[Federal Register Volume 66, Number 177 (Wednesday, September 12, 2001)]
[Rules and Regulations]
[Pages 47387-47392]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-22854]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1 and 104

[Docket No. 010808202-1202-01]
RIN 0651-AB22


Legal Processes

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

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (``USPTO'' or 
``Office'') is implementing rules relating to civil actions and claims 
involving the Office. Specifically, the rules 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: Effective September 12, 2001.

FOR FURTHER INFORMATION CONTACT: Bernard J. Knight, Jr., Deputy General 
Counsel for General Law, at 703-308-2000.

SUPPLEMENTARY INFORMATION: This rule was proposed in a notice of 
proposed rulemaking published at 65 FR 80810 on December 22, 2000. 
Background information on this rule may be found in that notice.

Discussion of Comments

    Comment: Proposed section 104.23 purports to prohibit ``employees'' 
(which include ex-employees) from giving expert testimony regarding 
``Office information, subjects, or activities.'' In patent infringement 
actions, it is common for a party to put up an ex-USPTO employee (often 
a very senior employee, such as a former Commissioner) as an expert 
witness to explain the procedures of the USPTO to

[[Page 47388]]

the judge or jury. It is unclear that the Office has the authority to 
prohibit ex-employees from so testifying, but in any event the use of 
ex-USPTO employees as expert witnesses on such general subjects should 
not be prohibited. If this is not the intent of proposed section 104.23 
then the rule should be clarified.
    Response: Under the provisions of 37 CFR 104.21(b)(2), former 
employees are excluded from the scope and purpose of Subpart C with 
respect to matters in which the former employee did not participate 
personally while at the Office. In addition, under 37 CFR 104.23(a)(2), 
the General Counsel may authorize an employee to give expert testimony 
in exceptional circumstances and purpose. Consequently, the rule does 
not prohibit former employees from giving expert testimony in 
appropriate circumstances.
    Comment: Generally, it is not clear that the Office should preclude 
an investigation into whether inequitable conduct or fraud on the 
Office had been practiced in a given patent application. Interested 
parties (e.g., the defendant in an infringement action) should be 
permitted to inquire into certain events if fraud is alleged. For 
instance, if an exhibit had been shown at an interview and it were 
alleged that the exhibit (which had since been destroyed) had 
fraudulently represented the invention, there would be no way to obtain 
that information absent interviewing the Examiner--the interview 
summary sheet would not be effective here. Permitting such discovery 
would impose only a slight burden on the Office and would not be 
inconsistent with the policies discussed in the notice of the proposed 
rule. Moreover, to the extent that permitting such inquiry would assist 
in uncovering and deterring fraud and inequitable conduct, other 
important policies would be furthered. It may be appropriate to treat 
requests for such discovery under proposed section 104.3 (relating to 
exceptional circumstances). If such is the case, then the Office is 
requested to respond to this comment by indicating that lawsuits in 
which fraud/inequitable conduct issues are raised are sufficiently 
``exceptional'' that requests for discovery into such allegations will 
be favorably considered (or at least deemed appropriately raised) under 
this rule.
    Response: The rule does not prohibit a party from calling an 
employee as a fact witness. The rules do prevent inquiry into an 
examiner's state of mind. For example, subjective state of mind of the 
employee is irrelevant to an inequitable-conduct inquiry. If fact 
testimony proves to be inadequate, then the parties may avail 
themselves of the provisions of section 104.3, which provides that the 
General Counsel may waive or suspend the rules in extraordinary 
circumstances.
    Comment: The application of the Department of Commerce (``DOC'') 
rules and the proposed USPTO rules to former employees is unnecessary 
to protect the legitimate interests of the Office. The existing USPTO 
rules of practice preclude former employees from taking any action 
which gives an appearance of impropriety. 37 CFR 10.110 and 10.111. 
Those rules give adequate protection to the USPTO for voluntary 
testimony by former employees concerning matters the former employees 
worked on while employed by the USPTO. Friedman v. Lehman, 40 USPQ2d 
1206 (D.D.C. 1996).
    Response: Part 10 only applies to registered patent practitioners 
and trademark attorneys practicing before the USPTO. If the former 
employee is not practicing before the USPTO, Part 10 does not apply. 
