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Harold C. Wegner


02/06/2004 15:8 FAX
FOLEY 10 LARD NER
T O R N E Y 9 A T L A w
facsimile February 6, 2004
(703) 306-4134
attention of Harry I. Moatz
attached is the
RECEIVED

FEB 0 6 2004
Testimony of
Harold C. Wegner
OFFICE OF ENROLLMENT
AND DISCIPLINE
concerning the proposed Modification to Code of Federal Regulations, Changes to
Representation of Others Before the United States Patent and Trademark Office,
Rulemaking Notice of December 12, 2003, 68 Fed. Reg. 69442
This transmission consists of
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including this cover sheet
If there are any problems with this transmission or if you have not
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02/08/2004 15:46 FAX X1002

DEPARTMENT OF COMMERCE
Patent and Trademark Office
Testimony of Harold C. Wegner
DEPARTMENT OF COMMERCE
Patent and Trademark Office

Testimony of

Harold C. Wegner

concerning the proposed Modification to Code of Federal Regulations, Changes to
Representation of Others Before the United States Patent and Trademark Office,
Rulemaking Notice of December 12, 2003, 68 Fed. Reg. 69442

subnutted via facsimile February 6, 2004
(743) 306-4134, attention of Harry 1. Moatz


This is responsive to the invitation to provide testimony concerning the
above-captioned regulations that would effect a change to the Code of Federal
Regulations, Changes to fepresentation of Others Before the United States Patent
and Trademark Offzue, Rulemaking Notice of December 12, 2003, 68 Fed. Reg.
69442.

Harold C. Wegner is the former Director of the Intellectual Property Law Program and Professor of Law at the George Wasbingtoa University Law Scbool and a partner in the firm of Foley & Lardner. He is also a past Chair of the Bar Association of the District of Columbia PTC Section that has been deeply involved with the proposed rulemaking, including a public forum that was held on January 21, 2004; his paper for that forum, PTO Recertification: Fractioning The Patent .bar, is included in this testimony in abridged form as an appendix beginning at page 16 -numbered as App., p, 1.


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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Testimony of Harold C. Wegner

The testimony does not necessarily reflect the views of the firm or any client of the firm or any other organization with which Prof. Wegner is affiliated; the views expressed in the Appendix are solely those of the author and do not necessarily reflect the views of the aforementioned Bar Association.

The testimony, here, is limited to the issues of the ever more globalized practice at the .PTO and the broader vision of the Under Secretary of Commerce and how the regulations should be adapted to fit within the framework of that vision. In particular, the testimony here focuses upon the paradigm of the Japanese-U.S. interface and how this critical relationship must be fostered and grown to better benefit American innovation through an overall strengthening of the U_S. patent system and the quality of patents that are granted by our government:

The testimony has four elements in terms of objectives that are reflected in §§ I-IV axed means for their implementation as expressed in §§ V-VI:

I. THE VISION OF GLOBAL PATENT WORKSHARING
II. BETTER JAPANESE-BASED U.S. PATENT APPLICATIONS
III. GREATER HOURS PER AMERICAN PATENT "DISPOSAL"

IV. BETTER COUNSEL FOR AMERICANS

V. OPENING THE DOOR TO GLOBAL PATENT ATTORNEYS

VI. PROPOSED RULES CHANGES
This proposal in essence seeks to broaden the base of patent attorney and agents licensed to practice to those who fully meet the ethical and technical and legal requirements that are set in the current standards - but to eliminate any citizenship or residency requirements.


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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Testimony of Harold C. Wegner

I. THE VISION Off' GLOBAL PATENT WORKSHARING

To understand the citizenship issue, one must first see the overall policy objectives of our government, and particularly the future of the PTO. As evidenced by the Under Secretary's leadership role in the American delegation to the Trilaterals in Tokyo in November 2003 while still the Deputy Under Secretary, there is a recognition at the highest level of the PTO of the great importance of the closest possible cooperation between the major patent offices of the world.

The patent examination world is bursting at the seams. Here at home in America, we see only a sliver of the global picture: The wine explosion that is taking place, here, is recurring all over the world as patent granting authorities are swamped with too many applications .for too few exanZiners. ):t should be
(v; apparent to everyone that it is ludicrous for examiners in five or ten or more
countries to examine virtually identical patent applications to the same invention -
each independently searching and each independently examining claims under
what are in effect very similar standards of patentable novelty - whether styled
abroad as an inventive step or here at home as obviousness. There is a virtual
harmonization of patent laws in terms of patent procurement that bas taken place
gradually over the years, with only a few rough edges yet to be droned out; the
same patent and literature data are searched throughout the world. (The well
known difference - a grace period versus flrst-to-file - is really a minor issue in
the overall scheme of examination as this difference is applicable only to a
minority of cases.) We thus already have achieved "fuzzy harmouizatiore" that
should permit one examiner to do the preliminary examination for all patent
granting authorities around the world.
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DEPARTMENT OF COMMERCE Patent and Trademark Office
Testimony of Harold C. Wegner
What keeps the already achieved fuzzy harmonization from being utilized to permit the common usage of search and examination results- There are two root causes that can be immediately identified. First, there needs to be a greater mutual understanding of the several systems by the examiners in each country, that can be best fostered through examiner exchanges - something that is outside the scope of the present testimony. But, it is also important that the patent allorneys who practice before the PTO have a broad multinational understanding of the similarities and differences between the several states. A truly multinational patent attorney is able to craft: simpler claims suitable for all countries and is able to understand and explain to the PTO why some results in a foreign proceeding should be used here at home. (Perhaps more important for American industry is the fact that such a truly multinational patent attorney will be able to start with a simple United States provisional application that is tailored to meet foreign standards as well as those of the U~uited States, so that there will be a meaningful priority right in foreign countries: It should be an important public policy objective for the United States that our emerging high technology industries are able to obtain Japanese, European and other foreign patent rights of value so that the cost of innovation here is spread around the world. This should be self-evident to everyone froze the American leadership role in the Uruguay Round of negotiations that led to the Trade Related Aspects of Intellectual Property -- the TRIPS.)

Macroscopically, then, it should be a policy objective of the PTO to educate American patent attorneys to become truly multinational patent attorneys to meet the needs of the shrinking global patent vision. Based upon the fact that literally hundreds - if not thousands - of Japanese have come to the United States for weeks or months or years to study in American law firms to gain a comparative mastery of U.S. practice, while virtually no Americans have been reciprocally

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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Testimony of Harold C. Wegner
dispatched to Japan, the answer is not that the United States send patent attorneys
to Japan. (Certainly, we should and do send patent attorneys to Japan to represent
Japanese in American law issues; but, this is not the same as sending Americans
to Japan to learn about Japanese law and practice.) The answer to the question therefore must lie elsewhere. See § V, Opening the Door to Global Patent Attorneys, infra.

lx. BETTER JAPANESE-BASED U.S. PATENT APPLICATIONS

Nothing better speeds up the work of a patent examiner than a crisply prepared, clean patent application with sharp claims, an Information Disclosure Statement and everything formally in good order, Conversely, nothing slows things up more than a crudely translated and formally incomplete application. Optimizing the quality of the tens of thousands of foreign-based patent applications therefore will greatly improve the efficiency of the examination process. With 67,000 applications per year coming from Japan, a focus upon improving the quality of applications from that country is the obvious starting point.
Downstream, it is important that the United States focus upon all countries with significant filings in the PTO to have improved quality patent applications. Here, however, a focus is immediately made upon Japan because of the practical fact that Japanese applications in the United States overwhelm the filings of all other countries. Japanese domination of the world patent scene is manifested by the fact that rougbly half of all first filings of the world are in that country, whereas only about a fifth of first
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Testimony of Harold C. Wegner

filings come from the United States. App., p_ 1.8_ The importance of Japanese Flings amongst the major patent granting authorities of the world is demonstrated by the flow of applications amongst the trilateral blocs (App., p. 19):


Japan to U.S. 67,000
U.S. to Janan 48,000
Japan to Europe 30,000
Europe to Japan 42,000
Europe to U.S. 73,000
U.S- to Europe 57,000

Thus, Japan accounts for nearly as many patent applications filed in the United States as all fifteen-plus European countries combined.

One of the major problems for the snore than sixty-five thousand patent applications filed by Japanese organizations in the United States is that they are often drafted by unlicensed translators or engineers and not even by a Japanese $enrishi ("patent attarney"): The proposed regulations make the false premise that the patent applications filed from abroad are through foreign patent law firms; this misses the boat entirely as to the thousands of cases where translation agencies are the "firm". While the eventual filing is conducted by an American patent attorney typically situated in metropolitan Washington, D.C., a great deal of the cases are ready-to-file applications from unlicensed translators wbo a fortiori cannot be expected to know the nuances of American patent law, let alone that of their home country.

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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Testimony of Harold C, Wegner

Anywhere from roughly 50,000 to more than 100,000 foreign-origin patent applications per year are filed in the United States which have been prepared by persons other than a foreign "lawyer" or "patent agent", even where the communication is through a "patent" office that may or may not have a "lawyer" or "patent agent" involved in overseas preparation of patent applications and may or may not (and generally does not) have the particular case prepared or transmitted by a "lawyer" or "patent agent". It is not seen how the proposed regulations that so microscopically deal with various interrelationships are to deal with the daily business of patent law on this not inconsequential scale. If one takes merely the 67,000 Japanese origin patent applications per year, one can begin to see the order or magnitude of the challenge. Trilateral Statistical Report 2002, § 3.3, Interbloc Activity, Graph 3.10, Flows ofApplications between Trilateral Blocs http://www.uspto.gov/web/tws/tsr2002/ch3/3 3.htm1. Multiply the individual issues for Japan by several score for the various quirks of other countries as well-

If we look merely to Japan as an example, one of the largest single offices in Japan to send patent applications to the United States was the translation bureau Nippon Gyatsu Boeki which started more than a generation ago with a mass direct filing of patent applications to the United States; it was essentially a translation office that previously had performed the translation work for the major Tokyo patent firms. In the mid-1970's, the organized benrishi association that polices unauthorized patent practice

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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Testimony of Harold C, Wegner

had sought to define the overseas filings of patent applications such as from Nippon Gijutsu Boeki as the practice of Japanese patent law, but failed.

Today, as Americans and other foreigners had trouble with the tongue twister name, Nippon Gyutsu Boeki has been restyled as "NGB" to feed several of the largest Washington, D.C., patent law firms. It still proudly styles itself as more of a translation business that acts in lieu of a patent firm to send cases to theUnited States and other foreign countries.' Because the benrishi association was unsuccessful in the mid-1970's, the major Japanese translation and related foreign filing firms do not consider it necessary to engage patent agents or lawyers for such foreign work.3


In its treatment of its corporate history, the company does not even mention any existence as a law or patent firm; "NGB was founded as Nippon Gijutsu Boeki Co., Ltd. in Tokyo, Japan in November 1959 by Mr. Isamu Nishino. *** Because of his international business background, Mr. Yoshino recognized the potential importance of protecting Intellectual Property (IP) throughout the world and started Nippon Gijutsu Boeki Co., Ltd, to support Japanese companies in their understanding and protection of IP. At the time, Japanese manufacturing companies had not placed a high priority or focus on protecting their Intellectual Property." httn://www.njzb.c_o.in_/mizlish/c=Mv/outlinc.htnl. In speaking of its progress to the very present time, not one word is mentioned of any patent law licensure or expertise: "Since those early days, NGB continues to provide IP services to the world's most influential companies. Companies on the frontier of research and development in fields as diverse as electronics, semiconductors, automotive tecbnologies and pharmaceuticals. We are proud that most of the major Japanese companies choose to partner with NGB for IP services. Below is a summary of our history indicating our long commitment to providing the best IP services to our clients." Id.

2 Even today, NGB does not hold itself out as a law firm for.foreign (American) services. Instead, in its website under "prosecution", it states that "for forty years, NGB has provided prosecution support services to help our clients secure their Intellectual Property (IP) 'flights around the world. We have worked with our clients to
(V,,, secure tens of thousands of Patents, Design Models, Trademarks, and other IP
registrations. Because of our extensive experience, we have established close associations
with most of the leading law firms in the world, and we use this extensive network to

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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Testimony of Harold C. Wegner


in fact, the NGB work is cited as a paradigm not because of the quality of work but only as an example of the type of licensure problems that exist. To the contrary, NGB, while denying Japanese benrishi positions for its outbound work to the United States, in fact always has within its walls an American patent attorney to provide advice to its translators and other staff members. NGB is thus noted, here, only as a paradigm. It may be the largest organization of this type known to circles in Washington, D.C, but it is rather typical for the way work is sent to the United States from Japan -other than direct work from corporations which today does account for a substantial percentage of the 67,000 annual Japanese-based U.S. applications. Even amongst the f-ms which are populated by benpishi it is often the case that the person who is responsible for communications with the United States and for entrusting work to the American patent attorney is unlicensed. Ts such a person embraced within the framework of the proposed regulations or is this person outside the ambit of the proposed regulations- What impact does this have on the ability of the American lawyer to accept representation. Must the American patent attorney first confirm that the person who is sending the work is registered in Japan. as a bengoshi or a benrishi- What happens if the Japanese firm has a branch office in the United States arid the initial retainer is from the branch office in the United States or if communications are directed through this branch office-


ensure that our client's 1P rights are protected domestically as well as internationally." ft://www.ngb.co-il-/english/seiMce/`prosecution/. NGB does advertise that it has two subsidiaries - Japanese patent law firms - for its domestic Japanese patent practice. Id.

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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Testimony of Harold C. Wegner


Even amongst the major "patent agent" or "patent offices" of Japan, there are often sister "K.K." organizations - the Kabushiki Kaisha - that often perform much of the work of sending outbound patent work to the United States; the Kabushiki Kaisha are corporate business organizations that are closely controlled by the patent law firms but which operate as legally independent entities and are neither law fu-ms nor patent agent firms.

Thus, the reality of practice in Japan is that it is not necessarily the norm that a licensed attorney or agent is sending the patent application work to the United States. It is just as likely that the patent application that is sent to the United States "ready to file" was prepared in a Tokyo translation bureau based upon one ox several Japanese priority filings which have been cobbled together by the translation bureau or other staff member.

Even if one adapts the rules to fit the realities of the NGB-type of operations that exist, and assuming that there were no further problems for Japan, this is just the tip of the global patent iceberg: Of residents of the more than 100 odd countries that ale patent applications in the United States, a country by country examination is needed to understand precisely what happens in each country, manifesting the fact that one size does not fit all situations.

A complex answer- to the puzzle of better quality foreign-based patent applications is to (a) tighten up regulations on practice; and (b) encourage

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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Testimony of Harold C. Wegner

foreign applicants to directly utilize patent attorneys who are licensed to practice in the United States. This cannot and will not happen overnight, no matter what regulations are proposed. The utter reality of the situation is that the filing habits for tens of thousands of patent applications per year must be changed incrementally. A first step that can be taken is to increase the number of the truly multinational patent attorneys who reside in Japan and other foreign countries. To add a truly multinational patent attorney will require opening the door to registration of Japanese nationals who meet the requirements of the United States for registration other than citizenship. See § V, Opening the ,Door to Global Patent Attorneys, infra.


III. GREATER HOURS PER AMERICAN PATENT "DISPOSAL"

Ultimate implementation of true "patent worksharing" will involve one Examiner doing the work for his or her colleagues around the world on each application. As a practical matter, Americans will benefit most of all by having an American Examiner handle the initial patent examination for the world offices. This will greatly simplify matters for American industry by being able to deal with "everything" in Crystal City - or soon, Alexandria - instead of in Tokyo, Munich, Beijing and elsewhere,

More important as a benefit to Arnericails in their home country procedures is the fact that if the several tens of thousands of foreign applications that the American examiners must handle today are shifted to

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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Testimony of Harold C. Wegner
Tokyo, Munich, Beijing and elsewhere, this will give the American examiner more time to focus on the applications of American industry.

Again, patent worksharing will only be achieved if there is a better mutual understanding of the workings of all the offices, particularly with an increase in the number of truly multinational patent attorneys. See § V, Opening the Door to Global Patent Attorneys, infra.

