[Federal Register Volume 81, Number 103 (Friday, May 27, 2016)]
[Rules and Regulations]
[Pages 33591-33598]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-12498]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 11
[Docket No.: PTO-C-2015-0018]
RIN 0651-AC99
USPTO Law School Clinic Certification Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (``Office'' or
``USPTO'') is issuing a final rule to comply with a Public Law enacted
on December 16, 2014. This law requires the USPTO Director to establish
regulations and procedures for application to, and participation in,
the USPTO Law School Clinic Certification Program. The program allows
students enrolled in a participating law school's clinic to practice
patent and trademark law before the USPTO under the direct supervision
of an approved faculty clinic supervisor by drafting, filing, and
prosecuting patent or trademark applications, or both, on a pro bono
basis for clients who qualify for assistance from the law school's
clinic.
DATES: This rule is effective on June 27, 2016.
[[Page 33592]]
FOR FURTHER INFORMATION CONTACT: William R. Covey, Deputy General
Counsel and Director of the Office of Enrollment and Discipline
(``OED''), by telephone at 571-272-4097.
SUPPLEMENTARY INFORMATION:
Executive Summary
Purpose: This final rule implements Public Law 113-227 (Dec. 16,
2014). The law requires the USPTO Director to establish regulations and
procedures for application to, and participation in, the USPTO Law
School Clinic Certification Program. The program allows students
enrolled in a participating law school's clinic to practice patent and
trademark law before the USPTO by drafting, filing, and prosecuting
patent or trademark applications, or both, on a pro bono basis for
clients who qualify for assistance from the law school's clinic. The
program provides law students enrolled in a participating clinic the
opportunity to practice patent and trademark law before the USPTO under
the direct supervision of an approved faculty clinic supervisor. In
this way, these student practitioners gain valuable experience
drafting, filing, and prosecuting patent and trademark applications
that would otherwise be unavailable to them. The program also
facilitates the provision of pro bono services to trademark and patent
applicants who lack the financial resources to pay for legal
representation.
Summary of Major Provisions: The USPTO is adding Sec. Sec. 11.16
and 11.17 to part 11 of title 37 of the Code of Federal Regulations to
formalize the process by which law schools, law school faculty, and law
school students may participate in the USPTO Law School Clinic
Certification Program.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Discussion of Specific Rules
The following is a discussion of the amendments to part 11, title
37, of the Code of Federal Regulations in this final rule.
Section 11.1: Section 11.1 is amended to clarify the definition of
``attorney'' or ``lawyer'' by inserting the word ``active'' before
``member,'' inserting the phrase ``of the bar'' before the phrase ``of
the highest court,'' and deleting the clause ``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.''
This revision clarifies that to be considered an ``attorney'' or
``lawyer'' one must be an active member, in good standing, of the
highest court of any State, and otherwise eligible to practice law.
With such revision the aforementioned clause had become surplusage and
was struck for that reason. The term ``State'' is elsewhere defined in
Sec. 11.1 to mean 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.
Section 11.1 is also amended to ensure the term ``practitioner''
includes students admitted to the program by insertion of the following
language: ``(4) An individual authorized to practice before the Office
under Sec. 11.16(d).''
The USPTO is amending the term ``practitioner'' to specifically
include those students authorized to participate in the USPTO Law
School Clinic Certification Program. The mechanism by which such
students are authorized to participate is through a grant of limited
recognition. Once granted limited recognition, students are deemed
practitioners for the term of the limited recognition and, as such, are
subject to the USPTO Rules of Professional Conduct. By definition, only
``practitioners'' may represent others before the Office. Law school
students who are not participating in the USPTO Law School Clinic
Certification Program may not practice before the USPTO, unless
otherwise authorized to do so.
Section 11.16, previously reserved, is amended to add: Criteria for
admission to, and continuing participation in, the USPTO Law School
Clinic Certification Program; the qualifications necessary for approval
as a Faculty Clinic Supervisor; and the requirements for granting
limited recognition to law school students. Schools participating in
the program as of the date the final rule is published will not be
required to reapply for admission but must apply for renewal at such
time as the OED Director establishes. These criteria, deadlines for
admission, and any ancillary requirements, are published in a bulletin
on OED's law school clinic Web page.
