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Cameron Weiffenbach


June 4, 2004

Mail Stop OED-Ethics Rule
P.O. Box 1450
Alexandria, VA 22313-1450

Attention: Harry I. Moatz


RE: Comments Regarding Changes to Representation of Others Before the USPTO


Dear Mr. Moatz:

I appreciate the opportunity to comment on proposed Part D, proposed Rules 11.100 to 11.806. I am a former Director of the Office of Enrollment and Discipline and I offer the following comments directed to Part D as well as to proposed Rules 11.11(b), 11.12(d), 11.24(b) and 11.25 of the proposed new rules for Representation of Others Before the USPTO published in the Federal Register on December 12, 2003. The time period for comments on these rules was extended to June 11, 2004 pursuant to a notice in the Federal Register, Vol. 69, No. 42 (March 4, 2004).

My comments are in three parts. The first part is directed to comments with respect to proposed Rules 11.11(b), 11.12(d), 11.24(b) and 11.25. The second part is what I consider as technical errors in the rule package, for the most part, numerous errors in Correlation Table 3 on page 69506 to 69510 of the rules package. The third part is my substantive comments on the proposed new rules in Part D along with my suggestions for changing the proposed rules.

Further Comments re Proposed Rules 11.11(b), 11.12(d), 11.24(b) and 11.25

Proposed Rules 11.11(b), 11.12(d), 11.24(b) and 11.25 set forth procedures for interim suspension and/or administrative suspension. The procedures outlined in the new rules would allow the Office to administratively suspend a practitioner (i) who fails to comply with a notice to pay the annual fee or fails to comply with the continuing education requirements (proposed rules 11.11(b) and 11.12(b)), (ii) who is an attorney and who has been suspended or disbarred by a disciplinary court, and (iii) who has been convicted of a serious crime. To suspend a practitioner from practice without a hearing is contrary to the patent statutes.
35 U.S.C. § 32 states that the “Director [of the USPTO] may, after notice and opportunity for a hearing, suspend or exclude, either generally or in any particular case, from further practice before the Patent and Trademark Office, any person, agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or show does not comply with the regulations established under section 2(b)2(D) of this title ” (underscoring added for emphasis). The statute does not permit suspensions (administrative, interim or otherwise) except after giving opportunity for a hearing. The procedures outlined in the proposed rules would enter suspensions before notice of opportunity for a hearing. The proposed rules cannot usurp the provisions of 35 U.S.C. § 32. Accordingly, it would appear that either 35 U.S.C. § 32 would have to be amended to provide for administrative or interim suspensions or a new statutory provision, such as 35 U.S.C. § 31, providing for administrative or interim suspensions is required.

Technical Comments

Table 3: Competence, §11.101(c)(1): The source for this proposed rule is §10.77(a), and not 10.23(c)(7). Proposed rule §11.101(c)(1) is directed to competent handling of legal matters which is the subject of §10.77(a). The source, §10.23(c)(7) in Table 3, is directed to knowingly withholding information from the PTO, clearly unrelated to proposed §11.101 (c)(1).

Table 3: Competence, §11.101(c)(2): Proposed Rule 11.101(c)(2) is directed to withholding from the Office information regarding copied claims. The misconduct is set forth in present Rule 10.23(c)(7), and not in present Rule 10.23(c)(13).

Table 3: Competence, §§11.101(c)(3) and (c)(4): The proposed rules are new and do not find there source in present Rules 10.23(c)(19) and (c)(20), respectively. Proposed Rule 11.101(c)(3) is directed to a practitioner who uses procedures no longer employed by the Office while present Rule 10.23(c)(19) is directed to actions of an Office employee in violation of the bar established in Rule 10.10(c), i.e., aiding in prosecution of patent application on behalf of a client or former client while employed by the Office. As for proposed Rule 11.101(c)(4), this rule is directed to filing a "frivolous" patent application while present Rule 10.23(c)(20) is directed to practice by a Federal employee subject to Departmental or agency conflict of interest regulations. Accordingly, there does not appear to be any relationship between the proposed new rules and present Rules 10.23(c)(19) and (c)(20).

Table 3, Scope of representation, §11.102(d): The source for proposed Rule 11.102(d) should be DCRPR 1.2(f), and not MRPR 1.2(d).

Table 3, Scope of representation, §11.102(e): The source for proposed Rule 11.102(e) should be DCRPR 1.2(e), and not MRPR 1.2(e).

Table 3, Scope of representation, §11.102(g): Table 3 lacks an entry for new proposed Rule 11.102(g), the source of which should be present Rule 10.85(b)(1).

Table 3, Diligence, §11.103(a): The source is present Rule 10.83, and not MRPR 1.3 since the exact language of the proposed rule can be found in present Rule 10.83.

Table 3, Diligence, §§11.103(b) and (c): The proposed rules are not "new", but come from difference sources. The source for proposed Rule 11.103(b) is MRPR 1.3 while the sources for proposed Rule 11.103(c) are present rules 10.77(c), 10.84(a)(1) and 10.84(a)(3).

Table 3, Fees, §11.105(e)(1): The proposed rule should be §11.105(d)(1), and not §11.105(e)(1) and the source should be DCRPR 1.5(e)(1).

Table 3, Fees, §§11.105(e)(2)-(4): The proposed rule should be §11.105(d)(2)-(4), and not §11.105(e)(2)-(4).

Table 3, Fees, §11.105(f): The proposed rule should be §11.105(e), and not §11.105(f).

Table 3, Confidentiality, §§11.106(d)-(h): The sources for §§11.106(d)-(h) should be DCRPR 1.6(d)-(g).

Comments, page 69473, subheading "Paragraph (c)(3)(B) and paragraph (d) of § 11.106": The discussion regarding sections (c)(3)(A) and (c)(3)(B) is confusing since there are no proposed Rules 11.106(c)(3)(A) or (c)(3)(B) in the rule package. Also, the comments define the term "agency". This definition should be incorporated into proposed Rule 11.1. The comments also refer to proposed Rules 11.106(d)(2)(A) and (d)(2)(B). These rules also do not exist in the rule package.

Comments, page 69474, subtitle "Full Disclosure": The comments state that the term "full disclosure" is defined in proposed Rule 11.1(n). There is no Rule 11.1(n) in the rule package. Same issue exists with respect to comments on page 69476 under subheading "Interest of third person paying for a practitioner's services." See also page 69480, first column.

