USPTO Code of Professional Respo

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					 USPTO Code of Professional
  Responsibility and the New
Rules Governing Representation
 of Others before the USPTO

                 Steve Ritchey

 Thanks to H. Moatz of the USPTO OED some of whose
     slides we‟ve taken the liberty of using herein.
  Available at

                                     T H OMPSON C O BU RN   LLP
               Statutory Basis
   The Director may establish regulations, not
    inconsistent with law, which- …. (D) may govern
    the … conduct of agents, attorneys, or other
    persons representing applicants or other parties
    before the Office….” 35 USC § 2(b)(2)(D).
   It should be kept in mind that the Disciplinary
    rules are the mandatory minimum levels of
    conduct. The Canons express the standards of
    conduct expected from practitioners (e.g., §
    10.21 Canon 1. A practitioner should assist in
    maintaining the integrity and competence of the
    legal profession.).
                                 T H OMPSON C O BU RN   LLP
           Complaint Contents
 Provide the name of the practitioner.
 Provide a plain and concise statement of
  the alleged violations.
 Identify the time and place for filing the
 State that a default judgment may be
  entered if an answer is not timely filed.

                            T H OMPSON C O BU RN   LLP
 State facts that constitute grounds of
 Specifically admit or deny each allegation
  set forth in the complaint.
 State affirmatively special matters of
  defense including disability as a mitigating
 Any allegation that is not denied is
  deemed admitted.
                            T H OMPSON C O BU RN   LLP
   No Discovery except upon Motion. 37 CFR §
   Upon Showing by Clear and Convincing Evidence
    that Discovery is Necessary and Relevant,
    Hearing Officer May Order:
    – Answers to Reasonable Number of Requests for
      Admission or Interrogatories. 37 CFR § 11.52(a)(1).
    – Production of Reasonable Number of Documents and
      Things (37 CFR § 11.52(a)(2)and (a)(3)).
   Prohibited in Certain Circumstances, e.g.,
    Privileged Information, Used solely for
    impeachment, Experts. 37 CFR § 11.52(b).
                                    T H OMPSON C O BU RN   LLP
What is new in the Disciplinary Rules?

                       T H OMPSON C O BU RN   LLP
       Disability Inactive Status
   The USPTO Director may transfer a
    practitioner to disability inactive status
    where grounds exist to believe the
    practitioner has been transferred to
    disability inactive status in another
    jurisdiction, has been judicially declared
    incompetent, or has been involuntarily
    committed after a hearing. 37 CFR
                               T H OMPSON C O BU RN   LLP
             Interim Suspension
   Practitioners must notify OED Director in writing
    within 30 days of conviction of any crime.
   OED Director determines whether the crime is a
    “serious crime.”
     – Serious crime is a felony or any crime
        involving false swearing, misrepresentation,
        bribery, theft, etc.
   If a serious crime, then the OED Director shall
    file proof of the conviction and hearing request
    with the USPTO Director.
   Hearing on interim suspension heard by USPTO
                                  T H OMPSON C O BU RN   LLP
            Reciprocal Discipline
   Practitioner must notify OED within 30 days of
    being disbarred or suspended by another
    jurisdiction, or being disciplinarily disqualified
    from participating in or appearing before any
    Federal program or agency.
   The OED Director shall obtain a certified copy of
    the record from jurisdiction/agency and file it
    and a complaint with the USPTO Director.
   The USPTO Director hears the matter based on
    the evidence of record unless the USPTO
    Director determines that an oral hearing is
    necessary. 37 CFR § 11.24.

                                  T H OMPSON C O BU RN   LLP
 A Practitioner may move for a disciplinary
  hearing to be held in abeyance upon a
  finding that a practitioner is “suffering
  from a disability or addiction that makes it
  impossible for the practitioner to
  adequately defend the charges.” 37 CFR
 Practitioner transferred to disability
  inactive status.

                            T H OMPSON C O BU RN   LLP
Conduct Leading to OED Investigation

 Neglect.
 Lack  of Candor.
   –Giving false or misleading
    information to client or USPTO.
 Failure of practitioner to make
  reasonable inquiry.

                        T H OMPSON C O BU RN   LLP
   Failure or Delay in Filing Application.
   Failure to Reply to Office Action
    – Refused to reply because client had not paid fees
    – Repeated failure.
   Misuse of Certificate of Mailing.
   Failure to Pay Issue Fee.
   Failure to Revive or Assist in Reviving Abandoned
   Failure to Turn over Files to New Representative.
   Insufficient or Missing Funds.
   Failure to Communicate with Client.
   Drafting Claims that read on Prior Art cited by individuals
    associated with preparing or prosecuting application.
                                           T H OMPSON C O BU RN   LLP
             Lack of Candor
 Lack of Candor to Clients.
 Lack of Candor to USPTO.

                           T H OMPSON C O BU RN   LLP
    Duty to Make Reasonable Inquiry
37 CFR 11.18(b) requires
 all filings carry with them the certification of the
  person signing the filing that any statement
  therein does not “cover up by any trick, scheme
  or device a material fact.”
 person filing a paper to have made the
  judgment that the paper is not interposed for
  improper purpose “after an inquiry reasonable
  under the circumstances.”
 This provision generally parallels Rule 11 of the
  Federal Rules of Civil Procedure, which also
  requires that papers not be interposed for
  improper purpose “after an inquiry reasonable in
  the circumstances.”
                                 T H OMPSON C O BU RN   LLP
    Duty to Make Reasonable Inquiry (cont.)
   Rule 11.18(b) also requires that papers not be
    presented for improper purpose and the claims
    are warranted under existing law or nonfrivolous
    argument for change. It imposes a duty of
    reasonably inquiry under the circumstances.
   Practitioner must read each paper in its entirety
    before submission to the PTO, regardless of the
    source of the paper.
   Does this require practitioner to read the
    entirety of each reference submitted in an IDS?

