Patent Bar Exam Patent Ethics & Professional Responsibility 4 — Questions and Answers
Question 1: A client instructs a practitioner to include a claim the practitioner believes is clearly anticipated by prior art. What should the practitioner do?
- Refuse to file the application entirely
- Include the claim as instructed without question
- Advise the client of the legal issue and, if the client insists after counseling, may still file while noting the objection (Correct answer)
- File the claim but omit the prior art from the IDS
Correct answer: Advise the client of the legal issue and, if the client insists after counseling, may still file while noting the objection
A practitioner must advise the client of the legal problem; if the client insists, the practitioner may file but must still disclose known material prior art and cannot assist in fraud.
Question 2: Under what circumstances may a USPTO-registered practitioner be suspended or excluded from practice?
- Only after a criminal conviction in federal court
- After OED investigation, hearing, and a final decision finding violation of USPTO Rules of Professional Conduct (Correct answer)
- Automatically upon filing more than 500 patent applications per year
- Only if the practitioner is also a licensed attorney in their home state
Correct answer: After OED investigation, hearing, and a final decision finding violation of USPTO Rules of Professional Conduct
Suspension or exclusion follows an OED investigation and hearing process that results in a final determination of a rules violation.
Question 3: A practitioner in a small firm learns that a colleague represented the opposing party in a related matter two years ago. Under USPTO rules, what should happen?
- The conflict is automatically imputed to the firm and is always disqualifying
- The conflict is imputed to the firm but may be cured by screening (ethical wall) and informed client consent if no material confidential information was shared (Correct answer)
- Only the individual attorney who handled the prior matter is conflicted, not the firm
- The two-year gap means no conflict exists
Correct answer: The conflict is imputed to the firm but may be cured by screening (ethical wall) and informed client consent if no material confidential information was shared
Under imputed disqualification rules, firm-wide conflicts can sometimes be overcome by timely screening and client consent, particularly when no material confidential information was shared.
Question 4: An inventor discloses prior art to the practitioner during an intake meeting but later tells the practitioner to 'forget about it.' What must the practitioner do?
- Respect the client's wishes and not disclose the prior art
- Disclose the prior art in an IDS because it is known and potentially material (Correct answer)
- File a provisional application to defer the disclosure obligation
- Seek a second opinion from another attorney before acting
Correct answer: Disclose the prior art in an IDS because it is known and potentially material
Known material prior art must be disclosed in an IDS regardless of the client's preference; the duty of candor to the USPTO overrides the client's instruction to withhold it.
Question 5: What does 'gross negligence' mean in the context of USPTO practitioner discipline?
- Any mistake made in a patent application
- A pattern of conduct showing reckless disregard for the practitioner's professional obligations (Correct answer)
- Missing a single USPTO deadline
- Charging fees above the market rate
Correct answer: A pattern of conduct showing reckless disregard for the practitioner's professional obligations
Gross negligence in OED disciplinary proceedings refers to reckless disregard of professional obligations, not mere mistakes or isolated errors.
Question 6: A practitioner is offered stock in a startup in lieu of fees for patent work. Which ethical rule is most implicated?
- The duty of competence
- Rules on business transactions with clients, requiring fair terms, written disclosure, and client opportunity to seek independent counsel (Correct answer)
- The prohibition on contingency fees in patent prosecution
- The duty to avoid all financial relationships with clients
Correct answer: Rules on business transactions with clients, requiring fair terms, written disclosure, and client opportunity to seek independent counsel
Accepting equity in lieu of fees is a business transaction with a client, governed by rules requiring that terms be fair, disclosed in writing, and that the client have opportunity for independent counsel.
Question 7: Which statement correctly describes the duty of confidentiality for a patent practitioner?
- Confidentiality applies only to information the client explicitly marks as confidential
- Information relating to representation of a client must be kept confidential unless the client gives informed consent to disclosure or an exception applies (Correct answer)
- Confidentiality ends when the patent application publishes
- Confidentiality applies only during active representation
Correct answer: Information relating to representation of a client must be kept confidential unless the client gives informed consent to disclosure or an exception applies
The duty of confidentiality is broad — it covers all information relating to the representation regardless of its source, and generally continues beyond the end of representation.
Patent Bar Exam Patent Ethics & Professional Responsibility 4
A client instructs a practitioner to include a claim the practitioner believes is clearly anticipated by prior art.
What should the practitioner do?