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USPTO Proposes Changes To Rules Of Professional Responsibility, Elevates Duty Of Disclosure Over Client Confidentiality

Posted in Duty of Disclosure; Patent Office Practice; USPTO Proposed Rule Changes

In a Federal Register Notice published October 18, 2012, the USPTO announced proposed changes to its rules of professional responsibility that would replace the current rules with rules based on the ABA Model Rules of Professional Conduct, with some modifications. While most of the proposed rules are familiar, a few appear to elevate the duty of disclosure over client confidentiality obligations in ways that may conflict with some state bar rules of professional responsibility. The USPTO will consider written comments received by December 17, 2012.

Statutory Background

The USPTO has authority to regulate the “conduct of agents, attorneys, or other persons representing applicants or other parties before the Office,” pursuant to 35 USC § 2(b)(2)(D). The USPTO may suspend or exclude from practice before the Office any practitioner who “is shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 2(b)(2)(D) of this title,” under 35 USC § 32. The USPTO’s current Code of Professional Conduct is set forth in 37 CFR §§ 10.20-10.112. According to the Federal Register Notice, “[t]hese rules have been in place since 1985 and are based on the ABA Model Code of Professional Responsibility.”

The ABA Model Rules of Professional Conduct

As discussed in the Federal Register Notice, most state bars have adopted disciplinary rules that are based on the newer ABA Model Rules of Professional Conduct. Thus, the USPTO proposes to “moderniz[e]” and “harmoniz[e]” its rules with the ABA Model Rules of Professional Conduct, while still “addressing circumstances particular to practice before the Office.” The Federal Register Notice notes that the proposed rules do not incorporate revisions approved by the ABA House of Delegates in August of 2012, because “the states have not adopted those changes at this time.” Nevertheless. the USPTO solicits comments as to “whether those changes should be incorporated into the USPTO Rules of Professional Conduct.”

The Federal Register Notice notes that the proposed changes will make available more guidance, such as from “opinions issued by State bars and disciplinary decisions based on similar professional conduct rules in the States” and the “Comments and Annotations to the ABA Model Rules of Professional Conduct,” but also states that current “binding USPTO-specific precedent” will remain relevant.

Confidentiality Versus Duty of Disclosure

There are a number of important differences in the proposed rules, but the ones that caught my attention first relate to the tension between confidentiality obligations and the duty of disclosure. The proposed rules seem to go further than the current rules by elevating compliance with the duty of disclosure over client confidentiality.

The current rule provides as follows:

37 CFR § 10.57 Preservation of confidences and secrets of a client.
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(b) Except when permitted under paragraph (c) of this section, a practitioner shall not knowingly:
(1) Reveal a confidence or secret of a client.
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(c) A practitioner may reveal:
(1) Confidences or secrets with the consent of the client affected but only after a full disclosure to the client.
(2) Confidences or secrets when permitted under Disciplinary Rules or required by law or court order.
(3) The intention of a client to commit a crime and the information necessary to prevent the crime.
(4) Confidences or secrets necessary to establish or collect the practitioner’s fee or to defend the practitioner or the practitioner’s employees or associates against an accusation of wrongful conduct.
(d) A practitioner shall exercise reasonable care to prevent the practitioner’s employees, associates, and others whose services are utilized by the practitioner from disclosing or using confidences or secrets of a client, except that a practitioner may reveal the information allowed by paragraph (c) of this section through an employee.

In contrast the proposed rules provide:

37 CFR § 11.106 Confidentiality of information.
(a) A practitioner shall not reveal information relating to the representation of a client unless the client gives informed consent, the disclosure is impliedly authorized in order to carry out the representation, the disclosure is permitted by paragraph (b) of this section, or the disclosure is required by paragraph (c) of this section.
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(c) A practitioner shall disclose to the Office information necessary to comply with applicable duty of disclosure provisions.

37 CFR § 11.108 Conflict of interest: Current clients: Specific rules.
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(b) A practitioner shall not use information relating to representation of a client to the disadvantage of the client unless the client gives informed consent, except as permitted or required by the USPTO Rules of Professional Conduct.
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Sec. 11.109 Duties to former clients.
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(c) A practitioner who has formerly represented a client in a matter or whose present or former firm has formerly represented a client in a matter shall not thereafter:
(1) Use information relating to the representation to the disadvantage of the former client except as the USPTO Rules of Professional Conduct would permit or require with respect to a client, or when the information has become generally known; or
(2) Reveal information relating to the representation except as the USPTO Rules of Professional Conduct would permit or require with respect to a client.
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Thus the proposed rules would require practitioners to reveal client confidential information to the USPTO, if such disclosure is required to comply with the duty of disclosure—perhaps in the context of prosecuting a patent application for a different client? While such circumstances may not arise very often, practitioners should be able to honor client confidentiality obligations without committing misconduct. Indeed, the USPTO’s proposed rules may conflict with the confidentiality provisions of Rule 1.6 the ABA Model Rules of Professional Conduct. That rule permits the disclosure of confidential information as required to comply with “law or a court order,” but might not apply when the disclosure is made to satisfy an agency regulation (e.g., 37 CFR § 1.56).

Serious Matters

Practitioners who have not reviewed the Rules of Professional Conduct since they took the MPRE may be surprised at the number and scope of the rules. Partners, managers, and supervisory practitioners have even more reason to pay close attention to the proposed rules, because proposed rule 37 CFR § 11.501 provides:

(a) A practitioner who is a partner in a law firm, and a practitioner who individually or together with other practitioners possesses comparable managerial authority in a law firm, shall make reasonable efforts to ensure that the firm has in effect measures giving reasonable assurance that all practitioners in the firm conform to the USPTO Rules of Professional Conduct.

What Do You Think?

As noted above, the USPTO will consider written comments on the proposed rules received by December 17, 2012.

Comments can be sent by email to ethicsrules.comments@uspto.gov

Comments can be sent by mail to:

Mail Stop OED-Ethics Rules
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, Virginia 22313-1450
Attention: William R. Covey,
     Deputy General Counsel for Enrollment and Discipline and
     Director of the Office of Enrollment and Discipline