[Federal Register Volume 78, Number 64 (Wednesday, April 3, 2013)]
[Rules and Regulations]
[Pages 20180-20211]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-07382]



[[Page 20179]]

Vol. 78

Wednesday,

No. 64

April 3, 2013

Part II





Department of Commerce





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Patent and Trademark Office





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37 CFR Parts 1, 2, 7, et al.





Changes to Representation of Others Before the United States Patent and 
Trademark Office; Final Rule

  Federal Register / Vol. 78 , No. 64 / Wednesday, April 3, 2013 / 
Rules and Regulations  

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 2, 7, 10, 11 and 41

[Docket No. PTO-C-2012-0034]
RIN 0651-AC81


Changes to Representation of Others Before The United States 
Patent and Trademark Office

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office or 
USPTO) is adopting the new USPTO Rules of Professional Conduct (USPTO 
Rules), which are based on the American Bar Association's (ABA) Model 
Rules of Professional Conduct (ABA Model Rules), which were published 
in 1983, substantially revised in 2003 and updated through 2012. The 
Office has also revised the existing procedural rules governing 
disciplinary investigations and proceedings. These changes will enable 
the Office to better protect the public while also providing 
practitioners with substantially uniform disciplinary rules across 
multiple jurisdictions.

DATES: Effective Date: May 3, 2013.

FOR FURTHER INFORMATION CONTACT: William R. Covey, Deputy General 
Counsel for Enrollment and Discipline and Director of the Office of 
Enrollment and Discipline, by telephone at 571-272-4097.

SUPPLEMENTARY INFORMATION:

Executive Summary

    Pursuant to 35 U.S.C. 2(b)(2)(D), the Office governs ``the 
recognition and conduct of agents, attorneys, or other persons 
representing applicants or other parties before the Office.'' The 
Office also has the authority to suspend or exclude from practice 
before the Office any practitioner who is ``shown to be incompetent or 
disreputable, or guilty of gross misconduct, or who does not comply 
with the regulations established under section 2(b)(2)(D) of this 
title.'' 35 U.S.C. 32. Pursuant to the authority provided in sections 
2(b)(2)(D) and 32 of Title 35, practitioners representing parties in 
patent, trademark, and other non-patent matters presently are required 
to conform to the Patent and Trademark Office Code of Professional 
Responsibility (USPTO Code) set forth in 37 CFR 10.20 through 10.112. 
These rules have been in place since 1985 and are based on the ABA 
Model Code of Professional Responsibility. See 50 FR 5158 (Feb. 6, 
1985). Since that time, the vast majority of State bars in the United 
States have adopted substantive disciplinary rules based on the newer 
ABA Model Rules. As noted below, the Office believes individuals 
representing others before the Office will benefit from modernization 
of the regulations governing professional conduct before the Office and 
harmonization of these regulations with corresponding rules adopted by 
bars in the States and the District of Columbia.
    On October 18, 2012, the Office published Changes to the 
Representation of Others Before the United States Patent and Trademark 
Office, a Notice of Proposed Rulemaking in the Federal Register (77 FR 
64190) proposing the new USPTO Rules. The changes from the existing 
USPTO Code are intended to bring standards of ethical practice before 
the Office into closer conformity with the professional responsibility 
rules adopted by nearly all States and the District of Columbia, while 
addressing circumstances particular to practice before the Office. By 
adopting professional conduct rules consistent with the ABA Model Rules 
and the professional responsibility rules of 50 U.S. jurisdictions, the 
USPTO is providing attorneys with consistent professional conduct 
standards, and large bodies of both case law and opinions written by 
disciplinary authorities that have adopted the ABA Model Rules. At this 
time, approximately 41,000 individuals are registered practitioners, of 
whom at least 75% are attorneys. The registered patent attorneys have 
offices located in all fifty States, the District of Columbia, and more 
than forty foreign countries. In addition to registered patent 
attorneys, any attorney who is a member in good standing of the bar of 
the highest court of a State, territory or possession of the United 
States is eligible to practice before the Office in trademark and other 
non-patent matters, without becoming a registered practitioner. 5 
U.S.C. 500(b); 37 CFR 11.14. Attorneys who appear before the Office in 
non-patent matters are subject to these rules as well. 37 CFR 11.19.
    A body of precedent specific to practice before the USPTO will 
develop as disciplinary matters brought under the USPTO Rules progress 
through the USPTO and the federal courts. In the absence of USPTO-
specific precedent, practitioners may refer to various sources for 
useful information. For example, precedent based on the USPTO Code will 
assist interpretation of professional conduct standards under the USPTO 
Rules. The USPTO Rules fundamentally carry forward the existing and 
familiar requirements of the USPTO Code. A practitioner also may refer 
to the Comments and Annotations to the ABA Model Rules, as amended 
through August 2012, for useful information as to how to interpret the 
equivalent USPTO Rules. Additionally, relevant information may be 
provided by opinions issued by State bars and disciplinary decisions 
based on similar professional conduct rules in the States. Such 
decisions and opinions are not binding precedent relative to USPTO 
Rules, but may provide useful tools in interpreting the Rules while a 
larger body of USPTO-specific precedent is established.
    This rulemaking benefits and reduces costs for most practitioners 
by clarifying and streamlining their professional responsibility 
obligations. The USPTO is adopting professional conduct rules 
consistent with the ABA Model Rules and the professional responsibility 
rules already followed by 50 U.S. jurisdictions, i.e., the District of 
Columbia and 49 States, excluding California. Further, these changes 
are not a significant deviation from the professional responsibility 
rules for practitioners that are already required by the Office.
    Table 1 shows the principal sources of the USPTO Rules. In general, 
the numbering of the USPTO Rules largely tracks the numbering of the 
ABA Model Rules. For example, USPTO Rule 11.101 parallels ABA Model 
Rule 1.1; USPTO Rule 11.102 parallels ABA Model Rule 1.2; USPTO Rule 
11.201 parallels ABA Model Rule 2.1; et cetera. The discussion below 
highlights instances where the USPTO Rules diverge from the ABA Model 
Rules.
    This rulemaking reserves or declines to implement certain 
provisions set forth in the ABA Model Rules. For example, the ABA Model 
Rules set forth specific provisions concerning domestic relations or 
criminal practice that do not appear in the USPTO Rules. See, e.g., 
sections 11.102, 11.105(d), 11.108(g), 11.108(j), 11.301, 11.303(a)(3), 
11.306, 11.308 and 11.704(c). Conduct that would violate an unadopted 
provision might nevertheless also violate an adopted provision (e.g., 
the conduct might also violate the broader obligations under section 
11.804 of the USPTO Rules). In addition, a licensed attorney is subject 
to the professional conduct rules of appropriate State licensing 
authorities, as well as of any courts before which the attorney 
practices. Failure to comply with those rules may lead to disciplinary 
action against the practitioner by the appropriate State bar or court 
and, in turn, possible reciprocal action against

[[Page 20181]]

the practitioner by the USPTO. See 37 CFR 11.24 and 11.804(h).
    In August 2012, the ABA House of Delegates approved revisions to 
the ABA Model Rules recommended by the ABA Commission on Ethics 20/20. 
See http://www.americanbar.org/content/dam/aba/administrative/ethics_2020/20120808_house_action_compilation_redline_105a-f.authcheckdam.pdf. The Notice of Proposed Rulemaking, published on 
October 18, 2012, solicited comments as to whether those changes should 
be incorporated into the USPTO Rules. Based upon the feedback the 
Office received, the Office has incorporated some technical revisions 
into these final rules.
    The Office did not change the preamble to section 11.1. This 
preamble provides in part: ``This part governs solely the practice of 
patent, trademark, and other law before the United States Patent and 
Trademark Office. Nothing in this part shall be construed to preempt 
the authority of each State to regulate the practice of law, except to 
the extent necessary for the United States Patent and Trademark Office 
to accomplish its Federal objectives.'' Attorneys who practice before 
the Office are subject to professional conduct rules established by the 
Office as well as the appropriate State bars.
    The Office adopted rules governing the conduct of disciplinary 
investigations in 2008. See 73 FR 47650 (Aug. 14, 2008). Experience 
under these rules has demonstrated areas in which the rules could be 
clarified. Accordingly, the Office also revised existing rules set 
forth at 37 CFR 11.19, 11.20, 11.22, 11.32, 11.34, 11.35 and 11.54. 
Finally, the Office is incorporating the survey rule, currently set 
forth at 37 CFR 10.11, as section 11.11(a)(2).

Discussion of Specific Rules

    Section 1.4(d)(4) is corrected by deleting the reference to Sec.  
11.804(b)(9), which does not exist.
    Section 1.21(a)(7) and (a)(8) is deleted since the annual 
practitioner maintenance fee is removed by this rule. The Office 
published a Final Rule, Setting and Adjusting Patent Fees, 78 FR 4212 
(Jan. 18, 2013), wherein the practitioner maintenance fee is set at 
$120, but also noting that the Office has not collected those fees 
since 2009, making total collections $0. The Office is removing this 
practitioner maintenance fee, which is set forth in 11.8(d).
    Section 2.2(c) is revised to delete the reference to part 10 of 
this chapter, which is removed and reserved.
    Section 7.25(a) is revised to delete the reference to part 10 of 
this chapter, which is removed and reserved.
    Part 10 is removed and reserved.
    Section 11.1 defines terms used in the USPTO Rules. The definitions 
of mandatory disciplinary rule and matter are deleted; the definitions 
of fraud or fraudulent and practitioner are revised; and the terms 
confirmed in writing, firm or law firm, informed consent, law-related 
services, partner, person, reasonable belief or reasonably believes, 
reasonably should know, screened, tribunal, and writing or written are 
defined. The definition of practitioner is updated to refer to section 
11.14 rather than section 10.14, and to refer to Sec.  11.14(a), (b) 
and (c) rather than Sec.  11.14(b), (c) and (e). The new definitions 
generally comport to definitions set forth in the ABA Model Rules. 
However, the definition of fraud or fraudulent used in the ABA Model 
Rules is not adopted. Instead, the Office believes a uniform definition 
based on common law should apply to all individuals subject to the 
USPTO Rules. Accordingly, the definition is based on the definition of 
common law fraud discussed by the United States Court of Appeals for 
the Federal Circuit. See Unitherm Food Systems, Inc. v. Swift-Ekrich, 
Inc., 375 F.3d 1341, 1358 (Fed. Cir. 2004); In re Spalding Sports 
Worldwide, Inc., 203 F.3d 800, 807 (Fed. Cir. 2000). Further, in the 
definition of tribunal, the reference to ``the Office'' includes those 
persons or entities acting in an adjudicative capacity.
    Section 11.2(c) is revised to delete redundant language.
    Section 11.2(d) is revised to clarify that a party dissatisfied 
with a final decision of the Office of Enrollment and Discipline (OED) 
Director regarding enrollment or recognition must exhaust 
administrative remedies before seeking judicial review.
    Section 11.2(e) is revised to clarify that an action or notice of 
the OED Director is not a final agency decision under the 
Administrative Procedure Act, 5 U.S.C. 551 et seq. A party dissatisfied 
with an action or notice of the OED Director, during or at the 
conclusion of a disciplinary investigation, must exhaust administrative 
remedies before seeking judicial review.
    Section 11.8(d) is reserved. The USPTO is deleting reference to an 
annual practitioner maintenance fee.
    Section 11.9(b) is revised to change the language ``Bureau of 
Citizenship and Immigration Services'' to ``United States Government.'' 
This minor change is necessary to comport with the current practice of 
granting limited recognition, when appropriate, to individuals issued 
employment authorizations by other United States Government agencies, 
such as the Department of State. The Office does not expect this rule 
to increase or decrease the grant of limited recognition by the Office.
    Section 11.11 is revised to change the language ``registered 
attorney or agent'' to ``registered practitioner'' and add the term 
``registered'' as appropriate.
    Section 11.11(a) and (b) is revised to substantially incorporate 
the provisions currently set forth in 37 CFR 10.11. Specifically, the 
provisions of Sec.  11.11(a) appear as Sec.  11.11(a)(1) and the 
provisions of Sec.  10.11 of the USPTO Code appear as Sec.  
11.11(a)(2). Additionally, Sec.  11.11(b) is revised to provide that a 
practitioner failing to comply with Sec.  11.11(a)(2) would be placed 
on administrative suspension, rather than removed from the register as 
set forth in section 10.11 of the USPTO Code. Additionally, Sec.  
11.11(b)(1) is revised to delete reference to Sec.  11.8(d). Also, 
section 11.11(b)(4) is reserved since an annual practitioner 
maintenance fee is deleted by this final rule.
    Section 11.11(c) is revised to change the reference to the 
``Mandatory Disciplinary Rules'' to read ``USPTO Rules of Professional 
Conduct.'' Section 11.11(c) is further revised to delete reference to 
an annual practitioner maintenance fee.
    Section 11.11(d) is revised by updating the previous reference to 
section 10.40 to refer to Sec.  11.116, which includes provisions 
related to withdrawal from representation. Section 11.11(d) is also 
revised to delete reference to an annual practitioner maintenance fee. 
Paragraphs (d)(2) and (d)(4) are deleted and reserved since they were 
directed to an annual practitioner maintenance fee.
    Section 11.11(e) is revised to update the reference to the 
``Mandatory Disciplinary Rules'' to read ``USPTO Rules of Professional 
Conduct.''
    Section 11.11(f) is revised to remove reference to Sec.  
1.21(a)(7)(i) and (a)(8)(i), which provided for an annual practitioner 
maintenance fee.
    Section 11.19(a) is revised to expressly provide jurisdiction over 
a person not registered or recognized to practice before the Office if 
the person provides or offers to provide any legal services before the 
Office. This change is consistent with the USPTO's statutory and 
inherent authority to regulate practice before the Office, and it is 
consistent with the second sentence of ABA Model Rule 8.5(a). Nothing 
in this change or in part 11 limits the Office from continuing to 
exercise

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independent authority to exclude non-practitioners from proceedings 
before the Office, or to deny or revoke public access to electronic 
systems maintained by the Office, as warranted.
    Section 11.20(a)(4) is revised to clarify that disciplinary 
sanctions that may be imposed upon revocation of probation are not 
necessarily limited to the remainder of the probation period.
    Section 11.20(b) is revised to more clearly set forth conditions 
that may be imposed with discipline.
    Section 11.21 is revised to update the reference to the ``Mandatory 
Disciplinary Rules'' to read ``USPTO Rules of Professional Conduct.''
    Section 11.22 is revised to change the title to ``Disciplinary 
Investigations'' for clarity.
    Section 11.22(f)(2) is revised to update the reference to the 
``Mandatory Disciplinary Rules'' to read ``USPTO Rules of Professional 
Conduct.''
    Section 11.22(i) is revised to correct a technical error in the 
heading. Specifically, the reference to a warning letter in the heading 
could mistakenly have been viewed as indicating that issuance of a 
warning means at least one of the conditions set forth in that section 
apply. Indeed, a warning may be issued in situations where, for 
example, there is sufficient evidence to conclude that there is 
probable cause to believe that grounds exist for discipline. However, 
in a situation where a potential violation of the disciplinary rules is 
minor in nature or was not willful, it often is in the interest of the 
Office, practitioners, and the public to resolve the matter with a 
warning rather than a formal disciplinary action.
    Section 11.24(e) is revised to make a technical correction. 
Specifically, the previous reference to 37 CFR 10.23 is updated to 
refer to Sec.  11.804.
    Section 11.25(a) is revised to update the reference to the 
``Mandatory Disciplinary Rules'' to read ``USPTO Rules of Professional 
Conduct.''
    Section 11.32 is revised to clarify that the OED Director has the 
authority to exercise discretion in referring matters to the Committee 
on Discipline and in recommending settlement or issuing a warning in 
matters where the Committee on Discipline has made a probable cause 
determination. The section is also revised to make a technical 
correction by deleting the reference to sections 11.19(b)(3) through 
(5), which do not exist.
    Section 11.34 is revised to incorporate several technical 
corrections. Specifically, section 11.34(a) is revised to eliminate an 
erroneous reference to Sec.  11.25(b)(4). The requirements set forth in 
Sec.  11.34 apply to complaints filed in disciplinary proceedings under 
sections 11.24, 11.25, and 11.32. The revision to Sec.  11.34(a)(1) 
clarifies that an individual other than a ``practitioner'' may be a 
respondent. The revision to Sec.  11.34(b) updates the reference to the 
``Mandatory Disciplinary Rules'' to read ``USPTO Rules of Professional 
Conduct.''
    Section 11.35(a)(2)(ii) and (a)(4)(ii) is revised by changing the 
term ``a nonregistered practitioner'' to ``not registered.'' The 
section now specifies the service address for an individual subject to 
the Office's disciplinary jurisdiction who does not meet the definition 
of ``practitioner'' set forth in Sec.  11.1.
    Section 11.54(a)(2) and (b) is revised to clarify that an initial 
decision of the hearing officer may impose conditions deemed 
appropriate under the circumstances, and should explain the reason for 
probation and any conditions imposed with discipline.
    Section 11.58(b)(2) is revised to update the reference to Sec.  
10.40 to refer to Sec.  11.116.
    Section 11.58(f)(1)(ii) is revised to update the reference to the 
``Mandatory Disciplinary Rules'' to read ``USPTO Rules of Professional 
Conduct'' and to delete reference to Sec.  10.20(b).
    Section 11.61 is deleted and reserved. In its place, a savings 
clause is added at the end of part 11.

USPTO Rules of Professional Conduct

    Section 11.101 addresses the requirement that practitioners provide 
competent representation to a client. Consistent with the provisions of 
37 CFR 11.7, this rule acknowledges that competent representation in 
patent matters requires scientific and technical knowledge, skill, 
thoroughness and preparation as well as legal knowledge, skill, 
thoroughness and preparation, and otherwise corresponds to ABA Model 
Rule 1.1.
    Section 11.102 provides for the scope of representation of a client 
by a practitioner and the allocation of authority between the client 
and the practitioner. This section corresponds to ABA Model Rule 1.2. 
However, the USPTO is declining to enact the substance of the last 
sentence of ABA Model Rule 1.2(a) as the USPTO does not regulate 
criminal law practice. Nonetheless, a patent attorney who engages in 
the practice of criminal law is subject to the disciplinary rules of 
the appropriate State and Court authorities. Failure to comply with 
those rules may lead to disciplinary action against the practitioner 
and, in turn, possible reciprocal action against the practitioner by 
the USPTO. See 37 CFR 11.24 and 11.804(h). Moreover, the lack of a 
specific disciplinary rule concerning particular conduct should not be 
viewed as suggesting that the conduct would not violate general 
provisions of the USPTO Rules.
    Section 11.102(b) is reserved as the USPTO has declined to enact a 
specific rule regarding a practitioner's endorsement of a client's view 
or activities. However, the USPTO does not imply that a practitioner's 
representation of a client constitutes an endorsement of the client's 
political, economic, social, or moral views or activities.
    Section 11.103 addresses the practitioner's duty to act with 
reasonable diligence and promptness in representing a client. This rule 
corresponds to ABA Model Rule 1.3.
    Section 11.104 addresses the practitioner's duty to communicate 
with the client. This rule corresponds to ABA Model Rule 1.4. As in 
Sec.  10.23(c)(8), under this rule a practitioner should not fail to 
timely and adequately inform a client or former client of 
correspondence received from the Office in a proceeding before the 
Office or from the client's or former client's opponent in an inter 
partes proceeding before the Office when the correspondence (i) could 
have a significant effect on a matter pending before the Office; (ii) 
is received by the practitioner on behalf of a client or former client; 
and (iii) is correspondence of which a reasonable practitioner would 
believe under the circumstances the client or former client should be 
notified.
    Section 11.105 addresses the practitioner's responsibilities 
regarding fees. This rule corresponds to ABA Model Rule 1.5. Nothing in 
paragraph (c) should be construed to prohibit practitioners gaining 
proprietary interests in patents under section 11.108(i)(3).
    Section 11.105(d) is reserved as the USPTO has declined to enact a 
specific rule regarding contingent fee arrangements for domestic 
relations and criminal matters.
    Section 11.106 addresses the practitioner's responsibilities 
regarding maintaining confidentiality of information. This section 
generally corresponds to ABA Model Rule 1.6, but it includes exceptions 
in the case of inequitable conduct before the Office, in addition to 
crimes and fraud.
    Section 11.106(b)(3) states that a practitioner may reveal 
information relating to the representation of a client to the extent 
the practitioner reasonably believes necessary to prevent, mitigate, or 
rectify substantial injury to the financial interests or property of 
another that is reasonably certain to result or has

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resulted from inequitable conduct before the Office.
    Section 11.106(c) provides that a practitioner is required to 
disclose to the Office all information necessary to comply with the 
duty of disclosure rules of this subchapter in practice before the 
Office. Solely for the purposes of enforcement under 37 CFR part 11 
(Representation of Others Before The United States Patent and Trademark 
Office), if a practitioner has a conflict of interest in a given 
matter, arising from a different client, timely withdrawal by the 
practitioner from the given matter would generally result in OED not 
seeking discipline for conflicts of interest under part 11.
    Section 11.107 prohibits a practitioner from representing a client 
if the representation involves a concurrent conflict of interest. This 
rule corresponds to ABA Model Rule 1.7. See also 37 CFR 10.66.
    Section 11.108 addresses conflicts of interest for current clients 
and specific rules, including rules regarding practitioners entering 
into business transactions with clients, the use of information by a 
practitioner relating to representation of a client, gifts between the 
practitioner and a client, literary rights based on information 
relating to representation of a client, a practitioner's provision of 
financial assistance to the client, compensation for services by a 
third party, aggregate settlement of claims where the practitioner 
represents two or more clients in a similar matter, agreements between 
the client and practitioner limiting liability of the practitioner, and 
the practitioner's acquiring a proprietary interest in the matter. This 
rule corresponds to ABA Model Rule 1.8.
    Section 11.108(e) provides that a practitioner shall not provide 
financial assistance to a client in connection with pending or 
contemplated litigation or proceeding before the Office, except that a 
practitioner may advance court or tribunal costs and expenses of 
litigation. However, a practitioner representing an indigent client may 
pay court or tribunal costs and expenses of litigation or a proceeding 
before the Office on behalf of the client. Section 11.108(e)(3) also 
provides that a practitioner may advance costs and expenses in 
connection with a proceeding before the Office provided the client 
remains ultimately liable for such costs and expenses. Section 
11.108(e)(4) provides that a practitioner may also advance any fee 
required to prevent or remedy an abandonment of a client's application 
by reason of an act or omission attributable to the practitioner and 
not to the client, whether or not the client is ultimately liable for 
such fee. See 37 CFR 10.64(b).
    Section 11.108(g) differs from ABA Model Rule 1.8(g) in that the 
USPTO has declined to enact the portion of the rule relating to 
representation of clients in criminal matters and the corresponding 
regulation of multiple clients agreeing to an aggregated agreement as 
to guilty or nolo contendere pleas.
    Section 11.108(i) differs from ABA Model Rule 1.8(i) in that the 
USPTO provides that a practitioner may, in a patent case, take an 
interest in the patent or patent application as part or all of his or 
her fee. See 37 CFR 10.64(a)(3). However, practitioners who take an 
interest in a patent or patent application as part of or all of their 
fee remain subject to the conflict of interest provisions of Sec.  
11.108.
    Section 11.108(j) is reserved. The USPTO has declined to enact a 
rule that specifically addresses sexual relations between practitioners 
and clients. Because of the fiduciary duty to clients, combining a 
professional relationship with any intimate personal relationship may 
raise concerns about conflict of interest and impairment of the 
judgment of both practitioner and client. To the extent warranted, such 
conduct may be investigated under general provisions of the USPTO 
Rules. See Sec.  11.804.
    Section 11.109 addresses conflicts of interest and duties to former 
clients. This rule corresponds to ABA Model Rule 1.9.
    Section 11.110 addresses the imputation of conflicts of interest 
for practitioners in the same firm. This rule differs from ABA Model 
Rule 1.10 in that paragraph (a)(2)(iii) has not been incorporated.
    Section 11.111 addresses former or current Federal Government 
employees. This rule deals with practitioners who leave public office 
and enter private employment. It applies to judges and their law clerks 
as well as to practitioners who act in other capacities. The USPTO has 
declined to enact ABA Model Rule 1.11 and is instead enacting its own 
rule regarding successive government and private employment, namely, 
that a practitioner who is a former or current Federal Government 
employee shall not engage in any conduct which is contrary to 
applicable Federal ethics laws, including conflict of interest statutes 
and regulations of the department, agency, or commission formerly or 
currently employing said practitioner. See, e.g., 18 U.S.C. 207.
    A practitioner representing a United States Government agency, 
whether employed or specially retained by the United States Government, 
is subject to the USPTO Rules, including the prohibition against 
representing adverse interests stated in section 11.107 and the 
protections afforded former clients in section 11.109. In addition, 
such a practitioner is subject to this section and to statutes and 
regulations, as well as government policies, concerning conflicts of 
interest and other Federal ethics requirements.
    Section 11.112 provides specific rules regarding the imputation of 
conflicts of interest for practitioners who are former judges, 
arbitrators, mediators or third-party neutrals. This rule corresponds 
to ABA Model Rule 1.12.
    Section 11.113 provides specific rules regarding a practitioner's 
responsibilities when representing an organization as a client. This 
rule corresponds to ABA Model Rule 1.13.
    Section 11.114 provides specific rules regarding a practitioner's 
responsibilities when representing a client with diminished capacity. 
This rule corresponds to ABA Model Rule 1.14.
    Section 11.115 provides specific rules regarding a practitioner's 
responsibilities regarding safekeeping of client property and 
maintenance of financial records. This rule corresponds to ABA Model 
Rule 1.15.
    Section 11.115(a) requires that funds be kept in a separate client 
or third person account maintained in the state where the 
practitioner's office is situated, or elsewhere with the consent of the 
client or third person. Some practitioners are located outside of the 
United States. The USPTO Rules require that where the practitioner's 
office is situated in a foreign country, funds shall be kept in a 
separate account maintained in that foreign country or elsewhere with 
the consent of the client or third person. See also 37 CFR 10.112.
    Section 11.115(b)-(e) corresponds to ABA Model Rule 1.15(b)-(e).
    Section 11.115(f) requires that the type of records specified by 
section 11.115(a) be consistent with (i) The ABA Model Rules for Client 
Trust Account Records; (ii) for lawyer practitioners, the types of 
records that are maintained meet the recordkeeping requirements of a 
state in which the lawyer is licensed and in good standing, the 
recordkeeping requirements of the state where the lawyer's principal 
place of business is located, or the recordkeeping requirements of this 
section; and/or (iii) for patent agents and persons granted limited 
recognition who are employed in the United States by a law firm, the 
recordkeeping requirements of the state where at least one lawyer of 
the law firm is licensed

