Moatz, Harry

From: CG...
Sent: Tuesday, February 10, 2004 5:46 PM
To: ethicsrules comments
Subject: Comments on Rules

Dear Sirs,

Attached are comments on behalf of Birch, Stewart, Kolasch & Birch, LLP on the proposed rules published December 12, 2003. This transmission is intended for the sole use of the individual and entity to whom it is addressed, and may contain information that is privileged, confidential, and exempt from disclosure under applicable law. You are hereby notified that any dissemination, distribution, or duplication of this transmission by someone other than the addressee or its designated agent is strictly prohibited. If your receipt of this e-mail is in error, please destroy the transmission (and any copies thereof) immediately.
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BIRCH, STEWART, KOLASCH & BIRCH, LLP

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Los ANGELES, CALIFORNIA MAKI HATSUMI
HERBERT M. BIRCH (1905-1996) KRISTI L. RUPERT, PH.D.
BERNARD L. SWEENEY' ROBERT W. DOWNS
ELLIOT A. GOLDBERG' CHAD J. BILLINGS
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JASON W. RHODES
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FRED S. WHISENHUNT (RET.) 'ADMITTED TO A BAR OTHER THAN VA.
JAMES W.
QUENTIN RHER C E CORRIE February 10, 2004
ROBERT F. GNUSE
DAVID R. MURPHY
ROBERT M. ASHEN'
WILLIAM e. WALKER' VIA E-.MAIL: ethicsrules. comments@uspto.gov

Attention: Mr. Harry 1. Moatz

Mail Stop OED-Ethics Rules
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, Virginia 22313-1450

RE: Comments On The USPTO Notice Of Proposed Rulemaking, Federal Register, 68,
No. 239, Friday, December 12, 2003 Relating To "Changes To Representation Of
Others Before The United States Patent And Trademark Office"

1. SUMMARY COMMENTS
Initially, it is respectfully noted that the public, including those registered to practice before the USPTO having substantial and important interests that may be affected profoundly by the proposed rules, have been given relatively little time to evaluate and respond to this far-reaching proposal. The possible range and magnitude of the effects of the proposed changes cannot be evaluated properly in the relatively short period that has been allowed for comment. The following comments, therefore, should be considered as preliminary in nature. The interested public should be afforded a significantly greater opportunity to evaluate and respond to the proposed rules published on December 12, 2003 and/or any further such proposal.

MAIL ADDRESS: P.O. BOX 747, FALLS CHURCH, VIRGINIA, USA 22040-0747

Comments on Proposed Rulemaking, 68 Fed. Reg., 239
February 10, 2004

The undersigned recognizes the responsibility of the USPTO to ensure professional and ethical representation before the USPTO. The proposed rules relating to CLE requirements, including courses provided by the USPTO, are a useful means for helping the USPTO to meet that responsibility. However, much of the proposed rulemaking will require USPTO personnel to administer and oversee rules and regulations that unnecessarily duplicate oversight that is already provided by individual State Bar organizations for the lawyers practicing before the USPTO. We recognize that both registered patent lawyers and registered non-lawyer patent agents practice before the USPTO and it may be that limited modification of the current rules may be necessary to deal with situations recently encountered by the USPTO in cases involving non-lawyer patent agents. But the vast majority of practitioners representing clients before the USPTO are lawyers that are licensed to practice in one or more individual states. Each of those states already has an established code of ethics, professional responsibility requirements and procedures for dealing with allegations of ethics code violations. The undersigned submits that those organizations are fully capable of dealing with ethics or professional responsibility violations of licensed lawyers without the need for the USPTO to duplicate those efforts. Promulgation of further requirements for practitioners already obligated to abide by the ethical code of one jurisdiction makes it likely that such practitioners will be, at times, subject to conflicting requirements or regulations. It seems particularly unnecessary for the USPTO to establish new and duplicative procedures at a time when the USPTO is struggling to obtain sufficient budget resources to meet all of its various existing responsibilities.

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BIRCH, STEWART, KOLASH & BIRCH, L.L.P.

