Ezel / Ethics Opinions / NYSBA
NYSBA August 8, 2012

Can a patent attorney who became a USPTO patent examiner still call himself 'Patent Attorney' on a business card?

Short answer: Not without disclosure. Because his USPTO registration is on administrative-leave/inactive status and he can no longer represent others, the opinion finds the bare 'Patent Attorney' designation misleading under Rules 7.1 and 8.4(c) unless the card notes the inactive status.

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This page answers the general question as of 2012. Ezel answers yours: whether it's allowed on your facts, under the current New York Rules of Professional Conduct, with citations.

Currency note: this opinion is from 2012
Subsequent statutory amendments, court decisions, or later opinions or rule amendments may have changed the analysis. Treat this page as historical context, not current legal advice. Verify current law before relying on any specific rule, deadline, or remedy mentioned here.
Disclaimer: Advisory only. Not binding precedent.
About this page: The plain-English summary, reader guidance, and Q&A below were written by Ezel based on the official ethics opinion. The original opinion (linked on this page) is the authoritative source for any reliance.

Plain-English summary

A lawyer admitted to practice in patent matters before the USPTO accepted a position as a USPTO patent examiner. His name would stay on the official USPTO register, but his registration status would change to "on administrative leave," and as a federal employee he could not represent others before any federal agency or prosecute patent applications for others. He asked whether he could keep "Patent Attorney" on his business card.

The opinion notes that Rule 7.4(b) permits a lawyer "admitted to engage in patent practice before the United States Patent and Trademark Office" to use the designation "Patent Attorney," and that Rule 7.5(a) permits professional cards consistent with Rule 7.1. But it turns on the fact that, while serving as an examiner, the inquirer cannot represent others before the USPTO (citing 18 U.S.C. 205 and 37 CFR 11.10(d)-(e)). Under Rule 7.1(a), an advertisement may not be false, deceptive, or misleading, and under Rule 7.1 Comment [6] and Rule 8.4(c) all communications are governed by the bar on dishonesty and misrepresentation.

Because the bare "Patent Attorney" designation implies he can prosecute patent applications and represent others before the USPTO when he cannot, the opinion concludes it would be misleading to use it without explanation. The lawyer may keep the designation if he adds language noting that he is on administrative leave and unable to represent others in patent matters before the USPTO. The opinion grounds this in its prior business-card decisions: N.Y. State 704 (1998) (cards must fairly disclose jurisdictional limitations) and N.Y. State 863 (2011) (a lawyer admitted only in Texas handling New York immigration matters had to note her limited admission and scope).

In practice

Under this opinion, and under the New York rules as they stood at the time, the "Patent Attorney" designation that Rule 7.4(b) ordinarily allows becomes misleading when the lawyer's USPTO status no longer lets him represent others. The opinion permits keeping the designation only if the card discloses the administrative-leave or inactive status and the inability to prosecute patent applications or represent others before the USPTO, so the card does not imply a capacity the lawyer lacks.

Common questions

Q: Can a USPTO patent examiner keep "Patent Attorney" on a business card?

A: Only with disclosure. The opinion holds that the bare designation is misleading under Rules 7.1 and 8.4(c) because the examiner cannot represent others before the USPTO; the card must note his administrative-leave/inactive status.

Q: Doesn't Rule 7.4(b) specifically allow the "Patent Attorney" label?

A: It allows the designation for a lawyer "admitted to engage in patent practice" before the USPTO. The opinion reasons that once the lawyer's status prevents him from representing others, the unqualified label implies a capacity he no longer has, which Rule 7.1 forbids.

Q: What disclosure satisfies the opinion?

A: Language on the card noting that the lawyer is on administrative leave or inactive status before the USPTO and is unable to prosecute patent applications or otherwise represent others before the Office.

Background and rules framework

The opinion applies Rule 7.4(b) (Model Rule 7.4) on designating areas of practice and the long-recognized patent-practice designation, together with Rule 7.5(a) (Model Rule 7.5) on professional cards. The controlling limit comes from Rule 7.1 (Model Rule 7.1), barring false, deceptive, or misleading communications, including Comment [6], and Rule 8.4(c) (Model Rule 8.4) on dishonesty and misrepresentation. Federal authority on the examiner's inability to represent others includes 18 U.S.C. 205 and 37 CFR 11.5, 11.6, and 11.10.

Citations and references

Rules of Professional Conduct:

  • MR 7.4 / NY 7.4(b) ("Patent Attorney" designation)
  • MR 7.5 / NY 7.5(a) (professional cards)
  • MR 7.1 / NY 7.1(a), 7.1(b), Comment [6] (false or misleading communications)
  • MR 8.4 / NY 8.4(c) (dishonesty, misrepresentation)

Statutes and regulations:

  • 18 U.S.C. 205 (federal employees representing others before agencies)
  • 37 CFR 11.5, 11.6, 11.10(d)-(e) (USPTO registration; bar on examiners prosecuting applications for others)

Other opinions cited:

  • N.Y. State 704 (1998): business cards must fairly disclose jurisdictional limitations
  • N.Y. State 863 (2011): a lawyer admitted only in Texas handling New York immigration matters had to note her limited admission and scope

See also

Source

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