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Robert M. Kunstadt

Moatz, Harry

From: mail@...
Sent: Friday, January 16, 2004 11:54 AM
To: ethicsrules comments
Cc: mail@...
Subject: Re: Comments on Ethics Rules Proposed December 12, 2003 (68 FR 69442)


date: January 15, 2004 our file: 1-024

e-mail to attn: Harry I. Moatz, Esq. ethicsrules.comments@uspto.gov


Re: Comments on Ethics Rules Proposed December 12, 2003 (68 FR 69442)


Dear Mr. Moatz,

Here is our comment on the captioned proposed rules. Could you kindly acknowledge receipt by return email- Thank you.

Regards,
Rob Kunstadt

Enc. follows (scroll down)


START OF COMMENTS

Re: Comments on Ethics Rules Proposed December 12, 2003 (68 FR 69442)


Dear Acting Director:


This constitutes the comments of R. Kunstadt, P.C. on the ethics rules proposed December 12, 2003 (68 FR 69442).


INTRODUCTION
R. Kunstadt, P.C. is an intellectual property firm located in New York, New York. We are active in filing trademarks on behalf of clients in the pharmaceutical, clothing, computer, beverage and other industries, in the United States and foreign countries. These comments represent the opinion of the firm and the undersigned, but are not presented on behalf of any clients of the firm.

COMMENTS
Regulations, unlike mountain climbing, do not find sufficient justification simply "because it's there". That other jurisdictions may have perceived a need to impose particular conduct and CLE regulations on practitioners there, is not sufficient reason for the PTO to do the same by blending a multiplicity of rules and standards drawn from many states and model codes into a new amalgam.
The long-standing notorious abuses in PTO practice are largely the work of
1

non-attorneys: invention promotion swindles and mass-mailings to patent and trademark owners peddling useless "Registers" and selling lists of later patents citing the mailing recipient's patent that are available from the PTO website for free. These are areas that the PTO might fruitfully address by targeted legislative proposals. Instead, the present proposed regulations deal with them only back-handedly by seeking to regulate the interactions of PTO practitioners with such non-attorneys.

For example, in an apparent effort to be consistent with the regulations for invention promoters, the proposed regulations (Sec. 11.104(a)2) require a written consent from a foreign client before a practitioner may take instructions from a foreign attorney or patent agent representing the foreign client. This is totally at odds with prevailing international standards and practices and will be viewed as offensive by foreign attorneys and agents, who have close relations with their local clients which should not be disrupted by U.S. attorneys "butting in". Such foreign attorneys regularly supervise their clients' IP matters in dozens or hundreds of foreign countries. It would be impractical if they needed to get client consents for each such country's practitioners. Indeed the trend in modern international IP practice is in the opposite direction: to reduce formalities such as powers of attorney, legalizations and the like.

That certain matrimonial attorneys may have taken sexual advantage of jilted spouses on the rebound, requiring State regulation, does not translate to patent and trademark practice. Absent evidence of a rash of sexual misconduct by PTO practitioners that could not otherwise be dealt with satisfactorily by the general law of sexual harassment and assault and battery, special intrusive regulation of private behaviour by PTO practitioners (proposed Sec. 11.806) is unwarranted. There is no showing in the proposed regulations that this or other evils that they may attempt to address, are not satisfactorily remedied by existing Federal and State law and State bar ethics regulations.

Similarly, that some States impose CLE requirements does not per se justify the proposed new PTO CLE system. The patent and trademark bar is a select group that has acted responsibly for 200 years without CLE regulations. Competitive market forces compel practitioners to "keep on top of their game", and the civil law damages penalties for IP malpractice are already severe.

The effect of an additional CLE bureaucracy ?? funded by a mandatory $100 annual fee per practitioner -- will be particularly harsh on part-time practitioners and small firms (which are small businesses whose needs should be taken into account by the PTO pursuant to rules of the Small Business Administration). The net effect will be to reduce the availability of patent and trademark legal services, as practitioners incrementally drop out of the market as providers; and so to increase the cost of legal services. Low and middle income clients will be increasingly deterred from employing practitioners and will be forced to act pro se. The net effect will be counterproductive to the overall level of expertise employed in patent and trademark prosecution; pro se applicants may be expected to have little understanding of the applicable procedural rules and ethical principles.

The PTO needs to consider that by pushing towards more pro se prosecution -whether as an unanticipated byproduct of these proposed new regulations or by its mandatory e-filing initiatives in general -- the PTO will be punishing itself by having to deal with an ever-growing percentage of unduly time-consuming, poorly-prepared pro se eases, a trend wasteful of PTO resources.

For the above reasons, we earnestly request reconsideration and revision of the Proposed Rules.


Respectfully submitted,


2


Robert M. Kunstadt
Managing Attorney

R. Kunstadt, P.C.
729 Seventh Avenue
New York, New York 10019
Ph: 212 398-8881
Fax: 212 398-2922
Email: mail@...


END OF COMMENTS


>>as always, reply only to mail@...

THIS MESSAGE IS CONFIDENTIAL AND MAY CONTAIN ATTORNEY PRIVILEGED INFORMATION INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR COMPANY NAMED ABOVE.

