Edward Jorgenson
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.
After reviewing the proposed rules I am shocked at the
PTO’s misguided attempt to intrude on the attorney
client relationship. The proposed rules totally disregard
existing regulations and precedent which have provided
stability to the practice of law in the Intellectual property
field.
Furthermore, it appears that the proposed rules are an
attempt to to solve a relatively insignificant problem that
the existing rules deal with quite adequately. How many
serious proceedings occur on an annual basis? It is my
understanding that the very few serious infractions occur on
an annual basis.
It is also my understanding that to date, the Office of
Enrollment and Discipline has done an excellent job
regulating agents and attorneys practitioners within the
framework of the existing rules. If a few problem areas
exist, these areas should be addressed, but not with a
confusing plethora of ambiguous, intrusive and in some cases,
constitiutionally questionable new rules that attempt to
expand the authority of the PTO beyond its statutory mandate.
Proposed Rules 11.106 through 11.110 regarding
Confidentiality of Client Information and Conflict of
Interest are more onerous and require 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. Business conflicts
are not within the legitimate scope of the PTO authority.
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 littering, 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. The PTO should not seek to become a
inquistor and judge of of minor moral infractions. The
proposed draconian rule is not justified or justifiable.
Regarding proposed 11.3(d), PTO employees are not above the
law and should not be immune from disciplinary action.
Permitting PTO employees to breach the standards of ethical
conduct to which private practitioners are subject serves no
valid purpose and could, conceivably encourage improper
behavior by PTO employees. Proposed Rule 11.3(d) should not
be adopted.
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. The rule is unfair, unnecessary and draconian.
The proposed rules also provide unlimited access to the
financial records of a firm to which an attorney or agent may
not even be entitled. The unlimited access is apparently at
the sole discretion of the OED, whether or not cause exists
for such intrusion. There is no justification for allowing
such unwarranted, unjustifiable intrusions into the business
practices of law firms, attorneys and agents. Proposed Rules
11.16 and 11.22(k) should not be adopted.
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 scrapped. Most, if not all state
bar associations require ongong CLE. Most if not all patent
attorneys meet these requirements with patent related
programs. Further, the OED is not in a position to decide
what CLE is appropriate for an attorney engaged primarily in
licensing or litigation. The requirements apprear to be an
invitation for favoritism. Those programs and instructors
favored by the decision makers in the OED will be approved.
Those out of favor will not be approved.
In summary, the proposed rules appear to heavy handed attempt
to solve a problem that does not exist, or can be dealt with
within the framework of the existing rules. Further, the
proposed rules leaves one with the impression that the OED
intends to become a investigator and judge of all purported
immoral activity by patent practitioners. This is not an
appropriate role for the PTO.
Time does not permit me to engage in a more extensive review
of the proposed rules. However, base upon the sections that I
have reviewed, my opinion is that the proposed rules should
be scrapped. Other practitioners with whom I have discussed
the proposed rules, feel the same.
Respectfully submitted,
Edward Jorgenson
Member
State Bar of Texas, Section of Intellectual Property
