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New regulations proposed by the U.S. Patent and Trademark Office (PTO) would ban sex between patent and trademark attorneys and their clients incident to representation. Does PTO management fear that the population’s infatuation with soft porn on prime-time television (� la Paris Hilton and Janet Jackson) threatens to disrupt due examination of patent and trademark applications? Our firm has not lately seen a press of clients eager to sell their bodies for a trademark registration. Lest anyone doubt the PTO’s intent, the language of the proposed regulation makes it clear: Section 11.806 of 37 CFR would proscribe practitioners’ sexual relations with clients or third parties (“incident to” or as a “condition of” representation) and with employees (as a condition of employment). It is gratifying that the proposed rule makes an exception for sexual relations between practitioners and their spouses, or consensual relationships predating the practitioner-client or practitioner-employee relationship. Regulations, unlike mountain climbing, can’t be justified on the rationale “because it’s there.” That other jurisdictions may have perceived a need to impose particular conduct regulations on legal practitioners is not a sufficient reason for the PTO to do the same. Incidents of matrimonial attorneys taking sexual advantage of jilted spouses on the rebound, requiring state regulation, do not translate to patent and trademark practice. Absent evidence of a rash of sexual misconduct by PTO practitioners that could not otherwise be dealt with satisfactorily by the general law of sexual harassment and criminal laws, special intrusive regulation of private behavior by PTO practitioners is unwarranted. There is no showing in the proposed regulations that the alleged problem is not satisfactorily remedied by existing federal and state laws-not to mention state bar ethics regulations to which patent lawyers are subject. If the PTO succeeds in establishing a micro-managed ethics code for its practitioners-supported by practitioner registration fees-it is easy to see that other federal and state agencies would follow suit. State bar admission would soon be akin to a high school diploma. Go after the real swindlers The stereotype of a nerdy engineer-turned-lawyer who is really a tiger at heart (similar to the accountant character played by Matthew Broderick in The Producers) is tempting to consider, as people always enjoy pondering what lies below the surface of an otherwise quiet life. Just think of Albert Einstein, who was an examiner at the Swiss patent office and notorious for marital scandal. Yet as those inside the patent bar know, the long-standing notorious abuses in PTO practice do not stem from unregulated romantic dalliances by patent lawyers. A different set of culprits takes advantage-in a different way-of the unsophisticated. The abuses are largely the work of nonattorneys: invention-promotion swindles and mass mailings to patent and trademark owners peddling useless “registers” and selling lists of later patents that cite the mailing recipient’s patent-which are available from the PTO Web site for free. These are areas that the PTO might fruitfully address by targeted legislative proposals. Instead, the proposed regulations deal with them only backhandedly by seeking to regulate the interactions of PTO practitioners with such nonattorneys. The proposed regulations, for example, restrict a patent attorney’s ability to take direction from foreign co-respondent attorneys, unfairly lumping them in with invention promoters who also act-improperly-as intermediaries. Here is a better idea relating to a fee increase that the PTO is also proposing; this would far better protect the public than an unnecessary and insulting regulation reminding patent lawyers to keep their trousers or skirts on. The same new set of regulations propose a $100 annual registration fee for attorneys practicing before the PTO. PTO funds are routinely diverted to the general budget, so the PTO apparently seeks to bridge the gap at the expense of the bar (costs that are passed on to the clients, creating an unwarranted tax on intellectual property). Instead of burdensome new and expensive regulation of intellectual property attorneys, beneficial legislation could be introduced to help the PTO deal inexpensively with the most frequent ethics offenders actually encountered in an intellectual property law practice-those pesky publishers of phony “registers” of patents and trademarks. These solicitations appear on official-looking stationery and suggest that the recipients should pay $500 to “protect” their rights. They are commonly sent to intellectual property owners and their attorneys. The Canadian Trademarks Office sends warning notices along with official trademark certificates, alerting the new trademark owner to this ploy. The PTO easily could include similar warnings in the flyers it already distributes promoting its eBusiness initiative for electronic intellectual property filings. And invention “promoters” who solicit fees up front for patenting and marketing inventions, often advertising on late-night television, prey on inventors’ need for marketing help with attractive promises that usually cannot be fulfilled. The PTO could cooperate with the Federal Trade Commission to regulate better deceptive invention promotion; legislation establishing targeted fines could make their enforcement effort largely self-funding. These suggestions will do more to protect the public than the prospect of PTO officials garnering attorney registration fees to oversee patent lawyers’ mating practices. Robert M. Kunstadt is the managing attorney of New York’s R. Kunstadt P.C., an intellectual property law firm. He writes often on intellectual property matters.

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