Sent: Monday, February 09, 2004 11:26 AM
To: ethicsrules comments
Attached are my comments on the proposed rule of December 12, 2003 for the registration of patent agents and attorneys.
February 9, 2004
The following are my comments on the proposed rule of December 12, 2003 for the registration of patent agents and attorneys. They are based on my experience as a United States Government patent attorney and are focused on the new registration fee in 11.8(d), the mandatory continuing training in 11.12, and the exemption in 11.7(d) from taking the examination for certain former PTO employees.
Regarding the proposed annual fee, the first question that must be asked is whether a fee of any amount is justifiable. The PTO has not made a convincing case that patent application, issuance and maintenance fees should not fund the operation of the OED because the role of the OED is to protect both patent applicants in particular and the public in general. If a fee is to be charged, the PTO has not supplied any information as to what exactly it costs to run the OED and what costs the proposed annual fee will actually cover. This information should be provided by the PTO, and the imposition of the annual fee postponed, so that patent attorneys and agents can make an informed evaluation of what the fee, if any, should be.
The proposed annual fee of $100 which, in the analysis of the Regulatory Flexibility Act, is described as not having "a significant economic impact on a substantial number of practitioners" because their average salary is over $100,000. Although this may true, the new fee will impose a significant burden on most Government patent attorneys and agents whose average salary is much less and whose fees are not reimbursed by their employing agencies even though most are required to be registered to practice before the PTO. A suggestion to reduce the burden for this small group of practitioners would be to provide for a fee waiver or a reduced annual fee.
It is not clear that there is a need for the mandatory continuing training requirement. It is true that there are many new PTO rules with which practitioners must become familiar. This is the responsibility of the individual and it is not clear that there is any need for the PTO to impose a requirement. If an applicant or patentee suffers damage because of a practitioner's ignorance, the practitioner may be disbarred by his or her state bar and by the PTO. Further, there may even be a suit for malpractice. On the other hand, mandatory CLE does not prevent malpractice. However, it is very important that the PTO provide numerous opportunities (such as the PTO Day) to educate the patent bar on the new rules.
The requirements in 11.12(a) are vague and range from one
program each year or could be as infrequent as once every
three years as announced by the USPTO Director. No criteria
is announced and so there would appear to be no limits on the
discretion of the PTO. To avoid being arbitrary and
capricious, some criteria should be set forth on which public
comment can be sought.
The proposed rule would require most inactive members to meet the mandatory training requirements. Because a continuing legal education requirement for inactive members is inconsistent with most bar associations having a mandatory CLE requirement, this should be dropped.
With respect to exempting certain PTO employees from the registration examination, it is suggested that the PTO drop the exemption because PTO employees do not practice patent law and have no training in how to properly describe and claim an invention.
In summary, it is recommended that the new annual fee, the mandatory continuing training requirement and the waiver for former PTO employees from the examination requirement be withdrawn and reconsidered by the PTO before issuing another proposed rule on these issues.