Patent Ethics & Professional Responsibility Flashcards

A client instructs a practitioner to include a claim the practitioner believes is clearly anticipated by prior art. What should the practitioner do?

Answer: Advise the client of the legal issue and, if the client insists after counseling, may still file while noting the objection

A practitioner must advise the client of the legal problem; if the client insists, the practitioner may file but must still disclose known material prior art and cannot assist in fraud.

Under what circumstances may a USPTO-registered practitioner be suspended or excluded from practice?

Answer: After OED investigation, hearing, and a final decision finding violation of USPTO Rules of Professional Conduct

Suspension or exclusion follows an OED investigation and hearing process that results in a final determination of a rules violation.

A practitioner in a small firm learns that a colleague represented the opposing party in a related matter two years ago. Under USPTO rules, what should happen?

Answer: The conflict is imputed to the firm but may be cured by screening (ethical wall) and informed client consent if no material confidential information was shared

Under imputed disqualification rules, firm-wide conflicts can sometimes be overcome by timely screening and client consent, particularly when no material confidential information was shared.

An inventor discloses prior art to the practitioner during an intake meeting but later tells the practitioner to 'forget about it.' What must the practitioner do?

Answer: Disclose the prior art in an IDS because it is known and potentially material

Known material prior art must be disclosed in an IDS regardless of the client's preference; the duty of candor to the USPTO overrides the client's instruction to withhold it.

What does 'gross negligence' mean in the context of USPTO practitioner discipline?

Answer: A pattern of conduct showing reckless disregard for the practitioner's professional obligations

Gross negligence in OED disciplinary proceedings refers to reckless disregard of professional obligations, not mere mistakes or isolated errors.

A practitioner is offered stock in a startup in lieu of fees for patent work. Which ethical rule is most implicated?

Answer: Rules on business transactions with clients, requiring fair terms, written disclosure, and client opportunity to seek independent counsel

Accepting equity in lieu of fees is a business transaction with a client, governed by rules requiring that terms be fair, disclosed in writing, and that the client have opportunity for independent counsel.

Which statement correctly describes the duty of confidentiality for a patent practitioner?

Answer: Information relating to representation of a client must be kept confidential unless the client gives informed consent to disclosure or an exception applies

The duty of confidentiality is broad — it covers all information relating to the representation regardless of its source, and generally continues beyond the end of representation.