William P. Berridge
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Sent: Tuesday, February 10, 2004 4:41 PM
To: ethicsrules comments
Subject: Proposed Rulemaking: Changes to Representation of Others
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Oliff & Berridge, PLC
277 S. Washington Street, Suite 500
Alexandria, VA 22314
Attn: Mr. Harry I. Moatz
Mail Stop OED-Ethics Rules
U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, Virginia 22313-1450
Re: Comments on Notice of Proposed Rulemaking: Changes to
Representation of Others Before the
United States Patent and Trademark Office
Please consider the following comments relating to the notice of proposed rulemaking referenced above.
1. Regarding proposed Rule 11.5(b)(1), practice before the Office unnecessarily includes: "participating in drafting the specification or claims of a patent application; participation [sic] in drafting an amendment or reply to a communication from the Office that may require written argument to establish the patentability of a claimed invention; participating in drafting a reply to a communication from the Office regarding a patent application, [sic] and participating in the drafting of a communication for a public use, interference, or reexamination proceeding" (Fed. Reg. 68(239): 69517 (Dec. 12, 2003)). The commentary indicates that the definition of "practice before the Office" was modeled after the definition of "practice" adopted by the Internal Revenue Service.
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The inclusion of participating in drafting specifications and claims, replies to Office communications, and communications for public use, interference, or reexamination in the definition of "practice before the Office" is overreaching and unduly exclusionary. The definition of "practice before the Office" appears to require that anyone who has any input into the drafting of a specification, claim, amendment, response, or other communication to the Office must be registered to practice before the Office. Clearly, such a requirement is not realistic or logical considering that inventors, technical experts, business advisors, general attorneys, paralegals, secretaries, and clerks, among others, often must provide input as an essential part of drafting accurate specifications and claims, as well as accurate and persuasive amendments, responses, or other communications to the Office.
Moreover, numerous patent applicants are foreign and base their patent applications filed in the United States on foreign-filed applications which they and/or their own (foreign) patent attorney or agent prepared. The foreign inventor has to have the opportunity to work with a local entity that helps him or her prepare a patent application. Often, the registered United States attorney or agent is provided with a completed application that may be the same as or a modification of a foreign application or otherwise prepared with the assistance of a foreign attorney or agent. When filing the application and thereafter, the registered U.S. attorney or agent is, of course, involved in the prosecution of the application before the Office, but often so is the foreign applicant and his or her foreign counsel, whose input in amendments and responses to Office communications is vital for effective prosecution, as noted above. Obviously, U.S. inventors are often in the same position when filing abroad. Thus adoption of the proposed rule in the United States, or counterpart rules in other countries, would disrupt an entire realm of international commerce.
Finally, reliance on the definition of "practice" adopted by the IRS is not logical. Patent law, just as tax law, is a distinctive entity. "Practice" before one agency in no way correlates to "practice" before the other agency.
2. Regarding proposed Rules 11.6(a) and 11.6(b), it is respectfully submitted that the rigid requirements for the registration of alien attorneys and agents, respectively, are overly burdensome, particularly, for alien attorneys and agents who currently possess visas, or are in the process of obtaining visas, that would allow them to practice before the Office under current Rule 10.6, but not under proposed Rule 11.6.
The requirement that the visa specifically recite authorization to be employed in the capacity of representing patent applicants before the Office is simply unnecessary. Currently, a resident alien cannot practice before the Office if such practice is not consistent with the terms of the visa. The current requirement already protects patent applicants and the Office from unlawful representation by an alien attorney or agent. The proposed rule fails to improve the current process.
At the very least, the following groups of alien attorneys and agents should be exempt from the provisions of proposed Rules 11.6(a) and 11.6(b), respectively: (1) aliens who have visas acceptable for practice before the Office under current Rule 10.6, whether or not they have yet entered the United States, and (2) aliens in the midst of the visa application process for practice before the Office acceptable under current Rule 10.6. As the Office is undoubtedly aware, obtaining a visa for entry into the United States is not a simple matter. Requiring aliens in groups (1) and (2) defined above to obtain new visas is unduly burdensome and impractical if the visas are sufficient under the current rule.
