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Northern Virginia Patent Lawyers Club

Moatz, Harry

Sent: Tuesday, February 10, 2004 3:26 PM
To: ethicsrules comments
Subject: comments on proposed ethics rules

5HFJ501 Woc
To the Director:

I am pleased to present the comments of the Northern Virginia Patent Lawyers Club regarding the proposed rules. The attached document was approved by vote of the association on February 10, 2004.

James T. Carmichael
Chair, Committee on Discipline
Northern Virginia Patent Lawyers Club

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Comments on proposed rulemaking entitled "Changes to Representation of Others Before the United States Patent and Trademark Office," 68 Fed. Reg. 69442 (December 12, 2003).

The following comments were adopted by the Northern Virginia Patent Lawyers Club by vote on February 10, 2004.

General comments:

The PTO's Office of Enrollment and Discipline has long done an excellent job regulating registered practitioners. The current rules have generally worked fine for this purpose, and the bar does not see the need for scrapping the current system and imposing fifty single?spaced pages of new regulations. The existing rules have the advantage that they are time?tested and have a developed body of precedent. They have also been incrementally revised as necessary to reflect experience with the rules and to reflect the unique aspects of practice before the Office. The wholesale change proposed is an unnecessary and burdensome bureaucratic exercise. By and large, any advantage achieved by the proposed rulemaking is far outweighed by the public and private costs.

Comments on specific proposed rules:

Regarding the proposal to charge registered practitioners an annual fee, the Office of Enrollment and Discipline should be funded by PTO user fees that are currently being diverted to other agencies. Proposed rule 1.21(a)(7) should not be adopted.

Regarding proposed rule 11.3(d), PTO employees are not above the law and should not be immune from disciplinary complaint. Permitting PTO employees to breach the standards of ethical conduct to which private practitioners are subject serves no valid purpose and would only encourage improper behavior by PTO employees. Proposed Rule 11.3(d) should not be adopted.

Existing rule 10.23(c)(12) provides important safeguards against litigation or other attorneys that might file in the PTO a frivolous complaint against an adversary to gain an unfair advantage. It should be retained. Proposed rule 11.3(d), which offers "immunity" for such conduct, should not be adopted.



Regarding proposed rule 11.13, if there is to be a PTO?administered requirement for Mandatory Continuing Legal Education, any attorney who satisfies his or her state's MCLE requirements should be deemed in compliance with the PTO's new requirements. There is no need for the USPTO to dictate the content of the education. Proposed rule 11.13 should be so amended.

Regarding proposed rules 11.16 and 11.22(k), in recognition of the fact that the Office of Enrollment and Discipline already has certain investigation powers, the proposed rules providing unlimited access by the Office of Enrollment and Discipline to the financial books and records of all patent practitioners and their law firms go way too far and are much too invasive. Proposed Rules 11.16 and 11.22(k) should not be adopted.

Regarding proposed rule 11.220)(2), the Office of Enrollment and Discipline should not be able to contact non?complaining clients of a practitioner. The possibility for irreparable damage and interference with the attorney?client relationship is too great and is not justified by any discernible need. Proposed rule 11.220)(2) should not be adopted.

Regarding proposed rules 11.32 and 11.39(b)(4), disciplinary proceedings should be conducted by someone familiar with practice before the Office. Proposed rule 11.32 should be revised to state that the hearing officer must have knowledge in practice before the Office.

Regarding proposed rule 11.58(c), practitioners have a right to court review of any decision by the PTO to suspend their license under 35 U.S.C. 32. The proposed rule 11.58(c) vitiates this statutory protection and should not be adopted. Court review is meaningless if practitioners lose their license before the court renders a decision.

Regarding proposed rule 11.60(a), suspended practitioners who serve their full sentence of suspension should thereafter be automatically reinstated and should not have to prove to OED's satisfaction that they have been "rehabilitated" or any other subjective criteria. Proposed Rule 11.60(a) should not be adopted.

Regarding proposed rule 11.101(c)(4), there is no body of law guiding practitioners on when an invention is "frivolous." Making it misconduct to file a patent application on a "frivolous invention" would have an undue chilling effect on patent applications. Rule 11.101(c)(4) should not be adopted.

Proposed rule 11.604 unnecessarily meddles in association activities wholly unrelated to practice before the Office. The requirement for practitioners to review their client files and to disclose the existence of clients that would benefit from an organization's proposal, or face the loss of their license to practice, would have an undue chilling effect on public discourse and legal reform. Proposed rule 11.604 should not be adopted.


Regarding proposed rule 11.806, the PTO has no business investigating or regulating sex. Proposed Rule 11.806 should not be adopted.

Respectfully submitted,
Northern Virginia Patent Lawyers Club

United States Patent and Trademark Office
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