September 22, 2019 Feature

Ethical Representation of Every Inventor, Whether Paying or Pro Bono

Mark R. Privratsky

©2019. Published in Landslide, Vol. 12, No. 1, September/October 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Attorneys appreciate their careers, clients, colleagues, and overall legal lives, but they may still find themselves seeking something more. To find additional fulfillment, many attorneys immerse themselves in their communities by providing pro bono legal services to clients in need. In the pro bono world, a transactional attorney is able to cover general corporate areas even if the specific question posed by the pro bono client does not fall directly within the attorney’s usual practice area. Likewise, litigators typically have various options for assisting pro bono clients by appearing in court, including for small claims, housing, harassment, immigration, or criminal defense, or by assisting within another dispute resolution proceeding. For in-house and private practice patent prosecution attorneys, however, representing clients in front of the United States Patent and Trademark Office (USPTO) on a daily basis likely has not prepared the attorney to fight a deportation order or defend an unlawful detainer. Offering services in a discipline in which one does not normally practice may be stressful and even create a potential for mistakes. A need therefore existed for years for patent attorneys to be able to help low-income inventors in the area of patent prosecution.

The other side of the attorney-client coin presents a compelling need as well. Inventors seek the fulfillment of their dreams of one day seeing their great inventions for sale on the shelves of local retail establishments, or in today’s world, the Internet. These inventors understand that a significant step to protecting their innovation is to obtain a patent thereon. When faced with the complex and sometimes expensive process that patent prosecution may be, however, low-income inventors realize that they must proceed pro se or not at all. Fortunately, many inventors apply the same resolve and determination they used to conceive their inventions and tackle the problem head-on. Unfortunately, the patent prosecution process is not necessarily suited for the novice. Despite the significant efforts the USPTO has made to educate independent inventors and to make its website more easily understood, the inventor may nevertheless find the patent process confusing and complicated. These inventors fit the mold to be the perfect clients for the patent prosecution attorneys seeking to offer pro bono services in their respective fields.

Inventor Assistance Programs

The vision to meet these two needs began in Minnesota almost nine years ago. The then Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos, recognized the demand in the independent inventor community for pro bono assistance with prosecuting patent applications. In 2010, two Minneapolis law firms, Lindquist & Vennum PLLP (n.k.a. Ballard Spahr LLP) and Patterson Thuente Pedersen, P.A., took the lead and began discussing how to create a program to eliminate the financial hurdles that often prohibit independent inventors from patenting and bringing to market great ideas. Before long, with the help and tireless efforts of several other Minnesota colleagues, the first patent pro bono law program became a reality. The team from Minnesota formed various committees that worked toward securing funding, setting processes and procedures, recruiting volunteers, and generating nationwide buzz and support. A first-of-its-kind program, the LegalCORPS Inventor Assistance Program (IAP) launched in Minnesota on June 8, 2011, matching patent prosecution attorneys willing to provide pro bono legal assistance with inventors having already filed pro se patent applications for their inventions.

Pursuant to section 32 of the America Invents Act, which took effect in September 2011, the USPTO was directed to work with and support intellectual property law associations to establish pro bono programs across the nation. In accordance with this congressional mandate, and with Minnesota leading the way, the America Invents Act Pro Bono Task Force was convened in October 2011 to coordinate nationwide efforts to develop similar programs in other areas of the country. Formed as an ad hoc informal entity, the task force transformed itself, by charter, into the America Invents Act Pro Bono Advisory Council (PBAC) on October 25, 2013. The PBAC was created as an interim governance body designed to provide support and guidance to existing pro bono programs and to encourage development of new programs, and remains in force today. As a further part of the process to achieve the goal of IAPs across the nation, two attorneys at the founding law firms wrote a best practices handbook.1 The handbook reflects the Minnesota experience with respect to the provision of patent law pro bono legal services as well as general pro bono principles. It was written and has been used to provide guidance throughout the country, regardless of the region in which subsequent programs have been developed.