IV. BETTER COUNSEL FOR AMERICANS

One of the major problems that face .American emerging technologies is that they must compete for the best patent counsel not only with major American industry but also the large foreign organizations that gain patents in this country. It is too well known to repeat that over the past generation some of the leaders in domestic patent filings have been the major Japanese electronics acid mechanical companies. They have become highly sophisticated in American patent matters and compete neck and neck with large .American companies for the best and brightest American patent attorneys. One of the leading Never York patent "boutiques" and the largest Washington, D.C. pure patent firm - each of which styles itself as a litigation firm - in fact both have a very large Japanese procurement practice.
If there were truly multinational patent attorneys residing in Tokyo then, over time, a sipi.ficant shift would be made in this filing work to


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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Testimony of Harold C. Wegner

Tokyo-based counsel. In this way, the talent that: should be made available to American emerging technologies can be freed up.


Y. OPENING THE DOOR TO GLOBAL PATENT ATTORNEYS

The answer to gaining more truly multinational patent attorneys is quite simple: The citizenship requirements of the regulations 'for registration as a patent attorney or agent should be stricken. If this is done, then immediately there will be a flow of new patent attorneys and agents licensed to practice from all over the world.
Hundreds of foreign'attorneys annually come to the United States to gain the LL.M. degree, and each is then granted a one year visa to work in the United States, often in American law firms. Additionally, there are scores of patent practitioners from Japan alone who come to study in the United States.

The record of the United States PTO is comparable to that of the Louisiana Supreme Court in its xenophobia toward "foreigners" practicing in the United States. App., p. 11 n. 6. Only grudgingly and under the most restrictive interpretation of case law have foreigners been admitted to practice before the PTO. A petition to continue to practice as a patent attorney was denied to a member of the Ohio bar and later Vice-President of the Cincinnati-based Proctor & Gamble; one of the Max Planck Institute's most distinguished comparative scholars who was long a resident of Oklahoma and later a senior partner in one of the most prestigious Munich 13
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Testimony of Harold C. Wegner

lair firms was denied the opportunity to be a patent attorney if he moved to Munich - to represent an American company in that city. The "crime" on which patent attorney registration was denied was that the two were respectively Dutch and German nationals. App., at 1213.

The citizenship distinction is lost on practice at other agencies where any member of the highest court of any state - including numerous foreign nationals - are pennitted to practice: The extraordinary exclusion from the Administrative Procedure Act Granted to the PTO to set its own regulations is to deal with issues of character and qualifications and not to discriminate against foreign nationals who are otherwise qualified.

At first blush, one may think that having patent attorneys only in the United States has some rational basis because there is better local control by the PTO and other reasons. But, these reasons are shattered by two points.

First, an American citizen is fully licensed as a patent attorney without regard to residency. Second, literally hundreds of Canadians are registered under a loophole in the American regulations based upon ostensible but false reciprocity. (An American cannot be licensed to practice directly in Canada; he must nominate a local patent agent.) The historic treatment of Canadians should serve as a global model for the United States. Canadian patent attorneys and agents have been scandal-free in their American practice and bave well served their Canadian clients at the PTO. Indeed, their dual

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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Testimony of Harold C. Wegner

registration makes them much more a part of the U.S. system, they are truly prime models for the truly multinational patent attorney,


vi. PROPOSED RULES CHANGES

It is therefore the suggestion that the proposed rules be modified to strip away all citizenship requirements and any discrimination against a prospective patent attorney or agent to be registered - or for an existing patent attorney or agent to maintain his or her registration. This would square with the practice under the Administrative Procedure Act and help further the overall objectives of the PTO in its leadership role in the shrinking global patent village.
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner


PTO RECERTIFICATION; PRACTIONIN6 THE PATENT BAR

Harold C. Wegner"

X. OVERVIEW

Changes to Representation' is a currently proposed U. S. Patent and Trademark Office (PTO) set of rules. The set will, if ~implerraented, signal a sea change iii the long quiescent and arcane world of patent attorney and agent licensurc. It is a wakeup call for immediate reconsideration of the federal licensure exception to the now more than fifty year old Administrative Procedure Act. If the bar instead sleeps, an irreversible diminishment of the status of "patent attorney" will inevitably occur-

Domestically and internationally, the American patent community has become an isolated stepchild of the overall legal society. Domestically, even in technology areas, the "patent attorney" licensure isolates the patent prosecutor from the upper end of the profession: The total number of licensed patent attorneys totals only about one-fifth the number of lawyers in just the top 250 frrns. This is the rariFed air with virtually all the upper end opinion makers and movers and shakers on Capitol Hill who influence the appointments of the federal judiciary and the PTO and can make legislation "happen" - including full funding of the PTO. One need only survey the twenty largest firms to see that less than two (2) percent are patent attorneys licensed by the PTO - and of that ntunber, probably none or very few have anything other than an upper end practice mutually exclusive from the


'"Paper prepared for a Public Forum, Bar Association of the District of Columbia P'fC Section, January 21, 2004, Washington, D.C.

** Past Chair, Bar Association of the District of Columbia PTC Section; former
Director of the Intellectual Property Law Program and Professor of Law, George Washington University Law School- Partner, Foley & Lardner. hweanerC~folcy.com.

' Changes to Representation of Others Before the United States Patent and Trademark Office, 6$ Fed. Reg. 69442 (.December 12, 2003) (herein: Changes to Representation).

App., p 1
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

preparation of patent applications. Thin, too - and perhaps to an even greater extent - are the ranks of. the registered patent attorney bar in the corporate board rooms. If the Administrative Procedure Act were now amended to admit any attorney eligible for other agency practice to participate in the patent bar - with the elimination of the registration number practice, then the ranks of "patent attorneys" would swell. Patent attorneys would suddenly assume a much larger and more visible role, including those who do mergers and acquisitions keyed to intellectual property, global business deals, opinions on due diligence involved with patent infringement arid just plain patent litigators.

Globally, a PTO xenophobic policy against non-citizen registration has dearly cost the United States a leadership core of bicultural attorneys who are at the top of the global patent world; indeed, one has to look to the Louisiana Supreme Court and its recently struck down exclusion of all but "immigrant aliens" to its bar to find a comparable level of xenophobia within our shores. Xenophobia has been at great cost to the United States. It has deprived the American patent community of the rich diversity of top patent lawyers who would join our bar. It has excluded a future VicePresidmt of an American-based multinational who is a member of an American bar and was a registered patent attorney only 1 he committed the "sin" of moving to Europe; while residing in Oklahoma, one of the eve or six of the very top patent scholars from the early 1970's at Max Planck Institute - now a senior name partner in one of Munich's most highly regarded law firms - was flatly denied the possibility to head his corporate organization's European operation if lie moved back to Munich as part of that American corporate organization- Dozens if not scores of Japanese patent practitioners would by now be registered as American patent attorneys or agents, but for the restrictive "Louisiana level" PTO practice. If the United States, today, were to admit lawyers to practice at the PTO who are qualified under the Administrative Procedure Act, we could inunediately reverse the trend and suddenly have scores if not several hundred lawyers who are foreign nationals and residents of foreign countries who have patent experience who could be a part of the mainstream American patent bar through their licensure in New York or other state bar.

But, if the current rules are implemented, the picture is very bleak, both domestically and internationally: Domestically, the patent bar will be

App, n 2
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DEPARTMENT OF COMMERCE Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

further marginalized and would immediately sink. to a figure of registered patent attorneys somewhere between 1.5,000 and 19,000 - once the elimination of the many patent attorneys who only occasionally practice at the PTO are eliminated. In the very near term, this may be just great for patent procurement specialists who do nothing but prosecute patent applications for a living; their average fees will surely rise dramatically as the options for prosecution dwindle down to those who elect to be recertified on an up to annual basis. Yet, if the United States takes this course and particularly if it maintains its Louisiana-level xenophobia against foreign lawyers, the marginalization of the patent community and its influence in the real world of commerce will be diminished beyond the meager level at which it stands today.

This paper commences with a story about numbers. See § II, A Future Practice without Arbitrary Rules. In looking at the state of. patent attorney and agent licensure, one may step back and see an arbitrary set of rules with extreme paradoxes that have led to an artificially small patent bar of about 22,000 - roughly one fifth of the number of attorneys in just the 250 largest law firms; of the 30,000 plus lawyers in the twenty largest law firms, less than two (2) percent are now registered as patent attorneys and most of them only marginally practice at the PTO. Much if not most of this is traced to a set of arbxtrary rUles :for. regisiration which have no defensible pattern - other than to keep qualified persons from registration who are not former PTO employees and to automatically register those who want to retire from the PTO including some categories of. PTO officials who would not be considered qualified to sit for the patent bar examination. There are several examples:

On the one hand the rules make it next to impossible for some very
highly qualified patent lawyers of immense success in patent litigation,
opinions and counseling to even sit for the patent attorney examination while
others who may be counseling technically unqualified but who help write
PTO guidelines may be automatically registered without even taking a test.
Or, an American expatriate living in Korea or Columbia or the Czech
Republic at age 21 with only an undergraduate science degree who has no
training at all in patent law but was able to cram and pass the multiple choice
patent examination and be registered as an agent may be fully registered and
remain so while living in Korea or Columbia or the Czech Republic, while a

App., p 3
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DEPARTMENT (11F COMMERCE
Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

Japanese bengoshi and benrishi - the respective "law" and "patent agent" registrations of Japan - who is also licensed in New York and is registered to practice before the PTO is stripped of his American patent attorney registration if he moves back to Japan.

While highly trained patent litigators and other lawyers are viewed as "unqualified" by the PTO and foreigners are excluded on the basis of citizenship and residency, patent examiners now numbering many thousands have been licensed to practice over the past thirty some years with no examination at all for the many key facets of patent practice; some have been design examiners who have no technical degree whatsoever but years of PTO experience, solve including at the Board of Patent Appeals and Interferences.

Additionally, the PTO perpetuates a myth that a patent agent is ``usually just as well qualified as patent attorneys" to write and prosecute patent applications. This fallacy is against all evidence. (A patent agent
L,.~ cannot even fill in an assignment form or do arty legal work other than drafting and prosecuting a patent application - or other licensed work). At the same time, a patent attorney also has no broader scope of federal licensute outside his state of licensure. A movement toward a broader scope of licensure but focused upon patent attorney practice seems inevitable, but the sooner this takes place the better. See § XTI, Toward a Unified Federal Patent Bar.

The PTO statutory exemption from the APA was created to give the PTO the authority to test "to slow that [the candidate is] possessed of the necessary [technical] qualifications ***" (gild check moral and ethical qualifications). The PTO has eliminated its historic testing procedure that had required prospective attorneys to draft claims or perform other tasks to show their qualifications and replaced this with a memory bank of multiple choice questions - far from its statutory role. See SS r~! The PTO Statutory Testing Duty.

The idea of an agency annual fee and recertification is flawed for two entirely different reasons. First, from a substantive standpoint it would
(,„~; further fraction the patent profession into an ever. diminishing group of prosecutors versus the larger general bar that would grab an every increasing

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Appendix to Testimony of Harold C. Wegner

share of the patent pie. More fundamentally, however, there is absolutely no statutory basis either for art annual fee or for recertification for practice at the PTO - something entirely outside the statutory authority of this already unique agency. See § V, An Agency Annual Fee and Recertification.

Whether the new rules will be adopted, modified or reconsidered with further debates within the profession, will in large measure depend upon the reaction of the public and the ultimate decision of the General Counsel of the PTO who has supervision over the Office of Enrollment and Discipline as well its new Under Secretary of Commerce who has assumed responsibility for the PTO subsequent to the publication of the proposed rules,


II. A FUTURE PRACTICE WITHOUT ARBITRARY RULES

The patent profession should be moved to the mainstream of a lawyer practice without any special regulations for admission to practice other than for any other federal agency. If this is done, then immediately the overall patent bar would double or triple in size to encompass a wide range of patent experts who today practice upper end patent law at the major law firms in this county bat do not do patent procurement; such a move would also immediately globalize the profession in a dramatic movement in view of the large number of patent attorneys who are foreign nationals and members of the New York or other state bar. The growth of the domestic patent voice is considered in § A while the globalization is considered in § B.

A prime reason for the continued narrow practice is the historic selfinterest of the PTO senior career staff to maintain the golden parachutes for retiring and other former patent examiners and PTO officials; as pointed out in § C, some entire categories of officials would not be qualified based upon their technical training and experience but for loophole regulations while many patent examiners are given a free registration without examination even though they have no training to draft claims to create enforceable patents or otherwise understand from practical experience the post-patenting consequences of patent prosecution necessary for creation of patents that are enforceable and which will be found valid in an infringement action.

A. Growing - Not Shrinking - the Domestic Patent Voice

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Appendix to Testimony of Harold C. Wegner


The proper vision of a future patent bar should be one that is inclusive of. the many patent attorneys at the upper end firms who practice patent litigation and counseling at a level that brings them into daily contact with domestic and world leaders and which would permit their influence with Capitol Hill and the White House to obtain better patent legislation -including PTO funding - and create a better pool and support for such a pool for appointments to the Federal Circuit and the upper end positions of the PTO. If the door were opened to the 15,000 or so truly upper end patent practitioners wbo are not registered, this would be a great enrichment and cross-pollination of ideas and concepts at the PTO that would bring the PTO more into the mainstream of the general bar.

The situation at present is at best bleak for the patent profession in terms of the "registered" bar- The ranks of. the 22,000 registered patent attorneys2 is dwarfed five-fold by the more than 100,000 lawyers in just the top 250 law firms alone. 3 Implementation of the current regulations would surely shrink the number to somewhere between about 15,000 to 19,000. In contrast, the total number of attorneys at just the top twenty law firms of the world, alone, accounts for more than 30,000: This will mean that the total number of attorneys at just the two twenty law firms of the world will have on the order of twit°e as many lawyers as the total number of registered patent attorneys. (To further complicate the picture, at least before Enron,

zThe PTO pegs the figure at 22,045. See Charges to Representation, 68 Fed. Reg.
at 69442("jN]early 28,000 individuals are registered as patent attorneys and agents, of
whom about 80°/u have indicated that they are attorneys"). This figure is used throughout
this paper. But, according to the website at the PTO 'For agents and attorneys, it is stated
that "fit]his Index contains contact information for attorneys and agents with licenses to
practice before the US Patent and Trademark Office. There are 6787 active agents and
22045 active attorneys."
http - ://www.nspto.gw/web/oftices/dcom/oiia/oed/roster/index.html [Data extracted
December 24, 2003]

3 Delivery of International Legal Services in the Coming Decade, 15-AUT Int'1 L.
PraCtlclUZ1 67, 89 (2002)(citang the National Law Journal)("The number of lawyers in the
top-twenty law firms is increasing substantially- [TJhe total number of lawyers in the top
250 firms has increased very dramatically from twenty-three thousand in 1980 to over
one hundred thousand today.")

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Appendix to Testimony of Harold C. Wegner

the top five accounting firms had more lawyers than. the five biggest law firms. 4)

Within the sphere of the 30,000 lawyers at the top twenty firms, the percentage of patent attorneys who retain their registration will surely drop to a number at or just above one (1) percent of this number, and surely will be a bit below two (2) percent: It is no wonder that when the patent voices speak on Capitol Hill or the White House -whether to urge the appointment of a candidate for leader of the PTO or a position on the Federal Circuit or for full funding of the PTO - it seems that there is nobody listening: 'there is no powerful voice to be beard. ,Diminishment of the meager voice that does exist moves precisely in the opposite direction from what the patent system needs.

