[Federal Register Volume 65, Number 247 (Friday, December 22, 2000)]
[Proposed Rules]
[Pages 80810-80815]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-32314]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1 and 104

RIN 0651-AB22


Legal Processes

AGENCY: Office of the General Counsel, United States Patent and 
Trademark Office, Commerce.

ACTION: Proposed rule.

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SUMMARY: The United States Patent and Trademark Office proposes rules 
relating to civil actions and claims involving the Office. 
Specifically, the rules will provide procedures for service of process, 
for obtaining Office documents and employee testimony, for indemnifying 
employees, and for making a claim against the Office under the Federal 
Tort Claims Act.

DATES: Submit comments on or before January 22, 2001.

ADDRESSES: Send all comments:
    1. Electronically to ``[email protected]'', Subject: ``Legal 
Process Rules'';
    2. By mail to Director of the United States Patent and Trademark 
Office, Box 8, Washington, DC 20231, ATTN: Legal Process Rules; or
    3. By facsimile to 703-305-9373, ATTN: Legal Process Rules.
    A copy of any comments regarding the information collection 
requirements may instead be sent to the Office of Information and 
Regulatory Affairs, Office of Management and Budget, New Executive 
Office Building, 725 17th Street, NW., Room 10235, Washington, DC 
20503.

FOR FURTHER INFORMATION CONTACT: Richard Torczon, 703-305-9035.

SUPPLEMENTARY INFORMATION:

Comment format

    The Office prefers to receive comments in electronic form, either 
via the Internet or on a 3\1/4\ inch diskette. Comments submitted in 
electronic form should be submitted as ASCII text. Special characters 
and encryption should not be used.

Background

    The Patent and Trademark Office Efficiency Act (PTOEA) (Public Law 
106-113, 113 Stat. 1501A-572 (1999)) reestablished the Patent and 
Trademark Office as the United States Patent and Trademark Office, a 
performance-based organization with responsibility for its own 
operations. Consequently, the Office has responsibility for many 
functions formerly provided by the Department of Commerce. The rules 
proposed in this notice adopt the substance and scope of the existing 
Department of Commerce rules, but where possible the proposed rules 
have been streamlined and tailored to reflect the practices of the 
Office and its constituencies. These proposed rules have been organized 
into a single part for convenience.

General Provisions

    The general provisions supply definitions, addresses, and a rule 
waiver provision that are generally applicable to the rules in this 
part. Filing of a petition to waive a rule will not in itself stay any 
action required of the petitioner. Section 1.17(h) of title 37 of the 
Code of Federal Regulations is amended to provide for a petition fee.

Service of Process

    The Patent and Trademark Office had rules for the service of 
process. 37 CFR part 15 (1996). In recent years, however, the Patent 
and Trademark Office instead relied on the rules of the Department of 
Commerce, 15 CFR part 15, subpart A, which were substantially the same 
as the former Patent and Trademark Office rules. The Office will again 
issue its own rules to tailor the rules to the specific practices of 
the Office and to simplify the structure of the rules. The proposed 
rules ensure that service intended for the Office and its employees 
will be properly handled.
    When the Office accepts service of process for an employee in an 
official capacity, the Marshal's or server's return of service form or 
receipt for registered or certified mail should be endorsed with the 
following statement: ``Service accepted in official capacity only.'' 
The Office will not accept service for an employee in his or her 
individual capacity.

