Changes to Representation of Others Before the United States Patent and Trademark Office, 64189-64215 [2012-25355]
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Vol. 77
Thursday,
No. 202
October 18, 2012
Part II
Department of Commerce
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Patent and Trademark Office
37 CFR Part 1, 2, 7, 10, et al.
Changes to Representation of Others Before the United States Patent and
Trademark Office; Proposed Rule
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DEPARTMENT OF COMMERCE
United States Patent and Trademark
Office
37 CFR Parts 1, 2, 7, 10, 11 and 41
[Docket No. PTO–C–2012–0034]
RIN 0651–AC81
Changes to Representation of Others
Before the United States Patent and
Trademark Office
United States Patent and
Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
AGENCY:
The United States Patent and
Trademark Office (Office or USPTO)
proposes to align the USPTO’s
professional responsibility rules with
those of most other U.S. jurisdictions by
replacing the current Patent and
Trademark Office Code of Professional
Responsibility, adopted in 1985, based
on the 1980 version of the Model Code
of Professional Responsibility of the
American Bar Association (‘‘ABA’’),
with new USPTO Rules of Professional
Conduct, which are based on the Model
Rules of Professional Conduct of the
ABA, which were published in 1983,
substantially revised in 2003 and
updated through 2011. Changes
approved by the ABA House of
Delegates in August 2012 have not been
incorporated in these proposed rules.
The Office also proposes to revise the
existing procedural rules governing
disciplinary investigations and
proceedings.
DATES: To be ensured of consideration,
written comments must be received on
or before December 17, 2012.
ADDRESSES: Comments should be sent
by electronic mail message over the
Internet addressed to:
ethicsrules.comments@uspto.gov.
Comments may also be submitted by
mail addressed to: Mail Stop OEDEthics Rules, United States Patent and
Trademark Office, P.O. Box 1450,
Alexandria, Virginia 22313–1450,
marked to the attention of William R.
Covey, Deputy General Counsel for
Enrollment and Discipline and Director
of the Office of Enrollment and
Discipline.
Comments may also be sent by
electronic mail message over the
Internet via the Federal eRulemaking
Portal. See the Federal eRulemaking
Portal Web site (https://
www.regulations.gov) for additional
instructions on providing comments via
the Federal eRulemaking Portal.
Although comments may be
submitted by postal mail, the Office
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SUMMARY:
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prefers to receive comments by
electronic mail message over the
Internet because sharing comments with
the public is more easily accomplished.
Electronic comments are preferred to be
submitted in plain text, but also may be
submitted in ADOBE® portable
document format or MICROSOFT
WORD® format. Comments not
submitted electronically should be
submitted on paper in a format that
facilitates convenient digital scanning
into ADOBE® portable document
format.
Comments will be made available for
public inspection at the Office of
Enrollment and Discipline, located on
the 8th Floor of the Madison West
Building, 600 Dulany Street,
Alexandria, Virginia. Comments also
will be available for viewing via the
Office’s Internet Web site (https://
www.uspto.gov). Because comments will
be made available for public inspection,
information that the submitter does not
desire to make public, such as an
address or phone number, should not be
included in the comments.
FOR FURTHER INFORMATION CONTACT:
William R. Covey, Deputy General
Counsel for Enrollment and Discipline
and Director of the Office of Enrollment
and Discipline, by telephone at 571–
272–4097.
SUPPLEMENTARY INFORMATION:
Executive Summary
Pursuant to 35 U.S.C. 2(b)(2)(D), the
Office governs ‘‘the recognition and
conduct of agents, attorneys, or other
persons representing applicants or other
parties before the Office.’’ The Office
also has the authority to suspend or
exclude from practice before the Office
any practitioner who ‘‘is shown 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 this title.’’ 35
U.S.C. 32. Pursuant to the authority
provided in sections 2(b)(2)(D) and 32 of
Title 35, practitioners representing
parties in patent, trademark and other
non-patent matters presently are
required to conform to the Patent and
Trademark Office Code of Professional
Responsibility set forth in 37 CFR 10.20
through 10.112. These rules have been
in place since 1985 and are based on the
ABA Model Code of Professional
Responsibility. See 50 FR 5158
(February 6, 1985). Since that time, the
vast majority of State bars in the United
States have adopted substantive
disciplinary rules based on the newer
ABA Model Rules of Professional
Conduct. As noted below, the Office
believes individuals representing others
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before the Office will benefit from
modernization of the regulations
governing professional conduct before
the Office and harmonization of these
regulations with corresponding rules
adopted by bars in the States and the
District of Columbia.
The bars of 50 U.S. jurisdictions
including the District of Columbia have
adopted the ABA Model Rules of
Professional Conduct or a modification
thereof. This notice of proposed
rulemaking sets out proposed USPTO
Rules of Professional Conduct. The
changes from the existing USPTO Code
of Professional Responsibility are
intended to bring standards of ethical
practice before the Office into closer
conformity with the Rules of
Professional Conduct adopted by nearly
all States and the District of Columbia,
while addressing circumstances
particular to practice before the Office.
By adopting professional conduct rules
consistent with the ABA Model Rules
and the professional responsibility rules
of 50 U.S. jurisdictions, the USPTO both
would provide attorneys with consistent
professional conduct standards, and
would provide practitioners with large
bodies of both case law and opinions
written by disciplinary authorities that
have adopted the ABA Model Rules of
Professional Conduct. At this time,
nearly 42,000 individuals are registered
practitioners, of whom at least 75% are
attorneys. The registered patent
attorneys have offices located in all fifty
States, the District of Columbia, and
more than forty foreign countries. In
addition to registered patent attorneys,
any attorney who is a member in good
standing of the bar of the highest court
of a State, territory or possession of the
United States is eligible to practice
before the Office in trademark and other
non-patent matters, without becoming a
registered practitioner. 5 U.S.C. 500(b);
37 CFR 11.14. The attorneys who appear
before the Office are subject to these
rules as well. 37 CFR 11.19.
A body of precedent specific to
practice before the USPTO will develop
as disciplinary matters brought under
the USPTO Rules of Professional
Conduct progress through the USPTO
and the Federal Courts. In the absence
of binding USPTO-specific precedent,
practitioners may refer to various
sources for guidance. For example, it is
expected that precedent based on the
current Patent and Trademark Office
Code of Professional Responsibility will
assist interpretation of professional
conduct standards under the proposed
USPTO Rules of Professional Conduct.
A practitioner also may refer to the
Comments and Annotations to the ABA
Model Rules of Professional Conduct for
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guidance as to how to interpret the
equivalent USPTO Rules of Professional
Conduct. Additionally, relevant
guidance may be provided by opinions
issued by State bars and disciplinary
decisions based on similar professional
conduct rules in the States. Such
guidance is not binding precedent
relative to USPTO Rules of Professional
Conduct, but it may provide a useful
tool in interpreting the rules while a
larger body of USPTO-specific
precedent is established.
This rulemaking benefits and reduces
costs for most practitioners by clarifying
and streamlining their professional
responsibility obligations. With this
rulemaking, the USPTO would be
adopting professional conduct rules
consistent with the ABA Model Rules
and the professional responsibility rules
already followed by 50 U.S.
jurisdictions, i.e., the District of
Columbia and 49 States, excluding
California. Further, any change is not a
significant deviation from rules of
professional conduct for practitioners
that are already required by the Office.
Table 1 shows the principal sources of
the rules proposed for the USPTO Rules
of Professional Conduct. In general,
numbering of the USPTO Rules of
Professional Conduct largely track
numbering of the ABA Model Rules of
Professional Conduct. For example,
USPTO Rule of Professional Conduct
11.101 parallels ABA Model Rule of
Professional Conduct 1.1; USPTO Rule
of Professional Conduct 11.102 parallels
ABA Model Rule of Professional
Conduct 1.2; USPTO Rule of
Professional Conduct 11.201 parallels
ABA Model Rule of Professional
Conduct 2.1; et cetera. The discussion
below highlights instances where the
USPTO Rules of Professional Conduct
diverge from the ABA Model Rules of
Professional Conduct.
The proposed USPTO Rules of
Professional Conduct reserve or decline
to implement certain provisions set
forth in the ABA Model Rules of
Professional Conduct. For example, the
ABA Model Rules set forth specific
provisions concerning domestic
relations or criminal practice that do not
appear in the proposed USPTO Rules of
Professional Responsibility. See, e.g.,
sections 11.102, 11.105(d), 11.108(g),
11.108(j), 11.301, 11.303(a)(3), 11.306,
11.308 and 11.704(c). Conduct that
would violate an unadopted provision
might nevertheless also violate an
adopted provision (e.g., the conduct
might also violate the broader
obligations under section 11.804 of the
proposed USPTO Rules of Professional
Conduct). In addition, a licensed
attorney is subject to the professional
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conduct rules of appropriate State
licensing authorities, as well as of any
courts before which the attorney
practices. Failure to comply with those
rules may lead to disciplinary action
against the practitioner by the
appropriate State bar or court and, in
turn, possible reciprocal action against
the practitioner by the USPTO. See 37
CFR 11.24 and 11.804(h).
In August 2012, the ABA House of
Delegates approved revisions to the
ABA Model Rules of Professional
Conduct recommended by the ABA
Commission on Ethics 20/20.
See https://www.americanbar.org/
content/dam/aba/administrative/
ethics_2020/20120808_house_action_
compilation_redline_105af.authcheckdam.pdf. These revisions
have not been incorporated into these
proposed rules since the states have not
adopted those changes at this time.
However, comments are solicited as to
whether those changes should be
incorporated into the USPTO Rules of
Professional Conduct.
The Office does not propose any
change to the preamble to section 11.1.
This preamble provides in part: ‘‘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.’’ Attorneys who practice
before the Office are subject to
professional conduct rules established
by the Office as well as the appropriate
State bars.
The Office adopted rules governing
the conduct of disciplinary
investigations in 2008. See 73 FR 47650
(August 14, 2008). Experience under
these rules has demonstrated areas in
which the rules could be clarified.
Accordingly, the Office also proposes
revisions to existing rules set forth at 37
CFR 11.19, 11.20, 11.22, 11.32, 11.34,
11.35 and 11.54. Finally, the Office
proposes incorporating the survey rule,
currently set forth at 37 CFR 10.11, as
section 11.11(a)(2).
Discussion of Specific Rules
Section 1.4(d)(4) would be corrected
by deleting the reference to section
11.804(b)(9), which does not exist.
Sections 1.21(a)(7) and (a)(8) would
be deleted since the annual practitioner
maintenance fee is proposed to be
removed by this rule package. The
Office has published a Notice of
Proposed Rulemaking, Setting and
Adjusting Patent Fees, 77 FR 55028,
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55082, proposing to adjust the
practitioner maintenance fee to $120,
and noting elsewhere in the rulemaking
materials that the Office has suspended
collection of those fees, making total
collections $0. The Office now proposes
to remove this practitioner maintenance
fee which is set forth in 11.8(d).
Section 2.2(c) would be revised to
delete the reference to part 10 of this
chapter, which would be removed and
reserved.
Section 7.25(a) would be revised to
delete the reference to part 10 of this
chapter, which would be removed and
reserved.
Section 11.1 would set out definitions
of terms used in the USPTO Rules of
Professional Conduct. The definitions of
mandatory disciplinary rule and matter
have been deleted; the definitions of
fraud or fraudulent and practitioner
have been revised; and the terms
confirmed in writing, firm or law firm,
informed consent, law-related services,
partner, person, reasonable belief or
reasonably believes, reasonably should
know, screened, tribunal, and writing or
written would be newly defined. The
definition of practitioner would be
updated to refer to section 11.14 rather
than section 10.14, and to refer to
sections 11.14(a), (b) and (c) rather than
sections 11.14(b), (c) and (e). The new
definitions generally comport to
definitions set forth in the ABA Model
Rules of Professional Conduct.
However, the definition of fraud or
fraudulent used in the ABA Model
Rules has not been adopted. Instead, the
Office believes a uniform definition
based on common law should apply to
all individuals subject to the USPTO
Rules of Professional Conduct.
Accordingly, the definition of common
law fraud is based on the definition
discussed by the United States Court of
Appeals for the Federal Circuit. See
Unitherm Food Systems, Inc. v. SwiftEkrich, Inc., 375 F.3d 1341, 1358 (Fed.
Cir. 2004); In re Spalding Sports
Worldwide, Inc., 203 F.3d 800, 807 (Fed.
Cir. 2000). Further, in the definition of
tribunal, the reference to ‘‘the Office’’
includes those persons or entities acting
in an adjudicative capacity.
Section 11.2(c) would be revised to
delete redundant language.
Section 11.2(d) would be revised to
clarify that a party dissatisfied with a
final decision of the OED Director
regarding enrollment or recognition
must exhaust administrative remedies
before seeking relief under the
Administrative Procedure Act, 5 U.S.C.
551 et seq.
Section 11.2(e) would be revised to
clarify that a party dissatisfied with an
action or notice of the OED Director
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during or at the conclusion of a
disciplinary investigation must exhaust
administrative remedies before seeking
relief under the Administrative
Procedure Act, 5 U.S.C. 551 et seq.
Section 11.8(d) would be reserved.
The USPTO is deleting reference to an
annual practitioner maintenance fee.
Section 11.11 would be revised to
change the language ‘‘registered attorney
or agent’’ to ‘‘registered practitioner’’
and add the term ‘‘registered’’ as
appropriate.
Section 11.11(a) and (b) would be
revised to substantially incorporate the
provisions currently set forth in 37 CFR
10.11. Specifically, the current
provisions of section 11.11(a) would
appear as section 11.11(a)(1) and the
current provisions of section 10.11
would appear as section 11.11(a)(2).
Additionally, section 11.11(b) would be
revised to provide that a practitioner
failing to comply with section
11.11(a)(2) would be placed on
administrative suspension, rather than
removed from the register as set forth in
section 10.11. Additionally, section
11.11(b)(1) would be revised to delete
reference to section 11.8(d). Also,
section 11.11(b)(4) would be deleted
and reserved since an annual
practitioner maintenance fee would be
deleted by this rules package.
Section 11.11(c) would be revised to
change the reference to the ‘‘Mandatory
Disciplinary Rules’’ to the ‘‘USPTO
Rules of Professional Conduct.’’ Section
11.11(c) would also be revised to delete
reference to an annual practitioner
maintenance fee.
Section 11.11(d) would be revised by
updating the previous reference to
section 10.40 to refer to section 11.116,
which, with this rulemaking, would
include provisions related to
withdrawal from representation. Section
11.11(d) would also be revised to delete
reference to an annual practitioner
maintenance fee. Sections 11.11(d)(2)
and (d)(4) are deleted and reserved since
they are directed to an annual
practitioner maintenance fee.
Section 11.11(e) would be revised to
update the reference to the ‘‘Mandatory
Disciplinary Rules’’ to read ‘‘USPTO
Rules of Professional Conduct.’’
Section 11.11(f) would be revised to
remove reference to sections 1.21(a)(7)(i)
and (a)(8)(i) which provide for annual
practitioner maintenance fees.
Section 11.19(a) would be revised to
expressly provide jurisdiction over a
person not registered or recognized to
practice before the Office if the person
provides or offers to provide any legal
services before the Office. This change
is consistent with the USPTO’s statutory
and inherent authority to regulate
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practice before the Office, and it is
consistent with the second sentence of
ABA Model Rule of Professional
Conduct 8.5(a).
Section 11.20(a)(4) would be revised
to clarify that disciplinary sanctions that
may be imposed upon revocation of
probation are not necessarily limited to
the remainder of the probation period.
Section 11.20(b) would be revised to
more clearly set forth conditions that
may be imposed with discipline.
Section 11.21 would be revised to
update the reference to the ‘‘Mandatory
Disciplinary Rules’’ to read ‘‘USPTO
Rules of Professional Conduct.’’
Section 11.22 would be revised to
change the title to ‘‘Disciplinary
Investigations’’ for clarification.
Section 11.22(f)(2) would be revised
to update the reference to the
‘‘Mandatory Disciplinary Rules’’ to read
‘‘USPTO Rules of Professional
Conduct.’’
Section 11.22(i) would be revised to
correct a technical error in the heading.
Specifically, the reference to a warning
letter in the heading could mistakenly
be viewed as indicating that issuance of
a warning means at least one of the
conditions set forth in that section
apply. Indeed, a warning may be issued
in situations where, for example, there
is sufficient evidence to conclude that
there is probable cause to believe that
grounds exist for discipline. However,
in a situation where a potential
violation of the disciplinary rules is
minor in nature or was not willful, it
often is in the interest of the Office,
practitioners, and the public to resolve
the matter with a warning rather than a
formal disciplinary action.
Section 11.24(e) would be revised to
make a technical correction.
Specifically, the previous reference to
37 CFR 10.23 would be updated to refer
to new section 11.804.
Section 11.25(a) would be revised to
update the reference to the ‘‘Mandatory
Disciplinary Rules’’ to read ‘‘USPTO
Rules of Professional Conduct.’’
Section 11.32 would be revised to
clarify that the Director of the Office of
Enrollment and Discipline has the
authority to exercise discretion in
referring matters to the Committee on
Discipline and in recommending
settlement or issuing a warning in
matters wherein the Committee on
Discipline has made a probable cause
determination. The section also would
be revised to make a technical
correction by deleting the reference to
sections 11.19(b)(3) through (5), which
do not exist.
Section 11.34 would be revised to
incorporate several technical
corrections. Specifically, section
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11.34(a) would be revised to eliminate
an erroneous reference to section
11.25(b)(4). The requirements set forth
in section 11.34 apply to complaints
filed in disciplinary proceedings filed
under sections 11.24, 11.25 and 11.32.
The revision to section 11.34(a)(1)
clarifies that an individual other than a
‘‘practitioner’’ may be a respondent. The
revision to section 11.34(b) updates the
reference to the ‘‘Mandatory
Disciplinary Rules’’ to read ‘‘USPTO
Rules of Professional Conduct.’’
Section 11.35(a)(2)(ii) and (a)(4)(ii)
would be revised by changing the term
‘‘a nonregistered practitioner’’ to ‘‘not
registered.’’ The section would now
specify the service address for an
individual subject to the Office’s
disciplinary jurisdiction who does not
meet the definition of ‘‘practitioner’’ set
forth in section 11.1.
Section 11.54(a)(2) and (b) would be
revised to clarify that an initial decision
of the hearing officer may impose
conditions deemed appropriate under
the circumstances, and should explain
the reason for probation and any
conditions imposed with discipline.
Section 11.58(b)(2) would be revised
to update the reference to section 10.40
to refer to section 11.116.
Section 11.58(f)(1)(ii) would be
revised to update the reference to the
‘‘Mandatory Disciplinary Rules’’ to read
‘‘USPTO Rules of Professional Conduct’’
and to delete reference to section
10.20(b).
Section 11.61 would be deleted and
reserved. A savings clause would be
added at the end of Part 11.
USPTO Rules of Professional Conduct
Section 11.101 would address the
requirement that practitioners provide
competent representation to a client.
Consistent with the provisions of 37
CFR 11.7, this rule acknowledges that
competent representation in patent
matters requires scientific and technical
knowledge, skill, thoroughness and
preparation as well as legal knowledge,
skill, thoroughness and preparation, and
otherwise corresponds to the ABA
Model Rule of Professional Conduct 1.1.
Section 11.102 would provide for the
scope of representation of a client by a
practitioner and the allocation of
authority between the client and the
practitioner. This section corresponds to
the ABA Model Rule of Professional
Conduct 1.2. However, the USPTO is
declining to enact the substance of the
last sentence of ABA Model Rule of
Professional Conduct 1.2(a) as the
USPTO does not regulate criminal law
practice. Nonetheless, a patent attorney
who engages in the practice of criminal
law is subject to the disciplinary rules
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of the appropriate State and Court
authorities. Failure to comply with
those rules may lead to disciplinary
action against the practitioner and, in
turn, possible reciprocal action against
the practitioner by the USPTO. See 37
CFR 11.24 and 11.804(h). Moreover, the
lack of a specific disciplinary rule
concerning particular conduct should
not be viewed as suggesting that the
conduct would not violate one of the
USPTO Rules of Professional Conduct.
Section 11.102(b) is reserved as the
USPTO is declining to enact a specific
rule regarding a practitioner’s
endorsement of a client’s view or
activities. However, the USPTO is not
implying that a practitioner’s
representation of a client constitutes an
endorsement of the client’s political,
economic, social, or moral views or
activities.
Section 11.103 would address a
practitioner’s duty to act with
reasonable diligence and promptness in
representing a client. This rule
corresponds to the ABA Model Rule of
Professional Conduct 1.3.
Section 11.104 would address the
practitioner’s duty to communicate with
the client. This rule corresponds to the
ABA Model Rule of Professional
Conduct 1.4. As in prior § 10.23(c)(8),
under this rule a practitioner should not
fail to timely and adequately inform a
client or former client of
correspondence received from the Office
in a proceeding before the Office or from
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 address the
practitioner’s responsibilities regarding
fees. This rule corresponds to the ABA
Model Rule of Professional Conduct 1.5.
Nothing in paragraph (c) should be
construed to prohibit practitioners
gaining proprietary interests in patents
under section 11.108(i)(3).
Section 11.105(d) is reserved as the
USPTO is declining to enact a specific
rule regarding contingent fee
arrangements for domestic relations and
criminal matters.
Section 11.106 would address the
practitioner’s responsibilities regarding
maintaining confidentiality of
information. This section generally
corresponds to the ABA Model Rule of
Professional Conduct 1.6, but it includes
exceptions in the case of inequitable
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conduct before the Office in addition to
crimes and fraud.
Section 11.106(b)(3) would state that
a practitioner may reveal information
relating to the representation of a client
to the extent the practitioner reasonably
believes necessary to prevent, mitigate
or rectify substantial injury to the
financial interests or property of another
that is reasonably certain to result or has
resulted from inequitable conduct
before the Office.
Section 11.106(c) would additionally
provide that regardless of the
confidentiality requirements of Section
11.106(a), a practitioner is required to
disclose to the Office all information
necessary to comply with the duty of
disclosure rules of this subchapter in
practice before the Office.
Section 11.107 would prohibit a
practitioner from representing a client if
the representation involves a concurrent
conflict of interest. This rule
corresponds to the ABA Model Rule of
Professional Conduct 1.7. See also, 37
CFR 10.66.
Section 11.108 would address
conflicts of interest for current clients
and specific rules, including rules
regarding practitioners entering into
business transactions with clients, the
use of information by a practitioner
relating to representation of a client,
gifts between the practitioner and a
client, literary rights based on
information relating to representation of
a client, a practitioner’s provision of
financial assistance to the client,
compensation for services by a third
party, aggregate settlement of claims
where the practitioner represents two or
more clients in a similar matter,
agreements between the client and
practitioner limiting liability of the
practitioner, and the practitioner’s
acquiring a proprietary interest in the
matter. This rule corresponds to the
ABA Model Rule of Professional
Conduct 1.8.
Section 11.108(e) would provide that
a practitioner shall not provide financial
assistance to a client in connection with
pending or contemplated litigation or
proceeding before the Office, except that
a practitioner may advance court or
tribunal costs and expenses of either
litigation or a proceeding before the
Office and a practitioner representing an
indigent client may pay court or
tribunal costs and expenses of litigation
or a proceeding before the Office.
Section 11.108(g) differs from ABA
Model Rule of Professional Conduct
1.8(g) in that the USPTO is declining to
enact the portion of the rule relating to
representation of clients in criminal
matters and the corresponding
regulation of multiple clients agreeing to
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an aggregated agreement as to guilty or
nolo contendere pleas.
Section 11.108(i) differs from ABA
Model Rule of Professional Conduct
1.8(i) in that the USPTO would provide
that a practitioner may, in a patent case,
take an interest in the patent as part or
all of his or her fee. See 37 CFR
10.64(a)(3).
Section 11.108(j) is reserved. The
USPTO is declining to enact a rule that
would specifically address sexual
relations between practitioners and
clients. Because of the fiduciary duty to
clients, combining a professional
relationship with any intimate personal
relationship may raise concerns about
conflict of interest and impairment of
the judgment of both practitioner and
client. To the extent warranted, such
conduct may be investigated under
more general provisions (e.g., 37 CFR
11.804).
Section 11.109 would address
conflicts of interest and duties to former
clients. This rule corresponds to the
ABA Model Rule of Professional
Conduct 1.9.
Section 11.110 would address the
imputation of conflicts of interest for
practitioners in the same firm. This rule
corresponds to the ABA Model Rule of
Professional Conduct 1.10.
Section 11.111 would address former
or current Federal Government
employees. This rule deals with
practitioners who leave public office
and enter other employment. It applies
to judges and their law clerks as well as
to practitioners who act in other
capacities. The USPTO is declining to
enact ABA Model Rule of Professional
Conduct 1.11 and is instead enacting its
own rule regarding successive
government and private employment,
namely, that a practitioner who is a
former or current Federal Government
employee shall not engage in any
conduct which is contrary to applicable
Federal ethics laws, including conflict
of interest statutes and regulations of the
department, agency or commission
formerly or currently employing said
practitioner. See, e.g., 18 U.S.C. 207.
A practitioner representing a
government agency, whether employed
or specially retained by the government,
is subject to the USPTO Rules of
Professional Conduct, including the
prohibition against representing adverse
interests stated in section 11.107 and
the protections afforded former clients
in section 11.109. In addition, such a
practitioner is subject to this section and
to statutes and regulations, as well as
government policies, concerning
conflicts of interest and other Federal
ethics requirements.
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Section 11.112 would provide specific
rules regarding the imputation of
conflicts of interest for practitioners
who were former judges, arbitrators,
mediators or third-party neutrals. This
rule corresponds to the ABA Model
Rule of Professional Conduct 1.12.
Section 11.113 would provide specific
rules regarding a practitioner’s
responsibilities when representing an
organization as a client. This rule
corresponds to the ABA Model Rule of
Professional Conduct 1.13.
Section 11.114 would provide specific
rules regarding a practitioner’s
responsibilities when representing a
client with diminished capacity. This
rule corresponds to the ABA Model
Rule of Professional Conduct 1.14.
Section 11.115 would provide specific
rules regarding a practitioner’s
responsibilities regarding safekeeping of
client property and maintenance of
financial records. This rule corresponds
to the ABA Model Rule of Professional
Conduct 1.15.
Section 11.115(a) would require that
funds be kept in a separate client or
third person account maintained in the
state where the practitioner’s office is
situated, or elsewhere with the consent
of the client or third person. The
USPTO bar includes practitioners who
are located outside the United States.
The USPTO rules would propose that
where the practitioner’s office is
situated in a foreign country, funds shall
be kept in a separate account
maintained in that foreign country or
elsewhere with the consent of the client
or third person. See also, 37 CFR
10.112.
Sections 11.115(b)–(e) correspond to
the ABA Model Rules of Professional
Conduct 1.15(b)–(e).
Section 11.115(f) would require that
the type of records specified by section
11.115(a) would include those records
consistent with (i) the ABA Model Rules
for Client Trust Account Records; (ii) for
lawyer practitioners, the types of
records that are maintained meet the
recordkeeping requirements of a state in
which the lawyer is licensed and in
good standing, the recordkeeping
requirements of the state where the
lawyer’s principal place of business is
located, or the recordkeeping
requirements of this section; and/or (iii)
for patent agents and persons granted
limited recognition who are employed
in the United States by a law firm, the
types of records that are maintained
meet the recordkeeping requirements of
the state where at least one lawyer of the
law firm is licensed and in good
standing, the recordkeeping
requirements of the state where the law
firm’s principal place of business is
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located, or the recordkeeping
requirements of this section. According
to the ABA Standing Committee on
Client Protection, the ABA Model Rules
for Client Trust Account Records
responds to a number of changes in
banking and business practices that may
have left lawyers ‘‘inadvertently
running afoul of their jurisdiction’s
rules of professional conduct.’’ The new
rule addresses recordkeeping
requirements after electronic transfers
and clarifies who can authorize such
transfers. The proposed rule also
accounts for the Check Clearing for the
21st Century Act, which allows banks to
substitute electronic images of checks
for canceled checks. The rule also
addresses the increasing prevalence of
electronic banking and wire transfers or
electronic transfers of funds, for which
banks do not routinely provide specific
confirmation. The proposed rule
acknowledges those issues, addressing
recordkeeping requirements after
electronic transfers and clarifying who
can authorize such transfers, record
maintenance and safeguards required
for electronic record storage systems.
The rule also details minimum
safeguards practitioners must
implement when they allow nonpractitioner employees to access client
trust accounts; addresses partner
responsibilities for storage of and access
to client trust account records when
partnerships are dissolved or when a
practice is sold; and allows practitioners
to maintain client trust account records
in electronic, photographic, computer or
other media or paper format, either at
the practitioner’s office or at an off-site
storage facility, but it requires that
records stored off-site be readily
accessible to the practitioner and that
the practitioner be able to produce and
print them upon request.
Section 11.115(f) would require a
practitioner to keep the same records as
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 Model 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 periodic trial balances,
and insufficient fund check reporting.
See Wright v. Virginia State Bar, 357
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SE.2d 518, 519 (Va. 1987); In re Librizzi,
569 A.2d 257, 258–259 (N.J. 1990); In re
Heffernan, 351 NW.2d 13, 14 (Minn.
1984); In re Austin, 333 NW.2d 633, 634
(Minn. 1983); and In re Kennedy, 442
A.2d 79, 84–85 (Del. 1982). Thus,
§ 11.115(f) clarifies recordkeeping
requirements that currently apply to all
practitioners through section
10.112(c)(3).
Section 11.116 would provide rules
regarding a practitioner’s
responsibilities in declining or
terminating representation of a client.
This rule corresponds to the ABA Model
Rule of Professional Conduct 1.16.
Section 11.117 would provide rules
regarding a practitioner’s
responsibilities when buying or selling
a law practice or an area of law practice,
including good will. This rule
corresponds to the ABA Model Rule of
Professional Conduct 1.17.
Section 11.117(b) differs from ABA
Model Rule of Professional Conduct
1.17(b) in that the USPTO is proposing
that to the extent the practice or the area
of practice to be sold involves patent
proceedings before the Office, that
practice or area of practice may be sold
only to one or more registered
practitioners or law firms that includes
at least one registered practitioner.
Section 11.118 would provide rules
regarding a practitioner’s
responsibilities to prospective clients.
This rule corresponds to the ABA Model
Rule of Professional Conduct 1.18.
Sections 11.119–11.200 are reserved.
Section 11.201 would provide a rule
addressing the practitioner’s role in
providing advice to a client and
corresponds to the ABA Model Rule of
Professional Conduct 2.1. However, the
USPTO is declining to enact the
substance of the last sentence of ABA
Model Rule of Professional Conduct 2.1,
which provides that in representing a
client, a practitioner may refer to not
only legal considerations, but also other
factors. However, by not enacting the
last sentence of Rule 2.1, the USPTO is
not implying that a practitioner may not
refer to other considerations such as
moral, economic, social and political
factors that may be relevant to the
client’s situation.
Section 11.202 is reserved. ABA
Model Rule of Professional Conduct 2.2
was deleted in 2002 as the ABA no
longer treats intermediation and the
conflict-of-interest issues it raises
separately from any other multirepresentation conflicts. Issues relating
to practitioners acting as intermediaries
are dealt with under § 11.107.
Section 11.203 would articulate the
ethical standards for circumstances
where a practitioner provides an
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evaluation of a matter affecting a client
for the use by a third party. This rule
corresponds to the ABA Model Rule of
Professional Conduct 2.3. It should be
noted that with respect to evaluation
information under § 11.203 a
practitioner is required to disclose
information in compliance with the
duty of disclosures provisions of this
subchapter subject to disclosure to the
USPTO pursuant to § 11.106(c).
Section 11.204 would provide a rule
addressing the practitioner’s role in
serving as a third-party neutral, whether
as an arbitrator, a mediator or in such
other capacity, and corresponds to the
ABA Model Rule of Professional
Conduct 2.4.
Sections 11.205–11.300 are reserved.
Section 11.301 would require that a
practitioner present well-grounded
positions. The advocate has a duty to
use legal procedure for the fullest
benefit of the client’s cause. The
advocate also has a duty not to abuse
the legal procedure. This rule
corresponds to the ABA Model Rule of
Professional Conduct 3.1; however, the
USPTO is declining to enact the ABA
Model Rule requirement that a lawyer
for the defendant in a criminal
proceeding may defend the proceeding
by requiring that every element of the
case be established. The USPTO
proposes deleting the specific reference
because it is a professional conduct rule
limited to the practice of criminal law.