Comments, page 69474, subtitle "Consent": The comments state that the term "consent" is defined in proposed Rule 11.1(e). There is no Rule 11.1(e) proposed. Same issue with respect to comments on page 69476 under subheading "Interest of third person paying for a practitioner's services."

Table 3, Conflicts of Interest, §11.107(c): The proposed rule is not provided for as being "new."

Table 3, Government/Private, §11.111(a): The source for proposed Rule 11.111(a) is DCRPR 1.11(a), and not MRPR 1.11(a).

Table 3, Government/Private, §11.111(b): The source for proposed Rule 11.111(b) is DCRPR 1.11(b), and not MRPR 1.11(b).

Table 3, Government/Private, §11.111(c): The source for proposed Rule 11.111(c) is DCRPR 1.11(c), and not MRPR 1.11(c).

Table 3, Government/Private, §11.111(d): The source for proposed Rule 11.111(d) is MRPR 1.11(b), and not MRPR 1.11(d).

Table 3, Government/Private, §11.111(e): The source for proposed Rule 11.111(e) is MRPR 1.11(c), and not MRPR 1.11(e).

Table 3, Government/Private, §§11.111(f)-(i): The table does not provide for provisions §§11.111(f)-(i) as being "new."

Table 3, Organization as Client, §11.113(e): The source for this proposed rule is not MRPR 13(e), but MRPR 1.13(e).

Table 3, Client Under a Disability, §§11.114: The proposed rule has parts (a) and (b). It is not understood why the designation of the source is given generally MRPR 1.14 while in other sections of the table, separate sources are identified for each multiple part of the proposed rule. For example, §11.110 has three parts (a), (b) and (c) and the sources are identified as MPRP 1.10(a), 1.10(b) and 1.10(c), respectively. There should be consistency in the table for identifying sources in rules that have multiple sections.

Table 3, Declining/Terminating Representation, §§11.116(d)(1), (d)(2) and (d)(3): The proposed rules are new provisions not found in MRPR 1.16(d).

Table 3, Intermediary, §11.202(b): The source of the proposed rule is not “new,” but is MRPR 2.2(b).

Table 3, Intermediary, §11.202(c): The table lists two sections "11.202(c)." The source for the first §11.202(c) is not MRPR 2.2(b), but MRPR 2.2(c). The second §11.202(c) should be §11.202(d), and the source should be “new.”

Table 3, Evaluation for Third Party, §11.203: The table does not provide for all provisions of §11.203. The source for §11.203(a) should be MRPR 2.3(a), the source for §11.203(b) should be MRPR 2.3(b), and the source for §11.203(c) should be “new.”

Comments at page 69491 regarding duration of obligation of duty of disclosure with respect to patents: According to the Office comments, the duty of disclosure continues for "the period for which the patent is granted.” A duty of disclosure for prior art that extends through the life of the patent (if that is what "the period for which the patent is granted” means), represents a major shift, and a pretty daunting one for practitioners working with big portfolios. Rule 1.56 and scope of Kingland v. Dorsey imposes a duty of disclosure in proceedings before the PTO, but not with respect to patents that are not involved in proceedings before the PTO. Clarification is required.

Table 3, Communication Between Practitioner and Opposing Counsel: The reference to “§11.402(b)-(d)” should be --§11.402(b)-(c)-- and the source is --DCRPR 4.2(c)-(d)--, and not “DCRPR 4.2(b)-(d).”

Table 3, Professional Independence of a Practitioner, §11.504(b): The source for §11.504(b) is --new--, and not “MRPR 5.4(c)." Also, there is no provision for Section “§11.504(c),” the source of which is --MRPR 5.4(c)--.

Table 3, Membership in Legal Services Organization, §11.604: Proposed Rule 11.604 should have the subtitle --Law Reform Activities--.

Table 3, Law Reform Activities, §§11.701: The subtitle is incorrect. It should be --Communi-cations Concerning a Practitioner’s Services--. Also, §11.701(a) should be added and include its source as --MRPR 7.1(a)-(c).

Table 3, Law Reform Activities, §11.701(b)(1)-(4): The source for the proposed rules should be DCRPR 7.1(b)(1), (b)(2), (b)(3) and (b)(5).

Table 3, Law Reform Activities, §§11.701(d) and (e): The source for the proposed rules should be §10.31(a) and (b).

Table 3, Advertising, §11.702(d) and (e): The source for proposed Rule 11.702(d) should be “new” while the source for proposed Rule 11.702(e) should be MRPR 7.2(d).

While the above may not be all inclusive of all of the errors in Table 3 in the proposed rules package, in view of the number of errors believed to have been made, the Office should carefully review the Tables in the final rules for accuracy.



Substantive Comments

My general observations are that the requirements of some of the rules will be unnecessarily burdensome to practitioners as well as represent traps for the practitioner. For example, proposed rules 102(c), 105d)(2), 105(d)(3), 106(a), 106(d)(1), 106(d)(2), 106(d)(3), 107(a)(2), 107(b)(2), 108(a)(3), 108(b), 108(f)(1), 108(g), 108(j), 108(k), 109(a), 109(b)(2), 112(a), 202(a)(1) and 203(a)(2) use language such as "consents in writing after fully disclosure," "informed consent in writing," "informed consent in writing after full disclosure," "upon informed consent by the client, confirmed in writing, after full disclosure," "informed consent, confirmed in writing, after full disclosure" or with full disclosure , and obtain from each client informed consent, confirmed in writing." The definition of "full disclosure" in the rule package is infinite while the term "informed consent" has not been define. As for the writing requirement, this would be very burdensome on the practitioner. The consistent language used in the ABA Model Rules is "consents after consultation." The Office has not offered in its comments any compelling reasons for not using the language in the ABA Model Rules, language which has been adopted by the States who use the Model Rules.

Proposed Rule 11.1 defines "full disclosure" as meaning "a clear explanation of the differing interests involved in a transaction, the advantages of seeking independent legal advice, and a detailed explanation of the risks and disadvantages to the client entailed in any agreement or arrangement, including not only any financial losses that will or may foreseeably occur to the client, but also any liabilities that will or may foreseeably accure to the client" (underscoring added for emphasis). The terms "clear explanation" and "detailed explanation" can be traps for the unwary practitioner. These terms have not been defined in the proposed rules and can be subject to different interpretations. How much of an explanation constitutes a "clear explanation"? How much explanation constitutes a "detailed" explanation?

