THE DUTY OF CONFIDENTIALITY SHALL BE PRESERVED IN PATENT PROSECUTION TO FOSTER A MORE EFFECTIVE AND EFFICIENT PATENT SYSTEM

During prosecution, patent attorneys must follow the Patent and Trademark Office (“PTO”) Code of Professional Responsibility (“the PTO Rules”), which governs practice in front of the PTO; and the state’s professional rules, which governs any attorney licensed to practice law within that state, and would also include attorneys practicing all forms of patent law, including patent prosecution. Therefore, during patent prosecution, patent attorneys confront a mixture of federal and state ethical principles.A conflict arises in the following fact scenario, which will be discussed throughout this thesis: Patent Attorney is representing Clients A and B in close industries, and realizes that one piece of non-material but confidential information from Client A is material to Client B’s application. Should Patent Attorney disclose such information to the PTO under the duty of candor, or not disclose such information based on the duty of confidentiality under state professional rule? That is, which rules prevails in the patent prosecution setting? This thesis articulates that to ensure the efficiency of the patent prosecution system, and that the ultimately issued patents meet the requirements of novelty and non-obviousness, without the threat of hidden prior art, duty of confidentiality shall supersede the duty of candor.Part I of the thesis introduces the patent prosecution system, the duty of candor, and the duty of confidentiality under the PTO Rules. Part II discusses state professional rules, and case laws regarding whether attorney-client privilege applies to patent prosecution. Part III provides arguments that the policies behind preserving client confidentiality, the preemptive scope of the duty of candor, the vested interest of states to enforce legal professional rules to protect the interest of clients, and the lack of conflict with patent principles mandates a conclusion that enforcement of state privilege/confidentiality rules is not preempted by federal patent law. Last,Part IV discusses how the practicing attorneys in the real world address this issue. The avenues available shows that there is no perfect resolution, and oftentimes attorneys have to make a business, rather than a legal, decision.