Section 11.302 would require that
practitioners diligently pursue litigation
and Office proceedings. This rule
corresponds to the ABA Model Rule of
Professional Conduct 3.2, adding that a
practitioner shall make reasonable
efforts to expedite proceedings before
the Office as well as in litigated matters.
Section 11.303 would continue the
duty of candor to a tribunal while
specifying its application under
different situations, and corresponds to
the ABA Model Rule of Professional
Conduct 3.3. Section 11.303(a)(2) sets
forth the duty to disclose to the tribunal
legal authority in the controlling
jurisdiction known to the practitioner to
be directly adverse to the position of the
client and not disclosed by opposing
counsel in an inter partes proceeding. It
also sets forth this duty for an ex parte
proceeding before the Office where the
legal authority is not otherwise
disclosed. 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
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taken by the practitioner in good faith.
Section 11.303(a)(3) does not include a
reference to testimony of a defendant in
a criminal matter, as set forth in ABA
Model Rule 3.3(a)(3).
Section 11.303(e) would specify that
in a proceeding before the Office, a
practitioner must disclose information
necessary to comply with the duty of
disclosure provisions of this subchapter
in practice before the Office. The
practitioner’s responsibility to present
the client’s case with persuasive force is
qualified by the practitioner’s duty of
candor to the tribunal. See Lipman v.
Dickinson, 174 F.3d 1363, 50 USPQ2d
1490 (Fed. Cir. 1999).
Section 11.304 would contemplate
that evidence be marshaled fairly in a
case before a tribunal, including in ex
parte and inter partes proceedings
before the Office. This rule corresponds
to the ABA Model Rule of Professional
Conduct 3.4, but it clarifies that the
duties of the practitioner are not limited
to trial matters but also to any
proceeding before a tribunal.
Section 11.305 would contemplate
that practitioners act with impartiality
and decorum in ex parte and inter
partes proceedings. This rule
corresponds to the ABA Model Rule of
Professional Conduct 3.5, but it clarifies
that it is improper to seek to improperly
influence a hearing officer,
administrative law judge, administrative
patent judge, administrative trademark
judge, employee or officer of the Office.
Section 11.305(c) is reserved as the
USPTO is declining to enact a specific
rule regarding a practitioner’s
communication with a juror or
prospective juror. Nonetheless, a
practitioner who engages in the practice
of improper communication with a juror
or prospective juror is subject to
criminal laws and the disciplinary rules
of the appropriate State and Court
authorities. Failure to comply with
those laws and rules may lead to
disciplinary action against the
practitioner and, in turn, possible
reciprocal action against the practitioner
by the USPTO. See 37 CFR 11.24 and
11.804(h). Moreover, the lack of a
specific disciplinary rule concerning
particular conduct should not be viewed
as suggesting that the conduct would
not violate one or more of the USPTO
Rules of Professional Conduct (e.g.,
§ 11.804).
Section 11.306 is reserved as the
USPTO is declining to enact a specific
rule regarding trial publicity.
Nonetheless, a practitioner who engages
in improper conduct relating to trial
publicity is subject to the disciplinary
rules of the appropriate State and Court
authorities. Failure to comply with
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those rules may lead to disciplinary
action against the practitioner and, in
turn, possible reciprocal action against
the practitioner by the USPTO. See 37
CFR 11.24 and 11.804(h). Moreover, the
lack of a specific disciplinary rule
concerning particular conduct should
not be viewed as suggesting that the
conduct would not violate one or more
of the USPTO Rules of Professional
Conduct (e.g., § 11.804).
Section 11.307 would generally
proscribe a practitioner from acting as
an 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. This rule
corresponds to the ABA Model Rule of
Professional Conduct 3.7.
Section 11.308 is reserved. ABA
Model Rule of Professional Conduct 3.8
addresses the ‘‘Special Responsibilities
of a Prosecutor’’ in the context of
criminal proceedings. Because practice
before the Office does not involve
criminal proceedings, the content of
ABA Model Rule of Professional
Conduct 3.8 is not being proposed.
Nevertheless, an attorney who is both a
practitioner before the Office and a
criminal prosecutor may be subject to
both the Office and other professional
conduct rules. Discipline by a duly
constituted authority of a State, the
United States, or the country in which
a practitioner resides may lead to
reciprocal disciplinary action by the
Office. See 37 CFR 11.24. Moreover, the
lack of a specific disciplinary rule
concerning particular conduct should
not be viewed as suggesting that the
conduct would not violate one or more
of the USPTO Rules of Professional
Conduct (e.g., § 11.804).
Section 11.309 would regulate a
practitioner’s conduct when he or she is
representing a client in a nonadjudicative proceeding before an
administrative agency, such as the
Office. This rule corresponds to the
ABA Model Rule of Professional
Conduct 3.9.
Sections 11.310–11.400 are reserved.
Section 11.401 would require a
practitioner to be truthful when dealing
with others on a client’s behalf. This
rule corresponds to the ABA Model
Rule of Professional Conduct 4.1.
Section 11.402 would provide a
standard for communicating with a
represented party. Section 11.402(a)
corresponds to the ABA Model Rule of
Professional Conduct 4.2. Section
11.402(a) differs from ABA Model Rule
of Professional Conduct 4.2 in that the
proposed rule adds that in addition to
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a practitioner being authorized to
communicate with a represented party
when the practitioner is authorized by
law or a court order, a practitioner may
communicate with a represented party
when the practitioner is authorized by
rule to do so.
Section 11.402(b) is based on District
of Columbia Rule of Professional
Conduct 4.2(b) and would recognize
that special considerations come into
play when the Federal Government,
including the Office, is involved in a
lawsuit. It would permit
communications with those in
Government having the authority to
redress such grievances (but not with
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
§ 11.402(b) in the case of
communications with non-party
employees.
Section 11.402(b) does not permit a
practitioner to bypass 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
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 11.403 would provide a
standard for communicating with an
unrepresented person, particularly one
not experienced in dealing with legal
matters. This rule corresponds to the
ABA Model Rule of Professional
Conduct 4.3.
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. The rule also
provides guidance to practitioners
regarding the receipt of inadvertently
sent documents. This rule corresponds
to the ABA Model Rule of Professional
Conduct 4.4.
Sections 11.405–11.500 are reserved.
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Section 11.501 would set forth the
responsibilities of a partner or
supervisory practitioner. This rule
corresponds to the ABA Model Rule of
Professional Conduct 5.1.
Section 11.502 would set forth the
ethical and professional conduct
responsibilities of a subordinate
practitioner. This rule corresponds to
the ABA Model Rule of Professional
Conduct 5.2.
Section 11.503 would set forth a
practitioner’s responsibilities regarding
non-practitioner assistants. Practitioners
generally employ assistants in their
practice, including secretaries, technical
advisors, student associates,
draftspersons, investigators, law student
interns, and paraprofessionals. This rule
specifies the practitioner’s
responsibilities in supervising nonpractitioner assistants and corresponds
to the ABA Model Rule of Professional
Conduct 5.3.
Section 11.504 would protect the
professional independence of a
practitioner by providing traditional
limitations on sharing fees with nonpractitioners. This rule corresponds to
the ABA Model Rule of Professional
Conduct 5.4. (See also, 37 CFR 10.48,
10.49, 10.68)
Section 11.504(a)(4) would differ from
the ABA Model Rule in favor of District
of Columbia Rule of Professional
Conduct 5.4(a)(5). Section 11.504(a)(4)
permits a practitioner to share legal fees
with a nonprofit organization that
employed, retained, or recommended
employment of the practitioner in the
matter. A practitioner may decide to
contribute all or part of legal fees
recovered from the opposing party to
the nonprofit organization. Such a
contribution may or may not involve
fee-splitting, but when it does, the
prospect that the organization will
obtain all or part of the practitioner’s
fees does not inherently compromise the
practitioner’s professional
independence, whether the practitioner
is employed by the organization or was
only retained or recommended by it. A
practitioner who has agreed to share
legal fees with such an organization
remains obligated to exercise
professional judgment solely in the
client’s best interests. Moreover, feesplitting in these circumstances may
promote the financial viability of such
nonprofit organizations and facilitate
their public interest mission. Unlike the
corresponding provision of the ABA
Model Rules, this provision is not
limited to sharing of fees awarded by a
court because that restriction would
significantly interfere with settlement of
cases outside of court, without
significantly advancing the purpose of
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the exception. To prevent abuse, it
applies only if the nonprofit
organization has been recognized by the
Internal Revenue Service as an
organization described in Section
501(c)(3) of the Internal Revenue Code.
Section 11.505 would proscribe
practitioners from engaging in or aiding
the unauthorized practice of law. This
rule corresponds to the ABA Model
Rule of Professional Conduct 5.5(a). The
USPTO is declining to adopt the ABA
Model Rules regarding
multijurisdictional practice of law.
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 and registration
to practice before the USPTO sanctions
‘‘the performance of those services
which are reasonably necessary and
incident to the preparation and
prosecution of patent applications.’’
Sperry v. Florida, 373 U.S. 379, 386, 137
USPQ 578, 581 (1963). Thus, a
registered practitioner may practice in
patent matters before the Office
regardless of where they reside within
the United States.
It is noted that the USPTO registers
individuals, not law firms or
corporations, to practice in patent
matters before the Office. Thus, a
corporation is not authorized to practice
law and render legal services. Instead,
upon request and for a fee, the
corporation could cause a patent
application to be prepared by a
registered practitioner. See Lefkowitz v.
Napatco, 415 NE.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. For
example, 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 NE.2d 1177 (Ohio
1996). See Comm. on Professional
Ethics & Conduct v. Baker, 492 NW.2d
695,597 (Iowa 1992); see also People v.
Laden, 893 P.2d 771 (Colo. 1995);
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People v. Macy, 789 P.2d 188 (Colo.
1990); People v. Boyles, 591 P.2d 1315
(Colo. 1979); In re Discipio, 645 NE.2d
906 (Ill. 1994); In re Komar, 532 NE.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).
Section 11.505(b) would specifically
proscribe practice before the Office in
patent, trademark, or other non-patent
law if a practitioner is suspended,
excluded, or excluded on consent before
the Office. The rule would also
proscribe practice before the Office in
patent, trademark, or other non-patent
law if a practitioner has been transferred
to disability inactive status before the
Office, has been administratively
suspended before the Office, or is
administratively inactive before the
Office.
Section 11.505(c) would clarify that a
practitioner is prohibited from assisting
a person who is not a member of the bar
of a jurisdiction in the performance of
an activity that constitutes the
unauthorized practice of law, and from
assisting a person who is not registered
to practice before the Office in patent
matters in the unauthorized practice of
law before the Office.
Sections 11.505(d), like current
§ 10.47(b), would clarify that a
practitioner is prohibited from aiding a
suspended or excluded practitioner in
the practice of law before the Office.
Sections 11.505(e) would provide that
a practitioner is prohibited from aiding
a suspended or excluded practitioner in
the practice of law in any other
jurisdiction.
Section 11.505(f), consistent with
§ 11.14(b), would recognize that
individuals who are not attorneys but
who were recognized to practice before
the Office in trademark matters prior to
January 1, 1957, will continue to be
recognized as agents to continue
practice before the Office in trademark
matters and such practice by those
individuals is not the unauthorized
practice of trademark law before the
Office.
Section 11.506 would prohibit
agreements restricting rights to practice.
This rule corresponds to the ABA Model
Rule of Professional Conduct 5.6.
Section 11.507 would provide for a
practitioner being subject to the USPTO
Rules of Professional Conduct if the
practitioner provides law-related
services. This rule corresponds to the
ABA Model Rule of Professional
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Conduct 5.7. The definition of ‘‘lawrelated service’’ is set forth in § 11.1.
Sections 11.508–11.600 are reserved.
Section 11.601–11.700 are reserved.
The USPTO is declining to adopt the
ABA Model Rules regarding public
service. The USPTO recognizes that
every practitioner, regardless of
professional prominence or professional
workload, has a responsibility to
provide legal services to those unable to
pay and that every practitioner should
support all proper efforts to meet this
need for legal services. However,
attorney practitioners’ individual state
ethical rules should provide guidance
and regulations regarding their
respective duties to provide voluntary
pro bono service, accept court
appointed representation, and serve as
members of legal service and legal
reform organizations. The USPTO is
declining to add an increased regulatory
requirement on attorney practitioners.
Section 11.701 would govern all
communications about a practitioner’s
services, including advertising, and
corresponds to the ABA Model Rule of
Professional Conduct 7.1.
Section 11.702 would provide for
advertising by practitioners. This
section corresponds to the ABA Model
Rule of Professional Conduct 7.2.
However, the USPTO is declining to
enact the substance of ABA Model Rule
of Professional Conduct 7.2(b)(2) as the
USPTO does not currently regulate and
does not anticipate regulating lawyer
referral services.
Section 11.703 would address the
direct contact by a practitioner with a
prospective client known to need legal
services. This section corresponds to the
ABA Model Rule of Professional
Conduct 7.3.
Section 11.704 would permit a
practitioner to indicate areas of practice
in communications about the
practitioner’s services. Section 11.704(a)
corresponds to the ABA Model Rule of
Professional Conduct 7.4(a).
Section 11.704(b), as with current
§ 10.34, would continue the longestablished policy of the USPTO for the
designation of practitioners practicing
before the Office.
Section 11.704(c) is reserved as the
USPTO is declining to regulate the
communication of specialization in
Admiralty practice.
Section 11.704(d) corresponds to the
ABA Model Rule of Professional
Conduct 7.4(d).
Section 11.704(e) would provide
guidance to, and permit, an individual
granted limited recognition under § 11.9
to use the designation ‘‘Limited
Recognition’’ to indicate in
communications about the individual’s
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services that the individual, while not a
‘‘registered practitioner,’’ is authorized
to practice before the USPTO in patent
matters subject to the limitations in the
individual’s grant of limited recognition
under § 11.9.
Section 11.705 would regulate firm
names and letterheads. This section
corresponds to the ABA Model Rule of
Professional Conduct 7.5.
Section 11.705(b) is reserved as the
USPTO is declining to enact a specific
rule regarding law firms with offices in
more than one jurisdiction since the
USPTO encompasses one Federal
jurisdiction. However, the USPTO is not
implying that a law firm with offices in
more than one jurisdiction may violate
a State authority regulating this
conduct. Nonetheless, a practitioner
who engages in the improper use of firm
names and letterhead is subject to the
disciplinary rules of the appropriate
State and Court authorities. Failure to
comply with those rules may lead to
disciplinary action against the
practitioner and, in turn, possible
reciprocal action against the practitioner
by the USPTO. See 37 CFR 11.24 and
11.804(h). Moreover, the lack of a
specific disciplinary rule concerning
particular conduct should not be viewed
as suggesting that the conduct would
not violate one or more of the USPTO
Rules of Professional Conduct (e.g.,
§ 11.804).
Section 11.705(d) is reserved. The
USPTO declines to adopt ABA Model
Rule of Professional Conduct 7.5(d)
providing that practitioners may state or
imply that they practice in a partnership
or other organization only when that is
the fact. However, the USPTO is not
implying that practitioners may state or
imply that they practice in a partnership
or other organization if that is not the
fact. Nonetheless, a practitioner who
engages in the improper use of firm
names and letterhead is subject to the
disciplinary rules of the appropriate
State and Court authorities. Failure to
comply with those rules may lead to
disciplinary action against the
practitioner and, in turn, possible
reciprocal action against the practitioner
by the USPTO. See 37 CFR 11.24 and
11.804(h). Moreover, the lack of a
specific disciplinary rule concerning
particular conduct should not be viewed
as suggesting that the conduct would
not violate one or more of the USPTO
Rules of Professional Conduct (e.g.,
§ 11.804).
Section 11.706 is reserved as the
USPTO is declining to enact a specific
rule regarding political contributions to
obtain legal engagements or
appointments by judges. However, the
USPTO is not implying that a
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practitioner or law firm may accept a
government legal engagement or an
appointment by a judge if the
practitioner or law firm makes a
political contribution or solicits
political contributions for the purpose
of obtaining or being considered for that
type of legal engagement or
appointment. Nonetheless, a
practitioner who engages in this type of
practice is subject to the disciplinary
rules of the appropriate State and Court
authorities. Failure to comply with
those rules may lead to disciplinary
action against the practitioner and, in
turn, possible reciprocal action against
the practitioner by the USPTO. See 37
CFR 11.24 and 11.804(h). Moreover, the
lack of a specific disciplinary rule
concerning particular conduct should
not be viewed as suggesting that the
conduct would not violate one or more
of the USPTO Rules of Professional
Conduct.
Sections 11.707–11.800 are reserved.
Section 11.801 would impose the
same duty to persons seeking admission
to a bar as well as to practitioners
seeking registration or limited
recognition. This section corresponds to
the ABA Model Rule of Professional
Conduct 8.1. This section would clarify
that the section pertains to applicants
for registration or an applicant for
recognition to practice before the Office
and would conform to current USPTO
practice in §§ 11.6, 11.7, 11.9, 11.14 and
11.58.
If a person makes a material false
statement in connection with an
application for registration or
recognition, it may be the basis for
subsequent disciplinary action if the
person is admitted, and in any event it
may be relevant in a subsequent
application. The duty imposed by
§ 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 to
knowingly 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.
Moreover, Section 11.801(d) requires
practitioners to cooperate with the
Office of Enrollment and Discipline in
an investigation of any matter before it
and would continue the practice set
forth under former § 10.131(b).
Section 11.802 would require that a
practitioner not make a statement that
the practitioner knows to be false or
with reckless disregard as to its truth or
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falsity concerning the qualifications or
integrity of a judge, adjudicatory officer
or public legal officer, or of a candidate
for election or appointment to judicial
or legal office. This section corresponds
to the ABA Model Rule of Professional
Conduct 8.2. Government employees
and officers such as administrative
patent judges, administrative trademark
judges, patent examiners, trademark
examining attorneys, and petitions
examiners, perform judicial and quasijudicial functions. See, e.g., United
States v. Morgan, 313 U.S. 409 (1941);
Western Electric Co. v. Piezo
Technology, Inc., 860 F.2d 428 (Fed. Cir.
1988) (‘‘Patent examiners are quasijudicial officials.’’); see also,
Butterworth v. United States ex rel. Hoe,
112 U.S. 50, 67 (1884) (‘‘That it was
intended that the Commissioner of
Patents, in issuing or withholding
patents * * * should exercise quasijudicial functions, is apparent from the
nature of the examinations and decision
he is required to make.’’); Chamberlin v.
Isen, 779 F.2d 522, 524 (9th Cir. 1985)
(‘‘[I]t has long been recognized that PTO
employees perform a ‘quasi-judicial’
function in examining patent
applications.’’) Such employees and
officers are considered adjudicatory
officers.
Section 11.803 would require
reporting a violation of the Rules of
Professional Conduct. This section
corresponds to the ABA Model Rule of
Professional Conduct 8.3.
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. Consistent with
the current rule, § 10.24(a), a report
about misconduct may not be required
where it would involve violation of
§ 11.106(a). However, a practitioner
should encourage a client to consent to
disclosure where prosecution would not
substantially prejudice the client’s
interests. Section 11.803(c) does not
require disclosure of information
otherwise protected by § 11.106, or
information gained while participating
in an approved lawyers assistance
program. It should be noted that the
USPTO does not sanction any lawyer’s
assistance programs and the reference
thereto in § 11.803 is a reference to
lawyer’s assistance programs approved
by a relevant state authority.
Section 11.804 would address the
practice of providing for discipline
involving a variety of acts constituting
misconduct. Sections 11.804(a)–(f)
correspond to the ABA Model Rules of
Professional Conduct 8.4(a)–(f),
respectively. It is noted that § 10.23(c) of
the current Patent and Trademark Office
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Code of Professional Responsibility sets
forth specific examples of misconduct
that constitute a violation of the rules.
Because it is not possible to provide an
exhaustive list of actions that constitute
misconduct, Section 11.804 does not
carry forward these specific examples
into the USPTO Rules of Professional
Conduct. The decision not to set forth
specific examples of misconduct in the
rule, however, should not be construed
as an indication that the examples set
forth in § 10.23(c) represent acceptable
conduct under the USPTO Rules of
Professional Conduct.
Section 11.804(g) would specifically
address knowing assistance to an officer
or employee of the Office in conduct
that is a violation of applicable rules of
conduct or other law.
Section 11.804(h) would clearly set
forth that it is misconduct for a
practitioner to be publicly disciplined
on ethical grounds by any duly
constituted authority of (1) a State, (2)
the United States, or (3) the country in
which the practitioner resides. See 37
CFR 11.24.
Section 11.804(i) would clearly set
forth that it continues to be misconduct
for a practitioner to engage in conduct
that adversely reflects on the
practitioner’s fitness to practice before
the Office.
Section 11.805 is reserved. The
USPTO is declining to adopt the ABA
Model Rule regarding disciplinary
authority and choice of law. The
disciplinary jurisdiction of the Office is
set forth in section 11.19. The USPTO
Director has statutory, 35 U.S.C.
2(b)(2)(D) and 32, 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 practitioners,
including the authority to discipline
practitioners. 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).
Sections 11.806–11.900 are reserved.
Section 11.901 would contain the
following savings clauses: (a) A
disciplinary proceeding based on
conduct engaged in prior to the effective
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date of these regulations may be
instituted subsequent to such effective
date, if such conduct would continue to
justify disciplinary sanctions 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.
Section 41.5 would be revised to
make a technical correction.
Specifically, the previous reference to
section 10.40 has been updated to refer
to section 11.116.
TABLE 1—PRINCIPAL SOURCE OF
SECTIONS 11.101 THROUGH 11.804
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Section
Principal source
§ 11.101 .............
§ 11.102 .............
§ 11.103 .............
§ 11.104 .............
§ 11.105 .............
§ 11.106(a)–(b) ...
§ 11.106(c) .........
§ 11.107 .............
§ 11.108 .............
§ 11.109 .............
§ 11.110 .............
§ 11.111 .............
§ 11.112 .............
§ 11.113 .............
§ 11.114 .............
§ 11.115(a)–(e) ...
§ 11.115(f)(1) ......
§ 11.115(f)(2) ......
§ 11.115(f)(3) ......
§ 11.115(f)(4)–(5)
§ 11.116 .............
§ 11.117 .............
§ 11.118 .............
§ 11.201 .............
§ 11.203 .............
§ 11.204 .............
§ 11.301 .............
§ 11.302 .............
§ 11.303 .............
§ 11.304 .............
§ 11.305 .............
§ 11.307 .............
§ 11.309 .............
§ 11.401 .............
§ 11.402(a) .........
§ 11.402(b) .........
§ 11.403 .............
§ 11.404 .............
§ 11.501 .............
§ 11.502 .............
§ 11.503 .............
§ 11.504 .............
§ 11.505(a) .........
§ 11.505(b) .........
§ 11.505(c) .........
§ 11.505(d) .........
§ 11.505(e) .........
§ 11.505(f) ..........
§ 11.506 .............
§ 11.507 .............
VerDate Mar<15>2010
MRPC 1.1
MRPC 1.2
MRPC 1.3
MRPC 1.4
MRPC 1.5
MRPC 1.6(a)–(b)
USPTO
MRPC 1.7
MRPC 1.8
MRPC 1.9
MRPC 1.10
USPTO
MRPC 1.12
MRPC 1.13
MRPC 1.14
MRPC 1.15(a)–(e)
MRCTAR Rule 1
MRCTAR Rule 2
MRCTAR Rule 3
USPTO
MRPC 1.16
MRPC 1.17, USPTO
MRPC 1.18
MRPC 2.1
MRPC 2.3
MRPC 2.4
MRPC 3.1
MRPC 3.2
MRPC 3.3, USPTO
MRPC 3.4
MRPC 3.5
MRPC 3.7
MRPC 3.9
MRPC 4.1
MRPC 4.2(a)
DCRPR 4.2(b)
MRPC 4.3
MRPC 4.4
MRPC 5.1
MRPC 5.2
MRPC 5.3
MRPC 5.4; DCRPR
5.4(a)(5)
MRPC 5.5(a)
USPTO
USPTO
USPTO
USPTO
USPTO
MRPC 5.6
MRPC 5.7
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TABLE 1—PRINCIPAL SOURCE OF SEC- clarity, and with some reorganization.
TIONS 11.101 THROUGH 11.804— The proposed rules also have greater
specificity and clarity as to allowed
Continued
Section
Principal source
§ 11.701 .............
§ 11.702 .............
§ 11.703 .............
§ 11.704(a) .........
§ 11.704(b) .........
§ 11.704(d) .........
§ 11.704(e) .........
§ 11.705 .............
§ 11.801(a)–(c) ...
§ 11.801(d) .........
§ 11.802 .............
§ 11.803 .............
§ 11.804(a)–(f) ....
§ 11.804(g) .........
MRPC 7.1
MRPC 7.2
MRPC 7.3
MRPC 7.4(a)
37 CFR 10.34
MRPC 7.4(d)
USPTO
MRPC 7.5
MRPC 8.1(a)–(b)
USPTO
MRPC 8.2
MRPC 8.3
MRPC 8.4(a)–(f)
37 CFR 10.23(c)(19),
10.23(c)(20), 11.10(d)
37 CFR 10.23(c)(5), 11.24
USPTO
§ 11.804(h) .........
§ 11.901 .............
Abbreviations:
DCRPR means the District of Columbia
Court of Appeals Rules of Professional Conduct (2007).
MRPC means the Model Rules of Professional Conduct of the American Bar Association (2011).
MRCTAR means the Model Rules for Client
Trust Account Records of the American Bar
Association (2010).
Rulemaking Considerations
Regulatory Flexibility Act: The
Deputy General Counsel, United States
Patent and Trademark Office, has
certified to the Chief Counsel for
Advocacy, Small Business
Administration, that the changes in this
notice of proposed rulemaking will not
have a significant economic impact on
a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C.
605(b)).
The primary effect of this rulemaking
is not economic, but rather is to govern
the conduct of practitioners in their
interactions with their clients and with
the Office.
The provisions of this rulemaking that
may have a slight economic effect, such
as record-keeping requirements,
requirements to segregate client funds,
and rules governing representation of
multiple entities, are consistent with the
USPTO’s current rules, with which
practitioners currently must comply.
The existing USPTO Code applies to the
approximately 41,000 registered patent
practitioners currently appearing before
the Office, as well as licensed attorneys
practicing in trademark and other nonpatent matters before the Office.
These proposed conduct rules
continue the fundamental requirements
of the Office’s existing conduct rules.
The existing rules have many broad
canons and obligations that the
proposed rules fundamentally continue,
though with greater specificity and
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conduct. The proposed rules, like the
existing rules, codify many obligations
that already apply to the practice of law
under professional and fiduciary duties
owed to clients. Because the provisions
most likely to have an economic effect
are already in place, these provisions do
not contribute to the economic impact
of this rulemaking.
Furthermore, for most practitioners,
this rulemaking will reduce the
economic impact of complying with the
Office’s professional responsibility
requirements. Approximately 75 percent
of registered practitioners are attorneys.
The state bars of 50 U.S. jurisdictions
have adopted rules based on the same
ABA Model Rules on which these
proposed rules are based. Therefore, for
most current and prospective
practitioners, the proposed rules would
provide practitioners greater uniformity
and familiarity with their professional
conduct obligations before the Office
and would harmonize the requirements
to practice law before the Office and
other jurisdictions. Moreover, for some
provisions of this rulemaking, such as
the record-keeping requirements in
§ 11.115(f)(4) and (f)(5), the rules
explicitly state that an attorney or agent
(employed in the U.S. by a law firm)
that complies with the state in which he
or she practices will be deemed in
compliance with the Office’s
requirements, as well. Accordingly, this
rulemaking streamlines many
practitioners’ obligations and thus
reduces the administrative burden of
compliance.
Accordingly, this rulemaking does not
have a significant economic effect on a
substantial number of small entities.
Executive Order 12866: This notice of
proposed rulemaking has been
determined to be not significant for
purposes of Executive Order 12866
(September 30, 1993).
Executive Order 13563 (Improving
Regulation and Regulatory Review): The
Office has complied with Executive
Order 13563. Specifically, the Office
has, to the extent feasible and
applicable: (1) Made a reasoned
determination that the benefits justify
the costs of the rule; (2) tailored the rule
to impose the least burden on society
consistent with obtaining the regulatory
objectives; (3) selected a regulatory
approach that maximizes net benefits;
(4) specified performance objectives; (5)
identified and assessed available
alternatives; (6) involved the public in
an open exchange of information and
perspectives among experts in relevant
disciplines, affected stakeholders in the
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private sector and the public as a whole,
and provided on-line access to the
rulemaking docket; (7) attempted to
promote coordination, simplification
and harmonization across government
agencies and identified goals designed
to promote innovation; (8) considered
approaches that reduce burdens and
maintain flexibility and freedom of
choice for the public; and (9) ensured
the objectivity of scientific and
technological information and
processes.
Executive Order 13132: This notice of
proposed rulemaking does not contain
policies with federalism implications
sufficient to warrant preparation of a
Federalism Assessment under Executive
Order 13132 (August 4, 1999).
Executive Order 13175 (Tribal
Consultation): This rulemaking will not:
(1) Have substantial direct effects on one
or more Indian tribes; (2) impose
substantial direct compliance costs on
Indian tribal governments; or (3)
preempt tribal law. Therefore, a tribal
summary impact statement is not
required under Executive Order 13175
(Nov. 6, 2000).
Executive Order 13211 (Energy
Effects): This rulemaking is not a
significant energy action under
Executive Order 13211 because this
rulemaking is not likely to have a
significant adverse effect on the supply,
distribution, or use of energy. Therefore,
a Statement of Energy Effects is not
required under Executive Order 13211
(May 18, 2001).
Executive Order 12988 (Civil Justice
Reform): This rulemaking meets
applicable standards to minimize
litigation, eliminate ambiguity, and
reduce burden as set forth in sections
3(a) and 3(b)(2) of Executive Order
12988 (Feb. 5, 1996).
Executive Order 13045 (Protection of
Children): This rulemaking does not
concern an environmental risk to health
or safety that may disproportionately
affect children under Executive Order
13045 (Apr. 21, 1997).
Executive Order 12630 (Taking of
Private Property): This rulemaking will
not effect a taking of private property or
otherwise have taking implications
under Executive Order 12630 (Mar. 15,
1988).
Congressional Review Act: Under the
Congressional Review Act provisions of
the Small Business Regulatory
Enforcement Fairness Act of 1996 (5
U.S.C. 801 et seq.), prior to issuing any
final rule, the United States Patent and
Trademark Office will submit a report
containing the final rule and other
required information to the U.S. Senate,
the U.S. House of Representatives and
the Comptroller General of the
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Government Accountability Office. The
changes in this notice are not expected
to result in an annual effect on the
economy of 100 million dollars or more,
a major increase in costs or prices, or
significant adverse effects on
competition, employment, investment,
productivity, innovation, or the ability
of United States-based enterprises to
compete with foreign-based enterprises
in domestic and export markets.
Therefore, this notice is not expected to
result in a ‘‘major rule’’ as defined in 5
U.S.C. 804(2).
Unfunded Mandates Reform Act of
1995: The changes in this notice do not
involve a Federal intergovernmental
mandate that will result in the
expenditure by State, local, and tribal
governments, in the aggregate, of 100
million dollars (as adjusted) or more in
any one year, or a Federal private sector
mandate that will result in the
expenditure by the private sector of 100
million dollars (as adjusted) or more in
any one year, and will not significantly
or uniquely affect small governments.
Therefore, no actions are necessary
under the provisions of the Unfunded
Mandates Reform Act of 1995. See 2
U.S.C. 1501 et seq.
National Environmental Policy Act:
This rulemaking will not have any effect
on the quality of environment and is
thus categorically excluded from review
under the National Environmental
Policy Act of 1969. See 42 U.S.C. 4321
et seq.
National Technology Transfer and
Advancement Act: The requirements of
section 12(d) of the National
Technology Transfer and Advancement
Act of 1995 (15 U.S.C. 272 note) are not
applicable because this rulemaking does
not contain provisions which involve
the use of technical standards.