                                 T H OMPSON C O BU RN   LLP
Examples of conduct that may potentially be
  perceived as failure of the practitioner to
       make a reasonable inquiry:
   Filing an application with claims that are
    anticipated by at least one publication authored
    by one of the inventors executing the 37 CFR §
    1.63 declaration or oath.
   Burying a reference material to patentability
    among a large number of cumulative references.
   Filing an application with one or more claims
    unpatentable over a combination of prior art
    references cited by applicant in the specification.
   Reasonable inquiry can be shown.

                                 T H OMPSON C O BU RN   LLP
                PTO Disciplinary Cases
   Mostly for disbarments or crimes committed by the practitioner, not
    for specific actions before the PTO.
   53 cases from Jan „03 to Jan „09
     – 5 cases for failure to communicate with client
           Office actions, returning calls
     – 5 cases for failure to respond to Office Actions
           Often resulting in unwanted abandonment of application
     – 4 cases arguably directed to lack of candor before PTO
           False statements on PTO Forms
           False statements about intention to file PCT application
           Fabrication of demonstrative in an interference and not being
            candid about the facts
           Fabricating letters of recommendation
   Penalty was exclusion or suspension
                                             T H OMPSON C O BU RN   LLP
Other New Practice Rules

               T H OMPSON C O BU RN   LLP
      PTO Forms - 37 CFR § 1.4(d)(3)
 Use of PTO forms for purposes for which they were not
  designed is prohibited.
 No changes to certification statements on the Office forms
  (e.g., oath or declaration forms, terminal disclaimer forms,
  petition forms, and nonpublication request forms) may be
 The existing text of a form, other than a certification
  statement, may be modified, deleted, or added to, if all text
  identifying the form as an Office form is removed.
 The presentation to the Office (whether by signing, filing,
  submitting, or later advocating) of any Office form with text
  identifying the form as an Office form by a party, whether a
  practitioner or non-practitioner, constitutes a certification
  under § 11.18(b) of this chapter that the existing text and any
  certification statements on the form have not been altered
  other than permitted by EFS-Web customization.

                                        T H OMPSON C O BU RN   LLP
    Can a Patent Agent Draft an Assignment?
   Yes, practice before the USPTO may include:

    Drafting an assignment or causing an
    assignment to be executed for the patent owner
    in contemplation of filing or prosecution of a
    patent application for the patent owner, where
    the practitioner represents the patent owner
    after a patent issues in a proceeding before the
    Office, and when drafting the assignment the
    practitioner does no more than replicate the
    terms of a previously existing oral or written
    obligation of assignment from one person or
    party to another person or party. 37 CFR § 11.5
                                 T H OMPSON C O BU RN   LLP
Must a Patent Agent Advise a Client
 on Other Forms of IP Protection?
   Yes, practice may include:
     Considering the advisability of relying upon
     alternative forms of protection which may be
     available under state law. 37 CFR 11.5(b)(1
     (ii). See Sperry v. State of Florida ex rel
     Florida Bar, 373 U.S. 379 (1963).
Agents should advise client to refer to
 statutes and suggest consulting with
                               T H OMPSON C O BU RN   LLP
    Can a Patent Agent Render a
          Validity Opinion?
 Yes.
 Provided the opinion is rendered incident
  to practice before the Office (e.g., if client
  is contemplating filing a request for

                              T H OMPSON C O BU RN   LLP
    Can a Patent Agent Render an
     Opinion on Infringement or
         Prepare a License?

 No.
 Neither is incident to practice before the

                            T H OMPSON C O BU RN   LLP
      Annual Practitioner Maintenance Fee
              37 C.F.R. § 11.8(d)
   In Fall 2009, practitioners must pay an annual
    practitioner maintenance fee.
   Fee for active status is $118.
   Fee “will recover the estimated average costs to the
    Office for the roster maintenance process, including the
    costs of operating the disciplinary system.”
   Office will be sending notices to all registered
   If fee not paid by deadline, OED will send noncompliance
    notice that allows for payment of fee plus delinquency
    fee of $50 within 60 days. If that deadline is missed,
    practitioner will be administratively suspended.

                                     T H OMPSON C O BU RN   LLP
    Updating Practitioner Contact
 Practitioner must notify OED of changes to
  contact information within 30 days.
  Failing to do so may subject practitioner to
 On-line Customer Interface to launch this
  year so that practitioners can update their
  information. PTO is to send practitioners
  a username and password.

                            T H OMPSON C O BU RN   LLP
     Continuing Education for Practitioners
   The PTO is still advancing this program, which
    will require practitioners to complete an
    “Eligible” program every 1-3 years.
   Eligible programs will be available from the
    Office (via web) and will contain questions that
    must be answered or a Pre-Approved Sponsor,
    which cannot be law firms or corporate legal
   PTO completed a pilot program in September
    2008 with three courses: (1) Examination
    Guidelines Following KSR; (2) Common Errors in
    Petition Practice; and (3) Electronic Signatures
    and Powers of Attorney.
                                 T H OMPSON C O BU RN   LLP
                 Conclusion to be Drawn

                 “Be careful out there”*

*Sergeant Phil Esterhaus - Hill Street Blues

                                               T H OMPSON C O BU RN   LLP

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