[Federal Register Volume 73, Number 158 (Thursday, August 14, 2008)]
[Rules and Regulations]
[Pages 47650-47704]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-18109]



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Part II





Department of Commerce





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Patent and Trademark Office



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37 CFR Parts 1, 2, 7, et al.



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

  Federal Register / Vol. 73, No. 158 / Thursday, August 14, 2008 / 
Rules and Regulations  

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 2, 7, 10, 11, and 41

[Docket No.: PTO-C-2005-0013]
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) is 
adopting new rules governing the conduct of disciplinary 
investigations, issuing warnings when closing such investigations, 
disciplinary proceedings, non-disciplinary transfer to disability 
inactive status and reinstatement to practice before the Office. The 
Office is adopting a new rule regarding recognition to practice before 
the Office in trademark cases. The Office also is adopting a new rule 
to address a practitioner's signature and certificate for 
correspondence filed in the Office. These changes will enable the 
Office to better protect the public from practitioners who do not 
comply with the Office's ethics rules and from incapacitated 
practitioners.

DATES: Effective Date: September 15, 2008.

FOR FURTHER INFORMATION CONTACT: Harry I. Moatz ((571) 272-6069), 
Director of Enrollment and Discipline (OED Director), directly by 
phone, by facsimile to (571) 273-6069 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: Congress granted express authority to the 
Office to ``establish regulations, not inconsistent with law, which * * 
* may govern the recognition and conduct of agents, attorneys, or other 
persons representing applicants or other parties before the Office.'' 
35 U.S.C. 2(b)(2)(D). Congress also provided that the ``Director may, 
after notice and opportunity for a hearing, suspend or exclude, either 
generally or in any particular case, from further practice before the 
Patent and Trademark Office, * * * any * * * agent, or attorney shown 
to be incompetent or disreputable, or guilty of gross misconduct, or 
who does not comply with the regulations established under section 
2(b)(2)(D) of this title, or who shall, by word, circular, letter, or 
advertising, with intent to defraud in any manner, deceive, mislead, or 
threaten any applicant or prospective applicant, or other person having 
immediate or prospective business before the Office. The reasons for 
any such suspension or exclusion shall be duly recorded.'' 35 U.S.C. 
32. In so doing, Congress vested express and implied authority with the 
Office to prescribe rules of procedure that are applicable to 
practitioners recognized to practice before the Office.
    On December 12, 2003, the Office published Changes to 
Representation of Others Before the United States Patent and Trademark 
Office, a Notice of Proposed Rule Making in the Federal Register (68 FR 
69441), 1278 Off. Gaz. Pat. Office 22 (Jan. 6, 2004) proposing to amend 
parts 1 and 2 of the rules and procedures governing patent and 
trademark prosecution (Title 37 of the Code of Federal Regulations), 
reserving part 10 and introducing part 11. Included in the proposed 
rules for part 11 were rules governing the conduct of investigations, 
disciplinary proceedings, issuing warnings, disciplinary proceedings, 
reinstatement, recognition to practice before the Office in trademark 
cases, and a practitioner's signature and certificate for 
correspondence filed in the Office--principally rules 11.2, 11.3, 11.5, 
and 11.14 through 11.61. One hundred sixty-three written comments were 
received. After reviewing the written comments, the Office decided to 
revise a number of the rules published in the December 12, 2003 Notice. 
The Office published Changes to Representation of Others Before the 
United States Patent and Trademark Office, a Supplemental Notice of 
Proposed Rule Making (SNPR), on February 28, 2007, in the Federal 
Register (72 FR 9196), 1316 Off. Gaz. Pat. Office 123 (Mar. 27, 2007) 
regarding rules 11.1, 11.2, 11.3, 11.5, and 11.14 through 11.61 and 
requested additional comments on those revised proposed rules. The 
Office received fifteen comments from professional and intellectual 
property organizations, law firms, individual practitioners and members 
of the public. Many of the revised proposed rules were similar to the 
approach of the current regulations. Other revised proposed rules were 
intended to introduce new disciplinary procedures for practitioners who 
have been suspended or disbarred in other disciplinary jurisdictions 
for ethical or professional misconduct, practitioners convicted of 
serious crimes, and practitioners having disability issues.
    The December 12, 2003 Notice also proposed changes to the ethics 
rules governing the conduct of recognized patent practitioners and 
others practicing before the Office as well as rules governing 
enrollment of recognized practitioners. Following receipt and 
consideration of the comments, provisions included in the December 12, 
2003 Notice regarding enrollment were adopted in final rules on July 
26, 2004. See Changes to Representation of Others Before the United 
States Patent and Trademark Office, Final Rule, published in the 
Federal Register, 69 FR 35428 (June 24, 2004), 1288 Off. Gaz. Pat. 
Office 109 (November 16, 2004). Comments on proposed changes to the 
substantive ethics rules remain under consideration by the Office, and 
it is expected that the ethics rules will be the subject of a later, 
separate notice.
    In addition, several rules proposed in the December 12, 2003 Notice 
are directly or indirectly dependent on the development of electronic 
systems to implement rules governing annual fees, Sec.  11.8, and 
continuing legal education, Sec. Sec.  11.12 and 11.13. For example, 
proposed Sec. Sec.  11.8(d), 11.12 and 11.13 are directly dependent on 
development of the systems, whereas proposed Sec.  11.11(b) through 
11.11(f) are indirectly dependent on the development. Further 
consideration of rules dependent on implementing electronic systems 
awaits completion of the development and implementation of the systems. 
Accordingly, the rules below do not refer to Sec. Sec.  11.8(d), 
11.11(b) through 11.11(f), 11.12 and 11.13.
    The primary purposes for adopting procedures for disciplining 
practitioners who fail to conform to adopted standards and non-
disciplinary procedures for transferring practitioners to disability 
inactive status include affording practitioners due process, protecting 
the public, preserving the integrity of the Office, and maintaining 
high professional standards.
    These final rules will be applied only prospectively, not 
retroactively. In implementing the foregoing, with respect to 
investigations, the rules will be applied to the future actions in 
pending investigations and in investigations commencing on or after the 
effective date of the final rules. With respect to disciplinary 
proceedings that have already been commenced by filing a complaint 
under 37 CFR 10.134 before the effective date of the final rules, the 
final rules will not apply. Instead, these disciplinary proceedings 
will continue under the rules in effect on the date the complaint under 
Sec.  10.134 was filed. With regard to disciplinary proceedings

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commenced after the effective date of the rules, the final rules will 
apply. With regard to Sec.  11.5, the final rule will be applied only 
prospectively to assignments and licenses written on or after the 
effective date of the final rules.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Parts 1, 2, 7, 11 and 
41, are revised by amending Sec. Sec.  1.4, 1.8, 1.9, 2.2, 2.11, 2.17, 
2.18, 2.19, 2.24, 2.33, 2.101, 2.102, 2.105, 2.111, 2.113, 2.119, 
2.161, 2.193, 7.25, 7.37, 11.1, 11.2, 11.3, 11.5 and 41.5, and adding 
Sec. Sec.  11.14 through 11.99 as follows:
    Sections 1.4, 1.8, 1.9, 2.2, 2.11, 2.17, 2.18, 2.19, 2.24, 2.33, 
2.101, 2.102, 2.105, 2.111, 2.113, 2.119, 2.161, 2.193, 7.25, 7.37: 
Sections 1.4(d)(3), 1.4(d)(4)(i), 1.4(d)(4)(ii)(C), 1.8(a)(2)(iii)(A), 
1.9(j), 2.2(c), 2.11, 2.17(a)-(c), 2.18(a), 2.19(b), 2.24, 2.33(a)(3), 
2.101(b), 2.102(a), 2.105(b)(1) and (c)(1), 2.111(b), 2.113 (b)(1), 
2.119(d), 2.161(b)(3), 2.193(c)(2), 7.25(a) and 7.37(b)(3) are revised 
to change or add an appropriate cross-reference to Part 11 or change a 
cross-reference to an appropriate section in Part 11.
    Section 11.1: The definitions of ``disqualified,'' ``Federal 
agency,'' ``Federal program'' and ``Serious Crime'' are added to the 
definitions, and the definitions of ``attorney or lawyer'' and 
``State'' are revised. ``Disqualified,'' which appears in Sec.  11.24, 
would mean any action that prohibits a practitioner from participating 
in or appearing before the program or agency, regardless of how long 
the prohibition lasts or the specific terminology used. ``Federal 
program'' is defined as meaning any program established by an Act of 
Congress or administered by a Federal agency and ``Federal agency'' is 
defined as meaning any authority of the executive branch of the 
Government of the United States.
    The definition of ``attorney or lawyer'' is revised to correct an 
error. The Office published a final rule in the Federal Register of 
June 24, 2004 (69 FR 34428) entitled ``Changes to Representation of 
Others Before the United States Patent and Trademark Office.'' In that 
final rule, there was an inadvertent omission of the word ``not'' 
preceding the term ``under'' in the first sentence of the definition of 
``attorney or lawyer'' in Sec.  11.1. An attorney or lawyer in good 
standing with the highest court of a State should not also be ``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.'' The 
definition is corrected by inserting ``not'' before ``under'' in the 
first sentence.
    The definition of state is revised to clarify that state includes 
Commonwealths and territories of the United States, as well as the 
fifty states and the District of Columbia. Thus, the ``court of * * * 
any State'' in Sec.  11.25(a) would include any courts of the fifty 
states, the District of Columbia, and Commonwealths and territories of 
the United States.
    Section 11.2: Section 11.2 provides for the appointment and duties 
of the Director of Enrollment and Discipline (OED Director), as well as 
petitions for review of decisions of the OED Director. Section 11.2(a) 
is revised to delete provisions for appointment of an OED Director in 
the event the OED Director is absent or recuses himself or herself from 
a case, as provision for these circumstances by rule is believed to be 
unnecessary.
    Section 11.2(b)(4) is revised to provide for conducting 
investigations of matters involving possible grounds for discipline of 
practitioners. Except in matters meriting summary dismissal, the OED 
Director will afford an accused practitioner an opportunity to respond 
to a reasonable inquiry before a disposition is recommended or 
undertaken. Section 11.2(b)(5) is added to include among the OED 
Director's duties the initiation of a disciplinary proceeding and 
performance of such other duties in connection with investigations and 
disciplinary proceedings as may be necessary, provided the consent of a 
panel of three members of the Committee on Discipline is first obtained 
when required. Section 11.2(b)(6) is added to provide among the OED 
Director's duties oversight of the preliminary screening of information 
and closing investigations as provided for in Sec.  11.22.
    The titles of Sec. Sec.  11.2(c) and 11.2(d) are revised to limit 
the petition provisions of these subsections to matters ``regarding 
enrollment or recognition.'' Section 11.2(c) is revised to provide that 
a petition to the OED Director be accompanied by payment of the fee set 
forth in Sec.  1.21(a)(5)(i). A sentence in Sec.  11.2(d) proposed in 
December 2003 providing that ``[a] decision dismissing a complaint or 
closing an investigation is not subject to review by petition'' has 
been deleted from Sec.  11.2(d).
    Section 11.2(d) also is revised to provide that a petition under 
this section must be accompanied by the fee set forth in Sec.  
1.21(a)(5)(ii), that a petition not filed within thirty days may be 
dismissed as untimely, that briefs and supporting memoranda must 
accompany the petition, and that an oral hearing will not be granted 
except when considered necessary by the USPTO Director.
    Section 11.2(e) is added to provide for filing a petition to invoke 
supervisory authority of the USPTO Director in disciplinary matters in 
appropriate circumstances. For example, a person dissatisfied with a 
decision dismissing a grievance or closing an investigation may 
petition the USPTO Director to exercise supervisory authority over the 
OED Director. The procedure in subsection (e) is comparable to the 
supervisory review procedure in Sec.  1.181 and assures supervisory 
review when appropriate. No fee is required for a petition to invoke 
the supervisory authority of the USPTO Director in disciplinary 
matters.
    A petition under Sec.  11.2(e) must contain a statement of the 
facts involved and the point or points to be reviewed and the action 
requested. Briefs or memoranda in support of the petition must 
accompany the petition. Where facts are to be proven, the proof in the 
form of affidavits or declarations (and exhibits, if any) must 
accompany the petition. The OED Director may be directed by the USPTO 
Director to file a reply to the petition, supplying a copy to the 
petitioner. An oral hearing will not be granted except when considered 
necessary by the USPTO Director. The filing of a petition will not stay 
an investigation, disciplinary proceeding or other proceedings. The 
petition may be dismissed as untimely if it is not filed within thirty 
days of the mailing date of the action or notice from which relief is 
requested. Any request for reconsideration of the decision of the USPTO 
Director may be dismissed as untimely if not filed within thirty days 
after the date of said decision.
    Section 11.3: Section 11.3(a), which provides for suspension of 
rules, in essence, continues the provisions of former Sec.  10.170 that 
could be applied to regulations addressing procedures. For example, the 
provisions of this section may be invoked by an applicant for 
registration to waive the sixty-day period set in Sec.  11.7 for 
completing an application for registration where events beyond 
applicant's control, such as a flood or fire, prevented applicant from 
supplying information to complete an application. The inclusion of 
Sec.  11.3(a) should not be construed as an indication that there could 
ever be any extraordinary situation when justice requires waiver of a 
disciplinary rule.
    Section 11.3(b) is added to provide that no petition under this 
section may stay a disciplinary proceeding unless ordered by the USPTO 
Director or a hearing officer.

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    Section 11.5: The sole paragraph of Sec.  11.5 is renumbered as 
Sec.  11.5(a). Section 11.5(a) substantially continues the provisions 
of Sec.  11.5, except that ``applications'' has been changed to 
``matters'' at the end of the first sentence.
    Subsection 11.5(b) is added to define practice before the Office as 
including a law-related service that comprehends any matter connected 
with the presentation to the Office or any of its officers or employees 
relating to a client's rights, privileges, duties, or responsibilities 
under the laws or regulations administered by the Office for the grant 
of a patent or registration of a trademark, or for enrollment or 
disciplinary matters. The section provides that nothing in Sec.  11.5 
prohibits a practitioner from employing or retaining non-practitioner 
assistants under the supervision of the practitioner to assist the 
practitioner in matters pending or contemplated to be presented before 
the Office.
    Section 11.5(b)(1) provides a definition of practice before the 
Office in patent matters, which includes preparing and prosecuting any 
patent application, consulting with or giving advice to a client in 
contemplation of filing a patent application or other document with the 
Office, drafting the specification or claims of a patent application; 
drafting an amendment or reply to a communication from the Office that 
may require written argument to establish the patentability of a 
claimed invention; and drafting a communication for a public use, 
interference, reexamination proceeding, petition, appeal to the Board 
of Patent Appeals and Interferences, or other proceeding. This section 
also provides that registration to practice before the Office in patent 
cases sanctions the performance of those services which are reasonably 
necessary and incident to the preparation and prosecution of patent 
applications or other proceeding before the Office involving a patent 
application or patent in which the practitioner is authorized to 
participate. The services are identified as including consideration of 
the advisability of relying upon alternative forms of protection which 
may be available under state law, and drafting an assignment or causing 
an assignment to be executed in contemplation of filing or prosecution 
of a patent application if the practitioner is filing or prosecuting 
the patent application, and assignment does no more than replicate the 
terms of a previously existing oral or written obligation of assignment 
from one person or party to another person or party.
    Section 11.5(b)(2) provides a definition of practice before the 
Office in trademark matters which includes consulting with or giving 
advice to a client in contemplation of filing a trademark application 
or other document with the Office; preparing and prosecuting an 
application for trademark registration; preparing an amendment or 
response which may require written argument to establish the 
registrability of the mark; and conducting an opposition, cancellation, 
or concurrent use proceeding; or conducting an appeal to the Trademark 
Trial and Appeal Board.
    The provision in proposed rule 11.5(b)(3) regarding a 
practitioner's conduct occurring in a non-practitioner capacity has 
been withdrawn as being unnecessary. The provisions of revised proposed 
Sec.  11.19 would cover misconduct occurring in a non-lawyer or non-
agent capacity. Section 11.19 identifies several grounds for 
discipline, including, but not limited to, conduct that violates a 
mandatory disciplinary rule of the USPTO Code of Professional 
Responsibility and a conviction of a serious crime.
    Section 11.14: Section 11.14 is added to set forth who may practice 
before the Office in trademark and other non-patent cases. Section 
11.14(a), in essence, continues present practice under Sec.  10.14(a) 
except as noted in the following discussion. The last sentence of Sec.  
11.14(a) adds a provision that registration as a patent practitioner 
does not entitle an individual to practice before the Office in 
trademark matters. An attorney who is no longer a member in good 
standing of the bar of the highest court of one state and not admitted 
to the bar in another state is not entitled to practice before the 
Office in trademark matters on the basis of the attorney's registration 
as a patent practitioner.
    Thus, a practitioner registered with the Office as a patent 
attorney, but suspended or disbarred in the only state where the 
practitioner had been admitted to practice law, may not rely on the 
registration to continue to practice before the Office in trademark 
matters. Similarly, a practitioner registered as a patent attorney, but 
suspended or disbarred in the only state where the practitioner had 
been admitted to practice law, may not revert to registration as a 
patent agent prior to January 1, 1957, to continue to practice before 
the Office in trademark cases.
    Section 11.14(b) continues the present practice under Sec.  
10.14(b). A second sentence has been added to Sec.  11.14(b) to assure 
clarity under the present practice that, but for the one exception in 
the first sentence of this section, registration as a patent agent does 
not itself entitle an individual to practice before the Office in 
trademark matters.
    Section 11.14(c) is added to continue the present practice under 
Sec.  10.14(c), except as further clarified by the following 
provisions. The first sentence of Sec.  11.14(c) is revised to provide 
that a foreign attorney or agent not a resident of the United States 
who seeks reciprocal recognition must file a written application for 
reciprocal recognition under paragraph (f) of Sec.  11.14 and prove to 
the satisfaction of the OED Director that he or she is possessed of 
good moral character and reputation.
    Sections 11.14(d) and (e) continue the present practices under 
former sections 10.14(d) and (e), except as noted in the following 
discussion. In Sec.  11.14(e), ``on behalf of a client'' has been added 
to the end of the first sentence to make it clear that no individual is 
permitted to represent others before the Office in trademark matters 
other than those specified in paragraphs (a), (b), and (c) of this 
section.
    Section 11.14(f) is added to expressly provide for filing an 
application for reciprocal recognition under Sec.  11.14(c). This 
section codifies the practice of requiring an individual seeking 
reciprocal recognition under Sec.  11.14(c) to apply in writing to the 
OED Director for reciprocal recognition and pay the fee specified in 
Sec.  1.21(a)(1)(i).
    Section 11.15: Section 11.15 is added to provide for refusal to 
recognize a practitioner. This section continues the present practice 
under former Sec.  10.15. The second sentence makes clear that a 
practitioner who is suspended or excluded is not entitled to practice 
before the Office in patent, trademark, or other non-patent matters 
while suspended or excluded.
    Sections 11.16-11.17: Sections 11.16-11.17 are reserved.
    Section 11.18: Section 11.18(a) is added to continue the present 
practice under former Sec.  10.18(a), and extend the practice to all 
documents filed with a hearing officer in a disciplinary proceeding. 
But for specified exceptions, every document filed with the Office or a 
hearing officer in a disciplinary proceeding must bear a signature, 
personally signed by such practitioner, in compliance with Sec.  
1.4(d)(1).
    Section 11.18(b)(1) is added to continue the present practice of 
providing that a party presenting a paper certifies to the truthfulness 
of the content of his or her submissions to the Office. The term 
``party'' is not limited to practitioners, and includes

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applicants. The provisions of Sec.  11.18(b)(1) continue the present 
practice under Sec.  10.18(b)(1), except for extending the practice to 
submissions to a hearing officer in a disciplinary proceeding. Inasmuch 
as the hearing officer may be employed by another Federal agency, 
extension of the provisions of this section to submission to the 
hearing officer is believed to be appropriate. The provisions of Sec.  
11.18(b)(1) continue the present practice under Sec.  10.18(b)(1) 
except as follows. Section 11.18(b)(1) is clarified to prohibit 
``willfully and knowingly'' making false, fictitious or fraudulent 
statements or representations or ``willfully and knowingly'' making or 
using a false writing or document knowing the same to contain any 
false, fictitious, or fraudulent statement or entry. This section 
repeats an obligation all parties submitting papers to the Office 
otherwise have under 18 U.S.C. 1001. This section applies the statutory 
standard of conduct applicable to the submission of material facts in 
courts to proceedings in the Office and to disciplinary proceedings.
    Section 11.18(b)(1) also provides that whoever violates the 
provisions of Sec.  11.18(b)(1) is subject to penalties in criminal 
statutes in addition to those under 18 U.S.C. 1001. Inasmuch as an 
offending paper may have little or no probative value, Sec.  
11.18(b)(1) provides that violation of the rule may jeopardize the 
probative value of the paper.
    Unlike Sec.  10.18(b)(1), Sec.  11.18(b)(1) does not provide that 
violations of paragraph (b)(1) may jeopardize the validity of the 
application or document inasmuch as the conditions for valid 
application are set by statute. Similarly, unlike Sec.  10.18(b)(1), 
Sec.  11.18(b)(1) does not provide that violations of paragraph (b)(1) 
may jeopardize the validity or enforceability of any patent, trademark 
registration, or certificate resulting therefrom. It is unnecessary 
that the regulation remind parties of any civil jeopardy to which they 
are subject for a violation of paragraph (b)(1).
    Section 11.18(b)(2) is added to provide that a party submitting a 
paper certifies to the best of the party's knowledge, information and 
belief, formed after an inquiry reasonable under the circumstances, 
that the paper is not being presented for any improper purpose, that 
other legal contentions therein are warranted by existing law or by a 
nonfrivolous argument for the establishment of new law, that 
allegations and factual contentions have evidentiary support, and that 
denials of factual contentions are warranted on the evidence or are 
reasonably based on a lack of information or belief. Section 
11.18(b)(2) continues the current practice under former Sec.  
10.18(b)(2) except for substitution of ``any proceeding'' for 
prosecution in subsection 11.18(b)(2)(i).
    Section 11.18(c) is added to provide a non-exhaustive list of 
sanctions or actions the USPTO Director may take, after notice and 
reasonable opportunity to respond, for a violation of paragraph 
(b)(2)(i) through (b)(2)(iv) of Sec.  11.18. Section 11.18(c) continues 
some of the sanctions under former Sec.  10.18(c), including precluding 
a party or practitioner from submitting a paper, or presenting or 
contesting an issue; requiring a terminal disclaimer; or terminating 
the proceedings in the Office. Section 11.18(c) adds specific sanctions 
and actions, for example, striking the offending paper, referring a 
practitioner's conduct to the Director of Enrollment and Discipline for 
appropriate action; affecting the weight given to the offending paper; 
and terminating the proceedings in the Office.
    These sanctions in Sec.  11.18(c) conform to those discussed in 
conjunction with the 1993 Amendment to Rule 11 of the Federal Rules of 
Civil Procedure. The commentary to the 1993 Amendment indicated that a 
court ``has available a variety of possible sanctions to impose for 
violations, such as striking the offending paper; * * * referring the 
matter to disciplinary authorities.'' Like Rule 11 of the Fed. R. Civ. 
P., the provisions in Sec.  11.18 do not attempt to exhaustively 
enumerate the factors that should be considered or the appropriate 
sanctions. The Office anticipates that in taking action under Sec.  
11.18 in applying sanctions, it would use the proper considerations 
utilized in issuing sanctions or taking action under Rule 11. 
Consideration may be given, for example, to whether the improper 
conduct was willful or negligent; whether it was part of a pattern of 
activity, or an isolated event; whether it infected an entire 
application, or only one particular paper; whether the person has 
engaged in similar conduct in other matters; whether the conduct was 
intended to injure; what effect the conduct had on the administrative 
process in time and expense; whether the responsible person is trained 
in law; what is needed to deter that person from repetition in the same 
case; and what is needed to deter similar conduct by others. All of 
these in a particular case may be proper considerations. See, 28 
U.S.C.A. Fed. R. Civ. P. 11, Adv. Comm. Notes, 1993 Amendments, 
Subdivisions (b) and (c).
    Section 11.18(d) is added to continue the present practice under 
former Sec.  10.18(d) of providing notice that any practitioner 
violating the provisions of Sec.  11.18 may also be subject to 
disciplinary action.
    Section 11.19: Section 11.19 is added to set forth the disciplinary 
jurisdiction of the Office. Section 11.19(a) sets forth a list of 
practitioners who are subject to the disciplinary jurisdiction of the 
Office. These include practitioners administratively suspended, all 
practitioners engaged in practice before the Office; practitioners 
registered to practice before the Office in patent cases; inactivated 
practitioners, practitioners authorized to take testimony; and 
practitioners who have been transferred to disability inactive status, 
reprimanded, suspended, or excluded from the practice of law. Inasmuch 
as these rules are being adopted before the adoption of Sec.  11.11(b) 
regarding administrative suspension and Sec.  11.11(c) regarding 
administrative suspension, in connection with continuing education and 
annual fees, Sec.  11.19(a) does not reference those actions. Instead, 
Sec.  11.19(a) references practitioners inactivated under Sec.  10.11. 
Also practitioners who have resigned are subject to such jurisdiction 
with respect to conduct undertaken prior to the resignation and conduct 
in regard to any practice before the Office following the resignation.
    Section 11.19(b) is added to set forth the grounds for discipline 
and grounds for transfer to disability inactive status. The grounds for 
discipline include conviction of a serious crime, Sec.  11.19(b)(1); 
discipline on ethical grounds imposed in another jurisdiction or 
disciplinary disqualification from participating in or appearing before 
any Federal program or agency, Sec.  11.19(b)(2); and failure to comply 
with any order of a Court disciplining a practitioner, Sec.  
11.19(b)(3); or any final decision of the USPTO Director in a 
disciplinary matter; violation of the mandatory Disciplinary Rules 
identified in sections 10.20(b), Sec.  11.19(b)(4); or violation of the 
oath or declaration taken by the practitioner, Sec.  11.19(b)(5).
    Section 11.19(b)(2) is added to set forth grounds for transfer to 
disability inactive status. The grounds include being transferred to 
disability inactive status in another jurisdiction; being judicially 
declared incompetent, being judicially ordered to be involuntarily 
committed after a hearing on the grounds of insanity, incompetency or 
disability, or being placed by court order under guardianship or 
conservatorship; or filing a motion requesting a disciplinary 
proceeding be held in abeyance because the

[[Page 47654]]

practitioner is suffering from a disability or addiction that makes it 
impossible for the practitioner to adequately defend the charges in the 
disciplinary proceeding.
    Section 11.19(c) is added to set forth the manner for handling 
petitions to disqualify a practitioner. This section continues the 
present practice under former Sec.  10.130(b).
    Section 11.19(d) is added to provide for the OED Director to refer 
the existence of circumstances suggesting unauthorized practice of law 
to the authorities in the appropriate jurisdiction(s).
    Section 11.20: Section 11.20 is added to set forth the disciplinary 
sanctions the USPTO Director may impose on a practitioner after notice 
and opportunity for a hearing, as well as to set forth transfer to 
disability inactive status. Section 11.20(a)(2) provides for exclusion 
from practice before the Office. Suspension may be imposed for a period 
that is appropriate under the facts and circumstances of the case. 
Section 11.20(a)(3) provides for reprimand, including both public and 
private reprimand.
    Section 11.20(a)(4) provides for probation in lieu of or in 
addition to any other disciplinary sanction. The order imposing 
probation sets forth in writing the conditions of probation as well as 
whether, and to what extent, the practitioner is required to notify 
clients of the probation. The order also establishes procedures for the 
supervision of probation. Violation of any condition of probation is 
cause for the probation to be revoked, and the disciplinary sanction to 
be imposed for the remainder of the probation period. Revocation of 
probation occurs after an order to show cause why probation should not 
be revoked is resolved adversely to the practitioner.
    Section 11.20(b) is added to provide that the USPTO Director may 
require a practitioner to make restitution either to persons 
financially injured by the practitioner's conduct or to an appropriate 
client's security trust fund, or both, as a condition of probation or 
of reinstatement. The restitution is limited to the return of unearned 
practitioner fees or misappropriated client funds. The rule does not 
contemplate restitution for the value of an invention or patent.
    Section 11.20(c) is added to set forth transfer to disability 
inactive status. This section provides that the USPTO Director may, 
after notice and opportunity for a hearing, and where grounds exist to 
believe a practitioner has been transferred to disability inactive 
status in another jurisdiction, or has been judicially declared 
incompetent; judicially ordered to be involuntarily committed after a 
hearing on the grounds of incompetency or disability, or placed by 
court order under guardianship or conservatorship, transfer the 
practitioner to disability inactive status.
    Section 11.21: Section 11.21 is added to codify the practice of 
issuing warnings. This section provides that a warning is not a 
disciplinary sanction. This section also provides that the ``OED 
Director may conclude an investigation with the issuance of a 
warning,'' which ``shall contain a brief statement of facts and 
imperative USPTO Rules of Professional Conduct relevant to the facts.'' 
Inasmuch as a warning is not a disciplinary sanction, a warning would 
not be made public.
    Section 11.22: Section 11.22 is added to set forth provisions 
regarding the conduct of investigations of possible grounds for 
discipline. Section 11.22(a) authorizes the OED Director to investigate 
possible grounds for discipline. This section provides that an 
investigation may be initiated when the OED Director receives a 
grievance, information or evidence from any source suggesting possible 
grounds for discipline. The section further provides that neither 
unwillingness nor neglect by a grievant to prosecute a charge, nor 
settlement, compromise, or restitution with the grievant, shall in 
itself justify abatement of an investigation.
    Section 11.22(b) provides for reporting information or evidence 
concerning possible grounds for discipline to the OED Director. Any 
person possessing information or evidence concerning possible grounds 
for discipline of a practitioner may report the information or evidence 
to the OED Director, who may request that the report be presented in 
the form of an affidavit or declaration.
    Section 11.22(c) provides that information or evidence coming from 
any source that presents or alleges facts suggesting possible grounds 
for discipline of a practitioner will be deemed a grievance.
    Section 11.22(d) provides for preliminary screening of information 
or evidence. This section provides that the ``OED Director shall 
examine all information or evidence concerning possible grounds for 
discipline of a practitioner.''
    Section 11.22(e) provides for notifying a practitioner of an 
investigation. The section provides that the ``OED Director shall 
notify the practitioner in writing of the initiation of an 
investigation into whether a practitioner has engaged in conduct 
constituting possible grounds for discipline.''
    Section 11.22(f) provides for the OED Director requesting 
information and evidence in the course of an investigation. Subsection 
11.22(f)(1) provides that in the course of conducting an investigation, 
the OED Director may request information or evidence regarding possible 
grounds for discipline of a practitioner from the grievant, the 
practitioner, or any person who may reasonably be expected to provide 
information and evidence needed in connection with the grievance or 
investigation.
    Subsection 11.22(f)(2) provides that the OED Director may request 
information and evidence regarding possible grounds for discipline of a 
practitioner from a non-grieving client either after obtaining the 
consent of the practitioner or upon a finding by a Contact Member of 
the Committee on Discipline, appointed in accordance with Sec.  
11.23(d), that good cause exists to believe that the possible ground 
for discipline alleged has occurred with respect to non-grieving 
clients. This section further provides that ``[n]either a request for, 
nor disclosure of, such information shall constitute a violation of any 
of the Mandatory Disciplinary Rules identified in Sec.  10.20(b) of 
Part 10 of this Subsection.''
    Section 11.22(g) provides where the OED Director makes a request 
under paragraph (f)(2) of this section to the Contact Member of the 
Committee on Discipline, the Contact Member will not, with respect to 
the practitioner connected to the OED Director's request, participate 
in the Committee on Discipline panel that renders a probable cause 
decision.
    Section 11.22(h) sets forth the actions the OED Director may take 
upon the conclusion of an investigation. The OED Director may close an 
investigation without issuing a warning or taking disciplinary action, 
issue a warning to the practitioner, institute formal charges upon 
approval of the Committee on Discipline, or enter into a settlement 
agreement with the practitioner and submit the same for approval to the 
USPTO Director.
    Section 11.22(i) provides for closing investigation without issuing 
a warning or taking disciplinary action. There are four circumstances 
under this section when the OED Director must terminate an 
investigation and decline to refer a matter to the Committee on 
Discipline. Under Sec.  11.22(i)(1), the OED Director closes an 
investigation without issuing a warning or disciplinary action upon 
determining that either the information or evidence is unfounded. Under

[[Page 47655]]

Sec.  11.22(i)(2), the OED Director closes the investigation without 
issuing a warning or taking disciplinary action when it is determined 
that the information or evidence relates to matters not within the 
jurisdiction of the Office. Under Sec.  11.22(i)(3), the OED Director 
closes the investigation without issuing a warning or taking 
disciplinary action upon determining that as a matter of law, the 
conduct about which information or evidence has been obtained does not 
constitute grounds for discipline, even if the conduct may involve a 
legal dispute. Under Sec.  11.22(i)(2)(4), the OED Director closes the 
investigation without issuing a warning or taking disciplinary action 
when the available evidence is insufficient to conclude that there is 
probable cause to believe that grounds exist for discipline.
    Section 11.23: Section 11.23 is added to provide for a Committee on 
Discipline. Section 11.23(a) provides for the Committee to be appointed 
by the USPTO Director. The Committee on Discipline consists of at least 
three employees of the Office, and none of the Committee members are 
permitted to report directly or indirectly to the OED Director or any 
employee designated by the USPTO Director to decide disciplinary 
matters. This section further provides that each Committee member must 
be a member in good standing of the bar of the highest court of a 
State. The Committee members select a Chairperson from among 
themselves. Three Committee members constitute a panel of the 
Committee.
    Section 11.23(b) sets forth the powers and duties of the Committee 
on Discipline. The Committee is empowered and has the duty to meet in 
panels at the request of the OED Director and, after reviewing evidence 
presented by the OED Director, by majority vote of the panel, determine 
whether there is probable cause to bring charges under Sec.  11.32 
against a practitioner; and to prepare and forward its own probable 
cause findings and recommendations to the OED Director.
    Section 11.23(c) provides that no discovery is authorized of, and 
no member of the Committee may be required to testify about 
deliberations of, the Committee or of any panel.
    Section 11.24: Section 11.24 is added to provide procedures for 
reciprocal discipline of a practitioner. Section 11.24(a) provides that 
a practitioner who is subject to the disciplinary jurisdiction of the 
Office and has been publicly censured, publicly reprimanded, subjected 
to probation, disbarred or suspended in another jurisdiction, or has 
been disciplinarily disqualified from participating in or appearing 
before any Federal program or agency shall notify the OED Director in 
writing of the same. This section also provides that a practitioner is 
deemed to be disbarred if he or she is disbarred, excluded on consent, 
or has resigned in lieu of a disciplinary proceeding.
    Section 11.24(a) further provides for the OED Director, upon 
receiving notification that a practitioner subject to the disciplinary 
jurisdiction of the Office has been disciplined, to obtain a certified 
copy of the record or order regarding the public censure, public 
reprimand, probation, disbarment, suspension or disciplinary 
disqualification and file the same with the USPTO Director. The 
information received by the OED Director may come from any source, and 
therefore, the actions by OED Director are independent of whether the 
practitioner has self-reported. Without Committee on Discipline 
authorization, the OED Director can file a complaint complying with 
Sec.  11.34 with the USPTO Director against the practitioner predicated 
upon the public censure, public reprimand, probation, disbarment, 
suspension or disciplinary disqualification, and request the USPTO 
Director to issue a notice and order as set forth in Sec.  11.24(b).
    Under Sec.  11.24(a) regarding a practitioner who has been 
disqualified from participating in or appearing before any Federal 
program or agency, the program or agency need not use the term 
``disqualified'' to describe the action. For example, an agency may use 
analogous terms, such as ``suspend,'' ``decertify,'' ``exclude,'' 
``expel,'' or ``debar'' to describe the practitioner's disqualification 
from participating in the program or the agency.
    Section 11.24(b) provides a procedure for initiating a reciprocal 
disciplinary proceeding. Under this section, the USPTO Director, upon 
receipt of a certified copy of the record or order regarding the 
practitioner, issues a notice directed to the practitioner in 
accordance with Sec.  11.35 and to the OED Director. The notice 
includes (1) a copy of the record or order regarding the public 
censure, public reprimand, probation, disbarment, suspension, or 
disciplinary disqualification; (2) a copy of the complaint; and (3) an 
order directing the practitioner to file a response with the USPTO 
Director and the OED Director, within forty days of the date of the 
notice, establishing a genuine issue of material fact predicated upon 
the grounds set forth in Sec. Sec.  11.24(d)(1)(i) through (d)(1)(iv) 
that the imposition of the identical public censure, public reprimand, 
probation, disbarment, suspension or disciplinary disqualification 
would be unwarranted and the reasons for the claim. In conformity with 
the changes to Sec.  11.24(a), ``disciplined'' has been changed to 
``censured, publicly reprimanded, subjected to probation, disbarred, 
suspended'' in the first sentence of this section; ``public censure, 
public reprimand, probation,'' has been added to Sec.  11.24(b)(1); and 
``publicly censured, publicly reprimanded, placed on probation,'' has 
been added to Sec.  11.24(b)(3)(i).
    Section 11.24(c) sets forth the effect of a stay in another 
jurisdiction on a reciprocal disciplinary proceeding occurring in the 
Office. Under this section, if the discipline imposed by another 
jurisdiction, probation or disciplinary disqualification imposed in the 
Federal program or agency has been stayed, any reciprocal discipline 
imposed by the USPTO may be deferred until the stay expires. In 
conformity with the changes to Sec.  11.24(a), ``discipline'' has been 
changed to ``censure, public reprimand, probation, disbarment, 
suspension or disciplinary disqualification'' in Sec.  11.24(c).
    Section 11.24(d) provides for a hearing and imposition of 
discipline. Under this section the USPTO Director hears the matter on 
the documentary record and imposes the identical discipline unless the 
USPTO Director determines that there is a genuine issue of material 
fact of the nature set forth in Sec. Sec.  11.24(d)(1)(i) through (iv). 
In conformity with the changes to Sec.  11.24(a), each occasion of 
``discipline'' has been changed to ``censure, public reprimand, 
probation, disbarment, suspension or disciplinary disqualification'' in 
the second sentence of this section.
    The situation identified in Sec.  11.24(d)(1)(i) is that the 
procedure elsewhere was so lacking in notice or opportunity to be heard 
as to constitute a deprivation of due process. The situation identified 
in Sec.  11.24(d)(1)(ii) is that there was such infirmity of proof 
establishing the conduct 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. The situation in Sec.  11.24(d)(1)(iii) is 
that the imposition of the same discipline by the Office would result 
in grave injustice. The situation in Sec.  11.24(d)(1)(iv) is that the 
practitioner was not the person involved in the prior disciplinary 
matter. In conformity with the changes to Sec.  11.24(a), 
``discipline'' has been changed to ``censure, public reprimand, 
probation, disbarment, suspension or disciplinary disqualification'' in 
Sec.  11.24(d)(1)(iii).

[[Page 47656]]

    Under Sec.  11.24(d)(2), if the USPTO Director determines that 
there is no genuine issue of material fact, the USPTO Director enters 
an appropriate final order. If the USPTO Director is unable to make 
such a determination because there is a genuine issue of material fact, 
the complaint is referred to a hearing officer for disposition and the 
practitioner is directed to file an answer to the complaint.
    Section 11.24(e) provides for the effect of the adjudication in 
another jurisdiction or Federal agency or program. This section sets 
forth that a final adjudication in another jurisdiction or Federal 
agency or program that a practitioner, whether or not admitted in that 
jurisdiction, has been guilty of misconduct shall establish a prima 
facie case for discipline or probation for purposes of a disciplinary 
proceeding in this Office. In conformity with the changes to Sec.  
11.24(a), ``discipline'' has been changed to ``censure, public 
reprimand, probation, disbarment, suspension or disciplinary 
disqualification'' in this section.
    Section 11.24(f) sets forth the only circumstance when reciprocal 
discipline may be imposed nunc pro tunc. This section provides for 
imposing reciprocal discipline only upon the practitioner's request and 
only if the practitioner promptly notified the OED Director of his or 
her censure, public reprimand, probation, disbarment, suspension or 
disciplinary disqualification in another jurisdiction, and establishes 
by clear and convincing evidence that the practitioner voluntarily 
ceased all activities related to practice before the Office and 
complied with all provisions of Sec.  11.58. This section further 
provides that the effective date of any censure, public reprimand, 
probation, disbarment, suspension, or disciplinary disqualification 
imposed nunc pro tunc shall be the date the practitioner voluntarily 
ceased all activities related to practice before the Office and 
complied with all provisions of Sec.  11.58. In conformity with the 
changes to Sec.  11.24(a), ``discipline'' has been changed to 
``censure, public reprimand, probation, disbarment, suspension'' in the 
first sentence. In conformity with the changes to Sec.  11.24(a), in 
the second sentence, ``censure, public reprimand, probation,'' has been 
inserted before ``suspension''; a comma has been inserted after 
``suspension''; ``or'' has been inserted between ``suspension'' and 
``disbarment''; and ``or disciplinary disqualification'' has been added 
after ``disbarment.''
    Section 11.24(g) provides for reinstatement following a reciprocal 
discipline proceeding. Under this section, a practitioner may petition 
for reinstatement under conditions set forth in Sec.  11.60 no sooner 
than completion of the period of reciprocal discipline imposed, and 
compliance with all provisions of Sec.  11.58.
    Section 11.25: Section 11.25 is added to provide a procedure for 
interim suspension and discipline, after notice and opportunity for a 
hearing on the documentary record, based upon conviction of committing 
a serious crime. The first sentence of Sec.  11.25(a) provides that 
upon being convicted of a crime in a court of the United States, any 
state, or a foreign country, a practitioner subject to the disciplinary 
jurisdiction of the Office shall notify the OED Director in writing of 
the same within thirty days from the date of such conviction. If the 
crime is not a serious crime, the OED Director processes the matter in 
the same manner as any other information or evidence of a possible 
violation of the Mandatory Disciplinary Rules identified in Sec.  
10.20(b) of Part 10. The reference to the Mandatory Disciplinary Rules 
of Part 10 will obtain until such time as the Rules of Professional 
Conduct are adopted, at which time this section will be amended to 
reference the imperative Rules of Professional Conduct.
    The second sentence of Sec.  11.25(a) provides that the OED 
Director, upon being advised or learning that a practitioner subject to 
the disciplinary jurisdiction of the Office has been convicted of a 
crime, must make a preliminary determination whether the crime 
constitutes a serious crime warranting interim suspension. The third 
sentence of Sec.  11.25(a) provides that where the crime is a serious 
crime, the OED Director will file with the USPTO Director proof of the 
conviction and request that the USPTO Director issue a notice and order 
as set forth in Sec.  11.25(b)(2) of this section. The fourth sentence 
of Sec.  11.25(a) provides that the OED Director must also, without 
Committee on Discipline authorization, file with the USPTO Director a 
complaint against the practitioner complying with Sec.  11.34, 
predicated upon the conviction of a serious crime. The fifth sentence 
of Sec.  11.25 provides that in the event the crime is not a serious 
crime, the OED Director must process the matter in the same manner as 
any other information or evidence of a possible violation of an 
imperative Rule of Professional Conduct coming to the attention of the 
OED Director.
    Section 11.25(b) provides a procedure for imposing interim 
suspension and referral for disciplinary proceeding in the case of a 
practitioner convicted of a serious crime. Section 11.25(b)(1) provides 
that the USPTO Director has authority to place a practitioner on 
interim suspension, after a hearing on the documentary record.
    Section 11.25(b)(2) provides for notifying the practitioner 
convicted of commission of a serious crime with notice of the 
proceeding. The USPTO Director issues a notice to the practitioner in 
accordance with Sec.  11.35(a), (b) or (c), and to the OED Director. 
The notice contains a copy of the court record, docket entry, or 
judgment of conviction; a copy of the complaint; and an order directing 
the practitioner to inform the USPTO Director and OED Director, within 
thirty days of the date of the notice, of any genuine issue of material 
fact that the crime did not constitute a serious crime, that the 
practitioner is not the individual found guilty of the crime, or that 
the conviction was so lacking in notice or opportunity to be heard as 
to constitute a deprivation of due process.
    Section 11.25(b)(3) provides procedures for a hearing on and entry 
of a final order on the OED Director's request for interim suspension. 
The request for interim suspension is heard by the USPTO Director on 
the documentary record unless the USPTO Director determines that the 
practitioner's response establishes a genuine issue of material fact 
that the crime did not constitute a serious crime, the practitioner is 
not the person who committed the crime, or the conviction was so 
lacking in notice or opportunity to be heard as to constitute a 
deprivation of due process. If the USPTO Director determines that there 
is no genuine issue of material fact regarding those defenses an 
appropriate final order is entered regardless of the pendency of any 
criminal appeal. Conversely, if the USPTO Director is unable to make 
such determination because there is a genuine issue of material fact, 
the USPTO Director would enter a final order dismissing the request for 
interim suspension and referring the complaint to a hearing officer for 
a hearing. Under the latter circumstances, the USPTO Director would 
also direct the practitioner to file an answer to the complaint in 
accordance with Sec.  11.36. Section 11.25(b)(4) provides the USPTO 
Director with authority to terminate an interim suspension when it is 
in the interest of justice, and upon a showing of extraordinary 
circumstances, after affording the OED Director an opportunity to 
respond to the request to terminate interim suspension.

