Changes to the Rules of Ethics for Patent Law Practitioners

On May 26, 2021, the United States Patent and Trademark Office (“USPTO”) finalized the amendments to the Rules of Practice in Patent Cases as well as the rules regarding Representation of Others before the United States Patent and Trademark Office, found in the Code of Federal Regulations, 37 C.F.R. 11.1 – 11.901. The USPTO proposed the rule changes in 2020, and once finalized, the rules became effective on June 25, 2021.¹ The USPTO Rules of Professional Conduct have not been substantially updated since April 3, 2013, when the Office published a final rule establishing the USPTO Rules of Professional Conduct, 37 C.F.R. 11.101 et seq.² The new and amended Rules of Professional Conduct were modeled after the American Bar Association (“ABA”) Model Rules of Professional Conduct.³ By adding new provisions and changing the language of other provisions, the USPTO aimed to accomplish the following:

This rulemaking aligns the USPTO Rules of Professional Conduct more closely with the American Bar Association (ABA) Model Rules of Professional Conduct. It also improves clarity in existing regulations to facilitate the public’s compliance, including revising various deadlines, the procedures concerning the registration exam, provisions related to the revocation of an individual’s registration or limited recognition in limited circumstances, and provisions for reinstatement. It makes non-substantive change to improve the readability of various provisions as well.⁴

35 U.S.C. § 2(b)(2)(D) grants the USPTO authority to “establish regulations, not inconsistent with law, which … may govern the recognition an conduct of agents, attorneys, or other persons representing applicants or other parties before the Office.” The USPTO utilized this authority to make amendments to 37 C.F.R. part 1 and 37 C.F.R. part 11.⁵ Part 1 addresses the rules of practice in patent cases, including fees in patent matters, administrative practice and procedure; biologics; courts; freedom of information; inventions and patents; reporting and recordkeeping requirements; and small businesses.⁶ Part 11 “contains those regulations that govern the representation of others before the USPTO, including regulations relating to the recognition to practice before the USPTO, investigations and disciplinary proceedings, and the USPTO Rules of Professional Conduct.”⁷ Part 11 particularly addresses: administrative practice and procedure; inventions and patents; lawyers; and reporting and recordkeeping requirements.⁸

Regarding the harmonization of the USPTO Rules of Professional Conduct with widely adopted revisions to the ABA Model Rules of Professional Conduct, the USPTO made the following key changes:

A. 37 C.F.R. § 11.106 & 37 C.F.R. § 11.118

Section 11.106(b) was amended in order to:

[A]llow a practitioner to reveal information relating to the representation of a client to detect and resolve conflicts of interest arising from the practitioner’s change of employment or from changes in the composition or ownership of a law firm, but only if the revealed information would not compromise the attorney-client privilege or otherwise prejudice the client.⁹

However, in order to further clarify what a practitioners may or may not disclose, the rule amended § 11.106 by adding new paragraph (d), which requires “a practitioner to make reasonable efforts to prevent the inadvertent or unauthorized disclosure of, or unauthorized access to, information relating to the representation of a client.” Pursuant to § 11.118, the rule also defines a prospective client more narrowly in as someone who consults with a practitioner about the possibility of forming a lawyer-client relationship, rather than someone who merely discusses the possibility of forming a lawyer-client relationship:

(a) A person who discusses consults with a practitioner about the possibility of forming a client-practitioner relationship with respect to a matter is a prospective client.¹⁰

These amendments and additions to the rule brings the provisions into alignment with the 2012 amendments to ABA Model Rule 1.6.

B. 37 C.F.R. § 11.702

Section 11.702 contains the provisions governing attorney advertising, and was amended so that they better conform with the new ABA rules. Although several changes were made throughout regarding the language in the provisions, there were three key changes:

1. Advertising can now use broader terminology such as “contact information” as opposed to an “office address” as the old rules recited. The notes on this change provided by the USPTO indicate that contact information could be a website or an email address provided in marketing materials.¹¹

2. The amendments now permit the giving of “nominal gifts as an expression of appreciation that are neither intended nor reasonably expected to be a form of compensation for recommending a practitioner’s services.”¹²

3. The amendment added a new provision regarding practitioners claiming to be “certified as a specialist.” The rule now prohibits a practitioner from stating or even implying they are “certified as a specialist in a particular field of law,” unless, “(1) The practitioner has been verified as a specialist by an organization that has been approved by an appropriate authority of a State or that has been accredited by the American Bar Association, and (2) The name of the certifying organization is clearly identified in the communication.”¹³

C. 37 C.F.R. § 11.703

The USPTO changed the meaning of “solicitation” and clarified when it is appropriate. In addition, the limitations on solicitation now expand beyond “prospective clients” and apply to any person, regardless of whether the practitioner considers the targets of the solicitation to actually be prospective clients.¹⁴ Originally, the rule did not define solicitation, but now it does at the forefront of the statute:

(a) “Solicitation” or “solicit” denotes a communication initiated by or on behalf of a practitioner or law firm that is directed to a specific person the practitioner knows or reasonably should know needs legal services in a particular matter and that offers to provide, or reasonably can be understood as offering to provide, legal services for that matter.

