Sterne, Kessler, Goldstein & Fox P.L.L.C.
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Sent: Tuesday, February 10, 2004 2:11 PM
To: ethicsrules comments
JAYS@...; JHELVEY@...; JKIM@...; MBMANZO@...; MCIMBALA@...; PGARRETT@...; TMEDLER@...
Subject: Comments in reply to NPRM: Changes in Representation . . . .
Dear Mr. Moatz,
Attached please find comments in reply to the notice of proposed rulemaking entitled "Changes to Representation of Others Before the United States Patent and Trademark Office." These comments are being submitted by the PTO Practice Committee at Sterne, Kessler, Goldstein & Fox P.L.L.C.
Michele A. Cimbala Sterne, Kessler, Goldstein & Fox P.L.L.C. 1100 New York Avenue Washington, DC 20005 phone (202) 371-2600 fax (202) 371-2540 mcimbala@...SKGF.com
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
For: Notice of Proposed Rulemaking:
Changes to Representation of
Others Before the United States
Patent and Trademark Office
68 Fed. Reg. 69442
(December 12, 2003)
Comments In Reply To the Notice of Proposed Rulemaking Entitled
"Changes to Representation of Others before the United States Patent and
Mail Stop OED-Ethics Rules
P.O. Box 1450
Alexandria, VA 22313-1450
Comments due: February 10, 2004, for changes other than to 37 C.F.R. § 11.100 -11.900 (Comments due: April 12, 2004, for changes to 37 C.F.R. § 11100 - 11.900)
Attn: Harry I. Moatz
In reply to the Notice of Proposed Rulemaking published December 12, 2003, at 68 Fed. Reg. 69442, the PTO Practice Committee at Sterne, Kessler, Goldstein & Fox P.L.L.C. submits the following comments.
1. The Office proposed to amend § 1.1(a), the address for correspondence intended for the United States Patent and Trademark Office (the "Office"). However, as published, the proposed rule is based upon an outdated version of Rule 1(a). Specifically, the proposed rule refers to paragraph (a)(2). However, paragraph (a)(2) has been removed from Rule 1(a). See 68 Fed. Reg. 48286 (2003), effective September 12, 2003.
2. The Office proposes to amend § 1.1 (a) to add new paragraph (4). However, this should be paragraph (5). A new paragraph (4) entitled "Office of Public Records correspondence" was added in the rulemaking published at 68 Fed. Reg. 48286 (2003), effective September 12, 2003.
3. Many of the section headings that are listed at the beginning of Part 11 are not exactly as written within Part 11 itself. For example, compare the headings for §§ 11.3, 11.8, 11.11, 11.112, 11.304 and 11.402. Each heading is slightly different as written at the beginning of Part 11 and as written just above the individual rule.
4. In the heading for § 11.62, "clients" should be "client's".
5. In § 11.1, Definitions, the definition for "Application" recites, 'Application means an application for a design, plant, or utility patent; a provisional application . . . ." This definition reads as though a provisional application is not an application for patent. However, a provisional application is an application for patent. (See, for example, the explanation at http://www.uspto.gov/web/offices/pac/provapp.htm). It would be better if the definition said: "Application means a non-provisional application for a design, plant, or utility patent; a provisional application for patent, . . . ."
6. Should § 11.5(b)(1) also refer to an appeal (or proceedings in general) before the BPAI in the list: "participating in the drafting of a communication for a public use, interference, or reexamination proceeding; . . ."? Paragraph (b)(2) refers to appeals to the TTAB. However, paragraph (b)(1), while not limiting, is silent on appeals to the BPAI.
7. Proposed § 11.8(d) proposes an annual fee, the due date for payment of which would be based upon the first initial of each individual's last name.This could get very confusing for people who change their last name, for example, by marriage or divorce, prior to payment of the fee for that calendar year. This may be especially confusing if the individual's new last name begins with a letter that is earlier in the alphabet. It would be administratively less demanding on both the Office and the practitioner to simply ask all practitioners to pay the fee by the same date every year. Alternatively, the due date could vary but be set on the basis of the practitioner's registration number.
Consideration of the above comments is respectfully requested.
Sterne, Kessler, Goldstein & FOX P.LL.C.
Michele A. Cimbala
Registration No. 33,851
SKGF PTO Practice Committee
Patrick E. Garrett, Registration No. 39,987
SKGF PTO Practice Committee Member
1100 New York Avenue
Washington, D.C. 20005-3934