Friday, March 30, 2007

2007 Proposed Changes to Representation of Others Before the USPTO

In the February 28, 2007 Federal Register, the U.S. Patent and Trademark Office published proposed changes to rules governing disciplinary proceedings for attorneys and agents. This was a supplemental notice of proposed rule making. The USPTO had previously proposed amendments, in December 2003. One hundred and fifty seven written comments were received in response to the December 2003 proposal. In response to those comments, the USPTO revised several of the proposed rules and published the revised proposed rule changes.

The revised proposed rule changes can be found here:

A comparison of the revised proposed rules and the December 2003 version is available at

The revised proposed rule changes have not yet been adopted.

The December 2003 proposed rules introduced a part 11, to replace previous part 10, including rules governing the conduct of investigations and disciplinary proceedings. Other proposed rules were intended to introduce new disciplinary procedures for practitioners who were suspended or disbarred in other disciplinary jurisdictions for ethical or professional misconduct, practitioners convicted of serious crimes, and practitioners having disability issues. The December 2003 version also proposed changes to the ethics rules. Some provisions on enrollment were adopted in final form on July 26, 2004 (see 69 Federal Register 35428). Several proposed rules are directly or indirectly dependent on development of electronic systems to implement rules governing annual dues and continuing legal education. Such electronic systems have not yet been completed so the revised proposed rules do not refer to rules that depend on implementation of such electronic systems.

One interesting item added in the revised version is a statement that "Nothing in this section proscribes a practitioner from employing non-practitioner assistants under the supervision of the practitioner to assist the practitioner in preparation of said presentations." The stated reason for this is to assist practitioners in providing cost-efficient services to clients. Some large companies are imposing artificial limits on fees per patent application, sometimes without regard for complexity or number of revisions requested by inventors and often without regard to whether new disclosure materials were added by inventors after the original case was accepted by the attorney. These companies may not be as concerned with quality and validity of their patents because a potential licensee presented with a large number patents may be more likely to accept a license than to investigate the validity of a large volume of patents. A typical patent trial can cost 1.5 million dollars--saving a few dollars in the patent procurement procedure could jeopardize the validity of a patent and make it harder to risk gambling the 1.5 million dollars of potential litigation fees in an infringement action. Federal Circuit decisions make it increasingly important that patent applications be drafted and prosecuted with great care by practitioners who are familiar with the cases. Smaller companies cannot rely on the size of their portfolio to intimidate infringers and must make sure that their patents are carefully and properly drafted so that they can confidently begin litigation, if necessary. Companies that might be accused of monopolistic activities may be less likely to draw attention to themselves by asserting patents, so risk of invalidity in litigation may not be as big of a concern. Properly supervising someone else can easily take more time than drafting a patent application directly. In order to really reduce fees, the work of non-practitioners would have to be superficial or non-existent. The practitioner signing the papers would be on the hook for ethical violations.

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