David L. Fox, Ph.D.
-----Original Message-----
From: Fox, David [mailto:dfox@....]
Sent: Tuesday, June 01, 2004 3:55 PM
To: ethicsrules comments
Subject: 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)
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 Intellectual Property Section, 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,
David L. Fox, Ph.D.
Attorney At Law
Fulbright & Jaworski L.L.P.
1301 McKinney, Suite 5100
Houston, Texas 77010
Phone: 713-651-8231
Fax: 713-651-5246
email: dfox@....
Member
State Bar of Texas, Section of Intellectual Property