The term "informed consent" and the phases "informed consent in writing" and "informed consent by the client" have not been defined in the rule package. The scope and meaning of these terms are not known.

As for the writing requirement, what constitutes an adequate confirmation "in writing"? This can be a trap for practitioners who inadvertently fail to do something the Office subjectively determines should be "in writing." The rules do not define the meaning of "written" or "in writing." Is it an agreement or can it be an exchange or series of letters, facsimiles, and emails? While a writing requirement would be preferred, why is it necessary that it be mandatory. The requirement would be burdensome on the practitioner because the writing will take time to prepare and review for completeness and accuracy. The time taken with respect to make such a writing would not be passed on to the client because most of requirements set forth in the proposed rules are directed to consultations that occur when the engagement with a client is initiated. Even if it is required with an established client, no reasonable practitioner would pass the cost of preparing such a writing to the client because it is not related to the preparation and prosecution of a patent application.

There are situations where a writing should be required. For example, invention promoter companies have a track record of conduct involving lack of disclosure or communication to their clients. Also, these are often complex business relationships between several practitioners and several invention promoters. Unsuspecting inventors are not aware of these relationships. The customers of the invention promoters should be made aware of the relationships the invention promoter has with patent practitioners so that the customer can make appropriate business decisions. Clearly, complaints regarding invention promoters and practitioners associated with them are common.

It is noted that proposed Rules 11.101(c)(2), 11.104(d), 11.111(i), 11.115(i), 11.303(e), 11.305(d) and 11.803(f) embed misconduct that would be a violation of the particular rule. The embedded misconduct comes from the list in Rule 10.23(c) which defines some 20 specific acts that constitute misconduct in practice before the Office. Proposed Rule 11.804(a) to (g) defines misconduct and has some of the same provisions as Rule 10.23(a) and (b). While the misconduct identified in the aforementioned proposed Rules 11.101(c)(2), 11.104(d), 11.111(i), 11.115(i), 11.303(e), 11.305(d) and 11.803(f) could also be considered misconduct under proposed Rules 11.804(c) and/or (g), it is strongly suggested that such misconduct be set forth in the single rule labeled "Misconduct", namely proposed Rule 11.804 so that all acts the Office has specifically identified as misconduct such as that found in present Rule 10.23(c) can be easily identified in a single rule as opposed to being spread over multiple rules.

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 11.101(c)(2): Proposed Rule 11.101 is one of several proposed rules in this rule package in which provisions of present Rule 10.23(c) have been embedded in the proposed rule. Proposed Rule 11.101(c)(2) identifies a single specific activity that constitutes misconduct under proposed Rules 11.101(a) and (b). Proposed Rule 11.101(c)(2) defines misconduct. For reasons discussed supra, it would be more appropriate to list all such misconduct in proposed Rule 11.804 since the misconduct could involve more than disciplinary rule. Therefore, it is suggested that proposed Rule 11.101(c)(2) be moved to proposed Rule 11.804(h).

Proposed Rule 11.101(c)(3): The proposed rule is strongly objected to for the following reasons. In recent years, the Office has changed its practice and procedures so much and so frequently that both practitioners and Office employees have difficulty keeping up with the changes in practice. For example, there have been two major changes in amendment practice in the last two years. In addition, CPA and RCE practice has changed significantly in the last 5 years. The proposed rule would be a trap for practitioners. The proposed rule provides no guidelines as to when and how it is determined that the Office no longer authorizes a practice or procedure. How flagrant does the improper application of a rule or procedure have to be to constitute misconduct? What if a practitioner could be disciplined for unknowing using an old procedure. Is this grounds for discipline? If it is, I would regard it as being punitive. Therefore, it is suggested that the Office not adopt the proposed rule.

Proposed Rule 11.101(c)(4): The proposed rule is strongly objected to for the following reasons. The rule is ambiguous. What constitutes a "frivolous invention"? The rule does not provide any meaningful guidelines or standards for making such a determination. The rule states that “[a]n application claims a frivolous invention or a filing is frivolous where the claim of patentability or argument is known or should have been known by a reasonable prudent registered practitioner to be unwarranted under existing law, and said claim or argument cannot be supported by good faith argument for an extension, modification or reversal of existing law.” It is not clear what constitutes “unwarranted under existing law” or when a “claim or argument cannot be supported by good faith argument for an extension, modification or reversal of existing law.” What ever happened to advocacy? Even the courts reverse themselves based on new arguments that are made against existing law. The Office cannot take this away from a practitioner's right to be an advocate for the client. A practitioner can advise a client that the client's invention is frivolous and that it would be a waste of money to file it. But after being so advised, the client wishes to proceed, it is the decision of the client controls. See proposed Rules 11.102 and 103. Moreover, the rule appears to be in conflict with §11.103 which requires the practitioner to represent a client zealously within the bounds of the law. Also, there is no statutory basis under the patent statute that limits applications for patents on "unfrivolous" inventions. It is requested that the Office not adopt this proposed rule.

Proposed Rule 11.102(c): Normally the engagement letter does not set forth "objectives" of representation, but the "scope" of representation. The term "objectives" implies something toward which an effort is directed, e.g. a goal, whereas "scope" means the extent or range of representation. Accordingly, it is suggested that the term "objectives" be changed to --scope--. Also, why is it necessary that the consent be in writing? The means for getting the consent should be left to the practitioner. It is suggested that the language as used in the MRPR be adopted, namely, --the client consents after consultation--.

Proposed Rule 11.102(d): While correlation Table 3 refers to the source of the proposed rule as MRPR 1.2(d), the proposed rule as written is not recognizable as being from the MRPR. Also, in proposed Rule 11.102(d), the term "practitioner's conduct" implies improper conduct by the practitioner. The expression "expects assistance" is not understood and the phrase "disregarding a decision of the Office made in the course of a proceeding before the Office" is not clear. What constitutes a "decision'? Would an Office Action be a "decision" and would failing to respond to an Office Action as instructed by the client be a violation of this proposed rule since an Office Action could be a decision and the examination of a patent or trademark application is a "proceeding before the Office"? Would counseling a client to appeal a final decision in an Office proceeding be a violation of the proposed rule? The phrase "disregarding a decision of the Office made in the course of a proceeding before the Office" is not clear and should be further defined so that the public knows exactly what the Office intends to cover by the proposed rule. It appears that the Office is trying to incorporate some modification or form of present Rule 10.85 into the new rules in light of the Li Second Family case. In view of the above, it is suggested that proposed Rule 11.102(d) be changed to read: --A practitioner shall not counsel or assist a client having immediate or prospective business before the Office that the practitioner knows to be fraudulent or to be a violation of the Office the Rules of Professional Conduct or other law.--