Paperwork Reduction Act: This notice
of proposed rulemaking involves
information collection requirements
which are subject to review by the
Office of Management and Budget
(OMB) under the Paperwork Reduction
Act of 1995 (PRA) (44 U.S.C. 3501 et
seq.). Collection of information
activities involved in this notice of
proposed rulemaking 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 are
shown below with an estimate of the
annual reporting burdens. Included in
this estimate is the time for 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
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rulemaking is to registered practitioners
and attorneys practicing before the
Office in trademark and other nonpatent matters.
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 forprofit, not-for-profit institutions, Federal
Government, and state, local, or tribal
governments.
Estimated Number of Likely
Respondents: 10,726.
Estimated Total Annual Burden
Hours: 11,126 hours.
Needs and Uses: The information in
this collection is necessary for the
United States Patent and Trademark
Office to implement Federal statutes
and regulations. See 35 U.S.C. 2(b)(2)(D)
and 35 U.S.C. 32. These rules will
require that registered practitioners and
attorneys who appear before the Office
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 rules to the Office. Practitioners are
mandated by the rules 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. The Office
has determined that the record keeping
and maintenance of such records are
excluded from any associated PRA
burden as these activities are usual and
customary for practitioners representing
clients. 5 CFR 1320.3(b)(2).
Additionally, in the case of most
attorney practitioners, any requirements
for collection of information are not
presumed to impose a Federal burden as
these requirements are also required by
a unit of State or local government,
namely State bar(s), and would be
required even in the absence of any
Federal requirement.
5 CFR 1320.3(b)(3). These rules also
require, in certain instances, that
written consents or certifications be
provided. Such consents or
certifications have been determined not
to constitute information under 5 CFR
1320.3(h)(1).
First, the Office estimates that it will
take an individual or organization
approximately three hours, on average,
to gather, prepare and submit an initial
grievance alleging and supporting a
violation of professional conduct. The
Office estimates that approximately 200
grievances will be received annually
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from such respondents. The
requirements of 5 CFR Part 1320 do not
apply to collections of information by
the Office during the conduct of an
investigation involving a potential
violation of Office professional conduct
rules. 5 CFR 1320.4(a)(2). Second, the
Office estimates that non-attorney
practitioners may, on average, incur a
total of thirty minutes of annual burden
to notify senders of documents relating
to the representation of a client that
were inadvertently sent. Proposed 37
CFR 11.404(b). Third, the Office
estimates that non-attorney
practitioners, may, on average, incur a
total of thirty minutes of annual burden
to comply with the proposed § 11.703(c)
disclosure requirements relating to
soliciting professional employment. Of
the approximately 41,000 registered
practitioners, 10,526 are non-attorneys
and therefore considered likely
respondents under the PRA for purposes
of this information collection.
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
William R. Covey, Deputy General
Counsel for Enrollment and Discipline
and Director of the Office of Enrollment
and Discipline, United States Patent and
Trademark Office, P.O. 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.
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37 CFR Parts 2 and 7
Administrative practice and
procedure, Trademarks.
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, under the authority of 35
U.S.C. 2(b)(2)(A) and (D), 35 U.S.C. 32,
the United States Patent and Trademark
Office proposes to amend 37 CFR Parts
1, 2, 7, 10, 11, and 41 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 1.4 is amended to revise
paragraph (d)(4)(i) to read as follows:
§ 1.4 Nature of correspondence and
signature requirements.
*
*
*
*
*
(d) * * *
(4) Certifications. (i) Section 11.18
certifications: 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 § 11.18(b) of this
subchapter. Violations of § 11.18(b)(2) of
this subchapter by a party, whether a
practitioner or non-practitioner, may
result in the imposition of sanctions
under § 11.18(c) of this subchapter. Any
practitioner violating § 11.18(b) of this
subchapter may also be subject to
disciplinary action. See § 11.18(d) of
this subchapter.
*
*
*
*
*
3. Section 1.21 is amended to remove
and reserve paragraphs (a)(7) and (a)(8)
to read as follows:
§ 1.21
Miscellaneous fees and charges.
*
*
*
*
(a) * * *
(7)–(8) [Reserved]
*
*
*
*
*
*
PART 2—RULES OF PRACTICE IN
TRADEMARK CASES
4. The authority citation for 37 CFR
Part 2 continues to read as follows:
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Authority: 15 U.S.C. 1123, 35 U.S.C. 2,
unless otherwise noted.
5. Section 2.2 is amended to revise
paragraph (c) to read as follows:
§ 2.2
Definitions.
*
*
*
*
*
(c) Director as used in this chapter,
except for part 11, means the Under
Secretary of Commerce for Intellectual
Property and Director of the United
States Patent and Trademark Office.
*
*
*
*
*
PART 7—RULES OF PRACTICE IN
FILINGS PURSUANT TO THE
PROTOCOL RELATING TO THE
MADRID AGREEMENT CONCERNING
THE INTERNATIONAL REGISTRATION
OF MARKS
6. The authority citation for 37 CFR
Part 7 continues to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2,
unless otherwise noted.
7. Section 7.25 is amended to revise
paragraph (a) to read as follows:
§ 7.25 Sections of part 2 applicable to
extension of protection.
(a) Except for §§ 2.22–2.23, 2.130–
2.131, 2.160–2.166, 2.168, 2.173, 2.175,
2.181–2.186 and 2.197, all sections in
part 2 and all sections in part 11 of this
chapter shall apply to an extension of
protection of an international
registration to the United States,
including sections related to
proceedings before the Trademark Trial
and Appeal Board, unless otherwise
stated.
*
*
*
*
*
PART 10 [Removed and reserved]
8. Part 10 is removed and reserved.
PART 11—REPRESENTATION OF
OTHERS BEFORE THE UNITED
STATES PATENT AND TRADEMARK
OFFICE
9. The authority citation for 37 CFR
Part 11 continues to read as follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123,
35 U.S.C. 2(b)(2), 32, 41.
10. Amend § 11.1 to remove the
definitions of ‘‘mandatory disciplinary
rule’’ and ‘‘matter;’’ revise the
definitions of ‘‘fraud or fraudulent’’ and
‘‘practitioner;’’ and add in alphabetical
order the definitions of ‘‘confirmed in
writing,’’ ‘‘firm or law firm,’’ ‘‘informed
consent,’’ ‘‘law related services,’’
‘‘partner,’’ ‘‘person,’’ ‘‘reasonable belief
or reasonably believes,’’ ‘‘reasonably
should know,’’ ‘‘screened,’’ ‘‘tribunal’’
and ‘‘writing or written’’ as follows:
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Definitions.
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*
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*
*
Confirmed in writing, when used in
reference to the informed consent of a
person, means informed consent that is
given in writing by the person or a
writing that a practitioner promptly
transmits to the person confirming an
oral informed consent. If it is not
feasible to obtain or transmit the writing
at the time the person gives informed
consent, then the practitioner must
obtain or transmit it within a reasonable
time thereafter.
*
*
*
*
*
Firm or law firm means a practitioner
or practitioners in a law partnership,
professional corporation, sole
proprietorship or other association
authorized to practice law; or
practitioners employed in a legal
services organization or the legal
department of a corporation or other
organization.
*
*
*
*
*
Fraud or fraudulent means conduct
that involves a misrepresentation of
material fact made with intent to
deceive or a state of mind so reckless
respecting consequences as to be the
equivalent of intent, where there is
justifiable reliance on the
misrepresentation by the party
deceived, inducing the party to act
thereon, and where there is injury to the
party deceived resulting from reliance
on the misrepresentation. Fraud also
may be established by a purposeful
omission or failure to state a material
fact, which omission or failure to state
makes other statements misleading, and
where the other elements of justifiable
reliance and injury are established.
*
*
*
*
*
Informed consent means the
agreement by a person to a proposed
course of conduct after the practitioner
has communicated adequate
information and explanation about the
material risks of and reasonably
available alternatives to the proposed
course of conduct.
*
*
*
*
*
Law-related services means services
that might reasonably be performed in
conjunction with and in substance are
related to the provision of legal services,
and that are not prohibited as
unauthorized practice of law when
provided by a non-lawyer.
*
*
*
*
*
Partner means a member of a
partnership, a shareholder in a law firm
organized as a professional corporation,
or a member of an association
authorized to practice law.
Person means an individual, a
corporation, an association, a trust, a
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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 § 11.14(a), (b), and (c) of this
subchapter, to practice before the Office
in trademark matters or other nonpatent matters, or
(3) An individual authorized to
practice before the Office in a patent
case or matters under § 11.9(a) or (b).
*
*
*
*
*
Reasonable belief or reasonably
believes when used in reference to a
practitioner means that the practitioner
believes the matter in question and that
the circumstances are such that the
belief is reasonable.
Reasonably should know when used
in reference to a practitioner means that
a practitioner of reasonable prudence
and competence would ascertain the
matter in question.
*
*
*
*
*
Screened means the isolation of a
practitioner from any participation in a
matter through the timely imposition of
procedures within a firm that are
reasonably adequate under the
circumstances to protect information
that the isolated practitioner is obligated
to protect under these USPTO Rules of
Professional Conduct or other law.
*
*
*
*
*
Tribunal means the Office, a court, an
arbitrator in a binding arbitration
proceeding or a legislative body,
administrative agency or other body
acting in an adjudicative capacity. A
legislative body, administrative agency
or other body acts in an adjudicative
capacity when a neutral official, after
the presentation of evidence or legal
argument by a party or parties, will
render a binding legal judgment directly
affecting a party’s interests in a
particular matter.
*
*
*
*
*
Writing or written means a tangible or
electronic record of a communication or
representation, including handwriting,
typewriting, printing, photostating,
photography, audio or video recording
and email. A ‘‘signed’’ writing includes
an electronic sound, symbol or process
attached to or logically associated with
a writing and executed or adopted by a
person with the intent to sign the
writing.
11. Revise § 11.2(c), (d) and (e) to read
as follows:
§ 11.2 Director of the Office of Enrollment
and Discipline.
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(c) Petition to OED Director regarding
enrollment or recognition. Any petition
from any action or requirement of the
staff of OED reporting to the OED
Director shall be taken to the OED
Director accompanied by payment of the
fee set forth in § 1.21(a)(5)(i) of this
chapter. Any such petition not filed
within sixty days from the mailing date
of the action or notice from which relief
is requested will be dismissed as
untimely. The filing of a petition will
neither stay the period for taking other
action which may be running, nor stay
other proceedings. The petitioner may
file a single request for reconsideration
of a decision within thirty days of the
date of the decision. Filing a request for
reconsideration stays the period for
seeking review of the OED Director’s
decision until a final decision on the
request for reconsideration is issued.
(d) Review of OED Director’s decision
regarding enrollment or recognition. A
party dissatisfied with a final decision
of the OED Director regarding
enrollment or recognition shall seek
review of the decision upon petition to
the USPTO Director accompanied by
payment of the fee set forth in
§ 1.21(a)(5)(ii) of this chapter. By filing
such petition to the USPTO Director, the
party waives any right to seek
reconsideration from the OED Director.
Any petition not filed within thirty days
after the final decision of the OED
Director may be dismissed as untimely.
Briefs or memoranda, if any, in support
of the petition shall accompany the
petition. 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. An oral hearing will not be
granted 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 thirty days after the date of said
decision. Only a decision of the USPTO
Director regarding denial of a petition
constitutes a final decision for the
purpose of judicial review.
(e) Petition to USPTO Director in
disciplinary matters. A party
dissatisfied with any action or notice of
any employee of the Office of
Enrollment and Discipline during or at
the conclusion of a disciplinary
investigation shall seek review of the
action or notice upon petition to the
OED Director. A petition from any
action or notice of the staff reporting to
the OED Director shall be taken to the
OED Director. A party dissatisfied with
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the OED Director’s final decision shall
seek review of the final decision upon
petition to the USPTO Director to
invoke the supervisory authority of the
USPTO Director in appropriate
circumstances in disciplinary matters.
Any petition under this paragraph must
contain a statement of the facts involved
and the point or points to be reviewed
and the action requested. Briefs or
memoranda, if any, in support of the
petition must accompany the petition.
Where facts are to be proven, the proof
in the form of affidavits or declarations
(and exhibits, if any) must accompany
the petition. The OED Director may be
directed by the USPTO Director to file
a reply to the petition to the USPTO
Director, supplying a copy to the
petitioner. An oral hearing on petition
taken to the USPTO Director will not be
granted except when considered
necessary by the USPTO Director. The
filing of a petition under this paragraph
will not stay an investigation,
disciplinary proceeding, or other
proceedings. Any petition under this
part not filed within thirty days of the
mailing date of the action or notice from
which relief is requested may be
dismissed as untimely. Any request for
reconsideration of the decision of the
OED Director or the USPTO Director
may be dismissed as untimely if not
filed within thirty days after the date of
said decision. Only a decision of the
USPTO Director regarding denial of a
petition constitutes a final decision for
the purpose of judicial review.
12. Remove and reserve § 11.8(d) to
read as follows:
§ 11.8
Oath and registration fee.
*
*
*
*
*
(d) [Reserved]
13. Revise § 11.11(a), (b), and (c),
remove and reserve paragraphs (d)(2)
and (d)(4), and revise paragraphs (d)(5),
(d)(6), and (e) to read as follows:
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§ 11.11 Administrative suspension,
inactivation, resignation, and readmission.
(a) Contact information. (1) A
registered practitioner must notify the
OED Director of his or her postal
address for his or her office, up to three
email addresses where he or she
receives email, and business telephone
number, as well as every change to any
of said addresses or telephone numbers
within thirty days of the date of the
change. A registered practitioner shall,
in addition to any notice of change of
address and telephone number filed in
individual patent applications,
separately file written notice of the
change of address or telephone number
to the OED Director. A registered
practitioner who is an attorney in good
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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.
(2) A letter may be addressed to any
registered practitioner, at the address of
which separate notice was last received
by the OED Director, for the purpose of
ascertaining whether such practitioner
desires to remain on the register. Any
registered practitioner failing to reply
and give any information requested by
the OED Director within a time limit
specified will be subject to
administrative suspension under
paragraph (b) of this section.
(b) Administrative suspension. (1)
Whenever it appears that a registered
practitioner or a person granted limited
recognition under § 11.9(b) has failed to
comply with § 11.8(d) or paragraph
(a)(2) of this section, the OED Director
shall publish and send a notice to the
registered practitioner or person granted
limited recognition advising of the
noncompliance, the consequence of
being administratively suspended under
paragraph (b)(5) of this section if
noncompliance is not timely remedied,
and the requirements for reinstatement
under paragraph (f) of this section. The
notice shall be published and sent to the
registered practitioner or person granted
limited recognition by mail to the last
postal address furnished under
paragraph (a) of this section or by email
addressed to the last email addresses
furnished under paragraph (a) of this
section. The notice shall demand
compliance and payment of a
delinquency fee set forth in
§ 1.21(a)(9)(i) of this subchapter within
sixty days after the date of such notice.
(2) In the event a registered
practitioner or person granted limited
recognition fails to comply with the
notice of paragraph (b)(1) of this section
within the time allowed, the OED
Director shall publish and send in the
manner provided for in paragraph (b)(1)
of this section to the registered
practitioner or person granted limited
recognition a Rule to Show Cause why
his or her registration or recognition
should not be administratively
suspended, and he or she no longer be
permitted to practice before the Office
in patent matters or in any way hold
himself or herself out as being registered
or authorized to practice before the
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Office in patent matters. The OED
Director shall file a copy of the Rule to
Show Cause with the USPTO Director.
(3) Within 30 days of the OED
Director’s sending the Rule to Show
Cause identified in paragraph (b)(2) of
this section, the registered practitioner
or person granted limited recognition
may file a response to the Rule to Show
Cause with the USPTO Director. The
response must set forth the factual and
legal bases why the person should not
be administratively suspended. The
registered practitioner or person granted
limited recognition shall serve the OED
Director with a copy of the response at
the time it is filed with the USPTO
Director. Within ten days of receiving a
copy of the response, the OED Director
may file a reply with the USPTO
Director that includes documents
demonstrating that the notice identified
in paragraph (b)(1) of this section was
published and sent to the practitioner in
accordance with paragraph (b)(1) of this
section. A copy of the reply by the OED
Director shall be served on the
registered practitioner or person granted
limited recognition. When acting on the
Rule to Show Cause, if the USPTO
Director determines that there are no
genuine issues of material fact regarding
the Office’s compliance with the notice
requirements under this section or the
failure of the person to pay the requisite
fees, the USPTO Director shall enter an
order administratively suspending the
registered practitioner or person granted
limited recognition. Otherwise, the
USPTO Director shall enter an
appropriate order dismissing the Rule to
Show Cause. Nothing herein shall
permit an administratively suspended
registered practitioner or person granted
limited recognition to seek a stay of the
administrative suspension during the
pendency of any review of the USPTO
Director’s final decision.
(4) [Reserved]
(5) An administratively suspended
registered practitioner or person granted
limited recognition is subject to
investigation and discipline for his or
her conduct prior to, during, or after the
period he or she was administratively
suspended.
(6) An administratively suspended
registered practitioner or person granted
limited recognition is prohibited from
practicing before the Office in patent
cases while administratively suspended.
A registered practitioner or person
granted limited recognition who knows
he or she has been administratively
suspended under this section will be
subject to discipline for failing to
comply with the provisions of this
paragraph (b).
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(c) Administrative inactivation. (1)
Any registered practitioner who shall
become employed by the Office shall
comply with § 11.116 for withdrawal
from the applications, patents, and
trademark matters wherein he or she
represents an applicant or other person,
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. Upon
separation from the Office, the
administratively inactive practitioner
may request reactivation by completing
and filing an application, Data Sheet,
signing a written undertaking required
by § 11.10, and paying the fee set forth
in § 1.21(a)(1)(i) of this subchapter. An
administratively inactive practitioner
remains subject to the provisions of the
USPTO Rules of Professional Conduct
and to proceedings and sanctions under
§§ 11.19 through 11.58 for conduct that
violates a provision of the USPTO Rules
of Professional Conduct prior to or
during employment at the Office. If,
within 30 days after separation from the
Office, the registered practitioner does
not request active status or another
status, the registered practitioner will be
endorsed on the roster as voluntarily
inactive and be subject to the provisions
of paragraph (d) of this section.
(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 may 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 of the
practitioner as administratively inactive.
Following separation from the bench,
the practitioner may request restoration
to active status by completing and filing
an application, Data Sheet, and signing
a written undertaking required by
§ 11.10.
(d) * * *
(2) [Reserved]
*
*
*
*
*
(4) [Reserved]
(5) A registered practitioner in
voluntary inactive status is prohibited
from practicing before the Office in
patent cases while in voluntary inactive
status. A registered practitioner in
voluntary inactive status will be subject
to discipline for failing to comply with
the provisions of this paragraph. Upon
acceptance of the request for voluntary
inactive status, the practitioner must
comply with the provisions of § 11.116.
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(6) Any registered practitioner whose
name has been endorsed as voluntarily
inactive pursuant to paragraph (d)(1) of
this section and is not under
investigation and not subject to a
disciplinary proceeding may be restored
to active status on the register as may be
appropriate provided that the
practitioner files a written request for
restoration, 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 and
reputation under § 11.7(a)(2)(i) during
the period of inactivation, a declaration
or affidavit attesting to the fact that the
practitioner has read the most recent
revisions of the patent laws and the
rules of practice before the Office, and
pays the fees set forth in
§§ 1.21(a)(7)(iii) and (iv) of this
subchapter.
(e) Resignation. A registered
practitioner or a practitioner recognized
under § 11.14(c), who is not under
investigation under § 11.22 for a
possible violation of the USPTO Rules
of Professional Conduct, subject to
discipline under §§ 11.24 or 11.25, or a
practitioner against whom probable
cause has been found by a panel of the
Committee on Discipline under
§ 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 § 11.14 shall no
longer be eligible to practice before the
Office in patent matters 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 grievance 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 registered practitioner must comply
with the provisions of § 11.116.
*
*
*
*
*
14. Revise § 11.19(a) and (b)(1)(iv) to
read as follows:
§ 11.19 Disciplinary jurisdiction;
Jurisdiction to transfer to disability inactive
status.
(a) All practitioners engaged in
practice before the Office; all
practitioners administratively
suspended; all practitioners registered
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to practice before the Office in patent
cases; all practitioners inactivated; all
practitioners authorized under § 11.6(d)
to take testimony; and all practitioners
transferred to disability inactive status,
reprimanded, suspended, or excluded
from the practice of law by a duly
constituted authority, including by the
USPTO Director, are subject to the
disciplinary jurisdiction of the Office.
Practitioners who have resigned shall
also be subject to such jurisdiction with
respect to conduct undertaken prior to
the resignation and conduct in regard to
any practice before the Office following
the resignation. A person not registered
or recognized to practice before the
Office is also subject to the disciplinary
authority of the Office if the person
provides or offers to provide any legal
services before the Office.
(b) * * *
(1) * * *
(iv) Violation of any USPTO Rule of
Professional Conduct; or
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*
*
*
*
15. Revise § 11.20(a)(4) and (b) to read
as follows:
§ 11.20 Disciplinary sanctions; Transfer to
disability inactive status.
(a) * * *
(4) Probation. 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 shall be required to notify
clients of the probation. Violation of any
condition of probation shall be cause for
imposition of the disciplinary sanction.
Imposition of the disciplinary sanction
predicated upon violation of probation
shall occur only after an order to show
cause why the disciplinary sanction
should not be imposed is resolved
adversely to the practitioner.
(b) Conditions imposed with
discipline. When imposing discipline,
the USPTO Director may condition
reinstatement upon the practitioner
making restitution, successfully
completing a professional responsibility
course or examination, or any other
condition deemed appropriate under the
circumstances.
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*
*
*
*
16. Revise § 11.21 to read as follows:
§ 11.21
Warnings.
A warning is neither public nor a
disciplinary sanction. The OED Director
may conclude an investigation with the
issuance of a warning. The warning
shall contain a brief statement of facts
and USPTO Rules of Professional
Conduct relevant to the facts.
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17. In § 11.22 revise the section
heading, paragraph (f)(2), and the
introductory text of paragraph (i) to read
as follows:
§ 11.22
Disciplinary investigations.
*
*
*
*
*
(f) * * *
(2) The OED Director may request
information and evidence regarding
possible grounds for discipline of a
practitioner from a non-grieving client
either after obtaining the consent of the
practitioner or upon a finding by a
Contact Member of the Committee on
Discipline, appointed in accordance
with § 11.23(d), that good cause exists to
believe that the possible ground for
discipline alleged has occurred with
respect to non-grieving clients. Neither
a request for, nor disclosure of, such
information shall constitute a violation
of any USPTO Rules of Professional
Conduct.
*
*
*
*
*
(i) Closing investigation. The OED
Director shall terminate an investigation
and decline to refer a matter to the
Committee on Discipline if the OED
Director determines that:
*
*
*
*
*
18. Revise § 11.24(e) to read as
follows:
§ 11.24
Reciprocal discipline.
*
*
*
*
*
(e) Adjudication in another
jurisdiction or Federal agency or
program. In all other respects, a final
adjudication in another jurisdiction or
Federal agency or program that a
practitioner, whether or not admitted in
that jurisdiction, has been guilty of
misconduct shall establish a prima facie
case by clear and convincing evidence
that the practitioner has engaged in
misconduct under § 11.804.
*
*
*
*
*
19. Revise § 11.25(a) to read as
follows:
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§ 11.25 Interim suspension and discipline
based upon conviction of committing a
serious crime.
(a) Notification of OED Director. Upon
being convicted of a crime in a court of
the United States, any State, or a foreign
country, a practitioner subject to the
disciplinary jurisdiction of the Office
shall notify the OED Director in writing
of the same within thirty days from the
date of such conviction. Upon being
advised or learning that a practitioner
subject to the disciplinary jurisdiction
of the Office has been convicted of a
crime, the OED Director shall make a
preliminary determination whether the
crime constitutes a serious crime
warranting interim suspension. If the
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crime is a serious crime, the OED
Director shall file with the USPTO
Director proof of the conviction and
request the USPTO Director to issue a
notice and order set forth in paragraph
(b)(2) of this section. The OED Director
shall in addition, without Committee on
Discipline authorization, file with the
USPTO Director a complaint against the
practitioner complying with § 11.34
predicated upon the conviction of a
serious crime. If the crime is not a
serious crime, the OED Director shall
process the matter in the same manner
as any other information or evidence of
a possible violation of any USPTO Rule
of Professional Conduct coming to the
attention of the OED Director.
*
*
*
*
*
20. Revise § 11.32 to read as follows:
§ 11.32 Instituting a disciplinary
proceeding.
If after conducting an investigation
under § 11.22(a), the OED Director is of
the opinion that grounds exist for
discipline under § 11.19(b), the OED
Director, after complying where
necessary with the provisions of 5
U.S.C. 558(c), may convene a meeting of
a panel of the Committee on Discipline.
If convened, the panel of the Committee
on Discipline shall then determine as
specified in § 11.23(b) whether there is
probable cause to bring disciplinary
charges. If the panel of the Committee
on Discipline determines that probable
cause exists to bring charges, the OED
Director may institute a disciplinary
proceeding by filing a complaint under
§ 11.34.
21. In § 11.34 revise the introductory
text of paragraph (a), and paragraphs
(a)(1) and (b) to read as follows:
§ 11.34
Complaint.
(a) A complaint instituting a
disciplinary proceeding shall:
(1) Name the person who is the
subject of the complaint who may then
be referred to as the ‘‘respondent’’;
*
*
*
*
*
(b) A complaint will be deemed
sufficient if it fairly informs the
respondent of any grounds for
discipline, and where applicable, the
USPTO Rules of Professional Conduct
that form the basis for the disciplinary
proceeding so that the respondent is
able to adequately prepare a defense.
*
*
*
*
*
22. Revise § 11.35(a)(2)(ii) and
(a)(4)(ii) to read as follows:
§ 11.35
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(a) * * *
(2) * * *
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(ii) A respondent who is not
registered at the last address for the
respondent known to the OED Director.
*
*
*
*
*
(4) * * *
(ii) A respondent who is not
registered at the last address for the
respondent known to the OED Director.
*
*
*
*
*
23. In § 11.54 revise paragraph (a)(2)
and the introductory text of paragraph
(b) to read as follows:
§ 11.54
Initial decision of hearing officer.
(a) * * *
(2) An order of default judgment, of
suspension or exclusion from practice,
of reprimand, of probation or an order
dismissing the complaint. The order
also may impose any conditions deemed
appropriate under the circumstances.
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, including a default
judgment, will, without further
proceedings, become the decision of the
USPTO Director thirty 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
default judgment, reprimand,
suspension, exclusion, or probation, and
shall explain any conditions imposed
with discipline. In determining any
sanction, the following four factors must
be considered if they are applicable:
*
*
*
*
*
24. In § 11.58 revise the introductory
text of paragraph (b)(2) and paragraph
(f)(1)(ii) to read as follows:
§ 11.58 Duties of disciplined or resigned
practitioner, or practitioner on disability
inactive status.
*
*
*
*
*
(b) * * *
(2) Within forty-five days after entry
of the order of suspension, exclusion, or
of acceptance of resignation, the
practitioner shall file with the OED
Director an affidavit of compliance
certifying that the practitioner has fully
complied with the provisions of the
order, this section, and with § 11.116 for
withdrawal from representation.
Appended to the affidavit of compliance
shall be:
*
*
*
*
*
(f) * * *
(1) * * *
(ii) Shows by clear and convincing
evidence that the excluded, suspended
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or resigned practitioner, or practitioner
transferred to disability inactive status
has complied with the provisions of this
section and all USPTO Rules of
Professional Conduct; and
*
*
*
*
*
§ 11.61
[Removed and reserved]
25. Section 11.61 is removed and
reserved.
26. Part 11 is amended to add Subpart
D to read as follows:
Subpart D—USPTO Rules of Professional
Conduct
11.100 [Reserved]
Client-Practitioner Relationship
11.101 Competence.
11.102 Scope of representation and
allocation of authority between client
and practitioner.
11.103 Diligence.
11.104 Communication.
11.105 Fees.
11.106 Confidentiality of information.
11.107 Conflict of interest: Current clients.
11.108 Conflict of interest: Current clients:
Specific rules.
11.109 Duties to former clients.
11.110 Imputation of conflicts of interest:
General rule.
11.111 Former or current Federal
Government employees.
11.112 Former judge, arbitrator, mediator or
other third-party neutral.
11.113 Organization as client.
11.114 Client with diminished capacity.
11.115 Safekeeping property.
11.116 Declining or terminating
representation.
11.117 Sale of law practice.
11.118 Duties to prospective client.
11.119–11.200 [Reserved]
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Counselor
11.201 Advisor.
11.202 [Reserved]
11.203 Evaluation for use by third persons.
11.204 Practitioner serving as third-party
neutral.
11.205–11.300 [Reserved]
Advocate
11.301 Meritorious claims and contentions.
11.302 Expediting proceedings.
11.303 Candor toward the tribunal.
11.304 Fairness to opposing party and
counsel.
11.305 Impartiality and decorum of the
tribunal.
11.306 [Reserved]
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 with person
represented by a practitioner.
11.403 Dealing with unrepresented person.
11.404 Respect for rights of third persons.
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11.405–11.500
[Reserved]
Law Firms and Associations
11.501 Responsibilities of partners,
managers, and supervisory practitioners.
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 lawrelated services.
11.508–11.700 [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 specialization.
11.705 Firm names and letterheads.
11.706–11.800 [Reserved]
Maintaining the Integrity of the Profession
11.801 Registration, recognition and
disciplinary matters.
11.802 Judicial and legal officials.
11.803 Reporting professional misconduct.
11.804 Misconduct.
11.805–11.900 [Reserved]
11.901 Savings clause.
Subpart D—USPTO Rules of
Professional Conduct
§ 11.100
[Reserved]
Client-Practitioner Relationship
§ 11.101
Competence.
A practitioner shall provide
competent representation to a client.
Competent representation requires the
legal, scientific, and technical
knowledge, skill, thoroughness and
preparation reasonably necessary for the
representation.
§ 11.102 Scope of representation and
allocation of authority between client and
practitioner.
(a) Subject to paragraphs (c) and (d) of
this section, a practitioner shall abide by
a client’s decisions concerning the
objectives of representation and, as
required by § 11.104, shall consult with
the client as to the means by which they
are to be pursued. A practitioner may
take such action on behalf of the client
as is impliedly authorized to carry out
the representation. A practitioner shall
abide by a client’s decision whether to
settle a matter.
(b) [Reserved].
(c) A practitioner may limit the scope
of the representation if the limitation is
reasonable under the circumstances and
the client gives informed consent.
(d) A practitioner shall not counsel a
client to engage, or assist a client, in
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conduct that the practitioner knows is
criminal or fraudulent, but a
practitioner may discuss the legal
consequences of any proposed course of
conduct with a client and may counsel
or assist a client to make a good-faith
effort to determine the validity, scope,
meaning or application of the law.
§ 11.103
Diligence.
A practitioner shall act with
reasonable diligence and promptness in
representing a client.
§ 11.104
Communication.
(a) A practitioner shall:
(1) Promptly inform the client of any
decision or circumstance with respect to
which the client’s informed consent is
required by the USPTO Rules of
Professional Conduct;
(2) Reasonably consult with the client
about the means by which the client’s
objectives are to be accomplished;
(3) Keep the client reasonably
informed about the status of the matter;
(4) Promptly comply with reasonable
requests for information from the client;
and
(5) Consult with the client about any
relevant limitation on the practitioner’s
conduct when the practitioner knows
that the client expects assistance not
permitted by the USPTO Rules of
Professional Conduct or other law.
(b) A practitioner shall explain a
matter to the extent reasonably
necessary to permit the client to make
informed decisions regarding the
representation.
§ 11.105
Fees.
(a) A practitioner shall not make an
agreement for, charge, or collect an
unreasonable fee or an unreasonable
amount for expenses. 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 services;
and
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(8) Whether the fee is fixed or
contingent.
(b) The scope of the representation
and the basis or rate of the fee and
expenses for which the client will be
responsible shall be communicated to
the client, preferably in writing, before
or within a reasonable time after
commencing the representation, except
when the practitioner will charge a
regularly represented client on the same
basis or rate. Any changes in the basis
or rate of the fee or expenses shall also
be communicated to the client.
(c) A fee 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 law. A contingent fee agreement shall
be in a writing signed by the client 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
settlement, trial 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. The
agreement must clearly notify the client
of any expenses for which the client
will be liable whether or not the client
is the prevailing party. 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) [Reserved].
