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PATENT RULES

Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights

CHAPTER I -- PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE

PART 10 REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE
Section 10.1 Definitions.
Section 10.2 Director of Enrollment and Discipline.
Section 10.3 Committee on Enrollment.
Section 10.4 Committee on Discipline.
Section 10.5 Register of attorneys and agents in patent cases.
Section 10.6 Registration of attorneys and agents.
Section 10.7 Requirements for registration.
Section 10.8 Oath and registration fee.
Section 10.9 Limited recognition in patent cases.
Section 10.10 Restrictions on practice in patent cases.
Section 10.11 Removing names from the register.
Section 10.14 Individuals who may practice before the Office in trademark and other non-patent cases.
Section 10.15 Refusal to recognize a practitioner.
Section 10.18 Signature and certificate for correspondence filed in the Patent and Trademark Office.
Section 10.19 [Reserved]
PATENT AND TRADEMARK OFFICE CODE OF PROFESSIONAL RESPONSIBILITY
Section 10.20 Canons and Disciplinary Rules.
Section 10.21 Canon 1.
Section 10.22 Maintaining integrity and competence of the legal profession.
Section 10.23 Misconduct.
Section 10.24 Disclosure of information to authorities.
Section 10.25 - 10.29 [Reserved]
Section 10.30 Canon 2.
Section 10.31 Communications concerning a practitioner's services.
Section 10.32 Advertising.
Section 10.33 Direct contact with prospective clients.
Section 10.34 Communication of fields of practice.
Section 10.35 Firm names and letterheads.
Section 10.36 Fees for legal services.
Section 10.37 Division of fees among practitioners.
Section 10.38 Agreements restricting the practice of a practitioner.
Section 10.39 Acceptance of employment.
Section 10.40 Withdrawal from employment.
Section 10.46 Canon 3.
Section 10.47 Aiding unauthorized practice of law.
Section 10.48 Sharing legal fees.
Section 10.49 Forming a partnership with a non-practitioner.
Section 10.56 Canon 4.
Section 10.57 Preservation of confidences and secrets of a client.
Section 10.61 Canon 5.
Section 10.62 Refusing employment when the interest of the practitioner may impair the practitioner's independent professional judgment.
Section 10.63 Withdrawal when the practitioner becomes a witness.
Section 10.64 Avoiding acquisition of interest in litigation or proceeding before the Office.
Section 10.65 Limiting business relations with a client.
Section 10.66 Refusing to accept or continue employment if the interests of another client may impair the independent professional judgment of the practitioner.
Section 10.67 Settling similar claims of clients.
Section 10.68 Avoiding influence by others than the client.
Section 10.76 Canon 6.
Section 10.77 Failing to act competently.
Section 10.78 Limiting liability to client.
Section 10.83 Canon 7.
Section 10.84 Representing a client zealously.
Section 10.85 Representing a client within the bounds of the law.
Section 10.86 [Reserved]
Section 10.87 Communicating with one of adverse interest.
Section 10.88 Threatening criminal prosecution.
Section 10.89 Conduct in proceedings.
Section 10.92 Contact with witnesses.
Section 10.93 Contact with officials.
Section 10.100 Canon 8.
Section 10.101 Action as a public official.
Section 10.102 Statements concerning officials.
Section 10.103 Practitioner candidate for judicial office.
Section 10.110 Canon 9.
Section 10.111 Avoiding even the appearance of impropriety.
Section 10.112 Preserving identity of funds and property of client.
INVESTIGATIONS AND DISCIPLINARY PROCEEDINGS
Section 10.130 Reprimand, suspension or exclusion.
Section 10.131 Investigations.
Section 10.132 Initiating a disciplinary proceeding; reference to an administrative law judge.
Section 10.133 Conference between Director and practitioner; resignation.
Section 10.134 Complaint.
Section 10.135 Service of complaint.
Section 10.136 Answer to complaint.
Section 10.137 Supplemental complaint.
Section 10.138 Contested case.
Section 10.139 Administrative law judge; appointment; responsibilities; review of interlocutory orders; stays.
Section 10.140 Representative for Director or respondent.
Section 10.141 Filing of papers.
Section 10.142 Service of papers.
Section 10.143 Motions.
Section 10.144 Hearings.
Section 10.145 Proof; variance; amendment of pleadings.
Section 10.149 Burden of proof.
Section 10.150 Evidence.
Section 10.151 Depositions.
Section 10.152 Discovery.
Section 10.153 Proposed findings and conclusions; post- hearing memorandum.
Section 10.154 Initial decision of administrative law judge.
Section 10.155 Appeal to the Commissioner.
Section 10.156 Decision of the Commissioner.
Section 10.157 Review of Commissioner's final decision.
Section 10.158 Suspended or excluded practitioner.
Section 10.159 Notice of suspension or exclusion.
Section 10.160 Petitioner for reinstatement.
Section 10.161 Savings clause.
Section 10.170 Suspension of rules.

PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE

10 REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE

10.1 Definitions.

This part governs solely the practice of patent, trademark, and other law before the Patent and Trademark Office. Nothing in this part shall be construed to preempt the authority of each State to regulate the practice of law, except to the extent necessary for the Patent and Trademark Office to accomplish its federal objectives. Unless otherwise clear from the context, the following definitions apply to this part:

(a): Affidavit means affidavit, declaration under 35 U.S.C. 25 (see § 1.68 and § 2.20 of this subchapter), or statutory declaration under 28 U.S.C. 1746.
(b): Application includes an application for a design, plant, or utility patent, an application to reissue any patent, and an application to register a trademark.
(c): Attorney or lawyer means an individual who is a member in good standing of the bar of any United States court or the highest court of any State. A &127;non-lawyer&127; is a person who is not an attorney or lawyer.
(d): Canon is defined in § 10.20(a).
(e): Confidence is defined in § 10.57(a).
(f): Differing interests include every interest that may adversely affect either the judgment or the loyalty of a practitioner to a client, whether it be a conflicting, inconsistent, diverse, or other interest.
(g): Director means the Director of Enrollment and Discipline.
(h): Disciplinary Rule is defined in § 10.20(b).
(i): Employee of a tribunal includes all employees of courts, the Office, and other adjudicatory bodies.
(j): Giving information within the meaning of§ 10.23(c) (2) includes making (1) a written statement or representation or (2) an oral statement or representation.
(k): Law firm includes a professional legal corporation or a partnership.
(l): Legal counsel means practitioner.
(m): Legal profession includes the individuals who are lawfully engaged in practice of patent, trademark, and other law before the Office.
(n): Legal service means any legal service which may lawfully be performed by a practitioner before the Office.
(o): Legal System includes the Office and courts and adjudicatory bodies which review matters on which the Office has acted.
(p): Office means Patent and Trademark Office.
(q): Person includes a corporation, an association, a trust, a partnership, and any other organization or legal entity.
(r): Practitioner means (1) an attorney or agent registered to practice before the Office in patent cases or (2) an individual authorized under 5 U.S.C. 500(b) or otherwise as provided by this subchapter, to practice before the Office in trademark cases or other non-patent cases. A &127;suspended or excluded practitioner&127; is a practitioner who is suspended or excluded under§ 10.156. A &127;non-practitioner&127; is an individual who is not a practitioner.
(s): A proceeding before the Office includes an application, a reexamination, a protest, a public use proceeding, a patent interference, an inter partestrademark proceeding, or any other proceeding which is pending before the Office.
(t): Professional legal corporation means a corporation authorized by law to practice law for profit.
(u): Registration means registration to practice before the Office in patent cases.
(v): Respondent is defined in § 10.134(a)(1).
(w): Secret is defined in § 10.57(a).
(x): Solicit is defined in § 10.33.
(y): State includes the District of Columbia, Puerto Rico, and other federal territories and possessions.
(z): Tribunal includes courts, the Office, and other adjudicatory bodies.
(aa): United States means the United States of America, its territories and possessions.

[Added 50 FR 5172, Feb. 6, 1985, effective Mar. 8, 1985]

10.2 Director of Enrollment and Discipline.

(a): Appointment. The Commissioner shall appoint a Director of Enrollment and Discipline. In the event of the absence of the Director or a vacancy in the Office of the Director, the Commissioner may designate an employee of the Office to serve as acting Director of Enrollment and Discipline. The Director and any acting Director shall be an active member in good standing of the bar of a State.
(b): Duties. The Director shall:
(1): Receive and act upon applications for registration, prepare and grade the examination provided for in § 10.7(b), maintain the register provided for in § 10.5, and perform such other duties in connection with enrollment and recognition of attorneys and agents as may be necessary.
(2): Conduct investigations into possible violations by practitioners of Disciplinary Rules, with the consent of the Committee on Discipline initiate disciplinary proceedings under § 10.132(b), and perform such other duties in connection with investigations and disciplinary proceedings as may be necessary.
(c): Review of Director's decision. Any final decision of the Director refusing to register an individual under§ 10.6, recognize an individual under § 10.9 or § 10.14(c), or reinstate a suspended or excluded petitioner under§ 10.160, may be reviewed by petition to the Commissioner upon payment of the fee set forth in § 1.21(a)(5). A petition filed more than 30 days after the date of the decision of the Director may be dismissed as untimely. Any petition shall contain (1) a statement of the facts involved and the points to be reviewed and (2) the action requested. Briefs or memoranda, if any, in support of the petition shall accompany or be embodied therein. The petition will be decided on the basis of the record made before the Director and no new evidence will be considered by the Commissioner in deciding the petition. Copies of documents already of record before the Director shall not be submitted with the petition. An oral hearing on the petition will not be granted except when considered necessary by the Commissioner.

[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985]

10.3 Committee on Enrollment.

(a): The Commissioner may establish a Committee on Enrollment composed of one or more employees of the Office.
(b): The Committee on Enrollment shall, as necessary, advise the Director in connection with the Director's duties under § 10.2(b)(1).

[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985]

10.4 Committee on Discipline.

(a): The Commissioner shall appoint a Committee on Discipline. The Committee on Discipline shall consist of at least three employees of the Office, none of whom reports directly or indirectly to the Director or the Solicitor. Each member of the Committee on Discipline shall be a member in good standing of the bar of a State.
(b): The Committee on Discipline shall meet at the request of the Director and after reviewing evidence presented by the Director shall, by majority vote, determine whether there is probable cause to bring charges under § 10.132 against a practitioner. When charges are brought against a practitioner, no member of the Committee on Discipline, employee under the direction of the Director, or associate solicitor or assistant solicitor in the Office of Solicitor shall participate in rendering a decision on the charges.
(c): No discovery shall be authorized of, and no member of the Committee on Discipline shall be required to testify about, deliberations of the Committee on Discipline.

[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985]

10.5 Register of attorneys and agents in patent cases.

A register of attorneys and agents is kept in the Office on which are entered the names of all individuals recognized as entitled to represent applicants before the Office in the preparation and prosecution of applications for patent. Registration in the Office under the provisions of this part shall only entitle the individuals registered to practice before the Office in patent cases.

[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985]

10.6 Registration of attorneys and agents.

(a): Attorneys. Any citizen of the United States who is an attorney and who fulfills the requirements of this part may be registered as a patent attorney to practice before the Office. When appropriate, any alien who is an attorney, who lawfully resides in the United States, and who fulfills the requirements of this part may be registered as a patent attorney to practice before the Office, provided: Registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States and further provided: The alien may remain registered only (1) if the alien continues to lawfully reside in the United States and registration does not become inconsistent with the terms upon which the alien continues to lawfully reside in the United States or (2) if the alien ceases to reside in the United States, the alien is qualified to be registered under paragraph (c) of this section. See also § 10.9(b).
(b): Agents. Any citizen of the United States who is not an attorney and who fulfills the requirements of this part may be registered as a patent agent to practice before the Office. When appropriate, any alien who is not an attorney, who lawfully resides in the United States, and who fulfills the requirements of this part may be registered as a patent agent to practice before the Office, provided: Registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States, and further provided: The alien may remain registered only (1) if the alien continues to lawfully reside in the United States and registration does not become inconsistent with the terms upon which the alien continues to lawfully reside in the United States or (2) if the alien ceases to reside in the United States, the alien is qualified to be registered under paragraph (c) of this section. See also § 10.9(b).

NOTE -- All individuals registered prior to November 15, 1938, were registered as attorneys, whether they were attorneys or not, and such registrations have not been changed.
(c): Foreigners. Any foreigner not a resident of the United States who shall file proof to the satisfaction of the Director that he or she is registered and in good standing before the patent office of the country in which he or she resides and practices and who is possessed of the qualifications stated in § 10.7, may be registered as a patent agent to practice before the Office for the limited purpose of presenting and prosecuting patent applications of applicants located in such country, provided: The patent office of such country allows substantially reciprocal privileges to those admitted to practice before the United States Patent and Trademark Office. Registration as a patent agent under this paragraph shall con tinue only during the period that the conditions specified in this paragraph obtain.

