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Dana Andrew Alden


February 5, 2004 VIA EXPRESS MAIL# EV386332385US
James A. Toupin, Esq.
Mail Stop OED?Ethics Rules
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, Virginia 22313?1450

Re: Federal Register / Vol. 68, No. 239/ Friday, December 12, 2003 / Proposed Rules

Dear Mr. Toupin

I write this letter to provide comment on the above proposed rules.

I respectfully submit that there is no need for continuing legal education or for the payment of annual fees. There is no indication that the initial testing and registration is inadequate in assuring the professional competence of patent attorneys. The relatively low passing rates when compared to state bars suggests that initial testing is adequate. Moreover, the MPEP is not changed so dramatically year to year, thus necessitating continuing education. Patent practitioners rend to be sufficiently current to be competent.

Additionally, patent practice before the USPTO is highly focused, unlike the broad areas encompassed by state common law (e.g. contracts & torts). As a result, attorneys handling matters within these broad areas of common law need to be current on developing case law and new appellate decisions. The number of appellate court decisions in these broad areas justifies some continuing education. The number of appellate court cases involving patent examining procedure are few and far between; thus, the need for continuing education is greatly diminished.

Finally, continuing education in Patent Office procedure simply would not translate into better legal service to the public. Patent applicants are more concerned with claim scope and less concerned with the manner of claim amendments and other procedural issues. Consequently, continuing education on Patent Office procedure will not enhance the quality of legal services rendered to the public in any meaningful way.

There is no need for annual fees. States impose annual fees because they must police many attorneys practicing in many areas of law. There axe only 28,000 patent practitioners, only 16,000 of whom are lawyers. The discrete area of patent law and the relatively small number of practitioners do not impose an expensive burden on the PTO to police the profession. States must

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United States Patent and Trademark Office
February 5, 2004
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fund the investigation, prosecution, and adjudication of thousands of disciplinary cases. In contrast, the USPTO has very few disciplinary cases in comparison. Indeed, OED records indicate only one disciplinary action in 2003 for a relatively minor transgression (poor telephone etiquette). The action did not consume prosecutorial resources because the facts were the subject of stipulation and the reprimand agreed upon. Finally, the matter did not concern the patent area, but rather the trademark area. See In re Tassan, Proceeding No, D23?10.

Rather than imposing fees for discipline and continuing education requirements, the USPTO ought to work at reducing the time between initial application filing and the first office action.

Very truly yours

Dana Andrew Alden


United States Patent and Trademark Office
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