Because of the successes of the program, many people took notice, culminating in President Barack Obama issuing an executive action in February 2014.2 As part of President Obama’s proposals for patent reform, the executive action included the appointment of a full-time pro bono coordinator at the USPTO, dedicated educational and practical resources for pro se applicants, and the expansion of IAPs to cover all 50 states. The patent pro bono program expanded from one state (Minnesota) in late 2011, to approximately 18 states in mid-2014, and to all 50 states by mid-2015. The rapid expansion was the result of well-planned engagements between various organizations across the country. These groups were bar associations, nonprofits, universities, and others. The USPTO, being a federal agency, does not control the pro bono activities of these referral networks, but rather provides resources and expertise to help establish them in the first place and/or to help them expand their reach.3 Further, the PBAC provides support by acting as a central depository of best practices and related information.

In general, most regional programs have three basic requirements for an inventor to qualify for assistance: (1) income below a specified level, (2) some sort of knowledge of the patent system, and (3) an invention (not merely an idea). Each of these concepts is implemented in slightly different ways by various programs across the United States. Implicit in the regional approach is that individual inventors and startups have individual needs that require flexible and adaptive ways to deliver legal services to them. These particularities may include the geographic clustering of certain technology fields, the economic and industrial needs of local pools of engineers and scientists, and even financial concerns such as access to local capital and credit. The result has been a fundamentally regional approach to a broadly national effort.

The saying goes that copying is the highest form of compliment. As such, IAPs are not the only programs in the nation that help pro se inventors. In 2018, the Cardozo/Google Patent Diversity Project launched.4 With a grant from Google, the Cardozo Law School program provides services with a specific goal to increase the number of patents issued to women and minorities. To overcome the disparities that studies show exist, the project matches volunteer lawyers with women and minority inventors, educates about the existence of the patent process, and provides other outreach regarding the requirements for obtaining a patent and the costs and potential resources that may be available. Relatedly, due to the success of U.S.-based IAPs, the World Intellectual Property Organization (WIPO) likewise became a proponent of providing pro bono patent services to under-resourced inventors. In some countries, more than half of pro se applicants’ filed applications are abandoned before substantive examination, with many being rejected solely on technical formalities the inventors have failed to meet. With the support of a steering committee made up of intellectual property leaders from Novartis, Qualcomm, WIPO, the World Economic Forum, the USPTO, and the Federal Circuit Bar Association, among others, a pilot program took shape in 2015, with its formal launch in 2016.5 In the beginning, residents of Colombia, Morocco, and the Philippines meeting income level requirements and having an invention with potential commercial impact could be matched with local patent specialists. Since its start, South Africa and Ecuador have joined as participating countries. Further, subsequent additional matchmaking between the inventor and patent practitioners in selected jurisdictions (i.e., the United States and the European Union) has been implemented so that services focused on national phase entry may also be available.

Ethical Implications of IAPs

Whether representing paying or pro bono clients, rules of professional conduct govern a lawyer’s practice of law.6 Just because a client may not pay does not mean that substandard services may be provided, or that less care may be shown to the client and its information. Accordingly, lawyers who provide services to paying or pro bono clients must work to provide the best service they can to the particular client.

A review of some of the ethical rules applicable to these relationships is worthy of every lawyer’s time, as it further solidifies the importance of pro bono legal services and the tremendous good that lawyers accomplish when donating even a small percentage of their billable time.7

Obligation to Aspire to Provide Pro Bono Publico Services

Rule 6.1 of the ABA Model Rules of Professional Conduct (ABA Model Rules) provides in part:

Every lawyer has a professional responsibility to provide legal services to those unable to pay. A lawyer should aspire to render at least fifty (50) hours of pro bono publico legal services per year. In fulfilling this responsibility, the lawyer should:

(a) provide a substantial majority of the 50 hours of legal services without fee or expectation of fee to:

(1) persons of limited means or

(2) charitable, religious, civic, community, governmental and educational organizations in matters that are designed primarily to address the needs of persons of limited means; and

(b) provide any additional services through:

(1) delivery of legal services at no fee or substantially reduced fee to individuals, groups or organizations seeking to secure or protect civil rights, civil liberties or public rights, or charitable, religious, civic, community, governmental and educational organizations in matters in furtherance of their organizational purposes, where the payment of standard legal fees would significantly deplete the organization’s economic resources or would be otherwise inappropriate;

(2) delivery of legal services at a substantially reduced fee to persons of limited means; or

(3) participation in activities for improving the law, the legal system or the legal profession.

