The professional conduct and ethics rules that apply to attorneys operating before the U.S. Patent & Trademark Office (USPTO) will change on May 3. The new rules will replace the current rules which are based on the increasingly obsolete ABA Model Code with a version of the more current ABA Model Rules. Versions of the Model Rules are in force in 49 states and the District of Columbia. Accordingly, this change will bring the USPTO rules into closer conformity with the applicable rules in most states, which should relieve practitioners of much of the burden of having to practice under two sets of rules. This change will also provide practitioners the benefit of current interpretive sources of the Model Rules, and state bar opinions and disciplinary actions applying the Model Rules.

There are some differences between the new USPTO rules and the Model Rules. A significant difference relates to the treatment of confidential client information. The new USPTO rules will require the disclosure of such information to the USPTO if necessary to comply with USPTO regulations, such as the duty to disclose information material to the patentability of an invention. This differs from the Model Rules which state practitioners cannot reveal such information without the client’s consent, except when necessary to prevent a crime or fraud. Hence, complying with the new USPTO rules can cause a violation of the Model Rules in some circumstances. It remains to be seen how the USPTO and state ethics agencies will deal with practitioners faced with this dilemma.

These rule changes come on the heels of the recent U.S. Supreme Court ruling in Gunn v. Minton, which held that many patent malpractice claims do not raise substantial questions of federal patent law. Therefore, many cases that previously would have been heard in federal courts will now be heard in state courts. Such a framework will almost certainly lead to less consistency in the outcome of these cases.

The rules that apply to those who practice before the USPTO have changed.