37 CFR

Which CFR part currently governs USPTO ethics?

37 CFR Part 11 (based on a modified version of the ABA Model Rules of Professional Conduct). Has its own index — look here on the exam, NOT Part 10.

Under which CFR part were USPTO ethics rules formerly governed?

37 CFR Part 10. The move to Part 11 changed the wording, but the core obligations mostly stayed the same.

37 CFR Part 11 is based on what?

A modified version of the ABA Model Rules of Professional Conduct.

The six-point exam framework for USPTO ethics

(1) Do not lie, cheat, or steal; (2) do not take work you are not competent to handle; (3) avoid conflicts of interest; (4) know who your client is; (5) keep client money separate; (6) do not submit false or improper papers to the USPTO.

Three requirements to divide fees with a practitioner who is NOT a partner or associate

(1) Full disclosure to the client; (2) the total fee is reasonable; (3) the fee division is proportional to the services actually performed by each practitioner.

Can you accept a fee simply for referring work to another practitioner?

No. A pure referral fee is prohibited. Fee splitting must be based on work actually performed.

Fee splitting — allowed phrasing vs. not allowed phrasing

ALLOWED: "I will work with another practitioner, disclose it to the client, divide the work, and divide the fee." NOT ALLOWED: "I referred the client, so I get part of the fee."

Why is a lawyer referral service generally a problem in patent practice?

Because the referral service does not perform substantive legal or patent work — so paying/receiving a fee from it is an improper referral fee.

To whom does the duty of confidentiality apply?

Current clients AND former clients. It does NOT automatically apply to random nonclients.

If a NONclient discloses information to you, what is the rule?

You generally owe that person no confidentiality, and in some situations you may have a DUTY to disclose that information to your actual client.

Bar Conversation example (Alice Fruit)

She is not your client; she blurts plans to leave your client XXX Corp and wants help designing a non-infringing product. You refuse employment. Rule: no confidentiality owed to her; you may (and may have a duty to) tell XXX Corp.

Employee Confesses Secret Inventions example

An employee of your client tells you at dinner he secretly made inventions owed to the company. No attorney-client relationship formed → you have a duty to report these facts to your actual client.

Employee Retains You First example

You agree to represent the employee, THEN she tells you she's hiding inventions and wants you for her new company. Because you were retained, you cannot disclose to your client; and you now have a conflict, so you cannot represent the new company.

Common confidentiality trap in patent work

Inventors/engineers/professors may think you represent them personally because you communicate with them and they sign documents — but the real client is usually the employer, company, or university that owns the rights.

Duty to disclose to your client

You owe a duty to disclose anything significant the client needs to know, and a duty not to lie to the client.

Ghostwriting / outsourcing rule

Secretly farming out work to a ghostwriting attorney is unethical. It is ethical only if you tell the client, the other attorney agrees, and the client agrees (disclosed co-counsel).

May a practitioner acquire an interest in a litigation or proceeding?

No. A patent agent or attorney may not acquire an interest in a litigation or proceeding.

What compensation arrangements ARE allowed?

A reasonable contingent fee, and taking an interest in the patent or patent application as part of the fee. Contingent fees are not automatically unethical — they must be reasonable.

Example of a potentially reasonable contingent structure

~15–20% of royalties for prosecution work; more if litigation or appeal is included, as long as it remains reasonable. Claiming nearly all revenue is unreasonable.

How does a client HIRE a patent practitioner?

By submitting a Power of Attorney.

How does a client FIRE a patent practitioner?

By submitting a revocation.

Who controls hiring and firing of the practitioner?

The owner of the application.

Can a client fire a practitioner at any time?

Yes — for any reason — UNLESS the Power of Attorney is coupled with an interest in the application.

Competence — two dimensions required

Technical competence AND legal competence.

Competence: third day of practice, complex derivation proceeding, you honestly believe you are NOT competent

You must DECLINE the representation.

Competence: same facts, but you honestly believe you can become competent by studying the rules and texts

You MAY accept the representation.

The competence exam distinction

The issue is not whether you are already an expert — it is whether you reasonably believe you can competently handle (or become competent to handle) the matter.

Rule 56 duty

You must disclose information material to a specific application you are responsible for.

Broader duty of candor to the USPTO

Be truthful; correct mistakes; submit only what you know or reasonably believe to be true; do not allow false information to remain uncorrected.

What three things must you NOT submit to the USPTO?

Anything that (1) is not true, (2) is submitted solely for an improper purpose (including delay), or (3) violates USPTO rules or applicable law.

Duty to disclose disciplinary violations

You have a duty to disclose to the USPTO any unprivileged information establishing a violation of disciplinary rules by you or someone else.

USPTO duty: client tells you he is NOT the true inventor

You cannot ethically file the application or represent him on the matter unless inventorship is corrected.