Proposed Rule 11.104(a)(2): This rule came from notices published in the Official Gazette at 1086 OG 457 and 1091 OG 26 in 1988. The OG notices merely served as a guide for practitioners. I strongly object to making these guides as a rule of professional conduct. The current practice in which U.S. practitioner's deal with foreign agents or attorneys "ain't broke." It works just fine. To institute a writing requirement would be burdensome and would significantly complicate the current practice and interfere with the relationship between the foreign agent and his client. Whether or not a practitioner feels that a written and informed consent should be left to the practitioner who will make a judgment depending on the facts and circumstances and historical dealings the practitioner has had with particular foreign agents and their clients. The Office, by its notices in the Official Gazette, has given practitioners a procedural guideline. It is not mandatory, but suggestive. I strongly object to making such a guideline as a rule of professional conduct even if it is not an imperative rule. The comments do not provide any compelling reason for converting the OG notices into rules of professional conduct. It is suggested that this rule not be adopted.

Proposed Rule 11.104(d): The proposed rule embeds misconduct specifically set forth in present Rule 10.23(c)(8). This misconduct could also be a violation of proposed Rule 11.804(c) or (g). As discussed supra, it is suggested to that the proposed rule be moved to proposed Rule 11.804(h).

Proposed Rule 11.105(b): The proposed rule would require that a written communication be prepared for clients who are not regularly represented by the practitioner to "distinguish between and specify the basis or rate for preparation and filing an application in the Office, and for prosecution of the application (including replied to Office Actions, petitions, affidavits, appeal briefs, and the like." This requirement is unrealistic in the real world. A practitioner cannot predict these fees. Most firms operate on an hourly basis and do not have set fees for preparing applications or other documents to be filed in the Office. Also, it is not possible to predict ahead of time whether the prosecution will be simple or complex and how many actions will be issued by the Examiner. It is not possible to predict the type of response that may be necessary to respond to a Office action. The actual fees are not predictable. It is therefore requested that the last sentence in the proposed rule be deleted.

Proposed Rule 11.105(d)(3): The scope and meaning of "informed consent" has not been set forth in the new rules. Why is it necessary that the arrangement be in writing? While a writing would be preferable, the practitioner should be given wider berth to use other methods for getting consent. It is suggested that the terms "informed" and "in writing" be deleted so that the rule comports with the DCRPR, i.e., the client consents to the arrangement.

Proposed Rules 11.106(a) and (d)(1): These sections use the terms "informed consent" and "after full disclosure". The terms are indefinite for reasons stated supra. It is suggested that the language "client consents after consultation" as in the Model Rules be used in place of "client gives informed consent in writing after full disclosure by the practitioner."

Proposed Rule 11.106(a)(3): The terms "confidence" and "secret" should be defined in proposed new Rule 11.1. The terms are defined in DCRPR 1.6(b).

Proposed Rules 11.106(d)(1), (d)(2) and (d)(3): Proposed Rules 11.106(d)(2) and (d)(3) appear to be substantially overlapping. Also, with respect to proposed Rule 11.106(d)(1), the terms "informed consent" and "full disclosure" are indefinite for reasons stated supra. Also, the wording in the proposed rules is confusing. For example, in my initial reading of proposed Rule 11.106(d)(3), I did not understand what the law of the Office meant. The rule would be clearer if the first part of the rule is rewritten to state: "With the law or with the regulations of the Office ." Also, in propose Rule 11.106(d)(3), I do not understand the import of the phrase "whether or not the practitioner is employed by the Federal Government." I find the phrase confusing. It is suggested that proposed Rule 11.106(d) be rewritten in simpler language as follows:

(d) A practitioner, in regard to practice before the Office, may use or reveal a confidence or secret or other information relating to representation of a client:
(1) With the client's consent after consultation;
(2) When permitted by these rules or required by law or court order; and
(3) If the practitioner is employed by the Federal Government, when permitted or authorized by law.

Proposed Rule 11.106(e): This section states: "The client of the practitioner employed by the Federal Government is the Department, agency, or commission that employs the practitioner unless appropriate law, regulation, or order (court order? executive order?) expressly provides to the contrary." The rule, as written, does not make any sense. It is not clear what would be an ethical violation by this proposed rule. Also, it is not clear what the proposed rule has to do with confidences and secrets or confidentiality of information? It is suggested that this proposed rule be deleted or that it be clarified.

Proposed Rule 11.106(g): The rule provides that a practitioner shall "preserve in confidence such information" after termination of the practitioner's employment, "except as provided for in §1.56." It is not clear what constitutes "such information" since there does not appear to be any antecedent basis for such information. Also, why only § 1.56? Why not include the exceptions set forth in proposed Rule 11.106(d)?

Proposed Rules 11.107(a)(2) and (b)(2): The proposed rules require that a practitioner shall not represent a client if the representation is adverse to a prospective client or would materially limit representation to the client, unless each client gives "informed consent in writing after full disclosure." The expression "informed consent in writing after full disclosure" is indefinite for reasons stated supra. Also, the Office has not presented any compelling reason why such consent must be in writing. The writing requirement is not required in the ABA Model Rules and would pose an unnecessary burden on the practitioner. It is suggested that the language "client gives informed consent in writing after full disclosure by the practitioner" be changed to "client consents after consultation" which is simpler and more understandable language of the ABA Model Rules. Also, the last sentence of proposed Rule 11.107(a)(2) is confusing and not adequate since practitioners who have been involved with invention promoters often do not regard invention promoters as a client, albeit they have some sort of oral or written agreement(s) with them and they may be receiving a fee for the referral even though they refer the inventor to another practitioner who does not have any agreement with the invention promoter for preparing and prosecuting a patent application on behalf of the inventor. Your office has investigated the invention promoter and practitioner business dealings and therefore you are in a better position than I to determine what should be covered in the consent document so that the inventor is made aware of the relationships between the invention promoter and the practitioner, how the inventor's money is being spent, and the differences between utility and design patent protection. It is suggested that the last sentence of proposed Rule 11.107(a)(2) be reworded and made a new section of proposed Rule 11.107 as follows:

Where an invention promoter has an agreement with a practitioner to refer an inventor to the practitioner, the invention promoter will be regarded as a client of the practitioner. The practitioner shall not represent any inventor referred by the invention promoter or refer the inventor client to another practitioner, unless the inventor and the invention promoter consent to representation of each by the practitioner after consultation. The consent must be in writing and it must include a copy of the agreement between the invention promoter and the practitioner, the schedule of fees to be paid and the terms for payment of fees by the invention promoter for the services of the practitioner or the aforesaid "another practitioner," and a description of the differences between utility and design patents and the type of patent protection each type of patent affords.