[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985; paras. (d) & (e) removed 53 FR 38948, Oct. 4, 1988, effective Nov. 4, 1988]

10.7 Requirements for registration.

(a): No individual will be registered to practice before the Office unless he or she shall:
(1): Apply to the Commissioner in writing on a form supplied by the Director and furnish all requested information and material and
(2): Establish to the satisfaction of the Director that he or she is:
(i): Of good moral character and repute;
(ii): Possessed of the legal, scientific, and technical qualifications necessary to enable him or her to render applicants valuable service; and
(iii): Is otherwise competent to advise and assist applicants for patents in the presentation and prosecution of their applications before the Office.
(b): In order that the Director may determine whether an individual seeking to have his or her name placed upon the register has the qualifications specified in paragraph (a) of this section, satisfactory proof of good moral character and repute and of sufficient basic training in scientific and technical matters must be submitted to the Director. Except as provided in this paragraph, each applicant for registration must take and pass an examination which is held from time to time. Each application for admission to take the examination for registration must be accompanied by the fee set forth in § 1.21(a)(1) of this subchapter. The taking of an examination may be waived in the case of any individual who has actively served for at least four years in the patent examining corps of the Office. The examination will not be administered as a mere academic exercise.
(c): Within two months from the date an applicant is notified that he or she failed an examination, the applicant may request regrading of the examination upon payment of the fee set forth in § 1.21(a)(6). Any applicant requesting regrading shall particularly point out the errors which the applicant believed occurred in the grading of his or her examination.

[Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985]

10.8 Oath and registration fee.

Before an individual may have his or her name entered on the register of attorneys and agents, the individual must, after his or her application is approved, subscribe and swear to an oath or make a declaration prescribed by the Commissioner and pay the registration fee set forth in § 1.21(a)(2) of this subchapter.

[Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985]

10.9 Limited recognition in patent cases.

(a): Any individual not registered under § 10.6 may, upon a showing of circumstances which render it necessary or justifiable, be given limited recognition by the Director to prosecute as attorney or agent a specified application or specified applications, but limited recognition under this paragraph shall not extend further than the application or applications specified.
(b): When registration of a resident alien under paragraphs (a) or (b) of § 10.6 is not appropriate, the resident alien may be given limited recognition as may be appropriate under paragraph (a) of this section.
(c): An individual not registered under § 10.6 may, if appointed by applicant to do so, prosecute an international application only before the U.S. International Searching Authority and the U.S. International Preliminary Examining Authority, provided: The individual has the right to practice before the national office with which the international application is filed (PCT Art. 49, Rule 90 and § 1.455) or before the International Bureau when acting as Receiving Office pursuant to PCT Rules 83.1 bis and 90.1.

[Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985; para. (c) added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (c) amended, 60 FR 21438, May 2, 1995, effective June 1, 1995]

10.10 Restrictions on practice in patent cases.

(a): Only practitioners who are registered under§ 10.6 or individuals given limited recognition under§ 10.9 will be permitted to prosecute patent applications of others before the Office.
(b): No individual who has served in the patent examining corps of the Office may practice before the Office after termination of his or her service, unless he or she signs a written undertaking,
(1): Not to prosecute or aid in any manner in the prosecution of any patent application pending in any patent examining group during his or her period of service therein and
(2): Not to prepare or prosecute or to assist in any manner in the preparation or prosecution of any patent application of another (i) assigned to such group for examination and (ii) filed within two years after the date he or she left such group, without written authorization of the Director. Associated and related classes in other patent examining groups may be required to be included in the undertaking or designated classes may be excluded from the undertaking. When an application for registration is made after resignation from the Office, the applicant will not be registered if he or she has prepared or prosecuted or assisted in the preparation or prosecution of any patent application as indicated in the paragraph. Knowingly preparing or prosecuting or providing assistance in the preparation or prosecutionof any patent application contrary to the provisionsof this paragraph shall constitute misconduct under§ 10.23(c)(13) of this part.
(c): A practitioner who is an employee of the Office cannot prosecute or aid in any manner in the prosecution of any patent application before the Office.
(d): Practice before the Office by Government employees is subject to any applicable conflict of interest laws, regulations or codes of professional responsibility.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985; revised 53 FR 38950, Oct. 4, 1988, effective Nov. 4, 1988; corrected 53 FR 41278, Oct. 20, 1988]

10.11 Removing names from the register.

(a): Registered attorneys and agents shall notify the Director of any change of address. Any notification to the Director of any change of address shall be separate from any notice of change of address filed in individual applications.
(b): A letter may be addressed to any individual on the register, at the address of which separate notice was last received by the Director, for the purpose of ascertaining whether such individual desires to remain on the register. The name of any individual failing to reply and give any information requested by the Director within a time limit specified will be removed from the register and the names of individuals so removed will be published in the Official Gazette. The name of any individual so removed may be reinstated on the register as may be appropriate and upon payment of the fee set forth in § 1.21(a)(3) of this subchapter.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

10.14 Individuals who may practice before the Office in trademark and other non-patent cases.

(a): Attorneys. Any individual who is an attorney may represent others before the Office in trademark and other non-patent cases. An attorney is not required to apply for registration or recognition to practice before the Office in trademark and other non-patent cases.
(b): Non-lawyers. Individuals who are not attorneys are not recognized to practice before the Office in trademark and other non-patent cases, except that individuals not attorneys who were recognized to practice before the Office in trademark cases under this chapter prior to January 1, 1957, will be recognized as agents to continue practice before the Office in trademark cases.
(c): Foreigners. Any foreign attorney or agent not a resident of the United States who shall prove to the satisfaction of the Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices, may be recognized for the limited purpose of representing parties located in such country before the Office in the presentation and prosecution of trademark cases, provided: The patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark cases before the United States Patent and Trademark Office. Recognition under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.
(d): Recognition of any individual under this section shall not be construed as sanctioning or authorizing the performance of any act regarded in the jurisdiction where performed as the unauthorized practice of law.
(e): No individual other than those specified in paragraphs (a), (b), and (c) of this section will be permitted to practice before the Office in trademark cases. Any individual may appear in a trademark or other non-patent case in his or her own behalf. Any individual may appear in a trademark case for (1) a firm of which he or she is a member or (2) a corporation or association of which he or she is an officer and which he or she is authorized to represent, if such firm, corporation, or association is a party to a trademark proceeding pending before the Office.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

10.15 Refusal to recognize a practitioner.

Any practitioner authorized to appear before the Office may be suspended or excluded in accordance with the provisions of this part. Any practitioner who is suspended or excluded under this subpart or removed under § 10.11(b) shall not be entitled to practice before the Office.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