Section 11.16(a) describes the purpose of the program.
Section 11.16(b) establishes rules regarding applying for, and
renewing, admission to the program. Law schools already enrolled in the
program are not required to submit a new application. Although not
required to apply for re-admission, participating law schools seeking
to add a practice area (i.e., patents or trademarks) are required to
submit an application for such practice area. This section also
establishes that all law schools are required to submit a renewal
application on a biennial basis.
Section 11.16(c) specifies that Faculty Clinic Supervisors are
subject to the USPTO Rules of Professional Conduct, including those
governing supervisory practitioners. See e.g., 37 CFR 11.501 and
11.502. As such, Faculty Clinic Supervisors, as well as the respective
law school deans, are responsible for ensuring their schools have
established a process that identifies potential conflicts of interest.
Generally, the OED Director makes a determination regarding a
proposed Faculty Clinic Supervisor's eligibility as part of the process
of considering a law school's application for admission to the program.
The OED Director may also make a determination whether to approve an
additional, or a replacement, supervisor for a currently participating
clinic. In determining whether a Faculty Clinic Supervisor candidate
possesses the number of years of experience required by paragraphs
(c)(1)(ii) and (c)(2)(ii), the OED Director will measure the duration
of experience from the date of the candidate's request for approval.
Any additional criteria established by the OED Director, as set forth
in paragraphs (c)(1)(v) and (c)(2)(v), will be published in a bulletin
on the Office of Enrollment and Discipline's law school clinic Web
page.
Each practice area must be led by a fully-qualified, USPTO-
approved, Faculty Clinic Supervisor. A law school's clinic may include
a patent practice, a trademark practice, or both, provided that they
are approved by the USPTO. The USPTO does not have a preference whether
a law school includes both practice areas in one clinic or separates
each discipline into its own clinic. For law school clinics approved to
practice in both the patent and trademark practice areas, the USPTO may
approve one individual to serve as a Faculty Clinic Supervisor for both
practice areas, provided that the individual satisfies the USPTO's
criteria to be both a Patent Faculty Clinic Supervisor and a Trademark
Faculty Clinic Supervisor.
Section 11.16(d) provides the rules for providing limited
recognition to students for the purpose of practicing before the USPTO.
It provides that registered patent agents, and attorneys enrolled in a
Master of Laws (L.L.M.) program, who wish to participate in a clinic
must abide by the same rules and procedures as other students in the
program.
Section 11.17 establishes rules concerning the continuing
obligations of
[[Page 33593]]
schools participating in the USPTO Law School Clinic Certification
Program and specifies those circumstances that may result in
inactivation or removal of a school from the program.
Section 11.17(a) restates the requirement in Public Law 113-227
that services rendered under the program will be provided on a pro bono
basis.
Section 11.17(b) establishes procedures for law schools to report
their program activities to the USPTO.
Section 11.17(c) establishes procedures for inactivating a law
school clinic. Inactive law schools are still considered by the USPTO
to be ``participating'' in the program.
Section 11.17(d) establishes procedures for removing a law school
from the program and explains the obligations of student practitioners
in such event.
Comments and Responses to Comments: The Office published a notice
of proposed rulemaking on December 16, 2015, proposing to amend its
rules to implement Public Law 113-227 by creating rules governing the
Law School Clinic Certification Program. See USPTO Law School Clinic
Certification Program, 80 FR 78155 (Dec. 16, 2015). Six members of the
public submitted comments. Of these commenters, five are currently
participating law school clinics. These comments are discussed below.
