Pursuant to 35 U.S.C. 2(b)(2)(D), the Office governs “the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office.” The Office also has the authority to 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.”
The USPTO had previously used the ABA Model Code of Professional Responsibility as the basis for the USPTO Code of Professional Responsibility. However, the USPTO has promulgated new rules of professional conduct and has adopted substantive disciplinary rules based on the newer Model Rules of Professional Conduct of the American Bar Association. The amended new rules are provided here in Appendix 15(H).3.50 These new rules are more consistent with the rules of professional responsibility that have been adopted by most state jurisdictions as well as other federal agencies. The section break down of the rules based on the ABA Model Rules illustrates a more detailed approach to attorney conduct:
Some of the featured rules are captioned as follows:
§ 11.105 Fees and responsibilities regarding fee
§ 11.106 Confidentiality of information (§ 11.106)
(Modifies ABA Model Rule to accommodate duty of disclosure).
§ 11.106(a): prohibition on revealing client information.
§ 11.106(b): permissive disclosure of client information.
§ 11.106(c): practitioner shall comply with the duty of disclosure.
§§ 11.107-11.110 Conflicts of interest and duties to clients
§ 11.107: Conflict of interest: Current clients
§ 11.108: Conflict of interest: Current clients: Specific rule
§ 11.109: Duties to former clients
§ 11.110: Imputation of conflicts of interest: General rule
§ 11.111 Former or Current Federal Government Employees
§ 11.116 Declining or Terminating Client Representations
§ 11.303 Candor toward tribunal (§ 11.303)
(Modifies ABA Model Rule to include ex parte proceedings).
§ 11.404(b) Inadvertently transmitted materials (§ 11.404(b))
§ 11.505 Unauthorized practice of law
§§ 11.701-11.705 Advertising/Communication Regarding Services
§ 11.701 Prohibition on false or misleading communications regarding services
§ 11.702 No payments for referrals, with exceptions
§ 11.703 Rules regarding direct contact with prospective clients
§ 11.704 Fields of Practice and Specialization
§ 11.705 Firm Names and Letterheads
§ 11.804 Misconduct
(USPTO rules adopt ABA definitions of misconduct
The final USPTO Rules include numerous provisions specifying that notice, consent, or other terms with clients must be in writing: e.g., §§ 11.105, 11.107-11.110, 11.112, 11.117-11.118.
In keeping with the USPTO's current practice, practitioners should be aware that failure to comply with a local state bar's rules on professional conduct may result in reciprocal disciplinary action by the USPTO. Similarly, practitioners should also note that disciplinary action by the USPTO may also be used by a state attorney registration offices in disciplinary action or suspension from legal practice in a given state.
The USPTO has emphasized that the spirit of the new rules is essentially that of the prior rules and that the change is not a “significant deviation form the rules of professional conduct for practitioners that are already required by the Office.” The USPTO has provided a comparison chart of its rules of practice—the USPTO Rules of Professional Conduct—shown together with the corresponding ABA Model Rules of Professional Conduct for further clarification of the correspondence and consistency of the USPTO rules with the ABA rules of practice.