[[Page 20184]]

and in good standing, the recordkeeping requirements of the state where 
the law firm's principal place of business is located, or the 
recordkeeping requirements of this section. According to the ABA 
Standing Committee on Client Protection, the ABA Model Rules for Client 
Trust Account Records responds to a number of changes in banking and 
business practices that may have left lawyers ``inadvertently running 
afoul of their jurisdiction's rules of professional conduct.'' The new 
rule addresses recordkeeping requirements after electronic transfers 
and clarifies who can authorize such transfers. The rule also accounts 
for the Check Clearing for the 21st Century Act, which allows banks to 
substitute electronic images of checks for canceled checks. The rule 
also addresses the increasing prevalence of electronic banking and wire 
transfers or electronic transfers of funds, for which banks do not 
routinely provide specific confirmation. The rule acknowledges those 
issues, addressing recordkeeping requirements after electronic 
transfers and clarifying who can authorize such transfers, record 
maintenance, and safeguards required for electronic record storage 
systems. The rule also details minimum safeguards practitioners must 
implement when they allow non-practitioner employees to access client 
trust accounts; addresses partner responsibilities for storage of and 
access to client trust account records when partnerships are dissolved 
or when a practice is sold; and allows practitioners to maintain client 
trust account records in electronic, photographic, computer or other 
media or paper format, either at the practitioner's office or at an 
off-site storage facility, but requires that records stored off-site be 
readily accessible to the practitioner and that the practitioner be 
able to produce and print them upon request.
    Section 11.115(f) requires a practitioner to maintain the same 
records as the practitioner must currently maintain to comply with 
Sec.  10.112(c)(3), which required a practitioner to ``maintain 
complete records of all funds, securities and other properties of a 
client coming into the possession of the practitioner.'' Section 
10.112(c)(3) is substantially the same as DR 9-102(b)(3) of the Model 
Code of Professional Responsibility of the American Bar Association, 
which was adopted by numerous states. It has been long recognized that 
compliance with the Code's rule requires maintenance of, inter alia, a 
cash receipts journal, a cash disbursements journal, and a subsidiary 
ledger, as well as periodic trial balances, and insufficient fund check 
reporting. See Wright v.  Virginia State Bar, 357 S.E.2d 518, 519 (Va. 
1987); In re Librizzi, 569 A.2d 257, 258-59 (N.J. 1990); In re 
Heffernan, 351 N.W.2d 13, 14 (Minn. 1984); In re Austin, 333 N.W.2d 
633, 634 (Minn. 1983); and In re Kennedy, 442 A.2d 79, 84-85 (Del. 
1982). Thus, Sec.  11.115(f) clarifies recordkeeping requirements that 
apply to all practitioners through Sec.  10.112(c)(3).
    Section 11.116 provides rules regarding a practitioner's 
responsibilities in declining or terminating representation of a 
client. This rule corresponds to ABA Model Rule 1.16.
    Section 11.117 provides rules regarding a practitioner's 
responsibilities when buying or selling a law practice or an area of 
law practice, including goodwill. This rule corresponds to ABA Model 
Rule 1.17.
    Section 11.117(b) differs from ABA Model Rule 1.17(b) in that, to 
the extent the practice or the area of practice to be sold involves 
patent proceedings before the Office, the practice or area of practice 
may be sold only to one or more registered practitioners or law firms 
that include at least one registered practitioner.
    Section 11.118 provides rules regarding a practitioner's 
responsibilities to prospective clients. This rule corresponds to ABA 
Model Rule 1.18.
    Sections 11.119-11.200 are reserved.
    Section 11.201 provides a rule addressing the practitioner's role 
in providing advice to a client and corresponds to ABA Model Rule 2.1.
    Section 11.202 is reserved. ABA Model Rule 2.2 was deleted in 2002 
as the ABA no longer treats intermediation and the conflict-of-interest 
issues it raises separately from any other multi-representation 
conflicts. Issues relating to practitioners acting as intermediaries 
are dealt with under Sec.  11.107 in this final rule.
    Section 11.203 articulates the ethical standards for circumstances 
where a practitioner provides an evaluation of a matter affecting a 
client for use by a third party. This rule corresponds to ABA Model 
Rule 2.3. It should be noted that with respect to evaluation 
information under Sec.  11.203 a practitioner is required to disclose 
information in compliance with the duty of disclosure provisions of 
this subchapter subject to disclosure to the USPTO pursuant to Sec.  
11.106(c).
    Section 11.204 addresses the practitioner's role in serving as a 
third-party neutral, whether as an arbitrator, a mediator, or in such 
other capacity, and corresponds to ABA Model Rule 2.4.
    Sections 11.205-11.300 are reserved.
    Section 11.301 requires that a practitioner present well-grounded 
positions. The advocate has a duty to use legal procedure for the 
fullest benefit of the client's cause. The advocate also has a duty not 
to abuse the legal process. This rule corresponds to ABA Model Rule 
3.1, however, the USPTO is declining to enact the ABA Model Rule 
requirement that a lawyer for the defendant in a criminal proceeding 
may defend the proceeding by requiring that every element of the case 
be established. The USPTO did not adopt the specific reference because 
it is a professional conduct rule limited to the practice of criminal 
law. Nonetheless, a patent attorney who engages in the practice of 
criminal law is subject to the disciplinary rules of the appropriate 
State and Court authorities. Failure to comply with those rules may 
lead to disciplinary action against the practitioner and, in turn, 
possible reciprocal action against the practitioner by the USPTO. See 
37 CFR 11.24 and 11.804(h). Moreover, the lack of a specific 
disciplinary rule concerning particular conduct should not be viewed as 
suggesting that the conduct would not violate general provisions of the 
USPTO Rules.
    Section 11.302 requires that practitioners diligently pursue 
litigation and Office proceedings. This rule corresponds to ABA Model 
Rule 3.2, adding that a practitioner shall make reasonable efforts to 
expedite proceedings before the Office as well as in litigated matters.
    Section 11.303 corresponds to ABA Model Rule 3.3. Section 
11.303(a)(2) sets forth the duty to disclose to the tribunal legal 
authority in the controlling jurisdiction known to the practitioner to 
be directly adverse to the position of the client and not disclosed by 
opposing counsel in an inter partes proceeding. It also sets forth this 
duty for an ex parte proceeding before the Office where the legal 
authority is not otherwise disclosed. All decisions made by the Office 
in patent and trademark matters affect the public interest. See Lear, 
Inc. v. Adkins, 395 U.S. 653 (1969). Many of the decisions made by the 
Office are made ex parte. Accordingly, practitioners must cite to the 
Office known authority that is contrary, i.e., directly adverse, to the 
position being taken by the practitioner in good faith. Section 
11.303(a)(3) does not include a reference to testimony of a defendant 
in a criminal matter, as set forth in ABA Model Rule 3.3(a)(3) as the

[[Page 20185]]

USPTO does not regulate criminal law practice.
    Section 11.303(e) specifies that in a proceeding before the Office, 
a practitioner must disclose information necessary to comply with the 
duty of disclosure provisions of this subchapter in practice before the 
Office. The practitioner's responsibility to present the client's case 
with persuasive force is qualified by the practitioner's duty of candor 
to the tribunal. See Lipman v. Dickinson, 174 F.3d 1363 (Fed. Cir. 
1999).
    Section 11.304 contemplates that evidence be marshaled fairly in a 
case before a tribunal, including in ex parte and inter partes 
proceedings before the Office. This rule corresponds to ABA Model Rule 
3.4, but it clarifies that the duties of the practitioner are not 
limited to trial matters, but also apply to any proceeding before a 
tribunal.
    Section 11.305 requires that practitioners act with impartiality 
and decorum in ex parte and inter partes proceedings. This rule 
corresponds to ABA Model Rule 3.5, but clarifies that it is improper to 
seek to improperly influence a hearing officer, administrative law 
judge, administrative patent judge, administrative trademark judge, 
employee, or officer of the Office. This rule does not prohibit ex 
parte communication that is authorized by law, rule, or court order, in 
an ex parte proceeding.
    Section 11.305(c) is reserved as the USPTO is declining to enact a 
specific rule regarding a practitioner's communication with a juror or 
prospective juror. Nonetheless, a practitioner who engages in the 
practice of improper communication with a juror or prospective juror is 
subject to criminal laws and the disciplinary rules of the appropriate 
State and Court authorities. Failure to comply with those laws and 
rules may lead to disciplinary action against the practitioner and, in 
turn, possible reciprocal action against the practitioner by the USPTO. 
See 37 CFR 11.24 and 11.804(h). Moreover, the lack of a specific 
disciplinary rule concerning particular conduct should not be viewed as 
suggesting that the conduct would not violate one or more of the USPTO 
Rules (e.g., Sec.  11.804).
    Section 11.306 specifies conduct regarding trial publicity. This 
rule corresponds to ABA Model Rule 3.6. However, the USPTO is declining 
to enact paragraph (b)(7) of ABA Model Rule 3.6 regarding what a lawyer 
may state in a criminal case as the USPTO does not regulate criminal 
law practice.
    Section 11.307 generally proscribes a practitioner from acting as 
an advocate in a proceeding before the Office in which the practitioner 
is likely to be a necessary witness. Combining the roles of advocate 
and witness can prejudice the opposing party and can involve a conflict 
of interest between the practitioner and client. This rule corresponds 
to ABA Model Rule 3.7.
    Section 11.308 is reserved. ABA Model Rule 3.8 addresses the 
``Special Responsibilities of a Prosecutor'' in the context of criminal 
proceedings. Because practice before the Office does not involve 
criminal proceedings, the content of ABA Model Rule 3.8 is not being 
adopted. Nevertheless, an attorney who is both a practitioner before 
the Office and a criminal prosecutor may be subject to both the Office 
and other professional conduct rules. Discipline by a duly constituted 
authority of a State, the United States, or the country in which a 
practitioner resides may lead to reciprocal disciplinary action by the 
Office. See 37 CFR 11.24 and 11.804(h). Moreover, the lack of a 
specific disciplinary rule concerning particular conduct should not be 
viewed as suggesting that the conduct would not violate general 
provisions of the USPTO Rules.
    Section 11.309 regulates a practitioner's conduct when he or she is 
representing a client in a non-adjudicative proceeding before an 
administrative agency, such as the Office. This rule corresponds to ABA 
Model Rule 3.9.
    Sections 11.310-11.400 are reserved.
    Section 11.401 requires a practitioner to be truthful when dealing 
with others on a client's behalf. This rule corresponds to ABA Model 
Rule 4.1.
    Section 11.402 provides a standard for communicating with a 
represented party. Section 11.402(a) corresponds to ABA Model Rule 4.2. 
Section 11.402(a) differs from ABA Model Rule 4.2 in that the USPTO 
Rule adds that in addition to a practitioner being authorized to 
communicate with a represented party when the practitioner is 
authorized by law or a court order, a practitioner may communicate with 
a represented party when the practitioner is authorized by rule to do 
so.
    Section 11.402(b) is based on District of Columbia Rule of 
Professional Conduct 4.2(b) and recognizes that special considerations 
come into play when the Federal Government, including the Office, is 
involved in a lawsuit. It permits communications with those in 
Government having the authority to redress such grievances (but not 
with other Government personnel), without the prior consent of the 
practitioner representing the Government in such cases. However, a 
practitioner making such a communication without the prior consent of 
the practitioner representing the Government must make the disclosures 
required by Sec.  11.402(b) in the case of communications with non-
party employees.
    Section 11.402(b) does not permit a practitioner to bypass counsel 
representing the government on every issue that may arise in the course 
of disputes with the government. It is intended to provide 
practitioners access to decision makers in government with respect to 
genuine grievances, such as to present the view that the government's 
basic policy position with respect to a dispute is faulty, or that 
government personnel are conducting themselves improperly with respect 
to aspects of the dispute. It is not intended to provide direct access 
on routine disputes such as ordinary discovery disputes, extensions of 
time or other scheduling matters, or similar routine aspects of the 
resolution of disputes.
    Section 11.403 provides a standard for communicating with an 
unrepresented person, particularly one not experienced in dealing with 
legal matters. This rule corresponds to ABA Model Rule 4.3.
    Section 11.404 requires a practitioner to respect the rights of 
third parties. Responsibility to a client requires a practitioner to 
subordinate the interests of others to those of the client, but that 
responsibility does not imply that a practitioner may disregard the 
rights of third persons. The rule also provides helpful information to 
practitioners regarding the receipt of inadvertently sent documents and 
electronically stored information. This rule corresponds to ABA Model 
Rule 4.4.
    Sections 11.405-11.500 are reserved.
    Section 11.501 sets forth the responsibilities of a partner or 
supervisory practitioner. This rule corresponds to ABA Model Rule 5.1.
    Section 11.502 sets forth the ethical and professional conduct 
responsibilities of a subordinate practitioner. This rule corresponds 
to ABA Model Rule 5.2.
    Section 11.503 sets forth a practitioner's responsibilities 
regarding non-practitioner assistance. Practitioners generally employ 
assistants in their practice, including secretaries, technical 
advisors, student associates, draftspersons, investigators, law student 
interns, and paraprofessionals. This rule specifies the practitioner's 
responsibilities in supervising non-practitioner assistants and 
corresponds to ABA Model Rule 5.3.
    Section 11.504 protects the professional independence of a

[[Page 20186]]

practitioner by providing traditional limitations on sharing fees with 
non-practitioners. This rule corresponds to ABA Model Rule 5.4. See 
also 37 CFR 10.48, 10.49, 10.68.
    Section 11.504(a)(4) is based upon the District of Columbia Rule of 
Professional Conduct 5.4(a)(5), rather than the ABA Model Rule. Section 
11.504(a)(4) permits a practitioner to share legal fees with a 
nonprofit organization that employed, retained, or recommended 
employment of the practitioner in the matter. A practitioner may decide 
to contribute all or part of legal fees recovered from the opposing 
party to the nonprofit organization. Such a contribution may or may not 
involve fee-splitting, but when it does, the prospect that the 
organization will obtain all or part of the practitioner's fees does 
not inherently compromise the practitioner's professional independence, 
whether the practitioner is employed by the organization or was only 
retained or recommended by it. A practitioner who has agreed to share 
legal fees with such an organization remains obligated to exercise 
professional judgment solely in the client's best interests. Moreover, 
fee-splitting in these circumstances may promote the financial 
viability of such nonprofit organizations and facilitate their public 
interest mission. Unlike the corresponding provision of the ABA Model 
Rules, this provision is not limited to sharing of fees awarded by a 
court, because that restriction would significantly interfere with 
settlement of cases outside of court without significantly advancing 
the purpose of the exception. To prevent abuse, it applies only if the 
nonprofit organization has been recognized by the Internal Revenue 
Service as an organization described in Section 501(c)(3) of the 
Internal Revenue Code.
    Section 11.505 proscribes practitioners from engaging in or aiding 
the unauthorized practice of law. The rule notes that a practitioner 
shall not practice law in a jurisdiction in violation of the regulation 
of the legal profession in that jurisdiction, or assist another in 
doing so. The USPTO is another jurisdiction for the purposes of this 
rule. See, e.g., In re Peirce, 128 P.3d 443, 444 (Nev. 2006) 
(concluding that ``another jurisdiction'' includes the USPTO). In 
addition, the Office notes the express prohibition against holding 
oneself out as recognized to practice before the Office if not 
recognized by the Office to do so. See 35 U.S.C. 33. This rule 
corresponds to ABA Model Rule 5.5(a). The USPTO declines to adopt the 
remainder of ABA Model Rule 5.5 including those provisions regarding 
multijurisdictional practice of law.
    Limiting the practice of patent law before the Office to those 
recognized to practice protects the public against rendition of legal 
services by unqualified persons or organizations. A patent application 
is recognized as being a legal document and registration to practice 
before the USPTO sanctions ``the performance of those services which 
are reasonably necessary and incident to the preparation and 
prosecution of patent applications.'' Sperry v.  Florida, 373 U.S. 379, 
386 (1963). Thus, a registered practitioner may practice in patent 
matters before the Office regardless of where they reside within the 
United States.
    It is noted that the USPTO registers individuals, not law firms or 
corporations, to practice in patent matters before the Office. Thus, a 
corporation is not authorized to practice law and render legal 
services. Instead, upon request and for a fee, the corporation could 
cause a patent application to be prepared by a registered practitioner. 
See Lefkowitz v.  Napatco, Inc., 415 N.E.2d 916 (N.Y. 1980). There are 
numerous cases and ethics opinions wherein attorneys have been found to 
have aided lay organizations in the unauthorized practice of law by 
agreeing to accept referrals from a non-lawyer engaged in unauthorized 
practice of law. For example, an attorney was found to have aided the 
unauthorized practice of law by permitting a non-attorney operating as 
a business to gather data from estate planning clients for preparation 
of legal documents and forward the data to the attorney who thereafter 
prepared the documents (including a will, living trust, living will, 
and powers of attorney). The attorney, without having personally met or 
corresponded with the client, forwarded the documents to the non-
attorney for the client to execute. See Wayne County Bar Ass'n. v.  
Naumoff, 660 N.E.2d 1177 (Ohio 1996). See also Comm. on Prof'l Ethics & 
Conduct v.  Baker, 492 N.W.2d 695 (Iowa 1992); People v.  Laden, 893 
P.2d 771 (Colo. 1995); People v.  Macy, 789 P.2d 188 (Colo. 1990); 
People v.  Boyls, 591 P.2d 1315 (Colo. 1979); In re Discipio, 645 
N.E.2d 906 (Ill. 1994); In re Komar, 532 N.E.2d 801 (Ill. 1988); Formal 
Opinion 705, Committee on Professional Ethics of the Illinois State Bar 
Association (1982); Formal Opinion 1997-148, Standing Committee on 
Professional Responsibility and Conduct (California); Formal Opinion 
87, Ethics Committee of the Colorado State Bar (1991).
    Section 11.506 prohibits agreements restricting rights to practice. 
This rule corresponds to ABA Model Rule 5.6.
    Section 11.507 provides that a practitioner is subject to the USPTO 
Rules if the practitioner provides law-related services. This rule 
corresponds to ABA Model Rule 5.7. The definition of ``law-related 
service'' is set forth in Sec.  11.1.
    Sections 11.508-11.600 are reserved.
    Sections 11.601-11.700 are reserved. The USPTO declines to adopt 
ABA Model Rules regarding public service. The USPTO recognizes that 
every practitioner, regardless of professional prominence or 
professional workload, has a responsibility to provide legal services 
to those unable to pay and that every practitioner should support all 
proper efforts to meet this need for legal services. However, attorney 
practitioners' individual state ethics rules should provide useful 
information regarding their respective duties to provide voluntary pro 
bono service, accept court appointed representation, and serve as 
members of legal service and legal reform organizations. The USPTO 
declines to add an increased regulatory requirement on attorney 
practitioners.
    Section 11.701 governs all communications about a practitioner's 
services, including advertising, and corresponds to ABA Model Rule 7.1.
    Section 11.702 provides for advertising by practitioners. This 
section corresponds to ABA Model Rule 7.2. However, the USPTO is 
declining to enact the substance of ABA Model Rule 7.2(b)(2), as the 
USPTO does not currently regulate and does not anticipate regulating 
lawyer referral services.
    Section 11.703 addresses the direct contact by a practitioner with 
a prospective client known to need legal services. This section 
corresponds to ABA Model Rule 7.3.
    Section 11.704 permits a practitioner to indicate areas of practice 
in communications about the practitioner's services. Section 11.704(a) 
corresponds to ABA Model Rule 7.4(a).
    Section 11.704(b), as with Sec.  10.34, continues the long-
established policy of the USPTO for the designation of practitioners 
practicing before the Office.
    Section 11.704(c) is reserved as the USPTO is declining to regulate 
the communication of specialization in Admiralty practice.
    Section 11.704(d) corresponds to ABA Model Rule 7.4(d).
    Section 11.704(e) permits an individual granted limited recognition 
under Sec.  11.9 to use the designation

[[Page 20187]]

