Paul F. Morgan
From: Paul. Morgan@...
Sent: Tuesday, January 20, 2004 12:19 PM
To: ethicsrules comments
Subject: Proposed New USPTO Rules for "Representation of Others"
This is in response to the Federal Register Vol. 68, No. 239, December 12, 2003 Proposed Rules entitled "Changes to Representation of Others Before the United States Patent and Trademark Office; Proposed Rule." The deadline for written comments, to be insured of consideration, is February 10, 2004. Comments were requested to be preferably submitted by electronic mail, addressed to the above "email@example.com".
The below are purely personal, and limited, comments of the undersigned, not that of any client. I am not specifically commenting here on any of the proposed rules relating to the [controversial] new practitioner re-certification / MCLE requirements, based on an understood PTO representation that a reasonable number of credit hours of attendance at PTO approved MCLE programs will be a fully satisfactory alternative to attorney re-examinations, and that the PTO will approve such programs for PTO MCLE credits in advance in a sufficiently timely manner. I am personally in favor of the PTO taking effective actions to improve the knowledge of current patent law and practice by PTO licensed practitioners who have failed to do so voluntarily. There has been a demonstrated disturbingly high inattention to even some major statutory and rule changes by too many patent practitioners, and this has error and cost consequences for clients and the PTO. However, the PTO should also be aware that considerable patent litigation is now being conducted by attorneys who are not, and were not ever, patent attorneys, over whom the PTO has no apparent jurisdiction irrespective of client consequences. It would be undesirable for any PTO action to further encourage that trend by de facto discriminating against patent attorneys who exclusively do patent litigation or counseling thereon. Nor am I commenting here on the bulk of the material which has been lifted ver batum from the ABA rules, except where it seems inappropriate for PTO practice. Per the subject FR notice on page 69442: "This proposed rule making is being conducted under the auspices of the General Counsel of the United States Patent and Trademark Office, James Toupin  308-2000 and the supervision of the OED Director, Harry I. Moatz  305-91450", who are requesting feedback on the rule making process in addition to comments on the merits.
The undersigned will first refer to the proposed rule of
§ 11.803 "Reporting Professional Misconduct", since that
is perhaps the most controversial, and is unofficially
referred to as the "squeal rule." The undersigned appreciates
that the present PTO disciplinary rules already have a
somewhat similar provision, although that does not seem to be
widely understood. The first comments are directed to the PTO
clarifying comments on p. 69501 of the Federal Register with
regard to this rule, which, in the opinion of the
undersigned, need further such PTO clarification comments in
the final rule package. Particularly in view of the possibly
competing requirements of the new Oxley Sarbanes Act for
corporate employees. That is, a clarification of the
professional responsibility of a corporate patent attorney
who stumbles across what appears to be a Patent Office rule
violation of another patent attorney in the same corporation
in inherited application prosecution, or unrelated patent
prosecution. It is respectfully suggested that the PTO final
comments should make it clear that the first obligation of
the corporate attorney is to see that the matter is
corrected, if possible, by full disclosure in the pending
application. Furthermore, it should be clarified that the
first and foremost proper course of action for a corporate
attorney if the attorney who engaged in the apparent
misconduct is unavailable or uncooperative, is to properly
report the matter up through the chain of management of the
corporation, and that no report to the PTO
OED is appropriate until the corporate management has had a time to correct the matter. That correction could be by taking action in the application, a public dedication or disclaimer of the application or patent, or other appropriate action. Any other conduct would be in serious derogation of proper representation of the client, as well as premature and inappropriate. Furthermore, the corporation may be able to take much more effective and immediate disciplinary action against any offending attorney through internal review. Whereas in an immediate OED report could actually interfere with any such corrective employer action.