The leadership of the patent bar over the years has crossed the line to meld into the general legal scene and considers itself more of an "intellectual property" subset of the general bar and not a "patent prosecutor" in the traditional sense of the patent attorney and agent world. This has very serious negative consequence for the patent community at large whether it is in the status and reputation of and appointments to the Federal Circuit or the PTO itself. or it is in the matter of patent legislation including funding of the agency. By calving off the top end of the patent bar from the "patent prosecutor" world, there are few spokespersons for "patents" at large. The occasional Armitage who rises to the position of Senior Vice President and General Counsel of a major Ameilcan corporation and retains active membership in the "regular" patent corruxtunity is the rarest of exceptions: Virtually none of the very top corporate executives who may even retain a "patent attorney" registration choose to primarily


4 John E. Sexton, "Out of the Box" .Thinking about. the Training ofLawyers in the NexrMillennium, 33 U. Tol. L. Rev. 189, 191-92 (2001)( ("The total number of lawyers at the Big Five accounting finns now dwarfs the number of attorneys at the five largest law firms in the world. For example, Arthur Andersen has employed more than 3,600 attorneys, 2,$00 practicing law outside the United States and another 750 lava school graduates in the United States working ire tax and corporate finance. Moreover, the legal staffs of the Big Five are expanding about 30% a year. One accounting firm suggests it will more than triple its legal professional staff in the next five years with a goal of over $1 billion in business by that year.")

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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

identify themselves with patents. In the world of private practice the diminishment of the "patent attorney" is far more precipitous than one on the outside would imagine. Except for the junior-most associate level, there is an almost total absence of any regular patent attorney practice as known at the PTO amongst any of the attorneys in the very top law firms of the United States.

Whereas every other major segment of the bar is heavily represented in the decision-making bodies on the Hill by lawyers from amongst the very elite firms, the paucity of leadership in the patent community is most striking. N'othing better illustrates the gross divide than in the megafirms where patent attorneys barely continue to exist and those that practice only occasional for the very important case or an extraordinary reason.

Patent practice at the megafirms has never been better. Huge, thriving intellectual property practices with more than 100 lawyers partaking in ever more lucrative patent litigation and dealmaking has created an economic thirst to absorb patent boutiques at an ever accelerating scale. The former "boutiques" with over more than 100 patent attorneys can hardly be considered a boutique in the sense of a generation ago when twenty to thirty or so patent attorneys were considered large tirna.s. While there are perhaps three to six or so firms on the East Coast and several and in the rest of the country that have bulked up and are likely to continue to survive, at the same tune carcasses lie on the pavement including Pennie & Edmonds and Lyon & Lyon while others like Arnold, White & Durkee have merged into megafirms. While the trend toward patent practice at the megafirms has accelerated, at the same time it has become an almost totally upper end practice that totally or largely excludes anyone in the megafirrns other than the lowest associate from doing more than a small percentage of their time on patent prosecution matters. At 11 of the 20 top revenue producing firms of the world, the average revenue produced per attorney topped $ 600,000_00; for all of the top twenty firms, the minimum average for any of the top twenty was over $ 400,000 per year. Clearly, nobody in a firm of this type much above an entry level associate carp handle a majority of patent procurement work, even for the registered patent attorneys. But, if one looks at all of the more than 30,000 lawyers in the top twenty firms less than two
,- (2) percent are even registered patent attorneys.

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Appendix to Testimony of Harold C. Wegner

Since virtually none of the even small number of registered patent attorneys at the top twenty firms has more than a minority of patent practice at the PTO, this means that a substantial number of the registered patent attorneys will simply drop from the rolls of the registered patent attorneys. For the fifteen out of twenty of these firms where the number of registered patent attorneys numbers from zero to two percent at most, a patent attorney credential is certainly not a treasured credential to carry amongst ones peers. It will also be interesting to see precisely what percent of the upper end corporate executives who have lovingly retained their patent attorney registration numbers from their days decades earlier at the start of their careers who will simply abandon their registration numbers instead of the going through the nuisance of taking a computer self-test on the filing fees for claims and other mundane matters that no longer impact their daily lives.

B. Furthering Global American Patent Leadership

The shrinking global village is a reality in the real world of legal services at the upper end of business law and practice. The President of Now York University - then the Dean of the New York University Law School - puts the dual factors of globalization and specialization in context: "The trends toward a more specialized bar and toward the consolidation of multiple professional services in single entities nay be attributable, at least in part, to the same underlying cause: the desire of both sophisticated and unsophisticated consumers of legal services (and of other professional services, for that matter) to obtain maximum service and efficiency."5

5 John E. Sexton, "Out of the Box" Thinking about the Training of La wyers in the
Next Millennium, 33 U. Tol. L. Rev. 189,191-92 (2001). Additionally, the president
states that "[s]ometimes, a specialist will deliver the economy - and this could be true
whether the transaction is complex or routine. Other times, either because the client
requires a blend of professional advice, or because a consolidated provider can reduce the
costs of identifying and monitoring the appropriate specialist, a provider of multiple
professional services will deliver the economy; again, this could be true for both the high
end and the low-end client.

"If, in fact, specialization and professional consolidation are driven by client demand, their growth will be accelerated in a globalized economy. The bar outside the United States already is more comfortable with both trends than is the American bar; and *** it is hard to imagine the American bar maintaining the status quo in. the face of significant business migration to other lands."

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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

American and British law firms have taken a global leadership role in this globalization, but a vacuum has been created in the patent field here at home as far too few lawyers knowledgeable about patents in plural countries practice in the field. Whereas every other field of federal law has been blessed with numerous.foreign lawyers who are members of the New York or other state bar are able to practice in the United States - whether here or in their home country - the PTO has arbitrarily excluded even the most qualified foreign lawyers from practice unless they change their citizenship or obtain the proper visa to suit the PTO and maintain residency in the United States. An immediate end to this xenophobia is necessary i f the United States is to play the same global leadership role in patents that it has assumed in all other areas of business law.

1. The Need for Global Experts at Home

If the United States were to admit all lawyers who are members of a state bar as is the case under the APA for all other agencies than the PTO, immediately several hundred lawyers who are Asian or European would be eligible to practice at the PTO and who have some familiarity with patents, as well as some very highly regarded international patent experts who could immediately be a part of the patent bar and provide an international understanding and leadership. If the registration test had been open to foreigners for the past generation, there would undoubtedly be at least 200 Japanese, alone, who would be registered by this time.

The liberalization of the practice of lava to foreign lawyers that has exploded in the more than thirty years since the Griffiths case has gone so far as to lead to the intervention of federal courts in state licensure practice that have sought even less restrictive practices than the PTO. This is manifested by the Wallace case 6 where a federal court has struck down the rules of the Louisiana Supreme Court that had barred a recent graduate of the state's preeminent law school, Tulane University, from taking the state bar because that person was not an "immigrant" with the "correct" visa status.' In the Wallace case, two plaintiff alien aspirants to take the

G Wallace v. Calogem, 286 F.Supp.2d 748 (E.D. La. 2003).

' 7 A foreigner who has a student visa to taste the LL.M. course is then given a one
year period to accept employment in law firms before returning to their home country-

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Appendix to Testimony of Harold C. Wegner

Louisiana bar examination were not permanent residents of Louisiana; they were denied permission to sit for the state bar examination. In voiding the Louisiana Supreme Court rule that permitted only citizens and "immigrant aliens" to take the bar examination, the federal court cited with approval policy reasons to admit the alien petitioners in the case: "Like immigrant aliens, noninnnigrant aliens `pay taxes, support the economy, serve in the Armed Forces, and contribute in myriad other ways to our society.' [In re Griffiths, 413 U.S. 717, 722 (1973)]. This Court finds that Griffiths is controlling and, thus, strict scrutiny is applicable. Nonimmigrant resident aliens as a class are a `prime example of a discrete and insular' minority for whom such heightened judicial solicitude is appropriate.' Id. (citing [U.S. v.] Carolene Products [Co]., 304 U.S. [144,] 1.52-53 n. 4 [(1938)]). Therefore, similar to Grijfzths, the Defendants bear a heavy burden when they deprive nonimmigrant resident aliens the opportunity to be admitted to the Louisiana bar."$

It is ironic that the internationally focused PTO where the Director
i travels routinely to trilateral meetings in Japan and elsewhere to foster
international cooperation is undercut by the lower level OED and its rules
that proscribe even the best and brightest foreign lawyers who are members
of state bars and who have been patent attorneys fully registered to practice
at the PTO are stripped of their PTO registration numbers when they have
the temerity to leave this country.

There are numerous examples of some of the leaders of the patent bar who have been denied registration at the PTO because of an arbitrary application of citizenship or residency requirements. Various distinguished international experts who have become successful members of a state bar in the United States have been granted registration as patent attorneys but are stripped of this recognition if they leave the United States or otherwise have a visa status other than one on the approved list of the PTO.

$ Wallace, 286 F.Supp.2d at 763. It is recognized that there are different standards for judging the action of a state versus that of the Federal government. However, the same underlying policy rationale should apply with equal force-

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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

Jacobus Rasser, a member of the Ohio bar and a registered patent attorney who later became Vice-President and the top patent attorney for the worldwide Cincinnati-based Proctor & Gamble was stripped of his patent attorney registration simply because he left the United States to return to Europe.y Dr. Bernhard Geissler, a renowned patent scholar at the Max Planck Institute in Munich before coming to America and a leading attorney at law for Phillips Petroleum was permitted to be a patent attorney but with the proviso that when he returned home to Germany he would be stripped of that qualification; he later did and then became a senior name partner in what is now the Municb-based Bardehle Pagenberg firm. '° Eiji Katayarna is one of Japan's most renowned bengoshi and benrirhi and a member of the New York bar and also an electrical engineering graduate of the highly respected Kyoto University; his command of the nuances of patent law on a global basis would make him a natural to enrich American practice - but he at least had the good common sense when he was at New York University Law School in its LL.M. program not to even consider filing a petition in the wake of the Geissler and 12asser decisions. What a loss for the American patent system. An Israeli national who passed the examination was denied registration on the basis that she is an alien; a petition to register was granted because she was a permanent resident, but with the proviso that "[i]f [she] ceases to reside in the United States, the Committee on Enrollment is *** directed to remove [her] name from the register of agents."" A French employee of SchlUmberger was admitted to practice in the United States but was notified that he would be stripped of, leis registration if he moved back to France. 12

9 In re Rasser, 1985 WL 71975, 228 U.S.P.Q. 607 (Com'r Pat. & Trademarks 1985).

1°In re Geissler, 1974 WL 19945, 182 U.S.P.Q. 499 (Corn'r Pat. & Trademarks 1974).

1 1 In re Yokoyama, 1.976 WL 20865, 194 U.S.P.Q. 110 (PTO Con * PTO 1976)

'Zln re Gressei, 1976 WL 21210, 189 U.S.P.Q. 350 (PTO Com'r Pat. 1976)("[P]etitioner is lawfully, albeit temporarily, in this country to render services to his employer. Accordingly, inasmuch as petitioner bas demonstrated that he is `possessed of the legal and scientific and technical qualifications necessary to enable him to render applicants for patents valuable service,' *** petitioner is hereby granted limited recognition *** to prosecute *** any patent application in which the owner of record ***

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Appendix to Testimony of Harold C. Wegner


There is nothing at all subtle about the PTO's plan to discriminate against aliens, to bar them from registration before the PTO. Indeed, ever since 1984, while other jurisdictions have liberalized the admittance of foreigners to bars, the PTO has sought to further exclude foreigners whenever possible. Thus, going back twenty years ago to the tine the PTO started the trend of restriction of foreigners as patent attorneys or agents, it recognized that it could admit non-citizens; but, it stated in 1984 that "[t]here is no known legal requirement or other public policy which compels or makes desirable the registration or continued registration of non-citizens residing in a foreign country". 1 3

The rules themselves focus upon the exalted status of U.S. citizenship - to the point of welcoming citizens to practice even if. they reside in Japan or elsewhere. 14 But, unless one is a Canadian and can freely enter American practice with no qualifications under U.S. law, an alien may only be registered "[w]hen appropriate"15 and only if he or she "lawfully resides in the United States". 16 Furthermore, even if "lawfully resid[ing] in the United States", the proposed rule states that "such registration [must not be] inconsistent with the terms upon which the alien was admitted to, and resides in, the United States.]" 1'

is Scblumberger, Inc. The limited recognition will remain in effect during the period *** that petitioner's [ ] visa remains valid and petitioner remains in the United States.")

is Practice Before the Patent and Trademark Qface (notice of proposed rulemaking), 49 FR 33790, 33793 (1984)("One comment suggested that § 10.6 should be changed to permit a non-citizen registered under paragraph (a) to remain registered even if the non-citizen ceases to reside in the United States. The suggestion is not being adopted. *** There is no known legal requirement or other public policy which compels or makes desirable the registration or continued registration of non-citizens residing in a foreign country other than under the conditions specified in [the] proposed [rules]."). 14 Changes to Representation, 68 Fed. Reg. at 69517; proposed 37 CFR § 11.6(a), Registration of attorneys and agents. ("Any citizen of the United States who is as attorney and who fulfills the requirements of this Part may be registered as a patent attorney to practice before the Office.") 151d.


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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner


Even if a foreign national has already been registered and may be a member of a state bar, he can be eliminated from the rolls if he moves away. Thus, he is removed from the register of attorneys unless "the alien continues to lawfully reside in the United States and registration does not become inconsistent with the terms upon which the alien continues to lawfully reside in the United States[,]"" Parallel rules of exclusion are provided for patent agents. 19

The commentary accompanying the proposed rules states that "[c]itizens of the United States could be registered regardless of their residence. The OED Director could register resident aliens, under appropriate circumstances."2° The explanation of the proposed rules makes it clear that "appropriate circumstances" would be cut right to the bone to as conservative a view as possible with the aim of excluding foreigners from practice before the PTO. Thus, "[t]he proposed riles would reshict circumstances under which an alien could be registered. Registration would be precluded if the practice of patent law before the Office is inconsistent with the terms of any visa under which the alien is admitted to and continues to reside in the United States. Registration would be precluded, for example, when the visa petition does trot describe that the alien as being authorized to be employed in the capacity of representing patent applicants before the Office. See In re Richardson, 203 USPQ 959 (Comm'r Pat. 1979) (alien admitted to U.S. with H-3 visa for training could not practice patent law under terms of the visa), and In re Mikhail, 202 USPQ 71 (Comn'r Pat. 1976) (alien admitted to U.S. on B-1/B-2 visa and visiting the U.S. temporarily for business or pleasure could not practice under the terms of the visa). It is nevertheless appropriate for some aliens to be granted limited recognition under § 11.9. See In re Messulam, 185 USPQ 438 (Comm'r Pat.

'7 jd.

's Changes to Representation, 68 fed. Reg. at 69517; proposed 37 CFR 11.6(a); or, an exception is provided for reciprocity, as discussed infra.

19Id.; proposed 37 CFR § 11.6(b).

20 Changes to Representation, 68 Fed. Peg. at 69446; emphasis added.


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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

1975) (granting lin-iited recognition to alien admitted to U.S. on L-1 visa for purpose of rendering service to a single company for whom the alien had previously worked abroad and who would remain in the U.S. temporarily). See also In re Gresset, 189 USPQ 350 (Comm'r Pat. 1976)."''

In other words, the PTO would grudgingly register aliens who are residents of the United States on a par similar to the "immigrant" status of the Louisiana Supreme Court - thrown out in the Wallace case.

Enlightened jurisdictions exemplified by New York have globalized the profession, both in terms of welcoming foreign-trained law students into the ranks of full state bar membership and also - as in the case of Massachusetts - by permitting otherwise domestically unlicensed foreign lawyers to be registered as consultants who can join local state partnerships; yet, the patent bar licensure standards stick to a common denominator "Louisiana" level of xenophobia that seeks to exclude foreigners to the limits permitted by the federal courts.

Z. Canadians "Yes" - Japanese "No"

The discrimination is not universal. Thus, for example, Canadians are routinely registered without an examination but merely based upon their home country national registration.22 This special treatment four Canadians is clearly positive for the United States in that it permits ,American patent applications for Canadian nationals to be written by Canadian patent agents who would draft the applications even if'they were not registered in the

2 1 Changes to Representation, 68 Fed. Reg. at 69446; emphasis added.

22 Changes to Representation, 68 Fed. Reg. at 69518; proposed 37 CPR § 11.6(c), Foreigners ("Any foreigner not a resident of the United States who shall file proof to the satisfaction of the OED Director that he or she is registered and in good standing before the patent office of the country in which he or she resides and practices, and who is possessed of the qualifications stated in § 71.7, may he registered as a patent agent to practice before the Office for the limited purpose of presenting and prosecuting patent applications of applicants located in such country, provided that the patent oftee ofsueh country allows substantially reciprocal privileges to those adanitted to practice before the
,, Office. Registration as a patent agent under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.").