``Limited Recognition'' to indicate in communications about the 
individual's services that the individual, while not a ``registered 
practitioner,'' is authorized to practice before the USPTO in patent 
matters subject to the limitations in the individual's grant of limited 
recognition under Sec.  11.9.
    Section 11.705 regulates firm names and letterheads. This section 
corresponds to ABA Model Rule 7.5.
    Section 11.705(b) is reserved as the USPTO is declining to enact a 
specific rule regarding law firms with offices in more than one 
jurisdiction, since the USPTO encompasses one Federal jurisdiction. 
However, the USPTO is not implying that a law firm with offices in more 
than one jurisdiction may violate a State authority regulating this 
conduct. Nonetheless, a practitioner who engages in the improper use of 
firm names and letterhead is subject to the disciplinary rules of the 
appropriate State and Court authorities. Failure to comply with those 
rules may lead to disciplinary action against the practitioner and, in 
turn, possible reciprocal action against the practitioner by the USPTO. 
See 37 CFR 11.24 and 11.804(h). Moreover, the lack of a specific 
disciplinary rule concerning particular conduct should not be viewed as 
suggesting that the conduct would not violate one or more of the USPTO 
Rules. See 37 CFR 11.804.
    Section 11.705(d) is deleted. The USPTO declines to adopt ABA Model 
Rule 7.5(d) providing that practitioners may state or imply that they 
practice in a partnership or other organization only when that is the 
fact. However, the USPTO is not implying that practitioners may state 
or imply that they practice in a partnership or other organization if 
that is not the fact. Nonetheless, a practitioner who engages in the 
improper use of firm names and letterhead is subject to the 
disciplinary rules of the appropriate State and Court authorities. 
Failure to comply with those rules may lead to disciplinary action 
against the practitioner and, in turn, possible reciprocal action 
against the practitioner by the USPTO. See 37 CFR 11.24 and 11.804(h). 
Moreover, the lack of a specific disciplinary rule concerning 
particular conduct should not be viewed as suggesting that the conduct 
would not violate one or more of the general provisions of the USPTO 
Rules. See 37 CFR 11.804.
    Section 11.706 is reserved as the USPTO declines to enact a 
specific rule regarding political contributions to obtain legal 
engagements or appointments by judges. However, the USPTO is not 
implying that a practitioner or law firm may accept a government legal 
engagement or an appointment by a judge if the practitioner or law firm 
makes a political contribution or solicits political contributions for 
the purpose of obtaining or being considered for that type of legal 
engagement or appointment. Nonetheless, a practitioner who engages in 
this type of practice is subject to the disciplinary rules of the 
appropriate State and Court authorities. Failure to comply with those 
rules may lead to disciplinary action against the practitioner and, in 
turn, possible reciprocal action against the practitioner by the USPTO. 
See 37 CFR 11.24 and 11.804(h). Moreover, the lack of a specific 
disciplinary rule concerning particular conduct should not be viewed as 
suggesting that the conduct would not violate one or more of the 
general provisions of the USPTO Rules. See 37 CFR 11.804.
    Sections 11.707-11.800 are reserved.
    Section 11.801 provides that an applicant for registration or 
recognition to practice before the Office is under the same duty of 
disclosure as a person seeking admission to a bar. This section 
generally corresponds to ABA Model Rule 8.1. This section clarifies 
that it pertains to applicants for registration or an applicant for 
recognition to practice before the Office and conforms to current USPTO 
practice in Sec. Sec.  11.6, 11.7, 11.9, 11.14 and 11.58.
    If a person makes a material false statement in connection with an 
application for registration or recognition, it may be the basis for 
subsequent disciplinary action if the person is admitted, and in any 
event it may be relevant in a subsequent application. The duty imposed 
by Sec.  11.801 applies to a practitioner's own admission or discipline 
as well as that of others. Thus, it is a separate professional offense 
for a practitioner to knowingly make a misrepresentation or omission in 
connection with a disciplinary investigation of the practitioner's own 
conduct. Section 11.801 also requires affirmative clarification of any 
misunderstanding on the part of the admissions or disciplinary 
authority of which the person involved becomes aware. Moreover, Section 
11.801(b) requires practitioners to cooperate with OED in an 
investigation of any matter before it and continues the practice set 
forth under Sec.  10.131(b).
    Section 11.802 requires that a practitioner not make a statement 
that the practitioner knows to be false or with reckless disregard as 
to its truth or falsity concerning the qualifications or integrity of a 
judge, adjudicatory officer or public legal officer, or of a candidate 
for election or appointment to judicial or legal office. This section 
corresponds to ABA Model Rule 8.2. Government employees and officers 
such as administrative patent judges, administrative trademark judges, 
patent examiners, trademark examining attorneys, and petitions 
examiners, perform judicial and quasi-judicial functions. See, e.g., 
United States v. Morgan, 313 U.S. 409 (1941); Western Elec. Co. v. 
Piezo Tech., Inc., 860 F.2d 428 (Fed. Cir. 1988) (``Patent examiners 
are quasi-judicial officials.''); see also Butterworth v.  United 
States ex rel. Hoe, 112 U.S. 50, 67 (1884) (``That it was intended that 
the commissioner of patents, in issuing or withholding patents * * * 
should exercise quasi-judicial functions, is apparent from the nature 
of the examinations and decision he is required to make.''); Chamberlin 
v. Isen, 779 F.2d 522, 524 (9th Cir. 1985) (``[I]t has long been 
recognized that PTO employees perform a `quasi-judicial' function in 
examining patent applications.'') Such employees and officers are 
considered adjudicatory officers.
    Section 11.803 requires reporting a violation of the USPTO Rules. 
This section corresponds to ABA Model Rule 8.3.
    Self-regulation of the legal profession requires that members of 
the profession seek a disciplinary investigation when they know of a 
violation of the USPTO Rules. Consistent with Sec.  10.24(a), a report 
about misconduct may not be required where it would involve violation 
of Sec.  11.106(a). However, a practitioner should encourage a client 
to consent to disclosure where prosecution would not substantially 
prejudice the client's interests. Section 11.803(c) does not require 
disclosure of information otherwise protected by Sec.  11.106, or 
information gained while participating in an approved lawyers 
assistance program. It should be noted that the USPTO does not sanction 
any lawyer's assistance programs and the reference thereto in Sec.  
11.803 is a reference to lawyer's assistance programs approved by a 
relevant state authority.
    The appropriate authority to report misconduct depends on the 
situation and jurisdiction. If a violation is found that is within the 
jurisdiction of OED, it must be reported in writing to the Director of 
OED. See 35 U.S.C. 11.19(a) (disciplinary jurisdiction); 37 CFR 
1.1(a)(5) (contact information); see also ABA Model Rule 8.3, cmt. 3 
(2012) (applying similar considerations for judicial misconduct as for 
attorney misconduct whereby ``[a] report should be made to the bar 
disciplinary agency unless some other agency, such as a

[[Page 20188]]

peer review agency, is more appropriate in the circumstances.'').
    Section 11.804 provides for discipline involving a variety of acts 
constituting misconduct. Section 11.804(a)-(f) corresponds to ABA Model 
Rule 8.4(a)-(f), respectively. It is noted that Sec.  10.23(c) of the 
USPTO Code set forth specific examples of misconduct that constitute a 
violation of the rules. These examples generally continue to be 
violations under the new USPTO Rules.
    Section 11.804(g) specifically provides that it is misconduct to 
knowingly assist an officer or employee of the Office in conduct that 
is a violation of applicable rules of conduct or other law.
    Section 11.804(h) clearly sets forth that it is misconduct for a 
practitioner to be publicly disciplined on ethical grounds by any duly 
constituted authority of (1) a State, (2) the United States, or (3) the 
country in which the practitioner resides. See 37 CFR 11.24.
    Section 11.804(i) sets forth that it continues to be misconduct for 
a practitioner to engage in conduct that adversely reflects on the 
practitioner's fitness to practice before the Office.
    Section 11.805 is reserved. The USPTO declines to adopt the ABA 
Model Rule regarding disciplinary authority and choice of law. The 
disciplinary jurisdiction of the Office is set forth in Sec.  11.19. 
The USPTO Director has statutory, under 35 U.S.C. 2(b)(2)(D) and 35 
U.S.C. 32, and inherent authority to adopt rules regulating the 
practice of attorneys and other persons before the USPTO in patent, 
trademark, and non-patent law. The USPTO, like other Government 
agencies, has inherent authority to regulate who may practice before it 
as practitioners, including the authority to discipline practitioners. 
See Goldsmith v. U.S. Board of Tax Appeals, 270 U.S. 117 (1926); Herman 
v. Dulles, 205 F.2d 715 (D.C. Cir. 1953); and Koden v. U.S. Department 
of Justice, 564 F.2d 228 (7th Cir. 1977). Courts have affirmed that 
Congress, through the Administrative Procedure Act, 5 U.S.C. 500, did 
not limit the inherent power of agencies to discipline professionals 
who appear or practice before them. See Polydoroff v. ICC, 773 F.2d 372 
(D.C. Cir. 1985); Touche Ross & Co. v. SEC, 609 F.2d 570 (2d Cir. 
1979).
    Sections 11.806-11.900 are reserved.
    Section 11.901 contains the following savings clauses: (a) A 
disciplinary proceeding based on conduct engaged in prior to the 
effective date of these regulations may be instituted subsequent to 
such effective date, if such conduct would continue to justify 
disciplinary sanctions under the provisions of this part; and (b) No 
practitioner shall be subject to a disciplinary proceeding under this 
part based on conduct engaged in before the effective date hereof if 
such conduct would not have been subject to disciplinary action before 
such effective date.
    Section 41.5 is revised to make a technical correction. 
Specifically, the previous reference to Sec.  10.40 has been updated to 
refer to Sec.  11.116.

Response to Comments

    The Office received 19 responses commenting on the Notice of 
Proposed Rulemaking. Some comments received were not related to the 
proposed changes. Those comments have been forwarded to the appropriate 
department for further consideration and will not be addressed herein. 
The Office is always interested to hear feedback from the public. The 
comments germane to the USPTO Rules and the Office's responses to the 
comments follow:
    Comment 1: Many comments supported the new rules and their 
alignment with State bar standards.
    Response to Comment 1: The Office appreciates the commenters' 
support.
    Comment 2: Two commenters suggested that changing the USPTO Code to 
the USPTO Rules, which are based on the ABA Model Rules, was not 
necessary because the USPTO Code was adequate and adopting the new 
ethics rules would make these rules subject to changes from a remote 
entity, i.e., the ABA. Further, the comments noted that rule changes 
should be considered on a rule-by-rule basis by an internal authority.
    Response to Comment 2: The Office appreciates the comments. 
Following the ABA Model Rules, with some modifications, allows for 
conformity with ethical standards already present in most other U.S. 
jurisdictions. Further, the new USPTO Rules reflect timely updates of 
the legal landscape, including advancements in technology and legal 
practices, which have changed since the 1985 adoption of the USPTO 
Code. The Office has independently considered whether to adopt each ABA 
Model Rule into the new USPTO Rules. The Office is not required to 
adopt the ABA Model Rules in whole or in part. The Office may adopt 
future changes to the ABA Model Rules as needed, necessary, or relevant 
to practice before the Office.
    Comment 3: A comment suggested that the USPTO does not have any 
mechanism for enforcement of ethical standards.
    Response to Comment 3: Consistent with existing practice, attorneys 
and agents will continue to be subject to discipline for not complying 
with USPTO regulations. See 35 U.S.C. 32; see also Bender v. Dudas, 490 
F.3d 1361, 1368 (Fed. Cir. 2007) (35 U.S.C. 2(b)(2)(D) and 32 authorize 
the USPTO to discipline individuals who engage in misconduct related to 
``service, advice, and assistance in the prosecution or prospective 
prosecution of applications.''). ``The OED Director is authorized to 
investigate possible grounds for discipline.'' 37 CFR 11.22(a). An 
investigation may be initiated pursuant to ``a grievance, information 
or evidence from any source suggesting possible grounds for 
discipline.'' Id. The USPTO aims to protect the public by maintaining 
the ethical integrity of practitioners practicing before the Office. 
Additionally, persons not registered or recognized to practice before 
the Office are subject to the disciplinary authority of the Office if 
they provide or offer to provide any legal services before the Office.
    Comment 4: A comment questioned the decision not to establish a 
Continuing Legal Education (``CLE'') requirement, noting that most 
patent attorneys are subject to CLE requirements through their State 
bars whereas patent agents are not.
    Response to Comment 4: The Office appreciates the comment and 
understands that some agents may lack the formal training that attorney 
practitioners routinely obtain through CLE. The Office notes that all 
practitioners, including agents, are required under Sec.  11.101 to 
provide competent representation to clients and to do so in compliance 
with the ethical and professional conduct requirements of these rules. 
Competent representation requires the legal, scientific, and technical 
knowledge, skill, thoroughness, and preparation reasonably necessary 
for the representation. Id. To maintain competence, all practitioners 
should keep abreast of changes in the legal landscape. To that end, 
attending CLE courses may be helpful, but the Office is not instituting 
a mandatory CLE reporting requirement at this time. Further, these rule 
changes are not a deviation from the approach in the USPTO Code. The 
Office will continue to assess the need for CLE reporting requirements 
and may revisit this issue in the future.
    Comment 5: A comment noted that the USPTO does not provide for or 
enforce CLE requirements on practitioners, and suggested that the

[[Page 20189]]

CLE requirements are therefore in the exclusive jurisdiction of the 
States.
    Response to Comment 5: The Office appreciates the comment and 
confirms that it is not implementing a CLE reporting requirement at 
this time. However, a practitioner must maintain competence and be 
informed of updates in the law. See Sec.  11.101; see also ABA Model 
Rule 1.1, cmts. 5 and 8 (2012). To maintain competence, the completion 
of CLE courses may be helpful.
    Comment 6: Two commenters noted that the Office should adopt the 
August 2012 changes to the ABA Model Rules.
    Response to Comment 6: The Office appreciates the comments and is 
adopting some of the ABA's August 2012 Model Rule changes. The Office 
examined each of the ABA Model Rule August 2012 changes individually 
and decided to adopt only the minor technical changes at this time. The 
Office did not adopt substantive changes as most States have not yet 
done so. The Office will continue to evaluate the ABA Model Rule 
changes and adopt them as appropriate. These technical changes are 
reflected in Sec. Sec.  11.1 (changing ``email'' to ``electronic 
communications'' in the definition of ``writing''), 11.404 (adding ``or 
electronically stored information'' to paragraph (b)), and 11.503 
(changing ``Assistants'' to ``Assistance'' in the heading).
    Comment 7: A comment compared a particular State's Rules of 
Professional Conduct with the USPTO Rules and noted differences between 
them.
    Response to Comment 7: The Office indicated in the preamble to the 
Notice of Proposed Rulemaking that the USPTO Rules are not identical to 
every State's rules because each State adopts its own ethics rules.
    Comment 8: A comment noted that the Office should present a 
``default jurisdiction'' that would provide a body of case law for 
guidance since not all States have adopted all of the ABA Model Rules 
and thus some states may have differences in case law.
    Response to Comment 8: The Office appreciates the comment's 
suggestion to specify a ``default jurisdiction'' since many States may 
have different interpretations of the ABA Model Rules based upon 
whether they were adopted in whole or part, or for other reasons. 
However, the Office declines to choose a State as a ``default 
jurisdiction'' as Congress has bestowed upon the Office the authority 
to govern the recognition and conduct of agents, attorneys and others 
before the Office and so the Office is its own jurisdiction. See 35 
U.S.C. 2(b)(2)(D) and 32; see also In re Peirce, 128 P.3d 443, 444 
(Nev. 2006) (concluding that the USPTO is ``another jurisdiction''). 
The Office relies on the provisions adopted, and also refers 
practitioners to helpful information provided by the ABA Model Rule 
Comments and Annotations. Additionally, opinions and case law from 
adopting jurisdictions may be a useful tool in interpreting the rules 
while a larger body of USPTO-specific precedent is established. State 
case law and opinions are not binding precedent on the Office.
    Comment 9: A comment suggested that the term ``law firm'' be 
changed to ``practitioner's firm'' in Sec.  11.503(c)(2) because patent 
agents may not be able to form ``law firms'' under State law.
    Response to Comment 9: The Office is not adopting this suggestion 
as the definition of ``firm'' or ``law firm'' in Sec.  11.1 currently 
includes, among other things, patent agents practicing patent law in a 
professional corporation or other association.
    Comment 10: Commenters suggested that the Office should adopt the 
ABA Model Rule Comments and Annotations as binding to interpret the 
USPTO Rules, noting that four jurisdictions have adopted their own 
unique comments, six have declined to adopt comments, and the rest have 
adopted the ABA Model Rule Comments.
    Response to Comment 10: The Office appreciates the comment and 
notes that the Office has recognized the ABA Model Rule Comments and 
Annotations as useful information for practitioners.
    Comment 11: A comment noted that several generally understood terms 
should be explicitly defined.
    Response to Comment 11: The Office has reviewed the suggested terms 
and is not defining terms that are generally understood. In addition, 
the Office has left certain terms, such as ``highest authority,'' as 
used in Sec.  11.113, undefined because the definition is fact-specific 
and depends on the structure of the organization. Practitioners may 
refer to the Comments and Annotations to the ABA Model Rules for useful 
information.
    Comment 12: Comments requested clarification as to why ABA Model 
Rule 6.1 (Voluntary Pro Bono Publico Service) and ABA Model Rule 6.5 
(Nonprofit and Court Annexed Limited Legal Services Programs), both 
covering pro bono legal services, were not included in this proposal.
    Response to Comment 12: While the Office encourages practitioners 
to provide pro bono services, the Office has declined to adopt ABA 
Model Rules 6.1 and 6.5. As many practitioners are members of their 
respective State bars, many of them will continue to provide low and no 
cost services to the public. The Leahy-Smith America Invents Act 
(``AIA'') encourages the USPTO Director to ``work with and support 
intellectual property law associations across the country in the 
establishment of pro bono programs designed to assist financially 
under-resourced independent inventors and small businesses.'' AIA, 
Public Law 112-29, Sec.  32, 125 Stat. 340, Sec.  32 (2011). The USPTO 
established a Patent Ombudsman Program to provide support and services 
to small businesses and independent inventors in patent filing. The 
program assists applicants or their representatives with issues that 
arise during patent application prosecution and is available at http://www.uspto.gov/patents/ombudsman.jsp. The Office has also worked with 
multiple local bar associations across the United States and assisted 
in the development of a portal that serves as a ``clearinghouse'' for 
pro bono services and is operated by the Federal Circuit Bar 
Association. More information about this program is available at http://www.fedcirbar.org/olc/pub/LVFC/cpages/misc/pto.jsp. In addition, 
inventors are able to seek pro bono services from particular law 
schools that have been accepted into the USPTO Law School Clinic 
Certification Pilot Program. More information about this program is 
available at http://www.uspto.gov/ip/boards/oed/practitioner/agents/law_school_pilot.jsp. Thus, the Office already broadly supports and 
encourages pro bono services and does not see a need at this time to 
adopt a mandatory requirement for practitioners.
    Comment 13: A comment suggested that Sec.  11.1 should be amended 
to include a definition for ``material fraud'' to determine the USPTO's 
obligations under the AIA.
    Response to Comment 13: The Office is not adopting the suggestion 
to add a definition of ``material fraud'' as the term does not appear 
in this final rule.
    Comment 14: A comment suggested that Sec.  11.1 should be amended 
so that the definition of ``practitioner'' includes quasi-judicial 
officials.
    Response to Comment 14: Section 11.1 defines ``practitioner'' as: 
``(1) An attorney or agent registered to practice before the Office in 
patent matters, (2) An individual authorized under 5 U.S.C. 500(b), or 
otherwise as provided by Sec.  11.14(a), (b), and (c) of this 
subchapter, to practice before the Office in trademark matters or other 
non-patent matters, or (3) An individual authorized to practice before 
the Office in a patent case or matters under

[[Page 20190]]

Sec.  11.9(a) or (b).'' The changes to the definition of 
``practitioner'' clarify what has been the practice before the Office 
and the Office does not propose to expand the current use of the term. 
The Office is not adopting the comment's suggestion, as examiners and 
other persons in quasi-judicial roles who do not represent others 
before the Office are not automatically considered practitioners under 
the USPTO Rules merely because of their quasi-judicial role.
    Comment 15: A comment suggested removing the intent requirement 
from the definition of a ``signed'' writing.
    Response to Comment 15: The Office is not adopting this suggestion 
as a signature requires intent. See 1 U.S.C. 1 (```signature' or 
`subscription' includes a mark when the person making the same intended 
it as such'').
    Comment 16: A comment requested clarification as to whether USPTO 
employees who have registration numbers are considered practitioners.
    Response to Comment 16: The definition of ``practitioner'' under 
Sec.  11.1 includes USPTO employees who are registered to practice 
before the Office, or otherwise meet the definition under paragraph (2) 
or (3), and are administratively inactive. Such practitioners are 
subject to the disciplinary jurisdiction of the Office. 37 CFR 
11.19(a). This is not a change from the current rules.
    Comment 17: A comment noted that certain practitioners may be 
absolved of responsibility merely because of their status as a 
principal and not a partner.
    Response to Comment 17: The Office appreciates the opportunity to 
clarify this situation by noting that a ``partner,'' as defined in the 
rules, includes ``a member of a partnership, a shareholder in a law 
firm organized as a professional corporation, or a member of an 
association authorized to practice law.'' Under Sec.  11.501, 
practitioners with managerial authority within a firm are to make 
reasonable efforts to establish internal policies and procedures 
designed to provide reasonable assurance that all practitioners in the 
firm will conform to the USPTO Rules. This includes lawyers who have 
intermediate managerial responsibilities in a firm. See, e.g., ABA 
Model Rule 5.1, cmt. 1 (2012).
    Comment 18: A comment suggested that the use of the term ``party'' 
in Sec.  11.2(e) would include third parties. Under this definition, 
the commenter suggested that a grievant may be able to claim party 
status and participate in disciplinary investigations or petition for 
review of decisions.
    Response to Comment 18: The Office disagrees with this comment. In 
keeping with other jurisdictions and the practice of the Office, a 
person who files a grievance about a practitioner is not considered a 
party to any resulting disciplinary matter. See, e.g., In re Request 
for Investigation of Attorney, 867 NE.2d 323 (Mass. 2007) (holding that 
a grievant has no cause of action arising out of disciplinary counsel's 
decision to close file). The Office amends the preamble language for 
Sec.  11.2(e) to provide further clarification.
    Comment 19: A comment suggested that Sec.  11.32 should be amended 
to include specific language about the OED Director's discretionary 
authority in recommending settlement and issuing warnings.
    Response to Comment 19: The Office is not adopting the suggested 
changes as they would limit the OED Director's discretion in actions 
after the Committee on Discipline has made a probable cause 
determination. In addition, the disposition authority of the OED 
Director is presently listed in Sec.  11.22(h). The Office is adopting 
the rule as proposed which allows the OED Director discretion to 
recommend settlement, take no action, issue warnings, or take other 
actions as appropriate.
    Comment 20: A comment suggested the adoption of ABA Model Rule 
1.2(b) regarding a practitioner's endorsement of a client's views or 
activities.
    Response to Comment 20: The Office is declining to enact a rule 
concerning the endorsement of a client's view as the Office believes 
the addition of such language in the rule is unnecessary. By declining 
to adopt this Rule, the USPTO is not implying that a practitioner's 
representation of a client constitutes an endorsement of the client's 
political, economic, social, or moral views or activities.
    Comment 21: A comment stated that Sec.  11.104 should be amended to 
include a provision that would allow a client to opt-out of receiving 
notifications of Office communications and solely rely on the 
practitioner's judgment.
    Response to Comment 21: The Office appreciates this comment. 
Section 11.104 requires a practitioner to keep clients reasonably 
informed of a matter, which allows for flexibility in client 
information exchanges. What is reasonable will depend on the 
circumstances, including the client's request.
    Comment 22: Several commenters raised concerns about the 
interaction of the duty of disclosure provisions, such as 37 CFR 1.56, 
and a practitioner's duty of confidentiality under Sec.  11.106. 
Specifically, the comments raised concerns about the balance between 
the practitioner's duty to disclose information to the Office and the 
duty to protect confidential information of third parties, including 
that of other clients.
    Response to Comment 22: The Office appreciates the comment. 
Sections 11.106(a) and (b) generally permit a practitioner to reveal 
confidential information under certain circumstances. See, e.g., ABA 
Model Rule 1.6, cmt. 12 (2012) (if other law supersedes the rule, 
(b)(6) permits disclosure necessary to comply with the law); see also 
ABA Model Rule 1.6 annot. subsection (b)(6) (``the required-by-law 
exception may be triggered by statutes and administrative agency 
regulations''); N.C. Ethics Op. 2005-9 (2006) (lawyer for public 
company may reveal confidential information about corporate misconduct 
to SEC under permissive-disclosure regulation authorized by Sarbanes-
Oxley Act, even if disclosure would otherwise be prohibited by state's 
ethics rules). Additionally, Section 11.106(c) states that ``[a] 
practitioner shall disclose to the Office information necessary to 
comply with applicable duty of disclosure provisions'' and is provided 
to make clear that the duty of disclosure is mandatory, not optional. 
Section 11.106(c) merely continues the current duty of disclosure 
provision set forth in 37 CFR 10.23(c)(10). See, e.g., Manual of Patent 
Examining Procedure, 8th Ed., Rev. 9 (Aug. 2012) Ch. 2000. While 
paragraph (c) does not impose a new requirement, the express provision 
may be helpful in responding to any allegation of an ethical violation 
before a State bar in a situation where the practitioner engaged in 
particular conduct to comply with this USPTO Rule.
    The comments also suggest that a practitioner's representation of 
one client could be directly adverse to another client in some 
circumstances. However, the restrictions on conflicts of interest that 
may appear between clients would generally prevent a practitioner from 
accepting clients who may have potentially adverse interests. See 
Sec. Sec.  11.107, 11.108. In certain situations a practitioner may 
seek to withdraw from representation under Sec.  11.116 to avoid a 
conflict of interest.
    Comment 23: Commenters raised concerns about the elimination of ABA 
Model Rule 1.8(j) that prohibits a lawyer from having sexual relations 
with a client.
    Response to Comment 23: The Office appreciates the comment 
regarding ABA Model Rule 1.8(j). Because of a

