Moatz, Harry
From: EKUESTERS@...
Sent: Tuesday, February 10, 2004 7:36 PM
To: ethicsrules comments
Subject: Oblon, Spivak Supplemental Comments on Proposed Rule Making

PTO Comment 2.doc
Dear Sir:

Attached are Oblon, Spivak's supplemental comments on the PTO's outstanding proposed rule making. These comments are supplemental to the comments submitted earlier today by Jim Kulbaski of Oblon, Spivak.

Best regards,

Eckhard Kuesters

Eckhard H. Kuesters Oblon, Spivak, McClelland, Maier and Neustadt, P.C. 1949 Duke Street Alexandria, VA 22314 U.S.A.

(703)413?3000 telephone
(703)413?2220 fax
(703)412?6224 direct dial telephone
ekuesters@...
1

February 11, 2004
ECKHARD H. KUESTERS
703?413?3000
EKUESTERS@...
Director of the United States Patent and Trademark Office Mail Stop OED?Ethics Rules United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313?1450

Via E?mail addressed to ethicsrules.comments@uspto.gov
Re: Notice of Proposed Rulemaking
Changes to Representation of Others Before
the United States Patent and Trademark Office
68 Federal Register 69442 (December 12, 2003)
Dear Director:
Oblon Spivak McClelland Maier & Neustadt P.C. ("Oblon Spivak") is one of the largest firms in the United States specializing exclusively in intellectual property law. As such, Oblon Spivak welcomes the opportunity to provide suggestions and comment on the above?identified notice of proposed rule making. In particular, Oblon Spivak provides herein suggestions and comments pertaining to parts of the proposed rulemaking not commented on earlier by Jim Kulbaski of our firm.

As with all proposed rule making packages pertaining to practice before the PTO, Oblon Spivak appreciates the opportunity to provide comments and suggestions prior to the rule making packages being officially adopted. Oblon Spivak provides their comments and recommendations from the perspective of its over 100 patent and trademark practitioners.

The following comments are directed to the identified proposed rules. The presentation is not as detailed as would have been desired, and likely does not address all the concerns of the Oblon, Spivak firm. Nevertheless, although these comments are considered to be preliminary in nature, they are being sent at this time in view of the due date set by the PTO. It is strongly urged and recommended that the deadline for presenting comments be extended to permit additional time to study the proposed rules and consider their far?reaching, and likely unintended, consequences in more detail.

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Section 11.2(c) states a 30 day period of response for filing a petition to an action or requirement of the staff of OED. This period is entirely too short, and does not provide adequate time for fact gathering or even preparation of a well reasoned petition when the facts are gathered. This period ignores the reality of the real world difficulties in obtaining information from third parties, especially where the third parties have no vested interest in a dispute by another party with a governmental agency. This period should be at least 90 days long and should be extendible at least another 90 upon a reasonable showing of necessity for further time.

§11.2(c) states that "any request for reconsideration waives a right to appeal by petition to the USPTO Director under paragraph (d) of this section, and if not filed with 30 days of the final decision of the OED Director may be dismissed as untimely" This provision denies due process and fair opportunity to a practitioner to present his case and protect his career. It is completely tone deaf to the severity of the impact of an action on a practitioner's career and physical well being. Instead, it promotes an unconscionable "rush to judgment" based on the assumption of an infallibly crystal clear action and an insufficient response thereto. Instead of seeking the truth of a situation, this provision assumes a truth stated in the action and initiates an accelerated pro forma inquiry to reach a prejudged outcome. Once again, the 30 day period for response is insufficient and should be at least 90 days and extendible. Furthermore, requesting reconsideration should not preclude an appeal.

§11.2(d) establishes a 30 day time period to file a petition seeking review of a final decision of the OED Director, and 30 days for filing a request for reconsideration of the decision of a USPTO Director after that date of a decision. Such a short time period denies due process and should be at least 90 days and extendible to 120 days.

§11.2(e) states that "matters which have been decided by a one OED Director or USPTO Director will not be reconsidered by his or her successor except if a request for reconsideration of the decision is filed with the 30?day period permitted to request reconsideration of said decision proved for in paragraphs (c) and (d) of this section." Once again, the 30 day period for response is insufficient and should be at least 90 days and extendible.

