The United States Patent and Trademark Office is proposing new rules that would align the USPTO’s professional responsibility rules with those of most other U.S. jurisdictions.  The proposal, which comes in the form of a notice of proposed rulemaking, seeks to replace the current Patent and Trademark Office Code of Professional Responsibility with new USPTO Rules of Professional Conduct, which are based on the Model Rules of Professional Conduct of the ABA, which were published in 1983, substantially revised in 2003 and updated through 2011.  The current USPTO Rules of Professional Conduct, adopted in 1985, were themselves based on the 1980 version of the Model Code of Professional Responsibility of the American Bar Association (“ABA”).

Also included in the proposed rulemaking are attempts by the Office to revise the existing procedural rules governing disciplinary investigations and proceedings.

The proposed USPTO Rules of Professional Conduct do not wholesale copy the ABA Model Rules.  The USPTO is not proposing the implementation of certain provisions of the ABA Model Rules that are inapplicable to patent practice. For example, the ABA Model Rules set forth specific provisions concerning domestic relations or criminal practice, which do not appear in the proposed USPTO Rules of Professional Responsibility.

Furthermore, in August 2012, the ABA House of Delegates approved revisions to the ABA Model Rules of Professional Conduct recommended by the ABA Commission on Ethics 20/20. These revisions have not been incorporated into these proposed rules because no State has yet adopted those changes.  Thus, it seems relatively clear that the USPTO is seeking to update the rules of Professional Conduct that apply to patent practitioners, but only to the extent that these USPTO rules coincide with obligations owed by patent attorneys who are necessarily governed by some similar set of rules already adopted in the jurisdictions in which they are licensed.

Those wishing to submit comments should provide those comments to the USPTO via email to ethicsrules.comments@uspto.gov or by mail to: Mail Stop OED-Ethics Rules, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.  Comments should be marked to the attention of William R. Covey, Deputy General Counsel for Enrollment and Discipline and Director of the Office of Enrollment and Discipline.  To be ensured of consideration, written comments must be received on or before December 17, 2012.

For those looking for a quick (relatively speaking) comparison of theABA Model Rules of Professional Conduct and the proposed USPTO Rules of Professional Conduct the USPTO has put together a comparison chart, which is accessible via the USPTO’s website at: www.uspto.gov/ip/boards/oed/ethics.jsp.

For what it is worth, these rules seem to be nearly identical to the rules that virtually all attorneys already operate under.  Those in the industry who will likely find the biggest change are patent agents who are not admitted to any State Bar and many (if not most or nearly all) of whom are not attorneys.  Still, this does not appear to present any thorny issues, although there will no doubt be at least some comments generated.

One positive thing is that these rule changes would remove the practitioner maintenance fees mentioned in 37 C.F.R. 1.21(a)(7) and (a)(8), but I don’t believe those were ever really implemented.  My recollection is that those fees have been waived in previous years anyway.

Notwithstanding the fact that this really doesn’t change a lot, at least for patent attorneys, this is just further evidence that the Kappos Administration continues to try and streamline and improve the patent process.  While I certainly appreciate all the effort they are putting into the Office, I do hope that we will sometime get a reprieve from new rules and proposed rules so that we can thoroughly digest all these changes and integrate them meaningfully into our daily practice.

Tags: ABA Model Rules, Ethics Rules, PTO

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