Skip over navigation

Alun L. Palmer

Page l of 3

Moatz, Harry

From: elektros@...
Sent: Sunday, December 14, 2003 1:33 AM
To: ethicsrules comments

I would just like to make a few comments on the Notice of Proposed Rule Making (NPRM).

Firstly, I am opposed to introducing an annual bar fee for patent practitioners. The argument that maintaining the register should be paid for by the practitioners and not the applicants ignores the fact that the cost will be passed on in our fees.

I understand that the proposed fee is $100, which I feel is rather high. This would be on a par with state bar fees, but there are a couple of reasons why this is not appropriate. Firstly, about 20?25% of practitioners are patent agents, who average perhaps only 60% of the income of patent attorneys. On the other hand, those who are attorneys necessarily are paying for at least one state bar already. For these reasons, I feel that the fee should be lower.

I also feel that the current ethical rules are adequate, and that harmonizing them with state bars is unnecessary. However, as regards admission to practice, and the scope of that practice, I do feel some changes are appropriate.

i think it is a good idea to base a definition of the scope of patent practice before the PTO upon Sperry v Florida.

The section of Sperry quoted in the NPRM is as follows:

Ø Sperry v. Florida, 373 U.S. 379, 137 USPQ 578 (1963). In > Sperry, the Supreme Court found that? preparation and prosecution of > patent applications for others constitutes the practice of law." The > Court recognized that "[s]uch conduct inevitably requires the > practitioner to consider and advise his clients as to the patentability of > their inventions under the statutory criteria, 35 U.S.C. 101?103, 161, > 171, as well as to consider the advisability of relying upon alternative > forms of protection which may be available under state law. It also > involves his participation in the drafting of the specification and claims > of the patent application, 35 U.S.C. 112, which this Court long ago noted > 'constitute[s] one of the most difficult legal instruments to draw with > accuracy,' Topliff [hairsp][hairsp]v. Topliff, 145 U.S. 156, 171. And upon > rejection of the application, the practitioner may also assist in the > preparation of amendments, 37 CFR 1.117?1.126,\1\ which frequently > requires written argument to establish the patentability of the claimed > invention under the applicable rules of law and in light of the prior art. > 37 CFR 1.119." Sperry, 373 U.S. at 383, 137 USPQ at 579.

1 think that the last paragraph of that case is vitally important, i.e.: ?

> It follows that the order enjoining petitioner must be vacated since it > prohibits him from performing tasks which are incident to the preparation > and prosecution of patent applications before the Patent Office. The > judgment below is vacated and the case is remanded for further proceedings > not inconsistent with this opinion. It is so ordered.

In other words, it appears that the state of the law is that a patent practitioner is authorized to perform "tasks which are incident to the preparation and prosecution of patent applications before the Patent Office".


Page 2 of 3

This is potentially broad, and not necessarily limited to the areas delineated in the dicta quoted in the NPRM,
albeit that provides a valuable guide.

In particular, it is not atall clear that it was held that advice must be limited to the specific areas mentioned
although it should obviously be "incident to the preparation and prosecution of patent applications before the
Patent Office", and it seems that this actual language ought to be used in any new rule.

Besides providing advice, another area of uncertainty is not addressed in the quoted passages, or anywhere
specifically in Sperry. That is the matter of whether preparing patent assignments falls within the scope of practice
as a patent practitioner.

The current PTO advice on this subject is that a patent agent may prepare a patent assignment if not prohibited
by state law. While this is evidently true per se, it would appear that preparing an assignment is often "incident to
the preparation and prosecution of patent applications before the Patent Office", since it is constitutionally
necessary for corporations to file in the name of the inventor and have an assignment prepared.
There is one case supporting the view that an agent may only prepare an assignment if not prohibited by state
law, Le Chicago v Kellogg (1), but it is pre? Sperry and certainly never binding outside Illinois. Although Sperry
doesn't specifically mention the subject, it would appear to imply that patent practitioners are licenced to prepare
an assignment as long as it is done"incident to the preparation and prosecution of patent applications before the
Patent Office".
It may be a good idea to resolve these issues in the new definition.
The other area I would like to raise is that of the registration of aliens, and how it is impacted by In Re Griffiths,
and perhaps by New Hampshire v Piper (2).
In Re Griffiths, referred to in the NPRM, cites Yick Wo v. Hopkins, 118 U.S. 356, 369, saying that a State must not
"deny to any person within its jurisdiction the equal protection of the laws.". This was the basis for the holding
under the 14th amendment that Fre Le Poole Griffiths had to be allowed to sit the Connecticut bar, although a
citizen of the Netherlands. The NPRM notes that "Registration of permanent resident aliens would be
consistent with In re Griffiths, 413 U.S. 717 (1973) " and notes that aliens are currently registered.
However, the current rules do not permit aliens who no longer reside in the US to remain registered. The NPRM
does not appear to suggest retaining this restriction, but it is not completely clear on that point. The current rules
contrast strongly with state bar rules, which contain neither any citizenship requirements, nor any residence
requirements. The former is no doubt due to In Re Griffiths, whereas the latter may be due to New Hampshire v.
Piper (2).
The conclusion of the decision in the latter case reads:
> We conclude that New Hampshire's bar residency requirement violates the
> Privileges and Immunities Clause of Art. IV, 2, of the United States
> Constitution. The nonresident's interest in practicing law is a
> "privilege" protected by the Clause. Although the lawyer is "an officer of
> the court," he does not hold a position that can be entrusted only to a
> "full?fledged member of the political community." A State may discriminate
> against nonresidents only where its reasons are "substantial," and the
> difference in treatment bears a close or substantial relation to those
> reasons. No such showing has been made in this case. Accordingly, we
> affirm the judgment of the Court of Appeals.
> It is so ordered.
It is not clear what substantial reasons the PTO might have to prevent aliens who are non?residents from
practising before it, especially as it is hard to conceive of any reason that would not also apply to citizens who
reside overseas, who are permitted to practice before the PTO.

The limited objective of ensuring that practitioners who are aliens do not practice outside the limitations of their admission to the US can be met by continuing to verify immigration status on admission to the examination. An alien who continued to practice after ceasing to be resident would not be violating any immigration laws, as they would not be working in the US, and a former permanent resident would be eligible for re?admission to the US as a special immigrant. It therefore seems that there is no substantial reason for removal from the register of aliens who cease to be resident, and the revised rules ought not to contain such a condition.

(1) Chicago Bar Association et al v Wilbur Fiske Kellogg, 338 111 App 618, 88 NE 2d 619, Appellate Court of Illinois, 1 st District, 1949.

(2) Supreme Court of New Hampshire v. Piper, 470 U.S. 274 (1985)

Alun L. Palmer, Patent Agent,
4300 Piney Church Road,
Waldorf, MD 20602
Phone: (301) 932?5933
Fax: (775) 243?0825
E?Mail: elektros@...

United States Patent and Trademark Office
This page is owned by Office of Patent Legal Administration.
Last Modified: 7/4/2009 5:42:37 PM