Proposed Rule 11.108(a)(3): This proposed rule prohibits a practitioner from acquiring an interest adverse to the client unless the client gives "informed consent in writing thereto after full disclosure by the practitioner." For reasons given supra, the terms "informed consent" and "full disclosure" are indefinite. It is suggested that the language in the ABA Model Rule 1.8(a)(3) be adopted, i.e., --the client consents in writing thereto--.

Proposed Rules 11.108(b), (f)(1), (g) and (j): The term "informed consent" is indefinite for reasons already stated, supra. Also, the Office has not set forth why in this instance a "writing" is required. The requirement is not in the ABA Model Rules 1.8(b), (f)(1), (g) and (j). The requirement also would be an unnecessary burden on the practitioner. Also, the term "full disclosure" is indefinite for reasons stated, supra. Accordingly, it is suggested that the language "the client consents after consultation" be used in place of "the client gives informed consent in writing after full disclosure by the practitioner."

Proposed Rule 11.108(c): This rule prohibits the practitioner from preparing an instrument that gives the practitioner a "substantial gift" from the client. The term "substantial gift" is not clear and needs to be clarified and defined. I realize that the term was used in the ABA Model Code, but this does not make the term any more definite.

Proposed Rule 11.109(a): This rule prohibits a practitioner from representing “another person in the same or a substantially related matter in which that person’s interests are materially adverse to the interests of the former client unless the former client gives informed consent, confirmed in writing, after consultation." For reasons already stated supra, the term "informed consent" is indefinite and the Office has not presented any compelling reason why the consent must be in writing. The "informed consent" and the requirement that the consent be in writing are not required by the ABA Model Rule 1.9. Practitioners should be able to prove consent by means other than in writing. It is suggested that the Office adopt the language of the Model Rules, namely, "former client consents after consultation."

Proposed Rule 11.109(b)(2): This rule prohibits a practitioner from knowingly representing “another person in the same or a substantially related matter in which a firm or member of a firm, with which the practitioner formerly was associated, had previously represented a client, about whom the practitioner has acquired information protected by §§11.106 and 11.109(c) that is material to the matter unless the former client gives informed consent, confirmed in writing, after full disclosure by the practitioner” (underscoring added for emphasis). For reasons already given, supra, the language "informed consent, confirmed in writing, after full disclosure" is indefinite and the writing requirement would be burdensome. It is suggested that the phrase be changed to "former client consents after consultation" as used in ABA Model Rule 1.9(b)(2).

Proposed Rule 11.110(a): The reference in the last line to § 11.108(b) in the proposed rule should be to §11.108(c).

Proposed Rule 11.111(a): The meaning of "private" employment is not understood. What about a former employee who works for another Federal Government agency or works for a State government agency? The comments on page 69483, middle column, uses the term "other employment". It is suggested that the term "other employment" be used. It is consistent with the source rule, DCRPR 1.11(a). It is also suggested that the term "other employment" be defined in proposed Rule 11.1 since the Office deemed it necessary to define the term in the comments.

Proposed Rule 11.111(f): This proposed rule prohibits a practitioner who his employed by the Office from assisting a former client or his or her new counsel in the prosecution of a pending patent application. The meaning of "provision of funds" is not understood. Also, why is there no similar provision for practitioners employed by the Office from assisting a former client in the prosecution of trademark applications?

Proposed Rule 11.111(g): This proposed rule refers to terms “described” in proposed Rule 11.10(b)(3). Proposed Rule 11.10(b) is so confusing for reasons set forth in my comments submitted on February 10, 2004, it is not clear what the words “matter”, “participated”, personally” and “substantially” mean in the context of proposed Rule 11.111. It is suggested that the terms be defined and be added to proposed Rule 11.1 and that proposed Rule 11.111(g) be deleted since it would not be necessary.

Proposed Rule 11.111(i): This section defines misconduct under proposed Rule 11.111. It is suggested that this provision would be more appropriate in proposed Rule 11.804(h) which is specifically directed to identifying "misconduct" for reasons set forth supra, and since proposed Rule 11.804(h) lists acts of "misconduct" specific to practice before the Office.

Proposed Rule 11.112(a): This proposed rule prohibits a practitioner from representing anyone in connection with a matter in which the practitioner participated in personally unless all parties "give informed consent, confirmed in writing, after disclosure by the practitioner." The terms “informed consent” is indefinite for reasons stated supra and the writing requirement would be burdensome to the practitioner. The Office has not presented any compelling reasons why it must vary the language from the ABA Model Rule 1.12(a) which only requires that "all parties to the proceeding consent after consultation." It is suggested that the Office adopt the same language as in the ABA Model Rule.

Proposed Rule 11.115(f)(3) and (f)(3)(ii): This proposed Rule 11.115(f) defines record keeping requirements. The reference in proposed Rule 11.115(f)(3) to "paragraph (c)" should be --para-graph (e)--" The reference in proposed Rule 11.115(f)(3)(ii) to “paragraph (f)(2)(A)” is incorrect since the paragraph does not exist. It appears that it should be --paragraph (f)(3)(i)--.

Proposed Rule 11.115(i): The proposed rule is directed to what constitutes a violation of proposed Rule 11.115(a). It is suggested that this provision be placed as part of proposed Rule 11.804(h) for reasons set forth supra, and since it identifies acts of "misconduct" specific to practice before the Office.

Proposed Rule 11.116(d): The proposed rule is defines what a practitioner cannot maintain upon termination of employment of a client. The last sentence refers to “other law.” There does not appear to be any antecedent basis for a first law. Accordingly, it is suggested that the term “other” be deleted. Also, the cite to §11.108(j) is incomplete and should be “§ 11.108(j)(1).”

