearing officer of receipt of the required affidavit, and for transfer
of the disciplinary proceeding to the USPTO Director.
Paragraph (d) of Sec. 11.27 would proscribe a practitioner
excluded by consent from petitioning for reinstatement for five years,
require compliance with the provisions of Sec. 11.58, and require
reinstatement be sought in accordance with Sec. 11.60.
Section 11.28 would provide procedures for addressing four broad
groups of practitioners. The first are those judicially declared to be
``mentally incompetent'' or ``involuntarily committed to a mental
hospital.'' The second are disabled practitioners who are mentally or
physically infirm. The third are practitioners addicted to any chemical
or having a psychological dependency upon intoxicants or drugs. The
fourth are incapacitated practitioners who suffer from a disability or
addiction of such nature as to cause the practitioner to be unfit to be
entrusted with professional matters.
Definitions of ``mentally incompetent,'' ``involuntarily committed
to a mental hospital,'' ``disability,'' ``addiction,''
``incapacitated,'' ``significant evidence of rehabilitation,'' and
``disability matter'' would be found in Sec. 11.1.
Paragraph (a) of Sec. 11.28 would set forth the scope and purpose
of disability proceedings. Such proceedings would determine whether a
practitioner has been judicially declared to be mentally incompetent or
involuntarily committed to a mental hospital as an inpatient; whether
the hearing officer should apply to a court for an order requiring a
practitioner to submit to an examination by qualified medical experts
regarding an alleged disability or addiction; whether a practitioner is
incapacitated from continuing to practice before the Office by reason
of disability or addiction; whether the OED Director should hold in
abeyance a disciplinary investigation, or a hearing officer should hold
in abeyance a disciplinary proceeding, because of a practitioner's
alleged disability or addiction; whether a practitioner (having
previously been suspended solely on the basis of a judicial order
declaring the practitioner to be mentally incompetent) has subsequently
been judicially declared to be competent and is therefore entitled to
have the prior suspension terminated; whether a practitioner (having
previously been suspended solely on the basis of an involuntary
commitment to a mental hospital as an inpatient) has subsequently been
discharged from inpatient status and is therefore entitled to have the
prior order of suspension terminated; and whether a practitioner
(having previously acknowledged or having been found by the hearing
officer or USPTO Director to have suffered from a prior disability or
addiction sufficient to warrant suspension (whether or not any
suspension has yet occurred)), has recovered to the extent, and for the
period of time, sufficient to justify the conclusion that the
practitioner is fit to resume or continue the practice before the
Office and/or is fit to defend the alleged charges against the
practitioner in a disciplinary investigation or disciplinary proceeding
that has been held in abeyance pending such recovery.
Paragraph (b) of Sec. 11.28 would provide that the hearing officer
may authorize the OED Director to apply to a court of competent
jurisdiction for an order appointing counsel to represent the
practitioner whose disability or addiction is under consideration if it
appears to the hearing officer's satisfaction, based on the
practitioner's motion or notice of the OED Director, that otherwise the
practitioner will appear pro se and may therefore be without adequate
representation.
[[Page 69458]]
Paragraph (c) of Sec. 11.28 would provide that all proceedings
addressing disability matters before the hearing officer be initiated
by motion. The motion would contain a brief statement of all material
facts, a proposed petition and/or recommendation to be filed with the
USPTO Director if the movant's request is granted by the hearing
officer, and affidavits, medical reports, official records, or other
documents setting forth or establishing any of the material facts on
which the movant is relying. The non-moving party's reply would set
forth all objections, an admission, denial or lack of knowledge with
respect to each of the material facts in the movant's papers, and
affidavits, medical reports, official records, or other documents
setting forth facts on which the non-moving party intends to rely for
purposes of disputing or denying any material fact set forth in the
movant's papers.
Paragraph (d) of Sec. 11.28 would provide a procedure addressing a
practitioner judicially declared to be mentally incompetent or
involuntarily committed to a mental hospital as an inpatient. The
procedure would include action by the OED Director (paragraph (1)).
Paragraph (e) of Sec. 11.28 would provide a procedure to address
circumstances in which a practitioner is incapacitated from continuing
to practice before the Office because of disability or addiction, but
is nonetheless likely to offer or attempt to perform legal services
while so incapacitated. The procedure would include action by the OED
Director (paragraph (1)), and the required evidence (paragraph (2)).
Paragraph (f) of Sec. 11.28 would locate in one paragraph the
provision for further proceedings for paragraphs (d) and (e). The
procedure would include action by the Committee on Discipline Panel
(paragraph (1)), action by OED Director (paragraph (2)), response by
Practitioner (paragraph (3)), initial decision by the hearing officer
(paragraph (4)), appeal to the USPTO Director (paragraph (5)), and
action by USPTO Director (paragraph (6)).
Paragraph (g) of Sec. 11.28 would provide a procedure for the
circumstance in which a practitioner files a motion requesting the
hearing officer to enter an order holding a disciplinary proceeding in
abeyance based on the contention that the practitioner is suffering
from a disability or addiction that makes it impossible for the
practitioner to adequately defend the charges in the disciplinary
proceeding. The procedure would include the practitioner's motion
(paragraph (1)), and disposition of the practitioner's motion
(paragraph (2)).
Paragraph (h) of Sec. 11.28 would provide a procedure for deciding
allegations that a practitioner has recovered from a prior disability.
This paragraph would apply to proceedings for reactivation as well as
for resumption of disciplinary matters held in abeyance. Paragraphs (2)
and (3) would pertain to reactivation, whereas paragraph (4) would
apply to resumption of disciplinary proceedings held in abeyance. The
regulation would limit an incapacitated practitioner suspended under
this section to applying for reinstatement once a year, unless the
USPTO Director orders shorter intervals. The practitioner may be
required to undergo examination by a qualified medical expert, selected
by the OED Director, at the practitioner's expense. The practitioner
also may be required to establish his or her competence and learning in
the law.
Paragraph (i) of Sec. 11.28 would provide that a hearing officer
may order resumption of a disciplinary proceeding against a
practitioner upon determining that the practitioner is not
incapacitated from defending himself or herself, or not incapacitated
from practicing before the Office.
Section 11.32, like current Sec. 10.132, would provide a procedure
for initiating a disciplinary proceeding and for referring the
proceeding to a hearing officer. Under paragraph (2) of Sec. 11.32,
when the OED Director is of the opinion that there is probable cause to
believe that an imperative rule of the USPTO Rules of Professional
Conduct has been violated, the OED Director would determine whether a
practitioner should be given notice under 5 U.S.C. 558(c). Section
558(c) provides, in part, ``Except in cases of willfulness or those in
which public health, interest, or safety requires otherwise, the
withdrawal, suspension, revocation, or annulment of a license is lawful
only if, before the institution of agency proceedings therefor, the
licensee has been given (1) notice by the agency in writing of the
facts or conduct which may warrant the action; and (2) opportunity to
demonstrate or achieve compliance with all lawful requirements.'' The
provisions of 5 U.S.C. 558(c) would apply to a registered patent
practitioner who is investigated for possible misconduct occurring in
connection with either a patent or a trademark matter. However, the
provisions of 5 U.S.C. 558(c) do not apply to disciplinary proceedings
in the Office involving practitioners who are not registered inasmuch
as the Office does not issue a license to such practitioners.
Nevertheless, OED customarily provides unregistered practitioners with
the opportunity to demonstrate or achieve compliance with all lawful
requirements. Where a practitioner willfully violates an imperative
rule of the USPTO Rules of Professional Conduct, notice and opportunity
to demonstrate compliance would not be required. In certain cases, the
public interest may require suspension of an incompetent practitioner
or a practitioner who has been found guilty of a crime and committed to
the custody of the Attorney General or has otherwise been incarcerated.
After giving notice under 5 U.S.C. 558(c), or if no notice is
needed, the OED Director would call a meeting of a panel of the
Committee on Discipline. The Committee panel consisting of three USPTO
employees, would determine by a majority vote whether there is probable
cause to believe that a practitioner has violated an Office Rule of
Professional Conduct. If the Committee determines that a violation has
occurred, the OED Director would institute a disciplinary proceeding by
filing a ``complaint'' under Sec. 11.34. Upon the filing of a
complaint, an attorney under the Office of General Counsel designated
to represent the OED Director would prosecute the disciplinary
proceeding on behalf of the OED Director. Upon the filing of the
complaint, the disciplinary proceedings will be referred to a hearing
officer.
A hearing officer would be used in disciplinary proceedings brought
under 35 U.S.C. 32. The hearing officer may be an employee of the
Office appointed by the USPTO Director, or an Administrative Law Judge
(ALJ). The use of a hearing officer is not required to suspend or
exclude a practitioner in trademark or other non-patent matters. See
Herman v. Dulles, 205 F.2d 715 (D.C. Cir. 1958). Nevertheless, a
hearing officer is qualified to handle disciplinary proceedings.
Accordingly, as a matter of policy the Office is and will continue to
use ALJ's, and take the opportunity to use Office employees as hearing
officers.
Section 11.34, like current Sec. 10.134, would set out the
requirements of a complaint. A complaint would be deemed sufficient if
it fairly informs the respondent of any violation of an imperative rule
of the USPTO Rules of Professional Conduct which form the basis of the
disciplinary proceeding so that the respondent is able to answer. See
In re Ruffalo, 390 U.S. 540 (1968).
Section 11.35, like current Sec. 10.135, would provide alternative
methods for serving a complaint. Service of complaints by certified or
registered
[[Page 69459]]
mail is not always available, because receipts are returned signed by
individuals other than the respondent. Moreover, the Office may have to
resort to proving who signed a particular receipt. Accordingly, Sec.
11.35 provides that service may be accomplished by handing the
complaint to the respondent. When service is by hand delivery, the
party serving the respondent would file an affidavit with the OED
Director. An alternative method for serving the complaint is to mail
the complaint first-class mail or ``Express Mail'' to the last known
address of the respondent. Although the proposed rule being considered
does not so specify, under this rule the OED Director would probably
attempt to contact the respondent shortly after mailing to determine
whether the complaint had been received. A third method of service
would be any method mutually agreeable to the OED Director and a
respondent.
Paragraph (b) of Sec. 11.35 would provide that if a complaint is
returned by the Postal Service, a second complaint would be mailed. If
the second complaint is returned, the respondent would be served by
appropriate notice published in the Official Gazette for two
consecutive weeks. Any time for answering would run from the second
publication of the notice.
Section 11.36 would continue, in paragraphs (a) through (e), to
provide the same procedure as in current Sec. 10.136 for answering a
complaint. For instance, under paragraph (a), an answer would be due
within thirty days unless extended for up to no more than thirty
additional days by the hearing officer. Paragraph (f) would provide
procedures for giving notice of intent to raise an alleged disability
in mitigation of the sanction that may be imposed. The regulation also
would provide for appointment of monitor(s), and for suspension of
respondent if the monitor reports violation of any terms or conditions
under which the respondent continued to practice.
Section 11.37, like current Sec. 10.137, would provide that false
statements in an answer could be made the basis of supplemental
charges.
Section 11.38, like current Sec. 10.138, would provide that on
filing of an answer, a disciplinary proceeding would become a contested
case within the meaning of 35 U.S.C. 24. Evidence obtained by a
subpoena issued under 35 U.S.C. 24 would not be admissible in evidence
or considered unless leave to proceed under 35 U.S.C. 24 is first
obtained from the hearing officer. Ordinarily, a subpoena under 35
U.S.C. 24 is needed when a witness will not voluntarily appear. Often,
subpoenas are issued to be sure that a witness appears--particularly if
both counsel and the hearing officer have to travel to hear the
testimony of a witness. Approval by the hearing officer before a
subpoena is issued is necessary. Initially, the hearing officer can
determine whether the evidence is relevant and/or whether a third party
should be subjected to the inconvenience of a subpoena. In this
respect, if the hearing officer does not believe any proffered evidence
is admissible, the hearing officer may refuse to permit any party to
proceed under 35 U.S.C. 24. If a party nevertheless caused a subpoena
to issue, a motion to quash the subpoena would lie in the District
Court, which issued the subpoena. Moreover, evidence obtained by
subpoena without leave of the hearing officer would not be admitted or
considered in the disciplinary proceeding. The proposed rule would
adopt the policy of Sheehan v. Doyle, 513 F.2d 895, 898, 185 USPQ 489,
492 (1st Cir.), cert. denied, 423 U.S. 874 (1975), and Sheehan v.
Doyle, 529 F.2d 38, 40, 188 USPQ 545, 546 (1st Cir.), cert. denied, 429
U.S. 879 (1976), rehearing denied, 429 U.S. 987 (1976), while rejecting
the policy announced in Brown v. Braddick, 595 F.2d 961, 967, 203 USPQ
95, 101-102 (5th Cir. 1979).
Section 11.39, like current Sec. 10.139, would provide for an ALJ
to conduct disciplinary proceedings. Additionally, a hearing officer
appointed under 35 U.S.C. 32 also would be able to conduct the
proceedings. Paragraph (b) of Sec. 11.39 would set out the authority
of the hearing officer.
Paragraph (2) of Sec. 11.39(c) would provide for the hearing
officer's ruling on motions. See also Sec. 11.43. It should be noted
that, under Sec. 11.42(e), a hearing officer could require papers to
be served by ``Express Mail.''
Paragraph (4) of Sec. 11.39(c) would require the hearing officer
to authorize the taking of depositions in lieu of personal appearance
at a hearing. The hearing officer would have discretion to authorize
the taking of depositions. If demeanor is an issue for a particular
witness, the hearing officer could exercise discretion and deny a
request to take a deposition in lieu of appearance. When the hearing
officer would authorize a deposition, notice and taking of the
deposition would be governed by Sec. 11.51(a).
Paragraph (8) of Sec. 11.39(c) would provide for the hearing
officer adopting procedures for the orderly disposition of disciplinary
proceedings. For example, the hearing officer could require the parties
to file not only a pre-hearing exchange setting out the names of
witnesses to be called, a summary of their expected testimony, and
copies of exhibits to be used in their respective cases-in-chief; but
also a pre-hearing brief discussing any disputed legal and factual
issues.
Paragraph (d) of Sec. 11.39 would provide for the hearing officer
exercising such control over the disciplinary proceeding as to normally
issue an initial decision within nine months from the filing of the
complaint. The hearing officer, however, could issue an initial
decision after nine months if in his or her opinion there exists
unusual circumstances that preclude issuance of the initial decision
within the nine-month period. The purpose of this provision would be to
put parties on notice that the hearing officer has authority to
complete his or her work within nine months, and that parties should
plan to meet any time schedules set by the hearing officer. This
paragraph would be designed to minimize delays. It is expected that the
hearing officer would, as in the past, consult with the parties in
setting times, and the nine-month provision will not set an undue
hardship on either party.
Paragraphs (e) and (f) of Sec. 11.39 would preclude interlocutory
appeal by the OED Director or respondent from an order of the hearing
officer except under limited circumstances. Under paragraph (d), the
hearing officer could permit interlocutory review of his or her order
when the interlocutory order involves a controlling question of
procedure or law as to which there is a substantial ground for a
difference of opinion and an immediate decision by the USPTO Director
may materially advance the ultimate termination of the disciplinary
proceeding or in an extraordinary situation where justice requires
review. The standard would be the same as that of 28 U.S.C. 1292(b).
Proceedings before the hearing officer would not be stayed for an
interlocutory appeal unless the hearing officer or USPTO Director
grants a stay. Under this section, stays would be granted only in the
most compelling circumstances. The parties filing appeals or requests
for review of interlocutory orders would not render the hearing officer
ineffective.
Section 11.40, like current Sec. 10.140, would provide for
representation of respondent and the OED Director.
Section 11.41, like current Sec. 10.141, would provide for the
filing of papers. Under paragraph (a), the certificate of mailing
practice under 37 CFR 1.8 and 1.10 is not applicable in disciplinary
proceedings. Paragraph (b) would provide that papers filed after the
[[Page 69460]]
complaint and prior to entry of an initial decision would be filed with
the hearing officer. The hearing officer would designate the address to
which he or she would want papers mailed. The hearing officer, however,
could require that papers be hand-delivered to his or her office. All
papers filed after the initial decision would be filed with the OED
Director, who would transmit to the USPTO Director any paper requiring
action by the USPTO Director.
Section 11.42, like current Sec. 10.142, would provide for the
method of serving papers in disciplinary proceedings.
Section 11.43, like current Sec. 10.143, would provide for filing
of motions. No motion could be filed unless supported by a written
statement that the moving party conferred with the opposing party for
the purpose of resolving the issues raised by the motion and that
agreement has not been reached. If the parties resolve the issue raised
in the motion prior to a decision on the motion by the hearing officer,
the parties would be required to notify the hearing officer.
Section 11.44, like current Sec. 10.144, would provide for
hearings before the hearing officer. Hearings would be transcribed and
a copy of the transcript would be provided to the OED Director and the
respondent at the expense of the Office. If the respondent fails to
appear at the hearing, the hearing officer may proceed with the hearing
in the absence of the respondent. Under paragraph (c), a hearing
normally would not be open to the public. The need for closed hearings
in matters involving patent applications is occasioned in part by 35
U.S.C. 122. Apart from the Office obligation to keep information
concerning patent applications confidential, until a practitioner is
disciplined, it is believed that opening hearings to the public would
constitute a clearly unwarranted invasion of privacy. The closure of
the hearing, however, would not preclude the OED Director and
respondent from approaching witnesses and providing those witnesses
with sufficient information to determine whether they can give relevant
information.
Section 11.45, like current Sec. 10.145, would provide a procedure
for handling cases where there is variance between the allegations and
in pleading and evidence. Any party would be given reasonable
opportunity to meet any allegations in an amended complaint or answer.
See In re Ruffalo, 390 U.S. 544 (1968). The section is modified to
provide that the matter need not be referred back to the Committee on
Discipline to amend the complaint.
Section 11.49, like current Sec. 10.149, would provide that the
OED Director would have the burden of proving a violation of the
imperative USPTO Rules of Professional Conduct by clear and convincing
evidence. The Respondent would have the burden of proving any
affirmative defense by clear and convincing evidence.
It is reported that the USPTO is among a minority of agencies that
apply the clear and convincing standard in their disciplinary
proceedings. Agencies are not required to apply that standard to their
disciplinary proceedings under the Administrative Procedure Act. See
Steadman v. SEC, 450 U.S. 91 (1981); and Checkosky v. SEC, 23 F.3d 452,
475 (D.C. Cir. 1994). See also Rules Governing Misconduct by Attorneys
or Party Representative, Final Rule, 61 Fed. Register 65323, 65328-29
(Dec 12, 1996). Comments are invited whether the USPTO should continue
to use the ``clear and convincing'' standard, or adopt the
preponderance of evidence standard established by the Administrative
Procedure Act.
Section 11.50, like current Sec. 10.150, would provide rules
governing evidence. Under paragraph (a) of Sec. 11.50, the rules of
evidence prevailing in courts of law and equity would not be
controlling. This provision is based on 5 U.S.C. 556(d), which
provides, in part, that ``[a]ny oral or documentary evidence may be
received, but the agency as a matter of policy shall provide for the
exclusion of irrelevant, immaterial, or unduly repetitious evidence.''
Thus, evidence in a disciplinary proceeding is not controlled by the
Federal Rules of Evidence. See Klinestiver v. Drug Enforcement
Administration, 606 F.2d 1128, 1130 (D.C. Cir. 1979). While most
evidence admissible under the Federal Rules of Evidence would be
admissible in a disciplinary proceeding, there is evidence that is not
admissible under the Federal Rules of Evidence, but which may be
admissible in a disciplinary proceeding. Paragraph (b) of Sec. 11.50
would provide for admission into evidence of depositions taken under
Sec. 11.51. Any deposition under Sec. 11.51(a) would have prior
approval of the hearing officer. A deposition under Sec. 11.51(b)
would not have prior approval, but may or may not be admissible.
Admissibility of the latter deposition is within the discretion of the
hearing officer. Under paragraph (c) of Sec. 11.50, Office documents,
records, and papers would not have to be certified to be admissible.
Under paragraph (e) of Sec. 11.50, objections to evidence would be in
short form, all objections and rulings would be part of the record, and
no exception to the ruling would be necessary to preserve the rights of
the parties.
Section 11.51, like current Sec. 10.151, would provide for
depositions. Under paragraph (a) of Sec. 11.51, either the OED
Director or the respondent may move for leave to take a deposition of a
witness in lieu of personal appearance of the witness before the
hearing officer. The hearing officer is authorized to grant leave to
take the deposition upon a showing of good cause. The taking of
depositions under paragraph (a) would not be for the purpose of
discovery. A deposition would be taken only when it is not possible or
desirable for the hearing officer to hear the witness in person. Under
paragraph (b) of Sec. 11.51, the OED Director and the respondent could
agree to take a deposition. Often depositions are desirable during
settlement. The testimony of a witness may be ``locked-in'' through a
deposition. The Office has settled several disciplinary matters in the
past. However, under paragraph (b) of Sec. 11.51, the parties could
not take depositions for use at a hearing without prior approval of the
hearing officer. This provision is necessary for the hearing officer to
maintain control over the proceeding.
Section 11.52, like current Sec. 10.152, would provide for limited
discovery. There are cases holding that discovery is not necessary in
disciplinary proceedings. See In re Murray, 362 N.E.2d 128 (Ind. 1977);
and In re Wireman, 367 N.E.2d 1368 (Ind. 1977). However, the USPTO
proposes to limit some discovery while seeking to avoid delays
frequently experienced in the discovery permitted by the Federal Rules
of Civil Procedure. Under Sec. 11.52, the hearing officer could
require parties to file and serve, prior to any hearing, a pre-hearing
statement listing all proposed exhibits to be used in connection with
the party's case-in-chief, a list of proposed witnesses, the identity
of any Government employee who investigated the case, and copies of
memoranda reflecting respondent's own statements. This provision is
patterned after Silverman v. Commodities Futures Trading Commission,
549 F.2d 28 (7th Cir. 1977). The hearing officer could determine when
discovery authorized by paragraph (a) of Sec. 11.52 should be made.
Paragraphs (a) and (b) of Sec. 11.52 would limit discovery to
exhibits that a party intends to use as part of his or her case-in-
chief. Exhibits not used in a party's case-in-chief, but which might be
used to impeach or cross-examine the other party's witnesses, would not
have to be produced. If a document were to
[[Page 69461]]
be used both in a case-in-chief and to impeach, it would have to be
produced.
Paragraph (4) of Sec. 11.52(e) would provide for identifying any
Government witness who investigated the matter. Respondent could then
call the Government witness. Paragraph (5) of Sec. 11.52 would provide
for producing copies of any statement made by the respondent.
Section 11.53, like current Sec. 10.153, would afford the parties
a reasonable opportunity to submit proposed findings and conclusions,
and a post-hearing memorandum. See 5 U.S.C. 557(c).
Section 11.54, like current Sec. 10.154, would provide for the
hearing officer to file an ``initial decision.'' It would be expected
that the hearing officer would make appropriate reference to the
administrative record in explaining an initial decision. See, e.g.,
Food Marketing Institute v. Interstate Commerce Commission, 587 F.2d
1285, 1292, n.20 (D.C. Cir. 1978). In the absence of an appeal to the
USPTO Director under Sec. 11.55, the decision of the hearing officer
would become the final decision in the disciplinary proceeding. See 5
U.S.C. 557(b).
Paragraph (b) of 11.54 would require the hearing officer to explain
the reason(s) for any penalty. Four factors would guide the hearing
officer and the USPTO Director in setting and approving penalties. The
factors are the public interest, the seriousness of the violation of
the imperative USPTO Rules of Professional Conduct, the deterrent
effects deemed necessary, and the integrity of the bar. These factors
are derived from numerous cases, including Silverman v. Commodities
Futures Trading Commission, 562 F.2d 432, 439 (7th Cir. 1977); and In
re Merritt, 363 N.E.2d 961, 971 (Ind. 1977). See also Florida Bar v.
Murrell, 74 So.2d 221 (Fla. 1954). Under the proposed rules, a sanction
would be a matter within the discretion of the hearing officer, with
ultimate discretion in the USPTO Director. The discipline in each
disciplinary case would be tailored for the individual case. See In re
Wines, 660 P.2d 454 (Ariz. 1983). Manifestly, absolute uniformity or
perfection would not be expected. Id. Likewise, relitigation of
penalties imposed in prior cases would not be permitted. Id.
Section 11.55, like current Sec. 10.155, would provide for an
appeal from an initial decision of the hearing officer to the USPTO
Director. Under paragraph (a) of Sec. 11.55, any appeal would have to
be taken within thirty days after the initial decision of the hearing
officer. A cross-appeal would have to be filed fourteen days after the
date of service of the appeal or thirty days after the initial
decision, whichever is later. Under paragraph (c) of Sec. 11.55, the
USPTO Director may order reopening of a disciplinary proceeding in
accordance with the principles that govern the granting of new trials
based on newly discovered evidence that could not have been discovered
by due diligence. Under paragraph (d) of Sec. 11.55, if an appeal is
not taken, the initial decision of the hearing officer would become the
decision of the USPTO Director. See Sec. 11.54(a).
Section 11.56, like current Sec. 10.156, would provide for a
decision by the USPTO Director. The USPTO Director could affirm,
reverse, or modify an initial decision of a hearing officer, or remand
the proceeding to the hearing officer for such further proceedings as
the USPTO Director may deem appropriate. Under paragraph (c) of Sec.
11.56, a respondent could make a single request for reconsideration or
modification.
Section 11.57, like current Sec. 10.157, would set out how
judicial review could be obtained from a final decision of the USPTO
Director. Judicial review must occur in the United States District
Court for the District of Columbia in accordance with 35 U.S.C. 32, and
Local Rule LCvR 83.7 of the United States District Court for the
District of Columbia.
Section 11.58, like current Sec. 11.158, would set out conditions
imposed on a practitioner suspended or excluded from the practice of
law before the Office. Paragraph (a) of Sec. 11.58 would make clear
that a practitioner suspended or excluded under Sec. 11.56 will not be
automatically reinstated. For example, a suspended or excluded
practitioner would be required, inter alia, to comply with the
provisions of Sec. Sec. 11.12 and 11.60 to be reinstated.
Paragraph (b) of Sec. 11.58 sets out what a suspended or excluded
practitioner would be required to do. Paragraph (1) of Sec. 11.58(b)
would require the practitioner take a number of actions within twenty
days after the date of entry of the order of suspension or exclusion.
The actions include filing notices of withdrawal in pending patent and
trademark applications, reexamination and interference proceedings, and
every other matter pending before the Office within twenty days after
the entry of the order. The practitioner would be required to notify
affiliated bars, and all clients having business before the Office, of
the discipline imposed and inability to act; notify practitioners for
all opposing parties having business before the Office; deliver to all
clients having business before the Office any papers or other property
to which the clients are entitled; and refund any part of any fees paid
in advance and unearned. A practitioner also would be required to
remove from any telephone, legal, or other directory any advertisement,
statement, or representation which would reasonably suggest that the
practitioner is authorized to or does practice before the Office.
Paragraph (2) of Sec. 11.58(b) would require the practitioner
within 30 days after entry of the order of exclusion or suspension to
file with the OED Director an affidavit certifying that the
practitioner has fully complied with the provisions of the order, and
with the Rules of Professional Conduct. Appended to the affidavit would
be documents showing compliance with the suspension or exclusion order.
The documents would include a copy of each form of notice, the names
and addressees of the clients, practitioners, courts, and agencies to
which notices were sent, and all return receipts or returned mail
received up to the date of the affidavit. Also appended would be a
schedule of all accounts where the practitioner holds or held as of the
entry date of the order any client, trust, or fiduciary funds regarding
practice before the Office, proof of the proper distribution of the
client, trust and fiduciary funds; a list of all jurisdictions to which
the practitioner is admitted to practice, and the steps taken to remove
any advertisement or representation suggesting that the practitioner is
authorized to or does practice before the Office.
Paragraph (c) of Sec. 11.58 would require that an order of
exclusion or suspension be effective immediately after entry except as
provided in Sec. Sec. 11.24, 11.25, and 11.28, where the order would
be effective immediately. The excluded or suspended practitioner, after
entry of the order, would not accept any new retainer regarding
immediate, pending, or prospective business before the Office, or
engage as a practitioner for another in any new case or legal matter
regarding practice before the Office. However, the practitioner would
be granted limited recognition for thirty days to conclude other work
on behalf of a client on any matters that were pending before the
Office on the date of entry. If such work cannot be concluded, the
practitioner would have to so advise the client so that the client
could make other arrangements.
Paragraph (d) of Sec. 11.58 would provide for an excluded or
suspended practitioner to keep and maintain records of the various
steps taken under this section, so that in any subsequent
[[Page 69462]]
proceeding, proof of compliance with this section and with the
exclusion or suspension order will be available. Proof of compliance
will be required as a condition precedent to reinstatement. These
provisions were derived from District of Columbia Appellate Rule XI,
section 14.
Paragraph (e) of Sec. 11.58, like Sec. 10.158(c), would provide
conditions under which a suspended or excluded practitioner could aid
another practitioner in the practice of law before the Office. These
provisions were derived from the same cases considered when current
Sec. 10.158(c) was proposed, including In re Christianson, 215 N.W. 2d
920 (N.D. 1974); In re Hawkins, 503 P.2d 95 (Wash. 1972); Florida Bar
v. Thomson, 354 So.2d 3000 (Fla. 1975); In re Kraus, 670 P.2d 1012
(Ore. 1983); In re Easler, 272 S.E.2d 32 (S.C. 1980); Crawford v. State
Bar of California, 7 Cal. Rptr. 746 (Cal. 1960); and Ohio State Bar
Ass'n. v. Hart, 375 N.E.2d 1246 (Ohio 1978). Like a suspended or
disbarred attorney, who ``is not the same as a layman,'' In re
Christianson, 215 N.W.2d at 925, the same would obtain for a
practitioner suspended or excluded from practice before the Office.
Thus, while a suspended or excluded practitioner would be permitted to
be employed by a practitioner, the suspended or excluded practitioner
would have to be a salaried employee of the practitioner for whom he or
she works and could not share profits from practice before the Office.
A suspended or excluded practitioner could not communicate directly
with clients, render legal advice, or meet with witnesses regarding
prospective or immediate business before the Office. A suspended or
excluded practitioner could research the law, write patent or trademark
applications (provided he or she did not interview clients or
witnesses, the practitioner reviewed the application, and the
practitioner signed the papers filed in the Office), or conduct patent
or trademark searches. The provisions of Sec. 11.58 are considered
necessary if suspension or exclusion is to have any significance.
Paragraph (f) of Sec. 11.58, like current Sec. 10.158(d), would
proscribe reinstatement of a suspended or excluded practitioner who has
acted as paralegal or performed other services assisting another
practitioner before the Office, unless an affidavit is filed explaining
the nature of all paralegal and other services performed, and showing
that the suspended or excluded practitioner complied with the
provisions of this section and the imperative USPTO Rules of
Professional Conduct.
Comment is invited whether the USPTO should delete the provisions
of Sec. 10.58(c) and (d), and not adopt proposed paragraphs (e) and
(f) of Sec. 11.58. Permitting the suspended or excluded practitioner
to aid another practitioner places at least some suspended or excluded
practitioners in conflict with state laws or court orders. For example,
a number of states' disciplinary jurisdictions prohibit suspended or
excluded attorneys from acting as paralegals. Also, permitting a
suspended or excluded practitioner to aid another practitioner provides
the former with an opportunity to continue serving the same clients
from whose cases the practitioner was required to withdraw. This can be
not only confusing for the clients, but also provides the suspended or
excluded practitioner with an opportunity to maintain some appearance
of a continued practice. Further, the USPTO is and will continue to
reciprocally discipline attorneys suspended or disbarred by state
disciplinary authorities. Permitting the practitioner reciprocally
disciplined by the USPTO to engage in conduct proscribed by state laws
or court orders, such as aiding a practitioner by preparing patent or
trademark applications, leads to conflicting circumstances. The same
conflicts can arise if a state disciplines an attorney following
discipline imposed by the USPTO. Accordingly, the USPTO wishes to
consider comments favoring or disagreeing with such a change to the
current practice.
Section 11.59, like current Sec. 10.159, would provide for notice
of suspension or exclusion. Under paragraph (a) of Sec. 11.59, upon
issuance of an unfavorable final decision, the OED Director would give
appropriate notice to employees of the Office, United States courts,
the National Discipline Data Bank maintained by the American Bar
Association Standing Committee on Professional Discipline and the
appropriate authorities of any State in which a suspended or excluded
practitioner is known to be a member of the bar. If a practitioner is
registered under Sec. 11.6(c), the OED Director would also notify the
patent office of the country where the practitioner resides. Under
paragraph (b) of Sec. 11.59, the OED Director would publish an
appropriate notice in the Official Gazette and the Office Web site.
Under paragraph (c) of Sec. 11.59, the OED Director would maintain
records that would be available to the public concerning disciplinary
proceedings. The files of most disciplinary proceedings resulting in
imposition of a public reprimand, suspension, or exclusion are
presently available to the public for inspection in the Office of
Enrollment and Discipline. Public availability would continue under the
proposed rules being considered subject to the removal of any
information required by law to be maintained in confidence or secrecy.
Under paragraph (e) of Sec. 11.59, the order of exclusion when a
practitioner is excluded on consent would be accessible, but the
affidavit under paragraph (a) of Sec. 11.27 would not be accessible
except upon order of the USPTO Director or on consent of the
practitioner.
Section 11.60, like current Sec. 10.160, would provide for a
petition for reinstatement. Under paragraph (a) of Sec. 11.60 an
excluded or suspended practitioner would not be permitted to resume
practice of patent, trademark, or other non-patent law before the
Office until reinstated by order of the OED Director or the USPTO
Director. An excluded practitioner not otherwise ineligible for
reinstatement may not apply for reinstatement until the expiration of
at least five years from the effective date of the exclusion. Under
paragraph (b) of Sec. 11.60, a practitioner suspended indefinitely
because of disability may seek reinstatement, but reinstatement would
not be ordered except on a showing by clear and convincing evidence
that the disability has ended, that the practitioner has complied with
Sec. 11.12, and that the practitioner is fit to resume the practice of
law.
Paragraph (c) of Sec. 11.60, like current Sec. Sec. 10.160(a) and
(d), would proscribe a suspended practitioner from being eligible for
reinstatement until a period of the time equal to the period of
suspension elapses following compliance with Sec. 11.58, and an
excluded practitioner would not be eligible for reinstatement until
five years elapses following compliance with Sec. 11.58.
Paragraph (d) of Sec. 11.60 would require a petition for
reinstatement to include proof of rehabilitation. If the practitioner
is not eligible for reinstatement apart from rehabilitation, or the
petition is insufficient or defective on its face, the OED Director may
dismiss the petition. Otherwise the OED Director would consider a
petitioner's attempted showing of rehabilitation. The practitioner
would have the burden of proof by clear and convincing evidence. The
proof would establish that the practitioner has the moral character
qualifications, competency, and learning in law required under Sec.
11.7 for readmission, and that resumption of practice before
[[Page 69463]]
the Office would not be detrimental to the administration of justice,
or subversive to the public interest.
Paragraph (e) of Sec. 11.60 would provide that if the petitioner
is found fit to resume practice before the Office, the OED Director
will order reinstatement, which may be conditioned upon the making of
partial or complete restitution to persons harmed by the misconduct
that led to the suspension or exclusion, upon the payment of all or
part of the costs of the disciplinary and reinstatement proceedings, or
any combination thereof.
Paragraph (f) of Sec. 11.60 would provide that if the petitioner
is unfit to resume practice before the Office, the petitioner is
provided an opportunity to show cause in writing why the petition
should not be denied. If unpersuaded by the showing, the petition would
be denied. The suspended or excluded practitioner may be required to
take and pass an examination under Sec. 11.7(b), ethics courses, and/
or the Multistate Professional Responsibility Examination.
Paragraph (g) of Sec. 11.60 would proscribe filing a further
petition for reinstatement if the petition is denied until the
expiration of at least one year following the denial unless the order
of denial provides otherwise.
Paragraph (h) of Sec. 11.60, like Sec. 10.160(e), would open to
the public proceedings on any petition for reinstatement.
Section 11.61 would have savings clauses.
Section 11.62 would express a policy that if a practitioner dies,
disappears, or is suspended for incapacity or disability, and there is
no partner, associate, or other responsible practitioner capable of
conducting the practitioner's affairs, a court of competent
jurisdiction may appoint a registered practitioner to make appropriate
disposition of any patent application files. All other matters would be
handled in accordance with the laws of the local jurisdiction.
Rules of Professional Conduct
The following comments contain several references to invention
promotion companies (invention promoters). At the outset, the Office
wishes to make clear that neither the current Disciplinary Rules nor
the proposed Rules of Professional Conduct prohibit a practitioner from
associating with an invention promoter. Moreover, neither the current
Disciplinary Rules nor the proposed Rules of Professional Conduct
prevent a practitioner from having an arrangement with an invention
promoter, or from providing professional services in compliance with
the rules. However, practitioners having arrangements with invention
promoters face the same scrutiny that attorneys having arrangements
with non-lawyer parties that market legal service (marketers) have
faced. The arrangements with promoters have faced intense scrutiny
throughout the country by ethics committees, courts, and disciplinary
authorities. Decisions and opinions in other jurisdictions hold the
arrangements unethical on a variety of bases. Practitioners should
carefully examine their participation in any arrangement of this sort
with a promoter.
There is reasonable cause to scrutinize the arrangements with
invention promoters. For more than two decades, the Federal Trade
Commission (FTC) has investigated, and absent a settlement, has sought
injunctive and other equitable relief against invention promoters for
violations of Sec. 5 of the Federal Trade Commission Act, 15 U.S.C.
45. The FTC has investigated whether or alleged that in one manner or
another a promoter has engaged in unfair or deceptive acts or
practices, in or affecting commerce, with customers who contracted with
the promoter for invention development services. See Raymond Lee
Organization, Inc., 92 F.T.C. 489 (1978), aff'd sub nom. Raymond Lee v.
FTC, 679 F.2d 905 (D.C. Cir. 1980); FTC v. Invention Submission Corp.,
1991-1 Trade Cases Sec. 69,338, 1991 WL 47104 (D.D.C 1991); FTC v.
American Institute for Research and Development, 219 B.R. 639 (D Mass.
1998), modified sub nom. FTC v. American Inventors Corporation, 1996 WL
641642 (D. Mass 1996); and FTC v. National Invention Services, Inc.,
1997 WL 718492 (D.N.J. 1997). Each promoter offered the services of a
registered patent attorney. A patent attorney associated with one
promoter was indicted on five counts of conspiracy to commit mail fraud
and mail fraud, and a warrant for his arrest was issued in 1999 by the
U.S. Postal Inspection Service. Inasmuch as equitable relief was
obtained in each instance, it would be appropriate for the Rules of
Professional Conduct to address the conduct that practitioners must
address upon agreeing to accept referrals from promoters.
Section 11.100 would provide guidance for interpreting the Office
Rules of Professional Conduct. In interpreting these Rules, the
specific would control the general in the sense that any rule that
specifically addresses conduct would control the disposition of matters
and the outcome of such matters would not turn upon the application of
a more general rule that arguably also applies to the conduct in
question. In a number of instances, there are specific rules that
address specific types of conduct. The rule of interpretation expressed
here is meant to make it clear that the general rule does not supplant,
amend, enlarge, or extend the specific rule. So, for instance, the
general terms of proposed rule 11.103 are not intended to govern
conflicts of interest, which are particularly discussed in proposed
rules 11.107, 11.108, and 11.109. Thus, conduct that is proper under
the specific conflict rules is not improper under the more general rule
of proposed rule 11.103. Except where the principle of priority is
applicable, however, compliance with one rule does not generally excuse
compliance with other rules. Accordingly, once a practitioner has
analyzed the ethical considerations under a given rule, the
practitioner must generally extend the analysis to ensure compliance
with all other applicable rules.
Sections 11.100 through 11.901 are proposed to establish Office
Rules of Professional Conduct. Presently, practitioners representing
parties in patent, trademark and other non-patent matters are required
to conform to the Code of Professional Responsibility set forth in 37
CFR 10.20 through 10.112. The Office believes that it would be more
desirable to bring the Office disciplinary rules into greater
conformity with the Rules of Professional Conduct followed by a
majority of the states. Such conformity would provide not only
consistency in practicing law before the Office as well as in the
states, but also a body of precedent already developed in the states
having ethics opinions and disciplinary results based on the Model
Rules of Professional Conduct.
The proposed Office Rules of Professional Conduct, in large part,
follow the Model Rules of Professional Conduct of the American Bar
Association. The concordance between the rules is based on two factors.
First, many registered patent attorneys are members of bars that have
adopted the Model Rules or a modified version thereof. Accordingly,
they already would be subject to substantially the same Model Rules for
conduct in connection with their practice. Rule 8.5. Second, adopting
USPTO Rules of Professional Conduct that follow, in many respects, the
Model Rules of Professional Conduct adopted in more than 40
jurisdictions, facilitates both compliance with the rules, and the
ability of practitioners to move between the employment by the Office,
other
[[Page 69464]]
Government agencies, and the private sector.
Several of the proposed Office Rules of Professional Conduct do not
conform to the Model Rules of Professional Conduct of the American Bar
Association. For example, the Rules of Professional Conduct of the Bar
of the District of Columbia would be the source of proposed Sec. Sec.
1.101(b), 11.102(f), 11.104(c), 11.105(e)(2)-(4), 11.106(a)(2)-(3),
11.106(d)-(g), 11.601, and 11.701(b)(1)-(4) and (c). The Rules of
Professional Responsibility of the Virginia State Bar would be the
source of proposed Sec. Sec. 11.115(a), and (c) through (g). The
source of the provisions in proposed Sec. 1.806 are the Court Rules of
the New York Appellate Division, Second Department. Other proposed
rules, addressing relations with invention promoters, would be
original. Still other proposed rules would conform to disciplinary
rules previously adopted by the USPTO or other Federal agencies, such
as Sec. 11.804(h). It is necessary to diverge from the Model Rules of
Professional Conduct of the American Bar Association. The Rules of
Professional Conduct of the District of Columbia tend to address
responsibilities of Government attorneys in greater depth than the
Model Rules of Professional Conduct of the American Bar Association,
particularly in connection with ``revolving door'' issues. This is
appropriate inasmuch as numerous registered practitioners are employees
of the United States Government and are admitted to practice law in the
District of Columbia. Upon practicing before the Office, they are
subject to the USPTO Rules of Professional Conduct adopted by the
Office, as well as the Rules of Professional Conduct of the Bar of the
District of Columbia. A detailed concordance between the proposed rules
and the divergent sources can be found in Table 3, ``Principal Source
of Sections 11.100 through 11.806,'' infra. Further, unlike the Model
Rules that require consent of a client following consultation, the
proposed rules would require the client give informed consent in
writing after full disclosure. Compare, for example, Model Rule 1.6(a)
with proposed rule 11.106(a). This departure is intended to provide
both the client and practitioner with certainty regarding
communication, and a stronger record.
Section 11.100 would provide interpretive guidance of the proposed
Rules of Professional Conduct. Some of the Rules are imperatives, cast
in the terms ``shall'' or ``shall not.'' These define proper conduct
for purposes of professional discipline. Other Rules, generally cast in
the term ``may,'' are permissive and define areas under the Rules in
which the practitioner has professional discretion. No disciplinary
action should be taken when the practitioner chooses not to act, or
acts, within the bounds of such discretion. Inasmuch as the Rules of
Professional Conduct in many jurisdictions have the same or similar
Rules, it is appropriate for the Office to adopt the same standards
where such acts or conduct, in practice before the Office, would not be
inconsistent with the protection of the public interest.
Other Rules define the nature of relationships between the
practitioner and others. The latter Rules are partly obligatory and
disciplinary, and partly constitutive and descriptive in that they
define a lawyer's professional role.
Inasmuch as the rules pertain to practice before the Office, they
do not address criminal or domestic relations practices addressed in
the Rules of Professional Conduct adopted by the states. A practitioner
engaging in criminal or domestic relations practice is subject to the
state ethics rules. A practitioner disqualified from practicing
elsewhere for misconduct should not be trusted or permitted to practice
before the Office. Misconduct elsewhere should also be misconduct for
purposes of practicing before the Office. See Sec. Sec. 11.25 and
11.803(f)(1). Practitioners have been disciplined by the Office for
conduct arising in the practice of law other than intellectual
property. For example, the USPTO Director excluded an attorney after
disbarment in Virginia following a criminal conviction for conduct
arising from representing a client in a domestic relations matter. See
In re Hodgson, 1023 Off. Gaz. 13 (Oct. 12, 1982).
Section 11.101 would continue the present practice of 37 CFR
10.77(a) and (b) requiring a practitioner to provide competent
representation to a client. Paragraph (a) of Sec. 11.101 would specify
that such competence requires the legal knowledge, skill, thoroughness
and preparation reasonably necessary for the representation. The Office
has disciplined practitioners lacking competence. See In re Wyden, 973
Off. Gaz. 40 (Aug. 22 1978) (suspending agent for general incompetence
in handling patent applications); and In re Paley, 961 Off. Gaz. 48
(Aug. 30, 1977) (suspending agent for improper handling of
application).
Legal knowledge and skill. In determining whether a practitioner
employs the requisite knowledge and skill in a particular matter,
relevant factors include the relative complexity and specialized nature
of the matter, the practitioner's general experience, the
practitioner's training and experience in the field in question, the
preparation and study the practitioner is able to give the matter, and
whether it is feasible to refer the matter to, or associate or consult
with, a practitioner of established competence in the field in
question. In some instances, the required proficiency is that of a
general patent practitioner. Expertise in a particular field of patent
law, science, engineering, or technology may be required in some
circumstances. One such circumstance would be where the practitioner,
by representations made to the client, has led the client reasonably to
expect a special level of expertise in the matter undertaken by the
practitioner.
A practitioner need not necessarily have special legal training or
prior legal experience to handle legal problems of a type with which
the practitioner is unfamiliar. However, basic training in scientific
and technical matters is required for registration as a patent attorney
or agent to provide a client with valuable service, advice and
assistance in the presentation and prosecution of their patent
applications before the Office. 35 U.S.C. 2(b)(2)(D). A newly admitted
practitioner can be as competent as a practitioner with long
experience. Some important legal skills, such as the analysis of
precedent, the evaluation of evidence, and legal drafting, are required
in all legal problems. Perhaps the most fundamental legal skill
consists of determining what kind of legal problems a situation may
involve, a skill that necessarily transcends any particular specialized
knowledge. A practitioner can provide adequate representation in a
wholly novel field through necessary study. Competent representation
can also be provided through the association of a practitioner of
established competence in the field in question.
In an emergency a practitioner may give advice or assistance in a
matter in which the practitioner does not have the skill ordinarily
required where referral to or consultation or association with another
practitioner would be impractical. Even in an emergency, however,
assistance should be limited to that reasonably necessary in the
circumstances, for ill-considered action under emergency conditions
could jeopardize the client's interest.
A practitioner may accept representation where the requisite level
of competence can be achieved by reasonable preparation. A registered
patent agent registered after January 1, 1957, who is not an attorney
is not
[[Page 69465]]
authorized to, and cannot accept representation in trademark and other
non-patent law. This applies as well to a practitioner who is appointed
as counsel for an unrepresented person. See also Sec. 11.602.
Thoroughness and preparation. Competent handling of a particular
patent, trademark, or other non-patent matter includes inquiry into and
analysis of the factual and legal elements of the problem, and use of
methods and procedures meeting the standards of competent
practitioners. It also includes adequate preparation, and continuing
attention to the needs of the representation to assure that there is no
neglect of such needs. The required attention and preparation are
determined in part by what is at stake; like major litigation, complex
transactions or inventions ordinarily require more elaborate treatment
than matters of lesser consequence.
Maintaining competence. To maintain the requisite knowledge and
skill, a practitioner should engage in such continuing study and
education as may be necessary to maintain competence, taking into
account that the learning acquired through a practitioner's practical
experience in actual representations may reduce or eliminate the need
for special continuing study or education. If a system of peer review
has been established, the practitioner should consider making use of it
in appropriate circumstances.
Paragraph (c) of Sec. 11.101 would define some, but not all, acts
that would constitute violations of paragraphs (a) or (b) of this
section. The USPTO believes that it would be helpful to practitioners
if some specific prohibitions were set out in the rules. The
prohibitions set out in paragraphs (1) through (8) of Sec. 11.101(c)
represent violations that have occurred in the past or that the Office
specifically seeks to prevent. The specific acts set out in paragraph
(c) would not constitute a complete description of all acts in
violation of paragraphs (a) or (b).
Paragraph (1) of Sec. 11.101(c) would include as misconduct
knowingly withholding from the Office information identifying a patent
or patent application of another from which one or more claims have
been copied. See Sec. Sec. 1.604(b) and 1.607(c) of this subpart.
Section 11.102 would address the scope of representation. Both
practitioner and client have authority and responsibility in the
objectives and means of representation. The client has ultimate
authority to determine the purposes to be served by legal
representation, within the limits imposed by law and the practitioner's
professional obligations. Within those limits, a client also has a
right to consult with the practitioner about the means to be used in
pursuing those objectives. At the same time, a practitioner is not
required to pursue objectives or employ certain means simply because
the client may wish that a practitioner do so. A clear distinction
between objectives and means sometimes cannot be drawn, and in many
cases the client-practitioner (including client-lawyer or client-agent)
relationship partakes of a joint undertaking. In questions of means,
the practitioner should assume responsibility for technical and legal
tactical issues, but should defer to the client regarding such
questions as the expense to be incurred and concern for third persons
who might be adversely affected. Law defining a lawyer's scope of
authority in litigation varies among jurisdictions.
An agreement concerning the scope of representation must accord
with the Rules of Professional Conduct and other law. Thus, the client
may not be asked to agree to representation so limited in scope as to
violate proposed Sec. 11.101, to surrender the client's right to
terminate the practitioner's services, or the client's right to settle
litigation that the practitioner might wish to continue.
Unlike Rule 1.2(a) of the Model Rules of Professional Conduct,
paragraph (a) of Sec. 11.102 would not address an attorney's duty in a
criminal case to abide by the client's decision. Inasmuch as practice
before the Office does not involve criminal proceedings, the portion of
Model Rule 1.2(a) addressing a criminal case is not being proposed.
Nevertheless, an attorney who practices both before the Office and in
criminal cases would be subject to both the Office and State
professional conduct rules. If, in the course of a criminal proceeding,
the attorney violates the state's professional conduct rules and is
disciplined by the state authorities, the attorney could be subject to
discipline under the proposed rules. See Sec. Sec. 11.24 and
11.803(f)(5).
Paragraph (e) of Sec. 11.102 would continue a practitioner's
responsibility to give an honest opinion about the actual consequences
that appear likely to result from a client's conduct. The fact that a
client uses advice in a course of action that is criminal or fraudulent
does not, of itself, make a practitioner a party to the course of
action. However, as in current Sec. 10.85(a)(8), a practitioner may
not knowingly assist a client in criminal or fraudulent conduct. There
is a critical distinction between presenting an analysis of legal
aspects of questionable conduct, and recommending the means by which a
crime or fraud might be committed with impunity.
When the client's course of action has already begun and is
continuing, the practitioner's responsibility is especially delicate.
The practitioner is not permitted to reveal the client's wrongdoing,
except where permitted by proposed Sec. 11.102(g) and proposed Sec.
11.106. Moreover, the practitioner is required to avoid furthering the
purpose, for example, by suggesting how it might be concealed. A
practitioner may not continue assisting a client in conduct that the
practitioner originally supposes is legally proper, but then discovers
is criminal or fraudulent. Withdrawal from the representation,
therefore, may be required.
Where the client is a fiduciary, the practitioner may be charged
with special obligations in dealings with a beneficiary.
Paragraph (e) of Sec. 11.102 would apply whether or not the
defrauded party is a party to the transaction. Hence, a practitioner
should not participate in a sham transaction; for example, a
transaction to effectuate fraudulent acquisition of a patent or
trademark. Paragraph (e) would not preclude undertaking a defense
incident to a general retainer for legal services to a lawful
enterprise. The last clause of paragraph (e) recognizes that
determining the validity or interpretation of a statute or regulation
may require a course of action involving disobedience of the statute or
regulation or of the interpretation placed upon it by governmental
authorities.
In a case in which the client appears to be suffering mental
disability, the practitioner's duty to abide by the client's decisions
is to be guided by reference to proposed rule 11.114.
Paragraph (b) of Sec. 11.102 would provide that representing a
client does not constitute approval of the client's views or
activities. By the same token, legal representation should not be
denied to people, including applicants, who are unable to afford legal
services, or whose cause is controversial or the subject of popular
disapproval. Unlike Rule 1.2(b) of the Model Rules of Professional
Conduct, proposed Sec. 11.102(b) would not provide for practitioner's
being appointed to represent any party. Inasmuch as the Office does not
appoint practitioners to represent persons having business before the
Office, the provision is believed to be unwarranted.
Paragraph (c) of Sec. 11.102, would provide that the objectives or
scope of services provided by the practitioner may be limited by
agreement with the
[[Page 69466]]
client or by terms under which the practitioner's services are made
available to the client. For example, a retainer may be for a
specifically defined purpose, such as a utility patent application for
an article of manufacture. The terms upon which representation is
undertaken may exclude specific objectives or means. Such limitations
may exclude objectives or means that the practitioner regards as
repugnant or imprudent, or which the practitioner is not competent to
handle. For example, a patent agent who is not an attorney should
exclude services beyond the scope authorized by registration as a
patent agent, such as preparing and prosecuting trademark and copyright
registrations, patent validity or infringement opinions, or drafting or
selecting contracts, including assignments. Practitioners taking
referrals from invention promoters must assure that the promoter has
not limited or attempted to limit by agreement with the inventor-client
the scope of services the practitioner provides, and that the agreement
is in compliance with Sec. 11.504(c). See Sec. 11.804(a).
Paragraph (g) of Sec. 11.102, like current Sec. 10.85(b)(1),
would require that a practitioner reveal to the Office a fraud that the
client has perpetrated on the Office after calling upon the client to
rectify the same, and the client refuses or is unable to do so.
Section 11.103 would require a practitioner to act with diligence
and zeal. Paragraphs (a), (b), and (c) of Sec. 11.103 would continue
the policy in current Sec. 10.84(a).
Paragraph (a) of Sec. 11.103 would continue to recognize that a
practitioner has a duty, to both the client and to the legal system, to
represent the client before the Office zealously within the bounds of
the law, including the proposed Office Rules of Professional Conduct
and other enforceable professional regulations. This duty requires the
practitioner to pursue a matter on behalf of a client despite
opposition, obstruction, or personal inconvenience to the practitioner,
and to take whatever lawful and ethical measures are required to
vindicate a client's cause or endeavor. A practitioner should act with
commitment and dedication to the interests of the client. However, a
practitioner is not bound to press for every advantage that might be
realized for a client. A practitioner has professional discretion in
determining the means by which a matter should be pursued. See proposed
Sec. 11.102. A practitioner's workload should be controlled so that
each matter can be handled adequately.
This duty derives from the practitioner's recognition to practice
in a profession that has the duty of assisting members of the public to
secure and protect available legal rights and benefits. In our
government of laws and not of individuals, each member of our society
is entitled to have such member's conduct judged and regulated in
accordance with the law; to seek any lawful objective through legally
permissible means; and to present for adjudication any lawful claim,
issue, or defense.
Where the bounds of law are uncertain, the action of a practitioner
may depend on whether the practitioner is serving as advocate or
adviser. A practitioner may serve simultaneously as both advocate and
adviser, but the two roles are essentially different. In asserting a
position on behalf of a client, an advocate for the most part deals
with past conduct and must take the facts as the advocate finds them.
By contrast, a practitioner serving as adviser primarily assists the
client in determining the course of future conduct and relationships.
While serving as advocate, a practitioner should resolve in favor of
the client doubts as to the bounds of the law, but even when acting as
an advocate, a practitioner may not institute or defend a proceeding
unless the positions taken are not frivolous. See proposed Sec.
11.301. In serving a client as adviser, a practitioner, in appropriate
circumstances, should give a practitioner's professional opinion as to
what the ultimate decisions of the Office and courts would likely be as
to the applicable law.
In the exercise of professional judgment, a practitioner should
always act in a manner consistent with the best interests of the
client. However, when an action in the best interests of the client
seems to be unjust, a practitioner may ask the client for permission to
forgo such action. If the practitioner knows that the client expects
assistance that is not in accord with the proposed Rules of
Professional Conduct or other law, the practitioner must inform the
client of the pertinent limitations on the practitioner's conduct. See
proposed Sec. Sec. 11.102(e) and (f). This is believed to be entirely
consistent with Link v. Wabash R.R., 370 U.S. 626, 633-34 (1962);
Johnson v. Department of the Treasury, 721 F.2d 361 (Fed Cir. 1983).
Similarly, the practitioner's obligation not to prejudice the interests
of the client is subject to the duty of candor toward the tribunal
under proposed Sec. 11.303 and the duty to expedite litigation under
proposed Sec. 11.302.
The duty of a practitioner to represent the client before the
Office with zeal does not militate against the concurrent obligation to
treat with consideration all persons involved in the legal process and
to avoid the infliction of needless harm. Thus, the practitioner's duty
to pursue a client's lawful objectives zealously does not prevent the
practitioner from acceding to reasonable requests of opposing counsel,
e.g., in an interference or reexamination, that do not prejudice the
client's rights, from being punctual in fulfilling all professional
commitments, from avoiding offensive tactics, or from treating all
persons involved in the legal process with courtesy and consideration.
Perhaps no professional shortcoming is more widely resented by
clients than procrastination. A client's interests, including patent
rights, often can be adversely affected by the passage of time or the
change of conditions; in extreme instances, as when a practitioner
overlooks a statute of limitations under 35 U.S.C. 102(b), the client's
legal position may be destroyed. Even when the client's interests are
not affected in substance, however, unreasonable delay can cause a
client needless anxiety and undermine confidence in the practitioner's
trustworthiness. Neglect of client matters is a serious violation of
the obligation of diligence.
Unless the relationship is terminated as provided in proposed Sec.
11.116, a practitioner should carry through to conclusion all matters
undertaken for a client. If a practitioner's employment is limited to a
specific matter, the relationship terminates when the matter has been
resolved. If a practitioner has served a client over a substantial
period in a variety of matters, the client sometimes may assume that
the practitioner will continue to serve on a continuing basis unless
the practitioner gives notice of withdrawal. Doubt about whether a
client-practitioner relationship still exists should be eliminated by
the practitioner, preferably in writing, so that the client will not
mistakenly suppose the practitioner is looking after the client's
affairs when the practitioner has ceased to do so. For example, if a
practitioner has prosecuted a patent application that has become
abandoned for failure to respond to an Office action having a final
rejection, but the practitioner has not been specifically instructed
concerning pursuit of an appeal, the practitioner should advise the
client of the possibility of appeal before relinquishing responsibility
for the matter.
Paragraph (c) of Sec. 11.103 would define some, but not all, acts
that would constitute violations of paragraphs (a) or
[[Page 69467]]
(b) of this section. The USPTO believes that it would be helpful to
practitioners if some specific prohibitions were set out in the rules.
The prohibitions set out in paragraphs (1) through (3) of Sec.
11.103(c) represent violations that have occurred in the past or that
the Office specifically seeks to prevent. The specific acts set out in
paragraph (c) would not constitute a complete description of all acts
in violation of paragraphs (a) or (b).
Section 11.103 is a rule of general applicability, and it is not
meant to enlarge or restrict any specific rule. In particular, Sec.
11.103 is not meant to govern conflicts of interest, which are
addressed by proposed Sec. Sec. 11.107, 11.108, and 11.109.
Section 11.104 would provide in paragraph (a) that a practitioner
shall communicate with a client regarding the status of a matter,
respond to a client's reasonable requests for information, sufficiently
explain matters to permit the client to make informed decisions, and
inform the client of settlement offers.
The client should have sufficient information to participate
intelligently in decisions concerning the objectives of the
representation before the Office, and the means by which they are to be
pursued, to the extent the client is willing and able to do so. For
example, a practitioner prosecuting an application should provide the
client with facts relevant to the matter, promptly inform the client of
communications received from and sent to the Office and take other
reasonable steps that permit the client to make a decision regarding
the course of prosecution. Thus, a registered practitioner failing to
timely communicate with one or more clients could be subject to
discipline under this section. See In re Barndt, 27 USPQ2d 1749 (Comm'r
Pat. 1993); Weiffenbach v. Logan, 27 USPQ2d 1870 (Comm'r Pat. 1993),
aff'd. sub nom., Logan v. Comer, No. 93-0335 (D.D.C. 1994), aff'd. sub
nom., Logan v. Lehman, No. 95-1216 (Fed. Cir. 1995). A practitioner who
receives from opposing counsel an offer of settlement in an
interference is required to inform the client promptly of its
substance. See proposed rule 11.101(a). Even when a client delegates
authority to the practitioner, the client should be kept advised of the
status of the matter.
A client is entitled to whatever information the client wishes
about all aspects of the subject matter of the representation unless
the client expressly consents not to have certain information passed
on. The practitioner must be particularly careful to ensure that
decisions of the client are made only after the client has been
informed of all relevant considerations. The practitioner must initiate
and maintain the consultative and decision-making process if the client
does not do so, and must ensure that the ongoing process is thorough
and complete.
Adequacy of communication depends in part on the kind of advice or
assistance involved. The guiding principle is that the practitioner
should fulfill reasonable client expectations for information
consistent with (1) the duty to act in the client's best interests, and
(2) the client's overall requirements and objectives as to the
character of representation.
Maintenance Fees, and Section 8 and Section 15 Affidavits. Some
practitioners maintain a long-term docket and periodically send
communications to parties they may view as being former clients,
regarding possible need for further action regarding a completed
matter, such as payment of maintenance fees for patents. Whether,
absent a specific agreement, the practitioners continue to have an
attorney-client or agent-client relationship with the parties depends
on the facts, such as the reasonable expectations or intent of the
putative clients, evidence of objective facts supporting the existence
of the expectation or intent, and evidence placing the practitioner on
notice of the putative client's expectation or intent. A formal
agreement to pay fees is not necessary. A recipient of a periodic
notice, absent any other facts, may well have the subjective belief,
supported by objective evidence they are receiving legal advice from
the practitioner, that the practitioner and recipient continue to be in
an attorney-client or agent-client relationship. A practitioner
desiring to terminate an attorney-client or agent-client relationship
upon completion of legal services should make the termination clear to
the client, e.g., by sending a termination letter to the client upon
issuance of a patent or registration of a mark, and advising the
recipient of the notices, and that the communication is not for the
offering of advice, but as a reminder. See Formal Opinion No. 1996-146,
Legal Ethics Committee of the Oregon State Bar. The practitioner should
also withdraw from representation in accordance with 37 CFR 1.36 and
proposed rule 11.116.
Responsibility to a Former Client. Even though a practitioner may
have terminated any attorney-client or agent-client relationship with a
client, the practitioner nevertheless would continue to have certain
obligations to a former client. The proposed rules would continue the
practice of placing certain obligations on the practitioner. For
example, a practitioner's obligation to preserve in confidence
information relating to representation of a client would continue after
termination of the practitioner's employment. Section 11.106(g). Under
Sec. 11.804(i)(8), practitioners would have a duty to inform a former
client or timely notify the Office of an inability to notify a former
client of certain correspondence received from the Office. The
obligation is necessarily imposed for the proper conduct of proceedings
before the Office, such as receipt of notices regarding maintenance
fees, reexamination proceedings, and institution of inter partes patent
and trademark proceedings.
Practitioners not wishing to receive notices regarding maintenance
fees may file a change of correspondence address under 37 CFR 1.33
without filing a request to withdraw, or provide a fee address pursuant
to 37 CFR 1.363 to which maintenance fee correspondence should be sent.
Since Sec. 1.33(c) requires that all notices, official letters, and
other communications for the patent owner(s) in reexamination
proceedings will be directed to the attorney or agent of record in a
patent file, a request for permission to withdraw under Sec. Sec. 1.36
and 11.116 would have to be filed if a practitioner does not wish to
receive correspondence regarding reexaminations.
Invention promoters. A Commissioner published two notices in the
Official Gazette, 1086 OG 457 (December 10, 1987), and 1091 OG 26
regarding the ``Responsibilities of Practitioners Representing Clients
in Proceedings Before The Patent and Trademark Office'' (Notices). The
Notices address agency relationships between practitioners and
intermediaries. For example, the Notices, inter alia, address the use
of corporate liaisons to obtain instructions. The notices do not
specifically refer to invention promoters. Nevertheless, some
practitioners associated with invention promoters have relied upon the
Notices to accept the invention promoter as the inventor's agent, take
instructions from the agent, and conduct all communications through the
agent. There are numerous ethics opinions and cases where attorneys
have been warned or found to have aided the unauthorized practice of
law by permitting a marketer to communicate directly with the client.
For example, Formal Opinion 87, Ethics Committee of the Colorado Bar
Association (1995), advises that an attorney aids the unauthorized
practice of law where a non-lawyer markets a
[[Page 69468]]
living trust, gathers information from a consumer, forwards the
information to a ``factory,'' where the lawyer may assist in preparing
and reviewing living trust documents, and the non-lawyer delivers the
documents to the consumer, but the attorney has no personal contact
with the consumer. An attorney was found to have aided the unauthorized
practice of law to process workmen's compensation claims by permitting
a disbarred attorney to obtain clients' signatures on retainer
agreements, gather factual information from clients, and have the
clients execute medical authorization forms, and it was inferred that
the disbarred attorney was called upon to explain the retainer
agreement and other legal documents. See In re Discipio, 645 N.E.2d 906
(Ill. 1994). See also Wayne County Bar Ass'n. v. Naumoff, 660 N.E.2d
(Ohio 1996); Comm. On Professional Ethics & Conduct v. Baker, 492
N.W.2d 695 (Iowa 1992); and In re Komar, 532 N.E.2d 801(Ill. 1988). The
situations are analogous to invention promoters entering into
agreements with inventors to engage a practitioner to prepare and
prosecute a patent application for the inventor's invention, the
promoter gathers information from the inventor for an application, then
forwards the information and drawings to the practitioner to prepare an
application, and thereafter secures the inventor's signature on the
application. There is no direct communication between the practitioner
and inventor.
Clearly, the Office does not desire to have practitioners aiding
non-lawyers and non-practitioners in the unauthorized practice of law.
Section 11.505 would proscribe a practitioner from aiding in the
unauthorized practice of law. Accordingly, adoption of proposed rule
Sec. 11.104(a)(1) would require a practitioner, receiving clients from
an invention promoter, to communicate directly with the client, and
promptly report each Office action directly to the client.
Further, the Director found that the guidance in the second of the
two Notices was not ``intended to significantly extend the coverage of
the first Notice to practitioners using invention developers as
intermediaries, and concluded that the omission of invention developers
from the Notices supports the inference that invention developers were
not intended to be included as permissible intermediaries. Moatz v.
Colitz, 2002 WL 32056607, (Com'r. Pat. & Trademarks Dec 03, 2002). With
the adoption of the proposed rules, the Notices (Official Gazette, 1086
OG 457 (December 10, 1987), and 1091 OG 26 regarding the
``Responsibilities of Practitioners Representing Clients in Proceedings
Before The Patent and Trademark Office'') would be withdrawn and
superseded by these comments.
Practitioners Must Maintain a Direct Relationship With Their
Clients. Some practitioners relied upon promoters to obtain from the
inventor all information used to prepare the patent application. In
obtaining information for preparation of patent applications, the
promoter may be a barrier to a direct relationship between the
practitioner and the client-inventor. The barrier arises, for example,
where the promoter instructs the inventor to communicate with the
promoter and suggests that the inventor may incur additional charges if
the inventor communicates directly with the practitioner. The barrier
also might arise where the promoter provides the practitioner with a
description of the invention that differs from or alters the inventor's
description of the invention. For example, the information and drawings
furnished by some promoters to the practitioner change an invention to
have one or more surface indicia or elements not described by the
inventor. Some unsophisticated inventors first learn of the changes
when they receive their applications for review and signature. The
inventors, being cautioned by a promoter that the inventors may incur
additional costs by communicating with the practitioner, direct their
questions to the promoter about the changes. The promoters advise the
inventors that the changes were provided to improve the invention's
potential to succeed in the market, and that the inventors should sign
the declaration.
A promoter also can interfere with communications when the
practitioner relies on the promoter to convey communications, including
the collection of Office fees. For example, some promoters have delayed
or failed to forward to the inventor-clients copies of Office actions
the promoter receives from the practitioner, or requests for funds. As
a result of the delay or lack of communication with the inventor-
client, if the Office action is reported to the inventor-client, it may
not be reported until after the period of response has expired. The
patent application may become abandoned in these circumstances.
Alternatively, a promoter may interfere with communications by
instructing the inventor-clients to make their checks for filing or
issue fees payable to the USPTO Director, deposit the checks in the
promoter's own account, and issue their own checks that are sometimes
returned to the Office unpaid. In these situations, the patent
application becomes abandoned. It is problematic whether the funds
delivered to the promoter may be recoverable.
A practitioner receiving referrals from a promoter may be motivated
to provide the shortest and least expensive reply to an Office action.
Such practitioners can receive a relatively small, set fee from the
promoter for a reply to the Office action, regardless of the length or
complexity needed to respond. Minimizing communication with the
inventor-client reduces overhead costs, and maximizes time available to
produce responses for multiples of such clients. It also can avoid
providing the inventor-client with an opportunity to suggest
presentation of affidavit, e.g., an antedating affidavit under 37 CFR
1.131, or comparative test results under 37 CFR 1.132. Accordingly, the
practitioner may not report an Office action to the inventor-client
until after a response has been prepared and filed. This deprives the
unsophisticated inventor-client of the opportunity to contribute to the
response.
Paragraph (1) of Sec. 11.104(a) would require practitioners
receiving clients from an invention promoter to communicate directly
with the client, and promptly report Office actions and replies
directly to the client.
Paragraph (2) of Sec. 11.104(a) would provide that a practitioner
accepting referrals from a foreign attorney or foreign agent located in
a foreign country may, with the written consent of a client located in
a foreign country, conduct said communications with the client through
said foreign attorney or agent. It is common for instructions relating
to the application of a foreign patent and trademark owner, who is the
practitioner's client, to be given to the practitioner through a
foreign attorney or foreign patent agent. The fact that a practitioner
receives instructions from an invention or trademark owner through a
foreign attorney or agent does not change the fact that the client is
still the foreign invention or trademark owner. See Strojirensti v.
Toyoda, 2 USPQ2d 1222 (Comm'r Pat. 1986), which at 1223 cited Toulmin
v. Becker, 105 USPQ 511 (Ohio Ct. App. 1954) for the principle that
``foreign patent agents or attorneys were not clients of U.S. patent
attorney.''
A practitioner would be permitted to communicate through, rely on
instructions of, and accept payment from the foreign attorney or agent
only if the practitioner has obtained the consent of the client after
full disclosure in accordance with the provisions of Sec. Sec.
11.106(a)(1) and (d), 11.107(a) and (b), and 11.108(f). An agreement
between the client and the foreign
[[Page 69469]]
attorney or agent may establish an agency relationship between the
foreign attorney or agent and the client such that the practitioner may
obtain instructions from the foreign attorney or agent, except if the
instructions are adverse to the client's interests. For example, if the
foreign attorney or agent instructs the practitioner to abandon the
application because the client had not paid the foreign attorney or
agent, the practitioner should consult with the client directly before
acting on the instructions.
Ordinarily, the information to be provided is that appropriate for
a client, who is a comprehending and responsible adult. This should
obtain in all instances involving filing replies to Office actions.
However, fully informing the client according to this standard may be
impracticable, for example, where the client is a child or suffers from
mental disability. See proposed rule 11.114. When the client is an
organization or group, it is often impossible or inappropriate to
inform every one of its members about its legal affairs; ordinarily,
the practitioner should address communications to the appropriate
officials of the organization. See proposed rule 11.113. Where many
routine matters are involved, a system of limited or occasional
reporting may be arranged with the client. Such communications as
Office actions, notices of abandonment, and notices of allowance are
not routine matters for a client. Practical exigency may also require a
practitioner to act for a client without prior consultation. When the
practitioner is attending an appeal hearing, for example, it is often
not possible for the practitioner to consult with the client and obtain
the client's acquiescence in tactical matters arising during the course
of the hearing. It is sufficient if the practitioner consults with the
client in advance of the hearing on significant issues that can be
anticipated as arising during the course of the hearing, and consults
after the hearing.
In rare circumstances, a practitioner may be justified for
humanitarian reasons, in delaying or not conveying transmission of
information, for example, where the information would merely be
upsetting to a terminally ill client. A practitioner may not withhold
information to serve the practitioner's own interest or convenience,
e.g., to conceal abandonment of an application. See Weiffenbach v.
Logan, 27 USPQ2d 1870 (Comm'r Pat. 1993), aff'd. sub nom., Logan v.
Comer, No. 93-0335 (D.D.C. 1994), aff'd. sub nom., Logan v. Lehman, 73
F.3d 379 (Fed. Cir. 1995). No Office rules governing practice before
the Office justify withholding information from a client to serve a
practitioner, or to keep the client uninformed about an Office action.
Paragraph (d) of Sec. 11.104 would define some, but not all, acts
that would constitute violations of paragraph (a) of this section. The
USPTO believes that it would be helpful to practitioners if some
specific prohibitions were set out in the rules. The prohibitions set
out in paragraph (1) of Sec. 11.104(d) represents violations that have
occurred in the past or that the Office specifically seeks to prevent.
The specific acts set out in paragraph (d) would not constitute a
complete description of all acts in violation of paragraph (a).
Paragraph (1) of Sec. 11.104(d) would address failure to inform a
client or former client, or failure to timely notify the Office of an
inability to notify a client or former client, of correspondence
received from the Office or the client's or former client's opponent in
an inter partes proceeding before the Office when the correspondence
(i) could have a significant effect on a matter pending before the
Office, (ii) is received by the practitioner on behalf of a client or
former client and (iii) is correspondence of which a reasonable
practitioner would believe under the circumstances the client or former
client should be notified.
Section 11.105 would continue to require fees be reasonable, and
would introduce a requirement for written fee agreements.
Basis or rate of fee. Paragraph (a) of Sec. 11.105 would continue
the present practice for determining reasonableness of basis or rate of
fees. When a practitioner has regularly represented a client, they
ordinarily will have evolved an understanding concerning the basis or
rate of the fee. In a new client-practitioner relationship, however, an
understanding as to the fee should be promptly established. It is not
necessary to recite all the factors that underlie the basis of the fee,
but only those that are directly involved in its computation. It is
sufficient, for example, to state that the basic rate is an hourly
charge or a fixed amount or an estimated amount, or to identify the
factors that may be taken into account in finally fixing the fee. When
developments occur during the representation that render an earlier
estimate substantially inaccurate, a revised estimate should be
provided to the client. A written statement concerning the fee reduces
the possibility of misunderstanding. Furnishing the client with a
simple memorandum or a copy of the practitioner's customary fee
schedule is usually sufficient if the basis or rate of the fee is set
forth.
Paragraph (b) of Sec. 11.105(b) would introduce a new requirement.
A written statement concerning the fee, required to be furnished in
advance in most cases by this section, would reduce the possibility of
misunderstanding. In circumstances in which paragraph (b) requires that
the basis for the practitioner's fee be in writing, an individualized
writing specific to the particular client and representation is
generally not required. Unless there are unique aspects of the fee
arrangement, the practitioner may utilize a standardized letter,
memorandum, or pamphlet explaining the practitioner's fee practices,
and indicating those practices applicable to the specific
representation. Such publications would, for example, explain
applicable hourly billing rates, if billing on an hourly rate basis is
contemplated, and indicate what charges (such as filing fees, Office
fees, transcript costs, duplicating costs, and long-distance telephone
charges) are imposed in addition to hourly rate charges.
