[Federal Register Volume 69, Number 121 (Thursday, June 24, 2004)]
[Rules and Regulations]
[Pages 35428-35459]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 04-13766]



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Part II





Patent and Trademark Office





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37 CFR Parts 1, 10, and 11



Changes to Representation of Others Before the United States Patent and 
Trademark Office; Final Rule

  Federal Register / Vol. 69, No. 121 / Thursday, June 24, 2004 / Rules 
and Regulations  

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PATENT AND TRADEMARK OFFICE

37 CFR Parts 1, 10 and 11

[Docket No.: 2002-C-005]
RIN 0651-AB55


Changes to Representation of Others Before the United States 
Patent and Trademark Office

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office or 
USPTO) is updating the procedures regarding recognition to practice 
before the Office in patent cases. The update is done to take advantage 
of computerized delivery of examinations, and to enable registration 
applicants to benefit in several ways, including scheduling the 
examination a their convenience and having more opportunities to take 
the examination.

DATES: Effective Date: July 26, 2004.

FOR FURTHER INFORMATION CONTACT: Harry I. Moatz ((703) 305-9145), 
Director of Enrollment and Discipline (OED Director), directly by 
phone, or by facsimile to (703) 305-4136, marked to the attention of 
Mr. Moatz, or by mail addressed to: Mail Stop OED--Ethics Rules, U.S. 
Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-
1450.

SUPPLEMENTARY INFORMATION: The Office published proposed rules 
regarding ``Changes to Representation of Others Before The United 
States Patent and Trademark Office'' on December 12, 2003 (68 FR 69442) 
and provided a sixty-day comment period that ended on February 10, 
2004. The proposed rules included Subpart A, General Provisions, 
Subpart B, Recognition To Practice Before The Office, Subpart C, 
Investigations and Disciplinary Proceedings, and Subpart D, United 
States Patent and Trademark Office Rules of Professional Conduct. The 
Office published in the Federal Register an initial extension on 
January 29, 2004 (69 FR 4269) of the period for public comment 
regarding the ethics rules in Subpart D of the proposed rules. 
Additional time for public comment was allowed for consideration of 
whether the Rules for Professional Conduct should include the revisions 
to the Model Rules as amended by the American Bar Association at the 
end of its February 2002 Midyear Meeting, also known as the Ethics 2000 
revision. The Office thereafter published in the Federal Register 
notice on March 3, 2004 (69 FR 9986) of an extension for public comment 
on proposed rules 1.4(d)(2), 1.8(a)(2)(iii)(A), 1.21(a)(6) through 
(a)(9), 1.21(a)(11), 1.21(a)(12), 2.11, 2.17, 2.24, 2.33, 2.61, 
11.2(b)(4) through 11.2(b)(7), 11.3(b) and (c), 11.5(b), 11.8(d), 
11.9(c) (last two sentences), 11.9(d), 11.10(c) (second sentence), 
11.10(d) (second sentence), 11.10(e) (second sentence), 11.11(b) 
through (f), 11.12 through 11.62, and 11.100 through 11.900 as well as 
the definitions in proposed rule 11.1 of terms that are used only in 
rules in Subparts B, C and D, USPTO Rules of Professional Conduct.
    Time was not extended to comment upon the provisions in proposed 
rules 1.1, 1.21(a)(1) through (a)(5), 1.21(a)(10), 1.31, 1.33(c), 
1.455(a), 11.2(a) through 11.2(b)(3), 11.2(c) through 11.2(e), 11.3(a) 
and (d), 11.4 through 11.5(a), 11.6 through 11.8(c), 11.9(a) through 
11.9(c) (first sentence), 11.10(a) through 11.10(c) (first sentence), 
11.10(d) (first sentence), 11.10(e) (first and third sentences), and 
11.11(a), as well as the definitions in proposed rule 11.1 of terms 
used in the rules.
    The rules adopted at this time apply only prospectively.
    At this time, nearly 29,000 individuals are registered as patent 
attorneys and agents, of whom about 80% have indicated that they are 
attorneys. Most have been registered by taking and passing a paper 
registration examination that was usually offered twice a year. The 
existing rules, adopted in 1985, largely continued the practices and 
procedures adopted and followed since the 1930's. They were well suited 
to support delivery of a paper registration examination twice a year to 
several hundred applicants.
    The number of persons seeking registration has grown from a few 
hundred to several thousand annually. Giving the examination twice a 
year requires biannual filing of thousands of applications. More than 
6,000 persons filed applications seeking registration in 2003. The 
frequency of giving the examination has increased from once each nine 
months in the 1970's to twice annually in the last several years.
    Under the new computerized examination procedure, there are no 
fixed application deadlines. Applications may be submitted throughout 
the year. The applications will be reviewed, and persons admitted to 
the examination will schedule the examination at their convenience with 
a commercial entity engaged to deliver the examination. The commercial 
entity is equipped to provide the exam at over 400 locations around the 
United States. A person approved to take the examination will schedule 
with the contractor the date and location where he or she desires to 
take the examination. The person will have a ninety-day window, 
beginning five business days after the mailing date of the letter 
admitting the person to the examination, within which he or she must 
take the examination.
    Providing the examination in this manner will benefit persons 
seeking registration by enabling them to apply at any time, schedule 
the examination at a location and date convenient to them, and receive 
their results more quickly. Those failing the examination will be able 
to re-take the examination within approximately thirty days rather than 
waiting six months, as has previously been the case.
    Applicants for registration will benefit in several ways from a 
computerized examination. It is now possible to deliver the 
registration examination on a daily basis by computer. They will be 
able to take the examination more frequently, get their results sooner, 
and be registered sooner. There will be no registration application 
filing deadline. With more than 400 locations around the country where 
the examination will be offered each business day, the examination 
sites will be conveniently closer to applicants. Applicants will also 
be able to reschedule the examination.
    The computerized examination will be offered beginning with the 
effective date of this rule package. The examination can be 
administered each business day throughout the year. The format of the 
examination will remain unchanged. The examination will have 100 
multiple choice questions--50 in the morning session and 50 in the 
afternoon session. During an initial period while the Office observes 
the implementation of the computerized examination, applicants will 
receive exam results approximately six weeks after electronic testing. 
Thereafter, immediate exam results will be provided on-site.
    Computer-based licensure testing will not be unique to the Office. 
A wide variety of professional organizations utilize computer-based 
testing for their licensure. For example, both the General Securities 
Representative Examination (Series 7), and the Uniform Certified Public 
Accountant (CPA) Examination are administered on computers.
    Applicants will benefit from the program by the elimination of 
application filing deadlines and the new ability to schedule the exam 
at their convenience. In the past, the cyclical nature of giving the 
examination twice a year was inefficient to both the Office

[[Page 35429]]

and persons seeking registration. Invariably, applications were filed 
late and were necessarily disapproved. Many incomplete applications 
could not be completed by the deadline. In short, offering the exam 
twice a year meant that application deficiencies could not be cured 
until the next time the test was offered--approximately six months 
later.
    Applicants benefit by being able to schedule when they want to take 
the examination. Applicants can schedule the examination date within a 
ninety-day period. They can also reschedule the examination on another 
date within the ninety-day period for any reason.
    The old method of paper testing required a significant devotion of 
Office of Enrollment and Discipline (OED) resources during peak periods 
to process and evaluate applications, as well as process the results. A 
majority of applicants used to file their application just prior to or 
on the deadline. Obviously, applicants will be better served if their 
examination results are received more quickly. Those who pass the 
examination and have no good moral character and reputation issues will 
be registered sooner. The Office is better served by having a less 
cyclical exam process. The computerized examination will produce a more 
even flow of new applications for processing. The computerized 
examination can be administered daily, and its results released more 
quickly.
    The new rules do not change the scientific and technical training 
requirements for registration.
    The new rules change procedures for the examination. These changes 
will improve the Office's processes for handling applications for 
registration, petitions, and moral character investigations.

Discussion of Specific Rules

    Section 1.1: Section 1.1(a)(5) is added to provide an address for 
correspondence directed to OED in enrollment, registration and 
investigation matters.
    Section 1.21: Section 1.21(a) is added to designate the 
registration examination fee in paragraph (1)(ii)(A) for test 
administration by the commercial entity, and in paragraph (1)(ii)(B) 
for test administration by the USPTO.
    Section 1.21(a)(5)(i) is added for a new fee for review by the OED 
Director of an initial decision by a staff member of OED.
    Section 1.21(a)(5) has been redesignated (a)(5)(ii), and section 
citation of Sec.  10.2(c) is amended to Sec.  11.2(d).
    Sections 1.21(a)(6) through 1.21(a)(9) are reserved.
    Section 1.21(a)(10) is added for a fee for any of the following: On 
application by a person for recognition or registration after 
disbarment or suspension on ethical grounds, or resignation pending 
disciplinary proceedings in any other jurisdiction; on petition for 
reinstatement by a person excluded or suspended on ethical grounds, or 
excluded on consent from practice before the Office; on application by 
a person for recognition or registration who is asserting 
rehabilitation from prior conduct that resulted in an adverse decision 
in the Office regarding the person's moral character; and on 
application by a person for recognition or registration after being 
convicted of a felony or crime involving moral turpitude or breach of 
fiduciary duty. For persons suspended or disbarred, the fee applies to 
a person after suspension or disbarment on ethical grounds, as opposed 
to a person suspended on only non-ethical grounds, such as failure to 
pay State bar dues or failure to complete continuing legal education 
requirements. The amount of the fee, $1,600, recovers a portion of the 
average cost of processing an application filed by a person described 
in this section.
    Section 1.31: This section is amended to revise the references to 
Sec. Sec.  11.6 and 11.9, respectively.
    Section 1.33: Section 1.33(c) is amended to revise the references 
to Sec. Sec.  11.5 and 11.11, respectively.
    Section 1.455: This section is amended to revise the reference to 
Sec.  11.9.
    Title 37 of the Code of Federal Regulations, Part 10, is amended as 
follows:
    Section 10.2: This section is removed and reserved.
    Section 10.3: This section is removed and reserved.
    Section 10.5: This section is removed and reserved.
    Section 10.6: This section is removed and reserved.
    Section 10.7: This section is removed and reserved.
    Section 10.8: This section is removed and reserved.
    Section 10.9: This section is removed and reserved.
    Section 10.10: This section is removed and reserved.
    Section 10.11: This section is revised by deleting paragraph (a) 
and deleting the designation (b) of paragraph (b).
    Title 37 of the Code of Federal Regulations, Part 11, is added as 
follows:
    Section 11.1: This section defines terms used in Part 11. The 
defined terms include attorney, belief, conviction, crime, Data Sheet, 
fiscal year, fraud, good moral character and reputation, knowingly, 
matter, OED, OED Director, OED Director's representative, Office, 
practitioner, proceeding before the Office, reasonable, registration, 
roster, significant evidence of rehabilitation, state, substantial, 
suspend or suspension, United States, and USPTO Director. These terms 
are used in the rules that address the recognition of individuals to 
practice before the Office. An ``application for reissue'' has been 
added to the definition of ``proceeding before the Office'' to clarify 
its inclusion within the definition. ``Other jurisdiction'' has been 
added to the definition of ``suspend'' or ``suspension'' to clarify 
that the terms include temporary debarring from practice before the 
Office or another jurisdiction.
    Section 11.2: Section 11.2(a) is added to provide for the 
appointment of the OED Director.
    Section 11.2(b) sets forth the duties of the OED Director. The 
duties of the OED Director include managing the Office of Enrollment 
and Discipline, receiving and acting upon applications, and conducting 
investigations concerning the moral character and reputation of 
individuals seeking registration. The duties also include conducting 
investigations into possible violations by practitioners of 
Disciplinary Rules, initiating disciplinary proceedings under Sec.  
10.132(b) with the consent of the Committee on Discipline, and 
performing such other duties in connection with investigations and 
disciplinary proceedings as may be necessary. The investigation and 
disciplinary duties recited in Sec.  10.2(b) have been moved to Sec.  
11.2(b)(4) to consolidate in one section all of the OED Director's 
duties. The provisions in proposed Sec.  11.2(b)(4) remain subject to 
comment. The investigation and disciplinary duties in Sec.  11.2(b)(4) 
will be subject to change following the comments on proposed Sec.  
11.2(b)(4).
    Sections 11.2(b)(5) through (b)(7) are reserved.
    Section 11.2(c) is added to provide a requirement that any petition 
from any action or requirement of the staff of OED reporting to the OED 
Director shall be taken to the OED Director. A provision added to the 
final rule requiring the petition to be filed within sixty days from 
the mailing date of the action or notice from which relief is requested 
clarifies the point in time, not otherwise provided for in the proposed 
rule, from which the petition must be filed. A fee, required by 37 CFR 
1.21(a)(5), would be charged for the petition. A petition not

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filed within the sixty-day period will be dismissed as untimely.
    Section 11.2(d) is added to provide for a petition from a final 
decision of the OED Director to the USPTO Director. A provision added 
to the final rule requiring the petition to be filed within sixty days 
from the mailing date of the final decision of the OED Director 
clarifies the point in time, not otherwise provided for in the proposed 
rule, from which the petition must be filed. The petition must be 
accompanied by the fee in Sec.  1.21(a)(5). The petition will be 
dismissed if not filed within sixty days from the mailing date of the 
final decision of the OED Director.
    Section 11.3: Section 11.3 is added to provide for suspension of 
any requirement of the regulations of Part 11 which is not a 
requirement of the statutes in an extraordinary situation, when justice 
requires.

Recognition To Practice Before the USPTO

    Section 11.4: Section 11.4 is reserved. Upon further consideration, 
the Office has concluded that it is unnecessary to provide for a 
Committee on Enrollment and has eliminated it in the rules. The 
Committee's principal function has been the vetting of registration 
examination questions. Office personnel have been developing a data 
bank of questions for the registration examination and examiner 
certification test. These personnel are not limited to members of the 
Committee. Further, the proposed rules, Sec.  11.7(j), contemplated 
using the Committee to conduct hearings about an individual's good 
moral character and reputation. The final rules provide an individual 
an opportunity to create a record, to respond to the OED Director's 
show cause order, and to obtain review of the OED Director's decision 
by petition to the USPTO Director. An individual dissatisfied with the 
decision of the OED Director may petition the USPTO Director under 
Sec.  11.2(d) for review of the decision. Accordingly, the rules will 
not provide for or utilize a Committee on Enrollment to conduct a 
hearing for good moral character and reputation determinations.
    Section 11.5: Section 11.5 is added to provide for maintaining a 
single register of attorneys and agents registered to practice before 
the Office.
    Section 11.6: Section 11.6(a) is added to provide qualifications 
for attorneys to register to practice before the Office in patent 
matters.
    Section 11.6(b) is added to provide qualifications for non-
attorneys to register as patent agents to practice before the Office in 
patent matters.
    Section 11.6(c) is added to provide for qualifications for limited 
reciprocal registration of any foreign person who is registered in good 
standing before the patent office of the country in which he or she 
resides and practices.
    Section 11.6(d) is added to provide that the Chief Administrative 
Patent Judge or Vice Chief Administrative Patent Judge of the Board of 
Patent Appeals and Interferences will determine whether and the 
circumstances under which an attorney who is not registered may take 
testimony for an interference under 35 U.S.C. 24, or under Sec.  1.672 
of this subchapter.
    Section 11.7: Sections 11.7(a)(1) and 11.7(a)(2) require that an 
individual apply for registration, and establish possession of good 
moral character and reputation, legal, scientific and technical 
qualifications, and competence to advise and assist patent applicants.
    Section 11.7(b)(1)(i) requires that an individual file a complete 
application for registration on a form supplied by the OED Director, 
pay the fees required by Sec.  1.21(a)(1), and present satisfactory 
proof of sufficient basic training in scientific and technical matters. 
Aliens are also required to present affirmative proof that recognition 
to practice before the USPTO is not inconsistent with the terms of 
their visa or entry into the United States. The proposed rule provided 
for filing a complete application for each administration of the 
examination. Inasmuch as the computer delivered examination will be 
administered each business day, Sec.  11.7(b)(1)(i) has been revised to 
provide that a complete application for registration must be filed each 
time admission to the examination is requested.
    Section 11.7(b)(1)(ii), which appeared as Sec.  11.7(b)(4) in the 
proposed rules, requires that individuals seeking registration pass the 
examination unless the examination is waived as provided for in Sec.  
11.7(d) to enable the OED Director to determine whether the individual 
possesses the required legal and competence qualifications. Section 
11.7(b)(1)(ii) has been revised to provide that an individual failing 
the examination must wait thirty days after the date the individual 
last took the examination before retaking the examination. The revision 
reduces the interval in the proposed rule between opportunities to take 
and pass the examination. This section also sets forth the documents 
and fees that must be filed by an individual reapplying after failing 
the examination.
    Section 11.7(b)(1)(iii), which appeared as Sec.  11.7(b)(6) in the 
proposed rules, requires the individual to provide satisfactory proof 
of possession of good moral character and reputation.
    Section 11.7(b)(2) is added to provide that an individual failing 
to file a complete application will be given notice and required to 
complete the application within sixty days of the mailing date of the 
notice. Inasmuch as the proposed rule did not specify when the sixty-
day period began, the final rule clarifies that the sixty-day period 
begins with the mailing date of the notice. Individuals filing 
incomplete applications will not be admitted to the examination. 
Applications that are incomplete as originally submitted will be 
considered only when they have been completed and received by OED 
within the sixty-day period. Thereafter, a new and complete application 
must be filed to establish an individual's qualifications and 
demonstrated intent to take the examination. A proposed provision, 
appearing in proposed Sec.  11.7(b)(4) as well as 37 CFR 10.7, and 
prohibiting administration of the examination as an academic exercise, 
has been revised inasmuch as it did not specify the qualifications for 
admission to the examination. As revised, the provision has been moved 
in the final rules to Sec.  11.7(b)(2). The revision permits only an 
individual approved as satisfying the requirements of Sec. Sec.  11.7 
(b)(1)(i)(A), 11.7(b)(1)(i)(B), 11.7(b)(1)(i)(C) and 11.7(b)(1)(i)(D) 
to be admitted to the examination.
    Section 11.7(b)(3), which appeared as Sec.  11.7(b)(5) in the 
proposed rules, requires an individual first reapplying more than one 
year after the mailing date of a notice of failure to again comply with 
Sec.  11.7(b)(1) by filing a complete new application. The proposed 
rule did not specify the date from which the one year would begin. The 
final rule, by specifying the mailing date of the notice, eliminates 
uncertainty in the proposed rule of the starting date of the one-year 
period.
    Section 11.7(c) provides that each individual seeking registration 
is responsible for updating all information and answers submitted in or 
with the application for registration. The application must be updated 
within thirty days after the date of the occasion that necessitates the 
update. In the notice of proposed rule making, Sec.  11.7(c) provided 
for a petition to the OED Director. Proposed Sec.  11.2(c) also 
provided for a petition to the OED Director. The redundancy is 
unnecessary and the provision for the petition in Sec.  11.7(c) has 
been removed in the final rules. There were also

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redundant provisions in Sec. Sec.  11.7(b)(2) and 11.8(c) of the 
proposed rules requiring individuals to update their applications. The 
provisions have been removed from Sec. Sec.  11.7(b)(2) and 11.8(c), 
and merged into Sec.  11.7(c) in the final rules.
    Section 11.7(d) is added to provide for waiver of the examination 
for former patent examiners and certain other employees. Section 
11.7(d)(1) addresses registration of former patent examiners who by 
July 26, 2004, had not actively served four years in the patent 
examining corps, and were serving in the corps at the time of their 
separation. The examination may be waived if the individual 
demonstrates that he or she actively served in the patent examining 
corps, received a certificate of legal competency and negotiation 
authority, was thereafter rated at least fully successful in each 
quality performance element of his or her performance plan for the last 
two complete fiscal years as a patent examiner, and was not under an 
oral or written warning regarding the quality performance elements at 
the time of separation from the patent examining corps. For 
consistency, the effective date of Sec.  11.7(d) has been reduced from 
sixty days indicated in the proposed rules, to thirty days following 
publication of the final rules.
    Section 11.7(d)(2) is added to address registration of former 
patent examiners who on July 26, 2004, had actively served four years 
in the patent examining corps, and were serving in the corps at the 
time of their separation. The examination may be waived when the 
individual demonstrates that he or she actively served for at least 
four years in the patent examining corps of the Office by July 26, 
2004, was rated at least fully successful in each quality performance 
element of his or her performance plan for the last two complete fiscal 
years as a patent examiner in the Office, and was not under an oral or 
written warning regarding the quality performance elements at the time 
of separation from the patent examining corps.
    Section 11.7(d)(3) is added to address registration of certain 
former Office employees who were not serving in the patent examining 
corps upon their separation from the Office. The OED Director may waive 
the registration examination in the case of a former Office employee 
meeting the requirements of Sec.  11.7(b)(1)(i)(c) who by petition 
demonstrates possession of the necessary legal qualifications. The 
former employee must show that as a result of having been in a position 
of responsibility in the Office, he or she has an equivalent 
comprehensive knowledge of patent law. In the position, the individual 
must have provided substantial guidance on patent examination policy, 
including the development of rule or procedure changes, patent 
examination guidelines, changes to the Manual of Patent Examining 
Procedure, development of training or testing materials for the patent 
examining corps; development of materials for the registration 
examination or continuing legal education; or represented the Office in 
patent cases before Federal courts. The individual must establish that 
he or she was rated at least fully successful in each quality 
performance element of his or her performance plan for said position 
for the last two complete rating periods in the Office, and was not 
under an oral or written warning regarding performance elements 
relating to such activities at the time of separation from the Office.
    Section 11.7(d)(4) limits the eligibility period for seeking waiver 
of the examination by an individual formerly employed by the Office 
within the scope of Sec. Sec.  11.7(d)(1), 11.7(d)(2) and 11.7(d)(3). 
An individual filing an application for registration more than two 
years after separation from the Office is required to take and pass the 
registration examination. Employees and former employees not satisfying 
the requirements of Sec. Sec.  11.7(d)(1) through 11.7(d)(3) must 
comply with Sec. Sec.  11.7(a) and 11.7(b) and take and pass the 
registration examination to be registered. Therefore, it is redundant 
to include a provision in Sec.  11.7(d)(4) requiring compliance with 
Sec. Sec.  11.7(a) and 11.7(b). The provision in Sec.  11.7(d)(4) has 
been removed from the final rule.
    Section 11.7(e) is added to eliminate the regrading of examination 
answers. The language in the proposed rule has been simplified in the 
final rule. Within sixty days of the mailing date of a notice of 
failure, the individual is entitled to inspect, but not copy, the 
questions and answers he or she incorrectly answered. The inspection 
will occur under supervision. Applicants will not be permitted to take 
any notes relating to the questions or answers.
    Section 11.7(f) is added to provide that applicants seeking 
reciprocal recognition under Sec.  11.6(c) must file an application and 
pay the application fee set forth in Sec.  1.21(a)(1)(i).
    Section 11.7(g) is added to provide for soliciting information 
bearing on the good moral character and reputation of individuals 
seeking recognition, and for investigation of an individual's good 
moral character and reputation.
    Sections 11.7(g)(2) and 11.8(a) in the proposed rules address 
publication of information to solicit information bearing on the good 
moral character and reputation of applicants passing the examination or 
seeking recognition. The redundancy has been removed by providing for 
the procedure in Sec.  11.8(a). Sections 11.7(g)(3)(i) and 
11.7(g)(3)(ii) have been renumbered 11.7(g)(2)(i) and 11.7(g)(2)(ii).
    Section 11.7(g)(2)(i) requires that the OED Director conduct an 
investigation into the good moral character and reputation of an 
applicant if information is received ``that reflects adversely'' on the 
applicant's good moral character and reputation. The proposed rule 
authorized investigation upon receipt of information ``tending to 
reflect'' adversely the good moral character. The final rule narrows 
the circumstances when an investigation should occur.
    Section 11.7(h) is added to provide guidance when lack of good 
moral character and reputation exists. The provisions relating to 
felonies and crimes have been clarified in the final rule to reference 
conviction of a felony, conviction of a crime involving moral 
turpitude, and a conviction of a crime involving breach of fiduciary 
duty. Unlike the proposed rule that did not provide for conviction of 
``a crime,'' the final rule clarifies that a conviction of the 
respective crimes is evidence of lack of good moral character and 
reputation.
    Section 11.7(h)(1)(i) provides that an individual convicted of a 
felony or any misdemeanor identified in Sec. Sec.  11.7(h) and 
11.7(h)(1) is not eligible to apply for registration during the time of 
any sentence, deferred adjudication, period of probation or parole as a 
result of the conviction, and for a period of two years thereafter. The 
proposed rule also provided for ineligibility for registration. The 
latter provision has been removed from the final rule because 
ineligibility to apply for registration precludes registration. 
Pursuant to Sec.  11.3, an individual may request waiver of the two-
year period upon showing an extraordinary situation where justice 
requires waiver, such as when a conviction is overturned.
    Section 11.7(h)(4)(iii) specifies the defenses available to an 
individual seeking registration who has been disbarred, suspended on 
ethical grounds, or resigned in lieu of a disciplinary proceeding. The 
proposed rule did not indicate the purpose of the defenses. The final 
rule limits the defenses to an underlying disciplinary matter where the 
individual contests the relevance of the disciplinary matter to his or 
her good moral character and

