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Darrell E. Hollis

Proposed Rules: Changes to Representation of Others before the U.S. Patent and Tradema... Page 1 of 4

Moatz, Harry
From: . Darrell.Hollis@...
Sent: Thursday, February 05, 2004 4:58 PM
To: ethicsrules comments
Subject: Proposed Rules: Changes to Representation of Others before the U.S. Patent and Trademark
Office, Docket No.: 2002-C-005

Dear Sir:

Please consider the following comments which are provided to you in my capacity as a private citizen. Nothing contained herein represents the views of the U.S. Navy.

Section 11.19(c), Misconduct
The terminology is in error

Section 11.19(c) limits grounds for misconduct for discipline of practitioners to "acts or omissions" of a practitioner. Subsections (1)(i) and (1)(ii) of 11.19(c) are inconsistent with this basic definition of misconduct since neither "conviction of a crime", nor "discipline imposed by another jurisdiction" are acts or omissions by a practitioner'', but rather are acts performed by another entity, i.e., a court. They may provide proof of those `hcts or omissions", but are not, per se, acts or omissions by the practitioner, and thus are not,per se, ,, misconduct.

Sections 11.19(c)(1)(i) and (ii) should recite as grounds for discipline `conduct that results in conviction of a crime" and "Conduct that results in discipline imposed in another jurisdiction", respectively. Such correction would bring it in conformity with the subject matter of Section 11.19(c) and its other subsections (iii), (iv), and (v) which relate to misconduct of the practitioner.

Section 11.24, Discipline Based on Reciprocal Discipline Treating patent attorneys differently tom patent agents, the proposed Rule is discriminatory and possibly in violation of Constitutional prohibitions.

Recognizing that the OED would like to expeditiously remove a patent attorney who has been disciplined by another jurisdiction in a reciprocal manner, (as most other bar associations do), it is respectfully urged that OED cannot avail itself of such procedures because they are in violation of the due process provisions of the U.S. Constitution in that they do not treat all practitioners equally.

The USPTO is not a bar association that limit practice to attorneys; it also registers non -
attorney agents as practitioners. These agents are not subject to disciplinary proceedings by
a bar association that may result in disbarment or suspension. As such, patent agents are not
2/ 10/04

Proposed Rules: Changes to Representation of Others before the U.S. Patent and Tradema... Page 2 of 4

subject to the very harsh provisions of new Section 11.24.

It is insufficient to respond that attorneys should be held to a higher standard of conduct in order to disregard the equal treatment provisions of the Constitution.

The appropriate reciprocal action that OED should take in processing an attorney disbarred or suspended by a court would be to preclude him from holding himself out as a "patent attorney", but still permit him to practice as a "patent agenf'until his misconduct is investigated and proven according to the other provisions of the Rules of Professional Conduct, as would the case with an agent.

To permit Section 11.24 to remain creates a situation where a Patent Attorney and Patent Agent, acting identically in violation of the Rules of Professional Conduct, would be treated differently, as follows:

First, in the case of an attorney. The attorney is suspended or disbarred by

court for a violation of its Rules of Conduct. Under section 11.24, the attorney would be automatically suspended on an interim basis, and bears the burden of demonstrating "by clear and convincing evidence" why identical discipline should not be imposed by proving one of the four elements set forth 11.24(c)(1)(i) through 11.24(c)(1)(iv) are present - a very formidable, if not impossible, task.

In the case of the agent The agent, who acted identically as the attorney in his or her misconduct, is not subject to bar disciplinary proceedings, and can avail himself or herself of all the provisions of the Rules 11.32-11.57, such as the ability to introduce evidence, take testimony, have the case reviewed, and not be subject to any disciplinary penalties until he or she has exhausted all of his or her administrative remedies and appeals. More importantly, Section 11.49 places the burden of proof on the OED Director of proving the misconduct of the agent "by clear and convincing evidence".

