Ethical Considerations in Reissues and Reexaminations

Gerald M. Murphy, Jr.

An attorney prosecuting a reissue patent application or a
reexamination of a patent may have duties and professional
obligations to various different persons including clients,
administrative agencies (including the United States Patent and
Trademark Office (PTO)) and in some cases adjudicative bodies
(courts, International Trade Commission, etc.) when there is
related litigation. These duties and obligations derive from various
sources such as the PTO (PTO Code of Professional Responsibility
and Disciplinary Rules; 37 CFR § 10.20 et seq), any local
Disciplinary Rules (which in many cases parallel the ABA Model
Rules of Professional Conduct (MRPC)
(http://www.abanet.org/cpr/mrpc/mcpr.pdf), case law, and personal
moral considerations. These duties and obligations sometimes
appear to be in conflict with each other. A few of these duties and
professional obligations are mentioned briefly below and will be
referenced in this paper.

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