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Cameron Weiffenbach


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Moatz, Harry
From: cweiffenbach@...
Sent: Tuesday, February 10, 2004 2:56 PM
To: ethicsrules comments
Subject: Comments Regarding Proposed Rules Published 12/12/03

******************** PRIVILEGED AND CONFIDENTIAL ********************


Attached are comments on the proposed rules published in the Federal Register on December 12, 2003. A hard copy is also being filed in the Office today.


Cameron Weiffenbach, Esq.
McDermott, Will & Emery
600 Thirteenth Street, N.W.
Washington, DC 20005?3096
cweiffenbach@...
202 756?81 71 direct
202 756?8087 facsimilie
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For more information on McDERMOTT, WILL & EMERY please visit our website at: http://www.mwe.com/
2/10/04


A Partnership Including Professional Corporations 600 Thirteenth Street, N.W. Washington, D.C. 20005?3096 202?756?8000 Facsimile 202?756?8087 www.mwe.com

Cameron K. Weiffenbach
Counsel
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MCDERMOTT, WILL & EMERY
February 10, 2004
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Attention: Harry 1. Moatz
RE: Comments Regarding Changes to Representation of Others Before the USPTO
Dear Mr. Moatz:
I am a former Director of the Office of Enrollment and Discipline and I offer the following comments directed to the proposed new rules for Representation of Others Before the USPTO published in the Federal Register on December 12, 2003. 1 appreciate the opportunity to provide comments on this important rule package.

My comments are in two parts. The first part is directed to what I consider as technical errors, for the most part, incorrect cross references to the other rules. The second part is my substantive comments on the proposed new rules themselves along with my suggestions for changing the proposed rules.
Technical Comments
The comments at page 69442 of the Federal Register with respect to a proposed revision of Rule 1.4 makes reference to proposed new Rule 11.804(c)(i)(15). However, there is no such section in the proposed new disciplinary rules.

Proposed revision of Rule 1.4 and the comments at page 66442 with respect to proposed revision of Rule 1.4, each cross?reference proposed new Rule 11.804(i)(15). However, there is no such rule section in the proposed new disciplinary rules.


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The proposed revisions of the Trademark rules do not include a revision to Rule 2.119. Paragraph (d) of the rule makes reference to Rules 10.14(a), 10.14(b) and 10.14(c). Since it is proposed to remove Part 10, Rule 2.119 should be revised accordingly.

Proposed new Rule 11.2(b)(2) refers to rules to be removed, namely, Rules 10.7(b) and 10.5. It is believed that the provisions should be proposed Rules 11.7(b) and 11.5, respectively.

Proposed new Rule 11.2(d) and the comments with respect to the proposed new rule, both refer to the fee "set forth in § 1.21(a)(5)." It is believed that the correct reference to the fee is § 1.21(a)(5)(ii).

Proposed new Rule 11.4(b)(1) refers to the Committee on Enrollment as advising the OED Director under proposed new Rule 11.2(b)(1), which is directed to supervision of the OED staff. It is believed that the correct cross reference rule is § 11.2(b)(2). See comments at page 69445 with respect to proposed Rule 11.4(b)(1).

Proposed new Rule 11.7(c) and the comments with respect to the proposed new rule refer to the fee "set forth in § 1.21(a)(5)." It is believed that the correct cross?reference rule is 1.21(a)(5)(i).

Proposed new Rule 11.7(h)(1)(B) has a printing error. The reference to paragraph (h)(1) uses a lower case L, and not the number 1.

Proposed new Rule 11.7(h)(4) refers to the "two year ineligibility period provide for in paragraph (h)(1)(A)" The cited paragraph does not pertain to "two?year ineligibility." It is believed that the correct paragraph is (h)(1)(i)(B).

Proposed new Rule 11.7(j)(2)(ii) refers to "rights listed in paragraph (j)(2)(A)." The cited paragraph does not exist. It is believed that the correct cross?reference rule is paragraph (j)(2)(i).

Proposed new Rule 11.9(b)(1) and the comments on page 69451 with respect to the proposed new rule refer to the Immigration and Naturalization Service (INS). It is believed that the INS no longer exists and that it has been divided into two new, but separate units. The name of the unit for determining and issuing visas is now called the U.S. Citizenship and Immigration Services (USCIS).

Proposed new Rule 11.11 (b) cross?references proposed Rule 11.12(e). However, the crossreferenced rule does not exist. Clarification is required.

Proposed new Rule 11.11(f)(1) and the comments at page 69453 with respect to the proposed rule cross?reference proposed Rules 11.12(e) and 11.11(d). These citations appear to be incorrect and should be proposed Rules 11.12(d) and 11.11 (e) because proposed Rule 11.12(e) does not exist and because proposed Rule 11.11 (d) does not pertain to resignation.


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Proposed new Rule 11.13((f)(1) refers to the "fee required by proposed revision of Rule 1.21(a)(13)." It is believed that the correct cross?reference rule is Rule 1.21(a)(12) since Rule 1.21 as proposed to be revised does not include a paragraph (a)(13).

Proposed new Rule 11.14(f) refers to "the application fee required by Rules 1.21(a)(1)(i) and (a)(6)." The reference to proposed Rule 1.21(a)( 6) is believed to be in error since that fee is directed to a fees for regrading of the registration examination under § 10.7(c). The fee has nothing to do with paying an application fee. It is believed that the Office intended to refer to the annual fee required by proposed Rule 1.21(a)(8). Also, with respect to the revision of Rule 1.21(a)(6), if it is proposed to remove Part 10 from the 37 C.F.R., the reference to § 10.7(c) would be in error because when the proposed rules are made final, reference would be made to a nonexistent rule. Since the Office proposes to eliminate regrades, the purpose of retaining the fee requirement in § 1.21(a)(6) is not understood.

Proposed new Rule 11.22(a) as well as the comments at page 69455 with respect to the proposed rule cross?reference proposed Rule 11.2(b)(2). It is believed that the cross?reference should be to proposed Rule 11.2(b)(4) since paragraph (b)(2) prescribes the OED Director's duties with respect to receiving and acting on applications for registration while paragraph (b)(4) is directed specifically to the Director's duties with respect to conducting investigations. The proposed Rule 11.22(a) is directed to investigations.

Proposed new Rule 11.220)((2) cross?references proposed Rule 11.23(a) with respect to requesting information from a non complaining client. The cross?reference is believed to be in error and the cross reference to proposed Rule 11.23(a) is not understood, since it is directed to appointing members of the Committee on Discipline. Clarification is required.

Proposed new Rule 11.22(m)(2) cross?references proposed Rule 11.19(a). It is believed that the cross?reference should be proposed Rule 11.21 because this provision is directed to warnings, while proposed Rule 11.19(a) is directed to disciplinary jurisdiction.

Proposed new Rule 11.24(b)(2) cross references paragraphs (c)(1) through (c)(4). It is believed that the cross?reference should be paragraphs (c)(1)(i) through (c)(1)(iv) since paragraphs (c)(1) through (c)(4) do not exist and the change would be consistent with the same paragraphs cited in proposed Rule 11.24(c)(2).

Proposed new Rule 11.28(f)(2) cross?references proposed Rule 11.35 regarding service of a motion. It is believed that the cross?reference should be proposed Rule 11.42 since proposed Rule 11.35 is directed to service of a Complaint instituting a disciplinary proceeding whereas proposed Rule 11.42 is directed to service of papers other than the Complaint.

Proposed new Rule 11.55(b) cross?references Rules 28(A)(2), (3), and (5) through (10) of the Federal Rules of Appellate Procedure. It is believed that the rules section is Rule 28(a)(2), (3), and (5) through (10).


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Proposed new Rules 11.58(a) and (b) cross?reference proposed Rule 11.11(d). It is believed that the cross?reference should be proposed Rule 11.11 (e) since proposed Rule 11.11 (d) is directed to involuntary inactivation, and not to resignation.

Proposed new Rule 11.58(c) cross?references proposed Rule 11.28. It is believed that the crossreference should be proposed Rule 11.27 which is directed to exclusion by consent whereas proposed Rule 11.28 pertains to disability of a practitioner.

Proposed new Rule 11.60 cross?references proposed Rule 12(d)(2). This section does not exist in the new rules.

While the above may not be all inclusive of the cross?reference errors in the proposed rules, in view of the number of errors believed to have been made, the Office should carefully review the final rules for accuracy.


Substantive Comments

My general observations are that some of the proposed such as Rules 11.7 and 11.10 are very complex and very confusing. Also, the proposed rules did not appear to use consistent terms. This could also render the rules confusing to the user and also confusing if one is interpreting the meaning of terms used in the rules. For example, 35 U.S.C. § 2(b)(2)(D) uses the term "good moral character and reputation" to describe fitness to practice before the PTO. However, the proposed rules use phrases such as "moral character," "good moral character," "good character and reputation" and "moral character and reputation." It is not clear from reading the proposed rules whether these terms have the same meaning. Proposed new Rule 11.7(h) defines "moral character" only. It is not clear that "moral character" has the same meaning as "good moral character and reputation." Also, the term "application" is confusing. Proposed Rule 11.1 defines "application" as being a patent or trademark application. However, the term "application" is also used in proposed Rules 11.7, 11.8, 11.10 and 11.11. A person not familiar with OED practice and procedure would be confused with the use of the term "application" in proposed Rules 11.7, 11.8, 11.10 and 11.11 if such a person relied on the definition in proposed Rule 11.1 . Also, the rules are inconsistent in presenting time periods For example, some rules use "thirty days" while others use "thirty (30) days" and still others use "30 days." Use of the number is an eye catcher. I suggest that all time period be in both written and numerical form, e.g., thirty (30) days, to be consistent and unambiguous.

