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Gary M. Cohen

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Moatz, Harry
From: Gmciplaw@
Sent: Tuesday, February 10, 2004 4:04 PIVI
To: ethicsrules comments
Subject: Comments on Proposed Rulemaking

RE: Changes to Representation of Others Before the United States Patent and Trademark Office (Docket No. 2002-C-005; RIN 0651-AB55)

Director of the United States Patent and Trademark Office, Arlington, VA


I would like to submit the following comments on the above-identified Proposed Rulemaking, and would appreciate your consideration of them.

First, and foremost, I question the true need for the provisions of Subpart B of Part 11 (Sections 11.4 through 11.18). lam also unconvinced that these provisions are fair to those seeking to practice before the Office, or to those already registered to practice before the Office. Specific examples are discussed below, however, the overall tone of these provisions, in my view, smacks of heavy-handed ness.

There is constant reference to the inability of practitioners to keep up with, and properly follow Office rules, and the need for the Office to handle an excess number of petitions, and other papers, which are in some cases improperly filed. Certainly, it is in nobody's best interest to require the Office to process incorrectly filed, or unnecessary documents. With all due respect, however, may I suggest that the Office has in many ways created the very problems it is now trying to solve.

The Office is asking practitioners to keep current with an endless barrage of sizable rules packages and revisions, some of which have been changed before the original versions were ever incorporated into the Office website (for example, the listings of CFR and the MPEP). I have, on more than one occasion, consulted the Office website to determine the proper rule(s) to follow, only to find stale rules giving me incorrect guidance. I submit it is unreasonable to expect the practitioner to keep current with rules that the Office, itself, cannot keep current with. This is particularly so when considering that current rules packages are often not even announced in the Official Gazette more than a few days before they are to become effective.

Also to consider is that while the rules have been revised to, in theory, make it easier for the Office to carry out its functions, this has generally been done at the expense of its customers. Rules which were convenient for customers have in many cases been deleted in favor of rules that are onerous to the customer. Is there any surprise that resistance has been encountered?

As a final consideration, what would appear to be excessive, and at times incorrect, filings could in general be reduced if the documentation issued by the Office contained fewer errors requiring correction. A significant number of the actions I have received lately, both formal and substantive, have some form of defect or missing paper calling for corrective action and/or the filing of a corrective paper. Such filings could be eliminated if the issued action was correct and complete. Further reductions could be achieved by providing convenient procedures for enabling the correction of such errors, rather than the current series of roadblocks to the convenient correction of even the simplest of errors.

That being said, the following are some specific comments on the Rulemaking which has been proposed:

1. I would oppose any and all provisions calling for a recertification of active (registered) patent attorneys and agents. This would specifically include the testing provisions of Paragraph 11.13(a)(1)(i). While the need for maintaining one's proficiency in practice before the Office is recognized, and desirable, recertification is an unduly extreme and inappropriate means for accomplishing such a goal. To my knowledge, while a number of states require some form of continuing legal education, I am not aware of any requiring recertification. The stated goal


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of keeping practitioners current can more readily be accomplished by an appropriately implemented continuing education program, one which provides for programs on a wide variety of Office-related topics, not merely to specific rules packages targeted by the Office.

2. I would oppose the exclusive requirement for the pre-approval of sponsors for continuing education programs (Paragraph 11.13(c)) and sponsored continuing education programs (Paragraph 11.13(f)). While pre-approval may be preferred, no additional work is required by the timing of the request for approval and, subsequent to a program, the content of the event is clearly ascertainable. Provisions should be made for post-approval in appropriate circumstances to avoid hardships.

3. I would oppose the provisions of Paragraph 11.13(g)(4), excluding law firms, professional corporations and corporate law departments from becoming approved sponsors, provided their programs meet the requirements established for other program providers and provided their programs are made available to outside practitioners. The type of provider should have no effect on the quality of the program provided.

4. I would oppose the elimination of provisions for regrading examinations in Paragraph 11.7, at least to the extent that questions in the examination should continue to be subject to review for correctness, readability and fairness. The use of Office Model Answers does not assure correctness, readability and fairness, only uniformity. Also, it is only reasonable and fair to require the Office to regrade/review questions that it has developed. Limited access to the questions should be allowed for such purposes.

5. Regarding the payment of an annual fee (Paragraph 11.8), I would propose the addition of a requirement that the Office provide prior notice to all practitioners of the due date for payment of the annual fee, rather than simply relying on quarterly groupings by alphabet. It is also recommended that this, or a separate notice include a statement indicating the status of the practitioner's compliance with any continuing education requirements. If the Office is to institute such a program, and impose a fee for its operation, it is at least incumbent upon the Office to notify those subject to its provisions.

6. I would oppose the provisions of Paragraph 11.16. The provisions are open-ended, stating no limitations on the information that can be requested, and failing to give any indication of the specific purpose(s) for which such information can be requested. Consequently, as proposed, such provisions are overreaching in scope.

7. I would oppose the provisions of Paragraphs 11.18(b) through (d), insofar as such provisions can be used to sanction practitioners for filing documents that the Office might, in its view, consider to be unreasonable and/or frivolous. This is severely chilling to the practitioner's ability to "zealously and diligently" represent a client before the Office, which conflicts with the requirements of Proposed Paragraph 11.103(a). This also has the potential for unreasonable and/or arbitrary application by the Office.

8. I would also oppose the requirement (Paragraph 11.104(a)(2)) that communications can be accepted from a foreign associate only in situations where the foreign associate has "written and informed consent of said inventor or other client". This has a significant potential for conflicting with the practices and/or practice requirements/rules established for the foreign associates in their respective countries. This would also conflict with the true nature of such relationships, which in practice extend between the practitioner and the foreign associate. The foreign inventor or other client is relying on the foreign associate to select an associate for the United States, and is often not in a position to directly interact with the selected associate, or to be in direct control of the United States prosecution. As examples, there are the limitations of language, and widely varying laws and practices, which the foreign associate is far better able to accommodate.

Consideration of the foregoing is respectfully requested.

Respectfully submitted,

Gary M. Cohen, Esq. Reg. No. 28,834 Strafford Building Number Three 125 Strafford Avenue, Suite 300 Wayne, PA 19087-3318 Phone: +1 610 975-4430 Facsimile: +1 610 975-4436 e-mail: gmciplaw@


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