Back in 1985, when the PTO was for the first time going to adopt ethics rules specific to prosecution, a lot of people wrote comments concerned that the PTO was going to try to regulate practice beyond that before the Office. In response, the PTO did several things, all of which made it clear that it was not seeking to regulate practice not before the Office and to eliminate any doubt to the contrary.
First, it adopted 37 CFR 10.1. In part, that provision states: “This part governs solely the practice of patent, trademark, and other law before the Patent and Trademark Office.”
Second, in response to concerns that it was trying to regulate conduct not before the Office it said (several times, but here are two):
- “The PTO’s intent to regulate only conduct related or relevant to practice before the PTO.”
- “The preamble of § 10.1 indicates that Subpart 10 governs solely the practice of patent, trademark, and other law before the PTO.”
Third, in response to (many, many) comments saying “you should put ‘with respect to practice before the Office’ in specific rules,” that the PTO didn’t need to do so in light of its addition of 10.1.
So, it was clear that the PTO did not intend to regulate, and was not intending to regulate, conduct not before the Office. The PTO made that abundantly clear (I could put up a string cite of similar quotes from the notice & comment to the 1985 rules’ adoption.)
In recent speeches by OED Director Covey, he took this position: “Practitioners are subject to discipline for not complying with USPTO regulations, regardless of whether their conduct was related to practice before the Office.” (Copies of these slides are here.)
I know that the OED has taken an extremely broad view of its jurisdiction. The slides themselves point to some cases. (Note: I’m not talking about reciprocal discipline — e.g., Texas disbars me; the PTO can, too. I’m talking about a practitioner who does something in federal court, say, and he gets sanctioned; the PTO can discipline that lawyer for that. This has zero to do with reciprocal discipline and the protections afforded by states in disciplinary proceedings.)
Someone help me reconcile these two positions. No statute changed between 1985 and 2014, so you don’t get an easy answer.