(e) A division of a fee between
practitioners who are not in the same
firm may be made only if:
(1) The division is in proportion to
the services performed by each
practitioner or each practitioner
assumes joint responsibility for the
representation;
(2) The client agrees to the
arrangement, including the share each
practitioner will receive, and the
agreement is confirmed in writing; and
(3) The total fee is reasonable.
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§ 11.106
Confidentiality of information.
(a) A practitioner shall not reveal
information relating to the
representation of a client unless the
client gives informed consent, the
disclosure is impliedly authorized in
order to carry out the representation, the
disclosure is permitted by paragraph (b)
of this section, or the disclosure is
required by paragraph (c) of this section.
(b) A practitioner may reveal
information relating to the
representation of a client to the extent
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the practitioner reasonably believes
necessary:
(1) To prevent reasonably certain
death or substantial bodily harm;
(2) To prevent the client from
committing a crime, fraud, or
inequitable conduct before the Office
that is reasonably certain to result in
substantial injury to the financial
interests or property of another and in
furtherance of which the client has used
or is using the practitioner’s services;
(3) To prevent, mitigate or rectify
substantial injury to the financial
interests or property of another that is
reasonably certain to result or has
resulted from the client’s commission of
a crime, fraud, or inequitable conduct
before the Office in furtherance of
which the client has used the
practitioner’s services;
(4) To secure legal advice about the
practitioner’s compliance with the
USPTO Rules of Professional Conduct;
(5) 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 the client; or
(6) To comply with other law or a
court order.
(c) A practitioner shall disclose to the
Office information necessary to comply
with applicable duty of disclosure
provisions.
§ 11.107
clients.
Conflict of interest: Current
(a) Except as provided in paragraph
(b) of this section, a practitioner shall
not represent a client if the
representation involves a concurrent
conflict of interest. A concurrent
conflict of interest exists if:
(1) The representation of one client
will be directly adverse to another
client; or
(2) There is a significant risk that the
representation of one or more clients
will be materially limited by the
practitioner’s responsibilities to another
client, a former client or a third person
or by a personal interest of the
practitioner.
(b) Notwithstanding the existence of a
concurrent conflict of interest under
paragraph (a) of this section, a
practitioner may represent a client if:
(1) The practitioner reasonably
believes that the practitioner will be
able to provide competent and diligent
representation to each affected client;
(2) The representation is not
prohibited by law;
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(3) The representation does not
involve the assertion of a claim by one
client against another client represented
by the practitioner in the same litigation
or other proceeding before a tribunal;
and
(4) Each affected client gives informed
consent, confirmed in writing.
§ 11.108 Conflict of interest: Current
clients: Specific rules.
(a) A practitioner shall not enter into
a business transaction with a client or
knowingly acquire an ownership,
possessory, security or other pecuniary
interest adverse to a client 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 in a manner that
can be reasonably understood by the
client;
(2) The client is advised in writing of
the desirability of seeking and is given
a reasonable opportunity to seek the
advice of independent legal counsel in
the transaction; and
(3) The client gives informed consent,
in a writing signed by the client, to the
essential terms of the transaction and
the practitioner’s role in the transaction,
including whether the practitioner is
representing the client in the
transaction.
(b) A practitioner shall not use
information relating to representation of
a client to the disadvantage of the client
unless the client gives informed
consent, except as permitted or required
by the USPTO Rules of Professional
Conduct.
(c) A practitioner shall not solicit any
substantial gift from a client, including
a testamentary gift, or prepare on behalf
of a client an instrument giving the
practitioner or a person related to the
practitioner any substantial gift unless
the practitioner or other recipient of the
gift is related to the client. For purposes
of this paragraph, related persons
include a spouse, child, grandchild,
parent, grandparent or other relative or
individual with whom the practitioner
or the client maintains a close, familial
relationship.
(d) Prior to the conclusion of
representation of a client, 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, except that:
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(1) A practitioner may advance court
costs and expenses of litigation, the
repayment of which may be contingent
on the outcome of the matter; and
(2) A practitioner representing an
indigent client may pay court costs and
expenses of litigation on behalf of the
client.
(f) A practitioner shall not accept
compensation for representing a client
from one other than the client unless:
(1) The client gives informed consent;
(2) There is no interference with the
practitioner’s independence of
professional judgment or with the
client-practitioner relationship; and
(3) Information relating to
representation of a client is protected as
required by § 11.106.
(g) A practitioner who represents two
or more clients shall not participate in
making an aggregate settlement of the
claims of or against the clients, unless
each client gives informed consent, in
writing signed by the client. The
practitioner’s disclosure shall include
the existence and nature of all the
claims involved and of the participation
of each person in the settlement.
(h) A practitioner shall not:
(1) Make an agreement prospectively
limiting the practitioner’s liability to a
client for malpractice unless the client
is independently represented in making
the agreement; or
(2) Settle a claim or potential claim
for such liability with an unrepresented
client or former client unless that
person is advised in writing of the
desirability of seeking and is given a
reasonable opportunity to seek the
advice of independent legal counsel in
connection therewith.
(i) A practitioner shall not acquire a
proprietary interest in the cause of
action, subject matter of litigation, or a
proceeding before the Office which the
practitioner is conducting for a client,
except that the practitioner may:
(1) Acquire a lien authorized by law
to secure the practitioner’s fee or
expenses;
(2) Contract with a client for a
reasonable contingent fee in a civil case;
and
(3) In a patent case or a proceeding
before the Office, take an interest in the
patent as part or all of his or her fee.
(j) [Reserved].
(k) While practitioners are associated
in a firm, a prohibition in paragraphs (a)
through (i) of this section that applies to
any one of them shall apply to all of
them.
§ 11.109
Duties to former clients.
(a) A practitioner who has formerly
represented a client in a matter shall not
thereafter represent another person in
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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.
(b) A practitioner shall not knowingly
represent a person in the same or a
substantially related matter in which a
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 had
acquired information protected by
§§ 11.106 and 11.109(c) that is material
to the matter;
unless the former client gives informed
consent, confirmed in writing.
(c) A practitioner who has formerly
represented a client in a matter or
whose present or former firm has
formerly represented a client in a matter
shall not thereafter:
(1) Use information relating to the
representation to the disadvantage of the
former client except as the USPTO
Rules of Professional Conduct 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 the USPTO
Rules of Professional Conduct would
permit or require with respect to a
client.
§ 11.110 Imputation of conflicts of interest:
General rule.
(a) While practitioners are associated
in a firm, none of them shall knowingly
represent a client when any one of them
practicing alone would be prohibited
from doing so by §§ 11.107 or 11.109,
unless
(1) The prohibition is based on a
personal interest of the disqualified
practitioner and does not present a
significant risk of materially limiting the
representation of the client by the
remaining practitioners in the firm; or
(2) The prohibition is based upon
§ 11.109(a) or (b), and arises out of the
disqualified practitioner’s association
with a prior firm, and
(i) The disqualified practitioner is
timely screened from any participation
in the matter and is apportioned no part
of the fee therefrom;
(ii) Written notice is promptly given
to any affected former client to enable
the former client to ascertain
compliance with the provisions of this
section, which shall include a
description of the screening procedures
employed; a statement of the firm’s and
of the screened practitioner’s
compliance with the USPTO Rules of
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Professional Conduct; a statement that
review may be available before a
tribunal; and an agreement by the firm
to respond promptly to any written
inquiries or objections by the former
client about the screening procedures;
and
(iii) Certifications of compliance with
the USPTO Rules of Professional
Conduct and with the screening
procedures are provided to the former
client by the screened practitioner and
by a partner of the firm, at reasonable
intervals upon the former client’s
written request and upon termination of
the screening procedures.
(b) 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
§§ 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 § 11.107.
(d) The disqualification of
practitioners associated in a firm with
former or current Federal Government
lawyers is governed by § 11.111.
§ 11.111 Former or current Federal
Government employees.
A practitioner who is a former or
current Federal Government employee
shall not engage in any conduct which
is contrary to applicable Federal ethics
law, including conflict of interest
statutes and regulations of the
department, agency or commission
formerly or currently employing said
practitioner.
§ 11.112 Former judge, arbitrator, mediator
or other third-party neutral.
(a) Except as stated in paragraph (d)
of this section, a practitioner shall not
represent anyone in connection with a
matter in which the practitioner
participated personally and
substantially as a judge or other
adjudicative officer or law clerk to such
a person or as an arbitrator, mediator or
other third-party neutral, unless all
parties to the proceeding give informed
consent, confirmed in writing.
(b) A practitioner shall not negotiate
for employment with any person who is
involved as a party or as practitioner for
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a party in a matter in which the
practitioner is participating personally
and substantially as a judge or other
adjudicative officer or as an arbitrator,
mediator or other third-party neutral. A
practitioner serving as a law clerk to a
judge or other adjudicative officer 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, or other adjudicative officer.
(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
timely 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 parties and any appropriate tribunal
to enable them 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.
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§ 11.113
Organization as client.
(a) A practitioner employed or
retained by an organization represents
the organization acting through its duly
authorized constituents.
(b) If a practitioner for an organization
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 that reasonably might
be imputed to the organization, and that
is likely to result in substantial injury to
the organization, then the practitioner
shall proceed as is reasonably necessary
in the best interest of the organization.
Unless the practitioner reasonably
believes that it is not necessary in the
best interest of the organization to do so,
the practitioner shall refer the matter to
higher authority in the organization,
including, if warranted by the
circumstances, to the highest authority
that can act on behalf of the
organization as determined by
applicable law.
(c) Except as provided in paragraph
(d) of this section, if
(1) 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 or fails to address in a timely and
appropriate manner an action, or a
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refusal to act, that is clearly a violation
of law, and
(2) The practitioner reasonably
believes that the violation is reasonably
certain to result in substantial injury to
the organization, then the practitioner
may reveal information relating to the
representation whether or not § 11.106
permits such disclosure, but only if and
to the extent the practitioner reasonably
believes necessary to prevent substantial
injury to the organization.
(d) Paragraph (c) of this section shall
not apply with respect to information
relating to a practitioner’s
representation of an organization to
investigate an alleged violation of law,
or to defend the organization or an
officer, employee or other constituent
associated with the organization against
a claim arising out of an alleged
violation of law.
(e) A practitioner who reasonably
believes that he or she has been
discharged because of the practitioner’s
actions taken pursuant to paragraphs (b)
or (c) of this section, or who withdraws
under circumstances that require or
permit the practitioner to take action
under either of those paragraphs, shall
proceed as the practitioner reasonably
believes necessary to assure that the
organization’s highest authority is
informed of the practitioner’s discharge
or withdrawal.
(f) In dealing with an organization’s
directors, officers, employees, members,
shareholders, or other constituents, a
practitioner shall explain the identity of
the client when the practitioner knows
or reasonably should know that the
organization’s interests are adverse to
those of the constituents with whom the
practitioner is dealing.
(g) A practitioner representing an
organization may also represent any of
its directors, officers, employees,
members, shareholders or other
constituents, subject to the provisions of
§ 11.107. If the organization’s consent to
the dual representation is required by
§ 11.107, the consent shall be given by
an appropriate official of the
organization other than the individual
who is to be represented, or by the
shareholders.
§ 11.114
Client with diminished capacity.
(a) When a client’s capacity to make
adequately considered decisions in
connection with a representation is
diminished, whether because of
minority, mental impairment or for
some other reason, the practitioner
shall, as far as reasonably possible,
maintain a normal client-practitioner
relationship with the client.
(b) When the practitioner reasonably
believes that the client has diminished
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capacity, is at risk of substantial
physical, financial or other harm unless
action is taken and cannot adequately
act in the client’s own interest, the
practitioner may take reasonably
necessary protective action, including
consulting with individuals or entities
that have the ability to take action to
protect the client and, in appropriate
cases, seeking the appointment of a
guardian ad litem, conservator or
guardian.
(c) Information relating to the
representation of a client with
diminished capacity is protected under
§ 11.106. When taking protective action
pursuant to paragraph (b) of this section,
the practitioner is impliedly authorized
under § 11.106(a) to reveal information
about the client, but only to the extent
reasonably necessary to protect the
client’s interests.
§ 11.115
Safekeeping property.
(a) A practitioner shall hold property
of clients or third persons that is in a
practitioner’s possession in connection
with a representation separate from the
practitioner’s own property. Funds shall
be kept in a separate account
maintained in the state where the
practitioner’s office is situated, or
elsewhere with the consent of the client
or third person. Where the practitioner’s
office is situated in a foreign country,
funds shall be kept in a separate account
maintained in that foreign country or
elsewhere with the consent of the client
or third person. Other property shall be
identified as such and appropriately
safeguarded. Complete records of such
account funds and other property shall
be kept by the practitioner and shall be
preserved for a period of five years after
termination of the representation.
(b) A practitioner may deposit the
practitioner’s own funds in a client trust
account for the sole purpose of paying
bank service charges on that account,
but only in an amount necessary for that
purpose.
(c) A practitioner shall deposit into a
client trust account legal fees and
expenses that have been paid in
advance, to be withdrawn by the
practitioner only as fees are earned or
expenses incurred.
(d) Upon receiving funds or other
property in which a client or third
person has an interest, a practitioner
shall promptly notify the client or third
person. Except as stated in this section
or otherwise permitted by law or by
agreement with the client, a practitioner
shall promptly deliver to the client or
third person any funds or other property
that the client or third person is entitled
to receive and, upon request by the
client or third person, shall promptly
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render a full accounting regarding such
property.
(e) When in the course of
representation a practitioner is in
possession of property in which two or
more persons (one of whom may be the
practitioner) claim interests, the
property shall be kept separate by the
practitioner until the dispute is
resolved. The practitioner shall
promptly distribute all portions of the
property as to which the interests are
not in dispute.
(f) All separate accounts for clients or
third persons kept by a practitioner
must also comply with the following
provisions:
(1) Required records. The records to
be kept include:
(i) Receipt and disbursement journals
containing a record of deposits to and
withdrawals from client trust accounts,
specifically identifying the date, source,
and description of each item deposited,
as well as the date, payee and purpose
of each disbursement;
(ii) Ledger records for all client trust
accounts showing, for each separate
trust client or beneficiary, the source of
all funds deposited, the names of all
persons for whom the funds are or were
held, the amount of such funds, the
descriptions and amounts of charges or
withdrawals, and the names of all
persons or entities to whom such funds
were disbursed;
(iii) Copies of retainer and
compensation agreements with clients;
(iv) Copies of accountings to clients or
third persons showing the disbursement
of funds to them or on their behalf;
(v) Copies of bills for legal fees and
expenses rendered to clients;
(vi) Copies of records showing
disbursements on behalf of clients;
(vii) The physical or electronic
equivalents of all checkbook registers,
bank statements, records of deposit, prenumbered canceled checks, and
substitute checks provided by a
financial institution;
(viii) Records of all electronic
transfers from client trust accounts,
including the name of the person
authorizing transfer, the date of transfer,
the name of the recipient and
confirmation from the financial
institution of the trust account number
from which money was withdrawn and
the date and the time the transfer was
completed;
(ix) Copies of monthly trial balances
and quarterly reconciliations of the
client trust accounts maintained by the
practitioner; and
(x) Copies of those portions of client
files that are reasonably related to client
trust account transactions.
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(2) Client trust account safeguards.
With respect to client trust accounts
required by paragraphs (a) through (e) of
this section:
(i) Only a practitioner or a person
under the direct supervision of the
practitioner shall be an authorized
signatory or authorize transfers from a
client trust account;
(ii) Receipts shall be deposited intact
and records of deposit should be
sufficiently detailed to identify each
item; and
(iii) Withdrawals shall be made only
by check payable to a named payee and
not to cash, or by authorized electronic
transfer.
(3) Availability of records. Records
required by paragraph (f)(1) of this
section may be maintained by
electronic, photographic, or other media
provided that they otherwise comply
with paragraphs (f)(1) and (f)(2) of this
section and that printed copies can be
produced. These records shall be readily
accessible to the practitioner.
(4) Lawyers. The records kept by a
lawyer are deemed to be in compliance
with this section if the types of records
that are maintained meet the
recordkeeping requirements of a state in
which the lawyer is licensed and in
good standing, the recordkeeping
requirements of the state where the
lawyer’s principal place of business is
located, or the recordkeeping
requirements of this section.
(5) Patent agents and persons granted
limited recognition who are employed in
the United States by a law firm. The
records kept by a law firm employing
one or more registered patent agents or
persons granted limited recognition
under § 11.9 are deemed to be in
compliance with this section if the types
of records that are maintained meet the
recordkeeping requirements of the state
where at least one practitioner of the
law firm is licensed and in good
standing, the recordkeeping
requirements of the state where the law
firm’s principal place of business is
located, or the recordkeeping
requirements of this section.
§ 11.116 Declining or terminating
representation.
(a) Except as stated in paragraph (c) of
this section, a practitioner shall not
represent a client, or where
representation has commenced, shall
withdraw from the representation of a
client if:
(1) The representation will result in
violation of the USPTO Rules of
Professional Conduct or other law;
(2) The practitioner’s physical or
mental condition materially impairs the
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practitioner’s ability to represent the
client; or
(3) The practitioner is discharged.
(b) Except as stated in paragraph (c)
of this section, a practitioner may
withdraw from representing a client if:
(1) Withdrawal can be accomplished
without material adverse effect on the
interests of the client;
(2) The client persists in a course of
action involving the practitioner’s
services that the practitioner reasonably
believes is criminal or fraudulent;
(3) The client has used the
practitioner’s services to perpetrate a
crime or fraud;
(4) A client insists upon taking action
that the practitioner considers
repugnant or with which the
practitioner has a fundamental
disagreement;
(5) 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;
(6) The representation will result in
an unreasonable financial burden on the
practitioner or has been rendered
unreasonably difficult by the client; or
(7) Other good cause for withdrawal
exists.
(c) A practitioner must comply with
applicable law requiring notice to or
permission of a tribunal when
terminating a representation. When
ordered to do so by a tribunal, a
practitioner shall continue
representation notwithstanding good
cause for terminating the representation.
(d) Upon termination of
representation, a practitioner shall take
steps to the extent 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 or expense that has not been earned
or incurred. The practitioner may retain
papers relating to the client to the extent
permitted by other law.
§ 11.117
Sale of law practice.
A practitioner or a law firm may sell
or purchase a law practice, or an area of
law practice, including good will, if the
following conditions are satisfied:
(a) The seller ceases to engage in the
private practice of law, or in the area of
practice that has been sold, in a
geographic area in which the practice
has been conducted;
(b)(1) Except as provided in paragraph
(b)(2) of this section, the entire practice,
or the entire area of practice, is sold to
one or more lawyers or law firms;
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(2) To the extent the practice or the
area of practice involves patent
proceedings before the Office, that
practice or area of practice may be sold
only to one or more registered
practitioners or law firms that include at
least one registered practitioner;
(c)(1) The seller gives written notice
to each of the seller’s clients regarding:
(i) The proposed sale;
(ii) The client’s right to retain other
counsel or to take possession of the file;
and
(iii) The fact that the client’s consent
to the transfer of the client’s files 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.
(2) 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; and
(d) The fees charged clients shall not
be increased by reason of the sale.
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§ 11.118
Duties to prospective client.
(a) A person who discusses with a
practitioner the possibility of forming a
client-practitioner relationship with
respect to a matter is a prospective
client.
(b) Even when no client-practitioner
relationship ensues, a practitioner who
has had discussions with the
prospective client shall not use or reveal
information learned in the consultation,
except as § 11.109 would permit with
respect to information of a former client.
(c) A practitioner subject to paragraph
(b) of this section shall not represent a
client with interests materially adverse
to those of a prospective client in the
same or a substantially related matter if
the practitioner received information
from the prospective client that could be
significantly harmful to that person in
the matter, except as provided in
paragraph (d) of this section. If a
practitioner is disqualified from
representation under this paragraph, no
practitioner in a firm with which that
practitioner is associated may
knowingly undertake or continue
representation in such a matter, except
as provided in paragraph (d) of this
section.
(d) When the practitioner has received
disqualifying information as defined in
paragraph (c) of this section,
representation is permissible if:
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(1) Both the affected client and the
prospective client have given informed
consent, confirmed in writing; or
(2) The practitioner who received the
information took reasonable measures to
avoid exposure to more disqualifying
information than was reasonably
necessary to determine whether to
represent the prospective client; and
(i) The disqualified practitioner is
timely screened from any participation
in the matter and is apportioned no part
of the fee therefrom; and
(ii) Written notice is promptly given
to the prospective client.
§§ 11.119–11.200
[Reserved]
Counselor
§ 11.201
Advisor.
In representing a client, a practitioner
shall exercise independent professional
judgment and render candid advice.
§ 11.202
[Reserved]
§ 11.203 Evaluation for use by third
persons.
(a) A practitioner may provide an
evaluation of a matter affecting a client
for the use of someone other than the
client if the practitioner reasonably
believes that making the evaluation is
compatible with other aspects of the
practitioner’s relationship with the
client.
(b) When the practitioner knows or
reasonably should know that the
evaluation is likely to affect the client’s
interests materially and adversely, the
practitioner shall not provide the
evaluation unless the client gives
informed consent.
(c) Except as disclosure is authorized
or 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 § 11.106.
§ 11.204
neutral.
Practitioner serving as third-party
(a) A practitioner serves as a thirdparty neutral when the practitioner
assists two or more persons who are not
clients of the practitioner to reach a
resolution of a dispute or other matter
that has arisen between them. Service as
a third-party neutral may include
service as an arbitrator, a mediator or in
such other capacity as will enable the
practitioner to assist the parties to
resolve the matter.
(b) A practitioner serving as a thirdparty neutral shall inform
unrepresented parties that the
practitioner is not representing them.
When the practitioner knows or
reasonably should know that a party
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does not understand the practitioner’s
role in the matter, the practitioner shall
explain the difference between the
practitioner’s role as a third-party
neutral and a practitioner’s role as one
who represents a client.
§§ 11.205–11.300
[Reserved]
Advocate
§ 11.301 Meritorious claims and
contentions.
A practitioner shall not bring or
defend a proceeding, or assert or
controvert an issue therein, unless there
is a basis in law and fact for doing so
that is not frivolous, which includes a
good-faith argument for an extension,
modification or reversal of existing law.
§ 11.302
Expediting proceedings.
A practitioner shall make reasonable
efforts to expedite proceedings before a
tribunal consistent with the interests of
the client.
§ 11.303
Candor toward the tribunal.
(a) A practitioner shall not knowingly:
(1) Make a false statement of fact or
law to a tribunal or fail to correct a false
statement of material fact or law
previously made to the tribunal by the
practitioner;
(2) Fail to disclose to the tribunal
legal authority in the controlling
jurisdiction known to the practitioner to
be directly adverse to the position of the
client and not disclosed by opposing
counsel in an inter partes proceeding, or
fail to disclose such authority in an ex
parte proceeding before the Office if
such authority is not otherwise
disclosed; or
(3) Offer evidence that the practitioner
knows to be false. If a practitioner, the
practitioner’s client, or a witness called
by the practitioner, has offered material
evidence and the practitioner comes to
know of its falsity, the practitioner shall
take reasonable remedial measures,
including, if necessary, disclosure to the
tribunal. A practitioner may refuse to
offer evidence that the practitioner
reasonably believes is false.
(b) A practitioner who represents a
client in a proceeding before a tribunal
and who knows that a person intends to
engage, is engaging or has engaged in
criminal or fraudulent conduct related
to the proceeding shall take reasonable
remedial measures, including, if
necessary, disclosure to the tribunal.
(c) The duties stated in paragraphs (a)
and (b) of this section continue to the
conclusion of the proceeding, and apply
even if compliance requires disclosure
of information otherwise protected by
§ 11.106.
(d) In an ex parte proceeding, a
practitioner shall inform the tribunal of
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all material facts known to the
practitioner that will enable the tribunal
to make an informed decision, whether
or not the facts are adverse.
(e) In a proceeding before the Office,
a practitioner shall disclose to the Office
information necessary to comply with
applicable duty of disclosure
provisions.
§ 11.304 Fairness to opposing party and
counsel.
A practitioner shall not:
(a) Unlawfully obstruct another
party’s access to evidence or unlawfully
alter, destroy or conceal a document 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 a tribunal except for
an open refusal based on an assertion
that no valid obligation exists;
(d) 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 a tribunal,
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.
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§ 11.305 Impartiality and decorum of the
tribunal.
A practitioner shall not:
(a) Seek to influence a judge, hearing
officer, administrative law judge,
administrative patent judge,
administrative trademark judge, juror,
prospective juror, employee or officer of
the Office, or other official by means
prohibited by law;
(b) Communicate ex parte with such
a person during the proceeding unless
authorized to do so by law, rule or court
order; or
(c) [Reserved]
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(d) Engage in conduct intended to
disrupt any proceeding before a
tribunal.
§ 11.306
[Reserved]
§ 11.307
Practitioner as witness.
(a) A practitioner shall not act as
advocate at a proceeding before a
tribunal in which the practitioner is
likely to be a necessary witness unless:
(1) The testimony relates to an
uncontested issue;
(2) The testimony relates to the nature
and value of legal services rendered in
the case;
(3) Disqualification of the practitioner
would work substantial hardship on the
client; or
(4) The testimony relates to a duty of
disclosure.
(b) A practitioner may act as advocate
in a proceeding before a tribunal in
which another practitioner in the
practitioner’s firm is likely to be called
as a witness unless precluded from
doing so by §§ 11.107 or 11.109.
§ 11.308
[Reserved]
§ 11.309 Advocate in nonadjudicative
proceedings.
A practitioner representing a client
before a legislative body or
administrative agency in a
nonadjudicative proceeding shall
disclose that the appearance is in a
representative capacity and shall
conform to the provisions of
§§ 11.303(a) through (c), 11.304 (a)
through (c), and 11.305.
§§ 11.310–11.400
[Reserved]
Transactions With Persons Other Than
Clients
§ 11.401
others.
Truthfulness in statements to
In the course of representing a client,
a practitioner shall not knowingly:
(a) Make a false statement of material
fact or law to a third person; or
(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 § 11.106.
§ 11.402 Communication with person
represented by a practitioner.
(a) In representing a client, a
practitioner shall not communicate
about the subject of the representation
with a person the practitioner knows to
be represented by another practitioner
in the matter, unless the practitioner has
the consent of the other practitioner or
is authorized to do so by law, rule, or
a court order.
(b) This section does not prohibit
communication by a practitioner with
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government officials who are otherwise
represented by counsel and who have
the authority to redress the grievances of
the practitioner’s client, provided that,
if the communication relates to a matter
for which the government official is
represented, then prior to the
communication the practitioner must
disclose to such government official
both the practitioner’s identity and the
fact that the practitioner represents a
party with a claim against the
government.
§ 11.403
person.
Dealing with unrepresented
In dealing on behalf of a client with
a person who is not represented by a
practitioner, a practitioner shall not
state or imply 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. The practitioner
shall not give legal advice to an
unrepresented person, other than the
advice to secure counsel, if the
practitioner knows or reasonably should
know that the interests of such a person
are or have a reasonable possibility of
being in conflict with the interests of the
client.
§ 11.404 Respect for rights of third
persons.
(a) In representing a client, 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.
(b) A practitioner who receives a
document relating to the representation
of the practitioner’s client and knows or
reasonably should know that the
document was inadvertently sent shall
promptly notify the sender.
§§ 11.405–11.500
[Reserved]
Law Firms and Associations
§ 11.501 Responsibilities of partners,
managers, and supervisory practitioners.
(a) A practitioner who is a partner in
a law firm, and a practitioner who
individually or together with other
practitioners possesses comparable
managerial authority 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
USPTO Rules of Professional Conduct.
(b) A practitioner having direct
supervisory authority over another
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practitioner shall make reasonable
efforts to ensure that the other
practitioner conforms to the USPTO
Rules of Professional Conduct.
(c) A practitioner shall be responsible
for another practitioner’s violation of
the USPTO 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 or has
comparable managerial authority 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.
§ 11.502 Responsibilities of a subordinate
practitioner.
(a) A practitioner is bound by the
USPTO Rules of Professional Conduct
notwithstanding that the practitioner
acted at the direction of another person.
(b) A subordinate practitioner does
not violate the USPTO Rules of
Professional Conduct if that practitioner
acts in accordance with a supervisory
practitioner’s reasonable resolution of
an arguable question of professional
duty.
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§ 11.503 Responsibilities regarding nonpractitioner assistants.
With respect to a non-practitioner
assistant employed or retained by or
associated with a practitioner:
(a) A practitioner who is a partner,
and a practitioner who individually or
together with other practitioners
possesses comparable managerial
authority 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 assistant 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 USPTO 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 or has
comparable managerial authority in the
law firm in which the person is
employed, or has direct supervisory
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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.
§ 11.504 Professional independence of a
practitioner.
(a) A practitioner or law firm shall not
share legal fees with a non-practitioner,
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 § 11.117, pay to the
estate or other representative of that
practitioner the agreed-upon purchase
price;
(3) A practitioner or law firm may
include non-practitioner employees in a
compensation or retirement plan, even
though the plan is based in whole or in
part on a profit-sharing arrangement;
and
(4) A practitioner may share legal fees,
whether awarded by a tribunal or
received in settlement of a matter, with
a nonprofit organization that employed,
retained or recommended employment
of the practitioner in the matter and that
qualifies under Section 501(c)(3) of the
Internal Revenue Code.
(b) A practitioner shall not form a
partnership with a non-practitioner if
any of the activities of the partnership
consist of the practice of law.
(c) A practitioner shall not permit a
person who recommends, employs, or
pays the practitioner to render legal
services for another to direct or regulate
the practitioner’s professional judgment
in rendering such legal services.
(d) A practitioner shall not practice
with or in the form of a professional
corporation or association authorized to
practice law for a profit, if:
(1) A non-practitioner 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 non-practitioner is a corporate
director or officer thereof or occupies
the position of similar responsibility in
any form of association other than a
corporation; or
(3) A non-practitioner has the right to
direct or control the professional
judgment of a practitioner.
§ 11.505
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Unauthorized practice of law.
A practitioner shall not:
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64213
(a) Practice law in a jurisdiction in
violation of the regulation of the legal
profession in that jurisdiction;
(b) Practice before the Office in
patent, trademark, or other non-patent
law in violation of this subchapter;
(c) Assist a person who is not a
member of the bar of a jurisdiction in
the performance of an activity that
constitutes the unauthorized practice of
law, or assist a person who is not a
registered patent practitioner in the
performance of an activity that
constitutes unauthorized patent practice
before the Office;
(d) Aid a suspended, disbarred or
excluded practitioner in the
unauthorized practice of patent,
trademark, or other non-patent law
before the Office;
(e) Aid a suspended, disbarred or
excluded attorney in the unauthorized
practice of law in any other jurisdiction;
or
(f) 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.
§ 11.506
Restrictions on right to practice.
A practitioner shall not participate in
offering or making:
(a) A partnership, shareholders,
operating, employment, or other similar
type of agreement that restricts the right
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
client controversy.
§ 11.507 Responsibilities regarding lawrelated services.
A practitioner shall be subject to the
USPTO Rules of Professional Conduct
with respect to the provision of lawrelated services if the law-related
services are provided:
(a) By the practitioner in
circumstances that are not distinct from
the practitioner’s provision of legal
services to clients; or
(b) In other circumstances by an 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 are not legal
services and that the protections of the
client-practitioner relationship do not
exist.
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§§ 11.508–11.700
[Reserved]
Information About Legal Services
§ 11.701 Communications concerning a
practitioner’s services.
A practitioner shall not make a false
or misleading communication about the
practitioner or the practitioner’s
services. A communication is false or
misleading if it contains a material
misrepresentation of fact or law, or
omits a fact necessary to make the
statement considered as a whole not
materially misleading.
§ 11.702
Advertising.
(a) Subject to the requirements of
§§ 11.701 and 11.703, a practitioner may
advertise services through written,
recorded or electronic communication,
including public media.
(b) A practitioner shall not give
anything of value to a person for
recommending the practitioner’s
services except that a practitioner may:
(1) Pay the reasonable costs of
advertisements or communications
permitted by this section;
(2) [Reserved];
(3) Pay for a law practice in
accordance with § 11.117; and
(4) Refer clients to another
practitioner or a non-practitioner
professional pursuant to an agreement
not otherwise prohibited under the
USPTO Rules of Professional Conduct
that provides for the other person to
refer clients or customers to the
practitioner, if:
(i) The reciprocal referral agreement is
not exclusive, and
(ii) The client is informed of the
existence and nature of the agreement.