Although the USPTO Rules of Professional Conduct (USPTO Rules) do mimic many of the ABA Model Rules, and thus state rules based on those ABA Model Rules, the USPTO Rules do not include a counterpart to Rule 6.1.

Conflicts of Interest

In addition to client-based conflicts of interest (i.e., making sure one does not represent one client against another), practitioners have the added complexity that comes from subject matter conflicts. In other words, these lawyers must be careful so as not to take on a pro bono client whose invention may conflict with the substantive legal matters or areas of other clients of the lawyer or his or her firm. This additional area of conflict checking is also a concern for in-house counsel who may provide pro bono services to inventors under an IAP but must be careful so as not to take on a matter that is in the same product space as their employer’s. Pro bono client and subject matter conflicts of interest are governed by the same ethical rules and principles that apply to paying clients’ matters. There should be no difference in how a lawyer processes the conflict check. IAP administrators (the individuals in each regional program who perform intake, screening, and matching functions) can assist to make this process easier.

Best practice in an IAP is the implementation of a two-stage conflict check process so as to protect both client and lawyer. Thus, when an IAP administrator seeks a volunteer attorney to take a particular case, the first and only information provided to the lawyer is the area in which the invention lies. If the lawyer hears from the administrator that the invention is related to waffle irons, and that lawyer knows he or she already works for a major manufacturer of kitchen electrical appliances, the lawyer may very likely turn down the matter and wait for the next opportunity to take on a pro bono client. If that lawyer, however, knows he or she has no subject matter conflict, the administrator will share with the lawyer the client’s name and other information the lawyer needs to run a conflict check against the lawyer’s or firm’s client database.

Notwithstanding the similarities to the treatment of conflicts of interest regardless of whether they arise in pro bono or paying client cases, the ABA Model Rules do provide some guidance in the area of pro bono representations. Pro bono legal services are often provided in limited ways. For example, in the IAP, services are often provided in an unbundled way. This means that the representation may be significantly limited so that its scope is very narrow. An IAP volunteer may agree to only provide legal services with respect to getting on file a provisional application or nonprovisional application, for example, after which the representation may be terminated. Although that client may need future services from the IAP volunteer when an office action is issued, best practices in the IAP may have that client reapply for services at the time the office action arises so that a rescreening of the matter may occur. Some pro bono services are also provided via advice clinics, at which a client may only meet briefly with a lawyer to seek answers to very specific legal questions or for direction on how to proceed with a legal matter. ABA Model Rule 6.5 covers this last contingency of brief advice clinics:

(a) A lawyer who, under the auspices of a program sponsored by a nonprofit organization or court, provides short-term limited legal services to a client without expectation by either the lawyer or the client that the lawyer will provide continuing representation in the matter:

(1) is subject to Rules 1.7 and 1.9(a) only if the lawyer knows that the representation of the client involves a conflict of interest; and

(2) is subject to Rule 1.10 only if the lawyer knows that another lawyer associated with the lawyer in a law firm is disqualified by Rule 1.7 or 1.9(a) with respect to the matter.

(b) Except as provided in paragraph (a)(2), Rule 1.10 is inapplicable to a representation governed by this Rule.

Once again, the USPTO does not have a rule that resembles ABA Model Rule 6.5, but instead has reserved the space under USPTO Rule 11.605. The state rule that models the ABA Model Rule governs each lawyer’s representation in these matters. For other rules applicable to conflicts of interest, see USPTO Rules 11.107 (current clients), 11.108 (current client specific rules), 11.109 (duties to former clients), and 11.110 (imputation of conflicts of interest); and their ABA Model Rule 1.7, 1.8, 1.9, and 1.10 counterparts, respectively.

