Patent Bar Exam Ethics and Professional Responsibility 3

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?

Accepted Answer

A contingent fee in a civil case as permitted by the rules

Answer

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?

Accepted Answer

Intentionally withholding a prior art reference that a reasonable examiner would consider important

Answer

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:

Accepted Answer

Hold the funds in a client trust account until earned

Answer

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:

Accepted Answer

Advise the client of the practitioner's assessment but file if the client insists, unless doing so would violate the duty of candor

Answer

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?

Accepted Answer

The practitioner may reveal the information even without client consent

Answer

37 CFR 11.106(b)(1) permits disclosure of confidential information to prevent reasonably certain death or substantial bodily harm, even without client consent.

Patent Bar Exam Practice Test

Patent Bar Exam Practice Test

Patent Bar Exam Ethics and Professional Responsibility 3