| -----Original
Message-----
From: Fox, David [mailto:dfox@....]
Sent: Tuesday, June 01, 2004 3:55 PM
To: ethicsrules comments
Subject: Notice of Proposed Rulemaking Changes to Representation
of
Others Before the United States Patent and Trademark Office;
Proposed
Rule 68 Fed. Reg. 69441 (December 12, 2003)
Attn: Harry I. Moatz
Director of Enrollment and Discipline
Mail Stop OED-Ethics Rules
U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
RE: Notice of Proposed Rulemaking Changes to Representation
of Others Before the United States Patent and Trademark Office;
Proposed Rule 68 Fed. Reg. 69441 (December 12, 2003)
Dear Director Moatz:
In the Federal Register Notice dated December 12, 2003, the
U.S. Patent and Trademark Office (“PTO”) requested
public comments regarding the above identified Notice of Proposed
Rulemaking. As a member of the State Bar of Texas Intellectual
Property Section, I am expressing my concern with some of
the proposed PTO rules, including 11.104(a)(2), 11.106 through
11.110, 11.802-804, 11.8(d), and 11.13(g)(4). See Federal
Register, Vol. 68, No. 239 dated Friday December 12, 2003.
First, proposed Rules 11.106 through 11.110 regarding Confidentiality
of Client Information and Conflict of Interest are more onerous
and will require a practitioner before the PTO to comply with
a higher standard than that imposed by the ABA Model Rules
of Professional Conduct and the Texas Disciplinary Rules of
Professional Conduct. In particular, unlike the Model Rules
and Texas Rules which require consent of a client following
consultation, proposed rules 11.106(a)(1) and 11.107 require
a client to give “informed consent in writing after
full disclosure.” The proposed definition of “full
disclosure,” requires the practitioner to give an 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 accrue to
the client. This proposed PTO rule appears to codify potential
business conflicts into ethical conflicts.
The PTO states that this departure from the Model Rules is
intended to provide both the client and practitioner with
certainty regarding communication and a stronger record (Id.
at 69464). However, no justification is provided as to why
practitioners before the PTO need a stronger record or greater
certainty regarding communication. The extra burden and increased
cost of client representation such proposed rules would have
on the practitioner on a daily basis far outweigh the benefit
of adopting rules stricter than the Model Rules.
It is respectfully recommended that the more stringent requirement
of the “written consent after full disclosure”
provision be reevaluated and that the PTO adopt the ABA Model
Rules relating thereto.
Also, Proposed Rule 11.104(a)(2) regarding communications
with intermediaries of foreign clients is impractical, unnecessary
and should be deleted from the proposed rules. This Proposed
Rule appears to require practitioners representing a foreign
client through a foreign patent agent or associate to obtain
written consent from the client to conduct communications
through the foreign firm. While the ultimate client is not
the foreign patent agent or associate, in most cases the ultimate
client relies on the foreign patent agent or associate to
choose a practitioner who is registered to practice before
the PTO. Communications from the PTO practitioner to the ultimate
client should flow through the foreign agent or associate
as a matter of course. This Proposed Rule is impractical and
unnecessary.
In addition, Proposed Rule 11.803(d)(1) contains a requirement
for mandatory self-reporting within ten days by a practitioner
who is found guilty or pleads no contest to apparently any
criminal charge other than traffic violations that do not
involve alcohol. Although the word “Crime” is
defined in Proposed Rule 11.1 to include only felonies, Rule
11.802(d)(a) on its face contains an enigmatic exception for
certain misdemeanor crimes, indicating that the self-reporting
rule would encompass crimes less serious than felonies. It
may be a laudatory goal for the PTO to eliminate from the
practice persons convicted of serious thefts or crimes of
violence, but it is difficult to see the need for the PTO
to gather information about matters such as pleas of no contest
or convictions for such “crimes” as fishing without
a license or even driving while intoxicated, or to make it
a rule violation if one fails to self-report such matters
to the PTO. Moreover, this proposed rule has no analog in
the current PTO rules, the Model Rules or the Texas Rules.
Instead, it is apparently an overzealous attempt to monitor
all moral infractions by practitioners, no matter how tenuous
the relationship to patent office practice, and to create
a trap for the unwary practitioner who likely would not realize
the need to report these matters to the PTO because state
bar rules do not require it. Such a draconian rule is not
justified.
Further, Proposed Rule 11.804(h)(9) is unnecessarily harsh
and should be modified or deleted. This Rule provides that
the failure to report a change of address within 30 days is
professional misconduct. This is simply unfair and unnecessary.
Equally unjustified is the proposed rule requiring a $100
annual fee. See Proposed Rule 11.8(d). This is in effect yet
another tax that does not tie the source of the funds with
the expenditures for which the fee is purportedly gathered.
The PTO has attempted to justify this proposed fee by claiming
it would cover the costs of the disciplinary system and be
used to maintain the roster of practitioners. However, it
is well known that the PTO does not have control over the
use of funds it receives and the assurances to the contrary
in the Federal Register are not binding. This proposed fee
would simply add more money to that which can be diverted
elsewhere. Consequently, there is no justification for the
proposed fee.
Finally, the proposed rule regarding continuing education
(CLE) requirements should be modified to permit a law firm
or corporate law department to become an approved sponsor
of continuing education programs to satisfy the CLE requirement.
See Proposed Rule 11.13(g)(4). There is no justification for
preventing a law firm or a corporate law department from seeking
approval and delivering CLE programs to their employees to
satisfy the proposed CLE requirement. The State Bar of Texas
and many other bars around the country allow and even encourage
such “in-house” CLE programs, subject to bar approval
for content. Such a modification of the proposed rule to allow
in house programs is warranted for the convenience of practitioners
and their employers.
Respectfully submitted,
David L. Fox, Ph.D.
Attorney At Law
Fulbright & Jaworski L.L.P.
1301 McKinney, Suite 5100
Houston, Texas 77010
Phone: 713-651-8231
Fax: 713-651-5246
email: dfox@....
Member
State Bar of Texas, Section of Intellectual Property
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