Where the services to be rendered are covered by a fixed-fee
schedule that adequately informs the client of the charges to be
imposed, a copy of such schedule may be utilized to satisfy the
requirement for a writing. Such services as patentability opinions, for
example, may be suitable for description in such a fixed-fee schedule.
Written fee agreement. If a practitioner has not regularly
represented a client, e.g., an inventor, the basis or hourly rate of
the fee must be communicated directly to the client, in writing. The
written communication must distinguish between the fees charged for
preparing and filing a patent application, and the fee(s) for
prosecuting a patent application. A clearly written communication
regarding fees can avoid confusion regarding whether a fee for an
application includes fees for prosecuting an application.
A practitioner may require advance payment of a fee, but would be
obliged to return any unearned portion. See proposed rule 11.116(d). A
practitioner may accept property in payment for services, such as an
ownership interest in an enterprise. However, a fee paid in property
instead of money may be subject to special scrutiny. For example, it
involves questions concerning both the value of the services and the
practitioner's special knowledge of the value of the property. See
Formal Opinion 300, Legal Ethics Committee of the District of Columbia
(2000) (addressing ethical considerations when
[[Page 69470]]
a practitioner is asked to accept stock in lieu of legal fees).
Further, a fee paid in property, such as acquisition of ownership of a
percentage of the rights to an invention, would require compliance with
Sec. 11.108. See Rhodes v. Buechel, 685 N.Y.S.2d 65, 1999 N.Y. App.
Div. LEXIS 904 (1999), appeal denied, 711 N.E.2d 984, 689 N.Y.S.2d 708,
1999 N.Y. LEXIS 1206 (NY 1999).
An agreement would not be made whose terms might induce the
practitioner improperly to curtail services for the client or perform
them in a way contrary to the client's interest. For example, a
practitioner should not enter into an agreement or arrangement with an
invention promoter to provide limited services, such as only up to a
stated amount, only for a particular type of patent application, such
as a design application, only so long as a promoter pays the
practitioner, or only for one application or one type of application
when it is foreseeable that more extensive services or the continuation
of services may be required, unless the situation is fully disclosed to
and consent is obtained from the client. Otherwise, the client might
have to bargain for further assistance in the midst of a proceeding
before the Office. However, it is proper to define the extent of
services in light of the client's ability to pay. A practitioner should
not, by using wasteful procedures, exploit a fee arrangement based
primarily on an hourly charge.
Paragraph (c) of Sec. 11.105 would continue the current practice
regarding contingent fees. Generally, contingent fees are permissible
in all civil cases, including patent and trademark registration
applications.
Under paragraph (c) of Sec. 11.105, the contingent fee arrangement
would be required to be in writing. This writing must explain the
method by which the fee is to be computed. The practitioner must also
provide the client with a written statement at the conclusion of a
contingent fee matter, stating the outcome of the matter and explaining
the computation of any remittance made to the client. Consistent with
paragraph (a) of Sec. 11.105, the contingent fee must be reasonable.
Paragraph (d) of Sec. 11.105 would permit the practice of dividing
a fee with another practitioner. A division of fee would be a single
billing to a client covering the fee of two or more practitioners who
are not in the same firm. A division of fee facilitates association of
more than one practitioner in a matter in which neither alone could
serve the client as well, and most often is used when the fee is
contingent and the division is between a referring practitioner and a
trial specialist.
Under paragraph (d) of Sec. 11.105, the practitioners would be
permitted to divide a fee either on the basis of the proportion of
services they render or by agreement between the participating
practitioners if all assume responsibility for the representation as a
whole. Attorneys who are not registered as patent attorneys or agents
are not authorized to render services in patent matters before the
Office. Accordingly, before assuming responsibility for the
representation as a whole, the attorneys would be advised to inquire of
their insurance carrier regarding malpractice coverage in patent
matters, and seek expert legal advice regarding whether the rendition
of services in patent application matters involves unauthorized
practice of law. Joint responsibility for the representation would
entail the obligations stated in proposed rule 11.105 for purposes of
the matter involved. Permitting a division on the basis of joint
responsibility, rather than on the basis of services performed, would
represent a change from the basis for fee divisions allowed under the
prior Office Code of Professional Responsibility. The change is
intended to encourage practitioners to affiliate other registered
patent counsel, who are better equipped by reason of experience or
specialized (scientific or technical) background, to serve the client's
needs, rather than to retain sole responsibility for the representation
in order to avoid losing the right to a fee.
The concept of joint responsibility would not, however, be merely a
technicality or incantation. For example, the registered practitioner
who refers the client to another registered practitioner, or affiliates
another registered practitioner in the representation, would remain
fully responsible to the client, and is accountable to the client for
deficiencies in the discharge of the representation by the registered
practitioner who has been brought into the representation. If a
practitioner wishes to avoid such responsibility for the potential
deficiencies of another practitioner, the matter must be referred to
the other practitioner without retaining a right to participate in fees
beyond those fees justified by services actually rendered.
The concept of joint responsibility would not require the referring
practitioner to perform any minimum portion of the total legal services
rendered. The referring practitioner may agree that the practitioner to
whom the referral is made will perform substantially all of the
services to be rendered in connection with the representation, without
review by the referring practitioner. Thus, the referring practitioner
would not be required to review replies to Office actions, appeal
briefs, or other documents, attend hearings or depositions, or
otherwise participate in a significant and continuing manner. The
referring practitioner would not, however, by avoiding direct
participation, escape the implications of joint responsibility.
When fee divisions are based on assumed joint responsibility, the
requirement of paragraph (a) that the fee be reasonable would apply to
the total fee charged for the representation by all participating
practitioners.
Paragraph (d) of Sec. 11.105 would require that the client be
advised, in writing, of the fee division and states that the client
must affirmatively consent to the proposed fee arrangement. This
provision would not require disclosure to the client of the share that
each practitioner is to receive but would require that the client be
informed of the identity of the practitioners sharing the fee, their
respective responsibilities in the representation, and the effect of
the association of practitioners outside the firm on the fee charged.
Paragraph (e) of Sec. 11.105 would provide a new policy for
determining unreasonableness of a fee. If a state bar has established a
procedure for resolution of fee disputes, such as an arbitration or
mediation, the practitioner who is an attorney should conscientiously
consider submitting to it. Law may prescribe a procedure for
determining a practitioner's fee, for example, in representation of an
executor or administrator of the estate of a deceased registered
practitioner. The practitioner entitled to such a fee and a
practitioner representing another party concerned with the fee should
comply with the prescribed procedure. The Office does not provide
facilities or proceedings for fee dispute resolution.
Section 11.106 would address a practitioner's responsibilities
regarding information provided by a client. A practitioner practicing
before the Office is a participant in a quasi-judicial and
administration system, and as such is responsible for upholding the
law. One of the practitioner's functions is to advise clients so that
they avoid any violation of the law in the proper exercise of their
rights.
Paragraph (a)(1) of Sec. 11.106 would require that a practitioner
not reveal information relating to representation of a client unless
the client consents after consultation. There would be exceptions for
disclosures that are
[[Page 69471]]
impliedly authorized in order to carry out the representation, and
exceptions as stated in paragraph (b).
Under paragraph (a)(1) of Sec. 11.106, practitioner-client
confidentiality obtains upon commencement of the practitioner-client
relationship. Principles of substantive law external to these proposed
rules determining when an attorney-client or agent-client relationship
exists also determines whether a client-practitioner relationship
exists. Although most of the duties flowing from the practitioner-
client relationship attach only after the client has requested the
practitioner to render legal services and the practitioner has agreed
to do so, the duty of confidentiality imposed by this section attaches
when the practitioner agrees to consider whether an attorney-client or
agent-client relationship shall be established. Thus, a practitioner
may be subject to a duty of confidentiality with respect to information
disclosed by a client to enable the practitioner to determine whether
representation of the potential client would involve a prohibited
conflict of interest under proposed rules 11.107, 11.108, or 11.109.
The observance of the ethical obligation of a practitioner to hold
inviolate confidential information of the client not only facilitates
the full development of facts essential to proper representation of the
client but also encourages people to seek early legal assistance.
Almost without exception, clients come to practitioners in order to
determine what their rights are and what is, in the maze of laws and
regulations, deemed to be legal and correct. The common law recognizes
the client's confidences must be protected from disclosure. Based upon
experience, practitioners know that almost all clients follow the
advice given, and the law is upheld.
There would be a difference between Sec. 11.106 and attorney-
client evidentiary privilege and the work product doctrine. The
principle of confidentiality is given effect in two related bodies of
law: the attorney-client privilege and the work product doctrine in the
law of evidence and the rule of confidentiality established in
professional ethics. The attorney-client privilege and the work product
doctrine apply in judicial and administrative proceedings in which a
practitioner may be called as a witness or otherwise required to
produce evidence concerning a client. Section 11.106 would not be
intended to govern or affect judicial or administrative application of
the attorney-client privilege or work product doctrine. The privilege
and doctrine were developed to promote compliance with law and fairness
in litigation. In reliance on the attorney-client privilege, clients
are entitled to expect that communications within the scope of the
privilege will be protected against compelled disclosure. The attorney-
client privilege is that of the client and not of the practitioner. The
fact that in exceptional situations the practitioner under Sec. 11.106
would have limited discretion, and pursuant to Sec. 1.56, a
requirement, to disclose a client confidence does not vitiate the
proposition that, as a general matter, the client has a reasonable
expectation that information relating to the client will not be
voluntarily disclosed and that disclosure of such information may be
judicially compelled only in accordance with recognized exceptions to
the attorney-client privilege and work product doctrine. The privilege
is applicable in certain cases to communications between registered
patent agents and their clients. See, e.g., In re Ampicillin Antitrust
Litigation, 81 F.R.D. 377, 392-394 (D.D.C. 1978).
A fundamental principle in the client-lawyer or client-agent
relationship is that the practitioner maintain confidentiality of
information relating to the representation. The client is thereby
encouraged to communicate fully and frankly with the lawyer even as to
embarrassing or legally damaging subject matter. The principle of
confidentiality is given effect in two related bodies of law, the
attorney-client privilege in the law of evidence and the rule of
confidentiality established in professional ethics. The attorney-client
privilege applies in judicial and other proceedings in which a lawyer
may be called as a witness or otherwise required to produce evidence
concerning a client. The rule of client-lawyer confidentiality applies
in situations other than those where evidence is sought from the lawyer
through compulsion of law. The confidentiality rule applies not merely
to matters communicated in confidence by the client but also to all
information relating to the representation, whatever its source. A
practitioner would not be permitted to disclose such information except
as authorized or required by the Rules of Professional Conduct or other
law.
In addition to prohibiting the disclosure of a client's confidences
and secrets, paragraph (a)(2) provides that a practitioner may not use
the client's confidences and secrets to the disadvantage of the client.
For example, a practitioner who has learned of the abandonment or
allowance of a client's patent application may not file a patent
application in the practitioner's own name on a variation or an
improvement of the client's invention if doing so may adversely affect
the client's ability to market the invention or patent rights.
Similarly, information acquired by the practitioner in the course of
representing a client may not be used to the disadvantage of that
client even after the termination of the practitioner's representation
of the client. However, the fact that a practitioner has once served a
client does not preclude the practitioner from using generally known
information about the former client when later representing another
client. Under proposed rules (a)(3) and (d)(2), a practitioner may use
a client's confidences and secrets for the practitioner's own benefit
or that of a third party only after the practitioner has made full
disclosure to the client regarding the proposed use of the information
and obtained the client's affirmative consent to the use in question.
Implied authorized disclosure. A practitioner is impliedly
authorized to make disclosures about a client when appropriate in
carrying out the representation, except to the extent that the client's
instructions or special circumstances limit that authority. In patent
prosecution, for example, a practitioner and applicant must disclose
information material to the patentability of the pending claims. In
another example, in litigation a practitioner may disclose information
by admitting a fact that cannot properly be disputed, or in negotiation
by making a disclosure that facilitates a satisfactory conclusion.
Practitioners in a firm may, in the course of the firm's practice,
disclose to each other information relating to a client of the firm,
unless the client has instructed that particular information be
confined to specified practitioners.
Paragraph (b) of Sec. 11.106 would provide for disclosures adverse
to the client. The confidentiality rule is subject to limited
exceptions. In becoming privy to information about a client, a
practitioner may foresee that the client intends serious harm to
another person.
However, to the extent a lawyer is required or permitted to
disclose a client's purposes, the client will be inhibited from
revealing facts which would enable the practitioner to counsel against
a wrongful course of action. The public is better protected if full and
open communication by the client is encouraged than if it is inhibited.
Several situations must be distinguished. First, the practitioner
may not counsel or assist a client in conduct that is criminal or
fraudulent. See proposed Sec. 11.102(d). See also Kingsland v. Dorsey,
338 U.S. 318
[[Page 69472]]
(1949) (sustaining disbarment of attorney for deceiving Office as to
real author of article presented in support of pending application, and
misrepresenting that the article was the work of a ``reluctant
witness''). Similarly, a practitioner has a duty under proposed Sec.
11.303(a)(4) not to use false evidence. See proposed Sec. Sec.
11.303(a)(4) and (b). This duty is essentially a special instance of
the duty prescribed in proposed Sec. 11.102(d) to avoid assisting a
client in criminal or fraudulent conduct.
Further, the practitioner may have been innocently involved in past
conduct by the client that was criminal or fraudulent. In such a
situation the practitioner has not violated proposed Sec. 11.102(d),
because to ``counsel or assist'' criminal or fraudulent conduct
requires knowing that the conduct is of that character.
Still further, the practitioner may learn that a client intends
prospective conduct that is criminal and likely to result in imminent
death or substantial bodily harm. As stated in paragraph (b)(1), the
practitioner has professional discretion to reveal information in order
to prevent such consequences. The practitioner may make a disclosure in
order to prevent homicide or serious bodily injury, which the
practitioner reasonably believes is intended by a client.
It is very difficult for a practitioner to be certain when such a
heinous purpose will actually be carried out, for the client may have a
change of mind. The practitioner's exercise of discretion requires
consideration of such factors as the nature of the practitioner's
relationship with the client and with those who might be injured by the
client, the practitioner's own involvement in the transaction and
factors that may extenuate the conduct in question. Where practical,
the practitioner should seek to persuade the client to take suitable
action. In any case, a disclosure adverse to the client's interest
should be no greater than the practitioner reasonably believes
necessary to the purpose. A practitioner's decision not to take
preventive action permitted by paragraph (b)(1) would not violate this
Rule.
Withdrawal. If the practitioner's services will be used by a client
in materially furthering a course of criminal or fraudulent conduct,
the practitioner must withdraw, as stated in proposed Sec.
11.116(a)(1).
After withdrawal the lawyer is required to refrain from disclosing
the client's confidences, except as otherwise provided in Sec. Sec.
11.106(c) and (d). Neither Sec. Sec. 11.106(c) and (d), nor Sec.
11.108(b), nor Sec. 11.116(d) prevent the practitioner from giving
notice of the fact of withdrawal, and the practitioner may also
withdraw or disaffirm any opinion, document, affirmation, or the like.
Giving notice of withdrawal, without elaboration, is not a disclosure
of a client's confidences. Furthermore, a practitioner's statement to
the Office that withdrawal is based upon ``irreconcilable differences
between the practitioner and the client'' is not elaboration.
Similarly, after withdrawal under either proposed Sec. 11.116(a)(1) or
proposed Sec. Sec. 11.116(b)(1) or (2), the practitioner may retract
or disaffirm any opinion, document, affirmation, or the like that
contains a material misrepresentation by the practitioner that the
practitioner reasonably believes will be relied upon by others to their
detriment.
Where the client is an organization, the practitioner may be in
doubt whether contemplated conduct will actually be carried out by the
organization. Where necessary to guide conduct in connection with Sec.
11.106, the practitioner may make inquiry within the organization as
indicated in proposed Sec. 11.113(b).
Dispute Concerning Lawyer's Conduct. Where a legal claim or
disciplinary charge alleges complicity of the practitioner in a
client's conduct or other misconduct of the practitioner involving
representation of the client, the practitioner may respond to the
extent the practitioner reasonably believes necessary to establish a
defense. The same is true with respect to a claim involving the conduct
or representation of a former client. The practitioner's right to
respond arises when an assertion of such complicity has been made.
Paragraph (b)(2) of Sec. 11.106 does not require the practitioner to
await the commencement of an action or proceeding that charges such
complicity, so that the defense may be established by responding
directly to a third party who has made such an assertion. The right to
defend, of course, applies where a proceeding has been commenced. Where
practicable and not prejudicial to the practitioner's ability to
establish the defense, the practitioner should advise the client of the
third party's assertion and request that the client respond
appropriately. In any event, disclosure should be no greater than the
practitioner reasonably believes is necessary to vindicate innocence,
the disclosure should be made in a manner which limits access to the
information to the tribunal or other persons having a need to know it,
and appropriate protective orders or other arrangements should be
sought by the practitioner to the fullest extent practicable.
If the practitioner is charged with wrongdoing in which the
client's conduct is implicated, the rule of confidentiality should not
prevent the practitioner from defending against the charge. Such a
charge can arise in a civil, criminal or professional disciplinary
proceeding, and can be based on a wrong allegedly committed by the
practitioner against the client, or on a wrong alleged by a third
person; for example, a person claiming to have been defrauded by the
practitioner and client acting together. A practitioner entitled to a
fee is permitted by paragraph (b)(2) of Sec. 11.106 to prove the
services rendered in an action to collect it. This aspect of the rule
expresses the principle that the beneficiary of a fiduciary
relationship may not exploit it to the detriment of the fiduciary. As
stated above, the practitioner must make every effort practicable to
avoid unnecessary disclosure of information relating to a
representation, to limit disclosure to those having the need to know
it, and to obtain protective orders or make other arrangements
minimizing the risk of disclosure.
Paragraphs (c) and (d) of Sec. 11.106--Disclosures otherwise
required or authorized. The attorney-client or agent-client privilege
is differently defined in various jurisdictions. If a practitioner is
called as a witness to give testimony concerning a client, absent
waiver by the client, paragraph (a) of Sec. 11.106 requires the
practitioner to invoke the privilege when it is applicable. The
practitioner must comply with the final orders of a court or other
tribunal of competent jurisdiction requiring the practitioner to give
information about the client.
The proposed Office Rules of Professional Conduct in various
circumstances permit or require a practitioner to disclose information
relating to the representation. See proposed Sec. Sec. 11.202, 11.203,
11.303, and 11.401.
In addition to these provisions, a practitioner may be obligated or
permitted by other provisions of law to give information provided in
confidence by the client. Paragraph (c) of Sec. 11.106 would require
disclosure necessary to comply with 37 CFR 1.56 requiring a
practitioner to disclose information material to patentability of
pending claims. The practitioner may learn that a client intends to
engage in conduct or is involved in conduct constituting fraud on the
Office. As stated in proposed Sec. 11.106(d), the practitioner has
professional duty to comply with
[[Page 69473]]
Sec. 1.56 by submitting all information known to be material to the
patentability of any existing claim. The USPTO has disciplined
practitioners for failing to reveal evidence required by law to be
disclosed. See In re Milmore, 196 USPQ 628 (Comm'r Pat. 1977)
(suspending practitioner for not calling a reference to the examiner's
attention). To address situations wherein practitioners are found by a
court of record to have engaged in inequitable conduct, the proposed
rules would provide that such a finding is cause for concluding that
the practitioner violated the Rules of Professional Conduct. See Sec.
11.804(h)(7).
The obligation to protect confidences and secrets obviously does
not preclude a practitioner from revealing information when the client
consents after full disclosure, when necessary to perform the
professional employment, when permitted or required by these proposed
rules (e.g., to comply with Sec. 1.56), or when required by law.
Unless the client otherwise directs, a practitioner may disclose the
affairs of the client to partners or associates of the practitioner's
firm.
It is a matter of common knowledge that the normal operation of a
law office exposes confidential professional information to non-
practitioner employees of the office, particularly secretaries and
those having access to the files; and this obligates a practitioner to
exercise care in selecting and training employees so that the sanctity
of all confidences and secrets of clients may be preserved. If the
obligation extends to two or more clients as to the same information, a
practitioner should obtain the permission of all before revealing the
information. A practitioner must always be sensitive to the rights and
wishes of the client and act scrupulously in the making of decisions
that may involve the disclosure of information obtained in the course
of the professional relationship. Thus, in the absence of consent of
the client after full disclosure, a practitioner should not associate
another practitioner in the handling of a matter; nor should the
practitioner, in the absence of consent, seek counsel from another
practitioner if there is a reasonable possibility that the identity of
the client or the client's confidences or secrets would be revealed to
such practitioner. Proper concern for professional duty should cause a
practitioner to shun indiscreet conversations concerning clients.
Invention promoter--Full Disclosure--Informed Consent. Likewise, a
practitioner should not communicate a confidence from the inventor-
client to an invention promoter without first obtaining the inventor-
client's consent to disclose the confidences after full disclosure.
Full disclosure is defined in Sec. 11.1(n). Confidence can include
patentability opinions, patent applications, Office actions,
amendments, appeal briefs, and notices or allowance or abandonment.
Information communicated between the practitioner and inventor-client
through an invention promoter may not be privileged. Denver Tramway Co.
v. Owens, 36 P. 848 (Colo. 1894) (information gathered from client in
presence of third party is not privileged). Consent of an inventor-
client would necessitate full disclosure that the client would be
waiving any attorney-client or agent-client privilege attached to the
confidence by permitting the confidence to be communicated to the
promoter, as well as waiving confidential status for the information.
Paragraph (c)(3)(B) and paragraph (d) of Sec. 11.106 would address
the unique circumstances raised by attorney-client relationships within
the Government.
Paragraph (c)(3)(B) of proposed Sec. 11.106 would apply only to
practitioners employed by the Government who are representing
Government interests when appearing before the USPTO. It is designed to
permit disclosures that are not required by law or court order under
proposed Sec. 11.106(c)(3)(A), but which the Government authorizes its
attorneys to make in connection with their professional services on
behalf of the Government. Such disclosures may be authorized or
required by statute, executive order, or regulation, depending on the
constitutional or statutory powers of the authorizing entity. If so
authorized or required, paragraph (c)(3)(B) of proposed Sec. 11.106
governs.
The term ``agency'' in paragraph (d) includes, inter alia,
executive and independent departments and agencies, special
commissions, committees of the legislature, agencies of the legislative
branch such as the Office, General Accounting Office, and the courts to
the extent that they employ practitioners (e.g., staff counsel) to
counsel them. The employing agency has been designated the client under
this rule to provide a commonly understood and easily determinable
point for identifying the Government client.
Government practitioners may also be assigned to provide an
individual with counsel or representation in circumstances that make
clear that an obligation of confidentiality runs directly to that
individual and that paragraph (d)(2)(A), not (d)(2)(B), of proposed
Sec. 11.106 applies. It is, of course, acceptable in this circumstance
for a Government practitioner to make disclosures about the individual
representation to supervisors or others within the employing
governmental agency so long as such disclosures are made in the context
of, and consistent with, the agency's representation program. See,
e.g., 28 CFR 50.15 and 50.16. The relevant circumstances, including the
agreement to represent the individual, may also indicate the extent to
which the individual client to whom the Government practitioner is
assigned will be deemed to have granted or denied consent to
disclosures to the practitioner's employing agency. Examples of such
representation include representation by a public defender, a
Government practitioner representing a defendant sued for damages
arising out of the performance of the defendant's Government
employment, and a military practitioner representing a court-martial
defendant.
Paragraph (g) of Sec. 11.106 --Former client. The duty of
confidentiality would continue after the client-lawyer or client-agent
relationship has terminated.
Paragraph (h) of Sec. 11.106. There are circumstances in which a
person who ultimately becomes a practitioner provides assistance to a
practitioner while serving in a nonpractitioner capacity. The typical
situation is that of the law clerk or summer associate in a law firm or
Government agency. Paragraph (h) of proposed Sec. 11.106 would address
the confidentiality obligations of such a person after becoming a
member of a Bar or becoming registered; the same confidentiality
obligations are imposed as would apply if the person had been a member
of a Bar at the time confidences or secrets were received. For a
related provision dealing with the imputation of disqualifications
arising from prior participation as a law clerk, summer associate, or
in a similar position, see proposed Sec. 11.110(b).
Section 11.107 is intended to provide clear notice of circumstances
that may constitute a conflict of interest. Loyalty to a client is an
essential element in the practitioner's relationship to a client. An
impermissible conflict of interest may exist before representation is
undertaken, in which event the representation should be declined. The
practitioner should adopt reasonable procedures, appropriate for the
size and type of firm and practice, to determine in both litigation and
non-litigation matters, including patent and trademark matters before
the Office, the parties and issues involved and to determine
[[Page 69474]]
whether there are actual or potential conflicts of interest.
If such a conflict arises after representation has been undertaken,
the practitioner should withdraw from the representation. See proposed
Sec. 11.116. Where more than one client is involved and the
practitioner withdraws because a conflict arises after representation,
whether the practitioner may continue to represent any of the clients
is determined by proposed Sec. 11.109. See also proposed Sec.
11.202(c). As to whether a client-lawyer or client-agent relationship
exists or, having once been established, is continuing, see the
comments to proposed Sec. 11.103
Paragraph (a) of Sec. 11.107 would express the general rule that
loyalty to a client prohibits undertaking representation directly
adverse to that client without that client's consent. Thus, a
practitioner ordinarily may not act as advocate against a person the
practitioner represents in some other matter, even if it is wholly
unrelated. On the other hand, simultaneous representation in unrelated
matters of clients whose interests are only generally adverse, such as
competing economic enterprises, does not require consent of the
respective clients. Paragraph (a) applies only when the representation
of one client would be directly adverse to the other.
The prohibition of paragraph (a) of Sec. 11.107 would relate only
to actual conflicts of positions, not to mere formalities. For example,
a practitioner would not be absolutely forbidden to provide joint or
simultaneous representation if the clients' positions are only
nominally but not actually adverse. Joint representation is commonly
provided to joint inventors, to incorporators of a business, to parties
to a contract, in formulating estate plans for family members, and in
other circumstances where the clients might be nominally adverse in
some respect but have retained a practitioner to accomplish a common
purpose. If no actual conflict of positions exists with respect to a
matter, the absolute prohibition of paragraph (a) does not come into
play.
Paragraph (b) of 11.107 would address situations where loyalty to a
client can be impaired when a practitioner cannot consider, recommend
or carry out an appropriate course of action for the client because of
the practitioner's other responsibilities or interests. The conflict in
effect forecloses alternatives that would otherwise be available to the
client. Paragraph (b) addresses such situations. A possible conflict
does not itself preclude the representation. The critical questions are
the likelihood that a conflict will eventuate and, if it does, whether
it will materially interfere with the practitioner's independent
professional judgment in considering alternatives or foreclose courses
of action that reasonably should be pursued on behalf of the client.
Consideration should be given as to whether the client wishes to
accommodate the other interest involved.
Full disclosure and consent. A client may consent to representation
notwithstanding a conflict. However, as indicated in paragraph (a)(1)
with respect to representation directly adverse to a client, and
paragraph (b)(1) with respect to material limitations on representation
of a client, when a disinterested practitioner would conclude that the
client should not agree to the representation under the circumstances,
the practitioner involved cannot properly ask for such agreement or
provide representation on the basis of the client's consent. When more
than one client is involved, the question of conflict would have to be
resolved as to each client. Moreover, there may be circumstances where
it is impossible to make the disclosure necessary to obtain consent.
For example, when the practitioner represents different clients in
related matters and one of the clients refuses to consent to the
disclosure necessary to permit the other client to make an informed
decision, the practitioner cannot properly ask the latter to consent.
Full Disclosure. Disclosure and consent are not mere formalities.
Full disclosure is defined in Sec. 11.1(n). As defined therein, full
disclosure requires a clear explanation of the differing interests
involved in a transaction, the advantages of seeking independent legal
advice, and a detailed explanation of the risks and disadvantages to
the client entailed in any agreement or arrangement, including not only
any financial losses that will or may foreseeably occur to the client,
but also any liabilities that will or may foreseeably accrue to the
client.
Proposed Sec. 11.107 would not require that disclosure be in
writing or in any other particular form in all cases. Nevertheless, it
should be recognized that the form of disclosure sufficient for more
sophisticated business clients may not be sufficient to permit less
sophisticated clients to provide fully informed consent. Moreover, it
would be prudent for the practitioner to provide potential joint
clients with at least a written summary of the considerations
disclosed, and to request and receive a written consent. This can
reduce the opportunity for dispute regarding the scope and content of
the disclosure.
Consent. The term ``consent'' is defined in Sec. 11.1(e). As
indicated there, a client's consent must not be coerced either by the
practitioner or by any other person. In particular, the practitioner
should not use the client's investment in previous representation by
the practitioner as leverage to obtain or maintain representation that
may be contrary to the client's best interests. If a practitioner has
reason to believe that undue influence has been used by anyone to
obtain agreement to the representation, the practitioner should not
undertake the representation.
When a practitioner has two clients, the clients might have
potential conflicts. In circumstances having potential conflicts, the
circumstances would trigger Sec. 11.107(a) and (b). Potential
conflicts between an inventor and invention promoter may arise from a
contract between them providing for the promoter to obtain a
practitioner to represent the inventor in obtaining a patent. The
practitioner engaged by the promoter may have a lawyer-client or agent-
client relationship with both the inventor and promoter. For example,
if the contract provides for the promoter to pay the practitioner, the
practitioner may regard the promoter as a client, while the
practitioner obtains a power of attorney from the inventor to prosecute
the latter's patent application. Another potential conflict may arise
regarding funds advanced by the inventor for the practitioner's legal
services. Normally, when a client advances legal fees, the funds are
received by a practitioner, who places the funds in an escrow account.
See Sec. 11.115(a). In such circumstances, the client is entitled to a
refund of unearned fees. See proposed Sec. Sec. 11.115(d)(4), and
11.116(d). If, however, in accordance with the contract between the
promoter and inventor, the inventor delivers the funds to the promoter,
the promoter may place the funds in its own account(s). The funds are
then subject to the promoter's control. The inventor may expect the
practitioner to deliver legal services inasmuch as the funds have been
advanced. There is a potential for the promoter going out of business,
or the inventor being dissatisfied with the services from the promoter
and practitioner. The client may desire to discharge the practitioner.
In such circumstances, the inventor might be unable to recover the
unearned advanced legal fees held by the promoter, and there is a
potential conflict between the inventor and promoter regarding the
advanced legal
[[Page 69475]]
fees. In a variation on the same example, a potential conflict exists
if the inventor, although permitted to discharge the practitioner, may
view the situation as compelling him or her to remain with the
practitioner selected by the promoter inasmuch as the promoter holds
the inventor's funds. The circumstances and differing interests of an
inventor-client and a promoter-client may create at least potential
conflicts requiring consent under Sec. 11.107(a). Accord, Formal
Opinion 1997-148, Standing Committee on Professional Responsibility and
Conduct (California).
Further, to the extent the practitioner's relationship with one
client affects the practitioner's loyalty and independent judgment on
behalf of the other client, an actual conflict of interest exists. This
can occur when the practitioner receives conflicting instructions from
the clients, or is called upon to advance inconsistent objectives of
two clients. For example, if an inventor-client insists that the
practitioner pursue a utility patent application, and the promoter
client will pay for only a design patent application, the practitioner
is receiving conflicting instructions and is being called upon to
advance inconsistent objectives. Such circumstances require a
practitioner to obtain further consent under Sec. 11.107(b). Accord,
Formal Opinion 1997-148, Standing Committee on Professional
Responsibility and Conduct (California).
If joint representation of inventor and an invention promoter
involves potential conflicts, it is necessary to obtain consent of both
clients after full disclosure. This obtains if the clients have
different objectives that are implicated by a decision made by the
practitioner. For example, differing interests are implicated if an
inventor-client expects the several thousand dollars paid to the
promoter to be used to obtain the broadest patent protection available,
and the invention promoter would be satisfied with any patent
protection, including narrowest patent protection. A practitioner,
receiving numerous referrals from the promoter and being paid a
relatively low fee for each application, knowingly provides only
narrow, even ``picture'' claims. The practitioner's action accommodates
processing of the referrals, and facilitates continued receipt of
referrals, whereas broader patent protection was available. The
practitioner's action may be satisfactory for the promoter-client,
whereas the inventor-client expects broad patent protection. There is
at least a potential conflict of interest.
Also, where an inventor-client delivers to an invention promoter-
client all funds advanced for legal fees to pay the practitioner, full
disclosure of all risks and consent from both clients would be required
by Sec. 11.107(b). For example, the inventor must be fully informed of
the consequences if the invention promoter goes out of business or
declares bankruptcy, and does not pay the practitioner. The inventor
may be unable to obtain from the promoter a refund of the unearned
funds advanced for legal services, whereas the practitioner, if he or
she had received the funds and declined to provide legal services,
would be required to refund the unearned advanced funds. Moreover,
there may be circumstances where it is impossible to make the
disclosure necessary to obtain consent. For example, when the
practitioner represents different clients in related matters and one of
the clients refuses to consent to the disclosure necessary to permit
the other client to make an informed decision, the practitioner cannot
properly ask the latter to consent.
Practitioner's interests. The practitioner's own interests should
not be permitted to have an adverse effect on representation of a
client. For example, a practitioner's need for income should not lead
the practitioner to undertake matters that cannot be handled
competently and at a reasonable fee. See proposed Sec. Sec. 11.101 and
11.105. If the probity of a practitioner's own conduct in a transaction
is in serious question, it may be difficult or impossible for the
practitioner to give a client detached advice. A practitioner may not
allow related business interests to affect representation, for example,
by referring clients to an enterprise in which the practitioner has an
undisclosed interest.
There can be circumstances where an invention promoter refers
inventors to a practitioner, and the practitioner has an attorney-
client or agent-client relationship with the inventor-client, and a
business or financial relationship exists between the practitioner and
an invention promoter. When the promoter compensates the practitioner,
they may have a business and financial relationship like a third-party
payor relationship between an attorney and insurer. The practitioner
and invention promoter also may have a business and financial
relationship because the practitioner obtains employment (e.g.,
referrals) through the promoter. For example, this can occur where the
practitioner provides legal services at reduced fees, paid by the
promoter, in expectation of receiving numerous referrals from the
promoter. The volume of referrals and rapid production of patent
applications may make up for the reduction in the fees. The inventor-
client may expect the practitioner to provide extensive attentiveness
to his or her needs, and zealous efforts to obtain the broadest patent
protection at the least cost. If the practitioner regards the invention
promoter as his or her client, the full disclosure requirements of
Sec. 11.107(b) are triggered. Even in the absence of any attorney-
client or agent-client relationship between the practitioner and
promoter, the existence of the business or financial relationship
between them requires disclosure obligations by the practitioner under
Sec. 11.108(f). Accord, Formal Opinion 1997-148, Standing Committee on
Professional Responsibility and Conduct (California). The business
dealings between a lawyer and an invention promoter have been
recognized as giving rise to conflicts between the lawyer's duty to
furnish independent legal counsel to another client, and the business
interests of the lawyer acting in the capacity of representing the
invention promoter. See Informal Opinion 1482, American Bar Association
(1982).
In another example, if a practitioner depends on receiving
referrals from an organization the practitioner regards as the client,
and not the individuals purchasing legal services (trusts, patent
applications) offered by the organization and referred to the
practitioner, representation of the individual implicates at least
potential conflicts of interest in violation of Sec. 11.107(b). See In
re R.W. Hodgson, 721 Off. Gaz. 414 (Aug. 20, 1957) (rejecting patent
agent's argument that invention promoter holding 10% interest in each
application of numerous applications, as opposed to the patent
applicant, was his client, and pointing out that Rule 32 (37 CFR 1.32)
does not confer on an assignee of partial interest in an application
the right to conduct the prosecution of an application); People v.
Volk, 805 P.2d 1116, 1117 (Colo. 1991) (holding attorney suffered from
conflict of interest for ``consider[ing] the corporation to be her
client, not the individual purchasers of the trusts''). Consent, after
full disclosure, must be obtained to provide representation.
The foregoing situations are to be distinguished from those
commonly experienced when an inventor, employed by a corporation to
invent, is represented by a practitioner who is employed by the
corporation. For example, the inventor has signed an employment
contract that contains a provision whereby the inventor agrees to
assign to the corporation all inventions conceived during
[[Page 69476]]
employment. The attorney is employed either in-house by the
corporation, or is a member of a firm and is retained to represent the
corporation. Following the inventor's discovery and disclosure to the
corporation of a new and useful invention, the attorney prepares a
patent application. The attorney's actual client is the corporation,
and the attorney has not made any representations to the inventor that
he or she represents the inventor or the inventor's interests. It would
be prudent, before filing the application, to secure from the inventor,
the inventor's signature on a combined declaration and power of
attorney, as well as on assignment of the patent rights to the
corporation. The attorney also would be acting prudently to clearly
inform the inventor before signing the documents that the attorney
represents only the corporation. Upon obtaining the signed combined
declaration and power of attorney, and the assignment, these documents
can be filed in the USPTO, and the assignment recorded. The corporation
may then revoke all previous powers of attorney, and give its own power
of attorney in favor of the attorney.
Conflicts in litigation and administrative proceedings. Paragraph
(a) of Sec. 11.107 would prohibit representation of opposing parties
in litigation and administrative proceedings. Simultaneous
representation of parties whose interests in litigation or an
interference in the Office may conflict, such as coplaintiffs or
codefendants, or opposing parties in an interference is governed by
paragraph (b). An impermissible conflict may exist by reason of
substantial discrepancy in the parties' testimony, or incompatibility
in positions in relation to an opposing party in an interference. On
the other hand, common representation of persons having similar
interests, such as joint applicants, is proper if the risk of adverse
effect is minimal and the requirements of paragraph (b) are met.
Compare proposed Sec. 11.202 involving intermediation between clients.
Ordinarily, a practitioner may not act as advocate against a client
the practitioner represents in some other matter, even if the other
matter is wholly unrelated. However, there are circumstances in which a
practitioner may act as an advocate against a client. For example, a
practitioner representing an enterprise with diverse operations may
accept employment as an advocate against the enterprise in an unrelated
matter if doing so will not adversely affect the practitioner's
relationship with the enterprise or conduct of the suit and if both
clients consent upon full disclosure. The propriety of concurrent
representation can depend on the nature of the litigation. For example,
a suit charging fraud entails conflict to a degree not involved in a
suit for a declaratory judgment concerning statutory interpretation.
Interest of third person paying for a practitioner's service. A
practitioner may be paid from a source other than the client, if the
client consents after full disclosure and the arrangement does not
compromise the practitioner's duty of loyalty to the client. See
proposed Sec. 11.108(f). Full disclosure is defined in Sec. 11.1(n),
and consent is defined in Sec. 11.1(e). For example, when an invention
promoter and inventor have conflicting interests in a matter arising
from an invention marketing agreement, and the promoter is required to
provide a patent practitioner to file and prosecute a patent
application for the inventor, the arrangement should assure the
practitioner professional independence. Thus, the arrangement should
assure that the practitioner's professional independence permits him or
her to zealously pursue the inventor's patent rights, including any
necessary appeal or covering an interference.
Other Conflict Situations. Conflicts of interest in contexts other
than litigation sometimes may be difficult to assess. Relevant factors
in determining whether there is potential for adverse effect include
the duration and intimacy of the practitioner's relationship with the
client or clients involved, the functions being performed by the
practitioner, the likelihood that actual conflict will arise and the
likely prejudice to the client from the conflict if it does arise. The
question is often one of proximity and degree.
For example, a practitioner may not represent multiple parties to a
negotiation whose interests are fundamentally antagonistic to each
other, but common representation is permissible where the clients are
generally aligned in interest even though there is some difference of
interest among them.
A practitioner for a corporation or other organization who is also
a member of its board of directors should determine whether the
responsibilities of the two roles may conflict. The lawyer may be
called on to advise the corporation in matters involving actions of the
directors. Consideration should be given to the frequency with which
such situations may arise, the potential intensity of the conflict, the
effect of the practitioner's resignation from the board and the
possibility of the corporation's obtaining legal advice from another
practitioner in such situations. If there is material risk that the
dual role will compromise the practitioner's independence of
professional judgment, the practitioner should not serve as a director.
Conflict charged by an opposing party. Resolving questions of
conflict of interest is primarily the responsibility of the
practitioner undertaking the representation. As in litigation, where a
court may raise the question of conflicting interests when there is
reason to infer that the practitioner has neglected the responsibility,
the same may obtain in inter parte practice before the Office. Where
the conflict is such as clearly to call in question the fair or
efficient administration of justice, opposing counsel may properly
raise the question. Such an objection should be viewed with caution,
however, for it can be misused as a technique of harassment.
Withdrawal. It is much preferred that a representation that is
likely to lead to a conflict be avoided before the representation
begins, and a practitioner should bear this fact in mind in considering
whether disclosure should be made and consent obtained at the outset.
If, however, a conflict only arises after a representation has been
undertaken, and the conflict falls within Sec. 11.107(a), or if a
conflict arises under Sec. 11.107(b), then the practitioner should
withdraw from the representation, complying with Sec. 11.106. Where a
conflict is not foreseeable at the outset of representation and arises
only under Sec. 11.107, a practitioner would have to seek consent to
the conflict at the time that the actual conflict becomes evident.
Where the conflict is such as clearly to call in question the fair or
efficient administration of justice, opposing counsel may properly
raise the question. Such an objection should be viewed with caution,
however, because it can be misused as a technique of harassment. In
determining whether a conflict is reasonably foreseeable, the test is
an objective one, i.e., that which a lawyer of reasonable prudence and
competence would ascertain in regard to the matter in question. In
determining the reasonableness of a practitioner's conduct, such
factors as whether the practitioner (or practitioner's firm) has an
adequate conflict-checking system in place, must be considered. Where
more than one client is involved and the practitioner must withdraw
because a conflict arises after representation has been undertaken, the
question of whether the practitioner may continue to represent any of
the clients would be determined by Sec. 11.109.
Imputed Disqualification. All of the references in Sec. 11.107 and
this
[[Page 69477]]
accompanying comment to the limitation upon a ``practitioner'' must be
read in light of the imputed disqualification provisions of Sec.
11.110, which affect practitioners practicing in a firm.
In the Government-practitioner context, Sec. 11.107(b) is not
intended to apply to conflicts between agencies or components of
Government (Federal, state, or local) where the resolution of such
conflicts has been entrusted by law, order, or regulation to a specific
individual or entity.
Businesses Affiliated with a Practitioner or Firm. Practitioners,
either alone or through firms, may have interests in enterprises that
do not or would not be authorized to practice law but that, in some or
all of their work, become involved with practitioners or their clients
either by assisting the practitioner in providing legal services or by
providing related services to the client. Examples of such enterprises
are accounting firms, consultants, invention promoters, and the like.
The existence of such interests would raise several questions under
Sec. 11.107. First, a practitioner's recommendation, as part of legal
advice, that the client obtain the services of an enterprise with which
the practitioner is affiliated implicates Sec. 11.107(b)(4). The
practitioner should not make such a recommendation unless able to
conclude that the practitioner's professional judgment on behalf of the
client will not be adversely affected. Even then, the practitioner
should not make such a recommendation without full disclosure to the
client so that the client can make a fully informed choice. Such
disclosure should include the nature and substance of the
practitioner's or the firm's interest in or relation with the
enterprise, alternative sources for the non-legal services in question,
and sufficient information so that the client understands that the
related enterprise's services are not legal services, and the client's
relationship to the enterprise will not be that of client to attorney.
Second, such an affiliated enterprise may refer a potential client to
the practitioner; the practitioner should take steps to assure that the
related enterprise will inform the practitioner of all such referrals.
The practitioner should not accept such a referral without full
disclosure of the nature and substance of the practitioner's interest
in the related enterprise, including the number of clients annually
referred. See also Sec. 11.701(b). Third, the practitioner should be
aware that the relationship of the enterprise to its own customer may
create a significant interest in the practitioner in the continuation
of that relationship. The substantiality of such an interest may be
enough to require the practitioner to decline a proffered client
representation that would conflict with that interest; at least
Sec. Sec. 11.107(b)(4) and (c) may require the prospective client to
be informed and to consent before the representation could be
undertaken. Fourth, a practitioner's interest in an affiliated
enterprise that may also serve the practitioner's clients would create
a situation in which the practitioner must take unusual care to fashion
the relationship among practitioner, client, and enterprise to assure
that confidences and secrets are properly preserved pursuant to Sec.
11.106 to the maximum extent possible. See Sec. 11.503.
Section 11.108--Transactions Between Client and Practitioner. As a
general principle, all transactions between client and practitioner
should be fair and reasonable to the client. In such transactions a
review by independent counsel on behalf of the client is often
advisable. Section 11.108(a) does not, however, apply to standard
commercial transactions between the practitioner and the client for
products or services that the client generally markets to others; for
example, banking or brokerage services, medical services, products
manufactured or distributed by the client, and utility services. In
such transactions, the practitioner has no advantage in dealing with
the client, and the restrictions in Sec. 11.108(a) are unnecessary and
impracticable.
A practitioner may accept a gift from a client, if the transaction
meets general standards of fairness. For example, a simple gift such as
a present given at a holiday or as a token of appreciation is
permitted. If effectuation of a substantial gift requires preparing a
legal instrument such as a will or conveyance, however, the client
should be advised by the practitioner to obtain the detached advice
that another practitioner can provide. Section 11.108(c) recognizes an
exception where the client is a relative of the donee or the gift is
not substantial.
Proposed Sec. 11.108 does not prevent a practitioner from entering
into a contingent fee arrangement with a client in a civil case, if the
arrangement satisfies all the requirements of Sec. 11.105(c).
Literary Rights. An agreement by which a practitioner acquires
literary or media rights concerning the conduct of the representation
creates a conflict between the interests of the client and the personal
interests of the practitioner. Measures that might otherwise be taken
in the representation of the client may detract from the publication
value of an account of the representation. Section 11.108(d) would not
prohibit a practitioner representing a client in a transaction
concerning literary property from agreeing that the practitioner's fee
shall consist of a share in ownership in the property, if the
arrangement conforms to Sec. 11.105.
Patent Rights. An agreement whereby a practitioner acquires patent
rights or an inventor assigns patent rights to an enterprise funded by
the practitioner, but equally owned by the practitioner and the
inventor, also creates a conflict between the interests of the client
and the personal interests of the practitioner. A practitioner must do
more than advise the client to seek the advice of independent counsel
in the transaction. Full disclosure requires the practitioner to advise
the client of all options or alternatives, including advising the
client to consult with independent counsel, and potential conflicts
between the practitioner and client. See Monco v. Janus, 583 N.E.2d 575
(Ill. 1991); Rhodes v. Buechel, 685 N.Y.S.2d 65, 1999 N.Y.App. Div.
LEXIS 904 (1999), appeal denied, 711 N.E.2d 984, 689 N.Y.S.2d 708, 1999
N.Y. LEXIS 1206 (NY 1999). A practitioner should advise a client,
before entering into an agreement, of the alternatives to assigning all
patent rights to the enterprise. For example, one alternative is to
lease the rights to the company. The conflict is evident when following
a lack of success, the practitioner seeks to dissolve the enterprise
due to a deadlock with client, and the client expects the practitioner
to exercise professional judgment on the client's behalf.
Paying Certain Administrative Proceeding or Litigation Costs and
Client Expenses. Historically, under the Code of Professional
Responsibility, practitioners could only advance the costs of
litigation. The client remained ultimately responsible, and was
required to pay such costs even if the client lost the case. That rule
was modified by the USPTO in 1985 by adoption of 37 CFR 10.64(b), that
eliminated the requirement for the client to remain ultimately liable
for all costs of patent prosecution by permitting the practitioner to
advance any fee required to prevent or remedy abandonment by reason of
an act or omission attributable to the practitioner. The provisions of
Sec. 11.108(e) would continue the provisions of current Sec.
10.64(b), but go further by providing that a practitioner may also pay
certain expenses of a client that are not patent prosecution or
litigation expenses. Thus, under Sec. 11.108(e), a practitioner may
pay medical or living expenses of
[[Page 69478]]
a client to the extent necessary to permit the client to continue
patent or trademark prosecution, or litigation. The payment of these
additional expenses is limited to those strictly necessary to sustain
the client during patent prosecution or the litigation, such as medical
expenses and minimum living expenses. Permitting such payments would
bring the proposed rules in conformity with the Rules of Professional
Conduct adopted for many state bars. The purpose of permitting such
payments is to avoid situations in which a client is compelled by
exigent financial circumstances to continue patent prosecution, or
settle a claim on unfavorable terms in order to receive the immediate
proceeds of settlement. This provision does not permit practitioners to
``bid'' for clients by offering financial payments beyond those minimum
payments necessary to sustain the client until the patent prosecution
or litigation is completed. Regardless of the types of payments
involved, assuming such payments are proper under Sec. 11.108(e),
client reimbursement of the practitioner is not required. However, no
practitioner is required to pay litigation or other patent costs to a
client. Section 11.108 would merely permit such payments to be made
without requiring reimbursement by the client.
Paragraph (e)(3) of Sec. 11.108 would continue the present
practice of permitting a practitioner to advance any fee required to
prevent or remedy an abandonment of a client's application by reason of
an act or omission attributable to the practitioner and not to the
client, whether or not the client is ultimately liable.
Paragraph (f) of Sec. 11.108--Person Paying for Practitioner's
Services. Section 11.108(f) would require full disclosure and client
consent before the practitioner's services can be paid for by a third
party. Such an arrangement would also have to conform to the
requirements of Sec. 11.106 concerning confidentiality and Sec.
11.107 concerning conflict of interest and risks. Where the client is a
class, consent may be obtained on behalf of the class by court-
supervised procedure. The disclosure and consent must be in writing.
The only interest of some of third parties that offer a
practitioner's legal service may be a financial one: closing the sale
of a legal service, such as a living trust or patent application, to
the individual. Such a party, e.g., an invention promoter, facilitates
the practitioner's access to such individuals. The practitioner may
depend upon the promoter for employment, and even compensation in these
circumstances. In such situations, the promoter can control the
engagement of the practitioner. Potential conflicts may arise where the
practitioner permits the third party, with whom the practitioner has a
business or financial relationship, to perform the essential planning
tasks, including fact-finding without supervision. The practitioner
should be exercising independent professional judgment.
In order to create an appropriate patent application, relevant
information must be ascertained from the inventor. The practitioner
must, with the inventor's input, determine the proper type of patent
application to prepare, the facts to be included, and the scope of
protection to be sought. The practitioner must counsel an inventor
regarding all of the options that are appropriate and the pros and cons
of each option. After such counseling, the participant (e.g., an
inventor) must decide if a patent application, or some other
arrangement should be the cornerstone of the intellectual property
plan. If a practitioner permits an invention promoter to assume this
function, the practitioner allows a third party to interfere with the
practitioner's independence of professional judgment. See Sec.
11.107(b). Accord, Formal Opinion No. 1997-148, Standing Committee on
Professional Responsibility and Conduct (California).
Accordingly, in matters involving an invention promoter paying the
practitioner, proposed paragraph (f) would require practitioners to
fully disclose all involved conflicts of interest and risks. The duty
of full disclosure includes informing the inventor of reasonably
foreseeable adverse consequences if the inventor advances or has
advanced legal fees or expenses to the promoter. Thus, the practitioner
would have to inform the client of the full extent to which the
advanced funds are or would be at risk of being lost by being placed
with the promoter, as opposed to being delivered directly to the
practitioner. The risks could include, but are not limited to, the loss
of the funds if the promoter ceases doing business, declares
bankruptcy, or is otherwise unable to obtain a refund of unearned
advanced legal fees. In contrast, the client could obtain the refund if
the funds are delivered to the practitioner. For example, if delivered
to the practitioner, the advanced legal fees should be deposited in the
practitioner's escrow account. See Sec. 11.115. Unearned funds would
be refundable to the client, even if the practitioner ceases to
continue practicing, and may not be subject to bankruptcy. Another risk
in the event the promoter ceases to do business, or declares bankruptcy
is the possibility that the practitioner will refuse to provide legal
services for the client unless the client again provides funds to pay
for legal services for which the client previously paid.
Paragraph (f)(1)(ii) of Sec. 11.108 would provide if the client is
an inventor who advances legal fees and costs to an invention promoter,
and the promoter compensates the practitioner, the practitioner has a
duty to disclose to the client all conflicting interests and risks in
writing.
Paragraph (2) of Sec. 11.108(f) would require a practitioner to
avoid interference with his or her independence of professional
judgment if a third party is paying for the practitioner's services.
Thus, a practitioner must avoid relying on a contract or other
agreement between a client/inventor and an invention promoter as
limiting his or her professional services rendered to a particular
number of applications, e.g., a provisional application, or to a
particular type of invention for which an application will be filed,
e.g., a design patent application.
An invention promoter can interfere with the attorney-client or
agent-client relationship between the practitioner and inventor-client
in several ways. First, the promoter can interfere with the attorney-
client or agent-client relationship between the practitioner and
inventor. For example, this can occur if the promoter determines the
legal protection that the practitioner will seek for the inventor.
These situations obtain where a promoter enters into a contract with
its patron, the inventor, using its standard contract form to provide
only design patent protection, or only utility patent protection. If
the practitioner permits the promoter's contract to control the extent
to which legal services are provided for the fee paid by the inventor,
the practitioner permits the promoter to direct or regulate the
practitioner's professional judgment.
The invention promoter also may interfere with the relationship by
collecting the legal fees to be paid for the practitioner's legal
services. For example, if the promoter deposits the funds in its own
bank account, and does not pay the practitioner, the promoter
interferes with the relationship to the extent the practitioner refuses
to provide legal services unless or until paid. A practitioner may be
willing to continue representation only if the inventor-client again
pays for the legal services, but only if legal fees are now paid
directly to the practitioner. Inasmuch as the practitioner undertook
[[Page 69479]]
to represent the client under the circumstances where the company
collects the legal fees, it is believed that the practitioner should
provide the legal services, and pursue his or her legal recourse
against the company for recovery of the fees.
Similarly, invention promoters may interfere with the relationship
if they go out of business. Practitioners employed by such promoters
may leave the inventor-client's files behind the promoter's closed
doors, and abandon the inventors to their own resources. Section
11.108(f)(2) would require a practitioner to avoid interference with
his or her independence of professional judgment if third party payment
for a practitioner's services is to be permitted.
Sections 11.108(f)(2) and 11.504(c) would proscribe a practitioner
from permitting an invention promoter to direct or regulate the
practitioner's professional judgment in rendering legal services.
Family Relationships Between Practitioners. Paragraph (i) of Sec.
11.108 would apply to related practitioners who are in different firms.
Related practitioners in the same firm would be governed by Sec. Sec.
11.107, 11.109, and 11.110. Pursuant to the provisions of Sec. 11.110,
the disqualification stated in paragraph (i) is personal and is not
imputed to members of firms with whom the practitioners are associated.
Since each of the related practitioners is subject to Sec. 11.110(i),
the effect is to require the consent of all materially affected
clients.
Practitioner's Liens. Paragraph (j) of Sec. 11.108 would be
substantially the same as the provisions of current Sec. 10.64(a). The
substantive law of each state and territory differs regarding whether
practitioners are permitted to assert and enforce liens against the
property of clients. In the District of Columbia, an attorney's lien is
permitted. See, e.g., Redevelopment Land Agency v. Dowdey, 618 A.2d
153, 159-60 (D.C. 1992), and cases cited therein. See also Beardsley v.
Cockerell, 240 F.Supp 845 (D.D.C. 1965) (attorney retaining lien
applied to legal patent work, legal non-patent work, and other property
for payment for services). Whether a practitioner may legally have a
lien on money or property belonging to a client is generally a matter
of substantive law. Exceptions to which the common law might otherwise
permit are made with respect to contingent fees and retaining liens.
See, respectively, Sec. 11.105(c) and Sec. 11.108(i). Exceptions
regarding retention of papers relating to a client are addressed in
Sec. 11.116(d).
Paragraph (d) of Sec. 11.116 would require a practitioner to
surrender papers and property to which the client is entitled when
representation of the client terminates. Section 11.108(j) would state
a narrow exception to Sec. 11.116(d): a practitioner may retain
anything the law permits--including property--except for files. As to
files, a practitioner may retain only the practitioner's own work
product, and then only if the client has not paid for the work.
However, if the client has paid for the work product, the client is
entitled to receive it, even if the client has not previously seen or
received a copy of the work product. Furthermore, the practitioner may
not retain the work product for which the client has not paid, if the
client has become unable to pay or if withholding the work product
might irreparably harm the client's interest.
Under paragraph (d) of Sec. 11.116, for example, it would require
a practitioner to return all papers received from a client, such as
birth certificates, invention disclosures, or invention prototypes.
Section 11.116(d) would prohibit retention of such papers to secure
payment of any fee due. Only the practitioner's own work product--
results of factual investigations, legal research and analysis, and
similar materials generated by the practitioner's own effort--could be
retained (the term ``work product'' as used herein is limited to
materials falling within the ``work product doctrine,'' but includes
any material generated by the practitioner that would be protected
under that doctrine whether or not created in connection with pending
or anticipated litigation). Office actions would not be considered work
product. A practitioner could not, however, withhold all work product
merely because a portion of the practitioner's fees had not been paid.
See Sec. 11.116(d).
There are situations in which withholding work product would not be
permissible because of irreparable harm to the client. The possibility
of involuntary incarceration or criminal conviction constitutes one
category of irreparable harm. See Formal Opinion 1690, Legal Ethics
Committee of the Virginia State Bar (1997). The realistic possibility
that a client might irretrievably lose a significant right, e.g.,
patent rights, or become subject to a significant liability because of
the withholding of the work product constitutes another category of
irreparable harm. On the other hand, the mere fact that the client who
can afford to might have to pay another practitioner to replicate the
work product does not, standing alone, constitute irreparable harm.
These examples are merely indicative of the meaning of the term
``irreparable harm,'' and are not exhaustive.
Taking an interest in a client's patent. Paragraph (j)(3) of Sec.
11.108 would be substantially the same as the provisions of current
Sec. 10.64(a)(3), in permitting a practitioner to take an interest in
a patent or in the proceeds from a patent as part of his or her fee.
However, consistent with Sec. 11.105(a), the fee obtained by the
interest may not exceed an amount that is reasonable. The paragraph
adds information that a practitioner who is or has been an officer or
employee of the Office has an additional legal issue to consider. The
latter practitioner is ineligible during the period of the
practitioner's appointment and for one year thereafter from acquiring,
directly or indirectly, except by inheritance or bequest, any right or
interest in any patent, issued or to be issued by the Office. See 35
U.S.C. 4. In the year following separation from the Office, a
practitioner who has been an officer or employee of the Office may
acquire an interest in a client's patent only at such time and insofar
as is permitted by Sec. 4.
Paragraph (k) of 11.108 would address situations wherein a
practitioner acquires access to inventor-clients through an invention
promoter. A promoter's interests may be served merely if the inventor
accepts a marketing plan. The plan often includes protection of the
inventor-client's invention with a patent. However, the best interests
of the inventor may mean that no patent is necessary, or both utility
and design patents should be considered an integral part of the plan.
The practitioner's duty to the participant includes educating the
inventor as to the available options and not simply following the sole
patent plan format offered by the promoter which all must use. The
practitioner in these situations is attempting to serve two masters,
the inventor and the invention promoter.
A lawyer-client or agent-client relationship can exist between the
practitioner and the inventor at least when representation before the
Office occurs. A business and professional relationship can exist
between the practitioner and the invention promoter whereby the
practitioner acquires inventor-clients through the promoter. The
practitioner and the promoter have a business and financial
relationship because the practitioner obtains employment or
compensation through the promoter.
Paragraph (k) of Sec. 11.108 would address situations in which a
[[Page 69480]]
practitioner's relationship with another party could interfere with a
practitioner's loyalty and independent professional judgment on an
inventor-client's behalf. The practitioner's relationship with the
invention promoter here creates the possibility of a conflict of
interest that warrants disclosure under the rule. The inventor-client
and the promoter may have differing interests in the engagement. The
best interests of the inventor may mean that a patent should not be an
integral part of the marketing plan. The best interest of the promoter,
however, is most often served only if the inventor's plan includes a
patent. The practitioner's duty to the inventor-client includes
educating the inventor as to the available options to protect the
invention, including patent rights, and not simply presenting one
patent format offered by the promoter which all must use. The
practitioner's duty of loyalty flows from his other client.
Here, the practitioner's judgment may be influenced by the
practitioner's relationship with the promoter, who is a ``party'' as
the facilitator of the transaction, or perhaps as a partial assignee of
the invention. This relationship would trigger Sec. 11.108(k)(1).
Additionally, the promoter profits from the sale of the marketing plan,
and receives the opportunity to market other products or services to
the inventor and this would trigger Sec. 11.108(k)(2). Accordingly,
under either paragraph (1) or (2) of Sec. 11.108(k), the practitioner
would be barred from representing the inventor unless the practitioner
makes the required full written disclosure and receives the consent of
the inventor. Section 11.1(n) defines ``full disclosure'' as a ``clear
explanation of the differing interests involved in a transaction, * * *
and detailed explanation of the risks and disadvantages to the client
entailed in any agreement or arrangement, including not only any
financial loses that will or may foreseeably occur to the client, but
also any liabilities that will or may foreseeably accrue to the
client.''
In this situation, a practitioner has a duty to inform the
inventor-client in writing of the full extent of the practitioner's and
client's differing interests. For example, the duty would require full
disclosure of the practitioner's business and financial relationship
with the promoter, and the differing interests of the practitioner, the
promoter, and inventor in the transaction. The practitioner's duty of
``full disclosure'' includes informing the inventor-client of
reasonably foreseeable adverse consequences and includes informing the
inventor in writing about how these relationships could cause the
practitioner to favor the interests of the promoter and influence the
practitioner's advice to the client. See Opinion No. 1997-148, Standing
Committee on Professional Responsibility and Conduct (California).
Section 11.109. After termination of a client-practitioner
relationship, a practitioner may not represent another client except in
conformity with proposed Sec. 11.109. The principles in Sec. 11.107
would determine whether the interests of the present and former client
are adverse. Thus, a practitioner could not properly seek to rescind on
behalf of a new client a contract drafted on behalf of the former
client. So also a practitioner who prosecutes a patent application for
joint inventors, and has an attorney-client relationship with each
joint inventor could not properly represent one joint inventor in
breach of contract suit against the other joint inventor while the
patent application was pending where each joint inventor agreed to pay
half of the legal fees, and the practitioner is aware that each
applicant would benefit directly from successful prosecution of the
application. See Henry Filters, Inc. v. Peabody Barnes, Inc., 611
N.E.2d 873 (Ohio 1992).
The scope of a ``matter'' for purposes of Sec. 11.109 may depend
on the facts of a particular situation or transaction. The
practitioner's involvement in a matter can also be a question of
degree. For example, a practitioner previously and currently served as
local counsel in several patent applications for a Czechoslovakian
agency that acted as an inventor's foreign attorney in prosecution of
U.S. patent applications and that serves as Czechoslovakian
representative for all Czechoslovakian patent applicants. The
practitioner represented a client from Japan in an interference with
another client of the Czechoslovakian agency. The practitioner was
found not to be disqualified from representing a client adverse to the
Czechoslovakian agency's other client. No evidence was adduced showing
that the practitioner represented the agency's other client, or that
the subject matter in the patents of the agency's client or any other
Czechoslovakian application handled by the practitioner was
substantially related to the subject matter of the practitioner's
client. See Strojirenstvi v. Toyada, 2 USPQ2d 1222 (Comm'r Pat. 1986).
In another example, attorneys in a firm representing an accused patent
infringer, as well as the firm, were disqualified where one of the
firm's partners worked directly for the patent owner in a substantially
related case, and the other firm partner, designated as the lead
counsel for the accused infringer, was an associate in the firm that
represented the patent owner in the prior related case. The two suits
involved the same adversaries. In both suits, the accused infringer
filed antitrust counterclaims alleging the same improper marketing
practices. Both suits involve the same technology, and were found to be
``substantially related'' actions. See W.L. Gore & Associates, Inc. v.
International Medical Prosthetics Research Associates, Inc., 223 USPQ
884 (Fed. Cir. 1984). When a practitioner has been directly involved in
a specific transaction, subsequent representation of other clients with
materially adverse interests clearly is prohibited. On the other hand,
a practitioner who recurrently handled a type of problem for a former
client is not precluded from later representing another client in a
wholly distinct problem of that type even though the subsequent
representation involves a position adverse to the prior client. Similar
considerations can apply to the reassignment of Government
practitioners between defense and prosecution functions. The underlying
question is whether the practitioner was so involved in the matter that
the subsequent representation can be justly regarded as a changing of
sides in the matter in question. Section 11.109 is intended to
incorporate Federal case law defining the ``substantial relationship''
test. See, e.g., T.C. Theatre Corp. v. Warner Brothers Pictures, 113
F.Supp. 265 (S.D.N.Y. 1953), and its progeny; see also Conflicts of
Interest in the Legal Profession, 94 Harv. L. Rev.1244, 1315-34 (1981).
Disqualification from subsequent representation is for the
protection of clients and can be waived by them. A waiver is effective
only if there is full disclosure of the circumstances, including the
practitioner's intended role in behalf of the new client. The question
of whether a practitioner is personally disqualified from
representation in any matter on account of successive Government and
private employment would be governed by proposed Sec. 11.111 rather
than by Sec. 11.109.
With regard to an opposing party's raising a question of conflict
of interest, see the comment to Sec. 11.107. With regard to
disqualification of a firm with which a practitioner is associated, see
Sec. Sec. 11.110 and 11.111.
Practitioners moving between firms. When practitioners have been
associated within a firm but then end their association, the question
of
[[Page 69481]]
whether a practitioner should undertake representation is more
complicated. There are several competing considerations. The client
previously represented by the former firm must be reasonably assured
that the principle of loyalty to the client is not compromised. The
rule should not be so broadly cast as to preclude other persons from
having reasonable choice of legal counsel. The rule also should not
unreasonably hamper practitioners from forming new associations and
taking on new clients after having left a previous association. In this
connection, it should be recognized that today many practitioners
practice in firms, that many practitioners to some degree limit their
practice to one field or another, and that many move from one
association to another several times in their careers. If the concept
of imputation were applied with unqualified rigor, the result would be
radical curtailment of the opportunity of practitioners to move from
one practice setting to another and of the opportunity of clients to
change counsel.
Reconciliation of these competing principles in the past has been
attempted under two rubrics. One approach has been to seek per se rules
of disqualification. For example, it has been held that a partner in a
law firm is conclusively presumed to have access to all confidences
concerning all clients of the firm. Under this analysis, if a
practitioner has been a partner in one law firm and then becomes a
partner in another law firm, there may be a presumption that all
confidences known by the partner in the first firm are known to all
partners in the second firm. This presumption might properly be applied
in some circumstances, especially where the client has been extensively
represented, but may be unrealistic where the client was represented
only for limited purposes. Furthermore, such a rigid rule exaggerates
the difference between a partner and an associate in modern law firms.
The other rubric formerly used for dealing with disqualification is
the appearance of impropriety proscribed in Canon 9 of the ABA Model
Code of Professional Responsibility. This rubric has a two-fold
problem. First, the appearance of impropriety can be taken to include
any new client-lawyer or agent-client relationship that might make a
former client feel anxious. If that meaning were adopted,
disqualification would become little more than a question of subjective
judgment by the former client. Second, since ``impropriety'' is
undefined, the term ``appearance of impropriety'' is question-begging.
It therefore has to be recognized that the problem of disqualification
cannot be properly resolved either by simple analogy to a practitioner
practicing alone or by the very general concept of appearance of
impropriety.
The standard that would be followed by the Office is addressed in
the following paragraphs styled Confidentiality and Adverse positions.
Confidentiality. Preserving confidentiality is a question of access
to information. Access to information, in turn, is essentially a
question of fact in particular circumstances, aided by inferences,
deductions or working presumptions that reasonably may be made about
the way in which practitioners work together. A practitioner may have
general access to files of all clients of a law firm and may regularly
participate in discussions of their affairs; it should be inferred that
such a practitioner in fact is privy to all information about all the
firm's clients. In contrast, another practitioner may have access to
the files of only a limited number of clients and participate in
discussions of the affairs of no other clients; in the absence of
information to the contrary, it should be inferred that such a
practitioner in fact is privy to information about the clients actually
served but not confidences of other clients.
Paragraph (b) of Sec. 11.109. Application of paragraph (b) of
Sec. 11.109 would depend on a situation's particular facts. In such an
inquiry the burden of proof should rest upon the firm whose
disqualification is sought.
Paragraph (b) of Sec. 11.109 would operate to disqualify the
practitioner only when the practitioner involved has actual knowledge
of information protected by Sec. Sec. 11.106 and 11.109(b). Thus, if a
practitioner while with one firm acquired no confidential knowledge or
information relating to a particular client of the firm, and that
practitioner later joined another firm, neither the practitioner
individually nor the second firm is disqualified from representing
another client in the same or a related matter even though the
interests of the two clients conflict. See Sec. 11.110(b) for the
restrictions on a firm once a practitioner has terminated association
with the firm.
Independent of the question of disqualification of a firm, a
practitioner changing professional association has a continuing duty to
preserve confidentiality of information about a client formerly
represented. See Sec. Sec. 11.106 and 11.109.
Adverse positions. The second aspect of loyalty to a client is the
practitioner's obligation to decline subsequent representations
involving positions adverse to a former client arising in substantially
related matters. This obligation requires abstention from adverse
representation by the individual practitioner involved, but does not
properly entail abstention of other practitioners through imputed
disqualification. Hence, this aspect of the problem is governed by
Sec. 11.109(a). Thus, if a practitioner left one firm for another, the
new affiliation would not preclude the firms involved from continuing
to represent clients with adverse interests in the same or related
matters, so long as the conditions of paragraphs (b) and (c) concerning
confidentiality have been met.
Confidential information acquired by the practitioner in the course
of representing a client may not subsequently be used or revealed by
the practitioner to the disadvantage of the client. However, the fact
that a practitioner has once served a client does not preclude the
practitioner from using generally known information about that client
when later representing another client.
Disqualification from subsequent representation is for the
protection of former clients and can be waived by them. A waiver is
effective only if there is full disclosure of the circumstances,
including the practitioner's intended role in behalf of the new client.
With regard to an opposing party's raising a question of conflict
of interest, see comment to Sec. 11.107. With regard to
disqualification of a firm with which a practitioner is or was formerly
associated, see Sec. 11.110.
Section 11.110 would provide a general rule for disqualification.
For purposes of the USPTO Rules of Professional Conduct, the term
``firm'' includes practitioners in a private firm, and practitioners
employed in the legal department of a corporation or other
organization, or in a legal services organization, but does not include
a Government agency or other Government entity. Whether two or more
practitioners constitute a firm within this definition can depend on
the specific facts. For example, two practitioners who share office
space and occasionally consult or assist each other ordinarily would
not be regarded as constituting a firm. However, if they present
themselves to the public in a way suggesting that they are a firm or
conduct themselves as a firm, they should be regarded as a firm for
purposes of the Rules. The terms of any formal agreement between
associated practitioners are relevant in determining whether they are a
firm, as is the fact
[[Page 69482]]
that they have mutual access to confidential information concerning the
clients they serve. Furthermore, it is relevant in doubtful cases to
consider the underlying purpose of the Rule that is involved. A group
of practitioners could be regarded as a firm for purposes of the Rule
that the same practitioner should not represent opposing parties in
litigation, while it might not be so regarded for purposes of the Rule
that information acquired by one practitioner is attributed to another.
With respect to the law department of an organization, there
ordinarily would be no question that the members of the department
constitute a firm within the meaning of the Rules of Professional
Conduct. However, there can be uncertainty as to the identity of the
client. For example, it may not be clear whether the law department of
a corporation represents a subsidiary or an affiliated corporation, as
well as the corporation by which the members of the department are
directly employed. A similar question can arise concerning an
unincorporated association and its local affiliates.
Similar questions can also arise with respect to practitioners in
legal aid organizations. Practitioners employed in the same unit of a
legal service organization constitute a firm, but not necessarily those
employed in separate units. As in the case of independent
practitioners, whether the practitioners should be treated as
associated with each other can depend on the particular Rule that is
involved, and on the specific facts of the situation.
Where a practitioner has joined a private firm after having
represented the Government, the situation would be governed by Sec.
11.111. The individual practitioner involved is bound by these rules
generally, including Sec. Sec. 11.106, 11.107, and 11.109.
Different provisions are thus made for movement of a practitioner
from one private firm to another and for movement of a practitioner
from the Government to a private firm. The Government is entitled to
protection of its client confidences, and therefore to the protections
provided in Sec. Sec. 11.106 and 11.111. However, if the more
extensive disqualification in Sec. 11.110 were applied to former
Government practitioners, e.g., patent examiners, the potential effect
on the Government would be unduly burdensome. The Government deals with
all private citizens and organizations, and thus has a much wider
circle of adverse legal interests than does any private law firm. In
these circumstances, the Government's recruitment of practitioners
would be seriously impaired if Sec. 11.110 were applied to the
Government. On balance, therefore, the Government, including the USPTO,
is better served in the long run by the protections stated in Sec.
11.111.
Paragraph (a) of Sec. 11.110 would address principles of imputed
disqualification. The rule of imputed disqualification stated in Sec.
11.110(a) gives effect to the principle of loyalty to the client as it
applies to practitioners who practice in a law firm. Such situations
can be considered from the premise that a firm of practitioners is
essentially one practitioner for purposes of the rules governing
loyalty to the client, or from the premise that each practitioner is
vicariously bound by the obligation of loyalty owed by each
practitioner with whom the practitioner is associated. Section
11.110(a) would govern only among the practitioners currently
associated in a firm. When a practitioner moves from one firm to
another, the situation would be governed by Sec. Sec. 11.109 and
11.110(b).
Paragraph (b) of Sec. 11.110 would operate to permit a law firm,
under certain circumstances, to represent a person with interests
directly adverse to those of a client represented by a practitioner who
formerly was associated with the firm. This section would apply
regardless of when the formerly associated practitioner represented the
client. However, the law firm may not represent a person with interests
adverse to those of a present client of the firm, which would violate
Sec. 11.107. Moreover, the firm may not represent the person where the
matter is the same or substantially related to that in which the
formerly associated practitioner represented the client and any other
practitioner currently in the firm has material information protected
by Sec. Sec. 11.106 and 11.109(c).
Section 11.111 would address practitioners who leave public office,
such as resigning or retiring from the USPTO as a patent examiner, and
enter other employment, e.g., becoming a patent searcher, or registered
practitioner. It applies to judges and their law clerks as well as to
practitioners who have acted in other public capacities. It is a
counterpart of Sec. 11.110(b), which applies to practitioners moving
from one firm to another.
This section would prohibit a practitioner from exploiting his or
her former association with a public office for the advantage of a
private client. It is a counterpart of Sec. 11.110(b), which applies
to practitioners moving from one firm to another.
A practitioner representing a Government agency or section within
the agency, whether employed or specially retained by the Government,
is subject to the Rules of Professional Conduct, including the
prohibition against representing adverse interests stated in Sec.