As for the new requirements for an annual fee and continuing education set forth in proposed Rules 11.8(d) and 11.12(a), I have no opposition to these new requirements. However, I must question whether the resources will be available to administer these programs. At the DC conference at the Venable firm in January, you indicated that the programs will be administered manually. As I see it, the annual fee program will replace the current survey program. OED is barely able to keep up with surveying a fifth of the roster. Without extra resources, I do not see know how it can keep up with a 100% survey of the roster each year. Also, the continuing


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education program will take additional resources. Both the annual fee and continuing education programs will require very accurate record keeping and accounting procedures because a mistake could lead to catastrophic consequences for a practitioner under proposed Rule 11.11(b). The Office is currently under hiring restrictions and budgetary constraints that I believe will not allow the hiring of additional resources. I also have my doubts that the senior level Office management will authorize additional recourses from other programs in the Office since the Office has never regarded OED as being a high priority program in relationship to the examination functions. Therefore, if these programs are implemented, the Office should be prepared to allocate the proper resources for the program and that administrative procedures are in place to insure the accuracy of fees collected and an accounting of continuing education credits from practitioners.

These and other observations with respect to the new Rules are set forth below in greater detail with suggestions for changing the proposed rules.

Proposed Rule 11.1: The list terms defined is incomplete. More terms and/or phrases should be added, some of which are defined in other proposed rules. If a term is not understood, the user will naturally refer to proposed Rule 11.1 for a definition of a term or phrase. Therefore, the proposed rule should include definitions of all terms used in the new rules that need to be defined.

The proposed rule contains two major components ? (a) an indication that Part 11 governs solely the practice of patent, trademark, and other law before the Office and (b) definitions that apply to interpreting the proposed rules. These are both equally important provisions that should be in separate paragraphs. I would suggest that these two components be presented as separate paragraphs (a) and (b). Also, I would suggest for clarity that each definition should be separately numbered, e.g. by (1), (2) ...., etc. My reason for this suggestion is that if it is necessary to cite a definition, it is much easier to cite a rule, such as the definition as defined in 11.1(b)(2) rather than to cite definition of "application" in Rule 11.1 which does not give the definition a precise location in the rule.

As I noted above, I find the list of definitions to be incomplete and that definitions of terms and phrases embedded in other proposed rules should be place in proposed Rule 11.1 For example, Rule 11.7(h) defines "moral character" and the term is used in a number of other proposed rules without reference to the definition in Rule 11.7(h). A user reading a rule other than Rule 11.7(h) would not know that the term had been defined in Rule 11.7(h) and would naturally refer to proposed Rule 11.1 for a definition of the term. For this reason, I would suggest adding the definitions embedded in rules in proposed Rule 11.1.

The following comments are with respect to the definitions in proposed Rule 11.1.

The definition of "Application" is includes only patent and trademark applications. The term "application" is used in §§ 11.2(b)(2), 11.7(b)(1)(i), 11.7(f), 11.70)(1), 11.70)(3), 11.8(c), 11.10 and 11.11(c). However, the "application" being referred to is not a patent or trademark application, but an application for registration to practice before the Office. A user relying on the definition of "application" in proposed Rule 11.1 may find the term confusing in these other



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proposed rules. It is suggested that where "application" in the rules to mean an application for registration, that the phrase "application for registration" be used and that the term have a separate definition in proposed Rule 11.1.

The definition of "Belief or believes" is indefinite because the meaning of phrases "actually supposed" and "inferred from circumstances" is not clear. I realize that this definition comes from the ABA model rules, but it is still not a clear definition. It is suggested that "Belief or believes" be defined as meaning that "an individual assents to the truth of something offered for acceptance and that the individual's belief may be inferred from factual circumstances."

The definition of "consent" as set forth in proposed Rule 11.1 would be not understood with respect to "exclusion by consent" as set forth in proposed Rule 11.27. The term as defined in proposed Rule 11.1 is directed to consent from a client (it is believed that the term "client" means present client, and does not include a former client) of a practitioner. It is suggested that "consent" changed to "consent by client" and that a separate definition for "exclusion by consent" be added to proposed Rule 11.1.

The definition of "Disability matter" as meaning "any issue, question, proceeding or determination within the scope of this section" is totally meaningless since the meaning of "within the scope of this section" is not understood. There is nothing in proposed Rule 11.28 that defines the "scope of this section." It is suggested that the definition be deleted. See my comments with respect to proposed Rule 11.28.

The terms "Fraud or fraudulent" as defined in the proposed Rule is not clearly defined. The phrase "failure to apprise another of relevant information" could encompass a deceit which under the definition in the proposed rule would not constitute fraud or a fraudulent act. I realize that the definition came from the ABA model rules, but the term should be tailored to practice before the Office in light of Rule 1.56. It is suggested that the "Fraud or fraudulent" be defined as "conduct having a purpose to deceive, and not merely negligent misrepresentation or negligent failure to apprise another of relevant information."

In the definition of "Giving information", it is suggested that the definition would be clearer if "making" is inserted before "an oral statement" since the definition is directed to separate written and oral statements or representations.

The definition of "Hearing officer" is clear, but the proposed rule is broader than what the provisions of 35 U.S.C. § 32 allow. The statute clearly specifies that the USPTO Director "shall have the discretion to designate any attorney who is an officer or employee of the United States Patent and Trademark Office to conduct the hearing required by this section." The section is directed to suspending or excluding practitioners from practice before the USPTO. The statute does not permit the USPTO Director to make an appointment under 5 U.S.C. § 3105, which is directed to appointing an Administrative Law Judge. The proposed rule would not usurp 35 U.S.C. § 32, if the Administrative Law Judge is an officer or employee of the USPTO. The language quoted above was added to 35 U.S.C. § 32 in November, 1999. Prior to the statutory


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change, Office relied on 5 U.S.C. § 556 to appoint ALJ's since the patent statute did not provide for appointment of persons to hear discipline cases. However, the change made to 35 U.S.C. § 32 appears to indicate that Congress intended that disciplinary cases be heard by the USPTO Director or an employee or officer of the USPTO appointed by the Director. If the Office intends to continue to rely on 5 U.S.C. §§ 556 and 3105 to appoint ALJ's, then what was the purpose of the statutory change in November 1999 to 35 U.S.C. § 32? In my opinion, the statutory change limits the AU to be an employee or officer of the USPTO. It is suggested that the phrase "or a person appointed under 5 U.S.C. § 3105" be deleted or that the rule provide for the appointment of an AU within the statutory provisions of 35 U.S.C. § 32.

The definition of "Knowingly, known, or knows" is indefinite in that "inferred from circumstances" is not understood. Again, the definition comes from the ABA model rules, but the definition is still indefinite. Any inference will be based on evidence, not on circumstances. It is suggested that the phrase be amended to read "inferred from circumstantial evidence."

The definition of "Practitioner" includes a definition of "suspended or excluded practitioner". This definition comes from § 10.1(r). However, the latter definition is buried in "practitioner." It would not be clear to the user to look for the meaning of "suspended or excluded practitioner" under the term "practitioner." Accordingly, it is suggested that definition of "suspended or excluded practitioner" be separately defined in proposed Rule 11.1 in a separate paragraph. Also, for the same reason, the definition of "Non?practitioner," which is also buried in the definition of "Practitioner," should be in a separate paragraph.

Proposed Rule 11.2(a): The appointment of the OED Director does not include appointment of an acting Director where the OED Director must recuse himself or herself from a case. It is
suggested that the second sentence be amended to read "In the event of the absence of the OED
Director or a vacancy or in the event that the OED Director recuses himself or herself from a case, the USPTO Director may ...."

Proposed Rule 11.2(c): This rule is directed to supervisory review by the OED Director of an action taken by an OED staff member. For consistency, the rule should be patterned after 37 CFR § 1.181 which allows two (2) months from the action complained of within which to file a petition. Petitions for supervisory review do not require a fee. Therefore, it is suggested that the proposed rule be modified to require no fee and that the proposed one (1) month period be extended for two (2) months to be consistent with 37 CFR § 1.181.

The proposed rule states that "The filing of a petition will not stay the period for taking other action, including the timely filing of an application for registration, which may be running, or act as a stay of other proceedings." The provision would discourage individuals seeking to be registered from filing legitimate appeals of an improper decision of a staff member of OED since the issue for such a petition for review normally centers around a requirement for completing the filing an application for registration or filing a complete response to an OED requirement for information. Also, the phrase "other proceedings" is not understood. Does it mean OED proceedings only or proceedings outside OED? The phrase should be defined. Moreover, the


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proposed rule does not provide any assurance that a decision by the OED Director would be promptly decided so as not to interfere with rights of the petitioner or applicant for registration.

The proposed rule further states that "Any request for reconsideration waives a right to appeal .... This phrase is ambiguous because it does not state what is being reconsidered, the petition or a decision on the petition. It is suggested that this section of the rule be revised to state that "Any request for reconsideration of the OED Director's decision waives a right to appeal .. .."

Proposed Rule 11.2(e): The proposed rule uses the term "one OED Director." The meaning of the term is unclear. It is suggested that the term be revised to read: "former OED Director or an acting OED Director."

Proposed Rule 11.3(a): The meaning of the phrase "OED Director's representative" is not defined. Reference should be made to proposed Rule l l .40(b) of the proposed rules and the phase should be defined in Rule 11.1.