An even more drastic and inequitable result may occur, as follows:

Second, underJohnson v. SEC, 87 F. 3d 484 (D.C. Cir. 1996), (cited by OED at F.R. at Page 69485, third column, bottom) formal action must be taken to discipline a practitioner within five years of the actions of the practitioner pursuant to 28 U.S.C. Section 2462"Time for commencing proceedings:

Except as otherwise provided by Act of Congress, an action, suit or proceeding for the enforcement of any civil fine, penalty, or forfeiture, pecuniary or otherwise, shall not be entertained unless commenced within five years from the date when the claim first accrued'."

In the following example, the act of misconduct took place more than five years before OED initiates an investigation of the misconduct, but within five years of disbarment of the attorney by a bar association:


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In the case of the attorney Should the OED urge that the disbarment by the bar association against the attorney created a new accrual date for the purposes of calculating when the five year statute of limitations begins to run, it would bring a Section 11.24 disbarment action against the attorney for misconduct committed more than five years before the disciplinary action was commenced by OED, resulting in the disbarment of the attorney.

In the case of the agent. The OED would be precluded from initiating any disciplinary action whatsoever against the agent for the identical misconduct, since five years had elapsed from the date of the misconduct.

In view of the above, section 11.24 should be removed as being discriminatory and in violation of equal treatment provisions of the U.S. Constitution.

Furthermore, even if this was not considered unequal treatment under the Constitution, a rule such as this would make the USPTO seem to be inequitable in its treatment of its practitioners. There is no reason why the single standard, that"acts or omissions by a practitioner . . ..violating the imperative USPTO Rules of Professional Conduct, or the oath taken by the practitioner shall constitute misconduct and shall be the grounds for discipline" should be applied unequally, depending upon whether the practitioner is an attorney or an agent. Misconduct is misconduct, regardless of the category of practice of the practitioner. For the Office to hold otherwise will hold the Office up to ridicule.

Section 11.803, Reporting Professional Misconduct Part (f)(4) thereof is inappropriate

Section 11.803 is entitled Reporting Professional Misconduct
Sections (a)-(e) relate to such "reporting" requirements.
Section (f) reads as follows: Conduct that constitutes a violation of paragraphs (a) to (e) of
this section includes, but is not limited to:

Sub-Section (f)(4) reads, in pertinent part, as follows:Being suspended, disbarred as an attorney... by any duly constituted authority...

Section (f)(4) does not discuss or relate to any"reporting" requirements. Rather it relates to the actual suspension or disbarment of an attorney, per se, by a constituted authority.

1. Isn't this section duplicative of proposed Section 11.24?
2. Why is this provision in the "reporting" requirements?
3. How does being suspended or disbarred (`by a constituted authority') relate to "misconduct of a practitioner"? Let alone as part of the reporting requirements of a practitioner? At the very least, the language should be amended to read"Misconduct that results in" should be inserted before of "Being" in Section (f)(4).


Proposed Rules: Changes to Representation of Others before the U.S. Patent and Tradema... Page 4 of 4

Section 11.803, Reporting Professional Misconduct Part (fi(1) is illogical and superfluous

Section (f) reads as follows: Conduct that constitutes a violation of paragraphs (a) to
(e) of this section includes, but is not limited to:

Sub-Section (1) reads as follows: Failing to comply with the provisions of paragraphs (d) or
(e) of this Section.

1. What does this sub-section add?
2. Why is it limited to (d) and (e)? None of the other subsections of 11.803 (f) relate to
reporting requirements of Section 11.803.

Section 11.803, Reporting Professional Misconduct Part (fi (2) is wrong

Subsection (f)(2) reads, in pertinent part, as follows: Willfully refusing to reveal or report knowledge to the OED Director contrary to... 10.25(b). (Emphasis added).

With all due respects, 37 CFR Part 10 is removed by this proposed revision.

Error: At Table 3 at Page 69510 of the F.R., old Section 10.23 (c) (18) is supposedly the source for new section 11.803(f)(4). Shouldn't it be Section 10.23(c)(5)?

Very truly yours,

Darrell E. Hollis

United States Patent and Trademark Office
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