Employee Testimony and Production of Documents

    The Patent and Trademark Office had rules for employee testimony 
and document production. 37 CFR part 15a (1996). Those rules were 
specifically tailored to the practices of the Patent and Trademark 
Office and reflected case law regarding the quasi-judicial nature of 
many Patent and Trademark Office employees' positions. Western Elec. 
Co. v. Piezo Technology, Inc., 860 F.2d 428, 431, 8 USPQ2d 1853, 1856 
(Fed. Cir. 1988). The Patent and Trademark Office subsequently relied 
on Department of Commerce rules. 15 CFR part 15, subpart B. The 
Commerce rules materially differ from the former Patent and Trademark 
Office rules in two respects. First, the Department of Commerce rules 
do not address specific and recurrent problems associated with taking 
testimony from quasi-judicial officials at the Patent and Trademark 
Office. Second, the Department of Commerce rules include former 
employees within their scope. The Office will again issue its own rules 
tailored to the practices of the Office, but will follow the example of 
the Department of Commerce in including former employees within the 
scope of the rules (Sec. 104.2).
    The inclusion of former employees within the scope of the rules is 
appropriate since, in many cases, the rules serve to preserve 
privileges of the Office. The Office's privileges are not waived simply 
because an employee leaves the Office. Moreover, testimony by former 
employees may raise other legal issues that might be avoided or 
resolved if the Office is involved early in the process. Cf. Friedman 
v. Lehman, 40 USPQ2d 1206 (D.D.C. 1996) (affirming a sanction against a 
former Patent and Trademark Office employee for testifying about a 
patent on which he had worked). The scope of this subpart has been 
defined to exclude (Sec. 104.21(b)) testimony unrelated to official 
business and, for former employees, expert testimony that is not likely 
to involve an Office privilege. The exception for expert testimony by 
former employees is based on the policies of 18 U.S.C. 207(a)(1) and 
(j)(6), but the scope of the exception is not the same as the scope of 
this criminal statute. The exception has no effect on the scope of the 
criminal statute or the disciplinary rules. Cf. 37 CFR 10.111; 
Friedman, supra.
    The former Patent and Trademark Office rules listed questions that 
employees would not be authorized to answer because the questioning 
would be impermissibly directed to

[[Page 80811]]

discovering the mental processes or expertise of a quasi-judicial 
official. 37 CFR 15a.6(b) (1996). These questions included:
(1) Information about that employee's:
    (i) Background.
    (ii) Expertise.
    (iii) Qualifications to examine or otherwise consider a particular 
patent or trademark application.
    (iv) Usual practice or whether the employee followed a procedure 
set out in any Office manual of practice in a particular case.
    (v) Consultation with another Office employee.
    (vi) Understanding of:
    (A) A patented invention, an invention sought to be patented, or 
patent application, patent, reexamination or interference file.
    (B) Prior art.
    (C) Registered subject matter, subject matter sought to be 
registered, or a trademark application, registration, cancellation, 
opposition, interference, or concurrent use file.
    (D) Any Office manual of practice.
    (E) Office regulations.
    (F) Patent, trademark, or other law.
    (G) The responsibilities of another Office employee.
    (vii) Reliance on particular facts or arguments.
(2) To inquire into the manner in and extent to which the employee 
considered or studied material in performing the quasi-judicial 
function.
(3) To inquire into the bases, reasons, mental processes, analyses, or 
conclusions of that Office employee in performing the quasi-judicial 
function.
    While all of these prohibitions remain valid, they are necessarily 
incomplete because it would be impossible to list every kind of 
question that would be considered impermissible under the case law. For 
instance, in Western Electric, fact questions were also deemed 
impermissible because they were ``disruptive of the decisionmaking 
process and thereby interfere with the PTO's administrative functions'' 
and also because they were inherently prejudicial. 860 F.2d at 432-33, 
8 USPQ2d at 1857. Consequently, rather than codify an incomplete list 
of impermissible questions, the Office will rely on the case law and 
this notice as its basis for declining to authorize testimony in 
response to impermissible questions. The Office will not authorize 
testimony on the validity or enforceability of a patent or registered 
trademark.
    The proposed rules require an employee who receives a subpoena to 
forward the subpoena to the General Counsel immediately 
(Sec. 104.23(a)). The General Counsel will determine the extent to 
which the employee will comply with the subpoena. The General Counsel 
may instruct the employee, orally or in writing, not to give testimony 
or produce documents.
    The proposed rules require (Sec. 104.23(c)(3)) that an affidavit 
accompany the subpoena to assist the General Counsel in making an 
informed decision regarding whether testimony or the production of a 
document should be authorized. The General Counsel may consult or 
negotiate with an attorney for a party, or with the party if not 
represented by an attorney, to refine or limit a demand so that 
compliance is less burdensome or to obtain information necessary to 
determine whether to authorize testimony or produce documents.
    Whenever, in any proceeding involving the United States, a request 
is made by an attorney representing or acting under the authority of 
the United States, the General Counsel will make all necessary 
arrangements for the employee to give testimony on behalf of the United 
States (Sec. 104.25(a)(2)). Where appropriate, the General Counsel may 
require reimbursement to the Office of the expenses associated with an 
employee giving testimony on behalf of the United States.
    The proposed rules on production of documents (especially 
Sec. 104.29) do not affect rights under, and procedures governing 
public access to records pursuant to, the Freedom of Information Act (5 
U.S.C. 552), the Privacy Act (5 U.S.C. 552a), or the Trade Secrets Act 
(18 U.S.C. 1905). Moreover, the proposed rules in this subpart do not 
create any right or benefit, substantive or procedural, enforceable by 
any party against the United States.

