Patent Bar Exam Ethics and Professional Responsibility 2 — Questions and Answers
Question 1: A registered patent agent represents Client A in a patent application. Client B later approaches the agent with a substantially related matter that is directly adverse to Client A. Under the USPTO Rules of Professional Conduct, what must the agent do?
- Decline to represent Client B unless both clients give informed written consent (Correct answer)
- Proceed with Client B's matter since it is a different application
- Withdraw from Client A's matter and freely represent Client B
- Seek a waiver only from Client B since Client A is the existing client
Correct answer: Decline to represent Client B unless both clients give informed written consent
Under 37 CFR 11.107, a practitioner may not represent a client whose interests are directly adverse to another current client without informed written consent from both.
Question 2: Under 37 CFR 11.106, which of the following disclosures by a practitioner to a third party is generally PERMITTED without client consent?
- Disclosure impliedly authorized to carry out the representation (Correct answer)
- Disclosure of all attorney-client communications to the USPTO examiner
- Disclosure of confidential information to gain a personal financial advantage
- Disclosure of client secrets to potential adverse parties in litigation
Correct answer: Disclosure impliedly authorized to carry out the representation
A practitioner may disclose information impliedly authorized to carry out the representation, such as filing an application on a client's behalf.
Question 3: A practitioner learns that a client intends to commit fraud upon the USPTO during prosecution of a patent application. After advising the client not to proceed, the client insists. What is the practitioner's proper course of action under the USPTO rules?
- Withdraw from the representation (Correct answer)
- File the fraudulent submission as instructed by the client
- Notify the USPTO directly of the client's intent without withdrawing
- Do nothing because attorney-client privilege prohibits any action
Correct answer: Withdraw from the representation
Under 37 CFR 11.116, a practitioner must withdraw when continued representation would require assisting in fraudulent or criminal conduct.
Question 4: Which of the following best describes the duty of candor owed to the USPTO under 37 CFR 11.303?
- A practitioner must not make false statements of law or fact to the USPTO (Correct answer)
- A practitioner must disclose all prior art regardless of relevance
- A practitioner must share all client confidences with the examiner on request
- A practitioner must correct any error made by an examiner during prosecution
Correct answer: A practitioner must not make false statements of law or fact to the USPTO
37 CFR 11.303 prohibits making false statements of material fact or law and requires disclosure of directly adverse controlling authority.
Question 5: A practitioner who is suspended from practice before the USPTO continues to assist clients by drafting patent claims and having a registered colleague sign the documents. Under the USPTO Rules of Professional Conduct, this conduct is:
- Prohibited because it constitutes assisting an unauthorized practice of patent law (Correct answer)
- Permitted if the registered colleague reviews and approves the work
- Permitted as long as the suspended practitioner is not listed as attorney of record
- Prohibited only if the suspended practitioner charges fees directly to the client
Correct answer: Prohibited because it constitutes assisting an unauthorized practice of patent law
A suspended practitioner may not assist in the unauthorized practice of patent law, and a registered colleague cannot legitimize such conduct by signing off on it.
Question 6: Under 37 CFR 11.104, a practitioner's duty to keep a client reasonably informed requires:
- Promptly responding to reasonable requests for information and providing updates on case status (Correct answer)
- Sending weekly written reports regardless of whether there have been any developments
- Disclosing every internal strategy decision before taking any action
- Informing clients only when a final decision from the USPTO has been issued
Correct answer: Promptly responding to reasonable requests for information and providing updates on case status
37 CFR 11.104 requires prompt responses to reasonable client requests for information and keeping clients informed about significant case developments.
Question 7: A practitioner represents two co-inventors on a single patent application. After filing, a dispute arises between the inventors about ownership of the invention. What should the practitioner do?
- Withdraw from representing both inventors unless the conflict can be resolved with informed consent (Correct answer)
- Continue representing both inventors and mediate their dispute
- Represent the inventor who contributed more to the claimed invention
- Refer only one inventor to outside counsel while continuing to represent the other
Correct answer: Withdraw from representing both inventors unless the conflict can be resolved with informed consent
An ownership dispute creates a direct conflict between co-clients, requiring withdrawal unless both provide informed written consent after full disclosure.
Patent Bar Exam Ethics and Professional Responsibility 2
A registered patent agent represents Client A in a patent application.
Client B later approaches the agent with a substantially related matter that is directly adverse to Client A.
Under the USPTO Rules of Professional Conduct, what must the agent do?