Patent Bar Exam Patent Ethics & Professional Responsibility 5 — Questions and Answers
Question 1: A practitioner discovers that a prior attorney who handled the same patent matter engaged in fraud on the USPTO. The current practitioner has no personal involvement. What is the appropriate action?
- Take no action because the fraud was committed by someone else
- Advise the client of the situation, and if corrective action is warranted, take steps to correct the record with client consent (Correct answer)
- Immediately report the prior attorney to OED without telling the client
- File a continuation application to restart prosecution cleanly
Correct answer: Advise the client of the situation, and if corrective action is warranted, take steps to correct the record with client consent
Upon discovering prior fraud, the current practitioner should advise the client and, with client consent, take corrective steps; unilateral disclosure to OED without client consent is generally not required.
Question 2: Under 37 C.F.R. § 11.116, a practitioner may withdraw from representation without client consent if:
- The client owes fees for more than 30 days
- Withdrawal can be accomplished without material adverse effect on the client's interests (Correct answer)
- The case has become too technically complex
- The practitioner wants to take a higher-paying client in the same field
Correct answer: Withdrawal can be accomplished without material adverse effect on the client's interests
Permissive withdrawal without consent is allowed when it can be accomplished without material adverse effect on the client; other grounds require notice and protection steps.
Question 3: What is the consequence of a registered practitioner who is suspended from a state bar due to a disciplinary matter?
- No consequence, because USPTO registration is entirely independent of state bar status
- The USPTO OED may independently discipline the practitioner based on the state bar suspension (Correct answer)
- The practitioner is automatically excluded from USPTO practice permanently
- The practitioner may continue USPTO practice as a patent agent rather than an attorney
Correct answer: The USPTO OED may independently discipline the practitioner based on the state bar suspension
A state bar suspension may trigger independent OED disciplinary proceedings; however, USPTO discipline is its own proceeding and does not automatically mirror state bar outcomes.
Question 4: An examiner contacts a practitioner ex parte during prosecution to discuss the application informally without the client present. What should the practitioner do?
- Decline to speak with the examiner and require all communications in writing
- Speak freely with the examiner as these calls are routine and unregulated
- Participate in the interview but ensure the client is informed and that a proper interview summary is filed (Correct answer)
- Record the call without the examiner's consent for accuracy
Correct answer: Participate in the interview but ensure the client is informed and that a proper interview summary is filed
Examiner interviews are permitted and valuable, but the practitioner must notify the client and file a proper interview summary to maintain a complete prosecution record.
Question 5: A registered practitioner assists a non-registered person in preparing and filing a patent application for a third party. What rule does this violate?
- No rule, as long as the registered practitioner signs the application
- It constitutes aiding the unauthorized practice of patent law before the USPTO (Correct answer)
- It violates only state bar rules, not USPTO rules
- It is permissible if the non-registered person is a paralegal
Correct answer: It constitutes aiding the unauthorized practice of patent law before the USPTO
Assisting a non-registered individual in performing acts that constitute USPTO practice constitutes aiding the unauthorized practice of law, which is prohibited under USPTO conduct rules.
Question 6: Which of the following best describes a practitioner's duty regarding competence in a highly specialized technology area they are unfamiliar with?
- Accept the matter and learn on the job without informing the client
- Decline any matter outside the practitioner's undergraduate field of study
- Accept the matter only if the practitioner can achieve necessary competence through study or by associating with a competent practitioner (Correct answer)
- Refer the client to the USPTO's list of registered practitioners
Correct answer: Accept the matter only if the practitioner can achieve necessary competence through study or by associating with a competent practitioner
The duty of competence allows a practitioner to handle unfamiliar technology if they can achieve competence through study or by associating with a competent colleague in that field.
Question 7: A practitioner fails to respond to an Office Action due to a calendaring error, causing abandonment of the client's application. Which of the following best describes the practitioner's obligations?
- File a petition to revive on the basis of unintentional delay and inform the client of the error and its consequences (Correct answer)
- Refile the application as a new application without informing the client of the error
- Advise the client the application went abandoned for reasons outside the practitioner's control
- Take no action because revival is the client's responsibility
Correct answer: File a petition to revive on the basis of unintentional delay and inform the client of the error and its consequences
The practitioner must seek revival for unintentional delay, disclose the error to the client, and may face malpractice liability for the mistake.
Patent Bar Exam Patent Ethics & Professional Responsibility 5
A practitioner discovers that a prior attorney who handled the same patent matter engaged in fraud on the USPTO.
The current practitioner has no personal involvement.
What is the appropriate action?