11.107 and the protections afforded former clients in Sec. 11.109. In
addition, such a practitioner is subject to this Sec. 11.111 and to
statutes and Government regulations concerning conflict of interest. In
the metropolitan Washington, DC area, where there are so many
practitioners for the Federal Government agencies, a number of whom are
leaving Government and accepting other employment, particular heed must
be paid to the Federal conflict-of-interest statutes. See, e.g., 18
U.S.C. Chapter 11 and regulations and opinions thereunder. In applying
Sec. 11.111, the Office would continue to follow the principles
announced in AH JU Steel Co., Ltd. v. Armco, Inc., 680 F.2d 751 (CCPA
1982); Sierra Vista Hospital, Inc., v. United States, 639 F.2d 749
(Ct.Cla.1981); Armstrong v. McAlpin, 625 F.2d 433 (2nd Cir. 1980) (en
banc) vacated, 449 U.S. 1106 (1981); General Electric Co. v. United
States, 215 Ct.Cl. 928 (1977); and Kesselhaut v. United States, 555
F.2d 791 (Ct.Cl. 1977).
Where the successive employment is a private client and a public
agency, the risk exists that power or discretion vested in public
authority might be used for the special benefit of a private client. A
practitioner should not be in a position where benefit to a private
client might affect performance of the lawyer's professional functions
on behalf of public authority. Thus, a registered practitioner should
not be in a position as a patent examiner to be influenced by any
loyalty to a former client. Also, unfair advantage could accrue to the
private client by reason of access to confidential Government
information about the client's adversary obtainable only through the
practitioner's Government service. However, the rules governing
practitioners presently or formerly employed by a Government agency
should not be so restrictive as to inhibit transfer of employment to
and from the Government. The Government has a legitimate need to
attract qualified practitioners as well as to maintain high ethical
standards. The provisions for screening and waiver are necessary to
prevent the disqualification rule from imposing too severe a deterrent
against entering public service.
When the client is an agency of one Government, that agency should
be treated as a private client for purposes of this section if the
practitioner thereafter represents an agency of another Government, as
when a lawyer
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represents a city and subsequently is employed by a Federal agency.
Paragraph (a) of Sec. 11.111, like current Sec. 10.111(b), flatly
forbids a practitioner to accept other employment in a matter in which
the practitioner participated personally and substantially as a public
officer or employee; participation specifically includes acting on a
matter in a judicial capacity. There is no provision for waiver of the
individual practitioner's disqualification. The USPTO has disciplined a
practitioner for accepting private employment in a matter in which he
had personal responsibility while a public employee. See Friedman v.
Lehman, 40 USPQ2d 1206 (D.D.C. 1996) (reprimanding attorney who, as an
examiner signed a restriction requirement in a patent application, and
in retirement gave expert testimony by deposition about the patent that
issued on a continuation application of application wherein he signed
the restriction requirement).
``Matter'' is defined in Sec. 11.1(w) so as to encompass only
matters that are particular to a specific party or parties. The making
of rules of general applicability and the establishment of general
policy will ordinarily not be a ``matter'' within the meaning of Sec.
11.111. When a practitioner is forbidden by paragraph (a) to accept
private employment in a matter, the partners and associates of that
practitioner are likewise forbidden, by paragraph (b), to accept the
employment unless the screening and disclosure procedures described in
paragraphs (c) through (f) are followed.
Section 11.111 forbids practitioners to accept other employment in
connection with matters that are the same as or ``substantially
related'' to matters in which they participated personally and
substantially while serving as public officers or employees. The
leading case defining ``substantially related'' matters in the context
of former Government employment is Brown v. District of Columbia Board
of Zoning Adjustment, 486 A.2d 37 (D.C. 1984) (en banc). There the D.C.
Court of Appeals, en banc, held that in the ``revolving door'' context,
a showing that a reasonable person could infer that, through
participation in one matter as a public officer or employee, the former
Government practitioner ``may have had access to information legally
relevant to, or otherwise useful in'' a subsequent representation, is
prima facie evidence that the two matters are substantially related. If
this prima facie showing is made, the former Government practitioner
must disprove any ethical impropriety by showing that the practitioner
``could not have gained access to information during the first
representation that might be useful in the later representation.'' Id.
at 49-50. In Brown, the Court of Appeals announced the ``substantially
related'' test after concluding that, under former DR 9-101(B), see
``Revolving Door,'' 445 A.2d 615 (D.C. 1982) (en banc) (per curiam),
the term ``matter'' was intended to embrace all matters ``substantially
related'' to one another--a test that originated in ``side-switching''
litigation between private parties. See Sec. 11.109; Brown, 486 A.2d
at 39-40 n.1, 41-42 & n.4. Accordingly, the words ``or substantially
related to'' in paragraph (a) are an express statement of the judicial
gloss in Brown interpreting ``matter.''
Paragraph (a)'s absolute disqualification of a practitioner from
matters in which the practitioner participated personally and
substantially carries forward a policy of avoiding both actual
impropriety and the appearance of impropriety that is expressed in the
Federal conflict-of-interest statutes and was expressed in the former
Code of Professional Responsibility.
Paragraph (c) requires the screening of a disqualified practitioner
from such a matter as a condition to allowing any practitioners in the
disqualified practitioner's firm to participate in it. This procedure
is permitted in order to avoid imposing a serious deterrent to
practitioners' entering public service. Governments have found that
they benefit from having in their service younger persons who do not
intend to devote their entire careers to public service, as well as
more experienced practitioners. Some practitioners might not enter into
short-term public service if they thought that, as a result of their
active governmental practice, a firm would hesitate to hire them
because of a concern that the entire firm would be disqualified from
matters as a result.
There is no imputed disqualification and consequently no screening
requirement in the case of a judicial law clerk. But such clerks are
subject to a personal obligation not to participate in matters falling
within paragraph (a) of Sec. 11.111, since participation by a law
clerk is within the term ``judicial or other adjudicative capacity.''
``Other employment,'' as used in paragraph (a) of Sec. 11.111,
would include the representation of a governmental body other than an
agency of the Government by which the practitioner was employed as a
public officer or employee. In the case of a move from one Government
agency to another, however, the prohibition provided in paragraph (a)
might be waived by the Government agency with which the practitioner
was previously employed. As used in paragraph (a), it would not be
``other employment'' for a practitioner who has left the employment of
a particular Government agency and taken employment with another
Government agency (e.g., the Department of Justice) or with a private
law firm to continue or accept representation of the same Government
agency with which the practitioner was previously employed.
Paragraph (c) of Sec. 11.111 would permit a practitioner to
receive a salary or partnership share established by prior independent
agreement, while prohibiting the attorney's compensation from being
directly related in any way to the fee in the matter in which the
practitioner is disqualified.
Section 11.112 would extend the basic requirements of Sec.
11.111(a) to privately employed arbitrators. Section 11.112(a) is
substantially similar to Sec. 11.111(a), except that it allows an
arbitrator to represent someone in connection with a matter with which
the practitioner was substantially involved while serving as an
arbitrator if the parties to the arbitration consent. Section 11.112(b)
makes it clear that the prohibition set forth in Sec. 11.112(a) does
not apply to partisan arbitrators serving on a multimember arbitration
panel.
Section 11.113 would address situations where the client is an
entity, as opposed to a person. An organizational client is a legal
entity, which cannot act except through its officers, directors,
employees, shareholders, and other constituents. The duties defined
herein apply equally to corporations and unincorporated associations.
``Other constituents'' as used herein means the positions equivalent to
officers, directors, employees, and shareholders held by persons acting
for organizational clients that are not corporations. Customers of an
organizational client are not constituents.
When one of the constituents of an organizational client
communicates with the organization's practitioner in that person's
organizational capacity, the communication is protected by Sec.
11.106. Thus, by way of example, if an organizational client requests
its attorney to investigate allegations of wrongdoing, interviews made
in the course of that investigation between the attorney and the
client's employees or other constituents are covered by Sec. 11.106.
This does not mean, however, that constituents of an organizational
client are the clients of the practitioner. The practitioner may not
disclose to such constituents information relating to the
representation except for
[[Page 69484]]
disclosures explicitly or impliedly authorized by the organizational
client in order to carry out the representation or as otherwise
permitted by Sec. 11.106.
When constituents of the organization make decisions for it, the
practitioner ordinarily must accept the decisions even if their utility
or prudence is doubtful. The organization's constituents make decisions
concerning policy and operations, including ones entailing serious
risk. However, different considerations arise when the practitioner
knows that the organization may be substantially injured by tortuous or
illegal conduct by a constituent member of an organization that
reasonably might be imputed to the organization or that might result in
substantial injury to the organization. In such a circumstance, it may
be reasonably necessary for the practitioner to ask the constituent to
reconsider the matter. If that fails, or if the matter is of sufficient
seriousness and importance to the organization, it may be reasonably
necessary for the practitioner to take steps to have the matter
reviewed by a higher authority in the organization. Clear justification
should exist for seeking review over the head of the constituent
normally responsible for it. The stated policy of the organization may
define circumstances and prescribe channels for such review, and a
practitioner should encourage the formulation of such a policy. Even in
the absence of organization policy, however, the practitioner may have
an obligation to refer a matter to a higher authority, depending on the
seriousness of the matter and whether the constituent in question has
apparent motives to act at variance with the organization's interest.
Review by the chief executive officer or by the board of directors may
be required when the matter is of importance commensurate with their
authority. At some point it may be useful or essential to obtain an
independent legal opinion.
In an extreme case, it may be reasonably necessary for the
practitioner to refer the matter to the organization's highest
authority. Ordinarily, that is the board of directors or similar
governing body. However, applicable law may prescribe that under
certain conditions highest authority reposes elsewhere; for example, in
the independent directors of a corporation.
Relation to Other Rules. Section 11.113 would not limit or expand
the practitioner's responsibility under Sec. Sec. 11.106, 11.108,
11.116, 11.303, and 11.401. If the practitioner's services are being
used by an organization to further a crime or fraud by the
organization, Sec. 11.102(d) can be applicable.
Government Agency. Because the Government agency that employs the
Government practitioner is the practitioner's client, the practitioner
represents the agency or section within the agency acting through its
duly authorized constituents. Any application of proposed Sec. 11.113
to Government practitioners must, however, take into account the
differences between Government agencies and other organizations. For
example, statutes and regulation may define duties of lawyers employed
by the Government or lawyers in military service. Therefore, defining
precisely the identity of the client and prescribing the resulting
obligations of such lawyers may be more difficult in the Government
context. Although in some circumstances the client may be a specific
agency, it is generally the Government as a whole. For example, if the
action or failure to act involves the head of a bureau, either the
department of which the bureau is a part or the Government as a whole
may be the client for the purpose of this Rule. Moreover, in a matter
involving the conduct of Government officials, a Government lawyer may
have authority to question such conduct more extensively than that of a
lawyer for a private organization in similar circumstances. This Rule
does not limit that authority.
Clarifying the Practitioner's Role. There are times when the
organization's interest may differ from those of one or more of its
constituents. This can occur, for example, where a constituent
believes, incorrectly, that a practitioner is representing the
constituent's interests, whereas the practitioner represents the
interests of the organization. In such circumstances the practitioner
should advise any constituent whose interest the practitioner finds
differs from that of the organization, of the conflict or potential
conflict of interest, that the practitioner's representation is limited
to the client cannot permit the practitioner to represent such
constituent, and that the constituent may wish to obtain independent
representation. Care must be taken to assure that the individual
understands that, when there is such divergent interest, the
practitioner for the organization cannot provide legal representation
for that constituent individual, and that discussions between the
practitioner for the organization and the individual may not be
privileged.
Whether the practitioner for the organization prudently should give
such a warning to any constituent individual will turn on the facts of
each case.
Dual Representation. Paragraph (c) of Sec. 11.113 recognizes that
a practitioner for an organization may also represent a principal
officer or major shareholder.
Derivative Actions. Under generally prevailing law, the
shareholders or members of a corporation may bring suit to compel the
directors to perform their legal obligations in the supervision of the
organization. Members of unincorporated associations have essentially
the same right. Such an action may be brought nominally by the
organization, but usually is, in fact, a legal controversy over
management of the organization.
The question can arise whether counsel for the organization may
defend such an action. The proposition that the organization is the
practitioner's client does not alone resolve the issue. Most derivative
actions are a normal incident of an organization's affairs, to be
defended by the organization's practitioner like any other suit.
However, if the claim involves serious charges of wrongdoing by those
in control of the organization, a conflict may arise between the
practitioner's duty to the organization and the practitioner's
relationship with the board. In those circumstances, Sec. 11.107
governs whether practitioners who normally serve as counsel to the
corporation can properly represent both the directors and the
organization.
Section 11.114 would introduce rules to address circumstances when
a client is under a disability. The normal client-practitioner
relationship is based on the assumption that the client, when properly
advised and assisted, is capable of making decisions about important
matters. When the client is a minor or suffers from a mental disorder
or disability, however, maintaining the ordinary client-practitioner
relationship may not be possible in all respects. In particular, an
incapacitated person may have no power to make legally binding
decisions. Nevertheless, a client lacking legal competence often has
the ability to understand, deliberate upon, and reach conclusions about
matters affecting the client's own well-being. Furthermore, to an
increasing extent the law recognizes intermediate degrees of
competence. For example, the Patent Statute draws no distinction based
on age as to entitlement to a patent. Also, children as young as five
or six years of age, and certainly those of ten or twelve, have been
regarded as having opinions that are entitled to weight in legal
proceedings concerning their custody. Conversely, it is recognized that
some persons of advanced age can be quite
[[Page 69485]]
capable of handling routine financial matters while needing special
legal protection concerning major transactions.
The fact that a client suffers a disability does not diminish the
practitioner's obligation to treat the client with attention and
respect. If the person has no guardian or legal representative, the
practitioner may need to act as de facto guardian. Even if the person
does have a legal representative, the practitioner should as far as
possible accord the represented person the status of client,
particularly in maintaining communication.
If a legal representative has already been appointed for the
client, the practitioner should ordinarily look to the representative
for decisions on behalf of the client. If a legal representative has
not been appointed, the practitioner should see to such an appointment
where it would serve the client's best interests. Thus, if a disabled
client has substantial property that should be sold for the client's
benefit, effective completion of the transaction ordinarily requires
appointment of a legal representative. In many circumstances, however,
appointment of a legal representative may be expensive or traumatic for
the client. Evaluation of these considerations is a matter of
professional judgment on the practitioner's part.
Disclosure of the Client's Condition. Rules of procedure in
litigation generally provide that a guardian or next friend shall
represent minors or persons suffering mental disability if they do not
have a general guardian. Practitioners occasionally file patent
applications for child inventors whose parents act as general
guardians. However, disclosure of a client's disability can adversely
affect the client's interests. For example, raising the question of
disability could, in some circumstances, lead to proceedings for
involuntary commitment. The practitioner's position in such cases is an
unavoidably difficult one. The practitioner may seek guidance from an
appropriate diagnostician.
Section 11.115 would continue the policies regarding the
safeguarding of a client's property. A practitioner should hold
property of others with the care required of a professional fiduciary.
Securities should be kept in a safe deposit box, except when some other
form of safekeeping is warranted by special circumstances. All property
that is the property of clients or third persons should be kept
separate from the practitioner's business and personal property and, if
monies, in one or more trust accounts. Separate trust accounts may be
warranted when administering estate monies or acting in similar
fiduciary capacities.
Paragraph (a) of Sec. 11.115 would be substantially the same as
current Sec. 10.112(a). Separation of the funds of a client from those
of the practitioner not only serves to protect the client but also
avoids even the appearance of impropriety, and therefore commingling of
such funds should be avoided.
Paragraph (b) of Sec. 11.115 would address situations wherein a
practitioner has an arrangement with an invention promoter to be paid
for legal services, and the promoter collects advanced legal fees from
a client. In these situations, the practitioner would be responsible
for safeguarding the funds advanced by inventor-clients to the
promoter. The practitioner's involvement might provide the arrangement
between the promoter and inventor-client with a genre of legitimacy and
security for the funds. Thus, the arrangement enables the promoter to
receive and have the funds for the practitioner's legal services. It
would be appropriate for the practitioner to be expected to safeguard
the client's funds advanced for the practitioner's legal services.
Thus, if the promoter kept the funds advanced by the client and ceases
doing business, the practitioner would be responsible for continuing to
provide the legal services, even if he or she did not safeguard the
advanced funds.
Some invention promoters eventually cease doing business. The
Federal Trade Commission acted to freeze the assets of two invention
promoters, and a District Court froze the assets. See Federal Trade
Commission v. American Inventors Corporation, 37 USPQ2d 1154, 1995 U.S.
Dist. LEXIS 18854 (D.Mass. 1995). The companies ceased doing business,
and unsuccessfully sought protection in bankruptcy. See Federal Trade
Commission v. American Institute for Research and Development, 219 B.R.
639, 1998 U.S. Dist. LEXIS 4391 (D.Mass. 1998) (dismissing involuntary
bankruptcy proceedings by company to avoid risk of abuse of bankruptcy
system and in support of the court's interest in vindicating its
remedial orders). The matter remains pending, and what the clients will
recover, if anything, is uncertain. Under Sec. 11.115(b), a
practitioner would be responsible for safeguarding the funds advanced
by the client. For example, a practitioner could arrange to have the
promoter return the funds to the client, who might then advance the
funds to the practitioner.
Paragraph (c) of Sec. 11.115 would be substantially the same as
current Sec. 10.112(b)(2). In a variety of circumstances,
practitioners receive funds from third parties from which the
practitioner's fee will be paid. If there is risk that the client may
divert the funds without paying the fee, the lawyer is not required to
remit the portion from which the fee is to be paid. A practitioner is
not required to remit the portion from which the fee is to be paid.
However, a practitioner may not hold funds to coerce a client into
accepting the practitioner's contention. The disputed portion of the
funds should be kept in trust and the practitioner should suggest means
for prompt resolution of the dispute, such as arbitration. The
undisputed portion of the funds shall be promptly distributed.
Third parties, such as a client's creditors, may have just claims
against funds or other property in a practitioner's custody. A
practitioner may have a duty under applicable law to protect such
third-party claims against wrongful interference by the client, and
accordingly may refuse to surrender the property to the client.
However, a practitioner should not unilaterally assume to arbitrate a
dispute between the client and the third party.
The obligations of a practitioner under this section are
independent of those arising from activity other than rendering legal
services. For example, the applicable law relating to fiduciaries
governs a practitioner who serves as an escrow agent even though the
practitioner does not render legal services in the transaction.
Paragraph (d) of Sec. 11.115 would be substantially identical to
current Sec. 10.112(c).
Paragraph (e) of Sec. 11.115 would require funds, securities or
other properties held by a practitioner as a fiduciary to be maintained
in separate fiduciary accounts, and the practitioner would not be
permitted to commingle the assets of such fiduciary accounts except as
provided by state bar ethics rules.
Paragraph (f) of Sec. 11.115 would require a practitioner to
maintain books and records that establish compliance with paragraphs
(a) and (d) of Sec. 11.115 for a period of five years after
termination of the representation. A member of the bar in the District
of Columbia is required to maintain records for a five-year period.
Further, the five-year period is consistent with the statute of
limitation period within which formal action must be taken to
discipline a practitioner. See Johnson v. SEC, 87 F.3d, 484 (D.C.Cir.
1996); 3M Company v. Browner, 17 F.3d 1453 (D.C.Cir. 1994).
[[Page 69486]]
Paragraph (g) of Sec. 11.115 would require a minimum accounting
procedure that would be applicable to all escrow accounts subject to
Sec. Sec. 11.115(a) and (d).
The records Sec. Sec. 11.115(f) and (g) would require a
practitioner to keep are the same records the practitioner must
currently maintain to comply with 37 CFR 10.112(c)(3). Section
10.112(c)(3) requires a practitioner to ``maintain complete records of
all funds, securities and other properties of a client coming into the
possession of the practitioner.'' Section 10.112(c)(3) is substantially
the same as DR 9-102(b)(3) of the Code of Professional Responsibility
of the American Bar Association, which was adopted by numerous states.
It has been long recognized that compliance with the Code's rule
requires maintenance of, inter alia, a cash receipts journal, a cash
disbursements journal, and a subsidiary ledger, as well as period trial
balances, and insufficient fund check reporting. See Wright v. Virginia
State Bar, 357 S.E.2d 518, 519 (Va. 1987); In re Librizzi, 569 A.2d
257, 258-259 (N.J. 1990); In re Heffernan, 351 N.W.2d 13, 14 (Minn.
1984); In re Austin, 333 N.W.2d 633, 634 (Minn. 1983); and In re
Kennedy, 442 A.2d 79, 84-85 (Del. 1982). Thus, Sec. Sec. 11.115(f) and
(g) articulate recordkeeping requirements that currently obtain for all
practitioners.
With respect to property that constitutes evidence, such as the
instruments or proceeds of crime, see Sec. 11.304(a).
Paragraph (h) of Sec. 11.115 would provide for accepting, as
complying with Sec. Sec. 11.115(f) and (g), financial records
maintained by an attorney that comply with his or her state bar's
financial recordkeeping requirements if the attorney is a member in
good standing of the bar of the highest court of that state, and the
attorney's principal place of business is in that state. For patent
agents employed by a law firm, substantial compliance with the USPTO
recordkeeping requirements will be met if the law firm in a state
employing the agent complies with the financial recordkeeping
requirements of that state. Attorneys and patent agents outside United
States, all attorneys not maintaining a financial account records in
compliance with his or her state bar's recordkeeping requirements, and
all other patent agents must comply with USPTO recordkeeping
requirements detailed in Sec. 11.115. The USPTO presumes that patent
agents employed by law firms do not have control over how records are
to be maintained and may not have a choice of what guidelines with
which they must comply. Patent agents who are hired as contractors, on
the other hand, and self-employed patent agents are presumed to have
control and, thus, must comply with the provisions of Sec. Sec.
11.115(f) and (g).
Section 11.116 would continue the current practice regarding
withdrawal. A practitioner should not accept representation in a matter
unless it can be performed competently, promptly, without improper
conflict of interest, and to completion.
Paragraph (a) of Sec. 11.116 would address mandatory withdrawal. A
practitioner ordinarily must decline or withdraw from representation if
the client demands that the practitioner engage in conduct that is
illegal or violates the Rules of Professional Conduct or other law. The
practitioner is not obliged to decline or withdraw simply because the
client suggests such a course of conduct; a client may make such a
suggestion in the hope that a practitioner will not be constrained by a
professional obligation.
Difficulty may be encountered if withdrawal is based on the
client's demand that the practitioner engage in unprofessional conduct,
or failure to pay agreed-upon fees. The Office or court may wish an
explanation for the withdrawal, while the practitioner may be bound to
keep confidential the facts that would constitute such an explanation.
The practitioner's statement that irreconcilable differences between
the practitioner and client require termination of the representation
ordinarily should be accepted as sufficient.
Paragraph (a) of Sec. 11.116 would also address discharge of a
practitioner. A client has a right to discharge a practitioner at any
time, with or without cause, subject to liability for payment for the
practitioner's services. Where future dispute about the withdrawal may
be anticipated, it may be advisable to prepare a written statement
reciting the circumstances. Whether an inventor, who is employed by a
company and has signed a power of attorney to a practitioner retained
by the company, can discharge the practitioner may depend on the facts
and applicable law. In the absence of evidence that the company is the
assignee of record of the entire interest, and that as assignee, the
company has given a power of attorney to the practitioner, the inventor
at least technically may revoke the power of attorney. Upon recording
an assignment of the entire interest, the company may elect to revoke
all previous powers of attorney and appoint the practitioner. 37 CFR
1.36. If an employee-inventor refuses to execute an assignment, and
there is an agreement between the employee and employer for assignment
of patent rights, the employer may be entitled under state law to
specific performance of the agreement. See In re RCA Corporation, 209
USPQ 1114 (Comm'r Pat. 1981).
If a client is mentally incompetent, the client may lack the legal
capacity to discharge the practitioner. The practitioner should make a
special effort to help the client consider the consequences and, in an
extreme case, may initiate proceedings for a conservatorship or similar
protection of the client. See Sec. 11.114.
Paragraph (b) of Sec. 11.116 would address optional withdrawal. A
practitioner may withdraw from representation in some circumstances.
The practitioner has the option to withdraw if the withdrawal can be
accomplished without material adverse effect on the client's interests.
Withdrawal is also justified if the client persists in a course of
action that the practitioner reasonably believes is criminal or
fraudulent, for a practitioner is not required to be associated with
such conduct even if the practitioner does not further it. See Sec.
11.102(d) and (e). Withdrawal is also permitted if the practitioner's
services were misused in the past even if that would materially
prejudice the client.
A practitioner may withdraw if the client refuses to abide by the
terms of an agreement relating to the representation, such as an
agreement concerning the timely payment of the practitioner's fees,
court costs or other out-of-pocket expenses of the representation, or
an agreement limiting the objectives of the representation.
If the matter is not pending in court or before the Office, a
practitioner will not have ``other good cause for withdrawal'' unless
the practitioner is acting in good faith and the circumstances are
exceptional enough to outweigh the material adverse effect on the
interests of the client that withdrawal will cause.
Paragraph (b) of Sec. 11.116 would address assisting the client
upon withdrawal. Even if the client has unfairly discharged the
practitioner, a practitioner would be required to take all reasonable
steps to mitigate the consequences to the client. The practitioner may
retain papers as security for a fee only to the extent permitted by
Sec. 11.108(i).
Paragraph (c) of Sec. 11.116 would address compliance with
requirements of a tribunal, e.g., the Office. This paragraph would
reflect that a practitioner may, by appearing before a tribunal, become
subject to the
[[Page 69487]]
tribunal's power in some circumstances to prevent a withdrawal that
would otherwise be proper. Section 11.116(c) would require the
practitioner who is ordered to continue a representation before a
tribunal to do so. However, Sec. 11.116(c) is not intended to prevent
the practitioner from challenging the tribunal's order as beyond its
jurisdiction, arbitrary, or otherwise improper while, in the interim,
continuing the representation.
Paragraph (d) of Sec. 11.116 would address return of a client's
property or money. This paragraph would require a practitioner to make
timely return to the client of any property or money ``to which the
client is entitled.'' Where a practitioner holds property or money of a
client at the termination of a representation and there is a dispute
concerning the distribution of such property or money--whether such
dispute is between the practitioner and a client, the practitioner and
another practitioner who is owed a fee in the matter, or between either
the practitioner or the client and a third party--the practitioner
would have to segregate the disputed portion of such property or money,
hold that property or money in trust as required by Sec. 11.115, and
promptly distribute any undisputed property and amounts. See Sec.
11.115(c).
Notwithstanding the foregoing, where a practitioner has a valid
lien covering undisputed amounts of property or money, the practitioner
might continue to hold such property or money to the extent permitted
by the substantive law governing the lien asserted. See generally
Sec. Sec. 11.108, and 11.115(c).
The ethical mandate ``to protect a client's interests'' is
recognized as displacing the common law retaining lien. See Formal
Opinion 1690, Legal Ethics Committee of the Virginia State Bar (1997).
Therefore, the proposed rule would provide an exception regarding
retention of any part of a client's patent and trademark application
files that had been filed with the Office. For example, this would
include application itself, as well as any amendment, or reply filed in
the Office. Documents filed in the Office are not within the attorney
work product exception. Once the documents are filed with the Office,
they no longer constitute work product. See Formal Opinion 250, Legal
Ethics Committee of the District of Columbia (1994) (Files containing
copies of applications filed with the FCC and amendments and
correspondence relating to those applications, also filed with the FCC,
are not within the work product exception). Also excepted from
retention is any patent or trademark application prosecution work
product for which a practitioner has been paid. Further excepted is any
prosecution-related paper whenever assertion of a retaining lien on the
paper would prejudice or imperil the protection of the client's
interests. See Formal Opinion 1690, Legal Ethics Committee of the
Virginia State Bar (1997).
It is recognized that more is required to establish material
prejudice with regard to attorney work product than to client-provided
papers. In situations wherein a client is represented by a new
practitioner, material prejudice does not occur simply because a new
practitioner must create work product, such as research, drafting, and
memoranda, that are contained in the original practitioner's file.
Creating work product may be inconvenient and an expense to the client,
but it does not rise to the level of material prejudice to a client's
interest in subsequent representation. Accord, Formal Opinion 1690,
Legal Ethics Committee of the Virginia State Bar (1997).
Section 11.117 would introduce rules regarding the sale of a
practice before the Office involving patent matters. The practice of
law is a profession, not merely a business. Clients are not commodities
that can be purchased and sold at will. Pursuant to Sec. 11.117, when
a registered practitioner ceases to practice and another registered
practitioner or firm of registered practitioners takes over the
representation, the selling practitioner could obtain compensation for
the reasonable value of the practice, as could withdrawing partners of
law firms. See Sec. Sec. 11.504 and 11.506.
Termination of practice by the seller. The requirement of Sec.
11.117(b) that all of the private practice be sold would be satisfied
if the seller in good faith makes the entire practice available for
sale to the purchaser. The fact that a number of the seller's clients
decide not to be represented by the purchaser but take their matters
elsewhere, therefore, does not result in a violation. Neither does a
return to private practice as a result of an unanticipated change in
circumstances result in a violation. For example, a registered
practitioner who has sold the practice to accept an appointment to
judicial office would not violate the requirement that the sale be
attendant to cessation of practice if the practitioner later resumes
private practice upon being defeated in a contested or a retention
election for the office.
The requirement that the seller cease to engage in the private
practice of law, including practice before the Office in patent
matters, does not prohibit employment of a registered patent attorney
as a lawyer on the staff of a public agency or a legal services entity
which provides legal services to the poor, or as in-house counsel to a
business.
Section 11.117 would permit a sale attendant upon retirement from
the private practice of law within the jurisdiction. Its provisions,
therefore, would accommodate the registered practitioner who sells the
practice upon the occasion of moving to another state. Some states are
so large that a move from one locale therein to another is tantamount
to leaving the jurisdiction in which the practitioner has engaged in
the practice of law. To also accommodate registered practitioners so
situated, the sale of the practice would be permitted when the
registered practitioner leaves the geographic area rather than the
entire state.
Single purchaser. Section 11.117 would require a single purchaser.
A prohibition against piecemeal sale of a practice protects those
clients whose matters are less lucrative and who might find it
difficult to secure other counsel if a sale could be limited to
substantial fee-generating matters. Inasmuch as the practice being sold
involves patent applications pending before the Office, the purchaser
would be required to be practitioner(s) which include registered
practitioners willing to undertake all client pending patent matters in
the practice, subject to client consent. If, however, the purchaser is
unable to undertake all client matters because of a conflict of
interest in a specific matter respecting which the purchaser is not
permitted by Sec. 11.107 or another rule to represent the client, the
requirement that there be a single purchaser would be nevertheless
satisfied.
Client confidences, consent, and notice. Negotiations between
seller and prospective purchaser prior to disclosure of information
relating to a specific representation of an identifiable client would
no more violate the confidentiality provisions of proposed Sec. 11.106
than do preliminary discussions concerning the possible association of
another practitioner or mergers between firms, with respect to which
client consent is not required. Providing the purchaser access to
client-specific information relating to the representation and to the
file, however, requires client consent. Section 11.117 would provide
that before such information can be disclosed by the seller to the
purchaser, the client must be given actual written notice of the
contemplated sale, including the identity of the purchaser and any
proposed change in the terms of future
[[Page 69488]]
representation, and must be told that the decision to consent or make
other arrangements must be made within 90 days. If nothing is heard
from the client within that time, consent to the sale is presumed.
A registered practitioner ceasing to practice cannot be required to
remain in practice because some clients cannot be given actual notice
of the proposed purchase. Since these clients cannot themselves consent
to the purchase or direct any other disposition of their files, Sec.
11.117 would permit an order from a court having jurisdiction
authorizing their transfer or other disposition. The court can be
expected to determine whether reasonable efforts to locate the client
have been exhausted, and whether the absent client's legitimate
interests will be served by authorizing the transfer of the file so
that the purchaser may continue the representation. Preservation of
client confidences requires that the petition for a court order be
considered in camera.
All the elements of client autonomy, including the client's
absolute right to discharge a practitioner and transfer the
representation to another, survive the sale of the practice.
Fee arrangements between client and purchaser. A sale of a practice
could not be financed by increases in fees charged the clients of the
practice. The purchaser must honor existing agreements between the
seller and the client as to fees and the scope of the work, unless the
client consents after full disclosure. The purchaser would, however,
advise the client that the purchaser will not undertake the
representation unless the client consents to pay the higher fees the
purchaser usually charges. To prevent client financing of the sale, the
higher fee the purchaser may charge would not exceed the fees charged
by the purchaser for substantially similar service rendered prior to
the initiation of the purchase negotiations.
The purchaser could not intentionally fragment a practice that is
the subject of the sale by charging significantly different fees in
substantially similar matters. Doing so would make it possible for the
purchaser to avoid the obligation to take over the entire practice by
charging arbitrarily higher fees for less lucrative matters, thereby
increasing the likelihood that those clients would not consent to the
new representation.
Registered practitioners participating in the sale of a law
practice are subject to the ethical standards applicable to involving
another practitioner in the representation of a client. These include,
for example, the seller's obligation to exercise competence in
identifying a purchaser qualified to assume the practice and the
purchaser's obligation to undertake the representation competently (see
Sec. 11.101); the obligation to avoid disqualifying conflicts, and to
secure client consent after consultation for those conflicts which can
be agreed to (see Sec. 11.107); and the obligation to protect
information relating to the representation (see Sec. Sec. 11.106 and
11.109).
Applicability of Sec. 11.117. Section 11.117 applies to the sale
of a law practice by representatives of a deceased, disabled or
disappeared registered practitioner. Thus, the seller may be
represented by a non-lawyer representative not subject to these Rules.
Since, however, no registered practitioner may participate in a sale of
a law practice, which does not conform to the requirements of this
Rule, the representatives of the seller as well as the purchasing
practitioner can be expected to see to it that they are met.
Admission to or retirement from a law partnership or professional
association, retirement plans and similar arrangements, and a sale of
tangible assets of a law practice, would not constitute a sale or
purchase governed by proposed Sec. 11.117. Section 11.117 also would
not apply to the transfers of legal representation between registered
practitioners when such transfers are unrelated to the sale of a
practice.
Section 11.201 would introduce a rule addressing the practitioner's
role in providing advice to a client.
Section 11.201--Scope of Advice. A client is entitled to
straightforward advice expressing the practitioner's honest assessment.
Legal advice often involves unpleasant facts and alternatives that a
client may be disinclined to confront. In presenting advice, a
practitioner endeavors to sustain the client's morale and may put
advice in as acceptable a form as honesty permits. However, a
registered practitioner should not be deterred from giving candid
advice, including advice as to patentability or unpatentability, by the
prospect that the advice will be unpalatable to the client.
Advice couched in narrow legal terms may be of little value to a
client, especially where practical considerations, such as cost or
effects on other people, are predominant. Purely technical legal
advice, therefore, can sometimes be inadequate. It is proper for a
practitioner to refer to relevant moral and ethical considerations in
giving advice. Although a practitioner is not a moral advisor per se,
moral and ethical considerations impinge upon most legal questions and
may decisively influence how the law will be applied.
A client may expressly or impliedly ask the practitioner for purely
technical advice. When such a request is made by a client experienced
in legal matters, the practitioner may accept it at face value. When
such a request is made by a client inexperienced in legal matters,
however, the practitioner's responsibility as advisor may include
indicating that more may be involved than strictly legal
considerations.
Matters that go beyond strictly legal questions may also be in the
domain of another profession. Family matters can involve problems
within the professional competence of psychiatry, clinical psychology,
or social work; business matters can involve problems within the
competence of the accounting profession or of financial specialists.
Where consultation with a professional in another field is itself
something a competent practitioner would recommend, the practitioner
should make such a recommendation. At the same time, a practitioner's
advice at its best often consists of recommending a course of action in
the face of conflicting recommendations of experts.
Paragraph (a) of Sec. 11.201--Offering Advice. Under paragraph (a)
of Sec. 11.201, in general, a practitioner would not be expected to
give advice until asked by the client. However, when a practitioner
knows that a client proposes a course of action that is likely to
result in substantial adverse legal consequences to the client, duty to
the client under Sec. 11.104 could require that the practitioner act
as if the client's course of action is related to the representation. A
practitioner ordinarily has no duty to initiate investigation of a
client's affairs or to give advice that the client has indicated is
unwanted, but a practitioner might initiate advice to a client when
doing so appears to be in the client's interest.
Paragraph (b) of Sec. 11.201 would address a practitioner
providing patentability opinions to clients referred by an invention
promoter.
Section 11.202 would provide rules for a practitioner acting as
intermediary between clients. A practitioner acts as intermediary when
the practitioner represents two or more parties with potentially
conflicting interests. For instance, representation of a client
referred by an invention promoter may result in the practitioner having
two clients, the inventor and invention promoter. A key factor in
defining the relationship is whether the parties share responsibility
for the practitioner's fee,
[[Page 69489]]
but the common representation may be inferred from other circumstances.
Because confusion can arise as to the practitioner's role where each
party is not separately represented, it is important that the
practitioner make clear the relationship. In addition, the existence of
a document purporting to establish an agency relationship between the
inventor and invention promoter would not vitiate the possibility that
the practitioner might have two clients.
Because the potential for confusion is so great, Sec. 11.202(c)
would impose the requirement that an explanation of the risks of the
common representation be furnished, in writing. The process of
preparing the writing would cause the practitioner involved to focus
specifically on those risks, a process that might suggest to the
practitioner that the particular situation is not suited to the use of
the practitioner as an intermediary. In any event, a written
explanation would perform a valuable role in educating the client to
such risks as may exist--risks that many clients may not otherwise
comprehend. A client might not agree to waive the requirement for a
written analysis of the risks. The ``unusual circumstances''
requirement might be met in rare situations where an assessment of
risks is not feasible at the beginning of the intermediary role. In
such circumstances, the writing would have to be provided as soon as it
becomes feasible to assess the risks with reasonable clarity. The
consent required by Sec. 11.202(c) would have to be in writing, and
would refer to the disclosure upon which it is based.
Section 11.202 would not apply to a practitioner acting as
arbitrator or mediator between or among parties who are not clients of
that practitioner, even where the practitioner has been appointed with
the concurrence of the parties. In performing such a role, the
practitioner may be subject to applicable codes of ethics, such as the
Code of Ethics for Arbitration in Commercial Disputes prepared by the
Joint Committee of the American Bar Association and the American
Arbitration Association.
A practitioner acts as intermediary in seeking to establish or
adjust a relationship between clients on an amicable and mutually
advantageous basis; for example, in helping to organize a business in
which two or more clients are entrepreneurs, working out the financial
reorganization of an enterprise in which two or more clients have an
interest, arranging a property distribution in settlement of an estate,
or mediating a dispute between clients. The practitioner seeks to
resolve potentially conflicting interests by developing the parties'
mutual interests. The alternative can be that each party may have to
obtain separate representation, with the possibility in some situations
of incurring additional cost, complication, or even litigation. Given
these and other relevant factors, all the clients may prefer that the
practitioner act as intermediary.
In considering whether to act as intermediary between clients, a
practitioner should be mindful that if the intermediation fails, the
result can be additional cost, embarrassment, and recrimination. In
some situations the risk of failure is so great that intermediation is
plainly impossible. For example, a practitioner cannot undertake common
representation of clients between whom contentious litigation is
imminent or who contemplate contentious negotiations. More generally,
if the relationship between the parties has already assumed definite
antagonism, the possibility that the clients' interests can be adjusted
by intermediation ordinarily is not very good.
The appropriateness of intermediation can depend on its form. Forms
of intermediation range from informal arbitration where each client's
case is presented by the respective client and the practitioner decides
the outcome, to mediation, to common representation where the clients'
interests are substantially though not entirely compatible. One form
may be appropriate in circumstances where another would not. Other
relevant factors include whether the practitioner subsequently will
represent both parties on a continuing basis and whether the situation
involves creating a relationship between the parties or terminating
one.
Because the practitioner is required to be impartial between
commonly represented clients, intermediation would be improper when
that impartiality cannot be maintained. For example, a practitioner who
has represented one of the clients for a long period of time and in a
variety of matters could have difficulty being impartial between that
client and one to whom the practitioner has only recently been
introduced. Another example would be a practitioner who represents a
client, such as an invention promoter, that refers a number of its
clients to the practitioner to prepare and prosecute patent
applications for the clients, and the practitioner could have
difficulty being impartial between the referring invention promoter and
the referred clients.
Section 11.202 and Confidentiality and Privilege. A particularly
important factor in determining the appropriateness of intermediation
would be the effect on client-practitioner confidentiality and the
attorney-client or patent agent-client privilege. In a common
representation, the practitioner would still be required both to keep
each client adequately informed and to maintain confidentiality of
information relating to each of the representations. See Sec. Sec.
11.104 and 11.106. Complying with both requirements while acting as
intermediary requires a delicate balance. If the balance cannot be
maintained, the common representation would be improper. With regard to
the attorney-client or patent agent-client privilege, the prevailing
rule is that as between commonly represented clients the privilege does
not attach. Hence, it must be assumed that if litigation eventuates
between the clients, the privilege will not protect any such
communications, and the clients should be so advised.
For example, a practitioner, hired by A and B to prepare a patent
application for A's invention, acts as an intermediary under Sec.
11.202 when, upon instructions from A and B, the practitioner prepares
an assignment transferring a one-half undivided interest in A's
invention and any resulting patent to A and B, even if only B is to pay
the legal fees. If A and B later dispute the validity of the assignment
and each retains counsel of their own choice, the practitioner may
communicate the information regarding the terms of the assignment to
both counsel. The attorney-client or patent agent-client privilege does
not attach. The practitioner may submit his legal bills to B for past
services in accordance with the retainer agreement. See Opinion 93-76
(1993) of the Ethics Advisory Panel of the Rhode Island Supreme Court.
Section 11.202 and Full Disclosure. In acting as intermediary
between clients, the practitioner would be required to make full
disclosure to the clients on the implications of doing so, and proceed
only upon consent based on such full disclosure. The practitioner would
have to make clear that the practitioner's role is not that of
partisanship normally expected in other circumstances.
Paragraph (d) of Sec. 11.202 would apply the principle expressed
in Sec. 11.104. Where the practitioner is intermediary, the clients
ordinarily would have to assume greater responsibility for decisions
than when each client is independently represented.
[[Page 69490]]
Section 11.202 and Withdrawal. Common representation does not
diminish the rights of each client in the client-practitioner
relationship. Each has the right to loyal and diligent representation,
the right to discharge the practitioner as stated in Sec. 11.116, and
the protection of Sec. 11.109 concerning obligations to a former
client.
Section 11.203 would articulate ethical standards for circumstances
where a practitioner provides an evaluation of a matter affecting a
client for the use of someone other than the client. An evaluation may
be performed at the client's direction but for the primary purpose of
establishing information for the benefit of third parties; for example,
an opinion concerning the title of property rendered at the behest of a
vendor for the information of a prospective purchaser, or at the behest
of a borrower for the information of a prospective lender. Section
11.203 would not authorize conduct that otherwise would constitute
aiding the unauthorized practice of law. Thus, providing a nonlawyer,
who offers legal services to potential customers, with legal advice to
pass on to the nonlawyer's customer(s) would continue to be viewed as
aiding the unauthorized practice of law. See Formal Opinion 87, Ethics
Committee of the Colorado Bar Association (1991).
A legal evaluation should be distinguished from an investigation of
a person with whom the practitioner does not have a client-practitioner
relationship. For example, a practitioner retained by a purchaser to
analyze a vendor's title to property does not have a client-
practitioner relationship with the vendor. Likewise, an investigation
into a person's affairs by a Government practitioner, or by special
counsel employed by the Government, is not an evaluation as that term
is used in this section. The question is whether the practitioner is
retained by the person whose affairs are being examined. When the
practitioner is retained by that person, the general Rule of
Professional Conduct concerning loyalty to client and preservation of
confidences would apply, which is not the case if the practitioner is
retained by someone else. For this reason, it is essential to identify
the person by whom the practitioner is retained. This should be made
clear not only to the person under examination, but also to others to
whom the results are to be made available.
Section 11.203 and Duty to Third Person. When the evaluation is
intended for the information or use of a third person, a legal duty to
that person may or may not arise. That legal question is beyond the
scope of Sec. 11.203. However, because such an evaluation involves a
departure from the normal client-practitioner relationship, careful
analysis of the situation is required. The practitioner must be
satisfied as a matter of professional judgment that making the
evaluation is compatible with other functions undertaken in behalf of
the client. For example, if the practitioner is acting as advocate in
defending the client against charges of fraud, it would normally be
incompatible with that responsibility for the practitioner to perform
an evaluation for others concerning the same or a related transaction.
Assuming no such impediment is apparent, however, the practitioner
should advise the client of the implications of the evaluation,
particularly the practitioner's responsibilities to third persons and
the duty to disseminate the findings.
Section 11.203 and Access to and Disclosure of Information. The
quality of an evaluation depends on the freedom and extent of the
investigation upon which it is based. Ordinarily a practitioner should
have whatever latitude of investigation seems necessary as a matter of
professional judgment. Under some circumstances, however, the terms of
the evaluation may be limited. For example, certain issues or sources
may be categorically excluded, or the scope of search may be limited by
time constraints or the non-cooperation of persons having relevant
information. Any such limitations that are material to the evaluation
should be described in a report giving the results of the
investigation. If, after a practitioner has commenced an evaluation,
the client refuses to comply with the terms upon which it was
understood the evaluation was to have been made, the practitioner's
obligations are determined by law, having reference to the terms of the
client's agreement and the surrounding circumstances.
Section 11.203 and Financial Auditors' Requests for Information.
When a question concerning the legal situation of a client arises at
the instance of the client's financial auditor and the question is
referred to the practitioner, the practitioner's response prudently
might be made in accordance with procedures recognized in the legal
profession. Such a procedure is set forth in the American Bar
Association Statement of Policy Regarding Practitioners' Responses to
Auditors' Requests for Information, adopted in 1975.
Section 11.301 would continue the requirement that a practitioner
present well-grounded claims. The advocate has a duty to use legal
procedure for the fullest benefit of the client's cause, but also a
duty not to abuse legal procedure. The law, both procedurally and
substantively, establishes the limits within which an advocate may
proceed. However, the law is not always clear and never is static.
Accordingly, in determining the proper scope of advocacy, account must
be taken of the law's ambiguities and potential for change.
The filing of an action or defense or similar action taken for a
client is not frivolous merely because the facts have not first been
fully substantiated or because the practitioner expects to develop
vital evidence only by discovery. Such action is not frivolous even
though the practitioner believes that the client's position ultimately
will not prevail. The action is frivolous if the practitioner is unable
either to make a good-faith argument on the merits of the action taken
or to support the action taken by a good-faith argument for an
extension, modification, or reversal of existing law.
Section 11.302 would continue the requirement that practitioners
diligently pursue litigation and Office proceedings. Dilatory practices
bring the administration of justice into disrepute and may be contrary
to the client's interest in patent prosecution. Delay should not be
indulged merely for the convenience of the advocates, or for the
purpose of frustrating an opposing party's attempt to obtain rightful
redress or repose. It is not a justification that similar conduct is
often tolerated by the bench and bar. The question is whether a
competent practitioner acting in good faith would regard the course of
action as having some substantial purpose other than delay. Realizing
financial or other benefit from otherwise improper delay in litigation
is not a legitimate interest of the client.
Section 11.303 would continue the duty of candor to a tribunal
while specifying its application under different situations. Section
11.303 would define the duty of candor to the tribunal. In dealing with
a tribunal, including the Office, the practitioner is also required to
comply with the general requirements of Sec. 11.102 (e) and (f). The
advocate's responsibility is to endeavor to present the client's case
with persuasive force. Performance of that duty, while maintaining
confidences of the client, is qualified by the advocate's duty of
candor to the tribunal. See Lipman v. Dickinson, 174 F.3d 1363, 50
USPQ2d 1490 (Fed. Cir. 1999).
While an advocate normally does not vouch for the evidence
submitted in a cause--the tribunal is responsible for assessing its
probative value--the same may not apply in practice before the
[[Continued on page 69491]]
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[[pp. 69491-69540]] Changes to Representation of Others Before the United States
Patent and Trademark Office
[[Continued from page 69490]]
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Office. See Kingsland v. Dorsey, 338 U.S. 318 (1949) (sustaining
attorney's exclusion where attorney authored the article that attorney
introduced into evidence as an article written by another).
Paragraph (a) of Sec. 11.303, like current Sec. 10.89(b)(1),
would require that a practitioner reveal to the Office known authority
directly adverse to the position of the client unless the authority is
cited by an opponent or employee of the Office. All decisions made by
the Office in patent and trademark matters affect the public interest.
See Lear v. Adkins, 395 U.S. 653 (1969). Many of the decisions made by
the Office are made ex parte. Accordingly, practitioners must cite to
the Office known authority that is contrary, i.e., directly adverse, to
the position being taken by the practitioner in good faith. The
practitioner could argue that the cited authority should not be
followed, or should be overruled or modified.
Section 11.303 and Representations by a Practitioner. An advocate
is responsible for pleadings and other documents prepared for
litigation or prosecution of patent and trademark applications.
However, an advocate is usually not required to have personal knowledge
of factual matters that are based on information furnished by a client
asserted therein, because litigation or prosecution documents
ordinarily present assertions by the client, or by someone on the
client's behalf, and not assertions by the practitioner. Compare Sec.
11.301. However, an assertion purporting to be based on the
practitioner's own knowledge, such as an assertion made by the
practitioner in an affidavit, petition, or reply to an Office action,
like a statement in open court, may properly be made only when the
practitioner knows the assertion is true or believes it to be true on
the basis of a reasonably diligent inquiry. The Office has disciplined
practitioners for making false statements of fact in an affidavit or
declaration. See In re Dubno, 1959 Off. Gaz. 25 (June 21, 1977). There
may be circumstances where failure to make a disclosure is the
equivalent of an affirmative misrepresentation. See Lipman v.
Dickinson, 174 F.3d 1363, 50 USPQ2d 1490 (Fed. Cir. 1999). The
obligation prescribed in Sec. 11.102(e) not to counsel a client to
commit or assist the client in committing a fraud applies in litigation
and proceedings before the Office, but would be subject to Sec. Sec.
11.303(a)(4), (b) and (d). Regarding compliance with Sec. 11.102(e),
see the comment to that proposed section. See also the comment to
proposed Sec. 11.804(b).
Section 11.303 and Misleading Legal Argument. Legal argument based
on a knowingly false representation of law constitutes dishonesty
toward the tribunal. A practitioner is not required to make a
disinterested exposition of the law, but must recognize the existence
of pertinent legal authorities. Furthermore, as stated in Sec.
11.303(a)(3), an advocate has a duty to disclose directly adverse
authority in the controlling jurisdiction that has not been disclosed
by the opposing party and that is dispositive of a question at issue.
The underlying concept is that a legal argument is a discussion seeking
to determine the legal premises properly applicable to the case.
Section 11.303 and False Evidence. When evidence that a
practitioner knows to be false is provided by a person who is not the
client, the practitioner must refuse to offer it regardless of the
client's wishes.
When false evidence is offered by the client, however, a conflict
may arise between the practitioner's duty to keep the client's
disclosure confidential and the duty of candor to the tribunal. Upon
ascertaining that material evidence is false, the practitioner should
seek to persuade the client that the evidence should not be offered. If
the material evidence has already been offered before the practitioner
learns that it is false, its false character should immediately be
disclosed to the tribunal. If the persuasion is ineffective, the
practitioner must take reasonable remedial measures. In patent matters
pending before the Office, if a practitioner comes to realize that
evidence material to patentability offered before the Office in a
patent case is false, the practitioner has a duty to disclose
information regarding the falsity with respect to each pending claim
until the claim is cancelled or withdrawn from consideration, or the
application becomes abandoned. This is consistent with current Sec.
1.56.
Except in the defense of a criminally accused, the rule generally
recognized is that, if necessary to rectify the situation, an advocate
must disclose the existence of the client's deception to the tribunal,
Office, and/or to the other party. Such a disclosure can result in
grave consequences to the client, including not only a sense of
betrayal but also loss of the case and perhaps a prosecution for
perjury. But the alternative is that the practitioner, contrary to
current Sec. 1.56 or proposed Sec. Sec. 11.303 and 11.804(c),
cooperate in deceiving the tribunal or Office, thereby subverting the
truth-finding process, which the adversary system is designed to
implement. See Sec. 11.102(d). Furthermore, unless it is clearly
understood that the practitioner will act upon the duty to disclose the
existence of false evidence, the client can simply reject the
practitioner's advice to reveal the false evidence and insist that the
practitioner keep silent. Thus the client could in effect coerce the
practitioner into being a party to fraud on the tribunal or Office.
Paragraph (d) of Sec. 11.303 would provide that if a practitioner
learns that a fraud or inequitable conduct has been perpetrated on the
Office, the practitioner must reveal the same to the Office. Where
notification would require disclosure to the Office of information not
protected under Sec. Sec. 1.56, or 11.106(a), the practitioner has a
duty of disclosure to prevent the occurrence or furtherance of the
fraud or inequitable conduct by commission or omission.
Paragraph (b) of Sec. 11.303--Duration of obligation. A practical
time limit on the obligation to rectify the presentation of false
evidence has to be established. In the Model Code of Professional
Responsibility, the American Bar Association has suggested that the
conclusion of the proceeding, through all appeals, is a reasonably
definite point for the termination of the obligation.
Patent matters are not necessarily concluded in a single proceeding
before the Office with the issuance of a patent. The patent may be
subject to examination again in a reissue application, as well as
reexamination and interference proceedings. The procedures are
available throughout the period for which the patent is granted.
Accordingly, in patent matters before the Office, the duty of
disclosure continues for the duration of the pendency of the patent
application and the period for which the patent is granted.
Paragraph (c) of Sec. 11.303--Refusing to offer proof believed to
be false. Generally speaking, a practitioner has all authority to
refuse to offer testimony or other proof that the practitioner believes
is untrustworthy. Offering such proof may reflect adversely on the
practitioner's ability to discriminate in the quality of evidence and
thus impair the practitioner's effectiveness as an advocate.
Paragraph (d) of Sec. 11.303--Ex parte proceedings. Ordinarily, an
advocate has the limited responsibility of presenting one side of the
matters that a tribunal should consider in reaching a decision; the
conflicting position is
[[Page 69492]]
expected to be presented by the opposing party.
However, in any ex parte proceeding, such as prosecution of a
patent application, or an application for a temporary restraining
order, there is no balance of presentation by opposing advocates. The
object of an ex parte proceeding is nevertheless to yield a
substantially just result. The patent examiner or judge has an
affirmative responsibility to accord the absent party just
consideration. The practitioner for the represented party has the
correlative duty to make disclosures of material facts known to the
practitioner and that the practitioner reasonably believes are
necessary to an informed decision. In an ex parte proceeding before the
Office in a patent case, a practitioner's duty of disclosure would
remain the same as in Sec. 1.56. The practitioner would be required to
inform the Office of all information material to patentability known to
the practitioner in accordance with Sec. 1.56, whether or not the
facts are adverse.
Paragraph (e) of Sec. 11.303 would define some, but not all, acts
that would constitute violations of paragraphs (a) through (d) of this
section. The USPTO believes that it would be helpful to practitioners
if some specific prohibitions were set out in the rules. The
prohibitions set out in paragraphs (1) through (5) of Sec. 11.303(e)
represent violations that have occurred in the past or that the Office
specifically seeks to prevent. The specific acts set out in paragraph
(e) would not constitute a complete description of all acts in
violation of paragraphs (a) through (d).
Paragraph (1) of Sec. 11.303(e) would put practitioners on notice
that misconduct includes knowingly misusing a ``Certificate of Mailing
or Transmission'' under Sec. 1.8 of this subchapter. See In re Dula,
1030 Off. Gaz. 20 (May 17 1983); In re Klein, 6 USPQ2d 1547 (Comm'r
Pat. 1987), aff'd sub nom., Klein v. Peterson, 696 F. Supp. 695, 8
USPQ2d 1434 (D.D.C. 1988), aff'd, 866 F.2d 412, 9 USPQ 2d 1558 (Fed.
Cir. 1989); Small v. Weiffenbach, 10 USPQ 2d 1898 (Comm'r Pat. 1989).
Paragraph (2) of Sec. 11.303(e) would include as misconduct
knowingly violating or causing to be violated the duty of candor
requirements of Sec. Sec. 1.56 or 1.555. See In re Milmore, 196 USPQ
628 (Comm'r Pat. 1977); Kingsland v. Dorsey, 338 U.S. 318 (1949); Hatch
v. Ooms, 72 USPQ 406 (D.D.C. 1947).
Paragraph (4) of Sec. 11.303(e) would include as misconduct
knowingly signing a paper filed in the Office in violation of the
provisions of Sec. 11.18 or making a scandalous or indecent statement
in a paper filed in the Office. The provision is based on Rule 11 of
the Federal Rules of Civil Procedure. See Weiffenbach v. Gilden, 1160
Off. Gaz. 39 (Mar. 8, 1994).
Section 11.304 would contemplate that the evidence in a case be
marshaled fairly in ex parte and inter partes proceedings. Prohibitions
against destruction or concealment of evidence, improperly influencing
witnesses, obstructive tactics in discovery procedure, and the like
secure fair competition in adversary and ex parte systems.
Paragraph (a) of Sec. 11.304, like current Sec. 10.85(a)(7),
would prohibit a practitioner from obstructing another party's access
to evidence, and from altering, destroying, or concealing evidence.
Documents and other items of evidence are often essential to establish
a claim or defense. Subject to evidentiary privileges, the right of an
opposing party, including the Government, to obtain evidence through
discovery or subpoena is an important procedural right. The exercise of
that right can be frustrated if relevant material is altered,
concealed, or destroyed. To the extent clients are involved in the
effort to comply with discovery requests, the practitioner's
obligations are to pursue reasonable efforts to assure that documents
and other information subject to proper discovery requests are
produced. Applicable law in many jurisdictions makes it an offense to
destroy material for the purpose of impairing its availability in a
pending proceeding or a proceeding whose commencement can be foreseen.
Falsifying evidence is also generally a criminal offense. Section
11.304(a) applies to evidentiary material generally, including
computerized information.
A practitioner should ascertain that the practitioner's handling of
documents or other physical objects does not violate any other law.
Federal criminal law may forbid the destruction of documents or other
physical objects in circumstances not covered by the ethical rule set
forth in Sec. 11.304(a). See, e.g., 18 U.S.C. 1503 (obstruction of
justice); 18 U.S.C. 1505 (obstruction of proceedings before
departments, agencies, and committees); 18 U.S.C. 1510 (obstruction of
criminal investigations). Finally, some discovery rules having the
force of law may prohibit the destruction of documents and other
material even if litigation is not pending or imminent. Section 11.304
would not set forth the scope of a practitioner's responsibilities
under all applicable laws. It would merely impose on the practitioner
an ethical duty to make reasonable efforts to comply fully with those
laws. The prohibitions of Sec. 11.304(a) may overlap with criminal
obstruction provisions and civil discovery rules, but they apply
whether or not the prohibited conduct violates criminal provisions or
court rules. Thus, the alteration of evidence by a practitioner,
whether or not such conduct violates criminal law or court rules,
constitutes a violation of Sec. 11.304(a). See Weiffenbach v. Logan,
27 USPQ 2d 1870 (Comm'r Pat. 1993), aff'd. sub nom., Logan v. Comer,
No. 93-0335 (D.D.C. 1994), aff'd. sub nom., Logan v. Lehman, No. 95-
1216 (Fed. Cir. 1995).
Because of the duty of confidentiality under Sec. 11.106, the
practitioner would be generally forbidden to volunteer information
about physical evidence received from a client without the client's
consent after consultation. An exception would arise in the case of
volunteering information required under Sec. 1.56 to be disclosed.
If the evidence, not required to be disclosed under Sec. 1.56, is
received from the client and is subpoenaed or otherwise requested
through the discovery process while held by the practitioner, the
practitioner will be obligated to deliver the evidence directly to the
appropriate persons, unless there is a basis for objecting to the
discovery request or moving to quash the subpoena. A practitioner
should, therefore, advise the client of the risk that evidence may be
subject to subpoena or discovery, and of the practitioner's duty to
turn the evidence over in that event, before accepting it from the
client.
If the practitioner has received physical evidence belonging to the
client and the evidence is not required to be disclosed under Sec.
1.56, for purposes of examination or testing, the practitioner may
later return the property to the client pursuant to Sec. 11.115,
provided that the evidence has not been requested by discovery or
subpoenaed. The practitioner may not be justified in returning to a
client physical evidence, the possession of which by the client would
be per se illegal, such as certain drugs and weapons. And, if it is
reasonably apparent that the evidence is not the client's property, the
practitioner may not retain the evidence or return it to the client.
Instead, the practitioner would, under Sec. 11.304(a), have to make a
good-faith effort to return the evidence to its owner.
Paragraph (b) of Sec. 11.304 would provide that it is not improper
to pay a witness's expenses or to compensate a witness for time taken
in preparing to
[[Page 69493]]
testify, in attending a proceeding, or in testifying in that
proceeding.
Section 11.305 would proscribe forms of improper influence upon a
tribunal. Such forms of improper influence are proscribed by criminal
law. Others are specified in the ABA Model Code of Judicial Conduct,
with which an advocate should be familiar. A practitioner is required
to avoid contributing to a violation of such provisions. The advocate's
function is to present evidence and argument so that the cause may be
decided according to law. Refraining from abusive or obstreperous
conduct is a corollary of the advocate's right to speak on behalf of
litigants. A practitioner may stand firm against abuse by a judge but
should avoid reciprocation; the judge's default is no justification for
similar dereliction by an advocate. An advocate can present the cause,
protect the record for subsequent review, and preserve professional
integrity by patient firmness no less effectively than by belligerence
or theatrics.
Section 11.306 is reserved. Rule 3.6 of the Model Rules of
Professional Conduct contain ``[g]uidance on trial publicity.'' It
would be a conflict of interest for the Office to attempt to control
communications to the public by attorneys representing a party in a
suit against the Office. Accordingly, the provisions of Rule 3.6 are
not being proposed. Nevertheless, an attorney in a civil action brought
against the Office would be subject to the professional conduct rules
of the state where the attorney is licensed to practice law. If, in the
course of the trial, the attorney violates the state's professional
conduct rules and is disciplined by the state authorities, the attorney
could be subject to discipline under the proposed rules. See Sec. Sec.
11.24 and 11.803(f)(5).
Section 11.307 would generally proscribe a practitioner from acting
as advocate in a proceeding before the Office in which the practitioner
is likely to be a necessary witness. Combining the roles of advocate
and witness can prejudice the opposing party and can involve a conflict
of interest between the practitioner and client. The opposing party has
a right to object where the combination of roles may prejudice that
party's rights in the litigation. A witness is required to testify on
the basis of personal knowledge, while an advocate is expected to
explain and comment on evidence given by others. It may not be clear
whether a statement by an advocate-witness should be taken as proof or
as an analysis of the proof.
A registered practitioner could normally testify in an interference
proceeding when his or her diligence is an issue in the interference.
The Office would continue to assess on a case-by-case basis the weight
to be given testimony by a registered practitioner who also represents
a party in the proceeding in which the registered practitioner gives
testimony. See Wilder v. Snyder, 201 USPQ 927, 934 (Bd. Pat. Int.
1979).
Paragraph (a)(1) of Sec. 11.307 would recognize that if the
testimony will be uncontested, the ambiguities in the dual role are
purely theoretical.
Paragraph (a)(2) of Sec. 11.307 would recognize that permitting
the practitioners to testify concerning the extent and value of legal
services rendered in the action in which the testimony is offered on
the subject, avoids the need for a second trial with new counsel to
resolve that issue. Moreover, in such a situation, the judge has first-
hand knowledge of the matter in issue; hence, there is less dependence
on the adversary process to test the credibility of the testimony.
Paragraph (a)(3) of Sec. 11.307 would recognize that a balancing
is required between the interests of the client and those of the
opposing party. Whether the opposing party is likely to suffer
prejudice depends on the nature of the case, the importance and
probable tenor of the practitioner's testimony, and the probability
that the practitioner's testimony will conflict with that of other
witnesses. Even if there is risk of such prejudice, in determining
whether the practitioner should be disqualified, due regard must be
given to the effect of disqualification on the practitioner's client.
It is relevant that one or both parties could reasonably foresee that
the practitioner would probably be a witness.
If the only reason for not permitting a practitioner to combine the
roles of advocate and witness is possible prejudice to the opposing
party, there is no reason to disqualify other practitioners in the
testifying practitioner's firm from acting as advocates in that trial.
In short, there is no general rule of imputed disqualification
applicable to Sec. 11.307. However, the combination of roles of
advocate and witness might involve an improper conflict of interest
between the practitioner and the client in addition to or apart from
possible prejudice to the opposing party. Whether there is such a
client conflict is determined by Sec. Sec. 11.107 or 11.109. For
example, if there is likely to be a significant conflict between the
testimony of the client and that of the practitioner, the
representation would be improper under the standard set forth in Sec.
11.107(b) without regard to Sec. 11.307(a). The problem could arise
whether the practitioner is called as a witness on behalf of the
client, or is called by the opposing party. Determining whether such a
conflict exists is, in the first instance, the responsibility of the
practitioner involved. See Comment to Sec. 11.107. Section 11.307(b)
would state that other practitioners in the testifying practitioner's
firm are disqualified only when there is such a client conflict and the
testifying practitioner therefore could not represent the client under
Sec. Sec. 11.107 or 11.109. The principles of client consent, embodied
in Sec. Sec. 11.107 and 11.109, also would apply to Sec. 11.307(b).
Thus, the reference to Sec. Sec. 11.107 and 11.109 incorporates the
client consent aspects of those Rules. Section 11.307(b) as proposed
would provide the protection for the client, not rights of
disqualification to the adversary. Subject to the disclosure and
consultation requirements of Sec. Sec. 11.107 and 11.109, the client
may consent to the firm's continuing representation, despite the
potential problems created by the nature of the testimony to be
provided by a practitioner in the firm.
Even where a practitioner's testimony would not involve a conflict
with the client's interests under Sec. Sec. 11.107 or 11.109 and would
not be precluded under Sec. 11.307, the client's interests might
nevertheless be harmed by the appearance as a witness of a practitioner
in the firm that represents the client. For example, the practitioner's
testimony would be vulnerable to impeachment on the grounds that the
practitioner-witness is testifying to support the position of the
practitioner's own firm. Similarly, a practitioner whose firm's
colleague is testifying in the case should recognize the possibility
that the practitioner might not scrutinize the testimony of the
colleague carefully enough and that this could prejudice the client's
interests, whether the colleague is testifying for or against the
client. In such instances, the practitioner should inform the client of
any possible adverse effects on the client's interests that might
result from the practitioner's relationship with the colleague-witness,
so that the client may make a meaningful choice whether to retain the
practitioner for the representation in question.
Section 11.308 is reserved. Rule 3.8 of the Model Rules of
Professional Conduct addresses the ``Special Responsibilities of a
Prosecutor'' in the context of criminal proceedings. Inasmuch as
practice before the Office does not involve criminal proceedings, the
content of Model Rule 3.8 is not
[[Page 69494]]
being proposed. Nevertheless, an attorney who is both a practitioner
before the Office and a criminal prosecutor would be subject to both
the Office and State professional conduct rules. If, in the course of a
criminal proceeding, the attorney violates the state's professional
conduct rules and is disciplined by the state authorities, the attorney
could be subject to discipline under the proposed rules. See Sec. Sec.
11.24 and 11.803(f)(5).
Section 11.309 would introduce a practitioner's responsibility in a
non-adjudicative role before an administrative agency, such as the
Office. The proposed rule would provide conformity with Rule 3.9 of the
Rules of Professional Conduct adopted by state bars. In representation
before bodies such as legislatures, municipal councils, and executive
and administrative agencies acting in a rule-making or policy-making
capacity (including the USPTO), practitioners present facts, formulate
issues, and advance argument in the matters under consideration. The
decision-making body, like a court, should be able to rely on the
integrity of the submissions made to it. A practitioner appearing
before such a body should deal with it honestly and in conformity with
applicable rules of procedure.
Practitioners have no exclusive right to appear before non-
adjudicative bodies, as they do before a court. The requirements of
Sec. 11.309, therefore, may subject practitioners to regulations
inapplicable to advocates, such as non-practitioner lobbyists. However,
legislatures and administrative agencies have a right to expect
practitioners to deal with them as they deal with courts.
Section 11.309 does not apply to representation of a client in a
negotiation or other bilateral transaction with a Government agency,
such as the Office; representation in such a transaction is governed by
Sec. Sec. 11.401 through 11.404.
Section 11.309 is closely related to Sec. Sec. 11.303 through
11.305, which deal with conduct regarding tribunals. The term
``tribunal,'' as defined in the terminology section of the proposed
Rules, refers to adjudicative or quasi-adjudicative bodies, including
the Office.
Section 11.401 would require a practitioner to be truthful when
dealing with others on a client's behalf where the client has immediate
or prospective business before the Office. However, the practitioner
generally has no affirmative duty to inform an opposing party of
relevant facts. A misrepresentation can occur if the practitioner
incorporates or affirms a statement of another person that the
practitioner knows is false. Misrepresentations can also occur by
failure to act. The term ``third person'' as used in Sec. Sec.
11.401(a) and (b) refers to any person or entity other than the
practitioner's client.
Section 11.401(a)--Statements of Material Fact or Law. This Rule
would refer to material statements of fact. Whether a particular
statement should be regarded as material, and as one of fact, can
depend on the circumstances. Under generally accepted conventions in
negotiation, certain types of statements ordinarily are not taken as
statements of material fact. Estimates of price or value placed on the
subject of a transaction and a party's intentions as to an acceptable
settlement of a claim are in this category, and so is the existence of
an undisclosed principal except where nondisclosure of the principal
would constitute fraud. There may be other analogous situations. In
other circumstances, a particular factual statement may be material;
for example, a statement to a client's potential licensor of an
invention that an application for a patent on the invention is pending,
when the practitioner knows the application has been abandoned for some
time, and the client is unaware of its status.
Section 11.401(b) would recognize that substantive law may require
a practitioner to disclose certain information to avoid being deemed to
have assisted the client's crime or fraud. The requirement of
disclosure created by this section is, however, subject to the
obligations created by Sec. 11.106.
Section 11.402 would provide a standard for communicating with a
party represented by counsel in connection with representing a client
having immediate or prospective business before the Office. This rule
would not prohibit communication with a party, or an employee or agent
of a party, concerning matters outside the representation. For example,
the existence of a controversy between two organizations does not
prohibit a practitioner for either organization from communicating with
nonpractitioner representatives of the other organization regarding a
separate matter. Also, parties to a matter may communicate directly
with each other and a practitioner having independent justification for
communicating with the other party is permitted to do so.
Section 11.402(b) would address the case of communicating with
agents or employees of an organization that is a represented party
concerning the subject of representation. Section 11.402(b) would
prohibit communication by a practitioner for one party concerning the
subject of the representation with persons having the power to bind the
organization as to the particular representation to which the
communication relates. If an agent or employee of the organization with
authority to make binding decisions regarding the representation is
represented in the matter by separate counsel, the consent by that
agent's or employee's counsel to a communication will be sufficient for
purposes of this section.
Section 11.402(a) would cover any person, whether or not a party to
a formal proceeding, who is represented by counsel concerning the
matter in question.
Section 11.402(a) would not apply to the situation in which a
practitioner contacts employees of an organization for the purpose of
obtaining information generally available to the public, or obtainable
under the Freedom of Information Act, even if the information in
question is related to the representation. For example, a practitioner
for a plaintiff who has filed suit against an organization represented
by a practitioner may telephone the organization to request a copy of a
press release regarding the representation, without disclosing the
practitioner's identity, obtaining the consent of the organization's
practitioner, or otherwise acting as paragraphs (a) and (b) of this
Rule would require.
Section 11.402(c) would recognize that special considerations come
into play when a practitioner is seeking to redress grievances
involving the Government, including the Office. It would permit
communications with those in Government having the authority to redress
such grievances (but not with any other Government personnel) without
the prior consent of the practitioner representing the Government in
such cases. However, a practitioner making such a communication without
the prior consent of the practitioner representing the Government must
make the kinds of disclosures that are required by Sec. 11.402(b) in
the case of communications with non-party employees.
Section 11.402(d) would not prohibit a practitioner from bypassing
counsel representing the Government on every issue that may arise in
the course of disputes with the Government. It is intended to provide
practitioners access to decision makers in Government with respect to
genuine grievances, such as to present the view that the Government's
basic policy position with respect to a dispute is faulty, or that
Government personnel are conducting themselves
[[Page 69495]]
improperly with respect to aspects of the dispute. It is not intended
to provide direct access on routine disputes such as ordinary discovery
disputes, extensions of time or other scheduling matters, or similar
routine aspects of the resolution of disputes.
Section 11.402 is not intended to enlarge or restrict the law
enforcement activities of the United States or the Office of Enrollment
and Discipline, which are authorized and permissible under the
Constitution and the law of the United States. The ``authorized by
law'' proviso to Sec. 11.402(a) is intended to permit Government
conduct that is valid under this law. The proviso is not intended to
freeze any particular substantive law, but is meant to accommodate
substantive law as it may develop over time.
Section 11.403 would provide a standard for communicating with an
unrepresented person, particularly one not experienced in dealing with
legal matters. Such a person might assume that a practitioner will
provide disinterested advice concerning the law even when the
practitioner represents a client. In dealing personally with any
unrepresented third party on behalf of the practitioner's client, a
practitioner should not give advice to the unrepresented party other
than the advice to obtain counsel.
Section 11.404 would require a practitioner to respect the rights
of third parties. Responsibility to a client requires a practitioner to
subordinate the interests of others to those of the client, but that
responsibility does not imply that a practitioner may disregard the
rights of third persons. It is impractical to catalogue all such
rights, but they include legal restrictions on methods of obtaining
evidence from third persons.
Section 11.501 would set forth the responsibilities of a partner or
supervisory practitioner. Paragraphs (a) and (b) of Sec. 11.501 would
refer to practitioners having supervisory authority over the
professional work of a firm, or unit of a Government agency. This
includes members of a partnership and the shareholders in a law firm
organized as a professional corporation; practitioners having
supervisory authority in the law department of an enterprise or
Government agency; and practitioners who have intermediate managerial
responsibilities in a firm.
Under Sec. 11.501(a), a partner or supervisory practitioner in a
firm would be responsible for ensuring that the firm has in effect
measures giving reasonable assurance that all practitioners in the firm
conform to the Rules of Professional Conduct. Under Sec. 11.501(b), a
supervisory practitioner in a Government unit would be responsible for
making reasonable efforts to ensure that any practitioner subject to
supervision conforms to the Rules of Professional Conduct.
The measures required to fulfill the responsibility prescribed in
Sec. Sec. 11.501(a) and (b) would depend on the firm's or unit's
structure and the nature of its practice. In a small firm, informal
supervision and occasional admonition ordinarily might be sufficient.
In a large firm, or in practice situations in which intensely difficult
ethical problems frequently arise, more elaborate procedures may be
necessary. Some firms, for example, have a procedure whereby junior
practitioners can make confidential referral of ethical problems
directly to a designated senior partner or special committee. See Sec.
11.502. Firms, whether large or small, may also encourage their members
to participate in continuing legal education in professional ethics if
such education is not required. In any event, the ethical atmosphere of
a firm can influence the conduct of all its members and a practitioner
having authority over the work of another may not assume that the
subordinate practitioner will inevitably conform to the Rules.
Paragraph (c) of Sec. 11.501 would set forth general principles of
imputed responsibility for the misconduct of others. Section
11.501(c)(1) would make any practitioner who orders or, with knowledge,
ratifies misconduct responsible for that misconduct. See also Sec.