Section 11.3(a)?(b)

Section 11.3(a) permits suspension or waiver of the rules, with the exception of the rules stated in §11.3(b) "in an extraordinary situation, when justice requires," provided that the

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suspended or waived rule is not "a requirement of statute." §11.3(b) states that "[n]o petition to waive any provision of §§ 11.19, 11.24, 11.100 through 11.901, or to waive any provision in this paragraph shall be granted for any reason." The exclusion of §§ 11.19, 11.24, 11.100 through 11.901 makes no sense whatsoever, where "in an extraordinary situation, when justice requires," a provision of such provision is reasonably suspended or waived in a particular situation. Proposed Section 11.3(b) underscores an inflexible draconian attempt to deny due process in a pro forma inquiry to reach a prejudged outcome. Proposed Section 11.3(b) should be withdrawn.

Section 11.4 Committee on Enrollment

§11.4(a) states "The U.S. PTO director shall establish a committee on enrollment composed of one or more employees of the office," which limits members of such a committee to USPTO employees.

The Committee of Enrollment is charged with determining the character of members with authority to practice in front of the USPTO. As such that committee should be able to draw on persons who are not employees of the USPTO for their membership. Non?employees of the USPTO to serve on the Committee of Enrollment would provide several benefits:
(1) Non?employees of the USPTO could provide an experience and perspective that USPTO employees would not have, bearing in mind that non?employees have direct experience dealing with the ambiguities in actual practice situations and the actual effects and impact of decisions made in real life situations that a USPTO employee could never have.
(2) A committee including non?employees of the USPTO would almost certainly have more trust and respect where there is a practical knowledge base for the decision making entrusted to the committee.
(3) Simply expanding the available personnel for the Committee on Enrollment would allow a wider pool of highly talented people to serve on the committee.
(4) No committee, particularly a Committee on Enrollment that can effect all aspects of one's ability to practice before the USPTO can properly function if they become too isolated from the persons they are to oversee, and the most effective way to prevent any type of insulation is to allow members of the group they are to oversee into that committee.
(5) There is no clear justification for limiting such a committee to only USPTO employees.

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11.6?11.9:

§ 11.6 ?? Registration of attorneys and agents

§11.6(d) relates to interference matters and is new. It authorizes the Chief Administrative Patent Judge or Deputy Chief Administrative Patent Judge of the Board of Patent Appeals and Interferences to determine "whether and the circumstances under which an attorney who is not registered may take testimony for an interference."

This new paragraph has no explanation in the commentary regarding the proposed rules. We could suggest that the circumstances under which an individual not registered to practice in the Patent Office may take testimony in an interference should be elaborated upon either in the rule itself or in the commentary.

§§11.6 (a) and (b) appears to be the same as the old rule. However, the commentaries indicate that the proposed rules "would restrict circumstances under which an alien could be registered." Registration would now be precluded if the practice of patent law before the Office is inconsistent with the terms of any visa under which the alien is admitted to and continues to reside in the United States.

To the extent that the proposed rule does not involve a change in practice, and indeed does not appear be changed, then comments are unnecessary. However, if any of foreign national intends to register to practice before the PTO and intends to practice, these foreign nationals should have the terms of their visa arranged such that they will practice before the PTO on a temporary basis solely on behalf of the employer corporation.

§ 11.7 ?? Requirements for registration

§11.7 (g) now permits the Director to list the proposed registrants on the Internet and make inquiry regarding the moral character of the individuals listed. This seems to be a tremendous invasion of privacy. The Director is required to (shall) conduct an investigation into the moral character and reputation of the individual if information is received from any source tending to reflect adversely on the moral character or reputation of the individual seeking registration or recognition.

Moral character is set forth in the rule and evidence of showing lack of moral character may include conviction of any crime involving moral turpitude or conviction of a misdemeanor concerning theft.

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While no one encourages misdemeanor theft such as shoplifting, it would be preferable that the PTO not be concerned with such activities.

The PTO's assessment of moral character also includes review as a whole "to see if there is a drug or alcohol abuse or dependency issue." I do not believe that the PTO should be regulating moral conduct when it does not concern matters before the PTO. Whether someone is dependent on drugs or alcohol is not per se the concern of the PTO, but law enforcement authorities.

