Patent Bar Exam Ethics and Professional Responsibility 3 — Questions and Answers
Question 1: Under 37 CFR 11.108, a practitioner must not acquire a proprietary interest in the cause of action being litigated. However, which of the following interests IS permitted?
- A contingent fee in a civil case as permitted by the rules (Correct answer)
- Ownership of the patent being prosecuted on behalf of the client
- A lien on the client's invention for unpaid fees exceeding 25% of the patent's value
- An assignment of patent rights as full payment for prosecution services
Correct answer: A contingent fee in a civil case as permitted by the rules
37 CFR 11.108 prohibits acquiring most proprietary interests in a client's matter but expressly permits contingent fee arrangements in civil cases.
Question 2: Which of the following would constitute 'inequitable conduct' before the USPTO under the materiality standard?
- Intentionally withholding a prior art reference that a reasonable examiner would consider important (Correct answer)
- Failing to disclose a foreign patent that issued after the U.S. application filing date
- Submitting an IDS three days late due to administrative error, without deceptive intent
- Describing the invention more broadly in the claims than in the specification
Correct answer: Intentionally withholding a prior art reference that a reasonable examiner would consider important
Inequitable conduct requires intentional withholding of material information; a reference a reasonable examiner would consider important satisfies the materiality prong.
Question 3: A practitioner receives a $10,000 advance fee from a client to handle a patent prosecution matter. Under 37 CFR 11.115, the practitioner must:
- Hold the funds in a client trust account until earned (Correct answer)
- Deposit the funds into the practitioner's operating account immediately
- Return the funds if the application is not granted within one year
- Transfer the funds to a third-party escrow service approved by the USPTO
Correct answer: Hold the funds in a client trust account until earned
Under 37 CFR 11.115, unearned client funds must be held in a trust account separate from the practitioner's own funds until earned.
Question 4: A practitioner's client asks the practitioner to file a continuation application with claim language that the practitioner believes is anticipated by prior art. The client disagrees with the practitioner's assessment. The practitioner should:
- Advise the client of the practitioner's assessment but file if the client insists, unless doing so would violate the duty of candor (Correct answer)
- Refuse to file because the practitioner's judgment overrides client instructions
- File immediately without further discussion to preserve the client's rights
- Report the client to the OED for attempting to file an invalid claim
Correct answer: Advise the client of the practitioner's assessment but file if the client insists, unless doing so would violate the duty of candor
A practitioner advises the client but ultimately follows client instructions on objectives unless doing so would violate ethical rules such as the duty of candor.
Question 5: Under the USPTO Rules of Professional Conduct, when may a practitioner reveal confidential client information to prevent reasonably certain death or substantial bodily harm?
- The practitioner may reveal the information even without client consent (Correct answer)
- The practitioner may reveal the information only after obtaining client consent
- The practitioner may never reveal confidential information for any reason
- The practitioner may reveal the information only if compelled by a court order
Correct answer: The practitioner may reveal the information even without client consent
37 CFR 11.106(b)(1) permits disclosure of confidential information to prevent reasonably certain death or substantial bodily harm, even without client consent.
Question 6: What is the primary purpose of the USPTO Office of Enrollment and Discipline (OED)?
- To regulate the conduct of registered practitioners and investigate complaints of misconduct (Correct answer)
- To examine patent applications for compliance with 35 U.S.C. requirements
- To administer the Patent Bar Examination and grant registration numbers
- To review post-grant proceedings including inter partes review petitions
Correct answer: To regulate the conduct of registered practitioners and investigate complaints of misconduct
The OED is responsible for registering practitioners and disciplining those who violate the USPTO Rules of Professional Conduct.
Question 7: A practitioner who is registered to practice before the USPTO but is not licensed as an attorney may do which of the following?
- Prepare and prosecute patent applications before the USPTO (Correct answer)
- Represent clients in federal district court patent infringement litigation
- Provide legal opinions on patent validity for use in non-USPTO proceedings
- Negotiate licensing agreements on behalf of clients outside the USPTO
Correct answer: Prepare and prosecute patent applications before the USPTO
A registered patent agent may prepare and prosecute patent applications but may not represent clients in court or provide legal opinions beyond USPTO practice.
Patent Bar Exam Ethics and Professional Responsibility 3
Under 37 CFR 11.108, a practitioner must not acquire a proprietary interest in the cause of action being litigated.
However, which of the following interests IS permitted?