3. Regarding proposed Rule 11.7, specifically, proposed Rule 11.7(e), the provision that substantive review and regrading of registration examinations will no longer be permitted prevents the registration applicant from receiving due process and could be punitive. What if a question on the examination is incorrectly graded? The applicant that answered that question correctly could possibly
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fail the examination as a result, yet have no means by which to appeal the decision.
The commentary indicates that the reason for proposed Rule 11.7(e) is to eliminate individualized regrading of examinations since, inter alia, such individualized attention "can promote the occurrence of arbitrary and capricious decisions" (Fed. Reg. 68(239): 69447 (Dec. 12, 2003)). If the examination was in a format other than multiple choice, then there would be a possibility of "arbitrary and capricious" regrading since the unsuccessful applicant's chance of passing the examination would depend upon the opinion of the regrading official. However, the examination is, and will continue to be, multiple choice; therefore, the opinion of any one regrading official has no bearing on the outcome of the examination regrade. For example, if the official answer to a question is "a" and it is later determined, when an unsuccessful applicant successfully argues that "a" is incorrect, that the correct answer is "b," then the regrading official changes the acceptable answer. All unsuccessful applicants would receive the same treatment; thus individualized attention is not an issue.
The commentary indicates that the availability of reexamination provides due process to the unsuccessful applicant. I respectfully disagree with this comment. If an unsuccessful applicant fails the examination due to an officially incorrect answer to one particular question, yet that applicant's answer was actually correct, then the unsuccessful applicant does not simply retake the examination again, and then take a different test, potentially again facing the same flawed question. Meanwhile, the applicant would be prohibited from gaining a living as a practitioner. This is an undue burden arising from the Office's proposed denial of due process.
4. Proposed Rule 113(h)(1) states that, "[a]n individual who has been convicted in a court of record of a felony, or a crime involving moral turpitude or breach of trust, including, but not limited to, a misdemeanor . . . is presumed not to be of good moral character in the absence of a pardon or a compelling showing of reform and rehabilitation" (Fed. Reg. 68(239): 69520 (Dec. 12, 2003)). Thus, proposed Rule 11.7(h)(1) includes a misdemeanor in the definition of "a crime." However, proposed Rule 11.1 defines a crime as "any offense declared to be a felony by Federal or State law, or an attempt, solicitation or conspiracy to commit the same" (Fed. Reg. 68(239): 69515 (Dec. 12, 2003)). Thus, proposed Rule 11.1 does not include a misdemeanor in the definition of "a crime." The rules should be consistent in defining repeated terms.
5. Regarding proposed Rule 11.8(b), the requirement that attorneys and agents must file a completed form to obtain the Office's authorization to use a digital signature as a prerequisite for registration before the Office is premature and unnecessary. The purpose for the digital signature is to facilitate electronic filing, however, electronic filing is, currently, not required. Since the Office accepts paper filings, it is not clear why a registration applicant must complete a form for a digital signature in order to be registered to practice before the Office. Moreover, it is not clear why a registration applicant must complete a form for a digital signature in order to be registered to practice before the Office, yet currently registered attorneys and agents have no such requirement.
As is the current practice for registered attorneys and agents, an attorney or agent undergoing the registration process can simply complete the authorization form for a digital signature when it is appropriate for that attorney or agent to do so.
6. Proposed Rule 11.9(b) states that, "[a]ny person admitted to the United States to be trained in patent law shall not be admitted to the registration examination or granted recognition until completion of that training" (Fed. Reg. 68(239): 69523 (Dec. 12, 2003)). Apparently, according to the commentary, the reason for this rule is that recognition to practice before the Office is not a training opportunity. It is appreciated that registration is not a "training opportunity" per se, however, training of alien attorneys and agents, just as training of attorneys and agents who are United States citizens, is on-going. When is 2/10/04
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training complete? It is assumed that attorneys and agents, both United States citizens and aliens, continue to learn and thus, train, so long as they are representing patent applicants before the Office. Indeed, they are to be required to continue their training perpetually under the proposed CLE requirements. Thus the proposed rule is fatally ambiguous and contradictory to the other proposed rules. A person who qualifies to be registered should be permitted to be registered, without requiring that the person thereafter be forced to stagnate in their learning of the practice.