Employee Indemnification

    The Patent and Trademark Office operated under Department of 
Commerce rules for employee indemnification, 15 CFR part 15, subpart D. 
The Office will issue its own rules to tailor the rules to the specific 
practices of the Office and to simplify the structure of the rules. 
Essentially, the Office adopts the requirements of the lead agency, the 
Department of Justice (28 CFR part 14), for filing requests for 
indemnification.

Federal Tort Claims Act Claims

    The Patent and Trademark Office operated under Department of 
Commerce rules (15 CFR part 2) for claims under the Federal Tort Claims 
Act (28 U.S.C. 2672). The Office will issue its own rules to tailor the 
rules to the specific practices of the Office and to simplify the 
structure of the rules.
    The Federal Tort Claims Act provides a limited waiver of the United 
States Government's sovereign immunity contingent, in part, on 
submission of a tort claim to the affected agency for an administrative 
determination. The Office of the General Counsel will record the time 
and date the claim was received. The claim may then be forwarded to the 
business unit involved in the claim or another appropriate business 
unit within the Office and request that an investigation be conducted. 
The business unit will conduct an investigation, prepare a file, obtain 
additional information as necessary, and prepare a recommendation for 
award or denial of the claim. If the amount of the proposed award 
exceeds $25,000 (in which case, approval by the Attorney General is 
required), or if consultation with the Department of Justice is 
appropriate (28 CFR 14.6), the General Counsel will provide liaison 
with the Department of Justice.

Regulatory Flexibility Act

    The Office's Acting General Counsel certified to the Chief Counsel 
for Advocacy, Small Business Administration, that the changes proposed 
in this notice, if adopted, would not have a significant impact on a 
substantial number of small entities (Regulatory Flexibility Act, 5 
U.S.C. 605(b)). This rulemaking substantially adopts rules in effect 
for the Department of Commerce, but modifies the rules to make them 
more specific to the United States Patent and Trademark Office, which 
in some cases simplifies the structure of the rules. Since few 
proceedings within the scope of this rulemaking typically arise over 
the course of a year, and since very few involve small businesses, the 
Office anticipates only a slight impact on a minimal number of small 
businesses annually.

Executive Order 13132

Federalism Assessment

    This rulemaking does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (August 4, 1999).

Executive Order 12866

Regulatory Planning and Review

    This rulemaking has been determined to be not significant for 
purposes of Executive Order 12866 (September 30, 1993).

[[Page 80812]]

Paperwork Reduction Act

    This notice of proposed rulemaking contains information collection 
requirements subject to the Paperwork Reduction Act of 1995 (44 U.S.C. 
3501 et seq.). The Office's Records Officer is submitting an 
information collection package to the Office of Management and Budget 
(OMB) for review and approval of the proposed information collections.
    Section 104.4 authorizes petitions to waive rules under this part. 
Such petitions are expected to be rare (assumed to be one each year for 
the purposes of this analysis). Section 104.12 sets requirements for 
addressing and forwarding service of process. Section 104.23 sets 
requirements for addressing and explaining demands for testimony. 
Section 104.25 requires employees giving unauthorized testimony to 
provide written summary of the testimony to the General Counsel. 
Section 104.33 sets requirements for requesting indemnification. 
Section 104.42 sets addressing requirements for tort claims.
    The title, description, and respondent description of the 
information collection is shown below with an estimate of the annual 
reporting burdens. Included in this estimate is the time for reviewing 
instructions, gathering, and maintaining the data needed, and 
completing and reviewing the collection of information. The principal 
impact of the changes in this notice of proposed rulemaking is to 
tailor Department of Commerce rules to the specific context of the 
United States Patent and Trademark Office.
    OMB Number: 0651-00xx.
    Title: Legal processes.
    Form Numbers: None.
    Type of Review: New collection.
    Affected Public: Individuals or households, businesses or other 
for-profit, not-for-profit institutions, Federal Government, and state, 
local, or tribal governments.
    Estimated Number of Respondents: 186.
    Estimated Time Per Response: 0.16 hours.
    Estimated Total Annual Burden Hours: 29.2 hours.
    Needs and Uses: The information is necessary to settle claims under 
the Federal Tort Claims Act (28 U.S.C. 2672), to indemnify employees 
involved in Office-related litigation (28 U.S.C. part 14), and to 
determine whether and how to respond to litigation or to requests for 
discovery involving the Office or its employees.
    Comments are invited on: (1) whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to Richard Torczon, c/o Office of the General Counsel, United 
States Patent and Trademark Office, Washington, DC 20231, or to the 
Office of Information and Regulatory Affairs of OMB, New Executive 
Office Building, 725 17th Street, NW, Room 10235, Washington, DC 20503, 
ATTN: Desk Officer for the United States Patent and Trademark Office.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Claims, Courts, Freedom of 
information, Inventions and patents, Tort claims, Trademarks.

