Time For A Patent Bar Oath

Proposed Patent Attorney’s Oath.

On 1994-11-02, I took and passed the so-called “patent bar exam” and became a member of the so-called “patent bar.” I say “so-called” because, as all patent agents and patent attorneys know, the exam is not strictly called the “patent bar exam,” nor is the group of admitted patent practitioners strictly called the “patent bar.” But that’s what everybody calls it, so I’ll dispense with the quotes.

On 1995-05-08, I officially had the status of “patent agent,” and, on 1996-02-14, after I informed the USPTO that I had passed at least one state bar exam, my status changed from patent agent to patent attorney.

I have taken several oaths in my life (see related posts below), but I did not have to take any oath to begin practicing patent law. The USPTO does impose a duty of candor (via 37 CFR 1.56, AKA Rule 56) on patent practitioners but does not require said practitioners (whether patent agents or patent attorneys) to take an oath.

To further the discussion about whether or not the patent bar should have a patent oath, I have drafted a patent oath (below) based on the Maine Bar Oath and the Massachusetts Bar Oaths (one of which is the oldest in the country). Here’s my draft patent bar oath for students of legal ethics, patent ethics, and others:

I, [full legal name], do solemnly swear:

to support the Constitution of the United States
and especially United States patent law,
both codified and common law;

that I will do no falsehood,
nor consent to the doing of any in court,
or before the United States Patent and Trademark Office (USPTO);

that if I know of an intention to commit any falsehood,
I will give knowledge thereof to the court or USPTO so that it may be prevented;

that I will not wittingly or willingly promote, prosecute, or litigate any
false, groundless, or unlawful patent application,
nor give aid or consent to the same;

that I will delay no person for lucre or malice,
but I will conduct myself in the office of a patent attorney (or patent agent)
within the courts and before the USPTO
according to the best of my knowledge and discretion,
and with all good fidelity,
as well as to the courts and the USPTO, as to my clients.

So help me God.

Should the USPTO adopt a patent oath? Presumably all state bars require oaths, so all practicing patent attorneys would be bound by at least one patent oath. But what about patent agents who are member of no state bar? Would there be less perceived abuse of the patent system (via patent trolls and the like) if a patent oath were required? I think it’s a discussion worth having.

Erik J. Heels is a trademark and patent lawyer, Boston Red Sox fan, MIT engineer, and musician. He blogs about technology, law, baseball, and rock ‘n’ roll at ErikJHeels.com and is an Adjunct Professor (teaching patent law) at the University of Maine School of Law.

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6 thoughts on “Time For A Patent Bar Oath”

  1. Non-disclosure of relevant prior art is a problem. Also, providing updated disclosure is an issue after a patent or trademark has been issued when requested by citizens.

    Re-examination requests to the USPTO should be something that the general public should be able to make submittals, without going through the expense of patent attorneys.

    I have seen so many patents issued that have been clear 102 violations, have called it to the attention with evidence to the patent attorney on record, and received no response.

    Patent attorney and agents that have not been examiners don’t really know how the system works ‘inside’. Examiners have very little time to do searches on their own, and rely on full disclosure.

    I have seen independent patent claims with selection of wording for important elements that appear to be selected to throw off an examiner’s search. Only later, to find that it would have been a clear rejection if standard industry wording was provided in the claim.

    I would love to hear from you, to provide details of same.

    The cornerstone of any claim is a full disclosure. I’ve always felt that the filing fee should include an amount of money set aside, so that if the examiner believes on first review that more disclosure may be needed, that the USPTO can request a third party independent contractor to research, instead of the burden exclusively on the examiner in their brief amount of time to review specs , drawings and search.

  2. USPTO Form SB1209 (http://www.uspto.gov/forms/forms_alpha.jsp) is an affirmation or oath. It states:

    I, _________________


    I will observe the laws and rules of practice of the United States Patent and Trademark Office.

    I will maintain the respect due to the United States Patent and Trademark Office and the officials thereof.

    I will not counsel or maintain any application or proceeding which shall appear to me to be unjust, nor will I take any action except such as I believe to be honestly debatable under the law.

    I will employ for the purpose of maintaining the causes confided to me such means only as are consistent with truth and honor and will never employ political influence nor seek to mislead the officials of the Office by any artifice or false statements of fact or law.

    I will maintain in confidence and preserve inviolate the secrets of my client and will accept no compensation in connection with his or her business except from him or her with his or her knowledge or approval.

    I will abstain from all offensive personality and advance no fact prejudicial to the honor or reputation of a party or witness unless required by justice of the cause with which I am charged.

    I will not delay any person’s cause for lucre or malice.

    How does this compare to my suggested oath? What’s missing? What has been added?

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