7. Proposed Rules 11.10(b)(1) and 11.10(b)(2) appear to be directed to practice limitations applied to former patent examiners, but they are intertwined with commentary and ambiguous. Alternatives (i)-(iii) in parts (1) and (2) are incomprehensible - all communications to the Office are in some sense to the United States, and substantially all communications to the Office are in connection with a particular patent or patent application and a particular party. It is also difficult to ascertain when the commentary ends and when the rules begin. Thus, it is not clear from proposed Rules 11.10(b)(1) and 11.10(b)(2) when former patent examiners are permitted to practice before the Office. In view of the number of patent examiners that leave the Office to pursue a patent law career in a law firm or corporate law department, clarity of the intended limitations is vital.
To the extent that proposed Rule 11.10(b)(1) can be construed merely to require that former patent examiners cannot act as a representative or intend to bring influence, including "conduct occurring behind the scenes," in a "particular matter in which he or she personally and substantially participated as an employee of the Office," it is of appropriate scope, but merely ambiguous (Fed. Reg. 68(239): 69451 (Dec. 12, 2003)). To the extent that proposed Rule 11.10(b)(2) can be construed merely to require that former patent examiners cannot act as a representative or intend to bring influence, including "conduct occurring behind the scenes," for a period of two years, in a "particular matter for which the employee had official responsibility," it is of appropriate scope, but merely ambiguous (Fed. Reg. 68(239): 69451 (Dec. 12, 2003)). To the extent that the rules require additional limitations, there is no apparent reason why such additional limitations are necessary.
8. Proposed Rule 11.12(a) describes a proposed CLE requirement, but fails to set forth how many hours per year of CLE would be required. It is understood that the Office would prefer to require CLE "from time-to-time" every one to three years and in totally undefined quantities, but the CLE requirements in states (which the Office appears to be emulating) do not function in that manner. State bars that require CLE set forth a specific yearly requirement so that the attorneys are aware of what is required and can plan accordingly. The Office's approach to CLE appears to be based on the whim of the USPTO Director since the Director determines not only if CLE is required during any given fiscal year, but how much CLE is required and when CLE will be offered during that fiscal year.
According to the commentary, the Office plans to contact appropriate authorities in the forty states that currently require CLE in an effort to have the states accept the Office's CLE program as meeting the respective state CLE requirement. However, the procedure established by the states is a formal procedure, whereby a certain number of hours of CLE are necessary to satisfy the CLE requirement. If the Office is attempting to imitate state CLE requirements, then the Office's proposed informal approach to the CLE requirement is entirely inconsistent with the formal approach adopted by states. As with state CLE requirements, the licensed attorney should have an understanding of what is expected of that attorney to remain actively registered to practice before the Office.
9. Proposed Rule 11.13(g)(4) is without any apparent logical basis. The proposed rule defines "preapproved sponsor" by exclusion since law firms, professional corporations, and corporate law departments are not eligible to be "preapproved sponsors." Neither the proposed rule nor the commentary provides an explanation for the exclusion. Since the Office must approve of proposed CLE courses, there is no basis for excluding law firms, professional corporations, and corporate law
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departments. All preapproved sponsors would follow the same procedure for obtaining course approval and thus, the exclusion makes no sense.
Numerous law firms currently provide state required CLE. This practice is convenient for firms and attorneys, and it functions as a safeguard by ensuring that the attorneys have met the CLE requirement of the particular state bar. It also permits the CLE to be focused on issues that attorneys may face in their actual practice. Clearly, the ability of a law firm or corporate law department to provide CLE, with the protection that the CLE must be approved by the Office just as it must already be approved by the subject state bar, is practical, logical, and indispensable.
10. Proposed Rule 11.16 appears unnecessary and overreaching. The basis for providing the OED Director and staff with the authorization to examine an attorney's or agent's financial books and records maintained by or for the attorney or agent or the law firm for practice before the Office in proposed Rule 11.22(k) is understood since such examination may be necessary during the course of an investigation. On the other hand, the basis for such authorization in the absence of any safeguards or any investigation, or other reason for the intrusion into the confidential financial records of an attorney, agent, or law firm and their clients, potentially interfering with the clients' ability to preserve their attorney-client privilege, is not understood. The commentary fails to indicate the source of proposed Rule 11.16 and fails to provide any reason for the rule.