[[Page 47657]]

    Section 11.25(b)(5) provides a procedure whereby the USPTO 
Director, upon entering an order for interim suspension, refers the 
complaint to the OED Director for institution of a formal disciplinary 
proceeding for an initial decision recommending the final disciplinary 
sanction to be imposed. The hearing officer, however, shall stay the 
disciplinary proceeding until all direct appeals from the conviction 
are concluded. Review of the initial decision of the hearing officer 
shall be pursuant to Sec.  11.55.
    Section 11.25(c) sets forth the standard for proving conviction and 
guilt. Section 11.25(c)(1) addresses conviction in the United States. 
Under this section, for purposes of a hearing for interim suspension 
and a hearing on the formal charges in a complaint filed as a 
consequence of the conviction, a certified copy of the court record, 
docket entry, or judgment of conviction in a court of the United States 
or any state establishes a prima facie case by clear and convincing 
evidence that the practitioner was convicted of the crime and that the 
conviction was not lacking in due process. Section 11.25(c)(2) 
addresses conviction in a foreign country. For purposes of a hearing 
for interim suspension and on the formal charges filed as a result of a 
finding of guilt, a certified copy of the court record, docket entry, 
or judgment of conviction in a court of a foreign country establishes a 
prima facie case by clear and convincing evidence that the practitioner 
was convicted of the crime and that the conviction was not lacking in 
due process. Nothing in this section precludes the practitioner from 
demonstrating in any hearing for interim suspension that there is a 
genuine issue of material fact to be considered when determining if the 
elements of a serious crime were committed in violating the criminal 
law of the foreign country and whether a disciplinary sanction should 
be entered.
    Section 11.25(d) provides that if the USPTO Director determines 
that the crime is not a serious crime, the complaint is to be referred 
to the OED Director for investigation under Sec.  11.22 and appropriate 
processing.
    Section 11.25(e) provides a procedure for reinstatement upon 
reversal or setting aside a finding of guilt or a conviction. Under 
Sec.  11.25(e)(1), if the practitioner demonstrates that the underlying 
finding of guilt or conviction of serious crimes has been reversed or 
vacated, the order for interim suspension is to be vacated and the 
practitioner be placed on active status unless the finding of guilt was 
reversed or the conviction was set aside with respect to less than all 
serious crimes for which the practitioner was found guilty or 
convicted. Vacating the interim suspension does not terminate any other 
disciplinary proceeding then pending against the practitioner, the 
disposition of which is determined by the hearing officer on the basis 
of all available evidence other than the finding of guilt or 
conviction. Section 11.25(e)(2) sets forth the reinstatement procedure 
for a practitioner convicted of a serious crime. The practitioner 
petitions for reinstatement under conditions set forth in Sec.  11.60 
no sooner than five years after being discharged following completion 
of service of his or her sentence, or after completion of service under 
probation or parole, whichever is later.
    Section 11.25(f), which pertains to notifying clients and others of 
a practitioner's interim suspension, by providing that an interim 
suspension under this section constitutes a suspension of the 
practitioner for the purpose of Sec.  11.58. Therefore, the 
practitioner must notify clients and others in accordance with Sec.  
11.58.
    Section 11.26: Section 11.26 is added to introduce provisions for 
settlement in disciplinary matters. Under this section a settlement 
conference may occur between the OED Director and the practitioner 
before or after a complaint is filed under Sec.  11.34. Any offers of 
compromise and any statements made during the course of settlement 
discussions are not admissible in subsequent proceedings. The OED 
Director may recommend to the USPTO Director any settlement terms 
deemed appropriate, including steps taken to correct or mitigate the 
matter forming the basis of the action, or to prevent recurrence of the 
same or similar conduct. A settlement agreement is effective only upon 
entry of a final decision by the USPTO Director.
    Section 11.27: Section 11.27 is added to provide a procedure for 
excluding a practitioner on consent. Section 11.27(a) provides that a 
practitioner who is the subject of an investigation or a pending 
disciplinary proceeding based on allegations of grounds for discipline, 
and who desires to resign, may only do so by consenting to exclusion 
and delivering to the OED Director an affidavit declaring the consent 
of the practitioner to exclusion. The content of the affidavit is set 
forth in Sec. Sec.  11.27(a)(1)(i) through 11.27(a)(3)(ii). Section 
11.27(b) provides a procedure for the USPTO Director to review, and if 
appropriate, approve the exclusion on consent. Upon approval, the USPTO 
Director enters an order excluding the practitioner on consent and 
providing other appropriate actions. Upon entry of the order, the 
excluded practitioner must comply with the requirements set forth in 
Sec.  11.58. Under Sec.  11.27(c), when an affidavit under Sec.  
11.27(a) is received after a complaint under Sec.  11.34 has been 
filed, the OED Director notifies the hearing officer. The hearing 
officer then enters an order transferring the disciplinary proceeding 
to the USPTO Director, who may enter an order excluding the 
practitioner on consent. Section 11.27(d) provides for reinstatement 
following exclusion on consent. Under this section, a practitioner 
excluded on consent under this section may not petition for 
reinstatement for five years. This section provides that an excluded 
practitioner who intends to reapply for admission to practice before 
the Office must comply with the provisions of Sec.  11.58, and apply 
for reinstatement in accordance with Sec.  11.60. This section provides 
that failure to comply with the provisions of Sec.  11.58 constitutes 
grounds for denying an application for reinstatement.
    Section 11.28: Section 11.28 is added to provide procedures for 
addressing disciplinary proceedings involving an incapacitated 
practitioner. Section 11.28(a) provides a procedure for holding a 
disciplinary procedure in abeyance because of a practitioner's 
incapacitation due to a current disability or addiction. Under Sec.  
11.28(a)(1), in the course of a disciplinary proceeding, before the 
date set for a hearing, the practitioner may file a motion requesting 
the hearing officer to enter an order holding such proceeding in 
abeyance based on the contention that the practitioner is suffering 
from a disability or addiction that makes it impossible for the 
practitioner to adequately defend the charges in the disciplinary 
proceeding. The required content of the motion is set forth in Sec.  
11.28(a)(1)(i). The time for filing and serving the OED Director's 
response, and the content of the response are set forth in Sec.  
11.28(a)(1)(ii). Section 11.28(a)(2) provides a procedure for 
disposition of the practitioner's motion. Upon granting the 
practitioner's motion, the OED Director transfers the practitioner to 
disability inactive status and publishes notice. The order may provide 
that, in the case of addiction to drugs or intoxicants, the 
practitioner will not be returned to active status absent satisfaction 
of specified conditions. Upon receipt of the order, the OED Director 
transfers the practitioner to disability inactive status, gives notice 
to the practitioner, causes notice to be published, and gives notice to 
appropriate authorities in the Office that the practitioner has been 
placed on

[[Page 47658]]

disability inactive status. The practitioner is required to comply with 
the provisions of Sec.  11.58, and not engage in practice before the 
Office in patent, trademark and other non-patent law until a 
determination is made of the practitioner's capability to resume 
practice before the Office in a proceeding under Sec. Sec.  11.28(c) or 
11.28(d). A practitioner on disability inactive status must seek 
permission from the OED Director to seek employment authorized under 
Sec.  11.58(e). Permission will be granted only if the practitioner has 
complied with all the conditions of Sec. Sec.  11.58(a) through 
11.58(d) applicable to disability inactive status. In the event that 
permission is granted, the practitioner must fully comply with the 
provisions of Sec.  11.58(e).
    Section 11.28(b) provides a procedure whereby a practitioner 
transferred to disability inactive status in a disciplinary proceeding 
may move for reactivation once a year beginning at any time not less 
than one year after the initial effective date of inactivation, or once 
during any shorter interval provided by the order issued pursuant to 
Sec.  11.28(a)(2) or any modification thereof. If the motion is 
granted, the disciplinary proceeding is resumed under a schedule 
established by the hearing officer. Section 11.28(c) sets forth the 
content of the practitioner's motion for reactivation.
    Section 11.28(d) provides a procedure whereby the OED Director may 
move to terminate a prior order holding a pending disciplinary 
proceeding in abeyance and resume a disciplinary proceeding. The OED 
Director bears the burden of showing by clear and convincing evidence 
that the practitioner is able to defend himself or herself, and the 
hearing officer will hold an evidentiary hearing if there is any 
genuine issue as to one or more material facts.
    Section 11.28(e) provides for a hearing officer to take appropriate 
action if, in deciding a motion under Sec.  11.28(b) or Sec.  11.28(d), 
the hearing officer determines that there is good cause to believe the 
practitioner is not incapacitated from defending himself or herself, or 
is not incapacitated from practicing before the Office. The appropriate 
action may include entry of an order directing the reactivation of the 
practitioner and resumption of the disciplinary proceeding.
    Section 11.29: Section 11.29 is added to provide for reciprocal 
transfer or initial transfer to disability inactive status of 
practitioners. Section 11.29(a) provides for notification of the OED 
Director. Section 11.29(a)(1) addresses transfer to disability inactive 
status in another jurisdiction as grounds for reciprocal transfer by 
the Office. Within thirty days of being transferred to disability 
inactive status in another jurisdiction a practitioner subject to the 
disciplinary jurisdiction of the Office is required to notify the OED 
Director in writing of the transfer. Upon notification from any source 
that a practitioner subject to the disciplinary jurisdiction of the 
Office has been transferred to disability inactive status in another 
jurisdiction, the OED Director is required to obtain a certified copy 
of the order and file it with the USPTO Director together with a 
request that the practitioner be transferred to disability inactive 
status, including the specific grounds therefor, and a request that the 
USPTO Director issue a notice and order as set forth in Sec.  11.29(b).
    Section 11.29(a)(2) sets forth as grounds for initial transfer to 
disability inactive status, situations where a practitioner has been 
involuntarily committed, there is an adjudication of incompetency, or 
there is a court-ordered placement of a practitioner under guardianship 
or conservatorship. Within thirty days of being judicially declared 
incompetent, being judicially ordered to be involuntarily committed 
after a hearing on the grounds of incompetency or disability, or being 
placed by court order under guardianship or conservatorship in another 
jurisdiction, a practitioner subject to the disciplinary jurisdiction 
of the Office must notify the OED Director in writing of the transfer. 
Upon notification from any source that a practitioner subject to the 
disciplinary jurisdiction of the Office has been transferred to 
disability inactive status in another jurisdiction, the OED Director is 
required to obtain a certified copy of the order and file it with the 
USPTO Director along with the requests described in 11.29(a)(1).
    Section 11.29(b) provides for serving notice on a practitioner to 
show cause why transfer to disability inactive status should not occur. 
The OED Director issues the notice, comporting with Sec.  11.35, 
directed to the practitioner upon receiving the information and 
requests from the OED Director. The notice contains a copy of the order 
or declaration from the other jurisdiction. The notice also contains an 
order directing the practitioner to inform the USPTO Director and OED 
Director, within 30 days from the date of the notice, a) his or her 
response to the OED Director's request to transfer to disability status 
which shall establish any genuine issue of material fact supported by 
affidavit based on the grounds set forth in Sec.  11.29(d) (1) through 
(4) that the transfer to disability inactive status would be 
unwarranted and the reasons therefor.
    Section 11.29(c) addresses the effect of stay of transfer or of a 
stay of a judicially declared incompetence, judicially ordered 
involuntary commitment on the grounds of incompetency or disability, or 
court-ordered placement under guardianship or conservatorship. This 
section provides that in the event the transfer, judicially declared 
incompetence, judicially ordered involuntary commitment on the grounds 
of incompetency or disability, or court-ordered placement under 
guardianship or conservatorship in the other jurisdiction has been 
stayed, any reciprocal transfer or transfer by the Office may be 
deferred until the stay expires.
    Section 11.29(d) provides for a hearing and transfer to disability 
inactive status. The request for transfer to disability inactive status 
shall be heard by the USPTO Director on the documentary record unless 
the USPTO Director determines that there is a genuine issue of material 
fact, in which case the USPTO Director may deny the request. Upon the 
expiration of 30 days from the date of the notice pursuant to the 
provisions of Sec.  11.29(b), the USPTO Director shall consider any 
timely filed response and impose the identical transfer to disability 
inactive status unless the practitioner demonstrates by clear and 
convincing evidence and the USPTO Director finds there is a genuine 
issue of material fact by clear and convincing evidence that: (1) The 
procedure was so lacking in notice or opportunity to be heard as to 
constitute a deprivation of due process; (2) there was such infirmity 
of proof establishing the transfer to disability status, judicial 
declaration of incompetence, judicial order for involuntary commitment 
on the grounds of incompetency or disability, or placement by court 
order under guardianship or conservatorship that the USPTO Director 
could not, consistent with the Office's duty, accept as final the 
conclusion on that subject; (3) the imposition of the same disability 
status or transfer to disability status by the USPTO Director would 
result in grave injustice; or (4) the practitioner is not the 
individual transferred to disability status, judicially declared 
incompetent, judicially ordered for involuntary commitment on the 
grounds of incompetency or disability, or placed by court order under 
guardianship or conservatorship.
    One example that it would be a grave injustice to impose disability 
status or

[[Page 47659]]

transfer to disability status might be that the reason no longer exists 
for the original transfer to disability inactive status, judicial 
declaration of incompetence, judicial order to be involuntarily 
committed on the grounds of incompetency or disability, or placement by 
court order under guardianship or conservatorship. A further example 
would be that the practitioner was not the person transferred to 
disability inactive status, judicially declared incompetent, judicially 
ordered to be involuntarily committed on the grounds of incompetency or 
disability, or placed by court order under guardianship or 
conservatorship. If the USPTO Director determines that there is no 
genuine issue of material facts with regard to any of the elements of 
Sec. Sec.  11.29 (d)(1) through (4), the USPTO Director shall enter an 
appropriate final order. If the USPTO Director is unable to make that 
determination because there is a genuine issue of material fact, the 
USPTO Director shall enter an appropriate order dismissing the OED 
Director's request for such reason.
    Section 11.29(e) provides for the effect of adjudication in other 
jurisdictions. This section provides that in all other aspects, a final 
adjudication in another jurisdiction that a practitioner is transferred 
to disability inactive status, is judicially declared incompetent, is 
judicially ordered to be involuntarily committed on the grounds of 
incompetency or disability, or is placed by court order under 
guardianship or conservatorship establishes the disability for purposes 
of a reciprocal transfer to or transfer to disability status before the 
Office.
    Section 11.29(f) provides that a practitioner who is transferred to 
disability inactive status under this section shall be deemed to have 
been refused recognition to practice before the Office so that the 
agency's final order may be reviewed under 35 U.S.C. 32.
    Section 11.29(g) provides for an order imposing reciprocal transfer 
to disability inactive status or order imposing initial transfer to 
disability inactive status. Under this section, an order by the USPTO 
Director imposing reciprocal transfer to disability inactive status, or 
transferring a practitioner to disability inactive status is effective 
immediately for an indefinite period until further order of the USPTO 
Director. A copy of the order transferring a practitioner to disability 
inactive status is served upon the practitioner, the practitioner's 
guardian, and/or the director of the institution to which the 
practitioner has been committed in the manner the USPTO Director may 
direct. A practitioner reciprocally transferred or transferred to 
disability inactive status must comply with the provisions of Sec.  
11.58, and must not engage in practice before the Office in patent, 
trademark and other non-patent law unless and until reinstated to 
active status.
    Section 11.29(h) provides for confidentiality of the proceeding and 
that orders transferring a practitioner to disability status be public. 
Under Sec.  11.29(h)(1) all proceedings under Sec.  11.29 involving 
allegations of disability of a practitioner are kept confidential 
unless and until the USPTO Director enters an order reciprocally 
transferring or transferring the practitioner to disability inactive 
status. Under Sec.  11.29(h)(2), the OED Director must publicize any 
reciprocal transfer to disability inactive status or transfer to 
disability inactive status in the same manner as for the imposition of 
public discipline.
    Section 11.29(i) addresses activities provided for under Sec.  
11.58(e) of practitioners on disability inactive status. A practitioner 
on disability inactive status must seek permission from the OED 
Director to engage in an activity authorized under Sec.  11.58(e). 
Permission will be granted only if the practitioner has complied with 
all the conditions of Sec. Sec.  11.58(a) through 11.58(d) applicable 
to disability inactive status. In the event that permission is granted, 
the practitioner must fully comply with the provisions of Sec.  
11.58(e).
    Section 11.29(j) provides for reinstatement from disability 
inactive status. Section 11.29(j)(1) provides that no practitioner 
reciprocally transferred or transferred to disability inactive status 
under Sec.  11.29 may resume active status except by order of the OED 
Director. Section 11.29(j)(2) provides that a practitioner reciprocally 
transferred or transferred to disability inactive status is entitled to 
petition the OED Director for transfer to active status once a year, or 
at whatever shorter intervals the USPTO Director may direct in the 
order transferring or reciprocally transferring the practitioner to 
disability inactive status or any modification thereof. Section 
11.29(j)(3) provides that upon the filing of a petition for transfer to 
active status, the OED Director may take or direct whatever action is 
deemed necessary or proper to determine whether the incapacity has been 
removed, including a direction for an examination of the practitioner 
by qualified medical or psychological experts designated by the OED 
Director. The expense of the examination is paid and borne by the 
practitioner. Section 11.29(j)(4) provides that with the filing of a 
petition for reinstatement to active status, the practitioner will be 
required to disclose the name of each psychiatrist, psychologist, 
physician and hospital or other institution by whom or in which the 
practitioner has been examined or treated since the transfer to 
disability inactive status. The practitioner must furnish the OED 
Director with written consent for the release of information and 
records relating to the incapacity if requested by the OED Director. 
Section 11.29(j)(5) provides that the OED Director may direct that the 
practitioner establish proof of competence and learning in law, which 
proof may include passing the registration examination. Section 
11.29(j)(6) provides that the OED Director shall grant the petition for 
transfer to active status upon a showing by clear and convincing 
evidence that the incapacity has been removed. Section 11.29(j)(7) 
provides that if a practitioner reciprocally transferred to disability 
inactive status on the basis of a transfer to disability inactive 
status in another jurisdiction, the OED Director may dispense with 
further evidence that the disability has been removed and may 
immediately direct reinstatement to active status upon such terms as 
are deemed proper and advisable. Section 11.29(j)(8) provides that if a 
practitioner transferred to disability inactive status on the basis of 
a judicially declared incompetence, judicially ordered involuntary 
commitment on the grounds of incompetency or disability, or court-
ordered placement under guardianship or conservatorship has been 
declared to be competent, the OED Director may dispense with further 
evidence that the incapacity to practice law has been removed and may 
immediately direct reinstatement to active status.
    Sections 11.30 through 11.31: Sections 11.30 through 11.31 are 
reserved.
    Section 11.32: Section 11.32 is added to provide a procedure for 
instituting a disciplinary proceeding. Section 11.32, in essence, 
continues the provisions of former Sec.  10.132, except as noted in the 
following discussion. Section 11.32(a) authorizes the OED Director to 
convene a meeting of ``a panel of the Committee on Discipline,'' as 
opposed to a ``meeting of the Committee on Discipline'' provided for in 
former Sec.  10.132, and Sec.  11.32(a) provides that the meeting may 
be convened after an investigation is conducted and after complying, 
where necessary, with the provisions of 5 U.S.C. 558(c), if ``the OED 
Director is of the opinion that grounds exist for discipline under

[[Page 47660]]

Sec.  11.19(b)(3)-(5).'' The panel of the Committee then determines as 
specified in Sec.  11.23(b) whether a disciplinary proceeding shall be 
instituted.
    Section 11.33: Section 11.33 is reserved.
    Section 11.34: Section 11.34 is added to provide for the content 
and sufficiency of a complaint. Section 11.34, in essence, continues 
the provisions of former Sec.  10.134, except as noted in the following 
discussion. Section 11.34(a)(2) provides that the complaint must give a 
plain and concise description of the respondent's ``alleged grounds for 
discipline'' instead of the ``alleged violations of the Disciplinary 
Rules by the practitioner'' found in former Sec.  10.134(a)(2). Section 
11.34(a)(3) adds a provision that the complaint state the time ``not 
less than thirty days from the date the complaint is filed'' for 
respondent to file an answer.
    Section 11.34(b) provides that the complaint will be deemed 
sufficient if it fairly informs the respondent of ``any grounds for 
discipline, and where applicable, Mandatory Disciplinary Rules 
identified in Sec.  10.20(b) of Part 10 of this Subsection that form 
the basis for the disciplinary proceeding,'' whereas former Sec.  
10.134(b) provided that the complaint must fairly inform the respondent 
of ``any violation of the Disciplinary Rules which form the basis for 
the disciplinary proceeding.'' The reference to the Mandatory 
Disciplinary Rules of Part 10, instead of the imperative Rules of 
Professional Conduct, will obtain until such time as the Rules of 
Professional Conduct are adopted, at which time reference will be made 
to the imperative Rules of Professional Conduct. Section 11.34(c) adds 
a provision that ``[t]he complaint shall be filed in the manner 
prescribed by the USPTO Director.''
    Section 11.35: Section 11.35 is added to provide for service of the 
complaint. Section 11.35, in essence, continues the provisions of 
former Sec.  10.135, except as noted in the following discussion. 
Section 11.35(a)(2) provides for serving a complaint on a respondent by 
mailing a copy of the paper by ``other delivery service'' to 
respondent. The use of ``other delivery service that provides the 
ability to confirm delivery or attempted delivery,'' in addition to 
first class mail and ``Express Mail,'' recognizes additional delivery 
services not recognized when former Sec.  10.135 was adopted. Section 
11.35(a)(4) adds a provision for delivery of a complaint ``[i]n the 
case of a respondent who resides outside the United States, by sending 
a copy of the complaint by any delivery service that provides ability 
to confirm delivery or attempted delivery, to: (i) [a] respondent who 
is a registered practitioner at the address provided to OED pursuant to 
Sec.  11.11; or (ii) [a] respondent who is a nonregistered practitioner 
at the last address for the respondent known to the OED Director.'' 
Unlike the provision of former Sec.  10.135(b), Sec.  11.35 does not 
require a second attempt to serve the complaint by any one of the 
procedures in Sec.  11.35(a) before service is effected by publication. 
Section 11.35(b) provides for service by publication ``for two 
consecutive weeks,'' instead of the ``four consecutive weeks'' required 
by former Sec.  10.135(b), and the time for filing an answer is set at 
``thirty days from the second publication of the notice.'' Section 
11.35(b) also provides that ``[f]ailure to timely file an answer will 
constitute an admission of the allegations in the complaint in 
accordance with paragraph (d) of Sec.  11.36, and the hearing officer 
may enter an initial decision on default.'' Section 11.35(c), which 
addresses serving a copy of a complaint on the attorney known to 
represent a respondent, provides that service on the attorney is in 
lieu of service on the respondent in the manner provided for in 
sections 11.35(a) or (b).
    Section 11.35(b) provides a procedure for accomplishing service if 
a copy of the complaint cannot be delivered to the respondent through 
any one of the procedures in Sec.  11.35(a). In these circumstances, 
the OED Director serves the respondent by causing an appropriate notice 
to be published in the Official Gazette for two consecutive weeks, in 
which case, the time for filing an answer shall be thirty days from the 
second publication of the notice. Section 11.35(b) provides that 
failure to timely file an answer will constitute an admission of the 
allegations in the complaint in accordance with Sec.  11.36(d), and the 
hearing officer may enter an initial decision on default.
    Section 11.35(c) provides that if the respondent is known to the 
OED Director to be represented by an attorney under Sec.  11.40(a), a 
copy of the complaint is to be served on the attorney in lieu of the 
respondent in the manner provided for in Sec.  11.35(a) or Sec.  
11.35(b).
    Section 11.36: Section 11.36 is added to provide for the 
respondent's answer to a complaint. Section 11.36, in essence, 
continues the provisions of former Sec.  10.136, except as noted in the 
following discussion. Section 11.36(a) provides that the minimum thirty 
days for filing an answer runs ``from the date the complaint is 
filed.''
    In Sec.  11.36(b), the first sentence provides that when filing the 
answer with the hearing officer, it is to be filed ``at the address 
specified in the complaint.'' In Sec.  11.36(c), the third sentence 
requires respondent to state affirmatively any intent to raise a 
disability as a mitigating factor. The last three sentences in Sec.  
11.36(c) provide: that ``if respondent intends to raise a special 
matter of defense or disability, the answer shall specify the defense 
or disability, its nexus to the misconduct, and the reason it provides 
a defense or mitigation''; that ``a respondent who fails to do so 
cannot rely on a special matter of defense or disability''; and that 
``the hearing officer may, for good cause, allow the respondent to file 
the statement late, grant additional hearing preparation time, or make 
other appropriate orders.'' Disability, such as mental disability or 
chemical dependency, including alcoholism or drug abuse, would be a 
mitigating factor only if the respondent practitioner makes an adequate 
showing of nexus and mitigation. Such a showing would be expected to 
include (1) medical evidence that the practitioner is affected by a 
chemical dependency or mental disability; (2) evidence that the 
chemical dependency or mental disability substantially caused the 
misconduct; (3) the practitioner's recovery from the chemical 
dependency or mental disability is demonstrated by a meaningful and 
sustained period of successful rehabilitation; (4) the recovery 
arrested the misconduct; and (5) recurrence of the misconduct is 
unlikely. These are substantially the same standards as those set forth 
Section 9.32(i) of the American Bar Association Standards for Imposing 
Lawyer Sanctions (1992). Section 11.36(d) provides that the hearing 
officer need receive no further evidence with respect to an allegation 
that is not denied by a respondent in the answer inasmuch as the 
allegation is deemed to be admitted and may be considered proven. 
Section 11.36(e) provides for entry of a default judgment if an answer 
is not timely filed.
    Section 11.37: Section 11.37 is reserved.
    Section 11.38: Section 11.38 is added to provide for a contested 
case. Section 11.38, in essence, continues the provisions of former 
Sec.  10.138.
    Section 11.39: Section 11.39 is added to provide for a hearing 
officer, the appointment and responsibilities of the hearing officer, 
and review of a hearing officer's interlocutory orders and stays. 
Section 11.39, in essence, continues the provisions of former Sec.  
10.139, except as noted in the following discussion. Section 11.39(a), 
in addition to providing for the appointment of a

[[Page 47661]]

hearing officer by the USPTO Director under 5 U.S.C. 3105, also 
provides for a hearing officer appointed under 35 U.S.C. 32. The 
hearing officer conducts the disciplinary proceedings.
    Section 11.39(b) provides that the hearing officer be independent 
of improper influence by requiring that the officer ``not be subject to 
first level or second level supervision by the USPTO Director or his or 
her designee,'' ``not be subject to supervision of the person(s) 
investigating or prosecuting the case,'' ``not be an individual who has 
participated in any manner in the decision to initiate the 
proceedings,'' and ``not have been employed under the immediate 
supervision of the practitioner.'' The hearing officer must be admitted 
to practice law and have suitable experience and training to conduct 
the hearing, reach a determination, and render an initial decision in 
an equitable manner. Section 11.39(b)(11) authorizes the hearing 
officer to impose against a party any of the sanctions provided in Rule 
37(b)(2) of the Federal Rules of Civil Procedure in the event that said 
party or any attorney, agent or designated witness of that party fails 
to comply with a protective order made pursuant to Sec.  11.44(c).
    Section 11.39(c)(8) provides that the hearing officer has authority 
to adopt procedures and modify procedures for the orderly disposition 
of proceedings and sets forth a hearing officer's responsibilities. 
Section 11.39(c)(10) provides that the hearing officer has authority to 
promote not only the efficient and timely conduct of a disciplinary 
proceeding, but also to promote the impartiality of the proceeding.
    Section 11.39(d) provides for the hearing officer issuing an 
initial decision ``normally* * * within nine months of the date a 
complaint is filed,'' instead of the six-month period used in former 
Sec.  10.139(c). Section 11.39(d) provides for the initial decision 
issuing more than nine months after a complaint in the same 
circumstances contemplated by former Sec.  10.139(c).
    Section 11.39(f) provides that if the OED Director or a respondent 
seeks review of an interlocutory order of a hearing officer under Sec.  
11.39(b)(2), any time period set by the hearing officer for taking 
action shall not be stayed unless ordered by the USPTO Director or the 
hearing officer. The language appearing in proposed Sec.  11.39(f), 
``any time period set by the hearing officer for taking action shall 
not be stayed'' has been changed to ``any time period set by the 
hearing officer for taking action shall not be stayed.'' The hearing 
officer sets times for the OED Director and respondent to act under 
Sec. Sec.  11.39(c)(5) and (c)(8), but not for the hearing officer to 
act. Accordingly, the language was changed sua sponte to conform to the 
hearing officer's recited responsibilities.
    Section 11.39(g) prohibits the hearing officer from engaging in ex 
parte discussions with any party on the merits of the complaint, 
beginning with appointment and ending when the final agency decision is 
issued.
     Section 11.40 is added to provide for representation of the 
respondent and the OED Director. Section 11.40(a), in essence, 
continues the provisions of former Sec.  10.140(a). Section 11.40(b) 
provides for the OED Director to be represented by the Deputy General 
Counsel for Intellectual Property and Solicitor, and attorneys in the 
Office of the Solicitor. The attorneys representing the OED Director in 
disciplinary proceedings must not consult with the USPTO Director, the 
General Counsel, or the Deputy General Counsel for General Law 
regarding the proceeding. The General Counsel and the Deputy General 
Counsel for General Law must remain screened from the investigation and 
prosecution of all disciplinary proceedings in order that they be 
available as counsel to the USPTO Director in deciding disciplinary 
proceedings, unless access is appropriate to perform their duties. 
After a final decision is entered in a disciplinary proceeding, the OED 
Director and attorneys representing the OED Director shall be available 
to counsel the USPTO Director, the General Counsel, and the Deputy 
General Counsel for General Law in any further proceedings, for 
example, as they arise in a United States District Court or the United 
States Court of Appeals for the Federal Circuit.
    Section 11.41: Section 11.41 is added to provide for filing of 
papers. Section 11.41, in essence, continues the provisions of former 
Sec.  10.141 except as noted in the following discussion. The first 
sentence of Sec.  11.41(a) provides that the provisions of not only 
Sec.  1.8, but also Sec.  2.197, do not apply to disciplinary 
proceedings. The first sentence of former Sec.  10.141 has been moved 
to be the second sentence of Sec.  11.41(a). Section 11.41(b) provides 
that all papers filed after entry of an initial decision by the hearing 
officer are to be filed with the USPTO Director and that a copy of the 
paper shall be served on the OED Director. The provision of former 
Sec.  10.141(c) has been moved to be the third sentence of Sec.  
11.41(b).
    Section 11.42: Section 11.42 is added to provide for service of 
papers other than a complaint in a disciplinary proceeding. Section 
11.42, in essence, continues the provisions of former Sec.  10.142 
except as noted in the following discussion. Sections 11.42(a)(2) and 
11.42(b)(2) provide for serving a paper on the respondent's attorney, 
or upon a respondent who is not represented, by mailing a copy of the 
paper by ``other delivery service'' to the attorney or the respondent. 
The use of ``other delivery service,'' in addition to first class mail 
and ``Express Mail,'' recognizes additional delivery services not 
recognized when former Sec.  10.142 was adopted. Similarly, Sec.  
11.42(c)(2) provides for the respondent serving a paper on the 
representative of the OED Director by mailing a copy by ``other 
delivery service.''
    Section 11.43: Section 11.43 is added to provide for motions. In 
essence, Sec.  11.43 continues the provisions of former Sec.  10.143.
    Section 11.44: Section 11.44 is added to provide for hearings in 
disciplinary proceedings. Except as noted in the following discussion, 
Sec.  11.44, in essence, continues the provisions of former Sec.  
10.144. The third sentence of Sec.  11.44(a) provides that the hearing 
officer will set the time and place for the hearing. In doing so, the 
hearing officer should normally give preference to a Federal facility 
in the district where the Office's principal office is located or 
Washington, DC, inasmuch as the practitioner is practicing before the 
Office. Nevertheless, the hearing officer should also give due regard 
to the convenience and needs of the parties, witnesses, or their 
representatives. The fifth sentence of Sec.  11.44(a) provides that in 
cases involving an incarcerated respondent, any necessary oral hearing 
may be held at the location of incarceration. The seventh sentence of 
Sec.  11.44(a) provides that the hearing be conducted as if the 
proceeding were subject to 5 U.S.C. 556. In some instances, such as 
when the OED Director and respondent reach a settlement, an oral 
hearing is unnecessary, and therefore, no oral hearing is conducted. 
The eighth sentence of Sec.  11.44(a) provides that a copy of the 
transcript shall be provided to the OED Director and the respondent at 
the expense of the Office.
    Section 11.44(b) provides that when the respondent to a 
disciplinary proceeding fails to appear at the hearing after a notice 
of hearing has been given by the hearing officer, the hearing officer 
may deem the respondent to have waived the right to a hearing and may 
proceed with the hearing in the absence of the respondent.
    Section 11.44(c) provides that a hearing under this section will 
not be

[[Page 47662]]

open to the public except that the hearing officer may grant a request 
by a respondent to open his or her hearing to the public and make the 
record of the disciplinary proceeding available for public inspection, 
provided, a protective order is entered to exclude from public 
disclosure information which is privileged or confidential under 
applicable laws or regulations.
    Section 11.45: Section 11.45 is added to provide for amendment of 
pleadings. This section permits the OED Director to amend the complaint 
to include additional charges with the authorization of the hearing 
officer, but without authorization from the Committee on Discipline. 
The amended charges may be based upon conduct committed before or after 
the complaint was filed. If amendment of the complaint is authorized, 
the hearing officer must authorize amendment of the answer. To avoid 
prejudice by the amendments to any party, reasonable opportunity is 
given to meet the allegations in the complaint or answer as amended, 
and the hearing officer makes findings on any issue presented by the 
complaint or answer as amended.
    Sections 11.46-11.48: Sections 11.46-11.48 are reserved.
    Section 11.49: Section 11.49 is added to provide each party's 
burden of proof. This section, in essence, continues the provisions of 
former Sec.  10.149.
    Section 11.50: Section 11.50 is added to provide for applicable 
rules of evidence. This section, in essence, continues the provisions 
of former Sec.  10.150.
    Section 11.50(c), which provides for discovery of government 
documents, in essence, continues the provisions for former Sec.  
10.150(c) and further specifies that the discovery ``include[es], but 
[is] not limited to, all papers in the file of a disciplinary 
investigation,'' which are admissible without extrinsic evidence of 
authenticity.
    Section 11.51: Section 11.51 is added to provide for the use of 
depositions. Except as noted in the following discussion, Sec.  11.51, 
in essence, continues the provisions of former Sec.  10.151. The last 
sentence in Sec.  11.51(a), ``[d]epositions may not be taken to obtain 
discovery, except as provided for in paragraph (b) of this section,'' 
is not found in former Sec.  10.151, and has been added to Sec.  
11.51(a) to preclude the use of depositions to obtain discovery that 
the hearing officer has not authorized.
    Section 11.52: Section 11.52 provides for discovery. Except as 
noted in the following discussion, Sec.  11.52, in essence, continues 
the provisions of former Sec.  10.152. Section 11.52, like former Sec.  
10.152, requires a party to establish that discovery is reasonable and 
relevant. However, Sec.  11.52 does not specify that the party seeking 
discovery must do so ``in a clear and convincing manner.'' It is 
sufficient that the party establish that discovery is reasonable and 
relevant. Section 11.52(b)(1), unlike former Sec.  10.152(b), does not 
prohibit reasonable and relevant discovery that will be used solely for 
cross-examination.
    Section 11.53: Section 11.53, which provides for proposed findings 
and conclusions as well as post-hearing memorandum, in essence 
continues the provisions of former Sec.  10.153.
    Section 11.54: Section 11.54 provides for proposed findings and 
conclusions as well as post-hearing memoranda. Except as noted in the 
following discussion, Sec.  11.54, in essence, continues the provisions 
of former Sec.  10.154. To codify long-standing practice, Sec.  
11.54(a)(2) adds a provision specifically referencing inclusion of ``an 
order of default judgment'' in the decision, and for the hearing 
officer to transmit the entire record to the OED Director after issuing 
the decision. To improve efficiencies, Sec.  11.52(a)(2) provides for 
the hearing officer to transmit a copy of the decision to the OED 
Director, instead of transmitting copies to both the OED Director and 
the OED Director's representative. To conform with the inclusion of 
``an order of default judgment'' in the decision, the last sentence of 
Sec.  11.52(a)(2) also provides that in the absence of an appeal to the 
USPTO Director, the decision of the hearing officer, including a 
default judgment, will, without further proceedings, become the 
decision of the USPTO Director thirty days from the date of the 
decision of the hearing officer. Section 11.54(b) provides that in 
determining any sanction after a finding that a practitioner has 
violated a ground for discipline, the following four factors must be 
considered if they are applicable: (1) Whether the practitioner has 
violated a duty owed to a client, to the public, to the legal system, 
or to the profession; (2) whether the practitioner acted intentionally, 
knowingly, or negligently; (3) the amount of the actual or potential 
injury caused by the practitioner's misconduct; and (4) the existence 
of any aggravating or mitigating factors.
    Section 11.55: Section 11.55 is added to provide a procedure for 
appealing a decision to the USPTO Director. While Sec.  11.55, in 
essence, continues a number of the provisions of former Sec.  10.155, 
numerous provisions have been added to clarify and codify procedures. 
For example, beginning with the second sentence, Sec.  11.55(a) 
provides: that the ``appeal shall include the appellant's brief;'' that 
``[i]f more than one appeal is filed, the party who files the appeal 
first is the appellant for purpose of this rule;'' ``[i]f appeals are 
filed on the same day, the respondent is the appellant;'' ``[i]f an 
appeal is filed, then the OED Director shall transmit the entire record 
to the USPTO Director;'' that ``[a]ny cross-appeal shall be filed 
within fourteen days after the date of service of the appeal pursuant 
to Sec.  11.42, or thirty days after the date of the initial decision 
of the hearing officer, whichever is later;'' that ``[t]he cross-appeal 
shall include the cross-appellant's brief;'' that ``[a]ny appellee or 
cross-appellee brief must be filed within thirty days after the date of 
service pursuant to Sec.  11.42 of an appeal or cross-appeal;'' and 
that ``[a]ny reply brief must be filed within fourteen days after the 
date of service of any appellee or cross-appellee brief.''
    Section 11.55(b) provides that an appeal or cross-appeal must 
include exceptions to the decisions of the hearing officer and 
supporting reasons for those exceptions, and that any exception not 
raised will be deemed to have been waived and will be disregarded by 
the USPTO Director in reviewing the initial decision.
    Section 11.55(c) provides specific information regarding where 
briefs are filed, the content and arrangement of briefs, and paper 
size. Section 11.55(d) sets page limit lengths for briefs, as well as 
other requirements. Section 11.55(e) provides that the USPTO Director 
may refuse entry of a nonconforming brief. Section 11.55(g) proscribes 
filing further briefs or motions unless permitted by the USPTO 
Director. Section 11.55(i) provides that in the absence of an appeal by 
the OED Director, failure by the respondent to appeal under the 
provisions of this section shall be deemed to be both acceptance by the 
respondent of the initial decision and waiver by the respondent of the 
right to further administrative or judicial review.
    Section 11.56: Section 11.56 is added to provide for a decision of 
the USPTO Director. Section 11.56, in essence, continues the provisions 
of former Sec.  10.156, except as noted in the following discussion. 
The second sentence of Sec.  11.56(a) provides that the USPTO Director 
may, in addition to affirming, reversing or modifying the initial 
decision of the hearing officer, ``remand the matter to the hearing 
officer for such further proceedings as the USPTO Director may deem 
appropriate.''
    Section 11.56(b) provides that the final decision of the USPTO 
Director