§11.8 includes an annual fee for registration. The time for payment of the fee is determined by the letter of the alphabet in which the last name of the individual begins. This should be a nightmare for law firms and I would suggest that the annual fees be paid at the first of the year. Furthermore, the annual fee is alleged to fund the expanded operations of the OED. However there is no assurance that the funds will be so used. At the very least, Congressional diversion may intervene in the future. Other diversions are conceivable. Funding of OED operations is therefore better achieved from existing funding available to the PTO, such as application fees, especially in view of the added complication and resources which will be attendant to tracking registration payment, and the possibly draconian effect of inadvertent non?payment and the resulting exclusion which non?payment would entail. In that regard, exclusion for non?payment has many serious unintended consequences, and non?payment should not be a basis for exclusion, certainly not a basis for immediate exclusion, without an opportunity to be heard on the matter. Due process for the practitioner, and also the practitioner's clients demands reconsideration.

§11.7 permits candidates for registration to take the PTO exam an unlimited # of times, every 60 days, with no right to petition for regrade. Having a multiple choice test format, with a limited number test questions to draw from will necessarily improve the chances of an individual merely memorizing the appropriate answers for the test questions. Even if the individual can memorize the answers to a fraction of the questions (say 25%), this gives the individual an unfair advantage of having much more time to analyze the remaining questions. The test would be fairer if an applicant can only take the test once or twice each year, and up to a fixed number of times. If most of the questions are new for each test, then it would be appropriate to allow the individual to take the exam as many times as they wanted.

§11.7 (e) proposes no ability to obtain substantive review of the questions and answers (i.e., a petition for regrade).

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If individuals cannot petition for regrade, there is a significant risk that the USPTO will be using incorrect (or incomplete) model answers. A substantial number of registrants became registrants by way of petitioning the scoring of their exam results. Through this petition process the USPTO was able to understand that there are sometimes multiple correct answers. Elimination of the petition for regrade is based on an unrealistic view that the USPTO's model answers are without flaw.

§11.10?11.11 defines matters from which ex?examiners are barred. The phrase "To the United States" should be taken out and replaced with "To the PTO."

§11.10(b)(1)(f): the word "or" should be deleted otherwise the rule is nonsensical. The same change may be made in subparagraph (2)(ii).

§11.10(b)(2)(f): the word "or" should be deleted otherwise the rule is nonsensical..

Taken together, §§11.10(b)(1) and (2) indicate that the proposed rules have not even been proof read by the PTO.

§11.10(b)(ii)(C) is directed to patents and applications which are "related" to those upon which an examiner worked during his term in the PTO. The term "related" is indefinite and places too high a burden on the examiner. As noted in Example 1, six years subsequent to the examiner's leaving the office, the examiner would not be permitted to act on a new application which is related to the technology described in a patent application the examiner handled during prosecution.

Example 1 in subparagraph (vi) has nothing to do with the PTO. It appears to be copied from the rule of another agency.

§11.10(b)(3) purports to define terms appearing in §11.10(b)(1) and (2).

Comment: The term defined in subsection § 11.10(b)(3)(v), "official responsibility" does not appear in either 11.10(b)(1) or (2).

§11.10(b)(3)(vii) purports to define some "other essential requirements" before restriction on practice applies. §11.10(b)(3)(vii) refers to some unspecified "statute." Maybe just a case of bad cutting and pasting; might be intended to read "rule" rather than "statute." Again, failure to proof read and clarification is required

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§11.11(b)(1) sets out practice of mailing a notice when it "appears" that a registered agent has failed to comply with certain rules, and states a notice will be mailed when it "appears" that a registered agent has failed to comply with, inter alia, 11.12(e). However, there is no section 11.12(e); 11.12 ends with subsection (d). Clarification is required.

§11.11(b)(1)(i) and (ii) set out contents of notice to be mailed when it "appears" that a registered agent has failed to comply with certain rules, and states that the notice will only contain: (1) demand for compliance within sixty days; and (2) demand for money. The rule should require the notice to explicitly make provision for responding when the "apparent" non?compliance is just a PTO error. This may seem silly, but the PTO's failure to proof read these rules prior to publication shows just how prone to making mistakes it is and requires this change.

11.11(b)(2)(iii) provides for publication of attorneys and agents who have been notified of administrative suspension in the Official Gazette. The rule should explicitly require the publication of the retraction of any incorrect administrative suspensions arising solely from PTO errors. Again, the PTO's failure to proof read these rules prior to publication requires this change.

