Kenneth W. Dobyns

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Moatz, Harry
From: kwdx@...
Sent: Thursday, February 05, 2004 8:01 AM
To: ethicsrules comments
Subject: Comments on proposed ethics rules

Comments concerning
Docket No.: 2002?C?005
RIN 0651?AB55
Changes to Representation of Others
Before the United States Patent and Trademark Office

My comments outline objections to failure of the proposed regulations to stay within the scope of authority granted by the statutes setting forth what the Patent and Trademark Office may and should do.

CONTINUING LEGAL EDUCATION

It is proposed to institute regulation 11.12(a) as follows: Sec. 11.12 Mandatory continuing training for licensed practitioners. (a) Continuing education requirements. (1) All practitioners licensed under Secs. 11.6 or 11.9 to practice before the Office shall complete a continuing education program as required from time?to?time by the USPTO Director, except those registered practitioners expressly exempted in paragraph (b) of this section from the requirement of this regulation. The USPTO Director will announce each fiscal year whether an education program will be required, and the dates for the program. No more than one mandatory continuing education program would be required each fiscal year and the requirement may be as infrequent as once every three years. The fiscal year is October 1 through September 30.

This presumably comes under the aegis of

35 USC Sec. 2. ? Powers and duties

(b) Specific Powers. ?
The Office ?

(D) may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office, and may require them, before being recognized as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office;

There is a provision in the Administrative Procedures Act which states

5 USC Sec. 500. ? Administrative practice; general provisions

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(b) An individual who is a member in good standing of the bar of the highest court of a State may represent a person before an agency on filing with the agency a written declaration that he is currently qualified as provided by this subsection and is authorized to represent the particular person in whose behalf he acts.

(e) Subsections (b)?(d) of this section do not apply to practice before the United States Patent and Trademark Office with respect to patent matters that continue to be covered by chapter 3 (sections 3133) of title 35.

The Administrative Procedures Act limits the Patent and Trademark Office in its ability to regulate the practice before the office of attorneys to the procedures set forth in 35 USC 31?33. This is complicated by the fact that 35 USC 31 has been repealed. When it existed, it read

Section 31 Regulations for agents and attorneys

The Commissioner, subject to the approval of the Secretary of Commerce, may prescribe regulations governing the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Patent and Trademark Office, and may require them, before being recognized as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office.

One presumes that this is considered equivalent in scope to 35 USC 2(b)(D) and that the statutory authority for the exception to the Administrative Procedures Act is thus contained in 35 USC 2(b)(D).

Both old 35 USC 31 and new 35 USC 2(b)(D) allow the Patent and Trademark Office to require applicants for recognition as patent attorneys, BEFORE BEING RECOGNIZED as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office.

The Patent and Trademark Office is now proposing a regulation to require applicants to periodically show that they are possessed of the necessary qualifications, etc., AFTER THEY HAVE ALREADY BEEN RECOGNIZED. This is outside the scope of the allowable proofs allowed by 35 USC and also goes beyond the scope of the limited exception granted to the Patent and Trademark Office by the Administrative Procedures Act.

NEW ANNUAL FEE FOR MAINTENANCE OF ATTORNEY REGISTRATION

It is proposed to amend regulations as follows: Sec. 1.21 Miscellaneous fees and charges.

(a) Registration of attorneys and agents:

(7) Annual fee for registered attorney or agent:
(i) Active Status?100.00

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(ii) Voluntary Inactive Status?25.00
(iii) Fee for requesting restoration to active?50.00 status from voluntary inactive status
(iv) Balance due upon restoration to active status?75.00 from voluntary inactive status

The justification provided for this new annual fee for maintenance of registration is that, in the past, the fees paid by applicants and patentees have supported the costs of the activities that maintain the patent practitioner's community reputation for integrity. The proposed annual fee is introduced pursuant to 35 U.S.C. 41(d). The annual fee is intended to fund the costs of the disciplinary system, and maintaining the roster of registered practitioners up?to?date by (i) annually surveying the practitioners for current address/telephone/e?mail information, and (ii) daily updating the roster with new changes of address. With an annual fee, the Office would be funding the disciplinary system as State Bars do, by dues from the bar members. Bar disciplinary activities are generally regarded as being in the interest of maintaining the Bar's reputation for integrity and supporting the willingness of potential clients to engage the services of practitioners.