11. Proposed Rule 11.220) is overreaching. Contact by the Office to a non-complaining client could destroy a client-attorney/agent relationship even if the attorney or agent is found innocent of ethical misconduct. There is simply no reason to contact a non-complaining client. If the noncomplaining client had evidence of ethical misconduct, then it is highly unlikely that the client would (1) be a non-complaining client, and (2) be a client of the attorney or agent under investigation at all.
The commentary indicates that at least one basis for proposed Rule 11.220) is to protect noncomplaining clients that may be unknowingly victimized. The commentary further indicates that the proposed rule attempts to balance the competing interests of the Office in investigating alleged unethical behavior and of the attorney or agent. The "balance" tips heavily in favor of the Office, however. If, at the conclusion of the Office's investigation, an attorney or agent is found to have acted unethically, then it would understandable, but still unnecessary, for the Office to contact non-complaining clients. The risk of damage to the client-attorney/agent relationship for the "innocent" attorney or agent is simply too high.
12. Proposed Rules 11.58(e) and 11.58(f) provide for certain circumstances wherein an excluded or suspended practitioner (or a practitioner who has resigned) can assist another practitioner before the Office. The Office specifically requested comments regarding whether proposed Rules 11.58(e) and 11.58(f) should not be adopted and whether corresponding current Rules 10.158(c) and 10.158(d) should be deleted since such assistance is a form of continued practice before the Office which the proceeding rules ban.
In response, I would recommend that the Office adopt proposed Rules 11.58(e) and 11.58(f). The role that an excluded or suspended (or resigned) practitioner would play in assisting another practitioner before the Office would be very limited, as required by the Office and state bar, if applicable. In addition, the excluded or suspended (or resigned) practitioner would be under the supervision of the other practitioner as required in proposed Rule 11.58(e)(2), and safeguards to protect the client are in place in proposed Rule 11.58(e)(3). The excluded or suspended practitioner need not be further prohibited from making a living in the same way as other lay persons (who are not excluded from making such a living by having been convicted of crimes, etc.).
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13. On a clarification note:
a. In proposed Rule 11.3(b), provision 11.901 is cited, however the proposed rules end at Rule 11.806. Proposed Rules 11.807-11.900 are reserved. Is the recitation of "11.901" an error?
b. Proposed Rule 11.7(b) contains confusing numbering. It appears that Rule 11.7(b)(3) should be deleted in view of Rule 11.7(b)(1)(i)(C) or changed to Rule 11.7(b)(1)(ii); Rule 11.7(b)(4) should be Rule 11.7(b)(1)(iii); Rules 11.7(b)(4)(A)-(C) should be Rules 11.7(b)(1)(iii)(A)-(C); Rule 11.7 (b)(5) should be Rule 11.7(b)(1)(iii)(E); and Rule 11.7(b)(6) should be Rule 11.7(b)(1)(iii)(D). Is the numbering in proposed Rule 11.7(b) incorrect?
c. Proposed Rule 11.7(h) has a typographical error in the second to the last line before section (1) begins. The phrase "before an application for will be" should be corrected.
d. Regarding proposed Rule 11.58, despite the title, commentary, and reliance on current Rule 10.158 appearing to limit proposed Rule 11.58 to suspended and excluded practitioners, proposed Rule 11.58 is directed to suspended and excluded practitioners and practitioners who have resigned under "§§ 11.11(d)" (proposed Rule 11.58(a)). However, proposed Rule 11.11(d) pertains to voluntary inactivation. Resignation is under proposed Rule 11.11(e). Since two section symbols precede "11.11 (d)," was "11.11(e)" intended, too? However, further down in the proposed Rule 11.58(a) text (and throughout proposed Rule 11.58), only one section symbol precedes "11.11(d)" and proposed Rule 11.11(e) is never cited. Thus, the intended practitioners to whom proposed Rule 11.58 applies is not clear.
William P. Berridge
Registration No. 30,024
Oliff & Berridge, PLC