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Allen LeRoy Limberg

Moatz, Harry

From: a limberg@...
Sent: Tuesday, February 10, 2004 3:14 PM
To: ethicsrules comments
Subject: Comments on Notice of Proposed Rules in 6 January OG


I am an independent inventor, who occasionally collaborates with other engineers in making an invention. The costs of filing patent applications through a law firm are too high for a group of two or three independent inventors. Filing and prosecuting our joint applications before the USPTO has been little problem up to now, though, since I am registered to practice. I worked about thirty years as an in-house patent attorney for large industrial corporations.

I recommend that Section 1.31 be amended to recognize specifically the situation in which joint applicants choose to file and prosecute their own case before the USPTO. Clearly, independent communication from the USPTO to two or more persons would be cumbersome. It is suggested that the following sentence be added to Sec. 1.31. "If applicants consider themselves to be co-inventors, they may appoint one of their own as a common representative for the filing and prosecution of their case before the United States Patent and Trademark Office." Such amendment would also make Section 1.31 more similar to Sec. 1.455.

In my opinion the proposed rules governing the recognition of individuals to practice as attorneys and agents should be carefully reconsidered with regard to possible adverse affects on American businesses, especially smaller ones where much of the truly innovative work is done. The proposed rules appear to be drafted primarily considering the convenience of the USPTO and increased funding of OED, without being well thought out concerning whether they make access to the USPTO more difficult and costly for small American businesses. The proposed rules could unnecessarily disrupt the prosecution of a significant number of the patent applications currently before the USPTO.

It may be only fair that foreign and international corporations filing large volumes of U. S. patents should continue to pay their proportionate share of the cost of policing the patent filing profession. Unethical practices, such as forged or false declarations of inventorship, are more likely to occur in applications of non-U.S. origin, since the entire filing procedure cannot be supervised as closely by a U.S. attorney or agent. The most difficult ethics situations for attorneys and agents arise when they discover their clients are behaving or wish to behave in an illegal or unethical way.

Although there are procedural and legal issues involved in the preparation of patent applications, the filing and prosecution of patent applications is a formidable task primarily because of the technical and business issues involved. Much of this work is done outside large law firms specializing in intellectual property, since their billing costs for such work are necessarily high, if such work is to be done properly. Much of the work is done by in-house counsel or agents, and previous practice has often been to have them also handle the subsequent filing and prosecution before the USPTO. Such counsel or agents usually deal with cases in a particular art they are deeply involved with, so the patent application and its subsequent prosecution are more likely to result in a patent that is actually useful to a business.

The monetary and lost-time costs to a small business of sending several of its personnel to a remote location for CLE courses are substantially burdensome. The number of personnel on the registry will probably be reduced and filing of patent applications may be curtailed. Specification writing is apt to go underground and be less subject to control by the OED. Persons outside the U.S. may prepare more of the patent applications that U. S. businesses funnel through law firms, with PCT filing being done before a
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foreign patent office rather than the USPTO.

A small business that uses a local counsel or agent that limits his practice to a few cases will be adversely affected if he cannot justify the expenses of remaining on the registry. Older or disabled attorneys or agents may elect simply to retire, the burden of attending CLE courses given many miles away being too great. The transfer of a patent case from one attorney or agent to another is more than a transfer of files. The new attorney or agent has to spend considerable time becoming familiar with an application he did not prepare. This time must be billed to the client, driving up the client's costs.

A better procedure would be to have the owner(s) of the patent application advised that the attorney or agent for prosecuting an application is being dropped from the register for administrative reasons. Each owner of the patent application should be advised to appoint a new attorney or agent for prosecuting the application if the owner decides not to continue prosecuting the application while still retaining the attorney or agent dropped from the register for administrative reasons. This procedure would give the owner(s) time to locate and qualify a new attorney or agent. It would also spread out in time any large switch-over of cases which might flood some law firms and could inconvenience the USPTO.

The USPTO could relieve itself of having to notify the owner(s) of a patent application that the attorney or agent for prosecuting an application is being dropped from the register for administrative reasons. The USPTO could refuse to accept amendment papers from an attorney or agent dropped from the register for administrative reasons, advising him that the acceptance of the amendment will require submission of a paper signed by the owner(s) of the application verifying his continuing appointment as attorney or agent for prosecuting the application. This, despite the owners having been informed of his having been dropped from the register for administrative reasons or possibly being so dropped.

The goals set forth in the proposed rules could still be achieved in good time. However, there would be substantially less disruption of the prosecution of patent applications already on file, and the owners of patent applications would be spared unnecessary costs.

Allen LeRoy Limberg, Reg. No. 27,211


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