Sent: Tuesday, February 03, 2004 1:36 PM
'o: ethicsrules comments
Please find enclosed my comments in response to the Notice of proposed rulemaking, dated December 12, 2003, concerning "Changes to Representation of Others before the United States Patent and Trademark Office.".
February 3, 2004
Sent by e-mail to: firstname.lastname@example.org
Director of Enrollment and Discipline
Office of Enrollment and Discipline
RE: Comments on Proposed Ethics Rules
I am writing pursuant to the Notice of proposed rulemaking concerning "Changes to Representation of Others before the United States Patent and Trademark Office."
I wish to comment on the rules relating to the registration of resident and non-resident aliens -- in particular, aliens who are Canadian citizens -- in patent cases. As discussed below, I am of the view that the proposed 37 CFR 11.6 (a) and (b), which do not substantially deviate from the corresponding rules currently in force, are (i) inconsistent with the commitments of the United States under the North American Free Trade Agreement and (ii) unfairly arbitrary to the extent they continue to allow certain individuals with restrictions on their ability to practise to be registered, while denying registration to others.
As a result, I suggest that:
1. Canadian citizens should be entitled to registration under the proposed 37 CFR 11.6(a) or (b) in the same manner as United States citizens.
2. Any non-immigrant alien resident in the United States who has passed the USPTO's registration examination should be registered and remain registered under 37 CFR 11.6(a) or (b) for at least as long as he or she remains resident in the United States.
I am additionally of the view that the USPTO and applicants (both inside and outside the United States) would be much better served if the OED was more concerned with ensuring the competency of those individuals registered to practice in patent cases. In that regard I further suggest that the proposed rules be modified so that:
3. Any individual registered under the proposed 37 CFR 11.6(c) is required to pass the USPTO's registration examination.
4. An apprenticeship or period of work, under the supervision of a registered agent/attorney, should be required before individuals are permitted to write the USPTO's registration examination.
SUGGESTION 1: Canadian citizens' should be entitled to registration under 37 CFR 11.6(a) or (b) in the same manner as United States citizens.
The citizenship and permanent residency requirements in the proposed of 37 CFR 11.6(a) and (b) are contrary and inconsistent with the obligations and commitments of the United States under the North American Free Trade Agreement (NAFTA) between the United States, Canada, and Mexico.
' The same suggestion can be made for citizens of Mexico.
Chapter twelve of NAFTA relates to the Cross-Border Trade in Services and includes the following articles:
Article 1202: National Treatment 1. Each Party shall accord to service providers of another Party treatment no less favorable than that it accords, in like circumstances, to its own service providers. 2. The treatment accorded by a Party under paragraph 1 means, with respect to a state or province, treatment no less favorable than the most favorable treatment accorded, in like circumstances, by that state or province to service providers of the Party of which it forms a part.
Article 1203: Most-Favored-Nation Treatment Each Party shall accord to service providers of another Party treatment no less favorable than that it accords, in like circumstances, to service providers of any other Party or of a non-Party.
Article 1205: Local Presence No Party may require a service provider of another Party to establish or maintain a representative office or any form of enterprise, or to be resident, in its territory as a condition for the cross-border provision of a service.
Article 1206: Reservations 1. Articles 1202, 1203 and 1205 do not apply to: (a) any existing non-conforming measure that is maintained by (i) a Party at the federal level, as set out in its Schedule to Annex I, (ii) a state or province, for two years after the date of entry into force of this Agreement, and thereafter as set out by a Party in its Schedule to Annex I in accordance with paragraph 2, or (iii) a local government;
Pursuant to Article 1206, when NAFTA was concluded, the licensing of patent attorneys and patent agents before the USPTO was specifically listed in the United States' Schedule to Annex 1, "Reservations for Existing Measures and Liberalization:" However, the United States' Schedule to Annex 1 further includes the following commitment with respect to that reservation: "Citizenship and permanent residency requirements are subject to removal within two years of the date of entry into force of this Agreement in accordance with Article 1210(3)."
Since NAFTA came into force in January 1994, adherence by the United States to its commitment to remove the citizenship and permanent residency requirements in relation to the licensing of patent attorneys and patent agents before the USPTO is clearly well overdue.
