Kenneth A. Seaman
Sent: Tuesday, February 10, 2004 11:53 PM
To: ethicsrules comments
Subject: comments on proposed rules on practitioners
Kenneth A. Seaman
219 Glen Oaks Road
Charlotte NC 28270
February 10, 2004
Mail Stop OED-Ethics Rules United States Patent & Trademark Office P.O. Box 1450 Alexandria VA 22313-1450 Attention: Harry I. Moatz
This letter provides comments of a patent practitioner against the adoption of the proposed rules. I have been a member of the PTO bar and a state bar for more than 25 years and prepared an prosecuted hundreds of patent applications in that time, as well as studying many patents issued to many other applicants for licensing or litigation. I have not been involved with any disciplinary proceedings, either in the Patent Office or regarding a state or federal bar.
As you probably know, the Patent Office is unusual, if not unique, in requiring a separate registration of attorneys (most government agencies allow an attorney to practice without additional requirements), but I can understand why the practice of patent law should require a demonstration of technical abilities and knowledge of the rules in order to practice effectively before the Office. Perhaps the Office need to regulate the practice of those who are not admitted to the practice of law and would find a minimum level of continuing education to be desirable, but for most attorneys, they already have education requirements and ethics obligations imposed by the state bars.
However, there are already many rules placed on patent practitioners and no more should be added. For those registered as patent attorneys are already, by definition, admitted to practice law in a state and are governed by the high standards required of attorneys. Adding additional rules raises the possibility of conflicting requirements and inconsistent standards, adds to the cost of compliance and unnecessarily burdens the patent process with rules and costs which are not necessary..
The following addresses some of the more significant issues with the proposed rules:
The Patent Office has a constitutional mission to provide patents to inventors to secure the exclusive right to their inventions. The regulation of practitioners, if done at all, should be incidental and only to the extent that it is required to fulfill the mission. The patent office already has a large number of rules, procedures and policies -- more bureaucracy than it can handle already and frequently makes errors in procedures that require applicants to correct. The patent office also has a large backlog of patent applications in some art units, leading to unreasonable time periods (in excess of three years) for receiving a first office action. The patent office should correct these deficiencies instead of adding to the bureaucracy which its customers must face.
The collection of additional fees is unwarranted - this is simply not relevant to the mandate to examine patents and issue patents to applicants where the requirements have been met. The Patent Office has spent a large amount f money and effort to develop programs which are only tangentially related to its mission of issuing patents and trademarks to those who qualify and has been unable to obtain use of all of the user's fees which it has collected in the past few years.
The additional continuing legal education (CLE) requirement is unnecessary for those attorneys who are already a member of a bar which requires CLE, which covers most attorneys. Those states are not uniform in the requirements and what qualifies for credit, leading to disparities from one jurisdiction to the next. See, for example, the table the AIPLA publishes for some of its CLE programs, which shows that the CLE credit varies from state to state for the same program. The bar hardly needs another set of requirements and filings to establish compliance with CLE requirements of the USPTO, and most attorneys are already actively participating in CLE.
The auditing provisions are similarly uncalled for. These requirements are not limited to auditing funds held for others (escrow funds) which is already monitored by state bars and is the subject of substantial regulation which should not be duplicated. These provisions potentially make a practitioner disclose an unreasonable amount of material without suitable protections like reasonable cause for a search and the necessity of justifying the request. It is also not clear that the Office will be liable for improper use of this power or for damages for disclosures of sensitive information.
Fees for inactive practitioners are not justified. If a practitioner is not active, then he is not using any authority granted by the Office and should not be subject to on-going fees. Nor should inactive practitioners be obligated to keep informing the USPTO for a lengthy period after they become inactive. Most practitioners become inactive for good reason (like retirement or change of career) and should not be subject to continuing obligations during their retirement or their new career outside patent law.
In short, the proposed rules will increase practitioners' burdens and costs, which will, in turn, lead to higher expenses to the public for those services. The Office should be concerned to keep the costs of practitioners to a minimum so that the progress of the useful arts is stimulated, not retarded. My small business and individual inventor clients are already very cost conscious of the patent costs, finding the existing fees and regulations such as the maintenance fees unsupported by direct costs, and clearly do not want to see costs increase or their attorney have to comply with additional formal requirements, such as education and testing. Further, the large companies frequently bear the costs of CLE, registration and annual dues for their employees directly, so any increase is likely to be passed on to them and some of them are already feeling the effects of the sagging economy.
Thus, I would urge the patent office to reconsider its proposed rules, with a view toward scrapping them. If regulation of agents is necessary to assure that the agents (i.e., non-attorneys who are not regulated by any other bar) have the necessary continuing education, then the requirements could exempt attorneys who are already regulated for CLE and other requirements, such as ethics and professional responsibility.
Let me know if you have any questions about these positions. They represent the personal opinions of the undersigned and not a position of any client. However, I understand that many practitioners have strong opinions against these rules and suggest that regulating the practitioners is not the mission of the Office.
Very truly yours,
Kenneth A. Seaman
Reg. No. 28,113