Thus, this proposed rule is intended to apply to all employees, not 
just those employees who practice before the USPTO. Indeed, some former 
employees do not practice before the Office. Further, Part 10 is 
intended to protect the public from improper conduct by practitioners, 
while these rules are intended in part to protect the USPTO's 
deliberative or otherwise confidential information from unauthorized 
disclosure.
    Comment: If, however, the USPTO does adopt rules applying to former 
employees, it should be made clear that such rules would not have 
retroactive effect, so that activity that was considered proper when 
performed would not now become improper and subject a former employee 
to some type of disciplinary action. In this regard, it would be 
desirable to clarify what relationship any violation of the proposed 
rules would have to misconduct under the disciplinary rules of 37 CFR 
Part 10.
    Response: The rules are not given retroactive effect. Under the 
provisions of 37 CFR 10.23, misconduct potentially could include the 
actions of an employee who provided testimony that was not authorized 
by the rules. This issue, however, is within the jurisdiction of the 
Director, Office of Enrollment and Discipline, and is not properly 
addressed in these rules. Note, however, that the DOC rules have 
explicitly applied to former employees since 1995.
    Comment: In addition, consideration should also be given to the 
effect which the current DOC rules will have with respect to former 
USPTO employees which proposed Sec. 104.21 (b) (2) would exempt. Such 
former USPTO employees are also former DOC employees and the proposed 
rules do not appear to address this question.
    Response: While USPTO is a separate agency within the DOC, only the 
USPTO rules are applicable to current and former USPTO employees with 
respect to testimony related to official USPTO business. Of course, a 
former USPTO employee who is also a current or former employee of 
another DOC organization would be subject to the DOC rules with respect 
to matters related to that organization. Moreover, the exception 
provided by Sec. 104.21(b)(2) for former employees, is consistent with 
DOC policy regarding similar testimony of former DOC employees.
    Comment: With respect to information sought by subpoena addressed 
in Sec. 104.22, the USPTO should be required to appear if it opposes a 
disclosure of information and should not be able to shift that 
obligation to the former employee. Thus, the commenter opposes the 
proposed rules insofar as they would enable the USPTO to sanction a 
former employee for failure to comply with proposed Sec. 104.22(f) when 
the Office has been properly notified but does not send legal counsel 
to appear and contest the subpoena on behalf of the employee.
    Response: The purpose of Sec. 104.22(f) is not to ``shift that 
obligation to the former employee.'' The USPTO intends to seek 
Department of Justice representation for former employees when the 
General Counsel makes a determination under the rules that an employee 
should not comply with a subpoena. In those cases where compliance with 
a subpoena is commanded before Department of Justice representation can 
be arranged, the employee must, nevertheless, refuse to comply. In 
order to minimize the occurrence of this event, Sec. 104.22(a) requires 
employees to immediately notify the General Counsel when they are 
served with a subpoena.
    Comment: It is noted that unlike the DOC rules which define 
employee as including ``current or former employees'' (15 CFR 15.12(f)) 
and then consistently use the term ``employee'', the proposed rules use 
the same definition as the DOC rules but then make a reference to 
``former employee'' in Sec. 104.21(b)(2). While this appears 
appropriate for Sec. 104.21(b)(2), other sections seem to apply solely 
to a current employee but are not so limited. We believe that such 
potential ambiguities will render application of the rules unclear.

[[Page 47389]]

    Response: The term ``employee'' is consistently used in the rules 
to refer to both current and former employees. The use of the term 
``former employee'' in Sec. 104.21(b)(2), which is the only section 
that does not apply to both current and former employees, does not 
create ambiguity.
    Comment: The USPTO should clarify that proposed section 
104.21(b)(2), which prohibits former employees from testifying as to 
matters in which they ``participate[d] personally,'' does not prohibit 
former high ranking USPTO officials or employees from providing expert 
testimony in court on USPTO procedures during the period when the 
official or employee was working at the USPTO.
    Response: The term ``participated personally'' is derived from 18 
U.S.C. 207(a) and is used here in keeping with the interpretation the 
Office of Government Ethics has given the phrase at 5 CFR 2637.201(d).

