[Federal Register Volume 60, Number 14 (Monday, January 23, 1995)]
[Proposed Rules]
[Pages 4395-4397]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-1602]



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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 10

[Docket No. 930366-4319]
RIN 0651-AA65


Cross-Appeals in Patent and Trademark Office Disciplinary 
Proceedings

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Proposed rulemaking.

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SUMMARY: On July 21, 1993, the Patent and Trademark Office (PTO) 
proposed amending a rule of practice in practitioner disciplinary 
proceedings. 58 FR 38994. The proposed rule change provides for a time 
period for a party to a disciplinary proceeding to file a cross-appeal, 
after the other party (the respondent or the Director of the Office of 
Enrollment and Discipline) to the proceeding has appealed from the 
initial decision of the administrative law judge (ALJ) to the 
Commissioner. Currently, PTO rules do not provide for such a time 
period. A party in a disciplinary proceeding may be interested in 
appealing only if the other party has appealed. Allowing a time period 
for filing a cross-appeal will give parties to disciplinary cases more 
flexibility after an initial decision by the administrative 
[[Page 4396]] law judge and will avoid the necessity of filing 
contingent appeal simply to preserve rights in the event the other 
party files an appeal.
    One comment to the rule change proposed on July 21, 1993, was 
received suggesting substantive changes. This second notice adopts that 
suggested change.

DATES: Written comments must be received on or before February 22, 1995 
to ensure consideration. An oral hearing will not be conducted.

ADDRESSES: Address written comments to Commissioner of Patents and 
Trademarks, Box OED, Washington, DC 20231, marked to the attention of 
Harry I. Moatz. Written comments will be available for public 
inspection in Suite 518, on the 5th floor of Crystal Park I, located at 
2011 Crystal Drive, Arlington, Virginia.

FOR FURTHER INFORMATION CONTACT:
Harry I. Moatz by telephone at (703) 308-5273 or by mail marked to his 
attention and addressed to Commissioner of Patents and Trademarks, Box 
OED, Washington, D.C. 20231.

SUPPLEMENTARY INFORMATION: A Notice of Proposed Rulemaking was 
published in the Federal Register (58 FR 38994) on July 21, 1993, and 
in the Official Gazette of the PTO (1153 Off. Gaz. 32) on August 10, 
1993. Comments were due August 20, 1993. One comment was received. The 
comment suggested a substantive change to the original proposed 
rulemaking. The PTO has adopted the change and is now publishing a 
second notice requesting comments on the amended notice.
    Pursuant to 37 CFR 10.132 et seq., the Director of the Office of 
Enrollment and Discipline within the PTO may initiate a disciplinary 
proceeding against a practitioner. If the proceeding is contested by 
the practitioner and the Director continues to prosecute, an ALJ for 
the Department of Commerce enters an initial decision which includes 
findings of fact, conclusions of law and an order. 37 CFR Sec. 10.154.
    Either party to the proceeding may appeal from the initial decision 
of the ALJ to the Commissioner within thirty (30) days of the date of 
the decision. 37 CFR Sec. 10.155(a). However, prior to this proposed 
rule change, Sec. 101.155(a) did not provide for the filing of a cross-
appeal.
    With regard to interference proceedings, 37 CFR Sec. 1.304(a) 
addresses the filing of cross-appeals by stating in pertinent part 
that:

the time for filing a cross-appeal [to the Court of Appeals for the 
Federal Circuit] or cross-action [in a district court] expires (1) 
14 days after service of the notice of appeal or the summons and 
complaint or (2) two months after the date of decision of the Board 
of Patent Appeals and Interferences, whichever is later.

The proposed rule change is similar to the cross-appeal authorized in 
interference proceedings.

