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January 23, 2004

Mr. Harry I. Moatz

Director of Enrollment and Discipline

United States Patent and Trademark Office

Mail Stop OED-ETHICS RULES

P.O. Box 1450

Alexandria, VA 22313-1450

RE: Comment on Notice of Proposed Rulemaking, Rule Sections 11.12 and 11.13

Dear Mr. Moatz:

I wish to take this opportunity to comment on the Notice of Proposed Rulemaking for Rule Sections 11.12 and 11.13 that was published in the December 12, 2003 edition of the Federal Register. The Notice states that proposed Section 11.12 would introduce mandatory continuing education for practitioners who are licensed to practice in patent cases before the U.S. Patent and Trademark Office. The Notice and accompanying proposed Rules detail that the proposed continuing education requirement would be satisfied by either the completion of a Web-delivered program with examination questions or attendance at a PTO-approved continuing education program. It is unclear from the Notice and the proposed Rules whether a PTO-approved continuing education program would also entail an examination.

I have no objection to a requirement for continuing education for patent practitioners that is similar to the current requirements of most state bars. Indeed, many active practitioners, including myself, already attend continuing legal education programs that are patent-related to satisfy our state bar requirements. I could support a requirement that a portion of those CLE hours be patent-related.

However, requiring an examination in conjunction with continuing education activities would be an unnecessary burden on any active practitioner. An active practitioner must already devote a significant amount of time to attend continuing legal education programs and to keep apprised of the current state of federal law, state law and PTO procedures. These very activities, together with engaging in daily practice, keep conscientious practitioners up-to-date on current patent laws in order to competently represent our clients. If an additional requirement were instituted mandating an examination, time over and above what is already devoted to maintaining current knowledge of the law could be required to diligently prepare for and take the examination. This is time that would be removed from our practices, impairing the time devoted to our clients and increasing the cost of our representation. As a result, an examination requirement could be a significant burden upon active practitioners and our clients. This burden would not be countered by a corresponding benefit. I am not aware of problems or reports of significant numbers of practitioners who are lacking in competence. Any practitioners who are merely rusty due to inactivity would likely be either eliminated from the rolls or brought up to standards by establishing the proposed continuing education requirements, without the added burden of an examination.

Furthermore, the Notice states that the continuing education requirement is modeled after the state systems for attorneys. To my knowledge, no state requires an examination as part of its continuing education requirement after an attorney is already admitted to practice. Thus, the proposed examination requirement lacks any precedent in the systems upon which the continuing education proposal is modeled.

I understand that the intention of the examination is to assure that practitioners have in fact interacted with the training materials to be provided on the internet and that it is not, at this time at least, proposed to be another “patent bar exam” with all the attendant trauma. Nevertheless, in my judgment the burdens of such a system (including the possibility for subsequent abuse) outweigh the benefits.

Therefore, it is my view that, while continuing education which is patent-related and a component of existing state bar requirements is commendable, any examination requirement is unnecessary and unduly burdensome.

Respectfully submitted,

David M. Shold

Reg. No. 31,664

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