James J. Drew
Sent: Monday, February 09, 2004 9:45 AM
Subject: Comment on Draft Ethics Rule
James J. Drew
77 Sun Valley Road
Toms River, NJ 08755
Mr. Harry I. Moatz
Director of Enrollment and Discipline
U.S. Patent and Trademark Office February 9, 2004
Dear Mr. Moatz:
These comments are submitted on the proposed rules, particularly proposed rule 11.8(d), set out in the Notice of Proposed Rulemaking published by the PTO in the Federal Register on December 12, 2003, 68 Fed. Reg. 69441- 69562.
The PTO has not adequately established the statutory basis for the imposition of the proposed registration fee. Clearly, neither 35 U.S.C. 2(b)(2)(D), nor 35 U.S.C. 32, nor 35 U.S.C. 41, nor 35 U.S.C. 42 provides for such a fee, so I assume that you are relying on the Independent Offices Appropriation Act of 1952, 65 Stat. 290 (1951), now at 31 U.S.C. 9701, as implemented by OMB Circular A-25 "User Charges." If this is so, there is no support for the arbitrary amount of $100 per year for each registered patent attorney. The fee asserted to be necessary is allocated to the same monitoring activities that each ( tate bar has assumed, and which each licensed attorney in that state must support with his or her annual assessment. Note that this assessment is made by the various state bars, and not by a federal agency that is restricted in when, and how, and for what purposes it may assess fees to the public. The only supportable costs incurred by the PTO are those minimal costs associated with placing the attorney's name on a list and making that list available to the public.
The PTO has taken the position that it must insure that registered patent attorneys have sufficient expertise in science and technology to adequately serve his or her clients. But there is no justifiable need to replicate the oversight exercised by state bars over the patent attorney's ethical behavior. No other federal agency requires such additional attorney supervision. See 5 U.S.C. 500(b). Reliance on 35 U.S.C 32, which provides for the assignment of a PTO attorney to hear allegations of patent attorney misconduct, does not support an assessment of a uniform fee on all registered practitioners.
Finally, it is unreasonable to assess such an annual registration fee on those patent attorneys that are Government employees and whose only permitted client is the agency that employs them. I understand that the PTO is taking the position that a reduced fee for Government patent attorneys is unfair to the other registered attorneys. Quite the contrary is true. On to which client is such an attorney able to pass this cost? In effect, the Government (the PTO) is charging the Government employee (the patent counsel) for the privilege of representing the Government (the employing agency). This is not just. Further, if the PTO expects the represented agency to pay the practitioner's fee, in addition to the fees charged for the patenting process itself, it is abusing its discretion in forcing such an interagency transfer of funds.
I object to the imposition of the registration fee on patent attorneys because there is no statutory basis established for the assessment and no rational support for the amount of the fee. Furthermore, the assessment of such a fee on Government patent counsel is an (..~njust burden on the Government employee, and if borne by the employing agency, it is an mproper mechanism to transfer federal funds from the employing agency to the PTO.
James J. Drew
Registration No. 30624
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