Proposed Rules 11.116(d)(1), (d)(2) and (d)(3): The proposed rule requires that the practitioner cannot retain any part of the client’s files, work product or “proceeding-related paper” after termination of employment. The words “shall not retain” in proposed new rules would appear to foreclose a practitioner from retaining copies of the papers in the file returned to the former client. The comments rely on Virginia Formal Opinion 1690 as a source for this proposed rule. However, the Virginia Opinion did not hold that files cannot be copied. The Opinion held that a practitioner cannot charge the client for copying and that the client is entitled to work product and that it should be surrendered if “it would materially prejudice the former client’s interests” and that “more is required to establish prejudice with respect to the lawyer work product than to client-provided papers.” The proposed rules by the Office go far beyond what is set forth in the Virginia Formal Opinion 1690. Therefore, it is suggested that proposed Rule 11.116(d) be amended to read as follows:

(d) Upon termination of representation before the Office, a practitioner shall take steps reasonably practicable to protect a client's interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled, and refunding any advance payment of fee that has not been earned. The practitioner may retain papers relating to the client to the extent permitted by law, §11.108(j)(1), except that in circumstances necessary to avoid prejudice to the client with respect to any proceeding before the Office, the practitioner shall surrender to the client:
(1) Any papers filed by the practitioner in the proceeding, including papers filed in the Office in patent or trademark application files, and
(2) Any paper constituting attorney work product that would materially prejudice or imperil the protection of the client's interests if withheld.

Proposed Rule 11.117: The proposed rule is related to the sale of a law practice. Proposed Rule 11.117(a) would prohibit a practitioner from engaging in practice before the Office after the sale. The proposed rule would be contrary to 35 U.S.C. §§2(b)(2)(D) and 32. The Office cannot prevent a practitioner from selling his or her practice or his or her share of a practice and engaging in a new practice before the Office. What about law firms that merge? The proposed rule would effectively preclude practitioners in one of the firms from practicing before the Office. Also, what about a patent boutique that merges with a general law firm? This is not an uncommon event today. By the proposed rule, it would appear that such a merger would not be ethically possible. It is suggested that the Office reconsider adopting the rule or reevaluate the scope of the rule so that it conforms to reality of mergers and acquisitions in the business world.

Proposed Rule 11.202(a)(1): This proposed rule is directed to the practitioner acting as an intermediary between clients. The new rule requires the consent to be in writing. Again, the writing requirement is not found in ABA Model Rule 2.2(a)(1). While it may be desirable for the consent to be in writing, the practitioner should be able to establish other forms of consent. It is suggested that the phrase “, confirmed in writing,” be deleted.

Proposed Rule 11.202(d): This proposed rule sets forth an intermediary situation in which one of the parties is an invention promoter. The expression “[e]xcept in unusual circumstances that may make it infeasible” is indefinite and provides no guidance to the practitioner as to the scope and meaning of the expression. It is very subjective and open to any interpretation that the PTO may impose. It is inconceivable to me what circumstance would be infeasible. It is suggested that the expression be deleted from the proposed rule.

Proposed Rule 11. 203(a)(2): This proposed rule is directed to evaluation of a matter for use by a third party. The proposed rule requires that consent be “confirmed in writing.” Again, the writing requirement is not found in the ABA Model Rule 2.3(a)(2). While it may be desirable for the consent to be in writing, the practitioner should be able to establish other forms of consent. It is suggested that the phrase “, confirmed in writing” be deleted.

Proposed Rule 11.303(a)(4)): This proposed rule is directed to candor toward a tribunal such as the Office. The second sentence of the proposed rule imposes a knowledge requirement for evidence that is false. However, there is no knowledge requirement for evidence that is “misleading.” Therefore, it is suggested that the phrase “comes to know of its falsity or that it is misleading ” be changed to --comes to know of its falsity or comes to know that it is misleading --. The same objections would apply to language in the third sentence of the proposed rule.

In addition to the above, the third sentence of the proposed Rule 11.303(a)(4) is not in the ABA Model Rules, but makes a requirement of forcing the practitioner to make a written admission or confession that evidence that the practitioner later comes to know is false or misleading to patentability, was made to the PTO "until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned." It is not clear from the rule whether the disclosure requirement pertains to the situation where the practitioner becomes aware of such false or misleading information after the patent issues.

With respect to pending applications, under Rule 1.56, there is no requirement that the disclosure has to be in writing. Under current practice, the practitioner has the option of (i) canceling the affected claims, (ii) disclosing the facts and circumstances to the PTO orally via an interview with an Examiner, (iii) disclosing the facts and circumstances to the PTO in writing via a response to an Office Action, an Information Disclosure Statement or other written communication, or (iv) simply abandoning the patent application. These are all “reasonable remedial measures that can be taken” to comply with the duty of disclosure.

As for a practitioner becoming aware that statements made in the prosecution of a patent application being false or misleading after the patent issues, the current procedures do not require that such information be disclosed to the Office. There is no statutory basis or Office rule requiring that a practitioner admit or confess such information. Rule 1.56 and the obligation set forth in Kingsland v. Dorsey are directed to matters pending before the Office, and not to where the practitioner became aware after the patent issues that false or misleading statements were made during prosecution. After a patent issues, the Office no longer has jurisdiction over the patent. So there is no continuing obligation to disclose as required by the proposed rule. Certainly, when a patent is to be enforced, there is an eithical obligation to disclose to a potential licensee or when enforcing a patent that false or misleading statements were made during prosecution that could affect patentability of the claims. The duty also exists when the patent becomes involved in proceedings before the Office such as reissue, reexamination proceedings, and interference or if a certificate of correction is sought for any reason. In the absence of these situations, the current options available to patent owners is to file a disclaimer of the affected claims or the patent, or to simply not enforce the patent.

With respect to either a patent or a patent application, the failure to comply with the writing requirement of the proposed rule would most certainly lead to disciplinary action. But also admitting or confessing that a false statement or misleading statement had been made, even though it was not knowingly made, could also lead to disciplinary action simply because the Office would take the admission that a false or misleading statement was made to the Office as a basis for disciplinary action under proposed Rule 804(c) or (g) or (i) because these provisions do not have knowledge requirement when a misleading or false statement was made. Either way, this section of the proposed rule is a no win trap for practitioners. The ethics rules are not intended to be traps for practitioners. Adoption of the third sentence of the proposed rule would significantly reduce the options available to practitioners in dealing with such matters. It is believed that proposed Rule 11.303(d) and the first two sentences of proposed Rule 11.303(b) are sufficient to provide what the PTO desires to cover with respect to this ethical requirement. Accordingly, it is suggested that the third sentence of the proposed Rule 11.303(b) not be adopted. If the Office insists on keeping the third sentence, it is suggested that it be worded as follows:

If, during proceedings in the Office, a practitioner has offered information material to patentability which the practitioner later comes to know before the patent application issues that such information was false or misleading, the practitioner shall:
(i) Disclose to the Office in writing information regarding the falsity of the information or that the information is misleading; or
(ii) Cancel or withdraw from consideration any affected claim; or
(iii) Abandon the patent application.

