Supplement: Changes to Representation of Others Before The United States Patent and Trademark Office
The United States Patent and Trademark Office (Office or USPTO) is adopting the new USPTO Rules of Professional Conduct (USPTO Rules), which are based on the American Bar Association’s (ABA) Model Rules of Professional Conduct (ABA Model Rules).
- The Office has also revised the existing procedural rules governing disciplinary investigations and proceedings.
Date:
Effective Date: May 3, 2013.
Summary:
The Office governs ‘‘the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office.’’
The Office 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 established regulations.’’
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.
By adopting professional conduct rules consistent with the ABA Model Rules and the professional responsibility rules of 50 U.S. jurisdictions, the USPTO is providing attorneys with consistent professional conduct standards, and large bodies of both case law and opinions written by disciplinary authorities that have adopted the ABA Model Rules.
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.
- Attorneys who appear before the Office in non-patent matters are subject to these rules as well.
A body of precedent specific to practice before the USPTO will develop as disciplinary matters brought under the USPTO Rules progress through the USPTO and the federal courts.
- In the absence of USPTO-specific precedent, practitioners may refer to various sources for useful information.
- For example, precedent based on the USPTO Code will assist interpretation of professional conduct standards under the USPTO Rules.
- The USPTO Rules fundamentally carry forward the existing and familiar requirements of the USPTO Code.
- A practitioner also may refer to the Comments and Annotations to the ABA Model Rules, as amended through August 2012, for useful information as to how to interpret the equivalent USPTO Rules.
Additionally, relevant information may be provided by opinions issued by State bars and disciplinary decisions based on similar professional conduct rules in the States.
- Such decisions and opinions are not binding precedent relative to USPTO Rules, but may provide useful tools 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.
- The USPTO is 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, these changes are not a significant deviation from the professional responsibility rules for practitioners that are already required by the Office.
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 USPTO Rules).
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.
- Attorneys who practice before the Office are subject to professional conduct rules established by the Office as well as the appropriate State bars.