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Appendix to Testimony of Harold C. Wegner

United States, but, because they are registered, fall under the Axnefcan disciplinary rules and presumably are better in tune with American regulations and practice. The practice clearly shows that some foreigners are welcome to practice in the United States - even without a United States examination, permitting their entry easier than for some Americans who must take their own country's examination to be registered to practice.

The discriminatory treatment favoring Canadian agents has been accepted even by the courts in an earlier era. For example, an American practitioner unsuccessfully challenged the Commissioner of Patents on the policy of registering Canadian agents in the Cantor case. 23

The United States abdicates the possibility of better control over the literally hundreds of thousands of Amencatl patent applications that have been filed by Japanese companies in the United States over the past generation. As in the case of Canadian origin applications, Japanese applications are drafted in the first instance by Japanese in their home country. There is nothing unique about this universal practice: The traditional practice is that the "home country" patent practitioner drafts the original application as a priority basis for global filing. 24 If the United States were to admit the best and brightest Japanese - or other nationals - to the U.S. patent attorney or agent practice, then instead of having almost all drafts of patent applications prepared by an unregistered attorney, the reputation that would be gained in Japan - and elsewhere - for skill in the United States practice would lead to Japanese registered to practice gaining a greater share of their home country patent application. work. In turn, the United States PTO would benefit by having registered patent attorneys or agents draft the applications, persons under greater influence from the PTO to keep up with regulations and abide by U.S. standards of practice.


23 Cantor v. Parker, 1979 WL 25098, 205 U.S.p.Q. 584 (E.A.Va. 1979)(Bryan, J.). However, the case was dismissed on procedural grounds because of inadequacies of the plaintiffs pleading, and none of the issues of discrimination mentioned here were addressed.

24U»der the Paris Convention, a filing in the United States - or any union state -r is dated back to the "home country" fling date if certain formalities are met and the home country application substantively meets the requirements of the United States. There is a one year deadline to file under the Paris Convention.

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While the same case could be made for German or French or other foreign practitioners, the practical impact of the Japanese practitioners dwarfs that of all other foreign countries:
App-, p 'l7
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World Total 702,000
DEPARTMENT Oh COMMERCE
Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner
FIRST FILINGS BY COUNTRY OR REGION (1997; 2001)2-5
local frsi filings and world percentage
1997 2001
Japan 349,000 50 % 383,000 45
U.S. 119,000 17 175,000 21
EPC States 107,000 15
122,000 14
"Other" 127,000 18 170,000 20
849,000
2$ Statistics are based upon the Trilateral Statistical Report 2002, § 3.2, Parent Filings by Blocs, Graph 3.3, First Filings by Regions littp://www.uspto.gov/web/tws/-t--sr2OO2/ch3/3 2.htm1. The official commentary states that "(first filings have been increasing steadily. Although the rate of increase reached 10.1% from 1999 to 2000, the increase was only 2.7% from 2000 to 2001. Japan recorded the highest number of first filings in 2001, but the figure of 382,815 represents a slight decrease compared to the previous year's total of 384,20'1. The EFC contracting states have also recorded a slight fall in the numbers of flings, from 124,326 in 2000 to 121,387 in 2001." Going beyond the statistics in the table, the commentary notes that "[t]he total number of first filings in 2000 was 826,578. From these first filings, one year later, in 2001, 454,762 subsequent flings were registered. Thus on average one invention, for which one first filing was made, led to 0.55 subsequent applications. Considering the demand for patent rights generated by one first tiling, for one invention a first filing in 2001 led to 13.4 subsequent applications for patent rights. Three years ago, the rate was at 7.4". http://www.ugpto.gov/web`/tys/tsr2002/ch3/3* 2.htm1
App., p 18
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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

In terms of the sheer number of filings by Canadians and Japanese in their local patent granting authorities, in the Pacific Rim amongst the top six countries, the United States and Japan account for roughly ninety percent of all filings from the leading Pacifc Rim countries.26

1. Japan 109,000
2. United States 88,000
3. Korea 22,000
4. China 5,000
5. Australia 1,000
6. Canada 1,000

The PTO has recognized for many years that to more efficiently handle the patent procurement process at its local office it must better coordinate and handle the filings from abroad - and particularly from Japan, the number one overseas filer of patent applications in the United States.

The importance of Japanese filings amongst the major patent granting authorities of the world is demonstrated by the flow of-appaiea4-iowi-s2-m-~s~aest the trilateral blocs27 :

Japan to U.S. 67,000
U.S. to Japan 48.000
Japan to Europe 30,000
Europe to Japan 42,000
Europe to U.S. 73,000
U.S. to Europe 57,000

'6 Patent application filings by country (2001), WIPO IPStat/2001/A, htta://www.vyipo.int/ipstats/em/publications/a/pdf/p atenLs.d If all countries of the world were counted in the surveys, the rankings would be reordered below the second rank. For example, Germany would be third with 19,000 - with other European countries also bumping lower ranked countries; even outside the European patent convention, several countries would be bumped downwardly by the Russian Federation (14,000) and the Ukraine (10,000).

27 Trilateral Statistical Report 2002, § 3.3, Interbloc Activity, Graph 3.10, Flows ofApplications between Trilateral Blocs http://www.uspto.gov/web/tws/tsr2002/ch3/3-3.htinl


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For more than a generation, Japanese nationals who have trained in. the United States have sought, often successfully, to be permitted to take the U.S. patent examination, often with success, but then upon their change in visa status or return home to Japan have been removed from the registration rolls. Instead of having the', imprimatur of being U.S. patent attorneys or agents, and thus both being under the control of the U.S. OED arid having an increased roll in preparing United States patent applications, the OED has denied continued registration status, thereby diminishing its roll in policing the American patent applications of Japanese origin. 2g

Clearly, a residency requirement for Japanese but not Canadians is antithetical to the interests of the United States, as well as swimming upstream against the trend of the law to permit practice without a residency requirement. 29

C. Free Registration for "Unqualified" Favored Classes

While the two previous sections demonstrate the disqualification of a large class of lawyers and foreigners who are or who could become patent experts, ironically at the other end of the scale of arbitrary practice the PTO freely admits to practice whole categories of lawyers who are not possessed of the technical background required for others or who may have uo


2sA simplistic answer is that only American patent attorneys and agents should prepare the drafts of U.S. patent' applications. This is no more feasible than having Japanese patent attorneys prepare the initial Japanese applications of American applicants. In .fact, the Japanese do a far better job of involvement of their own patent professionals in the United States practice than Americans do in Japan. Thus, there have been literally thousands of Japanese patent practitioners who have resided in the United States over the past forty years - some for months and others for years - who have worked to learn the U. S. practice, generally working within patent law firms who handle the work for their employer in the United States. The converse virtually never happens.

29 New Hampshire v. Piper, 470 U. S. 274 (1985) (holding that a requirement that attorneys must be residents of the state in order to be admitted to practice law violated the Privileges and Immunities Clause, Article TV, Section 2 U.S- Constitution). See also Wallace v. Calogero, 286 F.Supp.2d 748 (E.D. La. 2003).

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experience at all in patent law other than perhaps having "[p]rovided substantial guidance on *** changes to the Manual of Patent Examining Procedure[.]" The patent attorney or agent registration is viewed by the PTO officials as a golden parachute for themselves and their employees. By keeping the number of registered patent attorneys and agents mininuzed through hardball restrictive policies toward outsiders, a free ride is given to registration to numerous employees of the PTO, including some who clearly never have achieved the technical qualifications by university tecbnical degree or practice and all without exayaination that is required of all others. Nothing could be more arbitrary or capricious than this practice.
While the PTO plays excludes clearly competent attorneys at law, it provides a special golden parachute to patent, examiners who may have never even practiced drafting a single claim. particularly from the understanding of an enforceable scope and who are not lawyers - provided they have served a four year period as patent examiners. Already not later than the 1960's it was clearly recognized by the leadersbip of. the PTO that one or two years is the maximum period of time needed to gain whatever skills one needs to meet the minimum requirements of a patent attorney insofar as examiner skills may be concerned, but that the four year period was maintained (if not originally created) as a tool to get examiners to serve for four years -both to gain as much value from the examiner as well as to hope that the examiner may be wore satisfied and stay with the office by staying this longer period. But, the four - or ten or twenty - year examiner is not any more necessarily skilled in drafting claims for an enforceable scope than one with two years. Clearly, an examination should be required
Conversely, there are some in the PTO who have not examined at all or if they have the time period was so long ago that they are not necessarily up to speed with the requirements of the PTO today in terms of the nuts and bolts that are tested on the patent examination. Or, some PTO officials are lawyers who are clearly not qualified in terms of the same technical requirements that are imposed on those not specially privileged by the in house rules made to favor the in house retirees. Thus, sunder 37 CFR §
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Appendix to Testimony of Harold C. Wegner

Examining Procedure[.]" So, too, is anyone in the OED entitled to automatic registration because he has "develop[ed] training or testing materials for the patent examining corps[J" 37 CFR § 11.7(d)(3)(a)(i). While a Federal Circuit clerk expert in patent law from service on that court cannot be registered without a technical degree, if they perform a stint at the PTO in the Solicitor's office and "represent[ ] the Office in patent cases before Federal courts" they are given an automatic registration under 37 CFR § 11.7(d)(3)(a)(ii). Or, if one is a former Under Secretary of Commerce who has signed regulations for the Federal Register and has thus "[p]rovided substantial guidance on patent examination policy" this may well qualify without a technical background or test under 37 CFR § 11.7(d)(3)(a). SeeAPPENDIXII: THE ROGAN EXCEPTION FOR FREE PTO REGISTRATIONFOR UPPER END PTO OFFICIALS.

III. TOWARD A UNIFIED FEDERAL PATENT BAR

A. The Failed Paradigm of Narrow Agent practice.

"(P]atent agents are usually just as well qualified as patent attorneys**."

- Official PTO Web Statement3°

The PTO provides little guidance for the public to differentiate amongst attorneys and agents. Indeed, neither the phrase "unauthorized practice" nor. the Sperry case is ever even mentioned in any section of the Manual of Patent Examining Procedure. 31 To measure the truth of the

30 This is the only distinction between a patent attorney and a patent agent acknowledged by the PTO on its website under `ATTORNEYS AND AGENTS', said to be "excerpted from General Information Concerning Patents print brochure," http://www.tLsRto.gov/web/office s/pac/doe/general/attomey.htm [downloaded December 29, 2003]. The more complete quotation is that "hisofar as the work of preparing an application for a patent arid conducting the prosecution in the Patent and Trademark Office is concerned, patent agents are usually just as well qualified as patent attorneys


31 Searches carne up without hits on the Manual ofPatent,Examining Procedure on Westlaw on January 4, 2004 for "Spent'" and for "unauthorized practice".


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Appendix to Testimony of Harold C. Wegner

official imprimatur on patent agents as "are usually just as well qualified as patent attorneys," one needs to first see precisely what an attorney can do that an agent cannot. Only then will it be seen whether equality is possible.

There is thus hardly anyone who can be a "patent attorney" or "patent agent" who can practice before the PTO without a state bar licensure because of the extreme limitation that has been placed upon the scope of the licensure both by the courts and the PTO itself. Thus, "[p]atent agents are persons who are registered to practice before tile P.T.O., but who are not attorneys. At one time, much of the work of preparing patent applications was done by patent agents, 'many of whom had independent practices. Today, patent agents usually are law clerks who have passed the Patent Bar Exam, but who have not fnished law school. ,32 They "may not render validity or infringement opinions since they are not licensed to practice law."3

Patent licensure permits little more than one being a law clerk -beyond the actual drafting of patent applications and their prosecution, or performing legal work such as assignment drafting under the supervision of a licensed lawyer. The licensure in the early 1960's covered only that much .34 In .1Vlahoning County, the Ohio tribunal noted that "the United

32 Kinney 3c Lange, P.A., Intellectual Property Law for Business Lawyers, § 1.2,
The Practice Of Intellectual Property ,Law (West 2003).

33 Id.

34 See Sper7y v. State offla. Ex rel. Florida Bar, 373 U.S. 379, 400 n. 43 (1963), citing Chicago Bar Assn v. Kellogg, 88 N.E.2d 519 (I11.App. 1 Dist. 1949). In Kellogg, 88 N.E.2d at 524-25, the court held that "tbe rendering of opinions relating to the infringement of patents and the enforcement of patents and trade marks very definitely involves the practice of law [beyond the licensure of the Patent Office to prosecute patent applications]. Whether or not a patent is violated depends upon many factors, which question can only be determined by the courts, federal or state as the case may be, presented by duly licensed attorneys at law. When a lawyer is called upon to examine and render an opinion upon the title to a patent, he must not only have the knowledge enabling him to construe instruments of record in the Patent Office, but he must also have a wide knowledge of law which will involve collateral issues entering into the ultimate decision. He must be familiar with the laws of descent and distribution, bankruptcy, contracts, and civil practice, all of which are particularly within the field of an attorney at

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Appendix to Testimony of Harold C. Wegner

States Supreme Court [in Speny]strictly limited application of the federal supremacy doctrine: `[T]he State maintains control over the practice of law within its borders except to the limited extent necessary for the accomplislunent of the federal objectives. "'3s It thus "conclude[d] that the state of Ohio has the authority to regulate conduct by a federally registered patent attorney in matters outside the scope of authority granted by federal law. Ohio thus joins other sates in determining that the unauthorized practice of law falls within the jurisdiction of the state regulating body, w nether the source of the law practiced is the state of Ohio, another state of the United States, the United States, or a foreign coUntry_"36 While clearing the respondent of unauthorized practice of law relating to prosecution of a reexamination proceeding, ancillary conduct was held to be the unauthorized practice of law. j'

A New Jersey advisory opinion provided~comprehensive guidance on the scope of federal licensure,38 dealing with patent attorneys and agents who are not a member of the New Jersey bar.39 The opinion held that "[a]


law, and from which field all others are excluded. Opinions and advice pertaining to the preparation, construction and enforcement of licenses, sublicenses, cross-licenses, and the like, require legal skill and knowledge and must be based, not only upon an examination of facts, but upon sound conclusions of law. Only an attorney at law is authorized to perform such service for a fee. That the practice of patent law is a highly specialized .field is to be admitted, but it is ably covered in this State by the many capable attorneys at law who are there practicing." Kellogg, 88 N.E.2d at 524-25,

35 Mahoning County Bar Assn. v. Harpman, 608 N.E.2d 872, 575 (Ohio Bd.Unauth.Prae.1993)(quoting Sperry, 373 U.S. at 402).


3'
3 61d.

Id. at 579 ("[R]espondent has engaged in the unauthorized practice of law by (1) the preparation anti signing of documents containing legal opinions outside the scope of authority granted him by federal law; *** and (3) acting on behalf of another to negotiate the settlement of the pending Conrad/GPAC litigation").