Proposed Rule 11.3(d): The term "complaints" is indefinite and is confusing in view of proposed Rule 11.34 which is directed to a document prepared by OED charging a practitioner with violation of the PTO Rules of Professional Conduct. Since I am familiar with OED practice, I know the term as used in proposed Rule 11.3(d) means complaints alleging misconduct or violations of the PTO Rules of Professional Conduct, but this may not be understood by a person unfamiliar with OED practice. I suggest that the Office should formulate separate terms and definitions in proposed Rule 11.1 for the two types of complaints.

The use of the term "qualifiedly privileged" is awkward and could raise an issue as to whether the term has a different meaning from the more well known term "qualified privilege." It is suggested that that the proposed rule be revised to read: "Complaints submitted to the OED Director or any other office of the Office alleging misconduct or at least one violation of the USPTO Rules of Professional Conduct shall be subject to a qualified privilege for the purpose that no claim or action in tort predicated thereon may be instituted or maintained."

The last part of proposed Rule 11.3(d) is directed to a provision for separate immunity. This provision is separate and distinct from the qualified privilege provision. It is suggested that the last part of proposed Rule 11.3(d) be made a separate provision, namely, (e).

The last part of the proposed rule states that "employees of the Office providing regrades of examinations" are immune from liability. There is no provision for regrades under the new rules. It is not clear why this provision is needed in the proposed rule since the new rules do not give the registration applicant a right to ask for a regrade of his or her registration examination. Once the new rules become effective, the Office cannot, Ex post facto, limit the immunity of Office employees acting under the prior rules, if the immunity did not exist prior to the effective date of the new rules. It is suggested that the phrase be deleted.


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Proposed Rule 11.5(b)(1): The phrase "Practice before the Office" appears twice and is defined differently. One definition is a general definition while the other is a more specific definition. It is suggested that the third appearing phrase, "Practice before the Office:", be deleted and that the three parts following the phrase recite: "(1) In patent matters, practice before the Office includes .... (2) In trademark matters, practice before the Office includes ...." As for Rule 11.5(b)(3), this provision is not understood as to its relationship to practice before the Office. According the comments, this provision is intended to cover misconduct unrelated to the practice of law. It is therefore suggested that this provision would be more appropriate in proposed Rule 804, which sets forth misconduct warranting discipline.

Proposed Rule 11.6(a), (b) and (c): Those who have worked in OED know what is meant by the phrase "such registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States." The phrase has appeared in the rules since 1948. However, outside of OED, the phrase, either standing alone or taken in context with the rule taken as a whole, has no meaning to the general public. The time has come to define what the phrase means so that the practitioners and the general public have an understanding of what constitutes registration not inconsistent with the terms upon which the alien was admitted to the United States. Case law has defined the meaning of the phrase as including persons having H1 or L1 visas or such persons having visas that authorize employment in the United States in the capacity of representing patent applicants before the Office that is not limited to training. The proposed rule should have language to this effect or the phrase should be defined in proposed Rule 11.1.

Moreover, the same argument can be made for the phrase "such country allows substantially reciprocal privileges." Outside of OED, the general public does not know what constitutes "substantially reciprocal privileges." This phase also has been in the rules since 1948. It is suggested that the phrase be defined in proposed Rule 11.1 to mean: "An agreement exists between the United States and such country providing for substantially reciprocal privileges or that the patent office of such foreign country allows practitioner's registered by the Office to practice directly before the Patent Office of such county without the requirement of having to appoint and practice before the Patent Office of such country through a local agent who is admitted to practice before the Patent Office of such country:

Proposed Rule 11.6(d): I believe that the rule should also include public use proceedings under 37 CFR § 1.292 since these proceedings, like interference proceedings, allow the taking of testimony which could be done by unregistered attorneys.

Proposed Rule 11.7: The terms "a form supplied by the OED Director," "application for admission," "registration application", "complete application," "applications, "application," "application form," and "application form supplied by the OED Director" are used throughout the proposed rule. It is not clear whether these terms all mean the same thing or whether they represent different forms and/or applications. It is believed that the applications and form supplied by the OED Director refer to the application for registration. For consistency of terms and to distinguish the application used for registration from "application" as defined in proposed Rule 11.1, it is suggested that the term "application for registration" be used when referring to the


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"application for admission," "registration application", "complete application," "applications, "application," "application form," and "application form supplied by the OED Director". Also, it is not clear what a "complete application" means. A "complete registration application" is defined in proposed Rule 11.7(b)(i), but not clear that a "complete application" is the same as a "complete registration application. It is suggested that the term "complete application" wherever it is used in the proposed rules be changed to be "complete application for registration " for consistency in terms.

Proposed Rule 11.7(b): The sequence of what must be submitted to the OED Director is not clearly set out in the subparagraphs of proposed Rule 11.7(b). The outline as presented in the proposed rule is very confusing. It includes a redundancy with respect to scientific and technical training (proposed Rules 11.7(b)(i)(C) and 11.7(b)(3)) and burying reapplication procedure for retaking the registration examination under the provision for passing the registration examination. There should be a separate provision for reapplication if an applicant for registration fails the registration examination. Also, the qualifications looked at by the OED Director is not just proposed Rule 11.7(b)(i), but also, proposed rules 11.7(b)(2) to (b)(4) and (b)(6). It is not immediately clear from reading the proposed rule as to what must be submitted to the OED Director. In addition, the requirement to keep an application updated is buried in proposed Rule 113(b)(2). This is an important requirement that it should be separate rule provision. Moreover, it is not clear why an individual reapplying more than one year after failing the registration examination must again submit satisfactory proof of his or her scientific training. See proposed Rule 113(b)(5). It is more logical that there be a renewed requirement for submitting satisfactory proof that the individual possesses good moral character and repute. In view of these comments, it is suggested that proposed Rule 11.7(b) be revised as follows:

(b) In order that the OED Director may determine whether an individual seeking to have his or here name placed on the register has the qualifications specified in paragraph (a)(2) of this section, the individual shall:

(1) (i) File a complete application for registration which includes:

(A) A form supplied by the OED Director wherein all requested information and supporting documents are furnished and

(B) Payment of the fees required by § 1.21(a)(1) of this subchapter.

(ii) An individual failing to file a complete application for registration will not be admitted to the examination. An incomplete application for registration will not be considered, unless completed and received by OED within sixty (60) days after the date of notice of incompleteness. Thereafter, a new and complete application for registration must be filed.


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(iii) Until an individual has been registered, the individual is under a continuing obligation to keep his or her application for registration current and must update responses whenever there is an addition to or a change to information previously furnished the OED Director.

(2) Submit to the OED Director satisfactory proof of the individual's scientific and technical training.

(3) Pass a registration examination unless the taking and passing of the examination has been waived as provided in paragraph (d) of this section.

(i) Unless waived pursuant to paragraph (d) of this section, each individual seeking registration must take and pass the registration examination that is held from time?to?time to enable the OED Director to determine whether the individual possesses the legal and competence qualifications specified in paragraphs (a)(2)(ii) and (a)(2)(iii) of this section. The registration examination will not be administered as a mere academic exercise.

(ii) Notification to an individual of passing or failing the registration examination is final. Within two (2) months from the date an individual is notified that he or she failed the registration examination, an unsuccessful individual is entitled to inspect, but not copy, the questions and answers he or she incorrectly answered under supervision and without taking notes. Substantive review of the answers or questions may not be pursued. An unsuccessful individual has the right to retake the registration examination an unlimited number of times upon payment of the fees required by §§ 1.21(a)(1)(i) and (ii) of this subchapter, and a fee charged by a private sector entity administering the registration examination.

(4) Provide satisfactory proof of possession of good moral character and reputation.

(5) Aliens must submit proof that recognition is not inconsistent with the terms of their visa or entry into the United States as defined in § 11.6 of this subchapter.

(c) Reapplication for registration after failing the registration examination.

(1) An individual failing the registration examination may reapply no sooner than thirty (30) days after the date of notice of failure is sent to the individual and may again take the examination no sooner than sixty (60) days after the date of the notice. An individual reapplying shall:



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(i) File a complete application for registration wherein all requested information and supporting documents are furnished.

(ii) Pay the fees required by § 1.21(a)1) of this subchapter.

(iii) Aliens must submit proof that recognition continues not to be inconsistent with the terms of their visa or entry into the United States.

(2) If an individual first reapplies for registration more than one year after receiving notice of failing the registration examination, the individual must again comply with paragraphs (b)(1) and (b)(5).

Proposed Rule 11.7(c): The location of this proposed rule seems to be out of place in the sequence of other provisions of rule 11.7. 1 would appear to be more logically placed just before the hearing provision, proposed Rule 11.70).

Proposed Rule 11.7(d): This proposed rule is directed to waiver of the registration examination for certain former Office employees. However, the purpose of this provision rule not immediately apparent to the reader. Therefore, it is suggested that the rule be subtitled "Waiver of the Registration Examiner for Former Office Employees" followed by subsections (1), (2), etc. This would immediately apprise the reader that the rule is directed to waiver of the registration examination for former PTO employees. Therefore, individuals who never served in the Office do not have to wade through the provisions proposed rule only to come to the conclusion that it does not pertain to them.

Proposed Rules 11.7(d)(1), (d)(2) and (d)(3): Proposed Rules 11.7(d)(1) and (d)(2) direct the reader's attention to "patent examiner" who has or has not "actively served" in the examining corps. The metes and bounds of "actively served" is not immediately apparent. For example, a would the examination be waived for a former examining group director who never served as a patent examiner, but served more than four years a group director at the time he separated from the examining corps? Would the examination be waived for a special program examiner who not been a patent examiner, but who served more than four years in the examining corps at the time of separation from the Office? Therefore, the term "actively served" should be defined.