[[Page 47663]]

may, in addition to the actions authorized in former Sec.  10.156(b), 
reverse or modify the initial decision. This section also provides that 
a ``final decision suspending or excluding a practitioner shall require 
compliance with the provisions of Sec.  11.58;'' and that the ``final 
decision may also condition the reinstatement of the practitioner upon 
a showing that the practitioner has taken steps to correct or mitigate 
the matter forming the basis of the action, or to prevent recurrence of 
the same or similar conduct.''
    Section 11.56(c) adds several provisions not set forth in former 
Sec.  10.156. The respondent and the OED Director are limited to making 
a single request for reconsideration or modification of the decision by 
the USPTO Director, and the request must be filed within twenty days 
from the date of entry of the decision. No request for reconsideration 
or modification will be granted unless the request is based on newly 
discovered evidence or error of law or fact, and the requester must 
demonstrate that any newly discovered evidence could not have been 
discovered any earlier by due diligence. The request has the effect of 
staying the effective date of the order of discipline in the final 
decision. The decision by the USPTO Director is effective on its date 
of entry.
    Section 11.57: Section 11.57 is added to provide for review of the 
final decision of the USPTO Director. Section 11.57, in essence, 
continues the provisions of former Sec.  10.157, except as noted in the 
following discussion. Section 11.57(a) provides that review of final 
decisions of the USPTO Director is available by petition filed in the 
United States District Court for the District of Columbia in accordance 
with the court's local rule. Section 11.57(a) draws the practitioner's 
attention to the necessity of serving the USPTO Director and complying 
with service requirements of Rule 4 of the Federal Rules of Civil 
Procedure and 37 CFR 104.2.
    Section 11.57(b), unlike former Sec.  10.156(b), provides that 
except for a request for reconsideration in Sec.  11.56(c), ``an order 
for discipline in a final decision will not be stayed except on proof 
of exceptional circumstances.''
    Section 11.58: Section 11.58 is added to set forth the duties of a 
disciplined or resigned practitioner. Section 11.58, in essence, 
continues the provisions of former Sec.  10.158, except as noted in the 
following discussion. Section 11.58, in addition to referring to a 
practitioner who is excluded or suspended, also refers to practitioners 
who have resigned. Practitioners who resign are those addressed in 
Sec.  11.11(e). Section 11.58(a) provides that an excluded, suspended 
or resigned practitioner will not be automatically reinstated at the 
end of his or her period of exclusion or suspension, that they must 
comply with the provisions of this section and Sec. Sec.  11.12 and 
11.60 to be reinstated, and that failure to comply with the provisions 
of this section may constitute both grounds for denying reinstatement 
or readmission and be cause for further action, including seeking 
further exclusion, suspension, and for revocation of any pending 
probation.
    Section 11.58(b)(1)(i) requires the practitioner to file, within 
thirty days after the date of entry of the order of exclusion, 
suspension, or acceptance of resignation, a notice of withdrawal as of 
the effective date of the exclusion, suspension or acceptance of 
resignation in each pending patent and trademark application, each 
pending reexamination and interference proceeding, and every other 
matter pending in the Office, together with a copy of the notices sent 
pursuant to sections 11.58(b) and 11.58(c).
    Section 11.58(b)(1)(iii) requires that the practitioner give notice 
to state and Federal jurisdictions and administrative agencies to which 
the practitioner is admitted to practice and clients ``of the 
practitioner's consequent inability to act as a practitioner after the 
effective date of the order; and that, if not represented by another 
practitioner, the client should act promptly to substitute another 
practitioner, or to seek legal advice elsewhere, calling attention to 
any urgency arising from the circumstances of the case.'' Section 
11.58(b)(1)(iii) requires practitioners to ``provide notice to the 
practitioner(s) for all opposing parties (or, to the parties in the 
absence of a practitioner representing the parties) in matters pending 
before the Office of the practitioner's exclusion, suspension or 
resignation and, that as a consequence, the practitioner is 
disqualified from acting as a practitioner regarding matters before the 
Office after the effective date of the suspension, exclusion or 
resignation, and state in the notice the mailing address of each client 
of the excluded, suspended or resigned practitioner who is a party in 
the pending matter.''
    Section 11.58(b)(1)(iv) requires the practitioners to ``deliver to 
all clients having immediate or prospective business before the Office 
in patent, trademark or other non-patent matters any papers or other 
property to which the clients are entitled, or shall notify the clients 
and any co-practitioner of a suitable time and place where the papers 
and other property may be obtained, calling attention to any urgency 
for obtaining the papers or other property.''
    Section 11.58(b)(1)(v) requires practitioners to ``relinquish to 
the client, or other practitioner designated by the client, all funds 
for practice before the Office, including any legal fees paid in 
advance that have not been earned and any advanced costs not 
expended.''
    Section 11.58(b)(1)(vii) requires practitioners to ``serve all 
notices required by paragraphs (b)(1)(ii) and (b)(1)(iii) of this 
section by certified mail, return receipt requested, unless mailed 
abroad. If mailed abroad, all notices shall be served with a receipt to 
be signed and returned to the practitioner.''
    Section 11.58(b)(2) provides that within forty-five days after 
entry of the order of suspension, exclusion, or of acceptance of 
resignation, the practitioner must file with the OED Director an 
affidavit of compliance certifying that the practitioner has fully 
complied with the provisions of the order, Sec.  11.58, and with 
Mandatory Disciplinary Rules identified in Sec.  10.20(b) of Part 10 
for withdrawal from representation. Appended to the affidavit of 
compliance must be copies of specified documents, a schedule regarding 
bank accounts in which the practitioner holds or held as of the entry 
date of the order any client, trust, or fiduciary funds for practice 
before the Office, a schedule describing the practitioner's disposition 
of all client and fiduciary funds for practice before the Office, proof 
of proper distribution of the funds and closing of the accounts, a list 
of all other state, Federal and administrative jurisdictions to which 
the practitioner is admitted to practice, and an affidavit providing 
information specified in Sec.  11.58(b)(2)(vi).
    Section 11.58(c) provides that after entry of the order of 
exclusion or suspension, or acceptance of resignation, the practitioner 
is proscribed from accepting any new retainer regarding immediate or 
prospective business before the Office, or engaging as a practitioner 
for another in any new case or legal matter regarding practice before 
the Office. The practitioner will be granted limited recognition for a 
period of thirty days. During the thirty-day period of limited 
recognition, the practitioner is to conclude work on behalf of a client 
on any matters that were pending before the Office on the date of entry 
of the order of exclusion or suspension, or acceptance of resignation. 
If such work cannot be concluded, the practitioner must so advise the 
client so that the client may make other arrangements.

[[Page 47664]]

    Section 11.58(d) requires the practitioner to keep and maintain 
records of the various steps taken under Sec.  11.58 so that proof of 
compliance with this section and with the exclusion or suspension order 
will be available in any subsequent proceeding. The OED Director will 
require the practitioner to submit such proof as a condition precedent 
to the granting of any petition for reinstatement.
    Section 11.58(e) continues the practice under former Sec.  
10.158(c) for an excluded and suspended practitioner to act as a 
paralegal for another practitioner, and extending the practice to 
resigned practitioners and practitioners on disability inactive status.
    Section 11.58(f) continues the practice under former Sec.  
10.158(d) proscribing reinstatement of excluded and suspended 
practitioners who act as a paralegal or perform services under Sec.  
11.58(e) unless they satisfy specified conditions, and extends the 
practice to resigned practitioners and practitioners on disability 
inactive status.
    Section 11.59: Section 11.59 is added to improve information 
dissemination to protect the public from disciplined practitioners. 
Section 11.59(a) provides for informing the public of the disposition 
of each matter in which public discipline has been imposed and of any 
other changes in a practitioner's registration status. Public 
discipline is identified as exclusion, including exclusion on consent, 
suspension, and public reprimand. In the usual circumstances, the OED 
Director would give notice of public discipline and the reasons for the 
discipline to disciplinary enforcement agencies in the state where the 
practitioner is admitted practice, to courts where the practitioner is 
known to be admitted, and the public. The final decision of the USPTO 
Director would be published if public discipline is imposed. A redacted 
version of the final decision would be published if a private reprimand 
is imposed. Changes in status, such as suspended, excluded, or 
disability inactive status, would also be published.
    Section 11.59(b) provides that the OED Director's records of every 
disciplinary proceeding where a practitioner is reprimanded, suspended, 
or excluded, including when said sanction is imposed by default 
judgment, shall be made available to the public upon written request, 
unless the USPTO Director orders that the proceeding or a portion of 
the record be kept confidential. This section further provides that 
information may be withheld as necessary to protect the privacy of 
third parties or as directed in a protective order issued pursuant to 
Sec.  11.44(c). This section also provides that the record of a 
proceeding that results in a practitioner's transfer to disability 
inactive status shall not be available to the public.
    Section 11.59(c) provides that an order excluding a practitioner on 
consent under Sec.  11.27 and the affidavit required under paragraph 
(a) of Sec.  11.27 shall be available to the public unless the USPTO 
Director orders that the proceeding or a portion of the record be kept 
confidential. The section also provides that information in the order 
and affidavit may be withheld as necessary to protect the privacy of 
third parties or as directed in a protective order under Sec.  
11.44(c)(2). This section also provides that the affidavit required 
under Sec.  11.27(a) shall not be used in any other proceeding except 
by order of the USPTO Director or upon written consent of the 
practitioner.
    Section 11.60: Section 11.60 is added to address petitions for 
reinstatement by excluded, suspended or resigned practitioners. Section 
11.60 continues the practices of former Sec.  10.160, except as noted 
in the following discussion. In addition to referencing suspended and 
excluded practitioners throughout the section, as did former Sec.  
10.160, Sec.  11.60 also specifically references and applies the 
provisions to a resigned practitioner. Section 11.60(a) prohibits the 
practitioners from resuming the practice of patent, trademark, or other 
non-patent law before the Office until reinstated by order of the OED 
Director or the USPTO Director.
    Section 11.60(b) provides that excluded or suspended practitioners 
are eligible to apply for reinstatement only upon expiration of the 
period of suspension or exclusion and the practitioner's full 
compliance with Sec.  11.58. An excluded practitioner can be eligible 
to apply for reinstatement no earlier than at least five years from the 
effective date of the exclusion. The section also provides that a 
resigned practitioner can be eligible to petition for reinstatement and 
must show compliance with Sec.  11.58 no earlier than at least five 
years from the date the practitioner's resignation is accepted and an 
order is entered excluding the practitioner on consent.
    Section 11.60(c) provides for filing a petition for reinstatement 
with the OED Director accompanied by the fee required by Sec.  
1.21(a)(10). A practitioner who has violated any provision of Sec.  
11.58 is not eligible for reinstatement until a continuous period of 
the time in compliance with Sec.  11.58 that is equal to the period of 
suspension or exclusion has elapsed. A resigned practitioner is not 
eligible for reinstatement until compliance with Sec.  11.58 is shown. 
If a practitioner who is not eligible for reinstatement files a 
petition, or if the petition is insufficient or defective on its face, 
the OED Director may dismiss the petition. Otherwise the OED Director 
considers the petition for reinstatement. The practitioner seeking 
reinstatement has the burden of proof by clear and convincing evidence. 
The evidence must be included in or accompany the petition. The 
evidence must establish: that the practitioner has the good moral 
character and reputation, competency, and learning in law required 
under Sec.  11.7 for admission; that resumption of practice before the 
Office will not be detrimental to the administration of justice or 
subversive to the public interest; and that the practitioner has 
complied with the provisions of Sec.  11.58 for the full period of the 
suspension, or at least five years if the practitioner resigned or was 
excluded.
    Section 11.60(d)(1) provides for the OED Director to grant a 
petition for reinstatement where the practitioner has complied with 
Sec. Sec.  11.60(c)(1) through (c)(3) by entering an order for 
reinstatement conditioned on payment of the costs of the disciplinary 
proceeding to the extent set forth in Sec.  11.60(d)(2). Section 
11.60(d)(3) provides for granting relief, in whole or part, from an 
order assessing costs on grounds of hardship, special circumstances, or 
other good cause. Good cause may include, for example, the disciplinary 
proceeding costs in excess of $1,500 incurred by the practitioner were 
not anticipated because the disciplinary proceeding began before the 
effective date of these rules and concluded thereafter. Under the old 
rules, the maximum cost that could be recovered was $1,500.
    Section 11.60(e) provides that where the OED Director finds the 
practitioner is unfit to resume the practice of patent law before the 
Office, the practitioner is first provided with an opportunity to show 
cause in writing why the petition should not be denied. If unpersuaded 
by the practitioner's showing, the OED Director must deny the petition. 
The OED Director may require the practitioner, in meeting the 
requirements of Sec.  11.7, to take and pass an examination under Sec.  
11.7(b), ethics courses, and/or the Multistate Professional 
Responsibility Examination. The OED Director must provide findings, 
together with the record. The findings must include specified 
information regarding ``Prior Proceedings.''

[[Page 47665]]

    Section 11.60(f) provides for resubmission of petitions for 
reinstatement if a petition for reinstatement is denied. A petition for 
reinstatement may not be resubmitted until the expiration of at least 
one year following the denial unless the order of denial provides 
otherwise.
    Section 11.61: Section 11.61 is added to provide savings clauses 
and continues the current practice under former Sec.  10.161, except as 
discussed below. Section 11.61(c) provides that sections 11.24, 11.25, 
11.28 and 11.34 through 11.57 apply to all proceedings in which the 
complaint is filed on or after the effective date of these regulations. 
Section 11.61(c) also provides that Sec. Sec.  11.26 and 11.27 apply to 
matters pending on or after the effective date of these regulations. 
Section 11.61(d) provides that sections 11.58 through 11.60 apply to 
all cases in which an order of suspension or exclusion is entered or 
resignation is accepted on or after the effective date of these 
regulations.
    Sections 11.62--11.99. Sections 11.62-11.99 are reserved.
    Section 41.5: Section 41.5(e) would be revised to change a cross-
reference to Sec.  11.22.
    Response to comments: The Office published a notice proposing 
changes to the Office's rules governing disciplinary proceedings for 
attorneys, registered patent agents and persons granted limited 
recognition to practice before the Office. See Changes to 
Representation of Others Before the United States Patent and Trademark 
Office; Notice of proposed rule making, 68 FR 69442 (Dec. 12, 2003), 
1278 Off. Gaz. Pat. Office 22 (Jan. 6, 2004) (proposed rule). The 
Office received one hundred forty-seven comments (from intellectual 
property organizations and patent practitioners) in response to this 
notice. The Office thereafter published a supplemental notice of 
proposed rule making for the rules governing disciplinary proceedings. 
See Changes to Representation of Others Before The United States Patent 
and Trademark Office, Supplemental Notice of Proposed Rule Making, 72 
FR 9196 (Feb. 28, 2007), 1316 Off. Gaz. Pat. Office 123 (Mar. 27, 2007) 
(supplemental proposed rule). The Office received fourteen comments 
(from intellectual property organizations and patent practitioners) in 
response to this notice. The Office's responses to the comments follow:
    Comment 1: Two comments suggested that the word ``add'' in the 
instructions for the amendment to Sec.  11.1 be changed to ``revise'' 
inasmuch as a definition of ``State'' was contained in the section in 
the rules adopted June 24, 2004.
    Response: The suggestion in the comment has been adopted.
    Comment 2: A comment inquired as to the meaning of ``other 
proceedings'' in Sec.  11.2(c), and suggested that the rule either 
permit the Director to stay other proceedings or to stay the 
proceedings based on good and sufficient reasons presented by a 
prospective registrant in a petition.
    Response: The suggestion has not been adopted. This section, like 
Sec.  1.181(f), makes clear that the filing of a petition does not 
operate to stay any other proceeding. Thus, a petition by an applicant 
for registration who has paid the $1600 application fee and is seeking 
review of the decision requiring the payment, would not stay another 
proceeding in the Office regarding the same applicant, such as the 
processing of the individual's application to take the registration 
examination. No rule is believed necessary to enable the OED Director, 
where appropriate, to coordinate other proceedings within the OED 
Director's jurisdiction.
    Comment 3: Two comments suggested that clarification is required 
regarding whether a fee is needed for a petition under Sec.  11.2(e).
    Response: No clarification is believed necessary. Section 11.2(e) 
does not provide for or otherwise refer to a fee to invoke the 
supervisory authority of the USPTO Director in appropriate 
circumstances in a disciplinary matter. Therefore, no fee for the 
petition is required in disciplinary matters.
    Comment 4: One comment, after noting that Sec.  11.3 as revised to 
eliminate a prohibition against petitioning to waive a disciplinary 
rule and the explanation for the revision, suggested the elimination of 
provisions in Sec.  11.3 for suspensions of the rules.
    Response: The disciplinary rules containing the ethical standards 
of practice for practitioners will be only one of several subjects 
addressed in Part 11. Part 11 currently includes, inter alia, rules 
addressing registration to practice, rules addressing investigations 
and rules for disciplinary procedures. Section 11.3 in Part 11, like 
Sec.  1.183 in Part 1, provides both a procedure for requesting 
suspension of a rule, and a standard upon which the decision is made.
    Comment 5: A comment noted that Sec.  11.3 no longer provides 
immunity for complainants, witnesses, and disciplinary counsel, that 
the lack of immunity is contrary to longstanding policy found in Rule 
12 of the Model Rules of Lawyer Disciplinary Enforcement for the 
reasons explained in the Commentary to Rule 12, and recommended that 
this section provide absolute immunity for complainants, witnesses and 
OED personnel.
    Response: While we appreciate the provisions of Rule 12 of the 
Model Rules of Lawyer Disciplinary Enforcement and the expressed 
reasons for providing immunity, it is beyond the authority of the USPTO 
Director to provide immunity by rule. For example, as discussed below 
regarding Sec.  11.18, all persons filing written communications with 
the Office, including complainants, are subject to the provisions of 18 
U.S.C. 1001. The Office cannot provide complainants with immunity from 
violation of a criminal law.
    Comment 6: One comment observed that the first sentence of Sec.  
11.5 could be construed to imply that preparation and prosecution 
privileges do not encompass practice before the Board of Patent Appeals 
and Interferences inasmuch as an ex parte proceeding before the Board 
arguably is not prosecution of a patent application. The comment 
suggested revising the language to read ``including representing 
applicants in patent matters before the Board of Patent Appeals and 
Interferences.''
    Response: The suggestion to revise Sec.  11.5(a) is adopted in 
part. In the first sentence, the word ``applications'' has been changed 
to ``matters,'' and the sentence now provides for keeping a register of 
the names of attorneys and agents who are ``recognized as entitled to 
represent applicants having prospective or immediate business before 
the Office in the preparation and prosecution of patent matters.'' The 
change is inclusive of representing applicants before the Board of 
Patent Appeals and Interferences in a patent matter.
    Comment 7: Two comments suggested that ``or retaining'' be added 
after ``employing'' in the last sentence of Sec.  11.5(b). One comment 
pointed out that the addition conforms to Rule 5.3(a) of the American 
Bar Association's Rules of Professional Conduct. The other comment 
pointed out that a practitioner may retain, as opposed to employ, a 
non-practitioner assistant, under the supervision of the practitioner 
to prepare presentations to the Office.
    Response: The suggestion to add ``or retaining'' after 
``employing'' in the last sentence of Sec.  11.5(b) has been adopted.
    Comment 8: Two comments presented similar suggestions for 
replacement of the phrase ``in preparation of said presentations'' in 
the last sentence of Sec.  11.5(b). One comment suggested replacing the 
phrase with ``in matters pending or contemplated to be presented before 
the Office''; the other suggested using ``matters pending or

[[Page 47666]]

contemplated to be presented to the Office.'' Both comments suggested 
the change would more accurately define the activities and be 
consistent with other language in this section. A third comment 
suggested the non-practitioner should be broadened to include a person 
or entity which is not technically the practitioner's employee or on 
the practitioner's payroll, and who may be an independent contractor 
who communicates or consults with a client in working with a 
practitioner.
    Response: The two similar suggestions for replacement of the phrase 
``in preparation of said presentations'' have been adopted by replacing 
phrase with ``matters pending or contemplated to be presented to the 
Office'' in the last sentence of Sec.  11.5(b).
    The suggestion to broaden the non-practitioner to include a person 
or entity which is not technically the practitioner's employee or on 
the practitioner's payroll to communicate or consult with clients 
working for the practitioner has not been adopted. The persons and 
entities would not be subject to a practitioner's supervision, and 
absent supervision or other controls, could be engaged in the 
unauthorized practice of law by providing unsupervised and incorrect 
legal advice. The Office's Disciplinary Rules prohibit a practitioner 
from aiding another in the unauthorized practice of law. See 37 CFR 
10.47. Persons or entities engaging in the unauthorized practice of law 
will be reported to the authorities in the appropriate jurisdiction(s). 
See Sec.  11.19(d). The persons and entities contemplated by the 
suggestion are beyond the ambit of the Office's Disciplinary Rules. 
Under the suggestion, the practitioners have no supervisory authority 
over the persons or entities, and therefore could violate the 
Disciplinary Rules for non-supervision or aiding unauthorized practice 
of law. Thus, the Office could not protect the public from the actions 
of the persons or entities, though Congress has made the USPTO Director 
responsible for protecting the public from the misdeeds of those who 
practice before the Office.
    Comment 9: One comment urged that Sec.  11.5 places unnecessary and 
improper restrictions on practitioners who may work with non-
practitioner invention developers who communicate or consult with 
clients who may want to file documents with the Office. The comment 
said it is unreasonable and improper for the Office to interfere with 
the relationship between invention promoters and practitioners by 
restricting practitioners from working with non-practitioners, 
including invention promoters who may consult or communicate with 
clients regarding their inventions, so long as legal advice and the 
filing of patent applications, attending hearings, etc. remain the 
responsibility of the practitioner. The comment suggested changes to 
Sec.  11.5 to eliminate the following ``overly broad'' language: law-
related services ``that comprehend[] any matter connected with the 
presentation to the Office,'' the preparation of necessary documents 
``in contemplation of filing the documents'' with the Office, and 
``communicating with * * * a client concerning matters pending or 
contemplated to be presented before the Office'' in Sec.  11.5(b); 
``consulting with * * * a client in contemplation of filing a patent 
application or other document with the office'' in Sec.  11.5(b)(1). 
The comment urged that a person who may have prospective business 
before the Office may want to utilize both lay and legal service 
providers in connection with his invention, including non-practitioners 
who merely assemble information to provide non-legal services at a much 
lower cost than practitioners would charge.
    Response: The Office disagrees that Sec.  11.5 places unnecessary 
and improper restrictions on practitioners who may work with non-
practitioners who communicate or consult with clients. Nothing in the 
rule prevents a person having prospective business before the Office 
from utilizing both lay and legal service providers in connection with 
that person's invention. Non-practitioners who assemble information to 
provide only non-legal services at a cost may continue to provide non-
legal services. However, non-practitioners who, for example, provide 
law-related services ``that comprehend[] any matter connected with the 
presentation to the Office'' or prepare necessary documents, such as 
patent applications, ``in contemplation of filing the documents'' with 
the Office must be employed or retained by the practitioner and under 
the practitioner's supervision. The suggestion to change the language 
of Sec.  11.5 to enable non-practitioners to consult or communicate 
with clients regarding their inventions, and enable clients to obtain 
services at lower cost than practitioners can provide has not been 
adopted. Contrary to the comment, assembly of information is not always 
a non-legal service; for example, providing a list of patent references 
found in a search of the prior art is a non-legal service whereas 
transmitting information to the practitioner to use to describe the 
invention in a patent application is a legal service. The value of 
competent legal service and advice, including communications, 
consultations, and assembly of information for inventors can be 
significantly more valuable than its cost. Its value may be more 
significant for unsophisticated inventors who need expert evaluation of 
the merits or real prospects of legal protection for their invention. 
The Office ``frequently finds itself challenged by so-called `invention 
promoters' who exploit unsophisticated inventors, heap every invention 
with praise regardless of the merits or the real prospects of legal 
protection, and entice inventors into engagement agreements filled with 
hollow guarantees of patent protection and promises of royalty-bearing 
licenses that seldom yield anything of any significant value.'' Bender 
v. Dudas, 490 F.3d 1361, 1363 (Fed Cir. 2007). A practitioner working 
with an unsupervised non-practitioner facilitates such practices. For 
example, in Bender, the Court found ``[a]t no point did Gilden [a 
practitioner] consult with the inventors regarding the filing of a 
design patent application or the embellished drawings.'' Id. at 1364. 
At a minimum, it is necessary that the practitioner representing the 
client not only consult with the client, but also that the consultation 
``otherwise advise[] that inventor on how best to proceed in his or her 
particular case.'' Id. at 1365. Non-practitioners are not entitled to 
provide legal advice or otherwise practice law. To the extent practice 
of law includes a law-related service that comprehends any matter 
connected with the presentation to the Office, the preparation of 
necessary documents in contemplation of filing the documents with the 
Office, and communicating with * * * a client concerning matters 
pending or contemplated to be presented before the Office as in Sec.  
11.5(b), a practitioner authorized by relevant law must provide the 
legal services. For example, consultation with a client in 
contemplation of filing a patent application or other document with the 
Office as in Sec.  11.5(b)(1) requires a registered practitioner to 
provide the services. A practitioner may not circumvent the 
Disciplinary Rules through the actions of another. See 37 CFR 
10.23(b)(2). For example, a non-practitioner who is neither employed 
nor retained by the practitioner, or who is not under the supervision 
of the practitioner, may not assist the practitioner in matters pending 
or contemplated to be presented to the Office.
    Comment 10: Several comments responded to the Office's inquiry

[[Page 47667]]

whether the rules ``should explicitly provide for circumstances in 
which a patent agent's causing an assignment to be executed might be 
appropriate incidental to preparing and filing an application.'' Two 
comments pointed out that Sec.  11.5(b)(1) would be internally 
inconsistent if patent agents could provide advice about ``alternative 
forms of protection that may be available under state law'' but not 
prepare and file assignments in connection with the applications they 
have prepared. One comment suggested that the Office lacks the 
authority to, and should not, prohibit a patent agent or registered 
patent attorney licensed only by the Office from preparing an 
assignment for an application he or she is prosecuting, while another 
comment recommended that the rule explicitly provide for preparing 
assignments and licenses for patent applicants and patentees. One 
comment said that it has been the Office's position that a registered 
patent agent could both prepare a patent assignment or license if not 
prohibited by state law and submit the assignment or license for 
recordation, and recommended that this position be explicitly stated in 
the rules. The comment also urged that the rule follow the practice of 
states that permit paraprofessionals, such as patent agents to complete 
and modify assignment and license documents under an attorney's 
supervision. The comment pointed out that allowing these types of 
activities is particularly important in a corporate environment where 
only one or two form agreements may be used in certain clearly defined 
situations. One comment suggested it is unnecessary for the Office to 
explicitly provide for appropriate circumstances when a patent agent 
may prepare an assignment and/or cause an assignment to be executed not 
only because these activities are incidental to the preparation and 
prosecution of patent applications or incidental to the record for an 
issued patent, but also because of the Office's long-standing position 
a registered patent agent may prepare a patent assignment and cause 
such assignment to be executed if not prohibited by state law. One 
comment objected to a requirement that if a document is submitted for 
recordation by an attorney or agent, that the attorney or agent 
submitting the document must be separately licensed by the state bar in 
which the assignor and/or assignee lives, in addition to being licensed 
by the Office. Two comments inquired how the transfer of rights in the 
U.S. invention from a foreign inventor to a foreign company should be 
handled. One comment suggested the attorney or agent who is handling 
the substantive prosecution needs to be able to act fast to resolve 
ownership questions, for example to file a terminal disclaimer, or, for 
example, to ensure the correctness of the assignment recordation 
affirmations that the prosecuting attorney or agent makes when 
submitting the assignee's name on the issue fee transmittal sheet. 
Several comments cited impracticalities and difficulties if a patent 
agent is unable to prepare assignments, for example, where the 
application to be assigned has multiple inventors living in different 
states, hiring an attorney for each state simply to cause an assignment 
to be executed in such State would be an unnecessary administrative 
burden. One comment suggested that agents be allowed to select, not 
draft or vary, one or more form assignments by having the Office adopt 
standard form assignments, and that the Office establish well-defined, 
common, specific ``safe harbor'' situations in which agents can 
recommend such standard forms to their clients.
    Response: The filing of an assignment, while not legally required 
for prosecution, is no doubt ``reasonably necessary and incident to'' 
prosecution of a patent application. This is true to enable an assignee 
of record of the entire interest to control prosecution of the 
application to the exclusion of the assignor. See 37 CFR 1.33(b)(4) and 
3.71.
    The diverse comments regarding the authority of practitioners to 
preparing assignments and licenses for patent applicants and patentees 
demonstrate the necessity for the Office to provide for appropriate 
circumstances when registered practitioners, including patent agents, 
may do so. Inasmuch as numerous situations involving assignments arise, 
the Office is not attempting by rule to explicitly identify all 
circumstances when a registered practitioner may prepare or cause an 
assignment to be signed. Instead, the provisions of Sec.  11.5(b)(1) 
are written to broadly outline the circumstances when a practitioner 
may prepare an assignment for patent applicants and patentees by virtue 
of the practitioner's registration.
    There is no statute or rule requiring training in contract law as a 
condition to be registered as a patent agent. No comment suggested any 
means whereby patent agents could receive adequate training and the 
competence to provide legal advice could be confirmed. Absent adequate 
training, a person drafting an assignment could overlook issues for 
which lawyers have received training. For example, in addition to 
preparing an assignment form, it may be necessary to advise whether the 
inventor is obligated to assign the invention, and if so, to whom. It 
may be necessary to resolve ownership questions, for example, to file a 
terminal disclaimer where there is no previously existing employment 
agreement or where an employment agreement contains no obligation to 
assign patent rights. In some situations, assignments lead to serious 
complexities, which can impact title and prevent patent enforcement. 
Patent agents are not empowered by their registration to provide advice 
about title and enforcement of patents. Accordingly, it is appropriate 
to set forth authority of practitioners to prepare an assignment or 
cause an assignment to be executed by virtue of their registration.
    Preparing an assignment or causing an assignment to be executed is 
appropriate only when they are reasonably necessary and incidental to 
the preparation and prosecution of a patent application, or other 
proceeding before the Office involving a patent application or patent 
in which the practitioner is authorized to participate. The patent 
application may be, for example, a provisional, nonprovisional or 
reissue application. Other proceedings include, for example, an 
interference or reexamination proceeding. A practitioner, by virtue of 
being registered, may prepare an assignment or cause it to be signed in 
the foregoing circumstances if in drafting the assignment the 
practitioner does no more than replicate the terms of a previously 
existing oral or written obligation of assignment from one person or 
party to another person or party. Registration does not authorize a 
registered practitioner to recommend or determine the terms to be 
included in an assignment. The practitioner is not authorized to select 
or recommend a particular form assignment from among standard form 
assignments. Registration does not authorize a practitioner to draft an 
assignment or other document in circumstances that do not contemplate a 
proceeding before the Office involving a patent application or patent. 
For example, where an assignment is prepared in contemplation of 
selling a patent or in contemplation of litigation, there is no 
proceeding before the Office. When, after a patent issues, there is no 
proceeding before the Office in which the patent agent may represent 
the patent owner, drafting an assignment or causing the assignment to 
be signed are not activities reasonably necessary and incidental to 
representing a patent owner before the Office.

[[Page 47668]]

    Section 11.5(b)(1) provides circumstances in which a registered 
practitioner may prepare an assignment or cause an assignment to be 
executed. The assignment must be reasonably necessary and incidental to 
filing and prosecuting a patent application for the patent owner or the 
practitioner represents the patent owner after the patent issues in a 
proceeding before the Office. In drafting the assignment the 
practitioner must not do more than replicate the terms of a previously 
existing oral or written obligation of assignment from one person or 
party to another person or party. Thus, where a previously existing 
written employment agreement between an inventor and the employing 
corporation contains one or more clauses obligating an inventor to 
assign to the company inventions made in the course of employment, a 
practitioner may draft an assignment wherein the provisions replicate 
those of the employment agreement.
    Contrary to several comments, the Office has not taken the position 
that a registered patent agent could prepare a patent assignment or 
license for a patent if not prohibited by state law. The Office's long-
standing position has been that ``[p]atent agents * * * cannot * * * 
perform various services which the local jurisdiction considers as 
practicing law. For example, a patent agent could not draw up a 
contract relating to a patent, such as an assignment or a license, if 
the state in which he/she resides considers drafting contracts as 
practicing law.'' See General Information Concerning Patents, http://www.uspto.gov/web/offices/pac/doc/general/index.html. Drawing up an 
assignment for an issued patent is not necessarily always reasonably 
necessary and incidental to filing or prosecuting a patent application 
or other proceeding before the Office involving a patent. For example, 
where a first party is selling and a second party is purchasing a 
patent, the transfer of patent rights between the parties is not a 
proceeding before the Office. Drafting an assignment for either party 
would be beyond the scope of recognition practice before the Office.
    A license is neither reasonably necessary nor incidental to filing 
or prosecuting a patent application or a proceeding before the Office 
involving a patent. Under Office rules only an assignee of the entire 
interest, not a licensee, may revoke previous powers in a patent 
application and be represented by a registered practitioner of the 
assignee's own selection. See 37 CFR 1.36. Similarly, the rules do not 
authorize a licensee to control the representation of a party in a 
reexamination or interference proceeding. Accordingly, the Office has 
not authorized patent agents to draft license agreements in 
contemplation of filing or prosecuting patent applications or conduct 
proceedings before the Office regarding issued patents.
    The suggestion to follow the practice of most states permitting 
paraprofessionals, such as patent agents, to complete and modify 
assignment and license documents under an attorney's supervision need 
not be adopted. Although 35 U.S.C. 152, 202, 204 and 261 refer to 
assignment or licensure of patents or patent rights, assignments and 
licenses are forms of contracts, which are creatures of state, not 
Federal law. Contracts are enforceable under state law. The authority 
to prepare contracts and provide advice regarding the terms to include 
in contracts is subject to the state law regarding who is authorized to 
practice law. It is unnecessary for the Office to authorize 
practitioners to comply with state laws permitting paraprofessionals to 
act under the supervision of an attorney where the State's authority to 
control the acts are not preempted by Federal law. It is not apparent 
from any comment that corporations or other organizations using few 
agreements in certain clearly defined situations have been or would be 
adversely impacted by the lack of an Office rule permitting patent 
agents to complete and modify documents assignment and license 
documents under an attorney's supervision.
    No state was identified as prohibiting paraprofessionals from 
modifying assignments and license documents under a lawyer's 
supervision. Modifying assignment and license documents could 
necessitate expert knowledge of state principles for which registered 
practitioner status does not prepare agents. Whereas a corporation or 
other organization may employ paraprofessionals, including patent 
agents, to act under a lawyer's supervision, the attorney would remain 
responsible for the completed or modified document. There remains, 
however, registered patent agents who are self-employed and do not act 
under a lawyer's supervision. Adopting a rule requiring registered 
patent agents to act under the supervision of lawyers to modify 
assignment and license documents does not address in a satisfactory 
manner when patent agents may prepare the documents in reliance on 
their registration to practice before Office. Thus, the circumstances 
contemplated in the suggestion do not obtain for all patent agents 
practicing before the Office. Inasmuch as assignments and licenses are 
the creation of state, not Federal, statute, authority to prepare these 
agreements and provide advice regarding the terms to include in them is 
subject to the state law regarding who is authorized to practice law.
    In a corporate or other organizational environment, where only one 
or two form agreements may be used in certain clearly defined 
situations, the provisions of Sec.  11.5(b)(1) allowing a practitioner 
to replicate the terms of the form agreements support efficiencies 
sought by all interested parties. Section 11.5(b)(1) is not limited to 
practitioners employed by a corporation or practitioners acting under 
the supervision of a lawyer. The practitioners may be self-employed or 
in firms. Section 11.5(b)(1) permits any registered practitioner to 
replicate the terms of the form agreements for an assignment in 
contemplation of filing or prosecuting a patent application, and submit 
the same to the Office for recordation in connection with a 
concurrently filed or pending patent application. For example, where an 
inventor and investor, each possibly represented by their own counsel, 
have reached terms for assignment of an invention in contemplation of 
filing a patent application, a patent agent may draft the assignment if 
the agent does no more than replicate the terms of the previously 
existing oral or written assignment agreement between the inventor and 
investor. It is not necessary for the registered practitioner to be 
under the supervision of a lawyer to provide the service inasmuch as 
the agent is functioning as a scrivener.
    It is not and has not been the intent of the Office to require the 
agent or attorney physically submitting a document for recordation to 
be separately licensed by the state bar in which the assignor and/or 
assignee lives. Additionally, there is no requirement that the attorney 
submitting a document for recordation in the Office be registered to 
practice before the Office. The recordation of documents is a 
ministerial act by the Office. The Office does not require the person 
or party submitting the document be registered to practice before the 
Office. For example, an assignment or license document may be submitted 
to the Office for recordation by a patent or trademark owner, a 
registered patent agent or a registered patent attorney who is 
separately licensed in a state other than the state wherein the 
attorney practices. However, whoever submits an assignment or license 
is responsible for ensuring the correctness of the

[[Page 47669]]

submitted documents. See 37 CFR 11.18. Likewise, the registered 
practitioner submitting the assignee's name on the issue fee 
transmittal sheet is responsible for ensuring the correctness of the 
contents of the sheet, including any representation that a party 
identified as an assignee is in the assignee. See Sec.  11.18.
    Comments regarding the transfer of rights in the United States of 
inventions from a foreign inventor to a foreign company implicitly 
address an invention that occurs abroad. Any transfer of rights would 
likely arise under foreign law, which would determine the appropriate 
person to draft any original assignment or license reflecting the 
transfer of rights. A patent agent may draft assignment that transfers 
rights in the United States that merely replicates the provisions of 
the previously existing oral or written obligation of assignment in a 
foreign country between the persons or parties. In the absence of a 
previously existing obligation of assignment in a foreign country, an 
attorney, presumably after consultation with the client, could draft 
the assignment for the client.
    Suggestions that administrative burdens caused by not permitting 
patent agents to prepare assignments would justify permitting agents to 
draft assignments are unpersuasive. A typical situation cited is the 
administrative burden incurred when there is an application having 
multiple inventors living in different states if it is necessary to 
hire an attorney for each state simply to cause an assignment to be 
executed in such state instead of having an agent draft the assignment. 
The comments commonly assumed that all agents are competent to provide 
the legal services and the invention is to be assigned. First, there is 
no requirement that patent agents be trained in contract law to be 
registered to practice before the Office in patent cases. Absent 
adequate training, the client may not receive the legal advice and 
service the client has every right to expect. The possible temporary 
``convenience'' of having a practitioner inadequately trained in the 
legal service the practitioner provides does not outweigh the need for 
competence. A practitioner is prohibited from handling a legal matter 
which the practitioner knows or should know that the practitioner is 
not competent to handle, without associating with another practitioner 
who is competent to handle it. See 37 CFR 10.77(b). Therefore, clients 
represented by a practitioner would be disserved by that practitioner 
if the practitioner is not competent to provide advice whether multiple 
inventors living in different states are subject to the contract laws 
of all the states or one state, whether the inventors are obligated to 
assign the invention, whether the inventors should assign as opposed to 
license the invention absent a legal obligation to assign, and other 
legal implications of any agreement. Burdens may arise for 
practitioners and clients when the clients are not competently advised 
about available legal options, such as licensure or assignment, as well 
as the benefits, terms and costs of each option. The convenience of 
having a registered practitioner provide a legal service for which no 
training is required for registration does not outweigh the benefits of 
obtaining competent legal advice and assistance.
    The Office is not adopting the suggestion to allow agents to 
select, but not draft or vary, one or more form assignments by adopting 
standard form assignments, and that the Office establish well-defined, 
common situations, that would be specific ``safe harbor'' situations in 
which agents can recommend such standard forms to their clients. The 
very suggestion demonstrates the necessity for clients to receive 
competent legal advice before they sign any document transferring 
rights. There are numerous employment situations as well as other 
contractual and non-contractual situations requiring legal analysis and 
advice regarding whether and when an inventor is obligated to assign an 
invention, transfer shop rights in an invention, or license an 
invention. The situations are subject to state law, which varies from 
state to state. It would be inappropriate for the Office to adopt 
standard form assignments or adopt ``safe harbors'' inasmuch as no form 
or harbor could address or anticipate all possible terms and 
situations. Though the comment did not recommend that adoption of 
standard licensing forms and safe harbors for licensing, such action by 
the Office would be similarly imprudent. The fact that legal reference 
books provide numerous forms, rather than a single one, demonstrates 
that there is no standard for assignments or licenses, for which a 
``safe harbor'' could be provided. Competent legal training is 
necessary to assess whether any rights in an invention should be 
transferred by assignment or license, as well as the terms for the 
transfer.
    Comment 11: Two comments urged that the weight of authority holds 
that a patent agent may not advise about the content of alternate forms 
of state intellectual property protection. One comment urged that the 
USPTO lacks jurisdiction over state law forms of intellectual property 
protection, under state law, patent agents are not licensed to provide 
such advice. One comment made the same observation for a registered 
lawyer who is not licensed in the state where he or she is practicing.
    Response: The Office is not expanding its jurisdiction over state 
law forms of intellectual property protection. Thus, Sec.  11.5(b)(1) 
does not provide for a patent agent advising about the content of 
alternate state forms of intellectual property protection. Section 
11.5(b)(1), consistent with Supreme Court precedent, provides for 
``considering the advisability of relying upon alternative forms of 
protection which may be available under statute law.'' In Sperry v. 
State of Florida ex rel Florida Bar, 373 U.S. 379, 83 S.Ct. 1322 
(1963), the Supreme Court said that the preparation and prosecution of 
patent applications for others constitutes the practice of law, which 
``inevitably requires the practitioner to consider and advise his 
clients as to the patentability of their inventions under the statutory 
criteria, 35 U.S.C. 101--103, 161, 171, as well as to consider the 
advisability of relying upon alternative forms of protection which may 
be available under state law.'' Id. 373 U.S. at 383, 83 S.Ct. at 1323. 
Patent agents should consider the advisability of relying on the 
alternative forms of protection available under statute law. Inasmuch 
as the state laws are public, agents should refer clients to the 
statutes and suggest that the client consult with an attorney of the 
client's choice in the state whether the statute has been adopted about 
the alternative forms of protection available under statute law. The 
same would obtain for a registered patent attorney who is not licensed 
in the state where the attorney is practicing unless the state where 
the attorney is practicing has authorized the attorney to provide legal 
services. For example, if the attorney is ``corporate counsel'' or 
``in-house counsel'' and is licensed to practice law in another state, 
the attorney may provide legal advice about the state's statutes to the 
attorney's corporate employer if the state where the attorney is 
practicing has authorized the attorney to provide legal services for 
the attorney's employer in the state where the attorney is practicing.
    Comment 12: One comment expressed doubt that listing explicit 
circumstances in which a patent agent may or may not participate is 
either necessary or helpful. Another comment urged that the ``includes, 
but is not limited to'' language in Sec.  11.5 is vague and indefinite 
since it does not put the public on notice as to what else would 
constitute patent practice before the Office, that the Office needs to 
define