11.804(a). Section 11.501(c)(2) would extend that responsibility to any
practitioner who is a partner in the firm in which the misconduct takes
place, or who has direct supervisory authority over the practitioner
who engages in misconduct, when the practitioner knows or should
reasonably know of the conduct and could intervene to ameliorate its
consequences. Whether a practitioner has such supervisory authority in
particular circumstances would be a question of fact. A practitioner
with direct supervisory authority is a practitioner who has an actual
supervisory role with respect to directing the conduct of other
practitioners in a particular representation. A practitioner who is
technically a ``supervisor'' in organizational terms, but is not
involved in directing the effort of other practitioners in a particular
representation, is not a supervising practitioner with respect to that
representation.
The existence of actual knowledge is also a question of fact.
Whether a practitioner should reasonably have known of misconduct by
another practitioner in the same firm would be an objective standard
based on evaluation of all the facts, including the size and
organizational structure of the firm, the practitioner's position and
responsibilities within the firm, the type and frequency of contacts
between the various practitioners involved, the nature of the
misconduct at issue, and the nature of the supervision or other direct
responsibility (if any) actually exercised. The mere fact of
partnership or a position as a principal in a firm would not be
sufficient, without more, to satisfy this standard. Similarly, the fact
that a practitioner holds a position on the management committee of a
firm, or heads a department of the firm, would not be sufficient,
standing alone, to satisfy this standard.
Appropriate remedial action would depend on the immediacy of the
involvement and the seriousness of the misconduct. The supervisor would
be required to intervene to prevent avoidable consequences of
misconduct if the supervisor knows that the misconduct occurred. Thus,
if a supervising practitioner knows that a subordinate misrepresented a
matter to an opposing party in a negotiation, the supervisor as well as
the subordinate would have a duty to correct the resulting
misapprehension.
Professional misconduct by a practitioner under supervision could
reveal a violation of Sec. 11.501(b) on the part of the supervisory
practitioner even though it would not entail a violation of Sec.
11.501(c) because there was no direction, ratification, or knowledge of
the violation.
Apart from Sec. Sec. 11.501 and 11.804(a), a practitioner would
not have disciplinary liability for the conduct of a partner,
associate, or subordinate. Whether a practitioner may be liable civilly
or criminally for another practitioner's conduct is a question of law
beyond the scope of these Rules.
Section 11.502 would set forth the ethical responsibilities of a
subordinate practitioner. Although a practitioner would not be relieved
of responsibility for a violation by the fact that the practitioner
acted at the direction of a supervisor, that fact may be relevant in
determining whether a practitioner had the knowledge required to render
conduct a violation of the Rules. For example, if a subordinate filed a
frivolous pleading at the direction of a supervisor, the subordinate
would not be guilty of a professional violation unless the subordinate
knew of the document's frivolous character.
When practitioners in a supervisor-subordinate relationship
encounter a
[[Page 69496]]
matter involving professional judgment as to ethical duty, the
supervisor may assume responsibility for making the judgment. Otherwise
a consistent course of action or position could not be taken. If the
question can reasonably be answered only one way, the duty of both
practitioners is clear and they would be equally responsible for
fulfilling it. However, if the question is reasonably arguable, someone
has to decide upon the course of action. That authority ordinarily
reposes in the supervisor, and a subordinate may be guided accordingly.
For example, if a question arises whether the interests of two clients
conflict under Sec. 11.107, the supervisor's reasonable resolution of
the question should protect the subordinate professionally if the
resolution is subsequently challenged.
Section 11.503 would set forth a practitioner's responsibilities
regarding nonpractitioner assistants. Practitioners generally employ
assistants in their practice, including secretaries, investigators, law
student interns, and paraprofessionals. Such assistants, whether
employees or independent contractors, act for the practitioner in
rendition of the practitioner's professional services. A practitioner
should give such assistants appropriate instruction and supervision
concerning the ethical aspects of their employment, particularly
regarding the obligation not to disclose information relating to
representation of the client, and should be responsible for their work
product. The measures employed in supervising nonpractitioners should
take account of the fact that they do not have legal training and are
not subject to professional discipline.
Just as practitioners in private practice may direct the conduct of
investigators who may be independent contractors, prosecutors and other
Government practitioners may effectively direct the conduct of police
or other governmental investigative personnel, even though they may not
have, strictly speaking, formal authority to order actions by such
personnel, who report to the chief of police or the head of another
enforcement agency. Such prosecutors or other Government practitioners
have a responsibility for police or investigative personnel, whose
conduct they effectively direct, equivalent to that of private
practitioners with respect to investigators hired by private
practitioners. See also the comments to Sec. 11.501, in particular,
the concept of what constitutes direct supervisory authority, and the
significance of holding certain positions in a firm. Comments to Sec.
11.501 apply as well to Sec. 11.503.
Section 11.504 would provide for the professional independence of a
practitioner. The provisions of Sec. 11.504 would express traditional
limitations on sharing fees with nonpractitioners. (On sharing fees
among practitioners not in the same firm, see Sec. 11.105(e).) These
limitations would be to protect the practitioner's professional
independence of judgment. Where someone other than the client pays the
practitioner's fee or salary, or recommends employment of the
practitioner, that arrangement does not modify the practitioner's
obligation to the client. As stated in Sec. 11.504(d), such
arrangements should not interfere with the practitioner's professional
judgment.
Giving anything of value in exchange for recommending or securing
employment for the practitioner would be specifically barred. Thus, for
example, under proposed Sec. 11.504(a), a practitioner would not be
able to receive payment from an inventor for legal services and then
pay an invention promoter a share for finding the inventor-client and
referring the inventor-client to the practitioner. Likewise, the
prohibition against a practitioner splitting fees with a non-
practitioner is directed at the risk posed by the possibility of
control of legal matters by a non-practitioner interested more in
personal profit than the client's welfare. See In the Matter of Jones,
2 Cal. State Bar Ct.Rptr. 411 (Review Dept. 1993). To the extent this
policy is implicated, a practitioner should not be able to ``sanitize''
such impermissible fee-splitting by the simple expedient of having an
invention promoter receive the funds, make the division, and distribute
them to the practitioner. Accord Formal Opinion 1997-148, Standing
Committee on Professional Responsibility and Conduct (California);
Formal Opinion 87, Ethics Committee of the Colorado State Bar (1991).
Under proposed Sec. 11.504(b), such practices would be specifically
proscribed in cases involving an invention promoter. Ethics opinions
and court decisions in those jurisdictions finding violations of rules
barring fee-splitting between lawyers and non-lawyers in the estate
planning and living trust contexts do not turn upon whether the lawyer
receives payment for the trust and divides it with the marketer, or
vice versa.
Section 11.505 would proscribe engaging in or aiding the
unauthorized practice of law. The definition of the practice of law is
established by law and might vary from one jurisdiction to another.
Whatever the definition, limiting the practice of patent law before the
Office to those recognized to practice protects the public against
rendition of legal services by unqualified persons or organizations. A
patent application is recognized as being a legal document. See Sperry
v. Florida, 373 U.S. 379, 137 USPQ 578 (1963). Thus, a corporation that
is not authorized to practice law renders legal services, as opposed to
clerical services where, upon request from a general practice attorney
and for a fee, it causes a patent application to be prepared by a
registered practitioner. See Lefkowitz v. Napatco, 415 N.E.2d 916, 212
USPQ 617 (NY 1980). There are numerous cases and ethics opinions
wherein attorneys have been found to have aided lay organizations in
the unauthorized practice of law by agreeing to accept referrals from a
non-lawyer engaged in unauthorized practice of law. Some involve non-
lawyers marketing estate planning packages. A registered practitioner
accepting referrals from a non-lawyer engaged in unauthorized practice
of law paralleling such marketing packages might be aiding the
unauthorized practice of law. An attorney was found to have aided the
unauthorized practice of law by permitting a non-attorney operating as
a business to gather data from estate planning clients for preparation
of legal documents, and forward the data to the attorney who thereafter
prepared the documents (including a will, living trust, living will,
and powers of attorney). The attorney, without having personally met or
corresponded with the client, forwarded the documents to the non-
attorney for the client to execute. See Wayne County Bar Ass'n. v.
Naumoff, 660 N.E.2d 1177 (Ohio 1996). In another case, an attorney
agreed to accept referrals from non-attorneys who marketed, through
free seminars, living trusts as estate planning devices to avoid
probate. At the conclusion of the seminars, the marketers gathered
personal and asset information on a form from clients desiring
consultations with the marketers. The marketers then discussed the
living trust with the clients, and what could and could not be done.
The marketers recommended the attorney, who accepted 100 referrals in a
two year period. The information gathered by the marketers would then
be forwarded to the attorney, either by the marketers or the clients,
and the attorney then spoke with the clients by telephone to answer
their questions. The attorney then prepared trust documents for the
clients' review, and later met with the clients in person,
[[Page 69497]]
went over the information and documents, and the clients signed the
documents at the meeting. The attorney was found to have aided the
unauthorized practice of law. See Comm. on Professional Ethics &
Conduct v. Baker, 492 N.W.2d 695,597 (Iowa 1992). See also People v.
Laden, 893 P.2d 771 (Colo. 1995), People v. Macy, 789 P.2d 188 (Colo.
1990), People v. Boyles, 591 P.2d 1315 (Colo. 1979); In re Discipio,
645 N.E.2d 906 (Ill. 1994); In re Komar, 532 N.E.2d 801 (Ill. 1988);
Formal Opinion 705, Committee on Professional Ethics of the Illinois
State Bar Association (1982); Formal Opinion 1977-148, Standing
Committee on Professional Responsibility and Conduct; Formal Opinion
87, Ethics Committee of the Colorado State Bar (1991).
Paragraphs (b), (c), and (d) of Sec. 11.505 would permit a
practitioner to employ the services of paraprofessionals and delegate
functions to them, so long as the practitioner supervises the delegated
work and retains responsibility for their work. See Sec. 11.503.
Likewise, it would permit practitioners to provide professional advice
and instruction to nonpractitioners whose employment requires knowledge
of law; for example, claims adjusters, employees of financial or
commercial institutions, social workers, accountants and persons
employed in Government agencies. In addition, a practitioner may
counsel nonpractitioners who wish to proceed pro se. Paragraph (d) of
Sec. 11.505, like Sec. 10.47(b), makes it clear that a practitioner
is prohibited from aiding a suspended or excluded practitioner in the
practice of law before the Office.
Section 11.506, like current Sec. 10.38, would prohibit agreements
restricting rights to practice. An agreement restricting the right of
partners or associates to practice after leaving a firm not only limits
their professional autonomy, but also limits the freedom of clients to
choose a practitioner. Section 11.506(a) would prohibit such agreements
except for restrictions incident to provisions concerning retirement
benefits for service with the firm.
Paragraph (b) of Sec. 11.506 would prohibit a practitioner from
agreeing not to represent other persons in connection with settling a
claim on behalf of a client.
Section 11.507 would provide for a practitioner being subject to
the Rules of Professional Conduct if the practitioner provides law-
related services.
Section 11.601 would encourage a practitioner to provide pro bono
publico service. This Rule would reflect the long-standing ethical
principle underlying Canon 2 of the Code of Professional Responsibility
that ``A practitioner should assist the legal profession in fulfilling
its duty to make legal counsel available.'' The Rule would incorporate
the legal profession's historical commitment to the principle that all
persons in our society should be able to obtain necessary legal
services. The Rule would also recognize that the rights and
responsibilities of individuals and groups in the United States are
increasingly defined in legal terms and that, as a consequence, legal
assistance in coping with the web of statutes, rules, and regulations
is imperative for persons of modest and limited means, as well as for
the relatively well-to-do. The Rule would also recognize that a
practitioner's pro bono services are sometimes needed to assert or
defend public rights belonging to the public generally where no
individual or group can afford to pay for the services.
This Rule would carry forward the ethical precepts set forth in the
Code. Specifically, the Rule would recognize that the basic
responsibility for providing legal services for those unable to pay
ultimately rests upon the individual practitioner, and that every
practitioner, regardless of professional prominence or professional
workload, should find time to participate in or otherwise support the
provision of legal services to the disadvantaged.
The Rule also would acknowledge that while the provision of free
legal services to those unable to pay reasonable fees continues to be
an obligation of each practitioner as well as the profession generally,
the efforts of individual practitioners are often not enough to meet
the need. Thus, it has been necessary for the profession and Government
to institute additional programs to provide legal services.
Accordingly, legal aid offices, practitioner referral services, and
other related programs have been developed, and others will be
developed by the profession and Government. Every practitioner should
support all proper efforts to meet this need for legal services. A
practitioner also should not refuse a request from a court or bar
association to undertake representation of a person unable to obtain
counsel except for compelling reasons such as those listed in Sec.
11.602.
Section 11.601 also would express the profession's traditional
commitment to make legal counsel available, but it is not intended that
the Rule be enforced through disciplinary process. Neither is it
intended to place any obligation on a Government practitioner that is
inconsistent with laws, such as 18 U.S.C. 203 and 205, limiting the
scope of permissible employment or representational activities.
Section 11.602 would provide for a practitioner's accepting a
tribunal's appointment to represent a client. The practitioner would
not be obligated to accept appointment if the practitioner regards the
client's character or cause as repugnant. All practitioners have a
responsibility to assist in providing pro bono publico service. See
section 11.601. An individual practitioner fulfills this responsibility
by accepting a fair share of unpopular matters or indigent or unpopular
clients. A practitioner may also be subject to appointment by a court
to serve unpopular clients or persons unable to afford legal services.
This rule should not be construed as empowering the Office, and the
Office does not intend to use this rule, as a means to appoint a
practitioner to represent any person or party before the Office in any
matter.
Section 11.602 and Appointed Counsel. For good cause a practitioner
may seek to decline an appointment to represent a person who cannot
afford to retain counsel or whose cause is unpopular. Good cause exists
if the practitioner could not handle the matter competently, see Sec.
11.101, or if undertaking the representation would result in an
improper conflict of interest; for example, when the client or the
cause is so repugnant to the practitioner as to be likely to impair the
client-practitioner relationship or the practitioner's ability to
represent the client. A practitioner may also seek to decline an
appointment if acceptance would be substantially and unreasonably
burdensome, such as when it would impose a financial sacrifice so great
as to be unjust.
An appointed practitioner would have the same obligations to the
client as retained counsel, including the obligations of loyalty and
confidentiality, and is subject to the same limitations on the client-
practitioner relationship, such as the obligation to refrain from
assisting the client in violation of the Rules.
Section 11.603 would provide for practitioners supporting and
participating in legal service organizations. A practitioner who is an
officer or a member of such an organization does not thereby have a
client-practitioner relationship with persons served by the
organization. However, there is potential conflict between the
interests of such persons and the interests of the practitioner's
clients. If the possibility of such conflict disqualified a
practitioner from serving on the board of a legal services
organization, the profession's
[[Page 69498]]
involvement in such organizations would be severely curtailed. It may
be necessary in appropriate cases to reassure a client of the
organization that the representation will not be affected by
conflicting loyalties of a member of the board. Established, written
policies in this respect can enhance the credibility of such
assurances.
Section 11.604 would encourage the efforts of practitioners to
maintain and improve our legal system. This system should function in a
manner that commands public respect and fosters the use of legal
remedies to achieve redress of grievances. By reason of education and
experience, practitioners are especially qualified to recognize
deficiencies in the legal system and to initiate corrective measures
therein. Thus, they should participate in proposing and supporting
legislation and programs to improve the system, without regard to the
general interests or desires of clients or former clients. Rules of law
are deficient if they are not just, understandable, and responsive to
the needs of society. If a practitioner believes that the existence or
absence of a rule of law, substantive or procedural, causes or
contributes to an unjust result, the practitioner should endeavor by
lawful means to obtain appropriate changes in the law. This Rule
expresses the policy underlying Canon 8 of the Code of Professional
Responsibility of the American Bar Association that ``A practitioner
should assist in improving the legal system'' through legislation.
Practitioners employed by the Government may be subject to limits on
their personal ability to propose legislation regarding the department
or agency where they are employed. Accordingly, it is not intended that
this Rule be enforced through disciplinary process.
Practitioners involved in organizations seeking law reform
generally do not have a client-practitioner relationship with the
organization. Otherwise, it might follow that a practitioner could not
be involved in a bar association law reform program that might
indirectly affect a client. See also Sec. 11.102(b). For example, a
practitioner specializing in patent law prosecution or litigation might
be regarded as disqualified from participating in drafting revisions of
rules governing that subject. In determining the nature and scope of
participation in such activities, a practitioner should be mindful of
obligations to clients under other Rules, particularly Sec. 11.107. A
practitioner is professionally obligated to protect the integrity of
the program by making an appropriate disclosure within the organization
when the practitioner knows a private client might be materially
benefited.
Section 11.701 would govern all communications about a
practitioner's services, including advertising. It is especially
important that statements about a practitioner or the practitioner's
services be accurate, since many members of the public lack detailed
knowledge of legal matters. Certain advertisements such as those that
describe the amount of a damage award, the practitioner's record in
obtaining favorable verdicts, or those containing client endorsements,
unless suitably qualified, have a capacity to mislead by creating an
unjustified expectation that similar results can be obtained for
others. Advertisements comparing the practitioner's services with those
of other practitioners are false or misleading if the claims made
cannot be substantiated.
Section 11.701 and Advertising. To assist the public in obtaining
legal services, practitioners should be allowed to make known their
services not only through reputation but also through organized
information campaigns in the form of advertising. Advertising involves
an active quest for clients, contrary to the tradition that a
practitioner should not seek clientele. However, the public's need to
know about legal services can be fulfilled in part through advertising.
This need is particularly acute in the case of persons of moderate
means who have not made extensive use of legal services. The interest
in expanding public information about legal services ought to prevail
over considerations of tradition.
Section 11.701 would permit public dissemination of information
concerning a practitioner's name or firm name, address, and telephone
number; the kinds of services the practitioner will undertake; the
basis on which the practitioner's fees are determined, including prices
for specific services and payment and credit arrangements; a
practitioner's foreign language ability; names of references and, with
their consent, names of clients regularly represented; and other
information that might invite the attention of those seeking legal
assistance.
Questions of effectiveness and taste in advertising are matters of
speculation and subjective judgment. Some state jurisdictions have had
extensive prohibitions against television advertising, against
advertising going beyond specific facts about a practitioner, or
against ``undignified'' advertising. Television is now one of the most
powerful media for getting information to the public, particularly
persons of low and moderate income; prohibiting television advertising,
therefore, would impede the flow of information about legal services to
many sectors of the public. Limiting the information that may be
advertised has a similar effect.
This proposal is based on the premise that there might be no
significant distinction between disseminating information and
soliciting clients through mass media or through individual personal
contact. In-person solicitation can, however, create additional
problems because of the particular circumstances in which the
solicitation takes place. Section 11.701 prohibits in-person
solicitation in circumstances or through means that are not conducive
to intelligent, rational decisions.
Sections 11.701 and 11.702, and paying others to recommend a
practitioner. A practitioner would be allowed to pay for advertising
permitted by this section. See Sec. 11.702(c). Section 11.702 also
would permit a practitioner to pay a not-for-profit lawyer referral
service or legal service organization for channeling professional work
to the practitioner. Thus, such a service or organization, other than
the practitioner may advertise or recommend the practitioner's
services. Likewise, a practitioner may participate in practitioner
referral programs and pay the usual fees charged by such programs.
However, special concerns arise when a practitioner is making payments
to intermediaries, such as invention promoters, to recommend the
practitioner's services to others. These concerns are particularly
significant when the payments are not being made to a recognized or
established agency or organization, such as a bar-organized
practitioner referral program. In employing intermediaries, such as
invention promoters, the practitioner is bound by all of the provisions
of Sec. 11.701. However, paragraphs (b)(4), and (b)(5) of Sec. 11.701
contain provisions specifically relating to the use of intermediaries.
Paragraph (b)(4) of Sec. 11.701 imposes specific obligations on
the practitioner who uses an intermediary to ensure that the potential
client, who is the target of the solicitation, is informed of the
consideration paid or to be paid by the practitioner to the
intermediary, and any effect of the payment of such consideration on
the total fee to be charged. The concept of payment, as incorporated in
Sec. 11.701(b)(4), includes giving anything of value to the recipient
and is not limited to payments of money alone. For example, if an
intermediary
[[Page 69499]]
were provided the free use of an automobile or free clerical services
in return for soliciting clients on behalf of the practitioner, the
obligations imposed by Sec. 11.701(b)(4) would apply and impose the
specified disclosure requirements.
Statements by an invention promoter in connection with the
marketing of the patent applications and inventions, whether on the
telephone, at a seminar, or oral or in writing, regarding a
practitioner preparing the patent applications and the availability of
that practitioner to respond to questions relating to the application,
would be communications under Sec. 11.701 since they concern the
availability of a practitioner for professional employment, and are
therefore subject to the requirements of Sec. 11.701. Like the
communications found violative in Leoni v. State Bar, supra, 39 Cal.3d
609 (Cal. 1985) and People v. Morse, 21 Cal.App.4th 259, fn. 13 (1993),
affd. In re Morse, 11 Cal. A4th 184 (Cal. 1995) they have potential to
mislead members of the public. In Leoni v. State Bar, the letters and
brochures inaccurately suggested or intimated that all recipients
needed a lawyer, that their property was subject to immediate
attachment, that bankruptcy was appropriate for them, and the like. In
People v. Morse, the advertisements made inaccurate suggestions and
statements regarding the protections afforded recipients by the
homestead laws. Statements which, by their generic, ``one-size-fits-
all'' recommendation of patents for everyone, may similarly contain
untrue statements, and omit facts--such as that patents may not be
worth the cost or in the client's best interest in every case--
necessary to make the communications not misleading.
Further, an invention promoter's statements on the telephone or at
a meeting regarding the professional employment of the practitioner in
connection with obtaining patent protection would constitute a
prohibited in-person solicitation under Sec. Sec. 11.703(a) and
11.703(b). Section 11.703(a) and (b) would proscribe a practitioner
from seeking employment through an intermediary under circumstances
involving false or misleading statements, undue influence, a potential
client who is physically or mentally unable to exercise reasonable
judgment, and the practitioner has not taken reasonable steps to ensure
that the potential client is informed of the consideration paid to the
intermediary as well as any possible effect the payment has on the
total fee charged. These rules would apply because a significant
motivation for the promotion of the practitioner's services for the
inventor is pecuniary gain (rather than communication of general
information regarding patents). See FTC v. AIRD, 219 B.R. 639 (D Mass.
1998). For purposes of Sec. 11.703, it makes no difference whether the
invention promoter or the practitioner seeks or receives payment from
the participant, since the rule regulates employment motivated by
pecuniary gain, without regard to whether a practitioner or one acting
on his behalf seeks or obtains that gain. Since the solicitation is
directed at obtaining prospective clients with whom the practitioner
has no prior professional relationship, it would be prohibited by Sec.
11.703(a). The use of the invention promoter to communicate with the
inventor would not insulate the practitioner from Sec. 11.703, which
prohibits improper solicitations made by ``an intermediary for the
practitioner.'' In both the advertising and the solicitations, the
invention promoter cannot do on the practitioner's behalf what the
practitioner cannot do. The invention promoter simply becomes the agent
of the practitioner. A practitioner cannot avoid the prohibition
against in-person solicitation by associating with a non-practitioner
who engages in such prohibited conduct on the lawyer's behalf. Accord
Formal Opinion 1997-148, Standing Committee on Professional
Responsibility and Conduct (California).
Paragraph (b)(5) of Sec. 11.701 would impose specific obligations
on the practitioner who uses an invention promoter as an intermediary
to ensure that the potential client who is the target of the
solicitation is accurately informed in every contract between the
client and intermediary of all legal fees and expenses included in the
funds the client delivers to the intermediary. The practitioner would
also have to ensure that every communication to the client by the
intermediary requesting funds accurately reflect all legal fees and
expenses included in the funds sought, and that the potential client is
informed of the discount in legal fees the practitioner gives or will
give in consideration for the promoter referring a client.
Paragraph (d) of Sec. 11.701 is based on 35 U.S.C. 32, and
prohibits advertising that is specifically precluded by statute.
Paragraph (e) of Sec. 11.701 is based on 5 U.S.C. 501, which
prohibits the use of the name of a Member of Congress or of an
individual in the service of the United States in advertising the
practitioner's practice before the Office.
Section 11.702 would provide for advertising by practitioners.
Paragraph (a) of Sec. 11.702 would continue the requirements of
current Sec. 10.32(a) that provide for practitioners advertising their
services through public media. Paragraph (b) of Sec. 11.702 would
introduce a requirement of keeping a copy of advertisements or
communications (whether in printed or electronic media) for a period
for two years. Paragraph (e) of Sec. 11.702, like current Sec.
10.32(c), would require any communication made pursuant to this rule to
include the name of at least one practitioner responsible for its
content.
Section 11.703 would address the potential for abuse inherent in
direct in-person or live telephone contact by a practitioner with a
prospective client known to need legal services. These forms of contact
between a practitioner and a prospective client subject the layperson
to the private importuning of the trained advocate in a direct
interpersonal encounter. The prospective client, who may already feel
overwhelmed by the circumstances giving rise to the need for legal
services, may find it difficult fully to evaluate all available
alternatives with reasoned judgment and appropriate self-interest in
the face of the practitioner's presence and insistence upon being
retained immediately. The situation is filled with the possibility of
undue influence, intimidation, and overreaching, as was recognized in
Ohralik v. Ohio State Bar Ass'n., 436 U.S. 447 (1978) (disciplining
attorney for soliciting clients for pecuniary gain under circumstances
evidencing undue influence, intimidation, or overreaching).
Paragraph (a) of Sec. 11.703, like current Sec. 10.33, would
provide a general prohibition against in-person or live telephone
contact to solicit professional employment from a prospective client
with whom the practitioner has no family or prior professional
relationship when a significant motive for the practitioner's doing so
is the practitioner's pecuniary gain and the solicitation occurs under
circumstances evidencing undue influence, intimidation, or
overreaching. This potential for abuse inherent in direct in-person or
live telephone solicitation of prospective clients justifies its
prohibition, particularly since practitioner advertising and written
and recorded communication permitted under Sec. 11.702 offer
alternative means of conveying necessary information to those who may
be in need of legal services. Advertising and written and recorded
communications which may be mailed or autodialed make it possible for a
prospective client to be informed
[[Page 69500]]
about the need for legal services, and about the qualifications of
available practitioners, without subjecting the prospective client to
direct in-person or telephone persuasion that may overwhelm the
client's judgment.
A practitioner may not circumvent the Rules of Professional Conduct
through the acts of another. See Sec. 11.804(a). Accordingly, the
provisions of Sec. 11.804(a) may be violated by any solicitation by an
intermediary invention promoter involving in-person or live telephone
contact to solicit professional employment for a practitioner from a
prospective client with whom the practitioner has no family or prior
professional relationship when a significant motive is the pecuniary.
Paragraph (c) of Sec. 11.703 would require the words ``Advertising
Material'' on the outside of the envelope, and at the beginning and end
of any electronic or recorded communication. The use of general
advertising and written and recorded communications to transmit
information from practitioner to prospective client, including patent
and trademark clients, rather than direct in-person or live telephone
contact, will help to assure that the information flows clearly as well
as freely. The contents of advertisements and communications permitted
under Sec. 11.702 are permanently recorded so that they cannot be
disputed and may be shared with others who know the practitioner. This
potential for informal review is itself likely to help guard against
statements and claims that might constitute false and misleading
communications, in violation of Sec. 11.701. The contents of direct
in-person or live telephone conversations between a practitioner to a
prospective client can be disputed and are not subject to third-party
scrutiny. Consequently, they are much more likely to approach (and
occasionally cross) the dividing line between accurate representations
and those that are false and misleading.
There is far less likelihood that a practitioner would engage in
abusive practices against an individual with whom the practitioner has
a prior personal or professional relationship or where the practitioner
is motivated by considerations other than the practitioner's pecuniary
gain. Consequently, the general prohibition in Sec. 11.703(a) and the
requirements of Sec. 11.703(c) would not be applicable in those
situations.
But even permitted forms of solicitation can be abused. Thus, any
solicitation which contains information which is false or misleading
within the meaning of Sec. 11.701, which involves coercion, duress or
harassment within the meaning of Sec. 11.703(b)(2), or which involves
contact with a prospective client who has made known to the
practitioner a desire not to be solicited by the practitioner within
the meaning of Sec. 11.703(b)(1) would be prohibited. Further, if
after sending a letter or other communication to a client as permitted
by Sec. 11.702 the practitioner receives no response, any further
effort to communicate with the prospective client may violate the
provisions of Sec. 11.703(b). Likewise, if a solicitation on a
practitioner's behalf by an intermediary contains false or misleading
information within the meaning of Sec. 11.701, the solicitation may
violate the provisions of Sec. 11.804(a). Similarly, any solicitation
by an intermediary invention promoter involving follow-up telephone
calls to prospective clients who have not responded to an initial
solicitation may violate the provisions of Sec. 11.804(a).
Section 11.703 is not intended to prohibit a practitioner from
contacting representatives of inventor-run organizations or groups that
may be interested in establishing a group or prepaid legal plan for
their members, or insureds for the purpose of informing such entities
of the availability of and details concerning the plan or arrangement
which the practitioner or the practitioner's firm is willing to offer.
This form of communication is not directed to a prospective client.
Rather, it is usually addressed to an individual acting in a fiduciary
capacity seeking a supplier of legal services for others who may, if
they choose, become prospective clients of the practitioner. Under
these circumstances, the activity which the practitioner undertakes in
communicating with such representatives and the type of information
transmitted to the individual are functionally similar to and serve the
same purpose as advertising permitted under Sec. 11.702.
The requirement in Sec. 11.703(c) that certain communications be
marked ``Advertising Material'' does not apply to communications sent
in response to requests of potential clients or their spokespersons or
sponsors. General announcements by practitioners, including changes in
personnel or office location, do not constitute communications
soliciting professional employment from a client known to be in need of
legal services within the meaning of this section.
Paragraph (d) of Sec. 11.703 would permit, in conformity with
Rules of Professional Conduct adopted by state bars, a lawyer to
participate with an organization which uses personal contact to solicit
members for its group or prepaid legal service plan, provided that the
personal contact is not undertaken by any practitioner who would be a
provider of legal services through the plan. The organization referred
to in paragraph (d) must not be owned by or directed (whether as
manager or otherwise) by any practitioner or law firm that participates
in the plan. For example, paragraph (d) would not permit a lawyer to
create an organization controlled directly or indirectly by the
practitioner and use the organization for the in-person or telephone
solicitation of legal employment of the practitioner through
memberships in the plan or otherwise. The communication permitted by
these organizations also must not be directed to a person known to need
legal services in a particular matter, but is to be designed to inform
potential plan members generally of another means of affordable legal
services. Practitioners who participate in a legal service plan must
reasonably assure that the plan sponsors are in compliance with
Sec. Sec. 11.701, 11.702, and 11.703(b). See Sec. 11.804(a).
Section 11.704 would permit a practitioner to indicate areas of
practice in communications about the practitioner's services. If a
practitioner practices only in certain fields, or will not accept
matters except in a specified field or fields, the practitioner is
permitted to so indicate. A practitioner is generally permitted to
state that the practitioner is a ``specialist,'' practices a
``specialty,'' or ``specializes in'' particular fields, but such
communications are subject to the ``false and misleading'' standard
applied in Sec. 11.701 to communications concerning a practitioner's
services.
However, a practitioner may not communicate that the practitioner
has been recognized or certified as a specialist in a particular field
of law, except as provided by this section.
Paragraph (a) of Sec. 11.704 would continue the provisions of
current Sec. 10.31(c) proscribing a non-lawyer, e.g., a patent agent,
from holding himself/herself out as an attorney, lawyer, or member of a
bar; or as authorized to practice before the Office in trademark
matters unless authorized by Sec. 11.14(b).
Paragraph (b) of Sec. 11.704 would continue the provisions of
current Sec. 10.34(b) permitting a registered practitioner who is an
attorney to use the designation ``Patents,'' ``Patent Attorney,''
``Patent Lawyer,'' ``Registered Patent Attorney,'' or a substantially
similar designation.
[[Page 69501]]
Paragraph (c) of Sec. 11.704 would continue the procedure of
current Sec. 10.34(c) permitting a registered patent agent who is not
an attorney to use the designation ``Patents,'' ``Patent Agent,''
``Registered Patent Agent,'' or a substantially similar designation.
Section 11.705 would provide for firm names and letterheads. A firm
may be designated by the names of all or some of its members, by the
names of deceased members where there has been a continuing succession
in the firm's identity, or by a trade name such as the ABC Legal
Clinic. Although the United States Supreme Court has held that
legislation may prohibit the use of trade names in professional
practice, use of such names in law practice is acceptable so long as it
is not misleading. For example, if a private firm uses a trade name
that includes a geographical name such as Springfield Legal Clinic, an
express disclaimer that it is a public legal aid agency may be required
to avoid a misleading implication. It may be observed that any firm
name including the name of a deceased partner is, strictly speaking, a
trade name. The use of such names to designate law firms has proven a
useful means of identification. However, it is misleading to use the
name of a practitioner not associated with the firm or a predecessor of
the firm.
Paragraph (d) of Sec. 11.705 would provide that practitioners
sharing office facilities, but who are not in fact partners, may not
denominate themselves as, for example, Smith and Jones, for that title
suggests partnership in the practice of law.
Section 11.801 would impose the same duty to persons seeking
admission to a bar as well as to practitioners. Hence, if a person
makes a material false statement in connection with an application for
registration, it may be the basis for subsequent disciplinary action if
the person is admitted, and in any event may be relevant in a
subsequent admission application. The duty imposed by Sec. 11.801
applies to a practitioner's own admission or discipline as well as that
of others. Thus, it is a separate professional offense for a
practitioner knowingly to make a misrepresentation or omission in
connection with a disciplinary investigation of the practitioner's own
conduct. Section 11.801 also requires affirmative clarification of any
misunderstanding on the part of the admissions or disciplinary
authority of which the person involved becomes aware.
Section 11.801 is subject to the provisions of the Fifth Amendment
of the United States Constitution and corresponding provisions of state
constitutions. A person relying on such a provision in response to a
question, however, should do so openly and not use the right of
nondisclosure as a justification for failure to comply with this rule.
A practitioner representing an applicant for registration, or
representing another practitioner who is the subject of a disciplinary
inquiry or proceeding, is governed by the Rules applicable to the
client-practitioner relationship. For example, Sec. 11.106 may
prohibit disclosures, which would otherwise be required by a
practitioner serving in such representative capacity. Practitioners
representing an applicant or another practitioner must take steps to
reasonably assure compliance with Sec. Sec. 11.303(a)(1) and (2), and
11.804(c). See Lipman v. Dickinson, 174 F.3d 1363, 50 USPQ 2d 1490
(Fed. Cir. 1999).
Section 11.803 would require reporting a violation of the Rules of
Professional Conduct. Self-regulation of the legal profession requires
that members of the profession seek a disciplinary investigation when
they know of a violation of the Rules of Professional Conduct.
Practitioners have a similar obligation with respect to judicial
misconduct. An apparently isolated violation may indicate a pattern of
misconduct that only a disciplinary investigation can uncover.
Reporting a violation is especially important where the victim is
unlikely to discover the offense.
Consistent with the current rule, Sec. 10.24(a), a report about
misconduct is not required where it would involve violation of Sec.
11.106. However, a practitioner should encourage a client to consent to
disclosure where prosecution would not substantially prejudice the
client's interests.
If a practitioner were obliged to report every violation of the
Rules, the failure to report any violation would itself be a
professional offense. Such a requirement existed in many jurisdictions
but proved to be unenforceable. Section 11.803 would limit the
reporting obligation to those offenses that a self-regulating
profession must vigorously endeavor to prevent. A measure of judgment
is, therefore, required in complying with the provisions of this
section. The term ``substantial'' refers to the seriousness of the
possible offense and not the quantum of evidence of which the
practitioner is aware. A written communication describing the
substantial misconduct should be made to the OED Director where the
conduct is in connection with practice before the Office. Criminal
convictions in state or Federal courts, and disciplinary actions other
jurisdictions also should be communicated to the OED Director. A
practitioner who believes that another practitioner has a significant
problem of alcohol or other substance abuse affecting the latter
practitioner's practice before the Office, in addition to reporting the
matter to the OED Director, should also report the perceived situation
to a counseling committee, operated by the state bar, which assists
practitioners having such problems.
The duty to report professional misconduct does not apply to a
practitioner retained to represent a practitioner whose professional
conduct is in question. Such a situation is governed by the Rules
applicable to the client-practitioner relationship.
Paragraph (b) of Sec. 11.803 would provide for reporting knowledge
that an employee of the Office has committed a violation of applicable
Federal statute and rules adopted by the Office of Government Ethics
(OGE). However, not all such violations are reportable to the Office of
Enrollment and Discipline. For example, an Office employee who is not a
practitioner could not be subject to the imperative USPTO Rules of
Professional Conduct. Accordingly, violations of a Federal statute or
OGE-adopted rules should be reported to the appropriate authorities,
which do not include OED.
Paragraph (e) of Sec. 11.803 would provide for disciplining a
practitioner suspended or disbarred from practice as an attorney or
agent on ethical grounds by any duly constituted authority of the
United States (e.g., a Federal court or another agency), a State (e.g.,
a state supreme court), or a foreign authority in the case of a
practitioner residing in a foreign country (e.g., a foreign patent
office). Practitioners have been suspended or excluded from practice
before the Office following disbarment or suspension in a state. See In
re Davis, 982 Off. Gaz. 2 (May 1, 1979), aff'd sub nom., Davis v.
Commissioner, No. 80-1036 (D.C. Cir. Mar. 31, 1981), cert. denied, 454
U.S. 1090 (1981) (attorney excluded by USPTO following disbarment in
Minnesota for misconduct involving both patent and non-patent matters);
In re Hodgson, 1023 Off. Gaz. 13 (Oct. 12, 1982) (attorney excluded by
USPTO after disbarment in Virginia following criminal conviction); In
re Pattison, 1023 Off. Gaz. 13 (Oct. 12, 1982) (attorney excluded by
USPTO after disbarment in Maryland for misconduct involving patent and
non-patent matters); Attorney Grievance Commission (Maryland) v.
Pattison, 441 A.2d 328 (Md. 1982); Nakamura v.
[[Page 69502]]
Harper, 1062 Off. Gaz. 433 (Jan. 28, 1986) (attorney excluded by USPTO
after disbarment in Maryland for misconduct in patent and non-patent
matters addressed in Attorney Grievance Commission (Maryland) v.
Harper, 477 A.2d 756 (Md. 1984)); and In re Kraft, 954 Off. Gaz. 550
(Jan. 11, 1977), aff'd. sub nom., Kraft v. Commissioner, No. 77-0087
(D.D.C. Nov. 3, 1977) (attorney excluded by USPTO following suspension
in Idaho).
Paragraph (f) of Sec. 11.803 would define some, but not all, acts
that would constitute violations of paragraphs (a) through (e) of this
section. The USPTO believes that it would be helpful to practitioners
if some specific prohibitions were set out in the rules. The
prohibitions set out in paragraphs (1) through (4) of Sec. 11.803
represent violations that have occurred in the past or that the USPTO
specifically seeks to prevent. The specific acts set out in paragraph
(f) would not constitute a complete description of all acts in
violation of paragraphs (a) through (e).
Section 11.804 would continue the practice of providing for
discipline involving a variety of acts constituting misconduct.
Paragraph (b) of Sec. 11.804 would address many kinds of illegal
conduct reflecting adversely on fitness to practice law, such as
offenses involving fraud and the offense of willful failure to file an
income tax return. See In re Milmore, 196 USPQ 628 (Comm'r Pat. 1977)
(fraud on the Office); In re Donal E. McCarthy, 922 Off. Gaz. 2 (May
17, 1974) (income tax evasion); In re Edwin Crabtree, 1023 Trademark
Off. Gaz. 44 (Oct. 27 1987) (income tax evasion). However, some kinds
of offenses carry no such implication. Traditionally, the distinction
was drawn in terms of offenses involving ``moral turpitude.'' A current
regulation, 37 CFR 10.23(b)(3), proscribes ``illegal conduct involving
moral turpitude.'' That concept can be construed to include offenses
concerning some matters of personal morality, such as adultery and
comparable offenses, that have no specific connection to fitness for
the practice of law. Although a practitioner is personally answerable
to the entire criminal law, a practitioner should be professionally
answerable only for offenses that indicate lack of those
characteristics relevant to law practice. Offenses involving violence,
dishonesty, breach of trust, or serious interference with the
administration of justice are in that category. See, e.g., In re
Bernard Miller, 688 Off. Gaz. 1 (Nov. 2, 1954) (excluding attorney from
USPTO following conviction and incarceration, Miller v. State
(Oklahoma), 281 P.2d 441 (Crim. App. Okla. 1955)). A pattern of
repeated offenses, even ones of minor significance when considered
separately, can indicate indifference to legal obligation.
Paragraph (d) of Sec. 11.804, like Sec. 10.23(b)(5), would
prohibit conduct that ``is prejudicial to the administration of
justice.'' There is extensive case law on this standard, as set forth
below. Examples of these cases involve a practitioner's failure to
cooperate with the OED Director or Bar Counsel during an investigation.
A practitioner's failure to respond to investigative inquiries or Bar
Counsel's subpoenas may constitute misconduct. See Bovard v. Gould,
D96-02 http://www.uspto.gov/web/offices/com/sol/foia/oed/disc/D02.pdf
(Comm'r Pat 1997); In re Cope, 455 A.2d 1357 (D.C. 1983); In re Haupt,
444 A.2d 317 (D.C. 1982); In re Lieber, 442 A.2d 153 (D.C. 1982); In re
Whitlock, 441 A.2d 989 (D.C. 1982); In re Russell, 424 A.2d 1087 (D.C.
1980); In re Willcher, 404 A.2d 185 (D.C. 1979). Misconduct also may
arise from the failure to abide by agreements made with Bar Counsel.
See In re Harmon, M-79-81 (D.C. Dec. 14, 1981) (breaking promise to Bar
Counsel to offer complainant refund of fee or vigorous representation
constitutes conduct prejudicial to the administration of justice).
In the Office, a variety of conduct by practitioners has been found
to constitute conduct prejudicial to the administration of justice. For
example, such conduct includes a practitioner's destruction of a
maintenance fee reminder, payment of Office fees with checks drawn on
an overdrawn account, and settling a dispute with a former client by
precluding disclosure of a grievance to the Office. See Bovard v. Cole,
D95-01 (Comm'r Pat. 1995); Weiffenbach v. Maxon, D89-11 (Comm'r Pat.
1990); and In re Johnson, D2001-09, http://www.uspto.gov/web/offices/com/sol/foia/oed/discD25.pdf
(Comm'r Pat. 2001). In other
jurisdictions, a practitioner's failure to appear in court for a
scheduled hearing is another common form of conduct deemed prejudicial
to the administration of justice. See In re Evans, No. M-126-82 (D.C.
Dec. 18, 1982); In re Doud, Bar Docket No. 442-80 (Sept. 23, 1982); In
re Bush (Bush III), No. S-58-79/D/39/80 (D.C. Apr. 30, 1980); In re
Molovinsky, No. M-31-79 (D.C. Aug. 23, 1979). Similarly, failure to
obey court orders has been found to constitute misconduct under Sec.
11.804(d). See In re Whitlock, 441 A.2d 989-91 (D.C. 1982); In re
Brown, Bar Docket No. 222-78 (Aug. 4, 1978); and In re Bush (Bush I),
No. DP-22-75 (D.C. July 26, 1977).
While the above categories--failure to cooperate with Bar Counsel
and failure to obey court orders--encompass the major forms of
misconduct proscribed by Sec. 11.804(d), that provision would be
interpreted flexibly and includes any improper behavior of an analogous
nature. For example, the failure to turn over the assets of a
conservatorship to the court or to the successor conservator has been
held to be conduct ``prejudicial to the administration of justice.'' In
re Burka, 423 A.2d 181 (D.C. 1980). In Russell, 424 A.2d 1087 (D.C.
1980), the court found that failure to keep the Bar advised of
respondent's changes of address, after being warned to do so, was also
misconduct under that standard. And in In re Schattman, No. M-63-81
(D.C. June 2, 1981), it was held that a practitioner's giving a
worthless check in settlement of a claim against the practitioner by a
client was improper.
Paragraph (g) of Sec. 11.804 is based on 35 U.S.C. 32, and would
prohibit disreputable or gross misconduct. An example of a practitioner
being excluded for gross misconduct is found in In re Wedderburn, 1897
Dec. Comm'r. Pat. 77 (Comm'r Pat. 1897), mandamus denied sub nom.,
United States ex rel. Wedderburn v. Bliss, 1897 Dec. Comm'r. Pat. 750
(Sup.Ct. D.C. 1897), aff'd. 12 App. D.C. 485, 1898 Dec. Comm'r Pat. 413
(D.C. Cir. 1898).
Paragraph (h) of Sec. 11.804 would define some, but not all, acts
that would constitute violations of paragraphs (a) through (g) of this
section. The USPTO believes that it would be helpful to practitioners
if some specific prohibitions were set out in the rules. The
prohibitions set out in paragraphs (1) through (10) of Sec. 11.804
represent conduct that has occurred in the past or which the USPTO
specifically seeks to prevent. The specific acts set out in paragraph
(h) would not constitute a complete description of all acts in
violation of paragraphs (a) through (g).
Paragraph (h)(1) of Sec. 11.804, for example, would proscribe
knowingly giving false or misleading information or knowingly
participating in a material way in giving false or misleading
information, to a client in connection with any immediate, prospective,
or pending business before the Office.
Paragraph (h)(2) of Sec. 11.804 would include as misconduct
representing before the Office in a patent case either a joint venture
comprising an inventor and an invention promoter or an inventor
referred to the registered practitioner by an invention promoter. One
requirement for the misconduct to obtain is that the registered
practitioner know, or be advised by the Office, that
[[Page 69503]]
a formal complaint has been filed by a Federal or state agency, that
the complaint is based on any violation of any law relating to
securities, unfair methods of competition, unfair or deceptive acts or
practices, mail fraud, or other civil or criminal conduct, and the
complaint is pending before a Federal or state court or Federal or
state agency, or has been resolved unfavorably by such court or agency,
against the invention promoter in connection with invention development
services. Another requirement is that the informed or advised
registered practitioner fails to fully advise the inventor of the
existence of the pending complaint or unfavorable resolution thereof
prior to undertaking or continuing representation of the joint venture
or inventor. The Federal Trade Commission, Securities and Exchange
Commission, and the U.S. Department of Justice are Federal agencies
empowered to investigate and file charges included within the scope of
the proposed rule. See Securities and Exchange Commission v. Lawrence
Peska Associates, Inc., Civil Action 77-2436 (S.D. Fla., Filed: Aug. 8,
1977); United States v. Beecroft, 608 F.2d 753 (9th Cir. 1979)
(upholding mail fraud convictions of defendant officers of a company
which helped inventors promote and market their ideas).
Attorneys General in state agencies also can file charges arising
from actions that may also constitute violations of consumer protection
laws within the scope of the proposed rules. See, e.g., Thomas,
Invention Development Service and Inventors: Recent Inroads on Caveat
Inventors, 60 J. Pat. Off. Soc'y. 355, 376 n. 75 (1978); Shemin, Idea
Promoter Control: The Time Has Come, 60 J. Pat. Off. Soc'y. 261, 262
n.7 (1978); and Illinois v. Lawrence Peska Associates, Inc., Civil
Action No. 77CH 3771 (Cir.Ct. Cook Cty June 8, 1977). Similarly, a
practitioner who represented an inventor referred by an invention
promoter, and knew or should have known that the invention promoter was
charged by the FTC with engaging in unfair or deceptive acts or
practices, could be subject to disciplinary action under the proposed
rule if the practitioner does not advise the inventor of the existence
of the charges.
In using ``invention promoter'' and ``invention marketing and
promotion services,'' the proposed rule applies the definitions used in
Sec. 11.1.
Paragraph (h)(7) of Sec. 11.804 would provide that a practitioner
may not accept or use the assistance from an Office employee in the
presentation or prosecution of an application except to the extent that
the employee may lawfully participate in an official capacity. The
proposed rule would cover not only situations where an Office employee,
such as a patent examiner or other person, is paid for their
assistance, but also where the employee is not paid for their
assistance. Thus, where claims in an application are rejected over a
reference that is in a foreign language, a practitioner may not engage
a person, employed by the Office, to translate the reference and use
the translation to traverse the rejection. Moreover, the proposed rule
would not be limited to situations involving bribery, and would not
require a conviction for bribery.
Paragraph (i) of Sec. 11.804 would provide that a practitioner who
acts with reckless indifference to whether a representation is true or
false would be chargeable with knowledge of its falsity. Likewise,
deceitful statements of half-truths or concealment of material facts
shall be deemed actual fraud within the meaning of this part. See,
e.g., United States v. Beecroft, 608 F.2d 753 (9th Cir. 1979).
Section 11.805 would provide a practitioner and other persons
practicing before the Office with guidance that he or she would be
subject to the disciplinary authority and rules of the USPTO. Paragraph
(a) of Sec. 11.805 restate long-standing law. The USPTO Director has
statutory, 35 U.S.C. 2(b)(2)(D), and inherent authority to adopt rules
regulating the practice of attorneys and other persons before the USPTO
in patent, trademark, and non-patent law. The USPTO, like other
Government agencies, has inherent authority to regulate who may
practice before it as attorneys, including the authority to discipline
attorneys. See Goldsmith v. U.S. Board of Tax Appeals, 270 U.S. 117
(1926); Herman v. Dulles, 205 F.2d 715 (D.C. Cir. 1953), and Koden v.
U.S. Department of Justice, 564 F.2d 228 (7th Cir. 1977). Courts have
affirmed that Congress, through the Administrative Procedure Act, 5
U.S.C. 500, did not limit the inherent power of agencies to discipline
professionals who appear or practice before them. See Polydoroff v.
ICC, 773 F.2d 372 (D.C. Cir. 1985); Touche Ross & Co. v. SEC, 609 F.2d
570 (2d Cir. 1979).
A practitioner may be potentially subject to more than one set of
rules of professional conduct which impose different obligations. The
registered patent attorney would be licensed to practice in more than
one jurisdiction, i.e., the Office and at least one state. The rules of
professional conduct may differ between these jurisdictions. A
practitioner may be admitted to practice before a particular court with
rules that differ from those of the Office or other jurisdictions in
which the practitioner is licensed to practice. In the past, decisions
have not developed clear or consistent guidance as to which rules apply
in such circumstances.
Paragraph (b) of Sec. 11.805 seeks to resolve such potential
conflicts. Its premise would be that minimizing conflicts between
rules, as well as uncertainty about which rules are applicable, is in
the best interest of both clients and the profession (as well as the
bodies having authority to regulate the profession). Accordingly, it
takes the approach of (i) providing that any particular conduct of a
practitioner shall be subject to only one set of rules of professional
conduct, and (ii) making the determination of which set of rules
applies to particular conduct as straightforward as possible,
consistent with recognition of appropriate regulatory interests of
relevant jurisdictions.
Paragraph (b)(1) of Sec. 11.805 would provide that as to a
practitioner's conduct relating to practice before the Office, where
the practitioner is registered or recognized to practice (either
generally or granted limited recognition), the practitioner would be
subject to the rules of the Office Rules of Professional Conduct.
Paragraph (b)(2) of Sec. 11.805 would provide that as to a
practitioner's conduct relating to a proceeding in or before a court
before which the practitioner is admitted to practice (either generally
or pro hac vice), the practitioner would be subject only to the rules
of professional conduct of that court. As to all other conduct, Sec.
11.805(b) would provide that a practitioner recognized to practice
before the Office would be subject to the rules of the Office in regard
to conduct occurring in connection with practice before the Office. The
rule also would provide that a practitioner recognized to practice
before the Office practicing in multiple jurisdictions would be subject
only to the rules of the jurisdiction where he or she (as an
individual, not his or her firm) principally practices, but with one
exception: if particular conduct clearly has its predominant effect in
another admitting jurisdiction, then only the rules of that
jurisdiction shall apply. The intention is for the latter exception to
be a narrow one. It would be appropriately applied, for example, to a
situation in which a practitioner admitted in, and principally
practicing in, State A, but also admitted in State B, handled an
acquisition by a company whose headquarters and operations were in
State B of another,
[[Page 69504]]
similar to such company. The exception would not appropriately be
applied, on the other hand, if the practitioner handled an acquisition
by a company whose headquarters and operations were in State A of a
company whose headquarters and main operations were in State A, but
which also had some operations in State B.
If two admitting jurisdictions were to proceed against a
practitioner for the same conduct, they should, applying this rule,
identify the same governing ethics rules. They should take all
appropriate steps to see that they do apply the same rule to the same
conduct, and in all events should avoid proceeding against a
practitioner on the basis of two inconsistent rules.
If an attorney admitted in State A also is a registered
practitioner, the practitioner may view that he or she is subject to
possibly different ethical obligations under State and Office rules
regarding disclosure of prior art references. Typically, this obtains
in patent matters where the practitioner is informed by the client of
the existence of a prior reference that appears to the practitioner to
be material to the patentability of the client's patent application,
but the client believes the reference is not directly relevant to the
invention, and does not want to disclose the reference to the Office.
The practitioner is engaged in practicing before the Office. It would
be appropriate to apply Sec. 11.805(b) and follow the Office rules,
Sec. Sec. 1.56 and 11.106(c), requiring disclosure of information
material to the patentability of a claimed invention. See Formal
Opinion 96-12, Professional Guidance Committee of the Philadelphia Bar
Association (1996).
The choice of law provision is not intended to apply to practice
abroad.
Section 11.806 would address sexual relations with clients,
employees, and third persons.
Paragraph (a) of Sec. 11.806 would define ``sexual relations'' as
intercourse or touching another person for the purpose of sexual
arousal, sexual gratification, or sexual abuse. Paragraph (b)(1) of
Sec. 11.806 would proscribe a practitioner from requiring sexual
relations with a client or third party incident to or as a condition of
any professional representation. Paragraph (b)(2) of Sec. 11.806 would
proscribe sexual relations with an employee incident to or as a
condition of employment. Under paragraph (b)(3) of Sec. 11.806, use of
coercion, intimidation, or undue influence in entering into sexual
relations with a client, or employee is proscribed.
Paragraph (c) of Sec. 11.806. Under paragraph (c) of Sec. 11.806,
the regulation would not apply to sexual relations between
practitioners and their spouses or to ongoing consensual sexual
relationships predating the practitioner-client relationship or
practitioner-employee relationship.
Paragraph (d) of Sec. 11.806. Under paragraph (d) of Sec. 11.806,
practitioners in the firm would not be subject to discipline solely
because a practitioner in the firm has sexual relations with a client
but the practitioner does not participate in the representation of that
client.
Table 1.--Principal Source of Sections 11.1 Through 11.18
----------------------------------------------------------------------------------------------------------------
Section Source Part 10 concordance
----------------------------------------------------------------------------------------------------------------
Sec. 11.1.......................... 37 CFR 10.1............. Sec. 10.1
MRPR
Sec. 11.2.......................... 37 CFR 10.2............. Sec. 10.2
DC RULE XI, Sec. 6
Sec. 11.3.......................... 37 CFR 10.170........... Sec. 10.170
Sec. 11.4.......................... 37 CFR 10.3............. Sec. 10.3
Sec. 11.5.......................... 37 CFR 10.5............. Sec. 10.5
Sec. 11.6.......................... 37 CFR 10.6............. Sec. 10.6
Sec. 11.7(a)(b).................... 37 CFR 10.7(a).......... Sec. 10.7(a)
Sec. 11.7(b)(1).................... 37 CFR 10.7(b).......... Sec. 10.7(b)
Sec. 11.7(b)(2).................... New..................... None
37 CFR 1.8 and 1.10..... None
Sec. 11.7(c)....................... Case law................ None
RDCCA 46(12)(ii), third
sentence
Sec. 11.7(d)....................... New..................... Sec. 10.7(b)
Sec. 11.7(e)....................... New..................... None
Sec. 11.7(f)....................... 37 CFR 10.6(c).......... Sec. 10.6(c)
37 CFR 10.7(b).......... Sec. 10.7(b)
Sec. 11.7(g)....................... 37 CFR 10.7(a).......... Sec. 10.7(a)
Sec. 11.7(h)....................... Case law................ None
California State Bar None
Policy.
FlaRSC 2-13............. None
GaSCR Part A, Sec. 11. None
MoSCR 8.05.............. None
Sec. 11.7(i)....................... California State Bar None
Policy.
Sec. 11.7(j)....................... RDCCA 46(f)-(g)......... None
Willner v. Comm. on
Character & Fitness,
373 U.S. 96 (1963)
Sec. 11.7(k)....................... Colo. Rule 201.12....... None
Sec. 11.8(a)....................... RDCCA 46(b)(10)......... None
Sec. 11.8(b)-(c)................... RDCCA 46(h)(2), (3)..... None
Sec. 11.8(d)....................... OGVSB Rule 11........... None
Sec. 11.9(a)-(c)................... 37 CFR 10.9(a)-(c)...... Sec. 10.9
Sec. 11.10(a)...................... 37 CFR 10.10(a)......... Sec. 10.10
Sec. 11.10(b)...................... 5 CFR 2637.201.......... Sec. 10.10(b)
5 CFR 2637.202.......... Sec. 10.10(b)
Sec. 11.10(c)...................... 5 CFR 2637.201.......... None
5 CFR 2637.202.......... None
Sec. 11.10(d)-(e).................. 37 CFR 10.10(c)-(d)..... Sec. 10.10(c)-(d)
Sec. 11.11(a)...................... 37 CFR 10.11(a)......... Sec. 10.11(a)
[[Page 69505]]
Sec. 11.11(b)...................... OGVSB Rule 19........... None
Sec. 11.11(c)...................... New..................... None
Sec. 11.11(d)...................... New..................... None
Sec. 11.11(e)-(f).................. 1064 Off.Gaz.12......... None
Sec. 11.12(a)-(d).................. OGVSB Rule 17........... None
Sec. 11.12(e)...................... OGVSB Rule 19........... None
Sec. 11.13......................... OGVSB Rule 17........... None
Sec. 11.14......................... 37 CFR 10.14............ Sec. 10.14
Sec. 11.15......................... 37 CFR 10.15............ Sec. 10.15
Sec. 11.16......................... New..................... None
Sec. 11.17 [Reserved]
Sec. 11.18......................... 37 CFR 10.18............ Sec. 10.18
FRCP 11
----------------------------------------------------------------------------------------------------------------
Abbreviations:
Colo. Rule means Rules Governing Admission to the Bar of the State of Colorado (March 23, 2000).
DC RULE XI means Rule XI of the Rules Governing the District of Columbia Bar.
FlaLRSC 2-13 means Rule 2-13 of the Florida Rules of the Supreme Court Relating to Admissions to the Bar.
GaSCR Part A, Sec. 11 means Part A, Rule 11 of the Georgia Supreme Court Rules Governing Admission to the
Practice of Law.
MoSCR 8.05 means Rule 8.05 of the Missouri Supreme Court Rules Governing Admission to the Bar in Missouri.
RDCCA means Rules of the District of Columbia Court of Appeals.
OGVSB means Organization & Government of the Virginia State Bar.
Table 2.--Principal Source of Sections 11.19 Through 11.62
----------------------------------------------------------------------------------------------------------------
Section Source Part 10 concordance
----------------------------------------------------------------------------------------------------------------
Sec. 11.19......................... DC RULE XI.............. Sec. 10.1, 10.2
37 CFR 10.130........... Sec. 10.130
Sec. 11.20......................... DC RULE XI, Sec. 3.... None
Sec. 11.21......................... DC BPR Chap. 6.......... None
Sec. 11.22......................... DC BPR Chap. 2.......... None
Sec. 11.23......................... 37 CFR 10.4............. Sec. 10.4
Sec. 11.24......................... DC BPR Chap. 10......... None
Sec. 11.25......................... DC BPR Chap. 8.......... None
Calif. Sec. 6102(d)... None
Sec. 11.26......................... DC BPR Chap............. None
Sec. 11.27......................... 37 CFR 10.133........... Sec. 10.133
DC BPR Chap.15
Sec. 11.28......................... DC BPR Chap. 14......... None
DC RULE XI, Sec. 13
Sec. Sec. 11.29-11.31 [Reserved]
Sec. 11.32......................... 37 CFR 10.132........... Sec. 10.132
Sec. 11.33 [Reserved]
Sec. 11.34......................... 37 CFR 10.134........... Sec. 10.134
Sec. 11.35......................... 37 CFR 10.135........... Sec. 10.135
Sec. 11.36......................... 37 CFR 10.136........... Sec. 10.136
Sec. 11.37......................... 37 CFR 10.137........... Sec. 10.137
Sec. 11.38......................... 37 CFR 10.138........... Sec. 10.138
Sec. 11.39......................... 37 CFR 10.139........... Sec. 10.139
Sec. 11.40......................... 37 CFR 10.140........... Sec. 10.140
Sec. 11.41......................... 37 CFR 10.141........... Sec. 10.141
Sec. 11.42......................... 37 CFR 10.142........... Sec. 10.142
Sec. 11.43......................... 37 CFR 10.143........... Sec. 10.143
Sec. 11.44......................... 37 CFR 10.144........... Sec. 10.144
Sec. 11.45......................... 37 CFR 10.145........... Sec. 10.145
Sec. Sec. 11.46-11.48 [Reserved]
Sec. 11.49......................... 37 CFR 10.149........... Sec. 10.149
Sec. 11.50......................... 37 CFR 10.150........... Sec. 10.150
Sec. 11.51......................... 37 CFR 10.151........... Sec. 10.151
Sec. 11.52......................... 37 CFR 10.152........... Sec. 10.152
Sec. 11.53......................... 37 CFR 10.153........... Sec. 10.153
Sec. 11.54......................... 37 CFR 10.154........... Sec. 10.154
Sec. 11.55(a)...................... 37 CFR 10.155(a)........ Sec. 10.155(a)
FRAP Rule 28
Sec. 11.55(b)...................... FRAP Rule 28............ None
FRAP Rule 32(a)(4), and
(7)
FRAP Rule 32(a)(4), (5)
and (6)
Sec. 11.55(c)-(e).................. 37 CFR 10.155(b)-(d).... Sec. 10.155(b)-(d)
Sec. 11.56......................... 37 CFR 10.157........... Sec. 10.157
Sec. 11.58......................... 37 CFR 10.158........... Sec. 10.158
DC Rule XI, Sec. 14
Calif. Rule 955
[[Page 69506]]
Sec. 11.59......................... 37 CFR 10.159........... Sec. 10.159
Sec. 11.60......................... 37 CFR 10.160........... Sec. 10.160
DC RULE XI, Sec. 16
DC BPR Chap. 9
Sec. 11.61......................... 37 CFR 10.161........... Sec. 10.161
Sec. 11.62......................... New
----------------------------------------------------------------------------------------------------------------
Abbreviations:
DC RULE XI means Rule XI of the Rules Governing the District of Columbia Bar (1999).
DC BPR means Rules of the District of Columbia Court of Appeals Board of Professional Conduct (1999).
Calif. Rule means California Bar Rule.
Calif Sec. 6102(d) means Article 6, Sec. 6102(d) of the California State Bar Act.
FRAP means Federal Rules of Appellate Procedure.
Table 3.--Principal Source of Sections 11.100 Through 11.806
----------------------------------------------------------------------------------------------------------------
Section Source Part 10 concordance
----------------------------------------------------------------------------------------------------------------
Competence:
Sec. 11.101(a)................. MRPR 1.1................ Sec. 10.77(a)
Sec. 11.101(b)................. DCRPR 1.1b.............. None
Sec. 11.101(c)(1).............. Sec. 10.23(c)(7)...... Sec. 10.23(c)(7)
Sec. 11.101(c)(2).............. Sec. 10.23(c)(13)..... Sec. 10.23(c)(13)
Sec. 11.101(c)(3).............. Sec. 10.23(c)(19)..... Sec. 10.23(c)(19)
Sec. 11.101(c)(4).............. Sec. 10.23(c)(20)..... Sec. 10.23(c)(20)
Scope of Representation:
Sec. 11.102(a)................. MRPR 1.2(a)............. Sec. 10.84(a)(1)
Sec. 11.102(b)................. MRPR 1.2(b)............. None
Sec. 11.102(c)................. MRPR 1.2(c)............. Sec. 10.84(b)
Sec. 11.102(d)................. MRPR 1.2(d)............. Sec. 10.85(a)(6)(7)(8)
Sec. 10.89
Sec. 11.102(e)................. MRPR 1.2(e)............. Sec. 10.40(c)(1)(iii)
Sec. 10.111(c)
Sec. 11.102(f)................. DCRPR 1.2(d)............ None
Diligence:
Sec. 11.103(a)................. MRPR 1.3................ Sec. 10.77(c)
Sec. 10.84(a)(1), (3)
Sec. 11.103(b)-(c)............. New..................... Sec. 10.77(c)
Sec. 10.84(a)(1), (3)
Communication:
Sec. 11.104(a)................. MRPR 1.4(a)............. Sec. 10.77(c)
Sec. 10.84(a)(1)(3)
Sec. 11.104(b)................. MRPR 1.4(b)............. None
Sec. 11.104(c)................. DCRPR 1.4(c)............ None
Sec. 11.104(d)(1).............. 10.23(c)(8)............. Sec. 10.23(c)(8)
Fees:
Sec. 11.105(a)................. MRPR 1.5(a)............. Sec. 10.36(a)(b)
Sec. 11.105(b)-(c)............. MRPR 1.5(b)-(c)......... None
Sec. 11.105(e)(1).............. MRPR 1.5(e)(1).......... Sec. 10.37(a)
Sec. 11.105(e)(2)-(4).......... DCRPR 1.5(e)(2)-(4)..... Sec. 10.37(a)
Sec. 11.105(f)................. MRPR 1.5(f)............. None
Confidentiality:
Sec. 11.106(a)(1).............. MRPR 1.6(a)............. Sec. 10.57(a)(b)(c)
Sec. 11.106(a)(2)-(3).......... DCRPR 1.6............... Sec. 10.57(a)(b)(c)
Sec. 11.106(b)(1).............. MRPR 1.6(b)(2).......... Sec. 10.57(c)(4)
Sec. 11.106(b)(2).............. MRPR 1.6(b)(2).......... None
Sec. 11.106(c)................. 37 CFR 1.56............. None
Sec. 11.106(d)-(h)............. DCRPR 1.6............... None
Conflicts of Interest:
Sec. 11.107(a)................. MRPR 1.7................ Sec. 10.62(a)
Sec. 10.66(a)(b)
Sec. 10.68(b)
Sec. 11.107(b)&(b)(1).......... MRPR 1.7................ Sec. 10.62(a)(b)
Sec. 10.63
Sec. 10.65(a)
Sec. 10.66(a)(b)(c)
Sec. 10.68(a)
Sec. 11.107(b)(2).............. MRPR 1.7................ None
Prohibited Transactions:
Sec. 11.108(a)................. MRPR 1.8(a)............. Sec. 10.65(a)
Sec. 11.108(b)................. MRPR 1.8(b)............. Sec. 10.57(b)
Sec. 11.108(c)................. MRPR 1.8(c)............. None
Sec. 11.108(d)................. MRPR 1.8(d)............. None
[[Page 69507]]
Sec. 11.108(e)................. MRPR 1.8(e)............. Sec. 10.64(b)
Sec. 11.108(f)................. MRPR 1.8(f)............. Sec. 10.68(a)(b)
Sec. 11.108(f)(1)(ii).......... New..................... None
Sec. 11.108(g)................. MRPR 1.8(g)............. Sec. 10.67(a)
Sec. 11.108(h)................. MRPR 1.8(h)............. Sec. 10.63(a)
Sec. 11.108(i)................. MRPR 1.8(i)............. None
Sec. 11.108(j)................. MRPR 1.8(j)............. Sec. 10.62(a)
Sec. 10.64(a)
35 U.S.C. 4
Sec. 11.108(k)................. New..................... None
Former Client:
Sec. 11.109(a)................. MRPR 1.9(a)............. Sec. 10.66(c)
Sec. 11.109 (b)................ MRPR 1.9(b)............. None
Sec. 11.109 (c)................ MRPR 1.9(c)............. None
Imputed Disqualification:
Sec. 11.110(a)................. MRPR 1.10(a)............ Sec. 10.66(d)
Sec. 11.110(b)................. MRPR 1.10(b)............ Sec. 10.66(d)
Sec. 11.110(c)................. MRPR 1.10(c)............ Sec. 10.66(a)
Government/Private:
Sec. 11.111(a)................. MRPR 1.11(a)............ Sec. 10.111(b)
Sec. 11.111(b)................. MRPR 1.11(b)............ None
Sec. 11.111(c)................. MRPR 1.11(c)............ None
Sec. 11.111(d)................. MRPR 1.11(d)............ None
Sec. 11.111(e)................. MRPR 1.11(e)............ None
Former Judge:
Sec. 11.112(a)(b).............. MRPR 1.12(a)(b)......... Sec. 10.111(a)(b)
Sec. 11.112(c)................. MRPR 1.12(c)............ Sec. 10.66(d)
Sec. 11.112(d)................. MRPR 1.12(d)............ None
Organization as Client:
Sec. 11.113(a)................. MRPR 1.13(a)............ None
Sec. 11.113(b)................. MRPR 13(b).............. Sec. 10.68(b)
Sec. 11.113(c)................. MRPR 1.13(c)............ Sec. 10.66(d)
Sec. 10.68(b)
Sec. 11.113(d)................. MRPR 1.13(d)............ None
Sec. 11.113(e)................. MRPR 13(e).............. Sec. 10.66(b)(c)
Disabled Client:
Sec. 11.114.................... MRPR 1.14............... None
Safekeeping of Property:
Sec. 11.115(a)................. VRPC 1.15(a)............ Sec. 10.112(a)
Sec. 11.115(b)................. New..................... None
Sec. 11.115(c)................. VRPC 1.15(b)............ Sec. 10.112(b)(2)
Sec. 11.115(d)................. VRPC 1.15(c)............ Sec. 10.112(c)
Sec. 11.115(e)-(f)............. VRPC 1.15(d)-(e)........ Sec. 10.112(c)(3)
Sec. 11.115(g)................. VRCP 1.15(f)............ None
Sec. 11.115(h)-(i)............. Sec. 10.23(c)(3)...... Sec. 10.23(c)(3)
Declining/Terminating Representation:
Sec. 11.116(a)(1).............. MRPR 1.16(a)(1)......... Sec. 10.39
Sec. 10.40(b)(1)(2)
Sec. 11.116(a)(2).............. MRPR 1.16(a)(2)......... Sec. 10.40(b)(3)
Sec. 10.40(c)(4)
Sec. 11.116(a)(3).............. MRPR 1.16(a)(3)......... Sec. 10.40(b)(4)
Sec. 11.116(b)(1).............. MRPR 1.16(b)(1)......... Sec. 10.40(c)(1)(ii)(iii)
Sec. 10.40(c)(2)
Sec. 11.116(b)(2).............. MRPR 1.16(b)(2)......... Sec. 10.40(c)(1)(iv)
Sec. 11.116(b)(3).............. MRPR 1.16(b)(3)......... Sec. 10.40(c)(1)(vi)(ix)(x)
Sec. 11.116(b)(5).............. MRPR 1.16(b)(5)......... Sec. 10.40(c)(1)(iv)(v)
Sec. 11.116(b)(6).............. MRPR 1.16(b)(6)......... Sec. 10.40(c)(6)
Sec. 11.116(c)................. MRPR 1.16(c)............ Sec. 10.40(a)
Sec. 11.116(d)................. MRPR 1.16(d)............ Sec. 10.40(a)
Sale of Practice:
Sec. 11.117.................... MRPR 1.17............... None
Sec. Sec. 11.118-11.200
[Reserved]
Advisor:
Sec. 11.201(a)................. MRPR 2.1(a)............. Sec. 10.68(b)
Sec. 11.201(b)................. New..................... None
Intermediary:
Sec. 11.202(a)(1).............. MRPR 2.2(a)(1).......... Sec. 10.66(a)(c)
Sec. 11.202(a)(2).............. MRPR 2.2(a)(2).......... Sec. 10.66(a)(c)
Sec. 11.202(a)(3).............. MRPR 2.2(a)(3).......... Sec. 10.66(a)(c)
Sec. 11.202(b)................. New..................... None
Sec. 11.202(c)................. MRPR 2.2(b)............. None
Sec. 11.202(c)................. MRPR 2.2(c)............. Sec. 10.66(b)(c)
[[Page 69508]]
Evaluation for Third Party:
Sec. 11.203.................... MRPR 2.3................ None
Sec. Sec. 11.204-11.300
[Reserved]
Meritorious Claim:
Sec. 11.301.................... MRPR 3.1................ Sec. 10.63(a)(b)
Sec. 10.39(a)(b)
Sec. 10.85(a)(1)(2)
Expediting Litigation:
Sec. 11.302(a)................. MRPR 3.2................ Sec. 10.23(b)(5)
Sec. 10.84(a)(1)(2)
Sec. 11.302(b)................. DCRPR 3.2(a)............ None
Candor:
Sec. 11.303(a)(1).............. MRPR 3.3(a)(1).......... Sec. 10.23(b)(4)(5)
Sec. 10.85(a)(4)(5)
Sec. 11.303(a)(2).............. MRPR 3.3(a)(2).......... Sec. 10.23(b)(4)(5)
Sec. 10.85(a)(3)
Sec. 10.85(b)(1)
Sec. 10.92(a)
Sec. 11.303(a)(3).............. MRPR 3.3(a)(3).......... Sec. 10.85(a)(5)
Sec. 10.89(b)(1)
Sec. 11.303(a)(4).............. MRPR 3.3(a)(4).......... Sec. 10.23(b)(4)(5)
Sec. 10.85(a)(7)
Sec. 10.85(b)(1)
Sec. 11.303(b)................. MRPR 3.3(b)............. Sec. 10.85(b)
Sec. 11.303(c)(d).............. MRPR 3.3(c)(d).......... None
Sec. 11.303(e)(1).............. Sec. 10.23(c)(9)...... Sec. 10.23(c)(9)
Sec. 11.303(e)(2).............. Sec. 10.23(c)(10)..... Sec. 10.23(c)(10)
Sec. 11.303(e)(3).............. Sec. 10.23(c)(11)..... Sec. 10.23(c)(11)
Sec. 11.303(e)(4).............. Sec. 10.23(c)(15)..... Sec. 10.23(c)(15)
Sec. 11.303(c)(5).............. Sec. 10.23(c)(2)(ii).. Sec. 10.23(c)(2)(ii)
Fairness:
Sec. 11.304(a)................. MRPR 3.4(a)............. Sec. 10.23(b)(4)(5)
Sec. 10.89(c)(6)
MRPR 3.4(b)............. Sec. 10.23(b)(4)(5)(6)
Sec. 10.85(a)(6)
Sec. 10.92(c)
Sec. 11.304(c)................. MRPR 3.4(c)............. Sec. 10.23(b)(5)
Sec. 10.89(a)
Sec. 10.89(c)(5)(7)
Sec. 11.304(d)................. MRPR 3.4(d)............. Sec. 10.23(b)(5)
Sec. 10.89(a)
Sec. 10.89(c)(6)
Sec. 11.304(e)................. MRPR 3.4(e)............. Sec. 10.23(b)(5)
Sec. 10.89(c)(1)(2)(3)(4)
Impartiality:
Sec. 11.305(a)................. MRPR 3.5(a)............. Sec. 10.89
Sec. 10.92
Sec. 10.101(a)
Sec. 11.305(b)................. MRPR 3.5(b)............. None
Sec. 11.305(c)................. MRPR 3.5(c)............. Sec. 10.84(a)
Sec. 10.89(c)(5)
Sec. 11.305(d)(1).............. Sec. 10.23(c)(4)...... Sec. 10.23(c)(4)
Trial Publicity:
Sec. 11.306 [Reserved]
Practitioner as Witness:
Sec. 11.307(a)................. MRPR 3.7(a)............. Sec. 10.62(b)(1)(2)
Sec. 10.63
Sec. 11.307(b)................. MRPR 3.7(b)............. Sec. 10.62(b)
Sec. 10.63
Sec. 11.308 [Reserved]
Advocate on Nonjudicial Proceeding:
Sec. 11.309.................... MRPR 3.9................ Sec. 10.89(b)(2)
Sec. 10.111(c)
Sec. Sec. 11.310-11.400
[Reserved]
Truthfulness to Others:
Sec. 11.401.................... MRPR 4.1................ Sec. 10.85(a)(3)(4)(5)(7)
Sec. 10.85(b)
Communication between practitioner
and opposing parties:
Sec. 11.402(a)................. MRPR 4.2(a)............. Sec. 10.87(a)
Sec. 11.402(b)-(d)............. DCRPR 4.2(b)-(d)........ None
Dealing with unrepresented person:
[[Page 69509]]
Sec. 11.403.................... MRPR 4.3................ Sec. 10.87(a)
Respect for rights of third persons:
Sec. 11.404.................... MRPR 4.4................ Sec. 10.84(a)(1)
Sec. 10.85(a)(1)
Sec. 10.89(c)(2)
Sec. Sec. 11.405-11.500
[Reserved]
Responsibilities of a partner or
supervisory practitioner:
Sec. 11.501(a)-(b)............. MRPR 5.1(a)-(b)......... Sec. 10.57(d)
Sec. 11.501(c)................. MRPR 5.1(c)............. Sec. 10.23(b)(2)
Responsibilities of a subordinate
practitioner:
Sec. 11.502.................... MRPR 5.2................ None
Responsibilities regarding
nonpractitioner assistants:
Sec. 11.503(a)................. MRPR 5.3(a)............. Sec. 10.57(d)
Sec. 11.503(b)................. MRPR 5.3(b)............. Sec. 10.23(b)
Sec. 11.503(c)................. MRPR 5.3(c)............. None
Professional independence of a
practitioner:
Sec. 11.504(a)................. MRPR 5.4(a)............. Sec. 10.48(a)
Sec. 11.504(b)................. MRPR 5.4(c)............. Sec. 10.68(b)
Sec. 11.504(d)................. MRPR 5.4(d)............. Sec. 10.68(c)
Unauthorized practice of law:
Sec. 11.505(a)................. MRPR 5.5(a)............. Sec. 10.47(a)
Sec. 10.14(d)
Sec. 11.505(b)................. MRPR 5.5(b)............. Sec. 10.47(a)
Sec. 11.505(c)................. Sec. 10.47(a)......... Sec. 10.47(a)
Sec. 11.505(d)................. Sec. 10.47(b)......... Sec. 10.47(b)
Sec. 10.23(c)(6)
Sec. 11.505(e)................. New..................... Sec. 10.14(b)
Sec. 11.505(f)................. Sec. 10.47(b)......... Sec. 10.47(b)
Restrictions on right to practice:
Sec. 11.506(a)-(b)............. MRPR 5.6................ Sec. 10.38
Responsibilities regarding law-
related services:
Sec. 11.507(a)(1)(2)........... MRPR 5.7(a)(1)(2)....... None
Sec. 11.507(a)(3).............. New..................... None
Sec. 11.507(b)................. MRPR 5.7(b)............. None
Sec. Sec. 11.508-11.600
[Reserved]
Pro Bono Publico service:
Sec. 11.601.................... DCRPR 6.1............... None
Accepting appointments:
Sec. 11.602.................... MRPR 6.2................ None
Membership in legal services
organization:
Sec. 11.603.................... MRPR 6.3................ None
Sec. 11.604.................... ........................ Sec. 10.32(a)
Sec. Sec. 11.605-11.700
[Reserved]
Law reform activities:
Sec. 11.701(b)(1)-(4).......... DCRPR 7.1(b)............ Sec. 10.111(c)
Sec. 11.701(b)(5).............. New..................... None
Sec. 11.701(c)................. DCRPR 7.1(c)............ Sec. 10.33
Sec. 11.701(d)-(e)............. New..................... Sec. 10.31(a)-(b)
Advertising:
Sec. 11.702(a)................. MRPR 7.2(a)............. Sec. 10.32(a)
Sec. 11.702(b)................. MRPR 7.2(b)............. None
Sec. 11.702(c)................. MRPR 7.2(c)............. Sec. 10.32(b)
Sec. 11.702(d)................. MRPR 7.2(d)............. None
Sec. 11.702(e)................. New..................... Sec. 10.32(c)
Direct contact with prospective
clients:
Sec. 11.703(a)................. MRPR 7.3(a)............. Sec. 10.33
Sec. 11.703(b)-(d)............. MRPR 7.3(b)-(d)......... None
Communication of fields of practice
and certification:
Sec. 11.704.................... MRPR 7.4................ None
Sec. 11.704(a)-(c)............. Sec. 10.32(c)-(d)..... Sec. 10.31(c)-(d)
Sec. 10.34(a)-(b)..... Sec. 10.34(a)-(b)
Sec. 11.704(d)................. New..................... None
Sec. 11.704(e)................. MRPR 7.4(b)............. None
Firm names and letterheads:
Sec. 11.705(a)................. MRPR 7.5(a)............. Sec. 10.35(a)
Sec. 11.705(b)................. MRPR 7.5(b)............. None
Sec. 11.705(c)................. MRPR 7.5(c)............. Sec. 10.31(b)
Sec. 11.705(d)................. MRPR 7.5(d)............. Sec. 10.35(b)
Sec. Sec. 11.706-11.800
[Reserved]
Bar admission and disciplinary
matters:
Sec. 11.801(a)................. MRPR 8.1(a)............. Sec. 10.22(a)(b)
[[Page 69510]]
Sec. 11.801(b)................. MRPR 8.1(b)............. Sec. 10.23(b)(5)
Sec. 10.24(b)
Sec. 11.801(c)................. Sec. 10.23(c)(16)..... Sec. 10.23(c)(16)
Judicial and legal officials:
Sec. 11.802(a)................. MRPR 8.2(a)............. Sec. 10.102
Sec. 11.802(b)................. MRPR 8.2(b)............. Sec. 10.103
Reporting professional misconduct:
Sec. 11.803(a)................. MRPR 8.3(a)............. Sec. 10.24(a)
Sec. 11.803(b)................. MRPR 8.3(b)............. Sec. 10.24(a)
Sec. 11.803(c)................. MRPR 8.3(c)............. None
Sec. 11.803(d)................. New..................... None
Sec. 11.803(f)(1).............. Sec. 10.23(c)(5)...... Sec. 10.23(c)(5)
Sec. 11.803(f)(2).............. Sec. 10.23(c)(14)..... Sec. 10.23(c)(14)
Sec. 11.803(f)(3).............. Sec. 10.23(c)(12)..... Sec. 10.23(c)(12)
Sec. 11.803(f)(4).............. Sec. 10.23(c)(18)..... Sec. 10.23(c)(18)
Misconduct:
Sec. 11.804(a)................. MRPR 8.4(a)............. Sec. 10.23(b)(1)(2)
Sec. 11.804(b)................. MRPR 8.4(b)............. Sec. 10.23(c)(1)
Sec. 11.804(d)................. MRPR 8.4(d)............. Sec. 10.23(b)(5)
Sec. 11.804(e)................. MRPR 8.4(e)............. Sec. 10.23(c)(5)
Sec. 11.804(f)................. MRPR 8.4(f)............. None
Sec. 11.804(g)................. MRPR 8.4(g)............. 35 U.S.C. 32
Sec. 10.23(a)
Sec. 11.804(h)(1).............. Sec. 10.23(c)(2)...... Sec. 10.23(c)(2)
Sec. 11.804(h)(2).............. Sec. 10.23(c)(17)..... Sec. 10.23(c)(17)
Sec. 11.804(h)(3).............. Sec. 10.23(c)(17)..... Sec. 10.23(c)(17)
Sec. 11.804(h)(4).............. 31 CFR 8.35(c).......... None
Sec. 11.804(h)(5).............. New..................... None
Sec. 11.804(h)(6).............. 31 CFR 8.36............. None
Sec. 11.804(h)(7).............. 18 U.S.C. 205(a) and (b) None
18 U.S.C. 209(a)
Sec. 11.804(h)(8).............. 18 U.S.C. 205........... None
Sec. 11.804(h)(9).............. New..................... None
Sec. 11.804(h)(10)............. Sec. 10.23(c)(16)..... Sec. 10.23(c)(16)
Sec. 11.804(i)................. Sec. 10.23(d)......... Sec. 10.23(d)
Disciplinary authority: Choice of
law:
Sec. 11.805.................... MRPR 8.5................ None
Sexual relations with clients and
third persons:
Sec. 11.806.................... NYADSD 200.29-a......... None
Sec. Sec. 11.807-900
[Reserved]
----------------------------------------------------------------------------------------------------------------
Abbreviations:
DCRPR means the District of Columbia Court of Appeals Rules of Professional Conduct (1999).