It would appear that under the proposed rules, examining group directors, special program examiners, individuals who served as Assistant Commissioner's of Patents, and administrative patent law judges at the Board of Appeals and Interferences who have not "actively served" in the examining corps would be required to make a showing under proposed Rule 11.7(d)(3). These are individuals who have supervised patent examiners and/or have authority to review and reverse decisions of patent examiners. They have unique positions in the Office and should not have to demonstrate possession of legal qualifications to render to patent applicants and others valuable


February 10, 2004
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service in the preparation and prosecution of patent applications. It is suggested that a provision in the proposed rule be added to provide exceptions for such persons who have served at least four years service in these positions in the Office.

Proposed Rule 11.7(g)(1): The proposed rule requires the individual to "answer all questions." It is not known what is the source of the questions ? the application for registration, questions by OED in an information request or request for comments, and/or from other unknown source. The source of the questions should be clarified in the proposed rule.

Proposed Rule 11.7(g)(3): The proposed rule states: "If the individual seeking registration or recognition is an attorney, the individual is not entitled to a disciplinary proceeding under §§ 11.32?11.57 in lieu of moral character proceedings under paragraphs (j) through (m) of this section." This sentence is not understood. Under proposed Rule 11.32, only the OED Director can initiate a disciplinary proceeding if the Committee on Discipline finds probable cause that there has been a violation of the Rules of Professional Conduct. Therefore, it is not clear how someone other than the OED Director can initiate a disciplinary proceeding without action by the Committee on Discipline. In addition, it is not clear how an attorney who is not yet a registered practitioner would be subject to the disciplinary proceedings set forth in proposed Rules 11.3211.57. It is suggested that the sentence be deleted since it is ambiguous.

The proposed rule states: "An individual failing to timely answer questions or respond to any inquiry by the OED Director shall be deemed to ...." The questions will in all likelihood be sent through a staff attorney in OED. It is suggested that the term "OED Director" be changed to ?Office of Enrollment and Discipline ??."

The Office wants comments on two alternatives for accepting a State bar's determination of good moral character and reputation with respect to attorneys. First, it is not clear why attorneys should be subject to different procedures for determining good moral character and reputation than nonattorneys. The proposed alternatives would require applicants who are attorneys to make extra submissions that would not be required by non?attorneys. If an attorney has been denied admission to a bar because the bar considered him or her not to possess good moral character and reputation, this should be addressed on the application for registration form. If the applicant fails to disclose this type of information and it is discovered after the individual is registered, this would be grounds for discipline. If the Office wants to know if an attorney is not a member in good standing with a bar, then the office should request a certificate of good standing from every bar the applicant is a member. If the office is considering either of these proposed alternatives, then it should ask for at least 5 character affidavits from each non?attorney applicant so at least the treatment of both types of applicants would be on somewhat an equal footing. While I have made these suggestions, I do not like either of the proposed alternatives. Either alternative would be unfair and would require more resources to review the document, resources OED does not have.

Proposed Rule 11.7(h): The proposed rule defines "moral character". The proposed rule does not define "good moral character" or "reputation" or "good moral character and reputation." The statute, 35 U.S.C. § 2(b)(2)(D) uses the phrase "good moral character and reputation." The rule


February 10, 2004
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should be directed to defining the entire phrase in the statute, and not just a portion of it. Also, the proposed rules have two other definitions for "moral character" (see proposed Rules 11.7(h)(3) and 11.7(h)(4)) that do not appear to be within the scope of the definition in proposed Rule 11.7(h). To add to the confusion, as noted above, the proposed rules use phrases such as "moral character," "good moral character," "good character and reputation" and "moral character and reputation." It is not clear from a reading of the proposed rules whether these terms have the same meaning. Proposed Rule 11.7(h) defines "moral character" only. It is not clear that "moral character" has the same meaning as "good moral character and reputation." Unless the Office intends that "reputation" and "good moral character" should have different meanings, it is suggested that the rules use the statutory language "good moral character and reputation" only and that the definition of the statutory language be in proposed Rule 11.1, and not in Rule 11.7(h).

The proposed rule also introduces "moral turpitude." This term has been open to interpretation by State bars and the disciplinary courts. It is suggested that the Office define what it considers to be a violation of "moral turpitude" based on decisions in disciplinary proceedings before the Office and add the definition to proposed Rule 11.1. This would apprise practitioners as to the scope of the term.

Proposed Rule 11.7(h)(1): In the third sentence, it is suggested that the phrase "convicted for said felony" should read "convicted of said felony." The term "compelling proof' is not understood and should be defined since it is not a recognized standard of proof. Also, what constitutes "at a minimum a lengthy period of exemplary conduct"? This language does not provide any guidance to the reader of the proposed rules since it does not provide a measure of the minimum period and what constitutes exemplary conduct. Clarification is needed.

Proposed Rule 11.7(h)(1)(f): The proposed rule uses the term "provisions". This term does not appear to be the correct terminology. The "provisions" in the rule appear to be "presumptions" by the Office in determining the presence of good moral character and reputation. The word "provisions" means an "act or process of providing" while the term "presumption" means "a ground, reason or evidence lending probability to a belief' or "the legal inference as to the existence or truth of a fact not certainly known that is drawn from the known or proved existence of another fact" Webster's Ninth New Collegiate Dictionary, Merriam?Webster Inc, Springfield, Mass., pp. 948 and 932, respectively, (1988). It would appear that the term "presumption" may be more appropriate. Therefore, it is suggested that the term "provisions" in the first sentence of the rule be changed to "presumptions" since it appears that sections (A) and (B) are presumptions that will be made by the Office for an individual who has been convicted of a felony or misdemeanor and who is seeking registration. In paragraph (B), it is suggested that the expression "apply for or be registered" be amended to read "apply for registration or be registered" since it would appear to be more grammatically correct. Paragraph (C) is not a presumption, but a requirement for registration. It is suggested that a paragraph (C) be changed to paragraph (h)(iii) and that the proposed (h)(iii) be changed to (h)(iv).

Proposed Rule 11.7(h)(1)(iii): See the last sentence in the discussion above regarding proposed Rule 11.7(h)(1)(ii). Also, it is suggested that "an application and, upon passing the registration


February 10, 2004
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examination" be changed to ?? a complete application for registration and the fee required by § 1.21(a)(1)(ii) and, upon passing the registration examination ?? because the term "application" is not commensurate with the definition of "application" in proposed Rule 11.1 and because there is a fee requirement.

Proposed Rule 11.7(h)(2): The term "recovery" is not clear since it does not specify recovery from present dependency or in general from past drug or alcohol abuse or dependency. It is believed that the Office intended the latter. Therefore, it is suggested that the phrase "from drug or alcohol abuse or dependency" be added after "recovery."

Also, the procedure for holding the application in abeyance has not been specified in the proposed rule. Are the terms dictated by the Office or the individual? What is meant by that recovery is "initiated." It is suggested that the provision be changed to read as follows:

... the OED Director, in lieu of registration, may offer the individual the opportunity to hold his or her application for registration in abeyance for a specified period of time. If the individual accepts the offer, the individual and the OED Director shall execute an agreement specifying (i) the period of time the application for registration will be held abeyance, (ii) the conditions regarding the initiation and confirmation of treatment; and (iii) conditions that constitute evidence that recovery is confirmed.

Proposed Rule 11.7(h)(4): As I understand this proposed rule, the rule only pertains to an attorney who has been suspended or disbarred by a State bar or who resigned from a State bar in lieu of being subject to disciplinary action. What about a non?attorney who, for instance, was disciplined by an institution or government authority for acts of misconduct involving moral character, e.g., students, stock brokers, CPA's, doctors, etc? It would appear that such nonattorneys should be subject to the same requirements. Please clarify. If so, it is suggested that the rule be modified accordingly.

The proposed rule is long and confusing. For example, part (h)(4)(v) is redundant and is already provided for in the forth sentence in the proposed rule. The rule refers in the fifth sentence to fees required by § § 1.21(a)(1)(ii) and (10). Is § 1.21(a)(1)(ii) in error? It would appear that it should be § 1.21(a)(1)(i) since this section is the fee pertaining to the application for registration, or, should the individual be required to pay fees required under both §§ 1.21(a)(1)(i) and (ii)? Also, the rule, as written, does not clearly delineate the separate conditions and requirements for seeking registration. In proposed Rule 11.7(h)(4)(iv), the term "in question" is not necessary and could render the provision as to whether the "individual" and "individual in question" are different types of individuals.

Subject to the objections raised above with respect to this proposed rule, it is suggested that the rule be divided into subsections since each sentence in the proposed rule appears to be a complete and important. For the sake of clarity, it is suggested that the proposed rule read as follows:


February 10, 2004
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(4) Good moral character and reputation involving suspension, disbarment, or resignation from a State bar. (a) The following conditions shall apply to an individual seeking registration who has been suspended or disbarred by a State bar or who has resigned by consent from a State bar in lieu of a disciplinary proceeding for misconduct involving good moral character and reputation:

(i) An individual who has been disbarred by a disciplinary court from practice of law or has resigned in lieu of a disciplinary proceeding (excluded or disbarred on consent) for misconduct involving good moral character and reputation shall not be eligible to apply for registration for a period of five (5) years from the date of disbarment or resignation.

(ii) An individual who has been suspended by a disciplinary court on ethical grounds from the practice of law for misconduct involving good moral character and reputation shall not be eligible to apply for registration until expiration of the period of suspension.