Comments on Proposed Rulemaking, 68 Fed. Reg., 239 February 10, 2004

2. COMMENTS ON SPECIFIC PROPOSED RULES
2.1 Proposed Rule 37 C.F.R. 1.21 - Miscellaneous Fees and Charges
Part (5) of this rule establishes a fee of $130 for review of any decision of the OED Director. This amounts to a monetary penalty imposed upon a practitioner for the privilege of seeking review of what may very well be an erroneous action on the part of the OED Director. This is inequitable.

2.2 Proposed Rule 37 C.F.R. 11.2 - Director of the Office of Enrollment and Discipline
Part (c) provides that any request for reconsideration of a decision on petition to the OED Director waives the right to appeal by petition to the USPTO Director under paragraph (d) of this section. Such a provision is punitive and unnecessary. Moreover, because any practitioner dissatisfied with a decision of the OED Director cannot reasonably risk loss of the right of appeal, this provision will likely result in numerous unnecessary appeals to the USPTO Director.

2.3 Proposed Rule 37 C.F.R. 11.7(g) - Requirements for Registration, Investigation of Moral Character
Part (e) relating to examination results provides that an individual notified that he or she failed an examination for registration may not pursue substantive review of the answers or questions contained in the examination. It would appear that such a provision is an effort to minimize the burden of USPTO personnel in reviewing examination results. However, the effect may be to ignore and/or cover up errors in the examination or in the manner that the examination

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Comments on Proposed Rulemaking, 68 Fed. Reg., 239 February 10, 2004

was graded, transferring the burden of PTO errors to applicants for registration. This is inequitable.
In part (g) the USPTO has specifically sought comments on two alternatives for accepting a State Bar's determination on the moral character of a person seeking to become a registered practitioner. The undersigned submits that the USPTO should follow the first proposed option, namely that the USPTO give deference to the State Bars by permitting patent attorneys to submit a copy of their State Bar application and moral character determination. Consistent with our general comment made above, there seems to be no need for the USPTO to establish new procedures and require new personnel to administer those procedures when the individual State Bars already perform the same task and it has not been shown that simply giving deference to a determination by the State Bars would in any way permit USPTO registration of unqualified candidates.

2.4 Proposed Rule 37 CFR Section 11.16 - Financial Books and Records
This proposed rule would provide the OED Director with a completely new and broad authority to examine the financial books and records maintained by a private law firm or individual practitioner. The undersigned objects to this proposed rule because it is unnecessary. Further, the rule appears to be constitutionally suspect inasmuch as it lacks any standard for permitting or limiting the scope of an examination by the OED Director of a firm's financial books and records.

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BIRCH, STEWART, KOLASH & BIRCH, L.L.P.

Comments on Proposed Rulemaking, 68 Fed. Reg., 239 February 10, 2004

Although not stated in the notice of proposed rulemaking, it would appear from the wording of the proposed rule that the impetus for the rule is a concern about proper handling of trust accounts. If that is the USPTO's valid concern, then the undersigned again submits that such concerns, based upon reasonable belief of an ethics code violation, could simply be referred by the OED Director to the relevant State Bar which could undertake an investigation under already established procedures. The various State Bars often deal with issues involving client trust accounts and the USPTO should take advantage of those already existing procedures without the need for the USPTO to unnecessarily duplicate those efforts.
But beyond the general objection to the need for the proposed rule, the proposed rule would also provide the OED Director with essentially unfettered authority to examine financial books and records of a private law firm. While the rule provides that the OED Director may also examine any trust account "whenever the OED Director reasonably believes that the trust account may not be in compliance with the rules of professional conduct", the rule provides absolutely no standard for when the OED Director would be authorized to otherwise examine a law firm's financial books and records. The rule does not, for example, provide that the OED Director could initiate such an examination only on the basis of constitutionally sufficient, reasonable, credible and sufficient evidence of an ethics code violation and upon a showing that review of the books and records would be likely to lead to the discovery of admissible evidence relevant to any issue raised by the alleged violation. The rule also makes no limitation on the scope of the examination, thereby permitting the OED Director to examine all of a firm's

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BIRCH, STEWART, KOLASH & BIRCH, L.L.P.