[[Page 47670]]

exactly what constitutes the practice of patent law subject to USPTO 
jurisdiction, and that the rule be amended to define practice before 
the Office as prosecution of patent applications before the Office, 
preparing assignments and licenses for patent applicants and patentees 
and rendering opinions on validity and infringement for clients.
    Response: The Office will not attempt by rule to define exactly 
what constitutes practice of patent law that is subject to the Office's 
jurisdiction. The scope of activities involved in practice of patent 
law before the Office is not necessarily finite, and is subject to 
change as the patent statute changes and rules are promulgated to the 
implement statutory changes. Instead, Sec.  11.5(b)(1) is written to 
provide that registration to practice before the Office in patent cases 
sanctions the performance of those services which are reasonably 
necessary and incident to the preparation and prosecution of patent 
applications or other proceedings before the Office involving a patent 
application or patent in which the practitioner is authorized to 
participate. The services are identified as including considering the 
advisability of relying upon alternative forms of protection which may 
be available under statute law, and drafting an assignment or causing 
an assignment to be executed for the patent owner in contemplation of 
filing or prosecution of a patent application for the patent owner, or 
the practitioner represents the patent owner after a patent issues in a 
proceeding before the Office, and in drafting the assignment the 
practitioner does no more than replicate the terms of a previously 
existing oral or written obligation of assignment from one person or 
party to another person or party.
    The suggestion to define practice before the Office as prosecution 
of patent applications before the Office has not been adopted. Inasmuch 
as practice before the Office in patent cases also includes, for 
example, representing a patent owner seeking reexamination of an 
application or before the Board of Appeals and Interferences, limiting 
practice before the Office to only prosecuting patent applications 
would be inappropriately narrow.
    The suggestion to define practice before the Office as rendering 
opinions on validity and infringement for clients has not been adopted. 
Whether a validity opinion involves practice before the Office depends 
on the circumstances in which the opinion is sought and furnished. For 
example, an opinion of the validity of another party's patent when the 
client is contemplating litigation and not seeking reexamination of the 
other party's patent could not be reasonably necessary and incident to 
the preparation and prosecution of patent applications or other 
proceedings before the Office involving a patent application or patent. 
In such situations, the opinion may constitute unauthorized practice of 
law. See Mahoning Cty. Bar Assn. v. Harpman, 608 N.E.2d 872 (Ohio 
Bd.Unauth.Prac. 1993). Similarly, a validity opinion for the sale or 
purchase of the patent is neither the preparation nor the prosecution 
of a patent application. Likewise, the opinion is not a proceeding 
before the Office involving a patent application or patent. 
Registration to practice before the Office in patent cases does not 
authorize a person to provide a validity opinion that is not reasonably 
necessary and incident to representing parties before the Office. In 
contrast, a validity opinion issued in contemplation of filing a 
request for reexamination would be in contemplation of a proceeding 
before the Office involving a patent. Due to registration to practice 
before the Office in patent cases, a practitioner may issue a validity 
opinion in contemplation of filing a request for reexamination.
    In no circumstance would practice before the Office include the 
rendering of opinions on infringement. Under the law, the Office has no 
authority to resolve infringement cases. Thus, registration to practice 
before the Office in patent cases does not include authority to render 
infringement opinions. See Mahoning Cty. Bar Assn. v. Harpman, supra.
    Comment 13: One comment suggested that the Office not adopt the 
last sentence of Sec.  11.14(a), ``[r]egistration as a patent attorney 
does not itself entitle an individual to practice before the Office in 
trademark matters,'' inasmuch as any attorney meeting the qualification 
of being a member in good standing of a State or Federal Bar can 
practice before the Office in trademark cases. Another comment queried 
why registration as a patent attorney does not itself entitle an 
individual to practice before the Office in trademark matters.
    Response: To clarify the intent of the last sentence of Sec.  
11.14(a), the term ``attorney'' has been changed to ``practitioner.'' 
The sentence now reads ``[r]egistration as a patent practitioner does 
not itself entitle an individual to practice before the Office in 
trademark matters.'' Whether a practitioner registered on or after 
January 1, 1956, has been registered as a patent attorney or patent 
agent, the practitioner's registration as an attorney or agent does not 
in itself entitle the practitioner to practice before the Office in 
trademark matters. To qualify to practice before the Office in 
trademark matters since January 1, 1956, a person must be an attorney 
meeting the statutory qualification of 5 U.S.C. 500 of being a member 
in good standing of the bar of the highest court of a State. However, 
the Office's recognition of a lawyer to practice before the Office in 
trademark matters does not authorize the attorney to engage in the 
practice of law where the attorney is not authorized to practice law. 
See Sec.  11.14(d), and its predecessor rules, 10.14(d) and 2.14(d). 
Inasmuch as membership in a bar of a Federal court is not a qualifying 
criteria set forth in 5 U.S.C. 500 to practice before a Federal agency, 
it does not qualify a person to practice before the Office in trademark 
cases. A person lacking membership in good standing in the bar of the 
highest court of a state may not practice before the Office in 
trademark matters, even if the person is registered with the Office as 
a patent attorney. For example, a registered patent attorney who is 
suspended or disbarred on ethical grounds from practice of law or 
suspended on nonethical grounds, such as non-payment of annual dues, in 
State A, the only jurisdiction where the attorney was admitted to 
practice law, may not continue to practice before the Office in 
trademark matters following the effective date of the suspension or 
disbarment.
    Further, a nonlawyer registered as a patent agent after January 1, 
1956, is not qualified to practice before the Office in trademark 
matters. A person who was registered as a patent agent after January 1, 
1956, and thereafter became an attorney who has remained in good 
standing with the bar of the highest court of a state may practice 
before the Office in trademark cases, even if the person never changed 
his or her registration status with the Office.
    Furthermore, a person registered as a patent agent before January 
1, 1956, who changed his or her registration status at any time to 
registered patent attorney cannot revert after 1956 to being a patent 
agent registered before January 1, 1956. If such a person does not 
maintain his or her membership in good standing with the bar of the 
highest court of a state, the person becomes an agent at that time and 
is not entitled to continue to represent others before the Office in 
trademark matters. Although the Office does not believe any person who 
was registered as a patent agent before January 1, 1956, has 
continuously remained registered as an agent and continues at this time 
to be so registered, the note at the end of Sec.  11.14(a), which 
grandfathers their

[[Page 47671]]

authorization to practice before the Office in trademark cases, has 
been maintained for the benefit of any such practitioners.
    Comment 14: A comment urged that Sec.  11.14(a) is inconsistent 
with 5 U.S.C. 500(b), inasmuch as Sec.  11.14(a) does not require 
attorneys to apply for recognition to practice, whereas section 500(b) 
can be construed as requiring an attorney to file with the Office a 
written declaration setting forth the attorney's current qualification.
    Response: Inasmuch as nothing in 5 U.S.C. 500(b) directs any agency 
to require a written declaration setting forth an attorney's current 
qualification, the lack of such a requirement in Sec.  11.14(a) is 
consistent with section 500(b). Except in the electronic filing of 
documents in trademark matters, the Office does not require an attorney 
to declare that he or she is currently qualified. If any change to the 
practice should occur, the change would be set forth in Part 2 of the 
Rules of Practice.
    Comment 15: One comment sought clarification whether Sec.  
11.18(b)(1) refers to ``all disciplinary proceedings or only to those 
under section 11.32.''
    Response: The provisions of Sec.  11.18(b)(1) are inclusive of all 
disciplinary proceedings, including those instituted under Sec.  11.32. 
This is made clear by Sec.  11.18(a), which provides in pertinent part, 
that it is for ``all documents filed in the Office in * * * other non-
patent matters, and all documents filed with a hearing officer in a 
disciplinary proceeding.'' For example, documents filed in the Office 
in ``other non-patent matters'' includes documents filed in 
disciplinary actions under Sec. Sec.  11.24 through 11.26, and appeals 
under 11.55 in a disciplinary proceeding.
    Comment 16: One comment recommended that Sec.  11.18(b)(1) be 
amended to exclude complainants from its purview, as complainants 
should have immunity in disciplinary matters. The comment pointed out 
that Rule 12 of the Model Rules of Lawyer Disciplinary Enforcement of 
the American Bar Association provides for absolute immunity for members 
of the agency, complainants and witnesses although in a context of 
coordination with local law enforcement.
    Response: The recommendation to provide complainants with immunity 
has not been adopted. While the rationale for providing complainants 
with immunity is appreciated, all persons filing written communications 
with the Office, including complainants, are subject to the provisions 
of 18 U.S.C. 1001, which provides, in pertinent part:

    [W]hoever, in any matter within the jurisdiction of the 
executive * * * branch of the Government of the United States, 
knowingly and willfully--(1) falsifies, conceals, or covers up by 
any trick, scheme, or device a material fact; (2) makes any 
materially false, fictitious, or fraudulent statement or 
representation; or (3) makes or uses any false writing or document 
knowing the same to contain any materially false, fictitious, or 
fraudulent statement or entry; shall be fined under this title, 
imprisoned not more than 5 years.

    The Office is without statutory authority to waive the foregoing 
statutory provisions, even for complainants submitting a grievance. 
Legislation granting immunity to complainants would first have to be 
enacted into law before any regulation could be adopted applying the 
law to complainants in the disciplinary process.
    Comment 17: A comment suggested that the mandatory language in 
Sec.  11.18(b), pertaining to ``disciplinary proceeding'' may conflict 
with Sec.  11.22(b), which provides that the OED Director may request 
that a grievant verify via affidavit information indicating possible 
grounds for discipline.
    Response: The mandatory language of Sec.  11.18(b)(2) pertaining to 
a ``disciplinary proceeding'' is not seen as conflicting with Sec.  
11.22(b), which pertains to a grievance which may initiate an 
investigation. An investigation and a disciplinary proceeding are 
distinct processes. An investigation may be initiated when a grievance 
is received suggesting possible grounds for discipline. See Sec.  
11.22(a). A disciplinary proceeding is initiated generally after an 
investigation under Sec.  11.22. See Sec.  11.32. A disciplinary 
proceeding also may be initiated in accordance with Sec.  11.24, 
pertaining to reciprocal discipline, and Sec.  11.25(b), pertaining to 
interim suspension and discipline based on conviction of committing a 
serious crime.
    Comment 18: One comment queried the meaning of the terms 
``unnecessary delay'' or ``needless increase'' in Sec.  11.18(b)(2)(i), 
and suggested that they be further defined. The comment suggested that 
if the terms are directed to prosecution laches, such laches is 
effectively diluted, if not eliminated, by the provisions in 35 U.S.C. 
154 for a 20-year patent term. The comment also suggested that there 
could be good and sufficient reasons for a delay, such as poverty and 
that a practitioner's advice to a client to file an application to keep 
the case alive should not be regarded as unnecessary delay.
    Response: The suggestion that the terms be further defined has not 
been adopted. The relevant language of Sec.  11.18(b)(2)(i), ``not 
being presented for any improper purpose, such as to harass someone or 
to cause unnecessary delay or needless increase in the cost of'' is 
taken from Rule 11 of the Federal Rules of Civil Procedure. Rule 11, 
titled ``Signing of Pleadings, Motions, and Other Papers; 
Representations to Court; Sanctions,'' provides, in pertinent part, 
``(b) Representations to Court. By presenting to the court (whether by 
signing, filing, submitting, or later advocating) a pleading, written 
motion, or other paper, an attorney or unrepresented party is 
certifying that to the best of the person's knowledge, information, and 
belief, formed after an inquiry reasonable under the circumstances, (1) 
it is not being presented for any improper purpose, such as to harass 
or to cause unnecessary delay or needless increase in the cost of 
litigation.'' The case law under Rule 11 construing the terms 
``unnecessary delay'' or ``needless increase'' provides practitioners 
with sufficient guidance for construing the use of the same terms in 
Sec.  11.18(b)(1)(i). Contrary to the suggestion, the provisions of 
Sec.  11.18(b)(1)(i) cover an array of different situations occurring 
in both patent and trademark proceedings. For example, the provision 
applies to: Third party filing a paper requesting withdrawal of an 
applicant's previously published patent application from issue to 
consider prior art; to a third party filing papers in an applicant's 
patent application to assert that the third party owns the claimed 
invention and discharging the practitioner engaged by the applicant to 
prosecute the application; as well as to a third party filing a notice 
of express abandonment in an applicant's patent or trademark 
application. Applicants having legally sufficient reasons to properly 
file continuing applications may do so in compliance with Sec.  
11.18(b)(1)(i).
    Comment 19: Two comments noted that Sec.  11.19(a) referenced ``all 
practitioners administratively suspended under Sec.  11.11(b);'' ``all 
practitioners inactivated under Sec.  11.11(c);'' and ``[p]ractitioners 
who have resigned under Sec.  11.11(e),'' but these sections were not 
included in the Supplemental Notice of Proposed Rule making.
    Response: While sections 11.11(b), 11.11(c) and 11.11(e) were 
included in the Notice of Proposed Rule making published in 2004, these 
sections have not been adopted at this time. Accordingly, reference to 
these sections is deleted from Sec.  11.19(a) at this time.

[[Page 47672]]

Instead of referring to practitioners inactivated under 11.11(c), Sec.  
11.19(a) refers to practitioners inactivated under Sec.  10.11.
    Comment 20: One comment suggested that Sec.  11.19(b) appears to 
disclaim Federal pre-emption, that the comments make clear that the 
authority of State or other local Bar Associations is not diminished, 
and that Sec.  11.19(b) is not necessarily inconsistent with that 
authority.
    Response: Contrary to the comment, nothing in Sec.  11.19(b) 
disclaims Federal preemption. As stated in Sec.  11.1, ``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 
Patent and Trademark Office to accomplish its Federal objectives.'' The 
USPTO Director is entitled to and does regulate the conduct of patent 
practitioners before the Office. The USPTO Director's authority is not 
intended to and does preempt the authority of states to discipline 
attorneys.'' Kroll v. Finnerty, 242 F.3d 1359 (C.A.Fed. 2001).
    Comment 21: One comment agreed with the conviction of crimes as a 
basis for discipline, but suggested that ``serious crime'' in Sec.  
11.19(b)(1) be further clarified in order to give the notice as to what 
constitutes the scope of a ``serious crime.''
    Response: The suggestion that ``serious crime'' be further 
clarified has not been adopted. The definition of ``serious crime'' is 
believed to provide the public with adequate notice of those crimes 
that constitute a serious crime in the jurisdiction where the crime 
occurs. The first part of the definition of ``serious crime,'' ``any 
criminal offense classified as a felony under the laws of the United 
States, any state or any foreign country where the crime occurred,'' 
informs the public that they must look to the definition of felony in 
the jurisdiction where the crime occurred. The second part of the 
definition, ``any crime a necessary element of which, as determined by 
the statutory or common law definition of such crime in the 
jurisdiction where the crime occurred, includes interference with the 
administration of justice, false swearing, misrepresentation, fraud, 
willful failure to file income tax returns, deceit, bribery, extortion, 
misappropriation, theft, or an attempt or a conspiracy or solicitation 
of another to commit a `serious crime' '' identifies for the public 
that non-felony crimes involving one of eleven elements would 
constitute a ``serious crime.'' The definition is derived from the 
definitions of ``serious crime'' included in Rule 19(C) of the American 
Bar Association Model Rules for Lawyer Disciplinary Enforcement and 
Rule I(B) of the American Bar Association Model Federal Rules of 
Disciplinary Enforcement. It is appreciated that criminal conduct may 
be a misdemeanor in one jurisdiction and a felony in another. 
Nevertheless, practitioners should conduct themselves in all 
jurisdictions to comport with the laws of the jurisdiction in which 
they are located.
    Comment 22: Several comments observed that the references to the 
``imperative USPTO Rules of Professional Conduct,'' ``Sec. Sec.  11.100 
et seq.'' or similar language in sections 11.19(b)(4), 11.19(c), 
11.22(f)(2) and 11.25 have no meaning since the Office has not adopted 
the rules it proposed in December 2003, and suggested that the 
expression be changed to ``USPTO Rules of Professional Conduct as set 
forth in Sec. Sec.  10.20 to 10.112 of Part 10 of this Subchapter'' 
until the new disciplinary rules are adopted.
    Response: The suggestion to replace the reference to ``imperative 
USPTO Rules of Professional Conduct'' until the rules are adopted has 
been adopted, inasmuch as the disciplinary procedural rules are being 
adopted before the adoption of USPTO Rules of Professional Conduct. The 
current USPTO Code of Professional Responsibility in Sec. Sec.  10.20 
through 10.112 remains in effect until USPTO Rules of Professional 
Conduct are adopted. As is made clear in 37 CFR 10.20, not all of the 
rules of the USPTO Code of Professional Responsibility set forth in 
Sec. Sec.  10.20 to 10.112 of Part 10 are mandatory. Some of the rules 
are aspirational. See 37 CFR 10.20(a). The Mandatory Disciplinary Rules 
of the Code of Professional Responsibility are identified in 37 CFR 
10.20(b). The mandatory rules identified in Sec.  10.20(b) are those 
that are referenced in sections 11.19(b)(4), 11.19(c), 11.22(f)(2), 
11.25(a), 11.34(b), 11.58(b)(2) and 11.58(f)(1)(ii) until the Rules of 
Professional Conduct are adopted. In addition to replacing references 
to ``imperative USPTO Rules of Professional Conduct,'' references to 
Sec.  11.100 et seq, Sec. Sec.  11.100 through 11.806,'' and the like 
will be replaced. Sections 11.19(b)(4), 11.19(c), 11.22(f)(2), 
11.25(a), 11.34(b), 11.58(b)(2) and 11.58(f)(1)(ii) are revised to 
refer to ``Mandatory Disciplinary Rules identified in Sec.  10.20(b).'' 
Section 10.20(b) identifies the Mandatory Disciplinary Rules as 
Sec. Sec.  10.22-10.24, 10.31-10.40, 10.47-10.57, 10.62-10.68, 10.77, 
10.78, 10.84, 10.85, 10.87-10.89, 10.92, 10.93, 10.101-10.103, 10.111, 
and 10.112 of Part 10 of this Subchapter.
    Comment 23: One comment inquired whether Sec.  11.19(b)(3) meant 
that a disciplined practitioner who does not comply with proposed Rule 
11.58(b) can again be disciplined upon seeking reinstatement because he 
or she did not comply with Rule 11.58(b), and whether the same obtained 
for a State Court that stipulates how the practitioner should wind up 
his or her business after a disciplinary action. The comment suggested 
that further clarification is necessary.
    Response: The comment correctly recognized that a practitioner may 
be disciplined for failure to comply with an order issued by a court or 
a final decision issued by the USPTO Director disciplining the 
practitioner. For example, a suspended practitioner who continues to 
practice law in the jurisdiction where the practitioner has been 
suspended is subject to additional disciplinary action for practicing 
law with a suspended license.
    Comment 24: One comment suggested that the language of Sec.  
11.20(a)(3) be changed to afford the public with notice that both 
private and public reprimand exist.
    Response: The suggestion has been adopted by inserting ``private or 
public'' before ``reprimand''.
    Comment 25: One comment said the Office should not limit 
restitution in Sec.  11.20(b) to preclude an award of prejudgment 
interest, and suggested that the phrase ``, along with any prejudgment 
interest'' be added after ``misappropriated client funds.'' Another 
comment pointed out that Rule 10(A)(6) of the Model Rules of Lawyer 
Disciplinary Enforcement (MRLDE) does not limit restitution.
    Response: The suggestion has not been adopted. The restitution 
contemplated by Sec.  11.20(b) is limited to the fees a client paid to 
a practitioner for the practitioner's legal services that were not 
earned, and client's funds that were delivered to and misappropriated 
by the practitioner. For example, where a client delivers funds to a 
practitioner to cover the practitioner's fee for filing a patent 
application as well as the Office's filing fee, and the practitioner 
neglects to file the application, the practitioner may be required to 
make restitution of funds for the filing fee and funds advanced for the 
practitioner's fee. The MRLDE presumes a disciplinary structural scheme 
operating under the aegis of the highest court in a state. The Office, 
unlike the MRLDE, is an agency in a department of an executive branch 
of the Federal Government. The Office operates within its statutory 
authority granted by Congress. It lacks statutory authority to

[[Page 47673]]

resolve legal disputes over fees or funds, or to award prejudgment 
interest. A client seeking prejudgment interest should consult with an 
attorney of the client's choice regarding available legal remedies, 
including enforcement of court-awarded judgments.
    Comment 26: One comment suggested that Sec.  11.21 be amended to 
require the OED Director to provide a hearing before a hearing officer 
prior to issuance of a warning. Two comments suggested that the 
recipient of the warning be permitted to demand a hearing as a form of 
appeal, particularly if any aspect of this is public or is deemed to 
adversely reflect upon the practitioner's fitness as a lawyer. To 
address the foregoing, the comments suggested additional language be 
added to Sec.  11.23(b)(1) to provide a review process, or adoption of 
Rule 10(A)(5) of the Model Rules of Lawyer Disciplinary Enforcement 
(MRLDE) to require the practitioner's consent and the approval of the 
chair of a hearing committee.
    Response: The suggestions have not been adopted as they are 
believed to be unnecessary. An avenue for review in a warning is 
already afforded by the rules. See Sec.  11.2(e), which provides for 
filing a petition ``to the USPTO Director to invoke the supervisory 
authority of the USPTO Director in appropriate circumstances in 
disciplinary matters.'' Section 11.21 clearly provides that the warning 
is not public and is not a disciplinary action. Accordingly, no aspect 
of the warning adversely reflects upon the practitioner's fitness 
before the Office. Nevertheless, the review process afforded by Sec.  
11.2(e) provides adequate protection of a warned-practitioner's due 
process rights.
    Comment 27: One comment suggested that a warning under Sec.  11.21 
appears to be inconsistent with Sec.  11.2(b)(4), which provides that, 
unless the action to be taken as the result of an investigation is a 
summary dismissal of the matter, the OED Director must give a 
practitioner an opportunity to be heard or an opportunity to appeal 
from the warning.
    Response: The comment misconstrues the provisions of Sec.  
11.2(b)(4). Section 11.2(b)(4) contemplates issuance of a summary 
dismissal without an investigation. A summary dismissal would be 
appropriate where, for example, a grievant seeks the intervention of 
the Office to collect a debt a practitioner allegedly owes the 
grievant. Section 11.21 contemplates that the ``OED Director may 
conclude an investigation with a warning.'' Accordingly, the OED 
Director may not summarily dismiss a grievance and issue a warning to 
the practitioner without an investigation. If a grievant supplements 
the grievance with sufficient facts to demonstrate that there are 
possible grounds for disciplinary action, an investigation would then 
ensue with the possibility of being concluded with a warning or other 
authorized disposition. If, following an investigation, the OED 
Director concludes that there is insufficient evidence to believe a 
disciplinary rule has been violated, but the investigated matter 
provides the practitioner with an opportunity to ensure conformity with 
the Office's disciplinary rules, the OED Director may issue a warning. 
The warning is neither public nor a sanction. The investigation 
provided the practitioner with an opportunity to be heard. A 
practitioner dissatisfied with the warning may petition to invoke the 
supervisory authority of the USPTO Director pursuant to Sec.  11.2(e).
    Comment 28: One comment suggested that Sec.  11.22 provide for 
operations as set forth in Rule 4(B)(6) (provide grievant notice of the 
status of disciplinary proceedings at all stages of the proceedings, 
copies of the same notices and orders the respondent receives as well 
as copies of respondent's communications to the agency, except 
information that is subject to another client's privilege); Rule 
4(B)(13) (refer appropriate cases to an Alternatives to Discipline 
Program pursuant to MRLDE Rule 11(G), to a central intake office, or to 
any of the component agencies of the comprehensive system of lawyer 
regulation established by MRLDE Rule 1); Rule 11(A) (evaluation of the 
information received); and Rule 11(B)(3) (provide for review of 
disciplinary counsel's recommended disposition other than a dismissal 
or a referral to the Alternatives to Discipline Program shall be 
reviewed by the chair of a hearing committee) of the ABA's Model Rules 
of Lawyer Disciplinary Enforcement (MRLDE).
    Response: The suggestion to provide grievants by rule with the 
mechanisms and proceedings set forth in MRLDE Rules 1(B), 4(B)(6) and 
(13), 11(A) and 11(B)(3) has not been adopted. To the extent 
``disciplinary proceeding'' in MRLDE Rule 1(B) contemplates 
investigations or other proceedings covered by the Privacy Act, 5 
U.S.C. 552a, protected records may not be disclosed unless the subject 
of the record consents or one of twelve exceptions apply. The 
exceptions do not enable the Office to provide a grievant with status 
information about investigations or proceedings, or to routinely 
distribute copies of all communications the respondent receives from 
and sends to the OED. One of the twelve exceptions permits protected 
information to be released as a routine use to persons who can be 
expected to provide information needed in connection with a grievance. 
In accordance with the authorized routine use of information, OED may 
provide a grievant with a copy of the respondent's communication to 
obtain the grievant's input needed in connection with the grievance. 
Regarding the suggestion to adopt MRLDE Rule 4(B)(13), the Office has 
neither the resources nor means for creating an Alternatives to 
Discipline Program or ``component agencies'' for lawyer regulation. In 
appropriate circumstances, the Office may commend a receptive 
practitioner to the same or similar programs operated by state bars or 
other agencies in the state where the practitioner is located. 
Regarding the suggestion to adopt MRLDE Rule 11(A), the OED Director 
evaluates all information received regarding possible grounds for 
discipline. If the person is not subject to the jurisdiction of the 
Office, the matter is referred to the appropriate entity. If the 
information is true and would not constitute misconduct or incapacity, 
the matter is dismissed. If the practitioner is subject to the Office's 
jurisdiction and the information alleges facts which, if true, would 
constitute possible grounds for discipline, an investigation is 
conducted. At the conclusion of the investigation, the matter is 
evaluated and the OED Director may close the matter without taking 
further action, issue a warning under Sec.  11.21, settle the matter 
under Sec.  11.26, proceed with exclusion on consent in accordance with 
Sec.  11.27, or pursue disciplinary action in accordance with Sec.  
11.32. Regarding the suggestion to adopt MRLDE Rule 11(B)(3), a 
recommendation by the OED Director to discipline or pursue a 
disciplinary proceeding against a practitioner is subject to review. 
For example, no disciplinary proceeding under Sec.  11.34 can be 
instituted without the Committee on Discipline finding probable cause 
under Sec.  11.32, and no settlement or exclusion on consent can occur 
without the concurrence of the USPTO Director in accordance with 
Sec. Sec.  11.26 and 11.27, respectively. Further, practitioners 
dissatisfied with a warning issued by the OED Director under Sec.  
11.21 may use the provisions of Sec.  11.2(e) to petition to invoke the 
supervisory authority of the USPTO Director in disciplinary matters.
    Comment 29: One comment suggested that Sec.  11.22(d) be amended to 
provide that the evidence the OED Director considers includes evidence 
indicating that a grievable offense did not occur.
    Response: It is unnecessary to mention in Sec.  11.22 that the OED

[[Page 47674]]

Director considers evidence tending to negate a finding that a 
violation occurred. The OED Director necessarily considers such 
evidence. Evidence tending to negate the occurrence of a violation is 
considered, for example, when an investigation is closed without a 
warning or taking disciplinary action as in Sec.  11.22(i)(1). The OED 
Director, when terminating an investigation under Sec. Sec.  
11.22(i)(2), 11.22(i)(3) and 11.22(i)(4), also may consider such 
evidence.
    Comment 30: One comment observed that Sec.  11.22(f)(1) would allow 
the OED Director to request financial books and records, including the 
nonpublic and proprietary records of a corporation or law firm, as well 
as attorney-client privileged information, and recommended limiting 
document inspection to an examination of escrow accounts and trust 
accounts for compliance with proposed Rule 11.115(a).
    Response: The suggestion to limit the rule to permitting inspection 
of only escrow and trust accounts has not been adopted. Records 
required to be kept by law are ``public records'' outside the scope of 
the Fifth Amendment protection. In Shapiro v. United States, 335 U.S. 
1, 68 S.Ct. 1375, 92 L.Ed. 1787 (1948), the court concluded that 
records and documents-sales invoices, sales books, ledgers, inventory 
records, contracts and sales records--required to be kept by valid 
regulations of the Office of Price Administration--could be subpoenaed 
by the Price Administrator without violating the individual's right 
against self-incrimination. The required records doctrine has been 
applied in numerous and various circumstances, including records an 
attorney is required to maintain pertaining to client funds. See, for 
example, Andresen v. Bar Association of Montgomery County, 305 A.2d 845 
(Md. 1973), cert denied, 414 U.S. 1065, 94 S.Ct. 572, 38 L.Ed.2d 470 
(1973). Under Sec.  10.112(c)(3), a practitioner is required to 
``maintain complete records of all funds, securities and other 
properties of a client coming into the possession of the 
practitioner.'' Regardless of the repository of client property, these 
are the financial records anticipated for review if issues arise as to 
the preservation and proper handling of client property.
    Comment 31: One comment suggested that Sec.  11.22(f) be amended to 
provide safeguards to ensure that information in disciplinary 
investigations will be kept secure and confidential, free from requests 
from other government agencies or from the public under the Freedom of 
Information Act.
    Response: The suggestion to amend Sec.  11.22(f) to provide 
safeguards to ensure the security and confidentiality of the received 
information has not been adopted as it is believed to be unnecessary. 
Section 11.22 need not provide safeguards because information collected 
in an investigation is placed into a Privacy Act system of records, in 
this case COMMERCE/PAT-TM-2, Complaints, Investigations and 
Disciplinary Proceedings Relating to Registered Patent Attorneys and 
Agents, published at 70 FR 69522. Further the Privacy Act of 1974, 5 
U.S.C. 552a, provides numerous protections for those records. Regarding 
the requests for release of these records under the Freedom of 
Information Act (FOIA), Privacy Act records may not be disclosed unless 
one of the subject parties of the record consents or one of twelve 
exceptions apply. One of the twelve exceptions provides for information 
that is releasable under FOIA. This is a statutory exception that 
cannot be altered by rule making. Generally, the information is 
protected from disclosure by FOIA exemptions 5 and 6. See 5 U.S.C. 
552(b)(5) and (6), respectively. Thus, the collected information is 
subject to the numerous protections of the Privacy Act, and will not be 
released to FOIA requests as provided for under current Federal law.
    Comment 32: One comment, pertaining to Sec.  11.23, objected to the 
Committee on Discipline drawing any adverse inference when finding 
probable cause against a practitioner if the inference is based solely 
upon that practitioner's refusal to produce information in response to 
a request for information by the OED Director. The comment addressed a 
statement in the ``Discussion of Specific Rules'' in the SNPR about the 
ability of the Committee to ``draw an adverse inference from the 
practitioner's refusal to provide information or records in determining 
whether probable cause exists to believe a disciplinary rule has been 
violated.'' 72 FR 9200.
    Response: While we appreciate an objection to a finding of probable 
cause if it is based solely on a practitioner's refusal to produce 
information, the ``Discussion of Specific Rules'' did not state that 
such a finding is justified where it is based ``solely'' on refusal to 
produce information in response to a request for information. During an 
investigation, a practitioner is given the opportunity to provide 
answers to a reasonable inquiry, and where appropriate, produce records 
that are not protected by the attorney-client privilege or other 
protections. When the practitioner refuses to answer or provide 
unprivileged information, the OED Director still has the burden of 
providing the members of the Committee panel with sufficient evidence 
to determine that there is probable cause to bring charges that 
practitioner engaged in conduct involving grounds for discipline. See 
Sec.  11.23(b)(1). When the OED Director provides such sufficient, 
uncontested evidence, the Committee panel may properly find probable 
cause relying on the evidence presented by the OED Director, inferences 
drawn from that evidence, as well as adverse inferences drawn from the 
practitioner's refusal to answer the inquiry or produce unprivileged 
information. A practitioner's reliance on the Fifth Amendment to not 
answer or provide information may not preclude such inferences. Baxter 
v. Palmigiano, 425 U.S. 308, 318, 96 S.Ct. 1551, 1558, 47 L.Ed.2d 810 
(1976) (``[T]he Fifth Amendment does not forbid adverse inferences 
against parties to civil actions when they refuse to testify in 
response to probative evidence offered against them.''); AGC, Maryland 
v. DiCicco, 802 A.2d 1014 (Md. 2002); In re Henley, 518 S.E.2d 418 (Ga. 
1999).
    Comment 33: Two comments expressed concern with regard to Sec.  
11.22(f)(2) that a client may waive the attorney-client privilege, as 
well as related protections by disclosing information to the OED 
Director. One comment suggested adding the following sentence to Sec.  
11.22(f)(2): ``The OED Director shall not request information or 
evidence from a non-grieving client absent either written consent of 
the practitioner or a signed acknowledgement from the non-grieving 
client acknowledging that complying with the request could jeopardize 
the privileged or confidential nature of information disclosed to the 
OED Director as well as other information on the same subject.'' Both 
comments suggested that in any request of a non-grieving client to 
provide information to the Office, the request be accompanied by a 
notice clearly warning that disclosure to the Office could waive any 
attorney-client privilege or other protection.
    Response: The suggestion in the comment to add a sentence to Sec.  
11.22(f)(2) requiring a signed acknowledgement of the non-grieving 
client has not been adopted. Requiring the OED Director to obtain the 
written consent of the client before requesting information would not 
only make investigations inefficient, but also unduly complicate an 
investigation. By having to first obtain the non-grieving client's 
written consent, the process of

[[Page 47675]]

requesting and obtaining the consent would be time-consuming. It also 
provides a practitioner with an opportunity to communicate and dissuade 
the client from cooperating with the investigation, and otherwise 
obstruct the investigation. Requesting information and documents from 
practitioners, as well as from non-grieving clients is intended to 
enable the OED Director, and ultimately the Office, to efficiently and 
effectively ascertain whether grounds for disciplining a practitioner 
exist. The OED Director, when requesting information from complaining 
clients of lawyers or registered patent agents, has frequently informed 
the clients that providing the requested information may waive 
attorney-client privilege or other protection. The Office will expand 
the practice to any occasion when the OED Director requests a non-
grieving client to provide information by accompanying the request with 
a notice clearly warning that disclosure to the Office could waive any 
attorney-client privilege or other protection.
    Comment 34: A comment suggested, presumably with regard to Sec.  
11.22, that provision be made for an appeals mechanism, such as Rule 31 
of the Model Rules of Lawyer Disciplinary Enforcement, whereby a 
grievant who is dissatisfied with the disposition of a matter by the 
OED Director may seek review, within a specified period, by an 
authority which may approve, modify or disapprove the dismissal, or 
direct that the matter be investigated by the OED Director.
    Response: It is unnecessary to provide an appeal mechanism limited 
to enabling a grievant, dissatisfied with the disposition of a matter, 
to obtain review of the matter. The provisions of Sec.  11.2(e) for a 
petition to invoke the supervisory authority of the USPTO Director in 
disciplinary matters provide the suggested mechanism without addition 
of another rule. Grievants will be informed of the mechanism under 
Sec.  11.2(e) whereby they may obtain review of the disposition of the 
matter they grieve.
    Comment 35: One comment suggested that the Office should avoid 
devotion of time and effort to investigating regarding ``importune 
grievances'' by amending Sec.  11.22(h)(2) to add ``, such as matters 
arising in proceedings in Federal or state courts of original or 
appellate jurisdiction or other tribunals not within the Office.''
    Response: The suggestion to add language to Sec.  11.22(h)(2) to 
provide that ``matters arising in proceedings in Federal or state 
courts of original or appellate jurisdiction or other tribunals [are] 
not within the Office'' has not been adopted. Neither the grounds for 
discipline, nor the jurisdiction of the Office to discipline 
practitioners is limited to conduct occurring ``within the Office.'' 
The grounds for discipline include conduct that may involve proceedings 
in Federal or state courts or other tribunals, such as conviction of a 
serious crime, discipline on ethical grounds imposed in another 
jurisdiction, disciplinary disqualification from participating in or 
appearing before any Federal program or agency, and failure to comply 
with any order of a court disciplining the practitioner.
    Comment 36: One comment opined that Sec.  11.22(h)(4) can be read 
to unduly limit the circumstances under which the OED Director can 
close an investigation, and suggested that it be broadened by revising 
the section to read as follows: ``There is insufficient clear and 
convincing evidence for a reasonable fact finder to conclude that there 
is probable cause to believe that grounds exist for discipline.''
    Response: The suggestion to add language to Sec.  11.22(h)(4) to 
provide that there must be ``insufficient clear and convincing 
evidence'' has not been adopted. The suggested language actually limits 
the circumstances under which the OED Director, with the concurrence of 
the Committee on Discipline, may bring a disciplinary action by raising 
the level of proof from ``probable cause'' to ``clear and convincing.'' 
The burden of proof before a grand jury to initiate a criminal 
proceeding is ``probable cause,'' not ``clear and convincing 
evidence.'' Moreover, there is nothing in the language of Sec.  
11.22(h)(4) that should be understood or construed as permitting the 
``clear and convincing evidence'' standard to be read into this 
section.
    Comment 37: One comment recommended that the panels of the 
Committee on Discipline referenced in Sec.  11.23(a) not exceed three 
members, and, citing the McKay Report,\1\ that each panel have a 
majority of non-Office employee members, and that no panel should 
function without one attorney practitioner member and one registered 
patent agent member. Another comment suggested that one member of the 
Committee be required to be a member of the public with experience 
representing clients before the Office.
---------------------------------------------------------------------------

    \1\ In 1968, the American Bar Association (ABA) established the 
Clark Committee (chaired by former U.S. Supreme Court Justice Tom 
Clark). The Clark Committee issued its Report, PROBLEMS AND 
RECOMMENDATIONS IN DISCIPLINARY ENFORCEMENT (Clark Report), 1 
(1970). In 1989, the ABA established the McKay Commission (chaired 
by former N.Y.U. Law School Dean Robert B. McKay) to examine the 
effects of the Clark Report and to study additional reforms. The 
McKay Commission's Report, LAWYER REGULATION FOR A NEW CENTURY 
(1992) is referred to as the McKay Report.
---------------------------------------------------------------------------

    Response: The recommendation that the Committee on Discipline 
panels not exceed three members is consistent with the rule as 
proposed, and no change to the last sentence of Sec.  11.23(a) appears 
necessary.
    The suggestions to require one or more non-Office employees or a 
member of the public to be on the Committee on Discipline have not been 
adopted as they are highly impractical for several reasons. First, 
adjudication of disciplinary proceedings is considered to be an 
inherently governmental function and the Federal Government may not 
contract for inherently governmental functions. See generally Federal 
Acquisition Regulation Part 7.5, and specifically Sec.  7.503(c)(2). 
Further, there must be a mechanism to compensate those serving on the 
panel. It is impermissible to contract to pay the non-government 
employee panel members. In addition, even if it were permissible to add 
panel members by contract, such an arrangement would necessitate 
approval of a charter for the arrangement under the Federal Advisory 
Committee Act. The Federal Advisory Committee Act prohibits a 
collaborative group that is established or utilized by the government 
to provide advice or recommendations to an agency unless a charter is 
approved by the General Services Administration. See 5 U.S.C. App 2 
section 1 et seq. Even if a charter is approved, the non-government 
employee panel members may provide only advice or recommendations; they 
may not adjudicate whether there is probable cause to bring 
disciplinary action against a practitioner.
    An alternative approach to paying the members would be to make the 
private practitioners Special Government Employees (SGEs) during their 
period of service. See 18 U.S.C. 202. As SGEs, the practitioners would 
be Government employees during their period of service, and the Federal 
Advisory Committee Act would no longer apply. The Committee panels 
would then be groups comprised solely of Government employees, which 
are not subject to the Federal Advisory Committee Act. See 41 CFR 102-
3.40(h). Appointment of private practitioners as SGEs would require a 
Federal statute creating such authority. For example, Patent Public 
Advisory Committee members may be appointed as SGEs under the authority 
of 35 U.S.C. 5. Currently the Office has no such statutory authority. 
Again, the non-government employee panel

