Opinion 96-12
(December 1996)
 
This opinion addresses the application of the amended Rule 8.5 of the Pennsylvania Rules of Professional Conduct.
 
Facts
 
The Inquirer is an attorney who, on behalf of a client, has submitted numerous applications for patents with the United States Patent and Trademark Office ("PTO"), before which the Inquirer is admitted to practice. In connection with a particular patent application, the client has informed the Inquirer of the existence of a prior reference that, to the Inquirer, appears relevant to the client's invention. But the client has stated his belief that because the reference is not directly relevant to the specific field of his invention, he does not want to disclose it to the PTO. The Inquirer remains concerned that the prior reference may, in fact, be material to the client's invention and should be disclosed. The Inquirer has not seen the reference and states that he has no way of finding the reference on his own. Thus, the Inquirer cannot be certain that the reference is material, although the Inquirer suspects that it is.
 
The Inquirer is aware that the PTO rules, which, he says, bind all attorneys practicing before the PTO, impose a duty of candor on an inventor and his attorney when a patent is being sought. See 37 C.F.R. § 1.56. According to the Inquirer, "if the inventor or his attorney learns of a prior art that would be 'material' to the deliberations of the Examiner, the information must be disclosed.1 The Inquirer is also aware of 37 C.F.R. § 10.85, which states:
 
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.
 
While the Inquirer does not believe that he has information "clearly establishing" that a "fraud" is being committed, he sent a certified letter to his client, explaining the duty of disclosure and strongly urging the client to disclose the reference to him. The client has not responded. The Inquirer asks (1) under what circumstances may he continue to represent the client and (2) whether he should or must mention anything to the PTO.
 
Discussion
 
This inquiry presents a choice of law question that is resolved by the amended Rule 8.5 of the Pennsylvania Rules of Professional Conduct. Rule 8.5 states that a lawyer admitted in the Commonwealth of Pennsylvania is subject to the disciplinary authority of the Commonwealth "regardless of where the lawyer's conduct occurs." Where the conduct occurs in another jurisdiction, Rule 8.5 specifies the law to be applied:
 
(b) Choice of Law. In any exercise of the disciplinary authority of this jurisdiction, the rules of professional conduct to be applied shall be as follows:
 
(1) for conduct in connection with a proceeding in a court or agency before which a lawyer has been admitted to practice (either generally or for purposes of that proceeding), the rules to be applied shall be the rules of the jurisdiction in which the court or agency sits, unless the rules of the court or agency provide otherwise.2
 
Here, even though the conduct in question is in connection with a proceeding in an agency (the PTO) before which the Inquirer has been admitted to practice, the Inquirer is subject to the disciplinary authority of the Commonwealth of Pennsylvania for any breaches of his ethical obligations under the PTO's rules.3 The Committee advises that, before proceeding further, the Inquirer ascertain his obligations under the PTO's rules and act accordingly.
 
Notes

1. The Inquirer explains further that if there is a prior art or reference revealing that the invention sought to be patented is not new, the PTO will reject the application for a new patent (or invalidate an existing patent).
2. Rule 8.5(b)(2) sets forth the choice of law rule where the attorney's conduct is not "in connection with a proceeding in a court or agency before which a lawyer has been admitted to practice (either generally or for the purposes of that proceeding)." This subsection of Rule 8.5 is inapplicable for the reasons described herein.
3. Rule 8.5 appears facially ambiguous as to whether the agency's rules, or the rules of the jurisdiction in which the agency sits, apply when the conduct occurs outside the Commonwealth. Rule 8.5 and its comments, however, make it clear that when the conduct is in connection with a proceeding in an agency, it is the agency's rules that apply. See Rule 8.5, comment.

   

The Philadelphia Bar Association's Professional Guidance Committee provides, upon request, advice for lawyers facing or anticipating facing ethical dilemmas. Advice is based on the consideration of the facts of the particular inquirer's situation and the Rules of Professional Conduct as promulgated by the Supreme Court of Pennsylvania. The Committee's opinions are advisory only and are based upon the facts set forth. The opinions are not binding upon the Disciplinary Board of the Supreme Court of Pennsylvania or any other Court. They carry only such weight as an appropriate reviewing authority may choose to give it.