Proposed Rules 11.303(b) and (d): The proposed rule provides that the duty of candor continues to “the conclusion of the proceeding.” The scope and meaning of term “proceeding” is not understood and should be defined in proposed Rule 11.1. However, the Office comments with respect to this proposed rule state that “in patent matters before the Office, the duty of disclosure continues for the duration of the pendency of the patent application and the period for which the patent is granted.” If from this comment, the term “proceeding” covers the period from the time the patent is filed to the time the patent expires, this would represent a significant departure from the customary meaning of the “proceeding,” which is a procedural matter pending before the Office. Clarification of the scope of the rule is required.

Proposed Rules 11.303(e) and 11.305(d): The proposed rules identify specific misconduct that would constitute a violation of proposed rules 11.303 and 11.305, respectively. It is suggested that proposed Rules 11.303(e) and 11.305(d) be moved to proposed Rule 11.804 for reasons given supra.

Proposed Rule 11.402: This proposed rule prohibits communications with a person represented by counsel. The expression “the term party includes” should read --the term “party” includes-- to emphasize that a specific term for this rule is being singled out for specific definition.

Proposed Rule 11.403: This proposed rule is directed to dealing with an unrepresented person. The wording was rearranged in the Office rule from the ABA Model Rule. The rearrangement renders the rule indefinite. The term “counsel” could be interpreted to mean counsel on behalf of a client. It is suggested that the phrase “In dealing with a person who is not represented by counsel on behalf of a client having immediate or prospective business before the Office” be changed to --In dealing, on behalf of a client having immediate or prospective business before the Office, with a person who is not represented by counsel--.

Proposed Rule 11.601: This proposed rule is directed to pro bono service. This rule could lead to an allegation by a client that a practitioner violated the disciplinary rule because the practitioner refused to provide pro bono service where the client could not pay the attorney’s fee for services rendered. Practitioner’s who deal with individual inventors would be most vulnerable to a violation of this rule. The proposed rule should be limited to practitioners working through groups or organizations that sponsor, provide or promote pro bono services or by providing a contribution to such organizations or groups. The proposed rule as presented is unreasonably broad and open to abuse.

Proposed Rule 11.602: This proposed rule is directed to accepting an appointment by a lawyer to a tribunal. It is not clear how this section pertains only to practice before the Office. It is not within practice before the Office to appoint an attorney to represent a patent or trademark applicant. The practice is normally in pro se practice where the Office suggests that a patent or trademark applicant seek the services of a patent or trademark attorney. Clarification is required.

Proposed Rule 11.603: This proposed rule is directed to a practitioner’s membership in a legal services organization. The term “lawyer” is confusing. The comments for this proposed rule do speak in terms of --practitioner--, not “lawyer.” It would appear that the proposed rule would be also applicable to patent agents. Clarification is required.

Proposed Rule 11.701(a) and (b): These proposed rules are directed to prohibitions in communications regarding the practitioner’s services to a person having business before the Office. Both of these proposed rules use the phrase “or another on behalf [of] the practitioner.” The phrase is objected to because the Office does not have jurisdiction over the “another” unless such other is licensed to practice before the USPTO or are acting in a representative capacity. 35 U.S.C. § 2(b)(2)(D). It believed that the Office intended to cover situations were the practitioner uses an intermediary such as secretary or legal assistant to communicate or advertise. However, the Office does not have jurisdication over these persons since they are not acting in a representative capacity before the Office. Therefore, it is suggested the aforesaid phrase be deleted or that the proposed rule stay with the language as set forth in DCRPR, i.e., --or through an intermediary--.

Proposed Rule 11.702(d): This proposed rule is directed a practitioner who is a lawyer stipulating that he or she may pay for a law practice in accordance with proposed rule 11.117 (sale of a practice). The purpose of this rule is not understood and it is not understood why it is necessary. It is suggested that the provision not be adopted.

Proposed Rule 11.704(e): This proposed rule is directed to admiralty practice. This proposed rule is not at all relevant to practice before the Office. The purpose of the rule is not understood. It is suggested that the provision not be adopted.

Proposed Rule 11.801(a): This proposed rule is prohibits an applicant for registration or a practitioner in connection with a disciplinary proceeding or reinstatement from knowingly failing to disclose or making a false statement of material fact. The scope and meaning of the phrase “material fact” is unclear. It is suggested that the phrase be modified to state: --a fact material to an applicant’s registration application, to a disciplinary matter including an investigation or to reinstatement--.

Proposed Rule 11.801(c): This proposed rule states that “[c]onduct that constitutes a violation of paragraphs of paragraphs [11.801(a) and 11.801(b)] of this section includes, but is not limited to willfully refusing to reveal or report knowledge or evidence to the OED Director contrary to paragraphs [11.801(a) and 11.801(b)].” If a practitioner knowingly made a false statement and willfully refuses to reveal to the OED Director that he or she made a false statement, then OED can also discipline for the practitioner’s refusal to reveal. This is a form of self-incrimination. The burden in a disciplinary proceeding is on OED to prove its case, i.e., proving that a false statement has been knowingly made. To require a practitioner to prove OED’s case by admissions or by forcing a confession through a disciplinary rule is not the purpose of the rules. This is a bad rule and it should not be adopted.

Proposed Rule 11.803(d) and (e): These rules are directed to reporting a plea of guilty to a crime or a disciplinary action taking by a State against a practitioner. The proposed rules sets forth procedure, and not a "thou shall not" rule. It suggested that these proposed rules be added to proposed Rule 11.804 which defines such misconduct in 11.804(b). In view of the above, it is suggested that the two sections of proposed Rule 11.803(d) and the two sections of proposed Rule 11.803(e) be added to the misconduct defined in proposed Rule 11.804(b) as separate elements as follows:

Fail to advise the Director of OED in writing of a plea of guilty or nolo contendre or an entry of an Alford plea to a criminal charge, other than a misdemeanor traffic offense or a traffic ordinance violation not associated with the use of alcohol or drugs, in a court of a State, or of the United States within 10 days after the date of entry of the plea.

