From: Raubitschek, John
Sent: Thursday, February 05, 2004 8:57 AM
To: ethicsrules comments
Subject: OED proposed change on representation rules
This is to provide comments on the proposed rule of December 12, 2003 for the registration of patent agents and attorneys. My views are personal and do not necessarily represent those of the Department of Commerce. They are based on many years of experience as a patent attorney in the Army, Navy, NSF, Energy and Commerce, where I am its patent counsel and formerly served as an Associate Solicitor representing OED on several discipline and registration matters. The focus of my comments will be on the new registration fee in § 11.8(d) and the mandatory continuing training in § 11.12. In addition, I will briefly discuss the exemption in § 11.7(d) from taking the examination for certain former PTO employees.
First, the proposed annual fee of $100 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 be true, the new fee will impose a burden
on Government patent attorneys and agents whose average
salary is much less (probably closer to $80,000) and whose
fees are not reimbursed by their agency even though most are
required to be registered to practice before the PTO.
Further, many Government attorneys like myself belong to more
than one bar because our place of employment may vary and so
have to bear the costs for doing this. This unfair burden on
Government employees could
( p addressed by providing a reduced annual fee for this small group of ractitioners who rarely need disciplining.
Second, there is a question of how much the annual fee should be. As explained, there is a need for an annual fee to cover the costs of operating OED to avoid the continued use of patent application, issuance and maintenance fees. It is not clear that such fee money should not be used because OED is to protect patent applicants and the public. On the other hand, there are no specific details in the proposed rule on how much it costs to run OED and what percentage of that is presently covered by the registration fees. Accordingly, it is difficult for someone reviewing the proposed rule to evaluate what the annual fee should be.
According to the Supplementary Information, there are presently approximately 28,000 registered practitioners. Although the number may decrease because of the new proposed fees and requirements, any resignations may more than be balanced by new practitioners since you indicated more that 2,500 individuals applied for admission to the October 2000 examination. Maybe, the registration fee should be raised slightly to cover the costs of maintaining the register. Any specific annual fee should be postponed until a more detailed financial analysis is provided by the PTO. The general statement on 68 FR 69450 (third column) that "[t]he current cost of USPTO disciplinary and roster maintenance programs is a little in excess of $100 per year per registered practitioner" is not adequate?especially since there is no explanation for the requirement that OED spends more than $2.8 million a year to perform its mission.
It is not clear that there is a need for the proposed
mandatory continuing training requirement nor has there been
a showing that it is necessary that it is necessary that the
PTO must approve any training courses. 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 bar and/or by the PTO. Further, the aggrieved party may sue for malpractice. Mandatory CLE does not prevent malpractice. In fact, the few agents and the attorneys that I know of who were disciplined by OED were solo practitioners and probably will not respond to ,mandatory requirements. However, I think it is very important that the PTO provide training courses on the new rules for the patent bar and I commend the PTO for its efforts to do this.
The requirements in § 11.12(a) are vague. It is unclear whether practitioners would be required to participate in one training course per year or whether the requirement could be as infrequent as one course every three years as announced by the USPTO Director. Without any specific criteria, 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 for public comment. As stated above, it is not clear why the PTO needs the authority to approve any continuing education program as meeting the PTO's education requirement. It would be more reasonable for the PTO to provide criteria for acceptable training.
The proposed rule would require most inactive members to meet the mandatory training requirements. The exemptions in § 11.12 (b) are limited but would not cover a Government patent attorney or agent who is no longer practicing before the PTO. Since a continuing legal education requirement for inactive members is inconsistent with most bar associations having a mandatory CLE requirement, this should be dropped. For example, Virginia requires that an inactive member who wants to become active to meet the CLE requirements. I anticipate that many Government patent attorneys will become inactive because most Government agencies contract out the preparation of patent applications.
I suggest that the PTO drop the proposal to exempt certain PTO employees from the registration examination because PTO employees are only skilled in the application of rules concerning patentability and have little training on how to properly describe and claim an invention. I realize that the exemption for former examiners having 4 years of experience has been in existence for many years and so there may be a reluctance to change it especially since it may encourage examiners to stay longer. (Why not make it 5 years to ensure broad experience?) However, the exemption should not be expanded to include employees who do not have day?to?day experience with the examination process. For example, when I was in the Solicitor's Office, my cases dealt with only a few elements of the patent law, such as §§ 102, 103, 112 and Rule 131 and 132 affidavits, and there is no good reason why an individual with only this experience should be exempt from the registration examination especially since the PTO will not be testing them as it does for examiners.
In summary, I recommend that the new annual fee, the
mandatory continuing training requirement and the waiver for
former PTO employees from the examination requirement be
withdrawn and discussed with the PTO Advisory Committee
before issuing another proposed rule on these issues.