10.18 Signature and certificate for correspondence filed in the Patent and Trademark Office.

(a): For all documents filed in the Office in patent, trademark, and other non-patent matters, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Patent and Trademark Office must bear a signature, personally signed by such practitioner, in compliance with § 1.4(d)(1) of this chapter.
(b): By presenting to the Office (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that--
(1): All statements made therein of the party's own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Patent and Trademark Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or makes any false, fictitious or fraudulent statements or representations, or makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001, and that violations of this paragraph may jeopardize the validity of the application or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom; and
(2): To the best of the party's knowledge, information and belief, formed after an inquiry reasonable under the circumstances, that --
(i): The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of prosecution before the Office;
(ii): The claims and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii): The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv): The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
(c): Violations of paragraph (b)(1) of this section by a practitioner or non-practitioner may jeopardize the validity of the application or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom. Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions as deemed appropriate by the Commissioner, or the Commissioner's designee, which may include, but are not limited to, any combination of --
(1): Holding certain facts to have been established;
(2): Returning papers;
(3): Precluding a party from filing a paper, or presenting or contesting an issue;
(4): Imposing a monetary sanction;
(5): Requiring a terminal disclaimer for the period of the delay; or
(6): Terminating the proceedings in the Patent and Trademark Office.
(d): Any practitioner violating the provisions of this section may also be subject to disciplinary action. See§ 10.23(c)(15).

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985; para. (a) revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; paras. (a) & (b) revised, paras. (c) & (d) added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

10.19 [Reserved]

PATENT AND TRADEMARK OFFICE CODE OF PROFESSIONAL RESPONSIBILITY

10.20 Canons and Disciplinary Rules.

(a): Canons are set out in §§ 10.21, 10.30, 10.46, 10.56, 10.61, 10.76, 10.83, 10.100, and 10.110. Canons are statements of axiomatic norms, expressing in general terms the standards of professional conduct expected of practitioners in their relationships with the public, with the legal system, and with the legal profession.
(b): Disciplinary Rules are set out in §§ 10.22-10.24, 10.31-10.40, 10.47-10.57, 10.62-10.68, 10.77, 10.78, 10.84, 10.85, 10.87-10.89, 10.92, 10.93, 10.101-10.103, 10.111, and 10.112. Disciplinary Rules are mandatory in character and state the minimum level of conduct below which no practitioner can fall without being subjected to disciplinary action.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

10.21 Canon 1.

A practitioner should assist in maintaining the integrity and competence of the legal profession.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

10.22 Maintaining integrity and competence of the legal profession.

(a): A practitioner is subject to discipline if the practitioner has made a materially false statement in, or if the practitioner has deliberately failed to disclose a material fact requested in connection with, the practitioner's application for registration or membership in the bar of any United States court or any State court or his or her authority to otherwise practice before the Office in trademark and other non-patent cases.
(b): A practitioner shall not further the application for registration or membership in the bar of any United States court, State court, or administrative agency of another person known by the practitioner to be unqualified in respect to character, education, or other relevant attribute.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985]

10.23 Misconduct.

(a): A practitioner shall not engage in disreputable or gross misconduct.
(b): A practitioner shall not:
(1): Violate a Disciplinary Rule.
(2): Circumvent a Disciplinary Rule through actions of another.
(3): Engage in illegal conduct involving moral turpitude.
(4): Engage in conduct involving dishonesty, fraud, deceit, or misrepresentation.
(5): Engage in conduct that is prejudicial to the administration of justice.
(6): Engage in any other conduct that adversely reflects on the practitioner's fitness to practice before the Office.
(c): Conduct which constitutes a violation of paragraphs (a) and (b) of this section includes, but is not limited to:
(1): Conviction of a criminal offense involving moral turpitude, dishonesty, or breach of trust.
(2): Knowingly giving false or misleading information or knowingly participating in a material way in giving false or misleading information, to:
(i): A client in connection with any immediate, prospective, or pending business before the Office.
(ii): The Office or any employee of the Office.
(3): Misappropriation of, or failure to properly or timely remit, funds received by a practitioner or the practitioner's firm from a client to pay a fee which the client is required by law to pay to the Office.
(4): Directly or indirectly improperly influencing, attempting to improperly influence, offering or agreeing to improperly influence, or attempting to offer or agree to improperly influence an official action of any employee of the Office by:
(i): Use of threats, false accusations, duress, or coercion,
(ii): An offer of any special inducement or promise of advantage, or
(iii): Improperly bestowing of any gift, favor, or thing of value.
(5): Suspension or disbarment from practice as an attorney or agent on ethical grounds by any duly constituted authority of a State or the United States or, in the case of a practitioner who resides in a foreign country or is registered under § 10.6(c), by any duly constituted authority of:
(i): A State,
(ii): The United States, or
(iii): The country in which the practitioner resides.
(6): Knowingly aiding or abetting a practitioner suspended or excluded from practice before the Office in engaging in unauthorized practice before the Office under § 10.158.
(7): Knowingly withholding from the Office information identifying a patent or patent application of another from which one or more claims have been copied. See §§ 1.604(b) and 1.607(c) of this subchapter.
(8): Failing to inform a client or former client or failing to timely notify the Office of an inability to notify a client or former client of correspondence received from the Office or the client's or former client's opponent in an inter partes proceeding before the Office when the correspondence (i) could have a significant effect on a matter pending before the Office, (ii) is received by the practitioner on behalf of a client or former client and (iii) is correspondence of which a reasonable practitioner would believe under the circumstances the client or former client should be notified.
(9): Knowingly misusing a &127;Certificate of Mailing or Transmission&127; under § 1.8 of this chapter.
(10): Knowingly violating or causing to be violated the requirements of § 1.56 or § 1.555 of this subchapter.
(11): Knowingly filing or causing to be filed an application containing any material alteration made in the application papers after the signing of the accompanying oath or declaration without identifying the alteration at the time of filing the application papers.
(12): Knowingly filing, or causing to be filed, a frivolous complaint alleging a violation by a practitioner of the Patent and Trademark Office Code of Professional Responsibility.
(13): Knowingly preparing or prosecuting or providing assistance in the preparation or prosecution of a patent application in violation of an undertaking signed under § 10.10(b).
(14): Knowingly failing to advise the Director in writing of any change which would preclude continued registration under § 10.6.
(15): Signing a paper filed in the Office in violation of the provisions of § 10.18 or making a scandalous or indecent statement in a paper filed in the Office.
(16): Willfully refusing to reveal or report knowledge or evidence to the Director contrary to § 10.24 or paragraph (b) of § 10.131.
(17): Representing before the Office in a patent case either a joint venture comprising an inventor and an invention developer or an inventor referred to the registered practitioner by an invention developer when (i) the registered practitioner knows, or has been advised by the Office, that a formal complaint filed by a Federal or State agency, based on any violation of any law relating to securities, unfair methods of competition, unfair or deceptive acts or practices, mail fraud, or other civil or criminal conduct, is pending before a Federal or State court or Federal or State agency, or has been resolved unfavorably by such court or agency, against the invention developer in connection with invention development services and (ii) the registered practitioner fails to fully advise the inventor of the existence of the pending complaint or unfavorable resolution thereof prior to undertaking or continuing representation of the joint venture or inventor. &127;Invention developer&127; means any person, and any agent, employee, officer, partner, or independent contractor thereof, who is not a registered practitioner and who advertises invention development services in media of general circulation or who enters into contracts for invention development services with customers as a result of such advertisement. &127;Invention development services&127; means acts of invention development required or promised to be performed, or actually performed, or both, by an invention developer for a customer. &127;Invention development&127; means the evaluation, perfection, marketing, brokering, or promotion of an invention on behalf of a customer by an invention developer, including a patent search, preparation of a patent application, or any other act done by an invention developer for consideration toward the end of procuring or attempting to procure a license, buyer, or patent for an invention. &127;Customer&127; means any individual who has made an invention and who enters into a contract for invention development services with an invention developer with respect to the invention by which the inventor becomes obligated to pay the invention developer less than $5,000 (not to include any additional sums which the invention developer is to receive as a result of successful development of the invention). &127;Contract for invention development services&127; means a contract for invention development services with an invention developer with respect to an invention made by a customer by which the inventor becomes obligated to pay the invention developer less than $5,000 (not to include any additional sums which the invention developer is to receive as a result of successful development of the invention).
(18): In the absence of information sufficient to establish a reasonable belief that fraud or inequitable conduct has occurred, alleging before a tribunal that anyone has committed a fraud on the Office or engaged in inequitable conduct in a proceeding before the Office.
(19): Action by an employee of the Office contrary to the provisions set forth in § 10.10(c).
(20): Knowing practice by a Government employee contrary to applicable Federal conflict of interest laws, or regulations of the Department, agency, or commission employing said individual.
(d): A practitioner who acts with reckless indifference to whether a representation is true or false is chargeable with knowledge of its falsity. Deceitful statements of half-truths or concealment of material facts shall be deemed actual fraud within the meaning of this part.