(c) Any communication made
pursuant to this section shall include
the name and office address of at least
one practitioner or law firm responsible
for its content.
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§ 11.703
clients.
Direct contact with prospective
(a) A practitioner shall not by inperson, live telephone or real-time
electronic contact solicit professional
employment from a prospective client
when a significant motive for the
practitioner’s doing so is the
practitioner’s pecuniary gain, unless the
person contacted:
(1) Is a practitioner; or
(2) Has a family, close personal, or
prior professional relationship with the
practitioner.
(b) A practitioner shall not solicit
professional employment from a
prospective client by written, recorded
or electronic communication or by inperson, telephone or real-time electronic
contact even when not otherwise
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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 coercion,
duress or harassment.
(c) Every written, recorded or
electronic communication from a
practitioner soliciting professional
employment from a prospective client
known to be in need of legal services in
a particular matter shall include the
words ‘‘Advertising Material’’ on the
outside envelope, if any, and at the
beginning and ending of any recorded or
electronic communication, unless the
recipient of the communication is a
person specified in paragraphs (a)(1) or
(a)(2) of this section.
(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 that 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.
§ 11.704 Communication of fields of
practice and specialization.
(a) A practitioner may communicate
the fact that the practitioner does or
does not practice in particular fields of
law.
(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. A
registered practitioner who is not an
attorney may use the designation
‘‘Patents,’’ ‘‘Patent Agent,’’ ‘‘Registered
Patent Agent,’’ or a substantially similar
designation. Unless authorized by
§ 11.14(b), a registered patent agent shall
not hold himself or herself out as being
qualified or authorized to practice
before the Office in trademark matters or
before a court.
(c) [Reserved].
(d) A practitioner shall not state or
imply that a practitioner is certified as
a specialist in a particular field of law,
unless:
(1) The practitioner has been certified
as a specialist by an organization that
has been approved by an appropriate
state authority or that has been
accredited by the American Bar
Association; and
(2) The name of the certifying
organization is clearly identified in the
communication.
PO 00000
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(e) An individual granted limited
recognition under § 11.9 may use the
designation ‘‘Limited Recognition.’’
§ 11.705
Firm names and letterheads.
(a) A practitioner shall not use a firm
name, letterhead or other professional
designation that violates § 11.701. A
trade name may be used by a
practitioner in private practice 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
§ 11.701.
(b) [Reserved].
(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.
§ 11.706–11.800
[Reserved]
Maintaining the Integrity of the
Profession
§ 11.801 Registration, recognition and
disciplinary matters.
An applicant for registration or
recognition to practice before the Office,
or a practitioner in connection with an
application for registration or
recognition, or a practitioner in
connection with a disciplinary or
reinstatement matter, shall not:
(a) Knowingly make a false statement
of material fact, or
(b) Fail to disclose a fact necessary to
correct a misapprehension known by
the person to have arisen in the matter,
or
(c) Knowingly fail to respond to a
lawful demand or request for
information from an admissions or
disciplinary authority, except that the
provisions of this section do not require
disclosure of information otherwise
protected by § 11.106, or
(d) Fail to cooperate with the Office
of Enrollment and Discipline in an
investigation of any matter before it.
§ 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,
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.
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§ 11.803 Reporting professional
misconduct.
(a) A practitioner who knows that
another practitioner has committed a
violation of the USPTO 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 OED Director
and any other appropriate professional
authority.
(b) A practitioner who knows that a
judge, hearing officer, administrative
law judge, administrative patent judge,
or administrative trademark judge has
committed a violation of applicable
rules of judicial conduct that raises a
substantial question as to the
individual’s fitness for office shall
inform the appropriate authority.
(c) The provisions of this section do
not require disclosure of information
otherwise protected by § 11.106 or
information gained while participating
in an approved lawyers assistance
program.
§ 11.804
Misconduct.
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It is professional misconduct for a
practitioner to:
(a) Violate or attempt to violate the
USPTO 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;
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(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 or to achieve results
by means that violate the USPTO Rules
of Professional Conduct or other law;
(f) Knowingly assist a judge, hearing
officer, administrative law judge,
administrative patent judge,
administrative trademark judge, or
judicial officer in conduct that is a
violation of applicable rules of judicial
conduct or other law;
(g) Knowingly assist an officer or
employee of the Office in conduct that
is a violation of applicable rules of
conduct or other law;
(h) Be publicly disciplined on ethical
or professional misconduct grounds by
any duly constituted authority of:
(1) A State,
(2) The United States, or
(3) The country in which the
practitioner resides; or
(i) Engage in other conduct that
adversely reflects on the practitioner’s
fitness to practice before the Office.
§ 11.805–11.900
§ 11.901
[Reserved]
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
PO 00000
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Fmt 4701
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64215
effective date, if such conduct would
continue to justify disciplinary
sanctions 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.
PART 41—PRACTICE BEFORE THE
PATENT TRIAL AND APPEAL BOARD
27. The authority citation for 37 CFR
part 41 continues to read as follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21,
23, 32, 41, 134, and 135.
28. Revise § 41.5(c) to read as follows:
§ 41.5
Counsel.
*
*
*
*
*
(c) Withdrawal. Counsel may not
withdraw from a proceeding before the
Board unless the Board authorizes such
withdrawal. See § 11.116 of this
subchapter regarding conditions for
withdrawal.
*
*
*
*
*
Dated: October 10, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2012–25355 Filed 10–17–12; 8:45 am]
BILLING CODE 3510–16–P
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]]>Agencies
[Federal Register Volume 77, Number 202 (Thursday, October 18, 2012)]
[Proposed Rules]
[Pages 64189-64215]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-25355]
[[Page 64189]]
Vol. 77
Thursday,
No. 202
October 18, 2012
Part II
Department of Commerce
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Patent and Trademark Office
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37 CFR Part 1, 2, 7, 10, et al.
Changes to Representation of Others Before the United States Patent and
Trademark Office; Proposed Rule
Federal Register / Vol. 77 , No. 202 / Thursday, October 18, 2012 /
Proposed Rules
[[Page 64190]]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 1, 2, 7, 10, 11 and 41
[Docket No. PTO-C-2012-0034]
RIN 0651-AC81
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 align the USPTO's professional responsibility rules
with those of most other U.S. jurisdictions by replacing the current
Patent and Trademark Office Code of Professional Responsibility,
adopted in 1985, based on the 1980 version of the Model Code of
Professional Responsibility of the American Bar Association (``ABA''),
with new USPTO Rules of Professional Conduct, which are based on the
Model Rules of Professional Conduct of the ABA, which were published in
1983, substantially revised in 2003 and updated through 2011. Changes
approved by the ABA House of Delegates in August 2012 have not been
incorporated in these proposed rules. The Office also proposes to
revise the existing procedural rules governing disciplinary
investigations and proceedings.
DATES: To be ensured of consideration, written comments must be
received on or before December 17, 2012.
ADDRESSES: Comments should be sent by electronic mail message 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, marked to the attention of William R. Covey,
Deputy General Counsel for Enrollment and Discipline and Director of
the Office of Enrollment and Discipline.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (https://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments are preferred to be submitted in
plain text, but also may be submitted in ADOBE[supreg] portable
document format or MICROSOFT WORD[supreg] format. Comments not
submitted electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE[supreg] portable
document format.
Comments will be made available for public inspection at the Office
of Enrollment and Discipline, located on the 8th Floor of the Madison
West Building, 600 Dulany Street, Alexandria, Virginia. Comments also
will be available for viewing via the Office's Internet Web site
(https://www.uspto.gov). Because comments will be made available for
public inspection, information that the submitter does not desire to
make public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: William R. Covey, Deputy General
Counsel for Enrollment and Discipline and Director of the Office of
Enrollment and Discipline, by telephone at 571-272-4097.
SUPPLEMENTARY INFORMATION:
Executive Summary
Pursuant to 35 U.S.C. 2(b)(2)(D), the Office governs ``the
recognition and conduct of agents, attorneys, or other persons
representing applicants or other parties before the Office.'' The
Office also has the authority to suspend or exclude from practice
before the Office any practitioner who ``is shown 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 this
title.'' 35 U.S.C. 32. Pursuant to the authority provided in sections
2(b)(2)(D) and 32 of Title 35, practitioners representing parties in
patent, trademark and other non-patent matters presently are required
to conform to the Patent and Trademark Office Code of Professional
Responsibility set forth in 37 CFR 10.20 through 10.112. These rules
have been in place since 1985 and are based on the ABA Model Code of
Professional Responsibility. See 50 FR 5158 (February 6, 1985). Since
that time, the vast majority of State bars in the United States have
adopted substantive disciplinary rules based on the newer ABA Model
Rules of Professional Conduct. As noted below, the Office believes
individuals representing others before the Office will benefit from
modernization of the regulations governing professional conduct before
the Office and harmonization of these regulations with corresponding
rules adopted by bars in the States and the District of Columbia.
The bars of 50 U.S. jurisdictions including the District of
Columbia have adopted the ABA Model Rules of Professional Conduct or a
modification thereof. This notice of proposed rulemaking sets out
proposed USPTO Rules of Professional Conduct. The changes from the
existing USPTO Code of Professional Responsibility are intended to
bring standards of ethical practice before the Office into closer
conformity with the Rules of Professional Conduct adopted by nearly all
States and the District of Columbia, while addressing circumstances
particular to practice before the Office. By adopting professional
conduct rules consistent with the ABA Model Rules and the professional
responsibility rules of 50 U.S. jurisdictions, the USPTO both would
provide attorneys with consistent professional conduct standards, and
would provide practitioners with large bodies of both case law and
opinions written by disciplinary authorities that have adopted the ABA
Model Rules of Professional Conduct. At this time, nearly 42,000
individuals are registered practitioners, of whom at least 75% are
attorneys. The registered patent attorneys have offices located in all
fifty States, the District of Columbia, and more than forty foreign
countries. In addition to registered patent attorneys, any attorney who
is a member in good standing of the bar of the highest court of a
State, territory or possession of the United States is eligible to
practice before the Office in trademark and other non-patent matters,
without becoming a registered practitioner. 5 U.S.C. 500(b); 37 CFR
11.14. The attorneys who appear before the Office are subject to these
rules as well. 37 CFR 11.19.
A body of precedent specific to practice before the USPTO will
develop as disciplinary matters brought under the USPTO Rules of
Professional Conduct progress through the USPTO and the Federal Courts.
In the absence of binding USPTO-specific precedent, practitioners may
refer to various sources for guidance. For example, it is expected that
precedent based on the current Patent and Trademark Office Code of
Professional Responsibility will assist interpretation of professional
conduct standards under the proposed USPTO Rules of Professional
Conduct. A practitioner also may refer to the Comments and Annotations
to the ABA Model Rules of Professional Conduct for
[[Page 64191]]
guidance as to how to interpret the equivalent USPTO Rules of
Professional Conduct. Additionally, relevant guidance may be provided
by opinions issued by State bars and disciplinary decisions based on
similar professional conduct rules in the States. Such guidance is not
binding precedent relative to USPTO Rules of Professional Conduct, but
it may provide a useful tool in interpreting the rules while a larger
body of USPTO-specific precedent is established.
This rulemaking benefits and reduces costs for most practitioners
by clarifying and streamlining their professional responsibility
obligations. With this rulemaking, the USPTO would be adopting
professional conduct rules consistent with the ABA Model Rules and the
professional responsibility rules already followed by 50 U.S.
jurisdictions, i.e., the District of Columbia and 49 States, excluding
California. Further, any change is not a significant deviation from
rules of professional conduct for practitioners that are already
required by the Office.
Table 1 shows the principal sources of the rules proposed for the
USPTO Rules of Professional Conduct. In general, numbering of the USPTO
Rules of Professional Conduct largely track numbering of the ABA Model
Rules of Professional Conduct. For example, USPTO Rule of Professional
Conduct 11.101 parallels ABA Model Rule of Professional Conduct 1.1;
USPTO Rule of Professional Conduct 11.102 parallels ABA Model Rule of
Professional Conduct 1.2; USPTO Rule of Professional Conduct 11.201
parallels ABA Model Rule of Professional Conduct 2.1; et cetera. The
discussion below highlights instances where the USPTO Rules of
Professional Conduct diverge from the ABA Model Rules of Professional
Conduct.
The proposed USPTO Rules of Professional Conduct reserve or decline
to implement certain provisions set forth in the ABA Model Rules of
Professional Conduct. For example, the ABA Model Rules set forth
specific provisions concerning domestic relations or criminal practice
that do not appear in the proposed USPTO Rules of Professional
Responsibility. See, e.g., sections 11.102, 11.105(d), 11.108(g),
11.108(j), 11.301, 11.303(a)(3), 11.306, 11.308 and 11.704(c). Conduct
that would violate an unadopted provision might nevertheless also
violate an adopted provision (e.g., the conduct might also violate the
broader obligations under section 11.804 of the proposed USPTO Rules of
Professional Conduct). In addition, a licensed attorney is subject to
the professional conduct rules of appropriate State licensing
authorities, as well as of any courts before which the attorney
practices. Failure to comply with those rules may lead to disciplinary
action against the practitioner by the appropriate State bar or court
and, in turn, possible reciprocal action against the practitioner by
the USPTO. See 37 CFR 11.24 and 11.804(h).
In August 2012, the ABA House of Delegates approved revisions to
the ABA Model Rules of Professional Conduct recommended by the ABA
Commission on Ethics 20/20. See https://www.americanbar.org/content/dam/aba/administrative/ethics_2020/20120808_house_action_compilation_redline_105a-f.authcheckdam.pdf. These revisions have not been
incorporated into these proposed rules since the states have not
adopted those changes at this time. However, comments are solicited as
to whether those changes should be incorporated into the USPTO Rules of
Professional Conduct.
The Office does not propose any change to the preamble to section
11.1. This preamble provides in part: ``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.'' Attorneys who
practice before the Office are subject to professional conduct rules
established by the Office as well as the appropriate State bars.
The Office adopted rules governing the conduct of disciplinary
investigations in 2008. See 73 FR 47650 (August 14, 2008). Experience
under these rules has demonstrated areas in which the rules could be
clarified. Accordingly, the Office also proposes revisions to existing
rules set forth at 37 CFR 11.19, 11.20, 11.22, 11.32, 11.34, 11.35 and
11.54. Finally, the Office proposes incorporating the survey rule,
currently set forth at 37 CFR 10.11, as section 11.11(a)(2).
Discussion of Specific Rules
Section 1.4(d)(4) would be corrected by deleting the reference to
section 11.804(b)(9), which does not exist.
Sections 1.21(a)(7) and (a)(8) would be deleted since the annual
practitioner maintenance fee is proposed to be removed by this rule
package. The Office has published a Notice of Proposed Rulemaking,
Setting and Adjusting Patent Fees, 77 FR 55028, 55082, proposing to
adjust the practitioner maintenance fee to $120, and noting elsewhere
in the rulemaking materials that the Office has suspended collection of
those fees, making total collections $0. The Office now proposes to
remove this practitioner maintenance fee which is set forth in 11.8(d).
Section 2.2(c) would be revised to delete the reference to part 10
of this chapter, which would be removed and reserved.
Section 7.25(a) would be revised to delete the reference to part 10
of this chapter, which would be removed and reserved.
Section 11.1 would set out definitions of terms used in the USPTO
Rules of Professional Conduct. The definitions of mandatory
disciplinary rule and matter have been deleted; the definitions of
fraud or fraudulent and practitioner have been revised; and the terms
confirmed in writing, firm or law firm, informed consent, law-related
services, partner, person, reasonable belief or reasonably believes,
reasonably should know, screened, tribunal, and writing or written
would be newly defined. The definition of practitioner would be updated
to refer to section 11.14 rather than section 10.14, and to refer to
sections 11.14(a), (b) and (c) rather than sections 11.14(b), (c) and
(e). The new definitions generally comport to definitions set forth in
the ABA Model Rules of Professional Conduct. However, the definition of
fraud or fraudulent used in the ABA Model Rules has not been adopted.
Instead, the Office believes a uniform definition based on common law
should apply to all individuals subject to the USPTO Rules of
Professional Conduct. Accordingly, the definition of common law fraud
is based on the definition discussed by the United States Court of
Appeals for the Federal Circuit. See Unitherm Food Systems, Inc. v.
Swift-Ekrich, Inc., 375 F.3d 1341, 1358 (Fed. Cir. 2004); In re
Spalding Sports Worldwide, Inc., 203 F.3d 800, 807 (Fed. Cir. 2000).
Further, in the definition of tribunal, the reference to ``the Office''
includes those persons or entities acting in an adjudicative capacity.
Section 11.2(c) would be revised to delete redundant language.
Section 11.2(d) would be revised to clarify that a party
dissatisfied with a final decision of the OED Director regarding
enrollment or recognition must exhaust administrative remedies before
seeking relief under the Administrative Procedure Act, 5 U.S.C. 551 et
seq.
Section 11.2(e) would be revised to clarify that a party
dissatisfied with an action or notice of the OED Director
[[Page 64192]]
during or at the conclusion of a disciplinary investigation must
exhaust administrative remedies before seeking relief under the
Administrative Procedure Act, 5 U.S.C. 551 et seq.
Section 11.8(d) would be reserved. The USPTO is deleting reference
to an annual practitioner maintenance fee.
Section 11.11 would be revised to change the language ``registered
attorney or agent'' to ``registered practitioner'' and add the term
``registered'' as appropriate.
Section 11.11(a) and (b) would be revised to substantially
incorporate the provisions currently set forth in 37 CFR 10.11.
Specifically, the current provisions of section 11.11(a) would appear
as section 11.11(a)(1) and the current provisions of section 10.11
would appear as section 11.11(a)(2). Additionally, section 11.11(b)
would be revised to provide that a practitioner failing to comply with
section 11.11(a)(2) would be placed on administrative suspension,
rather than removed from the register as set forth in section 10.11.
Additionally, section 11.11(b)(1) would be revised to delete reference
to section 11.8(d). Also, section 11.11(b)(4) would be deleted and
reserved since an annual practitioner maintenance fee would be deleted
by this rules package.
Section 11.11(c) would be revised to change the reference to the
``Mandatory Disciplinary Rules'' to the ``USPTO Rules of Professional
Conduct.'' Section 11.11(c) would also be revised to delete reference
to an annual practitioner maintenance fee.
Section 11.11(d) would be revised by updating the previous
reference to section 10.40 to refer to section 11.116, which, with this
rulemaking, would include provisions related to withdrawal from
representation. Section 11.11(d) would also be revised to delete
reference to an annual practitioner maintenance fee. Sections
11.11(d)(2) and (d)(4) are deleted and reserved since they are directed
to an annual practitioner maintenance fee.
Section 11.11(e) would be revised to update the reference to the
``Mandatory Disciplinary Rules'' to read ``USPTO Rules of Professional
Conduct.''
Section 11.11(f) would be revised to remove reference to sections
1.21(a)(7)(i) and (a)(8)(i) which provide for annual practitioner
maintenance fees.
Section 11.19(a) would be revised to expressly provide jurisdiction
over a person not registered or recognized to practice before the
Office if the person provides or offers to provide any legal services
before the Office. This change is consistent with the USPTO's statutory
and inherent authority to regulate practice before the Office, and it
is consistent with the second sentence of ABA Model Rule of
Professional Conduct 8.5(a).
Section 11.20(a)(4) would be revised to clarify that disciplinary
sanctions that may be imposed upon revocation of probation are not
necessarily limited to the remainder of the probation period.
Section 11.20(b) would be revised to more clearly set forth
conditions that may be imposed with discipline.
Section 11.21 would be revised to update the reference to the
``Mandatory Disciplinary Rules'' to read ``USPTO Rules of Professional
Conduct.''
Section 11.22 would be revised to change the title to
``Disciplinary Investigations'' for clarification.
Section 11.22(f)(2) would be revised to update the reference to the
``Mandatory Disciplinary Rules'' to read ``USPTO Rules of Professional
Conduct.''
Section 11.22(i) would be revised to correct a technical error in
the heading. Specifically, the reference to a warning letter in the
heading could mistakenly be viewed as indicating that issuance of a
warning means at least one of the conditions set forth in that section
apply. Indeed, a warning may be issued in situations where, for
example, there is sufficient evidence to conclude that there is
probable cause to believe that grounds exist for discipline. However,
in a situation where a potential violation of the disciplinary rules is
minor in nature or was not willful, it often is in the interest of the
Office, practitioners, and the public to resolve the matter with a
warning rather than a formal disciplinary action.
Section 11.24(e) would be revised to make a technical correction.
Specifically, the previous reference to 37 CFR 10.23 would be updated
to refer to new section 11.804.
Section 11.25(a) would be revised to update the reference to the
``Mandatory Disciplinary Rules'' to read ``USPTO Rules of Professional
Conduct.''
Section 11.32 would be revised to clarify that the Director of the
Office of Enrollment and Discipline has the authority to exercise
discretion in referring matters to the Committee on Discipline and in
recommending settlement or issuing a warning in matters wherein the
Committee on Discipline has made a probable cause determination. The
section also would be revised to make a technical correction by
deleting the reference to sections 11.19(b)(3) through (5), which do
not exist.
Section 11.34 would be revised to incorporate several technical
corrections. Specifically, section 11.34(a) would be revised to
eliminate an erroneous reference to section 11.25(b)(4). The
requirements set forth in section 11.34 apply to complaints filed in
disciplinary proceedings filed under sections 11.24, 11.25 and 11.32.
The revision to section 11.34(a)(1) clarifies that an individual other
than a ``practitioner'' may be a respondent. The revision to section
11.34(b) updates the reference to the ``Mandatory Disciplinary Rules''
to read ``USPTO Rules of Professional Conduct.''
Section 11.35(a)(2)(ii) and (a)(4)(ii) would be revised by changing
the term ``a nonregistered practitioner'' to ``not registered.'' The
section would now specify the service address for an individual subject
to the Office's disciplinary jurisdiction who does not meet the
definition of ``practitioner'' set forth in section 11.1.
Section 11.54(a)(2) and (b) would be revised to clarify that an
initial decision of the hearing officer may impose conditions deemed
appropriate under the circumstances, and should explain the reason for
probation and any conditions imposed with discipline.
Section 11.58(b)(2) would be revised to update the reference to
section 10.40 to refer to section 11.116.
Section 11.58(f)(1)(ii) would be revised to update the reference to
the ``Mandatory Disciplinary Rules'' to read ``USPTO Rules of
Professional Conduct'' and to delete reference to section 10.20(b).
Section 11.61 would be deleted and reserved. A savings clause would
be added at the end of Part 11.
USPTO Rules of Professional Conduct
Section 11.101 would address the requirement that practitioners
provide competent representation to a client. Consistent with the
provisions of 37 CFR 11.7, this rule acknowledges that competent
representation in patent matters requires scientific and technical
knowledge, skill, thoroughness and preparation as well as legal
knowledge, skill, thoroughness and preparation, and otherwise
corresponds to the ABA Model Rule of Professional Conduct 1.1.
Section 11.102 would provide for the scope of representation of a
client by a practitioner and the allocation of authority between the
client and the practitioner. This section corresponds to the ABA Model
Rule of Professional Conduct 1.2. However, the USPTO is declining to
enact the substance of the last sentence of ABA Model Rule of
Professional Conduct 1.2(a) as the USPTO does not regulate criminal law
practice. Nonetheless, a patent attorney who engages in the practice of
criminal law is subject to the disciplinary rules
[[Page 64193]]
of the appropriate State and Court authorities. Failure to comply with
those rules may lead to disciplinary action against the practitioner
and, in turn, possible reciprocal action against the practitioner by
the USPTO. See 37 CFR 11.24 and 11.804(h). Moreover, the lack of a
specific disciplinary rule concerning particular conduct should not be
viewed as suggesting that the conduct would not violate one of the
USPTO Rules of Professional Conduct.
Section 11.102(b) is reserved as the USPTO is declining to enact a
specific rule regarding a practitioner's endorsement of a client's view
or activities. However, the USPTO is not implying that a practitioner's
representation of a client constitutes an endorsement of the client's
political, economic, social, or moral views or activities.
Section 11.103 would address a practitioner's duty to act with
reasonable diligence and promptness in representing a client. This rule
corresponds to the ABA Model Rule of Professional Conduct 1.3.
Section 11.104 would address the practitioner's duty to communicate
with the client. This rule corresponds to the ABA Model Rule of
Professional Conduct 1.4. As in prior Sec. 10.23(c)(8), under this
rule a practitioner should not fail to timely and adequately inform a
client or former client of correspondence received from the Office in a
proceeding before the Office or from 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 address the practitioner's responsibilities
regarding fees. This rule corresponds to the ABA Model Rule of
Professional Conduct 1.5. Nothing in paragraph (c) should be construed
to prohibit practitioners gaining proprietary interests in patents
under section 11.108(i)(3).
Section 11.105(d) is reserved as the USPTO is declining to enact a
specific rule regarding contingent fee arrangements for domestic
relations and criminal matters.
Section 11.106 would address the practitioner's responsibilities
regarding maintaining confidentiality of information. This section
generally corresponds to the ABA Model Rule of Professional Conduct
1.6, but it includes exceptions in the case of inequitable conduct
before the Office in addition to crimes and fraud.
Section 11.106(b)(3) would state that a practitioner may reveal
information relating to the representation of a client to the extent
the practitioner reasonably believes necessary to prevent, mitigate or
rectify substantial injury to the financial interests or property of
another that is reasonably certain to result or has resulted from
inequitable conduct before the Office.
Section 11.106(c) would additionally provide that regardless of the
confidentiality requirements of Section 11.106(a), a practitioner is
required to disclose to the Office all information necessary to comply
with the duty of disclosure rules of this subchapter in practice before
the Office.
Section 11.107 would prohibit a practitioner from representing a
client if the representation involves a concurrent conflict of
interest. This rule corresponds to the ABA Model Rule of Professional
Conduct 1.7. See also, 37 CFR 10.66.
Section 11.108 would address conflicts of interest for current
clients and specific rules, including rules regarding practitioners
entering into business transactions with clients, the use of
information by a practitioner relating to representation of a client,
gifts between the practitioner and a client, literary rights based on
information relating to representation of a client, a practitioner's
provision of financial assistance to the client, compensation for
services by a third party, aggregate settlement of claims where the
practitioner represents two or more clients in a similar matter,
agreements between the client and practitioner limiting liability of
the practitioner, and the practitioner's acquiring a proprietary
interest in the matter. This rule corresponds to the ABA Model Rule of
Professional Conduct 1.8.
Section 11.108(e) would provide that a practitioner shall not
provide financial assistance to a client in connection with pending or
contemplated litigation or proceeding before the Office, except that a
practitioner may advance court or tribunal costs and expenses of either
litigation or a proceeding before the Office and a practitioner
representing an indigent client may pay court or tribunal costs and
expenses of litigation or a proceeding before the Office.
Section 11.108(g) differs from ABA Model Rule of Professional
Conduct 1.8(g) in that the USPTO is declining to enact the portion of
the rule relating to representation of clients in criminal matters and
the corresponding regulation of multiple clients agreeing to an
aggregated agreement as to guilty or nolo contendere pleas.
Section 11.108(i) differs from ABA Model Rule of Professional
Conduct 1.8(i) in that the USPTO would provide that a practitioner may,
in a patent case, take an interest in the patent as part or all of his
or her fee. See 37 CFR 10.64(a)(3).
Section 11.108(j) is reserved. The USPTO is declining to enact a
rule that would specifically address sexual relations between
practitioners and clients. Because of the fiduciary duty to clients,
combining a professional relationship with any intimate personal
relationship may raise concerns about conflict of interest and
impairment of the judgment of both practitioner and client. To the
extent warranted, such conduct may be investigated under more general
provisions (e.g., 37 CFR 11.804).
Section 11.109 would address conflicts of interest and duties to
former clients. This rule corresponds to the ABA Model Rule of
Professional Conduct 1.9.
Section 11.110 would address the imputation of conflicts of
interest for practitioners in the same firm. This rule corresponds to
the ABA Model Rule of Professional Conduct 1.10.
Section 11.111 would address former or current Federal Government
employees. This rule deals with practitioners who leave public office
and enter other employment. It applies to judges and their law clerks
as well as to practitioners who act in other capacities. The USPTO is
declining to enact ABA Model Rule of Professional Conduct 1.11 and is
instead enacting its own rule regarding successive government and
private employment, namely, that a practitioner who is a former or
current Federal Government employee shall not engage in any conduct
which is contrary to applicable Federal ethics laws, including conflict
of interest statutes and regulations of the department, agency or
commission formerly or currently employing said practitioner. See,
e.g., 18 U.S.C. 207.
A practitioner representing a government agency, whether employed
or specially retained by the government, is subject to the USPTO Rules
of Professional Conduct, including the prohibition against representing
adverse interests stated in section 11.107 and the protections afforded
former clients in section 11.109. In addition, such a practitioner is
subject to this section and to statutes and regulations, as well as
government policies, concerning conflicts of interest and other Federal
ethics requirements.
[[Page 64194]]
Section 11.112 would provide specific rules regarding the
imputation of conflicts of interest for practitioners who were former
judges, arbitrators, mediators or third-party neutrals. This rule
corresponds to the ABA Model Rule of Professional Conduct 1.12.
Section 11.113 would provide specific rules regarding a
practitioner's responsibilities when representing an organization as a
client. This rule corresponds to the ABA Model Rule of Professional
Conduct 1.13.
Section 11.114 would provide specific rules regarding a
practitioner's responsibilities when representing a client with
diminished capacity. This rule corresponds to the ABA Model Rule of
Professional Conduct 1.14.
Section 11.115 would provide specific rules regarding a
practitioner's responsibilities regarding safekeeping of client
property and maintenance of financial records. This rule corresponds to
the ABA Model Rule of Professional Conduct 1.15.
Section 11.115(a) would require that funds be kept in a separate
client or third person account maintained in the state where the
practitioner's office is situated, or elsewhere with the consent of the
client or third person. The USPTO bar includes practitioners who are
located outside the United States. The USPTO rules would propose that
where the practitioner's office is situated in a foreign country, funds
shall be kept in a separate account maintained in that foreign country
or elsewhere with the consent of the client or third person. See also,
37 CFR 10.112.
Sections 11.115(b)-(e) correspond to the ABA Model Rules of
Professional Conduct 1.15(b)-(e).
Section 11.115(f) would require that the type of records specified
by section 11.115(a) would include those records consistent with (i)
the ABA Model Rules for Client Trust Account Records; (ii) for lawyer
practitioners, the types of records that are maintained meet the
recordkeeping requirements of a state in which the lawyer is licensed
and in good standing, the recordkeeping requirements of the state where
the lawyer's principal place of business is located, or the
recordkeeping requirements of this section; and/or (iii) for patent
agents and persons granted limited recognition who are employed in the
United States by a law firm, the types of records that are maintained
meet the recordkeeping requirements of the state where at least one
lawyer of the law firm is licensed and in good standing, the
recordkeeping requirements of the state where the law firm's principal
place of business is located, or the recordkeeping requirements of this
section. According to the ABA Standing Committee on Client Protection,
the ABA Model Rules for Client Trust Account Records responds to a
number of changes in banking and business practices that may have left
lawyers ``inadvertently running afoul of their jurisdiction's rules of
professional conduct.'' The new rule addresses recordkeeping
requirements after electronic transfers and clarifies who can authorize
such transfers. The proposed rule also accounts for the Check Clearing
for the 21st Century Act, which allows banks to substitute electronic
images of checks for canceled checks. The rule also addresses the
increasing prevalence of electronic banking and wire transfers or
electronic transfers of funds, for which banks do not routinely provide
specific confirmation. The proposed rule acknowledges those issues,
addressing recordkeeping requirements after electronic transfers and
clarifying who can authorize such transfers, record maintenance and
safeguards required for electronic record storage systems. The rule
also details minimum safeguards practitioners must implement when they
allow non-practitioner employees to access client trust accounts;
addresses partner responsibilities for storage of and access to client
trust account records when partnerships are dissolved or when a
practice is sold; and allows practitioners to maintain client trust
account records in electronic, photographic, computer or other media or
paper format, either at the practitioner's office or at an off-site
storage facility, but it requires that records stored off-site be
readily accessible to the practitioner and that the practitioner be
able to produce and print them upon request.
Section 11.115(f) would require a practitioner to keep the same
records as 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 Model 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 periodic
trial balances, and insufficient fund check reporting. See Wright v.
