Changes to the Rules of Ethics for Patent Law Practitioners

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.

Federal Register Notice [PDF]

Key changes:

  • 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.

27 thoughts on “Changes to the Rules of Ethics for Patent Law Practitioners

  1. 3

    Today the PTO announced it’s going ahead with a “voluntary” CLE certification program beginning next year. Not expecting Dennis to report on this, let alone to appreciate that the announcement, which lists Drew Hirshfeld’s name at the bottom, is an example of subterfuge dressed in bureaucratese. The PTO didn’t go through proper rulemaking and doesn’t have approval from OMB to proceed with this, even though this constitutes a “request for information” under the Paperwork Reduction Act and therefore requires OMB approval.

    link to federalregister.gov

    1. 3.1

      Hirshfeld is not what we need.

      This doesn’t sound good at all.

  2. 2

    “… only if the revealed information would not compromise the practitioner-client privilege or otherwise prejudice the client.”

    1) According to whom? If it’s ‘the client,’ then how is this different than informed consent?

    2) Is prep/pros protected by attorney-client privilege? If not, isn’t this “only if” a bit illusory?

    1. 2.1

      OC,

      I have to view prep/pros as must be protected by attorney-client privilege.

      Mind you, this is the conversations about how (and why) certain actions (or lack thereof) are contemplated, and NOT the actual exchanges that are captured on the public record.

      1. 2.1.1

        I haven’t researched it forever, but I thought it wasn’t technically “legal advice.” Thus, patent agents could do prep/pros and litigation defendants can subpoena your files to fish for inequitable conduct.

        1. 2.1.1.1

          I hear you – and recall something similar, although (IIRC) an impetus in a case (Texas?) was MORE on the aspect of the person being an agent and NOT an attorney, and thus the lack of the person being designated ‘attorney’ was the driver and NOT the subject matter of the discussion.

          If I also recall, I thought that such was a direct conflict with the Supreme Court case dealing with an agent in Florida.

          Sorry, but I do not have those items handy, but this may be more unsettled/in conflict than I thought it should be – but more from the “actor” standpoint and less so from the subject matter standpoint.

            1. 2.1.1.1.1.1

              Thank you PiKa!

  3. 1

    Most patent attorneys are doing a good job explaining that a patent does not protect your invention under eBay, Alice, and AIA. In particular the patent grant on the face of the patent itself fraudulently grants the “right to exclude others from making, using, offering for sale, or selling the invention”. Many are explaining to their clients that if they every try to use their patent the USPTO will likely revoke it.

    Some attorneys are behind the times though, taking money from gullible inventors in exchange for a sham product.

    Since OED does not require this sort of disclosure, we offer a directory for inventors to review patent attorneys performance at the PTAB. See link to usinventor.org

    There are a handful of niche firms with >50% success at PTAB. Those with broad experience peg out in the 30% success range.

    Point being, it is borderline unethical to take money from an inventor or small operating company for patents they cannot use. Patents are for big corporations, not inventors.

    1. 1.1

      While I “get” the frustration, your speech here is exactly the message that the Efficient Infringers want to be out there: “Don’t bother — this is our land.”

      Are you sure that you want to be doing the advertising work of the Efficient Infringers?

      1. 1.1.1

        Shush anon.

        1. 1.1.1.1

          Lol – shush yourself.

          Or, in the alternative, try at least to grunt something intelligible.

    2. 1.2

      Thanks Josh — important law firm information indeed.

      “Patents are for big corporations, not inventors.”

      For sure that.

    3. 1.3

      The website feels like it has the analytical rigor of a high school sophomore English project.

      1. 1.3.1

        Ordinary has the feel of a disingenuous n i t w i t.

        1. 1.3.1.1

          … has that lemming scent.

      2. 1.3.2

        Like PTAB decisions?

        Seriously, let me know if you find any errors or omissions.

        1. 1.3.2.1

          It all looked right to me Josh. Great website!