MRPR means the Model Rules of Professional Conduct of the American Bar Association (1999).
NYADSD means the Official Court Rules of the New York Appellate Division, Second Department (2000).
VRPC means Virginia Rules of Professional Conduct (1999).
Classification
Regulatory Flexibility Act
The Deputy General Counsel, United States Patent and Trademark
Office certified to the Chief Counsel for Advocacy, Small Business
Administration, that the changes in this notice of proposed rule making
will not have a significant impact on a substantial number of small
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The provisions
of the Regulatory Flexibility Act relating to the preparation of an
initial flexibility analysis are not applicable to this rulemaking
because the rules will not have a significant economic impact on a
substantial number of small entities. The primary purpose of the rule
is to codify enrollment procedures and bring the USPTO's disciplinary
rules for practitioners into line with the American Bar Association
Model Rules, which have been adopted by most states. This will ease
both the procedures for processing registration applications and
practitioners' burden in learning and complying with USPTO regulations.
The rule establishes a new annual registration fee of $100 per year
for practitioners. The average salary of a practitioner is over
$100,000, and an annual fee of less than one tenth of one percent of
that amount will not have a significant economic impact on a
substantial number of practitioners. The rule also establishes a fee of
$130 for petitions to the Director of the Office of Enrollment and
Discipline. As with the annual fee, this fee is insignificant.
Further, the rule requires registered practitioners to complete a
computer-based continuing legal education (CLE) program once every one
to three years. The program, which will consist primarily of a review
of recent changes to patent statutes, regulations and policies, will
take one to two hours to complete. This dedication of a small amount of
time for CLE every one to three years will not have a significant
impact on practitioners. Further, the CLE will substitute for or
reinforce practitioners' independent efforts to keep their knowledge of
relevant provisions current and avoid time-consuming and costly errors.
The rule imposes a $1600 fee for a petition for reinstatement for a
suspended or excluded practitioner and removes the $1500 cap on
disciplinary proceeding costs that can be assessed against such a
practitioner as a condition of reinstatement.
[[Page 69511]]
Approximately 5 of the 28,000 practitioners petition for reinstatement
each year, and approximately 2 of these petitions occur under
circumstances where disciplinary proceeding costs may be assessed.
These changes therefore will not affect a substantial number of
practitioners.
Executive Order 13132
This notice of proposed rule making does not contain policies with
federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (August 4, 1999).
Executive Order 12866
This notice of proposed rule making has been determined to be not
significant for purposes of Executive Order 12866 (September 30, 1993).
Paperwork Reduction Act
This notice of proposed rule making involves information collection
requirements which are subject to review by the Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C.
3501 et seq.). This proposed rule introduces new information
requirements and fees into collection 0651-0012. The United States
Patent and Trademark Office is currently seeking renewal for
information collection 0651-0012. Additional collection of information
activities involved in this notice of proposed rule making have been
reviewed and previously approved by OMB under OMB control number 0651-
0017.
The title, description, and respondent description of the currently
approved information collection 0651-0017 and the renewal of 0651-0012
are shown below with an estimate of the annual reporting burdens.
Included in this estimate is the time for reviewing instructions,
gathering and maintaining the data needed, and completing and reviewing
the collection of information. The principal impact of the changes in
this notice of proposed rule making is to registered practitioners.
OMB Number: 0651-0012.
Title: Admittance to Practice and Roster of Registered Patent
Attorneys and Agents Admitted to Practice Before the Patent and
Trademark Office.
Form Numbers: PTO-158, PTO158A, PTO-275, PTO-107A, PTO 1209, PTO
2126.
Affected Public: Individuals or households, business or other for-
profit, Federal Government, and state, local or tribal government.
Estimated Number of Respondents: 64,142.
Estimated Time Per Response: The USPTO estimates that it takes the
public 30 minutes to complete either an application for registration to
practice before the USPTO, or an application for a foreign resident to
practice before the USPTO and, depending upon the complexity of the
situation, to gather, prepare and submit the application. It is
estimated to take 20 minutes to complete undertakings under 37 CFR
10.10(b); 10 minutes to complete data sheets; 5 minutes to complete the
oath or affirmation, and the request for a paper copy of the continuing
training program and to furnish narrative; 45 minutes to complete the
petition for waiver of regulations; and 90 minutes to complete the
written request for reconsideration of disapproval notice of
application and the petition for reinstatement to practice. It is
estimated to take 2 hours and 10 minutes for the annual practitioner
registration/continuing training program--ten minutes to fill out the
form and an average of 2 hours to complete the continuing training
program on-line. It is estimated to take 2 hours and 5 minutes for the
paper-based version of the annual practitioner registration/continuing
training program--five minutes to request the materials and 2 hours to
complete the continuing training program on paper. These times include
time to gather the necessary information, prepare and submit the forms
and requirements in this collection.
Estimated Total Annual Burden Hours: 58,745.
Needs and Uses: The public uses the forms in this collection to
apply for the examination for registration, to ensure that all of the
necessary information is provided to the USPTO and to request inclusion
on the Register of Patent Attorneys and Agents.
OMB Number: 0651-0017.
Title: Practitioner Records Maintenance and Disclosure Before the
Patent and Trademark Office.
Form Numbers: None.
Affected Public: Individuals or households, businesses or other
for-profit, not-for-profit institutions, Federal Government, and state,
local, or tribal governments.
Estimated Number of Respondents: 330.
Estimated Time Per Response: 9 hours annually for practitioners to
maintain client files; two hours to gather, prepare and submit a
response to one violation report.
Estimated Total Annual Burden Hours: 2,270.
Needs and Uses: The information in this collection is necessary for
the United States Patent and Trademark Office to comply with Federal
regulations, 35 U.S.C. 6(a) and 35 U.S.C. 31. The Office of Enrollment
and Discipline collects this information to insure compliance with the
USPTO Code of Professional Responsibility, 37 CFR 10.20-10.112. This
Code requires that registered practitioners maintain complete records
of clients, including all funds, securities and other properties of
clients coming into his/her possession, and render appropriate accounts
to the client regarding such records, as well as report violations of
the Code to the USPTO. The registered practitioners are mandated by the
Code to maintain proper documentation so that they can fully cooperate
with an investigation in the event of a report of an alleged violation
and that violations are prosecuted as appropriate.
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Harry I. Moatz, Director of Enrollment and Discipline,
United States Patent and Trademark Office, PO Box 1450, Alexandria,
Virginia 22313-1450, or to the Office of Information and Regulatory
Affairs of OMB, New Executive Office Building, 725 17th Street, NW.,
Room 10235, Washington, DC 20503, Attention: Desk Officer for the
United States Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
37 CFR Part 2
Administrative practice and procedure, Trademarks.
[[Page 69512]]
37 CFR Part 10
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
37 CFR Part 11
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
For the reasons set forth in the preamble, the United States Patent
and Trademark Office proposes to amend 37 CFR Parts 1, 2, 10, and 11 as
follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
2. Section 1.1 is amended by revising paragraph (a) introductory
text and by adding paragraph (a)(4) to read as follows:
Sec. 1.1 Addresses for correspondence with the United States Patent
and Trademark Office.
(a) In general. Except for paragraphs (a)(3)(i), (a)(3)(ii), and
(d)(1) of this section, all correspondence intended for the United
States Patent and Trademark Office must be addressed to either
``Director of the United States Patent and Trademark Office, P.O. Box
1450, Alexandria, Virginia 22313-1450'' or to specific areas within the
Office as set out in paragraphs (a)(1), (a)(2), and (a)(3)(iii) of this
section. When appropriate, correspondence should also be marked for the
attention of a particular office or individual.
* * * * *
(4) Office of Enrollment and Discipline correspondence. All
correspondence concerning enrollment, registration, and investigations
should be addressed to the Mail Stop OED, Director of the United States
Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-
1450.
* * * * *
3. Section 1.4 is amended by revising paragraph (d)(2) to read as
follows:
Sec. 1.4 Nature of correspondence and signature requirements.
* * * * *
(d) * * *
(2) The presentation to the Office (whether by signing, filing,
submitting, or later advocating) of any paper by a party, whether a
practitioner or non-practitioner, constitutes a certification under
Sec. 11.18(b) of this subchapter. Violations of Sec. 11.18(b)(2) of
this subchapter by a party, whether a practitioner or non-practitioner,
may result in the imposition of sanctions under Sec. 11.18(c) of this
subchapter. Any practitioner violating Sec. 11.18(b) of this
subchapter may also be subject to disciplinary action. See Sec. Sec.
11.18(d) and 11.804(i)(15) of this subchapter.
* * * * *
4. Section 1.8 is amended by revising paragraph (a)(2)(iii)(A) to
read as follows:
Sec. 1.8 Certificate of mailing or transmission.
(a) * * *
(2) * * *
(iii) * * *
(A) Correspondence filed in connection with a disciplinary
proceeding under part 11 of this chapter.
* * * * *
5. Section 1.21 is amended by revising paragraph (a) to read as
follows:
Sec. 1.21 Miscellaneous fees and charges.
* * * * *
(a) Registration of attorneys and agents:
(1) For admission to examination for registration to
practice:
(i) Application Fee (non-refundable)................ $40.00
(ii) Registration examination fee
(A) For test administration by private sector entity 200.00
(B) For test administration by the USPTO............ 450.00
(2) On registration to practice or grant of limited 100.00
recognition under Sec. Sec. 11.9(b) or (c)..........
(3) [Reserved]
(4) For certificate of good standing as an attorney or 10.00
agent..................................................
Suitable for framing................................ 20.00
(5) For review of decision:
(i) by the Director of Enrollment and Discipline 130.00
under Sec. 11.2(c)...............................
(ii) of the Director of Enrollment and Discipline 130.00
under Sec. 11.2(d)...............................
(6) For requesting regrading of an examination under
Sec. 10.7(c):
(i) Regrading of seven or fewer questions........... 230.00
(ii) Regrading of eight or more questions........... 460.00
(7) Annual fee for registered attorney or agent:
(i) Active Status................................... 100.00
(ii) Voluntary Inactive Status...................... 25.00
(iii) Fee for requesting restoration to active 50.00
status from voluntary inactive status..............
(iv) Balance due upon restoration to active status 75.00
from voluntary inactive status.....................
(8) Annual fee for individual granted limited 100.00
recognition............................................
(9)(i) Delinquency fee.................................. 50.00
(ii) Reinstatement fee.............................. 100.00
(10) On application by a person for recognition or 1,600.00
registration after disbarment, suspension, or
resignation pending disciplinary proceedings in any
other jurisdiction; on petition for reinstatement by a
person excluded, suspended, or excluded on consent from
practice before the Office; on application by a person
for recognition or registration who is asserting
rehabilitation from prior conduct that resulted in an
adverse decision in the Office regarding the person's
moral character; and on application by a person for
recognition or registration after being convicted of a
felony or crime involving moral turpitude or breach of
fiduciary duty.........................................
(11) Paper version of continuing training program and 75.00
furnished narrative....................................
(12) Application by Sponsor for Pre-approval of a 60.00
Continuing Education Program...........................
* * * * *
6. Section 1.31 is revised to read as follows:
Sec. 1.31 Applicants may be represented by a registered attorney or
agent.
An applicant for patent may file and prosecute his or her own case,
or he or she may be represented by a registered attorney, registered
agent, or other individual authorized to practice before the United
States Patent and Trademark
[[Page 69513]]
Office in patent matters. See Sec. Sec. 11.6 and 11.9 of this
subchapter. The United States Patent and Trademark Office cannot aid in
the selection of a registered attorney or agent.
7. In Sec. 1.33, paragraph (c) is revised to read as follows:
Sec. 1.33 Correspondence respecting patent applications,
reexamination proceedings, and other proceedings.
* * * * *
(c) All notices, official letters, and other communications for the
patent owner or owners in a reexamination proceeding will be directed
to the attorney or agent of record (See Sec. 1.34(b)) in the patent
file at the address listed on the register of patent attorneys and
agents maintained pursuant to Sec. Sec. 11.5 and 11.11 of this
subchapter or, if no attorney or agent is of record, to the patent
owner or owners at the address or addresses of record.
* * * * *
8. Section 1.455 is amended by revising the first sentence of
paragraph (a) to read as follows:
Sec. 1.455 Representation in international applications.
(a) Applicants of international applications may be represented by
attorneys or agents registered to practice before the Patent and
Trademark Office or by an applicant appointed as a common
representative (PCT Art. 49, Rules 4.8 and 90 and Sec. 11.10). * * *
* * * * *
PART 2--RULES OF PRACTICE IN TRADEMARK CASES
9. The authority citation for 37 CFR Part 2 continues to read as
follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), unless otherwise
noted.
10. Section 2.11 is revised to read as follows:
Sec. 2.11 Applicants may be represented by an attorney.
The owner of a trademark may file and prosecute his or her own
application for registration of such trademark, or he or she may be
represented by an attorney or other individual authorized to practice
in trademark matters under Sec. 11.14 of this subchapter. The United
States Patent and Trademark Office cannot aid in the selection of an
attorney or other representative.
11. Section 2.17 is amended by revising paragraphs (a) and (c) to
read as follows:
Sec. 2.17 Recognition for representation.
(a) When an attorney as defined in Sec. 11.1(c) of this subchapter
acting in a representative capacity appears in person or signs a paper
in practice before the United States Patent and Trademark Office in a
trademark case, his or her personal appearance or signature shall
constitute a representation to the United States Patent and Trademark
Office that, under the provisions of Sec. 11.14 of this subchapter and
the law, he or she is authorized to represent the particular party in
whose behalf he or she acts. Further proof of authority to act in a
representative capacity may be required.
* * * * *
(c) To be recognized as a representative, an attorney as defined in
Sec. 11.1(c) of this subchapter may file a power of attorney, appear
in person, or sign a paper on behalf of an applicant or registrant that
is filed with the Office in a trademark case.
* * * * *
12. Section 2.24 is revised to read as follows:
Sec. 2.24 Designation of representative by foreign applicant.
If an applicant is not domiciled in the United States, the
applicant must designate by a written document filed in the United
States Patent and Trademark Office the name and address of some person
resident in the United States on whom may be served notices or process
in proceedings affecting the mark. If this document does not accompany
or form part of the application, it will be required and registration
refused unless it is supplied. Official communications of the United
States Patent and Trademark Office will be addressed to the domestic
representative unless the application is being prosecuted by an
attorney at law or other qualified person duly authorized, in which
event Official communications will be sent to the attorney at law or
other qualified person duly authorized. The mere designation of a
domestic representative does not authorize the person designated to
prosecute the application unless qualified under paragraph (a), (b) or
(c) of Sec. 11.14 of this subchapter and authorized under Sec.
2.17(b).
13. Section 2.33 is amended by revising paragraph (a)(3) to read as
follows:
Sec. 2.33 Verified statement.
(a) * * *
(3) An attorney as defined in Sec. 11.1(c) of this subchapter who
has an actual or implied written or verbal power of attorney from the
applicant.
* * * * *
14. Section 2.161 is amended by revising paragraph (b)(3) to read
as follows:
Sec. 2.161 Requirements for a complete affidavit or declaration of
continued use or excusable nonuse.
(b) * * *
(3) An attorney as defined in Sec. 11.1(c) of this subchapter who
has an actual or implied written or verbal power of attorney from the
owner.
* * * * *
PART 10--[REMOVED]
15. Part 10 is removed.
16. Part 11 is added as follows:
PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT
AND TRADEMARK OFFICE
Subpart A--General Provisions
General Information
Sec.
11.1 Definitions.
11.2 Director of the Office of Enrollment and Discipline.
11.3 Suspension of rules, immunity.
Subpart B--Recognition To Practice Before the USPTO
Patents, Trademarks, and Other Non-Patent Law
11.4 Committee on Enrollment.
11.5 Register of attorneys and agents in patent matters; practice
before the Office.
11.6 Registration of attorneys and agents.
11.7 Requirements for registration.
11.8 Oath and registration fee.
11.9 Limited recognition in patent matters.
11.10 Restrictions on practice in patent matters.
11.11 Removing names from the register.
11.12 Mandatory continuing training for licensed practitioners.
11.13 Eligible mandatory continuing education programs.
11.14 Individuals who may practice before the Office in trademark
and other non-patent matters.
11.15 Refusal to recognize a practitioner.
11.16 Financial books and records.
11.17 [Reserved]
11.18 Signature and certificate for correspondence filed in the
United States Trademark Office.
Subpart C--Investigations and Disciplinary Proceedings
Jurisdiction, Sanctions, Investigations, and Proceedings
11.19 Disciplinary jurisdiction.
11.20 Disciplinary sanctions.
11.21 Warnings.
11.22 Investigations.
11.23 Committee on Discipline.
11.24 Interim suspension and discipline based upon reciprocal
discipline.
11.25 Interim suspension and discipline based upon conviction of
committing a serious crime or other crime coupled with confinement
or commitment to imprisonment.
11.26 Diversion.
[[Page 69514]]
11.27 Exclusion by consent.
11.28 Incompetent and incapacitated practitioners.
11.29-11.31 [Reserved]
11.32 Initiating a disciplinary proceeding; reference to a hearing
officer.
11.34 Complaint.
11.35 Service of complaint.
11.36 Answer to complaint.
11.37 Supplemental complaint.
11.38 Contested case.
11.39 Hearing officer; appointment; responsibilities; review of
interlocutory orders; stays.
11.40 Representative for OED Director or respondent.
11.41 Filing of papers.
11.42 Service of papers.
11.43 Motions.
11.44 Hearings.
11.45 Proof; variance; amendment of pleadings.
11.46-11.48 [Reserved]
11.49 Burden of proof.
11.50 Evidence.
11.51 Depositions.
11.52 Discovery.
11.53 Proposed findings and conclusions; post-hearing memorandum.
11.54 Initial decision of hearing officer.
11.55 Appeal to the USPTO Director.
11.56 Decision of the USPTO Director.
11.57 Review of final decision of the USPTO Director.
11.58 Suspended or excluded practitioner.
11.59 Notice of suspension or exclusion.
11.60 Petition for reinstatement.
11.61 Savings clause.
11.62 Protection of clients interests when practitioner becomes
unavailable.
Subpart D--United States Patent and Trademark Office Rules of
Professional Conduct
Rules of Professional Conduct
11.100 Interpretation of the USPTO Rules of Professional Conduct.
Client-Practitioner Relationship
11.101 Competence.
11.102 Scope of representation.
11.103 Diligence and zeal.
11.104 Communication.
11.105 Fees.
11.106 Confidentiality of information.
11.107 Conflict of interest: General rule.
11.108 Conflict of interest: Prohibited transactions.
11.109 Conflict of interest: Former client.
11.110 Imputed disqualification: General rule.
11.111 Successive Government and private employment.
11.112 Former arbitrator.
11.113 Organization as client.
11.114 Client under a disability.
11.115 Safekeeping property.
11.116 Declining or terminating representation.
11.117 Sale of practice.
11.118-11.200 [Reserved]
Counselor
11.201 Advisor.
11.202 Intermediary.
11.203 Evaluation for use by third persons.
11.204-11.300 [Reserved]
Advocate
11.301 Meritorious claims and contentions.
11.302 Expediting litigation and Office proceedings.
11.303 Candor toward the tribunal.
11.304 Fairness to opposing party and counsel.
11.305 Impartiality and decorum of the tribunal.
11.307 Practitioner as witness.
11.308 [Reserved]
11.309 Advocate in nonadjudicative proceedings.
11.310-11.400 [Reserved]
Transactions with Persons Other than Clients
11.401 Truthfulness in statements to others.
11.402 Communication between practitioner and opposing parties.
11.403 Dealing with unrepresented person.
11.404 Respect for rights of third persons.
11.405-11.500 [Reserved]
Law Firms and Associations
11.501 Responsibilities of a partner or supervisory practitioner.
11.502 Responsibilities of a subordinate practitioner.
11.503 Responsibilities regarding nonpractitioner assistants.
11.504 Professional independence of a practitioner.
11.505 Unauthorized practice of law.
11.506 Restrictions on right to practice.
11.507 Responsibilities regarding law-related services.
11.508-11.600 [Reserved]
Public Service
11.601 Pro Bono Publico service.
11.602 Accepting appointments.
11.603 Membership in legal services organization.
11.604 Law reform activities.
11.605-11.700 [Reserved]
Information about Legal Services
11.701 Communications concerning a practitioner's services.
11.702 Advertising.
11.703 Direct contact with prospective clients
11.704 Communication of fields of practice and certification.
11.705 Firm names and letterheads.
11.706-11.800 [Reserved]
Maintaining the Integrity of the Profession
11.801 Bar admission and disciplinary matters.
11.802 Judicial and legal officials.
11.803 Reporting professional misconduct.
11.804 Misconduct.
11.805 Disciplinary authority: Choice of law.
11.806 Sexual relations with clients and third persons.
11.807-11.900 [Reserved]
Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2)(D),
32.
Subpart A--General Provisions
General Information
Sec. 11.1 Definitions.
This part governs solely the practice of patent, trademark, and
other law before the United States Patent and Trademark Office. Nothing
in this part shall be construed to preempt the authority of each State
to regulate the practice of law, except to the extent necessary for the
United States Patent and Trademark Office to accomplish its Federal
objectives. Unless otherwise clear from the context, the following
definitions apply to this part:
Addiction means any chemical or psychological dependency upon
intoxicants or drugs.
Affidavit means affidavit, declaration under 35 U.S.C. 25 (see
Sec. Sec. 1.68 and 2.20 of this subchapter), or statutory declaration
under 28 U.S.C. 1746.
Appearing means an individual's attendance to a matter before the
Office, and includes physical presence before the Office in a formal or
informal setting, or conveyance of a communication, either
electronically or in any other manner, with intent to influence an
Office employee in any patent, trademark or other non-patent law
matter.
Application means an application for a design, plant, or utility
patent; a provisional application; a request for reexamination; an
application to reissue any patent; a protest; an application to
register a trademark; an appeal to the Board of Patent Appeals and
Interferences or to the Trademark Trial and Appeal Board; an
opposition, cancellation, or concurrent use in a trademark matter; and
all written communications submitted to the Office in connection with
the foregoing.
Attorney or lawyer means an individual who is a member in good
standing of the highest court of any State, including an individual who
is in good standing of the highest court of one State and under an
order of any court or Federal agency suspending, enjoining,
restraining, disbarring or otherwise restricting the attorney from
practice before the bar of another State or Federal agency. A non-
lawyer means a person who is not an attorney or lawyer.
Belief or believes means that the person involved actually supposed
the fact in question to be true. A person's belief may be inferred from
circumstances.
Consent means a client's uncoerced assent to a proposed course of
action after consulting with the practitioner about the matter in
question.
[[Page 69515]]
Consult or consultation means communication of information
reasonably sufficient to permit the client to appreciate the
significance of the matter in question.
Conviction or convicted means any confession to a crime; a verdict
or judgment finding a person guilty of a crime; any entered plea,
including nolo contendre or Alford plea, to a crime; or receipt of
deferred adjudication (whether judgment or sentence has been entered or
not) for an accused or pled crime.
Crime means any offense declared to be a felony by Federal or State
law, or an attempt, solicitation or conspiracy to commit the same.
Data Sheet means a form used to collect name, address, and
telephone information from individuals recognized to practice before
the Office in patent matters.
Differing interests means every interest that may adversely affect
either the judgment or the loyalty of a practitioner to a client,
whether it be a conflicting, inconsistent, diverse, or other interest.
Disability means any mental or physical infirmity or illness.
Disability matter means any issue, question, proceeding or
determination within the scope of this section.
Disciplinary Court means any court of record and any other agency
or tribunal with authority to disbar, exclude, or suspend an attorney
from the practice of law in said agency or tribunal.
Diversion means turning aside or altering a practitioner's
practices or procedures through rehabilitation to achieve conformity
with the USPTO Rules of Professional Conduct.
Employee of a tribunal means an employee of a court, the Office, or
another adjudicatory body.
Exclusion means barred and not admitted to practice before the
Office in patent, trademark and other non-patent law.
Firm or law firm means each and every practitioner in a private
firm, each and every practitioner employed in the legal department of a
corporation or other organization, and each and every practitioner
employed in a legal services organization.
Fiscal year means the period of time from October 1st through the
ensuing September 30th.
Fraud or fraudulent means conduct having a purpose to deceive and
not merely negligent misrepresentation or failure to apprise another of
relevant information.
Full disclosure means a clear explanation of the differing
interests involved in a transaction, the advantages of seeking
independent legal advice, and a detailed explanation of the risks and
disadvantages to the client entailed in any agreement or arrangement,
including not only any financial losses that will or may foreseeably
occur to the client, but also any liabilities that will or may
foreseeably accure to the client.
Giving information within the meaning of Sec. 11.804(h)(1) means
making a written statement or representation or an oral statement or
representation.
Hearing officer means an attorney who is an officer or employee of
the Office designated by the USPTO Director to conduct a hearing
required by 35 U.S.C. 32 or a person appointed under 5 U.S.C. 3105.
Incapacitated means the state of suffering from a disability or
addiction of such nature as to cause a practitioner to be unfit to be
entrusted with professional matters, or to aid in the administration of
justice as a practitioner.
Invention promoter means any person, or corporation and any of its
agents, employees, officers, partners, or independent contractors
thereof, who is neither a registered practitioner nor law firm, who (1)
advertises in media of general circulation offering assistance to
market and patent an invention, or (2) enters into a contract or other
agreement with a customer to assist the customer in marketing and
patenting an invention.
Knowingly, known, or knows means actual knowledge of the fact in
question. A person's knowledge may be inferred from circumstances.
Law clerk means a person, typically a recent law school graduate,
who acts, typically for a limited period, as a confidential assistant
to a judge or judges of a court; to a hearing officer or a similar
administrative hearing officer; or to the head of a governmental agency
or to a member of a governmental commission, either of which has
authority to adjudicate or to promulgate rules or regulations of
general application.
Legal profession means those individuals who are lawfully engaged
in practice of patent, trademark, and other law before the Office.
Legal service means any service that may lawfully be performed by a
practitioner for any person having immediate, prospective, or pending
business before the Office.
Matter means any litigation, administrative proceeding, lobbying
activity, application, claim, investigation, controversy, arrest,
charge, accusation, contract, a negotiation, estate or family relations
practice issue, request for a ruling or other determination, or any
other matter covered by the conflict of interest rules of the
appropriate Government entity, except as expressly limited in a
particular rule.
Mentally incompetent or involuntarily committed to a mental
hospital means a judicial determination in a final order that declares
a practitioner to be mentally incompetent or that commits a
practitioner involuntarily to a mental hospital or similar institution
as an inpatient.
OED Director means the Director of the Office of Enrollment and
Discipline.
Office means the United States Patent and Trademark Office.
Partner means a member of a law partnership or a shareholder in a
law firm organized as a professional corporation.
Person means an individual, a corporation, an association, a trust,
a partnership, and any other organization or legal entity.
Practitioner means (1) an attorney or agent registered to practice
before the Office in patent matters, (2) an individual authorized under
5 U.S.C. 500(b) or otherwise as provided by Sec. Sec. 11.14(b), (c),
and (e), to practice before the Office in trademark matters or other
non-patent matters, or (3) an individual authorized to practice before
the Office in a patent case or matters under Sec. Sec. 11.9(a) or (b).
A ``suspended or excluded practitioner'' means a practitioner who is
suspended or excluded under Sec. 11.47. A ``non-practitioner'' means
an individual who is not a practitioner.
Proceeding before the Office means an application for patent, an
application to register a trademark, an appeal, a petition, a
reexamination, a protest, a public use matter, a patent interference,
an inter partes trademark matter, correction of a patent, correction of
inventorship, and any other matter that is pending before the Office.
Professional disciplinary action means public reprimand,
suspension, disbarment, resignation from the bar of any State or
Federal court while under investigation, and any other event resulting
in the loss of a license to practice law on ethical grounds.
Professional legal corporation means a corporation authorized by
state law to practice law for profit.
Reasonable or reasonably when used in relation to conduct by a
practitioner means the conduct of a reasonably prudent and competent
practitioner.
Reasonably should know when used in reference to a practitioner
means that a practitioner of reasonable prudence
[[Page 69516]]
and competence would ascertain the matter in question.
Registration means registration to practice before the Office in
patent proceedings.
Roster means a list of individuals who have been registered as
either a patent attorney or patent agent.
Serious crime means (1) any criminal offense classified as a felony
under the laws of the United States, or of any state, district, or
territory of the United States, or of a foreign country where the crime
occurred, and (2) any crime a necessary element of which, as determined
by the statutory or common law definition of such crime in the
jurisdiction where the crime occurred, that includes interference with
the administration of justice, false swearing, misrepresentation,
fraud, willful failure to file income tax returns, deceit, bribery,
extortion, misappropriation, theft, or an attempt or a conspiracy or
solicitation of another to commit a ``serious crime.''
Significant evidence of rehabilitation means clear and convincing
evidence that is significantly more probable than not that there will
be no reoccurrence in the foreseeable future of the practitioner's
prior disability or addiction.
State means any of the 50 states of the United States of America,
the District of Columbia, and other territories and possessions of the
United States of America.
Substantial when used in reference to degree or extent means a
material matter of clear and weighty importance.
Suspend or suspension means a temporary debarring from practice
before the Office.
Tribunal means a court, the Office, a regulatory agency,
commission, hearing officer, and any other body authorized by law to
render decisions of a judicial or quasi-judicial nature, based on
information presented before it, regardless of the degree of formality
or informality of the proceedings.
United States means the United States of America, and the
territories and possessions the United States of America.
USPTO Director means the Director of the United States Patent and
Trademark Office, or an employee of the Office delegated authority to
act for the Director of the United States Patent and Trademark Office
in matters arising under this Part.
Sec. 11.2 Director of the Office of Enrollment and Discipline.
(a) Appointment. The USPTO Director shall appoint a Director of the
Office of Enrollment and Discipline (OED Director). In the event of the
absence of the OED Director or a vacancy in the office of the OED
Director, the USPTO Director may designate an employee of the Office to
serve as acting OED Director. The OED Director and any acting OED
Director shall be an active member in good standing of the bar of a
State.
(b) Duties. The OED Director shall:
(1) Supervise such staff as may be necessary for the performance of
the OED Director's duties.
(2) Receive and act upon applications for registration, prepare and
grade the examination provided for in Sec. 10.7(b), maintain the
register provided for in Sec. 10.5, and perform such other duties in
connection with enrollment and recognition of attorneys and agents as
may be necessary.
(3) Conduct investigations into the moral character and reputation
of any individual seeking to be registered as an attorney and agent, or
of any individual seeking limited recognition, deny registration or
recognition of individuals failing to demonstrate present possession of
good moral character, and perform such other duties in connection with
investigations and enrollment proceedings as may be necessary.
(4) Conduct investigations of all matters involving possible
violations by practitioners and persons granted limited recognition of
an imperative Rule of Professional Conduct coming to the attention of
the OED Director as information or a complaint, whether from within or
from outside the USPTO, where the apparent facts, if true, may warrant
discipline. Conduct investigations of all matters involving possible
violations of Sec. Sec. 11.303(a)(1), 11.304, 11.305(a), or 11.804 by
other individuals identified in Sec. 11.19(a)(2) coming to the
attention of the OED Director as information or a complaint, whether
from within or from outside the USPTO, where the apparent facts, if
true, may warrant discipline. Except in matters meriting summary
dismissal because the complaint is clearly unfounded on its face or
falls outside the disciplinary jurisdiction of the USPTO, no
disposition shall be recommended or undertaken by the OED Director
until the accused practitioner shall have been afforded an opportunity
to respond to the information or complaint received by the OED
Director.
(5) With the consent of three members of the Committee on
Discipline, initiate disciplinary proceedings under Sec. 11.32, and
perform such other duties in connection with investigations and
disciplinary proceedings as may be necessary.
(6) Without the prior approval of a member of the Committee on
Discipline, dismiss a complaint or close an investigation without
issuing a warning; and otherwise conclude an investigation as provided
for in Sec. Sec. 11.22(e) or (m)
(7) File with the USPTO Director certificates of convictions of
practitioners or other individual practicing before the Office who have
been convicted of crimes, and certified copies of disciplinary orders
concerning attorneys issued in other jurisdictions.
(c) Petition to OED Director. Any petition from any action or
requirement of the staff of OED reporting to the OED Director shall be
taken to the OED Director. Any such petition not filed within 30 days
from the action complained of may be dismissed as untimely. The filing
of a petition will not stay the period for taking other action,
including the timely filing of an application for registration, which
may be running, or act as a stay of other proceedings. Any request for
reconsideration waives a right to appeal by petition to the USPTO
Director under paragraph (d) of this section, and if not filed within
30 days after the final decision of the OED Director may be dismissed
as untimely.
(d) Review of OED Director's decision. An individual dissatisfied
with a final decision of the OED Director, except for a decision
dismissing a complaint pursuant to Sec. 11.22(f) or closing an
investigation under Sec. 11.22(m)(1), may seek review of the decision
upon petition to the USPTO Director accompanied by payment of the fee
set forth in Sec. 1.21(a)(5). A decision dismissing a complaint or
closing an investigation is not subject to review by petition. Any such
petition to the USPTO Director waives a right to seek reconsideration.
Any petition not filed within 30 days after the final decision of the
OED Director may be dismissed as untimely. Any petition shall be
limited to the facts of record. Briefs or memoranda, if any, in support
of the petition shall accompany or be embodied therein. The petition
will be decided on the basis of the record made before the OED
Director. The USPTO Director in deciding the petition will consider no
new evidence. Copies of documents already of record before the OED
Director shall not be submitted with the petition. No oral hearing on
the petition will be held except when considered necessary by the USPTO
Director. Any request for reconsideration of the decision of the USPTO
Director may be dismissed as untimely if not filed within 30 days after
the date of said decision.
[[Page 69517]]
(e) Reconsideration of matters decided by a former OED Director or
USPTO Director. Matters which have been decided by one OED Director or
USPTO Director will not be reconsidered by his or her successor except
if a request for reconsideration of the decision is filed within the
30-day period permitted to request reconsideration of said decision
provided for in paragraphs (c) and (d) of this section.
Sec. 11.3 Suspension of rules, qualified immunity.
(a) Except as provided in paragraph (b) of this section, in an
extraordinary situation, when justice requires, any requirement of the
regulations of this Part which is not a requirement of statute may be
suspended or waived by the USPTO Director or the designee of the USPTO
Director, sua sponte or on petition of any party, including the OED
Director or the OED Director's representative, subject to such other
requirements as may be imposed.
(b) No petition to waive any provision of Sec. Sec. 11.19, 11.24,
11.100 through 11.901, or to waive the provision in this paragraph
shall be granted for any reason.
(c) No petition under this section shall stay a disciplinary
proceeding unless ordered by the USPTO Director or a hearing officer.
(d) Complaints submitted to the OED Director or any other official
of the Office shall be qualifiedly privileged for the purpose that no
claim or action in tort predicated thereon may be instituted or
maintained. The OED Director, and all staff, assistants and employees
of the Office of General Counsel, Solicitor's Office, the Office of
Enrollment and Discipline, and the members of the Committee on
Discipline, the Committee on Enrollment, the employees of the Office
providing regrades of examinations, and employees of the Office
developing questions for the registration examination shall be immune
from disciplinary complaint under this Part for any conduct in the
course of their official duties.
Subpart B--Recognition To Practice Before the USPTO
Patents, Trademarks, and Other Non-Patent Law
Sec. 11.4 Committee on Enrollment.
(a) The USPTO Director shall establish a Committee on Enrollment
composed of one or more employees of the Office.
(b) The Committee on Enrollment shall, as necessary:
(1) Advise the OED Director in connection with the OED Director's
duties under Sec. 11.2(b)(1), and
(2) In circumstances provided for in Sec. 11.7(j)(2), determine
the moral character and reputation of an individual whom the OED
Director does not accept as having good moral character and reputation.
Sec. 11.5 Register of attorneys and agents in patent matters;
practice before the Office.
(a) Register of attorneys and agents. A register of attorneys and
agents is kept in the Office on which are entered the names of all
individuals recognized as entitled to represent applicants having
prospective or immediate business before the Office in the preparation
and prosecution of patent applications. Registration in the Office
under the provisions of this Part shall entitle the individuals so
registered to practice before the Office only in patent matters.
(b) Practice before the Office. Practice before the Office includes
law-related service that comprehends all matters connected with the
presentation to the Office or any of its officers or employees relating
to a client's rights, privileges, duties, or responsibilities under the
laws or regulations administered by the Office for the grant of a
patent, registration of a trademark, or conduct of other non-patent
law. Such presentations include preparing necessary documents,
corresponding and communicating with the Office, and representing a
client through documents or at interviews, hearings, and meetings, as
well as communicating with and advising a client concerning matters
pending or contemplated to be presented before the Office. Practice
before the Office:
(1) In patent matters includes, but is not limited to, preparing
and prosecuting any patent application, considering and advising a
client as to the patentability of an invention under statutory
criteria; considering the advisability of relying upon alternative
forms of protection that may be available under State law;
participating in drafting the specification or claims of a patent
application; participation in drafting an amendment or reply to a
communication from the Office that may require written argument to
establish the patentability of a claimed invention; participating in
drafting a reply to a communication from the Office regarding a patent
application, and participating in the drafting of a communication for a
public use, interference, or reexamination proceeding;
(2) In trademark matters includes, but is not limited to, preparing
and prosecuting an application for trademark registration; preparing an
amendment which may require written argument to establish the
registrability of the mark; conducting an opposition, cancellation, or
concurrent use proceeding; or an appeal to the Trademark Trial and
Appeal Board; and
(3) In private as well as other professional matters includes
conduct reflecting adversely on a person's fitness to practice law,
such as, but not limited to, the good character and integrity essential
for a practitioner in patent, trademark, or other non-patent law
matters.
Sec. 11.6 Registration of attorneys and agents.
(a) Attorneys. Any citizen of the United States who is an attorney
and who fulfills the requirements of this Part may be registered as a
patent attorney to practice before the Office. When appropriate, any
alien who is an attorney, who lawfully resides in the United States,
and who fulfills the requirements of this Part may be registered as a
patent attorney to practice before the Office, provided that such
registration is not inconsistent with the terms upon which the alien
was admitted to, and resides in, the United States and further provided
that the alien may remain registered only:
(1) If the alien continues to lawfully reside in the United States
and registration does not become inconsistent with the terms upon which
the alien continues to lawfully reside in the United States, or
(2) If the alien ceases to reside in the United States, the alien
is qualified to be registered under paragraph (c) of this section. See
also Sec. 11.9(b).
(b) Agents. Any citizen of the United States who is not an attorney
and who fulfills the requirements of this Part may be registered as a
patent agent to practice before the Office. When appropriate, any alien
who is not an attorney, who lawfully resides in the United States, and
who fulfills the requirements of this Part may be registered as a
patent agent to practice before the Office, provided that such
registration is not inconsistent with the terms upon which the alien
was admitted to, and resides in, the United States, and further
provided that the alien may remain registered only:
(1) If the alien continues to lawfully reside in the United States
and registration does not become inconsistent with the terms upon which
the alien continues to lawfully reside in the United States or
(2) If the alien ceases to reside in the United States, the alien
is qualified to be
[[Page 69518]]
registered under paragraph (c) of this section. See also Sec. 11.9(b).
(c) Foreigners. Any foreigner not a resident of the United States
who shall file proof to the satisfaction of the OED Director that he or
she is registered and in good standing before the patent office of the
country in which he or she resides and practices, and who is possessed
of the qualifications stated in Sec. 11.7, may be registered as a
patent agent to practice before the Office for the limited purpose of
presenting and prosecuting patent applications of applicants located in
such country, provided that the patent office of such country allows
substantially reciprocal privileges to those admitted to practice
before the Office. Registration as a patent agent under this paragraph
shall continue only during the period that the conditions specified in
this paragraph obtain. Upon notice by the patent office of such country
that a patent agent registered under this section is no longer
registered or no longer in good standing before the patent office of
such country, and absent a showing of cause why his or her name should
not be removed from the register, the OED Director shall promptly
remove the name of the patent agent from the register and publish the
fact of removal. Upon ceasing to reside in such country, the patent
agent registered under this section is no longer qualified to be
registered under this section, and the OED Director shall promptly
remove the name of the patent agent from the register and publish the
fact of removal.
(d) Interference matters. The Chief Administrative Patent Judge or
Deputy Chief Administrative Patent Judge of the Board of Patent Appeals
and Interferences shall determine whether and the circumstances under
which an attorney who is not registered may take testimony for an
interference under 35 U.S.C. 24, or under Sec. 1.672 of this
subchapter.
Sec. 11.7 Requirements for registration.
(a) No individual will be registered to practice before the Office
unless he or she has:
(1) Applied to the USPTO Director in writing on a form supplied by
the OED Director and furnished all requested information and material;
and
(2) Established to the satisfaction of the OED Director that he or
she is:
(i) Presently possessed of good moral character and reputation;
(ii) Possessed of the legal, scientific, and technical
qualifications necessary to enable him or her to render applicants
valuable service; and
(iii) Otherwise competent to advise and assist applicants for
patents in the presentation and prosecution of their applications
before the Office; and
(b)(1) In order that the OED Director may determine whether an
individual seeking to have his or her name placed on the register has
the qualifications specified in paragraph (a)(2) of this section, the
individual shall:
(i) File a complete application for admission to each
administration of the registration examination. A complete registration
application includes:
(A) A form supplied by the OED Director wherein all requested
information and supporting documents are furnished,
(B) Payment of the fees required by Sec. 1.21(a)(1) of this
subchapter,
(C) Satisfactory proof of sufficient basic training in scientific
and technical matters, and
(D) For aliens, proof that recognition is not inconsistent with the
terms of their visa or entry into the United States.
(2) An individual failing to file a complete application will not
be admitted to the examination. Applications that are incomplete as
originally submitted will be considered as filed only when they have
been completed and received by OED within 60 days of notice of
incompleteness. Thereafter, a new and complete application must be
filed. Until an individual has been registered, that individual is
under a continuing obligation to keep his or her application current
and must update responses whenever there is an addition to or a change
to information previously furnished the OED Director;
(3) Submit to the OED Director satisfactory proof of the
individual's scientific and technical training;
(4) Pass the registration examination, unless the taking and
passing of the examination is waived as provided in paragraph (d) of
this section. Unless waived pursuant to paragraph (d) of this section,
each individual seeking registration must take and pass the
registration examination that is held from time-to-time to enable the
OED Director to determine whether the individual possesses the legal
and competence qualifications specified in paragraphs (a)(2)(ii) and
(a)(2)(iii) of this section. The examination will not be administered
as a mere academic exercise. An individual failing the examination may
reapply no sooner than 30 days after the date of notice of failure is
sent to the individual and may again take the examination no sooner
than 60 days after the date of said notice. An individual reapplying
shall:
(A) File the application form supplied by the OED Director wherein
all requested information and supporting documents are furnished,
(B) Pay the fees required by Sec. 1.21(a)(1) of this subchapter,
and
(C) For aliens, proof that recognition continues to be not
inconsistent with the terms of their visa or entry into the United
States;
(5) If an individual first reapplies more than one year after said
notice, that individual must again comply with paragraphs (b)(1)(i) and
(b)(3) of this section; and
(6) Provide satisfactory proof of present possession of good moral
character and reputation.
(c) Petition to the OED Director. An individual dissatisfied with
any action by a member of the staff of OED refusing to register an
individual, refusing to recognize an individual, refusing to admit an
individual to the registration examination, refusing to reinstate an
administratively suspended practitioner, refusing to refund or defer
any fee, or any other action may seek review of the action upon
petition to the OED Director and payment of the fee set forth in Sec.
1.21(a)(5) of this subchapter. Any petition, even if accompanied by the
required fee, but not filed within thirty days after the date of the
action complained of may be dismissed as untimely. Any request for
reconsideration of a decision by the OED Director on a petition not
filed within thirty days after the decision may be dismissed as
untimely.
(d)(1) Former patent examiners who by [INSERT DATE 60 DAYS
FOLLOWING PUBLICATION OF FINAL RULE] had not actively served four years
in the patent examining corps, and were serving in the corps at the
time of their separation. The OED Director would waive the taking of a
registration examination in the case of any individual meeting the
requirements of paragraph (b)(3) of this section who is a former patent
examiner who by [INSERT DATE 60 DAYS FOLLOWING PUBLICATION OF FINAL
RULE] had not served four years in the patent examining corps, if the
individual demonstrates that he or she:
(i) Actively served in the patent examining corps of the Office;
(ii) Received a certificate of legal competency and negotiation
authority;
(iii) After receiving the certificate of legal competency and
negotiation authority, was rated at least fully successful in each
quality performance element of his or her performance plan for the last
two complete fiscal years as a patent examiner; and
(iv) Was not under an oral or written warning regarding the quality
performance elements at the time of
[[Page 69519]]
separation from the patent examining corps.
(v) The OED Director may waive the taking of the examination for
registration in the case of said individual who does not meet all the
criteria of paragraphs (d)(1)(i), (d)(1)(ii), (d)(1)(iii) and
(d)(1)(iv) of this section upon a showing of good cause.
(2) Former patent examiners who [INSERT DATE 60 DAYS FOLLOWING
PUBLICATION OF FINAL RULE] had actively served four years in the patent
examining corps, and were serving in the corps at the time of their
separation. The OED Director would waive the taking of a registration
examination in the case of any individual meeting the requirements of
paragraph (b)(3) of this section who is a former patent examiner who by
[INSERT DATE 60 DAYS FOLLOWING PUBLICATION OF FINAL RULE] had served
four years in the patent examining corps, if the individual
demonstrates that he or she:
(i) Actively served for at least four years in the patent examining
corps of the Office by [INSERT DATE 60 DAYS FOLLOWING PUBLICATION OF
FINAL RULE];
(ii) Was rated at least fully successful in each quality
performance element of his or her performance plan for the last two
complete fiscal years as a patent examiner in the Office; and
(iii) Was not under an oral or written warning regarding the
quality performance elements at the time of separation from the patent
examining corps.
(vi) The OED Director may waive the taking of the examination for
registration in the case of said individual who does not meet all the
criteria of paragraphs (d)(2)(i), (d)(2)(ii), and (d)(2)(iii) of this
section upon a showing of good cause.
(3) Certain former Office employees who were not serving in the
patent examining corps upon their separation from the Office. The OED
Director would waive the taking of a registration examination in the
case of a former Office employee meeting the requirements of paragraph
(b)(3) of this section who by petition demonstrates possession of the
necessary legal qualifications to render to patent applicants and
others valuable service and assistance in the preparation and
prosecution of their applications or other business before the Office
by showing that:
(i) He or she has exhibited comprehensive knowledge of patent law
equivalent to that shown by passing the registration examination as a
result of having been in a position of responsibility in the Office in
which he or she:
(A) Provided substantial guidance on patent examination policy,
including the development of rule or procedure changes, patent
examination guidelines, changes to the Manual of Patent Examining
Procedure, or development of training or testing materials for the
patent examining corps; or
(B) Represented the Office in patent cases before Federal courts;
and
(ii) Was rated at least fully successful in each quality
performance element of his or her performance plan for said position
for the last two complete rating periods in the Office, and was not
under an oral warning regarding performance elements relating to such
activities at the time of separation from the Office.
(4) To be eligible for consideration for waiver, an individual
within the scope of one of paragraphs (d)(1) through (d)(3) of this
section must file a complete application and the fee required by Sec.
1.21(a)(1)(i) of this subchapter within two years of the individual's
separation from the Office. All other individuals, including former
examiners, filing an application or fee more than two years after
separation from the Office, are required to take and pass the
examination to demonstrate competence to represent applicants before
the Office. If the examination is not waived, the individual or former
examiner must pay the examination fee required by Sec. 1.21(a)(1)(ii)
of this subchapter within 30 days after notice. Individuals employed by
the Office but not meeting the requirements of any one of paragraphs
(d)(1) through (d)(3) of this section must file a complete application,
pay the fees required by Sec. 1.21(a)(1) of this subchapter, and take
and pass the registration examination to be registered.
(e) Examination results. Notification to an individual of passing
or failing an examination is final. Within two months from the date an
individual is notified that he or she failed an examination specified
in paragraph (b) of this section, an unsuccessful individual is
entitled to inspect, but not copy, the questions and answers he or she
incorrectly answered under supervision and without taking notes.
Substantive review of the answers or questions may not be pursued. An
unsuccessful individual has the right to retake the examination an
unlimited number of times upon payment of the fees required by
Sec. Sec. 1.21(a)(1)(i) and (ii) of this subchapter, and a fee charged
by a private sector entity administering the examination.
(f) Application for reciprocal recognition. An individual seeking
reciprocal recognition under Sec. 11.6(c), in addition to satisfying
the provisions of paragraphs (a) and (b) of this section, and the
provisions of Sec. 11.8(c), shall pay the application fee required by
Sec. 1.21(a)(1)(i) upon filing an application.
(g) Investigation of moral character. (1) Every individual seeking
recognition shall answer all questions; disclose all relevant facts,
dates and information; and provide verified copies of documents
relevant to their good moral character and reputation. The facts,
information and documents include expunged or sealed records necessary
for determining whether the individual presently possesses the good
moral character and reputation required for registration.
(2) The OED Director shall cause names and business addresses of
all individuals seeking registration or recognition who pass the
examination or for whom the examination has been waived to be published
on the Internet and in the Official Gazette to solicit relevant
information bearing on their moral character and reputation.
(3) If the OED Director receives information from any source
tending to reflect adversely on the moral character or reputation of an
individual seeking registration or recognition, the OED Director shall
conduct an investigation into the moral character and reputation of the
individual. The investigation will be conducted after the individual
has passed the registration examination, or after the registration
examination has been waived for the individual, whichever is later. If
the individual seeking registration or recognition is an attorney, the
individual is not entitled to a disciplinary proceeding under
Sec. Sec. 11.32-11.57 in lieu of moral character proceedings under
paragraphs (j) through (m) of this section. An individual failing to
timely answer questions or respond to an inquiry by the OED Director
shall be deemed to have withdrawn his or her application, and shall be
required to reapply, pass the examination, and otherwise satisfy all
the requirements of this section. No individual shall be certified for
registration or recognition by the OED Director until the individual
demonstrates present possession of good moral character and reputation.
The OED Director shall refer to the Committee on Enrollment the
application and all records of individuals not certified for
registration or recognition following investigation whose applications
have not been withdrawn.
(h) Moral character and good reputation. Moral character is the
possession of honesty and truthfulness,
[[Page 69520]]
trustworthiness and reliability, and a professional commitment to the
legal process and the administration of justice. Lack of moral
character exists when evidence shows acts and conduct which would cause
a reasonable person to have substantial doubts about an individual's
honesty, fairness, and respect for the rights of others and the laws of
states and nation. Evidence showing lack of moral character may
include, but is not limited to, conviction of a violent felony, a crime
involving moral turpitude, and a crime involving breach of fiduciary
duty; drug and alcohol abuse and dependency problems; lack of candor;
suspension or disbarment on ethical grounds from a State bar; and
resignation from a State bar while under investigation. An individual
for registration who has been convicted of a crime involving moral
turpitude or which would clearly necessitate suspension or disbarment
must have served his or her sentence, and must have been released from
parole supervision or probation for the offense before an application
for will be considered.
(1) Conviction of felony or misdemeanor. An individual who has been
convicted in a court of record of a felony, or a crime involving moral
turpitude or breach of trust, including, but not limited to, a
misdemeanor involving interference with the administration of justice,
false swearing, misrepresentation, fraud, deceit, bribery, extortion,
misappropriation, or theft, or any misdemeanor involving an attempt,
conspiracy or solicitation of another to commit any misdemeanor, is
presumed not to be of good moral character in the absence of a pardon
or a compelling showing of reform and rehabilitation. Any individual
convicted in a court of record of a felony, or a crime involving moral
turpitude or breach of trust shall file with an application for
registration the fees required by Sec. Sec. 1.21(a)(1)(ii) and (10) of
this subchapter. The OED Director shall determine whether individuals
convicted for said felony, or crime involving moral turpitude or breach
of trust have produced compelling proof of reform and rehabilitation,
including at a minimum a lengthy period of exemplary conduct.
(i) An individual who has been convicted in a court of record of a
felony or any misdemeanor identified in paragraph (h)(1) of this
section shall not be eligible for registration or to apply for
registration during the time of any sentence (including confinement or
commitment to imprisonment), deferred adjudication, and period of
probation or parole as a result of the conviction and for a period of
two years after the date of successful completion of said sentence,
deferred adjudication, and probation or parole.
(ii) The following provisions apply to the determination of present
good moral character of an individual convicted of said felony or
misdemeanor:
(A) The court record or docket entry of conviction is conclusive
evidence of guilt;
(B) An individual convicted of a felony or misdemeanor identified
in paragraph (h)(l) of this section is conclusively deemed not to have
present good moral character and shall not be eligible to apply for or
be registered for a period of two years after completion of the
sentence, deferred adjudication, and period of probation or parole,
whichever is later; and
(C) The individual, upon applying for registration, shall prove by
clear and convincing evidence that he or she is of present good moral
character.
(iii) Upon proof that a conviction has been set aside or reversed,
the individual shall be eligible to file an application and, upon
passing the registration examination, have the OED Director determine,
in accordance with paragraph (h)(1) of this section, whether, absent
the conviction, the individual possesses present good moral character
and reputation.
(2) Moral character involving drug or alcohol abuse or dependency.
An individual's record is reviewed as a whole to see if there is a drug
or alcohol abuse or dependency issue. An individual appearing to abuse
drugs or alcohol, or being dependent on a drug or alcohol may be asked
to undergo an evaluation, at the individual's expense, by a qualified
professional selected by the OED Director. In instances where there is
evidence of a present dependency or an individual has not established a
record of recovery, the OED Director, in lieu of registration, may
offer the individual the opportunity to place his or her application in
abeyance for a specified period of time while agreed to conditions
regarding treatment and recovery are initiated and confirmed.
(3) Moral character involving lack of candor. An individual's lack
of candor in disclosing facts bearing on or relevant to issues
concerning moral character when completing the application or any time
thereafter may be found to be cause to deny registration on moral
character grounds.
(4) Moral character involving suspension, disbarment, or
resignation from a State bar. An individual who has been disbarred by a
disciplinary court from practice of law or has resigned in lieu of a
disciplinary proceeding (excluded or disbarred on consent) shall not be
eligible to apply for registration for a period of five years from the
date of disbarment or resignation. An individual who has been suspended
by a disciplinary court on ethical grounds from the practice of law
shall not be eligible to apply for registration until expiration of the
period of suspension. An individual who was not only disbarred,
suspended or resigned, but also convicted in a court of record of a
felony, or a crime involving moral turpitude or breach of trust, shall
be ineligible to apply for registration until the conditions both in
paragraph (h)(1) of this section and this paragraph (h)(4) are fully
satisfied. The OED Director may waive the two-year ineligibility period
provided for in paragraph (h)(1)(A) of this section following
conviction of a felony or crime only if the individual demonstrates
that he or she has been reinstated to practice law in the State where
he or she had been disbarred or suspended, or had resigned. An
individual who has been disbarred or suspended, or who resigned in lieu
of a disciplinary proceeding shall file with an application for
registration the fees required by Sec. Sec. 1.21(a)(1)(ii) and (10) of
this subchapter; a full and complete copy of the proceedings in the
disciplinary court that led to the disbarment, suspension, or
resignation; and written proof that he or she has filed an application
for reinstatement in the disciplining jurisdiction and obtained a final
determination on that application. The following provisions shall
govern the determination of present good moral character of an
individual who has been licensed to practice law in any jurisdiction
and has been disbarred or suspended on ethical grounds, or allowed to
resign in lieu of discipline, in that jurisdiction.
(i) A copy of the record resulting in disbarment, suspension or
resignation is prima facie evidence of the matters contained in said
record, and the imposition of disbarment or suspension, or the
acceptance of the resignation of the individual in question shall be
deemed conclusive that the individual has committed professional
misconduct.
(ii) An individual who has been disbarred or suspended, or who
resigned in lieu of disciplinary action is ineligible for registration
and is deemed not to have present good moral character during the
period of such discipline imposed by the disciplinary court.
(iii) The individual who has been disbarred or suspended, or who
resigned in lieu of disciplinary action,
[[Page 69521]]
shall submit proof that he or she has filed an application for
reinstatement in the disciplining jurisdiction and obtained a final
determination on that application.
(iv) The only defenses available to the individual in question are
set out below, and must be proven by the individual by clear and
convincing evidence:
(A) The procedure in the disciplinary court was so lacking in
notice or opportunity to be heard as to constitute a deprivation of due
process;
(B) There was such infirmity of proof establishing the misconduct
as to give rise to the clear conviction that the Office could not,
consistently with its duty, accept as final the conclusion on that
subject; or
(C) The finding of lack of present good moral character by the
Office would result in grave injustice.
(v) The individual, upon applying for registration, shall prove by
clear and convincing evidence that he or she is of present good moral
character.
(i) Factors that may be taken into consideration when evaluating
rehabilitation of an applicant seeking a moral character determination.
When considering whether an applicant has the good moral character
required for registration, the OED Director evaluates whether an
applicant possesses the qualities of honesty, fairness, candor,
trustworthiness, observance of fiduciary responsibility, respect for
and obedience to the laws of the States and the nation, and respect for
the rights of others and for the judicial process. Involvement in
activity that constitutes an act of misconduct or an act of moral
turpitude does not necessarily preclude an applicant from registration;
however, an applicant who has committed such acts must demonstrate
rehabilitation prior to registration. An act of misconduct may include,
but is not limited to, behavior that results in a criminal conviction,
a sustained accusation of fraud, or a sustained allegation of
unauthorized practice of law, violation of a school's honor code that
involves moral turpitude or results in expulsion, professional
discipline, license revocation or disbarment, as well as material
omissions from a moral character application, or misstatements in the
registration application and misrepresentations during the application
process.
(1) Individuals convicted of violent felonies, felonies involving
moral turpitude and crimes involving a breach of fiduciary duty are
presumed not to be of good moral character in the absence of a pardon
or a showing of complete reform and rehabilitation. The OED Director
shall exercise discretion to determine whether applicants convicted of
violent felonies, felonies involving moral turpitude, and crimes
involving a breach of fiduciary duty have produced overwhelming proof
of reform and rehabilitation, including at a minimum, a lengthy period
of not only unblemished, but exemplary conduct.
(2) The factors enumerated below are guidelines that may be taken
into consideration when evaluating whether an applicant has
demonstrated rehabilitation. Not all factors listed below will be
applicable to every single case nor will each factor necessarily be
given equal weight in evaluating the rehabilitation of an applicant.
The factors, taken as a whole although not exclusive, assist the OED
Director in determining whether an applicant has demonstrated
rehabilitation from an act of misconduct or moral turpitude. The
factors include:
(i) The nature of the act of misconduct, including whether it
involved moral turpitude, whether there were aggravating or mitigating
circumstances, and whether the activity was an isolated event or part
of a pattern;
(ii) The age and education of the applicant at the time of the act
of misconduct and the age and education of the applicant at the present
time;
(iii) The length of time that has passed between the act of
misconduct and the present, absent any involvement in any further acts
of moral turpitude, the amount of time and the extent of rehabilitation
being dependent upon the nature and seriousness of the act of
misconduct under consideration;
(iv) Restitution by the applicant to any person who has suffered
monetary losses through acts or omissions of the applicant;
(v) Expungement of a conviction;
(vi) Successful completion or early discharge from probation or
parole;
(vii) Abstinence from the use of controlled substances or alcohol
for not less than two years if the specific act of misconduct was
attributable in part to the use of a controlled substance or alcohol,
where abstinence may be demonstrated by, but is not necessarily limited
to, enrolling in and complying with a self-help or professional
treatment program;
(viii) Evidence of remission for not less than two years if the
specific act of misconduct was attributable in part to a medically
recognized mental disease, disorder or illness, where evidence of
remission may include, but is not limited to, seeking professional
assistance and complying with the treatment program prescribed by the
professional and submission of letters from the psychiatrist/
psychologist verifying that the medically recognized mental disease,
disorder or illness is in remission;
(ix) Payment of the fine imposed in connection with any criminal
conviction;
(x) Correction of behavior responsible in some degree for the act
of misconduct;
(xi) Completion of, or sustained enrollment in, formal education or
vocational training courses for economic self-improvement and thereby
eliminating economics as a cause for unethical conduct;
(xii) Significant and conscientious involvement in community,
church or privately sponsored programs designed to provide social
benefits or to ameliorate social problems; and
(xiii) Change in attitude from that which existed at the time of
the act of misconduct in question as evidenced by any or all of the
following:
(A) Statements of the applicant;
(B) Statements from family members, friends or other persons
familiar with the applicant's previous conduct and with subsequent
attitudes and behavioral patterns;
(C) Statements from probation or parole officers or law enforcement
officials as to the applicant's social adjustments; and
(D) Statements from persons competent to testify with regard to
neuropsychiatry or emotional disturbances.
(j) Hearing. If, following investigation of moral character, the
OED Director believes any evidence suggests lack of good moral
character and reputation, the OED Director shall give the individual
notice to show cause fairly apprising the individual of the OED
Director's reasons for failing to be convinced of the individual's good
character and reputation, and an opportunity to be heard before a final
decision is issued. The notice shall also give the individual the
choice of withdrawing the application. The individual shall be given no
less than 10 days to reply. The notice shall be given by certified mail
at the address appearing on the application if the address is in the
United States, and by any other reasonable means if the address is
outside the United States.
(1) Evidence supplied or confirmed by individual. When the evidence
suggesting lack of good moral character and reputation is information
supplied or confirmed by the individual, or the evidence is of an
undisputed documentary character disclosed to the individual, the OED
Director, with the concurrence of a majority of the
[[Page 69522]]
Committee on Enrollment, shall enter a decision based solely upon said
information or documentary evidence. In determining an individual's
moral character and reputation, the OED Director and Committee may act
without requiring the individual to appear before it to be sworn and
interrogated. If the OED Director and a majority of the Committee are
of the opinion that an adverse decision should be made, the procedure
set forth in paragraphs (j)(3) through (j)(5) of this section shall be
followed.
(2) Evidence supplied by person or source whose reliability or
veracity is questioned. When the evidence suggesting lack of good moral
character and reputation depends on information supplied by a
particular person whose reliability or veracity is brought into
question by the individual, the individual shall be informed in the
notice to show cause of the opportunity to confront and cross-examine
the person in an oral hearing. If the individual does not request an
oral hearing within the time fixed by the notice, the OED Director,
with the concurrence of a majority of the Committee on Enrollment,
shall enter a recommendation. If, within the fixed time, the individual
requests an oral hearing, the Committee on Enrollment shall conduct the
hearing under the following rules of procedure:
(i) The Committee shall give the individual no less than 10 days
notice of:
(A) The date, time and place of an oral hearing;
(B) The individual's right to be represented by counsel;
(C) The individual's right at an oral hearing to examine and cross-
examine witnesses;
(D) The individual's right at an oral hearing to adduce evidence
bearing on the individual's moral character and fitness to practice
before the Office. Testimony at an oral hearing shall be under oath and
a complete stenographic record of the hearing shall be kept; and
(E) The OED Director and Committee may act without the individual
agreeing to be sworn and interrogated.
(ii) A hearing shall be conducted in a formal manner according to
the rights listed in paragraph (j)(2)(A) of this section; however, the
Committee shall not be bound by formal rules of evidence. It may, in
its discretion, take evidence in other than testimonial form and
determine whether evidence to be taken in testimonial form shall be
taken in person at the hearing or by deposition. The proceedings shall
be recorded and the individual may order a transcript at the
individual's expense. If the OED Director and a majority of the
Committee are of the opinion that an adverse decision should be made,
the procedure set forth in paragraphs (j)(3) through (j)(5) of this
section shall be followed.
(3) The recommendation shall include the findings and conclusions
of the OED Director and Committee, and shall be served on the
individual, or his or her attorney, a copy of the decision containing
their findings and conclusions. The recommendation shall permit the
individual, within 15 days of the date of the recommendation, to
withdraw the application, or to appeal the recommendation. If the
individual elects to withdraw the application, written notice thereof
shall be given to the OED Director within the time fixed, and no
further action will be necessary to close the matter.
(4) If the individual elects to appeal the recommendation, written
notice thereof shall be given to the OED Director within the time
fixed, and an appeal brief shall be filed within 30 days of the date of
the recommendation. The individual's appeal brief shall show cause why
registration should not be denied. The OED Director and Committee shall
deliver to the USPTO Director their recommendation, together with the
record in either paragraphs (j)(1) or (j)(2) of this section.
(5) The USPTO Director on the basis of the record shall determine
whether the individual should be denied registration for lack of good
moral character and reputation. The USPTO Director shall issue a
decision on the basis of the record made in accordance with paragraphs
(j)(1) or (j)(2) of this section. The USPTO Director will consider no
new evidence. The individual shall not submit copies of documents
already of record before the OED Director and Committee with any appeal
to the USPTO Director.
(k) Reapplication for admission. An individual who has been refused
registration for lack of present good moral character in a USPTO
Director's decision, or in the absence of a USPTO Director's decision,
in a recommendation of the OED Director and Committee on Enrollment,
the individual may reapply for registration five years after the date
of the decision, unless a shorter period is otherwise ordered by the
USPTO Director. An individual under investigation for moral character
may elect to withdraw his or her application, and may reapply for
registration five years after the date of withdrawal. Upon
reapplication, the individual shall pay the fees required by Sec. Sec.
1.21(a)(1)(ii) and (10) of this subchapter, and have the burden of
showing by clear and convincing evidence the individual's fitness to
practice as prescribed in paragraph (b) of this section. Upon
reapplication, the individual also shall complete successfully the
examination prescribed in paragraph (b) of this section, even though
the individual has previously passed a registration examination.
Sec. 11.8 Oath, registration fee, and annual fee.
(a) A passing grade on the registration examination may be a basis
for registration for a period of no more than two years from the date
notice thereof is sent to the individual. After an individual passes
the examination, or the examination is waived for an individual, the
OED Director shall promptly publish a solicitation for information
concerning the individual's moral character and reputation. The
solicitation shall include the individual's name, and business or
communication postal address.
(b) An individual shall not be registered as an attorney under
Sec. 11.6(a), registered as an agent under Sec. Sec. 11.6(b) or (c),
or granted limited recognition under Sec. 11.9(b) unless the
individual files the following in OED within 2 years of the issuance of
a notice of passing registration examination; a completed Data Sheet; a
completed form to obtain the Office's authorization to use a digital
signature; an oath or declaration prescribed by the USPTO Director; the
registration fee set forth in Sec. 1.21(a)(2) of this subchapter; and
a certificate of good standing of the bar of the highest court of a
State provided the certificate is no more than six months old.
(c) An individual, including a former patent examiner, is
responsible for updating all information and answers submitted in or
with his or her application based upon anything occurring between the
date the application is signed by the individual, and the date he or
she is registered or recognized to practice before the Office in patent
matters. The update shall be filed within thirty days after the date of
the occasion that necessitates the update.