(iii) An individual who was not only disbarred or suspended by a State bar or resigned from a State bar in lieu of a disciplinary proceeding and who was also convicted in a court of record of a felony, or a crime involving moral turpitude or breach of trust, shall be ineligible to apply for registration until the conditions both in paragraph (h)(1) of this section and this paragraph (h)(4) are fully satisfied. The OED Director may waive the two (2) year ineligibility period provided for in paragraph (h)(1)(i)(B) of this section following conviction of a felony or crime only if the individual demonstrates that he or she has been reinstated to practice law in the State where he or she had been disbarred or suspended, or had resigned.

(b) An individual who is seeking registration and who has been disbarred or
suspended by a State bar, or who resigned from a State bar in lieu of a disciplinary
proceeding shall file an application for registration; pay the fees required by §.
1.21(a)(1)(i), (a)(1)(ii) and (10) of this subchapter; provide a full and complete
copy of the proceedings in the disciplinary court that led to the disbarment,
suspension, or resignation; provide written proof that he or she has filed an
application for reinstatement in the disciplining jurisdiction and obtained a final
determination on that application; and provide clear and convincing evidence of
good moral character and reputation. The following presumptions shall govern the
determination that the individual seeking registration possesses good moral
character and reputation:

(i) A copy of the record resulting in the disbarment, suspension or acceptance of a resignation is prima facie evidence of the matters contained in the record, and that the imposition of disbarment or suspension, or the


February 10, 2004 Page 17


acceptance of the resignation of the individual in question shall be deemed conclusive that the individual has committed professional misconduct.

(ii) During the period of such discipline imposed by the disciplinary court, the disciplined individual is ineligible for registration and is deemed not possess good moral character and reputation.

(c) The only defenses available to the individual seeking registration who has
been disbarred or suspended by a State bar, or who resigned from a State bar in lieu
of a disciplinary proceeding are set out below and must be proven by clear and
convincing evidence:

(i) The procedure in the disciplinary court was so lacking in notice or
opportunity to be heard as to constitute a deprivation of due process;

(ii) There was such infirmity of proof establishing the misconduct as to give rise to the clear conviction that the Office could not, consistently with its duty, accept as final the conclusion on that subject; and

(iii) A finding of lack of present good moral character by the Office
would result in grave injustice.

Proposed Rule 11.7(i): This rule introduces the term "applicant" for the first time. It is not clear that "applicant" has the same meaning as "individual". It is suggested that the terminology be consistent throughout the rules to avoid confusion and that the "applicant" be changed to "individual."

Proposed Rule 11.7(i)(1)(xii): The term "church" is limited to a body of Christians. It is believed that the Office intended to cover all religious groups. Therefore, it is suggested that the phrase "church or privately sponsored programs" be changed to "religious or privately sponsored programs."

Proposed Rule 11.70): The language of the first two sentences in the proposed rule is awkward. It is suggested that the sentences be revised to read as follows:

If, after an investigation of moral character and reputation, the OED Director is of the opinion that the evidence of record does not establish that the individual seeking registration possesses good moral character and reputation, the OED Director shall issue to the individual a notice to show cause with reasons why the individual should not be registered. The notice shall give the individual the opportunity for a hearing before the Committee on Enrollment or withdrawing his or her application for registration.


February 10, 2004 Page 18

Proposed Rule 11.7(j)(1): The term "interrogated" is objected to because it sounds like an inquisition. It is suggested that the phrase "to be sworn and interrogated" be changed to read "to provide sworn testimony." Also, the term "adverse decision" is indefinite in that it is unclear as to what was adverse. It is suggested that the phrase "an adverse decision" be changed to "a decision denying recognition based on lack of good moral character and reputation." See also proposed Rule 11.7(j)(2)(ii).

Proposed Rule 11.70)(2): The term "individual" could be ambiguous. The language should be amended to clarify that the "individual" is not the "particular person." It is suggested that the term "individual" be changed to read "individual seeking registration."

Proposed Rule 11.70)(2)(ii): The proposed rule refers to "rights" listed in "paragraph (j)(2)(A) [sic, (j)(2)(i))]." However, the paragraph referred to is directed to "rules of procedure." For clarity, it is suggested that the first two sentences of the proposed rule be changed to read as follows:
A hearing shall be conducted in a formal manner according to the procedures in paragraph (j)(2)(i) of this section. However, the Committee shall not be bound by the formal rules of evidence.

Proposed Rule 11.70)(3): The use of the terms "recommendation" and "decision" is confusing. Are they two different documents? According to the proposed rule, the "recommendation shall include the findings and conclusion of the OED Director and Committee." The rule also provides that a copy of the "decision containing their findings and conclusions" will be provided. If ,two separate documents, a "recommendation" and a "decision", are being prepared, it is not clear why two documents are necessary. If they are the same document, then the terminology needs to be consistent. This matter is further made confusing because proposed Rule 11.7(4) uses the term "recommendation" and Rules 11.7(5) and 11.7(k) use the term "decision" with respect to the USPTO Director's "decision." Clarification is needed.

Proposed Rule 11.8(a): The language used in the first sentence is awkward and confusing. It may not be clear to an individual, who passed the examination, that he or she has two (2) years within which to complete registration. It is suggested that the sentence be revised to read:

An individual passing the registration examination who does not comply with the requirements of paragraph (b) of this section within two (2) years after the date on a notice of passing the examination will be required to retake the registration examination."

Proposed Rule 11.8(d): The term "person" is used instead of "individual". The use of the term "person" could be confusing since it is not clear whether "individual" and "person" are one in the same. If they are then, a consistent term should be used. It is suggested that "person" be changed to "individual" for consistency since the "person" is an "individual" seeking registration.



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Proposed Rule 11.10(b): It is difficult to discuss the problems with this proposed rule, as I see it, by addressing specific subsections. The proposed rule is very long and very confusing. After reading this proposed rule, it was not all together clear to me what the restrictions would be for a former Office employee. The examples embedded in the rule do not help in my understanding of the restrictions. I had to study this rule at length in light of 18 U.S.C. §§ 207(a)(1) and (a)(2) before I believe I got a grasp on where the Office was going on this proposed rule.

The subtitle of the "Undertaking for registration by former Office Employees" is not a clear since the phrase "undertaking for registration" would have no meaning to a person unfamiliar with OED practice. The first sentence of the proposed rule deals with restrictions on registration for current employees, while the second and subsequent sentences address restrictions on practice by former employees. It is suggested that this portion of the proposed rule be divided into two separate sections: one for current Office employees and another for former employees. This suggestion is incorporated into a suggested revision to Rule 11.10 following these and other comments below.

The Office is apparently trying to shoehorn in the provisions of 18 U.S.C. §§ 207(a)(1) and (a)(2) into the proposed rule. However, the proposed Rules 11.10(b)(1) and (b)(2) appear to go beyond the restrictions set forth in the statutory provisions.

18 U.S.C. § 207(a)(1) provides, in part, that any former officer or employee of the Executive Branch "who, after the termination of his or her service or employment ..., knowingly makes, with the intent of influence, any communication to or appearance before any officer or employee of any department, agency, court, or court?martial of the United States or the District of Columbia, on behalf of any other person (except the United States or the District of Columbia), in connection with a particular matter ? (A) in which the United States or the District of Columbia is a party or has a direct and substantial interest, (B) in which the person participated personally and substantially as such officer or employee, _and (C) which involved a specific party or specific parties at the time of such participation, shall be punished as provided in section of 216 of this title."

Proposed Rule 11.10(b)(1) separates appearance and influence portions of the statute into two separate and distinct prohibitions. I do not see why this is necessary. Also, the limitations in paragraphs (b)(1)(i) to (b)(1)(iii) are in the alternative, i.e., anyone of the conditions can be met whereas in the statute all three conditions (A), (B) and (C) must be met to have a violation. The use of alternative language renders the proposed rule confusing and apparently beyond the restrictions mandated by the statutory provisions of 18 U.S.C. § 207(a)(1). The meaning of "To the United States" and "In which said employee participated personally and substantially as an employee of the Office" taken alone are ambiguous. Even if not presented in the alternative, it is obvious that, with respect to paragraphs (b)(1)(i) and (b)(1)(iii), the United States would be a party with respect to the prosecution of a patent application since the Office would be regarded as one party and that the United States has a direct and substantial interest since it is granting the monopoly for a patent or trademark. Therefore, the inclusion of these provisions in the proposed rule is not really necessary. The bottom line that I believe the Office is trying to convey in proposed Rule 11.10(b)(1) is that a former employee is barred from engaging in matters in which


February 10, 2004
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he or she participated personally and substantially as an employee of the Office. This should also include lineage of any patent or trademark applications as well as any proceedings involving these applications. In addition, the interchanging use of employee and "individual," "any person" and "employee" is somewhat confusing. Furthermore, the statute does not specify that appearance is "formal and informal" appearance or that communications are "oral or written" In view of the foregoing comments, a proposed suggestion for revising proposed Rule 10.11(b)(1) is set forth below.
As for proposed Rule 11.10(b)(2), 18 U.S.C. § 207(a)(2) provides, in part, that any former officer or employee of the Executive Branch subject to the restriction set forth in 18 U.S.C. § 207(a)(1), "who, within two years after the termination of his or her service or employment ..., knowingly makes, with the intent of influence, any communication to or appearance before any officer or employee of any department, agency, court, or court?martial of the United States or the District of Columbia, on behalf of any other person (except the United States or the District of Columbia), in connection with a particular matter ? (A) in which the United States or the District of Columbia is a party or has a direct and substantial interest, (B)which the person knows or reasonably should know was actually pending under his or her official responsibility as such officer or employee within a period of 1 year before the termination of his or her service or employment with the United States or the District of Columbia, _and (C) which involved a specific party or specific parties at the time it was so pending, shall be punished as provided in section of 216 of this title."