[[Page 35432]]

reputation. The defenses are the same as those that are available to a 
practitioner in a reciprocal disciplinary proceeding.
    Section 11.7(i) identifies factors that may be taken into 
consideration when evaluating rehabilitation of an applicant seeking a 
good moral character determination for registration. Section 
11.7(i)(8), which addresses misconduct attributable in part to a 
medically recognized mental disease, disorder or illness, is revised to 
remove a minimum period of time for which recovery must be shown, and 
to provide that letters from the treating psychiatrist/psychologist 
must verify that the medically recognized mental disease, disorder or 
illness will not impede the individual's ability to competently 
practice before the Office. The change reflects the Office's standard 
for recognizing an individual's recovery efforts and a professional's 
assessment. Proposed Sec.  11.7(i)(11) has been removed as providing a 
presumption that education equates to ethical conduct. Section 
11.7(i)(12) has been revised to remove references to particular 
programs designed to provide social benefits or ameliorate social 
problems. The revision enlarges the scope of acceptable programs 
providing the same benefits. Proposed Sec. Sec.  11.7(i)(12) and 
11.7(i)(13) have been renumbered as Sec. Sec.  11.7(i)(11) and 
11.7(i)(12).
    Section 11.7(j) is added to provide for the OED Director to inquire 
into the good moral character and reputation of an individual seeking 
registration, to provide the individual with an opportunity to respond 
and create a record on which a decision is made. The OED Director will 
consider the response and record, and issue a notice to show cause if 
the OED Director is of the opinion that an individual has not 
satisfactorily established that he or she possesses good moral 
character and reputation. After a notice to show cause is issued, the 
OED Director will consider the record and response filed by the 
individual, and issue a decision on whether the individual has 
sustained his or her burden. An individual may seek review of the OED 
Director's decision pursuant to Sec.  11.2(d).
    Section 11.7(k) is added to set forth conditions for reapplication 
when an application for registration has been rejected because of lack 
of good moral character and reputation. An applicant may reapply for 
registration two years after the date of the decision denying the 
individual registration. The application must include the fee required 
by Sec.  1.21(a)(10). Pursuant to Sec.  11.3, an individual may request 
waiver of the two-year period upon showing an extraordinary situation 
where justice requires waiver, such as when a conviction is overturned.
    Section 11.8: Section 11.8(a) provides for the OED Director to 
promptly publish a solicitation for information concerning the 
individual's moral character and reputation, including the individual's 
name, and business or communication postal address.
    Section 11.8(b) provides procedures for registration as a patent 
attorney or agent, or being granted limited recognition. This section 
also provides that within two years of issuance of notice of a passing 
grade on the registration examination, the requirements for completion 
of registration must be met. An individual seeking registration as a 
patent attorney must demonstrate that he or she is a member in good 
standing with the bar of the highest court of a state.
    Section 11.8(c) provides that an individual who does not comply 
with the requirements of Sec.  11.8(b) within the two-year period will 
be required to retake the registration examination. This provision 
appeared in Sec.  11.8(a) in the proposed rules.
    Section 11.9: Section 11.9(a) provides for limited recognition of 
individuals to practice before the Office in a particular patent 
application or patent applications.
    Section 11.9(b) provides for granting limited recognition to a 
nonimmigrant alien who resides in the United States and fulfills the 
provisions of Sec. Sec.  11.7(a) and (b) if the nonimmigrant is 
authorized to be employed or trained in the United States in the 
capacity of representing a patent applicant by preparing or prosecuting 
the applicant's patent application. A provision in the proposed rules, 
making nonimmigrant aliens authorized to receive training ineligible 
for limited recognition, is withdrawn. Another proposal, limiting 
recognition to being granted in increments of one year, has also been 
withdrawn. Limited recognition will be granted for a period consistent 
with the terms of authorized employment or training. These changes are 
consistent with the law, will reduce burdens on applicants, and 
facilitate administrative procedures.
    Section 11.9(c) provides for limited recognition of an individual 
not registered under Sec.  11.6 to prosecute an international patent 
application only before the U.S. International Searching Authority and 
the U.S. International Preliminary Examining Authority.
    Section 11.10: Section 11.10 is added to address restrictions on 
practice in patent matters for former employees of the Office. Section 
11.10(a) is added to permit only practitioners who are registered under 
Sec.  11.6 or individuals given limited recognition under Sec.  11.9(a) 
or (b) to prosecute patent applications of others before the Office. 
Individuals granted limited recognition under Sec.  11.9(c) may 
prosecute an international patent application only before the United 
States International Searching Authority and the United States 
International Preliminary Examining Authority, but may not otherwise 
practice before the Office, such as in an application filed under 35 
U.S.C. 111 or 371. Accordingly, Sec.  11.10(a) addresses only 
individuals granted limited recognition under Sec. Sec.  11.9(a) or 
11.9(b), but not Sec.  11.9(c).
    Section 11.10(b) is added to set forth post employment provisions 
for any registered former Office employee. The provisions parallel 
basic restrictions of 18 U.S.C. 207(a) and (b) on a registered former 
Office employee acting as representative or communicating with intent 
to influence a particular matter in which the employee personally 
participated or for which the employee had official responsibility 
within specified time periods. In addition, the provision proscribes 
the similar conduct occurring behind the scenes by prohibiting conduct 
that ``aids in any manner'' the representation or communication with 
intent to influence.
    Section 11.10(c) is added to clarify that the restrictions of Sec.  
11.10(c) are in addition to those imposed on all Government employees 
by other statutes and regulations.
    Section 11.10(d) is added to continue to prohibit employees of the 
Office from prosecuting or aiding in any manner in the prosecution of a 
patent application.
    Section 11.10(e) is added to make clear that practice before the 
Office by Government employees is subject to any applicable conflict of 
interest laws, regulations or codes of professional responsibility. A 
statement in the proposed rule making, ``noncompliance with said 
conflict of interest laws, regulations or codes of professional 
responsibility shall constitute misconduct under Sec. Sec.  11.804(b) 
or 11.804(h)(8),'' will be separately addressed when adoption of 
proposed Sec. Sec.  11.804(b) or 11.804(h)(8) is considered.
    Section 11.11: Section 11.11 is added to require a registered 
practitioner to notify OED, separately from any notice given in any 
patent application, of the business postal address, business e-mail 
address, business telephone number, and of every change to any of those 
addresses or telephone numbers, within thirty days of the date of the 
change. Practitioners who are attorneys in good standing with the bar 
of the highest

[[Page 35433]]

court of one or more states must provide the OED Director with the 
State bar identification number associated with each membership. 
Further, this section identifies the information that the OED Director 
will routinely publish on the roster about each registered practitioner 
recognized to practice before the Office in patent cases.
    Response to comments: The Office published a notice on December 12, 
2003, proposing changes to rules by updating the procedures regarding 
enrollment and discipline, and introducing new USPTO Rules of 
Professional Conduct, largely based on the Model Rules of Professional 
Conduct of the American Bar Association. See Changes to Representation 
of Others Before the United States Patent and Trademark Office, 68 FR 
69442 (December 12, 2003), 1278 Off. Gaz. Pat. Office 22 (January 6, 
2004) (proposed rule). The Office received 112 written comments (27 
from intellectual property or other organizations and 85 by patent 
practitioners) in response to this notice. The comments regarding the 
rules adopted at this time and the Office's responses to the comments 
follow.
    Comment 1: One comment suggested that privatized administration of 
the registration examination will result in problems stemming from the 
introduced profit motive, including increased costs associated with 
sitting for the examination, and a decreased quality of practitioners 
allowed to pass the examination. The comment opined that the profit 
motive will result in a degradation of the examination process itself 
and of the examination results if the private tester reduces manpower 
and materials required to effectively administer the exam.
    Response: To the extent the comment is suggesting that the Office 
maintain the status quo for the examination procedure, the suggestion 
has not been adopted. The commercial entity will be responsible only 
for computer-based administration of the examination. Candidates will 
continue to apply to OED, which will continue to review applications 
and grant approval to sit for the examination only to persons 
possessing the necessary scientific and technical training 
qualifications. The Office retains complete control over (1) the 
qualifications of the candidates, (2) determining each candidate's 
moral character, (3) the content of the examination, and (4) the 
qualifications to pass the examination. The USPTO will continue to set 
the passing score. The USPTO will maintain control over the development 
and content of the examination. The questions seek to ascertain that a 
candidate knows the practices, policies, and procedures applicable to 
patent prosecution as related in the Manual. Only Office personnel 
generate, develop, vet and clear the questions for use on the 
examination. The questions and answers are carefully checked against 
the Manual to confirm that there is one correct answer. The Manual will 
be available to candidates on a computer, and where they may confirm 
the correctness of the answer they have selected. The Office is the 
only entity that determines whether a question will be withdrawn for 
any reason, or reused. Thus the Office will continue to maintain the 
same high standards for registration.
    In the past, the examination was administered twice a year in about 
37 cities, whereas the commercial entity can administer the examination 
each business day in over 400 sites. Accordingly, the examination will 
be more widely available. The total fees for the computerized 
examination are $350 (the sum of $200 examination development fee 
charged by the Office, and the $150 fee charged by the commercial 
entity administering the examination). This is an increase of only $40 
over the $310 examination fee previously charged by the Office.
    The computerized examination enables candidates to realize a 
substantial savings for other costs associated with the examination. 
For example, expenses that candidates may have incurred traveling to 37 
cities to take the examination should be significantly reduced or 
eliminated with more test facilities available on a daily basis. 
Scheduling will also be more convenient for candidates. They can 
schedule the examination anytime within a set ninety-day period at the 
commercial entity's testing site closest to their home or office. They 
can also arrange with the commercial entity to reschedule the 
examination within the same ninety-day period.
    The Office will also offer applicants the option of taking a paper 
examination administered by the Office once a year. The fee for the 
Office-administered paper examination will be $450. Inasmuch as one 
paper examination was already administered in fiscal year 2004, the OED 
Director will announce when the Office will offer a paper examination.
    Comment 2: One comment suggested that the $130 petition fee for 
review of any decision of the OED Director not be adopted because it is 
an inequitable monetary penalty imposed upon a practitioner for the 
privilege of seeking review of what may very well be an erroneous 
action on the part of the OED Director.
    Response: The suggestion has not been adopted. It is not a penalty 
to charge a fee for a petition to review an official's decision. Since 
1985 the Office has charged applicants for registration and 
practitioners a petition fee for review of a variety of decisions by 
the OED Director. See 37 CFR 1.21(a)(5) (imposing a fee for review 
under Sec.  10.2(c)). The Office also charges for petitions to review 
other decisions by agency officials. See 37 CFR 1.17(h) (imposing a fee 
for filing a petition under Sec.  1.295 for review of refusals to 
publish a statutory invention registration, Sec.  1.377 for review of 
decisions refusing to accept and record payment of a maintenance fee 
filed prior to expiration of a patent, and Sec.  1.378(e) for 
reconsideration of a decision on petition refusing to accept delayed 
payment of maintenance fee in an expired patent). The $130 fee is 
consistent with the fee charged for the foregoing petitions in Sec.  
1.17(h).
    The fee is for review of the official's decision and the benefits 
delivered by the opportunity for review and decision. The fee is not 
punitive, nor is it a sanction against petitioners.
    Comment 3: Two comments observed that the proposal to amend Sec.  
1.1(a) by adding new paragraph (a)(4), the address for correspondence 
intended for the United States Patent and Trademark Office, is based 
upon an outdated version of Sec.  1.1(a).
    Response: The suggestion has been adopted. The provisions of Sec.  
1.1 have been revised to remove the reference to paragraph (a)(2), and 
to change the numbering of proposed paragraph (a)(4) to (a)(5).
    Comment 4: One comment suggested that Sec.  1.31 be amended to 
recognize the situation in which joint applicants choose to file and 
prosecute their own case before the USPTO.
    Response: The suggestion is not adopted with this rule. The matter 
is addressed in another rule titled ``Clarification of Power of 
Attorney Practice, and Revisions to Assignment Rules,'' RIN 0651-AB63. 
This final rule has been submitted to the Federal Register for 
publication at this time.
    Comment 5: One comment suggested for clarity, each definition in 
Sec.  11.1 should be separately numbered, e.g. by (1), (2) * * *, etc., 
to facilitate citation of each definition.
    Response: The suggestion has not been adopted. The omission of 
paragraph numbers facilitates the ease of addition or deletion of 
definitions in Sec.  11.1 without having to renumber the definitions if 
their position in the list of

[[Page 35434]]

definitions changes. The definitions will be maintained in alphabetical 
order to facilitate citation and location of each definition.
    Comment 6: One comment suggested that the definition of ``good 
moral character'' appearing in the first sentence of Sec.  11.7(h) be 
moved to Sec.  11.1 because the term is used in a number of other 
proposed rules without reference to the definition in Sec.  11.7(h). 
Therefore a person reading a rule other than Sec.  11.7(h) may not know 
that the term had been defined in Sec.  11.7(h) and would naturally 
seek the definition in Sec.  11.1.
    Response: The suggestion has been adopted. The first sentence of 
Sec.  11.7(h) defining ``good moral character and reputation'' has been 
moved to Sec.  11.1.
    Comment 7: One comment pointed out that, although proposed Sec 11.1 
defined ``application'' as a patent or trademark application, the term 
``application'' is also used in proposed Sec. Sec.  11.2, 11.7, 11.8, 
11.10 and 11.11 to refer to an application for registration. It was 
suggested that the phrase ``application for registration'' be defined 
in Sec.  11.1 and be the term that is used in Sec. Sec.  11.2(b)(2), 
11.7(b)(1)(i), 11.7(f), 11.7(j)(1), 11.7(j)(3), 11.8(c), 11.10 and 
11.11. The latter section uses the term ``application,'' and the 
definition of ``application'' includes only patent and trademark 
applications. Introduction and use of the term ``application for 
registration'' would avoid confusion with ``application.''
    Response: The suggestion has been adopted in part. The term 
``application for registration'' need not be defined in Sec.  11.1, but 
the term has replaced ``application'' in Sec. Sec.  11.2(b)(2), 
11.7(b)(1)(i), 11.7(f), and 11.7(j). Inasmuch as there is no reference 
to an ``application for registration'' in Sec.  11.8(c) as amended, and 
Sec.  11.10, it was not necessary to modify ``application'' in this 
manner. The suggestion as to proposed Sec. Sec.  11.7(j)(1) and 
11.7(j)(3) is now moot inasmuch as they are not adopted. Section 11.11 
addresses the necessity for registered practitioners to separately 
provide written notice to the OED Director in addition to any notice of 
change of address and telephone number filed in individual 
applications. Therefore, where an introductory reference to an 
``application'' occurs in Sec. Sec.  11.10 and 11.11, the term 
``application'' has been modified with ``patent.''
    Comment 8: One comment suggested that the definition of ``belief'' 
or ``believes'' in Sec.  11.1 is indefinite because the meaning of 
phrases ``actually supposed'' and ``inferred from circumstances'' are 
not clear, and urged that the terms be defined as meaning that ``an 
individual assents to the truth of something offered for acceptance and 
that the individual's belief may be inferred from factual 
circumstances.''
    Response: The suggestion has not been adopted. The definition comes 
from the Model Rules of Professional Conduct of the American Bar 
Association. One of the purposes of generally conforming the USPTO 
rules to the Model Rules is that those rules have been widely adopted 
by states. As a result, decisional law through state auspices should 
facilitate the development of a body of case law that will help provide 
practitioners guidance on the meaning of terms that are necessarily 
broad because they need to cover a variety of circumstances. At this 
time, no change will be made while comments continue to be received 
regarding the proposed professional conduct rules.
    Comment 9: One comment opined that the definitions of ``fraud'' or 
``fraudulent'' and the terms ``knowingly,'' ``known,'' or ``knows'' in 
Sec.  11.1 can be clarified. The definition of ``fraud'' or 
``fraudulent,'' as ``failure to apprise another of relevant 
information'' could encompass a deceit which under the definition would 
not constitute fraud or a fraudulent act, and suggested that the terms 
be tailored to practice before the Office in light of 37 CFR 1.56, and 
that they be defined as ``conduct having a purpose to deceive, and not 
merely negligent misrepresentation or negligent failure to apprise 
another of relevant information.'' It was suggested that the definition 
of ``knowingly,'' ``known,'' or ``knows'' as ``inferred from 
circumstances'' is not understood, and that the definition be replaced 
with the phrase ``inferred from circumstantial evidence.''
    Response: The suggestions have not been adopted. The definitions 
come from the Model Rules of Professional Conduct of the American Bar 
Association. At this time, no change will be made while comments 
continue to be received regarding the proposed professional conduct 
rules.
    Comment 10: One comment suggested that the definitions of 
``suspended or excluded practitioner,'' and ``non-practitioner'' be 
separated out of the definition of ``practitioner'' to facilitate ease 
of finding the definitions.
    Response. The suggestion has been adopted in part. The definitions 
of ``suspended or excluded practitioner,'' and ``nonpractitioner'' have 
been separated from ``practitioner,'' and are not included in this 
rule.
    Comment 11: One comment suggested that Sec.  11.2(a) provide for 
appointment of an acting Director where the OED Director must recuse 
himself or herself from a case.
    Response: The suggestion has been adopted. The second sentence has 
been amended to read ``In the event of the absence of the OED Director 
or a vacancy in the Office of the OED Director, or in the event that 
the OED Director recuses himself or herself from a case, the USPTO 
Director may * * *.'' The appointment would contain any necessary 
directions limiting the Acting OED Director's authority to act only in 
the matter from which the OED Director is recused.
    Comment 12: Two comments suggested that Sec.  11.2(c) be modified 
to change the proposed one-month period in Sec.  11.2(c) to two months, 
and one comment suggested that no fee be required to be consistent with 
37 CFR 1.181. A third comment suggested that the proposed one-month 
period be increased to ninety days.
    Response: The suggestion has been adopted in part. The thirty-day 
period for filing a petition has been enlarged to sixty days. Charging 
a fee is consistent with the provisions of 37 CFR 1.181(d). As the 
staff of OED with respect to individual cases generally exercises 
independent judgment, charging a fee for review of that judgment by the 
OED Director is in keeping with circumstances under which the USPTO 
generally charges fees for consideration of petitions. The decisions 
address the merits of a variety of situations, including, but not 
limited to, incompleteness of applications for registration, scientific 
and technical qualifications, and refunds. The Office charges fees for 
review of decisions by other officials in a variety of situations. See, 
for example, the fees charged in 37 CFR 1.17(h) for petitions under 
Sec.  1.295 (for review of refusal to publish a statutory invention 
registration), petitions under Sec.  1.377 (for review of decision 
refusing to accept and record payment of a maintenance fee filed prior 
to expiration of a patent), petitions under Sec.  1.378(e) (for 
reconsideration of a decision on petition refusing to accept delayed 
payment of maintenance fee in an expired patent), and petitions under 
Sec. Sec.  1.644(e) and 1.166(f) (in an interference and for requesting 
reconsideration of a decision on petition).
    Comment 13: Two comments suggested that if a fee is charged under 
Sec.  11.2 for filing a petition, it should be refunded if it is 
determined that the OED Director acted improperly.
    Response: The suggestion has not been adopted. A petition seeks a 
determination that a decision should be reversed or modified. Such a

[[Page 35435]]

determination is obtained by the decision on petition. Under 35 U.S.C. 
42(d), the Director is authorized to refund any fee paid in excess of 
the amount required, or that is paid by mistake. Upon receiving a 
decision, the petitioner who has paid the amount required is not 
entitled to a refund of the petition fee inasmuch as the fee was not 
paid by mistake or in excess. The fee, like other petition fees charged 
by the Office, is designed to support the agency's cost of the 
procedure. The petitioner obtained that which he or she sought, the 
determination.
    Comment 14: One comment suggested that the third sentence of Sec.  
11.2(c) be deleted because it would discourage individuals who seek 
registration from filing legitimate appeals of an improper decision of 
an OED staff member, while not providing any assurance that a decision 
by the OED Director would be promptly decided to avoid interfering with 
rights of the petitioner or applicant for registration; and if kept, 
the phrase ``other proceedings'' be defined.
    Response: The suggestion has been adopted in part. The third 
sentence has been amended to delete ``including the timely filing of an 
application for registration,'' as being unnecessary. The third 
sentence now states ``[t]he filing of a petition will not stay the 
period for taking other action which may be running, or stay other 
proceedings.'' The language in the third sentence of Sec.  11.2(c), 
including ``other proceedings,'' corresponds substantially to the 
language of the first sentence of 37 CFR 1.181(f). Inasmuch as the 
third sentence now corresponds substantially to the first section of 
Sec.  1.181(f), it is believed that the third sentence will not 
discourage the filing of legitimate appeals. On the contrary, the third 
sentence encourages all applicants for registration to pursue 
legitimate actions that are not stayed by the filing of a petition.
    Comment 15: One comment suggested that the fourth sentence of Sec.  
11.2(c) be revised to state that ``[a]ny request for reconsideration of 
the OED Director's decision waives a right to appeal * * *.''
    Response: The suggestion is now moot since all reference to a 
request for reconsideration has been removed from Sec.  11.2(c) as 
further discussed in response to Comment 16.
    Comment 16: Two comments suggested that the fourth sentence of 
Sec.  11.2(c) be deleted because it is punitive, unnecessary, denies 
due process, and encourages numerous unnecessary appeals to the USPTO 
Director because a practitioner dissatisfied with a decision of the OED 
Director cannot reasonably risk loss of the right of appeal.
    Response: The suggestion has been adopted in part. All reference to 
a request for reconsideration has been removed from Sec.  11.2(c). The 
fourth sentence of Sec.  11.2(c) has been amended to clarify that ``[a] 
final decision by the OED Director may be reviewed in accordance with 
the provisions of'' Sec.  11.2(d).
    Comment 17: Two comments suggested that the thirty-day time periods 
set in Sec.  11.2 should be increased. One comment suggested that the 
Office, absent a compelling reason, consider setting a uniform period 
in Sec. Sec.  11.2(d) and 11.2(e), for example, the two-month period 
found in 37 CFR 1.181, for filing a petition to any USPTO official 
seeking review of an action taken by the USPTO and seeking 
reconsideration. Another comment suggested that the time in Sec.  
11.2(d) be increased to ninety days and be extendable to one hundred 
twenty days to provide due process.
    Response: The suggestion to adopt a uniform period has been adopted 
in part, but the suggestion that the period be extendable has not been 
adopted. Section 11.2(d) has been revised to refer to a sixty-day 
period for filing a petition from a final decision of the OED Director. 
Section 11.2(d) provides that ``[a]ny petition not filed within sixty 
days from the mailing date of the final decision of the OED Director 
will be dismissed as untimely.'' A thirty-day period is provided for 
filing a request for reconsideration. The penultimate sentence of Sec.  
11.2(d) provides that a ``request for reconsideration of the decision 
of the USPTO Director will be dismissed as untimely if not filed within 
thirty days from the mailing date of said decision.'' Section 11.2(e) 
has been deleted.
    The sixty-day period is independent of the different lengths of the 
months, and provides consistency. The sixty-day period has been adopted 
wherever possible. Sixty days is substantially the same time period 
provided for in Sec.  1.181, and thereby provides sufficient time to 
permit individuals and practitioners to determine whether they will 
seek review by petition and to prepare a petition.
    A thirty-day period is adopted for requesting reconsideration of 
the USPTO Director's decision. Under 35 U.S.C. 32, the United States 
District Court for the District of Columbia reviews a decision refusing 
to recognize or suspending or excluding an individual upon petition 
filed within thirty days of the decision. Providing an individual the 
same thirty-day period to seek reconsideration is consistent with the 
time available to seek review.
    Comment 18: One comment suggested that the term ``one OED 
Director'' in Sec.  11.2(e) be revised to read ``former OED Director or 
an acting OED Director'' to provide clarity.
    Response: The suggestion is moot since proposed Sec.  11.2(e) has 
not been adopted.
    Comment 19: One comment suggested that inasmuch as Sec.  11.3(a) 
does not define the phrase ``OED Director's representative,'' reference 
be made to proposed Sec.  11.40(b) and the phrase be defined in Sec.  
11.1.
    Response: The suggestion has been adopted in part. Section 11.1 has 
been revised to include a definition of the OED Director's 
representative. It is unnecessary to reference Sec.  11.40(b).
    Comment 20: Five comments suggested that the provisions in proposed 
Sec.  11.3(d) regarding qualified immunity not be adopted because the 
present rules provide sufficient safeguards, and the proposal may 
encourage Office employees to file frivolous complaints.
    Response: The suggestion has been adopted. Some states provide by 
regulation the proposed safeguards. However, upon further reflection, 
it is believed that adequate safeguards are already available. 
Accordingly, the proposed Sec.  11.3(d) has not been adopted.
    Comment 21: One comment suggested several reasons why the USPTO 
Director should draw on persons who are not employees of the USPTO to 
serve on the Committee of Enrollment.
    Response: The suggestion is now moot since Sec.  11.4(a), which 
proposed the use of the Committee on Enrollment in ``good moral 
character and reputation'' determinations has been deleted from Sec.  
11.7. Determining the content of the examination is an inherently 
governmental function that cannot be assigned to non-governmental 
employees.
    Comment 22: One comment suggested that in view of provisions in the 
North American Free Trade Agreement (NAFTA), Canadian citizens should 
be entitled to registration under the proposed Sec. Sec.  11.6(a) or 
11.6(b) in the same manner as United States citizens.
    Response: The suggestion has not been adopted. The provisions of 
NAFTA provide for each Party to accord no less favorable treatment to 
another party than that it accords, in like circumstances, to its own 
service providers, including representation in patent applications. The 
NAFTA Services Chapter did envisage phaseout of nationality 
requirements for patent