37 CFR Part 104

    Administrative practice and procedure, Claims, Courts, Inventions 
and patents, Tort claims.
    For the reasons stated in the preamble, the United States Patent 
and Trademark Office amends 37 CFR chapter I as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR part 1 is revised to read as 
follows:


    Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.

    2. Section 1.17 is amended by revising paragraph (h) to read as 
follows:


Sec. 1.17  Patent application processing fees.

* * * * *
    (h) For filing a petition to the Commissioner under one of the 
following sections which refers to this paragraph: 130.00

Sec. 1.12--for access to an assignment record.
Sec. 1.14--for access to an application.
Sec. 1.47--for filing by other than all the inventors or a person 
not the inventor.
Sec. 1.53(e)--to accord a filing date.
Sec. 1.59--for expungement and return of information.
Sec. 1.84--for accepting color drawings or photographs.
Sec. 1.91--for entry of a model or exhibit.
Sec. 1.102--to make an application special.
Sec. 1.103(a)--to suspend action in an application.
Sec. 1.138(c)--to expressly abandon an application to avoid 
publication.
Sec. 1.182--for decision on a question not specifically provided 
for.
Sec. 1.183--to suspend the rules.
Sec. 1.295--for review of refusal to publish a statutory invention 
registration.
Sec. 1.313--to withdraw an application from issue.
Sec. 1.314--to defer issuance of a patent.
Sec. 1.377--for review of decision refusing to accept and record 
payment of a maintenance fee filed prior to expiration of a patent.
Sec. 1.378(e)--for reconsideration of decision on petition refusing 
to accept delayed payment of maintenance fee in an expired patent.
Sec. 1.644(e)--for petition in an interference.
Sec. 1.644(f)--for request for reconsideration of a decision on 
petition in an interference.
Sec. 1.666(b)--for access to an interference settlement agreement.
Sec. 1.666(c)--for late filing of an interference settlement 
agreement.
Sec. 1.741(b)--to accord a filing date to an application under 1.740 
for extension of a patent term.
Sec. 5.12--for expedited handling of a foreign filing license.
Sec. 5.15--for changing the scope of a license.
Sec. 5.25--for a retroactive license.
Sec. 104.4--for waiver of a rule in part 104 of this title.
* * * * *
    3. Revise the heading of subchapter B to read as follows:

SUBCHAPTER B--ADMINISTRATION

    4. Add part 104 to subchapter B to read as follows:

PART 104--LEGAL PROCESSES

Subpart A--General Provisions

Sec.
104.2   Definitions.
104.3   Address for mail and service; telephone number.
104.4   Waiver of rules.
Subpart B--Service of Process
104.11   Scope and purpose.
104.12   Acceptance of service of process.
Subpart C--Employee Testimony and Production of Documents in Legal 
Proceedings
104.21   Scope and purpose.
104.23   Demand for testimony or production of documents.
104.25   Expert or opinion testimony.
104.29   Demands or requests in legal proceedings for records 
protected by confidentiality statutes.
Subpart D--Employee Indemnification
104.31   Scope.

[[Page 80813]]

104.33   Procedure for requesting indemnification.
Subpart E--Tort Claims
104.42   Procedure for filing claims.
104.44   Finality of settlement or denial of claims.