[[Page 20191]]

practitioner's fiduciary duties to a client, combining a professional 
relationship with any intimate personal relationship may violate the 
USPTO Rules concerning conflict of interest and impairment of the 
judgment of both practitioner and client. See, e.g., Sec. Sec.  11.107-
11.109.
    Comment 24: Commenters noted that the proposed rules delete 37 CFR 
10.64, which contained a provision that allowed a practitioner to 
advance any fee required to prevent or remedy abandonment by reason of 
an act or omission attributable to the practitioner. Section 11.108(e) 
mentions ``pending or contemplated litigation,'' but not ``proceedings 
before the Office'' as in Sec.  11.108(i).
    Response to Comment 24: The Office appreciates the comment and is 
adding ``proceedings before the Office'' to Sec.  11.108(e). An added 
provision, namely Sec.  11.108(e)(4), ensures that a practitioner may 
advance fees to prevent or remedy abandonment attributable to the 
practitioner. This is consistent with the intent of Sec.  11.108(e) as 
set forth in the preamble statements of the Notice of Proposed 
Rulemaking. See 77 FR 64193.
    Comment 25: A comment suggested that Sec.  11.108(e) should be 
amended to exclude a non-paying client where a practitioner has already 
paid an Office fee or cost for such non-paying client.
    Response to Comment 25: The Office is adopting an amendment to 
clarify that advancement of Office fees or costs required by law is 
permissible, in accord with 37 CFR 10.64(b), provided the client 
remains ultimately liable for such expenses. Also, in accord with 37 
CFR 10.64(b), advancement of fees or costs in order to prevent or 
remedy abandonment of applications by acts or omissions of the 
practitioner and not the client is also permissible, whether or not the 
client is ultimately liable for such fees. See generally ABA Model Rule 
1.8, cmt. 10 (2012).
    Comment 26: A comment suggested expanding the ability of a 
practitioner to take an interest in a proceeding by adding to Sec.  
11.108(i)(3) the following language: ``or accept an interest in an 
entity that directly or indirectly owns the patent as part or all of 
his or her fee.''
    Response to Comment 26: Section 11.108(i)(3) allows practitioners 
to accept an interest in a patent as part or all of his or her fee. The 
suggestion of expanding the express allowance to include entities is 
not adopted as the USPTO Rules already permit certain business 
transactions with a client. See Sec.  11.108. However, many 
transactions would be subject to other rules and requirements in place 
to protect clients. See Sec. Sec.  11.108(a) and (i), 11.105; see also 
ABA Model Rule 1.5, cmt. 4 (2012).
    Comment 27: A comment suggested expanding Sec.  11.108(i)(3) by 
adding the phrase ``or patent application'' to a ``practitioner's 
interest in a patent'' because not all interests are based upon issued 
patents.
    Response to Comment 27: The Office appreciates this comment and is 
adopting this change in Sec.  11.108(i)(3) to better reflect a 
practitioner's ability to acquire interests in patent applications.
    Comment 28: A comment noted that the ability to take an interest in 
a patent under Sec.  11.108(i)(3) should still subject the practitioner 
to paragraph (a) of that section.
    Response to Comment 28: The Office appreciates the comment and 
notes that practitioners are subject to all of the provisions of Sec.  
11.108. The Office is adopting language to clarify that practitioners 
who take an interest in a patent or patent application, as part of or 
all of their fee, are still subject to the conflict of interest 
provisions of Sec.  11.108, which prohibit business transactions 
adverse to a client unless certain conditions are met.
    Comment 29: A comment requested clarification as to whether Sec.  
11.108(a) would prohibit a practitioner from owning investment vehicles 
such as mutual funds or IRA holdings which may include stock or 
securities in a company that competes with the practitioner's client.
    Response to Comment 29: The Office appreciates this comment and 
notes that a practitioner is prohibited from representing a client if 
the representation will be materially limited by the practitioner's own 
interests, unless the practitioner reasonably believes that the 
representation will not be adversely affected and the client provides 
informed consent. Sec.  11.107(a)(2) and (b). The Office notes, for 
example, that a diversified mutual fund would ordinarily not be 
considered an interest adverse to a client under the USPTO Rules. Thus, 
practitioners would be required to review their holdings and consider 
whether their duty of loyalty would be compromised, and they may be 
required to discuss the matter with their clients.
    Comment 30: A comment suggested that the screening provisions under 
Sec.  11.110(a)(2) are more extensive than those under Sec.  11.112(c), 
and thus Sec.  11.112(c) should be adopted for imputed conflicts among 
practitioners.
    Response to Comment 30: The Office appreciates the comment and is 
removing the requirements to provide certifications of compliance from 
Sec.  11.110(a)(2) by deleting paragraph (iii). The new language 
provides less burdensome screening requirements for all practitioners 
while ensuring proper notice is given to former clients.
    Comment 31: Commenters stated that the Office should adopt ABA 
Model Rule 1.11 regarding conflicts of interest for former and current 
government employees because a special rule is not needed for Federal 
government employees.
    Response to Comment 31: The Office appreciates the comments. 
However, Sec.  11.111 states that ``[a] practitioner who is a former or 
current Federal government employee shall not engage in any conduct 
which is contrary to applicable Federal ethics laws, including conflict 
of interest statutes and regulations of the department, agency or 
commission formerly or currently employing said practitioner.'' This 
section incorporates existing requirements addressing the unique 
situations affecting Federal government employees. See, e.g., 18 U.S.C. 
207. The Office declines to create an additional set of rules for 
Federal government employees.
    Comment 32: A comment suggested that the USPTO adopt small 
deviations from the ABA Model Rules for Client Trust Account Records by 
not requiring practitioners to maintain copies of cancelled checks.
    Response to Comment 32: The Office has reviewed each of the ABA 
Model Rules for Client Trust Account Records individually, along with 
the proposed changes, and is not adopting the suggested change. The 
final rule upholds the standards in the ABA Model Rules and is 
consistent with the Comments and Annotations. Section 11.115 allows a 
practitioner to maintain physical or electronic equivalents of all 
cancelled checks. See, e.g., ABA Model Rules for Client Trust Account 
Records Rule 1, cmt. 2 (2010) (``Most banks now provide electronic 
images of checks to customers who have access to their accounts on 
internet-based Web sites. It is the [practitioner's] responsibility to 
download electronic images''). As noted in the preamble, records stored 
off-site must be readily accessible to the practitioner and the 
practitioner should be able to produce and print them upon request.
    Comment 33: Several commenters disagreed with the deletion of the 
latter half of ABA Model Rule 2.1 in Sec.  11.201, which allows 
practitioners, in rendering advice, to refer not only to law but to 
other considerations such as moral, economic, social and political 
factors, that may be relevant to a client's situation.

[[Page 20192]]

    Response to Comment 33: The Office appreciates the comments. ``In 
rendering legal advice, a [practitioner] may refer not only to law but 
to other considerations such as moral, economic, social and political 
factors that may be relevant to the client's situation.'' ABA Model 
Rule 2.1. The Office agrees with the ABA and is incorporating this 
provision into the final rule.
    Comment 34: A comment requested that the Office adopt ABA Model 
Rule 2.3(c) without modification.
    Response to Comment 34: The Office appreciates the comment and had 
proposed to tailor ABA Model Rule 2.3(c) to the specific practice 
before the Office. In light of the ABA language having the same effect, 
the Office is adopting ABA Model Rule 2.3(c), without modification, in 
Sec.  11.203(c).
    Comment 35: A comment requested that the Office clarify Sec.  
11.302 to ensure that seeking extensions of time would not be 
sanctionable behavior under this rule.
    Response to Comment 35: The Office appreciates this comment and 
notes that the Office does not expect a change from the current 
practice. A practitioner who fails to make reasonable efforts to 
expedite proceedings, as circumstances may dictate, may be subject to 
discipline. What efforts may be reasonable depend on the circumstances.
    Comment 36: A comment requested clarification as to who is referred 
to as having otherwise disclosed such authority in Sec.  11.303(a)(2) 
``if such authority is not otherwise disclosed'' with respect to ex 
parte proceedings.
    Response to Comment 36: A practitioner has the duty to disclose 
legal authority in the controlling jurisdiction known to the 
practitioner to be directly adverse to the position of the client, 
unless it has already been disclosed. Awareness of disclosures by the 
Office or persons acting on behalf of an applicant in an ex parte 
proceeding before the Office, in both the same or related proceedings, 
may assist practitioners in complying with this provision.
    Comment 37: Commenters questioned the scope of ``directly adverse'' 
as it relates to Sec.  11.303(a)(2).
    Response to Comment 37: The Office appreciates the comment and 
notes that the scope of what is directly adverse to the position of the 
client depends on the facts of each case. See, e.g., ABA Model Rule 
3.3, annot. Subsection (a)(2) (2012).
    Comment 38: Several commenters suggested a revision to the 
requirement to disclose confidential client information under Sec.  
11.303(e) to address concerns about unknowingly violating the duty of 
disclosure provisions.
    Response to Comment 38: The Office appreciates the comment but is 
not amending the language. The rule carries forward a practitioner's 
duty of disclosure requirements. See, e.g., 37 CFR 1.56, 1.555(a), 
1.740(a)(13), 1.765(c) and (d), 1.933(a), Manual of Patent Examining 
Procedure, 8th Ed., Rev. 9 (Aug. 2012) Ch. 2000; see also 37 CFR 
10.23(c)(10).
    Comment 39: A comment suggested clarification as to whether ex 
parte communication, in the course of patent prosecution, with USPTO 
examiners and other officials, would be prohibited by Sec.  11.305.
    Response to Comment 39: The Office appreciates this comment. 
Nothing in this rule would prevent ex parte communication that is 
authorized by law, rule or court order, in an ex parte proceeding.
    Comment 40: A comment urges the adoption of ABA Model Rule 3.6 with 
regard to trial publicity.
    Response to Comment 40: The Office appreciates this comment and is 
adopting ABA Model Rule 3.6 as Sec.  11.306 except for the provisions 
related to criminal cases.
    Comment 41: A comment noted that Sec.  11.307 should be amended to 
allow a practitioner who is an inventor to act as an advocate in a 
proceeding where he would likely be called as a witness.
    Response to Comment 41: The Office appreciates this comment. 
Consistent with existing practice, a co-inventor, who is also a 
practitioner, would not be disqualified from representing other co-
inventors before the Office if the removal would cause the client 
substantial hardship, or if the testimony relates to an uncontested 
issue. However, a practitioner who is an inventor of a patent involved 
in litigation, and who might be called as a witness, should generally 
not act as an advocate in the matter.
    Comment 42: Several commenters suggested that the ability for a 
practitioner to be called as a witness under Sec.  11.307 could create 
problems between the practitioner and client when the testimony relates 
to a duty of disclosure.
    Response to Comment 42: The Office appreciates the comment and will 
follow the ABA Model Rule by deleting paragraph (a)(4). A 
practitioner's submission of information disclosure statements and 
associated certifications ordinarily would fall under the exceptions in 
paragraphs (a)(1) or (a)(3).
    Comment 43: A comment suggested that Sec.  11.504 would prohibit a 
law firm that includes both lawyer-practitioners and lawyers who do not 
practice before the USPTO.
    Response to Comment 43: The Office appreciates this comment and 
notes that Sec.  11.504 does not prohibit the formation of a law firm 
that includes both lawyer-practitioners and lawyers who do not practice 
before the USPTO. The definition of ``practitioner'' includes 
individuals who are members in good standing of the bar of the highest 
court of a State. See Sec.  11.1; 5 U.S.C. 500(b). Thus, firms 
consisting of lawyers who do not practice before the USPTO and 
practitioners are permitted under the USPTO Rules. This is not a 
departure from current practice.
    Comment 44: A comment noted that the language of Sec.  11.505(c), 
which discusses the unauthorized practice of law, may inadvertently 
cause confusion as to members of the bar who are placed on inactive 
status, but not suspended.
    Response to Comment 44: The Office appreciates the comment and is 
amending the rule to more closely follow ABA Model Rule 5.5(a) by 
simplifying the language. The Office believes that the ABA Model Rule 
encompasses the language of Sec.  11.505(b) through (f), as proposed, 
and makes clear these activities are a violation of the rule. The 
Office therefore concludes that expressly listing these activities in 
the final rule is unnecessary. The final rule states that a 
practitioner shall not practice law in a jurisdiction in violation of 
the regulation of the legal profession in that jurisdiction, or assist 
another in doing so. For purposes of this rule, the USPTO is a 
jurisdiction. See, e.g., In re Peirce, 128 P.3d 443, 444 (Nev. 2006) 
(concluding that ``another jurisdiction'' includes the USPTO). Courts 
have long held that registered practitioners who practice before the 
Office are practicing law. See, e.g., Sperry v. Florida, 373 U.S. 379 
(1963); Sperti Prods., Inc. v. Coca-Cola Co., 262 F. Supp. 148 (D. Del. 
1966). In addition, the Office notes that those not recognized to 
practice before the Office are expressly prohibited from holding 
themselves out as so recognized. See 35 U.S.C. 33.
    Comment 45: One comment indicated that Sec.  11.703(d), which 
allows practitioners to participate with a prepaid or group legal 
service plan operated by an organization that uses in-person or 
telephone solicitation of memberships or subscriptions, may result in 
harm to the public because it could provide an advantage to certain 
non-practitioner entities over competent professionals. The comment 
reasoned that law firms are prohibited by the constraints of Sec.  
11.107(a) while certain non-practitioner entities are not. The

[[Page 20193]]

comment suggested that the rules reflect the ``opposite approach'' 
which would protect the public from unskilled and underpaid novice 
practitioners employed by such non-practitioner entities. The comment 
suggested that uninformed potential clients could be swayed by the 
advertising of such non-practitioner entities and may receive poor 
quality representation by such inexperienced practitioners.
    Response to Comment 45: The Office appreciates the comment 
regarding Sec.  11.703(d), which is wholly based on ABA Model Rule 7.3. 
The Office declines to alter the proposed rule in light of this 
comment. The regulation of non-practitioner entities that do not appear 
before the Office is outside the scope of these rules. The Office notes 
that practitioners of all experience levels should exercise diligence 
and professional judgment when associating with a non-practitioner 
entity operating a group or prepaid legal services plan to ensure that 
plan sponsors operate a legal services plan that does not cause the 
practitioner to violate applicable ethics rules, including Sec.  
11.107(a). See, e.g., ABA Model Rule 7.3, cmts. 7 and 9 (2012).
    Comment 46: The Office received statements about Sec.  11.801(d) 
from four commenters. One commenter expressed that Sec.  11.801(d) is 
not part of the ABA Model Rules and does not define ``failure to 
cooperate.'' The commenter also urged the Office to clarify whether the 
assertion of constitutional or other privileges might be considered a 
failure to cooperate. Another commenter believed that Sec.  11.801(d) 
fails to provide appropriate protections for client confidences and 
further stated that the rule appears unnecessary in light of Sec.  
11.801(c). Another commenter requested further explanation of the 
activities covered and prohibited by Sec.  11.801(d) that are not 
already covered by the other parts of the rule. The commenter also 
asked whether a different standard is intended for Sec.  11.801(d) than 
for the other parts of the rule, and suggested that Sec.  11.801(d) be 
deleted as unnecessarily duplicative if a single standard is intended. 
The final commenter noted that neither the ABA Model Rules nor the 
jurisdiction where the practitioner is licensed to practice non-patent 
law imposed the requirement set forth under Sec.  11.801(d) and asked 
questions regarding the scope of the rule.
    Response to Comment 46: The Office appreciates these comments and 
the chance to clarify that the duty to cooperate with OED is not new. 
Section 11.801(d), now included in 11.801(b), returns the duty to 
cooperate to its correct location in the Office's substantive ethics 
rules. 37 CFR 10.131 expressly included the duty to cooperate, and 37 
CFR 10.23(c)(16) explained it was a violation of the USPTO Code to fail 
to do so. Section 11.801(b) makes certain that practitioners are aware 
of their duty to cooperate with OED.
    The Office disagrees that the scope of updated Sec.  11.801(b) 
needs to be revised. The requirements of the rule are not new and 
practitioners may review Final Orders where the USPTO Director imposed 
discipline for a failure to cooperate under the Office's previous 
iteration of its rules. See, e.g., In re Lawrence Y.D. Ho, Proceeding 
No. D09-04 (USPTO, Jan. 30, 2009). In addition, because there are at 
least seven jurisdictions that adopted the ABA Model Rules and that 
have ethics rules regarding cooperating with the respective 
jurisdiction's disciplinary authority, disciplinary decisions from 
those jurisdictions (Louisiana, Massachusetts, New Mexico, Ohio, 
Oregon, Virginia, and Wisconsin) can be helpful to practitioners. 
Hence, pursuant to Sec.  11.801(b), a practitioner will be obligated to 
respond to a request to explain information submitted; to permit the 
inspection of business records, files, accounts, and other things; and 
to furnish written releases or authorizations if needed by OED to 
obtain documents or information from third parties.
    A practitioner's duty to cooperate fully with OED is vital to 
maintaining the integrity of the legal profession, which is an 
important duty owed by a practitioner to the public, the bar, the 
profession, and the Office. See, e.g., In re Riddle, 857 P.2d 1233, 
1235-36 (Ariz. 1993) (``Respondent's failure to cooperate with self-
regulating disciplinary system of legal profession violates one of 
attorney's most fundamental duties as professional to maintain 
integrity of profession.''); In re Watt, 701 A.2d 1011, 1012 (R.I. 
1997) (an attorney's failure to cooperate with the Office of 
Disciplinary Counsel ``has a corrosive effect on the confidence that 
the public must have in the legal profession's ability to regulate the 
conduct of its members''). A failure to cooperate with the OED 
adversely reflects on a practitioner's fitness to practice before the 
Office and is prejudicial to the administration of justice. See, e.g., 
In re Lawrence Y.D. Ho, Proceeding No. D09-04 (USPTO, Jan. 30, 2009) 
(Respondent disciplined for conduct adversely reflecting on his fitness 
to practice before the Office and conduct prejudicial to the 
administration of justice predicated, in part, on not cooperating with 
OED investigation of his alleged misconduct); accord, e.g., State Bar 
of Nevada v. Watkins, 655 P.2d 529, 530-531 (Nev. 1982) (``It is also 
the duty of an attorney to cooperate in investigations of alleged 
professional misconduct, and it may be deemed an adverse reflection on 
his fitness to practice law, and conduct prejudicial to the 
administration of justice when he refuses to answer letters from 
Disciplinary personnel or otherwise fails to cooperate.''). A 
practitioner's compliance with the duty to cooperate has recently 
become even more essential to maintaining the integrity of the 
profession in light of the shorter statutory time allowed for the OED 
Director to complete a full and fair investigation of a practitioner's 
alleged misconduct. See 37 CFR 11.34(d) (disciplinary complaints are to 
be filed within one year after the date on which the OED Director 
receives a grievance forming the basis of the complaint).
    The aforementioned examples are illustrative, not exhaustive, of 
the activities covered under Sec.  11.801(b). Those examples also 
support the Office's disagreement with comments stating that Sec.  
11.801(b) is unnecessary because the other provisions of Sec.  
11.801(b) include the duty to cooperate with the OED. Including this 
prohibition in the USPTO Rules leaves no question about a 
practitioner's duty to cooperate. Section 11.801(b) is consistent with 
Sec.  11.106(b) regarding when a practitioner may reveal information 
relating to the representation of a client. Nothing in Sec.  11.801(b) 
should be read to diminish any privilege or constitutional protections 
afforded to a practitioner in a USPTO disciplinary proceeding. 
Practitioners are to recognize, however, that while a privilege against 
self-incrimination may generally apply to attorney disciplinary 
proceedings, see Spevack v. Klein, 385 U.S. 511 (1967), an adverse 
inference for refusing to cooperate or testify may be drawn in non-
criminal proceedings, see Baxter v. Palmigiano, 425 U.S. 308, 316 
(1976). USPTO disciplinary proceedings are non-criminal proceedings. 
Thus, Sec.  11.801 has been organized to provide some clarity, however 
the text of the final rule is the same as that of the proposed rule.
    Comment 47: A comment requested clarification as to the appropriate 
authority under 37 CFR 11.803(b) for reporting violations of judicial 
conduct rules.
    Response to Comment 47: The Office appreciates this comment and 
notes that the appropriate authority to report judicial misconduct 
would depend on

[[Page 20194]]

the situation and jurisdiction. If such violations are within the 
jurisdiction of OED, they must be reported in writing to the OED 
Director. See 35 U.S.C. 11.19(a) (disciplinary jurisdiction); 37 CFR 
1.1(a)(5) (contact information); see also ABA Model Rule 8.3, cmt. 3 
(2012) (applying similar considerations for judicial misconduct as for 
attorney misconduct whereby ``[a] report should be made to the bar 
disciplinary agency unless some other agency, such as a peer review 
agency, is more appropriate in the circumstances''). Practitioners 
should also consult their State bar rules and other authorities for 
additional reporting obligations that may apply.
    Comment 48: A comment suggested that the Office remove Sec.  
11.804(h) as overreaching beyond the scope of the Office's 
jurisdiction.
    Response to Comment 48: The Office appreciates the comment and has 
preserved the current requirements under 37 CFR 10.23(c)(5), through 
which it currently pursues reciprocal discipline against practitioners, 
in Sec.  11.804(h) and has pursued reciprocal discipline proceedings 
against practitioners. See, e.g., In re Tholstrup, Proceeding No. 
D2012-33 (USPTO, Nov. 15, 2012). OED does not automatically seek 
reciprocal discipline and the USPTO does not automatically impose 
reciprocal discipline. Practitioners may challenge the imposition of 
reciprocal discipline as set forth in 37 CFR 11.24. Additionally, 
trademark attorneys are required to maintain good standing in at least 
one State bar. 37 CFR 11.14(a). The Office believes that failure to 
maintain good standing in a State bar, among other requirements, 
creates a need to recognize public discipline in other jurisdictions. 
Other federal jurisdictions also recognize the importance of reciprocal 
discipline. See generally Gadda v. Ashcroft, 377 F.3d 934 (9th Cir. 
2004). The Office further notes that many rules were reserved in favor 
of the ability to institute reciprocal discipline based upon other 
jurisdictions.
    Comment 49: The Office received two comments about Sec.  11.804(i). 
One commenter recommended that the Office consider adopting explanatory 
and illustrative comments identical to the ABA Model Rule Comments. The 
commenter also stated that Sec.  11.804(i) provides practitioners with 
no specific guidance about what is conduct that adversely reflects on 
the fitness to practice and recommended deleting the rule in the 
absence of adoption of the explanatory comment. A second commenter 
expressed that Sec.  11.804(i) is vague and appears to be overreaching 
and recommended that it be removed.
    Response to Comment 49: Section 11.804(i) is included in the new 
USPTO Rules so that practitioners know it continues to be misconduct to 
engage in conduct that adversely reflects on the practitioner's fitness 
to practice before the Office. The Office believes that Sec.  
11.804(i), which is based upon 37 CFR 10.23(b)(6), covers more than 
illegal conduct and that there is sufficient guidance available to 
practitioners concerning the scope of Sec.  11.804(i). For example, 
practitioners may review Final Orders where the USPTO Director imposed 
discipline based on a violation of 37 CFR 10.23(b)(6) for information 
regarding their obligations under Sec.  11.804(i). Additionally, at 
least five states (Alabama, Kansas, Massachusetts, New York, and Ohio) 
that adopted the ABA Model Rules also adopted rules similar to Sec.  
11.804(i) that specifically proscribe engaging in other conduct that 
adversely reflects on the attorney's fitness to practice. The 
disciplinary decisions from those jurisdictions also provide useful 
information. Finally, the Office has recognized the ABA Model Rule 
Comments and Annotations as useful information.