[[Page 35436]]

attorneys and agents. However, neither Party has phased out the 
nationality requirement. Under the treaty, the only recourse for 
failure to do so is for other Parties to maintain their requirements. 
At this time, the USPTO, in accordance with the treaty, continues to 
maintain its requirements, and need not act unilaterally. See NAFTA 
Art. 1210.3 (no penalty for phaseout).
    Comment 23: One comment suggested that any non-immigrant alien who 
is resident in the United States and who has passed the USPTO 
registration exam should be eligible to be registered and remain 
registered under 37 CFR 11.6(a) or (b) for as long as he or she remains 
resident in the United States.
    Response: The suggestion has not been adopted. Pursuant to 35 
U.S.C. 2(b)(2)(D), persons seeking registration must demonstrate that 
they are of good moral character and reputation. Empowering 
nonimmigrant aliens to engage in employment or training contrary to 
their status under the immigration laws would be inconsistent with the 
requirement that they possess good moral character. USPTO's 
registration should not create the occasion for violation of the 
immigration laws.
    Comment 24: One comment suggested that Sec.  11.6 be modified to 
strip away all citizenship requirements against a prospective patent 
attorney or agent to be registered--or for an existing patent attorney 
or agent to maintain his or her registration.
    Response: The suggestion has not been adopted. Foreign patent 
attorneys and agents may be registered to practice before the Office in 
patent cases upon compliance with the provisions of Sec.  11.6(c). 
Under Sec.  11.6(c), registration is available if the patent office, 
where the foreign attorney or agent is registered and resides, grants 
substantially reciprocal privileges to practitioners registered to 
practice before the Office. At this time, only the Canadian Patent 
Office is recognized as providing substantially reciprocal privileges, 
and practitioners registered by both offices benefit from the 
reciprocal recognition. Practitioners in other countries may similarly 
benefit if the provisions of Sec.  11.6(c) are satisfied.
    Comment 25: One comment suggested that any individual registered 
under proposed Sec.  11.6(c) should be required to pass the USPTO's 
registration examination since this section does not require 
familiarity with the USPTO's rules and procedures. The examination 
assures that all registered individuals are fully competent to act in 
patent matters before the USPTO. The commenter observed that in many 
material respects, practice before the USPTO is considerably different 
from practice before the Canadian Patent Office (and other patent 
offices).
    Response: The suggestion has not been adopted. Since about 1934, 
the USPTO and Canadian Patent Office have provided for reciprocal 
recognition of each other's registered attorneys and agents. Neither 
Office has required the attorneys and agents of the other Office to 
take and pass their registration examination. Moreover, the Canadian 
Patent Office does not require that persons registered to practice 
before the USPTO complete a period of service in the Canadian Patent 
Office or work in Canada in the area of Canadian patent law, or take 
the Canadian qualifying examination prior to registration.
    Comment 26: One comment suggested that Sec.  11.6(d) should also 
include public use proceedings under 37 CFR 1.292 since these 
proceedings, like interference proceedings, allow the taking of 
testimony which could be done by unregistered attorneys.
    Response: The suggestion has not been adopted. The provisions of 
Sec.  11.6(d) empower the Chief Administrative Patent Judge or Vice 
Chief Administrative Patent Judge of the Board of Patent Appeals and 
Interferences to determine whether and the circumstances under which an 
attorney who is not registered may take testimony for an interference 
under 35 U.S.C. 24, or under Sec.  1.672. Unlike interference 
proceedings, the taking of testimony for a public use proceeding does 
not occur under the authority of the Board of Patent Appeals and 
Interferences. The USPTO Director may designate an appropriate official 
to conduct the public use proceeding, and the official may set the time 
for taking testimony. See 37 CFR 1.292. The OED Director, in 
consultation with the designated official, may authorize an 
unregistered attorney to take testimony for a public use proceeding. 
Accordingly, the authority cannot be placed on the Chief Administrative 
Patent Judge or Vice Chief Administrative Patent Judge of the Board of 
Patent Appeals and Interferences to administer the taking of 
depositions in public use proceedings.
    Comment 27: One comment said that the Office admits to practice 
whole categories of lawyers who are not possessed of the required 
technical background. Although no category of lawyers was specified, 
the comment refers to practitioners registered under the current 
provisions of 37 CFR 10.6(c).
    Response: All individuals admitted to practice must demonstrate 
that they possess the required scientific and technical background. 
Persons seeking registration under Sec.  11.6(c) must demonstrate that 
they possess the ``qualifications stated in Sec.  11.7,'' which 
includes the scientific and technical training requirements of Sec.  
11.7(a)(2)(ii). The same is required under current 37 CFR 10.6(c) and 
10.7(a)(2)(ii).
    Comment 28: One comment pointed out that although the commentary at 
68 Fed. Reg. at 69446 stated that ``[p]aragraph (a)(3) of Sec.  11.7 
would explicitly place the burden of proof of good moral character and 
reputation on the applicant, and provide `clear and convincing' as the 
standard of proof,'' there is no paragraph (a)(3) in Sec.  11.7 
corresponding to this statement, and suggested that commentary conform 
with the rules.
    Response: The comment is correct that Sec.  11.7 does not include 
paragraph (a)(3). Section 11.7(b)(1)(iii) establishes the burden of 
proof and requires an individual to ``provide satisfactory proof of 
possession of good moral character and reputation.'' Individuals 
seeking registration have been required by current 37 CFR 
10.7(a)(2)(i), and its predecessor rules, to establish to the 
``satisfaction'' of the Director that they are of good moral character 
and reputation. This is unchanged by the new rules and may be met in 
most instances by candid answers to all questions in the application 
for registration, and production of complete explanations and required 
documents in accordance with instructions included in the application. 
The Office plans to adopt an application form containing substantially 
the same questions that attorneys commonly answer in State bar 
applications. Thus, attorneys will submit substantially the same 
questionnaire for the State bar, and agents will fill out this 
questionnaire for the first time.
    Comment 29: One comment suggested that the terms or phrases ``a 
form supplied by the OED Director,'' ``application for admission,'' 
``registration application,'' ``complete application,'' 
``applications,'' ``application,'' ``application form,'' and 
``application form supplied by the OED Director'' in Sec.  11.7 be 
replaced by ``application for registration'' to provide clarity and 
consistency. It also suggested that the phrase ``complete application'' 
wherever it is used in the proposed rules be changed to be ``complete 
application for registration'' for consistency in terms.
    Response: The suggestions have been adopted. Inasmuch as the terms 
or phrases ``a form supplied by the OED Director,'' ``application for 
admission,'' ``registration application,'' ``complete

[[Page 35437]]

application,'' ``application,'' ``applications,'' ``application form,'' 
and ``application form supplied by the OED Director'' all reference the 
application for registration, and the components of a complete 
application for registration are set forth in the provisions of Sec.  
11.7(b), the terms and phrases have been replaced as suggested. The 
change also distinguishes the application for registration from patent 
and trademark applications when the term ``application'' is used in 
other rules.
    Comment 30: One comment suggested that if registration is to 
continue and to fulfill the statutorily required qualifications of 
drafting patent applications and claims the OED must reinstate the 
essay question format that required demonstration of claim drafting 
skills as an integral part of the examination.
    Response: The suggestion has not been adopted. Regardless of the 
efforts taken to establish standards for grading essay examinations, 
the process of grading essays remains subjective and subject to 
heightened dispute. Grading an essay examination is an expensive, time-
consuming, resource-intensive program requiring diversion of the 
Office's employees to provide a subjective evaluation. Grading essay 
examinations inevitably creates uncertainties and the potential for 
subjectivity in test answer evaluation. Processing and evaluating 6000 
essays would require a massive commitment of USPTO resources without a 
concomitant benefit to the patent system. In contrast, both candidates 
for registration and the Office benefit from a multiple choice 
examination. A multiple choice examination is objectively graded. 
Moreover, multiple choice examinations, unlike essay examinations, 
cover a broader multitude of topics and elicit the candidate's ability 
to distinguish correct from incorrect practices, policies, and 
procedures as well as addressing application and claim drafting. 
Multiple choice examinations may be administered more frequently than 
essay examinations, thereby increasing the opportunity for 
registration. The passing rate over the past five years has ranged 
between 37% and 72%, and the overall average passing rate was 53.6%. 
Despite the fact that in the same period prior examinations were made 
public and some questions were reused, the multiple choice examination 
has not become a means to become registered by memorization. On the 
contrary, the examination provides a reasonable means for safeguarding 
the public from incompetent representation.
    Comment 31: One comment suggested that the questions on the 
proposed examination not be publicly available because if questions are 
reused, it would be possible to simply memorize the publicly available 
questions and answers, and the examination would not measure a person's 
legal and technical competence. Another comment was to assure that the 
examination include questions covering 35 U.S.C. 101, 102, 103 and 112.
    Response: The suggestions are noted. The comments in the proposed 
rules regarding Sec.  1.21 stated that the data bank of questions and 
answers would be publicly available. However, the comments for Sec.  
11.7(e) said that it would be necessary to cease publication of the 
questions and the corresponding answers to reuse questions, and reduce 
pressure on the Office staff, as well as preserve the fairness of the 
test for later applicants. Any confusion resulting from these 
statements is regretted. The data bank of questions and answers will 
not be published or otherwise made available to the public. The 
registration examination will utilize a data bank of multiple choice 
questions that can be reused in subsequent examinations. Further, 
everyone practicing in patent cases before the Office must be familiar 
with the provisions of 35 U.S.C. 101, 102, 103 and 112. Accordingly, 
the examination will include questions covering these sections.
    Comment 32: One comment suggested that there should be two or more 
questions that contain drawings in every examination to demonstrate 
that persons who pass the examination are competent to assist patent 
applicants by the ability to read and understand simple drawings, 
patents and technical publications. The comment suggested that an 
examination without drawings does not fulfill Sec.  11.7(a)(4).
    Response: The suggestion has not been adopted at this time. 
Presumably, the comment is referencing Sec.  11.7(a)(2)(iii) as there 
is no Sec.  11.7(a)(4) in the proposed rules. A drawing is not 
necessary to understand the claimed subject matter of every application 
as drawings are only required for applications ``where necessary for 
the understanding of the subject matter sought to be patented.'' 35 
U.S.C. 113. Thus, inclusion of one or two drawings is not required for 
the examination to test whether the persons passing the examination are 
capable of rendering competent assistance to patent applicants. 
Nevertheless, consideration is being given to the development of 
questions having drawings for inclusion in future computer-delivered 
registration examinations.
    Comment 33: One comment suggested that before admitting an 
individual to the registration examination, the individual should be 
required to complete a minimum period of apprenticeship or work 
involving the preparation and prosecution of patent applications before 
the USPTO under the supervision of one or more registered 
practitioners, that only practitioners registered for at least a 
certain number of years should be deemed competent to provide such 
supervision, and that compliance be verified by requiring a written 
declaration from the candidate and a registered practitioner 
supervisor.
    Response: The suggestion has not been adopted. Between 1922 and 
1934, registration applicants demonstrated their qualifications by 
submitting evidence of experience in patent work, such as patent 
prosecution. Non-attorneys were required to show three years of 
experience preparing and prosecuting patent applications under the 
guidance of a registered patent attorney. Attorneys were required to 
show actual work experience in patent prosecution, but the experience 
was not required to extend over any particular period. The showing of 
experience was ordinarily made by affidavit of the registered 
practitioner under whom the applicant had worked.
    The procedure was administratively difficult due, in part, to the 
lack of any objective standards. It is understood that Congressional 
correspondence on behalf of individual applicants was voluminous. 
Commissioner Robertson, in a 1933 report termed the registration system 
based upon submission of affidavits as neither reliable nor 
satisfactory. Commissioner Robertson regarded the applicant's showing 
of ``several examples of his ability to prosecute a patent 
application'' as ``perfunctory'' and ``certainly not sufficient.'' 
Additionally, the Commissioner cited the required affidavit as being 
``subject to the great weakness of friendship between attorneys and the 
applicant,'' and that an ``established attorney hesitates to refuse to 
make an affidavit as to competency of one of his employees who is 
ambitious and is striving to climb the ladder of success.'' The 
practice was ended in 1934 with the introduction of the registration 
examination. It would be difficult to avoid the weaknesses in the 
apprenticeship system employed prior to 1934 if the Office were to 
adopt the proposed apprenticeship or work system, even when coupled 
with the registration examination.

[[Page 35438]]

    Comment 34: Two comments suggested that the location of Sec.  
11.7(c) seems to be out of place in the sequence of other provisions. 
One suggested that it should be located just before the hearing 
provision in Sec.  11.7(j).
    Response: The suggestion has been adopted in part. The petition 
provision in proposed Sec.  11.7(c) is redundant with the petition 
provision in Sec.  11.2(c). Accordingly, the provision for petitions in 
proposed Sec.  11.7(c) is unnecessary, and has been removed from this 
section, and retained in Sec.  11.2(c). Sections 11.7(b)(2) and 11.8(c) 
each addressed the necessity for an individual seeking recognition to 
update his or her application for registration. These provisions have 
been merged and moved into Sec.  11.7(c).
    Comment 35: One comment suggested that Sec.  11.7(d) be subtitled 
``Waiver of the registration examination for former Office employees'' 
followed by subsections (1), (2), etc., to immediately apprise the 
reader that the rule is directed to waiver of the registration 
examination for former PTO employees.
    Response: The suggestion has been adopted. The revision would 
apprise individuals who never served in the Office that the provisions 
of Sec.  11.7(d) do not pertain to them.
    Comment 36: One comment suggested that the phrase ``actively 
served'' in Sec. Sec.  11.7(d)(1), (d)(2), and (d)(3) be defined to 
resolve whether a person is a ``patent examiner'' who has or has not 
``actively served'' in the examining corps. The metes and bounds of 
``actively served'' are not immediately apparent. The commenter 
suggested that the definition would resolve whether the examination 
would be waived for a former examining technical center director who 
never served as a patent examiner, but served more than four years as 
group director at the time of separation from the examining corps, or 
for a special program examiner who was not a patent examiner, but who 
served more than four years in the examining corps at the time of 
separation from the Office.
    Response: The suggestion has not been adopted. The practice of 
waiving the examination for persons who actively served in the patent 
examining corps is well established. ``Actively served'' is not a new 
term of art. It has been used in predecessor rules since at least 1959. 
See 37 CFR 10.7(b) (1985), and 37 CFR 1.341(c) (1959). ``Actively 
served'' is found only in Sec. Sec.  11.7(d)(1) and (d)(2), and is used 
in its ordinary sense. Sec. Sec.  11.7(d)(1) and (d)(2) apply to only 
former examiners who were serving in the patent examining corps at the 
time of their separation from service. Obviously, a technical center 
group director who never was a patent examiner is not within the scope 
of Sec. Sec.  11.7(d)(1) or (d)(2). Similarly, a special program 
examiner is not in the patent examining corps, and is not subject to 
the provisions of Sec. Sec.  11.7(d)(1) or (d)(2). However, they would 
be among the ``certain former Office employees'' addressed in Sec.  
11.7(d)(3) for whom waiver of the examination and registration is 
available upon a satisfactory showing of the qualifying conditions set 
forth in Sec.  11.7(d)(3).
    Comment 37: One comment suggested that examining technical center 
directors, special program examiners, individuals who served as 
Assistant Commissioners for Patents, and administrative patent law 
judges at the Board of Patent Appeals and Interferences who have not 
``actively served'' in the examining corps should be exempt from making 
a showing under Sec.  11.7(d)(3) of possessing legal qualifications to 
render to patent applicants and others valuable service in the 
preparation and prosecution of patent applications. In contrast, three 
comments suggested that the proposal in Sec.  11.7(d)(3) to exempt 
certain USPTO employees from the registration examination not be 
adopted. The latter comments opined that Office employees are only 
skilled in the application of rules concerning patentability, have not 
practiced patent law, and have no training how to properly describe and 
claim an invention. One of the latter comments suggested that the 
period of service in the Office be extended to five years to ensure 
broad experience.
    Response: The suggestions have not been adopted. Many individuals 
in the foregoing positions supervise patent examiners and/or have 
authority to review and reverse decisions of patent examiners. These 
individuals have an opportunity to demonstrate possession of legal 
qualifications to render patent applicants and others valuable service 
in the preparation and prosecution of patent applications. Their 
positions in the Office have exposed them to proper description and 
claim practices, and given them the opportunity to evaluate the 
practices. Further, their positions and responsibilities enable them to 
readily find answers in the Manual of Patent Examining Procedure, rules 
and laws.
    Mere qualification based on years of service in a position has not 
and should not be the standard for waiver of the examination. 
Accordingly, Sec.  11.7(d)(3) requires that certain former Office 
employees show that they have exhibited a comprehensive knowledge of 
patent law equivalent to that shown by passing the registration 
examination as a result of having been in a position of responsibility 
in the Office, that they are rated at least fully successful in each 
quality performance element of their performance plans, and are not 
under an oral warning regarding performance elements relating to such 
activities at the time of separation from the Office. Moreover, waiver 
of the examination is not automatic; it is in the discretion of the OED 
Director. For that purpose the second sentence in each of Sec. Sec.  
11.7(d)(1), 11.7(d)(2) and 11.7(d)(3) have been revised by replacing 
the term ``would'' with the term ``may.'' Further, Sec. Sec.  
11.7(d)(1) and 11.7(d)(2) are revised to delete Sec. Sec.  
11.7(d)(1)(v) and 11.7(d)(2)(iv), which provided for waiver of the 
criteria of these sections upon a showing of good cause. Any 
individuals believing the requirements of Sec. Sec.  11.7(d)(1) or 
11.7(d)(2) should be waived may avail themselves of the provisions of 
Sec.  11.3, which provides the standard for suspension of any 
requirement of the regulations in Part 11 that is not a requirement of 
statute.
    Waiver of the examination is not automatic for former patent 
examiners. Former patent examiners have been required to take the 
examination where there is evidence that they did not possess the legal 
qualifications to render patent applicants and others valuable service 
in the preparation and prosecution of patent applications. See Legal01 
decision in the FOIA Reading Room of the Office Web site at 
www.uspto.gov/web/offices/com/sol/foia/oed/legal/legal.htm. The same 
will apply to former Office employees in all positions. The public and 
Office must be assured that the examination is waived only in 
appropriate circumstances. Accordingly, Sec.  11.7(d) requires 
comprehensive knowledge of patent law equivalent to that shown by 
passing the registration examination, that the individual be rated at 
least fully successful in each quality performance element of his or 
her performance plan for their position for the last two complete 
rating periods in the Office, and that the individual not be under an 
oral warning regarding performance elements relating to such activities 
at the time of separation from the Office.
    Comment 38: One comment inquired whether administrative patent 
judges at the Board of Patent Appeals and Interferences would qualify 
for registration under Sec.  11.7(d)(3)(i)(A) when they leave the 
Office and wish to be registered to practice, and suggested a section 
be added to Sec.  11.7 that would cover Administrative Patent Judges.
    Response: This suggestion has not been adopted. Upon leaving the 
Office

[[Page 35439]]

administrative patent judges may be registered under the provisions of 
Sec.  11.7(d)(3)(i)(A).
    Comment 39: Four comments suggested that Sec.  11.7(e) not be 
adopted. Three of the comments suggested that the Office continue to 
permit substantive review and regrading of registration examinations. 
One comment suggested that perhaps applicants would be willing to 
entertain a slightly higher examination cost to maintain the current 
system. Another comment said that the proposed process could be 
punitive. Two comments said denial of regrades would prevent applicants 
from receiving due process if a question is incorrectly graded. In 
contrast, another comment said that while the elimination of regrades 
perhaps meets the minimal requirements to pass muster under law, the 
provisions of Sec.  11.7(e) seem to miss the element of fundamental 
fairness embodied in the present system, that is usually the 
cornerstone of PTO rules and practice. One comment opined that Sec.  
11.7(e) is an effort to minimize the burden of USPTO personnel in 
reviewing examination results, and its effect may be to ignore and/or 
cover up errors in the examination or in the manner that the 
examination was graded, and inequitably transfer the burden of Office 
errors to registration applicants. One comment said the possibility of 
regrades being arbitrary and capricious could arise only if the 
examination was in a format other than multiple choice.
    Response: The suggestions have not been adopted. Thirty states and 
the Northern Mariana Islands do not have any provision for regrading a 
bar examination, either prior or subsequent to the publication of the 
grades. Many of the states that do provide regrades provide so only in 
limited circumstances that will not arise in connection with a 
computerized system of delivering a multiple choice examination.
    Regrades are not required where the examination is offered again, 
particularly as frequently as the USPTO plans. Applicants are afforded 
due process by the ability to sit for the examination again.See, e.g., 
Lucero v. Ogden, 718 F.2d 355 (10th Cir. 1983), cert. denied, 465 U.S. 
1035, 79 L. Ed. 2d 706, 104 S.Ct. 1308 (1984) (``Courts have 
consistently refrained from entering the arena of regrading bar 
examinations when an unqualified right of reexamination exists.'').
    Applicants failing the computerized registration examination will 
be able to retake the examination more frequently than those failing a 
State bar exam. Those who fail the examination can take it again in 
thirty days. The benefit to applicants of providing frequent 
examinations outweighs the costs of eliminating regrades. It typically 
requires several months for regrade results to be released. An 
applicant who retakes and passes the examination may be registered in 
less time than it would have taken to obtain the regrade result.
    Limiting access to the questions will not deny the unsuccessful 
applicant equal protection of the laws. The Multistate Bar Examination 
(MBE), like the registration examination, is a multiple choice 
examination. Questions on the MBE are reused in later years. Inasmuch 
as some of the questions appear in following years, the questions must 
be kept secret in order to preserve the fairness of the test for later 
applicants. See Fields v.  Kelly, 986 F.2d 225, 227 (8th Cir. 1993). An 
unsuccessful candidate also is not deprived of a property right without 
due process by limiting access to the questions. The provision of Sec.  
11.7(e) of providing an opportunity to review the examination under 
supervision without taking notes affords the applicant a hearing at the 
administrative level. Id. at 228.
    The USPTO will take precautions to ensure the accuracy of questions 
and answers. Office employees with expertise in various Office 
organizations, including the Office of the Solicitor, Patent 
Cooperation Treaty Legal Affairs, Office of Patent Legal 
Administration, and the Board of Patent Appeals and Interferences, 
draft the examination questions. All the questions are multiple choice, 
and each addresses the patent laws, rules and procedures as related in 
the Manual of Patent Examining Procedure. Different employees then vet 
the questions to ensure that each question has a correct answer. The 
employees vetting the questions are drawn from the editorial staff of 
the MPEP, the Office of the Solicitor, the Board of Patent Appeals and 
Interferences, and Quality Assurance Supervisory Primary Examiners.
    The examination will be administered by a commercial entity with 
extensive experience in administering computerized examinations. An 
examination will include 100 questions. After an examination is 
administered, the statistical performance of each question in the group 
of 100 questions is reviewed and evaluated by testing experts before 
the question is included in the computation of each applicant's score. 
The questions will be reviewed psychometrically to identify questions 
that appear too difficult. Psychometric analysis involves comparison of 
the results of each question in the top fifty percentile with the 
bottom fifty percentile of applicants, and shows the relative 
difficulty of each question. For example, as in the past, where a 
psychometrically significant number of applicants passing the 
examination select an incorrect answer to a question, the question is 
subject to content review by the Office. This corresponds to the 
internal review conducted by eleven states before publication of their 
bar exam results. This final statistical review is conducted to ensure 
that each question is accurate and psychometrically sound. Based upon 
the review, corrective action may be warranted, including withdrawal of 
the question. The questions are all objective-based, selected-response 
items. Some questions have been used in previous versions of the exam. 
Over time, each collection of 100 questions will include a number of 
previously used and reviewed questions, as well as new questions. The 
new questions will undergo the same psychometric analysis and review 
necessary to assure that the examination is fair.
    Comment 40: One comment opined that adoption of Sec.  11.7(e) would 
delay feedback from registration candidates, and eliminate both the 
income generated by the regrade process as well as the teaching tool 
provided by the regrades posted on the Office's Web site.
    Response: The comment is not persuasive. The feedback received by 
the psychometric analysis provided by the commercial entity will be at 
least as fast as the feedback now received from the candidates. 
Psychometric analysis involves comparison of the results on each 
question of the top fifty percentile with the bottom fifty percentile 
of applicants, and shows the relative difficulty of each question. The 
Office will be able to review psychometric feedback received from the 
commercial entity as frequently as each week. Questions appearing to be 
too difficult are again reviewed after the examination to ascertain if 
there is a problem that needs to be addressed, as opposed to being a 
difficult question. For example, the question would be reviewed to 
ascertain if anything is misleading or incorrect in the body of the 
question or in the answer options, if it is readable, or if there is a 
change or inconsistency in the materials in the MPEP.
    The regrade program is not a source of income to the Office. It is 
an expensive, time-consuming, resource-intensive program requiring 
diversion of the Office's employees who could be otherwise occupied 
deciding petitions, representing the Office in court, and examining 
patent applications.