(d) Annual fee. A registered patent attorney or agent shall
annually pay to the USPTO Director a fee in the amount required by
Sec. 1.21(a)(7) of this subchapter. The payment period for registered
patent attorneys and agents shall be based on the first initial of each
individual's last name. The payment period for last names beginning
with A-E shall be every January 1 through March 31; the payment period
for last names beginning with F-K shall be
[[Page 69523]]
every April 1 through June 30; the payment period for last names
beginning with L through R shall be every July 1 through September 30;
and the payment period for last names beginning with S through Z shall
be every October 1 through December 31. Payment shall be for the
following twelve months. Payment shall be due by the last day of the
payment period. Persons newly registered to practice before the Office
shall be permanently assigned to the appropriate payment period based
on the first initial of their last name on the date of recognition.
Persons newly registered shall not be liable for dues during the
calendar year they are first registered. Failure to comply with the
provisions of this paragraph (d) shall require the OED Director to
subject a registered patent attorney or agent to a delinquency fee
penalty set forth in Sec. 11.11(b)(1), and further financial penalties
and administrative suspension as set forth in Sec. 11.11(b)(2).
Sec. 11.9 Limited recognition in patent matters.
(a) Any individual not registered under Sec. 11.6 may, upon a
showing of circumstances which render it necessary or justifiable, and
that the individual is of good moral character and reputation, be given
limited recognition by the OED Director to prosecute as attorney or
agent a specified application or specified applications, but limited
recognition under this paragraph shall not extend further than the
application or applications specified. Limited recognition shall not be
granted to individuals who have passed the examination or for whom the
examination has been waived, and who are awaiting registration to
practice before the Office in patent matters.
(b) When registration under paragraphs (a) or (b) of Sec. 11.6(a)
of an alien residing in the United States is not consistent with the
terms on which the alien entered and remains in the United States, the
resident alien may be given limited recognition under paragraph (a) of
this section if:
(1) The Immigration and Naturalization Service or the Department of
State has authorized the resident alien to be employed in the capacity
of representing a patent applicant by preparing and prosecuting the
applicant's patent application; and
(2) The resident alien fulfills the provisions of Sec. Sec.
11.7(a), (b), and either Sec. 11.7(c) or Sec. 11.7(d). Limited
recognition shall be granted in maximum increments of one year,
fashioned to be consistent with the terms of authorized employment, and
require the resident alien to be employed by or associated with a
registered practitioner. Limited recognition shall not be granted or
extended to an alien residing abroad. If granted, limited recognition
shall automatically expire when the resident alien leaves the United
States. Any person admitted to the United States to be trained in
patent law shall not be admitted to the registration examination or
granted recognition until completion of that training.
(c) An individual not registered under Sec. 11.6 may, if appointed
by applicant to do so, prosecute an international application only
before the United States International Searching Authority and the
United States International Preliminary Examining Authority, provided
that the individual has the right to practice before the national
office with which the international application is filed as provided in
PCT Art. 49, Rule 90 and Sec. 1.455, or before the International
Bureau when the USPTO is acting as Receiving Office pursuant to PCT
Rules 83.1 bis and 90.1.
(d) Limited recognition fee and annual dues. An individual, within
30 days after being notified of being granted limited recognition under
paragraph (b) or (c) of this section, shall pay to the USPTO Director a
fee set forth in Sec. 1.21(a)(2) of this subchapter. The individual
also shall pay annually a fee in the amount required by Sec.
1.21(a)(8) of this subchapter upon extension, renewal, or new grant of
limited recognition, provided that the individual granted limited
recognition for the first time during a fiscal year shall not be liable
for the annual fee during that calendar year. Failure to comply with
the provisions of this paragraph (d) shall subject the individual to
loss of recognition.
Sec. 11.10 Restrictions on practice in patent matters.
(a) Only practitioners who are registered under Sec. 11.6 or
individuals given limited recognition under Sec. 11.9 are permitted to
prosecute patent applications of others before the Office; or represent
others in a reexamination proceeding, correction of a patent,
correction of inventorship, protest, or other proceeding before the
Office.
(b) Undertaking for registration by former Office employee. No
individual not previously registered will be registered as an attorney
or agent while employed by the Office. No individual who has served in
the patent examining corps or elsewhere in the Office may practice
before the Office after termination of his or her service, unless he or
she signs the following written undertaking:
(1) To not knowingly act as agent or attorney for, or otherwise
represent, or aid in any manner the representation of, any other person
in any formal or informal appearance before the Office, or with the
intent to influence, make or assist in any manner the making of any
oral or written communication on behalf of any other person:
(i) To the United States,
(ii) In connection with any particular patent or patent application
involving a specific party, or
(iii) In which said employee participated personally and
substantially as an employee of the Office; and
(2) To not knowingly act within two years after terminating
employment by the United States as agent or attorney for, otherwise
represent or assist in any manner the representation of any other
person in any formal or informal appearance before the Office, or with
the intent to influence, make or aid in any manner the making of any
oral or written communication on behalf of any other person:
(i) To the United States,
(ii) In connection with any particular patent or patent application
matter involving a specific party, or
(iii) If such matter was actually pending under the employee's
responsibility as an officer or employee within a period of one year
prior to the termination of such responsibility.
(3) The words and phrases in paragraphs (b)(1) and (b)(2) of this
section are construed as follows:
(i) Represent and representation means acting as patent attorney or
patent agent or other representative in any appearance before the
Office, or communicating with an employee of the Office with intent to
influence.
(A) Patent attorneys and patent agents. This provision is directed
to the former employee who participates in a particular matter, e.g.,
patent application while employed by the Office and later either enters
a ``revolving door'' by representing the applicant on the same matter,
or ``switches sides'' by representing another person on the same
matter. Note: The examples in this section do not incorporate the
special statutory restrictions on ``Senior Employees.''
Example 1: An attorney in the Solicitor's Office personally
works on an appeal in the United States Court of Appeals for the
Federal Circuit with respect to a patent application owned by
Company X. After leaving the Office, she is registered as a patent
attorney, and asked by Company X to represent it in that case. She
may not do so.
[[Page 69524]]
(B) Assist in any manner means aid or help another person on a
particular matter involving representation. This provision is directed
to the person who, as an employee, participates in a particular matter,
e.g., patent application, while employed by the Office and after
separation from the Office, behind the scenes, either enters a
``revolving door'' by assisting the applicant on the same matter, or
``switches sides'' by assisting another person on the same matter.
Example 1: A primary patent examiner allows a patent application
owned by Company X. After leaving the Office, he is registered as a
patent agent, and is asked by Company X to assist its attorneys in
filing and prosecuting a reissue patent application. He may neither
participate in the drafting of claims to be included in the reissue
application, nor advise Company X on tactics and procedure,
including the form and content of the oath needed for the reissue
application, nor participate in drafting amendments to be filed in
the application, even if another registered practitioner signs the
documents filed in the Office.
Example 2: A patent examiner, shortly before resigning from the
Office, signs an Office action rejecting claims in an inventor's
patent application. The inventor replies, and a new examiner sends
the inventor another Office action containing a final rejection of
claims in the application. After resigning, the former examiner
becomes registered as a patent agent. The inventor asks the former
examiner--now registered patent agent for advice in replying to the
Office action and to ghostwrite a reply for the inventor to sign and
file as the inventor's own reply to the Office action. The former
examiner may not do so.
(C) A former Office employee is not prohibited from providing in-
house assistance that does not involve representation, but is
prohibited from providing in-house assistance involving representation
of another person.
Example 1: An Office employee examined a patent application of
Company X, and allowed the application, which matured into a patent.
Upon separation from the Office, he is hired by Company X, and
becomes registered as a patent attorney. He works on licensing the
technology covered by the claims in the patent, but has no direct
contact with the Office. At the request of a company vice president,
he prepares a paper describing the persons at the Office who should
be contacted regarding reexamination of the patent, and what they
consider persuasive for a favorable reexamination ruling. He may do
so.
Example 2: A patent examiner examined a patent application of
Company Z, and allowed an original application, which matured into a
patent. Upon separation from the Office, he is hired by Company Z,
and becomes registered as a patent attorney. Company Z filed a
continuation-in-part application based on the original application.
Another registered practitioner is prosecuting the CIP application.
A company vice president requests the former patent examiner to
assist the other practitioner by preparing an amendment for the CIP
application to overcome outstanding rejections or objections. The
amendment is to be signed by the other registered practitioner, and
the former examiner is to have no direct contact with the Office.
This would be a communication with intent to influence. The former
patent examiner may not do so.
(D) Appearance means that an individual is physically present
before the Office in either a formal or informal setting, or the
individual conveys material to the Office in connection with a formal
proceeding or application; the appearance must occur in regard to a
communication that is intended to influence. A communication is broader
than an appearance and includes, for example, correspondence, or
telephone calls.
Example 1: An appearance occurs when a former patent examiner,
now a registered patent agent, meets with a current patent examiner
or group director in either the Office or a restaurant to discuss a
patent application; or when the former examiner submits a
communication, e.g., an amendment, appeal brief, or petition,
bearing his or her name.
Example 2: A former patent examiner, now a registered patent
agent, makes a telephone call to a present patent examiner to
discuss an Office action in an application to reissue a patent which
the former patent examiner examined; or ghostwrites an amendment to
be signed and filed by an inventor. The former examiner has made a
communication.
(E) Elements of ``influence'' and potential controversy are
required. Communications that do not include an ``intent to influence''
are not prohibited. Moreover, a routine request not involving a
potential controversy is not prohibited. For example, the following are
not prohibited: inquiring into the status of a pending application
being prosecuted by the practitioner's law firm; a request for publicly
available documents; or a communication by a former examiner, not in
regard to an adversarial proceeding, imparting purely factual
information.
Example 1: A member of the Board of Patent Appeals and
Interferences personally works on an interference between a patent
application of Company X and a patent application of Company Y.
After leaving the Office, he is registered as a patent attorney, and
asked by Company X and Company Y to act as arbitrator between the
parties regarding the same interfering applications. The arbitration
award is filed with the Office, and necessarily has the intent to
influence that it meets all requirements to be dispositive and
acceptable to the Office. The former member of the Board, through
the award, in effect, represents both parties. He may not do so.
(F) Project responses not included. In a context not involving a
potential controversy involving the United States, no finding of
``intent to influence'' shall be based on whatever influential effect
inheres in an attempt to formulate a meritorious proposal or program.
Example 1: The employee of Company X in the previous example is
asked some ten years after being hired by the company to improve
upon the claimed subject matter in the patent, which he does, and a
patent application for the improvement is filed. This is not
prohibited despite the fact that his improvement may be inherently
influential on a question of patentability. However, he may not
argue for its patentability.
(ii) ``Particular patent or patent application involving a specific
party or parties.'' (A) Particular patent or patent application. Like
the prohibitions of sections (a) and (b) of 18 U.S.C. 207, the
prohibitions of this section would be based on the former employee's,
e.g., patent examiner's or assistant solicitor's, prior participation
in or responsibility for a ``judicial or other proceeding, application,
request for a ruling or other determination, contract, claim,
controversy, investigation, charge, accusation, arrest, or other
particular matter involving a specific party or parties'' in which the
United States is a party or has a direct and substantial interest. Such
matters typically involve a specific proceeding affecting the legal
rights of the parties or an isolatable transaction or related set of
transactions between identifiable parties.
All patent issues, including the filing and prosecution of a patent
application, are applications, claims, or other matters in which the
United States is a directly or indirectly interested. For a patent
examiner, a particular matter includes any patent application of a
specific party, including a provisional, substitute, international,
continuation, divisional, continuation-in-part, or reissue patent
application, as well as any protest, reexamination, petition, appeal,
or interference based on the patent application of a specific party. A
``specific party'' includes the applicant, owner, or assignee of the
application.
Example 1: A patent examiner reviews and allows a particular
patent application for an invention. After leaving the Office, and
becoming registered as a patent agent, the former patent examiner
may not represent the owner of the patent before the Office in an
application for reissue of the patent, in a reexamination of the
patent, in an interference involving the patent, in a divisional or
continuation-in-part application, and the like.
Example 2: A patent examiner participates by recommending an
interference between an application she examined and an application
that she did not examine. After leaving the Office and becoming a
registered patent attorney, she may not represent the owner of
[[Page 69525]]
the application that she did not examine in the interference since
her participation was by way of recommendation in a particular
matter affecting a specific party or parties.
(B) Relationship of personal participation to specificity. In
certain cases, whether a patent or patent application should be treated
as a ``particular patent or patent application matter involving
specific parties'' depends on the employee's own participation in
events. Participation may result in particularity and specificity to
the patent or patent application.
Example 1: A patent examiner without any signatory authority
drafts the first Office action in an application filed by Company X.
After drafting the Office action containing rejections of several
claims over prior art, and a rejection of other claims under 35
U.S.C. 112, she submits it to her supervisor for review. The
supervisor reviews the draft and suggests changes. On her last day
of employment at the Office, the examiner does not have an
opportunity to make the changes. The application and drafted action
are later assigned to another examiner, who is taking over her art.
After she separates from the Office, the other examiner prepares the
Office action, including the rejections she had urged, and signs the
Office action. Thereafter, the Office action is duly mailed. The
former patent examiner is then registered as a patent agent, and is
asked by Company X to represent it before the Office on the same
patent application. She may not do so.
(C) The particular patent or patent application includes related
patents and applications. The requirement of a ``particular patent or
patent application involving a specific party'' applies both at the
time that the Office employee acts in an official capacity and at the
time in question after service in the Office. The same particular
patent or application may continue in another form or in part. In
determining whether two particular patents or applications are related,
the Department of Commerce considers the extent to which the matters
involve the same basic facts, related issues, the same or related
parties, time elapsed, the same confidential information, and the
continuing existence of an important Federal interest.
Example 1: A patent examiner was substantially involved in the
granting of a patent to Z Company for the development of alternative
energy sources. Six years after he terminates Office employment, the
patent is still in effect, but much of the technology has changed as
have many of the personnel. An employee of the Q Company has
invented an improvement on the original patent. The former patent
examiner, now a registered patent attorney, may represent Q Company
in its patent application for the improvement, since Q Company's
patent application is a different matter from the patent granted to
Z Company. The former employee should first consult the Office and
request a written determination before undertaking any
representation in the matter.
Example 2: A patent examiner reviewed the claims in an initial
patent application, and allowed the claims in the application. The
prosecution in a divisional application of claims directed to
subject matter disclosed but not originally sought to be claimed in
the initial application must be regarded as part of the same
particular matter as the initial application. The reason is that the
validity of the patent may be put in issue, and many of the facts,
e.g., benefit of priority to antedate any intervening prior art,
giving rise to the patent would be involved.
Example 3: An attorney in the Solicitor's Office personally
works on an appeal in the Court of Appeals for the Federal Circuit
of a patent application owned by Company X. A patent is later
granted on the application. After leaving the Office, he is
registered as a patent attorney, and asked by Company X to represent
it in an infringement suit against an alleged infringer. He may not
do so.
Example 4: A member of the Board of Patent Appeals and
Interferences personally works on an appeal of a patent application
of Company X. After leaving the Office, he is registered as a patent
attorney, and asked by Company X to represent it in an interference
proceeding before the Office between the patent granted on the
application, and an application of another party. He may not do so.
Other examples: See paragraph (b)(3)(i)(A) of this section, Example
1, and paragraph (b)(3)(ii)(A) of this section, Examples 1 and 2.
(D) United States must be a party or have an interest. The
particular patent or patent application must be one in which the United
States is a party, such as in a judicial or administrative proceeding
or a contract, or in which it has a direct and substantial interest.
The importance of the Federal interest in a matter can play a role in
determining whether two matters are the same particular matter. All
patent issues, including the filing and prosecution of a patent
application, are matters in which the United States is directly or
indirectly interested. The United States is not only interested in the
grant of a patent. Its interest continues. The United States may bring
suit to cancel patents obtained by fraud.
Example 1: A patent examiner participated in examining a patent
application filed by the Z Company. After leaving the Office and
becoming a registered patent attorney, she may not represent Z
Company in a request for reexamination of the patent granted on the
application, or assist other attorneys in drafting the request. The
interest of the United States in preventing both inconsistent
results and the appearance of impropriety in the same factual matter
involving the same party, Z Company, is direct and substantial.
(iii) ``Participate personally and substantially.'' (A) Basic
requirements. The restrictions of section 207(a) apply only to those
patents and applications in which a former patent examiner had
``personal and substantial participation,'' exercised ``through
decision, approval, disapproval, recommendation, the rendering of
advice, investigation or otherwise.'' To participate personally means
directly, and includes the participation of a subordinate when actually
directed by the former Office employee in the matter. Substantially
means that the examiner's involvement must be of significance to the
matter, or form a basis for a reasonable appearance of such
significance. It requires more than official responsibility, knowledge,
perfunctory involvement, or involvement on an administrative or
peripheral issue. A finding of substantiality should be based not only
on the effort devoted to a matter, but also on the importance of the
effort. While a series of peripheral involvements may be insubstantial,
the single act of approving or participation in a critical step may be
substantial. It is essential that the participation be related to a
``particular patent or patent application involving a specific party.''
(See paragraph (b)(3)(ii)(A) of this section.)
Example 1: A primary examiner is not in charge of patent
applications assigned to another examiner having partial signatory
authority. The primary examiner is asked by the supervisory patent
examiner to be the acting supervisory patent examiner while the
latter is on vacation. The primary examiner reviews and approves the
second action final rejection in an Office action in a patent
application (belonging to the Z Company) of the other examiner
having partial signatory authority. Later, the other examiner, with
the approval of the supervisory patent examiner, allows the
application, and a patent is granted to the Z Company on the
application. After retiring and being registered as a patent agent,
the former primary examiner is asked by the Z Company to represent
the patent owner in filing a reissue application to correct an error
in the patent. The primary examiner, having personally and
substantially participated by decision, or approval in the
particular matter, may not do so.
Example 2: A primary examiner is not in charge of, nor has
official responsibility for the patent applications of new patent
examiners she is training. However, she is frequently consulted as
to searches, interpreting the scope of the claims, and drafting
Office actions for the applications. Such an individual, as well as
the new patent examiners, has personally and substantially
participated in the matters.
Example 3: A supervisory primary examiner signs a restriction
requirement in an Office action prepared by a patent examiner having
no signatory authority. The supervisory primary examiner and the
patent examiner having no signatory authority have
[[Page 69526]]
each personally and substantially participated in the matter.
Example 4: A primary patent examiner, having concluded that all
the claims in a first application are allowable, conducts an
interference search and finds interfering subject matter being
claimed in a second application. The examiner has personally and
substantially participated in the first and second applications,
whether the second application is assigned to and being examined by
the same examiner or another patent examiner.
(B) Participation on ancillary matters. An Office employee's
participation on subjects not directly involving the substantive merits
of a matter may not be ``substantial,'' even if it is time-consuming.
An employee whose responsibility is the review of a matter solely for
compliance with administrative control or budgetary considerations and
who reviews a particular matter for such a purpose should not be
regarded as having participated substantially in the matter, except
when such considerations also are the subject of the employee's
proposed representation. (See paragraph (b)(3)(i)(C) of this section).
Such an employee could theoretically cause a halt in a program for
noncompliance with standards under his or her jurisdiction, but lacks
authority to initiate a program or to disapprove it on the basis of its
substance.
Example 1: A primary examiner is asked to review the Office
actions of another examiner having partial signatory authority for
compliance with procedures to ascertain if the other examiner
qualifies for full signatory authority. Such participation is not
``substantial.''
(C) Role of official responsibility in determining substantial
participation. Official responsibility is defined in paragraph
(b)(3)(v) of this section. ``Personal and substantial participation''
is different from ``official responsibility.'' One's responsibility
may, however, play a role in determining the ``substantiality'' of an
Office employee's participation. For example, ordinarily a patent
examiner's forbearance on a matter is not substantial participation.
If, however, a primary patent examiner is charged with responsibility
for review of a patent application assigned to him, and action cannot
be undertaken over his objection, the result may be different. If the
primary patent examiner reviews Office actions of a new examiner whose
Office actions, after several months, are deemed reliable, and passes
them on, his participation may be regarded as ``substantial'' even if
he claims merely to have engaged in inaction.
(iv) Official responsibility in complex cases. In certain complex
factual cases, the Office is likely to be in the best position to make
a determination as to certain issues, for example, the identity or
existence of a particular matter. Designated ethics officials at the
Department of Commerce, in consultation with the Office when deemed
beneficial, should provide advice promptly to former Office employees
who make inquiry on any matter arising under these regulations.
(v) Official responsibility is defined in 18 U.S.C. 202 as, ``the
direct administrative or operating authority, whether intermediate or
final, and either exercisable alone or with others, and either
personally or through subordinates, to approve, disapprove, or
otherwise direct Government actions.''
(A) Determining official responsibility. Ordinarily, those areas
assigned by statute, regulation, Executive Order, job description, or
delegation of authority determine the scope of an employee's ``official
responsibility''. All particular matters under consideration in the
Office are under the ``official responsibility'' of the Director of the
Office, and each is under that of any intermediate supervisor having
responsibility for an employee who actually participates in the matter
within the scope of his or her duties. A patent examiner would have
``official responsibility'' for the patent applications assigned to him
or her.
Example 1: A patent examiner, to whom a new application is
assigned, is officially responsible for reviewing the application
for compliance with statutory, regulatory, and procedural
requirements. Upon assignment of the application, the application
became a particular matter for which the examiner is officially
responsible.
(B) Ancillary matters and official responsibility. Administrative
authority as used in the foregoing definition means authority for
planning, organizing and controlling matters rather than authority to
review or make decisions on ancillary aspects of a matter such as the
regularity of budgeting procedures, public or community relations
aspects, or equal employment opportunity considerations. Responsibility
for such an ancillary consideration does not constitute responsibility
for the particular matter, except when such a consideration is also the
subject of the employee's proposed representation.
Example 1: A supervisory patent examiner would not have official
responsibility for all patent applications in a technology center or
the Office even though she must review the records of all the
applications to locate a missing file.
Example 2: Within two years after terminating employment, a
supervisory patent examiner, now a registered patent attorney, is
asked to represent Q Company in a continuation patent application of
an application which was pending during the last year of the
supervisory patent examiner's tenure. The continuation application
contains a rejection that was first imposed in the parent
application by a primary examiner who reported to the supervisory
patent examiner. The supervisory patent examiner did not review the
Office actions prepared by the primary examiner for the application.
She may not represent Q Company on this matter.
(C) Knowledge of matter pending required. In order for a former
employee, e.g., former patent examiner, to be barred from representing
another as to a particular matter, he or she need not have known, while
employed by the Office, that the matter was pending under his or her
official responsibility. However, the former employee is not subject to
the restriction unless at the time of the proposed representation of
another, he or she knows or learns that the matter had been under his
or her responsibility. Ordinarily, a former employee who is asked to
represent another on a matter will become aware of facts sufficient to
suggest the relationship of the prior matter to his or her former
office, e.g., technology center, group or art unit. If so, he or she is
under a duty to make further inquiry, including direct contact with an
agency's designated ethics official where the matter is in doubt. It
would be prudent for a patent examiner to maintain a record of only
application numbers of the applications actually acted upon by
decision, recommendation, as well as those applications in the
examiner's art which he or she has not acted upon.
(D) Self-disqualification. A former employee, e.g., former patent
examiner, cannot avoid the restrictions of this section on the ground
by self-disqualification with respect to a matter for which he or she
otherwise had official responsibility. However, as in Sec. 207(a),
self-disqualification is effective to eliminate the restrictions.
(vi) Actually pending means that the matter was in fact referred to
or under consideration by persons within the employee's area of
responsibility, not that it merely could have been.
Example 1: A staff lawyer in the Office of General Law is
consulted by procurement officers on the correct resolution of a
contractual matter involving Q Company. The lawyer renders an
opinion resolving the question. The same legal question arises later
in several contracts with other companies, but none of the disputes
with such companies is referred to the Office of General Law. The
Office of General Law has official responsibility for the
determination of the Q Company matter. The other matters were
[[Page 69527]]
never ``actually pending'' under that responsibility, although as a
theoretical matter, such responsibility extended to all legal
matters within the department.
(vii) Other essential requirements. All other requirements of the
statute must be met before the restriction on representation applies.
The same considerations apply in determining the existence of a
``particular matter involving a specific party,'' a representation in
an ``appearance,'' or ``intent to influence,'' and so forth as set
forth under paragraph (b)(1) of this section.
Example 1: During her tenure as Director of the Office, the
Director's subordinates undertook major changes in application of
new rules for processing patent applications. Eighteen months after
terminating employment, she is asked to represent before the Office
Z Company, which believes it is being unfairly treated under the
application of the rules. The Z Company matter first arose on patent
applications filed after the Director terminated her employment. She
may represent Z Company because the matter pending under her
official responsibility was not one involving ``a specific party.''
(Moreover, the time-period covered by 18 U.S.C. 207(c) has elapsed).
(viii) Measurement of two-year restriction period. The statutory
two-year period is measured from the date when the employee's
responsibility in a particular area ends, not from the termination of
service in the Office, unless the two occur simultaneously. The
prohibition applies to all particular matters subject to such
responsibility in the one-year period before termination of such
responsibility.
Example 1: A Group Director retires after 26 years of service
and enters private industry as a consultant. He will be restricted
for two years with respect to all matters that were actually pending
under his official responsibility in the year before his retirement.
Example 2: A patent examiner transfers from a position in a
first Group to a position in a second Group, and she leaves the
Office for private employment nine months later. As a registered
patent attorney or agent, after 15 months she will be free of
restriction insofar as matters that were pending under her
responsibility in the first Group in the year before her transfer.
She will be restricted for two years in respect of the second Group
matters that were pending in the year before her departure for
private employment.
(c) Former employees of the Office. Former employees of the Office,
whether they are or are not a practitioner, are subject to the post-
employment provisions of 18 U.S.C. 207(a) and (b)(1), and the
provisions of 5 CFR 2637.201 and 2637.202. A former employee who is a
practitioner is subject to the provisions of Sec. 11.111.
(d) A practitioner who becomes an employee of the Office may not
prosecute or aid in any manner in the prosecution of any patent
application before the Office. Noncompliance with this provision shall
constitute misconduct under Sec. 11.804(i)(19).
(e) Practice before the Office by Government employees is subject
to any applicable conflict of interest laws, regulations or codes of
professional responsibility. Noncompliance with said conflict of
interest laws, regulations or codes of professional responsibility
shall constitute misconduct under Sec. Sec. 11.804(b) or 11.804(h)(8).
A practitioner who is a Government employee must so inform the OED
Director, and must provide his or her complete Government address as
his or her business address in every communication to OED.
Sec. 11.11 Administrative suspension, inactivation, resignation, and
readmission.
(a) Registered attorneys and agents must notify the OED Director of
their postal address for his or her office, e-mail address for his or
her business, and business telephone number, and of every change to any
of said addresses, or telephone numbers within 30 days of the date of
the change. A registered attorney or agent shall separately provide
written notice to the OED Director in addition to any notice of change
of address and telephone number filed in individual applications. A
registered practitioner who is an attorney in good standing with the
bar of the highest court of one or more states shall provide the OED
Director with the state bar identification number associated with each
membership. The OED Director shall publish from the roster a list
containing the name, postal business addresses, business telephone
number, registration number, and registration status as an attorney or
agent of each registered practitioner recognized to practice before the
Office in patent cases.
(b) Administrative suspension. (1) Whenever it appears that a
registered patent attorney or agent has failed to comply with Sec.
11.8(d) or Sec. Sec. 11.12(a) and (e), the OED Director shall mail a
notice to the attorney or agent advising of the noncompliance and
demanding:
(i) Compliance within sixty days after the date of such notice, and
(ii) Payment of a delinquency fee set in Sec. 1.21(a)(9)(i) of
this subchapter for each rule violated. The notice shall be
communicated to the attorney or agent by mail or e-mail, according to
the manner by which the practitioner last communicated his or her
business postal or e-mail address to the OED Director, or by other
service for practitioners located out of the United States, its
possessions or territory.
(2) In the event a registered patent attorney or agent fails to
comply with the notice of paragraph (b)(1) of this section within the
time allowed, the OED Director shall send notice in the manner provided
for in paragraph (b)(1) of this section to the attorney or agent at the
practitioner's most recent business postal or e-mail address on file
advising:
(i) That his or her registration has been administratively
suspended, and
(ii) That the attorney or agent may no longer practice before the
Office in patent matters or in any way hold himself or herself out as
being registered to practice before the Office in patent matters.
(iii) Following administrative suspension, the suspended
practitioner may be reinstated only upon demonstrating to the OED
Director satisfaction that the practitioner has complied with the rules
relating to registration, and upon payment of a reinstatement fee set
by Sec. 1.21(a)(9)(ii) of this subchapter for each rule violated.
(3) Whenever the OED Director notifies an attorney or agent that
his or her registration has been administratively suspended, the OED
Director shall publish notice of the administrative suspension in the
Official Gazette.
(4) An administratively suspended attorney or agent remains
responsible for paying his or her annual fee required by Sec. 11.8(d),
and for completing the required continuing training programs.
(5) An administratively suspended attorney or agent is subject to
investigation and discipline for his or her conduct prior to, during,
or after the period his or her name was administratively suspended.
(6) An administratively suspended attorney or agent is prohibited
from continuing to practice before the Office in patent cases while
administratively suspended. Failure to comply with this rule will
subject the attorney or agent to discipline.
(c) Administrative Inactivation. (1) Any registered practitioner
who shall become employed by the Office shall comply with Sec. 11.116
for withdrawal from the applications, patents, and trademark matters
wherein he or she is an attorney or agent of record, and notify the OED
Director in writing of said employment on the first day of said
employment. The name of any registered practitioner employed by the
Office shall be endorsed on the roster as administratively inactive.
The practitioner shall not be responsible for
[[Page 69528]]
payments of the annual fee each complete fiscal year while in
administratively inactive status. Upon separation from the Office, the
practitioner may request reactivation by completing and filing an
application, Data Sheet, signing a written undertaking required by
Sec. 11.10, paying the fee required by Sec. 1.21(a)(1)(i) of this
subchapter, and completing the required continuing training programs if
the practitioner did not pass the recertification tests required for
patent examiners during the practitioner's employment at the Office and
appropriate to the practitioner's grade and position in the Office.
Upon restoration to active status, the practitioner shall be
responsible for the annual fee for the fiscal year in which he or she
is restored to active status. An administratively inactive practitioner
remains subject to the provisions of Sec. Sec. 11.100-11.806, and to
proceedings and sanctions under Sec. Sec. 11.19-11.58 for conduct that
violates a provision of Sec. Sec. 11.100-11.806 prior to or during
employment at the Office.
(2) Any registered practitioner who is a judge of a court of
record, full time court commissioner, U.S. bankruptcy judge, U.S.
magistrate judge, or a retired judge who is eligible for temporary
judicial assignment and is not engaged in the practice of law should
request, in writing, that his or her name be endorsed on the roster as
administratively inactive. Upon acceptance of the request, the OED
Director shall endorse the name as administratively inactive. The
practitioner shall not be responsible for payment of the annual fee or
completion of the required continuing training programs for each
complete fiscal year the practitioner continues to be in
administratively inactive status. Following separation from the bench,
the practitioner may request restoration to active status by completing
and filing an application, Data Sheet, signing a written undertaking
required by Sec. 11.10, and paying the fee required by Sec.
1.21(a)(1)(i) of this subchapter. Upon restoration to active status,
the practitioner shall be responsible for the annual fee and required
continuing training for the fiscal year in which he or she is restored
to active status.
(d) Voluntary Inactivation. (1) Except as provided in paragraph
(d)(4) of this section, any registered practitioner may voluntarily
enter inactive status by filing a request, in writing, that his or her
name be endorsed on the roster as inactive. Upon acceptance of the
request, the OED Director shall endorse the name as inactive.
(2) A practitioner in voluntary inactive status shall be
responsible for payment of the annual fee for voluntary inactive status
required by Sec. 1.21(a)(7)(ii) of this subchapter, and for completing
the required continuing training programs for each complete fiscal year
the practitioner continues to be in voluntary inactive status.
(3) A practitioner who seeks or enters into voluntary inactive
status is subject to investigation and discipline for his or her
conduct prior to, during, or after the period of his or her
inactivation.
(4) A practitioner who is in arrears in dues or under
administrative suspension for fee delinquency is ineligible to seek or
enter into voluntary inactive status.
(5) A practitioner in voluntary inactive status is prohibited from
continuing to practice before the Office in patent cases while in
inactive status. Failure to comply with the provisions of this
paragraph (d)(5) will subject the practitioner to discipline.
(6) Any registered practitioner who has been voluntarily
inactivated pursuant to paragraph (d) of this section and not under
investigation, not subject to a disciplinary proceeding, not in arrears
for annual fees or in arrears for complying with the continuing legal
education requirements may be restored to active status to the register
as may be appropriate provided that the practitioner files a written
request for reinstatement, a completed application for registration on
a form supplied by the OED Director furnishing all requested
information and material, including information and material pertaining
to the practitioner's moral character under Sec. Sec. 11.7(a)(2)(i)
and (iii) during the period of inactivation, evidence of completion of
all continuing legal education programs required by the USPTO Director
under Sec. 11.12(a) for up to the past six years from the date of
application for restoration to active status, a declaration or
affidavit attesting to the fact that the practitioner has read the most
recent revisions of the Patent Act and the rules of practice before the
Office, and pays the fees set forth in Sec. Sec. 1.21(a)(7)(iii) and
(iv) of this subchapter.
(e) Resignation. A registered practitioner or a practitioner under
Sec. 11.14, who is neither under investigation under Sec. 11.22 for a
possible violation of the Rules of Professional Conduct, nor a
practitioner against whom probable cause has been found by a panel of
the Committee on Discipline under Sec. 11.23(b), may resign by
notifying the OED Director in writing that he or she desires to resign.
Upon acceptance in writing by the OED Director of such notice, that
registered practitioner or practitioner under Sec. 11.14 shall no
longer be eligible to practice before the Office, but shall continue to
file a change of address for five years thereafter in order that he or
she may be located in the event information regarding the
practitioner's conduct comes to the attention of the OED Director, or
any complaint is made about his or her conduct while he or she engaged
in practice before the Office. The name of any registered practitioner
whose resignation is accepted shall be removed from the register,
endorsed as resigned, and notice thereof published in the Official
Gazette. Upon acceptance of the resignation by the OED Director, the
practitioner must comply with the provisions of Sec. 11.116(d). A
resigned practitioner may be again registered only in accordance with
Sec. 11.7. A resigned practitioner's willful failure to comply with
the provisions of this rule or Sec. 11.116(d) constitutes grounds for
denying his or her application for registration until complete
compliance with said rules is achieved.
(f) Administrative reinstatement. (1) Any registered practitioner
who has been administratively suspended pursuant to paragraph (b) of
this section or 11.12(e), or who has resigned pursuant to paragraph (d)
of this section, may be reinstated on the register provided the
practitioner has applied for reinstatement on an application form
supplied by OED Director, demonstrated compliance with the provisions
of Sec. Sec. 11.7(a)(2)(i) and (iii), has completed the training
programs required by the USPTO Director under Sec. 11.12(a) since the
Office's fiscal year the practitioner was last registered, and paid the
fees set forth in Sec. Sec. 1.21(a)(3), (a)(7), and (a)(9). Any
reinstated practitioner is subject to investigation and discipline for
his or her conduct that occurred prior to, during, or after the period
of his or her administrative suspension or resignation.
(2) Any registered practitioner whose registration has been
inactivated pursuant to paragraph (c) of this section may be reinstated
to the register as may be appropriate provided that a request for
reinstatement, a completed application for registration on a form
supplied by the OED Director furnishing all requested information and
material, and payment of the fees set forth in Sec. 1.21(a)(3) of this
subchapter are filed within two years after his or her employment with
the Office or in a judicial capacity ceases. Any registered
practitioner inactivated or reinstated is subject to investigation and
discipline for his or her conduct before, during, or
[[Page 69529]]
after the period of his or her inactivation.
Sec. 11.12 Mandatory continuing training for licensed practitioners.
(a) Continuing education requirements. (1) All practitioners
licensed under Sec. Sec. 11.6 or 11.9 to practice before the Office
shall complete a continuing education program as required from time-to-
time by the USPTO Director, except those registered practitioners
expressly exempted in paragraph (b) of this section from the
requirement of this regulation. The USPTO Director will announce each
fiscal year whether an education program will be required, and the
dates for the program. No more than one mandatory continuing education
program would be required each fiscal year and the requirement may be
as infrequent as once every three years. The fiscal year is October 1
through September 30.
(2) Only continuing education programs pre-approved by the OED
Director as meeting the requirements set forth in Sec. 11.13 will be
deemed eligible to satisfy the requirements set forth in paragraph
(a)(1) of this section. Eligible continuing education programs and the
starting date for completing each program will be announced in the
Official Gazette and on the OED Web site. Failure to consult the
foregoing locations for said announcement will not excuse a
practitioner from completing the mandatory continuing education
program.
(3) Each practitioner shall be responsible for ascertaining whether
the USPTO Director has required completion of a mandatory continuing
education program during a fiscal year, and complying with the
requirement.
(b) Exemptions. Each practitioner shall comply with the provisions
of paragraphs (a) and (b) of this section except as follows:
(1) A newly registered practitioner shall be exempt from completing
the mandatory continuing education program during the fiscal year he or
she is first registered.
(2) A practitioner who becomes inactive in accordance with Sec.
11.11(c)(1) shall be exempt from completing the mandatory continuing
education program if, while qualifying for inactive status, the
practitioner passed the recertification program for patent examiners
required during the practitioner's employment in the Office and
appropriate to practitioner's grade and position in the Office.
(3) A practitioner who becomes inactive in accordance with Sec.
11.11(c)(2) shall be exempt from completing the continuing education
program while qualifying for inactive status as a judge.
(4) A practitioner who has obtained a waiver of the deadline for
completing a program for good cause shown. A practitioner dissatisfied
with a final decision of the OED Director may seek review of the
decision upon petition to the USPTO Director accompanied by payment of
the fee set forth in Sec. 1.21(a)(5). See Sec. 11.2(d).
(c) Reinstatement. A person who, after having resigned in
accordance with Sec. 11.11(e), having been transferred to disability
inactive status under Sec. 11.28, or having been suspended or excluded
from practice before the Office under Sec. Sec. 11.24, 11.25, 11.27,
11.55, or 11.56, seeks to be reinstated shall arrange with the OED
Director to complete the continuing education programs for currency in
patent laws, practices, policies and procedures. Thereafter, the person
shall have the same continuing education program requirement as is
required of a registered practitioner.
(d) Administrative suspension for failure to complete continued
education program requirement. Any practitioner in active status who
fails to complete the requirement within the time allowed by paragraph
(a) of this section shall be delinquent in meeting the requirement, and
the practitioner shall be subject to the provisions of Sec. 11.11(b)
to overcome a delinquency. Failure to pass each continuing education
program within the permitted sixty-day period set in Sec. 11.11(b)(1)
shall subject the practitioner to the fees required by Sec. 1.21(a)(9)
of this subchapter and administrative suspension in accordance with the
procedure of Sec. 11.11(b)(2).
Sec. 11.13 Eligible mandatory continuing education programs.
(a) Eligibility. (1) A continuing education program is eligible to
satisfy the mandatory continuing education requirements of Sec.
11.12(a)(1) if either:
(i) the Office provides the program via Web-delivery or, if Web-
delivery is unavailable, via a traditional or other appropriate
distance delivery method, or
(ii) a USPTO pre-approved sponsor offers a course pre-approved by
the OED Director as providing the legal, procedural and policy subject
matter identified by the USPTO Director as being required to satisfy
the mandatory continuing education program.
(b) USPTO-delivered program. A continuing education program
provided by the USPTO in accordance with paragraph (a)(1) of this
section will include narrative material, such as notices, rule
packages, or the Manual of Patent Examining Procedure, and questions
regarding the material. A practitioner choosing this educational mode
shall complete the program, including answering the questions, on the
Internet unless the latter is unavailable to the practitioner. A
practitioner completing the program by traditional or other appropriate
distance delivery method shall obtain and pay the fee required by Sec.
1.21(a)(12) of this subchapter for the program and furnished materials.
(c) USPTO pre-approved sponsor of a mandatory continuing education
program. A continuing education program provided by a USPTO pre-
approved sponsor in accordance with paragraph (a)(2) of this section
shall include the topics and content required to satisfy the mandatory
continuing education program, and shall complete presentation of the
program.
(d) Certificate of completion. (1) Upon completion of a required
continuing education program in accordance with paragraph (b)(2) of
this section, the OED Director shall credit the practitioner with
completing the program.
(2) Upon completion of a required continuing education program in
accordance with paragraph (b)(2) of this section, the pre-approved
program sponsor shall file with the OED Director a certificate of
completion of the program for each practitioner attending and
completing the mandatory continuing education program. Upon receipt of
the certificate the OED Director shall credit the practitioner with
completing the program.
(3) The OED Director will not give credit for completion by
practitioners of programs which have not been pre-approved by the OED
Director as providing the legal, procedural and policy subject matter
identified by the USPTO Director as being required to satisfy the
mandatory continuing education program.
(e) Standards for approval of USPTO pre-approved sponsor-delivered
mandatory continuing education programs. (1) The OED Director shall
review and approve the content of all sponsor-delivered education
programs.
(2) A sponsor-delivered mandatory continuing education program is
approved as eligible to satisfy the mandatory education requirements of
Sec. 11.12(a)(1) if the OED Director has specifically approved it.
(3) To be approved, the program must have significant intellectual
or practical content and be directed to legal, procedural and policy
subject matter identified by the USPTO Director as being required to
satisfy the mandatory continuing education program. Its
[[Page 69530]]
primary objective must be to enhance the attendee's professional
competence and skills as a patent practitioner, and to enhance the
quality of legal services rendered to the public.
(4) All sponsor-delivered mandatory continuing education programs
must be conducted in a setting physically suitable to the program. If
not Web-delivered, a suitable writing surface should be provided.
(5) Where USPTO instructional material is available, a pre-approved
sponsor will provide copies of the same or the equivalent thereof.
(f) Procedure for approval of programs. (1) A sponsor desiring
approval of a delivered education program shall submit to the OED
Director all information called for by the ``Application by Sponsor for
Pre-approval of a Continuing Education Program,'' and the fee required
by Sec. 1.21(a)(13) of this subchapter. The content of this
application will be promulgated by the OED Director and may be changed
from time-to-time.
(2) If the program proposed by a sponsor is approved, the OED
Director also shall notify the requesting sponsor of the decision
within 60 days after receipt of the completed application. The OED
Director shall maintain and make available on the Office Web site a
list of all approved programs for each completion period. Approval of a
program is only effective for the completion period for which it is
approved.
(3) The sponsor of a pre-approved continuing education program
should include in its brochures or course descriptions the information
contained in the following illustrative statement: ``This course or
program has been pre-approved by the United States Patent and Trademark
Office for Mandatory Continuing Education Program.'' An announcement is
permissible only after the program has been specifically approved
pursuant to an application submitted directly by the sponsor.
(g) Procedure for approval of sponsors. (1) Any sponsor may apply
for approval of individual courses by complying with the criteria of
paragraphs (e) and (f) of this section.
(2) A USPTO-approved sponsor shall be subject to and governed by
the applicable provisions of these regulations, including the quality
standards of paragraph (f) of this section and the recordkeeping and
reporting requirements. The OED Director may at any time review a
USPTO-approved sponsor's program and reserves the right to withdraw
approval when the standards for approval are not met or maintained. If
the OED Director finds there is a basis for revocation of the approval
granted, the OED Director shall send notice by certified mail to that
sponsor of the revocation within thirty days of the OED Director's
decision.
(3) A USPTO-approved sponsor must notify the OED Director at least
two weeks in advance of a program of the name, date, and location of a
particular continuing education program. The OED Director may request
additional information regarding a program.
(4) Law firms, professional corporations, and corporate law
departments are not eligible to become approved sponsors.
Sec. 11.14 Individuals who may practice before the Office in
trademark and other non-patent matters.
(a) Attorneys. Any individual who is an attorney may represent
others before the Office in trademark and other non-patent matters. An
attorney is not required to apply for registration or recognition to
practice before the Office in trademark and other non-patent matters.
Registration as a patent attorney does not entitle an individual to
practice before the Office in trademark matters.
(b) Non-lawyers. Individuals who are not attorneys are not
recognized to practice before the Office in trademark and other non-
patent matters, except that individuals not attorneys who were
recognized to practice before the Office in trademark matters under
this chapter prior to January 1, 1957, will be recognized as agents to
continue practice before the Office in trademark matters.
(c) Foreigners. Any foreign attorney or agent not a resident of the
United States who shall prove to the satisfaction of the OED Director
that he or she is registered or in good standing before the patent or
trademark office of the country in which he or she resides and
practices, may be recognized for the limited purpose of representing
parties located in such country before the Office in the presentation
and prosecution of trademark matters, provided: the patent or trademark
office of such country allows substantially reciprocal privileges to
those permitted to practice in trademark matters before the Office.
Recognition under this paragraph shall continue only during the period
that the conditions specified in this paragraph obtain.
(d) Recognition of any individual under this section shall not be
construed as sanctioning or authorizing the performance of any act
regarded in the jurisdiction where performed as the unauthorized
practice of law.
(e) No individual other than those specified in paragraphs (a),
(b), and (c) of this section will be permitted to practice before the
Office in trademark matters. Any individual may appear in a trademark
or other non-patent matter in his or her own behalf. Any individual may
appear in a trademark matter for:
(1) A firm of which he or she is a member,
(2) A partnership of which he or she is a partner, or
(3) A corporation or association of which he or she is an officer
and which he or she is authorized to represent, if such firm,
partnership, corporation, or association is a party to a trademark
proceeding pending before the Office.
(f) Application for reciprocal recognition. An individual seeking
reciprocal recognition under paragraph (c) of this section, in addition
to providing evidence satisfying the provisions of paragraph (c) of
this section, shall apply in writing to the OED Director for reciprocal
recognition, and shall pay the application fee required by Sec. Sec.
1.21(a)(1)(i) and (a)(6) of this subchapter.
Sec. 11.15 Refusal to recognize a practitioner.
Any practitioner authorized to appear before the Office may be
suspended, excluded, or reprimanded in accordance with the provisions
of this Part. Any practitioner who is suspended or excluded under this
part or removed under Sec. 11.11(b) shall not be entitled to practice
before the Office in patent, trademark, or other non-patent matters.
Sec. 11.16 Financial books and records.
A practitioner, in return for being registered under Sec. 11.6,
granted limited recognition under Sec. 11.9, or recognized to practice
before the Office under Sec. 11.14, agrees that the OED Director may
examine financial books and records maintained by or for the
practitioner for the practice before the Office, including, without
limitation, any and all trust accounts, including any trust account
that may not be in compliance with the Rules of Professional Conduct,
fiduciary accounts, and operating accounts maintained by the
practitioner or his or her law firm. The OED Director may also examine
any trust account maintained by a practitioner whenever the OED
Director reasonably believes that the trust account may not be in
compliance with the Rules of Professional Conduct.
[[Page 69531]]
Sec. 11.17 [Reserved]
Sec. 11.18 Signature and certificate for correspondence filed in the
Office.
(a) For all documents filed in the Office in patent, trademark, and
other non-patent matters, and all documents filed with a hearing
officer in a disciplinary proceeding, except for correspondence that is
required to be signed by the applicant or party, each piece of
correspondence filed by a practitioner in the Office must bear a
signature, personally signed by such practitioner, in compliance with
Sec. 1.4(d)(1) of this subchapter.
(b) By presenting to the Office or hearing officer in a
disciplinary proceeding (whether by signing, filing, submitting, or
later advocating) any paper, the party presenting such paper, whether a
practitioner or non-practitioner, is certifying that--
(1) All statements made therein of the party's own knowledge are
true, all statements made therein on information and belief are
believed to be true, and all statements made therein are made with the
knowledge that whoever, in any matter within the jurisdiction of the
Office, knowingly and willfully falsifies, conceals, or covers up by
any trick, scheme, or device a material fact, or makes any false,
fictitious or fraudulent statements or representations, or makes or
uses any false writing or document knowing the same to contain any
false, fictitious or fraudulent statement or entry, shall be subject to
the penalties set forth under 18 U.S.C. 1001, and violations of the
provisions of this section may jeopardize the validity of the
application or document, or the validity or enforceability of any
patent, trademark registration, or certificate resulting therefrom; and
(2) To the best of the party's knowledge, information and belief,
formed after an inquiry reasonable under the circumstances,
(i) The paper is not being presented for any improper purpose, such
as to harass someone or to cause unnecessary delay or needless increase
in the cost of prosecution before the Office;
(ii) The other legal contentions therein are warranted by existing
law or by a nonfrivolous argument for the extension, modification, or
reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have
evidentiary support or, if specifically so identified, are likely to
have evidentiary support after a reasonable opportunity for further
investigation or discovery; and
(iv) The denials of factual contentions are warranted on the
evidence, or if specifically so identified, are reasonably based on a
lack of information or belief.
(c) Violations of paragraph (b)(1) of this section by a
practitioner or non-practitioner may jeopardize the validity of the
application or document, or the validity or enforceability of any
patent, trademark registration, or certificate resulting therefrom.
Violations of any of paragraphs (b)(2)(i) through (iv) of this section
are, after notice and reasonable opportunity to respond, subject to
such sanctions as deemed appropriate by the USPTO Director, or hearing
officer, which may include, but are not limited to, any combination
of--
(1) Holding certain facts to have been established;
(2) Returning papers;
(3) Precluding a party from filing a paper, or presenting or
contesting an issue;
(4) Imposing a monetary sanction;
(5) Requiring a terminal disclaimer for the period of the delay; or
(6) Terminating the proceedings in the Office.
(d) Any practitioner violating the provisions of this section may
also be subject to disciplinary action. See Sec. 11.303(e)(4).
Subpart C--Investigations and Disciplinary Proceedings
Jurisdiction, Sanctions, Investigations, and Proceedings
Sec. 11.19 Disciplinary jurisdiction.
(a) Individuals subject to disciplinary jurisdiction. The following
individuals are subject to the disciplinary jurisdiction of the Office:
(1) Practitioners. All practitioners engaged in practice before the
Office; all practitioners administratively suspended under Sec.
11.11(b); all practitioners who have resigned under Sec. 11.11(d); all
practitioners inactivated under Sec. 11.11(c); all practitioners
authorized under Sec. 11.6(d) to take testimony; and all practitioners
reprimanded, suspended, or excluded from the practice of law by a duly
constituted authority, including by the USPTO Director.
(2) Other individuals. An applicant for patent (Sec. 1.41(b) of
this subchapter) representing himself, herself, or representing himself
or herself and other individuals who are applicants pursuant to
Sec. Sec. 1.31 or 1.33(b)(4) of this subchapter; an individual who is
an assignee as provided for under Sec. 3.71(b) of this subchapter; and
an individual appearing in a trademark or other non-patent matter
pursuant to Sec. 11.14(e), whether representing a firm, corporation,
or association are subject to the disciplinary jurisdiction of the
Office, including Sec. Sec. 11.19(c)(2), (d) and (e); 11.20(a)(2), and
(b); 11.21-11.23; 11.24; 11.25 -11.28, 11.32-11.45, and 11.49-11.60.
(b) Jurisdiction of courts and voluntary bar associations. Nothing
in these rules shall be construed to deny to any State or Federal Court
such powers as are necessary for that court to maintain control over
proceedings conducted before it, such as the power of contempt.
Further, nothing in these rules shall be construed to prohibit any
State or Federal Court, or a voluntary or mandatory bar association
from censuring, reprimanding, suspending, disbarring, or otherwise
disciplining its members, including registered practitioners for
conduct regarding practice before the Office in any matter.
(c) Misconduct--grounds for discipline. (1) Practitioners. Acts or
omissions by a practitioner (including a suspended, excluded, or
inactive practitioner), acting individually or in concert with any
other person or persons constituting gross misconduct, violating the
imperative USPTO Rules of Professional Conduct, or the oath taken by
practitioner shall constitute misconduct and shall be grounds for
discipline, whether or not the act or omission occurred in the course
of providing legal services to a client, or in a matter pending before
the Office. Grounds for discipline include:
(i) Conviction of a crime (see Sec. Sec. 11.24, 11.803(d) and
11.804(b));
(ii) Discipline imposed in another jurisdiction (see Sec. Sec.
11.24 and 11.803(e)(1) and (f)(4));
(iii) Failure to comply with any order of a Court disciplining a
practitioner, or any order of the USPTO Director disciplining a
practitioner;
(iv) Failure to respond to a written inquiry from OED Director in
the course of an investigation into whether there has been a violation
of the imperative USPTO Rules of Professional Conduct without
asserting, in writing, the grounds for refusing to do so; or
(v) Violation of the imperative USPTO Rules of Professional
Conduct. See Sec. 11.100(a).
(2) Other individuals. Acts or omissions by applicants for patent
(Sec. 1.41(b) of this subchapter) representing themselves, or an
individual applicant representing himself or herself and other
individuals who are applicants pursuant to Sec. Sec. 1.31 or
1.34(b)(4) of this subchapter; an individual who an assignee as
provided for under Sec. 3.71(b) of this subchapter; and an individual
appearing in a trademark or other non-patent matter pursuant to Sec.
11.14(e), whether
[[Page 69532]]
representing a firm, corporation, or association who violate the
provisions of Sec. Sec. 11.303(a)(1), 11.304, 11.305(a), or 11.804
shall constitute misconduct and shall be grounds for discipline.
(d) Petitions to disqualify a practitioner in ex parte or inter
partes matters in the Office are not governed by Sec. Sec. 11.19
through 11.806 and will be handled on a case-by-case basis under such
conditions as the USPTO Director deems appropriate.
(e) Unauthorized practice of law matters may be referred to the
appropriate authority in the jurisdiction(s) where the act(s) occurred.
Sec. 11.20 Disciplinary sanctions.
(a) Types of discipline. (1) For practitioners. The USPTO Director,
after notice and opportunity for a hearing, may impose on a
practitioner shown to be incompetent or disreputable, who is guilty of
gross misconduct, or who violates a Rule of Professional Conduct
currently in effect in the Office, any of the following types of
discipline:
(i) Exclusion from practice before the Office in patent, trademark
or other non-patent law;
(ii) Suspension from practice before the Office in patent,
trademark or other non-patent law for an indefinite period, or
appropriate fixed period of time not to exceed five years. Any order of
suspension may include a requirement stated in the order that the
practitioner satisfy certain conditions prior to reinstatement,
including furnishing proof of rehabilitation;
(iii) Reprimand, or
(iv) Probation for not more than three years. Probation may be
imposed in lieu of or in addition to any other disciplinary sanction.
Any conditions of probation shall be stated in writing in the order
imposing probation. The order shall also state whether, and to what
extent, the practitioner or other person shall be required to notify
clients of the probation. The order shall establish procedures for the
supervision of probation. Violation of any condition of probation shall
make the practitioner subject to revocation of probation, and the
disciplinary sanction stated in the order imposing probation.
(2) For Other Individuals. In regard to a patent applicant
representing himself or herself, or representing himself or herself and
other individual who are applicants under Sec. Sec. 1.31 or 1.33(b)(4)
of this subchapter; an individual who is an assignee as provided for
under Sec. 3.71(b) of this subchapter; an individual appearing in a
trademark or other non-patent matter pursuant to Sec. 11.14(e),
whether representing a firm, corporation, or association, the USPTO
Director, after notice and opportunity for a hearing, may impose on
said applicant, assignee, person, or individual appearing in a
trademark or other non-patent matter shown to have violated a provision
of Sec. Sec. 11.303(a)(1), 11.304, 11.305(a), or 11.804, may be
appropriately sanctioned by, but not limited to, requiring the
individual to be represented by counsel, striking the filing of any
document, or dismissing the filing of an application with prejudice.
(b) Conditions imposed with discipline. When imposing discipline,
the practitioner, or other individual may be required to make
restitution either to persons financially injured by the
practitioner's, or other individual's conduct or to an appropriate
client's security trust fund, or both, as a condition of probation or
of reinstatement. Any other reasonable condition may also be imposed,
including a requirement that the practitioner or other individual take
and pass a professional responsibility examination.
Sec. 11.21 Warnings.
Warning. A warning is not a disciplinary sanction. The OED
Director, in consultation with and consent from a panel of the
Committee on Discipline, may conclude an investigation with the
issuance of a warning. The warning shall contain a brief statement of
facts and relevant imperative USPTO Rules of Professional Conduct upon
which the warning is based. The warning shall be final and not
reviewable.
Sec. 11.22 Investigations.
(a) The OED Director is authorized to investigate possible
violations of an imperative Rule of Professional Conduct by
practitioners; or possible violations of Sec. Sec. 11.303(a)(1),
11.304, 11.305(a), or 11.804 by other individuals identified in Sec.
11.19(a)(2). See Sec. 11.2(b)(2). The investigation may be based on
information from any source whatsoever, or on a complaint where alleged
or presented facts, if true, may warrant discipline. The information
need not be in the form of a complaint.
(b) Any practitioner, other individual (see Sec. 11.19(a)(2)), or
nonpractitioner possessing knowledge or information concerning a
possible violation of an imperative Rule of Professional Conduct
currently in effect before the Office by a practitioner may report the
violation to the OED Director. The OED Director may require that the
report be presented in the form of an affidavit or declaration.
(c) Initiation of investigations. An investigation may be initiated
upon complaint or information. A staff attorney under the supervision
of the OED Director shall conduct all investigations. Neither
unwillingness nor neglect by a complainant to prosecute a charge, nor
settlement, compromise, or restitution, shall in itself justify
abatement of an investigation.
(d)(1) Complaints. A complaint is a communication by a person
outside the Office alleging or presenting facts of possible misconduct
by a practitioner or other individual (see Sec. 11.19(a)(2)). A
complaint shall be in writing and shall contain a brief statement of
the facts upon which the complaint is based. The complaint need not be
a sworn statement.
(2) Information. Information is one or more written communications
from any source alleging or containing facts that, if true, may warrant
discipline for misconduct by a practitioner or other individual (see
Sec. 11.19(a)(2)). The information need not be a sworn statement.
(e) Preliminary screening of complaints and information. Under the
supervision of the OED Director, a staff attorney shall examine all
complaints and information. The staff attorney, after such preliminary
inquiry as appears appropriate, shall determine whether the complaint
or information is to be docketed. A complaint or information shall be
docketed if it:
(1) Is not unfounded on its face;
(2) Contains allegations or information which, if true, would
constitute a violation of the practitioner's oath or an imperative Rule
of Professional Conduct currently in effect before the Office that
would merit discipline; and
(3) Is within the jurisdiction of the Office.
(f) Decision not to docket and notice to complainant. If OED
Director determines that a matter is not to be docketed, the OED
Director shall so notify the complainant and the practitioner or other
individual (see Sec. 11.19(a)(2)), giving a brief statement of the
reasons therefor. The OED Director's decision is final and not subject
to review.
(g) Docketing of complaint or information; notification to
complainant. A docketed complaint or information shall be assigned a
docket number with the first two digits showing the fiscal year in
which the complaint is docketed. Complainants shall be promptly advised
in writing by the OED Director or a staff attorney of the docketing of
the complaint.
[[Page 69533]]
(h) Notification. The OED Director or staff attorney shall promptly
notify the practitioner or other individual (see Sec. 11.19(a)(2)) in
writing when a formal investigation into a practitioner's or other
individual's conduct has been initiated. This notice shall include a
copy of the complaint, information, or other relevant documents upon
which the investigation is based, a request for a written response from
the practitioner or other individual, and any questions reasonably
likely to elicit answers, records, and information helpful in the
conduct of the investigation.
(i) Duty to reply; response. A practitioner, or other individual
(see Sec. 11.19(a)(2)) under investigation has an obligation to reply
to the OED Director's written inquiries in the conduct of an
investigation. The reply shall set forth the position of the
practitioner or other individual under investigation with respect to
allegations contained in the complaint, facts contained in the
information, and all inquiries by the OED Director. The reply shall be
filed with the OED Director within thirty calendar days after the
mailing date of the notice in paragraph (h) of this section. A single
extension of time shall be granted to reply to an inquiry upon written
request of the practitioner or other individual (see Sec.
11.19(a)(2)), and in no case shall the extension of time exceed thirty
days.
(j) Request for information by OED Director. (1) In the course of
the investigation, the OED Director may request information concerning
the practitioner's actions from:
(i) The complainant,
(ii) The practitioner,
(iii) Another individual as defined by Sec. 11.19(a)(2), or
(iv) Any party who may reasonably be expected to have information.
(2) The OED Director, or staff attorney or other representative may
also request information from a noncomplaining client after obtaining
either the consent of the practitioner or, upon a written showing of
good cause, the authorization of the Director (see Sec. 11.23(a)).
Neither a request for, nor disclosure of, information shall constitute
a violation of any of the Rules of Professional Conduct contained in
Sec. Sec. 11.100 et seq.
(k) Request for financial records by OED Director. In the course of
an investigation, the OED Director, alone or through a staff attorney,
may examine financial books and records maintained by a practitioner
for the practice before the Office, including, without limitation, any
and all trust accounts, fiduciary accounts, and operating accounts
maintained by the practitioner or his or her law firm. The OED
Director, alone or through a staff attorney, may also examine any trust
account maintained by a practitioner whenever the OED Director
reasonably believes that the trust account may not be in compliance
with the Rules of Professional Conduct. In the exercise of this
authority, the OED Director or staff attorney may seek the assistance
of State bar counsel to obtain such summons and subpoenas as he or she
may reasonably deem necessary for the effective conduct of an
investigation or an examination of a trust account. In every case in
which the OED Director or staff attorney initiates examination of a
trust account, or seeks any summons or subpoena in the conduct of an
examination of or an investigation concerning said trust account, other
than on the basis of a complaint against the practitioner, the OED
Director or staff attorney shall file a written statement as part of
the record in the case setting forth the reasons supporting the belief
that the subject trust account may not be in compliance with the Rules
of Professional Conduct. After State bar counsel agrees to seek such
summons and subpoenas, a copy of the written statement shall be
delivered to the practitioner whose trust account is the subject of the
investigation.
(l) Failure to reply to OED Director. If a practitioner, or other
individual (see Sec. 11.19(a)(2)) fails to reply to the request for
information sought under paragraph (j) of this section, fails to
provide requested financial records sought under paragraph (k) of this
section, or replies evasively in the conduct of an investigation, the
OED Director may request the Committee on Discipline to enter an
appropriate finding of probable cause of violating Sec. 11.804(d).
(m) Disposition of investigation. Upon the consideration of an
investigation, the OED Director may:
(1) Close the investigation with neither a warning, nor
disciplinary action; or
(2) Issue a warning to the practitioner or other individual (see
Sec. 11.19(a)); or
(3) Institute formal charges with the prior approval of the
Committee on Discipline; or
(4) Enter into a diversion agreement with the approval of the USPTO
Director (see Sec. 11.26).
(n) Closing investigation with no warning. The OED Director shall
terminate an investigation and decline to refer a matter to the
Committee on Discipline if the OED Director determines that:
(1) The complaint is unfounded; or
(2) The complaint is not within the jurisdiction of the Office; or
(3) As a matter of law, the conduct questioned or alleged does not
constitute misconduct, even if the conduct may involve a legal dispute;
or
(4) The available evidence shows that the practitioner, or other
individual (see Sec. 11.19(a)(2)) did not engage or did not willfully
engage in the misconduct questioned or alleged; or
(5) There is no credible evidence to support any allegation of
misconduct on the part of the practitioner, or other individual (see
Sec. 11.19(a)(2)), or
(6) The available evidence could not reasonably be expected to
support any allegation of misconduct under a ``clear and convincing''
evidentiary standard.
Sec. 11.23 Committee on Discipline.
(a) The USPTO Director shall appoint a Committee on Discipline. The
Committee on Discipline shall consist of at least three employees of
the Office, plus at least three alternate members who also are
employees of the Office. None of the Committee members or alternates
shall report directly or indirectly to the OED Director or the General
Counsel. Each Committee member and the alternates shall be a member in
good standing of the bar of the highest court of a State. The Committee
members and alternates shall select a Chairperson from among
themselves. The Committee or its panels shall meet at regular intervals
with the OED Director. Three Committee members or alternates so
selected will constitute a panel of the Committee.
(b) Powers and duties of the Committee on Discipline. The Committee
shall have the power and duty:
(1) To appoint two or more panels of its members and alternates,
each consisting of at least three Committee members or alternates, who
shall review information and evidence presented by the OED Director;
(2) To meet as a panel at the request of the OED Director and,
after reviewing evidence presented by the OED Director, shall by
majority vote, to determine whether there is probable cause to bring
charges under Sec. 11.32 against a practitioner or other individual
(see Sec. 11.19(a)(2)). When probable cause is found regarding a
practitioner or other individual (see Sec. 11.19(a)(2)), no Committee
member or alternate on the panel, employee under the direction of the
OED Director, or employee under the direction of the Deputy General
Counsel for Intellectual Property shall participate in rendering a
decision on any complaint filed against the practitioner or other
individual;
(3) To assign a Contact Member to review and approve or suggest
[[Page 69534]]
modifications of recommendations by the OED Director for dismissals,
and warnings; and
(4) To prepare and forward its own probable cause findings and
recommendations to the OED Director.
(c) No discovery shall be authorized of, and no member of or
alternate to the Committee on Discipline shall be required to testify
about, deliberations of the Committee on Discipline or of any panel.
Sec. 11.24 Interim suspension and discipline based upon reciprocal
discipline.
(a) Notification. A practitioner who has been disbarred (including
disbarred or excluded on consent) or suspended by a disciplinary court,
or who has resigned in lieu of a disciplinary proceeding before or
while an investigation is pending shall notify the OED Director in
writing of the same within ten days from the date he or she is so
suspended, disbarred, excluded or disbarred on consent, or has
resigned. Upon learning that a practitioner subject to the disciplinary
jurisdiction of the Office has been disbarred, suspended or has
resigned in lieu of disciplinary action, the OED Director shall obtain
a certified copy of the record of the suspension, disbarment or
resignation from the disciplinary court, and file the same with the
USPTO Director and the hearing officer if a disciplinary proceeding is
pending at the time. Every attorney who has been suspended, or
disbarred, or who has resigned shall be disqualified from practicing
before the Office in patent, trademark, and other non-patent cases, as
a practitioner, during the time of suspension, disbarment, or
resignation.
(b) Notice to Show Cause and Interim Suspension. (1) Following
receipt of a certified copy of the record, the USPTO Director shall
enter an order suspending the practitioner from practice before the
Office and afford the practitioner an opportunity to show cause, within
40 days, why an order for identical disciplinary action should not be
entered. Upon response, and any reply by the OED Director authorized by
the USPTO Director, or if no response is timely filed, the USPTO
Director will enter an appropriate order.
(2) After said notice and opportunity to show cause why identical
disciplinary action should not be taken, and if one or more material
facts set forth in paragraphs (c)(1) through (c)(4) of this section are
in dispute, the USPTO Director may enter any appropriate disciplinary
sanction upon any practitioner who is admitted to practice before the
Office for failure to comply with the Rules of Professional
Responsibility.
(3) The other provisions of this part providing a procedure for the
discipline of a practitioner do not apply to proceedings pursuant to
this section.
(c) Proof of misconduct. (1) In all proceedings under this section,
a final adjudication in a disciplinary court shall establish
conclusively the misconduct clearly disclosed on the face of the record
upon which the discipline is predicated. A certified copy of the record
of suspension, disbarment, or resignation shall be conclusive evidence
of the commission of professional misconduct in any reciprocal
disciplinary proceeding based thereon. However, nothing this paragraph
(c) shall preclude the practitioner from demonstrating at the hearing
provided for under paragraph (b) of this section by clear and
convincing evidence the existence of one or more of material facts in
paragraphs (c)(1)(i) through (c)(1)(iv) of this section as a reason for
not imposing the identical discipline. The practitioner shall bear the
burden of demonstrating, by clear and convincing evidence that the
identical discipline should not be imposed because:
(i) The procedure elsewhere was so lacking in notice or opportunity
to be heard as to constitute a deprivation of due process; or
(ii) There was such infirmity of proof establishing the misconduct
as to give rise to the clear conviction that the Office could not,
consistently with its duty, accept as final the conclusion on that
subject; or
(iii) The imposition of the same discipline by the Office would
result in grave injustice; or
(iv) The misconduct established warrants substantially different
discipline in the Office.
(2) If the practitioner does not satisfy the practitioner's burden
of showing the existence of one of material facts of paragraphs
(c)(1)(i), (c)(1)(ii) or (c)(1)(iii) of this section, then a final
determination by a disciplinary court that a practitioner has been
guilty of professional misconduct shall conclusively establish the
misconduct for the purpose of a reciprocal disciplinary proceeding in
the Office.
(d) Reciprocal discipline-action where practice has ceased. (1) If
the practitioner has promptly notified the OED Director of his or her
discipline in another jurisdiction, and otherwise establishes to the
satisfaction of the USPTO Director, by affidavit or otherwise, that the
practitioner has voluntarily ceased all practice before the Office, and
the OED Director confirms the same, the USPTO Director will favorably
consider that the effective date of any suspension or disbarment be
imposed nunc pro tunc to the date respondent voluntarily ceased all
practice before the Office. The USPTO Director will not favorably
consider retroactive effectiveness of a suspension or disbarment if the
practitioner has not also complied with the provisions of Sec. 11.58,
as such section would apply if voluntary cessation from all practice
before the Office were treated as a suspension ordered by the USPTO
Director.
(2) Action when reciprocal discipline is not recommended. If the
USPTO Director concludes that reciprocal discipline should not be
imposed, the USPTO Director shall accept the facts found by the
disciplinary court unless he or she makes a finding under paragraphs
(c)(1)(i), (c)(1)(ii) or (c)(1)(iii) of this section. In the absence of
such a finding, the USPTO Director shall enter an appropriate order.
(e) Appropriate Order. The USPTO Director may impose the identical
discipline unless the practitioner demonstrates by clear and convincing
evidence, or the USPTO Director finds said evidence on the face of the
record on which the discipline is predicated, that one or more of the
grounds set forth in paragraph (a) of this section exists. If the USPTO
Director determines that the identical discipline should not be
imposed, the USPTO Director shall enter an appropriate order, including
entry of a different sanction on the practitioner, or referral of the
matter to a hearing officer for further consideration and
recommendation.
(f) Reinstatement following discipline. A practitioner may petition
for reinstatement under conditions set forth in Sec. 11.60 no sooner
than after completion of the suspension, disbarment, or probation, and
conditions for reinstatement to the bar of the highest court of the
State where the practitioner was suspended or disbarred.
Sec. 11.25 Interim suspension and discipline based upon conviction of
committing a serious crime or other crime coupled with confinement or
commitment to imprisonment.
(a) Serious crimes. If the serious crime for which the practitioner
was convicted involves moral turpitude per se, the practitioner shall
be excluded, or if the conduct underlying the offense involved moral
turpitude, the practitioner shall be excluded. A conviction shall be
deemed a felony if the judgment was entered as a felony irrespective of
any subsequent order suspending sentence or granting probation.
[[Page 69535]]
(b) Other crime coupled with confinement or commitment to
imprisonment. Every practitioner convicted of a crime in a court of the
United States, or of any state, district, territory of the United
States, or of a foreign country shall be disqualified from practicing
before the Office in patent, trademark or other non-patent law matters
as attorney or patent agent during the actual time of confinement or
commitment to imprisonment and during release from actual confinement
on condition of probation or parole.
(c) Notification. A practitioner who has been convicted of a
serious crime in a court of the United States, or of any state,
district, territory of the United States, or of a foreign country,
except as to misdemeanor traffic offenses or traffic ordinance
violations, not including the use of alcohol or drugs, or a
practitioner who is convicted of any other crime and is confined or
committed to imprisonment shall inform the OED Director within ten days
from the date of such conviction. Upon learning that a practitioner has
been convicted of a serious crime or another crime coupled with
confinement or commitment to imprisonment, the OED Director shall
obtain a certified copy of the conviction or docket entry, and file the
same with the USPTO Director.
(d) Notice to show cause and interim suspension. (1) Following
receipt of a certified copy of the court record or docket entry of the
conviction, the USPTO Director shall enter an order suspending the
practitioner in the interim from practice before the Office until the
time for appeal has elapsed, if no appeal has been taken, or until the
judgment or conviction has been affirmed on appeal, or has otherwise
become final, and until further order of the USPTO Director. The USPTO
Director may, sua sponte, decline to impose or may set aside, the
suspension when it appears to be in the interest of justice to do so,
with due regard being given to maintaining the integrity of, and
confidence in, the profession of law. Upon a conviction becoming final,
or imposition of a sentence or probation, the USPTO Director shall
afford the practitioner an opportunity to show cause, within 40 days,
why an order disciplining the practitioner should not be entered. Upon
response, or if no response is timely filed, the USPTO Director shall
enter an appropriate order.
(2) After said opportunity to show cause why disciplinary action
should not be taken, and if one or more material facts are in dispute,
the USPTO Director may enter an order disciplining any practitioner
recognized to practice before the Office for failure to comply with the
Rules of Professional Responsibility.
(3) The other provisions of this Part providing a procedure for the
discipline of a practitioner do not apply to proceedings pursuant to
this section to discipline a practitioner convicted of a serious crime
or a practitioner who is convicted of a crime and is confined or
committed to imprisonment.
(e) Proof of guilt. A certified copy of the court record or docket
entry of the conviction shall be conclusive evidence of the guilt of
the crime of which the practitioner has been convicted, and of any
imposed confinement or commitment to imprisonment. However, nothing
this paragraph (e) shall preclude the practitioner from demonstrating
in said hearing afforded by the USPTO Director, by clear and convincing
evidence, material facts to be considered when determining if a serious
crime was committed and whether a disciplinary sanction should be
entered.
(f) If the USPTO Director finds that the offense involves moral
turpitude per se, or that the conduct underlying the offense involves
moral turpitude, the practitioner shall be excluded. If the USPTO
Director finds that the practitioner was convicted of a crime and has
been incarcerated, regardless of whether the offense involved moral
turpitude, the practitioner shall be suspended or excluded and shall
not be eligible for reinstatement during the time of confinement or
commitment to imprisonment or release from actual confinement on
conditions of probation or parole. If the USPTO Director finds that the
practitioner has been convicted of a serious crime without being
incarcerated, the USPTO Director may either continue the suspension or
exclude the practitioner from practice before the Office. A copy of the
USPTO Director's decision shall be served on the practitioner by
certified mail, or any other available means, and upon the OED
Director.
(g) Crime determined not to be serious crime. If the USPTO Director
determines under paragraph (d) of this section not only that the crime
is not a serious crime, but also that the practitioner has not been
confined or committed to imprisonment, an order shall be entered
reinstating the practitioner immediately. The proceeding shall continue
(without referral of the matter to the Committee on Discipline under
Sec. 11.23) on a complaint pursuant to Sec. 11.34 that the OED
Director files within the time set by the order, and an answer pursuant
to Sec. 11.35 that the practitioner files within the time set by the
order. A disciplinary proceeding may continue before the hearing
officer, and the hearing officer may hold such hearings and receive
such briefs and other documents under Sec. Sec. 11.35 through 11.53,
as the hearing officer deems appropriate. However, the proceeding
before the hearing officer shall not be concluded until all direct
appeals from conviction of the crime have been completed.
(h) Reinstatement.--(1) Upon reversal, vacation or setting aside of
conviction. A practitioner suspended or excluded under this section may
file with the USPTO Director, at any time, a certificate demonstrating
that the conviction, for which interim suspension was imposed, has been
reversed, vacated or set aside by a court having jurisdiction of the
criminal matter. Upon the filing of the certificate, the USPTO Director
shall promptly enter an order reinstating the practitioner, but the
reinstatement shall not terminate any other disciplinary proceeding
then pending against the practitioner, the disposition of which shall
be determined by the USPTO Director or hearing officer before whom the
matter is pending, on the basis of all available evidence.