38 Patent Attorneys and Agents, New Jersey Unaath. Prac.Op. 9, 95 N.J.L.J. 269, 1972 WL 19655 (NJ.Comm.Unauth.Prac. 1972),

39 As used in this opinion, the term "Patent Attorney" designates a person
registered to practice before the United States Patent Office and licensed to practice law

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Patent Attorney or Agent not admitted to practice law in the State of New
Jersey may not lawfully engage in any of the following activities within the State of New Jersey:

"(a) He may not advise his client as to the ownership of. an invention such as where a question of ownership arises by virtue of employment or other
contractual relationship between his client and others.
"(b) He may not advise his 'client as to what the client's rights may be under forms of legal protection available tinder federal or state law which are
alternate to patent protection, such as trade secrets, unfair competition, trade marks, copyrights, and anti-trust law; provided, however, that he may advise his client that there are alternate forms of legal protection on which he
should seek advice from an attorney admitted to practice in this state.
"(c) He may not advise a client on matters concerning the validity of a patent, except incident to the filing and prosecution of a patent application. "(d) He may not advise a client on matters concerning the infringement of a patent, except incident to the filing and prosecution of a patent application.
"(e) He may not advise a client in matters concerning the scope of the
monopoly granted in a patent, except incident to the filing and prosecution of a patent application.
"(t) He may not prepare contracts or licenses dealing with patent rights. "(g) He may not prepare assignments of patent rights, except such assignments as are filed simultaneously with a patent application. "(h) He may not advise his client in matters concen-.ing contracts, licenses or assignments dealing with patent rights except as the same may directly affect and be incident to the filing and prosecution of a patent application.
"(i) He may not advise a client respecting litigation in the Courts of the State of New Jersey, including litigation involving issues rising under patent law. " (j) He may nor advise clients concerning rights or liabilities in connection with trade marks nor may he represent clients in the assertion of trade mark rights or in defense of liability under trade mark rules.
"(k) He may not represent clients in the filing and prosecution of applications for registration of trade marks nor the prosecution of

in a jurisdiction in the United States other than New Jersey, but not in New Jersey; and the terms "Patent Agent" designates a person registered to practice before he United States Patent Office and not licensed to practice law in any jurisdiction in the United States.


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Appendix to Testimony of Harold C. Wegner

oppositions to the registration of trade marks in the United States Patent Office unless and except to' the extent that Congress may preempt this field of law."A°

Under the current regulations as revised in 1985 when the Office of Enrollment and Discipline (OED) was born, the PTO went out of its way to avoid conflict with state bars by expressly noting the very limited nature of its licensure of patent attorneys and agents, both through a very narrow regulation as well as its official commentary that accompanied its enactment. This is explained both in the official comments published in the Federal Register4' and by the Director of the Office of Enrollment and Discipline and others.42 Thus, the express limitation of the right to practice before the


4o yd

4' Practice Before the Patent and Trademark Office (notice of final rulemaking), 50 Fed. Reg. 5158, 5161 (1985)("It is not, and has never been, the intention of the PTO to
,r regulate conduct except to the extent necessary for the accomplishment of federal objectives. Thus, only that conduct which is relevaait to the practice of patent, trademark, or other law before the PTO is what the PTO seeks to regulate. The preamble of § 10.1 indicates that Subpart 10 governs solely the practice of patent, trademark, and other law before the PTO. As noted in the preamble to § 10.1, `[n]othing in this subpart shall be construed to preempt the authority of each State to regulate the practice of law, except to the extent necessary 'Cor the Patent and Trademark Office to accomplish its federal objectives.' See Sperry v. Florida ex rel. Florida Bar, 373, U.S. 379, 402 (1963). See also Michigan Canners and Freezers A,w'n. v. Agricultural Marketing and Bargaining Board, 104 S.Ct. 2518, 2523 (1984) (State Law is preempted when it stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress) and Fidelity Federal Savings and Loan Assn. v. de la Cuesta, 102, S.Ct. 3014, 3022 (1982) (federal regulations have no less pre-emptive effect than federal statutes.)").

42 The changes in the regulations were implemented with the conunentaiy
accompanying their final introduction being published as Practice Before the Patent and
Trademark Office (notice of final rulemaking), 50 FR 5158 (1985), and explained by the
inaugural Director of the OED who has held that position until recent years. Cameron
Weiffenbach, Attorney Conduct;and the U.S. Patent and Trademark Office, 14 AIPLA
Q.J. 73 (1986). One commentator (discussing the 1985 regulations) has noted that "[t]he
PTO plainly states that the purpose of 37 C.F.R § 10.1 is to minimize preemption of state
control of the practice of law." Paul I. Herman, The Texas ,Disciplinary Rules of
Professional Conducl v. the Patent and Trademark Ofce Code of Professional
Responsibility, 2 Tex. Intel]. Prop. L.J. 31, 37 (1993)(citing Practice Before the Patent
and Trademark Office (notice of final rulemaking), 50 FR 5158 (1985)). The Director of

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Appendix to Testimony of Harold C. Wegner

Office as being strictly limited to drafting and prosecution of patent applications and a few other matters like reexamination is underscored by the statement in the regulations themselves that "[tjhis part [of the Ruler of Practice relating to practice before the PTO] governs solely the practice of patent, trademark, and other law before the Patent and Trademark Office. Nothing in this part shall be construed to preempt the authority of each State to regulate the practice of law, except to the extent necessary for the Patent and Trademark Office to accomplish its federal objectives. A3 In the official comments accompanying the publication of the regulations, the "federal objectives" insofar as patent practice is concerned are defined quite narrowly to be focused upon what "[t]he PTO engages in [which is] the examination of applications for patents, reexamination of issued patents *** and numerous inter partes patent *** proceedings."44

The PTO expressly declined to go beyond regulation of anything other
than what directly impacts its own examination activities (or other
enumerated areas of practice), The PTO comments at the time of final
implementation of this rule' ,state that "[i]t is riot, and has never been, the
intention of the PTO to regulate conduct except to the extent necessary for
the accomplishment of federal objectives. Thus, only that conduct which is
relevant to the practice ofpatent, trademark, or other law before the PTO is
what the PTO seeks to regulate. "4'S

the OED at the time of the 1985 rulemaking interpreted Sperry as "mak[ing it] clear the P.T.O.'s intent to regulate only conduct related or relevant to practice before the P.T.O." Weiffenbach, 14 AIPLA Q.J. at 90 n. 19.

43 37 CfR § 10.1; emphasis added.

4 Practice Before the Patent and Trademark Office (notice of final rulemaking), 50 FR 5158, 5161 (1985)("[A] commentator noted the language `federal objectives' in § 10.1 and felt it would be appropriate for the PTO `to set forth what the federal objectives really are.' The PTO does not believe it is appropriate to set out in the regulations specific federal objectives. The PTO engages in the examination of applications for patents, reexamination of issued patents, examination of applications for . registrations of trademarks, and numerous inner partes patent and trademark proceedings. The federal objectives of the PTO center around these activities.").

°SSee Practice Before the Patent and Trademark Office (notice of final rulemaldng), 50 FR 5158, 5161 (1985) (citing Sperry v. Florida ex rel. Florida Bar, 373, U.S. 379, 402 (1963))(emphasis'added). Additionally, the Office said in comments

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Both patent attorneys and agents perform the overlapping services of drafting and prosecuting patent applications. Only the patent attorney has the practical experience to gain a patent of predictable scope of enforceability and validity because of his unique experience with infringement and validity opinions and litigation; in contrast, the patent agent is at best able to predict the literal wording of a claim at the end of prosecution and the palentability of an invention - a far cry front the more important determination of 'scope of enforceability and validity.

Thus, obtaining a claim that is crafted to cover an accused embodiment and its equivalents that has the proper enforceable scope and which will be held valid is an entirely different matter than whether a claim that is drafted by a patent agent will have wording that covers such an embodiment and which is patentable in the granting process. Since the patent agent lirnith-Lg his practice to the scope of his licensure has no practical experience whatsoever in determining infringement and validity of a patent, it is pure happenstance whether claims that are granted will provide ail effective patent instrument.

The absence of any practical experience for a patent agent wbo works without lawyer supervision is seen from the nature of the agent's practice.

The normal work of a patent agent starts with the drafting of a patent application and concludes vvitli the grant of the patent." The drafting exercise includes the nomination of the true and often joint inventorship, but does not include the drafting of a contract to assign the rights of the inventors to a corporate employer or third' person.4' While the filing of the


immediately following the quoted passage that "[t]he preamble of § 10.1 indicates that Subpart 10 governs solely the practice of patent, trademark, and other law before the PTO. As noted in the preamble to § 10.1, `[n]othing in this subpart shall be construed to preempt the authority of each State to regulate the practice of law, except to the extent necessary for the Patent and Trademark Office to accomplish its federal objectives."' Id.

46Additionally, the patent agent may be involved in reexamination of a patent, 35 USC § § 302 et seg.. The patent agent also may be involved in a patent interference or reissue of a patent.


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assignment -- including an assignment forms - is within the scope of the licensure of the patent agent, the drafting of the an assignment including an assignment form - is prohibited to a patent agent insofar as this is the practice of law outside his or her patent agent licensure. Since almost every patent application - particularly those with two or more coinventors - has an assignment of rights which is to be filed with the PTO, it is essentially impossible for a patent agent to work as a sole practitioner or without the services of an attorney at law.41

In drafting the patent application, the claims are prepared by a patent agent with a goal to securing a certain literal scope - which may or may not but quite frequently does not perfectly correspond to the legal or equitable scope of protection that a patent will afford if there is a judicial determination of infringement. The patent agent may have studied doctrines of patent enforcernetit and may have a theoretical knowledge of the scope of protection that is judicially afforded, but has absolutely no practical experience in this area to help guide the patent agent to prosecute a patent application to obtain the appropriate scope of enforceable protection:

a1Often, the contract is a simple filling out of an assignment fora z, such as the
PTO's model form, Assignment of Patent., http-,//www.uspto.gov/Web/fon-ns/sbOO15.pdf

4sld.

49 Even ill the case of two "friends" who do not intend to assign the invention to a third party but only to "share" the invention, American patent law makes it imperative that there be a prospective assignment early in the application process even amongst the two inventors. For example, an agreement could stipulate just which or the two inventors would have the right to exploit the invention or to assign or license others -- which could be jointly done or otherwise. Without such an agreement, unlike the laws of Europe or Japan, then either inventor would have the right to license or assign the use of the invention unilaterally to a third party, all without the pcrmission of the other inventor and without sharing any of the compensation gained for the assignment or license. Both inventors could each assign their rights to different parties. See 35 USC § 262. Assigiunent of the foreign rights will also require a contract under local (state) law that is outside the licensure of a patent agent - even the filling in of assignment forms prepared by a foreign patent agent: Although the purpose of the contract is to deal with foreign patent rights the contract is made locally under American (state) law that is outside the licensure of the patent agent.


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Appendix to Testimony of Harold C. Wegner

The patent agent licensure is strictly mutually exclusive from rendering opinions on the enforceable scope of a patent.

While the basis for the doctrines relating to the enforceable scope of protection stems from actions taken by the patent agent during procurement of the patent, the problems that are created are latent problems during procurement because they are often irrelevant to the granting procedure. Thus, the scope of the claim for prosecution is to be read using the common language of the claim in as broad a manner as is reasonable, without regard to the prosecution history that is being developed and with regard to the specification only in terms of an interpretation consistent with any definitions of claim terminology in the specification." Thus, while the "broadest reasonable interpretation" of the claim wording is given during prosecution, 51 the actions of the patent agent both in drafting the patent application and during prosecution may lead to an enforceable scope of protection that is markedly dierentj2 - which could well be outcome

i 5° "During patent examination, the pending claims must be `given their broadest
reasonable interpretation consistent with the specification."' MPEI' § 2111, Claim
Interpretation; Broadest Reasonable Interpretation (8th ad. 2003)(In re Hyatt, 211 F.3 d
1367, 1372 (Fed. Cir. 2000)).

5 1Id.

523MInnovative Properties Co. v. Avery Dennison Corp., - F.3d -, 2003 WL 22844387 (Fed. Cir. 2003)(Clevenger, .1.) ("A tern's ordinary meaning, however, must be considered in the context of all intrinsic evidence, namely the claims, the specification, and the prosecution history. See Rexnord [Corp. v. Ladtram Corp]., 274 F.3 d [1336,] 1342-43 [(Fed.Cir. 2001)] (explaining that claim terms must be examined in light of the specification and the prosecution history); cf. Girt v. Logitech, Inc., 254 F.3d 1334, 1339-40 (Fed.Cir.2001) (defining intrinsic evidence). While limitations in the specification must not be routinely imported into the claims because a patentee need not describe all embodiments of his invention, see Rexnord, 274 F.3d at 1344, a definition of a claim term in the specification will prevail over a term's ordinary meaning if the patentee has acted as his own lexicographer and clearly set forth a different definition, see Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d [1193,] 1204 (Fed. Cir. 2002)](noting that `the inconsistent dictionary definition must be rejected' if the specification rebuts the presumption of ordinary and customary meaning); Rexnord, 274 F.3d at 1342. `This court also considers the prosecution history... to determine whether the applicant clearly and unambiguously 'disclaimed or disavowed [any interpretation] during prosecution in order to obtain claim allowance." Middleton, Ire. v. Minn. Mining do Mfg. Co., 311 F.3d 1384, 1388 (Fed.Cir.2002) (quoting Standard Oil Co. v. An%.

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determinative in the worth of the patent that is granted. An agent may make a misstatement concerning the scope of some of the claims that is difficult to overcome in litigation.53 Or, if there aye defects in the claims that could have resulted in a rejection,of the claims during prosecution, the matter may well be dealt with in a judicial construction during enforcement proceedings that merely resulted in a different scope of protection,54

It is also true that a patent agent has a limited exposure to postpatenting matters in the area. of patent reexamination. But, here, too, he learns nothing in terms of tie post-patenting interpretation of patents as in a patent litigation context. Thus, the same "broadest reasonable interpretation" standard from ex parte prosecution before grant is applied equally in the case of a patent reexamination. A seemingly broad patent claim that covers an accused infringing embodiment within its literal wording could well have been rendered deficient because of a latent error of prosecution whereby "prosecution disclaimer" may be found - a doctrine having absolutely nothing to do with gaining the grant of the patent and


Cyanamid Co., 774 F.2d 448, 452 (Fed.Cir_1985)) (alteration in original); see also Omega Eng'g. Inc. v. Raytek Corp.. 334 F.3d 1314, 1324 (Fed.Cir.2003) (noting that `the doctrine of. prosecution disclaimer' does not apply `where the alleged disavowal of claim scope is ambiguous').°')

s3 IntervetAmerica, Inc. 'v. Ffee-Yet Laboratories, Inc., 887 p.2d 1060, 1054 (Fed. Cir. 1989)(Rich, J.)(giving claim broad construction despite untrue statements of patent agent)("In the `Remarks' accompanying the amendment, however, the attorney [sic] made the unqualified and now admittedly untrue statement that `the claims are restricted to a single vaccination scheme."')

sold. (quoting ACS Hospital Systems, Inc. v. Monte, flare Hospital, 732 F'.2d 1572, 1577 (Fed.Cir.1984), citingKlein v. Russell, 86 U.S. (19 Wall.) 433, 466; Turrill v. Michigan, S. & NIL R.R., 68 U.S. (1 Wall.) 491, 510 (1864))("With respect to claim construction, claims in litigation are to be `so construed, if possible, as to sustain their validity- M).

ss In re Etter, 756 F.2d 852, 862 (Fed. Cir. 1985)(en banc)(Markey, C.J.) ("Claims in reexamination *** `will be given their broadest reasonable interpretation.' In re Yamamoto, 740 F.2d at 1571, 222 USPQ at 936. Thus, claims may be valid and infringed in court but invalid in the PTO and, a fortiori, not infringed. It is small solace to a patent owner in that situation that he may amend his claims in reexamination and secure narrower new claims."),

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having something to do only with an infringement enforcement or opinion on the enforceable scope of the patent. 56 Or, there may be an argument that is made that establishes the criticality of a particular limitation that is a part of an original claim which may - in terns of the enforceable scope of protection - create an "estoppel by argument" to preclude the maximum scope of protection. Or, even if the patent agent knows that an amendment and remarks related thereto may create a prosecution history estoppelj', a patent agent has no practical basis for knowing the optimum way to avoid such a prosecution history estoppel5s - a point underscored in the Manual of Patent Examining Procedure where neither the Festo case nor "prosecution

5sArlington Industries, Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318,1322 (Fed. Cir. 2003)(Linn, J.) (quoting Omega Engg, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed.Cir.2003), quoting Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed.Cir.1985)("The doctrine of prosecution disclaimer `limits the interpretation of
(,V, claims so as to exclude any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance."').

5' Festo Corp. v. Shoketsu Kinzoku Kogyo Kahushiki Co., 535 U.S. 722 (2002).