       Table 1--Principal Source of Sections 11.101 Through 11.804
------------------------------------------------------------------------
               Section                         Principal source
------------------------------------------------------------------------
Sec.   11.101.......................  MRPC 1.1.
Sec.   11.102.......................  MRPC 1.2.
Sec.   11.103.......................  MRPC 1.3.
Sec.   11.104.......................  MRPC 1.4.
Sec.   11.105.......................  MRPC 1.5.
Sec.   11.106(a), (b)...............  MRPC 1.6(a)-(b).
Sec.   11.106(c)....................  USPTO.
Sec.   11.107.......................  MRPC 1.7.
Sec.   11.108.......................  MRPC 1.8, USPTO.
Sec.   11.109.......................  MRPC 1.9.
Sec.   11.110.......................  MRPC 1.10.
Sec.   11.111.......................  USPTO.
Sec.   11.112.......................  MRPC 1.12.
Sec.   11.113.......................  MRPC 1.13.
Sec.   11.114.......................  MRPC 1.14.
Sec.   11.115(a)-(e)................  MRPC 1.15(a)-(e).
Sec.   11.115(f)(1).................  MRCTAR Rule 1.
Sec.   11.115(f)(2).................  MRCTAR Rule 2.
Sec.   11.115(f)(3).................  MRCTAR Rule 3.
Sec.   11.115(f)(4), (5)............  USPTO.
Sec.   11.116.......................  MRPC 1.16.
Sec.   11.117.......................  MRPC 1.17, USPTO.
Sec.   11.118.......................  MRPC 1.18.
Sec.   11.201.......................  MRPC 2.1.
Sec.   11.203.......................  MRPC 2.3.
Sec.   11.204.......................  MRPC 2.4.
Sec.   11.301.......................  MRPC 3.1.
Sec.   11.302.......................  MRPC 3.2.
Sec.   11.303.......................  MRPC 3.3, USPTO.
Sec.   11.304.......................  MRPC 3.4.
Sec.   11.305.......................  MRPC 3.5.
Sec.   11.306.......................  MRPC 3.6.
Sec.   11.307.......................  MRPC 3.7.
Sec.   11.309.......................  MRPC 3.9.
Sec.   11.401.......................  MRPC 4.1.
Sec.   11.402(a)....................  MRPC 4.2(a).
Sec.   11.402(b)....................  DCRPR 4.2(b).
Sec.   11.403.......................  MRPC 4.3.
Sec.   11.404.......................  MRPC 4.4.
Sec.   11.501.......................  MRPC 5.1.
Sec.   11.502.......................  MRPC 5.2.
Sec.   11.503.......................  MRPC 5.3.
Sec.   11.504.......................  MRPC 5.4; DCRPR 5.4(a)(5).
Sec.   11.505.......................  MRPC 5.5(a).
Sec.   11.506.......................  MRPC 5.6.
Sec.   11.507.......................  MRPC 5.7.
Sec.   11.701.......................  MRPC 7.1.
Sec.   11.702.......................  MRPC 7.2.
Sec.   11.703.......................  MRPC 7.3.
Sec.   11.704(a)....................  MRPC 7.4(a).
Sec.   11.704(b)....................  37 CFR 10.34.
Sec.   11.704(d)....................  MRPC 7.4(d).
Sec.   11.704(e)....................  USPTO.
Sec.   11.705.......................  MRPC 7.5.
Sec.   11.801.......................  MRPC 8.1, USPTO.
Sec.   11.802.......................  MRPC 8.2.
Sec.   11.803.......................  MRPC 8.3.
Sec.   11.804(a)-(f)................  MRPC 8.4(a)-(f).
Sec.   11.804(g)....................  37 CFR 10.23(c)(19), 10.23(c)(20),
                                       11.10(d).
Sec.   11.804(h)....................  37 CFR 10.23(c)(5), 11.24.
Sec.   11.804(i)....................  37 CFR 10.23(b)(6).
Sec.   11.901.......................  USPTO.
------------------------------------------------------------------------

    Abbreviations:
DCRPR means the District of Columbia Court of Appeals Rules of 
Professional Conduct (2007).
MRPC means the Model Rules of Professional Conduct of the American Bar 
Association (2011).
MRCTAR means the Model Rules for Client Trust Account Records of the 
American Bar Association (2010).

Rulemaking Considerations

    Regulatory Flexibility Act: The Deputy General Counsel for General 
Law, United States Patent and Trademark Office, has certified to the 
Chief Counsel for Advocacy, Small Business Administration, that the 
changes in this final rule will not have a significant economic impact 
on a substantial number of small entities (Regulatory Flexibility Act, 
5 U.S.C. 605(b)). There were no public comments on the certification 
included with the proposed rule.
    The primary effect of this rulemaking is not economic, but rather 
is to govern the conduct of practitioners in their interactions with 
their clients and with the Office.
    The provisions of this rulemaking that may have a slight economic 
effect, such as record-keeping requirements, requirements to segregate 
client funds, and rules governing representation of

[[Page 20195]]

multiple entities, are consistent with the USPTO's former rules. The 
former USPTO Code and the new USPTO Rules apply to the approximately 
41,000 registered patent practitioners currently appearing before the 
Office, as well as licensed attorneys practicing in trademark and other 
non-patent matters before the Office.
    These conduct rules continue the fundamental requirements of the 
Office's prior conduct rules. The former rules have many broad canons 
and obligations that the rules fundamentally continue, though with 
greater specificity and clarity, and with some reorganization. The 
rules also have greater specificity and clarity as to allowed conduct. 
These final rules, like the former rules, codify many obligations that 
already apply to the practice of law under professional and fiduciary 
duties owed to clients. Because the provisions most likely to have an 
economic effect are already in place, these provisions do not 
contribute to the economic impact of this rulemaking.
    Furthermore, for most practitioners, this rulemaking will reduce 
the economic impact of complying with the Office's professional 
responsibility requirements. Approximately 75 percent of registered 
practitioners are attorneys. The state bars of 50 U.S. jurisdictions, 
i.e., the District of Columbia and 49 States, excluding California, 
have adopted rules based on the same ABA Model Rules on which USPTO 
Rules are based. Therefore, for most current and prospective 
practitioners, the USPTO Rules provide practitioners greater uniformity 
and familiarity with the professional conduct obligations before the 
Office and harmonize the requirements to practice law before the Office 
and other jurisdictions. Moreover, for some provisions of this 
rulemaking, such as the record-keeping requirements in Sec.  
11.115(f)(4) and (f)(5), the rules explicitly state that an attorney or 
agent (employed in the U.S. by a law firm) that complies with the state 
in which he or she practices will be deemed in compliance with the 
Office's requirements as well. Accordingly, this rulemaking streamlines 
many practitioners' obligations and thus reduces the administrative 
burden of compliance.
    Accordingly, this rulemaking does not have a significant economic 
effect on a substantial number of small entities.
    Executive Order 12866: This final rule has been determined not to 
be significant for purposes of Executive Order 12866 (Sept. 30, 1993).
    Executive Order 13563 (Improving Regulation and Regulatory Review): 
The Office has complied with Executive Order 13563. Specifically, the 
Office has, to the extent feasible and applicable: (1) Made a reasoned 
determination that the benefits justify the costs of the rule; (2) 
tailored the rule to impose the least burden on society consistent with 
obtaining the regulatory objectives; (3) selected a regulatory approach 
that maximizes net benefits; (4) specified performance objectives; (5) 
identified and assessed available alternatives; (6) involved the public 
in an open exchange of information and perspectives among experts in 
relevant disciplines, affected stakeholders in the private sector and 
the public as a whole, and provided on-line access to the rulemaking 
docket; (7) attempted to promote coordination, simplification and 
harmonization across government agencies and identified goals designed 
to promote innovation; (8) considered approaches that reduce burdens 
and maintain flexibility and freedom of choice for the public; and (9) 
ensured the objectivity of scientific and technological information and 
processes.
    Executive Order 13132: This rulemaking does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Executive Order 13175 (Tribal Consultation): This rulemaking will 
not: (1) Have substantial direct effects on one or more Indian tribes; 
(2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    Executive Order 12988 (Civil Justice Reform): This rulemaking meets 
applicable standards to minimize litigation, eliminate ambiguity, and 
reduce burden as set forth in sections 3(a) and 3(b)(2) of Executive 
Order 12988 (Feb. 5, 1996).
    Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    Executive Order 12630 (Taking of Private Property): This rulemaking 
will not effect a taking of private property or otherwise have taking 
implications under Executive Order 12630 (Mar. 15, 1988).
    Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the 
United States Patent and Trademark Office will submit a report 
containing the final rule and other required information to the U.S. 
Senate, the U.S. House of Representatives and the Comptroller General 
of the Government Accountability Office. The changes in this rule are 
not expected to result in an annual effect on the economy of 100 
million dollars or more, a major increase in costs or prices, or 
significant adverse effects on competition, employment, investment, 
productivity, innovation, or the ability of United States-based 
enterprises to compete with foreign-based enterprises in domestic and 
export markets. Therefore, this action is not expected to result in a 
``major rule'' as defined in 5 U.S.C. 804(2).
    Unfunded Mandates Reform Act of 1995: The changes in this action do 
not involve a Federal intergovernmental mandate that will result in the 
expenditure by State, local, and tribal governments, in the aggregate, 
of 100 million dollars (as adjusted) or more in any one year, or a 
Federal private sector mandate that will result in the expenditure by 
the private sector of 100 million dollars (as adjusted) or more in any 
one year, and will not significantly or uniquely affect small 
governments. Therefore, no actions are necessary under the provisions 
of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
    National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    National Technology Transfer and Advancement Act: The requirements 
of section 12(d) of the National Technology Transfer and Advancement 
Act of 1995 (15 U.S.C. 272 note) are not applicable because this 
rulemaking does not contain provisions which involve the use of 
technical standards.
    Paperwork Reduction Act: This rulemaking involves information 
collection requirements which are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995

[[Page 20196]]

(PRA) (44 U.S.C. 3501 et seq.). Collection of information activities 
involved in this rulemaking have been reviewed and approved by OMB 
under OMB control number 0651-0017. There were no public comments 
received on the PRA information provided with the proposed rule.
    The title, description, and respondent description of the currently 
approved information collection 0651-0017 are shown below with an 
estimate of the annual reporting burdens. Included in this estimate is 
the time for gathering and maintaining the data needed, and completing 
and reviewing the collection of information. The principal impact of 
the changes in this rulemaking is to registered practitioners and 
attorneys practicing before the Office in trademark and other non-
patent matters.
    OMB Number: 0651-0017
    Title: Practitioner Records Maintenance and Disclosure Before the 
Patent and Trademark Office.
    Form Numbers: None.
    Affected Public: Individuals or households, businesses or other 
for-profit, not-for-profit institutions, Federal Government, and state, 
local, or tribal governments.
    Estimated Number of Likely Respondents: 10,766.
    Estimated Total Annual Burden Hours: 11,926 hours.
    Needs and Uses: The information in this collection is necessary for 
the United States Patent and Trademark Office to implement Federal 
statutes and regulations. See 35 U.S.C. 2(b)(2)(D) and 35 U.S.C. 32. 
These rules require that registered practitioners and attorneys who 
appear before the Office maintain complete records of clients, 
including all funds, securities and other properties of clients coming 
into his/her possession, and render appropriate accounts to the client 
regarding such records, as well as report violations of the rules to 
the Office. Practitioners are mandated by the rules to maintain proper 
documentation so that they can fully cooperate with an investigation in 
the event of a report of an alleged violation and that violations are 
prosecuted as appropriate. The Office has determined that the record 
keeping and maintenance of such records are excluded from any 
associated PRA burden as these activities are usual and customary for 
practitioners representing clients. 5 CFR 1320.3(b)(2). Additionally, 
in the case of most attorney practitioners, any requirements for 
collection of information are not presumed to impose a Federal burden 
as these requirements are also required by a unit of State or local 
government, namely State bar(s), and would be required even in the 
absence of any Federal requirement. 5 CFR 1320.3(b)(3). These rules 
also require, in certain instances, that written consents or 
certifications be provided. Such consents or certifications have been 
determined not to constitute information under 5 CFR 1320.3(h)(1).
    First, the Office estimates that it will take an individual or 
organization approximately three hours, on average, to gather, prepare 
and submit an initial grievance alleging and supporting a violation of 
professional conduct. The Office estimates that approximately 200 
grievances will be received annually from such respondents. The 
requirements of 5 CFR part 1320 do not apply to collections of 
information by the Office during the conduct of an investigation 
involving a potential violation of Office professional conduct rules. 5 
CFR 1320.4(a)(2). Second, the Office estimates that non-attorney 
practitioners may, on average, incur a total of thirty minutes of 
annual burden to notify senders of documents relating to the 
representation of a client that were inadvertently sent. Sec.  
11.404(b). Third, the Office estimates that non-attorney practitioners, 
may, on average, incur a total of thirty minutes of annual burden to 
comply with the Sec.  11.703(c) disclosure requirements relating to 
soliciting professional employment. Of the approximately 41,000 
registered practitioners, 10,526 are non-attorneys and therefore 
considered likely respondents under the PRA for purposes of this 
information collection. Fourth, the Office estimates that suspended and 
excluded practitioners will be subject to approximately 20 hours of 
burden in complying with the record keeping maintenance requirements. 
The Office estimates that approximately 40 practitioners will be 
subject to these record keeping maintenance requirements.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

37 CFR Parts 2 and 7

    Administrative practice and procedure, Trademarks.

37 CFR Part 10

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.

37 CFR Part 11

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.

    For the reasons set forth in the preamble, under the authority of 
35 U.S.C. 2(b)(2)(A) and (D), and 35 U.S.C. 32, the United States 
Patent and Trademark Office amends 37 CFR parts 1, 2, 7, 10, 11, and 41 
as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority:  35 U.S.C. 2(b)(2), unless otherwise noted.


0
2. Section 1.4 is amended to revise paragraph (d)(4)(i) to read as 
follows:


Sec.  1.4  Nature of correspondence and signature requirements.

* * * * *
    (d) * * *
    (4) Certifications--(i) Section 11.18 certifications. The 
presentation to the Office (whether by signing, filing, submitting, or 
later advocating) of any paper by a party, whether a practitioner or 
non-practitioner, constitutes a certification under Sec.  11.18(b) of 
this subchapter. Violations of Sec.  11.18(b)(2) of this subchapter by 
a party, whether a practitioner or non-practitioner, may result in the 
imposition of sanctions under Sec.  11.18(c) of this subchapter. Any 
practitioner violating Sec.  11.18(b) of this subchapter may also be 
subject to disciplinary action. See Sec.  11.18(d) of this subchapter.
* * * * *

0
3. Section 1.21 is amended to remove and reserve paragraphs (a)(7) and 
(a)(8) to read as follows:


Sec.  1.21  Miscellaneous fees and charges.

* * * * *
    (a) * * *
    (7)-(8) [Reserved]
* * * * *

[[Page 20197]]

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
4. The authority citation for 37 CFR Part 2 continues to read as 
follows:

    Authority:  15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.

0
5. Section 2.2 is amended to revise paragraph (c) to read as follows:


Sec.  2.2  Definitions.

* * * * *
    (c) Director as used in this chapter, except for part 11, means the 
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
* * * * *

PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL 
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARKS

0
6. The authority citation for 37 CFR Part 7 continues to read as 
follows:

    Authority:  15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.


0
7. Section 7.25 is amended to revise paragraph (a) to read as follows:


Sec.  7.25  Sections of part 2 applicable to extension of protection.

    (a) Except for Sec. Sec.  2.22-2.23, 2.130-2.131, 2.160-2.166, 
2.168, 2.173, 2.175, 2.181-2.186 and 2.197, all sections in part 2 and 
all sections in part 11 of this chapter shall apply to an extension of 
protection of an international registration to the United States, 
including sections related to proceedings before the Trademark Trial 
and Appeal Board, unless otherwise stated.
* * * * *

PART 10 [Removed and reserved]

0
8. Part 10 is removed and reserved.

PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT 
AND TRADEMARK OFFICE

0
9. The authority citation for 37 CFR part 11 continues to read as 
follows:

    Authority:  5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32, 
41.


0
10. Amend Sec.  11.1 to remove the definitions of ``mandatory 
disciplinary rule'' and ``matter;'' revise the definitions of ``fraud 
or fraudulent'' and ``practitioner;'' and add in alphabetical order the 
definitions of ``confirmed in writing,'' ``firm or law firm,'' 
``informed consent,'' ``law-related services,'' ``partner,'' 
``person,'' ``reasonable belief or reasonably believes,'' ``reasonably 
should know,'' ``screened,'' ``tribunal'' and ``writing or written'' as 
follows:


Sec.  11.1  Definitions.

* * * * *
    Confirmed in writing, when used in reference to the informed 
consent of a person, means informed consent that is given in writing by 
the person or a writing that a practitioner promptly transmits to the 
person confirming an oral informed consent. If it is not feasible to 
obtain or transmit the writing at the time the person gives informed 
consent, then the practitioner must obtain or transmit it within a 
reasonable time thereafter.
* * * * *
    Firm or law firm means a practitioner or practitioners in a law 
partnership, professional corporation, sole proprietorship or other 
association authorized to practice law; or practitioners employed in a 
legal services organization or the legal department of a corporation or 
other organization.
* * * * *
    Fraud or fraudulent means conduct that involves a misrepresentation 
of material fact made with intent to deceive or a state of mind so 
reckless respecting consequences as to be the equivalent of intent, 
where there is justifiable reliance on the misrepresentation by the 
party deceived, inducing the party to act thereon, and where there is 
injury to the party deceived resulting from reliance on the 
misrepresentation. Fraud also may be established by a purposeful 
omission or failure to state a material fact, which omission or failure 
to state makes other statements misleading, and where the other 
elements of justifiable reliance and injury are established.
* * * * *
    Informed consent means the agreement by a person to a proposed 
course of conduct after the practitioner has communicated adequate 
information and explanation about the material risks of and reasonably 
available alternatives to the proposed course of conduct.
* * * * *
    Law-related services means services that might reasonably be 
performed in conjunction with and in substance are related to the 
provision of legal services, and that are not prohibited as 
unauthorized practice of law when provided by a non-lawyer.
* * * * *
    Partner means a member of a partnership, a shareholder in a law 
firm organized as a professional corporation, or a member of an 
association authorized to practice law.
    Person means an individual, a corporation, an association, a trust, 
a partnership, and any other organization or legal entity.
    Practitioner means:
    (1) An attorney or agent registered to practice before the Office 
in patent matters,
    (2) An individual authorized under 5 U.S.C. 500(b), or otherwise as 
provided by Sec.  11.14(a), (b), and (c), to practice before the Office 
in trademark matters or other non-patent matters, or
    (3) An individual authorized to practice before the Office in a 
patent case or matters under Sec.  11.9(a) or (b).
* * * * *
    Reasonable belief or reasonably believes when used in reference to 
a practitioner means that the practitioner believes the matter in 
question and that the circumstances are such that the belief is 
reasonable.
    Reasonably should know when used in reference to a practitioner 
means that a practitioner of reasonable prudence and competence would 
ascertain the matter in question.
* * * * *
    Screened means the isolation of a practitioner from any 
participation in a matter through the timely imposition of procedures 
within a firm that are reasonably adequate under the circumstances to 
protect information that the isolated practitioner is obligated to 
protect under these USPTO Rules of Professional Conduct or other law.
* * * * *
    Tribunal means the Office, a court, an arbitrator in a binding 
arbitration proceeding or a legislative body, administrative agency or 
other body acting in an adjudicative capacity. A legislative body, 
administrative agency or other body acts in an adjudicative capacity 
when a neutral official, after the presentation of evidence or legal 
argument by a party or parties, will render a binding legal judgment 
directly affecting a party's interests in a particular matter.
* * * * *
    Writing or written means a tangible or electronic record of a 
communication or representation, including handwriting, typewriting, 
printing, photostating, photography, audio or video recording and 
electronic communications. A ``signed'' writing includes an electronic 
sound, symbol or process attached to or logically associated with a 
writing and

[[Page 20198]]

executed or adopted by a person with the intent to sign the writing.


0
11. Revise Sec.  11.2(c), (d) and (e) to read as follows:


Sec.  11.2  Director of the Office of Enrollment and Discipline.

* * * * *
    (c) Petition to OED Director regarding enrollment or recognition. 
Any petition from any action or requirement of the staff of OED 
reporting to the OED Director shall be taken to the OED Director 
accompanied by payment of the fee set forth in Sec.  1.21(a)(5)(i) of 
this chapter. Any such petition not filed within sixty days from the 
mailing date of the action or notice from which relief is requested 
will be dismissed as untimely. The filing of a petition will neither 
stay the period for taking other action which may be running, nor stay 
other proceedings. The petitioner may file a single request for 
reconsideration of a decision within thirty days of the date of the 
decision. Filing a request for reconsideration stays the period for 
seeking review of the OED Director's decision until a final decision on 
the request for reconsideration is issued.
    (d) Review of OED Director's decision regarding enrollment or 
recognition. A party dissatisfied with a final decision of the OED 
Director regarding enrollment or recognition shall seek review of the 
decision upon petition to the USPTO Director accompanied by payment of 
the fee set forth in Sec.  1.21(a)(5)(ii) of this chapter. By filing 
such petition to the USPTO Director, the party waives any right to seek 
reconsideration from the OED Director. Any petition not filed within 
thirty days after the final decision of the OED Director may be 
dismissed as untimely. Briefs or memoranda, if any, in support of the 
petition shall accompany the petition. The petition will be decided on 
the basis of the record made before the OED Director. The USPTO 
Director in deciding the petition will consider no new evidence. Copies 
of documents already of record before the OED Director shall not be 
submitted with the petition. An oral hearing will not be granted except 
when considered necessary by the USPTO Director. Any request for 
reconsideration of the decision of the USPTO Director may be dismissed 
as untimely if not filed within thirty days after the date of said 
decision. Only a decision of the USPTO Director regarding denial of a 
petition constitutes a final decision for the purpose of judicial 
review.
    (e) Petition to USPTO Director in disciplinary matters. A party 
dissatisfied with any action or notice of any employee of the Office of 
Enrollment and Discipline during or at the conclusion of a disciplinary 
investigation shall seek review of the action or notice upon petition 
to the OED Director. A petition from any action or notice of the staff 
reporting to the OED Director shall be taken to the OED Director. A 
party dissatisfied with the OED Director's final decision shall seek 
review of the final decision upon petition to the USPTO Director to 
invoke the supervisory authority of the USPTO Director in appropriate 
circumstances in disciplinary matters. Any petition under this 
paragraph must contain a statement of the facts involved and the point 
or points to be reviewed and the action requested. Briefs or memoranda, 
if any, in support of the petition must accompany the petition. Where 
facts are to be proven, the proof in the form of affidavits or 
declarations (and exhibits, if any) must accompany the petition. The 
OED Director may be directed by the USPTO Director to file a reply to 
the petition to the USPTO Director, supplying a copy to the petitioner. 
An oral hearing on petition taken to the USPTO Director will not be 
granted except when considered necessary by the USPTO Director. The 
filing of a petition under this paragraph will not stay an 
investigation, disciplinary proceeding, or other proceedings. Any 
petition under this part not filed within thirty days of the mailing 
date of the action or notice from which relief is requested may be 
dismissed as untimely. Any request for reconsideration of the decision 
of the OED Director or the USPTO Director may be dismissed as untimely 
if not filed within thirty days after the date of said decision. Only a 
decision of the USPTO Director regarding denial of a petition 
constitutes a final decision for the purpose of judicial review.


0
12. Remove and reserve Sec.  11.8(d) to read as follows:


Sec.  11.8  Oath and registration fee.

* * * * *
    (d) [Reserved]


0
13. Revise Sec.  11.9(b) to read as follows:


Sec.  11.9  Limited Recognition in patent matters.

* * * * *
    (b) A nonimmigrant alien residing in the United States and 
fulfilling the provisions of Sec.  11.7(a) and (b) may be granted 
limited recognition if the nonimmigrant alien is authorized by the 
United States Government to be employed or trained in the United States 
in the capacity of representing a patent applicant by presenting or 
prosecuting a patent application. Limited recognition shall be granted 
for a period consistent with the terms of authorized employment or 
training. Limited recognition shall not be granted or extended to a 
non-United States citizen residing abroad. If granted, limited 
recognition shall automatically expire upon the nonimmigrant alien's 
departure from the United States.
0
14. Revise Sec.  11.11(a), (b), and (c), remove and reserve paragraphs 
(d)(2) and (d)(4), and revise paragraphs (d)(5), (d)(6), (e) and (f)(1) 
to read as follows:


Sec.  11.11  Administrative suspension, inactivation, resignation, and 
readmission.

