by Dennis Crouch
The professional conduct of US patent attorneys and agents are governed by the rules regarding “Representation of Others before the United States Patent and Trademark Office” found in the Code of Federal Regulations, Title 37, Part 11. 37 CFR 11.1 – 11.901. Patent attorneys are also regulated by the rules of professional conduct of their home states. Although there are some patent specific differences, the USPTO has been shifting its rules to be more in line with the ABA’s Model Rules of Professional Conduct that have been adopted, at least in part, by all fifty states.
In 2020, the USPTO proposed a number of changes to its rules to better align them with the ABA Model Rules. Recently, the agency finalized those proposals (with minor changes) to be effective June 25, 2021.
- Section 11.106(b)(7): New provision permits the disclosure of client information “to the extent the practitioner reasonably believes necessary . . . (7) To detect and resolve conflicts of interest arising from the practitioner’s change of employment or from changes in the composition or ownership of a firm, but only if the revealed information would not compromise the practitioner-client privilege or otherwise prejudice the client.”
- Section 11.106(d): New provision that practitioners “shall make reasonable efforts to prevent the inadvertent or unauthorized disclosure of, or unauthorized access to, information relating to the representation of a client.”
- Section 11.118: The amendment here focuses on prospective clients, and changes the rule from someone who “discusses” becoming a client to someone who “consults” with the practitioner about the possibility of forming a client-practitioner relationship. This is generally thought to narrow the definition.
- Section 11.702: This provision focuses on attorney advertising. The changes conform more closely with the new ABA rules. I’ve compared the old and new below. The main changes here:
- Advertising can include “contact information” rather than “office address.” The notes indicate that this might be a website or email address, although I don’t see a website as necessarily being “contact information.”
- Nominal gifts will now be expressly permitted to someone who refers clients to you, so long as they are “neither intended nor reasonably expected to be a form of compensation.”
- Certified as a Specialist: The rules limit a practitioner’s ability to state or imply that he or she is “certified as a specialist in a particular field of law.” It is not clear to me that “patent law” would count here, but I’m going to speak with OED to make sure.
- Section 11.703 makes some changes to the meaning of “solicitation” and when it is appropriate. Importantly, prohibited solicitation is now expanded beyond “prospective clients.”
Other changes are included as well.