Legal Ethics Opinion #1520

Appearance of Impropriety - Public Lawyer: Patent Attorney/Former
Patent Examiner Serving As Expert Witness

You have presented a hypothetical situation in which an attorney,
as a supervisory patent examiner in the U.S. Patent and Trademark
Office, signed a restriction requirement (after reading it) in an
application for a patent prepared by an assistant examiner.  No
prior art was cited or searched and no rejection was made. 

You indicate that the application was then expressly abandoned in
favor of a continuation-in-part application with identical
claims. The attorney/supervisory patent examiner signed a letter
acknowledging the express abandonment.  An identical restriction
requirement was made in the second application, which the
attorney/supervisory patent examiner signed. 

Thereafter, the attorney/supervisory patent examiner never
handled the application.  The patent was eventually issued by the
patent examiner after he achieved primary examiner status.  As
compared to  those initially filed, the claims contained in the
issued patent were very narrow.

You indicate that twenty years later while in private practice,
the attorney/former supervisory patent examiner was retained as a 
potential expert witness by a defendant in litigation filed by
the patentee plaintiff.  The attorney's deposition was taken, but
the case was settled before trial.  You indicate that the
attorney's testimony at trial would have related to patentability
issues not before the examiner, such as fraud on the Patent
Office and public use by the inventor in violation of the patent
You have asked the committee to opine whether, under the facts of
the inquiry, the attorney/former supervisory patent examiner had
"substantial responsibility" in the "matter" before the patent
office, so as to preclude his employment, under DR 9-101(B), as
an expert witness for the defendant in litigation.

As you noted, the appropriate and controlling Disciplinary Rule
related to your inquiry is DR 9-101(B), which states that a
lawyer shall not accept private employment in a matter in which
he had substantial responsibility while he was a public employee. 

Since the attorney was retained as a potential expert witness,
and the attorney-client relationship may not have been created,
the committee opines that the Code of Professional Responsibility
may be inapplicable to the situation.  The Code does not preclude
an individual from serving as an expert witness in an action. SeeLEO #1184.

As to the construction of "matter" under DR 9-101(B), the
committee has previously opined that the term is broad enough to
encompass rule-making.  See LEO #1299.  In the facts you provide,
the committee opines that a supervisory patent examiner's duties,
in conducting a review of applications prepared by an assistant
examiner, are included within the definition of "matter".

Under the specific facts of your inquiry, however, the committee
is of the opinion that the attorney/former supervisory patent
examiner's substantial responsibility in the matter of the patent
application ended when he signed the restriction requirement in
the second application, which contained much broader claims than
the patent which was eventually issued by the primary examiner. 
Thus, under the facts provided, it is the opinion of the
committee that it would not be improper for the attorney to
accept employment, as an expert witness, by a private
party/defendant regarding patentability issues which had not been
before the examiner during his earlier employment, provided that
the testimony would not relate to issues on the application(s) on
which the attorney/former supervisory patent examiner had worked
and for which he had substantial responsibility. 

Committee Opinion
April 12, 1993