§11.14

§11.14(a) includes a new final sentence: "Registration as a patent attorney does not entitle an individual to practice before the Office in trademark matters." The comment to revised proposed rule 11.14(a) indicates that a registered patent attorney who has been suspended or disbarred by the highest court of a state should not be permitted to rely on his or her registration as a patent attorney to continue to practice before the office in trademark matters. We understand and agree with the purpose underlying the proposed amendment to § 11.14(a). However, we believe § 11.14(a) can be clarified if the final sentence is revised to read: "Registration as a patent attorney does not entitle an individual to practice before the Office in trademark matters if that individual otherwise has been suspended or disbarred from the practice of law by the highest court of a state." (Emphasis added.)

§ 11.14(f) is new and provides: "An individual seeking reciprocal recognition under paragraph (c) of this section, in addition to providing evidence satisfying the provisions of paragraph (c) of this section, shall apply in writing to the OED Director for reciprocal recognition, and shall pay the application fee required by § § 1.21(a)(1)(i) and (a)(6) of this subchapter." We agree with the proposed addition of Paragraph 11.14(f) which

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expressly requires that an individual seeking reciprocal recognition under paragraph 11.14(c) must provide evidence satisfying that paragraph, must apply in writing to the OED Director and must pay the application fees.

§11.15?11.18

§11.16 requires a practitioner to open his financial books and records to the OED director. This is a far too overreaching rule which no attorney can comply with. This would violate the attorney?client privilege. Records of a client can only be opened upon waiver of the privilege by the client. To open the records as required by this Rule would entail disqualification of the attorney from the practice of law and possibly expose the attorney to a lawsuit by his client.

As the Rule is written, there is no limitation on the OED director in determining which clients or when a demand for records can be made by the Office. A future OED director could demand the opening of records without any probable cause of inadequacies. The Rule is so broad that it would give the OED director the power of harassment and, therefore, is totally unacceptable.

§11.18(b)(1) makes no sense. The undersigned would urge the Office to carefully reread the section. The section could be read as follows: "Knowingly and willfully covers up by any trick a material fact." What is the meaning of a "trick"? The term is unduly broad, without meaning. The section also covers the making of false or fictitious statements but there is no modifier that it was known that the statement was false or fictitious. The modifiers "knowingly and willfully" modifies the words "falsifies, conceals or covers up", but does not modify the words "or makes any false, fictitious or fraudulent statements". According to this Rule, therefore, an attorney is in trouble if he makes a statement which later turns out to be false even though at the time he made the statement it wasn't known to be false. Regarding § 11.18(2)(i), it would be nearly impossible to determine that a paper in an inter parties matter, such as an opposition, was not made to harass the other side. Likewise, we do not understand what is meant by "unnecessary delay". Often an argument will be filed which is not expected to succeed but time is needed to obtain comparative data to provide the evidence which would succeed. Subsection (iii), does not remedy this problem since often the argument must be made without reference to the evidentiary support since, until the tests are conducted, one cannot be certain of the evidentiary support.

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Section C is outrageous. The Patent Office is pretending to be a court by precluding a party from filing a paper or imposing monetary sanctions? This smacks of civil servant overreach.

Section C indicates that violations made jeopardize enforceability of the patent. But the Patent Office has no jurisdiction over enforceability of the patent.

§11.19?11.23

§11.19 establishes the jurisdiction of the Dir OED over practitioners and other practicing before the PTO

§11.19 (a)(1) subjects to disciplinary jurisdiction "all practitioners who have resigned under Sec. 11.11(d); all practitioners inactivated under Sec. 11.11(c);...". However, sections § 11.11 (d) and 11.11 (c) refer to " (d) Voluntary Inactivation" and "(c) Administrative Inactivation." Reference to "all practitioners who have resigned under Sec. 11.11(e); all practitioners inactivated under Sec. 11.11(d);... " appears to make more sense.

§11.19 (a)(2) subjects to disciplinary jurisdiction "An applicant for patent (Sec. 1.41 (b) of this subchapter) representing himself, herself, or representing himself or herself and other individuals who are applicants pursuant to§§1.31 or 1.33(b)(4) of this subchapter; an individual who is an assignee as provided for under Sec. 3. 71 (b) of this subchapter. and subjects them to sections §§11.24; 11.25 ?11.28 which relate to suspension based on reciprocal discipline, suspension based on criminal conviction, diversion, consent exclusion, and incompetent/incapacitated practitioners.

None of these provisions are appropriate for applicants representing themselves, or for assignees as provisions §§11.24; 11.25 ?11.28 deal with limiting the rights of practitioners to practice before the PTO. Such a rule restricts inventors' and assignees' rights to pursue patent protection.