Comment 1: Five commenters addressed the reporting requirement in
Sec. 11.17(b). As proposed, that provision would have required
participating schools to provide OED each quarter with: (1) The number
of law students participating in each of the patent and trademark
practice areas of the school's clinic in the preceding quarter; (2) The
number of faculty participating in each of the patent and trademark
practice areas of the school's clinic in the preceding quarter; (3) The
number of consultations provided to persons who requested assistance
from the law school clinic in the preceding quarter; (4) The number of
client representations undertaken for each of the patent and trademark
practice areas of the school's clinic in the preceding quarter; (5) The
identity and number of applications and responses filed in each of the
patent and/or trademark practice areas of the school's clinic in the
preceding quarter; (6) The number of patents issued, or trademarks
registered, to clients of the clinic in the preceding quarter; and (7)
any other information specified by the OED Director. Four comments
recommended that this information be provided annually or semi-
annually. Three commenters pointed out that the Internal Revenue
Service's clinical program requires only semi-annual reporting. Two
commenters suggested that Sec. 11.17(b) should not require the
reporting of information already in the possession of the USPTO. These
commenters asserted that the number of participating students and
faculty is already known to OED. The commenters also contended that OED
can easily use a clinic's customer number(s) to look up patent filings
as well as registrations. As for trademark applications, the commenters
contended that these are easily identifiable as the school's TMCP
tracking code must be included in the application.
Response: After due consideration of the comment, the Office agrees
to reduce the reporting requirement to two times per year. The final
rule incorporates these commenters' suggestions in this regard but
leaves in place the other items required to be reported. Public Law
113-227 requires the USPTO to provide the Committees on the Judiciary
of the House of Representatives and the Senate a report on the program
that describes the number of law schools and law students participating
in the program, the work done through the program, the benefits of the
program, and any recommendations of the USPTO Director for
modifications to the Program. This reporting requirement is designed to
allow the USPTO to satisfy the requirements of the law. Each clinic
director should at all times know the number of participating students
and faculty, and should be keeping a running tally of the number of
client visits, the numbers of filings, and the numbers of patents
issued or trademarks registered. Gathering and reporting the
information should be of minimal burden.
The recommendation to eliminate the requirement to report
participating students is based on an incorrect premise that OED is
already in possession of such data. Although OED records the names of
clinic students who have been granted limited recognition, students may
participate in a clinic without limited recognition. Therefore, OED
cannot know the total number of participating students without the
assistance of the law schools.
Similarly, OED's ability to measure program success would be made
significantly more difficult if the requirement to report trademark and
patent filings were eliminated. OED is not resourced to review multiple
applications for the purpose of discerning those submitted under the
program. Conversely, each participating clinic prosecutes a relatively
small number of applications. For 2015, patent clinics filed fewer than
five applications, on average. Trademark clinics averaged fewer than 14
applications for the year. The Office notes that the IRS requires a
significantly greater amount of information in the semi-annual reports
required of its Low Income Taxpayer Clinic programs. IRS clinics must
file nearly 20 pages of forms requiring the input of hundreds of data
fields. See Appendix C, IRS Pub. 3319 (2016). As a final point, the
feedback the Office has received from the vast majority of the clinics
is that this reporting requirement is not burdensome. For these
reasons, the Office does not find that this reporting item is overly
burdensome.
Comment 2: Section 11.17(b) would have required law school clinics
to report the numbers of consultations and representations undertaken
each quarter. Three commenters recommended defining the terms
``consultations'' and ``representations.''
Response: After due consideration of the comment, the Office agrees
with the recommendations that the term ``consultation'' be clarified,
and has revised the final rule to eliminate any ambiguities. The final
rule now eliminates the word ``consultation'' and simply requires
reporting the ``number of persons to whom the school's clinic provided
assistance in any given patent or trademark matter but with whom no
practitioner-client relationship had formed.'' The term
``representation,'' on the other hand, requires no definition. Within
the legal field, the term is well-understood as the act of providing
legal advice to a client, or serving as an attorney for a client in a
proceeding or transaction. For example, clinics should take credit for
having undertaken a representation where the clinic has: (1) Issued a
client an opinion regarding patentability, infringement, or the
registrability of a trademark; (2) given advice, or taken action,
regarding a patent or trademark application, or (3) provided any other
service directly related to practice before the USPTO.