Comments on Proposed Rulemaking, 68 Fed. Reg., 239
February 10, 2004

financial books and records. This is a violation of the privacy of a practitioner, a firm and of the clients.
For these reasons, the undersigned submits that the proposed rule 11.16 should be eliminated.

2.5 Proposed Rule 37 C.F.R. 11.18 - Signature and Certificate for Correspondence Filed in the Office
Section (c) provides that violations of any of paragraphs (b)(2)(i) through (iv) of this section may be subject to sanctions including, inter alia, a monetary sanction. It is not clear that the USPTO has the legal authority to impose a monetary sanction in such circumstances.

2.6 Proposed Rule 37 C.F.R. Rule 11.22 - Investigations
Part (i) provides a 30 calendar day period for a practitioner to respond to the OED Director's written inquiries in the conduct of an investigation, and provides an absolute limit of one (1) extension for an additional 30 days. The desirability of conducting proceedings with dispatch is recognized. However, in some circumstances, additional time may be reasonably required to gather evidence and information that is not in the immediate possession, custody or control of the practitioner, and to provide a proper response on behalf of the practitioner. Accordingly, a provision should be included to permit for further extensions upon showing of good cause.

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BIRCH, STEWART, KOLASH & BIRCH, L.L.P.

Comments on Proposed Rulemaking, 68 Fed. Reg., 239
February 10, 2004

Part (j)(2) provides that the OED Director or other representative, upon the filing of a complaint by a client against a practitioner, may request information from a noncomplaining client of the practitioner with either the consent of the practitioner or, upon a written showing of good cause, the authorization of the PTO Director. This provision is not adequate for protecting legitimate, proper interests of practitioners.
Complaints against practitioners are often baseless and unwarranted. It is inappropriate for any person associated with the USPTO, on the basis of an unproven complaint which may indeed be baseless and unwarranted, to contact and make inquiries of noncomplaining clients of any practitioner. Such contact with noncomplaining clients inherently tarnishes the reputation of the practitioner and interferes unnecessarily with the attorney-client relationship.
The comments relating to this rule suggest that there are cases in which disciplinary action is necessary and a noncomplaining client is unknowingly being victimized by a practitioner. That may be correct in some situations. However, the rule is unnecessarily broad and enables USPTO personnel to contact noncomplaining clients in advance of any adjudication that the practitioner has engaged in any wrongdoing whatsoever. As such, it imposes a penalty on the practitioner by interference with legitimate and proper client relations, before there is a finding of any wrongdoing whatsoever. The rule is, thus, overly broad and inappropriate.
Part (k) of this rule, like Proposed Rule 37 C.F.R. 11.16, provides an inappropriate power for the OED Director, alone or through a staff attorney, to examine financial books and records maintained by a practitioner. As discussed with reference to Rule 11.16, this provision is constitutionally suspect in that it violates the normal rights of privacy and immunity against

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BIRCH, STEWART, KOLASH & BIRCH, L.L.P.

Comments on Proposed Rulemaking, 68 Fed. Reg., 239 February 10, 2004

unreasonable searches and seizures without imposing any standard whatsoever for permitting such examination, and unnecessarily duplicates state bar rules for maintaining trust accounts and the powers of state bars to examine the records of trust accounts.

2.7 Proposed Rule 37 C.F.R. 11.23 - Committee on Discipline
This rule provides that the Committee on Discipline shall consist solely of members who are employees of the USPTO. A committee comprised solely of employees of the USPTO will not have the knowledge necessary to properly evaluate the conduct of persons engaged in the practice of law in as much as employees of the USPTO do not themselves engage in the practice of law. Rather, the Committee on Discipline should be properly balanced with members of the active bar having substantial experience in the practice of law, including specifically practice before the USPTO. Such individuals might be appointed, for example, by the Director of the USPTO for limited periods of service on the Committee. Such individuals might be selected from among respected and experienced members of the patent bar.