Virginia State Bar, 357 SE.2d 518, 519 (Va. 1987); In re Librizzi, 569
A.2d 257, 258-259 (N.J. 1990); In re Heffernan, 351 NW.2d 13, 14 (Minn.
1984); In re Austin, 333 NW.2d 633, 634 (Minn. 1983); and In re
Kennedy, 442 A.2d 79, 84-85 (Del. 1982). Thus, Sec. 11.115(f)
clarifies recordkeeping requirements that currently apply to all
practitioners through section 10.112(c)(3).
Section 11.116 would provide rules regarding a practitioner's
responsibilities in declining or terminating representation of a
client. This rule corresponds to the ABA Model Rule of Professional
Conduct 1.16.
Section 11.117 would provide rules regarding a practitioner's
responsibilities when buying or selling a law practice or an area of
law practice, including good will. This rule corresponds to the ABA
Model Rule of Professional Conduct 1.17.
Section 11.117(b) differs from ABA Model Rule of Professional
Conduct 1.17(b) in that the USPTO is proposing that to the extent the
practice or the area of practice to be sold involves patent proceedings
before the Office, that practice or area of practice may be sold only
to one or more registered practitioners or law firms that includes at
least one registered practitioner.
Section 11.118 would provide rules regarding a practitioner's
responsibilities to prospective clients. This rule corresponds to the
ABA Model Rule of Professional Conduct 1.18.
Sections 11.119-11.200 are reserved.
Section 11.201 would provide a rule addressing the practitioner's
role in providing advice to a client and corresponds to the ABA Model
Rule of Professional Conduct 2.1. However, the USPTO is declining to
enact the substance of the last sentence of ABA Model Rule of
Professional Conduct 2.1, which provides that in representing a client,
a practitioner may refer to not only legal considerations, but also
other factors. However, by not enacting the last sentence of Rule 2.1,
the USPTO is not implying that a practitioner may not refer to other
considerations such as moral, economic, social and political factors
that may be relevant to the client's situation.
Section 11.202 is reserved. ABA Model Rule of Professional Conduct
2.2 was deleted in 2002 as the ABA no longer treats intermediation and
the conflict-of-interest issues it raises separately from any other
multi-representation conflicts. Issues relating to practitioners acting
as intermediaries are dealt with under Sec. 11.107.
Section 11.203 would articulate the ethical standards for
circumstances where a practitioner provides an
[[Page 64195]]
evaluation of a matter affecting a client for the use by a third party.
This rule corresponds to the ABA Model Rule of Professional Conduct
2.3. It should be noted that with respect to evaluation information
under Sec. 11.203 a practitioner is required to disclose information
in compliance with the duty of disclosures provisions of this
subchapter subject to disclosure to the USPTO pursuant to Sec.
11.106(c).
Section 11.204 would provide a rule addressing the practitioner's
role in serving as a third-party neutral, whether as an arbitrator, a
mediator or in such other capacity, and corresponds to the ABA Model
Rule of Professional Conduct 2.4.
Sections 11.205-11.300 are reserved.
Section 11.301 would require that a practitioner present well-
grounded positions. The advocate has a duty to use legal procedure for
the fullest benefit of the client's cause. The advocate also has a duty
not to abuse the legal procedure. This rule corresponds to the ABA
Model Rule of Professional Conduct 3.1; however, the USPTO is declining
to enact the ABA Model Rule requirement that a lawyer for the defendant
in a criminal proceeding may defend the proceeding by requiring that
every element of the case be established. The USPTO proposes deleting
the specific reference because it is a professional conduct rule
limited to the practice of criminal law.
Section 11.302 would require that practitioners diligently pursue
litigation and Office proceedings. This rule corresponds to the ABA
Model Rule of Professional Conduct 3.2, adding that a practitioner
shall make reasonable efforts to expedite proceedings before the Office
as well as in litigated matters.
Section 11.303 would continue the duty of candor to a tribunal
while specifying its application under different situations, and
corresponds to the ABA Model Rule of Professional Conduct 3.3. Section
11.303(a)(2) sets forth the duty to disclose to the tribunal legal
authority in the controlling jurisdiction known to the practitioner to
be directly adverse to the position of the client and not disclosed by
opposing counsel in an inter partes proceeding. It also sets forth this
duty for an ex parte proceeding before the Office where the legal
authority is not otherwise disclosed. 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. Section
11.303(a)(3) does not include a reference to testimony of a defendant
in a criminal matter, as set forth in ABA Model Rule 3.3(a)(3).
Section 11.303(e) would specify that in a proceeding before the
Office, a practitioner must disclose information necessary to comply
with the duty of disclosure provisions of this subchapter in practice
before the Office. The practitioner's responsibility to present the
client's case with persuasive force is qualified by the practitioner's
duty of candor to the tribunal. See Lipman v. Dickinson, 174 F.3d 1363,
50 USPQ2d 1490 (Fed. Cir. 1999).
Section 11.304 would contemplate that evidence be marshaled fairly
in a case before a tribunal, including in ex parte and inter partes
proceedings before the Office. This rule corresponds to the ABA Model
Rule of Professional Conduct 3.4, but it clarifies that the duties of
the practitioner are not limited to trial matters but also to any
proceeding before a tribunal.
Section 11.305 would contemplate that practitioners act with
impartiality and decorum in ex parte and inter partes proceedings. This
rule corresponds to the ABA Model Rule of Professional Conduct 3.5, but
it clarifies that it is improper to seek to improperly influence a
hearing officer, administrative law judge, administrative patent judge,
administrative trademark judge, employee or officer of the Office.
Section 11.305(c) is reserved as the USPTO is declining to enact a
specific rule regarding a practitioner's communication with a juror or
prospective juror. Nonetheless, a practitioner who engages in the
practice of improper communication with a juror or prospective juror is
subject to criminal laws and the disciplinary rules of the appropriate
State and Court authorities. Failure to comply with those laws and
rules may lead to disciplinary action against the practitioner and, in
turn, possible reciprocal action against the practitioner by the USPTO.
See 37 CFR 11.24 and 11.804(h). Moreover, the lack of a specific
disciplinary rule concerning particular conduct should not be viewed as
suggesting that the conduct would not violate one or more of the USPTO
Rules of Professional Conduct (e.g., Sec. 11.804).
Section 11.306 is reserved as the USPTO is declining to enact a
specific rule regarding trial publicity. Nonetheless, a practitioner
who engages in improper conduct relating to trial publicity is subject
to the disciplinary rules of the appropriate State and Court
authorities. Failure to comply with those rules may lead to
disciplinary action against the practitioner and, in turn, possible
reciprocal action against the practitioner by the USPTO. See 37 CFR
11.24 and 11.804(h). Moreover, the lack of a specific disciplinary rule
concerning particular conduct should not be viewed as suggesting that
the conduct would not violate one or more of the USPTO Rules of
Professional Conduct (e.g., Sec. 11.804).
Section 11.307 would generally proscribe a practitioner from acting
as an 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.
This rule corresponds to the ABA Model Rule of Professional Conduct
3.7.
Section 11.308 is reserved. ABA Model Rule of Professional Conduct
3.8 addresses the ``Special Responsibilities of a Prosecutor'' in the
context of criminal proceedings. Because practice before the Office
does not involve criminal proceedings, the content of ABA Model Rule of
Professional Conduct 3.8 is not being proposed. Nevertheless, an
attorney who is both a practitioner before the Office and a criminal
prosecutor may be subject to both the Office and other professional
conduct rules. Discipline by a duly constituted authority of a State,
the United States, or the country in which a practitioner resides may
lead to reciprocal disciplinary action by the Office. See 37 CFR 11.24.
Moreover, the lack of a specific disciplinary rule concerning
particular conduct should not be viewed as suggesting that the conduct
would not violate one or more of the USPTO Rules of Professional
Conduct (e.g., Sec. 11.804).
Section 11.309 would regulate a practitioner's conduct when he or
she is representing a client in a non-adjudicative proceeding before an
administrative agency, such as the Office. This rule corresponds to the
ABA Model Rule of Professional Conduct 3.9.
Sections 11.310-11.400 are reserved.
Section 11.401 would require a practitioner to be truthful when
dealing with others on a client's behalf. This rule corresponds to the
ABA Model Rule of Professional Conduct 4.1.
Section 11.402 would provide a standard for communicating with a
represented party. Section 11.402(a) corresponds to the ABA Model Rule
of Professional Conduct 4.2. Section 11.402(a) differs from ABA Model
Rule of Professional Conduct 4.2 in that the proposed rule adds that in
addition to
[[Page 64196]]
a practitioner being authorized to communicate with a represented party
when the practitioner is authorized by law or a court order, a
practitioner may communicate with a represented party when the
practitioner is authorized by rule to do so.
Section 11.402(b) is based on District of Columbia Rule of
Professional Conduct 4.2(b) and would recognize that special
considerations come into play when the Federal Government, including
the Office, is involved in a lawsuit. It would permit communications
with those in Government having the authority to redress such
grievances (but not with 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(b) does not permit a practitioner to bypass 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 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 11.403 would provide a standard for communicating with an
unrepresented person, particularly one not experienced in dealing with
legal matters. This rule corresponds to the ABA Model Rule of
Professional Conduct 4.3.
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. The rule also provides guidance to
practitioners regarding the receipt of inadvertently sent documents.
This rule corresponds to the ABA Model Rule of Professional Conduct
4.4.
Sections 11.405-11.500 are reserved.
Section 11.501 would set forth the responsibilities of a partner or
supervisory practitioner. This rule corresponds to the ABA Model Rule
of Professional Conduct 5.1.
Section 11.502 would set forth the ethical and professional conduct
responsibilities of a subordinate practitioner. This rule corresponds
to the ABA Model Rule of Professional Conduct 5.2.
Section 11.503 would set forth a practitioner's responsibilities
regarding non-practitioner assistants. Practitioners generally employ
assistants in their practice, including secretaries, technical
advisors, student associates, draftspersons, investigators, law student
interns, and paraprofessionals. This rule specifies the practitioner's
responsibilities in supervising non-practitioner assistants and
corresponds to the ABA Model Rule of Professional Conduct 5.3.
Section 11.504 would protect the professional independence of a
practitioner by providing traditional limitations on sharing fees with
non-practitioners. This rule corresponds to the ABA Model Rule of
Professional Conduct 5.4. (See also, 37 CFR 10.48, 10.49, 10.68)
Section 11.504(a)(4) would differ from the ABA Model Rule in favor
of District of Columbia Rule of Professional Conduct 5.4(a)(5). Section
11.504(a)(4) permits a practitioner to share legal fees with a
nonprofit organization that employed, retained, or recommended
employment of the practitioner in the matter. A practitioner may decide
to contribute all or part of legal fees recovered from the opposing
party to the nonprofit organization. Such a contribution may or may not
involve fee-splitting, but when it does, the prospect that the
organization will obtain all or part of the practitioner's fees does
not inherently compromise the practitioner's professional independence,
whether the practitioner is employed by the organization or was only
retained or recommended by it. A practitioner who has agreed to share
legal fees with such an organization remains obligated to exercise
professional judgment solely in the client's best interests. Moreover,
fee-splitting in these circumstances may promote the financial
viability of such nonprofit organizations and facilitate their public
interest mission. Unlike the corresponding provision of the ABA Model
Rules, this provision is not limited to sharing of fees awarded by a
court because that restriction would significantly interfere with
settlement of cases outside of court, without significantly advancing
the purpose of the exception. To prevent abuse, it applies only if the
nonprofit organization has been recognized by the Internal Revenue
Service as an organization described in Section 501(c)(3) of the
Internal Revenue Code.
Section 11.505 would proscribe practitioners from engaging in or
aiding the unauthorized practice of law. This rule corresponds to the
ABA Model Rule of Professional Conduct 5.5(a). The USPTO is declining
to adopt the ABA Model Rules regarding multijurisdictional practice of
law.
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 and registration to practice
before the USPTO sanctions ``the performance of those services which
are reasonably necessary and incident to the preparation and
prosecution of patent applications.'' Sperry v. Florida, 373 U.S. 379,
386, 137 USPQ 578, 581 (1963). Thus, a registered practitioner may
practice in patent matters before the Office regardless of where they
reside within the United States.
It is noted that the USPTO registers individuals, not law firms or
corporations, to practice in patent matters before the Office. Thus, a
corporation is not authorized to practice law and render legal
services. Instead, upon request and for a fee, the corporation could
cause a patent application to be prepared by a registered practitioner.
See Lefkowitz v. Napatco, 415 NE.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. For example, 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 NE.2d 1177 (Ohio 1996). See
Comm. on Professional Ethics & Conduct v. Baker, 492 NW.2d 695,597
(Iowa 1992); see also People v. Laden, 893 P.2d 771 (Colo. 1995);
[[Page 64197]]
People v. Macy, 789 P.2d 188 (Colo. 1990); People v. Boyles, 591 P.2d
1315 (Colo. 1979); In re Discipio, 645 NE.2d 906 (Ill. 1994); In re
Komar, 532 NE.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).
Section 11.505(b) would specifically proscribe practice before the
Office in patent, trademark, or other non-patent law if a practitioner
is suspended, excluded, or excluded on consent before the Office. The
rule would also proscribe practice before the Office in patent,
trademark, or other non-patent law if a practitioner has been
transferred to disability inactive status before the Office, has been
administratively suspended before the Office, or is administratively
inactive before the Office.
Section 11.505(c) would clarify that a practitioner is prohibited
from assisting a person who is not a member of the bar of a
jurisdiction in the performance of an activity that constitutes the
unauthorized practice of law, and from assisting a person who is not
registered to practice before the Office in patent matters in the
unauthorized practice of law before the Office.
Sections 11.505(d), like current Sec. 10.47(b), would clarify that
a practitioner is prohibited from aiding a suspended or excluded
practitioner in the practice of law before the Office.
Sections 11.505(e) would provide that a practitioner is prohibited
from aiding a suspended or excluded practitioner in the practice of law
in any other jurisdiction.
Section 11.505(f), consistent with Sec. 11.14(b), would recognize
that individuals who are not attorneys but who were recognized to
practice before the Office in trademark matters prior to January 1,
1957, will continue to be recognized as agents to continue practice
before the Office in trademark matters and such practice by those
individuals is not the unauthorized practice of trademark law before
the Office.
Section 11.506 would prohibit agreements restricting rights to
practice. This rule corresponds to the ABA Model Rule of Professional
Conduct 5.6.
Section 11.507 would provide for a practitioner being subject to
the USPTO Rules of Professional Conduct if the practitioner provides
law-related services. This rule corresponds to the ABA Model Rule of
Professional Conduct 5.7. The definition of ``law-related service'' is
set forth in Sec. 11.1.
Sections 11.508-11.600 are reserved.
Section 11.601-11.700 are reserved. The USPTO is declining to adopt
the ABA Model Rules regarding public service. The USPTO recognizes that
every practitioner, regardless of professional prominence or
professional workload, has a responsibility to provide legal services
to those unable to pay and that every practitioner should support all
proper efforts to meet this need for legal services. However, attorney
practitioners' individual state ethical rules should provide guidance
and regulations regarding their respective duties to provide voluntary
pro bono service, accept court appointed representation, and serve as
members of legal service and legal reform organizations. The USPTO is
declining to add an increased regulatory requirement on attorney
practitioners.
Section 11.701 would govern all communications about a
practitioner's services, including advertising, and corresponds to the
ABA Model Rule of Professional Conduct 7.1.
Section 11.702 would provide for advertising by practitioners. This
section corresponds to the ABA Model Rule of Professional Conduct 7.2.
However, the USPTO is declining to enact the substance of ABA Model
Rule of Professional Conduct 7.2(b)(2) as the USPTO does not currently
regulate and does not anticipate regulating lawyer referral services.
Section 11.703 would address the direct contact by a practitioner
with a prospective client known to need legal services. This section
corresponds to the ABA Model Rule of Professional Conduct 7.3.
Section 11.704 would permit a practitioner to indicate areas of
practice in communications about the practitioner's services. Section
11.704(a) corresponds to the ABA Model Rule of Professional Conduct
7.4(a).
Section 11.704(b), as with current Sec. 10.34, would continue the
long-established policy of the USPTO for the designation of
practitioners practicing before the Office.
Section 11.704(c) is reserved as the USPTO is declining to regulate
the communication of specialization in Admiralty practice.
Section 11.704(d) corresponds to the ABA Model Rule of Professional
Conduct 7.4(d).
Section 11.704(e) would provide guidance to, and permit, an
individual granted limited recognition under Sec. 11.9 to use the
designation ``Limited Recognition'' to indicate in communications about
the individual's services that the individual, while not a ``registered
practitioner,'' is authorized to practice before the USPTO in patent
matters subject to the limitations in the individual's grant of limited
recognition under Sec. 11.9.
Section 11.705 would regulate firm names and letterheads. This
section corresponds to the ABA Model Rule of Professional Conduct 7.5.
Section 11.705(b) is reserved as the USPTO is declining to enact a
specific rule regarding law firms with offices in more than one
jurisdiction since the USPTO encompasses one Federal jurisdiction.
However, the USPTO is not implying that a law firm with offices in more
than one jurisdiction may violate a State authority regulating this
conduct. Nonetheless, a practitioner who engages in the improper use of
firm names and letterhead is subject to the disciplinary rules of the
appropriate State and Court authorities. Failure to comply with those
rules may lead to disciplinary action against the practitioner and, in
turn, possible reciprocal action against the practitioner by the USPTO.
See 37 CFR 11.24 and 11.804(h). Moreover, the lack of a specific
disciplinary rule concerning particular conduct should not be viewed as
suggesting that the conduct would not violate one or more of the USPTO
Rules of Professional Conduct (e.g., Sec. 11.804).
Section 11.705(d) is reserved. The USPTO declines to adopt ABA
Model Rule of Professional Conduct 7.5(d) providing that practitioners
may state or imply that they practice in a partnership or other
organization only when that is the fact. However, the USPTO is not
implying that practitioners may state or imply that they practice in a
partnership or other organization if that is not the fact. Nonetheless,
a practitioner who engages in the improper use of firm names and
letterhead is subject to the disciplinary rules of the appropriate
State and Court authorities. Failure to comply with those rules may
lead to disciplinary action against the practitioner and, in turn,
possible reciprocal action against the practitioner by the USPTO. See
37 CFR 11.24 and 11.804(h). Moreover, the lack of a specific
disciplinary rule concerning particular conduct should not be viewed as
suggesting that the conduct would not violate one or more of the USPTO
Rules of Professional Conduct (e.g., Sec. 11.804).
Section 11.706 is reserved as the USPTO is declining to enact a
specific rule regarding political contributions to obtain legal
engagements or appointments by judges. However, the USPTO is not
implying that a
[[Page 64198]]
practitioner or law firm may accept a government legal engagement or an
appointment by a judge if the practitioner or law firm makes a
political contribution or solicits political contributions for the
purpose of obtaining or being considered for that type of legal
engagement or appointment. Nonetheless, a practitioner who engages in
this type of practice is subject to the disciplinary rules of the
appropriate State and Court authorities. Failure to comply with those
rules may lead to disciplinary action against the practitioner and, in
turn, possible reciprocal action against the practitioner by the USPTO.
See 37 CFR 11.24 and 11.804(h). Moreover, the lack of a specific
disciplinary rule concerning particular conduct should not be viewed as
suggesting that the conduct would not violate one or more of the USPTO
Rules of Professional Conduct.
Sections 11.707-11.800 are reserved.
Section 11.801 would impose the same duty to persons seeking
admission to a bar as well as to practitioners seeking registration or
limited recognition. This section corresponds to the ABA Model Rule of
Professional Conduct 8.1. This section would clarify that the section
pertains to applicants for registration or an applicant for recognition
to practice before the Office and would conform to current USPTO
practice in Sec. Sec. 11.6, 11.7, 11.9, 11.14 and 11.58.
If a person makes a material false statement in connection with an
application for registration or recognition, it may be the basis for
subsequent disciplinary action if the person is admitted, and in any
event it may be relevant in a subsequent 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 to knowingly 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. Moreover, Section
11.801(d) requires practitioners to cooperate with the Office of
Enrollment and Discipline in an investigation of any matter before it
and would continue the practice set forth under former Sec. 10.131(b).
Section 11.802 would require that a practitioner 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, adjudicatory officer or public legal officer, or
of a candidate for election or appointment to judicial or legal office.
This section corresponds to the ABA Model Rule of Professional Conduct
8.2. Government employees and officers such as administrative patent
judges, administrative trademark judges, patent examiners, trademark
examining attorneys, and petitions examiners, perform judicial and
quasi-judicial functions. See, e.g., United States v. Morgan, 313 U.S.
409 (1941); Western Electric Co. v. Piezo Technology, Inc., 860 F.2d
428 (Fed. Cir. 1988) (``Patent examiners are quasi-judicial
officials.''); see also, Butterworth v. United States ex rel. Hoe, 112
U.S. 50, 67 (1884) (``That it was intended that the Commissioner of
Patents, in issuing or withholding patents * * * should exercise quasi-
judicial functions, is apparent from the nature of the examinations and
decision he is required to make.''); Chamberlin v. Isen, 779 F.2d 522,
524 (9th Cir. 1985) (``[I]t has long been recognized that PTO employees
perform a `quasi-judicial' function in examining patent
applications.'') Such employees and officers are considered
adjudicatory officers.
Section 11.803 would require reporting a violation of the Rules of
Professional Conduct. This section corresponds to the ABA Model Rule of
Professional Conduct 8.3.
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. Consistent with the
current rule, Sec. 10.24(a), a report about misconduct may not be
required where it would involve violation of Sec. 11.106(a). However,
a practitioner should encourage a client to consent to disclosure where
prosecution would not substantially prejudice the client's interests.
Section 11.803(c) does not require disclosure of information otherwise
protected by Sec. 11.106, or information gained while participating in
an approved lawyers assistance program. It should be noted that the
USPTO does not sanction any lawyer's assistance programs and the
reference thereto in Sec. 11.803 is a reference to lawyer's assistance
programs approved by a relevant state authority.
Section 11.804 would address the practice of providing for
discipline involving a variety of acts constituting misconduct.
Sections 11.804(a)-(f) correspond to the ABA Model Rules of
Professional Conduct 8.4(a)-(f), respectively. It is noted that Sec.
10.23(c) of the current Patent and Trademark Office Code of
Professional Responsibility sets forth specific examples of misconduct
that constitute a violation of the rules. Because it is not possible to
provide an exhaustive list of actions that constitute misconduct,
Section 11.804 does not carry forward these specific examples into the
USPTO Rules of Professional Conduct. The decision not to set forth
specific examples of misconduct in the rule, however, should not be
construed as an indication that the examples set forth in Sec.
10.23(c) represent acceptable conduct under the USPTO Rules of
Professional Conduct.
Section 11.804(g) would specifically address knowing assistance to
an officer or employee of the Office in conduct that is a violation of
applicable rules of conduct or other law.
Section 11.804(h) would clearly set forth that it is misconduct for
a practitioner to be publicly disciplined on ethical grounds by any
duly constituted authority of (1) a State, (2) the United States, or
(3) the country in which the practitioner resides. See 37 CFR 11.24.
Section 11.804(i) would clearly set forth that it continues to be
misconduct for a practitioner to engage in conduct that adversely
reflects on the practitioner's fitness to practice before the Office.
Section 11.805 is reserved. The USPTO is declining to adopt the ABA
Model Rule regarding disciplinary authority and choice of law. The
disciplinary jurisdiction of the Office is set forth in section 11.19.
The USPTO Director has statutory, 35 U.S.C. 2(b)(2)(D) and 32, 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 practitioners, including the
authority to discipline practitioners. 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).
Sections 11.806-11.900 are reserved.
Section 11.901 would contain the following savings clauses: (a) A
disciplinary proceeding based on conduct engaged in prior to the
effective
[[Page 64199]]
date of these regulations may be instituted subsequent to such
effective date, if such conduct would continue to justify disciplinary
sanctions 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.
Section 41.5 would be revised to make a technical correction.
Specifically, the previous reference to section 10.40 has been updated
to refer to section 11.116.
Table 1--Principal Source of Sections 11.101 Through 11.804
------------------------------------------------------------------------
Section Principal source
------------------------------------------------------------------------
Sec. 11.101......................... MRPC 1.1
Sec. 11.102......................... MRPC 1.2
Sec. 11.103......................... MRPC 1.3
Sec. 11.104......................... MRPC 1.4
Sec. 11.105......................... MRPC 1.5
Sec. 11.106(a)-(b).................. MRPC 1.6(a)-(b)
Sec. 11.106(c)...................... USPTO
Sec. 11.107......................... MRPC 1.7
Sec. 11.108......................... MRPC 1.8
Sec. 11.109......................... MRPC 1.9
Sec. 11.110......................... MRPC 1.10
Sec. 11.111......................... USPTO
Sec. 11.112......................... MRPC 1.12
Sec. 11.113......................... MRPC 1.13
Sec. 11.114......................... MRPC 1.14
Sec. 11.115(a)-(e).................. MRPC 1.15(a)-(e)
Sec. 11.115(f)(1)................... MRCTAR Rule 1
Sec. 11.115(f)(2)................... MRCTAR Rule 2
Sec. 11.115(f)(3)................... MRCTAR Rule 3
Sec. 11.115(f)(4)-(5)............... USPTO
Sec. 11.116......................... MRPC 1.16
Sec. 11.117......................... MRPC 1.17, USPTO
Sec. 11.118......................... MRPC 1.18
Sec. 11.201......................... MRPC 2.1
Sec. 11.203......................... MRPC 2.3
Sec. 11.204......................... MRPC 2.4
Sec. 11.301......................... MRPC 3.1
Sec. 11.302......................... MRPC 3.2
Sec. 11.303......................... MRPC 3.3, USPTO
Sec. 11.304......................... MRPC 3.4
Sec. 11.305......................... MRPC 3.5
Sec. 11.307......................... MRPC 3.7
Sec. 11.309......................... MRPC 3.9
Sec. 11.401......................... MRPC 4.1
Sec. 11.402(a)...................... MRPC 4.2(a)
Sec. 11.402(b)...................... DCRPR 4.2(b)
Sec. 11.403......................... MRPC 4.3
Sec. 11.404......................... MRPC 4.4
Sec. 11.501......................... MRPC 5.1
Sec. 11.502......................... MRPC 5.2
Sec. 11.503......................... MRPC 5.3
Sec. 11.504......................... MRPC 5.4; DCRPR 5.4(a)(5)
Sec. 11.505(a)...................... MRPC 5.5(a)
Sec. 11.505(b)...................... USPTO
Sec. 11.505(c)...................... USPTO
Sec. 11.505(d)...................... USPTO
Sec. 11.505(e)...................... USPTO
Sec. 11.505(f)...................... USPTO
Sec. 11.506......................... MRPC 5.6
Sec. 11.507......................... MRPC 5.7
Sec. 11.701......................... MRPC 7.1
Sec. 11.702......................... MRPC 7.2
Sec. 11.703......................... MRPC 7.3
Sec. 11.704(a)...................... MRPC 7.4(a)
Sec. 11.704(b)...................... 37 CFR 10.34
Sec. 11.704(d)...................... MRPC 7.4(d)
Sec. 11.704(e)...................... USPTO
Sec. 11.705......................... MRPC 7.5
Sec. 11.801(a)-(c).................. MRPC 8.1(a)-(b)
Sec. 11.801(d)...................... USPTO
Sec. 11.802......................... MRPC 8.2
Sec. 11.803......................... MRPC 8.3
Sec. 11.804(a)-(f).................. MRPC 8.4(a)-(f)
Sec. 11.804(g)...................... 37 CFR 10.23(c)(19),
10.23(c)(20), 11.10(d)
Sec. 11.804(h)...................... 37 CFR 10.23(c)(5), 11.24
Sec. 11.901......................... USPTO
------------------------------------------------------------------------
Abbreviations:
DCRPR means the District of Columbia Court of Appeals Rules of
Professional Conduct (2007).
MRPC means the Model Rules of Professional Conduct of the American Bar
Association (2011).
MRCTAR means the Model Rules for Client Trust Account Records of the
American Bar Association (2010).
Rulemaking Considerations
Regulatory Flexibility Act: The Deputy General Counsel, United
States Patent and Trademark Office, has certified to the Chief Counsel
for Advocacy, Small Business Administration, that the changes in this
notice of proposed rulemaking will not have a significant economic
impact on a substantial number of small entities (Regulatory
Flexibility Act, 5 U.S.C. 605(b)).
The primary effect of this rulemaking is not economic, but rather
is to govern the conduct of practitioners in their interactions with
their clients and with the Office.
The provisions of this rulemaking that may have a slight economic
effect, such as record-keeping requirements, requirements to segregate
client funds, and rules governing representation of multiple entities,
are consistent with the USPTO's current rules, with which practitioners
currently must comply. The existing USPTO Code applies to the
approximately 41,000 registered patent practitioners currently
appearing before the Office, as well as licensed attorneys practicing
in trademark and other non-patent matters before the Office.
These proposed conduct rules continue the fundamental requirements
of the Office's existing conduct rules. The existing rules have many
broad canons and obligations that the proposed rules fundamentally
continue, though with greater specificity and clarity, and with some
reorganization. The proposed rules also have greater specificity and
clarity as to allowed conduct. The proposed rules, like the existing
rules, codify many obligations that already apply to the practice of
law under professional and fiduciary duties owed to clients. Because
the provisions most likely to have an economic effect are already in
place, these provisions do not contribute to the economic impact of
this rulemaking.
Furthermore, for most practitioners, this rulemaking will reduce
the economic impact of complying with the Office's professional
responsibility requirements. Approximately 75 percent of registered
practitioners are attorneys. The state bars of 50 U.S. jurisdictions
have adopted rules based on the same ABA Model Rules on which these
proposed rules are based. Therefore, for most current and prospective
practitioners, the proposed rules would provide practitioners greater
uniformity and familiarity with their professional conduct obligations
before the Office and would harmonize the requirements to practice law
before the Office and other jurisdictions. Moreover, for some
provisions of this rulemaking, such as the record-keeping requirements
in Sec. 11.115(f)(4) and (f)(5), the rules explicitly state that an
attorney or agent (employed in the U.S. by a law firm) that complies
with the state in which he or she practices will be deemed in
compliance with the Office's requirements, as well. Accordingly, this
rulemaking streamlines many practitioners' obligations and thus reduces
the administrative burden of compliance.
Accordingly, this rulemaking does not have a significant economic
effect on a substantial number of small entities.
Executive Order 12866: This notice of proposed rulemaking has been
determined to be not significant for purposes of Executive Order 12866
(September 30, 1993).
Executive Order 13563 (Improving Regulation and Regulatory Review):
The Office has complied with Executive Order 13563. Specifically, the
Office has, to the extent feasible and applicable: (1) Made a reasoned
determination that the benefits justify the costs of the rule; (2)
tailored the rule to impose the least burden on society consistent with
obtaining the regulatory objectives; (3) selected a regulatory approach
that maximizes net benefits; (4) specified performance objectives; (5)
identified and assessed available alternatives; (6) involved the public
in an open exchange of information and perspectives among experts in
relevant disciplines, affected stakeholders in the
[[Page 64200]]
private sector and the public as a whole, and provided on-line access
to the rulemaking docket; (7) attempted to promote coordination,
simplification and harmonization across government agencies and
identified goals designed to promote innovation; (8) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (9) ensured the objectivity of scientific
and technological information and processes.
Executive Order 13132: This notice of proposed rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(August 4, 1999).
Executive Order 13175 (Tribal Consultation): This rulemaking will
not: (1) Have substantial direct effects on one or more Indian tribes;
(2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
Executive Order 12988 (Civil Justice Reform): This rulemaking meets
applicable standards to minimize litigation, eliminate ambiguity, and
reduce burden as set forth in sections 3(a) and 3(b)(2) of Executive
Order 12988 (Feb. 5, 1996).
Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
Executive Order 12630 (Taking of Private Property): This rulemaking
will not effect a taking of private property or otherwise have taking
implications under Executive Order 12630 (Mar. 15, 1988).
Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the
United States Patent and Trademark Office will submit a report
containing the final rule and other required information to the U.S.
Senate, the U.S. House of Representatives and the Comptroller General
of the Government Accountability Office. The changes in this notice are
not expected to result in an annual effect on the economy of 100
million dollars or more, a major increase in costs or prices, or
significant adverse effects on competition, employment, investment,
productivity, innovation, or the ability of United States-based
enterprises to compete with foreign-based enterprises in domestic and
export markets. Therefore, this notice is not expected to result in a
``major rule'' as defined in 5 U.S.C. 804(2).