35 USC 41 (d) reads:

Sec. 41. ? Patent fees; patent and trademark search systems
…
(d)

…

The Director shall establish fees for all other processing, services, or materials relating to patents not specified in this section to recover the estimated average cost to the Office of such processing, services, or materials . . .

There are no processing, services or materials being provided to the persons who are to be required to pay the annual fee. Attorneys already pay state bar dues to support the state disciplinary action. The Patent and Trademark Office disciplinary actions are added to the existing systems to protect those people who file patent applications. It is not unreasonable that applicants should be required to pay the cost of protecting their own interests. In most instances this additional tax on the attorneys would be paid eventually by the applicants in any event. But most importantly, there is nothing in 35 USC 41(d) which authorizes this additional tax on attorneys, and the Administrative Procedures Act allows attorneys to practice before the Patent and Trademark Office, subject only to the authority given the Patent and Trademark Office by 35 USC sections 31?33.

CHANGE OF GROUNDS FOR EXCLUSION

It is proposed to introduce

Sec. 11.19 Disciplinary jurisdiction.

(c) Misconduct ? grounds for discipline. (1) Practitioners. Acts or omissions by a practitioner (including a suspended, excluded, or inactive practitioner), acting individually or in concert with any other person or persons constituting gross misconduct, violating the imperative USPTO Rules of Professional Conduct, or the oath taken by practitioner shall constitute misconduct and shall be grounds for discipline, whether or not the act or omission occurred in the course of providing legal services to a client, or in a matter pending before the Office. Grounds for discipline include:

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(i) Conviction of a crime (see Secs. 11.24, 11.803(d) and 11.804(b));

(ii) Discipline imposed in another jurisdiction (see Secs. 11.24 and 11.803(e)(1) and (f)(4));

(iii) Failure to comply with any order of a Court disciplining a practitioner, or any order of the USPTO Director disciplining a practitioner;

(iv) Failure to respond to a written inquiry from OED Director in the course of an investigation into whether there has been a violation of the imperative USPTO Rules of Professional Conduct without asserting, in writing, the grounds for refusing to do so; or

(v) Violation of the imperative USPTO Rules of Professional Conduct. See Sec. 11.100(a).

The statutory grounds open to the Patent and Trademark Office under 35 USC 32 are as follows:

Sec. 32. ? Suspension or exclusion from practice

The Director 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 who does not comply with the regulations established under section 2(b)(2)(D) of this title, or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant, or other person having immediate or prospective business before the Office...

The proposed rules, at section 11.19+, confuse acts of misconduct, which should serve as grounds for exclusion, with proof that those acts of misconduct took place, such as conviction of a crime or discipline imposed by a state. Conviction of a crime should be considered as proof that the crime took place, but conviction of a crime is not, per se, an act of misconduct, merely proof of an act of misconduct. Discipline (such as disbarment) imposed by another state is not, per se, an act of misconduct, but is merely proof of an act of misconduct.

There are crimes which are grounds for disbarment in some states but not in other states. A prime example, recognized in discussions of the ABA's model code, is involuntary manslaughter, which is not usually considered an example of moral turpitude. Killing someone while driving an automobile known to be unsafe might be considered the crime of involuntary manslaughter, but probably should not be, per se, a grounds for exclusion from patent practice. I do not believe that conviction of this crime, or disbarment from state practice because of such conviction should, ipso facto, be incontrovertible grounds for exclusion from patent practice.

The confusion arises with respect to the statute of limitations for initiating exclusion proceedings. The statute of limitations should be set in motion by the act of misconduct, not by later conviction of that misconduct. If the Patent and Trademark Office cannot get its act together enough to initiate exclusion proceedings, even if it then holds them in abeyance, when someone is accused of murder, but must wait until the conviction before doing anything, it is the fault of the office that the statute of limitations has run. Murder is an act of moral turpitude. Conviction of murder is not. The statute of limitations begins to run with the commission of the act. If the act of misconduct or moral turpitude is well and deliberately hidden, that might be grounds for tolling the statute of limitations, but not inertia on the part of the office. That is why we have statutes of limitations.