USPTO duty: client wants you to argue using an article you KNOW is wrong (author admitted error)

You cannot present the argument.

USPTO duty: expert affidavit submitted, then expert says it is wrong two weeks later

You cannot ignore it. You must correct the record and make clear the affidavit should no longer be relied on. You need not instantly drop everything, but you must act reasonably.

Reasonable inquiry standard

You do not have a duty to independently verify every fact and argument unless you have a reason to believe they may be false. The standard is reasonable inquiry, not independent verification of everything.

When is MORE inquiry needed?

When facts seem unusual, incredible, or inconsistent — e.g., perpetual motion machine, cure for cancer, telepathy device, or a fact that changes after the client learns the legal consequence.

"Changing fact" red flag example

Client says he has been selling the invention for five years; you explain that likely bars patenting; next day the client says all sales were "experimental." That is a changing fact requiring reasonable investigation.

Is a registered patent agent a lawyer?

No. A patent agent is not a lawyer and cannot practice law generally — only what is required to obtain a patent.

Can a patent agent prosecute trademark applications?

No. Only an attorney who is a member of a state bar may prosecute trademark applications.

Patent agent scope trap

Patent agent ≠ trademark practitioner. The USPTO is the Patent and Trademark Office, but a registered patent agent is registered only for patent practice.

Outside the USPTO, what can a patent agent NOT do?

Give legal counseling outside patent office practice, handle licensing as legal counsel, litigate, practice before state courts, or practice trademark law.

May a patent practitioner advertise?

Yes — but advertising must be truthful and the practitioner must accurately identify their status.

A patent agent MAY advertise as ___ and may NOT advertise as ___

MAY: "Registered patent agent." MAY NOT: "Registered patent attorney," and may not claim authority to handle trademark matters before the USPTO.

Client funds rule

Client funds must be kept in a separate account, not commingled with practitioner funds. A separate ledger in the same bank account is NOT enough — separate accounts.

Retainers — whose money?

A retainer is the client's money until earned. You generally do not own it until you bill the client, payment is approved/earned under the agreement, and the funds are properly transferred.

Who does Rule 11.18 apply to?

Anyone who presents a paper to the USPTO by signing, filing, submitting, or later advocating it — practitioners AND non-practitioners (inventors, owners, experts).

Rule 11.18 — the certifications made by presenting a paper

(1) Personal-knowledge statements are true; (2) non-personal-knowledge statements are believed true; (3) reasonable inquiry was made; (4) not presented for an improper purpose; (5) legal contentions warranted by law or a nonfrivolous argument; (6) factual contentions have evidentiary support; (7) denials of factual contentions are warranted by the evidence.

Rule 11.18 high-yield summary

When you sign or submit anything to the USPTO, you are certifying truth, proper purpose, legal support, and factual support.

General conflicts core rule

You cannot represent a new client if doing so would place you against a current or former client, unless there is fully informed written consent from all affected parties.

Two main conflict settings

(1) A new client is (or may be) in direct conflict with a current or former client; (2) you represent a client but a third party pays the fees and interests are no longer aligned.

Conflict: prior work was UNRELATED (e.g., licensing/ownership), new work is different technology

Representation may be possible — but each affected client must be informed and asked for informed consent. You do not get to decide alone.

Conflict: prior work involved SIMILAR technology to the new client's invention

A waiver may not be enough, because it is hard for a practitioner to "forget" confidential information learned from the first client.

Conflict: the former client's work is now PUBLIC prior art

Waiver from both parties may be enough.

Ford / GM conflict example outcome

You did Ford-division patent work 5 years ago; Ford no longer owns the division or is your client for it; GM now wants similar tech. Probably no conflict — but Ford and GM must be informed and consent.

Apple / Microsoft litigation-counsel example

If you were Apple's litigation counsel for years, it is very unlikely you can later represent Microsoft directly against Apple — even with consent, the chance of ethical representation is very small.

Yahoo / Google example

Work for Yahoo years ago, now want to work for Google — that may be possible with informed consent from both.

Conflicts: even WITH consent, what is still prohibited?

You may represent clients separately with consent, but you cannot represent them directly AGAINST each other.

Third-party-payment core rule

If a third party pays the fees, constantly monitor whether the payer's interests stay aligned with the client's. You represent the party with whom you have the representation agreement — not the payer.

University / business funding example

Business funds university research and pays for filings; university owns the technology; business has a first right of refusal. University later wants broad licensing; business wants to suppress it. You represent whoever your representation agreement names — the university if the agreement is with the university, even though the business pays.

In-house counsel variation (you work for the business, doing filings for the university)

You likely need: a representation agreement with the university, a waiver from your employer, a clear understanding that you represent the university only for these matters, and possibly an ethical screen / "Chinese wall."

Conflict-avoidance rule

Do not undertake representation that could place you in a legal position adverse to a current or former client. The only way forward is full disclosure and informed consent from all affected parties.