Another issue with this same §11.803 is that although is entitled "Reporting Professional Misconduct," and professional misconduct is defined in §11.804, the actual §11.803 reporting requirement language in this rule is NOT phrased in terms of professionals misconduct, but rather: "a violation of the rules of professional conduct that raise a substantial question as to that practitioner's honesty, trustworthiness, or fitness as a practitioner in other respects." That is a much narrower definition. For example, would one observed case of withholding information as to material prior art relative to pending claims by another attorney be an obligated reporting under § 11.803, or not? This is further confused by the fact that much apparent "misconduct" under this rules package is NOT under the "Misconduct" rule itself (§11.804), but rather under separate rules which are NOT indicated to be misconduct, such as §11.301, §302, and §303. Such as §11.303(a)(2), which is also limited to: "fail to disclose a material fact to the Office where disclosure is necessary to avoid assisting a criminal or fraudulent act by a client." But on the other hand §11.303(d) [likewise NOT indicated to be "misconduct"] states that: "a practitioner shall inform the Office of all material facts known to the practitioner that will enable the Office to make an informed decision whether or not the facts are adverse." And §11.303(e)(2) states: "knowingly violating or causing to be violated the requirements of § § 1.56 or 1.55 of this subchapter. It is also noted that § 11.100 (a) "Interpretation of the USPTO Rules of Professional Conduct" states that rules in §§11.101 through 11.806 that imperatives are cast in the terms "shall" or "shall not." "These define proper conduct for purposes of professional discipline." But note that "define proper conduct" is not the same as "misconduct." Thus, which of the above and other pejorative or proper conduct provisions is §11.803 "reportable misconduct," or not? It is respectfully submitted the proposed rules are not clear. I doubt if I am the only one confused, and it may even interfere with PTO enforcement. I note that this is a purely pro bono observation, since in 41 years of practice I am not aware of any attorney for any of my clients who has ever been subject to any PTO disciplinary action while an employee.
Another proposed new rule, which several observers have
noted to be of concern or particularly objectionable is
§11.101(c)(3), stating that it is a practitioner conduct
violation merely that: "A practitioner employs one or more
procedures that the Office no longer authorizes practitioners
to use to present or prosecute a patent application."
Essentially, 11.101(c)(3) would appear to allow the OED to
prosecute an attorney simply for having innocently mistakenly
filed a paper which was no longer appropriate in view of any
one of the literally hundreds of rule and procedural changes
instituted by the PTO in the last few years [which would
undoubtedly encompass a high percentage of the entire patent
bar]. Some PTO rules are so rarely encountered in normal
practice as to be known only to a small number of
specialists, such as the rules for interference rules, public
use proceedings, SIRS, protests, etc. §11.101(c)(3) is
not even limited to Rule changes, but even covers new
"procedures." That would encompass the many mere PTO
"notices" only obscurely posted in hard-to-find locations on
the PTO electronic website, now that the PTO no longer even
publish or distribute hardcopy "Official Gazettes." Innocent
errors in mere PTO procedural formalities should not be even
considered for a disciplinary violation prosecution without
prior notice and warning to the attorney who is apparently
confused on some procedural point, and this rule should be
amended to so require. Obviously, it is only patent attorneys
and agents who REFUSE to learn and follow the multitudes of
new PTO rule and practice
changes who should be subject to disciplinary proceedings, not the rest of
. the patent bar. [ I seriously doubt if many PTO officials themselves have
memorized all the current PTO procedures].
Also, §11.101(c)(4) appears to make newly-punishable the participating in any way in "a frivolous invention," or "a frivolous filing" (as both are defined there). I do not have a serious problem with this, and I certainly hope that will apply to some "perpetual motion machine" patent applications filed by attorneys who knew that, but I expect that this rule will also concern some of my brethren or sisteren of the patent bar in many other situations. Some patent applications these days are on such high tech or specialized subjects that there is no way the patent attorney can independently evaluate the technical merits of the subject matter. Only another Ph.D. level scientist perhaps could. E.g., "cold fusion" was taken seriously by some of them not that long ago, and reportedly even a leading Bell Labs scientist was recently fired for faking research results. The final rule, or at least comments accompanying this final rule, should make it clear that a practitioner mislead by an "inventor" as to complex technology issues is not subject to this rule.
§ 11.104(d) "Failing to Inform a Client of Significant PTO Correspondence or an Opponent in an Inter Parte Proceeding." Query why this is limited only to inter partes proceedings? What about, for example, a Notice of ex parte Reexamination of the former client's patent?
Proposed § 11.62 "Protection of Client Interest Where Practitioner Becomes Unavailable." The proposal here for the client to go to some Court to get another attorney appointed does not seem at all practical or workable for patent matters, especially in view of the 35 USC §133 statutory abandonment of any patent application for which a response is not filed within six months. Rather, there should be an obligation on the part of any remaining member or successor in interest of the last firm, and an obligation by the PTO where the PTO is aware of this problem, to notify the client of the need to obtain new counsel promptly before the patent application or other matter goes abandoned, and indicating when that will occur.
Paul F. Morgan
330 Oakdale Dr.
Rochester, NY 14618
Office Telephone 585-423-3015