[[Page 35440]]

Diversion of these resources to process and decide regrades does not 
optimize the USPTO's accomplishment of its statutory mission.
    The value of posted regrade decisions as a teaching tool decreases 
with the passage of time since the patent laws, rules, and procedures 
change. A collection of regrade decisions can be found on the Office 
Web site in the Freedom of Information Reading Room. However, the 
continued posting of the questions has no relation to their value. 
Nothing on the Web site distinguishes between decisions addressing 
laws, rules and procedures that are currently followed and those no 
longer followed.
    Comment 41: One comment opined that if the outsourced examination 
contract is limited to a sole source provider, the Office would be 
subject to further allegations of supporting arbitrary and capricious 
decisions regarding best answers, or other administrative 
interpretations within the USPTO.
    Response: The comment is unpersuasive. The commercial entity, 
selected through full and open competition, does not create the 
questions or select the correct answers to the questions. As discussed 
above, the questions are developed within the Office. The examination 
will be delivered on computers at sites operated by the commercial 
entity. The commercial entity has extensive experience in administering 
examinations by computer. Every reasonable precaution has been taken to 
assure that the questions are not incorrectly graded. All questions and 
answers are carefully reviewed by the Office to assure that the answer 
selected by those in the Office vetting the question is the answer 
identified by the computer to accept as correct.
    Comment 42: One comment opined that a ``no error'' grading of 
certification examination is unwarranted within the USPTO, and 
suggested that the Office, like others licensing professionals, 
including certified public accountants and professional engineers, 
utilize passing grade levels of approximately 70%.
    Response: In referring to the ``certification examination'', it is 
presumed that the commentator is referring to the registration 
examination. It is also presumed that `` `no error' grading'' refers to 
requiring candidates to correctly answer all questions. However, there 
is no proposal to require candidates to correctly answer all questions 
on the registration examination to pass the examination. The Office 
plans to continue to use a passing grade of 70%. The Office's proposal 
to use a form of on-line self-correcting examination as one means of 
delivering continuing legal education remains subject to comment.
    Comment 43: Four comments opposed the elimination of provisions for 
regrading examinations in Sec.  11.7, at least to the extent that 
questions in the examination should continue to be subject to review 
for correctness, readability and fairness; the comment urged that the 
use of Office Model Answers assured only uniformity, that it is only 
reasonable and fair to require the Office to regrade/review questions 
that it has developed, and an applicant should have the right to appeal 
the result of their exam because, given the nature of patent practice, 
there will be occasions where there may be more than one correct 
answer.
    Response: The suggestion to retain regrade is not adopted. The 
suggestion to allow limited access to the questions to review the 
questions is permitted to the extent provided in Sec.  11.7(e). As 
discussed above, continuing the regrade program is not a reasonable 
expenditure of agency resources. Resources used to process regrades 
must be devoted to the processing of a backlog of over 500,000 patent 
applications, as well as petitions and appeals. Diversion of these 
resources to process and decide regrades is not the best use of Office 
resources. As also discussed above, questions will be psychometrically 
reviewed to identify those requiring additional, closer review. The 
psychometric analysis of answers will enable the Office to objectively 
identify questions that may have issues of correctness, readability and 
fairness, and to resolve the issues. Also, as in the past, corrective 
action is taken when warranted, such as by withdrawing a question. 
Moreover, elimination of regrades conforms to the practice in a 
majority of State bars.
    Comment 44: One comment questioned keeping the questions and 
answers confidential and another suggested that it would constitute 
undue hardship to require that applicants travel to a location to 
review test results.
    Response: The suggestion has not been adopted. The questions and 
answers will be maintained in confidence. This is consistent with 
confidentiality with which the Multistate Bar Examination is 
maintained. Maintaining the registration examination in confidence 
supports the integrity of the examination inasmuch as the questions can 
appear in following months or years. By maintaining confidentiality, no 
candidate has the advantage of memorizing questions and answers. The 
multiple choice, computer-based examination will use questions selected 
from a large database of questions and answers that will not be 
publicly available. This will assure that passing the examination 
depends upon the ability to spot issues and determine a substantively 
sound result, rather than upon the ability to memorize questions and 
answers.
    Comment 45: One comment, apparently based on the experience with 
regrades of two other persons, said that their failure was unjustified; 
that in one case the model answers to one of the essay questions was 
simply wrong; and in the other case the examination grader did not 
recognize the candidate's way of writing of the letter ``t'' (European 
candidate) and interpreted each instance of this letter as a 
misspelling.
    Response: The comments pertain to results of examinations that were 
based on essay questions and answers, which have not been used for 
several years. As the examination is now multiple choice, the 
possibility of subjectivity in the grading of essay answers has been 
eliminated.
    Comment 46: The summary of Sec.  11.7(g) at 68 FR 69449 sought 
comments regarding two options for determining good moral character. 
Four comments favored the second option, which gives deference to State 
bar determinations for those applicants who are attorneys and reserves 
authority by the Office for further investigation in the event of a 
substantial discrepancy between information given to the State bar and 
information given to the Office.
    Response: The suggestion has been adopted. To effectuate the 
procedure and policy, Sec.  11.7(g)(1) is amended to provide that 
``[a]n individual who is an attorney shall submit a certified copy of 
each of his or her State bar applications and moral character 
determinations, if available.'' A new paragraph is added, designated 
Sec.  11.7(g)(2)(ii), which provides ``[t]he OED Director, in 
considering an application for registration by an attorney, may accept 
a State bar's character determination as meeting the requirements set 
forth in paragraph (g) of this section if, after review, the Office 
finds no substantial discrepancy between the information provided with 
his or her application for registration and the State bar application 
and moral character determination, provided that acceptance is not 
inconsistent with other rules and the requirements of 35 U.S.C. 
2(b)(2)(D).''
    Comment 47: One comment suggested that for agent practitioners, the 
Office should require a showing of good moral character consistent with 
that required

[[Page 35441]]

by a majority of State bars, that the Office should gather the same 
information as gathered by the majority of State bar applications, that 
the information should be included as part of the application for non-
attorneys to practice before the Office, and that the Office use this 
information to conduct an investigation of moral character that is 
consistent with that made by the majority of State bars.
    Response: No regulatory provision is necessary to implement the 
suggestion. Plans are under way to change the application for 
registration to gather the same essential information from non-attorney 
applicants as is gathered by a majority of State bar applications. Any 
necessary investigation will be conducted.
    Comment 48: One comment suggested that attorneys and non-attorneys 
be subject to same procedures for determining good moral character and 
reputation by requiring an attorney denied admission to a bar for lack 
of good moral character and reputation to inform the Office in the 
application for registration, that the Office should request a 
certificate of good standing from every bar where the applicant is a 
member to confirm whether an attorney is a member in good standing, and 
that at least five character affidavits should be requested from each 
non-attorney applicant so the treatment of both types of applicants 
would be on somewhat an equal footing.
    Response: As discussed above, plans are under way to change the 
application to gather from non-attorneys the same essential information 
as is obtained by a majority of State bar applications. Non-attorneys 
will have to disclose the same information. The application for 
registration already requests a certificate of good standing from the 
highest court of a state, and inquires whether the applicant has been 
suspended or disbarred from the practice of law on ethical grounds.
    Comment 49: Two comments suggested that the first option, namely 
that the Office give deference to the State bars by permitting patent 
attorneys to submit a copy of their State bar application and moral 
character determination, would be preferable. One comment opined that 
the first option would relieve the Office of an apparently unnecessary 
burden unless experience has indicated that such an approach could 
cause problems of some undefined character. The other comment opined 
that there seems to be no need for the Office to establish new 
procedures and require new personnel to administer those procedures 
when the individual State bars already perform the same task and it has 
not been shown that simply giving deference to a determination by the 
State bars would in any way permit Office registration of unqualified 
candidates.
    Response: The suggestion has not been adopted. While accepting a 
State bar's determination on moral character without further review 
appears to be administratively attractive, experience indicates that 
the existence of substantial discrepancies can be problematic. A 
registration application might disclose information that would warrant 
a disciplinary proceeding. If the Office did not make provision to 
disallow registration of such an applicant, then following 
registration, it would be necessary to admit a practitioner and 
initiate a disciplinary action. Such a step would create a situation in 
which an attorney or agent whom the Office should have denied 
registration is representing clients until disciplinary proceedings are 
concluded. The disciplinary action requires devotion of additional 
personnel and expenditure of time and funds that would not otherwise be 
necessary in an enrollment proceeding to protect the public by 
suspending or excluding the individual. Moreover, the burden of proof 
shifts in a disciplinary action. An enrollment applicant has the burden 
of showing that he or she is of good moral character and reputation, 
whereas in a disciplinary action the OED Director must demonstrate a 
violation of the disciplinary rules. By following the first option, as 
opposed to the second, the Office fulfills the responsibility Congress 
placed on the Director to protect the public while not duplicating 
efforts already undertaken by the State bars.
    Comment 50: One comment suggested that the good moral character 
determination for both attorneys and agents be administered by the 
Office in a manner similar to that utilized by the National Council of 
Examiners for Engineering and Surveying (NCEES), a non-profit 
organization, whose membership consists of engineering and land 
surveying licensing boards for all states and territories of the United 
States. These member boards represent all states and U.S. territorial 
jurisdictions. The suggestion is that the Office utilize the 
organizational model of NCEES by having member boards representing all 
State bar associations serve as a central body for maintaining 
registered practitioners' representation records comprising pertinent 
state and Office information. A practitioner's representation record 
would contain some combination of NCEES-type records and State bar 
records including professional references, employment verifications, 
licensure information, and State bar applications, which are all 
determinants of moral character. The comment also suggested that the 
Office would share information with State bar associations regarding 
the conduct of ``registered'' trademark practitioners for enforcement 
of ethical standards at the state level.
    Response: The suggestion has not been adopted. Congress placed on 
the Director of the USPTO the primary responsibility of determining who 
would be recognized to practice before the Office in patent cases and 
protecting the public. See 35 U.S.C. 2(b)(2)(D). The maintenance of the 
register of registered patent attorneys and agents is an inherently 
governmental function that cannot be performed by non-employees.
    The Office already shares with State bars information regarding 
conduct of registered practitioners for enforcement of ethical 
standards at the state level. See 37 CFR 10.159. Although the Office 
does not register trademark practitioners, the Office does share with 
state bar associations information about the attorneys for enforcement 
of ethical standards at the State level. See 37 CFR 10.159.
    It is understood that NCEES has a Records Program that serves as a 
verifying agency for the engineer or land surveyor who is seeking 
multiple-jurisdiction licensure. Through this program, an NCEES Council 
verifies and houses a record holder's file, which contains the college 
transcripts, licensure information, professional engineer or surveyor 
references, and employment verifications. The Office will consider 
whether and how it may communicate with NCEES to obtain records 
regarding applicants for registration.
    Comment 51: One comment suggested that Sec.  11.7(g), which permits 
the OED Director to list the names of proposed registrants on the 
Internet and make inquiry regarding the moral character of the 
individuals listed, not be adopted because it is a tremendous invasion 
of privacy; and further suggested that the Office should not be 
involved with regulating moral conduct when it does not concern matters 
before the Office, citing misdemeanor cases, such as shoplifting or 
drug dependency, as examples of matters with which the Office should 
not be concerned.
    Response: The suggestion has not been adopted. The statute requires 
the Office to consider ``reputation'' of prospective attorneys and 
agents. In furtherance of that mandate, the Office has long published 
in the Official

[[Page 35442]]

Gazette the names of applicants for registration seeking comments 
regarding their qualifications. The Official Gazette is published on 
the Office's Web site on the Internet. The provision has been moved to 
Sec.  11.8(a), and codifies that which has long occurred with the 
publication of the Official Gazette in paper and on the Internet.
    The Office agrees that the Office should not be involved with 
regulating moral conduct when it does not concern matters before the 
Office. Nevertheless, there are instances where conduct not directly 
occurring in the representation of others before the Office has a nexus 
with the person's moral character for purposes of representing others; 
for example, drug dealing, and wire or insurance fraud. There are a 
number of cases where State bars have denied admission to persons whose 
conduct involves the conduct of the kind addressed by the commenter. 
See Moral 03 and Moral 04 decisions in the FOIA Reading Room of the 
Office Web site at www.uspto.gov/web/offices/com/sol/foia/oed/moral/moral.htm.
    Comment 52: One comment suggested that Sec.  11.7(g)(1), which 
requires an individual seeking recognition to ``answer all questions,'' 
clarify the source of the questions.
    Response: The suggestion has been adopted. The first sentence of 
Sec.  11.7(g)(1) has been revised to state ``answer[ing] all questions 
in the application for registration and request(s) for comments issued 
by OED.''
    Comment 53: One comment suggested deletion of the third sentence in 
proposed Sec.  11.7(g)(3), which states, ``If the individual seeking 
registration or recognition is an attorney, the individual is not 
entitled to a disciplinary proceeding under Sec. Sec.  11.32-11.57 in 
lieu of good moral character proceedings under paragraphs (j) through 
(m) of this section.'' The commenter noted that only the OED Director 
can initiate a disciplinary proceeding if the Committee on Discipline 
finds probable cause, and it is not clear how an attorney who is not 
yet a registered practitioner would be subject to the disciplinary 
proceedings.
    Response: The suggestion has been adopted. Section 11.7(g)(3) in 
the proposed rules has been renumbered Sec.  11.7(g)(2)(i) in the final 
rules. The third sentence of proposed Sec.  11.7(g)(3) has been omitted 
from the final rule.
    Comment 54: One comment suggested that in the fourth sentence of 
Sec.  11.7(g)(3), the phrase ``OED Director'' be changed to ``Office of 
Enrollment and Discipline'' since in all likelihood questions will be 
sent through a staff attorney in OED.
    Response: The suggestion has been adopted in part. The fourth 
sentence of proposed Sec.  11.7(g)(3) is the third sentence of Sec.  
11.7(g)(2)(i) in the final rule. The reference to ``OED Director'' has 
been changed to ``OED.''
    Comment 55: One comment suggested that a typographical error be 
corrected in the last sentence in Sec.  11.7(h) before the beginning of 
subsection (1).
    Response: The suggestion is now moot inasmuch as the last sentence 
of proposed Sec.  11.7(h) has been deleted.
    Comment 56: One comment inquired whether ``good moral character'' 
has the same meaning as ``good moral character and reputation.'' 
Another comment suggested that the entire phrase ``good moral character 
and reputation,'' which appears in 35 U.S.C. 2(b)(2)(D), be defined.
    Response: The latter suggestion has been adopted. Under 35 U.S.C. 
2(b)(2)(D), an individual is required to possess ``good moral character 
and reputation.'' ``Good moral character and reputation'' is defined in 
Sec.  11.1. Webster's Third New International Dictionary defines 
``reputation'' as ``the condition of being regarded as worthy or 
meritorious'' (second version under the first definition), and is the 
source for the definition applied to reputation in the phrase ``good 
moral character and reputation.''
    Comment 57: One comment opined that Sec. Sec.  11.7(h)(3) and 
11.7(h)(4) contain definitions of good moral character that do not 
appear to be within the scope of the definition in proposed Sec.  
11.7(h).
    Response: Good moral character is now defined in Sec.  11.1, and 
continues to mean the ``possession of honesty and truthfulness, 
trustworthiness and reliability, and a professional commitment to the 
legal process and the administration of justice.''
    The definition of good moral character is inclusive of the conduct 
referenced in Sec. Sec.  11.7(h)(3) and 11.7(h)(4). Section 11.7(h)(3) 
refers to ``[a]n individual's lack of candor in disclosing facts 
bearing on or relevant to issues concerning good moral character and 
reputation when completing the application or any time thereafter.'' 
Lack of candor is within the ambit of ``honesty and truthfulness, 
trustworthiness and reliability.'' Similarly, Sec.  11.7(h)(4) refers 
to an ``individual who has been disbarred or suspended from practice of 
law or other profession, or has resigned in lieu of a disciplinary 
proceeding * * *.'' Disbarment reflects a lack of the same traits 
required for good moral character and reputation.
    Comment 58: One comment suggested that the Office define what it 
considers to be a violation of ``moral turpitude'' based on decisions 
in disciplinary proceedings before the Office and add the definition to 
Sec.  11.1 inasmuch as ``moral turpitude'' has been open to 
interpretation by State bars and the disciplinary courts.
    Response: The suggestion has not been adopted. The fact that State 
bars and courts of each State interpret their own State laws and 
identify those acts that constitute moral turpitude reflects a wide 
variety of differences among laws under which prosecution may be 
brought. Federal laws raise similar issues. A wide variety of fact 
patterns and underlying laws come before OED for consideration. Courts 
in the state where an applicant's conduct occurred may have issued a 
decision that an act does or does not constitute moral turpitude. There 
may be no decision regarding the act in that state. Courts in another 
state may have issued a decision based on the same or similar law 
regarding the same or similar conduct. It is unlikely that a rule could 
be derived from the decisions issued by the state courts that would be 
clear and unequivocal for all cases.
    It seems preferable to allow applicants to make their presentations 
with respect to concrete circumstances and the particular laws under 
which the conviction occurred. An applicant may present such analyses 
of case law and past circumstances for consideration as the applicant 
deems best to characterize his or her situation. The Office will 
consider the applicant's presentation as well as relevant case law from 
the same and other jurisdictions. Such flexibility is most likely to 
lead to fair results.
    Comment 59: One comment pointed out that although Sec.  11.7(h)(1) 
includes a misdemeanor in the definition of ``a crime,'' the definition 
of ``crime'' in Sec.  11.1 does not include a misdemeanor. It is 
suggested that the rules be consistent in defining repeated terms.
    Response: The suggestion has been adopted. The definition of 
``crime'' in Sec.  11.1 has been revised to include ``any offense 
declared to be a felony or misdemeanor by Federal or State law in the 
jurisdiction where the act occurs.''
    Comment 60: One comment suggested that the phrase ``convicted for 
said felony'' in the third sentence of Sec.  11.7(h)(1) should read 
``convicted of said felony.''
    Response: The suggestion has been adopted, and the sentences are 
restructured.
    Comment 61: One comment suggested that the term ``compelling 
proof'' and the phrase ``at a minimum a lengthy