[[Page 47676]]

members may provide only advice or recommendations; they may not 
adjudicate whether there is probable cause to bring disciplinary action 
against a practitioner.
    However, this solution has a significant drawback. Private 
practitioners would be subject to many of the ethical rules of 
Government employees during their periods of service. See generally 
Summary of Government Ethics Rules for SGEs, Justice Management 
Division, February 6, 2006. Practitioners serving for greater than 60 
days in the proceedings 365 days would be prohibited from receiving 
fees for representing anyone with a matter pending before the 
Government, and from acting as an attorney or agent for a party 
pursuing a claim, such as a patent application, before the Government. 
See 18 U.S.C. 203 and 205, respectively. While SGEs may serve up to 130 
days in any 365-day period, the restrictions of 18 U.S.C. 203 and 205 
are triggered at the 60-day point. Practitioners would be effectively 
barred from patent and trademark work by this provision. Additionally, 
the arrangement is not beneficial to the Office. If members of the 
panel could only serve 60 days or less in a year, the Office would have 
to find and appoint members frequently, and panel members would not 
develop the expertise that comes with lengthier service.
    Second, including panel members from private practice would be 
extremely difficult due to screening for conflicts of interest. For 
example, if practitioner Smith is subject to review by a Committee 
panel, it is necessary to screen for conflicts between Smith and the 
panel members, and disclosure of the practitioner's identity of the 
panel members from private practice to ascertain such conflicts could 
violate the Privacy Act, as discussed below. Further, it would be 
necessary to ensure that panel members from private practice are 
impartial, for example, that they do not represent clients with 
interests adverse to Smith's clients. The Office does not know, and 
cannot compel Smith to disclose, the names of all of Smith's clients to 
facilitate a conflicts check of panel members from private practice. 
Even if Smith's clients were known, this could result in review of 
lists involving hundreds of clients. Using Office employees as panel 
members avoids this significant workload.
    Third, while the McKay Report does urge that disciplinary officials 
be independent, the report does not specifically urge that those who 
administer discipline be non-government employees. Rather, the 
recommendation for independence of disciplinary officials rests in 
distinguishing judicial regulation from self-regulation, not 
distinguishing employees from non-employees. See the McKay Report at 
recommendations 1, 5, and 6. The two primary reasons cited by the McKay 
Report are one, that the disciplinary process should be directed solely 
by disciplinary policy and not influenced by the politics of bar 
associations, and two, that the process be free from even the 
appearance of conflicts of interest or impropriety. See the McKay 
Report, introduction to recommendations 5 and 6. Neither of these 
factors suggests non-government employees have greater independence 
than employees. Further, the McKay Report is focused on judicial 
regulation of disciplinary systems to avoid self-regulation by state 
bars, whereas attorneys and agents practicing before a Federal 
administrative agency are regulated by that agency.
    The McKay Report criticizes self-regulation of the legal 
profession. Including private practitioners as members of the Office's 
Committee on Discipline adds an element of self-regulation. The 
practitioners, who could only serve a limited number of days per year, 
would remain a part of private practice, and would have less 
independence than the full-time employees of the Office.
    In addition to the foregoing, release of information regarding an 
investigation to a member of the public on a panel would be 
inconsistent with the Privacy Act, 5 U.S.C. 552a. There are twelve 
exceptions under the Freedom of Information Act whereby information may 
be released with authorization. To the extent the suggestion 
contemplates attorneys and patent agents employed by other Government 
agencies, implementation would be operationally impractical. In view of 
the comments, the Office also considered and rejected having one or 
more members of the public serving in an advisory role to the panels as 
the panels consider whether there is probable cause. The Office 
appreciates the benefits that could accrue from including members of 
the public on the panels, including an increased credibility of the 
disciplinary process in the eyes of the public. There are a number of 
reasons the suggestions are not feasible. As already noted, non-
employees may not make inherently governmental decisions, such as 
finding probable cause to bring disciplinary proceedings thereby 
authorizing the proceedings to be initiated. Disclosure of the 
grievances, investigation files and deliberations to members of the 
public is not authorized as a routine use of the system of records 
under which these documents are maintained, and is inconsistent with 
the Privacy Act. Further, no practical or feasible means is apparent or 
suggested for adequately screening the public for conflicts of interest 
with the practitioner and the practitioner's clients before disclosing 
records or information to the member of the public. The Office does not 
know all the clients of a practitioner and the members of the public, 
or even prior relationships between the practitioner and member of the 
public. Therefore, the Office could not ascertain the existence of 
potential or actual conflicts without obtaining the information 
voluntarily from each party, which is unlikely to occur. Therefore 
requiring a member of the public to be on each panel is neither legally 
nor realistically possible. The Office is considering establishing an 
advisory committee for the OED Director to provide advice regarding 
enrollment and disciplinary matters and will seek public input into the 
formation and role of such a committee.
    Comment 38: One comment suggested that language be inserted in 
Sec.  11.23 to provide that a complaint should not be approved unless 
sufficient probable cause exists for a fact finder to conclude ``by 
clear and convincing evidence'' that a violation has occurred.
    Response: The suggestion to add ``by clear and convincing 
evidence'' to Sec.  11.23 has not been adopted. The Office has used, 
and continues to use, a probable cause standard to initiate a 
disciplinary action. The ``probable cause'' standard differs from, and 
is not inclusive of, the ``clear and convincing evidence'' standard. A 
complaint is approved only after the Committee on Discipline, 
independent of the OED Director, reviews the record and information 
provided by the OED Director. A disciplinary proceeding is instituted 
under Sec.  11.34 when the OED Director files a complaint, and the OED 
Director thereafter has the burden of proving the case against a 
practitioner by clear and convincing evidence. Use of the probable 
cause standard, as opposed to a ``clear and convincing evidence'' 
standard to initiate a disciplinary proceeding is appropriate. The 
Office, like the states and the District of Columbia, complies with due 
process standards applicable to administrative enforcement proceedings. 
All or most of the procedures specified in the ABA's Model Rules for 
Lawyer Disciplinary Enforcement, which were devised in light of 
applicable due process and similar constraints, have been followed

[[Page 47677]]

by many states. Under those rules a screening body, independent of the 
disciplinary counsel, determines whether probable cause exists 
warranting formal charges. See Restatement (Third) of the Law Governing 
Lawyers Current through August 2007, Chapter 1, Regulation Of The Legal 
Profession, Topic 2, Process Of Professional Regulation, Title C, 
Professional Discipline Introductory Note. Probable cause is sufficient 
to institute civil proceedings. See Professional Real Estate Investors, 
Inc. v. Columbia Pictures Industries, Inc., 508 U.S. 49, 63, 113 S.Ct. 
1920, 1929 (1993) (``Probable cause to institute civil proceedings 
requires no more than a `reasonabl[e] belie[f]' that there is a chance 
that [a] claim may be held valid upon adjudication'' quoting Hubbard v. 
Beatty & Hyde, Inc., 178 N.E.2d 485, 488 (Mass. 1961)). A probable 
cause determination is not a constitutional prerequisite to a charging 
decision in a criminal matter. Gerstein v. Pugh, 420 U.S. 103, 123, 95 
S.Ct. 854, 868 (1974). Therefore, probable cause is an appropriate 
standard for the Office to use to initiate disciplinary proceedings.
    Comment 39: One comment suggested with regard to Sec.  11.23(b) 
that the OED Director be required to present to the Committee on 
Discipline evidence that tends to negate the conclusion that a 
disciplinary violation occurred by inserting the phrase ``including 
evidence that tends to negate the conclusion that a violation has 
occurred.''
    Response: The suggestion to insert the phrase ``including evidence 
that tends to negate the conclusion that a violation has occurred'' 
into Sec.  11.23(b)(1) has not been adopted. The Office agrees and 
follows the practice suggested by the comment. That is, the 
investigation file is available to the Committee as it considers all 
the available evidence. It long has been the OED Director's practice to 
make available to the Committee the entire investigation file, 
including every statement and document the practitioner has presented 
to explain his or her conduct. Thus, the Committee has the opportunity 
to consider evidence negating the conclusion that a disciplinary 
violation occurred and the insertion of the phrase is unnecessary.
    Comment 40: One comment recommended that the provisions of Sec.  
11.24 be expanded to permit reciprocal disciplinary proceedings to also 
be initiated upon notice that a practitioner has been subject to public 
censure or public reprimand, probation, or placed on disability 
inactive status by a state or by a Federal court.
    Response: The recommendation to expand reciprocal disciplinary 
procedures to circumstances when a practitioner has been subjected to 
public censure or public reprimand, probation, or placed on disability 
inactive status has been adopted in part. The phrase ``publicly 
censured, publicly reprimanded, subjected to probation,'' has been 
inserted in the first sentence of Sec.  11.24(a) after ``being'' (first 
occurrence) and before ``disbarred.'' The same or similar language has 
been inserted into the third and fourth sentences of Sec.  11.24(a), as 
well as in sections 11.24(b), 11.24(b)(1), 11.24(b)(3), 11.24(c), 
11.24(d), 11.24(d)(1)(iii), 11.24(d)(1)(iv), 11.24(e), and 11.24(f) to 
enable the sections to be consistent in scope and application.
    The recommendation to include practitioners placed on disability 
inactive status by a state or by a Federal court has not been adopted. 
Typically, states provide that where a lawyer has been judicially 
declared incompetent or committed to a mental hospital after a judicial 
hearing, or where a lawyer has been placed by court order under 
guardianship or conservatorship, or where a lawyer has been transferred 
to disability inactive status in another jurisdiction, the state's 
highest court, upon proper proof of the fact, is authorized to enter an 
order transferring the lawyer to disability inactive status. A copy of 
the order must be served, in the manner the court may direct, upon the 
lawyer, his or her guardian or conservator, and the director of the 
institution to which the lawyer is committed. In some jurisdictions, 
the court suspends the lawyer instead of transferring the lawyer to 
disability inactive status. While the nature of the proceeding is 
protective of the public, in no sense is the proceeding disciplinary in 
nature. Accordingly, it would be inappropriate to include a court's 
placement of a practitioner on disability inactive status in a 
reciprocal disciplinary rule.
    The Office does share the concern implicit in the comment that a 
practitioner placed on disability inactive status may not be competent 
to represent others before the Office. Therefore, a practitioner who 
has been suspended or placed on disability inactive status in another 
jurisdiction should not continue to practice before the Office unless 
and until the practitioner is restored to active status in the 
jurisdiction where the practitioner first obtained disability inactive 
status.
    Comment 41: Several comments suggested that the scope of crime 
required by the first sentence of Sec.  11.25(a) to be reported is too 
broad. One comment queried whether particular conduct, such as jay 
walking and traffic offenses, would be included. One comment suggested 
that the administrative burden of requiring practitioners to report and 
the OED Director to process crimes as trivial as traffic violations 
dictates that a notification requirement encompassing a narrower scope 
of convictions should be adopted, and recommended adopting a 
notification rule requiring notification of ``serious crimes'' 
excluding ``misdemeanor traffic offenses or traffic ordinance 
violations, not including the use of alcohol or drugs.''
    Response: The recommendation to narrow the scope of crimes 
reportable upon conviction has not been adopted. The definition of 
crime in Sec.  11.1 provides the public with notice of the criminal 
conduct that must be reported to the OED Director upon conviction. The 
burdens on practitioners and the OED Director are reasonable. The 
Office, unlike state courts that adopt disciplinary procedure rules, 
cannot direct court clerks, judges or prosecuting attorneys to report 
the criminal conviction of an attorney or registered patent agent to 
the Office. A number of jurisdictions require attorneys to self-report 
that they have been found guilty of a crime or plead guilty to a 
criminal charge. For example, see Rule IX, Section 10(a) of the rules 
governing the District of Columbia Bar. The scope of reportable crimes 
in the first sentence of Sec.  11.25(a) should be broad and expansive, 
as it is simply information that the OED Director should have available 
in the OED Director's continuing responsibility to oversee the good 
moral character of a practitioner and fitness in other respects 
necessary to continue to have the privilege to continue in the practice 
before the Office. If the crime is not a ``serious crime,'' the OED 
Director will process the matter in the same manner as any other 
information coming to the attention of OED.
    Comment 42: One comment suggested, with regard to Sec.  11.25, that 
a ``serious crime'' violating some Federal or State law includes all 
``crimes'' because Sec.  11.1 defines ``crime'' as including ``any 
offense declared to be a felony by Federal or State law'' and a 
violation of foreign law is only a ``serious crime'' and never a 
``crime.'' The comment also suggested that if any felony is a ``serious 
crime,'' the reporting requirement may be too broad and 
administratively burdensome, and recommended limiting the reporting 
requirement to ``crimes involving moral turpitude,'' deleting the 
definition of

[[Page 47678]]

``serious crimes,'' and including violations of foreign laws as 
``crimes.''
    Response: The suggestions regarding ``serious crime'' have not been 
adopted. While a ``criminal offense classified as a felony under the 
laws of the United States, or any state * * * where the crime 
occurred'' is, by definition in Sec.  11.1, a ``serious crime,'' all 
crimes are not serious crimes. For example, numerous criminal offenses 
under the laws of the United States and states are misdemeanors, not 
felonies. Only certain types of misdemeanors may qualify as a ``serious 
crime.'' By definition, a misdemeanor is a serious crime only if a 
necessary element of the crime ``includes interference with the 
administration of justice, false swearing, misrepresentation, fraud, 
willful failure to file income tax returns, deceit, bribery, extortion, 
misappropriation, theft, or an attempt or a conspiracy or solicitation 
of another to commit a `serious crime'.'' See Sec.  11.1, ``Serious 
Crime.'' As not all misdemeanors involve any of the foregoing elements, 
not all misdemeanors can be a serious crime, and not every crime that 
violates some Federal or State law is a ``serious crime.'' Likewise, a 
violation of foreign law is not necessarily a ``serious crime.'' For 
example, to be a serious crime, the foreign law violated must be a 
criminal law that is classified as a felony in the foreign country. The 
second sentence of Sec.  11.25(a) distinguishes between ``serious 
crimes,'' as the triggering event for Reciprocal Discipline, and 
``crime,'' as it refers to the self-reporting aspect of the first 
sentence of Sec.  11.25(a). The definition of ``serious crime'' is 
necessarily a higher standard than the definition of ``crime.'' The 
higher threshold for ``serious crime'' conduct is beyond that for which 
there is a continuing presumption of fitness. It follows that the 
reporting requirement is neither too broad nor administratively 
burdensome. Conviction of a ``serious crime'' overcomes and thereby 
triggers an immediate or expedited review of such conduct to protect 
the public, the profession and the Office from unfit and unacceptable 
practitioners by the imposition of discipline in an expedited fashion. 
Unlike ``moral turpitude,'' the definition of serious crime identifies, 
by an objective standard, crimes for which interim suspension is 
appropriate.
    Comment 43: One comment took issue with Sec.  11.25(c) providing a 
practitioner with forty days to challenge the appropriateness of the 
entry of interim suspension where the practitioner has been convicted 
of a serious crime. The comment pointed out that given the 
conclusiveness of the criminal conviction under Sec.  11.25(c), a long 
response time is not warranted in these cases because delay in these 
proceedings risks harm to the public.
    Response: The suggestion has been adopted to shorten the time a 
practitioner subject to interim suspension proceedings for conviction 
of a serious crime has to challenge the appropriateness of the entry of 
such a suspension. The Office concurs that a long response time is not 
warranted in these cases because delay in these proceedings risks harm 
to the public. Inasmuch as some registered practitioners are located 
abroad, adequate time must be provided to receive and reply to the 
notice. Accordingly, the reply period has been changed in Sec.  
11.25(b)(2)(iii) to thirty days, which is the same time provided for 
responding to a complaint in a disciplinary proceeding.
    Comment 44: One comment noted a typographical error in the first 
sentence of Sec.  11.26 when reference should have been made to Sec.  
11.34 instead of Sec.  11.24.
    Response: The suggestion to change the reference in the first 
sentence of Sec.  11.26 from Sec.  11.24 to Sec.  11.34 has been 
adopted.
    Comment 45: One comment recommended that Sec.  11.34 require that 
the complaint list the specific PTO Rule(s) allegedly violated by 
adding the phrase ``including citation to every imperative USPTO Rules 
of Professional Conduct allegedly violated'' to the end of Sec.  
11.34(a)(2).
    Response: The recommendation to require the complaint to list the 
specific Office Rules of Professional Conduct that are alleged to be 
violated has not been adopted, as it is unnecessary. Listing the rules 
allegedly violated is provided for in Sec.  11.34(b), which requires 
the complaint ``fairly informs the respondent of any grounds for 
discipline, and where applicable, the Mandatory Disciplinary Rules 
identified in Sec.  10.20(b) of Part 10 of this Subsection that form 
the basis for the disciplinary proceeding.'' It is, and has long been, 
the practice to specifically list the Office rules allegedly violated 
by the practitioner's conduct.
    Comment 46: Two comments urged the time provided in Sec.  11.36(a) 
for answering a complaint should be measured from the date the 
complaint is served on the respondent, rather than the date it is filed 
to assure that respondents have an appropriate time within which to 
answer a complaint.
    Response: The suggestion to revise the time for filing an answer to 
be measured from the date the complaint is served has not been adopted. 
The current procedure used in disciplinary proceedings, measuring the 
time for filing an answer from the date the complaint is filed, is the 
same procedure used for prosecution of patent and trademark matters. 
Practitioners are familiar with the procedure, and practitioners may 
and do obtain extensions of time to file an answer. No difficulties 
have arisen with its operation in disciplinary matters. The current 
procedure provides all parties with a date certain from which to 
measure when a response is due. Inasmuch as service of the complaint 
may be by mail, and not all complaint recipients sign for delivered 
mail, changing the period to be measured from the date of service would 
necessitate elimination of service by first class mail. It has not been 
apparent that any benefit currently unavailable would be obtained by 
the change.
    Comment 47: Two comments urged, presumably with regard to Sec.  
11.39, that the USPTO Director adopt a policy of always appointing 
administrative law judges as hearing officers to maintain the requisite 
independence of the process.
    Response: The Office appreciates and understands the need for the 
hearing officer to be independent. The Patent Statute provides that the 
USPTO ``Director shall have the discretion to designate any attorney 
who is an officer or employee of the United States Patent and Trademark 
Office to conduct the hearing required by this section.'' See 35 U.S.C. 
32. Accordingly, the provisions of Sec.  11.39(a) have been written to 
be consistent with the statute. The USPTO's current practice is to use 
administrative law judges from EPA as the hearing officer in 
disciplinary matters; however, the statute does not require 
administrative law judges from outside the agency be employed. 
Furthermore, a hearing officer cannot be subject to first level or 
second level supervision by either the USPTO Director or OED Director, 
or his or her designee. See Sec.  11.39(b). Thus, where an employee of 
the Office is appointed under 35 U.S.C. 32 to conduct a disciplinary 
proceeding, the employee cannot be subject to first level or second 
level supervision by either the USPTO Director or OED Director, or his 
or her designee.
    Comment 48: One comment suggested amending Sec.  11.43 to provide 
for ``motions, including all prehearing motions commonly filed under 
the Federal Rules of Civil Procedure, shall be filed with the 
administrative law judge.''
    Response: The suggestion presumably pertains to the first sentence 
of Sec.  11.43, which provided that ``[m]otions shall be filed with the 
hearing officer.'' The

[[Page 47679]]

suggestion has been adopted to the extent that the phrase ``, including 
all prehearing motions commonly filed under the Federal Rules of Civil 
Procedure, shall'' has been substituted for ``may'' in the first 
sentence of Sec.  11.43. Inasmuch as this section, as well as sections 
11.39, 11.41, and other sections, reference a hearing officer, the 
suggestion to limit the applicability of this section to an 
administrative law judge has not been accepted.
    Comment 49: One comment urged that Sec.  11.44 be amended to 
require an oral hearing before the hearing officer should the 
practitioner request one in writing. The comment suggested that a 
practitioner should have, and probably constitutionally does have, an 
absolute right to have a hearing to confront witnesses and present 
evidence.
    Response: The comment that the hearing officer not have authority 
to overrule a practitioner's request for an oral hearing is 
unpersuasive. The argument presumes that there are genuine issues of 
material fact. Under Sec.  11.44, an oral hearing would occur where 
there is a genuine issue of material fact. However, an oral hearing 
would be unnecessary where, for example, there is a settlement, or the 
practitioner fails to file an answer and the hearing officer enters an 
order default judgment. Similarly, an oral hearing is unnecessary if a 
summary judgment is appropriate and entered. ``The case law in this 
Circuit is clear that an agency is not required to hold an evidentiary 
hearing where it can serve absolutely no purpose. In such a 
circumstance, denial of a hearing may be proper even though the statute 
provides for adjudicatory proceedings. The agency, however, carries a 
heavy burden of persuasion.'' Indep. Bankers Assoc. of Georgia v. Bd. 
Of Governors of the Fed. Reserve System, 516, F.2d 1206, 1120 (D.C. 
Cir. 1975). See also Altenheim German Home v. Turnock, 902 F.2d 582, 
585 (7th Cir. 1990) (there is no right to an evidentiary hearing unless 
there is a genuine issue of material fact); Consolidated Oil & Gas. v. 
FERC, 806 F.2d 275, 279 (DC Cir. 1986) (quoting Municipal Light Boards 
v. FPC, 450 F.2d 1341, 1345 (D.C. Cir. 1971), cert. denied, 405 U.S. 
989, 92 S.Ct. 1251, 31 L.Ed. 455 (1972)) (``An agency may dispose of a 
controversy on the pleadings without an evidentiary hearing when the 
opposing presentations reveal that no dispute of fact is involved * * 
*''); Puerto Rico Aqueduct Sewer Auth. v. USEPA, 35 F.3d 600, 608 (1st 
Cir. 1994) (quoting John D. Companos & Sons, Inc. v. FDA, 854 F.2d 510, 
552 (D.C. Cir. 1988)) ``Summary judgment may be entered not only for 
failure to comply with precise regulations, but also `on the basis of 
manifest noncompliance with general statutory or regulatory provisions 
* * *' ''. Clearly, a practitioner who has entered into a settlement, 
failed to answer a properly served complaint, or failed to raise a 
genuine dispute of material facts should not have an absolute right to 
an oral hearing to confront witnesses and present evidence.
    Comment 50: One comment stated that Sec.  11.44(c) conflicts with 
long-standing policy of the American Bar Association that disciplinary 
proceedings be public. The policy is set forth in Rule 16(C) of the 
Model Rules of Lawyer Disciplinary Enforcement (MRLDE). Section 
11.44(c) proposed that disciplinary proceedings, in effect, be public 
at the election of the respondent. The comment pointed out that 
mistrust that can develop when a governmental function is not 
functioning openly--even when it is functioning well. The comment 
acknowledged the need for confidentiality of matters prior to the 
filing and service of a petition for discipline to protect the 
respondent from publicity regarding unfounded accusations, that by 
keeping the investigative process confidential, the Office ensures that 
allegations of misconduct will continue to be thoroughly investigated 
and scrutinized, and that a case will not proceed if the allegations 
are frivolous or there is a lack of sufficient evidence of wrongdoing 
to warrant the initiation of disciplinary proceedings under Sec. Sec.  
11.32 and 11.34. The comment further stated that once a finding of 
probable cause has been made, there is no longer a danger that the 
allegations against the practitioner are frivolous. The comment also 
recommended the addition of provisions providing for the imposition of 
protective orders where necessary set forth in Rule 16(E) of the MRLDE 
to address valid concerns regarding confidential and privileged 
information.
    Response: The recommendation to adopt the provisions of Rules 16(C) 
and 16(E) of the MRLDE has not been adopted. The recommended change is 
not a logical extension of the rule proposed in Supplemental Notice of 
Proposed Rule Making on February 28, 2007, in the Federal Register (72 
FR 9196). However, the recommendation will be further considered and 
public comment solicited to address a rule that would adopt the 
provisions of Rules 16(C) and 16(E) of the MRLDE.
    Comment 51: Two comments suggested that the hearing officer's 
authority to exclude evidence under Sec.  11.50(a) should be expanded 
from excluding ``irrelevant, immaterial, or unduly repetitious'' 
evidence to authority to exclude evidence if its ``probative value is 
substantially outweighed by the danger of unfair prejudice, confusion 
of the issues, or by considerations of undue delay, waste of time, or 
needless presentation of cumulative evidence.'' This is the standard 
that applies under Fed. R. Evid. 403. One comment suggested that the 
Federal Rules of Evidence should apply, given the final appeal to the 
U.S. District Court for the District of Columbia. Another comment 
suggested that the Office follow Rule 18 of the American Bar 
Association's Model Rules of Lawyer Disciplinary Enforcement to provide 
for the applicability of state rules of evidence in disciplinary 
proceedings, except as otherwise provided in the Office rules.
    Response: The suggestions to modify Sec.  11.50 have not been 
adopted. The language in Sec.  11.50, ``Agency may exclude evidence 
that is irrelevant, immaterial, or unduly repetitious,'' is derived 
from 5 U.S.C. 556(d). The explanation the Office provided in 1985 for 
not adopting the same or similar suggestions still obtains and is 
reproduced below.
    ``The PTO has explained in both the advance notice (49 FR 10020, 
column 2) and the notice of proposed rule making (49 FR 33801, columns 
1 and 2) why it cannot adopt the Federal Rules of Evidence in 
disciplinary cases. The `Federal Rules of Evidence * * * do not apply 
to administrative proceedings * * *.' Davis, Administrative Law 
Treatise, Sec.  14.01 (Supp. 1970). The controlling law is set out in 5 
U.S.C. 556(d) which provides in part: `Any oral or documentary evidence 
may be received, but the agency as a matter of policy shall provide for 
the exclusion of irrelevant, immaterial, or unduly repetitious 
evidence. A sanction may not be imposed or rule or order issued except 
on consideration of the whole record or those parts thereof cited by 
an[y] party and supported by and in accordance with the reliable, 
probative, and substantial evidence.' It appears to be the concern of 
some of the comments that the Administrative Procedure Act does not 
articulate an appropriate standard of evidence and that hearsay may be 
admitted. Suffice it to say that many adjudications occur daily under 
the Administrative Procedure Act, including disciplinary proceedings. 
The following language appearing in an opinion of the Eleventh Circuit 
in TRW-United Greenfield Division v. National Labor Relations Board, 
716 F.2d 1391, 1994 (11th Cir. 1983), may be helpful:


[[Page 47680]]


    ``At the hearing the ALJ refused to allow five additional 
employees to testify that other employees `told them that such a 
statement had been made. TRW contends it was denied a full and fair 
hearing by the exclusion of this testimony. The general rule is that 
administrative tribunals are not bound by the strict rules of 
evidence governing jury trials. Opp Cotton Mills, Inc. v. 
Administrator of Wage & Hour Div., 312 U.S. 126, 155, 61 S.Ct. 524, 
537, 85 L.Ed. 624 (1971). Thus, the admission of testimony which 
would be deemed incompetent in judicial proceedings would not 
invalidate the administrative order. Tagg Bros. & Moorhead v. United 
States, 280 U.S. 420, 442, 50 S.Ct. 220, 225, 74 L.Ed. 524 (1930). 
But this assurance of a desirable flexibility in administrative 
procedure does not go so far as to justify orders without a basis in 
evidence having rational probative force. Mere uncorroborated 
hearsay or rumor does not constitute substantial evidence. 
Consolidated Edison Co. v. N.L.R.B., 305 U.S. 197, 230, 59 S.Ct. 
206, 217, 83 L.Ed. 126 (1938). Therefore, the hearsay testimony of 
other employees would not have amounted to substantial evidence 
sufficient to support a finding for the company. We find that TRW 
was not denied a full and fair hearing by the judge's refusal to 
admit hearsay testimony.'
    ``See also Steadman v. Securities and Exchange Commission, 450 
U.S. 91, 98 n.17 (1981); Richardson v. Perales, 402 U.S. 389, 410-
411 (1971); Brown v. Gamage, 377 F.2d 154, 158 (D.C. Cir.), cert. 
denied, 389 U.S. 858 (1967); Annotation, Hearsay Evidence In 
Proceedings Before Federal Administrative Agencies, 6 ALR Fed 76 
(1971); and Davis, Hearsay in Administrative Proceedings, 32 Geo. 
Wash. L. Rev. 689 (1964).''

    Comment 52: One comment took issue with the last sentence of Sec.  
11.51(b), which permits the hearing officer to refuse to admit 
deposition testimony that both the OED Director and the practitioner 
agree is admissible. The comment suggested that the phrase ``Unless the 
parties agree otherwise,'' be placed at the beginning of the last 
sentence.
    Response: The suggestion to permit deposition testimony to be 
entered into the record if the parties agree has not been adopted. The 
rules should not limit the ability of the hearing officer to handle the 
proceedings, especially if the officer finds a reasonable basis to 
believe that the demeanor of the witness is involved.
    Comment 53: One comment objected to the provision in Sec.  11.52(e) 
permitting the hearing officer to decide not to require pretrial 
disclosures of witnesses, exhibits, and the like. The comment urged 
that pre-trial disclosures should be mandatory absent either agreement 
of the parties to waive pre-trial disclosures or a showing of ``good 
cause'' by a party seeking to avoid them by replacing the phrase ``The 
hearing officer may'' with ``Absent good cause shown, the hearing 
officer shall''.
    Response: The suggestion that Sec.  11.52(e) be amended to remove 
the hearing officer's discretion to require pretrial disclosure has not 
been adopted. This section should not limit the ability of the hearing 
officer under Sec.  11.39(c) to manage the hearing, including whether 
to require pretrial disclosures. In proceedings under former Sec.  
10.152(e), administrative law judges frequently required pretrial 
disclosures in proceedings. The provisions of Sec.  11.52(e) are not 
inconsistent with some states.
    Comment 54: One comment said that Sec.  11.52(f), which provides 
that after a witness testifies for a party, if the opposing party 
requests, the party may be required to produce, prior to cross-
examination, any documents relied upon by the witness in giving his or 
her testimony, is a burdensome discovery, which will only delay the 
proceedings, and suggested deletion of this section.
    Response: The suggestion to delete Sec.  11.52(f) has been adopted. 
In addition to the lack of a definition of ``written statement,'' the 
provision could be burdensome for both parties. For example, if a 
witness studied a ``written statement'' several days before the hearing 
and did not bring it to the proceeding, the hearing officer could grant 
a recess to allow the party to get the statement and provide the 
opposing party time to review the statement before the witness is 
cross-examined. The proceeding should not be so prolonged for each 
witness. However, the deletion of this subsection should not be 
construed as prohibiting the hearing officer from exercising discretion 
to assure a fair hearing. For example, after a witness testifies for a 
party, the hearing officer may grant the opposing party's motion, prior 
to cross-examination, to produce any documents the witness reviewed 
during direct examination or to refresh the witness's memory.
    Comment 55: One comment suggested that the framework adopted by the 
American Bar Association in Rule 10(C) of the Model Rules of Lawyer 
Disciplinary Enforcement (MRLDE) for imposing lawyer sanctions replace 
the provisions of Sec.  11.54(b) for imposing sanctions. The comment 
pointed out that the 1986 Standards for Imposing Lawyer Sanctions has 
been widely adopted and utilized in state disciplinary systems. Another 
comment suggested that due to inapplicability, each factor of Sec.  
11.54(b) should not be mechanically addressed, and the rule should 
reflect as much.
    Response: The suggestion has been substantially adopted. The wide 
adoption and utilization of the framework of MRLDE Rule 10(C) in state 
disciplinary systems for imposing sanctions would benefit the Office by 
providing the precedent and consistency for imposing practitioner 
sanctions in the Office's discipline system that are necessary for 
fairness to the public and the practitioners. The provision of MRLDE 
Rule 10(C)(1), ``whether the practitioner has violated a duty owed to a 
client, to the public, to the legal system, or to the profession,'' has 
been substituted in Sec.  11.54(b)(1) for ``[t]he public interest.'' 
The ``duty owed * * * to the public'' is inclusive of the ``[t]he 
public interest'' factor of former Sec.  10.154(b)(1). The ``duty owed 
* * * to the legal system, or to the profession'' is broader than, but 
inclusive of, the ``integrity of the legal patent profession'' of 
former Sec.  10.154(b)(4). The duty owed to the legal system and 
profession includes integrity with regard to the Office in patent, 
trademark and other non-patent matters, as well as duties beyond 
integrity owed to the entire legal system, including to the Office. The 
duty owed to ``a client'' introduces a new consideration to consider 
when imposing a sanction.
    The provision of MRLDE Rule 10(C)(2), ``whether the practitioner 
acted intentionally, knowingly, or negligently,'' has been substituted 
in Sec.  11.54(b)(2) for ``[t]he seriousness of the grounds for 
discipline.'' Actions committed intentionally, knowingly, or 
negligently implicitly are serious for a practitioner, and the 
substituted language is generally comparable in scope to the factor in 
former Sec.  10.154(b). The substitution also provides the Office 
disciplinary system and courts with clear and well-understood actions 
to focus upon when imposing sanctions.
    The provision of MRLDE Rule 10(C)(3), ``the amount of the actual or 
potential injury caused by the practitioner's misconduct,'' has 
replaced the factor of former Sec.  11.54(b)(3), ``the deterrent 
effects deemed necessary.'' No one factor of MRLDE Rule 10(C) is 
expressed in terms of being a deterrent effect. Rather, all the factors 
together may have a deterrent effect.
    The provision of MRLDE Rule 10(C)(4), ``[t]he existence of any 
aggravating or mitigating factors,'' has been substituted for the 
factor of former Sec.  11.54(b)(4), ``any extenuating circumstances.'' 
The words ``mitigating factors'' are comparable with the ``extenuating 
circumstances'' of former Sec.  10.54(b)(5). The inclusion of ``any 
aggravating * * * factor'' introduces a new consideration for imposing 
a sanction.
    The Office concurs with the observation that inasmuch as all 
factors

[[Page 47681]]

do not necessarily obtain in each case, they need not be addressed. 
Therefore, Sec.  11.54(b) provides for their consideration ``if 
applicable.''
    In substantially adopting the framework of MRLDE Rule 10(C), the 
Office notes its anticipation that existing precedent applying the 
factors under former Sec.  10.154(b) could still be relied upon with 
regard to the application of analogous factors in Sec.  11.54(b). Also, 
in adopting this framework, it is appropriate that the Office present 
below the American Bar Association's commentary accompanying the 
standards. The commentary provides guidance that may and can be 
consulted and considered by the Office, courts, the OED Director and 
the representatives of the OED Director when imposing or recommending 
sanctions. The commentary that follows has been modified for 
applicability to disciplinary proceedings in the Office: These 
standards provide a framework to guide the courts and disciplinary 
agencies, including disciplinary counsel, in imposing sanctions, 
thereby providing the flexibility to select the appropriate sanction in 
each particular case of practitioner misconduct. The sanction imposed 
may depend on the presence of aggravating or mitigating factors. The 
following lists of aggravating and mitigating circumstances are found 
in Standard 9 of the American Bar Association's Standards for Imposing 
Lawyer Sanctions. Aggravating factors include: Prior disciplinary 
offenses; dishonest or selfish motive; a pattern of misconduct; 
multiple offenses; bad faith obstruction of the disciplinary proceeding 
by intentionally failing to comply with rules or orders of the 
disciplinary agency; submission of false evidence, false statements or 
other deceptive practices during disciplinary process; refusal to 
acknowledge wrongful nature of conduct; vulnerability of victim; 
substantial experience in the practice of law; and indifference to 
making restitution. Mitigating factors include: absence of prior 
disciplinary record, absence of dishonest or selfish motive; personal 
or emotional problems; timely good faith effort to make restitution or 
to rectify consequences of misconduct; full and free disclosure to 
disciplinary board or cooperative attitude toward proceedings; 
inexperience in the practice of law; character or reputation; physical 
or mental disability or impairment; delay in disciplinary proceedings; 
interim rehabilitation; imposition of other penalties or sanctions; 
remorse; and remoteness of prior offenses. The Standards for Imposing 
Lawyer Sanctions set forth a comprehensive system for determining 
sanctions, permitting flexibility and creativity in assigning sanctions 
in particular cases of practitioner misconduct. Use of the Standards 
will help achieve the degree of consistency in the imposition of lawyer 
discipline necessary for fairness to the public and the bar.
    Comment 56: One comment stated that it appears that the USPTO 
Director's review of the hearing officer's decision is a de novo 
decision but the standard of the decision is not explicitly stated in 
Sec.  11.56, and suggested clarifying the matter by inserting ``de 
novo'' between ``shall'' and ``decide,'' or specifying some other 
standard that is deemed appropriate.
    Response: The suggestion to specify in Sec.  11.56(a) that the 
decision of the USPTO Director, upon appeal from the initial decision 
of the hearing officer, is de novo has been adopted in part. Section 
11.56(a) is revised to add a sentence providing that on appeal from the 
initial decision, the USPTO Director has authority to conduct a de novo 
review of the factual record. This is consistent with Administrative 
Procedure Act (APA). The Office is empowered by the APA, 5 U.S.C 551, 
et seq. to conduct an independent review of the factual record before 
it. ``On appeal from or review of the initial decision, the agency has 
all the powers which it would have in making the initial decision 
except as it may limit the issues on notice or by rule.'' 5 U.S.C. 
557(b).
    Comment 57: One comment said that the Director's decision is not 
always as thorough as the hearing officer's decision, and suggested 
adding to Sec.  11.56(a), maybe after the second sentence, ``The 
initial decision is adopted unless modified.''
    Response: The suggestion to add a provision that the ``initial 
decision is adopted unless modified'' has not been adopted. The current 
practice is that each individual decision of the USPTO Director 
indicates those instances, and to what extent, the USPTO Director 
adopts the findings of fact and law of the administrative law judge 
hearing the matter. Under Sec.  11.55(b), exceptions to the hearing 
officer's decision and supporting reasons must be included in the 
appeal if they are to be preserved. Therefore, the USPTO Director need 
not consider or adopt portions of the hearing officer's decision to 
which no exception has been filed. It is more prudent that the Office 
continue with that practice rather than change the rule.
    Comment 58: One comment said that the duties set forth in Sec.  
11.58 that apply to lawyers who have resigned or who have been excluded 
or suspended should apply to lawyers placed on disability inactive 
status. Rule 27 of the American Bar Association's Model Rules for 
Lawyer Disciplinary Enforcement provides that, in state disciplinary 
proceedings, a lawyer placed on disability inactive status must notify 
clients, co-counsel and opposing counsel of the transfer and must also 
comply with other notice, record retention and rules relating to 
withdrawal from cases and return of client property and fees. The 
comment noted that such notice is protective of clients.
    Response: Section 11.28(a)(2) provides that a practitioner on 
disability inactive status ``shall comply with the provisions of Sec.  
11.58.'' Nevertheless, the recommendation that the duties set forth in 
Sec.  11.58 that apply to lawyers who have resigned or who have been 
excluded or suspended should apply to lawyers placed on disability 
inactive status has been construed as suggesting that Sec.  11.58 
specifically reference those on disability inactive status. The 
suggestion has been adopted and expanded to all practitioners, lawyers 
as well as patent agents, on disability inactive status. Reference to a 
``practitioner transferred to disability inactive status'' or 
``transfer to disability inactive status,'' as appropriate, has been 
added to Sec. Sec.  11.58(a), 11.58(b), 11.58(b)(1), 11.58(b)(1)(i), 
11.58(b)(1)(ii), 11.58(b)(1)(iii), 11.58(b)(2)(vi), 11.58(c), 11.58(d), 
11.58(e), 11.58(e)(1), 11.58(e)(3), 11.58(f), 11.58(f)(1)(i), 
11.58(f)(1)(ii) and 11.58(f)(2)(ii). Further, the title of Sec.  11.58 
has been revised to be ``Duties of disciplined or resigned 
practitioner, or practitioner on disability inactive status.''
    Comment 59: One comment regarding Sec.  11.58(b)(1)(ii) doubted 
that the Office intended to require, for example, a large law firm to 
notify every client with business before the Office of the discipline 
or exclusion of a practitioner who, though designated by the firm 
through its customer number, nonetheless has no substantive involvement 
in prosecuting that client's application. The comment suggested that 
such notice should be required only if the practitioner was 
substantively involved, as in 37 CFR 1.56, in any business of the 
client before the Office.
    Response: The suggestion to limit notification of suspension or 
exclusion to only those clients for whom the practitioner is 
substantively involved in prosecuting that client's application has not 
been adopted. It is the intent of the Office to require the 
practitioner, not the firm, to notify all clients the practitioner

[[Page 47682]]

represents having immediate or prospective business before the Office 
in patent, trademark and other non-patent matters of the order of 
exclusion, suspension or resignation and of the practitioner's 
consequent inability to act as a practitioner after the effective date 
of the order. Consistent with compliance with the ethical duties of the 
firm's members, the firm must enable the practitioner to notify the 
clients, for example, by identifying every client and every client's 
applications in which the practitioner, though designation by the 
firm's customer number(s), has a power of attorney or authorization of 
agent. The requirement obtains whenever and however the practitioner is 
given a power of attorney to represent the client. The Office 
appreciates that a firm may include all practitioners in the firm or 
all partners on every power of attorney, including appointment through 
use of a firm's customer number. The practitioner, by virtue of a power 
of attorney, may represent all clients who have appointed the 
practitioner, irrespective of whether the practitioner is substantively 
involved in the client's case. The practitioner may share in the fees 
the client pays to the firm, even if the practitioner is not 
substantively involved in the client's applications before the Office. 
The client is entitled to know whether a practitioner empowered to 
represent the client has been disciplined.
    The Office does not require that a power of attorney filed in a 
patent or trademark application include an appointment of all 
practitioners who are partners or associates in firm. The power of 
attorney filed in a patent or trademark application may be limited to a 
particular practitioner or group of practitioners. In the latter case, 
a practitioner in a large firm who is given a power of attorney in only 
a small number of the firm's cases may comply with the provisions of 
Sec.  11.58(b)(1)(ii) by providing notice only to the clients in a 
small number of cases from whom the practitioner received a power of 
attorney.
    Comment 60: Two comments pointed out that Sec.  11.58(b)(2)(vi) 
refers to ``Sec.  11.11(a),'' a designation not included in the July 
2004 rules, and requested clarification.
    Response: Section 11.58(b)(2)(vi) should have referenced ``Sec.  
11.11'' because subsections have not been added to Sec.  11.11 since it 
was adopted. Therefore, the reference has been changed to Sec.  11.11.
    Comment 61: One comment regarding Sec.  11.58(b) observed that some 
suspended or excluded practitioners may not satisfy the conditions for 
reinstatement, and suggested adding a third provision, ``to provide tax 
records or other proof of employment during discipline period'' to 
Sec.  10.160(c).
    Response: The suggestion to add a subsection to Sec.  11.58(b) 
requiring suspended and excluded practitioners to provide tax records 
or other proof of employment during the period the discipline period 
has not been adopted. A suspended and excluded practitioner is 
prohibited from ``engag[ing] in any practice of patent, trademark and 
other non-patent law before the Office.'' See Sec.  11.58(a). The 
practitioner must ``not hold himself or herself out as authorized to 
practice law before the Office,'' Sec.  11.58(b)(3); ``not advertise 
the practitioner's availability or ability to perform or render legal 
services for any person having immediate or prospective business before 
the Office,'' Sec.  11.58(b)(4), and ``not render legal advice or 
services to any person having immediate or prospective business before 
the Office as to that business,'' Sec.  11.58(b)(5). The practitioner 
seeking reinstatement has the burden of proof by clear and convincing 
evidence, and a practitioner who has violated any provision of Sec.  
11.58 is not eligible for reinstatement. See Sec.  11.60(c). If the OED 
Director has good cause to believe a suspended or excluded practitioner 
has continued to practice before the Office after being ordered 
suspended or excluded, the rules are sufficiently broad to permit the 
OED Director to request records showing the sources of a practitioner's 
income and employment following the order of suspension or exclusion.
    Comment 62: One comment recommended that Sec.  11.59(a) be revised 
to include reports to the American Bar Association's National Lawyer 
Regulatory Data Bank (NLRDB), the only national repository of 
information concerning public disciplinary sanctions imposed against 
lawyers and other regulatory actions from all states and the District 
of Columbia, some Federal courts and some Federal agencies. The comment 
noted that the NLRDB has been receiving reports of public regulatory 
actions from the USPTO since 2001 and was referenced in the originally 
proposed rules under its former name, the National Discipline Data 
Bank.
    Response: The recommendation to revise Sec.  11.59(a) to 
specifically include reporting to the NLRB has not been adopted. It is 
not necessary for this section to specify every agency, institution or 
other member of the public to which reports are sent regarding the 
lawyers being disciplinarily sanctioned. The NLRB is within the scope 
of the public to whom public disciplinary sanctions imposed against 
lawyers have been and will continue to be reported.
    Comment 63: One comment noted that Sec.  11.59(c) provides that the 
affidavit that accompanies a request for exclusion on consent is 
confidential, while the order of exclusion is public. The comment 
recommended that the admissions leading to the sanction should be known 
inasmuch as the sanction imposed is public and keeping admissions 
private may serve to further public distrust of these proceedings. In 
support thereof, the comment noted that under Rules 21(E) and 10(D) of 
the American Bar Association's Model Rules of Disciplinary Enforcement, 
an affidavit accompanying a petition for discipline on consent that 
would result in a public sanction is public, unless covered by a 
protective order. The comment also noted that a disciplined 
practitioner is protected by the statement in Sec.  11.59 (c) that the 
affidavit cannot be used in any other proceeding except by order of the 
USPTO Director or with the practitioner's written consent.
    Response: The recommendation to revise Sec.  11.59(c) to provide 
that admissions leading to the agreed upon sanction should be made 
known to the public unless covered by a protective order is adopted in 
part. This section is revised to provide that unless the USPTO Director 
orders that the proceeding or portion of the record be kept 
confidential, both the order excluding a practitioner and the affidavit 
required under Sec.  11.27(a) will be available to the public. There 
are two exceptions. Information from the order or affidavit may be 
withheld as necessary to protect the privacy of third parties or as 
directed in a protective order under Sec.  11.44(c). This section 
continues to provide that the affidavit shall not be used in any other 
proceeding except by order the USPTO Director or upon written consent 
of the practitioner.
    Comment 64: One comment suggested that inasmuch as records 
regarding a warning are not to be made available to the public this be 
made clear by inserting into Sec.  11.59(b) after ``be kept 
confidential'' the phrase ``or it concerns a warning issued under 
Section 11.21''.
    Response: The suggestion to add the phrase ``or it concerns a 
warning issued under Sec.  11.21'' to Sec.  11.59(b) has not been 
adopted. The suggested phrase implies that matters concerning a warning 
are other than confidential and are protected only by reason of the 
suggested phrase. Section 11.59 need

[[Page 47683]]

not provide safeguards because information collected in an 
investigation is placed into a Privacy Act system of records, in this 
case COMMERCE/PAT-TM-2, Complaints, Investigations and Disciplinary 
Proceedings Relating to Registered Patent Attorneys and Agents, 
published at 70 FR 69522. Furthermore, the Privacy Act of 1974, 5 
U.S.C. 552a, provides numerous protections for those records. Regarding 
the requests for release of these records under the Freedom of 
Information Act (FOIA), Privacy Act records may not be disclosed unless 
the subject of the record consents or one of twelve exceptions apply. 
One of the twelve exceptions provides for information that is 
releasable under FOIA. This is a statutory exception that cannot be 
altered by rule making. Generally, the information in investigation 
files, including warnings, is protected from disclosure by FOIA 
exemptions 5 and 6. See 5 U.S.C. 552(b)(5) and (6), respectively. Thus, 
information regarding a warning, including the warning, is among the 
collected information that is subject to the numerous protections of 
the Privacy Act, and will not be released to FOIA requesters as 
provided for under current Federal law.
    Comment 65: One comment noted that some people may not have 
satisfied the conditions for reinstatement, and suggested adding ``(3) 
to provide tax records or other proof of employment during discipline 
period'' to Sec.  11.60(c).
    Response: The suggestion to add a provision to Sec.  11.60(c) 
requiring suspended or excluded practitioners to provide tax records or 
other proof of employment during the period of discipline has not been 
adopted. An excluded, suspended or resigned practitioner, or 
practitioner transferred to disability inactive status is prohibited 
from practicing before the Office. See Sec.  11.58(a). The practitioner 
must keep and maintain records of the steps taken under Sec.  11.58 to 
provide proof in a subsequent proceeding, such as reinstatement, of 
compliance with the provisions of Sec.  11.58. See Sec.  11.58(d). The 
OED Director must seek evidence of compliance with Sec.  11.58. See 
Sec.  11.58(d). If the practitioner acts as a paralegal or performs 
services under Sec.  11.58(e), to be reinstated the practitioner must 
file an affidavit explaining the acts performed in that capacity and 
show compliance with the provisions of Sec.  11.58. See Sec.  11.58(f). 
A practitioner who has violated any provision of Sec.  11.58 is 
ineligible for reinstatement. See Sec.  11.60(c). If the showing is 
insufficient, the OED Director may request additional showings, 
including, where appropriate, evidence of employment as a paralegal. 
The evidence sought may include any written employment agreement and 
income tax withholding statements for the relevant time period.

