PTO Proposes to Align Practitioner Ethics Code With ABA Rules of Professional Conduct

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  • Summary: The PTO issues a notice of proposed rulemaking to update its code of practitioner conduct using the ABA's Model Rules of Professional Conduct as a basis.

  • Due: Comments are due Dec. 17.

By Tony Dutra

The Patent and Trademark Office published a notice of proposed rulemaking Oct. 18 to replace the current PTO Code of Professional Responsibility. The proposed new Rules of Professional Conduct are based on the American Bar Association's model rules of the same name.

“This rulemaking benefits and reduces costs for most practitioners by clarifying and streamlining their professional responsibility obligations,” according to the notice. “Further, any change is not a significant deviation from rules of professional conduct for practitioners that are already required by the Office.”

“Admittedly, this move is overdue,” PTO Director David J. Kappos said in a same-day blog post. “[A]lmost the entire country has moved to update their local bar rules to conform to the newer ABA Model Rules of Professional Conduct.”

The PTO's proposal also would eliminate the annual fee for a registered attorney or agent, at 37 C.F.R. §1.21(a)(7)(i).

Comments are due Dec. 17.

Current Code Based on Old ABA Version
The PTO's current code of practice for patent and trademark practitioners--42,000 registered of whom at least 75 percent are attorneys--has been in place since 1985, while the ABA's rules have been repeatedly updated.

Versions of the ABA rules have been adopted by 49 states, excluding California, and the District of Columbia. The PTO's proposed rule revisions reflect ABA rule updates through 2011. The ABA House of Delegates approved further amendments in August, but those are not incorporated into the PTO's code. The Oct. 18 notice asked practitioners to comment on whether elements of the recent update should be included in the PTO's rules.

The proposal would replace current 37 C.F.R Parts 10 and 11, “Representation of Others Before the United States Patent and Trademark Office.” The code would be placed entirely in Part 11, in Sections 11.1 through 11.901, with numbering roughly consistent with ABA equivalents. For example, ABA Rule 4.3 corresponds to PTO Section 11.403, ABA Rule 7.4(a) corresponds to PTO Section 1.704(a), etc.

Definitions are proposed in Section 11.1. Notably, “the definition of common law fraud is based on the definition discussed by the United States Court of Appeals for the Federal Circuit,” according to the PTO, which chose that instead of the ABA definition. However, the agency would adopt the ABA's definitions of such terms as “reasonable belief” and “informed consent” while dropping definitions not in the ABA rules, such as “mandatory disciplinary rule” and “matter.”

Differences With ABA Rules
Most of the proposed rules are copies of the ABA parallels. Some differences represent merely adaptations to the PTO context. For example, ABA Rule 1.1 on competent representation of a client would be adapted in PTO Section 11.101 to add: “Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation.”

Some of the PTO's proposed rules follow ABA text and comments, but the Oct. 18 notice provides considerable detail because of the change from current PTO rules. For example, the current ethics code says little about a practitioner's recordkeeping requirements, while proposed Section 11.115(f) seeks consistency with the 15-page ABA Model Rules for Client Trust Account Records.

The PTO does not propose to add unrelated ABA rules, such as those dealing with domestic relations or criminal practice. However, in each case when it does reference those ABA rules, the office warns, “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.”

The PTO proposed to retain its current rule or adopt its own new rule rather than use the ABA parallel in a few instances, including the following:

• A comment on Section 11.105 makes clear that “[n]othing in paragraph (c) should be construed to prohibit practitioners gaining property interests in patents.” Similarly, Section 11.108(i) “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.”

  • A practitioner's duty of disclosure is a frequent addition to the corresponding PTO rule, such as in Sections 11.106(c), “Confidentiality of information”; 11.303(e), “Candor toward the tribunal”; and 11.307(a)(4), “Practitioner as a witness.”

  • Rule 11.111, regarding federal government employees who leave and enter other employment, varies from ABA Rule 1.11, saying that such an 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.”

  • In the rule on the sale of a law practice, Section 11.117(b), the PTO would require that, “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.”

  • Proposed 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.”

  • Section 11.505 would allow foreign-resident patent practitioners.


By Tony Dutra

Notice at /uploadedfiles/BNA_V2/Images/From_BNA_V1/News/ChangestoRepresentationFR64190Oct18(1).pdf

ABA/PTO rules comparison at

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