Comment 3: Four commenters stated that the USPTO should withdraw
Sec. 11.17(b)(7), the provision granting the OED Director the
authority to ask for additional information not already specified. One
commenter also sought to remove or amend Sec. Sec. 11.16(c)(1)(v),
11.16(c)(2)(v), 11.16(c)(3)(vii), 11.16(d)(2)(ix), and
11.16(d)(3)(viii), as well. These provisions allow the OED Director to
establish additional criteria for approving the participation of
Faculty Clinic Supervisors and law students. The commenters expressed
concern with the open-ended nature of
[[Page 33594]]
these provisions. Three commenters argued that any additional
information-reporting requirements could serve as a disincentive to law
schools from joining the program and could actually cause schools to
leave the program rather than comply with the reporting requirement.
Response: After due consideration of the comment, the Office
declines to adopt the recommendations. In order to effectively monitor
the program and meet Congressional intent, the OED Director must retain
flexibility to run the program so as to properly protect the public and
gauge program impact. Since the inception of the pilot program in 2008,
the OED Director has had wide latitude in this regard. The Office is
aware of no law school that was dissuaded from joining the program, or
withdrew from the program, because the participation requirements were
set by the OED Director rather than by regulation. OED has always
sought to minimize administrative burdens on the clinics and will
endeavor to do so in the future.
Comment 4: Section 11.16(d)(2)(viii) requires participating
students to demonstrate they possess the scientific and technical
qualifications necessary for rendering valuable services to patent
applicants to obtain limited recognition. One commenter requested that
this provision be withdrawn. The commenter argued that there is no harm
to granting a non-qualified student limited recognition to practice
before the Office in patent matters. The commenter also pointed out
that it is difficult to find students with such qualifications. The
commenter posited that by allowing non-qualified students to
participate, they may become motivated to obtain the requisite
scientific and technical competencies.
Response: After due consideration of the comment, the Office
declines to adopt the recommendation. The Office appreciates the
difficulties law schools face in trying to find technically qualified
students for the patent practice area. During the pilot program, OED
entertained requests to grant limited recognition, on a case-by-case
basis, to students with a strong technical or scientific background
where the student needed only a few credit hours to become fully
qualified. OED will continue this practice. Any such student who is
granted limited recognition must meet all qualifications and
requirements before the student may become a registered practitioner.
Finally, as discussed above in the response to Comment 1, students
without technical or scientific backgrounds may participate in patent
clinics. They cannot, however, receive limited recognition, actually
file papers with the Office, or be of record in a patent application.
Comment 5: One commenter suggested OED should consider whether
Faculty Clinic Supervisors are attorneys when evaluating their fitness.
The comment appears to argue that patent agents are not qualified to
serve as patent Faculty Clinic Supervisors on account of the fact that
they are not necessarily trained in areas of the law that overlap with
patent prosecution, such as licensing and corporate organization.
Response: Patent agents are eligible to serve as Faculty Clinic
Supervisors provided they meet the criteria set forth in the final
rule. With regard to practice in patent prosecution matters before the
Office, patent agents and patent attorneys stand on an equal footing.
To the extent this comment is proposing to exclude patent agents from
service as Faculty Clinic Supervisors, the Office declines to
incorporate such revisions in the final rule. Patent agents are fully
capable of advising clients on patent matters before the Office and
imparting relevant knowledge to their students. See generally Sperry v.
Florida, 373 U.S. 379 (1963); see also In re Queen's Univ. at Kingston,
No. 2015-145 at 14 (Fed. Cir. Mar. 7, 2016) (``patent agents are not
simply engaging in law-like activity, they are engaging in the practice
of law itself''). The USPTO's interest lies in ensuring that Faculty
Clinic Supervisors are qualified to practice in patent matters before
the Office. To the extent a law school should seek to supplement the
instruction given to its students in other areas of the law, it is free
to so act.
Comment 6: One commenter urges the rule to make permanent the
``Request to Make Special Program.'' This program allows patent clinics
to submit a predetermined number of requests to make special per
semester.
Response: After due consideration of the comment, the Office
declines to revise the rule accordingly. Such a revision would be
outside the scope of this rulemaking, which is designed to establish
the framework for administering the program. This rulemaking is not
designed to regulate the manner in which individual patents are to be
prosecuted.
