Patent Bar Exam Ethics and Professional Responsibility 4 — Questions and Answers
Question 1: Under 37 CFR 11.116, which of the following is a mandatory ground for withdrawal from representation?
- The representation would result in violation of the USPTO Rules of Professional Conduct (Correct answer)
- The client disputes the amount of fees owed to the practitioner
- The practitioner finds the subject matter of the invention distasteful
- The practitioner's workload has become excessive due to other client matters
Correct answer: The representation would result in violation of the USPTO Rules of Professional Conduct
Under 37 CFR 11.116(a), withdrawal is mandatory when continuing would require the practitioner to violate the Rules of Professional Conduct.
Question 2: A practitioner leaves a law firm and joins a competitor firm that represents a client adverse to a former client. The former client's matter is not substantially related to the new matter. Under the USPTO rules, the practitioner:
- May represent the new client because the matters are not substantially related (Correct answer)
- Is automatically disqualified from representing any client adverse to any former client
- Must obtain consent from both the former and current client before proceeding
- Must wait one year before representing any client adverse to a former client
Correct answer: May represent the new client because the matters are not substantially related
Under 37 CFR 11.109, a former-client conflict only arises when the new matter is the same or substantially related to the former matter and the interests are materially adverse.
Question 3: A practitioner knowingly makes a false statement of material fact to the USPTO during an ex parte prosecution. Under 37 CFR 11.303, the practitioner has:
- Violated the duty of candor to the tribunal (Correct answer)
- Committed only a minor procedural violation subject to a warning
- Acted within acceptable bounds if the statement was made in good faith
- Violated only the patent statute, not any ethical rule
Correct answer: Violated the duty of candor to the tribunal
The USPTO is a tribunal for purposes of 37 CFR 11.303, and knowingly making a false statement of material fact violates the duty of candor.
Question 4: Under 37 CFR 11.302, a practitioner must not bring or defend a proceeding unless there is a non-frivolous basis for doing so. In patent prosecution, this means a practitioner should not:
- File a patent application on an invention the practitioner knows lacks any patentable subject matter (Correct answer)
- File continuation applications to extend prosecution strategically
- Argue claim construction positions that differ from the examiner's interpretation
- Submit declarations from inventors attesting to the date of conception
Correct answer: File a patent application on an invention the practitioner knows lacks any patentable subject matter
Knowingly filing an application on non-patentable subject matter without any non-frivolous basis violates the duty not to make frivolous claims.
Question 5: A practitioner charges a client a contingent fee for obtaining a patent. Under the USPTO Rules of Professional Conduct, this fee arrangement is:
- Permitted as long as the fee is reasonable and the arrangement is in writing (Correct answer)
- Prohibited in all circumstances for patent prosecution matters
- Permitted only if the contingency is based on the patent's commercial success
- Permitted without any writing requirement if both parties verbally agree
Correct answer: Permitted as long as the fee is reasonable and the arrangement is in writing
Contingent fee arrangements are permissible for patent prosecution if the fee is reasonable and the agreement is memorialized in writing signed by the client.
Question 6: Which of the following actions by a practitioner constitutes a conflict of interest under 37 CFR 11.108(e)?
- Providing financial assistance to a client in connection with anticipated patent litigation beyond court costs and expenses (Correct answer)
- Advancing litigation expenses on behalf of a client pending resolution of the matter
- Paying court filing fees on behalf of an indigent client
- Loaning a client money to cover an IDS filing fee that will be repaid from patent proceeds
Correct answer: Providing financial assistance to a client in connection with anticipated patent litigation beyond court costs and expenses
Under 37 CFR 11.108(e), a practitioner may not provide financial assistance to a client in connection with pending litigation except for advancing court costs and expenses of litigation.
Question 7: A practitioner receives confidential information from a prospective client during an initial consultation, but then declines the representation. The practitioner may later:
- Represent an adverse party only if the confidential information would not be significantly harmful to the prospective client (Correct answer)
- Freely represent any adverse party because no attorney-client relationship was formed
- Use the prospective client's confidential information to benefit the adverse party
- Represent the adverse party if one year has passed since the initial consultation
Correct answer: Represent an adverse party only if the confidential information would not be significantly harmful to the prospective client
Under 37 CFR 11.118, even without forming a full attorney-client relationship, a practitioner owes duties to prospective clients and may only represent adverse parties if the confidential information would not be significantly harmful.
Patent Bar Exam Ethics and Professional Responsibility 4
Under 37 CFR 11.116, which of the following is a mandatory ground for withdrawal from representation?