USPTO Publishes Final Rules Adopting the New USPTO Rules of Professional Conduct

by McDonnell Boehnen Hulbert & Berghoff LLP
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The United States Patent and Trademark Office (“USPTO”) published its final rules in the April 3, 2013 Federal Register in preparation for adopting the new USPTO Rules of Professional Conduct (“USPTO Rules”). These new rules seek to conform the ethical obligations for representing others before the USPTO to the ABA Model Rules of Professional Conduct, which have been adopted in some form by every state (except California) and the District of Columbia. This is significant for any patent practitioner that has a USPTO registration number. On the one hand, these updated USPTO rules are welcome news for attorney practitioners, because currently such individuals are required to know and abide by the ethics rules of the state or jurisdiction in which they practice. Because the USPTO had been operating under the Patent and Trademark Office Code of Professional Conduct, which was based on the former ABA Model Code from 1980, patent attorneys were required to maintain adherence to two different sets of ethical obligations. On the other hand, non-lawyer patent practitioners (patent agents) will now be subject to these new rules, even though they may not be aware of the differences and subtleties of the ABA Model Rules. It will be important for these individuals to become accustomed to these new USPTO Rules, especially where they differ from the previous Patent Office Code.

Confidentiality of Information -

One of the most significant changes in the new USPTO Rules relates to the handling of a client’s confidential information. New rule § 11.106, which is based on ABA Model Rule 1.6, states that a practitioner shall not reveal a client’s confidential information without informed consent, implied authorization, or permission under the rules. Both the new USPTO Rules and the ABA Model Rules include circumstances in which a practitioner “may” reveal such confidence, such as disclosing information that may prevent death, bodily harm, or fraud. It is important to note, however, that even in the cases where death, bodily harm, or fraud may result, the practitioner is still not required to reveal such information, but rather has permission to do so. The new USPTO Rules diverge from the ABA Model Rules in one important respect: the new USPTO Rules at § 11.106(c) includes a type of information that is mandatory to reveal: “A practitioner shall disclose to the Office information necessary to comply with applicable duty of disclosure provisions.” In other words, under this proposed rule, a finding that relevant information was intentionally withheld by a practitioner involved in the prosecution of an application will not only subject a patent to becoming unenforceable, it will result in an ethical violation by the practitioner.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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