(2) Following conviction of a crime coupled with confinement or
commitment to imprisonment. Any practitioner convicted of a crime and
confined or committed to imprisonment, and who is disciplined in whole
or in part in regard thereto, may petition for reinstatement under
conditions set forth in Sec. 11.60 no sooner than five years following
discharge after completion of service of his or her sentence, or after
completion of service under probation or parole, whichever is later.
(i) Other crimes not coupled with confinement or commitment to
imprisonment. Upon being notified by a practitioner or upon receipt of
a certified copy of a court record demonstrating that a practitioner
has been found convicted of a crime other than a serious crime, and
that the practitioner has not been confined or committed to
imprisonment, the OED Director shall investigate the matter under Sec.
11.22 and proceed as appropriate under Sec. Sec. 11.26, 11.27, 11.28,
and/or 11.32.
Sec. 11.26 Diversion.
(a) Availability of diversion. Subject to the limitations in
paragraph (b) of this section, the OED Director may offer diversion to
a practitioner under investigation for a disciplinary violation.
(b) Limitations on diversion. Diversion shall be available in
matters
[[Page 69536]]
of alleged minor misconduct, but shall not be available where:
(1) The alleged misconduct resulted in, or is likely to result in,
prejudice to a client or another person; or
(2) Discipline previously has been imposed, diversion previously
has been offered and accepted, or a warning was previously issued,
unless the OED Director finds the presence of exceptional circumstances
justifying a waiver of this limitation; or
(3) The alleged misconduct involves fraud, dishonesty, deceit,
misappropriation or conversion of client funds or other things of
value, or misrepresentation; or
(4) The alleged misconduct constitutes a criminal offense under
applicable law.
(c) Procedures for diversion. At the conclusion of an
investigation, the OED Director, at his or her sole discretion, may
offer to a practitioner being investigated for misconduct the option of
entering a diversion program in lieu of other procedures available to
the OED Director. The OED Director shall be free to accept or reject a
request by the practitioner for diversion. If the practitioner accepts
diversion, a written diversion agreement shall be entered into by both
parties including, inter alia, the time of commencement and completion
of the diversion program, the content of the program, and the criteria
by which successful completion of the program will be measured. The
diversion agreement shall state that it is subject to review by the
USPTO Director, to whom it shall be submitted for review and approval
after execution by the OED Director and the practitioner.
(d) Content of diversion program. The diversion program shall be
designed to rehabilitate the practitioner's practices or procedures
leading to the alleged misconduct of the practitioner. It may include
participation in formal courses of education sponsored by a voluntary
bar organization, a law school, or another organization; completion of
an individualized program of instruction specified in the agreement or
supervised by another entity; or any other arrangement agreed to by the
parties which is designed to improve the ability of the practitioner to
practice in accordance with the Rules of Professional Conduct.
(e) Proceedings after completion or termination of diversion
program. Except as provided in paragraph (b)(2) of this section, if the
practitioner successfully completes a diversion program, the OED
Director's investigation shall be closed. The practitioner shall have a
record of the misconduct that was investigated, and the record may be
considered in determining the discipline, if any, to be imposed based
on other charges of misconduct brought against the practitioner in the
future. If the practitioner does not successfully complete the
diversion program, the OED Director shall take such other action as is
authorized and prescribed under Sec. 11.32.
Sec. 11.27 Exclusion by consent.
(a) Required affidavit. The OED Director may confer with a
practitioner concerning possible violations by the practitioner of the
Rules of Professional Conduct whether or not a disciplinary proceeding
has been instituted. A practitioner who is the subject of an
investigation or a pending disciplinary proceeding based on allegations
of misconduct, and who desires to resign or settle the matter may only
do so by consenting to exclusion and delivering to the OED Director an
affidavit declaring the consent of the practitioner to exclusion and
stating:
(1) That the consent is freely and voluntarily rendered, that the
practitioner is not being subjected to coercion or duress, and that the
practitioner is fully aware of the implication of consenting to
exclusion;
(2) That the practitioner is aware that there is currently pending
an investigation into, or a proceeding involving, allegations of
misconduct, the nature of which shall be specifically set forth in the
affidavit;
(3) That the practitioner submits the consent because the
practitioner knows that if disciplinary proceedings based on the
alleged misconduct were brought, the practitioner could not
successfully defend against them; and
(4) That it may be conclusively presumed, for the purpose of
determining any request for reinstatement under Sec. 11.60, that the
alleged facts on which the complaint was based are true and that the
practitioner violated one or more Rules of Professional Conduct.
(b) Action by the USPTO Director. Upon receipt of the required
affidavit, the OED Director shall file the affidavit and any related
papers with the USPTO Director for review and approval. Upon such
approval, the USPTO Director will enter an order excluding the
practitioner on consent.
(c) When an affidavit under paragraph (a) of this section is
received after a complaint under Sec. 11.34 has been filed, the OED
Director shall notify the hearing officer. The hearing officer shall
enter an order transferring the disciplinary proceeding to the USPTO
Director, who may enter an order excluding the practitioner on consent.
(d) Reinstatement. Any practitioner excluded by consent under this
section cannot petition for reinstatement for five years. A
practitioner excluded on consent who intends to reapply for admission
to practice before the Office must comply with the provisions of Sec.
11.58, and apply for reinstatement in accordance with Sec. 11.60.
Willful failure to comply with the provisions of Sec. 11.58
constitutes grounds for denying an application for reinstatement.
Sec. 11.28 Incompetent and incapacitated practitioners.
(a) Scope of disability proceedings. This section applies to all
disability matters, specifically including those to determine:
(1) Whether a practitioner has been judicially declared to be
mentally incompetent or involuntarily committed to a mental hospital as
an inpatient;
(2) Whether the hearing officer should apply to a Court for an
order requiring a practitioner to submit to an examination by qualified
medical experts regarding an alleged disability or addiction;
(3) Whether a practitioner is incapacitated from continuing to
practice before the Office by reason of disability or addiction;
(4) Whether the OED Director should hold in abeyance a disciplinary
investigation, or a hearing officer should hold in abeyance a
disciplinary proceeding because of a practitioner's alleged disability
or addiction;
(5) Whether a practitioner, having previously been suspended solely
on the basis of a judicial order declaring the practitioner to be
mentally incompetent, has subsequently been judicially declared to be
competent and is therefore entitled to have the prior suspension
terminated;
(6) Whether a practitioner, having previously been suspended solely
on the basis of an involuntary commitment to a mental hospital as an
inpatient, has subsequently been discharged from inpatient status and
is therefore entitled to have the prior order of suspension terminated;
and
(7) Whether a practitioner, having previously acknowledged or
having been found by the hearing officer or USPTO Director to have
suffered from a prior disability or addiction sufficient to warrant
suspension (whether or not any suspension has yet occurred), has
recovered to the extent, and for the period of time, sufficient to
justify the conclusion that the practitioner is fit to resume or
continue the practice before the Office and/or is fit to defend the
[[Page 69537]]
alleged charges against the practitioner in a disciplinary
investigation or disciplinary proceeding that has been held in abeyance
pending such recovery.
(b) Appointment of counsel. In a disability matter wherein the OED
Director contends that the practitioner should be excluded or suspended
from practice before the Office, subjected to probationary conditions,
or required to submit to a medical examination, the hearing officer
shall authorize the OED Director to apply to a court of competent
jurisdiction for an order appointing counsel to represent the
practitioner whose disability or addiction is under consideration if it
appears to the hearing officer's satisfaction, based on the
practitioner's motion or notice of the OED Director, that otherwise the
practitioner will appear pro se and may therefore be without adequate
representation.
(c) Proceedings before the hearing officer. (1) Motions. All
proceedings addressing disability matters before a hearing officer
shall be initiated by motion filed by the OED Director or practitioner.
In addition to any other requirement of Sec. 11.43, each such motion
shall include or have attached thereto:
(i) A brief statement of all material facts;
(ii) A proposed petition and/or recommendation to be filed with the
USPTO Director if the movant's motion is granted by the hearing
officer; and
(iii) Affidavits, medical reports, official records, or other
documents setting forth or establishing any of the material facts on
which the movant is relying.
(2) Response. The non-moving party shall file a response to any
motion hereunder setting forth the following:
(i) All objections, if any, to the actions requested in the motion;
(ii) An admission, denial or allegation of lack of knowledge with
respect to each of the material facts in the movant's papers; and
(iii) Affidavits, medical reports, official records, or other
documents setting forth facts on which the non-moving party intends to
rely for purposes of disputing or denying any material fact set forth
in the movant's papers.
(iv) Except as the hearing officer may otherwise order, the
response shall be served and filed within fourteen (14) days after
service of the motion unless such time is shortened or enlarged by the
hearing officer for good cause shown.
(d) Mentally disabled practitioners. (1) Action by OED Director.
The OED Director, upon obtaining proof that a practitioner has been
judicially declared to be mentally incompetent or has been
involuntarily committed to a mental hospital as an inpatient, shall
either
(i) Promptly request authority from a panel of the Committee on
Discipline to submit evidence (appropriate affidavits and/or other
documentary proof) to a hearing officer seeking, pursuant to this
section, an order from the USPTO Director directing that the
practitioner's name be transferred to disability inactive status, and
that the practitioner cease practicing before the Office effective
immediately and for an indefinite period of time until further ordered
by the USPTO Director; or
(ii) Notify a panel of the Committee on Discipline of the OED
Director's intention not to file a petition under paragraph (d)(1)(i)
of this section and the reasons therefor. All further proceedings shall
be pursuant to paragraph (f) of this section.
(e) Incapacitation due to disability or addiction.--(1) OED
Director's request. If the OED Director receives information providing
reason to believe that a practitioner is incapacitated from continuing
to practice before the Office because of disability or addiction and
the practitioner is nonetheless likely to offer or attempt to perform
legal services while so incapacitated, the OED Director may request a
panel of the Committee on Discipline to find probable cause authorizing
the OED Director to petition the USPTO Director for an order
transferring the practitioner to disability inactive status effective
immediately for an indefinite period until further ordered by the USPTO
Director, or possibly imposing probationary conditions with or without
a period of suspension. All further proceedings shall be pursuant to
paragraph (f) of this section, unless the practitioner agrees to have
his or her name transferred to disability inactive status, and to cease
practicing before the Office effective immediately and for an
indefinite period of time until further ordered by the USPTO Director.
(2) Required evidence. In the absence of unusual circumstances,
probable cause sufficient to support the OED Director's request under
paragraph (e)(1) of this section shall include, either a written
acknowledgment of the practitioner or a report of an examination by one
or more qualified medical experts confirming the existence of the
alleged disability or addiction and otherwise indicating the
practitioner to be incapacitated as alleged.
(f) Further proceedings for matters in paragraphs (d) and (e) of
this section.--(1) Action by Committee on Discipline panel. A panel of
the Committee on Discipline may issue a probable cause determination
granting or denying the OED Director's request based on written
acknowledgments, affidavits, and other documentary proof.
(2) Action by OED Director. Upon issuance of a finding of probable
cause, the OED Director shall file a motion provided for in paragraph
(c) of this section with the hearing officer. A copy of the motion
shall be served on the practitioner in accordance with Sec. 11.35, and
upon the practitioner's guardian, if any and known.
(3) Response by Practitioner. The practitioner may respond with a
motion in accordance with paragraph (c) of this section. The hearing
officer will otherwise follow the procedures set forth in Sec. Sec.
11.37 through 11.54.
(4) Initial decision by the hearing officer. The hearing officer
shall urge a practitioner who is not represented by counsel to obtain
counsel of his or her own choice to represent the practitioner if it is
determined that the practitioner is without adequate representation.
The hearing officer shall enter a recommendation to grant or deny the
OED Director's motion based on the affidavits and other documentary
proof of the parties, unless the hearing officer determines that there
is a genuine issue concerning one or more of the material facts, and
issues an order for an evidentiary hearing. A copy of the hearing
officer's recommendation shall be served on the practitioner, the
practitioner's guardian, if any, and the OED Director.
(5) Appeal. The OED Director or practitioner may, as a matter of
right, appeal the hearing officer's recommendation in accordance with
the provisions of Sec. 11.55.
(6) Action by USPTO Director. When a practitioner has been
judicially declared to be mentally incompetent or has been
involuntarily committed to a mental hospital as an inpatient, the USPTO
Director, upon proper proof of that fact, shall enter an order
directing that the practitioner's name be transferred to disability
inactive status, and that the practitioner cease practicing before the
Office in patent, trademark, and other non-patent law effective
immediately and for an indefinite period of time until further ordered
by the USPTO Director. A copy of the order shall be served upon the
practitioner's guardian or counsel, or in the absence thereof, upon the
practitioner and the director of the mental hospital, if any, in such
manner as the USPTO Director may direct. If at any time thereafter the
practitioner is
[[Page 69538]]
judicially declared to be competent or discharged from inpatient status
in the mental hospital, the USPTO Director may dispense with further
evidence that the disability has ended and may direct the reinstatement
of the practitioner's former recognition or registration upon such
terms as is deemed appropriate. In a case of addiction to drugs or
intoxicants, the USPTO Director alternatively may consider the
possibility of probationary conditions.
(g) Self-reported incapacitation due to disability or addiction; no
intent to continue representation.--(1) OED Director's request. If the
OED Director receives from a practitioner or the practitioner's
guardian either a written acknowledgment of the practitioner or
guardian confirming the existence of the alleged disability or
addiction, and otherwise showing the practitioner is incapacitated as
alleged, or a report of an examination by one or more qualified medical
experts providing reason to believe that a practitioner is
incapacitated from continuing to practice before the Office because of
disability or addiction, and the practitioner does not intend to offer
or attempt to perform legal services while so incapacitated, the OED
Director shall petition the USPTO Director for an order directing that
the practitioner's name be transferred to disability inactive status,
and that the practitioner cease practicing before the Office in patent,
trademark, and other non-patent law effective immediately and for an
indefinite period of time until further ordered by the USPTO Director.
In the case of addiction to drugs or intoxicants, the OED Director may
petition the USPTO Director to prohibit reinstatement absent
satisfaction of specified conditions.
(2) Action by the USPTO Director. When a practitioner is
incapacitated from continuing to practice before the Office because of
disability or addiction, and reports the same to the OED Director, the
USPTO Director, upon proper proof of that disability or addiction,
shall enter an order directing that the practitioner's name be
transferred to disability inactive status, and that the practitioner
cease practicing before the Office in patent, trademark, and other non-
patent law effective immediately and for an indefinite period of time
until further ordered by the USPTO Director. A copy of the order shall
be served upon the practitioner, and the practitioner's guardian, if
any, in such manner as the USPTO Director may direct. In a case of
addiction to drugs or intoxicants, the USPTO Director may prohibit
reinstatement absent satisfaction of specified conditions.
(h) Holding in abeyance a disciplinary proceeding because of
disability or addiction.--(1) Practitioner's motion. In the course of a
disciplinary proceeding under Sec. 11.32, but before an initial
decision is mailed, the practitioner therein may file a motion
requesting the hearing officer to enter an order holding such
proceeding in abeyance based on the contention that the practitioner is
suffering from a disability or addiction that makes it impossible for
the practitioner to adequately defend the charges in the disciplinary
proceeding. The practitioner's motion shall be accompanied by all
pertinent medical records and in all cases must include a signed form
acknowledging the alleged incapacity by reason of disability or
addiction.
(2) Disposition of practitioner's motion. The hearing officer shall
decide the motion and any response thereto. If the motion satisfies
paragraph (h)(1) of this section, the hearing officer shall:
(i) Enter a temporary order holding the disciplinary proceeding in
abeyance (but not any investigation instituted by the OED Director with
respect to the practitioner);
(ii) Submit to the USPTO Director a report that includes a
petition, prepared by the OED Director, seeking from the USPTO Director
an order immediately transferring the practitioner to disability
inactive status and otherwise precluding the practitioner from practice
before the Office in patent, trademark and other non-patent law until a
determination is made of the practitioner's capability to resume
practice before the Office in a proceeding instituted by the
practitioner under paragraph (h)(2)(i) of this section; and
(iii) If the OED Director raises a genuine issue as to any material
fact concerning the practitioner's self-alleged disability or
addiction, to enter an order referring such issue(s) to the hearing
officer for an evidentiary hearing pursuant to paragraph (e) of this
section. The temporary abeyance order shall remain in effect until a
determination is made by the hearing officer that the practitioner is
not incapacitated and that resumption of the matters held in abeyance
would be proper and advisable.
(i) Determination of practitioner's recovery and removal of
disability or addiction.--(1) Scope of rule. This section applies to
disability matters involving allegations that a practitioner's prior
disability or addiction has been removed, including proceedings for
reactivation or for resumption of disciplinary matters being held in
abeyance.
(2) Reactivation. Any practitioner transferred to disability
inactive status for incapacity by reason of disability or addiction
shall be entitled to file a motion for reactivation once a year
beginning at any time not less than one year after the initial
effective date of suspension, or once during any shorter interval
provided by the USPTO Director's order of suspension or any
modification thereof. In addition to complying with all applicable
rules, such motion shall conform to the requirements of paragraph
(f)(3) of this section, and include all alleged facts showing that the
practitioner's disability or addiction has been removed and that the
practitioner is fit to resume practice before the Office.
(3) Contents of motion for reactivation. A motion for reactivation
alleging that a practitioner has recovered from a prior disability or
addiction shall be accompanied by all available medical reports or
similar documents relating thereto and shall also include allegations
specifically addressing the following matters:
(i) The nature of the prior disability or addiction, including its
beginning date and the most recent date (both dates approximate if
necessary) on which the practitioner was still afflicted with the prior
disability;
(ii) The relationship between the prior disability or addiction and
the practitioner's incapacity to continue to practice before the Office
during the period of such prior disability or addiction;
(iii) In the case of prior addiction, for an appropriate prior
period (including the entire period following any suspension thereof),
the dates or period (approximate if necessary) for each and every
occasion on or during which the practitioner used any drugs or
intoxicants having the potential to impair the practitioner's capacity
to practice before the Office, whether or not such capacity was in fact
impaired;
(iv) A brief description of the supporting medical evidence
(including names of medical or other experts) that the practitioner
expects to submit in support of the alleged recovery and
rehabilitation;
(v) A written statement disclosing the name of every medical expert
(such as psychiatrist, psychologist, or physician) or other expert and
hospital by whom or in which the practitioner has been examined or
treated during the period since the date of suspension for disability
or addiction;
(vi) The practitioner's written consent, to be provided to each
medical
[[Page 69539]]
or other expert or hospital identified in paragraph (i)(3)(v) of this
section, to divulge such information and records as may be required by
any medical experts who are appointed by the hearing officer or who
examine the practitioner pursuant to his or her consent at the OED
Director's request; and
(vii) The practitioner's written consent (without further order
from a hearing officer, the USPTO Director, or the OED Director) to
submit to an examination of qualified medical experts (at the
practitioner's expense) if so requested by the OED Director.
(4) Resumption of disciplinary proceeding held in abeyance. The OED
Director may file a motion requesting the hearing officer to terminate
a prior order holding in abeyance any pending proceeding because of the
practitioner's disability or addiction. The hearing officer shall
decide the matter presented by the OED Director motion hereunder based
on the affidavits and other admissible evidence attached to the OED
Director's motion or the practitioner's response. If there is any
genuine issue as to one or more material facts, the hearing officer
will hold an evidentiary hearing in which the following procedures
shall apply:
(i) If the prior order of abeyance was based solely on the
practitioner's self-alleged contention of disability or addiction, the
OED Director's motion under paragraph (e)(1) of this section shall
operate as a show cause order placing the burden on the practitioner to
establish by a preponderance of the evidence that the prior self-
alleged disability or addiction continues to make it impossible for the
practitioner to defend himself/herself in the underlying proceeding
being held in abeyance; and
(ii) If such prior order of abeyance was based on a finding
supported by affirmative evidence of the practitioner's disability or
addiction, the burden shall be on the OED Director to establish by a
preponderance of the evidence that the prior evidence of disability or
addiction was erroneous or that the practitioner's disability or
addiction has been removed and full recovery therefrom has been
achieved.
(j) Action by the hearing officer when practitioner is not
incapacitated. If, in the course of a proceeding under this section or
a disciplinary proceeding, the hearing officer determines that the
practitioner is not incapacitated from defending himself/herself, or is
not incapacitated from practicing before the Office, the hearing
officer shall take such action as is deemed appropriate, including the
entry of an order directing the resumption of the disciplinary
proceeding against the practitioner.
Sec. Sec. 11.29-11.31 [Reserved]
Sec. 11.32 Initiating a disciplinary proceeding; reference to a
hearing officer.
If after conducting an investigation under Sec. 11.22(a) the OED
Director is of the opinion that a practitioner has violated an
imperative USPTO Rule of Professional Conduct, or that an other
individual (see Sec. 11.19(a)(2)) has violated any of Sec. Sec.
11.303(a)(1), 11.304, 11.305(a), or 11.804, the OED Director, except
for complying with the provisions of Sec. Sec. 27 or 28 for a
practitioner, shall, after complying where necessary with the
provisions of 5 U.S.C. 558(c), call a meeting of a panel of the
Committee on Discipline. The panel of the Committee on Discipline shall
then determine as specified in Sec. 11.23(b) whether a disciplinary
proceeding shall be instituted under paragraph (b) of this section. If
the panel of the Committee on Discipline determines that probable cause
exists to believe that a Rule of Professional Conduct has been
violated, the OED Director shall institute a disciplinary proceeding by
filing a complaint under Sec. 11.34. The complaint shall be filed in
the Office of the USPTO Director. A disciplinary proceeding may result
in a reprimand, or suspension or exclusion of a practitioner from
practice before the Office. Upon the filing of a complaint under Sec.
11.34, the USPTO Director will refer the disciplinary proceeding to a
hearing officer.
Sec. 11.33 [Reserved]
Sec. 11.34 Complaint.
(a) A complaint instituting a disciplinary proceeding shall:
(1) Name the practitioner or other individual (see Sec.
11.19(a)(2)) who may then be referred to as the ``respondent'';
(2) Give a plain and concise description of the respondent's
alleged violations of the imperative USPTO Rules of Professional
Conduct;
(3) State the place and time, not less than thirty days from the
date the complaint is filed, for filing an answer by the respondent;
(4) State that a decision by default may be entered if an answer is
not timely filed by the respondent; and
(5) Be signed by the OED Director.
(b) A complaint will be deemed sufficient if it fairly informs the
respondent of any violation of the imperative USPTO Rules of
Professional Conduct that form the basis for the disciplinary
proceeding so that the respondent is able to adequately prepare a
defense. If supported by the facts presented to the Committee on
Discipline, the complaint may include alleged violations even if the
specific violations were not in the finding of the probable cause
decision.
Sec. 11.35 Service of complaint.
(a) A complaint may be served on a respondent in any of the
following methods:
(1) By delivering a copy of the complaint personally to the
respondent, in which case the individual who gives the complaint to the
respondent shall file an affidavit with the OED Director indicating the
time and place the complaint was handed to the respondent.
(i) A respondent who is a registered practitioner at the address
for which separate notice was last received by the OED Director, or
(ii) A respondent who is a nonregistered practitioner at the last
address for the respondent known to the OED Director.
(3) By any method mutually agreeable to the OED Director and the
respondent.
(4) In the case of a respondent who resides outside the United
States, by sending a copy of the complaint by any delivery service that
provides ability to electronically follow the progress of delivery or
attempted delivery, to:
(i) A respondent who is a registered practitioner at the last
address for which separate notice was last received by the OED
Director; or
(ii) A respondent who is a nonregistered practitioner at the last
address for the respondent known to the OED Director.
(5) In the case of a respondent being an other individual (see
Sec. 11.19(a)(2)) by sending a copy of the complaint by any delivery
service providing tracking and delivery or attempted delivery records,
including the U.S. Postal Service to:
(i) The last address for the other individual (see Sec.
11.19(a)(2)) for which notice was last received by the Office in an
application; or
(ii) At the last address for the other individual (see Sec.
11.19(a)(2)) known to OED; or
(b) If a copy of the complaint cannot be delivered to the
respondent through any one of the procedures in paragraph (a) of this
section, the OED Director shall serve the respondent by causing an
appropriate notice to be published in the Official Gazette for two
consecutive weeks, in which case the time for filing an answer shall be
thirty days from the second publication of the notice. Failure to
timely file an answer will constitute an admission of the allegations
in the complaint in accordance with paragraph
[[Page 69540]]
(d) of Sec. 11.34, and the hearing officer may enter an initial
decision on default.
(c) If the respondent is known to the OED Director to be
represented by an attorney under Sec. 11.40(a), a copy of the
complaint shall also be served on the attorney in the manner provided
for in paragraph (a) or (b) of this section, in addition to the
complaint being served on respondent.
Sec. 11.36 Answer to complaint.
(a) Time for answer. An answer to a complaint shall be filed within
the time set in the complaint that shall be not less than thirty days.
(b) With whom filed. The answer shall be filed in writing with the
hearing officer. The hearing officer may extend the time for filing an
answer once for a period of no more than thirty days upon a showing of
good cause, provided a motion requesting an extension of time is filed
within thirty days after the date the complaint is served on
respondent. A copy of the answer shall be served on the OED Director.
(c) Content. The respondent shall include in the answer a statement
of the facts that constitute the grounds of defense and shall
specifically admit or deny each allegation set forth in the complaint.
The respondent shall not deny a material allegation in the complaint
that the respondent knows to be true or state that respondent is
without sufficient information to form a belief as to the truth of an
allegation when in fact the respondent possesses that information. The
respondent shall also state affirmatively special matters of defense.
(d) Failure to deny allegations in complaint. Every allegation in
the complaint that is not denied by a respondent in the answer shall be
deemed to be admitted and may be considered proven. The hearing officer
at any hearing need receive no further evidence in respect of that
allegation. Failure to timely file an answer will constitute an
admission of the allegations in the complaint, and may result in entry
of default judgment.
(e) Reply by the OED Director. No reply to an answer is required by
the OED Director unless ordered by the hearing officer, and any
affirmative defense in the answer shall be deemed to be denied. The OED
Director may, however, file a reply if he or she chooses.
(f) Notice of intent to raise disability in mitigation.--(1)
Respondent's notice. If respondent intends to raise an alleged
disability in mitigation pursuant to Sec. 11.28, respondent shall file
by delivery to the OED Director and hearing officer notice of said
allegation no later than the date that the answer to the complaint is
due. The notice shall specify the disability, its nexus to the
misconduct, and the reason it provides mitigation. Failure to deliver
the notice of intent to raise an alleged disability in mitigation shall
operate as a waiver of the right to raise an alleged disability in
mitigation, subject to the provisions of paragraph (f)(3) of this
section.
(2) Conditions of practice. If a respondent files a notice pursuant
to paragraph (f)(1) of this section, the hearing officer, after
providing the OED Director with an opportunity to reply to said notice,
shall forthwith issue an order providing for appropriate conditions
under which the respondent shall practice before the Office. Said order
may include the appointment of monitor(s) depending upon the particular
circumstances of the case.
(i) Monitors. Should the hearing officer appoint monitors, the
monitor(s) shall report to the hearing officer and OED Director on a
periodic basis to be determined by the hearing officer. The monitoring
shall remain in effect during the pendency of the disciplinary
proceeding or until order of the USPTO Director. The monitor(s) shall
respond to the OED Director's inquiries concerning such monitoring and
may be called by the OED Director or respondent to testify regarding
sanctions.
(ii) Waiver. The filing of the notice pursuant to paragraph (f)(1)
of this section is deemed to constitute a waiver by respondent of any
claim of the right to withhold from the OED Director information coming
to the attention of a monitor.
(3) Late-filed notice.--(i) Notice filed 30 or more days before
scheduled hearing. If respondent wishes to raise an alleged disability
in mitigation after the date prescribed in paragraph (f)(1) of this
section, but no later than 30 days before the date scheduled by the
hearing officer for the hearing, respondent shall file a motion with
the hearing officer, on notice to the OED Director, setting forth good
cause why respondent should be allowed to raise a plea in mitigation
out of time. The OED Director may consent in writing to the grant of
the motion. The hearing officer may grant or deny the motion, with or
without an evidentiary hearing. Leave to assert the plea in mitigation
shall be freely granted when justice so requires, and in the absence of
a showing of prejudice by the OED Director. An order by the hearing
officer granting such a motion may include the provisions in paragraphs
(f)(2), (f)(2)(i), and (f)(2)(ii) of this section, or, in circumstances
where the hearing officer determines it to be just and appropriate, may
be conditioned upon respondent's consent to an interim suspension
pending disposition of the disciplinary proceeding.
(ii) Notice filed within 30 days after scheduled hearing. If a
respondent wishes to raise an alleged disability in mitigation after
the date prescribed in paragraph (f)(3)(i) of this section, respondent
shall file a motion with the hearing officer, containing the showing
prescribed in paragraph (f)(3)(i) of this section; however, such a
motion will be granted only on the condition that respondent consent to
an interim suspension pending disposition of the disciplinary
proceeding.
(4) Violations of conditions of practice. If a monitor reports that
respondent has violated a term or condition under which respondent is
continuing to practice, the OED Director may request the hearing
officer to schedule the matter for a hearing on the issue of whether
the monitoring shall be lifted, and respondent suspended, pending final
disposition of the disciplinary proceeding.
(5) Motion to vacate or modify suspension. A respondent suspended
pursuant to paragraphs (f)(3)(i) or (f)(4) of this section may file a
motion at any time with the hearing officer to vacate or modify the
suspension. If respondent's motion presents a prima facie case that
respondent is significantly rehabilitated from the alleged disability,
the matter will be considered by the hearing officer at an evidentiary
hearing on the issue of rehabilitation. Reinstatement pursuant to this
paragraph shall be subject to monitoring and waiver provisions of
paragraphs (f)(2), (f)(2)(i), and (f)(2)(ii) of this section.
Respondent shall have the burden of proving, by clear and convincing
evidence, significant rehabilitation from the alleged disability.
Sec. 11.37 Supplemental complaint.
False statements in an answer, motion, notice, or other filed
communication may be made the basis of a supplemental complaint.
Sec. 11.38 Contested case.
Upon the filing of an answer by the respondent, a disciplinary
proceeding shall be regarded as a contested case within the meaning of
35 U.S.C. 24. Evidence obtained by a subpoena issued under 35 U.S.C. 24
shall not be admitted into the record or considered unless leave to
proceed under 35 U.S.C. 24 was previously authorized by the hearing
officer.
[[Continued on page 69541]]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
]
[[pp. 69541-69562]] Changes to Representation of Others Before the United States
Patent and Trademark Office
[[Continued from page 69540]]
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Sec. 11.39 Hearing officer; appointment; responsibilities; review of
interlocutory orders; stays.
(a) Appointment. A hearing officer, appointed by the USPTO Director
under 5 U.S.C. 3105 or 35 U.S.C. 32, shall conduct disability or
disciplinary proceedings as provided by this part.
(b) Independence of the Hearing Officer. (1) A hearing officer
appointed in accordance with paragraph (a) of this section shall not be
subject to first level and second level supervision, review or
direction of the USPTO Director.
(2) A hearing officer appointed in accordance with paragraph (a)(1)
of this section shall not be subject to supervision, review or
direction of the person(s) investigating or prosecuting the case.
(3) A hearing officer appointed in accordance with paragraph (a)(1)
of this section shall be impartial, shall not be an individual who has
participated in any manner in the decision to initiate the proceedings,
and shall not have been employed under the immediate supervision of the
practitioner.
(4) A hearing officer appointed in accordance with paragraph (a) of
this section shall be admitted to practice law and have suitable
experience and training to conduct the hearing, reach a determination
and render an initial decision in an equitable manner.
(c) Responsibilities. The hearing officer shall have authority,
consistent with specific provisions of these regulations, to:
(1) Administer oaths and affirmations;
(2) Make rulings upon motions and other requests;
(3) Rule upon offers of proof, receive relevant evidence, and
examine witnesses;
(4) Authorize the taking of a deposition of a witness in lieu of
personal appearance of the witness before the hearing officer;
(5) Determine the time and place of any hearing and regulate its
course and conduct;
(6) Hold or provide for the holding of conferences to settle or
simplify the issues;
(7) Receive and consider oral or written arguments on facts or law;
(8) Adopt procedures and modify procedures from time-to-time as
occasion requires for the orderly disposition of proceedings;
(9) Make initial decisions under Sec. Sec. 11.24, 11.25, and
11.154;
(10) Engage in no ex parte discussions with any party on the merits
of the complaint, beginning with appointment and until the final agency
decision is issued; and
(11) Perform acts and take measures as necessary to promote the
efficient, timely and impartial conduct of any disciplinary proceeding.
(d) Time for making initial decision. The hearing officer shall set
times and exercise control over a disciplinary proceeding such that an
initial decision under Sec. 11.54 is normally issued within nine
months of the date a complaint is filed. The hearing officer may,
however, issue an initial decision more than nine months after a
complaint is filed if in his or her opinion there exist unusual
circumstances which preclude issuance of an initial decision within
nine months of the filing of the complaint.
(e) Review of interlocutory orders. The USPTO Director will not
review an interlocutory order of a hearing officer except:
(1) When the hearing officer shall be of the opinion:
(i) That the interlocutory order involves a controlling question of
procedure or law as to which there is a substantial ground for a
difference of opinion, and
(ii) That an immediate decision by the USPTO Director may
materially advance the ultimate termination of the disciplinary
proceeding, or
(2) In an extraordinary situation where the USPTO Director deems
that justice requires review.
(f) Stays pending review of interlocutory order. If the OED
Director or a respondent seeks review of an interlocutory order of a
hearing officer under paragraph (b)(2) of this section, any time period
set for taking action by the hearing officer shall not be stayed unless
ordered by the USPTO Director or the hearing officer.
Sec. 11.40 Representative for OED Director or respondent.
(a) A respondent may represent himself or herself, or be
represented by an attorney before the Office in connection with an
investigation or disciplinary proceeding. The attorney shall file a
written declaration that he or she is an attorney within the meaning of
Sec. 11.1(e) and shall state:
(1) The address to which the attorney wants correspondence related
to the investigation or disciplinary proceeding sent, and
(2) A telephone number where the attorney may be reached during
normal business hours.
(b) The USPTO Director shall designate at least two disciplinary
attorneys under the aegis of the General Counsel to act as
representatives for the OED Director. The disciplinary attorneys
prosecuting disciplinary proceedings shall not consult with the General
Counsel and the Deputy General Counsel for General Law regarding the
proceeding. The General Counsel and the Deputy General Counsel for
General Law shall remain insulated from the investigation and
prosecution of all disciplinary proceedings in order that they shall be
available as counsel to the USPTO Director in deciding disciplinary
proceedings. However, the Deputy General Counsel for Intellectual
Property Law and Solicitor shall not remain insulated from the
investigation and prosecution of disciplinary proceedings, and thus
shall not be available to counsel the USPTO Director in deciding such
proceedings.
(c) Upon serving a complaint pursuant to Sec. 11.34, the members
of the Committee on Discipline, and the disciplinary attorneys
prosecuting a disciplinary proceeding shall not participate in
rendering a decision on the charges contained in the complaint.
Sec. 11.41 Filing of papers.
(a) The provisions of Sec. 1.8 of this subchapter do not apply to
disciplinary proceedings. All papers filed after the complaint and
prior to entry of an initial decision by the hearing officer shall be
filed with the hearing officer at an address or place designated by the
hearing officer.
(b) All papers filed after entry of an initial decision by the
hearing officer shall be filed with the USPTO Director. A copy of the
paper shall be served on the OED Director. The hearing officer or the
OED Director may provide for filing papers and other matters by hand,
by ``Express Mail,'' or by facsimile followed in a specified time by
the original hard copy.
Sec. 11.42 Service of papers.
(a) All papers other than a complaint shall be served on a
respondent who is represented by an attorney by:
(1) Delivering a copy of the paper to the office of the attorney;
or
(2) Mailing a copy of the paper by first-class mail, ``Express
Mail,'' or other delivery service to the attorney at the address
provided by the attorney under Sec. 11.40(a)(1); or
(3) Any other method mutually agreeable to the attorney and a
representative for the OED Director.
(b) All papers other than a complaint shall be served on a
respondent who is not represented by an attorney by:
(1) Delivering a copy of the paper to the respondent; or
(2) Mailing a copy of the paper by first-class mail, ``Express
Mail,'' or other delivery service to the respondent at the address to
which a complaint may be served or such other address as may be
[[Page 69542]]
designated in writing by the respondent; or
(3) Any other method mutually agreeable to the respondent and a
representative of the OED Director.
(c) A respondent shall serve on the representative for the OED
Director one copy of each paper filed with the hearing officer or the
OED Director. A paper may be served on the representative for the OED
Director by:
(1) Delivering a copy of the paper to the representative; or
(2) Mailing a copy of the paper by first-class mail, ``Express
Mail,'' or other delivery service to an address designated in writing
by the representative; or
(3) Any other method mutually agreeable to the respondent and the
representative.
(d) Each paper filed in a disciplinary proceeding shall contain
therein a certificate of service indicating:
(1) The date of which service was made; and
(2) The method by which service was made.
(e) The hearing officer or the USPTO Director may require that a
paper be served by hand or by ``Express Mail.''
(f) Service by mail is completed when the paper mailed in the
United States is placed into the custody of the U.S. Postal Service.
Sec. 11.43 Motions.
Motions may be filed with the hearing officer. The hearing officer
will determine on a case-by-case basis the time period for response to
a motion and whether replies to responses will be authorized. No motion
shall be filed with the hearing officer unless such motion is supported
by a written statement by the moving party that the moving party or
attorney for the moving party has conferred with the opposing party or
attorney for the opposing party in an effort in good faith to resolve
by agreement the issues raised by the motion and has been unable to
reach agreement. If the parties prior to a decision on the motion
resolve issues raised by a motion by the hearing officer, the parties
shall promptly notify the hearing officer.
Sec. 11.44 Hearings.
(a) The hearing officer shall preside at hearings in disciplinary
proceedings. The hearing officer shall set time and place for a
hearing. In setting a time and place, the hearing officer shall
normally give preference to a Federal facility in the district where
the Office's principal office is located or Washington, DC, for all
respondents recognized or registered to practice before the Office, and
otherwise shall give due regard to the convenience and necessity of the
parties or their representatives. In cases involving an incarcerated
respondent, any necessary oral hearing may be held at the location of
incarceration. Oral hearings will be stenographically recorded and
transcribed, and the testimony of witnesses will be received under oath
or affirmation. The hearing officer shall conduct hearings in
accordance with 5 U.S.C. 556. A copy of the transcript of the hearing
shall become part of the record. A copy of the transcript shall be
provided to the OED Director and the respondent at the expense of the
Office.
(b) If the respondent to a disciplinary proceeding fails to appear
at the hearing after a notice of hearing has been given by the hearing
officer, the hearing officer may deem the respondent to have waived the
right to a hearing and may proceed with the hearing in the absence of
the respondent.
(c) A hearing under this section will not be open to the public
except that the hearing officer may grant a request by a respondent to
open his or her hearing to the public and make the record of the
disciplinary proceeding available for public inspection, provided,
Agreement is reached in advance to exclude from public disclosure
information which is privileged or confidential under applicable laws
or regulations. If a disciplinary proceeding results in disciplinary
action against a practitioner, and subject to Sec. 11.59(c), the
record of the entire disciplinary proceeding, including any settlement
agreement, will be available for public inspection.
Sec. 11.45 Proof; variance; amendment of pleadings.
Whenever in the course of a hearing evidence is presented upon
which another charge or charges against the respondent might be made,
it shall not be necessary for the Committee on Discipline to find
probable cause based on an additional charge or charges on the
respondent, but with the consent of the hearing officer, the OED
Director shall provide respondent with reasonable notice and an
opportunity to be heard, and the hearing officer shall proceed to
consider such additional charge or charges as if the same had been made
and served at the time of the service of the original charge or
charges. Any party who would otherwise be prejudiced by the amendment
will be given reasonable opportunity to meet the allegations in the
complaint, answer, or reply, as amended, and the hearing officer shall
make findings on any issue presented by the complaint, answer, or reply
as amended.
Sec. Sec. 11.46-11.48 [Reserved]
Sec. 11.49 Burden of proof.
In a disciplinary proceeding, the OED Director shall have the
burden of proving his or her case by clear and convincing evidence and
a respondent shall have the burden of proving any affirmative defense
by clear and convincing evidence.
Sec. 11.50 Evidence.
(a) Rules of evidence. The rules of evidence prevailing in courts
of law and equity are not controlling in hearings in disciplinary
proceedings. However, the hearing officer shall exclude evidence that
is irrelevant, immaterial, or unduly repetitious.
(b) Depositions. Depositions of witnesses taken pursuant to Section
11.51 may be admitted as evidence.
(c) Government documents. Official documents, records, and papers
of the Office, including all papers collected during the disciplinary
investigation, are admissible without extrinsic evidence of
authenticity. These documents, records, and papers may be evidenced by
a copy certified as correct by an employee of the Office.
(d) Exhibits. If any document, record, or other paper is introduced
in evidence as an exhibit, the hearing officer may authorize the
withdrawal of the exhibit subject to any conditions the hearing officer
deems appropriate.
(e) Objections. Objections to evidence will be in short form,
stating the grounds of objection. Objections and rulings on objections
will be a part of the record. No exception to the ruling is necessary
to preserve the rights of the parties.
Sec. 11.51 Depositions.
(a) Depositions for use at the hearing in lieu of personal
appearance of a witness before the hearing officer may be taken by
respondent or the OED Director upon a showing of good cause and with
the approval of, and under such conditions as may be deemed appropriate
by, the hearing officer. Depositions may be taken upon oral or written
questions, upon not less than ten days' written notice to the other
party, before any officer authorized to administer an oath or
affirmation in the place where the deposition is to be taken. The
parties may waive the requirement of ten days' notice and depositions
may then be taken of a witness at a time and place mutually agreed to
by the parties. When a deposition is taken upon written questions,
copies of the written
[[Page 69543]]
questions will be served upon the other party with the notice and
copies of any written cross-questions will be served by hand or
``Express Mail'' not less than five days before the date of the taking
of the deposition unless the parties mutually agree otherwise. A party
on whose behalf a deposition is taken shall file a copy of a transcript
of the deposition signed by a court reporter with the hearing officer
and shall serve one copy upon the opposing party. Expenses for a court
reporter and preparing, serving, and filing depositions shall be borne
by the party at whose instance the deposition is taken. Depositions may
not be taken to obtain discovery.
(b) When the OED Director and the respondent agree in writing, a
deposition of any witness who will appear voluntarily may be taken
under such terms and conditions as may be mutually agreeable to the OED
Director and the respondent. The deposition shall not be filed with the
hearing officer and may not be admitted in evidence before the hearing
officer unless he or she orders the deposition admitted in evidence.
The admissibility of the deposition shall lie within the discretion of
the hearing officer who may reject the deposition on any reasonable
basis including the fact that demeanor is involved and that the witness
should have been called to appear personally before the hearing
officer.
Sec. 11.52 Discovery.
Discovery shall not be authorized except as follows.
(a) After an answer is filed under Sec. 11.36 and when a party
establishes in a clear and convincing manner that discovery is
necessary and relevant, the hearing officer, under such conditions as
he or she deems appropriate, may order an opposing party to:
(1) Answer a reasonable number of written requests for admission or
interrogatories;
(2) Produce for inspection and copying a reasonable number of
documents; and
(3) Produce for inspection a reasonable number of things other than
documents.
(b) Discovery shall not be authorized under paragraph (a) of this
section of any matter which:
(1) Will be used by another party solely for impeachment or cross-
examination;
(2) Is not available to the party under 35 U.S.C. 122;
(3) Relates to any disciplinary proceeding commenced in the Office
prior to March 8, 1985;
(4) Relates to experts except as the hearing officer may require
under paragraph (e) of this section.
(5) Is privileged; or
(6) Relates to mental impressions, conclusions, opinions, or legal
theories of any attorney or other representative of a party.
(c) The hearing officer may deny discovery requested under
paragraph (a) of this section if the discovery sought:
(1) Will unduly delay the disciplinary proceeding;
(2) Will place an undue burden on the party required to produce the
discovery sought; or
(3) Is available:
(i) Generally to the public;
(ii) Equally to the parties; or
(iii) To the party seeking the discovery through another source.
(d) Prior to authorizing discovery under paragraph (a) of this
section, the hearing officer shall require the party seeking discovery
to file a motion (Sec. 11.43) and explain in detail for each request
made how the discovery sought is necessary and relevant to an issue
actually raised in the complaint or the answer.
(e) The hearing officer may require parties to file and serve,
prior to any hearing, a pre-hearing statement that contains:
(1) A list (together with a copy) of all proposed exhibits to be
used in connection with a party's case-in-chief;
(2) A list of proposed witnesses;
(3) As to each proposed expert witness:
(i) An identification of the field in which the individual will be
qualified as an expert;
(ii) A statement as to the subject matter on which the expert is
expected to testify; and
(iii) A statement of the substance of the facts and opinions to
which the expert is expected to testify;
(4) The identity of Government employees who have investigated the
case; and
(5) Copies of memoranda reflecting respondent's own statements to
administrative representatives.
(f) After a witness testifies for a party, if the opposing party
requests, the party may be required to produce, prior to cross-
examination, any written statement made by the witness.
Sec. 11.53 Proposed findings and conclusions; post-hearing
memorandum.
Except in cases in which the respondent has failed to answer the
complaint or amended complaint, the hearing officer, prior to making an
initial decision, shall afford the parties a reasonable opportunity to
submit proposed findings and conclusions and a post-hearing memorandum
in support of the proposed findings and conclusions.
Sec. 11.54 Initial decision of hearing officer.
(a) The hearing officer shall make an initial decision in the case.
The decision will include:
(1) A statement of findings and conclusions, as well as the reasons
or basis therefor with appropriate references to the record, upon all
the material issues of fact, law, or discretion presented on the
record, and
(2) An order of suspension or exclusion from practice, an order of
reprimand, or an order dismissing the complaint. The hearing officer
shall transmit a copy of the decision to the OED Director and to the
respondent. After issuing the decision, the hearing officer shall
transmit the entire record to the OED Director. In the absence of an
appeal to the USPTO Director, the decision of the hearing officer will,
without further proceedings, become the decision of the USPTO Director
thirty (30) days from the date of the decision of the hearing officer.
(b) The initial decision of the hearing officer shall explain the
reason for any reprimand, suspension or exclusion. In determining any
sanction, the following should normally be considered:
(1) The public interest;
(2) The seriousness of the violation of the imperative USPTO Rules
of Professional Conduct;
(3) The deterrent effects deemed necessary;
(4) The integrity of the legal and patent professions; and
(5) Any extenuating circumstances.
Sec. 11.55 Appeal to the USPTO Director.
(a) Within thirty (30) days from the date of the initial decision
of the hearing officer under Sec. Sec. 11.28, or 11.54, either party
may appeal to the USPTO Director. The appeal shall include the
appellant's brief. If an appeal is taken, the time for filing a cross-
appeal shall expire 14 days after the date of service of the appeal
pursuant to Sec. 11.42, or 30 days after the date of the initial
decision of the hearing officer, whichever is later. The cross-appeal
shall include the cross appellant's brief. An appeal or cross-appeal by
the respondent will be filed with the USPTO Director and served on the
OED Director, and will include exceptions to the decisions of the
hearing officer and supporting reasons for those exceptions. All briefs
must include a separate section containing a concise statement of the
disputed facts and disputed points of law. Any issue not raised in the
concise statement of
[[Page 69544]]
disputed facts and disputed points of law will be deemed to have been
abandoned by the appellant and may be disregarded by the USPTO Director
in reviewing the initial determination, unless the USPTO Director
chooses to review the issue on his or her own initiative under Sec.
11.56. If the OED Director, through his or her representative, files
the appeal or cross-appeal, the OED Director shall serve on the other
party a copy of the appeal or cross-appeal. The other party to an
appeal or cross-appeal may file a reply brief. A copy of respondent's
reply brief shall be served on the OED Director. The time for filing
any reply brief expires thirty (30) days after the date of service
pursuant to Sec. 11.42 of an appeal, cross-appeal or copy thereof. If
the OED Director files the reply brief, the OED Director shall serve on
the other party a copy of the reply brief. Upon the filing of an
appeal, cross-appeal, if any, and reply briefs, if any, the OED
Director shall transmit the entire record to the USPTO Director. Unless
the USPTO Director permits, no further briefs or motions shall be
filed.
(b) An appellant's or cross-appellant's brief shall be no more than
30 pages in length on 8\1/2\ by 11-inch paper, and shall comply with
Rule 28(A)(2), (3), and (5) through (10), and Rule 32(a)(4), (5), (6),
and (7) of the Federal Rules of Appellate Procedure. An appellee's or
cross appellee's reply brief shall be no more than 15 pages in length
on 8\1/2\ by 11-inch paper, and shall comply with Rule 28(A)(2), (3),
(8), and (9), and Rule 32(a)(4), (5), (6), and (7) of the Federal Rules
of Appellate Procedure. If a cross-appeal is filed, the party who files
an appeal first is the appellant for purposes of this rule. If appeals
are filed on the same day, the respondent is the appellant. The USPTO
Director may refuse entry of a nonconforming brief.
(c) The USPTO Director will decide the appeal on the record made
before the hearing officer.
(d) The USPTO Director may order reopening of a disciplinary
proceeding in accordance with the principles that govern the granting
of new trials. Any request to reopen a disciplinary proceeding on the
basis of newly discovered evidence must demonstrate that the newly
discovered evidence could not have been discovered by due diligence.
(e) In the absence of an appeal by the OED Director, failure by the
respondent to appeal under the provisions of this section shall be
deemed to be both acceptance by the respondent of the initial decision
and waiver by the respondent of the right to further administrative or
judicial review.
Sec. 11.56 Decision of the USPTO Director.
(a) The USPTO Director shall decide an appeal from an initial
decision of the hearing officer. The USPTO Director may affirm,
reverse, or modify the initial decision or remand the matter to the
hearing officer for such further proceedings as the USPTO Director may
deem appropriate. In making a final decision, the USPTO Director shall
review the record or the portions of the record designated by the
parties. The USPTO Director shall transmit a copy of the final decision
to the OED Director and to the respondent.
(b) A final decision of the USPTO Director may dismiss a
disciplinary proceeding, reprimand a practitioner, or may suspend or
exclude the practitioner from practice before the Office.
(c) The respondent or the OED Director may make a single request
for reconsideration or modification of the decision by the USPTO
Director if filed within 20 days from the date of entry of the
decision. No request for reconsideration or modification shall be
granted unless the request is based on newly discovered evidence, and
the requestor must demonstrate that the newly discovered evidence could
not have been discovered by due diligence. Such a request shall have
the effect of staying the effective date of the order of discipline in
the final decision. The decision by the USPTO Director is effective on
its date of entry.
Sec. 11.57 Review of final decision of the USPTO Director.
(a) Review of the final decision by USPTO Director in a
disciplinary case may be had, subject to Sec. 11.55(d), by a petition
filed in the United States District Court for the District of Columbia
in accordance with the local rule of said court. 35 U.S.C. 32. The
Respondent must serve the USPTO Director with the petition. Service
upon the USPTO Director is effected (1) by delivering a copy of the
petition by registered or certified mail or as otherwise authorized by
law on the USPTO to: Director of the USPTO, Office of the General
Counsel, United States Patent and Trademark Office, P.O. Box 15667,
Arlington, VA 22215; or (2) by hand-delivering a copy of the petition
during business hours to: Director of the USPTO, Office of the General
Counsel, Crystal Park Two, Suite 905, 2121 Crystal Dr., Arlington, VA
22215.
(b) The USPTO Director may stay an order of discipline in the final
decision pending review of the final decision of the USPTO Director.
Sec. 11.58 Suspended or excluded practitioner.
(a) A practitioner who is suspended or excluded under Sec. Sec.
11.24, 11.25, 11.27, 11.55, or 11.56, or has resigned from practice
before the Office under Sec. Sec. 11.11(d) shall not engage in
practice of patent, trademark and other non-patent law before the
Office. No practitioner suspended or excluded under Sec. Sec. 11.24,
11.25, 11.27, 11.55, or 11.56 will be automatically reinstated at the
end of his or her period of suspension. A practitioner who is suspended
or excluded, or who resigned under Sec. 11.11(d) must comply with the
provisions of this section and Sec. Sec. 11.12 and 11.60 to be
reinstated. Willful failure to comply with the provisions of this
section constitutes grounds for denying a suspended or excluded
practitioner's application for reinstatement or readmission. Willful
failure to comply with the provisions of this section constitutes cause
not only for denial of reinstatement, but also cause for further
action, including seeking further exclusion, suspension, and for
revocation of any pending probation.
(b) Unless otherwise ordered by the USPTO Director, any
practitioner who is suspended or excluded from practice before the
Office under Sec. Sec. 11.24, 11.25, 11.55, or 11.56, who has been
excluded on consent under provisions of Sec. 11.27, or whose notice of
resignation has been accepted under Sec. 11.11(d) shall:
(1) Within 20 days after the date of entry of the order of
suspension, exclusion, or exclusion by consent, or of acceptance of
resignation:
(i) File a notice of withdrawal as of the effective date of the
suspension, exclusion, or exclusion by consent, or acceptance of
resignation in each pending patent and trademark application, each
pending reexamination and interference proceeding, and every other
matter pending in the Office, together with a copy of the notices sent
pursuant to paragraphs (b) and (c) of this section;
(ii) Provide notice to all bars of which the practitioner is a
member and all clients on retainer having immediate or prospective
business before the Office in patent, trademark and other non-patent
matters, all clients the practitioner represents before the Office, and
all clients having immediate or prospective business before the Office
in patent, trademark and other non-patent matters of the order of
suspension, exclusion, exclusion by consent, or resignation and of the
practitioner's consequent inability to act as a practitioner after the
effective date of the order; and that, if not represented by another
practitioner, the
[[Page 69545]]
client should act promptly to substitute another practitioner, or to
seek legal advice elsewhere, calling attention to any urgency arising
from the circumstances of the case;
(iii) Provide notice to the practitioner(s) for all opposing
parties (or, to the parties in the absence of a practitioner
representing the parties) in matters pending before the Office that the
practitioner has been excluded or suspended and, as a consequence, is
disqualified from acting as a practitioner regarding matters before the
Office after the effective date of the suspension, exclusion, exclusion
by consent, or resignation, and state in the notice the mailing address
of each client of the excluded or suspended attorney who is a party in
the pending reexamination or interference matter;
(iv) Deliver to all clients having immediate or prospective
business before the Office in patent, trademark or other non-patent
matters any papers or other property to which the clients are entitled,
or shall notify the clients and any co-practitioner of a suitable time
when and place where the papers and other property may be obtained,
calling attention to any urgency for obtaining the papers or other
property;
(v) Refund any part of any fees paid in advance that has not been
earned,
(vi) Close every client account, trust account, deposit account in
the Office, or other fiduciary account to the extent the accounts have
fees for practice before the Office, and properly disburse or otherwise
transfer all client and fiduciary funds for practice before the Office
in his or her possession, custody or control; and
(vii) Take any necessary and appropriate steps to remove from any
telephone, legal, or other directory any advertisement, statement, or
representation which would reasonably suggest that the practitioner is
authorized to practice patent, trademark, or other non-patent law
before the Office.
(viii) All notices required by paragraphs (b)(1)(i) through
(b)(1)(vii) of this section shall be served by certified mail, return
receipt requested, unless mailed abroad. If mailed abroad, all notices
shall be served with a receipt to be signed and returned to the
practitioner.
(2) Within 30 days after entry of the order of suspension,
exclusion, or exclusion by consent, or of acceptance of resignation the
practitioner shall file with the OED Director an affidavit certifying
that the practitioner has fully complied with the provisions of the
order, and with the imperative USPTO Rules of Professional Conduct.
Appended to the affidavit of compliance shall be:
(i) A copy of each form of notice, the names and addressees of the
clients, practitioners, courts, and agencies to which notices were
sent, and all return receipts or returned mail received up to the date
of the affidavit. Supplemental affidavits shall be filed covering
subsequent return receipts and returned mail. Such names and addresses
of clients shall remain confidential unless otherwise ordered by the
USPTO Director;
(ii) A schedule showing the location, title and account number of
every bank account designated as a client, trust, deposit account in
the Office, or other fiduciary account, and of every account in which
the practitioner holds or held as of the entry date of the order any
client, trust, or fiduciary funds regarding practice before the Office;
(iii) A schedule describing the practitioner's disposition of all
client and fiduciary funds in the practitioner's possession, custody or
control as of the date of the order or thereafter;
(iv) Such proof of the proper distribution of said funds and the
closing of such accounts as has been requested by the OED Director,
including copies of checks and other instruments;
(v) A list of all other State, Federal, and administrative
jurisdictions to which the practitioner is admitted to practice; and
(vi) An affidavit describing the precise nature of the steps taken
to remove from any telephone, legal, or other directory any
advertisement, statement, or representation which would reasonably
suggest that the practitioner is authorized to practice patent,
trademark, or other non-patent law before the Office. The affidavit
shall also state the residence or other address of the practitioner to
which communications may thereafter be directed, and list all State and
Federal jurisdictions, and administrative agencies to which the
practitioner is admitted to practice. The OED Director may require such
additional proof as is deemed necessary. In addition, for five years
following the effective date of the suspension, exclusion, exclusion by
consent, a suspended, excluded, or excluded-on-consent practitioner
shall continue to file a statement in accordance with Sec. 11.11(a),
regarding any change of residence or other address to which
communications may thereafter be directed, so that the suspended,
excluded, or excluded-on-consent practitioner may be located if a
complaint is made about any conduct occurring before or after the
exclusion or suspension. The practitioner shall retain copies of all
notices sent and shall maintain complete records of the steps taken to
comply with the notice requirements.
(3) Not hold himself or herself out as authorized to practice law
before the Office.
(4) Not advertise the practitioner's availability or ability to
perform or render legal services for any person having immediate or
prospective business before the Office.
(5) Not render legal advice or services to any person having
immediate or prospective business before the Office as to that
business.
(6) Promptly take steps to change any sign identifying a
practitioner's or the practitioner's firm's office and practitioner's
or the practitioner's firm's stationery to delete therefrom any
advertisement, statement, or representation which would reasonably
suggest that the practitioner is authorized to practice law before the
Office.
(c) Effective date of discipline. Except as provided in Sec. Sec.
11.24, 11.25, and 11.28, an order of suspension, exclusion, or
exclusion by consent shall be effective immediately upon entry unless
the USPTO Director directs otherwise. The practitioner who is
suspended, excluded, excluded-on-consent, or who has resigned, after
entry of the order, shall not accept any new retainer regarding
immediate, pending, or prospective business before the Office, or
engage as a practitioner for another in any new case or legal matter
regarding practice before the Office. The order shall grant limited
recognition for a period of 30 days. During the 30-day period of
limited recognition, the practitioner shall conclude other work on
behalf of a client on any matters that were pending before the Office
on the date of entry. If such work cannot be concluded, the
practitioner shall so advise the client so that the client may make
other arrangements.
(d) Required records. A practitioner who is suspended, excluded or
excluded-on-consent, or who has resigned, other than a practitioner
suspended under Sec. Sec. 11.28 (c) or (d), shall keep and maintain
records of the various steps taken under this section, so that in any
subsequent proceeding proof of compliance with this section and with
the exclusion or suspension order will be available. The OED Director
will require the practitioner to submit such proof as a condition
precedent to the granting of any petition for reinstatement. In the
case of a practitioner suspended under Sec. Sec. 11.28 (c) or (d), the
USPTO Director shall
[[Page 69546]]
enter such order as may be required to compile and maintain all
necessary records.
(e) A practitioner who is suspended, excluded, or excluded-on-
consent, or who has resigned, and who aids another practitioner in any
way in the other practitioner's practice of law before the Office, may,
under the direct supervision of the other practitioner, act as a
paralegal for the other practitioner or perform other services for the
other practitioner which are normally performed by laypersons,
provided:
(1) The practitioner who is suspended, excluded or excluded on
consent, or who has resigned is:
(i) A salaried employee of:
(A) The other practitioner;
(B) The other practitioner's law firm; or
(C) A client-employer who employs the other practitioner as a
salaried employee;
(2) The other practitioner assumes full professional responsibility
to any client and the Office for any work performed by the practitioner
who is suspended, excluded, or excluded-on-consent, or who has resigned
for the other practitioner;
(3) The practitioner who is suspended, excluded, or excluded-on-
consent, or who has resigned does not:
(i) Communicate directly in writing, orally, or otherwise with a
client of the other practitioner in regard to any immediate,
prospective, or pending business before the Office;
(ii) Render any legal advice or any legal services to a client of
the other practitioner in regard to any immediate, prospective, or
pending business before the Office; or
(iii) Meet in person or in the presence of the other practitioner
in regard to any immediate, prospective, or pending business before the
Office, with:
(A) Any Office official in connection with the prosecution of any
patent, trademark, or other case;
(B) Any client of the other practitioner, the other practitioner's
law firm, or the client-employer of the other practitioner; or
(C) Any witness or potential witness which the other practitioner,
the other practitioner's law firm, or the other practitioner's client-
employer may or intends to call as a witness in any proceeding before
the Office. The term ``witness'' includes individuals who will testify
orally in a proceeding before, or sign an affidavit or any other
document to be filed in, the Office.
(f) When a practitioner who is suspended, excluded, or excluded-on-
consent, or who has resigned, acts as a paralegal or performs services
under paragraph (c) of this section, the practitioner shall not
thereafter be reinstated to practice before the Office unless:
(1) The practitioner shall have filed with the OED Director an
affidavit which:
(i) Explains in detail the precise nature of all paralegal or other
services performed by the practitioner, and
(ii) Shows by clear and convincing evidence that the practitioner
has complied with the provisions of this section and all imperative
USPTO Rules of Professional Conduct; and
(2) The other practitioner shall have filed with the OED Director a
written statement which
(i) Shows that the other practitioner has read the affidavit
required by paragraph (d)(1) of this section and that the other
practitioner believes every statement in the affidavit to be true, and
(ii) States why the other practitioner believes that the
practitioner who is suspended, excluded, or excluded-on-consent, or who
has resigned has complied with paragraph (c) of this section.
Sec. 11.59 Notice of suspension or exclusion.
(a) Upon issuance of an order reprimanding a practitioner or
suspending, excluding, or excluding on consent a practitioner from
practice before the Office, the OED Director shall give notice of the
final decision to appropriate employees of the Office, to interested
departments, agencies, and courts of the United States, and to the
National Discipline Data Bank maintained by the American Bar
Association Standing Committee on Professional Discipline. The OED
Director shall also give notice to appropriate authorities of any State
in which a practitioner is known to be a member of the bar and any
appropriate bar association.
(b) Publication of notices, orders, and decisions. The OED Director
shall cause to be published in the Official Gazette the name of every
practitioner who is suspended, excluded, or excluded-on-consent, who
resigns from practice, and who is transferred to disability inactive
status. The order suspending, excluding, or excluding by consent a
practitioner, or accepting resignation, and the decision by the USPTO
Director, including an initial decision of a hearing officer under
Sec. 11.54(a) that becomes the decision of the USPTO Director,
suspending or excluding a practitioner shall be published. Unless
otherwise ordered by the USPTO Director, the OED Director shall publish
in the Official Gazette the name of any practitioner reprimanded by the
USPTO Director, as well as the order and any decision by the USPTO
Director, including an initial decision of a hearing officer under
Sec. 11.54(a) that becomes the decision of the USPTO Director,
reprimanding the practitioner.
(c) Records available to the public. Consistent with a retention
schedule set for disciplinary records, the OED Director shall maintain
records that shall be available for public inspection of every
disciplinary proceeding where practitioner is reprimanded, suspended,
or excluded, excluded-on-consent, or who resigns while under
investigation, unless the USPTO Director orders that the proceeding or
a portion of the record be kept confidential. The record of a
proceeding that results in a practitioner being transferred to
disability inactive status will not be available to the public.
(d) Access to records of exclusion by consent. The order excluding
a practitioner on consent under Sec. 11.27 shall be a matter of public
record. However, the affidavit required under paragraph (a) of Sec.
11.27 shall not be publicly disclosed or made available for use in any
other proceeding except by order of the USPTO Director or upon written
consent of the practitioner.
Sec. 11.60 Petition for reinstatement.
(a) Restrictions on reinstatement. A practitioner who is suspended,
excluded, or excluded on consent is required to furnish proof of
rehabilitation under paragraph (d) of this section, and shall not
resume practice of patent, trademark, or other non-patent law before
the Office until reinstated by order of the OED Director or the USPTO
Director.
(b) Reinstatement of practitioners transferred to disability
inactive status. A practitioner who has been transferred to disability
inactive status under Sec. 11.28 may move for reinstatement in
accordance with that section, but reinstatement shall not be ordered
except on a showing by clear and convincing evidence that the
disability has ended, that the practitioner has complied with Sec.
11.12, and that the practitioner is fit to resume the practice of law.
(c) Petition for reinstatement of practitioners excluded or
suspended on other grounds. A suspended or excluded practitioner shall
be eligible to apply for reinstatement only upon expiration of the
period of suspension or exclusion and the practitioner's full
compliance with Sec. 11.58. A practitioner who is excluded or excluded
on consent shall be eligible to apply for reinstatement no earlier than
at least five years from the effective date of the exclusion.
[[Page 69547]]
(d) Review of reinstatement petition. A practitioner suspended,
excluded, or excluded-on-consent shall file a petition for
reinstatement accompanied by the fee required by Sec. 1.21(a)(10) of
this subchapter. The petition for reinstatement by a practitioner
suspended, excluded, or excluded-on-consent for misconduct, must
provide proof of rehabilitation and compliance with the provisions of
Sec. 11.11(d)(2), and it shall be filed with the OED Director. A
suspended or excluded practitioner who has violated any provision of
Sec. 11.58 shall not be eligible for reinstatement until a continuous
period of the time in compliance with Sec. 11.58 that is equal to the
period of suspension or exclusion has elapsed. If the suspended,
excluded, or excluded-on-consent practitioner is not eligible for
reinstatement, or if the OED Director determines that the petition is
insufficient or defective on its face, the OED Director may dismiss the
petition. Otherwise the OED Director shall consider the petition for
reinstatement. The suspended, excluded, or excluded-on-consent
practitioner seeking reinstatement shall have the burden of proof by
clear and convincing evidence. Such proof shall be included in or
accompany the petition, and shall establish:
(1) That the practitioner has the moral character qualifications,
competency, and learning in law required under Sec. 11.7 for
admission;
(2) That the resumption of practice before the Office will not be
detrimental to the administration of justice, or subversive to the
public interest; and
(3) That the suspended practitioner has complied with the
provisions of Sec. 11.58 for the full period of suspension, or that
the excluded or excluded-on-consent practitioner has complied with the
provisions of Sec. 11.58 for at least five continuous years.
(e) Petitions for reinstatement--Action by the OED Director
granting reinstatement. (1) If the petitioner is found fit to resume
the practice before the Office, the OED Director shall enter an order
of reinstatement, which may be conditioned upon the making of partial
or complete restitution to persons harmed by the misconduct which led
to the suspension or exclusion, or upon the payment of all or part of
the costs of the disciplinary proceedings, the reinstatement
proceedings, or any combination thereof.
(2) Payment of costs of disciplinary or reinstatement proceedings.
Upon petitioning for reinstatement, the practitioner shall pay the
costs of the disciplinary proceeding, and costs for the reinstatement
proceeding. The costs imposed pursuant to this section include all of
the following:
(i) The actual expense incurred by the OED Director or the Office
for the original and copies of any reporter's transcripts of the
disciplinary proceedings or reinstatement proceedings, and any fee paid
for the services of the reporter;
(ii) All expenses paid by the OED Director or the Office which
would qualify as taxable costs recoverable in civil proceedings; and
(iii) The charges determined by the OED Director to be ``reasonable
costs'' of investigation, hearing, and review. These amounts shall
serve to defray the costs, other than fees for services of attorneys
and experts, of the Office of Enrollment and Discipline in the
preparation or hearing of disciplinary proceeding or reinstatement
proceeding, and costs incurred in the administrative processing of the
disciplinary proceeding or reinstatement proceeding.
(3) A suspended, excluded, or excluded-on-consent practitioner may
be granted relief, in whole or in part, only from an order assessing
costs under this section, or may be granted an extension of time to pay
these costs, in the discretion of the OED Director, upon grounds of
hardship, special circumstances, or other good cause.
(f) Petitions for reinstatement--Action by the OED Director denying
reinstatement. If the petitioner is found unfit to resume the practice
of patent law before the Office, the OED Director shall first provide
the suspended, excluded, or excluded-on-consent practitioner with an
opportunity to show cause in writing why the petition should not be
denied. Failure to comply with Sec. 11.12(d)(2) shall constitute
unfitness. If unpersuaded by the showing, the OED Director shall deny
the petition. The OED Director may require the suspended, excluded, or
excluded-on-consent practitioner, in meeting the requirements of Sec.
11.7, to take and pass an examination under Sec. 11.7(b), ethics
courses, and/or the Multistate Professional Responsibility Examination.
The OED Director shall provide findings, together with the record. The
findings shall include on the first page, immediately beneath the
caption of the case, a separate section entitled ``Prior Proceedings''
which shall state the docket number of the original disciplinary
proceeding in which the suspension, exclusion, or exclusion by consent
was ordered.
(g) Resubmission of petitions for reinstatement. If a petition for
reinstatement is denied, no further petition for reinstatement may be
filed until the expiration of at least one year following the denial
unless the order of denial provides otherwise.
(h) Reinstatement proceedings open to public. Proceedings on any
petition for reinstatement shall be open to the public. Before
reinstating any suspended, excluded, or excluded-on-consent
practitioner, the OED Director shall publish in the Official Gazette a
notice of the suspended, excluded, or excluded-on-consent
practitioner's petition for reinstatement and shall permit the public a
reasonable opportunity to comment or submit evidence with respect to
the petition for reinstatement.
Sec. 11.61 Savings clause.
(a) A disciplinary proceeding based on conduct engaged in prior to
the effective date of these regulations may be instituted subsequent to
such effective date, if such conduct would continue to justify
suspension or exclusion under the provisions of this Part.
(b) No practitioner shall be subject to a disciplinary proceeding
under this Part based on conduct engaged in before the effective date
hereof if such conduct would not have been subject to disciplinary
action before such effective date.
Sec. 11.62 Protection of clients interests when practitioner becomes
unavailable.
If a practitioner dies, disappears, or is suspended or transferred
to inactive status for incapacity or disability, and there is no
partner, associate, or other responsible practitioner capable of
conducting the practitioner's affairs, a court of competent
jurisdiction may appoint a registered practitioner to make appropriate
disposition of any patent application files. All other matters should
be handled in accordance with the laws of the local jurisdiction.
Subpart D--USPTO Rules of Professional Conduct
Sec. 11.100 Interpretation of the USPTO Rules of Professional
Conduct.
(a) Rules in Sec. Sec. 11.101 through 11.806 that are imperatives
are cast in the terms ``shall'' or ``shall not.'' These define proper
conduct for purposes of professional discipline.
(b) Rules in Sec. Sec. 11.101 through 11.806 that are permissive
are cast in the term ``may.'' These define areas under the Rules in
which the practitioner has professional discretion. No disciplinary
action should be taken when the practitioner chooses not to act or acts
within the bounds of such discretion.
(c) Other rules in Sec. Sec. 11.101 through 11.806 defining the
nature of relationships between the practitioner
[[Page 69548]]
and others, are thus partly obligatory and disciplinary and partly
constitutive and descriptive in that they define a practitioner's
professional role.
Client-Practitioner Relationship
Sec. 11.101 Competence.
(a) A practitioner shall provide competent representation to a
client having immediate or prospective business before the Office.
Competent representation requires the legal knowledge, skill,
thoroughness and preparation reasonably necessary for the
representation.
(b) A practitioner shall serve a client having immediate or
prospective business before the Office with skill and care commensurate
with that generally afforded to clients by other practitioners in
similar matters.
(c) Conduct that constitutes a violation of paragraphs (a) or (b)
of this section includes, but is not limited to:
(1) A practitioner handling a legal matter which the practitioner
knows or should know that the practitioner, due to legal or scientific
training, is not competent to handle, without associating with the
practitioner, another practitioner, who is competent to handle the
matter;
(2) A practitioner withholding from the Office information
identifying a patent or patent application of another from which one or
more claims have been copied. See Sec. Sec. 1.604(b) and 1.607(c) of
this subchapter;
(3) A practitioner employs one or more procedures that the Office
no longer authorizes practitioners to use to present or prosecute a
patent application; and
(4) A practitioner filing and/or prosecuting, or assisting in the
filing and/or prosecuting an application claiming a frivolous
invention; or submitting or assisting in the submission to the Office
of a frivolous filing. An application claims a frivolous invention or a
filing is frivolous where the claim of patentability or argument is
known or should have been known by a reasonably prudent registered
practitioner to be unwarranted under existing law, and said claim or
argument cannot be supported by good faith argument for an extension,
modification, or reversal of existing law.
Sec. 11.102 Scope of representation.
(a) A practitioner shall abide by a client's decisions concerning
the objectives of representation in practice before the Office, subject
to paragraphs (c), (d), (e), and (g) of this section, and shall consult
with the client as to the means by which they are to be pursued. A
practitioner shall abide by a client's decision whether to accept an
offer of settlement of a matter.
(b) A practitioner's representation of a client having immediate or
prospective business before the Office does not constitute an
endorsement of the client's political, economic, social, or moral views
or activities.
(c) A practitioner may limit the objectives of the representation
if the client having immediate or prospective business before the
Office consents in writing after full disclosure by the practitioner.
(d) When a practitioner knows that a client having immediate or
prospective business before the Office expects assistance not permitted
by the Rules of Professional Conduct or other law, including
perpetrating a fraud, disregarding any provision of this Part, or
disregarding a decision of the Office made in the course of a
proceeding before the Office, the practitioner shall both consult with
the client regarding the relevant limitations on the practitioner's
conduct, and advise the client of the legal consequences of any
proposed course of action.
(e) A practitioner shall not counsel a client having immediate or
prospective business before the Office to engage, or assist said
client, in conduct that the practitioner knows is criminal or
fraudulent, but a practitioner may discuss the legal consequences of
any proposed course of conduct with the client and may counsel or
assist the client to make a good-faith effort to determine the
validity, scope, meaning, or application of the law.
(f) The authority and control of a practitioner, employed by the
Federal Government, over decisions concerning the representation may,
by statute or regulation, be expanded beyond the limits imposed by
paragraphs (a) and (c) of this section.
(g) A practitioner receiving information clearly establishing that
the client has, in the course of the representation, perpetrated a
fraud upon a person or tribunal in connection with practice before the
Office shall promptly call upon the client to rectify the same, and if
the client refuses or is unable to do so the practitioner shall reveal
the fraud to the affected person or tribunal, except where the
information is protected as a privileged communication.
Sec. 11.103 Diligence and zeal.
(a) A practitioner shall represent a client having immediate or
prospective business before the Office zealously and diligently within
the bounds of the law.
(b) A practitioner shall act with reasonable promptness in
representing a client having immediate or prospective business before
the Office.
(c) Conduct that constitutes a violation of paragraphs (a) or (b)
of this section includes, but is not limited to, a practitioner:
(1) Neglecting an entrusted legal matter;
(2) Intentionally failing to seek the lawful objectives of a client
through reasonably available means permitted by law and the imperative
USPTO Rules of Professional Conduct; or
(3) Intentionally prejudicing or damaging a client during the
course of the professional relationship.
