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Kenneth E. Leeds

Dear sirs:

In response to the USPTO's call for comments concerning the proposed ethics rules published at 68 FR 69442, I have the following comments.

General Comments

The proposed rules are a bad idea for several reasons.

1. All areas of law tend to become unmanageably complex. The wise legislator tries to minimize unwarranted complexity and obfuscation. The mere fact that this proposal takes up 122 pages from the Federal Register suffices to show that it is a bad idea.

2. Rules should not be enacted unless one seeks to solve an existing problem. Much of this proposed legislation clearly addresses problems that do not exist. Query: Regarding proposed rule 11.806, in the entire history of the USPTO has anyone ever forced an inventor to have sex in return for patent legal services?

3. It seems that the USPTO has decided to enact the ABA rules. The proposal states that "Forty-two of the bars have adopted the Model Rules of Professional Conduct of the American Bar Association or a modification thereof...." 68 FR 69442. The largest bar association is California's, and California does not use the ABA rules. Rather than fostering uniformity, attempting to cram the ABA rules down the throats of practitioners in California will do nothing but create uncertainty, confusion and conflict. The mere fact that states with smaller bars use the ABA rules is irrelevant to the problem of administering the patent bar. There are very few patent lawyers in Mississippi, Wyoming and Alaska. Simply making decisions based on numbers of states is the wrong way of looking at the problem.

4. If one wants to minimize conflict and confusion, simply require each patent attorney to follow the rules in the state in which he/she practices.

5. I cannot emphasize strongly enough that I think the proposed rules are an incredibly bad idea.

Specific Comments

1. Re rule 11.6, what is the status of one who has voluntarily become inactive in the state bar but wishes to continue handling patent matters before the USPTO? Is he now a patent agent? Or does he continue on as a patent attorney?

2A. Re rule 11.12: Mandatory MCLE is unnecessary. Has the USPTO done any studies re whether problems are arising due to a lack of MCLE? I assume not. Further, maintaining and monitoring an MCLE system requires creating a bureaucracy and expense to address a non-existent problem. Attorneys are already required to handle matters with competence. How they go about doing so is their business. Whether they decide to do so by reading materials on their own (vs. going to MCLE classes) is not the USPTO's business.

2B. Again, re rule 11.12, my state (California) and most other states already have an MCLE requirement. Why duplicate an MCLE bureaucracy at the federal level? It is wasteful--precisely the sort of thing that a Republican administration (and every other governmental organization) should eschew.

3. Rule 11.16 is unduly intrusive. If the Director wants to look at my financial books, he can get a subpoena or a search warrant. One John Ashcroft in the government is enough.

4. 11.303 and 11.106, and related rules leave open several glaring questions that should be addressed. a) If one discovers that his client wants to withhold information that might be material under rule 56, is it permissible for him to simply withdraw, or must one go ahead and disclose the information to the USPTO even if one withdraws? b) After a patent has issued, to what extent must one submit information to the USPTO concerning incorrect information that was submitted to the USPTO (see 11.303(a))? c) To what extent is one obliged to disclose information to the USPTO discoverd after one has withdrawn (again, see 11.303(a))? d) To what extent is one obliged to disclose information learned from one client to the USPTO during prosecution of a case for another client? e) Is it still the rule that material art discovered after withdrawl from the case or after the patent issues need not be disclosed? If an attorney ceases representing a client and thereafter discovers information submitted to the USPTO was incorrect, that former client would be most surprised to discover his former attorney is still submitting information disclosure statements to the USPTO. Is that really what the USPTO expects?

5. Fees for staying on the roster of patent attorneys: There shouldn't be any. The USPTO proposes to create an administrative burden for itself and then tax the patent bar. I recommend simply not creating the administrative burden.

Respectfully submitted,
Kenneth E. Leeds
Reg. No. 30,566
Phone: 408-732-9500
FAX: 408-736-7052
P.O. Box 2819
Sunnyvale, CA 94087-0819

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Last Modified: 7/4/2009 5:38:13 PM