2.8 Proposed Rule 37 C.F.R. 11.38 - Contested Case
This rule provides that evidence obtained by a subpoena issued under 35 U.S.C. §24 shall not be admitted into the record of a disciplinary proceeding or considered unless leave to proceed under 35 U.S.C. §24 was previously authorized by the hearing officer. This is an improper limitation on the right of an accused practitioner to obtain evidence in support of this or her

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Comments on Proposed Rulemaking, 68 Fed. Reg., 239 February 10, 2004

defense. As such, it is an improper limitation on an individual's right and ability to defend against charges and a denial of due process.

2.9 Proposed Rule 37 C.F.R. 11.52 - Discovery
This rule inappropriately limits the ability of an accused party to take discovery which may be necessary for his or her defense. As such, it is a denial of due process.
Part (a) requires a party to establish in a clear and convincing manner that discovery is necessary and relevant. This standard is inconsistent with normal practice in the U.S. judicial system and inconsistent with that which is set forth in the Federal Rules of Civil Procedure. Discovery is normally appropriate if it is reasonably calculated to lead to the discovery of admissible evidence. An accused party has a right to broad and unfettered discovery in support of his or defense against charges.
Part (b)(1) prohibits discovery which will be used by another party solely for impeachment or cross-examination. Part (b)(4) effectively prohibits discovery that relates to experts. These provisions further improperly limit the right and ability of an accused individual to obtain information which may be used properly in defense of charges.
Part (d) of the rule requires a party seeking discovery to file a motion and explain in detail for each discovery request made how the discovery sought is necessary and relevant to an issue actually raised in the complaint or the answer. Again, this is an improper limitation on the right of an accused individual to obtain information reasonably necessary for defense against charges.

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BIRCH, STEWART, KOLASH & BIRCH, L.L.P.

Comments on Proposed Rulemaking, 68 Fed. Reg., 239
February 10, 2004

2.10 Proposed Rule 37 C.F.R. 11.101 -Competence
Part (c)(3) of this rule, by its terms, opens the door to finding a practitioner incompetent for the most minor deviations from PTO practice or procedure. As such, it is unnecessarily broad.
Part (c)(4) provides that a practitioner shall be considered guilty of incompetent representation by virtue of having filed or prosecuted, or having assisted in the filing or prosecution of an application claiming "a frivolous invention." The rule then purports to set forth a standard for what is a "frivolous invention". However, the standard is vague and cannot be applied consistently. Moreover, the provision appears to conflict with every practitioner's obligation, under state bar regulations, to zealously represent his or her client.

2.11 Proposed Rule 37 C.F.R. 11.102 - Scope of Representation
Part (g) appears by its terms to regulate the conduct of a practitioner before bodies other than the USPTO. The USPTO has no such authority.

2.12 Proposed Rule 37 C.F.R. 11.104 (a)(2) - Communication
This proposed rule would establish new procedures for practitioners to follow when dealing with a matter referred to the practitioner by a foreign attorney or foreign agent located in a foreign country. The undersigned submits that this proposed rule is unnecessary and needlessly adds new paperwork and written records for representation of non-U.S. resident clients.

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BIRCH, STEWART, KOLASH & BIRCH, L.L.P.

Comments on Proposed Rulemaking, 68 Fed. Reg., 239 February 10, 2004

The undersigned would first of all like to understand the particular problems which the USPTO is attempting to address with the proposed rule. The undersigned has represented many non-U.S. resident clients for decades and has not encountered, nor is aware of, problems which would require the establishment of this new proposed rule. If there are particular problem cases that have arisen and require the attention of the USPTO, then it would seem that a proposed rule could be more carefully tailored to address those situations without the need for unnecessarily creating a new broad and burdensome requirement on practitioners and clients.
Proposed rule 11.104(a)(2) would specifically require a practitioner to obtain "the written and informed consent" of an inventor to communicate through a foreign attorney or foreign patent agent when that foreign attorney or foreign patent agent sends a patent application naming the inventor to the practitioner in the United States. That foreign inventor would have necessarily already have a professional relationship with the foreign attorney or foreign patent agent and would have understood that the foreign attorney or patent agent would need to utilize the services of a U.S. patent attorney or agent to transact business with the USPTO. Indeed, the foreign inventor would typically have no direct dealings with the U.S. attorney or agent and so would clearly understand that communications regarding actions with the USPTO would have to be communicated from the U.S. attorney or agent to the foreign inventor through the foreign patent attorney or agent. The undersigned sees no reason to complicate this communication with unnecessary paperwork simply to confirm the obvious, namely that it is the foreign attorney or agent, not the inventor, who will have the direct communications with the U.S. attorney or agent.