Scope of Representation, Engagement Letters, and Allocation of Authority

There may be no better guiding principle to achieving satisfied clients than to invest the necessary time and effort to identify proper expectations. Many ethical complaints arise out of misunderstandings clients have as to what their lawyer was going to do for them. This is as true for pro bono clients as it is for paying clients. All clients must have a clear understanding of what the lawyer will do before the representation starts. Moreover, the client and lawyer need to both understand how their relationship will proceed, with both sides contributing and communicating as equal parties of that relationship. And, best practices dictate that that scope of representation and allocation of authority be set forth in writing and signed off on by the client via the acceptance of the engagement letter.

IAPs successfully manage their limited resources by providing unbundled services to pro bono clients. An IAP may permit (or even require) a very detailed “scope of representation,” as the suggested engagement letter, which limits the pro bono representation to the one part of the prosecution that the one volunteer will handle. For example, if a client already has a provisional application on file, the volunteer lawyer may agree to only do the work necessary to convert that provisional into a nonprovisional. Or, similarly, if the client has received an office action, the volunteer lawyer may be engaged to prosecute the application through final rejection or allowance. What the lawyer has agreed to do must be clearly set forth in the engagement letter, and it should be discussed in person with the pro bono client. One should not simply demand that the client sign the engagement letter five minutes into the first meeting of the client and lawyer. Equally as important as what the lawyer will do for the client is what the lawyer will not do. For example, an engagement letter may provide that no appeal will be done, etc.

Both the ABA Model Rules and the USPTO Rules set forth a rule with respect to scope of representation and allocation of authority. ABA Model Rule 1.2 states:

(a) Subject to paragraphs (c) and (d), a lawyer shall abide by a client’s decisions concerning the objectives of representation and, as required by Rule 1.4, shall consult with the client as to the means by which they are to be pursued. A lawyer may take such action on behalf of the client as is impliedly authorized to carry out the representation. A lawyer shall abide by a client’s decision whether to settle a matter. . . .

(b) A lawyer’s representation of a client, including representation by appointment, does not constitute an endorsement of the client’s political, economic, social or moral views or activities.

(c) A lawyer may limit the scope of the representation if the limitation is reasonable under the circumstances and the client gives informed consent.

(d) A lawyer shall not counsel a client to engage, or assist a client, in conduct that the lawyer knows is criminal or fraudulent, but a lawyer may discuss the legal consequences of any proposed course of conduct with a client and may counsel or assist a client to make a good faith effort to determine the validity, scope, meaning or application of the law.

USPTO Rule 11.102 includes much of the same text:

(a) Subject to paragraphs (c) and (d) of this section, a practitioner shall abide by a client’s decisions concerning the objectives of representation and, as required by § 11.104, shall consult with the client as to the means by which they are to be pursued. A practitioner may take such action on behalf of the client as is impliedly authorized to carry out the representation. A practitioner shall abide by a client’s decision whether to settle a matter.

(b) [Reserved]

(c) A practitioner may limit the scope of the representation if the limitation is reasonable under the circumstances and the client gives informed consent.

(d) A practitioner shall not counsel a client to engage, or assist a client, in conduct that the practitioner knows is criminal or fraudulent, but a practitioner may discuss the legal consequences of any proposed course of conduct with a client and may counsel or assist a client to make a good-faith effort to determine the validity, scope, meaning or application of the law.

Competence and Diligence

The ABA Model Rules and the USPTO Rules are virtually identical when it comes to a lawyer’s duty of care. ABA Model Rule 1.3 states: “A lawyer shall act with reasonable diligence and promptness in representing a client.” USPTO Rule 11.103 similarly provides: “A practitioner shall act with reasonable diligence and promptness in representing a client.”