Comment 7: One commenter urges the rule to include a provision to
grant law school clinics the full six months allowed by 35 U.S.C. 133
to respond to an Office action.
Response: After due consideration of the comment, the Office
declines to revise the rule accordingly. Such a revision would be
outside the scope of this rulemaking, which is designed to establish
the framework for administering the program. The rulemaking is not
designed to regulate the manner in which individual patents are to be
prosecuted.
Comment 8: One commenter urged revision of Sec. 11.16(c)(1)(iv),
(c)(2)(iv), and (c)(3). These provisions keep in place the requirement
established in the pilot program that Faculty Clinic Supervisors bear
full responsibility for the legal services provided by their clinics.
The commenter suggested that Faculty Clinic Supervisors should only
bear ``supervisory responsibility'' for the legal services provided.
Response: After due consideration of the comment, the Office
declines to revise the rule to include this provision. During the
course of prosecution of a patent application, students assisting in
the prosecution will enter and depart the program. During the summer
months and semester breaks, there may be no students participating in a
particular clinic. Only a Faculty Clinic Supervisor has the permanence
to be able to properly prosecute an application. Moreover, only a
Faculty Clinic Supervisor is a registered patent practitioner. The
Office also notes that the fully responsible standard has been in place
since the inception of the pilot program.
Rulemaking Considerations
A. Administrative Procedure Act: The changes in this final
rulemaking involve rules of agency practice and procedure, and/or
interpretive rules. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199,
1204 (2015) (interpretive rules ``advise the public of the agency's
construction of the statutes and rules which it administers'')
(citation and internal quotation marks omitted); Nat'l Org. of
Veterans'Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375
(Fed. Cir. 2001) (rule that clarifies interpretation of a statute is
interpretive); Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C.
Cir. 2001) (rules governing an application process are procedural under
the Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala,
244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were
procedural where they did not change the substantive standard for
reviewing claims). The Office received no public comment on this
section or any of the other sections under Rulemaking Considerations.
Accordingly, prior notice and opportunity for public comment for
the changes in this final rulemaking are not required pursuant to 5
U.S.C. 553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206
(notice-and-comment
[[Page 33595]]
procedures are required neither when an agency ``issue[s] an initial
interpretive rule'' nor ``when it amends or repeals that interpretive
rule''); Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir.
2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does
not require notice and comment rulemaking for ``interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice,'' (quoting 5 U.S.C. 553(b)(A)). The Office,
however, published proposed changes for comment as it sought the
benefit of the public's views on the Office's proposed rule.
B. Regulatory Flexibility Act: The Deputy General Counsel, United
States Patent and Trademark Office, has certified to the Chief Counsel
for Advocacy, Small Business Administration, that the changes in this
final rule will not have a significant economic impact on a substantial
number of small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)).
The USPTO Law School Clinic Certification Program is voluntary. Law
schools, clinics, and clients may elect whether to participate in the
program, and receive the benefits thereof. The primary effect of this
rulemaking is not economic, but simply to formalize the requirements
and procedures developed and implemented during the pilot phase of the
program. The rulemaking implements certain basic semi-annual reporting
requirements by participating law school clinics in order to provide
information to the Office pertaining to the quality and use of their
pro bono services. The information required for the report should be
readily available to participating law school clinics and presents a
minimal administrative burden. Additionally, the Office currently has
47 participating law school clinics, and it is expected that this
number may increase slightly. Accordingly, this reporting requirement
and the rulemaking will not have a significant economic impact on a
substantial number of small entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (September 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on
society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector and the public as a whole,
and provided on-line access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
E. Executive Order 13132: This rulemaking does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (August 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not effect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the
United States Patent and Trademark Office will submit a report
containing the final rule and other required information to the U.S.
