Moatz, Harry

From: ronald. henderson@...
Sent: Tuesday, December 23, 2003 9:29 AM
To: ethicsrules comments
Subject: Attention: Harry I. Moatz

I must voice my objection to any requirement of a recertification test for registered patent attorneys and agents. There is no field of law (of which I am aware) in which an attorney is required to take a never?ending stream of tests after passing the requisite state bar exam. The purpose of the CLE requirement which has been adopted by, I believe, every state is to keep attorneys abreast of recent changes in the law. Thus, attending an appropriate PTO?approved CLE class should be sufficient to serve the purpose of educating the Patent Bar about new rule changes(without the need to require passing any tests). Not a single state in the U.S. has seen fit to require attorneys to keep taking tests after passing the state bar exam. The USPTO should not adopt such an unprecendented and repugnant (at least to me) requirement.

As a group, patent attorneys are some of the smartest professionals within the overall population. Thus, to the extent that the USPTO perceives a problem with compliance with its rules by the Patent Bar, as a whole, I believe the problem lies with the fact that, in recent times, the USPTO has been increasing the amount of rule changes without an appropriate amount of increased communication from the USPTO to the Patent Bar regarding the rule changes. In addition, most patent practitioners that I know take CLE classes that are related to patent law (or related to other areas of intellectual property law) to meet their state CLE requirements. Most of the patent?related CLE classes that I've attended to meet my state CLE requirments will have been just as informative, I suspect, as anything the USPTO will require. So, I don't believe the new USPTO CLE requirments will have any significant impact on the level of rules compliance by the Patent Bar, as a whole. On the other hand, there may be unintended burdens (including additional financial costs) placed on inventors. Consider, for example, the burden placed on an inventor if their attorney does not pass one of the madatory tests. The inventor will have to find another attorney to represent them and the new attorney will have to get up to speed on the invention and the status of the prosecution of the patent application. This will cost the inventor money. Many patent practitioners are dealing with hundreds of pending patent applications at any one time. Thus, it seems to me that the possibility of cases going abandoned may increase (because attorneys who do not pass the test cannot respond to outstanding Office Actions, etc.). This is an unacceptable burden to place on Applicants. If a patent practitioner is not capable of representing clients before the USPTO adequately, there are appropriate avenues in place for the OED to intervene, and therefore, the proposed testing requirement is simply not necessary to weed out incapable practitioners.

States already require that a certain amount of CLE credit be obtained. I have no objection to the USPTO requiring CLE credit (especially due to the fact that patent agents may not otherwise be subject to the CLE requirement), but I believe the CFR needs to be more specific regarding what the requirement is . . . how many hours of CLE within what period of years? By way of example, Indiana requires 36 hours of CLE in a 3 year period (including 3 hours of ethics credit) with a minimum requirment of 6 CLE credits per year. The CFR needs to be as specific regarding the number of CLE hours required. Currently, the CFR states that the Director has discrection regarding how much CLE to require each year . . . the potential for a "CLE moving target" is not acceptable. The requirement in 37 CFR 11.12(a)(3) that "[e]ach practitioner shall be responsible for ascertaining whether the USPTO Director has required completion of a mandatory continuing education program during a fiscal year, and complying with that requirement" is too vague. How about requiring the Director to mail a notification to each practitioner, by say, November 1 of each year regarding the following year's requirements.

I suspect you will hear quite a loud outcry about the proposed testing requirement. I propose that the USPTO abandon any efforts to institute such a requirement.

Thank you for considering my comments.