Why are "similar technology" former-client conflicts especially serious?

Because patents you obtain for the new client may later be enforced against the old client.

FILL-IN: To hire a patent agent or attorney, the client submits a ___

Power of Attorney.

FILL-IN: To fire a patent agent or attorney, the client submits a ___

Revocation.

FILL-IN: For ethics on the exam, look up ___, not Part 10

37 CFR Part 11.

FILL-IN: Fee splitting must be based on ___

Work actually performed (and disclosed to the client; total fee reasonable).

FILL-IN: Confidentiality applies to current and ___ clients, but not random ___

Former clients; nonclients.

FILL-IN: A retainer is ___ money until earned

The client's.

FILL-IN: Client funds must be kept in a ___ account

Separate (not commingled; not just a separate ledger).

FILL-IN: Rule 11.18 applies to ___ who submits papers to the USPTO

Anyone (practitioners and non-practitioners).

FILL-IN: The standard for checking client facts is ___, not independent verification of everything

Reasonable inquiry.

FILL-IN: Conflicts require full disclosure and ___ from all affected parties

Informed (written) consent.

FILL-IN: You represent the party with whom you have the ___

Representation agreement.

Prime Question 1 — newly registered patent agent establishing practice. Correct answer?

B — the agent advertises truthfully as a registered patent agent and accepts patent cases on a contingent fee basis (advertising allowed if truthful; contingent fees allowed if reasonable).

Prime Question 1 — why the other choices are wrong

A: agent claims trademark authority (patent agents can't do trademarks). C: agent prosecutes trademarks AND attorney signs without reading. D: improper noncompete-style restraint on future practice. E: agent falsely claims to be a registered patent attorney.

Prime Question 2 — AQZ, Davis, and Lindy. Correct answer?

D — Yes, you may disclose to AQZ, because you represent AQZ's interests; Davis and Lindy are not your clients and you warned them the discussions were not privileged.

Prime Question 3 — Smith takes advance fee for a patentability search, does no work, lies that it was done. Correct answer?

B — Smith's conduct is unethical because he represented the search had been done when it had not. The violation is the dishonesty; no client harm is required.

Prime Question 4 — Zach cannot pay normal fees for a complex biotech application. Correct answer?

C — Stone may do all necessary work and take one-third of sums derived from licensing/sale/use of the patent, up to a reasonable amount Stone would have charged (reasonable contingent fee / interest in the patent is ethical).

Prime Question 4 — why the other choices are wrong

A: client cannot waive malpractice/professional-misconduct claims that way. B: cannot delegate to someone known to be incompetent. D: cannot become a fake joint inventor to share proceeds. E: wrong because C is valid.

Prime Question 5 — practitioner moving from a former tech-company client to a direct competitor. Correct answer?

D — He must inform both the past employer/client and the prospective new employer and obtain informed consent from each (serious former-client conflict involving directly competing technology).

Prime Question 6 — university tech-transfer practitioner; applications from a joint research agreement with an outside company. CONFLICTING SOURCE ANSWERS

Structured study guide: A — representation agreement with the UNIVERSITY only (university is the client absent a separate agreement). Transcript: C — the UNIVERSITY AND THE COMPANY (both, since inventors from both sides are involved). RESOLVE against the actual PLI answer key; know the underlying rule either way: clearly identify who the client is and obtain consent where interests overlap.

EXAM TRAP: referral fees

You cannot take a pure referral fee. Fee splitting requires disclosure, a reasonable total fee, and division proportional to work performed.

EXAM TRAP: dishonesty and harm

No client harm is required for dishonesty to be unethical. The lie itself is the violation.

EXAM TRAP: patent agent vs. trademark

A registered patent agent cannot prosecute trademarks or advertise trademark services, and cannot hold himself out as a patent attorney.

EXAM TRAP: who is the client when someone else pays

Third-party payment does NOT make the payer your client. You represent the party named in the representation agreement.

EXAM TRAP: changing facts

A fact that changes right after the client learns the legal consequence is a red flag that triggers a duty of further reasonable inquiry.

EXAM TRAP: consent does not cure direct adversity

Even with informed consent, you cannot represent two clients directly against each other.

EXAM TRAP: nonclient disclosures

Information from a nonclient is generally not privileged, and you may have a duty to report adverse nonclient information to your actual client.

EXAM TRAP: competence is forward-looking

You may accept difficult or unfamiliar work if you reasonably believe you can become competent — you need not already be an expert. But you must decline if you honestly believe you cannot handle it.

EXAM TRAP: correcting the USPTO record

You must correct false or now-known-wrong submissions to the USPTO; you cannot let false information stand uncorrected.

EXAM TRAP: client neglect

Ignoring calls, failing to do contracted work, and misrepresenting status are classic real-world ethics violations even absent harm.