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985; amended 50 FR 25073, June 17, 1985; 50 FR 25980, June 24, 1985; paras. (c)(13), (19) & (20), 53 FR 38950, Oct. 4, 1988, effective Nov. 4, 1988; corrected 53 FR 41278, Oct. 20, 1988; paras. (c)(10) & (c)(11), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. (c)(9) amended, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 1993; para. (c)(9) amended, 61 FR 56439, Nov. 1, 1996, effective Dec 2, 1996; para. (c)(15) amended, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

10.24 Disclosure of information to authorities.

(a): A practitioner possessing unprivileged knowledge of a violation of a Disciplinary Rule shall report such knowledge to the Director.
(b): A practitioner possessing unprivileged knowledge or evidence concerning another practitioner, employee of the Office, or a judge shall reveal fully such knowledge or evidence upon proper request of a tribunal or other authority empowered to investigate or act upon the conduct of practitioners, employees of the Office, or judges.

[Added 50 FR 5176, Feb. 6, 1985, effective Mar. 8, 1985]

10.25 - 10.29 [Reserved]

10.30 Canon 2.

A practitioner should assist the legal profession in fulfilling its duty to make legal counsel available.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

10.31 Communications concerning a practitioner's services.

(a): No practitioner shall with respect to any prospective business before the Office, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any prospective applicant or other person having immediate or prospective business before the Office.
(b): A practitioner may not use the name of a Member of either House of Congress or of an individual in the service of the United States in advertising the practitioner's practice before the Office.
(c): Unless authorized under § 10.14(b), a non-lawyer practitioner shall not hold himself or herself out as authorized to practice before the Office in trademark cases.
(d): Unless a practitioner is an attorney, the practitioner shall not hold himself or herself out:
(1): To be an attorney or lawyer or
(2): As authorized to practice before the Office in non-patent and trademark cases.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

10.32 Advertising.

(a): Subject to § 10.31, a practitioner may advertise services through public media, including a telephone directory, legal directory, newspaper, or other periodical, radio, or television, or through written communications not involving solicitation as defined by § 10.33.
(b): A practitioner shall not give anything of value to a person for recommending the practitioner's services, except that a practitioner may pay the reasonable cost of advertising or written communication permitted by this section and may pay the usual charges of a not-for-profit lawyer referral service or other legal service organization.
(c): Any communication made pursuant to this section shall include the name of at least one practitioner responsible for its content.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

10.33 Direct contact with prospective clients.

A practitioner may not solicit professional employment from a prospective client with whom the practitioner has no family or prior professional relationship, by mail, in-person, or otherwise, when a significant motive for the practitioner's doing so is the practitioner's pecuniary gain under circumstances evidencing undue influence, intimidation, or overreaching. The term &127;solicit&127; includes contact in person, by telephone or telegraph, by letter or other writing, or by other communication directed to a specific recipient, but does not include letters addressed or advertising circulars distributed generally to persons not specifically known to need legal services of the kind provided by the practitioner in a particular matter, but who are so situated that they might in general find such services useful.

[Added 50 FR 5177, Feb.6, 1985, effective Mar. 8, 1985]

10.34 Communication of fields of practice.

A registered practitioner may state or imply that the practitioner is a specialist as follows:

(a): A registered practitioner who is an attorney may use the designation &127;Patents,&127; &127;Patent Attorney,&127; &127;Patent Lawyer,&127; &127;Registered Patent Attorney,&127; or a substantially similar designation.
(b): A registered practitioner who is not an attorney may use the designation &127;Patents,&127; &127;Patent Agent,&127; &127;Registered Patent Agent,&127; or a substantially similar designation, except that any practitioner who was registered prior to November 15, 1938, may refer to himself or herself as a &127;patent attorney.&127;

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

10.35 Firm names and letterheads.

(a): A practitioner shall not use a firm name, letterhead, or other professional designation that violates § 10.31. A trade name may be used by a practitioner in private practice if it does not imply a current connection with a government agency or with a public or charitable legal services organization and is not otherwise in violation of § 10.31.
(b): Practitioners may state or imply that they practice in a partnership or other organization only when that is the fact.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

