The United States Patent and Trademark Office (USPTO) announced earlier today that effective May 3, 2013, it will update the USPTO Rules of Professional Conduct that govern practitioners who practice before the USPTO. These new USPTO ethics rules are based on the American Bar Association’s Model Rules of Professional Conduct, which were published in 1983, substantially revised in 2003 and updated through 2012.
The Federal Register Notice explains that currently there are approximately 41,000 registered patent practitioners, with at least 75% of the roster of patent practitioners being attorneys who are admitted in one or more States. Given that the ABA Model Rules have been adopted by 49 states and the District of Columbia, nearly all of the attorneys registered to practice at the USPTO are already professionally governed by ethics rules modeled from the ABA Model Rules of Professional Conduct. Thus, this change should not be considered to be a substantive change to the rules that apply to patent attorneys.Indeed, the Federal Register Notice explains that this USPTO efforts “benefits and reduces costs for most practitioners by clarifying and streamlining their professional responsibility obligations.” Of course, for those who are patent agents, however, the rules will be different.
While these new ethics rules will be familiar to most patent attorneys, the USPTO did decline to follow certain provisions of the ABA Model Rules that are inapplicable to patent practice. For example, the ABA Model Rules set forth specific provisions concerning domestic relations or criminal practice that do not appear in the USPTO Rules. However, practitioners were reminded practitioners that they are subject to the rules that apply within the States where they are admitted and are still responsible for following State ethics rules. The USPTO further reminded practitioners that just because something was not included in the USPTO ethics rules does not mean that a violation could lead to reciprocal discipline at the USPTO.
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Of particular note, this rulemaking eliminated the annual practitioner maintenance fee, which has been perpetually held in abeyance ever since it went into effect.
Perhaps of additional note is the change to the rules relating to maintaining client confidential information. Previously the rule that governed client confidentiality was 37 CFR 10.57, which I always preferred over the Model Rule because it is more straight forward and self contained, thereby making it easier to understand for new inventors or otherwise not intimately familiar with the industry and attorney-client confidentiality. What I always found useful in particular was Rule 10.57(a), which defined “confidence” and “secret.”
Rule 10.57 is as follows:
(a) “Confidence” refers to information protected by the attorney-client or agent-client privilege under applicable law. “Secret” refers to other information gained in the professional relationship that the client has requested be held inviolate or the disclosure of which would be embarrassing or would be likely to be detrimental to the client.
(b) Except when permitted under paragraph (c) of this section, a practitioner shall not knowingly:
(1) Reveal a confidence or secret of a client.
(2) Use a confidence or secret of a client to the disadvantage of the client.
(3) Use a confidence or secret of a client for the advantage of the practitioner or of a third person, unless the client consents after full disclosure.
(c) A practitioner may reveal:
(1) Confidences or secrets with the consent of the client affected but only after a full disclosure to the client.
(2) Confidences or secrets when permitted under Disciplinary Rules or required by law or court order.
(3) The intention of a client to commit a crime and the information necessary to prevent the crime.
(4) Confidences or secrets necessary to establish or collect the practitioner’s fee or to defend the practitioner or the practitioner’s employees or associates against an accusation of wrongful conduct.
(d) A practitioner shall exercise reasonable care to prevent the practitioner’s employees, associates, and others whose services are utilized by the practitioner from disclosing or using confidences or secrets of a client, except that a practitioner may reveal the information allowed by paragraph (c) of this section through an employee.
The new rule that applies to confidentiality of information will be Rule 11.106, which is as follows:
(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 engaging in inequitable conduct before the Office or from committing a crime or fraud 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.
I understand that my preference for Rule 10.57 over the soon-to-be Rule 11.106 is minor, and substantively insignificant. I just think Rule 10.57 explained the confidentiality obligation better for the uninitiated.
This rulemaking effort is the first major update of the USPTO’s professional conduct rules since 1985.