Patent bar Practitioner registration, representation and ethics question: registered patent attorney Kim to prosecute

Patent barPractitioner registration, representation and ethics

A start-up asks registered patent attorney Kim to prosecute its application in exchange for 2% of future royalties from the patent, with no hourly fee. Kim agrees orally and begins work. What does 37 CFR 11.105 require?

A A fee no higher than the USPTO's filing fees
B Approval of the fee by the OED Director
C Nothing more, because oral fee agreements are always sufficient
D A signed client writing stating how the fee is set
E That Kim transfer ownership of the application to herself

Show the answer and explanation

Answer: D. A signed client writing stating how the fee is set

Answer: A signed client writing stating how the fee is set. Under 37 CFR 11.105(c), a fee may be contingent on the outcome of the matter, except where prohibited by law, but a contingent fee agreement must be in a writing signed by the client and must state the method by which the fee is to be determined. All fees must also be reasonable under 11.105(a). Why not the others: - Oral agreements suffice: not for contingent fees. - OED approval: none is required. - Capped at USPTO fees: the test is reasonableness, not a cap. - Transfer of ownership: that would be a business transaction adverse to the client under 11.108(a), not a requirement. Rule: Contingent fees need a signed writing explaining how the fee is computed. Source: 37 CFR 11.105(a), (c); 78 FR 20180 (Apr. 3, 2013); as at Oct 2026

Common mistake

Treating a contingent fee like an hourly fee that can be agreed orally.

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Original study material written from the MPEP; not a question from the current exam.Independent. Not affiliated with or endorsed by the USPTO. Verify figures and rules against current guidance before relying on them.