58 While it is hornbook law that a narrowing amendment may create a prosecution history estoppel, there is a vast difference between the theoretical knowledge that is gained from reading the cases vis a vis the practical knowledge that one gains as an attorney who practices either in patent litigation or who has done numerous infringement opinions. With each case where there is prosecution history estoppel that is found in court or in the study of particular fact patterns for an infringement opinion, the attorney should learn some nuance, some way in which the prosecution history estoppel might have been avoided.

The proof of the pudding is to compare the initial amendment work of a newly minted patent attorney who has just left the PTO after several years experience vis a vis the same attorney's work, say, tvVo or three years later. Based upon the practical experience gained over this two or three year period from working on a daily or near daily basis with infringement issues, the attorney's work product should show a distinct improvement in presenting claims and argumentation that better minimizes the incidence of and scope of prosecution history estoppel,

For the patent agent without this practical background in infringement matters, such a practitioner will never have the practical "lessons" that are only to be gained from deep practical experience in patent infringement issues.
App., p 32
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history estoppel" is ever mentioned outside the instructions to Examiners to provide clear Office Actions.

Separately from the issue of claim scope, there is a world of difference between the world of what is patentable that is considered in the ex parte prosecution that is the province of the patent agent visa vis the establishment of a record to sustain the validity of claims once they are issued. For example, "[i]n; considering validity of a patent for indefiniteness, "[a] more limited range of evidence should be considered in evaluating validity as opposed to patentability ***."6° The stark difference starts with the fact that the Examiner may reject a claim during ex parte prosecution simply based upon a preponderance of the evidence; yet, if the patent is granted, then for purposes of enforcement in the trial court the patent is rock solid and valid unless an attacker can establish by "clear and convincing evidence" that the patent is invalid - all thanks to the statutory presumption of validity under 35 USC § 282 that has nothing at all to do with the narrow world of prosecution: Since opinions on the validity of a patent are outside the scope of licensure of the patent agent, only the patent attorney gains experience on just how to deal with. prosecution matters in a way to gain a valid and enforceable patent right.

Further complicating matters is the fact that many of the issues relating to the creation of a valid and enforceable patent right are interwoven with the complexities of the rules of federal procedure which can land the

S9MPEP § 2173.02, Clarity and Precision (8th ed. 2003).

6oSolomon a Kimberly-Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir. 2000)(Lourie, J.)("A more limited range of evidence should be considered in evaluating validity as opposed to patentability under either portion of section 112, paragraph 2, because the language of issued claims is generally fixed (subject to the limited possibilities of reissue and reexamination), the claims are no longer construed as broadly as is reasonably possible, and what the patentee subjectively intended his claims to mean is largely irrelevant to the claim's objective meaning and scope, see Markman v. Westview Instruments, Inc., 52 F.3d 967, 985-86 (Fed.Cir.1995) (en banc), afd, 517 U.S. 370(1996).").


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patentee in hot water.`' The area of inequitable conduct is a particular fertile field.62

61 Teacherson v. Patent and Trademark Office, 232 F.3d 907, 2000 WL 274172 (Fed. Cir. 2000)( Rader, J.)(non-precedential)(affrrming dismissal of complaint of "Mr. Teacherson, proceeding pro se as a registered patent agent", based upon a complete misunderstanding of federal procedure).

62 Hewlett-Packard Co. v. Bausch c-c Lomb Inc., 882 F.2d 1556, 1559, 1566 (Fed. Cir. 1989)(Nies, ,f.)("B & L successfully overcame the PTO rejections by supplementing the initial declaration with two affidavits signed by the patent agent, Lawrence Fleming***. *** The evidence of record establishes beyond doubt that Fleming's affidavits, in explaining why narrow claims were not included, were factually untrue."); Merck & Co., Inc. v. Danbury Pharmacal, Inc., 873 F.2d 1418, 1420 (Fed. Cir. 1989)(Markey, C.1)("Arther [Merck's patent agent] *** admittedly knew of the omitted information and of its materiality"); In re Maxwell, 856 F.2d 201 (Table), 1988 WL 82358 (Fed. Cir. 1998)(per curiam)(non-precedential) ("The Board correctly determined that applicants Maxwell *** violated 37 C.F.R. § 1.56 by failing to disclose the prior art[.] *** Maxwell was an experienced patent agent, well-versed in PTO practice. *** Maxwell's expertise in patent prosecution ***, the attempt to characterize his nondisclosure as nothing more than simple negligence or a good-faith error in judgment is unavailing.); Jaskiewicz v. Mossinghof, f; 822 F.2d 1053, 1058 (Fed. Cir. 1987)(Davis, J.)("The basis for the ALJ's conclusion *** on this [disciplinary] appeal is that [patent agent] Jaskiewicz engaged in dishonesty, fraud, deceit, and misrepresentation in prosecuting the two applications in this case"); Semiconductor Energy Laboratory Co., Ltd. v. Samsung Electronics Co., Ltd., 204 F.3d 1368, 1372 (Fed. Cir. 2000)(Michel, J.)("The district court cited multiple facts as demonstrating SEL's deceitful intent. For example, Kunitaka Yamamoto, SEL's in-house patent agent could not satisfactorily account for his misstatement of the level of impurities ***."); Kimberly-Clark Corp. 1~. Johnson & Johnson, 745 F.2d 1437, 1457 (Fed. Cir. 1984)(Rich, r.)("The same K-C patent agent was prosecuting both applications and necessarily knew that [the same Examiner] was in charge of both of them and had the duty of knowing their contents so as to be sure they claimed distinct inventions."); Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556, 1569 (Fed. Cir. 1983)(Rich, 1)(affirming finding of inequitable conduct based upon conduct of "patent agent Myers"); In re Ryznic, 2003 WL 933235, 67 U.S.P.Q.2d 1115 (Com'r Pat. & Trademarks 2003)(two year suspension of "patent agent [for] aiding in the prosecution of a patent application while employed by the USPTO***, failure to withdraw' when continued representation would result in violation of a Disciplinary Rule ***, handling a legal matter with inadequate preparation under the circumstances***; neglect of an' entrusted legal matter***; [and] failing to identity and safeguard the client's property (files))."); In re Collett, 1991 W'L 326576, 20 U.S.P.Q.2d (Dept. Comm. A.L.J. 1991)(suspension of agent for failure to cooperate with investigation of the OED).


App., p 34
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There are numerous ancillary areas that a person representing a client must do to properly address issues relating to the patent application, per se. It has already been mentioned that contracts on ownership of an invention are critical to the rights of joint applicants -- but even a simple assignment form is the practice of law that is outside the licensure of a patent agent, although there are some who even advertise this service on their website, either directly 63 or more creatively. 64 Trademark issues are often deeply intertwined with patent issues; indeed, at one time, a patent agent could
practice trademark law -unethical.6s
but today this is basis for disciplinary action and is
Of course, a patent agent will know how to gain the grant of a patent in terms of when to file, what fees to pay and what arguments should be made to gain allowance. But, the goal for any important invention is that the patent will be valid and enforceable to the scope needed by the applicant.

As clearly seen from the foregoing section, the limited scope of practice open to a patent agent means that a patent agent, working alone or only with other patent agents, will never gain the practical experience that only a lawyer can obtain from litigation and opinions relating to patent infringement and validity. Manifestly, the PTO statement must be thusly
ss The website of "Roger Schlafly, patent agent" states that "[p]atent agents commonly *** [e]xecute *** a patent license or assignment[.]" littp://www.mindspriniz.com/-schlaflv/loatent/agent.litm.

64 The patent agent George E. Stanford, Jr. claims the right to draft contracts involving licensing by calling himself a "Licensing Agent", apparently based upon "my active membership in the international Licensing Executives Society (LES), where I have ready access to the latest licensing and marketing techniques." http://www.stanfordpatents.eomlstanfordnatents%202003/licensing htm

OWei~j''enbach v. Frank, 1991 WL 325862, 18 U'.S.P.Q.2d 1397 (Corer Pat. & Trademarks 1991)("By *** advising applicants on "trademarkability" ***, Respondent extended the scope of his practice beyond the scope of his representational authority as a patent agent."); In re Cameron Weiffenbacla, Director, Office of Enrollment and Discipline v. Peter L. Klempay, .Respondent, 1993 WL 566348 (Dept. Comet. A_Z,.J. 1993)("Respondent is not known to be an attorney in good standing of the bar of any United States court or the highest court of any State. Because Respondent is not an attorney ***, he is not authorized to represent trademark applicants before the PTO.").
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t limited, and when thusly limited, the prospective applicant is left with the possibility of patent protection that is happenstance.

B. 'flee Need for a Broader Federal Patent Bar

It is clear that even a patent attorney who is not locally licensed should not stand in appreciably better position with a state bar than a patent agent in terms of his right to practice law in a particular state. For there to e a meaningful federal patent bar the scope of licensure should cover the normal activities of the patent profession and not the narrowly circumscribed limits of the current federal licensure.

(Insofar as corporate patent practice is concerned, this issue has been raised and ducked" and is frequently overlooked because no corporate practitioner is likely to "tell" on another corporate practitioner and, clearly, the major private law firms that are so careful to report the unauthorized practice of a competitor will never be the adversary of the potential corporate client. ')


ss Patent Attorneys and Agents, New Jersey Unauth. Prac.Op. 9, 95 N.J.L.J. 269, 1972 WL 19655 (N.J.Comm.Unauth.Prac. 1972). The opinion was limited to practitioners in private practice, without answering the issue as to out of state licensed patent attorneys.

67 Peter H. Blessing, Privileged Communications In The Context Of U.S. Tax
Practice in Tax Planning for Domestic & Foreign Partnerships, LLCs, Joint Ventures &
Other Strategic Alliances 2003 32-33 (PLI Order No. JO-006U 2003)("7."here is some
precedent that even an in-house attorney should be licensed in the State in which the
attorney practices. See United States v. United Shoe Machinery, 89 F.Supp 357, 360
(D.Mass. 1950) (court held that in-house patent attorneys that were licensed in another
state were not attorneys for the purposes of the attorney-client privilege, as the fact that
they were Massachusetts residents and regularly working there and yet had riot obtained a
license to practice law indicated that they are not acting as attorneys). The majority view,
however, is to the con tmry. Georgia-Pacific Plywood Co. v. United States Plywood
Corp., 18 r.R.D. 463 (S.D.N.Y. 1956) (requiring otherwise would be impractical, as in
house counsel would be required to devote themselves entirely to studying for bar
examinations); Zenith Radio Corp. v. Radio Corporation ofAmerica, 121 F.Supp 792,
794 (D.Del. 1954) (holding that `[b]ar membership should properly be of the court for the
area wherein the services are rendered, but this is not a sine qua non in the case of, e.g.,
visiting counsel or'house counsel' who practice law only for the corporate client and its
affiliates and not for the public generally for which local authorities do not insist on

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The narrow state of authority for a patent attorney practice outside one's own state bar is illustrated by several cases:

An Illinois State Bar Association advisory opinion questions whether a patent attorney having an office in Illinois may under his federal licensure give advice to out of state clients on patent validity and infringernent.6$ The advisory opinion first notes that "[t]he fact that [the attorney] is registered to practice before the Patent and Trademark Office authorizes him to practice within the latent Office System. It does not authorize him to practice law generally. It would not authorize him to file suits in federal court or to render legal advice or service on patent and trademark issues beyond the Patent Office System. Moreover, `patent agents' do not have to be attorneys to practice before the Patent and Trademark Office."69 Where "[the attorney] establishes an office in Illinois for the practice of federal law involving claims and defenses of patent and trademark matters, then two questions again arise: as a factual matter, is [the attorney]'s practice actually limited to federal claims and defenses; and as a legal matter, if the practice is so limited, does [the attorney] have a right under the privileges and immunities clause and federal preemption doctrine to practice federal claim and defense law out of an Illinois office without being admitted to practice in Illinois."7°

admission to the local bar'); Garrison v. General Motors Corp., 213 F.Supp 515, 520 (S.D. Cal. 1963) (holding that an. in-house patent attorney `who is a member of the bar of some state, though not a member of the bar of the jurisdiction where employed, may be an attorney-at-law within the scope of the attorney-client privilege').").

6g Illinois Adv. Op. 92-6, 1992 WL 754611 (I11.St.Bar_Assn. 1992), Question 3 ("May out-of-state [the attorney] represent an out-of-state client from his Illinois office and issue an opinion hi a letter from the Illinois office on behalf of the client concerning the validity and infringement of the third party's patent- May he represent other patent and trademark clients from that office-") s9 Id

7° Id. (The advisory opinion concludes that "[t]here is not enough information available to the Committee to speculate further about the activities of [the attorney]. Aside from the factual questions of whether his or her practice can be limited to purely federal matters, whether [the attorney]'s activities will exceed what is federally authorized, and whether he has a right under the privileges and immunities clause and

App., p 37
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Even in the case of a Sperry-sanctioned practice by a patent attorney, if that patent attorney works on a patent litigation as "counsel" together with a properly licensed attorney, a state tray hold such a patent attorney to be engaged in the unauthorized practice of law. Thus, in vista Designs, a patent attorney's claim for contractually owed legal fees for work on a patent litigation was denied on the basis that the patent attorney performed services beyond his Sperry-licensed activities - even though working "of counsel" with regularly licensed attorneys." The appellate court noted that " Silverman *** clearly violated the letter and spit of the law by engaging iii the unauthorized practice of law in Florida, notwithstanding the fact that he is admitted to practice before the State of New Jersey and Patent Bars. Clearly, public policy dictates that a party should be unable to benefit in any way as a result of one's wrongdoing."'2 Denying a right to legal fees for his services on the basis of Silvennan working outside the scope of his licensure, the appellate court held that "Silverman's actions constituted the unauthorized practice of law."'3 It quoted the trial court with approval: "[Silverman] drafted pleadings. Ire advised clients. He consulted with clients. He took depositions. That his objections were not based on patent law at a11, they were based on relevancy or on evidentiary grounds, and

federal preemption doctrine to practice federal patent and trademark in Illinois without being admitted to practice here, involve questions of federalism which have not as yet been definitively resolved."

" Vista Designs, Inc. v. Silverman, 774 So.2d 884, 885-86 (Fla. App. 4 Dist.,2001)("Silverman [was] a patent attorney and member of the New Jersey Bar and Federal District Court Bar in New Jersey, testified that his practice mainly comprised of patent trademark and copyright work before the U.S. Patent Office and as an expert or consultant on intellectual property. He claimed that under Sperry *** he was permitted to maintain an office in Florida as a registered patent attorney without being a member of the Florida Tsar. According to Silverman, he entered into an oral agreement with Pressman to provide consulting or expert services in support of the attorneys who would actually bring the litigation against the subcontractor. Silverman maintained that he informed Pressman that he was not admitted to practice law in Florida. However, he acknowledged that he drafted numerous documents, including the complaint, conducted legal research for use by trial counsel, and took part of a deposition.")

'2 Id., 774 So.2d at 887.

73 Id., 774 So.2d at 888.

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under Florida State law were inappropriate objections, He conferred with opposing client, tallied to opposing client or counsel. Clearly that was practicing law,

Through custom and usage over a matter of decades, if not generations, patent attorneys who migrate to corporate positions often do so by joining a corporate department where they never register as local members of the bar. There has been little discussion of whether this is or is not proper, but if the question is raised whether a patent agent may conduct validity and infringement studies, then it could be argued that the same point could be raised for corporate patent attorneys who are licensed oily in another state.

§ IV. T'A'E PTO STATUTORY TESTING DUTY

The PTO at one time was permitted to continue its special practice as an exception to the then newly instituted Administrative Procedure Act. The question must be raised whether the PTO is sticking to the mandate of its special statutory provision. Or, after a period of snore than fifty years since the Administrative Procedure Act was introduced at the middle of the last century, the question must now be raised: Is it time to broadly apply the APA to practice before the PTO, just as it is before all other federal agencies- To answer this question, one must look carefully at the history of the introduction of the special examination for patent agents and attorneys and the loophole in the APA that permitted the continued testing of patent attorneys and agents. Then, it must be asked whether the present registration process meets the objectives of the legislature in grandfathering the special licensure of patent attorneys and agents.

