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Martin Hay

Moatz, Harry

From: Moatz, Harry
Sent: Friday, January 09, 2004 12:08 PM
To: ethicsrules comments
Subject: FW Response to Notification of Proposed Changes Relating to Registered Practitioners.

----Original Message ----
From: Quinn, Brigid Sent: Friday, January 09, 2004 10:58 AM To: Moatz, Harry Subject: FW: Response to Notification of Proposed Changes Relating to Registered Practitioners.

For you.

Brigid Quinn
Deputy Director
Office of Public Affairs
U.S. Patent and Trademark Office
703/308-7427 (voice)
703/308-5258 (fax)

----Original Message ----
From: MartinHay@martin-a-hay....
Sent: Friday, January 09, 2004 10:08 AM
To: Quinn, Brigid
Subject: Response to Notification of Proposed Changes Relating to Registered


Please could you forward this response to the appropriate department seeking comments on the proposed changes regarding registration to practice as patent attorneys. I failed trying to send it to the e-mail address in the publsihe.d notice. Many thanks, Martin HAy

Dear Sirs, I would like to comment on the rules governing the right to represent others before the USPTO. I am registered and practice as a US Patent Agent, Registration No, 39459. I am also registered and practice as a U.K. Chartered Patent Attorney and a European Patent Attorney. My career in the practice of international patent law stretches for over 20 years (longer if you count my science masters degree), so that some of the pharmaceutical patents I wrote at the start, on drugs now taken by millions of patients, are expiring. Over the past few years, Patent Offices around the world have been struggling to cope with an ever-increasing workload. This has caused increasing delays in the processing of applications. It has also prompted management to seek ways of improving efficiency, particularly through the adoption of IT and new procedures. There have also been major changes in Patent Laws around the world, precipitated by GATT TRIPS. Professional representatives (those who make their living representing others before Patent Offices) have been forced to increase their productivity, while at the same time keeping abreast of advances in science and technology in their areas of practice, learning all of the new procedures adopted by Patent Offices and learning all of the new Patent Laws. We have seen tremendous progress in the harmonization of international patent laws and practice, and growing co-operation between the major Patent Offices of the World. For me personally, this has been of great benefit, because I have been able to use the PCT and then practice before the two largest Patent Offices covering over 80s of the world market

for pharmaceuticals. I can work for a company in India in the morning, and another in San Francisco in the afternoon. For research-based industries, like the pharmaceutical industry, the benefits of patent harmonisation are huge. As I mature, I find it more and more difficult to assimilate all of the information I need to learn and remember in order to be able to practice. Perhaps this is due to normal aging, but I think not. The information I find most difficult to assimilate relates to changes in procedural law, not in science or technology, substantive patent law, or how to identify inventions and draft applications for global fling. Yet it is the ability to identify inventions and draft applications for global filing that is by far the most important skill to maintain. I hope this next comment will not cause too much offence, but as a naturalised US citizen I now feel I can say it: the quality of drafting and knowledge of global substantive patent laws of US practitioners does not compare well with that of European practitioners. This seriously disadvantages US industry in the global market place. I think it is a direct consequence of having only the USPTO examine for competence to practice. Examination for competence to practice should be the responsibility of an independent body made up of USPTO staff and experienced professional representatives. The examination should, above all else, test candidates ability to identify inventions, to draft applications to global standards, to respond to substantive official actions from all major patent offices, to advise on the interpetation of patents and their validity, and to advise clients on the global patent positions arising in the commonly encountered business situations. The present USPTO examination places far to much emphasis on formalities. Professional representatives, like patent office examiners, should be spending a minimal amount of time dealing with formalities. As Patent Offices struggle to increase the productivity of their Examiners, there is a real danger that they will try to force more and more formalities work onto Professional Representatives. After all, large organizations in general find it very difficult to avoid creating procedures that do not suit their adminstrative convenience. For Patent Offices to do this would be quite wrong. A vibrant, productive patent system requires Examiners and Professional Representatives that are highly skilled in substantive global patent laws and practice and in the science and technology in which they specialise, and that have a good understanding of the needs of the industries that they support. Formalities associated with the filing and prosecuting of patent applications need to be simplified to the point when, after a short learning period, they can be handled without conscious control, like walking, riding a bicycle or driving a car. I urge the USPTO to rise to the challenge: to raise the standard of substantive practice by Professional Representatives and Examiners alike, and to simplify formalities so that they can be handled as easily as riding a bicycle. I further urge the USPTO to avoid organizing its affairs to suit its own convenience, and to keep its focus on its overall mission, to protect the interests of US commerce and industry in the global marketplace. Martin Hay

United States Patent and Trademark Office
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