    (a) Contact information. (1) A registered practitioner must notify 
the OED Director of his or her postal address for his or her office, up 
to three email addresses where he or she receives email, and a business 
telephone number, as well as every change to any of said addresses or 
telephone number within thirty days of the date of the change. A 
registered practitioner shall, in addition to any notice of change of 
address and telephone number filed in individual patent applications, 
separately file written notice of the change of address or telephone 
number to the OED Director. A registered practitioner who is an 
attorney in good standing with the bar of the highest court of one or 
more States shall provide the OED Director with the State bar 
identification number associated with each membership. The OED Director 
shall publish from the roster a list containing the name, postal 
business addresses, business telephone number, registration number, and 
registration status as an attorney or agent of each registered 
practitioner recognized to practice before the Office in patent cases.
    (2) A letter may be addressed to any registered practitioner, at 
the address of which separate notice was last received by the OED 
Director, for the purpose of ascertaining whether such practitioner 
desires to remain on the register. Any registered practitioner failing 
to reply and give any information requested by the OED Director within 
a time limit specified will be subject to administrative suspension 
under paragraph (b) of this section.
    (b) Administrative suspension. (1) Whenever it appears that a 
registered practitioner or a person granted limited recognition under 
Sec.  11.9(b) has failed to comply with Sec.  11.8(d) or paragraph 
(a)(2) of this section, the OED Director shall publish and send a 
notice to the registered practitioner or person granted limited 
recognition advising of the noncompliance, the consequence of

[[Page 20199]]

being administratively suspended under paragraph (b)(5) of this section 
if noncompliance is not timely remedied, and the requirements for 
reinstatement under paragraph (f) of this section. The notice shall be 
published and sent to the registered practitioner or person granted 
limited recognition by mail to the last postal address furnished under 
paragraph (a) of this section or by email addressed to the last email 
addresses furnished under paragraph (a) of this section. The notice 
shall demand compliance and payment of a delinquency fee set forth in 
Sec.  1.21(a)(9)(i) of this subchapter within sixty days after the date 
of such notice.
    (2) In the event a registered practitioner or person granted 
limited recognition fails to comply with the notice of paragraph (b)(1) 
of this section within the time allowed, the OED Director shall publish 
and send in the manner provided for in paragraph (b)(1) of this section 
to the registered practitioner or person granted limited recognition a 
Rule to Show Cause why his or her registration or recognition should 
not be administratively suspended, and he or she no longer be permitted 
to practice before the Office in patent matters or in any way hold 
himself or herself out as being registered or authorized to practice 
before the Office in patent matters. The OED Director shall file a copy 
of the Rule to Show Cause with the USPTO Director.
    (3) Within 30 days of the OED Director's sending the Rule to Show 
Cause identified in paragraph (b)(2) of this section, the registered 
practitioner or person granted limited recognition may file a response 
to the Rule to Show Cause with the USPTO Director. The response must 
set forth the factual and legal bases why the person should not be 
administratively suspended. The registered practitioner or person 
granted limited recognition shall serve the OED Director with a copy of 
the response at the time it is filed with the USPTO Director. Within 
ten days of receiving a copy of the response, the OED Director may file 
a reply with the USPTO Director that includes documents demonstrating 
that the notice identified in paragraph (b)(1) of this section was 
published and sent to the practitioner in accordance with paragraph 
(b)(1) of this section. A copy of the reply by the OED Director shall 
be served on the registered practitioner or person granted limited 
recognition. When acting on the Rule to Show Cause, if the USPTO 
Director determines that there are no genuine issues of material fact 
regarding the Office's compliance with the notice requirements under 
this section or the failure of the person to pay the requisite fees, 
the USPTO Director shall enter an order administratively suspending the 
registered practitioner or person granted limited recognition. 
Otherwise, the USPTO Director shall enter an appropriate order 
dismissing the Rule to Show Cause. Nothing herein shall permit an 
administratively suspended registered practitioner or person granted 
limited recognition to seek a stay of the administrative suspension 
during the pendency of any review of the USPTO Director's final 
decision.
    (4) [Reserved]
    (5) An administratively suspended registered practitioner or person 
granted limited recognition is subject to investigation and discipline 
for his or her conduct prior to, during, or after the period he or she 
was administratively suspended.
    (6) An administratively suspended registered practitioner or person 
granted limited recognition is prohibited from practicing before the 
Office in patent cases while administratively suspended. A registered 
practitioner or person granted limited recognition who knows he or she 
has been administratively suspended under this section will be subject 
to discipline for failing to comply with the provisions of this 
paragraph (b).
    (c) Administrative inactivation. (1) Any registered practitioner 
who shall become employed by the Office shall comply with Sec.  11.116 
for withdrawal from the applications, patents, and trademark matters 
wherein he or she represents an applicant or other person, and notify 
the OED Director in writing of said employment on the first day of said 
employment. The name of any registered practitioner employed by the 
Office shall be endorsed on the roster as administratively inactive. 
Upon separation from the Office, the administratively inactive 
practitioner may request reactivation by completing and filing an 
application, Data Sheet, signing a written undertaking required by 
Sec.  11.10, and paying the fee set forth in Sec.  1.21(a)(1)(i) of 
this subchapter. An administratively inactive practitioner remains 
subject to the provisions of the USPTO Rules of Professional Conduct 
and to proceedings and sanctions under Sec. Sec.  11.19 through 11.58 
for conduct that violates a provision of the USPTO Rules of 
Professional Conduct prior to or during employment at the Office. If, 
within 30 days after separation from the Office, the registered 
practitioner does not request active status or another status, the 
registered practitioner will be endorsed on the roster as voluntarily 
inactive and be subject to the provisions of paragraph (d) of this 
section.
    (2) Any registered practitioner who is a judge of a court of 
record, full-time court commissioner, U.S. bankruptcy judge, U.S. 
magistrate judge, or a retired judge who is eligible for temporary 
judicial assignment and is not engaged in the practice of law may 
request, in writing, that his or her name be endorsed on the roster as 
administratively inactive. Upon acceptance of the request, the OED 
Director shall endorse the name of the practitioner as administratively 
inactive. Following separation from the bench, the practitioner may 
request restoration to active status by completing and filing an 
application, Data Sheet, and signing a written undertaking required by 
Sec.  11.10.
    (d) * * *
    (2) [Reserved]
* * * * *
    (4) [Reserved]
    (5) A registered practitioner in voluntary inactive status is 
prohibited from practicing before the Office in patent cases while in 
voluntary inactive status. A registered practitioner in voluntary 
inactive status will be subject to discipline for failing to comply 
with the provisions of this paragraph. Upon acceptance of the request 
for voluntary inactive status, the practitioner must comply with the 
provisions of Sec.  11.116.
    (6) Any registered practitioner whose name has been endorsed as 
voluntarily inactive pursuant to paragraph (d)(1) of this section and 
is not under investigation and not subject to a disciplinary proceeding 
may be restored to active status on the register as may be appropriate 
provided that the practitioner files a written request for restoration, 
a completed application for registration on a form supplied by the OED 
Director furnishing all requested information and material, including 
information and material pertaining to the practitioner's moral 
character and reputation under Sec.  11.7(a)(2)(i) during the period of 
inactivation, a declaration or affidavit attesting to the fact that the 
practitioner has read the most recent revisions of the patent laws and 
the rules of practice before the Office, and pays the fees set forth in 
Sec.  1.21(a)(7)(iii) and (iv) of this subchapter.
    (e) Resignation. A registered practitioner or a practitioner 
recognized under Sec.  11.14(c), who is not under investigation under 
Sec.  11.22 for a possible violation of the USPTO Rules of Professional 
Conduct, subject to discipline under Sec. Sec.  11.24 or 11.25, or a 
practitioner against whom probable cause has been found by a panel of 
the Committee on Discipline under Sec.  11.23(b), may resign by 
notifying the

[[Page 20200]]

OED Director in writing that he or she desires to resign. Upon 
acceptance in writing by the OED Director of such notice, that 
registered practitioner or practitioner under Sec.  11.14 shall no 
longer be eligible to practice before the Office in patent matters but 
shall continue to file a change of address for five years thereafter in 
order that he or she may be located in the event information regarding 
the practitioner's conduct comes to the attention of the OED Director 
or any grievance is made about his or her conduct while he or she 
engaged in practice before the Office. The name of any registered 
practitioner whose resignation is accepted shall be removed from the 
register, endorsed as resigned, and notice thereof published in the 
Official Gazette. Upon acceptance of the resignation by the OED 
Director, the registered practitioner must comply with the provisions 
of Sec.  11.116.
    (f) Administrative reinstatement. (1) Any registered practitioner 
who has been administratively suspended pursuant to paragraph (b) of 
this section, or who has resigned pursuant to paragraph (e) of this 
section, may be reinstated on the register provided the practitioner 
has applied for reinstatement on an application form supplied by the 
OED Director, demonstrated compliance with the provisions of Sec.  
11.7(a)(2)(i) and (iii), and paid the fees set forth in Sec.  
1.21(a)(9)(i) and (a)(9)(ii) of this subchapter. Any person granted 
limited recognition who has been administratively suspended pursuant to 
paragraph (b) of this section may have their recognition reactivated 
provided the practitioner has applied for reinstatement on an 
application form supplied by the OED Director, demonstrated compliance 
with the provisions of Sec.  11.7(a)(2)(i) and (iii), and paid the fees 
set forth in Sec.  1.21(a)(9)(i) and (a)(9)(ii) of this subchapter. A 
practitioner who has resigned or was administratively suspended for two 
or more years before the date the Office receives a completed 
application from the person who resigned or was administratively 
suspended must also pass the registration examination under Sec.  
11.7(b)(1)(ii). Any reinstated practitioner is subject to investigation 
and discipline for his or her conduct that occurred prior to, during, 
or after the period of his or her administrative suspension or 
resignation.
* * * * *

0
15. Revise Sec.  11.19(a) and (b)(1)(iv) to read as follows:


Sec.  11.19  Disciplinary jurisdiction; Jurisdiction to transfer to 
disability inactive status.

    (a) All practitioners engaged in practice before the Office; all 
practitioners administratively suspended; all practitioners registered 
to practice before the Office in patent cases; all practitioners 
inactivated; all practitioners authorized under Sec.  11.6(d) to take 
testimony; and all practitioners transferred to disability inactive 
status, reprimanded, suspended, or excluded from the practice of law by 
a duly constituted authority, including by the USPTO Director, are 
subject to the disciplinary jurisdiction of the Office. Practitioners 
who have resigned shall also be subject to such jurisdiction with 
respect to conduct undertaken prior to the resignation and conduct in 
regard to any practice before the Office following the resignation. A 
person not registered or recognized to practice before the Office is 
also subject to the disciplinary authority of the Office if the person 
provides or offers to provide any legal services before the Office.
    (b) * * *
    (1) * * *
    (iv) Violation of any USPTO Rule of Professional Conduct; or
* * * * *

0
16. Revise Sec.  11.20(a)(4) and (b) to read as follows:


Sec.  11.20  Disciplinary sanctions; Transfer to disability inactive 
status.

    (a) * * *
    (4) Probation. Probation may be imposed in lieu of or in addition 
to any other disciplinary sanction. Any conditions of probation shall 
be stated in writing in the order imposing probation. The order shall 
also state whether, and to what extent, the practitioner shall be 
required to notify clients of the probation. Violation of any condition 
of probation shall be cause for imposition of the disciplinary 
sanction. Imposition of the disciplinary sanction predicated upon 
violation of probation shall occur only after an order to show cause 
why the disciplinary sanction should not be imposed is resolved 
adversely to the practitioner.
    (b) Conditions imposed with discipline. When imposing discipline, 
the USPTO Director may condition reinstatement upon the practitioner 
making restitution, successfully completing a professional 
responsibility course or examination, or any other condition deemed 
appropriate under the circumstances.
* * * * *

0
17. Revise Sec.  11.21 to read as follows:


Sec.  11.21  Warnings.

    A warning is neither public nor a disciplinary sanction. The OED 
Director may conclude an investigation with the issuance of a warning. 
The warning shall contain a brief statement of facts and USPTO Rules of 
Professional Conduct relevant to the facts.


0
18. In Sec.  11.22 revise the section heading, paragraph (f)(2), and 
the introductory text of paragraph (i) to read as follows:


Sec.  11.22  Disciplinary investigations.

* * * * *
    (f) * * *
    (2) The OED Director may request information and evidence regarding 
possible grounds for discipline of a practitioner from a non-grieving 
client either after obtaining the consent of the practitioner or upon a 
finding by a Contact Member of the Committee on Discipline, appointed 
in accordance with Sec.  11.23(d), that good cause exists to believe 
that the possible ground for discipline alleged has occurred with 
respect to non-grieving clients. Neither a request for, nor disclosure 
of, such information shall constitute a violation of any USPTO Rules of 
Professional Conduct.
* * * * *
    (i) Closing investigation. The OED Director shall terminate an 
investigation and decline to refer a matter to the Committee on 
Discipline if the OED Director determines that:
* * * * *

0
19. Revise Sec.  11.24(e) to read as follows:


Sec.  11.24  Reciprocal discipline.

* * * * *
    (e) Adjudication in another jurisdiction or Federal agency or 
program. In all other respects, a final adjudication in another 
jurisdiction or Federal agency or program that a practitioner, whether 
or not admitted in that jurisdiction, has been guilty of misconduct 
shall establish a prima facie case by clear and convincing evidence 
that the practitioner has engaged in misconduct under Sec.  11.804.
* * * * *

0
20. Revise Sec.  11.25(a) to read as follows:


Sec.  11.25  Interim suspension and discipline based upon conviction of 
committing a serious crime.

    (a) Notification of OED Director. Upon being convicted of a crime 
in a court of the United States, any State, or a foreign country, a 
practitioner subject to the disciplinary jurisdiction of the Office 
shall notify the OED Director in writing

[[Page 20201]]

of the same within thirty days from the date of such conviction. Upon 
being advised or learning that a practitioner subject to the 
disciplinary jurisdiction of the Office has been convicted of a crime, 
the OED Director shall make a preliminary determination whether the 
crime constitutes a serious crime warranting interim suspension. If the 
crime is a serious crime, the OED Director shall file with the USPTO 
Director proof of the conviction and request the USPTO Director to 
issue a notice and order set forth in paragraph (b)(2) of this section. 
The OED Director shall in addition, without Committee on Discipline 
authorization, file with the USPTO Director a complaint against the 
practitioner complying with Sec.  11.34 predicated upon the conviction 
of a serious crime. If the crime is not a serious crime, the OED 
Director shall process the matter in the same manner as any other 
information or evidence of a possible violation of any USPTO Rule of 
Professional Conduct coming to the attention of the OED Director.
* * * * *

0
21. Revise Sec.  11.32 to read as follows:


Sec.  11.32  Instituting a disciplinary proceeding.

    If after conducting an investigation under Sec.  11.22(a), the OED 
Director is of the opinion that grounds exist for discipline under 
Sec.  11.19(b), the OED Director, after complying where necessary with 
the provisions of 5 U.S.C. 558(c), may convene a meeting of a panel of 
the Committee on Discipline. If convened, the panel of the Committee on 
Discipline shall then determine as specified in Sec.  11.23(b) whether 
there is probable cause to bring disciplinary charges. If the panel of 
the Committee on Discipline determines that probable cause exists to 
bring charges, the OED Director may institute a disciplinary proceeding 
by filing a complaint under Sec.  11.34.

0
22. In Sec.  11.34 revise the introductory text of paragraph (a), and 
paragraphs (a)(1) and (b) to read as follows:


Sec.  11.34  Complaint.

    (a) A complaint instituting a disciplinary proceeding shall:
    (1) Name the person who is the subject of the complaint who may 
then be referred to as the ``respondent'';
* * * * *
    (b) A complaint will be deemed sufficient if it fairly informs the 
respondent of any grounds for discipline, and where applicable, the 
USPTO Rules of Professional Conduct that form the basis for the 
disciplinary proceeding so that the respondent is able to adequately 
prepare a defense.
* * * * *

0
23. Revise Sec.  11.35(a)(2)(ii) and (a)(4)(ii) to read as follows:


Sec.  11.35  Service of complaint.

    (a) * * *
    (2) * * *
    (ii) A respondent who is not registered at the last address for the 
respondent known to the OED Director.
* * * * *
    (4) * * *
    (ii) A respondent who is not registered at the last address for the 
respondent known to the OED Director.
* * * * *

0
24. In Sec.  11.54 revise paragraph (a)(2) and the introductory text of 
paragraph (b) to read as follows:


Sec.  11.54  Initial decision of hearing officer.

    (a) * * *
    (2) An order of default judgment, of suspension or exclusion from 
practice, of reprimand, of probation or an order dismissing the 
complaint. The order also may impose any conditions deemed appropriate 
under the circumstances. The hearing officer shall transmit a copy of 
the decision to the OED Director and to the respondent. After issuing 
the decision, the hearing officer shall transmit the entire record to 
the OED Director. In the absence of an appeal to the USPTO Director, 
the decision of the hearing officer, including a default judgment, 
will, without further proceedings, become the decision of the USPTO 
Director thirty days from the date of the decision of the hearing 
officer.
    (b) The initial decision of the hearing officer shall explain the 
reason for any default judgment, reprimand, suspension, exclusion, or 
probation, and shall explain any conditions imposed with discipline. In 
determining any sanction, the following four factors must be considered 
if they are applicable:
* * * * *

0
25. In Sec.  11.58 revise the introductory text of paragraph (b)(2) and 
paragraph (f)(1)(ii) to read as follows:


Sec.  11.58  Duties of disciplined or resigned practitioner, or 
practitioner on disability inactive status.

* * * * *
    (b) * * *
    (2) Within forty-five days after entry of the order of suspension, 
exclusion, or of acceptance of resignation, the practitioner shall file 
with the OED Director an affidavit of compliance certifying that the 
practitioner has fully complied with the provisions of the order, this 
section, and with Sec.  11.116 for withdrawal from representation. 
Appended to the affidavit of compliance shall be:
* * * * *
    (f) * * *
    (1) * * *
    (ii) Shows by clear and convincing evidence that the excluded, 
suspended or resigned practitioner, or practitioner transferred to 
disability inactive status has complied with the provisions of this 
section and all USPTO Rules of Professional Conduct; and
* * * * *


Sec.  11.61  [Removed and reserved]


0
26. Section 11.61 is removed and reserved.
0
27. Subpart D is added to Part 11 to read as follows:
Subpart D--USPTO Rules of Professional Conduct
Sec.
11.100 [Reserved]

Client-Practitioner Relationship

11.101 Competence.
11.102 Scope of representation and allocation of authority between 
client and practitioner.
11.103 Diligence.
11.104 Communication.
11.105 Fees.
11.106 Confidentiality of information.
11.107 Conflict of interest; Current clients.
11.108 Conflict of interest; Current clients; Specific rules.
11.109 Duties to former clients.
11.110 Imputation of conflicts of interest; General rule.
11.111 Former or current Federal Government employees.
11.112 Former judge, arbitrator, mediator or other third-party 
neutral.
11.113 Organization as client.
11.114 Client with diminished capacity.
11.115 Safekeeping property.
11.116 Declining or terminating representation.
11.117 Sale of law practice.
11.118 Duties to prospective client.
11.119-11.200 [Reserved]

Counselor

11.201 Advisor.
11.202 [Reserved]
11.203 Evaluation for use by third persons.
11.204 Practitioner serving as third-party neutral.
11.205-11.300 [Reserved]

Advocate

11.301 Meritorious claims and contentions.
11.302 Expediting proceedings.
11.303 Candor toward the tribunal.
11.304 Fairness to opposing party and counsel.
11.305 Impartiality and decorum of the tribunal.
11.306 Trial publicity.
11.307 Practitioner as witness.

[[Page 20202]]

11.308 [Reserved]
11.309 Advocate in nonadjudicative proceedings.
11.310-11.400 [Reserved]

Transactions With Persons Other Than Clients

11.401 Truthfulness in statements to others.
11.402 Communication with person represented by a practitioner.
11.403 Dealing with unrepresented person.
11.404 Respect for rights of third persons.
11.405-11.500 [Reserved]

Law Firms and Associations

11.501 Responsibilities of partners, managers, and supervisory 
practitioners.
11.502 Responsibilities of a subordinate practitioner.
11.503 Responsibilities regarding non-practitioner assistance.
11.504 Professional independence of a practitioner.
11.505 Unauthorized practice of law.
11.506 Restrictions on right to practice.
11.507 Responsibilities regarding law-related services.
11.508-11.700 [Reserved]

Information About Legal Services

11.701 Communications concerning a practitioner's services.
11.702 Advertising.
11.703 Direct contact with prospective clients.
11.704 Communication of fields of practice and specialization.
11.705 Firm names and letterheads.
11.706-11.800 [Reserved]

Maintaining the Integrity of the Profession

11.801 Registration, recognition and disciplinary matters.
11.802 Judicial and legal officials.
11.803 Reporting professional misconduct.
11.804 Misconduct.
11.805-11.900 [Reserved]
11.901 Savings clause.

Subpart D--USPTO Rules of Professional Conduct


Sec.  11.100  [Reserved]

Client-Practitioner Relationship


Sec.  11.101  Competence.

    A practitioner shall provide competent representation to a client. 
Competent representation requires the legal, scientific, and technical 
knowledge, skill, thoroughness and preparation reasonably necessary for 
the representation.


Sec.  11.102  Scope of representation and allocation of authority 
between client and practitioner.

    (a) Subject to paragraphs (c) and (d) of this section, a 
practitioner shall abide by a client's decisions concerning the 
objectives of representation and, as required by Sec.  11.104, shall 
consult with the client as to the means by which they are to be 
pursued. A practitioner may take such action on behalf of the client as 
is impliedly authorized to carry out the representation. A practitioner 
shall abide by a client's decision whether to settle a matter.
    (b) [Reserved]
    (c) A practitioner may limit the scope of the representation if the 
limitation is reasonable under the circumstances and the client gives 
informed consent.
    (d) A practitioner shall not counsel a client to engage, or assist 
a client, in conduct that the practitioner knows is criminal or 
fraudulent, but a practitioner may discuss the legal consequences of 
any proposed course of conduct with a client and may counsel or assist 
a client to make a good-faith effort to determine the validity, scope, 
meaning or application of the law.


Sec.  11.103  Diligence.

    A practitioner shall act with reasonable diligence and promptness 
in representing a client.


Sec.  11.104  Communication.

    (a) A practitioner shall:
    (1) Promptly inform the client of any decision or circumstance with 
respect to which the client's informed consent is required by the USPTO 
Rules of Professional Conduct;
    (2) Reasonably consult with the client about the means by which the 
client's objectives are to be accomplished;
    (3) Keep the client reasonably informed about the status of the 
matter;
    (4) Promptly comply with reasonable requests for information from 
the client; and
    (5) Consult with the client about any relevant limitation on the 
practitioner's conduct when the practitioner knows that the client 
expects assistance not permitted by the USPTO Rules of Professional 
Conduct or other law.
    (b) A practitioner shall explain a matter to the extent reasonably 
necessary to permit the client to make informed decisions regarding the 
representation.


Sec.  11.105  Fees.

    (a) A practitioner shall not make an agreement for, charge, or 
collect an unreasonable fee or an unreasonable amount for expenses. The 
factors to be considered in determining the reasonableness of a fee 
include the following:
    (1) The time and labor required, the novelty and difficulty of the 
questions involved, and the skill requisite to perform the legal 
service properly;
    (2) The likelihood, if apparent to the client, that the acceptance 
of the particular employment will preclude other employment by the 
practitioner;
    (3) The fee customarily charged in the locality for similar legal 
services;
    (4) The amount involved and the results obtained;
    (5) The time limitations imposed by the client or by the 
circumstances;
    (6) The nature and length of the professional relationship with the 
client;
    (7) The experience, reputation, and ability of the practitioner or 
practitioners performing the services; and
    (8) Whether the fee is fixed or contingent.
    (b) The scope of the representation and the basis or rate of the 
fee and expenses for which the client will be responsible shall be 
communicated to the client, preferably in writing, before or within a 
reasonable time after commencing the representation, except when the 
practitioner will charge a regularly represented client on the same 
basis or rate. Any changes in the basis or rate of the fee or expenses 
shall also be communicated to the client.
    (c) A fee may be contingent on the outcome of the matter for which 
the service is rendered, except in a matter in which a contingent fee 
is prohibited by law. A contingent fee agreement shall be in a writing 
signed by the client and shall state the method by which the fee is to 
be determined, including the percentage or percentages that shall 
accrue to the practitioner in the event of settlement, trial or appeal; 
litigation and other expenses to be deducted from the recovery; and 
whether such expenses are to be deducted before or after the contingent 
fee is calculated. The agreement must clearly notify the client of any 
expenses for which the client will be liable whether or not the client 
is the prevailing party. Upon conclusion of a contingent fee matter, 
the practitioner shall provide the client with a written statement 
stating the outcome of the matter and, if there is a recovery, showing 
the remittance to the client and the method of its determination.
    (d) [Reserved]
    (e) A division of a fee between practitioners who are not in the 
same firm may be made only if:
    (1) The division is in proportion to the services performed by each 
practitioner or each practitioner assumes joint responsibility for the 
representation;
    (2) The client agrees to the arrangement, including the share each 
practitioner will receive, and the agreement is confirmed in writing; 
and
    (3) The total fee is reasonable.