[[Page 35443]]

period of exemplary conduct'' in Sec.  11.7(h)(1) be defined.
    Response: The suggestion has been adopted in part. Section 11.7 has 
been revised to delete provisions calling for ``compelling proof'' and 
``clear and convincing'' evidence of good moral character. Section 11.7 
will require individuals to establish to the satisfaction of the OED 
Director that they are of good moral character. This standard is set 
forth in the current rules at 37 CFR 10.7(a)(2)(i). Thus, new Sec.  
11.7 will continue to apply the same standard whether the individual is 
a first time applicant, a disbarred attorney, or convicted felon. 
Applicants in the latter two instances must make a more substantial 
showing than a first time applicant with no such record because of the 
need to overcome evidence weighing against a finding of good moral 
character. Case law recognizes that following disbarment, the burden of 
proving good moral character is substantially more rigorous for an 
attorney seeking reinstatement, even in a different jurisdiction, than 
for a first time applicant. See In re Menna, 905 P.2d 944 (Cal. 1995). 
As in the case of reinstatement after disbarment, even a first time 
applicant has a heavy burden of showing good moral character after 
conviction of a felony. See In re Gossage, 5 P.3d 186 (Cal. 2000); In 
re Dortch, 486 S.E.2d 311 (W.Va. 1997).
    Section 11.7(h)(1) has been revised to delete the provision for a 
lengthy period of exemplary conduct. Section 11.7(h)(1)(ii)(B) provides 
a two-year period following completion of the sentence, deferred 
adjudication, and period of probation or parole, whichever is later, 
for demonstrating good moral character and reputation.
    Comment 62: One comment suggested that the term ``provisions'' in 
the first sentence of Sec.  11.7(h)(1)(ii) be changed to 
``presumptions'' since it appears that sections (A) and (B) thereunder 
are presumptions that will be made by the Office for an individual who 
has been convicted of a felony or misdemeanor and is seeking 
registration. The comment further suggested that in Sec.  
11.7(h)(1)(ii)(B), the expression ``apply for or be registered'' be 
amended to read ``apply for registration or be registered'' for 
grammatical correctness. It was still further suggested that since 
proposed paragraph (C) in Sec.  11.7(h)(1)(ii) is not a presumption, it 
should be renumbered Sec.  (h)(iii) and that proposed Sec.  
11.7(h)(iii) be changed to Sec.  11.7(h)(iv). Further, it was suggested 
that the expression ``an application'' in proposed Sec.  
11.7(h)(1)(iii) be changed to ``a complete application for registration 
and the fee required by Sec.  1.21(a)(1)(ii).''
    Response: The suggestions have been adopted in part. In Sec.  
11.7(h)(1)(ii), the term ``provisions'' is changed to read 
``presumptions.'' In Sec.  11.7(h)(1)(ii)(B), the expression ``apply 
for or be registered'' is revised to read ``apply for registration.'' 
The numbering of paragraph (h)(1)(ii)(C) in Sec.  11.7 is changed to 
paragraph (h)(1)(iii), the expression ``an application'' in proposed 
Sec.  11.7(h)(1)(iii) is changed to ``a complete application for 
registration and the fee required by Sec.  1.21(a)(1)(ii) of this 
subchapter,'' and the numbering of Sec.  11.7(h)(1)(iii) is changed to 
Sec.  11.7(h)(1)(iv).
    Comment 63: One comment suggested that the phrase ``from drug or 
alcohol abuse or dependency'' be added after ``recovery'' in Sec.  
11.7(h)(2) to clarify that recovery is from past, as opposed to 
present, drug or alcohol abuse or dependency.
    Response: The suggestion has not been adopted. Section 11.7(h)(2) 
requires that an individual's record be reviewed as a whole to see if 
there is a drug or alcohol abuse or dependency issue. Section 
11.7(h)(2) covers both past and present abuse and dependency issues. 
Accordingly, recovery should encompass past or present abuse and 
dependency issues.
    Comment 64: One comment suggested that the procedure in Sec.  
11.7(h)(2) for holding an application for registration in abeyance for 
an applicant who has not established a record of recovery from drug or 
alcohol dependency, and manner by which an agreement for recovery from 
the dependency is ``initiated'' and confirmed can be clarified by 
ending the last sentence at ``time,'' and adding the following 
sentence: ``If the individual accepts the offer, the individual and the 
OED Director shall execute an agreement specifying (i) the period of 
time the application for registration will be held abeyance, (ii) the 
conditions regarding the initiation and confirmation of treatment; and 
(iii) conditions that constitute evidence that recovery is confirmed.''
    Response: The suggestion is now moot inasmuch as the proposal for 
holding an application in abeyance while an individual complies with a 
recovery agreement is not adopted. The OED Director will provide the 
individual with an opportunity to withdraw his or her application in 
order to avoid its denial with attendant consequences under Sec.  
11.7(k). The individual will be notified that he or she may resume the 
application for registration or reapply when the individual is no 
longer abusing alcohol or drugs and can satisfactorily demonstrate that 
he or she is complying with treatment and undergoing recovery. Under 
Sec.  11.8(b), the individual may resume completion of the application 
for registration without taking the examination again if, within two 
years of mailing date of a notice of passing the examination, the 
individual files a satisfactory showing and complies with the 
provisions of Sec.  11.8. An individual would reapply if a satisfactory 
showing is made outside the two-year period.
    Comment 65: One comment suggested that Sec.  11.7(h)(4) be expanded 
to include, in addition to a suspended or disbarred attorney, a non-
attorney who, for instance, was disciplined by an institution or 
government authority for acts of misconduct involving moral character, 
e.g., students, stock brokers, CPA's, doctors. It was also suggested 
that Sec.  11.7(h)(4) be revised to organize its provisions to 
separately and clearly identify individuals ineligible for registration 
and their respective ineligibility periods, the documents and fees to 
be filed for registration, as well as the presumptions that arise from 
the discipline or resignation and the available defenses.
    Response: The suggestion has been adopted in part. The provisions 
of Sec.  11.7(h)(4) have been expanded to include individuals who are 
disbarred, suspended or have resigned in lieu of disciplinary action in 
the legal profession as well as other professions. Further, the 
provisions have been extensively reorganized to more clearly identify 
the ineligible individuals, their respective ineligibility periods, and 
the fees and documents they must file. The burden of establishing 
reform and rehabilitation has been clarified to require a satisfactory 
showing, which is consistent with Sec.  11.7(h)(1).
    Comment 66: One comment suggested that to avoid confusion Sec.  
11.7(i) should not introduce the term ``applicant'' for the first time, 
and that ``applicant'' be changed to ``individual.''
    Response: The suggestion has been adopted.
    Comment 67: One comment suggested that in Sec.  11.7(i)(2)(xii), 
the word ``religious'' replace the word ``church'' as a sponsor of 
``programs designed to provide social benefits or to ameliorate social 
problems,'' because ``church'' is limited to a body of Christians.
    Response: The suggestion is now moot. Proposed Sec.  11.7(i)(1) and 
the second and third sentences of proposed Sec.  11.7(i)(2) have been 
deleted. The first sentence of proposed Sec.  11.7(i)(2) has been 
renumbered Sec.  11.7(i) in the final rules. Proposed Sec.  
11.7(i)(2)(viii) has been deleted, and the remaining

[[Page 35444]]

proposed Sec. Sec.  11.7(i)(2)(i) through 11.7(i)(2)(xiii) have been 
renumbered Sec. Sec.  11.7(i)(1) through 11.7(i)(12) in the final 
rules. Section 11.7(i)(11) in the final rules, which is based on 
proposed Sec.  11.7(i)(2)(xii), is revised to eliminate any 
characterization, such as ``church,'' limiting the identity of 
sponsors.
    Comment 68: One comment suggested that the language of the first 
two sentences of Sec.  11.7(j) be revised as follows: If, after an 
investigation of moral character and reputation, the OED Director is of 
the opinion that the evidence of record does not establish that the 
individual seeking registration possesses good moral character and 
reputation, the OED Director shall issue to the individual a notice to 
show cause with reasons why the individual should not be registered. 
The notice shall give the individual the opportunity for a hearing 
before the Committee on Enrollment or withdrawing his or her 
application for registration.
    Response: The suggestion has been adopted in part. As discussed 
with regard to Sec.  11.4, the Office will no longer provide for a 
Committee on Enrollment, and the proposal to provide for oral 
enrollment hearings will not be adopted. The first two sentences have 
been replaced by the following provisions: ``[i]f, following inquiry 
and consideration of the record, the OED Director is of the opinion 
that the individual seeking registration has not satisfactorily 
established that he or she presently possesses good moral character and 
reputation, the OED Director shall issue to the individual a notice to 
show cause why the individual's application for registration should not 
be denied.'' The ``individual shall be given no less than ten days from 
the date of the notice to reply. The notice shall be given by certified 
mail at the address appearing on the application if the address is in 
the United States, and by any other reasonable means if the address is 
outside the United States.'' Following ``receipt of the individual's 
response, or in the event of the absence of a response, if any, the OED 
Director shall consider the individual's response and the record, and 
determine whether, in the OED Director's opinion, the individual has 
sustained his or her burden of satisfactorily demonstrating that he or 
she presently possesses good moral character and reputation.''
    Comment 69: One comment objected to the term ``interrogated'' in 
Sec.  11.7(j)(1) as sounding like an inquisition, and suggested that 
the phrase ``to be sworn and interrogated'' be changed to read ``to 
provide sworn testimony''; and suggested that ``an adverse decision'' 
is indefinite and should be changed to ``a decision denying recognition 
based on lack of good moral character and reputation.''
    Response: The suggestion is moot since proposed Sec.  11.7(j)(1) 
has not been adopted.
    Comment 70: One comment pointed out that Sec.  11.7(j)(2) needs to 
clarify that the ``individual'' is not the ``particular person,'' and 
suggested that the term ``individual'' be changed to read ``individual 
seeking registration.''
    Response: The suggestion is moot since proposed Sec.  11.7(j)(2) 
has not been adopted.
    Comment 71: One comment suggested that Sec.  11.7(j)(2)(ii) refers 
to ``rights'' listed in ``paragraph (j)(2)(A),'' whereas Sec.  
11.7(j)(2(ii) should reference Sec.  11.7(j)(2)(i), which is directed 
to ``rules of procedure.''
    Response: The suggestion is moot since proposed Sec.  11.7(j)(2) 
has not been adopted.
    Comment 72: One comment noted the use of the terms 
``recommendation'' and ``decision'' in Sec.  11.7(j)(3) is confusing 
and the need for consistency.
    Response: The suggestion is moot since proposed Sec.  11.7(j)(3) as 
well as proposed Sec. Sec.  11.7(j)(4) and 11.7(j)(5) have not been 
adopted.
    Comment 73: One comment suggested that the first sentence of Sec.  
11.8(a) be clarified to inform an individual who passed the examination 
that he or she has two years within which to complete registration by 
revising the sentence to read ``an individual passing the registration 
examination who does not comply with the requirements of paragraph (b) 
of this section within two years after the date on a notice of passing 
the examination will be required to retake the registration 
examination.''
    Response: The subject of the comment has been moved to Sec.  
11.8(c), which has been revised to reflect this comment.
    Comment 74: One comment noted that Sec.  11.8(b) requires that an 
attorney or agent must submit a certificate of good standing from the 
bar of the highest court of a state, whereas this would not be possible 
for agents.
    Response: The suggestion has been adopted. Section 11.8(b) has been 
amended to require only attorneys to submit a certificate of good 
standing from the bar of the highest court of a state.
    Comment 75: One comment suggested the requirement in Sec.  11.8(b) 
that attorneys and agents must file a completed form to obtain the 
Office's authorization to use a digital signature as a prerequisite for 
registration before the Office is premature and unnecessary. The 
purpose for the digital signature is to facilitate electronic filing; 
however, electronic filing is, currently, not required. Moreover, it is 
not clear why a registration applicant must complete a form for a 
digital signature in order to be registered to practice before the 
Office, yet currently registered attorneys and agents have no such 
requirement, and a form for a digital signature can be completed when 
it is appropriate for that attorney or agent to do so.
    Response: The suggestion has been adopted. Section 11.8(b) has been 
revised to remove the provision requiring ``a completed form to obtain 
the Office's authorization to use a digital signature.''
    Comment 76: One comment suggested that Sec.  11.6(c) appears to 
conflict with State bar rules, which do not have residency 
requirements, that the proposed rules do not appear to prohibit aliens 
who no longer reside in the United States to remain registered, and 
suggested that aliens no longer residing in the United States may 
continue to be registered and practice before the Office, that such 
continued work would not be in contravention of the immigration laws as 
they would not be working in the United States, and that a former 
permanent resident would be eligible for re-admission to the United 
States as a special immigrant.
    Response: The suggestion has not been adopted. State law is not 
applicable. Under 5 U.S.C. 500(e), the Office is empowered to determine 
who may practice before it with respect to patent matters. New Sec.  
11.6(c) continues the practice followed under current 37 CFR 10.6(c). 
Under Sec.  11.6(c), only aliens residing outside the United States 
satisfying the requirements of that rule may be registered. Such aliens 
must show that the patent office of the country where they reside and 
are registered practitioners grants substantial reciprocity to 
attorneys and agents admitted to practice before the USPTO in patent 
cases. At this time, only the Canadian Patent Office is considered to 
meet the requirements. Aliens in the United States, such as permanent 
residents, meeting the requirements of Sec. Sec.  11.6(a) or 11.6(b) 
can be registered while they remain in the United States. The 
provisions of Sec.  11.9(b) continue the practice of granting limited 
recognition to aliens in the United States not meeting the requirements 
of Sec. Sec.  11.6(a) or 11.6(b), but who nevertheless show they are 
authorized to prepare and prosecute patent applications; they may be 
granted limited recognition under Sec.  11.9(b) to practice while they 
remain in the

[[Page 35445]]

United States. Upon departing the United States, their authorization to 
practice ceases, and they can be registered only if the provisions of 
Sec.  11.6(c) are satisfied.
    Comment 77: One comment objected to the fifth sentence in Sec.  
11.9(b)(2), which states ``[a]ny person admitted to the United States 
to be trained in patent law shall not be admitted to the registration 
examination or granted recognition until completion of that training.'' 
The comment suggested that non-immigrant persons be registered.
    Response: The suggestion has been adopted in part. Section 11.9(b) 
has been revised to provide limited recognition to a nonimmigrant alien 
who resides in the United States and fulfills the provisions of 
Sec. Sec.  11.7(a) and (b) if the nonimmigrant alien is authorized to 
be employed or trained in the United States in the capacity of 
representing a patent applicant by preparing or prosecuting a patent 
application. The fifth sentence in proposed Sec.  11.9(b) has not been 
adopted.
    Comment 78: Three comments suggested it is unclear whether a 
nonpractitioner assistant would be violating proposed Sec.  11.10(a) if 
he or she assisted a registered practitioner, for example, in the 
preparation of a patent application, even under the direction and 
guidance of a registered practitioner. The question is raised in part, 
because proposed Sec.  11.5(b) does not define ``prosecution.''
    Response: This suggestion has not been adopted. Section 11.10(a) 
adds nothing that was not already present in the current 37 CFR 
10.10(a). No action has been taken regarding proposed Sec.  11.5(b). It 
is the registered practitioner, as opposed to the non-practitioner, who 
is responsible for compliance with Sec.  11.10(a). It is common 
practice for nonpractitioner assistants to work under the direct 
supervision of a registered practitioner in conducting many of the 
activities associated with practice before the Office, and nothing in 
Sec.  11.10(a) prohibits this activity so long as the registered 
practitioner supervises and remains responsible for the assistant's 
work.
    Comment 79: One comment suggested that the subtitle of Sec.  
11.10(b), ``Undertaking for registration by former Office employees'' 
is not clear since the phrase ``undertaking for registration'' would 
have no meaning to a person unfamiliar with OED practice.
    Response: The suggestion has been adopted. The subtitle of Sec.  
11.10(b) has been revised to read ``Post employment agreement of former 
Office employees.''
    Comment 80: One comment suggested that the first sentence of Sec.  
11.10(b), addressing restrictions on registration for current 
employees, be divided from the second and subsequent sentences, which 
address restrictions on practice by former employees.
    Response: The suggestion has been adopted in part. The first 
sentence has been deleted. The first sentence prohibited registration 
of current employees who had not been previously registered. However, 
current employees who pass the registration examination are permitted 
to be registered, but their names are endorsed on the register as 
inactive. They are not permitted to practice in patent cases while they 
remain employed by the Office.
    Comment 81: One comment objected to Sec. Sec.  11.10(b)(1) and 
11.10(b)(2) as intertwining rules of conduct with commentary.
    Response: This suggestion has been adopted. The use of examples was 
proposed to clarify the rules. However, the examples have been removed. 
It is planned to expand the discussion of restrictions on former 
examiners in the Manual of Patent Examining Procedure (MPEP). 
Appropriate examples will be included in the MPEP.
    Comment 82: Three comments suggested that Sec. Sec.  11.10(b)(1) 
and (b)(2) be revised to change ``United States'' to ``Office'' to 
remove ambiguity. One comment pointed out that all communications to 
the Office are in some sense to the United States. One comment pointed 
out that the ``or's'' in Sec.  11.10(b)(1) result in the rule 
proscribing preparing someone's tax return or helping to write a letter 
to their congressman. A fourth comment suggested that it is unnecessary 
to reference United States or the Office inasmuch as the United States 
would be a party with respect to the prosecution of a patent 
application since the Office would be regarded as one party and that 
the United States has a direct and substantial interest since it is 
granting the monopoly for a patent or trademark.
    Response: These comments have been accepted. Only representation 
before the Office is within the scope of this part, and the relevant 
provisions have been revised to more clearly reflect this.
    Comment 83: One comment suggested that it is unnecessary to include 
limitations in Sec.  11.10(b)(1) beyond that it can be construed merely 
to require that former patent examiners cannot act as a representative 
or intend to bring influence, including ``conduct occurring behind the 
scenes,'' for a period of two years in a ``particular matter in which 
he or she personally and substantially participated as an employee of 
the Office.''
    Response: This suggestion has not been adopted. The substantive 
restrictions are set forth in Sec. Sec.  11.10(b)(1) and 11.10(b)(2). 
Section 11.10(b)(3) provides definitions for use in interpreting the 
substantive provisions, but does not impose additional restrictions.
    Comment 84: One comment suggested that Sec. Sec.  11.10(b)(1) and 
11.10(b)(2), like 18 U.S.C. 207, not separate appearance and influence 
portions of the statute into two separate and distinct prohibitions.
    Response: These sections have been rewritten to remove the 
references to communications with the intent to influence, which are 
already included within the term ``representation'' as defined by Sec.  
11.10(3)(i).
    Comment 85: Three comments suggested that the items listed in 
Sec. Sec.  11.10(b)(1)(i)-(iii) and 11.10(b)(2)(i)-(iii), should not be 
in the alternative as proposed, but should be linked with ``and'' so as 
to include all three conditions. Another comment suggested Sec. Sec.  
11.10(b)(1) and 11.10(b)(2) appear to present grammar and syntax 
problems that jam too many thoughts into a single sentence, and do not 
work.
    Response: The suggestion has been adopted. These provisions have 
been rewritten for clarity.
    Comment 86: One comment observed that unlike Sec. Sec.  11.10(b)(1) 
and 11.10(b)(2), 18 U.S.C. 207 does not specify that appearance is 
``formal and informal'' or that communications are ``oral or written,'' 
and that the sections be revised to conform with the statute.
    Response: The suggestion has been adopted in part. Section 11.10(b) 
does not implement or interpret 18 U.S.C. 207. The references to 
appearances and communications have been removed from Sec. Sec.  
11.10(b)(1) and 11.10(b)(2) as discussed in response to Comment 84.
    Comment 87: One comment said the interchanging use in Sec.  
11.10(b) of ``individual,'' ``any person'' and ``employee'' is somewhat 
confusing.
    Response: The suggestion has not been adopted. The Office does not 
believe that the use of these terms renders Sec.  11.10(b) ambiguous, 
or that using different or fewer terms would increase its clarity.
    Comment 88: One comment said 18 U.S.C. 207 provides for a one-year 
restriction while Sec.  11.10(b)(2) provides for a two-year 
restriction, and suggested that the period in the proposed rule be 
commensurate with the statutory period.
    Response: The suggestion has not been adopted. While Sec.  
11.10(b)(2) does

[[Page 35446]]

not implement 18 U.S.C. 207, its two-year restriction parallels that of 
the statute.
    Comment 89: One comment suggested that Sec.  11.11(a) be revised to 
change ``state bar'' to ``State bar'' in the rules to conform to the 
definition of ``State'' in Sec. Sec.  11.1 and 11.7(h)(4).
    Response: The suggestion has been adopted. The lower case ``s'' in 
``state'' or ``states'' has been changed to an upper case ``s'' 
wherever found in Sec.  11.11(a). Also, the designation of the first 
paragraph of Sec.  11.11 as paragraph (a) has been deleted inasmuch as 
proposed Sec. Sec.  11.11(b) through 11.11(f) remain under 
consideration, and no paragraph following the first paragraph has been 
adopted.
    Comment 90: One comment suggested that the second sentence of Sec.  
11.11(a) does not parse.
    Response: The suggestion has been adopted. Although the language of 
the sentence is the same as found in 37 CFR 10.11(a), the language has 
been updated and revised.
    Comment 91: One comment suggested that the Office should be able to 
maintain at least three e-mail addresses for practitioners (e.g., home, 
work, and ``permanent'' e-mail addresses), and send electronic 
communication to all of these addresses to maximize the chance that a 
message is actually received by the intended practitioner. The cost of 
doing this is virtually nothing.
    Response: The suggestion has been adopted in part. OED will 
maintain a list of up to three e-mail addresses for a registered 
practitioner and Sec.  11.11 has been revised to provide for up to 
three e-mail addresses where the practitioner receives e-mail. 
Practitioners will be responsible for updating OED with each and every 
change of e-mail address. OED plans to use all the addresses furnished 
by a practitioner to communicate with him or her.
    Comment 92: One comment suggested that the following groups of 
alien attorneys and agents should be exempt from the provisions of 
proposed Sec. Sec.  11.6(a) and 11.6(b), respectively: (1) aliens who 
have visas acceptable for practice before the Office under current Rule 
10.6, whether or not they have yet entered the United States; and (2) 
aliens in the midst of the visa application process for practice before 
the Office acceptable under current Rule 10.6. Requiring aliens in 
these groups to obtain new visas is unduly burdensome and impractical 
if the visas are sufficient under the current rule.
    Response: The suggestion has not been adopted. As discussed in 
response to Comment 23, empowering nonimmigrant aliens to engage in 
employment or training contrary to the immigration laws and their 
reliance on registration to conduct themselves in that manner would be 
inconsistent with the requirement that they possess good moral 
character. Regulations prohibit some nonimmigrant aliens from engaging 
in employment. See, e.g., 8 CFR 214.1(e). A nonimmigrant alien in the 
United States may not engage in any employment unless the person has 
been accorded a nonimmigrant classification which authorizes employment 
or the person has been granted permission to engage in employment in 
accordance with regulations found in Title 8 of the Code of Federal 
Regulations. A nonimmigrant alien who is permitted to engage in 
employment may engage only in such employment as has been authorized. 
Any unauthorized employment by a nonimmigrant alien constitutes a 
failure to maintain status. See, e.g., 8 CFR 214.1(e). The Bureau of 
Citizenship and Immigration Services (BCIS) determines which 
nonimmigrant alien is authorized to be employed while in the United 
States, the capacity in which they are employed, and who may employ 
them. The Office has no authority to license nonimmigrant aliens to 
engage in employment, or to be employed by an employer beyond that 
which the BCIS has sanctioned.
    Comment 93: One comment suggested the phrase ``such registration is 
not inconsistent with the terms upon which the alien was admitted to, 
and resides in, the United States,'' in Sec. Sec.  11.6(a) and 11.6(b), 
be defined to enable practitioners and the general public to understand 
what constitutes registration not inconsistent with the terms upon 
which the alien was admitted to and is residing in the United States.
    Response: The suggestion has not been adopted. The admission of 
aliens to the United States and their authority to be employed is 
dependent upon regulations promulgated by BCIS and its predecessor, the 
Immigration and Naturalization Service. Those regulations change with 
some frequency. It would not be prudent for the Office to adopt 
definitions that would be rendered inconsistent with the regulations 
adopted by the BCIS. Case law provides guidance in defining the meaning 
of the phrase, which has been in use since 1985.
    Comment 94: One comment suggested that the circumstances under 
which an unregistered attorney may take testimony in an interference 
should be elaborated upon either in Sec.  11.6(d) or in the commentary.
    Response: The suggestion has not been adopted. Section 11.6(d) 
permits the Chief Administrative Patent Judge or Vice Chief 
Administrative Patent Judge of the Board of Patent Appeals and 
Interferences to determine whether and the circumstances under which an 
attorney who is not registered may take testimony for an interference 
under 35 U.S.C. 24, or under 37 CFR 1.672. The circumstances and 
necessity for setting forth circumstances can differ between 
interferences. Accordingly, it is inappropriate to attempt to provide 
in the rule or commentary an exhaustive listing of circumstances. The 
Judges will exercise their discretion in determining the circumstances 
under which the testimony will be taken.
    Comment 95: One comment suggested that the registration procedure 
sequence in Sec.  11.7 contains redundancy regarding scientific and 
technical training in Sec. Sec.  11.7(b)(1) and 11.7(b)(3); that the 
procedure contained in Sec.  11.7(b)(4) for retaking the examination 
upon failure should be a separate provision; that the qualifications 
considered are found in Sec.  11.7(b)(i) as well as Sec. Sec.  
11.7(b)(2) to (b)(4) and (b)(6); that the requirement to keep an 
application updated be separated from Sec.  11.7(b)(2); and it is 
necessary to clarify why an individual reapplying more than one-year 
after failing the registration examination must again submit 
satisfactory proof of his or her scientific training.
    Response: The suggestion for reorganizing the regulation is adopted 
in part. The provisions in proposed Sec.  11.7(b)(3) have been merged 
into Sec.  11.7(b)(1)(i)(C), and proposed Sec.  11.7(b)(5) has been 
revised and renumbered Sec.  11.7(b)(3). Proposed Sec. Sec.  11.7(b)(4) 
and 11.7(b)(6) has been moved into Sec.  11.7(b)(1) and renumbered 
Sec. Sec.  11.7(b)(1)(ii) and 11.7(b)(1)(iii), respectively. The 
reference to Sec.  11.7(b)(3) in Sec. Sec.  11.7(d)(1), 11.7(d)(2) and 
11.7(d)(3) is revised to read as Sec.  11.7(b)(1)(i)(C). The procedure 
for retaking the examination upon notice of failure has been moved to 
Sec.  11.7(b)(1)(ii). It is believed to be preferable to consolidate in 
one paragraph the provisions for passing the examination and for 
retaking the examination upon failure. The qualification provisions in 
Sec.  11.7(b)(1) are not repeated in renumbered Sec. Sec.  11.7(b)(2) 
and 11.7(b)(3). The latter sections address two matters not covered in 
Sec.  11.7(b)(1); the consequence of failing to file a complete 
application, and the necessity for an individual, who does not reapply 
until more than one year after the mailing date of the notice of 
failure, to again comply with Sec.  11.7(b)(1).
    Individuals reapplying more than one year after failing the 
registration examination must again submit