Likewise, the rules on competence are similar in point. ABA Model Rule 1.1 states: “A lawyer shall provide competent representation to a client. Competent representation requires the legal knowledge, skill, thoroughness and preparation reasonably necessary for the representation.” USPTO Rule 11.101 similarly provides: “A practitioner shall provide competent representation to a client. Competent representation requires the legal, scientific, and technical knowledge, skill, thoroughness and preparation reasonably necessary for the representation.”

Again, regardless of whether a lawyer is providing patent prosecution services to a pro bono or paying client, he or she is obligated by the USPTO and applicable state rules to do so with competence and diligence.

Communication

Consistent with the expectations that may be set via the engagement letter with respect to scope of representation and allocation of authority, both the ABA Model Rules and the USPTO Rules provide similar guidance with respect to how a lawyer is to communicate with his or her client. ABA Model Rule 1.4 states:

(a) A lawyer shall:

(1) promptly inform the client of any decision or circumstance with respect to which the client’s informed consent, as defined in Rule 1.0(e), is required by these Rules;

(2) reasonably consult with the client about the means by which the client’s objectives are to be accomplished;

(3) keep the client reasonably informed about the status of the matter;

(4) promptly comply with reasonable requests for information; and

(5) consult with the client about any relevant limitation on the lawyer’s conduct when the lawyer knows that the client expects assistance not permitted by the Rules of Professional Conduct or other law.

(b) A lawyer shall explain a matter to the extent reasonably necessary to permit the client to make informed decisions regarding the representation.

USPTO Rule 11.104 similarly provides:

(a) A practitioner shall:

(1) Promptly inform the client of any decision or circumstance with respect to which the client’s informed consent is required by the USPTO Rules of Professional Conduct;

(2) Reasonably consult with the client about the means by which the client’s objectives are to be accomplished;

(3) Keep the client reasonably informed about the status of the matter;

(4) Promptly comply with reasonable requests for information from the client; and

(5) Consult with the client about any relevant limitation on the practitioner’s conduct when the practitioner knows that the client expects assistance not permitted by the USPTO Rules of Professional Conduct or other law.

(b) A practitioner shall explain a matter to the extent reasonably necessary to permit the client to make informed decisions regarding the representation.

Termination and/or Withdrawal

Unfortunately, notwithstanding the best intentions of the lawyer, client, and IAP, sometimes situations still arise that require an attorney-client relationship to be terminated and a lawyer to withdraw. In the pro bono context, the reasons underlying termination are, for the most part, no different than the same reasons that lead to termination of the relationship with a paying client. In an IAP, even though a client’s failure to pay attorney fees may never be a reason for the representation to end, the client’s failure to pay filing fees or other costs could provide a basis. If the lawyer is in doubt regarding whether the facts support withdrawal, both ABA Model Rule 1.16 and USPTO Rule 11.116 provide guidance. Because the two sets of rules are so similar in this capacity, it is sufficient to set forth only the USPTO Rule:

(a) Except as stated in paragraph (c) of this section, a practitioner shall not represent a client, or where representation has commenced, shall withdraw from the representation of a client if:

(1) The representation will result in violation of the USPTO Rules of Professional Conduct or other law;

(2) The practitioner’s physical or mental condition materially impairs the practitioner’s ability to represent the client; or

(3) The practitioner is discharged.

(b) Except as stated in paragraph (c) of this section, a practitioner may withdraw from representing a client if:

(1) Withdrawal can be accomplished without material adverse effect on the interests of the client;

(2) The client persists in a course of action involving the practitioner’s services that the practitioner reasonably believes is criminal or fraudulent;

(3) The client has used the practitioner’s services to perpetrate a crime or fraud;

(4) A client insists upon taking action that the practitioner considers repugnant or with which the practitioner has a fundamental disagreement;

(5) The client fails substantially to fulfill an obligation to the practitioner regarding the practitioner’s services and has been given reasonable warning that the practitioner will withdraw unless the obligation is fulfilled;

(6) The representation will result in an unreasonable financial burden on the practitioner or has been rendered unreasonably difficult by the client; or

(7) Other good cause for withdrawal exists.