Most of the same comments discussed above with respect to proposed Rule 11.10(b)(1) apply to proposed Rule 11. 10(b)(2) and these comments are incorporated herein by reference. The bottom line for this rule is to restrict a former employee from engaging in matters which were actually pending under the former employee's responsibility at the time he or she was employed in the Office. Also, the proposed Rule 11.10(b)(2) sets a two (2) year limitation period. The statute provides for one (1) year restriction while the proposed rule provides for a two (2) year restriction. It is suggested that the period in the proposed rule be commensurate with the statutory period.

It is not believed that the examples, if necessary, be presented in the comments and not embedded in the rules. It was noted that some of the examples were not really examples, but further explanations of language in the rule. I do not see any purpose served by examples in the rules. It only adds to the confusion. The restriction rules should be short and simple and easy to read and understand. Therefore, it is suggested that proposed rule 11.10 be rewritten as follows:

(a) Only practitioners who are registered under § 11.6 or individuals given limited recognition under § 11.9 are permitted to prosecute patent applications of others before the Office; or to represent others in a reexamination proceeding, correction of a patent, correction of inventorship, protest, or other proceedings before the Office.
(b) Office Employee. (1) No individual not previously registered will be
registered as an attorney or agent while employed by the Office.



February 10, 2004
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(2) A practitioner who becomes an employee of the Office may not prosecute or aid in any manner in the prosecution of any patent application before the Office. Noncompliance with this provision by a practitioner shall constitute misconduct under § 11.804(i)(19).

(3) Practice before the Office by Government employees is subject to any applicable conflict of interest laws, regulations or codes of professional responsibility. Noncompliance by a practitioner who is an employee of the Office with conflict of interest laws, regulations or codes of professional responsibility shall constitute misconduct under § § 11.804(b) or 11.804(h)(8).

(4) A practitioner who is a Government employee must so inform the OED Director, and must provide his or her complete Government address as his or her business address in every communication to OED.

(c) Former Office Employee. (1) Former employees of the Office, whether
they are or are not a practitioner, are subject to the post?employment provisions of
18 U.S.C. 207(a) and (b)(1), and the provisions of 5 CFR 2637.201 and 2637.202.
A former employee who is a practitioner is subject to the provisions of § 11.111.

(2) No individual who has served in the patent examining corps or elsewhere in the Office shall practice before the Office after termination of his or her service, unless he or she signs written undertaking not to knowingly act as an agent or attorney for, or otherwise represent, or aid in any manner in the representation of any person to:

(i) Knowingly make, with the intent of influence, any communication to or appearance before any officer or employee of the Office on behalf of the person, in connection with a particular matter in which the individual participated personally and substantially as an officer or employee of the Office; and/or

(ii) Knowingly make within one (1) year after termination of employment with the Office, with the intent of influence, any communication to or appearance before any officer or employee of the Office, on behalf of a person, in connection with a particular matter in which the individual knows or reasonably should know was actually pending under his or her official responsibility as such officer or employee of the Office. The one (1) year period is measured from the date when the individual's responsibility in a particular area ends, not from the termination of service in the Office, unless both dates are concurrent. The prohibition applies to


February 10, 2004
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all particular matters subject to such responsibility in the one?year period before termination of such responsibility.

(3) The words and phrases in paragraphs (c)(2)(i) and (c)(2)(ii) are
construed as follows:

(i) Represent or representation means acting as a patent attorney or patent agent or in other representative capacity in any appearance before the Office or in communicating with an officer or employee of the Office.

(ii) Influence means to affect or alter by indirect and intangible
means.

(iii) Communication means any written correspondence or any oral conference or interview with an official or employee or the Office. The communication must be presented with the intent to influence the official or employee of the Office.

(iv) Appearance means that the individual is physically present before the Office in either a formal or informal setting, or the individual conveys material to the Office in connection with a formal proceeding or application. The appearance must be made with the intent to influence the official or employee of the Office.

(v) Person means patent or trademark applicant(s), an assignee or assignor of a patent, a trademark or a patent or trademark application, a protestor, a petitioner, a party in an interference, a party in a reexamination proceeding, or a party in any other proceeding before the Office. A "person" does not include the United States or the District of Columbia.

(vi) Participated personally and substantially as an officer or employee of the Office means that the former officer or employee participated directly and significantly in the matter under his or her control. The term "personally" applies to those matters in which the former officer or employee had personal responsibility through decision, approval, disapproval, recommendation, the rendering of advice, investigation or otherwise. The term "substantially" means that the individual's involvement must be of significance to the matter, or form a basis for a reasonable appearance of such significance. It requires more than official responsibility, knowledge, perfunctory involvement, or involvement on an administrative or peripheral issue. Factors to be considered are the


February 10, 2004 Page 23

effort devoted to a matter and the importance of the effort. While a series of peripheral involvements may be insubstantial, the single act of approving or participation in a critical step may be substantial.

(vii) Knows or reasonably should know was actually pending under his or her official responsibility as such officer or employee of the Office means the direct administrative or operating authority, whether intermediate or final, and either exercisable alone or with others, and either personally or through subordinates, to approve, disapprove, or otherwise direct government actions.

(3) The restriction for the particular matter set forth paragraphs (c)(2)(i) and (c)(2)(ii) of this section includes a patent application and extends to any reexamination, reissue, continuing and divisional application, any prior application of the patent application or to any proceeding involving or related to the patent application. The restriction for a particular matter also includes a trademark application and extends to any interference, concurrent use, opposition or cancellation proceedings involving or related to the trademark application.

Proposed Rule 11.11(a): It is suggested that the term "state bar" be changed to "State bar" in order that the term "State" is understood to be within the scope of the definition of "State" in proposed Rule 11.1 and also to be consistent with proposed Rule 7(h)(4).

Proposed Rule 11(b)(ii): The meaning of "each rule violated" is not understood. It is suggested that the rule define specifically what rules are intended to be covered by the proposed rule.

Proposed Rule 11.11(c): The term "application" could be confusing in view of the definition of the term in proposed Rule 11.1. It is suggested that the term be changed to "application for registration".

Proposed Rule 11.11(d)(5): Why is it necessary to repeat "(d)(5)"? When referring to "this paragraph," there would be no other interpretation that the paragraph referred to is "(d)(5)." This reference nomenclature is not found in other proposed rules having paragraphs that reference themselves. Therefore, for consistency, it is suggested that the reference to "(d)(5)" be deleted.

Proposed Rule 11.11(d)(6): The language "Any registered practitioner who has been voluntarily inactivated pursuant to paragraph (d) ..." is awkward. It is suggested that the language be amended to read: "Any registered practitioner who is in voluntarily inactive pursuant to paragraph (d) ...."

Proposed Rule 11.11(e): The phrases "A resigned practitioner's" and "a resigned practitioner" are awkward. It is suggested that the phrases be changed to recite "a practitioner who has resigned." The last sentence of the proposed rule is also awkward. It is suggested that the



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sentence be amended to read as follows: "A practitioner who has resigned and who willfully fails to comply with the provisions of this rule or § 11.116(d) will not be reinstated on the register until the practitioner demonstrates complete compliance with the aforesaid rules."

Proposed Rule 11.12(a)(4): The language of the rule is awkward and confusing. The first sentence of the proposed rule appears to be incomplete. The remainder of the proposed rule pertains to appealing a decision of the OED Director, presumably denying a waiver. It is suggested that the rule read as follows:

A practitioner may request, in writing, a waiver of the deadline for completing a program. The request must include a showing of good and sufficient cause for waiving the program. If the request is denied by the OED Director, the practitioner may seek review of the decision upon petition to the USPTO Director pursuant to § 11.2(d) with the fee required by § 1.21(a)(5)(ii).

Proposed Rule 11.13: The phrase "traditional or other appropriate distance delivery method" is not understood because the meaning of "traditional" or "other appropriate distance delivery method" has not been defined. It is suggested that the phrases be defined in proposed Rule 11.1. Also, what constitutes a "certificate of completion"? Is it a form issued by OED or is it a particular format to be followed. The term should be defined in proposed Rule 11.1.

Proposed Rule 11.13(f)(4): It is not clear why law firms, professional corporations and corporate law departments are not eligible as sponsors. Most of these entities provide weekly, biweekly or monthly programs that review recent court decisions and changes in the USPTO rules, practice and procedure to maintain currency in patent practice. The Office has not offered any reason in its comments as to why these entities are being excluded. It has the appearance of supporting private groups who may wish to promote these programs in lieu of in?house programs. It is suggested that the rule be deleted as being arbitrary and capricious.

Proposed Rule 11.14(c): The language "substantially reciprocal privileges" should be defined in proposed Rule 11.1 as defined in the Office comments for proposed Rule 11.6.

Proposed Rule 11.14(f): The term "application" is not clear in view of the fact that there is no register of trademark practitioners to which an "application" can be made for registration and in view of the definition of "application" set forth in rule. Is the Office planning to have a new register for foreigners to practice before the Trademark Office? The proposed rule is not understood and needs to be clarified.

