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Warren A. Sklar

June 14, 2004

BY email:

Mail Stop OED-Ethics Rules
P.O. Box 1450
Alexandria, VA 22313

Attn: Harry Moatz


These comments are submitted June 14, 2004, rather than by the original deadline of June 11, 2004, in view of the closure of the government offices out of respect for President Ronald Regan and his funeral on June 11, 2004.

The following comments are being made relating to the proposed new Rules for Representation of Others Before the USPTO published in the Federal Register on December 12, 2003. Federal Register Vol. 69, No. 42, dated March 3, 2004, granted opportunity to comment through June 11, 2004.

The statutory authority granted the Director to initiate and conduct Disciplinary proceedings is found in 35 U.S.C. § 32, Suspension or Exclusion From Practice:

The Director may, after notice and opportunity for a hearing, suspend or exclude, either generally or in any particular case, from further practice before the Patent and Trademark Office, any person, agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 2(b)(2)(D) of this title, or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant, or other person having immediate or prospective business before the Office. The reasons for any such suspension or exclusion shall be duly recorded. The Director shall have the discretion to designate any attorney who is an officer or employee of the United States Patent and Trademark Office to conduct the hearing required by this section. The United States District Court for the District of Columbia, under such conditions and upon such proceedings as it by its rules determines, may review the action of the Director upon the petition of the person so refused recognition or so suspended or excluded. (Emphasis added).

Proposed New Section 11.19

Proposed Section 11.19, Disciplinary Jurisdiction, Section (c) Misconduct—grounds for discipline. (1) Practitioners, reads as follows:

Acts or omissions by a practitioner.constituting gross misconductshall constitute misconduct and shall be grounds for discipline Grounds for discipline include:
A. Conviction of a crime (see §§ 11.24, 11.803(d) and 11.804(b));
B. Discipline imposed by another jurisdiction (see §§ 11.24, 11.803(e)(1) and (f)(4));
C. Failure to comply
D. Failure to respond
E. Violation of the imperative USPTO Rules of Professional Conduct. See §11.100(a). (Emphasis added).

On a purely technical note, In Section (i) above, Section 11.25 should
replace 11.24, and the reference to 11.803(d) should be removed, since 11.803 relates to reporting requirements of a conviction, not a criminal conviction, per se. Similarly in (ii) above, 11.803(e)(1) should be deleted, since 11.803 relates to reporting requirements of a bar suspension, not a bar suspension, per se.

Sections (ii) and (iii) above, as currently set forth, are improperly drafted for the following reasons:

35 U.S.C. § 32 requires that the practitioner to be disciplined be guilty of gross misconduct, which means that the practitioner must have committed whatever conduct the practitioner is to be found guilty of. Conviction of a crime (see also Section 11.25), or Discipline imposed in another jurisdiction (see also Section 11.24) is not conduct of a practitioner, but is conduct of another entity. Only the conduct of the practitioner resulting in the conviction or discipline can reasonably be considered conduct of the practitioner. While a conviction or discipline may be a result of acts of misconduct of the practitioner, and may be evidence, perhaps even conclusive evidence, of misconduct, they are not, per se, “conduct of a practitioner”.

Therefore, the Section 10.19(c)(1)(ii) and 10.19(c)(1)(iii) should be amended to include what is currently inherent therein, namely the phrase “Conduct which results in” before the term “Conviction” or “Discipline” in these respective sections Reading these clauses in a vacuum without the language “Conduct which results in” in the beginning thereof would be inconsistent with the intent of the regulation, or of the statute which gives authority for the regulation.

Proposed New Section 11.24 and 11.25

Section 11.24 Interim Suspension and Discipline based on Reciprocal Discipline should be deleted in its entirety since it would be in violation of 35 U.S.C. § 32.
Section 11.24 (b) recites as follows:

Notice to Show Cause and Interim Suspension. (1) Following receipt of a certified copy of the record, the USPTO Director shall enter an order suspending the practitioner from practice before the Office and afford the practitioner an opportunity to show cause, within 40 days, why an order for identical disciplinary action should not be entered. Upon response, and any reply by the OED Director authorized by the USPTO Director, or if no response is timely filed, the USPTO Director will enter an appropriate order. (Emphasis added).

Such suspension is in direct contravention of 35 U.S.C. § 32 that allows suspension only after a hearing before a Hearing Officer.