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INCOMPETENT OR OVERREACHING DRAFTING OF REGULATIONS

Proposed Sec. 11.803 Reporting professional misconduct provides that

(f) Conduct that constitutes a violation of paragraphs (a) through (e) of this section includes, but is not limited to:
(1) Failing to comply with the provisions of paragraphs (d) or (e) of this section;

(3) In the absence of information sufficient to establish a reasonable belief that fraud or inequitable conduct has occurred, alleging before a tribunal that anyone has committed a fraud on the Office or engaged in inequitable conduct in a proceeding before the Office; or
(4) Being suspended, disbarred as an attorney, or disbarred on consent from practice as an attorney on any ethical grounds (including ethical grounds not specified in this part) by any duly constituted authority of a State, or the United States, or resigning from the bar of any State, or Federal court while under investigation.

It is inelegant draftsmanship of a regulation to use subsections that tell what other sections (presumably unintelligible without help) actually mean. From this, we acquire, in subsection (1), the truism that violation of paragraph (e) is a violation of paragraph (e), in case there was any doubt.

Subsection (3) would make it professional misconduct allege, before a court (not before the PTO) that fraud may have occurred. In a court proceedings, it may be necessary to make such allegations to support court proceedings to obtain evidence that the fraud did occur. How proceedings are conducted before courts is not for the PTO to regulate. If the court finds that professional misconduct sufficiently egregious to merit discipline has occurred, the court will discipline the attorney. The PTO can then use these court proceedings to determine whether or not the PTO should also discipline the attorney. If the courts do not object to such allegations but the PTO does, should the PTO force actions in litigation to be taken (even more than is the current case) by patent litigation specialists who are not registered to practice before the PTO?

A practitioner who is suspended or disbarred is required by proposed section 11.803 to report that fact. So far, so good. But subsection (4) states that the fact of being suspended or disbarred is a violation of the earlier sections which require a practitioner to report that fact. This is confused and inelegant drafting of a regulation. Better draftsmanship should be expected.

Sec. 11.804 Misconduct provides that

It is professional misconduct for a practitioner to:

(g) Engage in disreputable or gross misconduct.

If section 11.804(c) is approved, it will be professional misconduct to act dishonestly. Everyone is less than honest on occasion. When the wife of a practitioner asks the practitioner "Does this dress make me look fat?" and the practitioner gives the only safe answer, is he subject to disciplinary action? If this regulation is enacted, I believe I could find evidence to disbar any practitioner, and, if the same rule applied to PTO officials, to discipline any of them.

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If section 11.804(g) is approved, it will be professional misconduct to engage in disreputable misconduct. "Disreputable misconduct" is a term which means whatever its user wants it to mean. Logically, it means nothing more than conduct which is bad for the reputation of the person accused of such misconduct. The reputation depends upon the community in which that reputation is maintained. A few of the things which could be disreputable misconduct in different communities are

a. getting drunk at a party and putting on a lamp shade as a hat, b. public cursing, c. promoting atheism or communism, or any other unpopular ism, d. appearing in public in shabby clothes, e. declaring bankruptcy, f. expressing sexist or racist opinions, g. homophobia, h. homosexuality, i. promiscuity, j. having a child out of wedlock, k. or, in the code of one college, having a pattern of tardiness.

I do not think the PTO should be in the business of deciding what is disreputable misconduct. It is too much like "conduct unbecoming an officer."

Sec. 11.806 Sexual relations with clients and third persons includes

(c) Paragraph (b) of this section shall not apply to sexual relations between a practitioner and his or her spouse or significant other . . .

which leads to the vagueness of the term "significant other." Arguably, anyone a practitioner is having sexual relations with is, for that period of time, his or her significant other. Without definition, this term seems to make the remainder of the regulation unenforceable if a well thought out defense is raised. And I doubt if the term can be defined with any precision.

CONCLUSION

I hope that the Patent and Trademark Office will keep the limitations of its statutory authority in mind when making rules. If more statutory authority is needed, the Patent and Trademark Office should seek it, but it should not act as if it had the authority when it does not.

Kenneth W. Dobyns
2/10/04