Lynn J. Alstadt
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Sent: Friday, January 16, 2004 8:15 PM
To: ethicsrules comments
Subject: Comments of Lynn J. Alstadt
I write to comment on the proposed rules published in the Federal Register on December 12, 2003. I am a registered patent attorney and shareholder in the Pittsburgh office of Buchanan Ingersoll, P.C. I am an adjunct professor at the University of Pittsburgh School of Law and Duquesne University School of Law where I teach a course in Patent Law Practice. This course teaches claim drafting, requires students to draft responses to Office Actions and covers the material that is on the Patent Bar Exam.
I am familiar with the Patent Bar Exams that have been given from 1973 through 2003. I have used questions from these exams in my course.
. Proposed Rule 11.7(b)(4) says that the OED Director
shall administer a registration examination to
determine whether the individual possesses the legal, scientific and technical qualifications to enable
him or her to render applicants valuable service. The Office proposes to fulfill this objective through a
frequently administered computer-based examination using a slate of questions randomly selected from
a large data bank of questions, and answers that will be publicly available. During the past thirty years
the Patent Bar Exam has contained some questions that had been in past exams and some new
questions. Only the questions from past exams were publicly available. However, most new questions
were similar in content or addressed the same topics as questions in previous exams. The use of new
questions in each exam assured that the person who passed the exam had not merely memorized the
answers to a body of questions.
The Office now proposes to make publicly available all questions that will be on the exam. Since all questions will be multiple choice, it is now possible for someone to simply memorize the questions and answers. A test for which one can memorize the questions and answers does not measure the person's legal and technical competence. Past patent bar exams have included several questions on Sections 102, 103 and 112 of the patent statute. Since everyone who practices before the Office should be familiar with these provisions of the law, the Office properly included questions in this area on every exam. I fear that a randomly generated set of exam questions may omit questions on these key sections of the patent laws. The exam should be structured so that questions involving Sections 102, 103 and 112 are on every exam.
Another troubling development that I have observed concerns the type of questions asked. During much of the history of the exam the person taking the exam was presented an invention disclosure and the text of a patent or technical publication. The disclosure and the prior art included at least one drawing. The exams given in recent years have not contained any prior art patent or technical publication. None of the questions in the past two exams have contained any drawings. To be able to render competent assistance to applicants for patents a person must be able to read and understand simple drawings, patents and technical publications. The decision to eliminate these from the exams should be reconsidered. I submit that such an exam does not fulfill the OED Director's responsibility under §11.7 (a)(4). At the very least there should be two or more questions that contain drawings in every exam. I have heard a representative of the Office say that the Office is required by the Americans with Disabilities Act (ADA) to provide an exam without drawings. However, my understanding of the act, and advice that I have received from those practice labor law, is that the ADA does not require an exam
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without drawings. That is true because the ability to read drawings is necessary to competently represent inventors in patent application and prosecution matters. If the Office intends to continue the practice of offering exams without drawings they should explain how and why such an exam fulfills § 11.7(a)(4).
Several provisions of the proposed rules relate to representation of invention promoters and inventors through invention promoters. I was very pleased to see these provisions and encourage their adoption.
The proposed rules implement a mandatory continuing education program. I do not object to the program. However, the rules should require that Office and any third party who offers such a program to provide a certificate of completion of a course immediately after the course has been successfully completed. Since courses will be offered over the internet the potential for transmission errors will always exist. It would be very easy for a person to believe that he or she has successfully completed a course, but that completion does not get communicated to the Office. Written proof of completion will enable the practitioner to correct such a mistake, should it occur. Moreover, some states require attorneys to maintain written records of continuing education courses to satisfy state CLE requirements.
Thank you for the opportunity to comment on the proposed rules.
Lynn J. Alstadt
Buchanan Ingersoll P. C.
301 Grant Street
Pittsburgh, Pennsylvania 15219-1410
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