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BIRCH, STEWART, KOLASH & BIRCH, L.L.P.

Comments on Proposed Rulemaking, 6$ Fed. Reg., 239 February 10, 2004

The situation is made even more complicated and unnecessarily burdensome for U.S. practitioners who represent large non-U.S. corporations. Patent applications for those corporations could involve a large number of different inventors, but emanate from the same central company legal/patent department. If the USPTO insists upon some rule regarding communications between U.S. practitioners and foreign entities, then the rule should at least permit a single "written and informed consent" document between the U.S. practitioner and the foreign corporation to be considered sufficient for any applications assigned to that corporation, regardless of the specific inventorship.

2.13 Proposed Rule 37 C.F.R. 11.105 - Fees
This rule relates to fees Which may be charged by practitioners, requiring that a practitioner's fee shall be reasonable. Further, specific requirements are imposed upon the manner in which a practitioner must communicate with a client with respect to fees [See part (b)]. This constitutes inappropriate involvement of the USPTO with the private business matters and business relationships of practitioners and their clients. '
The reasonableness of any practitioner's fee for any service is determined primarily by the market for such services. So long as a practitioner is not engaged in fraudulent conduct, the amount and type of fee charged by the practitioner is strictly a matter of agreement between the practitioner and the client in an environment wherein the client is free to choose among many available practitioners. The USPTO has no proper role in determining the reasonableness of

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Comments on Proposed Rulemaking, 68 Fed. Reg., 239
February 10, 2004

fees, and it is inappropriate to promulgate rules which purport to control or effect the reasonableness or amount of any fee.

2.14 Proposed Rule 37 C.F.R. 11.116 - Declining or Terminating Representation
Part (c) provides that, when ordered to do so by the USPTO, a practitioner shall continue representation of a client notwithstanding good cause for terminating the representation. This rule is unduly broad, may result in the imposition of inappropriate burdens upon a practitioner, may require a practitioner to engage in representation when compliance with state bar ethical guidelines requires the practitioner to cease representation, and otherwise violates a practitioner's right to independently accept or reject representation of any client.

2.15 Proposed Rule 37 C.F.R. 11.117 -Sale of Practice
This rule unduly restricts the right of a practitioner to sell or purchase a law practice involving patent or trademark matters before the Office. Part (a) provides a seller to cease to engage in the private practice before the USPTO. This unduly restricts an individual's right to earn a livelihood by, for example, selling a practice, but continuing to practice before the USPTO for a single client exclusively or for a corporate employer. Part (b) requires that a practice must be sold as an entirety. This unduly and unnecessary restricts the right of individuals to engage in proper and legal business transactions.
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BIRCH, STEWART, KOLASH & BIRCH, L.L.P.

m
Comments on Proposed Rulemaking, 68 Fed. Reg., 239 February 10, 2004

2.16 Proposed Rule 37 C.F.R. 11.505 - Unauthorized Practice of Law
This rule contains several provisions which appear to address activity characterized as the unauthorized practice of law "in any other jurisdiction." This appears to be overreaching and an effort to control behavior outside of the reasonable jurisdiction or purview of the USPTO.

2.17 Proposed Rule 37 C.F.R. 11.602 -Accepting Appointments
This rule is overly broad in that it seeks to govern the behavior of a practitioner with respect to agencies or tribunals other than the USPTO.

