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Kenneth E. Leeds

Dear sir:

I have a follow-up comment regarding proposed rule 11.116(d). The wording of this rule does not reflect what I think the USPTO intends. I assume that the USPTO does not intend that the attorney can't keep copies of the materials mentioned in section 11.116(d)(1), (2) and (3), but rather, that the attorney must turn over the originals. If my assumption is wrong, please clarify.

A malpractice dispute may arise between an attorney and client as to exactly why subject matter was claimed as it was (e.g. after a lawsuit in which a patent claim was held uninfringed). The attorney may have an interest in keeping copies of these documents as a record of why claims were written the way they were, or why certain arguments were made to the USPTO.

Further, if litigation is contemplated concerning a patent, destroying files in accordance with rule 11.116(d) may conflict with other ethical obligations.

Exactly what does the USPTO intend here?

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 5:38:24 PM