Final Rules of Professional Conduct and Ethics for Patent Attorneys at U.S. Patent Office

The Patent Office has amended the rules regarding representation under 37 CFR part 11, effective June 25, 2021.¹ The rules more closely align the Patent Office Rules of Professional Conduct with the American Bar Association (ABA) Model Rules of Professional Conduct. The rules also clarify various deadlines, procedures concerning the registration exam and provisions for reinstatement.

For example, 37 CFR §11.106(b) permits a registered practitioner to disclose client information relating to the representation in certain situations regarding conflicts of interest arising from a practitioner’s change of employment or changes in the composition or ownership of a law firm. The rules require a practitioner to make reasonable efforts to avoid the inadvertent or unauthorized disclosure of, or unauthorized access to, client information. Under the rules, a registered practitioner may not use information learned from a prospective client except as expressly described. Registered practitioners are allowed to provide contact information such as a website or email address instead of an office address on marketing materials. In addition, the rules and regulations on solicitation apply to any person, without regard to whether the registered practitioner contemplates the targets of the solicitation to be prospective clients.

The rules and regulations also deal with the revocation of registration or limited recognition. Specifically, the rules establish a process where an individual’s registration or limited recognition may be revoked in certain circumstances. The rules also allow applicants for the registration examination to obtain an extension of time for the examination. Finally, the rules include a show-cause mechanism where a registration has been issued based on fraud, mistake or material misrepresentation.

The final rules are published in the Federal Register and can be found here.

Irah Donner is a partner in Manatt’s intellectual property practice and is the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law. Irah was also a software developer and former Member of Technical Staff at Bell Communications Research (Bellcore).

_{¹ Changes to Representation of Others Before the United States Patent and Trademark Office, 86 Fed. Reg. 28442 (May 26, 2021).}