10.36 Fees for legal services.

(a): A practitioner shall not enter into an agreement for, charge, or collect an illegal or clearly excessive fee.
(b): A fee is clearly excessive when, after a review of the facts, a practitioner of ordinary prudence would be left with a definite and firm conviction that the fee is in excess of a reasonable fee. Factors to be considered as guides in determining the reasonableness of a fee include the following:
(1): The time and labor required, the novelty and difficulty of the questions involved, and the skill requisite to perform the legal service properly.
(2): The likelihood, if apparent to the client, that the acceptance of the particular employment will preclude other employment by the practitioner.
(3): The fee customarily charged for similar legal services.
(4): The amount involved and the results obtained.
(5): The time limitations imposed by the client or by the circumstances.
(6): The nature and length of the professional relationship with the client.
(7): The experience, reputation, and ability of the practitioner or practitioners performing the services.
(8): Whether the fee is fixed or contingent.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

10.37 Division of fees among practitioners.

(a): A practitioner shall not divide a fee for legal services with another practitioner who is not a partner in or associate of the practitioner's law firm or law office, unless:
(1): The client consents to employment of the other practitioner after a full disclosure that a division of fees will be made.
(2): The division is made in proportion to the services performed and responsibility assumed by each.
(3): The total fee of the practitioners does not clearly exceed reasonable compensation for all legal services rendered to the client.
(b): This section does not prohibit payment to a former partner or associate pursuant to a separation or retirement agreement.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

10.38 Agreements restricting the practice of a practitioner.

(a): A practitioner shall not be a party to or participate in a partnership or employment agreement with another practitioner that restricts the right of a practitioner to practice before the Office after the termination of a relationship created by the agreement, except as a condition to payment of retirement benefits.
(b): In connection with the settlement of a controversy or suit, a practitioner shall not enter into an agreement that restricts the practitioner's right to practice before the Office.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

10.39 Acceptance of employment.

A practitioner shall not accept employment on behalf of a person if the practitioner knows or it is obvious that such person wishes to:

(a): Bring a legal action, commence a proceeding before the Office, conduct a defense, assert a position in any proceeding pending before the Office, or otherwise have steps taken for the person, merely for the purpose of harassing or maliciously injuring any other person.
(b): Present a claim or defense in litigation or any proceeding before the Office that it is not warranted under existing law, unless it can be supported by good faith argument for an extension, modification, or reversal of existing law.

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985]

10.40 Withdrawal from employment.

(a): A practitioner shall not withdraw from employment in a proceeding before the Office without permission from the Office (see §§ 1.36 and 2.19 of this subchapter). In any event, a practitioner shall not withdraw from employment until the practitioner has taken reasonable steps to avoid foreseeable prejudice to the rights of the client, including giving due notice to his or her client, allowing time for employment of another practitioner, delivering to the client all papers and property to which the client is entitled, and complying with applicable laws and rules. A practitioner who withdraws from employment shall refund promptly any part of a fee paid in advance that has not been earned.
(b): Mandatory withdrawal. A practitioner representing a client before the Office shall withdraw from employment if:
(1): The practitioner knows or it is obvious that the client is bringing a legal action, commencing a proceeding before the Office, conducting a defense, or asserting a position in litigation or any proceeding pending before the Office, or is otherwise having steps taken for the client, merely for the purpose of harassing or maliciously injuring any person;
(2): The practitioner knows or it is obvious that the practitioner's continued employment will result in violation of a Disciplinary Rule;
(3): The practitioner's mental or physical condition renders it unreasonably difficult for the practitioner to carry out the employment effectively; or
(4): The practitioner is discharged by the client.
(c): Permissive withdrawal. If paragraph (b) of this section is not applicable, a practitioner may not request permission to withdraw in matters pending before the Office unless such request or such withdrawal is because:
(1): The petitioner's client:
(i): Insists upon presenting a claim or defense that is not warranted under existing law and cannot be supported by good faith argument for an extension, modification, or reversal of existing law;
(ii): Personally seeks to pursue an illegal course of conduct;
(iii): Insists that the practitioner pursue a course of conduct that is illegal or that is prohibited under a Disciplinary Rule;
(iv): By other conduct renders it unreasonably difficult for the practitioner to carry out the employment effectively;
(v): Insists, in a matter not pending before a tribunal, that the practitioner engage in conduct that is contrary to the judgment and advice of the practitioner but not prohibited under the Disciplinary Rule; or
(vi): Has failed to pay one or more bills rendered by the practitioner for an unreasonable period of time or has failed to honor an agreement to pay a retainer in advance of the performance of legal services.
(2): The practitioner's continued employment is likely to result in a violation of a Disciplinary Rule;
(3): The practitioner's inability to work with co-counsel indicates that the best interests of the client likely will be served by withdrawal;
(4): The practitioner's mental or physical condition renders it difficult for the practitioner to carry out the employment effectively;
(5): The practitioner's client knowingly and freely assents to termination of the employment; or
(6): The practitioner believes in good faith, in a proceeding pending before the Office, that the Office will find the existence of other good cause for withdrawal.

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

10.46 Canon 3.

A practitioner should assist in preventing the unauthorized practice of law.

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

10.47 Aiding unauthorized practice of law.

(a): A practitioner shall not aid a non-practitioner in the unauthorized practice of law before the Office.
(b): A practitioner shall not aid a suspended or excluded practitioner in the practice of law before the Office.
(c): A practitioner shall not aid a non-lawyer in the unauthorized practice of law.

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

10.48 Sharing legal fees.

A practitioner or a firm of practitioners shall not share legal fees with a non-practitioner except that:

(a): An agreement by a practitioner with the practitioner's firm, partner, or associate may provide for the payment of money, over a reasonable period of time after the practitioner's death, to the practitioner's estate or to one or more specified persons.
(b): A practitioner who undertakes to complete unfinished legal business of a deceased practitioner may pay to the estate of the deceased practitioner that proportion of the total compensation which fairly represents the services rendered by the deceased practitioner.
(c): A practitioner or firm of practitioners may include non-practitioner employees in a compensation or retirement plan, even though the plan is based in whole or in part on a profit-sharing arrangement, providing such plan does not circumvent another Disciplinary Rule.

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985; para. (b) revised, 58 FR 54511, Oct. 22, 1993, effective June 3, 1994]

10.49 Forming a partnership with a non-practitioner.

A practitioner shall not form a partnership with a nonpractitioner if any of the activities of the partnership consist of the practice of patent, trademark, or other law before the Office.