[[Page 20203]]

Sec.  11.106  Confidentiality of information.

    (a) A practitioner shall not reveal information relating to the 
representation of a client unless the client gives informed consent, 
the disclosure is impliedly authorized in order to carry out the 
representation, the disclosure is permitted by paragraph (b) of this 
section, or the disclosure is required by paragraph (c) of this 
section.
    (b) A practitioner may reveal information relating to the 
representation of a client to the extent the practitioner reasonably 
believes necessary:
    (1) To prevent reasonably certain death or substantial bodily harm;
    (2) To prevent the client from engaging in inequitable conduct 
before the Office or from committing a crime or fraud that is 
reasonably certain to result in substantial injury to the financial 
interests or property of another and in furtherance of which the client 
has used or is using the practitioner's services;
    (3) To prevent, mitigate or rectify substantial injury to the 
financial interests or property of another that is reasonably certain 
to result or has resulted from the client's commission of a crime, 
fraud, or inequitable conduct before the Office in furtherance of which 
the client has used the practitioner's services;
    (4) To secure legal advice about the practitioner's compliance with 
the USPTO Rules of Professional Conduct;
    (5) To establish a claim or defense on behalf of the practitioner 
in a controversy between the practitioner and the client, to establish 
a defense to a criminal charge or civil claim against the practitioner 
based upon conduct in which the client was involved, or to respond to 
allegations in any proceeding concerning the practitioner's 
representation of the client; or
    (6) To comply with other law or a court order.
    (c) A practitioner shall disclose to the Office information 
necessary to comply with applicable duty of disclosure provisions.


Sec.  11.107  Conflict of interest; Current clients.

    (a) Except as provided in paragraph (b) of this section, a 
practitioner shall not represent a client if the representation 
involves a concurrent conflict of interest. A concurrent conflict of 
interest exists if:
    (1) The representation of one client will be directly adverse to 
another client; or
    (2) There is a significant risk that the representation of one or 
more clients will be materially limited by the practitioner's 
responsibilities to another client, a former client or a third person 
or by a personal interest of the practitioner.
    (b) Notwithstanding the existence of a concurrent conflict of 
interest under paragraph (a) of this section, a practitioner may 
represent a client if:
    (1) The practitioner reasonably believes that the practitioner will 
be able to provide competent and diligent representation to each 
affected client;
    (2) The representation is not prohibited by law;
    (3) The representation does not involve the assertion of a claim by 
one client against another client represented by the practitioner in 
the same litigation or other proceeding before a tribunal; and
    (4) Each affected client gives informed consent, confirmed in 
writing.


Sec.  11.108  Conflict of interest; Current clients; Specific rules.

    (a) A practitioner shall not enter into a business transaction with 
a client or knowingly acquire an ownership, possessory, security or 
other pecuniary interest adverse to a client unless:
    (1) The transaction and terms on which the practitioner acquires 
the interest are fair and reasonable to the client and are fully 
disclosed and transmitted in writing in a manner that can be reasonably 
understood by the client;
    (2) The client is advised in writing of the desirability of seeking 
and is given a reasonable opportunity to seek the advice of independent 
legal counsel in the transaction; and
    (3) The client gives informed consent, in a writing signed by the 
client, to the essential terms of the transaction and the 
practitioner's role in the transaction, including whether the 
practitioner is representing the client in the transaction.
    (b) A practitioner shall not use information relating to 
representation of a client to the disadvantage of the client unless the 
client gives informed consent, except as permitted or required by the 
USPTO Rules of Professional Conduct.
    (c) A practitioner shall not solicit any substantial gift from a 
client, including a testamentary gift, or prepare on behalf of a client 
an instrument giving the practitioner or a person related to the 
practitioner any substantial gift unless the practitioner or other 
recipient of the gift is related to the client. For purposes of this 
paragraph, related persons include a spouse, child, grandchild, parent, 
grandparent or other relative or individual with whom the practitioner 
or the client maintains a close, familial relationship.
    (d) Prior to the conclusion of representation of a client, a 
practitioner shall not make or negotiate an agreement giving the 
practitioner literary or media rights to a portrayal or account based 
in substantial part on information relating to the representation.
    (e) A practitioner shall not provide financial assistance to a 
client in connection with pending or contemplated litigation or a 
proceeding before the Office, except that:
    (1) A practitioner may advance court costs and expenses of 
litigation, the repayment of which may be contingent on the outcome of 
the matter;
    (2) A practitioner representing an indigent client may pay court 
costs and expenses of litigation or a proceeding before the Office on 
behalf of the client;
    (3) A practitioner may advance costs and expenses in connection 
with a proceeding before the Office provided the client remains 
ultimately liable for such costs and expenses; and
    (4) A practitioner may also advance any fee required to prevent or 
remedy an abandonment of a client's application by reason of an act or 
omission attributable to the practitioner and not to the client, 
whether or not the client is ultimately liable for such fee.
    (f) A practitioner shall not accept compensation for representing a 
client from one other than the client unless:
    (1) The client gives informed consent;
    (2) There is no interference with the practitioner's independence 
of professional judgment or with the client-practitioner relationship; 
and
    (3) Information relating to representation of a client is protected 
as required by Sec.  11.106.
    (g) A practitioner who represents two or more clients shall not 
participate in making an aggregate settlement of the claims of or 
against the clients, unless each client gives informed consent, in a 
writing signed by the client. The practitioner's disclosure shall 
include the existence and nature of all the claims involved and of the 
participation of each person in the settlement.
    (h) A practitioner shall not:
    (1) Make an agreement prospectively limiting the practitioner's 
liability to a client for malpractice unless the client is 
independently represented in making the agreement; or
    (2) Settle a claim or potential claim for such liability with an 
unrepresented client or former client unless that person is advised in 
writing of the desirability of seeking and is given a reasonable 
opportunity to seek the

[[Page 20204]]

advice of independent legal counsel in connection therewith.
    (i) A practitioner shall not acquire a proprietary interest in the 
cause of action, subject matter of litigation, or a proceeding before 
the Office which the practitioner is conducting for a client, except 
that the practitioner may, subject to the other provisions in this 
section:
    (1) Acquire a lien authorized by law to secure the practitioner's 
fee or expenses;
    (2) Contract with a client for a reasonable contingent fee in a 
civil case; and
    (3) In a patent case or a proceeding before the Office, take an 
interest in the patent or patent application as part or all of his or 
her fee.
    (j) [Reserved]
    (k) While practitioners are associated in a firm, a prohibition in 
paragraphs (a) through (i) of this section that applies to any one of 
them shall apply to all of them.


Sec.  11.109  Duties to former clients.

    (a) A practitioner who has formerly represented a client in a 
matter shall not thereafter represent another person in the same or a 
substantially related matter in which that person's interests are 
materially adverse to the interests of the former client unless the 
former client gives informed consent, confirmed in writing.
    (b) A practitioner shall not knowingly represent a person in the 
same or a substantially related matter in which a firm with which the 
practitioner formerly was associated had previously represented a 
client:
    (1) Whose interests are materially adverse to that person; and
    (2) About whom the practitioner had acquired information protected 
by Sec. Sec.  11.106 and 11.109(c) that is material to the matter; 
unless the former client gives informed consent, confirmed in writing.
    (c) A practitioner who has formerly represented a client in a 
matter or whose present or former firm has formerly represented a 
client in a matter shall not thereafter:
    (1) Use information relating to the representation to the 
disadvantage of the former client except as the USPTO Rules of 
Professional Conduct would permit or require with respect to a client, 
or when the information has become generally known; or
    (2) Reveal information relating to the representation except as the 
USPTO Rules of Professional Conduct would permit or require with 
respect to a client.


Sec.  11.110  Imputation of conflicts of interest; General rule.

    (a) While practitioners are associated in a firm, none of them 
shall knowingly represent a client when any one of them practicing 
alone would be prohibited from doing so by Sec. Sec.  11.107 or 11.109, 
unless:
    (1) The prohibition is based on a personal interest of the 
disqualified practitioner and does not present a significant risk of 
materially limiting the representation of the client by the remaining 
practitioners in the firm; or
    (2) The prohibition is based upon Sec.  11.109(a) or (b), and 
arises out of the disqualified practitioner's association with a prior 
firm, and
    (i) The disqualified practitioner is timely screened from any 
participation in the matter and is apportioned no part of the fee 
therefrom; and
    (ii) Written notice is promptly given to any affected former client 
to enable the former client to ascertain compliance with the provisions 
of this section, which shall include a description of the screening 
procedures employed; a statement of the firm's and of the screened 
practitioner's compliance with the USPTO Rules of Professional Conduct; 
a statement that review may be available before a tribunal; and an 
agreement by the firm to respond promptly to any written inquiries or 
objections by the former client about the screening procedures.
    (b) When a practitioner has terminated an association with a firm, 
the firm is not prohibited from thereafter representing a person with 
interests materially adverse to those of a client represented by the 
formerly associated practitioner and not currently represented by the 
firm, unless:
    (1) The matter is the same or substantially related to that in 
which the formerly associated practitioner represented the client; and
    (2) Any practitioner remaining in the firm has information 
protected by Sec. Sec.  11.106 and 11.109(c) that is material to the 
matter.
    (c) A disqualification prescribed by this section may be waived by 
the affected client under the conditions stated in Sec.  11.107.
    (d) The disqualification of practitioners associated in a firm with 
former or current Federal Government lawyers is governed by Sec.  
11.111.


Sec.  11.111  Former or current Federal Government employees.

    A practitioner who is a former or current Federal Government 
employee shall not engage in any conduct which is contrary to 
applicable Federal ethics law, including conflict of interest statutes 
and regulations of the department, agency or commission formerly or 
currently employing said practitioner.


Sec.  11.112  Former judge, arbitrator, mediator or other third-party 
neutral.

    (a) Except as stated in paragraph (d) of this section, a 
practitioner shall not represent anyone in connection with a matter in 
which the practitioner participated personally and substantially as a 
judge or other adjudicative officer or law clerk to such a person or as 
an arbitrator, mediator or other third-party neutral, unless all 
parties to the proceeding give informed consent, confirmed in writing.
    (b) A practitioner shall not negotiate for employment with any 
person who is involved as a party or as practitioner for a party in a 
matter in which the practitioner is participating personally and 
substantially as a judge or other adjudicative officer or as an 
arbitrator, mediator or other third-party neutral. A practitioner 
serving as a law clerk to a judge or other adjudicative officer may 
negotiate for employment with a party or practitioner involved in a 
matter in which the clerk is participating personally and 
substantially, but only after the practitioner has notified the judge, 
or other adjudicative officer.
    (c) If a practitioner is disqualified by paragraph (a) of this 
section, no practitioner in a firm with which that practitioner is 
associated may knowingly undertake or continue representation in the 
matter unless:
    (1) The disqualified practitioner is timely screened from any 
participation in the matter and is apportioned no part of the fee 
therefrom; and
    (2) Written notice is promptly given to the parties and any 
appropriate tribunal to enable them to ascertain compliance with the 
provisions of this section.
    (d) An arbitrator selected as a partisan of a party in a 
multimember arbitration panel is not prohibited from subsequently 
representing that party.


Sec.  11.113  Organization as client.

    (a) A practitioner employed or retained by an organization 
represents the organization acting through its duly authorized 
constituents.
    (b) If a practitioner for an organization knows that an officer, 
employee or other person associated with the organization is engaged in 
action, intends to act or refuses to act in a matter related to the 
representation that is a violation of a legal obligation to the 
organization, or a violation of law that reasonably might be imputed to 
the organization, and that is likely to result in substantial injury to 
the organization, then the practitioner

[[Page 20205]]

shall proceed as is reasonably necessary in the best interest of the 
organization. Unless the practitioner reasonably believes that it is 
not necessary in the best interest of the organization to do so, the 
practitioner shall refer the matter to higher authority in the 
organization, including, if warranted by the circumstances, to the 
highest authority that can act on behalf of the organization as 
determined by applicable law.
    (c) Except as provided in paragraph (d) of this section, if
    (1) Despite the practitioner's efforts in accordance with paragraph 
(b) of this section the highest authority that can act on behalf of the 
organization insists upon or fails to address in a timely and 
appropriate manner an action, or a refusal to act, that is clearly a 
violation of law, and
    (2) The practitioner reasonably believes that the violation is 
reasonably certain to result in substantial injury to the organization, 
then the practitioner may reveal information relating to the 
representation whether or not Sec.  11.106 permits such disclosure, but 
only if and to the extent the practitioner reasonably believes 
necessary to prevent substantial injury to the organization.
    (d) Paragraph (c) of this section shall not apply with respect to 
information relating to a practitioner's representation of an 
organization to investigate an alleged violation of law, or to defend 
the organization or an officer, employee or other constituent 
associated with the organization against a claim arising out of an 
alleged violation of law.
    (e) A practitioner who reasonably believes that he or she has been 
discharged because of the practitioner's actions taken pursuant to 
paragraphs (b) or (c) of this section, or who withdraws under 
circumstances that require or permit the practitioner to take action 
under either of those paragraphs, shall proceed as the practitioner 
reasonably believes necessary to assure that the organization's highest 
authority is informed of the practitioner's discharge or withdrawal.
    (f) In dealing with an organization's directors, officers, 
employees, members, shareholders, or other constituents, a practitioner 
shall explain the identity of the client when the practitioner knows or 
reasonably should know that the organization's interests are adverse to 
those of the constituents with whom the practitioner is dealing.
    (g) A practitioner representing an organization may also represent 
any of its directors, officers, employees, members, shareholders or 
other constituents, subject to the provisions of Sec.  11.107. If the 
organization's consent to the dual representation is required by Sec.  
11.107, the consent shall be given by an appropriate official of the 
organization other than the individual who is to be represented, or by 
the shareholders.


Sec.  11.114  Client with diminished capacity.

    (a) When a client's capacity to make adequately considered 
decisions in connection with a representation is diminished, whether 
because of minority, mental impairment or for some other reason, the 
practitioner shall, as far as reasonably possible, maintain a normal 
client-practitioner relationship with the client.
    (b) When the practitioner reasonably believes that the client has 
diminished capacity, is at risk of substantial physical, financial or 
other harm unless action is taken and cannot adequately act in the 
client's own interest, the practitioner may take reasonably necessary 
protective action, including consulting with individuals or entities 
that have the ability to take action to protect the client and, in 
appropriate cases, seeking the appointment of a guardian ad litem, 
conservator or guardian.
    (c) Information relating to the representation of a client with 
diminished capacity is protected under Sec.  11.106. When taking 
protective action pursuant to paragraph (b) of this section, the 
practitioner is impliedly authorized under Sec.  11.106(a) to reveal 
information about the client, but only to the extent reasonably 
necessary to protect the client's interests.


Sec.  11.115  Safekeeping property.

    (a) A practitioner shall hold property of clients or third persons 
that is in a practitioner's possession in connection with a 
representation separate from the practitioner's own property. Funds 
shall be kept in a separate account maintained in the state where the 
practitioner's office is situated, or elsewhere with the consent of the 
client or third person. Where the practitioner's office is situated in 
a foreign country, funds shall be kept in a separate account maintained 
in that foreign country or elsewhere with the consent of the client or 
third person. Other property shall be identified as such and 
appropriately safeguarded. Complete records of such account funds and 
other property shall be kept by the practitioner and shall be preserved 
for a period of five years after termination of the representation.
    (b) A practitioner may deposit the practitioner's own funds in a 
client trust account for the sole purpose of paying bank service 
charges on that account, but only in an amount necessary for that 
purpose.
    (c) A practitioner shall deposit into a client trust account legal 
fees and expenses that have been paid in advance, to be withdrawn by 
the practitioner only as fees are earned or expenses incurred.
    (d) Upon receiving funds or other property in which a client or 
third person has an interest, a practitioner shall promptly notify the 
client or third person. Except as stated in this section or otherwise 
permitted by law or by agreement with the client, a practitioner shall 
promptly deliver to the client or third person any funds or other 
property that the client or third person is entitled to receive and, 
upon request by the client or third person, shall promptly render a 
full accounting regarding such property.
    (e) When in the course of representation a practitioner is in 
possession of property in which two or more persons (one of whom may be 
the practitioner) claim interests, the property shall be kept separate 
by the practitioner until the dispute is resolved. The practitioner 
shall promptly distribute all portions of the property as to which the 
interests are not in dispute.
    (f) All separate accounts for clients or third persons kept by a 
practitioner must also comply with the following provisions:
    (1) Required records. The records to be kept include:
    (i) Receipt and disbursement journals containing a record of 
deposits to and withdrawals from client trust accounts, specifically 
identifying the date, source, and description of each item deposited, 
as well as the date, payee and purpose of each disbursement;
    (ii) Ledger records for all client trust accounts showing, for each 
separate trust client or beneficiary, the source of all funds 
deposited, the names of all persons for whom the funds are or were 
held, the amount of such funds, the descriptions and amounts of charges 
or withdrawals, and the names of all persons or entities to whom such 
funds were disbursed;
    (iii) Copies of retainer and compensation agreements with clients;
    (iv) Copies of accountings to clients or third persons showing the 
disbursement of funds to them or on their behalf;
    (v) Copies of bills for legal fees and expenses rendered to 
clients;
    (vi) Copies of records showing disbursements on behalf of clients;
    (vii) The physical or electronic equivalents of all checkbook 
registers, bank statements, records of deposit, pre-numbered canceled 
checks, and

[[Page 20206]]

substitute checks provided by a financial institution;
    (viii) Records of all electronic transfers from client trust 
accounts, including the name of the person authorizing transfer, the 
date of transfer, the name of the recipient and confirmation from the 
financial institution of the trust account number from which money was 
withdrawn and the date and the time the transfer was completed;
    (ix) Copies of monthly trial balances and quarterly reconciliations 
of the client trust accounts maintained by the practitioner; and
    (x) Copies of those portions of client files that are reasonably 
related to client trust account transactions.
    (2) Client trust account safeguards. With respect to client trust 
accounts required by paragraphs (a) through (e) of this section:
    (i) Only a practitioner or a person under the direct supervision of 
the practitioner shall be an authorized signatory or authorize 
transfers from a client trust account;
    (ii) Receipts shall be deposited intact and records of deposit 
should be sufficiently detailed to identify each item; and
    (iii) Withdrawals shall be made only by check payable to a named 
payee and not to cash, or by authorized electronic transfer.
    (3) Availability of records. Records required by paragraph (f)(1) 
of this section may be maintained by electronic, photographic, or other 
media provided that they otherwise comply with paragraphs (f)(1) and 
(f)(2) of this section and that printed copies can be produced. These 
records shall be readily accessible to the practitioner.
    (4) Lawyers. The records kept by a lawyer are deemed to be in 
compliance with this section if the types of records that are 
maintained meet the recordkeeping requirements of a state in which the 
lawyer is licensed and in good standing, the recordkeeping requirements 
of the state where the lawyer's principal place of business is located, 
or the recordkeeping requirements of this section.
    (5) Patent agents and persons granted limited recognition who are 
employed in the United States by a law firm. The records kept by a law 
firm employing one or more registered patent agents or persons granted 
limited recognition under Sec.  11.9 are deemed to be in compliance 
with this section if the types of records that are maintained meet the 
recordkeeping requirements of the state where at least one practitioner 
of the law firm is licensed and in good standing, the recordkeeping 
requirements of the state where the law firm's principal place of 
business is located, or the recordkeeping requirements of this section.


Sec.  11.116  Declining or terminating representation.

    (a) Except as stated in paragraph (c) of this section, a 
practitioner shall not represent a client, or where representation has 
commenced, shall withdraw from the representation of a client if:
    (1) The representation will result in violation of the USPTO Rules 
of Professional Conduct or other law;
    (2) The practitioner's physical or mental condition materially 
impairs the practitioner's ability to represent the client; or
    (3) The practitioner is discharged.
    (b) Except as stated in paragraph (c) of this section, a 
practitioner may withdraw from representing a client if:
    (1) Withdrawal can be accomplished without material adverse effect 
on the interests of the client;
    (2) The client persists in a course of action involving the 
practitioner's services that the practitioner reasonably believes is 
criminal or fraudulent;
    (3) The client has used the practitioner's services to perpetrate a 
crime or fraud;
    (4) A client insists upon taking action that the practitioner 
considers repugnant or with which the practitioner has a fundamental 
disagreement;
    (5) The client fails substantially to fulfill an obligation to the 
practitioner regarding the practitioner's services and has been given 
reasonable warning that the practitioner will withdraw unless the 
obligation is fulfilled;
    (6) The representation will result in an unreasonable financial 
burden on the practitioner or has been rendered unreasonably difficult 
by the client; or
    (7) Other good cause for withdrawal exists.
    (c) A practitioner must comply with applicable law requiring notice 
to or permission of a tribunal when terminating a representation. When 
ordered to do so by a tribunal, a practitioner shall continue 
representation notwithstanding good cause for terminating the 
representation.
    (d) Upon termination of representation, a practitioner shall take 
steps to the extent reasonably practicable to protect a client's 
interests, such as giving reasonable notice to the client, allowing 
time for employment of other counsel, surrendering papers and property 
to which the client is entitled and refunding any advance payment of 
fee or expense that has not been earned or incurred. The practitioner 
may retain papers relating to the client to the extent permitted by 
other law.


Sec.  11.117  Sale of law practice.

    A practitioner or a law firm may sell or purchase a law practice, 
or an area of law practice, including good will, if the following 
conditions are satisfied:
    (a) The seller ceases to engage in the private practice of law, or 
in the area of practice that has been sold, in a geographic area in 
which the practice has been conducted;
    (b)(1) Except as provided in paragraph (b)(2) of this section, the 
entire practice, or the entire area of practice, is sold to one or more 
lawyers or law firms;
    (2) To the extent the practice or the area of practice involves 
patent proceedings before the Office, that practice or area of practice 
may be sold only to one or more registered practitioners or law firms 
that include at least one registered practitioner;
    (c)(1) The seller gives written notice to each of the seller's 
clients regarding:
    (i) The proposed sale;
    (ii) The client's right to retain other counsel or to take 
possession of the file; and
    (iii) The fact that the client's consent to the transfer of the 
client's files will be presumed if the client does not take any action 
or does not otherwise object within ninety (90) days after receipt of 
the notice.
    (2) If a client cannot be given notice, the representation of that 
client may be transferred to the purchaser only upon entry of an order 
so authorizing by a court having jurisdiction. The seller may disclose 
to the court in camera information relating to the representation only 
to the extent necessary to obtain an order authorizing the transfer of 
a file; and
    (d) The fees charged clients shall not be increased by reason of 
the sale.


Sec.  11.118  Duties to prospective client.

    (a) A person who discusses with a practitioner the possibility of 
forming a client-practitioner relationship with respect to a matter is 
a prospective client.
    (b) Even when no client-practitioner relationship ensues, a 
practitioner who has had discussions with the prospective client shall 
not use or reveal information learned in the consultation, except as 
Sec.  11.109 would permit with respect to information of a former 
client.
    (c) A practitioner subject to paragraph (b) of this section shall 
not represent a client with interests materially adverse to those of a 
prospective client in the same or a substantially related matter if the 
practitioner received information

[[Page 20207]]

from the prospective client that could be significantly harmful to that 
person in the matter, except as provided in paragraph (d) of this 
section. If a practitioner is disqualified from representation under 
this paragraph, no practitioner in a firm with which that practitioner 
is associated may knowingly undertake or continue representation in 
such a matter, except as provided in paragraph (d) of this section.
    (d) When the practitioner has received disqualifying information as 
defined in paragraph (c) of this section, representation is permissible 
if:
    (1) Both the affected client and the prospective client have given 
informed consent, confirmed in writing; or
    (2) The practitioner who received the information took reasonable 
measures to avoid exposure to more disqualifying information than was 
reasonably necessary to determine whether to represent the prospective 
client; and
    (i) The disqualified practitioner is timely screened from any 
participation in the matter and is apportioned no part of the fee 
therefrom; and
    (ii) Written notice is promptly given to the prospective client.


Sec. Sec.  11.119-11.200   [Reserved]

Counselor


Sec.  11.201  Advisor.