Unfunded Mandates Reform Act of 1995: The changes in this notice do
not involve a Federal intergovernmental mandate that will result in the
expenditure by State, local, and tribal governments, in the aggregate,
of 100 million dollars (as adjusted) or more in any one year, or a
Federal private sector mandate that will result in the expenditure by
the private sector of 100 million dollars (as adjusted) or more in any
one year, and will not significantly or uniquely affect small
governments. Therefore, no actions are necessary under the provisions
of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
National Environmental Policy Act: This rulemaking will not have
any effect on the quality of environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
National Technology Transfer and Advancement Act: The requirements
of section 12(d) of the National Technology Transfer and Advancement
Act of 1995 (15 U.S.C. 272 note) are not applicable because this
rulemaking does not contain provisions which involve the use of
technical standards.
Paperwork Reduction Act: This notice of proposed rulemaking
involves information collection requirements which are subject to
review by the Office of Management and Budget (OMB) under the Paperwork
Reduction Act of 1995 (PRA) (44 U.S.C. 3501 et seq.). Collection of
information activities involved in this notice of proposed rulemaking
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 are shown below with an
estimate of the annual reporting burdens. Included in this estimate is
the time for 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 rulemaking is to registered
practitioners and attorneys practicing before the Office in trademark
and other non-patent matters.
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 Likely Respondents: 10,726.
Estimated Total Annual Burden Hours: 11,126 hours.
Needs and Uses: The information in this collection is necessary for
the United States Patent and Trademark Office to implement Federal
statutes and regulations. See 35 U.S.C. 2(b)(2)(D) and 35 U.S.C. 32.
These rules will require that registered practitioners and attorneys
who appear before the Office 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 rules to
the Office. Practitioners are mandated by the rules 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. The Office has determined that the record
keeping and maintenance of such records are excluded from any
associated PRA burden as these activities are usual and customary for
practitioners representing clients. 5 CFR 1320.3(b)(2). Additionally,
in the case of most attorney practitioners, any requirements for
collection of information are not presumed to impose a Federal burden
as these requirements are also required by a unit of State or local
government, namely State bar(s), and would be required even in the
absence of any Federal requirement.
5 CFR 1320.3(b)(3). These rules also require, in certain instances,
that written consents or certifications be provided. Such consents or
certifications have been determined not to constitute information under
5 CFR 1320.3(h)(1).
First, the Office estimates that it will take an individual or
organization approximately three hours, on average, to gather, prepare
and submit an initial grievance alleging and supporting a violation of
professional conduct. The Office estimates that approximately 200
grievances will be received annually
[[Page 64201]]
from such respondents. The requirements of 5 CFR Part 1320 do not apply
to collections of information by the Office during the conduct of an
investigation involving a potential violation of Office professional
conduct rules. 5 CFR 1320.4(a)(2). Second, the Office estimates that
non-attorney practitioners may, on average, incur a total of thirty
minutes of annual burden to notify senders of documents relating to the
representation of a client that were inadvertently sent. Proposed 37
CFR 11.404(b). Third, the Office estimates that non-attorney
practitioners, may, on average, incur a total of thirty minutes of
annual burden to comply with the proposed Sec. 11.703(c) disclosure
requirements relating to soliciting professional employment. Of the
approximately 41,000 registered practitioners, 10,526 are non-attorneys
and therefore considered likely respondents under the PRA for purposes
of this information collection.
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 William R. Covey, Deputy General Counsel for Enrollment and
Discipline and Director of the Office of Enrollment and Discipline,
United States Patent and Trademark Office, P.O. 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 Parts 2 and 7
Administrative practice and procedure, Trademarks.
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, under the authority of
35 U.S.C. 2(b)(2)(A) and (D), 35 U.S.C. 32, the United States Patent
and Trademark Office proposes to amend 37 CFR Parts 1, 2, 7, 10, 11,
and 41 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 1.4 is amended to revise paragraph (d)(4)(i) to read as
follows:
Sec. 1.4 Nature of correspondence and signature requirements.
* * * * *
(d) * * *
(4) Certifications. (i) Section 11.18 certifications: 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. 11.18(d) of this subchapter.
* * * * *
3. Section 1.21 is amended to remove and reserve paragraphs (a)(7)
and (a)(8) to read as follows:
Sec. 1.21 Miscellaneous fees and charges.
* * * * *
(a) * * *
(7)-(8) [Reserved]
* * * * *
PART 2--RULES OF PRACTICE IN TRADEMARK CASES
4. The authority citation for 37 CFR Part 2 continues to read as
follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
5. Section 2.2 is amended to revise paragraph (c) to read as
follows:
Sec. 2.2 Definitions.
* * * * *
(c) Director as used in this chapter, except for part 11, means the
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
* * * * *
PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS
6. The authority citation for 37 CFR Part 7 continues to read as
follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
7. Section 7.25 is amended to revise paragraph (a) to read as
follows:
Sec. 7.25 Sections of part 2 applicable to extension of protection.
(a) Except for Sec. Sec. 2.22-2.23, 2.130-2.131, 2.160-2.166,
2.168, 2.173, 2.175, 2.181-2.186 and 2.197, all sections in part 2 and
all sections in part 11 of this chapter shall apply to an extension of
protection of an international registration to the United States,
including sections related to proceedings before the Trademark Trial
and Appeal Board, unless otherwise stated.
* * * * *
PART 10 [Removed and reserved]
8. Part 10 is removed and reserved.
PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT
AND TRADEMARK OFFICE
9. The authority citation for 37 CFR Part 11 continues to read as
follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32,
41.
10. Amend Sec. 11.1 to remove the definitions of ``mandatory
disciplinary rule'' and ``matter;'' revise the definitions of ``fraud
or fraudulent'' and ``practitioner;'' and add in alphabetical order the
definitions of ``confirmed in writing,'' ``firm or law firm,''
``informed consent,'' ``law related services,'' ``partner,''
``person,'' ``reasonable belief or reasonably believes,'' ``reasonably
should know,'' ``screened,'' ``tribunal'' and ``writing or written'' as
follows:
[[Page 64202]]
Sec. 11.1 Definitions.
* * * * *
Confirmed in writing, when used in reference to the informed
consent of a person, means informed consent that is given in writing by
the person or a writing that a practitioner promptly transmits to the
person confirming an oral informed consent. If it is not feasible to
obtain or transmit the writing at the time the person gives informed
consent, then the practitioner must obtain or transmit it within a
reasonable time thereafter.
* * * * *
Firm or law firm means a practitioner or practitioners in a law
partnership, professional corporation, sole proprietorship or other
association authorized to practice law; or practitioners employed in a
legal services organization or the legal department of a corporation or
other organization.
* * * * *
Fraud or fraudulent means conduct that involves a misrepresentation
of material fact made with intent to deceive or a state of mind so
reckless respecting consequences as to be the equivalent of intent,
where there is justifiable reliance on the misrepresentation by the
party deceived, inducing the party to act thereon, and where there is
injury to the party deceived resulting from reliance on the
misrepresentation. Fraud also may be established by a purposeful
omission or failure to state a material fact, which omission or failure
to state makes other statements misleading, and where the other
elements of justifiable reliance and injury are established.
* * * * *
Informed consent means the agreement by a person to a proposed
course of conduct after the practitioner has communicated adequate
information and explanation about the material risks of and reasonably
available alternatives to the proposed course of conduct.
* * * * *
Law-related services means services that might reasonably be
performed in conjunction with and in substance are related to the
provision of legal services, and that are not prohibited as
unauthorized practice of law when provided by a non-lawyer.
* * * * *
Partner means a member of a partnership, a shareholder in a law
firm organized as a professional corporation, or a member of an
association authorized to practice law.
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. 11.14(a), (b), and (c) of this subchapter, 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. 11.9(a) or (b).
* * * * *
Reasonable belief or reasonably believes when used in reference to
a practitioner means that the practitioner believes the matter in
question and that the circumstances are such that the belief is
reasonable.
Reasonably should know when used in reference to a practitioner
means that a practitioner of reasonable prudence and competence would
ascertain the matter in question.
* * * * *
Screened means the isolation of a practitioner from any
participation in a matter through the timely imposition of procedures
within a firm that are reasonably adequate under the circumstances to
protect information that the isolated practitioner is obligated to
protect under these USPTO Rules of Professional Conduct or other law.
* * * * *
Tribunal means the Office, a court, an arbitrator in a binding
arbitration proceeding or a legislative body, administrative agency or
other body acting in an adjudicative capacity. A legislative body,
administrative agency or other body acts in an adjudicative capacity
when a neutral official, after the presentation of evidence or legal
argument by a party or parties, will render a binding legal judgment
directly affecting a party's interests in a particular matter.
* * * * *
Writing or written means a tangible or electronic record of a
communication or representation, including handwriting, typewriting,
printing, photostating, photography, audio or video recording and
email. A ``signed'' writing includes an electronic sound, symbol or
process attached to or logically associated with a writing and executed
or adopted by a person with the intent to sign the writing.
11. Revise Sec. 11.2(c), (d) and (e) to read as follows:
Sec. 11.2 Director of the Office of Enrollment and Discipline.
* * * * *
(c) Petition to OED Director regarding enrollment or recognition.
Any petition from any action or requirement of the staff of OED
reporting to the OED Director shall be taken to the OED Director
accompanied by payment of the fee set forth in Sec. 1.21(a)(5)(i) of
this chapter. Any such petition not filed within sixty days from the
mailing date of the action or notice from which relief is requested
will be dismissed as untimely. The filing of a petition will neither
stay the period for taking other action which may be running, nor stay
other proceedings. The petitioner may file a single request for
reconsideration of a decision within thirty days of the date of the
decision. Filing a request for reconsideration stays the period for
seeking review of the OED Director's decision until a final decision on
the request for reconsideration is issued.
(d) Review of OED Director's decision regarding enrollment or
recognition. A party dissatisfied with a final decision of the OED
Director regarding enrollment or recognition shall 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)(ii) of this chapter. By filing
such petition to the USPTO Director, the party waives any right to seek
reconsideration from the OED Director. Any petition not filed within
thirty days after the final decision of the OED Director may be
dismissed as untimely. Briefs or memoranda, if any, in support of the
petition shall accompany the petition. 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. An oral hearing will not be granted 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 thirty days after the date of said
decision. Only a decision of the USPTO Director regarding denial of a
petition constitutes a final decision for the purpose of judicial
review.
(e) Petition to USPTO Director in disciplinary matters. A party
dissatisfied with any action or notice of any employee of the Office of
Enrollment and Discipline during or at the conclusion of a disciplinary
investigation shall seek review of the action or notice upon petition
to the OED Director. A petition from any action or notice of the staff
reporting to the OED Director shall be taken to the OED Director. A
party dissatisfied with
[[Page 64203]]
the OED Director's final decision shall seek review of the final
decision upon petition to the USPTO Director to invoke the supervisory
authority of the USPTO Director in appropriate circumstances in
disciplinary matters. Any petition under this paragraph must contain a
statement of the facts involved and the point or points to be reviewed
and the action requested. Briefs or memoranda, if any, in support of
the petition must accompany the petition. Where facts are to be proven,
the proof in the form of affidavits or declarations (and exhibits, if
any) must accompany the petition. The OED Director may be directed by
the USPTO Director to file a reply to the petition to the USPTO
Director, supplying a copy to the petitioner. An oral hearing on
petition taken to the USPTO Director will not be granted except when
considered necessary by the USPTO Director. The filing of a petition
under this paragraph will not stay an investigation, disciplinary
proceeding, or other proceedings. Any petition under this part not
filed within thirty days of the mailing date of the action or notice
from which relief is requested may be dismissed as untimely. Any
request for reconsideration of the decision of the OED Director or the
USPTO Director may be dismissed as untimely if not filed within thirty
days after the date of said decision. Only a decision of the USPTO
Director regarding denial of a petition constitutes a final decision
for the purpose of judicial review.
12. Remove and reserve Sec. 11.8(d) to read as follows:
Sec. 11.8 Oath and registration fee.
* * * * *
(d) [Reserved]
13. Revise Sec. 11.11(a), (b), and (c), remove and reserve
paragraphs (d)(2) and (d)(4), and revise paragraphs (d)(5), (d)(6), and
(e) to read as follows:
Sec. 11.11 Administrative suspension, inactivation, resignation, and
readmission.
(a) Contact information. (1) A registered practitioner must notify
the OED Director of his or her postal address for his or her office, up
to three email addresses where he or she receives email, and business
telephone number, as well as every change to any of said addresses or
telephone numbers within thirty days of the date of the change. A
registered practitioner shall, in addition to any notice of change of
address and telephone number filed in individual patent applications,
separately file written notice of the change of address or telephone
number to the OED Director. 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.
(2) A letter may be addressed to any registered practitioner, at
the address of which separate notice was last received by the OED
Director, for the purpose of ascertaining whether such practitioner
desires to remain on the register. Any registered practitioner failing
to reply and give any information requested by the OED Director within
a time limit specified will be subject to administrative suspension
under paragraph (b) of this section.
(b) Administrative suspension. (1) Whenever it appears that a
registered practitioner or a person granted limited recognition under
Sec. 11.9(b) has failed to comply with Sec. 11.8(d) or paragraph
(a)(2) of this section, the OED Director shall publish and send a
notice to the registered practitioner or person granted limited
recognition advising of the noncompliance, the consequence of being
administratively suspended under paragraph (b)(5) of this section if
noncompliance is not timely remedied, and the requirements for
reinstatement under paragraph (f) of this section. The notice shall be
published and sent to the registered practitioner or person granted
limited recognition by mail to the last postal address furnished under
paragraph (a) of this section or by email addressed to the last email
addresses furnished under paragraph (a) of this section. The notice
shall demand compliance and payment of a delinquency fee set forth in
Sec. 1.21(a)(9)(i) of this subchapter within sixty days after the date
of such notice.
(2) In the event a registered practitioner or person granted
limited recognition fails to comply with the notice of paragraph (b)(1)
of this section within the time allowed, the OED Director shall publish
and send in the manner provided for in paragraph (b)(1) of this section
to the registered practitioner or person granted limited recognition a
Rule to Show Cause why his or her registration or recognition should
not be administratively suspended, and he or she no longer be permitted
to practice before the Office in patent matters or in any way hold
himself or herself out as being registered or authorized to practice
before the Office in patent matters. The OED Director shall file a copy
of the Rule to Show Cause with the USPTO Director.
(3) Within 30 days of the OED Director's sending the Rule to Show
Cause identified in paragraph (b)(2) of this section, the registered
practitioner or person granted limited recognition may file a response
to the Rule to Show Cause with the USPTO Director. The response must
set forth the factual and legal bases why the person should not be
administratively suspended. The registered practitioner or person
granted limited recognition shall serve the OED Director with a copy of
the response at the time it is filed with the USPTO Director. Within
ten days of receiving a copy of the response, the OED Director may file
a reply with the USPTO Director that includes documents demonstrating
that the notice identified in paragraph (b)(1) of this section was
published and sent to the practitioner in accordance with paragraph
(b)(1) of this section. A copy of the reply by the OED Director shall
be served on the registered practitioner or person granted limited
recognition. When acting on the Rule to Show Cause, if the USPTO
Director determines that there are no genuine issues of material fact
regarding the Office's compliance with the notice requirements under
this section or the failure of the person to pay the requisite fees,
the USPTO Director shall enter an order administratively suspending the
registered practitioner or person granted limited recognition.
Otherwise, the USPTO Director shall enter an appropriate order
dismissing the Rule to Show Cause. Nothing herein shall permit an
administratively suspended registered practitioner or person granted
limited recognition to seek a stay of the administrative suspension
during the pendency of any review of the USPTO Director's final
decision.
(4) [Reserved]
(5) An administratively suspended registered practitioner or person
granted limited recognition is subject to investigation and discipline
for his or her conduct prior to, during, or after the period he or she
was administratively suspended.
(6) An administratively suspended registered practitioner or person
granted limited recognition is prohibited from practicing before the
Office in patent cases while administratively suspended. A registered
practitioner or person granted limited recognition who knows he or she
has been administratively suspended under this section will be subject
to discipline for failing to comply with the provisions of this
paragraph (b).
[[Page 64204]]
(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 represents an applicant or other person, 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.
Upon separation from the Office, the administratively inactive
practitioner may request reactivation by completing and filing an
application, Data Sheet, signing a written undertaking required by
Sec. 11.10, and paying the fee set forth in Sec. 1.21(a)(1)(i) of
this subchapter. An administratively inactive practitioner remains
subject to the provisions of the USPTO Rules of Professional Conduct
and to proceedings and sanctions under Sec. Sec. 11.19 through 11.58
for conduct that violates a provision of the USPTO Rules of
Professional Conduct prior to or during employment at the Office. If,
within 30 days after separation from the Office, the registered
practitioner does not request active status or another status, the
registered practitioner will be endorsed on the roster as voluntarily
inactive and be subject to the provisions of paragraph (d) of this
section.
(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 may
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 of the practitioner as administratively
inactive. Following separation from the bench, the practitioner may
request restoration to active status by completing and filing an
application, Data Sheet, and signing a written undertaking required by
Sec. 11.10.
(d) * * *
(2) [Reserved]
* * * * *
(4) [Reserved]
(5) A registered practitioner in voluntary inactive status is
prohibited from practicing before the Office in patent cases while in
voluntary inactive status. A registered practitioner in voluntary
inactive status will be subject to discipline for failing to comply
with the provisions of this paragraph. Upon acceptance of the request
for voluntary inactive status, the practitioner must comply with the
provisions of Sec. 11.116.
(6) Any registered practitioner whose name has been endorsed as
voluntarily inactive pursuant to paragraph (d)(1) of this section and
is not under investigation and not subject to a disciplinary proceeding
may be restored to active status on the register as may be appropriate
provided that the practitioner files a written request for restoration,
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 and reputation under Sec. 11.7(a)(2)(i) during the period of
inactivation, a declaration or affidavit attesting to the fact that the
practitioner has read the most recent revisions of the patent laws 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
recognized under Sec. 11.14(c), who is not under investigation under
Sec. 11.22 for a possible violation of the USPTO Rules of Professional
Conduct, subject to discipline under Sec. Sec. 11.24 or 11.25, or 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 in patent matters 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 grievance 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 registered practitioner must comply with the provisions
of Sec. 11.116.
* * * * *
14. Revise Sec. 11.19(a) and (b)(1)(iv) to read as follows:
Sec. 11.19 Disciplinary jurisdiction; Jurisdiction to transfer to
disability inactive status.
(a) All practitioners engaged in practice before the Office; all
practitioners administratively suspended; all practitioners registered
to practice before the Office in patent cases; all practitioners
inactivated; all practitioners authorized under Sec. 11.6(d) to take
testimony; and all practitioners transferred to disability inactive
status, reprimanded, suspended, or excluded from the practice of law by
a duly constituted authority, including by the USPTO Director, are
subject to the disciplinary jurisdiction of the Office. Practitioners
who have resigned shall also be subject to such jurisdiction with
respect to conduct undertaken prior to the resignation and conduct in
regard to any practice before the Office following the resignation. A
person not registered or recognized to practice before the Office is
also subject to the disciplinary authority of the Office if the person
provides or offers to provide any legal services before the Office.
(b) * * *
(1) * * *
(iv) Violation of any USPTO Rule of Professional Conduct; or
* * * * *
15. Revise Sec. 11.20(a)(4) and (b) to read as follows:
Sec. 11.20 Disciplinary sanctions; Transfer to disability inactive
status.
(a) * * *
(4) Probation. 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 shall be
required to notify clients of the probation. Violation of any condition
of probation shall be cause for imposition of the disciplinary
sanction. Imposition of the disciplinary sanction predicated upon
violation of probation shall occur only after an order to show cause
why the disciplinary sanction should not be imposed is resolved
adversely to the practitioner.
(b) Conditions imposed with discipline. When imposing discipline,
the USPTO Director may condition reinstatement upon the practitioner
making restitution, successfully completing a professional
responsibility course or examination, or any other condition deemed
appropriate under the circumstances.
* * * * *
16. Revise Sec. 11.21 to read as follows:
Sec. 11.21 Warnings.
A warning is neither public nor a disciplinary sanction. The OED
Director may conclude an investigation with the issuance of a warning.
The warning shall contain a brief statement of facts and USPTO Rules of
Professional Conduct relevant to the facts.
[[Page 64205]]
17. In Sec. 11.22 revise the section heading, paragraph (f)(2),
and the introductory text of paragraph (i) to read as follows:
Sec. 11.22 Disciplinary investigations.
* * * * *
(f) * * *
(2) The OED Director may request information and evidence regarding
possible grounds for discipline of a practitioner from a non-grieving
client either after obtaining the consent of the practitioner or upon a
finding by a Contact Member of the Committee on Discipline, appointed
in accordance with Sec. 11.23(d), that good cause exists to believe
that the possible ground for discipline alleged has occurred with
respect to non-grieving clients. Neither a request for, nor disclosure
of, such information shall constitute a violation of any USPTO Rules of
Professional Conduct.
* * * * *
(i) Closing investigation. The OED Director shall terminate an
investigation and decline to refer a matter to the Committee on
Discipline if the OED Director determines that:
* * * * *
18. Revise Sec. 11.24(e) to read as follows:
Sec. 11.24 Reciprocal discipline.
* * * * *
(e) Adjudication in another jurisdiction or Federal agency or
program. In all other respects, a final adjudication in another
jurisdiction or Federal agency or program that a practitioner, whether
or not admitted in that jurisdiction, has been guilty of misconduct
shall establish a prima facie case by clear and convincing evidence
that the practitioner has engaged in misconduct under Sec. 11.804.
* * * * *
19. Revise Sec. 11.25(a) to read as follows:
Sec. 11.25 Interim suspension and discipline based upon conviction of
committing a serious crime.
(a) Notification of OED Director. Upon being convicted of a crime
in a court of the United States, any State, or a foreign country, a
practitioner subject to the disciplinary jurisdiction of the Office
shall notify the OED Director in writing of the same within thirty days
from the date of such conviction. Upon being advised or learning that a
practitioner subject to the disciplinary jurisdiction of the Office has
been convicted of a crime, the OED Director shall make a preliminary
determination whether the crime constitutes a serious crime warranting
interim suspension. If the crime is a serious crime, the OED Director
shall file with the USPTO Director proof of the conviction and request
the USPTO Director to issue a notice and order set forth in paragraph
(b)(2) of this section. The OED Director shall in addition, without
Committee on Discipline authorization, file with the USPTO Director a
complaint against the practitioner complying with Sec. 11.34
predicated upon the conviction of a serious crime. If the crime is not
a serious crime, the OED Director shall process the matter in the same
manner as any other information or evidence of a possible violation of
any USPTO Rule of Professional Conduct coming to the attention of the
OED Director.
* * * * *
20. Revise Sec. 11.32 to read as follows:
Sec. 11.32 Instituting a disciplinary proceeding.
If after conducting an investigation under Sec. 11.22(a), the OED
Director is of the opinion that grounds exist for discipline under
Sec. 11.19(b), the OED Director, after complying where necessary with
the provisions of 5 U.S.C. 558(c), may convene a meeting of a panel of
the Committee on Discipline. If convened, the panel of the Committee on
Discipline shall then determine as specified in Sec. 11.23(b) whether
there is probable cause to bring disciplinary charges. If the panel of
the Committee on Discipline determines that probable cause exists to
bring charges, the OED Director may institute a disciplinary proceeding
by filing a complaint under Sec. 11.34.
21. In Sec. 11.34 revise the introductory text of paragraph (a),
and paragraphs (a)(1) and (b) to read as follows:
Sec. 11.34 Complaint.
(a) A complaint instituting a disciplinary proceeding shall:
(1) Name the person who is the subject of the complaint who may
then be referred to as the ``respondent'';
* * * * *
(b) A complaint will be deemed sufficient if it fairly informs the
respondent of any grounds for discipline, and where applicable, the
USPTO Rules of Professional Conduct that form the basis for the
disciplinary proceeding so that the respondent is able to adequately
prepare a defense.
* * * * *
22. Revise Sec. 11.35(a)(2)(ii) and (a)(4)(ii) to read as follows:
Sec. 11.35 Service of complaint.
(a) * * *
(2) * * *
(ii) A respondent who is not registered at the last address for the
respondent known to the OED Director.
* * * * *
(4) * * *
(ii) A respondent who is not registered at the last address for the
respondent known to the OED Director.
* * * * *
23. In Sec. 11.54 revise paragraph (a)(2) and the introductory
text of paragraph (b) to read as follows:
Sec. 11.54 Initial decision of hearing officer.
(a) * * *
(2) An order of default judgment, of suspension or exclusion from
practice, of reprimand, of probation or an order dismissing the
complaint. The order also may impose any conditions deemed appropriate
under the circumstances. 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, including a default judgment,
will, without further proceedings, become the decision of the USPTO
Director thirty 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 default judgment, reprimand, suspension, exclusion, or
probation, and shall explain any conditions imposed with discipline. In
determining any sanction, the following four factors must be considered
if they are applicable:
* * * * *
24. In Sec. 11.58 revise the introductory text of paragraph (b)(2)
and paragraph (f)(1)(ii) to read as follows:
Sec. 11.58 Duties of disciplined or resigned practitioner, or
practitioner on disability inactive status.
* * * * *
(b) * * *
(2) Within forty-five days after entry of the order of suspension,
exclusion, or of acceptance of resignation, the practitioner shall file
with the OED Director an affidavit of compliance certifying that the
practitioner has fully complied with the provisions of the order, this
section, and with Sec. 11.116 for withdrawal from representation.
Appended to the affidavit of compliance shall be:
* * * * *
(f) * * *
(1) * * *
(ii) Shows by clear and convincing evidence that the excluded,
suspended
[[Page 64206]]
or resigned practitioner, or practitioner transferred to disability
inactive status has complied with the provisions of this section and
all USPTO Rules of Professional Conduct; and
* * * * *
Sec. 11.61 [Removed and reserved]
25. Section 11.61 is removed and reserved.
26. Part 11 is amended to add Subpart D to read as follows:
Subpart D--USPTO Rules of Professional Conduct
11.100 [Reserved]
Client-Practitioner Relationship
11.101 Competence.
11.102 Scope of representation and allocation of authority between
client and practitioner.
11.103 Diligence.
11.104 Communication.
11.105 Fees.
11.106 Confidentiality of information.
11.107 Conflict of interest: Current clients.
11.108 Conflict of interest: Current clients: Specific rules.
11.109 Duties to former clients.
11.110 Imputation of conflicts of interest: General rule.
11.111 Former or current Federal Government employees.
11.112 Former judge, arbitrator, mediator or other third-party
neutral.
11.113 Organization as client.
11.114 Client with diminished capacity.
11.115 Safekeeping property.
11.116 Declining or terminating representation.
11.117 Sale of law practice.
11.118 Duties to prospective client.
11.119-11.200 [Reserved]
Counselor
11.201 Advisor.
11.202 [Reserved]
11.203 Evaluation for use by third persons.
11.204 Practitioner serving as third-party neutral.
11.205-11.300 [Reserved]
Advocate
11.301 Meritorious claims and contentions.
11.302 Expediting proceedings.
11.303 Candor toward the tribunal.
11.304 Fairness to opposing party and counsel.
11.305 Impartiality and decorum of the tribunal.
11.306 [Reserved]
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 with person represented by a practitioner.
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 partners, managers, and supervisory
practitioners.
11.502 Responsibilities of a subordinate practitioner.
11.503 Responsibilities regarding non-practitioner 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.
11.508-11.700 [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 specialization.
11.705 Firm names and letterheads.
11.706-11.800 [Reserved]
Maintaining the Integrity of the Profession
11.801 Registration, recognition and disciplinary matters.
11.802 Judicial and legal officials.
11.803 Reporting professional misconduct.
11.804 Misconduct.
11.805-11.900 [Reserved]
11.901 Savings clause.
Subpart D--USPTO Rules of Professional Conduct
Sec. 11.100 [Reserved]
Client-Practitioner Relationship
Sec. 11.101 Competence.
A practitioner shall provide competent representation to a client.
Competent representation requires the legal, scientific, and technical
knowledge, skill, thoroughness and preparation reasonably necessary for
the representation.
Sec. 11.102 Scope of representation and allocation of authority
between client and practitioner.
(a) Subject to paragraphs (c) and (d) of this section, a
practitioner shall abide by a client's decisions concerning the
objectives of representation and, as required by Sec. 11.104, shall
consult with the client as to the means by which they are to be
pursued. A practitioner may take such action on behalf of the client as
is impliedly authorized to carry out the representation. A practitioner
shall abide by a client's decision whether to settle a matter.
(b) [Reserved].
(c) A practitioner may limit the scope of the representation if the
limitation is reasonable under the circumstances and the client gives
informed consent.
(d) A practitioner shall not counsel a client to engage, or assist
a 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 a client and may counsel or assist
a client to make a good-faith effort to determine the validity, scope,
meaning or application of the law.
Sec. 11.103 Diligence.
A practitioner shall act with reasonable diligence and promptness
in representing a client.
Sec. 11.104 Communication.
(a) A practitioner shall:
(1) Promptly inform the client of any decision or circumstance with
respect to which the client's informed consent is required by the USPTO
Rules of Professional Conduct;
(2) Reasonably consult with the client about the means by which the
client's objectives are to be accomplished;
(3) Keep the client reasonably informed about the status of the
matter;
(4) Promptly comply with reasonable requests for information from
the client; and
(5) Consult with the client about any relevant limitation on the
practitioner's conduct when the practitioner knows that the client
expects assistance not permitted by the USPTO Rules of Professional
Conduct or other law.
(b) A practitioner shall explain a matter to the extent reasonably
necessary to permit the client to make informed decisions regarding the
representation.
Sec. 11.105 Fees.
(a) A practitioner shall not make an agreement for, charge, or
collect an unreasonable fee or an unreasonable amount for expenses. 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 services; and
[[Page 64207]]
(8) Whether the fee is fixed or contingent.
(b) The scope of the representation and the basis or rate of the
fee and expenses for which the client will be responsible shall be
communicated to the client, preferably in writing, before or within a
reasonable time after commencing the representation, except when the
practitioner will charge a regularly represented client on the same
basis or rate. Any changes in the basis or rate of the fee or expenses
shall also be communicated to the client.
(c) A fee 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 law. A contingent fee agreement shall be in a writing
signed by the client 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 settlement, trial 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. The agreement must clearly notify the client of any
expenses for which the client will be liable whether or not the client
is the prevailing party. 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) [Reserved].
(e) A division of a fee between practitioners who are not in the
same firm may be made only if:
(1) The division is in proportion to the services performed by each
practitioner or each practitioner assumes joint responsibility for the
representation;
(2) The client agrees to the arrangement, including the share each
practitioner will receive, and the agreement is confirmed in writing;
and
(3) The total fee is reasonable.
Sec. 11.106 Confidentiality of information.
(a) A practitioner shall not reveal information relating to the
representation of a client unless the client gives informed consent,
the disclosure is impliedly authorized in order to carry out the
representation, the disclosure is permitted by paragraph (b) of this
section, or the disclosure is required by paragraph (c) of this
section.
(b) A practitioner may reveal information relating to the
representation of a client to the extent the practitioner reasonably
believes necessary:
(1) To prevent reasonably certain death or substantial bodily harm;
(2) To prevent the client from committing a crime, fraud, or
inequitable conduct before the Office that is reasonably certain to
result in substantial injury to the financial interests or property of
another and in furtherance of which the client has used or is using the
practitioner's services;
(3) To prevent, mitigate or rectify substantial injury to the
financial interests or property of another that is reasonably certain
to result or has resulted from the client's commission of a crime,
fraud, or inequitable conduct before the Office in furtherance of which
the client has used the practitioner's services;
(4) To secure legal advice about the practitioner's compliance with
the USPTO Rules of Professional Conduct;
(5) 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 the client; or
(6) To comply with other law or a court order.
(c) A practitioner shall disclose to the Office information
necessary to comply with applicable duty of disclosure provisions.
Sec. 11.107 Conflict of interest: Current clients.
(a) Except as provided in paragraph (b) of this section, a
practitioner shall not represent a client if the representation
involves a concurrent conflict of interest. A concurrent conflict of
interest exists if:
(1) The representation of one client will be directly adverse to
another client; or
(2) There is a significant risk that the representation of one or
more clients will be materially limited by the practitioner's
responsibilities to another client, a former client or a third person
or by a personal interest of the practitioner.
