Moatz, Harry
From: Mark. Costello@...
Sent: Tuesday, February 10, 2004 4:10 PM
To: ethicsrules comments
Subject: Changes to Representation of Others Before the United States Patent and Trademark
Office

To: ethicsrules.comments@uspto.gov
Subject: Changes to Representation of Others Before the United States
Patent and Trademark Office
Attention: Harry I. Moatz

The United States Patent and Trademark Office has proposed new rules for Representation of Others Before the United States Patent and Trademark
Office, published in the Federal Register on December 12, 2003 (68 Fed. Reg. 69442). Xerox Corporation desires to comment on one of the proposed new rules in Subparts A - C of 37 C.F.R. Part 11. Xerox Corporation is a U.S.-based Fortune 500 company with headquarters in Stamford, Connecticut, and facilities at locations in the United States and in other countries. Xerox Corporation operates research and technology
centers in the United States (including Webster (Rochester), New York, Palo Alto, California, and E1 Segundo, California), Canada and Europe. People at these research and technology centers conduct work in color science, computing, digital imaging, work practices, electromechanical systems, novel
materials and other disciplines connected to Xerox's expertise in printing and document management. The company consistently builds its inventions
into business by embedding them in superior Xerox products and solutions, using them as the foundation of new businesses, or licensing or selling them
to other entities. In 2003, Xerox (including its PARC subsidiary) received 628 United States patents. Xerox consistently ranks among the top 30 organizations receiving United States patents. Xerox employs approximately 30 patent practitioners in its in-house Intellectual Property Law Department, and engages the services of several external lawyers and law firms.

Proposed Rule 11.13(g)(4) - Approved Continuing Education Providers or Sponsors Xerox Corporation submits that Proposed Rule 11.13(g)(4), which specifically bars law firms, professional corporations, and corporate law departments from becoming approved sponsors of USPTO-approved continuing education programs, is unduly restrictive . Law firms and corporate law departments are some of the best-suited potential providers of relevant, effective continuing education, particularly for their members and clients. The law firm or corporate law department can tailor their programs to specifically address the application of the law and rules to the particular environment of that law firm or corporate law department, or to a particular client. Such particular application increases the likelihood that the new rules and USPTO procedures will be uniformly and correctly implemented at the law firm or corporation. To support effective application of rules and procedures in law firms and corporate law departments, the USPTO should encourage those law firms and corporate law departments to develop internal continuing education programs. Therefore, Xerox Corporation urges the USPTO to permit law firms and corporate law departments to become approved sponsors of USPTO-approved continuing education programs by removing the restriction of Proposed Rule 11.13(g)(4).

Conclusion Xerox Corporation appreciates this opportunity to comment on proposed rules.
Mark Costello
General Patent Counsel
Xerox Corporation

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