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Moatz, Harry
From: TBAKER@...
Sent: Tuesday, February 10, 2004 4:04 PM
To: ethicsrules comments
Cc: JKULBASKI@...
Subject: Comments

To whom it may concern:

Please see the attached document.

W. Todd Baker
Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
1940 Duke Street
Alexandria, VA 22314
Tel: 703-412-6383
Fax:703-413-2220
Email: tbaker@...
This email may contain confidential and privileged information. If you are not an intended recipient of this email, please notify the sender and delete the email.
2/10/04

February 10, 2004
SPIVAK
McClelland
NEUSTADZ'
ATTORNEYS AT LAW

JAMES J. KULBASKI
(703)413-3000
JKULBASKI@...
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 Subpart B.

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.'
Subpart B Comments and Suggestions
Proposed rule 11.12(a) provides that "[a]11 practitioners ... shall complete a continuing education program as required from time-to-time by the USPTO Director ....

' Oblon Spivak would like to thank W. Todd Baker for compiling this letter of suggestions and comments.
1940 DUKE STREET I ALEXANDRIA, VIRGINIA 223141 U.S.A.
TELEPHONE: 703-413-30001 FACSIMILE: 703-413-22201 WWW.OBLON.COM

Director of the United States Patent-and Trademark Office
Notice of Proposed Rulemaking
Page 2

The USPTO Director will announce each fiscal year whether an education program will be required, and the dates for the program. No more than one mandatory continuing education program would be required each fiscal year and the requirement may be as infrequent as once every three years." Further, proposed rule 11.13(a) provides that "a continuing education program is eligible to satisfy the mandatory continuing education requirements ... if either: (i) the Office provides the program via Web-delivery..., or (ii) a USPTO pre-approved sponsor offers a course pre-approved by the OED Director ...."

Oblon Spivak first notes that it is not opposed to a continuing education program in principle. However, Oblon Spivak is opposed to the proposed manner of implementation of the continuing education program. Oblon Spivak's primary concern with the proposed continuing education program is its express exclusion of law firms, professional corporations, and corporate law departments as approved sponsors. The discussion of the proposed continuing education program at page 69453, column 2, lines 9-13 provides that "[i]t is in the interest of the practitioner community, applicants and the efficiency of the USPTO that practitioners keep their legal knowledge current." Oblon Spivak agrees. However, consistent with the practices of many state bars including Virginia's state bar, Oblon Spivak strongly believes that the practitioners themselves are well suited and highly motivated through formal firm organized training programs to educate their fellow practioners on current legal developments in order to provide the best service possible to their clients. A formal training session on patent practice sponsored by a law firm which is approved for continuing legal education by a state bar association should also be acceptable to the PTO. The proposed rules would exclude such a program, even if it is of high quality, solely because it is sponsored by a law firm.

Oblon Spivak recognizes the benefits of the PTO emphasizing a particular aspect of patent practice in view of its unique perspective. However, Oblon Spivak is concerned with the apparent distrust the PTO has shown in the ability of law firms, professional corporations, etc. to play a role in the proposed required continuing education process. Further, Oblon Spivak believes that a more structured continuing education program having a predefined commitment per year in terms of credit hours would help further the goals of the proposed continuing education program by requiring practitioners to regularly seek additional education. As the program is proposed, it appears to Oblon Spivak that proposed continuing education program has the potential to be an indoctrination tool for the PTO to use on an as needed basis solely determined by the PTO, and not a "continuing" education program.

The Virginia Bar and other state bar organizations do not require pre-approval for CLE programs, but approval can be obtained after the program is completed. Of course,

Director of the United States Patent and Trademark Office Notice of Proposed Rulemaking Page 3
the practitioner runs the risk of the continuing education program not being approved, but this is a risk that a practitioner should be able to take, if the practitioner so desires, and a risk that the practitioner takes when attending many CLE programs.

Finally, with regard to the proposed continuing education program, Oblon Spivak points out that other than excluding law firms, professional corporations, and corporate law departments as approved sponsors, the proposed rules do not define the pre-approval process (a) for selecting sponsors or (b) pre-approving courses. As such, Oblon Spivak requests that the proposed rules be reformulated to provide clarity and avoid future abuses.
Very truly yours,
OBLON, SPIVAK, McCELLAND, MAIER& NEUSTADT P.C.
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