Patent Bar Exam Patent Ethics & Professional Responsibility 3 — Questions and Answers
Question 1: Which of the following is NOT a ground for discipline by the USPTO Office of Enrollment and Discipline (OED)?
- Conviction of a crime involving moral turpitude
- Willful violation of USPTO rules of professional conduct
- Filing too many continuation applications (Correct answer)
- Engaging in disreputable or gross misconduct in patent proceedings
Correct answer: Filing too many continuation applications
Filing continuation applications is a legitimate prosecution strategy and is not a disciplinary ground; the other choices are explicit OED disciplinary bases.
Question 2: When a practitioner withdraws from representing a client in a USPTO matter, what obligation remains?
- No further obligations exist after formal withdrawal
- The practitioner must take steps to protect the client's interests, such as notifying the client and returning their file (Correct answer)
- The practitioner may retain the client file as security for unpaid fees
- The practitioner must immediately notify the USPTO of all confidential communications
Correct answer: The practitioner must take steps to protect the client's interests, such as notifying the client and returning their file
Upon withdrawal, practitioners must take reasonable steps to protect the client's interests, including timely notice and returning the client's papers.
Question 3: What is the significance of the 'reasonable belief' standard in determining whether prior art is material under Rule 1.56?
- Information is material only if it is identical to a claim element
- Information is material if a reasonable examiner would consider it important in deciding whether to allow a claim (Correct answer)
- Information is material only if the inventor actually knew of it
- Information is material only if it was published in a peer-reviewed journal
Correct answer: Information is material if a reasonable examiner would consider it important in deciding whether to allow a claim
Under Rule 1.56, information is material if a reasonable examiner would consider it important in deciding patentability of any claim.
Question 4: A practitioner receives a settlement offer in a USPTO inter partes review (IPR) that the client has not yet seen. The practitioner believes it is a poor offer. What should the practitioner do?
- Reject it immediately as it is a bad offer
- Accept it without consulting the client to save time
- Promptly communicate the offer to the client and let the client decide (Correct answer)
- Counter the offer without informing the client
Correct answer: Promptly communicate the offer to the client and let the client decide
The decision to settle belongs to the client; the practitioner must promptly communicate all settlement offers and let the client make an informed decision.
Question 5: Which of the following scenarios most clearly creates an impermissible conflict of interest for a patent practitioner?
- Prosecuting patents in two unrelated technology fields for different clients
- Representing the assignee of a patent in an IPR while simultaneously representing a party challenging the same patent (Correct answer)
- Filing a continuation application while appealing a rejection in the parent
- Charging different hourly rates to different clients
Correct answer: Representing the assignee of a patent in an IPR while simultaneously representing a party challenging the same patent
Simultaneously representing both the patent owner and the challenger in the same IPR proceeding creates a direct, impermissible conflict of interest.
Question 6: Under 37 C.F.R. § 11.107, a practitioner may represent a client despite a conflict of interest if:
- The practitioner reasonably believes the representation will not adversely affect either client and both clients give informed consent in writing (Correct answer)
- Only one of the affected clients gives consent
- The practitioner's firm has a Chinese wall separating the matters
- The conflict is theoretical and not yet actual
Correct answer: The practitioner reasonably believes the representation will not adversely affect either client and both clients give informed consent in writing
Under § 11.107, concurrent representation is allowed only if the practitioner reasonably believes it won't adversely affect either client AND both clients give informed written consent.
Question 7: A practitioner who is also a named inventor on a patent application wishes to prosecute that application. What ethical issue does this present?
- No issue — inventors commonly prosecute their own applications
- A potential conflict between the practitioner's personal interest in obtaining a patent and the duty of candor to the USPTO (Correct answer)
- A violation of 35 U.S.C. § 102 because the practitioner has prior knowledge
- It is categorically prohibited by USPTO rules
Correct answer: A potential conflict between the practitioner's personal interest in obtaining a patent and the duty of candor to the USPTO
When a practitioner is also an inventor, their personal interest in the patent's grant may conflict with the duty of candor and objective advocacy.
Patent Bar Exam Patent Ethics & Professional Responsibility 3
Which of the following is NOT a ground for discipline by the USPTO Office of Enrollment and Discipline (OED)?