If the reader is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any dissemination, distribution or copying of this communication is strictly prohibited. If you have received this communication in error, please immediately notify us. Thank you.
3



Moatz, Harry
From: mail@...
Sent: Thursday, January 15, 2004 5:11 PM
To: ethicsrules comments
Cc: mail@...
Subject: Re: Comments on Ethics Rules Proposed December 12, 2003 (68 FR 69442)

date: January 15, 2004 our file: 1-024 e-mail to attn: Harry I. Moatz, Esq. ethicsrules.comments@uspto.gov


Re: Comments on Ethics Rules Proposed December 12, 2003 (68 FR 69442)
f

Dear Mr. Moatz,

Here is our comment on the captioned proposed rules. Could you kindly acknowledge receipt by return email- Thank you.

Regards,
Rob Kunstadt

Enc. follows (scroll down)


START OF COMMENTS


Re: Comments on Ethics Rules Proposed December 12, 2003 (68 FR 69442)


Dear Acting Director:

i This constitutes the comments of R. Kunstadt, P.C. on the ethics rules proposed December 12, 2003 (68 FR 69442).


INTRODUCTION

R. Kunstadt, P.C. is an intellectual property firm located in New York, New York. We are active in filing trademarks on behalf of clients in the pharmaceutical, clothing, computer, beverage and other industries, in the United States and foreign countries. These comments represent the opinion of the firm and the undersigned, but are not presented on behalf of any clients of the firm.


COMMENTS

Regulations, unlike mountain climbing, do not find sufficient justification simply "because it's there". That other jurisdictions may have perceived a need to impose particular conduct and CLE regulations on practitioners there, is not sufficient reason for the PTO to do the same by blending a multiplicity of rules and standards drawn from many states and model codes into a new amalgam.

The long-standing notorious abuses in PTO practice are largely the work of

1


non-attorneys: invention promotion swindles and mass-mailings to patent and
'.' trademark owners peddling useless "Registers" and selling lists of later
patents citing the mailing recipient's patent that are available from the
PTO website for free. These are areas that the PTO might fruitfully address
by targeted legislative proposals. Instead, the present proposed regulations
deal with them only back-handedly by seeking to regulate the interactions of
...~ PTO practitioners with such non-attorneys.

For example, in an apparent effort to be consistent with the regulations for
invention promoters, the proposed regulations (Sec. 11.104(a)2) require a
written consent from a foreign client before a practitioner may take
instructions from a foreign attorney or patent agent representing the
foreign client. This is totally at odds with prevailing international
standards and practices and will be viewed as offensive by foreign attorneys
and agents, who have close relations with their local clients which should
not be disrupted by U.S. attorneys "butting in". Such foreign attorneys
regularly supervise their clients' IP matters in dozens or hundreds of
foreign countries. It would be impractical if they needed to get client
consents for each such country's practitioners. Indeed the trend in modern
international IP practice is in the opposite direction: to reduce
formalities such as powers of attorney, legalizations and the like.
That certain matrimonial attorneys may have taken sexual advantage of jilted
spouses on the rebound, requiring State regulation, does not translate to
patent and trademark practice. Absent evidence of a rash of sexual
misconduct by PTO practitioners that could not otherwise be dealt with
satisfactorily by the general law of sexual harassment and assault and
battery, special intrusive regulation of private behaviour by PTO
practitioners (proposed Sec. 11.806) is unwarranted. There is no showing in
the proposed regulations that this or other evils that they may attempt to
address, are not satisfactorily remedied by existing Federal and State law
and State bar ethics regulations.
Similarly, that some States impose CLE requirements does not per se justify
the proposed new PTO CLE system. The patent and trademark bar is a select
group that has acted responsibly for 200 years without CLE regulations.
Competitive market forces compel practitioners to "keep on top of their
game", and the civil law damages penalties for IP malpractice are already
severe.
The effect of an additional CLE bureaucracy -- funded by a mandatory $100
annual fee per practitioner -- will be particularly harsh on part-time
practitioners and small firms (which are small businesses whose needs should
be taken into account by the PTO pursuant to rules of the Small Business
Administration). The net effect will be to reduce the availability of patent
and trademark legal services, as practitioners incrementally drop out of the
market as providers; and so to increase the cost of legal services. Low and
middle income clients will be increasingly deterred from employing
practitioners and will be forced to act pro se. The net effect will be
counterproductive to the overall level of expertise employed in patent and
trademark prosecution; pro se applicants may be expected to have little
understanding of the applicable procedural rules and ethical principles.
The PTO needs to consider that by pushing towards more pro se prosecution -
whether as an unanticipated byproduct of these proposed new regulations or
by its mandatory e?filing initiatives in general ?? the PTO will be
punishing itself by having to deal with an ever?growing percentage of unduly
time?consuming, poorly?prepared pro se.=cases, a trend wasteful of PTO
resources.
For the above reasons, we earnestly request reconsideration and revision of
the Proposed Rules.
Respectfully submitted,
2


Robert M.Kunstadt
Managing Attorney

R. Kunstadt, P.C.
729 Seventh Avenue
New York, New York 10019
Ph: 212 398?8881
Fax: 212 398?2922
Email: mail@...


END OF COMMENTS


>>as always, reply only to mail@...

THIS MESSAGE IS CONFIDENTIAL AND MAY CONTAIN ATTORNEY PRIVILEGED INFORMATION INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR COMPANY NAMED ABOVE.

If the reader is not the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any dissemination, distribution or copying of this communication is strictly prohibited. If you have received this communication in error, please immediately notify us. Thank you.

3.

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