Patent Bar Exam Patent Ethics & Professional Responsibility 2 — Questions and Answers
Question 1: A patent practitioner learns that a client made a material misrepresentation to the USPTO during prosecution. The client refuses to authorize corrective action. What is the practitioner's ethical obligation?
- Continue representation without disclosing the fraud
- Withdraw from representation if the client refuses to correct the fraud (Correct answer)
- Inform the USPTO immediately without client consent
- File a continuation to obscure the misrepresentation
Correct answer: Withdraw from representation if the client refuses to correct the fraud
Under 37 C.F.R. § 10.23 and OED rules, a practitioner must withdraw if the client refuses to correct a material misrepresentation to the USPTO.
Question 2: Which of the following best describes the 'duty of candor' under 37 C.F.R. § 1.56?
- A duty to disclose only prior art found by the USPTO examiner
- A duty of each individual associated with filing to disclose all known material information (Correct answer)
- A duty that applies only to the lead inventor
- A duty limited to disclosing prior art published within five years of the filing date
Correct answer: A duty of each individual associated with filing to disclose all known material information
Rule 1.56 imposes a duty on each individual associated with a patent application to disclose all information material to patentability.
Question 3: A practitioner is asked by a client to sign an oath on behalf of the inventor who is unavailable. Under 37 C.F.R. § 1.64, what is the appropriate course of action?
- Sign the oath as the inventor's agent
- File the application without an oath and argue the inventor cannot be found
- Execute a substitute statement if the inventor is deceased, legally incapacitated, or cannot be found after diligent effort (Correct answer)
- Use a power of attorney in lieu of the inventor's oath
Correct answer: Execute a substitute statement if the inventor is deceased, legally incapacitated, or cannot be found after diligent effort
Under 37 C.F.R. § 1.64, a substitute statement may be filed when the inventor is deceased, legally incapacitated, or cannot be reached after diligent effort.
Question 4: Which action constitutes 'inequitable conduct' that can render a patent unenforceable?
- Disclosing too much prior art in an IDS
- Failing to disclose known material information with an intent to deceive the USPTO (Correct answer)
- Filing a continuation application after allowance
- Submitting an IDS after the first office action
Correct answer: Failing to disclose known material information with an intent to deceive the USPTO
Inequitable conduct requires both materiality and intent to deceive; withholding known material information with deceptive intent can render a patent unenforceable.
Question 5: An attorney represents both a startup and its lead investor in a patent matter. No adverse interests currently exist. What must the attorney do?
- Nothing, since no conflict exists yet
- Decline to represent both parties regardless of circumstances
- Obtain informed written consent from both clients acknowledging the joint representation (Correct answer)
- Represent only the party with the larger financial interest
Correct answer: Obtain informed written consent from both clients acknowledging the joint representation
Even when interests are currently aligned, joint representation requires informed written consent from all clients due to the potential for future conflicts.
Question 6: Under USPTO rules, a registered patent agent may do which of the following?
- Represent clients in federal district court patent litigation
- Prepare and prosecute patent applications before the USPTO (Correct answer)
- Give legal opinions on patent licensing agreements
- Negotiate settlements in patent infringement disputes
Correct answer: Prepare and prosecute patent applications before the USPTO
A registered patent agent is authorized to prepare and prosecute patent applications before the USPTO but may not practice law in other respects.
Question 7: A practitioner discovers after a patent issues that prior art was inadvertently not disclosed. What is the best course of action?
- Take no action because the patent has already issued
- File a reissue application or request for ex parte reexamination to cure the inequitable conduct (Correct answer)
- Simply inform the client and document the oversight
- File a continuation-in-part to incorporate the missed prior art
Correct answer: File a reissue application or request for ex parte reexamination to cure the inequitable conduct
Filing a reissue or requesting reexamination allows correction of errors arising from failure to disclose material prior art after a patent issues.
Patent Bar Exam Patent Ethics & Professional Responsibility 2
A patent practitioner learns that a client made a material misrepresentation to the USPTO during prosecution.
The client refuses to authorize corrective action.
What is the practitioner's ethical obligation?