Valarie J. Eissler
Valarie J. Eissler direct dial: (713) 960-7343
U.S. Patent & Trademark Office e-mail:veissler@....
Registration No. 51,648
May 28, 2004
Attn: Harry I. Moatz
Director of Enrollment and Discipline
Mail Stop OED- Ethics Rules
U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
RE: Notice of Proposed Rulemaking Changes to
Representation of Others Before the United States Patent and
Trademark Office; Proposed Rule 68 Fed. Reg. 69441 (December
12, 2003)
Dear Director Moatz:
In the Federal Register Notice dated December 12, 2003, the
U.S. Patent and Trademark Office ("PTO") requested public
comments regarding the above identified Notice of Proposed
Rulemaking. As a member of the State Bar of Texas, I am
expressing my concern with some of the proposed PTO rules,
including 11.104(a)(2), 11.106 through 11.110, 11.802-804,
11.8(d), and 11.13(g)(4). See Federal Register, Vol. 68, No.
239 dated Friday December 12, 2003.
First, proposed Rules 11.106 through 11.110, regarding
Confidentiality of Client Information and Conflict of
Interest, are more onerous and will require a practitioner
before the PTO to comply with a higher standard than that
imposed by the ABA Model Rules of Professional Conduct and
the Texas Disciplinary Rules of Professional Conduct. In
particular, unlike the Model Rules and Texas Rules which
require consent of a client following consultation, proposed
rules 11.106(a)(1) and 11.107 require a client to give
"informed consent in writing after full disclosure." The
proposed definition of "full disclosure," requires the
practitioner to give an explanation of the differing
interests involved in a transaction, the advantages of
seeking independent legal advice, and a detailed explanation
of the risks and disadvantages to the client entailed in any
agreement or arrangement, including not only any financial
losses that will or may foreseeably occur to the client, but
also any liabilities that will or may foreseeably accrue to
the client. This proposed PTO rule appears to codify
potential business conflicts into ethical conflicts. The PTO
states that this departure from the Model Rules is intended
to provide both the client and practitioner with certainty
regarding communication and a stronger record (Id. at 69464).
However, no justification is provided as to why practitioners
before the PTO need a stronger record or greater certainty
regarding communication. The extra burden and increased cost
of client representation such proposed rules would have on
the practitioner on a daily basis far outweigh the benefit of
adopting rules stricter than the Model Rules. It is
respectfully recommended that the more stringent requirement
of the "written consent after full disclosure" provision be
reevaluated and that the PTO adopt the ABA Model Rules
relating thereto.
Also, Proposed Rule 11.104(a)(2) regarding communications
with intermediaries of foreign clients is impractical,
unnecessary and should be deleted from the proposed rules.
This Proposed Rule appears to require practitioners
representing a foreign client through a foreign patent agent
or associate to obtain written consent from the client to
conduct communications through the foreign firm. While the
ultimate client is not the foreign patent agent or associate,
in most cases the ultimate client relies on the foreign
patent agent or associate to choose a practitioner who is
registered to practice before the PTO. Communications from
the PTO practitioner to the ultimate client should flow
through the foreign agent or associate as a matter of course.
This Proposed Rule is impractical and unnecessary.
In addition, Proposed Rule 11.803(d)(1) contains a
requirement for mandatory self-reporting within ten days by a
practitioner who is found guilty or pleads no contest to
apparently any criminal charge other than traffic violations
that do not involve alcohol. Although the word "Crime" is
defined in Proposed Rule 11.1 to include only felonies, Rule
11.802(d)(a) on its face contains an enigmatic exception for
certain misdemeanor crimes, indicating that the
self-reporting rule would encompass crimes less serious than
felonies. It may be a laudatory goal for the PTO to eliminate
from the practice persons convicted of serious thefts or
crimes of violence, but it is difficult to see the need for
the PTO to gather information about matters such as pleas of
no contest or convictions for such "crimes" as fishing
without a license or even driving while intoxicated, or to
make it a rule violation if one fails to self-report such
matters to the PTO. Moreover, this proposed rule has no
analog in the current PTO rules, the Model Rules or the Texas
Rules. Instead, it is apparently an overzealous attempt to
monitor all moral infractions by practitioners, no matter how
tenuous the relationship to patent office practice, and to
create a trap for the unwary practitioner who likely would
not realize the need to report these matters to the PTO
because state bar rules do not require it. Such a draconian
rule is not justified.
Further, Proposed Rule 11.804(h)(9) is unnecessarily harsh
and should be modified or deleted. This Rule provides that
the failure to report a change of address within 30 days is
professional misconduct. This is simply unfair and
unnecessary. Equally unjustified is the proposed rule
requiring a $100 annual fee. See Proposed Rule 11.8(d). This
is in effect yet another tax that does not tie the source of
the funds with the expenditures for which the fee is
purportedly gathered. The PTO has attempted to justify this
proposed fee by claiming it would cover the costs of the
disciplinary system and be used to maintain the roster of
practitioners. However, it is well known that the PTO does
not have control over the use of funds it receives, and the
assurances to the contrary in the Federal Register are not
binding. This proposed fee would simply add more money to
that which can be diverted elsewhere. Consequently, there is
no justification for the proposed fee.
Finally, the proposed rule regarding continuing education
(CLE) requirements should be modified to permit a law firm or
corporate law department to become an approved sponsor of
continuing education programs to satisfy the CLE requirement.
See Proposed Rule 11.13(g)(4). There is no justification for
preventing a law firm or a corporate law department from
seeking approval and delivering CLE programs to their
employees to satisfy the proposed CLE requirement. The State
Bar of Texas and many other bars around the country allow and
even encourage such "in-house" CLE programs, subject to bar
approval for content. Such a modification of the proposed
rule to allow in house programs is warranted for the
convenience of practitioners and their employers.
Respectfully submitted,
Valarie J. Eissler
VJE/se
517189.1 /990999
Attn: Harry I. Moatz
Director of Enrollment and Discipline
Mail Stop OED-Ethics Rules
U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
