5 Things IP Practitioners Should Do to Avoid U.S. Patent and Trademark Office Discipline

White copyright symbol on wooden floor against a grey wall with

The U.S. Patent and Trademark Office (USPTO) Office of Enrollment and Discipline (OED) exists, in large part, to ensure that patent and trademark practitioners are practicing ethically and in accordance with the office’s Rules of Professional Conduct.

The OED’s staff includes a dozen attorneys, many of whom have practical experience in IP law. Whether you have been practicing law for many years or are just starting in the field of IP law, here are five things you can do to reduce the risk that you’ll be on the receiving end of a complaint.

1. Know Your Client

This seems so self-evident, but it can be tricky when dealing with IP representation, in which there can be different persons or entities who claim an interest in the intellectual property.

For example, in a common patent representation, a practitioner may be contacted by an inventor, but as the representation continues, it turns out there are actually several inventors. Perhaps some of those inventors are employed (and may have a duty to assign any patent rights to their employer), while others may be truly independent.

Difficulties arise when IP practitioners fail to recognize who is, and who is not, their “client.” Is your client the first inventor who contacted you, or is it all of the inventors collectively? Is it the employer of an inventor? Or is it some combination of inventors and owners?

Counsel would be wise to memorialize, preferably in the initial engagement agreement, who is the client so they know with whom they have a duty to communicate. Practitioners also may wish to avoid an “accidental” IP client by advising such non-clients of the fact that the practitioner is not their personal attorney.

2. Document the Scope and Duration of Your Representation

A typical—if such a thing exists—patent or trademark representation can last for months, if not years. When a client seeks your help with securing a patent or trademark, it is generally understood that you are agreeing to do more than simply file the application.

A full scope IP representation ordinarily means both filing as well as post-filing matters. Those post-filing matters can arise many years after the initial application filing. Some practitioners prefer to limit the scope of the representation to a discrete task, such as filing a provisional application only but not a non-provisional. Other practitioners wish to exclude from the scope of representation any post-issuance duties, like maintenance fee reminders. A limited scope representation (also referred to as “unbundled” legal services) is permissible, provided the limitation is reasonable under the circumstances and the client gives informed consent to the limited scope. Practitioners ordinarily should get the client to agree to any such limitation in the scope of services at the outset of the engagement, preferably in the engagement agreement.

3. Implement a Reliable Docketing System

IP practice is date intensive, often involving hundreds of small matters, each of which has its own dates for actions to be taken. And a blown filing date can literally cost a client their IP rights and may be grounds for malpractice as well as an ethics complaint. Good IP practitioners, therefore, adopt a solid docketing system that reliably tracks deadlines and includes “tickler” reminders, and they regularly communicate with clients about due dates.

Technology solutions abound for docketing, and practitioners who use outdated modes of manual docketing run an exponentially greater risk of missing a date and causing harm to a client. If a complaint is filed in the USPTO, you can be sure OED will want to know all the details of the practitioner’s docketing system.

4. Check for Subject Matter and Other Conflicts

Conflicts of interest are the number one cause of legal malpractice claims against attorneys. Ethics rules require law firms to make reasonable efforts to check for conflicts. (See other articles related to conflicts rules for lawyers and law firms.). Such systems should be centralized and robust enough to capture information that can be compared against new matters that come into the firm.

Conflicts can arise when one client asks a lawyer to take a position that is adverse to the interests of another client. Another conflict can arise when a lawyer is representing one client but is being paid by someone other than the client. IP firms must have systems in place to track the identity of clients, opposing parties, and interested parties. In addition, “subject matter” conflicts can arise when a patent lawyer is asked to obtain patent rights in an area of technology that substantially overlaps with the claim scope of another client’s patent or pending application.

The OED expects IP lawyers to have a “robust” conflict-checking system in place that includes not just traditional adverse party type relationships but also closely related technology subject matter conflicts.

5. Resist the Urge to Dabble

IP law is complicated and constantly evolving. A transactional lawyer who occasionally “dabbles” in providing IP services runs the risk of getting in over their head, potentially causing harm to a client.

If you or your firm are not set up to run an IP practice, complete with a strong docketing system, commitment to conflicts checking, and competency in the underlying subject matter, you may wish to decline the work. Counsel who insists on working on a matter in which they are not fully competent should, at the very least, co-counsel with someone who is. Otherwise, refer the matter to someone else—at the very least, you will sleep better at night.