    Authority: 35 U.S.C. 2(b)(2), 10, 23, 25; 44 U.S.C. 3101, except 
as otherwise noted.

PART 104--LEGAL PROCESSES

Subpart A--General Provisions


Sec. 104.2  Definitions.

    Demand means a request, order, or subpoena for testimony or 
documents for use in a legal proceeding.
    Director means the Director of the United States Patent and 
Trademark Office.
    Document means any record, paper, and other property held by the 
Office, including without limitation, official letters, telegrams, 
memoranda, reports, studies, calendar and diary entries, maps, graphs, 
pamphlets, notes, charts, tabulations, analyses, statistical or 
informational accumulations, any kind of summaries of meetings and 
conversations, film impressions, magnetic tapes, and sound or 
mechanical reproductions.
    Employee means any current or former officer or employee of the 
Office, including any individual subject to the jurisdiction, 
supervision, or control of the Office.
    Legal proceeding means any pretrial, trial, and posttrial stages of 
existing or reasonably anticipated judicial or administrative actions, 
hearings, investigations, or similar proceedings before courts, 
commissions, boards or other tribunals, foreign or domestic. This 
phrase includes all phases of discovery as well as responses to formal 
or informal requests by attorneys or others involved in legal 
proceedings.
    Office means the United States Patent and Trademark Office, 
including any operating unit in the United States Patent and Trademark 
Office, and its predecessors, the Patent Office and the Patent and 
Trademark Office.
    Official business means the authorized business of the Office.
    General Counsel means the General Counsel of the Office.
    Testimony means a statement in any form, including personal 
appearances before a court or other legal tribunal, interviews, 
depositions, telephonic, televised, or videotaped statements or any 
responses given during discovery or similar proceedings, which response 
would involve more than the production of documents, including a 
declaration under 35 U.S.C. 25 or 28 U.S.C. 1746.
    United States means the Federal Government, its departments and 
agencies, individuals acting on behalf of the Federal Government, and 
parties to the extent they are represented by the United States.


Sec. 104.3  Address for mail and service; telephone number.

    (a) Mail under this part should be addressed to General Counsel, 
United States Patent and Trademark Office, P.O. Box 15667, Arlington, 
VA 22215.
    (b) Service by hand should be made during business hours to the 
Office of the General Counsel, Crystal Park Two, Suite 714, 2121 
Crystal Drive, Arlington, Virginia.
    (c) The Office of the General Counsel may be reached by telephone 
at 703-305-9035 during business hours.


Sec. 104.4  Waiver of rules.

    In extraordinary situations, when the interest of justice requires, 
the General Counsel may waive or suspend the rules of this part, sua 
sponte or on petition of an interested party to the Director, subject 
to such requirements as the General Counsel may impose. Any petition 
must be accompanied by the petition fee set forth in Sec. 1.17(h) of 
this title.

Subpart B--Service of Process


Sec. 104.11  Scope and purpose.

    (a) This subpart sets forth the procedures to be followed when a 
summons or complaint is served on the Office or on the Director or an 
employee in his or her official capacity.
    (b) This subpart is intended, and should be construed, to ensure 
the efficient administration of the Office and not to impede any legal 
proceeding.
    (c) This subpart does not apply to subpoenas, the procedures for 
which are set out in subpart C of this part.
    (d) This subpart does not apply to service of process made on an 
employee personally on matters not related to official business of the 
Office or to the official responsibilities of the employee.


Sec. 104.12  Acceptance of service of process.

    (a) Any summons or complaint to be served in person or by 
registered or certified mail or as otherwise authorized by law on the 
Office, on the Director, or on an employee in his or her official 
capacity, shall be served as indicated in Sec. 104.3.
    (b) Any employee of the Office served with a summons or complaint 
shall immediately notify, and shall deliver the summons or complaint 
to, the Office of the General Counsel.
    (c) Any employee receiving a summons or complaint shall note on the 
summons or complaint the date, hour, and place of service and whether 
service was by hand or by mail.
    (d) When a legal proceeding is brought to hold an employee 
personally liable in connection with an action taken in the conduct of 
official business, rather than liable in an official capacity, the 
employee by law is to be served personally with process. Service of 
process in this case is inadequate when made only on the General 
Counsel. An employee sued personally for an action taken in the conduct 
of official business shall immediately notify and deliver a copy of the 
summons or complaint to the General Counsel.
    (e) An employee sued personally in connection with official 
business may be represented by the Department of Justice at its 
discretion (28 CFR 50.15 and 50.16).
    (f) The Office will only accept service of process for an employee 
in the employee's official capacity.