§11.19 (c)(2) identifies other individuals as subject to the provisions of §§11.303(a)(1), 11.304, 11.305(a), or 11.804 as the basis for misconduct and grounds for discipline.

§§11.303(a)(1), 11.304, 11.305(a), or 11.804 deal with the conduct of practitioners and these sections should be amended to include "other individuals". However, subjecting "other individuals" to sections of the practitioner's code of conduct before the PTO, essentially makes adherence to this code of conduct, an element of patentability, beyond

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the statutory requirements. Penalties of applicants and assignees for misconduct before the PTO is the province of the courts, not the PTO.

§11.20 involves disciplinary sanctions.

§§11.20(a)(2)(i) states that "other individuals" "may be appropriately sanctioned by, but not limited to, requiring the individual to be represented by counsel, striking the filing of any document, or dismissing the filing of an application with prejudice." However, discipline of "other individuals" essentially makes adherence to this code of conduct, an element of patentability, beyond the statutory requirements. Penalties of applicants and assignees for misconduct before the PTO is the province of the courts, not the PTO.

§11.22 involves investigations.

§11.22 (e) provides for a staff attorney to determine whether a complaint will be docketed while subsection (f) provides for action after the OED director determines that the matter will not be docketed. Sections (e) and (f) are inconsistent as to the decision maker.

§11.22 (j)(1) provides that the director of OED may request information from complainant, practitioner, other individuals as well as anyone likely to have information. Under this subsection, failure to reply to a request may result in a finding of probable cause of violating § 11.804(d). There are no provisions for failure to comply based on privilege as found in old rule § 10.24(a) and (b)

§11.22 (j))(2) provides that disclosure will not constitute a violation of PTO rules 1.100. However disclosure may violate state rules.

§11.22 (k) allows the Director of OED to request financial records in the course an investigation. No nexus is established between the power to demand financial records and the nature of the investigation in question. In general, a request (in reality, a demand) for financial is a remarkably invasive violation of privacy and should be strictly limited in the rule. Obtaining/demanding financial records is generally beyond the scope of conducting matters before the PTO and accordingly is generally unrelated to the PTO interest of regulating practice before the office.

§11.22 (k) (1) makes a failure to reply, or an evasive reply, to a request of the OED Director, for information or financial records, a basis to find probable cause of violating § 11.804(d), conduct which is prejudicial to the administration of justice. As above commented in regard to subsection (k), inquiries into financial record is beyond the scope

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of the PTO's interest in regulating practice before the office and accordingly a failure to reply to such requests should not be viewed as a violation. This provision is not restricted to unprivileged information. Finally, a definition of "evasively" so that this proposed rule is fatally flawed as being vague.

§ 11.23 deals with the establishment of a Committee of Disciple, appointed by the USPTO director, who will prepare and forward probable cause findings to the OED Director. This rule is similar to existing 10.4, however now provides for the appointment of at least three alternate members and formation of two or more panels of three of more members/alternates. § 11.23(b)(3) provides for the appointment of a "Contact Member" to review, approve or suggest of modification of OED director recommendations, however does not define who this person is, nor basis for review, approval or suggested modification.

§11.24(b) subjects a suspended, disbarred or resigned attorney to immediate disqualification before the PTO, and then places the burden on the practitioner to show cause, within 40 days, why the same disciplinary action should not be imposed by the PTO. As there will be ample time to disqualify a practitioner after the opportunity to show cause, and immediate interim disqualification followed reinstatement by could cause unnecessary difficulties for the clients as well as the practitioner. In addition this section does not provide for immediate reinstatement if the Director decides that reciprocal discipline is not appropriate.

§11.24(c) states that the practitioner shall bear the burden of demonstrating, by clear and convincing, evidence that the identical discipline should not be imposed, and lists four defenses which can be raised. Presumably, the rule is designed to give full faith and credit to the findings of another court or agency that has disbarred the practitioner from practicing before it. However, there is no justification stated for limiting the practitioner's response to the noted four defenses. Other defenses should be permitted in fairness and in an effort to dispense justice. Furthermore, it is not clear that the deference extended to the other disbarring jurisdiction is justified, and such deference should be justified by the PTO. Additionally, the burden of proof, clear and convincing evidence, is too high in light of the harsh sanction imposed. Further justification by the PTO is thus in order and needed. (1)

(2) §11.25 imposes interim suspension and discipline based upon conviction
of committing a serious crime or other crime coupled with confinement or commitment
to imprisonment.