The USPTO also amended its regulations in order to facilitate compliance by the public and enhanced the clarity of the following sections: §§ 1.21, 11.5, 11.7, 11.9, 11.11, 11.19, 11.51, 11.52, 11.53, 11.54, 11.55, 11.58, and 11.60.

For example, §§ 1.21(a)(1), 11.7(b), and 11.9(e) were amended so that applicants for registration and/or limited registration both have the ability to “request for an extension of time in which to schedule examination for registration to practice (non-refundable): $115.00.”¹⁵ Prior to the amendment, applicants were assigned a window of time in which to schedule and sit for the registration examination.¹⁶ Applicants who failed to meet this requirement would have to reapply and pay the application and test administration fees again.¹⁷ By allowing applicants the ability to request extensions, the new rules allow applicants to take more time to prepare for the registration exam if needed.¹⁸ In addition, applicants who miss the exam will not have to reapply or pay additional application fees or administrative fees.¹⁹

The fee to request an extension is significantly less than the existing application and examination fees that are due from an applicant who failed to take the registration examination during the test window. The fee seeks to recover the estimated average cost to the Office of related processing, services, and materials. The authorization for this fee is 35 U.S.C. 41(d)(2)(A).²⁰

Thus, the amendments to this rule improve the registration examination and application process. Applicants for the registration examination now have the opportunity to obtain an extension of time by simply paying a fee of $115 to obtain an extension.²¹ The USPTO expects this to streamline the application and registration process, reduce expense to applicants, and conserve agency resources.²²

In addition, the USPTO added a new paragraph, § 11.9(f), in order to clarify the documentation required in order to obtain a reinstatement of limited recognition:²³

[I]ndividuals whose limited recognition has been expired for five years or longer at the time of application for reinstatement must provide objective evidence that they continue to possess the necessary legal qualifications to practice in patent matters before the Office. Retaking and passing the registration examination is one way to establish such objective evidence.²⁴

Sections 11.9(f) and 11.11(f) have been realigned for both registered practitioners and practitioners granted limited recognition under § 11.9(b). In particular, the provisions of § 11.7(a) and (b) were imported into § 11.9 new subparagraphs (d) and (e). The change increases “readability” and clarifies the application process as it applies to those seeking limited recognition under 11.9(b). The periods of time in these sections are either the same as or greater than the applicable periods previously provided. Therefore, the new time periods apply equally to all individuals, without regard to whether the relevant period had started to run before or after the effective date of the new rules. Note that the revocation of registration or limited recognition has also been amended. Under § 11.11(g), an individual’s registration or limited recognition may be revoked in limited circumstances set forth in the provision:²⁵

(1) The USPTO Director may revoke an individual’s registration or limited recognition if:

(i) The registration or limited recognition was issued through mistake or inadvertence, or

(ii) The individual’s application for registration or limited recognition contains materially false information or omits material information.

When it appears that grounds for administrative revocation exist, the OED Director will issue a notice to the individual to show cause why the individual’s registration or limited recognition should not be revoked. Within 30 days after service of the notice to show cause, the individual may file a response to with the USPTO Director addressing any factual or legal bases as to why the individual’s registration or limited recognition should not be revoked. Lastly, the amendments to § 11.5(a) changed the term “patent cases” to “patent matters” and changed the term “other proceeding” to “other patent proceeding.”²⁶ This distinction was made in order “to clarify that the subparagraph refers only to patent proceedings, and clarifies the definition of practice before the Office in trademark matters in § 11.5(b)(2).”²⁷ Additionally, § 11.5(b) clarifies “that nothing in § 11.5 prohibits a practitioner from employing or retaining a non-practitioner assistant under the supervision of the practitioner to assist in matters pending before, or contemplated to be presented to, the Office.”²⁸

This article discusses the key changes in the May 2021 amendments to Rules of Practice in Patent Cases as well as the rules regarding Representation of Others before the United States Patent and Trademark Office, found in the Code of Federal Regulations, 37 C.F.R. 11.101 et seq. This article does not cover all changes made. Our purpose is to highlight the key changes, discuss the parallel harmonization of the new rules with the Model ABA Model Rules of Professional Conduct, and provide information to aspiring or current practitioners to the extent the amendments apply to them. Some minor edits not discussed include §§ 11.10, 11.24, and 11.29. The amendments to these sections merely sought to increase structural parallelism between similar provisions, harmonize post-employment restrictions with those in 18 U.S.C. 207, and increase “the readability” of other provisions throughout.²⁹ Other minor changes were primarily structural, making corrections to “spelling, grammar, and cross-references; harmonizing terminology; correcting syntax formats to comport with the Federal Register Document Drafting Handbook; and reorganizing paragraph structure.”³⁰

In short, regardless of the provision, all of the amendments made and new provisions added to Rules of Practice in Patent Cases as well as the rules regarding Representation of Others before the USPTO have been carefully designed, structured, and written to benefit practitioners by clarifying and streamlining professional responsibility, obligations, and procedures.