2.18 Proposed Rule 37 C.F.R. Section 11.702 - Advertising
Consistent with the undersigned's general comment above, it is again submitted that the rules established and governed by the various State Bars on lawyer advertising are fully sufficient without the need for the USPTO to regulate new and different rules in this field. The various State Bars have specific rules on lawyer advertising and have a long history of appropriately dealing with potential violations.
Beyond the lack of necessity for these proposals, two aspects of proposed rule 11.702 are of particular concern. First of all, subparagraph (b) would require that a copy or recording of any advertisement or communication of this type shall be kept "for two years after its last dissemination along with a record of when and where it was used". There seems to be no good valid basis for imposing this record keeping burden on practitioners. If ever a complaint about a particular advertisement or communication were presented to the OED, then a copy of that

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Comments on Proposed Rulemaking, 68 Fed. Reg., 239 February 10, 2004

advertisement or communication would clearly be available to the complainant, so there would be no need to seek a copy from the records of the U.S. practitioner.
Subparagraph (e) of proposed rule 702 would also require that any advertisement or communication to the public under this section must include "the name of at least one practitioner responsible for its content". This is again an unnecessary burden and intrusion into the affairs of practitioners. U.S. law firms often times distribute advertisements or communications to prospective clients that describe the capabilities of the entire law firm. Those advertisements and communications are intended to promote the full scope of the firm, without highlighting any one individual. There again seems to be no valid basis for requiring that such advertisements and communications include the name of at least one practitioner from a firm.
The undersigned would again like to understand the reason for proposing such a requirement. If a law firm were to disseminate an improper advertisement or communication, is there some concern on the part of the USPTO that all attorneys at the firm would disavow responsibility because no individual was listed on the advertisement or communication? The USPTO should not be concerned about such a situation, because the partners of such a firm would still be ultimately responsible for such acts.

2.19 Proposed Rule 37 C.F.R. Section 11.703 - Direct Contact with Prospective
Clients
The undersigned again submits that these types of issues are already well handled by the various State Bar associations, and there is no need for the USPTO to promulgate rules or govern such activities as they relate to registered attorneys.

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Comments on Proposed Rulemaking, 68 Fed. Reg., 239 February 10, 2004

But beyond the general objection, paragraph (c) of proposed rule 703 places another unnecessary burden and requirement on communications with prospective clients. That rule would require the words "advertising material" to be included on the outside envelope "and at the beginning and ending of any electronic or recorded communication." This requirement first of all seems to far exceed the authority of the USPTO to regulate commercial speech, such as advertising or communications with prospective clients. Secondly, the language of the rule is unduly broad and indefinite because it could become impossible to determine which types of communications would be encompassed by the rule. For example, would notices about lecture or seminar presentations be considered "advertising material" because they are or might be directed to persons with whom the practitioner has no prior professional relationship, even though such notices do not strictly "solicit" professional employment?. Similarly, would typical law firm newsletters or materials providing legal updates be considered "advertising material", even though such materials do not specifically "solicit" professional employment?
As with several of the rules discussed above, if there are some particular circumstances of egregious conduct which the USPTO believes need to be addressed, then it would seem to be that more narrowly tailored rules could address those concerns without placing undue burdens on ethical practitioners with the current proposed rules that take a broad brush approach. Neither practitioners nor the USPTO need to be encumbered by new burdensome rules and procedures.
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BIRCH, STEWART, KOLASH & BIRCH, L.L.P.

Comments on Proposed Rulemaking, 68 Fed. Reg., 239
February 10, 2004

Conclusion
The undersigned respectfully urge that the U.S. Patent and Trademark Office reconsider the proposed rules in light of the above comments. Additionally, in view of the limited opportunity afforded for comment on the proposal. It is respectfully submitted that further opportunity should be provided for comment prior to adoption of any new rules or regulations.

Respectfully submitted,
BIRCH, STEWART,,O SCLI & B C ', LLP

Michael K. Wtter

L onard R. Svensson

Charles Gorenstein
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BIRCH, STEWART, KOLASH & BIRCH, L.L.P.