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(3) §11.25(a) defines serious crimes as a felony in this or a foreign country
and a crime in which truthfulness is an element resulting in exclusion of the practitioner.
As the standards for due process may not be afforded in foreign countries, this section
does not appear to be appropriate. Exclusion will also be appropriate where the
underlying offense involves moral turpitude. The standard for determining moral
turpitude should be articulated as it may vary depending on the jurisdiction.

§11.25(b) provides for "disqualification" of practitioner if convicted of a crime coupled with confinement or commitment to prison. "Disqualification" is nowhere defined in the rules package. § 11.25(c) requires notification to the director of OED within 10 days of conviction of a crime which includes imprisonment. Drunk driving and substance abuse appear to be included. For crimes in which imprisonment is applied, it may be difficult to notify the PTO within the time allotted. Simple notification prior to a petition for reinstatement should be appropriate.

§11.25(f) allows the USPTO director to exclude a practitioner for offenses where the director finds that the offense involves moral turpitude. However no standard for moral turpitude is provided. Perhaps it should be left to the jurisdiction which convicted practitioner to determine whether the crime involved moral turpitude.

§11.25 (h)(2) provides for reinstatement no sooner than fine years following discharge after completion of service or completion of probation or parole. Such a time restriction does not take into account the duration of confinement. There should be no restriction on when a petition may be filed for reinstatement, but rather the time since completion may be a factor in deciding the petition.

§11.25 (i) notes that for any crime where no imprisonment is involved, practitioner is required to notify OED Director, and investigation shall be made by OED Director. IT seems that the Director is interested in investigating minor offenses, such as jaywalking,

§ 11.27 involves exclusion by consent and tracks with old rule 10.133, except the new wording now says that practitioner who desires to resign or settle the matter may only do so by consenting to exclusion, whereas the previous rule permitted the practitioner to resign from practice only by submitting an affidavit stating the desire to resign. Although the language states "resign or settle" there is no provision for settlement if the only option available is exclusion. This harsh and punitive outcome undesirably and likely to result in contentious, time consuming, and resource consuming proceedings, which may be avoidable under the old rule. Reconsideration of the change is urged.

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Furthermore, it is not clear what the difference is between "exclusion" and "suspension" if both can be subject to reinstatement. Clarification is urged.

§11.27 requires adherence to § 11.58 to be able to apply for reinstatement. § 11.58 is extremely burdensome (particularly §11.58(b)(1)(i)), particularly for a large firm, as it requires notice to be placed in every application in which practitioner is named and notification of every client regarding suspension/exclusion of practitioner.

§11.28 is directed to incompetent and incapacitated practitioners and establishes proceedings to determine mental competence and capacity of practitioners, including substance abuse. § 11.28 (c) indicates that proceedings before a hearing officer will be initiated by a motion from the OED director or a practitioner. There is no indication of the threshold standard for bringing such a motion and whether such a motion must be based on information or a complaint. Clarification is required.

§11.28(d) deals with practitioners who have been declared mentally incompetent or have been involuntarily committed and the procedures used to have the practitioner cease practice. This section appears to be unnecessary as mentally incompetent and committed practitioners would be functionally unable to practice before PTO. Is this really a problem that needs to be addressed by the PTO?

§11.58?11.62

§11.58 (b) would require a suspended or excluded practitioner within 20 days of suspension or exclusion to file notices of withdrawal in pending patent and trademark applications etc., and every other matter pending before the Office. The practitioner would be required to notify all clients having business before the office of the discipline imposed and inability to act, and notify practitioner for all opposing parties having business before the Office (See page 69461, Fed. Reg./Vol. 68, No. 239). This proposed rule seems to contemplate that all practitioners are sole practitioners and does not seem to address the reality of situations where the practitioner is one of many in a law firm. It would be an outrageously unnecessary burden to file a paper in each case in which the practitioner's firm was of record and to notify all clients of the practitioner's firm, and to notify all practitioners of opposing parties of the firm, unrelated to the disciplined practitioner's involvement in the matters for which withdrawal or notice is to be provided.

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§11.58(b) furthermore would require the disciplined practitioner to file an affidavit within 30 days certifying that the practitioner has fully complied with the provisions of the order. Thirty days is too short a time period and ignores the reality that the order may have destroyed the practitioner's career and practice and that the practitioner may need to put food on the table for himself and his dependents. A 90 day period, extendible for good cause, would make much more sense and be less draconian.