As things stand today, a twenty-one year old undergraduate degree bolder wbo bas kept his hose ethically clean and with sufficient hours of certain science or engineering courses and is able to pass a one day multiple choice examination may be fully credentialed as a full-fledged patent agent, without more. Yet, a Robert Bork who has argued a major patent case before the United States Supreme Court or many of the very top patent litigators of this country who have won numerous patent trials worth


'4Id.


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hundreds of millions of dollars are educationally unqualified to even sit for the patent bar examination under today's standards.71 Or, an Eiji Katayarna who is one of the single most distinguished members of both the Japanese bengoshi (attorney) anal benrishi (patent attorney) bars and a member of the New York Bar is not "qualified" because of the exclusion of getneral applicability of the APA - and is not even qualified to sit for the patent agent's examination under current standards because of he is not an immigrant alien or in some other visa status. 76

A. Statutory Requirements for Registration

1. Statutory Basis

The authority of the Director to test prospective patent attorneys and agents is found in 35 USC § 2(b)(2)(D) that provides that "[t]he OtTice *** may establish regulations *** which *** may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or
, ,r other parties before the Office, and may require them, before being
recognized as representatives of applicants or other persons, to show that
they are of good moral character and reputation and are possessed of the
necessary qualifications to render to applicants or other persons valuable
service, advice, and assistance in the presentation or prosecution of their
applications or other business before the Office[.]")(emphasis added). This
language superseded the same statutory provision that was found in 35 USC
§ 31 of the 1952 Patent Act that is quoted in Sperry v. State off la. ex rel.
,Florida Bar, 373 U.S. 379, 385 n. 3 (1963): "The Commissioner *** may
prescribe regulations governing the recognition and conduct of agents,
attorneys, or other persons representing applicants or other parties before the
Patent Office, and may require them, before being recognized as
representatives of applicants or other persons, to show that they are of good
moral character and reputation and are possessed of the necessary

'SThcre is no indication that Mr. Bork has any interest at all in a patent practice.

"Mr. Katayama has never sought nor expressed an interest in joining the U. S. patent bar to practice before the PTO. The point is, rather, that persons of such preeminent qualifications as a Bork or a Katayama should be encouraged and welcomed to accept upper end representations in PTO matters. Neither a "Bork" nor a "Katayama" will ever thirst for American patent work.

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qualifications to render to applicants or other- persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office."(emphasis added).

The history of this language is traced to the concern that non-lawyers with technical understanding of patents should be able to practice before the Office - but that there was a special need to regulate the practice of such nonlawyers. As explained by the Court in Sperry, "[d]espite the early recognition of nonlawyers by the Patent Office, these agents, not subject to the professional restraints of their lawyer brethren, were particularly responsibIe for the deceptive advertising and victimization of inventors which long plagued the Patent Office. To remedy these abuses, the Commissioner of Patents in 1899 first required registration of persons practicing before the Patent Office and, in 1918, required practitioners to obtain his prior approval of all advertising material which they distributed. It was to reach these same evils that [35 USC] § 31 was given much its present form when, in 1922, the statute was amended to expressly authorize
~,.r' the Commissioner to prescribe regulations for the recognition of agents and
attorneys,

Deceptive advertising amongst the patent agents - who could then call themselves "patent attorneys" - was notorious. To compete with one of the major players in D.C. who got free advertising from the Hearst papers because of his personal relationship with William Randolph Hearst, his competitor had to spend $ 3,000 per month - in "real" dollars of the early teens. 78 Practice in the "patent business" in Washington, D.C. in the early twentieth century had been or an unruly sort where one court report noted that "the amount of patent business obtained depends largely upon advertising"79 with grossly unethical fee splitting arrangements with New


77 Sperry, 373 U.S. at 390.

7$ Evans v. CLR., 23 B.T.A. 156, 157, 1931 Wr 32 (B.T.A. 1931).

79 Id. ("For 32 years [Evans] was engaged in the patent business under the name of Victor J. Evans and Company, in Washington, D.C. He advertised extensively as a patent attorney). During 1913 and 1914 the cost of such advertising was about $3,000 per month. In 1914, L. F.Randolph & Company, Inc., hereinafter called the Randolph Company, was also engaged in the patent business and was the [Evans]'s principal

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York and other out of town attorneys.'° In the early twentieth century, the advertising-based practice of John Wedderburn represented the largest patent firm in the world - with three hundred (300) employees.81notwithstanding Wedderburn's unsavory reputation. 82


competitor. John Wedderburn was managing agent and principal stockholder of that corporation. By reason of his business and social relations with William Randolph Hearst, Wedderburn, formerly Hearst's private secretary, obtained the free and unlimited use of advertising space in the Hearst publications. Consequently, the Randolph Company was about to overshadow the [Evans] in its advertising in the Hearst newspapers and magazines. The Randolph Company also carried extensive and expensive advertisements in publications not controlled by Hearst and paid the current rates therefor. In Washington the amount of patent business obtained depends largely upon advertising. In order to compete with the Randolph Company the (Evans], therefore, was forced to advertise extensively. In 1914, the [Evans] estunated that it would require $25,000 per year in additional advertising to equal the schedule of advertisements maintained by the Randolph Company."). Note: The term "Patent attorney" was used for nonlawyers at the time of this case.

so In re Dinkelspiel, 245 A.D. 479(N.Y.A.D. 1 Dept. 1935)(Attorney :Louis K. ninkelspiel "communicated with Victor J. Evans & Co., patent attorneys, who agreed, for a fee of $15, to conduct a search. Out of that sum the [Dinkelspiel] was to retain $ 10 as his commission.")

g1Id. (discussing the relationship of Wedderburn to William Randolph Hearst. Additionally, a recent report on "John Wedderburn (1868-1932) [notes that a]fter a brief but successful stint as a reporter and secretary for Senator George Hearst (father of. publisher William Randolph Hearst, who was to become a lifelong friend), Mr. Wedderburn *** eventually opened his patent law office on F Street NE, which was to become the largest in the world, employing a staff of over 300. For some years, he was in partnership with William Randolph Hearst, starting a joint claims business, as well as L.F. Randolph & Co., Patent Attorneys, established in 1913. In addition to his work as a patent attomey,Mr. Wedderburn also ran a successful liquor business, the John Wedderburn Company Cut-Price Liquor House. Mr. Wedderburn retired from active business in 1915, selling his interests to Victor J. Evans[.]" THE HISTORICAL SOCIETY OF WASHINGTON, D.C.; SPECIAL COLLECTIONS REGIST'E'R; Title: MS 561 John Wedderburn Records, 1910-1958; httr)://www.citymuseumdc.ore/Do RcscarchlResearch Collectionshns561.pdf

"In re Wedderburn, 1897 Com'r dec. 77 (Com'r Pats. 1897), affd sub nom U.S. ex rel. Wedderburn v. Bliss, 12 App.D.C. 485 (App.D.C. 1898).

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The legislative history behind the wording of 35 USC § 31 is seen from a paper from the Commissioner of Patents: "It has been suggested many times that the privilege of practising before the Office should be granted only after examination similar to examinations held for admission to the bar- It is believed that this requirement would be [too] severe, as many persons not specially trained in the law and without any particular educational advantages may by careful study of the practice and of the useful arts learn adequately to prosecute applications, Fundamentally knowledge of the invention is more important than knowledge of the rules and is often possessed by men of a type of mind which does not acquire legal knowledge readily." Sperry, 373 U.S. at 392 (quoting Commissioner of Patents, Annual Report, xiv (1915)).

With this as a background, the wording of the current statute -unchanged in several generations -- has created the present situation.

2. The Two Criteria for Registration

There are two issues that are immediately apparent when one views the overall scene of the governance of the OED.

a. 6°[N]ecessary qualifications *** to render valuable service"

It has always been understood that one of the two prime statutory requirements falling out from old § 31 is that a practitioner can write patent applications including patent claims.

Historically, the PTO gave a serious examination that required an essay which comprised actual drafting of language to be used in a hypothetical patent application. Only a test of this nature can judge the mettle of the candidate to have the minimum qualifications necessary to meet the statutory requirement of old § 31 of the "necessary qualifications" of a patent attorney.

Here, however, the OED has completely abandoned the patent examination in its classic form in favor of an entirely multiple choice test. Now, it is only a matter of memorization of the Manual of Patent Examining Procedure in pertinent portions - or having sufficient familiarity to look up

App., p 43
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the relevant portions during the examination which is an open book examination. Perpetuation of this form of examination - particularly with the "bank" of repeating questions - will soon ,generate ever more perfect test preparation courses that will permit candidates for the test to simply regurgitate multiple choice answers much in the same manner as prep courses for the SAT or LSAT. Being able to memorize or regurgitate answers to repeating multiple choice test questions in no way eertifzes the candidate as having the slightest ability to use the English language, particularly not in the context of the complex art ofpatent claim drafting.

Accordingly, if registration is to continue and to fulfill the statutory task of identifying those capable of rendering the statutorily asked for necessary qualifications to draft patent applications and claims, the immediate reform that must be made to the OED process is to reinstate the essay question format that requires demonstration of claim drafting skills as an integral part of the examination.

Passing a simple multiple choice test is also hardly a substitute for a bar examination to weed out the truly incompetent candidate. The bar examination provides an additional barrier against incompetent representation - a safeguard lacking for patent agent registration. s3

b. 11iG]ood moral character and reputation"

Authority of the Commissioner to deal with ethical misconduct or incompetence dates back to at least 1861. This remains an important issue.84 Indeed, there must be a guarantee of character and reputation for membership in any "bar" organization. But, eighty (80) percent of all members of the patent bar are also members of a state bar or the bar of the District of Columbia, each of which has a comprehensive system for


$3 Id. ("Furthermore, even in the absence of any direct relationship between the legal training of law school and patent practice, state bar membership acts as a filter against practitioners who lack the ability to succeed irn law school and pass a bar exam.")

"The authority was given to the Commissioner of patents in that year to refuse recognition to a patent agent for "gross misconduct". U.S. ex rel. Wedderburn v. Bliss, 12 App.D.C. 485 (C.A.D.C. 1898)(citing 12 Stat. 246).

App., p 44
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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

policing its members. For this eighty (80) percent, to have a PTO ethics arm that would vigorously deal with the same issue would add a redundant layer of administration that heretofore bas not existed. There has never been a case made that the state bars are unable to deal with any malpractice or ethics issues that would compel such a redundant administration within the Offce such as through the OED. Indeed, the legislative history - as explained by the Supreme Court -r shows that the origin of the current statutory wording under consideration insofar as ethics is concerned stems strictly from the need to regulate nonlawyers: "Despite the early recognition of nonlawyers by the Patent Office, these agents, not subject to the professional restraints of their lawyer brethren, were particularly responsible for the deceptive advertising and victimization of inventors which long plagued the Patent Off ce."$

B. Relationship to the Administrative Procedure Act

The question must be asked - whether there is a basis for the special registration of patent attorneys and agents for practice before the PTO- The PTO practice of special registration antedates the Admi»istrative Procedure Act; at the time, there was a grandfathering of the then-existing PTO practice. Subject to fling ai mere written declaratioa,jhe general rule was established in the APA that "[a]n individual who is a member in good standing of the bar of the highest court of a State may represent a person before an agency ***."g6

The only basis for exclusion of lawyers who are not registered patent attorneys is due to a special provision in the APA which defers to the PTO. This deferral is only designed to ascertain ethical capacity - which is presumed to exist in any event in a member of the bar of the highest court of a state - and that the PTO may "require [prospective patent practitioners], before being recognized as representatives of applicants or other persons, to show that they *** are possessed of the necessary qualifications to render to
'5 Sperry, 373 U.S. at 390 (emphasis added).

'° 5 USC § 500(a)(b)("An individual who is a member in good standing of the bar
of the highest court of a State may represent a person before an agency on filing with, t~e agency a written declaration that he is currently qualified as provided by this subsection and is authorized to represent the particular person in whose behalf he acts.")

App., p 45
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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications ***." In terms of showing the "necessary qualifications" thus means that the applicant should show that he or she can draft patent applications and particularly patent claims: Do they have the ability to use the English language to actually use patent language to describe an invention- Until the past decade, the test for patent attorneys faithfully had such an exercise in the registration test, where candidates were forced to show that they could draft actual language for a patent claim. Any pretense that the testing procedure has such a test has been totally abolished since the 1990's when a purely multiple choice test has been instituted requiring no knowledge of technology of any kind nor any application of technology with. patent "language".

C. A Disguised Restriction on Patent Competition

The case can be made that the only thing that is required for licensure is to show a particular degree in science or engineering or the like. But, the licensure is not limited to tile technology of the degree. Thus, the case can be made that the licensiue test is merely a disguised obstacle to permitting registration to those who are not former Patent Examiners - who can automatically be registered as patent agents if they have served for four years in the government - and like-degreed outsiders who are able to pass a multiple choice test that uses a bank of repeating answers. 87

At a time when highly qualified talent to procure patent applications is most necessary for the emerging high technology industries, the imposition of the patent registration process may be considered little more than a disguised restriction on competition amongst lawyers who are patent lawyers who are not registered or otherwise qualified to register under the arbitrary standards of the PTO.

As already noted earlier in this paper, there are numerous foreign patent experts who are denied registration based solely on the fact that they

$7 The test is made even more simple by making it an open book test insofar as
use of the Manual of Patent Examining Procedure, which is well-indexed and which
provides the answers to the bulk of the questions.

App., p 46
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Appendix to Testimony of Harold C. Wegner

are not citizens of the United States who are not permitted to be registered or remain registered because of their alien status and foreign residency.88

D. Does PTO Practice Meet Statutory Objectives-

A principal goal of the exemption of the patent examination from the APA was that the patent examination had been in existence prior to the creation of the APA, and it was felt that the exemption should continue particularly because the PTO admitted nonlawyers who were technically qualified, able to write patent applications. The Commissioner thus was empowered to test prospective patent agents (and attomeys) "before [they would be] recognized as representatives of applicants ***, to sbow that they **~` are possessed of the necessary qualifications to render to applicants or
** valuable service, advice, and assistance in the presentation or prosecution of their applications ***."89 Additionally, agents are to be examined for moral fitness9°, a redundant test of qualifications for patent attorneys but not agents. 91

1. No Testing for "Necessary Qualifications"

As quoted from the statutory language in effect at the time of Sperry, the PTO is authorized to test for skills in drafting a patent application, the

88It cannot be argued that the PTO has any requirement that it must have all of the attorneys and agents within the United States for better control over the practice: The PTO has admitted literally hundreds of Canadian citizens who reside in Canada and without any testing of any kind in the United States, based solely upon a reciprocity agreement with Canada. g9 Sperry v. State ofFla. ex rel. Florida Bar, 373 U.S. 379, 385 n. 3 (1963)(quoting 35 USC § 31 of the 1952 Patent Act).

9° Id. ("The Commissioner *** may require [candidates], before being reeogni-ed as representatives of applicants ***, to show that they are of good moral character and reputation ***").

91The patent aatorney is already registered before a state bar where the ethical standards are policed - and more so in most cases than by the PTO.

App,, P 47
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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

"necessary qualifications to 'k** assist[ ] in the presentation *** of [patent] applications."92 This is a far cry from a multiple choice memory test.

Clearly, the PTO has completely abdicated its role of testing to see whether a candidate can write a patent claim or draft a clause in a patent application because for the past several years it has entirely abandoned the traditional fonn of the patent examination test that existed at the time the patent registration examination was initiated. Now, the test is an entirely multiple choice examination to test on knowledge of patent practice, without any testing whatsoever of the skill of the candidate to draft any claim. or any clause in a patent application.

Life has become complex in the high technology world of patent law of the new centiuy. It is not enough that one is technically trained. Further training and testing should be required than a mere multiple choice examination on PTO regulations.

One solution that has been urged responsive to the PTO's move toward recertification is through the elimination of patent agents. 93 The proponents note the difficulties faced by patent agents that are not common to lawyers: "Ever-changing statutes, rules, and precedent expose patent practitioners to legal complexities not experienced by prior generations of patent practitioners. Although law school attendance itself cannot insure that a graduate will possess an appreciation for the impact of these changes on a patent practitioner's work, patent agents face a more difficult hurdle than patent attorneys. Patent agents face patent practice without the benefit of formal legal training. This may limit the patent agent's perspective on developments in the law. A narrow perspective, for example, on the case law
9z Sperry, 373 U.S. at 385 n. 3 (quoting 35 USC § 31 of the 1952 Patent Act).