While, under the proposed 37 CFR 11.6(c), registered Canadian patent agents would continue to be eligible for registration before the USPTO, such registration places significant restrictions on individuals who are so registered, notably the inability to represent applicants who are not located in Canada and the requirement that the registered individuals themselves remain resident in Canada. No such restrictions are placed on United States citizens and permanent residents registered under the proposed 37 CFR 11.6(a) and (b). This clearly violates Articles 1202, 1203, and 1205 of NAFTA.
SUGGESTION 2: Any non-immigrant alien who is resident in the United States and who has passed the USPTO registration exam should be eligible to be registered and remain registered under 37 CFR 11.6(a) or (b) for as long as he or she remains resident in the United States.
The proposed rules would provide clearer authority for the USPTO's existing policy of granting only limited recognition to non-immigrant aliens who successfully complete the USPTO's registration exam and otherwise meet the requirements for registration. A recent Final Decision of the Director of the OED outlined the USPTO's position in such cases. 2 As reflected in that decision (and to a lesser extent in the Notice of proposed rulemaking), the OED's principal arguments behind the existing policy and proposed rules are that:
-full recognition under the proposed 11.6(a) or (b) would provide a non-immigrant alien with USPTO approval of work that the alien could not lawfully carry out under the alien's authorization granted by the United States Citizenship and Immigration Services (USCIS);
-the fact that such an alien's visa or work authorization contains restrictions, and that the USCIS may take action against the alien, does not mean that the USPTO should not consider such work restrictions in deciding whether to grant recognition
-in granting recognition, the OED Director does not look for guarantees from other sources that the work the non?immigrant alien will do before the USPTO is proper; the OED Director must assure that the terms of the recognition itself provide the guarantee;
The question must still be asked: Why does the OED see the need to police the immigration status of a professionally competent non?immigrant alien who has passed the bar exam? The OED's function should be to ensure that people are professionally competent to represent others before the office. Verifying and assessing a person's immigration status is beyond the mandate and competency of OED officials, and the time and effort expended for that purpose are clearly a waste of USPTO resources.
As summarized above, the office's reason for denying registration to professionally competent, non?immigrant aliens is based on the ground that such an individual cannot carry out the same scope of services to the public as other registered practitioners who are U.S. citizens (or U.S. green card holders). But this is also the case for individuals registered under the existing 37 CFR 10.6(c) or the proposed 37 CFR 11.6(c). Such individuals, who are permitted to hold themselves out as registered practitioners, can only represent applicants located in their home country. The OED does not "police" aliens registered under 37 CFR 10.6(c), to make sure that they only represent applicants located in their home country. Rather, the OED relies on those registered alien practitioners to police their own behaviour by ensuring themselves that they only represent such applicants. Why is it appropriate to register such individuals in this instance, when such a significant limitation is placed on their ability to practise?
In the same vein, the USPTO does not police the restrictions under § 10.10 on registered practitioners who have served in the patent examining corps of the Office. Instead, such individuals are required to sign a written undertaking in which they agree to abide by those restrictions. Moreover, a practitioner who is an employee of the Office cannot prosecute or aid in any manner in the prosecution of any patent application before the Office. Yet, such an individual can still be registered to practice in patent cases.
z In re [ ], May 9, 2003 (available at http://www.uspto.gov/web/offices/com/sol/foia/oed/legal/legal l l.pdf)
Nor does the OED make any attempt to ensure that a registered practitioner who is a U.S. citizen, but who resides and practices in a foreign country, is in fact authorized by the immigration authorities of that foreign country to carry out such a practice. Are not the same concerns relied upon by OED in denying registration to non?immigrant aliens also present in such a situation?
Similarly, while the proposed rules would create a new inactive status for registered practitioners, inactive practitioners would not be removed from the register itself, allowing inactive practitioners to maintain a recognized professional association with the USPTO.
Furthermore, insofar as representation before the Office in trademark cases is concerned, both the current and proposed rules allow any attorney who is licensed before a U.S. state to represent a trademark applicant before the USPTO. This is so regardless of the attorney's citizenship, residence, or immigration status. Why are these factors so relevant to representation in patent cases, but irrelevant to representation in trademark cases?
