The PTO Takes Steps to Conform with the ABA Model Rules of Professional Conduct

After more than twenty-five years, the United States Patent and Trademark Office (the “PTO”) plans to replace its Code of Professional Responsibility with, in large part, the ABA’s 2011 Model Rules of Professional Conduct. The PTO announced its intent to amend its Code on October 13, 2012, and invited public comment for sixty days, until December 17, 2012. The PTO’s current Code, in place since 1985, was originally based on the ABA’s Model Rules. The PTO has not, however, kept pace with the ABA’s frequent and prolific amendments that have occurred over the years.

Many of the PTO’s proposed changes simply adopt identical language from the ABA Model Rules. Others are adapted to reflect the nature of the practice before the PTO. For example, the Model Rule defines “competent representation” as requiring “the legal knowledge, skill, thoroughness and preparation reasonably necessary for the representation,” whereas the PTO’s proposed rule defines it as requiring “the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation.”

While the ABA approved additional changes to the Model Rules in August of this year, the PTO is not adopting those at this time. The PTO has asked for public comment, however, on whether any of the ABA’s most recent suggested amendments should be incorporated into its soon-to-be revamped Code. A comparison chart of the ABA Model Rules of Professional Conduct and the proposed USPTO Rules of Professional Conduct, along with information regarding the proposed change is located on the USPTO’s website.