§11.58(c) establishes a 30 day period for the disciplined practitioner to settle all his pending PTO matters, and if that were not possible, to advise his clients to make other arrangements. Once again, a 90 day extendible period should be stated, not only to provide for orderly disposition of pending matters, but to protect the interests of the clients who would be left high and dry by virtue of the draconian 30 day period.

Section 11.58(c)?(d)

Fed. Reg.Nol. 68, supra, at page 69462 requests comments on whether disciplined practitioners should be allowed to aid another practitioner. The answer is obviously yes, where the mandatory safeguards against direct contact with a client is maintained, and where the supervising practitioner is responsible for the work product of the disciplined practitioner. There is no confusion to a client where the disciplined practitioner has no contact with the client and his name is nowhere before the client. There is no detriment to the client where the supervising practitioner is responsible for the work product. The suspension or exclusion of a practitioner is likely to destroy his career and his practice. He should not be precluded for using his talents in all forms of patent/trademark work. On the contrary, the disciplined practitioner should be able to "work" in the same way an unregistered staff person or paralegal works, i.e., for hire and under close supervision of a registered practitioner.

Section 11.60 would place a "clear and convincing" burden of proof on a disciplined practitioner to support a petition for reinstatement. Thus, § 11.60 is consistent with §11.49 which would place a "clear and convincing" burden of proof on the PTO and on the practitioner. The "clear and convincing" burden on the practitioner is unnecessarily high, and should be reduced to a "preponderance of the evidence." This is not to suggest that OED should also have a "preponderance of the evidence" standard to impose a disciplinary action under §11.49. The higher "clear and convincing" burden of proof should be required of the PTO to impose a suspension or exclusion in the interest of fairness and due process, and in light of the tremendous taking of freedom and livelihood such an action entails, and in view of the personal hardship imposed on the disciplined practitioner.

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§11.104?11.804

§11.104(a)(2) would change the relationship between foreign associates and U.S. law firms that has existed for over 200 years. Under this clause, we would need the written and informed consent of the inventor or other client to conduct communications with that inventor or other client through the foreign attorney. If the client is the assignee corporation, then we would need informed consent from the corporation. However, in many cases, there is no assignment and for all cases it could be argued that the client is the inventor since the inventor appoints the attorney in the declaration. In those instances letters of informed consent would have to be received from each individual inventor and each individual patent application.

§11.105 fees ?? the Patent Office is taking upon themselves the determination of what is a reasonable fee by stating that "a practitioner's fee shall be reasonable". When taking on a new client we must indicate the basis of our fees and the fee must be separated between filing an application and prosecuting the application. Therefore, the Patent Office is taking upon themselves the task of being both the arbiter of how fees are structured and the arbiter of what is a reasonable fee.

§11.104(b) further puts the Patent Office into the business of being the arbiter of whether our communication with the client is sufficient to enable the client to make an informed decision regarding the practitioner's representation of the client in the matter. What experience does the Patent Office possess to enable them to be the arbiter of what is reasonable between an attorney and his client.

§11.107 indicates that a practitioner shall not represent a client ...if the representation of that client will be directly adverse to another client unless the practitioner reasonably believes the representation will not adversely affect the relationship with the other client. It goes on to say that even where the practitioner reasonably believes that the representation will not adversely affect the relationship with the other client, he still must get written informed consent from each client. Well, if you reasonably believe that your representation of one client will not be directly adverse to another client, under what circumstances do you get informed consent? It is a nonsequitor.

§11.107(b) again interferes with the foreign associate attorney relationship that has existed for the last 200 years. It says that a practitioner should not represent a client if the representation of that client may be materially limited by the practitioner's responsibility to a third party. If the third party is defined as the foreign associate, the foreign associate may very well materially limit the practitioner's ability to represent the client because the

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foreign associate has direct access to the client for direct discussions whereas the U.S. lawyer might come to some very different conclusions based on those same discussions if he were present. Not being present for the discussions, the practitioner necessarily is materially limited by the third party's interests.

§11.109(a) indicates that a practitioner cannot represent a client in the "same or substantially related matter" as the matter which it represented a former client. Does that mean that if we represent a client in say, the field of dyestuffs, and he becomes a former client, that we can never represent another client in the area of dyestuffs? Or does it mean that we are excluded only as to a particular dyestuff. Let's say that we are representing a client in the year 1995 in a dyestuff matter. That client changes firms, for various reasons, and we begin representing another client in dyestuffs. Five years later we write a patent application on a new type of dyestuff, different from any of the dyestuffs from which we were representing the first client, but wherein it becomes clear that the target of the patent would be the first client. There is no way that the new client would permit us to get a written consent from the former client because he would not want the former client to even know that he were working in that area, and it is probable that the former client would not give consent. They would prefer to hamper their competitor.