(c) A practitioner must comply with applicable law requiring notice to or permission of a tribunal when terminating a representation. When ordered to do so by a tribunal, a practitioner shall continue representation notwithstanding good cause for terminating the representation.

(d) Upon termination of representation, a practitioner shall take steps to the extent reasonably practicable to protect a client’s interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payment of fee or expense that has not been earned or incurred. The practitioner may retain papers relating to the client to the extent permitted by other law.

Enforcement

The USPTO’s Office of Enrollment and Discipline (OED) developed the revisions to the USPTO Rules back in April 2013. The OED supports lawyers while protecting the intellectual property community as a whole. Notwithstanding the high standards to which lawyers and the profession hold themselves, the OED must also discipline the minority of lawyers that violate the USPTO Rules.

Statistics reflecting the number of disciplinary actions from 2012 through mid-2018 show the following8:

  • FY2012—44 warning letters and 58 formal discipline;
  • FY2013—28 warning letters and 22 formal discipline;
  • FY2014—48 warning letters and 30 formal discipline;
  • FY2015—31 warning letters and 38 formal discipline;
  • FY2016—41 warning letters and 34 formal discipline;
  • FY2017—40 warning letters and 36 formal discipline; and
  • FY2018—31 warning letters and 33 formal discipline.

The formal discipline cases from 2012 through October 2017 break down into reprimands, suspensions, and exclusions as follows:

  • FY2012—22 reprimands, 19 suspensions, and 17 exclusions;
  • FY2013—5 reprimands, 9 suspensions, and 8 exclusions;
  • FY2014—5 reprimands, 14 suspensions, and 11 exclusions;
  • FY2015—7 reprimands, 18 suspensions, and 13 exclusions;
  • FY2016—2 reprimands, 18 suspensions, and 14 exclusions; and
  • FY2017—4 reprimands, 15 suspensions, and 9 exclusions (28 formal discipline cases through October).

Lawyers who have been found to have violated the USPTO Rules and are thus subject to discipline by the OED face various kinds of penalty. The USPTO Director, after notice and opportunity for a hearing, and where grounds for discipline exist, may impose on a practitioner the following types of discipline: (1) exclusion from practice before the USPTO, (2) suspension from practice before the USPTO for an appropriate period of time, (3) reprimand or censure, or (4) probation.9 A warning is neither public nor a disciplinary sanction.10

The author has not found any cases in which the OED disciplined a patent prosecution attorney working on a pro bono matter—i.e., voluntarily donating his or her time without expectation of payment, regardless of whether the client was officially participating in an IAP. However, two cases were located in which the subject of pro bono was raised, albeit very weakly.

In In re Hurst, the OED ordered the public reprimand of Ronald A. Hurst Jr. for violation of the ethical standard set out in 37 C.F.R. § 10.23(b)(6), regarding his engagement in any other conduct that adversely reflects on the practitioner’s fitness to practice before the USPTO.11 Hurst was an attorney licensed in Florida, and although not a registered patent practitioner and not authorized to practice patent law before the USPTO, he was authorized to represent clients before the USPTO in trademark and nonpatent matters. The Supreme Court of Florida publicly reprimanded Hurst by an order in Florida Bar v. Hurst.12 That public reprimand was predicated on a determination that Hurst informed the court that he was representing his client “pro bono,” when in fact he expected a trial fee of $6,000. Based on his failure to advise the court that he anticipated being paid a trial fee, Hurst admitted to violating Rule Regulating the Florida Bar 4-8.4(d), prohibiting a lawyer from engaging in conduct that is prejudicial to the administration of justice. The OED reciprocally ordered its own public reprimand thereafter.

