Patent Bar Exam Ethics and Professional Responsibility 4

Question 1

Under 37 CFR 11.116, which of the following is a mandatory ground for withdrawal from representation?

Accepted Answer

The representation would result in violation of the USPTO Rules of Professional Conduct

Answer

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:

Accepted Answer

May represent the new client because the matters are not substantially related

Answer

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:

Accepted Answer

Violated the duty of candor to the tribunal

Answer

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:

Accepted Answer

File a patent application on an invention the practitioner knows lacks any patentable subject matter

Answer

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:

Accepted Answer

Permitted as long as the fee is reasonable and the arrangement is in writing

Answer

Contingent fee arrangements are permissible for patent prosecution if the fee is reasonable and the agreement is memorialized in writing signed by the client.

Patent Bar Exam Practice Test

Patent Bar Exam Practice Test

Patent Bar Exam Ethics and Professional Responsibility 4