ABA’s “Tips For Practicing Law” Provides Valuable Ethics Guidance For USPTO Practitioners

Michael E. McCabe, Jr.Communications, Competence, Diligence, IP Ethics, PTO Ethics Rules, USPTO Ethics Investigation, USPTO OED0 Comments

Mr. Corleone is a man who insists on hearing bad news at once.” – Tom Hagen, The Godfather

In the Summer 2016 issue of Litigation, Steven A. Weiss, Chair of the ABA’s Section of Litigation, authored an article entitled, “Eight More Tips For Practicing Law.”  Although the article focuses on a number of best practices from the perspective of a litigator, many of the “tips” are actually ethical duties imposed on all practitioners by the Rules of Professional Conduct.

The Duty to Communicate

One of the ABA’s tips, for example, is entitled “Keep Clients in the Loop.”  The article advises:

Don’t leave a client wondering about the status of a case, or what happened at a court hearing, deposition, or other event. Keep the client informed and regularly discuss the status and current expectations. Give the client news, whether good or bad, as soon as possible. The client, particularly in-house counsel, hires you so that they don’t have to worry about the case daily. It is your responsibility to keep them informed.

Great advice.  Not only is this advice spot on, the duty to communicate is a professional obligation for all lawyers regardless of the nature of their practice.

For those who practice before the USPTO in patent and trademark matters, for example, the ethics rules provide six discrete duties of communication.Written in mandatory “shall” language, 37 C.F.R. Section 11.104 instructs patent and trademark practitioners to keep clients in the loop by imposing the duty to:

  • Promptly inform the client of any decision or circumstance in which the client’s informed consent is required by the USPTO’s Rules of Professional Conduct;
  • Reasonably consult with the client about the means by which the client’s objectives are to be accomplished;
  • Keep the client reasonably informed about the status of the matter;
  • Promptly comply with reasonable requests for information from the client;
  • Consult with the client about any relevant limitations on the practitioner’s conduct; and
  • Explain a matter to the extent reasonably necessary to permit the client to make informed decisions about the representation.

One of the most common sources of ethics complaints against attorneys arises from their failure to communicate timely, if at all, with the client.  Clients expect to hear from their lawyer.  Especially with modern tools of communication where emails and text messages can be received by the lawyer 24/7, clients expect incrementally faster responses to their communications and want to be kept informed about their matter. Sending a client a letter by “snail mail” may have been the norm ten years ago, but today, the time it takes for the postal service to deliver correspondence or respond to a client inquiry is frankly just too long for most clients.

One frequent source of client grievances received by the USPTO’s Office of Enrollment and Discipline (OED) is that a patent or trademark lawyer failed to respond to their emails or phone calls.  The OED has a duty under 37 C.F.R. Section 11.22(f) to investigate claims of attorney malfeasance, and this includes a USPTO practitioner’s possible violation of the Office’s Rules of Professional Conduct.

Although the duty to communicate exists regardless of the size or relative sophistication of the client, the duty to communicate is particularly important when the representation involves a small and unsophisticated client.  Smaller clients, especially individual inventors, can require a LOT of attorney hand-holding.  And they may be less understanding about your unavailability than a larger institutional client (although both types of clients must be kept “reasonably” informed).

When a lawyer fails to timely respond to a client’s emails or phone calls, the client may feel–rightly or wrongly–that their lawyer has simply taken their money and forgotten about them.  That perception may be inconsistent with reality, but you do not want to wait for an OED Ethics Investigation to find out that you failed to manage your client’s perceptions.  To the author’s knowledge, no one has ever been professionally disciplined for communicating with their client too often.  As the Litigation article wisely instructs, “Keep the client informed and regularly discuss the status and current expectations.”

know-the-rules-imageCompetence and Diligence

Another “tip” offered in the ABA article is to know the rules of your jurisdiction and advises about the dangers of violating court rules and orders:

For example, unless the local rules expressly say otherwise, you must get a court order to extend the time for responding to requests to admit. Even if opposing counsel says you can have more time, a court can rule that the requests are admitted if the deadline is not met and there is no extension from the court. Objections to interrogatories might be waived if you do not have a court order extending the time to respond. And, most significantly, a default judgment can be entered if you do not answer or otherwise plead within the required time, regardless of whether opposing counsel has said you can have more time.

Two separate but related “tips” in the ABA article are to “read the rules” and “do not miss deadlines.”

In ethics-speak, the duty to know the rules is subsumed within the lawyer’s broader ethical duty of competence.  USPTO practitioners must provide “competent” representation.  The duty of competence is set forth in 37 C.F.R. Section 11.101, which states that “competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation.”  Knowing the rules, practices and precedents of the tribunal–including the USPTO, which is included in the definition of “tribunal” in the Office’s ethics rules–is not just a good idea.  Indeed, such knowledge is an integral part of the attorney’s obligation to provide competent representation.

Similarly, knowing when and how to respond and meeting deadlines imposed by a tribunal, including the USPTO, is part of counsel’s ethical duty of diligence.  For USPTO practitioners, the duty of diligence is set forth in 37 C.F.R. Section 11.103, which mandates that “A practitioner shall act with reasonable diligence and promptness in representing a client.”

Communicating with clients, knowing the rules, reading the rules, following the rules, not missing deadlines, these are all not just prudent suggestions.  These are ethical duties.  Violation of these duties is often a source of client dissatisfaction and can lead to the USPTO opening up a formal OED Ethics Investigation.   This is usually not the time that a practitioner wants to learn for the first time that they failed in their ethical duty to their clients.

Following the ABA’s “tips” on being a better lawyer will make you not only a better lawyer.  It will also make you a more ethical lawyer.

 

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