US PTO Releases Proposed Rule Changes for Patent Representatives

The US Patent and Trademark Office (US PTO) has released a proposal that would see sweeping changes to its admission and practice rules for patent representatives. The proposed rules, published in the December 12, 2003 Federal Register, are open for comments until February 10, 2004. The proposed rules include changes to practice requirements, as well as, a new section of detailed ethics rules. The ethics rules, similar to rules that govern all attorneys, address issues such as conflict of interest and fee arrangements. For instance, the new rules would make it more difficult for lawyers to act in concert with invention promotion agencies. The ethics rules were developed to be consistent with the American Bar Association Model Rules of Professional Conduct. Currently, 42 of the 50 state bars are governed by variations on the ABA Model Rules. Some lawyers have questioned the need for this further layer of conduct rules, as they are already regulated under rules of their state bars. However, the US PTO defends the rules as necessary to apply consistent scrutiny to non-lawyer patent agents and to provide a mechanism for the US PTO to investigate complaints by clients and to discipline patent representatives directly. A particularly controversial change in the proposal relates to competence standards. Currently, individuals must pass an admission examination to be qualified to act before the US PTO. However, there is no ongoing requirement to prove competence. The proposed rules would require representatives to complete ongoing self-education modules or face administrative suspension. The re-certification requirement has been criticized as "tedious" by some members of the patent bar. The grumbling is loudest from US patent litigators who, though admitted to practice before the US PTO, rarely encounter the more mundane details of patent prosecution. Both lawyers and non-lawyer agents who are registered to act in patent matters before the US PTO will be affected by the proposed rules (including Canadian and foreign patent agents, who practice as limited US PTO agents under a reciprocal recognition arrangement). There are nearly 28,000 individuals registered to act as patent representatives in the US. Of these, it is estimated that about 80% are lawyers. A copy of the proposed "Changes to Representation of Others Before the United States Patent and Trademark Office" is available at: http://www.uspto.gov/web/offices/com/sol/notices/68fr69442.pdf. The US PTO's press release on the changes is available at : http://www.uspto.gov/web/offices/com/speeches/03-35.htm. Further commentary on the changes can be found at: http://makeashorterlink.com/?W2FA13727. Summary by: Jennifer Jannuska