Rule Making Considerations

Regulatory Flexibility Act

    The Deputy General Counsel for General Law, United States Patent 
and Trademark Office, certified to the Chief Counsel for Advocacy, 
Small Business Administration, that the changes in this final rule will 
not have a significant impact on a substantial number of small entities 
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The provisions of the 
Regulatory Flexibility Act relating to the preparation of a regulatory 
flexibility analysis are not applicable to this final rule because the 
rule will not have a significant economic impact on a substantial 
number of small entities. The primary purpose of the rule changes is to 
bring the USPTO's disciplinary procedural rules for practitioners in 
line with the American Bar Association Model Rules, American Bar 
Association Model Rules for Lawyer Disciplinary Enforcement, American 
Bar Association Model Federal Rules of Disciplinary Enforcement and 
rules adopted by other Federal agencies. This will ease the 
practitioners' burden in learning and complying with USPTO regulations.
    The rule eliminates a fee of $130 for petitions in disciplinary 
cases to enable petitioners to invoke the supervisory authority of the 
USPTO Director.
    The rule removes the $1500 cap on disciplinary proceeding costs 
that can be assessed, as a condition of reinstatement, against a 
practitioner who has been suspended or excluded from practice before 
the Office. Approximately five of the roughly 35,000 practitioners 
petition for reinstatement each year, and approximately two of these 
petitions occur under circumstances where disciplinary proceeding costs 
may be assessed. These changes, therefore, will not affect a 
substantial number of practitioners.

Executive Order 13132

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

Paperwork Reduction Act

    This notice of final 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 notice of final rule making contains revisions that 
the United States Patent and Trademark Office (USPTO) is adopting to 
the rules governing the conduct of professional responsibility 
investigations and disciplinary proceedings. The principal impact of 
the changes in this notice of final rule making is on registered 
practitioners. The information collections involved in this final rule 
have been previously reviewed and approved by OMB under OMB control 
numbers 0651-0012 and 0651-0017. The revisions do not affect the 
information collection requirements for 0651-0012 and 0651-0017, so the 
USPTO is not resubmitting these collections to OMB for review and 
approval.
    The title, description, and respondent description of the currently 
approved information collections for 0651-0012 and 0651-0017 are shown 
below with estimates of the annual reporting burdens. Included in the 
estimates is the time for reviewing instructions, gathering and 
maintaining the data needed, and completing and reviewing the 
collection of information.
    OMB Number: 0651-0012.
    Title: Admittance to Practice and Roster of Registered Patent 
Attorneys and Agents Admitted to Practice Before the Patent and 
Trademark Office (USPTO).
    Form Numbers: PTO-158, PTO-158A, PTO-275, PTO-107A, PTO-1209, PTO-
2126, PTO-2149 and PTO-2150.
    Type of Review: Approved through December of 2010.
    Affected Public: Individuals or households, businesses or other 
for-profit, Federal Government, and state, local, or tribal 
governments.
    Estimated Number of Respondents: 72,122.
    Estimated Time per Response: 5 minutes to 40 hours.
    Estimated Total Annual Burden Hours: 89,475 hours.
    Needs and Uses: The information in this collection is necessary for 
the United States Patent and Trademark Office to comply with Federal 
regulations, 35 U.S.C. 2(B)(2)(d). The Office of Enrollment and 
Discipline collects this information to insure compliance with the 
USPTO Code of Professional Responsibility, 37 CFR 10.20-10.112. This 
Code requires that registered practitioners maintain

[[Page 47684]]

complete records of clients, including all funds, securities, and other 
properties of clients coming into his/her possession, and render 
appropriate accounts to the client regarding such records, as well as 
report violations of the Code to the USPTO. The registered 
practitioners are mandated by the Code to maintain proper documentation 
so that they can fully cooperate with an investigation in the event of 
a report of an alleged violation and so that violations are prosecuted 
as appropriate.
    OMB Number: 0651-0017.
    Title: Practitioner Records Maintenance, Disclosure, and Discipline 
Before the United States Patent and Trademark Office (USPTO).
    Form Numbers: None.
    Type of Review: Approved through July of 2010.
    Affected Public: Individuals or households, businesses or other 
for-profit, Federal Government, and state, local, or tribal 
governments.
    Estimated Number of Respondents: 532.
    Estimated Time per Response: 2 hours to 60 hours.
    Estimated Total Annual Burden Hours: 10,402 hours.
    Needs and Uses: The information in this collection is necessary for 
the United States Patent and Trademark Office to comply with Federal 
regulations, 35 U.S.C. 6(a) and 35 U.S.C. 2(B)(2)(d). The Office of 
Enrollment and Discipline collects this information to insure 
compliance with the USPTO Code of Professional Responsibility, 37 CFR 
10.20-10.112. This Code requires that registered practitioners maintain 
complete records of clients, including all funds, securities, and other 
properties of clients coming into his/her possession, and render 
appropriate accounts to the client regarding such records, as well as 
report violations of the Code to the USPTO. The registered 
practitioners are mandated by the Code to maintain proper documentation 
so that they can fully cooperate with an investigation in the event of 
a report of an alleged violation and so that violations are prosecuted 
as appropriate.
    Comments are invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to Harry I. Moatz, Director of Enrollment and Discipline, Mail 
Stop OED-Ethics Rules, U.S. Patent and Trademark Office, P.O. Box 1450, 
Alexandria, Virginia 22313-1450, or to the Office of Information and 
Regulatory Affairs, Office of Management and Budget, New Executive 
Office Building, Room 10202, 725 17th Street, NW., 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, Patents.

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

37 CFR Part 7

    Administrative practice and procedure, International registration, 
Trademarks.

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.

37 CFR Part 41

    Administrative practice and procedure, Inventions and patents, 
Lawyers.

0
For the reasons set forth in the preamble, the United States Patent and 
Trademark Office is amending 37 CFR parts 1, 2, 7, 10, 11 and 41 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)(D).

0
2. In Sec.  1.4, revise paragraphs (d)(3) and (d)(4)(i), and add 
paragraph (d)(4)(ii)(C) to read as follows:


Sec.  1.4  Nature of correspondence and signature requirements.

* * * * *
    (d) * * *
    (3) Forms. The Office provides forms to the public to use in 
certain situations to assist in the filing of correspondence for a 
certain purpose and to meet certain requirements for patent 
applications and proceedings. Use of the forms for purposes for which 
they were not designed is prohibited. No changes to certification 
statements on the Office forms (e.g., oath or declaration forms, 
terminal disclaimer forms, petition forms, and nonpublication request 
form) may be made. The existing text of a form, other than a 
certification statement, may be modified, deleted, or added to, if all 
text identifying the form as an Office form is removed. The 
presentation to the Office (whether by signing, filing, submitting, or 
later advocating) of any Office form with text identifying the form as 
an Office form by a party, whether a practitioner or non-practitioner, 
constitutes a certification under Sec.  11.18(b) of this chapter that 
the existing text and any certification statements on the form have not 
been altered other than permitted by EFS-Web customization.
    (4) Certifications. (i) Section 11.18 certifications: The 
presentation to the Office (whether by signing, filing, submitting, or 
later advocating) of any paper by a party, whether a practitioner or 
non-practitioner, constitutes a certification under Sec.  11.18(b) of 
this subchapter. Violations of Sec.  11.18(b)(2) of this subchapter by 
a party, whether a practitioner or non-practitioner, may result in the 
imposition of sanctions under Sec.  11.18(c) of this subchapter. Any 
practitioner violating Sec.  11.18(b) of this subchapter may also be 
subject to disciplinary action. See Sec. Sec.  11.18(d) and 
11.804(b)(9) of this subchapter.
    (ii) * * *
    (C) Sanctions: Violations of the certifications as to the signature 
of another or a person's own signature, set forth in paragraphs 
(d)(4)(ii)(A) and (B) of this section, may result in the imposition of 
sanctions under Sec.  11.18(c) and (d) of this chapter.
* * * * *

0
3. Revise Sec.  1.8(a)(2)(iii)(A) to read as follows:


Sec.  1.8  Certificate of mailing or transmission.

    (a) * * *
    (2) * * *
    (iii) * * *
    (A) Correspondence filed in connection with a disciplinary

[[Page 47685]]

proceeding under part 11 of this chapter.
* * * * *
0
4. Revise Sec.  1.9(j) to read as follows:


Sec.  1.9  Definitions.

* * * * *
    (j) Director as used in this chapter, except for part 11 of this 
chapter, means the Under Secretary of Commerce for Intellectual 
Property and Director of the United States Patent and Trademark Office.
* * * * *

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
5. The authority citation for 37 CFR part 2 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.

0
6. Revise Sec.  2.2(c) to read as follows:


Sec.  2.2  Definitions.

* * * * *
    (c) Director as used in this chapter, except for part 10 and part 
11, means the Under Secretary of Commerce for Intellectual Property and 
Director of the United States Patent and Trademark Office.
* * * * *

0
7. Revise Sec.  2.11 to read as follows:


Sec.  2.11  Applicants may be represented by an attorney.

    Representation before the Office is governed by Sec.  11.14 of this 
chapter. The Office cannot aid in the selection of an attorney.

0
8. Revise Sec.  2.17(a) through (c) to read as follows:


Sec.  2.17  Recognition for representation.

    (a) When an attorney as defined in Sec.  11.1 of this chapter 
acting in a representative capacity appears in person or signs a 
document in practice before the United States Patent and Trademark 
Office in a trademark case, his or her personal appearance or signature 
shall constitute a representation to the United States Patent and 
Trademark Office that, under the provisions of Sec.  11.14 and the law, 
he or she is authorized to represent the particular party in whose 
behalf he or she acts. Further proof of authority to act in a 
representative capacity may be required.
    (b) Before any non-lawyer, as specified in Sec.  11.14(b) of this 
chapter, will be allowed to take action of any kind with respect to an 
application, registration or proceeding, a written authorization from 
the applicant, registrant, party to the proceeding, or other person 
entitled to prosecute such application or proceeding must be filed.
    (c) To be recognized as a representative, an attorney as defined in 
Sec.  11.1 of this chapter may file a power of attorney, appear in 
person, or sign a document on behalf of an applicant or registrant that 
is filed with the Office in a trademark case.
* * * * *

0
9. Revise Sec.  2.18(a) to read as follows:


Sec.  2.18  Correspondence, with whom held.

    (a) If an attorney transmits documents, or a written power of 
attorney is filed, the Office will send correspondence to the attorney 
transmitting the documents, or to the attorney designated in the power 
of attorney, provided that the attorney is an attorney as defined in 
Sec.  11.1 of this chapter.
* * * * *

0
10. Revise Sec.  2.19(b) to read as follows:


Sec.  2.19  Revocation of power of attorney; withdrawal.

* * * * *
    (b) If the requirements of Sec.  10.40 of this chapter are met, an 
attorney authorized under Sec.  11.14 to represent an applicant, 
registrant or party in a trademark case may withdraw upon application 
to and approval by the Director.

0
11. Revise Sec.  2.24 to read as follows:


Sec.  2.24  Designation of domestic representative by foreign 
applicant.

    If an applicant is not domiciled in the United States, the 
applicant may designate by a document filed in the United States Patent 
and Trademark Office the name and address of some person resident in 
the United States on whom may be served notices or process in 
proceedings affecting the mark. If the applicant does not file a 
document designating the name and address of a person resident in the 
United States on whom may be served notices or process in proceedings 
affecting the mark, or if the last person designated cannot be found at 
the address given in the designation, then notices or process in 
proceedings affecting the mark may be served on the Director. The mere 
designation of a domestic representative does not authorize the person 
designated to prosecute the application unless qualified under 
paragraph (a), (b) or (c) of Sec.  11.14 of this subchapter and 
authorized under Sec.  2.17(b).

0
12. Revise Sec.  2.33(a)(3) to read as follows:


Sec.  2.33  Verified statement.

    (a) * * *
    (3) An attorney as defined in Sec.  11.1 of this chapter who has an 
actual or implied written or verbal power of attorney from the 
applicant.
* * * * *

0
13. Revise Sec.  2.101(b) introductory text to read as follows:


Sec.  2.101  Filing an opposition.

* * * * *
    (b) Any person who believes that he, she or it would be damaged by 
the registration of a mark on the Principal Register may file an 
opposition addressed to the Trademark Trial and Appeal Board and must 
serve a copy of the opposition, including any exhibits, on the attorney 
of record for the applicant or, if there is no attorney, on the 
applicant or on the applicant's domestic representative, if one has 
been appointed, at the correspondence address of record in the Office. 
The opposer must include with the opposition proof of service pursuant 
to Sec.  2.119 at the correspondence address of record in the Office. 
If any service copy of the opposition is returned to the opposer as 
undeliverable, the opposer must notify the Board within ten days of 
receipt of the returned copy. The opposition need not be verified, but 
must be signed by the opposer or the opposer's attorney, as specified 
in Sec.  11.1 of this chapter, or other authorized representative, as 
specified in Sec.  11.14(b) of this chapter. Electronic signatures 
pursuant to Sec.  2.193(c)(1)(iii) are required for oppositions filed 
through ESTTA under paragraphs (b)(1) or (2) of this section.
* * * * *

0
14. Revise Sec.  2.102(a) introductory text to read as follows:


Sec.  2.102  Extension of time for filing an opposition.

    (a) Any person who believes that he, she or it would be damaged by 
the registration of a mark on the Principal Register may file in the 
Office a written request, addressed to the Trademark Trial and Appeal 
Board, to extend the time for filing an opposition. The written request 
need not be verified, but must be signed by the potential opposer or by 
the potential opposer's attorney, as specified in Sec.  11.1 of this 
chapter, or authorized representative, as specified in Sec.  11.14(b) 
of this chapter. Electronic signatures pursuant to Sec.  
2.193(c)(1)(iii) are required for electronically filed extension 
requests.
* * * * *

0
15. Revise Sec.  2.105(b)(1) and (c)(1) to read as follows:

[[Page 47686]]

Sec.  2.105  Notification to parties of opposition proceeding(s).

* * * * *
    (b) * * *
    (1) If the opposition is transmitted by an attorney, or a written 
power of attorney is filed, the Board will send the notification to the 
attorney transmitting the opposition or to the attorney designated in 
the power of attorney, provided that the person is an ``attorney'' as 
defined in Sec.  11.1 of this chapter.
    (c) * * *
    (1) If the opposed application contains a clear indication that the 
application is being prosecuted by an attorney, as defined in Sec.  
11.1 of this chapter, the Board shall send the documents described in 
this section to applicant's attorney.
* * * * *

0
16. Revise Sec.  2.111(b) to read as follows:


Sec.  2.111  Filing petition for cancellation.

* * * * *
    (b) Any person who believes that he, she or it is or will be 
damaged by a registration may file a petition, addressed to the 
Trademark Trial and Appeal Board, for cancellation of the registration 
in whole or in part. Petitioner must serve a copy of the petition, 
including any exhibits, on the owner of record for the registration, or 
on the owner's domestic representative of record, if one has been 
appointed, at the correspondence address of record in the Office. The 
petitioner must include with the petition for cancellation proof of 
service, pursuant to Sec.  2.119, on the owner of record, or on the 
owner's domestic representative of record, if one has been appointed, 
at the correspondence address of record in the Office. If any service 
copy of the petition for cancellation is returned to the petitioner as 
undeliverable, the petitioner must notify the Board within ten days of 
receipt of the returned copy. The petition for cancellation need not be 
verified, but must be signed by the petitioner or the petitioner's 
attorney, as specified in Sec.  11.1 of this chapter, or other 
authorized representative, as specified in Sec.  11.14(b) of this 
chapter. Electronic signatures pursuant to Sec.  2.193(c)(1)(iii) are 
required for petitions submitted electronically via ESTTA. The petition 
for cancellation may be filed at any time in the case of registrations 
on the Supplemental Register or under the Act of 1920, or registrations 
under the Act of 1881 or the Act of 1905 which have not been published 
under section 12(c) of the Act, or on any ground specified in section 
14(3) or (5) of the Act. In all other cases, the petition for 
cancellation and the required fee must be filed within five years from 
the date of registration of the mark under the Act or from the date of 
publication under section 12(c) of the Act.
* * * * *

0
17. Revise Sec.  2.113(b)(1) to read as follows:


Sec.  2.113  Notification of cancellation proceeding.

* * * * *
    (b) * * *
    (1) If the petition for cancellation is transmitted by an attorney, 
or a written power of attorney is filed, the Board will send the 
notification to the attorney transmitting the petition for cancellation 
or to the attorney designated in the power of attorney, provided that 
person is an ``attorney'' as defined in Sec.  11.1 of this chapter.
* * * * *

0
18. Revise Sec.  2.119(d) to read as follows:


Sec.  2.119  Service and signing of papers.

* * * * *
    (d) If a party to an inter partes proceeding is not domiciled in 
the United States and is not represented by an attorney or other 
authorized representative located in the United States, the party may 
designate by document filed in the United States Patent and Trademark 
Office the name and address of a person resident in the United States 
on whom may be served notices or process in the proceeding. If the 
party has appointed a domestic representative, official communications 
of the United States Patent and Trademark Office will be addressed to 
the domestic representative unless the proceeding is being prosecuted 
by an attorney at law or other qualified person duly authorized under 
Sec.  11.14(c) of this subchapter. If the party has not appointed a 
domestic representative and the proceeding is not being prosecuted by 
an attorney at law or other qualified person, the Office will send 
correspondence directly to the party, unless the party designates in 
writing another address to which correspondence is to be sent. The mere 
designation of a domestic representative does not authorize the person 
designated to prosecute the proceeding unless qualified under Sec.  
11.14(a), or qualified under Sec.  11.14(b) and authorized under Sec.  
2.17(b).
* * * * *

0
19. Revise Sec.  2.161(b)(3) to read as follows:


Sec.  2.161  Requirements for a complete affidavit or declaration of 
continued use or excusable nonuse.

* * * * *
    (b) * * *
    (3) An attorney as defined in Sec.  11.1 of this chapter who has an 
actual or implied written or verbal power of attorney from the owner.
* * * * *

0
20. Revise Sec.  2.193(c)(2) to read as follows:


Sec.  2.193  Trademark correspondence and signature requirements.

* * * * *
    (c) * * *
    (2) The presentation to the Office (whether by signing, filing, 
submitting, or later advocating) of any document by a party, whether a 
practitioner or non-practitioner, constitutes a certification under 
Sec.  11.18(b) of this chapter. Violations of Sec.  11.18(b)(2) of this 
chapter by a party, whether a practitioner or non-practitioner, may 
result in the imposition of sanctions under Sec.  11.18(c) of this 
chapter. Any practitioner violating Sec.  11.18(b) may also be subject 
to disciplinary action. See Sec. Sec.  11.18(d) and 11.23(c)(15).
* * * * *

PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL 
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARKS

0
21. The authority citation for 37 CFR part 7 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.

0
22. Revise Sec.  7.25(a) to read as follows:


Sec.  7.25  Sections of part 2 applicable to extension of protection.

    (a) Except for Sec. Sec.  2.22, 2.23, 2.130, 2.131, 2.160 through 
2.166, 2.168, 2.173, 2.175, 2.181 through 2.186 and 2.197, all sections 
in part 2 and all sections in parts 10 and all sections in part 11 of 
this chapter shall apply to an extension of protection of an 
international registration to the United States, including sections 
related to proceedings before the Trademark Trial and Appeal Board, 
unless otherwise stated.
* * * * *

0
23. Revise Sec.  7.37(b)(3) to read as follows:


Sec.  7.37  Requirements for a complete affidavit or declaration of use 
in commerce or excusable nonuse.

* * * * *
    (b) * * *

[[Page 47687]]

    (3) An attorney as defined in Sec.  11.1 of this chapter who has an 
actual written or verbal power of attorney or an implied power of 
attorney from the holder.
* * * * *

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

0
24. 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.

0
25. The undesignated center heading, ``Individuals Entitled to Practice 
Before the Patent and Trademark Office,'' is removed.


Sec.  10.14  [Removed and reserved]

0
26. Section 10.14 is removed and reserved.


Sec.  10.15  [Removed and reserved]

0
27. Section 10.15 is removed and reserved.


Sec.  10.18  [Removed and reserved]

0
28. Section 10.18 is removed and reserved.

0
29. The undesignated center heading ``Investigations and Disciplinary 
Proceedings'' is removed.


Sec.  10.130-10.145  [Removed and reserved]

0
30. Sections 10.130 through 10.145 are removed and reserved.


Sec.  10.149-10.161  [Removed and reserved]

0
31. Sections 10.149 through 10.161 are removed and reserved.


Sec.  10.170  [Removed and reserved]

0
32. Section 10.170 is removed and reserved.

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

0
33. The authority citation for 37 CFR part 11 continues to read as 
follows:

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

0
34. Amend Sec.  11.1 to add the definitions of ``Disqualified,'' 
``Federal program,'' ``Federal agency,'' ``Mandatory Disciplinary 
Rule,'' and ``Serious crime,'' and revise the definitions of ``Attorney 
or lawyer'' and ``State'' as follows:


Sec.  11.1  Definitions.

* * * * *
    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 not 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 who is not an attorney or lawyer.
* * * * *
    Disqualified means any action that prohibits a practitioner from 
participating in or appearing before the program or agency, regardless 
of how long the prohibition lasts or the specific terminology used.
    Federal agency means any authority of the executive branch of the 
Government of the United States.
    Federal program means any program established by an Act of Congress 
or administered by a Federal agency.
* * * * *
    Mandatory Disciplinary Rule is a rule identified in Sec.  10.20(b) 
of this chapter as a Disciplinary Rule.
* * * * *
    Serious crime means:
    (1) Any criminal offense classified as a felony under the laws of 
the United States, any state or any foreign country where the crime 
occurred; or
    (2) Any crime a necessary element of which, as determined by the 
statutory or common law definition of such crime in the jurisdiction 
where the crime occurred, includes interference with the administration 
of justice, false swearing, misrepresentation, fraud, willful failure 
to file income tax returns, deceit, bribery, extortion, 
misappropriation, theft, or an attempt or a conspiracy or solicitation 
of another to commit a ``serious crime.''
* * * * *
    State means any of the 50 states of the United States of America, 
the District of Columbia, and any Commonwealth or territory of the 
United States of America.
* * * * *

0
35. Revise Sec. Sec.  11.2(a), (b)(4), (c) and (d) and add paragraphs 
(b)(5), (b)(6) and (e) to read as follows:


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 a 
vacancy in the office of the OED Director, the USPTO Director may 
designate an employee of the Office to serve as acting OED Director. 
The OED Director shall be an active member in good standing of the bar 
of the highest court of a State.
    (b) * * *
    (4) Conduct investigations of matters involving possible grounds 
for discipline of practitioners coming to the attention of the OED 
Director. Except in matters meriting summary dismissal, no disposition 
under Sec.  11.22(h) shall be recommended or undertaken by the OED 
Director until the accused practitioner shall have been afforded an 
opportunity to respond to a reasonable inquiry by the OED Director.
    (5) With the consent of a panel of three members of the Committee 
on Discipline, initiate disciplinary proceedings under Sec.  11.32 and 
perform such other duties in connection with investigations and 
disciplinary proceedings as may be necessary.
    (6) Oversee the preliminary screening of information and close 
investigations as provided for in Sec.  11.22.
    (c) Petition to OED Director regarding enrollment or recognition. 
Any petition from any action or requirement of the staff of OED 
reporting to the OED Director shall be taken to the OED Director 
accompanied by payment of the fee set forth in Sec.  1.21(a)(5)(i) of 
this chapter. 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 neither 
stay the period for taking other action which may be running, nor stay 
other proceedings. The petitioner may file a single request for 
reconsideration of a decision within thirty days of the date of the 
decision. Filing a request for reconsideration stays the period for 
seeking review of the OED Director's decision until a final decision on 
the request for reconsideration is issued. 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 regarding enrollment or 
recognition. A party dissatisfied with a final decision of the OED 
Director regarding enrollment or recognition 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 chapter. Any such 
petition to the USPTO Director waives a right to seek reconsideration 
from the OED Director. Any petition not filed within thirty days after 
the final decision of the OED Director may be dismissed as untimely. 
Briefs or memoranda, if any, in support of the petition shall accompany 
the petition. The petition will be decided on the basis of the record 
made before the OED

[[Page 47688]]

Director. The USPTO Director in deciding the petition will consider no 
new evidence. Copies of documents already of record before the OED 
Director shall not be submitted with the petition. An oral hearing will 
not be granted except when considered necessary by the USPTO Director. 
Any request for reconsideration of the decision of the USPTO Director 
may be dismissed as untimely if not filed within thirty days after the 
date of said decision.
    (e) Petition to USPTO Director in disciplinary matters. Petition 
may be taken to the USPTO Director to invoke the supervisory authority 
of the USPTO Director in appropriate circumstances in disciplinary 
matters. Any such petition must contain a statement of the facts 
involved and the point or points to be reviewed and the action 
requested. Briefs or memoranda, if any, in support of the petition must 
accompany the petition. Where facts are to be proven, the proof in the 
form of affidavits or declarations (and exhibits, if any) must 
accompany the petition. The OED Director may be directed by the USPTO 
Director to file a reply to the petition, supplying a copy to the 
petitioner. An oral hearing will not be granted except when considered 
necessary by the USPTO Director. The mere filing of a petition will not 
stay an investigation, disciplinary proceeding or other proceedings. 
Any petition under this part not filed within thirty days of the 
mailing date of the action or notice from which relief is requested may 
be dismissed as untimely. Any request for reconsideration of the 
decision of the USPTO Director may be dismissed as untimely if not 
filed within thirty days after the date of said decision.

0
36. Revise Sec.  11.3 to read as follows:


Sec.  11.3  Suspension of rules.

    (a) 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 by any 
party, including the OED Director or the OED Director's representative, 
subject to such other requirements as may be imposed.
    (b) No petition under this section shall stay a disciplinary 
proceeding unless ordered by the USPTO Director or a hearing officer.

Subpart B--Recognition to Practice Before the USPTO

0
37. Revise Sec.  11.5 to read as follows:


Sec.  11.5  Register of attorneys and agents in patent matters; 
practice before the Office.

    (a) 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.
    (b) Practice before the Office. Practice before the Office 
includes, but is not limited to, law-related service that comprehends 
any matter connected with the presentation to the Office or any of its 
officers or employees relating to a client's rights, privileges, 
duties, or responsibilities under the laws or regulations administered 
by the Office for the grant of a patent or registration of a trademark, 
or for enrollment or disciplinary matters. Such presentations include 
preparing necessary documents in contemplation of filing the documents 
with the Office, corresponding and communicating with the Office, and 
representing a client through documents or at interviews, hearings, and 
meetings, as well as communicating with and advising a client 
concerning matters pending or contemplated to be presented before the 
Office. Nothing in this section proscribes a practitioner from 
employing or retaining non-practitioner assistants under the 
supervision of the practitioner to assist the practitioner in matters 
pending or contemplated to be presented before the Office.
    (1) Practice before the Office in patent matters. Practice before 
the Office in patent matters includes, but is not limited to, preparing 
and prosecuting any patent application, consulting with or giving 
advice to a client in contemplation of filing a patent application or 
other document with the Office, drafting the specification or claims of 
a patent application; drafting an amendment or reply to a communication 
from the Office that may require written argument to establish the 
patentability of a claimed invention; drafting a reply to a 
communication from the Office regarding a patent application; and 
drafting a communication for a public use, interference, reexamination 
proceeding, petition, appeal to or any other proceeding before the 
Board of Patent Appeals and Interferences, or other proceeding. 
Registration to practice before the Office in patent cases sanctions 
the performance of those services which are reasonably necessary and 
incident to the preparation and prosecution of patent applications or 
other proceeding before the Office involving a patent application or 
patent in which the practitioner is authorized to participate. The 
services include:
    (i) Considering the advisability of relying upon alternative forms 
of protection which may be available under state law, and
    (ii) Drafting an assignment or causing an assignment to be executed 
for the patent owner in contemplation of filing or prosecution of a 
patent application for the patent owner, where the practitioner 
represents the patent owner after a patent issues in a proceeding 
before the Office, and when drafting the assignment the practitioner 
does no more than replicate the terms of a previously existing oral or 
written obligation of assignment from one person or party to another 
person or party.
    (2) Practice before the Office in trademark matters. Practice 
before the Office in trademark matters includes, but is not limited to, 
consulting with or giving advice to a client in contemplation of filing 
a trademark application or other document with the Office; preparing 
and prosecuting an application for trademark registration; preparing an 
amendment which may require written argument to establish the 
registrability of the mark; and conducting an opposition, cancellation, 
or concurrent use proceeding; or conducting an appeal to the Trademark 
Trial and Appeal Board.


Sec.  11.12-11.13  [Added and Reserved]

0
38. Add and reserve Sec. Sec.  11.12 and 11.13.

0
39. Add Sec. Sec.  11.14 and 11.15 to read as follows:


Sec.  11.14  Individuals who may practice before the Office in 
trademark and other non-patent matters.

    (a) Attorneys. Any individual who is an attorney as defined in 
Sec.  11.1 may represent others before the Office in trademark and 
other non-patent matters. An attorney is not required to apply for 
registration or recognition to practice before the Office in trademark 
and other non-patent matters. Registration as a patent practitioner 
does not itself entitle an individual to practice before the Office in 
trademark matters.
    (b) Non-lawyers. Individuals who are not attorneys are not 
recognized to practice before the Office in trademark and other non-
patent matters, except that individuals not attorneys who were 
recognized to practice before the Office in trademark matters under 
this chapter prior to January 1, 1957, will be

[[Page 47689]]

recognized as agents to continue practice before the Office in 
trademark matters. Except as provided in the preceding sentence, 
registration as a patent agent does not itself entitle an individual to 
practice before the Office in trademark matters.
    (c) Foreigners. Any foreign attorney or agent not a resident of the 
United States who shall file a written application for reciprocal 
recognition under paragraph (f) of this section and prove to the 
satisfaction of the OED Director that he or she is registered or in 
good standing before the patent or trademark office of the country in 
which he or she resides and practices and is possessed of good moral 
character and reputation, may be recognized for the limited purpose of 
representing parties located in such country before the Office in the 
presentation and prosecution of trademark matters, provided: the patent 
or trademark office of such country allows substantially reciprocal 
privileges to those permitted to practice in trademark matters before 
the Office. Recognition under this paragraph shall continue only during 
the period that the conditions specified in this paragraph obtain.
    (d) Recognition of any individual under this section shall not be 
construed as sanctioning or authorizing the performance of any act 
regarded in the jurisdiction where performed as the unauthorized 
practice of law.
    (e) No individual other than those specified in paragraphs (a), 
(b), and (c) of this section will be permitted to practice before the 
Office in trademark matters on behalf of a client. Any individual may 
appear in a trademark or other non-patent matter in his or her own 
behalf. Any individual may appear in a trademark matter for:
    (1) A firm of which he or she is a member,
    (2) A partnership of which he or she is a partner, or
    (3) A corporation or association of which he or she is an officer 
and which he or she is authorized to represent, if such firm, 
partnership, corporation, or association is a party to a trademark 
proceeding pending before the Office.
    (f) Application for reciprocal recognition. An individual seeking 
reciprocal recognition under paragraph (c) of this section, in addition 
to providing evidence satisfying the provisions of paragraph (c) of 
this section, shall apply in writing to the OED Director for reciprocal 
recognition, and shall pay the application fee required by Sec.  
1.21(a)(1)(i) of this subchapter.


Sec.  11.15  Refusal to recognize a practitioner.

    Any practitioner authorized to appear before the Office may be 
suspended, excluded, or reprimanded in accordance with the provisions 
of this Part. Any practitioner who is suspended or excluded under this 
Part shall not be entitled to practice before the Office in patent, 
trademark, or other non-patent matters while suspended or excluded.


Sec.  11.16-11.17  [Added and Reserved]

0
40. Add and reserve Sec. Sec.  11.16 and 11.17.

0
41. Add Sec.  11.18 to read as follows:


Sec.  11.18  Signature and certificate for correspondence filed in the 
Office.

    (a) For all documents filed in the Office in patent, trademark, and 
other non-patent matters, and all documents filed with a hearing 
officer in a disciplinary proceeding, except for correspondence that is 
required to be signed by the applicant or party, each piece of 
correspondence filed by a practitioner in the Office must bear a 
signature, personally signed by such practitioner, in compliance with 
Sec.  1.4(d)(1) of this subchapter.
    (b) By presenting to the Office or hearing officer in a 
disciplinary proceeding (whether by signing, filing, submitting, or 
later advocating) any paper, the party presenting such paper, whether a 
practitioner or non-practitioner, is certifying that--
    (1) All statements made therein of the party's own knowledge are 
true, all statements made therein on information and belief are 
believed to be true, and all statements made therein are made with the 
knowledge that whoever, in any matter within the jurisdiction of the 
Office, knowingly and willfully falsifies, conceals, or covers up by 
any trick, scheme, or device a material fact, or knowingly and 
willfully makes any false, fictitious, or fraudulent statements or 
representations, or knowingly and willfully makes or uses any false 
writing or document knowing the same to contain any false, fictitious, 
or fraudulent statement or entry, shall be subject to the penalties set 
forth under 18 U.S.C. 1001 and any other applicable criminal statute, 
and violations of the provisions of this section may jeopardize the 
probative value of the paper; and
    (2) To the best of the party's knowledge, information and belief, 
formed after an inquiry reasonable under the circumstances,
    (i) The paper is not being presented for any improper purpose, such 
as to harass someone or to cause unnecessary delay or needless increase 
in the cost of any proceeding before the Office;
    (ii) The other legal contentions therein are warranted by existing 
law or by a nonfrivolous argument for the extension, modification, or 
reversal of existing law or the establishment of new law;
    (iii) The allegations and other factual contentions have 
evidentiary support or, if specifically so identified, are likely to 
have evidentiary support after a reasonable opportunity for further 
investigation or discovery; and
    (iv) The denials of factual contentions are warranted on the 
evidence, or if specifically so identified, are reasonably based on a 
lack of information or belief.
    (c) Violations of any of paragraphs (b)(2)(i) through (iv) of this 
section are, after notice and reasonable opportunity to respond, 
subject to such sanctions or actions as deemed appropriate by the USPTO 
Director, which may include, but are not limited to, any combination 
of--
    (1) Striking the offending paper;
    (2) Referring a practitioner's conduct to the Director of 
Enrollment and Discipline for appropriate action;
    (3) Precluding a party or practitioner from submitting a paper, or 
presenting or contesting an issue;
    (4) Affecting the weight given to the offending paper; or
    (5) Terminating the proceedings in the Office.
    (d) Any practitioner violating the provisions of this section may 
also be subject to disciplinary action.

0
42. Part 11 is amended to add subpart C to read as follows:
Subpart C--Investigations and Disciplinary Proceedings; Jurisdiction, 
Sanctions, Investigations, and Proceedings
Sec.
11.19 Disciplinary jurisdiction; Jurisdiction to transfer to 
disability inactive status.
11.20 Disciplinary sanctions; Transfer to disability inactive 
status.
11.21 Warnings.
11.22 Investigations.
11.23 Committee on Discipline.
11.24 Reciprocal discipline.
11.25 Interim suspension and discipline based upon conviction of 
committing a serious crime.
11.26 Settlement.
11.27 Exclusion on consent.
11.28 Incapacitated practitioners in a disciplinary proceeding.
11.29 Reciprocal transfer or initial transfer to disability inactive 
status.
11.30-11.31 [Reserved]
11.32 Initiating a disciplinary proceeding.
11.33 [Reserved]
11.34 Complaint.
11.35 Service of complaint.
11.36 Answer to complaint.
11.37 [Reserved]
11.38 Contested case.
11.39 Hearing officer; appointment; responsibilities; review of 
interlocutory orders; stays.

[[Page 47690]]

11.40 Representative for OED Director or respondent.
11.41 Filing of papers.
11.42 Service of papers.
11.43 Motions.
11.44 Hearings.
11.45 Amendment of pleadings.
11.46-11.48 [Reserved]
11.49 Burden of proof.
11.50 Evidence.
11.51 Depositions.
11.52 Discovery.
11.53 Proposed findings and conclusions; post-hearing memorandum.
11.54 Initial decision of hearing officer.
11.55 Appeal to the USPTO Director.
11.56 Decision of the USPTO Director.
11.57 Review of final decision of the USPTO Director.
11.58 Duties of disciplined or resigned practitioner.
11.59 Dissemination of disciplinary and other information.
11.60 Petition for reinstatement.
11.61 Savings clause.
11.62-11.99 [Reserved]

Subpart C--Investigations and Disciplinary Proceedings; 
Jurisdiction, Sanctions, Investigations, and Proceedings


Sec.  11.19  Disciplinary jurisdiction; Jurisdiction to transfer to 
disability inactive status.