Should not the practitioner be barred only where he is using information obtained from the former client, or if he were handling exactly the same dyestuff as he handled for the former client? Making this conflict of interest a Patent Office rule instead of a guidance or instead of leaving it to the Bar Association where it has been left for the last 250 years, seems to make more sense. Making it into a rule creates the danger of upsetting the entire ability of a lawyer to leave one client and to take on a new client.

§11.109(c)(1) provides the exclusion that the practitioner can represent a new client where the information obtained from the former client has become generally known. Since no such exclusion appears in section 11.109(b) then it means that even if the information acquired by the practitioner has become public knowledge, the practitioner is still barred. The section is very poorly drafted.

§11.110 suffers the same problem of trying to define what is meant by the "same or substantially the same." It is unduly vague and puts the Patent Office into the position of being the arbiter of when there is a conflict of interest rather than having the courts make that determination.

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§11.117(a) would prohibit an attorney from selling his practice to a larger firm but continuing to practice with that firm as a salaried employee. What possible business does the Patent Office have in being an arbiter of the relationship of one attorney to another which has no affect whatsoever on the Patent Office?

§11.504(c) indicates that a practitioner shall not form a partnership with a nonpractitioner if any of the activities of the partnership consist in the practice of law before the Office. That means that all partners of any firm that does patent work must all be registered to practice before the Patent Office. The fact that one partner is only engaged in litigation matters and another partner is only involved in prosecution matters, means that the partnership must be dismantled.

§11.504(d) ignores the reality that the foreign associate regularly recommends, employs and pays the practitioner to render legal services and he directs and regulates the arguments made to the Patent Office. The practitioner certainly has some degree of freedom of action, depending upon the client, but this relationship would be a violation of this rule.

11.504(e) also prohibits the formation of a professional corporation between a practitioner, meaning someone who is permitted to practice before the Patent Office, and a non?practitioner, meaning someone who is not permitted to practice before the Patent Office, but might be permitted to argue in District Court. It would render existing relationships in virtually all but small law firms in violation of the rule. No justification is offered, and none exists. This provision should be reconsidered.

§11.703(a) uses "overreaching" as the last word in that section. The only overreaching here is that of the Patent Office in promulgating these rules.

§11.703(c) requires that when a practitioners discuss prospective provision of services with a prospective client, it is necessary always to use the word "advertising material." That is burdensome and entirely unnecessary in most professional relationships. We can see that there could be a difference between a practitioner contacting an unsophisticated individual as a prospective client compared with contacting a sophisticated company like Dupont. In the latter instance, this section makes no sense.

§11.704(b) discusses the fact that a registered practitioner who is an attorney may use the designation "patent attorney." This rule should be broadened to state that only registered practitioners are permitted to use the term "intellectual property lawyer," the registration permits the attorney to practice all forms of IP law.

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§11.704(e) establishes the Patent Office as an arbiter of the practice of admiralty law. Obviously a mistake.

§11.803(d)(2) makes it clear that when a court indicates that an attorney has committed inequitable conduct, it is the intention of the Patent Office to remove him immediately from continuing to practice even while the matter may be on appeal. This is inherently unfair and violates due process.

§11.804 indicates that it is professional misconduct to engage in disreputable or gross misconduct. Terms such as "disreputable" and "gross misconduct" are completely vague. Furthermore, there is not context or limits stated. Is the rule limited to disreputable or gross misconduct concerning Patent Office affairs or any matter? It appears that it means any matter since 11.806(b)(2) makes it a violation of the rule to require or demand sexual relations with an employee incident to or as a condition of employment. While no one disagrees with that provision, we disagree that it has anything to do with the Patent Office or whether the Patent Office has any business getting into labor relations.

§11.804(h)(4) again makes it clear that we can no longer hire former patent examiners. The former government employee is even barred from acting in an administrative capacity in the firm.

The Patent Office yearly education and examination requirements does not apply to attorneys admitted as a matter of reciprocity of a foreign patent office. What a nice way to export our jobs to foreign attorneys.

Very truly yours,

OBLON, SPIVAK, McCLELLAND, MAIER & NEUSTADT, P.C.

Eckhard H. Kuesters

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