Subpart C--Employee Testimony and Production of Documents in Legal 
Proceedings


Sec. 104.21  Scope and purpose.

    (a) This subpart sets forth the policies and procedures of the 
Office regarding the testimony of employees as witnesses in legal 
proceedings and the production or disclosure of information contained 
in Office documents for use in legal proceedings pursuant to a demand.
    (b) Exceptions. This subpart does not apply to any legal proceeding 
in which:
    (1) An employee is to testify regarding facts or events that are 
unrelated to official business; or
    (2) A former employee is to testify as an expert in connection with 
a particular matter in which the former employee did not participate 
personally while at the Office.


Sec. 104.23  Demand for testimony or production of documents.

    (a) Whenever a demand for testimony or for the production of 
documents is made upon an employee, the employee shall immediately 
notify the General Counsel at the telephone number or addresses in 
Sec. 104.3 and make arrangements to send the subpoena to the General 
Counsel promptly.
    (b) An employee may not give testimony, produce documents, or 
answer inquiries from a person not employed by the Office regarding 
testimony or documents subject to a demand or a potential demand under 
the provisions of this subpart without the approval of the General 
Counsel. The General Counsel may authorize the provision of certified 
copies not

[[Page 80814]]

otherwise available under part 1 of this title subject to payment of 
applicable fees under Sec. 1.19 of this chapter.
    (c)(1) Demand for testimony or documents. A demand for the 
testimony of an employee under this subpart shall be addressed to the 
General Counsel as indicated in Sec. 104.3.
    (2) Subpoenas. A subpoena for employee testimony or for a document 
shall be served in accordance with the Federal Rules of Civil or 
Criminal Procedure or applicable state procedure, and a copy of the 
subpoena shall be sent to the General Counsel as indicated in 
Sec. 104.3.
    (3) Affidavits. Except when the United States is a party, every 
demand shall be accompanied by an affidavit or declaration under 28 
U.S.C. 1746 or 35 U.S.C. 25(b) setting forth the title of the legal 
proceeding, the forum, the requesting party's interest in the legal 
proceeding, the reason for the demand, a showing that the desired 
testimony or document is not reasonably available from any other 
source, and, if testimony is requested, the intended use of the 
testimony, a general summary of the desired testimony, and a showing 
that no document could be provided and used in lieu of testimony.
    (d) Failure of the attorney to cooperate in good faith to enable 
the General Counsel to make an informed determination under this 
subpart may serve as a basis for a determination not to comply with the 
demand.
    (e) A determination under this subpart to comply or not to comply 
with a demand is not a waiver or an assertion of any other ground for 
noncompliance, including privilege, lack of relevance, or technical 
deficiency.
    (f) Noncompliance. If the General Counsel makes a determination not 
to comply, but the subpoena is not withdrawn or modified and Department 
of Justice representation cannot be arranged, the employee should 
appear at the time and place set forth in the subpoena. If legal 
counsel cannot appear on behalf of the employee, the employee should 
produce a copy of these rules and state that the General Counsel has 
advised the employee not to provide the requested testimony or to 
produce the requested document. If a legal tribunal rules that the 
demand in the subpoena must be complied with, the employee shall 
respectfully decline to comply with the demand, citing United States ex 
rel. Touhy v. Ragen, 340 U.S. 462 (1951).


Sec. 104.25  Expert or opinion testimony.

