U.S. Patent and Trademark Office adopts ethics guidelines that closely follow the ABA Model Rules
Illustration by Tim Marrs
On May 3, the U.S. Patent and Trademark Office put a new set of ethics rules into effect. The new rules have drawn some criticism from attorneys, but at least no one can accuse the PTO of acting in undue haste.
The PTO’s new Rules of Professional Conduct replace a set of ethics rules that were based on the ABA Model Code of Professional Responsibility, which the association adopted in 1969. The PTO last updated those rules in 1985—two years after the ABA replaced the Model Code with the Model Rules of Professional Conduct.
“Since then, a lot has changed in the way we practice law,” says Michelle Greer Galloway, who is of counsel at the Cooley law firm in Palo Alto, Calif. She chairs the Ethics and Professional Responsibility Committee in the ABA Section of Intellectual Property Law. Galloway says the Model Rules, which have undergone numerous revisions since they were first adopted 30 years ago, reflect the changing realities of law practice. The Model Rules are the direct basis for professional conduct rules for lawyers in every state (and the District of Columbia) except California, which still follows a version of the Model Code.
The PTO now is catching up with the rest of the legal profession. By basing its new Rules of Professional Conduct on the ABA Model Rules, the office is bringing its ethics standards into line with the modern practice of law and harmonizing them with the ethics rules adopted by nearly all U.S. jurisdictions.
“This is a very positive development. It makes it easier for patent lawyers to know what their ethical obligations are and to avoid inconsistencies with other jurisdictions,” says Sean M. SeLegue, a partner at Arnold & Porter in San Francisco and a vice-chair of the Intellectual Property Law Section’s ethics committee.
There is wide agreement that the PTO should have revised its ethics rules long ago. “Admittedly, this move is overdue,” wrote David J. Kappos, then the office’s director, in an October 2012 blog post. Kappos left the post Feb. 1. A few days later, he was named a partner at Cravath, Swaine & Moore in New York City.
THE WAIT ENDS
Why did the PTO wait so long? In part, it didn’t. The office, which is part of the Department of Commerce, tried to modernize its ethics rules in 2003. “The USPTO proposed aligning its rules more closely to the ABA Model Rules, but the proposal contained some major variations from the ABA rules,” says SeLegue. “The proposal generated a lot of comments from practitioners, and the USPTO never adopted those rules.”
The PTO appears to have learned from that experience. The agency’s new Rules of Professional Conduct hew far more closely to the ABA Model Rules than the version that was proposed a decade ago.
Internal changes at the agency also may have been a factor in its move to adopt new ethics rules. Since William R. Covey, a veteran deputy general counsel in the PTO, became director of the Office of Enrollment and Discipline in 2011, the office has “reinvented itself,” in the words of a PTO press statement.
“That may be why we have this new initiative,” says Lisa A. Dolak, a professor at Syracuse University College of Law whose research areas include the interplay between patent law and legal ethics.
The ABA, too, may have played a role in spurring the PTO to action. “There’s been a lot of news about legal ethics because of the ABA’s [Ethics] 20/20 Commission, which is about how lawyers practice in a global and digital environment,” says Galloway. “That may have raised the profile of this issue for the USPTO.”
The PTO’s new ethics rules enable practitioners to better understand what they may and may not do by addressing issues not covered under the old rules. The agency’s Code of Professional Responsibility, for instance, stated that a practitioner may be paid by receiving a stake in a patent, but the code did not mention anything about stakes in patent applications. The new rules redress this omission, explicitly stating that lawyers may receive stakes both in patents and patent applications. Granting such stakes can help inventors with limited resources afford legal counsel to rep-resent them before the PTO.
The new rules also should reduce the confusion that resulted from practitioners needing to satisfy two distinct sets of ethics guidelines: state rules and PTO rules. “The two sets of rules had different language—in some cases significantly different language,” Dolak says.
To avoid sanctions, she notes, “practitioners would have to limit their conduct to satisfy whichever standard was more restrictive. But sometimes the rules were so different, it was hard to know which standard was more restrictive.”
Now the PTO has adopted the same basic ethics rules that are followed by nearly every other state jurisdiction. “This brings harmonization of ethics rules,” Galloway says.
This harmonization provides another benefit to lawyers who practice before the agency. The new PTO rules allow practitioners to seek guidance from many secondary sources to help them comply with the agency’s new ethics rules. In the regulation enacting the new rules, the agency states that practitioners may “refer to the comments and annotations to the ABA Model Rules, as amended through August 2012,” as well as “opinions issued by state bars and disciplinary decisions” concerning analogous state rules.
This is an important change. Practitioners who were uncertain about how to interpret the old PTO ethics rules had few options. “Practitioners had only the language of the code to go on. They couldn’t use any commentary to determine what the code meant,” Dolak says.
The interpretations in these secondary sources do not bind the Patent and Trademark Office. But they will provide “useful tools in interpreting the rules while a larger body of USPTO-specific precedent is established,” the agency states in its regulation.
DIFFERENT TAKE ON CONFIDENTIALITY
The PTO’s new ethics rules diverge from the ABA Model Rules on a key issue: when lawyers must reveal confidential client information. ABA Model Rule 1.6 requires attorneys to keep client information confidential except in specific circumstances. The PTO adopts the same basic requirement in its corresponding ethics rule, Section 11.106. But subsection (c) to that rule states that client confidentiality must be breached when necessary to comply with the agency’s disclosure requirements.
One of these disclosure requirements, 37 CFR 1.56, mandates that every practitioner filing or prosecuting a patent application “disclose to the [PTO] all information known to that individual to be material to patentability.” Even if this information is confidential client data, therefore, the practitioner must disclose under the PTO’s ethics rules. The agency asserts that this duty to disclose existed under the previous ethics guidelines as well as the new rules. Most of the time, this difference between the ABA and PTO rules should not create problems for attorneys. If an attorney learns some material information from a client, both versions of the agency’s ethics rules require the attorney to provide the information to the PTO. (Under ABA Model Rule 1.6(b), the attorney may reveal information relating to representation of the client to prevent the client from committing a crime or a fraud that would result in substantial injury to the financial interests of another party.)
But when an attorney prosecuting a patent application for client A discovers that information obtained from client B is relevant, the attorney faces a dilemma. Since neither client is doing anything wrong, ABA Model Rule 1.6 requires keeping this client information confidential. PTO rule 11.106, however, requires the attorney to disclose this information to the agency.
The PTO asserts that this doesn’t really create a dilemma for attorneys. A comment to ABA Model Rule 1.6(b)(6) states that “a lawyer may be ordered to reveal information relating to the representation of a client by a court or by another tribunal or governmental entity claiming authority pursuant to other law to compel the disclosure.” The comment further states that unless the lawyer succeeds in getting the order reversed, he or she is authorized under Rule 1.6(b)(6) to comply with it. The PTO cites a 2006 North Carolina ethics opinion stating that an attorney may breach client confidentiality in order to comply with a Securities and Exchange Commission regulation.
This argument hasn’t satisfied many attorneys, who worry that states may not accede to the office’s interpretation of these rules. “Attorneys can cite the USPTO rule as the reason why they broke the state bar rule,” Galloway says. “I don’t think that gives much comfort to attorneys.”
For more Read the PTO’s new Rules of Professional Conduct at ABAJournal.com/magazine
