Charles L. Warner II
RE: Ethics Rules Comments
Please note that the views and comments set forth herein are my personal views and comments and are not necessarily the views or comments of the firm or any clients.
First, practitioners are already having to comply with state-mandated continuing education requirements and state- or firm-mandated pro bono requirements. This is in environment in which many clients are in a cost-cutting environment and are placing "commodity" prices on patent applications, even while they are increasing the non-compensated administrative tasks that they expect the practitioners to perform.
Rule 11.12(a)(1) relating to mandatory continuing training requires the practitioner to repeatedly check to see whether the Commissioner has, at its discretion, decided that an education program will be required for that year, and when. This adds yet another administrative burden to the practitioner who is already laboring under the burdens mentioned above. Further, the practitioner knows not, from year to year, whether there was no announcement, or whether he or she simply missed the announcement. Although the practitioner is probably already visiting the USPTO web site for changes to rules and procedures, having to check for mandatory training notices requires still more time and effort.
The USPTO will be sending out annual notices for fees due under Rule 11.8(d). It would be a simple matter for the fees notice to also advise the practitioner that a mandatory training requirement had been established for that fees year, and that the practitioner had, for example, six months from the date of the fees notice to complete the mandatory training.
Accordingly, it is suggested that Rule 11.12(a) be amended to state that any notice of any mandatory training will be included in the annual fees notice.
Next, the mandatory training course may or may not be approved by a state for use in fulfilling the practitioner's state-mandated continuing legal education requirements. A practitioner may submit the information to the appropriate state authority, but may not have, and may not be able to obtain, all of the information required for such a submission, as such information is in the control of the USPTO. Further, the approval time from the state may be lengthy, especially when the information is submitted by the practitioner rather than the sponsor.
Accordingly, it is suggested that Rule 11.12 be amended, such as by adding a Rule 11.12(e) to specify that no such mandatory training requirement will issue from the USPTO until the USPTO has submitted the training course information to the appropriate state authorities for approval, or until such time as the USPTO has been previously approved as a provider for continuing legal education by all the states.
Rules 11.58(b)(1)(v) and (vi), and 11.58(b)(2)(ii) through (iv), are concerned with refunding monies and closing accounts. This may be appropriate for a sole practitioner, but is not appropriate for multi-practitioner firms. For example, if a firm has a USPTO trust account and an appropriate bank account for trust or escrow for prepayment of fees and/or expenses, and if one of the practitioners is suspended, excluded, etc., then these Rules, as literally interpreted, would require the closing of all such accounts. Thus, other clients would be adversely affected and inconvenienced by receiving a disbursement check for the closed account, and then having to write another check for a new account. Even the client who was directly affected by the disciplined practitioner may be adversely affected and inconvenienced, such as in the case where the client wished to continue doing business with the firm.
Accordingly, it is suggested that these rules be amended, or another section added, to specify that, if there is more than one practitioner, then those accounts need not be terminated and monies refunded if the suspended/excluded practitioner's authority to control or disburse funds from the accounts will be terminated.
This rule creates a violation if a practitioner uses a once-approved, but now unapproved, procedure. If rules and procedures were changed infrequently, and to a small degree, this should not be a problem. However, hardly a month goes by without an announcement of a new rule or new procedure, or the now-mandatory use of a previously optional or in-testing procedure. In addition, a previously-used form or template is often used as the basis for a next document so a form or template may be valid today, and invalid tomorrow. Further, in most uses of now-approved procedures, the damage is not fatal to the application or proceeding, but may involve a petition and late/petition/reinstatement fee to submit a new document which complies with the procedure. Although this may be an inconvenience to the USPTO, the USPTO is being compensated by the petition/late/reinstatement fee to suffer the inconvenience. As long as the practitioner pays the fee, and does not bill the client for the fee or the effort to correct the mistake, then there should be no violation.
Accordingly, it is suggested that this rule be amended to specify that it is a violation only if the patent application or proceeding becomes irrevocably abandoned as a result of using the no-longer authorized procedure.
This rule does not address the realities of current practice, where many clients make last minute decisions. For example, assume that a client suddenly realizes that a bar date for filing a patent application is upon him/her, and instructs the practitioner to prepare and file a patent application at the last minute, and the practitioner hurriedly (and competently) does so. Assume that a reasonably prudent practitioner would have known, such as by doing a search, that the invention was unpatentable. Was a patentability search required? How comprehensive a patentability search should the practitioner have conducted? What if the client did not want to pay for a patentability search? What if there was not sufficient time for a patentability search? What if the practitioner drafted and filed an excellent application but, because it was outside his/her field, he/she was not aware of the state of the art in that field? Has the rushed practitioner committed a disciplinary violation?
Accordingly, it is suggested that this rule be amended, such as " known or should have been known by a reasonably prudent registered practitioner, considering the totality of the circumstances under which the practitioner was operating, to be unwarranted "
This rule requires the written and informed consent of the inventor/client when the communications are to be conducted through a foreign attorney/agent. However, this ignores the current, and reasonable, practice whereby the foreign attorney/agent is already acting under the direction of the inventor/client when the foreign attorney/agent directs the practitioner to take action on behalf of the client and/or send the communications to the foreign attorney/agent. Many foreign inventors/clients do not understand English. How are they to know what is being sent to them for signature, or even that they are to sign it? Someone must provide a translation, but who? Who pays for the translation? The practitioner? The foreign attorney/agent? The client? The client, even having a translation in hand, may have to consult with the foreign attorney/agent to ascertain whether or not the client should sign the consent letter. If the translation is provided by the foreign attorney/agent, and the client signs it, and returns it, is it necessary for the practitioner to have the consent letter translated back into English to verify that what the client signed was, in fact, the consent letter, without change? Who pays for this translation? All of this incurs additional cost for the client, and at no benefit for the client.
Accordingly, it is suggested that this Rule be amended to specify that such consent is only necessary when the client directly initiates the first communication with the practitioner as a direct result of the referral by the foreign attorney/agent, and not when the foreign patent agent, acting on behalf of the client, initiates the communication with the practitioner.
An engagement letter generally provides an estimate, or range, or some other indication of the cost of preparing a patent application. Most engagement letters also now generally indicate that the estimate does not include the subsequent costs of responding to Office Actions, appeals, USPTO fees, etc. However, this rule would appear to require that the practitioner also specify the basis or rate for such additional work which then, in the minds of some persons, and regardless of any language in the engagement letter, becomes a fixed-fee guarantee regarding the subsequent work, even if conditions have changed.
Accordingly, it is suggested that this Rule be amended to require that the practitioner may merely advise the client that subsequent work is not included in the estimate for preparing the patent application.
In controversies before the Office, for example, an inter parties reexamination, or an interference, communications from a client which are required to go only through attorneys could be delayed and/or re-phrased, which may inadvertently or intentionally cause them to be less conducive to resolution of the issue. In some situations, such as where one of the attorneys is particularly aggressive, it may be even be advisable for the clients to communicate directly, rather than through attorneys, to determine whether there is even the remote possibility of resolving the situation. However, this section, if literally construed, would appear to prevent a practitioner from suggesting to his client that the client should contact the opposing party directly to see if the matter can be resolved. This would increase the costs associated with the situation and could prevent a quick or any resolution to the situation.
Accordingly, it is suggested that this Rule be amended to specify that it does not prohibit a practitioner from suggesting that the client directly contact the other party.
Charles L. Warner
Reg. No. 32320
Charles L. Warner II
TROUTMAN SANDERS LLP
Bank of America Plaza, Suite 5200
600 Peachtree Street, NE
Atlanta, GA 30308-2216