~3 bale L. Carlson, William B. Slate & Carolyn J. Vacchiano, 'Are We Certifiable-" Redux - A Strategic Plan for Maintaining Patent Practice Competence, 85 J. Pat. & Trademark Off. Soc'y 287, 295-96 (2003)


App-, P 48
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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

relating to claim drafting, poses a risk that the client's invention will not be protected as fully as might otherwise be possible. "94

z. The Broad Scope of Licensure

The PTO also does not provide the consumer with any imprimatur that an individual patent attorney will have any technical background of relevance to a particular patent applicant. Thus, a Ph.D. in biotechnology or pharmacology may be permitted to sit for the patent attorney examination and presumably is skilled in technology to represent a biotechnology applicant, yet the scope of licensure covers the drafting of, for example, patent applications directed to automotive engines, electrical circuitry and other areas of engineering where the biotech specialist may be absolutely clueless: There is no more certainty or probability that such a biotech doctorate has any more ability to draft a claim to an improvement in a nuclear reactor than someone with a degree in liberal arts. Conversely, an electrical engineer who graduated with a B.S. in his field thirty years ago is fully licensed to draft a patent application to a transgenic animal or other biotechnology invention. Not only is the scope of licensure unlimited once the door is opened through registration, but the PTO offers no guidance whatsoever to distinguish or test or limit the qualifications of any patent attorney based upon his or her technical abilities or lack thereof.

E. An Arbitrary System without Quality Control

On the one hand, the PTO strenuously blocks candidates from taking the examination because they do not have the qualifications in science or engineering that the OED thinks they should have; in the early years, biotechnology candidates were thwarted from taking the examination because biotechnology was not considered a worthy science or engineering degree to permit taking the examination. Furthermore, while the PTO is strict in some areas in blocking registration, on the other hand it will admit any Canadian to practice as a patent attorney or agent if he meets the

94. Dale L. Carlson, William B. Slate & Carolyn J. V'acchiano, "Are We Certtfiable-"Redux - A Strategic Plan for Maintaining Patent Practice Competence, 85 J. Pat. & Trademark Off. Soc'y 287, 295 (2003)

App., p 49
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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

standards of the Canadian patent bar. But, a Japanese attorney at law -bengoshi - who is automatically also a Japanese patent attorney - benrishi -may be admitted to the New York bar and then is admitted to every federal agency other than the PTO because of the grandfathering of the patent attorney examination system and the xenophobic administration of the system by the OED.

P. Arbitrary Science Requirements: The Premysler Paradigm

The PTO changes the educational requirements from time to time based upon standards that are sometimes difficult to fathom and which generally are not advertised before their. announcement to the public in a General Requirements bulletin. In the case of one Mr. Premysler, he was denied admission to take the 1990 examination, but given notice of the requirements in the General. Requirements bulletin, Mr. Prewysler proceeded to meet those requirements - and then applied for the 1993 examiation - but was turned down because the standards in the General Requirements had been modified in the interim such that his qualifications no longer matched those ofthe modified requirements. 95

Despite "evidence that he had completed 24 hours of physics and had a long apprenticeship [which] would have been sufficient under the October 1990 standards", he was denied admission.96 Because. he did not have a degree in the subject, he faced an almost insurmountable obstacle on appeal. Affirming the Commissioner's decision, the court noted that "[t]he Commissioner concluded, however, that applicants without a degree have a high burden to show sufficient expertise and professionalism in science or engineering. The Commissioner's final decision determined that Mr. Premysler had not met this burden. Consequently, the Commissioner held that the director did not abuse his discretion in finding Mr. Prernysler's credentials unsatisfactory. ,97

95 nrerrtysler v. Lehman, 71 F.3d 387, 388-39 (Fed. Cir. 1995)(Rader, J.).

9drd. at 389. .
C.-.' 4' Id.


App., p SO
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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

But, in terms of being able to do work in the areas of physics, Mr. Premysler had far more of a technical background than the literally thousands of registered patent attorneys and agents who are licensed to practice patent law in physics - and all areas of technology - based upon a degree in pharmacy, biotechnology or organic chemistry where physics may account to four or so hours of course work. The point is that everyone who is once licensed to practice patent law is licensed for all areas of technology.
Possibly, Mr. Premysler's technical background is insufficient, arguendo,
for some extremely complex areas of physics - which may well require a Ph.D. or post-doctoral training, but there is no differentiation as to which type of patent application one may handle, once licensed. One could imagine that someone with Mr. Premysler's technical training would be able to adequately deal with the technology in, say, at least 50,000 patent applications that are filed every year that are in the mechanical field based upon his training.

'V'. AN AGENCY ANNUAL FEE AND RECERTIFICATION

Under the Administrative Procedure Act, every other federal agency is required by statute to permit practice by any member of the highest bar of any state court, while there is a limited exception for patent practice that the PTO Director " may require [prospective patent attorneys], before being recognized as representatives *** to show that they are of good moral character and reputation and are possessed of the necessary [tecluiical] qualifications ***_"9$

9$Tlie authority of the Director to test prospective patent attorneys and agents is found in 35 USC § 2(b)(2)(D) that provides that "[t]he Office *** may establish regulations *** which *** may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office, and may require them, before being recognized as repreventatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office[. ]")(emphasis added). This language superseded the same statutory provision that was found in 35 USC § 31 of the 1952 Patent Act that is quoted in Sperry v. State ofFla. ex rel. Florida Bar, 373 U.S. 379, 385 n. 3 (1963): "The Commissioner *** may prescribe regulations governing the recolpiition arid conduct of agents, attorneys, or other persons representing applicants or other parties before the Patent Office, and may require them, before being recognized as representatives of applicants

App., p 51
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner


There is absolutely nothing in the statute that speaks about removing already registered patent attorneys because of a failure to meet a recertification test (or other test). There is nothing about a mandatory patent bar registration practice with an annual fee.

If the recertification test and annual fee are introduced, it may be estimated that the divide between the upper end patent attorneys who do little, it' any, registered practice and the regular patent procurement folks will widen, greatly. Perhaps as few as 15,000 to 19,000 registered patent attorneys will remain after the first round of recertification.

To permit the PTO to introduce a nonstatutory set of requirements for an annual fee or a recertification or both would set an interesting and dangerous precedent: Should, for example, the Justice Department follow suit- Or the Food and Drug Administration-

What is particularly onerous about the proposed recertification is that it - or the equivalent continuing education limited to PTO courses that it pre-approves would or could be focused upon filing fees, deadlines and other mundane aspects of practice that senior practitioners now leave to paralegals and secretaries. The idea of CLE should be to permit a freedom of tine attorney to choose areas that are either ones of specialization to enhance his skills and justify his higher billing rates or satisfy his intellectual curiosity or whatever this member of the free profession chooses to do.

To be sure, there remains the issue of the disciplinary regulations. But, here, the great bulk of all practitioners are patent attorneys already under the disciplinary rules of a state bar: Elimination of the agent registration practice would eliminate any need for this issue altogether.

VT. CONCLUSION


or other persons, to shove that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office:" (emphasis added).


App., p 52
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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

While it may be best to move to an all attorney practice at the PTO that is opened up under the Administrative Procedure Act - and particularly to admit patent attorneys who have as their only blemish the absence of the requirement of being a "citizen.", even a positive move in this direction should not be taken in baste. The rights of all parties, including those current patent agents, should be taken into consideration: Should they be given a grace period to become licensed by a state bar or take some alternate form of education to maintain their agent registrations or should there just simply be a grandfather clause put into operation.

Conversely, it should be unthinkable to introduce any of the annual fee or recertification proposals at this time, as such a move would create a sea change in the patent profession and further marginalize the registered patent profession. While there may be popping of champagne corks amongst the registered patent attorney profession who see only as far as the ends of their noses - or the next set of new patent applications from corporations facing a diminished supply of patent attorneys who thus must pay ever escalating fees, at the end of the -rainbow there will be no sunset, but only the bleak picture of an ever diminished profession where the patent bar will have far less of a voice in the selection of Federal Circuit judges and other leaders; the antitrust bar and other interest groups from the higher end law fines and corporate suites that will be essentially patent attorney-free will have their way in pusbin.g whatever agendas may be contrary to the interests of patent-protected innovation.
App., p 53
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

APPENDMI: REGISTERED PRACTITIONERS AMONG THE
30,000+ LAWYERS OF THE TWENTY LARGEST FIRMS*

Rank Fuxn Gross S Avg. PA All
r
(1) Clifford Chance 1,470,000 406,000 31 2992 1
(2) Skadden, Arps 1,310,000 805,000 22 1727 1
(3) Freshl:ields [UK] 1,200,000 466,000 0 2644 0
(4) Linklaters [UK] 1,080,000 451,000 0 2250 0
(5) Baker & McKenzie 1,060,000 335,000 16 3241 <1
(6) Allen & Overy [UK] 970,000 412,000 0 2025 0
(7) Jones Day 908,000 535,000 101 1722 6
(8) Latham Watkins 906,000 535,000 12 1548 <1
(9) Sidley Austin 831,000 605,000 64 1444 4
(10) Mayer Brown Rowe 705,000 595,000 17 1354 1
(11) Shearman & Sterling 700,000 720,000 14 1089 1
(12) Weal Gotshal 688,000 745,000 32 977 3
(13) White & Case 675,000 460,000 22 1522
(.rr (14) McDermott, Will 628,000 700,000 85 1025 8
(15) Sullivan & Cromwell: 624,000 970,000 1 697 <1
(16) Kirkland & Ellis 611,000 800,000 59 826 7
(17) Akin Gump 575,000 665,000 45 948 5
(18) Davis Polk & Wardell 570,000 960,000 4 650 <1
(19) Gibson, Dunn 569,000 790,000 16 772 2
(20) 0'Melveny & Myers 565,000 715,000 0 836 0

*The statistics above show; less than 1.8 % are registered patent attorneys from amongst the more than 30,000 total lawyers ''on this list. Under "PA" is listed the number of registered patent attorneys and agents; under "All" is listed the total number of attorneys; under % is the percentage of patent attorneys and agents versus total attorneys. The registered patent attorney totals are only approximate and accurate only to the extent of the not completely accurate roster provided by the United States Patent and Trademark Office. (A registered patent attorney search was conducted on the U.S. Patent and Trademark electronic roster of attorneys and agents on January 17, 2004; the database indicates that the data was extracted on January 15, 2004. Any patent agents with these firms would not be in the total for lawyers but would be included under patent attorneys, which would lead to a slight over-counting.) The rankings are taken from the American Lawyer (November 2003) under its article, The Global 100 and its ranking by gross revenue for the fiscal year 2002-2003. The individual attorney revenue includes all lawyers, partners and associates.

App., p 54
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Appendix to Testimony of Harold C. Wegner
App., p 55
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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

APPENDIX II: THE ROGAN EXCEPTION FOR FREE PTO
REGISTRATION FOR UPPER END PTO OFFICTALS

As one of his final acts, and his final rulemaking proposal in the Federal Register before his resignation on January 9, 2004, the then-Director of the U.S. Patent and Trademark Office (PTO) provided a special "Rogan Exception"- the right of a former PTO leader to be automatically registered as a patent attorney whether he has patent examiuation experience vel non. T1us is one of the quirks, the "goodies", buried in the proposed regulations, Changes to Representation of Others before the United States Patent and Trademark Office, 68 Fed. Reg. 69442 (December 12, 2003). This Christmas gift gives to a broad spectrum of upper level PTO officials a free ticket to automatic PTO registration as a patent attorney or agent without any testing and without any manifestation of any recent -- or just plain any -patent examination practice.

The Rogan Exception is buried seventy-seven long Federal Register single spaced pages into the massive rulemaking package. 68 Fed. Reg. at 69519. The Rogan Exception is buried into a ponderously worded subsubparagraph, 37 CFR § 11.7(d)(3)(i)(A). It directs the Office of Enrollment and Discipline to automatically admit to patent attorney or agent registration any of the leaders of the PTO who may have not demonstrated one whit of practical experience in the way of drafting patent claims or anything to do with patent prosecution.

As a public policy matter, it may be - and probably is - a very good idea to admit all lawyers with upper end patent experience to practice before the PTO, just as experienced lawyers now can practice before any other agency of the government. But, the proposed Rogan Exception would permit automatic registration of someone who has been a leader in the administration of rules at the PTO while denying skilled and experienced patent litigators even to sit for the patent attorney examination. If anything, this demonstrates the continued folly of a registration examination for patent attorneys: If policy wonks or political leaders who have merely led the PTO are permitted to be registered to practice at the PTO, then a fortiori the same thing should be said about any lawyer who is a member of his or her state's highest bar.


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Patent and Trademark Offiice
Appendix to Testimony of Harold C. Wegner

Whereas a patent litigation lawyer who has had literally thousands of hours
of experience in the litigation of patents anal may not have a technical degree
is deemed not qualified to even sit for the patent bar examination, former
Director Rogan or any of the other top leaders of the PTO would be eligible
for registration without an examination and without their provision of any
technical degree. Thus, 37 Cfn § 11.7(d)(3)(i)(A) expressly provides that
"[t]he OED Director would waive the taking of a registration examination in
the case of a former Office employee meeting the requirements [of proof of
the individual's scientific and technical training] of paragraph (b)(3) of this
section who by petition demonstrates possession of the necessary legal
qual f cations to render to patent applicants and others valuable service and
assistance in the preparation and prosecution of their applications or other
business before the Office by showing that *** [h]e or she has exhibited
comprehensive knowledge of patent law equivalent to that shown by passing
the registration examination as a result of having been in a position of
responsibility in the Office in which he or she *** [p]rovided substantial
guidance on patent examination policy, including the development of rule or
Lr procedure changes, patent examination guidelines, changes to the Manual of Patent Examining Procedure, or development of training or testing materials for the patent examining corps[.]" Proposed 37 CFR § 11.7(d)(3)(i)(A); emphasis added.

fresurnably, if someone 1s the leader of the PTO or one of the upper level PTO leaders he or she would, by definition under 37 CFR § 11.7(d)(3)(i)(A) be possessed of the necessary "scientific and technical training" to lead the PTO in terns of drafting rules and the ,Manual.

The Rogan Exception would presumably apply to the current Commissioner for Patents nearing the end of his five year term or one of the Deputy Commissioners who is about to retire and enter private practice and who most closely mirrors the definition of one who provides "substantial guidance on patent examination policy, including the development of rule or procedure changes, patent examination guidelines [and] changes to the Manual of Patent Examining Procedure" as recited in 37 CFR § 11.7(d)(3)(i)(A). The proposed wording also mirrors the leadership of the OED who "develop[s] training or testing materials for the patent examining
(~„, corps[.]" Id.


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Patent and Trademark Office
Appendix to Testimony of Harold C. Wegner

As explained in the comments published in the Federal Register, "[proposed
37 CFR § 11.7(d)(3)] would address certain former Office employees who
were not serving in the patent examining corps upon their separation from
the Office. The examination would be waived for a former Office employee
meeting four requirements. The former employee must demonstrate by
petition that he or she possesses the necessary legal qualifications to render
to patent applicants and others valuable service and assistance in the
preparation and prosecution of their applications or other business before the
Office by showing that (A) he or she has exhibited comprehensive
knowledge of patent law equivalent to that shown by passing the registration
examination as a result of having been in a position of responsibility in the
Office in which he or she: (i) Provided substantial guidance on patent
examination policy, including the development of rule or procedure changes,
patent examination guidelines, changes to the Manual of Patent Examining
Procedure, or development of training or testing materials for the patent
examining corps; or (ii) represented the Office in patent cases before Federal
courts; and (B) was rated at least fully successful in each quality
performance element of his or her performance plan. for the position for the
last two complete rating periods in the Office, arid was not under an oral
warning regarding the quality performance elements at the time of
separation from the Office." 68 Fed. Reg. at 69447 (2003); emphasis added.
APP-, p 5 8
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