Patent Bar Exam Ethics and Professional Responsibility 5 — Questions and Answers
Question 1: A practitioner who has been disbarred from a state bar but remains registered with the USPTO may:
- Face separate USPTO disciplinary proceedings based on the state disbarment (Correct answer)
- Continue to practice before the USPTO because USPTO registration is independent
- Immediately resume state bar membership through reciprocal admission
- Practice before the USPTO only for pro se inventors until reinstated
Correct answer: Face separate USPTO disciplinary proceedings based on the state disbarment
Under 37 CFR 11.24, a disciplinary action in another jurisdiction is grounds for reciprocal discipline before the USPTO, including possible exclusion.
Question 2: Under 37 CFR 11.105, before or within a reasonable time after commencing representation, a practitioner must:
- Communicate the basis or rate of the fee and expenses to the client (Correct answer)
- Obtain a signed retainer agreement notarized by a public notary
- File a notice of engagement with the USPTO identifying the fee arrangement
- Post the fee schedule on the practitioner's public website
Correct answer: Communicate the basis or rate of the fee and expenses to the client
37 CFR 11.105 requires that the basis or rate of the fee and expenses be communicated to the client before or within a reasonable time after commencing representation.
Question 3: A practitioner is asked to sign a declaration on behalf of an inventor who is unavailable. The practitioner knows the facts stated are true. Under the USPTO rules, the practitioner should:
- Decline to sign the declaration because only the inventor may make the required oath (Correct answer)
- Sign the declaration since the practitioner can verify the facts independently
- File the declaration unsigned with a note explaining the inventor's unavailability
- Submit the declaration with the practitioner's name substituted for the inventor's
Correct answer: Decline to sign the declaration because only the inventor may make the required oath
The inventor's oath or declaration must be signed by the inventor (or a permitted substitute), not by the practitioner, even if the practitioner knows the facts to be true.
Question 4: Under the USPTO Rules of Professional Conduct, a supervisory practitioner is responsible for another practitioner's ethical violation when:
- The supervisory practitioner ordered, ratified, or knew of and failed to take remedial action for the misconduct (Correct answer)
- The supervisory practitioner is the managing partner of the firm at the time of the violation
- The subordinate practitioner committed the violation without any guidance from the supervisory practitioner
- The violation involved submission of an application to the USPTO under the firm's name
Correct answer: The supervisory practitioner ordered, ratified, or knew of and failed to take remedial action for the misconduct
Under 37 CFR 11.505, a supervisory practitioner is responsible for misconduct they ordered, ratified, or failed to remedy after learning of it.
Question 5: Which of the following is NOT an element required to establish inequitable conduct before the USPTO under Therasense, Inc. v. Becton, Dickinson and Co.?
- The withheld information was cumulative of other information already of record (Correct answer)
- The withheld information was material to patentability
- The practitioner acted with specific intent to deceive the USPTO
- The withheld information was known to the practitioner or applicant
Correct answer: The withheld information was cumulative of other information already of record
Under Therasense, cumulative information is not material, so withholding information that is merely cumulative cannot establish inequitable conduct.
Question 6: A practitioner receives a settlement offer from an opposing party and fails to communicate it to the client for three weeks. Under 37 CFR 11.104, the practitioner has:
- Violated the duty to promptly inform the client of a settlement offer requiring their decision (Correct answer)
- Complied with the rules because settlement decisions belong to the practitioner
- Violated the rules only if the offer was above the practitioner's valuation of the case
- Acted permissibly because the practitioner must evaluate all offers before burdening the client
Correct answer: Violated the duty to promptly inform the client of a settlement offer requiring their decision
Under 37 CFR 11.104, a practitioner must promptly inform the client of any settlement offer requiring the client's informed decision.
Question 7: A registered patent practitioner discovers that a patent application they previously filed contains an inaccurate inventor declaration that was not intentionally false at the time but is now known to be erroneous. The practitioner should:
- Advise the client to file a corrected declaration and correct the record before the USPTO (Correct answer)
- Do nothing because the declaration was truthful when made
- Withdraw from the representation without disclosing the error to the USPTO
- File a supplemental information disclosure statement to cure the defect
Correct answer: Advise the client to file a corrected declaration and correct the record before the USPTO
When a false statement of material fact in a prior submission is discovered, the practitioner must take reasonable remedial measures including advising the client to correct the record.
Patent Bar Exam Ethics and Professional Responsibility 5
A practitioner who has been disbarred from a state bar but remains registered with the USPTO may: