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January 22, 2004
JAN 2 7 2004
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
OFFICE OF ENROLLMENT
AND DISCIPLINE
RE: Comment on Notice of Proposed Rulemaking, Rule Sections 11.12 and 11.13
Dear Mr. Moatz:
We take this opportunity to timely 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 Webdelivered program with examination questions or attendance at a PTO-approved continuing education program. It is unclear from the Notice and the proposed Rules, specifically proposed Rules 11.12 and 11.13, whether a PTO-approved continuing education program would entail an examination.

We do not oppose a requirement for continuing education for patent practitioners that is similar to the current requirements of most state bars for legal practitioners. In fact, the goal of requiring patent practitioners to obtain continuing education credit that is accepted by most state bar organizations, as stated in the Notice, is commendable. Many active practitioners, including all of us, already attend continuing legal education programs that are patent-related to satisfy our state bar requirements. We would support requiring that a portion of the state-mandated CLE hours be patent-related.

However, requiring an examination in conjunction with any continuing education activities would be an onerous 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, such as all of the patent practitioners in our firm, up-to-date on current patent laws in order to competently

Harry I. Moatz 2 January 22, 2004

represent our clients. Should an additional requirement be instituted mandating an examination, time over and above what is already devoted to maintaining current knowledge of the law would 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 as part of any continuing education requirement would be a significant burden upon active practitioners and our clients.

Furthermore, the Notice states that the continuing education requirement is modeled after the state systems for attorneys. To our knowledge, no state requires an examination as part of its continuing education requirement once an attorney is admitted to practice. Thus, any examination requirement lacks a basis in the systems after which the continuing education proposal is modeled. Such an unprecedented, retroactive requirement would effectively revoke a practitioner's duly-obtained license to practice without cause.

Therefore, it is our 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.

Very truly yours,

John P. Murtaugh, Reg. No. 34226