[[Page 35447]]

satisfactory proof of their scientific training because their files 
will have been archived. The Office does not have facilities for on-
site long-term storage of files of individuals who fail the 
examination. Ordering files from archived records could subject 
applicants to unanticipated delays and does not promote efficiency. 
While there are plans for scanning the files, resources are limited at 
this time, and until scanning of all files is available, files older 
than one year must be archived.
    Comment 96: One comment suggested that all practitioners be treated 
the same with respect to fitness, moral character, and legal competence 
by: requiring all practitioners to have minimum technical and legal 
experience if they are to practice before the USPTO; resolve the 
allegedly inherent ``unauthorized practice of law'' by agents by 
eliminating the agent status altogether, allowing agent status for 
those only who complete the patent academy with four or more years' 
experience; change the name ``agent'' to ``non-legal agent'' or other 
name in order to protect the public and to put the public on notice 
that they are not working with an attorney; notify agents that they 
cannot practice law and further limit their scope of practice to 
preparing and filing applications, not prosecution of patent 
applications; and require a registered attorney to sign work done by an 
agent, and/or require each agent to practice under the supervision of 
registered attorney.
    Response: The suggestion has not been adopted. A requirement for 
minimum legal experience is subject to the same weakness discussed in 
response to Comment 33. The Office is neither eliminating registration 
of patent agents, nor requiring that they practice under the 
supervision of registered attorneys. This rule making has not addressed 
any change of status for patent agents. Patent agents serve a variety 
of purposes, including helping make access to the patent system widely 
available. The Office will continue to register individuals as patent 
agents. Issues affecting unauthorized practice of law will be addressed 
in the rules and commentary pertaining to Sec.  11.5(b). The period for 
comment on the proposed rules for Sec.  11.5(b) has been extended until 
June 11, 2004.
    Comment 97: One comment suggested that to benefit from patent 
harmonization, the registration examination given under Sec.  11.7 
should place less emphasis on formalities and test each candidate's 
ability to identify inventions, draft applications to global standards, 
respond to substantive official actions from all major patent offices, 
advise on the interpretation of patents and their validity, and advise 
clients on the global patent positions arising in the commonly 
encountered business situations.
    Response: The suggestion has not been adopted. Under 35 U.S.C. 
2(b)(2)(D), registration is for the recognition of agents and attorneys 
representing applicants or other parties before the Office. 
Accordingly, the examination is properly confined to aspects of 
drafting applications to be filed in the Office as well as applications 
filed under the Patent Cooperation Treaty, and responding to 
substantive official actions from the Office. A practitioner advising 
clients on their global patent positions arising in the commonly 
encountered business situations should have the legal knowledge, skill, 
thoroughness and preparation reasonably necessary to provide the 
advice. Practitioners without the background should either prepare 
adequately to provide competent advice or refer the client to other 
practitioners prepared to provide the advice.
    Comment 98: One comment referred to the comments on page 69448 of 
the Notice which indicated that the registration examination will be 
``open book'' in the sense that the MPEP would be accessible on-line in 
the computerized examination. The comment suggested that individuals be 
permitted to utilize a paper copy of the MPEP because prohibiting paper 
resource material will, to some extent, adversely impact some 
individuals.
    Response: The suggestion has not been adopted. Prior to taking an 
examination, a tutorial will be provided by the commercial entity to 
all individuals to show them how to operate the computer, download and 
search the MPEP, and navigate among the questions. Further, we are in 
the process of developing a tutorial that will be available either on 
or through a link from the Office Web site to show how the MPEP will be 
accessed and navigated during the examination. Use of a computer on 
this examination, as on tests for driver's licenses, is readily 
learned.
    Comment 99: One comment inquired why candidates are no longer 
allowed to bring in their notes and/or reference books to the exam, and 
suggested that they be able to bring notes used in preparing for the 
exam, an indexed notebook on patent law material, and a hard copy of 
the MPEP that has been tabbed to the candidate's liking.
    Response: The suggestion has not been adopted inasmuch as the rules 
do not contain a provision addressing the issue. The answer to each 
examination question is located in the MPEP. The MPEP will be available 
on the computer and will download quickly. Thus, the source of all 
correct answers will be made available to all candidates. Additional 
materials are unnecessary.

Rule Making Considerations

Regulatory Flexibility Act

    The Regulatory Flexibility Act, 5 U.S.C. 601 et seq, requires 
agencies to consider the economic impact of regulatory actions on small 
entities when finalizing a rule making. If the rule is expected to have 
a significant economic impact on a substantial number of small 
entities, the agency must prepare a final regulatory flexibility 
analysis (FRFA). However, section 605(b) of the Regulatory Flexibility 
Act allows the head of an agency to prepare a certification statement 
in lieu of a FRFA if the rule making is not expected to have a 
significant economic impact on a substantial number of small entities. 
The Deputy General Counsel for General Law \1\ of the USPTO hereby 
certifies to the Chief Counsel for Advocacy, Small Business 
Administration, that this final rule will not have a significant 
economic impact on a substantial number of small entities. The factual 
basis for the certification is as follows:

Factual Basis for Certification
---------------------------------------------------------------------------

    \1\ By statute, the USPTO may establish regulations, not 
inconsistent with law, which ``govern the recognition and conduct of 
agents, attorneys or other persons representing applicants or other 
parties before the Office, and may require them, before being 
recognized as representatives of applicants or other persons, to 
show that they are of good moral character and reputation and are 
possessed of the necessary qualifications to render to applicants or 
other persons valuable service, advice, and assistance in the 
presentation or prosecution of their applications or other business 
before the Office[.]'' 35 U.S.C. 2(b)(2)(D). The Under Secretary of 
Commerce for Intellectual Property and Director of the USPTO has 
delegated his authority to the USPTO's Deputy General Counsel For 
General Law. See AAO217-2 (2001).
---------------------------------------------------------------------------

    The primary purpose of the rule package is to codify enrollment 
procedures implementing computerized delivery of the registration 
examination and to provide procedures for processing registration 
applications that are more efficient and flexible for the Office and 
applicants. At the outset, it should be noted that the only persons 
affected by the fee increases set forth in this rule package are those 
individuals seeking enrollment to become registered patent 
practitioners or those individuals seeking registration or 
reinstatement after certain events led to their disbarment or 
suspension on ethical

[[Page 35448]]

grounds, denial of registration on grounds of lack of good moral 
character and reputation, or conviction of a felony or crime involving 
moral turpitude or breach of fiduciary duty.
    Both attorneys and non-attorneys can take the registration 
examination. Inasmuch as the income of attorneys and non-attorneys 
differs, the discussion contained in this Regulatory Flexibility Act 
certification considers the respective average incomes of both types of 
potential applicants. USPTO statistics indicate that over the course of 
the last four examinations (during 2002 and 2003), on average 
approximately 19% of applicants are licensed attorneys at the time they 
seek registration to take the enrollment examination. For April 2002, 
October 2002, April 2003, and October 2003, the number of applicants 
indicating they were attorneys was 26%, 16%, 17% and 16%, respectively. 
Conversely, the USPTO estimates that approximately 81% of applicants 
are not licensed attorneys at the time they seek registration to take 
the enrollment examination.
    The Office does not require applicants to identify their 
affiliation with a particular type of employer (law firm, business, 
solo practitioner, etc.) at the time of application. Furthermore, the 
Office does not require applicants to categorize their employer as a 
large or small entity. In a customer satisfaction survey answered by 
1,651 patent attorneys in 2002, the Office collected data indicating 
that approximately 63.5% of patent attorneys are affiliated with a law 
firm. The Office believes that the affiliation of attorney-applicants 
does not dramatically differ from the affiliation of patent attorneys 
who responded to the survey. Thus, estimates for attorney income are 
based on the compensation attorneys receive in law firms.
    Only individuals, not legal entities, may take the registration 
examination. This is true even if the individual is a lawyer having a 
solo practice. The fees associated with the application and examination 
may be paid by the individual applicant or by his or her employer. 
Employers, some of which may qualify as small entities, are not 
required to pay the fees. Whether the individual or the business (small 
or large) bears the cost of the fees is at the option of the individual 
and the employer. Inasmuch as the rules do not require the business 
(large or small) to bear the cost of the fees, the Small Business 
Administration's size standards for offices of lawyers are not 
applicable. Thus, the Office has considered, but rejected, measuring 
the impact of this rule package on law firms that may qualify as small 
entities.

Computerized Examination Fee

    Section 1.21(a)(1)(ii)(A) establishes a $200 registration 
examination fee for test administration by a commercial entity. 
Individuals wishing to take the computerized examination administered 
by a commercial entity will pay the entity an additional fee of $150. 
The combined cost of $350 ($200 + $150) is only $40 more than the $310 
fee previously charged by the Office. The $40 increase provides 
applicants with additional conveniences, such as the ability to take 
the examination in one of over 400 locations throughout the country, 
thereby reducing travel and associated expenses. The examination is 
expected to be offered by the commercial entity five days a week, 
excluding holidays. Consequently, applicants will have more 
opportunities to take the examination, rather than waiting for the 
Office to administer the examination only twice per year.

Substantial Number of Persons Affected

    Of approximately 5,897 applications filed in Fiscal Year 2003 for 
recognition to practice before the USPTO in patent cases, approximately 
5,338 individuals were admitted to take the examination. Based upon the 
admission rate (approximately 90%), the USPTO estimates that 
approximately the same number of individuals will be affected by the 
change to Sec. 1.21.

Not a Significant Economic Impact

    The $40 increase in fees to take the registration examination is 
insignificant. The previously charged $310 fee has not been increased 
since 1997. In comparison to examination fees charged by various state 
bars, the $350 total fee is quite low. See, e.g., Comprehensive Guide 
to Bar Admissions 2004, Chart XI, Bar Admissions Fees (National 
Conference of Bar Examiners and American Bar Association Section of 
Legal Education and Admissions to the Bar), also available on the 
Internet at www.ncbex.org/pub.htm. All state bars charge bar 
examination fees. For non-attorneys, the state bar examination fee 
ranges from $100 to $1,450, and for attorneys, the fee ranges from $100 
to $2,500. The USPTO examination fee is less than or equal to the fee 
charged by 34 states for non-attorneys, and less than or equal to the 
fee charged by 33 states for attorneys.
    As previously noted, the Office estimates that approximately 19% of 
applicants seeking enrollment are attorneys licensed to practice in a 
U.S. jurisdiction. Of this 19% of applicants, approximately 63.5% of 
these attorneys work in law firms. The average total compensation of 
attorneys in a law firm ranges from $102,841 to $299,391, depending on 
whether the attorney is of-counsel, a staff attorney, an associate 
attorney, a non-equity partner or an equity partner/shareholder. See, 
e.g., The 2003 Survey of Law Firm Economics, ``National Individual 
Status Codes Total Compensation,'' p. 169. The relevant ``Total 
Compensation'' chart is also available at www.altmanweil.com/pdf/2003SLFESample.pdf. Thus, the $40 increase in total fees to take the 
registration examination is insignificant to attorneys, in comparison 
with their average annual income.
    For those applicants who are not licensed attorneys at the time 
they register to take the examination, it is noted that the average 
income for males in the United States is about $58,000. For females in 
the United States, the average income is $41,000. See ``Income In The 
United States: 2002 Current Population Reports Consumer Income'' issued 
by the U.S. Census Bureau, page 9, www.census.gov/prod/2003pubs/p60-221.pdf. It is equally likely that an applicant for registration is a 
male or female. Accordingly, it is assumed that the average income of 
an applicant is $49,500, the average of the incomes of males and 
females in the United States. In comparison to the average income of a 
citizen of the United States, the $40 increase in total fees to take 
the computerized examination is not significant.
    In addition, the Office is giving applicants the option of taking 
the examination by computer or by paper (discussed below). Applicants 
may choose the lower priced option of taking the computerized 
examination, rather than choosing to take the higher priced paper 
examination. There is no substantive difference between the 
computerized and paper versions of the examination. Applicants who take 
the computerized examination will not be required to purchase 
computers, software or computer programs.

Paper Examination Fee

    Section 1.21(a)(1)(ii)(B) establishes a $450 registration 
examination fee for test administration by the Office. For the past 
several decades, the Office of Personnel Management administered a 
paper examination for the Office, which cost applicants $310. The 
Office must charge the $450 fee in order to recoup the higher costs of 
administering the paper examination. The examination provided for under 
Section 1.21(a)(i)(ii)(B) will be given on paper only once per year at 
or relatively near

[[Page 35449]]

the USPTO headquarters office in Alexandria, Virginia.

Not a Substantial Number of Small Entities

    The Office does not believe that a substantial number of applicants 
will request the Office to deliver the paper examination to them 
because the administration and grading of such a paper examination will 
cost more and will take more time to process. Release of results will 
take much longer than in the case of the electronic examination. As a 
result, applicants who choose the paper examination will not be 
eligible for registration as quickly as those passing the computerized 
examination.
    Based on the 5,897 applications received in Fiscal Year 2003, the 
Office estimates that the change to Sec. 1.21 would impact few (about 
2%) registration applicants. It is estimated that approximately 130 
individuals will request that the Office administer a paper examination 
to them and grade it annually. The Office estimates that approximately 
one half of DC metro area applicants may wish to take the paper 
examination.
    In Fiscal Year 2003, the number of local applicants taking the 
examination in each of two administrations was 235 and 238, 
respectively. In Fiscal Year 2002, the number of local applicants 
taking the examination in each of two administrations was 285 and 252, 
respectively. In Fiscal Year 2001, the number of local applicants 
taking the examination in each of two administrations was 270 and 285, 
respectively. Assuming that one half of the applicants would want to 
take the paper examination, the Office estimates approximately 130 
applicants will desire to take the paper examination provided for under 
this final rule section. As such, the rule does not affect a 
substantial number of individuals.

Not a Significant Economic Impact

    The $450 fee is an increase of only $140 over the fee previously 
charged to take the examination.
    As previously stated, approximately 19% of applicants are 
attorneys, and approximately 63.5% of those attorneys earn an average 
annual income ranging from $102,841 to $299,391. Approximately 81% of 
applicants are non-attorneys, with an average annual income of $49,500. 
This fee increase will not have a significant economic impact on 
attorneys or non-attorneys.
    In addition, the paper examination is provided as an alternative to 
the computerized examination. In this way, the USPTO affords applicants 
a voluntary, additional option for those who desire to take the 
examination on paper. Applicants are not required, under this rule 
making or any other statute or regulation, to take the paper 
examination. Taking the more expensive paper examination is solely at 
the discretion of the applicant.
    In fact, the commercial entity providing the computerized 
examination will be able to accommodate those applicants who require a 
reasonable accommodation. Thus, there is no reason that an applicant 
would be required to take the paper examination administered by the 
Office, which costs more than the computerized examination given by a 
commercial entity.

Petition Fee

    Section 1.21(a)(5)(i) establishes a fee of $130 for petitions to 
the Director of the Office of Enrollment and Discipline.

Not a Substantial Number of Small Entities

    The Office initially estimated that there would be approximately 69 
petitions impacted by this fee. In Fiscal Years 2002 and 2003, there 
were, respectively, 67 and 57 petitions to the Director of Enrollment 
and Discipline filed by registration applicants. The Office is revising 
its estimate to be 62 petitions, the average of the number of the 
petitions filed in Fiscal Years 2002 and 2003. Based on 5,897 
applications received in Fiscal Year 2003, the Office estimates that 
the change to Sec. 1.21 would impact few (about 0.1%) of registration 
applicants. As such, the rule does not affect a substantial number of 
individuals.
Not a Significant Economic Impact
    Adoption of the $130 fee will not have a significant economic 
impact on a substantial number of small entities. The average total 
compensation of lawyers in a law firm ranges from $102,841 to $299,391. 
The average annual income of an individual applicant (non-attorney) is 
$49,500.

Application/Reinstatement Fee

    Section 1.21(a)(10) imposes a $1600 fee on application by 
applicants for recognition or registration after disbarment or 
suspension on ethical grounds, or resignation pending disciplinary 
proceedings in any other jurisdiction; on application by a person for 
recognition or registration who is asserting rehabilitation from prior 
conduct that resulted in an adverse decision in the Office regarding 
the person's moral character; on application by a person for 
recognition or registration after being convicted of a felony or crime 
involving moral turpitude or breach of fiduciary duty; and on petition 
for reinstatement by a person excluded or suspended on ethical grounds, 
or excluded on consent from practice before the Office.

Not a Substantial Number of Small Entities

    The Office initially estimated that there would be approximately 
two such applications filed annually. In Fiscal Year 2003, one 
application for registration and three petitions for reinstatement were 
filed with the Director of Enrollment and Discipline for applicants 
that would fall within the scope of this rule. In view of the figures 
for Fiscal Year 2003, the Office is revising its estimate to four 
applications filed annually that would be affected by the provision in 
Sec. 1.21(a)(10). Based on the 5,897 applications received in Fiscal 
Year 2003, the Office estimates that the change to Sec. 1.21 would 
impact very few (0.06%) applicants. As such, the rule does not affect a 
substantial number of individuals.

Not a Significant Economic Impact

    The $1,600 fee is an increase of $1,560 over the $40 application 
fee the affected individuals paid under the previous rule, 37 CFR 
1.21(a)(1)(i). This fee increase is necessary in order for the Office 
to cover a portion of the expenses associated with investigating and 
resolving these types of petitions, based on average hours spent by the 
OED Director, staff attorneys, paralegals, and clericals.
    The adoption of the $1,600 fee will not have a significant economic 
impact on a substantial number of small entities. For any given fiscal 
year, the persons who will be required to pay this fee will be 
attorneys an estimated 75% of the time. Thus, in a majority of the 
situations where a practitioner must pay this fee, the average total 
compensation of attorneys in a law firm ranges from $102,841 to 
$299,391. In the remaining situations, the average income of the person 
who will be required to pay this fee is approximately $49,500. The 
$1540 increase does not have a significant economic impact on either 
attorneys or non-attorneys.

Regulatory Flexibility Act Comments and Responses

    The Office received five comments, three from individuals and two 
from an intellectual property law organization, regarding the impact of 
these rules upon small entities. With regard to comments about rules 
promulgated in this final rule making, the comments are summarized and 
addressed below.

[[Page 35450]]

    Comment: One comment suggested that the Office is proposing ``to 
registration institute [sic] fees based on assumptions of how much 
people make.'' The comment further states, ``I am always disturbed that 
these fee schedules consider only full time and inactive attorneys. 
There is no consideration given for part time attorneys.''
    Response: Inasmuch as the comment references ``institut[ing]'' 
fees, the comment is construed as referring to the annual fees (not 
previously charged) that were included in the notice of proposed rule 
making. The instant rules change only the fees associated with becoming 
registered to practice. Accordingly, changing the fees to become 
registered would not involve ``institut[ing]'' fees for full time, part 
time, or inactive attorneys who are already registered to practice. The 
fees considered in the instant final rules do not address the annual 
fees. Thus, the Office will address the impact of annual fees upon part 
time attorneys when the final rule adopting annual fees is promulgated.
    Comment: One comment suggested improvements in licensing (including 
preceptorship) in order to assist small businesses and inventors who 
are not able to judge the qualifications of registered practitioners. 
The comment opines that the proposed rules allow incompetent 
practitioners to prey on small businesses and individuals and will 
increase the cost of obtaining meaningful patent protection for small 
businesses because of the loss of rights due to drafting inadequate 
specifications and claims.
    Response: The registration requirements set forth in this rule 
package operate to protect small entities, independent inventors and 
large entities alike. These rules allow for a practitioner to provide 
legal services after certain registration requirements are met. Small 
entities may confidently rely upon the Office's registration of 
practitioners to the same extent that larger entities do. Thus, the 
rules do not increase the cost of obtaining meaningful patent 
protection for either small or large businesses.
    The registration rules ensure that all recognized practitioners 
meet the same scientific and technical competency requirements to 
practice before the USPTO. Of the 5,897 applicants for registration in 
Fiscal Year 2003, approximately 5,338 were admitted to the registration 
examination. About another 120 applicants are registered to practice 
pursuant to the last sentence of 37 CFR 10.7(b) or reciprocally 
registered as foreign patent agents pursuant to 37 CFR 10.6(c). All 
registration requirements are substantially uniform. All applicants 
have met the scientific and training qualifications found in the 
regulations. Accordingly, all individuals registered to practice before 
the Office are believed to possess the requisite level of competence.
    The Office does not require preceptorships (a period of training). 
As discussed in response to Comment 33, supra, Commissioner Robertson, 
in a 1933 report, termed the registration system upon submission of 
affidavits of attorneys as neither reliable nor satisfactory. 
Commissioner Robertson regarded the applicant's showing of ``several 
examples of his ability to prosecute a patent application'' as 
``perfunctory'' and ``certainly not sufficient.'' Additionally, the 
Commissioner cited the required affidavit as being ``subject to the 
great weakness of friendship between attorneys and the applicant,'' and 
that an ``established attorney hesitates to refuse to make an affidavit 
as to competency of one of his employees who is ambitious and is 
striving to climb the ladder of success.'' The practice was ended in 
1934. The suggested preceptorship, being subject to the same weaknesses 
as the affidavit practice rejected by Commissioner Robertson, is not 
satisfactory for the same reasons.
    Comment: One comment said the proposed rules governing recognition 
of individuals to practice should be carefully considered with regard 
to adverse consequences on smaller businesses. The comment also 
suggested that the proposed rules were not well thought-out concerning 
whether they make access to the USPTO more difficult and costly for 
small businesses. The comment also alleges that the proposed rules 
unnecessarily disrupt the prosecution of a significant number of patent 
applications currently before the USPTO.
    Response: The rules adopted in this rule making package do not make 
access to the Office more difficult or costly for small entities. The 
rules do not affect the Office fees for patent or trademark 
applications. In fact, qualifying small entities pay reduced fees to 
obtain patents under the current fee structure.
    The fees in this final rule package affect only individuals seeking 
registration as attorneys or agents. Only individuals, not businesses 
or other legal entities, may be registered to practice before the 
Office in patent cases. To the extent that an individual may qualify as 
a small entity, the economic impact of the fee increases in this rule 
package is not significant. For example, as discussed in detail above, 
for the vast majority of individuals seeking registration, the increase 
in the fee associated with admission to the examination is only $40. 
The increase in fees simply does not have a significant economic impact 
on individuals who may qualify as small entities.
    Comment: Two letters from an intellectual property law organization 
complained, in general, about whether the USPTO has complied with the 
requirements of the Regulatory Flexibility Act in certifying that the 
notice of proposed rule making will not have a significant economic 
impact on a substantial number of small entities.
    Response: As noted above, the USPTO has complied with all 
requirements of the Regulatory Flexibility Act by certifying that this 
rule making will not have a significant economic impact on a 
substantial number of small entities. The Office certified, in the 
Notice of Proposed Rule Making, that an initial Regulatory Flexibility 
Act analysis was not required because the notice of proposed rule 
making did not have a significant economic impact on a substantial 
number of small entities. See 68 F.R. 69442, 69510-69511 (Dec. 12, 
2003). With respect to this final rule making, for a more detailed 
explanation of the certification, please see the Factual Basis set 
forth in this section, above.
    None of these comments change the USPTO's assessment that the 
preparation of a Regulatory Flexibility Act analysis is not required. 
This rule making will not have a significant economic impact on a 
substantial number of small entities.
    Executive Order 13132: This notice of rule making 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: This notice of rule making has been 
determined to be not significant for purposes of Executive Order 12866 
(September 30, 1993).
    Paperwork Reduction Act: This notice of rule making 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.). This rule introduces new information 
requirements and fees into collection 0651-0012. Additional information 
collection activities involved in this notice of rule making are 
covered under OMB control number 0651-0017.
    The title, description, and respondent description of the currently 
approved information collection 0651-0012 are

[[Page 35451]]

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 rule making is to applicants seeking registration as 
patent attorneys and agents.
    OMB Number: 0651-0012.
    Title: Admittance to Practice and Roster of Registered Patent 
Attorneys and Agents Admitted to Practice Before the United States 
Patent and Trademark Office (USPTO).
    Form Numbers: PTO-158, PTO158A, PTO-275, PTO-107A, PTO-1209.
    Affected Public: Individuals or households, business or other for-
profit, Federal Government, and State, local or tribal governments.
    Estimated Number of Respondents: 24,024.
    Estimated Time Per Response: The USPTO estimates that it takes the 
public 30 minutes to complete either an application for registration to 
practice before the USPTO, or an application for a foreign resident to 
practice before the USPTO and, depending upon the complexity of the 
situation, to gather, prepare and submit the application. It is 
estimated to take 20 minutes to complete undertakings under 37 CFR 
10.10(b); 10 minutes to complete data sheets; 5 minutes to complete the 
oath or affirmation; 45 minutes to complete the petition for waiver of 
regulations; and 90 minutes to complete the written request for 
reconsideration of disapproval notice of application and the petition 
for reinstatement to practice. These times include time to gather the 
necessary information, prepare and submit the forms and requirements in 
this collection.
    Estimated Total Annual Burden Hours: 6,078.
    Needs and Uses: The public uses the forms in this collection to 
apply for the examination for registration, to ensure that all of the 
necessary information is provided to the USPTO and to request inclusion 
on the Register of Patent Attorneys and Agents.
    Comments have been 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 were requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to Harry I. Moatz, Director of Enrollment and Discipline, 
United States Patent and Trademark Office, P.O. Box 1450, Alexandria, 
Virginia 22313-1450, or to the Office of Information and Regulatory 
Affairs of OMB, New Executive Office Building, 725 17th Street, NW., 
Room 10235, Washington, DC 20503, Attention: 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, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

37 CFR Part 10

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

37 CFR Part 11

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


0
For the reasons set forth in the preamble, the United States Patent and 
Trademark Office is amending 37 CFR parts 1, 10, and 11 as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
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.