Proposed Rule 11.16: This proposed rule is objected to and as written would appear to be in violation of the 4th Amendment under the U.S. Constitution. The practitioner's financial books and records are property protected under the 4th Amendment. The 4th Amendment guarantees the "right of the people to be secure in their persons, houses, papers and effects, against unreasonable searches and seizures, shall not be violated, and no Warrants shall issue, but upon probable cause, supported by Oath and affirmation, and particularly describing the place to be searched, and the


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persons or things to be seized." A practitioner cannot give up this right by rule without statutory authority. The Office would have to have probable cause and properly executed a subpoena to obtain and review such documents and accounts. There are no such provisions set forth in the proposed rule. Nor are there any provisions in the proposed rule to protect the constitutional rights of the practitioner. Accordingly, the proposed rule is an encroachment on the practitioner's constitutional right against unreasonable searches and seizures. It is suggested that the rule be deleted or modified to comport with the 4th Amendment.

Proposed Rule 11.19(a)(2) and (c)(2) and Proposed Rule 11.20(1)(2): If proposed Rule 11.19(a)(2) is directed to holding applicants for patent or trademark subject to the Rules of Professional Conduct and therefore, subject to discipline, I believe that the rule goes beyond the scope of 35 U.S.C. § 32. The statute permits the USPTO Director to suspend or exclude a person, agent or attorney after a hearing who is practicing before the Office and who is shown "to be incompetent or disreputable, or guilty of gross misconduct or who does not comply with regulations established under section 2(d)(2(D) of this title, or who shall, by word, circular, letter or advertising, with intent to defraud in any manner, deceive, mislead or threaten any applicant or prospective applicant, or other person having immediate or prospective business before the Office" (underscoring added for emphasis). It is my understanding of the statute that "person" would not include an applicant for patent or trademark or any person having prospective business before the Office. Therefore, I would propose deleting any reference to discipline of an applicant for patent or trademark.

Also, the proposed rule does not include the situation of an attorney (an individual) representing another individual in a trademark matter. It is suggested that the language "an individual appearing in a trademark or other non?patent matter pursuant to § 11.14(e), whether representing a firm, corporation, or association" be changed to recite: "an individual appearing in a trademark or other non?patent matter pursuant to § 11.14(e), whether representing another individual or a firm, corporation, or association".

Proposed Rule 11.19(b): Since the body of this rule refers to both voluntary and mandatory bar associations equally, it is suggested that the term "voluntary" be deleted from the title of the proposed rule.

Proposed Rule 11.19(c): It is not clear why this proposed rule is necessary. The proposed rule defines misconduct ? grounds for discipline. Proposed Rule 11.804 also defines misconduct under the PTO Rules of Professional Conduct, but not in the same way. Also, it is noted that paragraphs (c)(iii) of proposed Rule 11.19(c) is not specifically covered by proposed Rules of Professional conduct. I find it confusing to reconcile a rule which defines misconduct as including all of the Rules of Professional Conduct and a rule in the Rules of Professional Conduct that defines misconduct. There needs to be only a single source for defining misconduct. It is further noted that acts or omissions that constitute misconduct specific to practice before the Office are embedded in 11.101 to 11.803. Most of them find their origin in present Rule 10.23(c). Also, I do not believe that the statute, 35 U.S.C. § 32, permits subjecting persons in a non?representative


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capacity such a patent trademark or patent applicants to the PTO Rules of Professional Misconduct.

Section 10.23(c) of the present rules sets forth acts or omissions that are specific to practice before the PTO. It is clear that the Office wishes to retain all of the provisions in existing Rule 10.23(c). I have no problem with this approach. However, I would put them all of them, including those specific acts or omissions embedded in proposed Rules 11.101 to 11.803 as well as paragraph (c)(iii) of proposed Rule 11.19(c) into proposed Rule 11.804(h), and deleting proposed Rule 11.19(c).

Other objections to proposed Rule 11.19(c) are as follows. The phrases "acting individually or in concert with any other person or persons constituting gross misconduct" and "or the oath taken" appear to be incomplete. If the rule is maintained, it is suggested that the phrases be amended to recite: "acting individually or in concert with any other person or persons constituting gross misconduct" and "or violating the oath taken," respectively.

Proposed Rule 11.20(a)(1)(ii): The term "indefinite period" is ambiguous. Is the time truly indefinite in that it can include a period more than 5 years or is it a period of time that cannot exceed more than 5 years? Clarification is needed.

Proposed Rule 11.20(a)(2): The proposed rule allows for "dismissing the filing of an application with prejudice." There does not appear to be any statutory authority for the USPTO to dismiss a patent or trademark application that has been filed in the Office. Therefore, the rule would appear to be beyond the scope of the authority and powers granted to the USPTO Director.

Proposed Rule 11.22(d)(1): The definition of "complaint" as provided by this rule could be confused with the "complaint" set forth proposed Rules 11.35 to 11.37, 11.41, 11.42 and 11.45. In the latter rules, the complaint could be identified as the "§ 11.34 complaint" to distinguish the two different types of complaint. As discussed above with proposed Rule 11.3(d), there should be separate definitions to distinguish between a complaint under § 11.34 and a complaint alleging a violation of the Rules of Professional Conduct.

Proposed Rule 11.22(e): The terms "examine" and "preliminary inquiry" are misleading. The initial review of the complaint in accordance with the proposed rule does not involve more than reading of the complaint and determining whether the complaint should be docketed, i.e. whether an investigation or inquiry should be initiated. Also, it is noted that proposed Rule 11.22(f) appears to be in conflict with 11.22(e) since paragraph (e) states that the staff attorney makes the decision if the complaint or information is docketed while paragraph (f) states that the OED Director makes that determination. It is believed that the Office intended the OED Director make the ultimate decision. Therefore, it is suggested that the first sentence of this proposed rule be amended to read: "Under the supervision of the OED Director, a staff attorney shall review all complaints and information and shall make a recommendation to the OED Director as to whether the complaint or information is to be docketed."



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Proposed Rule 11.220)(2): The last part of the first sentence of this proposed rule is awkward. The procedure is not clearly defined. Also, it is not clear at this point in the proposed rules who is the "other representative" referred to in the proposed rule. In addition, the open term "Director" is indefinite. Authorization to contact a noncomplaining client must be approved by the USPTO Director, i.e. following the chain of command. Accordingly, it is suggested that the first sentence of the proposed rule be amended to read:

The OED Director, or staff attorney or a representative of the OED (see § 11.40) may request information from a non?complaining client of the practitioner under investigation after obtaining the consent of the practitioner or after approval by the USPTO Director upon a showing of good and sufficient cause by the OED Director.

Comments at page 69456 (column 2) with respect to proposed Rule 11.220) refer to "attorney." Why would the provisions of proposed Rule 11.220) not apply to patent agents also?

Proposed Rule 11.22(k): This proposed rule to allow OED to request financial records during an investigation without probable cause is objected to for the reasons set forth above with respect to proposed Rule 11.16. Examination of escrow accounts or trust accounts by OED would be limited to determining if the account conforms to the requirements set forth in § 11.115(a). With respect to all other financial records, OED must work within the framework of the 4th Amendment of the U.S. Constitution. The constitutionality of the rule must be examined and the rule be deleted or amended accordingly.

Proposed Rule 11.22(1): The term "replies evasively" is ambiguous in that the rule does not specify what constitutes an evasive reply. It is suggested that the proposed rule be amended to read as follows:

If a practitioner or other individual (see § 11.19(a)(2)) fails to reply to the request for information sought under paragraph (j) of this section or whose reply clearly and convincingly shows an intent to evade answering questions propounded in a requirement for information, the OED Director may request the Committee on Discipline to enter an appropriate finding of probable cause of violating § 11.804(d).

Proposed Rule 11.22(n)(4): The term "available evidence" is ambiguous. Since the OED investigation creates a written record in a file, and since any decision will be based on that record, it is suggested that the term "available evidence" be changed to "evidence of record in the OED investigation file."

Proposed Rule 11.23(a): It is suggested that the phrase ??of the USPTO?? be added after "General Counsel" so as to distinguish the PTO General Counsel from the Department of Commerce General Counsel.


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Proposed Rule 11.24(b): The phrase "certified copy of the record" appears to be incomplete in that the source of the record is unclear. It is suggested that "of the disciplinary court" be inserted after "record."

Proposed Rule 25(a) and (f): The meaning of terms "moral turpitude" and "moral turpitude per se" are not understood. Definitions of these terms should be added to proposed Rule 11. l. The reason for this is that the interpretation of these terms by the courts varies from jurisdiction to jurisdiction. The Office rules should define the scope of these terms so that the public has some idea of how the terms will be interpreted and applied in disciplinary proceedings. Accordingly, it is suggested that the Office define the terms and provide some guidance as to what constitutes "moral turpitude" or "moral turpitude per se. "

Proposed Rule 25(b) and (c): The language in the first part of the paragraph does not conform to the definitions set forth in proposed Rule 11.1, and it therefore the rule can be ambiguous. The term "state" by definition in proposed Rule 11.1 includes district or territories of the United States. It is not clear whether the Office intended a difference in jurisdiction from the term "State" as defined in proposed Rule 11.1. Accordingly, it is suggested that the first part of the first sentence of proposed Rule 25(b) and (c) be revised to read: "Every practitioner convicted of a crime in a court of the United States or of any State, or of a foreign country shall be . ..."

Proposed Rule 25(d): The first sentence of the proposed rule is awkward and confusing since it is not clear what the time limit for the suspension would be with respect to appeals. It also does not take into account a reversal on appeal. It is suggested that the first sentence read as follows:

Following receipt of a certified copy of the court record or docket entry of the conviction, the USPTO Director shall enter an order of interim suspension from practice before the Office. The interim suspension would remain in effect until the time for appeal has lapsed (if no appeal is taken), until the judgment or conviction is reversed or affirmed on appeal or has otherwise become final, or as otherwise set forth in an order of the USPTO Director.

