John S. Reid
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Sent: Friday, January 02, 2004 10:01 PM
To: ethicsrules comments
Cc: fairborns@...; sgallert@...; tomaolson@...; jlpspokane@
Subject: Proposed rule - changes to representation of others before the USPTO
Dear Sir or Madam:
The following message is in regards to the Proposed Rule regarding "Representation of Others Before the United States Patent and Trademark Office" (Federal Register, Dec. 12, 2003, Vol. 68, No. 239).
I am an attorney who is registered with the USPTO (Reg. No. 36,369), I am registered to practice law in the states of California and Washington, and I am a member of the AIPLA.
Generally, I am in agreement with your proposed changes.
My only comments are directed towards the CLE requirements. I have no objection to the other proposed changes. My comments are not criticisms, but are hopefully constructive recommendations. My comments are as follows:
1) The CLE requirements should be a function of actual changes made to the patent laws and rules, and not an arbitrary annual number of hours, credits, or exams. For example, in a year (such as 2003) when a number of changes were implemented, the CLE requirements would be higher than in a year when fewer changes were implemented.
2) The CLE requirements should be directed to changes to the patent laws and rules, and not to existing laws and rules.
3) The proposed Rules indicate that the USPTO will work
with state bar associations to ensure that attorneys will
receive state bar CLE credits for on-line tests offered by the USPTO and passed by the practitioner. I strongly
urge the Office to make this a key element of the proposed Rules. This can be funded by the proposed annual
dues practitioners will pay to the USPTO. State CLE credits offered for USPTO on-line CLE exams can
considered as audio-visual credits, for state CLE purposes. As a suggestion, upon successful completion of an
on-line CLE exam, the practitioner should be able to print a certificate indicating that the practitioner has qualified
for "X" CLE credits in all states requiring CLE. Failure to allow practitioners to claim state CLE credit for USPTO
CLE will impose an unreasonable burden on practitioners. That is, practitioners will be required to not only get
special USPTO CLE credits, but will also be required to obtain regular credits for state CLE programs. As you
know, virtually all states that require CLE do not require that CLE credits be related to the practitioner's area of
practice. This is unfortunate, since it reduces state CLE to the exercise of merely "getting credits", versus the true
intent of CLE. However, allowing a practitioner to claim state CLE credits for the USPTO CLE program will be a
plus to state programs, as it will help to ensure that patent practitioners are getting relevant CLE.
4) An exemption (by affidavit) should be offered for changes to the patent laws and rules that do not affect certain practitioners. For example, if a practitioner is not practicing in the area of trademark registration, then the practitioner should be able to sign an affidavit to that effect, and thus be relieved of any requirements to take USPTO CLE related to changes to the trademark laws and rules. Similar areas of exemption can include (and not by way of limitation): (1) patent litigation; (2) interference practice; (3) PCT practice; (4) reissue practice; and (4) reexamination practice. If_a practitioner indicates that he/she should be exempt from CLE in one (or more) of these areas, and then later elects to reestablish practice in such area(s), the practitioner can be required to take and pass all CLE requirements between the time the practitioner first indicated that he/she is no longer practicing in this area, and the time the practitioner indicates that he/she now intends to practice in this area.
5) The proposed Rules indicate that, for on-line CLE exams, the Office will provide "narrative material" to accompany the exam. This is a VERY good idea, as it will allow practitioners to know exactly what is deemed important by the USPTO, and will not require practitioners to go in search of such materials. The more that can
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be provided, the better. Please know that practitioners do
want to work with the USPTO - we just need to know
' what is required of us.
6) I would like to suggest that the USPTO offer annual live CLE (e.g., at an east coast location and a west coast location, if not more), at-cost, and preferably on Friday and/or Saturday), for practitioners. Current private CLE relevant to USPTO practice is prohibitively expensive for the solo practitioner and small law offices. The USPTO can offer the precise training relevant to rule changes, and (I am convinced) can do so at a fraction of the cost charged by private CLE providers. A live, interactive CLE forum will provide more benefit to practitioners (and the USPTO, 1 am convinced) than will an online non-interactive forum.
I believe the proposed changes (if implemented properly) can offer the USPTO and registered practitioners great benefit, all to the ultimate benefit of the true end user -i.e., patent and trademark applicants. As indicated by my remarks above, any USPTO CLE program should be implemented according to reason, and not according to rigid and arbitrary rules. Please, make this a program that is logical and achieves its true intended purpose of improving the profession - don't make it a program that merely achieves a stretch goal.
Please feel free to contact me if further input is desired.
John S. Reid Reidlaw, L.L.C. 1926 S. Valleyview Lane
Spokane, WA 99212-0157 USA Phone: 1 509 534 5789 Fax: 1 509
532 0351 e-mail: jreid@...