Senate, the U.S. House of Representatives, and the Comptroller General
of the Government Accountability Office. The changes in this final rule
are not expected to result in an annual effect on the economy of 100
million dollars or more, a major increase in costs or prices, or
significant adverse effects on competition, employment, investment,
productivity, innovation, or the ability of United States-based
enterprises to compete with foreign-based enterprises in domestic and
export markets. Therefore, this document is not expected to result in a
``major rule'' as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes in this final
rule do not involve a Federal intergovernmental mandate that will
result in the expenditure by State, local, and tribal governments, in
the aggregate, of 100 million dollars (as adjusted) or more in any one
year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501 et seq.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions which involve the use of
technical standards.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the
public. This rulemaking 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. 3501-3549).
New information will be collected in the Law School Clinic
Certification Program, OMB
[[Page 33596]]
Control No. 0651-0081. Information about the collection is available at
the OMB's Information Collection Review Web site (www.reginfo.gov/public/do/PRAMain).
The following item was formerly in a different OMB-approved
collection (0651-0012 Admission to Practice): Application by Student to
Become a Participant in the Program (PTO-158LS). This form has now been
transferred to the Law School Clinic Certification Program (0651-0081).
This transfer has consolidated all information collections relating to
law student involvement in the Law School Clinic Certification Program
into a single collection.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall any 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 in 37 CFR Part 11
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and recordkeeping requirements.
For the reasons stated in the preamble, 37 CFR part 11 is amended
as follows:
PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT
AND TRADEMARK OFFICE
0
1. The authority citation for part 11 is revised to read as follows:
Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 32,
41; Sec. 1, Pub. L. 113-227, 128 Stat. 2114.
0
2. In Sec. 11.1, the definitions of ``Attorney or lawyer'' and
``Practitioner'' are revised to read as follows:
Sec. 11.1 Definitions.
* * * * *
Attorney or lawyer means an individual who is an active member in
good standing of the bar of the highest court of any State. A non-
lawyer means a person who is not an attorney or lawyer.
* * * * *
Practitioner means:
(1) An attorney or agent registered to practice before the Office
in patent matters;
(2) An individual authorized under 5 U.S.C. 500(b), or otherwise as
provided by Sec. 11.14(a), (b), and (c), to practice before the Office
in trademark matters or other non-patent matters;
(3) An individual authorized to practice before the Office in a
patent case or matters under Sec. 11.9(a) or (b); or
(4) An individual authorized to practice before the Office under
Sec. 11.16(d).
* * * * *
0
3. Add Sec. 11.16 to read as follows:
Sec. 11.16 Requirements for admission to the USPTO Law School Clinic
Certification Program.
(a) The USPTO Law School Clinic Certification Program allows
students enrolled in a participating law school's clinic to practice
before the Office in patent or trademark matters by drafting, filing,
and prosecuting patent or trademark applications on a pro bono basis
for clients that qualify for assistance from the law school's clinic.
All law schools accredited by the American Bar Association are eligible
for participation in the program, and shall be examined for acceptance
using identical criteria.
(b) Application for admission and renewal--(1) Application for
admission. Non-participating law schools seeking admission to the USPTO
Law School Clinic Certification Program, and participating law schools
seeking to add a practice area, shall submit an application for
admission for such practice area to OED in accordance with criteria and
time periods set forth by the OED Director.
(2) Renewal application. Each participating law school desiring to
continue in the USPTO Law School Clinic Certification Program shall,
biennially from a date assigned to the law school by the OED Director,
submit a renewal application to OED in accordance with criteria set
forth by the OED Director.
(3) The OED Director may refuse admission or renewal of a law
school to the USPTO Law School Clinic Certification Program if the OED
Director determines that admission, or renewal, of the law school would
fail to provide significant benefit to the public or the law students
participating in the law school's clinic.
(c) Faculty Clinic Supervisor. Any law school seeking admission to
or participating in the USPTO Law School Clinic Certification Program
must have at least one Faculty Clinic Supervisor for the patent
practice area, if the clinic includes patent practice; and at least one
Faculty Clinic Supervisor for the trademark practice area, if the
clinic includes trademark practice.