Even within the Section, contradictions abound. For example, in Section 11.24 (d)(2), the USPTO Director is authorized to enter a different sanction, or not impose any discipline at all if he so determines. This is in conflict with Section 11.24(a) which recites in absolute unqualified terms: “Every attorney who has been suspended, or disbarred or has resigned shall be disqualified from practicing before the Office in patent, trademark, and other non-patent cases, as a practitioner, during the time of suspension, disbarment or resignation.” (Emphasis added).

Section 11.24 also raises the likelihood of unequal treatment of attorneys in different jurisdictions, as well as between registered practitioners attorneys and agents, to wit:

1. An agent, not being a member of a Bar, cannot be disbarred or suspended. An attorney can be suspended or disbarred. If the misconduct occurred more than five years before the USPTO brings a Complaint, the agent cannot be accused of misconduct by OED since the five-year statute of limitation period within which formal action must be taken to discipline a practitioner has expired. See Johnson v. SEC, 87 F.3d, 484 (D.C.Cir. 1996); 3M Company v. Browner, 17 F.3d 1453 (D.C. Cir. 1994).

However, if the language in Section 11.19 is not amended as suggested supra, and the USPTO considers the bar suspension or disbarment to be the misconduct of the attorney which starts the five-year statute of limitations anew, the attorney would be able to be disciplined by OED, while jurisdiction could not be had over the agent.

Such a result would also be contrary to the fundamental premise underlying the statute of limitations as enunciated by the court in the 3M v. Browner decision -- that it is inappropriate for a government regulator to wield such an open-ended penalty, and that the purpose of the statute of limitation is to impose on the initiator of the action the obligation to take the action within a sufficiently short time to afford the respondent of that action reasonable opportunity to defend his conduct before memories fade, witnesses disappear and evidence lost.

2. An attorney may be disciplined in one State for certain conduct, yet another State may consider that conduct not subject to discipline. By making the suspension or disbarment the criteria justifying identical reciprocal action by the USPTO, without allowing a Hearing Officer to make a decision based on the nature of the conduct, the Section subjects the process to a charge of being arbitrary.

Proposed New Section 11.803 (f)

Section 11.803 is entitled Reporting Professional Misconduct. After enumerating several reporting requirements in Sections (a), (b), (d) and (e), Section (f) thereof follows italicized, along with comments interspersed therebetween:

Conduct that constitutes a violation of subparagraphs (a) through (e) of this section includes, but is not limited to:
(1) Failing to comply with the provisions of subparagraphs (d) and (e) of this section;
QUERY: I. Why are subparagraphs (a) and (b) not referenced?
II: Isn’t this subparagraph redundant in light of Section
11.19(c)(1)(v)? It is confusing to reconcile a rule which defines
misconduct as including all of the Rules of Professional
Misconduct and a Rule in the Rules of Professional Conduct
that defines misconduct. There needs to be a single source for
defining misconduct.
(2) Willfully refusing to reveal or report knowledge or evidence to the OED Director contrary to §§11.24(a) or (b) or 10.25(b);
QUERY: I. Isn’t this redundant in light of Section 11.19(c)(1)(v), and
11.803 (e)(1)?
II. Part 10 was abolished - § 10.25 does not exist.
III. If 11.25 was intended, the correct Section is 11.25(c).
(3) In the absence of information sufficient to establish a reasonable belief that fraud or inequitable conduct has occurred, alleging before a tribunal that anyone has committed a fraud on the Office or engaged in inequitable
conduct in a proceeding before the Office: or
QUERY: Why is this subparagraph here – it does not relate to Reporting
Misconduct, let alone that set forth in subparagraphs (a) through (e)?
(4) Being suspended, disbarred as an attorney, or disbarred on consent from practice as an attorney on any ethical grounds
QUERY: I. Why is this subparagraph here – it does not relate to Reporting
Misconduct, let alone those set forth in subparagraphs (a) through (e)?
II. Isn’t it redundant in light of 11.19(c)(1)(ii)?
III. Why the distinction in this subparagraph as to the “ethical” grounds for disbarment, as compared to any suspension or disbarment in 11.19(c)(1)(ii)?

Respectfully submitted,

Warren A. Sklar
Reg. No. 26,373

United States Patent and Trademark Office
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