Q) Practitioner Conduct (4.03.23a)
Question #23 from the April 2003 (AM) patent bar exam is reported by exam takers as a question in the current exam database.
23. Which of the following is not prohibited conduct for a practitioner under the USPTO Code of Professional Responsibility?
(A) Entering into an agreement with the client to limit the amount of any damages which the client may collect for any mistakes the practitioner may make during prosecution of the client’s patent application in exchange for prosecuting the application at a reduced fee.
(B) Encouraging the client to meet with an opposing party for settlement discussions.
(C) Failing to disclose controlling legal authority which is adverse to the practitioner’s client’s interest when arguing the patentability of claims in a patent application.
(D) In reply to an Office action, stating honestly and truthfully in the remarks accompanying an amendment that the practitioner has personally used the device and found it to be very efficient and better than the prior art.
(E) Investing the funds the client advanced for the practitioner legal fees (not costs and expenses) in long term United States Treasury Bills in order to obtain guaranteed protection of the principal.
ANSWER: (B) is the most correct answer. See 37 CFR § 10.87. As to (A), practitioner may not limit damages under 37 CFR § 10.78. As to (C), see 37 CFR § 10.89(b)(1). As to (D), see 37 CFR § 10.89(c)(4). As to (E), see 37 CFR § 10.112(a) where client funds advanced for legal services are required to be deposited in a bank account.