This is interesting. The new USPTO Rules permit (but do not require) a lawyer to disclose confidences to the PTO “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 lawyer’s services.” 37 C.F.R. 11.106(b)(3). (Subsection (c) of that rule imposes a mandatory obligation to disclose when needed to comply with inequitable conduct law.)
So, suppose after issuance Client tells you he had engaged in acts that, had the PTO known, would have barred the claim. Result?
Assume representation is over. (The PTO, by the way, has taken the position that withdrawal, even noisy withdrawal, is not enough if the representation is on-going, but at other times, they’ve said the opposite.)
Under Rule 56, there is no continuing obligation, but under the new ethical rule, there is permissive right to disclose.
Won’t that essentially become mandatory in practical effect?
Well, David, the PTO should not put an attorney into a position where to comply with the PTO rules he has to violate the rules of all attorneys as specified by his own state, and/or by the ABA rules that most states have adopted.
In other words, I would hope that the PTO exercises some common sense.
I agree, but they sometimes do take those positions. I’m updating our book now, and there are some wild things brewing out there.
As for common sense, sometimes I’ve found the OED quite reasonable; at other times, not so much. They have a REALLY broad view of what is “practice before the Office,” which creates a lot of the real tension between PTO and state rules, too!
I’m reading Moatz’s article — link down below — and he addresses this stuff in an interesting way.
No link that I can see.
Earlier post about 1.56 and all, not this thread
“They have a REALLY broad view of what is “practice before the Office,””
Agreed – your earlier post on this with the Office slideshow was illuminating.
Under Rule 56, there is no continuing obligation, but under the new ethical rule, there is permissive right to disclose.
Won’t that essentially become mandatory in practical effect?
Hmmm, a permissive right to disclose versus a mandatory obligation to maintain client confidences. I’m pretty sure which way I’m leaning on this one…
Well, if it’s permissive, your client can’t sue you if you elect to disclose. If it’s permissive and you choose not to… let’s count the plaintiffs.
If it’s permissive and you choose not to… let’s count the plaintiffs.
OK. You start, though, because I don’t see a scenario where somebody has a cause of action against an attorney for his/her failure to disclose confidential information from a former client representation. To be liable to somebody, I usually have to commit an intentional tort against that person or breach some duty to that person. I don’t see how that arises here. Can you set up a scenario for us?
David, I think the obligation of an attorney who becomes aware of his client’s fraud on the patent office is to obtain the clients permission to disclose that the patent office/and/or withdraw from representation. There is a Supreme Court case on this point, one of the early cases discussing the duty of candor, where the Supreme Court cited with approval the withdrawal of the attorney representing a party who misrepresented material facts in an interference.
I think state laws are consistent that the duty to the client is superior to the duty to the court such that if it becomes aware that the client has been lying, he has to disclose that to the court, but with the permission of the client, or he has to withdraw from representation.
If the duties of a lawyer are different, I certainly would like to the know this, because I think an obligation to disclose information to a court or to the patent office adverse to a client severely undermines the attorney-client privilege.
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