Philip G. Meyers

I strongly concur with the position taken by the State Bar of Texas, Section of Intellectual Property set forth below, and consider that the proposed ethics changes are unduly burdensome on practitioners, and go much further than reasonably necessary in the areas noted.
Philip Meyers
Reg. No. 30,478

Philip G. Meyers Law Office
1009 Long Prairie Road, Suite 302
Flower Mound, Texas 75022
direct (972) 874-2703
Fax (972) 874-2983
web site: www.dhc.net/~pgmipl

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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,

Member

State Bar of Texas, Section of Intellectual Property