Whose Rules Rule? Resolving Ethical Conflicts During the Simultaneous Representation of Clients In Patent Prosecution

This paper explores the conflict between the PTO Rules of Professional Conduct and the state rules of ethics. This conflict is not readily apparent as a patent attorney would be justified in assuming that conduct deemed ethical under the state requirements would be acceptable under the PTO ethics rules. However, the PTO's "Duty of Candor" potentially presents the patent attorney with a seemly unresolvable conflict. Specifically, the "Duty of Candor" may require the patent attorney, during simultaneous patent prosecution, to disclose confidential information from the file of one client in order to properly prosecute the patent of another client. The courts have made it clear that the attorney-client privilege is applicable to all communication between a patent attorney and the client. In light of this ruling, the question becomes whether federal rules of ethics preempt the applicability of state ethics rules. We specifically explore the conflict between state confidentiality/privilege rules and the PTO Duty of Candor and the ramifications of failure to resolve this conflict for both the attorney and the client. An overview of patent prosecution is included as well as a comparison of the of the ABA Model Rules of Professional Conduct and the PTO Code of Professional Responsibility. We argue that the state rules of ethics should dominate the practice of all law and should supercede enforcement of the PTO Duty of Candor where conflicts arise during simultaneous patent prosecution.