    (a) All practitioners engaged in practice before the Office; all 
practitioners administratively suspended; all practitioners registered 
to practice before the Office in patent cases; all practitioners 
inactivated; all practitioners authorized under Sec.  11.6(d) to take 
testimony; and all practitioners transferred to disability inactive 
status, reprimanded, suspended, or excluded from the practice of law by 
a duly constituted authority, including by the USPTO Director, are 
subject to the disciplinary jurisdiction of the Office. Practitioners 
who have resigned shall also be subject to such jurisdiction with 
respect to conduct undertaken prior to the resignation and conduct in 
regard to any practice before the Office following the resignation.
    (b) Grounds for discipline; Grounds for transfer to disability 
inactive status. The following, whether done individually by a 
practitioner or in concert with any other person or persons and whether 
or not done in the course of providing legal services to a client, or 
in a matter pending before the Office, constitute grounds for 
discipline or grounds for transfer to disability inactive status.
    (1) Grounds for discipline include:
    (i) Conviction of a serious crime;
    (ii) Discipline on ethical grounds imposed in another jurisdiction 
or disciplinary disqualification from participating in or appearing 
before any Federal program or agency;
    (iii) Failure to comply with any order of a Court disciplining a 
practitioner, or any final decision of the USPTO Director in a 
disciplinary matter;
    (iv) Violation of a Mandatory Disciplinary Rule identified in Sec.  
10.20(b) of Part 10 of this Subchapter; or
    (v) Violation of the oath or declaration taken by the practitioner. 
See Sec.  11.8.
    (2) Grounds for transfer to disability inactive status include:
    (i) Being transferred to disability inactive status in another 
jurisdiction;
    (ii) Being judicially declared incompetent, being judicially 
ordered to be involuntarily committed after a hearing on the grounds of 
insanity, incompetency or disability, or being placed by court order 
under guardianship or conservatorship; or
    (iii) Filing a motion requesting a disciplinary proceeding be held 
in abeyance because the practitioner is suffering from a disability or 
addiction that makes it impossible for the practitioner to adequately 
defend the charges in the disciplinary proceeding.
    (c) Petitions to disqualify a practitioner in ex parte or inter 
partes matters in the Office are not governed by Sec. Sec.  11.19 
through 11.60 and will be handled on a case-by-case basis under such 
conditions as the USPTO Director deems appropriate.
    (d) The OED Director may refer the existence of circumstances 
suggesting unauthorized practice of law to the authorities in the 
appropriate jurisdiction(s).


Sec.  11.20  Disciplinary sanctions; Transfer to disability inactive 
status.

    (a) Types of discipline. The USPTO Director, after notice and 
opportunity for a hearing, and where grounds for discipline exist, may 
impose on a practitioner the following types of discipline:
    (1) Exclusion from practice before the Office;
    (2) Suspension from practice before the Office for an appropriate 
period of time;
    (3) Reprimand or censure; or
    (4) Probation. Probation may be imposed in lieu of or in addition 
to any other disciplinary sanction. Any conditions of probation shall 
be stated in writing in the order imposing probation. The order shall 
also state whether, and to what extent, the practitioner shall be 
required to notify clients of the probation. The order shall establish 
procedures for the supervision of probation. Violation of any condition 
of probation shall be cause for the probation to be revoked, and the 
disciplinary sanction to be imposed for the remainder of the probation 
period. Revocation of probation shall occur only after an order to show 
cause why probation should not be revoked is resolved adversely to the 
practitioner.
    (b) Conditions imposed with discipline. When the USPTO Director 
imposes discipline, the practitioner may be required to make 
restitution either to persons financially injured by the practitioner's 
conduct or to an appropriate client's security trust fund, or both, as 
a condition of probation or of reinstatement. Such restitution shall be 
limited to the return of unearned practitioner fees or misappropriated 
client funds. Any other reasonable condition may also be imposed, 
including a requirement that the practitioner take and pass a 
professional responsibility examination.
    (c) Transfer to disability inactive status. The USPTO Director, 
after notice and opportunity for a hearing may, and where grounds exist 
to believe a practitioner has been transferred to disability inactive 
status in another jurisdiction, or has been judicially declared 
incompetent; judicially ordered to be involuntarily committed after a 
hearing on the grounds of incompetency or disability, or placed by 
court order under guardianship or conservatorship, transfer the 
practitioner to disability inactive status.


Sec.  11.21  Warnings.

    A warning is neither public nor a disciplinary sanction. The OED 
Director may conclude an investigation with the issuance of a warning. 
The warning shall contain a brief statement of facts and Mandatory 
Disciplinary Rules identified in Sec.  10.20(b) of Part 10 of this 
Subchapter relevant to the facts.


Sec.  11.22  Investigations.

    (a) The OED Director is authorized to investigate possible grounds 
for discipline. An investigation may be initiated when the OED Director 
receives a grievance, information or evidence from any source 
suggesting possible grounds for discipline. Neither unwillingness nor 
neglect by a grievant to prosecute a charge, nor settlement, 
compromise, or restitution with the grievant, shall in itself justify 
abatement of an investigation.
    (b) Any person possessing information or evidence concerning 
possible grounds for discipline of a practitioner may report the 
information or evidence to the OED Director. The OED Director may 
request that the report be presented in the form of an affidavit or 
declaration.

[[Page 47691]]

    (c) Information or evidence coming from any source which presents 
or alleges facts suggesting possible grounds for discipline of a 
practitioner will be deemed a grievance.
    (d) Preliminary screening of information or evidence. The OED 
Director shall examine all information or evidence concerning possible 
grounds for discipline of a practitioner.
    (e) Notification of investigation. The OED Director shall notify 
the practitioner in writing of the initiation of an investigation into 
whether a practitioner has engaged in conduct constituting possible 
grounds for discipline.
    (f) Request for information and evidence by OED Director.
    (1) In the course of the investigation, the OED Director may 
request information and evidence regarding possible grounds for 
discipline of a practitioner from:
    (i) The grievant,
    (ii) The practitioner, or
    (iii) Any person who may reasonably be expected to provide 
information and evidence needed in connection with the grievance or 
investigation.
    (2) The OED Director may request information and evidence regarding 
possible grounds for discipline of a practitioner from a non-grieving 
client either after obtaining the consent of the practitioner or upon a 
finding by a Contact Member of the Committee on Discipline, appointed 
in accordance with Sec.  11.23(d), that good cause exists to believe 
that the possible ground for discipline alleged has occurred with 
respect to non-grieving clients. Neither a request for, nor disclosure 
of, such information shall constitute a violation of any of the 
Mandatory Disciplinary Rules identified in Sec.  10.20(b) of this 
subchapter.
    (g) Where the OED Director makes a request under paragraph (f)(2) 
of this section to a Contact Member of the Committee on Discipline, 
such Contact Member shall not, with respect to the practitioner 
connected to the OED Director's request, participate in the Committee 
on Discipline panel that renders a probable cause determination under 
paragraph (b)(1) of this section concerning such practitioner, and that 
forwards the probable cause finding and recommendation to the OED 
Director under paragraph (b)(2) of this section.
    (h) Disposition of investigation. Upon the conclusion of an 
investigation, the OED Director may:
    (1) Close the investigation without issuing a warning, or taking 
disciplinary action;
    (2) Issue a warning to the practitioner;
    (3) Institute formal charges upon the approval of the Committee on 
Discipline; or
    (4) Enter into a settlement agreement with the practitioner and 
submit the same for approval of the USPTO Director.
    (i) Closing investigation without issuing a warning or taking 
disciplinary action. The OED Director shall terminate an investigation 
and decline to refer a matter to the Committee on Discipline if the OED 
Director determines that:
    (1) The information or evidence is unfounded;
    (2) The information or evidence relates to matters not within the 
jurisdiction of the Office;
    (3) As a matter of law, the conduct about which information or 
evidence has been obtained does not constitute grounds for discipline, 
even if the conduct may involve a legal dispute; or
    (4) The available evidence is insufficient to conclude that there 
is probable cause to believe that grounds exist for discipline.


Sec.  11.23  Committee on Discipline.

    (a) The USPTO Director shall appoint a Committee on Discipline. The 
Committee on Discipline shall consist of at least three employees of 
the Office. None of the Committee members shall report directly or 
indirectly to the OED Director or any employee designated by the USPTO 
Director to decide disciplinary matters. Each Committee member shall be 
a member in good standing of the bar of the highest court of a State. 
The Committee members shall select a Chairperson from among themselves. 
Three Committee members will constitute a panel of the Committee.
    (b) Powers and duties of the Committee on Discipline. The Committee 
shall have the power and duty to:
    (1) Meet in panels at the request of the OED Director and, after 
reviewing evidence presented by the OED Director, by majority vote of 
the panel, determine whether there is probable cause to bring charges 
under Sec.  11.32 against a practitioner; and
    (2) Prepare and forward its own probable cause findings and 
recommendations to the OED Director.
    (c) No discovery shall be authorized of, and no member of the 
Committee on Discipline shall be required to testify about 
deliberations of, the Committee on Discipline or of any panel.
    (d) The Chairperson shall appoint the members of the panels and a 
Contact Member of the Committee on Discipline.


Sec.  11.24  Reciprocal discipline.

    (a) Notification of OED Director. Within thirty days of being 
publicly censured, publicly reprimanded, subjected to probation, 
disbarred or suspended by another jurisdiction, or being disciplinarily 
disqualified from participating in or appearing before any Federal 
program or agency, a practitioner subject to the disciplinary 
jurisdiction of the Office shall notify the OED Director in writing of 
the same. A practitioner is deemed to be disbarred if he or she is 
disbarred, excluded on consent, or has resigned in lieu of a 
disciplinary proceeding. Upon receiving notification from any source or 
otherwise learning that a practitioner subject to the disciplinary 
jurisdiction of the Office has been so publicly censured, publicly 
reprimanded, subjected to probation, disbarred, suspended or 
disciplinarily disqualified, the OED Director shall obtain a certified 
copy of the record or order regarding the public censure, public 
reprimand, probation, disbarment, suspension or disciplinary 
disqualification and file the same with the USPTO Director. The OED 
Director shall, in addition, without Committee on Discipline 
authorization, file with the USPTO Director a complaint complying with 
Sec.  11.34 against the practitioner predicated upon the public 
censure, public reprimand, probation, disbarment, suspension or 
disciplinary disqualification. The OED Director shall request the USPTO 
Director to issue a notice and order as set forth in paragraph (b) of 
this section.
    (b) Notification served on practitioner. Upon receipt of a 
certified copy of the record or order regarding the practitioner being 
so publicly censured, publicly reprimanded, subjected to probation, 
disbarred, suspended or disciplinarily disqualified together with the 
complaint, the USPTO Director shall issue a notice directed to the 
practitioner in accordance with Sec.  11.35 and to the OED Director 
containing:
    (1) A copy of the record or order regarding the public censure, 
public reprimand, probation, disbarment, suspension or disciplinary 
disqualification;
    (2) A copy of the complaint; and
    (3) An order directing the practitioner to file a response with the 
USPTO Director and the OED Director, within forty days of the date of 
the notice establishing a genuine issue of material fact predicated 
upon the grounds set forth in paragraphs (d)(1)(i) through (d)(1)(iv) 
of this section that the imposition of the identical public censure, 
public reprimand, probation, disbarment, suspension or disciplinary

[[Page 47692]]

disqualification would be unwarranted and the reasons for that claim.
    (c) Effect of stay in another jurisdiction. In the event the public 
censure, public reprimand, probation, disbarment, suspension imposed by 
another jurisdiction or disciplinary disqualification imposed in the 
Federal program or agency has been stayed, any reciprocal discipline 
imposed by the USPTO may be deferred until the stay expires.
    (d) Hearing and discipline to be imposed. (1) The USPTO Director 
shall hear the matter on the documentary record unless the USPTO 
Director determines that an oral hearing is necessary. After expiration 
of the forty days from the date of the notice pursuant to provisions of 
paragraph (b) of this section, the USPTO Director shall consider any 
timely filed response and shall impose the identical public censure, 
public reprimand, probation, disbarment, suspension or disciplinary 
disqualification unless the practitioner clearly and convincingly 
demonstrates, and the USPTO Director finds there is a genuine issue of 
material fact that:
    (i) The procedure elsewhere was so lacking in notice or opportunity 
to be heard as to constitute a deprivation of due process;
    (ii) There was such infirmity of proof establishing the conduct 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;
    (iii) The imposition of the same public censure, public reprimand, 
probation, disbarment, suspension or disciplinary disqualification by 
the Office would result in grave injustice; or
    (iv) Any argument that the practitioner was not publicly censured, 
publicly reprimanded, placed on probation, disbarred, suspended or 
disciplinarily disqualified.
    (2) If the USPTO Director determines that there is no genuine issue 
of material fact, the USPTO Director shall enter an appropriate final 
order. If the USPTO Director is unable to make such determination 
because there is a genuine issue of material fact, the USPTO Director 
shall enter an appropriate order:
    (i) Referring the complaint to a hearing officer for a formal 
hearing and entry of an initial decision in accordance with the other 
rules in this part, and
    (ii) Directing the practitioner to file an answer to the complaint 
in accordance with Sec.  11.36.
    (e) Adjudication in another jurisdiction or Federal agency or 
program. In all other respects, a final adjudication in another 
jurisdiction or Federal agency or program that a practitioner, whether 
or not admitted in that jurisdiction, has been guilty of misconduct 
shall establish a prima facie case by clear and convincing evidence 
that the practitioner violated 37 CFR 10.23, as further identified 
under 37 CFR 10.23(c)(5), (or any successor regulation identifying such 
public censure, public reprimand, probation, disbarment, suspension or 
disciplinary disqualification as a basis for a disciplinary proceeding 
in this Office).
    (f) Reciprocal discipline--action where practice has ceased. Upon 
request by the practitioner, reciprocal discipline may be imposed nunc 
pro tunc only if the practitioner promptly notified the OED Director of 
his or her censure, public reprimand, probation, disbarment, suspension 
or disciplinary disqualification in another jurisdiction, and 
establishes by clear and convincing evidence that the practitioner 
voluntarily ceased all activities related to practice before the Office 
and complied with all provisions of Sec.  11.58. The effective date of 
any public censure, public reprimand, probation, suspension, disbarment 
or disciplinary disqualification imposed nunc pro tunc shall be the 
date the practitioner voluntarily ceased all activities related to 
practice before the Office and complied with all provisions of Sec.  
11.58.
    (g) Reinstatement following reciprocal discipline proceeding. A 
practitioner may petition for reinstatement under conditions set forth 
in Sec.  11.60 no sooner than completion of the period of reciprocal 
discipline imposed, and compliance with all provisions of Sec.  11.58.


Sec.  11.25  Interim suspension and discipline based upon conviction of 
committing a serious crime.

    (a) Notification of OED Director. Upon being convicted of a crime 
in a court of the United States or any State, or violating a criminal 
law of a foreign country, a practitioner subject to the disciplinary 
jurisdiction of the Office shall notify the OED Director in writing of 
the same within thirty days from the date of such conviction. Upon 
being advised or learning that a practitioner subject to the 
disciplinary jurisdiction of the Office has been convicted of a crime, 
the OED Director shall make a preliminary determination whether the 
crime constitutes a serious crime warranting interim suspension. If the 
crime is a serious crime, the OED Director shall file with the USPTO 
Director proof of the conviction and request the USPTO Director to 
issue a notice and order set forth in paragraph (b)(2) of this section. 
The OED Director shall in addition, without Committee on Discipline 
authorization, file with the USPTO Director a complaint against the 
practitioner complying with Sec.  11.34 predicated upon the conviction 
of a serious crime. If the crime is not a serious crime, the OED 
Director shall process the matter in the same manner as any other 
information or evidence of a possible violation of a Mandatory 
Disciplinary Rule identified in Sec.  10.20(b) of this subchapter 
coming to the attention of the OED Director.
    (b) Interim suspension and referral for disciplinary proceeding. 
All proceedings under this section shall be handled as expeditiously as 
possible.
    (1) The USPTO Director has authority to place a practitioner on 
interim suspension after hearing the request for interim suspension on 
the documentary record.
    (2) Notification served on practitioner. Upon receipt of a 
certified copy of the court record, docket entry or judgment 
demonstrating that the practitioner has been so convicted together with 
the complaint, the USPTO Director shall forthwith issue a notice 
directed to the practitioner in accordance with Sec. Sec.  11.35(a), 
(b) or (c), and to the OED Director, containing:
    (i) A copy of the court record, docket entry, or judgment of 
conviction;
    (ii) A copy of the complaint; and
    (iii) An order directing the practitioner to file a response with 
the USPTO Director and the OED Director, within forty days of the date 
of the notice, establishing that there is a genuine issue of material 
fact that the crime did not constitute a serious crime, the 
practitioner is not the individual found guilty of the crime, or that 
the conviction was so lacking in notice or opportunity to be heard as 
to constitute a deprivation of due process.
    (3) Hearing and final order on request for interim suspension. The 
request for interim suspension shall be heard by the USPTO Director on 
the documentary record unless the USPTO Director determines that the 
practitioner's response establishes a genuine issue of material fact 
that: The crime did not constitute a serious crime, the practitioner is 
not the person who committed the crime, or that the conviction was so 
lacking in notice or opportunity to be heard as to constitute a 
deprivation of due process. If the USPTO Director determines that there 
is no genuine issue of material fact regarding the defenses set forth 
in the preceding sentence, the USPTO Director shall enter an 
appropriate final order regarding the OED Director's request for 
interim suspension regardless of the

[[Page 47693]]

pendency of any criminal appeal. If the USPTO Director is unable to 
make such determination because there is a genuine issue of material 
fact, the USPTO Director shall enter a final order dismissing the 
request and enter a further order referring the complaint to a hearing 
officer for a hearing and entry of an initial decision in accordance 
with the other rules in this part and directing the practitioner to 
file an answer to the complaint in accordance with Sec.  11.36.
    (4) Termination. The USPTO Director has authority to terminate an 
interim suspension. In the interest of justice, the USPTO Director may 
terminate an interim suspension at any time upon a showing of 
extraordinary circumstances, after affording the OED Director an 
opportunity to respond to the request to terminate interim suspension.
    (5) Referral for disciplinary proceeding. Upon entering a final 
order imposing interim suspension, the USPTO Director shall refer the 
complaint to a hearing officer to conduct a formal disciplinary 
proceeding. The formal disciplinary proceeding, however, shall be 
stayed by the hearing officer until all direct appeals from the 
conviction are concluded. Review of the initial decision of the hearing 
officer shall be pursuant to Sec.  11.55.
    (c) Proof of conviction and guilt--(1) Conviction in the United 
States. For purposes of a hearing for interim suspension and a hearing 
on the formal charges in a complaint filed as a consequence of the 
conviction, a certified copy of the court record, docket entry, or 
judgment of conviction in a court of the United States or any State 
shall establish a prima facie case by clear and convincing evidence 
that the practitioner was convicted of a serious crime and that the 
conviction was not lacking in notice or opportunity to be heard as to 
constitute a deprivation of due process.
    (2) Conviction in a foreign country. For purposes of a hearing for 
interim suspension and on the formal charges filed as a result of a 
finding of guilt, a certified copy of the court record, docket entry, 
or judgment of conviction in a court of a foreign country shall 
establish a prima facie case by clear and convincing evidence that the 
practitioner was convicted of a serious crime and that the conviction 
was not lacking in notice or opportunity to be heard as to constitute a 
deprivation of due process. However, nothing in this paragraph shall 
preclude the practitioner from demonstrating by clear and convincing 
evidence in any hearing on a request for interim suspension there is a 
genuine issue of material fact to be considered when determining if the 
elements of a serious crime were committed in violating the criminal 
law of the foreign country and whether a disciplinary sanction should 
be entered.
    (d) Crime determined not to be serious crime. If the USPTO Director 
determines that the crime is not a serious crime, the complaint shall 
be referred to the OED Director for investigation under Sec.  11.22 and 
processing as is appropriate.
    (e) Reinstatement--(1) Upon reversal or setting aside a finding of 
guilt or a conviction. If a practitioner suspended solely under the 
provisions of paragraph (b) of this section demonstrates that the 
underlying finding of guilt or conviction of serious crimes has been 
reversed or vacated, the order for interim suspension shall be vacated 
and the practitioner shall be placed on active status unless the 
finding of guilt was reversed or the conviction was set aside with 
respect to less than all serious crimes for which the practitioner was 
found guilty or convicted. The vacating of the interim suspension will 
not terminate any other disciplinary proceeding then pending against 
the practitioner, the disposition of which shall be determined by the 
hearing officer before whom the matter is pending, on the basis of all 
available evidence other than the finding of guilt or conviction.
    (2) Following conviction of a serious crime. Any practitioner 
convicted of a serious crime and disciplined in whole or in part in 
regard to that conviction, may petition for reinstatement under 
conditions set forth in Sec.  11.60 no sooner than five years after 
being discharged following completion of service of his or her 
sentence, or after completion of service under probation or parole, 
whichever is later.
    (f) Notice to clients and others of interim suspension. An interim 
suspension under this section shall constitute a suspension of the 
practitioner for the purpose of Sec.  11.58.


Sec.  11.26  Settlement.

    Before or after a complaint under Sec.  11.34 is filed, a 
settlement conference may occur between the OED Director and the 
practitioner. Any offers of compromise and any statements made during 
the course of settlement discussions shall not be admissible in 
subsequent proceedings. The OED Director may recommend to the USPTO 
Director any settlement terms deemed appropriate, including steps taken 
to correct or mitigate the matter forming the basis of the action, or 
to prevent recurrence of the same or similar conduct. A settlement 
agreement shall be effective only upon entry of a final decision by the 
USPTO Director.


Sec.  11.27  Exclusion on consent.

    (a) Required affidavit. The OED Director may confer with a 
practitioner concerning possible violations by the practitioner of the 
Rules of Professional Conduct whether or not a disciplinary proceeding 
has been instituted. A practitioner who is the subject of an 
investigation or a pending disciplinary proceeding based on allegations 
of grounds for discipline, and who desires to resign, may only do so by 
consenting to exclusion and delivering to the OED Director an affidavit 
declaring the consent of the practitioner to exclusion and stating:
    (1) That the practitioner's consent is freely and voluntarily 
rendered, that the practitioner is not being subjected to coercion or 
duress, and that the practitioner is fully aware of the implications of 
consenting to exclusion;
    (2) That the practitioner is aware that there is currently pending 
an investigation into, or a proceeding involving allegations of 
misconduct, the nature of which shall be specifically set forth in the 
affidavit to the satisfaction of the OED Director;
    (3) That the practitioner acknowledges that, if and when he or she 
applies for reinstatement under Sec.  11.60, the OED Director will 
conclusively presume, for the limited purpose of determining the 
application for reinstatement, that:
    (i) The facts upon which the investigation or complaint is based 
are true, and
    (ii) The practitioner could not have successfully defended himself 
or herself against the allegations in the investigation or charges in 
the complaint.
    (b) Action by the USPTO Director. Upon receipt of the required 
affidavit, the OED Director shall file the affidavit and any related 
papers with the USPTO Director for review and approval. Upon such 
approval, the USPTO Director will enter an order excluding the 
practitioner on consent and providing other appropriate actions. Upon 
entry of the order, the excluded practitioner shall comply with the 
requirements set forth in Sec.  11.58.
    (c) When an affidavit under paragraph (a) of this section is 
received after a complaint under Sec.  11.34 has been filed, the OED 
Director shall notify the hearing officer. The hearing officer shall 
enter an order transferring the disciplinary proceeding to the USPTO 
Director, who may enter an order excluding the practitioner on consent.

[[Page 47694]]

    (d) Reinstatement. Any practitioner excluded on consent under this 
section may not petition for reinstatement for five years. A 
practitioner excluded on consent who intends to reapply for admission 
to practice before the Office must comply with the provisions of Sec.  
11.58, and apply for reinstatement in accordance with Sec.  11.60. 
Failure to comply with the provisions of Sec.  11.58 constitutes 
grounds for denying an application for reinstatement.


Sec.  11.28  Incapacitated practitioners in a disciplinary proceeding.

    (a) Holding in abeyance a disciplinary proceeding because of 
incapacitation due to a current disability or addiction--(1) 
Practitioner's motion. In the course of a disciplinary proceeding under 
Sec.  11.32, but before the date set by the hearing officer for a 
hearing, the practitioner may file a motion requesting the hearing 
officer to enter an order holding such proceeding in abeyance based on 
the contention that the practitioner is suffering from a disability or 
addiction that makes it impossible for the practitioner to adequately 
defend the charges in the disciplinary proceeding.
    (i) Content of practitioner's motion. The practitioner's motion 
shall, in addition to any other requirement of Sec.  11.43, include or 
have attached thereto:
    (A) A brief statement of all material facts;
    (B) Affidavits, medical reports, official records, or other 
documents and the opinion of at least one medical expert setting forth 
and establishing any of the material facts on which the practitioner is 
relying;
    (C) A statement that the practitioner acknowledges the alleged 
incapacity by reason of disability or addiction;
    (D) Written consent that the practitioner be transferred to 
disability inactive status if the motion is granted; and
    (E) A written agreement by the practitioner to not practice before 
the Office in patent, trademark or other non-patent cases while on 
disability inactive status.
    (ii) Response. The OED Director's response to any motion hereunder 
shall be served and filed within thirty days after service of the 
practitioner's motion unless such time is shortened or enlarged by the 
hearing officer for good cause shown, and shall set forth the 
following:
    (A) All objections, if any, to the actions requested in the motion;
    (B) An admission, denial or allegation of lack of knowledge with 
respect to each of the material facts in the practitioner's motion and 
accompanying documents; and
    (C) Affidavits, medical reports, official records, or other 
documents setting forth facts on which the OED Director intends to rely 
for purposes of disputing or denying any material fact set forth in the 
practitioner's papers.
    (2) Disposition of practitioner's motion. The hearing officer shall 
decide the motion and any response thereto. The motion shall be granted 
upon a showing of good cause to believe the practitioner to be 
incapacitated as alleged. If the required showing is made, the hearing 
officer shall enter an order holding the disciplinary proceeding in 
abeyance. In the case of addiction to drugs or intoxicants, the order 
may provide that the practitioner will not be returned to active status 
absent satisfaction of specified conditions. Upon receipt of the order, 
the OED Director shall transfer the practitioner to disability inactive 
status, give notice to the practitioner, cause notice to be published, 
and give notice to appropriate authorities in the Office that the 
practitioner has been placed on disability inactive status. The 
practitioner shall comply with the provisions of Sec.  11.58, and shall 
not engage in practice before the Office in patent, trademark and other 
non-patent law until a determination is made of the practitioner's 
capability to resume practice before the Office in a proceeding under 
paragraph (c) or paragraph (d) of this section. A practitioner on 
disability inactive status must seek permission from the OED Director 
to engage in an activity authorized under Sec.  11.58(e). Permission 
will be granted only if the practitioner has complied with all the 
conditions of Sec. Sec.  11.58(a) through 11.58(d) applicable to 
disability inactive status. In the event that permission is granted, 
the practitioner shall fully comply with the provisions of Sec.  
11.58(e).
    (b) Motion for reactivation. Any practitioner transferred to 
disability inactive status in a disciplinary proceeding may file with 
the hearing officer a motion for reactivation once a year beginning at 
any time not less than one year after the initial effective date of 
inactivation, or once during any shorter interval provided by the order 
issued pursuant to paragraph (a)(2) of this section or any modification 
thereof. If the motion is granted, the disciplinary proceeding shall 
resume under such schedule as may be established by the hearing 
officer.
    (c) Contents of motion for reactivation. A motion by the 
practitioner for reactivation alleging that a practitioner has 
recovered from a prior disability or addiction shall be accompanied by 
all available medical reports or similar documents relating thereto. 
The hearing officer may require the practitioner to present such other 
information as is necessary.
    (d) OED Director's motion to resume disciplinary proceeding held in 
abeyance. (1) The OED Director, having good cause to believe a 
practitioner is no longer incapacitated, may file a motion requesting 
the hearing officer to terminate a prior order holding in abeyance any 
pending proceeding because of the practitioner's disability or 
addiction. The hearing officer shall decide the matter presented by the 
OED Director's motion hereunder based on the affidavits and other 
admissible evidence attached to the OED Director's motion and the 
practitioner's response. The OED Director bears the burden of showing 
by clear and convincing evidence that the practitioner is able to 
defend himself or herself. If there is any genuine issue as to one or 
more material facts, the hearing officer will hold an evidentiary 
hearing.
    (2) The hearing officer, upon receipt of the OED Director's motion 
under paragraph (d)(1) of this section, may direct the practitioner to 
file a response. If the hearing officer requires the practitioner to 
file a response, the practitioner must present clear and convincing 
evidence that the prior self-alleged disability or addiction continues 
to make it impossible for the practitioner to defend himself or herself 
in the underlying proceeding being held in abeyance.
    (e) Action by the hearing officer. If, in deciding a motion under 
paragraph (b) or (d) of this section, the hearing officer determines 
that there is good cause to believe the practitioner is not 
incapacitated from defending himself or herself, or is not 
incapacitated from practicing before the Office, the hearing officer 
shall take such action as is deemed appropriate, including the entry of 
an order directing the reactivation of the practitioner and resumption 
of the disciplinary proceeding.


Sec.  11.29  Reciprocal transfer or initial transfer to disability 
inactive status.

    (a) Notification of OED Director. (1) Transfer to disability 
inactive status in another jurisdiction as grounds for reciprocal 
transfer by the Office. Within thirty days of being transferred to 
disability inactive status in another jurisdiction, a practitioner 
subject to the disciplinary jurisdiction of the Office shall notify the 
OED Director in writing of the transfer. Upon notification from any 
source that a practitioner subject to the disciplinary jurisdiction of 
the

[[Page 47695]]

Office has been transferred to disability inactive status in another 
jurisdiction, the OED Director shall obtain a certified copy of the 
order. The OED Director shall file with the USPTO Director:
    (i) The order;
    (ii) A request that the practitioner be transferred to disability 
inactive status, including the specific grounds therefor; and
    (iii) A request that the USPTO Director issue a notice and order as 
set forth in paragraph (b) of this section.
    (2) Involuntary commitment, adjudication of incompetency or court 
ordered placement under guardianship or conservatorship as grounds for 
initial transfer to disability inactive status. Within thirty days of 
being judicially declared incompetent, being judicially ordered to be 
involuntarily committed after a hearing on the grounds of incompetency 
or disability, or being placed by court order under guardianship or 
conservatorship in another jurisdiction, a practitioner subject to the 
disciplinary jurisdiction of the Office shall notify the OED Director 
in writing of such judicial action. Upon notification from any source 
that a practitioner subject to the disciplinary jurisdiction of the 
Office has been subject to such judicial action, the OED Director shall 
obtain a certified copy of the order. The OED Director shall file with 
the USPTO Director:
    (i) The order;
    (ii) A request that the practitioner be transferred to disability 
inactive status, including the specific grounds therefor; and
    (iii) A request that the USPTO Director issue a notice and order as 
set forth in paragraph (b) of this section.
    (b) Notice served on practitioner. Upon receipt of a certified copy 
of an order or declaration issued by another jurisdiction demonstrating 
that a practitioner subject to the disciplinary jurisdiction of the 
Office has been transferred to disability inactive status, judicially 
declared incompetent, judicially ordered to be involuntarily committed 
after a judicial hearing on the grounds of incompetency or disability, 
or placed by court order under guardianship or conservatorship, 
together with the OED Director's request, the USPTO Director shall 
issue a notice, comporting with Sec.  11.35, directed to the 
practitioner containing:
    (1) A copy of the order or declaration from the other jurisdiction,
    (2) A copy of the OED Director's request; and
    (3) An order directing the practitioner to file a response with the 
USPTO Director and the OED Director, within 30 days from the date of 
the notice, establishing a genuine issue of material fact supported by 
an affidavit and predicated upon the grounds set forth in Sec.  
11.29(d) (1) through (4) that a transfer to disability inactive status 
would be unwarranted and the reasons therefor.
    (c) Effect of stay of transfer, judicially declared incompetence, 
judicially ordered involuntarily commitment on the grounds of 
incompetency or disability, or court-ordered placement under 
guardianship or conservatorship. In the event the transfer, judicially 
declared incompetence, judicially ordered involuntary commitment on the 
grounds of incompetency or disability, or court-ordered placement under 
guardianship or conservatorship in the other jurisdiction has been 
stayed there, any reciprocal transfer or transfer by the Office may be 
deferred until the stay expires.
    (d) Hearing and transfer to disability inactive status. The request 
for transfer to disability inactive status shall be heard by the USPTO 
Director on the documentary record unless the USPTO Director determines 
that there is a genuine issue of material fact, in which case the USPTO 
Director may deny the request. Upon the expiration of 30 days from the 
date of the notice pursuant to the provisions of paragraph (b) of this 
section, the USPTO Director shall consider any timely filed response 
and impose the identical transfer to disability inactive status based 
on the practitioner's transfer to disability status in another 
jurisdiction, or shall transfer the practitioner to disability inactive 
status based on judicially declared incompetence, judicially ordered 
involuntary commitment on the grounds of incompetency or disability, or 
court-ordered placement under guardianship or conservatorship, unless 
the practitioner demonstrates by clear and convincing evidence, or the 
USPTO Director finds there is a genuine issue of material fact by clear 
and convincing evidence that:
    (1) The procedure was so lacking in notice or opportunity to be 
heard as to constitute a deprivation of due process;
    (2) There was such infirmity of proof establishing the transfer to 
disability status, judicial declaration of incompetence, judicial order 
for involuntary commitment on the grounds of incompetency or 
disability, or placement by court order under guardianship or 
conservatorship that the USPTO Director could not, consistent with 
Office's duty, accept as final the conclusion on that subject;
    (3) The imposition of the same disability status or transfer to 
disability status by the USPTO Director would result in grave 
injustice; or
    (4) The practitioner is not the individual transferred to 
disability status, judicially declared incompetent, judicially ordered 
for involuntary commitment on the grounds of incompetency or 
disability, or placed by court order under guardianship or 
conservatorship.
    (5) If the USPTO Director determines that there is no genuine issue 
of material fact with regard to any of the elements of paragraphs 
(d)(1) through (4) of this section, the USPTO Director shall enter an 
appropriate final order. If the USPTO Director is unable to make that 
determination because there is a genuine issue of material fact, the 
USPTO Director shall enter an appropriate order dismissing the OED 
Director's request for such reason.
    (e) Adjudication in other jurisdiction. In all other aspects, a 
final adjudication in another jurisdiction that a practitioner be 
transferred to disability inactive status, is judicially declared 
incompetent, is judicially ordered to be involuntarily committed on the 
grounds of incompetency or disability, or is placed by court order 
under guardianship or conservatorship shall establish the disability 
for purposes of a reciprocal transfer to or transfer to disability 
status before the Office.
    (f) A practitioner who is transferred to disability inactive status 
under this section shall be deemed to have been refused recognition to 
practice before the Office for purposes of 35 U.S.C. 32.
    (g) Order imposing reciprocal transfer to disability inactive 
status or order imposing initial transfer to disability inactive 
status. An order by the USPTO Director imposing reciprocal transfer to 
disability inactive status, or transferring a practitioner to 
disability inactive status shall be effective immediately, and shall be 
for an indefinite period until further order of the USPTO Director. A 
copy of the order transferring a practitioner to disability inactive 
status shall be served upon the practitioner, the practitioner's 
guardian, and/or the director of the institution to which the 
practitioner has been committed in the manner the USPTO Director may 
direct. A practitioner reciprocally transferred or transferred to 
disability inactive status shall comply with the provisions of Sec.  
11.58, and shall not engage in practice before the Office in patent, 
trademark and other non-patent law unless and until reinstated to 
active status.
    (h) Confidentiality of proceeding; Orders to be public--(1) 
Confidentiality of proceeding. All proceedings under this section 
involving allegations of disability of a practitioner shall be kept 
confidential until and unless the

[[Page 47696]]

USPTO Director enters an order reciprocally transferring or 
transferring the practitioner to disability inactive status.
    (2) Orders to be public. The OED Director shall publicize any 
reciprocal transfer to disability inactive status or transfer to 
disability inactive status in the same manner as for the imposition of 
public discipline.
    (i) Employment of practitioners on disability inactive status. A 
practitioner on disability inactive status must seek permission from 
the OED Director to engage in an activity authorized under Sec.  
11.58(e). Permission will be granted only if the practitioner has 
complied with all the conditions of Sec. Sec.  11.58(a) through 
11.58(d) applicable to disability inactive status. In the event that 
permission is granted, the practitioner shall fully comply with the 
provisions of Sec.  11.58(e).
    (j) Reinstatement from disability inactive status. (1) Generally. 
No practitioner reciprocally transferred or transferred to disability 
inactive status under this section may resume active status except by 
order of the OED Director.
    (2) Petition. A practitioner reciprocally transferred or 
transferred to disability inactive status shall be entitled to petition 
the OED Director for transfer to active status once a year, or at 
whatever shorter intervals the USPTO Director may direct in the order 
transferring or reciprocally transferring the practitioner to 
disability inactive status or any modification thereof.
    (3) Examination. Upon the filing of a petition for transfer to 
active status, the OED Director may take or direct whatever action is 
deemed necessary or proper to determine whether the incapacity has been 
removed, including a direction for an examination of the practitioner 
by qualified medical or psychological experts designated by the OED 
Director. The expense of the examination shall be paid and borne by the 
practitioner.
    (4) Required disclosure, waiver of privilege. With the filing of a 
petition for reinstatement to active status, the practitioner shall be 
required to disclose the name of each psychiatrist, psychologist, 
physician and hospital or other institution by whom or in which the 
practitioner has been examined or treated for the disability since the 
transfer to disability inactive status. The practitioner shall furnish 
to the OED Director written consent to the release of information and 
records relating to the incapacity if requested by the OED Director.
    (5) Learning in the law, examination. The OED Director may direct 
that the practitioner establish proof of competence and learning in 
law, which proof may include passing the registration examination.
    (6) Granting of petition for transfer to active status. The OED 
Director shall grant the petition for transfer to active status upon a 
showing by clear and convincing evidence that the incapacity has been 
removed.
    (7) Reinstatement in other jurisdiction. If a practitioner is 
reciprocally transferred to disability inactive status on the basis of 
a transfer to disability inactive status in another jurisdiction, the 
OED Director may dispense with further evidence that the disability has 
been removed and may immediately direct reinstatement to active status 
upon such terms as are deemed proper and advisable.
    (8) Judicial declaration of competency. If a practitioner is 
transferred to disability inactive status on the basis of a judicially 
declared incompetence, judicially ordered involuntary commitment on the 
grounds of incompetency or disability, or court-ordered placement under 
guardianship or conservatorship has been declared to be competent, the 
OED Director may dispense with further evidence that the incapacity to 
practice law has been removed and may immediately direct reinstatement 
to active status.


Sec. Sec.  11.30-11.31  [Reserved]


Sec.  11.32  Instituting a disciplinary proceeding.

    If after conducting an investigation under Sec.  11.22(a), the OED 
Director is of the opinion that grounds exist for discipline under 
Sec. Sec.  11.19(b)(3) through (5), the OED Director, after complying 
where necessary with the provisions of 5 U.S.C. 558(c), shall convene a 
meeting of a panel of the Committee on Discipline. The panel of the 
Committee on Discipline shall then determine as specified in Sec.  
11.23(b) whether a disciplinary proceeding shall be instituted. If the 
panel of the Committee on Discipline determines that probable cause 
exists to bring charges under Sec. Sec.  11.19(b)(3) through (5), the 
OED Director shall institute a disciplinary proceeding by filing a 
complaint under Sec.  11.34.


Sec.  11.33  [Reserved]


Sec.  11.34  Complaint.

    (a) A complaint instituting a disciplinary proceeding under 
Sec. Sec.  11.25(b)(4) or 11.32 shall:
    (1) Name the practitioner who may then be referred to as the 
``respondent'';
    (2) Give a plain and concise description of the respondent's 
alleged grounds for discipline;
    (3) State the place and time, not less than thirty days from the 
date the complaint is filed, for filing an answer by the respondent;
    (4) State that a decision by default may be entered if an answer is 
not timely filed by the respondent; and
    (5) Be signed by the OED Director.
    (b) A complaint will be deemed sufficient if it fairly informs the 
respondent of any grounds for discipline, and where applicable, the 
Mandatory Disciplinary Rules identified in Sec.  10.20(b) of this 
subchapter that form the basis for the disciplinary proceeding so that 
the respondent is able to adequately prepare a defense.
    (c) The complaint shall be filed in the manner prescribed by the 
USPTO Director.


Sec.  11.35  Service of complaint.

    (a) A complaint may be served on a respondent in any of the 
following methods:
    (1) By delivering a copy of the complaint personally to the 
respondent, in which case the individual who gives the complaint to the 
respondent shall file an affidavit with the OED Director indicating the 
time and place the complaint was delivered to the respondent.
    (2) By mailing a copy of the complaint by ``Express Mail,'' first-
class mail, or any delivery service that provides ability to confirm 
delivery or attempted delivery to:
    (i) A respondent who is a registered practitioner at the address 
provided to OED pursuant to Sec.  11.11, or
    (ii) A respondent who is a nonregistered practitioner at the last 
address for the respondent known to the OED Director.
    (3) By any method mutually agreeable to the OED Director and the 
respondent.
    (4) In the case of a respondent who resides outside the United 
States, by sending a copy of the complaint by any delivery service that 
provides ability to confirm delivery or attempted delivery, to:
    (i) A respondent who is a registered practitioner at the address 
provided to OED pursuant to Sec.  11.11; or
    (ii) A respondent who is a nonregistered practitioner at the last 
address for the respondent known to the OED Director.
    (b) If a copy of the complaint cannot be delivered to the 
respondent through any one of the procedures in paragraph (a) of this 
section, the OED Director shall serve the respondent by causing an 
appropriate notice to be published in

[[Page 47697]]

the Official Gazette for two consecutive weeks, in which case, the time 
for filing an answer shall be thirty days from the second publication 
of the notice. Failure to timely file an answer will constitute an 
admission of the allegations in the complaint in accordance with 
paragraph (d) of Sec.  11.36, and the hearing officer may enter an 
initial decision on default.
    (c) If the respondent is known to the OED Director to be 
represented by an attorney under Sec.  11.40(a), a copy of the 
complaint shall be served on the attorney in lieu of service on the 
respondent in the manner provided for in paragraph (a) or (b) of this 
section.


Sec.  11.36  Answer to complaint.