Proposed Rule 28: It is suggested that the title of this proposed rule be changed to "Disability and incapacitated practitioners." The reason for the suggested change is that the term "incompetent" may be confused with incompetence, not due to disability or incapacity, but due to taking on a matter the practitioner is not trained or qualified to handle. See proposed rule § 11.101. Any practitioner who is disabled or incapacitated could be determined to have committed acts or omissions that could be judged as showing incompetence. The purpose of proposed Rule 28 is to set forth a procedure for judging disability or incapacity and providing proceedings, separate from disciplinary proceedings, to determine if a practitioner should be declared disabled or incapacitated and be placed in a special inactive status in lieu of discipline. Also, the proposed rule speaks of a hearing officer and a proceeding, but the rule does not establish a hearing per se. Accordingly, it is suggested that the title of section (a) be changed to "Disability Proceedings" and that the first sentence be amended to read:


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This section applies to all matters involving disability or incapacity of a practitioner. A hearing will be conducted before a hearing officer to determine: ....

In paragraph (a)(4), the phrase "or a hearing officer" should be changed to "or whether the hearing officer".

The proposed rule also speaks of a "disability inactive status". However, this status is not specifically created in the rules. Also, it is not clear how this inactive status would be enforced in the case of non?patent practitioners, e.g., those unregistered practitioners practicing before the Trademark Office. With respect to these practitioners, a notice of some sort in the Office will be required. Therefore, clarification as to the procedures for non?patent practitioners is required. In any event, it is suggested that a new section at the beginning of the rule be established to read:

If a practitioner been determined to be disabled or incapacitated in accordance with this rule, the practitioner will placed in a disability inactive status and may no longer practice before the Office in patent, trademark and other non?patent law.

The proposed rule speaks of transferring the practitioner's name to an inactive status. In reality, it is the practitioner who has inactive status, and not the name. Also, transferring the name of a non-registered practitioner to an inactive status is not possible since there is no roster or register maintained by the Office for non?registered practitioners. Therefore, clarification of this procedure is needed.

Paragraphs (d)(1)(i), (e) and (f)(6) in the proposed rule use the term "an indefinite period." The scope of this term is ambiguous since the rules do not provide any guidelines as to a procedure for terminating the "indefinite period". Clarification is required since the public should be apprised of what action can be taken to end the "indefinite period." Also, paragraph (i)(3)(iii) uses the term "an appropriate prior period". This term is also indefinite without any guidelines to establish what would be an appropriate period. Again, clarification is required.

Proposed Rule 11.28(d)(1)(ii): This proposed rule refers to "a petition under paragraph (d)(1)(i)." However, paragraph (d)(1)(i) refers to a request by the OED Director to the Committee on Discipline for authority to secured an order from the USPTO Director to transfer the practitioner to a disability inactive status. There is no mention of a "petition". Clarification is required.

Proposed Rule 11.28(f)(1): The proposed rule states that the "Committee on Discipline may issue a probable cause determination ..." It is not clear what constitutes a "probable cause determination" because the rule does not state the basis for the probable cause. It is suggested that the rule be amended to read:

A panel of the Committee on Discipline shall determine whether probable cause exists to believe that the practitioner is disabled or incapacitated and should no


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longer practice before the Office in patent, trademark and other non?patent law, based on the evidence in the OED Director's request.

Proposed Rule 11.28(h)(2)(iii): The first sentence appears to be incomplete. Who enters an order referring such issues to the hearing officer and who is the hearing officer? .Is the hearing officer who hears evidence for disability the same hearing officer who hears evidence on discipline? Clarification is required.

Proposed Rule 11.28(i)(2): The last portion of the proposed rule requires that a motion by the practitioner conform to the requirements of paragraph (f)(3). A review of paragraph (f)(3) does not set forth any requirements for a motion. Clarification is required.

Proposed Rule 11.34(b): The phrase "if the specific violations were not in the finding of the probable cause decision" is awkward since there is no decision with a finding, but a determination if probable cause exists. To be consistent with proposed Rule 11.32, it is suggested that the language be revised to read: "if the specific violations were not part of the finding of probable cause by the panel."

Proposed Rule 11.35(a)(1): Paragraphs (a)(1)(i), (a)(i)(ii) and (a)(1)(iii) do not appear to be linked to paragraph (1). It is suggested that these paragraphs be amended to read as follows:

(i) For a respondent who is a registered practitioner, the copy will be delivered at the address for which separate notice was last received by the OED director.

(ii) For a respondent who is a non?registered practitioner, the copy will be delivered at the last address for the respondent know to the OED Director.

(iii) The copy may be delivered by any method mutually agreeable to the OED Director and the respondent.

Proposed Rule 11.36(f)(2): The term "forthwith" is not necessary and it is suggested that the term be deleted.

Proposed Rule 11.36(f)(2) and (f)(2)(i): The term "monitor(s) and "monitors" should be defined in Rule 11.1 because it is not clear who these individuals may include, i.e., are they only practitioners only or are they practitioners and other non?registered professionals who specialize in areas such as drug or alcohol addiction.

Proposed Rule 11.49: Comments were invited as to whether the present standard of proof in disciplinary proceedings should be continued. I am in favor of continuing the present standard. Usually respondents in disciplinary matters do not have the resources for long and protracted proceedings. In most cases a deal is brokered with OED. If a lesser standard was used, then less proof would be required by the Office which could lead to an increase in appellate reviews, which most respondents could not afford. If the evidence is clear and convincing and the respondent


February 10, 2004
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does not have a clear and convincing defense, then the respondent is more likely to settle than fight. Too much is at stake for a lesser standard.

Proposed Rule 11.55(a): The terms "the appellant's brief' and "the cross appellants' brief' do not have antecedent basis and the use of the terms appears to be awkward in the context of the language of the rule. Also, it is not clear whether the appeal is the filing of a notice of appeal or filing briefs. The rule tries to take into account appeals by either the OED Director or the respondent, but it is confusing. In addition, I do not see why it is necessary to state when or that the record is being transmitted to the USPTO Director. In addition, it is not clear whether the person who is subject to a hearing under proposed Rule 11.28 is a respondent. It is therefore suggested that proposed Rule 11.55(a) rule be changed to read as follows:

Within thirty (30) days from the date of the initial decision of the hearing officer under §§ 11.28 or 11.54, either party may appeal to the USPTO Director by filing an appeal brief. If an appeal is taken, the time for filing a cross?appeal brief shall expire fourteen (14) days after the date of service of the appeal brief pursuant to § 11.42, or thirty (30) days after the date of the initial decision of the hearing officer, whichever is later. The appeal brief and cross?appeal brief shall be filed with the USPTO Director and served on the other party, and shall include exceptions to the decisions of the hearing officer and supporting reasons for those exceptions. Both briefs must include a separate section containing a concise statement of the disputed facts and disputed points of law. Any issue not raised in the concise statement of disputed facts and disputed points of law shall be deemed to have been waived by the appellant and may be disregarded by the USPTO Director in reviewing the initial determination, unless the USPTO Director chooses to review the issue on his or her own initiative under § 11.56. The other party to an appeal or cross?appeal may file a reply brief. A copy of the reply brief shall be served on the appellant or cross?appellant. The time for filing any reply brief expires thirty (30) days after the date of service pursuant to § 11.42. Unless the USPTO Director permits, no further briefs or motions shall be filed.

Proposed Rule 11.55(b): Again, this rule looks complicated and confusing. It should be simplified as follows:

The appellant's or cross?appellant's brief shall be no more than 30 pages in length on 8%2 by 11 inch paper, and shall comply with Rule 28(a)(2), (3), and (5) through (10), and Rule 32(a)(4), (5), (6), and (7) of the Federal Rules of Appellate Procedure. The appellee's or cross appellee's reply brief shall be no more than 15 pages in length on 8'/2 by 11 inch paper, and shall comply with Rule 28(a)(2), (3), (8), and (9), and Rule 32(a)(4), (5), (6), and (7) of the Federal Rules of Appellate Procedure. The USPTO Director may refuse entry of a nonconforming brief. The party who files the appeal brief will be regarded as the appellant. If the appeal brief and cross?appeal brief are filed on the same day, the OED Director will be the appellee.


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Proposed Rule 11.58: Rule 10.158(b)(1) gives a disciplined practitioner 30 days to wind up his affairs. Proposed new Rule 11.58(b)(1) reduces the time period to 20 days. If the 20 day period is not a typographical error, it is suggested that the time limit be set for 30 days since 20 days is not sufficient time for the practitioner to comply with the requirements of the rule. Most practitioners who are disciplined are solo practitioners who have individual clients and small industrial clients. These types of clients may not respond immediately to correspondence. Also, there is the problem of dealing with banks and accountants. If the Office permits 30 days for closing up the practitioner's business, it is suggested that the time period for filing of an affidavit as required by proposed Rule 11.58(b)(2) be set at 45 days. This would give the respondent time to prepare the affidavit after closing down his or her business and allowing time for the practitioner to have the affidavit reviewed by counsel, if necessary.

I appreciate the opportunity to comment on proposed Rules 11.1 to 11.62. I will present my comments with respect to the PTO Rules of Professional Conduct later.

Sincerely yours,


Cameron Weiffenbach
CKW/jdj

WDC99 877605?1.009900.0011

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