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

10.56 Canon 4.

A practitioner should preserve the confidences and secrets of a client.

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

10.57 Preservation of confidences and secrets of a client.

(a): &127;Confidence&127; refers to information protected by the attorney-client or agent-client privilege under applicable law. &127;Secret&127; refers to other information gained in the professional relationship that the client has requested be held inviolate or the disclosure of which would be embarrassing or would be likely to be detrimental to the client.
(b): Except when permitted under paragraph (c) of this section, a practitioner shall not knowingly:
(1): Reveal a confidence or secret of a client.
(2): Use a confidence or secret of a client to the dis advantage of the client.
(3): Use a confidence or secret of a client for the advantage of the practitioner or of a third person, unless the client consents after full disclosure.
(c): A practitioner may reveal:
(1): Confidences or secrets with the consent of the client affected but only after a full disclosure to the client.
(2): Confidences or secrets when permitted under Disciplinary Rules or required by law or court order.
(3): The intention of a client to commit a crime and the information necessary to prevent the crime.
(4): Confidences or secrets necessary to establish or collect the practitioner's fee or to defend the practitioner or the practitioner's employees or associates against an accusation of wrongful conduct.
(d): A practitioner shall exercise reasonable care to prevent the practitioner's employees, associates, and others whose services are utilized by the practitioner from disclosing or using confidences or secrets of a client, except that a practitioner may reveal the information allowed by paragraph (c) of this section through an employee.

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985]

10.61 Canon 5.

A practitioner should exercise independent professional judgment on behalf of a client.

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

10.62 Refusing employment when the interest of the practitioner may impair the practitioner's independent professional judgment.

(a): Except with the consent of a client after full dis closure, a practitioner shall not accept employment if the exercise of the practitioner's professional judgment on behalf of the client will be or reasonably may be affected by the practitioner's own financial, business, property, or personal interests.
(b): A practitioner shall not accept employment in a proceeding before the Office if the practitioner knows or it is obvious that the practitioner or another practitioner in the practitioner's firm ought to sign an affidavit to be filed in the Office or be called as a witness, except that the practitioner may undertake the employment and the practitioner or another practitioner in the practitioner's firm may testify:
(1): If the testimony will relate solely to an uncontested matter.
(2): If the testimony will relate solely to a matter of formality and there is no reason to believe that substantial evidence will be offered in opposition to the testimony.
(3): If the testimony will relate solely to the nature and value of legal services rendered in the case by the practitioner or the practitioner's firm to the client.
(4): As to any matter, if refusal would work a substantial hardship on the client because of the distinctive value of the practitioner or the practitioner's firm as counsel in the particular case.

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

10.63 Withdrawal when the practitioner becomes a witness.

(a): If, after undertaking employment in a proceeding in the Office, a practitioner learns or it is obvious that the practitioner or another practitioner in the practitioner's firm ought to sign an affidavit to be filed in the Office or be called as a witness on behalf of a practitioner's client, the practitioner shall withdraw from the conduct of the proceeding and the practitioner's firm, if any, shall not continue representation in the proceeding, except that the practitioner may continue the representation and the practitioner or another practitioner in the practitioner's firm may testify in the circumstances enumerated in paragraphs (1) through (4) of § 10.62(b).
(b): If, after undertaking employment in a proceeding before the Office, a practitioner learns or it is obvious that the practitioner or another practitioner in the practitioner's firm may be asked to sign an affidavit to be filed in the Office or be called as a witness other than on behalf of the practitioner's client, the practitioner may continue the representation until it is apparent that the practitioner's affidavit or testimony is or may be prejudicial to the practitioner's client.

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

10.64 Avoiding acquisition of interest in litigation or proceeding before the Office.

(a): A practitioner shall not acquire a proprietary interest in the subject matter of a proceeding before the Office which the practitioner is conducting for a client, except that the practitioner may:
(1): Acquire a lien granted by law to secure the practitioner's fee or expenses; or
(2): Contract with a client for a reasonable contingent fee; or
(3): In a patent case, take an interest in the patent as part or all of his or her fee.
(b): While representing a client in connection with a contemplated or pending proceeding before the Office, a practitioner shall not advance or guarantee financial assistance to a client, except that a practitioner may advance or guarantee the expenses of going forward in a proceeding before the Office including fees required by law to be paid to the Office, expenses of investigation, expenses of medical examination, and costs of obtaining and presenting evidence, provided the client remains ultimately liable for such expenses. A practitioner may, however, advance any fee required to prevent or remedy an abandonment of a client's application by reason of an act or omission attributable to the practitioner and not to the client, whether or not the client is ultimately liable for such fee.

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

10.65 Limiting business relations with a client.

A practitioner shall not enter into a business transaction with a client if they have differing interests therein and if the client expects the practitioner to exercise professional judgment therein for the protection of the client, unless the client has consented after full disclosure.

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

10.66 Refusing to accept or continue employment if the interests of another client may impair the independent professional judgment of the practitioner.

(a): A practitioner shall decline proffered employment if the exercise of the practitioner's independent professional judgment in behalf of a client will be or is likely to be adversely affected by the acceptance of the proffered employment, or if it would be likely to involve the practitioner in representing differing interests, except to the extent permitted under paragraph (c) of this section.
(b): A practitioner shall not continue multiple employment if the exercise of the practitioner's independent professional judgment in behalf of a client will be or is likely to be adversely affected by the practitioner's representation of another client, or if it would be likely to involve the practitioner in representing differing interests, except to the extent permitted under paragraph (c) of this section.
(c): In the situations covered by paragraphs (a) and (b) of this section, a practitioner may represent multiple clients if it is obvious that the practitioner can adequately represent the interest of each and if each consents to the representation after full disclosure of the possible effect of such representation on the exercise of the practitioner's independent professional judgment on behalf of each.
(d): If a practitioner is required to decline employment or to withdraw from employment under a Disciplinary Rule, no partner, or associate, or any other practitioner affiliated with the practitioner or the practitioner's firm, may accept or continue such employment unless otherwise ordered by the Director or Commissioner.

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

10.67 Settling similar claims of clients.

A practitioner who represents two or more clients shall not make or participate in the making of anaggregate settlement of the claims of or against thepractitioner's clients, unless each client has consented to the settlement after being advised of the existence and nature of all the claims involved in the proposed settlement, of the total amount of the settlement, and of the participation of each person in the settlement.