    (a) Time for answer. An answer to a complaint shall be filed within 
the time set in the complaint but in no event shall that time be less 
than thirty days from the date the complaint is filed.
    (b) With whom filed. The answer shall be filed in writing with the 
hearing officer at the address specified in the complaint. The hearing 
officer may extend the time for filing an answer once for a period of 
no more than thirty days upon a showing of good cause, provided a 
motion requesting an extension of time is filed within thirty days 
after the date the complaint is served on respondent. A copy of the 
answer, and any exhibits or attachments thereto, shall be served on the 
OED Director.
    (c) Content. The respondent shall include in the answer a statement 
of the facts that constitute the grounds of defense and shall 
specifically admit or deny each allegation set forth in the complaint. 
The respondent shall not deny a material allegation in the complaint 
that the respondent knows to be true or state that respondent is 
without sufficient information to form a belief as to the truth of an 
allegation, when in fact the respondent possesses that information. The 
respondent shall also state affirmatively in the answer special matters 
of defense and any intent to raise a disability as a mitigating factor. 
If respondent intends to raise a special matter of defense or 
disability, the answer shall specify the defense or disability, its 
nexus to the misconduct, and the reason it provides a defense or 
mitigation. A respondent who fails to do so cannot rely on a special 
matter of defense or disability. The hearing officer may, for good 
cause, allow the respondent to file the statement late, grant 
additional hearing preparation time, or make other appropriate orders.
    (d) Failure to deny allegations in complaint. Every allegation in 
the complaint that is not denied by a respondent in the answer shall be 
deemed to be admitted and may be considered proven. The hearing officer 
at any hearing need receive no further evidence with respect to that 
allegation.
    (e) Default judgment. Failure to timely file an answer will 
constitute an admission of the allegations in the complaint and may 
result in entry of default judgment.


Sec.  11.37  [Reserved]


Sec.  11.38  Contested case.

    Upon the filing of an answer by the respondent, a disciplinary 
proceeding shall be regarded as a contested case within the meaning of 
35 U.S.C. 24. Evidence obtained by a subpoena issued under 35 U.S.C. 24 
shall not be admitted into the record or considered unless leave to 
proceed under 35 U.S.C. 24 was previously authorized by the hearing 
officer.


Sec.  11.39  Hearing officer; appointment; responsibilities; review of 
interlocutory orders; stays.

    (a) Appointment. A hearing officer, appointed by the USPTO Director 
under 5 U.S.C. 3105 or 35 U.S.C. 32, shall conduct disciplinary 
proceedings as provided by this Part.
    (b) Independence of the Hearing Officer. (1) A hearing officer 
appointed in accordance with paragraph (a) of this section shall not be 
subject to first level or second level supervision by either the USPTO 
Director or OED Director, or his or her designee.
    (2) A hearing officer appointed in accordance with paragraph (a) of 
this section shall not be subject to supervision of the person(s) 
investigating or prosecuting the case.
    (3) A hearing officer appointed in accordance with paragraph (a) of 
this section shall be impartial, shall not be an individual who has 
participated in any manner in the decision to initiate the proceedings, 
and shall not have been employed under the immediate supervision of the 
practitioner.
    (4) A hearing officer appointed in accordance with paragraph (a) of 
this section shall be admitted to practice law and have suitable 
experience and training conducting hearings, reaching a determination, 
and rendering an initial decision in an equitable manner.
    (c) Responsibilities. The hearing officer shall have authority, 
consistent with specific provisions of these regulations, to:
    (1) Administer oaths and affirmations;
    (2) Make rulings upon motions and other requests;
    (3) Rule upon offers of proof, receive relevant evidence, and 
examine witnesses;
    (4) Authorize the taking of a deposition of a witness in lieu of 
personal appearance of the witness before the hearing officer;
    (5) Determine the time and place of any hearing and regulate its 
course and conduct;
    (6) Hold or provide for the holding of conferences to settle or 
simplify the issues;
    (7) Receive and consider oral or written arguments on facts or law;
    (8) Adopt procedures and modify procedures for the orderly 
disposition of proceedings;
    (9) Make initial decisions under Sec. Sec.  11.25 and 11.54; and
    (10) Perform acts and take measures as necessary to promote the 
efficient, timely, and impartial conduct of any disciplinary 
proceeding.
    (d) Time for making initial decision. The hearing officer shall set 
times and exercise control over a disciplinary proceeding such that an 
initial decision under Sec.  11.54 is normally issued within nine 
months of the date a complaint is filed. The hearing officer may, 
however, issue an initial decision more than nine months after a 
complaint is filed if there exist circumstances, in his or her opinion, 
that preclude issuance of an initial decision within nine months of the 
filing of the complaint.
    (e) Review of interlocutory orders. The USPTO Director will not 
review an interlocutory order of a hearing officer except:
    (1) When the hearing officer shall be of the opinion:
    (i) That the interlocutory order involves a controlling question of 
procedure or law as to which there is a substantial ground for a 
difference of opinion, and
    (ii) That an immediate decision by the USPTO Director may 
materially advance the ultimate termination of the disciplinary 
proceeding, or
    (2) In an extraordinary situation where the USPTO Director deems 
that justice requires review.
    (f) Stays pending review of interlocutory order. If the OED 
Director or a respondent seeks review of an interlocutory order of a 
hearing officer under paragraph (b)(2) of this section, any time period 
set by the hearing officer for taking action shall not be stayed unless 
ordered by the USPTO Director or the hearing officer.
    (g) The hearing officer shall engage in no ex parte discussions 
with any party on the merits of the complaint, beginning with 
appointment and ending when the final agency decision is issued.

[[Page 47698]]

Sec.  11.40  Representative for OED Director or respondent.

    (a) A respondent may represent himself or herself, or be 
represented by an attorney before the Office in connection with an 
investigation or disciplinary proceeding. The attorney shall file a 
written declaration that he or she is an attorney within the meaning of 
Sec.  11.1 and shall state:
    (1) The address to which the attorney wants correspondence related 
to the investigation or disciplinary proceeding sent, and
    (2) A telephone number where the attorney may be reached during 
normal business hours.
    (b) The Deputy General Counsel for Intellectual Property and 
Solicitor, and attorneys in the Office of the Solicitor shall represent 
the OED Director. The attorneys representing the OED Director in 
disciplinary proceedings shall not consult with the USPTO Director, the 
General Counsel, the Deputy General Counsel for General Law, or an 
individual designated by the USPTO Director to decide disciplinary 
matters regarding the proceeding. The General Counsel and the Deputy 
General Counsel for General Law shall remain screened from the 
investigation and prosecution of all disciplinary proceedings in order 
that they shall be available as counsel to the USPTO Director in 
deciding disciplinary proceedings unless access is appropriate to 
perform their duties. After a final decision is entered in a 
disciplinary proceeding, the OED Director and attorneys representing 
the OED Director shall be available to counsel the USPTO Director, the 
General Counsel, and the Deputy General Counsel for General Law in any 
further proceedings.


Sec.  11.41  Filing of papers.

    (a) The provisions of Sec. Sec.  1.8 and 2.197 of this subchapter 
do not apply to disciplinary proceedings. All papers filed after the 
complaint and prior to entry of an initial decision by the hearing 
officer shall be filed with the hearing officer at an address or place 
designated by the hearing officer.
    (b) All papers filed after entry of an initial decision by the 
hearing officer shall be filed with the USPTO Director. A copy of the 
paper shall be served on the OED Director. The hearing officer or the 
OED Director may provide for filing papers and other matters by hand, 
by ``Express Mail,'' or by other means.


Sec.  11.42  Service of papers.

    (a) All papers other than a complaint shall be served on a 
respondent who is represented by an attorney by:
    (1) Delivering a copy of the paper to the office of the attorney; 
or
    (2) Mailing a copy of the paper by first-class mail, ``Express 
Mail,'' or other delivery service to the attorney at the address 
provided by the attorney under Sec.  11.40(a)(1); or
    (3) Any other method mutually agreeable to the attorney and a 
representative for the OED Director.
    (b) All papers other than a complaint shall be served on a 
respondent who is not represented by an attorney by:
    (1) Delivering a copy of the paper to the respondent; or
    (2) Mailing a copy of the paper by first-class mail, ``Express 
Mail,'' or other delivery service to the respondent at the address to 
which a complaint may be served or such other address as may be 
designated in writing by the respondent; or
    (3) Any other method mutually agreeable to the respondent and a 
representative of the OED Director.
    (c) A respondent shall serve on the representative for the OED 
Director one copy of each paper filed with the hearing officer or the 
OED Director. A paper may be served on the representative for the OED 
Director by:
    (1) Delivering a copy of the paper to the representative; or
    (2) Mailing a copy of the paper by first-class mail, ``Express 
Mail,'' or other delivery service to an address designated in writing 
by the representative; or
    (3) Any other method mutually agreeable to the respondent and the 
representative.
    (d) Each paper filed in a disciplinary proceeding shall contain 
therein a certificate of service indicating:
    (1) The date on which service was made; and
    (2) The method by which service was made.
    (e) The hearing officer or the USPTO Director may require that a 
paper be served by hand or by ``Express Mail.''
    (f) Service by mail is completed when the paper mailed in the 
United States is placed into the custody of the U.S. Postal Service.


Sec.  11.43  Motions.

    Motions, including all prehearing motions commonly filed under the 
Federal Rules of Civil Procedure, shall be filed with the hearing 
officer. The hearing officer will determine whether replies to 
responses will be authorized and the time period for filing such a 
response. No motion shall be filed with the hearing officer unless such 
motion is supported by a written statement by the moving party that the 
moving party or attorney for the moving party has conferred with the 
opposing party or attorney for the opposing party in an effort in good 
faith to resolve by agreement the issues raised by the motion and has 
been unable to reach agreement. If, prior to a decision on the motion, 
the parties resolve issues raised by a motion presented to the hearing 
officer, the parties shall promptly notify the hearing officer.


Sec.  11.44  Hearings.

    (a) The hearing officer shall preside over hearings in disciplinary 
proceedings. The hearing officer shall set the time and place for the 
hearing. In cases involving an incarcerated respondent, any necessary 
oral hearing may be held at the location of incarceration. Oral 
hearings will be stenographically recorded and transcribed, and the 
testimony of witnesses will be received under oath or affirmation. The 
hearing officer shall conduct the hearing as if the proceeding were 
subject to 5 U.S.C. 556. A copy of the transcript of the hearing shall 
become part of the record. A copy of the transcript shall be provided 
to the OED Director and the respondent at the expense of the Office.
    (b) If the respondent to a disciplinary proceeding fails to appear 
at the hearing after a notice of hearing has been given by the hearing 
officer, the hearing officer may deem the respondent to have waived the 
right to a hearing and may proceed with the hearing in the absence of 
the respondent.
    (c) A hearing under this section will not be open to the public 
except that the hearing officer may grant a request by a respondent to 
open his or her hearing to the public and make the record of the 
disciplinary proceeding available for public inspection, provided, a 
protective order is entered to exclude from public disclosure 
information which is privileged or confidential under applicable laws 
or regulations.


Sec.  11.45  Amendment of pleadings.

    The OED Director may, without Committee on Discipline 
authorization, but with the authorization of the hearing officer, amend 
the complaint to include additional charges based upon conduct 
committed before or after the complaint was filed. If amendment of the 
complaint is authorized, the hearing officer shall authorize amendment 
of the answer. Any party who would otherwise be prejudiced by the 
amendment will be given reasonable opportunity to meet the allegations 
in the complaint or answer as amended, and the hearing officer shall 
make findings on any issue presented by the complaint or answer as 
amended.

[[Page 47699]]

Sec. Sec.  11.46-11.48  [Reserved]


Sec.  11.49  Burden of proof.

    In a disciplinary proceeding, the OED Director shall have the 
burden of proving the violation by clear and convincing evidence and a 
respondent shall have the burden of proving any affirmative defense by 
clear and convincing evidence.


Sec.  11.50  Evidence.

    (a) Rules of evidence. The rules of evidence prevailing in courts 
of law and equity are not controlling in hearings in disciplinary 
proceedings. However, the hearing officer shall exclude evidence that 
is irrelevant, immaterial, or unduly repetitious.
    (b) Depositions. Depositions of witnesses taken pursuant to Sec.  
11.51 may be admitted as evidence.
    (c) Government documents. Official documents, records, and papers 
of the Office, including, but not limited to, all papers in the file of 
a disciplinary investigation, are admissible without extrinsic evidence 
of authenticity. These documents, records, and papers may be evidenced 
by a copy certified as correct by an employee of the Office.
    (d) Exhibits. If any document, record, or other paper is introduced 
in evidence as an exhibit, the hearing officer may authorize the 
withdrawal of the exhibit subject to any conditions the hearing officer 
deems appropriate.
    (e) Objections. Objections to evidence will be in short form, 
stating the grounds of objection. Objections and rulings on objections 
will be a part of the record. No exception to the ruling is necessary 
to preserve the rights of the parties.


Sec.  11.51  Depositions.

    (a) Depositions for use at the hearing in lieu of personal 
appearance of a witness before the hearing officer may be taken by 
respondent or the OED Director upon a showing of good cause and with 
the approval of, and under such conditions as may be deemed appropriate 
by, the hearing officer. Depositions may be taken upon oral or written 
questions, upon not less than ten days' written notice to the other 
party, before any officer authorized to administer an oath or 
affirmation in the place where the deposition is to be taken. The 
parties may waive the requirement of ten days' notice and depositions 
may then be taken of a witness at a time and place mutually agreed to 
by the parties. When a deposition is taken upon written questions, 
copies of the written questions will be served upon the other party 
with the notice, and copies of any written cross-questions will be 
served by hand or ``Express Mail'' not less than five days before the 
date of the taking of the deposition unless the parties mutually agree 
otherwise. A party on whose behalf a deposition is taken shall file a 
copy of a transcript of the deposition signed by a court reporter with 
the hearing officer and shall serve one copy upon the opposing party. 
Expenses for a court reporter and preparing, serving, and filing 
depositions shall be borne by the party at whose instance the 
deposition is taken. Depositions may not be taken to obtain discovery, 
except as provided for in paragraph (b) of this section.
    (b) When the OED Director and the respondent agree in writing, a 
deposition of any witness who will appear voluntarily may be taken 
under such terms and conditions as may be mutually agreeable to the OED 
Director and the respondent. The deposition shall not be filed with the 
hearing officer and may not be admitted in evidence before the hearing 
officer unless he or she orders the deposition admitted in evidence. 
The admissibility of the deposition shall lie within the discretion of 
the hearing officer who may reject the deposition on any reasonable 
basis including the fact that demeanor is involved and that the witness 
should have been called to appear personally before the hearing 
officer.


Sec.  11.52  Discovery.

    Discovery shall not be authorized except as follows:
    (a) After an answer is filed under Sec.  11.36 and when a party 
establishes that discovery is reasonable and relevant, the hearing 
officer, under such conditions as he or she deems appropriate, may 
order an opposing party to:
    (1) Answer a reasonable number of written requests for admission or 
interrogatories;
    (2) Produce for inspection and copying a reasonable number of 
documents; and
    (3) Produce for inspection a reasonable number of things other than 
documents.
    (b) Discovery shall not be authorized under paragraph (a) of this 
section of any matter which:
    (1) Will be used by another party solely for impeachment;
    (2) Is not available to the party under 35 U.S.C. 122;
    (3) Relates to any other disciplinary proceeding;
    (4) Relates to experts except as the hearing officer may require 
under paragraph (e) of this section;
    (5) Is privileged; or
    (6) Relates to mental impressions, conclusions, opinions, or legal 
theories of any attorney or other representative of a party.
    (c) The hearing officer may deny discovery requested under 
paragraph (a) of this section if the discovery sought:
    (1) Will unduly delay the disciplinary proceeding;
    (2) Will place an undue burden on the party required to produce the 
discovery sought; or
    (3) Consists of information that is available:
    (i) Generally to the public;
    (ii) Equally to the parties; or
    (iii) To the party seeking the discovery through another source.
    (d) Prior to authorizing discovery under paragraph (a) of this 
section, the hearing officer shall require the party seeking discovery 
to file a motion (Sec.  11.43) and explain in detail, for each request 
made, how the discovery sought is reasonable and relevant to an issue 
actually raised in the complaint or the answer.
    (e) The hearing officer may require parties to file and serve, 
prior to any hearing, a pre-hearing statement that contains:
    (1) A list (together with a copy) of all proposed exhibits to be 
used in connection with a party's case-in-chief;
    (2) A list of proposed witnesses;
    (3) As to each proposed expert witness:
    (i) An identification of the field in which the individual will be 
qualified as an expert;
    (ii) A statement as to the subject matter on which the expert is 
expected to testify; and
    (iii) A statement of the substance of the facts and opinions to 
which the expert is expected to testify;
    (4) Copies of memoranda reflecting respondent's own statements to 
administrative representatives.


Sec.  11.53  Proposed findings and conclusions; post-hearing 
memorandum.

    Except in cases in which the respondent has failed to answer the 
complaint or amended complaint, the hearing officer, prior to making an 
initial decision, shall afford the parties a reasonable opportunity to 
submit proposed findings and conclusions and a post-hearing memorandum 
in support of the proposed findings and conclusions.


Sec.  11.54  Initial decision of hearing officer.

    (a) The hearing officer shall make an initial decision in the case. 
The decision will include:
    (1) A statement of findings of fact and conclusions of law, as well 
as the

[[Page 47700]]

reasons or bases for those findings and conclusions with appropriate 
references to the record, upon all the material issues of fact, law, or 
discretion presented on the record, and
    (2) An order of default judgment, of suspension or exclusion from 
practice, of reprimand, or an order dismissing the complaint. The 
hearing officer shall transmit a copy of the decision to the OED 
Director and to the respondent. After issuing the decision, the hearing 
officer shall transmit the entire record to the OED Director. In the 
absence of an appeal to the USPTO Director, the decision of the hearing 
officer, including a default judgment, will, without further 
proceedings, become the decision of the USPTO Director thirty days from 
the date of the decision of the hearing officer.
    (b) The initial decision of the hearing officer shall explain the 
reason for any default judgment, reprimand, suspension, or exclusion. 
In determining any sanction, the following four factors must be 
considered if they are applicable:
    (1) Whether the practitioner has violated a duty owed to a client, 
to the public, to the legal system, or to the profession;
    (2) Whether the practitioner acted intentionally, knowingly, or 
negligently;
    (3) The amount of the actual or potential injury caused by the 
practitioner's misconduct; and
    (4) The existence of any aggravating or mitigating factors.


Sec.  11.55  Appeal to the USPTO Director.

    (a) Within thirty days after the date of the initial decision of 
the hearing officer under Sec. Sec.  11.25 or 11.54, either party may 
appeal to the USPTO Director. The appeal shall include the appellant's 
brief. If more than one appeal is filed, the party who files the appeal 
first is the appellant for purpose of this rule. If appeals are filed 
on the same day, the respondent is the appellant. If an appeal is 
filed, then the OED Director shall transmit the entire record to the 
USPTO Director. Any cross-appeal shall be filed within fourteen days 
after the date of service of the appeal pursuant to Sec.  11.42, or 
thirty days after the date of the initial decision of the hearing 
officer, whichever is later. The cross-appeal shall include the cross-
appellant's brief. Any appellee or cross-appellee brief must be filed 
within thirty days after the date of service pursuant to Sec.  11.42 of 
an appeal or cross-appeal. Any reply brief must be filed within 
fourteen days after the date of service of any appellee or cross-
appellee brief.
    (b) An appeal or cross-appeal must include exceptions to the 
decisions of the hearing officer and supporting reasons for those 
exceptions. Any exception not raised will be deemed to have been waived 
and will be disregarded by the USPTO Director in reviewing the initial 
decision.
    (c) All briefs shall:
    (1) Be filed with the USPTO Director at the address set forth in 
Sec.  1.1(a)(3)(ii) of this subchapter and served on the opposing 
party;
    (2) Include separate sections containing a concise statement of the 
disputed facts and disputed points of law; and
    (3) Be typed on 8\1/2\ by 11-inch paper, and comply with Rule 
32(a)(4)-(6) of the Federal Rules of Appellate Procedure.
    (d) An appellant's, cross-appellant's, appellee's, and cross-
appellee's brief shall be no more than thirty pages in length, and 
comply with Rule 28(a)(2), (3), and (5) through (10) of the Federal 
Rules of Appellate Procedure. Any reply brief shall be no more than 
fifteen pages in length, and shall comply with Rule 28(a)(2), (3), (8), 
and (9) of the Federal Rules of Appellate Procedure.
    (e) The USPTO Director may refuse entry of a nonconforming brief.
    (f) The USPTO Director will decide the appeal on the record made 
before the hearing officer.
    (g) Unless the USPTO Director permits, no further briefs or motions 
shall be filed.
    (h) The USPTO Director may order reopening of a disciplinary 
proceeding in accordance with the principles that govern the granting 
of new trials. Any request to reopen a disciplinary proceeding on the 
basis of newly discovered evidence must demonstrate that the newly 
discovered evidence could not have been discovered by due diligence.
    (i) In the absence of an appeal by the OED Director, failure by the 
respondent to appeal under the provisions of this section shall result 
in the initial decision being final and effective thirty days from the 
date of the initial decision of the hearing officer.


Sec.  11.56  Decision of the USPTO Director.

    (a) The USPTO Director shall decide an appeal from an initial 
decision of the hearing officer. On appeal from the initial decision, 
the USPTO Director has authority to conduct a de novo review of the 
factual record. The USPTO Director may affirm, reverse, or modify the 
initial decision or remand the matter to the hearing officer for such 
further proceedings as the USPTO Director may deem appropriate. In 
making a final decision, the USPTO Director shall review the record or 
the portions of the record designated by the parties. The USPTO 
Director shall transmit a copy of the final decision to the OED 
Director and to the respondent.
    (b) A final decision of the USPTO Director may dismiss a 
disciplinary proceeding, reverse or modify the initial decision, 
reprimand a practitioner, or may suspend or exclude the practitioner 
from practice before the Office. A final decision suspending or 
excluding a practitioner shall require compliance with the provisions 
of Sec.  11.58. The final decision may also condition the reinstatement 
of the practitioner upon a showing that the practitioner has taken 
steps to correct or mitigate the matter forming the basis of the 
action, or to prevent recurrence of the same or similar conduct.
    (c) The respondent or the OED Director may make a single request 
for reconsideration or modification of the decision by the USPTO 
Director if filed within twenty days from the date of entry of the 
decision. No request for reconsideration or modification shall be 
granted unless the request is based on newly discovered evidence or 
error of law or fact, and the requestor must demonstrate that any newly 
discovered evidence could not have been discovered any earlier by due 
diligence. Such a request shall have the effect of staying the 
effective date of the order of discipline in the final decision. The 
decision by the USPTO Director is effective on its date of entry.


Sec.  11.57  Review of final decision of the USPTO Director.

    (a) Review of the final decision by the USPTO Director in a 
disciplinary case may be had, subject to Sec.  11.55(d), by a petition 
filed in accordance with 35 U.S.C. 32. The Respondent must serve the 
USPTO Director with the petition. Respondent must serve the petition in 
accordance with Rule 4 of the Federal Rules of Civil Procedure and 
Sec.  104.2 of this Title.
    (b) Except as provided for in Sec.  11.56(c), an order for 
discipline in a final decision will not be stayed except on proof of 
exceptional circumstances.


Sec.  11.58  Duties of disciplined or resigned practitioner, or 
practitioner on disability inactive status.

    (a) An excluded, suspended or resigned practitioner, or 
practitioner transferred to disability inactive status shall not engage 
in any practice of patent, trademark and other non-patent law before 
the Office. An excluded, suspended or resigned practitioner will not be 
automatically reinstated at the end of his or her period of exclusion 
or

[[Page 47701]]

suspension. An excluded, suspended or resigned practitioner, or 
practitioner transferred to disability inactive status must comply with 
the provisions of this section and Sec.  11.60 to be reinstated. 
Failure to comply with the provisions of this section may constitute 
both grounds for denying reinstatement or readmission; and cause for 
further action, including seeking further exclusion, suspension, and 
for revocation of any pending probation.
    (b) Unless otherwise ordered by the USPTO Director, any excluded, 
suspended or resigned practitioner, or practitioner transferred to 
disability inactive status shall:
    (1) Within thirty days after the date of entry of the order of 
exclusion, suspension, acceptance of resignation, or transfer to 
disability inactive status:
    (i) File a notice of withdrawal as of the effective date of the 
exclusion, suspension, acceptance of resignation, or transfer to 
disability inactive status in each pending patent and trademark 
application, each pending reexamination and interference proceeding, 
and every other matter pending in the Office, together with a copy of 
the notices sent pursuant to paragraphs (b) and (c) of this section;
    (ii) Provide notice to all State and Federal jurisdictions and 
administrative agencies to which the practitioner is admitted to 
practice and all clients the practitioner represents having immediate 
or prospective business before the Office in patent, trademark and 
other non-patent matters of the order of exclusion, suspension, 
acceptance of resignation, or transferred to disability inactive status 
and of the practitioner's consequent inability to act as a practitioner 
after the effective date of the order; and that, if not represented by 
another practitioner, the client should act promptly to substitute 
another practitioner, or to seek legal advice elsewhere, calling 
attention to any urgency arising from the circumstances of the case;
    (iii) Provide notice to the practitioner(s) for all opposing 
parties (or, to the parties in the absence of a practitioner 
representing the parties) in matters pending before the Office of the 
practitioner's exclusion, suspension, resignation, or transfer to 
disability inactive status and, that as a consequence, the practitioner 
is disqualified from acting as a practitioner regarding matters before 
the Office after the effective date of the suspension, exclusion, 
resignation or transfer to disability inactive status, and state in the 
notice the mailing address of each client of the excluded, suspended or 
resigned practitioner, or practitioner transferred to disability 
inactive status who is a party in the pending matter;
    (iv) Deliver to all clients having immediate or prospective 
business before the Office in patent, trademark or other non-patent 
matters any papers or other property to which the clients are entitled, 
or shall notify the clients and any co-practitioner of a suitable time 
and place where the papers and other property may be obtained, calling 
attention to any urgency for obtaining the papers or other property;
    (v) Relinquish to the client, or other practitioner designated by 
the client, all funds for practice before the Office, including any 
legal fees paid in advance that have not been earned and any advanced 
costs not expended;
    (vi) Take any necessary and appropriate steps to remove from any 
telephone, legal, or other directory any advertisement, statement, or 
representation which would reasonably suggest that the practitioner is 
authorized to practice patent, trademark, or other non-patent law 
before the Office; and
    (vii) Serve all notices required by paragraphs (b)(1)(ii) and 
(b)(1)(iii) of this section by certified mail, return receipt 
requested, unless mailed abroad. If mailed abroad, all notices shall be 
served with a receipt to be signed and returned to the practitioner.
    (2) Within forty-five days after entry of the order of suspension, 
exclusion, or of acceptance of resignation, the practitioner shall file 
with the OED Director an affidavit of compliance certifying that the 
practitioner has fully complied with the provisions of the order, this 
section, and with the Mandatory Disciplinary Rules identified in Sec.  
10.20(b) of this subchapter for withdrawal from representation. 
Appended to the affidavit of compliance shall be:
    (i) A copy of each form of notice, the names and addresses of the 
clients, practitioners, courts, and agencies to which notices were 
sent, and all return receipts or returned mail received up to the date 
of the affidavit. Supplemental affidavits shall be filed covering 
subsequent return receipts and returned mail. Such names and addresses 
of clients shall remain confidential unless otherwise ordered by the 
USPTO Director;
    (ii) A schedule showing the location, title and account number of 
every bank account designated as a client or trust account, deposit 
account in the Office, or other fiduciary account, and of every account 
in which the practitioner holds or held as of the entry date of the 
order any client, trust, or fiduciary funds for practice before the 
Office;
    (iii) A schedule describing the practitioner's disposition of all 
client and fiduciary funds for practice before the Office in the 
practitioner's possession, custody or control as of the date of the 
order or thereafter;
    (iv) Such proof of the proper distribution of said funds and the 
closing of such accounts as has been requested by the OED Director, 
including copies of checks and other instruments;
    (v) A list of all other State, Federal, and administrative 
jurisdictions to which the practitioner is admitted to practice; and
    (vi) An affidavit describing the precise nature of the steps taken 
to remove from any telephone, legal, or other directory any 
advertisement, statement, or representation which would reasonably 
suggest that the practitioner is authorized to practice patent, 
trademark, or other non-patent law before the Office. The affidavit 
shall also state the residence or other address of the practitioner to 
which communications may thereafter be directed, and list all State and 
Federal jurisdictions, and administrative agencies to which the 
practitioner is admitted to practice. The OED Director may require such 
additional proof as is deemed necessary. In addition, for the period of 
discipline, an excluded or suspended practitioner, or a practitioner 
transferred to disability inactive status shall continue to file a 
statement in accordance with Sec.  11.11, regarding any change of 
residence or other address to which communications may thereafter be 
directed, so that the excluded or suspended practitioner, or 
practitioner transferred to disability inactive status may be located 
if a grievance is received regarding any conduct occurring before or 
after the exclusion or suspension. The practitioner shall retain copies 
of all notices sent and shall maintain complete records of the steps 
taken to comply with the notice requirements.
    (3) Not hold himself or herself out as authorized to practice law 
before the Office.
    (4) Not advertise the practitioner's availability or ability to 
perform or render legal services for any person having immediate or 
prospective business before the Office as to that business.
    (5) Not render legal advice or services to any person having 
immediate or prospective business before the Office as to that 
business.
    (6) Promptly take steps to change any sign identifying the 
practitioner's or the practitioner's firm's office and the 
practitioner's or the practitioner's firm's stationery to delete 
therefrom any

[[Page 47702]]

advertisement, statement, or representation which would reasonably 
suggest that the practitioner is authorized to practice law before the 
Office.
    (c) An excluded, suspended or resigned practitioner, or 
practitioner transferred to disability inactive status after entry of 
the order of exclusion or suspension, acceptance of resignation, or 
transfer to disability inactive status shall not accept any new 
retainer regarding immediate or prospective business before the Office, 
or engage as a practitioner for another in any new case or legal matter 
regarding practice before the Office. The excluded, suspended or 
resigned practitioner, or practitioner transferred to disability 
inactive status shall be granted limited recognition for a period of 
thirty days. During the thirty-day period of limited recognition, the 
excluded, suspended or resigned practitioner, or practitioner 
transferred to disability inactive status shall conclude work on behalf 
of a client on any matters that were pending before the Office on the 
date of entry of the order of exclusion or suspension, or acceptance of 
resignation. If such work cannot be concluded, the excluded, suspended 
or resigned practitioner, or practitioner transferred to disability 
inactive status shall so advise the client so that the client may make 
other arrangements.
    (d) Required records. An excluded, suspended or resigned 
practitioner, or practitioner transferred to disability inactive status 
shall keep and maintain records of the various steps taken under this 
section, so that in any subsequent proceeding proof of compliance with 
this section and with the exclusion or suspension order will be 
available. The OED Director will require the practitioner to submit 
such proof as a condition precedent to the granting of any petition for 
reinstatement.
    (e) An excluded, suspended or resigned practitioner, or 
practitioner on disability inactive status who aids another 
practitioner in any way in the other practitioner's practice of law 
before the Office, may, under the direct supervision of the other 
practitioner, act as a paralegal for the other practitioner or perform 
other services for the other practitioner which are normally performed 
by laypersons, provided:
    (1) The excluded, suspended or resigned practitioner, or 
practitioner transferred to disability inactive status is a salaried 
employee of:
    (i) The other practitioner;
    (ii) The other practitioner's law firm; or
    (iii) A client-employer who employs the other practitioner as a 
salaried employee;
    (2) The other practitioner assumes full professional responsibility 
to any client and the Office for any work performed by the excluded, 
suspended or resigned practitioner for the other practitioner;
    (3) The excluded, suspended or resigned practitioner, or 
practitioner transferred to disability inactive status does not:
    (i) Communicate directly in writing, orally, or otherwise with a 
client of the other practitioner in regard to any immediate or 
prospective business before the Office;
    (ii) Render any legal advice or any legal services to a client of 
the other practitioner in regard to any immediate or prospective 
business before the Office; or
    (iii) Meet in person or in the presence of the other practitioner 
in regard to any immediate or prospective business before the Office, 
with:
    (A) Any Office employee in connection with the prosecution of any 
patent, trademark, or other case;
    (B) Any client of the other practitioner, the other practitioner's 
law firm, or the client-employer of the other practitioner; or
    (C) Any witness or potential witness whom the other practitioner, 
the other practitioner's law firm, or the other practitioner's client-
employer may or intends to call as a witness in any proceeding before 
the Office. The term ``witness'' includes individuals who will testify 
orally in a proceeding before, or sign an affidavit or any other 
document to be filed in, the Office.
    (f) When an excluded, suspended or resigned practitioner, or 
practitioner transferred to disability inactive status acts as a 
paralegal or performs services under paragraph (e) of this section, the 
practitioner shall not thereafter be reinstated to practice before the 
Office unless:
    (1) The practitioner shall have filed with the OED Director an 
affidavit which:
    (i) Explains in detail the precise nature of all paralegal or other 
services performed by the excluded, suspended or resigned practitioner, 
or practitioner transferred to disability inactive status, and
    (ii) Shows by clear and convincing evidence that the excluded, 
suspended or resigned practitioner, or practitioner transferred to 
disability inactive status has complied with the provisions of this 
section and all Mandatory Disciplinary Rules identified in Sec.  
10.20(b) of this subchapter; and
    (2) The other practitioner shall have filed with the OED Director a 
written statement which:
    (i) Shows that the other practitioner has read the affidavit 
required by paragraph (d)(1) of this section and that the other 
practitioner believes every statement in the affidavit to be true, and
    (ii) States why the other practitioner believes that the excluded, 
suspended or resigned practitioner, or practitioner transferred to 
disability inactive status has complied with paragraph (c) of this 
section.


Sec.  11.59  Dissemination of disciplinary and other information.

    (a) The OED Director shall inform the public of the disposition of 
each matter in which public discipline has been imposed, and of any 
other changes in a practitioner's registration status. Public 
discipline includes exclusion, as well as exclusion on consent; 
suspension; and public reprimand. Unless otherwise ordered by the USPTO 
Director, the OED Director shall give notice of public discipline and 
the reasons for the discipline to disciplinary enforcement agencies in 
the State where the practitioner is admitted to practice, to courts 
where the practitioner is known to be admitted, and the public. If 
public discipline is imposed, the OED Director shall cause a final 
decision of the USPTO Director to be published. Final decisions of the 
USPTO Director include default judgments. See Sec.  11.54(a)(2). If a 
private reprimand is imposed, the OED Director shall cause a redacted 
version of the final decision to be published.
    (b) Records available to the public. Unless the USPTO Director 
orders that the proceeding or a portion of the record be kept 
confidential, the OED Director's records of every disciplinary 
proceeding where a practitioner is reprimanded, suspended, or excluded, 
including when said sanction is imposed by default judgment, shall be 
made available to the public upon written request, except that 
information may be withheld as necessary to protect the privacy of 
third parties or as directed in a protective order issued pursuant to 
Sec.  11.44(c). The record of a proceeding that results in a 
practitioner's transfer to disability inactive status shall not be 
available to the public.
    (c) Access to records of exclusion by consent. Unless the USPTO 
Director orders that the proceeding or a portion of the record be kept 
confidential, an order excluding a practitioner on consent under Sec.  
11.27 and the affidavit required under paragraph (a) of Sec.  11.27 
shall be available to the public, except that information in the order 
or affidavit

[[Page 47703]]

may be withheld as necessary to protect the privacy of third parties or 
as directed in a protective order under Sec.  11.44(c). The affidavit 
required under paragraph (a) of Sec.  11.27 shall not be used in any 
other proceeding except by order of the USPTO Director or upon written 
consent of the practitioner.


Sec.  11.60  Petition for reinstatement.

    (a) Restrictions on reinstatement. An excluded, suspended or 
resigned practitioner shall not resume practice of patent, trademark, 
or other non-patent law before the Office until reinstated by order of 
the OED Director or the USPTO Director.
    (b) Petition for reinstatement. An excluded or suspended 
practitioner shall be eligible to apply for reinstatement only upon 
expiration of the period of suspension or exclusion and the 
practitioner's full compliance with Sec.  11.58. An excluded 
practitioner shall be eligible to apply for reinstatement no earlier 
than at least five years from the effective date of the exclusion. A 
resigned practitioner shall be eligible to petition for reinstatement 
and must show compliance with Sec.  11.58 no earlier than at least five 
years from the date the practitioner's resignation is accepted and an 
order is entered excluding the practitioner on consent.
    (c) Review of reinstatement petition. An excluded, suspended or 
resigned practitioner shall file a petition for reinstatement 
accompanied by the fee required by Sec.  1.21(a)(10) of this 
subchapter. The petition for reinstatement shall be filed with the OED 
Director. An excluded or suspended practitioner who has violated any 
provision of Sec.  11.58 shall not be eligible for reinstatement until 
a continuous period of the time in compliance with Sec.  11.58 that is 
equal to the period of suspension or exclusion has elapsed. A resigned 
practitioner shall not be eligible for reinstatement until compliance 
with Sec.  11.58 is shown. If the excluded, suspended or resigned 
practitioner is not eligible for reinstatement, or if the OED Director 
determines that the petition is insufficient or defective on its face, 
the OED Director may dismiss the petition. Otherwise the OED Director 
shall consider the petition for reinstatement. The excluded, suspended 
or resigned practitioner seeking reinstatement shall have the burden of 
proof by clear and convincing evidence. Such proof shall be included in 
or accompany the petition, and shall establish:
    (1) That the excluded, suspended or resigned practitioner has the 
good moral character and reputation, competency, and learning in law 
required under Sec.  11.7 for admission;
    (2) That the resumption of practice before the Office will not be 
detrimental to the administration of justice or subversive to the 
public interest; and
    (3) That the suspended practitioner has complied with the 
provisions of Sec.  11.58 for the full period of suspension, that the 
excluded practitioner has complied with the provisions of Sec.  11.58 
for at least five continuous years, or that the resigned practitioner 
has complied with Sec.  11.58 upon acceptance of the resignation.
    (d) Petitions for reinstatement--Action by the OED Director 
granting reinstatement. (1) If the excluded, suspended or resigned 
practitioner is found to have complied with paragraphs (c)(1) through 
(c)(3) of this section, the OED Director shall enter an order of 
reinstatement, which shall be conditioned on payment of the costs of 
the disciplinary proceeding to the extent set forth in paragraphs 
(d)(2) and (3) of this section.
    (2) Payment of costs of disciplinary proceedings. Prior to 
reinstatement to practice, the excluded or suspended practitioner shall 
pay the costs of the disciplinary proceeding. The costs imposed 
pursuant to this section include all of the following:
    (i) The actual expense incurred by the OED Director or the Office 
for the original and copies of any reporter's transcripts of the 
disciplinary proceeding, and any fee paid for the services of the 
reporter;
    (ii) All expenses paid by the OED Director or the Office which 
would qualify as taxable costs recoverable in civil proceedings; and
    (iii) The charges determined by the OED Director to be ``reasonable 
costs'' of investigation, hearing, and review. These amounts shall 
serve to defray the costs, other than fees for services of attorneys 
and experts, of the Office of Enrollment and Discipline in the 
preparation or hearing of the disciplinary proceeding, and costs 
incurred in the administrative processing of the disciplinary 
proceeding.
    (3) An excluded or suspended practitioner may be granted relief, in 
whole or in part, only from an order assessing costs under this section 
or may be granted an extension of time to pay these costs, in the 
discretion of the OED Director, upon grounds of hardship, special 
circumstances, or other good cause.
    (e) Petitions for reinstatement--Action by the OED Director denying 
reinstatement. If the excluded, suspended or resigned practitioner is 
found unfit to resume the practice of patent law before the Office, the 
OED Director shall first provide the excluded, suspended or resigned 
practitioner with an opportunity to show cause in writing why the 
petition should not be denied. Failure to comply with Sec.  11.12(c) 
shall constitute unfitness. If unpersuaded by the showing, the OED 
Director shall deny the petition. The OED Director may require the 
excluded, suspended or resigned practitioner, in meeting the 
requirements of Sec.  11.7, to take and pass an examination under Sec.  
11.7(b), ethics courses, and/or the Multistate Professional 
Responsibility Examination. The OED Director shall provide findings, 
together with the record. The findings shall include on the first page, 
immediately beneath the caption of the case, a separate section 
entitled ``Prior Proceedings'' which shall state the docket number of 
the original disciplinary proceeding in which the exclusion or 
suspension was ordered.
    (f) Resubmission of petitions for reinstatement. If a petition for 
reinstatement is denied, no further petition for reinstatement may be 
filed until the expiration of at least one year following the denial 
unless the order of denial provides otherwise.
    (g) Reinstatement proceedings open to public. Proceedings on any 
petition for reinstatement shall be open to the public. Before 
reinstating any excluded or suspended practitioner, the OED Director 
shall publish a notice of the excluded or suspended practitioner's 
petition for reinstatement and shall permit the public a reasonable 
opportunity to comment or submit evidence with respect to the petition 
for reinstatement.


Sec.  11.61  Savings clause.

    (a) A disciplinary proceeding based on conduct engaged in prior to 
September 15, 2008 may be instituted subsequent to such effective date, 
if such conduct would continue to justify suspension or exclusion under 
the provisions of this part.
    (b) No practitioner shall be subject to a disciplinary proceeding 
under this part based on conduct engaged in before the effective date 
hereof if such conduct would not have been subject to disciplinary 
action before September 15, 2008.
    (c) Sections 11.24, 11.25, 11.28 and 11.34 through 11.57 shall 
apply to all proceedings in which the complaint is filed on or after 
the effective date of these regulations. Section 11.26 and 11.27 shall 
apply to matters pending on or after September 15, 2008.

[[Page 47704]]

    (d) Sections 11.58 through 11.60 shall apply to all cases in which 
an order of suspension or exclusion is entered or resignation is 
accepted on or after September 15, 2008.


Sec. Sec.  11.62-11.99  [Reserved]

PART 41--PRACTICE BEFORE THE BOARD OF PATENT APPEALS AND 
INTERFERENCES

0
43. The authority citation for 37 CFR part 41 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 
135.

0
44. Revise Sec.  41.5(e) to read as follows:


Sec.  41.5  Counsel.

* * * * *
    (e) Referral to the Director of Enrollment and Discipline. Possible 
violations of the disciplinary rules in part 11 of this subchapter may 
be referred to the Office of Enrollment and Discipline for 
investigation. See Sec.  11.22 of this subchapter.

    Date: July 31, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E8-18109 Filed 8-13-08; 8:45 am]
BILLING CODE 3510-16-P