    (a)(1) If the General Counsel authorizes an employee to give 
testimony in a legal proceeding not involving the United States, the 
testimony, if otherwise proper, shall be limited to facts within the 
personal knowledge of the employee. Employees, with or without 
compensation, shall not provide expert testimony in any legal 
proceedings regarding Office information, subjects, or activities 
except on behalf of the United States or a party represented by the 
United States Department of Justice.
    (2) The General Counsel may authorize an employee to appear and 
give the expert or opinion testimony upon the requester showing, 
pursuant to Sec. 104.4 of this part, that exceptional circumstances 
warrant such testimony and that the anticipated testimony will not be 
adverse to the interest of the Office or the United States.
    (b)(1) If, while testifying in any legal proceeding, an employee is 
asked for expert or opinion testimony regarding Office information, 
subjects, or activities, which testimony has not been approved in 
advance in writing in accordance with the regulations in this subpart, 
the witness shall:
    (i) Respectfully decline to answer on the grounds that such expert 
or opinion testimony is forbidden by this subpart;
    (ii) Request an opportunity to consult with the General Counsel 
before giving such testimony; and
    (iii) Explain that upon such consultation, approval for such 
testimony may be provided.
    (2) If the tribunal conducting the proceeding then orders the 
employee to provide expert or opinion testimony regarding Office 
information, subjects, or activities without the opportunity to consult 
with the General Counsel, the employee shall respectfully refuse to 
provide such testimony, citing United States ex rel. Touhy v. Ragen, 
340 U.S. 462 (1951).
    (c) If an employee is unaware of the regulations in this subpart 
and provides expert or opinion testimony regarding Office information, 
subjects, or activities in a legal proceeding without the 
aforementioned consultation, the employee shall, as soon after 
testifying as possible, inform the General Counsel that such testimony 
was given and provide a written summary of the expert or opinion 
testimony provided.
    (d) Proceeding where the United States is a party. In a proceeding 
in which the United States is a party or is representing a party, an 
employee may not testify as an expert or opinion witness for any party 
other than the United States.


Sec. 104.29  Demands or requests in legal proceedings for records 
protected by confidentiality statutes.

    Demands in legal proceedings for the production of records, or for 
the testimony of employees regarding information protected by the 
confidentiality provisions of the Patent Act (35 U.S.C. 122), the 
Privacy Act (5 U.S.C. 552a), the Trade Secrets Act (18 U.S.C. 1905), or 
any other confidentiality statute, must satisfy the requirements for 
disclosure set forth in those statutes and associated rules before the 
records may be provided or testimony given. Where the General Counsel 
determines an applicable confidentiality statute requires disclosure, 
this subpart will not apply.

Subpart D--Employee Indemnification


Sec. 104.31  Scope.

    The procedure in this subpart shall be followed if a civil action 
or proceeding is brought, in any court, against an employee (including 
the employee's estate) for personal injury, loss of property, or death, 
resulting from the employee's activities while acting within the scope 
of the employee's office or employment. When the employee is 
incapacitated or deceased, actions required of an employee should be 
performed by the employee's executor, administrator, or comparable 
legal representative.


Sec. 104.33  Procedure for requesting indemnification.

    (a) After being served with process or pleadings in such an action 
or proceeding, the employee shall within five (5) calendar days of 
receipt, deliver to the General Counsel all such process and pleadings 
or an attested true copy thereof, together with a fully detailed report 
of the circumstances of the incident giving rise to the court action or 
proceeding.
    (b)(1) An employee may request indemnification to satisfy a 
verdict, judgment, or award entered against that employee only if the 
employee has timely satisfied the requirements of paragraph (a) of this 
section.
    (2) No request for indemnification will be considered unless the 
employee has submitted a written request through the employee's 
supervisory chain to the General Counsel with:
    (i) Appropriate documentation, including copies of the verdict, 
judgment, appeal bond, award, or settlement proposal;
    (ii) The employee's explanation of how the employee was acting 
within the scope of the employee's employment; and

[[Page 80815]]

    (iii) The employee's statement of whether the employee has 
insurance or any other source of indemnification.

Subpart E--Tort Claims

    Authority: 28 U.S.C. 2672; 35 U.S.C. 2(b)(2); 44 U.S.C. 3101; 28 
CFR part 14.


Sec. 104.42  Procedure for filing claims.

    Administrative claims against the Office filed pursuant to the 
administrative claims provision of the Federal Tort Claims Act (28 
U.S.C. 2672) and the corresponding Department of Justice regulations 
(28 CFR part 14) shall be filed with the General Counsel as indicated 
in Sec. 104.3.


Sec. 104.44  Finality of settlement or denial of claims.

    Only a decision of the Director or the General Counsel regarding 
settlement or denial of any claim under this subpart may be considered 
final for the purpose of judicial review.

    Dated: December 11, 2000.
Q. Todd Dickinson,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 00-32314 Filed 12-21-00; 8:45 am]
BILLING CODE 3510-16-P