Moatz, Harry

From: DRFarrell@....
Sent: Friday, February 06, 2004 5:11 PM
To: ethicsrules comments
Subject: Proposed new rules -- I am opposed to them
Expires: Sunday, February 06, 2005 1:00 AM

My name is Daniel R. Farrell, I am a Registered Patent Attorney.

I currently work in the Legal Department of The Dow Chemical Company, but I in this particular instance I am not representing the views of Dow or Dow's Legal Department. These comments are my personal reactions to the proposed rule changes that would significantly (adversely) impact my practice.

As a long-time Registered Patent Attorney (Reg. No. 28,599) I am strongly opposed to the proposed new rules imposing additional burdens and fees on those registered to practice before the USPTO.

I have worked in a corporate IP section for all except two years (law firm) during my practice before the USPTO (first registered in 1977), from 1977 through 1994 at a large oil company, and since 1996 with a large chemical company. During that time, I have spent time on various assignments -- sometimes focusing on patent procurement, other times on other aspects of patent law. For a large fraction of my career, I have not had responsibility for patent filing or prosecution, instead focusing on Intellectual Property agreements (such as licenses, joint development agreements, research agreements, etc.). Accordingly, my need to understand the fine points of USPTO practice has varied considerable from needing intimate knowledge (at times) to needing little knowledge of USPTO procedures. When I do have need for such knowledge, I re-learn or refresh my knowledge, or I work with another patent attorney who is current on those matters. Currently, my practice is about 80 percen! t IP agreements and about 20 percent client counseling on IP matters. I spend almost no time in patent procurement. Yet it is very important to my clients that I am a Registered Patent Attorney -- which means to them that I know the patent law (even if not the minutia of USPTO practice).

Many of the fundamentals of the patent law required to competently represent my clients do not change significantly from day to day or year to year. One concern I have with the proposed new rules is that the recertification test will be so focused on the minutiae of USPTO practice that the understanding of over-riding patent law will be of little or no avail in recertification. For example, in my current practice, I do not need to remember how many days I have to file a responsive paper to a particular USPTO office action -because that rarely is involved in my practice. If it is relevant, I can look it up. Should failing to know (or momentarily memorize -- for the test) that time period disqualify me as a competent patent advisor to my client? I think not. Yet that is the kind of thing that changes most often in the USPTO procedures -- the knowledge of which (or lack of such knowledge) seems to be the primary motivation for the rule changes.

I am an active member of the Texas State Bar, and a voluntarily inactive member of the California Bar. I must take 15 hours of MCLE to meet the Texas State Bar requirements -rarely would more than 4-5 hours per year be focused on patent law, and none would be focused on USPTO procedures. I am opposed to the USPTO's imposing still more MOLE requirements -- and also requiring a re-certification exam. No state bar of which I am aware requires a re-certification exam.

The proposed rules seem targeted at a few bad-actor practitioners which might lead to a public perception of incompetence. Would these new rules really change the behavior or eliminate those few bad-actors? I think not.

It seems to me that, at least as to patent attorneys (as opposed to patent agents), any incompetence is easily addressed by the relevant state bar disciplinary procedures. Those ."procedures most likely would be more available to clients who have been wronged -- unless of course the client lived near Alexandria, and his/her attorney was in California. Why not limit your proposed rules to those not already covered by a State Bar's oversight?
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Please reconsider the proposed rules -- and do NOT impose them.

Dan Farrell Cell phone 1-281-435-5131 e-mail: dfarrell@....
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