Fail to provide the Director of OED with a certified copy of the court record of entry of a conviction or the entry of a guilty plea, nolo contendre plea, or the entry of an Alford plea with 10 days after the date of entry of the conviction or guilty plea to any crime, other than a misdemeanor traffic offense or a traffic ordinance violation not associated with the use of alcohol or drugs.

Fail to advise the Director of OED in writing within 10 days after the practitioner becomes aware of a final decision of being found by any State court or any court of the United States to have engaged in inequitable conduct during the prosecution of a patent application.

Fail to advise the Director of OED in writing within 10 days after entry of a finding, order or plea reprimanding, suspending or disbarring the practitioner on consent or otherwise from the practice of law on any ethical grounds by any duly constituted authority of a State, or the United States, or by any duly constituted authority of a foreign country including any foreign patent and/or trademark office.

Fail to advise the Director of OED in writing within 10 days after the effective date of resignation from the practice of law by a bar of a State or a Federal court or by any duly constituted authority of a foreign country including any foreign patent and/or trademark office while under investigation for alleged ethical misconduct.

Fail to advise the Director of OED of facts that would preclude the practitioner continued registration under § 11.6(a).

The requirement of a “court record” with respect to a finding of inequitable conduct is ambiguous. A practitioner may not have access to the trial or hearing documents because of protective orders. The only record the practitioner may have access to is his own deposition testimony. Therefore, the requirement of a “court record” is not clear as to what documents constitute a “court record” and if it means the entire record, it may be impossible for the practitioner to provide it. The Office should request what it needs, and determine if the practitioner has access for the information. Also, the practitioner should be given the opportunity to resign or enter a default judgment without having the expense of providing the “court record.”

Proposed Rule 11.803(f): This proposed rule lists acts of misconduct that constitute a violation of proposed Rules 11.803(a) to (g). The listed acts are actually misconduct specific to practice before the Office, and for reasons discussed supra, it is suggested that they be moved to proposed Rule 11.804(h).

Proposed Rule 11.804(b): This proposed rule defines misconduct as committing a criminal act that reflects on the practitioner’s honesty, trustworthiness or fitness to practice. The scope and meaning of the phrase “commit a criminal act” is unclear and should be defined in proposed Rule 11.1(a). Discipline should be metted out only if there is a finding of guilt and/or conviction of a crime. Committing a crime for which one is not found guilty or which has been dismissed is not sufficient. It is suggested that the last sentence of the proposed rule either not be adopted or be clarified.

Proposed Rule 11.804(h)(6): This proposed rule defines misconduct as being a partner or associate of a Office employee and representing anyone before the Office. The purpose of the proposed rule is not understood. There is no commentary with respect to this proposed rule in the rule package. Table 3 refers to 31 CFR 8.36 as the source for the proposed rule. This code is directed to restrictions on practice before the Bureau of Alcohol, Tobacco and Firearms, an agency of the U.S. Treasury Department. What is the relevance of this rule to practice before the U.S. Patent and Trademark Office? 31 CFR 8.36 is not a Government wide regulation. Clarification and commentary is required.

Proposed Rule 11.804(h)(7): This proposed rule defines misconduct as accepting or using the assistance of a Office employee in the presentation or prosecution of an application. It is not clear whether the “application” is a patent application, a trademark application or an application for registration to practice before the Office. The proposed rule is overreaching. Practitioners very often contact officials of the Office seeking clarification of rules and regulations or seek guidance on procedures to handle matters which are not covered by the USPTO rules and the Manual of Patent Examining Procedure. The proposed rule would make such contacts a violation of the Rules of Professional Responsibility. Although the rule provides that employees of the Office may provide assistance, at the same time the proposed rule prohibits accepting or using such assistance. The rule is ambiguous and would have a chilling effect on relations between the patent bar and the Office. The comments with respect to this proposed rule give a single example of getting an employee of the Office to translate a reference. The employee may or may not be compensated. The proposed rule is probably in response to a complaint filed in OED. If it is, then the rule should be limited to that specific situation in the complaint only. As the rule now stands, it is not clear and it provides no guidance as to its scope. It is suggested that the rule be deleted or substantially limited to specific situations where the services of an Office employee are being used in place of using substantially similar services outside the Office.

Proposed Rule 11.804(h)(9): This proposed rule defines misconduct as failing to report a change of address within thirty days. This proposed rule is overly technical. There may be many reasons why a practitioner may fail to keep his or her address current. However, to discipline a practitioner for failing to notify OED of a change of address within 30 days would be would be regarded by any judicial body as being punitive, and not substantive. The disciplinary rules are not there to provide punitive punishment. It is suggested that the rule not be adopted.

Proposed Rule 11.804(h)(10): This proposed rule defines misconduct as filing a “frivolous” complaint against a practitioner. The term “frivolous” with respect to this rule has not been defined. The proposed rule does not provide any guidance to the practitioner as to what would be "frivolous" as opposed to the requirement of proposed Rule 11.803 that requires the practitioner to report violations of the Rules of Professional Responsibility.

Proposed Rule 11.805(a): This proposed rule defines “disciplinary authority.” The last part of this proposed rule would appear to make patent applicants, trademark applicants and their assignees subject to the Rules of Professional Responsibility. What sanctions could be imposed on an inventor who prosecuted his own patent application and is found to have engaged in inequitable conduct before the Office? There is no Constitutional basis to deny the inventor the right to file and prosecute a future patent application before the Office. It is suggested that the last part of the proposed rule should not be adopted.

Proposed Rule 11.806: This proposed rule concerns sexual relationships with clients. The purpose and relevance of this rule with respect to representing persons before the Office is not understood. The purpose and relevance of the proposed rule is not explained in the Office comments. The proposed rule is not part of the ABA Model Rules, but comes from a New York rule. New York does not subscribe to the Model Rules. Accordingly, it is suggested that this proposed rule be deleted unless there is substantial justification for the rule.

I appreciate the opportunity to comment on the proposed new rules for Representation of Others Before the USPTO published in the Federal Register on December 12, 2003.

Sincerely yours,


Cameron Weiffenbach

United States Patent and Trademark Office
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Last Modified: 7/4/2009 5:49:53 PM