0
2. Section 1.1 is amended by revising paragraph (a) introductory text 
and by adding paragraph (a)(5) to read as follows:


Sec.  1.1  Addresses for non-trademark correspondence with the United 
States Patent and Trademark Office.

    (a) In general. Except as provided in paragraphs (a)(3)(i), 
(a)(3)(ii), and (d)(1) of this section, all correspondence intended for 
the United States Patent and Trademark Office must be addressed to 
either ``Director of the United States Patent and Trademark Office, 
P.O. Box 1450, Alexandria, Virginia 22313-1450'' or to specific areas 
within the Office as set out in paragraphs (a)(1), and (a)(3)(iii) of 
this section. When appropriate, correspondence should also be marked 
for the attention of a particular office or individual.
* * * * *
    (5) Office of Enrollment and Discipline correspondence. All 
correspondence directed to the Office of Enrollment and Discipline 
concerning enrollment, registration, and investigation matters should 
be addressed to Mail Stop OED, Director of the United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
* * * * * *
0
3. Section 1.21 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.21  Miscellaneous fees and charges.

* * * * *
    (a) Registration of attorneys and agents:
    (1) For admission to examination for registration to practice:
    (i) Application Fee (non-refundable)--$40.00
    (ii) Registration examination fee
    (A) For test administration by commercial entity--$200.00
    (B) For test administration by the USPTO--$450.00
    (2) On registration to practice or grant of limited recognition 
under Sec.  11.9(b) or (c)--$100.00
    (3) For reinstatement to practice--$40.00
    (4) For certificate of good standing as an attorney or agent--
$10.00
    (i) Suitable for framing--$20.00
    (ii) [Reserved]
    (5) For review of decision:
    (i) By the Director of Enrollment and Discipline under Sec.  
11.2(c)--$130.00
    (ii) Of the Director of Enrollment and Discipline under Sec.  
11.2(d)--$130.00
    (6)-(9) [Reserved]
    (10) On application by a person for recognition or registration 
after disbarment or suspension on ethical grounds, or resignation 
pending disciplinary proceedings in any other jurisdiction; on 
application by a person for recognition or registration who is 
asserting rehabilitation from prior conduct that resulted in an adverse 
decision in the Office regarding the person's moral character; and on 
application by a person for recognition or registration after being 
convicted of a felony or crime involving moral turpitude or breach of 
fiduciary duty; on petition for reinstatement by a person excluded or 
suspended on ethical

[[Page 35452]]

grounds, or excluded on consent from practice before the Office.--
$1,600.00
* * * * *

0
4. Section 1.31 is revised to read as follows:


Sec.  1.31  Applicants may be represented by a registered attorney or 
agent.

    An applicant for patent may file and prosecute his or her own case, 
or he or she may be represented by a registered attorney, registered 
agent, or other individual authorized to practice before the United 
States Patent and Trademark Office in patent matters. See Sec. Sec.  
11.6 and 11.9 of this subchapter. The United States Patent and 
Trademark Office cannot aid in the selection of a registered attorney 
or agent.

0
5. Section 1.33, paragraph (c), is revised to read as follows:


Sec.  1.33  Correspondence respecting patent applications, 
reexamination proceedings, and other proceedings.

* * * * *
    (c) All notices, official letters, and other communications for the 
patent owner or owners in a reexamination proceeding will be directed 
to the attorney or agent of record (See Sec.  1.34(b)) in the patent 
file at the address listed on the register of patent attorneys and 
agents maintained pursuant to Sec. Sec.  11.5 and 11.11 of this 
subchapter or, if no attorney or agent is of record, to the patent 
owner or owners at the address or addresses of record.
* * * * *

0
6. Section 1.455 is amended by revising the first sentence of paragraph 
(a) to read as follows:


Sec.  1.455  Representation in international applications.

    (a) Applicants of international applications may be represented by 
attorneys or agents registered to practice before the United States 
Patent and Trademark Office or by an applicant appointed as a common 
representative (PCT Art. 49, Rules 4.8 and 90 and Sec.  11.9). * * *
* * * * *

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

0
7. The authority citation for 37 CFR Part 10 continues to read as 
follows:

    Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2, 6, 32, 41.

Sec.  10.2  [Removed]

0
8. Section 10.2 is removed and reserved.


Sec.  10.3  [Removed]

0
9. Section 10.3 is removed and reserved.


Sec.  10.5  [Removed]

0
10. Section 10.5 is removed and reserved.


Sec.  10.6  [Removed]

0
11. Section 10.6 is removed and reserved.


Sec.  10.7  [Removed]

0
12. Section 10.7 is removed and reserved.


Sec.  10.8  [Removed]

0
13. Section 10.8 is removed and reserved.


Sec.  10.9  [Removed]

0
14. Section 10.9 is removed and reserved.


Sec.  10.10  [Removed]

0
15. Section 10.10 is removed and reserved.

0
16. Section 10.11 is revised to read as follows:


Sec.  10.11  Removing names from the register.

    A letter may be addressed to any individual on the register, at the 
address of which separate notice was last received by the Director, for 
the purpose of ascertaining whether such individual desires to remain 
on the register. The name of any individual failing to reply and give 
any information requested by the Director within a time limit specified 
will be removed from the register and the names of individuals so 
removed will be published in the Official Gazette. The name of any 
individual so removed may be reinstated on the register as may be 
appropriate and upon payment of the fee set forth in Sec.  1.21(a)(3) 
of this subchapter.

0
17. Part 11 is added as follows:

PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT 
AND TRADEMARK OFFICE

Subpart A--General Provisions

General Information

Sec.
11.1 Definitions.
11.2 Director of the Office of Enrollment and Discipline.
11.3 Suspension of rules.
Subpart B--Recognition To Practice Before the USPTO

Patents, Trademarks, and Other Non-Patent Law

11.4 [Reserved]
11.5 Register of attorneys and agents in patent matters.
11.6 Registration of attorneys and agents.
11.7 Requirements for registration.
11.8 Oath and registration fee.
11.9 Limited recognition in patent matters.
11.10 Restrictions on practice in patent matters.
11.11 Notification.

    Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2)(D), 
32.

Subpart A--General Provisions

General Information


Sec.  11.1  Definitions.

    This part governs solely the practice of patent, trademark, and 
other law before the United States Patent and Trademark Office. Nothing 
in this part shall be construed to preempt the authority of each State 
to regulate the practice of law, except to the extent necessary for the 
United States Patent and Trademark Office to accomplish its Federal 
objectives. Unless otherwise clear from the context, the following 
definitions apply to this part:
    Attorney or lawyer means an individual who is a member in good 
standing of the highest court of any State, including an individual who 
is in good standing of the highest court of one State and under an 
order of any court or Federal agency suspending, enjoining, 
restraining, disbarring or otherwise restricting the attorney from 
practice before the bar of another State or Federal agency. A non-
lawyer means a person or entity who is not an attorney or lawyer.
    Belief or believes means that the person involved actually supposed 
the fact in question to be true. A person's belief may be inferred from 
circumstances.
    Conviction or convicted means any confession to a crime; a verdict 
or judgment finding a person guilty of a crime; any entered plea, 
including nolo contendre or Alford plea, to a crime; or receipt of 
deferred adjudication (whether judgment or sentence has been entered or 
not) for an accused or pled crime.
    Crime means any offense declared to be a felony or misdemeanor by 
Federal or State law in the jurisdiction where the act occurs.
    Data sheet means a form used to collect the name, address, and 
telephone information from individuals recognized to practice before 
the Office in patent matters.
    Fiscal year means the time period from October 1st through the 
ensuing September 30th.
    Fraud or fraudulent means conduct having a purpose to deceive and 
not merely negligent misrepresentation or

[[Page 35453]]

failure to apprise another of relevant information.
    Good moral character and reputation means the possession of honesty 
and truthfulness, trustworthiness and reliability, and a professional 
commitment to the legal process and the administration of justice, as 
well as the condition of being regarded as possessing such qualities.
    Knowingly, known, or knows means actual knowledge of the fact in 
question. A person's knowledge may be inferred from circumstances.
    Matter means any litigation, administrative proceeding, lobbying 
activity, application, claim, investigation, controversy, arrest, 
charge, accusation, contract, negotiation, estate or family relations 
practice issue, request for a ruling or other determination, or any 
other matter covered by the conflict of interest rules of the 
appropriate Government entity.
    OED means the Office of Enrollment and Discipline.
    OED Director means the Director of the Office of Enrollment and 
Discipline.
    OED Director's representatives means attorneys within the USPTO 
Office of General Counsel who act as representatives of the OED 
Director.
    Office means the United States Patent and Trademark Office.
    Practitioner means:
    (1) An attorney or agent registered to practice before the Office 
in patent matters,
    (2) An individual authorized under 5 U.S.C. 500(b) or otherwise as 
provided by Sec.  10.14(b), (c), and (e) of this subchapter, to 
practice before the Office in trademark matters or other non-patent 
matters, or
    (3) An individual authorized to practice before the Office in a 
patent case or matters under Sec.  11.9(a) or (b).
    Proceeding before the Office means an application for patent, an 
application for reissue, a reexamination, a protest, a public use 
matter, an inter partes patent matter, correction of a patent, 
correction of inventorship, an application to register a trademark, an 
inter partes trademark matter, an appeal, a petition, and any other 
matter that is pending before the Office.
    Reasonable or reasonably when used in relation to conduct by a 
practitioner means the conduct of a reasonably prudent and competent 
practitioner.
    Registration means registration to practice before the Office in 
patent proceedings.
    Roster means a list of individuals who have been registered as 
either a patent attorney or patent agent.
    Significant evidence of rehabilitation means satisfactory evidence 
that is significantly more probable than not that there will be no 
recurrence in the foreseeable future of the practitioner's prior 
disability or addiction.
    State means any of the 50 states of the United States of America, 
the District of Columbia, and other territories and possessions of the 
United States of America.
    Substantial when used in reference to degree or extent means a 
material matter of clear and weighty importance.
    Suspend or suspension means a temporary debarring from practice 
before the Office or other jurisdiction.
    United States means the United States of America, and the 
territories and possessions the United States of America.
    USPTO Director means the Director of the United States Patent and 
Trademark Office, or an employee of the Office delegated authority to 
act for the Director of the United States Patent and Trademark Office 
in matters arising under this part.


Sec.  11.2  Director of the Office of Enrollment and Discipline.

    (a) Appointment. The USPTO Director shall appoint a Director of the 
Office of Enrollment and Discipline (OED Director). In the event of the 
absence of the OED Director or a vacancy in the office of the OED 
Director, or in the event that the OED Director recuses himself or 
herself from a case, the USPTO Director may designate an employee of 
the Office to serve as acting OED Director. The OED Director and any 
acting OED Director shall be an active member in good standing of the 
bar of a State.
    (b) Duties. The OED Director shall:
    (1) Supervise staff as may be necessary for the performance of the 
OED Director's duties.
    (2) Receive and act upon applications for registration, prepare and 
grade the examination provided for in Sec.  11.7(b), maintain the 
register provided for in Sec.  11.5, and perform such other duties in 
connection with enrollment and recognition of attorneys and agents as 
may be necessary.
    (3) Conduct investigations into the moral character and reputation 
of any individual seeking to be registered as an attorney or agent, or 
of any individual seeking limited recognition, deny registration or 
recognition of individuals failing to demonstrate possession of good 
moral character and reputation, and perform such other duties in 
connection with enrollment matters and investigations as may be 
necessary.
    (4) The Director shall conduct investigations into possible 
violations by practitioners of Disciplinary Rules, with the consent of 
the Committee on Discipline initiate disciplinary proceedings under 
Sec.  10.132(b) of this subchapter, and perform such other duties in 
connection with investigations and disciplinary proceedings as may be 
necessary.
    (5)-(7) [Reserved]
    (c) Petition to OED Director. Any petition from any action or 
requirement of the staff of OED reporting to the OED Director shall be 
taken to the OED Director. Any such petition not filed within sixty 
days from the mailing date of the action or notice from which relief is 
requested will be dismissed as untimely. The filing of a petition will 
not stay the period for taking other action which may be running, or 
stay other proceedings. A final decision by the OED Director may be 
reviewed in accordance with the provisions of paragraph (d) of this 
section.
    (d) Review of OED Director's decision. An individual dissatisfied 
with a final decision of the OED Director, except for a decision 
dismissing a complaint or closing an investigation, may seek review of 
the decision upon petition to the USPTO Director accompanied by payment 
of the fee set forth in Sec.  1.21(a)(5)(ii) of this subchapter. A 
decision dismissing a complaint or closing an investigation is not 
subject to review by petition. Any petition not filed within sixty days 
from the mailing date of the final decision of the OED Director will be 
dismissed as untimely. Any petition shall be limited to the facts of 
record. Briefs or memoranda, if any, in support of the petition shall 
accompany or be embodied therein. The USPTO Director in deciding the 
petition will consider no new evidence. Copies of documents already of 
record before the OED Director need not be submitted with the petition. 
No oral hearing on the petition will be held except when considered 
necessary by the USPTO Director. Any request for reconsideration of the 
decision of the USPTO Director will be dismissed as untimely if not 
filed within thirty days after the mailing date of said decision. If 
any request for reconsideration is filed, the decision on 
reconsideration shall be the final agency action.


Sec.  11.3  Suspension of rules.

    In an extraordinary situation, when justice requires, any 
requirement of the regulations of this part which is not a requirement 
of statute may be suspended or waived by the USPTO Director or the 
designee of the USPTO Director, sua sponte or on petition of any party, 
including the OED Director or the OED Director's representative,

[[Page 35454]]

subject to such other requirements as may be imposed.

Subpart B--Recognition To Practice Before the USPTO

Patents, Trademarks, and Other Non-Patent Law


Sec.  11.4  [Reserved]


Sec.  11.5  Register of attorneys and agents in patent matters.

    A register of attorneys and agents is kept in the Office on which 
are entered the names of all individuals recognized as entitled to 
represent applicants having prospective or immediate business before 
the Office in the preparation and prosecution of patent applications. 
Registration in the Office under the provisions of this part shall 
entitle the individuals so registered to practice before the Office 
only in patent matters.


Sec.  11.6  Registration of attorneys and agents.

    (a) Attorneys. Any citizen of the United States who is an attorney 
and who fulfills the requirements of this part may be registered as a 
patent attorney to practice before the Office. When appropriate, any 
alien who is an attorney, who lawfully resides in the United States, 
and who fulfills the requirements of this part may be registered as a 
patent attorney to practice before the Office, provided that such 
registration is not inconsistent with the terms upon which the alien 
was admitted to, and resides in, the United States and further provided 
that the alien may remain registered only:
    (1) If the alien continues to lawfully reside in the United States 
and registration does not become inconsistent with the terms upon which 
the alien continues to lawfully reside in the United States, or
    (2) If the alien ceases to reside in the United States, the alien 
is qualified to be registered under paragraph (c) of this section. See 
also Sec.  11.9(b).
    (b) Agents. Any citizen of the United States who is not an 
attorney, and who fulfills the requirements of this part may be 
registered as a patent agent to practice before the Office. When 
appropriate, any alien who is not an attorney, who lawfully resides in 
the United States, and who fulfills the requirements of this part may 
be registered as a patent agent to practice before the Office, provided 
that such registration is not inconsistent with the terms upon which 
the alien was admitted to, and resides in, the United States, and 
further provided that the alien may remain registered only:
    (1) If the alien continues to lawfully reside in the United States 
and registration does not become inconsistent with the terms upon which 
the alien continues to lawfully reside in the United States or
    (2) If the alien ceases to reside in the United States, the alien 
is qualified to be registered under paragraph (c) of this section. See 
also Sec.  11.9(b).
    (c) Foreigners. Any foreigner not a resident of the United States 
who shall file proof to the satisfaction of the OED Director that he or 
she is registered and in good standing before the patent office of the 
country in which he or she resides and practices, and who is possessed 
of the qualifications stated in Sec.  11.7, may be registered as a 
patent agent to practice before the Office for the limited purpose of 
presenting and prosecuting patent applications of applicants located in 
such country, provided that the patent office of such country allows 
substantially reciprocal privileges to those admitted to practice 
before the Office. Registration as a patent agent under this paragraph 
shall continue only during the period that the conditions specified in 
this paragraph obtain. Upon notice by the patent office of such country 
that a patent agent registered under this section is no longer 
registered or no longer in good standing before the patent office of 
such country, and absent a showing of cause why his or her name should 
not be removed from the register, the OED Director shall promptly 
remove the name of the patent agent from the register and publish the 
fact of removal. Upon ceasing to reside in such country, the patent 
agent registered under this section is no longer qualified to be 
registered under this section, and the OED Director shall promptly 
remove the name of the patent agent from the register and publish the 
fact of removal.
    (d) Interference matters. The Chief Administrative Patent Judge or 
Vice Chief Administrative Patent Judge of the Board of Patent Appeals 
and Interferences shall determine whether and the circumstances under 
which an attorney who is not registered may take testimony for an 
interference under 35 U.S.C. 24, or under Sec.  1.672 of this 
subchapter.


Sec.  11.7  Requirements for registration.

    (a) No individual will be registered to practice before the Office 
unless he or she has:
    (1) Applied to the USPTO Director in writing by completing an 
application for registration form supplied by the OED Director and 
furnishing all requested information and material; and
    (2) Established to the satisfaction of the OED Director that he or 
she:
    (i) Possesses good moral character and reputation;
    (ii) Possesses the legal, scientific, and technical qualifications 
necessary for him or her to render applicants valuable service; and
    (iii) Is competent to advise and assist patent applicants in the 
presentation and prosecution of their applications before the Office.
    (b)(1) To enable the OED Director to determine whether an 
individual has the qualifications specified in paragraph (a)(2) of this 
section, the individual shall:
    (i) File a complete application for registration each time 
admission to the registration examination is requested. A complete 
application for registration includes:
    (A) An application for registration form supplied by the OED 
Director wherein all requested information and supporting documents are 
furnished,
    (B) Payment of the fees required by Sec.  1.21(a)(1) of this 
subchapter,
    (C) Satisfactory proof of scientific and technical qualifications, 
and
    (D) For aliens, provide proof that recognition is not inconsistent 
with the terms of their visa or entry into the United States;
    (ii) Pass the registration examination, unless the taking and 
passing of the examination is waived as provided in paragraph (d) of 
this section. Unless examination is waived pursuant to paragraph (d) of 
this section, each individual seeking registration must take and pass 
the registration examination to enable the OED Director to determine 
whether the individual possesses the legal and competence 
qualifications specified in paragraphs (a)(2)(ii) and (a)(2)(iii) of 
this section. An individual failing the examination may, upon receipt 
of notice of failure from OED, reapply for admission to the 
examination. An individual failing the examination must wait thirty 
days after the date the individual last took the examination before 
retaking the examination. An individual reapplying shall:
    (A) File a completed application for registration form wherein all 
requested information and supporting documents are furnished,
    (B) Pay the fees required by Sec.  1.21(a)(1) of this subchapter, 
and
    (C) For aliens, provide proof that recognition is not inconsistent 
with the terms of their visa or entry into the United States; and
    (iii) Provide satisfactory proof of possession of good moral 
character and reputation.

