Moatz, Harry

From: WPeterson@...
Sent: Tuesday, February 10, 2004 9:27 PM
To: ethicsrules comments
Cc: ...
Subject: Comments on Proposed Rules

LltrPTO re Proposed
Rules on Re... Attached are preliminary comments from Knobbe, Martens, Olson & Bear, LLP regarding the Proposed Rules issued December 12, 2003.

«LtrPTO re Proposed Rules on Registration 2?10?04.pdf»

"<KMOB.COM>" made the following annotations.
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Knobbe Martins Olson & Bear LLP
2040 Main Sheet
FOulfeenM Floor Irvinp, CA 92694 Tel949?760?0404 Fax 849.760.9502 www.knob.com
Intellectual Property Law
Wendy x. Peterson
949?729?2911
wpeterson@...
February 10, 2004
VIA EMAIL to: ethicsrules.comments anuspto.a o~v
Mail Stop OED?Ethics Rules
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313?1450
Attrt: Harry 1. Moatz, OED Director
Dear Mr. Moatz:
Knobbe, Martens, Olson & Bear, LLP ("KMOB") is pleased to submit preliminary comments on the Notice of Proposed Rulemaking published in Federal Register, Vol. 68, No. 239, December 12, 2003. As you may know, KMOB is the largest specialty firm on the West Coast dedicated exclusively to the practice of intellectual property law. We have 110 patent attorneys and 19 patent agents registered with the U.S. Patent and Trademark office.

We understand from conversations with members of the American Bar Association Intellectual Property Law Section that comments are due today on the sections of the proposed rules relating to registration of practitioners, and that comments on the other provisions of the proposed rules may be submitted after today. Accordingly, we are furnishing to you herewith our comments on the registration section, and will provide you at a later date with comments on the other sections of the proposed rules.

We have two comments on the registration section, as follows:

Comment on Supplementary Information Concerning, S?on 11.6fa) Registration of Aliens
Proposed Rule 11.6(a) states that a resident alien who otherwise fulfills the requirements for registration may be registered to practice before the USPTO provided that such registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States. We have no objection to this new rule. We do, however, wish to delete the commentary to Rule 11.6(a), contained in the Supplementary Information at page 69446, which states:
San Diego San Francisco Los Angeles Riverside San Luis Obispo
699?235?8550 4?5?954?4194 310?551?3450 909?789?923? 805?547?5580

KNOW NIBPIRIS 015011 & Bear UP

Mr. Harry I. Moatz
February 10, 2004
Page ?2?

"Registration would be precluded, for example, when the visa petition does not describe that the alien as being authorized to be employed in the capacity of representing patent applicants before the Office."

We believe that this commentary is inconsistent with the text of the proposed rule. The commentary seems to require that a visa petition specifically state that the alien is authorized to be employed in the capacity of representing patent applications before the USPTO. The rule simply states that registration to practice before the office cannot be inconsistent with the terms of the alien's visa. It should not be a requirement to registration that the alien's visa specifically authorize employment in representing applicants before the USPTO. The commentary would place an immediate and unnecessary burden on existing practitioners who are resident aliens by possibly calling into question whether their visas contain the proper authorization to represent clients before the USPTO. If their visas do not contain the proper authorization, such practitioners would be required to incur considerable costs in making any corrections to their visas. The same burdens would be placed on applicants for registration who are aliens, and indeed would be a trap for unwary aliens when they are applying for visas. The requirement expressed in the commentary would be more "red tape" through which an alien must navigate, with no obvious benefit to the citizens of the United States.

Comment on Section 11.8(d) Annual Fee

The proposed rule contemplates that the due date for the annual fee for practitioners will be staggered over four calendar quarters, based on the practitioners' last names. For a large firm such as KMOB, payment of the fees in four different quarters is logistically difficult, and could create situations in which a due date for a particular practitioner is inadvertently missed. We believe that one annual due date for the payment of the registration fees for all practitioners would be more convenient for our firm, as well as for the USPTO.

KMOB respectfully requests that the Director give these comments due consideration. Should you have any questions regarding our comments, please contact the undersigned at (949) 721??2911 or by e?mail at wpeterson@...

Sincerely,

Wendy K. Peterson
General Counsel

H;IDOCSIWKP\PT01KMOH COMMENTS ON PTO PROPOSED RULES RE REGISTRATION 2?10?04.DOC