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VENABLE LLP Comments on Proposed Changes for PTO Recertification and CLE Issues Page 1 of 2

Moatz, Harry

From: CMVoorhees@...
Sent: Wednesday, February 04, 2004 11:26 AM
To: ethicsrules comments
Subject: VENABLE LLP Comments on Proposed Changes for PTO Recertification and CLE Issues

The Patent Prosecution Group at Venable LLP (33 registered attorneys/agents) recently discussed the proposed Rule Changes for Enrollment and Discipline and would like to submit the following comments:


None of the states that license attorneys have a recertification requirement. Since all registered patent attorneys/agents passed an exam (or worked a number of years as an Examiner) to show their competence, Venable LLP does not favor a recertification program.

Issues: How difficult or time-consuming would complying be?

Would law firm meetings discussing new rule changes be an approved recertification source? Alternatively, would law firm meetings presenting USPTO PowerPoint presentations, for example, on new rule changes be sufficient?

If a form of recertification is required, Venable LLP is against any tracking of time spent going through approved materials and/or the results of the approved material.

Again, if a form of recertification is required, the USPTO registered attorneys/agents at Venable LLP considered an Internet Delivery method of material where each attorney answers the selected response (multiple choice) questions at their own pace without grading to be an acceptable option, if recertification is required.


Most register attorneys/agents thought that CLE is not a bad idea. In fact, a number of attorneys who reside in jurisdictions that require CITE for their bar license elect to take Intellectual Property seminars to meet this requirement. It is hoped that the CLE requirement considered by the USPTO would include courses that are no more burdensome than the current state requirements.

Issues: What kind of courses would obtain Enrollment and Discipline approval? Would law firm meetings discussing recent PTO policy changes and/or Federal Circuit opinions meet OED approval?

A comment that the US PTO may not have control over was: If the US PTO is going to require us to take CLE seminars and/or recertification, will this have an impact on IP malpractice


. - VENABLE LLP Comments on Proposed Changes for PTO Recertification and CLE Issues Page 2 of 2


Respectfully Submitted,

Catherine M. Voorhees (Registration No. 33,074)


Telephone: (202) 344-4043

Fax: (202) 344-8300

E-mail: cmvoorhees@...
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