Jere W. Sears
31 January 2004
Mail Stop ‘OED – Ethics Rules, RECEIVED
U. S, Patent & Trademark Office:,
P, O. Box 1450
Attention: Harry T. Moatz, OED Director
I submit comments concerning Sections 11.24 and 11.25 of proposed Part 11, 37 CFR, published in the Federal Register on 12 December 2003.
Harry - some 20 years ago we both worked as attorneys in
the Solicitor's Office, defending decisions of the
Commissioner and the Board of Appeals in court proceedings.
We were oftentimes successful, but even in losing cases our
positions were generally at least arguable. My concern now is
that our successors are on the brink of being set up for sure
and embarrassing court losses, because regulations they will
be called upon to defend are clearly contrary to statute.
Proposed new Sections 11.24 and 11.25 would authorize interim suspensions of practitioners, without prior notice and opportunity for a hearing. There are no counterparts in existing Part 10. According to Table 2, the sources for both are Rules of the D. C. court of Appeals Board of Professional Conduct (1999), and additionally for Section 11.25, Article 6, G 6102(d) of the California State Bar Act. However, those sources afford no authority whatever for the USPTO Director to indulge in such interim suspensions. To the contrary, 35 USC 32 only authorizes suspension by the Director “after notice and opportunity for a hearing.” The quoted statutory language is significant, as it assures to the targeted practitioner the safeguards of the Administrative Procedure Act. Indeed, Section 11.20(a)(1) even acknowledges the need for prior notice and an opportunity for a hearing, before any suspension. While both proposed Sections 11.24 and 11.25 state that “The other provisions of this Part providing a procedure for the discipline of a practitioner do not apply to proceedings pursuant to this section,” the noted requirement of Section 11.20(a)(1) cannot be so cavalierly brushed aside, because that section clearly restates a requirement of 35 USC 32.
Proposed Section 11.24 states that “A certified copy
of the record of suspension, disbarment, or resignation shall
be conclusive evidence of the commission of professional
misconduct. . .” However, this overstates the caliber
of such evidence, which is subject to rebuttal. At most, said
certified copy could amount to prima facie evidence. A like
observation applies to Section 11.25, where conclusiveness of
a conviction is concerned. Indeed, the notion that conviction
of a crime in virtually any court, including that of any
foreign country, could truly be conclusive evidence is simply
What is the need for summary interim suspensions? Public health or safety would not be at risk if a targeted practitioner were allowed to remain on the roster awhile longer. Indeed, the normal procedure afforded by Subpart C (without Sections 11.24 and 11.25) would appear to be adequate. A targeted practitioner might need to compel testimony under Section 11.38 in order to make an adequate rebuttal. On the other hand, the PTO would still have the benefit of a prima facie case without need for investigation.
My concluding suggestion for your staff is to scrub proposed Sections 11.24 and 11.25, relax, and go with the other sections of Subpart C.
Jere w. Sears,
1202 Brunswick Ave,
Blackstone, VA 23824