Other Revisions to the Proposed Rule

    A new section 104.4 has been added to clarify that nothing in the 
rules waives or limits any requirement under the Federal Rules of 
Criminal or Civil Procedure. Subsection 104.24(f) has been modified to 
clarify the Office's duty to seek Department of Justice representation 
for the employee involved when the General Counsel makes a decision not 
to comply with a subpoena. In addition, other minor changes have been 
made to the wording of the proposed rule.

Other Considerations

    This rule is not significant under Executive Order 12866.
    This final rule involves information collection requirements which 
are subject to review by the Office of Management and Budget (OMB) 
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The 
collection of information involved in this final rule has been reviewed 
and previously approved by OMB under control number 0651-0046. The 
USPTO is not resubmitting an information collection package to OMB for 
its review and approval because the changes in this final rule do not 
affect the information collection requirements associated with the 
information collection under OMB control number 0651-0046.
    In accordance with the Regulatory Flexibility Act (5 U.S.C. 
605(b)), USPTO has certified that this rule will not have a significant 
impact on a substantial number of small businesses. The factual basis 
for this certification was provided in the Notice of Proposed 
Rulemaking published on December 22, 2000, 65 FR 80810. The factual 
basis for the certification remains the same for this final rule, and 
therefore, need not be repeated.
    This rulemaking does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (August 4, 1999).

List of Subjects in 37 CFR Parts 1 and 104

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


    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 continues 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       $130.00
 the following sections which refers to this paragraph.....
    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 Sec.  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.  104.3--for waiver of a rule in Part 104 of this
     title
 


[[Page 47390]]

* * * * *

    3. Redesignate subchapter B to read as follows:

SUBCHAPTER B--ADMINISTRATION

    4. Add Part 104 to read as follows:

PART 104--LEGAL PROCESSES

Subpart A--General Provisions

Sec.
104.1  Definitions.
104.2  Address for mail and service; telephone number.
104.3  Waiver of rules.
104.4  Relationship of this Part to the Federal Rules of Civil and 
Criminal Procedure.
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.
104.22  Demand for testimony or production of documents.
104.23  Expert or opinion testimony.
104.24  Demands or requests in legal proceedings for records 
protected by confidentiality statutes.
Subpart D--Employee Indemnification
104.31  Scope.
104.32  Procedure for requesting indemnification.
Subpart E--Tort Claims
104.41  Procedure for filing claims.
104.42  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 indicated.

Subpart A--General Provisions


Sec. 104.1  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.
    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. 104.2  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 905, 2121 
Crystal Drive, Arlington, Virginia.
    (c) The Office of the General Counsel may be reached by telephone 
at 703-308-2000 during business hours.


Sec. 104.3  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.


Sec. 104.4  Relationship of this Part to the Federal Rules of Civil or 
Criminal Procedure.

    Nothing in this part waives or limits any requirement under the 
Federal Rules of Civil or Criminal Procedure.

Subpart B--Service of Process


Sec. 104.11  Scope and purpose.

    (a) This subpart sets forth the procedures to be followed when a 
summons and 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.
    (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 and 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. 104.2.
    (b) Any employee of the Office served with a summons and complaint 
shall immediately notify, and shall deliver the summons and complaint 
to, the Office of the General Counsel.
    (c) Any employee receiving a summons and complaint shall note on 
the summons and 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. See Fed. R. 
Civ. P. 4(e). An employee sued personally for an action taken in the 
conduct of official business shall immediately notify and deliver a 
copy of the summons and 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

[[Page 47391]]

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. 104.22  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 Office of the General Counsel at the telephone number or 
addresses in Sec. 104.2 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 otherwise available under Part 1 of this title subject to 
payment of applicable fees under Sec. 1.19.
    (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. 104.2.
    (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. 104.2.
    (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, he or she will seek Department of Justice representation for 
the employee and will attempt to have the subpoena modified or quashed. 
If Department of Justice representation cannot be arranged, the 
employee should appear at the time and place set forth in the subpoena. 
In such a case, 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 nor 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. 104.23  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. 104.3 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. 104.24  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.

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.

[[Page 47392]]

Sec. 104.32  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
    (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. 104.41  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. 104.2.


Sec. 104.42  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: September 6, 2001.
Nicholas P. Godici,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 01-22854 Filed 9-11-01; 8:45 am]
BILLING CODE 3510-16-P