Editor’s Note: José Cortina is a member of the Research Triangle Park law firm of Daniels Daniels & Verdonik, P.A.

RESEARCH TRIANGLE PARK, N.C. – In a prior article, I wrote about the duty of candor owed by patent applicants, and all those connected through a patent application, to the U.S. Patent Office. The point of that article was that patent applicants cannot play “cat and mouse” games concerning known prior art without jeopardizing the validity of any patent issued.

However, that article also briefly touched on a potential trap related to information patent applicants may tell their attorneys.

More specifically, clients expect that all information they disclose to their attorneys will be kept in confidence, as required under state bar rules, but U.S. Patent Office rules require the attorney to disclose all information that is material to the decision on whether to allow issuance of a patent and its relevant claims. The conflict between state bar rules and U.S. Patent Office rules is not a new issue; it has been around for quite a while, dating back to at least the early 1960s.

What Are the Rules of the Patent Office?

The rule in question is Rule 1.56 which imposes a duty of candor on attorneys as well as clients. This means that the patent attorney must disclose all information an examiner may find material to the examination of the patent application. The Patent Office’s position is that the rule must be complied with regardless of any other rules applied to that attorney’s practice. It asserts that to its knowledge, no state discipline of an attorney has ever occurred as a result of his compliance with the Patent Rules during prosecution.

How Can Different Rules Exist?

The main reasons that there can easily be different rules are that federal law often preempts (or overrides) state law and that the federal government has a compelling interest in ensuring issued patents are valid. State bar membership is not required to be a patent agent, and state disbarment does not prevent a patent attorney from conducting a patent practice before the Patent Office in the absence of reciprocal discipline.

Further, the U. S. Supreme Court made it clear in the case of Sperry v. Florida that an attorney licensed to practice before the patent office may prosecute patent applications before the U.S. Patent Office from any state, regardless of whether the attorney is licensed to practice law in that state. The Supreme Court told the Florida bar that it could not prevent patent attorneys in the state of Florida who were not admitted to practice in Florida, and who limited their practice to prosecuting patent applications before the U.S. Patent Office, from doing so.

The Supreme Court held that the rules promulgated under the U.S. Code preempt state law so as to allow patent attorneys practicing only before the U.S. Patent Office and residing in the state of Florida to do so without being admitted to practice in that state. The logical extension of a holding that the U.S. Code preempts the state laws and rules on who may practice law is that it also preempts the rules of the state bar as to disclosures—at least as far as disclosures that must be made to the Patent Office.

Thus, it is the U.S. Patent Office’s position concerning information material to the prosecution of a patent application, but confidential under state bar rules, that the disclosure is governed by the Patent Office rules—meaning it must be disclosed. In other words, the Patent Office’s position is that the state bar rules are preempted by the compelling federal interest in full disclosure during ex parte prosecution.

Where Does This Leave the Patent Applicant?

It is important for any client to understand that he will not be able to tell a patent attorney (or agent) information concerning the patent and expect it to be withheld from the patent office if it is relevant to the patent claim.

In a presentation to the California Bar, the Patent Office suggested a client should be advised up front about the duty of candor, and further that consent to disclosure be made a condition of the representation. Thus, a patent client should not be surprised by such a request. In addition, it should be clear that the client will not be able to play games with the Patent Office by asking the patent attorney not to disclose information provided to him on a “confidential basis. This would only create problems for both the patent applicant and the attorney. Information disclosed to an attorney prosecuting a patent application must be disclosed to the Patent Office if it is material to the examination of the application, or the validity of any issued patent will come into question.

Patent applicants should be aware of the options open to an attorney if confidential information material to the examination of a patent application becomes known. First, the application can be abandoned or the impacted claims in the application can be cancelled such that no disclosure must be made—but also no patent will be granted on those claims. Alternatively, the attorney may disclose the facts to an examiner either verbally during in an interview or in writing. If the client declines these options, however, then the attorney must withdraw and the withdrawal must be a “noisy” withdrawal.

Given this, it is important patent applicants are aware that what they consider to be confidential information may not remain confidential when it comes to trying to obtain a patent. Applicants should be prepared to waive the confidentiality obligation if obtaining a patent is important to them.

A. José Cortina is a registered patent attorney with the law firm of Daniels, Daniels & Verdonik, P.A. He focuses his practice on the intellectual property needs of small to large technology companies, including providing patent, trademark, copyright, counseling, licensing, conflict resolution and transactional services. He is experienced in a broad range of technologies, including electronics, communications, computer hardware and software, biomedical, materials, and selected chemical and chemical engineering technologies.