In In re Persaud, the OED in a reciprocal disciplinary proceeding ordered that Christopher L. Persaud, a lawyer registered to practice in patent matters before the USPTO, be excluded from practice before the USPTO in patent, trademark, and other nonpatent matters for violating 37 C.F.R. § 11.804(h).13 Persaud had been disbarred by the State of California in July 2013 for numerous violations, including but not limited to failing to perform competently on behalf of clients and failing to return unearned or illegal fees totaling approximately $300,000.14 To contest the imposition of a reciprocal exclusion by the OED, Persaud argued mitigation of the misconduct existed such that a reciprocal exclusion would be a grave injustice. He cited to his medical treatment, his pro bono work related to the USPTO’s mission, and his writing of an article to contribute to the patent law community. Essentially he appears to have argued against reciprocal punishment on the basis that it would impact his patent pro bono efforts.

Conclusion

Any and all pro bono service is encouraged, but if working in one’s area of expertise and doing what one is best at as a lawyer are what is sought, then volunteering for an Inventor Assistance Program will be very rewarding to your practice of law and overall satisfaction with life. 

Endnotes

1. Amy M. Salmela & Mark R. Privratsky, Patent Law Pro Bono: A Best Practices Handbook, 4 Cybaris 1 (2013).

2. See Fact Sheet, White House, Executive Actions: Answering the President’s Call to Strengthen Our Patent System and Foster Innovation (Feb. 20, 2014), https://obamawhitehouse.archives.gov/the-press-office/2014/02/20/fact-sheet-executive-actions-answering-president-s-call-strengthen-our-p.

3. See, e.g., Patent Pro Bono Program for Independent Inventors and Small Businesses, U.S. Pat. & Trademark Off., https://www.uspto.gov/patents-getting-started/using-legal-services/pro-bono/patent-pro-bono-program?MURL=probonopatents (last modified Apr. 22, 2019).

4. See Cardozo/Google Pat. Diversity Project, https://cardozogooglepatentdiversityproject.org/ (last visited Aug. 8, 2019).

5. See Inventor Assistance Program, World Intell. Prop. Org., https://www.wipo.int/iap/en/#participants (last visited Aug. 8, 2019).

6. See generally USPTO Rules of Professional Conduct, 37 C.F.R. §§ 11.101–.804.

7. Although the USPTO Rules were amended in 2013 to more resemble the ABA Model Rules, each practitioner must remember that he or she is bound not only by the USPTO Rules but also to the rules promulgated by the state that issued the lawyer’s underlying law license. The preamble to the USPTO Rules provides: “Nothing in this part shall be construed to preempt the authority of each State to regulate the practice of law, except to the extent necessary for the United States Patent and Trademark Office to accomplish its Federal objectives.” 37 C.F.R. § 11.1. If a lawyer is licensed in more than one state, he or she is bound by each respective state’s rules, plus those of the USPTO. And further, because of some differences that exist between the USPTO Rules and various states’ rules, a lawyer must review all applicable rules when considering any ethical issue. Some examples of differences are set forth throughout this article. In addition, the USPTO provides on its website a chart comparing its rules to the model ABA ones. Ethics Rules, U.S. Patent & Trademark Off., https://www.uspto.gov/learning-and-resources/patent-and-trademark-practitioners/current-patent-practitioner/ethics-rules (last modified Oct. 17, 2017).

8. The data is limited to OED cases that led to public discipline because the OED may only report on cases that resulted in public discipline.

9. 37 C.F.R. § 11.20.

10. Id. § 11.21.

11. No. D2011-48 (USPTO Dir. Nov. 17, 2011).

12. 42 So. 3d 800 (Fla. 2010).

13. No. D2014-34 (USPTO Dir. Mar. 31, 2016).

14. In re Persaud, No. S210771 (Cal. July 24, 2013).

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Mark R. Privratsky is an attorney with Ballard Spahr LLP in Minneapolis, Minnesota, where he provides intellectual property litigation and transactional services, as well as software and data security and privacy advice. Over the past eight years, he has contributed hundreds of hours to training new volunteer lawyers and advising administrators for Inventor Assistance Programs, screening inventors’ cases, and lecturing on procedures and ethics for the programs.