          Ordinary is complaining that you don’t have a website stylist to spruce it up to look like the New York Times.

          As is typical, the anti-patent crowd will do anything to avoid a substantive discussion.

        2. 1.3.2.2

          Josh – not an error or omission to report, but a couple of questions likely based on user error on my end: Does the list or its underlying data account for IPR proceedings where some challenged claims fall but some survive? And does it track through subsequent history (i.e., reversals one way or the other on appeal)? In terms of the percentage reported, how does it treat situations where a petition is filed but proceedings are not instituted (with a substantive determination)?

          Admittedly, I’d be particularly interested in being able to identify (and select) firms that have had demonstrated success with either or both of (a) securing broad coverage in independent claims while building in strategically useful fall-back positions in dependent claims and (b) hardening an application file so it is in a position to brush off a challenger’s best shot at the petition stage.

          1. 1.3.2.2.1

            I believe it just bins the results as valid/invalid where if any claims are invalidated the patent is considered defective/invalid.

            I don’t know about reversals, I suspect it does not account for those.

            I believe non-institution counts as a null result, as petitions are denied for a number of reasons other than merits and there is no estoppel. A petition that is denied provides little to no information about the reliability of the patent.

            No firm can do what you seek. If your patent is valuable and reads on the technology of a big USPTO customer like Google or Apple, it will be deemed “obvious” regardless of the scope or prior art. The PTAB is not pruning the mistakenly issued claims, they are obliterating the best ones.

            I hope that our report will motivate the patent bar to take the USPTO/PTAB corruption seriously. I know that they have to put food on their own tables and send their own kids to college, but selling their souls is not the way to do it. If they cannot warrant their patents then they must join us in exposing this corruption or get a new career. Many have. Many others think they can bury their heads in the sand or even profit by participating in the corruption.

        3. 1.3.2.3

          Maybe I missed it. The biggest omission seems to be any context, nuance, or analysis of the patents involve. The data, as presented, doesn’t really have much meaning. It does not seem that any justifiable conclusion can be reached from the data presented.

          What is the particular art field like?
          What was the quality of the original examination?
          What were the client’s original goals and/or instructions? What were the prosecution budgets?
          Is it in a particularly litigious field? Is there is is more money being put towards invalidation that there every was towards prosecution?
          How many granted patents is the firm responsible for? What percentage of them get invalidated?

          This is just a sample list I came up in the moment.

          1. 1.3.2.3.1

            I am not tracking at all. You think patent attorneys might be justified in procuring invalid patents for their clients based on these factors??? Or in certain cases (like most patents that are infringed…) it is acceptable performance to obtain a patent with claims that cannot withstand a third party challenge?

            1. 1.3.2.3.1.1

              Your premise is flawed for at least (a) assigning the entirety of the blame for invalidated patents on the attorneys, especially when sophisticated/aggressive patentees are involved, (b) you weirdly seems to attribute some sort of intent by the patent attorneys that is not supported by your analysis, (c) you are using hindsight bias to judge these outcomes when you make no effort to understand the environment in which the patent was prosecuted, (d) you fail to consider the incentives involved in both procuring patent and invalidating it, including resources clients authorize to put into a prefilling investigation, and (e) you do no know of the edge cases where the line between valid and invalid is close (the examiner went one way, the PTAB went the other) (you do not know how informed the client was in those cases).

              That is to say, in blunt terms, that the analysis presented on the website is not legitimate. It does not support the conclusion you are drawing.

              1. 1.3.2.3.1.1.1

                The burden is yours. Pick one of the 2,500 patents and explain why your factors should exonerate the prosecution attorney.

                1. You’re the one making the extraordinary claim. The burden is yours to show malfeasance by the prosecution attorney.

    4. 1.4

      Imagine the Man Who Fell to Earth in today’s patent world. He’d be labeled a troll and all his patents would be invalidated under 101 or 103.

      1. 1.4.1

        Or maybe invalidated because he wasn’t the actually inventor.

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