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985]

10.68 Avoiding influence by others than the client.

(a): Except with the consent of the practitioner's client after full disclosure, a practitioner shall not:
(1): Accept compensation from one other than the practitioner's client for the practitioner's legal services to or for the client.
(2): Accept from one other than the practitioner's client any thing of value related to the practitioner's representation of or the practitioner's employment by the client.
(b): A practitioner shall not permit a person who recommends, employs, or pays the practitioner to render legal services for another, to direct or regulate the practitioner's professional judgment in rendering such legal services.
(c): A practitioner shall not practice with or in the form of a professional corporation or association authorized to practice law for a profit, if a non-practitioner has the right to direct or control the professional judgment of a practitioner.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

10.76 Canon 6.

A practitioner should represent a client competently.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

10.77 Failing to act competently.

A practitioner shall not:

(a): Handle a legal matter which the practitioner knows or should know that the practitioner is not competent to handle, without associating with the practitioner another practitioner who is competent to handle it.
(b): Handle a legal matter without preparation adequate in the circumstances.
(c): Neglect a legal matter entrusted to the practitioner.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

10.78 Limiting liability to client.

A practitioner shall not attempt to exonerate himself or herself from, or limit his or her liability to, a client for his or her personal malpractice.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

10.83 Canon 7.

A practitioner should represent a client zealously within the bounds of the law.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

10.84 Representing a client zealously.

(a): A practitioner shall not intentionally:
(1): Fail to seek the lawful objectives of a client through reasonable available means permitted by law and the Disciplinary Rules, except as provided by paragraph (b) of this section. A practitioner does not violate the provisions of this section, however, by acceding to reasonable requests of opposing counsel which do not prejudice the rights of the client, by being punctual in fulfilling all professional commitments, by avoiding offensive tactics, or by treating with courtesy and consideration all persons involved in the legal process.
(2): Fail to carry out a contract of employment entered into with a client for professional services, but a practitioner may withdraw as permitted under §§ 10.40, 10.63, and 10.66.
(3): Prejudice or damage a client during the course of a professional relationship, except as required under this part.
(b): In representation of a client, a practitioner may:
(1): Where permissible, exercise professional judgment to waive or fail to assert a right or position of the client.
(2): Refuse to aid or participate in conduct that the practitioner believes to be unlawful, even though there is some support for an argument that the conduct is legal.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

10.85 Representing a client within the bounds of the law.

(a): In representation of a client, a practitioner shall not:
(1): Initiate or defend any proceeding before the Office, assert a position, conduct a defense, delay a trial or proceeding before the Office, or take other action on behalf of the practitioner's client when the practitioner knows or when it is obvious that such action would serve merely to harass or maliciously injure another.
(2): Knowingly advance a claim or defense that is unwarranted under existing law, except that a practitioner may advance such claim or defense if it can be supported by good faith argument for an extension, modification, or reversal of existing law.
(3): Conceal or knowingly fail to disclose that which the practitioner is required by law to reveal.
(4): Knowingly use perjured testimony or false evidence.
(5): Knowingly make a false statement of law or fact.
(6): Participate in the creation or preservation of evidence when the practitioner knows or it is obvious that the evidence is false.
(7): Counsel or assist a client in conduct that the practitioner knows to be illegal or fraudulent.
(8): Knowingly engage in other illegal conduct or conduct contrary to a Disciplinary Rule.
(b): A practitioner who receives information clearly establishing that:
(1): A client has, in the course of the representation, perpetrated a fraud upon a person or tribunal shall promptly call upon the client to rectify the same, and if the client refuses or is unable to do so the practitioner shall reveal the fraud to the affected person or tribunal.
(2): A person other than a client has perpetrated a fraud upon a tribunal shall promptly reveal the fraud to the tribunal.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

10.86 [Reserved]

10.87 Communicating with one of adverse interest.

During the course of representation of a client, a practitioner shall not:

(a): Communicate or cause another to communicate on the subject of the representation with a party the practitioner knows to be represented by another practitioner in that matter unless the practitioner has the prior consent of the other practitioner representing such other party or is authorized by law to do so. It is not improper, however, for a practitioner to encourage a client to meet with an opposing party for settlement discussions.
(b): Give advice to a person who is not represented by a practitioner other than the advice to secure counsel, if the interests of such person are or have a reasonable possibility of being in conflict with the interests of the practitioner's client.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

10.88 Threatening criminal prosecution.

A practitioner shall not present, participate in presenting, or threaten to present criminal charges solely to obtain an advantage in any prospective or pending proceeding before the Office.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

10.89 Conduct in proceedings.

(a): A practitioner shall not disregard or advise a client to disregard any provision of this Subchapter or a decision of the Office made in the course of a proceeding before the Office, but the practitioner may take appropriate steps in good faith to test the validity of such provision or decision.
(b): In presenting a matter to the Office, a practitioner shall disclose:
(1): Controlling legal authority known to the practitioner to be directly adverse to the position of the client and which is not disclosed by opposing counsel or an employee of the Office.
(2): Unless privileged or irrelevant, the identities of the client the practitioner represents and of the persons who employed the practitioner.
(c): In appearing in a professional capacity before a tribunal, a practitioner shall not:
(1): State or allude to any matter that the practitioner has no reasonable basis to believe is relevant to the case or that will not be supported by admissible evidence.
(2): Ask any question that the practitioner has no reasonable basis to believe is relevant to the case and that is intended to degrade a witness or other person.
(3): Assert the practitioner's personal knowledge of the facts in issue, except when testifying as a witness.
(4): Assert the practitioner's personal opinion as to the justness of a cause, as to the credibility of a witness, as to the culpability of a civil litigant, or as to the guilt or innocence of an accused; but the practitioner may argue, on the practitioner's analysis of the evidence, for any position or conclusion with respect to the matters stated herein.
(5): Engage in undignified or discourteous conduct before the Office (see § 1.3 of the subchapter).
(6): Intentionally or habitually violate any provision of this subchapter or established rule of evidence.

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985]

10.92 Contact with witnesses.

(a): A practitioner shall not suppress any evidence that the practitioner or the practitioner's client has a legal obligation to reveal or produce.
(b): A practitioner shall not advise or cause a person to be secreted or to leave the jurisdiction of a tribunal for the purpose of making the person unavailable as a witness therein.
(c): A practitioner shall not pay, offer to pay, or acquiesce in payment of compensation to a witness contingent upon the content of the witness' affidavit, testimony or the outcome of the case. But a practitioner may advance, guarantee, or acquiesce in the payment of:
(1): Expenses reasonably incurred by a witness in attending, testifying, or making an affidavit.
(2): Reasonable compensation to a witness for the witness' loss of time in attending, testifying, or making an affidavit.
(3): A reasonable fee for the professional services of an expert witness.