CHAPTER 4 - STUDY MATERIALS

The Attorney - Patent Law Edition

ABSTRACT

This chapter tells Alexander's parallel barrier crossing on the same Saturday that Athelia crossed (Chapter 2). Where Athelia experienced the barrier from the examiner's perspective, Alexander experiences it as a patent attorney filing on behalf of his client. The chapter explores attorney-client privilege, conflicts of interest, the ethical obligations of patent practitioners under 37 CFR § 11, and the unique dual role of patent attorneys as both legal advocates and technical experts.

Alexander dismisses his "harem" of potential mates to eliminate conflicts of interest before crossing the barrier. The attorney-client privilege causes mutual amnesia—both attorney and client forget the crossing to protect confidential communications. He wakes knowing only that he filed successfully and that his Guardian Queen examiner exists, but cannot remember meeting her (mirroring how privilege protects communications even from the attorney's own later recall).

This chapter teaches the complete patent attorney regulatory framework including USPTO registration requirements, ethical rules governing practice, duty of competence, conflicts of interest analysis, privilege doctrine, and the distinction between patent agents and patent attorneys.

SUMMARY - PATENT LAW CONCEPTS TAUGHT

1. Patent Attorney vs. Patent Agent

Not all patent practitioners are attorneys:

2. USPTO Registration Under § 2(b)(2)

To practice before USPTO, practitioners must meet requirements:

3. Ethical Rules Under 37 CFR § 11

Patent practitioners governed by comprehensive ethics code:

4. Attorney-Client Privilege

The mutual amnesia after barrier crossing encodes privilege doctrine:

5. Conflicts of Interest Analysis

Alexander dismisses his harem to eliminate conflicts:

6. The Harem as Multiple Representation

Why Alexander couldn't cross the barrier with multiple potential mates:

7. Duty to USPTO vs. Duty to Client

Patent attorneys serve dual masters:

8. The Bond Formation from Attorney's Perspective

Alexander's barrier crossing differs from Athelia's:

DISCUSSION QUESTIONS

1. Patent Agent vs. Patent Attorney Strategic Choice

Question: When would an inventor choose to hire a patent agent rather than a patent attorney, given that agents cannot provide legal advice beyond prosecution?

Analysis Points:

2. Conflicts of Interest - Competing Clients

Question: Attorney represents Company A prosecuting a patent on quantum computing algorithm. Company B (also attorney's client) asks attorney to prosecute patent on competing quantum computing algorithm. Is this a conflict under § 11.107?

Analysis Points:

3. Attorney-Client Privilege in Patent Context

Question: Inventor emails patent attorney asking "Is my invention patentable?" Attorney responds with analysis. Later, patent issues and infringement suit filed. Can opposing counsel discover the email exchange?

Analysis Points:

4. Duty of Candor to USPTO vs. Client Interests

Question: During prosecution, attorney discovers prior art that would likely invalidate all pending claims. Client says "Don't tell USPTO - it's their job to find it." What should attorney do?

Analysis Points:

5. The Amnesia as Privilege Protection

Question: In the narrative, both Alexander and Athelia forget their barrier crossing meeting due to attorney-client privilege. What real doctrine does this encode?

Analysis Points:

CASE STUDY: In re Spalding Sports Worldwide, Inc.

Federal Circuit, 2012

FACTS

Spalding owned U.S. Patent No. 6,454,666 covering golf ball dimple designs. Acushnet (competitor) filed inter partes reexamination challenging the patent. During the reexamination proceeding, Spalding's attorney inadvertently produced privileged documents to USPTO and Acushnet - including attorney work product analyzing prior art and patentability strategy.

Spalding immediately moved to withdraw the privileged documents, arguing the disclosure was inadvertent and privilege should not be waived. The USPTO Board of Patent Appeals and Interferences (predecessor to PTAB) denied the motion, ruling that Spalding waived privilege by disclosing the documents, even if inadvertent.

ISSUE

Does inadvertent disclosure of privileged attorney-client communications during USPTO proceedings waive the privilege? Or can privilege be maintained if the disclosure was unintentional and prompt steps taken to retrieve?

HOLDING

The Federal Circuit held that inadvertent disclosure during inter partes reexamination DOES waive attorney-client privilege under Federal Rule of Evidence 502(b) analysis, which requires examining:

Court found Spalding failed to take adequate precautions. Privilege waived.

REASONING

The court applied multifactor test from FRE 502(b):

Policy concern: If inadvertent disclosure never waived privilege, parties might claim "inadvertence" after seeing opponent's reaction to privileged material. Must incentivize careful document review.

RESULT

Privilege waived. Acushnet allowed to use privileged documents in reexamination proceeding. Patent ultimately held invalid.

SIGNIFICANCE FOR CHAPTER 4

This case demonstrates the critical importance of maintaining privilege:

CONNECTION TO THE NARRATIVE

The mutual amnesia that protects Alexander and Athelia after the barrier crossing represents perfect privilege protection - neither can reveal (or even remember) the privileged communications. *Spalding* shows what happens when privilege protection fails: the confidential strategy becomes public, and the adverse party gains unfair advantage.