In short, it is clear that the rationale used to justify the Office's refusal to register nonimmigrant aliens has been, and under the proposed rules would continue to be, arbitrarily and capriciously applied. Either all practitioners with restrictions on their ability to practice should be given a form of limited recognition consistent with those restrictions, or, more sensibly, all professionally competent practitioners should be registered under 11.6(a) and (b) and expected to respect the restrictions and limitations otherwise imposed upon them. Such fair and equal treatment for all professionally competent individuals seeking recognition to practice is well overdue. Registered practitioners are professionals who can and should be held to a high ethical standard (regardless of their citizenship or immigration status). As such, these individuals can be expected to abide by any relevant restriction placed on their ability to practise.
I therefore believe that the proposed rules should be revised to adopt a consistent, sensible approach toward representation before the USPTO, in both patent or trademark cases. In particular, I submit that any non-immigrant alien who is resident in the United States and who has passed the USPTO registration exam should be eligible to be registered and remain registered under 37 CFR 11.6(a) or (b) for at least as long as he or she remains resident in the United States.
SUGGESTION 3: Any individual registered under the proposed 37 CFR 11.6(c) should be required to pass the USPTO's registration examination.
The proposed 37 CFR 11.6(c)3 would continue to fail to ensure that all registered individuals are fully competent to act in patent matters before the USPTO, since there is no requirement that an individual be familiar with the USPTO's rules of practice in patent cases to be registered under this sub-section. In many material respects, practice before the USPTO is considerably different from practice before the Canadian Patent Office (and other patent offices). Both the USPTO and applicants would be much better served if individuals registered under 37 CFR 11.6(c) were required to meet the same professional competence standards (i.e., pass the same examination) as individuals registered under 37 CFR 11.6(a) and (b).4
' This sub-section currently only applies to those registered before the Canadian Patent Office. ' Of course, if the proposed 37 CFR I 1.6(a) and (b) are amended, pursuant to Suggestion 1 above, to entitle Canadian citizens to registration under 37 CFR 11.6(a) or (b) in the same manner as United States citizens, this suggestion would become moot insofar as Canada is concerned. However, should individuals registered before the patent office of any other country become eligible for registration
Ironically, proposed rule 37 CFR 11.2 relating to continuing education would apply to individuals registered under 37 CFR 11.6(c). Professional competency should also be assessed prior to registering such individuals in the first place.
Thus, I further propose that any individuals entitled to registration under 37 CFR 11.6(c) be required to pass the same examination as individuals registered under 37 CFR 11.6(a) and (b),s
SUGGESTION 4: An apprenticeship or work period requirement should be established before individuals are permitted to sit for the USPTO's registration examination.
As a final suggestion, I propose that, prior to allowing an individual to sit for the USPTO's registration examination, he or she should be required to complete a minimum period of apprenticeship or work involving the preparation and prosecution of patent applications before the USPTO. This should be under the supervision of one or more registered practitioners, and only individuals registered for at least a certain number of years should be deemed competent to provide such supervisions. Compliance with this requirement could be easily verified by requiring a written declaration from the candidate and a registered practitioner supervisor.
Such a framework for preparing new practitioners for the patent profession is effectively used in many other jurisdictions and helps ensure that new practitioners will have relevant experience preparing and prosecuting applications before they are able to hold themselves out to the public as being professionally qualified to provide such services. Registration before the UPSTO is a professional license and not an academic degree, yet many individuals can clearly pass the examination having never been involved in the preparation nor prosecution of a single application. Unleashing newly registered patent agents/attorneys who have no such experience on the public is detrimental to that public and the profession generally.
As the evolution of the format of the registration examination clearly illustrates, it is impractical (if not impossible) to try to test for a full range of professional competency by way of examination. Instead, requiring some form of apprenticeship or work period is a practical and effective method of ensuring the professional competence of newly admitted practitioners.
I sincerely hope these comments will result in the OED giving further consideration to the proposed rules.
Jehangir Choksi (Reg. No. 51,378)
under 37 CFR 11.6(c) in the future, I submit that a requirement to pass the registration examination would still be appropriate.
5 The new computer-based administration of the registration examination would also facilitate such a requirement as the administration and timing of the examination would become more flexible.