    In representing a client, a practitioner shall exercise independent 
professional judgment and render candid advice. In rendering advice, a 
practitioner may refer not only to law but to other considerations such 
as moral, economic, social and political factors that may be relevant 
to the client's situation.


Sec.  11.202  [Reserved]


Sec.  11.203  Evaluation for use by third persons.

    (a) A practitioner may provide an evaluation of a matter affecting 
a client for the use of someone other than the client if the 
practitioner reasonably believes that making the evaluation is 
compatible with other aspects of the practitioner's relationship with 
the client.
    (b) When the practitioner knows or reasonably should know that the 
evaluation is likely to affect the client's interests materially and 
adversely, the practitioner shall not provide the evaluation unless the 
client gives informed consent.
    (c) Except as disclosure is authorized in connection with a report 
of an evaluation, information relating to the evaluation is otherwise 
protected by Sec.  11.106.


Sec.  11.204  Practitioner serving as third-party neutral.

    (a) A practitioner serves as a third-party neutral when the 
practitioner assists two or more persons who are not clients of the 
practitioner to reach a resolution of a dispute or other matter that 
has arisen between them. Service as a third-party neutral may include 
service as an arbitrator, a mediator or in such other capacity as will 
enable the practitioner to assist the parties to resolve the matter.
    (b) A practitioner serving as a third-party neutral shall inform 
unrepresented parties that the practitioner is not representing them. 
When the practitioner knows or reasonably should know that a party does 
not understand the practitioner's role in the matter, the practitioner 
shall explain the difference between the practitioner's role as a 
third-party neutral and a practitioner's role as one who represents a 
client.


Sec. Sec.  11.205-11.300  [Reserved]

Advocate


Sec.  11.301  Meritorious claims and contentions.

    A practitioner shall not bring or defend a proceeding, or assert or 
controvert an issue therein, unless there is a basis in law and fact 
for doing so that is not frivolous, which includes a good-faith 
argument for an extension, modification or reversal of existing law.


Sec.  11.302  Expediting proceedings.

    A practitioner shall make reasonable efforts to expedite 
proceedings before a tribunal consistent with the interests of the 
client.


Sec.  11.303  Candor toward the tribunal.

    (a) A practitioner shall not knowingly:
    (1) Make a false statement of fact or law to a tribunal or fail to 
correct a false statement of material fact or law previously made to 
the tribunal by the practitioner;
    (2) Fail to disclose to the tribunal legal authority in the 
controlling jurisdiction known to the practitioner to be directly 
adverse to the position of the client and not disclosed by opposing 
counsel in an inter partes proceeding, or fail to disclose such 
authority in an ex parte proceeding before the Office if such authority 
is not otherwise disclosed; or
    (3) Offer evidence that the practitioner knows to be false. If a 
practitioner, the practitioner's client, or a witness called by the 
practitioner, has offered material evidence and the practitioner comes 
to know of its falsity, the practitioner shall take reasonable remedial 
measures, including, if necessary, disclosure to the tribunal. A 
practitioner may refuse to offer evidence that the practitioner 
reasonably believes is false.
    (b) A practitioner who represents a client in a proceeding before a 
tribunal and who knows that a person intends to engage, is engaging or 
has engaged in criminal or fraudulent conduct related to the proceeding 
shall take reasonable remedial measures, including, if necessary, 
disclosure to the tribunal.
    (c) The duties stated in paragraphs (a) and (b) of this section 
continue to the conclusion of the proceeding, and apply even if 
compliance requires disclosure of information otherwise protected by 
Sec.  11.106.
    (d) In an ex parte proceeding, a practitioner shall inform the 
tribunal of all material facts known to the practitioner that will 
enable the tribunal to make an informed decision, whether or not the 
facts are adverse.
    (e) In a proceeding before the Office, a practitioner shall 
disclose to the Office information necessary to comply with applicable 
duty of disclosure provisions.


Sec.  11.304  Fairness to opposing party and counsel.

    A practitioner shall not:
    (a) Unlawfully obstruct another party's access to evidence or 
unlawfully alter, destroy or conceal a document or other material 
having potential evidentiary value. A practitioner shall not counsel or 
assist another person to do any such act;
    (b) Falsify evidence, counsel or assist a witness to testify 
falsely, or offer an inducement to a witness that is prohibited by law;
    (c) Knowingly disobey an obligation under the rules of a tribunal 
except for an open refusal based on an assertion that no valid 
obligation exists;
    (d) Make a frivolous discovery request or fail to make a reasonably 
diligent effort to comply with a legally proper discovery request by an 
opposing party;
    (e) In a proceeding before a tribunal, allude to any matter that 
the practitioner does not reasonably believe is relevant or that will 
not be supported by admissible evidence, assert personal knowledge of 
facts in issue except when testifying as a witness, or state a personal 
opinion as to the justness of a cause, the credibility of a witness, 
the culpability of a civil litigant or the guilt or innocence of an 
accused; or
    (f) Request a person other than a client to refrain from 
voluntarily giving relevant information to another party unless:
    (1) The person is a relative or an employee or other agent of a 
client; and

[[Page 20208]]

    (2) The practitioner reasonably believes that the person's 
interests will not be adversely affected by refraining from giving such 
information.


Sec.  11.305  Impartiality and decorum of the tribunal.

    A practitioner shall not:
    (a) Seek to influence a judge, hearing officer, administrative law 
judge, administrative patent judge, administrative trademark judge, 
juror, prospective juror, employee or officer of the Office, or other 
official by means prohibited by law;
    (b) Communicate ex parte with such a person during the proceeding 
unless authorized to do so by law, rule or court order; or
    (c) [Reserved]
    (d) Engage in conduct intended to disrupt any proceeding before a 
tribunal.


Sec.  11.306  Trial publicity.

    (a) A practitioner who is participating or has participated in the 
investigation or litigation of a matter shall not make an extrajudicial 
statement that the practitioner knows or reasonably should know will be 
disseminated by means of public communication and will have a 
substantial likelihood of materially prejudicing an adjudicative 
proceeding in the matter.
    (b) Notwithstanding paragraph (a) of this section, a practitioner 
may state:
    (1) The claim, offense or defense involved and, except when 
prohibited by law, the identity of the persons involved;
    (2) Information contained in a public record;
    (3) That an investigation of a matter is in progress;
    (4) The scheduling or result of any step in litigation;
    (5) A request for assistance in obtaining evidence and information 
necessary thereto; and
    (6) A warning of danger concerning the behavior of a person 
involved, when there is reason to believe that there exists the 
likelihood of substantial harm to an individual or to the public 
interest.
    (c) Notwithstanding paragraph (a) of this section, a practitioner 
may make a statement that a reasonable practitioner would believe is 
required to protect a client from the substantial undue prejudicial 
effect of recent publicity not initiated by the practitioner or the 
practitioner's client. A statement made pursuant to this paragraph 
shall be limited to such information as is necessary to mitigate the 
recent adverse publicity.
    (d) No practitioner associated in a firm or government agency with 
a practitioner subject to paragraph (a) of this section shall make a 
statement prohibited by paragraph (a).


Sec.  11.307  Practitioner as witness.

    (a) A practitioner shall not act as advocate at a proceeding before 
a tribunal in which the practitioner is likely to be a necessary 
witness unless:
    (1) The testimony relates to an uncontested issue;
    (2) The testimony relates to the nature and value of legal services 
rendered in the case; or
    (3) Disqualification of the practitioner would work substantial 
hardship on the client.
    (b) A practitioner may act as advocate in a proceeding before a 
tribunal in which another practitioner in the practitioner's firm is 
likely to be called as a witness unless precluded from doing so by 
Sec. Sec.  11.107 or 11.109.


Sec.  11.308  [Reserved]


Sec.  11.309  Advocate in nonadjudicative proceedings.

    A practitioner representing a client before a legislative body or 
administrative agency in a nonadjudicative proceeding shall disclose 
that the appearance is in a representative capacity and shall conform 
to the provisions of Sec. Sec.  11.303(a) through (c), 11.304(a) 
through (c), and 11.305.


Sec. Sec.  11.310--11.400  [Reserved]

Transactions With Persons Other Than Clients


Sec.  11.401  Truthfulness in statements to others.

    In the course of representing a client, a practitioner shall not 
knowingly:
    (a) Make a false statement of material fact or law to a third 
person; or
    (b) Fail to disclose a material fact to a third person when 
disclosure is necessary to avoid assisting a criminal or fraudulent act 
by a client, unless disclosure is prohibited by Sec.  11.106.


Sec.  11.402  Communication with person represented by a practitioner.

    (a) In representing a client, a practitioner shall not communicate 
about the subject of the representation with a person the practitioner 
knows to be represented by another practitioner in the matter, unless 
the practitioner has the consent of the other practitioner or is 
authorized to do so by law, rule, or a court order.
    (b) This section does not prohibit communication by a practitioner 
with government officials who are otherwise represented by counsel and 
who have the authority to redress the grievances of the practitioner's 
client, provided that, if the communication relates to a matter for 
which the government official is represented, then prior to the 
communication the practitioner must disclose to such government 
official both the practitioner's identity and the fact that the 
practitioner represents a party with a claim against the government.


Sec.  11.403  Dealing with unrepresented person.

    In dealing on behalf of a client with a person who is not 
represented by a practitioner, a practitioner shall not state or imply 
that the practitioner is disinterested. When the practitioner knows or 
reasonably should know that the unrepresented person misunderstands the 
practitioner's role in the matter, the practitioner shall make 
reasonable efforts to correct the misunderstanding. The practitioner 
shall not give legal advice to an unrepresented person, other than the 
advice to secure counsel, if the practitioner knows or reasonably 
should know that the interests of such a person are or have a 
reasonable possibility of being in conflict with the interests of the 
client.


Sec.  11.404  Respect for rights of third persons.

    (a) In representing a client, a practitioner shall not use means 
that have no substantial purpose other than to embarrass, delay, or 
burden a third person, or use methods of obtaining evidence that 
violate the legal rights of such a person.
    (b) A practitioner who receives a document or electronically stored 
information relating to the representation of the practitioner's client 
and knows or reasonably should know that the document or electronically 
stored information was inadvertently sent shall promptly notify the 
sender.


Sec. Sec.  11.405--11.500  [Reserved]

Law Firms and Associations


Sec.  11.501  Responsibilities of partners, managers, and supervisory 
practitioners.

    (a) A practitioner who is a partner in a law firm, and a 
practitioner who individually or together with other practitioners 
possesses comparable managerial authority in a law firm, shall make 
reasonable efforts to ensure that the firm has in effect measures 
giving reasonable assurance that all practitioners in the firm conform 
to the USPTO Rules of Professional Conduct.
    (b) A practitioner having direct supervisory authority over another

[[Page 20209]]

practitioner shall make reasonable efforts to ensure that the other 
practitioner conforms to the USPTO Rules of Professional Conduct.
    (c) A practitioner shall be responsible for another practitioner's 
violation of the USPTO Rules of Professional Conduct if:
    (1) The practitioner orders or, with knowledge of the specific 
conduct, ratifies the conduct involved; or
    (2) The practitioner is a partner or has comparable managerial 
authority in the law firm in which the other practitioner practices, or 
has direct supervisory authority over the other practitioner, and knows 
of the conduct at a time when its consequences can be avoided or 
mitigated but fails to take reasonable remedial action.


Sec.  11.502  Responsibilities of a subordinate practitioner.

    (a) A practitioner is bound by the USPTO Rules of Professional 
Conduct notwithstanding that the practitioner acted at the direction of 
another person.
    (b) A subordinate practitioner does not violate the USPTO Rules of 
Professional Conduct if that practitioner acts in accordance with a 
supervisory practitioner's reasonable resolution of an arguable 
question of professional duty.


Sec.  11.503  Responsibilities regarding non-practitioner assistance.

    With respect to a non-practitioner assistant employed or retained 
by or associated with a practitioner:
    (a) A practitioner who is a partner, and a practitioner who 
individually or together with other practitioners possesses comparable 
managerial authority in a law firm shall make reasonable efforts to 
ensure that the firm has in effect measures giving reasonable assurance 
that the person's conduct is compatible with the professional 
obligations of the practitioner;
    (b) A practitioner having direct supervisory authority over the 
non-practitioner assistant shall make reasonable efforts to ensure that 
the person's conduct is compatible with the professional obligations of 
the practitioner; and
    (c) A practitioner shall be responsible for conduct of such a 
person that would be a violation of the USPTO Rules of Professional 
Conduct if engaged in by a practitioner if:
    (1) The practitioner orders or, with the knowledge of the specific 
conduct, ratifies the conduct involved; or
    (2) The practitioner is a partner or has comparable managerial 
authority in the law firm in which the person is employed, or has 
direct supervisory authority over the person, and knows of the conduct 
at a time when its consequences can be avoided or mitigated but fails 
to take reasonable remedial action.


Sec.  11.504  Professional independence of a practitioner.

    (a) A practitioner or law firm shall not share legal fees with a 
non-practitioner, except that:
    (1) An agreement by a practitioner with the practitioner's firm, 
partner, or associate may provide for the payment of money, over a 
reasonable period of time after the practitioner's death, to the 
practitioner's estate or to one or more specified persons;
    (2) A practitioner who purchases the practice of a deceased, 
disabled, or disappeared practitioner may, pursuant to the provisions 
of Sec.  11.117, pay to the estate or other representative of that 
practitioner the agreed-upon purchase price;
    (3) A practitioner or law firm may include non-practitioner 
employees in a compensation or retirement plan, even though the plan is 
based in whole or in part on a profit-sharing arrangement; and
    (4) A practitioner may share legal fees, whether awarded by a 
tribunal or received in settlement of a matter, with a nonprofit 
organization that employed, retained or recommended employment of the 
practitioner in the matter and that qualifies under Section 501(c)(3) 
of the Internal Revenue Code.
    (b) A practitioner shall not form a partnership with a non-
practitioner if any of the activities of the partnership consist of the 
practice of law.
    (c) A practitioner shall not permit a person who recommends, 
employs, or pays the practitioner to render legal services for another 
to direct or regulate the practitioner's professional judgment in 
rendering such legal services.
    (d) A practitioner shall not practice with or in the form of a 
professional corporation or association authorized to practice law for 
a profit, if:
    (1) A non-practitioner owns any interest therein, except that a 
fiduciary representative of the estate of a practitioner may hold the 
stock or interest of the practitioner for a reasonable time during 
administration;
    (2) A non-practitioner is a corporate director or officer thereof 
or occupies the position of similar responsibility in any form of 
association other than a corporation; or
    (3) A non-practitioner has the right to direct or control the 
professional judgment of a practitioner.


Sec.  11.505  Unauthorized practice of law.

    A practitioner shall not practice law in a jurisdiction in 
violation of the regulation of the legal profession in that 
jurisdiction, or assist another in doing so.


Sec.  11.506  Restrictions on right to practice.

    A practitioner shall not participate in offering or making:
    (a) A partnership, shareholders, operating, employment, or other 
similar type of agreement that restricts the right of a practitioner to 
practice after termination of the relationship, except an agreement 
concerning benefits upon retirement; or
    (b) An agreement in which a restriction on the practitioner's right 
to practice is part of the settlement of a client controversy.


Sec.  11.507  Responsibilities regarding law-related services.

    A practitioner shall be subject to the USPTO Rules of Professional 
Conduct with respect to the provision of law-related services if the 
law-related services are provided:
    (a) By the practitioner in circumstances that are not distinct from 
the practitioner's provision of legal services to clients; or
    (b) In other circumstances by an entity controlled by the 
practitioner individually or with others if the practitioner fails to 
take reasonable measures to assure that a person obtaining the law-
related services knows that the services are not legal services and 
that the protections of the client-practitioner relationship do not 
exist.


Sec. Sec.  11.508--11.700  [Reserved]

Information About Legal Services


Sec.  11.701  Communications concerning a practitioner's services.

    A practitioner shall not make a false or misleading communication 
about the practitioner or the practitioner's services. A communication 
is false or misleading if it contains a material misrepresentation of 
fact or law, or omits a fact necessary to make the statement considered 
as a whole not materially misleading.


Sec.  11.702  Advertising.

    (a) Subject to the requirements of Sec. Sec.  11.701 and 11.703, a 
practitioner may advertise services through written, recorded or 
electronic communication, including public media.
    (b) A practitioner shall not give anything of value to a person for 
recommending the practitioner's services except that a practitioner 
may:

[[Page 20210]]

    (1) Pay the reasonable costs of advertisements or communications 
permitted by this section;
    (2) [Reserved]
    (3) Pay for a law practice in accordance with Sec.  11.117; and
    (4) Refer clients to another practitioner or a non-practitioner 
professional pursuant to an agreement not otherwise prohibited under 
the USPTO Rules of Professional Conduct that provides for the other 
person to refer clients or customers to the practitioner, if:
    (i) The reciprocal referral agreement is not exclusive, and
    (ii) The client is informed of the existence and nature of the 
agreement.
    (c) Any communication made pursuant to this section shall include 
the name and office address of at least one practitioner or law firm 
responsible for its content.


Sec.  11.703  Direct contact with prospective clients.

    (a) A practitioner shall not by in-person, live telephone or real-
time electronic contact solicit professional employment from a 
prospective client when a significant motive for the practitioner's 
doing so is the practitioner's pecuniary gain, unless the person 
contacted:
    (1) Is a practitioner; or
    (2) Has a family, close personal, or prior professional 
relationship with the practitioner.
    (b) A practitioner shall not solicit professional employment from a 
prospective client by written, recorded or electronic communication or 
by in-person, telephone or real-time electronic contact even when not 
otherwise prohibited by paragraph (a) of this section, if:
    (1) The prospective client has made known to the practitioner a 
desire not to be solicited by the practitioner; or
    (2) The solicitation involves coercion, duress or harassment.
    (c) Every written, recorded or electronic communication from a 
practitioner soliciting professional employment from a prospective 
client known to be in need of legal services in a particular matter 
shall include the words ``Advertising Material'' on the outside 
envelope, if any, and at the beginning and ending of any recorded or 
electronic communication, unless the recipient of the communication is 
a person specified in paragraphs (a)(1) or (a)(2) of this section.
    (d) Notwithstanding the prohibitions in paragraph (a) of this 
section, a practitioner may participate with a prepaid or group legal 
service plan operated by an organization not owned or directed by the 
practitioner that uses in-person or telephone contact to solicit 
memberships or subscriptions for the plan from persons who are not 
known to need legal services in a particular matter covered by the 
plan.


Sec.  11.704  Communication of fields of practice and specialization.

    (a) A practitioner may communicate the fact that the practitioner 
does or does not practice in particular fields of law.
    (b) A registered practitioner who is an attorney may use the 
designation ``Patents,'' ``Patent Attorney,'' ``Patent Lawyer,'' 
``Registered Patent Attorney,'' or a substantially similar designation. 
A registered practitioner who is not an attorney may use the 
designation ``Patents,'' ``Patent Agent,'' ``Registered Patent Agent,'' 
or a substantially similar designation. Unless authorized by Sec.  
11.14(b), a registered patent agent shall not hold himself or herself 
out as being qualified or authorized to practice before the Office in 
trademark matters or before a court.
    (c) [Reserved]
    (d) A practitioner shall not state or imply that a practitioner is 
certified as a specialist in a particular field of law, unless:
    (1) The practitioner has been certified as a specialist by an 
organization that has been approved by an appropriate state authority 
or that has been accredited by the American Bar Association; and
    (2) The name of the certifying organization is clearly identified 
in the communication.
    (e) An individual granted limited recognition under Sec.  11.9 may 
use the designation ``Limited Recognition.''


Sec.  11.705  Firm names and letterheads.

    (a) A practitioner shall not use a firm name, letterhead or other 
professional designation that violates Sec.  11.701. A trade name may 
be used by a practitioner in private practice if it does not imply a 
connection with a government agency or with a public or charitable 
legal services organization and is not otherwise in violation of Sec.  
11.701.
    (b) [Reserved]
    (c) The name of a practitioner holding a public office shall not be 
used in the name of a law firm, or in communications on its behalf, 
during any substantial period in which the practitioner is not actively 
and regularly practicing with the firm.


Sec. Sec.  11.706-11.800  [Reserved]

Maintaining the Integrity of the Profession


Sec.  11.801  Registration, recognition and disciplinary matters.

    An applicant for registration or recognition to practice before the 
Office, or a practitioner in connection with an application for 
registration or recognition, or a practitioner in connection with a 
disciplinary or reinstatement matter, shall not:
    (a) Knowingly make a false statement of material fact; or
    (b) Fail to disclose a fact necessary to correct a misapprehension 
known by the person to have arisen in the matter, fail to cooperate 
with the Office of Enrollment and Discipline in an investigation of any 
matter before it, or knowingly fail to respond to a lawful demand or 
request for information from an admissions or disciplinary authority, 
except that the provisions of this section do not require disclosure of 
information otherwise protected by Sec.  11.106.


Sec.  11.802  Judicial and legal officials.

    (a) A practitioner shall not make a statement that the practitioner 
knows to be false or with reckless disregard as to its truth or falsity 
concerning the qualifications or integrity of a judge, adjudicatory 
officer or public legal officer, or of a candidate for election or 
appointment to judicial or legal office.
    (b) A practitioner who is a candidate for judicial office shall 
comply with the applicable provisions of the Code of Judicial Conduct.


Sec.  11.803  Reporting professional misconduct.

    (a) A practitioner who knows that another practitioner has 
committed a violation of the USPTO Rules of Professional Conduct that 
raises a substantial question as to that practitioner's honesty, 
trustworthiness or fitness as a practitioner in other respects, shall 
inform the OED Director and any other appropriate professional 
authority.
    (b) A practitioner who knows that a judge, hearing officer, 
administrative law judge, administrative patent judge, or 
administrative trademark judge has committed a violation of applicable 
rules of judicial conduct that raises a substantial question as to the 
individual's fitness for office shall inform the appropriate authority.
    (c) The provisions of this section do not require disclosure of 
information otherwise protected by Sec.  11.106 or information gained 
while participating in an approved lawyers assistance program.

[[Page 20211]]

Sec.  11.804  Misconduct.

    It is professional misconduct for a practitioner to:
    (a) Violate or attempt to violate the USPTO Rules of Professional 
Conduct, knowingly assist or induce another to do so, or do so through 
the acts of another;
    (b) Commit a criminal act that reflects adversely on the 
practitioner's honesty, trustworthiness or fitness as a practitioner in 
other respects;
    (c) Engage in conduct involving dishonesty, fraud, deceit or 
misrepresentation;
    (d) Engage in conduct that is prejudicial to the administration of 
justice;
    (e) State or imply an ability to influence improperly a government 
agency or official or to achieve results by means that violate the 
USPTO Rules of Professional Conduct or other law;
    (f) Knowingly assist a judge, hearing officer, administrative law 
judge, administrative patent judge, administrative trademark judge, or 
judicial officer in conduct that is a violation of applicable rules of 
judicial conduct or other law;
    (g) Knowingly assist an officer or employee of the Office in 
conduct that is a violation of applicable rules of conduct or other 
law;
    (h) Be publicly disciplined on ethical or professional misconduct 
grounds by any duly constituted authority of:
    (1) A State,
    (2) The United States, or
    (3) The country in which the practitioner resides; or
    (i) Engage in other conduct that adversely reflects on the 
practitioner's fitness to practice before the Office.


Sec. Sec.  11.805-11.900  [Reserved]


Sec.  11.901  Savings clause.

    (a) A disciplinary proceeding based on conduct engaged in prior to 
the effective date of these regulations may be instituted subsequent to 
such effective date, if such conduct would continue to justify 
disciplinary sanctions under the provisions of this part.
    (b) No practitioner shall be subject to a disciplinary proceeding 
under this part based on conduct engaged in before the effective date 
hereof if such conduct would not have been subject to disciplinary 
action before such effective date.

PART 41--PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

0
28. The authority citation for 37 CFR part 41 continues to read as 
follows:


    Authority:  35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134 
and 135.

0
29. Revise Sec.  41.5(c) to read as follows:


Sec.  41.5  Counsel.

* * * * *
    (c) Withdrawal. Counsel may not withdraw from a proceeding before 
the Board unless the Board authorizes such withdrawal. See Sec.  11.116 
of this subchapter regarding conditions for withdrawal.
* * * * *

    Dated: March 25, 2013.
Teresa Stanek Rea,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 2013-07382 Filed 4-2-13; 8:45 am]
BILLING CODE P