(b) Notwithstanding the existence of a concurrent conflict of
interest under paragraph (a) of this section, a practitioner may
represent a client if:
(1) The practitioner reasonably believes that the practitioner will
be able to provide competent and diligent representation to each
affected client;
(2) The representation is not prohibited by law;
(3) The representation does not involve the assertion of a claim by
one client against another client represented by the practitioner in
the same litigation or other proceeding before a tribunal; and
(4) Each affected client gives informed consent, confirmed in
writing.
Sec. 11.108 Conflict of interest: Current clients: Specific rules.
(a) A practitioner shall not enter into a business transaction with
a client or knowingly acquire an ownership, possessory, security or
other pecuniary interest adverse to a client 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 in a manner that can be reasonably
understood by the client;
(2) The client is advised in writing of the desirability of seeking
and is given a reasonable opportunity to seek the advice of independent
legal counsel in the transaction; and
(3) The client gives informed consent, in a writing signed by the
client, to the essential terms of the transaction and the
practitioner's role in the transaction, including whether the
practitioner is representing the client in the transaction.
(b) A practitioner shall not use information relating to
representation of a client to the disadvantage of the client unless the
client gives informed consent, except as permitted or required by the
USPTO Rules of Professional Conduct.
(c) A practitioner shall not solicit any substantial gift from a
client, including a testamentary gift, or prepare on behalf of a client
an instrument giving the practitioner or a person related to the
practitioner any substantial gift unless the practitioner or other
recipient of the gift is related to the client. For purposes of this
paragraph, related persons include a spouse, child, grandchild, parent,
grandparent or other relative or individual with whom the practitioner
or the client maintains a close, familial relationship.
(d) Prior to the conclusion of representation of a client, 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, except
that:
[[Page 64208]]
(1) A practitioner may advance court costs and expenses of
litigation, the repayment of which may be contingent on the outcome of
the matter; and
(2) A practitioner representing an indigent client may pay court
costs and expenses of litigation on behalf of the client.
(f) A practitioner shall not accept compensation for representing a
client from one other than the client unless:
(1) The client gives informed consent;
(2) There is no interference with the practitioner's independence
of professional judgment or with the client-practitioner 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 shall not
participate in making an aggregate settlement of the claims of or
against the clients, unless each client gives informed consent, in
writing signed by the client. The practitioner's disclosure shall
include the existence and nature of all the claims involved and of the
participation of each person in the settlement.
(h) A practitioner shall not:
(1) Make an agreement prospectively limiting the practitioner's
liability to a client for malpractice unless the client is
independently represented in making the agreement; or
(2) Settle a claim or potential claim for such liability with an
unrepresented client or former client unless that person is advised in
writing of the desirability of seeking and is given a reasonable
opportunity to seek the advice of independent legal counsel in
connection therewith.
(i) A practitioner shall not acquire a proprietary interest in the
cause of action, subject matter of litigation, or a proceeding before
the Office which the practitioner is conducting for a client, except
that the practitioner may:
(1) Acquire a lien authorized by law to secure the practitioner's
fee or expenses;
(2) Contract with a client for a reasonable contingent fee in a
civil case; and
(3) In a patent case or a proceeding before the Office, take an
interest in the patent as part or all of his or her fee.
(j) [Reserved].
(k) While practitioners are associated in a firm, a prohibition in
paragraphs (a) through (i) of this section that applies to any one of
them shall apply to all of them.
Sec. 11.109 Duties to former clients.
(a) A practitioner who has formerly represented a client in a
matter 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.
(b) A practitioner shall not knowingly represent a person in the
same or a substantially related matter in which a 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 had 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.
(c) A practitioner who has formerly represented a client in a
matter or whose present or former firm has formerly represented a
client in a matter shall not thereafter:
(1) Use information relating to the representation to the
disadvantage of the former client except as the USPTO Rules of
Professional Conduct 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 the
USPTO Rules of Professional Conduct would permit or require with
respect to a client.
Sec. 11.110 Imputation of conflicts of interest: General rule.
(a) While practitioners are associated in a firm, none of them
shall knowingly represent a client when any one of them practicing
alone would be prohibited from doing so by Sec. Sec. 11.107 or 11.109,
unless
(1) The prohibition is based on a personal interest of the
disqualified practitioner and does not present a significant risk of
materially limiting the representation of the client by the remaining
practitioners in the firm; or
(2) The prohibition is based upon Sec. 11.109(a) or (b), and
arises out of the disqualified practitioner's association with a prior
firm, and
(i) The disqualified practitioner is timely screened from any
participation in the matter and is apportioned no part of the fee
therefrom;
(ii) Written notice is promptly given to any affected former client
to enable the former client to ascertain compliance with the provisions
of this section, which shall include a description of the screening
procedures employed; a statement of the firm's and of the screened
practitioner's compliance with the USPTO Rules of Professional Conduct;
a statement that review may be available before a tribunal; and an
agreement by the firm to respond promptly to any written inquiries or
objections by the former client about the screening procedures; and
(iii) Certifications of compliance with the USPTO Rules of
Professional Conduct and with the screening procedures are provided to
the former client by the screened practitioner and by a partner of the
firm, at reasonable intervals upon the former client's written request
and upon termination of the screening procedures.
(b) 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.
(d) The disqualification of practitioners associated in a firm with
former or current Federal Government lawyers is governed by Sec.
11.111.
Sec. 11.111 Former or current Federal Government employees.
A practitioner who is a former or current Federal Government
employee shall not engage in any conduct which is contrary to
applicable Federal ethics law, including conflict of interest statutes
and regulations of the department, agency or commission formerly or
currently employing said practitioner.
Sec. 11.112 Former judge, arbitrator, mediator or other third-party
neutral.
(a) Except as stated in paragraph (d) of this section, a
practitioner shall not represent anyone in connection with a matter in
which the practitioner participated personally and substantially as a
judge or other adjudicative officer or law clerk to such a person or as
an arbitrator, mediator or other third-party neutral, unless all
parties to the proceeding give informed consent, confirmed in writing.
(b) A practitioner shall not negotiate for employment with any
person who is involved as a party or as practitioner for
[[Page 64209]]
a party in a matter in which the practitioner is participating
personally and substantially as a judge or other adjudicative officer
or as an arbitrator, mediator or other third-party neutral. A
practitioner serving as a law clerk to a judge or other adjudicative
officer 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,
or other adjudicative officer.
(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 timely 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 parties and any
appropriate tribunal to enable them 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 acting through its duly authorized
constituents.
(b) If a practitioner for an organization 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 that reasonably might be imputed to
the organization, and that is likely to result in substantial injury to
the organization, then the practitioner shall proceed as is reasonably
necessary in the best interest of the organization. Unless the
practitioner reasonably believes that it is not necessary in the best
interest of the organization to do so, the practitioner shall refer the
matter to higher authority in the organization, including, if warranted
by the circumstances, to the highest authority that can act on behalf
of the organization as determined by applicable law.
(c) Except as provided in paragraph (d) of this section, if
(1) 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 or fails to address in a timely and
appropriate manner an action, or a refusal to act, that is clearly a
violation of law, and
(2) The practitioner reasonably believes that the violation is
reasonably certain to result in substantial injury to the organization,
then the practitioner may reveal information relating to the
representation whether or not Sec. 11.106 permits such disclosure, but
only if and to the extent the practitioner reasonably believes
necessary to prevent substantial injury to the organization.
(d) Paragraph (c) of this section shall not apply with respect to
information relating to a practitioner's representation of an
organization to investigate an alleged violation of law, or to defend
the organization or an officer, employee or other constituent
associated with the organization against a claim arising out of an
alleged violation of law.
(e) A practitioner who reasonably believes that he or she has been
discharged because of the practitioner's actions taken pursuant to
paragraphs (b) or (c) of this section, or who withdraws under
circumstances that require or permit the practitioner to take action
under either of those paragraphs, shall proceed as the practitioner
reasonably believes necessary to assure that the organization's highest
authority is informed of the practitioner's discharge or withdrawal.
(f) In dealing with an organization's directors, officers,
employees, members, shareholders, or other constituents, a practitioner
shall explain the identity of the client when the practitioner knows or
reasonably should know that the organization's interests are adverse to
those of the constituents with whom the practitioner is dealing.
(g) 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 given by an appropriate official of the
organization other than the individual who is to be represented, or by
the shareholders.
Sec. 11.114 Client with diminished capacity.
(a) When a client's capacity to make adequately considered
decisions in connection with a representation is diminished, whether
because of minority, mental impairment or for some other reason, the
practitioner shall, as far as reasonably possible, maintain a normal
client-practitioner relationship with the client.
(b) When the practitioner reasonably believes that the client has
diminished capacity, is at risk of substantial physical, financial or
other harm unless action is taken and cannot adequately act in the
client's own interest, the practitioner may take reasonably necessary
protective action, including consulting with individuals or entities
that have the ability to take action to protect the client and, in
appropriate cases, seeking the appointment of a guardian ad litem,
conservator or guardian.
(c) Information relating to the representation of a client with
diminished capacity is protected under Sec. 11.106. When taking
protective action pursuant to paragraph (b) of this section, the
practitioner is impliedly authorized under Sec. 11.106(a) to reveal
information about the client, but only to the extent reasonably
necessary to protect the client's interests.
Sec. 11.115 Safekeeping property.
(a) A practitioner shall hold property of clients or third persons
that is in a practitioner's possession in connection with a
representation separate from the practitioner's own property. Funds
shall be kept in a separate account maintained in the state where the
practitioner's office is situated, or elsewhere with the consent of the
client or third person. Where the practitioner's office is situated in
a foreign country, funds shall be kept in a separate account maintained
in that foreign country or elsewhere with the consent of the client or
third person. Other property shall be identified as such and
appropriately safeguarded. Complete records of such account funds and
other property shall be kept by the practitioner and shall be preserved
for a period of five years after termination of the representation.
(b) A practitioner may deposit the practitioner's own funds in a
client trust account for the sole purpose of paying bank service
charges on that account, but only in an amount necessary for that
purpose.
(c) A practitioner shall deposit into a client trust account legal
fees and expenses that have been paid in advance, to be withdrawn by
the practitioner only as fees are earned or expenses incurred.
(d) Upon receiving funds or other property in which a client or
third person has an interest, a practitioner shall promptly notify the
client or third person. Except as stated in this section or otherwise
permitted by law or by agreement with the client, a practitioner shall
promptly deliver to the client or third person any funds or other
property that the client or third person is entitled to receive and,
upon request by the client or third person, shall promptly
[[Page 64210]]
render a full accounting regarding such property.
(e) When in the course of representation a practitioner is in
possession of property in which two or more persons (one of whom may be
the practitioner) claim interests, the property shall be kept separate
by the practitioner until the dispute is resolved. The practitioner
shall promptly distribute all portions of the property as to which the
interests are not in dispute.
(f) All separate accounts for clients or third persons kept by a
practitioner must also comply with the following provisions:
(1) Required records. The records to be kept include:
(i) Receipt and disbursement journals containing a record of
deposits to and withdrawals from client trust accounts, specifically
identifying the date, source, and description of each item deposited,
as well as the date, payee and purpose of each disbursement;
(ii) Ledger records for all client trust accounts showing, for each
separate trust client or beneficiary, the source of all funds
deposited, the names of all persons for whom the funds are or were
held, the amount of such funds, the descriptions and amounts of charges
or withdrawals, and the names of all persons or entities to whom such
funds were disbursed;
(iii) Copies of retainer and compensation agreements with clients;
(iv) Copies of accountings to clients or third persons showing the
disbursement of funds to them or on their behalf;
(v) Copies of bills for legal fees and expenses rendered to
clients;
(vi) Copies of records showing disbursements on behalf of clients;
(vii) The physical or electronic equivalents of all checkbook
registers, bank statements, records of deposit, pre-numbered canceled
checks, and substitute checks provided by a financial institution;
(viii) Records of all electronic transfers from client trust
accounts, including the name of the person authorizing transfer, the
date of transfer, the name of the recipient and confirmation from the
financial institution of the trust account number from which money was
withdrawn and the date and the time the transfer was completed;
(ix) Copies of monthly trial balances and quarterly reconciliations
of the client trust accounts maintained by the practitioner; and
(x) Copies of those portions of client files that are reasonably
related to client trust account transactions.
(2) Client trust account safeguards. With respect to client trust
accounts required by paragraphs (a) through (e) of this section:
(i) Only a practitioner or a person under the direct supervision of
the practitioner shall be an authorized signatory or authorize
transfers from a client trust account;
(ii) Receipts shall be deposited intact and records of deposit
should be sufficiently detailed to identify each item; and
(iii) Withdrawals shall be made only by check payable to a named
payee and not to cash, or by authorized electronic transfer.
(3) Availability of records. Records required by paragraph (f)(1)
of this section may be maintained by electronic, photographic, or other
media provided that they otherwise comply with paragraphs (f)(1) and
(f)(2) of this section and that printed copies can be produced. These
records shall be readily accessible to the practitioner.
(4) Lawyers. The records kept by a lawyer are deemed to be in
compliance with this section if the types of records that are
maintained meet the recordkeeping requirements of a state in which the
lawyer is licensed and in good standing, the recordkeeping requirements
of the state where the lawyer's principal place of business is located,
or the recordkeeping requirements of this section.
(5) Patent agents and persons granted limited recognition who are
employed in the United States by a law firm. The records kept by a law
firm employing one or more registered patent agents or persons granted
limited recognition under Sec. 11.9 are deemed to be in compliance
with this section if the types of records that are maintained meet the
recordkeeping requirements of the state where at least one practitioner
of the law firm is licensed and in good standing, the recordkeeping
requirements of the state where the law firm's principal place of
business is located, or the recordkeeping requirements of this section.
Sec. 11.116 Declining or terminating representation.
(a) Except as stated in paragraph (c) of this section, a
practitioner shall not represent a client, or where representation has
commenced, shall withdraw from the representation of a client if:
(1) The representation will result in violation of the USPTO Rules
of Professional Conduct or other law;
(2) The practitioner's physical or mental condition materially
impairs the practitioner's ability to represent the client; or
(3) The practitioner is discharged.
(b) Except as stated in paragraph (c) of this section, a
practitioner may withdraw from representing a client if:
(1) Withdrawal can be accomplished without material adverse effect
on the interests of the client;
(2) The client persists in a course of action involving the
practitioner's services that the practitioner reasonably believes is
criminal or fraudulent;
(3) The client has used the practitioner's services to perpetrate a
crime or fraud;
(4) A client insists upon taking action that the practitioner
considers repugnant or with which the practitioner has a fundamental
disagreement;
(5) 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;
(6) The representation will result in an unreasonable financial
burden on the practitioner or has been rendered unreasonably difficult
by the client; or
(7) Other good cause for withdrawal exists.
(c) A practitioner must comply with applicable law requiring notice
to or permission of a tribunal when terminating a representation. When
ordered to do so by a tribunal, a practitioner shall continue
representation notwithstanding good cause for terminating the
representation.
(d) Upon termination of representation, a practitioner shall take
steps to the extent 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 or expense that has not been earned or incurred. The practitioner
may retain papers relating to the client to the extent permitted by
other law.
Sec. 11.117 Sale of law practice.
A practitioner or a law firm may sell or purchase a law practice,
or an area of law practice, including good will, if the following
conditions are satisfied:
(a) The seller ceases to engage in the private practice of law, or
in the area of practice that has been sold, in a geographic area in
which the practice has been conducted;
(b)(1) Except as provided in paragraph (b)(2) of this section, the
entire practice, or the entire area of practice, is sold to one or more
lawyers or law firms;
[[Page 64211]]
(2) To the extent the practice or the area of practice involves
patent proceedings before the Office, that practice or area of practice
may be sold only to one or more registered practitioners or law firms
that include at least one registered practitioner;
(c)(1) The seller gives written notice to each of the seller's
clients regarding:
(i) The proposed sale;
(ii) The client's right to retain other counsel or to take
possession of the file; and
(iii) The fact that the client's consent to the transfer of the
client's files 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.
(2) 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; and
(d) The fees charged clients shall not be increased by reason of
the sale.
Sec. 11.118 Duties to prospective client.
(a) A person who discusses with a practitioner the possibility of
forming a client-practitioner relationship with respect to a matter is
a prospective client.
(b) Even when no client-practitioner relationship ensues, a
practitioner who has had discussions with the prospective client shall
not use or reveal information learned in the consultation, except as
Sec. 11.109 would permit with respect to information of a former
client.
(c) A practitioner subject to paragraph (b) of this section shall
not represent a client with interests materially adverse to those of a
prospective client in the same or a substantially related matter if the
practitioner received information from the prospective client that
could be significantly harmful to that person in the matter, except as
provided in paragraph (d) of this section. If a practitioner is
disqualified from representation under this paragraph, no practitioner
in a firm with which that practitioner is associated may knowingly
undertake or continue representation in such a matter, except as
provided in paragraph (d) of this section.
(d) When the practitioner has received disqualifying information as
defined in paragraph (c) of this section, representation is permissible
if:
(1) Both the affected client and the prospective client have given
informed consent, confirmed in writing; or
(2) The practitioner who received the information took reasonable
measures to avoid exposure to more disqualifying information than was
reasonably necessary to determine whether to represent the prospective
client; and
(i) The disqualified practitioner is timely screened from any
participation in the matter and is apportioned no part of the fee
therefrom; and
(ii) Written notice is promptly given to the prospective client.
Sec. Sec. 11.119-11.200 [Reserved]
Counselor
Sec. 11.201 Advisor.
In representing a client, a practitioner shall exercise independent
professional judgment and render candid advice.
Sec. 11.202 [Reserved]
Sec. 11.203 Evaluation for use by third persons.
(a) A practitioner may provide an evaluation of a matter affecting
a client for the use of someone other than the client if the
practitioner reasonably believes that making the evaluation is
compatible with other aspects of the practitioner's relationship with
the client.
(b) When the practitioner knows or reasonably should know that the
evaluation is likely to affect the client's interests materially and
adversely, the practitioner shall not provide the evaluation unless the
client gives informed consent.
(c) Except as disclosure is authorized or 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.
Sec. 11.204 Practitioner serving as third-party neutral.
(a) A practitioner serves as a third-party neutral when the
practitioner assists two or more persons who are not clients of the
practitioner to reach a resolution of a dispute or other matter that
has arisen between them. Service as a third-party neutral may include
service as an arbitrator, a mediator or in such other capacity as will
enable the practitioner to assist the parties to resolve the matter.
(b) A practitioner serving as a third-party neutral shall inform
unrepresented parties that the practitioner is not representing them.
When the practitioner knows or reasonably should know that a party does
not understand the practitioner's role in the matter, the practitioner
shall explain the difference between the practitioner's role as a
third-party neutral and a practitioner's role as one who represents a
client.
Sec. Sec. 11.205-11.300 [Reserved]
Advocate
Sec. 11.301 Meritorious claims and contentions.
A practitioner shall not bring or defend a proceeding, or assert or
controvert an issue therein, unless there is a basis in law and fact
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 proceedings.
A practitioner shall make reasonable efforts to expedite
proceedings before a tribunal consistent with the interests of the
client.
Sec. 11.303 Candor toward the tribunal.
(a) A practitioner shall not knowingly:
(1) Make a false statement of fact or law to a tribunal or fail to
correct a false statement of material fact or law previously made to
the tribunal by the practitioner;
(2) Fail to disclose to the tribunal legal authority in the
controlling jurisdiction known to the practitioner to be directly
adverse to the position of the client and not disclosed by opposing
counsel in an inter partes proceeding, or fail to disclose such
authority in an ex parte proceeding before the Office if such authority
is not otherwise disclosed; or
(3) Offer evidence that the practitioner knows to be false. If a
practitioner, the practitioner's client, or a witness called by the
practitioner, has offered material evidence and the practitioner comes
to know of its falsity, the practitioner shall take reasonable remedial
measures, including, if necessary, disclosure to the tribunal. A
practitioner may refuse to offer evidence that the practitioner
reasonably believes is false.
(b) A practitioner who represents a client in a proceeding before a
tribunal and who knows that a person intends to engage, is engaging or
has engaged in criminal or fraudulent conduct related to the proceeding
shall take reasonable remedial measures, including, if necessary,
disclosure to the tribunal.
(c) The duties stated in paragraphs (a) and (b) 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.
(d) In an ex parte proceeding, a practitioner shall inform the
tribunal of
[[Page 64212]]
all material facts known to the practitioner that will enable the
tribunal to make an informed decision, whether or not the facts are
adverse.
(e) In a proceeding before the Office, a practitioner shall
disclose to the Office information necessary to comply with applicable
duty of disclosure provisions.
Sec. 11.304 Fairness to opposing party and counsel.
A practitioner shall not:
(a) Unlawfully obstruct another party's access to evidence or
unlawfully alter, destroy or conceal a document 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 a tribunal
except for an open refusal based on an assertion that no valid
obligation exists;
(d) 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 a tribunal, 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 a judge, hearing officer, administrative law
judge, administrative patent judge, administrative trademark judge,
juror, prospective juror, employee or officer of the Office, or other
official by means prohibited by law;
(b) Communicate ex parte with such a person during the proceeding
unless authorized to do so by law, rule or court order; or
(c) [Reserved]
(d) Engage in conduct intended to disrupt any proceeding before a
tribunal.
Sec. 11.306 [Reserved]
Sec. 11.307 Practitioner as witness.
(a) A practitioner shall not act as advocate at a proceeding before
a tribunal in which the practitioner is likely to be a necessary
witness unless:
(1) The testimony relates to an uncontested issue;
(2) The testimony relates to the nature and value of legal services
rendered in the case;
(3) Disqualification of the practitioner would work substantial
hardship on the client; or
(4) The testimony relates to a duty of disclosure.
(b) A practitioner may act as advocate in a proceeding before a
tribunal 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.
Sec. 11.308 [Reserved]
Sec. 11.309 Advocate in nonadjudicative proceedings.
A practitioner representing a client before a legislative body or
administrative agency 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, a practitioner shall not
knowingly:
(a) Make a false statement of material fact or law to a third
person; or
(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 a practitioner.
(a) In representing a client, a practitioner shall not communicate
about the subject of the representation with a person the practitioner
knows to be represented by another practitioner in the matter, unless
the practitioner has the consent of the other practitioner or is
authorized to do so by law, rule, or a court order.
(b) This section does not prohibit communication by a practitioner
with government officials who are otherwise represented by counsel and
who have the authority to redress the grievances of the practitioner's
client, provided that, if the communication relates to a matter for
which the government official is represented, then prior to the
communication the practitioner must disclose to such government
official both the practitioner's identity and the fact that the
practitioner represents a party with a claim against the government.
Sec. 11.403 Dealing with unrepresented person.
In dealing on behalf of a client with a person who is not
represented by a practitioner, a practitioner shall not state or imply
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. The practitioner
shall not give legal advice to an unrepresented person, other than the
advice to secure counsel, if the practitioner knows or reasonably
should know that the interests of such a person are or have a
reasonable possibility of being in conflict with the interests of the
client.
Sec. 11.404 Respect for rights of third persons.
(a) In representing a client, 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.
(b) A practitioner who receives a document relating to the
representation of the practitioner's client and knows or reasonably
should know that the document was inadvertently sent shall promptly
notify the sender.
Sec. Sec. 11.405-11.500 [Reserved]
Law Firms and Associations
Sec. 11.501 Responsibilities of partners, managers, and supervisory
practitioners.
(a) A practitioner who is a partner in a law firm, and a
practitioner who individually or together with other practitioners
possesses comparable managerial authority 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 USPTO Rules of Professional Conduct.
(b) A practitioner having direct supervisory authority over another
[[Page 64213]]
practitioner shall make reasonable efforts to ensure that the other
practitioner conforms to the USPTO Rules of Professional Conduct.
(c) A practitioner shall be responsible for another practitioner's
violation of the USPTO 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 or has comparable managerial
authority 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 USPTO Rules of Professional
Conduct notwithstanding that the practitioner acted at the direction of
another person.
(b) A subordinate practitioner does not violate the USPTO 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 non-practitioner assistants.
With respect to a non-practitioner assistant employed or retained
by or associated with a practitioner:
(a) A practitioner who is a partner, and a practitioner who
individually or together with other practitioners possesses comparable
managerial authority 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
non- practitioner assistant 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 USPTO 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 or has comparable managerial
authority 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 shall not share legal fees with a
non-practitioner, 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;
(3) A practitioner or law firm may include non-practitioner
employees in a compensation or retirement plan, even though the plan is
based in whole or in part on a profit-sharing arrangement; and
(4) A practitioner may share legal fees, whether awarded by a
tribunal or received in settlement of a matter, with a nonprofit
organization that employed, retained or recommended employment of the
practitioner in the matter and that qualifies under Section 501(c)(3)
of the Internal Revenue Code.
(b) A practitioner shall not form a partnership with a non-
practitioner if any of the activities of the partnership consist of the
practice of law.
(c) A practitioner shall not permit a person who recommends,
employs, or pays the practitioner to render legal services for another
to direct or regulate the practitioner's professional judgment in
rendering such legal services.
(d) A practitioner shall not practice with or in the form of a
professional corporation or association authorized to practice law for
a profit, if:
(1) A non-practitioner 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 non-practitioner is a corporate director or officer thereof
or occupies the position of similar responsibility in any form of
association other than a corporation; or
(3) A non-practitioner 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 in violation of the regulation
of the legal profession in that jurisdiction;
(b) Practice before the Office in patent, trademark, or other non-
patent law in violation of this subchapter;
(c) Assist a person who is not a member of the bar of a
jurisdiction in the performance of an activity that constitutes the
unauthorized practice of law, or assist a person who is not a
registered patent practitioner in the performance of an activity that
constitutes unauthorized patent practice before the Office;
(d) Aid a suspended, disbarred or excluded practitioner in the
unauthorized practice of patent, trademark, or other non-patent law
before the Office;
(e) Aid a suspended, disbarred or excluded attorney in the
unauthorized practice of law in any other jurisdiction; or
(f) 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.
Sec. 11.506 Restrictions on right to practice.
A practitioner shall not participate in offering or making:
(a) A partnership, shareholders, operating, employment, or other
similar type of agreement that restricts the right 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 client controversy.
Sec. 11.507 Responsibilities regarding law-related services.
A practitioner shall be subject to the USPTO Rules of Professional
Conduct with respect to the provision of law-related services if the
law-related services are provided:
(a) By the practitioner in circumstances that are not distinct from
the practitioner's provision of legal services to clients; or
(b) In other circumstances by an 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 are not legal services and
that the protections of the client-practitioner relationship do not
exist.
[[Page 64214]]
Sec. Sec. 11.508-11.700 [Reserved]
Information About Legal Services
Sec. 11.701 Communications concerning a practitioner's services.
A practitioner shall not make a false or misleading communication
about the practitioner or the practitioner's services. A communication
is false or misleading if it contains a material misrepresentation of
fact or law, or omits a fact necessary to make the statement considered
as a whole not materially misleading.
Sec. 11.702 Advertising.
(a) Subject to the requirements of Sec. Sec. 11.701 and 11.703, a
practitioner may advertise services through written, recorded or
electronic communication, including public media.
(b) A practitioner shall not give anything of value to a person for
recommending the practitioner's services except that a practitioner
may:
(1) Pay the reasonable costs of advertisements or communications
permitted by this section;
(2) [Reserved];
(3) Pay for a law practice in accordance with Sec. 11.117; and
(4) Refer clients to another practitioner or a non-practitioner
professional pursuant to an agreement not otherwise prohibited under
the USPTO Rules of Professional Conduct that provides for the other
person to refer clients or customers to the practitioner, if:
(i) The reciprocal referral agreement is not exclusive, and
(ii) The client is informed of the existence and nature of the
agreement.
(c) Any communication made pursuant to this section shall include
the name and office address of at least one practitioner or law firm
responsible for its content.
Sec. 11.703 Direct contact with prospective clients.
(a) A practitioner shall not by in-person, live telephone or real-
time electronic contact solicit professional employment from a
prospective client when a significant motive for the practitioner's
doing so is the practitioner's pecuniary gain, unless the person
contacted:
(1) Is a practitioner; or
(2) Has a family, close personal, or prior professional
relationship with the practitioner.
(b) A practitioner shall not solicit professional employment from a
prospective client by written, recorded or electronic communication or
by in-person, telephone or real-time electronic 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 coercion, duress or harassment.
(c) Every written, recorded or electronic communication from a
practitioner soliciting professional employment from a prospective
client known to be in need of legal services in a particular matter
shall include the words ``Advertising Material'' on the outside
envelope, if any, and at the beginning and ending of any recorded or
electronic communication, unless the recipient of the communication is
a person specified in paragraphs (a)(1) or (a)(2) of this section.
(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 that 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 specialization.
(a) A practitioner may communicate the fact that the practitioner
does or does not practice in particular fields of law.
(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.
A registered practitioner who is not an attorney may use the
designation ``Patents,'' ``Patent Agent,'' ``Registered Patent Agent,''
or a substantially similar designation. Unless authorized by Sec.
11.14(b), a registered patent agent shall not hold himself or herself
out as being qualified or authorized to practice before the Office in
trademark matters or before a court.
(c) [Reserved].
(d) A practitioner shall not state or imply that a practitioner is
certified as a specialist in a particular field of law, unless:
(1) The practitioner has been certified as a specialist by an
organization that has been approved by an appropriate state authority
or that has been accredited by the American Bar Association; and
(2) The name of the certifying organization is clearly identified
in the communication.
(e) An individual granted limited recognition under Sec. 11.9 may
use the designation ``Limited Recognition.''
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 trade name may
be used by a practitioner in private practice 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) [Reserved].
(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.
Sec. 11.706-11.800 [Reserved]
Maintaining the Integrity of the Profession
Sec. 11.801 Registration, recognition and disciplinary matters.
An applicant for registration or recognition to practice before the
Office, or a practitioner in connection with an application for
registration or recognition, or a practitioner in connection with a
disciplinary or reinstatement matter, shall not:
(a) Knowingly make a false statement of material fact, or
(b) Fail to disclose a fact necessary to correct a misapprehension
known by the person to have arisen in the matter, or
(c) Knowingly fail to respond to a lawful demand or request for
information from an admissions or disciplinary authority, except that
the provisions of this section do not require disclosure of information
otherwise protected by Sec. 11.106, or
(d) Fail to cooperate with the Office of Enrollment and Discipline
in an investigation of any matter before it.
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, 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.
[[Page 64215]]
Sec. 11.803 Reporting professional misconduct.
(a) A practitioner who knows that another practitioner has
committed a violation of the USPTO 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 OED Director and any other appropriate professional
authority.
(b) A practitioner who knows that a judge, hearing officer,
administrative law judge, administrative patent judge, or
administrative trademark judge has committed a violation of applicable
rules of judicial conduct that raises a substantial question as to the
individual's fitness for office shall inform the appropriate authority.
(c) The provisions of this section do not require disclosure of
information otherwise protected by Sec. 11.106 or information gained
while participating in an approved lawyers assistance program.
Sec. 11.804 Misconduct.
It is professional misconduct for a practitioner to:
(a) Violate or attempt to violate the USPTO 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;
(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 or to achieve results by means that violate the
USPTO Rules of Professional Conduct or other law;
(f) Knowingly assist a judge, hearing officer, administrative law
judge, administrative patent judge, administrative trademark judge, or
judicial officer in conduct that is a violation of applicable rules of
judicial conduct or other law;
(g) Knowingly assist an officer or employee of the Office in
conduct that is a violation of applicable rules of conduct or other
law;
(h) Be publicly disciplined on ethical or professional misconduct
grounds by any duly constituted authority of:
(1) A State,
(2) The United States, or
(3) The country in which the practitioner resides; or
(i) Engage in other conduct that adversely reflects on the
practitioner's fitness to practice before the Office.
Sec. 11.805-11.900 [Reserved]
Sec. 11.901 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
disciplinary sanctions 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.
PART 41--PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
27. The authority citation for 37 CFR part 41 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134,
and 135.
28. Revise Sec. 41.5(c) to read as follows:
Sec. 41.5 Counsel.
* * * * *
(c) Withdrawal. Counsel may not withdraw from a proceeding before
the Board unless the Board authorizes such withdrawal. See Sec. 11.116
of this subchapter regarding conditions for withdrawal.
* * * * *
Dated: October 10, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2012-25355 Filed 10-17-12; 8:45 am]
BILLING CODE 3510-16-P