Response to and Analysis of Comment

    The single comment suggested that the second sentence of the 
proposed Sec. 10.155(a) be modified by adding ``pursuant to 
Sec. 10.142'' after ``(1) 14 days after service of the appeal'' to make 
clear that the period for filing a cross-appeal or reply brief runs 
from service pursuant to Sec. 10.142. The suggestion is being adopted. 
The comment further suggested that the fifth sentence in the rule 
proposed on July 21, 1993, be separated into three new sentences. The 
first and second new sentences make clear that ``the other party to an 
appeal or cross-appeal may file a reply brief,'' and that a ``reply 
brief by the respondent'' is to be ``served in duplicate with the 
Director.'' The third new sentence provides a date certain for filing 
any reply brief by avoiding uncertainty as to when ``receipt'' of an 
appeal, cross-appeal or copy thereof occurs, and by relying on the date 
of ``service pursuant to Sec. 10.142'' of an appeal, cross-appeal, or a 
copy thereof. The suggestions have been adopted in the proposed rules.

Other Considerations

    This rule change conforms with the requirements of the Regulatory 
Flexibility Act (5 U.S.C. 601et set.), Executive Orders 12612 and 
12866, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq.
    The General Counsel of the Department of Commerce has certified to 
the Chief Counsel for Advocacy, Small Business Administration, that the 
rule change will not have a significant economic impact on a 
substantial number of small entities (Regulatory Flexibility Act, 5 
U.S.C. 605(b)). The principal impact of the rule change is to provide a 
time period to file cross-appeal in a PTO disciplinary proceeding. See 
the original notice of proposed rulemaking published in the Federal 
Register, 58 FR at 38996.
    The PTO has determined that the rule change has no Federalism 
implications affecting the relationship between the National Government 
and the States as outlined in Executive Order 12612. The Office of 
Management has determined that the rule change is not significant for 
the purposes of Executive Order 12866.
    The rule change will not impose a burden under the Paperwork 
Reduction Act of 1980, 44 U.S.C. 3501 et seq., since no record keeping 
or reporting requirements within the coverage of the Act are placed 
upon the public.

List of Subjects in 37 CFR Part 10

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.

    For the reasons set out in the preamble, and pursuant to the 
authority contained in 35 U.S.C. 6, the PTO proposes to amend 37 CFR 
part 10 as follows, wherein deletions are indicated by brackets ([ ]) 
and additions by arrows (><):

PART 10--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK 
OFFICE

    1. The authority citation for 37 CFR part 10 would continue to read 
as follows:

    Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32, 
41.

    2. Section 10.155 is amended by revising paragraph (a) to read as 
follows:


Sec. 10.155  Appeal to the Commissioner.

    (a) Within thirty (30) days from the date of the initial decision 
of the administrative law judge under Sec. 10.154, either party may 
appeal to the Commissioner. >If an appeal is taken, the time for filing 
a cross-appeal expires (1) 14 days after the date of service of the 
appeal pursuant to Sec. 10.142 or (2) 30 days after the date of the 
initial decision of the administrative law judge, whichever is later.< 
An appeal >or cross appeal< by the respondent will be filed and served 
with the Director in duplicate and will include exceptions to the 
decisions of the administrative law judge and supporting reasons for 
those exceptions. If the Director files the appeal >or cross-appeal<, 
the Director shall serve >on the other party< a copy of the appeal >or 
cross-appeal<. >The other party to an appeal or cross-appeal may file a 
reply brief. A respondent's reply brief shall be filed and served in 
duplicate with the Director. The time for filing any reply brief 
expires< [Within] thirty (30) days after >the date of< [receipt] 
>service pursuant to Sec. 10.142< of an appeal >, cross-appeal< or copy 
thereof[, the other party may file a reply brief, in duplicate with the 
Director]. If the Director files [the] >a< reply brief, the Director 
shall serve >on the other party< a copy of the reply brief. Upon the 
filing of an appeal >, cross appeal, if any,< and [a] reply brief >s<, 
if any, the Director shall transmit the entire record to the 
Commissioner.
* * * * * [[Page 4397]] 
    Dated: January 13, 1995.
Michael K. Kirk,
Deputy Assistant Secretary of Commerce and Deputy Commissioner of 
Patents and Trademarks.
[FR Doc. 95-1602 Filed 1-20-95; 8:45 am]
BILLING CODE 3510-16-M