Sec. 11.104 Communication.
(a) A practitioner shall keep a client having immediate or
prospective business before the Office reasonably informed about the
status of a matter, and promptly comply with reasonable requests for
information. In particular:
(1) A practitioner who has been engaged to represent or counsel an
inventor as a result of a referral from an invention promoter shall
communicate directly with the inventor, and promptly report each Office
action and communicate directly with the inventor; and
(2) A practitioner who has been engaged to represent or counsel an
inventor or other client having immediate, prospective, or pending
business before the Office as a result of a referral by a foreign
attorney or foreign patent agent located in a foreign country may, with
the written and informed consent of said inventor or other client,
conduct said communications with the inventor or other client through
said foreign attorney or foreign patent agent.
(b) A practitioner shall explain a matter to the extent reasonably
necessary to permit the client having immediate or prospective business
before the Office to enable the client to make informed decisions
regarding the representation.
(c) A practitioner who receives an offer of settlement in an inter
partes matter before the Office shall inform the client promptly of the
substance of the communication.
(d) Conduct that constitutes a violation of paragraph (a) of this
section includes, but is not limited to:
(1) Failing to inform a client or former client or failing to
timely notify the Office of an inability to notify a client or former
client of correspondence received from the Office or the client's or
former client's opponent in an inter partes proceeding before the
Office when the correspondence:
(i) Could have a significant effect on a matter pending before the
Office;
[[Page 69549]]
(ii) Is received by the practitioner on behalf of a client or
former client, and
(iii) Is correspondence of which a reasonable practitioner would
believe under the circumstances the client or former client should be
notified.
(2) [Reserved]
Sec. 11.105 Fees.
(a) A practitioner's fee shall be reasonable. The factors to be
considered in determining the reasonableness of a fee include the
following:
(1) The time and labor required, the novelty and difficulty of the
questions involved, and the skill requisite to perform the legal
service properly;
(2) The likelihood, if apparent to the client, that the acceptance
of the particular employment will preclude other employment by the
practitioner;
(3) The fee customarily charged in the locality for similar legal
services;
(4) The amount involved and the results obtained;
(5) The time limitations imposed by the client or by the
circumstances;
(6) The nature and length of the professional relationship with the
client;
(7) The experience, reputation, and ability of the practitioner or
practitioners performing the service; and
(8) Whether the fee is fixed or contingent.
(b) When the practitioner has not regularly represented the client
having immediate or prospective business before the Office, the basis
or rate of the fee shall be communicated directly to the client, in
writing, before or within a reasonable time after commencing the
representation. The communication shall distinguish between and specify
the basis or rate for preparation and filing an application in the
Office, and for prosecution of the application (including replies to
Office actions, petitions, affidavits, appeal briefs, and the like).
(c) A fee in regard to practice before the Office may be contingent
on the outcome of the matter for which the service is rendered, except
in a matter in which a contingent fee is prohibited by paragraph (d) of
this section or other law. In accordance with paragraph (a) of this
section, a contingent fee shall be reasonable. A contingent fee
agreement shall be in writing and shall state the method by which the
fee is to be determined, including the percentage or percentages that
shall accrue to the practitioner in the event of grant of a patent,
registration of a mark, settlement, hearing or appeal, litigation, and
other expenses to be deducted from the recovery, and whether such
expenses are to be deducted before or after the contingent fee is
calculated. Upon conclusion of a contingent fee matter, the
practitioner shall provide the client with a written statement stating
the outcome of the matter and, if there is a recovery, showing the
remittance to the client and the method of its determination.
(d) A division of a fee between practitioners who are not in the
same firm may be made in regard to practice before the Office only if:
(1) The division is in proportion to the services performed by each
practitioner or by written agreement with the client, each practitioner
assumes joint responsibility for the representation;
(2) The client is advised, in writing, of the identity of the
practitioners who will participate in the representation, of the
contemplated division of responsibility, and of the effect of the
association of practitioners outside the firm on the fee to be charged;
(3) The client gives informed consent in writing to the
arrangement; and
(4) The total fee is reasonable.
(e) Any fee that is prohibited by law is per se unreasonable.
Sec. 11.106 Confidentiality of information.
(a) A practitioner, in regard to practice before the Office, shall
not:
(1) Reveal information relating to representation of a client
unless the client gives informed consent in writing after full
disclosure by the practitioner, except for disclosures that are
impliedly authorized in order to carry out the representation, and
except as stated in paragraphs (b), (c), or (d) of this section;
(2) Knowingly use information relating to representation of a
client to the disadvantage of the client; or
(3) Use a confidence or secret of the practitioner's client for the
advantage of the practitioner or of a third person.
(b) A practitioner, in regard to practice before the Office, may
reveal such information to the extent the practitioner reasonably
believes necessary:
(1) To prevent the client from committing a criminal act that the
practitioner believes is likely to result in imminent death or
substantial bodily harm; or
(2) To establish a claim or defense on behalf of the practitioner
in a controversy between the practitioner and the client, to establish
a defense to a criminal charge or civil claim against the practitioner
based upon conduct in which the client was involved, or to respond to
allegations in any proceeding concerning the practitioner's
representation of a client.
(c) A practitioner, in regard to practice before the Office, shall
use or reveal information relating to representation of a client to
comply with the provisions of Sec. 1.56 of this subchapter in practice
before the Office in patent matters (see 11.303(d));
(d) A practitioner, in regard to practice before the Office may use
or reveal information relating to representation of a client to comply:
(1) With the informed consent in writing of the client affected,
but only after full disclosure by the practitioner to the client;
(2) With rules, law or court order when permitted by these rules or
required by law or court order; or
(3) With the law or regulations of the Office, when permitted or
authorized by the law or regulations, in connection with representation
before the Office, whether or not the practitioner is employed by the
Federal Government.
(e) The client of practitioner employed by the Federal Government
is the Department, agency, or commission that employs the practitioner
unless appropriate law, regulation, or order expressly provides to the
contrary.
(f) A practitioner shall exercise reasonable care to prevent the
practitioner's employees, associates, and others whose services are
utilized by the practitioner from disclosing or using such information
of a client, except that such persons may reveal information permitted
to be disclosed by paragraphs (c), (d), or (e) of this section.
(g) The practitioner's obligation to preserve in confidence such
information continues after termination of the practitioner's
employment, except as provided for in Sec. 1.56.
(h) The obligation of a practitioner under paragraph (a) of this
section also applies to such information learned prior to becoming a
practitioner in the course of providing assistance to another
practitioner.
Sec. 11.107 Conflict of interest: General rule.
(a) A practitioner shall not represent a client having immediate or
prospective business before the Office if the representation of that
client will be directly adverse to another client having immediate or
prospective business before the Office, unless:
(1) The practitioner reasonably believes the representation will
not adversely affect the relationship with the other client; and
(2) Each client gives informed consent in writing after full
disclosure by the practitioner. When a practitioner has both an
inventor and an invention promoter, who referred the inventor to
[[Page 69550]]
the practitioner, as clients the disclosure and consent shall be in
writing.
(b) A practitioner shall not represent a client if the
representation of that client may be materially limited by the
practitioner's responsibilities to another client or to a third party,
or by the practitioner's own interests, where any of the clients or
third party have immediate or prospective business before the Office,
unless:
(1) The practitioner reasonably believes the representation will
not be adversely affected; and
(2) The client gives informed consent in writing after full
disclosure, including implications of the common representation and the
advantages and risks involved, by the practitioner.
(c) The requirements of paragraph (b) of this section apply when
the third party is an invention promoter, or the practitioner's
interests involve receiving payment from an invention promoter.
Sec. 11.108 Conflict of interest: Prohibited transactions.
(a) A practitioner shall not enter into a business transaction with
a client having immediate or prospective business before the Office, or
knowingly acquire an ownership, possessory, security, or other
pecuniary interest adverse to a client having immediate or prospective
business before the Office unless:
(1) The transaction and terms on which the practitioner acquires
the interest are fair and reasonable to the client, and are fully
disclosed and transmitted in writing by the practitioner to the client
in a manner which can be reasonably understood by the client;
(2) The client is advised to and given a reasonable opportunity by
the practitioner to seek the advice of independent counsel in the
transaction; and
(3) The client gives informed consent in writing thereto after full
disclosure by the practitioner.
(b) A practitioner shall not use information relating to
representation of a client having immediate or prospective business
before the Office to the disadvantage of the client unless the client
gives informed consent in writing after full disclosure by the
practitioner, except as permitted or required by Sec. Sec. 11.106 or
11.303.
(c) A practitioner shall not prepare an instrument giving the
practitioner or a person related to the practitioner as parent, child,
sibling, or spouse any substantial gift from a client having immediate
or prospective business before the Office, including a testamentary
gift, except where the client is related to the donee.
(d) Prior to the conclusion of representation of a client having
immediate or prospective business before the Office, a practitioner
shall not make or negotiate an agreement giving the practitioner
literary or media rights to a portrayal or account based in substantial
part on information relating to the representation.
(e) A practitioner shall not provide financial assistance to a
client in connection with pending or contemplated litigation or
proceeding before the Office, except that:
(1) A practitioner may advance court costs and expenses of
litigation, or a proceeding before the Office, the repayment of which
may be contingent on the outcome of the matter;
(2) A practitioner representing an indigent client may pay court or
Office costs and expenses of litigation or proceeding before the Office
on behalf of the client; and
(3) A practitioner may advance or guarantee the expenses of going
forward in a proceeding before the Office including fees required by
law to be paid to the Office in connection with the prosecution of the
matter, expenses of investigation, expenses of medical examination, and
costs of obtaining and presenting evidence, provided the client remains
ultimately liable for such expenses. A practitioner may, however,
advance any fee required to prevent or remedy an abandonment of a
client's application by reason of an act or omission attributable to
the practitioner and not to the client, whether or not the client is
ultimately liable for such fee.
(f) A practitioner shall not accept compensation for representing a
client having immediate or prospective business before the Office from
one other than the client unless:
(1) The client gives informed consent, confirmed in writing, after
full disclosure by the practitioner;
(2) There is no actual or potential interference with the
practitioner's independence of professional judgment or with the
attorney-client or agent-client relationship; and
(3) Information relating to representation of a client is protected
as required by Sec. 11.106.
(g) A practitioner who represents two or more clients having
immediate or prospective business before the Office shall not
participate in making an aggregate settlement of the claims of or
against the clients, unless each client gives informed consent,
confirmed in writing, after full disclosure by the practitioner,
including disclosure of the existence and nature of all the claims or
pleas involved and of the participation of each person in the
settlement.
(h) A practitioner, in regard to practice before the Office, shall
not:
(1) Make an agreement prospectively limiting the practitioner's
liability to a client or former client for malpractice unless permitted
by law and the client is independently represented in making the
agreement; or
(2) Settle a claim for such liability with an unrepresented client
or former client without first advising that person in writing that
independent representation is appropriate in connection therewith.
(i) A practitioner related to another practitioner as parent,
child, sibling, or spouse shall not represent a client having immediate
or prospective business before the Office in a representation directly
adverse to a person who the practitioner knows is represented by the
other practitioner except upon informed consent by the client,
confirmed in writing, after full disclosure by the practitioner
regarding the relationship.
(j) A practitioner shall not acquire a proprietary interest in
papers received from a client having immediate or prospective business
before the Office, or in a proceeding before the Office that the
practitioner is conducting for a client, except that the practitioner
may:
(1) Acquire a lien granted by law to secure the practitioner's fee
or expenses except as provided in Sec. 11.116(d); and
(2) Contract with a client for a reasonable contingent fee in a
civil case or proceeding before the Office; or
(3) In a patent case, after complying with the provisions of
paragraph (a) of this section, and, in the case of a practitioner who
is or has been an officer or employee of the Office, only at such time
and insofar as is permitted by 35 U.S.C. 4, take an interest in a
patent or in the proceeds from a patent as part or all of his or her
fee. However, the fee obtained by said interest may not exceed an
amount that is reasonable. See Sec. 11.105(a).
(k) If an invention promoter provides the practitioner with access
to an inventor-client whom the practitioner undertakes to represent
before the Office, the practitioner shall not accept or continue
representation of the inventor-client without providing full disclosure
of all conflicts in writing to the inventor-client where:
(1) The practitioner has a legal, business, financial,
professional, or personal relationship with a company in the same
matter; or
(2) The practitioner has or had a legal, business, financial,
professional, or personal relationship with another
[[Page 69551]]
person the practitioner knows or reasonably should know would be
affected substantially by the representation or lack of representation
of the inventor-client.
Sec. 11.109 Conflict of interest: Former client.
(a) A practitioner who, in practice before the Office, has formerly
represented a client shall not thereafter represent another person in
the same or a substantially related matter in which that person's
interests are materially adverse to the interests of the former client
unless the former client gives informed consent, confirmed in writing,
after consultation.
(b) A practitioner, in regard to practice before the Office, shall
not knowingly represent a person in the same or substantially related
matter in which a firm or a member of the firm, with which the
practitioner formerly was associated, had previously represented a
client,
(1) Whose interests are materially adverse to that person; and
(2) About whom the practitioner has acquired information protected
by Sec. Sec. 11.106 and 11.109(c) that is material to the matter;
unless the former client gives informed consent, confirmed in writing,
after full disclosure by the practitioner;
(c) A practitioner who has formerly represented a client in a
matter before the Office, or whose present or former firm, or a
practitioner in the firm, has formerly represented a client in a matter
before the Office shall not thereafter:
(1) Use information relating to the representation to the
disadvantage of the former client except as Sec. Sec. 11.106 or 11.303
would permit or require with respect to a client, or when the
information has become generally known; or
(2) Reveal information relating to the representation except as
Sec. Sec. 11.106 or 11.303 would permit or require with respect to a
client.
Sec. 11.110 Imputed disqualification: General rule.
(a) While practitioners are associated in a firm, or are associated
on a continuing basis with an invention promoter, none of them shall
knowingly represent a client having immediate or prospective business
before the Office when any one of them practicing alone would be
prohibited from doing so by Sec. Sec. 11.107, 11.108(b), 11.109, or
11.202.
(b) In regard to practice before the Office, when a practitioner
has terminated an association with a firm, the firm is not prohibited
from thereafter representing a person with interests materially adverse
to those of a client represented by the formerly associated
practitioner, and not currently represented by the firm, unless:
(1) The matter is the same or substantially related to that in
which the formerly associated practitioner represented the client; and
(2) Any practitioner remaining in the firm has information
protected by Sec. Sec. 11.106 and 11.109(c) that is material to the
matter.
(c) A disqualification prescribed by this section may be waived by
the affected client under the conditions stated in Sec. 11.107.
Sec. 11.111 Successive Government and private employment.
(a) A practitioner shall not accept private employment in
connection with a matter that is the same as, or substantially related
to, a matter in which the practitioner participated personally and
substantially as an employee of the Office. Such participation
includes, but is not limited to, acting on the merits of a matter in an
administrative or adjudicative capacity.
(b) If a practitioner is required to decline or to withdraw from
employment under paragraph (a) of this section on account of personal
and substantial participation in a matter, no partner or associate of
that practitioner, or practitioner with an of counsel relationship to
that practitioner, may accept or continue such employment except as
provided in paragraph (c) of this section. The disqualification of such
other practitioners does not apply if the sole form of participation
was as a judicial or administrative law clerk, including a law clerk at
the Board of Patent Appeals and Interferences, or at the Trademark
Trial and Appeal Board.
(c) The prohibition stated in paragraph (b) of this section shall
not apply if the personally disqualified practitioner is screened from
any form of participation in the matter or representation as the case
may be, and from sharing in any fees resulting therefrom, and if the
requirements of paragraphs (d) and (e) of this section are satisfied.
(d) Except as law may otherwise expressly permit, a practitioner
having information that the practitioner knows is confidential
Government information about a person that was acquired when the
practitioner was an employee of the Office, may not represent a private
client whose interests are adverse to that person in a matter in which
the information could be used to the material disadvantage of that
person. A firm with which that practitioner is associated may undertake
or continue representation in the matter only if the disqualified
practitioner is screened from any participation in the matter and is
apportioned no part of the fee therefrom.
(e) Except as law may otherwise expressly permit, a practitioner
serving as an employee of the Office shall not:
(1) Participate in a matter in which the practitioner participated
personally and substantially while in private practice or
nongovernmental employment, unless under applicable law no one is, or
by lawful delegation may be, authorized to act in the practitioner's
stead in the matter; or
(2) Negotiate for private employment with any person who is
involved as a party or as practitioner for a party in a matter in which
the practitioner is participating personally or substantially, except:
(i) A practitioner serving as a law clerk to a judge,
administrative law judge, administrative patent judge, or
administrative trademark judge may negotiate for private employment as
permitted by Sec. 11.112(b) and subject to the conditions stated in
Sec. 11.112(b); and
(ii) A practitioner serving in the Office may negotiate for
employment with a party or practitioner involved in a matter in which
the practitioner is participating personally and substantially, but
only after the practitioner has notified his or her supervisor, and the
matter is withdrawn from the practitioner's scope of authority.
(f) A practitioner serving in the Office shall not in any manner
assist his or her former client, or another practitioner in the
presentation or prosecution of said former client's patent application
before the Office, including, but not limited to, providing assistance
regarding the presentation or amendment of the specification, claims,
or drawings, a translation of any foreign document, or provision of
funds.
(g) As used in this section, the terms matter, participated,
personally, and substantially are described in Sec. 11.10(b)(3).
(h) As used in this section, the term confidential Government
information means information that has been obtained under governmental
authority and which, at the time this section is applied, the
Government is prohibited by law from disclosing to the public or has a
legal privilege not to disclose, and which is not otherwise available
to the public.
(i) Conduct that constitutes a violation of paragraph (a) of this
section includes, but is not limited to:
(1) A practitioner preparing or prosecuting or providing assistance
in
[[Page 69552]]
the preparation or prosecution of a patent application in violation of
an undertaking signed under Sec. 11.10(b), or knowingly aiding in any
manner another practitioner in conduct violating an undertaking signed
by the other practitioner under Sec. 11.10(b).
Sec. 11.112 Former judge or arbitrator.
(a) Except as stated in paragraph (b) of this section, a
practitioner shall not represent anyone in connection with a matter
before the Office in which the practitioner participated personally and
substantially as an arbitrator, unless all parties to the proceeding
give informed consent, confirmed in writing, after disclosure by the
practitioner.
(b) A practitioner shall not negotiate for employment with any
person who is involved as a party or as practitioner for a party in a
matter in which the practitioner is participating personally and
substantially as a judge, administrative law judge, administrative
patent judge, administrative trademark judge, or other adjudicative
officer, or arbitrator. A practitioner serving as a law clerk to a
judge, administrative patent judge, administrative trademark judge,
other adjudicative officer or arbitrator may negotiate for employment
with a party or practitioner involved in a matter in which the clerk is
participating personally and substantially, but only after the
practitioner has notified the judge, other adjudicative officer or
arbitrator.
(c) If a practitioner is disqualified by paragraph (a) of this
section, no practitioner in a firm with which that practitioner is
associated may knowingly undertake or continue representation in the
matter unless:
(1) The disqualified practitioner is screened from any
participation in the matter and is apportioned no part of the fee
therefrom; and
(2) Written notice is promptly given to the appropriate tribunal to
enable it to ascertain compliance with the provisions of this section.
(d) An arbitrator selected as a partisan of a party in a
multimember arbitration panel is not prohibited from subsequently
representing that party.
Sec. 11.113 Organization as client.
(a) A practitioner employed or retained by an organization
represents the organization, which acts through its duly authorized
constituents.
(b) If a practitioner employed or retained by an organization
having immediate or prospective business before the Office knows that
an officer, employee or other person associated with the organization
is engaged in action, intends to act or refuses to act in a matter
related to the representation that is a violation of a legal obligation
to the organization, or a violation of law which reasonably might be
imputed to the organization, and is likely to result in substantial
injury to the organization, the practitioner shall proceed as is
reasonably necessary in the best interest of the organization. In
determining how to proceed, the practitioner shall give due
consideration to the seriousness of the violation and its consequences,
the scope and nature of the practitioner's representation, the
responsibility in the organization and the apparent motivation of the
person involved, the policies of the organization concerning such
matters and any other relevant considerations. Any measures taken shall
be designed to minimize disruption of the organization and the risk of
revealing information relating to the representation to persons outside
the organization. Such measures may include among others:
(1) Asking reconsideration of the matter;
(2) Advising that a separate legal opinion on the matter be sought
for presentation to appropriate authority in the organization; and
(3) Referring the matter to higher authority in the organization,
including, if warranted by the seriousness of the matter, referral to
the highest authority that can act in behalf of the organization as
determined by applicable law.
(c) If, despite the practitioner's efforts in accordance with
paragraph (b) of this section, the highest authority that can act on
behalf of the organization insists upon acting, or a refusal to act,
that is clearly a violation of law and is likely to result in
substantial injury to the organization, the practitioner may resign in
accordance with Sec. 11.116.
(d) In dealing with an organization's directors, officers,
employees, members, shareholders, or other constituents, a practitioner
shall explain the identity of the client when it is apparent that the
organization's interests may be adverse to those of the constituents
with whom the practitioner is dealing.
(e) A practitioner representing an organization may also represent
any of its directors, officers, employees, members, shareholders, or
other constituents, subject to the provisions of Sec. 11.107. If the
organization's consent to the dual representation is required by Sec.
11.107, the consent shall be confirmed in writing by an appropriate
official of the organization other than the individual who is to be
represented, or by the shareholders.
Sec. 11.114 Client under a disability.
(a) When the ability of a client who has immediate or prospective
business before the Office, to make adequately considered decisions in
connection with the representation is impaired, whether because of
minority, mental disability, or for some other reason, the practitioner
shall, as far as reasonably possible, maintain a normal attorney-client
or agent-client relationship with the client.
(b) A practitioner may seek the appointment of a guardian or take
other protective action with respect to a client having immediate or
prospective business before the Office, only when the practitioner
reasonably believes that the client cannot adequately act in the
client's own interest.
Sec. 11.115 Safekeeping property.
(a) All funds received or held by a practitioner or law firm on
behalf of a client having immediate or prospective business before the
Office, other than reimbursement of advances for costs and expenses,
shall be deposited in one or more identifiable escrow accounts
maintained at a financial institution in the State, authorized by
Federal or State law to do business in the jurisdiction where the
practitioner or law firm is situated and which is a member of the
Federal Deposit Insurance Corporation, or the Federal Savings and Loan
Insurance Corporation, or successor agencies or, in the case of a
practitioner having an office in a foreign country or registered under
Sec. 11.6(c), in said financial institution in the United States or in
a comparable financial institution in a foreign country, and no funds
belonging to the practitioner or law firm shall be deposited therein
except as follows:
(1) Funds reasonably sufficient to pay service or other charges or
fees imposed by the financial institution may be deposited therein; or
(2) Funds belonging in part to a client and in part presently or
potentially to the practitioner or law firm must be deposited in said
financial institution, and the portion belonging to the practitioner or
law firm must be withdrawn promptly after it is due unless the right of
the practitioner or law firm to receive it is disputed by the client,
in which event the disputed portion shall not be withdrawn until the
dispute is finally resolved.
(b) A practitioner having an arrangement with an invention promoter
for payment of his or her legal fees for legal services rendered for a
client referred to the practitioner by the promoter must ascertain upon
accepting said referral whether the client advances
[[Page 69553]]
funds for legal services to the promoter, and must take all reasonable
steps to safeguard the advanced funds.
(c) When in the course of representation before the Office a
practitioner is in possession of property in which both the
practitioner and another person claim interests, the practitioner shall
keep the property separate until there is an accounting and severance
of their interests. If a dispute arises concerning their respective
interests, the practitioner shall keep the portion in dispute separate
until the dispute is resolved.
(d) A practitioner, in connection with a client having immediate or
prospective business before the Office, shall:
(1) Promptly notify a client of the receipt of the client's funds,
securities, or other properties;
(2) Identify and label securities and properties of a client
promptly upon receipt and place them in a safe deposit box or other
place of safekeeping as soon as practicable;
(3) Maintain complete records of all funds, securities, and other
properties of a client coming into the possession of the practitioner
and render appropriate accounts to the client regarding them; and
(4) Promptly pay and deliver to the client or another as requested
by such person the funds, securities, or other properties in the
possession of the practitioner that such person is entitled to receive.
(e) Funds, securities or other properties. Funds, securities or
other properties held by a practitioner or law firm as a fiduciary in
connection with a client having immediate or prospective business
before the Office shall be maintained in separate fiduciary accounts,
and the practitioner or law firm shall not commingle the assets of such
fiduciary accounts in a common account (including a book-entry custody
account), except in the following cases:
(1) Funds may be maintained in a common escrow account subject to
the provisions of paragraphs (a) and (c) of this section when
authorized by professional conduct rules for lawyers in the
jurisdiction where the practitioner or law firm is situated; or
(2) Funds, securities or other properties may be maintained in a
common account when authorized by professional conduct rules for
lawyers in the jurisdiction where the practitioner or law firm is
situated.
(f) Recordkeeping requirements, required books and records. Every
practitioner in regard to his or her practice before the Office shall
maintain or cause to be maintained, on a current basis, books and
records that establish compliance with paragraphs (a) and (d) of this
section. Whether a practitioner or a law firm maintains computerized
records or a manual accounting system, such system shall produce the
records or information required by this section.
(1) In the case of funds held in an escrow account subject to this
section, the required books and records include:
(i) A cash receipts journal or journals listing all funds received,
the sources of the receipts and the date of receipts. Checkbook entries
of receipts and deposits, if adequately detailed and bound, may
constitute a journal for this purpose. If separate cash receipts
journals are not maintained for escrow and non-escrow funds, then the
consolidated cash receipts journal shall contain separate columns for
escrow and non-escrow receipts;
(ii) A cash disbursements journal listing and identifying all
disbursements from the escrow account. Checkbook entries of
disbursements, if adequately detailed and bound, may constitute a
journal for this purpose. If separate disbursements journals are not
maintained for escrow and non-escrow disbursements then the
consolidated disbursements journal shall contain separate columns for
escrow and non-escrow disbursements;
(iii) A subsidiary ledger containing a separate account for each
client and for every other person or entity from whom money has been
received in escrow shall be maintained. The ledger account shall by
separate columns or otherwise clearly identify escrow funds disbursed,
and escrow funds balance on hand. The ledger account for a client or a
separate subsidiary ledger account for a client shall clearly indicate
all fees paid from trust accounts; and
(iv) Reconciliations and supporting records required under this
section.
(2) The records required under paragraph (f)(1) of this section
shall be preserved for at least five full calendar years following
termination of the fiduciary relationship.
(3) In the case of funds or property held by a practitioner or law
firm as a fiduciary subject to paragraph (c) of this section, the
required books and records include:
(i) An annual summary of all receipts and disbursements and changes
in assets comparable to an accounting that would be required of a court
supervised fiduciary in the same similar capacity. Such annual summary
shall be in sufficient detail as to allow a reasonable person to
determine whether the practitioner is properly discharging the
obligations of the fiduciary relationship; and
(ii) Original source documents sufficient to substantiate and, when
necessary, to explain the annual summary required under paragraph
(f)(2)(A) of this section.
(4) The records required under paragraph (f)(3) of this section
shall be preserved for at least five full years following the
termination of the fiduciary relationship.
(g) Required escrow accounting procedures. The following minimum
accounting procedures are applicable to all escrow accounts subject to
paragraphs (a) and (c) of this section by practitioners in regard to
practice before the Office.
(1) Insufficient fund check reporting.
(i) Clearly identified escrow accounts required. A practitioner or
law firm shall deposit all funds held in escrow in a clearly identified
account, and shall inform the financial institution in writing of the
purpose and identity of the account. Practitioner escrow accounts shall
be maintained only in financial institutions authorized by these rules.
(ii) Overdraft notification. A financial institution may report to
the Office of Enrollment and Discipline if any instrument which would
be properly payable if sufficient funds were available, is presented
against a practitioner escrow account containing insufficient funds,
irrespective of whether or not the instrument is honored.
(iii) Overdraft reports. All reports made by a financial
institution shall be in the following format:
(A) In the case of a dishonored instrument, the report shall be
identical of the overdraft customarily forwarded to the depositor, and
should include a copy of the dishonored instrument, if such a copy is
normally provided to depositors;
(B) In the case of instruments that are presented against
insufficient funds but which instruments are honored, the report shall
identify the financial institution, the practitioner or law firm, the
account name, the account number, the date of presentation for payment,
and the date paid, as well as the amount of the overdraft created
thereby; and
(C) Every practitioner or law firm shall be conclusively deemed to
have consented to the reporting and production requirements mandated by
this section.
(2) Deposits. All receipts of escrow money shall be deposited
intact and a retained duplicate deposit slip or other such record shall
be sufficiently
[[Page 69554]]
detailed to show the identity of each item.
(3) Deposit of mixed escrow and non-escrow funds other than fees
and retainers. Mixed escrow and non-escrow funds shall be deposited
intact to the escrow account. The non-escrow portion shall be withdrawn
upon the clearing of the mixed fund deposit instrument.
(4) Periodic trial balance. A regular periodic trial balance of the
subsidiary ledger shall be made at least quarterly, within 30 days
after the close of the period and shall show the escrow account balance
of the client or other period at the end of each period.
(A) The total of the trial balance must agree with the control
figure computed by taking the beginning balance, adding the total
monies received in escrow for the period and deducting the total escrow
monies disbursed for the period; and
(B) The trial balance shall identify the preparer and be approved
by the practitioner or one of the practitioners in the law firm.
(5) Reconciliations. (i) A monthly reconciliation shall be made at
month end of the cash balance derived from the cash receipts journal
and cash disbursements journal total, the escrow account checkbook
balance, and the escrow account bank Statement balance;
(ii) A periodic reconciliation shall be made at least quarterly,
within 30 days after the close of the period, reconciling cash balances
to the subsidiary ledger trial balance;
(iii) Reconciliations shall identify the preparer and be approved
by the practitioner or one of the practitioners in the law firm.
(6) Receipts and disbursements explained. The purpose of all
receipts and disbursements of escrow funds reported in the escrow
journals and subsidiary ledgers shall be explained and supported by
adequate records.
(h) All financial accounts kept by a registered practitioner must
comply with the provisions of paragraph (f) of this section, except
that:
(1) Attorneys: The financial records maintained by a practitioner
who is an attorney in good standing of a bar of the highest court in a
state will be deemed to be in substantial compliance with the
provisions of paragraphs (f) and (g) of this section if the attorney's
principal place of business is in the United States, and the financial
records are in compliance with the financial recordkeeping requirements
of the state bar of which he or she is a member in good standing; or
(2) Patent agents employed by a law firm: The trust account records
maintained by a law firm with regard to a patent agent employed by the
law firm will be deemed to be in substantial compliance with the
provisions of paragraphs (f) and (g) of this section for the patent
agent if the principal place of business of the law firm and the patent
agent are in the United States, the patent agent is employed by the law
firm, and the financial records maintained by the law firm comply with
the financial record-keeping requirements that apply to at least one
attorney in the law firm at the principal place of business.
(i) Conduct that constitutes a violation of paragraph (a) of this
section includes, but is not limited to misappropriation of, or failure
to properly or timely remit, funds received by a practitioner or the
practitioner's firm from a client having immediate or prospective
business before the Office to pay a fee which the client is required by
law to pay to the Office.
Sec. 11.116 Declining or terminating representation.
(a) Except as stated in paragraph (c) of this section, a
practitioner shall not represent a client before the Office, or where
representation has commenced, shall withdraw from the representation of
a client before the Office if:
(1) The representation will result in violation of the Rules of
Professional Conduct or other law;
(2) The practitioner's physical or mental condition materially
impairs the practitioner's ability to represent the client;
(3) The practitioner is discharged; or
(4) The practitioner becomes an employee of the Office, and before
becoming an employee the practitioner has a matter, including a patent
application, in which the practitioner acts as attorney or agent for
prosecuting a claim against the United States, or receives any
gratuity, or any share of or interest in such claim, or acts as
attorney or agent for anyone before the Office in which the United
States is a party or has a substantial interest. In the latter
instance, the practitioner shall withdraw before the first day of
employment at the Office from every such matter.
(b) Except as stated in paragraph (c) of this section, a
practitioner may withdraw from representing a client before the Office
if withdrawal can be accomplished without material adverse effect on
the interests of the client, or if:
(1) The client persists in a course of action involving the
practitioner's services that the practitioner reasonably believes is
criminal or fraudulent;
(2) The client has used the practitioner's services to perpetrate a
crime or fraud;
(3) A client insists upon pursuing an objective that the lawyer
considers repugnant or imprudent;
(4) The client fails substantially to fulfill an obligation to the
practitioner regarding the practitioner's services and has been given
reasonable warning that the practitioner will withdraw unless the
obligation is fulfilled;
(5) The representation will result in an unreasonable financial
burden on the practitioner or obdurate or vexatious conduct on the part
of the client has rendered the representation unreasonably difficult;
or
(6) Other good cause for withdrawal exists.
(c) When ordered to do so by the Office, a practitioner shall
continue representation notwithstanding good cause for terminating the
representation.
(d) Upon termination of representation before the Office, a
practitioner shall take steps reasonably practicable to protect a
client's interests, such as giving reasonable notice to the client,
allowing time for employment of other counsel, surrendering papers and
property to which the client is entitled, and refunding any advance
payment of fee that has not been earned. The practitioner may retain
papers relating to the client to the extent permitted by other law,
Sec. 11.108(j), but in regard to any proceeding before the Office a
practitioner shall not retain:
(1) Any part of the client's files regarding the proceeding,
including patent or trademark application files, that has been filed
with the Office,
(2) Any work product regarding the proceeding for which the
practitioner has been paid, or
(3) Any proceeding-related paper whenever assertion of a retaining
lien on the paper would materially prejudice or imperil the protection
of the client's interests.
Sec. 11.117 Sale of practice.
A practitioner may sell or purchase a law practice involving patent
or trademark matters before the Office, including good will, if the
following conditions are satisfied:
(a) The seller ceases to engage in the private practice before the
Office;
(b) The practice, to the extent it involves patent proceedings, is
sold as an entirety to another registered practitioner or firm
comprising registered practitioners;
(c) Actual written notice is given to each of the seller's clients
having immediate or prospective business before the Office regarding:
[[Page 69555]]
(1) The proposed sale;
(2) The terms of any proposed change in the fee arrangement
authorized by paragraph (d) of this section;
(3) The client's right to retain other counsel or to take
possession of the file; and
(4) The fact that the client's consent to the sale will be presumed
if the client does not take any action or does not otherwise object
within ninety (90) days after receipt of the notice. If a client cannot
be given notice, the representation of that client may be transferred
to the purchaser only upon entry of an order so authorizing by a court
having jurisdiction. The seller may disclose to the court in camera
information relating to the representation only to the extent necessary
to obtain an order authorizing the transfer of a file.
(d) The fees charged clients having immediate or prospective
business before the Office shall not be increased by reason of the
sale. The purchaser may, however, refuse to undertake the
representation unless the client gives informed consent, confirmed in
writing, to pay the purchaser fees at a rate not exceeding the fees
charged by the purchaser for rendering substantially similar services
prior to the initiation of the purchase negotiations.
Sec. Sec. 11.118-11.200 [Reserved]
Counselor
Sec. 11.201 Advisor.
(a) In representing a client having immediate or prospective
business before the Office, a practitioner shall exercise independent
professional judgment and render candid advice. In rendering advice, a
practitioner may refer not only to law but also to other considerations
such as moral, economic, social and political factors that may be
relevant to the client's situation.
(b) In rendering patentability advice to a client referred by an
invention promoter, a practitioner shall identify the element(s) of the
references and invention considered, and specify the element or
combination of elements of the invention that are believed to support a
conclusion that the invention may be patentable.
Sec. 11.202 Intermediary.
(a) A practitioner may act as intermediary between clients, any one
of which has immediate or prospective business before the Office, if:
(1) The practitioner consults with each client concerning the
implications of the common representation, including the advantages and
risks involved, and the effect on the attorney-client or agent-client
privileges, and the practitioner obtains from each client informed
consent, confirmed in writing, to the common representation;
(2) The practitioner reasonably believes that the matter can be
resolved on terms compatible with the clients' best interests, that
each client will be able to make adequately informed decisions in the
matter, and that there is little risk of material prejudice to the
interests of any of the clients if the contemplated resolution is
unsuccessful; and
(3) The practitioner reasonably believes that the common
representation can be undertaken impartially and without improper
effect on other responsibilities the practitioner has to any of the
clients.
(b) While acting as intermediary between clients, any one of which
has immediate or prospective business before the Office, the
practitioner shall consult with each client concerning the decisions to
be made and the considerations relevant in making them, so that each
client can make adequately informed decisions.
(c) A practitioner shall withdraw as intermediary between clients,
any one of which has immediate or prospective business before the
Office, if any of the clients so request, or if any of the conditions
stated in paragraph (a) of this section are no longer satisfied. In
connection with a proceeding pending before the Office, the
practitioner shall submit a written request to withdraw to the USPTO
Director. Upon withdrawal, the practitioner shall not continue to
represent any of the clients in the matter that was the subject of the
intermediation.
(d) Except in unusual circumstances that may make it infeasible,
prior to undertaking intermediation in a matter between clients who are
an inventor and an invention promoter, a practitioner shall provide
both clients with full disclosure of all potential and actual conflicts
of interest, and obtain from each client informed consent, confirmed in
writing.
Sec. 11.203 Evaluation for use by third persons.
(a) A practitioner may undertake an evaluation of a matter
affecting a client for the use of someone other than the client, where
either the client or other person has immediate or prospective business
before the Office, if:
(1) The practitioner reasonably believes that making the evaluation
is compatible with other aspects of the practitioner's relationship
with the client; and
(2) The client gives informed consent, confirmed in writing, after
full disclosure by the practitioner.
(b) Except as disclosure is required in connection with a report of
an evaluation regarding a patent, trademark or other non-patent law
matter before the Office, information relating to the evaluation is
otherwise protected by Sec. 11.106.
(c) If a practitioner provides an evaluation regarding a patent,
trademark or other non-patent matter before the Office to an invention
promoter, which the invention promoter forwards in whole or in part to
an inventor, and the evaluation includes any evaluation of
patentability, the inventor shall constitute a client of the
practitioner and provisions of Sec. Sec. 11.104(a)(1), 11.107(a)(2),
11.107(b)(2), 11.108(f)(1), 11.201(b), 11.202(d), and 11.701(b), and
the practitioner must satisfy the provisions of Sec. Sec. 11.804(h)(2)
or (h)(3) before the practitioner provides any evaluation. The
evaluation may not disclose or be based upon knowledge or information
that the inventor regards as confidential, and may not otherwise
provide publication of the invention prior to the filing of an
application for the inventor.
Sec. Sec. 11.204-11.300 [Reserved]
Advocate
Sec. 11.301 Meritorious claims and contentions.
A practitioner shall not bring or defend a proceeding before the
Office, or assert or controvert an issue therein, unless there is a
basis for doing so that is not frivolous, which includes a good-faith
argument for an extension, modification, or reversal of existing law.
Sec. 11.302 Expediting litigation and Office proceedings.
(a) A practitioner shall make reasonable efforts to expedite
proceedings before the Office consistent with the interests of the
client.
(b) In representing a client having immediate or prospective
business before the Office, a practitioner shall not delay a proceeding
when the practitioner knows or when it is obvious that such action
would serve solely to harass or maliciously injure another.
Sec. 11.303 Candor toward the tribunal.
(a) A practitioner, in regard to practice before the Office, shall
not knowingly:
(1) Make a false statement of material fact or law to a tribunal;
(2) Fail to disclose a material fact to the Office when disclosure
is necessary to avoid assisting a criminal or fraudulent act by a
client;
[[Page 69556]]
(3) Fail to disclose to the Office 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; or
(4) Offer evidence that the practitioner knows to be false or
misleading. If a practitioner has offered material evidence and comes
to know of its falsity or that it is misleading, the practitioner shall
take reasonable remedial measures. If a practitioner has offered
evidence in the Office material to patentability in regard to a patent
or patent application, and comes to know of its falsity or that it is
misleading, the practitioner shall disclose to the Office in writing
information regarding the falsity or that it is misleading with respect
to each pending claim until the claim is cancelled or withdrawn from
consideration, or the application becomes abandoned.
(b) The duties stated in paragraph (a) of this section continue to
the conclusion of the proceeding, and apply even if compliance requires
disclosure of information otherwise protected by Sec. 11.106.
(c) A practitioner, in regard to practice before the Office, may
refuse to offer evidence that the practitioner reasonably believes is
false or misleading.
(d) In a proceeding before the Office other than those involving
the granting of a patent or registration of a mark, a practitioner
shall inform the Office of all material facts known to the practitioner
that will enable the Office to make an informed decision, whether or
not the facts are adverse. In a patent proceeding before the Office, a
practitioner shall inform the Office of all information material to
patentability known to the practitioner in accordance with Sec. 1.56,
whether or not such information is adverse.
(e) Conduct that constitutes a violation of paragraphs (a) through
(d) of this section includes, but is not limited to:
(1) Knowingly misusing a ``Certificate of Mailing or Transmission''
under Sec. 1.8 of this subchapter;
(2) Knowingly violating or causing to be violated the requirements
of Sec. Sec. 1.56 or 1.555 of this subchapter;
(3) Except as permitted by Sec. 1.52(c) of this subchapter,
knowingly filing or causing to be filed a patent application containing
any material alteration made in the application papers after the
signing of the accompanying oath or declaration without identifying the
alteration at the time of filing the application papers;
(4) Knowingly signing a paper filed in the Office in violation of
the provisions of Sec. 11.18 or making a scandalous statement in a
paper filed in the Office; and
(5) Knowingly giving false or misleading information or knowingly
participating in a material way in giving false or misleading
information, to the Office or any employee of the Office.
Sec. 11.304 Fairness to opposing party, the Office, and counsel.
A practitioner, in regard to practice before the Office, shall not:
(a) Unlawfully obstruct another party's access to evidence or
unlawfully alter, destroy or conceal documents or other material having
potential evidentiary value. A practitioner shall not counsel or assist
another person to do any such act;
(b) Falsify evidence, counsel or assist a witness to testify
falsely, or offer an inducement to a witness that is prohibited by law;
(c) Knowingly disobey an obligation under the rules of the Office
except for an open refusal based on an assertion that no valid
obligation exists;
(d) In an inter partes proceeding before the Office, make a
frivolous discovery request, or fail to make a reasonably diligent
effort to comply with a legally proper discovery request by an opposing
party;
(e) In a proceeding before the Office, allude to any matter that
the practitioner does not reasonably believe is relevant or that will
not be supported by admissible evidence, assert personal knowledge of
facts in issue except when testifying as a witness, or state a personal
opinion as to the justness of a cause, the credibility of a witness,
the culpability of a civil litigant, or the guilt or innocence of an
accused; or
(f) Request a person other than a client to refrain from
voluntarily giving relevant information to another party unless:
(1) The person is a relative or an employee or other agent of a
client; and
(2) The practitioner reasonably believes that the person's
interests will not be adversely affected by refraining from giving such
information.
Sec. 11.305 Impartiality and decorum of the tribunal.
A practitioner shall not:
(a) Seek to influence an administrative law judge, administrative
patent judge, administrative trademark judge, hearing officer,
tribunal, employee of a tribunal, or other official by means prohibited
by law;
(b) Communicate ex parte with such a person except as permitted by
law; or
(c) Engage in conduct intended to disrupt a tribunal.
(d) Conduct that constitutes a violation of paragraphs (a) through
(c) of this section includes, but is not limited to:
(1) Directly or indirectly improperly influencing, attempting to
improperly influence, offering or agreeing to improperly influence, or
attempting to offer or agree to improperly influence an official action
of any tribunal or employee of a tribunal by:
(i) Use of threats, false accusations, duress, or coercion;
(ii) An offer of any special inducement or promise of advantage, or
(iii) Improperly bestowing of any gift, favor, or thing of value.
Sec. 11.306 [Reserved]
Sec. 11.307 Practitioner as witness.
(a) A practitioner shall not act as advocate in a proceeding before
the Office in which the practitioner is likely to be a necessary
witness except where:
(1) The testimony relates to an uncontested issue;
(2) The testimony relates to the nature and value of legal services
rendered in the case; or
(3) Disqualification of the practitioner would work substantial
hardship on the client.
(b) A practitioner may act as advocate in a proceeding before the
Office in which another practitioner in the practitioner's firm is
likely to be called as a witness unless precluded from doing so by
Sec. Sec. 11.107 or 11.109. The provisions of this paragraph do not
apply if the practitioner who is appearing as an advocate is employed
by, and appears on behalf of, a Government agency.
Sec. 11.308 [Reserved]
Sec. 11.309 Advocate in nonadjudicative proceedings.
A practitioner representing a client before a legislative or
administrative body in a nonadjudicative proceeding shall disclose that
the appearance is in a representative capacity and shall conform to the
provisions of Sec. Sec. 11.303(a) through (c), 11.304(a) through (c),
and 11.305.
Sec. Sec. 11.310-11.400 [Reserved]
Transactions With Persons Other Than Clients
Sec. 11.401 Truthfulness in statements to others.
In the course of representing a client having immediate or
prospective business before the Office, a practitioner shall not
knowingly:
(a) Make a false statement of material fact or law to a third
person; or
[[Page 69557]]
(b) Fail to disclose a material fact to a third person when
disclosure is necessary to avoid assisting a criminal or fraudulent act
by a client, unless disclosure is prohibited by Sec. 11.106.
Sec. 11.402 Communication with person represented by counsel.
(a) In representing a client having immediate or prospective
business before the Office a practitioner shall not communicate or
cause another to communicate about the subject of the representation
with a party the practitioner knows to be represented by another
practitioner in the matter, unless the practitioner has the consent of
the practitioner representing such other party or is authorized by law
to do so.
(b) For purposes of this section, the term party includes any
person, including an employee of a party organization, who has the
authority to bind a party organization as to the representation to
which the communication relates.
(c) This section does not prohibit communication by a practitioner
with Government officials who have the authority to redress the
grievances of the practitioner's client, whether or not those
grievances or the practitioner's communications relate to matters that
are the subject of the representation, provided that in the event of
such communications the disclosures specified in paragraph (b) of this
section are made to the Government official to whom the communication
is made.
Sec. 11.403 Dealing with unrepresented person.
In dealing with a person who is not represented by counsel on
behalf of a client having immediate or prospective business before the
Office, a practitioner shall not state or imply to unrepresented
persons that the practitioner is disinterested. When the practitioner
knows or reasonably should know that the unrepresented person
misunderstands the practitioner's role in the matter, the practitioner
shall make reasonable efforts to correct the misunderstanding.
Sec. 11.404 Respect for rights of third persons.
In representing a client having immediate or prospective business
before the Office, a practitioner shall not use means that have no
substantial purpose other than to embarrass, delay, or burden a third
person, or use methods of obtaining evidence that violate the legal
rights of such a person.
Sec. Sec. 11.405-11.500 [Reserved]
Law Firms and Associations
Sec. 11.501 Responsibilities of a partner or supervisory
practitioner.
(a) A partner in a law firm shall make reasonable efforts to ensure
that the firm has in effect measures giving reasonable assurance that
all practitioners in the firm conform to the Rules of Professional
Conduct.
(b) A practitioner having direct supervisory authority over another
practitioner shall make reasonable efforts to ensure that the other
practitioner conforms to the Rules of Professional Conduct.
(c) A practitioner shall be responsible for another practitioner's
violation of the Rules of Professional Conduct if:
(1) The practitioner orders or, with knowledge of the specific
conduct, ratifies the conduct involved; or
(2) The practitioner is a partner in the law firm in which the
other practitioner practices, or has direct supervisory authority over
the other practitioner, and knows of the conduct at a time when its
consequences can be avoided or mitigated but fails to take reasonable
remedial action.
Sec. 11.502 Responsibilities of a subordinate practitioner.
(a) A practitioner is bound by the Rules of Professional Conduct
notwithstanding that the practitioner acted at the direction of another
person.
(b) A subordinate practitioner does not violate the Rules of
Professional Conduct if that practitioner acts in accordance with a
supervisory practitioner's reasonable resolution of an arguable
question of professional duty.
Sec. 11.503 Responsibilities regarding nonpractitioner assistants.
With respect to a nonpractitioner employed or retained by, or
associated with a practitioner practicing before the Office:
(a) A partner in a law firm shall make reasonable efforts to ensure
that the firm has in effect measures giving reasonable assurance that
the person's conduct is compatible with the professional obligations of
the practitioner;
(b) A practitioner having direct supervisory authority over the
nonpractitioner shall make reasonable efforts to ensure that the
person's conduct is compatible with the professional obligations of the
practitioner; and
(c) A practitioner shall be responsible for conduct of such a
person that would be a violation of the Rules of Professional Conduct
if engaged in by a practitioner if:
(1) The practitioner orders or, with the knowledge of the specific
conduct, ratifies the conduct involved; or
(2) The practitioner is a partner in the law firm in which the
person is employed or has direct supervisory authority over the person,
and knows of the conduct at a time when its consequences can be avoided
or mitigated but fails to take reasonable remedial action.
Sec. 11.504 Professional independence of a practitioner.
(a) A practitioner or law firm, in regard to practice before the
Office, shall not share legal fees with a nonpractitioner, except that:
(1) An agreement by a practitioner with the practitioner's firm,
partner, or associate may provide for the payment of money, over a
reasonable period of time after the practitioner's death, to the
practitioner's estate or to one or more specified persons;
(2) A practitioner who purchases the practice of a deceased,
disabled, or disappeared practitioner may, pursuant to the provisions
of Sec. 11.117, pay to the estate or other representative of that
practitioner the agreed upon purchase price; and
(3) A practitioner or law firm may include nonpractitioner
employees in a compensation or retirement plan, even though the plan is
based in whole or in part on a profit-sharing arrangement.
(b) A practitioner accepting a client referred by an invention
promoter shall not divide legal fees paid by the client with the
promoter for legal services rendered in regard to practice before the
Office, including by accepting payment from the promoter a portion of
funds the promoter receives from the referred client, delivering to the
promoter a portion of any funds the practitioner receives from the
client. The proscribed delivery of funds includes any transfer of funds
before or after services are rendered. The legal services include, but
are not limited to, providing an opinion regarding the patentability of
the client's invention, providing an opinion regarding the
registrability of a mark, preparing a patent or trademark application,
and prosecuting a patent or trademark application.
(c) A practitioner shall not form a partnership with a
nonpractitioner if any of the activities of the partnership consist of
the practice of law before the Office.
(d) A practitioner shall not permit a person who recommends,
employs, or pays the practitioner to render legal services for another
before the Office to direct or regulate the practitioner's
[[Page 69558]]
professional judgment in rendering such legal services.
(e) A practitioner shall not practice with or in the form of a
professional corporation or association authorized to practice law for
a profit in regard to practice before the Office, if:
(1) A nonpractitioner owns any interest therein, except that a
fiduciary representative of the estate of a practitioner may hold the
stock or interest of the practitioner for a reasonable time during
administration;
(2) A nonpractitioner is a corporate director or officer thereof;
or
(3) A nonpractitioner has the right to direct or control the
professional judgment of a practitioner.
Sec. 11.505 Unauthorized practice of law.
A practitioner shall not:
(a) Practice law in a jurisdiction where doing so violates the
regulation of the legal profession in that jurisdiction, except that a
registered practitioner may practice before the Office in patent
matters in any State;
(b) Assist a person who is not a member of the bar in the
performance of activity that constitutes the unauthorized practice of
law;
(c) Aid a non-practitioner in the unauthorized practice of law
before the Office;
(d) Aid a practitioner under suspension, exclusion, disbarment, or
disbarment on consent, or who resigned during a pending investigation
in the unauthorized practice of patent, trademark, or other non-patent
law before the Office or aid a suspended or disbarred attorney in the
unauthorized practice of law in any other jurisdiction;
(e) Practice before the Office in trademark matters if the
practitioner was registered as a patent agent after January 1, 1957,
and is not an attorney; or
(f) Practice before the Office in patent, trademark, or other non-
patent law if suspended, excluded, or excluded on consent from practice
by the USPTO Director under Sec. Sec. 11.24, 11.25, 11.27, 11.28, or
11.56; if administratively suspended under Sec. 11.11(b); or if in
contravention of restrictions imposed on a practitioner under Sec.
11.36(f).
Sec. 11.506 Restrictions on right to practice.
A practitioner, in regard to practice before the Office, shall not
participate in offering or making:
(a) A partnership or employment agreement that restricts the rights
of a practitioner to practice after termination of the relationship,
except an agreement concerning benefits upon retirement; or
(b) An agreement in which a restriction on the practitioner's right
to practice is part of the settlement of a controversy between parties.
Sec. 11.507 Responsibilities regarding law-related services.
(a) A practitioner shall be subject to the Rules of Professional
Conduct with respect to the provision of law-related services before
the Office, as defined in paragraph (b) of this section, if the law-
related services are provided:
(1) By the practitioner in circumstances that are not distinct from
the practitioner's provision of legal services to clients; or
(2) By a separate entity controlled by the practitioner
individually or with others if the practitioner fails to take
reasonable measures to assure that a person obtaining the law-related
services knows that the services of the separate entity are not legal
services and that the protections of the client-lawyer or client-agent
relationship do not exist; or
(3) By a separate entity controlled by an invention promoter which
refers legal services to the practitioner if the practitioner fails to
take reasonable measures to assure that a person obtaining the law-
related services knows that the services of the invention promoter are
not legal services and that the protections of the client-lawyer or
client-agent relationship do not exist.
(b) The term ``law-related services'' means services that might
reasonably be performed in conjunction with and in substance are
related to the provision of legal services in patent, trademark, or
other non-patent law matters before the Office, and that are not
prohibited as unauthorized practice of law when provided by a
nonlawyer.
Sec. Sec. 11.508-11.600 [Reserved]
Public Service
Sec. 11.601 Pro Bono Publico service.
A practitioner, in regard to practice before the Office, should
participate in serving those persons, or groups of persons, who are
unable to pay all or a portion of reasonable attorneys' fees or who are
otherwise unable to obtain counsel. A practitioner may discharge this
responsibility by providing professional services at no fee, or at a
substantially reduced fee, to persons and groups who are unable to
afford or obtain counsel, or by active participation in the work of
organizations that provide legal services to them. When personal
representation is not feasible, a practitioner may discharge this
responsibility by providing financial support for organizations that
provide legal representation to those unable to obtain counsel.
Sec. 11.602 Accepting appointments.
A practitioner, who is a lawyer, shall not seek to avoid
appointment by a tribunal to represent a person except for good cause,
such as:
(a) Representing the client is likely to result in violation of the
Rules of Professional Conduct or other law;
(b) Representing the client is likely to result in an unreasonable
financial burden on the practitioner; or
(c) The client or the cause is so repugnant to the practitioner as
to be likely to impair the attorney-client or agent-client relationship
or the practitioner's ability to represent the client.
Sec. 11.603 Membership in legal services organization.
A lawyer may serve as a director, officer, or member of a legal
services organization, apart from the law firm in which the
practitioner practices, notwithstanding that the organization serves
persons having interests adverse to a client of the practitioner. The
practitioner shall not knowingly participate in a decision or action of
the organization:
(a) If participating in the decision would be incompatible with the
practitioner's obligations to a client under Sec. 11.107; or
(b) Where the decision could have a material adverse effect on the
representation of a client of the organization whose interests are
adverse to a client of the practitioner.
Sec. 11.604 Law reform activities.
A practitioner may serve as a director, officer, or member of an
organization involved in reform of the law or its administration
notwithstanding that the reform may affect the interests of a client of
the practitioner. When the practitioner knows that the interests of a
client may be materially benefited by a decision in which the
practitioner participates, the practitioner shall disclose that fact
but need not identify the client.
Sec. Sec. 11.605-11.700 [Reserved]
Information About Legal Services
Sec. 11.701 Communications concerning a practitioner's services.
(a) A practitioner, or another on behalf the practitioner, shall
not make a false or misleading communication about the practitioner or
the practitioner's services for persons having immediate, prospective
or pending business before the Office. A
[[Page 69559]]
communication is false or misleading if it:
(1) Contains a material misrepresentation of fact or law, or omits
a fact necessary to make the statement considered as a whole not
materially misleading;
(2) Is likely to create an unjustified expectation about results
the practitioner can achieve, or states or implies that the
practitioner can achieve results by means that violate the Rules of
Professional Conduct or other law; or
(3) Compares the practitioner's services with other practitioners'
services, unless the comparison can be factually substantiated.
(b) A practitioner, or another on behalf of a practitioner, shall
not seek by in-person contact, employment (or employment of a partner,
associate, or other person or party) by a potential client having
immediate or prospective business before the Office who has not sought
the practitioner's advice regarding employment of a practitioner, if:
(1) The solicitation involves use of a statement or claim that is
false or misleading, within the meaning of paragraph (a) of this
section;
(2) The solicitation involves the use of undue influence;
(3) The potential client is apparently in a physical or mental
condition which would make it unlikely that the potential client could
exercise reasonable, considered judgment as to the selection of a
practitioner;
(4) The solicitation involves the use of an intermediary and the
practitioner has not taken all reasonable steps to ensure that the
potential client is informed of:
(i) The consideration, if any, paid or to be paid by the
practitioner to the intermediary; and
(ii) The effect, if any, of the payment to the intermediary on the
total fee to be charged; or
(5) The solicitation involves the use of an invention promoter and
the practitioner has not taken all reasonable steps to ensure that the
potential client is informed:
(i) In every contract or other agreement between the potential
client and invention promoter the specific amount of all legal fees and
expenses included in funds the client delivers or is obligated to
deliver to the promoter;
(ii) In every communication by the invention promoter requesting
funds from the client the specific amount of all legal fees and
expenses included in funds the client delivers or is obligated to
deliver to the promoter; and
(iii) The discount (expressed as a percent) from the customary fee
the practitioner gives or will give in the fees charged for legal
services rendered for a client referred by the promoter.
(c) A practitioner shall not knowingly assist an organization that
furnishes or pays for legal services to others having immediate or
prospective business before the Office to promote the use of the
practitioner's services or those of the practitioner's partner or
associate, or any other practitioner affiliated with the practitioner
or the practitioner's firm, as a private practitioner, if the
promotional activity involves the use of coercion, duress, compulsion,
intimidation, threats, or vexatious or harassing conduct.
(d) No practitioner shall personally, or through acts of another,
with respect to any prospective business before the Office, by word,
circular, letter, or advertising, with intent to defraud in any manner,
deceive, mislead, or threaten any prospective applicant or other person
having immediate or prospective business before the Office.
(e) A practitioner may not use the name of a Member of either House
of Congress or of an individual in the service of the United States in
advertising the practitioner's practice before the Office.
Sec. 11.702 Advertising.
(a) Subject to the requirements of Sec. Sec. 11.701 and 11.703, a
practitioner may advertise services regarding practice before the
Office through public media, such as a telephone directory, legal
directory, newspaper or other periodical, outdoor advertising, radio or
television, through written or recorded communication, or through
electronic media.
(b) A copy or recording of an advertisement or communication
(whether in printed or electronic media) authorized by paragraph (a) of
this section shall be kept for two years after its last dissemination
along with a record of when and where it was used.
(c) A practitioner shall not give anything of value to a person or
organization for recommending the practitioner's services in practice
before the Office except that a practitioner may:
(1) Pay the reasonable costs of advertisements or communications
permitted by this section; and
(2) Pay the usual charges of a not-for-profit lawyer referral
service or legal service organization.
(d) A practitioner who is a lawyer may pay for a law practice in
accordance with Sec. 11.117.
(e) Any advertisement or communication to the public made pursuant
to this section shall include the name of at least one practitioner
responsible for its content.
Sec. 11.703 Direct contact with prospective clients
(a) A practitioner personally, or through the actions of another,
shall not by in-person or telephone contact solicit professional
employment from a prospective client having immediate or prospective
business before the Office with whom the practitioner has no family or
prior professional relationship when a significant motive for the
practitioner's doing so is the practitioner's pecuniary gain under
circumstances evidencing undue influence, intimidation, or
overreaching.
(b) A practitioner personally, or through the actions of another,
shall not solicit professional employment from a prospective client
having immediate or prospective business before the Office by written
or recorded communication or by in-person or telephone contact even
when not otherwise prohibited by paragraph (a) of this section, if:
(1) The prospective client has made known to the practitioner a
desire not to be solicited by the practitioner; or
(2) The solicitation involves false or misleading statements, undue
influence, coercion, duress or harassment.
(c) Every written (including in print or electronic media) or
recorded communication from or on behalf of a practitioner, soliciting
professional employment from a prospective client known to be in need
of legal services in a particular matter before the Office, and with
whom the practitioner has no family or prior professional relationship,
shall include the words ``Advertising Material'' on the outside
envelope, and at the beginning and ending of any electronic or recorded
communication.
(d) Notwithstanding the prohibitions in paragraph (a) of this
section, a practitioner may participate with a prepaid or group legal
service plan operated by an organization not owned or directed by the
practitioner which uses in-person or telephone contact to solicit
memberships or subscriptions for the plan from persons who are not
known to need legal services in a particular matter covered by the
plan.
Sec. 11.704 Communication of fields of practice and certification.
A practitioner may communicate the fact that the practitioner does
or does not practice in particular fields of law. A practitioner shall
not state or imply that the practitioner has been recognized or
certified as a specialist in a particular field of law except as
follows:
[[Page 69560]]
(a) Unless a practitioner is an attorney, the practitioner shall
not hold himself or herself out to be an attorney, lawyer, or member of
a bar, or as qualified or authorized to practice general law. Unless
authorized by Sec. 11.14(b), a non-lawyer shall not hold himself or
herself out as being qualified or authorized to practice before the
Office in trademark matters;
(b) A registered practitioner who is an attorney may use the
designation ``Patents,'' ``Patent Attorney,'' ``Patent Lawyer,''
``Registered Patent Attorney,'' or a substantially similar designation;
(c) A registered practitioner who is not an attorney may use the
designation ``Patents,'' ``Patent Agent,'' ``Registered Patent Agent,''
or a substantially similar designation;
(d) An individual granted limited recognition may use the
designation ``Limited Recognition''; and
(e) A lawyer engaged in Admiralty practice may use the designation
``Admiralty,'' ``Proctor in Admiralty'' or a substantially similar
designation.
Sec. 11.705 Firm names and letterheads.
(a) A practitioner shall not use a firm name, letterhead, or other
professional designation that violates Sec. 11.701. A practitioner in
private practice may use a trade name if it does not imply a connection
with a Government agency or with a public or charitable legal services
organization and is not otherwise in violation of Sec. 11.701.
(b) A law firm with offices in more than one jurisdiction may use
the same name in each jurisdiction, but identification of the
practitioners in an office of the firm shall indicate the
jurisdictional limitations of those not licensed to practice in the
jurisdiction where the office is located.
(c) The name of a practitioner holding a public office shall not be
used in the name of a law firm, or in communications on its behalf,
during any substantial period in which the practitioner is not actively
and regularly practicing with the firm.
(d) Practitioners may state or imply that they practice in a
partnership or other organization only when that is the fact.
Sec. Sec. 11.706-11.800 [Reserved]
Maintaining the Integrity of the Profession
Sec. 11.801 Bar admission, registration, and disciplinary matters.
An applicant for registration, or a practitioner in connection with
an application for registration, or a practitioner in connection with a
disciplinary matter or reinstatement, shall not:
(a) Knowingly make a false statement of material fact, knowingly
fail to disclose a material fact, or knowingly fail to update
information regarding a material fact; or
(b) Fail to disclose a fact necessary to correct a misapprehension
known by the practitioner or applicant to have arisen in the matter, or
knowingly fail to respond reasonably to a lawful demand for information
from an admissions or disciplinary authority, except that the
provisions of this paragraph (b) do not require disclosure of
information otherwise protected by Sec. 11.106.
(c) Conduct that constitutes a violation of paragraphs (a) or (b)
of this section includes, but is not limited to, willfully refusing to
reveal or report knowledge or evidence to the OED Director contrary to
paragraphs (a) or (b) of this section.
Sec. 11.802 Judicial and legal officials.
(a) A practitioner shall not make a statement that the practitioner
knows to be false, or with reckless disregard as to its truth or
falsity, concerning the qualifications or integrity of a judge,
administrative law judge, administrative patent judge, administrative
trademark judge, adjudicatory officer, or public legal officer, or of a
candidate for election or appointment to judicial or legal office.
(b) A practitioner who is a candidate for judicial office shall
comply with the applicable provisions of the Code of Judicial Conduct.
Sec. 11.803 Reporting professional misconduct.
(a) A practitioner having knowledge that another practitioner has
committed a violation of the Rules of Professional Conduct that raises
a substantial question as to that practitioner's honesty,
trustworthiness, or fitness as a practitioner in other respects, shall
inform the appropriate professional authority.
(b) A practitioner having knowledge that an employee of the Office
has committed a violation of applicable Federal statutes, and rules
adopted by the Office of Government Ethics that raises a substantial
question as to the employee's fitness for office shall inform the
appropriate authority. The Office of Enrollment and Discipline is not
an appropriate authority for reporting under this section unless an
imperative rule of the USPTO Rules of Professional Conduct is violated.
(c) The provisions of this section does not require disclosure of
information otherwise protected by Sec. 11.106, or information gained
by a lawyer or judge, administrative law judge, administrative patent
judge, or administrative trademark judge while serving as a member of
an approved lawyers assistance program to the extent that such
information would be confidential if it were communicated subject to
the attorney-client privilege. The provisions of this section do not
authorize the filing of frivolous complaints.
(d) A practitioner:
(1) Found guilty of a crime or who pleads guilty or nolo contendre
or enters an Alford plea to a criminal charge in a court of a State, or
of the United States, except as to misdemeanor traffic offenses or
traffic ordinance violations, not including the use of alcohol or
drugs, shall within ten days from the date of such finding or plea
advise the OED Director in writing of the finding or plea and file with
the OED Director a certified copy of the court record or conviction or
docket entry of the finding or plea; or
(2) Found by a court of record or duly constituted authority of the
United States to have engaged in inequitable conduct to obtain a patent
shall within ten days from the date of such finding advise the OED
Director of the finding and file with the OED Director a certified copy
of the court record or finding.
(e) A practitioner:
(1) Reprimanded, suspended, disbarred as an attorney, or disbarred
on consent from practice as an attorney on any ethical grounds
(including ethical grounds not specified in this Part) by any duly
constituted authority of a State, or the United States, or who resigns
from the bar of any State, or Federal court while under investigation;
shall within ten days from the date of such action advise the OED
Director in writing of such action and file with the OED Director a
certified copy of the order, finding or plea;
(2) Residing in a foreign country or registered under Sec.
11.6(c), who is reprimanded, suspended, disbarred, disbarred on consent
from practice as an attorney on any ethical grounds, by any duly
constituted authority of a foreign country, including by any foreign
patent or trademark office, or who resigns while under investigation by
any duly constituted authority of a foreign country, shall within ten
days from the date of such action advise the OED Director in writing of
such action and file with the OED Director a certified copy of the
order, finding or plea; or
(3) Who, as a result of any other event or change, would be
precluded from continued registration under Sec. Sec. 11.6(a),
[[Page 69561]]
or 11.6(b), or 11.6(c), or as a result of any other event or change
would be precluded from continued recognition under Sec. Sec. 11.9 or
11.14, or any event or change that would be grounds for disciplinary
action under Sec. 11.25(c) shall within ten days from the date of such
event or change advise the OED Director in writing of the event or
change and file with the OED Director any records regarding the event
or change.
(f) Conduct that constitutes a violation of paragraphs (a) through
(e) of this section includes, but is not limited to:
(1) Failing to comply with the provisions of paragraphs (d) or (e)
of this section;
(2) Willfully refusing to reveal or report knowledge or evidence to
the OED Director contrary to Sec. Sec. 11.24(a) or (b), or 10.25(b);
(3) In the absence of information sufficient to establish a
reasonable belief that fraud or inequitable conduct has occurred,
alleging before a tribunal that anyone has committed a fraud on the
Office or engaged in inequitable conduct in a proceeding before the
Office; or
(4) Being suspended, disbarred as an attorney, or disbarred on
consent from practice as an attorney on any ethical grounds (including
ethical grounds not specified in this part) by any duly constituted
authority of a State, or the United States, or resigning from the bar
of any State, or Federal court while under investigation.
Sec. 11.804 Misconduct.
It is professional misconduct for a practitioner to:
(a) Violate or attempt to violate the Rules of Professional
Conduct, knowingly assist or induce another to do so, or do so through
the acts of another;
(b) Commit a criminal act that reflects adversely on the
practitioner's honesty, trustworthiness, or fitness as a practitioner
in other respects, including crimes for which the practitioner is found
guilty, pleads guilty or nolo contendre, and crimes to which the
practitioner enters an Alford plea to a criminal charge in a court of a
State, or of the United States, but does not include misdemeanor
traffic offenses or traffic ordinance violations, not including the use
of alcohol or drugs;
(c) Engage in conduct involving dishonesty, fraud, deceit, or
misrepresentation;
(d) Engage in conduct that is prejudicial to the administration of
justice;
(e) State or imply an ability to influence improperly a Government
agency or official;
(f) Knowingly assist an administrative law judge, administrative
patent judge, administrative trademark judge, patent examiner, other
employee of the Office, or judicial officer in conduct that is a
violation of applicable Federal statutes, rules adopted by the Office
of Government Ethics, or other law; or
(g) Engage in disreputable or gross misconduct.
(h) Conduct that constitutes a violation of paragraphs (a) through
(g) of this section includes, but is not limited to:
(1) Knowingly giving false or misleading information or knowingly
participating in a material way in giving false or misleading
information, to a client in connection with any immediate, prospective,
or pending business before the Office;
(2) Representing before the Office in a patent matter either a
joint venture comprising an inventor and an invention promoter, or an
inventor referred to the registered practitioner by an invention
promoter when:
(i) The registered practitioner knows, or has been advised by the
Office, that a formal complaint filed by a Federal or State agency,
alleging a violation of any law relating to securities, unfair methods
of competition, unfair or deceptive acts or practices, mail fraud, or
other civil or criminal conduct, is pending before a Federal or State
court or Federal or State agency, or has been resolved unfavorably by
such court or agency, against the invention promoter in connection with
marketing an invention; and
(ii) The registered practitioner fails to fully advise the inventor
of the existence of the pending complaint or unfavorable resolution
thereof prior to undertaking or continuing representation of the joint
venture or inventor;
(3) Accepting referral of a matter or inventor from an invention
promoter wherein:
(i) A contract or other agreement for marketing and patenting an
invention does not specify the total amount of funds constituting legal
fees the inventor becomes obligated to pay the invention promoter,
(ii) A contract or other agreement for marketing and patenting an
invention does not specify the total amount of funds constituting costs
and expenses for legal services the inventor becomes obligated to pay
the invention promoter,
(iii) The inventor delivers funds for legal fees, expenses or costs
to the invention promoter,
(iv) A patentability opinion or patent search report by a
registered practitioner is included in, accompanies, or is referenced
in any report issued by the invention promoter,
(v) A contract or other agreement for marketing and patenting an
invention provides for the preparation, drafting, or filing of a patent
application for a design or a utility invention, or
(vi) The contract or other agreement for marketing and patenting an
invention guarantees a patent;
(4) Accepting assistance in a specific matter from any former
employee of the Office who participated personally and substantially in
the matter as an employee of the Office;
(5) Representing, or permitting another party, including an
invention promoter, to represent, that a fee for non-legal services is
inclusive of any fee(s) for a practitioner's professional services
without also separately stating in writing the full amount of the legal
fees;
(6) Being a partner or associate of an employee of the Office, and
representing anyone in any proceeding before the Office in which the
employee of the Office participates or has participated personally and
substantially as an employee of the Office, or which is subject to that
employee's official responsibility;
(7) Accepting or using the assistance of an Office employee in the
presentation or prosecution of an application, whether or not the
employee is compensated, except to the extent that the employee may
lawfully provide the assistance in an official capacity;
(8) Being a Federal employee and practicing before the Office while
so employed in violation of applicable conflict of interest laws,
regulations or codes of professional responsibility;
(9) Failing to report a change of address within thirty days of the
change; or
(10) Knowingly filing, or causing to be filed, a frivolous
complaint alleging that a practitioner violated an imperative USPTO
Rule of Professional Conduct.
(i) A practitioner who acts with reckless indifference to whether a
representation is true or false is chargeable with knowledge of its
falsity. Deceitful statements of half-truths or concealment of material
facts shall be deemed fraud within the meaning of this Part.
Sec. 11.805 Disciplinary authority: Choice of law.
(a) Disciplinary authority. A practitioner registered or recognized
to practice or practicing before the Office in patent, trademark, or
other non-patent law is subject to the disciplinary authority of the
Office, regardless of
[[Page 69562]]
where the practitioner's conduct occurs. A practitioner may be subject
to the disciplinary authority of both the Office and another
jurisdiction where the practitioner is admitted to practice for the
same conduct. An applicant for patent (Sec. 1.41(b) of this
subchapter) representing himself, herself, or representing himself or
herself and other individual applicants pursuant to Sec. Sec. 1.31 and
1.33(b)(4) of this subchapter; an individual who is an assignee as
provided for under Sec. 3.71(b) of this subchapter; and an individual
appearing in a trademark or other non-patent matter pursuant to Sec.
11.14 is subject to the disciplinary authority of the Office for
matters arising in connection with their practice before the Office.
(b) Choice of law. In any exercise of the disciplinary authority of
the Office, the Rules of Professional Conduct to be applied shall be as
follows:
(1) For conduct in connection with practice before the Office in
patent, trademark, or other non-patent law a practitioner registered or
recognized to practice (either generally or for purposes of that
practice), the rules to be applied shall be the rules of the Office;
(2) For conduct in connection with a proceeding in a court before
which a practitioner has been admitted to practice (either generally or
for purposes of that proceeding), the rules to be applied shall be the
rules of the jurisdiction in which the court sits, unless the rules of
the court provide otherwise; and
(3) For any other conduct,
(i) If the practitioner is registered or recognized to practice
only before the Office, the rules to be applied shall be the rules of
the Office, and
(ii) If the practitioner is registered or recognized to practice
before the Office, and is licensed to practice in another jurisdiction,
the rules to be applied by the Office shall be the rules of the Office
in regard to practice before the Office, and otherwise the rules
applied shall be those of the admitting jurisdiction in which the
practitioner principally practices; provided, however, that if
particular conduct clearly has its predominant effect in another
jurisdiction in which the practitioner is licensed to practice, the
rules of that jurisdiction shall be applied to that conduct.
Sec. 11.806 Sexual relations with clients and third persons.
(a) Sexual relations means sexual intercourse or the touching of an
intimate part of another person for the purpose of sexual arousal,
sexual gratification, or sexual abuse.
(b) A practitioner shall not:
(1) Require or demand sexual relations with a client or third party
incident to or as a condition of any professional representation;
(2) Require or demand sexual relations with an employee incident to
or as a condition of employment; or
(3) Employ coercion, intimidation, or undue influence in entering
into sexual relations with a client.
(c) Paragraph (b) of this section shall not apply to sexual
relations between a practitioner and his or her spouse or significant
other, or to ongoing consensual sexual relationships that predate the
initiation of the practitioner-client relationship or practitioner-
employee relationship.
(d) Where a practitioner in a firm has sexual relations with a
client but does not participate in the representation of that client,
the practitioners in the firm shall not be subject to discipline under
this section solely because of the occurrence of such sexual relations.
Sec. Sec. 11.807-11.900 [Reserved]
Dated: November 17, 2003.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 03-29150 Filed 12-11-03; 8:45 am]
BILLING CODE 3510-16-P