In December 2003, the United States Patent and Trademark Office (USPTO) proposed changes to the rules governing disciplinary proceedings for patent attorneys and agents. A wide spectrum of bar associations, law firms, and other interested people and entities submitted more than 150 written comments to the USPTO in response to the proposed changes. After reviewing the written comments, the USPTO revised many of the proposed rules and, on February 28, 2007, requested further comments from the public. Although the USPTO watered down or eliminated many of the more controversial proposals, some of the proposed changes may merit further scrutiny.
Proposed Rule 11.5(b)(1) identifies what constitutes practice before the USPTO in patent matters. The proposed rule states that "[p]ractice before the Office in patent matters" includes "considering the advisability of relying upon alternative forms of protection that may be available under State law." This provision is arguably overly broad, because the USPTO lacks jurisdiction over state law forms of intellectual property protection. Further, under state law, patent agents are not licensed to provide such advice. By including state law forms of protection in proposed Rule 11.5(b)(1), the USPTO arguably suggests that a patent agent practicing before the USPTO should be providing such advice, even though the provision of such advice might constitute the unauthorized practice of law under state law.
In its discussion of the proposed rules, the USPTO specifically solicited public comment on whether there are circumstances in which it would be appropriate for a patent agent to cause a patent assignment document to be executed. Ordinarily assignments and licenses are creations of state statutory law, not federal law. But one may argue that execution of a standard assignment document is incidental to the preparation and filing of a patent application, a task that a patent agent has the authority to perform.
Proposed Rule 11.22(f) would allow the director of the Office of Enrollment and Discipline (OED) to request information and evidence from a practitioner or grievant, among others, in the course of an investigation into possible grounds for discipline. Among other things, the proposed rule would allow the OED director to request financial books and records. Such financial books and records could include the nonpublic and proprietary records of a corporation or law firm, as well as attorney-client privileged information. Although the proposed rule opens up possibly confidential and privileged information to inspection by the OED director, the rule itself provides no safeguards to ensure that the information will be kept secure and confidential, free from requests from other government agencies or from the public under the Freedom of Information Act. Some commentators have suggested that, if the proposed rule is to be retained, the USPTO might consider amending it to provide such safeguards.
Although not expressly stated in proposed rule 11.22, the USPTO’s discussion of the rule states that the Committee on Discipline would be able to "draw an adverse inference from the practitioner’s refusal to provide information or records in determining whether probable cause exists to believe a disciplinary rule has been violated." If this interpretation were followed, the Committee on Discipline could arguably find probable cause against a practitioner based solely upon that practitioner’s refusal to produce information in response to a request for information by the OED director. Some commentators have suggested that imposing such an adverse inference might go too far.
Proposed Rule 11.25 would allow the OED director to investigate a practitioner who is convicted of a crime, even if the crime is not a "serious crime." A "serious crime" would include a felony, or non-felony that involves interference with the administration of justice, false swearing, misrepresentation, fraud, willful failure to file income tax returns, deceit, bribery, extortion, misappropriation, theft, or an attempt or a conspiracy or solicitation of another to commit such a crime. Some commentators have suggested that, by allowing the OED director to investigate a practitioner who is convicted of a "non-serious" crime, the proposed rule overreaches.
Proposed Rule 11.39(a) would allow the USPTO director to appoint a hearing officer to conduct disability or disciplinary proceedings under either 5 U.S.C. § 3105 (administrative law judge) or 35 U.S.C. § 32 (USPTO director’s discretion to designate any attorney who is an officer or employee of the USPTO). The proposed rule conflicts with present 37 C.F.R. § 10.132(c), which requires the Commissioner for Patents to refer disciplinary proceedings to an administrative law judge. Some commentators have argued that referring disciplinary proceedings only to administrative law judges would ensure greater public confidence in such proceedings. Federal administrative law judges have tenure similar to that given federal judges under the Constitution.
The deadline to submit written comments to the USPTO on the present version of the proposed rules is May 29, 2007.