(1) Patent Faculty Clinic Supervisor. A Faculty Clinic Supervisor
for a law school clinic's patent practice must:
(i) Be a registered patent practitioner in active status and good
standing with OED;
(ii) Demonstrate at least 3 years experience in prosecuting patent
applications before the Office within the 5 years immediately prior to
the request for approval as a Faculty Clinic Supervisor;
(iii) Assume full responsibility for the instruction and guidance
of law students participating in the law school clinic's patent
practice;
(iv) Assume full responsibility for all patent applications and
legal services, including filings with the Office, produced by the
clinic; and
(v) Comply with all additional criteria established by the OED
Director.
(2) Trademark Faculty Clinic Supervisor. A Faculty Clinic
Supervisor for a law school clinic's trademark practice must:
(i) Be an attorney as defined in Sec. 11.1;
(ii) Demonstrate at least 3 years experience in prosecuting
trademark applications before the Office within the 5 years immediately
prior to the date of the request for approval as a Faculty Clinic
Supervisor;
(iii) Assume full responsibility for the instruction, guidance, and
supervision of law students participating in the law school clinic's
trademark practice;
(iv) Assume full responsibility for all trademark applications and
legal services, including filings with the Office, produced by the
clinic; and
(v) Comply with all additional criteria established by the OED
Director.
(3) A Faculty Clinic Supervisor under paragraph (c) of this section
must submit a statement:
(i) Assuming responsibility for performing conflicts checks for
each law student and client in the relevant clinic practice area;
(ii) Assuming responsibility for student instruction and work,
including instructing, mentoring, overseeing, and supervising all
participating law school students in the clinic's relevant practice
area;
(iii) Assuming responsibility for content and timeliness of all
applications and documents submitted to the Office through the relevant
practice area of the clinic;
(iv) Assuming responsibility for all communications by clinic
students to clinic clients in the relevant clinic practice area;
(v) Assuming responsibility for ensuring that there is no gap in
representation of clinic clients in the relevant practice area during
student turnover, school schedule variations, inter-semester
transitions, or other disruptions;
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(vi) Attesting to meeting the criteria of paragraph (c)(1) or (2)
of this section based on relevant practice area of the clinic; and
(vii) Attesting to all other criteria as established by the OED
Director.
(d) Limited recognition for law students participating in the USPTO
Law School Clinic Certification Program. (1) The OED Director may grant
limited recognition to practice before the Office in patent or
trademark matters, or both, to law school students enrolled in a clinic
of a law school that is participating in the USPTO Law School Clinic
Certification Program upon submission and approval of an application by
a law student to OED in accordance with criteria established by the OED
Director.
(2) In order to be granted limited recognition to practice before
the Office in patent matters under the USPTO Law School Clinic
Certification Program, a law student must:
(i) Be enrolled in a law school that is an active participant in
the USPTO Law School Clinic Certification Program;
(ii) Be enrolled in the patent practice area of a clinic of the
participating law school;
(iii) Have successfully completed at least one year of law school
or the equivalent;
(iv) Have read the USPTO Rules of Professional Conduct and the
relevant rules of practice and procedure for patent matters;
(v) Be supervised by an approved Faculty Clinic Supervisor pursuant
to paragraph (c)(1) of this section;
(vi) Be certified by the dean of the participating law school, or
one authorized to act for the dean, as: Having completed the first year
of law school or the equivalent, being in compliance with the law
school's ethics code, and being of good moral character and reputation;
(vii) Neither ask for nor receive any fee or compensation of any
kind for legal services from a clinic client on whose behalf service is
rendered;
(viii) Have proved to the satisfaction of the OED Director that he
or she possesses the scientific and technical qualifications necessary
for him or her to render patent applicants valuable service; and
(ix) Comply with all additional criteria established by the OED
Director.
