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Thomas Frost

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Moatz, Harry
~; From: AttyFrost@...
Sent: Tuesday, February 10, 2004 2:39 PM
To: ethicsrules comments
Subject: Proposed rule changes

February 10, 2004

Mr. Harry 1. Moatz
OED Director
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450

RE: Changes to Representation of Others Before the United States Patent and Trademark Office; 68 Federal Register 69442 (December 12, 2003)

Dear Mr. Moatz:

Thank you for the opportunity to provide comments concerning proposed rule changes. While the goal of clarifying ethical standards is laudable, the rule changes appear to me to be overreaching in that the proposed rules in general attempt to govern matters which do not fall within the scope of powers granted to the USPTO by Congress in 35 U.S.C. 2. Additionally, compliance with many of the rules require registered agents to engage in the unauthorized practice of law.


The comments indicate that the phrase "full disclosure" is defined to deal with potential and actual conflicts of interest. "Full disclosure" as defined in 11.1 is overly broad, and not only seeks to address assumed conflicts of interest, but also places a practitioner in the role of financial advisor, contract interpreter and risk assessor. The definition is inherently flawed because such essential terms as "transaction", "detailed explanation" and "foreseeably occur" are not clearly defined. One is left guessing as to the extent and nature of advice required by full disclosure.

Advising as to the nature of transactions, including status of parties and liabilities of same, is the practice of law. Thus, agents are required, via full disclosure, to engage in the unauthorized practice of law. Essentially, either patent agents violate the rules, or they go out of business.

Having a standard that a practitioner must advise of potential and actual conflicts is sufficient without the broad nature of "full disclosure" as written.


35 U.S.C. 2(b)(2)(D) grants specific powers to the USPTO to govern the conduct of representatives of parties before the Office. The scope of the representation is "the presentation or prosecution of their applications or other business before the Office."


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Since only Congress has the authority to change the statute, 11.5(b) is an attempt to expand the power of the USPTO without Congressional approval. In the comments to the proposed rule changes the Sperry decision is misinterpreted, and seems to imply that Sperry allows a judicial expansion of USPTO authority. The Supreme Court's ruling was based upon the Supremacy Clause, and stated that Florida could not prohibit a patent agent from appearing before the Patent Office because the practice was authorized by statute. The issue was whether the agent was engaging in the unauthorized practice of law, not the scope of the authority of the USPTO. It does not follow that because an agent is engaged in the "authorized" practice of law (per the Supremacy Clause) that such activity falls within the authority of the Office of Enrollment and Discipline.

The proposed broad definition of practice may be similar to the definition of "practice" adopted by the Internal Revenue Service, but the Internal Revenue Service was given much broader authority to define practice in 31 U.S.C. 330 than the USPTO was granted by Congress in 35 U.S.C. 2.

The position of the USPTO in the past has been that opinions of patentability, and other pre-application matters, were not "practice before the Office." That is the correct position consistent with 35 U.S.C. 2, and any change beyond the clear language of that section requires Congress to act. The proposed 11.5 is an attempt to micromanage law firms and other practitioners because of certain perceived evils in the most egregious cases. 10.5 should remain as written.

11.16- Financial Books and Records

Most, if not all, state bar governing bodies provide that a subpoena be issued to an attorney prior to requiring the production of bank records. Bank records are confidential, privileged matter. The examination power is unlimited and does not even require an open investigation concerning the practitioner. It is evident that no investigation is needed because of the location of 11.16 in Subpart B, and not in Subpart C.

In order to be recognized to practice before the USPTO, practitioners are required in 11.16 to agree to divulge privileged information. Not only is this a violation of state bar rules, but ethical rules in general.


Thomas Frost, Esquire
6600 4th Street North, Ste. 102
St. Petersburg, FL 33702

United States Patent and Trademark Office
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