[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2002]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR10.23]

[Page 352-354]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
                         DEPARTMENT OF COMMERCE
 
PART 10--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE--Table of Contents
 
Sec. 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

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    (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 Sec. 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 Sec. 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 Secs. 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 ``Certificate of Mailing or Transmission'' 
under Sec. 1.8 of this chapter.
    (10) Knowingly violating or causing to be violated the requirements 
of Sec. 1.56 or Sec. 1.555 of this subchapter.
    (11) Except as permitted by Sec. 1.52(c) of this chapter, 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 Sec. 10.10(b).
    (14) Knowingly failing to advise the Director in writing of any 
change which would preclude continued registration under Sec. 10.6.
    (15) Signing a paper filed in the Office in violation of the 
provisions of Sec. 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 Sec. 10.24 or paragraph (b) of Sec. 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. ``Invention 
developer'' 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. ``Invention 
development services'' means acts of invention development required

[[Page 354]]

or promised to be performed, or actually performed, or both, by an 
invention developer for a customer. ``Invention development'' 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. ``Customer'' 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). 
``Contract for invention development services'' 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 Sec. 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.

[50 FR 5172, Feb. 6, 1985; 50 FR 25073, June 17, 1985; 50 FR 25980, June 
24, 1985, as amended at 53 FR 38950, Oct. 4, 1988; 53 FR 41278, Oct. 20, 
1988; 57 FR 2036, Jan. 17, 1992; 58 FR 54504, Oct. 22, 1993; 61 FR 
56448, Nov. 1, 1996; 62 FR 53206, Oct. 10, 1997; 65 FR 54683, Sept. 8, 
2000]