(3) In order to be granted limited recognition to practice before
the Office in trademark matters under the USPTO Law School Clinic
Certification Program, a law student must:
(i) Be enrolled in a law school that is an active participant in
the USPTO Law School Clinic Certification Program;
(ii) Be enrolled in the trademark practice area of a clinic of the
participating law school;
(iii) Have successfully completed at least one year of law school
or the equivalent;
(iv) Have read the USPTO Rules of Professional Conduct and the
relevant USPTO rules of practice and procedure for trademark matters;
(v) Be supervised by an approved Faculty Clinic Supervisor pursuant
to paragraph (c)(2) of this section;
(vi) Be certified by the dean of the participating law school, or
one authorized to act for the dean, as: Having completed the first year
of law school or the equivalent, being in compliance with the law
school's ethics code, and being of good moral character and reputation;
(vii) Neither ask for nor receive any fee or compensation of any
kind for legal services from a clinic client on whose behalf service is
rendered; and
(viii) Comply with all additional criteria established by the OED
Director.
(4) Students registered to practice before the Office in patent
matters as a patent agent, or authorized to practice before the Office
in trademark matters under Sec. 11.14, must complete and submit a
student application pursuant to paragraph (d)(1) of this section and
meet the criteria of paragraph (d)(2) or (3) of this section, as
applicable, in order to participate in the program.
0
4. Add Sec. 11.17 to read as follows:
Sec. 11.17 Requirements for participation in the USPTO Law School
Clinic Certification Program.
(a) Each law school participating in the USPTO Law School Clinic
Certification Program must provide its patent and/or trademark services
on a pro bono basis.
(b) Each law school participating in the USPTO Law School Clinic
Certification Program shall, on a semi-annual basis, provide OED with a
report regarding its clinic activity during the reporting period, which
shall include:
(1) The number of law students participating in each of the patent
and trademark practice areas of the school's clinic;
(2) The number of faculty participating in each of the patent and
trademark practice areas of the school's clinic;
(3) The number of persons to whom the school's clinic provided
assistance in any given patent or trademark matter but with whom no
practitioner-client relationship had formed;
(4) The number of client representations undertaken for each of the
patent and trademark practice areas of the school's clinic;
(5) The identity and number of applications and responses filed in
each of the patent and/or trademark practice areas of the school's
clinic;
(6) The number of patents issued, or trademarks registered, to
clients of the clinic; and
(7) All other information specified by the OED Director.
(c) Inactivation of law schools participating in the USPTO Law
School Certification Program. (1) The OED Director may inactivate a
patent and/or trademark practice area of a participating law school:
(i) If the participating law school does not have an approved
Faculty Clinic Supervisor for the relevant practice area, as described
in Sec. 11.16(c);
(ii) If the participating law school does not meet each of the
requirements and criteria for participation in the USPTO Law School
Clinic Certification Program as set forth in Sec. 11.16, this section,
or as otherwise established by the OED Director; or
(iii) For other good cause as determined by the OED Director.
(2) In the event that a practice area of a participating school is
inactivated, the participating law school students must:
(i) Immediately cease all student practice before the Office in the
relevant practice area and notify each client of such; and
(ii) Disassociate themselves from all client matters relating to
practice before the Office in the relevant practice area, including
complying with Office and State rules for withdrawal from
representation.
(3) A patent or trademark practice area of a law school clinic that
has been inactivated may be restored to active status, upon application
to and approval by the OED Director.
(d) Removal of law schools participating in the USPTO Law School
Clinic Certification Program. (1) The OED Director may remove a patent
and/or trademark practice area of the clinic of a law school
participating in the USPTO Law School Clinic Certification Program:
(i) Upon request from the law school;
(ii) If the participating law school does not meet each of the
requirements and criteria for participation in the USPTO Law School
Clinic Certification Program as set forth in Sec. 11.16, this section,
or as otherwise established by the OED Director; or
(iii) For other good cause as determined by the OED Director.
(2) In the event that a practice area of a participating school is
removed by the OED Director, the participating law school students
must:
(i) Immediately cease all student practice before the Office in the
relevant
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practice area and notify each client of such; and
(ii) Disassociate themselves from all client matters relating to
practice before the Office in the relevant practice area, including
complying with Office and State rules for withdrawal from
representation.
(3) A school that has been removed from participation in the USPTO
Law School Clinic Certification Program under this section may reapply
to the program in compliance with Sec. 11.16.
Dated: May 23, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2016-12498 Filed 5-26-16; 8:45 am]
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