Practitioner registration, representation and ethics

The USPTO Rules of Professional Conduct (37 CFR 11.101-11.901, adopted by the 2013 final rule) follow the ABA Model Rules with patent-specific additions. Representation rules in 37 CFR 1.31-1.36 govern powers of attorney and withdrawal.

Ethics and representation2 min read4 sections

Must-know for the exam

Only registered practitioners and those with limited recognition may represent others in patent matters (37 CFR 11.10(a))
Patent attorneys are registered and bar members; patent agents are registered but not attorneys (37 CFR 11.6)
Non-citizens in the U.S. who are not permanent residents get limited recognition (37 CFR 11.9(b))
A power of attorney may name ten or fewer practitioners, or a customer number (37 CFR 1.32(c))
Withdrawal needs Office approval and protection of the client (37 CFR 1.36(b), 11.116(d))
Contingent fees need a writing signed by the client (37 CFR 11.105(c))
Advance fees go in a client trust account (37 CFR 11.115)
A practitioner may advance fees to cure an abandonment the practitioner caused (37 CFR 11.108(e)(4))
Business transactions with clients need fair written terms, advice to get counsel, and signed consent (37 CFR 11.108(a))
No fee sharing with non-practitioners (37 CFR 11.504)
No live person-to-person solicitation of strangers for pecuniary gain (37 CFR 11.703)
Report misconduct raising a substantial question of honesty to the OED Director (37 CFR 11.803)
Former Office employees may not represent others in matters they handled personally and substantially (37 CFR 11.10(b))
Patent agents may not practise in trademark matters (37 CFR 11.14)

On this page · 4 sections

Traps that cost marks

Applying the general ban on financial assistance without the patent-specific exception.
Treating a contingent fee like an hourly fee that can be agreed orally.
Commingling advance fees with the practitioner's own funds.
Thinking client consent makes fee sharing acceptable.
Assuming only trade secrets are protected.
Not knowing the ten-practitioner limit.
Thinking a practitioner can simply walk away from an application.
Treating reporting as discretionary.

Representation basics

A practitioner signing in a representative capacity represents that he or she is authorized to act (37 CFR 1.34) and must give a registration number. Papers must be personally signed; unregistered staff may not sign for a practitioner.

Conflicts and confidentiality

•Direct adversity to a current client, such as filing art against the client's application for a competitor, is a concurrent conflict (37 CFR 11.107).
•Information relating to the representation stays confidential absent consent or an exception (37 CFR 11.106).
•Directly adverse controlling authority must be disclosed to the tribunal (37 CFR 11.303(a)(2)).

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