Alexander dismissing his "harem" before crossing mirrors an attorney preventing conflicts of interest that could compromise privilege. If he maintained relationships with multiple potential clients, privileged information from one might inadvertently affect representation of another - just as Spalding's inadequate document review led to inadvertent disclosure.

ANALYSIS QUESTIONS

  1. What specific precautions should Spalding's attorneys have taken to prevent inadvertent disclosure? (Consider privilege logs, redaction procedures, supervisor review, metadata scrubbing)
  2. Would the result differ if Spalding had used "clawback agreement" with Acushnet before production? (FRE 502(d) allows parties to agree that inadvertent disclosure doesn't waive privilege if promptly remedied)
  3. How does this case affect patent prosecution practice? (Should attorneys mark all work product "PRIVILEGED AND CONFIDENTIAL"? Separate files for privileged vs. non-privileged materials?)

COMPLETE STATUTORY TEXT

35 U.S.C. § 2 - Powers and Duties

(b) SPECIFIC POWERS.—The Office—

(2) may prescribe regulations—

(D) governing the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office, and may require them, before being recognized as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office;

37 CFR § 11.5 - Register of Practitioners

(a) Maintenance of register. The Office of Enrollment and Discipline (OED) shall maintain a register of attorneys and agents entitled to practice before the Office in patent, trademark, and other non-patent cases.

(b) Eligibility for registration. An individual may be registered to practice before the Office if the individual:

(1) Is not disbarred or suspended from practice before the Office in patent, trademark, or other non-patent matters or from practice as an attorney or agent before the Office in patent cases;

(2) Possesses the legal, scientific, and technical qualifications necessary to render applicants valuable service; and

(3) Is of good moral character and reputation.

37 CFR § 11.101 - Competence

A practitioner shall provide competent representation to a client. Competent representation requires the legal knowledge, skill, thoroughness, and preparation reasonably necessary for the representation.

37 CFR § 11.106 - Confidentiality of Information

(a) A practitioner shall not reveal information relating to representation of a client unless the client gives informed consent, the disclosure is impliedly authorized in order to carry out the representation, or the disclosure is permitted by paragraph (b) of this section.

(b) A practitioner may reveal information relating to the representation of a client to the extent the practitioner reasonably believes necessary:

(1) To prevent reasonably certain death or substantial bodily harm;

(2) To prevent the client from committing a crime or fraud that is reasonably certain to result in substantial injury to the financial interests or property of another and in furtherance of which the client has used or is using the practitioner's services;

(3) To prevent, mitigate or rectify substantial injury to the financial interests or property of another that is reasonably certain to result or has resulted from the client's commission of a crime or fraud in furtherance of which the client has used the practitioner's services;

(4) To secure legal advice about the practitioner's compliance with these Rules;

(5) To establish a claim or defense on behalf of the practitioner in a controversy between the practitioner and the client, to establish a defense to a criminal charge or civil claim against the practitioner based upon conduct in which the client was involved, or to respond to allegations in any proceeding concerning the practitioner's representation of the client; or

(6) To comply with other law or a court order.

37 CFR § 11.107 - Conflict of Interest: Current Clients

(a) Except as provided in paragraph (b) of this section, a practitioner shall not represent a client if the representation involves a concurrent conflict of interest. A concurrent conflict of interest exists if:

(1) The representation of one client will be directly adverse to another client; or

(2) There is a significant risk that the representation of one or more clients will be materially limited by the practitioner's responsibilities to another client, a former client or a third person or by a personal interest of the practitioner.

(b) Notwithstanding the existence of a concurrent conflict of interest under paragraph (a) of this section, a practitioner may represent a client if:

(1) The practitioner reasonably believes that the practitioner will be able to provide competent and diligent representation to each affected client;

(2) The representation is not prohibited by law;

(3) The representation does not involve the assertion of a claim by one client against another client represented by the practitioner in the same litigation or other proceeding before a tribunal; and

(4) Each affected client gives informed consent, confirmed in writing.

37 CFR § 11.18 - Signature and Certificate for Correspondence Filed in the Patent and Trademark Office

(a) A practitioner shall not engage in conduct involving dishonesty, fraud, deceit, or misrepresentation.

(b) A practitioner appearing in a professional capacity before the Office:

(1) Shall conform to the standards of ethical conduct;

(2) Shall not make a false statement of fact or law, or offer evidence known to be false, before the Office. If a practitioner has offered material evidence and comes to know of its falsity, the practitioner shall take reasonable remedial measures;

(3) Shall not counsel or assist a client in conduct that the practitioner knows or reasonably should know is criminal or fraudulent;

(4) Shall not engage in conduct prejudicial to the administration of justice;

(5) Shall not assert or controvert an issue therein unless there is a basis for doing so that is not frivolous.

STATUTORY REFERENCE INDEX

Primary Statutes Taught in Chapter 4:

Related Concepts: