- Advocate (§§ 11.301 – 11.310–11.400)
- § 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.
- § 11.308 [Reserved]
- § 11.309 Advocate in nonadjudicative proceedings.
- §§ 11.310-11.400 [Reserved]
- Transactions With Persons Other Than Clients (§§ 11.401 – 11.405–11.500)
- Law Firms and Associations (§§ 11.501 – 11.508–11.700)
- § 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 – 11.706–11.800)
- Maintaining the Integrity of the Profession (§§ 11.801 – 11.901)
Advocate (§§ 11.301 – 11.310–11.400)
§ 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.
§ 11.302 Expediting proceedings.
A practitioner shall make reasonable efforts to expedite proceedings before a tribunal consistent with the interests of the client.
§ 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 § 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.
§ 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
- (2) The practitioner reasonably believes that the person‘s interests will not be adversely affected by refraining from giving such information.
§ 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.
§ 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).
§ 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 §§ 11.107 or 11.109.
§ 11.308 [Reserved]
§ 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 §§ 11.303(a) through (c), 11.304(a) through (c), and 11.305.
§§ 11.310-11.400 [Reserved]
Transactions With Persons Other Than Clients (§§ 11.401 – 11.405–11.500)
§ 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 § 11.106.
§ 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.
§ 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.
§ 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.
§§ 11.405-11.500 [Reserved]
Law Firms and Associations (§§ 11.501 – 11.508–11.700)
§ 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 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.
§ 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.
§ 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.
§ 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 § 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.
(e) The prohibitions of paragraph (a), (b), or (d)(1) or (2) of this section shall not apply to an arrangement that fully complies with the laws, rules, and regulations of the attorney licensing authority of the State(s) that affirmatively regulate(s) such arrangement.
[78 FR 20201, Apr. 3, 2013, as amended at 88 FR 45088, July 14, 2023]§ 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.
§ 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.
§ 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.
§§ 11.508-11.700 [Reserved]
Information About Legal Services (§§ 11.701 – 11.706–11.800)
§ 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.
§ 11.702 Communications concerning a practitioner‘s services: specific rules.
(a) A practitioner may communicate information regarding the practitioner‘s services through any medium.
(b) A practitioner shall not compensate, give, or promise anything of value to a person for recommending the practitioner‘s services, except that a practitioner may:
- (1) Pay the reasonable costs of advertisements or communications permitted by this section;
- (2) Pay the usual charges of a legal service plan or a not-for-profit or qualified practitioner referral service;
- (3) Pay for a law practice in accordance with § 11.117;
- (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; and
- (5) Give nominal gifts as an expression of appreciation that are neither intended nor reasonably expected to be a form of compensation for recommending a practitioner‘s services.
(c) A practitioner shall not state or imply that he or she 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 authority of a State or that has been accredited by the American Bar Association, and
- (2) The name of the certifying organization is clearly identified in the communication.
(d) Any communication made under this section must include the name and contact information of at least one practitioner or law firm responsible for its content.
[86 FR 28466, May 26, 2021]§ 11.703 Solicitation of clients.
(a) “Solicitation” or “solicit” denotes a communication initiated by or on behalf of a practitioner or law firm that is directed to a specific person the practitioner knows or reasonably should know needs legal services in a particular matter and that offers to provide, or reasonably can be understood as offering to provide, legal services for that matter.
(b) A practitioner shall not solicit professional employment by live person-to-person contact when a significant motive for the practitioner‘s doing so is the practitioner‘s or law firm’s pecuniary gain, unless the contact is with a:
- (1) Practitioner;
- (2) Person who has a family, close personal, or prior business or professional relationship with the practitioner or law firm; or
- (3) Person who routinely uses for business purposes the type of legal services offered by the practitioner.
(c) A practitioner shall not solicit professional employment even when not otherwise prohibited by paragraph (b) of this section, if:
- (1) The target of solicitation has made known to the practitioner a desire not to be solicited by the practitioner, or
- (2) The solicitation involves coercion, duress, or harassment.
(d) This section does not prohibit communications authorized by law or ordered by a court or other tribunal.
(e) Notwithstanding the prohibitions in 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 live person-to-person contact to enroll members or sell subscriptions for the plan from persons who are not known to need legal services in a particular matter covered by the plan.
[86 FR 28467, May 26, 2021]§ 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 under § 11.6(a) who is an attorney may use the designation “Patents,” “Patent Attorney,” “Patent Lawyer,” “Registered Patent Attorney,” or a substantially similar designation. A registered practitioner under § 11.6(b) who is not an attorney may use the designation “Patents,” “Patent Agent,” “Registered Patent Agent,” or a substantially similar designation. A registered practitioner under § 11.6(d) who is an attorney may use the designation “Design Patent Attorney.” A registered practitioner under § 11.6(d) who is not an attorney may use the designation “Design Patent Agent.” Unless authorized by § 11.14(b), a registered patent agent or design patent agent shall not hold themself 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) Individuals granted limited recognition may use the designation “Limited Recognition” but may not hold themselves out as being registered.
[78 FR 20201, Apr. 3, 2013, as amended at 86 FR 28467, May 26, 2021; 88 FR 78650, Nov. 16, 2023]§ 11.705 Firm names and letterheads.
(a) A practitioner shall not use a firm name, letterhead or other professional designation that violates § 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 § 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.
§§ 11.706-11.800 [Reserved]
Maintaining the Integrity of the Profession (§§ 11.801 – 11.901)
§ 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 § 11.106.
§ 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.
§ 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 § 11.106 or information gained while participating in an approved lawyers assistance program.
§ 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, or be convicted of a crime 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) A country having disciplinary jurisdiction over the practitioner; or
(i) Engage in other conduct that adversely reflects on the practitioner‘s fitness to practice before the Office.
[78 FR 20201, Apr. 3, 2013, as amended at 86 FR 28467, May 26, 2021]§§ 11.805-11.900 [Reserved]
§ 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.
Source:
78 FR 20201, Apr. 3, 2013, unless otherwise noted.