May a Connecticut patent lawyer use a vendor that advises on USPTO classification while also classifying applications for the USPTO, and is using it required?

Plain-English summary

The vendor classified incoming patent applications into USPTO Art Units under a government contract. It also offered patent lawyers an analysis of how a draft application would likely be classified and suggested wording or emphasis that might increase the chance of assignment to an Art Unit with more favorable allowance statistics or response times.

The Committee evaluated the service under Connecticut Rules 8.4 and 5.3. The vendor represented that employees advising lawyers were screened from employees performing USPTO classifications, that the service did not violate its USPTO agreement, and that the USPTO knew about it. On those stated facts, there was no indicated connection between the advice and how the vendor would later classify a filed application. The Committee therefore found no apparent Rule 8.4 violation and allowed use of the service if the lawyer was not aware of a breach of the vendor's USPTO obligations.

The opinion did not treat the service as automatically required by competence or diligence. Its value depended on the client's objectives and potential tradeoffs: drafting for a different classification might improve statistical prospects but reduce the desired technical protection, an Art Unit assignment could later change, and examiners within one unit could have different allowance rates.

Rule 1.3 does not require a lawyer to press every possible advantage. Under Rules 1.4(a)(2) and 1.4(b), however, the opinion encourages the lawyer to tell the client about the option and follow the client's decision if the lawyer believes the service would materially improve the chance of obtaining a patent with the desired degree of protection.

In practice

Under this opinion, the vendor's simultaneous public and private roles do not by themselves prohibit use of the service. The conclusion rests on the described screening, USPTO awareness, absence of a connection between private advice and later classification, and the lawyer's lack of knowledge that the service breaches the vendor's obligations.

The opinion leaves the value judgment to the patent lawyer in consultation with the client. It ties that judgment to the desired scope of patent protection, the limited predictive value of Art Unit statistics, and the communication duties triggered when the lawyer sees a material potential benefit.

Common questions

Q: May a Connecticut patent lawyer use the described classification-advice vendor?

A: Yes, provided the lawyer is not aware that the service breaches the vendor's obligations to the USPTO.

Q: Did the vendor's USPTO contract create an automatic Rule 8.4 violation?

A: No on the stated facts. The opinion relied on employee screening, USPTO awareness, and the absence of a stated connection between the advice and how a later application would be classified.

Q: Is the lawyer responsible for misconduct by the vendor?

A: Rule 5.3 applies when a lawyer orders or knowingly ratifies nonlawyer conduct that would violate the Rules if done by a lawyer. The opinion also cites the duty to make reasonable efforts to ensure compatible services.

Q: Must competence or diligence always require purchasing the service?

A: No. The opinion states that a lawyer is not bound to press for every available advantage and explains that the service's value depends on the client's goals and the tradeoffs in redrafting the application.

Q: When does the opinion encourage discussing the service with the client?

A: When the lawyer believes it would materially improve the client's chance of receiving a patent with the desired degree of protection, the opinion encourages informing the client and abiding by the client's decision.

Q: Does assignment to a statistically favorable Art Unit ensure a patent?

A: No. The assignment can change, examiner outcomes can vary within an Art Unit, and a USPTO examiner rather than the classification vendor decides the patent's substantive merits.

Background and rules framework

Connecticut Rule 8.5(a) recognizes that a patent lawyer may be subject to discipline in Connecticut and another jurisdiction for the same conduct. The Committee addressed only the Connecticut Rules, not whether the service complied with USPTO professional-conduct rules or the vendor's contract.

Rules 5.3 and 8.4 govern the vendor relationship and misconduct analysis. Rules 1.1, 1.3, and 1.4 govern the separate question of competence, diligence, and consultation about the service's possible benefit.

Citations and references

Connecticut Rules of Professional Conduct:

• Rules 1.1, 1.3, 1.4(a)(2), 1.4(b), 5.3(3), 7.2(d), 8.4(3), and 8.5(a)

Regulations:

• 37 C.F.R. § 10.1, relationship between USPTO regulation and state authority
• USPTO Rule 11.101, competence in patent practice

Cases:

• Sperry v. Florida ex rel. Florida Bar, 373 U.S. 379, 383, 402 (1963), patent practice and the limits of state regulation
• Kroll v. Finnerty, 242 F.3d 1359, 1365 (Fed. Cir. 2001), concurrent state and USPTO disciplinary authority

Other opinions cited:

• Connecticut Informal Opinion 12-02, patent practice in Connecticut

Other authorities:

• USPTO, Manual of Patent Examining Procedure, Chapter 900 and § 903.08(d)(II)

See also

• ABA Formal Op. 08-451: Outsourcing legal and nonlegal services
• VSB LEO 1850: Outsourcing legal services

Source

• Landing page: Connecticut Bar Association Informal Ethics Opinions
• Original PDF: Informal Opinion 21-02