One thing I have to deal with a lot when advising lawyers — whether practitioners for prosecution matters or litigators in patent case (or other stuff) — is the difference between subject matter jurisdiction and choice of law.
First, I cannot tell you how important this issue can be. For example, under some state rules public information is confidential; it’s not under the USPTO rules. If state rules apply, I may have to ask a client for permission before I disclose a prior art patent to the Office. That sounds like a silly example, and it is, but you’d be surprised what “experts” I’ve testified against say sometimes…
So let me give a simple walk through.
Ordinarily, a state bar is going to be able to discipline a lawyer for conduct occurring in representing clients in a state even if the practice is entirely federal and even if the lawyer is not licensed in a state. So, if Bob is a patent lawyer licensed only in Minnesota and is prosecuting an application for an Iowan, the Iowa authorities (whether it’s disciplinary counsel or the court, I don’t know) are going to be able to subject him to discipline. Likewise, more obviously, the OED can discipline him.
What rules apply? The goal of modern choice of law principles in legal ethics is to make it so that one set of rules applies and we can easily figure that out. Where a matter is pending before a tribunal, the tribunal’s rules will generally apply. So, if Bob files the application and misses a deadline, the USPTO’s rule about neglect, or competence, should be applied by both the Iowa bar and the OED.
Here is the USPTO Rule on subject matter jurisdiction, which is unique to the Office, but notice how it defines its reach — to practice before the office:
All practitioners engaged in practice before the Office… are subject to the disciplinary jurisdiction of the Office….. A person not registered or recognized to practice before the Office is also subject to the disciplinary authority of the Office if the person provides or offers to provide any legal services before the Office.
“Proceeding before the Office” is itself defined: “Proceeding before the Office means an application for patent, an application for reissue, a reexamination, a protest, a public use matter, an inter partes patent matter, correction of a patent, correction of inventorship, an application to register a trademark, an inter partes trademark matter, an appeal, a petition, and any other matter that is pending before the Office.”
So, plainly Bob is involved in a proceeding before the Office and the OED could discipline him. Can the OED apply Iowa’s Rules to his conduct? Do they apply? Before we get there, let’s see if the OED could discipline Bob because Bob had violated an Iowa rule — without Iowa already having done so.
Another subsection of that same USPTO regulation in title 37 of the CFR identifies what is a basis for OED discipline:
The following, whether done individually by a practitioner or in concert with any other person or persons and whether or not done in the course of providing legal services to a client, or in a matter pending before the Office, constitute grounds for discipline or grounds for transfer to disability inactive status.
(1) Grounds for discipline include:
(i) Conviction of a serious crime;
(ii) Discipline on ethical grounds imposed in another jurisdiction or disciplinary disqualification from participating in or appearing before any Federal program or agency;
(iii) Failure to comply with any order of a Court disciplining a practitioner, or any final decision of the USPTO Director in a disciplinary matter;
(iv) Violation of any USPTO Rule of Professional Conduct; or
(v) Violation of the oath or declaration taken by the practitioner. See § 11.8.
So, unless some other agency or court has disciplined a practitioner, or one of the other specific acts has occurred, the OED has to find that a practitioner violated a USPTO Rule. So, the OED has to find that Bob violated the USPTO Rules.
Now for Iowa. (I used to speak there every year! Why haven’t they invited me back in a couple years?). Let’s do it in reverse order. What rules would Iowa apply to Bob’s conduct? Luckily, it’s the USPTO rules, as Iowa Rule 32:805(b) makes clear:
(b) Choice of Law. In any exercise of the disciplinary authority of Iowa, the rules of professional conduct to be applied shall be as follows:
(1) for conduct in connection with a matter pending before a tribunal, the rules of the jurisdiction in which the tribunal sits, unless the rules of the tribunal provide otherwise; and
(2) for any other conduct, the rules of the jurisdiction in which the lawyer’s conduct occurred or, if the predominant effect of the conduct is in a different jurisdiction, the rules of that jurisdiction shall be applied to the conduct. A lawyer shall not be subject to discipline if the lawyer’s conduct conforms to the rules of a jurisdiction in which the lawyer reasonably believes the predominant effect of the lawyer’s conduct will occur.
The USPTO is a “tribunal.” It defines itself as one! See 37 C.F.R. 11.1 (“Tribunal means the Office…”). So, the Iowa Rules won’t apply to Bob’s conduct; even if Iowa tried to discipline Bob, it would apply the USPTO Rules.
Warning: not every state has the same version of Rule 8.5, and some have weird carve outs (e.g., D.C.).
Now, if Iowa wanted to discipline Bob, does it have subject matter jurisdiction to do so? It does! Here is the rest of Iowa’s rule 8.5:
(a) Disciplinary Authority. A lawyer admitted to practice in Iowa is subject to the disciplinary authority of Iowa, regardless of where the lawyer’s conduct occurs. A lawyer not admitted in Iowa is also subject to the disciplinary authority of Iowa if the lawyer provides or offers to provide any legal services in Iowa. A lawyer may be subject to the disciplinary authority of both Iowa and another jurisdiction for the same conduct.
(Remember, Bob’s licensed only in Minnesota.) So, we end up with a nice good, predictable approach. A recent case analyzing the subject matter jurisdiction issues, but not the choice of law issue, is York v. W. Va. Office of Disciplinary Counsel, 744 S.E.2d 293 (2013). According to this opinion, (scroll down to top of page 26), in an unreported later decision, Mr. York was disciplined.
(By the way, Minnesota could also discipline Bob, and it would also apply the USPTO rules in doing so. Whew!)
Here, unless the facts are weird, Bob’s conduct would violate both Iowa and the USPTO rules, and Minnesota’s for that matter, so who cares?
Like I said at the start, there are critical differences between the USPTO rules and many state rules and often those differences tell us whether Bob keeps his license, or not. More often, choice of law becomes an issue in disqualification motions and in legal malpractice cases. Ethical rules like state bar rules and then USPTO rules are are applied in disqualification and malpractice cases. If something is ethical under the USPTO rules, but unethical under state law, choice of law may provide the answer to what’s right — whether a client has a malpractice claim, or a lawyer is subject to disqualification.
Where it gets even more interesting is if the conduct occurs before the application is filed, and so there is no matter before a tribunal (yet). Some choice of law rules state that that apply to matters that going to be before a tribunal, but many don’t. Others say that the cover only the lawyer who appears before the tribunal, so what about a lawyer who does work in the office on an application but whose name doesn’t appear on the filing? What rules apply? What if it’s an assignment that’s incompetently drafted (probably won’t matter but you see my point)? What if…
Finally, if state law somehow does apply to conduct before the office, then it may be that a preemption analysis is required, because the USPTO rules do narrowly preempt state law to the contrary.