[[Page 35455]]

    (2) An individual failing to file a complete application for 
registration will not be admitted to the examination and will be 
notified of the incompleteness. Applications for registration that are 
incomplete as originally submitted will be considered only when they 
have been completed and received by OED, provided that this occurs 
within sixty days of the mailing date of the notice of incompleteness. 
Thereafter, a new and complete application for registration must be 
filed. Only an individual approved as satisfying the requirements of 
paragraphs (b)(1)(i)(A), (b)(1)(i)(B), (b)(1)(i)(C) and (b)(1)(i)(D) of 
this section may be admitted to the examination.
    (3) If an individual does not reapply until more than one year 
after the mailing date of a notice of failure, that individual must 
again comply with paragraph (b)(1)(i) of this section.
    (c) Each individual seeking registration is responsible for 
updating all information and answers submitted in or with the 
application for registration based upon anything occurring between the 
date the application for registration is signed by the individual, and 
the date he or she is registered or recognized to practice before the 
Office in patent matters. The update shall be filed within thirty days 
after the date of the occasion that necessitates the update.
    (d) Waiver of the Registration Examination for Former Office 
Employees. (1) Former patent examiners who by July 26, 2004, had not 
actively served four years in the patent examining corps, and were 
serving in the corps at the time of their separation. The OED Director 
may waive the taking of a registration examination in the case of any 
individual meeting the requirements of paragraph (b)(1)(i)(C) of this 
section who is a former patent examiner but by July 26, 2004, had not 
served four years in the patent examining corps, if the individual 
demonstrates that he or she:
    (i) Actively served in the patent examining corps of the Office and 
was serving in the corps at the time of separation from the Office;
    (ii) Received a certificate of legal competency and negotiation 
authority;
    (iii) After receiving the certificate of legal competency and 
negotiation authority, was rated at least fully successful in each 
quality performance element of his or her performance plan for the last 
two complete fiscal years as a patent examiner; and
    (iv) Was not under an oral or written warning regarding the quality 
performance elements at the time of separation from the patent 
examining corps.
    (2) Former patent examiners who on July 26, 2004, had actively 
served four years in the patent examining corps, and were serving in 
the corps at the time of their separation. The OED Director may waive 
the taking of a registration examination in the case of any individual 
meeting the requirements of paragraph (b)(1)(i)(C) of this section who 
is a former patent examiner and by July 26, 2004, had served four years 
in the patent examining corps, if the individual demonstrates that he 
or she:
    (i) Actively served for at least four years in the patent examining 
corps of the Office by July 26, 2004, and was serving in the corps at 
the time of separation from the Office;
    (ii) Was rated at least fully successful in each quality 
performance element of his or her performance plan for the last two 
complete fiscal years as a patent examiner in the Office; and
    (iii) Was not under an oral or written warning regarding the 
quality performance elements at the time of separation from the patent 
examining corps.
    (3) Certain former Office employees who were not serving in the 
patent examining corps upon their separation from the Office. The OED 
Director may waive the taking of a registration examination in the case 
of a former Office employee meeting the requirements of paragraph 
(b)(1)(i)(C) of this section who by petition demonstrates possession of 
the necessary legal qualifications to render to patent applicants and 
others valuable service and assistance in the preparation and 
prosecution of their applications or other business before the Office 
by showing that he or she has:
    (i) Exhibited comprehensive knowledge of patent law equivalent to 
that shown by passing the registration examination as a result of 
having been in a position of responsibility in the Office in which he 
or she:
    (A) Provided substantial guidance on patent examination policy, 
including the development of rule or procedure changes, patent 
examination guidelines, changes to the Manual of Patent Examining 
Procedure, development of training or testing materials for the patent 
examining corps, or development of materials for the registration 
examination or continuing legal education; or
    (B) Represented the Office in patent cases before Federal courts; 
and
    (ii) Was rated at least fully successful in each quality 
performance element of his or her performance plan for said position 
for the last two complete rating periods in the Office, and was not 
under an oral or written warning regarding such performance elements at 
the time of separation from the Office.
    (4) To be eligible for consideration for waiver, an individual 
formerly employed by the Office within the scope of one of paragraphs 
(d)(1), (d)(2) or (d)(3) of this section must file a complete 
application for registration and pay the fee required by Sec.  
1.21(a)(1)(i) of this subchapter within two years of the individual's 
date of separation from the Office. All other individuals formerly 
employed by the Office, including former examiners, filing an 
application for registration or fee more than two years after 
separation from the Office, are required to take and pass the 
registration examination. The individual or former examiner must pay 
the examination fee required by Sec.  1.21(a)(1)(ii) of this subchapter 
within thirty days after notice of non-waiver.
    (e) Examination results. Notification of the examination results is 
final. Within sixty days of the mailing date of a notice of failure, 
the individual is entitled to inspect, but not copy, the questions and 
answers he or she incorrectly answered. Review will be under 
supervision. No notes may be taken during such review. Substantive 
review of the answers or questions may not be pursued by petition for 
regrade. An individual who failed the examination has the right to 
retake the examination an unlimited number of times upon payment of the 
fees required by Sec.  1.21(a)(1)(i) and (ii) of this subchapter, and a 
fee charged by a commercial entity administering the examination.
    (f) Application for reciprocal recognition. An individual seeking 
reciprocal recognition under Sec.  11.6(c), in addition to satisfying 
the provisions of paragraphs (a) and (b) of this section, and the 
provisions of Sec.  11.8(c), shall pay the application fee required by 
Sec.  1.21(a)(1)(i) of this subchapter upon filing an application for 
registration.
    (g) Investigation of good moral character and reputation. (1) Every 
individual seeking recognition shall answer all questions in the 
application for registration and request(s) for comments issued by OED; 
disclose all relevant facts, dates and information; and provide 
verified copies of documents relevant to his or her good moral 
character and reputation. An individual who is an attorney shall submit 
a certified copy of each of his or her State bar applications and moral 
character determinations, if available.
    (2)(i) If the OED Director receives information from any source 
that reflects adversely on the good moral

[[Page 35456]]

character or reputation of an individual seeking registration or 
recognition, the OED Director shall conduct an investigation into the 
good moral character and reputation of that individual. The 
investigation will be conducted after the individual has passed the 
registration examination, or after the registration examination has 
been waived for the individual, as applicable. An individual failing to 
timely answer questions or respond to an inquiry by OED shall be deemed 
to have withdrawn his or her application, and shall be required to 
reapply, pass the examination, and otherwise satisfy all the 
requirements of this section. No individual shall be certified for 
registration or recognition by the OED Director until, to the 
satisfaction of the OED Director, the individual demonstrates his or 
her possession of good moral character and reputation.
    (ii) The OED Director, in considering an application for 
registration by an attorney, may accept a State bar's character 
determination as meeting the requirements set forth in paragraph (g) of 
this section if, after review, the Office finds no substantial 
discrepancy between the information provided with his or her 
application for registration and the State bar application and moral 
character determination, provided that acceptance is not inconsistent 
with other rules and the requirements of 35 U.S.C. 2(b)(2)(D).
    (h) Good moral character and reputation. Evidence showing lack of 
good moral character and reputation may include, but is not limited to, 
conviction of a felony or a misdemeanor identified in paragraph (h)(1) 
of this section, drug or alcohol abuse; lack of candor; suspension or 
disbarment on ethical grounds from a State bar; and resignation from a 
State bar while under investigation.
    (1) Conviction of felony or misdemeanor. An individual who has been 
convicted of a felony or a misdemeanor involving moral turpitude, 
breach of trust, interference with the administration of justice, false 
swearing, misrepresentation, fraud, deceit, bribery, extortion, 
misappropriation, theft, or conspiracy to commit any felony or 
misdemeanor, is presumed not to be of good moral character and 
reputation in the absence of a pardon or a satisfactory showing of 
reform and rehabilitation, and shall file with his or her application 
for registration the fees required by Sec.  1.21(a)(1)(ii) and (a)(10) 
of this subchapter. The OED Director shall determine whether 
individuals convicted of said felony or misdemeanor provided 
satisfactory proof of reform and rehabilitation.
    (i) An individual who has been convicted of a felony or a 
misdemeanor identified in paragraph (h)(1) of this section shall not be 
eligible to apply for registration during the time of any sentence 
(including confinement or commitment to imprisonment), deferred 
adjudication, and period of probation or parole as a result of the 
conviction, and for a period of two years after the date of completion 
of the sentence, deferred adjudication, and period of probation or 
parole, whichever is later.
    (ii) The following presumptions apply to the determination of good 
moral character and reputation of an individual convicted of said 
felony or misdemeanor:
    (A) The court record or docket entry of conviction is conclusive 
evidence of guilt in the absence of a pardon or a satisfactory showing 
of reform or rehabilitation; and
    (B) An individual convicted of a felony or any misdemeanor 
identified in paragraph (h)(1) of this section is conclusively deemed 
not to have good moral character and reputation, and shall not be 
eligible to apply for registration for a period of two years after 
completion of the sentence, deferred adjudication, and period of 
probation or parole, whichever is later.
    (iii) The individual, upon applying for registration, shall provide 
satisfactory evidence that he or she is of good moral character and 
reputation.
    (iv) Upon proof that a conviction has been set aside or reversed, 
the individual shall be eligible to file a complete application for 
registration and the fee required by Sec.  1.21(a)(1)(ii) of this 
subchapter and, upon passing the registration examination, have the OED 
Director determine, in accordance with paragraph (h)(1) of this 
section, whether, absent the conviction, the individual possesses good 
moral character and reputation.
    (2) Good moral character and reputation involving drug or alcohol 
abuse. An individual's record is reviewed as a whole to see if there is 
a drug or alcohol abuse issue. An individual appearing to abuse drugs 
or alcohol may be asked to undergo an evaluation, at the individual's 
expense, by a qualified professional approved by the OED Director. In 
instances where, before an investigation commences, there is evidence 
of a present abuse or an individual has not established a record of 
recovery, the OED Director may request the individual to withdraw his 
or her application, and require the individual to satisfactorily 
demonstrate that he or she is complying with treatment and undergoing 
recovery.
    (3) Moral character and reputation involving lack of candor. An 
individual's lack of candor in disclosing facts bearing on or relevant 
to issues concerning good moral character and reputation when 
completing the application or any time thereafter may be found to be 
cause to deny registration on moral character and reputation grounds.
    (4) Moral character and reputation involving suspension, 
disbarment, or resignation from a profession. (i) An individual who has 
been disbarred or suspended from practice of law or other profession, 
or has resigned in lieu of a disciplinary proceeding (excluded or 
disbarred on consent) shall be ineligible to apply for registration as 
follows:
    (A) An individual who has been disbarred from practice of law or 
other profession, or has resigned in lieu of a disciplinary proceeding 
(excluded or disbarred on consent) shall be ineligible to apply for 
registration for a period of five years from the date of disbarment or 
resignation.
    (B) An individual who has been suspended on ethical grounds from 
the practice of law or other profession shall be ineligible to apply 
for registration until expiration of the period of suspension.
    (C) An individual who was not only disbarred, suspended or resigned 
in lieu of a disciplinary proceeding, but also convicted in a court of 
a felony, or of a crime involving moral turpitude or breach of trust, 
shall be ineligible to apply for registration until the conditions in 
paragraphs (h)(1) and (h)(4) of this section are fully satisfied.
    (ii) An individual who has been disbarred or suspended, or who 
resigned in lieu of a disciplinary proceeding shall file an application 
for registration and the fees required by Sec.  1.21(a)(1)(ii) and 
(a)(10) of this subchapter; provide a full and complete copy of the 
proceedings that led to the disbarment, suspension, or resignation; and 
provide satisfactory proof that he or she possesses good moral 
character and reputation. The following presumptions shall govern the 
determination of good moral character and reputation of an individual 
who has been licensed to practice law or other profession in any 
jurisdiction and has been disbarred, suspended on ethical grounds, or 
allowed to resign in lieu of discipline, in that jurisdiction:
    (A) A copy of the record resulting in disbarment, suspension or 
resignation is prima facie evidence of the matters contained in the 
record, and the imposition of disbarment or suspension,

[[Page 35457]]

or the acceptance of the resignation of the individual shall be deemed 
conclusive that the individual has committed professional misconduct.
    (B) The individual is ineligible for registration and is deemed not 
to have good moral character and reputation during the period of the 
imposed discipline.
    (iii) The only defenses available with regard to an underlying 
disciplinary matter resulting in disbarment, suspension on ethical 
grounds, or resignation in lieu of a disciplinary proceeding are set 
out below, and must be shown to the satisfaction of the OED Director:
    (A) The procedure in the disciplinary court was so lacking in 
notice or opportunity to be heard as to constitute a deprivation of due 
process;
    (B) There was such infirmity of proof establishing the misconduct 
as to give rise to the clear conviction that the Office could not, 
consistently with its duty, accept as final the conclusion on that 
subject; or
    (C) The finding of lack of good moral character and reputation by 
the Office would result in grave injustice.
    (i) Factors that may be taken into consideration when evaluating 
rehabilitation of an individual seeking a moral character and 
reputation determination. The factors enumerated below are guidelines 
to assist the OED Director in determining whether an individual has 
demonstrated rehabilitation from an act of misconduct or moral 
turpitude. The factors include:
    (1) The nature of the act of misconduct, including whether it 
involved moral turpitude, whether there were aggravating or mitigating 
circumstances, and whether the activity was an isolated event or part 
of a pattern;
    (2) The age and education of the individual at the time of the 
misconduct and the age and education of the individual at the present 
time;
    (3) The length of time that has passed between the misconduct and 
the present, absent any involvement in any further acts of moral 
turpitude, the amount of time and the extent of rehabilitation being 
dependent upon the nature and seriousness of the act of misconduct 
under consideration;
    (4) Restitution by the individual to any person who suffered 
monetary losses through acts or omissions of the individual;
    (5) Expungement of a conviction;
    (6) Successful completion or early discharge from probation or 
parole;
    (7) Abstinence from the use of controlled substances or alcohol for 
not less than two years if the specific misconduct was attributable in 
part to the use of a controlled substance or alcohol, where abstinence 
may be demonstrated by, but is not necessarily limited to, enrolling in 
and complying with a self-help or professional treatment program;
    (8) If the specific misconduct was attributable in part to a 
medically recognized mental disease, disorder or illness, proof that 
the individual sought professional assistance, and complied with the 
treatment program prescribed by the professional, and submitted letters 
from the treating psychiatrist/psychologist verifying that the 
medically recognized mental disease, disorder or illness will not 
impede the individual's ability to competently practice before the 
Office;
    (9) Payment of the fine imposed in connection with any criminal 
conviction;
    (10) Correction of behavior responsible in some degree for the 
misconduct;
    (11) Significant and conscientious involvement in programs designed 
to provide social benefits or to ameliorate social problems; and
    (12) Change in attitude from that which existed at the time of the 
act of misconduct in question as evidenced by any or all of the 
following:
    (i) Statements of the individual;
    (ii) Statements from persons familiar with the individual's 
previous misconduct and with subsequent attitudes and behavioral 
patterns;
    (iii) Statements from probation or parole officers or law 
enforcement officials as to the individual's social adjustments; and
    (iv) Statements from persons competent to testify with regard to 
neuropsychiatry or emotional disturbances.
    (j) Notice to Show Cause. The OED Director shall inquire into the 
good moral character and reputation of an individual seeking 
registration, providing the individual with the opportunity to create a 
record on which a decision is made. If, following inquiry and 
consideration of the record, the OED Director is of the opinion that 
the individual seeking registration has not satisfactorily established 
that he or she possesses good moral character and reputation, the OED 
Director shall issue to the individual a notice to show cause why the 
individual's application for registration should not be denied.
    (1) The individual shall be given no less than ten days from the 
date of the notice to reply. The notice shall be given by certified 
mail at the address appearing on the application if the address is in 
the United States, and by any other reasonable means if the address is 
outside the United States.
    (2) Following receipt of the individual's response, or in the 
absence of a response, the OED Director shall consider the individual's 
response, if any, and the record, and determine whether, in the OED 
Director's opinion, the individual has sustained his or her burden of 
satisfactorily demonstrating that he or she possesses good moral 
character and reputation.
    (k) Reapplication for registration. An individual who has been 
refused registration for lack of good moral character or reputation may 
reapply for registration two years after the date of the decision, 
unless a shorter period is otherwise ordered by the USPTO Director. An 
individual, who has been notified that he or she is under investigation 
for good moral character and reputation may elect to withdraw his or 
her application for registration, and may reapply for registration two 
years after the date of withdrawal. Upon reapplication for 
registration, the individual shall pay the fees required by Sec.  
1.21(a)(1)(ii) and (a)(10) of this subchapter, and has the burden of 
showing to the satisfaction of the OED Director his or her possession 
of good moral character and reputation as prescribed in paragraph (b) 
of this section. Upon reapplication for registration, the individual 
also shall complete successfully the examination prescribed in 
paragraph (b) of this section, even though the individual has 
previously passed a registration examination.


Sec.  11.8  Oath and registration fee.

    (a) After an individual passes the examination, or the examination 
is waived, the OED Director shall promptly publish a solicitation for 
information concerning the individual's good moral character and 
reputation. The solicitation shall include the individual's name, and 
business or communication postal address.
    (b) An individual shall not be registered as an attorney under 
Sec.  11.6(a), registered as an agent under Sec.  11.6(b) or (c), or 
granted limited recognition under Sec.  11.9(b) unless within two years 
of the mailing date of a notice of passing registration examination or 
of waiver of the examination the individual files with the OED Director 
a completed Data Sheet, an oath or declaration prescribed by the USPTO 
Director, and the registration fee set forth in Sec.  1.21(a)(2) of 
this subchapter. An individual seeking registration as an attorney 
under Sec.  11.6(a) must provide a certificate of good standing of the 
bar of the highest

[[Page 35458]]

court of a State that is no more than six months old.
    (c) An individual who does not comply with the requirements of 
paragraph (b) of this section within the two-year period will be 
required to retake the registration examination.


Sec.  11.9  Limited recognition in patent matters.

    (a) Any individual not registered under Sec.  11.6 may, upon a 
showing of circumstances which render it necessary or justifiable, and 
that the individual is of good moral character and reputation, be given 
limited recognition by the OED Director to prosecute as attorney or 
agent a specified patent application or specified patent applications. 
Limited recognition under this paragraph shall not extend further than 
the application or applications specified. Limited recognition shall 
not be granted while individuals who have passed the examination or for 
whom the examination has been waived are awaiting registration to 
practice before the Office in patent matters.
    (b) A nonimmigrant alien residing in the United States and 
fulfilling the provisions of Sec.  11.7(a) and (b) may be granted 
limited recognition if the nonimmigrant alien is authorized by the 
Bureau of Citizenship and Immigration Services to be employed or 
trained in the United States in the capacity of representing a patent 
applicant by presenting or prosecuting a patent application. Limited 
recognition shall be granted for a period consistent with the terms of 
authorized employment or training. Limited recognition shall not be 
granted or extended to a non-United States citizen residing abroad. If 
granted, limited recognition shall automatically expire upon the 
nonimmigrant alien's departure from the United States.
    (c) An individual not registered under Sec.  11.6 may, if appointed 
by an applicant, prosecute an international patent application only 
before the United States International Searching Authority and the 
United States International Preliminary Examining Authority, provided 
that the individual has the right to practice before the national 
office with which the international application is filed as provided in 
PCT Art. 49, Rule 90 and Sec.  1.455 of this subchapter, or before the 
International Bureau when the USPTO is acting as Receiving Office 
pursuant to PCT Rules 83.1 bis and 90.1.


Sec.  11.10  Restrictions on practice in patent matters.

    (a) Only practitioners who are registered under Sec.  11.6 or 
individuals given limited recognition under Sec.  11.9(a) or (b) are 
permitted to prosecute patent applications of others before the Office; 
or represent others in any proceedings before the Office.
    (b) Post employment agreement of former Office employee. No 
individual who has served in the patent examining corps or elsewhere in 
the Office may practice before the Office after termination of his or 
her service, unless he or she signs a written undertaking agreeing:
    (1) To not knowingly act as agent or attorney for, or otherwise 
represent, or assist in any manner the representation of, any other 
person:
    (i) Before the Office,
    (ii) In connection with any particular patent or patent 
application,
    (iii) In which said employee participated personally and 
substantially as an employee of the Office; and
    (2) To not knowingly act within two years after terminating 
employment by the Office as agent or attorney for, or otherwise 
represent, or assist in any manner the representation of any other 
person:
    (i) Before the Office,
    (ii) In connection with any particular patent or patent 
application,
    (iii) If such patent or patent application was pending under the 
employee's official responsibility as an officer or employee within a 
period of one year prior to the termination of such responsibility.
    (3) The words and phrases in paragraphs (b)(1) and (b)(2) of this 
section are construed as follows:
    (i) Represent and representation mean acting as patent attorney or 
patent agent or other representative in any appearance before the 
Office, or communicating with an employee of the Office with intent to 
influence.
    (ii) Assist in any manner means aid or help another person on a 
particular patent or patent application involving representation.
    (iii) Particular patent or patent application means any patent or 
patent application, including, but not limited to, a provisional, 
substitute, international, continuation, divisional, continuation-in-
part, or reissue patent application, as well as any protest, 
reexamination, petition, appeal, or interference based on the patent or 
patent application.
    (iv) Participate personally and substantially. (A) Basic 
requirements. The restrictions of Sec.  11.10(a)(1) apply only to those 
patents and patent applications in which a former Office employee had 
``personal and substantial participation,'' exercised ``through 
decision, approval, disapproval, recommendation, the rendering of 
advice, investigation or otherwise.'' To participate personally means 
directly, and includes the participation of a subordinate when actually 
directed by the former Office employee in the patent or patent 
application. Substantially means that the employee's involvement must 
be of significance to the matter, or form a basis for a reasonable 
appearance of such significance. It requires more than official 
responsibility, knowledge, perfunctory involvement, or involvement on 
an administrative or peripheral issue. A finding of substantiality 
should be based not only on the effort devoted to a patent or patent 
application, but also on the importance of the effort. While a series 
of peripheral involvements may be insubstantial, the single act of 
approving or participation in a critical step may be substantial. It is 
essential that the participation be related to a ``particular patent or 
patent application.'' (See paragraph (b)(3)(iii) of this section.)
    (B) Participation on ancillary matters. An Office employee's 
participation on subjects not directly involving the substantive merits 
of a patent or patent application may not be ``substantial,'' even if 
it is time-consuming. An employee whose official responsibility is the 
review of a patent or patent application solely for compliance with 
administrative control or budgetary considerations and who reviews a 
particular patent or patent application for such a purpose should not 
be regarded as having participated substantially in the patent or 
patent application, except when such considerations also are the 
subject of the employee's proposed representation.
    (C) Role of official responsibility in determining substantial 
participation. Official responsibility is defined in paragraph 
(b)(3)(v) of this section. ``Personal and substantial participation'' 
is different from ``official responsibility.'' One's responsibility 
may, however, play a role in determining the ``substantiality'' of an 
Office employee's participation.
    (v) Official responsibility means the direct administrative or 
operating authority, whether intermediate or final, and either 
exercisable alone or with others, and either personally or through 
subordinates, to approve, disapprove, or otherwise direct Government 
actions.
    (A) Determining official responsibility. Ordinarily, those areas 
assigned by statute, regulation, Executive Order, job description, or 
delegation of authority determine the scope of an employee's ``official 
responsibility''. All particular matters

[[Page 35459]]

under consideration in the Office are under the ``official 
responsibility'' of the Director of the Office, and each is under that 
of any intermediate supervisor having responsibility for an employee 
who actually participates in the patent or patent application within 
the scope of his or her duties. A patent examiner would have ``official 
responsibility'' for the patent applications assigned to him or her.
    (B) Ancillary matters and official responsibility. Administrative 
authority as used in paragraph (v) of this section means authority for 
planning, organizing and controlling a patent or patent application 
rather than authority to review or make decisions on ancillary aspects 
of a patent or patent application such as the regularity of budgeting 
procedures, public or community relations aspects, or equal employment 
opportunity considerations. Responsibility for such an ancillary 
consideration does not constitute official responsibility for the 
particular patent or patent application, except when such a 
consideration is also the subject of the employee's proposed 
representation.
    (C) Duty to inquire. In order for a former employee, e.g., former 
patent examiner, to be barred from representing or assisting in 
representing another as to a particular patent or patent application, 
he or she need not have known, while employed by the Office, that the 
patent or patent application was pending under his or her official 
responsibility. The former employee has a reasonable duty of inquiry to 
learn whether the patent or patent application had been under his or 
her official responsibility. Ordinarily, a former employee who is asked 
to represent another on a patent or patent application will become 
aware of facts sufficient to suggest the relationship of the prior 
matter to his or her former office, e.g., technology center, group or 
art unit. If so, he or she is under a duty to make further inquiry. It 
would be prudent for an employee to maintain a record of only patent 
application numbers of the applications actually acted upon by decision 
or recommendation, as well as those applications under the employee's 
official responsibility which he or she has not acted upon.
    (D) Self-disqualification. A former employee, e.g., former patent 
examiner, cannot avoid the restrictions of this section through self-
disqualification with respect to a patent or patent application for 
which he or she otherwise had official responsibility. However, an 
employee who through self-disqualification does not participate 
personally and substantially in a particular patent or patent 
application is not subject to the lifetime restriction of paragraph 
(b)(1) of this section.
    (vi) Pending means that the matter was in fact referred to or under 
consideration by persons within the employee's area of official 
responsibility.
    (4) Measurement of the two-year restriction period. The two-year 
period under paragraph (b)(2) of this section is measured from the date 
when the employee's official responsibility in a particular area ends, 
not from the termination of service in the Office, unless the two occur 
simultaneously. The prohibition applies to all particular patents or 
patent applications subject to such official responsibility in the one-
year period before termination of such responsibility.
    (c) Former employees of the Office. This section imposes 
restrictions generally parallel to those imposed in 18 U.S.C. 207(a) 
and (b)(1). This section, however, does not interpret these statutory 
provisions or any other post-employment restrictions that may apply to 
former Office employees, and such former employees should not assume 
that conduct not prohibited by this section is otherwise permissible. 
Former employees of the Office, whether or not they are practitioners, 
are encouraged to contact the Department of Commerce for information 
concerning applicable post-employment restrictions.
    (d) An employee of the Office may not prosecute or aid in any 
manner in the prosecution of any patent application before the Office.
    (e) Practice before the Office by Government employees is subject 
to any applicable conflict of interest laws, regulations or codes of 
professional responsibility.


Sec.  11.11  Notification.

    A registered attorney or agent must notify the OED Director of his 
or her postal address for his or her office, up to three e-mail 
addresses where he or she receives e-mail, and business telephone 
number, as well as every change to any of said addresses, or telephone 
numbers within thirty days of the date of the change. A registered 
attorney or agent shall, in addition to any notice of change of address 
and telephone number filed in individual patent applications, 
separately file written notice of the change of address or telephone 
number to the OED Director. A registered practitioner who is an 
attorney in good standing with the bar of the highest court of one or 
more States shall provide the OED Director with the State bar 
identification number associated with each membership. The OED Director 
shall publish from the roster a list containing the name, postal 
business addresses, business telephone number, registration number, and 
registration status as an attorney or agent of each registered 
practitioner recognized to practice before the Office in patent cases.

    Dated: June 14, 2004.
Jon W. Dudas,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 04-13766 Filed 6-23-04; 8:45 am]
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